Exhibit 36
FIRST AMENDED LICENSING AND
MARKETING AGREEMENT
THIS FIRST AMENDED LICENSING AND MARKETING AGREEMENT made and entered
into at Heath, Ohio on this ____ day of February, 1998 by and between NITRO
PLASTICS TECHNOLOGIES OF ISRAEL, an Israel Corporation (referred to herein as
either "Nitro Plastics" and/or "Licensor"), 00 Xxx Xxxxxx Xx. Xxxxxxx 00000
and ___________________ and XXXXX XXXXXXXXX and PALLETECH, INC. KNA PALLET
TECHNOLOGY, INC., (referred to hereinafter as either "Palletech" and/or
"Licensee") a Delaware corporation whose business address is 0000 Xxxxx
Xxxxxxx, Xxxxx, Xxxx 00000.
WITNESSETH:
WHEREAS, Palletech is a manufacturer of virgin and
recycled plastic products; and
WHEREAS, Nitro Plastics and Xxxxx Xxxxxxxxx represent
that Nitro Plastics is the sole and exclusive owner and
Licensor of a proprietary injection molding technology
(the "Process" and/or "Information" and "proprietary
process") especially suited for the manufacturing of
plastic pallets and other products from recycled plastics;
and,
WHEREAS, Nitro Plastics desires to grant to Palletech the
exclusive right to use the Process and Information in the
manufacture of plastic pallets, and Palletech desires to
manufacture pallets utilizing the proprietary technology
(i.e. the Process and Information) to be supplied by Nitro
Plastics pursuant to this agreement as an amendment to the
parties prior written agreement dated July 7, 1997.
NOW THEREFORE, in consideration of the mutual covenants, terms and
conditions contained herein, the parties agree as follows:
1. LICENSE.
Nitro Plastics grants to the Palletech the exclusive, unlimited,
irrevocable, right and license in all fifty states of the United States of
America (the "Exclusive Territory"), with the right to
grant sub-licenses to third parties within the Exclusive Territory, to use
and exploit the proprietary injection molding technology for the
manufacturing of plastic pallets of all kinds and sizes as well as any
products specifically developed by Palletech and to manufacture, have
manufactured, use, market, have marketed, sell and have sold plastic pallets
and/or other products developed by Palletech based on or relating to the
proprietary process. The exclusive right and license herein granted shall
apply to all inventions, improvements, patents, patent applications and
letters patent, which Nitro Plastics now owns or controls, or hereafter may
own or control, and which relate to the proprietary process and the
manufacturing and/or sale of plastic pallets resulting therefrom, and to all
information and documents, which Nitro Plastics now owns or controls, or
hereafter may own or control, and which relate to the proprietary process
hereinafter also referred to as the "Process" and/or "Information" and the
manufacturing and/or sale of pallets resulting therefrom. As to all other
products developed through use of the Process by Nitro Plastics and/or
Xxxxxxxxx, Palletech shall have the right to use the Process to manufacture,
sell, distribute, sub-license and exploit in all manner these other products
in all 50 states of the United States on a non-exclusive basis.
2. REPRESENTATIONS OF NITRO PLASTICS.
Nitro Plastics and Xxxxx Xxxxxxxxx warrant and represent the following:
(a) that the Process and Information (i.e. the proprietary injection
molding technology) is proprietary and is under the exclusive
ownership and control of Nitro Plastics and is available for use
in the fifty (50) United States by Palletech and the use thereof by
Palletech is not an infringement on any other same or similar
patent or proprietary process owned and/or controlled by persons or
entities other than Nitro Plastics;
(b) that Nitro Plastics is the exclusive owner and/or Licensor of all
rights to the Process and Information and that Nitro Plastics has
the right to grant this exclusive license applicable to the
Exclusive Territory and Non-exclusive Territory, and has not
granted to any other person, firm, entity or corporation any right,
license, shop right, or privilege thereunder to use the Process and
Information in such Territories other than Palletech;
(c) the Process and Information when combined with the equipment
recently installed by Palletech at its Xxxxx Parkway location will
result in the manufacture of plastic pallets from recycled plastic
to the quality, strength and specifications as represented by Nitro
Plastics as set forth in Schedule 2(c) attached hereto and further
that the equipment ordered by Palletech to manufacture the plastic
pallets as described in Section 4.1 below will produce the plastic
pallets to the quality, strength and specifications as represented
by Nitro Plastics;
(d) that during the pendency of this agreement, and as to all rights of
Palletech which are granted herein, Nitro Plastics and Xxxxx
Xxxxxxxxx shall do all things necessary to maintain the
confidentiality of its proprietary process referred to
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herein and/or as well as its rights to such Process and
Information and Nitro Plastics shall not do anything which in any
way restricts, prohibits, limits, shortens and/or terminates any
rights acquired by Palletech under this agreement.
3. ASSISTANCE AND RELATED INFORMATION.
Upon request by Palletech at any time, Nitro Plastics shall cause to be
furnish to Palletech, its nominees, representatives or attorneys, within five
(5) business days after such request, all information and documents relating
to the Process and Information, including but not limited to copies of any
License Agreements and amendments thereto entered into by and between Nitro
Plastics and any other licensee, person and/or entity associated with
exploitation of the Process and/or manufacture of products using the Process.
Any such information provided to nominees, representatives or attorneys of
Palletech shall remain confidential.
4. CONDITIONS AND AGREEMENTS.
4.1. That based upon specifications and approvals of Nitro Plastics and
Xxxxx Xxxxxxxxx given in advance of such purchase, Palletech has purchased
and had installed at its facility located at 0000 Xxxxx Xxxxxxx, Xxxxx, Xxxx
00000 an injection molding machine and appropriate mold and equipment for the
purpose of manufacturing plastic pallets. Said machines is described as a
750 ton form molding machine, with gas assist technology and proprietary
configuration, and said machine has been inspected and approved by the
representative of Nitro Plastics, Xxxxx Xxxxxxxxx, who has acknowledged that
said equipment is suitable in every way and necessary for the manufacture of
plastic pallets from recycled plastic using the Process and Information and
further that said equipment is of the kind an nature which when using the
Process will produce plastic pallets from recycled plastic at the rate of
______ pallets per hour.
4.2. Nitro Plastics hereby licenses Palletech to utilize the subject
technology for the specific purpose of manufacture of plastic pallets (or
such other products as shall be mutually agreed by the parties for a period
of ten (10) years, commencing with the date that the subject machine is
installed and operational (i.e. producing pallets at the rate per hour as set
forth in Section 4.1 above) at Palletech's location in Heath, Ohio. After
the ten (10) year period of time, Palletech shall have the right in
perpetuity to use, license and sub-license the Process and Information within
the Exclusive Territory, free and clear of any claim or interest of Nitro
Plastics.
5. RESPECTIVE DUTIES.
The respective duties, responsibilities and obligations of the parties,
in addition to those described in other sections of this agreement are as
follows:
5.1. Duties of Nitro Plastics:
5.1.1. Nitro Plastics and Xxxxx Xxxxxxxxx shall provide supervisory and
technical personnel to effect the installation of the subject machine and
train personnel of Palletech in the use and operation of said machine; and,
Nitro Plastics shall continue to provide technical support
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for a period of one (1) year commencing with the date that the machine
produces its first pallet ready for sale and delivery at the hourly rate
described in Section 4.1 above.
5.1.2. Nitro Plastics and Xxxxx Xxxxxxxxx shall provide sales personnel
who will undertake the non-exclusive sale of pallets produced by Palletech,
at a price determined by Palletech.
5.1.3. Nitro Plastics and Xxxxx Xxxxxxxxx shall perform such other sales
and marketing functions as it deems necessary or desirable, provided however
that Palletech shall bear the expense of an annual reasonable advertising
allowance, such an amount to be determined by the agreement of the parties
and with consideration to then production demands.
5.1.4. Palletech shall, at its own cost and expense, provide all
production facilities, equipment, raw materials, supplies, maintenance,
repair, personnel and any and all other items, as shall be necessary to
accomplish the manufacture of plastic pallets.
6. FEES AND PAYMENTS.
6.1. Palletech shall pay to Nitro Plastics an initial licensing fee in
the amount of $83,333.33, receipt in full of which is hereby acknowledged by
Nitro Plastics.
6.2. During the first five (5) years of the term of this agreement,
Palletech shall pay to Nitro Plastics a royalty fee in the amount of FIFTY
CENTS ($.50) per pallet sold, delivered and paid for by purchaser. During
the second five (5) years or the term of this agreement, the royalty per
pallet referred to above shall be reduced to Twenty-Five Cents ($.25) per
pallet. Payment of royalties shall be made to Nitro Plastics by Palletech
within seven (7) business days, after the end of each month on pallets sold,
delivered and paid for by the purchaser.
7. MISCELLANEOUS PROVISIONS.
7.1. DEFAULT
7.1.1. Default by Palletech: It is understood and agreed that the
technology licensed herein is proprietary to Nitro Plastics who is the owner
of the Process and Information. Nitro Plastics agrees to defend, save
harmless and indemnify Palletech, or it affiliates and/or sub-licensees in
the event that Nitro Plastics does not own, possess and/or exclusively
control the proprietary technology that it has claimed it owns. Any attempt
by Palletech to utilize this technology for its own purposes, outside of the
terms and provisions of this agreement shall be deemed to be an "event of
default" of this agreement and this agreement shall immediately terminate,
excepting however that an "event of default" shall not be deemed to have
occurred by Palletech unless and until Nitro Plastics has given written
notice by certified mail return requested to Palletech c/o Xx. Xxxx Xxxxxx,
Vice-President, Pallet Technology, Inc., 0000 Xxxxx Xxxxx Xxxx, Xxxxx 000,
Xxxxxxxxx, Xxxx 00000 specifically advising Palletech of the alleged breach
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and Palletech has not corrected and/or cured such alleged breach within one
hundred twenty (120) days (the "Cure Period") after receipt of the notice
from Nitro Plastics.
Until such time as the Cure Period has run, no conduct by Palletech as
referred to herein and/or as alleged as a breach shall be deemed to be an
"event of default". In the event of a default by Palletech, Nitro Plastics
shall be entitled to all legal and equitable relief, including injunction, as
shall be appropriate. Nitro Plastics agrees that Palletech has the right to
sell the pallets through its own efforts, organization, representatives,
sub-licensee(s) and/or affiliate organization(s) provided that Nitro Plastics
receives its royalties on those sales.
7.1.2. In the event of default by Palletech after the Cure Period has
run, and in addition to all remedies available to Nitro Plastic at law or in
equity, Palletech shall be liable to Nitro Plastics for the immediate payment
of all royalties then due from Palletech.
7.2. NO PARTNERSHIP: Nothing contained herein shall be construed or
interpreted to create a partnership relationship between the parties.
Neither party shall have any authority to obligate or bind the other for any
debt to a third party.
7.3. NOTICE: Any notice required by this agreement shall be given by
certified mail to the address(es) of the party involved as shown at the
beginning of this agreement.
7.4. ARBITRATION: No civil action concerning any dispute arising
regarding the payment of royalties under this agreement shall be instituted
before any court and all such disputes shall be submitted to final and
binding arbitration pursuant to the then pending rules of the American
Arbitration Association, with such arbitration to be conducted at 0000 Xxxxx
Xxxxxxx, Xxxxx Xxxx or such other place as Palletech shall maintain its books
and records relating to production and sale of the pallets associated with
this agreement. The arbitrator's award resulting from such arbitration may
be confirmed and entered as a final judgment in any court of competent
jurisdiction and enforced accordingly. Otherwise, exclusive jurisdiction and
venue regarding any other matter(s) associated with this agreement shall be
in Licking County, Ohio unless agreed otherwise in writing by the parties
hereto.
7.5. ATTORNEYS FEES: In the event of any litigation and/or
arbitration caused by a dispute arising from this agreement, the prevailing
party shall be entitled to reimbursement from the losing party for attorney's
fees (including those on appeal) and costs incurred during each dispute.
7.6. SUCCESSORS IN INTEREST: Although it is understood and agreed
that this agreement is not assignable by Palletech to any third party without
the prior written consent of Nitro Plastics which shall not be unreasonably
withheld and/or unless under a specific provision of this agreement which
permits assignment or sub-licensing, the provisions, conditions, forms and
covenants herein contained shall bind, and the benefits and advantages shall
inure to, the respective successors, assigns, trustees, receivers, heirs and
personal representatives of the parties hereto.
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7.7 LAWS CONTROLLING: This agreement shall be construed, enforced
and interpreted in accordance with the laws of the State of Ohio, whose
jurisdiction is acceptable to both parties.
7.8. CAPTIONS: The captions of sections of this agreement are for
convenient reference only, and shall not affect the construction of
interpretations of any of the terms and provisions set forth herein.
7.9. SEVERABILITY: In the event any provision of this agreement are
found to be in violation of any law, or are determined to be unenforceable
for any reason, this shall not serve to invalidate the remainder of this
agreement.
7.10. INFRINGEMENT AND CONFIDENTIALITY: Nitro Plastics and Xxxxx
Xxxxxxxxx shall defend, at its own expense, all infringement suits that may
be brought against Palletech or its sub-licensees based on or related to the
manufacture, use, or sale of the pallets and products based on or using the
Process, Information and any other aspects of the proprietary information.
In the event any information is brought to the attention of Nitro Plastics
that others without benefit of license are infringing and/or using any of the
rights granted pursuant to this agreement to Palletech, Nitro Plastics and
Xxxxxxxxx shall, at its own expense, diligently prosecute all such
infringers. In any of the foregoing suits, Palletech may, at Palletech's
expense, be represented by counsel of its own choice. Nitro Plastics will do
all things necessary to protect the confidentiality of its proprietary
process during the term of this Agreement and thereafter as well as them
confidentiality of Palletech's business and the business of its patents and
affiliates including but not limited to Palletech's products, personnel,
suppliers, customers, customer lists and customer leads.
7.11. All documents, blue prints, machine blue prints, and operating
techniques will be placed in a safety deposit box.
8. ASSIGNMENTS AND AUTHORIZATION.
8.1. Nitro Plastics reserves the right to assign this licensing and
marketing agreement only with the written consent of Palletech, which consent
shall not be unreasonably withheld.
8.2. Nitro Plastics shall provide to Palletech prior to the execution
of this Agreement a resolution of the board of directors and/or authorized
officers of Nitro Plastics, being Xxxxx Xxxxxxxxx and Xxxxxxx Xxxxxxxxx,
which authorizes and approves Xxxxx Xxxxxxxxx as a representative of Nitro
Plastics acting on behalf of Nitro Plastics, to agree to the provisions of
this agreement and execute this agreement on behalf of Nitro Plastics.
IN WITNESS WHEREOF, the parties hereto have executed this agreement on
the day and year first above written. This Agreement supercedes the written
agreement by and between Palletech and Nitro Plastics dated July 7, 1997 and
represent the entire Agreement of the parties.
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Witnessed in the Presence of: NITRO PLASTICS TECHNOLOGIES OF ISRAEL
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By: /s/ Xxxxx Xxxxxxxxx
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Its:
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PALLETECH, INC. kna PALLET
TECHNOLOGY, INC.
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By: /S/ Xxxx Xxxxxx
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Its: President
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