INTELLECTUAL PROPERTY MATTERS AGREEMENT BETWEEN THE PROCTER & GAMBLE COMPANY and THE FOLGERS COFFEE COMPANY dated as of November 6, 2008
Exhibit 10.21
BETWEEN
THE PROCTER & XXXXXX COMPANY
and
THE FOLGERS COFFEE COMPANY
dated as of
November 6, 2008
TABLE OF CONTENTS
| Page | ||||
I. DEFINITIONS |
1 | |||
II. LICENSE TO FOLGERS |
3 | |||
2.1 License Grant |
3 | |||
2.2 Technology Transfer/License |
3 | |||
2.3 Sublicensing |
3 | |||
2.4 Improvements |
3 | |||
2.5 After-Located Know How |
3 | |||
III. MAINTENANCE OF IP |
4 | |||
3.1 No Obligation |
4 | |||
IV. FOLGERS IP |
4 | |||
4.1 Obligation to Negotiate |
4 | |||
4.2 Maintenance of Folgers IP |
5 | |||
V. RESTRICTIONS |
5 | |||
5.1 Restrictions on Folgers’s Use and Disclosure of Know How |
5 | |||
5.2 Unauthorized Disclosure Standard |
5 | |||
5.3 Enforcement of Confidentiality Agreements; Cooperation |
6 | |||
5.4 Parent IP and SD Restrictive Covenant |
6 | |||
VI. ADDITIONAL OBLIGATIONS |
6 | |||
6.1 Responsibility for Affiliates and Sub-licensees |
6 | |||
6.2 Notification of Infringements |
6 | |||
6.3 Further Assurances |
6 | |||
VII. AUTHORITY; DISCLAIMER OF WARRANTIES; LIMITATION OF LIABILITY; REMEDIES; ENFORCEMENT |
7 | |||
7.1 Authority |
7 | |||
7.2 Disclaimer of Representations and Warranties |
7 | |||
7.3 Disclaimer of Certain Damages |
7 | |||
7.4 Enforcement |
8 | |||
VIII. TERM AND TERMINATION; EFFECT OF TERMINATION |
8 | |||
8.1 Term |
8 | |||
8.2 Termination for Breach |
8 | |||
8.3 Termination by Licensee |
8 |
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TABLE OF CONTENTS
(continued)
(continued)
| Page | ||||
8.4 Insolvency |
9 | |||
8.5 Change of Control |
9 | |||
8.6 Know How |
9 | |||
8.7 Termination; Survival |
10 | |||
IX. DISPUTE RESOLUTION |
10 | |||
9.1 Dispute Resolution |
10 | |||
9.2 Injunctive Relief |
10 | |||
X. MISCELLANEOUS |
11 | |||
10.1 No Other Rights Granted |
11 | |||
10.2 Entire Agreement |
11 | |||
10.3 Governing Law |
11 | |||
10.4 Notices |
11 | |||
10.5 Priority of Agreements |
11 | |||
10.6 Amendments and Waivers |
11 | |||
10.7 No Third-Party Beneficiaries |
12 | |||
10.8 Assignment |
12 | |||
10.9 Construction |
12 | |||
10.10 Severability |
13 | |||
10.11 Counterparts |
13 | |||
10.12 Relationship Between Parties |
13 | |||
10.13 Statement of Intent With Respect to Bankruptcy |
13 |
| Schedules | ||
Schedule A
|
Folgers IP | |
Schedule B
|
Parent IP | |
Schedule C
|
Parent Technology Assets |
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This Intellectual Property Matters Agreement (this “Agreement”) is executed as of
November 6, 2008, between The Procter & Xxxxxx Company, an Ohio corporation (“Parent”) and
The Folgers Coffee Company, a Delaware corporation (“Folgers”) (each a “Party,” and
collectively, the “Parties”).
1. Parent is engaged, directly and indirectly, in the Coffee Business;
2. Parent has determined that it would be appropriate and desirable to separate the Coffee
Business from Parent;
3. Parent has caused Folgers to be formed in order to facilitate such separation;
4. Parent and Folgers have entered into the Separation Agreement to effect the Folgers
Transfer and Distribution;
5. Pursuant to the Transaction Agreement, immediately following the Distribution, Folgers and
Merger Sub will merge and Folgers Common Stock will be converted into shares of common stock of RMT
Partner on the terms and subject to the conditions of the Transaction Agreement;
6. In connection with the Folgers Transfer, Parent has agreed to grant Folgers a license to
certain Intellectual Property used within the scope of the Coffee Business that is not being
transferred to Folgers pursuant to the Separation Agreement;
7. Folgers wishes to obtain from Parent the licenses set forth herein on the terms and
conditions set forth herein;
8. Parent and Folgers are entering into this Agreement as contemplated by the Separation
Agreement.
Accordingly, Parent and Folgers agree as follows:
I. DEFINITIONS
Capitalized terms used in this Agreement and not otherwise defined herein will have the
meanings ascribed to such terms in the Separation Agreement. For the purpose of this Agreement,
the following terms will have the meaning specified herein:
“After-Located Know How and Patents” has the meaning set forth in Section 2.5
of this Agreement.
“Agreement” has the meaning set forth in the preamble of this Agreement.
“Code” has the meaning set forth in Section 10.13 of this Agreement.
“Coffee Field” means sourcing, producing, marketing, selling, distributing, and
developing products related to coffee, tea and related products and services, in any package or
format, including roasted and grounded coffee beans, instant coffee, tea, caffeine, decaffeination
services, and coffee equipment service and maintenance, but in any event excluding (i)
manufacturing, producing, marketing, selling, distributing, and developing products related to
juice, water or non-fruit flavorings (other than flavorings to be consumed as part of a coffee- or
tea-based beverage), and (ii) all Restricted Activities.
“Disclosing Party” has the meaning set forth in Section 8.6 of this Agreement.
“Dispute” has the meaning set forth in Section 9.1 of this Agreement.
“Folgers” has the meaning set forth in the preamble of this Agreement.
“Folgers IP” means, solely to the extent licensable by Folgers or its Affiliates, all
Intellectual Property, except Trademarks, owned or controlled by Folgers or any Affiliate of
Folgers as of the Distribution Date, including the Intellectual Property listed on Schedule
A hereto.
“Improvements” means any improvements, additions, modifications, developments,
variations, refinements, enhancements, compilations, collective works or derivative works.
“Parent” has the meaning set forth in the preamble of this Agreement.
“Parent IP” means the Know How and Patents listed in Schedule B hereto.
“Parent Technology Assets” means the tangible Assets, computer software (in executable
or object code form only) and other Information listed in Schedule C hereto;
provided, however, that “Parent Technology Assets” does not include any
Intellectual Property or Intellectual Property rights in any of the foregoing.
“Party” and “Parties” have the meanings set forth in the preamble of this
Agreement.
“Receiving Party” has the meaning set forth in Section 8.6 of this Agreement.
“Restricted Activities” has the meaning given to such term in the SD Acquisition
Company Restrictive Covenant.
“Separation Agreement” means that certain Separation Agreement dated as of June 4,
2008, among Parent, Folgers and RMT Partner.
“SD Acquisition Company Restrictive Covenant” means that certain Restrictive Covenant,
by and between Parent and SD Acquisition Company, a Delaware corporation, dated August 1, 2004.
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“Third Party” means any Person other than a Party or their respective Affiliates.
II. LICENSE TO FOLGERS
2.1 License Grant. Parent, on behalf of itself and its Affiliates, hereby grants
Folgers and its Affiliates a non-exclusive, paid-up, irrevocable (unless otherwise earlier
terminated in accordance with Article VIII), worldwide license (with the right to grant
sublicenses solely to the extent set forth in the last sentence of this Section 2.3) in and
to the Parent IP to develop, make, have made, use, import, offer to distribute, distribute, offer
to sell and sell products and to provide services solely related to the Coffee Field.
2.2 Technology Transfer/License. To the extent not already in the possession of
Folgers, Parent will provide and/or deliver to Folgers as soon as commercially reasonable after the
Distribution Date, but in any event no later than sixty (60) days thereafter, the Parent Technology
Assets. Upon delivery of, and solely in connection with the use of the Parent Technology Assets in
conjunction with the Parent IP, Parent grants to Folgers and its Affiliates a non-exclusive,
paid-up, irrevocable (unless otherwise earlier terminated in accordance with Article VIII),
worldwide license (with the right to grant sublicenses solely to the extent set forth in the last
sentence of this Section 2.3) in and to any Intellectual Property (except Patents and Know
How) owned or controlled by Parent or its Affiliates as of the Business Transfer Time necessary as
of the Business Transfer Time to use the Parent Technology Assets in conjunction with the Parent IP
to develop, make, have made, use, import, offer to distribute, distribute, offer to sell and sell
products and to provide services solely related to the Coffee Field. For the avoidance of doubt,
the transfer of Parent Technology Assets shall not include the transfer of title to any
Intellectual Property.
2.3 Sublicensing. The licenses granted to Folgers and its Affiliates pursuant to
Section 2.1 and Section 2.2 shall be sublicensable solely (a) to vendors,
consultants, distributors, manufacturers or other contractors of Folgers or its Affiliates to
develop, make, have made, use, import, offer to distribute, distribute, offer to sell and sell
products and to provide services solely related to the Coffee Field, in each case solely for, to or
on behalf of Folgers or its Affiliates; and (b) to customers of Folgers and its Affiliates, to the
extent necessary for them to use the products or receive the services of Folgers or its Affiliates
in the Coffee Field.
2.4 Improvements. Folgers and its Affiliates shall have the right to make
Improvements to the Parent IP and Parent Technology Assets, provided, however,
that, as between the Parties, Parent will own and retain all right, title and interest in and to
the Parent IP and Parent Technology Assets. As between the Parties, (a) Folgers and its Affiliates
will own and retain all right, title and interest in and to any Improvements to any Parent IP or
Parent Technology Assets made solely by Folgers or its Affiliates or their sublicensees.
2.5 After-Located Know How. If, within two (2) years after the Business Transfer
Time, Folgers or an Affiliate of Folgers notifies Parent in writing of any Know How or Patents
(other than the Excluded IP Assets listed on Schedule 1.6(b)(ii) of the
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Separation Agreement) owned or controlled by Parent or its Affiliates that was necessary, as
of the Business Transfer Time, for the operation of the Coffee Business but was not licensed to
Folgers pursuant to this Agreement or transferred to Folgers pursuant to the Separation Agreement,
(the “After-Located Know How and Patents”), Parent agrees to grant Folgers, to the extent
possible, a license in and to such After-Located Know How and Patents, the scope, terms and
conditions of which shall be negotiated in good faith by the parties; provided,
however, that any such license shall, to the extent possible, be non-exclusive and shall be
limited to the Coffee Field. The parties agree that, notwithstanding anything herein or therein to
the contrary, the Excluded IP Assets listed on Schedule 1.6(b)(ii) of the Separation
Agreement shall in no event be licensed to Folgers pursuant to any agreement entered into pursuant
to this Section 2.5, even if such Intellectual Property may have been necessary for the
operation of the Coffee Business.
III. MAINTENANCE OF IP
3.1 No Obligation. Parent will have no obligation to Folgers or its Affiliates with
respect to maintaining the pendency, subsistence, validity, enforceability, or confidentiality of
any Intellectual Property and may discontinue prosecution or maintenance, abandon, or dedicate to
the public any of the Intellectual Property.
3.2 Maintenance of Parent IP – Patents. Notwithstanding Section 3.1, if Parent no
longer wishes to maintain any Patents included in Parent IP (including any circumstance in which
Parent no longer wishes to pay maintenance fees for such Patents) or to pursue continuations or
foreign counterparts to such Patents, unless Parent will sell, transfer or otherwise assign such
Patent to a Third Party, Parent will notify Folgers of its decision in writing at least forty-five
(45) days prior to the earliest filing deadline implicated. Folgers may then elect, by no later
than thirty (30) days after receiving such notice from Parent, to have Parent assign its rights in
such Patents to Folgers, at no cost other than any actual costs associated with such assignment, so
that Folgers, at its sole cost and expense, may continue maintenance and/or pursue continuations
and foreign counterparts. Any Patents assigned to Folgers pursuant to this Section 3.2 shall be
subject to a nonexclusive license back to Parent to make, have made, use, sell, including the right
to sublicense.
IV. FOLGERS IP
4.1 Obligation to Negotiate. Parent shall have the right, within two (2) years after
the Business Transfer Time, to request in writing that Folgers negotiate a license to Parent and
its Affiliates of any or all of the Folgers IP. Upon receipt of any such request, Folgers agrees
to negotiate with Parent in good faith to grant Parent and its Affiliates a license in and to such
Folgers IP, the scope, terms and conditions of which shall be negotiated by the parties;
provided, however, that any such license shall be non-exclusive and shall be
limited to any business other than the Coffee Business. If, within ninety (90) days of Parent’s
request, the Parties have not executed a license agreement regarding such Folgers IP, Folgers shall
have no further obligation to negotiate with Parent with respect to such Folgers IP.
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4.2 Maintenance of Folgers IP. In the event Folgers no longer wishes to maintain any Patents
included in the Folgers IP (including any circumstance in which it no longer wishes to pay
maintenance fees for such Patents) or to pursue continuations or foreign counterparts to such
Patents, unless Folgers will sell, transfer or otherwise assign such Patent to a Third Party,
Folgers will notify Parent of its decision in writing at least forty-five (45) days prior to the
earliest filing deadline implicated. Parent may then elect, by no later than thirty (30) days
after receiving such notice from Folgers, to have Folgers assign its rights in such Patents to
Parent, at no cost other than any actual costs associated with such assignment, so that Parent, at
its sole cost and expense, may continue maintenance and/or pursue continuations and foreign
counterparts. Any Patents assigned pursuant to this Section 4.2 shall become Parent IP subject to
all terms and conditions of this Agreement, including the license to Folgers and its Affiliates set
forth in Section 2.1.
V. RESTRICTIONS
5.1 Restrictions on Folgers’s Use and Disclosure of Know How. Folgers, on behalf of
itself and its Affiliates, agrees: (i) to keep in confidence and trust all of the Know How licensed
to or otherwise received by Folgers or its Affiliates pursuant to this Agreement; (ii) not to use
any such Know How for any purpose other than as expressly permitted under the terms of this
Agreement or any other agreement between the Parties pertaining to the use of such Know How; (iii)
not to do or cause to be done any act or thing contesting or, in any way, impairing or tending to
impair such Know How; (iv) to take commercially reasonable steps to prevent the unauthorized
disclosure or use of such Know How and to prevent such Know-How from entering the public domain or
the possession of unauthorized Persons; (v) to disclose such Know How only to those of the officers
and employees of Folgers or its Affiliates whose duties require access to such Know How in order to
carry out the purposes of this Agreement and who are subject to terms of employment that prohibits
the unauthorized disclosure of such Know How or have otherwise executed a confidentiality agreement
that prohibits the unauthorized disclosure of such Know How; and (vi) not to disclose any such Know
How to any consultant, independent contractor, vendor, distributor or other Third Party without
first entering into a confidentiality agreement with said Third Party that (1) prohibits use of
such Know How other than on behalf of Folgers, (2) prohibits unauthorized disclosure of such Know
How, (3) contains obligations requiring such Third Party to protect such Know How that are at least
as stringent as Folgers’s obligations of set forth herein, and (4) solely with respect to Third
Party competitors of Parent, without the prior written consent of Parent.
5.2 Unauthorized Disclosure Standard. Without limiting the foregoing Section 5.1,
Folgers and its Affiliates will use at least the same degree of care that Folgers uses to prevent
the disclosure of its own Know How of like importance to prevent the disclosure of Know How
licensed or otherwise disclosed to it by Parent and its Affiliates under this Agreement.
Notwithstanding any other restriction in this Article V, the Parties agree that if Folgers follows
the same practices with respect to any item of Know How as were followed by Parent as of the
Distribution Date, both in policy and in practice, Folgers will be deemed to have used commercially
reasonable steps to
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prevent unauthorized disclosure, with respect to such item of Know-How. The restrictions of
this Article V will not apply to Folgers (i) to either Party to the extent that (a) any item of
Know-How becomes known to the public or the trade without any breach by such Party or its agents;
or (b) Parent waives such restriction in writing; (ii) to Folgers to the extent that any item of
Know-How: (a) was already known to Folgers before its disclosure by Parent; (b) is independently
developed by Folgers; or (c) is disclosed to Folgers by a Third Party that is not under any
obligation of confidence to Parent. The fact that any or all individual elements of such Know How
are publicly known, disclosed to Folgers by a Third Party, or previously known by Folgers, will not
be deemed to mean that the particular arrangement of combination of the Know How is not protected
under this paragraph, and will not affect the obligations of Folgers hereunder with respect to such
Know How.
5.3 Enforcement of Confidentiality Agreements; Cooperation. Folgers hereby
acknowledges and agrees that it, on behalf of itself and its Affiliates, will diligently monitor
compliance with and enforce (including by instituting any necessary Action) the terms of all
confidentiality agreements required pursuant to this Article V. Moreover, Folgers will,
and will cause its Affiliates to, provide all reasonable cooperation with and assistance to Parent
and its Affiliates should Parent or its Affiliates seek to enforce (by Action or otherwise) the
terms and conditions of any confidentiality agreement pertaining, as applicable, to any of Parent’s
or its Affiliates’ Know How or the Parent Confidential Information.
5.4 Parent IP and SD Restrictive Covenant. Parent and Folgers will not, and will
cause their respective Affiliates not to, utilize any of the Parent IP to engage or participate,
directly or indirectly, in the Restricted Activities to the extent required under the SD
Acquisition Company Restrictive Covenant as if such Persons were Affiliates of Parent subsequent to
the Distribution Date.
VI. ADDITIONAL OBLIGATIONS
6.1 Responsibility for Affiliates and Sub-licensees. Notwithstanding anything herein
to the contrary, each Party hereby acknowledges and agrees that it is responsible for all of its
Affiliates’ and, as applicable, sub-licensees’ compliance with the terms and conditions of the
licenses granted pursuant to this Agreement and such Party is and will be liable to the other Party
for any and all actions or omissions by any such Affiliate or, as applicable, sub-licensee that
would constitute a breach of this Agreement if such actions or omissions were taken by such Party.
6.2 Notification of Infringements. If Folgers or any of its Affiliates becomes aware
of any infringement or misappropriation by a Third Party of any Parent IP and/or Parent Technology
Assets, Folgers will promptly notify Parent in writing and will provide Parent with all information
supporting or tending to support such belief.
6.3 Further Assurances. Folgers and Parent hereby agree to use commercially
reasonable efforts to take or cause to be taken such further actions, to execute, acknowledge,
deliver and file or cause to be executed, acknowledged,
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delivered and filed such further documents and instruments, and to use commercially reasonable
efforts to obtain such consents, as may be necessary or as may be reasonably requested to fully
effectuate the purposes, terms and conditions of this Agreement, whether at or after the Business
Transfer Time at the expense of the requesting Party. Folgers and Parent agree, without demanding
any further consideration, to execute (and to cause its Affiliates to execute) all documents
reasonably requested by the other party or its Affiliates to effect recordation of the license
relationship between the Parties created by this Agreement.
VII. AUTHORITY; DISCLAIMER OF WARRANTIES; LIMITATION OF LIABILITY; REMEDIES; ENFORCEMENT
7.1 Authority. Each Party represents and warrants to the other that: (i) it has all
requisite legal and corporate power to execute and deliver this Agreement; (ii) it has taken all
corporate action necessary for the authorization, execution and delivery of this Agreement; and
(iii) this Agreement is a legal, valid and binding obligation of it, enforceable against it in
accordance with the terms of this Agreement.
7.2 Disclaimer of Representations and Warranties. EACH PARTY AGREES AND ACKNOWLEDGES
THAT, EXCEPT AS EXPRESSLY SET FORTH HEREIN, IN THE SEPARATION AGREEMENT OR IN THE TRANSACTION
AGREEMENT, NO PARTY MAKES ANY REPRESENTATION OR WARRANTY OF ANY KIND WHATSOEVER, EXPRESS, IMPLIED
OR STATUTORY, AND HEREBY EXPRESSLY DISCLAIMS ALL REPRESENTATIONS AND WARRANTIES, EXPRESS, IMPLIED
OR STATUTORY, INCLUDING ANY WARRANTY THAT SUCH PARTY AS THE RIGHT TO GRANT THE LICENSES AND RIGHTS
GRANTED HEREIN, THE IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
NON-INFRINGEMENT, VALIDTY OF IP, ENFORCEABILITY OF IP, OR THE LIKE, OR ARISING FROM COURSE OF
PERFORMANCE, COURSE OF DEALING OR FROM TRADE PRACTICE.
7.3 Disclaimer of Certain Damages. EXCEPT FOR (i) INSTANCES OF GROSS NEGLIGENCE OR
WILLFUL MISCONDUCT, (ii) BREACHES OF ARTICLES II OR V, AND (iii) INFRINGEMENT OF THE OTHER
PARTY’S INTELLECTUAL PROPERTY, AND TO THE MAXIMUM EXTENT PERMITTED BY LAW, NO PARTY OR ANY OF ITS
AFFILIATES OR ITS OR THEIR RESPECTIVE EQUITY OWNERS, DIRECTORS, OFFICERS, EMPLOYEES, OR AGENTS WILL
BE LIABLE TO ANOTHER PARTY OR ANY THIRD PERSON UNDER THIS AGREEMENT FOR ANY INDIRECT, INCIDENTAL,
CONSEQUENTIAL, SPECIAL, RELIANCE OR PUNITIVE DAMAGES OR LOST OR IMPUTED PROFITS OR ROYALTIES, LOST
DATA OR COST OF PROCUREMENT OF SUBSTITUTE GOODS OR SERVICES, WHETHER LIABILITY IS ASSERTED IN
CONTRACT, TORT (INCLUDING NEGLIGENCE AND STRICT PRODUCT LIABILITY) INDEMNITY OR CONTRIBUTION, AND
IRRESPECTIVE OF WHETHER THAT PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF ANY SUCH DAMAGE, LOSS, OR
COST.
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7.4 Enforcement. Parent has the right, but not the obligation, to institute any
action as it deems appropriate to terminate the infringement or misappropriation of any Parent IP
or Parent Technology Assets through negotiation, litigation and/or alternative dispute resolution
means, at its sole discretion and at its sole cost. The right to institute any such action is
exclusive to Parent. Parent has the right to select and to control counsel in any action initiated
by Parent. At the request of Parent, Folgers and its Affiliates will lend their names to any such
action or join as a party in such action, and provide such assistance as may be reasonably
necessary to conduct such action. Parent will reimburse Folgers for Folgers’s reasonable
out-of-pocket costs for rendering such assistance. Parent has the right to settle any such action
at its sole discretion, and any recovery of damages will be retained by Parent.
VIII. TERM AND TERMINATION; EFFECT OF TERMINATION
8.1 Term. The term of the license granted to Folgers and its Affiliates pursuant to
Article II with respect to each item of Parent IP begins on the Distribution Date and
continues in perpetuity unless or until (i) the underlying Intellectual Property expires, is
abandoned, or is otherwise found invalid or unenforceable (with no right of appeal) by a court of
competent jurisdiction, or (ii) such license is otherwise earlier terminated in accordance with
this Article VIII. This Agreement will continue in perpetuity until such time as the
license to each item of Parent IP has expired under clause (i) or (ii) above.
8.2 Termination for Breach. Either Party may terminate the license granted under this
Agreement as to any item of Parent IP or any Parent Technology Asset, as the case may be, in the
event that the other Party or any of its Affiliates is in default or breach of any provision of
this Agreement and such default materially affects the scope of such Parent IP or the use of such
Parent Technology Asset, or otherwise materially jeopardizes the subsistence, validity or
enforceability of such Intellectual Property. In connection with any such termination, the
terminating Party will provide written notice to the breaching Party specifying the particular
Parent IP and/or Parent Technology Asset(s) at issue and the nature of default or breach.
Termination will be effective thirty (30) days after such notice unless the breaching Party or its
Affiliate cures the default or breach within such thirty (30) day period. Upon termination
pursuant to this Section 8.2, the Parties agree to work together in good faith to tailor
the scope of the termination to only such Parent IP or Parent Technology Asset or portion thereof
that is materially affected or jeopardized by the uncured default or breach. Notwithstanding
anything in this Agreement to the contrary, upon any termination pursuant to this Section
8.2, all other rights and licenses granted under this Agreement, whether to the breaching
Party, the terminating Party or their Affiliates, will survive and remain in full force and
effect.
8.3 Termination by Licensee. Folgers may terminate any license granted hereunder as
to any particular Intellectual Property or Parent Technology Asset as to which it is licensee on
thirty (30) days written notice to Parent. Notwithstanding anything in this Agreement to the
contrary, upon any termination pursuant to this Section 8.3, all other rights and licenses
granted under this Agreement, whether to the
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terminating Party, the non-terminating Party or their Affiliates, will survive and remain in
full force and effect.
8.4 Insolvency. Either Party may, without prejudice to any other remedies available
to it under this Agreement or at law or in equity, terminate this Agreement upon the filing or
institution of bankruptcy, reorganization, liquidation or receivership proceedings, or upon an
assignment of a substantial portion of the assets for the benefit of creditors by the other Party;
provided, however, that (i) in the case of any involuntary bankruptcy,
reorganization, liquidation, receivership or assignment proceeding such right to terminate will
only become effective if the Party consents to the involuntary proceeding or such proceeding is not
dismissed within sixty (60) days after the filing thereof, and (ii) if this Agreement is terminated
pursuant to this Section 8.4, the licenses and rights granted by the non-terminating Party
shall survive the termination of the balance of the term of this Agreement.
8.5 Change of Control. If, subsequent to the Effective Time, there is a change of
Control of Folgers where (i) Control of Folgers is acquired, directly or indirectly (including by
way of acquisition of Control of RMT Partner), in a single transaction or series of related
transactions by any competitor of Parent or its Affiliates, (ii) all or substantially all of the
assets of Folgers are acquired by any competitor of Parent or its Affiliates, or (iii) Folgers is
merged with or into any competitor of Parent or its Affiliates to form a new entity, Folgers and
its successor-in-interest will take all necessary steps, to ensure that no Intellectual Property
licensed hereunder is utilized by, or disclosed or made available to, any other unit, division or
subsidiary of such competitor that competes with Parent in connection with any goods or services
outside of the Coffee Field. For clarity, nothing in this Section 8.5 shall be construed
as (i) altering or obviating in any way any of Folgers’s and its successor-in-interest’s
obligations under Article V, or (ii) conferring on Folgers or its successor-in-interest any rights
to make products or provide services other than solely in the Coffee Field. Upon reasonable
notice, Parent shall have the right to conduct inspections of and/or interview, and Folgers and its
successor-in-interest shall provide Parent with reasonable access to, Folgers’s and its
successor-in-interest’s records, facilities, employees and computer systems during Folgers’s and
its successor-in-interest’s normal working hours to verify compliance with this Section
8.5.
8.6 Know How. Upon expiration or termination of this Agreement, each Party (the
“Receiving Party”) will, at the option of the other Party (the “Disclosing Party”), destroy
(and provide a sworn affidavit confirming such destruction within thirty (30) days after the
expiration or termination date) or return to the Disclosing Party all records, notes and other
documents and materials that contain or embody any of the Disclosing Party’s Know How (including,
to the extent applicable, all Parent Technology Assets) in the possession of the Receiving Party or
its Affiliates pursuant to or in connection with this Agreement. Upon expiration or termination of
any of the licenses granted hereunder with respect to any particular Know How, the Receiving Party
will, at the option of the Disclosing Party, destroy (and provide a sworn affidavit confirming such
destruction within thirty (30) days after the applicable expiration or termination date) or return
to the Disclosing Party all records, notes and other documents and materials that
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contain or embody that particular Know How of the Disclosing Party including, to the extent
applicable, Parent Technology Assets) in the possession of the Receiving Party or its Affiliates
pursuant to or in connection with this Agreement. Upon reasonable advance written notice during
reasonable business hours and in a manner so as to minimize any unreasonable disruption to the
business of the Receiving Party, the Disclosing Party shall have the right to conduct inspections
of, and the Receiving Party shall provide the Disclosing Party with reasonable access to, the
Receiving Party’s records and computer systems during the Receiving Party’s normal working hours to
verify the Receiving Party’s compliance with this Section 8.6.
8.7 Termination; Survival. Upon termination of this Agreement, all rights and
obligations of the Parties hereunder will terminate, except that, in addition to any other
provisions of this Agreement that by their terms continue after the expiration of this Agreement,
the final sentence of Section 2.4, Section 4.2, and the provisions of Articles
III and V — X will survive the termination of this Agreement.
IX. DISPUTE RESOLUTION
9.1 Dispute Resolution. Subject to Section 9.2, if a dispute, controversy or
claim (“Dispute”) arises between the Parties relating to the interpretation or performance
of this Agreement, or the grounds for the termination hereof, the Dispute will be settled in
accordance with the dispute resolution provisions (Article VI) of the Separation Agreement.
9.2 Injunctive Relief. Each Party acknowledges and agrees that monetary damages alone
are insufficient remedies in the event of a breach of this Agreement by the other Party or its
Affiliates, and that such breach may result in irreparable injury to the non-breaching Party, for
which damages at law will be inadequate. Therefore, Section 9.1 notwithstanding, each Party
agrees that, in the event of any breach of the provisions of this Agreement by such Party or its
Affiliates, the other Party shall, in any appropriate forum, have the right to immediately pursue
and obtain all preliminary equitable relief, including, without limitation, any temporary
restraining order and/or preliminary injunctive relief. If a Party (the “Pursuing Party”)
elects to pursue any such equitable remedies, the other Party (the “Challenging Party”)
shall not oppose or challenge the granting of such relief on any basis other than (i) whether the
Pursing Party’s rights or Intellectual property have been violated, or (ii) whether the Challenging
Party has violated the terms of this Agreement. Moreover, the Party pursuing any such equitable
remedies shall not be required to post any bond therefor, or if required by law or by a court to
post such a bond, each Party consents to the posting of a bond in the lowest amount permitted by
law. Such remedies shall not be deemed to be the exclusive remedies for breach of this Agreement,
but shall be in addition to and cumulative of all other remedies the Parties may have at law or in
equity, including, without limitation, any permanent injunctive relief, specific performance or
damages to which the non-breaching Party may be entitled. If either Party violates any of its
obligations under this Agreement, the violating Party shall not oppose the granting of equitable
relief on the ground that an adequate remedy exists at law.
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X. MISCELLANEOUS
10.1 No Other Rights Granted. Except as expressly set forth in this Agreement, no
Party grants, by implication, estoppel or otherwise, any license or other rights in any of its or
its Affiliates’ Intellectual Property to the other Party or its Affiliates. Subject to the
licenses expressly granted in this Agreement, all right, title and interest in and to the Parent IP
will remain with Parent and its Affiliates. Subject to the licenses expressly granted in this
Agreement, all right, title and interest in and to the Folgers IP will remain with Folgers and its
Affiliates.
10.2 Entire Agreement. This Agreement, the Separation Agreement, the Transaction
Agreement and each Ancillary Agreement (as defined in the Transaction Agreement), including any
related annexes, schedules and exhibits, as well as any other agreements and documents referred to
in this Agreement, the Separation Agreement, the Transaction Agreement and each Ancillary
Agreement, will together constitute the entire agreement between the Parties with respect to the
subject matter hereof and thereof and will supersede all prior negotiations, agreements and
understandings of the Parties of any nature, whether oral or written, with respect to such subject
matter. Folgers shall ensure that any transferee of any element of the Folgers IP specifically
agrees in writing to be bound by the terms of this Agreement, including, without limitation, the
provision of Article IV.
10.3 Governing Law. The validity, interpretation and enforcement of this Agreement
will be governed by the Laws of the State of Ohio, other than the choice of Law provisions thereof.
10.4 Notices. Any notice, demand, claim or other communication under this Agreement
will be in writing and will be deemed to have been given (a) on delivery if delivered personally;
(b) on the date on which delivery thereof is guaranteed by the carrier if delivered by a national
courier guaranteeing delivery within a fixed number of days of sending; or (c) on the date of
transmission thereof if delivery is confirmed, but, in each case, only if addressed to the Parties
as provided in Section 6.4 of the Separation Agreement.
10.5 Priority of Agreements. If there is a conflict between any provision of this
Agreement and a provision in the Separation Agreement, the provision of the Separation Agreement
will control.
10.6 Amendments and Waivers. (a) This Agreement may be amended and any provision of
this Agreement may be waived, provided that any such amendment or waiver shall be binding upon a
Party only if such amendment or waiver is set forth in a writing executed by such Party. No course
of dealing between or among any Persons having any interest in this Agreement shall be deemed
effective to modify, amend or discharge any part of this Agreement or any rights or obligations of
any Party hereto under or by reason of this Agreement.
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(b) No delay or failure in exercising any right, power or remedy hereunder shall affect or
operate as a waiver thereof; nor shall any single or partial exercise thereof or any abandonment or
discontinuance of steps to enforce such a right, power or remedy preclude any further exercise
thereof or of any other right, power or remedy. The rights and remedies hereunder are cumulative
and not exclusive of any rights or remedies that any Party hereto would otherwise have. Any
waiver, permit, consent or approval of any kind or character of any breach or default under this
Agreement or any such waiver of any provision of this Agreement must satisfy the conditions set
forth in Section 10.6(a) and shall be effective only to the extent in such writing
specifically set forth.
10.7 No Third-Party Beneficiaries. This Agreement is solely for the benefit of the
Parties hereto and, solely to the extent any rights are granted to such Persons hereunder, their
Affiliates, and does not confer on Third Parties any remedy, claim, reimbursement, claim of action
or other right in addition to those existing without reference to this Agreement.
10.8 Assignment. The licenses granted hereunder to the Parties and their Affiliates
are personal to such Parties and Affiliates. No Party will assign its rights or delegate its
duties under this Agreement without the written consent of the other Party, except that (i) either
Party may assign its rights or delegate its duties under this Agreement to a Subsidiary of such
Party, provided that the Subsidiary or entity agrees in writing to be bound by the terms and
conditions contained in this Agreement and provided further that the assignment or delegation will
not relieve any Party of its indemnification obligations or obligations in the event of a breach of
this Agreement or (ii) Folgers may assign its rights under this Agreement to any entity acquiring
all of the Coffee Business, provided that RMT Partner guarantees the obligations of such entity
under this Agreement. Except as provided in the preceding sentence, any attempted assignment or
delegation will be void. Upon the Effective Time of the Merger, Folgers, as the surviving
corporation in the Merger, will continue to have all of the rights, and be subject to all of the
obligations, ascribed to it under this Agreement.
10.9 Construction. The descriptive headings herein are inserted for convenience of
reference only and are not intended to be a substantive part of or to affect the meaning or
interpretation of this Agreement. Whenever required by the context, any pronoun used in this
Agreement will include the corresponding masculine, feminine or neuter forms, and the singular
forms of nouns, pronouns, and verbs will include the plural and vice versa. Reference to any
agreement, document, or instrument means such agreement, document, or instrument as amended or
otherwise modified from time to time in accordance with the terms thereof, and if applicable
hereof. The use of the words “include” or “including” in this Agreement will be by way of example
rather than by limitation. The use of the words “or,” “either” or “any” will not be exclusive.
The Parties have participated jointly in the negotiation and drafting of this Agreement and the
Parties acknowledge that (a) Parent and Folgers have been represented by Xxxxx Day in connection
therewith and (b) RMT Partner has been represented by Xxxxxx, Halter & Xxxxxxxx LLP in connection
therewith. In the event an ambiguity or question of intent or interpretation arises, this
Agreement will be construed
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as if drafted jointly by the Parties hereto, and no presumption or burden of proof will arise
favoring or disfavoring any Party by virtue of the authorship of any of the provisions of this
Agreement. Except as otherwise expressly provided elsewhere in this Agreement, the Separation
Agreement, the Transaction Agreement or any Other RMT Agreement (as defined in the Transaction
Agreement), any provision herein which contemplates the agreement, approval or consent of, or
exercise of any right of, a Party, such Party may give or withhold such agreement, approval or
consent, or exercise such right, in its sole and absolute discretion, the Parties hereto hereby
expressly disclaiming any implied duty of good faith and fair dealing or similar concept.
10.10 Severability. The Parties agree that (a) the provisions of this Agreement shall
be severable in the event that for any reason whatsoever any of the provisions hereof are invalid,
void or otherwise unenforceable, (b) any such invalid, void or otherwise unenforceable provisions
shall be replaced by other provisions that are as similar as possible in terms to such invalid,
void or otherwise unenforceable provisions but are valid and enforceable, and (c) the remaining
provisions shall remain valid and enforceable to the fullest extent permitted by applicable Law.
10.11 Counterparts. This Agreement may be executed in multiple counterparts (any one
of which need not contain the signatures of more than one Party), each of which will be deemed to
be an original but all of which taken together will constitute one and the same agreement. This
Agreement, and any amendments hereto, to the extent signed and delivered by means of a facsimile
machine or other electronic transmission, will be treated in all manner and respects as an original
agreement and will be considered to have the same binding legal effects as if it were the original
signed version thereof delivered in person. At the request of any Party, the other Party will
re-execute original forms thereof and deliver them to the requesting Party. No Party will raise
the use of a facsimile machine or other electronic means to deliver a signature or the fact that
any signature was transmitted or communicated through the use of facsimile machine or other
electronic means as a defense to the formation of a Contract and each such Party forever waives any
such defense.
10.12 Relationship Between Parties. The Parties are and will remain at all times
independent contractors, and no agency, employment, partnership or joint venture relationship
exists between them. Neither Party hereto shall have, or shall represent that it has, any power,
right or authority to bind the other Party hereto to any obligation or liability, or to assume or
create any obligation or liability on behalf of the other Party.
10.13 Statement of Intent With Respect to Bankruptcy. The Parties acknowledge and
agree that all rights and licenses granted under this Agreement with respect to the Parent IP are,
and shall otherwise be deemed to be, for purposes of Section 365(n) of the United States Bankruptcy
Code, 111 U.S.C. § 101, et seq. (the “Code”), executory contracts and licenses of rights to
“intellectual property” as defined in the Code. The Parties intend that Folgers and its
Affiliates, as licensees of intellectual property, shall retain and may fully exercise all rights
and elections under the Code. The Parties further acknowledge and agree that, in the event of the
commencement of bankruptcy proceedings by or against a Parent under the Code, Folgers and its
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Affiliates and, as applicable, sublicensees, shall be entitled, at Folgers’s option, to (i)
retain all of their rights under this Agreement, including any licenses granted hereunder, pursuant
to Section 365(n) of the Code, or (ii) receive a complete duplicate of, or complete access to, all
subject matter licensed hereunder constituting “intellectual property” under Section 101 of the
Code and all embodiments thereof.
[SIGNATURE PAGE FOLLOWS]
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IN WITNESS WHEREOF, each of the Parties has caused this Intellectual Property Matters
Agreement to be executed on its behalf by its officers hereunto duly authorized on the day and year
first above written.
| THE PROCTER & XXXXXX COMPANY |
||||
| By: | /s/ Xxx X. Xxxxxxx | |||
| Name: | Xxx X. Xxxxxxx | |||
| Title: | Vice President & Treasurer | |||
| THE FOLGERS COFFEE COMPANY |
||||
| By: | /s/ Xxx X. Xxxxxxx | |||
| Name: | Xxx X. Xxxxxxx | |||
| Title: | Vice President & Treasurer | |||
SCHEDULE A
Folgers
IP
[Omitted]
SCHEDULE
B
Parent IP Assets
[Omitted]
·
SCHEDULE C
Parent
Technology Assets
[Omitted]
