Exhibit 10.13
LICENSE AGREEMENT DATED FEBRUARY 10, 1997 BETWEEN
THE COMPANY AND GENFOOT, INC. AND GENFOOT AMERICA, INC.
[INFORMATION PLACED IN BRACKETS [ ] HAS BEEN
OMITTED IN ACCORDANCE WITH A CONFIDENTIAL
TREATMENT REQUEST PURSUANT TO RULE 406 AND
HAS BEEN FILED SEPARATELY WITH THE COMMISSION
LICENSE AGREEMENT
This License Agreement (the "Agreement"), entered into this 10th day of
February, 1997 (referred to as the "Agreement") is between:
Genfoot, Inc., and Genfoot America, Inc., corporations doing business at 000
Xxxxxx' xx Xxxxxx, Xxxxxxxx (Xxxxxx), Xxxxxx X0X0X0, hereinafter collectively
referred to as "Genfoot", and
Xxxxxx Technologies, Inc., a corporation organized under the laws of the State
of North Carolina, with its principal place of business at 000 Xxxxx Xxxx
Xxxxxx, Xxxxxxxx, Xxx Xxxx 00000, hereinafter referred to as "Frisby".
RECITALS
WHEREAS, Frisby is the exclusive worldwide licensee of certain patented and
proprietary thermal management technologies and information relating to
microencapsulated phase change materials (hereinafter "MicroPCMs"); and
WHEREAS, Genfoot wishes to sublicense Xxxxxx'x technologies relating to
MicroPCMs for Genfoot's non-exclusive use in selected segments of the worldwide
footwear marketplace; and
NOW, THEREFORE, in consideration of the premises and covenants herein contained,
receipt of which is hereby acknowledged, and intending to be legally bound
hereby, the parties hereto agree as follows:
ARTICLE I - DEFINITIONS
1.01 MicroPCMs. "MicroPCMs" means microencapsulated phase change materials.
1.02 Thermasorb. "Thermasorb" means Thermasorb(TM) which is the name of Xxxxxx'x
thermal additive products based upon its licensed MicroPCM technology.
Thermasorb is a trademark of Frisby.
1.03 ComforTemp. "ComforTemp" means ComforTemp(TM) which is the name of Xxxxxx'x
insulating foam products based upon Xxxxxx'x licensed MicroPCM technology.
ComforTemp is a trademark of Frisby.
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1.04 Technology. "Technology" means all of Xxxxxx'x interest in any inventions,
developments, proprietary information, patents, trademarks, trade names, trade
secrets, know-how and improvements, whether present or future, relating to
MicroPCMs, Thermasorb, and ComforTemp and their incorporation into commercial,
industrial and military products. The Technology does not include fibers and
fabrics coated or embedded with MicroPCMs.
1.05 End-Use Product. "End-Use Product" means boots or other footwear containing
the Technology or service performed incorporating the Technology into a product
that is presently, or may one day be, a marketable product or service of
Genfoot. End-Use Products are specifically limited to the following style of
footwear: Cold Weather Insulated Pac Boots with Rubber Bottoms.
1.06 Patent. "Patent" means all patents and applications for patents, including,
but not limited to, those that are identified in Exhibit "B" and foreign
counterparts thereof, as well as all continuations, continuations-in-part,
divisions and renewals thereof, all patents which may be granted thereon, and
all reissues, reexaminations, extensions, patents of additions and patents of
importation thereof, and any common law rights associated therewith.
1.07 Proprietary Information. "Proprietary Information" means information and
materials, whether or not patentable or copyrightable, to which Genfoot
receives, or has received, access or which Genfoot develops, or has developed,
as either a direct or indirect result of this Agreement as follows: (i)
production processes, marketing techniques, purchasing or supply information,
price lists, financial information, customer names and requirements, customer
data and other information relating to the MicroPCMs, Thermasorb, ComforTemp
and/or any derivation thereof; (ii) discoveries, context and ideas, and the
embodiment thereof, including without limitation the nature and results of
research and development activities, processes, formulations, techniques and
"know how"; (iii) any other materials or information related to the MicroPCMs,
Thermasorb, ComforTemp and/or any derivation thereof; and (iv) all inventions
and ideas which are derived from, or relate to, Genfoot's access to or knowledge
of any of the above-enumerated materials and information.
1.08 Effective Date. This Agreement is effective on the date it is duly signed
by both parties and any cash portion of a License Fee required to be paid at
time of signing this Agreement is actually received by Frisby.
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ARTICLE II - GRANT OF LICENSE
2.01 Non-Exclusive License. Frisby grants to Genfoot a worldwide non-exclusive
license to utilize the Technology in order to design, develop, manufacture,
and/or assemble the End-Use Products. This license includes the right to use
Xxxxxx'x ComforTemp and Thermasorb Trademarks in the promotion, advertising, and
marketing of the End-Use Products. This License is non-exclusive with respect to
utilizing the Technology in the End-Use Products and does not preclude or limit
Frisby from licensing the Technology to others for products and services,
including products or services similar to the End-Use Products. Genfoot will not
disclose the Technology to any subcontractor unless that party has agreed in
writing to hold all information in confidence and to use the Technology solely
for the purpose of designing, developing, manufacturing, assembling or selling
the End-Use Product or components thereof for Genfoot. Sublicensing of the
Technology by Genfoot is expressly prohibited.
2.02 Term of Agreement. The non-exclusive license granted herein is for a term
of two (2) years from the Effective Date. Genfoot has the right to extend the
license for an additional one (1) year; provided, that by September 30, 1998,
Genfoot has purchased and taken delivery of Three Hundred Seventy Five Thousand
(375,000) square feet of ComforTemp. Genfoot may exercise this right to extend
the license by delivering to Frisby a written notice extending this license. The
written notice must be accompanied by proof that Genfoot has purchased and taken
delivery of at least 375,000 square feet of ComforTemp. Frisby reserves the
right to request and approve reasonable and verifiable documentation that at
least 375,000 square feet of ComforTemp has been purchased and delivered to
Genfoot. If the written notice is not delivered by September 30, 1998, the right
to extend the license expires.
2.03 Relationship of Parties. Each party is an independent contractor and under
no circumstances shall any party be deemed to be a legal representative, express
or implied agent, or employee of another party. No act of any party, and no
assistance given from one party to the other, shall be construed to alter this
independent contractor relationship.
ARTICLE III - PROVISION OF COMFORTEMP AND THERMASORB
3.01 Provision of Thermasorb and ComforTemp. The sole source of supply for all
Thermasorb and ComforTemp required by Genfoot (or any of its subcontractors) to
support product development and production shall be Frisby, unless Frisby
provides an express written waiver of that right. Any waiver of that right will
be only as to a particular order and not of Xxxxxx'x right to be the sole source
of supply under this Agreement. Frisby shall arrange for an adequate and
available supply of Thermasorb and ComforTemp to Genfoot, to be delivered FOB at
the site of manufacture of the Thermasorb or ComforTemp. Frisby agrees to supply
all such products to Genfoot at terms no less favorable than the most favorable
terms offered to comparable commercial customers during the term of this
Agreement.
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3.02 Annual Purchase Minimums. At the time of signing this Agreement, Genfoot
shall provide Frisby with a purchase commitment letter specifying the total
linear yardage of each variety of ComforTemp that Genfoot will purchase during
the two (2) year term of this license. Genfoot's specific purchase orders made
during the term of this Agreement will be credited against the total sum
specified in the purchase commitment letter. Specific purchase orders for any
variety of ComforTemp must be in minimum units of One Thousand (1,000) linear
yards. The purchase price for each variety of ComforTemp shall be based on the
then current price list as applied to the purchase volume level specified in
Genfoot's initial purchase commitment letter. If Genfoot does not purchase the
full amount of each variety of ComforTemp as specified in the purchase
commitment letter, Genfoot will be invoiced on or about December 31, 1998, for
the price difference between the volumes released in each variety of ComforTemp
and the volumes stated for each variety in the purchase commitment letter. The
invoice price will be based on the then applicable price list.
3.03 Delivery of Product. Specific purchase orders must be issued to Frisby not
less than ninety (90) days before Genfoot needs the shipment on-dock as
expressly communicated to Frisby at time of issuing the specific purchase order.
Genfoot agrees to maintain an adequate on-hand inventory of ComforTemp to
support all its orders due within ninety (90) days.
ARTICLE IV - PAYMENTS
4.01 Payments to Frisby. All amounts owed by Genfoot to Frisby for supply of
Thermasorb and ComforTemp or any products or services related thereto provided
by Frisby to Genfoot shall be paid within thirty days after billing by Frisby.
4.02 License Fees. Genfoot agrees to perform each of the following actions as a
License Fee ("License Fee") for this Agreement:
(a) design and produce at least one type of End-Use Product for
inclusion in the Genfoot display at the Outdoor Retailer's Show in
January of 1997;
(b) aggressively promote the sale of the End-Use Products described
directly above in subsection (a) above by, at a minimum,
1. prominently featuring the ComforTemp(TM) logo along with the
End-Use Products in Genfoot's 1997 catalog;
2. displaying the End-Use Products at all trade shows where the
products of Genfoot will be displayed;
3. prominently featuring ComforTemp(TM) and the ComforTemp(TM)
logo in all brochures, advertising, and promotional
literature that includes the End-Use Products.
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4.03 Records Inspection. Genfoot shall maintain adequate books and records in
connection with activity under this Agreement. Frisby may audit the relevant
books and records of Genfoot to ensure compliance with the terms of this
Agreement upon reasonable notice to Genfoot. Any such audit shall be conducted
during regular business hours at Genfoot's offices and shall not interfere
unreasonably with Genfoot's business activities.
ARTICLE V - INTELLECTUAL PROPERTY
5.01 Xxxxxx'x Intellectual Property. Genfoot acknowledges that the Technology
and the chemical formulation of the Technology is proprietary and confidential
and constitutes a valuable commercial asset of Frisby. Genfoot, and any of its
related parties, consultants, subcontractors, shall not incorporate the
Technology in any applications other than those End-Use Products as specifically
licensed to Genfoot herein. Proprietary information disclosed by either party
hereunder shall be subject to the terms of the Reciprocal Secrecy Agreement
between the parties which is attached to this Agreement, and made a part of it,
as Exhibit "C".
5.02 Reports of Technical Results. Genfoot agrees that all information and
evaluation results generated by Genfoot, its consultants, subcontractors,
affiliates, or sublicensees, or otherwise obtained during the term of this
Agreement, which are related to the Technology, shall be the exclusive property
of Frisby, with rights to same licensed to Genfoot for the term of this
Agreement.
5.03 Reporting Obligations. If Genfoot or its employees, contractors,
affiliates, agents, or sublicensees makes a discovery or invention during the
term of this Agreement which relates to the Technology, Genfoot shall promptly
make such discovery known to Frisby in writing. If the parties jointly develop,
or Genfoot independently develops, patentable intellectual property related to
the Technology, then that technology will be deemed Technology under this
Agreement and licensed to Genfoot accordingly.
5.04 Trademarks. ComforTemp(TM) and Thermasorb(TM) are Xxxxxx'x Trademarks
regarding the Technology licensed in this Agreement. Except for the licensed
right to use these Frisby Trademarks, during the term of this Agreement, Genfoot
shall not obtain any right, title or interest to Xxxxxx'x Trademarks. All
licensed products sold by Genfoot under the terms of this Agreement shall
appropriately reference one or more of Xxxxxx'x Trademarks for ComforTemp or
Thermasorb, as designated by Frisby. Further, Genfoot shall not obtain any
Trademarks or use any Tradenames that are similar thereto at any time.
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ARTICLE VI - REPRESENTATIONS AND WARRANTIES
6.01 Representation. Frisby represents that it has the right to license the
Technology to Genfoot and that it will pay any renewal fees necessary for the
maintenance of the Patents. If the use of the Technology is enjoined, Frisby
shall provide a suitable substitute or refund any License Fees paid hereunder
ARTICLE VII - TECHNICAL AND MARKETING ASSISTANCE
7.01 Support. Each party agrees to use its best efforts in support of the
development and introduction of new products which incorporate the Technology,
as well as the promotion and sales of the End-Use Products. As to Genfoot, this
will mean the active development and introduction of new products incorporating
the Technology, as well as the marketing and promotion of the End-Use Products.
For Frisby, this will mean the promotion of the End-Use Products as part of its
promotions for ComforTemp and Thermasorb, including promotions to the United
States government. Frisby further agrees, subject to its sole discretion, to
support Genfoot at a reasonable number of sales presentations and trade shows by
providing Frisby personnel to answer technical questions concerning the
Technology posed by potential customers.
ARTICLE VIII - MISCELLANEOUS PROVISIONS
8.01 Effect of Waiver. Neither an express nor implied waiver of any breach of
any term, condition, or obligation of this Agreement shall be construed as a
waiver of any subsequent breach of that term, condition, or obligation, or any
other term, condition, or obligation of this Agreement of the same or different
nature.
8.02 Notices. Any notice provided for in this Agreement must be in writing. If
the notice is given by certified mail, the notice will be deemed to have been
given when such certified letter, properly addressed, is mailed. If such notice
is given by any other means, it will be deemed to have been given at the time of
receipt by the addressee. If such notice is to be given to Genfoot, copies shall
be addressed to Mr. Xxxxxx Xxxx c/o Genfoot, Inc., 000 Xxxxxx' xx Xxxxxx,
Xxxxxxxx (Xxxxxx), Xxxxxx X0X0X0. If given to Frisby, copies shall be addressed
to Xx. Xxxx Xxxxxx, Chief Executive Officer, Xxxxxx Technologies, Inc., 000 X.
Xxxx Xxxxxx, Xxxxxxxx, XX 00000. Either party hereto may at any time, by thirty
(30) days written notice to the other, designate any other address in place of
those provided in this paragraph.
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8.03 Severability. It is understood and agreed by the parties to this Agreement
that if any part, term or provision of this Agreement is held to be illegal by a
state or federal court of competent jurisdiction or in conflict with applicable
law, the validity of the remaining portions of provision shall not be affected,
and the rights and obligations of the parties hereto shall be construed and
enforced consistent with the intent of this Agreement.
8.04 Interpretation Presumption. This Agreement has been negotiated by the
parties hereto or by the respective attorneys for each party. The parties
represent and warrant to one another that each has, by counsel or otherwise,
actively participated in the finalization of this Agreement, and in the event of
a dispute concerning the interpretation of this Agreement, each party hereby
waives the doctrine that an ambiguity should be interpreted against the party
which has drafted the document.
8.05 Remedies and Defaults. Each party acknowledges and agrees that the remedies
provided in this Agreement shall be in addition to, and not in lieu of, any
other remedies provided at law or in equity, including, but not limited to, such
injunctive or other equitable relief as may be deemed appropriate by a court of
competent jurisdiction. If a party defaults in the performance of its
obligations under this Agreement, including but not limited to payment of any
monies hereunder for License Fees, or materials supplied, and that party fails
to cure such default within thirty (30) days after receipt of written notice of
such default, the non-defaulting party shall have the right to immediately
terminate this Agreement and the license provided herein. In the event such a
termination occurs, the terms of the Reciprocal Secrecy Agreement, a copy of
which is attached to this Agreement as an exhibit, shall remain in full force
and effect.
8.06 Successors and Assigns. The parties will have the right to assign their
respective rights and obligations under this Agreement to third parties;
provided, however, Genfoot shall not assign its obligations or interests under
this Agreement without prior written approval from Frisby. This Agreement shall
inure to the benefit of the successors, heirs, representatives, or assigns of
the parties subject to the restrictions contained herein.
8.07 Choice of Law and Dispute Resolution. This Agreement is to be governed by,
and interpreted in accordance with, the laws of the State of New York (USA). All
disputes and differences of any kind arising under this Agreement which can not
be settled amicably by the parties shall be submitted to arbitration in New York
City, New York. The arbitration shall be finally settled in accordance with the
rules of Arbitration of the American Arbitration Association by one or more
arbitrators appointed in accordance with the above mentioned rules. The decision
of the arbitration tribunal shall be final and binding upon the parties and may
be enforced in any court of competent jurisdiction in the United States of
America or Canada, and no party shall seek redress against the other in any
court or tribunal except solely for the purpose of obtaining execution of the
arbitration award or of obtaining a judgment consistent with the award. The
parties shall bear their own costs and expenses related to any arbitration or
legal proceeding and shall share equally in the costs, expenses and fees paid or
reimbursed to the arbitrator(s).
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8.08 Complete Agreement. This document, including its Exhibits, comprises the
entire agreement with respect to the subject matter hereof and supersedes all
negotiations, representations and warranties, commitments, offers, contracts and
writings prior to the date of this Agreement. Otherwise, the parties to this
Agreement are not to be bound by any representations or warranties other than
those set forth herein, including the Reciprocal Secrecy Agreement which is an
exhibit to this Agreement, or in a written amendment to this Agreement
hereinafter entered into and executed by each party.
8.09 Counterparts. This Agreement may be executed in one or more counterparts,
and each deemed an original, but all of which constitute one and the same
instrument.
8.10 Warranty of Authority. The individuals actually executing this Agreement
personally represent and warrant that they have the necessary power and
authority to execute this Agreement on behalf of the party they represent, and
that their signatures are sufficient to make this Agreement the binding and
enforceable obligation of such party.
IN WITNESS WHEREOF, THE PARTIES HERETO HAVE CAUSED THIS AGREEMENT TO BE DULY
EXECUTED.
GENFOOT, INC. XXXXXX TECHNOLOGIES, INC.
By: /s/ Xxxxxx Xxxx By: /s/ Xxxxxxx X. Xxxxxx
---------------------- ------------------------------------
Xxxxxx Xxxx, President Xxxx Xxxxxx, Chief Executive Officer
GENFOOT AMERICA, INC.
By: /s/ Xxxxxx Xxxx
----------------------
Xxxxxx Xxxx, President
Exhibits to be attached:
"A" - [This information has been omitted in accordance with a Confidential
Treatment Request and has been filed separately with the Commission.]
"B" - List of Patents
"C" - Reciprocal Secrecy Agreement
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Exhibit A
COMFORTEMP(TM) [This information has been omitted in accordance with a
Confidential Treatment Request and has been filed separately with the
Commission.]
00
XXXXXXXX X -
Xxxxxxxx Xxxxxxxxxxxx Xxxxxxxx
Xxxxxx Xxxxxx Patents
---------------------
No. 5,499,460 Moldable Foam Insole with Reversible Enhanced
Thermal Storage
Xxx. Pend. Thermally Enhanced Foam Insulation
No. 5,290,904 Thermally Enhanced Heat Xxxxxxx (Shared with
Gateway Technologies, Inc., Boulder, CO)
Xxx. Pend. Thermal Insulating Coatings Using MicroPCMs
No. 4,807,696 Thermal Energy Storage Apparatus Using Encapsulated
Phase Change Materials
No. 4,911,232 Heat Transfer Using MicroPCM Slurries
No. 5,224,356 Thermal Energy Absorbing and Conducting Potting
Materials
No. 5,415,222 Microclimate Cooling Garments
No. 5,366,801 Fabric With Reversible Enhanced Thermal Properties
(Shared with Gateway Technologies, Inc., Boulder, CO)
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Exhibit C
RECIPROCAL SECRECY AGREEMENT
This Agreement is made by and between Genfoot, Inc. having an office at 554
Xxxxxx xx Xxxxxx, Xxxxxxxx, Xxxxxx, Xxxxxx X0X 0X0, (hereinafter "Genfoot") and
Frisby Technologies having an office at 000 Xx. Xxxx Xxxxxx, Xxxxxxxx, Xxx Xxxx
00000 (hereinafter "Frisby").
Each and all of the above-mentioned companies shall also be hereinafter referred
to as "the party" or "the parties" respectively.
WHEREAS, the parties propose to hold discussions and exchange information that
each respectively considers proprietary to itself to assist considerations of
mutual business interest in relation to the development and application of
Microencapsulated Phase Change Materials (MicroPCM) into boots and shoes for
military, commercial and industrial applications (the "INFORMATION".
NOW, THEREFORE, the parties agree as follows:
1. Each party agrees that for a period ending December 31, 2005, it will not
disclose INFORMATION as shall be disclosed by the other party in
documentary form or, if disclosed orally, as shall be confirmed in writing
within thirty (30) days thereafter, to any third party or use the same for
any purpose other than that contemplated herein, without the disclosing
party's prior written consent. Each party further agrees to limit access to
such INFORMATION within its company to those of its employees and
representatives who may reasonably require the same in order to enable it
to fulfill the purpose stated above for which it is receiving the
INFORMATION. Each such employee or representative shall have entered into
an agreement with the receiving party pursuant to which she/he has agreed
to retain in confidence all INFORMATION which may come into her/his
possession as a result of employment activities;
2. The obligation of paragraph 1 shall not apply to such portions of the
INFORMATION disclosed hereunder that (i) are known to the receiving party
prior to the time of disclosure, as demonstrated by appropriate documentary
evidence antedating disclosure to the receiving party by the disclosing
party, or (ii) shall have been or become in the public domain through no
act or failure to act on the part of the receiving party or its employees
or (iii) shall be lawfully furnished to the receiving party by a third
party having a bona fide right to disclose same without restriction to the
benefit of the disclosing party to this Agreement.
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3. Each party agrees that it will not, without the written permission of the
other party, use the INFORMATION which it is obligated hereunder to
maintain in confidence for any reason other than to enable the receiving
party to determine the technical and economic feasibility of its business
interests based on the INFORMATION; and that in no event will the receiving
party itself commercially practice or cause to be practiced by a third
party the technology represented by the INFORMATION which it is obligated
hereunder to hold confidential without the expressed written permission of
the disclosing party.
4. It is understood that no right or license is granted to the receiving party
by the disclosing party in connection with the INFORMATION disclosed
hereunder.
5. Nothing herein shall obligate either party to disclose to the other party
particular information and the receiving party shall have the right to
refuse or accept any particular proprietary information which is offered.
6. Any documents, drawings, materials, samples or specifications supplied by
either party, and all copies thereof, shall be returned upon request or
within 30 days after expiration or termination of this Agreement.
7. Samples and materials supplied by either party or prepared at either
party's direction hereunder shall be deemed to contain confidential
information of the supplying party.
8. Neither Genfoot, nor any of its subsidiaries, customers, subcontractors or
sales representatives shall evaluate the use of MicroPCMs in any other
application than those known to Frisby.
9. Genfoot shall not place any of this Microencapsulated Phase Change Material
technology into production unless a mutually acceptable License Agreement
or other arrangement has been executed between Genfoot and Frisby.
10. This Agreement shall be governed by and interpreted in accordance with the
laws of the State of New York.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized officers or representatives as of this day and year given
below.
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GENFOOT, INC. XXXXXX TECHNOLOGIES, INC.
By: \s\ Xxxxxxx Xxxx By: \s\ Xxxxxxx XxXxxxxxx for
----------------- --------------------------
Name: Xxxxxxx Xxxx Name: Xxxx Xxxxxx
---------------- ------------------------
Title: V.P. Title: Chief Executive Officer
--------------- -----------------------
Date: May 14/95 Date: May 3, 1995
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