Exhibit 10.32
CONFIDENTIAL
TREATMENT
[***] Indicates that text has
been omitted which is the subject of a confidential treatment
request. This text has been separately filed with the
SEC.
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (this “
Agreement ”) dated as of March 27, 2009, (the
“ Effective Date ”) by and among Green Mountain
Coffee Roasters, Inc., a Delaware corporation, with its head office
located at 33 Coffee Lane, Waterbury, Vermont 05676-1529 (“
GMCR ”) and TC Global, Inc. f/k/a Tully’s Coffee
Corporation, a Washington corporation with its head offices located
at 3100 Airport Way South, Seattle, Washington 98134 ( “
Tully’s ”).
WHEREAS, GMCR and Tully’s have
previously entered into an Asset Purchase Agreement, dated as of
September 15, 2008, as amended by Amendment No. 1 thereto
dated November 12, 2008 and Amendment No. 2 thereto dated
February 6, 2009 (the “ Transaction Agreement
”), whereby GMCR is purchasing the assets associated with the
wholesale business of Tully’s, including the
“Tully’s” world-wide brand and other trade names,
trademarks and service marks;
WHEREAS, simultaneously with the
execution hereof, GMCR and Tully’s have entered into a Supply
Agreement, dated as of the date hereof (the “ Supply
Agreement ”), whereby GMCR has agreed to supply
Tully’s with Licensed Products and Other Coffee
Products;
WHEREAS, conditional upon the
successful completion of the transactions contemplated in the
Transaction Agreement and Supply Agreement, GMCR has agreed to
grant Tully’s a license to trademarks, including the
“Tully’s” world-wide brand (excluding Japan) and
other trade names, trademarks and service marks, to use such marks
in accordance with the terms of the Agreement herein;
WHEREAS, agreement of Tully’s
and GMCR, respectively, to enter into this License Agreement is a
condition precedent to each party’s obligations to close the
transactions contemplated by the Transaction Agreement;
WHEREAS, upon the closing of the
transactions contemplated by the Transaction Agreement, GMCR as the
new owner of the “Tully’s” brand wants to ensure
the quality of the product sold as Tully’s coffee at
“Tully’s” branded retail, franchised and licensed
locations;
NOW THEREFORE in consideration of
the mutual covenants contained herein, and other good and valuable
consideration, the receipt and sufficiency of which is hereby
acknowledged, the parties hereto covenant and agree as
follows:
I. DEFINITIONS
The following terms in this
Agreement shall have the following meanings:
“ Affiliate ”
shall mean, with respect to a party, all employees, family or other
relatives, officers, directors, and equity holders of such person,
as well as any other Person controlling, controlled by or under
common control with such party, where “control” means
the ownership, directly or indirectly, of a controlling share of
the equity interests of the party or the possession
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CONFIDENTIAL
TREATMENT
[***] Indicates that text has
been omitted which is the subject of a confidential treatment
request. This text has been separately filed with the
SEC.
by other means, whether directly or indirectly,
of the power to direct the management and policies of a
party.
“ Benchmark Store
” shall mean a bona fide, standalone Licensed Retail Store
open for business in the ordinary and commercially reasonable
course for such store in accordance with the terms of this
Agreement.
“ Change of Control
” shall mean with respect to any party hereto (i) any
sale, transfer, assignment or other disposition, whether by
operation of law or otherwise, of the voting or other securities,
which results in any single third party owning more than a majority
of such party’s voting stock, (ii) the sale of
substantially all of such party’s assets in one or a series
of transactions to a single third party buyer, (iii) a merger
or consolidation of such party with any other third party entity,
or (iv) the acquisition by a third party of the right to
nominate a controlling majority of members of the board of
directors of such party.
“ Contract Year ”
shall have the meaning set forth in the Supply
Agreement.
“ Force Majeure ”
shall have the meaning set forth in the Supply
Agreement.
“ Licensed Product
” shall mean [***] .
“ Licensed Retail Store
” shall mean a physical retail location operating under
certain Licensed Marks under this Agreement by Tully’s or its
sublicensees at which brewed coffee is the primary product sold to
the end-use consumer for on and off premises consumption. For the
avoidance of doubt, the term Licensed Retail Store includes both
standalone locations (e.g., Benchmark Stores) and physical retail
locations within larger environments with their own separate menus
and facilities (e.g., counter space, cash register or order
pick-up), for example: kiosks, store-in-store locations (e.g.,
[***] ), locations sharing space with food service
establishments (e.g., [***] ), and locations within other
large-scale facilities (e.g., airports, hospitals, manufacturing
facilities (e.g., [***] ) and educational institutions
(e.g., [***] ); provided, however, that nothing within such
larger environments shall constitute a Licensed Retail Store except
the specific areas where coffee is ordered, brewed, sold and
consumed.
“ North America ”
shall mean the United States of America, Canada, Mexico and the
Islands of the Caribbean.
“ Other Coffee Products
” shall have the meaning set forth in the Supply
Agreement.
“ Products ”
shall have the meaning set forth in the Supply
Agreement.
“ Promotional and
Advertising Material ” shall mean labels, packaging,
advertising brochures, catalogues and other written or graphic
material, all advertising, including television,
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CONFIDENTIAL
TREATMENT
[***] Indicates that text has
been omitted which is the subject of a confidential treatment
request. This text has been separately filed with the
SEC.
radio, newspaper and other media advertising,
signage, stationery, store and point-of-sale displays, and all
other materials upon which any of the Licensed Marks are
placed.
“ TCAP License ”
shall mean the October 12, 2007 Exclusive License Agreement
between Tully’s and Tully’s Coffee Asia Pacific, Inc.,
in the form attached at Exhibit 1 without
modification.
II. GRANT OF
RIGHTS
(a) GMCR is the owner of all right,
title and interest in and to certain trade names associated with
the “Tully’s” brand, as more fully set forth in
Schedule A attached hereto (the “ Business
Names ”), and certain trade and service marks set forth
in Schedule B attached hereto (the “ Trademarks
”), including, without limitation, all goodwill associated
therewith, all registrations and applications to register
associated therewith, and all claims, causes and rights to sue
arising therefrom. The Business Names and Trademarks are
hereinafter collectively referred to as the “ Licensed
Marks .”
(b) Subject to the terms and
conditions of this Agreement, GMCR hereby grants [***]
.
(c) [***] .
(d) [***] .
(e) [***] .
(e) [sic] [***] .
(f) [***] .
(g) [***] .
(h) [***] .
(i) [***] .
III. RIGHTS OF OWNERSHIP AND
LIMITATION ON EXCLUSIVITY
(a) Tully’s acknowledges that:
(i) as between the parties, the Licensed Marks are the
exclusive property of GMCR; (ii) nothing in this Agreement
shall give Tully’s any right, title or interest in or to the
Licensed Marks by themselves or in combination with any other
words, except in accordance with the express terms of this
Agreement; and (iii) all use and any goodwill generated
through the use of the Licensed Marks shall inure exclusively to
the benefit of and be owned by GMCR.
(b) [***] .
(c) [***] .
(d) [***] .
(e) Tully’s acknowledges that
GMCR has the exclusive worldwide right (excluding Japan), and
nothing in this Agreement shall grant Tully’s any rights
thereof, to use the Licensed Marks for wholesale and retail sale of
products that utilize Keurig, Incorporated’s
single-cup
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CONFIDENTIAL
TREATMENT
[***] Indicates that text has
been omitted which is the subject of a confidential treatment
request. This text has been separately filed with the
SEC.
brewing technology, or any similar technology
developed in the future by Keurig, Inc. or any successors or
Affiliates, including without limitation K-Cups portion packs and
K-Cups.
IV. NOTICE TO THE
PUBLIC
(a) Tully’s (or its
sublicensees) shall prominently display at each Licensed Retail
Store a sign stating that (i) Tully’s (or its
sublicensees) is an independent owner of such Licensed Retail Store
operating the Licensed Retail Store under a license from GMCR,
(ii) Tully’s (or its sublicensees) is not affiliated
with GMCR in any other manner, and (iii) GMCR has no interest
in the Licensed Retail Store. GMCR reserves the right to specify
the form, content and manner of display of such notice.
(b) Tully’s shall not use the
name “Tully’s” in its corporate name, with the
exception of the registration of a d/b/a or similar assumed name
certificate.
V. TERM
The term of this Agreement (“
Term ”) is perpetual until this Agreement is
terminated by either party in accordance with the terms
herein.
VI. USAGE
STANDARDS
(a) Tully’s shall use the
Licensed Marks only for uses expressly permitted under this
Agreement.
(b) Tully’s shall not use any
other mark, name, style, logo or design, other than the Licensed
Marks, in connection with the Licensed Products without the prior
written consent of GMCR.
(c) Tully’s shall not
register, or attempt to register, any of the Licensed Marks or any
other mark, name, style, logo or design that is confusingly similar
to any of the Licensed Marks.
(d) Tully’s shall not alter
the Licensed Marks, develop derivatives or new variations of the
Licensed Marks, or combine the Licensed Marks with other marks,
designs, names, styles words or branding, without the prior written
consent of GMCR. All new versions, derivatives and variations of
the Licensed Marks, and any designs, words, or branding developed
or acquired by Tully’s that is confusingly similar to the
Licensed Marks, shall be and are owned exclusively and entirely by
GMCR (including all goodwill associated therewith) and shall be
deemed to be Licensed Marks governed by the terms of this
Agreement.
(e) Tully’s shall not
affiliate the Licensed Marks, or any of them, with offensive or
repugnant materials or practices, such as, without limitation, hate
speech or discrimination based on race, ethnic or religious
heritage, nationality, gender, sexual preference, pornography or
other
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CONFIDENTIAL
TREATMENT
[***] Indicates that text has
been omitted which is the subject of a confidential treatment
request. This text has been separately filed with the
SEC.
obscenity; illegal use of drugs or alcohol or
any other illegal activity, rotten, spoiled, or otherwise
unhealthful food or beverages.
(f) Whenever Tully’s uses the
Licensed Marks in connection with any licensed use pursuant to this
Agreement, Tully’s shall cause the “®” symbol
to be placed adjacent to each federally registered Licensed Mark
and the “TM” or “SM”, as applicable, symbol
to be placed adjacent to each unregistered Licensed
Mark.
(g) Tully’s shall require its
authorized sublicensees, to comply with each of the Licensed Mark
usage standards set forth in this Section VI.
VII. QUALITY
CONTROL
(a) Tully’s shall secure and
maintain in force all required licenses, permits and certificates
relating to the operation of each Licensed Retail Store and the
operation of any wholesale business pursuant to this Agreement. All
commercial activity of Tully’s at such Licensed Retail Store
or wholesale operation pursuant to this Agreement: (i) shall
be carried out in compliance with all applicable laws and
regulations, including, without limitation, any and all health and
safety regulations, or regulations directed at the proper handling
of food and beverages; and (ii) shall be carried out in a
manner and of a quality that is consistent with or better than the
manner and quality of such activities by Tully’s prior to the
Effective Date hereof, in any event consistent with the best
practices for a premium coffee retail outlet or wholesale
distributor, and makes commercially reasonable use of advances in
science, technology, or methods of doing business that arise after
the Effective Date as necessary to maintain relative position of
the reputation of Tully’s with regard to quality of licensed
activity in relation to competitors .
(b) Tully’s acknowledges that
GMCR has the right to control the quality of any products sold
under the Licensed Marks or the nature of packaging or advertising
used under or otherwise associated with the Licensed Marks, or any
other permissible licensed uses of the Licensed Marks by
Tully’s under this Agreement, in order to protect
GMCR’s rights in the Licensed Marks and the public perception
of the Licensed Marks.
(c) From time to time, but not more
often than [***] , and upon reasonable notice, GMCR shall
have the right to appoint an independent inspector at its sole
expense to conduct inspections, during normal business hours and
without disruption to Tully’s business and operations, for
the sole purpose of ensuring that Tully’s is complying with
its obligations under this Agreement; provided, however, that
Tully’s may require any such independent inspector hired by
GMCR to execute a commercially reasonable confidentiality agreement
prior to conducting any inspection in order to protect
Tully’s trade secrets and confidential and proprietary
information.
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CONFIDENTIAL
TREATMENT
[***] Indicates that text has
been omitted which is the subject of a confidential treatment
request. This text has been separately filed with the
SEC.
(d) At the request and expense of
GMCR, Tully’s shall provide to GMCR a commercially reasonable
number of Licensed Products, Other Coffee Products, any Promotional
and Advertising Material or merchandising items or reasonable
facsimiles thereof, and other tangible items exploited by
Tully’s pursuant to this Agreement, and, in the event it is
not commercially reasonable to provide such samples, upon prior
written notice, shall allow GMCR to inspect and audit Tully’s
activities under this Agreement as set forth above, but solely for
the purpose of confirming the compliance of Tully’s with the
quality covenants set forth herein.
(e) Notwithstanding Tully’s
obligations, if GMCR determines in its reasonable judgment that any
use of the Licensed Marks by Tully’s pursuant to this
Agreement may be or is directly or indirectly injurious or
prejudicial to the Licensed Marks, Tully’s shall cease or
cause the cessation of such activity within a reasonable period of
time following receipt of written notification from
GMCR.
(f) Tully’s shall require its
authorized sublicensees, to comply with each of the quality control
requirements set forth in this Section VII, and similar provisions
in the parties’ Supply Agreement, titled Adherence To
Standards, set forth in Section VII of that agreement.
VIII. APPROVALS OF PROMOTIONAL
AND ADVERTISING MATERIAL
(a) The parties acknowledge and
agree that GMCR shall have the absolute right to approve
Tully’s use of and manner of use of the Licensed Marks in any
Promotional and Advertising Material. Tully’s shall retain
creative control over all other elements of such Promotional and
Advertising Material.
(b) When Promotional and Advertising
Material is in the form of modifications of previously approved
Promotional and Advertising Material, and it does not alter in any
way the representation of the Licensed Marks on such Promotional
and Advertising Material, Tully’s shall submit such materials
to GMCR, and GMCR shall approve or disapprove such Promotional and
Advertising Material with ten (10) business days of such
receipt. If GMCR has not responded to any submission by the 11th
day after such receipt, the submitted Promotional and Advertising
Material shall automatically be deemed to have been approved,
unless otherwise notified or if the submission has been approved
subject to changes, then the submission shall be deemed approved
only if the changes are made to the satisfaction of
GMCR.
(c) If Tully’s Promotional and
Advertising Material are not modifications of previously approved
Promotional and Advertising Material, upon receipt of such
materials, GMCR shall approve or disapprove them within thirty
(30) calendar days. If GMCR has not responded to any
submission by the 31st day after such receipt, the submitted
Promotional and Advertising Material shall automatically be deemed
to have been approved unless otherwise notified or if the
submission has been approved subject to changes, then the
submission shall be deemed approved only if the changes are made to
the satisfaction of GMCR.
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CONFIDENTIAL
TREATMENT
[***] Indicates that text has
been omitted which is the subject of a confidential treatment
request. This text has been separately filed with the
SEC.
(d) Tully’s shall require its
authorized sublicensees, to comply with each of the approvals
requirements set forth in this Section VIII.
IX. WEBSITES
Tully’s shall ensure that all
websites operated by Tully’s under this Agreement are
consistent in all material respects with any appearance and design
elements provided by GMCR, and at all times consistent with any
brand concept conveyed by GMCR. GMCR shall have the right to
inspect the websites at its discretion, and if, in GMCR’s
sole discretion, an element of Tully’s websites does not
conform to the standards provided by GMCR, GMCR may demand that
element be immediately removed. Upon such demand, Tully’s
shall have twenty-four (24) hours to remove the offending
element.
X. SECONDARY
VENDORS
(a) During the Term of this
Agreement, Tully’s shall be permitted to source the Licensed
Products through other suppliers (“ Secondary Vendors
”) only upon (i) termination of the Supply Agreement or
(ii) the conditions set forth in the Supply Agreement. All
Secondary Vendors shall meet GMCR’s quality and service
standards for sourcing, roasting, packaging, labeling, storage and
transportation of coffee, and such other standards or
specifications as reasonably established by GMCR from time to time
(the “ Roasting Standards ”), and all applicable
quality standards and compliance with law and regulation provisions
set forth in this Agreement. GMCR shall have the right to reject
any Secondary Vender selected by Tully’s to roast or, as
applicable, package coffee beans if GMCR reasonably determines that
such vender does not have the financial capacity, proper
facilities, expertise or experience to perform all of the functions
required to deliver packaged roasted coffee beans and ground coffee
to the Roasting Standards. Prior to Tully’s commercial sale
of any Licensed Products supplied by a Secondary Vender under this
Agreement and the License Agreement, samples of such products and
any applicable packaging shall be sent to GMCR, and GMCR shall have
the right to reasonably reject any product or packaging that fails
to meet GMCR’s quality standards.
(b) Prior to becoming a Secondary
Vendor, any prospective Secondary Vendor must agree that from time
to time, but, absent evidence of a default in meeting GMCR’s
quality standards, not m