EXHIBIT 10.42
FIRST AMENDMENT TO LICENSE AGREEMENT
AND GRANT OF DISTRIBUTORSHIP
The present agreement (the "Agreement") is made by and between SRA Srl, a
company established and organized under the laws of the Italian Republic, having
its legal address in Italy, 50010 Badia a Settimo (FI), Via delle Xxxxx 8/E,
registered nr. 00423470483, represented by its legal representative Xx. Xxxxxx
Xxxxxx (hereinafter "SRA")
Lonati SpA (successor to Lonati Srl), a corporation established and organized
under the laws of the Italian Republic, having its legal address in Italy, 25123
Brescia, Via San Polo 11, fiscal code nr. 01469680175 and registered nr.
02096730961, represented by its legal representative Xx. Xxxxxx Xxxxxx
(hereinafter "Lonati")
parties of the first part
and
Xxxx Motion Controls Inc., a corporation established and organized under the
laws of the State of North Carolina, having its legal address and principal
office at 000 Xxxxxxxx Xxxx, Xxxxxxxxx 00000 Xxxxx Xxxxxxxx, X.X.X., represented
by its legal representative and executive officer Xx. Xxxxxx X. Xxxxxxxx
(hereinafter "TMC")
party of the second part
Preliminary Statements:
A. On October 4, 2000, SRA and TMC entered a certain License Agreement
(hereinafter the "Original Agreement"), in order to grant SRA a license to
certain patents and patent applications for manufacturing and selling worldwide
sock boarding or packaging apparatus;
B. On June 28, 2001, with TMC's consent, SRA and Lonati executed an Assignment
of Interest in License Agreement By Licensee, whereby SRA assigned to Lonati all
of its interests in the above mentioned Original Agreement;
C. The Parties wish to enter this Agreement for the purpose of amending and
supplementing the Original Agreement as set forth herein.
Now therefore, in consideration of the premises and the mutual promises and
covenants set forth herein, the Parties hereby agree as follows
Agreement:
1. Premises
The above stated premises are an integral part of this Agreement.
2. License fees
Paragraph 4. of the Original Agreement entitled "License fees and other
considerations" is hereby amended by deleting Paragraph 4. in its entirety, by
eliminating any license fee payable to TMC, commencing on January 1, 2002.
3. Default and termination
The occurrence of any of the following events shall constitute a default by TMC
under the Original Agreement as amended by this Agreement and shall constitute a
default under this Agreement (each an "Event of Default"):
(a) TMC shall default in the performance or observance of any term, covenant,
condition or agreement contained in the Original Agreement, as amended by this
Agreement, or of this Agreement and such default shall continue for a period of
thirty (30) days after written notice thereof has been given to TMC by Lonati
and/or SRA.
(b) TMC shall (i) commence a voluntary case under the federal bankruptcy laws
(as now or hereafter in effect), (ii) file a petition seeking to take advantage
of any other laws, domestic or foreign, relating to bankruptcy, insolvency,
reorganization, winding up or composition for adjustment of debts, (iii) consent
to or fail to contest in a timely and appropriate manner any petition filed
against it in an involuntary case under such bankruptcy laws or other laws, (iv)
apply for or consent to, or fail to consent in a timely and appropriate manner,
the appointment of, or the taking of possession by, a receiver, custodian,
trustee, or liquidator of itself or of a substantial part of its property,
domestic or foreign, (v) admit in writing its inability to pay its debts as they
become due, (vi) make a general assignment for the benefit of creditors, or
(vii) take any corporate action for the purpose of authorizing any of the
foregoing.
(c) A case or other proceeding shall be commenced against TMC in any court of
competent jurisdiction seeking (i) relief under the federal bankruptcy laws (as
now or hereafter in effect) or under any other laws, domestic or foreign,
relating to bankruptcy, insolvency, reorganization, winding up or adjustment of
debts, or (ii) the appointment of a trustee, receiver, custodian, liquidator or
the like for TMC or for all or any substantial part of its assets, domestic or
foreign, and such case or proceeding shall continue without dismissal or stay
for a period of sixty (60) consecutive days, or an order granting the relief
requested in such case or proceeding (including, but not limited to, an order
for relief under such federal bankruptcy laws) shall be entered.
(d) Xxxxxxxx Industries, Inc. ("Xxxxxxxx"), which owns all of the outstanding
stock of TMC, shall default in the payment or performance of its existing credit
facility with SouthTrust Bank, N.A. (apart from the continuation during any
agreed-upon forbearance period of any existing default which is the subject of a
binding forbearance agreement by SouthTrust Bank, N.A.).
(e) Xxxxxxxx or any of its subsidiaries, including TMC, shall default in the
payment of any indebtedness for borrowed money, the aggregate outstanding amount
of which
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indebtedness is in excess of $1,000,000 beyond the period of grace if any,
provided in the instrument or agreement under which such indebtedness was
created.
(f) Xxxxxxxx shall fail to obtain refinancing of the existing credit facility
from SouthTrust Bank, N.A. or other banks upon maturity of such facility (by
acceleration upon default or otherwise) in the principal amount of at least USD
12,000,000.00 (Twelve Million and 00/100 US Dollar) and for a term extending
beyond July 31, 2003.
Immediately upon the occurrence of any Event of Default under this Agreement (i)
the obligations, agreements, and commitments of Lonati and/or SRA set forth in
this Agreement shall immediately and automatically terminate and be of no
further force or effect without further notice to or consent of TMC, (ii) Lonati
and/or SRA shall have the right to terminate the Original Agreement, as amended
hereby by written notice to TMC, and all of TMC's rights and agency thereunder,
(iii) Lonati and/or SRA shall have the right to terminate this Agreement upon
written notice to TMC, and all of TMC's rights and agencies hereunder, (iv)
Lonati and/or SRA shall have the right to exercise and enforce any and all
rights and remedies available to Lonati and SRA under this Agreement, under any
and all documents executed and delivered in connection with this Agreement,
under the Original Agreement and under applicable laws. All rights and remedies
available to Lonati and SRA under this Agreement, under any and all documents
executed and delivered in connection therewith, and under applicable laws, may
be asserted, enforced and exercised concurrently, cumulatively, or successively
from time to time.
4. Exclusive distributorship
4.1 Subject to earlier termination as provided herein, the Parties agree that
TMC will be the exclusive distributor of SRA Robosox and of all packaging
equipment (the "Products") made by SRA (or by another company, to the extent
that any other company in the Lonati Group manufactures such products) for a
term beginning on the date of this Agreement and continuing until, but not
beyond, July 3, 2004, within the territories of U.S.A. and Canada (the
"Territory").
4.2 TMC shall purchase SRA's Product according to the terms and conditions set
forth in this Section 4 of this Agreement and upon such additional sales terms
and conditions as may be agreed upon by both parties from time to time in
writing and, according to the price list for SRA's Products in force at the time
any purchase order is accepted by SRA. Prices shall be subject to change by SRA
at any time and without notice. SRA shall have the right to accept or reject any
purchase order, or part thereof, at its discretion.
4.3 TMC shall pay all future spare parts orders by irrevocable and confirmed
Letter of Credit net ninety (90) days from the date of the invoice.
4.4 TMC shall pay for new machine orders and other Products (other than spare
parts) on the following terms: ten percent (10%) down-payment at the order
confirmation and ninety percent (90%) against ninety (90) days irrevocable and
confirmed Letter of Credit.
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4.5 The ten percent (10%) down-payment shall be paid by wire transfer or other
immediate funds with each purchase order and prior to shipment. The
effectiveness of each purchase order is conditioned upon the correct and full
payment and performance of the aforementioned ten percent (10%) down-payment.
4.6 Each irrevocable Letter of Credit shall be issued at least 7 days prior to
the shipment date and shall be payable at 90 (ninety) days from the invoice
issued by SRA for the Products. With respect to purchases after the date of this
Agreement, TMC shall pay for Products in United States Dollars and all letters
of credit issued with respect to such purchases shall be payable in United
States Dollars. All letters of credit must be irrevocable when issued and must
be issued and confirmed by a bank satisfactory to SRA. Other terms of the
Letters of Credit must be satisfactory to SRA.
4.7 The terms of payment set forth in this Section 4 shall apply to all
purchases by TMC of Products, including spare parts and new machines, made after
the date of this Agreement.
4.8 All transactions relating to this Agreement and Original Agreement will be
in U.S. Dollars.
4.9 No order for any Products shall be binding for SRA unless and until it has
been expressly accepted by SRA by issuing and forwarding to TMC the relevant
pro-forma invoice.
4.10 TMC shall bear any cost and expense suffered in connection with and as a
consequence of the fulfillment of any and all its obligations hereunder.
Accordingly, TMC shall be responsible for all taxes and charges of any nature
which may be imposed or assessed in the Territory with respect to the Products,
including but not limited to income, franchise, profits and gross receipts
taxes, turnover, and added-value taxes, duties, custom charges, import licenses
and transportation taxes. Moreover, TMC shall duly comply with any law and
statutory regulations existing in the Territory and concerning the importation
of the Products and the sale of the Products in the Territory.
4.11 TMC shall commit itself to use diligent and reasonable efforts to promote
the Products in the aforementioned Territory by continuously endeavoring to
adequately increase the sales of SRA's Product in the Territory.
4.12 TMC shall provide customers in the Territory with efficient and competent
technical assistance, during the period of installation and testing of the
Product, as well as during the whole period the Product is running, shall deal
promptly and property with any customer complaints and shall supply, without
charge, all necessary instructions on use and maintenance of the Products. In
the event of particular difficulties, TMC shall have the right to request
assistance from SRA's technicians, provided that SRA shall be reimbursed for the
costs and expenses of such technicians in performing work at the request of TMC
including reasonable salaries, living and travel expenses for such TMC
technicians.
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4.13 TMC shall treat as confidential any and all information received from SRA
in connection with the execution and performance of this Agreement, including,
without limitation, customer lists, marketing plans, product designs and
developments, and technical know-how. TMC shall not use or disclose any such
information to any third party without the prior written consent of SRA and
shall cause Xxxxxxxx and its subsidiaries to maintain the confidentiality of
such information, unless and only to the extent that such information is or
becomes generally known to the public through no fault of TMC. The
confidentiality obligation stated herein shall survive the termination or
expiration of the Agreement. TMC shall also maintain completely confidential and
private any commercial and economic new or confidential information that it
becomes aware of during the performance of this Agreement. Furthermore, TMC
shall not disclose such confidential information for one (1) year after the
termination of this Agreement.
4.14 TMC shall market the Products under SRA's registered trademark (the
"Trademark"). For this purpose SRA grants TMC with the non-exclusive right and
license to use the Trademark in connection with the marketing and servicing of
the Product in the Territory during the term of this Agreement and in accordance
with the terms of this Agreement solely for the purpose of marketing,
advertising and selling the Products. TMC shall afford SRA reasonable
opportunities during the term hereof to inspect and monitor the activities of
TMC in order to ensure TMC's use of such trademarks is in accordance with SRA's
standards, specifications and instructions.
4.15 TMC acknowledges and agrees that nothing in this Agreement shall be
construed or interpreted as conferring upon TMC any right or interest in the
Trademark, that is, and shall remain the exclusive property of SRA. In this
regard, TMC warrants that it neither has nor will acquire or represent that it
has any right in or to the Trademark nor its registration.
4.16 SRA warrants that the Products supplied hereunder will confirm to the
description herein stated or stated in any written description or specification
supplied by SRA at the time of the purchase order, that it will convey good
title thereto, free of all liens of any kind. This is SRA's sole warranty with
respect to the goods. SRA makes no other warranty of any kind whatsoever,
expressed or implied. TMC is not authorized to make or give additional
warranties, express or implied, on behalf of SRA.
SRA makes no warranties of merchantability or fitness for any particular
purpose, or any other warranty, express or implied, except as expressly provided
herein. SRA shall in no event be liable, whether in contract, tort, or on any
other basis, for consequential, incidental, indirect or punitive damages, or
loss of profits of any kind sustained by TMC, or by any person dealing with TMC,
in connection with the products. SRA's liability for any claim of any kind
(including, without limitation, claims based upon any express warranty contained
herein and claims based upon any warranty implied by law), shall be limited, at
SRA's option, to repair or replacement of the products or the return to TMC of
the price paid, and TMC expressly waives any right it might have to any other
measure of damages, statutory or otherwise.
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4.17 All deliveries of Products are F.O.B. Scandicci-Firenze, Italy. After
delivery to carrier F.O.B. Brescia, Italy, the Products shall be in all respects
at the risk of TMC and any claim for damage or shortage shall be made by TMC
against the carrier.
4.18 At any time during the term of this Agreement, SRA shall have the right to
make changes in type, model and specification to any Product as well as to the
Territory extension in such a manner as it may deem necessary or advisable.
4.19 Upon the expiration of the term of such exclusive distributorship granted
to TMC on July 3/rd/, 2004, or upon the earlier termination of this Agreement or
of the Original Agreement as amended hereby, the agency granted to TMC with
respect to distribution of such Products shall cease and terminate.
5. Governing law and Exclusive Forum for disputes
5.1 This Agreement shall be governed and construed in all respects in accordance
with the Laws of the Republic of Italy. The parties expressly exclude the
applicability of the United Nations Convention on Contracts for the
International Sale of Goods and any other international conventions or treaties
regarding the international sale of goods. Any reference to local uses or
customs is merely indicative.
5.2 Subject to the provisions of Section 5.3 of this Agreement, each of the
Parties hereby irrevocably consents to the personal jurisdiction of the courts
of Brescia, Italy, in any action, claim or other proceeding arising out of any
dispute in connection with this Agreement or the Original Agreement, any rights
or obligations hereunder or thereunder, or the performance of such rights and
obligations. TMC hereby irrevocably consents to the service of a summons and
complaint and other process in any action, claim or proceeding brought by SRA or
Lonati in connection with this Agreement or the Original Agreement, any rights
or obligations hereunder or thereunder, or the performance of such rights and
obligations.
5.3 Notwithstanding the provisions of Section 5.2 with respect to jurisdiction
in the courts of Brescia, Italy, SRA and Lonati shall each have the right to
waive the provisions of Section 5.2 and to bring any action or proceeding
against TMC or its properties in the courts of any other jurisdictions,
including without limitation the State and federal courts located in the State
of North Carolina, U.S.A.
6. Amendment
In the event of any conflict between the terms of the Original Agreement and the
terms of this Agreement, the terms of this Agreement shall be controlling and
the Original Agreement shall be deemed amended to the extent required to conform
to the provisions of this Agreement, including amendments due to Sections 2, 3,
4 and 5 above. Except as amended hereby, the Original Agreement shall remain in
force and effect.
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7. Final clause
7.1 Should any provisions of this Agreement be or become invalid, illegal or
unenforceable under applicable law, the other provisions of this Agreement shall
not be affected, and, to the extent permissible under applicable law, the
Parties shall use their best efforts to modify said invalid, illegal, or
unenforceable provisions so as to comply with such laws.
7.2 Except as modified by this Agreement, the Original Agreement with its
subsequent amendments shall remain in full force and effect and is hereby
ratified and confirmed.
SRA Srl Xxxx Motion Controls Inc.
By: /s/ Xxxxxx Xxxxxx By: /s/ Xxxxxx X. Xxxxxxxx
------------------------ ------------------------------
Name: Xxxxxx Xxxxxx Name: Xxxxxx X. Xxxxxxxx
Title: President Title: President
Lonati SpA
By: /s/ Xxxxxx Xxxxxx
-------------------------
Name: Xxxxxx Xxxxxx
Title: President
Brescia, (date) Charlotte, (date)
Specific Acceptance
TMC declare to accept specifically, pursuant to articles 1341 and 1342 of the
Italian Civil Code, the following clauses as described above: 3. default and
termination; 4. exclusive distributorship; 5. governing law and exclusive forum
for disputes; 6 amendment.
Xxxx Motion Controls Inc.
By: /s/ Xxxxxx X. Xxxxxxxx
------------------------------
Name: Xxxxxx X. Xxxxxxxx
Title: President
Charlotte (date)
July 16, 2002
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