EXHIBIT 10.4
TRADEMARK LICENSE AGREEMENT
THIS AGREEMENT
is effective as of July 1, 2008 (hereinafter the
"EFFECTIVE DATE")
by and between J. Lindeberg AB, a Swedish company ("JL
SWEDEN"), and J.
Lindeberg USA, LLC, a California limited liability company,
located at 150 West
Jefferson Boulevard,
Los Angeles,
CA 90007 (hereinafter
referred to as "LICENSEE").
WHEREAS, JL Sweden is the owner of one or more of the trademarks
listed
on SCHEDULE
A attached hereto (as such ownership is evidenced by the
registrations and applications therefor) which may be amended
from time to time
by the parties,
including, without
limitation,
goodwill associated with and
symbolized by such
trademarks,
common law rights,
and trade name rights
(the
"MARKS");
WHEREAS, Licensee desires to obtain a license from JL Sweden to use
the
Marks in connection with Licensee's business activities and JL
Sweden desires to
grant a license to
Licensee to use the Marks in accordance with the terms and
conditions of this Agreement; and
WHEREAS, Licensee further desires to obtain a license from JL
Sweden to
use certain Licensed Content (as defined below) in connection with
the operation
by Licensee
of a website
that will serve as a web store located at the URL
www.JLindebergUSA.com
(the "LICENSEE WEB STORE") and JL Sweden desires to grant
a license to Licensee to use the Licensed Content in accordance with the terms
and conditions of this Agreement.
NOW, THEREFORE,
in consideration of the foregoing and of the
mutual
promises hereinafter set forth, the parties agree as follows:
1.
GRANT OF LICENSES.
1.1 JL
Sweden hereby grants to Licensee during the Term a
royalty-free,
fully paid-up,
exclusive,
nontransferable
license and
right to use its
Marks in connection with the
sourcing and
manufacture
(provided
that JL Sweden must
pre-approve in writing
any such sourcing and manufacture,
which consent shall not be unreasonably withheld, delayed or
conditioned),
and in the United States, the marketing,
promotion,
advertising,
distribution, and sale
(including,
without limitation,
through the Licensee
Web Store for sales
only to customers located in the United States) of the
products set forth on
SCHEDULE B attached hereto and such
other products
and services as may be marketed, promoted,
advertised, distributed or sold by JL Sweden, or any affiliate
or licensee
thereof, from time to time under one or
more of
the Marks (together
with Apparel,
as defined in SCHEDULE
B,
such products
are referred to
herein, collectively,
as the
"Licensed Products");
provided, however, that this license
shall not apply to, and the Licensed Products shall not
include, sunglasses,
glasses, frames and related eyewear
("Eyewear"). JL
Sweden hereby agrees that any and all
trademark
registrations applied
for, or obtained by, or
granted to it in the
United States during the Term shall
immediately and
automatically
become "Marks" licensed to
Licensee hereunder and
SCHEDULE A hereto shall be modified to
include any such
additional Marks.
The license granted to
Licensee
hereunder shall include, subject to JL Sweden's prior
written consent,
which consent shall not be unreasonably
withheld, delayed
or conditioned, the right to enter into
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sublicenses
with service providers in connection with the
sourcing, manufacture,
marketing,
promotion,
advertising,
distribution, and sale of the Licensed Products; and
1.2 JL
Sweden hereby grants to Licensee during the Term a
royalty-free,
fully paid-up,
exclusive,
nontransferable
license and
right to use, display, publicly perform,
reproduce, distribute,
transmit, deliver and otherwise make
available the
Licensed Content, on, through, in or in
connection with the
operation of the Licensee Web Store,
subject to the
provisions of this
Agreement;
provided that
Licensee shall
not be permitted to modify or alter any
Licensed Content
without JL Sweden's
prior written
consent,
except to edit text and adapt it to American English.
1.3
(a) As between
JL Sweden and Licensee, all right, title
and interest
in and to the Marks
and the Licensed
Content, together with
all goodwill related thereto,
shall be and remain the property of JL Sweden.
Licensee hereby
acknowledges
and agrees that (i)
except as set forth
herein, Licensee has
no rights,
title or interest in or to the Marks or the Licensed
Content and (ii) all
use of the Marks and
Licensed
Content by Licensee and all goodwill arising out of
such use
by Licensee shall inure to the benefit of JL
Sweden. Licensee's
right to use the
Marks and the
Licensed Content
is derived solely from this
Agreement and is
limited to the conduct
of business
by Licensee pursuant
to and in compliance
with this
Agreement. Licensee agrees that it will not knowingly
engage, participate,
or otherwise, directly or
indirectly, become involved in any activity or course
of action that diminishes and/or tarnishes the image
and/or reputation of
any Mark. Any
unauthorized use
of the Marks by Licensee is a breach of this
Agreement. Licensee further agrees that all rights in
the Marks and the Licensed Content other than those
specifically granted herein are reserved to JL Sweden
for its own use and benefit.
(b) Licensee
shall not,
at any time
during the Term or
after the Term,
contest the validity or ownership of
any of the Marks
or assist any other person in
contesting the
validity or
ownership of the
Marks.
All provisions of this
Agreement applicable to the
Marks apply
to any and all
additional
trademarks,
service marks, and commercial symbols authorized for
use and licensed to
Licensee by JL Sweden
after the
date of this Agreement.
(c) Licensee
agrees to give such notices of trademark and
service mark
registrations as JL
Sweden reasonably
specifies and to
obtain fictitious
or assumed name
registrations as may
be required
under applicable
law. Licensee
shall not use any of
the Marks in any
manner which has not
been specified
or approved in
writing by JL Sweden,
which approval shall not be
unreasonably withheld, delayed or conditioned.
(d) If it
becomes advisable at
any time, in JL
Sweden's
sole discretion,
for JL Sweden to modify or
discontinue the use of
any Mark, and/or
use one or
more additional
or substitute trade names,
trademarks,
service marks,
or other commercial
symbols, Licensee
agrees to comply with
JL Sweden's
directions within a
reasonable time after
notice of
the same to Licensee. Except as otherwise provided in
Section 8(a), JL
Sweden shall not have any liability
or obligation to Licensee whatsoever with respect to
the modification or discontinuance of any Mark.
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(e) Any and
all trademarks
and all other improvements
developed by
Licensee or its
affiliates
and/or JL
Sweden or its
affiliates relating
to the Licensed
Products or the Licensed Content shall be and become
the sole and absolute
property of JL Sweden,
and JL
Sweden shall
have the sole and
exclusive right to
copyright, register
and protect such
trademarks or
improvements in JL
Sweden's own name,
and Licensee
and its affiliates
shall have no right to copyright,
register or make such
trademarks or
improvements in
the name of Licensee or its affiliates; and Licensee
and/or its affiliates shall have no right to use such
trademarks or
improvements, except
pursuant to this
Agreement or as otherwise allowed or requested by JL
Sweden in writing.
2. WEB
STORE IMPLEMENTATION
2.1 Licensee
will, at its sole expense, develop, implement,
operate, administer and maintain the Licensee Web Store, which
shall have a "look and feel" that is substantially similar to
the website "JLindeberg.com" which is owned and operated by JL
Sweden. Licensee
shall
design the Licensee Web Store,
including the look and feel, functionality, graphics, images,
color schemes,
use of Marks,
branding style and all
related
creative, artistic and
commercial expressions of the Licensee
Web Store. Upon completion of its development but prior to the
launch of the Licensee
Web Store, Licensee shall make the
Licensee Web Store
available to JL Sweden for review and
acceptance for a
period of ten (10)
business days. In the
event JL Sweden determines, in its reasonable discretion
during such
period, that the professional, technical and
artistic quality
of the Licensee Web Store does not meet
industry standards,
the specifications set forth in this
Agreement or
JL Sweden's written branding and marketing
standards applicable
to all licensees of the Licensed Content
and provided
from time to time to Licensee ("BRANDING
STANDARDS"), then JL
Sweden shall so notify
Licensee and the
parties shall
discuss in good faith what aspects of the
Licensee Web Store need modification. Licensee shall then use
its commercially
reasonable efforts to modify such aspects of
the Licensee Web Store as mutually agreed upon by the parties;
provided, however, that Licensee shall not launch the Licensee
Web Store
prior
to JL Sweden's acceptance of such
modifications, which
acceptance
shall not be unreasonably
withheld, delayed or
conditioned if the modified Licensee Web
Store meets industry
standards, the
specifications set forth
in this Agreement
and the Branding
Standards.
In the event
that no such notice is delivered to Licensee, Licensee shall
have the right to launch the Licensee Web Store at any time
after the conclusion
of the review
period. For purposes of
this Section 2.1,
any notice may be
delivered by
electronic
mail to the manager of Licensee.
2.2 JL
Sweden shall, at its sole cost, be responsible for
obtaining any
and all third party rights, consents and
licenses with respect to trademarks, logos, service marks,
copyrighted works,
including without
limitation text,
video
content, designs and
still images, and any other intellectual
property, content
or other works of authorship that are
provided to Licensee by JL Sweden for use on the Licensee Web
Store (collectively,
"LICENSED CONTENT"),
including, without
limitation, performance,
likeness,
publicity,
master
recording, mechanical,
labor union or other
rights, consents
and licenses, whether
or not including
rights in
copyright.
With respect to all rights, consents and/or licenses
required
to be obtained
hereunder (i) JL Sweden shall provide Licensee
with necessary
information and
otherwise reasonably
assist
Licensee with any filings that are Licensee's responsibility,
and (ii) JL Sweden shall, at its sole cost, be responsible for
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administering such licenses and making payments to publishers,
rights holders, labor unions, and/or clearing agencies related
thereto.
2.3 At any
time while this Agreement remains in effect, Licensee
shall have the right to immediately remove from the Licensee
Web Store or modify,
in Licensee's sole discretion, Licensed
Content in the event
Licensee is threatened
with a claim, a
claim is asserted
against Licensee,
or Licensee
reasonably
believes that a claim is likely to be asserted, alleging that
such Licensed Content infringes, misappropriates or otherwise
violates the
intellectual property
or proprietary rights
of
another person or entity.
2.4 JL Sweden
and Licensee agree that Licensee shall own all
advertising space on
the Licensee Web Store and that Licensee
shall have the sole right to place advertising on the Licensee
Web Store and Licensee shall be solely responsible for
collecting all
amounts due; provided, however, that the
Licensee Web Store
shall not contain any
advertising of any
direct competitor
of JL Sweden or that
violates the Branding
Standards, in
either case as reasonably determined by JL
Sweden.
2.5 All
information
and data collected by Licensee through the
Licensee Web Store shall be owned solely by Licensee.
2.6 Licensee
shall at all times
exclusively own all right, title
and interest
in and to the
Licensee Web Store and the URL
www.JLindebergUSA.com (excluding any Licensed Content or Marks
used therein
and related goodwill) including any and all
intellectual
property rights
therein
and thereto (the
"LICENSEE IP"). JL
Sweden will not grant, or claim for itself
or any affiliated entities, independent contractors, or
employees, either
expressly or impliedly, any rights, title,
interest, or licenses to the Licensee IP.
3.
REPRESENTATIONS AND WARRANTIES
3.1 Each party
represents and warrants to the other party that:
(a) it has the
power and authority to enter into this
Agreement and to
otherwise perform its
obligations
and covenants hereunder; and
(b) the
execution,
delivery and performance of this
Agreement by
such party will not result in a
violation of, or breach under, any agreement to which
such party is a party or by which it may be bound.
3.2 JL Sweden
represents and warrants that:
(a) it is the
legal and beneficial
owner of all
right,
title and interest in and to the Marks registered or
applied for
under its name, having good title
thereto, and that it
has all necessary rights in the
Marks to grant the
licenses to Licensee that are
contained herein.
Notwithstanding
the foregoing,
Licensee acknowledges
that JL Sweden may not have
full rights
(or any right) to use the mark
"Johan
Lindeberg" as a result
of a pending
application in
the United
States filed by Johan Lindeberg Trust
Lichway Corporation S.A.
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(b) JL
Sweden is the owner of the copyright or other
intellectual property
right in the Licensed
Con
