EXHIBIT 10.11
AMENDED AGREEMENT
FOR CO-DEVELOPMENT OF LASER-ON-LINE PRODUCTS AND TECHNOLOGY
This Agreement is made the as of the Effective Date as (defered in
Section 8.11 hereof) by and among The PRIMA Group International, Inc., a
Delaware corporation with its principal place of business at 000 X. Xxxxxx Xxxxx
Xxxx, Xxxxx 000, Xxxxxxxxx, Xxxxx Xxxxxxxx 00000 ("PRIMA"), Prima Industrie
S.p.A., organized under the laws of Italy with its principal place of business
at Xxx Xxxxxxxxx, 00, 00000 Xxxxxx Xxxxxxxxxx Xx Xxxxxxxx, Xxxxxx, Xxxxx
("Industrie"), and Prima Electronics S.p.A., organized under the laws of Italy
with its principal place of business in Moncalieri, Torino, Italy,
("Electronics"). (PRIMA, Industrie and Electronics shall be referred to from
time to time collectively as "Developers" and individually as "Developer"); (the
"Agreement").
WHEREAS, PRIMA, Industrie and Electronics desire to assist each other
in areas of mutual business interest including development of a new series of
products to be known as the "Laser On Line" series, Technology, and associated
intellectual property, and
WHEREAS, all of the parties hereto will benefit financially from
further Products and Technology development,
NOW, THEREFORE, in consideration of the premises and other good and
valuable consideration, the parties agree as follows:
ARTICLE I
GENERAL PROVISIONS
1.01 Agreement of Joint Development. The Developers hereby agree,
subject only to the condition subsequent specified in Section 8.11, to the joint
development of the Products (the "Project") under the terms and provisions of
this Agreement and the rights and liabilities of the Developers shall be as
provided in this Agreement. The Developers do not hereby intend to form a
separate legal entity for the conduct of the development.
1.02 Name of the Project. The name of the Products shall be "Laser on
Line" and the Project shall be known as the "Laser on Line Project", or such
other name as the Developers from time to time may designate. The Developers
shall not cause to be filed an assumed or fictitious name certificate or
certificates for the Project but may seek registration of the name "Laser on
Line" as a trademark or servicemark.
1.03 Purpose of the Project. The purpose of the Project is to research
and develop, experiment with, manufacture and market the Products based upon the
Technology.
1.04 Duration of the Project. The Project shall commence upon the
Effective Date and shall continue until its termination in accordance with the
provisions of this Agreement.
1.05 Definitions.
(a) "Affiliate" means a Person which directly or indirectly,
through one or more intermediaries, controls, is controlled by, or is under
common control with, the Person specified.
(b) "Development Project" shall mean the efforts undertaken by
the Developers to integrate their services and to develop the Products under the
terms and conditions of this Agreement.
(c) "Patents" means all United States patents, patent
applications, all reissue and renewal applications, all divisional applications,
all continuation applications, all continuation-in-part applications, and all
corresponding foreign patents and patent applications which in the absence of a
valid license agreement would be infringed by the use, sale or manufacture or
other disposition of the Products or Technology.
(d) "Pre-existing Technology" shall means hardware, software,
know-how, or designs owned by or licensed to Electronics and Industrie existing
prior to the Effective Date, necessary for the development, implementation and
use of the Product and Technology.
(e) "Products" shall mean any and all tangible and intangible
products, including but not limited to hardware and software, to be known as the
"Laser on Line" series developed under this Agreement by the Developers and
Technology incorporated therein.
(f) "Technology" shall mean all inventions, know-how,
developments, improvements, technical data, results, data, designs, hardware,
software and other information in any form, patentable or unpatentable, which
are conceived, created, written, developed, reduced to practice, and acquired by
the Developers during the Duration of the Project and which relate to the
Development Project.
(g) "United States" means the United States of America, its
possessions and its territories.
(h) "GAAP" means generally accepted accounting principles.
ARTICLE II
2.01 Contributions.
(a) PRIMA will provide funding for all Project activities
which shall be accounted for by the parties in accordance with United States
GAAP. PRIMA undertakes to use its best efforts to make available to Industrie
and Electronics such funds for research and development of the Products and
Technology as are reasonably necessary, in order for Industrie and Electronics
to pursue their obligations hereunder.
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(b) Industrie and Electronics shall provide to the Project any
necessary rights in existing Technology, personnel, facilities, and daily
management.
ARTICLE III
PROJECT MANAGEMENT
3.01 Management of the Project. Strategic management of the Project
shall be provided by PRIMA; on site management and daily control of the business
and affairs of the Project shall be vested in Industrie, except as may be
otherwise provided in this Agreement.
3.02 Products Liability or Infringement Claims. Each Developer shall
notify the other Developers of any infringement or products liability claim,
suit, action or proceeding against it arising from the development, sale,
assignment, licensing or other distribution of the Products. PRIMA shall have
the right, but not the obligation, to defend on behalf of itself and the other
Developers any such claim, suit, action or proceeding. The expenses (including
attorneys' fees) incurred in connection with the defense of any such claim,
suit, action or proceeding shall be allocated among the Developers in accordance
with US GAAP.
3.03 No Compensation. The Developers shall receive no compensation
for performing their duties as Developers under this Agreement.
3.04 Contracts with the Developers or their Affiliates.
(a) Industrie and Electronics may enter into contracts for
goods or services between themselves and/or any other Developer or any Affiliate
of any Developer. The validity of any transaction, agreement or payment
involving the Developer and the Project, or any Affiliate of a Developer and the
Project, otherwise permitted by the terms of this Agreement shall not be
affected by reason of (i) the relationship between the Project and Developer or
any Affiliate of any Developer or (ii) the approval of the transaction,
agreement or payment to the Developer or any Affiliate by officers or directors
of the Developer.
(b) Industrie shall, among other things and in accordance with
its management and operation of the Project as contemplated in this Agreement,
(i) manufacture the Products during the term of this Agreement, and (ii) provide
marketing services for the Products in Italy.
(c) Prima shall provide marketing services for the Products
outside Italy.
3.05 Insurance. Industrie shall (a) maintain, with insurers or
underwriters of good repute, such insurance relating to the Project and the
Products as is customary for business of a like nature to maintain against such
risks (including without limitation against product liability actions and
actions in respect of product liability by third parties or any of the
Developers pursuant to such terms (including deductible limits or self-insured
retentions) as are customary for such businesses, and (b) pay all premiums and
other sums payable in respect of maintaining such insurance.
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ARTICLE IV
DEVELOPMENT OF PRODUCTS AND TECHNOLOGY
4.01 Development agreement. Industrie and Electronics jointly and
severally agree to use their best efforts to perform research and
experimentation as part of the Development Project, including research and
experimentation necessary to obtain approval under any law or regulation in the
United States, Italy or the world governing intellectual property rights
pertaining to the Products and/or Technology for purposes of sale, licensing or
other disposition around the world; and that Industrie and Electronics shall
pursue full and complete intellectual property registration and protection of
the Products and Technology in the name of the appropriate party as determined
under Section 4.02 under such laws of such countries as agreed to from time to
time by the Developers.
4.02 Ownership of Products and Technology.
(a) PRIMA shall own all right, title and interest in and to
the Products and Technology, including without limitation any patents,
copyrights, trade secrets, know-how and other intellectual property rights
therein under the laws of any country other than Italy and shall have the
exclusive right to sell, transfer, license, or assign such right, title and
interest in all such countries.
(b) It is agreed between the Developers that with regard to
any intellectual property rights acquired in the Products or Technology under
the laws of Italy, Industrie shall be the sole and exclusive owner of any such
property rights, and shall, as between the Developers, have the exclusive right
to sell, assign, license or distribute the Products and Technology (according to
the terms of this Agreement) to any third party domiciled in Italy and the
exclusive right to sell, transfer, license, or assign such right title and
interest in Italy.
(c) Work Made For Hire: To the extent that the Products or
Technology may be protectable by copyright laws of the United States of America,
copyrights in the Products shall be owned exclusively by PRIMA and shall be
deemed works made for hire for purposes of the U.S. Copyright Act. If the
Products shall be determined not to be work made for hire by a court or other
body of competent jurisdiction or if ownership of all right, title, and interest
of copyrights therein shall not otherwise be deemed to vest exclusively in the
owner of PRIMA, then Industrie and Electronics, without additional compensation,
shall forthwith assign to PRIMA, and do by this Agreement hereby assign to
PRIMA, the ownership of such rights, including the copyrights in the Products
and Technology, together with all rights arising from such copyright ownership,
and PRIMA shall have the right to register in its own name such copyrights.
Industrie and Electronics further agree to deliver to PRIMA assignments of all
of Industrie and Electronics other intellectual property rights in the Products
in a form satisfactory to PRIMA and its legal counsel.
4.03 Consultation. Consistent with the purposes and limitations herein,
the Developers shall consult with each other on a continuing basis to evaluate
the current state of the Products and Technology, as well as proposed pending
patent (or other applicable intellectual property rights) with regard to the
Products and Technology. Industrie and Electronics shall promptly communicate to
each other and to PRIMA any improvement or development in the Products or
Technology.
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ARTICLE V
ACCESS TO TECHNOLOGY
5.01 Access to Technology. All Developers shall be entitled to access
to the Technology under this Agreement solely for the purposes set forth herein.
The Developers agree that at no time shall any Developer sell, assign, pledge,
license or otherwise dispose of or in any way encumber all or any part of its
interest in the Products or Technology or any other product embodying the
Products or derived from the Technology to any other party, except as agreed
herein. No part of the Products or Technology that is not protected by a patent
or other intellectual property right shall be disclosed by any Developer to any
party except as permitted by this Agreement.
5.02 Protection of Technology. Upon termination of this Agreement, and
subject to PRIMA's rights, Industrie and Electronics shall use their best
efforts to protect and safeguard all tangible manifestations of the Technology
(and all proprietary information of the Venture) in the possession of Industrie
or Electronics or any of their Affiliates, and except as set forth in this
Agreement shall not make, use, sell, disclose, license, or otherwise distribute,
the Products or any part of the Products or Technology or any products embodying
the Products or derived from the Technology and shall not assert that they have
any right to prevent any other Developer from making, using, selling, licensing
or disclosing any of the Technology or any product embodying or derived from the
Products or the Technology so long as such distribution is made in accordance
with the terms of this Agreement.
5.03 Pre-existing Technology. To the extent that any Pre-Existing
Technology is contained in the Products or Technology, Industrie and Electronics
grant to PRIMA an irrevocable, non-exclusive worldwide, royalty free license to
use, sell, market, sublicense or otherwise distribute such Pre-existing
Technology as part of the Products or Technology.
ARTICLE VI
ASSIGNABILITY OF INTERESTS
6.01 Assignment of Interests. No Developer may sell, transfer, assign,
pledge, license or otherwise dispose of all or any part of its interest in the
Project (whether voluntarily, involuntarily or by operation of law) without the
prior written consent of the other Developers, which consent shall not be
unreasonably withheld by the other Developers.
ARTICLE VII
CONFIDENTIALITY
7.01 Confidentiality. The Products and Technology shall be considered
"Confidential Information" and maintained in confidence by the Developers.
During this Agreement and thereafter, Developers shall keep the Confidential
Information in strict confidence and shall not disclose it to any person or
entity, nor use the same for any purpose other than performing the Development
Project. Developers agree to safeguard the Confidential Information by
restricting its internal dissemination only to those employees within their own
companies having a need to know
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the Confidential Information for purposes of this Agreement. Notwithstanding
anything herein to the contrary, it is understood and agreed that during
the term of this Agreement and thereafter, the Products shall be free to be
used, sold or otherwise distributed to others without restriction in
accordance with Section 4.02. Each Developer shall advise the other Developers
in writing of any misappropriation or misuse of the Confidential
Information of which the notifying party may become aware.
7.02 Exclusions. The foregoing duty of nonuse and nondisclosure of
Confidential Information shall not apply to information which: (a) is or becomes
in the public domain (for example, the information is disclosed in an issued
patent) through no fault or act of one of the Developers; (b) is obtained by one
of the Developers from a third party under no duty of nonuse and nondisclosure;
or (c) is required to be revealed pursuant to law.
ARTICLE VIII
MISCELLANEOUS
8.01 Notices. Notices required or permitted hereunder shall be in
writing and shall be sent to the addresses set forth herein or to such other
addresses as the Parties may hereafter specify, and shall be deemed given on the
earlier of:
(a) physical delivery to a Developer; and
(b) five (5) days after mailing by prepaid first
class or express mail.
8.02 Successors and Assigns. Subject to the restrictions on transfer
set forth in this Agreement, it and each and every provision of it shall be
binding upon and shall inure to the benefit of the Developers, their respective
successors, successors-in-title, and assigns, and each and every
successor-in-interest to any Developer, whether such successor acquires such
interest by way of gift, purchase, foreclosure, or by any other method, shall
hold such interest subject to all of the terms and provisions of this Agreement.
8.03 Amendments. In addition to any amendments otherwise authorized in
this Agreement, amendments may be made to this Agreement from time to time by
unanimous written consent of the Developers.
8.04 Partition. The Developers agree that no Developer, nor any
successor-in-interest to any Developer, shall have the right while this
Agreement remains in effect to have the property of the Project partitioned, or
to file a complaint or institute any proceeding at law or in equity to have the
property of the Project partitioned, and each Developer, on behalf of itself,
its successors, representatives and assigns, waives any such right. It is the
intention of the Developers that during the term of this Agreement, the rights
of the Developers and their successors-in-interest, as among themselves, shall
be governed by the terms of this Agreement, and that the right of any Developer
or its successor-in-interest to assign, transfer, sell, license or otherwise
dispose of its interest in the Project shall be subject to the limitations and
restrictions of this Agreement.
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8.05 No Waiver. The failure of any Developer to insist upon strict
performance of a covenant or of any obligation under this Agreement,
irrespective of the length of time for which such failure continues, shall not
be a waiver of such Developer's right subsequently to demand strict compliance.
No consent or waiver, express or implied, to or of any breach or default in the
performance of any obligation under this Agreement, shall constitute a consent
or waiver to or of any other breach or default in the performance of the same or
any other obligation under this Agreement.
8.06 Entire Agreement. This Agreement constitutes the full and complete
agreement of the parties with respect to the subject matter of this Agreement.
8.07 Captions. Titles or captions of articles, sections and paragraphs
contained in this Agreement are inserted only as a matter of convenience and for
reference, and in no way are intended to define, limit, extend or describe the
scope of this Agreement or the intent of any provision of it.
8.08 Counterparts. This Agreement may be executed in a number of
counterparts, all of which together shall for all purposes constitute one
Agreement, binding upon all Developers.
8.09 Applicable Law. This Agreement shall be deemed to have been
entered into and shall be construed and enforced in accordance with the laws of
the internal law of the State of North Carolina without regard to conflict of
law principles as applied to contracts made and to be performed entirely within
North Carolina.
8.10 Severability. If any provision of this Agreement is or becomes or
is deemed invalid, illegal or unenforceable in any jurisdiction, (a) such
provision shall be construed or deemed amended to conform to applicable laws so
as to be valid and enforceable, or, if it cannot be so construed or deemed
amended without materially altering the intention of the parties, it shall be
stricken, (b) the validity, legality and enforceability of such provision will
not in any way be affected or impaired by it in any other jurisdiction and (c)
the remainder of this Agreement shall remain in full force and effect.
8.11 Effective Date. The Effective Date of this Agreement ("Effective
Date") shall be the date of the closing of the initial public offering of PRIMA.
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In witness whereof, the Developers have executed this Agreement as
of the ____ day of ______________, 19__.
The PRIMA Group International, Inc.
By:
Name:
Title:
Prima Industrie S.p.A.
By:
Name:
Title:
Prima Electronics S.p.A.
By:
Name:
Title:
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