DISTRIBUTOR AGREEMENT
Exhibit 10.6
This
DISTRIBUTOR AGREEMENT (this “Agreement”), dated as of June 2,
2016 (the “Effective
Date”) by and between Noble Biomaterials, Inc., a
Delaware corporation (“Noble”) and Sterling Sports LLC,
an entity organized under the laws of Florida (“Company”). Each of Noble and
Company are referred to herein as a “Party” and together, the
“Parties.”
Capitalized terms used in this Agreement not defined herein have
the meaning specified in Annex
A (General Terms and Conditions).
X.
Xxxxx and/or its
affiliates own certain proprietary technology relating to the
manufacture and use of Silver Fiber and Silver
Material;
B. Company
desires to purchase certain Licensed Materials from Noble for use
in the fabrication of Licensed Products and to sell such Licensed
Products under the Licensed Trademarks, on the terms and subject to
the conditions set forth in this Agreement; and
C. Company
desires to receive a license to use the Licensed Technology and the
Licensed Trademarks to sell Licensed Products, and Noble desires to
grant such license to Company, on the terms and subject to the
conditions set forth in this Agreement.
The
Parties agree as follows:
1.
Organization of
Agreement. The
Agreement between the Parties comprises this Agreement together
with the following Annexes, each of which is incorporated herein
and made a part:
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Annex
A
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General
Terms and Conditions
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Annex
B
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Licensed
Material
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Annex
C
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Licensed
Products
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Annex
D
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Form of
Technology Fee Report
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Annex
E
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Licensed
Trademarks
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2.
Definitions.
“Licensed Material” means those
materials made with Licensed Fiber that, if applicable under this
Agreement, are specified on Annex
B.
“Licensed Products” means those
finished products made with Licensed Fiber and/or Licensed Material
that are specified on Annex
C.
“Licensed Trademarks” means those
Noble Trademarks which, if licensed under this Agreement, are
specified on Annex
E.
“Non-Exclusive Territory” means the non-exclusive
selling territory is the world.
“Exclusive Territory” means the
exclusive selling territory is North America and Sub-Saharan
Africa.
3.
Term.
This Agreement commences on the Effective Date and expires five (5)
years from the Effective Date (the “Initial Term”), and shall
automatically renew for successive terms of five (5) years each
(each, a “Renewal
Term”, and together with the Initial Term, the
“Term”), unless
either Party has provided written notice of non-renewal at least
sixty (60) days prior to the expiration date of the then-current
term or the Agreement is sooner terminated as set forth
herein.
4.
Permitted
Activities. Subject
to Company’s compliance with the terms and conditions of the
Agreement, including payment of the Technology Fees, during the
Term, Noble hereby grants to Company, and Company hereby accepts, a
personal, limited, non-exclusive, non-sublicensable, and
non-transferable and non-assignable (except, in each case, as set
forth in Section 13(a) of Annex
A), right and license under the Licensed
Technology to sell Licensed
Products under the Licensed Trademarks to customers located in the
Non-Exclusive Territory; and a personal, limited, limited
exclusive, non-sublicensable, and non-transferable and
non-assignable (except, in each case, as set forth in Section 13(a)
of Annex A), right and
license under the Licensed Technology to sell Licensed Products under the
Licensed Trademarks to customers located in the Exclusive Territory
(collectively, the “Permitted
Activities”).
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5.
Fees.
In consideration of the rights granted hereunder to Company for the
use of the Licensed Technology, Commencing as of [omitted,
filed separately with the Commission] ,
Company shall pay to Noble fees for Licensed Products as follows
(collectively, the “Technology Fees”):
[omitted, filed separately with the
Commission] of
the purchase price paid by Licensee to Cambridge Towel Company, Inc.
((“Cambridge”), the licensed manufacturer and supplier
of materials to Licensee for towels). For purpose of the foregoing,
a “sale” occurs upon issuance by Cambridge of an
invoice to Licensee for the sale of a Licensed
Product.
6.
Terms of Supply
(a)
Company will
purchase Licensed Materials from Noble at the published or agreed
upon prices in effect from time to time by Noble. Company agrees to
purchase all of its requirements for silver-coated or
silver-containing fibers, yarn and fabrics solely from Noble or its
Licensed Xxxxx; and
(b)
A current list of
Noble’s Licensed Xxxxx is available from Noble, and will be
updated from time to time. If any mill has ceased to qualify as a
Licensed Mill, Company shall immediately cease to obtain Licensed
Products from such mill.
(c)
Company will not
use the Licensed Material or Licensed Technology in any manner
other than as expressly specified in the Permitted
Activities.
7.
Monthly
Minimum
Purchase Amount
(a)
Each calendar
month, Company shall place sufficient purchase orders for Licensed
Material such that Company shall be required to have purchased at
least the following amounts of Silver Material from Noble during
each month within the specified annual period:
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2016
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April through
December
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[omitted, filed
separately with the Commission]
lbs.
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|
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2017
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January through
December
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[omitted, filed
separately with the Commission] lbs.
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2018 until
expiration date
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January through
December
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[omitted, filed separately with the
Commission] lbs.
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(each
an “Monthly Minimum Purchase
Amount”). Each order of Licensed Material
shall be the subject of a purchase order approved by Noble (an
“Approved Purchase
Order”). If, as of thirty (30) days after
the end of any calendar month, Company has not satisfied its
Monthly Minimum Purchase Amount, based on Approved Purchase Orders
fully paid to Noble by the Company, this failure shall not
constitute a breach of the Agreement, however, the Company will
lose its exclusivity for Licensed Products, and Noble shall be free to sell to other
brands and companies for the remainder of the
Term.
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8.
Notices:
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Noble Biomaterials, Inc.
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Sterling Sports LLC
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|
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|
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000
Xxxx Xxxxxx
Xxxxxxxx,
XX 00000
Telephone:
(000) 000-0000
Facsimile:
(000) 000-0000
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0000
Xxxxxxxxx Xxxx #000
Xxxxxxxxxx
Xxxxx, Xxxxxxxx 00000
Telephone:
(000)000-0000
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IN
WITNESS WHEREOF, the Parties have duly authorized the execution,
delivery and performance of, and have executed, this DISTRIBUTOR
AGREEMENT, by their authorized representatives to be effective as
of the Effective Date.
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NOBLE BIOMATERIALS, INC.
BY:
/s/ Xxxx
Xxxxx
PRINT
NAME:
Xxxx Xxxxx
TITLE:
CEO
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STERLING SPORTS LLC
BY:
/s/ Xxxxxx
Xxxxxx
PRINT
NAME: Xxxxxx
Xxxxxx
TITLE:
CEO
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3
ANNEX
A
GENERAL TERMS AND CONDITIONS
1.
Integration. These General
Terms and Conditions (the “Terms and Conditions”) are
incorporated into and made part of the Agreement. In the event of
any conflict between the Agreement and the terms of these Terms and
Conditions, the terms of the Agreement shall control. Capitalized
terms used but not defined in these Terms and Conditions have the
meanings specified in the Agreement. “Silver Fiber” means silver fiber
made with and/or comprising Noble Technology; “Silver Material” means
silver-coated or silver-containing yarns, fabrics, foams or other
materials made with and/or comprising Noble Technology;
“Noble
Technology” means Noble’s intellectual property
and other proprietary rights relating to the manufacture of Silver
Fiber and Silver Material and use and incorporation of Silver Fiber
and Silver Material in various products;“Licensed Distributor” means a
person or entity that is a party to a current written agreement
with Noble authorizing such person or entity to market, sell and/or
distribute Licensed Products; “Licensed Mill” means a person or
entity that is a party to a current written agreement with Noble
authorizing such person or entity to make Licensed Material;
"Licensed Trademarks” means, if trademarks
are licensed to Company, the trademarks specified on an Annex to
the Agreement; “Licensed
Technology” means Noble’s confidential and
proprietary knowhow (including information concerning its
industrial, commercial and scientific experience) and other
intellectual property relating to the use of Silver Fiber or Silver
Material in the manufacture of products made from such Silver Fiber
or Silver Material, which Noble or any of its representatives or
suppliers discloses, provides or delivers (whether in writing,
orally or through visual inspection of Noble’s or any
Licensed Mill’s facilities or operations) to Company
hereunder, including techniques, quality control, testing,
certification and integration into supply chain; and
“Licensed Intellectual
Property Rights” means the Licensed Technology and,
where applicable, the Licensed Trademarks.
2.
License. The rights granted to
Company are limited to those expressly set forth in the Agreement,
and Company shall not use the Licensed Material, Licensed
Technology and Licensed Trademarks other than as expressly
permitted under this Agreement. All rights in the Licensed
Technology, and any other Noble Technology, which are not expressly
granted to Company herein are reserved to Noble. Without limiting
the foregoing, no right or license is granted by Noble to Company
to, and Company shall not: (i) engage or permit any other person or
entity to engage in the Permitted Activities outside the applicable
Territory, (ii) use the Licensed Intellectual Property in any
manner not expressly authorized by the Agreement, or (iii) grant a
sublicense to any third party person or entity. Nothing herein
restricts Noble from using, or licensing others to use Licensed
Material or the Licensed Trademarks in connection with the
manufacture, supply, marketing, sale and/or distribution of any
products, including any products similar to the Licensed
Products.
(a)
Company shall pay
to Noble quarterly Technology Fees as specified in the Agreement
for sales of Licensed Products during the Term. Where Technology
Fees are paid based on a percentage of Net Sales,
“Net Sales”
means the total consideration invoiced by Company for all Licensed
Products, without deduction for any costs incurred, such as, but
not limited to, costs of manufacture, supply, marketing, sale,
distribution or exploitation of Licensed Products, but less any
applicable taxes directly attributable to such sales, trade
discounts actually given, returns for which any refund is paid and
sales allowances.
(b)
All sales of
Licensed Products and Technology Fee payments must be reported to
Noble in the form mutually agreed by the parties, and paid to
Noble, in immediately available United States funds, within thirty
(30) days after the end of each calendar quarter for the
immediately preceding calendar quarter.
(c)
If Noble reasonably
believes that additional payments may be due from Company
hereunder, Noble shall have the right to audit the books of Company
to determine compliance with the Agreement.
(d)
The receipt and
deposit of monies by Noble shall not prevent or limit Noble's right
to contest the accuracy and/or correctness of any statement in
respect of such monies.
(a)
In connection with
the manufacture, supply, marketing, sale, distribution, import and
export of Licensed Products, Company shall comply with all laws,
rules, regulations and registration/qualification requirements
related thereto (collectively, “Applicable Laws”) to the extent
applicable to Company. Company shall be solely responsible for all
taxes, tariffs, and other fees due in connection with the
manufacture, supply, marketing, sale, distribution, import or
export of Licensed Products and the materials used in the
manufacture thereof. Company shall promptly notify Noble, in
writing, of any changes in any Applicable Laws applicable to
Company.
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(b)
Company agrees
that Licensed Products manufactured and supplied by Company shall
be of the highest standards and quality and that Licensed Products
shall at all times comply with all Applicable Laws, as well as any
and all requirements or instructions provided by Noble to Company
in writing, including Noble’s Fiber Technical Advisory and
Noble's Technology and Branding Guidelines, as such requirements or
instructions may be amended from time to time (collectively, the
“Noble
Requirements”). A copy of the then-current version of
Noble’s Fiber Technical Advisory and Noble's Technology and
Branding Guidelines is provided to Company upon execution of this
Agreement. In the event Company fails to comply with the
requirements set forth in the Noble Requirements, Noble shall have
the right, in its sole discretion, to immediately terminate this
Agreement. Licensed Products shall not be supplied, marketed, sold
or distributed until such Licensed Products are approved by Noble
pursuant to the Noble Requirements. Any use of the Licensed
Trademarks on the packaging of Licensed Products shall be in a
manner approved by Noble. All Licensed Products shall be marketed,
sold and distributed, and all use of the Licensed Trademarks shall
be, in compliance with the Noble Requirements. All advertising,
marketing, promotional, packaging and other materials, whether
digital or print, related to Licensed Products shall conspicuously
display the Licensed Trademarks. Noble reserves the right to
approve all advertising, marketing, promotional, packaging and
other materials of Company, including materials for digital
marketing, web sites, television, newspapers, magazines,
promotional flyers, brochures and other similar materials, which
incorporate the use of, or reference, the Licensed Trademarks.
Noble reserves the right, at any time, to direct that Company
suspend or cease the manufacture, supply, sale or distribution of
any Licensed Products that do not meet the Noble Requirements or
would otherwise have an adverse impact on the image, reputation,
validity, enforceability or associated goodwill of the Licensed
Trademarks, as determined in Noble’s sole
discretion.
(c)
Company shall
immediately notify Noble upon being notified or having knowledge of
any quality issues/concerns in respect to the Licensed Material or
product incorporating the Licensed Material.
(a)
Company hereby
acknowledges and agrees that as between the Parties, Noble and/or
its affiliates is the exclusive owner(s) of the Licensed
Intellectual Property. All goodwill created by use of the Licensed
Trademarks by Company shall inure solely to the benefit of and be
owned by Noble. Company agrees that it is not granted any right to
access or use Noble’s proprietary process for manufacturing
Silver Fiber and Silver Material, and that such proprietary process
is the valuable intellectual property of Noble. Company agrees that
it will not directly or indirectly assert any right or interest in
the Licensed Intellectual Property or any Noble Technology, or
challenge the validity or ownership of any Noble Technology, and
expressly acknowledges such validity and ownership.
(b)
In no event will
Company display together as a single xxxx or combined xxxx any
Licensed Trademark and any other trademark (including any Company
trademark), including on the Licensed Product or in any marketing
materials. During the Term and thereafter, Company shall not,
directly or indirectly, register or seek to register in any
jurisdiction the Licensed Trademark or any xxxx that infringes, is
substantially similar to, or dilutes the Licensed Trademarks, in
any jurisdiction worldwide.
(c)
If Company learns
that any person or entity is or may be making unauthorized use of
the Licensed Intellectual Property, Company shall give Noble prompt
written notice thereof, setting forth in full detail the actions by
such person or entity. Company agrees it shall not make any demands
or claims, bring suit, effect any settlement, or take any other
action for the infringement or possible infringement by any person
or entity of the Licensed Intellectual Property or the rights
granted to Company under the Agreement. Company agrees to cooperate
with Noble, without having to incur any out-of-pocket expenses, in
connection with any action taken by Noble to terminate
infringements and alleged infringements.
(d)
Company shall
not analyze, reverse engineer, or deconstruct any Licensed Material
or any process used in the development or manufacture of any
material provided to Company by Noble or any of its licensees or
designees (including Licensed Material), to determine the structure
or composition of such material, or create derivative materials
from or attempt to modify or reproduce, such material or process.
Any intellectual property rights developed by Company (i) in
violation of this Section 5 of these
Terms and Conditions and/or (ii) using Noble’s confidential
information shall, in each case, be the property of Noble, and
Company shall execute and deliver to Noble such documentation as is
necessary to establish Noble’s rights in such intellectual
property.
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(a)
All non-public
materials, documents, information and equipment which a Party
supplies or discloses to the other Party, whether in writing or
orally, shall be considered confidential information and/or shall
be considered proprietary trade secrets of the disclosing Party.
The Licensed Intellectual Property and Licensed Materials shall be
deemed the confidential information of Noble. The receiving Party
agrees not to disclose the confidential information of the
disclosing Party to any other person or entity without the
disclosing Party's advance written consent and not to use it in any
way detrimental to the disclosing Party's interests. The receiving
Party further agrees to ensure that the dissemination of such
information is limited to its employees, agents, representatives,
and consultants (collectively, “Representatives”) who (i) are
under the receiving Party’s control, (ii) are obligated to
maintain the confidentiality of the information pursuant to a
written agreement, which has terms at least as protective as those
set forth herein, and (iii) have a demonstrated need to have access
to the information to design, make, supply, market, sell and/or
distribute Licensed Products, as applicable, solely as permitted
under the Agreement. The restrictions of this Section 6(a) of
these Terms and Conditions shall not apply to confidential
information that: (A) is currently in the public domain; (B)
becomes public through no fault of the receiving Party; (C) was
previously known to the receiving Party prior to its disclosure to
the receiving Party by the disclosing Party, as shown by the
receiving Party's contemporaneous written records; or (D) is
disclosed to the receiving Party by a third party not in breach of
any agreement to protect the confidential nature of such
information.
(b)
To the extent any
Representative of a Party is permitted to receive information under
Section 6(a) of
these Terms and Conditions or access the Licensed Intellectual
Property, each Party is responsible for compliance by such
Representative with, and liable for any breach by such
Representative of, the terms of the Agreement.
(c)
The Parties agree
that irreparable injury not fully compensable by monetary damages
would result to the other Party in the event that any of the
provisions contained in Sections 5(d) or
6 of these
Terms and Conditions is not performed in accordance with its
specific terms or is otherwise breached. It is accordingly agreed
that, in addition to any other rights which the non-violating Party
may have at law or equity, the non-violating Party will be entitled
to injunctive relief, without being required to post a bond, to
prevent breaches hereof and to enforce the terms and provisions of
such Sections.
(d)
The confidentiality
obligations of each Party set forth in this Section 6 will
remain in full force and effect for ten (10) years following any
expiration or earlier termination of the Agreement.
7.
Retention of Records. During
the Term and for a period of three (3) years thereafter (or for any
longer period as required by any Applicable Law), Company shall
keep copies of documentation necessary to establish that Company
has complied with all Applicable Laws and all terms and conditions
of the Agreement, including Sections 3 and
5 of these
Terms and Conditions. Noble, or its designee, shall have the right,
upon forty-eight (48) hours prior written notice, to examine such
documents, shall have access thereto during ordinary business hours
and shall be at liberty to make copies of such documents. At
Noble's request, Company shall provide a copy of such records at
Noble’s expense.
8.
Limitation of Liability; Disclaimer of
Warranties. NOBLE MAKES NO REPRESENTATIONS OR WARRANTIES OF
ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING WARRANTIES OF
MERCHANTABILITY OR OF FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE
USE OF THE LICENSED MATERIALS, LICENSED INTELLECTUAL PROPERTY OR
LICENSED PRODUCTS DO NOT INFRINGE ANY INTELLECTUAL PROPERTY OR
OTHER PROPRIETARY RIGHTS OF ANY THIRD PARTY. NOBLE HEREBY DISCLAIMS
ANY AND ALL WARRANTIES, WHETHER EXPRESS OR IMPLIED. NO STATEMENTS
OR RECOMMENDATIONS CONTAINED HEREIN ARE TO BE CONSTRUED AS
INDUCEMENTS TO INFRINGE ANY RELEVANT PATENT, NOW OR HEREAFTER IN
EXISTENCE. UNDER NO CIRCUMSTANCES SHALL EITHER PARTY BE LIABLE FOR
ANY INDIRECT, SPECIAL, INCIDENTAL, CONSEQUENTIAL, PUNITIVE OR OTHER
DAMAGES FROM ALLEGED NEGLIGENCE, BREACH OF WARRANTY, STRICT
LIABILITY, TORT, CONTRACT OR ANY OTHER LEGAL THEORY, ARISING OUT OF
THE USE OR HANDLING OF THE LICENSED MATERIALS OR LICENSED PRODUCTS.
NOTWITHSTANDING ANYTHING TO THE CONTRARY IN THE AGREEMENT, EXCEPT
FOR (A) A BREACH OF SECTIONS 3,
5 OR
6, OR (B)
CLAIMS OF A THIRD PARTY THAT ARE SUBJECT TO INDEMNIFICATION UNDER
SECTION 9, EACH
PARTY’S LIABILITY FOR ANY CLAIMS RELATED TO OR ARISING FROM
THE AGREEMENT SHALL BE LIMITED TO THE PURCHASE PRICE OF THE
LICENSED MATERIAL SUPPLIED BY NOBLE WHICH IS THE SUBJECT OF THE
CLAIM OR THE AMOUNT ACTUALLY PAID FOR SUCH LICENSED MATERIAL,
WHICHEVER IS LESS. NOBLE SHALL NOT BE LIABLE FOR ANY CLAIMS RELATED
TO OR ARISING FROM ANY LICENSED MATERIAL SUPPLIED BY ANY PARTY OR
ENTITY OTHER THAN NOBLE. ANY TECHNICAL ADVICE, WHETHER ORAL OR
WRITTEN, PROVIDED BY NOBLE TO LICENSEE SHALL NOT CONSTITUTE A
REPRESENTATION OR WARRANTY BY NOBLE, AND LICENSEE’S
ACCEPTANCE AND USE OF SUCH ADVICE IS AT COMPANY’S SOLE
RISK.
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(a)
Company agrees to
indemnify, defend and hold Noble and its officers, directors and
employees, harmless from and against any and all liabilities,
judgments, penalties, losses, costs, damages, fees and expenses,
including reasonable attorneys' fees, which may be incurred by
Noble in connection with any claim asserted by a third party
against the aforementioned indemnitees arising from:
(i)
any act by Company
in violation of the Agreement; and
(ii)
any claim arising
from Company’s manufacture, supply, marketing, sale,
distribution, import and/or export of Licensed Products, except to
the extent that such claim arises solely and directly from the
Licensed Technology or a defect in Licensed Material supplied by
Noble hereunder which can be proven to have existed at the time
such Licensed Material was delivered, FOB (Incoterms 2010),
Scranton, Pennsylvania.
(b)
The Party seeking
indemnification shall provide the other Party with prompt written
notice of any claim for which the indemnified Party is seeking or
may seek indemnification hereunder (provided that the failure of
the indemnified Party to promptly notify the indemnifying Party
hereunder shall not relieve the indemnifying Party of any liability
with respect to the claim, except to the extent the indemnifying
Party demonstrates that the defense of the claim is prejudiced by
such failure). The indemnifying Party shall keep the indemnified
Party fully informed concerning the status of any litigation,
negotiations or settlements of any such claim. The indemnified
Party shall be entitled, at its own expense, to participate in any
such litigation, negotiations and settlements with counsel of its
own choosing. The indemnifying Party shall not have the rightto
settle any claim if such settlement arises from or is part of any
criminal action or proceeding, or contains a stipulation to, or an
admission or acknowledgement of, any wrongdoing (whether in tort or
otherwise) on the part of the indemnified Party without the prior
written consent of the indemnified Party.
10.
Non-Solicitation. During the
Term and for one (1) year thereafter, Company will not, directly or
indirectly (a) solicit or hire any employees of Noble or any of its
affiliates, or aid in the solicitation or hiring thereof; or (b)
solicit or seek to do business with any former, current or
prospective customer or client of Noble or any of its affiliates
with whom Company came into contact with in connection with the
Agreement.
(a)
Except as otherwise
expressly set forth herein, if a Party breaches any term or
provision of the Agreement and fails to cure such breach within
thirty (30) days after receiving written notice thereof from the
other Party specifying the particulars of the breach, the
non-breaching Party shall have the right to terminate the Agreement
by giving written notice to the breaching Party (such termination
to be effective immediately upon the giving of such
notice).
(b)
Company hereby
agrees that Company intends to begin the sale of Licensed Products
within one (1) year after the Effective Date. Company acknowledges
and agrees that time is of the essence, and therefore failure to
begin sale of Licensed Products within such period shall be a
breach under the Agreement and Noble shall, at its discretion, have
the right to terminate the Agreement immediately upon written
notice to Company. From and after the first date of sale of
Licensed Products by Company, as applicable, if Company interrupts
the distribution and/or sale of Licensed Products for a period of
one hundred and eighty (180) days or more, Noble shall have the
right, but not the obligation, to terminate the Agreement
immediately upon written notice to Company.
(c)
Failure by Company
to pay any amounts payable to Noble, including any Technology Fees,
any amounts owed for any order of Licensed Material received from
Noble, or under any other agreement between Noble and Company, when
such amounts become due and payable, shall be a breach of the
Agreement. If Company fails to cure such breach within ten (10)
days after receiving written notice thereof from Noble concerning
such nonpayment, Noble shall have the right, but not the
obligation, to terminate the Agreement immediately upon written
notice to Company.
(d)
In the event
Company uses a competing silver technology in any product category
listed in the definition of Licensed Product, Noble shall have the
right, in its sole discretion, to immediately terminate this
Agreement.
(e)
If either Party
becomes insolvent, or if a petition for bankruptcy or
reorganization is filed by or against it, or if any insolvency
proceedings are instituted by or against it under the law of any
jurisdiction, or if it makes an assignment for the benefit of its
creditors, or is placed in the hands of a receiver, or if it
liquidates its business in any manner, then in any such case the
other Party shall have the right to terminate the Agreement by
written notice to such Party, its receivers, trustees, assignees or
other representatives, provided, however, that inthe case of
involuntary bankruptcy, reorganization or insolvency proceedings,
the same shall not constitute a default if defended in good faith
by such Party and dismissed within thirty (30) days following the
institution of any such proceedings. If Noble terminates the
Agreement under this Section 11(e) of these Terms and Conditions,
Company, its receivers, trustees, assignees or other
representatives shall have no right to (i) engage in the Permitted
Activities or otherwise manufacture, supply, market, sell,
distribute or use the Licensed Materials or Licensed Products or
(ii) use or deal with the Licensed Trademarks, except, in each
case, with express prior written consent of Noble, which consent
may be withheld for any reason, and under the express written
instructions of Noble.
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(f)
The Agreement will
terminate immediately if Company fails to comply with the
requirements set forth in the Noble Requirements, as set forth in
Section 4(b) of
these Terms and Conditions.
(g)
Company will
notify Noble prior to any Change of Control. If Noble is not
notified of or does not give its written consent, which shall not
be unreasonably withheld or delayed in the event that Company is
acquired by or merged into NMI, prior to such Change of Control,
then Noble shall have the right to terminate the Agreement
immediately at any time after such Change of Control, in
Noble’s sole discretion. For purposes of this Section
11(g) of these Terms and
Conditions, a “Change of
Control” means any transaction or series of related
transactions, including a merger, reorganization or consolidation,
in which the shareholders of Company, immediately prior to the
transaction(s), would not, immediately after the transaction(s),
beneficially own (directly or indirectly) more than fifty percent
(50%) of the voting securities of Company, the surviving entity of
such transaction or its ultimate parent, if any.
(a)
All rights granted
to Company under the Agreement and of these Terms and Conditions,
shall automatically terminate and revert to Noble, and Company
shall execute any and all documents evidencing such automatic
reversion;
(b)
Company shall
immediately stop any use of or other dealing with the Licensed
Trademarks, including in connection with the manufacture, supply,
marketing, sale, distribution or in any way dealing with any
Licensed Products, or any item pertaining to Licensed Products,
which display the Licensed Trademarks or Noble’s
name;
(c)
Company shall
return to Noble all tags, labeling and printed material bearing the
Licensed Trademarks, and all specifications and all other materials
or documents in Company's possession that contain Noble’s
confidential information;
(d)
Company shall not
use any trademark that infringes, is similar to, or dilutes, the
Licensed Trademarks;
(e)
Company shall,
within thirty (30) days after such expiration or termination,
deliver to Noble a complete and accurate statement indicating the
description and location of all Licensed Products on hand and/or in
the process of manufacture, as of both the date of such expiration
or termination and the date of such statement; and
(f)
Noble shall have
the right to enter onto Company's premises to conduct physical
inventories to verify the accuracy of the aforesaid
statement.
(g)
Upon expiration or
earlier termination of the Agreement, except in the case of
termination due to Company’s breach, Company may sell
existing inventories of Licensed Products or fulfill any purchase
orders for Licensed Products received and accepted by Company prior
to the date of such expiration or termination for a period of one
hundred eighty (180) days, subject to all of the other terms and
conditions hereof. Upon expiration of such one hundred eighty
(180)-day period, Company shall, at Noble’s election, either
destroy or return to Noble, at Company’s cost, any Licensed
Materials and Licensed Products in Company’s
possession.
(h)
The following
sections of the Agreement shall survive any expiration or earlier
termination of the Agreement: 1
(Integration), 3 (Fees),
5(a),
5(d),
6
(Confidentiality), 7 (Retention
of Records), 8
(Limitation of Liability; Disclaimer of Warranties), 9
(Indemnification), 10 (Non-Solicitation), 12 (Effect of
Termination), 13 (Miscellaneous).
(a)
Company shall
not directly or indirectly assign, transfer, sublicense, or
encumber any of its rights under the Agreement without the prior
written consent of Noble, whether by merger, acquisition of assets,
operation of law or otherwise. The Agreement shall be binding upon
and inure to the benefit of the respective successors and permitted
assigns of Noble and Company. Any assignment not in compliance with
this Section 13(a) of these Terms and Conditions shall be null and
void ab initio.
8
(b)
Nothing contained
in the Agreement shall be construed so as to make the Parties
partners or joint venturers, or to permit Company to bind Noble to
any agreement or purport to act on behalf of Noble in any respect.
Nothing in the Agreement is intended to confer any rights or
remedies under or by reason of the Agreement on any persons other
than Noble and Company and their respective successors and
permitted assigns.
(c)
No waiver or
modification of any of the terms of the Agreement shall be valid
unless in writing, signed by both Parties. Failure by either Party
to enforce any rights under the Agreement shall not be construed as
a waiver of such rights, and a waiver by either Party of a default
in one or more instances shall not be construed as a continuing
waiver or as a waiver in other instances.
(d)
In the event that
any part of the Agreement is declared by any court or other
judicial or administrative body to be null, void or unenforceable,
said provision shall survive to the extent it is not so declared,
and all of the other provisions of the Agreement shall remain in
full force and effect only if, after excluding the portion deemed
to be unenforceable, the remaining terms shall provide for the
consummation of the transactions contemplated hereby in
substantially the same manner as originally set forth at the later
of the date the Agreement was executed or last
amended.
(e)
All notices and
other communications provided for hereunder shall be in writing and
shall be duly given when personally delivered, faxed (with
confirmation), deposited in the United States mail, certified or
return receipt requested, postage prepaid, or delivered to Federal
Express or any nationally recognized overnight courier service, and
addressed or sent to the address or facsimile number for the
receiving Party set forth on the Agreement. Any Party may change
its address or telecopy number for notices under the Agreement at
any time by giving the other Party notice of such
change.
(f)
Neither Party shall
be responsible for any failures or delays which are due to causes
beyond its control, including acts of God, acts of the government,
war, fires, floods, strikes or failure of third parties (which
parties are not an affiliate of such Party) to comply with their
obligations to such Party.
(g)
The section
headings in the Agreement are for reference purposes only and shall
not affect the meaning or interpretation of the Agreement. Unless
the context of the Agreement otherwise requires: (i) words of any
gender include the other gender; (ii) words using the singular or
plural number also include the plural or singular number,
respectively; (iii) the terms “hereof,”
“herein,” “hereby,” and derivative or
similar words refer to the entire Agreement as a whole and not to
any other particular Section or other subdivision; (iv) the words
“include,” “includes” and
“including” shall be deemed to be followed by the
phrase “without limitation”; (v) where either
Party’s “consent” or “approval” is
required hereunder, except as otherwise specified herein, such
Party’s consent or approval may be granted or withheld in
such Party’s sole discretion; (vi) “shall,”
“will,” or “agrees” are mandatory, and
“may” is permissive; (vii) “or” is not
exclusive; (viii) any definition of or reference to any agreement,
instrument or other document herein shall be construed as referring
to such agreement, instrument or other document as from time to
time amended, supplemented or otherwise modified (subject to any
restrictions on such amendments, supplements or modifications set
forth herein or therein); (ix) any reference to any laws herein
shall be construed as referring to such laws as from time to time
enacted, repealed or amended; and (x) any reference herein to any
person shall be construed to include the person’s successors
and permitted assigns.
(h)
The Agreement,
together with all Annexes referenced therein and in these Terms and
Conditions, sets forth the entire understanding and agreement of
the Parties with respect to its subject matter. Any and all
representations or agreements made by any agent or representative
of either Party to the contrary shall be of no effect. No terms set
forth on any purchase order or invoice will supersede any terms of
the Agreement unless mutually agreed upon by the Parties, as
evidenced in a writing that specifically references the Agreement
by name and that it is superseding the Agreement.
(i)
The Agreement, and
any disputes arising out of or related thereto, shall be construed
and governed in accordance with the laws of the Commonwealth of
Pennsylvania, without regard to principles of conflict or choice of
laws and regardless of the place or places of its physical
execution and performance, and any suit or other action brought
under the Agreement shall be brought exclusively in the federal and
state courts of Scranton, Pennsylvania. Company hereby irrevocably
submits to the jurisdiction of such courts.
9
(j)
The Agreement is
the result of the joint efforts of the Parties, and each provision
hereof has been subject to the mutual consultation, negotiation and
agreement of the Parties and there is to be no construction against
either Party based on any presumption of that Party’s
involvement in the drafting thereof.
(k)
All remedies
conferred by the Agreement shall be cumulative, and the pursuit by
any Party of any such remedy shall not limit such Party from
pursuing any other remedy to which it may be entitled, whether
under the Agreement or otherwise.
(l)
Each Party hereto
shall at all times comply with all laws and regulations applicable
to the Party under the transactions contemplated by the
Agreement.
(m)
Noble may designate
any of its affiliates to perform any of its obligations or exercise
any of its rights under the Agreement, provided that Noble is
responsible for the acts and omissions of such
affiliates.
(n)
In any action
brought by a Party hereto under the Agreement, the prevailing Party
shall be entitled to recover its reasonable attorneys' fees, costs,
and expenses of suit.
(o)
The Agreement and
Annexes referenced therein and herein are hereby incorporated and
by this reference shall hereby become part of the Agreement as if
set forth herein word for word.
(p)
The Parties hereto
shall at any and all times, upon the request of the other Party, or
its legal representative, make, execute, and deliver any and all
such other and further instruments as may be necessary or desirable
for the purpose of giving full force and effect to the provisions
of the Agreement, without change therefore.
(q)
Neither Party may
issue any press release or other public disclosure regarding the
Agreement or the subject matter hereof without the other
Party’s prior written consent.
(r)
The Agreement may
be signed in two or more counterparts, each of which shall be an
original. The Parties may execute the Agreement in portable
document format (PDF) or by facsimile and the Parties agree that
such PDF or facsimile execution and delivery shall have the same
force and effect as delivery of an original document with original
signatures.
10
ANNEX B
LICENSED MATERIAL
Silver
Coated or Silver Containing Fiber Supplied by Noble
11
ANNEX C
LICENSED PRODUCTS
Towels
provided that, in no event may
Company use the Licensed Material to manufacture or sell Towels
intended specifically for use in connection with athletic endeavors
such as yoga and pilates.
12
ANNEX D
FORM OF TECHNOLOGY FEE REPORT
TECHNOLOGY
FEE PERIOD: ________________________________
|
|
|
|
|
TECHNOLOGY FEE DUE FROM LICENSEE
|
||||
|
COUNTRY OF SALE
|
LICENSED PRODUCT
(PRODUCT ID#)
|
LICENSED MILL
|
TECHNOLOGY FEES PAID BY MILL
(Y/N)
|
NET SALES
(a)
|
PERCENTAGE
(b)
|
TOTALS
(a x b)
|
||
|
Total invoiced amount (G)
|
Deductions (D)
|
Net Sales
(G – D) = a
|
||||||
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
Total:
|
Name:
____________________
Signature:
_______________________
Title:
_______________________
Date:
______________________
13
ANNEX E
LICENSED TRADEMARKS
Company
may use the following Licensed Trademarks in the manner described
above in the Agreement and Terms and Conditions, and Company is
responsible for affixing the appropriate trademarks to the
appropriate Licensed Products.
X-STATIC®
*Each Licensed Trademark is licensed hereunder only in those
jurisdictions in the Territory in which Noble has registered such
Licensed Trademark. Company may request from Noble a list of those
registrations and jurisdictions.
14
