EXHIBIT 10.5
FORM OF
LIMITED LICENSE AGREEMENT
(BORROWER)
THIS LIMITED LICENSE AGREEMENT (this "Agreement"), dated as of November
__, 2004, is executed by ________________________, a ____________________
corporation, having an office at ____________________________________________
("Licensor") in favor of KEYBANK NATIONAL ASSOCIATION, a national banking
association, having an office at 000 Xxxxxx Xxxxxx, Xxxxxxxxx, Xxxx 00000, as
Administrative Agent (as defined below).
WHEREAS, Licensor is the owner of certain intellectual property which may
be comprised of inventions, designs, patents, and applications therefor,
trademarks, service marks, trade names, and the goodwill symbolized by said
trademarks, service marks and trade names, and registrations and applications
therefor, copyrights and registrations therefor, and licenses (collectively, the
"Intellectual Property"), and includes, without limitation, the intellectual
property described on Schedule 1 attached hereto ("Licensed Intellectual
Property");
WHEREAS, Licensor has entered into that certain Credit and Security
Agreement dated as of November __, 2004 (as from time to time amended, modified
or supplemented, the "Credit Agreement"), among the Licensor, certain other
borrowers which are parties thereto (collectively the "Borrowers"), certain
lending institutions which are signatories thereto (the "Lenders"), and KeyBank
National Association, as administrative agent for the benefit of the Lenders
(the "Administrative Agent") and the letter of credit issuer (the "LC Issuer"),
pursuant to which, upon the satisfaction by the Borrowers of certain terms and
conditions contained therein, the Administrative Agent, the Lenders and the LC
Issuer (collectively the "Secured Parties") will make certain advances and other
financial accommodations available to the Borrowers, which loans and advances
are secured in whole or in part by the Credit Agreement, which includes the
grant of a security interest in the Collateral;
WHEREAS, the occurrence of an Event of Default by Borrowers may
necessitate the use of the Licensed Intellectual Property by the Administrative
Agent in order for the Administrative Agent to exercise its remedies with
respect to the Collateral;
WHEREAS, as a condition to the Secured Parties extending credit pursuant
to the Credit Agreement and making any loans or advances to the Borrowers, the
Secured Parties require the execution and delivery of this Agreement by
Licensor;
NOW, THEREFORE, to induce the Secured Parties to make the loans or
advances provided for in the Credit Agreement and for other good and valuable
consideration, the receipt and adequacy of which are hereby acknowledged,
Licensor agrees with the Administrative Agent, for the benefit of the Secured
Parties, as follows:
1. Licensor hereby grants to the Administrative Agent, for the benefit of
the Secured Parties, or its agents, representatives or assigns, a fully paid,
royalty-free, worldwide right and license to, upon the occurrence and during the
continuance of an Event of Default under the Credit Agreement, (a) use and/or
sell or otherwise transfer any and all of Licensor's Inventory which may bear or
utilize any of the Intellectual Property; (b) use and/or sell any such
work-in-process, raw materials or completed or finished products; and (c) accept
any and all orders or shipments of products ordered by Licensor from
manufacturers and use and/or sell any such products bearing or utilizing any of
the Intellectual Property.
2. To secure performance of this Agreement, Licensor hereby grants to the
Administrative Agent, for the benefit of the Secured Parties, a security
interest, effective immediately, in all of Licensor's right, title, and
interest, wherever located or arising, in and to all of its now owned or
existing and filed and hereafter acquired or arising and filed Intellectual
Property.
3. To the extent applicable to its business, Licensor will furnish to the
Administrative Agent or its assigns in writing Licensor's uniform worldwide
standards of quality for each product (whether manufactured or sold by Licensor,
the Administrative Agent or any other Person) bearing or utilizing any of the
Intellectual Property. Upon the occurrence of an Event of Default under the
Credit Agreement (unless waived by the Administrative Agent in writing) and upon
the exercise by the Administrative Agent or its agents, representatives or
assigns of the Administrative Agent's rights under Section 1 hereof, the
Administrative Agent or its agents, representatives or assigns shall use
reasonable efforts to meet standards of quality so established as applicable. It
is agreed that under any of the standards of quality so established by Licensor,
products to be sold by the Administrative Agent bearing or utilizing any of the
Intellectual Property that is similar in nature and quality to corresponding
products marketed and sold by Licensor prior to the time this Agreement becomes
effective shall be deemed to satisfy any such standards of quality so
established. Notwithstanding the foregoing provisions of this Section 3,
Licensor acknowledges that the Administrative Agent and its agents,
representatives and assigns shall have no liability of any kind whatsoever with
respect to the quality of products bearing or utilizing any of the Intellectual
Property.
4. Licensor hereby represents and warrants that (a) it has good title to
the Intellectual Property, free and clear of all Liens, except for Liens created
under, or permitted by, the Loan Documents, and (b) it has the legal and
corporate right, power and authority to license the Intellectual Property and to
enter into this Agreement.
5. Provided that the Administrative Agent shall act in a commercially
reasonable manner in accordance with industry standard and otherwise in
accordance with applicable agreements and applicable law and upon the exercise
of the rights of the Administrative Agent under Section 1 hereof by the
Administrative Agent or its agents, representatives or assignors upon the
occurrence of an Event of Default under the Credit Agreement, Licensor hereby
further agrees and covenants to refrain from filing suit or taking other legal
action in the event the Administrative Agent or its agents, representatives or
assigns: (a) uses and/or sells or otherwise transfers any and all of Licensor's
Inventory which may bear or utilize any of the Intellectual Property; (b) uses
and/or sells any such work-in-process, raw
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materials or completed or finished products; and (c) accepts any and all orders
or shipments of products ordered by Licensor from manufacturers and uses and/or
sells any such products bearing or utilizing any of the Intellectual Property.
6. Licensor acknowledges and agrees that notwithstanding anything herein
to the contrary, the Administrative Agent does not assume, and shall have no
liability or responsibility for, the payment of any sums due or to become due
pursuant to this Agreement or the performance of any obligations to be performed
by Licensor unless otherwise provided.
7. The provisions hereof shall be irrevocable and shall remain in full
force and effect until payment in full of all of the Obligations (other than
indemnities not then due and payable). Licensor hereby agrees that it shall not
modify, alter or amend the Schedule 1 hereto in any material respect without the
prior written consent of the Administrative Agent, such consent not to be
unreasonably withheld or delayed.
8. Licensor represents to the best of its knowledge to the Administrative
Agent that the exercise by the Administrative Agent or its agents,
representatives or assigns of its rights as authorized hereunder will not be an
infringement of the rights of any third party.
9. This acknowledgment and consent shall be binding upon and inure to the
benefit of the parties hereto and their respective successors, assigns, debtors
in possession, trustees in bankruptcy or other legal representatives.
10. Licensor hereby agrees that it shall notify the Administrative Agent
of any changes in or amendments to this Agreement or any material change to the
Licensed Intellectual Property.
11. The parties hereto agree that the exercise of any rights granted
pursuant to this Agreement shall not be deemed a waiver of any rights otherwise
available in law or equity.
12. All notices hereunder shall be sent to the address set forth below the
signature of the parties hereto and shall be deemed to be received upon receipt.
13. This Agreement shall be governed by the laws of the State of Ohio and
shall be binding upon the successors and assigns of the parties hereto. In the
event that any section of this Agreement shall be deemed to be unenforceable,
each other section shall remain enforceable in accordance with its terms. This
Agreement may only be modified in a writing signed by all parties hereto. This
Agreement may be executed in counterparts with each separate counterpart, when
taken with the other counterparts, representing one and the same agreement.
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IN WITNESS WHEREOF, the undersigned has duly executed this Limited License
Agreement as of the day and year first above written.
_______________________ ("LICENSOR")
____________________________________
By:_________________________________
Its:________________________________
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STATE OF _______________ )
) SS:
COUNTY OF ______________ )
On this ____ day of _________, _____, before me personally came
_________________________________, to me known, who, being duly sworn, did
depose and state that [s]he is the ____________________ of
_________________________, the company described in and which executed the above
instrument; and that [s]he signed his/her name thereto under authorization of
the Board of Directors of said corporation.
[SEAL] _________________________________
Notary Public My
Commission expires:
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SCHEDULE 1
TO
LIMITED LICENSE AGREEMENT
TRADEMARKS/SERVICE MARKS
Service Xxxx Reg. No. Reg. Date Owner
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PATENTS AND PATENT APPLICATIONS
Title Patent No. Date of Patent Owner
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