Exhibit 10.8
Proprietary Information Agreement (H.G. "Xxxxx" Xxxxxxxxx)
PROPRIETARY INFORMATION AGREEMENT
THIS AGREEMENT ( the "Agreement") is made as of the 21st day of May,
1999, by and between AVALON-XXXXXX COMPANIES, INC., a corporation created under
the laws of the State of Delaware (hereinafter referred to as "Company"), and
H.G. "XXXXX" XXXXXXXXX (hereinafter referred to as "Independent Contractor").
WHEREAS, pursuant to a separate Technology Purchase Agreement of even
date herewith, the Company acquired certain "Technology" (as defined therein)
from Independent Contractor and Independent Contractor is to continue
development thereof for the Company, such developments, including all design and
engineering related thereto by Independent Contractor being referred to herein
as the "Work");
WHEREAS, Independent Contractor will require the use of certain
intellectual property of the Company in order to perform the Work;
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties hereto, intending
legally to be bound, hereby covenant, promise and agree as follows:
1. DEFINITIONS. As used herein, the following terms shall have the
following meanings:
(a) "Background Rights" shall mean all patents, patent
applications, copyrights, trade secrets or other proprietary rights pertaining
to the Technology owned by Independent Contractor or under which Independent
Contractor has the right to grant licenses, other than Patents and Know-How,
which are included in, necessary, useful or utilizable in or with the Work,
regardless of when created, conceived or first reduced to practice.
(b) "Confidential Information" shall mean any and all data and
information relating to Company's business (a) of which Independent Contractor
becomes aware as a consequence of or through negotiations with or engagement by
the Company or any arrangement or relationship with Company; (b) which has value
to Company and is not generally know to its competitors; and (c) which is
treated by Company as confidential (whether or not such material or information
is marked "confidential"). Confidential Information may include, but is not
limited to, Proprietary Information and information relating to the financial
affairs, products, processes, customers, employees, employees' compensation,
research, development, inventions, copyrights, manufacturing, purchasing,
accounting, engineering, distribution systems and marketing of Company.
(c) "Know-How" shall mean all documentation, methods, processes,
and information produced or developed by or for Independent Contractor as a
result of or related to this Agreement or included in the Work, and all
proprietary rights in or based on the foregoing or any portion thereof.
(d) "Patents" shall mean all inventions, improvements and
enhancements created, conceived or reduced to practice by or for Independent
Contractor as a result of or related to this Agreement or the Work, and all
patents and patent applications based on the foregoing or any portion thereof.
(e) "Proprietary Information" shall mean all the following
materials and information (whether or not reduced to writing and whether or not
patentable or protectible by copyright) which relate to the Company business and
which Independent Contractor receives, has access to, conceives or develops, in
whole or in part, as a direct or indirect result of negotiations with or
engagement by Company, or through the use of any of Company's facilities or
resources:
(i) Production process, marketing techniques, mailing
lists, purchasing information price lists, pricing policies,
quoting procedures, financial information, customer and prospect
names and requirements, customer data, customer site information
and other materials and information relating to the manner in which
Company does business;
(ii) Inventions, discoveries, concepts and ideas, whether or
not patentable or protectible by copyright, including, without
limitation, the nature and results of research and development
activities, technical information on product, or program
performance and reliability, processes, formulas, techniques,
computer software programs or other computer-related equipment or
technology, source codes, object codes, designs, drawings and
specifications;
(iii) Any other materials or information related to the
business or activities of Company which are not generally known to
others engaged in similar business or activities; and
(iv) All ideas which are derived from or relate to
Independent Contractor's access to or knowledge of any of the above
enumerated materials and information.
Failure to xxxx any of the Proprietary Information as confidential shall not
affect its status as part of the Proprietary Information under the terms of this
Agreement. Proprietary Information may, but does not necessarily, also
constitute Confidential Information or Trade Secrets under this Agreement.
(f) "Trade Secrets" shall mean the whole or any portion of any
scientific or technical information, design, process, procedure, formula or
improvement which is secret and of value to Company, and may include, but is not
limited to, Proprietary Information.
2. DISCLOSURE OF INFORMATION. Independent Contractor covenants and
agrees that Independent Contractor shall not, except with the prior written
consent of Company, directly or indirectly, use, divulge, reveal, report,
publish, transfer or disclose, for any purpose whatsoever, any Confidential
Information or Trade Secrets.
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3. OWNERSHIP of PROPRIETARY INFORMATION. Independent Contractor hereby
assigns to Company all of Independent Contractor's right, title and interest in
the Proprietary Information. If any Proprietary Information is deemed in any way
to fall within the definition of "work made for hire", as such term is defined
in 17 U.S.C. Section 101, such works shall be considered "works made for hire",
the copyright of which shall be owned solely, completely and exclusively by
Company. If any of the Proprietary Information is considered to be works not
included in the categories of works covered by the "work made for hire"
definition contained in 17 U.S.C. Section 101, such work shall be owned,
assigned or transferred completely and exclusively to Company. Independent
Contractor agrees to execute, seal and deliver any instruments or documents and
to do all other things reasonably requested by Company (both during and after
Independent Contractor's engagement by Company) in order to more fully vest in
Company all ownership rights in those items hereby transferred by Independent
Contractor to Company. Independent Contractor further agrees to disclose
immediately to Company all Proprietary Information conceived or developed in
whole or in part by Independent Contractor during the term of Independent
Contractor's employment with Company.
4. RIGHTS IN DEVELOPMENT
(a) Independent Contractor hereby grants to Company all rights
that Independent Contractor may have in and to the Work and all proprietary
rights therein. Know-How and Patents, however, this grant of rights does not
include an assignment of Independent Contractor's right to payment from the
company for the work.
(b) Independent Contractor hereby grants to Company a
nonexclusive, irrevocable, worldwide, royalty-free, fully paid-up and unlimited
right and license, with the right to grant sublicenses to others without
accounting to Independent Contractor, in and to the Background Rights to make,
have made, use, sell, have sold, lease, and have leased devices, including the
Work and to practice any process or method in the manufacture or use thereof.
5. COMPETITION. Independent Contractor will not seek to compete with
the Company in the sale, lease, manufacture or distribution or Products, process
or services that utilize the technology or the work.
6. INJUNCTIVE RELIEF. Independent Contractor understands and agrees
that Company will suffer irreparable harm in the event that the Independent
Contractor breaches any of the Independent Contractor's obligations under
thisAgreement and that monetary damages will be inadequate to compensate Company
for such breach. Accordingly, Independent Contractor agrees that, in the event
of a breach or threatened breach by Independent Contractor of any of the
provisions of this Agreement, Company, in addition to and not in limitation of
any other rights, remedies or damages available to Company at law or in equity,
shall be entitled to a permanent injunction in order to prevent or to restrain
any such breach by Independent Contractor, or by Independent Contractor's
partners, agents, representatives, servants, employers, employees or any other
person directly or indirectly acting for or with Independent Contractor.
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7. RECORDS. All notes, data, tapes, reference materials, sketches,
drawings, memoranda and records in any way relating to any confidential
information, Know-How, Patents and Proprietary Information or to the Company's
business shall belong exclusively to Company and Independent Contractor agrees
to deliver to company all copies of such materials in the Independent
Contractor's possession or them under the Independent Contractor's control at
the request of the Company or, in the absence of such a request, upon the
termination of negotiations for or engagement by Company.
8. ACCOUNTING FOR PROFITS. Independent Contractor covenants and agrees
that if Independent Contractor shall violate any of Independent Contractor's
covenants, promises or Agreements under this agreement, Company shall be
entitled to an accounting and repayments of all profits, compensations,
commissions, remunerations or benefits which Independent Contractor directly or
indirectly has realized or may realize as a result of, growing out of or in
connection with any such violations. This remedy shall be in addition to an not
in limitation of any injunctive relief or other rights or remedies to which
company is to or may be entitled at law, in equity or under this agreement.
9. MISCELLANEOUS. This Agreement may be assigned by the Company and
shall be binding upon the successors and assigns of Independent Contractor. This
Agreement contains the full, entire and integrated agreement and understanding
by and between company and independent contractor with respect to the covenants
herein described, and no representations, promises, agreements or understanding,
written or oral, not herein contained shall be of any force or effect. Nothing
contained in this Agreement shall be deemed or construed to constitute an
agreement by Company to employ Independent Contractor for any purpose or to
engage the services of independent contractor in any capacity. No change or
modification hereof shall be valid or binding unless the same is in writing and
signed by the parties hereto. No waiver of any provision of this Agreement shall
be valid unless the same is in writing and signed by the party against whom such
waiver is sought to be enforced; moreover, no valid waiver of any provision of
this Agreement at any time shall be deemed a waiver of any such provision at any
other time. The headings and other captions in this Agreement are for
convenience and reference only and shall no be used in interpreting, construing
or enforcing any of the provisions of this Agreement. The use of any gender
herein shall be deemed to be or include the other genders, wherever appropriate.
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IN WITNESS WHEREOF, Company and Independent Contractor have duly
executed this Agreement as of the day and year first above written.
COMPANY:
AVALON-XXXXXX COMPANIES, INC.
By: /s/ DAS X. XXXXXX
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Title: CEO
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INDEPENDENT CONTRACTOR:
/s/ H.G. "XXXXX" XXXXXXXXX
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H.G. "XXXXX" XXXXXXXXX
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