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EXHIBIT 10.2
LICENSE AGREEMENT
THIS LICENSE AGREEMENT ("Agreement"), entered into and effective as of the 15th
day of March, 1996, by and between Xxxxxxx Xxxxxxx, an individual, ("LICENSOR")
and Xxxxxxx'x Thunder Karts, Inc., a Louisiana corporation ("LICENSEE"):
WITNESSETH THAT:
Whereas Xxxxxxx Xxxxxxx is the Owner of TECHNOLOGY as defined below,
and
Whereas LICENSEE desires to obtain from the LICENSOR a license under
said TECHNOLOGY;
WHEREAS both parties agree that the TECHNOLOGY has been and will be
incorporated into various LICENSED PRODUCTS developed by the LICENSEE;
WHEREAS both parties represent that they are able to comply with and
otherwise satisfy the terms and conditions set forth in this Agreement;
NOW THEREFORE, in consideration of the sum of ten dollars ($10 U.S.)
and other good and valuable consideration now paid by each of the parties
hereto to the other, the receipt of all of which hereby irrevocably
acknowledged by each party, it is agreed as follows:
SECTION 1
DEFINITIONS
1.1 PATENT RIGHTS shall mean (a) United States Patent Number 5,477,940,
issued December 26, 1995, for "ACCELERATOR PEDAL OVERRIDE APPARATUS FOR
SELF-PROPELLED MOTORIZED CART WITH ALIGNED BRAKE AND ACCELERATOR PUSHROD TYPE
OPERATOR PEDALS", and (b) applications for patents that have been filed or may
be filed in the future for improvements relating to LICENSED PRODUCTS, the
inventions described and claimed therein, and any
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divisions, continuations, continuations-in-part, patents issuing thereon or
reissues thereof; and any and all foreign patents and patent applications
corresponding thereto; which will be automatically incorporated in and added to
this Agreement and shall periodically be added to Appendix A attached to this
Agreement and made a part thereof.
1.2 LICENSED PRODUCTS shall mean products claimed in PATENT RIGHTS or
products made in accordance with or by means of LICENSED PROCESSES or products
made utilizing PROPRIETARY LICENSED PROCESSES or products made utilizing
PROPRIETARY MATERIALS or incorporating some portion of PROPRIETARY MATERIALS.
1.3 LICENSED PROCESSES shall mean the processes claimed in PATENT RIGHTS
or processes utilizing PROPRIETARY MATERIALS or some option thereof.
1.4 PROPRIETARY MATERIALS shall mean the materials supplied by LICENSOR
together with any of the know-how and all related rights, trade secrets, and
TECHNOLOGY, owned by LICENSOR and relating to a family of go-kart products and
go-kart components as they presently exist and as they may be acquired,
developed or modified in the future.
1.5 TECHNOLOGY shall mean any and all confidential information,
PROPRIETARY MATERIALS, or PATENT RIGHTS supplied by LICENSOR to LICENSEE. The
confidential information shall not include information which: (a) is known to
LICENSEE on a non-confidential basis prior to disclosure by LICENSOR; or (b) is
part of the public domain and know to the general public at the time it was
disclosed to LICENSEE.
1.6 TERRITORY means the entire United States of America, its territories
and possessions, and foreign countries in which Patent Rights exist.
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SECTION 2
GRANT OF LICENSE
2.1 SCOPE OF LICENSE. Subject to the terms and conditions of this
Agreement, LICENSOR hereby grants to LICENSEE a License (the "License"):
2.1.1 to use the information or secrets disclosed in the TECHNOLOGY
to develop Xxxxxxx'x Thunder Karts LICENSED PRODUCTS;
2.1.2 to incorporate the information or secrets disclosed in the
TECHNOLOGY in Xxxxxxx'x Thunder Karts LICENSED PRODUCTS;
2.1.3 to manufacture or have manufactured Xxxxxxx'x Thunder Karts
LICENSED PRODUCTS containing the information or secrets disclosed in the
TECHNOLOGY;
2.1.4 to sell or have sold Xxxxxxx'x Thunder Karts LICENSED PRODUCTS
containing the information or secrets disclosed in the TECHNOLOGY.
2.2 NON-EXCLUSIVE LICENSE. The License is a non-exclusive License in the
TERRITORY for the TECHNOLOGY for Xxxxxxx'x Thunder Karts LICENSED PRODUCTS.
2.3 LICENSE TERM. The term of the License granted in Section 2 of this
Agreement with respect to PATENT RIGHTS shall begin on the Effective Date and
shall terminate on the last Patent expiration date of the PATENT RIGHTS. The
license granted in Section 2 of this Agreement with respect to PROPRIETARY
MATERIALS, not including PATENT RIGHTS, shall survive any termination of this
Agreement.
2.4 ROYALTY. All fees and royalties are on terms at least as favorable as
LICENSOR has received or could have received in arms-length transactions with
third parties.
2.5 IMPLEMENTATION. LICENSOR and LICENSEE agree that LICENSEE (i) will
implement or integrate the information or secrets contained in the TECHNOLOGY
into the Xxxxxxx'x Thunder Karts Products and (ii) shall be the exclusive owner
of such Xxxxxxx'x Thunder Karts Products.
2.6 SUBLICENSING. LICENSEE shall have, with the written consent by the
LICENSOR, (i) the right to sublicense purchases of the Xxxxxxx'x Thunder Karts
Products to use the
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information or secrets contained in the TECHNOLOGY as part of the Xxxxxxx'x
Thunder Karts Products and (ii) the right to sublicense developers of Xxxxxxx'x
Thunder Karts Products to use the information or secrets contained in the
Licensed Technology for the sole purpose of developing Xxxxxxx'x Thunder Karts
Products to be owned by Xxxxxxx'x Thunder Karts. The LICENSEE is not empowered
by this clause to veto subsequent licenses.
2.7 RIGHTS RETAINED. All rights not specifically assigned to LICENSEE are
retained by LICENSOR.
2.8 The terms and rights established under Section 2 of this Agreement in
no way affect the terms and rights established under Section 4 of this
Agreement.
SECTION 3
TITLE
3.1 TITLE TO THE LICENSED TECHNOLOGY. LICENSOR represents and warrants
that it is the sole owner of all right, title and interest in and to the
TECHNOLOGY, except as otherwise provided in Appendix A, attached hereto.
SECTION 4
LICENSE OPTION
4.1 TERMS. For a period of five (5) years beginning on the Effective Date
of this Agreement, LICENSEE shall have a License Option. Under this License
Option, LICENSOR agrees to license to the LICENSEE, at LICENSEE's sole option,
all TECHNOLOGY developed and/or owned by LICENSOR during this five-year period
wherein:
4.1.1 if a patent application or a provisional application is filed
for such TECHNOLOGY during the term of this License Option, then LICENSOR shall
give written notice accordingly to LICENSEE. Upon receipt of the written
notice, LICENSEE shall have the exclusive right and option, exercisable upon
written notice
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to LICENSOR at any time during a period of thirty (30) days from the date of
receipt, to purchase a license to the patent application or provisional
application and any subsequently-issued patent. The license shall be exclusive
and free of charge for a period of one year from the filing date of the patent
application or the provisional application. Thereafter, such license shall be
at such prices and on such other terms as the parties hereto may mutually agree
provided that such terms are at least as favorable as the LICENSOR would
receive in an arms-length transaction with any third party. If LICENSEE fails
to exercise its option, then LICENSOR shall be free to offer such TECHNOLOGY to
third parties; or
4.1.2 if a patent application or a provisional application is not
filed and will not be filed for such TECHNOLOGY by LICENSOR, and the TECHNOLOGY
has achieved a commercially viable status that LICENSOR seeks to take advantage
of, then LICENSOR shall give written notice to LICENSEE setting out this
TECHNOLOGY in detail. Upon receipt of the detailed written notice, LICENSEE
shall have the exclusive right and option, exercisable upon written notice to
LICENSOR at any time during a period of thirty (30) days from the date of
receipt of notice from LICENSOR, to purchase a license of the TECHNOLOGY. Such
a license shall be exclusive and free of charge for a period of one year from
receipt of the detailed written notice from LICENSEE. Thereafter, such license
shall be at such prices and on such other terms as the parties hereto may
mutually agree provided that such terms are at least as favorable as the
LICENSOR would receive in an arms-length transaction with any third party. If
LICENSEE fails to exercise its option, then LICENSOR shall be free to offer
such TECHNOLOGY to third parties.
SECTION 5
LIMITATIONS OF LIABILITY
5.1 DISCLAIMER. Except as specifically set forth herein, LICENSOR makes no
warranties, express or implied, regarding or relating to the TECHNOLOGY or to
any other materials or services furnished or provided to the LICENSEE
hereunder.
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5.2 LIMITATION OF LIABILITY. In no event shall the LICENSOR or any person
or entity involved in creating the TECHNOLOGY be liable under any claim, demand
or action arising out of or relating to performance or lack thereof under this
Agreement for any special, indirect, incidental, exemplary or consequential
damages, whether or not LICENSOR or such person has been advised of the
possibility of such claim, demand or action.
5.3 LICENSOR represents and warrants that it has sufficient right, title
and interest in and to the TECHNOLOGY to enter into this Agreement, and further
warrants that the TECHNOLOGY does not, to the best of LICENSOR'S knowledge,
infringe any patent, copyright or other proprietary right of a third party when
used as contemplated by this Agreement and that LICENSOR has not been notified
of a possibility that the TECHNOLOGY might infringe any patent, copyright or
other proprietary rights of a third party.
SECTION 6
TERMINATION
6.1 TERMINATION BY EITHER PARTY. Either party may terminate this Agreement
upon 30 (thirty) days written notice to the other party if the other party
commits a material breach of any term hereof and fails to cure said breach
within the 30 (thirty) day period. Such notice shall set forth the basis of
termination. A material breach is considered to be, but not limited to, the
following: (1) default of performance; (2) failure to meet payments; (3)
failure to provide reports and access to records; or (4) unauthorized
disclosures.
6.2 AUTOMATIC TERMINATION. If LICENSEE shall be adjudicated insolvent, is
the subject of an involuntary petition in bankruptcy not dismissed within the
60 days of the filing of said involuntary petition, or files a petition in
bankruptcy, or for reorganization, or if LICENSEE shall take advantage of any
insolvency act, or make an assignment for the benefit of creditors, then, and
in any such event, this Agreement shall forthwith terminate and the license
herein granted shall not constitute an asset in
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reorganization, bankruptcy or insolvency which may be assigned or which may
accrue to any court or creditor appointed referee, receiver or committee.
6.3 ACTIONS UPON TERMINATION. Upon termination of this Agreement for any
reason, LICENSEE shall immediately cease use of, and forthwith return to
LICENSOR the TECHNOLOGY and tangible manifestations or copies thereof and all
licenses theretofore granted by LICENSEE under this Agreement will be
transferred and assigned by LICENSEE to LICENSOR or to that person, firm, or
corporation LICENSOR designates for that purpose.
SECTION 7
MISCELLANEOUS
7.1 ASSIGNMENT. Except as provided herein, LICENSEE shall not sell,
transfer, assign or subcontract any right or obligation hereunder without prior
written consent of the LICENSOR, provided however, LICENSEE may upon ten (10)
days written notice to, but without prior consent of the LICENSOR assign this
Agreement pursuant to:
7.1.1 the merger or consolidation of the LICENSEE; or
7.1.2 the sale of substantially of all the assets of the LICENSEE to
a third party, provided the party remains fully liable for its obligation
hereunder and such third party agrees to be liable for the party's obligations
hereunder.
7.2 SUCCESSORS AND ASSIGNS. The covenants and conditions herein contained
shall, subject to the provisions as to assignment, apply to and bind the
successors and permitted assigns of the parties hereto.
7.3 DISPUTE RESOLUTION. The parties will conduct friendly negotiations to
resolve any dispute. Failing resolution, disputes will be finally resolved by
arbitration in Dallas, Texas, pursuant to the Commercial rules of the American
Arbitration Association, by one arbitrator appointed in accordance with such
rules. The parties agree that any arbitral award and any matter requiring
injunctive or other provisional relief may be instituted and enforced in any
court having jurisdiction. In the event of any dispute
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between the parties relating to this Agreement, the party substantially
prevailing will be entitled to recover all costs and expenses of any subsequent
proceedings (including trial, arbitration and appellate proceedings), including
the attorney fees incurred therein.
7.4 CHOICE OF LAW. The interpretation and construction of this Agreement
shall be governed by the laws of the State of Texas.
7.5 SEVERABILITY. If any provision of this Agreement is held by a court of
competent jurisdiction to be contrary to law, the remaining provisions of this
Agreement will remain in full force and effect.
7.6 NOTICE. Any notice required or permitted to be made or given by either
party under this Agreement shall be deemed to have been duly given if
delivered, postage prepaid, certified mail, return receipt requested:
If LICENSOR to: Xxxxxxx Xxxxxxx
000 Xxxxx Xxxx
Xxxxx, Xxxxxxxxx 00000
If LICENSEE to: Xxxxxxx'x Thunder Karts, Inc.
Xxxxxxx 00 Xxxxx
Xxxxxxxx, Xxxxxxxxx 00000
and/or to any such person(s) address(es) as either part shall have specified in
writing to the other.
7.7 MARKING OF PRODUCTS. LICENSEE shall accordingly affix or cause to be
affixed proper statutory patent, trademark and/or copyright notices to each
apparatus made by LICENSEE under this Agreement.
7.8 ENTIRE AGREEMENT. The provisions herein together with the Appendix
attached hereto, constitute the entire agreement between the parties with
respect to the subject matter hereof and supersedes all prior agreements, oral
or written, and all other communications relating to the subject matter hereof.
No amendment or modification
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of any provision of this Agreement will be effective unless set forth in a
document that purports to amend this Agreement and that is executed by both
parties hereto.
7.9 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which will be an original and will be effective as of the
date set forth on the first page when signed on behalf of LICENSOR and
LICENSEE.
IN WITNESS WHEREOF, the parties have caused this Agreement to be effective as
of the date first set forth above:
Xxxxxxx Xxxxxxx Xxxxxxx'x Thunder Karts, Inc.
By: /s/ XXXXXXX XXXXXXX By: /s/ V. XXXX XXXXXXXX
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Title: PRESIDENT
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XXXXXXXX X
0. Xxxxxx Xxxxxx Patent Number 5,477,940, issued December 26, 1995, for
"ACCELERATOR PEDAL OVERRIDE APPARATUS FOR SELF-PROPELLED MOTORIZED CART WITH
ALIGNED BRAKE AND ACCELERATOR PUSHROD TYPE OPERATOR PEDALS."
XXXXXXX-XXXXXXX'X THUNDER KARTS, INC
APPENDIX A
