Contract
EXHIBIT 10.56
EXECUTION
COPY
This
TRADEMARK LICENSE AGREEMENT (this “Agreement”),
is made and effective as of the 31st day of
March, 2008 (the “Effective
Date”), by and between SaluMedica, LLC, a Georgia limited liability
company (“Licensor”),
and MiMedx, Inc., a Florida corporation (“MiMedx”;
and, together with any subsidiary, parent, affiliate, or successor-in-interest
of MiMedx, “Licensee”).
RECITALS:
A. Licensor
and Licensee (in particular, MiMedx Group, Inc., the parent company of MiMedx)
have entered into that certain Investment Agreement of even date herewith (the
“Investment
Agreement”) pursuant to which, among other things, Licensor has
subscribed for the “Closing Shares” (as defined in the Investment Agreement) in
exchange for the license and other rights granted by Licensor to Licensee in
this Agreement and a Technology License Agreement of even date herewith (the
“Technology
License”);
B.
Licensor is the owner of certain intellectual property rights with
regard to certain biomaterials known as Salubria™ biomaterials, and certain of
those intellectual property rights are included in the Trademark Portfolio (as
defined hereinafter); and
C.
Licensee is desirous of obtaining and commercializing
such intellectual property rights under the terms set forth herein;
TERMS
OF AGREEMENT:
NOW
THEREFORE, in consideration of ten U.S. dollars ($10.00) in hand paid, the
Closing Shares, the execution and delivery on the date hereof of the Technology
License, the premises, which are incorporated and made part of this Agreement by
this reference, and the promised performance of each of the parties of the terms
set forth herein, and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties hereto, intending to
be legally bound, mutually agree as follows:
X. Xxxxx of
License
1.1 Licensor hereby
grants to Licensee an exclusive, fully-paid, worldwide, royalty-free, perpetual,
irrevocable, and non-terminable (except as provided herein) license (the
“License”),
with the right to sublicense, to use the trademark(s) and associated
trademark registration(s) listed in Exhibit
“A”
(the “Trademark
Portfolio”) in connection with the “Field of Use” (as defined in the
Technology License, and referred to herein as the “Licensed
Field of Use”).
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1.2 This
Agreement will terminate upon the occurrence of the first of the following
events:
(a) Licensee
may terminate this Agreement upon thirty (30) days’ prior written
notice;
(b) This
Agreement shall automatically terminate if Licensee files for bankruptcy
protection, and in such event Licensor may, at its own discretion, elect to
assume or cancel any sublicenses that Licensee has granted under this Agreement;
and
(c) This
Agreement shall automatically terminate, on an asset-by-asset basis, if Licensee
abandons use of any asset in the Trademark Portfolio. In the event
that Licensee elects to affirmatively abandon use of any asset in the Trademark
Portfolio, it shall provide Licensor with written notice of such
election.
1.3 Licensee
may sublicense its rights under this Agreement provided that the sublicense
includes a written agreement that imposes substantially the same obligations on
the sublicensee, and grants both Licensor and Licensee the same rights of
trademark protection, as those stated in Article III of this
Agreement. Licensee will promptly provide Licensor with written
notice of any such sublicense.
1.4 Licensor
may not use, license, assign, or otherwise transfer any rights to the Trademark
Portfolio within the Licensed Field of Use.
1.5 Licensor
may assign or collateralize this Agreement, in whole or in part, and will
promptly provide Licensee with written notice of any such
agreement.
1.6 Licensee
may assign or collateralize this Agreement, in whole or in part, and will
promptly provide Licensor with written notice of any such
agreement.
1.7 In
the event that Licensor elects to abandon any assets in the Trademark Portfolio,
then Licensee may elect to receive an assignment of that asset, subject to any
sublicenses that Licensor has granted to third parties in that asset, at no cost
to Licensee.
1.8 In
the event that Licensor files for bankruptcy protection, then Licensee may elect
to receive an assignment of the Trademark Portfolio, subject to any sublicenses
that Licensor has granted to third parties in the Trademark Portfolio, at no
cost to Licensee.
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II. Fully
Paid
2.1 The
License granted to Licensee in this Agreement is fully paid and may not be
rescinded.
III. Protection
of Trademark Rights
3.1 Licensor
will have the right and responsibility to maintain and renew the trademark
registrations(s) in the Trademark Portfolio at its sole cost and
discretion.
3.2 Licensee
will promptly notify Licensor if it becomes aware of any entity that is
apparently infringing an asset in the Trademark Portfolio.
3.3 Licensor
will promptly notify Licensee if it becomes aware of any entity that is
apparently infringing an asset in the Trademark Portfolio.
3.4 Neither
party will be required by this Agreement to become a party to any adversarial
proceeding including, by way of example, any dispute, litigation, arbitration,
mediation, administrative proceeding, or regulatory proceeding.
3.5 Licensor
will have the first right to elect to enforce or defend the assets in the
Trademark Portfolio outside the Licensed Field of Use at its sole cost and
retain any and all proceeds and other benefits resulting from such
enforcement.
3.6 Each
party will provide reasonable cooperation in connection with any adversarial
proceeding conducted by the other party involving any asset in the Trademark
Portfolio including, by way of example, producing documents, answering
interrogatories, and sitting for depositions, at no cost to the other party
other than recovery of its actual out-of-pocket expenses directly incurred in
providing such cooperation.
3.7 In
the event that Licensor determines that it will not enforce or defend any right
in the Trademark Portfolio outside the Licensed Field of Use after receiving
sixty (60) days written notice of an apparent infringement, then, subject to any
sublicenses that Licensor has granted to third parties, Licensee may elect to
enforce such right in its own name and at its sole cost for past, presently
occurring, and future infringements and retain any and all proceeds and other
benefits resulting from such enforcement. In the event that Licensee
elects to enforce trademark rights under this paragraph, then Licensor will
assign the subject trademark(s) and trademark registration(s) to Licensee
subject to an exclusive license (subject to any sublicenses to third parties
that Licensor may have granted) back to Licensor for use of the Trademark
Portfolio outside the Licensed Field of Use.
3.8 Licensee
will have the first right to elect to enforce or defend the assets in the
Trademark Portfolio within the Licensed Field of Use at its sole cost and retain
any and all proceeds and other benefits resulting from such
enforcement.
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3.9 In
the event that Licensee determines that it will not enforce or defend any right
in the Trademark Portfolio within the Licensed Field of Use after receiving
sixty (60) days written notice of an apparent infringement within the Licensed
Field of Use, then Licensor may elect to enforce such right in its own name and
at its sole cost for past, presently occurring, and future infringements and
retain any and all proceeds and other benefits resulting from such
enforcement.
3.10 Licensee
will only use the assets in the Trademark Portfolio in the Licensed Field of Use
and in accordance with applicable federal, state, and local laws, and
administrative regulations.
3.11 Upon
reasonable notice and conditions, Licensor will have the right to inspect all
records in the possession of Licensee pertaining to the quality of any goods or
services provided by Licensee under the Trademark Portfolio including, without
limitation, records pertaining to any complaints, civil litigation, regulatory,
or law enforcement activity.
3.13 In
the event that Licensor determines in good faith that the goods or services
provided by Licensee under the Trademark Portfolio, or the use of the Trademark
Portfolio by Licensee in advertising or other publicly available materials, is
objectionable to Licensor for any reason whatsoever, Licensor will provide
Licensee with timely notice of the objectionable circumstances. If
Licensor believes that the objectionable circumstances can be cured, Licensor
will advise Licensee of the steps that it may elect to undertake to cure the
objectionable circumstances.
3.14 Any
party found by a court of competent jurisdiction (or the selected authority
should the parties elect alternative dispute resolution) to be in breach of this
Agreement will pay the other party’s reasonable costs and attorneys’ fee
incurred in connection with enforcing this Agreement.
IV. Warranties
and Indemnities
4.1 Licensor
represents and warrants that it reasonably believes itself to be the sole owner
of all of the assets in the Trademark Portfolio.
4.2 Licensor
represents and warrants that it has not conveyed any right or interest in the
Trademark Portfolio to any other party.
4.3 Licensor
represents and warrants that it has obtained all corporate, member, and/or
shareholder authorization(s) and has an unencumbered legal right to enter into
and perform as required by this Agreement.
4.4 Licensee
represents and warrants that it has obtained all corporate, member, and/or
shareholder authorization(s) and has an unencumbered legal right to enter into
and perform as required by this Agreement.
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4.5 LICENSOR
MAKES NO REPRESENTATION OR WARRANTY OF ANY KIND AS TO THE VALIDITY OF ANY ASSET
IN TRADEMARK PORTFOLIO, WHETHER OR NOT ANY ASSETS DESCRIBED IN THE TRADEMARK
PORTFOLIO DO OR DO NOT INFRINGE ANY TRADEMARK, COPYRIGHT, OR OTHER RIGHT OF ANY
THIRD PARTY, WHETHER OR NOT ANY ASSETS IN THE TRADEMARK PORTFOLIO ARE
MERCHANTABLE FOR ANY PURPOSE.
4.6 Licensee
shall indemnify, hold harmless, and defend Licensor with respect to any claim or
cause of action arising out of publication, advertising, or use of any asset in
the Trademark Portfolio; or manufacture, use, sale, or importation of any
product or process under any asset in the Trademark Portfolio, by Licensee or
its sublicensees, including, without limitation, advertising injury, personal
injury, product liability, medical malpractice, or loss or damage to medical or
other data.
4.7 Licensee
shall indemnify, hold harmless, and defend Licensor with respect to any right,
claim, or cause of action arising out of sublicensing or assignment by Licensee
of any right in the Trademark Portfolio.
4.8 Licensor
shall indemnify, hold harmless, and defend Licensee with respect to any claim or
cause of action arising out of publication, advertising, or use of any asset in
the Trademark Portfolio; or manufacture, use, sale, or importation of any
product or process under any asset in the Trademark Portfolio, by Licensor or
its sublicensees (other than Licensee and its sublicensees), including, without
limitation, advertising injury, personal injury, product liability, medical
malpractice, or loss or damage to medical or other data.
4.9 Licensor
shall indemnify, hold harmless, and defend Licensee with respect to any right,
claim, or cause of action arising out of sublicensing or assignment by Licensor
of any right in the Trademark Portfolio to any party other than
Licensee.
V. Miscellaneous
5.1 All
notices, consents, waivers, requests, instructions, or other communications
required or permitted hereunder shall be in writing or by written electronic
transmission, and shall be deemed to have been duly given if (a) delivered
personally (effective upon delivery), (b) sent by a reputable, established
international courier service that guarantees delivery within three (3) business
days (effective upon receipt), (c) mailed by certified mail, return receipt
requested, postage prepaid (effective upon receipt), or (d) sent by facsimile or
e-mail with confirmation of transmission by the transmitting equipment
(effective upon receipt), addressed as follows (or to such other address as the
recipient may have furnished for the purpose pursuant to this Section
5.1):
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If to
Licensor:
SaluMedica,
LLC
0000
Xxxxxxx Xxxx, X.X., Xxxxx 000
Xxxxxx,
Xxxxxxx 00000
Attention:
Xxxxxx X. Xxxxxx
Facsimile:
(000) 000-0000
Email:
xxxxx.xxxxxx@xxxxxxxxxx.xxx
With a
copy (which shall not constitute notice) to:
Xxxxxxx
X. Xxxxxxx, Esq.
Xxxxxxxxx
Xxxxxxx Xxxxxxxxx, LLP
0000
Xxxxxxxxx Xxxxxx X.X.
000
Xxxxxx Xxxxxx, Xxxxx 0000
Xxxxxxx,
Xxxxxxx 00000
Facsimile:
(000) 000-0000
Email:
xxxxxxxx@xxxxxx.xxx
If to
Licensee:
MiMedx,
Inc.
0000
Xxxxxxx Xxxx, Xxxxx 000
Xxxxxx,
Xxxxxxx 00000
Attention: Xxxxx
Xxxxxx, Chairman
Facsimile: (000)
000-0000
Email:
xxxxxxx@xxxxxxxxxxxxxxx.xxx
With a
copy (which shall not constitute notice) to:
G. Xxxxxx
Xxxxxxx, Esq.
Xxxxxx
Xxxxxxx Xxxxxxxxx & Xxxx, PLLC
0000 Xxxx
Xxxxxxxxx Xxxxxx, Xxxxx 0000
Xxxxxxx,
Xxxxxxx 00000
Facsimile:
(000) 000-0000
Email:
XXxxxxxx@xxxx.xxx
Changes
to the above notification addresses may be made by notice to the parties in the
manner set forth above.
5.2 This
Agreement constitutes the entire agreement between the parties with respect to
the subject matter hereof, supersedes all previous express or implied promises
or understandings related to the subject matter of hereof, and may not be
varied, amended, or supplemented except by a writing of even or subsequent date
executed by both parties and containing express reference to this
Agreement. The parties acknowledge the existence of a
contemporaneously executed Technology License and a contemporaneously executed
Investment Agreement that are not altered or superseded by the present
Agreement, and that this Agreement is not altered or superseded by the
Technology License or the Investment Agreement.
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5.3 The
failure of either party to enforce at any time any of the provisions of this
Agreement, or any rights in respect thereto, will in no way be considered a
waiver of such provisions, rights, or elections with respect to subsequent
events or in any way to affect the validity and the enforceability of this
Agreement.
5.4 In
the event that any provision of this Agreement is declared invalid or legally
unenforceable by a court of competent jurisdiction from which no appeal is or
can be taken, the invalid provision will be deemed replaced by a similar but
valid and legally enforceable provision as near in effect as the invalid or
legally unenforceable provision, and the remainder of this Agreement will be
deemed modified to conform thereto and will remain in effect.
5.5 This
Agreement will be binding upon and inure to the benefit of the parties and their
respective heirs, successors, and permitted assigns.
5.6 Each
party acknowledges that it has been represented by counsel in connection with
the negotiation and drafting of this Agreement and that no rule of strict
construction shall be applied to either of them as the drafter of all or any
part of this Agreement.
[Signature
Page Follows]
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IN
WITNESS WHEREOF, the parties hereto have executed this Trademark License
Agreement in duplicate, each of which constitutes an original, to be effective
as of the Effective Date.
|
LICENSOR:
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LICENSEE:
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SaluMedica,
LLC
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MiMedx,
Inc.
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By:
/s/ Xxxxxx X.
Xxxxxx
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By:
/s/ Xxxxxxx X.
Xxxxxx
|
|
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Name:
Xxxxxx X.
Xxxxxx
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Name:
Xxxxxxx X.
Xxxxxx
|
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Title:
President
|
Title:
Executive Vice
President
|
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EXHIBIT “A”
United States Trademark
Registrations
1. SALUBRIA,
and U.S. Trademark Registration No. 2,588,889
2. SaluMedica
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