LICENSE AGREEMENT
This AGREEMENT made and entered into this 4th day of October, 2000, by
and between XXXX MOTION CONTROLS, INC., a company organized and existing under
the laws of the State of North Carolina, having a principal office and place of
business at 000 Xxxxxxxx Xxxx, Xxxxxxxxx, Xxxxx Xxxxxxxx, XXX, 00000
(hereinafter referred to as "LICENSOR") and SRA, srl, or another company of the
Lonati Group, a corporation organized and existing under the laws of Italy,
having a principal office and place of business at Xxx Xxxxx Xxxxx 0/X, 00000
Xxxxx a Settimo, Firenze, Italy (hereinafter referred to as "LICENSEE").
WITNESSETH:
WHEREAS, LICENSOR is the owner of all right, title and interest in and
to all patents and patent applications listed on Exhibit "A", and other valuable
trademarks, drawings and intellectual property for the manufacture of TMC
branded packaging equipment.
NOW, THEREFORE, in consideration of the foregoing premises and the
following mutual covenants and agreements, the LICENSOR and LICENSEE hereby
agree as follows:
1. Definitions. As used herein, the following terms shall have the
following meanings:
"LICENSED PATENTS" shall mean the aforesaid United States patent
application, the aforesaid European patent application, any and all United
States and European patent issuing thereon, and any and all continuations,
divisions, reissues, reexaminations, and renewals of any thereof, and all patent
applications, patents issuing thereon, and continuations, divisions, reissues
and renewals thereof relating to IMPROVEMENTS. A patent application, upon
abandonment
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thereof, and a patent, upon expitation or earlier cancellation, shall no longer
be considered LICENSED PATENTS.
"LICENSED APPARATUS" shall mean any sock boarding or packaging
apparatus coming within the scope of one or more of the claims of any of the
LICENSED PATENTS.
"LICENSED TERRITORY" shall mean the entire world.
"IMPROVEMENTS" shall mean any sock boarding apparatus and any accessory
or component for a sock boarding apparatus based upon or derived from the
LICENSED PATENTS or the LICENSED APPARATUS.
2. GRANT OF LICENSE. The LICENSOR hereby grants to the LICENSEE the
exclusive right and license under the LICENSED PATENTS to manufacture, have
manufactured, distribute, use and sell the LICENSED APPARATUS in the LICENSED
TERRITORY.
3. LICENSEE'S RESPONSIBILITIES.
(a) LICENSEE shall use its best good faith and commercially reasonable
efforts to begin manufacture, distribution and sale of the LICENSED APPARATUS as
soon as possible, but in any event at least begin shipment of orders it receives
for TMC equipment within six (6) months of receipt of any order.
(b) Within sixty (60) days of the effective date of this Agreement,
LICENSOR shall make available to LICENSEE all drawings and patents for each
model that TMC produced of its boarding and packaging equipment. The LICENSOR
additionally agrees to provide all technical assistance and consultation
reasonably necessary to cooperate with and assist the LICENSEE in preparation
for manufacture, distribution and sale of the LICENSED APPARATUS on a commercial
scale. Such technical assistance and consultation shall be provided to the
LICENSEE without additional payment or other compensation to the LICENSOR.
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(c) LICENSOR and / or its related parent company, Xxxxxxxx Industries,
Inc., and / or any other related companies which the LICENSOR controls shall
retain the following rights:
(1) The right to manufacture non-metric TMC packaging
equipment for a period of up to six (6) months in order to complete its
inventory which is now in progress.
(2) LICENSOR will market and distribute metric equipment
relating to TMC on an exclusive basis in the United States, Canada and
Mexico for a four-(4) year period commencing January 1, 2001.
4. LICENSE FEES AND OTHER CONSIDERATIONS. In consideration of the
rights herein granted, the LICENSEE shall pay royalties to the LICENSOR as
follows:
(a) Five Hundred Thousand U.S. Dollars (U.S. $500,000.00) per year
payable quarterly commencing January 1, 2001. LICENSEE shall pay quarterly in
U.S. funds on or before each January 15th, April 15th, July 15th, and October
15th during the entire term of this Agreement.
(b) In addition, LICENSOR has the exclusive rights for a minimum of
three (3) years commencing June 13, 2000, to distribute in the United States and
Canada all SRA packaging equipment, as well as Xxxxx Pick and Place and related
seaming equipment for men's socks.
5. TERM. The term of this Agreement is four (4) years commencing from
January 1, 2001.
6. PATENT MARKING. The LICENSEE shall fix a permanent and legible
marking on each LICENSED APPARATUS in a suitable form as approved or directed by
the LICENSOR consistent with the applicable laws of the United States and
Europe.
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7. IMPROVEMENTS. All right, title and interest in and to IMPROVEMENTS,
whether invented or developed by LICENSOR or LICENSEE or jointly, shall be owned
by the LICENSEE.
8. INFRINGEMENTS:
(a) In the event of any infringement of the LICENSED PATENT, LICENSOR
and LICENSEE shall use their best good faith efforts to agree as to appropriate
action, if any, to take to stop the infringement. The LICENSEE shall have the
first right at its sole expense to take any action to stop the infringement, and
any compensation or recovery obtained from the infringer shall be applied first
to reimburse LICENSEE its expenses, including attorney fees, incurred in the
action, and any remainder of the compensation or recovery shall be shared
equally by LICENSOR and LICENSEE. In the event the LICENSEE institutes
infringement litigation against the infringer, the LICENSOR shall join as a
party plaintiff when requested to do so by the LICENSEE and the LICENSEE shall
pay all LICENSOR'S reasonable expenses in association with the litigation. The
LICENSEE shall have the right to settle any infringement on terms within the
LICENSEE'S sole discretion, provided that the LICENSEE shall not compromised the
validity of any of the claims of any of the LICENSED PATENTS, and except that no
license under the LICENSED PATENTS may be granted to an infringer without the
express written consent of the LICENSOR. The LICENSOR agrees to provide all
reasonable assistance to the LICENSEE in any such action taken against an
infringer.
(b) In the event LICENSEE elects to take no action against an
infringement under paragraph (a) above, or has taken no action within six (6)
months of the discovery of the infringement, the LICENSOR shall have the right
at its sole expense to take any action against the infringement the LICENSOR
deems necessary or appropriate and any compensation or
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recovery received from the infringer shall be applied first to reimburse the
LICENSOR its expenses, including attorney fees, incurred in the action, and any
remainder of the compensation or recovery shall be shared equally by LICENSOR
and LICENSEE. The LICENSOR shall have the right to settle any infringement on
terms within the LICENSOR'S sole discretion, including granting to the infringer
a license under the LICENSED PATENTS. The LICENSEE agrees to provide all
reasonable assistance to the LICENSOR in any such action against an infringer.
9. TERMINATION. Upon any material breach or default by either party in
the performance of the terms of this Agreement, the other party shall be
entitled to terminate this Agreement upon sixty (60) days' notice to the
defaulting party, specifying the nature of the breach or default. Termination
shall become effective at the end of the notice period unless the defaulting
party satisfactorily cures the breach or default during the notice period.
10. IMPOSSIBILITY OF PERFORMANCE. Each party shall be excused for any
delay or default in the performance of this Agreement caused by any act of God,
governmental restrictions, wars, strikes, or other work stoppages, fires,
floods, and any other event or condition beyond its control (example: market
crash).
11. NOTICES. All notices and communications required or permitted to be
sent under this Agreement shall be deemed made and delivered when transmitted in
writing by registered or certified mail, return receipt requested, addressed to
the receiving party at its address set forth above.
12. ENTIRE AGREEMENT. This writing constitutes the entire agreement
between the parties with respect to the subject matter hereof and no
modification or revisions hereof shall have any force or effect unless the same
are made in writing and executed by the party against who enforcement is sought.
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13. SEVERANCE. In the event any provision of this Agreement is declared
void or unenforceable, such provision shall be deemed severed from this
Agreement, which shall otherwise remain in full force and effect.
14. CONTROLLING LAW. This Agreement had been made and entered into in
the State of North Carolina and shall be interpreted and applied in accordance
with the laws of that State.
15. BINDING EFFECT. This Agreement shall be binding upon and inure to
the benefit of the parties hereto, and shall be binding upon and inure to the
benefit of the successors, legal representatives and assigns of the parties.
16. INSOLVENCY OR LIQUIDATION. If either part should voluntarily or
involuntarily file for protection or liquidation under applicable bankruptcy
laws, this contract shall be considered void and all obligations of both parties
shall cease.
IN WITNESS WHEREOF, the parties have hereunto executed this Agreement
as of the day and year first above written.
XXXX MOTION CONTROLS, INC. SRA, srl
By: /s/ Xxxxxx X. Xxxxxxxx By: /s/ Xxxxxxx Xxxxxx
------------------------- ------------------------------
Its: President Its: Managing Director
ATTEST: ATTEST:
/s/ Xxxx X. Xxxxxxx /s/ Xxxx Xxxxxxx
------------------------------ -----------------------------------
Asst. Secretary Secretary
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EXHIBIT A
Patents and Patent Applications
-------------------------------
United States Patent No. Date Filed Entitled
------------------------ ---------- --------
5,706,987 January 13, 1998 Hosiery Boarding Machine & Method
5,788,130 August 4, 1998 Sock Processing Apparatus & Method
5,996,320 December 7, 1999 Automated Bagging Apparatus & Method
6,042,674 March 28, 2000 Hosiery Banding Apparatus & Method
Patents Pending Date Filed Entitled
--------------- ---------- --------
PCT/U.S. Application
No. 98/23607
PCT of 09/065,133
(6,042,674) November 6, 1998 Hosiery Banding Apparatus & Method
Pakistan Application No. 136,557 December 11, 1998 Hosiery Banding Apparatus & Method
India Application (no number) February 9, 1999 Hosiery Banding Apparatus & Method
Taiwan Application No. 86,119,313 November 21, 1998 Hosiery Banding Apparatus & Method
U.S. Application No. 09/386,616 August 31, 1999 Hosiery Manipulation Devise & Method
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