Destination Brands International, LLC 001.3-a8'31v8
License Agreement
THIS AGREEMENT is made this 7th day of October, 2013 by and between the City
of Miami Beach, with a principal place of business at 1700 Convention Center Dr.,
Miami Beach, FL 33139 ("Licensor" or the "City"); and Destination Brands
International, LLC, a Florida Limited Liability Company with a principal place of
business at 11501 S.W. 40th Street, 2nd Floor, Miami, FL 33165 ("Licensee").
WHEREAS, Licensor owns a federally registered trademark for the stylized
wording, "MIAMI BEACH" in which "MIAMI" is thinner and "BEACH" is thicker or
bolded, which registration is under U.S. Trademark Registration No. 4,204,713
(Exhibit 1) and was granted on September 11, 2012 in connection with Licensor
providing information and news via a Website in the field of government services,
namely, information about arts, education and parks in Miami Beach (the
"Federally Registered Mark"); and
WHEREAS, Licensor owns and will apply for state and federal registration of the
trademark "MIAMI BEACH," using the same stylized font as the Federally
Registered Mark (i.e. with the word "MIAMI" being thinner and "BEACH being
thicker or bolded) for use in connection with goods and services relating to non-
medicated sun care preparations and/or non-medicated skin care preparations (such
trademark, including all applications for registration thereof, the "Miami Beach
Suncare Trademark"); and
WHEREAS, Licensor is the owner of the mark "MB" and will apply for a federal
registration for the "MB" mark for use in connection with goods relating to non-
medicated sun care preparations and/or non-medicated skin care preparations.
(Exhibit 2) (such trademark, including all applications for registration thereof, the
"MB Mark"), including, without limitation, that certain version of the MB Mark
(including all applications for registrations thereof) that is depicted on Exhibit 3
attached hereto (the "Specified MB Mark"; the Miami Beach Suncare Trademark,
the Federally Registered Mark and the MB Mark (including, without limitation, the
Specified MB Mark) are collectively referred to in this Agreement as the "Marks").
NOW, THEREFORE, in consideration of the mutual promises herein contained, and
for good and valuable consideration, receipt of which is hereby acknowledged by the
parties, it is hereby agreed:
1. GRANT OF LICENSE:
(a) Goods. Upon the terms and conditions hereinafter set forth, Licensor hereby
grants to Licensee, and Licensee hereby accepts the right, license and privilege to
utilize the Marks upon and in connection with the manufacture, sale and
MIAMI 3878612.16 79265/37148 1
distribution of packaged products for the purposes of non-medicated sun care
preparations and/or non-medicated skin care preparations (such packaged products,
to the extent that the same incorporate during the Term hereof the Marks licensed
hereunder, are collectively referred to as the "Goods"; provided that, after the
expiration or termination of the Term hereof, such packaged products (even if they
incorporate the Specified MB Mark in accordance with Section 15 hereof, but so
long as they do not incorporate any of the other Marks) shall not be deemed to come
within the definition of "Goods" hereunder, and no royalty or other obligations of
Licensee hereunder shall survive or apply with respect thereto (other than, to the
extent they incorporate the Specified MB Mark, the obligations of Licensee under (i)
Section 6(a), (ii) the first two sentences of Section 8(a), and (iii) Sections 8(b) and
(c)))
(b) Territory. The license hereby granted extends worldwide.
(c) Term. The term of the license hereby granted shall commence on the 7th day of
October, 2013 and shall continue until the 7th day of October, 2018, unless sooner
terminated in accordance with the provisions hereof.
(d) Renewal: The License Agreement may be renewed as follows:
1. Licensee has the sole discretion to renew for one (1) additional three (3)
year term following the termination of the initial term.
2. Licensor has the sole discretion to renew for one (1) additional three (3)
year term following the termination of the first renewal term.
3. Following the second renewal term, the license may be renewed for
three (3) additional three (3) year terms upon mutual agreeable terms.
2. TERMS OF PAYMENT:
(a) Rate. Licensee agrees to pay Licensor during the initial term of this
Agreement and all renewals thereof (collectively, the "Term") a royalty as
follows:
1. A sum equal to nine percent (9%) of net sales by Licensee or any of its
affiliated associated or subsidiary companies of the Goods covered by this
Agreement up to the first $150,000 of net sales;
2. A sum equal to six percent (6%) of net sales by Licensee or any of its
affiliated, associated or subsidiary companies of the Goods covered by this
Agreement between $150,001 and $1,000,000 in net sales; and
MIAMI 3878612.16 79265/37148 2
1
3. A sum equal to three percent (3%) of net sales by Licensee or any of its
affiliated, associated or subsidiary companies of the Goods covered by this
Agreement above $1,000,001 of net sales.
4. The term "net sales" shall mean gross sales of the Goods less quantity
discounts (including unsalable, coop, slotting and stocking fees) and
returns, but no deduction shall be made for cash or other discounts or
uncollectible accounts. No costs incurred in the manufacture, sale,
distribution or exploitation of the Goods shall be deducted from any
royalty payable by Licensee.
5. Royalty payments shall begin to accrue twelve (12) months from the
start of sales or January 1, 2015 whichever is sooner.
(b) Periodic Statements. Within 30 days after the initial shipment of the Goods
covered by this Agreement, and within 90 days of the end of each calendar year
during the Term Licensee shall furnish to Licensor complete statements certified to
be accurate by Licensee showing the number, description and gross sales price of
the Goods, as well as itemized deductions from gross sales price and net sales price
of the Goods distributed and/or sold by Licensee during the preceding calendar
quarter, together with any returns made during the preceding calendar quarter.
Such statements shall be furnished to Licensor whether or not any of the Goods
have been sold during the preceding calendar quarter.
(d) Royalty Payments. Royalties shall be due during the Term within ninety (90)
days following the end of the calendar year in which they are earned, and payment
shall accompany the statements furnished as required above. The receipt or
acceptance by Licensor of any of the statements furnished pursuant to this
Agreement or of any royalties paid hereunder, or the cashing of any royalty checks
paid hereunder shall not preclude Licensor from questioning the correctness thereof
at any time, and in the event that any inconsistencies or mistakes are discovered in
such statements or payments, they shall promptly be rectified and the appropriate
payment made by Licensee. Payment shall be in U.S. funds. Domestic taxes payable
in the licensed territory shall be payable by Licensee.
3. EXCLUSIVITY:
(a) The License granted herein shall be exclusive to Licensee for use of the Marks in
connection with the Goods.
(b) It is agreed that if Licensor conveys an offer to Licensee to purchase any of the
Goods in connection with a premium, giveaway or other promotional arrangement,
Licensee agrees to sell the Goods to Licensor at its lowest market price excluding
closeouts.
MIAMI 3878612.16 79265/37148 3
4. GOODWILL: Licensee recognizes the great value of the goodwill associated with
the Marks, and acknowledges that the Marks and all rights therein and the
goodwill appurtenant thereto belong exclusively to Licensor.
5. LICENSOR'S TITLE AND PROTECTION OF LICENSOR'S RIGHTS:
(a) Licensee agrees that it will not during the term of this Agreement, or thereafter,
attack the title or any rights of Licensor in and to the Marks or attack the validity
of this license. Licensor hereby represents to Licensee that that to the best of its
knowledge Licensor is the sole and exclusive owner of all intellectual property
rights in and to the Marks. Licensor hereby agrees to indemnify, defend and hold
harmless Licensee and each of its owners, managers, officers, affiliates, contractors
and agents and each of their respective successors and assigns (collectively, the
"Licensee Indemnitees") from and against all losses, damages, liabilities, costs and
expenses (including, without limitation, reasonable fees and expenses of counsel)
arising from any legitimate claims or suits to the extent the same arise out of the
use by the Licensee Indemnitees of the Marks as authorized in this Agreement,
provided that prompt notice is given to Licensor of any such claim or suit and
provided, further, that Licensor shall have the option to undertake and conduct the
defense of any suit so brought and no settlement of any such claim or suit may be
made without the prior written consent of Licensor (not to be unreasonably
withheld or delayed). No settlement of any such claim or suit may be made without
the prior written consent of Licensee (not to be unreasonably withheld or delayed)
unless the same is for money damages only, paid in their entirety by Licensor, and
without any injunctive relief or other restrictions being imposed on any Licensee
Indemnitees.
Licensee agrees to assist Licensor to the extent reasonably necessary in the
(b) g Y Y
procurement of any registration for or to protect any of Licensor's rights to the
Marks, and Licensor, if it so desires, may commence or prosecute any claims or suits
in its own name to the extent necessary to protect any of Licensor's rights to the
Marks. Licensee shall notify Licensor in writing of any infringements or imitations
by others of the Marks on goods the same as or similar to the Goods covered by this
Agreement which may come to Licensee's attention, and Licensor shall have the
sole right to determine whether or not any action shall be taken on account of any
such infringements or imitations, provided, however, that, without limiting its
obligations to register the Marks under the recitals hereof, Licensor in all events
agrees to use all commercially reasonable efforts to protect the value and goodwill
associated with, and the value of the intellectual property rights and interests in,
the Marks (including, without limitation, the Specified MB Mark after the
expiration or termination of the Term). Licensee shall not institute any suit or take
any action on account of any such infringements or imitations without first
obtaining the written consent of the Licensor to do so. Licensee further agrees to
cause its affiliates, BLIII International, LLC, a Florida limited liability company
f/k/a BLIII Holdings, LLC, and BLIII Holdings, Inc., a Florida corporation, to either
MIAMI 3878612.16 79265/37148 4
assign to the City or withdraw their Federal applications for "MB Miami Beach"
Serial number 86077280 and for "MB Miami Beach" Serial number 86077286
within thirty (30) days of execution of this Agreement.
(c) Licensee agrees that the perpetual license granted in Section 15 shall not form
the basis of an attack on the validity of the "Marks." The rights and obligations of
the parties under this Section 5 shall survive any expiration or termination of this
Agreement.
6. INDEMNIFICATION BY LICENSEE AND PRODUCT LIABILITY
INSURANCE:
(a) Licensee hereby agrees to indemnify, defend and hold harmless Licensor, as well
as the officers, directors, agents and employees of the Licensor, or any of its
subsidiaries or affiliates (collectively with Licensor, the "Licensor Indemnitees"),
from and against all losses, damages, liabilities, costs and expenses (including,
without limitation, reasonable fees and expenses of counsel) arising from any claims
or suits to the extent the same arise out of(i) legitimate claims or suits with respect
to unauthorized use of any trademarks, patent, process, idea, method or device by
Licensee in connection with the Goods covered by this Agreement (other than the
use of the Marks by the Licensee Indemnitees as authorized in this Agreement),
and/or (ii) legitimate claims or suits with respect to defects in the Goods, provided,
in each case, that prompt notice is given to Licensee of any such claim or suit and
provided, further, that Licensee shall have the option to undertake and conduct the
defense of any suit so brought and no settlement of any such claim or suit may be
made without the prior written consent of Licensee (not to be unreasonably
withheld or delayed). No settlement of any such claim or suit may be made without
the prior written consent of Licensor (not to be unreasonably withheld or delayed)
unless the same is for money damages only, paid in their entirety by Licensee, and
without any injunctive relief or other restrictions being imposed on any Licensor
Indemnitees.
(b) Licensee agrees that it will obtain, at its own expense, Commercial General
Liability on a comprehensive basis, including Personal Injury Liability and
Products/Completed Operations, in an amount not less than $5,000,000 combined
single limit per occurrence, for bodily injury and property damage from a recognized
insurance company which has qualified to do business in the state of Florida,
providing adequate protection, at least in the amount of$5,000,000, for Licensor (as
well for Licensee) against any claims, suits, loss or damage arising out of any
alleged defects in the Goods.
As proof of such insurance, a fully paid certificate of insurance naming Licensor as
an additional insured party will be submitted to Licensor by Licensee before any
Goods are distributed or sold, and at the latest within thirty days after the date
MIAMI 3878612.16 79265/37148 5
first written above. Licensor shall be entitled to a copy of the then existing
certificate of insurance, which shall be furnished to Licensor by Licensee.
7. QUALITY OF MERCHANDISE:
(a) Licensee agrees that the Goods covered by this Agreement shall be of high
standard and of such style, appearance and quality as to be adequate and suited to
their exploitation to the protection and enhancement of the Marks and the goodwill
pertaining thereto, that such Goods will be manufactured, sold and distributed in
accordance with all applicable federal, state and local laws, and that the
manufacture, sale and distribution shall not result in a material adverse effect upon
the good name of Licensor or any of its programs or the Marks.
(b) Licensee shall, before the initial sale or distribution of any of the Goods, furnish
to Licensor free of cost for its written approval a reasonable number of samples of
each Goods, its cartons, containers, packing and wrapping material. The quality
and style of such Goods as well as of any carton, container, packing or wrapping
material shall be subject to the approval of Licensor before the initial sale or
distribution or in the case of any material changes or deviations from what was
previously approved. Such approvals shall not be unreasonably upheld.
(c) Annually, after Licensee has commenced selling the Goods and upon Licensor's
written request, Licensee shall furnish without cost to Licensor not more than Five
Hundred (500) additional random samples of each Goods being manufactured and
sold by Licensee hereunder, together with any cartons, containers, packing and
wrapping material used in connection therewith.
(d) Licensee shall contribute up to one percent (1%) of Licensee's net profits with
respect to the sale of the Goods towards funding beach cleanups and sun protection
education.
8. LABELING:
(a) Licensee agrees that, except as otherwise approved by Licensor, it will cause to
appear on or within each Goods sold by it under this license and on or within all
advertising, promotional or display material bearing the Marks the appropriate
trademark notice e.
( g., "TM" or, upon the federal registration thereof(provided notice
has been given to the Licensee), "®"). In the event that any Goods are marketed in
a carton, container, packing or wrapping material bearing the Marks, such notice
shall also appear upon that carton, container, packing or wrapping material. All
proposed packaging of the Goods bearing the Marks shall (prior to their initial use
or in the case of any material changes or deviations from previously approved
packaging) be submitted to Licensor for approval of the appropriate use of the
Marks and statutory notice (such approval not to be unreasonably withheld or
delayed).
MIAMI 3878612.16 79265/37148 6
(b) Licensee agrees to cooperate reasonably and in good faith with Licensor for the
purpose of securing and preserving Licensor's (or any grantor of Licensor's) rights in
and to the Marks. In the event there has been no previous registration of the Marks
with respect to the Goods, Licensee shall, at Licensor's request and expense,
reasonably cooperate in the effort to register the Marks in the appropriate class in
the name of Licensor. It is agreed that nothing contained in this Agreement shall be
construed as an assignment or grant to the Licensee of any right, title or interest in
or to the Marks, it being understood that all rights relating thereto are reserved by
Licensor, except for the licenses hereunder to Licensee of the right to use and utilize
the Marks only as specifically and expressly provided in this Agreement. Licensee
hereby agrees that at the termination or expiration of this Agreement Licensee will
be deemed to have assigned, transferred and conveyed to Licensor any rights,
equities, goodwill, title or other rights in and to the Marks which may have been
obtained by Licensee or which may have vested in Licensee in pursuance of any
endeavors covered hereby (other than its continuing exclusive license to the
Specified MB Mark in accordance with Section 15), and that Licensee will execute
any instruments reasonably requested by Licensor to accomplish or confirm the
foregoing. Any such assignment, transfer or conveyance shall be without other
consideration than the mutual covenants and considerations of this Agreement.
(c) Licensee hereby agrees that, subject to the licenses granted hereunder, its every
use of the Marks shall inure to the benefit of Licensor and that Licensee shall not at
any time acquire any rights in the Marks by virtue of any use it may make of the
Marks.
9. PROMOTIONAL MATERIAL:
(a) Licensor agrees that Licensee's Goods shall be designated, and shall be referred
to by the Licensor, as the worldwide, exclusive and official sun care product of
Licensor and Licensee shall be free to use such designation in all identifications,
communications and/or descriptions of the Goods, including, without limitation, all
advertising, artwork, television uses otherwise approved pursuant to Section 9(e)
below, and all promotional uses.
(b) In all cases where Licensee desires artwork involving Goods, which are the
subject of this license, the cost of such artwork and the time for the production
thereof shall be borne by Licensee. All artwork and designs involving the Marks, or
any reproduction thereof, shall be and remain the property of Licensee, except that,
notwithstanding their invention or use by Licensee, following the expiration or
termination of the license to the Marks (other than the Specified MB Mark) granted
to Licensee under this Agreement, Licensee shall make no further use of same nor
permit the use of the same by others to the extent the same continue to incorporate
the Marks (other than the Specified MB Mark).
MIAMI 3878612.16 79265/37148 7
(c) Licensor agrees to diligently and in good faith promote the Goods at no cost to
Licensee through Licensor's government access communication resources upon
provided such promotion does not violate an federal state and/or local
availability, p p y ,
laws and policies and other said terms and agreements. Licensor shall use its best
efforts to advertise and promote the Goods so as to give the Marks, Licensee and the
Goods full and favorable prominence and publicity.
(d) Licensee agrees not to offer for sale, advertise or publicize any of the Goods
hereunder on television without prior written approval of Licensor of the
storyboards relating to such proposed television offering, advertisement or
publication, which Licensor may grant or withhold in its unfettered discretion.
Licensee agrees that any visual marketing, including, but not limited to,
photography, video and film purporting to depict Miami Beach must be real
depictions of Miami Beach and take place in Miami Beach.
(e) Licensee agrees to annually invest a minimum of ten percent (10%) of its net
sales with respect to the Goods toward the marketing and promotion of the Goods.
10. SALE TO LICENSOR:
Subject to availability, Licensee agrees to sell to Licensor such quantities of the
Goods at as low a rate and on as good terms as Licensee sells similar quantities of
the Goods to the general trade.
11. RECORDS:
(a) Licensee agrees to keep accurate books of account and records covering all
transactions relating to the sale of Goods under the license hereby granted, and
Licensor and its duly authorized representatives shall have the right during the
Term at all reasonable hours of the day, upon reasonable prior written notice, to
conduct an examination of (but not to extract or otherwise publicize) these books of
account and records and of all other documents and materials in the possession or
under the control of Licensee with respect to the subject matter and terms of this
Agreement. Licensee shall, during the Term, at its own expense, as soon as
available following the end of each calendar year, furnish to Licensor a detailed
audited statement prepared annually by an independent certified public accountant
showing the number, description, gross sales price, itemized deductions from gross
sales price and net sale price of the Goods covered by this Agreement distributed
and/or sold by Licensee during such calendar year. All books of account and records
shall be kept available for at least five (5) years after the termination of this license.
(b) Public Records. Licensee understands that the public shall have access at all
reasonable time to City contracts, subject to the provisions of Chapter 119, Florida
Statutes, and agrees to allow access by the City and the public to all documents
subject to disclosure under applicable law.
MIAMI 3878612.16 79265/37148 8
12. BANKRUPTCY, VIOLATION, ETC.:
(a) If Licensee shall not have commenced in good faith to manufacture and
distribute any Goods within three months after the date of this Agreement, or if at
any time thereafter in any calendar month Licensee does not make any Goods
available for sale, Licensor, as the sole and exclusive remedy available to it
hereunder, may terminate this Agreement by giving written notice of termination to
Licensee. Such notice shall be effective when mailed by Licensor. In addition, if net
sales of the Goods fails to reach $150,000 by the end the first Term, Licensor may
terminate this Agreement with thirty (30) days written notice to Licensee. Neither
party shall be liable to the other party for any termination of this Agreement
pursuant to this Section 12(a).
(b) If Licensee makes an assignment for the benefit of its creditors or if Licensee
discontinues its business, this Agreement and the license hereby granted shall
automatically terminate forthwith without any notice whatsoever being necessary.
In the event this Agreement is so terminated, Licensee, its representatives,
trustees, agents, administrator, successors and/or assigns shall have no right to sell,
exploit or in any way deal with or in any Goods covered by this Agreement to the
extent the same incorporate the Marks or any carton, container, packing or
wrapping material, advertising, promotional or display material pertaining thereto,
in each case, to the extent the same incorporates the Marks, except with and under
the special consent and instructions of Licensor in writing, which instructions it
shall be obligated to follow. Neither party shall be liable to the other party for any
termination of this Agreement pursuant to this Section 12(b).
(c) If a party shall materially violate any of its obligations under the terms of this
Agreement, the other party shall have the right to terminate the license hereby
granted upon thirty days' notice in writing, and such notice of termination shall
become effective unless such other party shall remedy the violation to the
reasonable satisfaction of the non-breaching party within the thirty-day period.
(d) Termination of this Agreement under the provisions of Section 12(c) shall be
without prejudice to any rights, which the terminating party may otherwise have
against the other party. Upon the termination of this Agreement, notwithstanding
anything to the contrary herein, all royalties on sales theretofore made shall become
due and payable together with the delivery of the Final Statement described under
Section 13 below and no minimum royalties shall be repayable or avoidable.
13. FINAL STATEMENT UPON TERMINATION OR' EXPIRATION: Fifteen (15)
days before the expiration of this Agreement and, in the event of its termination,
thirty days after receipt of notice of termination of the happening of the event
which terminates this Agreement where notice is required. (or if notice is not
required, 30 days after the effective date of such termination), Licensee shall
furnish to Licensor a statement showing the number and description of Goods on
MIAMI 3878612.16 79265/37148 9
hand or in process. Licensor shall have the right to take a physical inventory to
ascertain or verify such inventory and statement, and refusal by Licensee to submit
to such physical inventory by Licensor .shall forfeit Licensee's right to dispose of
such Goods while still bearing the Marks (other than the Specified MB Mark), with
Licensor retaining all legal and equitable rights Licensor may have with respect to
the Marks in such circumstances. Within thirty (30) days following the expiration
or any termination of this Agreement, Licensee shall deliver to Licensor a
statement meeting the requirements of Section 2(d) with respect to all net sales of
Goods occurring prior to such expiration or termination (the "Final Statement").
Licensee shall pay to Licensor royalties calculated as provided in Section 2 with
respect to such net sales in accordance with, and concurrently with delivery of, such
Final Statement.
14. DISPOSAL OF STOCK UPON TERMINATION OR EXPIRATION: After the
expiration or any termination of this Agreement, Licensee, notwithstanding
anything to the contrary provided in this Agreement, may dispose of Goods which
are on hand or in process as reflected in the inventory notice required under Section
13 for a period of ninety (90) days after notice of termination (and the license to the
Marks (other than the Specified MB Mark) granted hereunder shall continue solely
for such purpose), provided royalties with respect to that period are paid and
statements are furnished for that period in accordance with paragraph 2 within
thirty (30) days following the expiration of such period. Notwithstanding anything
to the contrary herein, Licensee shall not manufacture, sell or dispose of any Goods
covered by this license (i.e., bearing the Marks other than the Specified MB Mark)
after its expiration or its termination based on the failure of the Licensee to affix a
notice to the Goods, cartons, containers, packing or wrapping material, advertising,
promotional or display material as required by Section 8(a), or if the Licensee has
departed from the quality and style approved by Licensor pursuant to paragraph 7.
15. EFFECT OF TERMINATION OR EXPIRATION: Except as provided in Section
14 above, upon and after the expiration or termination of this Agreement, all rights
granted to Licensee hereunder with respect to the Marks shall forthwith revert to
Licensor and Licensee will refrain from further use of the Marks in connection with
the manufacture, sale or distribution of Licensee's products, except as provided in
paragraph 14 and except as follows: The exclusive license and right to use the
Specified MB Mark, on a worldwide, royalty free basis, in connection with any
products relating to non-medicated sun care preparations and/or skin care
preparations shall continue perpetually and will not revert to Licensor except if
termination of this Agreement is by Licensor and is based on circumstances referred
to in Section 12. Such perpetual License shall not prevent Licensor from using the
MB Mark for any other product that are not for non-medicated sun care
preparations and/or skin care preparations. This includes, by way of example, but
is not limited to, perfume, combs and brushes, and nail polish. Licensor agrees that
for a period of two (2) years from the effective date of any termination or expiration
of this Agreement (other than a termination by Licensor pursuant to Sections 12(a),
MIAMI 3878612.16 79265/37148 10
12(b) or 12(c)), it shall not license to others the use of the Marks, or any other
trademarks that are the same as or similar to or derivded from the Marks, in
connection with the manufacture, sale or distribution of products and/or services for
non-medicated sun care preparations and/or skin care preparations. Should the
perpetual exclusive license to the Specified MB Mark go into effect following
termination or expiration of this Agreement as hereinabove provided, Licensor shall
not, at any time (including after the expiration of the aforementioned 2 year period),
directly or indirectly, make any use of or grant any rights or license to the Specified
MB Mark or any confusingly similar trademarks to any person or entity in
connection with any products for non-medicated sun care preparations and/or skin
care preparations. Without limiting its other rights or remedies, and
notwithstanding any other provision in this Agreement to the contrary, Licensee
shall be entitled to enforce its rights under Section 5 and this Section 15 by
equitable relief and/or specific performance.
16. LICENSOR'S REMEDIES:
(a) Licensee acknowledges that its failure (except as otherwise provided herein) to
cease the manufacture, sale or distribution of the Goods or any class or category
thereof, in each case, to the extent the same still incorporate the Marks (other than
the Specified MB Mark), at the termination or expiration of this Agreement will
result in immediate and irremediable damage to Licensor and to the rights of any
subsequent permitted licensee. Licensee acknowledges and admits that there is no
adequate remedy at law for such failure to cease manufacture, sale or distribution,
and Licensee agrees that in the event of such failure Licensor shall be entitled to
equitable relief by way of temporary and permanent injunctions and such other
further relief as any court with jurisdiction may deem just and proper.
(b) Resort to any remedies referred to herein shall not be construed as a waiver of
any other rights and remedies to which Licensor may be entitled under this
Agreement or otherwise.
17. EXCUSE FOR NONPERFORMANCE: Licensee shall be released from its
obligations hereunder and this license shall terminate in the event that
governmental regulations or other causes arising out of a state of national
emergency or war or causes beyond the control of the parties render performance
impossible and the Licensee so informs the Licensor in writing of such causes and
its desire to be so released. In such event, all royalties on sales theretofore made
shall become due and payable as provided in Section 13 and no minimum royalties
shall be repayable.
18. NONDISCRIMINATION: Licensee represents and warrants to the City that
Licensee does not and will not engage in discriminatory practices and that there
shall be no discrimination in connection with Licensee's use of the Marks on account
MIAMI 3878612.16 79265/37148 11
of race, color, sex, religion, age, handicap, marital status, national origin, or sexual
orientation.
19. CONFLICT OF INTEREST: Licensee is aware of the conflict of interest laws of
the City of Miami Beach, Miami-Dade County, Florida (Miami-Dade County Code,
Section 2-11.1 et, seq.) and of the State of Florida as set forth in the Florida
Statutes, and agrees that it will fully comply in all respects with the terms of said
laws and any future amendments thereto.
Licensee further covenants that no person or entity under its employ,
presently exercising any functions or responsibilities in connection with this
Agreement has any personal financial interest, direct or indirect, with the City.
Licensee covenants that, in the performance of this Agreement, no person or entity
having such conflicting interest shall be utilized in respect to services provided
hereunder. Any such conflict of interest(s) on the part of Licensee, its employees or
associated persons, or entities must be disclosed in writing to the City.
20, WAIVER OF JURY TRIAL: The parties hereby knowingly, irrevocably,
voluntarily and intentionally waive any right either may have to a trial by jury in
respect of any action, proceeding or counterclaim based on this License Agreement,
or arising out of, under or in connection with this License Agreement or any
amendment or modification of this License Agreement, or any other agreement
executed by and between the parties in connection with this License Agreement, or
any course of conduct, course of dealing, statements, (whether verbal or written) or
actions of any party hereto. This waiver of jury trial provision is material
inducement for the City and Licensee entering into this subject transaction.
21. ATTORNEYS' FEES: If it becomes necessary for the City or Licensee to enforce
their respective rights under this License Agreement or any part hereof through
litigation, Licensee and City agree that the prevailing party shall be entitled to
recover from the other party all costs and expenses of such litigation, including a
reasonable attorneys' fee and costs, for all trial and appellate proceedings.
22. NOTICES: All notices and statements to be given, and all payments to be made
hereunder, shall be given or made at the respective addresses below:
To Licensor:
City of Miami Beach
1700 Convention Center Drive
Miami Beach, FL 33139
Attn: Jimmy Morales, City Manager
AND
MIAMI 3878612.16 79265/37148 12
City of Miami Beach
1700 Convention Center Drive
Miami Beach, FL 33139
Attn: Jose Smith, City Attorney
AND
City of Miami Beach
1700 Convention Center Drive
Miami Beach, Florida
Attn: Max Sklar, Tourism, Culture, & Economic Development Director
To Licensee:
Destination Brands International, LLC
11501 S.W. 40th Street, 2nd Floor,
Miami, FL 33165
Attn: Marcos Perez
Unless notification of a change of address is given in writing, and the date of
mailing shall be deemed the date the notice or statement is given.
23. NO JOINT VENTURE: Nothing herein contained shall be construed to place the
parties in the relationship of partners or joint venturers, and Licensee shall have no
power to obligate or bind Licensor in any manner whatsoever.
24. NO ASSIGNMENT OR SUBLICENSE BY LICENSEE: This Agreement and all
rights and duties hereunder are personal to each party and shall not, without the
written consent of the other party, be assigned, mortgaged, sublicensed or otherwise
encumbered by such party or by operation of law, it being acknowledged and agreed,
however, that the use of the Marks on behalf of Licensee by third parties engaged
thereby in connection with the marketing, sale and/or distribution of the Goods in
accordance with this Agreement shall not violate this Section 24.
24. NO WAIVER: None of the terms of this Agreement can be waived or modified
except by an express agreement in writing signed by both parties. There are no
representations, promises, warranties, covenants or undertakings other than those
contained in this Agreement, which represent the entire understanding of the
parties. The failure of either party hereto to enforce, or the delay by either party in
enforcing, any of its rights under this Agreement shall not be deemed a continuing
waiver or a modification thereof and either party may, within the time provided by
applicable law, commence appropriate legal proceedings to enforce any or all of such
rights. No person, firm, group or corporation other than Licensee and Licensor shall
MIAMI 3878612.16 79265/37148 13
be deemed to have acquired any rights by reason of anything contained in this
Agreement, except as provided in paragraphs 6 and 20.
26. ENTIRE AGREEMENT: This Agreement contains the entire agreement
between the parties relating to the subject matter hereof, and all prior proposals,
discussions or writings are superseded hereby. The terms of this License shall be
binding upon and shall inure to the benefit of the parties and their successors, heirs
and assigns.
27. LIMITATION OF LIABILITY: The City desires to enter into this Agreement
only if in so doing the City can place a limit on its liability for any cause or action
for breach of this Agreement (other than any breach of Section 5 hereof, which shall
be subject to the damages limitations set forth in in Florida Statutes, Section
768.28), so that its liability for any such breach never exceeds the sum of
$50,000.00. Licensee hereby expresses its willingness to enter in this Agreement
with a $50,000.00 limitation on recovery for any action for breach of contract (other
than any breach by the City of Section 5 hereof, which shall be subject to the
damages limitations set forth in in Florida Statutes, Section 768.28). Accordingly,
the City shall not be liable to Licensee for damages to Licensee in an amount in
excess of $50,000.00, for any action for breach of contract arising out of the
performance or non-performance of any obligations imposed upon the City by this
Agreement (other than any breach by the City of Section 5 hereof, which shall be
subject to the damages limitations set forth in in Florida Statutes, Section 768.28).
Nothing contained in this paragraph or elsewhere in this Agreement is in any way
intended to be a waiver of the limitation placed upon the City's liability as set forth
in Florida Statutes, Section 768.28.
[SIGNATURES LOCATED ON THE NEXT PAGE.]
MIAMI 3878612.16 79265/37148 14
IN WITNESS WHEREOF, the parties have caused this instrument to be duly
executed as of the day and year first written above.
City of Miami Beach
By
Matti rrera ower, Mayor
City Clerk
INCORP ORATED:
Ob
Destin ion rands International, LLC '(%H `Z�
By:
Benjamin eon, , as Member and Chief Executive Officer.
Dated:
APPROVED AS TO
FORM &I_ANGUNGE
&FOR EXECUTION
orney to
MIAMI 3878612.16 79265/37148
Exhibit 1
MIAMI 3878612.16 79265/37148
Exhibit 2
MIAMI 3878612.16 79265/37148
Exhibit 3
i
MIAMI 3878612.16 79265/37148
EXHIBIT 'I �
,pit tates;
�ncte� �ta�e�c �a�e�ct and �rab�errcar� �ffcr�e
"t4jra
MIAMI BEACH
Reg. No. 4,204,713 CrrY OF MIAMI BEACH(FLORIDA MUNICIPAL CORPORATION)
1700 CONVENTION CENTER DR.
Registered Sep. 11,2012 MIAMI BEACH,FL 33139
Int. Cl.: 41 FOR:PROVIDING INFORMATION AND NEWS VIA A WEBSITE IN THE FIELD OF GOV-
ERNMENT SERVICES,NAMELY,INFORMATION ABOUT ARTS,EDUCATION AND PARKS
SERVICE MARK IN MIAMI BEACH.IN CLASS 41(U.S.CLS.100,101 AND 107).
FIRST USE 8-1-2005;IN COMMERCE 8-1-2005.
PRINCIPAL REGISTER
THE MARK CONSISTS OF THE STYLIZED WORDING, "MIAMI BEACH" IN WHICH
"MIAMI"IS TFUNNER AND'BEACH"IS THICKER OR BOLDED.
SEC.2(F).
SER,NO.85-411,845,FILED 8-31-2011.
ROBIN CHOSID,EXAMINING ATTORNEY
oinemr orft Untw Std o Patera and Tm mark OfRa