Sublicense Agreement - EarthShell Container Corp. and Sweetheart Cup Co. Inc.
SWEETHEART - ECC
SUBLICENSE AGREEMENT
THIS SUBLICENSE AGREEMENT (the "Agreement") is made upon and shall be
effective as of October 7, 1994, by and between EARTHSHELL CONTAINER
CORPORATION, a Delaware corporation ("ECC"), and SWEETHEART CUP COMPANY INC.,
a corporation formed and existing under the laws of the State of Delaware
("Sublicensee").
RECITALS:
A. ECC has the exclusive right to utilize certain Technology (as defined
herein) to manufacture, use and sell, within a certain Field of Use (as defined
herein), certain containers made from inorganically filled moldable composites
and compounds for packaging, storing, portioning, dispensing, carrying,
presenting, serving and consuming food or beverages.
B. ECC has the right and authority to grant sublicenses which will permit
selected entities to utilize such Technology in order to manufacture, use and
sell certain food or beverage containers made from inorganically filled moldable
composites and compounds.
C. Sublicensee desires to obtain from ECC a sublicense to utilize the
Technology to manufacture, use and sell certain designated food or beverage
containers within a designated geographical area.
D. ECC is willing to grant a sublicense to Sublicensee upon the terms and
conditions set forth herein.
EXHIBIT 10.16
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AGREEMENT:
NOW, THEREFORE, in consideration of the foregoing Recitals, the covenants
and agreements set forth herein, and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties covenant
and agree as follows:
1. DEFINITIONS. The capitalized terms used in this Agreement shall have
the meanings set forth below:
(a) The term "Affiliate" shall mean, with respect to any given
entity, any other entity directly or indirectly controlling, controlled by, or
under direct or indirect common control with such given entity. For purposes of
this definition, the ownership of a twenty-five percent (25%) or greater equity
interest in an entity shall be deemed control of such entity, and the ownership
of less than a twenty-five percent (25%) equity interest in an entity (absent
any other exercise of control) shall be deemed not to be control of such entity.
(b) The term "Core Technology" shall mean all of the confidential,
secret, or proprietary technology involving inorganically filled compositions
which are described or claimed in (i) any of the patents or patent applications
listed in Exhibit "A" hereto, including without limitation, any continuations,
divisionals or continuations-in-part, reissues and extensions thereto, and any
patents issued therefrom, and (ii) any future patent applications under the
Patent Cooperation Treaty, any future European Patent applications, and/or any
future national patent applications in or for any country that are based on any
of the applications listed in Section B or D of Exhibit "A" hereto, and any
patents issued therefrom.
(c) The term "Design Improvement" shall mean any improvement to the
physical shape, ornamental design or configuration of Products.
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(d) The term "Field of Use" shall mean (i) the use and sale of
Products in the food service and restaurant industry, (ii) the use and sale of
Products in other retail establishments selling Products (E.G. grocery stores,
convenience stores, food warehouses, and the like), but only with respect to
Products that have been introduced into the food service and restaurant industry
by a customer of an ECC sublicensee (including any Affiliates) that operates
retail outlets in the food service and restaurant industry in at least six
locations, (iii) the incidental use and sale in any manner of those Products
which are manufactured by Sublicensee hereunder where the predominant use is
within the food service and restaurant industry, and (iv) the sale of Products
to distributors and wholesalers for resale and use in retail outlets in the food
service and restaurant industry and, subject to clause (ii) above, in retail
establishments. As used in this subparagraph, the term "food service and
restaurant industry" is intended to include any facility (whether commercial,
nonprofit, governmental, or other), including vending machines wherever located,
where food or beverages are (x) sold for consumption on the premises or (y)
packaged for take-out in single or multiple portions intended for immediate or
same day consumption off the premises without substantial additional
preparation. By way of example, the term "food service and restaurant industry"
includes such facilities as eating establishments, diners, dining rooms, dine-in
restaurants, cafes, cafeterias, including institutional cafeterias, coffee
shops, delicatessens, quick service restaurants, take-out restaurants, snack
bars, cocktail lounges, bars, saloons, night clubs, cabarets, sports arenas and
the like, and their distributors, brokers and wholesalers, but does not include
other food industry facilities outside of the food service and restaurant
industry (such as packaging for pre-packaged foods in food processing
facilities, grocery stores, and food distributors, brokers and wholesalers)
except as specifically provided in clause (ii) of this subparagraph. As used in
this subparagraph, the term "incidental use and sale" shall encompass Products
designed for and predominantly used in the
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food service and restaurant industry but which, beyond the control or reasonable
ability of Sublicensee to properly account for their end-use, ultimately are
used or sold outside of the Field of Use.
(e) The term "Moldable Compound Technology" shall mean all of the
confidential, secret, or proprietary technology involving inorganically filled
composites, including moldable compounds (both foam and non-foam applications),
articles manufactured from inorganically filled composites, the compositions and
uses of such inorganically filled composites or articles made therefrom, and
apparatus and methods for manufacturing same, which are described or claimed in
(i) any of the patents or patent applications listed in Exhibit "B" hereto,
including without limitation, any continuations, divisionals or continuations-
in-part, reissues and extensions thereto, any patents issued therefrom, and (ii)
any future patent applications under the Patent Cooperation Treaty, any future
European Patent applications, and/or any future national patent applications in
or for any country that are based on any of the applications listed in Section B
or D of Exhibit "B" hereto, and any patents issued therefrom.
(f) The term "Net Sales Price" shall mean the gross invoice price
charged by Sublicensee, or its Affiliate as applicable, in the sale of a Product
to a non-Affiliate reduced by (i) any credit allowed by Sublicensee for the
return of the Product; (ii) trade, quantity and cash discounts allowed by
Sublicensee; (iii) excise, value added and sales taxes actually paid by
Sublicensee on the Product; and (iv) unreimbursed freight charges actually paid
by Sublicensee for the shipment and delivery of the Product. In the case of
non-cash consideration, "Net Sales Price" shall be the fair market value of all
non-cash consideration actually received by Sublicensee or its Affiliate for
such Product. The "Net Sales Price" of Products set aside for Sublicensee's own
use, or sold or transferred to an Affiliate or set aside for the Affiliate's own
use, shall be deemed to be
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the price then charged to unrelated parties in arms-length transactions for such
Products in similar quantities and under similar terms of sale.
(g) The term "Products" shall mean only those articles described in
Exhibit "C" hereto made from inorganically filled moldable composites or
compounds that incorporate or utilize the Technology in whole or in part.
(h) The term "Product Improvement" shall mean any improvement or
change, irrespective of whence derived, relating in whole or in part to the
composition, formulation or use of a Product or the Technology, including any
improvement, development or change relating to a Product by process (I.E., any
change in the processing of a Product which yields a materially different
Product), such as a change in chemical composition, change in physical
characteristics or properties brought about by substitution or replacement of
elements or components, change in method of formulation, change in rheology,
etc. The term "Product Improvement" shall not include improvements to the
physical shape, ornamental design, or configuration of Products (hereinafter
"Design Improvements").
(i) The term "Process Improvement" shall mean any improvement,
development, or change relating in whole or part to the Technology or a Product
which involves an apparatus, machine, or process so long as such improvement,
development or change does not materially alter the finished Product, but rather
yields a more efficient production of a Product. The term "Process Improvement"
shall also include any development, refinement, improvement or change relating
in whole or in part to the application of materials, chemical compositions,
coatings or other substances, including the processes of application, to a
Product after the finish trim and forming or conversion of the Product is
completed to the extent that such development, refinement, improvement or change
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is not already known by ECC (unless ECC's prior knowledge is pursuant to a
confidentiality agreement with Sublicensee) or in the public domain.
(j) The term "Technology" shall refer collectively to the Core
Technology, the Moldable Compound Technology and the Trade Secrets.
(k) The term "Territory" shall mean that certain geographic territory
described in Exhibit "F" hereto. Upon written notice to ECC that Sublicensee
services, or intends to expand its business to service, geographic areas outside
of the Territory and that Sublicensee desires to commercialize Products in such
additional geographic areas, which notice shall include evidence of such intent
reasonably satisfactory to ECC, ECC shall cooperate in amending this Agreement
to include such additional geographic areas by amending Exhibit "F" hereto;
provided, however, that the parties must first reach an agreement as to the
royalty rate that shall apply to such additional geographic area and provided
further that ECC shall have no obligation to grant rights to Sublicensee in any
country in which (i) ECC has already granted to a third party an exclusive
license of the Technology or (ii) it is necessary or desirable for ECC to enter
into an exclusive license with a citizen of the country at issue due to monetary
restrictions or other legal, tax or business considerations under the local laws
of such country.
(l) The term "Trade Secrets" shall mean the proprietary information
of ECC that is related to the Technology and which is described in Exhibit "D"
hereto or which is delivered to Sublicensee by ECC and marked "Confidential",
but only to the extent that such proprietary information is directly utilized in
the manufacture, use, or sale of Products.
2. THE SUBLICENSE.
(a) Subject to the terms and conditions set forth in this Agreement,
ECC hereby grants to Sublicensee a non-exclusive, royalty-bearing sublicense
(the "Sublicense") to use the
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Technology to make, use, sell and otherwise commercialize the Products solely
within the Territory and solely within the Field of Use.
(b) Sublicensee shall not have the right to further sublicense,
assign or transfer the Technology, or any interest in or rights under the
Sublicense except (i) to an Affiliate, or (ii) in the case of the sale of
substantially all of Sublicensee's assets, with the prior written consent of
ECC, which consent will not unreasonably be withheld. Any attempted
unauthorized sublicense or transfer shall be void and shall constitute a breach
of a material obligation of Sublicensee under this Agreement.
(c) ECC is free to grant additional sublicenses to other third
parties to utilize the Technology to make, use and sell Products in the Field of
Use and in the Territory.
(d) Nothing in this Agreement shall be construed to constitute a
grant by ECC to Sublicensee of rights broader than that which ECC is entitled to
grant under its license from ECC's licensor of the Technology (hereinafter
referred to as "Licensor"). If and to the extent it is determined that
Sublicensee is selling, or desires to sell, Products outside of the Field of Use
(as defined in the master license agreement between ECC and its Licensor)
granted to ECC by its Licensor, then it is understood and agreed that
Sublicensee must obtain an appropriate license from, and pay Loyalties directly
to, ECC's Licensor.
3. ROYALTIES.
(a) As consideration for the grant of the Sublicense, Sublicensee
shall pay to ECC a royalty (the "Royalty") of twenty-two percent (22%) of the
Net Sales Price for each Product sold by Sublicensee during the term of this
Agreement.
(b) Sublicensee shall be deemed to have "sold" a Product, and ECC
shall be deemed to have earned the Royalty, upon the earliest date that
Sublicensee actually ships, delivers,
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or invoices the Product to any person, firm or entity other than an Affiliate of
Sublicensee, or upon the earliest date that Sublicensee sets such Product aside
for Sublicensee's own use. For Products transferred to an Affiliate,
Sublicensee shall be deemed to have "sold" the Product, and ECC shall be deemed
to have earned the Royalty, upon the earliest date that the Affiliate to whom
the Product was transferred either (i) sets aside such Product for an
Affiliate's own use, or (ii) ships, delivers or invoices such Product to any
person, firm or entity which is not an Affiliate of Sublicensee.
(c) Notwithstanding subparagraph (a) of this paragraph, during the
first three years of the term of this Agreement ECC shall be sensitive to
Sublicensee's ability to produce Products profitably under this Agreement. If,
during the first three years of the term of this Agreement, Sublicensee
demonstrates to ECC's reasonable satisfaction that a material change in
circumstance has occurred affecting Sublicensee's ability to produce Products
profitably under this Agreement, ECC shall cooperate with Sublicensee in
negotiating such adjustments as may be commercially reasonable under the
circumstances. If the parties are unable, in good faith, to reach an agreement
as to a mutually acceptable adjustment, Sublicensee may exercise its right to
terminate this Agreement pursuant to subparagraph 17(b) of this Agreement. By
way of example, a "material change in circumstance" may include a significant
and unexpected increase in the cost of one or more of the raw materials required
for the manufacture of the Products.
(d) Between the third and fourth anniversaries of the effective date
of this Agreement, the parties shall jointly review and evaluate the continued
benefit of the advertising allowance set forth in subparagraph 20(b) hereof and
the economic impact thereof and shall cooperate in negotiating such adjustments
as are commercially reasonable under the circumstances. If the parties are
unable to agree as to the need for, or the nature or amount of, such an
adjustment, then the matter may be referred to arbitration under paragraph 32
hereof.
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4. PAYMENT OF THE ROYALTY.
(a) Within sixty (60) days after the final day of each calendar month
(or fiscal month if Sublicensee is reporting on a fiscal basis) which occurs
during the term of this Agreement (a "Month"), Sublicensee shall pay to ECC the
Royalty earned on all Products sold by Sublicensee during such Month. Each
Royalty payment shall be accompanied by a written report (the "Royalty Report")
prepared by Sublicensee and certified as accurate by the appropriate financial
officer of Sublicensee. Each Royalty Report shall set forth, for the Month
covered by the Royalty Report, (i) the number of each of the Products sold by
the Sublicensee, (ii) the Net Sale Price for each of such Products, and (iii)
reductions to the Net Sales Price for applicable returns, discounts, freight
charges, bad debts/uncollected accounts and taxes with respect to the Products.
(b) The Royalty payment shall accrue interest from the date payment
should have been made until actual payment is made at the per annum base rate
on corporate loans published as the "Prime Rate" in the WALL STREET JOURNAL on
the next business day following the day the Royalty payment was due.
(c) Failure to make payment when due of any Royalty hereunder is a
breach of a material obligation of Sublicensee and may result in the termination
of this Agreement.
5. SUBLICENSEE COVENANTS.
Sublicensee hereby covenants:
(a) not to utilize the Technology except strictly in accordance with
the terms and conditions set forth in this Agreement;
(b) to utilize the Technology solely in connection with the
manufacture, marketing, distribution, use and sale of the
Products;
(c) not to utilize the Technology for any purpose other than the
manufacture, marketing, distribution, use and sale of the
Products;
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(d) not to manufacture, market, distribute, use and sell Products
except in strict accordance with the terms and conditions of this
Agreement;
(e) to manufacture, market, distribute, use and sell Products solely
within the Territory;
(f) not to market, distribute or sell any Product to any person, firm
or entity outside the Territory, or to any person, firm or entity
within the Territory if Sublicensee knows or has reason to
believe that such person, firm or entity intends to make or sell
the Product in question outside the Territory;
(g) to market, distribute, use and sell Products solely within the
Field of Use; and
(h) not to market, distribute, use or sell Products outside of the
Field of Use.
Any breach by Sublicensee of any one or more of the foregoing covenants shall
constitute a breach by Sublicensee of a material obligation under this
Agreement.
6. RIGHT TO AUDIT.
(a) Sublicensee shall keep and maintain complete and accurate records
concerning the manufacture and sale of the Products. ECC or its designee (the
"Representative") shall have the right, at ECC's expense, to periodically review
those records and operations of Sublicensee which deal with the design,
manufacture, shipment or sale of the Products or with Product Improvements or
Process Improvements developed by Sublicensee. Such reviews may take place only
during the normal business hours of Sublicensee and only upon written notice to
Sublicensee given at least three (3) business days prior to such review. The
Representative conducting such review shall be required to execute a
confidentiality agreement pursuant to which the Representative shall agree that
it will not disclose or use the information obtained pursuant to such review to
or for the benefit of any person or entity except ECC unless required to do so
in connection with the resolution of any dispute concerning any payment required
by this Agreement.
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(b) ECC shall give written notice to Sublicensee of any dispute as to
proper payment of any Royalty due hereunder. If the parties are unable to
resolve any disputes raised by ECC in the notice to Sublicensee within thirty
(30) days from the date of such notice, then the dispute shall be submitted to
arbitration or mediation for resolution as provided under this Agreement.
7. IMPROVEMENTS TO THE TECHNOLOGY.
(a) PRODUCT IMPROVEMENTS. If, while the Sublicense remains in
effect, Sublicensee should develop any Product Improvement, Sublicensee shall
notify ECC of such Product Improvement within a reasonable time of, and in no
event more than ninety (90) days after, its development and shall provide ECC
with access to all information concerning such Product Improvement as ECC shall
reasonably request; provided, however, that all such information shall be
confidential and shall be subject to all restrictions on disclosure as set forth
in this Agreement. Sublicensee shall assign to ECC all rights, title and
interest in the Product Improvement for an assignment fee of $1,000.00, and ECC
shall grant back to Sublicensee the non-exclusive right to utilize the Product
Improvement within the Field of Use and within the Territory as if such Product
Improvement were originally within the scope of the Sublicense. There shall be
no royalty charged to Sublicensee for the right to utilize the Product
Improvement. For a period of (i) one year from the date of commercialization of
such Product Improvement, or (ii) two years from the date of the development of
such Product Improvement, whichever is shorter, ECC shall not grant any right to
utilize the Product Improvement within the Field of Use to any third party
within the Territory. The failure of Sublicensee to disclose any such Product
Improvement to ECC within the time period set forth above shall constitute a
material breach of this Agreement.
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(b) PROCESS IMPROVEMENTS. If, while the Sublicense remains in
effect, Sublicensee should develop any Process Improvement, then Sublicensee
shall notify ECC of such Process Improvement within a reasonable time of, and in
no event more than ninety (90) days after, its development and shall provide ECC
with access to all information concerning such improvements as ECC shall
reasonably request; provided, however, that all such information shall be
confidential and shall be subject to all restrictions on disclosure as set forth
in this Agreement. For a single lump sum payment of $1.000.00 by ECC to
Sublicensee, Sublicensee shall grant to ECC an exclusive, fully paid-up license
(including the right to further sublicense and/or assign its rights to ECC's
Licensor) to utilize the Process Improvement in connection with the Product
and/or the Technology (i) outside of the Territory and (ii) within the
Territory, outside of the Field of Use. The license granted to ECC under this
subparagraph 7(b) shall be irrevocable and shall survive termination or
expiration of this Agreement for any reason whatsoever. The failure of
Sublicensee to disclose any such Process Improvement to ECC within the time
period set forth above shall constitute a material breach of this Agreement.
(c) PATENT RIGHTS FOR PRODUCT IMPROVEMENTS. ECC shall have the right
to seek patent protection for any Product Improvement at its own cost and
expense. Sublicensee shall provide to ECC or its assignee with such assistance
as may be reasonably requested, from time to time, in connection with such
efforts, including the execution of any documents necessary to obtain and
maintain such patent protection; provided, however, that ECC or its assignee
will reimburse Sublicensee for any out-of-pocket fees and expenses reasonably
incurred by Sublicensee in providing such assistance.
(d) PATENT RIGHTS FOR PROCESS IMPROVEMENTS. Sublicensee shall have
the right to seek patent protection for any Process Improvement at its own cost
and expense. ECC shall provide
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Sublicensee or its assignee with such assistance as may be reasonably requested,
from time to time, in connection with such efforts, including the execution of
any documents necessary to obtain and maintain such patent protection;
provided, however, that Sublicensee or its assignee will reimburse ECC for
any out-of-pocket expenses reasonably incurred by ECC in providing such
assistance. Sublicensee shall keep ECC informed of the status of the
prosecution of each patent application that Sublicensee elects to pursue and
shall consult with ECC on all material aspects of such application, although
all final decisions in regard to a patent application shall remain within the
sole discretion of Sublicensee. In the event Sublicensee elects not to seek
patent protection for a Process Improvement, Sublicensee shall promptly
notify ECC in writing, and ECC shall have the option, for a period of ninety
(90) days after its receipt of such written notice, to acquire by assignment
from Sublicensee all rights, title and interests in and to the Process
Improvement in question, including the right to seek patent protection in
ECC's name or its designee, in consideration of a single lump-sum of payment
of One Thousand Dollars ($1,000.00). In the event ECC exercises the option
provided for in the preceding sentence, Sublicensee shall provide to ECC or
its designee such assistance as may reasonably be requested, from time to
time, in connection with ECC's or its designee's efforts to obtain protection
of the Process Improvement in question, including the execution of any
documents necessary to obtain and maintain such patent protection; provided,
however, that ECC or its assignee will reimburse Sublicensee for any
out-of-pocket fees and expenses reasonably incurred by Sublicensee in
providing such assistance.
(e) PROPRIETARY RIGHTS OF SUBLICENSEE. ECC acknowledges and agrees
that Sublicensee presently owns certain patents, trade secrets and other
proprietary information relating to the Products and/or Technology ("Sublicensee
Proprietary Property") which is more fully set forth on Exhibit "E". attached
herein and incorporated herein. The Sublicensee Proprietary Property is and
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shall remain the exclusive property of Sublicensee. All Sublicensee Proprietary
Property shall be subject to the conditions and obligations of confidentiality
which apply to all confidential and proprietary information of the respective
parties hereto as required under this Agreement. Except for any developments,
improvements or modifications to the Sublicensee Proprietary Property which are
Product or Process Improvements which are otherwise governed by this Agreement,
ECC shall not acquire any right, title, interest or license in any of the
Sublicensee Proprietary Property as a result of this Agreement, or as a result
of any dealings between the parties pursuant to this Agreement. Any proprietary
information or technology relating to the Products and/or the Technology and not
set forth in Exhibit "E" hereto shall be subject to the terms and conditions of
this Agreement governing Product Improvements and Process Improvements unless
such proprietary information or technology is in the public domain or in the
possession of ECC.
(f) IMPROVEMENTS TO PRODUCT CONFIGURATION. Sublicensee shall own the
rights to any Design Improvements that may be developed by Sublicensee during
the term of this Agreement.
(g) ECC DEVELOPED AND JOINTLY DEVELOPED PRODUCT, PROCESS AND DESIGN
IMPROVEMENTS. Any Product Improvements, Process Improvements or Design
Improvements developed by ECC during the term of this Agreement (hereinafter
referred to as "ECC Improvements") and any Product Improvements, Process
Improvements or Design Improvements developed jointly by ECC and Sublicensee
during the term of this Agreement (hereinafter referred to as "Jointly Developed
Improvements") shall be owned by ECC and, except as otherwise provided in this
Agreement, may be disclosed and/or licensed by ECC to third parties at ECC's
discretion. For a period of (i) one year from the date of commercialization of
any Jointly Developed Improvement, or (ii) two years from the date of the
development of the Jointly Developed Improvement; whichever is shorter, ECC
shall not grant any right to utilize the Jointly Developed
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Improvement within the Field of Use to any third party within the Territory.
Any ECC Improvements or Jointly Developed Improvements disclosed and/or licensed
by ECC to Sublicensee shall be deemed to be included within the definition of
Technology and shall be subject to all of the terms, conditions and restrictions
of this Agreement applicable to the Technology.
8. INFRINGEMENT.
(a) ECC and Sublicensee will promptly notify (within 30 days) one
another of any apparent infringement of the Technology (whether or not such
apparent infringement is within the Field of Use) or of the Trademarks which
comes to their attention while the Sublicense remains in effect, and if in ECC's
opinion the apparent infringement has substantial and adverse consequences, ECC
shall, at its sole cost and expense, bring suit to enjoin such infringement and
to recover damages therefor. In any action brought by ECC pursuant to this
subparagraph, ECC shall select and control counsel for the prosecution of such
suit. Sublicensee shall (i) have the right to receive, from time to time, full
and complete information from ECC concerning the status of such suit, (ii) have
the right, at Sublicensee's own expense, to be represented therein by counsel in
an advisory capacity, and (iii) cooperate fully with ECC and provide whatever
assistance is reasonably requested by ECC in connection with such suit,
including the preparation and signing of documents. If ECC decides not to bring
suit to enjoin an alleged infringement either because it is deemed inadvisable
or DE MINIMIS, no such action will be required by ECC; however, ECC's Licensor
shall, at its own cost and expense, have the right, but not the obligation, to
bring suit to enjoin such infringement and to recover damages therefore. In the
event ECC's Licensor elects to bring suit, Sublicensee's rights and obligations
hereunder shall be the same as if ECC had undertaken to enjoin such
infringement. In the event the action taken by ECC or its Licensor is not
satisfactory to Sublicensee, then Sublicensee shall have the right, at its sole
cost, to take whatever action it deems
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appropriate in its own name against an alleged infringer. Additionally, ECC and
its Licensor shall (1) have the right to consult with Sublicensee prior to
Sublicensee pursuing legal action against a potential infringer and thereafter
shall have the right to receive, from time to time, full and complete
information from Sublicensee concerning any actions Sublicensee has taken
against an alleged infringer, and (ii) have the right, at ECC's or its
Licensor's, as applicable, own expense, to be represented by counsel in an
advisory capacity in any legal proceedings initiated by Sublicensee.
(b) ECC and Sublicensee will promptly notify (within 30 days) one
another of any apparent infringement of any Sublicensee owned Process
Improvement (whether or not such apparent infringement is within the Field of
Use) which comes to their attention and, if in Sublicensee's opinion, the
apparent infringement has substantial and adverse consequences, Sublicensee
shall, at its sole cost and expense, bring suit to enjoin such infringement and
to recover damages therefor. In any action brought by Sublicensee pursuant to
this subparagraph, Sublicensee shall select and control counsel for the
prosecution of such suit. ECC shall (i) have the right to receive, from time to
time, full and complete information from Sublicensee concerning the status of
such suit, (ii) have the right, at ECC's own expense, to be represented therein
by counsel in an advisory capacity, and (iii) cooperate fully with Sublicensee
and provide whatever assistance is reasonably requested by Sublicensee in
connection with such suit, including the preparation and signing of documents.
If Sublicensee decides not to bring suit to enjoin an alleged infringement of
Sublicensee owned Process Improvements either because it is deemed inadvisable
or DE MINIMIS, no such action will be required by Sublicensee. In the event the
action taken by Sublicensee is not satisfactory to ECC, then ECC shall have the
right but not the obligation, at its sole cost, to take whatever action it deems
appropriate in its own name against an alleged infringer. Additionally,
Sublicensee shall (i) have the right to consult with ECC prior to ECC pursuing
legal action against
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a potential infringer and thereafter shall have the right to receive, from time
to time, full and complete information from ECC concerning any actions ECC has
taken against an alleged infringer, and (ii) have the right, at Sublicensee's
own expense, to be represented by counsel in an advisory capacity in any legal
proceedings initiated by ECC with respect to infringement of Sublicensee owned
Process Improvements.
(c) The parties shall notify (within 30 days) each other of any
claim by any person that the manufacture or use of the Technology with respect
to any Product by Sublicensee in the Field of Use infringes the rights of such
person or of the commencement of any lawsuit against ECC, Sublicensee, or any
customers of the foregoing, as the result of such alleged infringement. ECC may
assume and control the defense of any such lawsuit, at its sole cost and
expense, irrespective of whether ECC is named as a defendant in such litigation.
Sublicensee will assist ECC in the defense of such suit or action by providing
information and fact witnesses as needed; provided, however, that ECC shall
reimburse Sublicensee for all out-of-pocket costs, excluding attorney fees
except as preapproved by ECC, incurred by Sublicensee in connection with such
action by allowing a credit or offset against the Royalty due hereunder.
Sublicensee shall have the right to be represented in such suit or action only
in an advisory capacity. If ECC decides not to assume the defense of
infringement lawsuit described in this subparagraph, then ECC's Licensor shall
have the right, but not the obligation, to do so. In the event ECC's Licensor
elects to assume the defense, Sublicensee's obligations shall be the same as if
ECC were assuming the defense of such litigation. If ECC's Licensor does not
assume defense of such litigation, then Sublicensee shall have the right, but
not the obligation, at Sublicensee's own cost and expense, to assume the defense
of such lawsuit utilizing legal counsel of its choice.
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(d) If, as the result of any lawsuit referred to in the preceding
subparagraph, Sublicensee is required by final court order from which no appeal
can be taken (or by a court order which ECC's legal counsel believes has no
reasonable likelihood of success for modification on appeal) to obtain a license
under any third party's patent not licensed hereunder in order to continue with
Sublicensee's activities as contemplated by this Agreement, and to pay a royalty
under such license, and the infringement of such patent cannot reasonably be
avoided by Sublicensee, the future payment of the Royalty shall thereafter be
reduced by an amount equal to 100% of any fee or royalty payable by Sublicensee
under such additional license, but in no event shall the Royalty be reduced to
an amount less than zero, as long as the infringement was due to the Technology
licensed hereunder. In addition, if Sublicensee settles an infringement action
referred to in the foregoing subparagraph, after obtaining the prior written
consent of ECC (which shall not be unreasonably withheld), and pursuant to such
settlement Sublicensee obtains a license under any patent not licensed
hereunder, to make, use or sell the Products in any manner contemplated by this
Agreement, and agrees to pay a royalty under such license, and the infringement
of such patent cannot reasonably be avoided by Sublicensee, the Royalty shall
thereafter be reduced by an amount equal to 100% of the sum payable by
Sublicensee pursuant to such settlement, but in no event shall the Royalty be
reduced to an amount less than zero, as long as the settlement was for claims of
infringement due to the Technology licensed hereunder.
9. ADDITIONAL DUTIES OF THE SUBLICENSEE. In addition to, and not in
limitation of, the other duties and obligations of Sublicensee, as set forth in
this Agreement, Sublicensee shall:
(a) Use all commercially reasonable efforts to diligently exploit the
Sublicense by developing a commercial manufacturing capacity for the Products
and by actively manufacturing, marketing, advertising and selling the Products
within the Territory.
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(b) Continue to make all required payments under this Agreement to
ECC during any challenge of the validity of any of the patents (or claims
thereto issued in connection with the Technology. In the event Sublicensee
terminates such payments based upon or in connection with such a challenge, ECC
may at its option terminate this Agreement upon written notice to Sublicensee.
Notwithstanding the foregoing, if ECC or its Licensor does not assume the
defense of any litigation set forth in subparagraph 8(c), and Sublicensee does
assume the defense of such litigation, all Royalty payments due during the
pendency of such litigation shall be paid into a mutually agreeable escrow, and
such Royalty payments shall be held in escrow until the litigation becomes
final, from which no further appeal can be taken. Once the litigation is final,
the Royalty payments held in escrow shall be paid to ECC less an amount equal to
any damage or loss Sublicensee sustained as a result of the litigation,
excluding attorney fees and costs, which amounts shall be paid to Sublicensee.
(c) If Sublicensee is a publicly traded corporation or is otherwise
required to publicly disseminate its financial statements, Sublicensee shall
provide ECC with annual financial reports of Sublicensee which are published and
detail Sublicensee's annual earnings and statement of net worth for the
preceding calendar or fiscal year. If Sublicensee is required to file financial
reports with the S.E.C., then Sublicensee may provide ECC with copies of those
financial reports required to be filed with the S.E.C. in lieu of the foregoing.
(d) Forty-five (45) days after the final day of each of Sublicensee's
calendar or fiscal quarter end (the "Quarter"), Sublicensee shall deliver to ECC
a written report (the "Development Report"), which shall set forth, in
reasonable detail, the scope and results of all research and development
activities relating to the Technology and/or Products undertaken by
Sublicensee during the Quarter which report shall also set forth, in reasonable
detail, a description
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of all marketing activities for the Products undertaken during the Quarter by
Sublicensee. The Development Reports shall be certified as correct and accurate
by an appropriate officer of Sublicensee.
10. REPRESENTATIONS AND WARRANTIES OF ECC. ECC hereby represents and
warrants to Sublicensee that:
(a) ECC is a corporation duly organized, validly existing and in good
standing under the laws of the State of Delaware. ECC has all requisite
corporate power and authority to own, operate and lease its properties and to
carry on its business as now being conducted, and is duly qualified to do
business in every jurisdiction wherein the nature of the business conducted or
the assets owned or leased by it make such qualification material to the conduct
of its business.
(b) ECC has all requisite corporate power and authority to enter into
this Agreement and to perform its obligations hereunder, including but not
limited to the right to sublicense the Technology. This Agreement has been duly
and validly authorized, executed and delivered by ECC and, assuming the due
authorization, execution and delivery by Sublicensee, is the legal, valid and
binding obligation of ECC, enforceable against it in accordance with its terms,
subject only to bankruptcy, insolvency, reorganization, moratorium and other
laws relating to or affecting creditors' rights generally and to general
principles of equity.
(c) To the best knowledge of ECC, no person, firm or entity has made
any claims or threatened, in writing or otherwise, that ECC is in violation of
or has infringed any patent, patent license, trade name, trademark, service
mark, brand mark, brand name, copyright, know-how, formula or other proprietary
or trade rights of such third party as they relate to the Technology. To the
best of ECC's present knowledge and belief, the use of the Technology in the
manufacture of the Products pursuant to the terms of this Agreement will not
constitute infringement of the proprietary
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rights of any third party. Except as provided in this subparagraph, ECC makes
no representation or warranty as to the ownership or validity of the Technology.
The license granted to Sublicensee under this Agreement does not exceed the
scope of the rights granted to ECC by Licensor.
(d) To the best knowledge of ECC, the execution, delivery and
performance of this Agreement by ECC and the consummation by it of the
transactions contemplated hereby will not (i) constitute a violation (with or
without the giving of notice or lapse of time) of any provision of applicable
law, (ii) require any consent, approval or authorization of any person or
governmental authority, (iii) result in a default under, acceleration or
termination of, or the creation in any party of the right to accelerate,
terminate, modify or cancel any agreement, lease, franchise, permit, note or
other restriction, encumbrance, obligation or liability to which ECC is a party
or by which it is bound or to which any of its assets are subject, (iv) result
in the creation of any lien or encumbrance upon ECC's assets, (v) conflict with,
result in the breach of, or constitute a default under any provision of ECC's
certificate of incorporation or bylaws, or (vi) conflict with, result in a
tortious interference as a result of such conflict with, or otherwise violate,
any material contract or arrangement between ECC and any other person. The
representation and warranty given in this subparagraph shall not be deemed or
construed to expand or modify the representation and warranty given by ECC in
subparagraph 10(c).
(e) Neither ECC, nor anyone acting on its behalf, has taken any
action relating to any broker, finder, consultant or other expert which could
result in the imposition upon the Sublicensee of any obligation to pay a fee to
any broker, finder, consultant or similar expert in connection with the
transactions contemplated hereby.
11. REPRESENTATIONS AND WARRANTIES OF SUBLICENSES. Sublicensee hereby
represents and warrants to ECC that:
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(a) Sublicensee is a corporation duly organized, validly existing and
in good standing under the laws of the State of Delaware. Sublicensee has all
requisite power and authority to own, operate and lease the properties and to
carry on its business as now being conducted, and is duly qualified to do
business in every jurisdiction wherein the nature of the business conducted or
the assets owned or leased by it make such qualification material to the conduct
of its business.
(b) Sublicensee has all requisite power and authority to enter into
this Agreement and to perform its obligations hereunder. This Agreement has
been duly and validly authorized, executed and delivered by Sublicensee and,
assuming the due authorization, execution and delivery by ECC, is a legal and
binding obligation of Sublicensee, enforceable against it in accordance with its
terms, subject only to bankruptcy, insolvency, reorganization, moratorium and
other laws relating to or affecting creditors' rights generally and to general
principles of equity.
(c) To the best knowledge of Sublicensee, the execution, delivery and
performance of this Agreement by Sublicensee and the consummation by it of the
transactions contemplated hereby will not (i) constitute a violation (with or
without the giving of notice or lapse of time) of any provision of applicable
law, (ii) require any consent, approval or authorization of any person or
governmental authority, (iii) result in a default under, acceleration or
termination of, or the creation in any party of the right to accelerate,
terminate, modify or cancel, any agreement, lease, franchise, permit, note or
other restriction, encumbrance, obligation or liability to which Sublicensee is
a party or by which it is bound or to which any of its assets are subject, (iv)
result in the creation of any lien or encumbrance upon Sublicensee's assets, (v)
conflict with, result in the breach of, or constitute a default under any
provision of Sublicensee's charter documents, or (vi) conflict with, result in
tortious interference as a result of such conflict with, or otherwise violate,
any contract or arrangement between ECC and any other person.
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(d) Neither Sublicensee, nor anyone acting on its behalf, has taken
any action relating to any broker, finder, consultant or other expert which
could result in the imposition upon ECC of any obligation to pay a fee to any
broker, finder, consultant or similar expert in connection with the transactions
contemplated hereby.
12. SURVIVAL OF REPRESENTATIONS AND WARRANTIES. The representations and
warranties of the parties, as set forth herein, shall be true and accurate as of
the effective date of this Agreement, and shall survive the execution of this
Agreement.
13. DISCLAIMER OF WARRANTIES.
NEITHER ECC NOR ITS LICENSOR MAKE OR GIVE, AND THEY HEREBY EXPRESSLY
DISCLAIM ANY AND ALL WARRANTIES, WHETHER EXPRESS OR IMPLIED, WRITTEN OR ORAL,
INCLUDING BUT NOT LIMITED TO THE WARRANTIES OF MERCHANTABILITY AND OF FITNESS
FOR A PARTICULAR PURPOSE, IN REGARD TO THE TECHNOLOGY AND/OR ANY PRODUCTS WHICH
MAY BE MANUFACTURED, USED OR SOLD BY SUBLICENSEE AND WHICH ARE BASED UPON OR
UTILIZE THE TECHNOLOGY.
14. INDEMNIFICATION.
(a) ECC shall defend, indemnify and hold Sublicensee harmless from
and against, and hereby assumes liability for the payment of any and all loss,
liability or damage, and for all costs and expenses (including reasonable costs
of investigations and reasonable attorneys, accountants, and expert witness
fees) that may be imposed upon, suffered or incurred by, or successfully
asserted against Sublicensee as a consequence of or in connection with any claim
(i) that may be asserted against Sublicensee that the Technology infringes the
valid patent rights of any third party, (ii) that may be asserted against
Sublicensee based on a breach of any representations or
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warranties set forth in paragraph 10 hereof, or (iii) based on the negligence or
willful misconduct of ECC. However, ECC's liability to Sublicensee for any
matter arising under this Agreement or any claims asserted against Sublicensee
which relate, in whole or in part, to the Technology, shall be limited to the
total amount of all Royalties paid to ECC by Sublicensee under this Agreement
for (x) the 24-month period preceding the date that Sublicensee suffered a loss
requiring indemnification by ECC under this subparagraph or (y) in the case of
patent infringement litigation brought by a third party against Sublicensee, the
period from the date written notice of such infringement is received by
Sublicensee to the date final judgment is entered, whichever is longer.
(b) Sublicensee shall defend, indemnify and hold ECC and its Licensor
harmless from and against, and hereby assumes liability for the payment of any
and all loss, liability or damage, and for all costs and expenses (including
reasonable costs of investigations and reasonable attorneys, accountants, and
expert witness fees) that may be imposed upon, suffered or incurred by, or
successfully asserted against ECC or its Licensor as a consequence of or in
connection with any claim or liability, other than those expressly set forth in
subparagraph 14(a) hereof, arising out of or as a consequence of this Agreement,
including, but not limited to, any product liability claims that may be asserted
against ECC or its Licensor in relation to any Products manufactured, marketed,
distributed, used and/or sold by Sublicensee pursuant to this Agreement. In the
event any action, suit or proceeding is brought against ECC or its Licensor with
respect to which there may be indemnification pursuant to this subparagraph, the
defense of such action, suit or proceeding (including all settlements and
arbitrations, trials, appeals or other proceedings) shall be conducted by
Sublicensee at its sole cost and expense through legal counsel selected by
Sublicensee. ECC and its Licensor shall have the right to participate in such
defense at their own expense through legal counsel of their choice. If
Sublicensee fails to defend any such action, suit
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or proceedings, for any reason, such failure shall constitute a material breach
of this Agreement by Sublicensee, and ECC or its Licensor may undertake defense
of such action, suit or proceeding, through legal counsel of their choice at the
sole cost and expense of Sublicensee (provided such legal costs and expenses are
reasonable under the circumstances). The parties shall make available to one
another, their legal counsel and accountants, all information and documents
reasonably available to them which relate to such action, suit or proceeding and
shall render such other assistance as they may reasonably require of one another
in order to insure the proper and adequate defense of any such action, suit or
proceeding.
(c) Neither party shall have any liability to the other party
pursuant to an indemnity provided by this paragraph unless and until the
aggregate amount of all indemnified losses suffered or incurred by such
indemnified party after the effective date hereof equals or exceeds $100,000
(U.S. Dollars), at which time the indemnifying party shall be obligated to pay
the indemnified party the full amount of all indemnified losses, including such
initial $100,000 (U.S. Dollars) in losses. The amount of indemnity payable
pursuant to this paragraph shall be calculated after giving affect to any
insurance proceeds actually received by the indemnified party provided that
neither party shall subrogate to any insurance carrier any rights or claims
which it may have against the other party.
(d) The obligations set forth in this paragraph 14 shall survive the
expiration or termination of the Agreement for any reason whatsoever.
15. PRODUCT LIABILITY INSURANCE. In addition to the indemnification
provided under subparagraph 14(b) hereof, Sublicensee shall obtain, and shall
maintain during the entire term of this Agreement, a product liability insurance
policy with a reputable insurance carrier reasonably acceptable to ECC. For
United States carriers, such carriers must have an A.M. Best rating of "A-
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VI" or better. Such policy shall provide Sublicensee with product liability
coverage with minimum liability coverage in the amount of $1,000,000.00 (U.S.
Dollars) aggregate and $1,000,000.00 (U.S. Dollars) per occurrence. Such
product liability insurance policy shall provide that ECC will be given
thirty (30) days prior written notice of any amendment or modification that
would reduce or change coverage under, or termination or cancellation of, the
policy. Upon ECC's request, Sublicensee shall provide ECC with a copy of such
policy and of all amendments or modifications thereto. Sublicensee shall be
required to obtain and maintain the product liability insurance policy called
for by the provisions of this subparagraph only from and after the date of
the first commercial sale of a Product by Sublicensee, or the first public
testing of a Product by Sublicensee. If Sublicensee has a net worth in an
amount satisfactory to ECC, then Sublicensee shall not be required to obtain
and maintain the product liability insurance required in this subparagraph;
however, Sublicensee shall be required to reimburse ECC or its Licensor for
any loss suffered by ECC or its Licensor which would have been covered under
the product liability insurance policy Sublicensee otherwise would have been
required to obtain under this subparagraph.
16. CONFIDENTIALITY.
(a) Sublicensee acknowledges that ECC claims that the Technology, as
it may exist from time to time, as well as the other confidential or proprietary
information (including business and financial information) of ECC (whether owned
by ECC or acquired by license from third parties) are and shall remain the
valuable, special, unique and proprietary assets of ECC, and shall constitute
"Confidential Information" hereunder. In order for any information other than
the Technology to be deemed to be "Confidential Information" hereunder, whether
disclosed orally or in writing, it must be identified, orally or in writing, to
Sublicensee as "Confidential Information" at time of disclosure, or reasonably
thereafter, or be reasonably understood by Sublicensee to be
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"Confidential Information." Additionally, as used herein, "Confidential
Information" shall not include any information or data which Sublicensee can
show: (i) is in, or becomes a part of, the public domain by any means other than
the failure by Sublicensee to fulfill its obligations hereunder; or (ii) is
rightfully known to Sublicensee at the time of disclosure by ECC; or (iii) is,
at any time, disclosed to Sublicensee by a third party who has received and
disclosed such information without the breach of any obligation of
confidentiality to ECC or to any third party assignor of such Confidential
Information. For purposes of this subparagraph, information shall not be deemed
to be a part of the public domain or in Sublicensee's knowledge merely because
it may be embraced in a more general disclosure or simply because it may be
derived from combinations of disclosures or information generally available to
the public or within Sublicensee's knowledge. The parties acknowledge that
disclosure to Sublicensee of Confidential Information will be necessary in order
to enable Sublicensee to utilize the Sublicense in the manner contemplated by
this Agreement; and ECC will make such disclosures of the Confidential
Information to Sublicensee as it is necessary, required or appropriate in that
regard. The parties acknowledge that they have a confidential relationship with
one another and, accordingly, Sublicensee shall maintain all Confidential
Information disclosed to it pursuant to this Agreement in confidence and shall
not disclose the same to any third party (with the exception of its employees,
accountants, attorneys and other agents and professional advisors) either during
or after the term of this Agreement unless required to do so by court order or
by law, in which case Sublicensee shall notify ECC, in writing, prior to making
such disclosure and shall cooperate with ECC to preserve and protect the
confidentiality of the Confidential Information in question to the fullest
extent possible. Additionally, except as specifically contemplated by this
Agreement, Sublicensee shall not utilize any Confidential Information for its
own benefit or for the benefit of any third party. Prior to making any
permitted
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disclosure of any Confidential Information to its employees, accountants,
attorneys and other agents and professional advisors, Sublicensee shall use
commercially reasonable efforts to require such persons, firms, or entities to
execute and deliver written disclosure agreements which shall obligate such
persons, firms, or entities to comply with the same obligations of
confidentiality and non-use as imposed upon Sublicensee in this subparagraph.
The obligation of confidentiality as it relates to the Confidential Information
shall survive the termination of this Agreement and continue unabated until the
expiration of the last patent, including any extensions, reissues, or
continuations thereof, which has been or may be issued with respect to the
Technology.
(b) From time to time during the term of this Agreement, Sublicensee
may disclose to ECC certain information which Sublicensee deems to be
proprietary and confidential, including but not limited to, business plans,
marketing plans, financial information, and process technology (the "Sublicensee
Confidential Information"). The definition of "Sublicensee Confidential
Information," and ECC's use and disclosure thereof, shall be governed by terms
and conditions identical to those which govern Confidential Information, as set
forth in the preceding subparagraph; provided, however, that ECC shall have the
right to disclose Sublicensee Confidential Information to ECC's Licensor subject
to its accepting and treating it as Confidential Information in writing to
Sublicensee.
17. TERM AND TERMINATION.
(a) The term of this Agreement shall commence upon the effective date
hereof. Unless sooner terminated as hereinafter provided, this Agreement shall
continue in full force and effect until the expiration of the last material and
substantial patent covering the Technology which is utilized by Sublicensee, or
for so long as Sublicensee produces the Products which utilizes material and
substantial proprietary information or a material and substantial Trade Secret
of ECC;
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provided. however, that upon the expiration of the last aforementioned patent,
if Sublicensee desires to continue the Agreement in force, it will be subject to
an appropriate negotiated adjustment to the Royalty Payments or License Fee.
Any dispute as to the term of this Agreement shall be resolved by arbitration as
provided under this Agreement.
(b) Sublicensee may terminate this Agreement, at any time, with or
without cause, upon sixty (60) days prior written notice of such termination to
ECC.
(c) If either party is in breach of any of its material obligations
hereunder, then the non-breaching party may give the breaching party written
notice of such breach. If such breach is not cured within ninety (90) days
after the date such written notice is delivered or, if such default cannot be
cured within such ninety day period but the breaching party has taken action to
cure such default, then if the default is not cured within one hundred eighty
(180) days from the date of the original notice, the non-breaching party shall
have the right immediately to terminate the Sublicense by written notice to the
breaching party.
(d) Notwithstanding any other provision of this Agreement, ECC shall
have the right, at its sole discretion, to terminate the Sublicense, upon thirty
(30) days written notice to Sublicensee, in the event that the amount of the
Royalty paid to ECC in any calendar year is not at least the greater of (i) 50%
of the Royalty payment amount for the preceding calendar year, or (ii)
commencing in calendar year 1995, $100,000 (U.S. Dollars). In the event of
termination of this Agreement pursuant to this subparagraph, Sublicensee shall
have the right to sell at market price existing stock and inventory of
manufactured Products for a period of one hundred and eighty days.
18. EFFECT OF EXPIRATION OR TERMINATION.
(a) From and after the effective date of the expiration or
termination of this Agreement, Sublicensee shall have no right, whatsoever, to
utilize the Technology (except for
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Process Improvements then owned by Sublicensee) or the Trademarks pertinent to
this Agreement, and shall return to ECC all copies of Confidential Information
which is then in the possession of Sublicensee or destroy the same and provide
satisfactory assurances of the destruction of all Confidential Information;
provided, however, that nothing contained herein shall, or shall be deemed to,
restrict the Sublicensee's ability or right to use, free of Royalty, any
Technology, trade name, know-how or confidential information which is or has
come into the public domain through no fault of Sublicensee and is not otherwise
deemed Confidential Information. ECC shall also be required to return to
Sublicensee all copies of Confidential Information of Sublicensee which are then
in the possession of ECC or destroy and provide satisfactory assurances of the
destruction of all Confidential Information.
(b) The right of termination under paragraph 17 hereof shall be in
addition to, and not in lieu of, all other rights and remedies the terminating
party may have under this Agreement, at law or in equity.
(c) The obligation of Sublicensee to pay to ECC the Royalty for all
Products actually sold by Sublicensee prior to the effective date of the
expiration or termination of this Agreement, as well as the obligations
concerning indemnification, product liability and of confidentiality set forth
in this Agreement, shall survive the expiration or termination of the Sublicense
and of this Agreement.
19. MARKING.
(a) Unless functionally impractical or unless the customer for which
Sublicensee is manufacturing Products objects, Sublicensee shall mark the
Products and related documents with the applicable United States patent numbers,
as required by applicable law, or as reasonably instructed by ECC.
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(b) Sublicensee shall comply with all applicable laws, rules and
regulations of the United States, including but not limited to the Export
Regulations of the United States Department of Commerce, in connection with the
Technology. Sublicensee acknowledges that ECC has not made and does not make
any representations that any license is or is not required in connection with
such export or, if required, that such license will be issued by the United
States Department of Commerce; provided, however, that ECC shall apply for all
licenses required or necessary to enable the Sublicensee to export the
Technology within the Territory without imposing any additional Royalty.
20. TRADEMARKS.
(a) Sublicensee may utilize, in connection with the manufacture,
marketing, distribution and sale of the Products, the EARTHSHELL-TM- trademark,
and such other trade names, trademarks, service marks, slogans and logo marks
that may be designated in writing by ECC to Sublicensee prior to commercial
production of the Products by Sublicensee or from time to time thereafter
(collectively the "Trademarks").
(b) To the extent Sublicensee elects to use the Trademarks on or in
connection with manufacture, marketing, distribution, use and/or sale of
Products hereunder, Sublicensee shall be entitled to receive an advertising
allowance credit equal to Two Percent (2%) of the Net Sale Price of such
Products that bear the Trademarks. To qualify for the aforementioned
advertising allowance credit, Sublicensee shall submit to ECC written
documentation, reasonably satisfactory to ECC, of sales by Sublicensee of
Products that bear the Trademarks, and ECC shall credit the appropriate amount
against future royalties payable by Sublicensee hereunder.
(c) To the extent Sublicensee elects to use the Trademarks on or in
connection with the marketing, distribution, use and/or sale of the Products,
the specific placement, size, and
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detail of the Trademarks on the Product must be approved by ECC, but shall not
be required to be placed on the Products in such a size, placement, detail or
configuration so as to impair the marketability of the Product. In addition, on
any Products manufactured, marketed, distributed and sold by Sublicensee and
bearing any Trademark, Sublicensee shall also include the following legend:
"This product is manufactured by ___________________________ under license from
EarthShell Container Corporation."
(d) In connection with any use of the Trademarks by Sublicensee,
Sublicensee shall not in any manner represent that it has any ownership interest
therein and shall not challenge or impugn the ownership of the Trademarks.
Sublicensee acknowledges that use of the Trademarks shall not create in its own
favor any right, title, or interest in or to the Trademarks, but that all uses
of these marks by Sublicensee shall inure to the benefit of ECC or its Licensor.
Sublicensee shall cooperate with ECC or its Licensor in the execution of any
appropriate and necessary documents in connection with the registration of any
Trademark. Upon termination of this Agreement, Sublicensee shall cease and
desist from use of the Trademarks in any way, including any word or phrase that
is similar to or likely to be confused with such marks. However, in the event
of termination, Sublicensee shall have the right to sell at market price
existing stock and inventory of manufactured Products for a period of one
hundred and eighty days and thereafter shall deliver to ECC or its duly
authorized representative all materials upon which the Trademarks appear.
(e) All Products produced pursuant to this Agreement bearing any
Trademark shall be produced in compliance with the specifications and procedures
set forth in the ECC Quality Standards Manual. Sublicensee shall permit ECC to
conduct periodic inspections/audits to ensure compliance with the ECC Quality
Standards Manual.
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(f) Should any Product bearing any Trademark that is manufactured,
sold or otherwise commercialized by Sublicensee contain any material defect in
its appearance or function, Sublicensee shall cease any further manufacture,
sale or other commercialization of such Product containing such material defect.
Unless Sublicensee corrects such defect within a reasonable time following its
discovery by or disclosure to Sublicensee, Sublicensee shall be in breach of a
material obligation of this Agreement.
21. SPECIAL TAX PROVISIONS. Sublicensee or its agents shall be solely
responsible for the payment and discharge of any taxes, duties, or withholdings
relating to any transaction of Sublicensee or its agents in connection with the
manufacture, use, sale or commercialization of the Technology or the Products;
except that ECC shall be responsible for taxes, duties or withholding relating
to the payment to ECC of any Royalty payment under this Agreement and
Sublicensee shall be permitted to perform any withholding with respect to such
payments and fees required by law or regulation.
22. TECHNOLOGY TRANSFER.
(a) Sublicensee acknowledges and agrees that ECC has delivered and
made to Sublicensee a disclosure of a general introduction to the Technology and
to its commercial feasibility prior to the execution of this Agreement. Except
to the extent such information falls within one or more of the exceptions to the
definition of "Confidential Information", all information disclosed by ECC to
Sublicensee prior to the execution of this Agreement shall be deemed to
constitute part of the Technology and shall be deemed to be confidential. The
timing and extent of additional disclosure by ECC to Sublicensee shall be as set
forth in subparagraph 22(b) hereof.
(b) Upon execution of this Agreement, ECC shall provide Sublicensee
with copies of the patents listed in Section B of Exhibit "B" hereto. Beyond
that, ECC shall not be
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required to provide additional information concerning, or disclosure of the
Technology to Sublicensee until Sublicensee provides to ECC (i) written notice
of Sublicensee's intent to commercialize a Product, which written notice shall
include detailed specifications for the designated Product, and (ii) evidence,
reasonably satisfactory to ECC, of Sublicensee's intent to commercialize the
designated Product in the form of written documentation of orders placed by
Sublicensee of the equipment needed by Sublicensee to produce and commercialize
the designated Product or in the form of written documentation from Sublicensee
confirming the dedication and/or modification of existing equipment necessary to
produce the designated Product. Within ninety (90) days after ECC's receipt of
the items described in the preceding sentence, ECC shall provide to Sublicensee
the following additional disclosure: (w) a Product specific recipe for the
production of the designated Product; (x) Product specific process
specifications for the production of the designated Product; (y) copies of all
patent applications listed in the Exhibits hereto that ECC deems relevant to the
production of the designated Product; and (z) a list of known raw materials
suppliers and preferred equipment vendors.
23. MCDONALD'S CORPORATION. Because of work jointly undertaken by ECC
and McDonald's Corporation ("McDonald's") (as used herein the term
"McDonald's" shall include franchisees thereof) with regards to studies of
market potential and food package design, it has been agreed that McDonald's
is to have a "lead time" or "priority" with regard to the distribution of the
Products that are ordered by it and covered by this Agreement. In compliance
with this arrangement, for a period of two (2) years from the effective date
of this Agreement, Sublicensee shall not fill orders from, or deliver
Products to, on a regional basis, any entity in the food service and
restaurant industry other than McDonald's until such time as all Products
ordered by McDonald's in a specific region have been manufactured, shipped or
otherwise set aside for delivery to McDonald's by the
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Sublicensee. A region shall be that geographic area which is serviced by a
specific "distribution center" that supplies products solely or primarily to
McDonald's in that geographic area.
24. DOMESTIC SUBLICENSES. In the event ECC grants any domestic (within
the United States of America) sublicense of the Technology to any third party
containing terms that are more favorable than those granted to Sublicensee under
this Agreement, ECC shall notify Sublicensee of such more favorable terms and,
upon written request by Sublicensee, this Agreement shall be amended to
incorporate such more favorable terms; provided, however, that this paragraph 24
shall not apply with respect to exclusivity provisions or the grant of rights to
specific Products contained in any other sublicense of the Technology by ECC.
25. EQUITABLE RELIEF. A breach or default by Sublicensee of the
provisions of paragraph 5 and/or paragraph 16 hereof shall cause ECC to suffer
irreparable harm and, in such event, ECC shall be entitled, as a matter of
right, to a restraining order and other injunctive relief from any court of
competent jurisdiction, restraining any further violation thereof by
Sublicensee, its officers, agents, servants, employees, and those persons in
active concert or participation with them. The right to a restraining order or
other injunctive relief shall be supplemental to any other right or remedy ECC
may have, including, without limitation, the recovery of additional damages for
the breach or default of any of the terms of this Agreement.
26. RELATIONSHIP OF THE PARTIES. This Agreement shall not create any
partnership, joint venture or similar relationship between the parties hereto
(or ECC's Affiliates) and no representation to the contrary shall be made by
either party. Neither party shall have any authority to act for or on behalf of
or to bind the other party in any fashion, and no representations to the
contrary shall be made by either party.
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27. NOTICES. Any notice which is required or permitted to be given to
ECC or Sublicensee pursuant to this Agreement shall be deemed to have been given
only if such notice is reduced to writing and delivered personally, or by United
States mail with postage prepaid and return receipt requested, or by telecopier
(FAX) transmission, confirmed by letter by United States mail with postage
prepaid and return receipt requested, or by reputable overnight courier
(pursuant to instructions requiring next-day delivery) to the person in question
as set forth below:
ECC: EarthShell Container Corporation
800 Miramonte Drive
Santa Barbara, California 93109-1419
Attention: President
Fax: (805) 897-2298
with copy to:
EarthShell Container Corporation
800 Miramonte Drive
Santa Barbara, California 93109-1419
Attention: Chief Legal Officer
Fax: (805) 897-2298
Sublicensee: Sweetheart Cup Company Inc.
7575 South Kostner Avenue
Chicago, Illinois 60652
Attention: Daniel M. Carson
Fax: (312) 767-9454
ECC or Sublicensee may change its address by giving notice of such change in the
manner set forth herein. If delivered personally, a notice shall be deemed
delivered when actually received at the address specified herein. Any notice
given by mail shall be deemed delivered three (3) days following the date upon
which it is deposited in the mail, with postage prepaid and return receipt
requested. Any notice given by FAX shall be deemed delivered on the date it is
actually transmitted to the person in question at the FAX number specified
above. Any notice given by overnight courier
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shall be deemed delivered on the next business day following the date it is
placed in the possession of such courier.
28. ENTIRE AGREEMENT. This Agreement supersedes all prior understandings
or agreements, whether written or oral, and any contemporaneous oral agreements,
between the parties hereto in regard to the subject matter hereof and contains
the entire agreement between the parties in regard to the subject matter hereof,
and the parties hereby mutually acknowledge and agree that that certain
Sublicense Agreement by and between ECC and Sublicensee, dated June 3, 1993, is
hereby terminated. This Agreement may not be changed or modified orally, but
only by an agreement, in writing, signed by both the parties hereto.
29. SAVINGS CLAUSE. Should any part or provision of this Agreement be
rendered or declared invalid by reason of any law or by decree of a court of
competent jurisdiction, the invalidation of such part or provision of this
Agreement shall not invalidate the remaining parts or provisions hereof, and the
remaining parts and provisions of this Agreement shall remain in full force and
effect.
30. WAIVER. Neither the failure or delay on the part of either party to
exercise any right, power or privilege hereunder shall operate as a waiver
thereof, nor shall any single or partial exercise of any such right or privilege
preclude any other or further exercise thereof or of any other right or
privilege.
31. GOVERNING LAW. This Agreement shall be governed by and construed in
accordance with the laws of the State of California, without giving effect to
the choice of law rules thereof.
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32. RESOLUTION OF DISPUTES.
(a) In the event of a breach of this Agreement, or a dispute as to
the meaning of this Agreement, or any of its terms which the parties cannot
resolve by themselves amicably, the parties agree to submit such dispute to
resolution in the manner hereinafter described. First, the parties shall
endeavor to resolve the dispute through the use of an acceptable alternative
dispute resolution procedure. If, within 30 days after one party notifies the
other in writing of the existence of a dispute which it desires to be resolved
under this paragraph, the parties have not agreed upon an acceptable alternative
dispute resolution procedure, then the matter shall be resolved by arbitration
as set forth below and according to the rules of the American Arbitration
Association, except as herein modified by the parties. Unless otherwise agreed
to in writing, all alternative dispute resolutions or arbitration hearings will
be held in Los Angeles, California.
(b) The parties shall cooperate and use their respective best efforts
to encourage compliance with the following time periods: (i) within 10 days
after the failure to agree to an acceptable alternative dispute resolution
procedure, each party will select an arbitrator, and notify the other party of
its selection; (ii) within 15 days after such notice, the respective arbitrators
will select a third arbitrator as Chairman of the panel; (iii) a hearing by the
arbitration panel shall be held within 30 days after the selection of the
Chairman; and (iv) a majority decision and resolution shall be reached within
30 days of such hearing. Decisions of the panel must be in writing and will be
final and binding on the parties, and judgment may be entered thereon by any
court having jurisdiction of the parties.
(c) Each party shall bear its own costs of presenting its case in an
alternative dispute resolution procedure, or arbitration, as the case may be.
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(d) The validity, construction and performance of this Agreement
shall be governed by and interpreted in accordance with the laws of the State of
California (as if all aspects of the Agreement were to be performed in
California).
33. FORCE MAJEURE. The failure of either party to perform its obligations
under this Agreement (except the obligation to make payments) shall not subject
such party to any liability to the other or subject this Agreement to
termination if such failure is caused by acts such as, but not limited to, acts
of God, earthquake, explosion, flood, drought, war, riot, sabotage, embargo,
compliance with any order or regulation of any governmental entity acting with
color of right, intervention or delays created by any regulatory authority, or
by any other similar cause beyond the reasonable control of the parties. The
party so affected shall promptly notify the other party of the event of force
majeure, and shall use all reasonable efforts to remove such event as soon as
reasonably practicable.
34. COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
35. TERMINOLOGY. As used in this Agreement, the singular shall include the
plural and the plural shall include the singular. Titles of sections and
paragraphs in this Agreement are for convergence only, and neither limit nor
amplify the provisions of the Agreement, and all references in this Agreement to
a section or paragraph shall refer to the corresponding section or paragraph of
this Agreement unless specific reference is made to the sections of another
document or instrument.
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IN WITNESS WHEREOF, the parties have caused this Sublicense Agreement to be
executed and delivered by their duly authorized representatives upon the date
first herein written.
ECC: SUBLICENSEE:
EarthShell Container Corporation Sweetheart Cup Company Inc.
By: /s/ Simon K. Hodson By: /s/ Daniel M. Carson
---------------------------- ----------------------------
Simon K. Hodson Daniel M. Carson
Its: Chief Executive Officer Its: Vice President, General Counsel
and Secretary
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EXHIBIT "A"
CORE TECHNOLOGY
A. ISSUED UNITED STATES LETTERS PATENTS
1. U.S. Letters Patent No. 4,225,247, issued September 30, 1980, and entitled
"Mixing and Agitating Device."
2. U.S. Patent No. 4,552,463, issued November 12, 1985, and entitled
"Methods and Apparatus for Producing a Colloidal Mixture."
3. U.S. Letters Patent No. 4,944,595, issued July 31, 1990, and entitled
"Apparatus for Producing Cement Building Material."
4. U.S. Letters Patent No. 5,061,319, issued October 29, 1991, and entitled
"The Process for Producing Cement Building Material."
5. U.S. Letters Patent No. 5,232,496, issued August, 1993, and entitled
"Process for Producing Improved Building Material and Product Thereof."
B. PENDING UNITED STATES PATENT APPLICATIONS
6. U.S. Patent Application entitled "Hydraulically Bonded Cement Compositions
and Their Methods of Manufacture and Use."
7. U.S. Patent Application entitled "Food and Beverage Containers Made from
Inorganic Aggregates and Polysaccharide, Protein, or Synthetic Organic
Binders, and the Methods of Manufacturing Such Containers."
8. U.S. Patent Application entitled "Cementitious Materials for Use in
Packaging Containers and their Methods of Manufacture."
9. U.S. Patent Application entitled "Cementitious Materials for Use in
Cushioning, Spacing, Partitioning, Portioning or Wrapping Objects and the
Methods of Manufacturing Such Materials."
10. U.S. Patent Application entitled "Methods of Manufacture and Use for Low
Density Hydraulically Bonded Cement Compositions."
11. U.S. Patent Application entitled "Design Optimized Compositions and
Processed for Microstructurally Engineering Cementitious Mixtures."
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12. U.S. Patent Application entitled "Highly Insulative Cementitious Matrices
and Methods for Their Manufacture."
13. U.S. Patent Application entitled "Hydraulically Settable Containers and
Other Articles for Storing, Dispensing, and Packaging Food and Beverages
and Methods for their Manufacture."
14. U.S. Patent Application entitled "Methods and Systems for Manufacturing
Containers and Other Articles of Manufacture from Hydraulically Settable
Mixtures."
15. U.S. Patent Application entitled "Articles of Manufacture Molded from
Inorganically Filled Compositions."
16. U.S. Patent Application entitled "Methods of Molding Articles from
Inorganically Filled Compositions."
C. ISSUED FOREIGN PATENTS.
17. Canadian Patent No. 1,207,212, issued July 8, 1986, and entitled "Method
and Apparatus for Producing a Colloidal Mixture."
18. Canadian Patent No. 1,298,282, issued March 31, 1992, and entitled
"Apparatus for Producing Cement Building Material."
19. Canadian Patent No. 1,298,830, issued April 14, 1992, and entitled
"Process for Producing Cement Building Material."
20. Canadian Patent No. 1,321,609, issued August 24, 1993, and entitled
"Cement Building Material."
D. PENDING FOREIGN PATENT APPLICATIONS
21. Canadian Patent Application entitled "Process for Producing Improved
Building Material and Product Thereof."
22. Canadian Patent Application entitled "Hydraulically Bonded Cement
Compositions and Their Methods of Manufacture and Use."
23. PCT Patent Application entitled "Hydraulically Settable Containers and
Other Articles for Storing, Dispensing and Packaging Food and Beverages
and Methods for their Manufacture."
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EXHIBIT "B"
MOLDABLE COMPOUND TECHNOLOGY
A. ISSUED UNITED STATES LETTERS PATENTS
B. PENDING UNITED STATES PATENT APPLICATIONS
1. U.S. Patent Application entitled "Inorganically Filled, Starch-Bound
Compositions for Manufacturing Containers and Other Articles Having a
Thermodynamically Controlled Cellular Matrix."
2. U.S. Patent Application entitled "Methods and Systems for Manufacturing
Containers and Other Articles Having a Thermodynamically Controlled
Cellular Matrix From Inorganically Filled, Starch-Bound Compositions."
C. ISSUED FOREIGN PATENTS
D. PENDING FOREIGN PATENT APPLICATIONS
3. PCT Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
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EXHIBIT "C"
PRODUCTS
As used in the appended Agreement, the term "Products" shall mean the
following:
1. Cold cups - 4 oz. to 32 oz.;
2. Hot cups - 4 oz. to 32 oz.; and
3. Sandwich containers.
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EXHIBIT "D"
TRADE SECRETS
The term "Trade Secrets" as used in the Agreement shall include any
technical or business information, any invention, equipment or apparatus, method
or process, technology, know-how, trade secret, drawing, data, evaluation,
specifications, quality and inspection standards, sales literature, report,
business plan, memorandum, market study, customer lists, training materials,
computer program or software (including both source and object code), or any
other document or thing which is in whole or in part confidential, proprietary,
or secret and which is owned or controlled by, licensed or assigned to ECC or
for which ECC has the right to grant licenses thereon during the term of this
Agreement and which relates in whole or in part to any of the following:
1. The compositions, including the variable and preferred parameters for each
component, used in the Products or the Technology based on inorganically
filled cellular composites.
2. The processing steps, including the variable and preferred parameters for
each step, used in the Technology.
3. The equipment and apparatus used in the manufacture of Products.
4. Quality control, testing and research and development data, reports and
information, including patent applications in preparation.
5. Customers and suppliers of the components and equipment of the Technology,
including any agreements.
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EXHIBIT "E"
SUBLICENSEE PATENT, TRADE SECRET AND PROPRIETARY INFORMATION
RELATING TO THE PRODUCTS AND/OR THE TECHNOLOGY
Licensee shall have up to sixty (60) days after the receipt of the patent
applications listed in Section B of Exhibit "B" hereto to evaluate such patent
applications, to assemble its description of Sublicensee Patent, Trade Secret
and Proprietary Information Relating to the Products and/or the Technology, and
to amend this Exhibit "E" to incorporate such description.
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EXHIBIT "F"
TERRITORY
As used in the appended Agreement, the term "Territory" shall mean the
United States of America, including any territories and possessions of the
United States of America, and Canada.
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[EARTH SHELL CONTAINER CORPORATION LETTERHEAD]
SWEETHEART CUP COMPANY, INC.
Attention: Daniel M. Carson
7575 South Kostner Avenue
Chicago, Illinois 60652
Dear Mr. Carson:
Reference is made to that certain Sweetheart-ECC Sublicense Agreement,
dated October 7, 1994, by and between EarthShell Container Corporation and
Sweetheart Cup Company, Inc., (the "Agreement"). This letter, when accepted by
you in the manner described below, shall constitute an amendment, amending the
Agreement as follows:
1. Section 17(d) is hereby amended to add the following additional
sentence: "ECC hereby waives its right of termination under this subparagraph
17(d) with respect to the calendar year 1995."
2. Exhibit "C" to the Agreement is hereby amended in its entirety to read
as follows: "As used in the appended Agreement, the term 'Products' shall mean
the following: (1) cold cups of all sizes; (2) hot cups of all sizes; and (3)
sandwich containers."
3. Except as otherwise specifically provided in paragraphs 1 and 2
hereof, all other terms and conditions of the Agreement shall remain unchanged
and in full force and effect.
* * *
If the foregoing amendments are acceptable to you, please indicate your
acceptance thereof by dating and signing the enclosed copy of this letter in the
spaces provided below and returning it to us.
SIGNED this the 20th day of July, 1995.
EARTHSHELL CONTAINER CORPORATION
By: /s/ Simon K. Hodson
--------------------------------------
Simon K. Hodson Chief Executive Office
AGREED TO AND ACCEPTED
on July 20, 1995.
SWEETHEART CUP COMPANY, INC.
By: /s/ Daniel M. Carson
-------------------------------
Daniel M. Carson, Vice President
General Counsel and Secretary