EXHIBIT 10.11
AMENDED AND RESTATED
SUBLICENSE AGREEMENT
This Sublicense Agreement ("Agreement") is entered into effective as of October
1, 1999, between X10 Wireless Technology, Inc., a Delaware corporation
("Sublicensor"), and X-10 (USA) Inc., a New Jersey corporation ("Sublicensee").
RECITALS
A. X-10 Ltd., a Bermuda corporation ("Licensor") is the owner of certain
products, copyrights, trade names, logos, trademarks and service marks, which
are described in greater detail in Section 1 below;
B. Sublicensor is in the business of designing, developing, marketing,
selling and distributing broadband wireless- and powerline-based home and small
office networking products, which are described in greater detail in Section 1
below, and has entered into a license agreement (the "License Agreement") with
Licensor for the exclusive right to use such copyrights, trade names, logos,
trademarks and service marks, and to market, distribute and sell such products;
C. Sublicensee wishes to have a non-exclusive sublicense to market and
distribute certain of such products to resellers selling in the Western
Hemisphere; and
D. Sublicensor has the authority to sublicense such right to market,
distribute and sell products and is willing to grant such a sublicense on the
terms provided in this Agreement.
E. Sublicensor and Sublicensee have previously entered into that certain
Sublicense Agreement (the "Original Agreement") dated as of October 1, 1999,
pursuant to which Sublicensor sublicensed to Sublicensee certain intellectual
property rights and other rights related to powerline-based home and small
office networking products;
F. The Original Agreement did not fully set forth the entire
understanding between the parties with respect to intellectual property rights
and other rights transferred under the Original Agreement; and
G. The parties now wish to amend and restate the Original Agreement in
order to clarify and memorialize the correct understanding of the parties with
respect to the intellectual property rights and other rights transferred under
the Original Agreement and to further describe the obligations and practices of
the parties in connection therewith.
AGREEMENT
In consideration of the foregoing, the mutual covenants and conditions
contained in this Agreement and other good and valuable consideration, the
receipt of which is hereby acknowledged, the parties agree as follows:
1. Definitions. As used in this Agreement, the terms listed below, when
they appear with their initial letters capitalized, shall have the following
meanings, unless the context in which they occur requires otherwise:
a. "Affiliate" means any corporation or other person or entity which
directly or indirectly controls, or is directly or indirectly controlled by, or
is under common control of Sublicensor or Sublicensee, as the case may be.
b. "Net Sales" means the aggregate of all revenues received by
Sublicensee from the sale of Products, less actual trade discounts, allowances,
sales tax, freight charges and returns ("Costs"), to the extent such Costs are
included in such revenues.
c. "Products" means those products that are currently marketed, sold
or distributed by Sublicensee and are listed on Exhibit A as attached hereto as
may be amended from time to time by Sublicensor.
d. "Territory" means the Western Hemisphere, including the United
States, Canada, Mexico, Latin America and South America.
e. "X-10 Marks" means the copyrights, trade names, logos, trademarks
and service marks owned by Licensor which are, in part, the subject of the
License Agreement. The X-10 Marks, as they presently exist, include, without
limitation, the rights and marks described on Exhibit B attached hereto.
2. Grant of Sublicense to Products.
a. Existing Products. Sublicensor grants to Sublicensee (and
Sublicensee's wholly-owned subsidiary X10 Home Controls Inc.), during the Term
of this Agreement and subject to Sublicensee's compliance with its terms, a non-
exclusive, royalty-bearing, non-transferable, non-sublicensable (except as
provided herein) sublicense to market, sell and distribute the Products only
within the Territory and only to resellers other than resellers of customized,
bundled or privately-labeled products; provided, that all Products marketed,
distributed and sold under this license shall bear the X-10 Marks with
sufficient prominence that a reasonable end user would identify X-10 as the
source or origin of such Products.
b. New Products. Sublicensor reserves the right, at its sole
discretion, to add new products to the list of Products covered by this
Agreement; provided, that nothing in this Agreement shall be deemed to give
Sublicensee any rights in any new products unless and until Sublicensor elects,
at its sole discretion, to add new products to the list of Products covered by
this Agreement.
2.
c. Exclusivity. Sublicensee agrees that, during the Term of this
Agreement, Sublicensee shall not, and shall not allow any other person or
entity, including any Affiliate of Sublicensee (other than an Affiliate to the
extent that it is specifically allowed to do so under a separate written
agreement with Sublicensor), to (a) sell or distribute, either directly or
indirectly, any Products, other than as provided in the license granted in
Section 2.a above and, in that case, only so long as (i) the Products sold by
Sublicensee or its Affiliate bear the Licensor Marks and (ii) the Products are
sold only in the Territory and (iii) only to resellers, other than resellers of
customized, bundled or privately labeled products; or (b) license any of the
rights granted in Section 2.a above to any other person or entity. Sublicensee
further agrees that Sublicensee shall not in any other manner sell or distribute
any Products, or enter into direct or indirect competition with Sublicensor
regarding the sale or distribution of Products, except in accordance with the
scope of the license granted hereunder.
3. Grant of Sublicense to X-10 Marks.
a. Trademark License. Sublicensor grants to Sublicensee (and
Sublicensee's wholly-owned subsidiary, X10 Home Controls Inc.), during the Term
of this Agreement and subject to Sublicensee's compliance with its terms, a non-
exclusive, royalty-free, non-transferable, non-sublicensable (except as provided
herein) sublicense to reproduce the X-10 Marks and incorporate the X-10 Marks
into the Products and the promotional materials used by Sublicensee, solely in
the Territory and solely in connection with the exercise of Sublicensee's rights
under Section 2; provided, that Sublicensee shall obtain Sublicensor's prior
written approval, which shall not be unreasonably withheld, before Sublicensee's
use of the X-10 Marks in any promotional materials.
b. Trademark License Restrictions. Sublicensee acknowledges the
distinctive, famous and well-known status of the X-10 Marks and the goodwill
existing therewith. Accordingly, Sublicensee shall not nor shall it permit any
third party to (i) adopt, use or attempt to register any trademarks, service
marks or trade names anywhere in the world that are confusingly similar to or
dilutive of the X-10 Marks; or (ii) create composite or combination marks with
the X-10 Marks or use the X-10 Marks with other products in a manner that might
confuse consumers as to the quality, source or origin of such other products.
4. License Fees.
a. Calculation of License Fees. As consideration for the sublicense
and other rights granted to Sublicensee under this Agreement, Sublicensee shall
pay a license fee to Sublicensor within thirty (30) days of the end of each
quarter during the Term in an amount equal to the greater of (i) the Minimum
License Fee set forth below, or (ii) fifteen percent (15%) of Sublicensee's Net
Sales of all Products during the preceding calendar quarter.
b. License Report. Sublicensee shall deliver to Sublicensor, at the
time each license fee payment is due, a statement indicating the total Net Sales
during the preceding calendar quarter, with a breakdown of revenues and
deductions.
c. Minimum License Fee. The Minimum License Fee for each quarter
shall be equal to $250,000 during the first year of the Term, $500,000 during
the second year of the
3.
Term and $750,000 during the third year of the Term. After the third year of the
Term, there shall be no Minimum License Fee.
d. Books and Records. Sublicensee shall keep complete, accurate and
precise books and records of all matters relating to its sale of the Products.
Sublicensor, or any internationally-recognized auditor of the Sublicensor acting
as agent for the Sublicensor, shall be given access to Sublicensee's books and
records relating to the sale of the Products for the purpose of confirming the
license fee calculations of Sublicensee. Such access shall be granted promptly
upon written request by Sublicensor and, in any event, within 30 days after such
written request. Should any such review reveal a shortfall, Sublicensee shall
pay to Sublicensor the amount of the shortfall plus interest at the rate of one
percent (1%) per month for the period between the date on which correct payment
should have been made and the date of payment of the shortfall, as well as
Sublicensor's reasonable costs of conducting the review. Sublicensor may
conduct such reviews no more than twice in any calendar year.
5. Confidentiality.
a. Confidential Information. "Confidential Information" shall
consist of all information and materials clearly identified in writing as
Confidential Information including, without limitation, formulas, methods, know
how, processes, designs and new Products.
b. Confidentiality Obligations. Each party agrees not to use or
disclose any Confidential Information of the other party, except as may be
necessary to employees of a party who have a specific need to know in order to
fulfill the terms of this Agreement and who agree, in writing, to hold all such
information in confidence. Further, each party agrees not to disclose any
Confidential Information of the other party to any third party, including
Affiliates of the disclosing Party, without the prior express written permission
of the owner of such Confidential Information. These restrictions shall not
apply to any information that is or becomes generally available to the public
through no fault of the party seeking to disclose the information, or any
information properly obtained from a completely independent source under no
obligation of confidentiality. The confidentiality provisions of this Section 5
shall not apply to prohibit disclosure of Confidential Information (i) as
required by applicable disclosure laws; or (ii) in connection with a court order
requiring disclosure, in which case the party under order must provide immediate
notice of such order to the other party and cooperate in any attempt to quash
such order.
6. Assignment and Sublicensing. Neither Sublicensor nor Sublicensee
shall assign this Agreement or any of the rights or obligations hereunder, or
grant any sublicense to any person or entity to market, distribute or sell
Products or use the X-10 Marks, without the prior written consent of the other,
which consent may not be unreasonably withheld.
7. Disclaimer of Warranties. Sublicensor warrants only that it is the
licensee under the License Agreement. EXCEPT FOR THE REPRESENTATIONS AND
WARRANTIES SET FORTH IN THIS AGREEMENT, SUBLICENSOR DISCLAIMS ALL OTHER
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION, ANY IMPLIED
WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE OR
NONINFRINGEMENT.
4.
8. LIMITATION OF LIABILITY. IN NO EVENT WILL SUBLICENSOR BE LIABLE FOR
ANY CONSEQUENTIAL, INDIRECT, EXEMPLARY, SPECIAL OR INCIDENTAL DAMAGES INCLUDING,
WITHOUT LIMITATION, ANY LOST PROFITS, ARISING FROM OR RELATING TO THIS
AGREEMENT. SUBLICENSOR'S TOTAL CUMULATIVE LIABILITY IN CONNECTION WITH THIS
AGREEMENT, THE PRODUCTS AND THE X-10 MARKS, WHETHER IN CONTRACT, TORT OR
OTHERWISE, WILL NOT EXCEED THE AMOUNT OF FEES ACTUALLY PAID TO SUBLICENSOR
HEREUNDER.
9. Indemnity.
a. Indemnification. Each party (the "Indemnifying Party") shall
defend, indemnify and hold the other party and its officers, directors, agents,
customers and sublicensees harmless from and against any loss, damage, injury,
liability, claims, causes of action or other expense, including reasonable
attorneys' fees involved in the defense of any such action, that the other party
may suffer, arising out of or resulting from any breach or alleged breach of
this Agreement or, in the case of Sublicensee, sale of any Products by
Sublicensee.
b. Indemnification Procedure. In the event the Indemnifying Party is
obligated to indemnify the other Party (the "Indemnified Party") under this
Agreement, the Indemnified Party will, as soon as is reasonably practicable, (i)
provide the Indemnifying Party with prompt written notice of any claim for which
indemnification is required, (ii) tender the defense of any such claim to the
Indemnifying Party, (iii) provide full cooperation for such defense at the
Indemnifying Party's expense, and (iv) not settle without the Indemnifying
Party's prior written approval, not to be unreasonably withheld.
[Notwithstanding the foregoing, failure to give prompt notice as required by
this Section 9.b. shall not preclude any claim for indemnification unless such
failure has the effect of prejudicing the rights of the Indemnifying Party with
respect to such claim.] The Indemnified Party may participate in any such
defense or settlement with counsel of its own choosing at its expense.
10. Term and Termination.
a. Term. The term of this Agreement (the "Term") shall commence on
the date hereof and continue in effect until December 31, 2004. Thereafter, the
Term shall be renewed automatically for subsequent five-year terms unless
terminated by either party by written notice at least ninety (90) days prior to
the expiration of the preceding term or as otherwise provided herein.
Notwithstanding anything to the contrary herein, the Term shall expire and this
Agreement shall terminate immediately upon the expiration or earlier termination
of the License Agreement.
b. Termination. This Agreement may be terminated by either party
upon breach of any material obligation or condition hereof by the other party,
effective thirty (30) days after giving written notice to the other of such
termination specifying such breach; provided, however, that if (i) such breach
is cured within such thirty (30) day period, (ii) the breaching party has taken
reasonable steps to cure the breach within such period and continues with due
diligence to completion, or (iii) the breach is shown not to exist, then the
notice shall be deemed withdrawn and of no effect. Notwithstanding the
foregoing, either party may terminate this Agreement immediately upon a breach
by the other party of the provisions of Section 5. The right
5.
to terminate hereunder is not exclusive and may be exercised in conjunction with
or in addition to any other right or remedy such party might have, at law or
equity.
c. Survival. Upon termination of this Agreement, for any reason,
the provisions of this Section and Sections 5, 7, 8, 9, 14 and 16 shall survive.
11. Notices. All notices or other communications hereunder shall be in
writing and shall be made by hand delivery, nationally-recognized overnight
courier, electronic mail or registered or certified mail, postage prepaid,
return receipt requested, addressed as follows:
X00.xxx, Inc.: X10 Wireless Technology, Inc.
00000 00xx Xxxxxx Xxxxx
Xxxxxxx, XX 00000-0000
Attn: CFO
e-mail: xxxx@x00.xxx
X-10 (USA) Inc.: X-10 (USA) Inc.
00 Xxxxxxx Xxxx
Xxxxxxx, XX 00000-0000
Attn: Xxxx Xxxxxxxx, Finance Director
e-mail: xxxxx00@xxx.xxx
or at such other address as shall be furnished by any of the parties by like
notice, and such notice or communication shall be deemed to have been given or
made as of the date so delivered, if delivered personally, one (1) day after
deposit with a nationally-recognized overnight courier, and three (3) calendar
days after so mailed, if sent by registered or certified mail.
12. Entire Agreement. This Agreement constitutes the entire agreement
between the parties, and supersedes all prior arrangements and negotiations
between the parties. This Agreement may be modified or amended only by mutual
written consent of the parties; provided, however, that after the effective date
of the Sublicensor's first firm commitment underwritten public offering of its
securities registered under the Securities Act of 1933, as amended, any such
modification or amendment shall be effective only if it is approved by a
majority of the directors serving on the Audit Committee of the Board of
Directors of Sublicensor.
13. Waiver. Failure by either party to enforce at any time any term or
condition under this Agreement shall not be a waiver of the right to act on the
failure of such term or condition and shall not impair or waive that party's
right thereafter to enforce each and every term and condition of this Agreement.
14. Governing Law. This Agreement will be governed by and construed in
accordance with the laws of the State of Washington as applied to transactions
taking place wholly within Washington between Washington residents. The parties
hereby expressly consent to the exclusive personal jurisdiction of and venue in
the state and federal courts located in King County, Washington for any lawsuit
filed there arising from or related to this Agreement. Notwithstanding the
foregoing, however, Sublicensor may bring an action for injunctive or equitable
relief in any jurisdiction it deems reasonably necessary to protect its
proprietary rights.
6.
This Agreement shall not be subject to or governed by the United Nations
Convention on Contracts for the International Sale of Goods, which is
specifically disclaimed by the parties.
15. Severability. If any portion of this Agreement shall be held invalid
or inoperative, then, so far as is reasonable and possible, the remainder of
this Agreement shall be considered valid and operative, and effect shall be
given to the intent manifested by the portion held invalid or inoperative.
16. Attorneys' Fees. The substantially prevailing party in any action
between the parties which is based on this Agreement or any document related
hereto shall have its reasonable attorneys' fees and other costs incurred in
such action or proceeding including any incurred for pre-suit, trial,
arbitration, post-judgment and appeal, paid by the other party.
17. Waiver of Conflicts. Each party to this Agreement acknowledges that
Xxxxxx Godward LLP ("Xxxxxx Godward"), outside general counsel to Sublicensor,
represents only Sublicensor with respect to the matters contained in this
Agreement and does not represent Sublicensee in connection herewith.
Sublicensee understands that and agrees that it should not rely upon the advice
of Xxxxxx Godward with respect to the matters contained herein, and that it has
had adequate opportunity to obtain the advice of independent legal counsel with
respect to the matters contained in this Agreement.
In Witness Whereof, the parties have executed this Amended and Restated
Sublicense Agreement as of the date set forth below.
X10 Wireless Technology, Inc., a X-10 (USA) Inc., a New Jersey
Delaware corporation corporation
By /s/ Xxxx Xxxxxxxx By /s/ Xxxx Xxxxxxxx
---------------------------------- ----------------------------------
Xxxx Xxxxxxxx, CFO Xxxx Xxxxxxxx, Finance Director
Dated: August 9, 2000 Dated: August 9, 2000
7.
Exhibit A
Products
Home Automation Controllers
Wireless Remote Control System RC5000 (includes RT504 and RR501)
8 Button Remote Control RT504
PalmPad(TM) 8 Button Remote Control HR12A
Wireless Remote Control System RC6500 (includes KC674 and TM751)
2 Button Remote Control KC674
Stick-A-Switch(TM) Wireless Wall Switch RW684, 2 unit
Stick-A-Switch(TM) Wireless Wall Switch RW694, 4 unit
Stick-A-Switch(TM) Wireless Wall Switch RW724, 3 unit + Bright/Dim
Mini Controller MC460
Maxi Controller SC503
SUNDOWNER(TM) SD533
Dual-Floodlight Motion Detector PR511
Mini Timer MT522
Mini Timer MT10A
Telephone Responder TR551
Telephone Responder TR16A
Home Automation Interface CP290 (for IBM PC compatibles)
Two-Way Universal Computer Interface CM11A (for IBM PC compatibles)
Thermostat Set-Back TH2807
Home Automation modules
Lamp Module LM465
2-Way Lamp Module LM14A
Wall Switch Module WS467
3-Way Wall Switch WS4777 (includes WS477 Master Switch and CS277 Companion
Switch)
Appliance Module AM486 (2 pin polarized)
2-Way Appliance Module AM14A (2 pin polarized)
Appliance Module AM466 (3 pin grounded)
2-Way Appliance Module AM15A (3 pin grounded)
SuperSocket(TM) Split Receptacle Module SR227
Heavy Duty 220V Appliance Module HD243 (15 A)
Heavy Duty 220V Appliance Module HD245 (20 A)
Remote Controlled Chime Module SC546
Universal Module UM506
Screw-in Lamp Module SL575
SocketRocket(TM) Miniature Screw-in Lamp Module LM15A
1
Two-Way Wireless Transceiver/Appliance Module RR501
Wireless Transceiver/Appliance Module TM751
3-Way Fluorescent Wall Switch Module WS13A
Decorator Dimmer Switch Module WS14A
Home Entertainment Products
POWERMID(TM) Infrared Remote Extender PM5900
POWERMID Infrared Transmitter ST539
POWERMID Infrared Receiver RE549
POWERMID Infrared Extender RX569
Infrared Gateway Controller IR543
TV Buddy Universal TV Remote UR41A
Security Products
Protector Plus 7 Piece Security System with Voice Dialer DS7000
Protector Plus Security Console/Voice Dialer System VS5600 (PS561 and
SH624)
Monitor Plus Monitored 7 Piece Security System with Digital Communicator
DC8700
DC821 Monitored Console
Security/Home Automation Remote Control SH624
Key Chain Remote KF574
Key Chain Remote KR10A
Door/Window Sensor DW534
Door/Window Sensor DS10A
Motion Detector SP554A
Motion Detector MS10A
POWERHORN Remote Siren PH508
POWERHORN Remote Siren SH10A
POWERFLASH Burglar Alarm Interface PF284
Smart RF Repeater SR731
Personal Security Products
Personal Assistance Security Console/Voice Dialer with Heart-Shaped Panic
Pendant PA5800
Personal Assistance Security Console with Digital Communicator PC9200
PC902 Monitored Console
Water-Resistant Call Pendant HP564A
Big Red(TM) Panic Button KR15A
Wrist Watch Panic Xxxxxx XX00X
Panic Alarm System ORCA 2000
RoboDog(TM) Barking Dog Alarm PK9000
Outdoor Motion Detector for use with RoboDog DM10A
2.
EXHIBIT B
X-10 Marks
The X-10 Marks include, without limitation, the following:
[Logos:]
[LOGO OF X-10(R)] [LOGO OF X10(R)] [LOGO OF X10 POWERHOUSE] [LOGO OF X10(R) PRO(R)]
[LOGO OF X10 PRO(TM)] [LOGO OF X10(R) PRO] [LOGO OF X10(R) PRO]
Trademarks:
Registered
----------
Robodog (No. 2,324,064)
X10 (No. 75/855997)
X10 & Design
X-10 (No. 1,146,071)
Common Law
----------
X-10
X10
X10 Pro
Powerhouse
X10 Powerhouse
Activehome
PowerHorn
Powermid
Sundowner
Mini Controller
Maxi Controller
The Timer
Sixteen Plus
Two Plus
Powerflash
RoboDog
OnGuard
PalmPad
3.
HomePlate
SuperSocket
SuperREMOTE
ActiveRooms
SoftSwitch
Virtual Wiring
NITEowl
Homeplate Gold
SlimLite
PowerFlash
Protector Plus
Monitor Plus
Big Red
Super Remote
Super Socket
4.
