EXHIBIT 2.3
MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
This Master Trademark Ownership and License Agreement (the
"Agreement") is effective as of ________, 2000 (the "Effective Date"), between
Catalytica, Inc., a Delaware corporation ("Catalytica") and Catalytica Energy
Systems, Inc., a Delaware corporation ("CESI").
WHEREAS, Catalytica has entered into that certain Agreement and Plan
of Merger, dated August 2, 2000, with Synotex Company, Inc. and Synotex
Acquisition Corporation (the "Merger Agreement") which contemplates, among other
things, the distribution by Catalytica to all its stockholders of the CESI
capital stock held by it (the "Distribution") and the execution and delivery of
certain other agreements in order to facilitate and provide for the foregoing;
WHEREAS, Catalytica and CESI have entered into a Master Separation
Agreement which provides for, among other things, confirmation of the transfer
from Catalytica to CESI of certain assets and liabilities, the distribution of
CESI stock held by Catalytica and the execution and delivery of certain other
agreements in order to facilitate and provide for the foregoing; and
WHEREAS, the parties desire that Catalytica assign and transfer to
CESI the CESI Business Marks; and
WHEREAS, the parties further desire that Catalytica license the
Licensed Marks to CESI after the separation of the CESI business.
NOW, THEREFORE, in consideration of the mutual promises of the
parties, and of good and valuable consideration, it is agreed by and between the
parties as follows:
ARTICLE 1
DEFINITIONS
For the purpose of this Agreement, the following capitalized terms
shall have the meaning specified herein:
1.1 "Authorized Manufacturers" means any distributor, dealer, OEM
customer, systems integrator or other agent that on or after the Separation Date
is authorized to market, advertise, sell, service or otherwise offer CESI
Business Products.
1.2 "CESI Business" means the business and operations of CESI and its
Subsidiaries as it presently exists and as it may develop in the future provided
however that in no event shall CESI Business include the pharmaceutical
business.
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1.3 "CESI Business Marks" means the mutually agreed Marks set forth on
Exhibit A to this Agreement.
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1.4 "CESI Business Products" means any and all products of the CESI
Business.
1.5 "Collateral Materials" means all packaging, tags, labels, advertising,
warranties and other materials of any and all types associated with the CESI
Business Products that are marked with at least one of the Licensed Marks.
1.6 "Corporate Identity Materials" means materials that are not products
or product-related and that CESI may now or hereafter use to communicate its
identity, including, by way of example and without limitation, business cards,
letterhead, stationery, paper stock and other supplies, and signage on real
property and buildings.
1.7 "Distribution Date" means the date the Distribution is effective.
1.8 "Licensed Marks" means the Marks set forth on Exhibit B to this
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Agreement.
1.9 "Xxxx" means any trademark, service xxxx, trade name, domain name, and
the like, or other word, name, symbol or device, or any combination thereof,
used or intended to be used by a person to identify and distinguish the products
or services of that person from the products or services of others and to
indicate the source of such goods or services, including without limitation all
registrations and applications therefor throughout the world and all common law
and other rights therein throughout the world.
1.10 "Master Separation Agreement" means the Master Separation Agreement
between the parties.
1.11 "Quality Standards" means standards of quality applicable to the CESI
Business Products, as in use immediately prior to the Separation Date, unless
otherwise communicated in writing by Catalytica from time to time.
1.12 "Separation Date" means 12:01 a.m., Pacific Time, on the date that
Catalytica distributes all of the CESI stock to its stockholders.
1.13 "Subsidiary" of any entity means a corporation or other organization
whether incorporated or unincorporated of which at least a majority of the
securities or interests having by the terms thereof ordinary voting power to
elect at least a majority of the board of directors or others performing similar
functions with respect to such corporation or other organization is directly or
indirectly owned or controlled by such entity or by any one or more of its
Subsidiaries, or by such entity and one or more of its Subsidiaries; provided,
however, that no entity that is not directly or indirectly wholly-owned by any
other
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entity shall be a Subsidiary of such other entity unless such other entity
controls, or has the right, power or ability to control, that entity. For
purposes of this Agreement, CESI shall be deemed not to be a Subsidiary of
Catalytica.
1.14 "Third Party" means a person other than Catalytica and its
Subsidiaries and CESI and its Subsidiaries.
1.15 "Trademark Usage Guidelines" means the guidelines for proper usage of
the Licensed Marks, as in use immediately prior to the Separation Date, as such
guidelines may be revised and updated in writing by Catalytica and CESI from
time to time.
ARTICLE 2
OWNERSHIP
2.1 Ownership Of CESI Business Marks. The parties agree that CESI hereby
retains ownership of all right, title and interest in and to the CESI Business
Marks. Subject to Section 2.2 below, to the extent that any CESI Business Marks
are registered in Catalytica's name anywhere in the world, or to the extent that
Catalytica otherwise has any ownership rights in and to the CESI Business Marks
or any goodwill therein, Catalytica hereby irrevocably grants, conveys and
assigns (and agrees to cause its appropriate Subsidiaries to irrevocably grant,
convey and assign) to CESI, by execution hereof (or, where appropriate or
required, by execution of separate instruments of assignment), all its (and
their) right, title and interest in and to the CESI Business Marks, including
all goodwill of the CESI Business appurtenant thereto, to be held and enjoyed by
CESI, its successors and assigns. Catalytica further irrevocably grants, conveys
and assigns (and agrees to cause its appropriate Subsidiaries to irrevocably
grant, convey and assign) to CESI all its (and their) right, title and interest
in and to any and all causes of action and rights of recovery for past
infringement of the CESI Business Marks. Catalytica will, without demanding any
further consideration therefor, at the request and expense of CESI, do (and to
cause its Subsidiaries to do) all lawful and just acts that may be or become
necessary for evidencing, maintaining, recording and perfecting CESI's rights to
such CESI Business Marks consistent with Catalytica's general business practice
as of the Separation Date, including but not limited to execution and
acknowledgement of (and causing its Subsidiaries to execute and acknowledge)
assignments and other instruments in a form reasonably required by CESI or the
relevant governmental or other authorities for each Xxxx.
2.2 Prior Grants. Catalytica represents and warrants that no licenses or
other rights have been granted by Catalytica or its Subsidiaries with respect to
the CESI Business Marks prior to the Separation Date. Catalytica shall respond
to reasonable inquiries from CESI regarding any such prior grants.
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ARTICLE 3
LICENSES
3.1 License Grant. Catalytica grants (and agrees to cause its appropriate
Subsidiaries to grant) to CESI a perpetual, royalty-free, irrevocable,
exclusive, worldwide, fully-paid and non-transferable (except as set forth in
Section 13.9) license to use the Licensed Marks on the CESI Business Products
and in connection with the sale and offer for sale of CESI Business Products and
to use the Licensed Marks in the advertisement and promotion of such CESI
Business Products.
3.2 License Restrictions.
(a) CESI may not make any use whatsoever, in whole or in part, of the
Licensed Marks, or any other Xxxx owned by Catalytica, in
connection with CESI's corporate, doing business as, or
fictitious name, or on Corporate Identity Materials without the
prior written consent of Catalytica, except as expressly set
forth in this Section 3.2(a) or Section 3.1 or in Section 3.4
below. Notwithstanding the foregoing, CESI may use any business
cards, letterhead, stationery, paper stock and other supplies,
and the like throughout their useful life in connection with the
conduct of the CESI Business, to the extent that, as of the
Separation Date, they are in use, in inventory or on order.
(b) CESI may not use any Licensed Xxxx in direct association with
another Xxxx such that the two Marks appear to be a single Xxxx
or in any other composite manner with any Marks of CESI or any
Third Party (other than the CESI Business Marks as permitted
herein).
(c) In all respects, CESI's usage of the Licensed Marks pursuant to
the license granted hereunder shall be in a manner consistent
with the high standards, reputation and prestige represented by
the Licensed Marks, and any usage by CESI that is inconsistent
with the foregoing shall be deemed to be outside the scope of the
license granted hereunder. As a condition to the license granted
hereunder, CESI shall at all times present, position and promote
the CESI Business Products marked with one or more of the
Licensed Marks in a manner consistent with the high standards and
prestige represented by the Licensed Marks.
3.3 Licensee Undertakings. As a condition to the licenses granted
hereunder, CESI undertakes to Catalytica that:
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(a) CESI shall not use the Licensed Marks (or any other Xxxx of
Catalytica) in any manner which is deceptive or misleading, which
ridicules or is derogatory to the Licensed Marks, or which
compromises or reflects unfavorably upon the goodwill, good name,
reputation or image of Catalytica or the Licensed Marks.
(b) CESI shall not use the Licensed Marks in connection with any
products or services other than the CESI Business Products.
(c) CESI shall not (i) misrepresent to any person the scope of its
authority under this Agreement, (ii) incur or authorize any
expenses or liabilities chargeable to Catalytica, or (iii) take
any actions that would impose upon Catalytica any obligation or
liability to a Third Party other than obligations under this
Agreement, or other obligations which Catalytica expressly
approves in writing for CESI to incur on its behalf.
(d) All press releases and corporate advertising and promotions that
embody the Licensed Marks and messages conveyed thereby shall be
consistent with the high standards and prestige represented by
the Licensed Marks.
3.4 Non-Trademark Use. Each party may make appropriate and truthful
references to the other party and the other party's products and technology.
3.5 Reservation of Rights. Except as otherwise expressly provided in this
Agreement, Catalytica shall retain all rights in and to the Licensed Marks,
including without limitation:
(a) All rights of ownership in and to the Licensed Marks within the
pharmaceuticals industry;
(b) The right to use (including the right of Catalytica's
Subsidiaries to use) the Licensed Marks, either alone or in
combination with other Marks, in connection with the marketing,
offer or provision of any product or service within the
pharmaceuticals industry, excluding any product or service which
competes with CESI Business Products; and
(c) The right to license Third Parties to use the Licensed Marks
within the pharmaceuticals industry.
3.6 Third Party Licenses. Catalytica agrees that it and its Subsidiaries
will not license or transfer the Licensed Marks to Third Parties for use in
connection with
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products or services which compete directly or indirectly with CESI Business
Products. Such restriction shall be binding on any successors and assigns of the
Licensed Marks.
ARTICLE 4
PERMITTED SUBLICENSES
4.1 Sublicenses. Subject to the terms and conditions of this Agreement,
including all applicable Quality Standards and Trademark Usage Guidelines and
other restrictions in this Agreement, CESI may grant sublicenses to its
Subsidiaries to use the Licensed Marks in accordance with the license grant in
Section 3.1 above; provided, that (i) CESI enters into a written sublicense
agreement with each such Subsidiary sublicensee, and (ii) such agreement does
not include the right to grant further sublicenses other than, in the case of a
sublicensed Subsidiary of CESI, to another Subsidiary of CESI. CESI shall
provide copies of such written sublicense agreements to Catalytica upon request.
If CESI grants any sublicense rights pursuant to this Section 4.1 and any such
sublicensed Subsidiary ceases to be a Subsidiary, then the sublicense granted to
such Subsidiary pursuant to this Section 4.1 shall terminate 180 days from the
date of such cessation.
4.2 Authorized Manufacturers' Use of Marks. Subject to the terms and
conditions of this Agreement, including all applicable Quality Standards and
Trademark Usage Guidelines and other restrictions in this Agreement, CESI (and
those Subsidiaries sublicensed to use the Licensed Marks pursuant to Section
4.1) may allow Authorized Manufacturers to, and may allow such Authorized
Manufacturers to allow other Authorized Manufacturers to, use the Licensed Marks
in the advertisement and promotion of products incorporating CESI Business
Products.
4.3 Enforcement of Agreements. CESI shall use reasonable efforts and take
all reasonable measures at CESI's expense promptly and diligently to enforce the
terms of any sublicense agreement or other agreement with any Subsidiary or
Authorized Manufacturer, or of any existing agreement with any Authorized
Manufacturer, and shall restrain any such Subsidiary or Authorized Manufacturer
from violating such terms, including without limitation (i) monitoring the
Subsidiaries' and Authorized Manufacturers' compliance with the relevant
Trademark Usage Guidelines and Quality Standards and causing any noncomplying
Subsidiary or Authorized Manufacturer promptly to remedy any failure, (ii)
terminating such agreement and/or (iii) commencing legal action, in each case,
using a standard of care consistent with Catalytica's practices as of the
Separation Date. In the event that Catalytica determines that CESI has failed
promptly and diligently to enforce the terms of any such agreement using such
standard of care, Catalytica reserves the right to enforce such terms, and CESI
shall reimburse Catalytica for its out-of-pocket costs and expenses.
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ARTICLE 5
TRADEMARK USAGE GUIDELINES
5.1 Trademark Usage Guidelines. CESI and its Subsidiaries and Authorized
Manufacturers shall use the Licensed Marks only in a manner that is consistent
with the Trademark Usage Guidelines.
5.2 Trademark Reviews. At Catalytica's request, CESI agrees to furnish or
make available for inspection to Catalytica samples of all CESI Business
Products and Collateral Materials of CESI, its Subsidiaries and Authorized
Manufacturers that are actively marketed and marked with one or more of the
Licensed Marks (to the extent that CESI has the right to obtain such samples).
If CESI is notified or determines that it or any of its Subsidiaries or
Authorized Manufacturers is not in material compliance with any Trademark Usage
Guidelines, it shall notify Catalytica and the provisions of Article 6 and
Section 4.3 shall apply to such noncompliance.
ARTICLE 6
TRADEMARK USAGE GUIDELINE ENFORCEMENT
6.1 Initial Cure Period. If Catalytica becomes aware that CESI or any
Subsidiary or Authorized Manufacturer is not in material compliance with any
Trademark Usage Guidelines, Catalytica shall notify CESI in writing, setting
forth in reasonable detail a written description of the noncompliance and any
requested action for curing such noncompliance. CESI shall then have sixty (60)
days with regard to noncompliance by Authorized Manufacturers and thirty (30)
days with regard to noncompliance by CESI or any Subsidiary after receipt of
such notice ("Guideline Initial Cure Period") to correct such noncompliance or
submit to Catalytica a written plan to correct such noncompliance which written
plan is reasonably acceptable to Catalytica.
6.2 Second Cure Period. If noncompliance with the Trademark Usage
Guidelines continues beyond the Guideline Initial Cure Period, CESI and
Catalytica shall each promptly appoint a representative to negotiate in good
faith actions that may be necessary to correct such noncompliance. The parties
shall have thirty (30) days following the expiration of the Guideline Initial
Cure Period to agree on corrective actions, and CESI shall have thirty (30) days
from the date of an agreement of corrective actions to implement such corrective
actions and cure or cause the cure of such noncompliance ("Second Guideline Cure
Period").
6.3 Final Cure Period. If the noncompliance with the Trademark Usage
Guidelines remains uncured after the expiration of the Second Guideline Cure
Period, then at Catalytica's election, CESI, or the noncomplying Subsidiary or
Authorized Manufacturer, whichever is applicable, promptly shall cease using the
noncomplying Collateral Materials until Catalytica reasonably determines that
CESI, or the noncomplying Subsidiary or Authorized Manufacturer, whichever is
applicable, has
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demonstrated its ability and commitment to comply with the Trademark Usage
Guidelines. Nothing in this Article 6 shall be deemed to limit CESI's
obligations under Section 4.3 above or to preclude Catalytica from exercising
any rights or remedies under Section 4.3 above.
ARTICLE 7
QUALITY STANDARDS
7.1 General. CESI acknowledges that the CESI Business Products permitted
by this Agreement to be marked with one or more of the Licensed Marks must
continue to be of sufficiently high quality as to provide protection of the
Licensed Marks and the goodwill they symbolize, and CESI further acknowledges
that the maintenance of the high quality standards associated with such products
is of the essence of this Agreement.
7.2 Quality Standards. CESI and its Authorized Manufacturers and
Subsidiaries shall use the Licensed Marks only on and in connection with CESI
Business Products that meet or exceed in all respects the Quality Standards.
7.3 Quality Control Reviews. At Catalytica's request, CESI agrees to
furnish or make available to Catalytica for inspection sample CESI Business
Products marked with one or more of the Licensed Marks.
ARTICLE 8
QUALITY STANDARD ENFORCEMENT
8.1 Initial Cure Period. If Catalytica becomes aware that CESI or any
Subsidiary or Authorized Manufacturer sublicensee is not complying with any
Quality Standards, Catalytica shall notify CESI in writing, setting forth in
reasonable detail a written description of the noncompliance and any requested
action for curing such noncompliance. CESI shall then have thirty (30) days
after receipt of such notice ("Initial Cure Period") to correct such
noncompliance or submit to Catalytica a written plan to correct such
noncompliance which written plan is reasonably acceptable to Catalytica.
8.2 Second Cure Period. If noncompliance with the Quality Standards
continues beyond the Initial Cure Period, CESI and Catalytica shall each
promptly appoint a representative to negotiate in good faith actions that may be
necessary to correct such noncompliance. The parties shall have thirty (30) days
following the expiration of the Initial Cure Period to agree on corrective
actions, and CESI shall have thirty (30) days from the date of an agreement of
corrective actions to implement such corrective actions and cure or cause the
cure of such noncompliance ("Second Cure Period").
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8.3 Final Cure Period. If the noncompliance with the Quality Standards
remains uncured after the expiration of the Second Cure Period, then at
Catalytica's election, CESI, or the noncomplying Subsidiary or Authorized
Manufacturer, whichever is applicable, promptly shall cease offering the
noncomplying CESI Business Products under the Licensed Marks until Catalytica
determines that CESI, or the noncomplying Subsidiary or Authorized Manufacturer,
whichever is applicable, has demonstrated its ability and commitment to comply
with the Quality Standards. Nothing in this Article 8 shall be deemed to limit
CESI's obligations under Section 4.3 above or to preclude Catalytica from
exercising any rights or remedies under Section 4.3 above.
ARTICLE 9
PROTECTION OF LICENSED MARKS
9.1 Ownership and Rights. To the extent not contrary to applicable law,
CESI agrees not to challenge the ownership or validity of the Licensed Marks.
CESI shall not disparage, dilute or adversely affect the validity of the
Licensed Marks. CESI's use of the Licensed Marks shall inure exclusively to the
benefit of Catalytica, and CESI shall not acquire or assert any rights therein
except as granted pursuant to this Agreement. CESI recognizes the value of the
goodwill associated with the Licensed Marks, and that the Licensed Marks may
have acquired secondary meaning in the minds of the public.
9.2 Protection of Marks. CESI shall assist Catalytica, at Catalytica's
request and expense, in the procurement and maintenance of Catalytica's
intellectual property rights in the Licensed Marks. CESI will not grant or
attempt to grant a security interest in the Licensed Marks, or to record any
such security interest in the United States Patent and Trademark Office or
elsewhere, against any trademark application or registration belonging to
Catalytica. CESI agrees to, and to cause its Subsidiaries to, execute all
documents reasonably requested by Catalytica to effect further registration of,
maintenance and renewal of the Licensed Marks, recordation of the license
relationship between Catalytica and CESI, and recordation of CESI as a
registered user. Catalytica makes no warranty or representation that trademark
registrations have been or will be applied for, secured or maintained in the
Licensed Marks throughout, or anywhere within, the world. CESI shall cause to
appear on all CESI Business Products, and all Collateral Materials, such
legends, markings and notices as may be required by applicable law or reasonably
requested by Catalytica.
9.3 Similar Marks. CESI agrees not to use or register in any country any
Xxxx that infringes Catalytica's rights in the Licensed Marks, or any element
thereof. If any application for registration is, or has been, filed in any
country by CESI which relates to any Xxxx that infringes Catalytica's rights in
the Licensed Marks, CESI shall immediately abandon any such application or
registration or assign it to Catalytica. To the extent not contrary to
applicable law, CESI shall not challenge Catalytica's ownership of or the
validity of the Licensed Marks or any application for registration thereof
throughout the world. CESI shall not use or register in any country any
copyright, domain
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name, telephone number or any other intellectual property right, whether
recognized currently or in the future, or other designation which would affect
the ownership or rights of Catalytica in and to the Licensed Marks, or otherwise
to take any action which would adversely affect any of such ownership rights, or
assist anyone else in doing so. CESI shall cause its Subsidiaries and Authorized
Manufacturers to comply with the provisions of this Section 9.3.
9.4 Infringement Proceedings. In the event that CCSI's chief executive
officer learns of any infringement or threatened infringement of the Licensed
Marks, or any unfair competition, passing-off or dilution with respect to the
Licensed Marks, CCSI shall notify Catalytica or its authorized representative
giving particulars thereof, and CCSI shall provide necessary information and
assistance to Catalytica or its authorized representatives at Catalytica's
expense in the event that Catalytica decides that proceedings should be
commenced. Notwithstanding the foregoing, CCSI is not obligated to monitor or
police use of the Licensed Marks by Third Parties other than as specifically set
forth in Section 4.3. Catalytica shall have exclusive control of any litigation,
opposition, cancellation or related legal proceedings, relating to the use of
the licensed trademarks by third parties. The decision whether to bring,
maintain or settle any such proceedings shall be at the exclusive option and
expense of Catalytica, and all recoveries shall belong exclusively to
Catalytica. CCSI shall not and shall have no right to initiate any such
litigation, opposition, cancellation or related legal proceedings in its own
name, but, at Catalytica's request, agrees to be joined as a party in any action
taken by Catalytica to enforce its rights in the Licensed Marks. Catalytica
shall incur no liability to CCSI or any other person under any legal theory by
reason of Catalytica's failure or refusal to prosecute or by Catalytica's
refusal to permit CCSI to prosecute, any alleged infringement by Third Parties,
nor by reason of any settlement to which Catalytica may agree.
ARTICLE 10
TERMINATION
10.1. This Agreement may be terminated at any time prior to the
Distribution Date by and in the sole discretion of Catalytica without the
approval of CESI. This Agreement may be terminated at any time after the
Distribution Date by mutual consent of Catalytica and CESI. In the event of
termination pursuant to this Section 10.1, no party shall have any liability of
any kind to the other party.
ARTICLE 11
DISPUTE RESOLUTION
11.1 Mediation. If a dispute, controversy or claim ("Dispute") arises
between the parties relating to the interpretation or performance of this
Agreement or the
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Ancillary Agreements, or the grounds for the termination hereof, appropriate
senior executives (e. g. director or V.P. level) of each party who shall have
the authority to resolve the matter shall meet to attempt in good faith to
negotiate a resolution of the Dispute prior to pursuing other available
remedies. The initial meeting between the appropriate senior executives shall be
referred to herein as the "Dispute Resolution Commencement Date." Discussions
and correspondence relating to trying to resolve such Dispute shall be treated
as confidential information developed for the purpose of settlement and shall be
exempt from discovery or production and shall not be admissible. If the senior
executives are unable to resolve the Dispute within thirty (30) days from the
Dispute Resolution Commencement Date, and either party wishes to pursue its
rights relating to such Dispute, then the Dispute will be mediated by a mutually
acceptable mediator appointed pursuant to the mediation rules of JAMS/Endispute
within thirty (30) days after written notice by one party to the other demanding
non-binding mediation. Neither party may unreasonably withhold consent to the
selection of a mediator or the location of the mediation. Both parties will
share the costs of the mediation equally, except that each party shall bear its
own costs and expenses, including attorney's fees, witness fees, travel
expenses, and preparation costs. The parties may also agree to replace mediation
with some other form of non-binding or binding ADR.
11.2 Arbitration. Any Dispute which the parties cannot resolve through
mediation within ninety (90) days of the Dispute Resolution Commencement Date,
unless otherwise mutually agreed, shall be submitted to final and binding
arbitration under the then current Commercial Arbitration Rules of the American
Arbitration Association ("AAA"), by three (3) arbitrators in Santa Xxxxx County,
California. Such arbitrators shall be selected by the mutual agreement of the
parties or, failing such agreement, shall be selected according to the aforesaid
AAA rules. The arbitrators will be instructed to prepare and deliver a written,
reasoned opinion stating their decision within thirty (30) days of the
completion of the arbitration. The prevailing party in such arbitration shall be
entitled to expenses, including costs and reasonable attorneys' and other
professional fees, incurred in connection with the arbitration (but excluding
any costs and fees associated with prior negotiation or mediation). The decision
of the arbitrator shall be final and non-appealable and may be enforced in any
court of competent jurisdiction. The use of any ADR procedures will not be
construed under the doctrine of laches, waiver or estoppel to adversely affect
the rights of either party.
11.3 Court Action. Any Dispute regarding the following is not required to
be negotiated, mediated or arbitrated prior to seeking relief from a court of
competent jurisdiction: breach of any obligation of confidentiality;
infringement, misappropriation, or misuse of any intellectual property right;
any other claim where interim relief from the court is sought to prevent serious
and irreparable injury to one of the parties or to others. However, the parties
to the Dispute shall make a good faith effort to negotiate and mediate such
Dispute, according to the above procedures, while such court action is pending.
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11.4 Continuity of Service and Performance. Unless otherwise agreed in
writing, the parties will continue to provide service and honor all other
commitments under this Agreement and each Ancillary Agreement (as defined in the
Master Separation Agreement) during the course of dispute resolution pursuant to
the provisions of this Article 11 with respect to all matters not subject to
such dispute, controversy or claim.
ARTICLE 12
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE
OTHER PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT,
INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS OR ANY OTHER DAMAGES, 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.
ARTICLE 13
MISCELLANEOUS PROVISIONS
13.1 Disclaimer. Each party acknowledges and agrees that all licensed
marks and any other information or materials licensed or provided hereunder are
licensed or provided on an " as is" basis and that neither party nor any of its
subsidiaries make any representations or extends any warranties whatsoever,
express, implied or statutory, with respect thereto including without limitation
any implied warranties of title, enforceability or non- infringement. Without
limiting the generality of the foregoing, neither Catalytica nor any of its
Subsidiaries makes any warranty or representation as to the validity of any Xxxx
licensed by it to CESI or any warranty or representation that any use of any
Xxxx with respect to any product or service will be free from infringement of
any rights of any Third Party.
13.2 No Implied Licenses. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any intellectual property right, other than the rights expressly granted in this
Agreement with respect to the Licensed Marks. Neither party is required
hereunder to furnish or disclose to the other any information (including copies
of registrations of the Marks), except as specifically provided herein.
13.3 Infringement Suits. Except as set forth in Section 4.3, (i) neither
party shall have any obligation hereunder to institute any action or suit
against Third Parties for infringement of any of the Licensed Marks or to defend
any action or suit brought by a Third Party which challenges or concerns the
validity of any of the Licensed Marks and (ii) CESI shall not have any right to
institute any action or suit against Third Parties for infringement of any of
the Licensed Marks.
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13.4 No Other Obligations. Neither party assumes any responsibilities or
obligations whatsoever, other than the responsibilities and obligations
expressly set forth in this agreement or a separate written agreement between
the parties. Without limiting the generality of the foregoing, neither party,
nor any of its Subsidiaries, is obligated to (i) file any application for
registration of any Xxxx, or to secure any rights in any Marks, (ii) to maintain
any Xxxx registration, or (iii) provide any assistance, except for the
obligations expressly assumed in this Agreement.
13.5 Entire Agreement. This Agreement, the Merger Agreement, the Master
Separation Agreement and the other Ancillary Agreements (as defined in the
Master Separation Agreement) and the Exhibits and Schedules referenced or
attached hereto and thereto constitute the entire agreement between the parties
with respect to the subject matter hereof and thereof and shall supersede all
prior written and oral and all contemporaneous oral agreements and
understandings with respect to the subject matter hereof and thereof. To the
extent there is a conflict between this Agreement and the General Assignment and
Assumption Agreement between the parties, the terms of this Agreement shall
govern.
13.6 Governing Law. This Agreement shall be construed in accordance with
and all Disputes hereunder shall be governed by the laws of the State of
California, excluding its conflict of law rules. The Superior Court of Santa
Xxxxx County and/or the United States District Court for the Northern District
of California shall have jurisdiction and venue over all Disputes between the
parties that are permitted to be brought in a court of law pursuant to Article
11 above.
13.7 Descriptive Headings. The headings contained in this Agreement, are
for reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement.
13.8 Notices. Notices, offers, requests or other communications required
or permitted to be given by either party pursuant to the terms of this Agreement
shall be given in writing to the respective parties to the following addresses:
if to Catalytica: Catalytica, Inc.
000 Xxxxxxxx Xxxxx
Xxxxxxxx Xxxx, Xxxxxxxxxx
00000-0000
Attention: President
Fax: (650) __________
if to CESI: Catalytica Energy Systems, Inc.
000 Xxxxxxxx Xxxxx
Xxxxxxxx Xxxx, Xxxxxxxxxx 00000-0000
Attention: President
Fax: (650) __________
13
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non-performance, termination, or renewal shall be sent by hand
delivery, recognized overnight courier or, within the United States, may also be
sent via certified mail, return receipt requested. All other notices may also be
sent by fax, confirmed by first class mail. All notices shall be deemed to have
been given and received on the earlier of actual delivery or three (3) days from
the date of postmark.
13.9 Nonassignability. Neither party may, directly or indirectly, in whole
or in part, whether by operation of law or otherwise, assign or transfer this
Agreement, without the other party's prior written consent, and any attempted
assignment, transfer or delegation without such prior written consent shall be
voidable at the sole option of such other party. Notwithstanding the foregoing,
each party (or its permitted successive assignees or transferees hereunder) may
assign or transfer this Agreement as a whole without consent to a person that
succeeds to all or substantially all of the business or assets of such party as
long as such person agrees to accept all the terms and conditions set forth
herein. Without limiting the foregoing, this Agreement will be binding upon and
inure to the benefit of the parties and their permitted successors and assigns.
13.10 Severability. If any term or other provision of this Agreement is
determined by a court, administrative agency or arbitrator to be invalid,
illegal or incapable of being enforced by any rule of law or public policy, all
other conditions and provisions of this Agreement shall nevertheless remain in
full force and effect so long as the economic or legal substance of the
transactions contemplated hereby is not affected in any manner materially
adverse to either party. Upon such determination that any term or other
provision is invalid, illegal or incapable of being enforced, the parties hereto
shall negotiate in good faith to modify this Agreement so as to effect the
original intent of the parties as closely as possible in an acceptable manner to
the end that the transactions contemplated hereby are fulfilled to the fullest
extent possible.
13.11 Failure or Indulgence not Waiver; Remedies Cumulative. No failure or
delay on the part of either party hereto in the exercise of any right hereunder
shall impair such right or be construed to be a waiver of, or acquiescence in,
any breach of any representation, warranty or agreement herein, nor shall any
single or partial exercise of any such right preclude other or further exercise
thereof or of any other right. All rights and remedies existing under this
Agreement are cumulative to, and not exclusive of, any rights or remedies
otherwise available.
13.12 Amendment. No change or amendment will be made to this Agreement
except by an instrument in writing signed on behalf of each of the parties to
such agreement.
13.13 Counterparts. This Agreement, including the Ancillary Agreements and
the Exhibits and Schedules hereto and thereto and the other documents referred
to herein
14
or therein, may be executed in counterparts, each of which shall be deemed to be
an original but all of which shall constitute one and the same agreement.
WHEREFORE, the parties have signed this Trademark Ownership and License
Agreement effective as of the date first set forth above.
CATALYTICA, INC.
By:_____________________________
Name:___________________________
Title:__________________________
CATALYTICA ENERGY SYSTEMS, INC.
By:_____________________________
Name:___________________________
Title:__________________________
15
Exhibit A
---------
Catalytica Energy Systems
Catalytica Advanced Technologies
Catalytica Energy Systems
[Confirm that the following are registered trademarks of CESI:
Xonon
Cool Combustion
Catalyst Development Engine]
Exhibit B
---------
Catalytica
