EXHIBIT 10.9
TECHNOLOGY ASSIGNMENT AND ROYALTY AGREEMENT
This Technology Assignment and Royalty Agreement ("Agreement") is made
this 16th day of June, 2000 by and between EarthFirst Technologies, Inc.
("EarthFirst"), a Florida corporation, its wholly-owned subsidiary, Ennotech,
Inc. ("Etech"), a Florida corporation and BORS International L.L.C. ("BIL"), a
Florida limited liability company.
R E C I T A L S:
A. Pursuant to the Balanced Oil Recovery System Lift License
Agreement dated June 19, 1998 and the Addendums thereto ("License Agreement")
between Xxxxx Technology Licensing, Ind. ("TTL") and Lift-Pump, L.L.C. (TTL was
granted exclusive rights to the "BORS Lift" technology for lifting oil from
shallow xxxxx. TTL assigned whatever right, title and interest it had in this
technology and the Licensing Agreement to Etech on April 27, 2000. A copy of the
License Agreement and addendums is attached hereto as Exhibit "A"; a copy of the
assignment to Etech is attached hereto as Exhibit "A-1." Etech is a wholly-owned
subsidiary of TTL; TTL is now known as EarthFirst Technologies, Inc.
("EarthFirst") by virtue of a name change filed with the Florida Department of
State.
B. EarthFirst, pursuant to the License Agreement and predecessor
agreements, accepted the BORS Lift technology in an early prototype state and
through engineering and development converted this prototype into a working,
commercially usable design and has produced and sold a limited number of
commercial BORS Lift units. All parties acknowledge that the mass production of
BORS Lift units will require additional capital infusion for final development,
advertising, manufacturing and service.
C. BIL desires to accept the BORS Lift unit in its current state
of commercial development with the purpose of marketing the BORS Lift unit on a
worldwide basis.
D. Etech and EarthFirst desire to develop technology to a
commercially viable state and then license or otherwise dispose of the
technology in consideration of royalty or override payments.
E. Etech now desires to assign the technology and manufacturing
rights concerning the BORS Lift units to BIL and BIL has agreed to accept the
technology and manufacturing rights concerning the BORS Lift unit at its current
state of development with the stated purpose of mass producing and selling the
BORS Lift units and paying royalties to Etech as a result of EarthFirst's
efforts in developing the BORS Lift unit.
THEREFORE, in consideration of Ten ($10.00) Dollars and other good and
valuable consideration, the mutual promises set forth herein, the receipt of
which is hereby acknowledged, the parties agree as follows:
1. ASSIGNMENT - Etech and EarthFirst hereby agree to assign and
transfer whatever right, title and interest they have in the license agreement
and the BORS Lift
technology, in accordance with the terms of that Absolute and Unconditional
Assignment, a copy of which is attached hereto as Exhibit "B" ("Assignment").
BIL has investigated the status of the License Agreement, EarthFirst's
developments to the BORS Lift, and all accompanying technology and the status of
the current BORS Lift units. The parties agree that BIL accepts the Assignment
"As-Is," "Where-Is," without any warranty of fitness, suitability or any other
actual or implied warranty relating to the BORS Lift prior development or the
accompanying technology.
2. SALE OF INVENTORY, EQUIPMENT AND TOOLING - BIL agrees to
purchase all BORS Lift inventory, equipment and tooling currently owned by
EarthFirst or Etech. A specific listing of the inventory, equipment and tooling
to be sold is annexed to the Xxxx of Sale attached hereto as Exhibit "C." The
purchase price for the inventory, equipment and tooling is $324,921, which
shall be paid at closing. The parties acknowledge that an adjustment to this
purchase price may be made prior to closing based upon BIL making additional
purchases. Simultaneously with the receipt of payment, the Xxxx of Sale shall be
delivered to BIL. At the closing, EarthFirst shall pay off and satisfy the
Promissory Note in favor of Xxxxxx X. Xxxxx in the principal amount of
$375,000.00 so that the Security Agreement which creates a first lien upon this
equipment and inventory and other assets of EarthFirst shall be terminated. Any
amount owed to Xxxxxx X. Xxxxx which exceeds the Purchase Price shall be paid to
Xxxxxx X. Xxxxx from the proceeds of the monthly royalty payments due pursuant
to the Royalty Agreement described in paragraph 3, below.
3. ROYALTY AGREEMENT - In consideration of the Assignment, BIL
shall deliver to Etech and the parties shall execute at closing a Royalty
Agreement in the form attached hereto as Exhibit "D."
4. SURRENDER OF STOCK - As a condition precedent to closing, at
closing, Xxxxxx Xxxxx and Xxxx Xxxxxxx, shall each have surrendered 100,000
shares of EarthFirst stock owned by them, for a total return of stock of 200,000
shares.
5. ASSUMPTION OF WARRANTY AND SERVICE OBLIGATIONS - Upon closing,
BIL shall assume all, actual or implied, warranty and service obligations of
EarthFirst or Etech in connection with all BORS Lift units and related equipment
services previously sold or provided by EarthFirst (or its agents or employees),
to any customers or other person or entity. A list of units sold and
corresponding warranties is attached hereto as Exhibit "E." BIL shall indemnify
and hold EarthFirst harmless from any such claims or causes of action in
connection with warranty or service claims relating to BORS Lift units, related
equipment or services provided by EarthFirst to any person or entity. However,
it is specifically agreed that BIL is not assuming any liabilities to vendors or
suppliers, but rather only obligations for warranties and service promised or
owed previously or in the future to any BORS Lift customer or BORS Lift user of
a unit supplied by EarthFirst or Etech that was installed and operating on the
closing date. EarthFirst and Etech specifically agree that BIL is authorized to
contact and may utilize vendors or suppliers of EarthFirst previously used by
EarthFirst. In addition, BIL agrees to use reasonable efforts to assist
EarthFirst in resolving all
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outstanding payables or claims by any vendors of BORS Lift materials, supplies
or services. In consideration of this assumption, at closing BIL shall be
delivered 500,000 shares of EarthFirst Section 144 common stock. EarthFirst
agrees that in the event it seeks the general registration of any outstanding
shares or the issuance of new registered shares through a SEC-approved offering,
it shall also attempt to register the shares granted hereby, provided such
registration is permissible and practical, using reasonable efforts.
6. GENERAL RELEASES - The parties hereto shall exchange General
Releases of all claims they may have against one another (and their officers,
directors, shareholders, members, managers, employees, successors, and assigns
and predecessors) relating to the BORS Lift and related technology and the
License Agreement, or otherwise as set forth in the form of General Release
attached hereto as Exhibit "F." Additionally, EarthFirst and Etech shall
indemnify BIL (and its officers, directors, shareholders, members, managers,
employees, successors, and assigns and predecessors) from any liability arising
out of third-party legal actions brought against EarthFirst and Etech (and
involving the BORS Lift units) which legal actions are filed after the Closing
Date, except for BIL's obligations pursuant to paragraph 5, above.
7. CLOSING - The closing called for in this Agreement shall occur
on or before June 23, 2000 (but may be extended by either party to June 27,
2000) at the offices of the Massari Law Group, 000 X. Xxxxxxx Xxxxxx, Xxxxx, XX.
The parties acknowledge that there are no conditions precedent to closing.
8. NATURE OF THE RELATIONSHIP - The parties acknowledge that
their only relationship is a contractual relationship and that the parties do
not owe any fiduciary or other duty to one another except for the duties imposed
by this contract or that they will not hold themselves out as an agent, partner
or co-venturer of the other and that this Agreement is not intended and does not
create an agency, partnership, joint venture or any other type of relationship
except the license and contract relationships established hereby.
9. MISCELLANEOUS
a. WAIVERS. No waiver of any default shall be implied
from any delay or omission by the parties to take action on account of such
default, and no express waiver shall affect any default other than the default
specified in the waiver and it shall be operative only for the time and to the
extent therein stated.
b. BENEFIT. This Agreement is made and entered into for
the sole protection and benefit of Etech and BIL, their successors and assigns,
and no other person or persons have any right to action hereon or rights as a
third party beneficiary as a result of the execution of this Agreement.
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c. ASSIGNMENT. The terms hereof shall be binding upon
and inure to the benefit of the heirs, successors, assigns, and personal
representatives of the parties hereto.
d. AMENDMENTS. This Agreement shall not be amended
except by a written instrument signed by all parties hereto.
e. GOVERNING LAW AND JURISDICTION. This Agreement and
all matters relating thereto shall be governed by and construed and interpreted
in accordance with the laws of the State of Florida. The parties hereby submit
to the jurisdiction of the state and federal courts located in Pinellas County,
Florida.
f. SAVINGS CLAUSE. Invalidation of any one or more of
the provisions of this Agreement shall in no way effect any of the other
provisions hereof, which shall remain in full force and effect.
g. EXECUTION IN COUNTERPARTS. This Agreement may be
executed in two or more counterparts, each of which shall be deemed to ban an
original, but all of which shall constitute one and the same instrument, and in
making proof of this Agreement, it shall not be necessary to produce or account
for more than one such counterpart.
h. CAPTIONS. The captions herein are inserted only as a
matter of convenience and for reference and in no way define, limit or describe
the scope of this Agreement nor the intent of any provision hereof.
i. TIME IS OF THE ESSENCE. Time is of the essence as to
this Agreement.
j. ENTIRE UNDERSTANDING. This Agreement and the exhibits
hereto constitute the entire understanding between the parties, and all prior or
contemporaneous oral agreements, understandings, representations and statements
are merged into this Agreement.
k. NOTICES. Any and all notices, designations, consents,
offers, acceptances, or any other communication provided for herein shall be
given in writing by certified mail or by reputable overnight courier service,
e.g., Federal Express, which shall be addressed as follows:
If to EarthFirst: ________________________________
________________________________
________________________________
If to Ennotech: ________________________________
________________________________
________________________________
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If to BORS: ________________________________
________________________________
________________________________
l. SURVIVAL. The representations and warranties and
provisions of this Agreement shall survive any closing hereunder.
m. ATTORNEYS' FEES. In the event that any party is
required to engage the services of legal counsel to enforce its rights under
this Agreement against any other party, regardless of whether such action
results in litigation, the prevailing party shall be entitled to reasonable
attorneys' fees and costs from the other party, which in the event of litigation
shall include fees and costs incurred at trial, on appeal, incident to any
bankruptcy proceeding.
n. WAIVER OF JURY TRIAL. By acceptance hereof, the
parties agree that none of them shall seek a jury trial in any lawsuit,
proceedings, counterclaim, or any other litigation procedure based upon or
arising out of this Agreement or any instrument evidencing or relating to this
Agreement. None of the parties will seek to consolidate any such action, in
which a jury trial has been waived, with any other action in which a jury trial
has not been waived. The provisions of this paragraph have been fully negotiated
by the parties, and these provisions shall be subject to no exceptions.
o. RECITALS. The above Recitals are written solely for
illustrative purposes. Neither party is bound by any statement contained
therein.
IN WITNESS WHEREOF, EarthFirst, Etech and BIL have executed this
Technology Assignment and Royalty Agreement as of the above written date.
Signed, sealed and delivered EARTHFIRST TECHNOLOGIES, INC.,
in the presence of: f/k/a Xxxxx Technology Licensing, Inc.
By: /s/ XXXX XXXXXXX
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Xxxx Xxxxxxx, President
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Printed Name
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Printed Name
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ENNOTECH, INC.
By: /s/ XXXX XXXXXXX
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Xxxx Xxxxxxx, President
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Printed Name
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Printed Name
BORS INTERNATIONAL, L.L.C.
By: /s/ XXXXX XXXXXX
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Managing Member
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Printed Name
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Printed Name
