Timebase Pty Ltd v. Thomson Corporation, The
Filing
91
Declaration of Leonie Muldoon in Support of 89 Response in Opposition to Motion filed by Timebase Pty Ltd. (Hosteny, Joseph)
Timebase Pty Ltd v. Thomson Corporation, The
Doc. 91
Exhibit 1
Dockets.Justia.com
32133-4bikes
L
SUBLICENSE AGR.EE3fENT AGREEMENT made as of the 29th day of June, 1995, between LENOND CYCLING, INC., a corporation organized under the laws of the State of Minnesota, having its principal place of business at 3000 Willow Drive, Medina, Minnesota 55340 ("Licensortt), and TREK BICYCLE, COW., a Wisconsin corporation with offices at 801 West Madison Street, P.O. BOX 183 Waterloo, WI 53594 (tlLicenseett). WHEREAS, Greg LeMond is a world famous champion bicycle racer, and has formed Licensor for purposes of developing and licensing out the various trademarks associated with his name; and WHEREAS, the name and trademark "GREG LEMOND CYCLES", or such other similar trademark as the parties shall mutually agree in advance incorporating all or part of the name GREG LEMOND (as so selected, hereinafter referred to as the '*Marktt) acquired has a reputation for a high standard for quality and, through usage, has acquired distinctiveness and has become associated in the public's mind with the business of GREG LEMOND (ltLEMONDtI), and, by master license, Licensor; and WHEREAS, Licensor is willing to grant to Licensee and Licensee desires to acquire from Licensor, upon the terms and conditions hereinafter set forth, a sub-license with respect to the Mark, NOW, THEREFORE, in consideration of the mutual promises, covenants and conditions of the parties hereinafter set forth, it is agreed as follows:
1
.
Definitions.
As used herein, the following words shall have the following meanings:
1.01 Products: bicycles and bicycle frames, and no other products. A Product bearing any part of the Mark shall be a '*LicensedProduct.
1.02 Territorv: the United States, its territories and possessions, and the countries Licensee has designated and which 2~~ are set forth on Exhibit ~ ~ 1 . 0hereto.
1.03 Net Sales: gross amounts of shipments, as invoiced, directly or indirectly, by or under authority from Licensee, of Licensed Products, in any transaction in commerce, less (a) all trade discounts (not to exceed usual industry practices) to the extent actually taken and (b) all returns of Licensed Products other than for exchange:
1.03.01 "Net Basic Salesf1 shall be sales to Licensee's regular customers in the ordinary course of its business; and
LCI 03595 CONFIDENTIAL
32133-4bikes
1.03.02 "Net Distributor Sales" shall be sales to Licensee's distributors, i.e., those who purchase for resale only to retailers and not to ultimate consumers.
1.04 Contract Period: the period commencing on the date hereof and ending (a) on September 30, 2005 (the "Primary Termt1), provided that the same shall be extended and continue thereafter to the applicable September 30 of the final ttContract Year" (as hereinafter defined) hereunder, as to which either party shall have given the other two ( 2 ) full years notice to terminate effective at such time (the earliest effective date of which may be the last day of the Primary Term), or (b) on September 30 of such earlier year if this Agreement is earlier terminated under Paragraph 12 below.
Term, or the in Paragraph Agreement is whichever is
1.05 Expiration Date:
the last day of the Primary last effective Contract Year thereafter as set forth 1.04, or such earlier Contract Year if this earlier terminated under Paragraph 12 below, applicable as the final period hereunder.
1.06 Contract Year: initially the period commencing on the date hereof and ending on September 30, 1996, and thereafter each twelve-month period ending on September 30, during the Contract Period. 1.07 Contract Quarter: initially the period comencing on the date hereof and ending on December 31, 1995 and thereafter each successive three-month calendar period during the Contract Period.
GREG LEMOND.
2.
1 0 License: .8
the sublicense of rights acquired from
Grant of Riqhts. Services and Guarantees.
2.01 Licensor hereby grants to Licensee, and Licensee hereby accepts, subject to the terms of this Agreement, the exclusive right and license (without the right to assign the same or grant sublicenses thereunder), to use the Mark in the Territory during the Contract Period in connection with the manufacture, advertisement, promotion, sale and distribution of Licensed Products; provided, however, that only those items of Products approved by Licensor (or not requiring approval) as hereinafter provided in Paragraph 5.01, may be manufactured and s o l d by Licensee hereunder. Licensor reserves all rights not expressly herein provided (and LEMOND reserves the same to the extent not heretofore granted to Licensor), including, but not limited to, all rights to utilize the Mark or variations thereof and the name of L33MOND in connection with (a) all products, merchandise and services other than Products in the Territory, and (b) all products, merchandise and services including Products' outside the Territory; provided, however, that neither Licensor nor LEMOND shall grant any third party in the business of manufacturing or selling Products the right to use the Mark or
-2-
LCI 03596 CONFIDENTIAL
32133-4bikes
LEMOND's name, in any form, for any purpose, during the Contract Period.
2.02 Licensor shall provide the reasonable services of LEMOND in connection with the development and design of Licensed Products and the promotion thereof.
As and when requested by Licensee, Licensor shall cause LEMOND to be available for up to thirty (30) *@Working Days" in the first Contract Year, less the number of Working Days LEMOND provides to Licensee under any other agreement, at times and places convenient and reasonably acceptable to LEMOND and subject, in any event, to his personal and professional schedule, for promotional services relating to the Licensed Products, including personal appearances, appearances on television or radio talk shows, press conferences, attendance at trade shows and the participation in photo shoots to develop materials for advertising literature, point of sale displays and editorial pieces. Licensor shall require LEMOND to be similarly reasonably available in subsequent Contract Years based upon, and for the number of Working Days contained in, a promotional campaign jointly developed and reasonably approved by the parties.
2.02.01
2.02.02 Licensor shall cause LFXOND to reasonably cooperate with Licensee in the design and development of Licensed Products, including the styling, fabrication, colors, component parts and other non-generic features.
All reasonable expenses relating to 2.02.03 LENOND's services hereunder shall be paid or reimbursed by Licensee, including business class air travel for international and coach for domestic flights, hotel accommodations and meals for LEMOND and one companion, ground transportation and other incidental items (exclusive of personal expenditures). For purposes hereof a Working Day shall 2.02.04 consist of six (6) hours, exclusive of travel time. Travel time will be considered in determining Working Days on a case by case basis, to be determined in advance by the parties acting reasonably, with reference to the following guidelines: travel in excess of an hour, but less than four (4) hours shall be deemed one half (4) a Working Day, and travel time in excess of four (4) hours shall constitute a full Working Day. Other conditions relating to Working Days are set forth in Paragraph 16 hereof.
2.03 To the extent Licensor has undertaken to make certain assurances for and provide the services of LEXOND hereunder, by endorsement below, LEMOND guarantees to Licensee that such assurances are correct and such services shall be provided. 2.04 As a condition to the rights granted to Licensee hereunder, its parent corporation, INTREPID CORPORATION, of N14 W23833 Stone Ridge Drive, Suite #250, Waukesha, WI 53188 (the %uarantor"), shall execute and attach hereto a guaranty in favor
-3-
CONFIDENTIAL
LCI 03597
32133-4bikes
1
of Licensor and LEMOND, of the due and timely performance by Licensee of all obligations, undertakings, responsibilities and commitments of Licensee hereunder and relating hereto vis-a-vis Licensor and LEMOND, and agreeing to the application of all provisions of this Agreement to, including permitting the enforcement against the Guarantor in the first instance without exhausting remedies against Licensee, as if Guarantor were a contract party hereto directly with Licensor and LEMOND, as their interests appear.
3.
Earned Rovaltv.
3.01 In consideration of the rights herein granted, Licensee shall pay Licensor a percentage royalty ("Earned Royaltyt1) follows: as 3.01.01 three percent (3%) of all Net Basic Sales and two percent (2%) of all Net Distributor Sales (provided Net Distributor Sales do not exceed ten percent (10%) of all Net Sales during any Contract Year, with three percent (3%) of Net Distributor Sales in excess thereof. 3.01.02 Earned Royalties shall accrue as and when Licensed Products are shipped by Licensee. 3.02 Earned Royalty payments shall be made by Licensee to Licensor quarterly as to all Earned Royalties accrued during each Contract Quarter, no later than the due date for statements f o r the applicable Contract Quarter pursuant to paragraph 3.03. Licensee may deduct from Earned Royalties due for any Contract Year, only payments theretofore actually made of ffMinimum Royalties" (as hereinafter defined) for the same Contract Year.
accurate statement of its Net Sales of Licensed Products and accrued Earned Royalties for such Contract Quarter, said statement to be certified as accurate by the chief financial officer of Licensee and to include such information and detail as Licensor may from time to time reasonably request. The same shall contain separate reports as to Net Basic Sales and Net Distributor Sales, with Earned Royalty calculations and the application of Minimum Royalty payments to the aggregate Earned Royalty then due. The statement for each fourth Contract Quarter in each Contract Year shall contain all of the foregoing information for such Contract Quarter as well as a recapitulation of the information for the full Contract Year, with any necessary reconciliation. Attached hereto and made a part hereof as is Exhibit 113.031* a prototype report setting forth the information necessary for each Contract Quarter, in a form acceptable to Licensor, until further notice from Licensor.
3.04 All royalties and other obligations payable to Licensor under this Agreement shall be paid in United States dollars, by check drawn on Licensee's regular bank. Payments of
-4-
Licensee shall provide Licensor, within thirty 3.03 (30) days after the end of each Contract Quarter, a complete and
LCI 03598 CONFIDENTIAL
32133-4bikes
Earned Royalty for each Contract Quarter shall be credited with the "Minimum Royalty!' (as hereafter defined) payments for such Contract Quarter.
3.05 Interest at the rate of three percent (3%) over prime (at Licensee's regular bank) per annum (or the highest amount permitted by law, whichever is lower) shall accrue on any amount payable to Licensor hereunder, from and after the date upon which the payment is due until the date of-receiptof payment by Licensor. Such charge shall not be in lieu of or otherwise limit any rights of Licensor in the event a payment is not made by Licensee when due.
4.
Minimum Rovaltv.
4.01 Licensee agrees to pay Licensor a guaranteed minimum royalty in each Contract Year (the ltMinimum Royalty1!) during the first five (5) Contract Years of the Primary Term (the "Lock T r ' ) of One Hundred Thirty Five Thousand Dollars em!, ($135,000), and in each Contract Year thereafter, a sum equal to the annual average of the total amounts paid to Licensor hereunder during the immediately preceding three (3) Contract Years, but in no event less than the Minimum Royalty paid in the immediately preceding Contract Year.
4 . 0 2 As to the first Contract Year, Thirty Five Thousand Dollars ($35,000) out of the Minimum Royalty, i.e., One Hundred Thirty Five Thousand Dollars ($135,000), shall be paid upon execution. The balance thereof for the said first Contract Year (i.e., $100,000), and the Minimum Royalty for each Contract Year thereafter, shall be payable in four ( 4 ) equal quarterly installments, in advance, on the first day of each October, January, April and July of each such Contract Year. Minimum Royalty payments in each Contract Year shall constitute non refundable advances for such Contract Year, shall not be credited against sums due in any subsequent Contract Year and shall not be recoverable from Earned Royalty in any other Contract Year.
4.03 Payments of Earned Royalty made with respect to any Contract Year in excess of the Minimum Royalty for such Contract Year shall not be credited against the
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?