Exhibit 10.20
INTELLECTUAL PROPERTY AGREEMENT
BETWEEN
NOVELIS INC.
AND
ALCAN INTERNATIONAL LIMITED
1 January 2005
TABLE OF CONTENTS
1.0 PREAMBLE................................................................1
2.0 DEFINITIONS.............................................................1
3.0 LICENSE RIGHTS GRANTED..................................................4
4.0 ROYALTY AND ROYALTY PAYMENT.............................................7
5.0 TECHNICAL ASSISTANCE....................................................7
6.0 PROTECTION OF INFORMATION...............................................7
7.0 TERM AND TERMINATION....................................................9
8.0 SURVIVAL OF OBLIGATIONS................................................10
9.0 REPRESENTATIONS........................................................10
10.0 DISCLAIMER............................................................10
11.0 TRADEMARK, TRADE NAME AND LOGO........................................11
12.0 NON-WAIVER............................................................11
13.0 NO PARTNERSHIP, JOINT VENTURE.........................................11
14.0 FURTHER ASSURANCES, CONSENTS, ETC. ...................................11
15.0 NOTICES...............................................................11
16.0 ASSIGNMENT............................................................12
17.0 INDEMNIFICATION.......................................................12
18.0 ENTIRE AGREEMENT, AMENDMENTS, ETC. ...................................14
19.0 DISPUTE RESOLUTION....................................................15
20.0 MISCELLANEOUS.........................................................15
21.0 GOVERNING LAW.........................................................15
INTELLECTUAL PROPERTY AGREEMENT
This Intellectual Property Agreement is entered into with effect as of the
Effective Date.
BETWEEN: Novelis Inc. a Canadian corporation having its registered
office at 0000 Xxxxxxxxxx Xxxxxx Xxxx, Xxxxxxxx, Xxxxxx,
Xxxxxx (hereinafter referred to as "NOVELIS") acting as
principal and as agent for the other members of Novelis Group,
as herein provided.
AND: Alcan International Limited, a Canadian corporation having its
head office at 0000 Xxxxxxxxxx Xxxxxx Xxxx, Xxxxxxxx, Xxxxxx,
Xxxxxx (hereinafter referred to as "ALCANINT")
WHEREAS, Alcanint is a wholly-owned subsidiary of Alcan Inc.; and
WHEREAS, Alcan Inc. and Novelis have entered into the Separation
Agreement which provides, among other things, for the transfer of
certain assets from Alcan to Novelis and the assumption by Novelis of
certain liabilities in connection with the distribution of common
shares of Novelis to the holders of the common shares of Alcan and the
execution and delivery of certain other agreements including this
Agreement; and
WHEREAS Alcanint has pursuant to the Principal Intellectual Property
Agreement (as defined below) entered into, transferred and assigned
ownership of certain Technology to Novelis and desires to retain
certain rights in respect thereof;
NOW THEREFORE, in consideration of the foregoing and the mutual
agreements set forth below, and other good and valuable consideration,
the receipt and adequacy of which is hereby acknowledged, the parties
hereto agree as follows:
1.0 PREAMBLE
The preamble hereto shall be considered an integral part of this
Agreement.
2.0 DEFINITIONS
As used herein, the following terms shall have the following
meanings:
2.1 "AEROSPACE INDUSTRY" shall mean the production of aircraft,
spacecraft, satellites and similar craft for manned or
unmanned flight;
2.2 "AFFILIATE" shall mean, with respect to any corporation,
association or other business entity, any other entity
directly or indirectly controlling, controlled by or under
common control with such specified corporation, association or
entity. For purposes of this definition, "control" (including,
with correlative meanings, the terms "controlling,"
"controlled by" and "under common control with"), means the
possession, directly or indirectly, of the power to direct or
cause the direction of management or policies, whether through
the ownership of voting securities, by agreement or otherwise;
provided, however, that beneficial ownership of 10% or
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more of the securities or other interest entitled to vote
generally in the election of directors shall be deemed to be
control;
2.3 "AGREEMENT" shall mean this Intellectual Property Agreement
and all other documents that are made a part hereof;
2.4 "ALCAN" means Alcan Inc., a Canadian corporation;
2.5 "ALCAN GROUP COMPANY" shall mean Alcan or any entity of which
a majority of the total voting power of capital stock or other
interests entitled (without regard to the occurrence of any
contingency) to vote in the election of directors, managers or
trustees thereof or at the time owned or controlled, directly
or indirectly, by Alcan.
2.6 "AUTOMOTIVE SHEET" shall mean aluminum Sheet products destined
or intended for use in or principally related to the
production of body panels (including closures, skin, hoods,
decks, lids and fenders) and Sheet-based body-in-white
structures for road vehicles;
2.7 "AUTOMOTIVE SHEET PATENTS" shall mean the patents and patent
applications in respect of Automotive Sheet as listed in
Appendix ASP;
2.8 "COCAST TECHNOLOGY" shall mean the Technology originally
developed by Xxxxxxxx Inc. and further developed by Alcan
Group Companies, primarily at the Solatens Facility, related
to the casting of composite ingots with distinct regions
having different alloy compositions as generally described in
the patents and patent applications listed in Appendix CCT;
2.9 "EFFECTIVE DATE" shall mean the Effective Date as defined in
the Separation Agreement;
2.10 "FLEXCAST TECHNOLOGY" shall mean the Technology specific to
continuous casting of a thin strip between two chilled
metallic belts and as generally described in the patents and
patent applications listed in Appendix FCT;
2.11 "FLEXSTREME TECHNOLOGY" shall mean the Technology and
equipment designs originally developed by Xxxxxxxx Inc. and
further developed by Alcan Group Companies, primarily at the
Solatens Facility, related to the horizontal direct chill
casting of small diameter ingots suitable for use as forging
stock as generally described in the patents and patent
applications listed in Appendix FST;
2.12 "INSITU HOMOGENIZATION TECHNOLOGY" shall mean ***;
2.13 "LICENSED NOVELIS PATENTS" shall mean the patents and patent
applications listed on Appendix LNP;
*** Certain information on this page has been omitted and filed separately with
the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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2.14 "LICENSED NOVELIS TECHNOLOGY" shall mean the technology
licensed by Novelis to Licensee pursuant to Section
3.1. hereof;
2.15 "LICENSEE" shall mean Alcanint or any of its Affiliates as
determined by the context or as otherwise designated for any
particular purpose by Alcanint, provided that an Alcan Group
Company other than Alcan or Alcanint shall be a Licensee under
this Agreement only if such company agrees to be bound by the
terms of this Agreement and provided further that Alcanint
shall remain liable for license related obligations on a joint
and several basis for any of its Affiliates as determined by
the context or as otherwise designated for any particular
purpose by Alcanint.
2.16 "NETCAST TECHNOLOGY" shall mean the Technology originally
developed by Xxxxxxxx Inc. and further developed by Alcan
Group Companies, primarily at the Solatens Facility, related
to the direct chill casting of complex shapes as more
particularly described in the patents and patent applications
listed in Appendix NCT;
2.17 "NOVELIS GROUP" shall mean Novelis and the Novelis
subsidiaries.
2.18 "NOVELIS SUBSIDIARY" shall mean, as of and from the Effective
Date, (i) Petrocoque S.A. -- Industria E Comercio, Aluminium
Norf GmbH and Xxxxx Aluminum Inc, in each case for so long as
Novelis retains at least its current ownership stake in such
entity and (ii) any other entity of which a majority of the
total voting power of capital stock or other interests
entitled (without the occurrence of any contingency) to vote
in the election of directors, managers or trustees thereof is
at the time owned or controlled, directly or indirectly by
Novelis;
2.19 "NOVELIS TECHNOLOGY" shall mean any and all patents, patent
applications, copyrights, trade secrets, information, data,
inventions, designs and similar rights either conceived or
first reduced to practice on or before the Effective Date that
are owned or licensable by Novelis or under the control of
Novelis pursuant to the Principal Intellectual Property
Agreement and forming the subject matter hereof;
2.20 "PAE TWIN ROLL CASTING TECHNOLOGY" shall mean Technology
specific to the continuous casting of a relatively thin metal
strip between two chilled rolls which is marketed by Pechiney
Aluminium Engineering as more particularly described in the
patents and patent applications listed in Appendix TRCT;
2.21 "PAE METAL TREATMENT TECHNOLOGY" shall mean Technology
specific to the melting, holding and casting of aluminum,
treatments of molten aluminum to remove hydrogen, solid and
liquid inclusions and alkali metal and related equipment
including but not limited to XXXX, JetCleaner, Alpur, PDBF,
CCF and Autopak which is marketed by Pechiney Aluminium
Engineering as more particularly described in the patents and
patent applications listed in Appendix MTT.
2.22 "PRINCIPAL INTELLECTUAL PROPERTY AGREEMENT" shall mean that
other Intellectual Property Agreement, of even date herewith,
between Alcanint as the party of the first part and Novelis as
the party of the second part;
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2.23 "SEPARATION AGREEMENT" shall mean the Separation Agreement of
even date herewith between Alcan and Novelis, as described in
the Preamble of this Agreement;
2.24 "SHEET" and "FOIL" shall have the same meaning as is commonly
ascribed to those expressions in the aluminum industry in
reference to rolled aluminum provided that it is of a
thickness of 6.5 mm or less;
2.25 "SIERRE TECHNOLOGY" shall mean the patents and patent
applications listed on Appendix SP which are a subset of the
Automotive Sheet Patents as well as the Technology used from
time to time in connection with the operation of the business
and manufacturing activities at the Sierre North Building;
2.26 "SIERRE NORTH BUILDING LEASE" shall mean the lease for the
premises commonly referred to as the "SIERRE NORTH BUILDING"
between an Alcan Group Company as lessor and Novelis or one of
its Affiliates as lessee which lease is further referred to
in, annexed to or defined in the Separation Agreement.
2.27 "SUBSIDIARY" shall mean, with respect to any corporation,
association or other business entity, any other entity of
which a majority of the total voting power of capital stock or
other interests entitled (without regard to the occurrence of
any contingency) to vote in the election of directors,
managers or trustees thereof is at the time owned or
controlled, directly or indirectly, by such corporation,
association or entity or one or more of its other
Subsidiaries; and
2.28 "TECHNICAL ASSISTANCE" shall mean the services rendered by
Novelis, or a third party selected by Novelis, to the
Licensee, to install, test and operate and maintain the
Novelis Technology.
3.0 LICENSE RIGHTS GRANTED
3.1 Novelis hereby grants to Licensee and Licensee hereby accepts,
subject to the terms and conditions of this Agreement, the
following rights and licenses:
3.1.1 a royalty-bearing right and license to use the
NetCast Technology to build, operate, maintain,
repair, reconstruct, rebuild and expand present or
future facilities of Licensee and to use and sell the
products produced using the NetCast Technology on a
world-wide basis,
3.1.2 a royalty-bearing right and license to use the CoCast
Technology to build, operate, maintain, repair,
reconstruct, rebuild and expand present or future
facilities of Licensee and to use and sell the
products using the CoCast Technology produced
world-wide; provided, however, that Licensee shall
have no right under this license to make or sell
products using the CoCast Technology other than in
respect of products destined for use in the Aerospace
Industry;
3.1.3 a conditional royalty-bearing right and license to
use the FlexStreme Technology to build, operate,
maintain, repair, reconstruct, rebuild and expand
present or future facilities of Licensee and to use
and sell the
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products produced using the FlexStreme Technology on
a world-wide basis,
3.1.4 a royalty-free right and license to use the InSitu
Homogenization Technology to build, operate,
maintain, repair, reconstruct, rebuild and expand any
present or future facilities of Licensee and to use
and sell the products produced using InSitu
Homogenization Technology on a world-wide basis,
3.1.5 a royalty-free right and license to use,
commercialize and sublicense the PAE Metal Treatment
Technology on a world-wide basis, including without
limitation to build, operate, maintain, repair,
rebuild and expand any present or future facilities
of Licensee, to manufacture and sell products using
the PAE Metal Treatment Technology and to assign,
sublicense or otherwise convey to any person for any
of the foregoing purposes,
3.1.6 a royalty-free right and license to use and
commercialize the Licensed Novelis Patents to build,
operate, maintain, repair, reconstruct, rebuild and
expand any present or future facilities of Licensee
and to use and sell the products produced using the
Licensed Novelis Patents on a world-wide basis,
3.1.7 A royalty-free right and license to use and
commercialize the Automotive Sheet Patents and
related Technology, as referred to in paragraph 3.1.2
of the Principal Intellectual Property Agreement, to
build, operate, maintain, repair, reconstruct,
rebuild and expand any present or future facilities
of Licensee and to use and sell the products produced
using the Automotive Sheet Patents and said related
Technology on a world-wide basis provided that
Licensee's rights and Licenses in respect thereto
shall not extend to permitting the use and
commercialization of same for Automotive Sheet
applications other than for products destined or
intended for use in public or mass transportation,
3.1.8 A conditional royalty-free right and license to use
and commercialize the Sierre Technology to build,
operate, maintain, repair, reconstruct, rebuild and
expand any present or future facilities of Licensee
and to use and sell the products produced using the
Sierre Technology on a world-wide basis, and
3.1.9 Rights and/or licenses in the FlexCast Technology and
the PAE Twin Roll Casting Technology under the terms
and conditions in Appendix CNC hereto.
3.2 To the extent that (i) Novelis continues the commercial sale
of equipment for implementing the FlexStreme Technology and
(ii) Novelis offers such equipment to Licensee for sale on
terms and conditions (including royalties) at least as
favourable to Licensee as the best of those offered to any
third party during the preceding 12 months (such conditions
(i) and (ii) being referred to herein as a "COMMERCIAL
LICENSE"), then Licensee shall operate under the terms of such
Commercial License rather than the licenses granted in
paragraph 3.1.3 herein
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until the occurrence of condition (i) or (ii) above. At any
time thereafter, Licensee shall be entitled to operate under
the license granted under paragraph 3.1.3, as the case may be,
with no further action required by either Novelis or Licensee,
provided that Licensee shall provide reasonably prompt notice
to Novelis that Licensee is operating under the license set
forth in paragraph 3.1.3. The licenses provided for in
paragraphs 3.1.3 shall not apply to any equipment purchased by
Licensee prior to the date of such notice for implementing
FlexStreme Technology to the extent that equipment has been
acquired with a valid Commercial License. Such previously
purchased equipment shall continue to be operated under the
terms and conditions specified at the time such equipment was
acquired by Licensee.
3.3 The license granted in paragraph 3.1.8 shall be subject to the
condition that it shall only take effect upon the termination
or expiry of the Sierre North Building Lease provided such
termination is not as the result of a default on the part of
Alcan.
3.4 Except as otherwise provided for herein, all licenses granted
to Licensee under this Agreement shall be personal,
indivisible, non-exclusive, and non-transferable except as
otherwise provided herein and shall be subject to all terms
and conditions herein set forth. The licenses granted
hereunder shall exist as long as this Agreement is effective
in accordance with Article 7.0, provided however that, the
non-exclusive licenses granted hereunder are subject to
termination in accordance with Article 7.0.
3.5 Except as otherwise specifically provided in this Agreement,
Licensee is not granted and does not have the right to assign,
sub-license or otherwise dispose of the Licensed Novelis
Technology or any part thereof without the express written
consent of Novelis.
3.6 Licensee may grant sublicenses (i) to third parties (such as
customers and vendors) to the extent necessary or appropriate
to give commercial effect to the rights sought to be licensed
hereunder and (ii) to Alcan Group Companies provided that any
such sublicense may be made effective retroactively but not
prior to the sublicensee's becoming an Alcan Group Company and
any such sublicense shall terminate immediately upon such
sublicensee no longer being an Alcan Group Company, except in
a transaction that meets the conditions of Section 16.2.
3.7 Except as otherwise specifically provided in this Agreement
and subject to its obligations under the Separation Agreement
and the Principal Intellectual Property Agreement, Novelis
shall retain all right and title in and to the Licensed
Novelis Technology (subject to any limitations inherent in the
rights received pursuant to the Principal Intellectual
Property Agreement) including without limitation:
3.7.1 All unencumbered rights of ownership in and to the
Licensed Novelis Technology;
3.7.2 The right to use the Licensed Novelis Technology in
connection with the marketing, offer, use, sale or
other transfer of any product, or service; and
3.7.3 The right to license third parties to use the
Licensed Novelis Technology;
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3.7.4 The right (but not the obligation) to file for,
prosecute and maintain any applications,
registrations or recordation thereof and to bring any
action to enforce or otherwise seek to xxxxx any
infringement thereof.
3.8 The Licensee shall have the right (to be exercised reasonably)
to request, from time to time, additional information
concerning the Licensed Novelis Technology and technology
licensed to Novelis under the Principal Intellectual Property
Agreement. Novelis shall, subject to the availability of
appropriate personnel, supply the information so requested
with the related cost and expense of doing so being, if any,
being for the Licensee's account.
3.9 The reference to licenses in this Article 3.0 is intended to
cover permission for use as may be required or contemplated by
the Principal Intellectual Property Agreement in connection
with rights and interests reserved to Alcanint or Alcan Group
Companies thereunder. Nothing in this Agreement shall be
interpreted so as to contradict any reservation of rights or
interests provided for under the Principal Intellectual
Property Agreement.
4.0 ROYALTY AND ROYALTY PAYMENT
4.1 Royalty payments shall accrue and be payable, and reports and
royalty payments shall be made as set forth on Schedule XXX.
5.0 TECHNICAL ASSISTANCE
5.1 Alcanint shall have the right (to be exercised reasonably)
from time to time to request additional information concerning
the Licensed Novelis Technology. Novelis shall, subject to the
availability of appropriate personnel, supply the information
so requested with the related cost and expense of doing so, if
any, being for Alcanint's account. Novelis will provide
Alcanint and other Alcan Group Companies such technical
consulting and assistance from qualified personnel as may from
time to time be reasonably requested by Alcanint or such other
Alcan Group Companies with respect to CoCast Technology and
Insitu Homogenization Technology and shall be entitled to
reasonable per diem fees to be agreed between the parties
based on actual cost of providing such services; provided that
Novelis shall not be obligated to provide such assistance in
excess of (i) ____ person-days in the aggregate or (ii) ____
person-days in any calendar month.
6.0 PROTECTION OF INFORMATION
6.1 Licensee hereby agrees that the Licensed Novelis Technology
made available to or produced or developed for it at any time
(the "INFORMATION") is confidential information of Novelis and
shall not be disclosed to any third party except as may be
expressly provided for herein and that Licensee shall have
only such rights in the Information as expressly provided
herein.
6.2 The obligations of confidentiality and non-disclosure shall
not apply to Information to the extent that said Information:
6.2.1 is in the public domain through no fault of Licensee,
or lawfully is or becomes public knowledge through no
breach of this Agreement;
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6.2.2 was received from any third party on a
non-confidential basis and did not originate from
Novelis or any of its Subsidiaries; or
6.2.3 was disclosed by Licensee pursuant to legal process,
governmental request or regulatory requirement;
provided, however, that the receiving party shall use
all reasonable efforts to provide notice to the
disclosing party in order to afford the disclosing
party a reasonable opportunity to seek a protective
order or an injunction.
6.3 Specific information shall not be deemed to be within the
exceptions of Section 6.2 above merely because such specific
information may be construed as being within broader,
non-confidential information which is either in the public
domain or the possession of the receiving party on the
Effective Date nor shall a combination of features which form
confidential information be deemed to be non-confidential
information merely because the individual features, without
being combined, are non-confidential.
6.4 Licensee shall not use the Information received hereunder for
any purpose other than that specified in this Agreement
without first obtaining written consent from Novelis.
6.5 Licensee may disclose the Information received hereunder to
its officers, employees, contractors, suppliers, customers,
representatives and others to the extent necessary for the
normal operation of its business. Licensee shall take
reasonable precautions, consistent with past practices, to
preserve the value of the Information. Licensee shall advise
the appropriate officers, employees, contractors, suppliers,
customers, representatives and others to whom such information
is supplied of the confidentiality obligation hereunder, and
shall ensure that, where appropriate, they have agreed to
comply with the provisions of this Article 6.0.
6.6 The obligations of confidentiality and non-disclosure with
respect to specific Information received under this Agreement
or otherwise shall expire ten years after the termination of
this Agreement.
6.7 The parties recognise that a breach of this Article 6.0 may
give rise to irreparable injury to Novelis that cannot be
adequately compensated by monetary damages. Accordingly, in
the event of a breach or threatened breach, Novelis may be
entitled to preliminary and permanent injunctive relief to
prevent or enjoin a violation of this Article 6.0 and the
unauthorised use or disclosure of any confidential Information
in addition to such other remedies as may be available for
such breach or threatened breach, including the recovery of
damages.
6.8 No provision of this Agreement shall be construed to require
Novelis to furnish any information i) acquired from others on
terms prohibiting or restricting disclosure by Novelis, or ii)
the furnishing of which is in contravention of any law,
regulation, or executive order of any government. Each party
shall use its commercially reasonable efforts to avoid
conditions that prevent the exchange of information under this
Agreement.
6.9 Nothing in this Agreement shall preclude Licensee from using
any information that is in the public domain at the time of
its use of such information unless such
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information is in the public domain as a result of Licensee's
breach of the confidentiality obligations under this Article
6.0.
7.0 TERM AND TERMINATION
7.1 This Agreement shall be effective until and shall terminate on
the *** anniversary of the Effective Date. Upon termination
pursuant to this Section 7.1, each of the licenses granted
hereunder shall be deemed a fully-paid, perpetual,
unrestricted, unconditional license with the right to grant
unrestricted sublicenses subject only to any obligation to pay
any royalties due to any third party from which the Novelis
Technology licensed hereunder was originally acquired. For
clarity, the parties intend that upon termination of this
agreement pursuant to this Section 7.1, Alcanint shall have
all of the rights of a nonexclusive owner of the Novelis
Licensed Technology excluding any patents included therein and
have the right to use and license such Technology without
notice or accounting to Novelis.
7.2 Should there be a material default by Licensee in the
performance of any obligations under this Agreement or the
Separation Agreement and such default is not cured within 30
days following written notification of such default from
Novelis, this Agreement shall terminate on the date specified
on such notice which shall not be less than 30 days following
the date of such notice, unless Licensee cures such default
before such specified termination date.
7.3 This Agreement shall terminate immediately upon the occurrence
of any of the following:
(a) the bankruptcy or insolvency of Licensee
(b) the appointment of a receiver for Licensee's assets,
(c) the making by Licensee of a general assignment for
the benefit of creditors,
(d) the institution by Licensee of proceedings for a
reorganization of Licensee under the Bankruptcy Act
or similar legislation for the relief of debtors or
the institution of involuntary proceedings by a
party other than Licensee which are not terminated
in 30 days.
7.4 Early termination under Section 7.2 or Section 7.3 shall not
prejudice Novelis' rights to recover any amounts due at the
time of such termination nor shall it prejudice any other
remedy or cause of action or claim of Novelis accrued or to
accrue against Licensee on account of any such default by
Licensee.
7.5 This Agreement may be terminated at the option of Licensee,
upon receipt of written notice to Novelis, at any time
provided all payments owed hereunder have been remitted to
Novelis.
7.6 Upon early termination of this Agreement pursuant to this
Article 7.0, all licenses of Licensed Novelis Technology shall
terminate and Licensee shall cease all use of the Licensed
Novelis Technology.
*** Certain information on this page has been omitted and filed separately with
the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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7.7 Notwithstanding the foregoing, Licensee may, after the date
this Agreement is terminated pursuant to this Article 7.0,
sell any product made before such termination, as if such
product were sold prior to termination.
8.0 SURVIVAL OF OBLIGATIONS
Except as otherwise provided in this agreement and unless otherwise
agreed in writing by the parties, the rights and obligations of the
parties under Articles 6.0, 9.0, 10.0, 11.0, 14.0, 15.0, 16.0, 17.0,
18.0, 20.0 and 21.0 shall survive the termination of this Agreement.
9.0 REPRESENTATIONS; COVENANT
Each party hereto represents that it has full power and authority to
enter into this Agreement and to perform all obligations hereunder.
Novelis further represents that it has full power and authority to act
as agent for each member of Novelis Group for all purposes under this
Agreement. Novelis covenants that it will cause each member of Novelis
Group to act strictly in accordance with the provisions of this
Agreement.
10.0 DISCLAIMER
10.1 Licensee acknowledges that the foregoing licenses are made on
an "as is" quit-claim basis and Novelis is neither providing
nor is responsible for any representation or warranty of any
nature or kind (whether express, implied, statutory,
contractual or other in nature and whether relating to title,
enforceability, merchantability, fitness for purpose,
non-infringement, absence of rights of third parties or other)
in respect of Licensed Novelis Technology or any use to be
made thereof or any product to be produced therewith. Neither
Novelis nor any Novelis Subsidiary shall be liable to
Licensee, or any other person, for any damage, injury or loss,
including loss of use arising from any activities or
obligations under this Agreement; or for any direct or
indirect, incidental, consequential special or punitive
damages.
10.2 Nothing in this Agreement shall be construed as a warranty or
representation that any product made, used, sold or otherwise
disposed of under any license granted pursuant to this
Agreement is or will be free from infringement of patents of
third parties.
10.3 Neither Novelis nor any other of its Subsidiaries or current
Affiliates shall have any infringement action or claim against
Alcan or any of its current Affiliates in respect of Novelis
Technology to the extent of any use of same prior to the
Effective Date. None of Novelis, any Novelis Subsidiary nor
any of their Affiliates shall have any infringement action
against any Alcan Group Company in respect of any past use of
Technology.
10.4 Without limiting Section 10.1 hereof, in no event shall either
party or any of their respective Affiliates be liable to the
other party or its Subsidiaries or other Affiliates for any
special, consequential, indirect, incidental or punitive
damages or lost profits, however caused and on any theory of
liability (including negligence) arising in any way out of
this Agreement, whether or not such party has been advised of
the possibility of such damages.
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11.0 TRADEMARK, TRADE NAME AND LOGO
No right is conveyed by either party to the other under this Agreement
for the use, either directly, indirectly, by implication or otherwise,
of any trademark, trade name or logo owned by Licensee or Novelis or
any Alcan Group Company or Novelis Group Company. The parties will
enter into a separate trademark license agreement, if appropriate.
12.0 NON-WAIVER
The failure of any party to insist in any one or more instances upon
the strict performance of any one or more of the obligations of this
Agreement or to exercise any election herein contained, shall not be
construed as a waiver for the future of the performance of such one or
more obligations of this Agreement or of the right to exercise such
election. No waiver of any breach or default of this Agreement shall be
held to be a waiver for any subsequent breach.
13.0 NO PARTNERSHIP, JOINT VENTURE
The parties to this Agreement agree and acknowledge that the Agreement
does not create a partnership, joint venture or any other relationship
between Novelis and Licensee save the relationship specifically set out
herein before and solely for the limited purposes herein.
14.0 FURTHER ASSURANCES, CONSENTS, ETC.
The parties to this Agreement shall co-operate together using their
respective commercially reasonable best efforts to take such further
steps, including the execution and delivery of documentation and
applications which are required for legal or regulatory purposes or to
obtain the consents or approvals of third parties or necessary or
advisable registrations. All fees and expenses related to registrations
which are advisable or necessary shall be at the expense of Novelis and
all registrations shall be the responsibility of Novelis. Nothing
contained in this Agreement shall be interpreted to oblige any party to
do anything more than apply its commercially reasonable best efforts
(without material expense to it) to obtain any consent, approval or
registration which may be required to give full effect to the terms and
conditions hereof. Similarly, no party shall be obliged to convey any
rights or do any other thing which would cause it to be in breach of
any legal or contractual obligation.
15.0 NOTICES
Any notice, consent or other instrument required or permitted to be
given by one party to the other party hereunder shall be in writing and
shall be delivered or sent by first class mail or telefax and shall be
deemed received five days following prepaid mailing or the next
business day when telefaxed to the other party with receipt
confirmation at the addresses set forth below;
To Novelis Novelis Inc.
Xxxxx 0000
Xxxxx Xxxx Xxxxx, Xxxxx Xxxxx
X. X. Xxx 00
000 Xxx Xxxxxx
Xxxxxxx, Xxxxxxx, Xxxxxx X0X 0X0
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Fax: (000) 000-0000
Attention: President
To Licensee Alcan International Limited
0000 Xxxxxxxxxx Xxxxxx Xxxx
Xxxxxxxx, Xxxxxx, Xxxxxx X0X 0X0
Fax: (000) 000-0000
Attention: Company Secretary
In all cases with copy to:
Alcan Inc.
0000 Xxxxxxxxxx Xxxxxx Xxxx
Xxxxxxxx, Xxxxxx, Xxxxxx X0X 0X0
Fax: (000) 000-0000
Attention: Company Secretary
Either party may change the notice address by giving written notice to
the other party. If sent by telefax, a confirming copy of such shall be
sent by regular mail to the addressee.
16.0 ASSIGNMENT
16.1 This Agreement shall not be assignable, in whole or in part,
directly or indirectly, by any party hereto without the prior
written consent of the other party, and any attempt to assign
any rights or obligations under this Agreement without such
consent shall be null and void and deemed to be in breach
hereof.
16.2 Notwithstanding the preceding Section 16.1, this Agreement may
be assigned (i) by Alcanint to any Alcan Group Company and
(ii) by either party in whole in connection with a merger or
consolidation or the sale of all or substantially all of the
assets of such party, or (iii) by Licensee in part in
connection with a sale or other divestiture of a subsidiary,
plant or business unit whose field of activity is principally
related to the portion of Licensee's business that licenses
and makes actual use of the Licensed Novelis Technology under
this Agreement; provided, however, that such assignee must
expressly agree in writing to be bound by the terms and
conditions of this Agreement.
17.0 INDEMNIFICATION
17.1 Licensee shall indemnify, defend and hold harmless Novelis and
its Affiliates and their respective directors and officers
(the "NOVELIS INDEMNITEES") from and against any and all
losses incurred or suffered by any of the Novelis Indemnitees
arising out of the use of any Licensed Novelis Technology by
Licensee or its customers.
17.2 If any Novelis Indemnitee determines that it is or may be
entitled to indemnification by any party (the "INDEMNIFYING
PARTY"), under this Article 17.0, (other than in connection
with an action subject to Section 17.3), the Indemnified Party
shall
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deliver to the Indemnifying Party a written notice describing
to the extent reasonably practicable, the basis for its claim
for indemnification and the amount for which the Indemnified
Party reasonably believes it is entitled to be indemnified. If
the Indemnifying Party has not responded within 30 days after
receipt of such notice, the Indemnified Party shall deliver a
second notice to the Indemnifying Party within ten days of the
expiration of the original 30 day period. Within 30 days after
receipt of any second notice, the Indemnifying Party shall pay
the Indemnified Party such amount in cash or other immediately
available funds unless the Indemnifying Party objects to the
claim for indemnification or the amount thereof.
17.3 Promptly following the earlier of (i) receipt of notice of the
commencement of an action by a third party against or
otherwise involving any indemnified party, or (ii) receipt of
information from a third party alleging the existence of a
claim against an Indemnified Party, in either case, with
respect to which indemnification may be sought pursuant to
this Agreement, (a "THIRD PARTY CLAIM"), the Indemnified Party
shall give the Indemnifying Party written notice thereof. The
failure of the Indemnified Party to give notice as provided in
this Article 17.0 shall not relieve the Indemnifying Party of
its obligations under this Agreement, except to the extent
that the Indemnifying Party is prejudiced by such failure to
give notice. Within 30 days after receipt of such notice, the
Indemnifying Party may (i) by giving written notice thereof to
the Indemnified Party, acknowledge liability for such
indemnification claim and at is option elect to assume the
defence of such Third Party Claim at its sole cost and expense
or (ii) object to the claim for indemnification set forth in
the notice delivered by the Indemnified Party pursuant to the
first sentence of this Section 17.3; provided that if the
Indemnifying Party does not within such 30 day period give the
Indemnified Party written notice objecting to such
indemnification claim and setting forth the grounds therefor,
the Indemnified Party shall give the Indemnifying Party an
additional notice of its claim for indemnification and if the
Indemnifying Party does not give the Indemnified Party written
notice objecting to such claim within ten days after receipt
of such notice the Indemnifying Party shall be deemed to have
acknowledged its liability for such indemnification claim. If
the Indemnifying Party has elected to assume the defence of a
Third Party Claim, (x) the defence shall be conducted by
counsel retained by the Indemnifying Party and reasonably
satisfactory to the Indemnified Party, provided that the
Indemnified Party shall have the right to participate in such
proceedings and to be represented by counsel of its own
choosing at the Indemnified Party's sole cost and expense; and
(y) the Indemnifying Party may settle or compromise the third
Party claim without the prior written consent of the
Indemnified Party so long as such settlement includes and
unconditional release of the Indemnified Party from all claims
that are the subject of such Third Party Claim, provided the
Indemnifying Party may not agree to any such settlement
pursuant to which any remedy or relief, other than money
damages for which the Indemnifying Party shall be responsible
hereunder, shall be applied to or against the Indemnified
Party, without the prior written consent of the Indemnified
Party, which consent shall not be unreasonably withheld. If
the Indemnifying Party does not assume the defence of a Third
Party Claim for which it has acknowledged liability for
indemnification hereunder, the Indemnified Party may require
the Indemnifying Party to reimburse it on a current basis for
its reasonable expenses of defending against such Third Party
Claim and the Indemnifying party shall be bound by the result
obtained with respect thereto by the Indemnified Party;
provided that the
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Indemnifying Party shall not be liable for any settlement
effected without its consent, which consent shall not be
unreasonably withheld. The Indemnifying Party shall pay to the
Indemnified Party in cash the amount, if any, for which the
Indemnified Party is entitled to be indemnified hereunder
within 15 days after such Third Party Claim has been finally
determined, or in the case of an indemnity claim as to which
the Indemnifying Party has not acknowledged liability, within
15 days after such Indemnifying Party's objection to liability
hereunder has been finally determined.
17.4 If for any reason the indemnification provided for in Section
17.1 is unavailable to an Indemnified Party, or insufficient
to hold it harmless, then the Indemnifying Party shall
contribute to the amount paid or payable to such Indemnified
Party as a result of such losses in such proportion as is
appropriate to reflect all relevant equitable considerations.
17.5 The remedies provided for in this Article 17.0 are not
exclusive and shall not limit any rights or remedies which may
otherwise be available to any Indemnified Party at law or in
equity.
18.0 ENTIRE AGREEMENT, AMENDMENTS, ETC.
18.1 This Agreement constitutes the entire agreement and
understanding between the parties with respect to the subject
matter hereof and supersedes all prior agreements,
understandings, negotiations and discussions whether oral or
written of the parties, and there are no representations,
warranties or conditions expressed or implied or otherwise
between the parties in connection with the subject matter
hereof, except as specifically set forth herein. No amendment
to the terms and conditions hereof or waiver in respect
thereto shall be binding unless it is in writing and signed by
duly authorised representatives of both parties.
18.2 Notwithstanding the foregoing, a breach by any party of its
obligations under the Principal Intellectual Property
Agreement shall be deemed to be a default under this Agreement
18.3 Nothing in this Agreement shall be interpreted so as to permit
either party to do anything which would be prohibited by the
Principal Intellectual Property Agreement. In the event of any
conflict between this Agreement and the Principal Intellectual
Property Agreement, the latter two shall be paramount.
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19.0 DISPUTE RESOLUTION
THE MASTER AGREEMENT WITH RESPECT TO DISPUTE RESOLUTION, EFFECTIVE ON
THE EFFECTIVE DATE, AMONG ALCANINT, NOVELIS AND OTHER PARTIES THERETO
SHALL GOVERN ALL DISPUTES, CONTROVERSIES OR CLAIMS (WHETHER ARISING IN
CONTRACT, DELICT, TORT OR OTHERWISE) BETWEEN THE PARTIES THAT MAY ARISE
OUT OF, OR RELATE TO, OR ARISE UNDER OR IN CONNECTION WITH, THIS
AGREEMENT OR THE TRANSACTIONS CONTEMPLATED HEREBY (INCLUDING ALL
ACTIONS TAKEN IN FURTHERANCE OF THIS AGREEMENT) OR THE COMMERCIAL OR
ECONOMIC RELATIONSHIP OF THE PARTIES RELATING HERETO OR
THERETO.
20.0 MISCELLANEOUS
20.1 The division of this Agreement into sections, subsections and
other subdivisions and the insertion of headings are for
convenience of reference only and shall not affect or be
utilized in the construction or interpretation of this
Agreement.
20.2 The parties hereto have requested that this Agreement and all
other documents, notices or written communications relating
thereto, be in the English language.
20.3 The parties may amend this Agreement only by a written
agreement signed by each party to be bound by the amendment
and that identifies itself as an amendment to this Agreement.
20.4 Except as expressly stated to the contrary herein, the
provisions of this Agreement are solely for the benefit of the
parties and are not intended to confer upon any person except
the parties any rights or remedies hereunder, and there are no
third party beneficiaries of this Agreement, and this
Agreement shall not provide any third person with any remedy,
claim, liability, reimbursement, claim of action or other
right in addition to those existing without reference to this
Agreement.
21.0 GOVERNING LAW
Recognizing the numerous jurisdictions associated with this Agreement
and the activities contemplated by it, the parties agree that this
Agreement shall be governed, construed and interpreted according to the
laws of the Province of Quebec, Canada without the application of the
provisions relating to the conflict of laws. Any provision in this
Agreement prohibited by law or by court decree shall be ineffective to
the extent of such prohibition without in any way invalidating or
affecting the remaining provisions of this Agreement, and this
Agreement shall be construed as if such prohibited provision had never
been contained herein. Novelis and Licensee hereby agree, however, to
negotiate an equitable amendment of this Agreement if a material
provision is adversely affected.
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IN WITNESS WHEREOF duly authorised representatives of the parties hereto have
signed duplicate copies of this Agreement.
NOVELIS INC. ALCAN INTERNATIONAL LIMITED
Per: ................................ Per: .................................
Per: ................................ Per: .................................
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