Sample Business Contracts
Intellectual Property Assignment Agreement - Benetton Sportsystem USA Inc. and Prince Sports Inc.
INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
Intellectual Property Assignment Agreement (the "Assignment"), dated as of April 30, 2003, between Benetton Sportsystem U.S.A., Inc., a corporation organized under the laws of New Jersey ("Assignor"), and Prince Sports, Inc., a corporation organized under the laws of Delaware ("Assignee"). Capitalized terms used herein without definition shall have the meanings ascribed thereto in Schedule VI hereto.
WHEREAS, Benetton Group S.p.A, a joint stock company organized under the laws of Italy ("Benetton") and Prince Sports, Inc., a corporation organized under the laws of Delaware ("Prince"), are parties to a certain Framework Agreement, dated as of March 27, 2003 (the "Framework Agreement"), pursuant to which, among other things, Benetton agreed to cause Assignor to sell, and Prince to purchase, certain assets of Assignor related to the Business;
WHEREAS, it is a condition to the Closing of the Framework Agreement that Assignor enters into this Assignment to transfer to Assignee certain intellectual property related to the Business (the "Assigned IP");
WHEREAS, Assignee desires to purchase or acquire all Assignor's right, title and interest in and to the Assigned IP; and
WHEREAS, Assignee is the Assignor's successor with respect to the Business, to which Business the trademarks of the Assigned IP pertain, and the Business is ongoing and existing;
NOW, THEREFORE, in consideration of, among other things, the payment by Assignee of the Purchase Price (consisting of Euro 36,500,000) and in further consideration of the mutual covenants and agreements contained in the Framework Agreement, the receipt and sufficiency of which are hereby acknowledged, Assignor and Assignee agree as follows:
- Assignment of Trademarks. Effective as of April 30, 2003, Assignor sells, transfers, conveys, assigns and delivers to Assignee and Assignee accepts all right, title and interest of Assignor in and to (i) the trademarks set forth in Schedule I and Schedule II hereto, (ii) the registrations and applications for registrations thereof and (iii) the goodwill of the business connected with the use thereof and symbolized thereby (the "Assigned Trademarks").
- Assignment of Patents. Effective as of April 30, 2003, Assignor sells, transfers, conveys, assigns and delivers to Assignee and Assignee accepts all right, title and interest of Assignor in and to the patents set forth in Schedule III and Schedule IV hereto (the "Assigned Patents").
- Assignment of Domain Names. Effective as of April 30, 2003, Assignor sells, transfers, conveys, assigns and delivers to Assignee and Assignee accepts all right, title and interest of Assignor in and to the domain names and registrations therefor set forth in Schedule V hereto (the "Assigned Domain Names").
- Transfer of Intangible Assets. Effective as of April 30, 2003, Assignor sells, transfers, conveys, assigns and delivers to Assignee and Assignee accepts all right, title and interest of Assignor in and to the goodwill and all other intangible assets currently used exclusively in connection with the Business, including, without limitation, if and to the extent in existence, any and all trade secrets, inventions, designs, copyrights, non-registered trademarks and other intellectual property, know-how, manufacturing methods and processes (the "Assigned Intangible Assets").
- Relationship with the Framework Agreement. This Assignment is intended to evidence the consummation of the transactions contemplated by the Framework Agreement. This Assignment is made without representation or warranty except as provided in and by the Framework Agreement. This Assignment is in all respects subject to the provisions of the Framework Agreement and is not intended in any way to supersede, limit or qualify any provision of the Framework Agreement, except that the Schedules attached to this Assignment shall take precedence over the schedules to the Framework Agreement for purposes of this Assignment.
- Further Assurances. The parties hereby reciprocally acknowledge that a certain number of Assigned Trademarks, Assigned Patents, Assigned Domain Names and Assigned Intangible Assets were not duly endorsed in favor of Assignor following the relevant purchase or acquisition by, or transfer or assignment to, the same. Assignor hereby undertakes to give to Assignee all assistance reasonably necessary to the end of finalizing endorsements contemplated by this Assignment in favor of Assignee even, where necessary, by appointing an attorney-in-fact duly empowered to carry out all the actions necessary for such purpose.
- Successors. This Assignment shall inure to the benefit of and is binding upon the respective successors and assigns of Assignor and Assignee.
- Governing Law. This Assignment shall be governed by, and construed in accordance with (i) the laws of the United States, in respect to trademark and patent issues, and (ii) in all other respects, including as to validity (except for patent and trademark issues), interpretation and effect, by the laws of the State of New York without giving effect to the conflict of laws rules thereof.
- Dispute Resolution. Any dispute as to the rights assigned pursuant to this Assignment shall be resolved in accordance with the arbitration procedures set forth in the Framework Agreement.
IN WITNESS WHEREOF, Assignor and Assignee caused this Assignment to be duly executed as of the date first written above.
BENETTON SPORTSYSTEM U.S.A., INC.
By: Carlo Tunioli
Name: Carlo Tunioli
Title: Global Managing Director
PRINCE SPORTS, INC.
By: Michael Lyons
Name: Michael Lyons