MASTER LICENSE AGREEMENT
Exhibit
10.8
This
Master License Agreement (this “Agreement”), effective as of the date fully
executed by all parties, is entered into by and between Magnolia Solar, Inc., a corporation formed
under the laws of the state of Delaware (the “LICENSEE”) and Magnolia
Optical Technologies,
Inc., corporation formed under the laws of the state of Delaware ( the
“LICENSOR”).
WHEREAS,
the LICENSOR wishes to license certain intellectual property to LICENSEE;
and
WHEREAS,
the LICENSEE wishes to license such intellectual property subject to the terms
and conditions contained herein.
NOW
THEREFORE, in exchange for the mutual covenants contained herein and other good
and valuable consideration the parties agree as follows:
ARTICLE
I
Background
1.00 LICENSOR
represents that it is the holder of certain trade secrets, proprietary
information trade-names, know how and other intellectual property currently held
and which may be developed at some future date, relating to design and
fabrication of thin-film solar photovoltaic cells and the like (the
“INTELLECTUAL PROPERTY”), and is prepared to grant an exclusive license on
established terms to LICENSEE within the territory detailed
hereafter.
1.01 LICENSEE
has examined the relative value of the INTELECTUAL PROPRTY and wishes to acquire
exclusive rights within the territory detailed hereafter to the INTELLECTUAL
PROPERTY for the purpose of making, leasing, and selling thin-film photovoltaic
solar cells and related products, and other services relating to or utilizing
the technology, and for sublicensing others subject to and pursuant to
sublicensing terms and conditions set forth herein.
ARTICLE
II
General
Definitions
The terms of this Agreement (other than
the names of the parties and Article headings) that are set forth in upper case
letters shall have the meanings set forth below:
2.00 LICENSED
TERRITORY Worldwide
2.01 LICENSED
FIELD limits the scope of the Agreement to the trade secrets, patent rights, if
any, manufacturing knowledge, and know-how involved in the making, using and
selling of thin-film photovoltaic solar cells or for sublicensing others to do
the same within the LICENSED TERRITORY.
2.02 LICENSED
PRODUCTS refers to any and all products and services produced and delivered
under the LICENSED FIELD,
2.03 PROPRIETARY
INFORMATION means the confidential and valuable trade secrets, know-how,
show-how and manufacturing information required to properly use the LICENSOR's
technology.
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ARTICLE
III
License
Grant and Transfer
3.01 LICENSOR
hereby grants to LICENSEE an exclusive, fully paid, royalty free License within
the designated LICENSED TERRITORY, as delineated in the LICENSED FIELD, to
utilize the INTELLECTUAL PROPERTY to make, use, offer for sale, and sell the
LICENSED PRODUCTS. Issuance of this License does not
limit or negate the abilities or authority of the LICENSOR outside the
LICENSEE’s designated territory.
3.02 The
LICENSOR also grants pursuant to this Agreement all rights to all future
developments that are directly related to or are derived from the INTELLECTUAL
PROPERTY. Such rights shall automatically vest in LICENSEE without further
action by either party.
ARTICLE
IV
Payment
of License Fees
4.01 LICENSEE
shall in exchange for the grant of this license assign, transfer and convey
7,130,000 shares of the LICENSEE’s restricted common stock, with a par value of
$0.0001 (the “LICENSEE STOCK”). The LICENSEE STOCK has a current value of $.05
per share. Such stock shall be granted with restrictions to the shareholders,
option holders and warrant holders for number of shares identified by the
LICENSOR upon the execution and delivery of this Agreement. LICENSEE shall issue
these shares with the following restriction:
“These
securities have not been registered under the Securities Act of 1933, as amended
(the “Act”) or under the securities laws of any state, and may not be sold,
offered for sale, assigned, mortgaged, pledged, hypothecated or otherwise
transferred or disposed of except (i) pursuant to a registration statement under
the Act which has become effective and is current with respect to these
securities; or (ii) pursuant to a specific exemption from registration under the
act but only upon a holder hereof first having obtained the written opinion of
counsel to the Corporation, or other counsel reasonably acceptable to the
Corporation, that the proposed disposition is consistent with all applicable
provisions of the Act as well as any applicable “Blue Sky” or similar securities
laws.”
4.02 The
LICENSEE STOCK to be issued and delivered hereunder will, when issued and
delivered, be duly and validly issued, fully paid, nonassessable and free of
Encumbrances and preemptive rights or other restrictions other than those
imposed pursuant to securities laws and those expressly provided for in this
Agreement
ARTICLE
V
Sublicensing
LICENSEE
shall have the right to extend the licensed technology by further written
agreements on terms not conflicting with the terms of this Agreement, to any
suitable AFFILIATE as a third party licensee or sublicensee in the LICENSED
TERRITORY. LICENSEE may not sublicense to any such third party whose
direct or in-direct sales would compete with LICENSOR in any
way. LICENSEE's rights to consideration and redress for default of a
third party licensee under such further written agreements shall be subordinated
to LICENSOR in the event of cancellation of this Agreement or LICENSEE's default
hereunder or bankruptcy or other inability to perform, and this term or words to
this effect shall appear in all third party licensee agreements.
ARTICLE
VI
Representations
and Disclaimers of Warranties
6.00 Nothing
in this Agreement shall be deemed to be a representation or warranty by LICENSOR
of the viability or profitability of the LICENSED PRODUCT. LICENSOR
shall not be responsible for any losses or damages to LICENSEE arising out of
the LICENSEE's use of the INTELLECTUAL PROPERTY.
6.01 LICENSOR
shall not be liable for any damages to third parties as a result of LICENSEE's
use of the INTELLECTUAL PROPERTY.
6.02 LICENSOR
does not warrant or represent that any product or service resulting from the
licensed technology is or will be free from infringement of or by third
parties.
6.03 LICENSEE
shall be responsible to bring or defend any and all infringement actions by or
against third parties that may result during the term of this Agreement;
reserving to LICENSOR, to the full extent permitted under law, the same right to
bring or defend in good faith in its own name said infringement actions when
LICENSEE is unwilling or unable to do so, reasonable costs and proceeds deriving
therefrom to be apportioned to the parties according to their respective
benefits under this Agreement. Both parties shall communicate and
cooperate fully and timely, in good faith, in all such matters.
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ARTICLE
VII
Term
and Termination
7.00 This
Agreement, including (something is missing here) may terminate according to
another provision in this Section, but if not otherwise terminated, shall run
for ten (10) years. Thereafter, the license shall renew automatically unless
cancelled in writing by one of the parties.
7.01 In
the event of default or failure by either party to perform any of the
obligations under this Agreement, the offending party shall have thirty (30)
days after written notice of such default to correct the default. If
not corrected after the thirty (30) days period, the non-defaulting party shall
have the option to cancel or terminate this Agreement. Upon such
termination, the defaulting party may be liable for any and all damages incurred
as a result of such default.
7.02 Upon
termination of this Agreement, the LICENSEE shall cease using the INTELLECTUAL
PROPERTY, and take all reasonable measures to return the PROPRIETARY INFORMATION
including manuals, reports, and notes related to the LICENSED FIELD, and all
agreements, information and accounts relating to past and present
AFFILIATES. LICENSOR shall also reserve the right to
terminate any and all rights of the Sublicensees of the LICENSEE.
7.04 The
termination rights provided herein shall be in addition to and not in
substitution for any right to damages or injunctive relief that may be available
to or exercisable, nor shall such termination rights relieve either party from
liability or damage to the other party for breach of this Agreement
ARTICLE
VIII
Confidentiality
8.00 Confidential
Information may be disclosed in written or oral form. Any written
Confidential Information will be marked "Confidential", any oral Confidential
Information will be described as such. However other information may be
Confidential based on the context and manner in which it is
disclosed.
8.01 LICENSEE
agrees to treat all information and material appropriately disclosed as provided
under Section 8.00 as proprietary and/or confidential, and will protect from
disclosure to third parties not similarly obligated. LICENSEE further
agrees not to make use of such information or material except in the furtherance
of the enterprise contemplated herein and where not contrary to the interests of
the LICENSOR.
8.02 Any
information which LICENSEE can show by written record was in LICENSEE's
possession prior to the disclosure by LICENSOR, was already in the public
domain, or enters the public domain other than through the fault of LICENSEE
shall not be subject to the provisions of Section 8.01. In addition,
any information that is legally disclosed to LICENSEE by a third party not
similarly obligated shall not be subject to the provisions of Section
8.01.
8.03 Notwithstanding
the provisions of Section 8.01, LICENSEE may disclose such information to
governmental agencies or regulatory bodies to the extent necessary to satisfy
their respective regulations. LICENSEE agrees to take actions to
insure that the agencies or bodies treat the information as
confidential.
ARTICLE
IX
Records
and Reports
LICENSEE
shall keep accurate and detailed records of all operations affecting payments
hereunder, and shall permit LICENSOR or its duly authorized agent, with notice,
to inspect and copy any such records during regular business hours throughout
the terms of the Agreement, and for a reasonable period of not less than three
(3) years thereafter.
ARTICLE
X
Arbitration
Any
controversy or interpretation problems that may arise under this Agreement that
cannot be resolved between the parties shall be settled by their good faith
participation in non-binding mediation conducted by a mediator acceptable to
both parties. Should mediation fail, then by arbitration pursuant to
the terms of the attached Exhibit A. The parties shall submit to the
decision of the arbitrator (s) and the judgment of any award may be entered into
any Court having jurisdiction.
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ARTICLE
XI
Notices
For the
purpose of all written communications, materials, and notices the following
addresses shall be used unless changed by written notification to the other
party:
LICENSOR: LICENSEE:
Magnolia
Optical Technologies,
Inc. Magnolia
Solar, Inc.
00 X
Xxxxxxxx Xxxx, Xxxxx
000 52
B Xxxxxxxx Park, Suite 311
Woburn,
MA
01801 Xxxxxx,
XX 00000
Phone:
(000)
000-0000 Phone:
(000) 000-0000
Fax:
(000)
000-0000 Fax:
(000) 000-0000
ARTICLE
XII
General
12.01 Force
Majeure. If the performance of any party’s obligation under
this Agreement shall be delayed by governmental restriction, war, civil
commotion, riot, strike, lock out, act of God (such as flood or fire), act or
omission of the other party, or other cause which is beyond the reasonable
control of such party, then the performance of such obligations shall be excused
for the period of delay occasioned thereby. If such period of delay
shall continue for more than one hundred eighty (180) days, then any party shall
have the right thereafter, during the continuance of such delay, to terminate
this Agreement on written notice to the other parties.
12.02 Binding
Effect. This Agreement shall be binding upon and shall inure
to the benefit of the parties hereto and their respective legal representatives,
successors, and permitted assigns.
12.03 Modification. This
Agreement shall not be modified, changed, or amended, except in a writing signed
by the party to be charged.
12.04 Severability. If
any term or provision of this Agreement, or the application thereof to any
person or circumstance, shall, to any extend, be held invalid or unenforceable
by any court of competent jurisdiction, then the remainder of this Agreement or
the application of such term or provision to persons or circumstances other than
those to which it is held invalid or unenforceable, shall not be affected
thereby, and each term and provision of this Agreement shall be valid and
enforced to the fullest extent permitted by law.
12.05 Headings. The
headings of the several Articles and Sections of this Agreement are inserted for
convenience of reference only and are not intended to be a part of or to affect
the meaning or interpretation of this Agreement.
12.06 Entire
Agreement. This Agreement sets forth the entire Agreement and
understanding between the parties as to the subject matter hereof and merges all
prior discussions and negotiation between them, and neither of the parties shall
be bound by any condition, definition warranty, or representation other than as
expressly provided in this Agreement, or as duly set forth on or subsequent to
the effective date hereof in writing signed by a proper duly authorized officer
of the party to be bound thereby.
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12.07 Waiver. Any
party’s failure to enforce the provisions thereof or to exercise the rights
granted hereunder, or the parties’ agreement to waive enforcement thereof, at
any time or for any period of time shall not constitute or be construed as a
waiver of any other failure or breach of such provisions or rights, or any other
provisions of this Agreement, or of the rights of such party thereafter to
enforce each and every such provision or right, nor shall such failure or
LICENSEE agreement be deemed to an amendment of this Agreement.
12.08 Governing
Law. This Agreement shall be governed by and construed in
accordance with the law of the Commonwealth of Massachusetts and the United
States of America. The parties hereby agree that this Agreement shall
be enforceable in the courts of the Commonwealth of Massachusetts and
LICENSEE hereby irrevocably submits to the exclusive jurisdiction and venue of
the federal and state courts located in the Commonwealth of Massachusetts and to
accept service of process by certified mail.
12.09 Successors and
Assigns. This Agreement may be assigned by LICENSEE to any
purchaser of some or all of its entire business to which this Agreement relates
with the consent of LICENSOR, which consent may not be unreasonably withheld,
provided that the assignee agrees in writing to be bound by the terms of this
Agreement.
12.10 Counterpart
Copies. This Agreement may be executed in one or more
counterpart copies, each of which shall be deemed to be an original, but all of
which shall constitute one and the same instrument.
IN
WITNESS WHEREOF, each of the parties has caused this Agreement to be executed by
their duly authorized officers or representatives on the respective dates and at
the respective places hereinafter set forth.
Magnolia
Optical Technologies, Inc. (Licensor)
By: /s/
Xxxxx Xxxx
Name: Xx.
Xxxxx X. Xxxx
Title:
President
Date:
_April 30,
2008______
Magnolia
Solar, Inc. (Licensee)
By: /s/ Yash
Puri
Name: Xx.
Xxxx X. Xxxx
Title:
Executive Vice President
Date:
_April 30,
2008______
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EXHIBIT
A
ALTERNATIVE
DISPUTE RESOLUTION
|
A.
|
Except
as provided in subdivision B of this Section, neither Party to this
Agreement shall file
|
suit in
any court for any dispute arising out of this Agreement until they have, in good
faith, attempted to resolve the dispute according to the following
procedures:
1. In the
event of a dispute or controversy (“the Dispute”) based upon or arising out of,
or pertaining to or related to or in connection with, this Agreement, the
Parties agree to meet informally, and promptly confer regarding their respective
positions and interests in any such Dispute, with a view toward attempting to
improve their mutual ability to make informed decisions relating to said
Dispute, and they agree to use their best efforts to resolve any such Dispute
between them. The Parties’ executives or representatives with
authority to resolve any Dispute shall meet at a mutually acceptable time and
place, within fifteen (15) days after receipt of a letter (“Notice of
Negotiation”) requesting a meeting pursuant to this section, sent by either
party, and thereafter shall meet as often as they deem necessary, shall exchange
relevant information and shall, recognizing their mutual interest, diligently
endeavor to resolve the Dispute in a manner satisfactory to the
Parties. All reasonable requests for information made by one Party to
the other shall be honored. Each Party shall bear its own legal
expenses, attorneys’ fees and costs of all experts and witnesses incurred with
respect to the negotiations.
2. All
negotiations pursuant to foregoing provisions of this section shall be
confidential, shall not be disclosed to anyone other than a Party’s own counsel
of record, and shall be treated as compromise and settlement negotiations for
the purpose of applicable rules of evidence and for all other
purposes.
B. Any
disputes between the Parties not resolved by mediation as set forth in
subdivision A of this section shall then be decided by arbitration in accordance
with the laws of the Commonwealth of Massachusetts. Arbitration shall
be brought upon the written notice of one Party to the other of a demand for
arbitration, which includes a recitation of the claim or dispute for which
arbitration is sought. Arbitration shall be before a single
arbitrator mutually agreed upon by the Parties. If the Parties fail to agree
upon an arbitrator, each Party shall choose one arbitrator and these two
arbitrators shall select a disinterested third party as the third
arbitrator. Any award or findings of the arbitration panel shall be
final and binding on the Parties, and judgment on any such award may be entered
in any court having competent jurisdiction.
C.
Notwithstanding the foregoing provisions, nothing in this section or this
Agreement shall prevent either Party from seeking temporary restraining orders,
preliminary injunctions or such other provisional, equitable relief from a court
of competent jurisdiction in the event of a material reach of the terms of this
Agreement. However, prior to seeking such extraordinary relief, the
Party seeking such relief must make a good faith determination that the
exigencies of the claimed material breach of terms requires such immediate and
extraordinary relief.
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