EXHIBIT 10.1
LICENSE AGREEMENT
THIS AGREEMENT made as of this 10th day of March, 1995,
between CLEARSHIELD, INC., a Florida corporation ("LICENSOR") and
CLEARSHIELD MANUFACTURING CORP., a Florida corporation
("LICENSEE").
WITNESSETH:
WHEREAS:
1. LICENSOR owns the trademark and service xxxx
"CLEARShield", and the logo attached hereto as Exhibit "A"
(hereinafter collectively referred to as the "XXXX"), and such
XXXX has been registered by LICENSOR in connection with a
polycarbonate hurricane protection shutter;
2. LICENSOR owns, or has made application for, a utility
patent for the invention, entitled STORM SHUTTER ASSEMBLY (the
"PATENT"); and
3. LICENSEE desires to use the XXXX and PATENT in
connection with the manufacture and distribution of the
polycarbonate hurricane protection shutter.
NOW, THEREFORE, in consideration of the mutual promises
herein contained and other good and valuable consideration, the
receipt and adequacy of which is hereby acknowledged, the parties
hereto agree as follows:
1. GRANT OF LICENSE. Upon the terms and conditions
hereinafter set forth, LICENSOR hereby grants to LICENSEE a non-
exclusive, non-transferable license to use the XXXX in its trade
name and the PATENT in conjunction with the Business of
manufacturing, selling and installing the storm shutter assembly.
LICENSEE is authorized to use the XXXX and PATENT solely and only
in connection with the Business and LICENSEE has no right to
utilize the XXXX or PATENT for any other purpose. This License
is limited to use of the XXXX and PATENT and does not extend to
any other XXXX or PATENT now or hereafter owned by LICENSOR.
This License is limited to use of the XXXX and PATENT by
the LICENSEE for the State of Florida.
In the event that the PATENT is not granted, this LICENSE
shall be adjusted proportional to the values of the PATENT as of
the date of signing of this agreement. Such reduced value will be
a percentage reduction of the total fees paid of $350,000 in cash
and stock. The adjusted price will be determined by a mutually
agreed upon appraiser deemed to have experience in matters of
patent valuation. Such valuation must be initiated within 60 days
of notification of denial or limitation of the patent applied
for. LICENSOR does not make any representations as to whether or
not the PATENT will be granted.
2. OWNERSHIP OF XXXX AND/OR PATENT. LICENSEE acknowledges
LICENSOR'S ownership of and exclusive rights in the XXXX and
PATENT and the great value of the goodwill associated with the
XXXX and PATENT. LICENSEE will do nothing inconsistent with the
ownership of the XXXX and PATENT by the LICENSOR and all uses of
the XXXX and PATENT by LICENSEE shall inure to the benefit of and
be on behalf of the LICENSOR. In connection with the use of the
XXXX and PATENT, LICENSEE shall not in any manner represent that
it has any ownership in the XXXX or PATENT or any registration
thereof. Nothing in this License shall give LICENSEE any right,
title or interest in the XXXX or PATENT other than the right to
use the XXXX or PATENT in accordance with this License. LICENSEE
will not attack the title of LICENSOR to the XXXX or PATENT or
attack the validity of this License. Whenever licensee uses the
XXXX in advertising or any other manner, licensee shall clearly
indicate the licensor's ownership of the XXXX.
This Agreement does not, and is not intended to, create any
joint venture or agency relationship between the LICENSOR and
LICENSEE. LICENSEE has no right to bind LICENSOR in any manner
whatsoever to any agreement or undertaking. This Agreement is
being entered into for the sole and limited purpose of granting
LICENSEE a right to use the XXXX or PATENT on the terms and
conditions stated herein. LICENSOR is not and shall not be
responsible for any acts or omissions of LICENSEE.
3. CONSIDERATION AND METHOD OF PAYMENT. For and in
consideration of LICENSOR granting to LICENSEE the right to use
the XXXX and PATENT pursuant to the terms and conditions
contained herein, LICENSEE agrees to pay to LICENSOR the sum of
Three Hundred Fifty Thousand ($350,000.00) Dollars as follows:
(a) The sum of One Hundred Thousand ($100,000.00) Dollars
shall be paid to LICENSOR within fifteen (15) days of execution
of this Agreement and the notification of a majority vote of the
LICENSOR'S shareholder's as to approval of this agreement in its
entirety, less any sums spent on manufacture and research and
development of the product and tooling, such schedule to be made
a part of this agreement (Schedule A);
(b) One Hundred Fifty Thousand ($150,000.00) Dollars,
together with interest at the rate of eight (8%) percent per
annum, shall be payable in twelve(12) monthly payments from date
of execution of this Agreement and the notification of a majority
vote of the LICENSOR'S Shareholder's as to approval of this
agreement in its entirety, or the approval of the patent
application whichever is later.
(c) Additionally, LICENSEE agrees to issue to LICENSOR
100,000 shares of common stock. Said stock to have all existing
rights of current shareholders. Said stock to be issued within 15
days of execution of this agreement and the notification of a
majority vote approval of the shareholders of the LICENSOR of
this agreement in its entirety.
4. QUALITY STANDARDS AND CONTROL. LICENSEE agrees that
the nature and quality of all facilities, services and goods
rendered by LICENSEE in connection with the XXXX or PATENT shall,
at all times, be first class and of superior standards. In no
case shall such use fall below such standards. In the event such
services do fall below such standards, the LICENSOR may terminate
this License in accordance with Paragraph 8 herein.
LICENSEE shall comply with all applicable laws and
regulations and obtain all appropriate governmental approvals
pertaining to the sale, distribution and advertising of goods or
services covered by this License.
5. FORM OF USE. LICENSEE shall use the XXXX and PATENT
only in a form and manner which meets with LICENSOR's express
approval. LICENSEE shall maintain a file containing all
materials of any type utilizing the XXXX or PATENT for LICENSOR's
inspection upon request and agrees to forego any use of the XXXX
or PATENT which LICENSOR deems objectionable. As to any proposed
materials which have been approved, LICENSEE shall not depart
therefrom in any material respect without LICENSOR's prior
written consent. LICENSEE's use of any such materials containing
the XXXX or PATENT after notice that LICENSOR objects to such use
shall entitle LICENSOR to terminate this Agreement pursuant to
Paragraph 8 below. LICENS0R may withdraw its approval of any
materials using the XXXX or PATENT, for any reason, upon sixty
(60) days prior written notice to LICENSEE. As to any materials
for which approval is withdrawn LICENSEE shall make diligent
efforts to remove all such materials from public view or
circulation as quickly as possible and LICENSOR shall reimburse
LICENSEE for LICENSEE's actual cost of such materials removed.
6. INFRINGEMENT. LICENSEE agrees not to engage in any
conduct which infringes the XXXX or PATENT or constitutes unfair
competition with the LICENSOR by means of the use of the XXXX or
PATENT. LICENSEE shall notify LICENSOR of any unauthorized use
of the XXXX or PATENT by others, as soon as it comes to
LICENSEE's attention. LICENSOR shall have the sole right and
discretion to bring infringement or unfair competition
proceedings involving the XXXX or PATENT.
7. TERM. This License shall continue in full force and
effect for an initial period of twenty (20) years, from the
effective date hereof, unless sooner terminated in accordance
with the provisions hereof. At the end of the initial term, the
License shall be automatically renewed for additional ten (10)
Year terms unless either party, at least sixty (60) days prior to
the end of any ten (10) year term gives written notice to the
other party of termination of this License.
8. DEFAULT. If either LICENSOR or LICENSEE shall fail to
perform any of the terms or conditions of this agreement, and
such failure or breach shall not be cured within thirty (30) days
after giving written notice thereof, the other party shall have
the right to terminate this AGREEMENT, without thereby waiving
any rights and remedies at law or equity on account of such
default.
9. EFFECT OF TERMINATION. Upon termination of this
agreement, all rights and privileges granted LICENSEE shall
immediately terminate and LICENSEE agrees to immediately
discontinue all uses of the XXXX or PATENT and any words
confusingly similar thereto, and delete the same from its
corporate or business name. LICENSEE shall destroy all printed
materials bearing the XXXX or PATENT. LICENSEE shall make no
further reference to the XXXX or PATENT in connection with
LICENSEE's business or advertising and will, at no future time,
adopt or use, without LICENSOR's prior written consent, a word or
xxxx which is likely to be similar to or confusing with the XXXX
or PATENT.
10. ROYALTY. A Royalty on total gross sales of the
LICENSEE of the License and XXXX shall be assessed by and paid to
the LICENSOR. This agreed upon license fee is to be seven
percent (7.0%) of panel sales, payable monthly. A minimum of
$70,000 is to be paid over a twelve month period.
In conjunction with the Royalty the LICENSOR has the right
to inspect the books and records of LICENSEE with a reasonable
time request.
11. ADVERTISING AND PROMOTION. LICENSEE hereby agrees to
maintain a minimum advertising and promotional budget to be
expended over the course of a year. Due to the seasonality of the
product expenditures will vary from month to month. A minimum of
3% on the first million dollars in sales; 2% on the second
million dollars in sales and 1% of all sales over two million
dollars must be expended during a calendar year. A minimum of
$36,000 is to be paid over a twelve month period.
Further, the LICENSOR agrees to set up a National Advertising
Fund to which the LICENSEE will contribute 3% on the first
million dollars in sales; 2% on the second million dollars in
sales and 1/2% of all sales over two million dollars. Said fees
are to be paid quarterly and are waived for the first twelve
months of this agreement. A minimum of $20,000 is to be paid over
a twelve month period.
12. INSOLVENCY. This Agreement shall be in default in the
event of any act of insolvency or bankruptcy by LICENSEE or if
LICENSEE makes any assignment for the benefit of creditors, or
upon the appointment of any receiver or trustee to take
possession of the properties of LICENSEE, or upon the winding-up
sale, consolidation, merger or any sequestration by governmental
authority of LICENSEE.
13. NO ASSIGNMENT, SUB-CONTRACT OR SUB-LICENSE BY LICENSEE.
This License and all rights and duties hereunder are personal to
LICENSEE and shall not, without the written consent of LICENSOR
be assigned, mortgaged, sub-licensed or otherwise encumbered or
transferred by LICENSEE or by operation of law unless LICENSEE
sublicensed to companies owned by the LICENSEE seventy-five (75%)
percent or more. LICENSEE shall not be permitted to license any
other person or entity to use the XXXX or PATENT unless at least
seventy-five (75%) percent owned by LICENSEE. Should LICENSEE
assign, mortgage, sub-license, encumber, or transfer this
Agreement, LICENSOR shall be in default of this Agreement.
14. INDEMNIFICATION. LICENSEE hereby indemnifies to hold
LICENSOR harmless against any claims, suits, damages, costs r
attorney's fees brought against or incurred by LICENSOR rising
out of any acts or omissions by LICENSEE which are unjustifiably
attributed to LICENSOR as a result of LICENSE's use of the XXXX
or PATENT.
15. ENTIRE AGREEMENT. This agreement represents the entire
understanding and agreement between the parties with respect to
the subject matter hereof, and supersedes all other negotiations,
understandings and representations made by and between such
parties.
16. AMENDMENTS. The provisions of this Agreement may not be
amended, supplemented, waived or changed orally, but only by a
writing signed by the party as to whom enforcement of any such
amendment, supplement, waiver or modification is sought and
making specific reference to this Agreement.
17. BINDING EFFECT. All of the terms and provisions of
this agreement, whether so expressed or not, shall be binding
upon, inure to the benefit of, and be enforceable by the parties
and their respective administrators, executors, legal
representatives, heirs, successors and permitted assigns.
18. NOTICES. All notices, requests, consents and other
communications required or permitted under this agreement shall
be in writing (including telex and telegraphic communication) and
shall be (as elected by the person giving such notice) hand
delivered by messenger or courier service, or mailed (airmail or
international) by registered or certified mail (postage prepaid),
return receipt requested, addressed to the address on the
signature page hereof or to such other address as any party may
designate by notice complying with the terms of this Section.
Each such notice shall be deemed delivered (a) on the date
delivered if by personal delivery, (b) on the date received if by
telegraph, (c) on the date of transmission with confirmed answer
back if by telex, and (d) on the date upon which the return
receipt is signed or delivery is refused or the notice is
designated by the postal authorities as not deliverable, as the
case may be, if mailed.
19. HEADINGS. The headings contained in this agreement are
for convenience of reference only, and shall not limit or
otherwise affect in any way the meaning or interpretation of this
Agreement.
20. SEVERABILITY. If any part of this agreement or any
other Agreement entered into pursuant hereto is contrary to,
prohibited by, or deemed invalid under applicable law or
regulation, such provision shall be inapplicable and deemed
omitted to the extent so contrary, prohibited or invalid, but the
remainder hereof shall not be invalidated thereby and shall be
given full force and effect so far as possible.
21. WAIVER. The failure or delay of any party at any time
to require performance by another party of any provision of this
Agreement, even if known, shall not affect the right of such
party to require performance of that provision or to exercise any
right, power or remedy hereunder, and any waiver by any party of
any breach of any provision of this Agreement should not be
construed as a waiver of any continuing or succeeding breach of
such provision, a waiver of the provision itself, or a waiver of
any right, power or remedy under this Agreement. No notice to or
demand on any party in any case shall, of itself, entitle such
party to any other or further notice or demand in similar or
other circumstances.
22. SPECIFIC PERFORMANCE. Each of the parties acknowledges
that the parties will be irreparably damaged (and damages,at law
would be an inadequate remedy) if this Agreement is not
specifically enforced. Therefore, in the event of a breach or
threatened breach by any party of any provision of this
agreement, the other party shall be entitled to an injunction
restraining such breach, without being required to show any
actual damage or irreparable harm or to post any bond or other
security, and to a decree for specific performance of the
provisions of this agreement. The right to an injunction and
specific performance shall be in addition to all other rights or
remedies.
23. JURISDICTION AND VENUE. Without limiting the
jurisdiction or venue of any other federal or state courts, each
of the parties irrevocably and unconditionally (a) agrees that
any suit, action or legal proceeding arising out of or relating
to this Agreement may be brought in the courts of record of the
Xxxxx xx Xxxxxxx xx Xxxx Xxxxx Xxxxxx; (b) consents to the
jurisdiction of such court in any suit, action, or proceeding;
(c) waives any objection which it may have to the laying of venue
of such suit, action or proceeding in such court.
24. ENFORCEMENT COSTS. If any legal action or other
proceeding is brought for the enforcement of this agreement, or
because of an alleged dispute, breach, default or
misrepresentation in connection with any provision of this
Agreement, the successful or prevailing party or parties shall be
entitled to recover reasonable attorney's fees, court costs and
all expenses even if not taxable as court costs (including
without limitation all such fees, costs and expenses incident to
appeals), incurred in that action or proceeding, in addition to
any other relief to which such party or parties may be entitled.
25. REMEDIES CUMULATIVE. No remedy herein conferred upon
any party is intended to be exclusive of any other remedy, and
each and every such remedy shall be cumulative and shall be in
addition to every other remedy given hereunder or now or
hereafter existing at law or in equity or by statute or
otherwise. No single or partial exercise by any party of any
right, power or remedy hereunder shall preclude any other or
further exercise thereof.
26. CONSTRUCTION. This Agreement shall be construed as the
joint and equal work product of the parties hereto. No third
party is intended as a third party beneficiary hereof. This
Agreement and all transactions contemplated by this Agreement
shall be governed by, and construed and enforced in accordance
with the internal laws of the State of Florida without regard to
principles of conflicts of laws.
IN WITNESS WHEREOF, the parties have caused this, Agreement
to be duly executed as of the day and year indicated below.
CLEARSHIELD, INC.,
a Florida corporation
X.X. Xxx 00000
Xxxx Xxxxx Xxxxxxx, XX 00000
/s/Xxxxxx Xxxxxxxxxxx
by:/s/ Xxxxxxx Xxxxxxxxxx
/s/X. Xxxxxxxxxx Xx. Xxxxxxx Xxxxxxxxxx, President
Dated 3-10-95
CLEARSHIELD MANUFACTURING CORP.,
a Florida corporation
0000 Xxxx Xxxx.
Xxxxxxx Xxxxx, XX 00000
/s/Xxxxxxx Xxxxxxxx
by:/s/ Xxxxxxx Xxxxxxxx
/s/X. Xxxxxxxxxx Xx. Xxxxxxx X. Xxxxxxxx,
President
Dated:3-10-95
