EXHIBIT
10.1


 


LICENSING AGREEMENT


 


This Licensing Agreement
(this “Agreement”) is effective as of May 12, 2004 (the “Effective Date”), by
and between Gardenburger, Inc., an Oregon corporation (the “Company”), and Paul
F. Wenner, an individual (“Mr. Wenner”).


 


WHEREAS, Mr. Wenner is
the founder of the Company and is recognized and widely known throughout the
meat alternative industry.


 


WHEREAS, Mr. Wenner’s
name, by virtue of his ability and extensive experience, has acquired a
secondary meaning in the mind of the purchasing public important to the
advertisement, promotion and sale of meat alternatives.


 


WHEREAS, the Company and
Mr. Wenner previously entered into and now desire to terminate that certain
Employment Agreement dated December 29, 1989 and all amendments thereto
(collectively, the “Employment Agreement”).


 


WHEREAS, the Company is
engaged in the manufacture, distribution and sale of meat alternatives and
related products, and is desirous of retaining the exclusive right to utilize
Mr. Wenner’s name in connection with the advertisement, promotion and sale of
the Company’s products (the “Products”).


 


WHEREAS, Mr. Wenner has
agreed to authorize such use upon the terms and conditions hereinafter
contained.


 


NOW THEREFORE, in
consideration of the foregoing premises and the mutual covenants set forth
herein, the parties hereby agree as follows:


 


1.                                      Termination
of Employment Agreement.  Mr.
Wenner and the Company represent and agree that as of the Effective Date of
this Agreement, they are voluntarily terminating the Employment Agreement.  In so doing, Mr. Wenner and the Company
specifically acknowledge and agree that through the Effective Date:


 


(a)                                  Mr.
Wenner has received all compensation owed to him by the Company, including any
and all wages, bonuses, commissions, earned but unused vacation, reimbursable
business expenses, and any other payments, benefits or other compensation of
any kind to which he was entitled from the Company pursuant to the Employment
Agreement; and


 


(b)                                 Mr.
Wenner has no further rights or entitlements of any kind under the Employment
Agreement.


 


2.                                      Grant
of License.  Upon the terms and
subject to the conditions of this Agreement, Mr. Wenner grants to the Company
an exclusive, royalty-free, worldwide license to make use of, copy, reproduce,
modify, adapt, distribute, transmit, broadcast, display, exhibit, project and
otherwise exploit the Wenner Property (as defined below) alone, or in composite
with other materials including without limitation audio, video, animation, text
and graphics, by any means, methods and technologies now known or hereafter to
become known, in connection with the creation, development, production,
manufacture, packaging, distribution, advertisement (in all manner and media of
communication), promotion and sale of the Products.  No license for the Wenner Property is being granted herein to the
Company for any activities involving the Wenner Property which are not
related to the creation, development, production, manufacture, packaging,
distribution, advertisement, promotion or sale of the Products.  For purposes of this Agreement, “Wenner
Property” shall mean Mr. Wenner’s full and formal name, nickname or alias
(collectively the “Names”), any shortening, abbreviations or alternative
renderings of the Names, signatures now used or hereafter to be used, voice,
image, likenesses, any and all attributes of Mr. Wenner’s personality and the
goodwill associated with each of the above.


 

















 


3.                                      Term.  Subject to the payments set forth in Section
4 below, and unless earlier terminated as hereafter provided, the initial term
of this Agreement shall commence on the Effective Date hereof and shall
terminate five (5) years thereafter (the Term”).


 


4.                                      Payment.  As consideration for the license granted
by Mr. Wenner and the other terms, conditions and provisions of this Agreement
(the “Wenner Consideration”) and  subject to the provisions of Sections 8
and 9 below, during the Term, the Company shall pay to Mr. Wenner Seventy-five
Thousand dollars ($75,000.00) per annum, which amount shall be paid in equal
semi-monthly installments.


 


5.                                      Promotion
of Competing Products.


 


(a)                                  Mr.
Wenner will not authorize or license the use of the Wenner Property in
connection with the manufacture, distribution, advertisement, promotion or sale
of meat alternatives, nor will Mr. Wenner act as a spokesperson for or
otherwise authorize, expressly or impliedly, his endorsement of any meat
alternative product or producer, during the term of this Agreement or for a
period of two (2) years thereafter.  The
intent of the parties is that Mr. Wenner will exclusively promote the Company’s
Products.  Moreover, during the term of
this Agreement and for a period of two (2) years thereafter, Mr. Wenner shall
not engage in any competing meat alternative business.  Mr. Wenner shall be deemed to be “engaging
in a competing business” if he is a proprietor, partner, trustee, director,
officer, employee, agent, representative, consultant or stockholder holding any
class of stock of an enterprise which engages in the meat alternative business
of the Company or is in competition with the Company or its subsidiaries or
affiliates, if any.


 


(b)                                 Notwithstanding
anything to the contrary contained in this Agreement, the parties hereby agree
and acknowledge that Mr. Wenner may and shall be entitled to write such books
or articles, in any available media, to make speeches to individuals, groups,
companies or organizations, to produce television and radio shows and films,
all as he deems advisable or appropriate in his reasonable discretion,
provided, however, that such writings, speeches, and television, radio and film
projects do not otherwise violate any provision of this Agreement and are not
on subjects or about matters which are prohibited herein.


 


6.                                      Personal
Appearances.  Mr. Wenner and the
Company each agree that during the term of this Agreement Mr. Wenner shall
make, at dates and times reasonably agreed to by each of Mr. Wenner and the
Company, certain personal appearances on behalf of the Company.  Mr. Wenner and the Company further agree
that Mr. Wenner shall be compensated for each such appearance at the rate of
Five Hundred dollars ($500.00) per day, plus all reasonable and necessary
expenses (including coach air travel, hotel accommodations and meal expenses)
incurred by Mr. Wenner in connection with such personal appearances.


 


7.                                      Termination
by Mr. Wenner.


 


(a)                                  Mr.
Wenner shall have the right to terminate this Agreement in the event of a
material violation of any provision of this Agreement by the Company, provided
that the Company is notified in writing of such violation by Mr. Wenner and
such violation is not cured by the Company within thirty (30) days following
such written notification.


 


(b)                                 Mr.
Wenner shall have the right to terminate this Agreement in the event of a Change
of Control of the Company, such termination to be effective immediately upon
written notice to the Company.  “Change
of Control” shall be defined as, with respect to any person or entity, the
acquisition of (i) more than fifty percent (50%) of the Company’s
then-outstanding common stock or (ii) the power to direct or to cause the
direction of the management or the policies of the Company, whether through the
ownership of shares of any class of the capital stock of the Company or by
contract or otherwise.


 


8.                                      Termination/Election
to Continue by the Company.


 


(a)                                  The
Company shall have the right to terminate this Agreement in the event of a
material violation of any provision of this Agreement by Mr. Wenner, provided
that Mr. Wenner is notified in writing of such 


 


2

















 


violation by the
Company and such violation is not cured by Mr. Wenner within thirty (30) days
following such written notification.


 


(b)                                 The
Company shall have the right to terminate this Agreement in the event of a
Change of Control of the Company, such termination to be effective immediately
upon written notice to Mr. Wenner. 
“Change of Control” shall be defined as, with respect to any person or
entity, the acquisition of (i) more than fifty percent (50%) of the Company’s
then-outstanding common stock or (ii) the power to direct or to cause the
direction of the management or the policies of the Company, whether through the
ownership of shares of any class of the capital stock of the Company or by
contract or otherwise.


 


(c)                                  The
Company shall have the right to terminate this Agreement in the event of Mr.
Wenner’s death, such termination to be effective immediately upon written
notice to Mr. Wenner’s estate at the address set forth in Section 20, below.


 


(d)                                 In
the event of a material violation of any provision of this Agreement by Mr.
Wenner, provided that the Company shall be obligated to give Mr. Wenner at
least thirty (30) days prior written notice of such violation and no breach
shall be deemed to have occurred hereunder if Mr. Wenner cures the same within
such thirty (30) day period, the Company shall also have the right, at its
option, to elect to continue this Agreement in full force and effect (with the
exception that no payment under Section 4 hereof shall be required during such
time as Mr. Wenner is in breach of his obligations under this Agreement).


 


9.                                      Payment
in Event of Termination.  Upon
termination in accordance with Sections 7(a)-(b) or 8(a)-(c) above, Mr. Wenner
shall be entitled to no further compensation hereunder other than the pro-rata
amounts accrued, pursuant to Section 4 above, through the effective date of
termination.


 


10.                               Communication
of Confidential Matters.  Mr.
Wenner agrees that he shall not, during the term of this Agreement or
thereafter, use for the benefit of himself or another, or communicate or
divulge to any other person, firm, association or corporation, without the
prior consent of the Company, any information concerning any inventions,
discoveries, improvements, trade secrets, research, secret data, technical
know-how, competitive information, price lists, customer lists or other
confidential matters possessed, owned or used by the Company of which he is
currently aware or that may be communicated to, acquired by or learned by Mr.
Wenner at any time, so long as such matters remain secret, confidential or
otherwise protectable, either during or after the term of this Agreement.


 


11.                               Ownership
of Documentation.  All originals
and copies of correspondence, records, documents, computations, charts,
reports, memoranda, notes and other documentation prepared, retained, compiled
or received by Mr. Wenner shall at all times be and remain the sole and
exclusive property of the Company and Mr. Wenner shall turn over same to the
Company upon the termination of this Agreement or at any earlier time upon the
Company’s request.


 


12.                               Unique
Services.  The parties mutually
agree that Mr. Wenners’s services are special, unique, unusual and
extraordinary, giving them peculiar value, the loss of which cannot be
reasonably or adequately compensated in damages in an action at law and that
upon any breach by Mr. Wenner, the parties intend that the Company shall be
entitled to seek equitable relief by injunction or otherwise.


 


13.                               Rights.  All results and proceeds of Mr. Wenner’s
grants and services hereunder shall be owned exclusively by the Company,
subject to the terms and conditions of this Agreement.  Mr. Wenner hereby assigns to the Company all
right, title and interest in and to any intellectual property created pursuant
to the performance of this Agreement.


 


14.                               Rights
in Marks; Infringement.


 


(a)                                  Mr.
Wenner hereby acknowledges that for good and valuable consideration, Mr. Wenner
has previously assigned unto the Company all right, title and interest in and
to all trademarks associated with the Products or the Company, including but
not limited to those set forth on Exhibit A hereto (all of which marks,


 


3

















 


whether set forth
on Exhibit A or otherwise, shall be referred to herein as the “Marks”),
together with the goodwill of the business symbolized by the Marks and the
registrations thereof.


 


(b)                                 Mr.
Wenner agrees that he will not attack or contest, or assist others in attacking
or contesting, the Company’s right, title and interest in and to the Marks or
the validity of this Agreement. 
Ownership of the Marks and the goodwill associated therewith shall at
all times remain in the Company.


 


(c)                                  In
the event that the Company desires to obtain or further secure any additional
rights or interests in any existing or future trademark or trademarks for the
Products or the Company, Mr. Wenner agrees to execute any and all documents
that the Company reasonably believes to be necessary and/or desirable for the
successful registration and protection of such trademark or trademarks during
the term of this Agreement.  Such
trademark or trademarks shall be registered in the name of the Company.  Mr. Wenner agrees that he shall not acquire
any interest whatsoever in the Company trade name nor any right, during the
term hereof or thereafter, to manufacture, distribute or sell the Products (or
products competing with the Products) utilizing any trade names or trademarks
of, owned by or confusingly similar to those of or owned by the Company.


 


(d)                                 Mr.
Wenner shall promptly inform the Company of any potential infringement of the
Marks (including any potential infringement of any trademarks which arise after
the Effective Date) by third parties of which he becomes aware.  The Company’s failure to initiate action
against any such third party shall not constitute a breach of this Agreement.


 


15.                               No
Assignment. Neither party may assign this Agreement, whether by
operation of law or otherwise, without the other party’s prior written consent
to such assignment, which consent shall not he unreasonably withheld.  Notwithstanding the foregoing and subject to
termination pursuant to Sections 7 or 8 above, the Company shall have the right
to assign any or all of its rights under this Agreement: (a) to one or more of
its Affiliates; (b) in connection with a sale of all or substantially all of
its stock or assets; or (c) following the death of Mr. Wenner, without the
consent of Mr. Wenner or his estate. 
Any assignment or delegation by a party hereto to any of its Affiliates
shall not relieve the assigning or delegating party of its obligations
hereunder.  “Affiliate(s)” for purposes
of this Agreement shall mean, in relation to any person or entity, any other
person or entity that (directly or indirectly) controls or is controlled by or
is under common control with such person or entity and also shall include any
person or entity that is so affiliated with any such Affiliate.  For purposes of this Section 15, the
term “control,” as used with respect to any person or entity, shall mean the
possession (directly or indirectly) of the power to direct or to cause the
direction of the management or the policies of such person or entity, whether
through the ownership of shares of any class of the capital stock of such
person or entity or by contract or otherwise.


 


16.                               No
Partnership.  Notwithstanding
anything contained herein to the contrary, Mr. Wenner’s relationship with the
Company pursuant to this Agreement shall be that of an independent contractor,
not an agent, partner or joint venturer.


 


17.                               Right
to Contract/No Violation of Other Agreements.  Each party hereto represents to the other that it is authorized
to enter into this Agreement, to grant the licenses hereunder and to provide
the services to be provided hereunder, and that the exercise of the rights
granted to the other party hereunder will not conflict with any commitments or
agreements entered into between the party making such representation and any
third party.


 


18.                               No
Violations.  Mr. Wenner agrees
that he will not violate any federal laws, including in the event of any
promotion of the Products on radio or television, any rules promulgated by the
Federal Communications Commission.


 


19.                               Injunctive
Relief.  Notwithstanding
anything contained in this Agreement to the contrary, either party shall be
entitled to seek injunctive or other equitable relief in a court of valid
jurisdiction in the event of any breach or other failure to comply with the
provisions of this Agreement.


 


20.                               Notices.
 Any notice hereunder shall be in
writing and shall be deemed to have been duly given when mailed (registered,
certified or via reputable overnight courier, with proper postage and
registration, certification or other necessary fees prepaid), addressed to the
party for whom intended as follows:


 


4

















 


If to the Company
to:


 


Gardenburger,
Inc.


15615
Alton Parkway, Suite 350


Irvine,
California  92618


Attention:  Chief Financial Officer


 


If to Mr. Wenner:


 


P.O. Box 1452


880 Pakele Place


Wailuku, HI  96793


 


21.                               Provisions
of General Application.


 


(a)                                  Successors
and Assigns.  This Agreement shall
be binding upon and inure to the benefit of the parties hereto and, subject to
the provisions of Section 15 hereof, their respective successors and
assigns.  Nothing contained in this
Agreement, express or implied, is intended to confer any rights or remedies
upon any person other than the parties hereto and, subject to the provisions of
Section 15 hereof, their respective successors and assigns.


 


(b)                                 Governing
Law.  This Agreement and the
respective rights and obligations hereunder of the parties hereto shall be
governed by and interpreted and determined in accordance with the laws (other
than laws regarding conflict or choice of laws) of the State of California.


 


(c)                                  Modification;
Waiver.  This Agreement may be
amended only by a written instrument executed by the parties hereto.  The performance or observance of any term of
this Agreement (whether generally or in a particular instance, whether
retroactively or prospectively) may be waived only by a written instrument
executed by the party to be bound thereby. 
Failure on the part of either party to insist upon or enforce
performance of any provision of this Agreement shall not be construed as a
waiver of rights under that provision and shall not be a waiver of rights under
or affect any other provision of this Agreement.  No waiver in any one instance shall, unless specifically stated,
constitute a waiver on any subsequent occasion.


 


(d)                                 Counterparts.  This Agreement may be executed
simultaneously in any number of counterparts, each of which when so executed
and delivered (including via facsimile) shall be deemed to be an original, but
all of which counterparts shall together constitute but one agreement.


 


(e)                                  Entire
Agreement.  This Agreement
supersedes all prior agreements and understandings of the parties, oral or
written, with respect to its subject matter.


 


(f)                                    Severability.  If any provisions of this Agreement shall be
held invalid or unenforceable by any court of competent jurisdiction, such
holding shall not invalidate or render unenforceable any other provision
hereof.


 


(g)                                 Significance
of Headings.  Section headings
contained hereunder are solely for the purpose of aiding in speedy location of
subject matter and are not in any sense to be given weight in the construction
of this Agreement.  Accordingly, in case
of any question with respect to the construction of this Agreement, it is to be
construed as though such Section headings had been omitted.


 


(h)                                 Attorneys’
Fees.  If any action at law or in equity
is necessary to enforce or interpret the terms of this Agreement, the
prevailing party shall be entitled to reasonable attorneys’ fees, costs and
disbursements in addition to any other relief to which such party may be
entitled.


 


[signature page follows]


 


5

















 


IN WITNESS WHEREOF, the
parties hereto have caused this Agreement to be executed as of the day and year
first above written.


 


 


	
   

  	
  GARDENBURGER, INC.

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
  /s/Scott C. Wallace

  
	
   

  	
   

  	
  Scott C. Wallace

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  Its:

  	
  President and Chief
  Executive Officer

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  PAUL F. WENNER

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  /s/ Paul F. Wenner

  
	
   

  	
  Paul F. Wenner

  



 


6

















 


Exhibit A


 


Marks


 


	
  Mark

  	
   

  	
  Reg.
  Number

  
	
  CLASSIC GREEK
  GARDENBURGER®

  

  United States

  	
   

  	
  2,250,581

  
	
  EAT POSITIVE®

  

  United States

  	
   

  	
  2,782,906

  
	
  EATING GOOD JUST GOT
  GREAT®

  

  United States

  	
   

  	
  2,191,566

  
	
  FIRE ROASTED VEGETABLE
  GARDENBURGER®

  

  United States

  	
   

  	
  2,250,582

  
	
  GARDEN BURGER®

  

  Mexico

  	
   

  	
  522,327

  
	
  GARDEN VEGGIE PATTIES®

  

  Mexico

  	
   

  	
  612,176

  
	
  GARDENBURGER®

  

  Philippines

  	
   

  	
  1-1997-113726

  
	
  GARDENBURGER®

  

  Brazil

  	
   

  	
  820762270

  
	
  GARDENBURGER®

  

  Columbia

  	
   

  	
  222614

  
	
  GARDENBURGER®

  

  Norway

  	
   

  	
  192,224

  
	
  GARDENBURGER®

  

  Benelux

  	
   

  	
  528415

  
	
  GARDENBURGER Stylized
  letters®

  

  France

  	
   

  	
  92/413.599

  
	
  GARDENBURGER and Design
  (Stake)®

  	
   

  	
  2,103,545

  



 

















 


	
  United States

  	
   

  	
   

  
	
  GARDENBURGER Stylized
  Letters®

  

  United States

  	
   

  	
  2,103,410

  
	
  GARDENBURGER®

  

  Switzerland

  	
   

  	
  420,474

  
	
  GARDENBURGER®

  

  Mexico

  	
   

  	
  637,897

  
	
  GARDENBURGER®

  

  Japan

  	
   

  	
  4344076

  
	
  GARDENBURGER®

  

  Taiwan (Republic of China)

  	
   

  	
  977,866

  
	
  GARDENBURGER®

  

  Germany

  	
   

  	
  2,093,593

  
	
  GARDENBURGER and
  Design®

  

  Colombia

  	
   

  	
  189639

  
	
  GARDENBURGER®

  

  China (Peoples Republic)

  	
   

  	
  1134925

  
	
  GARDENBURGER®

  

  Canada

  	
   

  	
  TMA 451,483

  
	
  GARDENBURGER®

  

  Australia

  	
   

  	
  A617802

  
	
  GARDENBURGER®

  

  Argentina

  	
   

  	
  1,748,655

  
	
  GARDENBURGER®

  

  United States

  	
   

  	
  1,409,666

  
	
  GARDENBURGER®

  

  United Kingdom

  	
   

  	
  1355671

  
	
  GARDENBURGER CLASSIC
  GREEK®

  	
   

  	
  2,250,583

  



 

















 


	
  United States

  	
   

  	
   

  
	
  GARDENBURGER CRISPY
  NUGGETSTM

  

  Unites States

  	
   

  	
  No App. Filed
  (Common Law Use)

  
	
  GARDENBURGER FIRE
  ROASTED VEGETABLE®

  

  Canada

  	
   

  	
  TMA549,340

  
	
  GARDENBURGER FIRE
  ROASTED VEGETABLE®

  

  United States

  	
   

  	
  2,250,585

  
	
  GARDENBURGER FLAME
  GRILLED®

  

  United States

  	
   

  	
  2,457,162

  
	
  GARDENBURGER HAMBURGER
  CLASSIC®

  

  United States

  	
   

  	
  2,433,717

  
	
  GARDENBURGER HAMBURGER
  STYLE®

  

  Canada

  	
   

  	
  TMA549,341

  
	
  GARDENBURGER HERB
  CRUSTED CUTLETTM

  

  United States

  	
   

  	
  No App. Filed
  (Common Law Use)

  
	
  GARDENBURGER SANTA FE®

  

  United States

  	
   

  	
  2,409,330

  
	
  GARDENBURGER SAVORY
  MUSHROOM®

  

  United States

  	
   

  	
  2,284,033

  
	
  GARDENBURGER VEGETARIAN
  PRODUCTS (Block & Stylized Letters) ®

  

  France

  	
   

  	
  92/414.200

  
	
  GARDENBURGER VEGGIE
  MEDLEY®

  

  United States

  	
   

  	
  2,145,861

  
	
  GARDENBURGER VEGGIE
  MEDLEY®

  

  Canada

  	
   

  	
  512,872

  
	
  GARDENBURGER VEGGIE
  VEGAN®

  

  United States

  	
   

  	
  2,431,878

  



 

















 


	
  GARDENBURGER ZESTY
  BEAN®

  

  Canada

  	
   

  	
  512,871

  
	
  GARDENCHEF PAUL WENNER®

  

  United States

  	
   

  	
  2,608,349

  
	
  GARDENSAUSAGE®

  

  United States

  	
   

  	
  1,987,820

  
	
  GARDENSAUSAGE®

  

  Canada

  	
   

  	
  484,665

  
	
  GARDENVEGAN®

  

  United States

  	
   

  	
  2,182,470

  
	
  HAMBURGER STYLE GARDENBURGER®

  

  United States

  	
   

  	
  2,214,768

  
	
  HEARTYBURGER®

  

  United States

  	
   

  	
  2,224,839

  
	
  LIFEBURGER®

  

  United States

  	
   

  	
  2,400,907

  
	
  NEW YEAR’S RESOLUTION
  SOLUTION®

  

  United States

  	
   

  	
  2,257,669

  
	
  PAUL WENNER DESIGN
  Design only®

  

  United States

  	
   

  	
  2,117,812

  
	
  PAUL WENNER DESIGN (New)
  Design Only®

  

  United States

  	
   

  	
  2,204,095

  
	
  SANTA FE GARDENBURGER®

  

  United States

  	
   

  	
  2,402,720

  
	
  SAVORY MUSHROOM
  GARDENBURGER®

  

  United States

  	
   

  	
  2,250,584

  
	
  TAYBURN®

  

  United States

  	
   

  	
  2,376,185

  



 

















 


	
  THE ONLY ONE ON EARTH®

  

  United States

  	
   

  	
  2,165,961

  
	
  THE ORIGINAL GARDENBURGER®

  

  United States

  	
   

  	
  2,348,813

  
	
  WHOLESOME & HEARTY
  FOODS®

  

  Mexico

  	
   

  	
  556,287

  
	
  WHOLESOME AND HEARTY
  and Design (Spoon & Fork) ®

  

  Canada

  	
   

  	
  464,798