EXHIBIT 10.1
LICENSE AND ROYALTY AGREEMENT
THIS LICENSE AND ROYALTY AGREEMENT is made and entered into this 23rd
day of January, 2002 (the "Effective Date") by and among ENER1 HOLDINGS, INC. a
corporation incorporated in the State of Florida, United States, having its
place of business at 000 X. Xxxxxxx Xxxxx Xxxx, Xxxxx #000, Xxxx Xxxxxxxxxx,
Xxxxxxx, 00000 ("ENER1") and INPRIMIS TECHNOLOGIES, INC., a corporation
incorporated in the State of Florida, United States, having its place of
business at 0000 Xxxxx Xxxxx Xxxx, Xxxx Xxxxx, Xxxxxxx 000000 ("INPRIMIS").
ENER1 and INPRIMIS are individually referred to in this Agreement as a "Party"
and collectively as "Parties."
WHEREAS, ENER1 is in the business of licensing intellectual property
and solutions to monitor and prevent electromagnetic radiation; and
INPRIMIS desires to license the technology embodied in the ENER1 patent
pending application entitled "Current-Conducting Part of Power Transmission
Line".
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein, the Parties hereto agree as follows:
SECTION 1
DEFINITIONS
1.1 "Affiliate"shall mean any corporation, partnership, joint venture, or other
entity (i) in which either Party own or controls, or is owned or controlled by
or in common ownership or control with either Party to the extent of holding
directly or indirectly, stock or interest representing more than fifty percent
(50%) of the aggregate stock or other interest entitled to vote on general
decisions reserved to stockholders, partners, or other owners of such entity; or
(ii) if a partnership, as to which a Party (and/or any of its Affiliates) is a
general partner.
1.2 "Confidential Information" shall mean F11 information not known or generally
available restrictions on use, including. without limitation, employees' names
and qualifications, know-how, trade secrets, intellectual property, operational
methods, marketing plans or strategies, product development techniques or plans,
processes, designs and design projects, inventions and research projects and
other business affairs, including the terms and conditions of this Agreement and
the negotiations between the Parties with respect to this Agreement. All
Licensed Technology and Know-How shall constitute Confidential Information of
ENER1 Information subject to any of the following exceptions shall not be
considered Confidential Information:
a) information, which is or becomes generally available other than as a
result of the breach of this Agreement by either Party;
b) information, the release of which is expressly authorized in writing
by the Party having the legal right to disclose such information; or
c) information, which is already lawfully known to or independently
developed by either Party without the use of any Confidential Information
disclosed hereunder; or
d) information, which is lawfully obtained from any Third Party.
1.3 "Know-How" shall mean all knowledge and tangible information whether
patentable or not and physical objects related to the technology embodied in the
ENER1 patent application entitled Current-Conducting Part of Power Transmission
Line", or related to the monitoring or reduction of electromagnetic radiation,
including but not limited to formulations, materials, data, schematics, designs,
configurations, computer programs, drawings and sketches, testing and test
results, regulatory information, whether or not capable of precise, separate
description prior to its publication, owned by ENER1 which ENER1 has the right
to disclose and license to INPRIMIS.
1.4 "Licensed Patents" is defined in Exhibit A as the ENER1 patent application
entitled, "Current-Conducting Part of Power Transmission Line", and any
additional patent applications which may subsequently be added to Exhibit A by a
written modification of this Agreement, signed by both Parties.
1.5 "Licensed Technology" shall mean Licensed Patents and Know-How,
collectively, and shall expressly exclude any Third Party Provider licenses
which may be required by INPRIMIS' product design in which the Licensed
Technology is incorporated.
1.6 "Third Party Provider" shall mean any party providing intellectual property
which, by design of the product, INPRIMIS elects to incorporate into the
Licensed Technology or into a Licensed Product or Licensed Process.
1.7 "Third Party" shall mean any party, except Affiliates of either Party, who
is not a party to this Agreement.
1.8 "Licensed Product and Licensed Process" shall mean in the case of a Licensed
Product, an item sold or intended for sale consisting of or incorporating the
Licensed Technology and, in the case of a Licensed Process, a process which uses
or incorporates the Licensed Technology, Licensed Products and Licensed
Processes shall also include, during the term of this Agreement, products and
processes consisting of, incorporating, or using Jointly Owned Intellectual
Property.
1.9 "Licensed Trademark" shall mean the word marks and design marks set forth in
the attached Exhibit B, whether or not registered in the United States or any
foreign country, as well as such other trademarks and service marks which the
parties may add by mutual written agreement.
SECTION 2
LICENSE GRANT
2.1 In accordance with the terms and conditions of this agreement, ENER1 hereby
grants to INPRIMIS, as of the Effective Date and for thirty-six (36) months
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thereafter, unless sooner terminated according to the terms hereof, an
exclusive, non-transferable, irrevocable (except to the extent provided in
Sections 9.2 and 9.4 below), worldwide right and license to use the Licensed
Technology (a) to develop, manufacture, use, sell, and otherwise distribute the
Licensed Products and to perform Licensed Processes and (b) to sublicense,
"without the right to further sublicense, the use of the Licensed Technology to
third parties to manufacture Licensed Products for the account of INPRIMIS and
which shall be directly distributed by, INPRIMIS, or its contracted
representative, said contract being approved by both parties, INPRIMIS shall
ensure that its sublicensees adhere to the terms and conditions of this
Agreement. INPRIMIS rights and licenses hereunder shall extend to the benefit of
its Affiliates, provided that each Affiliate assumes and agrees in writing to
abide by the obligations, including the obligation to pay royalties under
Article 3 herein, and to permit ENER1 to audit its records as provided herein in
accordance with Section 10,1 and restrictions established hereunder. INPRIMIS
shall be responsible for any breach of the terms and conditions of this
Agreement by its Affiliates 2.2. The license granted shall not be construed to
confer any rights upon INPRIMIS by implication, estoppel or otherwise as to any
technology not specifically set forth in Exhibit A. In particular, and not in
limitation of the foregoing restriction, the license does not confer to INPRIMIS
the right to use the Licensed Technology or any part thereof for any purpose
other than as permitted hereunder.
SECTION 3
ROYALTIES
3.1 For the rights, privileges and licenses granted hereunder, INPRIMIS shall
pay to ENER2 a Licensing Fee of One Dollar (US $1.00) upon execution of this
Agreement and upon receipt of the Licensed Technology.
3.2 In addition to the Licensing Fee set forth in Section 3.1 above, INPRIMIS
shall pay to ENER1 royalties for the sale, use, lease or other disposition of
Licensed Products and Licensed Processes, including the use of any Licensed
Product or Licensed Processes by INPRIMIS for their own purposes. INPRIMIS shall
pay to ENER1 the following royalties per Licensed Product shipped or Licensed
Process performed:
i. Royalties in the amount of 7.5% of the price charged to
customers for each Licensed Product shipped, and for each Licensed Process
performed.
ii. Royalties are due quarterly and are to be paid no later
than 30 days after the end of the quarter.
3.3. INPRIMIS shall pay royalties to those Third Party Providers providing
intellectual property which by design of the product, INPRIMIS elects to
incorporate into the Licensed Technology or into Licensed Products and/or
Licensed Processes.
SECTION 4
OWNERSHIP OF INTELLECTUAL PROPERTY
4.1 Ownership of Independently Developed Intellectual Property. Each Party shall
retain all intellectual property and property rights in its respective works and
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inventions that are not the result of the development work performed under this
Agreement. The Licensed Technology defined in Exhibit A and Licensed Trademarks
defined in Exhibit B, shall remain the exclusive property of ENER1.
4 2 Ownership of Jointly Developed Intellectual Property. The Parties shall have
joint ownership rights in and to all intellectual property developed as a result
of the engineering, work performed jointly by the Parties pursuant to this
Agreement and for the monitoring and reduction electromagnetic radiation (the
"Jointly Owned Intellectual Property"), The Parties shall have the right to
jointly obtain and hold in their joint names, copyrights, registrations,
patents, or such other protection as may be appropriate to the subject matter
and any extensions and renewals thereof. Notwithstanding the foregoing, the
Licensed Technology shall remain the exclusive Property of ENER1. Should either
ENER1 or INPRIMIS, or both, desire to seek patent protection in the United
States or any foreign country for any Jointly Owned Intellectual Property, the
Parties shall negotiate a separate agreement for the equal sharing of costs
related to obtaining such patents and enforcing such patents against an
infringer. In the event one of the Parties elects not join with the other Party
in seeking such patent protection, the Party electing to no join in seeking the
patent protection shall irrevocably assign, without any requirement of further
consideration, any right, title, or interest it may have in the intellectual
property for which the other Party is seeking to obtain or enforce the patent.
Upon request of the Party electing to seek or enforce the patent, the other
Party shall take such further actions, including execution and delivery of
instruments of conveyance, as may be appropriate to give full and proper effect
to such assignment.
4.3 Use of Jointly Developed Intellectual Property. During the term of this
Agreement, ENER1 agrees not to commercialize Licensed Products and Licensed
Processes. Following the termination of this Agreement, each Party shall have
the free right to independently use and/or license such Jointly Owned
Intellectual property, without the consent of the other Party, provided,
however, that neither Party shall be entitled to grant any exclusive licenses as
to such Jointly Owned Intellectual property; and provided further that each
Party shall account and pay semi- annually to the other Party fifty percent
(50%) of all royalties, license fees, and/or other profits in whatsoever form
they may be received as a result of commercializing such Jointly-Owned
Intellectual Property. Each Party agrees to promptly and completely disclose to
the other party, in writing, any and all such inventions. For purposes of this
section, the value of sums received for such Jointly-Owned Intellectual Property
shall be defined as the difference between the amount of the total license fee
or royalty received, less the lowest rate charged by ENER1or by INPRIMIS in the
twelve (12) preceding months for the intellectual property owned independently
by either or both ENER1 AND INPRIMIS which are contained within such products
for which the license fee has been received. The procedures set forth in Section
10 shall be applicable to the reporting and accounting of such royalties.
4.4 Third Party Intellectual Property and Licenses. The parties acknowledge that
INPRIMIS may elect to sublicense certain, not yet identified, Third Party
Provider owned intellectual properties to incorporate into Licensed Products and
Licensed Processes developed under this Agreement and that ENER1, as joint
developer of the Licensed Products and Licensed Processes developed under this
Agreement, agrees to be bound by all commercially reasonable required terms of
the Third Party Provider's licenses, and further provided that ENER1 shall be
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permitted prior approval of any agreements which would impose performance
requirements on ENER1 signed after the execution date of this Agreement.
SECTION 5
CONFIDENTIALITY
5.1 Each Party acknowledges that the Confidential Information constitutes and
shall constitute valuable assets and trade secrets. Accordingly, when a Party
(the "Receiving Party") receives confidential information from the other Party
(the "Owning Party") the Receiving Party shall, both during the term of this
Agreement and for three (3) years following the termination thereof, (i) keep
secret and retain in strict confidence any Confidential Information received
from the Owning Party, (ii) not disclose to any third party any Confidential
information received from the Owning Party for any reason whatsoever, (iii) nor
disclose any Confidential Information received from the Owning Party to the
Receiving Party's (and/or any Affiliates') employees or sublicensees, except on
a need- to-know basis and only after instructing each such employee or party
unless having received a signed Confidentiality Statement acknowledging the
obligations set forth in this Section from each such sublicensee, and provided
each such employee is bound by confidentiality obligations under the employment
policies. Code of conduct, and employee relationship requirements with the
employer and (iv) not make use of any confidential Information received from the
Owning Party for its own purposes or for the benefit of any third party except
as authorized by this Agreement.
5.2 In the event of any legal action or proceeding or asserted requirement under
applicable law or government regulations requesting or demanding the Receiving
Party disclose any Confidential Information, the Receiving Party shall
immediately notify the Owning Party in writing of such request or demand so that
the Owning Party may seek an appropriate protective order or take other
protective measures. The Receiving Party shall, upon the request of the Owning
Party, cooperate reasonably with the Owning Party in contesting such request or
demand at the expense of the Owning Party including, without limitation,
consulting with the Owning Party as to the advisability of taking legally
available steps to resist or narrow such request or demand. If in the absence of
a protective order or a waiver hereunder from the Owning Party, the Receiving
Party, in the reasonable written opinion of the Receiving Party's legal counsel,
is compelled to disclose any Confidential Information to any tribunal or
otherwise stand liable for contempt or suffer other penalty, the Receiving Party
may disclose such Confidential Information to such tribunal without liability
hereunder; provided, however, the Receiving Party (a) shall give the Owning
Party written notice of the Confidential Information to be so disclosed as far
in advance of its disclosure as is practicable, (b) shall furnish only that
portion of the Confidential Information which is legally required, and (c) shall
use commercially reasonable efforts to obtain an order or other reliable
assurance that confidential treatment will be accorded to such portions of the
Confidential Information to be disclosed as the Owning Party designates.
5.3 In the event the Receiving Party becomes aware that any person or entity
(including, but not limited to any Affiliate or employee of the Receiving Party)
is taking, threatens to take or has taken any action which would violate any of
the foregoing provisions of this Agreement, the Receiving Party shall promptly
and fully advise the Owning Party (with written confirmation as soon as
practicable thereafter) of all facts known to the Receiving Party concerning
such action or threatened action. The Receiving Party shall not in any way aid,
abet or encourage any such action or threatened action, and the Receiving Party
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agrees to use commercially- reasonable efforts to prevent such action or
threatened action, including, but not limited to, assigning any cause of action
it may have relating to the violation of the foregoing provisions to the Owning
Party, and the Receiving Party agrees to do all reasonable things and cooperate
in all reasonable things as may be requested by the Owning Party to protect the
trade secrets and proprietary rights of the Owning Party in and to the
Confidential Information.
5.4 The terms and conditions of this Agreement will not be disclosed by either
Party, except with prior written consent of the other Party, or as may be
required by law, or necessary, to establish its rights hereunder.
Notwithstanding the foregoing, (i) each Party shall have the right to disclose
the terms and conditions of this Agreement, if necessary, to any legal counsel
of such Party, as may be required to establish its rights hereunder, and (ii)
subsequent to the execution of this Agreement, the Parties may jointly or
individually issue press releases or otherwise publicly disclose the Parties'
relationship, provided (a) such Party has obtained the prior written approval of
the content of such disclosure from the other Party and (b) that such disclosure
does not include information which would be prohibited from disclosure by either
Party pursuant to this Agreement. The approval of such press release or other
disclosure of the Parties' relationship shall be given by a Party within five
(5) business days following the request by the other Party, or in the event the
approval is not given, the disapproving Party shall provide commercially
reasonable objections,.
SECTION 6
REPRESENTATIONS AND WARRANTIES
6.1 EXCEPT AS SPECIFICALLY SET FORTH IN THIS AGREEMENT, ENER1 MAKES NO
REPRESENTATIONS OR WARRANTIES, EXPRESSED OR IMPLIED, AS TO MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE OR OTHERWISE WITH RESPECT TO THE LICENSED
TECHNOLOGY OR KNOW-HOW PROVIDED PURSUANT TO THIS AGREEMENT.
6.2 UNDER NO CIRCUMSTANCES SHALL EITHER PARTY BE LIABLE FOR ANY INDIRECT,
CONSEQUENTIAL, INCIDENTAL, EXEMPLARY OR PUNITIVE DAMAGES, LOSS OF EARNINGS,
PROFIT OR GOODWILL SUFFERED BY ANY PERSON OR ENTITY, INCLUDING THE OTHER PARTY,
CAUSED DIRECTLY OR INDIRECTLY AS A RESULT OF THIS AGREEMENT, BY ANY LICENSE OR
SUBLICENSE GRANTED HEREUNDER, OR BY EACH PARTY'S PERFORMANCE OR NON-PERFORMANCE
OF THIS AGREEMENT, EVEN IF SUCH PARTY IS NOTIFIED BY THE OTHER PARTY OR ANY
THIRD PARTY OF THE POSSIBILITY OF SUCH DAMAGES.
6.3 ENER1 warrants that it has adequate legal rights to the Licensed Technology,
which it is licensing to ENER1, including the right to license such technology
which it is licensing to INPRIMIS, including the right to license such
technology to INPRIMIS. ENER1 shall indemnify and hold harmless INPRIMIS from
any claims that INPRIMIS' use of the Licensed Technology infringes the rights of
another. The indemnity of this Section 6.3 shall be limited to the dollar amount
of royalties that have been received, or are received, by ENER1 from INPRIMIS
pursuant to this Agreement.
6.4 Each Party agrees that they shall jointly hold harmless and indemnify any
Third Party who Licenses any intellectual property jointly developed by the
Parties under this Agreement from any claims that the jointly developed
intellectual property infringes the rights of another. Should the claim of
infringement be due solely to the Licensed Technology being incorporated within
the Third Party product, and not the Jointly Owned Intellectual Property, then
the liability for claims of infringement shall revert to ENER1as provided in
Section 63.
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SECTION 7
UNITED STATES REGULATIONS AND EXPORT CONTROLS
7.1 Both Parties agree to comply with all applicable laws, rules, regulations
and orders of federal, state, local and foreign governments. INPRIMIS
understands and acknowledges that ENER1 is subject to United States laws and
regulations controlling the export of technical data, computer software,
prototypes and other commodities (including, all Export Administration
Regulations of the United States Department of Commerce), and that ENER1's
obligations hereunder are contingent on IMPRIMIS' compliance with applicable
United States export laws and regulations. The transfer of certain technical
data and commodities may require a license from the certain agencies of the
United States Government and/or written assurance by INPRIMIS that INPRIMIS
shall not export data or commodities to certain foreign countries without prior
approval of such agency. INPRIMIS agrees that it shall not, directly or
indirectly, export or re-export, or knowingly permit the export or re-export of
the Licensed Technology to any country for which the United States Export
Administration Act, any regulation thereunder, or any similar United States law
or regulation, requires an export license or other United States government
approval, unless the appropriate export license or approval has been obtained.
ENER1 shall provide INPRIMIS with reasonable support and co-operation to enable
IMPRIMIS to obtain the required licenses or approvals. INPRIMIS agrees that it
will be solely responsible for any violations of such by INPRIMIS or its
sub-licensees.
7.2 ENER1 neither represents that an export license shall not be required nor
that, if required, it shall be issued. Further, if such license is issued,
revocation of such export license or modification thereof that prevents ENER1
from performing all or part of its obligations under this Agreement shall not be
deemed a breach of this Agreement to the extent such revocation or modification
is not attributable to ENER1; or, if such revocation or modification is
attributable to ENER1, is remedied by ENER1 on an expedited basis and at least
within sixty (60) days. Further, any change in United States export laws or
regulations relating to, prohibiting or restricting export of the Licensed
Technology or any part thereof shall not be deemed a breach by ENER1 of this
Agreement.
SECTION 8
USE OF TRADEMARKS
8.1 Trademark License. Subject to the terms and conditions of this Agreement,
INPRIMIS is hereby granted an exclusive, non-transferable, non-assignable
worldwide license, to use (with the right to sublicense to sub-manufacturers and
customers as set forth in this Agreement), the Licensed Trademarks owned by
ENER1 listed in Exhibit B (a) on any Licensed Product(s) and in connection with
the sale of Licensed Processes, and (b) in any advertising, packaging,
marketing, technical or other materials related to such Licensed Product(s) and
Licensed Process(es). INPRIMIS agrees not to apply to register or register, and
agrees to obtain the agreement of the sub- manufacturers and its customers not
to apply to register or register, any Licensed Trademarks. INPRIMIS shall not
contest, and agrees to obtain the agreement of the sub manufacturer and its
customers not to contest, ENER1's ownership of, or rights in, the Licensed
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Trademarks. The obligations stated in this Section 8.1 ("Trademark License") and
Section 8.1 ("Rules on Usage") and Section 8.3 ("Quality Control") and Section
8.4 ("Inspection") are material terms of this Agreement. Breach by INPRIMIS
thereof shall give rise to the rights and remedies stated in this Agreement for
breach of material terms and conditions.
8.2 Rules on Usage. INPRIMIS shall clearly indicate ENER1's ownership of the
Licensed Trademarks. All such usage shall inure to ENER1's benefit. In the event
that ENER1 notifies INPRIMIS that INPRIMIS has failed to meet the requirements
above, INPRIMIS shall within fifteen (15) days of notice from ENER1 to correct
any deficiencies that ENER1 identifies. If INPRIMIS fails to correct any such
deficiencies until INPRIMIS has corrected all such deficiencies.
INPRIMIS agrees with respect to each registered Licensed Trademark, to
include in each advertisement, brochure, or other such use of the
Licensed Trademark, the trademark symbol "(R)" and the following
statement:
Unless otherwise notified in writing by ENER1, INPRIMIS agrees
with respect to the Licensed Trademarks to include in each
advertisement, brochure, or other such use of the trademark,
the symbol "(TM)" and the following statement:
"(Licensed Trademark)" is a trademark of ENER1
HOLDINGS, Inc., Fort Lauderdale, Florida
8.3 Quality Control. INPRIMIS shall not use the Licensed Trademarks in any
manner that would be offensive to good taste or would injure the reputation of
ENER1 or the Licensed Trademarks.
8.4 Inspection. ENER1 may, itself or through its reasonably designated
representative, inspect and analyze Licensed Products and Licensed Processes
sold under the Licensed Trademarks, and as necessary, the premises and
operations of INPRIMIS, at INPRIMIS' place of business, in order to ensure that
Licensed Products and Licensed Processes sold under the Licensed Trademarks meet
ENER1's quality standards. If such inspection reveals deficiencies in the
quality of Licensed Products and Licensed Processes bearing the Licensed
Trademarks, which, in the sole judgment of ENER1, would adversely reflect upon
ENER1 or the Licensed Trademarks, INPRIMIS shall promptly rectify all
deficiencies in quality to the satisfaction of ENER1.
8.5 INPRIMIS acknowledges that ENER1 has no adequate remedy at law in the event
that INPRIMIS were to use the marks in a manner not authorized by its agreement,
and that ENER1, in such circumstances, is therefore entitled to injunctive or
other equitable relief.
SECTION 9
TERM AND TERMINATION
9.1 The term of this Agreement shall be thirty-six (36) months from date
execution of Agreement.
9.2 Should INPRIMIS fail to pay ENER1 the sums due and payable hereunder, ENER1
shall have the right to terminate this Agreement on fifteen (15) days notice,
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unless INPRIMIS shall pay ENER1 within the fifteen (15) day period, all such
fees and interest due and payable. Upon the expiration of the fifteen (15) day
period, if INPRIMIS shall not have paid all such fees and interest due and
payable, the rights, privileges and license granted hereunder shall terminate.
9.3 Should INPRIMIS fail to produce a demonstration prototype within the first
twelve (12) months of this Agreement, ENER1 shall have the right, one year from
the Effective Date of this Agreement, at its sole discretion, to terminate this
Agreement and the rights, privileges and license granted hereunder by thirty
(30) days written notice to INPRIMIS. Such termination shall become effective
unless INPRIMIS shall have cured the performance deficiencies identified in the
thirty (30) days written notice prior to the expiration of the thirty (30) day
period.
9.4 Upon any material breach or default of this Agreement by any Party (the
"Breaching Party"), (other than those occurrences set out in Section 9.2 hereof,
the terms of which shall always take precedence in that order over any material
breach or default referred to in this Section 9.4), the non-breaching Party
shall have the right to terminate this Agreement and the rights, privileges and
license granted to hereunder by thirty (30) days notice to the Breaching Party.
Such termination shall become effective unless the Breaching Party shall have
cured any such breach or default by diligently pursuing remedial action prior to
the expiration of the thirty (30) day period; provided that, if the Breaching
Party shall be in breach or default of the same provision twice within any six
(6) month period, the non-breaching Party shall have the right to terminate this
Agreement immediately upon notice to the Breach Party of such second occurrence
without providing the Breaching Party the thirty (30) days notice and cure
period.
9.5 Upon termination of this Agreement for any reason, nothing herein shall be
construed to release either Party from any obligation arising prior to the
effective date of such termination. INPRIMIS may, however, after the effective
date of such termination, sell all Licensed Products then in its possession, and
complete Licensed Products in the process of manufacture at the time of such
termination and sell the same, provided that INPRIMIS shall pay to ENER1 the
royalties thereon as required by Section 3 of this Agreement and shall submit
the reports required by Section 10 hereof.
9.6 Upon termination of this Agreement for any reason, each Party shall, at the
option of the other Party, return or destroy all confidential Information,
including but not limited to Licensed Technology and Know-How, in its possession
owned by the other Party, and INPRIMIS shall cease to use any part of the
Licensed technology and Know-How for any purpose whatsoever, except as
specifically allowed under Section 9.5 above.
9.7 Upon termination of this Agreement for failure to maintain quality as
provided in Sections 8.3 and 8.4 hereof, INPRIMIS shall immediately cease all
use of the Licensed Trademarks.
9.8 Sections 3, 4, 5, 6, 9 and 10 shall survive termination of this Agreement.
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SECTION 10
REPORTS AND RECORDS
10.1 INPRIMIS shall keep complete and accurate records of the manufacture, sale
and distribution of Licensed Products and Licensed Processes, including use and
manufacture by sublicensees, (collectively, "Sales and Use Records"). Sales and
Use Records shall be kept at INPRIMIS' principal place of business. Upon prior
written notice to INPRIMIS, ENER1 shall have the right, one time each year
during normal business hours, without unreasonable interference with IMPRIMIS'
business operations, and at ENER1's expense, to have a reputable and
internationally recognized Independent certified auditor, subject to a strict
confidentiality agreement, review and audit records in relation to the royalties
and compensation under this Agreement for the preceding (3) three years. Any
adjustments due to overpayment or underpayment of royalties shall be made at the
next date when royalty payments to ENER1 are due. If the upward adjustment of
royalties due to ENER1 is greater than ten percent (10%), INPRIMIS agrees to
reimburse ENER1 for its review and audit expenses, unless such upward adjustment
of royalties occurs due to situations beyond INPRIMIS' reasonable control. Any
underpayment shall further obligate INPRIMIS to pay ENER1 interest on such
underpayment at the rate of eighteen percent (18%) per annum, calculated from
when such sums were originally due.
SECTION 11
GENERAL PROVISIONS
11.1 Notices. All notices, demands or other communications given under this
Agreement shall be in writing and shall be mailed by first-class, registered or
certified mail, return receipt requested, postage prepaid, or transmitted by
hand delivery (including delivery by courier), telegram, telex, or facsimile
transmission, addressed as follows:
(i) If to ENER1 HOLDINGS, INC.:
ENER1 HOLDINGS, INC.
Attention: (1) President (2) Chief Operating Officer
000 Xxxx Xxxxxxx Xxxxx Xxxx, Xxxxx #000
Xxxx Xxxxxxxxxx, Xxxxxxx
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
(ii) If to INPRIMIS TECHNOLOGIES, INC.:
INPRIMIS TECHNOLOGIES, INC.
Attention: (1) Chief Financial Officer (2) Sr. V.P. General Admin.
0000 Xxxxx Xxxxx Xxxx
Xxxx Xxxxx, Xxxxxxx 00000
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
or to such other address which each Party may designate by notice in writing.
Each such notice, demand or other communication which shall be mailed, delivered
or transmitted in the manner described above shall be deemed given for all
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purposes at such time as it is delivered to the address (with the return
receipt, the delivery receipt, the affidavit of messenger or (with respect to a
telex) the answer back being deemed conclusive (but not exclusive) evidence of
such delivery) or at such time as delivery is refused by the addressee upon
presentation,
11.2 Governing Law. The construction and interpretation of this Agreement and
the rights of the Parties shall be governed by the laws of the State of Florida,
USA, without regard to its conflicts of laws provisions. The state and federal
courts located in Florida shall have exclusive jurisdiction over any dispute
arising from or in connection with this Agreement not otherwise submitted to
arbitration. Each Party hereby consents to the personal jurisdiction of the
state and federal courts in Florida in any such dispute arising from or relating
to this Agreement. Each Party further agrees that services of process may be
made, in addition to any other method permitted by law, by certified mail,
return receipt requested, sent to the applicable address set forth herein. Any
award or injunctive relief granted in any dispute may be enforced by either
Party in either the courts of the State of Florida or in the United States
District Courts in Florida. The Parties hereby expressly waive their rights to
trial by-jury.
11.3 Assignment. This Agreement shall be binding, upon and shall inure to the
benefit of the Parties hereto and their respective successors and assigns as
permitted hereunder. No person or entity other than the Parties hereto is or
shall be entitled to bring any action to enforce any provision of this Agreement
against any of the Parties hereto, and the covenants and agreements set forth in
this Agreement shall be solely for the benefit of, and shall be enforceable only
by, the Parties hereto or their respective successors and assigns as permitted
hereunder. Except for assignment to an Affiliate, neither this Agreement nor any
rights hereunder shall be assignable by any Party without the prior written
consent of the other Party hereto.
11.4 Entire Agreement; Amendment. This Agreement constitutes the entire
agreement between the Parties with respect to the subject matter hereof and
supersedes all other prior agreements and understandings, both written and oral,
between the Parties with respect to such matters. No amendment to this Agreement
shall be made except by an instrument in writing signed on behalf of each Party.
11.5 Severability. If any court or arbiter of applicable jurisdiction determines
that any of the agreements, covenants and undertakings set forth herein, or any
part thereof, is invalid or unenforceable, the provision shall, to the extent
possible, be restate to reflect the original intention of the Parties, and the
remainder of this Agreement shall be given full effect, without regard to the
invalid or restated portions.
11.6 Waiver. The failure of either Party to assert a right hereunder or to
insist upon compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other Party.
11.7 Taxes. All fees payable to ENER1 hereunder are exclusive of all taxes, or
levies however designated or computed. INPRIMIS shall be responsible for and pay
all taxes, duties and levies based upon the use of the Licensed Technology and
Know-How, maintenance and distribution of Licensed Products and Licensed
Processes, or upon payments due under this Agreement, including, but not limited
11
to, sales, use, or value-added taxes, duties, withholding taxes and other
assessments now or hereafter imposed on or in connection with this Agreement.
11.8 Counterparts. This Agreement may be executed in two or more counterparts,
each of which shall be deemed to be an original, but all of which together shall
constitute one and the same agreement.
11.9 Compliance with Laws. In performing under this Agreement, both Parties
agree to comply with all applicable laws, rules, and regulation of any
governmental entity.
11.10 Force Majeure. Neither party shall be liable to the other party for any
loss or damage due to delays or failure to perform resulting from an event of
'force majeure," including without limitation, acts of God; accident, war; fire;
lockout; strike or labor dispute; riot or civil commotion; act of the public
enemy; enactment, rule, order or act of civil or military authority; acts or
omissions of the other Party; judicial action, inability to secure adequate
materials, labor, or facilities; defaults of subcontractors or suppliers as a
result of 'force majeure"; the inability of carriers to make scheduled
deliveries, or any other event beyond the reasonable control of either Party.
IN WITNESS WHEREOF, the Parties have hereunto set their hands and seals and duly
executed this Agreement the day and year set forth above.
INPRIMIS TECHNOLOGIES, INC. ENER1 HOLDINGS, INC.
By: /s/ XXXXX XXXXX By: /s/ XXXXXXX ZOI
------------------- -------------------
(Signature) (Signature)
Name: XXXXX XXXXX Name: XXXXXXX ZOI
------------------- -------------------
(Name Printed) (Name Printed)
Title: C.O.O Title: President
Date: January 23, 2002 Date: January 23, 2002
12
EXHIBIT A
LICENSED TECHNOLOGY
Licensed Technology shall be defined as:
a. The ENER1 patent application entitled: "Current-Conducting Part of
Power Transmission Line", Attorney Docket No. 7053-5
EXHIBIT B
LICENSED TRADEMARK
The Licensed Trademark shall be defined as:
a. The word xxxx "EnerWatch", together with any forms, modifications,
and/or logo, as may be expressly approved and authorized by ENER1.
