Intellimold Technology License and Support Agreement - Textron Inc., Collins & Aikman Corp. and Collins & Aikman Products Co.
INTELLIMOLD
TECHNOLOGY LICENSE
AND
SUPPORT AGREEMENT
THIS TECHNOLOGY LICENSE AND SUPPORT AGREEMENT (this "Agreement"),
dated as of December 20, 2001 (the "Effective Date"), is by and between, on the
one hand, Textron, Inc., a Delaware corporation ("Textron"), and, on the other
hand, Collins & Aikman Corporation, a Delaware corporation ("Holdings"), and
Collins & Aikman Products Co., a Delaware corporation and a wholly owned
subsidiary of Holdings ("C&A Products").
WHEREAS, pursuant to the Purchase Agreement by and among Textron, C&A
Products and Holdings dated as of August 7, 2001, as amended and restated as of
November 30, 2001 (the "Purchase Agreement"), C&A Products will indirectly
purchase, among other things, all of the issued and outstanding stock of M&C
Advanced Processes, Inc. ("M&C"), a wholly-owned subsidiary of Textron
Automotive Interiors Inc.;
WHEREAS, among the assets of M&C are certain rights in technology
relative to pressurized injection molding and the molding of products (such
rights, as described more particularly herein, the "Intellimold IP");
WHEREAS, Textron wishes to obtain for itself and its Affiliates (as
defined herein) a worldwide, perpetual and irrevocable license from C&A
Products to use the Intellimold IP in Textron's and its Affiliates' existing
businesses and elsewhere on the terms and conditions set forth herein;
WHEREAS, Textron also wishes to obtain for itself and its Affiliates
certain services from C&A Products relative to the support of the Intellimold
IP, including engineering, marketing, technical and training services, on the
terms and conditions set forth herein; and
WHEREAS, Textron and C&A Products each wish to obtain from the other
a license to use any enhancements and improvements to and derivative works of
the Intellimold IP (as described more particularly herein, "Intellimold
Enhancements") which such other party may create or to which such other party
may otherwise obtain rights after the Effective Date;
NOW, THEREFORE, in consideration of the mutual representations,
warranties, covenants and agreements set forth in this Agreement and in the
Purchase Agreement and for other good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, the parties hereto, intending
to be legally bound, agree as follows:
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ARTICLE I
DEFINITIONS
In addition to certain capitalized terms defined on first use herein,
for purposes of this Agreement, except as otherwise expressly provided herein
or unless the context clearly requires otherwise:
"Affiliate" of any Person shall mean any other Person that directly
or indirectly, through one or more intermediaries, controls, is controlled by,
or is under common control with, such first Person. "Affiliate" includes, with
respect to Textron, "Authorized Affiliates" (as defined herein).
"Authorized Affiliate" of Textron shall mean any Affiliate of
Textron, provided that no Competitor of C&A Products or group of Competitors of
C&A Products owns or has the right to acquire, individually or in the
aggregate, twenty percent (20%) or greater of the total equity interest in such
Affiliate.
"Bison Subsidiaries" shall have the meaning ascribed to it in the
Purchase Agreement.
"Business" shall have the meaning ascribed to it in the Purchase
Agreement.
"C&A Products Intellimold Enhancement" shall mean any Intellimold
Enhancement developed by or on behalf of C&A Products or any of its Affiliates,
or to which C&A Products or any of its Affiliates obtains rights (including the
right to grant sublicenses) other than from Textron or any of Textron's
Affiliates, after the Effective Date.
"Competitor of C&A Products" shall mean any Person that materially
competes with C&A Products or its Affiliates in the sale of products of C&A
Products or such Affiliates within the Restricted Field.
"Equipment Lease Term Sheet" shall have the meaning ascribed to it in
the Purchase Agreement.
"Indemnified Party" shall have the meaning ascribed to it in Section
9.1.
"Indemnifying Party" shall have the meaning ascribed to it in Section
9.1.
"Intellectual Property" shall mean all intellectual property, and all
legal rights related thereto everywhere in the world, including, but not limited
to, patents and patent applications; copyrights, copyright registrations,
renewals and applications for copyrights; data and database rights; software,
trade secrets and other confidential information, materials, know-
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how, proprietary processes, formulae, algorithms, models and methodologies,
customer lists and contacts, research and other technical information, and
general intangibles of like nature, provided, however, that Intellectual
Property shall not include Trademarks.
"Intellimold Enhancements" shall mean any and all enhancements or
improvements to or derivative works of all or any part of the Intellimold IP,
developed after the Effective Date.
"Intellimold IP" shall mean all Intellectual Property existing as of
the Effective Date relating to the technology owned or controlled by or
licensed to M&C for pressurized injection molding of a molten material (e.g.
plastic or metal) to provide a substantially pressure-balanced molding
environment, including without limitation the invention disclosures, patents
and patent applications (including any patents issuing or derived therefrom)
listed on Exhibit A hereto.
"Losses" shall mean any and all actual losses, liabilities, costs and
expenses (including reasonable attorneys' fees and costs of investigation),
after giving effect to any related Tax Benefit and net of any reserves and
amounts recovered from third parties, including amounts recovered under
insurance policies, with respect to such Losses; provided, however, that Losses
shall not include any costs or expenses of any Indemnified Party related to the
time spent on any indemnified matter by employees or management of the
Indemnified Party.
"Net Licensing Revenue" shall mean the aggregate revenue received by
Textron and its Affiliates from the grant of licenses or sublicenses by Textron
and its Affiliates of the Intellimold IP to third parties (other than
Affiliates of Textron), less the following amounts: (a) discounts, including
cash discounts, or rebates actually allowed or granted from the invoiced
amount, (b) taxes, duties or other governmental charges levied on or measured
by the invoice amount when included in an invoice, as adjusted for rebates,
charge-backs and refunds, (c) accounts that are uncollectible and written off
on the books of Textron or the relevant Affiliate as uncollectible, (d)
revenues from "combination" sublicenses to the extent attributable to
components of such sublicenses other than Intellimold IP license rights, (e)
any amounts paid or payable to C&A Products or its Affiliates by Textron or its
Affiliates for Support Services rendered hereunder during the period at issue
with respect to the relevant sublicenses, (f) revenues from Textron Intellimold
Licenses, and (g) any amounts received in connection with any use, lease,
license, sale or other transfer of Equipment (as defined in any lease
contemplated by the Equipment Lease Term Sheet).
"Non-Bison Subsidiary" shall have the meaning ascribed to it in the
Purchase Agreement.
"Permitted Sublicensee" shall mean (i) any third party acting on
behalf of the party granting the sublicense in the performance of a specific
contract or contracts for the
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manufacture, supply, distribution, maintenance or servicing of products,
components or materials by or for the party granting the sublicense; (ii) any
third party performing development activities on behalf of the party granting
the sublicense, provided that such activities are performed pursuant to an
agreement assigning to the party granting the sublicense all rights (excluding
general know-how and residuals) within the Restricted Field in any resulting
Intellectual Property relating to the sublicensed Intellectual Property; (iii)
any end-user purchaser of products based upon or incorporating the licensed
Intellectual Property solely to the extent necessary for such purchaser to use
such products; (iv) any third party acting as a second supplier at the request
of a customer of the party granting the sublicense, but, within the Restricted
Field only if such customer is unwilling to agree that C&A Products or a C&A
Products Affiliate act in such capacity despite the good faith efforts of the
party granting the sublicense to obtain such agreement; and (v) any Authorized
Affiliate.
"Person" shall mean any individual, corporation, partnership, limited
liability company, joint venture, trust, association, organization or other
entity.
"Restricted Field" shall mean (i) the business of (a) manufacturing
or selling overhead systems, headliners, interior instrument panels, interior
quarter panel/sidewall trim, interior trim consoles, lift-gate trim panels,
painted or unpainted fascia and bumpers, claddings/exterior trim moldings,
exterior grilles, structural composite bumpers, or signal, taillight and other
lighting or (b) assembling or selling cockpit systems or front-end modules, in
each case as currently manufactured, assembled in the Business and, in each
case, for use in automotive passenger cars and light and heavy trucks; (ii) the
automotive products business of C&A Products and the Subsidiaries of C&A
Products as currently conducted; and (iii) extensions after the Effective Date
of the businesses described in clauses (i) and (ii) that are reasonably related
to such businesses and primarily serve an automotive customer base.
"Subsidiary of C&A Products" shall mean any corporation, partnership,
limited liability company, joint venture or other legal entity of which C&A
Products, either alone or together with any other Subsidiary of C&A Products,
owns, directly or indirectly, more than forty percent (40%) of the stock or
other equity interests of such corporation or other legal entity.
"Support Services" shall have the meaning set forth for such term in
Article VIII.
"Tax" or "Taxes" shall mean all United States federal, state,
provincial, local, territorial and foreign income, profits, franchise, license,
capital, transfer, ad valorem, wage, severance, occupation, import, custom,
gross receipts, payroll, sales, employment, use, property, real estate, excise,
value added, estimated, stamp, alternative or add-on minimum, environmental,
withholding and any other taxes, duties, assessments or governmental tax
charges of any kind whatsoever.
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"Tax Benefit" shall mean the present value of any refund, credit or
reduction in otherwise required Tax payments, including any interest payable
thereon, which present value shall be computed as of the first date on which
the right to the refund, credit or other Tax reduction arises or otherwise
becomes available to be utilized, (i) using the Tax rate applicable to the
highest level of income with respect to such Tax and (ii) using the interest
rate on such date imposed on corporate deficiencies paid within thirty (30)
days of notice of proposed deficiency under the Internal Revenue Code of 1986,
as amended.
"Textron Intellimold Enhancement" shall mean any Intellimold
Enhancement developed by or on behalf of Textron or any of its Affiliates
(including by C&A Products or its Affiliates in connection with the rendering
of Support Services to Textron and its Affiliates hereunder), or to which
Textron or any of its Affiliates obtains rights (including the right to grant
sublicenses) other than from C&A Products or any of C&A Products' Affiliates,
after the Effective Date.
"Textron Intellimold License" shall mean any license or sublicense
agreement entered into after August 7, 2001 between Textron or any Affiliate
and any party listed on Exhibit B and granting such party rights in Intellimold
IP or Intellimold Enhancements outside the Restricted Field
"Textron Intellimold Trademarks" shall mean the Trademarks listed on
Exhibit C hereto.
"Trademarks" shall mean trademarks, service marks, trade names, logos
and other business identifiers, any registrations and applications for
registration of any of the foregoing, and all goodwill connected therewith.
"Use" shall mean, with respect to any Intellectual Property, (a) to
the extent patented, to practice all methods, and to make, use, sell, offer for
sale, import and export machines, manufactures and compositions of matter using
or embodying such rights and to exercise any other rights that may be
associated with patents in any jurisdiction, (b) to the extent copyrighted, to
copy, distribute, display, transmit and prepare derivative, combination and
collective works, of such Intellectual Property, and (c) to the extent otherwise
neither patented nor copyrighted, to make, use, sell, offer for sale, import and
export, and have imported and exported, products using or embodying the rights
included in such Intellectual Property.
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ARTICLE II
GRANT OF RIGHTS FROM C&A PRODUCTS TO TEXTRON
2.1. License of Intellimold IP Outside Restricted Field. Except as
set forth in the second sentence of this Section 2.1, C&A Products hereby
grants, and, as applicable, shall cause its Affiliates to grant, to Textron a
royalty-bearing (pursuant to Article V) worldwide, perpetual and irrevocable
license to Use C&A Products' and its Affiliates' rights in the Intellimold IP
and the C&A Products Intellimold Enhancements. The foregoing grant of license
(a) excludes the right to use the Intellimold IP and the C&A Products
Intellimold Enhancements within the Restricted Field, but shall be exclusive
(even as to C&A Products and its Affiliates) outside the Restricted Field and
(b) includes the right to sublicense such rights, in whole or in part, to
Textron's Affiliates and to third parties, including to injection molding
machine OEMs, for Use outside the Restricted Field.
2.2. Limited License of Intellimold IP Within Restricted Field. C&A
Products hereby grants, and, as applicable, shall cause its Affiliates to
grant, to Textron (excluding its Affiliates) a non-exclusive, royalty-free,
fully-paid, worldwide, perpetual and irrevocable license to Use C&A Products'
and its Affiliates' rights in the Intellimold IP and C&A Products Intellimold
Enhancements within the Restricted Field solely in connection with Textron's
and its Authorized Affiliates' manufacturing, sales and development operations.
The foregoing grant of license includes the right to sublicense such rights
solely to Permitted Sublicensees; provided, however, that no Permitted
Sublicensee granted rights pursuant to this Section 2.2 shall further
sublicense such rights.
2.3. Other Restrictions.
(a) The exercise by Textron, its Authorized Affiliates and their
respective sublicensees of the license granted pursuant to Section 2.2 is
subject to the non-competition covenants set forth in Section 5.11 of the
Purchase Agreement, the terms of which Section are hereby incorporated herein
by reference.
(b) Textron shall not transfer (including in connection with a sale
of assets) the license contained in Sections 2.1 or 2.2 to any third party that
is not an Authorized Affiliate of Textron unless such third party agrees in
writing that such transferred license shall be limited to use outside the
Restricted Field.
(c) The license granted pursuant to Section 2.2 shall automatically
terminate in the event that Textron is acquired by a third party that is a
direct competitor in the Restricted Field of the Business or of C&A Products or
any of its Affiliates; provided, however, that notwithstanding any such
termination, (i) Textron and its Authorized Affiliates and their respective
Permitted Sublicensees shall be permitted to continue to exercise the rights
granted
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pursuant to Section 2.2 for a period of up to twelve (12) months as necessary to
liquidate existing inventory, fulfill existing orders and otherwise wind down
operations relative to the terminated license, and (ii) any express or implied
sublicenses of the rights granted pursuant to Section 2.2 to end users in
connection with their purchase of products using or incorporating such rights
shall survive.
(d) Nothing in this Agreement shall be construed to limit in any way
the operations of the existing businesses of Textron or any Non-Bison
Subsidiary, including without limitation the Use of the Intellimold IP in such
operations.
2.4. Term of Licenses. The license grants contained in Sections 2.1
and 2.2 shall extend from the Effective Date until (i) with respect to grants
of rights under any patent owned by C&A Products or any Affiliate, the date on
which each and every claim of such patent has expired or is invalidated, or
(ii) with respect to grants of rights under any other type of Intellectual
Property, the date on which the underlying rights of C&A Products and its
Affiliates expire or are invalidated.
ARTICLE III
GRANT OF RIGHTS FROM TEXTRON TO C&A PRODUCTS
3.1. License of Textron Intellimold Enhancements. Textron hereby
grants, and, as applicable, shall cause its Affiliates to grant, to C&A
Products and C&A Products' Affiliates an exclusive (even as to Textron and its
Affiliates except as set forth in Sections 2.2 and 3.1(b)) royalty-free,
fully-paid, worldwide, perpetual and irrevocable license to Use Textron's and
its Affiliates' rights in any Textron Intellimold Enhancements solely within
the Restricted Field as and when such Textron Intellimold Enhancements are
created. The foregoing grant of license (a) includes the right to sublicense
such rights, in whole or in part, solely to C&A Products' Affiliates and to any
third party (i) acting on behalf of C&A Products or any of C&A Products'
Affiliates in performance of a specific contract or contracts for the
manufacture, supply, distribution, maintenance or servicing of products,
components or materials by or for C&A Products or such Affiliate, or (ii)
performing development activities on behalf of C&A Products or such Affiliate,
provided that such activities are performed pursuant to an agreement assigning
to C&A Products or such Affiliate all rights (excluding general know-how and
residuals) outside the Restricted Field in any resulting Intellectual Property
relating to the sublicensed Intellectual Property; or (iii) acting as a second
supplier of C&A Products or any of its Affiliates but only if such customer is
unwilling to agree that Textron or a Textron Affiliate act in such capacity (as
appropriate, where permitted by Section 5.11 of the Purchase Agreement) despite
the good faith efforts of C&A Products or the relevant C&A Products Affiliate to
obtain such agreement and (b) shall not be deemed to restrict in any manner
Textron's and its Affiliates' Use of the Textron Intellimold Enhancements within
the Re-
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stricted Field in connection with Textron's and its Affiliates' internal
manufacturing and development operations.
3.2. Trademark License.
(a) Grant of Rights. Textron hereby grants, and, as applicable,
shall cause its Affiliates to grant, to C&A Products and C&A Products'
Affiliates a non-exclusive, royalty-free, fully-paid, worldwide,
non-transferable license to use the Textron Intellimold Trademarks solely in
connection with the promotion and sale of products manufactured using the
Intellimold IP or Intellimold Enhancements. The foregoing grant of license does
not include the right to sublicense except to third parties acting on behalf of
C&A Products or any of its Affiliates in the performance of a specific contract
or contracts for the manufacturing, marketing, supply, distribution,
maintenance or servicing of products by or for C&A Products or such Affiliate.
(b) Restrictions; Limitations. C&A Products shall comply and shall
cause its Affiliates and sublicensees to comply at all times with Textron's
then-current guidelines for the use of the Textron Intellimold Trademarks. C&A
Products agrees to reasonably cooperate and cause its Affiliates to cooperate
with Textron in facilitating Textron's monitoring of the nature and quality of
the products and services for which the Textron Intellimold Trademarks are
used. Textron shall have the right immediately to suspend C&A Products' and its
Affiliates' use of the Textron Intellimold Trademarks, in whole or in part, if
such usage is improper or inconsistent with the terms of this Agreement or
otherwise reflects negatively on Textron or any of its Affiliates or their
respective products or businesses. Except as expressly provided in this Section
3.2, nothing herein shall grant to any party any right, title or interest in
another party's Trademarks. At no time during the term of this Agreement shall
any party challenge or assist others to challenge another party's Trademarks or
the registration thereof or attempt to register or cause to be registered
another party's Trademarks or any trademarks, service marks or trade names
confusingly similar to those of the other party. Each party understands and
agrees that all use of and goodwill associated with each other party's
Trademarks will inure to the benefit of such other party.
(c) Purchase Right. If at any time Textron and its Affiliates shall
cease to use or to sublicense others to use the Intellimold IP and the
Intellimold Enhancements, it shall so notify C&A Products, which shall have the
right at any time during the ninety (90) days following such notice to exercise
its right to purchase, for consideration of one dollar ($1) the Textron
Intellimold Trademarks, subject to execution of an appropriate assignment and
assumption agreement.
3.3. Other Restrictions. C&A Products covenants and agrees that it
will not, and will cause its Affiliates to not, grant to any third party the
right to use all or any part of the Textron Intellimold Enhancements except as
expressly permitted in Section 3.1.
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3.4. Term of Licenses. The license grants contained in Sections 3.1
and 3.2 shall extend from the Effective Date until (i) with respect to grants
of rights under any patent owned by Textron or any of its Affiliates, the date
on which each and every claim of such patent has expired or is invalidated, or
(ii) with respect to grants of rights under any other Intellectual Property,
the date on which the underlying rights of Textron and its Affiliates expire or
are invalidated.
ARTICLE IV
GENERAL PROVISIONS REGARDING LICENSE GRANTS
4.1. Third-Party Rights. The licenses granted by C&A Products
pursuant to Sections 2.1 and 2.2 of this Agreement are subject to the
third-party license rights in the Intellimold IP existing as of the Effective
Date. The licenses granted with respect to Intellimold Enhancements by C&A
Products and its Affiliates pursuant to Sections 2.1 and 2.2 and by Textron and
its Affiliates pursuant to Section 3.1 are further subject to the conditions
and restrictions imposed by third-party licensors of such rights, if any;
provided, however, that each party will use commercially reasonable efforts to
minimize the adverse impact of any such conditions and restrictions on each
other party.
4.2. Mutual Covenant Not to Sue. Each party agrees not to bring, to
cause its Affiliates under its control not to bring, and to prohibit any
sublicensee from bringing, any infringement suits, actions or proceedings
against another party, its Affiliates or its sublicensees with respect to any
patents owned by or licensed (with the right to bring infringement suits) to
the first party or its Affiliates that are related to the subject matter of the
Intellimold IP or Intellimold Enhancements in the event that any Use of the
Intellimold IP or Intellimold Enhancements by another party, its Affiliates or
sublicensees as permitted by this Agreement, infringes or appears to infringe
any such patents. Each party further agrees to impose, and to cause its
Affiliates to impose, this covenant on any third party to which such patents
may be assigned.
4.3. Delivery of Intellectual Property. All Intellectual Property in
tangible form licensed hereunder shall be delivered to the licensee thereof
promptly upon written request of such licensee or, if such Intellectual
Property constitutes an Intellimold Enhancement, as soon as reasonably
practicable after development of such Intellectual Property.
4.4. Grandfathering of Rights. Notwithstanding anything to the
contrary herein, neither Textron nor any of its Affiliates, as applicable,
shall be in breach of this Agreement on account of (i) the granting of any
sublicense by Textron or such Affiliate or (ii) the Use by Textron or such
Affiliate or their respective sublicensees of all or any part of the
Intellimold IP or any Intellimold Enhancement, in each case, within the
Restricted Field,
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provided that, with respect to clause (i), the granting of such sublicense was
in accordance with the terms of this Agreement as of the date on which it was
entered into by the parties and, with respect to clause (ii), such Use was in
accordance with the terms of this Agreement as of the date of commencement of
such Use or, with respect to Use by a sublicensee, as of the date on which the
relevant sublicense agreement was entered into by the parties. The parties agree
and acknowledge that the foregoing provision is intended to clarify the intent
of the parties that any expansion of the Restricted Field pursuant to clause
(iii) of such definition after the Effective Date shall not operate to exclude
Textron and its Affiliates from their respective operations, or restrict third
parties in the exercise of their rights under existing sublicenses, solely in
such portion of the expanded Restricted Field as was not included within the
Restricted Field as of the Effective Date.
4.5. Lease Equipment. Notwithstanding anything to the contrary
herein, neither Textron nor any of its Affiliates shall be in breach of any
provision of this Agreement on account of Textron's or its Affiliate's (i) Use,
solely outside the Restricted Field, or (ii) lease, license, sale or other
transfer to any third party (in each case, whether or not in the Restricted
Field) of all or any part of Textron's or its Affiliate's right, title or
interest in or to any Equipment (as defined in any lease contemplated by the
Equipment Lease Term Sheet), provided that the leases contemplated by the
Equipment Lease Term Sheet are terminated or otherwise cease to be in effect
for any reason and Textron or any of its Affiliates continue to own any
interest in the Equipment. In addition, solely in the event that such leases
are terminated due to a Default (as such term is defined in any such lease) by
C&A Products or a Subsidiary of C&A Products, Textron and its Affiliates shall
be entitled to Use the Equipment within the Restricted Field. C&A Products
hereby grants and, as applicable, shall cause its Affiliates to grant to
Textron and its Affiliates and their respective transferees such rights in the
Intellimold IP and Intellimold Enhancements as are required in order for
Textron and its Affiliates and their respective transferees to engage in any of
the activities set forth in this Section 4.5.
ARTICLE V
ROYALTIES
5.1. Royalties Due from Textron to C&A Products. During any portion
of the term of this Agreement in which C&A Products provides Support Services
to Textron or any of Textron's Affiliates, Textron shall pay to C&A Products as
a "success fee" a royalty equal to (i) with respect to Textron Intellimold
Licenses, ten percent (10%) of Net Licensing Revenue and (ii) with respect to
all other licenses and sublicenses, twenty-five percent (25%) of Net Licensing
Revenue.
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5.2. Reduction of Royalties. Royalties will be reduced to (i) five
percent (5%) of Net Licensing Revenue with respect to licenses and sublicenses
covered by clause (i) of Section 5.1, and (ii) ten percent (10%) of Net
Licensing Revenue with respect to licenses and sublicenses covered by clause
(ii) of Section 5.1, in each case with respect to sublicenses granted in a
country or territory where there is no valid or enforceable patent owned by C&A
Products or a C&A Products Affiliate with respect to the Intellimold IP or
Intellimold Enhancements at least one of the claims of which covers the
Intellectual Property which is the subject of the sublicense.
5.3. Payment of Royalties. Within thirty (30) days after the end of
each calendar quarter, Textron shall remit to C&A Products any royalties owed
to C&A Products under this Agreement that accrued during such calendar quarter.
5.4. Taxes and Other Assessments. C&A Products shall be
responsible for and shall pay all Taxes of any kind that may be imposed on any
and all payments to C&A Products under this Agreement.
ARTICLE VI
OWNERSHIP OF INTELLECTUAL PROPERTY
6.1. Ownership of Intellimold IP and C&A Products Intellimold
Enhancements. The parties agree and acknowledge that, as between the parties
and except for the express grants of license contained herein, C&A Products
shall own all right, title and interest in and to the Intellimold IP and any
C&A Products Intellimold Enhancements, and that no use of any such Intellimold
IP or C&A Products Intellimold Enhancements by Textron or its Affiliates shall
vest in Textron or such Affiliates any right, title or interest therein.
6.2. Ownership of Textron Intellimold Enhancements and Textron
Intellimold Trademarks. The parties agree and acknowledge that, as between the
parties and except for the express grants of license contained herein, Textron
shall own all right, title and interest in and to the Textron Intellimold
Enhancements and Textron Intellimold Trademarks, and that no use of any such
Textron Intellimold Enhancements or Textron Intellimold Trademarks by C&A
Products or its Affiliates shall vest in C&A Products or such Affiliates any
right, title or interest therein.
6.3. Reasonable Cooperation. Each party shall, upon the other
party's written request, provide such other party with all reasonable
cooperation (at the requesting party's expense) in order to secure and perfect
such other party's rights in Intellectual Property as provided by this
Agreement.
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ARTICLE VII
PATENT PROSECUTION AND MAINTENANCE
7.1. Intellimold IP and C&A Products Intellimold Enhancements. As
between the parties, C&A Products shall have sole control and discretion over
the prosecution and maintenance of any patents and patent applications with
respect to the Intellimold IP and the C&A Products Intellimold Enhancements,
and the costs of such prosecution and maintenance shall be borne by C&A
Products. Textron may request in writing that C&A Products pursue patent
protection with respect to specific Intellimold IP and C&A Products Intellimold
Enhancements in specified jurisdictions ("Textron Requested Jurisdictions").
However, in the event that C&A Products declines to prosecute or maintain any
such patents in one or more Textron Requested Jurisdictions, or fails to
provide Textron with written notice of its intent to prosecute or maintain any
such patents within fifteen (15) days of receiving such request, Textron may
itself elect to prosecute and maintain such patents or registrations in any or
all such jurisdictions in C&A Products' name and at Textron's cost, by
providing C&A Products with written notice of such election within thirty (30)
days of the date of Textron's original request to C&A Products. Any such
election shall not affect C&A Products' ownership of or rights to Use any
Intellimold IP or C&A Products Intellimold Enhancements under this Agreement.
7.2. Textron Intellimold Enhancements. As between the parties,
Textron shall have sole control and discretion over the prosecution and
maintenance of any patent and patent applications with respect to the Textron
Intellimold Enhancements, and the costs of such prosecution and maintenance
shall be borne by Textron. C&A Products may request in writing that Textron
pursue patent protection with respect to specific Textron Intellimold
Enhancements in specified jurisdictions ("C&A Products Requested
Jurisdictions"). However, in the event that Textron declines to prosecute or
maintain any such patents in one or more C&A Products Requested Jurisdictions,
or fails to provide C&A Products with written notice of its intent to prosecute
or maintain any such patents within fifteen (15) days of receiving such request,
C&A Products may itself elect to prosecute and maintain such patents or
registrations in any or all such jurisdictions, in Textron's name and at C&A
Products' cost, by providing Textron with written notice of such election within
thirty (30) days of the date of C&A Products' original request to Textron. Any
such election by C&A Products shall not affect Textron's ownership of and rights
to Use any Textron Intellimold Enhancements under this Agreement.
7.3. Third Party Infringement.
(a) Cooperation. Each party shall promptly notify the other parties
and provide to the other parties relevant facts upon becoming aware of a
likelihood of infringement or other illegal use or misuse (including by any
sublicensee of any party) of any Intellectual Property or Textron Intellimold
Trademark covered by this Agreement by any third party.
<PAGE>
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(b) Suits Against Third Party Infringers.
(i) C&A Products shall have the exclusive right, even as to Textron,
to institute and prosecute, at its sole expense, lawsuits against all third
parties that infringe, or appear to infringe, the Intellimold IP, Intellimold
Enhancements or Textron Intellimold Trademarks, in each case solely within the
Restricted Field. Textron shall reasonably cooperate with C&A Products in all
such suits and actions, at C&A Products' expense; without limitation, Textron
agrees that C&A Products may cause Textron to join it as a party to any such
suit. C&A Products shall be entitled to retain any and all damages that may be
received, collected or recovered in any such suit or action, whether by
judgment, settlement or otherwise. If C&A Products fails to bring or maintain
any such action, suit or proceeding within sixty (60) days after becoming aware
of a material, likely infringement of the Intellimold IP, Intellimold
Enhancements or Textron Intellimold Trademarks within the Restricted Field,
Textron shall have the right to maintain such action, suit or proceeding with
the reasonable cooperation of C&A Products (at Textron's expense for such
cooperation), and Textron shall be entitled to retain any and all damages that
may be received, collected or recovered in any such suit or action, whether by
judgment, settlement or otherwise. C&A Products shall have the right to
participate in any such action, suit or proceeding maintained by Textron, at
C&A Products' expense, and shall have the right, in its reasonable discretion,
to approve or reject any settlement proposed in connection therewith.
(ii) Textron shall have the exclusive right, even as to C&A
Products, to institute and prosecute, at its sole expense, lawsuits against all
third parties that infringe, or appear to infringe, the Intellimold IP,
Intellimold Enhancements or Textron Intellimold Trademarks, in each case outside
the Restricted Field. C&A Products shall reasonably cooperate
with Textron in all such suits and actions, at Textron's expense; without
limitation, C&A Products agrees that Textron may cause C&A Products to join it
as a party to any such suit. Textron shall be entitled to retain any and all
damages that may be received, collected or recovered in any such suit or
action, whether by judgment, settlement or otherwise. If Textron fails to bring
or maintain any such action, suit or proceeding within sixty (60) days after
becoming aware of a material, likely infringement of the Intellimold IP,
Intellimold Enhancements or Textron Intellimold Trademarks outside the
Restricted Field, C&A Products shall have the right to maintain such action,
suit or proceeding with the reasonable cooperation of Textron (at C&A Products'
expense for such cooperation), and C&A Products shall be entitled to retain any
and all damages that may be received, collected or recovered in any such suit or
action, whether by judgment, settlement or otherwise. Textron shall have the
right to participate in any such action, suit or proceeding maintained by C&A
Products, at Textron's expense, and shall have the right, in its reasonable
discretion, to approve or reject any settlement proposed in connection
therewith.
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(c) Defense Against Infringement Claims. Textron and C&A Products
shall cooperate to diligently defend against any third party infringement
claims, demands or actions involving the Intellimold IP (each, an "Infringement
Claim"). As between the parties, the party whose Use of the Intellimold IP is
the subject of the Infringement Claim (the "Defending Party") shall defend such
Infringement Claim at its own expense. Any settlement or compromise concerning
any such Infringement Claim shall be subject to the approval of the
non-Defending Party, which approval shall not be withheld unreasonably.
ARTICLE VIII
PROVISION OF SUPPORT SERVICES
8.1. Services. For a period of five (5) years from the Effective
Date, C&A Products agrees to provide, or to cause its Affiliates to provide,
such engineering, installation, technical, sales/marketing, training and other
services (including development of specifications and performance
characteristics for new products and applications) relative to the Intellimold
IP and C&A Products Intellimold Enhancements as Textron and its Affiliates may
reasonably request from time to time (the "Support Services"). Such Support
Services shall be provided directly to Textron and its Affiliates or to such
third parties (including sublicensees of the Intellectual Property licensed
hereunder) as Textron or its Affiliates may designate, consistent with the
license grants herein.
8.2. Personnel. In order to fulfill its obligations pursuant to
Section 8.1, C&A Products shall make available sufficient personnel resources
to meet Textron's and its Affiliates' reasonable forecasted needs for Support
Services. Without limitation of the foregoing, C&A Products shall make available
to Textron and its Affiliates, on the terms set forth in Sections 8.4 and 8.5,
the services of Milko Guergov as reasonably requested by Textron for so long as
Mr. Guergov remains in the employ (whether as an employee, consultant or
otherwise) of C&A Products or any of its Affiliates. C&A Products shall use
commercially reasonable efforts to continue to retain Mr. Guergov for the period
during which C&A Products provides Support Services hereunder.
8.3. Collocation of Textron Employees. Textron and its Authorized
Affiliates shall be entitled to maintain, at the expense of Textron or the
relevant Authorized Affiliate(s), for a period of one (1) year from the date
hereof, a maximum of three (3) employees at the M&C facility at any one time
for training purposes.
8.4. Relationship. The parties agree that C&A Products and its
Affiliates, agents and employees shall at all times act in the capacity of
independent contractor in their provision of Support Services, and that no
relationship of agency or employment will thereby be intended or implied. C&A
Products further agrees that all work product resulting from the
<PAGE>
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provision of the Support Services shall constitute "works made for hire" under
applicable law and shall be and remain the sole and exclusive property of
Textron, subject to the license grants in favor of C&A Products and its
Affiliates contained herein.
8.5. Price and Payment for Support Services. All Support Services
shall be billed to Textron at C&A Products' cost unless otherwise agreed in
advance in writing. For purposes of this Section 8.5, "C&A Products' cost"
shall mean an amount equal to one hundred thirty-five percent (135%) of the
total cash compensation paid by C&A Products or any of its Affiliates to the
persons providing the Support Services (pro-rated to reflect the percentage of
such persons' total time spent in providing such Support Services) plus any
reasonable out-of-pocket costs incurred by C&A Products or any of its
Affiliates in connection therewith. C&A Products shall invoice Textron for
Support Services rendered on a quarterly basis in arrears and Textron shall pay
each such invoice within thirty (30) days of its receipt. Invoices shall set
forth the basis for amounts due with reasonable specificity, and Textron shall
have the right, not more often than once per year and on reasonable prior
notice, to inspect the relevant books and records of C&A Products to determine
the accuracy of such invoiced amounts.
8.6. Option to Renew. Following the expiration of the initial
five (5)-year term, Textron shall be entitled, at its discretion, to continue
to receive Support Services for an additional five (5)-year term, at prices and
on terms to be negotiated in good faith by the parties.
ARTICLE IX
INDEMNIFICATION
9.1. Mutual Indemnification. Each of Textron and C&A Products (the
"Indemnifying Party") shall indemnify the other party and such other party's
Affiliates, including their respective employees, agents, officers and
directors (the "Indemnified Party") from and against and in respect of any and
all Losses which may be imposed on, sustained, incurred or suffered by or
assessed against such Indemnified Party, directly or indirectly, to the extent
relating to or arising out of or incurred in connection with any third-party
claim that any authorized use of any Intellimold Enhancement licensed by the
Indemnifying Party to the Indemnified Party pursuant to Section 2.1 or 2.2, in
the case of C&A Products, or Section 3.1, in the case of Textron, infringes any
third-party intellectual property right. Notwithstanding the foregoing, neither
party shall have any obligation to indemnify the other to the extent that any
such claim of infringement is based upon (i) the combination, operation or use
of the licensed Intellimold Enhancement with other Intellectual Property, if
the use of such licensed Intellimold Enhancement would not be infringing in the
absence of such combination, operation or use with other Intellectual Property,
or (ii) modifications of a licensed Intellimold Enhance-
<PAGE>
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ment by any person other than the Indemnifying Party where the unmodified
version of such licensed Intellimold Enhancement would not be infringing.
9.2. Notice. If the Indemnified Party shall become aware of any
claim, proceeding or other matter (a "Claim") which may give rise to a Loss for
which indemnification may be sought pursuant to this Article IX, the
Indemnified Party shall promptly give notice thereof to the Indemnifying Party.
Such notice shall specify with reasonable particularity (to the extent that the
information is then available) the factual basis for the Claim and the amount
of the Claim, if known. If the Indemnified Party does not promptly give notice
of any Claim as specified above, such failure shall not be deemed a waiver of
the Indemnified Party's right to indemnification hereunder for Losses in
connection with such Claim, but the amount of reimbursement to which the
Indemnified Party is entitled shall be reduced by the amount, if any, by which
the Indemnified Party's Losses would have been reduced had such notice been
promptly delivered.
9.3. Defense.
(a) The Indemnifying Party shall have the right, at its expense and
at its election, to assume control of the negotiation, settlement and defense
of the Claim through counsel of its choice. In such event, the Indemnifying
Party shall reimburse the Indemnified Party for all the Indemnified Party's
reasonable out-of-pocket expenses as a result of such assumption. The election
of the Indemnifying Party to assume such control shall be made within ninety
(90) days of receipt of notice of Claim, failing which the Indemnifying Party
shall be deemed to have elected not to assume such control. If the Indemnifying
Party elects to assume such control, the Indemnified Party shall have the right
to be informed and consulted with respect to the negotiation, settlement or
defenses of such Claim and to retain counsel to act on its behalf, but the fees
and disbursements of such counsel shall be paid by the Indemnified Party unless
the Indemnifying Party consents to the retention of such counsel or unless the
named parties to any action or proceeding include both the Indemnifying Party
and the Indemnified Party and a representation of both the Indemnifying Party
and the Indemnified Party by the same counsel would be inappropriate due to the
actual or potential differing interests between them (such as the availability
of different defenses). If the Indemnifying Party, having elected to assume such
control, thereafter fails to defend the Claim within a reasonable period of
time, the Indemnified Party shall be entitled to assume such control, and the
Indemnifying Party shall be bound by the results obtained by the Indemnified
Party with respect to the Claim. If any Claim is of a nature such that the
Indemnified party is required by applicable law to make a payment to any third
party with respect to the Claim before the completion of settlement negotiations
or related legal proceedings, the Indemnified Party may make such payment and
the Indemnifying Party shall, after demand by the Indemnified Party, reimburse
the Indemnified Party for such payment. If the amount of any liability of the
Indemnified Party under the Claim in respect of which such payment was made, as
finally determined, is
<PAGE>
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less than the amount which was paid by the Indemnifying Party to the Indemnified
Party, the Indemnified Party shall, promptly after receipt of the difference
from the third party, pay the amount of such difference to the Indemnifying
Party.
(b) If the Indemnifying Party fails to assume control of the defense
of any Claim, the Indemnified Party shall have the exclusive right to consent,
settle or pay the amount claimed. Whether or not the Indemnifying Party assumes
control of the negotiation, settlement or defense of any Claim, the
Indemnifying Party shall not settle any Claim without the written consent of
the Indemnified Party, which consent shall not be unreasonably withheld,
conditioned or delayed, unless such settlement provides solely for monetary
damages or other monetary payments.
ARTICLE X
LIMITATION OF LIABILITY; DISCLAIMER OF WARRANTIES
10.1. Disclaimer of Certain Damages. TO THE MAXIMUM EXTENT PERMITTED
BY LAW, EXCEPT WITH RESPECT TO OBLIGATIONS PURSUANT TO ARTICLE IX
(INDEMNIFICATION), NO PARTY OR ANY OF ITS AFFILIATES OR THEIR RESPECTIVE
AGENTS, EMPLOYEES, OFFICERS OR DIRECTORS SHALL BE LIABLE TO ANOTHER PARTY OR
ANY THIRD PERSON UNDER THIS AGREEMENT FOR ANY INDIRECT, INCIDENTAL,
CONSEQUENTIAL, SPECIAL, RELIANCE OR PUNITIVE DAMAGES OR LOST OR IMPUTED PROFITS
OR ROYALTIES, LOST DATA OR COST OF PROCUREMENT OF SUBSTITUTE GOODS OR SERVICES,
WHETHER LIABILITY IS ASSERTED IN CONTRACT, TORT (INCLUDING NEGLIGENCE AND STRICT
PRODUCT LIABILITY) INDEMNITY OR CONTRIBUTION, AND IRRESPECTIVE OF WHETHER THAT
PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF ANY SUCH LOSS OR DAMAGE.
10.2.
(a) Representation and Warranty of Textron. Textron represents and
warrants that neither Textron nor any Affiliate of Textron has, between August
7, 2001 and the Effective Date, entered into any agreement to license or
sublicense to any third party all or any part of the Intellimold IP in all or
any part of the Restricted Field.
(b) Disclaimer of Warranties. EACH PARTY AGREES AND ACKNOWLEDGES
THAT EXCEPT AS EXPRESSLY SET FORTH IN SECTION 10.2(a) AND IN THE PURCHASE
AGREEMENT, NO PARTY MAKES ANY REPRESENTATIONS OR WARRANTIES OF ANY KIND
WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, AND HEREBY EXPRESSLY DISCLAIMS ALL
<PAGE>
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REPRESENTATIONS AND WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, INCLUDING ANY
IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
AGAINST NON-INFRINGEMENT OR THE LIKE, OR ARISING FROM COURSE OF PERFORMANCE,
COURSE OF DEALING OR FROM TRADE PRACTICE.
10.3. Applicability of Limitations. THE PARTIES AGREE THAT THE
LIMITATIONS SPECIFIED IN THIS ARTICLE X SHALL SURVIVE AND APPLY EVEN IF ANY
LIMITED REMEDY SPECIFIED IN THIS AGREEMENT IS FOUND TO HAVE FAILED OF ITS
ESSENTIAL PURPOSE.
ARTICLE XI
PERFORMANCE OF OBLIGATIONS
From and after the Effective Date, each of Textron and Holdings shall
cause its respective Affiliates to perform their respective covenants and
obligations contained in this Agreement.
ARTICLE XII
MISCELLANEOUS AND GENERAL
12.1. Interpretation.
(a) Whenever the words "include", "includes" or "including" are used
in this Agreement they shall be deemed to be followed by the words "without
limitation."
(b) The words "hereof", "hereby", "herein" and "herewith" and words
of similar import shall, unless otherwise stated, be construed to refer to this
Agreement as a whole and not to any particular provision of this Agreement, and
article, section, paragraph, exhibit and schedule references are to the
articles, sections, paragraphs, exhibits and schedules of this Agreement unless
otherwise specified.
(c) The plural of any defined term shall have a meaning correlative
to such defined term, the singular of any defined term shall have a meaning
correlative to such term defined in the plural and words denoting any gender
shall include all genders. Where a word or phrase is defined herein, each of
its other grammatical forms shall have a corresponding meaning.
<PAGE>
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(d) A reference to any party to this Agreement or any other
agreement or document shall include such party's permitted successors and
permitted assigns.
(e) The parties have participated jointly in the negotiation and
drafting of this Agreement. In the event an ambiguity or question of intent or
interpretation arises, this Agreement shall be construed as if drafted jointly
by the parties, and no presumption or burden of proof shall arise favoring or
disfavoring any party by virtue of the authorship of any provisions of this
Agreement.
12.2. Payment of Expenses and Other Payments. Except as otherwise
provided in this Agreement, each party hereto shall pay its own expenses
incident to preparing, entering into and carrying out this Agreement and the
consummation of the transactions contemplated hereby.
12.3. Amendment. This Agreement may be amended only by a written
agreement signed by each party hereto.
12.4. Waiver and Extension. Any agreement on the part of a party
hereto to any extension or waiver of any provision hereof shall be valid only
if set forth in an instrument in writing signed by such party. The failure of
any party at any time or times to demand performance of any provision hereof
shall in no manner affect the right of such party at a later time to enforce the
same or any other provision of this Agreement. No waiver of any condition or
breach of any term contained in this Agreement in one or more instances shall be
deemed to be a, or construed as a further or continuing, waiver of such
condition or breach.
12.5. Counterparts. For the convenience of the parties hereto,
this Agreement may be executed in counterparts, each counterpart being deemed
to be an original instrument, and such counterparts shall together constitute
one agreement.
12.6. Governing Law. This Agreement shall be governed by, and
construed in accordance with, the laws of the State of New York, without regard
to its conflicts of law provisions.
12.7. Notices. Any notice, request, instruction or other document to
be given hereunder by any party to another party shall be in writing and shall
be deemed given when delivered personally, upon receipt of a transmission
confirmation (with a confirming copy sent by overnight courier) if sent by
facsimile or like transmission and on the next business day when sent by
Federal Express, United Parcel Service, Express Mail, or other reputable
overnight courier, as follows:
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(a) If to Textron, to:
Textron Inc.
40 Westminster Street
Providence, Rhode Island 02903
Attention: Executive Vice President and
General Counsel
(401) 457-2800 (telephone)
(401) 457-2418 (facsimile)
with copies to:
Skadden, Arps, Slate, Meagher & Flom LLP
One Beacon Street
Boston, MA 02108
Attention: Louis A. Goodman, Esq.
(617) 573-4800 (telephone)
(617) 573-4822 (facsimile)
(b) If to C&A Products or Holdings, to:
Collins & Aikman Corporation
5755 New King Court
Troy, Michigan 48098
Attention: Thomas E. Evans, CEO
(248) 824-1510 (telephone)
(248) 824-1512 (facsimile)
and
Attention: Ronald T. Lindsay, General Counsel
(248) 824-1633 (telephone)
(248) 824-1882 (facsimile)
<PAGE>
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with a copy to:
Cahill Gordon & Reindel
80 Pine Street
New York, NY 10005
Attention: W. Leslie Duffy, Esq.
Jonathan Schaffzin, Esq.
(212) 701-3000 (telephone)
(212) 269-5420 (facsimile)
or to such other persons or addresses as may be designated in writing by the
party to receive such notice. Nothing in this section shall be deemed to
constitute consent to the manner and address for service of process in
connection with any legal proceeding (including litigation arising out of or in
connection with this Agreement), which service shall be effected as required by
applicable law.
12.8. Entire Agreement; Assignment. This Agreement constitutes the
entire agreement among the parties with respect to the subject matter hereof
and supersedes all other prior agreements and understandings, both written and
oral, among the parties or any of them with respect to the subject matter
hereof. Any party may assign this Agreement, in whole or in part, upon notice
to the other parties; provided, however, that (i) Textron shall not assign this
Agreement, in whole or in part, to any entity as to which any Competitor of C&A
Products or group of Competitors of C&A Products owns or has the right to
acquire, individually or in the aggregate, twenty percent (20%) or greater of
the total equity interest, without the prior written consent of C&A Products,
and (ii) C&A Products shall not delegate its obligations pursuant to Article
VIII of this Agreement, in whole or in part, to any third party without the
prior written consent of Textron; and provided further that, in each case the
assigning party guarantees the performance of the assignee in writing. The
foregoing shall not be construed as limiting or prohibiting in any manner
Textron's or its Affiliates' right to lease, license, sell or otherwise transfer
all or any part of its or their right, title or interest in the Equipment
pursuant to Section 4.5.
12.9. Parties in Interest. This Agreement shall be binding upon
and inure solely to the benefit of the parties hereto and their respective
permitted successors and assigns.
12.10. Validity. The invalidity or unenforceability of any
provision of this Agreement shall not affect the validity or enforceability of
any other provisions of this Agreement, each of which shall remain in full
force and effect.
12.11. Captions. The article, section and paragraph captions
herein are for convenience of reference only, do not constitute part of this
Agreement and shall not be deemed to limit or otherwise affect any of the
provisions hereof.
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12.12. Transfer, Sales and Stamp Taxes. All transfer, value added,
sales and stamp taxes and similar charges, fees and assessments incurred in
connection with this Agreement and the transactions contemplated hereby shall
be borne by C&A Products. C&A Products shall prepare and file (or cause to be
filed), to the extent required by, or permissible under, applicable law, all
necessary tax returns and other documentation with respect to all such
transfer, value added, sales and stamp taxes and similar charges, fees and
assessments, and, if required by applicable law, Textron shall join in the
execution of any such tax returns and other documentation as reasonably
requested by C&A Products.
[SIGNATURE PAGE FOLLOWS]
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be duly executed as of the date first above written.
TEXTRON, INC.
By: /S/ John R. Curran
-------------------------------
Name: John R. Curran
Title: Vice President
COLLINS & AIKMAN CORPORATION
By: /S/ Ronald T. Lindsay
-------------------------------
Name: Ronald T. Lindsay
Title: Senior Vice President,
General Counsel and
Secretary
COLLINS & AIKMAN PRODUCTS CO.
By: /S/ Ronald T. Lindsay
-------------------------------
Name: Ronald T. Lindsay
Title: Senior Vice President,
General Counsel and
Secretary