EXHIBIT 10.2
SUBLICENSE AGREEMENT
This Sublicense Agreement is entered into this ___ day of August, 1998
by and among Xxxxxx Xxxxxx ("Sublicensor") and Electric City Corp., a Delaware
corporation ("Sublicensee").
WITNESSETH:
WHEREAS, on the 1st day of January 1998, the Sublicensor was granted an
exclusive license from Reverberi Electronica Castelnouovo Monti (RE)
("Reverberi") for the full term of the Reverberi patents in the territories,
including all North, Central and South America ("Reverberi License"); and
WHEREAS, pursuant to said License Agreement Sublicensor is permitted to
assign to any corporation in which he retains a legal interest all or a portion
of said License; and
WHEREAS, it has been determined to be in the mutual best interests of
the parties that Sublicensor assign all of his right, title and interest to said
License with respect to the territory of the United States of America.
NOW THEREFORE, the parties hereto agree as follows:
1. Assignment of Partial License Rights. Sublicensor hereby assigns all
of his right, title and interest to the Reverberi License with respect to the
territory of the United States of America subject to all of Reverberi's
interest, including royalties as contained in the original license grant
pursuant to the Reverberi License a copy of which is attached hereto and made a
part hereof by reference as Exhibit A.
2. Term of the License. The License granted hereby shall be an
exclusive and perpetual sublicense of all of the Sublicensor's rights to the
United States of America under the Reverberi License subject to termination in
accordance with that license.
3. Royalty Payments. For each product unit manufactured and/or sold by
Sublicensee, Sublicensee shall be required to pay a royalty of $300 U.S.
directly to Reverberi on a quarterly basis from the date of transfer of
ownership thereof pursuant to the Reverberi License.
4. Limitations on Sublicense. The rights granted Sublicensee under this
Agreement shall not be directly or indirectly assignable or transferable in any
manner whatsoever nor shall Sublicensee have the right to grant any sublicenses.
Any unauthorized assignment, transfer or sublicense by Sublicensee shall be null
and void. This limitation shall not in any way restrict the Sublicensee from
engaging distributors to assist in the distribution of the Energy units to which
shall not be deemed a sublicense.
5. Quality Standards. The Sublicensor and Reverberi shall have ongoing
rights to exercise quality control over Sublicensee's use and manufacture of the
Power Control Products, as defined in the Reverberi License. Sublicensee shall,
upon reasonable request by the Sublicensor and/or Reverberi, submit samples of
manufactured Power Control Products systems. In the event that Reverberi or
Sublicensor finds that any such samples do not perform in accordance with
Reverberi specifications, Sublicensee shall, upon written notice thereof,
immediately take steps which are necessary to correct the failures as defined in
the notice. Failure to do so shall be deemed a material breach of this
Agreement.
6. Protection of the Patents. Should Sublicensee become aware of any
infringement of the Reverberi Patents or other use of the Power Control Products
or should Sublicensee be notified of a claimed infringement on the part of the
Sublicensee, Sublicensor or of Reverberi of any other Patent or Xxxx,
Sublicensee shall immediately notify Sublicensor and/or Reverberi of said
information and cooperate with the Sublicensor and/or Reverberi with respect to
their efforts to protect the Patents and claims or defend any action for
infringement. Sublicensee agrees to expend reasonable time, money and efforts in
this respect in the assistance of such protection and acknowledges that such
time and expense is in the mutual best interests of the parties to this
Sublicense Agreement, and further Sublicensee indemnifies Sublicensor for its
use of the Reverberi Patents in any capacity.
7. Representations and Warranties.
A. Sublicensor represents to Sublicensee that:
(i) he has the right to enter into this Sublicense
Agreement relative to the Reverberi License which is
current, not in default and not subject to any
restrictions or limitations thereof;
(ii) he has full power and authority to execute and
deliver this Agreement and to perform his obligations
hereunder; and
(iii) this Agreement constitutes his valid and
legally binding obligation, enforceable against him
in accordance with its terms subject to bankruptcy,
insolvency, reorganization, moratorium and similar
laws of general applicability relating to or
affecting creditors' rights and general equity
principles.
B. Sublicensee represents to Sublicensor that:
(i) it is a Delaware corporation duly organized,
validly existing and is in good standing under the
laws of Delaware;
(ii) it has full corporate power and authority to
execute and deliver this Agreement and, to perform
its obligations hereunder;
(iii) the execution and delivery by it of this
Agreement, and the performance by it of its
obligations hereunder have been duly authorized by
all requisite corporate action on the part of it and
the Agreement constitutes its valid and legally
binding obligation enforceable against it in
accordance with its terms subject to bankruptcy,
insolvency, reorganization, moratorium and similar
laws of general applicability relating to or
affecting creditors' rights and general equity
principles.
8. General. As a result of engaging in this Sublicense Agreement,
Sublicensee shall become generally responsible to perform all of the duties and
functions to which the Sublicensor was otherwise bound pursuant to the Reverberi
License with respect to transactions within the United States of America.
Sublicensee agrees to indemnify and hold harmless Sublicensor from any liability
which Sublicensor would otherwise have been responsible for to Reverberi had
Sublicensor not entered into this Sublicense Agreement. Any breach on behalf of
Sublicensee of this Sublicense Agreement or the underlying Reverberi License
Agreement as it pertains to business in the United States of America shall from
the basis for termination of this Sublicense Agreement subject to a 30 day
notice of termination during which period of time Sublicensee shall have the
right to cure said breach. During any period of time that Sublicensee shall be
deemed to be in breach of either this Sublicense Agreement or the Reverberi
License, the Sublicensor may cure the breach at his expense so as not to result
in the termination of the Reverberi License. Any amounts expended by the
Sublicensor on behalf of Sublicensee to remedy any breaches or defaults shall
immediately be due and owing the Sublicensor with interest at the rate of 18%
per annum.
This Agreement shall be governed by the laws of the State of Illinois.
The headings herein are for reference only and shall not define or limit the
provisions hereof. This Agreement may not be altered, modified, amended or
changed in whole or in part except by a written instrument executed by the
parties hereto. This Agreement shall be binding upon the parties and their
permitted successors and assigns. Any action brought to enforce the terms of
this Agreement shall be brought in the Federal or State courts in Xxxx County,
Illinois.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed as of the date first above written.
SUBLICENSOR:
By: ____________________________
Xxxxxx X. Xxxxxx
SUBLICENSEE:
Electric City Corp.
By: ____________________________
Xxxxxx X. Xxxxxx, President
ATTEST:
By: ____________________________
Secretary
