Exhibit 10.41
DATED
2007
BORDERS PROPERTIES, INC.
and
BORDERS (UK) LIMITED
and
BORDERS BOOKS IRELAND LIMITED
BRAND LICENCE AGREEMENT
Baker
& McKenzie LLP
London
Ref: MLH/MLD/KLM
0
DATE:
PARTIES:
| (1) |
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BORDERS PROPERTIES, INC. , a company incorporated in the
State of Delaware, USA and having its principal place of business
at 100 Phoenix Drive, Ann Arbor, MI 48108, USA (“
Licensor ”); and |
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| (2) |
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BORDERS (UK) LIMITED , a company incorporated under
the laws of England and Wales with registered number 01580771, and
having its registered office at 120 Charing Cross Road, London,
WC2H 0JR; and |
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| (3) |
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BORDERS BOOKS IRELAND LIMITED , a company incorporated
in the Republic of Ireland with registered number 404624, and
having its registered office at 70 Sir John Rogerson’s Quay,
Dublin 2, together parties (2) and (3) each being (the
“ Licencee ”). |
RECITALS:
| (A) |
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Licensor is the registered proprietor of, or has the right to
license and/or sub-license, the Trade Marks (as defined
below). |
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| (B) |
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Pursuant to an agreement between BGI (UK) Limited and
Bookshop Acquisitions Limited (the “ Purchaser
”) of the same date as this agreement for the sale and
purchase of the entire issued share capital of Borders
(UK) Limited (the “ Company ”) and Borders
Books Ireland Limited (the “ Share Purchase Agreement
”), Licensor has agreed to license Licensee to use the Trade
Marks on the terms of this Agreement. |
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| (C) |
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Licensor has registered the Domain Names (as defined below) and
holds all right, title and interest in and to the registration of
such Domain Names. |
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| (D) |
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Licensor has agreed to provide a licence to Licensee to make
use of the Domain Names on the terms set out in this
Agreement. |
TERMS AGREED:
| 1. |
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DEFINITIONS AND INTERPRETATION |
| 1.1 |
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Definitions: |
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In this Agreement, where the context so admits, the following
words and expressions shall have the following meanings: |
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“ Borders
Store ”
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a physical retail outlet operated by
the Licensee
under the Trade Marks in relation to the sale of
Goods and the provision of Services; |
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“ Business
Day ”
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a day (excluding Saturday) on which
the banks are
generally open for business in the City of London
and New York for the transaction of normal banking
business; |
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“
Competitor ”
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a company engaged in business
relating to the
manufacture and supply of books, music and other
media; |
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“
Control ”
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in relation to a body corporate, the
power of a person
to secure that the affairs of the body corporate are |
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conducted in accordance with the
wishes of that
person: |
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(a) by means
of the holding of shares, or the
exercise
of voting power, in or in relation to
that or
any other body corporate, or |
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(b) by virtue
of any powers conferred by the
constitutional
or corporate documents,
regulating
that or any other body corporate, or
any
other document, |
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and a “ Change of
Control ”, in relation to that body
corporate, occurs if a person who Controls it ceases
to do so or if another person acquires Control of
it; |
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“
Confidential Information ”
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in relation to either party,
information (whether in
written, electronic or oral form) belonging or relating
to that party or, in the case of Licensor, belonging to
a member of Licensor’s Group, relating to its or their
business, affairs, activities, products or services
which is not in the public domain and which (i)
either party has marked as proprietary or
confidential; (ii) either party, orally or in writing, has
advised the other party is of a confidential nature; or
(iii) due to its character or nature, a reasonable
person in a like position to the recipient of such
information under this Agreement, and under like
circumstances, would treat as confidential; |
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“ Deferred
Consideration ”
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means the amount of additional
consideration
payable (if any) for the Shares and the Irish Shares
pursuant to schedule 10 of the Share Purchase
Agreement; |
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“ Domain
Names ”
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the domain names |
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“borders.co.uk”;
“bordersstores.co.uk”;
“bordersmobile.co.uk”;
“bordersrewards.co.uk”;
“borders.ie”;
“bordersstores.ie”;
“bordersrewards.ie” ;
and any other “.co.uk” or “.ie” domain
name
incorporating any of the Trade Marks owned by a
member of the Licensor’s Group as at the date of
signing this Agreement; |
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“ Effective
Date ”
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the date of this Agreement; |
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“ Goods and
Services ”
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the goods and services set out in
Schedule 2 to this
Agreement for which the Trade Marks are registered; |
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“ Holding
Company ”
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a company that falls within either
the meaning
attributed to that term in ss736 and 736A Companies |
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Act 1985 or the meaning attributed to
the term
“parent undertaking” in s258 Companies Act 1985; |
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“ Intra
Group Guarantees ”
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means: |
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(a) the guarantee provided by Borders
Group, Inc in
relation to the lease between (1) Dempsey Assets
Limited and (2) Borders (UK) Limited relating to the
property at 98 Buchanan Street, Royal Exchange
Square, Glasgow, Scotland, G1 3HA; |
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(b) the guarantee provided by Borders
Group, Inc in
relation to the lease between (1) Standard Life
Investment Fund Limited and (2) Borders (UK) Limited
relating to the property at 94-96 Briggate, Leeds,
West Yorkshire, LS1 6NP; |
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(c) the guarantee provided by Borders
Group, Inc in
relation to the lease between (1) Superdrug PLC and
(2) Borders (UK) Limited relating to the property at
203-207 Oxford Street, London, W1D 2LE; |
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(d) the guarantee required to be
provided by Borders
Group, Inc in respect of the completion of the
agreement for lease dated 24 March 2006 between (1)
Cosgrave Property Developments Limited, (2) Joseph
Cosgrave, Peter Cosgrave and Michael Cosgrave and
(3) Borders Books Ireland Limited relating to the
property at Unit 3B & 4, West End Retail Park,
Blanchardstown, Dublin 15, Republic of Ireland; |
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“ Investor
Affiliate ”
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has the meaning given in schedule 10
of the Share
Purchase Agreement; |
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“
Licensor’s Group ”
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the group of companies comprising
Licensor, any
Holding Company from time to time of Licensor and
any Subsidiary of Licensor or any such Holding
Company and “ member of Licensor’s Group ”
shall
be construed accordingly; |
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“ Licensed
Products ”
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all Goods and Services sold or
offered for sale or
supply under the Trade Marks, including the
provision of such goods and services using the
Domain Names or corresponding website addresses; |
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“
Sub-Licensee ”
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the beneficiary of any sub-license
granted pursuant
to Clause 8.3; |
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“
Subsidiary ”
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a company or other entity that falls
within either
the meaning attributed to that term in ss736 and 736A
Companies Act 1985 or the meaning attributed to the
term “subsidiary undertaking” in s258 Companies Act
1985; |
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“ Tax
Deed ”
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means the deed relating to Tax in the
agreed form
between BGI (UK) Limited and the Purchaser of
even date; |
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“
Territory ”
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United Kingdom and the Republic of
Ireland; |
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“ Trade
Marks ”
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the trade marks short particulars of
which are set out
in Schedule 1 to this Agreement; |
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“
Transitional Services Agreement ”
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the agreement entered between Borders
International
Services, Inc. and the Company in relation to the
provision of certain services; and |
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“ Year
”
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the period from the Effective Date to
midnight on the
following 31 December, and any subsequent period
of twelve (12) months commencing the following 1
January or any anniversary of that date while this
Agreement remains in force (provided that the final
Year of this Agreement may be a shorter period
ending on the effective date of termination of this
Agreement). |
| 1.2 |
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Interpretation |
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In this Agreement: |
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(a) |
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clause headings do not form part of or affect the
interpretation; |
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(b) |
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references to any legislation shall include any statutory or
other re-enactment or modification thereof (whether before or after
the date of this Agreement); |
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(c) |
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where the context requires, words denoting the singular include
the plural and vice versa and words denoting any gender include all
genders; |
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(d) |
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references to Clause and Schedule numbers are to Clauses and
Schedules in this Agreement so numbered; |
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(e) |
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references to parties include references to their respective
successors in title, permitted assigns and novatees; and |
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(f) |
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in the case of any conflict or ambiguity between any provision
contained in the body of this Agreement and any provision contained
in any Schedule to it, the provisions of this Agreement shall
prevail. |
| 2. |
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GRANT OF RIGHTS |
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| 2.1 |
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Subject to the terms and conditions of this Agreement, in
consideration of the payment of £1 Licensor grants to
Licensee, with effect from the Effective Date and without limit of
period, an exclusive: |
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(a) |
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licence in the Territory to use and apply the Trade Marks on
and in relation to the sale of Goods and the provision of Services
in physical retail outlets or using the Domain Names or
corresponding website address, including, without limitation, in
connection with the marketing, use, distribution, sale and disposal
of the Goods and Services as aforesaid. Such licence does not
permit Licensee, and Licensee is prohibited, to use and apply the
Trade Marks on or in relation to the provision of any goods or
services |
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via the Internet using any domain name or other electronic
media save as aforesaid; and |
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(b) |
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worldwide right to use the Domain Names in relation to the
Goods and Services, including, without limitation, in connection
with the development, manufacture, marketing, use, distribution,
sale and disposal of the Goods and Services. The right to use the
Domain Names in this context means the right to use the Domain
Names in any manner whatsoever including the right to establish
uniform resource locators within the Domain Names, to display at
such uniform resource locators such content relating to the Goods
and Services as Licensee shall determine in its absolute discretion
and to establish email addresses using the Domain Names. |
| 2.2 |
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Notwithstanding clause 2.1(b), Licensee shall not under the
Trade Marks actively solicit orders for the Licensed Products
outside the Territory but it shall not be prohibited from accepting
any unsolicited orders for the Licensed Products which it may
receive from any other country in the European Economic Area. |
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| 2.3 |
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Licensor reserves the right itself to use and to license others
to use the Trade Marks on or in relation to goods or services
(other than the Goods and Services) in the Territory without
recourse to Licensee. |
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| 2.4 |
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Licensee shall at the request of Licensor pay any fees and
costs necessary in connection with the registration, maintenance
and renewal of the Trade Marks and Domain Names in the Territory
(in respect of those Trade Marks and Domain Names which are
registered or the subject of an application for registration on the
date of this Agreement). |
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| 2.5 |
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In the event that any Trade Mark is capable of protection by
registration, and is not already the subject of an application or
applications for registration in any country within the Territory,
Licensee shall on Licensor’s written request, at its own
cost, be responsible for the filing and prosecution of such
applications in the name of Licensor and the maintenance and
renewal of any resulting Trade Mark registrations in such countries
within the Territory as it shall nominate. If and to the extent
that Licensee does procure such Trade Mark registrations in the
name of Licensor, the rights granted to Licensee under this Clause
2 shall be deemed to include the right to use and apply the same
subject to the terms of this Agreement. |
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| 2.6 |
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Licensor agrees to amend, or procure the amendment of, the
registration for the Domain Names within fourteen (14) days of
the Effective Date so as to associate the Domain Names with the
relevant domain name server and to make such further amendments to
the registration for the Domain Names as are necessary from time to
time in order to associate the Domain Names with any further or
other domain name servers notified to Licensor by Licensee at any
time. Licensor agrees that any such further amendments to the
registration for the Domain Names shall be effected within fourteen
(14) days of such a request being made by Licensee. |
In
addition to its obligations set out elsewhere in this Agreement,
Licensee shall during the term of this Agreement:
| 3.1 |
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use the Trade Marks only in the form, colour, design, style and
manner directed or approved by Licensor as specified in
Schedule 3 and/or as communicated by Licensor in writing from
time to time, and with appropriate legends as directed or approved
by Licensor in writing clearly identifying Licensor as the owner of
the Trade Marks and indicating, in the form and manner directed by
Licensor, that the Trade Marks are used under licence from
Licensor; |
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| 3.2 |
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at Licensee’s reasonable expense, ensure that all
manufacturing, packaging, storage, marketing and supply operations
by which the Goods and Services are manufactured, packaged, stored,
marketed or supplied under this Agreement are conducted to a
standard consistent with good manufacturing, packaging, storage,
marketing and sales practice and in accordance with such other
reasonable standards, specifications and procedures as specified in
Schedule 4 and/or as communicated by Licensor in writing from
time to time; |
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| 3.3 |
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at Licensee’s reasonable expense, provide Licensor, at
its reasonable request, with samples of the goods comprised in the
Licensed Products and promptly comply with all instructions and
directions issued by Licensor following examination of the same.
Without limitation, samples of such Licensed Products proposed to
be marketed or sold by Licensee or any Sub-Licensee shall be
submitted to Licensor for approval before first commercial
production and Licensee shall (i) not market or sell any such
Licensed Products; and (ii) procure that any Sub-Licensee(s)
shall not market or sell any such Licensed Products, before
Licensee has received Licensor’s prior written approval, it
being understood by Licensee that the giving of such approval shall
in no way dilute or diminish Licensee’s obligations and
liabilities with respect to such Licensed Products it markets or
sells and Services it supplies. Licensee shall (i) not make
any changes to any such Licensed Products; and (ii) procure
that any Sub-Licensee(s) shall not make any changes to any such
Licensed Products, approved by Licensor without first seeking the
further approval of Licensor pursuant to this Clause 3.3; |
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| 3.4 |
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at Licensee’s expense, submit all proposed (whether by
Licensee or any Sub-Licensee) advertising copy and all other
proposed promotional or marketing materials regarding the Licensed
Products and other materials featuring the Trade Marks, including,
without limitation, stationery, wrappings, packaging, point of
purchase materials, product catalogues and television commercials,
to Licensor, at its request, for its written approval prior to
publication or use by Licensee or Sub-Licensee (as appropriate) and
not proceed, or allow Sub-Licensee to proceed) with publication or
use without such approval having first been obtained (such approval
not to be unreasonably withheld or delayed); |
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| 3.5 |
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not use the Trade Marks or Domain Names on or in relation to
any goods or services (other than the Goods and Services) without
the Licensor’s prior consent; |
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| 3.6 |
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not use on or in relation to any goods or services any mark or
name confusingly similar to the Trade Marks; |
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| 3.7 |
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not, without Licensor’s prior written consent, use or
apply on or in relation to the Licensed Products (including as or
as part of a corporate, business or trading name) any other trade
mark, logo, domain name or other proprietary or commercial name or
designation, excluding the trade mark “Books Etc”; |
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| 3.8 |
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not make any representation or do any act which may be taken to
indicate that it has any right, title or interest in or to the
ownership or use of any of the Trade Marks or Domain Names other
than under the terms of this Agreement; |
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| 3.9 |
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not do, cause or authorise to be done anything which will or
may impair, damage or be detrimental to the reputation or goodwill
associated with Licensor or the Trade Marks or Domain Names, which
will or may adversely affect the value or validity of the Trade
Marks or Domain Names, which may bring the Trade Marks or Domain
Names into disrepute or which might jeopardise or invalidate any
registration or application for registration of the Trade Marks or
Domain Names or Licensor’s title to the Trade Marks or Domain
Names (save that Licensor’s remedy for any challenge by
Licensee to Licensor’s ownership of the Trade Marks or Domain
Names shall be as set out in Clause 9.2(d)); |
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| 3.10 |
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not register, in the Territory or elsewhere, the Domain Names,
Trade Marks or any other trade mark or domain name which is in
Licensor’s reasonable opinion identical or confusingly |
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similar to the Trade Marks or Domain Names or that constitutes
any translation thereof into any language spoken in the
Territory; |
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| 3.11 |
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upon Licensor’s request, provide all information or
assistance, and execute any instrument, that may be necessary or
appropriate to register, maintain or renew the regist |
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