LICENSE AGREEMENT
THIS
LICENSE AGREEMENT (“Agreement”), entered into and effective as of the 18TH day of
March, 2010 (the "Effective Date") by and between GLOBAL TREK XPLORATION, a
California corporation having its principal place of business at 000 Xxxx 0xx
Xxxxxx, Xxxxx Xxxxxx 0000, Xxx Xxxxxxx, XX 00000 (hereinafter referred to as
"LICENSOR") and Aetrex Worldwide, Inc., a New Jersey corporation having a
principal place of business at 000 Xxxxxx Xxxxxx, Xxxxxxx, XX 00000 (hereinafter
referred to as "LICENSEE").
RECITALS
WHEREAS,
LICENSOR has developed a portable GPS tracking system device which LICENSEE
wishes to embed in its various footwear products; and
WHEREAS,
LICENSOR is the owner of all right, title and interest to the Licensed Patent
Rights and Know-How (as defined below), has the right to grant the license
contained herein and desires to grant the exclusive and non-exclusive licenses
to LICENSEE to use, sell, offer for sale and distribute the Licensed Products
(as defined below) in the Territory and Permitted Markets (as defined below) on
the terms and conditions set forth in this Agreement; and
WHEREAS,
LICENSEE desires to obtain from LICENSOR certain exclusive and
non-exclusive licenses to use, sell, offer for
sale, and distribute Licensed Products (as hereinafter defined) under the
Licensed Patent Rights and Know-How (as hereinafter defined) in the Territory
and the Permitted Markets (as hereinafter defined);
NOW,
THEREFORE, in consideration of the foregoing premises and of the mutual
covenants, promises and agreements set forth herein, LICENSOR and LICENSEE
hereby mutually agree as follows:
ARTICLE I -
GENERAL
1.01 All
capitalized terms used in this Agreement (other than the names of parties and
Article headings) shall have the meanings established for such terms
herein.
1.02 The
Schedules attached to this Agreement are hereby incorporated by reference into
and made a part of this Agreement.
ARTICLE II -
DEFINITIONS
2.01 "Permitted
Markets" shall mean:
|
A.
|
Exclusive: (i). All
adult (male and female) footwear; and (ii).
Insoles.
|
|
B.
|
Non-Exclusive: (i). Athletic
footwear; and (ii). Military
footwear.
|
The
parties shall work with one another and negotiate in good faith regarding
growing, adding and allocating future Permitted Markets and Territories (defined
below), both exclusive and non-exclusive. Such negotiations shall
have the goal of (i) growing or adding Permitted Markets and Territories in
those Permitted Markets and Territories in which LICENSEE has or intends to have
a market presence (however, LICENSEE shall not be granted additional exclusive
licenses unless LICENSEE has a “significant” market share in the particular
Territory or Permitted Market); and (ii) creating a mutually beneficial business
structure and may include, without limitation, creating channel, market, or
other carve outs, co-existence agreements, utilizing mutual sales resources, and
the sharing of relevant customer and/or business contact
information. As used in this paragraph, “significant” means:
(i). LICENSEE had during the 12 months preceding such date, annual
gross sales revenues of all of its footwear products in the proposed Permitted
Market in the Territory in excess of five-hundred thousand dollars
($500,000.00); (ii). LICENSEE has an established distributor in the
proposed new exclusive Territory; or (iii). LICENSEE has a company retail outlet
in the proposed new exclusive Territory.
1
2.02 “Licensed
Patent Rights” shall mean:
a. Patent(s)
and patent applications set forth on Schedule 4.02 attached hereto;
b. Any
and all improvements developed by or on behalf of LICENSOR, whether patentable
or not, relating to the Licensed Patent Rights, which LICENSOR may now or may
hereafter develop, own or control; and
c. Any
and all foreign and domestic patent applications of any kind, applications,
provisional applications, PCT, and all amendments, modifications, divisions,
continuations, continuations-in-part of any and all patent applications, and any
and all patents which may issue from any such applications, and all reissues,
reexaminations, amendments, and improvements, which may issue
thereon.
2.03 “Know
How” shall mean any and all technical data, information, know-how,
materials, trade secrets, technology, formulas, inventions, processes, updates,
procedures, protocols, techniques, software, designs, drawings, processes, and
ideas, including any improvements thereto, in any form in which the foregoing
may exist, are controlled by or now owned or co-owned by or exclusively,
semi-exclusively or non-exclusively licensed to LICENSOR prior to the date of
this Agreement or hereafter acquired by LICENSOR during the Term of this
Agreement, relating to Licensed Patent Rights which may not be covered by the
Licensed Patent Rights but which are necessary or may be helpful for the
practice and full utilization of inventions and/or products at any time
disclosed or claimed under the Licensed Patent Rights.
2.04 "Licensed Products" shall mean
the portable GPS tracking
system device manufactured by and/or for LICENSOR that utilizes the Licensed
Patent Rights, and/or Know How; or any other similar tracking or location
product that utilizes the Licensed Patent Rights and/or Know How that is or may be
suitable for use in the Permitted Markets.
2.05 "Territory"
shall mean:
A.
Exclusive: (i). North
America (USA, Canada, Mexico);
(ii).
Middle East (Turkey, Qatar, Saudi Arabia, UAE, Iraq, Israel, Jordan, Cyprus, and
Egypt)
(iii).
European Union;
(iv). Australia;
(v). New
Zealand;
(vi). Japan;
and
(vii). Greece.
B. Non-Exclusive: All other
countries not specifically listed in 2.05A.
2.06 An
"Affiliate" of LICENSOR or LICENSEE respectively shall mean any corporation,
partnership, individual or other entity which directly or indirectly controls,
is controlled by, or is under common control with, that party.
2.07 The
“Term” shall mean the period commencing on the date the LICENSOR ships to
LICENSEE the first production order from LICENSEE for Licensed Products with
LICENSOR, and ending on the date four (4) years after said first production
order is shipped by LICENSOR, unless extended in accordance with Article VII of
this Agreement. Notwithstanding anything herein to the contrary, the Term shall
be accordingly extended to accommodate any delay in the event LICENSOR is unable
to timely fulfill and deliver LICENSEE’s first production order.
2
2.08 “Exclusive”
shall mean LICENSEE’S rights are sole and entire and operate to exclude all
others, including LICENSOR and its affiliates except as otherwise expressly
provided herein. Specifically, LICENSOR agrees that during the Term it shall not directly or
indirectly offer, sell, distribute, or otherwise commercialize, in any exclusive
Territory, any Licensed Product (or other product that contains the
tracking/location technology of a party other than LICENSOR, whether or not such
technology is similar to the GPS tracking system technology subject to this
Agreement) for use in the exclusive Permitted Market products, other than to or
through LICENSEE.
ARTICLE III - LICENSE
GRANT
3.01 Subject
to all of the terms and provisions of this Agreement, LICENSOR hereby grants to
LICENSEE a license to (i) embed the Licensed
Products into Permitted Market products that are manufactured, marketed,
distributed or sold by LICENSEE, and (ii) use, have used, import, export,
have exported, have imported, offer, sell, have sold, distribute, market,
promote, and otherwise commercially exploit the Licensed Products in the
Permitted Markets within the Territory. The foregoing license to the Permitted
Markets and the Territories shall be either exclusive or non-exclusive, as set
forth in Section 2.01 and 2.05. To the extent that LICENSEE is
required to possess a license to any of the Licensed Patent Rights and/or
Know-How that are included in the Licensed Products for the purpose of
commercializing its Licensed Product footwear products, the LICENSOR hereby
grants to LICENSEE a license under the Licensed Patent Rights and/or Know-How
for such limited purpose. LICENSEE may conduct certain of its operations related
to the commercial exploitation of Permitted Market products, as LICENSEE deems
appropriate, through one or more of its Affiliates and/or third-party
distributors; provided, however, that LICENSEE shall continue to be primarily
responsible under this Agreement, and provided further that LICENSEE shall be
responsible for ensuring that any such Affiliate and/or third-party distributor
complies with the LICENSEE’s obligations under this
Agreement.
3.02 During
the Term, except as set forth in Schedule 4.01,
LICENSEE shall purchase all of the Licensed Products that it uses in its
exclusive Permitted Market products for use in exclusive Territories from
LICENSOR and not from any other source. For the avoidance of
doubt, and as a point of clarification, it is the parties’ general intent that
LICENSOR shall sell its portable GPS devices (i.e., the Licensed Products) which
incorporate the Licensed Patent Rights and Know-How to LICENSEE. LICENSEE shall
then embed same within LICENSEE’s permitted line(s) of footwear products with
the end consumer product being a shoe (and/or insoles or other footwear
products) which tracks the wearer’s location through the GPS tracking services
offered by LICENSOR, and LICENSEE shall sell the embedded footwear product to
the public. LICENSOR shall be solely responsible for the manufacture,
production and supply of the Licensed Products, for the GPS activation, for
arranging and providing cellular connection services, and for repairs,
replacements, after-service, and warranties pursuant to its product and services
warranties. The foregoing warranties shall exclude
claims that arise because of defects in the footwear products in which
the Licensed Products are embedded based on LICENSEE’s manufacturing of such
footwear products. LICENSOR shall also be responsible for all
consumer inquiries and claims, received at any time, relating to its Licensed
Products and services, which inquiries and claims,
if received by LICENSEE, shall be referred to
LICENSOR for handling.
Upon
execution of this Agreement, LICENSOR shall disclose and make available to
LICENSEE, and shall continue to do so at LICENSEE’s reasonable request, all
information available to LICENSOR not previously disclosed to LICENSEE,
regarding the use of the Licensed Patent Rights and Know-How which are necessary
for LICENSEE to embed the Licensed Products into LICENSEE’s various permitted
footwear products and carry out the objectives of this Agreement.
3.03 In consideration for the exclusive licenses granted to
LICENSEE hereunder, LICENSEE agrees that during the Term it shall not offer,
sell or otherwise commercialize, in any exclusive Territory, any exclusive
Permitted Market product that contains the tracking/location technology of a
party other than LICENSOR, whether or not such technology is similar to the GPS
tracking system technology subject to this Agreement.
3.04 The
parties acknowledge and agree that, except for the rights and licenses expressly
granted by each party to the other party under this Agreement, each party shall
retain its respective right, title and interest in and to its products,
services, marks, names, intellectual property, information, and other materials,
and nothing contained in this Agreement shall be construed as conferring upon
such party, by implication, operation of law or otherwise, any other license or
other right. All such rights therein are strictly reserved, and all
uses and good will arising in the course of this Agreement in respect of same of
either party shall accrue solely for the benefit of the rightful owning
party.
3
ARTICLE IV – CONSIDERATION,
ROYALTIES AND REPORTS
4.01 In
consideration for the exclusive and non-exclusive licenses granted to LICENSEE
hereunder, LICENSEE and LICENSOR respectively shall each provide the
consideration as set forth in Schedule 4.01 of this Agreement.
4.02 LICENSOR
and LICENSEE agree that the consideration for the license granted hereunder has
been negotiated at arm’s-length and that both parties consider the consideration
received by both parties to be fair and reasonable.
4.03 During
the Term of this Agreement, LICENSOR shall, and shall cause any of its
Affiliates to, maintain complete and accurate records of all fees due to
LICENSOR under this Agreement. LICENSOR shall deliver to LICENSEE within ten
(10) days after the last day of each month that this Agreement is in effect, a
true and accurate written report, certified as true and correct by an officer of
LICENSOR, setting forth the gross dollar amounts received by LICENSOR and
Affiliates of LICENSOR from customers (as defined in Schedule 4.01) for each
category of fee due to LICENSEE as set forth in Schedule 4.01 of
this Agreement; and the calculation of the amounts paid and/or due to
LICENSEE from LICENSOR.
4.04 Simultaneously
with providing the report required in Section 4.03, to the extent such amounts
have not already been paid to LICENSEE, LICENSOR shall pay to LICENSEE in United
States Dollars the entire amount due to LICENSEE for the month on account of
which such report is made and submitted.
4.05 LICENSEE
shall have the right, at its own expense, to request an audit of any period
ending not more than three (3) years prior to the date of such
request and LICENSEE’S representatives, which may include an independent
accountant, to perform such audit. LICENSEE’s representatives shall
have access to the business records of LICENSOR and Affiliates of LICENSOR which
are necessary or appropriate to verify the amounts payable to LICENSEE, and the
cost basis underlying LICENSOR’s pricing of Licensed Products, pursuant to this
Agreement. LICENSEE’s representatives shall be bound by the confidential clause
contained in this Agreement. In the event that a deficiency of three percent
(3%) or more is discovered between the actual payment due to LICENSEE and the
amount of the payment specified in the written report submitted by LICENSOR to
LICENSEE pursuant to Section 4.03, LICENSOR shall bear the costs of the audit
conducted by LICENSEE. LICENSEE’S right to audit hereunder shall be
limited to one (1) time per year and such rights shall continue for a period of
three (3) years after any termination of this Agreement.
4.06 All
payments of amounts due to LICENSEE pursuant to any of the provisions of this
Agreement shall be made to LICENSEE by wire transfer at the principal place of
business of LICENSEE as specified in or pursuant to the provisions of Article
XIII of this Agreement.
4.07 In
the event LICENSOR desires to add new Permitted Markets and/or Territories to
sell Licensed Products embedded in footwear or footwear related products as
contemplated in this Agreement, LICENSOR shall provide LICENSEE with a right of
first negotiation and refusal. That is, the parties will negotiate in good faith
for up to 15 days, and/or LICENSOR will present to LICENSEE any bona fide offer
or proposal it intends to accept with a third party. If LICENSEE and
LICENSOR are unable to reach a definitive agreement, or LICENSEE does not match
any third party bona fide offer or proposal, LICENSOR may enter into an
agreement with such third party; except that if LICENSOR and third party
negotiate more favorable terms, such offer must be re-presented to LICENSEE for
reconsideration for a period of five (5) days.
4
ARTICLE V - REPRESENTATIONS
AND WARRANTIES
A.
LICENSOR
5.01 Organization, Standing,
Etc. Global Trek Xploration is a corporation duly formed,
validly existing and in good standing under the laws of the State of California
and has the requisite corporate power and authority to own, lease, sell or
operate the Licensed Patent Rights and the Licensed Products .
5.02 Corporate Acts and
Proceedings. This Agreement has been duly authorized by all
necessary action on behalf of the LICENSOR, has been duly executed and
delivered, is a valid and binding agreement on the part of the LICENSOR and is
enforceable against the LICENSOR in accordance with its terms.
5.03 Compliance with Applicable
Laws and Other Instruments. Neither the execution nor delivery
of, nor the performance of or compliance with, this Agreement nor the
consummation of the transactions contemplated hereby or thereby will, with or
without the giving of notice or passage of time, result in any breach of, or
constitute a default under, or result in the imposition of any lien or
encumbrance upon any of the Licensed Patent Rights pursuant to, any agreement or
other instrument to which the LICENSOR is a party or by which it or any of the
Licensed Patent Rights is bound or affected, and will not violate its articles
of incorporation, bylaws, articles of organization or any other of its governing
documents. The LICENSOR is not subject to any restriction that would
prohibit it from entering into or performing its obligations under this
Agreement.
5.04 Intangible
Rights.
5.04.1 LICENSOR
is the sole owner of and owns all right, title and interest in, or has obtained
the necessary licenses, to the Licensed Patent Rights and Know-How, free and
clear of any liens or encumbrances, and has the sole, exclusive and unencumbered
right to license the Licensed Patent Rights and Know-How to
LICENSEE.
5.04.2 Neither
the Licensed Patent Rights, the Know-How, Licensed Products, the use thereof,
nor the manufacture, marketing, use, sale, distribution, or advertisement of the
Licensed Patent Rights and Know-How, infringe upon or otherwise act adversely to
any patent right, trademark right, common law, proprietary or other right of
another or require the consent of any third party.
5.04.3 LICENSOR
has made no assignment of the Licensed Patent Rights or Know-How to a party
other than LICENSEE that would preclude licensing to LICENSEE and is under no
obligation to make any assignment of the Licensed Patent Rights and/or Know-How
therefore to any other party, nor will it license the Licensed Patent Rights or
Know-How to any person or entity other than LICENSEE in violation of this
Agreement, for the duration of the Agreement or otherwise diminish the license
rights granted to LICENSEE hereunder.
5.04.4 LICENSOR
is not aware of any existing or threatened infringement action or claim of
invalidity or adverse ownership with respect to the subject matter of Licensed
Patent Rights or Know-How or of any facts which indicate that any such action or
claim is likely to be instituted or asserted.
5.04.5 During
the Term of this Agreement, and in further consideration of purchases made by
LICENSEE hereunder, LICENSOR shall provide such
technical assistance regarding the Licensed Patent Rights and Know-How as
LICENSEE reasonably requests to conduct its activities contemplated by the
Agreement, and shall make available to LICENSEE such technical personnel as
reasonably necessary to provide the foregoing technical assistance.
B.
LICENSEE
5.10 Organization, Standing,
Etc. The LICENSEE is a corporation duly organized, validly
existing and in good standing under the laws of New Jersey and has the requisite
corporate power and authority to own, lease or operate its properties and to
carry on its business as it is now being conducted and as it is presently
proposed to be conducted.
5.11 Corporate Acts and
Proceedings. This Agreement has been duly authorized by all
necessary action on behalf of the LICENSEE, has been duly executed and
delivered, is a valid and binding agreement on the part of the LICENSEE and is
enforceable against the LICENSEE in accordance with its terms.
5
5.12 Compliance with Applicable
Laws and Other Instruments. Neither the execution nor delivery
of, nor the performance of or compliance with, this Agreement nor the
consummation of the transactions contemplated hereby will, with or without the
giving of notice or passage of time, result in any breach of, or constitute a
default under any agreement or other instrument to which the LICENSEE is a
party, and will not violate its articles of incorporation, bylaws, or any other
of its governing documents. The LICENSEE is not subject to any
restriction which would prohibit it from entering into or performing its
obligations under this Agreement.
ARTICLE VI - TRANSFERABILITY
OF RIGHTS AND OBLIGATIONS
6.01 LICENSOR
and LICENSEE may assign their respective rights and obligations under this
Agreement only upon a writing signed by the other party consenting to such
assignment. Notwithstanding the foregoing sentence, in the event of a sale of
substantially all of the assets of a party, the other party's consent to
assignment will not be withheld, except based on a reasonable basis to conclude
that the party to which this Agreement will be assigned lacks the capacity to
fulfill the obligations and undertakings of the party seeking to assign this
Agreement. Any attempt to transfer, assign or sublicense which is not in
accordance with the terms of this Agreement shall be void abs initio.
6.02 The
provisions of this Agreement shall be binding upon and inure to the benefit of
all successors and permitted assigns of the parties hereto.
ARTICLE VII – EXTENSION OF
TERM; TERMINATION FOR BREACH
7.01 a.
The Term of this Agreement is four (4)
years.
b.
This Agreement shall automatically renew for additional one (1) year terms if
LICENSEE’s annual purchase of the number of Licensed Product devices in the preceding year was at least one hundred
and fifteen
percent (115%) of the prior year’s Minimum Purchase Requirement. At
the time of renewal, if LICENSOR has made Licensed Products available to
LICENSEE which are capable of being embedded in Permitted Market insoles for sale to
the consumer public, the parties shall negotiate in good faith to equitably
increase the Minimum Purchase Requirements for each renewal year.
c. Notwithstanding
anything herein to the contrary, after the initial four-year Term of this
Agreement, either party shall have the right not to renew this Agreement upon
written notice of an intent not to renew on at least ninety (90) days written
notice.
7.02 Prior
to the expiration of the Term of this Agreement, either party may, at its
option, terminate this Agreement and the licenses granted hereunder upon prior
written notice to the other party if that party fails to pay within fifteen (15)
days of the due date any amount required to be paid hereunder or if the other
party breaches any of the other covenants or provisions of this Agreement.
Notwithstanding the foregoing, unless the breach is not capable of being cured,
the breaching party shall have fifteen (15) days from receipt of written notice
to pay such overdue amount in full, or thirty (30) days to cure such other
breach, and thereby avoid termination under this Section.
If: (1)
the breach is not capable of being cured; (2) the overdue amount is not paid
with interest at the rate of one percent (1%) per month (but not to exceed the
maximum amount of interest permitted by applicable law) from the date due to the
date paid; or (3) such other breach is not cured within thirty (30)
days, then this Agreement and all licenses granted hereby will terminate
immediately and automatically without any further notice or action on the part
of the non-breaching party. In the event that the interest rate specified in
this Section exceeds the maximum rate of interest permitted by applicable law,
such rate shall in such instance be reduced to the maximum permitted
rate.
6
Notwithstanding
anything in this Agreement to the contrary, LICENSEE shall have the right to
terminate this Agreement at any time upon at least ninety (90) days
notice: (i) in the event it wishes to discontinue its line
of business relating to the Licensed Products; (ii) in the event that
any audit of LICENSEE’s records reveal a
deficiency greater than three percent on at least two occasions;; or (iii) if
consumer complaints regarding the Licensed Products or related services provided
by LICENSOR are excessive as determined by the reasonable judgment of
LICENSEE. LICENSEE
further has the right to immediately terminate this Agreement upon notice to
LICENSOR in the event LICENSOR fails to take the necessary protective action
against infringement actions as set forth in Article VIII. In the event of
termination resulting from LICENSEE’s breach of this Agreement or LICENSEE’s
termination for any reason other than LICENSOR’s breach of this
agreement, LICENSEE must purchase the balance remaining, if any, of
all Licensed Product open purchase orders pending at the date
of termination.
7.03 In
the event that either party shall become insolvent; be declared bankrupt;
voluntarily file or have filed against it a petition for bankruptcy or
reorganization; unless such petition is dismissed within ninety (90) days of
filing; enter into an arrangement for the benefit of creditors; enter into a
procedure of winding up for dissolution; or should a trustee or receiver be
appointed for its respective business assets or operations, the other party
shall have the right to terminate this Agreement upon written notice to the
other.
7.04 Except
as otherwise specifically provided herein, expiration or termination of this
Agreement and of the license granted hereby for any reason shall be without
prejudice to:
(a) the
right of LICENSOR and LICENSEE to receive all payments accrued and unpaid as of
the effective date of such termination or to receive any payments or other
amounts which may accrue after the date of termination;
(b) any
other rights, remedies or obligations which LICENSOR or LICENSEE may then or
thereafter have under this Agreement or otherwise; and
(c) the right of LICENSEE to
sell off any inventory of Licensed Products until exhausted.
7.05 Termination
of this Agreement is without prejudice to either party to avail itself of all
remedies available in law and equity that are not inconsistent with the
provisions of this Agreement.
7.06 The
provisions of Section 7.05 shall survive termination or expiration of this
Agreement.
ARTICLE VIII - THIRD-PARTY
INFRINGEMENT
8.01 If
either party becomes aware of any actual or threatened infringement of the
Licensed Patent Rights, that party will promptly notify the other of each
infringement or possible infringement, as well as any facts that may affect the
validity, scope or enforceability of the Licensed Patent
Rights (“Infringement Notice”). After allowing for a
reasonable time to determine that infringement of the Licensed Patent Rights is
occurring, LICENSOR shall take all necessary steps to remedy the infringement,
including the institution of litigation if necessary. If LICENSOR fails to
resolve the infringement issue or otherwise fails to commence suit(s) hereunder
within a reasonable time after receipt of LICENSEE’s request to do
so, LICENSEE may terminate this Agreement, and reserves all rights and
remedies to prosecute such infringement suits, at its own cost and expense, to
protect and enforce its exclusive rights granted under this Agreement which
LICENSEE may have under applicable law.
8.02 LICENSOR
shall have the sole right to institute and control the prosecution of a suit or
to take any other action for infringement of any of the Licensed Patent
Rights. LICENSEE agrees to take no action with respect to any
third-party infringement of Licensed Patent Rights unless expressly authorized
to do so in writing by LICENSOR.
LICENSEE
agrees to, and agrees to cause each of the Affiliates of LICENSEE to, reasonably
cooperate with LICENSOR in all respects, to make employees of LICENSEE and any
Affiliate of LICENSEE available to testify, to make available any records,
papers, information, specimens and the like, provided LICENSEE
determines there is no conflict of interest, upon LICENSOR's
request.
7
Any
recovery or settlement obtained as a result of such suit or other action brought
by LICENSOR shall be retained by LICENSOR for its own use and benefit, and
LICENSEE shall have no rights whatsoever in any such recovery or settlement,
provided, however, LICENSOR agrees to: (i) provide reasonable compensation to
LICENSEE and/or its Affiliates for costs incurred by LICENSEE and/or its
Affiliates for making employees available to testify and/or making available any
documentary evidence, including reasonable attorneys fees incurred by LICENSEE;
and (ii) any recovery made by LICENSOR, through court judgment or settlement,
shall be applied to reimburse LICENSEE for, profits, if any, that it would have
received, and other lost entitlements under this Agreement, had the actions
taken by the defendant occurred in compliance with this Agreement.
No
settlement or termination of litigation shall be entered into by LICENSOR that
conflicts with the rights granted to LICENSEE under
this Agreement.
8.03 Neither
LICENSEE nor LICENSOR shall xxxxxx or encourage any infringement of the Licensed
Patent Rights by any third-party. If either party or any of either
party’s Affiliates shall engage in such conduct, the other party shall have the
right to deem such conduct a material breach of this Agreement, which breach
shall be a basis of termination of this Agreement.
Notwithstanding
anything in this Agreement to the contrary, LICENSEE shall have the continuing
right to commence or intervene and join any suit in its discretion at
its cost and expense utilizing counsel of its choice, to protect its rights and
interests, and shall be entitled to retain any recovery or settlement obtained
as a result of such suit or other action it brings.
ARTICLE IX -
MARKINGS
9.01 LICENSEE
agrees to, and to cause Affiliates of LICENSEE to, xxxx in a conspicuous
location all Permitted Market products and/or the containers or packaging for
any Permitted Market products which use or contain Licensed Products sold by
LICENSEE or any Affiliate of LICENSEE with the word "Patent" or "Patents" and
the number or numbers of the Licensed Rights applicable thereto and with such
additional legends, markings and notices as may be required by any law or
regulation of any jurisdiction in the Territory. LICENSEE and any Affiliate of
LICENSEE shall xxxx any Permitted Market products (and/or the containers or
packaging therefore) using a process covered by any patent included in the
Licensed Rights with the number of each such patent and, with respect to
Licensed Rights, to respond to any request for disclosure under 35 U.S.C. §
287(b)(4)(B) by only notifying LICENSOR of the request for disclosure and the
identity of the person or entity making such request for disclosure. In lieu of
marking with a specific patent number, at its option LICENSEE may comply with
its obligations under this Section 9.01 by using the legend “Sold Under License
from Global Trek Xploration”
9.02 LICENSEE and LICENSOR agree that whenever reasonably
practicable, Permitted Market consumer product packaging, hang tags, and/or
promotional materials will contain a reference such as the phrase “POWERED BY
GTX”, or some other similar reference as may be mutually agreed upon by LICENSOR
and LICENSEE. The size, style and location of such phrase shall
be subordinate to that of LICENSEE’s names and marks, and must be preapproved in
writing by both parties before its first use. LICENSOR and LICENSEE
shall mutually agree on the placement of an appropriate copyright notice on
graphic materials used by LICENSEE in connection with the use of its selected
phrase. To the extent necessary for the purposes of this paragraph, LICENSOR
hereby grants to LICENSEE a nonexclusive, revocable, nontransferable,
royalty-free right during the Term, in the Territory, to use LICENSOR’s
trademark rights in the phrase mutually agreed upon for use with the Permitted
Market products.
ARTICLE X - INTEGRATION;
AMENDMENT
10.01 This
Agreement represents the entire understanding between the parties, and
supersedes all prior or contemporaneous discussions, proposals, negotiations,
understandings and other agreements, express or implied, between LICENSOR and
LICENSEE with respect to the subject matter of this Agreement, and there are no
representations, promises, conditions, provisions or terms, whether written or
oral, with respect thereto, other than those specifically set forth in this
Agreement.
10.02 No
provision in this Agreement may be amended, altered, modified, discharged or
terminated, except by a writing signed by a duly authorized representative of
LICENSOR and LICENSEE.
8
ARTICLE XI – INDEMNIFICATION
& INSURANCE
11.01 No
later than the time when any Permitted Market products containing or using the
Licensed Products are first being distributed, sold, or otherwise commercially
exploited (including for the purpose of obtaining regulatory approvals) by
LICENSEE, LICENSEE and LICENSOR shall each, at their sole cost and expense,
procure and maintain commercial general liability insurance, with a reputable
insurance carrier reasonably acceptable to the other party, in amounts of not
less than $2,000,000 per incident and $2,000,000 annual aggregate, and the other
party shall have the other party’s Affiliates, and their officers, directors,
affiliates, subsidiaries, employees, independent contractors and agents named as
additional insureds. Such commercial general liability insurance shall provide
(i) product liability coverage; (ii) broad form contractual liability coverage
for indemnification under this Agreement; and (iii) coverage for litigation
costs. The minimum amounts of insurance coverage required shall not
be construed to create a limit of LICENSEE’s or LICENSOR’s liability with
respect to its indemnification under this Agreement.
11.02 Each party shall provide
the other party with written evidence of such insurance upon
request. Each party shall provide the other party with written notice
of at least thirty (30) days prior to cancellation, non-renewal or material
change in such insurance.
11.03 Each party shall
maintain such commercial general liability insurance beyond the expiration or
termination of this Agreement during (i) the period that any Licensed
Patent Rights and/or Licensed Products provided pursuant to this Agreement are
being commercially distributed, sold or otherwise exploited by LICENSEE; and
(ii) the two (2) year period immediately after such period.
11.04 LICENSEE
and Affiliates of LICENSEE shall jointly and severally defend, indemnify and
hold harmless LICENSOR and the Affiliates of LICENSOR, and the officers, agents
and employees of LICENSOR and its Affiliates, (collectively the "Indemnified
Parties") from and against any and all liabilities, damages, losses, claims,
suits, proceedings, demands, recovery, costs and expenses (including, without
limitation, the reasonable fees and expenses of counsel, litigation expenses,
and court costs) which arise out of or relate to: (i) any breach by LICENSEE or
any Affiliate of LICENSEE of any representation, warranty or covenant set forth
in this Agreement; (ii) any defects in the footwear products in which the
Licensed Products are embedded based on LICENSEE’s design or manufacturing of
such footwear products; (iii) any third party claim that LICENSEE’s footwear
products in which the Licensed Products are embedded infringe upon intellectual
property rights of any third party; (iv) any warranty claims by third parties
and consumers relating to the footwear products in which the Licensed Products
are embedded.
11.05 LICENSOR
and Affiliates of LICENSOR shall jointly and severally defend, indemnify and
hold harmless LICENSEE and the Affiliates of LICENSEE, and the officers, agents,
independent contractors, and employees of LICENSEE and its Affiliates,
(collectively the "Indemnified Parties") from and against any and all
liabilities, damages, losses, claims, suits, proceedings, demands, recovery,
costs and expenses (including, without limitation, the reasonable fees and
expenses of counsel, litigation expenses, and court costs) which arise out of or
relate to: (i) any breach by LICENSOR or any Affiliate of LICENSOR of any
representation, warranty or covenant set forth in this Agreement; (ii) any
defects in Licensed Products sold to LICENSEE based on LICENSOR’s
design or manufacturing of Licensed Products; (iii) any third party
claim that the Licensed Patents Rights, Know-How, and/or Licensed Products
infringe upon intellectual property rights of any third party; (iv) any
complaints and/or warranty claims by third-parties or consumers, received at any
time, relating to the Licensed Products, cellular services related to the
Licensed Products or other products or services offered by LICENSOR for the
operation, repair, refund, and/or replacement of such Licensed Products or
services.
11.06 The
indemnity and insurance obligations under this Agreement shall survive the
termination or expiration of this Agreement and of the licenses granted pursuant
to this Agreement in order to indemnify and hold harmless the Indemnified
Parties (as defined in herein) with respect to any claims for which the
Indemnified Parties are entitled to indemnification, irrespective of whether any
such claim arose prior or subsequent to the effective date of termination or
expiration.
9
ARTICLE XII - PRESS RELEASES
AND PUBLICITY
12.01 The
financial terms of this Agreement are strictly confidential and neither LICENSOR
nor LICENSEE shall issue a press release or public announcement concerning, or
otherwise disclose, the financial terms of this Agreement without the prior
specific written consent of the other party and approval of the language of the
press release or public announcement. Notwithstanding the foregoing, LICENSOR
and/or LICENSEE may disclose in a press release, to potential licensees, or
otherwise, the fact that this Agreement has been executed and entered into on
mutually agreeable terms without disclosing the amount of the payments or any of
the other specific financial terms of this Agreement.
12.02 Notwithstanding
Section 12.01, LICENSOR or LICENSEE may disclose the terms of this Agreement in
response to: (a) an order from a court or governmental agency; (b) in response
to a request by a party in litigation, provided an appropriate protective order
has been entered; or (c) if such disclosure is necessary to comply with any
other laws or regulations applicable to LICENSOR or LICENSEE.
12.03 Nothing
in this Agreement shall be construed as conferring any right to use in
advertising, publicity, or other promotional activities any name, trade name,
trademark, trade dress or other designation of either party hereto except as may
be expressly stated herein. Neither party will use such name or other
xxxx of the other in its advertising or promotional materials without the prior
written consent of the other party.
12.04 Following
the execution of this Agreement, LICENSOR and LICENSEE shall work in good faith
to develop and implement joint marketing and advertising strategies related to
the end consumer product and will engage in joint marketing and advertising as
mutually agreed from time to time. Costs and expenses for same shall
be allocated between LICENSOR and LICENSEE as mutually
agreed. Subject to the pre-approvals of Section 12.03, nothing herein
shall be construed to preclude either party from independently
advertising.
ARTICLE XIII -
NOTICES
13.01 It
will be a sufficient giving of any notice, request, report, statement,
disclosure, or other communication hereunder, to LICENSOR or to LICENSEE, if the
party giving it: (i) deposits a copy thereof in a post office in a
registered or certified envelope, postage prepaid, or with a nationally
recognized overnight courier, prepaid, return receipt requested; or (ii) sends
same by receipt confirmed fax or e-mail provided a copy is simultaneously made
by a method set forth in subsection (i) herein; addressed to the
other party at its address set forth below or at any other address the other
party may hereafter designate in writing in accordance with the provisions
hereof. Unless otherwise specified in this Agreement or otherwise
designated in writing, payments to be made pursuant to any of the provisions of
this Agreement will be transmitted to the address to which notice is to be given
hereunder, or wired to the bank account of LICENSOR as requested by LICENSOR.
The respective addresses for the parties are:
|
If
to LICENSEE:
|
Aetrex
Worldwide, Inc.
|
000 Xxxxxx Xxxxxx
Xxxxxxx, XX 00000
Attention:
Xxxxxxx Xxxxxxxx, General Counsel
|
If
to LICENSOR:
|
Global
Trek Xploration
|
000 Xxxx
0xx Xxxxxx, Xxxxx Xxxxxx 0000
Xxx
Xxxxxxx, XX 00000
Attention:
Xxxxxxx Xxxxxxxx, President
Notice to
a party shall be deemed notice to each Affiliate of that party for all purposes,
and neither party shall be required to give any separate notice to any
Affiliate.
ARTICLE XIV - APPLICABLE LAW
AND JURISDICTION
14.01 All
matters affecting the interpretation validity and performance of this Agreement
shall be governed by the laws of the State of California without regard to its
conflict of law principles.
10
14.02 Any
dispute, claim, or controversy arising out of or relating to this Agreement or
the breach, termination, enforcement, interpretation, or validity thereof,
including the determination of the scope or applicability, shall be determined
exclusively by binding arbitration. The place of arbitration shall
Chicago, IL. The tribunal shall consist of a panel of three (3)
arbitrators. Each party shall bear the costs of the arbitration
equally, subject to the right of the arbitrators to reallocate costs and fees in
their award as provided in the applicable rules. Each party shall
select one (1) arbitrator and those arbitrators shall select the
third. At the option of the first to commence arbitration, the
arbitration shall be administered either by JAMS or AAA, pursuant to their
comprehensive arbitration rules and procedures in effect at that
time. The arbitration panel’s award shall be final and may be entered
in any court having jurisdiction. This clause shall not preclude
parties from seeking provisional remedies, including without limitation
preliminary injunctive relief, in aid of arbitration from a court of appropriate
jurisdiction. Each of the parties hereto agrees and expressly submits
to the exclusive jurisdiction and dispute resolution set forth herein and waives
all arguments of inconvenient forum. Service of process may be made
pursuant to the notice provision of this Agreement.
14.03 In
any action commenced to enforce this Agreement or as a result of a breach of
this Agreement, the prevailing party in such action may be entitled to recover
the cost of such action, including reasonable attorneys' fees, incurred as a
result of the action to enforce and/or remedy the breach of this Agreement, if
so awarded in the discretion of the arbitration panel.
ARTICLE XV — CONFIDENTIAL
INFORMATION
15.01 General. LICENSOR and LICENSEE
each agree that all information and data exchanged in carrying out this
Agreement, in any form be it written, oral, or electronic, which are received or
learned of by one party from the other party, and all information indicated to
be Confidential Information (collectively, "Confidential Information") shall be
received in strict confidence, used only for the express purposes set forth in
this Agreement, and not disclosed by the recipient party (except as required by
law or court order), its agents or employees without the prior written consent
of the other party, unless such Confidential Information (i) was in the public
domain at the time of disclosure, (ii) later became part of the public domain
through no act or omission of the recipient party, its employees, agents, or
permitted successors or assigns, (iii) was lawfully disclosed to the recipient
party by a third party having no obligation to the disclosing party, (iv) was
already known by the recipient party at the time of disclosure, (v) was
independently developed by the recipient without use of or access to such
Confidential Information or (vi) is required to be disclosed to a government
agency.
15.02 Protection of Confidential
Information. Each party's obligations of confidentiality,
non-use and nondisclosure set forth herein shall be fulfilled by using at least
the same degree of care with the other party's Confidential Information as it
uses to protect its own confidential information. This obligation shall continue
in full force and effect during the Term of this Agreement and thereafter for a
period of three (3) years.
ARTICLE XVI -
MISCELLANEOUS
16.01 If
any provision of this Agreement or the application of any provision of this
Agreement to any person or under any circumstance shall be held to be invalid,
unenforceable or in conflict with the law of any jurisdiction, the validity and
enforceability of the remaining provisions and the application thereof to any
another person or under any other circumstance shall not be affected by such
holding.
16.02 The
waiver by either party, whether express or implied, of any provision of this
Agreement, or of any breach or default by the other party, shall not be
construed to be a continuing waiver of such provision or of any succeeding
breach or default, or a waiver of any other provision of this
Agreement. No waiver of any of the provisions of this Agreement shall
be valid unless made in writing signed by the waiving party.
16.03 The
relationship of LICENSOR and LICENSEE established by this Agreement is that of
independent contractors. Nothing contained in this Agreement shall be
construed to constitute or imply a joint venture, partnership, or
principal-agent relationship between LICENSOR and LICENSEE. Neither party by
virtue of this Agreement shall have any right, power or authority to negotiate,
act, or create any obligation, express or implied, on behalf of the other party.
Neither LICENSEE, nor any Affiliate of LICENSEE, nor any of the employees of
LICENSEE or of any Affiliate of LICENSEE shall in any manner be deemed an
employee or an agent of LICENSOR for any purpose whatsoever.
11
16.04 The
provisions of this Agreement are solely for the benefit of LICENSOR and
LICENSEE, their authorized Affiliates, and their permitted successors and
assigns (as defined herein), and no such provision shall be construed or applied
to confer any rights or benefits on any other person.
16.05 This
Agreement may be simultaneously executed in several counterparts, each of which
shall be an original and all of which shall constitute but one and the same
instrument. Both parties hereto may sign the same counterpart or each party
hereto may sign a separate counterpart of this Agreement. Fax and
e-mail signatures shall be deemed binding as originals for all
purposes.
16.06 Article,
section and paragraph headings in this Agreement are for reference purposes only
and shall not in any way affect the construction or interpretation of any
provision of this Agreement. This Agreement has been negotiated and
drafted by the parties who have had the opportunity to consult with
counsel. Accordingly, it shall be fairly interpreted in accordance
with its terms and without any rules of construction relating to which party
drafted the Agreement being applied in favor or against either
party.
16.07 Each
party shall reasonably cooperate with the other to do, execute or arrange for
the doing and executing of, each necessary act, document, and thing to implement
this Agreement, including without limitation, executing and delivering and
recording any license required by applicable law, with terms consistent with
this Agreement.
16.08 Neither
party shall be held responsible for any delay or failure in performance
hereunder caused by strikes, embargoes, unexpected government requirements,
civil or military authorities, acts of God, earthquake, or by the public enemy
or other causes reasonably beyond such party's control and without such party's
fault or negligence. The party experiencing such delay shall promptly
notify the other party. If the force majeure event lasts more than
sixty (60) days, the other party shall have the right to terminate this
Agreement and the parties shall have no further liabilities to each
other.
16.09
Neither party shall solicit for employment or hire the other’s current or future
employees, either directly or indirectly, during the Term of this Agreement
without obtaining the other’s prior written approval.
16.10 The
following provisions shall survive any termination or expiration of this
Agreement: Section 4.05; Article V; Section 7.05; Article VIII; Article XI;
Article XIII; Article XIV; and Article XV.
IN
WITNESS WHEREOF, the parties have duly executed this Agreement as of the date
first written above.
|
LICENSOR
|
LICENSEE
|
|||
|
GLOBAL
TREK XPLORATION
|
AETREX
WORLDWIDE, INC.
|
|||
|
BY:
|
/s/ Xxxxxxx Xxxxxxxx
|
BY:
|
/s/ Xxxx
Xxxxxxxx
|
|
|
Print
Name:
|
Xxxxxxx
Xxxxxxxx
|
Print
Name:
|
Xxxx
Xxxxxxxx
|
|
|
Title:
|
CEO
|
Title:
|
President
|
|
12
SCHEDULE 4.01 –
CONSIDERATION AND ECONOMIC TERMS
1. LICENSEE
will use its best efforts and devote the time and resources reasonably necessary
to develop product molds, samples, and a functional end product as contemplated
in this Agreement to accommodate the Licensed Product. There will be
a non-binding goal of Seventy-Five Thousand Dollars ($75,000) of total
expenditures by Licensee toward same, and no consequences hereunder to LICENSEE
in the event such goal is not satisfied.
2. During
the Term of this Agreement, LICENSEE agrees to purchase Licensed Products
that it uses in its exclusive Permitted Market
products for use in exclusive Territories from LICENSOR only; provided
LICENSOR is capable of meeting LICENSEE’s demand for said Licensed
Products. In the event LICENSOR is for any reason incapable of
meeting LICENSEE’s demand for said Licensed Products, or the Licensed Product
devices are defective, LICENSEE shall have the right to source Licensed Product
devices from an alternative supplier, and LICENSOR shall provide reasonable
cooperation to LICENSEE in obtaining an alternative source of
supply. In order to keep the exclusivity, for both the Permitted Markets and the Territory,
LICENSEE must have purchased (and fully paid for) the following number of
units from LICENSOR during each year of the four year Term of this Agreement
(“Minimum Purchase Requirements”):
Year
1: Six-Thousand
(6,000) Devices
Year
2: Twenty-Five
Thousand (25,000) Devices
Year
3: Fifty-Thousand
(50,000) Devices
Year
4: Seventy-Five
Thousand (75,000) Devices
In
calculating the commencement date of the (fiscal) yearly period for the
purchase of the Minimum Purchase Requirements, the first year shall begin at the
time that the Term commences under Section 2.07,
and each subsequent year commences on subsequent anniversaries
thereof. In the event LICENSEE
fails to meet the Minimum Purchase Requirements, LICENSEE shall have a period of
ninety (90) days from the end of the year in issue to pay LICENSOR any
outstanding deficiency. If LICENSEE fails to meet the Minimum Purchase
Requirements, or renewal purchase requirements of Section 7.01b, and thereafter
satisfy any deficiency, LICENSOR’s sole and exclusive remedy shall be
to make any exclusive right of LICENSEE non-exclusive, and same shall
not otherwise be deemed a breach. Any change of LICENSEE’s exclusive
rights to non-exclusive shall not include LICENSEE’s rights to insoles unless
and until, for a reasonable time prior to such time, LICENSOR has available for
delivery to LICENSEE for sale to the public a Licensed Product capable of being
embedded in an insole. In the event of termination resulting from LICENSEE’s
breach of this Agreement or LICENSEE’s termination for any reason other than
LICENSOR’s breach of this Agreement. LICENSEE must purchase the
balance remaining, if any, of all open Licensed Product purchase orders pending
at the date of termination.
3. LICENSOR
shall supply the Licensed Products to LICENSEE at LICENSOR’s cost plus ten
percent (10%), which shall be the maximum price charged. "Cost" as
used in this paragraph refers to the actual price paid or payable by LICENSOR to
its source of supply for the Licensed Products. LICENSOR shall adjust
its price to LICENSEE to reflect the most favorable and lowest prices and terms
given by LICENSOR to any other licensee or purchaser of portable GPS tracking system devices or similar tracking
or location products manufactured by and/or for LICENSOR that utilizes the
Licensed Patent Rights, and/or Know How. Additionally,
LICENSOR shall use its best efforts to reduce purchase prices of Licensed
Products to LICENSEE on an ongoing basis. Purchase price reductions shall
include, without limitation, any and all of the following (i) material cost
reductions, (ii) labor cost reductions, and (iii) cost reductions resulting from
manufacturing process, and technology improvements. At least
semi-annual reviews shall be held between both parties to view progress of
same.
(a). Notwithstanding
anything in this Agreement to the contrary, if at any time during the Term of
this Agreement, LICENSEE reasonably believes that pricing of the Licensed
Products by LICENSOR is prohibiting cost recovery to LICENSEE as contemplated
and described in Paragraph 6 of this Schedule 4.01, the parties shall mutually
negotiate in good faith to reduce the price of same to an acceptable
level. In the event the parties are unable to mutually agree upon a
Licensed Product price during a negotiation period of not less than 90 days,
either party may terminate this Agreement without liability.
13
(b). LICENSEE
shall not be liable for any taxes or governmental charges or fees with respect
to orders other than those which LICENSOR is required by law to collect from
LICENSEE as a buyer. All such taxes and fees shall be stated separately on
LICENSOR’s invoice.
(c).
LICENSEE and LICENSOR shall mutually agree on lead time for Licensed Products.
Time is of the essence for delivery of same to LICENSEE.
(d). All
Licensed Products orders shall be subject to inspection and acceptance by
LICENSEE after delivery notwithstanding any payment for a reasonable time of not
less than ninety (90) days. Nonconforming goods shall be returned for credit or
refund.
(e).
LICENSOR warrants title to the Licensed Products and warrants further that all
goods and services furnished: (i) will be in full conformance with the
specifications, drawings, samples or other descriptions exchanged and agreed
upon by LICENSOR and LICENSEE; (ii) will perform as represented by LICENSOR
(even if such representations do not appear in this Agreement; (iii) will be
new, merchantable and fit for the use intended by this Agreement and LICENSEE;
(iv) will be free from defects in material, workmanship, manufacture and
design. Unless otherwise mutually agreed, the aforementioned
warranties shall be effective for a period of one (1) year from the date of
acceptance by LICENSEE. These warranties will run to LICENSEE, its
customers and users of the Permitted products containing the Licensed
Products.
4. During
the Term of this Agreement, LICENSOR shall pay LICENSEE the following
percentages of the gross fees collected from customers of LICENSOR that purchase
LICENSEE’s shoes with the Licensed Product embedded into the shoe (hereafter
referred to as “Customers”) as follows.
LICENSOR
will collect all of the following fees in subparagraphs (a) through (c) below
charged to Customers. However, from said collection, the following formulas
shall apply:
(a) LICENSOR’s
Basic Cellular Connection Charge:
(i).
First Year: During the first twelve months of each “Basic” (i.e.,
lowest priced) cellular connection plan, LICENSEE shall receive twelve and one
half percent (12.5%) of “Direct Customers”, and twenty-two and one half percent
(22.5%) of “Indirect Customers” gross fees collected from such Customers of
LICENSOR’s “Basic” cellular plan charges.
(ii).
Subsequent Years: After the first twelve months of each Direct and
Indirect Customers’ “Basic” cellular plan, LICENSEE shall receive twelve and
one-half percent (12.5%) of the gross fees collected from Direct and Indirect
Customers of LICENSOR’s “Basic” cellular plan
charges.
(b) LICENSOR’s
Advanced Cellular Connection Charge:
(i). First Year: During the first
twelve months of each “Advanced” (i.e., anything above Basic offering) cellular
connection plan, LICENSEE shall receive seventeen and one half percent (17.5%)
of “Direct Customers”, and twenty-seven and one half percent (27.5%) of
“Indirect Customers” gross fees collected from such Customers of LICENSOR’s
“Advanced” cellular plan charges.
(ii). Subsequent Years: After the first
twelve months of each Direct and Indirect Customers’ “Advanced” cellular plan,
LICENSEE shall receive seventeen and one-half percent (17.5%) of the gross fees
collected from Direct and Indirect Customers of LICENSOR’s “Advanced”
cellular plan charges.
For the purposes of this Section 4, “gross fees
collected” shall exclude taxes collected by LICENSOR and any other similar
governmental payments that are included in the amounts received by
LICENSOR from the Customers.
14
(c) LICENSOR’s
Activation Charges: LICENSEE shall receive one hundred percent (100%)
of the gross activation fees collected for both Basic and Advance cellular
connection activation.
(d) The
foregoing fees will be collected by LICENSOR and paid to LICENSEE as set forth
in Section 4.04.
(e) As
used herein, “Direct Customers” mean sales directly by the parties to this
Agreement to the consumer public without any reseller or other third-party
intermediary involvement. “Indirect Customers” mean sales to the
consumer involving any reseller, or other third party, including without
limitation distributor, retailer, or physician or medical provider
referral.
5. Pricing
for cellular activation and connection fees charged by LICENSOR to the consumer
public, as well as Basic, Advanced, and other cellular plan details, offerings,
discounts, promotions, and other premiums affecting the fees charged to the
consumer public, initially and whenever changed, shall be subject to
LICENSEE’s final approval. If LICENSEE does not approve such pricing or other
such offerings, or if such approval has been issued and LICENSEE can otherwise
reasonably show that LICENSOR’s pricing for same is priced higher than market
conditions warrant, or the offerings, discounts and/or other premiums negatively
impact or otherwise reduce the fees due LICENSEE hereunder, notwithstanding
anything in this Agreement to the contrary, LICENSEE shall not suffer any
consequences for failure to satisfy any Minimum Purchase
Requirements. Additionally, the parties will negotiate in good faith
to equitably reduce the Minimum Purchase Requirements obligations and adjust the
cellular plan details, offerings, discounts, promotions, and/or other premiums
to reflect the original intent and percentage recoveries specified
above.
6. Additionally,
the parties hereto acknowledge and agree that as a material inducement for
LICENSEE to enter into this Agreement, LICENSEE must be made whole with respect
to its costs for the device purchased from LICENSOR and costs of the Permitted
Market products in which the Licensed Products are embedded. Accordingly, it is
the mutual intent of the parties that the consideration calculations set forth
herein initially, primarily, and fully cover LICENSEE’s costs for the device
purchased from LICENSOR and costs of the Permitted Market products in which the
Licensed Products are embedded prior to LICENSOR having any entitlement to the
proceeds collected. Furthermore, the parties mutually agree that they
shall review the consideration and economic terms of this Schedule 4.01 on a
regular basis (no less than annually), and re-negotiate same in good faith to
assure that this mutual intent is equitably reflected, and any deficiencies
suffered by LICENSEE are corrected.
15
SCHEDULE 4.02 – LIST OF
PATENTS AND PATENT APPLICATIONS
U.S. Patent
Holdings
1. U.S.
Patent No. 6,788,200 title: "Footwear With GPS," filed October 21, 2002, issued
September 7, 2004, expires approximately October 21, 2022.
2. U.S.
Patent No. 7,474,206 title: "Footwear With Embedded Tracking Device And Method
Of Manufacture," filed February 6, 2006, issued January 9, 2009, expires
approximately July 23, 2027.
3. U.S.
Patent No. RE40,879 title: "Footwear With GPS," re-filed July 27, 2006, issued
August 25, 2009, expires approximately October 21, 2022
4. U.S.
Patent No. D595,484 title: "Footwear With Antenna," filed February 7, 2008,
issued July 7, 2009, expires approximately July 7, 2023
5. U.S.
Patent No. D599,102 title: "Footwear Sole With Antenna," filed February 7, 2008,
issued September 1, 2009, expires approximately September 1, 2023
6. U.S.
Patent Application, Serial No. 11/517,603 title: "Footwear With GPS," re-filed
September 7, 2006.
7. U.S.
Patent Application, Serial No. 11/506,175 title: "Footwear With GPS," re-filed
August 17, 2006.
8. U.S.
Patent Application, Serial No. 11/516,805 title: "Footwear With GPS," re-filed
September 6, 2006
9. U.S.
Patent Application, Serial No.11/402,195 title: "Buoyant Tracking Device And
Method Of Manufacture," filed April 11, 2006.
10. U.S.
Patent Application, Serial No.12/319,307 title: "Footwear With Embedded Tracking
Device and Method Of Manufacture," filed January 6, 2009.
11. U.S.
Patent Application, Serial No. 12/012,088 title: "System And Method For
Monitoring The Location Of A Tracking Device," filed January 31,
2008.
12. U.S.
Patent Application, (Serial No. is CONFIDENTIAL - Not Published by the USPTO)
title: "System And Method For Processing Location Data," filed February 11,
2009.
13. U.S.
Patent Application, (Serial No. is CONFIDENTIAL - Not Published by the USPTO)
title: "System And Method For Communication with a Tracking Device," filed
February 9, 2009.
14. U.S.
Patent Application, (Serial No. is CONFIDENTIAL - Not Published by the
USPTO) title: "Tracking System With Separated Tracking Device," filed
August 8, 2008.
Foreign Patent
Holdings
1. International
Patent Application WO 2007/0120586 title: "Buoyant Tracking Device And Method Of
Manufacture," filed April 11, 2006. Has not been moved to National
Stage at this time.
16
2. International
Patent Application WO 2007/0092381 title: "Footwear With Embedded Tracking
Device and Method of Manufacture," filed February 6, 2007.
3. International
Patent Application WO 2008/0094685 title: "System And Method For Monitoring The
Location Of A Tracking Device," filed January 31, 2008.
4. Canadian
Patent Application, Serial No. 2,641,469 title: "Footwear With Embedded Tracking
Device and Method of Manufacture," filed August 5, 2008.
5. Mexican
Patent Application, Serial No. MX/A/2008/010160 title: "Footwear With Embedded
Tracking Device and Method of Manufacture," filed August 6, 2008.
6. International
Patent Application WO 2008/0094685 title: "System And Method For Monitoring The
Location Of A Tracking Device," filed January 31, 2008. Has not been
moved to National Stage at this time.
7. International
Patent Application PCT/US2009/004530 title: "Tracking System with Separated
Tracking Device," filed August 7, 2009.
Reissued
Patents
|
|
1.
|
Patent
Number: US RE41,122E
|
Footwear
with GPS
|
Date
of Reissue: Feb. 16, 2010
|
|
|
2.
|
Patent
Number: US RE40,879E
|
Footwear
with GPS
|
Date
of Reissue: Aug. 25, 2009
|
|
|
3.
|
Patent
Number: USRE41,087E
|
Footwear
with GPS
|
Date
of Reissue: Jan. 26, 2010
|
|
|
4.
|
Patent
Number: USRE41,102E
|
Footwear
with GPS
|
Date
of Reissue: Feb. 9, 2010
|
17
