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EXHIBIT 10.12
AGREEMENT
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AGREEMENT made this 9TH day of JANUARY, 1998 by and between
OFFICE CENTRE CORPORATION, a Delaware corporation (hereinafter referred to as
"OCC"), with an office in New York City and XXXX XXXXX (hereinafter referred to
as "Davie"), with an office in New York City.
WHEREAS, Davie owns all right, title and interest permitted by
law in a concept known as "Xxxxx Xxxxxxxx" (hereinafter referred to as "Xxxxx
Xxxxxxxx"); and
WHEREAS, OCC wishes to license an interest in Xxxxx Xxxxxxxx
from Davie.
NOW, THEREFORE, in consideration of the premises and the
mutual covenants and agreements hereinafter contained, the parties hereto agree
as follows:
1. Davie hereby grants OCC a royalty-free, perpetual license
to use Xxxxx Xxxxxxxx in the office products, office service and office
furniture industries (the "Licensed Industries") worldwide, and to use the name
"Xxxxx Xxxxxxxx" in promotional advertising in connection with OCC or its
products (collectively, the "License"). All other rights whatsoever in Xxxxx
Xxxxxxxx are hereby expressly reserved by Davie. Davie shall have no right to
sublicense, transfer or otherwise authorize others to use Xxxxx Xxxxxxxx with
respect to the Licensed Industries in any manner without the express prior
written consent of OCC. Davie also agrees, at no cost to OCC, to spend up to ___
hours with OCC at a time to be scheduled by OCC, to explain Xxxxx Xxxxxxxx in
person to OCC employees and train such employees in the use of Xxxxx Xxxxxxxx.
2. The one-time licensing fee for the License shall be the
issuance by OCC of 100,000 shares of its common stock (the "OCC Stock") to
Davie. If OCC exploits the License in the Republic of China (Taiwan) ("Taiwan"),
however, OCC shall pay an additional fee of 15% of all profits which can be
demonstrated are directly attributable to such exploitation in Taiwan.
3. In the event that OCC does not spend reasonable amounts of
time and money which indicate a long term commitment to develop and use the
License within eighteen (18) months from the date of an initial public offering
of OCC's equity securities (the "IPO"), Davie shall have the option to
repurchase the License from OCC for a purchase price of either, at the choice of
Davie, $500,000 in cash or 50,000 shares of OCC common stock (such number of
shares to be adjusted for stock splits, stock dividends, combinations or similar
events), provided, however, that following such repurchase, nothing herein shall
prevent or restrict OCC from exercising any rights to use ideas or concepts
similar or identical to Xxxxx Xxxxxxxx, except only
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to the extent that Davie exclusively owns such rights (as determined by a court
of law) notwithstanding any representations herein. If Davie does not exercise
the repurchase option set forth in this Section 3 within 30 days of the 18-
month anniversary of the IPO, such repurchase option shall automatically expire
and be of no further force and effect.
In the event of this repurchase, OCC shall not prevent Davie
from using OCC's dealer network for the exploitation of Xxxxx Xxxxxxxx by Davie
(but not any assignee or third party licensee of Davie).
4. Davie hereby represents and warrants to OCC as follows: A
description of Xxxxx Xxxxxxxx is attached hereto as Exhibit X. Xxxxx is the sole
owner of Xxxxx Xxxxxxxx, free and clear of all liabilities, obligations, claims,
security interests, leases, liens, pledges, rights of first refusal, options,
conditional sales or other title retention agreements, UCC-1 financing
statements, licenses, encumbrances, restrictions, covenants, rights and defects
in title of any nature whatsoever, including, without limitation, any
restriction on use, transfer, receipt of income, or exercise of any other
attribute of ownership. No claims are currently being asserted by any person or
entity involving or questioning Davie's sole ownership of Xxxxx Xxxxxxxx. The
use of Xxxxx Xxxxxxxx by OCC and/or its subsidiaries in accordance with the
License will not infringe the rights of any person or entity, nor is any
infringing right currently ongoing by any person or entity. Davie has the
authority to grant the License as contemplated by this Agreement.
5. Davie hereby represents and warrants to OCC that he is
acquiring the OCC Stock for his own account for investment purposes only and not
with a view to, or for sale in connection with, any distribution thereof. Davie
hereby agrees not to resell the OCC Stock except pursuant to Section 3 or in
compliance with the registration requirements of the Securities Act of 1933, as
amended, or in a transaction exempted therefrom.
6. Simultaneously with the execution of this Agreement, Davie
will deliver to OCC all books and records relating to Xxxxx Xxxxxxxx. Davie
hereby represents and warrants to OCC that there are no other books and records
relating to Xxxxx Xxxxxxxx.
7. Covenants of Davie.
(a) NONCOMPETITION. From the date hereof through the
date on which Davie may repurchase the License pursuant to Section 3 (the
"Repurchase Date"), Davie shall not, directly or indirectly, engage in or be
associated with any entity which engages in the Licensed Industries within a 25
mile radius of any business location of OCC or any of its subsidiaries, whether
as a director, officer, employee, agent, consultant, partner, owner, independent
contractor or otherwise. OCC and Davie hereby acknowledge that nothing contained
herein shall prohibit Davie from making investments in other entities or
businesses, PROVIDED, that such entities or businesses are not engaged in the
Licensed Industries within a 25 mile radius of OCC or any of its subsidiaries.
Davie shall refrain from making any investment in, or receiving compensation or
other payment from, any entity or business in the Licensed
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Industries within a 25 mile radius of OCC or any of its subsidiaries.
Notwithstanding the foregoing, Davie's beneficial ownership of less than 1% of
the outstanding capital stock of a publicly traded company shall not, in and of
itself, be deemed to violate this Section 7(a).
(b) NONSOLICITATION. At all times from the date
hereof through the Repurchase Date, Davie shall not, and shall cause each
business or entity with which he shall become associated in any capacity not to,
(i) solicit for employment or employ any person who is at such time, or who was
at any time within six months prior to such time, employed by OCC or its
subsidiaries or (ii) solicit business which is competitive with OCC's business
from any person or entity who is at such time a customer or supplier of OCC or
its subsidiaries or any person or entity who was a customer or supplier of OCC
or its subsidiaries within six months prior to such time.
(c) CONFIDENTIALITY. Davie agrees and acknowledges
that the Confidential Information (as defined below) of OCC and its subsidiaries
is valuable, special and unique to its business; that such business depends on
such Confidential Information; and that OCC wishes to protect such Confidential
Information by keeping it confidential for the use and benefit of OCC and its
subsidiaries. Based on the foregoing, Davie agrees that he will not, without the
prior written consent of OCC, disclose any Confidential Information to any
person or entity (a "Person") that does business in the Licensed Industries. If
Davie discloses any Confidential Information to any Person (a "Disclosee") that
does not do business in the Licensed Industries, Davie shall ensure through a
written confidentiality agreement that such Disclosee will prevent the
Confidential Information from being disclosed to any Person engaged in the
Licensed Industries. Davie shall be responsible for any subsequent disclosure by
any Person of Confidential Information to any Person engaged in business in the
Licensed Industries.
For purposes of Section 7(c), "Confidential Information" means
any and all information relating to Xxxxx Xxxxxxxx.
(d) REMEDIES. Davie acknowledges and agrees that the
covenants and obligations of Davie contained in this Section 7 relate to
special, unique and extraordinary matters and are reasonable and necessary to
protect the legitimate interests of OCC and that a breach of any of the terms of
such covenants and obligations will cause OCC irreparable injury for which
adequate remedies at law are not available. Therefore, Davie agrees that OCC
shall be entitled to an injunction, restraining order, or other equitable relief
from any court of competent jurisdiction, restraining Davie from any such
breach. OCC's rights and remedies under this Section 7(d) are cumulative and are
in addition to any other rights and remedies OCC may have at law or in equity.
8. (a) Davie shall indemnify, hold harmless and defend OCC,
its subsidiaries and their respective directors, officers, employees and agents
at all times after the date of this Agreement, against and in respect of any and
all liabilities, losses, damages, costs and expenses (including, without
limitation, the fees and expenses of counsel) arising out of or in connection
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with or based upon the inaccuracy of any representation or warranty made by
Davie herein or the breach by Davie of any agreement or covenant made herein.
(b) OCC shall indemnify, hold harmless and defend
Davie at all times after the date of this Agreement, against and in respect of
any and all liabilities, losses, damages, costs and expenses (including, without
limitation, the fees and expenses of counsel) arising out of or in connection
with or based upon the inaccuracy of any representation or warranty made by OCC
herein or the breach by OCC of any agreement or covenant made herein.
(c) This Section 8 shall survive the termination of
this Agreement and any repurchase pursuant to Section 3.
9. This Agreement shall be governed by and construed according
to the laws of the State of New York without regard to its choice of law rules,
irrespective of the forum in which any action or proceeding related to this
Agreement may be instituted.
10. This Agreement contains the entire understanding of the
parties and supersedes all previous verbal and written agreements; there are no
other agreements, representations or warranties not set forth herein.
11. The parties agree that any disputes or questions arising
hereunder, including the construction or application of this Agreement, shall be
settled by binding arbitration in New York, New York, in accordance with the
rules of the American Arbitration Association then in force. If the parties
cannot agree upon an arbitrator within ten (10) days after written demand by
either of them, either or both may request the American Arbitration Association
to name a panel of five (5) arbitrators. OCC and Davie shall each strike two (2)
names and the remaining name shall be the sole arbitrator. In the event either
party does not strike two names within five (5) days after receipt of the list,
the other party shall have the right to strike up to four (4) names until one
name remains. The decision of the arbitrator shall be final and binding upon the
parties both as to law and to fact, and judgment upon any awarded, which may
include an award of damages, may be entered by the highest State or Federal
Court having jurisdiction. Nothing contained herein shall in any way deprive OCC
or Davie of their right to obtain injunction or other equitable relief.
12. In the event any provision of this Agreement shall be
determined to be invalid or unenforceable by the laws of the State or place
where it is to be performed, this Agreement shall be considered divisible as to
such provision, and such provisions shall be inoperative and shall not be part
of the consideration moving from either party to the other, and the remaining
provisions of this Agreement shall be valid and binding and of like effect as
though such provisions were not included herein.
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IN WITNESS WHEREOF, the parties have executed this Agreement
in multiple counterparts, each of which shall be considered and original.
OFFICE CENTRE CORPORATION
By: /s/ Xxxxxx X. Xxxxxx, Xx.
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Xxxxxx X. Xxxxxx, Xx.
/s/ Xxxx Xxxxx
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XXXX XXXXX
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