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EXHIBIT 10.15
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement") is entered into as of this
18th day of April, 1997, by and between Interpore International, a California
corporation ("Licensor"), and Steri-Oss Inc., a Delaware corporation
("Licensee").
RECITALS
WHEREAS, Licensor is the owner of trademarks and trade dress for the
xxxx, symbol, design and name "Interpore" (the "Name") and has received a
Trademark from the United States Patent & Trademark Office with respect to the
Name (the "Trademark");
WHEREAS, Licensee and Interpore Dental, Inc., a wholly-owned
subsidiary of Licensor, have entered into that certain Asset Purchase Agreement
dated April 18, 1997 (the "Asset Purchase Agreement") (and certain ancillary
agreements, including a Distribution Agreement, dated April 18, 1997 (the
"Distribution Agreement")), pursuant to which Licensee has purchased the
Purchased Assets and assumed the Assumed Liabilities (as such terms are defined
in the Asset Purchase Agreement) of Interpore Dental, Inc.;
WHEREAS, Licensee desires to acquire a limited interest in the Name
and marks utilizing the Name, and Licensor desires to license the use of the
Name and marks utilizing the Name to Licensee, all on the terms and subject to
the restrictions and conditions set forth below;
AGREEMENT
NOW, THEREFORE, in consideration of the foregoing recitals, and for
other good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties agree as follows:
1. Non-exclusive License Grant. Subject to the terms and
conditions of this Agreement, Licensor hereby grants to Licensee a non-
exclusive (except as provided in Section 2(b)), world-wide, royalty-free
license to use the name "Interpore", for the purpose and subject to the
restrictions and conditions set forth in this Agreement, during the period set
forth in Section 9 hereof.
2. License Scope. The license is limited to the use of the Name
in conjunction with the operation of the Business and activities under the
Distribution Agreement (as defined in the Asset Purchase Agreement). The
License is further limited to the use of the Name in conjunction with the
additional terms and as part of the phrases set forth on Exhibit A hereto.
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a. The Name, when used in accordance with and subject to
the restrictions set forth in this Agreement, shall constitute the
"Licensed Xxxx." The license granted hereby is limited to the
Licensed Xxxx.
b. Licensee's rights under this license are exclusive
even as against Licensor as they relate to the use of the License
Xxxx, but shall not in any way restrict Licensor or any other licensee
of Licensor from any other use of the Name; provided, however, that
Licensor shall have six months to use the Licensed Xxxx as part of the
Charter of its subsidiary, Interpore Dental, Inc., a California
corporation, after which time such Charter shall be amended to delete
the Licensed Xxxx.
3. Sublicenses and Assignments. The license granted by this
Agreement shall not include the right to grant sublicenses. The license shall
be assignable only to Affiliates of Licensee in accordance with the provisions
of Section 14(l), and there shall be no more than one user of the Trademark at
any time under this License. Any attempted assignment of this license to other
than Affiliates of the Licensee, Section 14(l) shall be void and convey no
rights to the purported assignee. The term "Affiliate" shall mean a person
that, directly or indirectly through one or more intermediaries, controls or is
controlled by, or is under common control with, the person specified. When
used in the forgoing sentence, the term "control" shall mean the possession,
directly or indirectly, of the power to direct or cause the direction of the
management and policies of a person, whether through the ownership of voting
securities, by contract or otherwise.
4. Licensed Use.
a. Licensee agrees to use the Licensed Xxxx in a
commercially acceptable and reasonable manner and style to protect and
enhance the image and reputation of the Licensed Xxxx and Licensor,
and to ensure that no such use shall reflect adversely upon the
goodwill, prestige or reputation of the Licensed Xxxx or Licensor.
b. The cost of all advertising for products which contain
the Licensed Xxxx and are distributed by Licensee shall be borne by
Licensee.
c. In the event that Licensor shall object to any label,
packaging or advertising as violating the provisions of this Section
4, Licensor shall notify Licensee in writing of any objection and
afford Licensee sixty (60) days to introduce new labels, packaging,
marketing or advertising.
d. Licensee shall use appropriate copyright and trademark
notices, which identify Licensor as the owner of such copyrights and
trademarks, on all the labels and advertising and all other written
embodiments of the Licensed Xxxx, including the federal trademark
notice "(R)" in the United States.
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5. Quality Control Standards.
a. The parties acknowledge and agree that great value is
placed on the Licensed Xxxx and the goodwill associated therewith, that
the consuming public and the industry now associate the Licensed Xxxx
with products and services of consistently high quality, and that the
terms and conditions of this Agreement are necessary and reasonable to
assure the consuming public and the industry that all goods and
services provided hereunder are of the same consistently high quality
as the goods and services currently offered by Licensor under the
Licensed Xxxx.
b. Licensee shall use the Licensed Xxxx only in
connection with goods or services of at least equivalent quality to the
goods or services currently offered by Licensor.
c. Upon Licensor's reasonable request, Licensee shall
furnish to Licensor, at no expense to Licensor, one (1) sample of all
items used in connection with the Licensed Xxxx, including, but not
limited to, a sample of each product sold under the Licensed Xxxx, as
well as packaging, labels, stickers, advertising, displays and
promotional or marketing literature and materials. Following its review
of such items, Licensor agrees to return the same to Licensee.
d. Licensee shall not cause or permit the use of the
Licensed Xxxx on any products or in any manner that does not meet the
standard of quality of those samples of items furnished to and approved
by Licensor pursuant to Section 5(c) hereof.
e. Licensee shall use the Licensed Xxxx on and in
connection with the goods and services comprising the Business, and the
packaging, advertising and promotion thereof, in a manner consistent
with proper trademark usage.
6. Protection of Licensed Xxxx.
a. Apart from actions for fraud, misrepresentation or
the like, Licensee shall not, during the term of this Agreement or
thereafter, contest the validity of Licensor's rights to the Licensed
Xxxx, nor willingly become an adverse party to litigation in which such
rights are contested.
b. Licensor shall not, during the term of this
Agreement, say, write, or do anything which would diminish the goodwill
of (i) Licensee, its officers or employees or (ii) Licensee's
Affiliates (as defined in Section 3 hereof) or their officers or
employees or (iii) the Licensed Xxxx. Licensee shall not, during the
term of this Agreement, say, write, or do anything that would diminish
the goodwill of (i) Licensor, its officers or employees, (ii)
Licensor's Affiliates or their officers or employees, or (iii) the
Licensed Xxxx, Name or Trademark.
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c. Licensee shall promptly notify Licensor of any uses
of the Names or related marks which may constitute infringement or
imitation by others of which Licensee has actual knowledge, and
Licensee shall promptly notify Licensor by written notice of any claim,
demand, or suit related to the Licensed Xxxx. Licensor may take
whatever action, if any Licensor deems appropriate to protect
Licensor's rights, and Licensee shall fully cooperate with Licensor in
such action.
d. In the event that any person or entity infringes upon
any rights granted to Licensee by Licensor pursuant to this Agreement,
Licensor shall have the right, at its own expense, to undertake and
prosecute appropriate action necessary to protect the rights of the
parties to this Agreement and to protect Licensor's right to the
Licensed Xxxx.
e. Licensor, at its sole discretion, may prosecute any
such passing off, infringement, imitation, or similar action in its own
name, provided that, upon the request of Licensor and at Licensor's
expense, Licensee shall assist Licensor to the extent reasonably
necessary in the procurement of any protection, including but not
limited to being joined as a necessary or desirable party to such
action or proceedings, in which event the representation of Licensee by
counsel shall be the sole responsibility and at the expense of
Licensor.
f. Failure by Licensor to prosecute such infringement,
imitation or similar action shall not constitute a breach of this
Agreement. Should Licensor fail to do so, Licensor hereby grants the
power and right to Licensee to undertake such action or prosecute such
infringement, imitation, or similar action, subject to Licensor's
reasonable approval. Licensee shall not, however, initiate any such
action or prosecution without the prior written consent of Licensor.
g. Licensee shall have no claim against Licensor for
damages or otherwise, by reason of any determination by Licensor not to
take action or arising out of any settlement or resolution of such
action, nor shall any such action, settlement, or resolution affect the
validity or enforceability of this Agreement.
7. Ownership of Xxxx. Licensee agrees that ownership of the Name
and Trademark and the goodwill relating and appurtenant thereto, and the
trademark registrations in the United States and elsewhere therefor, shall
always remain vested in Licensor, both during the period of this Agreement and
thereafter. Licensee acknowledges and agrees that Licensor shall own all trade
names, trademarks, service marks or similar marks utilizing the Name that are
developed, created, invented or otherwise originated by Licensee during the
period in which Licensee conducts the Business. Licensee shall have the right
to apply for valid registrations in the name of Licensor of such developed
trade names, trademarks, service marks or similar marks. All use of the
Licensed Xxxx shall inure to the benefit of Licensor.
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8. Representations and Warranties.
a. Licensor warrants that Licensor is not aware of any
registrations or applications for registration for trademarks, trade
names, service marks, logos or designs related to or similar to the
Licensed Xxxx, other than applications or registrations initiated or
approved by Licensor.
b. Licensee warrants that heretofore Licensee has not
developed or attempted to develop rights in the Licensed Xxxx.
c. Licensee warrants and agrees that it will not
undertake or seek to obtain any registrations of trademark or other
intellectual property rights pertaining to the Names, the Trademarks,
or the Licensed Xxxx.
d. Licensor warrants that it is the sole owner of the
Licensed Xxxx.
e. Licensor warrants that it has the right, power and
authority to enter into this Agreement with Licensee.
f. Licensee warrants that it has the right, power and
authority to enter into this Agreement with Licensor.
9. Term. This Agreement shall continue in effect for 2 years
from the date first written above; provided, however, that Licensee shall
continue to have the right to use the Licensed Marks in connection with the
sales of products under the Distribution Agreement of even date herewith
between Licensee and Interpore Orthopaedics, Inc. for the term of such
Distribution Agreement and any extension thereof.
10. Termination. This Agreement may be terminated by Licensor for
cause immediately upon the occurrence of any of the following events:
a. If Licensee breaches any of its material obligations
under this Agreement, including a breach of the provisions of Sections
4 or 5 hereof, and fails to cure such breach within 60 days of receipt
of written notice describing the breach (or such other time period as
set forth in Sections 4 or 5 hereof);
b. If Licensee seeks protection under any bankruptcy,
receivership, trust deed, creditors arrangement or other comparable
proceeding, or if any such proceeding is instituted against the other
party (and not dismissed within 60 days).
c. If Licensee or any Affiliate of Licensee grants or
purports to grant any sublicense;
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d. If Licensee or any Affiliate of Licensee offers for
sale products containing the Licensed Xxxx which fail to meet the
standard of quality required by Licensor, except when such failure is
inadvertent and adequate steps are promptly taken to correct the
operations which led to such failure;
e. If, except as otherwise provided in this Agreement,
Licensee or any Affiliate of Licensee assigns or purports to assign
any of its rights of; or
f. If Licensee or any Affiliate of Licensee takes or
permits any action which has a material adverse effect on the
business, reputation or goodwill of Licensor.
11. Obligations of Licensee Upon Termination or Expiration.
Upon the expiration or earlier termination of this Agreement,
all rights of Licensee hereunder shall terminate, and Licensee agrees that:
a. Licensee shall amend its Certificate of Incorporation
or other charter document to change its name to a name which does not include
the Name or any word or words which may be confused with the Name, if prior to
the expiration of this Agreement any such charter documents were created or
amended to include the Name or any word or words which may be confused with the
Name;
b. Licensee shall thereafter cease and desist from
operating or otherwise representing itself, through marketing materials,
product labeling or otherwise, in any way including the Names or any word or
words which may be confused with the Names;
c. Licensee shall cease the manufacture of any products
containing the Licensed Xxxx;
d. Licensee shall delete any reference to the Licensed
Xxxx in any advertising or promotional material, including any reference to
having previously been a licensee of the Licensed Xxxx; and
e. Licensee shall deliver to Licensor all packaging and
other materials (other than actual product bearing the Licensed Xxxx) bearing
the Licensed Xxxx, for destruction or disposal as Licensor shall elect.
12. Purchase of Materials. Licensee may desire to
purchase, from time-to-time, materials and/or furnished products from Licensor
under a separate supply agreement for such materials and products. To the
extent that such purchases are made, Licensee's failure to make payments in
accordance with the terms of purchase set forth therein shall further entitle
Licensor to terminate this Agreement and the license hereunder. Such
termination shall take effect automatically upon sixty (60) days written notice
if Licensee does not correct such failure to make payments within said sixty
(60) day period.
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13. Products Liability.
a. Compliance with Laws. Licensee agrees that it will
comply with and abide by all applicable country, state and local laws,
ordinances, and regulations and all requirements of applicable
government agencies in conducting its business and in distributing and
selling the products bearing or marketed using the Licensed Xxxx.
b. Insurance. Licensee shall provide products liability
insurance insuring against claims for personal injury resulting from
products bearing or marketed using the Licensed Xxxx with a limit per
occurrence for personal injury and/or property damage of $1,000,000
and an aggregate limit of $3,000,000, with Licensor being shown as an
Additional Named Insured on said policy. Licensee shall provide
Licensor with a certificate evidencing such insurance.
c. Indemnity.
(i) Licensee. Licensee shall indemnify and hold
Licensor, its Affiliates, principals, officers, shareholders, trustees,
directors, employees and agents, harmless from any and all losses, liabilities,
expenses (including reasonable attorneys' fees), costs, penalties, obligations,
claims, damages or judgments arising out of, in any way connected with, or
resulting from the promotion, marketing, use, manufacture, design,
distribution, sale or provision of goods or services by or on behalf of
Licensee, or its Affiliates, employees, officers, shareholders or agents,
bearing the Licensed Xxxx. This indemnity shall apply similarly to claims made
by third-parties. Notwithstanding the foregoing, Licensee's indemnification of
Licensor shall not extend to claims arising exclusively from Licensee's use of
the Licensed Xxxx in a manner permitted by the provisions of this Agreement.
(ii) Licensor. Licensor shall indemnify and hold
Licensee, its Affiliates, principals, officers, shareholders, trustees,
directors, employees and agents, harmless from any and all losses, liabilities,
expenses (including reasonable attorneys' fees), costs, penalties, obligations,
claims, damages or judgments arising out of Licensee's use of the Licensed Xxxx
in a manner permitted by the provisions of this Agreement.
14. Miscellaneous.
a. Indemnification. In addition to the provisions set
forth in Section 13(c) hereof, each party agrees to indemnify, defend
and hold harmless the other party, its Affiliates, principals,
trustees, officers, shareholders, directors, employees and agents from
any and all losses, liabilities, expenses (including reasonable
attorneys' fees), costs, penalties, obligations, claims, damages or
judgments arising from the other party's failure to observe or perform
any of its obligations set forth herein or relating hereto, including
the acts and omissions of the
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other party's Affiliates, principals, officers, shareholders, trustees,
directors and employees.
b. Independence of Parties. The status of the parties
under this Agreement shall be that of independent contractors and
neither party shall be deemed or construed to be an employee, agent,
partner or legal representative of the other party for any purpose
whatsoever. Neither party shall have the right or authority to assume
or otherwise create any obligation or responsibility, express or
implied, on behalf of or in the name of the other party or to bind the
other party in any manner or thing whatsoever.
c. Further Assurances. Each party shall execute and
deliver such further certificates, agreements and other documents and
take such other actions as may be necessary or appropriate to
consummate or implement the transactions contemplated hereby or to
evidence such events or matters.
d. Notices. Any notice required by this Agreement shall
be in writing and sent via guaranteed overnight carrier, courier
delivery or certified mail, return receipt requested, and addressed as
shown below. Any such notice will be effective on the date delivered.
Licensor:
Interpore International
000 Xxxxxxxxxx Xxxxx
Xxxxxx, Xxxxxxxxxx 00000
Attention: President
Fax:(000) 000-0000
with copies to:
Xxxxxx & Xxxxxxx
000 Xxxx Xxxxxx Xxxxx
Xxxxx Xxxx, XX 00000
Attn: Xxxxxxx Xxxx, Esq.
Fax:(000) 000-0000
Licensee:
Steri-Oss Inc.
00000 Xxxx Xxxx Xxxxx
Xxxxx Xxxxx, XX 00000
Attn: President
Fax:(000) 000-0000
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with copies to:
Xxxxxxxx & Xxxxxx LLP
0000 XxxXxxxxx Xxxxx, Xxxxx 000
Xxxxxxx Xxxxx, XX 00000
Attn: Xxxxxx X. Xxxxxx, Esq.
Fax:(000) 000-0000
e. Severability. Should any part or provision of this
Agreement be held unenforceable or in conflict with the law of any
jurisdiction, the validity of the remaining parts or provisions shall
not be affected by such holding, unless such unenforceability
substantially impairs the benefit of the remaining portion of this
Agreement. In addition, the parties agree to negotiate in good faith
substitute enforceable provisions which most clearly affect the
parties' intent in entering into this Agreement.
f. Counterparts. This Agreement may be executed in one
or more counterparts, each of which shall be deemed an original, but
all of which together shall constitute one and the same instrument.
g. Governing Law. This Agreement shall be governed and
construed in accordance with the internal laws of the State of
California applicable to contracts made and performed in California
(without regard to its principles of conflicts of laws).
h. Integration. This Agreement (together with the
Distribution and License Agreement), embodies the entire understanding
of the parties as it relates to the subject matter contained herein
and as such, supersedes any prior agreement or understandings between
the parties relating thereto. No amendment or modification of this
Agreement shall be valid or binding upon the parties unless signed by
their respective, duly authorized officers.
i. Arbitration; Attorney's Fees. Any controversy or
claim arising out of this Agreement or a breach thereof shall be
settled by mandatory, final and binding arbitration in the County of
Orange, State of California, and in accordance with the rules of the
American Arbitration Association, and judgment rendered by the
arbitrator(s) may be entered in any court having jurisdiction. The
prevailing party shall be entitled to receive from the other party, in
addition to any other relief that may be granted, reasonable
attorneys' fees, costs and expenses incurred in the arbitration or
action.
j. Remedies; Waiver. To the extent permitted by law,
all rights and remedies existing under this Agreement and any related
agreements or documents are cumulative to, and not exclusive of, any
rights or remedies otherwise available under applicable law. No
failure or delay on the part of either party in the exercise
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of any right or privilege hereunder shall operate as a waiver thereof,
nor shall any single or partial exercise of any such right or
privilege preclude other or further exercise thereof or of any other
right or privilege. No waiver shall be binding unless executed, in
writing, by the party making the waiver.
k. Headings. The headings used in this Agreement are
for convenience only and are not to be used in interpreting the
obligations of the parties under this Agreement.
l. Assignment. Except for assignment by Licensor to an
entity that acquires all or substantially all of the assets (including
the Trademark) or stock of Licensor, or by Licensee to an Affiliate
upon the prior written consent of Licensor which shall not be
unreasonably withheld, neither party may assign any interest or
obligation under this Agreement without the other party's prior
written consent. Subject to the foregoing, this Agreement shall be
binding on and shall inure to the benefit of the parties and their
respective successors and assigns.
m. Remedies. The parties hereto agree that monetary
damages would be an inadequate remedy for any breach or threatened
breach of any term or provision of this Agreement relating to the use
or mis-use of the Names or related marks. Accordingly, those terms or
provisions, whether or not this Agreement has expired or has been
previously terminated, may be enforced by the preliminary or
permanent, mandatory or prohibitory injunction or other order or
decree of a court of competent jurisdiction. This Section shall not
be construed to limit or derogate from any equitable or legal remedy
authorized by any applicable law.
IN WITNESS WHEREOF, the parties hereto attest that they have been duly
authorized to execute this Agreement and have so executed this Agreement made
effective as of the date first above written.
INTERPORE INTERNATIONAL, a California
corporation
By:____________________________________
Xxxxx X. Xxxxxx
President
STERI-OSS INC., a Delaware corporation
By:____________________________________
Xxxxxxx X. Xxxxxxxx
President
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EXHIBIT A
Additional Terms Phrases
Dental Interpore Dental
Dental, Inc. Interpore Dental, Inc.
Hex Interpore Hex
Threaded Interpore Threaded
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