License Agreement [Amendment No. 3 and Assignment] - Trabelco NV, Jiangsu Electronics Industries Ltd., Hagemeyer Electronics NA Inc., Hagemeyer Consumer Products Inc. dba Koss Electronic Products, KCP Ltd. and Koss Corp.
THIRD AMENDMENT AND ASSIGNMENT OF LICENSE AGREEMENT
THIS THIRD AMENDMENT AND ASSIGNMENT ("Assignment") made and entered
into as of the 31st day of March, 1997, by and among TRABELCO, N.V., a
Netherlands Antilles company ("Assignor"), JIANGSU ELECTRONICS INDUSTRIES
LIMITED, a British Virgin Islands company ("Assignee"), HAGEMEYER ELECTRONICS
(N.A.), Inc. ("HENA"), HAGEMEYER CONSUMER PRODUCTS, INC. d/b/a Koss Electronic
Products, a Missouri corporation ("KEP"), KCP LIMITED, a British Virgin Islands
Company ("KCP"), and KOSS CORPORATION, a Delaware corporation ("Koss").
WITNESSETH, THAT:
WHEREAS, Assignee and Assignor, along with KEP and KCP (KEP, KCP and
Assignor are sometimes hereinafter referred to collectively as "Seller"), have
entered into a certain Asset Purchase Agreement dated as of March 31, 1997 (the
"Purchase Agreement"), pursuant to which Seller has agreed to sell and convey
and Assignee has agreed to purchase and acquire certain assets of Seller; and
WHEREAS, the execution and delivery of this Assignment is a condition
precedent to the obligation of Assignee to consummate the transactions
contemplated by the Purchase Agreement; and
WHEREAS, Assignor and Koss are parties to a certain License Agreement
dated November 15, 1991, as amended by Amendment to License Agreement dated
November 15, 1991, and a Second Amendment to License Agreement dated September
29, 1995 (as amended, the "License Agreement"); and
WHEREAS, Assignor desires to assign and Assignee desires to accept such
assignment and assume all of Assignor's right, title and interest in and to and
obligations under said License Agreement; and
WHEREAS, Koss, Assignor and Assignee desire to amend certain terms and
provisions of the License Agreement as hereinafter provided.
NOW, THEREFORE, Assignor and Assignee have agreed that in exchange for
a payment being made to Assignor of Ten Dollars ($10.00) and other good and
valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, Assignor and Assignee agree as follows:
1. Assignor hereby assigns to Assignee as of the Closing Date (as
defined in the Purchase Agreement) all of its right, title and interest in and
to and obligations under the License Agreement, a copy of which is attached
hereto as Exhibit A.
2. Assignor warrants that it is the Licensee under the License
Agreement; that the License Agreement is in full force and effect without
modification or amendment, except as hereinabove referenced; that no default
exists to the knowledge of Assignor,
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and no fact, circumstance or condition exists, to the knowledge of Assignor,
that with the passage of time or notice, or both, would constitute a default
under the License Agreement; and that, subject to the consent of Koss, it has
full right, power and authority to freely assign its interest under the License
Agreement pursuant to this Assignment. Assignor further warrants that its
interest under the License Agreement is free and clear of any and all liens and
encumbrances and that Assignee acquires Assignor's rights as Licensee under the
License Agreement subject only to, and as limited by the terms hereof, the
obligations of Assignee to perform the obligations of Licensee under the
License Agreement. Each of the warranties contained in this Section 2 are true
and correct on the date hereof and shall be true and correct on the Closing
Date (as defined in the Purchase Agreement).
3. Assignee, by acceptance of this Assignment, and as limited by the
terms hereof, assumes as of the Closing Date (as defined in the Purchase
Agreement) all of the rights, duties, obligations and covenants of Assignor
under the License Agreement. Notwithstanding the foregoing, Assignor shall
remain liable for the Minimum Royalty under the License Agreement for 1997.
Assignor shall make payment to Koss of such 1997 Minimum Royalty on the Closing
Date or immediately thereafter, but in no event later than May 9, 1997. Assignee
shall make payment of all Royalties during 1997 to Assignor until Assignor has
received all amounts paid to Koss representing the 1997 Minimum Royalty.
Thereafter, Royalties shall be paid to Koss in accordance with the terms of the
License Agreement.
4. No royalties will be payable to Koss with respect to any sales of
Licensed Products by Seller to Assignee.
5. For purposes of calculating the Royalties payable by Assignee to
Koss pursuant to Section 7 of the License Agreement, "net sales" shall be
determined based upon (i) Assignee's gross sales of each category of the
Licensed Products, less (ii) returned goods of each category of the Licensed
Products received by Assignor and its affiliate, Hagemeyer Service Center, Inc.
during 1997 and thereafter by Assignee.
6. Seller, to the extent of their rights as licensee or sub-licensee,
may continue to sell Licensed Products only in connection with (a) the sale of
new Licensed Products which were pledged to KEP as collateral under a Line of
Credit Agreement dated May 6, 1997, and foreclosed by KEP after default by
Assignee, and (b) the sale (without warranty) of "as is" Licensed Products
returned to Seller through December 31, 1997 and repaired prior to May 1, 1998.
All sales of Licensed Products pursuant to subsection (a) shall be made only in
the Territory and shall be made pursuant to normal distribution channels for
such new Licensed Products. Seller shall have no right to continue sales
pursuant to subsections (a) and (b) hereof after December 31, 1998. All sales of
Licensed Products pursuant to subsection (b) hereof
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shall be made only in the Territory and in markets and by use of distribution
channels other than these used by Assignor and/or Assignee to sell new Licensed
Products. In the event of any sales of Licensed Products by Seller pursuant to
this Section 6, Seller shall pay to Koss Royalties with respect to Seller's
sales of Licensed Products in the Territory. All Royalties paid by Seller
after the Effective Date (as defined in the Purchase Agreement) for any such
sales through December 31, 1997, shall be applied toward the Minimum Royalty
due under the License Agreement for 1997. Notwithstanding Section 13.3 of the
License Agreement, in the event Licensor terminates the License Agreement due
to Assignee's default under the terms of this License Agreement, Koss shall
have the right to immediately negotiate and implement a new license with any
other third party for the Licensed Products and/or sell the Licensed Products
itself.
7. Seller and their affiliate, Hagemeyer Service Center, Inc., to the
extent of their rights as licensee or sub-licensee, may continue to use the
trade name "Koss Electronic Products" only in connection with (a) the collection
of accounts receivable arising from sales before March 31, 1997, (b) the
receipt of returned goods and the servicing of warranty repair claims as
provided herein, and (c) sales pursuant to Section 6 hereof. In no event shall
Seller or any of its affiliates have the right to use the tradename "Koss
Electronic Products" after December 31, 1998.
8. Without limiting any other provision of this Assignment, Assignor
shall remain liable (a) for the payment of Royalties with regard to the sale of
new Licensed Products pursuant to subsection (a) of Section 6 above and (b) for
all obligations of Assignor pursuant to the License Agreement which arose prior
to the Closing Date (as defined in the Purchase Agreement).
9. Koss acknowledges the value of this agreement and the adequacy and
sufficiency of the consideration received, and hereby consents to the terms of
this Assignment and agrees that the License Agreement shall remain in full force
and effect and that following this Assignment Koss will continue to act as
licensor pursuant to the terms of the License Agreement as amended herein with
Assignee as licensee thereunder.
10. Other than as set forth herein, Assignor shall have no liability with
regard to Royalties pursuant to the License Agreement. Koss and Assignee
hereby agree that Assignee shall pay to Koss the following Minimum Royalties
for the Contract Years set forth below:
Year Minimum Royalties
---- -----------------
1998 $700,000
1999 $725,000
2000 $750,000
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11. Assignee shall have the right to grant a sublicense under the
License Agreement pursuant to Section 2.3 of the License Agreement as amended
by Section 16(b) hereof.
12. After payment to Koss of the Minimum Royalty for 1997, Seller
shall have no obligation to make any additional payment required to renew the
License Agreement upon the expiration of the current term and the parties
acknowledge that the payment by Seller of 1997 Minimum Royalty, as provided in
Section 3 hereof, satisfies Assignee's renewal obligation pursuant to the
License Agreement.
13. Assignee's affiliates, J.S. International, Inc. and Jiangsu
International Limited, shall have the right to use the tradename "Koss Audio &
Video Electronics" in connection with the manufacture, promotion, distribution
and sale of Licensed Products, the collection of related accounts receivable,
the receipt of related returned goods and the servicing of related warranty
repair claims.
14. After the Closing Date (as defined in the Purchase Agreement),
the liability of Assignor pursuant to the terms of the License Agreement and
the liability of HENA under its Guaranty attached to the License Agreement
shall continue in full force and effect as to all occurrences and events prior
to December 31, 1997.
15, Assignee agrees to comply with the insurance coverage
provisions of Section 11.3 of the License Agreement at the Closing Date (as
defined in the Purchase Agreement).
16. The License Agreement is hereby amended as follows:
(a) Section 2.1 is hereby deleted in its entirety and the
following inserted in its place:
Subject to all the terms and conditions of this Agreement, Licensor
hereby grants to Licensee the exclusive right and license to use the
Licensed Trademarks within the Territory during the Contract Period in
connection with, and only with, the manufacture, promotion,
distribution and sale of the Products. Notwithstanding anything herein
to the contrary, Licensee shall not manufacture, distribute or sell
headphones except as a prepackaged component of an audio system that is
commonly expected by the consuming public to include headphones with
such audio system.
(b) Section 2.3 is hereby deleted in its entirety and the
following inserted in its place:
Licensee shall have the right to grant a sublicense under this
Agreement to any entity in which Licensee owns at least a 51% equity
interest, permitting such entity to manufacture, promote, distribute and
sell the Licensed Products subject to the terms of this Agreement,
provided that Licensee first executes a letter agreement undertaking to
recognize and uphold the Licensed Trademarks and otherwise comply with
and
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be bound by the terms of this Agreement. Further, Licensee shall have the
right to enter into an agreement with J.S. International, Inc. and Jiangsu
International Limited regarding the performance by such companies of
certain duties of Licensee under this Agreement. Licensee shall also have
the right, subject to the terms hereof, to subcontract the manufacture of
the Licensed products, provided that the subcontractor executes a letter
agreement in form substantially similar to Exhibit C attached hereto
undertaking to recognize and uphold the Licensed Trademarks and other
rights under this Agreement. Licensee shall not grant any other sublicense
under this Agreement other than as provided in this Section 2.3.
(c) Section 6.1 is hereby deleted in its entirety.
(d) Section 7.3 is hereby revised to provide that for all Contract Years
following 2000 the Minimum Royalty due for the year 2000 shall be the base upon
which all future Minimum Royalties shall be calculated in accordance with this
Section 7.3, but in no event shall any Minimum Royalty, so calculated, be less
than the Minimum Royalty applicable for any prior year.
(e) Section 8.1 is hereby deleted in its entirety and the following
inserted in its place:
J.S. International, Inc. shall maintain for Licensee and all sublicensees
of Licensee for five (5) years following the close of each Contract Year
accurate books and records which disclose: the cost of sales of the
Licensed Products, the amount of sales of the Licensed Products (ignoring
any sales to sublicensees by the Licensee or other sublicensees); the
amount of credits for returns, trade discounts and customer's shipping
costs; the amount of all Royalties payable hereunder by Licensee and all
sublicensees; and the manner in which such Royalties were determined.
(f) The second sentence of Section 8.4 is deleted in its entirety and
the following inserted in its place:
Such books of account and records shall be made available to Licensor and
its accountants at the office of J.S. International, Inc., located at 5320
Lemay Ferry Road, St. Louis, Missouri 63129 or at such other place as the
parties shall mutually agree.
(g) Section 11.1 is hereby revised to provide that Licensor's liability
to indemnify Licensee shall not exceed the sum of the amount of Royalties
received by Licensor relating to sales in the country in which the claim arose,
during the three (3) year period immediately preceding initiation of the
lawsuit to which the indemnification relates.
(h) Section 12.2(a) is hereby deleted in its entirety and the following
inserted in its place:
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(a) If the other party shall become insolvent or shall make an
assignment for the benefit of creditors or become the subject of
receivership, bankruptcy or other insolvency or debtor relief
proceedings, or any similar proceedings.
(i) Section 12.3 shall be deleted in its entirety.
(j) Section 12.2(d) shall be deleted in its entirety.
(k) The first sentence of Section 13.2 is deleted in its
entirety and the following inserted in its place:
Any Licensed Products for which as of the date of termination Licensee
has non-cancellable open orders or which are in transit to the United
States may be sold to unrelated third parties by Licensee on a
non-exclusive basis during the twelve (12) month period following the
date of termination.
(l) The second sentence of Section 14.1 is hereby revised to
grant Koss the right to sell during any Contract Period, and at any time
thereafter (including but without limitation the one (1) year non-competition
period as provided in this Section 14.1), consumer electronic products
purchased from Assignee, notwithstanding the provisions of Section 13.3.
(m) The second sentence of Section 14.2 is hereby deleted in
its entirety and the following inserted in its place:
Licensee agrees to sell the Products to Licensor at the same price as
Licensee's most recent sale of such Products to a company related or
affiliated to Licensee, or at the manufacturer's cost for such Products
plus 10% F.O.B. Hong Kong if there are no such related or affiliated
company sales.
(n) Section 15 is hereby revised to provide that the address
for notices sent to Assignee, as Licensee, shall be addressed as follows:
Jiangsu Electronics Industries Limited
c/o 5320 Lemay Ferry Road
St. Louis, Missouri 63129
Attn: Attilio Cosgrove
(o) Section 16 is hereby deleted in its entirety and the
following inserted in its place:
16. Assignment. This Agreement shall bind and inure to the benefit
of Licensor, and the successors and assigns of Licensor. The rights
granted Licensee hereunder shall be exclusive to it and shall not,
without the prior written consent of Licensor, be transferred or
assigned to any other entity, provided that Licensee may assign this
Agreement to any parent corporation or wholly-owned subsidiary of
Licensee.
In the event of the merger or consolidation of Licensee with
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any other entity, except for a wholly-owned subsidiary or parent of
Licensee, Licensor shall have the right to immediately terminate the
License Agreement by so notifying Licensee in writing on or before sixty
(60) days after Licensor has received notice of such merger or
consolidation.
(p) The references to various parties in the License Agreement
shall be revised as follows in each and every instance in which they appear:
(i) Hagemeyer Consumer Products, Inc. and/or HCP
shall be revised to Licensee; and
(ii) Without limiting Section 14 of the Assignment,
Hagemeyer Electronics (N.A.), Inc. shall be
revised to Orient Power Holdings Limited after
December 31, 1997. Notwithstanding the
foregoing, the guaranty of Orient Power
Holdings Limited shall be in effect upon the
execution and delivery of this Agreement.
(q) Section 18.3 is hereby deleted in its entirety and the
following inserted in its place:
This Agreement shall be governed by and construed according to the
internal laws of the State of Wisconsin (without regard to principles of
conflicts of law) as to all matters, including but not limited to matters of
validity, construction, effect and performance. If and to the extent that any
provisions of this Agreement are prohibited or unenforceable under any
applicable law, such provisions shall be innefective to the extent of such
prohibition or unenforceability without invalidating the remaining provisions
hereof or affecting the validity or enforceability of any other provision
hereof.
(r) The following shall be inserted as a new Section 18.5:
18.5 Resolution of any and all disputes between Licensor and Licensee
arising from or in connection with this Agreement, whether based on
contract, tort, common law, equity, statute, regulation, order or
otherwise, shall be exclusively governed by and settled in accordance
with the arbitration rules of the American Arbitration Association, as
amended from time to time and such arbitration shall be final and
binding upon the parties, their respective successors and assigns. The
arbitration shall be conducted in Milwaukee, Wisconsin.
17. This Assignment shall be binding on, and inure to the benefit
of, the parties hereto and their respective successors and assigns.
18. This Assignment (including the Exhibit) contains the entire
understanding of the parties with respect to the subject
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matter hereof and supersedes all prior written or oral commitments,
arrangements or understandings with respect thereto.
19. This Assignment shall not be modified or amended except pursuant to
an instrument in writing executed and delivered on behalf of each of the
parties hereto.
20. The parties hereto agree to take such acts and execute such
documents, as reasonably requested by the other party hereto to effectuate the
terms of this Assignment.
21. This Assignment shall be governed by the substantive laws of the
State of Wisconsin (regardless of laws that might be applicable under
principles of conflicts of laws) as to all matters, including but not limited
to matters of validity, construction, effect and performance. Resolution of
any and all disputes between Licensor and Licensee arising from or in
connection with this Assignment, whether based on contract, tort, common law,
equity, statute, regulation, order or otherwise, shall be exclusively governed
by and settled in accordance with the arbitration rules of the American
Arbitration Association, as amended from time to time and such arbitration
shall be final and binding upon the parties, their respective successors and
assigns. The arbitration shall be conducted in Milwaukee, Wisconsin. To the
extent that the parties hereto need to compel or enforce the binding
arbitration provisions in this Assignment or in the License Agreement or need
to enforce or otherwise give effect to any arbitration award, the parties
hereby agree that any such action or proceeding shall be adjudicated before a
federal or state court located in Milwaukee, Wisconsin and they hereby submit
to the exclusive jurisdiction of the courts of the State of Wisconsin located
in Milwaukee, Wisconsin, and of the federal courts located in Milwaukee,
Wisconsin with respect to any such action or proceeding commenced by any party,
and irrevocably waive any objection they now or hereafter may have respecting
the venue of any such action or proceeding brought in such a court or
respecting the fact that such court is an inconvenient forum, relating to or
arising out of this Assignment or the License Agreement and consent to the
service of process in any such action or proceeding by means of registered or
certified mail, return receipt requested, in care of the address set forth
herein, with regard to Assignee, and the License Agreement, with regard to
Koss, as Assignor.
22. This Assignment may be executed in two or more counterparts all of
which shall be considered one and the same agreement and each of which shall be
deemed an original.
23. In the event the terms of this Assignment conflict with the terms of
the License Agreement, the terms of this Assignment shall control.
24. Capitalized terms used but not otherwise defined herein shall have
the meanings ascribed to them in the License Agreement.
25. If and to the extent that any provisions of this Assignment are
prohibited or unenforceable under any applicable
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law, such provisions shall be ineffective to the extent of such prohibition or
unenforceability without invalidating the remaining provisions hereof or
affecting the validity or enforceability of any other provision hereof.
[INTENTIONALLY OMITTED]
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IN WITNESS WHEREOF, the parties hereto have duly executed this
Assignment as of the day and year first above written.
ASSIGNOR:
TRABELCO, N.V. HAGEMEYER ELECTRONICS (N.A.),
INC.
By: /s/ By: /s/
--------------------------- ---------------------------
Elaine N. Christiaans, Richard A. Proctor,
Managing Director President
ASSIGNEE: HAGEMEYER CONSUMER PRODUCTS, INC.
JIANGSU ELECTRONICS
INDUSTRIES LIMITED
By: /s/
By: /s/ ---------------------------
--------------------------- David A. Page, President
Title:
KCP LIMITED
By: /S/
---------------------------
David A. Page, Director
KOSS CORPORATION
By: /S/
---------------------------
Title:
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GUARANTY
The undersigned, ORIENT POWER HOLDINGS LIMITED, a Bermuda company
("Orient Power"), for good and valuable consideration, the receipt of which is
hereby acknowledged, hereby guarantees the performance by JIANGSU ELECTRONICS
INDUSTRIES LIMITED ("Jiangsu Electronics") or any sublicensee of Jiangsu
Electronics (Jiangsu Electronics and any sublicensee are hereinafter
collectively referred to as "Jiangsu") of all of Jiangsu's obligations under
(a) the Third Amendment and Assignment of License Agreement dated as of March
31, 1997 between Trabelco N.V., Jiangsu Electronics Industries Limited,
Hagemeyer Electronics (N.A.), Inc., Hagemeyer Consumer Products, Inc. d/b/a
Koss Electronics Products, KCP Limited and Koss Corporation (the "Assignment")
and (b) that certain License Agreement between Koss Corporation, as Licensor,
and Trabelco N.V. as Licensee, dated November 15, 1991, as amended by an
Amendment to License Agreement dated November 15, 1991, and a Second Amendment
to License Agreement dated September 29,1995 (collectively,
that certain License Agreement and the amendments thereto are hereinafter
referred to as the "License Agreement"), and assigned to Jiangsu on the date
hereof. Orient Power also guarantees the payment to Koss Corporation of any
and all amounts owed to Koss Corporation by Jiangsu under the
Assignment and the License Agreement, including but not limited to, the
indemnity obligations of Jiangsu thereunder.
Dated: May 6, 1997
ORIENT POWER HOLDINGS LIMITED
By: /s/
-----------------------------
Name:
Title:
[SEAL]
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