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TRADEMARK AND INTELLECTUAL PROPERTY AGREEMENT
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TABLE OF CONTENTS
Page
1. DEFINITIONS. . . . . . . . . . . . . . . . . . . . . . . . 1
1.1 Masada Confidential Information . . . . . . . . . . 1
1.2 Centennial Confidential Information . . . . . . . . 1
1.3 Intellectual Property . . . . . . . . . . . . . . . 2
1.4 Marketing-Related Materials . . . . . . . . . . . . 2
1.5 Services . . . . . . . . . . . . . . . . . . . . . 2
1.6 Trademarks. . . . . . . . . . . . . . . . . . . . . 2
1.7 Territory . . . . . . . . . . . . . . . . . . . . . 2
2. LICENSES . . . . . . . . . . . . . . . . . . . . . . . . . 3
2.1 Trademarks and Trade Name . . . . . . . . . . . . . 3
2.2 Intellectual Property . . . . . . . . . . . . . . . 3
2.3 Transfers or Assignments. . . . . . . . . . . . . . 3
2.4 Joint Purchasing . . . . . . . . . . . . . . . . . 3
3. QUALITY CONTROL. . . . . . . . . . . . . . . . . . . . . . 3
3.1 Conformance With Standards. . . . . . . . . . . . . 3
3.2 Provision of Services . . . . . . . . . . . . . . . 4
3.3 Service Standards . . . . . . . . . . . . . . . . . 4
3.4 Quality Control . . . . . . . . . . . . . . . . . . 4
3.5 Labeling . . . . . . . . . . . . . . . . . . . . . 4
4. TRADEMARK LICENSE LIMITATIONS. . . . . . . . . . . . . . . 4
4.1 Use of Trademarks . . . . . . . . . . . . . . . . . 4
4.2 Registration. . . . . . . . . . . . . . . . . . . . 5
4.3 Enforcement . . . . . . . . . . . . . . . . . . . . 5
5. MARKETING. . . . . . . . . . . . . . . . . . . . . . . . . 6
5.1 Marketing Efforts . . . . . . . . . . . . . . . . . 6
5.2 Use of Other Trademarks . . . . . . . . . . . . . . 6
6. CONFIDENTIALITY. . . . . . . . . . . . . . . . . . . . . . 6
6.1 Masada Confidential Information . . . . . . . . . . 6
6.2 Centennial Acknowledgement. . . . . . . . . . . . . 6
6.3 Centennial Confidential Information . . . . . . . . 6
6.4 Masada Acknowledgement. . . . . . . . . . . . . . . 7
7. WARRANTIES . . . . . . . . . . . . . . . . . . . . . . . . 7
7.1 Authority . . . . . . . . . . . . . . . . . . . . . 7
7.2 Rights to Trademarks and Intellectual Property. . . 7
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8. INDEMNIFICATION . . . . . . . . . . . . . . . . . . . . . . 8
8.1 Centennial Indemnification . . . . . . . . . . . . . 8
8.2 Masada Indemnification . . . . . . . . . . . . . . . 8
9. TERM; TERMINATION . . . . . . . . . . . . . . . . . . . . . 9
9.1 Term . . . . . . . . . . . . . . . . . . . . . . . . 9
9.2 Termination For Insolvency . . . . . . . . . . . . . 9
9.3 Termination for Breach . . . . . . . . . . . . . . . 10
9.4 Rights on Termination . . . . . . . . . . . . . . . 11
9.5 Actions Upon Termination . . . . . . . . . . . . . . 11
10. GOVERNMENT APPROVALS. . . . . . . . . . . . . . . . . . . . 11
10.1 Required Approvals . . . . . . . . . . . . . . . . . 11
10.2 Compliance with Laws . . . . . . . . . . . . . . . . 11
11. MISCELLANEOUS . . . . . . . . . . . . . . . . . . . . . . . 11
11.1 Notices . . . . . . . . . . . . . . . . . . . . . . 11
11.2 Entire Agreement . . . . . . . . . . . . . . . . . . 12
11.3 No Waiver . . . . . . . . . . . . . . . . . . . . . 12
11.4 No Strict Construction . . . . . . . . . . . . . . . 13
11.5 Severability . . . . . . . . . . . . . . . . . . . . 13
11.6 Governing Law and Jurisdiction . . . . . . . . . . . 13
11.7 Relationship of the Parties . . . . . . . . . . . . 13
11.8 No Third Party Beneficiaries . . . . . . . . . . . . 13
11.9 Counterparts . . . . . . . . . . . . . . . . . . . . 13
EXHIBIT 1.3 - Intellectual Property . . . . . . . . . . . . 15
EXHIBIT 1.6 - Trademarks . . . . . . . . . . . . . . . . . 16
EXHIBIT 2.2 - Training Schedule . . . . . . . . . . . . . . 17
EXHIBIT 2.4 - Joint Purchasing. . . . . . . . . . . . . . . 18
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TRADEMARK AND INTELLECTUAL PROPERTY AGREEMENT
THIS TRADEMARK AND INTELLECTUAL PROPERTY AGREEMENT is made and entered
into this 10th day of June, 1994 (the "Effective Date"), by and between Masada
Security, Inc., a Delaware corporation with its principal place of business in
Birmingham, Alabama ("Masada"), and Centennial Security, Inc., a Delaware
corporation with its principal place of business in Denver, Colorado
("Centennial").
RECITALS
WHEREAS, Masada and Centennial have entered into that certain Purchase
Agreement dated as of the date hereof (the "Purchase Agreement"); and
WHEREAS, pursuant to the Purchase Agreement and as consideration for
shares of Centennial's Class B Common Stock, Masada agreed to grant to
Centennial certain licenses to the Trademarks (as hereinafter defined), to
provide the Intellectual Property (as hereinafter defined), and to perform
other services and obligations, all as set forth herein.
NOW, THEREFORE, in consideration of the premises and the covenants
contained herein and in the Purchase Agreement, and for other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged,
the parties hereto agree as follows.
1. DEFINITIONS. The following terms, when used herein with
initial capital letters, shall have the meanings ascribed to them in this
Article 1. All terms used herein with initial capital letters but not otherwise
defined shall have the meanings ascribed to them in the Purchase Agreement.
1.1 MASADA CONFIDENTIAL INFORMATION. The term "Masada Confidential
Information" shall mean the elements of the Intellectual Property and all
technical information, technology, formulae, information, system designs,
prototypes, ideas, inventions, improvements, data, files, supplier and customer
identities and lists, accounting records, forecasts, project management plans,
marketing plans and business plans relating to this Agreement to which Masada,
or one of its suppliers or customers has rights, that are not generally known
to the public, and all copies and tangible embodiments thereof (in whatever
form or medium); provided, however, that any of the foregoing shall not be
considered Masada Confidential Information if it: (a) has become publicly known
through no wrongful act or breach of any obligation or confidentiality by
Centennial; (b) was rightfully received by Centennial from a person or entity
without a breach of any agreement by such person or entity; (c) was approved
for release by written authorization from the party having rights therein; or
(d) was developed independently of the party having rights in same.
1.2 CENTENNIAL CONFIDENTIAL INFORMATION. The term "Centennial
Confidential Information" shall mean the formulae, processes, procedures,
technology, methods and
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directions (whether or not in written form) proprietary to Centennial
and useful to (i) provide the Services and (ii) acquire and integrate
businesses that provide the Services or services similar to the Services, other
than Intellectual Property and all technical information, technology, formulae,
information, system designs, prototypes, ideas, inventions, improvements, data,
files, supplier and customer identities and lists, accounting records,
forecasts, project management plans, marketing plans and business plans to
which Centennial or its suppliers or customers has rights, and all copies and
tangible embodiments thereof (in whatever form or medium), that are not
generally known to the public; provided, however, that any of the foregoing
shall not be considered Centennial Confidential Information if it: (a) was
first Masada Confidential Information; (b) has become publicly known through no
wrongful act or breach of any obligation or confidentiality on the receiving
person or entity's or any person or entity's part; (c) was rightfully received
from a person or entity without a breach of any agreement by such person or
entity; (d) was approved for release by written authorization from the party
having rights therein; or (e) was developed independently of the party having
rights in same.
1.3 INTELLECTUAL PROPERTY. The term "Intellectual Property" shall
mean the formulae, processes, procedures, technology, techniques, know-how,
trade secrets, patents, licenses, copyrights, methods and directions (whether
or not in written form) and any other rights proprietary to Masada and useful
to (i) provide the Services and (ii) to acquire and integrate entities or
assets, that provide or are used to provide the Services or services similar to
the Services as further described in Exhibit 1.3, attached hereto and
incorporated herein.
1.4 MARKETING-RELATED MATERIALS. The term "Marketing-Related
Materials" shall mean all communications, whether or not in written form,
including, without limitation, promotional materials and newspaper, radio or
television advertising which display one or more of the Trademarks or are
intended to promote the awareness, sale, or image of the Services.
1.5 SERVICES. The term "Services" shall mean the provision of
security-related services, including, without limitation, monitoring security
systems and installation of equipment related thereto.
1.6 TRADEMARKS. The term "Trademarks" shall mean the trademarks,
trade names, service marks, trade dress, trade designations and logos
identified in Exhibit 1.6, attached hereto and incorporated herein, as may be
amended in writing by the parties hereto from time to time during the term of
this Agreement, which Masada shall license to Centennial pursuant to this
Agreement.
1.7 TERRITORY. The term "Territory" shall mean the states of
California north of Sacramento, Colorado, Connecticut, Delaware, Idaho,
Illinois, Indiana, Iowa, Kansas, Maine, Maryland (excluding the territory
consisting of suburban Washington, D.C., through and including the Baltimore
metropolitan area,) Massachusetts, Michigan, Minnesota, Missouri, Montana,
Nebraska, Nevada, New Hampshire, New Jersey, New York, North Dakota, Ohio,
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Oregon, Pennsylvania, Rhode Island, South Dakota, Utah, Vermont,
Washington, Wisconsin and Wyoming in the United States and the country of
Canada, or such other or different states, countries or other territories as to
which Centennial and Masada may from time to time agree in writing.
2. LICENSES.
2.1 TRADEMARKS AND TRADE NAME. Subject to the terms and conditions
contained herein, Masada hereby grants to Centennial an exclusive license in
the Territory to use the Trademarks and the trade name "Masada" in connection
with marketing, promoting, advertising, selling and rendering the Services.
During the term of this Agreement, each of Masada and Centennial shall provide
Services only under the Masada trade name unless otherwise agreed by the
parties.
2.2 INTELLECTUAL PROPERTY. Masada hereby grants to Centennial an
exclusive license in the Territory to use the Intellectual Property. Masada
shall provide the Intellectual Property to Centennial commencing on a date
reasonably requested by Centennial at any time after the date of this Agreement
and shall educate and train Centennial and persons designated by Centennial in
the use of the Intellectual Property, on the terms described in Exhibit 2.2
attached hereto and incorporated herein.
2.3 TRANSFERS OR ASSIGNMENTS. Centennial shall not grant
sublicenses, sell or otherwise transfer any rights under this Agreement to any
person or entity without the prior written approval from Masada (a) of such
person or entity and (b) of the form and substance of a written agreement
pursuant to which Centennial desires to grant such sublicense, sell or
otherwise transfer any such rights, which such approval will not be
unreasonably withheld; provided, however, that Centennial may grant any
sublicenses, sell or otherwise transfer any rights under this Agreement to any
entity wholly-owned by Centennial without Masada's consent.
2.4 JOINT PURCHASING. Masada shall coordinate with and assist
Centennial in any manner reasonably requested by Centennial in purchasing items
to be used in Centennial's business, including, without limitation, the items
set forth in Exhibit 2.4 attached hereto and incorporated herein (including,
without limitation, allowing Centennial to use, if permissible, any vendor
discounts available to Masada), such that Centennial may purchase such items on
price and other material terms more favorable to Centennial than Centennial
could otherwise obtain.
3. QUALITY CONTROL
3.1 CONFORMANCE WITH STANDARDS. Centennial and Masada shall each
use their respective best efforts to ensure, for themselves, that all their
respective Services and Marketing-Related Materials meet the quality standards
that Masada shall establish from time to time in its best professional
judgement and to which it and its subsidiaries comply in providing Services and
in Marketing-Related Materials.
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3.2 PROVISION OF SERVICES. Centennial shall not materially
alter, modify or vary the Services or Trademarks without the prior written
consent of Masada, which consent will not be unreasonably withheld. As soon as
practicable, Centennial shall advise Masada of any material proposed
alterations, modifications, or variations in the Services or Trademarks which
Centennial has developed, acquired, or otherwise has knowledge of and which it
lawfully desires to use. Centennial shall have the right to use such
alterations, modifications and variations only after Masada provides such
consent. Masada shall as promptly as practicable, but in any event within ten
days after receipt of notice thereof, provide written notice to Centennial
either granting its consent or denying its consent; provided, however, that if
Masada denies its consent it shall specify in reasonable detail the reasons for
such denial, and the same shall be certified by an authorized officer of
Masada; and provided further, however, that if Masada fails to provide written
notice to Centennial within such ten-day time period, Masada shall be deemed to
have consented to Centennial's use of any such alterations, modifications or
variations.
3.3 SERVICE STANDARDS. Centennial hereby agrees to maintain the
quality and integrity of the Services sold and provided under the Trademarks,
and otherwise to provide the Services and employ Marketing-Related Materials in
accordance with the applicable Intellectual Property and accepted good business
practices, and to ensure that the Services provided hereunder are of a quality
reasonably satisfactory to Masada.
3.4 QUALITY CONTROL. Except as otherwise provided herein, each
of Masada and Centennial shall be responsible for and shall bear all their
respective costs for ensuring that the Services and the marketing and sale
thereof (including, without limitation, Marketing-Related Materials) meet the
applicable quality specifications set forth in the Intellectual Property. Each
party shall, at its own expense, and upon reasonable written notice from the
other party, supply the other party with finished samples of Marketing-Related
Materials. Masada hereby agrees to maintain the quality and integrity of the
Services it sells and provides under the Trademarks, and otherwise to provide
such Services and employ Marketing-Related Materials in accordance with the
applicable Intellectual Property and accepted good business practices, and to
ensure that the Services it provides meet the applicable quality specifications
set forth in the Intellectual Property.
3.5 LABELING. Each of Masada and Centennial shall label, or
cause to be labeled, all Services, products relating thereto, and
Marketing-Related Materials in compliance with all applicable laws therefor.
4. TRADEMARK LICENSE LIMITATIONS.
4.1 USE OF TRADEMARKS. Centennial shall seek the advice of
Masada on all material matters relating to the use of the Trademarks prior to
the first use thereof in connection with any Services or Marketing-Related
Materials, or any advertising or promotional item, and thereafter prior to each
new type of use thereof. Centennial shall make such changes as Masada, in its
best professional judgement, shall advise, including any
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description used in connection with any Trademark. At the request of
Masada, Centennial shall provide Masada with copies, photographs or samples of
advertising copy, marketing and promotional materials, documentation and
technical materials and other materials used in connection with the Services or
Marketing-Related Materials and any other materials bearing the Trademarks.
4.2 REGISTRATION. Masada shall use its best efforts to
federally register with all due expedience and maintain the "Masada Security"
Trademark in the United States at its expense. Centennial will comply with all
applicable registrations requirements, and Masada will assist Centennial in
such compliance, in those jurisdictions in the Territory in which Centennial
intends to provide the Services where registration of a user of trademarks or
registration of trademark licenses is required, and otherwise comply with the
applicable laws of the relevant jurisdiction, all at Centennial's expense.
Each of Centennial and Masada shall furnish the other party with all reasonably
requested information (including specimens and samples illustrative of the
manner of use of the Trademarks) and documentation (including the execution and
delivery of any and all affidavits, declarations, oaths and other
documentation) to assist such party in maintaining trademark protection and
registrations pursuant to this Section 4.2.
4.3 ENFORCEMENT. Each of Centennial and Masada shall keep diligent
watch: (a) to detect any trademarks, trade names, service marks, trade
dress, trade designations and logos that may infringe the Trademarks; and (b)
to detect any goods or services that may misappropriate the Intellectual
Property. Centennial shall promptly notify Masada (a) of any actual or
suspected infringement or misuse of the Trademarks, or (b) of any information
which may adversely affect the Trademarks, the Intellectual Property, Masada or
Centennial. Such notification shall include all available information
regarding such activity and shall identify all persons having knowledge
thereof. Centennial may take any action it deems reasonably necessary with
respect to any person or entity in order to enforce any rights regarding the
Trademarks or Intellectual Property in the Territory at its own expense, and
shall be entitled to retain for itself any monetary recovery in connection
therewith, whether pursuant to a judgement entered in connection with
litigation or arbitration, in settlement thereof, or otherwise; provided,
however, that Masada shall be entitled to its reasonable out-of-pocket expenses
(including reasonable legal fees) incurred in connection with assisting
Centennial in such action. Masada agrees to be joined in any such action
and/or otherwise to assist Centennial in such action. Should Centennial advise
Masada in writing that it does not intend to pursue any action to enforce any
rights regarding the Trademarks or Intellectual Property in the Territory,
Masada may pursue such action in the Territory at its own expense, and shall be
entitled to retain for itself any monetary recovery in connection therewith,
whether pursuant to a judgement entered in connection with litigation or
arbitration, in settlement thereof, or otherwise; provided, however, that
Centennial shall be entitled to its reasonable out-of-pocket expenses
(including reasonable legal fees) incurred in connection with assisting Masada
in such action. Centennial agrees to be joined in any such action and/or
otherwise to assist Masada in such action.
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5. MARKETING.
5.1 MARKETING EFFORTS. Centennial shall use its best efforts to
use the Trademarks, as applicable, in connection with marketing, promoting,
advertising, distributing and selling the Services and otherwise in Marketing-
Related Materials.
5.2 USE OF OTHER TRADEMARKS. Centennial shall market, promote,
advertise, and sell the Services under the Trademarks as appropriately
designated and displayed in the light of good trademark practice and usage,
applicable trademark laws and customs. Centennial shall not market, promote,
advertise or sell the Services, including through the use of Marketing-Related
Products in connection with any trademark, trade name, service xxxx, trade
dress, trade designation or logo other than the Trademarks, unless previously
approved in writing by Masada, which approval will not be unreasonably
withheld.
6. CONFIDENTIALITY.
6.1 MASADA CONFIDENTIAL INFORMATION. During the term of this
Agreement and at all times thereafter, Centennial shall keep and maintain
Masada Confidential Information in confidence and, except as otherwise provided
herein, Centennial (a) shall not use any Masada Confidential Information, and
(b) shall not provide or otherwise make available, whether directly or
indirectly, any Masada Confidential Information to any person or entity other
than (i) to Centennial's employees or agents for the purpose performing their
duties for Centennial, or (ii) as required by law or court order. Centennial
shall treat Masada Confidential Information with the same degree of care with
which it treats its own confidential information.
6.2 CENTENNIAL ACKNOWLEDGEMENT. Centennial acknowledges that use
by it outside the rights granted herein or communication of Masada Confidential
Information to third parties other than as contemplated herein would cause
immediate and irreparable harm to Masada for which money damages are
inadequate. Therefore, Centennial agrees that Masada will be entitled to
injunctive relief for breach of Section 6.1 hereof without proof of actual
damages or the posting of bond or other security. Such remedy shall not be
deemed to be the exclusive remedy for breach of Section 6.1 hereof but shall be
in addition to all other remedies available at law or in equity.
6.3 CENTENNIAL CONFIDENTIAL INFORMATION. During the term of this
Agreement and at all times thereafter, Masada shall keep and maintain
Centennial Confidential Information in confidence and, except as otherwise
provided herein, Masada (a) shall not use any Centennial Confidential
Information, and (b) shall not provide or otherwise make available, whether
directly or indirectly, any Centennial Confidential Information to any person
or entity other than (i) to Masada's employees or agents for the purpose
performing their duties for Masada under this Agreement, or (ii) as required by
law or court order. Masada shall treat Centennial Confidential Information
with the same degree of care with which it treats its own confidential
information.
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6.4 MASADA ACKNOWLEDGEMENT. Masada acknowledges that use by it
outside the rights granted herein or communication of Centennial Confidential
Information to third parties other than as contemplated herein would cause
immediate and irreparable harm to Centennial for which money damages are
inadequate. Therefore, Masada agrees that Centennial will be entitled to
injunctive relief for breach of Section 6.3 hereof without proof of actual
damages or the posting of bond or other security. Such remedy shall not be
deemed to be the exclusive remedy for breach of Section 6.3 hereof but shall be
in addition to all other remedies available at law or in equity.
7. WARRANTIES
7.1 AUTHORITY. Masada and Centennial represent and warrant that
they have full power and authority to enter into and to perform this Agreement.
7.2 RIGHTS TO TRADEMARKS AND INTELLECTUAL PROPERTY.
(a) To the best of its knowledge, Masada, together with its
subsidiaries, owns and possesses all right, title and interest in and to, or
has a valid and enforceable license from third parties to use, all the
Trademarks, Intellectual Property, and other Masada Confidential Information
which could be contemplated by this Agreement free and clear of all liens,
licenses, security interests, encumbrances and other restrictions other than a
general intangibles security interest held by State Street Bank and Trust
Company (the "Bank") for itself and as agent for Citizens Savings Bank of Rhode
Island pursuant to that certain Revolving Credit and Term Loan Agreement dated
February 11, 1994 (the "Credit Agreement"). Masada agrees to comply with the
provisions of the Credit Agreement, to not default under the Credit Agreement
and to otherwise prevent the occurrence of any event that would allow the Bank
to exercise any remedies under such security interest or that otherwise may
adversely affect Centennial's rights to use the Trademarks, Intellectual
Property or Masada Confidential Information as contemplated under this
Agreement.
(b) Neither Masada nor any of its subsidiaries has received
any notice of infringement, misappropriation or conflict from any third party
as to such Trademarks, Intellectual Property, Masada Confidential Information
or otherwise contesting the validity, enforceability, use or ownership of any
of such Trademarks, Intellectual Property and Masada Confidential Information
which has not been resolved or disposed of and there are no grounds for the
same, and neither Masada nor any of its subsidiaries has infringed,
misappropriated or otherwise conflicted with rights of third parties similar to
the Trademarks, Intellectual Property and Masada Confidential Information.
(c) Masada has taken or will take with all due expedience
after the date of this Agreement all necessary and prudent action to maintain
and protect any Intellectual Property and Trademarks and will continue to take
all necessary and prudent actions to maintain and protect any Intellectual
Property and Trademarks so as to not materially adversely affect the validity
or enforceability of any Intellectual Property or Trademarks. To Masada's best
knowledge, the owners of any Intellectual Property or Trademarks licensed
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to Masada have taken all necessary and desirable action to maintain and
protect the Intellectual Property or Trademarks subject to such licenses.
Neither Masada nor any subsidiary has disclosed any material confidential
information developed or utilized by Masada or any such subsidiary to any third
party except on a confidential basis and with no intention to entitle such
third party to use such information other than for the purposes indicated by
Masada in its communications with such third party nor, to Masada's best
knowledge, has any third party disclosed confidential information developed or
utilized by Masada or any such subsidiary to any person not an employee of
Masada, of any such subsidiary or of the third party.
8. INDEMNIFICATTON.
8.1 CENTENNIAL INDEMNIFICATION. (a) Centennial shall defend,
indemnify and hold Masada and its affiliates, and its and their officers,
directors, stockholders, employees and agents harmless and shall pay all
losses, damages, fees, expenses or costs (including reasonable attorney's fees)
incurred by them based upon or relating to any claim made by any person or
entity relating to Centennial's provision of the Services or use of
Marketing-Related Materials in connection with which any of the Trademarks is
used, or based upon any claim: (i) arising from any act or omission of
Centennial or its stockholders (other than Masada or any of its officers or
directors), officers, directors, employees or agents related to this Agreement;
(ii) arising from the misuse, disclosure, or misappropriation by any person or
entity of any Masada Confidential Information obtained from Centennial by such
person or entity; (iii) arising from any failure by Centennial to obtain any
necessary license, permit or approval; (iv) alleging or arising from any breach
by Centennial of any of its obligations, representations or warranties herein;
(v) arising out of any claim relating to Centennial's actions or omissions in
connection with this Agreement by any person or entity seeking remedies beyond
the remedies set forth in Section 6.2 hereof; or (vi) alleging any breach by
Centennial of any agreement related to the Services or the Marketing-Related
Materials between Centennial and any person or entity, except for any of the
foregoing contained in clauses (i) through (vi) which arise from Masada's or
its affiliates or their officers, directors, stockholders (other than
Centennial or any of its directors or officers), employees or agents gross
negligence, reckless or intentional misconduct or fraud.
(b) Masada shall notify Centennial of claim under Section
8.1(a) hereof in a timely fashion after receiving knowledge thereof.
Centennial shall assume control of the defense or settlement of such claim from
Masada; provided, however, Masada shall be entitled to be represented by its own
counsel (at its own expense) and to participate fully in the defense of any
claim. Notwithstanding the foregoing, Centennial shall not, without the prior
written consent of Masada, effect any settlement of any pending or threatened
proceeding in respect of which Masada is or could have been a party and
indemnity could have been sought hereunder by Masada, unless such settlement
includes an unconditional release of Masada from all liability arising out of
such proceeding.
8.2 MASADA INDEMNIFICATION. (a) Masada shall defend, indemnify and
hold Centennial and its affiliates, and its and their officers, directors,
stockholders (other than
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Masada or any of its officers and directors), employees and agents
harmless and shall pay all losses, damages, fees, expenses or costs
(including reasonable attorney's fees) incurred by them based upon or relating
to any claim made by any person or entity relating to Masada's provision of the
Services or use of Marketing-Related Materials in connection with which any of
the Trademarks is used, or based upon any claim: (i) arising from any act or
omission of Masada or its stockholders, officers, directors, employees or
agents related to this Agreement; (ii) arising from the misuse, disclosure, or
misappropriation by any person or entity of any Centennial Confidential
Information obtained from Masada by such person or entity; (iii) arising from
any failure by Masada to obtain any necessary license, permit or approval; (iv)
alleging or arising from any breach by Masada of any of its obligations,
representations or warranties herein; (v) arising out of any claim relating to
Masada's actions or omissions in connection with this Agreement by any person
or entity seeking remedies beyond the remedies set forth in Section 6.4 hereof;
or (vi) alleging any breach by Masada of any agreement related to the Services
or the Marketing-Related Materials between Masada and any person or entity,
except for any of the foregoing contained in clauses (i) through (vi) which
arise from Centennial's or its affiliates or their officers, directors,
stockholders (other than Masada or any of its directors or officers), employees
or agents gross negligence, reckless or intentional misconduct or fraud.
(b) Centennial shall notify Masada of claim under Section 8.2(a)
hereof in a timely fashion after receiving knowledge thereof. Masada shall
assume control of the defense or settlement of such claim from Centennial;
provided, however, that Centennial shall be entitled to be represented by its
own counsel (at its own expense) and to participate fully in the defense of any
claim. Notwithstanding the foregoing, Masada shall not, without the prior
written consent of Centennial, effect any settlement of any pending or
threatened proceeding in respect of which Centennial is or could have been a
party and indemnity could have been sought hereunder by Centennial, unless such
settlement includes an unconditional release of Centennial from all liability
arising out of such proceeding.
9. TERM; TERMINATION.
9.1 TERM. Unless earlier terminated in accordance with this
Section 9, this Agreement shall commence on the date first set forth above and
shall continue in full force and effect until the tenth anniversary of the date
hereof (the "Initial Term"); provided, however, that this Agreement shall be
extended by successive three year periods thereafter (each, a Renewal Term)
unless either Masada or Centennial shall have given written notice to the other
party no later than 180 days prior to the commencement of any Renewal Term of
its desire that this Agreement terminate at the end of the Initial Term or then
current Renewal Term, as the case may be.
9.2 TERMINATION FOR INSOLVENCY. Notwithstanding anything else
contained in this Agreement, this Agreement may be terminated by either party
giving written notice to the other upon the happening of any of the following
events:
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(a) The expiration of 21 days after the other party having a
receiver validly appointed for the whole or any substantial part of its assets
or immediately where a court order is validly made or a resolution of such
party's stockholders passed for the winding up of such party other than for the
purpose of reorganization or reconstruction.
(b) In the event that the other party files a petition in
bankruptcy or similar proceedings or is adjudicated bankrupt or if a petition
for bankruptcy or similar proceedings is filed against such party and is not
stayed or discharged within 45 days of such filing or if such party becomes
insolvent or makes an assignment for the benefit of creditors or any agreement
pursuant to bankruptcy law or otherwise acknowledges insolvency or is adjudged
bankrupt or if such party discontinues business.
9.3 TERMINATION FOR BREACH. In the event of any material
breach of this Agreement, the non-breaching party shall give the breaching
party written notice describing such material breach. Without limiting the
foregoing, Masada's failure to obtain or maintain registration for any
Trademark pursuant to Section 4.2 hereof or a determination that Masada does
not have the rights to the Trademarks, Intellectual Property or Confidential
Information as contemplated by Section 7.2(a) hereof shall be deemed to be a
material breach by Masada hereunder. If the breaching party fails to cure such
material breach or demonstrate to the non-breaching party's reasonable
satisfaction that no breach exists within sixty (60) days of its receipt of
written notice of same, such breach shall be deemed a material breach and an
Event of Default hereunder and the non-breaching party shall have the following
remedies and rights:
(a) The non-breaching party may, subject to paragraphs (ii)
and (iii) below, terminate this Agreement upon 60 days' written notice to the
breaching party.
(b) If Centennial is the non-breaching party, it may,
subject to any rights of third parties, continue to use the Trademarks,
Intellectual Property and Masada Confidential Information in the Territory
until the later of the end of the Initial Term and three years following the
occurrence of the Event of Default. If Centennial determines not to continue
using any of the Trademarks, Intellectual Property or Masada Confidential
Information or upon termination of its rights to use any of the Trademarks,
Intellectual Property or Masada Confidential Information pursuant to the
preceding sentence, Centennial shall, upon Masada's request and at Masada's
expense, remove an related Masada trade dress from Centennial's facilities,
equipment and customer locations and return the same to Masada.
(c) If Masada is the non-breaching party, it may request
that, upon six months' prior written notice, Centennial cease using all
Trademarks, Intellectual Property and Masada Confidential Information and
thereupon Centennial shall, at Centennial's expense, remove all related Masada
trade dress from Centennial's facilities, equipment and customer locations and
return the same to Masada.
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The remedies set forth above in this Section 9.3 and elsewhere
in this Section 9 shall be cumulative and not exclusive of each other, and are
in addition to any other remedies at law or equity that the non-breaching party
may have under this Agreement or otherwise.
9.4 RIGHTS ON TERMINATION. Notwithstanding anything to the
contrary that may be contained herein, in the event of any termination or
expiration of this Agreement, the confidentiality and indemnification
provisions and any other provisions which by their terms are to be performed or
complied with subsequent to the expiration or other termination of this
Agreement in whole or in party shall survive and continue in full force and
effect. The termination of this Agreement in whole or in part for any reason
shall be without prejudice to, and shall not affect, the right of either party
to recover from the other any and all damages to which either may be entitled
therefor, or any other rights of either in connection therewith, and all such
rights of both shall survive such termination. Notwithstanding anything in
this Agreement to the contrary, upon termination of this Agreement for any
reason, other than for a Centennial breach hereof, Masada shall not provide or
offer to provide any Services in the Territory for a period of three years
after the date of such termination.
9.5 ACTIONS UPON TERMINATION. Except as otherwise provided in
Section 9.3, upon termination or expiration of this Agreement, all rights
hereunder shall terminate and Centennial shall remove all related Masada trade
dress from Centennial's facilities, equipment and customer locations and return
the same to Masada. Centennial and Masada shall equally share the costs and
expenses of such removal and return unless (a) this Agreement is terminated
pursuant to Section 9.2, in which case the non-terminating party shall pay all
such costs and expenses or (b) this Agreement is terminated in connection with
Centennial merging with or into another entity or Centennial selling all or
substantially all of its assets to another entity, in which case Centennial
shall pay all such costs and expenses.
10. GOVERNMENT APPROVALS.
10.1 REQUIRED APPROVALS. Subject to Section 4.2, Centennial shall
obtain all necessary licenses, permits and approvals to market, promote,
advertise, distribute and sell the Services in the Territory and to use the
Trademarks as contemplated herein at Centennial's sole cost and expense.
10.2 COMPLIANCE WITH LAWS. At all times during the term of this
Agreement the parties shall comply fully with all laws, rules and regulations
relating to the subject matter hereof and all amendments thereto.
11. MISCELLANEOUS.
11.1 NOTICES. Any notices, consents or approvals required or
permitted to be given hereunder shall be deemed to be given and sufficient
when delivered in writing, first class United States certified or registered
letter, return receipt requested, by reputable overnight
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courier, personally or by telecopy with written confirmation as provided above
to the other party:
to Masada: Masada Security, Inc.
0000 Xxxxxxxxx Xxxx, Xxxxx 000
Xxxxxxxxxx, XX 00000
Attention: Xxxxx X. Xxxxxxx
with a copy to: Xxxxxx, Xxxxxx, Xxxxxx & Xxxxx, P.C.
Suite 900
Park Place Tower
0000 Xxxx Xxxxx
Xxxxxxxxxx, XX 00000
Attention: Xxxxxxxxxxx X. Xxxxxx
to Centennial: Centennial Security, Inc.
0000 Xxxxxxxx, Xxxxx 0000
Xxxxxx, XX 00000
Attention: Xxxxxxxxx Xxxxxxxx
with a copy to: Xxxxxxxx & Xxxxx
0000 Xxxxxxxx, Xxxxx 0000
Xxxxxx, XX 00000
Attention: Xxxxxx X. Xxxxx
and at such other place or to such other person as a party may specify in
writing and give notice thereof to the other party as provided in this
Section 11.1, such notice to be effective four (4) days after receipt of same.
11.2 ENTIRE AGREEMENT. This Agreement, together with its Exhibits,
contains the entire agreement between the parties relating to the subject
matter hereof, and supersedes any and all prior understandings, agreements,
representations and warranties by and between the parties, written or oral,
which may be related to the subject matter hereof in any way. This Agreement
may be amended only by written agreement embodying the full terms of the
amendment and signed by the authorized representatives of both parties. This
Agreement and the rights hereunder may be assigned, transferred, pledged or
otherwise encumbered by Centennial or Masada only with the written consent of
the other party, which consent will not be unreasonably withheld. This
Agreement shall inure to the benefit of the parties' respective successors and
assigns but shall not inure to the benefit of any trustee in bankruptcy,
receiver or successor of Centennial, whether by operation of law or otherwise.
11.3 NO WAIVER. None of the terms of this Agreement shall be deemed
to be waived or amended by either party unless such waiver or amendment
specifically references this Agreement and is in writing signed by the party to
be bound.
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11.4 NO STRICT CONSTRUCTION. The language used in this Agreement
shall be deemed to be the language chosen by the parties hereto to express
their mutual intent and no rule of strict construction against either party
shall apply to any term or condition of this Agreement.
11.5 SEVERABILITY. Should any provision of this Agreement be held
by a court of competent jurisdiction to be illegal, invalid or unenforceable,
such provision may be modified by such court in compliance with the law and, as
modified, enforced. All other terms and conditions of this Agreement shall
remain in full force and effect and shall be construed in accordance with the
modified provision, as if such illegal, invalid or unenforceable provision had
not been contained herein.
11.6 GOVERNING LAW AND JURISDICTION. Either party may bring legal
proceedings relating to this Agreement only upon seven days' advance notice to
the other party unless injunctive or other equitable relief is sought. Each of
Masada and Centennial hereby agree that any legal proceedings based hereon, or
arising out of, under, or in connection with, this Agreement, or any course of
conduct, course of dealing, statements (whether verbal or written) or actions
of Masada or Centennial or any of their respective affiliates shall be
submitted, at the election of the party initiating the proceeding with respect
to such dispute, either to arbitration or to judicial determination. Any
arbitration shall be conducted in Denver, Colorado, if Masada is the party
initiating the proceeding, or in Birmingham, Alabama, if Centennial is the
party initiating the proceeding, in accordance with the then existing rules of
the American Arbitration Association ("AAA"). In any arbitration pursuant to
this Agreement, the award or decision shall be rendered by a majority of the
members of an arbitration panel consisting of three members chosen in
accordance with the then existing rules of the AAA. The award or decision of
the arbitration panel pursuant to this Section 11.6 shall be binding and
conclusive on the parties, provided that enforcement of such award or decision
may be obtained in any court having jurisdiction over the party against whom
such enforcement is sought.
11.7 RELATIONSHIP OF THE PARTIES. The parties do not intend to
create by this Agreement, and nothing in this Agreement shall be interpreted to
create, a joint venture, partnership, or principal and agent relationship.
11.8 NO THIRD PARTY BENEFICIARIES. This Agreement is intended for
the sole benefit of the parties thereto and their assigns. The parties
acknowledge and agree that there are no intended third party beneficiaries of
this Agreement and that no third party may enforce any terms or conditions of
this Agreement or claim any rights thereunder.
11.9 COUNTERPARTS. This Agreement may be executed in separate
counterparts, each of which will be deemed an original, but all of which
together constitute one and the same instrument.
* * * *
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IN WITNESS WHEREOF, the parties hereto, by their duly authorized
representatives, have executed this Agreement as of the Effective Date first
above written.
MASADA CENTENNIAL
By: /s/ Xxxxx X. Xxxxxxx By:/s/ Xxxxxxxxx X. Xxxxxxxx
------------------------------- -----------------------------
Name: Xxxxx X. Xxxxxxx Name: Xxxxxxxxx X. Xxxxxxxx
Title: President Title: President
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