AMENDED AND RESTATED CONSULTANT AGREEMENT
This Consultant Agreement is entered into by and between Xxxx X. Xxxxxxx
("Xxxxxxx") and Oakley, Inc., a Washington corporation ("Oakley") on this 12th
day of May, 1998.
WHEREAS, Xxxxxxx owns Oakley stock of substantial value and has been
employed by Oakley for many years in the capacity of Chief Executive Officer or
Vice-president;
WHEREAS, the parties previously entered into an Employment Agreement that
expired on July 31, 1997 and a consultant agreement that was executed August 1,
1997;
WHEREAS, the parties desire to amend and restate the August 7, 1997
Consultant Agreement as provided herein;
WHEREAS, Xxxxxxx will continue to be an employee and act as Vice-Chairman
of Oakley pursuant to an agreement between Oakley and Xxxxxxx;
WHEREAS, the parties desire, however, to enter into a Consulting Agreement
and set forth their mutual obligations herein.
NOW, THEREFORE, in consideration of the mutual agreements hereinafter set
forth, Xxxxxxx and Oakley have agreed and do hereby agree as follows:
1. EMPLOYMENT WITH OAKLEY. The parties agree that Xxxxxxx will continue
as an employee and Vice-Chairman of Oakley on such terms and conditions as the
parties may mutually agree and that said employment will be terminable at will.
2. CONSULTING AGREEMENT. Upon the termination of Xxxxxxx'x employment
with Oakley for any reason other than death or disability, Oakley shall have the
option, which shall be exercisable by Oakley within 30 days of the effective
date of Xxxxxxx'x termination with Oakley, to enter into an amendment to this
agreement, reasonably satisfactory to Oakley and Xxxxxxx, that further defines
the consulting services which Xxxxxxx shall render to Oakley as mutually agreed
upon by Xxxxxxx and Oakley. The term of the consulting period under this
Agreement, as so amended, shall begin on the date of exercise (the "Exercise
Date") of the option by Oakley and shall continue until the later of August 1,
2002 and two years from the Exercise Date (such later date, the "Expiration
Date"). In return for said consulting services, Xxxxxxx shall be compensated at
the rate of $100,000.00 per year payable in equal bi-weekly installments or at
such other
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time or times as Xxxxxxx and Oakley shall agree. It is expressly understood
that Xxxxxxx'x reporting obligations pursuant to this Consulting Agreement
shall be limited to the Chairman of the Board of Directors of Oakley or such
other person as Xxxxxxx and Oakley shall agree.
3. ASSIGNMENT OF INTELLECTUAL PROPERTY RIGHTS.
(a) DEFINITION OF "INVENTIONS". As used herein, the term
"Inventions" shall mean all designs, inventions, discoveries, improvements,
trade secrets, formulas, techniques, data, programs, systems, specifications,
documentation, algorithms, flow charts, logic diagrams, source codes, processes,
and other information, including works-in-progress, whether or not subject to
patent, trademark, copyright, trade secret, or mask work protection, and whether
or not reduced to practice, which are made, created, authored, conceived, or
reduced to practice by Xxxxxxx, either alone or jointly with others, during the
period of employment or consulting with Oakley (including, without limitation,
all periods of employment with Oakley prior to the effective date) which (A)
relate to the actual or anticipated business, activities, research, or
investigations of Oakley or (B) result directly or indirectly from work
performed by Xxxxxxx for Oakley (whether or not made or conceived during normal
working hours or on the premises of Oakley), or (C) which result, to any extent,
from use of Oakley's premises or property, unless in the case of clause (C)
only, (i)Xxxxxxx has reimbursed Oakley in an amount equal to the value of the
use of such premises or property (as determined by Oakley based upon Oakley's
all-in cost, which shall include, without limitation, compensation and overhead
expense) and (ii) Oakley approved the use of its premises or property prior to
the use thereof by Xxxxxxx.
(b) WORK FOR HIRE. Xxxxxxx expressly acknowledges that all
copyrightable aspects of the Inventions (as defined below) are to be considered
"works made for hire" within the meaning of the Copyright Act of 1976, as
amended (the "Act"), and that Oakley is to be the "author" within the meaning of
such Act for all purposes. All such copyrightable works, as well as all copies
of such works in whatever medium fixed or embodied, shall be owned exclusively
by Oakley as of its creation, and Xxxxxxx hereby expressly disclaims any and all
interest in any of such copyrightable works and waives any right of DROIT MORALE
or similar rights.
(c) ASSIGNMENT. Xxxxxxx acknowledges and agrees that all Inventions
constitute trade secrets of Oakley and shall be the sole property of Oakley or
any other entity designated by Oakley. In the event that title to any or all of
the Inventions,
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or any part or element thereof, may not, by operation of law, vest in Oakley, or
such Inventions may be found as a matter of law not to be "works made for hire"
within the meaning of the Act, Xxxxxxx hereby conveys and irrevocably assigns to
Oakley, without further consideration, all his right, title and interest,
throughout the universe and in perpetuity, in all Inventions and all copies of
them, in whatever medium fixed or embodied, and in all written records,
graphics, diagrams, notes, or reports relating thereto in Xxxxxxx'x possession
or under his control, including, with respect to any of the foregoing, all
rights of copyright, patent, trademark, trade secret, mask work, and any and all
other proprietary rights therein, the right to modify and create derivative
works, the right to invoke the benefit of any priority under any international
convention, and all rights to register and renew same.
Xxxxxxx understands that Inventions do not include, and
the obligations set forth above in this Section 3(c) do not apply to, subject
matter that qualifies fully under the provisions of Section 2870 of the
California Labor Code.
(d) PROPRIETARY NOTICES; NO FILINGS; WAIVER OF MORAL RIGHTS. Xxxxxxx
acknowledges that all Inventions shall, at the sole option of Oakley, bear
Oakley's patent, copyright, trademark, trade secret, and mask work notices.
Xxxxxxx agrees not to file any patent, copyright, or trademark applications
relating to any Invention, except with prior written consent of an authorized
representative of Oakley (other than Xxxxxxx).
Xxxxxxx hereby expressly disclaims any and all interest in any Inventions
and waives any right of droit morale or similar rights, such as rights of
integrity or the right to be attributed as the creator of the Invention.
(e) FURTHER ASSURANCES. Xxxxxxx agrees to assist Oakley, or any
party designated by Oakley, promptly on Oakley's request, whether before or
after the termination of employment, however such termination may occur, in
perfecting, registering, maintaining, and enforcing, in any jurisdiction,
Oakley's rights in the Inventions by performing all acts and executing all
documents and instruments deemed necessary or convenient by Oakley, including,
by way of illustration and not limitation:
i) Executing assignments, applications, and other documents and
instruments in connection with (A) obtaining patents, copyrights,
trademarks, mask works, or other proprietary protections for the Inventions
and (B) confirming the assignment to Oakley of all right, title, and
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interest in the Inventions or otherwise establishing Oakley's exclusive
ownership rights therein.
ii) Cooperating on the prosecution of patent, copyright,
trademark and mask work applications, as well as in the enforcement of
Oakley's rights in the Inventions, including, but not limited to,
testifying in court or before any patent, copyright, trademark or mask work
registry office or any other administrative body.
Xxxxxxx will be reimbursed for all out-of-pocket costs incurred in
connection with the foregoing, if such assistance is requested by Oakley
after the termination of Xxxxxxx'x employment. In addition, to the extent
that, after the termination of employment for whatever reason, Xxxxxxx'x
technical expertise shall be required in connection with the fulfillment of
the aforementioned obligations, Oakley will compensate Xxxxxxx at a
reasonable rate for the time actually spent by Xxxxxxx at Oakley's request
rendering such assistance.
(f) POWER OF ATTORNEY. Xxxxxxx hereby irrevocably appoints Oakley to
be his Attorney-In-Fact to execute any document and to take any action in his
name and on his behalf and to generally use his name for the purpose of giving
to Oakley the full benefit of the assignment provisions set forth above.
(g) DISCLOSURE OF INVENTIONS. Xxxxxxx will make full and prompt
disclosure to Oakley of all Inventions subject to assignment to Oakley, and all
information relating thereto in Xxxxxxx'x possession or under his control as to
possible applications and use thereof.
4. NO VIOLATION OF THIRD-PARTY RIGHTS.
Xxxxxxx represents, warrants, and covenants that he:
(a) will not, in connection with his activities hereunder, knowingly
infringe upon or violate any proprietary rights of any third party (including,
without limitation, any third party confidential relationships, patents,
copyrights, mask works, trade secrets, or other proprietary rights);
(b) is not a party to any conflicting agreements with third parties
which will prevent him from fulfilling the terms of employment and the
obligations of this Agreement;
(c) does not have in his possession any confidential or proprietary
information or documents belonging to others and will not disclose to Oakley,
use, or induce Oakley to use, any
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confidential or proprietary information or documents of others; and
(d) agrees, in connection with any of his activities hereunder to
respect any and all valid obligations which he may now have to prior employers
or to others relating to confidential information, inventions, or discoveries
which are the property of those prior employers or others, as the case may be.
Xxxxxxx agrees to indemnify and save harmless Oakley from any loss, claim,
damage, cost or expense of any kind (including without limitation, reasonable
attorney fees) to which Oakley may be subjected by virtue of a breach by Xxxxxxx
of the foregoing representations, warranties, and covenants.
5. CONFIDENTIAL INFORMATION AND NON-COMPETITION.
(a) CONFIDENTIALITY. Xxxxxxx acknowledges that in his employment as
a consultant hereunder, and during prior periods of employment with Oakley, he
has occupied and will continue to occupy a position of trust and confidence.
Xxxxxxx shall not, except as may be required to perform his duties hereunder or
as required by applicable law, without limitation in time or until such
information shall have become public other than by Xxxxxxx'x unauthorized
disclosure, disclose to others or use, whether directly or indirectly, any
Confidential Information regarding Oakley. "Confidential Information" shall
mean information about Oakley, its subsidiaries and affiliates, and their
respective clients and customers that is not disclosed by Oakley for financial
reporting purposes and that was learned by Xxxxxxx in the course of his
employment by Oakley, including (without limitation) any proprietary knowledge,
trade secrets, data, formulae, information and client and customer lists and all
papers, resumes, and records (including computer records) of the documents
containing such Confidential Information. Xxxxxxx acknowledges that such
Confidential Information is specialized, unique in nature and of great value to
Oakley, and that such information gives Oakley a competitive advantage. Oakley
agrees to (i) deliver or return to Oakley, at Oakley's request at any time or
upon termination or expiration of his employment or as soon thereafter as
possible, (A) all documents, computer tapes and disks, records, lists, data,
drawings, prints, notes and written information (and all copies thereof)
furnished by Oakley or prepared by Xxxxxxx during the term of his employment by
Oakley and (B) all notebooks and other data relating to research or experiments
or other work conducted by Xxxxxxx in the scope of employment or any Inventions
made, created, authored, conceived, or reduced to practice by Xxxxxxx, either
alone or jointly with others, and (ii) make full disclosure relating to any
Inventions.
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If Xxxxxxx would like to keep certain property, such as material relating
to professional societies or other non-confidential material, upon the
termination of employment with Oakley, he agrees to discuss such issues with
Oakley. Where such a request does not put Confidential Information of Oakley at
risk, Oakley will grant the request. In this regard, Oakley hereby grants
Xxxxxxx the right to keep his personal copy of the black "bound books", which
chronicle the financial history of Oakley.
(b) NON-COMPETITION. During the term of his employment and, if Oakley
exercises the option contained in Section 2, through the Expiration Date,
Xxxxxxx shall not directly or indirectly, without the prior written consent of
Oakley, provide consultative services or otherwise provide services to (whether
as an employee or a consultant, with or without pay), own, manage, operate,
join, control, participate in, or be connected with (as a stockholder, partner,
or otherwise), any business, individual, partner, firm, corporation, or other
entity that is then a competitor of Oakley, including any entity engaged in the
design, manufacture and/or distribution of eyewear (each such competitor a
"Competitor of Oakley"); provided, however, that the "beneficial ownership" by
Xxxxxxx, either individually or as a member of a "group," as such terms are used
in Rule 13d of the General rules and Regulations under the Securities Exchange
Act of 1934, as amended (the "Exchange Act"), of not more than five percent (5%)
of the voting stock of any publicly held corporation shall not alone constitute
a violation of this Agreement. It is further expressly agreed that Oakley will
or would suffer irreparable injury if Xxxxxxx were to compete with Oakley or any
subsidiary or affiliate of Oakley in violation of this Agreement and that Oakley
would by reason of such competition be entitled to injunctive relief in a court
of appropriate jurisdiction, and Xxxxxxx further consents and stipulates to the
entry of such injunctive relief in such a court prohibiting Xxxxxxx from
competing with Oakley or any subsidiary or affiliate of Oakley in violation of
this Agreement. Xxxxxxx and Oakley acknowledge and agree that the business of
Oakley is global in nature, and that the terms of the non-competitive agreement
set forth herein shall apply on a worldwide basis.
(c) NON-SOLICITATION OF CUSTOMERS AND SUPPLIERS. During the term of
his employment and, if Oakley exercises the option contained in Section 2,
through the Expiration Date, Xxxxxxx shall not, directly or indirectly,
influence or attempt to influence customers or suppliers of Oakley or any of its
subsidiaries or affiliates, to divert their business to any Competitor of
Oakley.
(d) NON-SOLICITATION OF EMPLOYEES. Xxxxxxx recognizes that he
possesses and will possess confidential information about
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other employees of Oakley relating to their education, experience, skills,
abilities, compensation and benefits, and inter-personal relationships with
customers of Oakley. Xxxxxxx recognizes that the information he possesses and
will possess about these other employees is not generally known, is of
substantial value to Oakley in developing its business and in securing and
retaining customers, and has been and will be acquired by him because of his
business position with Oakley. Xxxxxxx agrees that, during the term of his
employment and, if Oakley exercises the option contained in Section 2, through
the Expiration Date, he will not, directly or indirectly, solicit or recruit any
employee of Oakley for the purpose of being employed by him or by any Competitor
of Oakley on whose behalf he is acting as an agent, representative or employee
and that he will not convey any such confidential information or trade secrets
about other employees of Oakley to any other person.
(e) SURVIVAL OF PROVISIONS. The obligations contained in this
section shall survive the expiration of the consulting agreement hereunder and
shall be fully enforceable thereafter. If it is determined by a court of
competent jurisdiction in any state that any restriction in this section is
excessive in duration or scope or is unreasonable or unenforceable under the
laws of that state, it is the intention of the parties that such restriction may
be modified or amended by the court to render it enforceable to the maximum
extent permitted by the law of that state.
6. FRINGE BENEFITS. As provided in the parties' previous Employment
Agreement, from and after the date of Xxxxxxx'x termination of employment with
Oakley (including the term of the Consulting Agreement), Xxxxxxx shall be
entitled during his lifetime, to full company paid medical and health insurance
for himself and his immediate family at a level no less favorable than that in
effect for the benefit of Oakley's senior executive officers.
7. PRODUCTS. From and after the date of Xxxxxxx'x termination of
employment with Oakley (including the term of the Consulting Agreement),
Xxxxxxx shall be entitled, during his lifetime, to purchase from Oakley, at
employee prices, any and all Oakley products in an annual amount of $25,000.00.
8. NOTICES. All notices and other communications under this Agreement
shall be in writing and shall be given by fax or first class mail, certified or
registered with return receipt requested, and shall be deemed to have been duly
given three (3) days after mailing or twenty-four (24) hours after transmission
of a fax to the respective persons named below:
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If to Oakley: Oakley, Inc.
One Icon
Xxxxxxxx Xxxxx, XX 00000
ATTENTION: Secretary
Phone: (000) 000-0000
Fax: (000) 000-0000
If to Xxxxxxx: Xxxx X. Xxxxxxx
c/o Oakley, Inc.
One Icon
Xxxxxxxx Xxxxx, XX 00000
Phone: (000) 000-0000
Fax: (000) 000-0000
Either party may change such party's address for notices by notice duly given
pursuant hereto.
9. TERMINATION OF PRIOR AGREEMENTS. This Agreement terminates and
supersedes any and all prior agreements and understandings between the parties
with respect to Xxxxxxx'x employment and compensation by Oakley.
10. ASSIGNMENT; SUCCESSORS. This Agreement is personal in its nature and
neither of the parties hereto shall, without the consent of the other, assign or
transfer this Agreement or any rights or obligations hereunder; provided that,
in the event of the merger, consolidation, transfer, or sale of all or
substantially all of the assets of Oakley with or to any other individual or
entity, this Agreement shall, subject to the provisions hereof, be binding upon
and inure to the benefit of such successor and such successor shall discharge
and perform all of the promises, covenants, duties and obligations of Oakley
hereunder.
11. GOVERNING LAW. This Agreement and the legal relations thus created
between the parties hereto shall be governed by and construed under and in
accordance with the laws of the State of California.
12. WAIVER; MODIFICATION. Failure to insist upon strict compliance with
any of the terms, covenants, or conditions hereof shall not be deemed a waiver
of such term, covenant, or condition, nor shall any waiver or relinquishment of,
or failure to insist upon strict compliance with, any right or power hereunder
at any one or more times be deemed a waiver or relinquishment of such right or
power at any other time or times. This Agreement shall not be modified in any
respect except by a writing executed by each party hereto.
13. SEVERABILITY. In the event that a court of competent jurisdiction
determines that any portion of this Agreement is in
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violation of any statute or public policy, only the portions of this Agreement
that violate such statute or public policy shall be stricken. All portions of
this Agreement that do not violate any statute or public policy shall continue
in full force and effect. Further, any court order striking any portion of this
Agreement shall modify the stricken terms as narrowly as possible to give as
much effect as possible to the intentions of the parties under this Agreement.
14. INDEMNIFICATION. Oakley shall indemnify and hold Xxxxxxx harmless for
acts and omissions in his capacity as an officer, director, employee or
consultant of Oakley as provided in the separate written indemnification
agreement between Oakley and Xxxxxxx.
IN WITNESS WHEREOF, Oakley has caused this Consulting Agreement to be
executed by its duly authorized officer and Xxxxxxx has hereunto signed this
Agreement as of the date first above written.
OAKLEY, INC. XXXX X. XXXXXXX
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BY:
ITS:
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