Exhibit 10(g)
CONTRACTOR LICENSE AGREEMENT
This CONTRACTOR LICENSE AGREEMENT is made and entered into as of the
14th day of September 1995 by and between ULTRALINER, INC., a corporation
organized and existing under the laws of the State of Alabama (hereinafter
referred to as the "Licensor"), and ETS WATER AND WASTE MANAGEMENT, INC. dba
XXXXXX X. XXXXXX COMPANY, a Virginia corporation, doing business under the
laws of Virginia (hereinafter referred to as the "Contractor").
RECITALS:
WHEREAS, the Licensor has conducted research and development with
respect to certain methods, apparatus and materials used in the
rehabilitation of water and sewer pipelines by the insertion of a folded PVC
alloy pipe liner into the pipeline to be rehabilitated; and
WHEREAS, the foregoing research and development have resulted in
substantial and valuable know-how, inventions and techniques proprietary to
the Licensor, and the possession by the Licensor of valuable information with
respect thereto; and
WHEREAS, the Contractor is desirous of gaining knowledge of such
inventions, know-how, techniques, and information and an exclusive right and
license within and throughout the Territory to use the same together with any
Patent Rights, Trademark Rights, and Copyrights relating thereto;
NOW THEREFORE, in consideration of these recitals and the mutual
covenants and undertakings set forth herein, the parties hereto do enter into
this agreement.
ARTICLE I - DEFINITIONS
As employed herein:
1.01 "Affiliate" shall mean any person or entity controlling,
controlled by or under common control with the person or entity referenced.
1.02 "Apparatus" shall mean and include, but not be limited to, any
and all tools, equipment, instruments, machines, and devices, other than the
Materials, whether patented or unpatented, developed for use in the practice
of the Subject Matter.
1.03 "Change in Control" shall mean a change of the Contractor
occurring after the date of execution of this Agreement of a nature that
would be required to be reported in response to Item 6(e) of Schedule 14A of
Regulation 14A (or in response to any similar item on any similar schedule or
form) promulgated under the Securities Exchange Act of 1914, whether or not
the Contractor is then subject to such reporting requirement; provided,
however, that without limitation, such a Change in Control shall be deemed to
have occurred if any "person" (as defined in Rule 13d-3 under said Act),
directly or indirectly, of more than 50% of the outstanding shares of any
class or series of securities entitled to elect more than one-half of the
board of directors or other governing body of the Contractor.
1.04 "Commencement Date" means the first day when the Products are
received from the manufacturer.
1.05 "Confidential Material" shall mean the information furnished to a
Receiving Party, whether before or after the date hereof, by a Disclosing
Party, or acquired, received, developed or learned by a Receiving Party in
the course of its relations with a Disclosing Party, or relating to the
Subject Matter, the Know-How, the Copyrights or the proprietary plans,
policies, business or affairs of a Disclosing Party, including, without
limitation, data, drawings, materials and other communications concerning any
manufacturing or production or other process or any research and development
or marketing and/or sales plans or results related to the business of a
Disclosing Party; provided, however, that the term "Confidential Material"
shall not include information which: (i) becomes or has become generally
available to the public other than as a result of a disclosure by a Receiving
Party, (ii) was available to a Receiving Party on a non-confidential basis
prior to its disclosure to the Receiving Party by a Disclosing Party, or
(iii) becomes available to a Receiving Party on a non-confidential basis from
a source other than a Disclosing Party, provided that such source is not
bound by a confidentiality agreement with a Disclosing Party.
1.06 "Contract Year" means the calendar year with the exception of the
first year, which shall commence on 1st of February, 1996, and shall end on
the 1st of February, 1997.
1.07 "Contractor" means ETS WATER AND WASTE MANAGEMENT, INC. dba
XXXXXX X. XXXXXX COMPANY.
1.08 "Copyrights" shall mean and include any and all copyrights at
common and/or statutory law within the Territory which relate to plans,
brochures, instructions or other means of expression, including, but not
limited to, photographs, software, firmware, diagrams and other visual
presentations, having to do with the Subject Matter or useful in connection
with the commercialization thereof, which the Licensor has, or hereinafter
acquires the right to license others.
1.09 "Cross-over Payment" shall mean the amounts, payable by the
Contractor to the Licensor under Sections 3.03 and 3.04 hereof, at the times
hereinafter set forth, equivalent to twenty-five percent (25%) of the Gross
Product Price of all ULTRALINER, INC. materials shipped outside of the
Territory.
1.10 "Customer(s)" means any public, private, corporate or other legal
entity that has been contacted by Contractor, has expressed an interest in
the System, Process or Know-how, or that has utilized or benefitted from the
use of the System, Process or Know-how.
1.11 "Disclosing Party" shall mean a party hereto, together with its
Affiliates and their respective officers, directors, employees, agents and
representatives, disclosing Confidential Material.
1.12 "Effective Date" means the date of execution of this Agreement.
1.13 "Gross Product Price" shall mean the price published by Licensor
from time-to-time for Product.
1.14 "Know-how" means any and all most up-to-date confidential,
valuable and proprietary information, whether technical, economic or
commercial experiences, operating and/or executing techniques and other
knowledge and all physical matters such as drawings, specifications,
computations, analyses, data, designs, pipe lining installation procedures
and the like relating to or in respect of the Process, Equipment, Tools and
Material herein defined which are substantially or relevant necessary to
enable the Contractor to practice the Process hereinafter defined properly
and efficiently to a standard and quality similar to the standard and quality
of the internal pipe lining specified by the Licensor and which Licensor now
possesses or may possess hereafter during the term of this Agreement.
1.15 "Licensor" means ULTRALINER, INC. a corporation created under the
laws of the State of Alabama, United States of America.
1.16 "License Fee" shall mean the non-refundable amount as set forth
under Section 3.02 hereof, payable by the Contractor to the Licensor upon the
execution and delivery of this agreement.
1.17 "Materials" shall mean and include any and all compositions,
products, components and other materials, without limitation, whether
patented or unpatented, developed for use in the practice of the Subject
Matter and supplied to the Contractor.
1.18 "Patent Rights" shall mean and include all patents and patent
applications relating to the Subject Matter whether owned now or hereafter
acquired or controlled by the Licensor.
1.19 "Performance Objectives" shall mean the minimum lengths of
pipeline, identified and segregated by reference to size, proposed to be
rehabilitated by the Contractor during the Term, as determined pursuant to
Section 4.03 hereof.
1.20 "Permitted Uses" shall mean the application, in accordance with
the specifications of the Licensor of Product in connection with the repair,
rehabilitation or reconstruction of water and sewer pipelines. The Licensor
and the Contractor hereby acknowledge and agree that, notwithstanding any
other provision of this Agreement, neither the right and license granted
under Section 2.01 hereof, nor the Permitted Uses, shall extend to any
utilization of the Know-how or the Patent Rights or practice of any
inventions relating to the Subject Matter in the manufacture of any
Materials.
1.21 "Process" means the deformed pipe lining technology and process
developed by ULTRALINER, INC. for the restoration of repair and
rehabilitation of water and sewer (sewage & storm pipelines through the
application of pipe lining material manufactured of PVC Alloy materials with
all its modifications. The words Process or ULTRALINER PVC ALLOY PIPELINER
SYSTEMS (Trademark) shall also mean and include any and all methods, Know-
how, methodology and technology which have application to the System and are
deemed proprietary and confidential by Licensor.
1.22 "Product" means deformed pipe lining made or designed in
accordance with the system.
1.23 "Project(s)" means pipe restoration construction projects where
the System, Process or Know-how are, or will be used.
1.24 "System" means ULTRALINER PVC ALLOY (Trademark) deformed pipe
lining using the Process developed by ULTRALINER, INC.
1.25 "Receiving Party" shall mean a party hereto, together with its
Affiliates and their respective officers, directors, employees, agents and
representatives, receiving Confidential Material.
1.26 "Restoration" means lining and reopening of pipe at lateral by
remote control internal cutter.
1.27 Subject Matter" shall mean and include all presently existing and
subsequently acquired methods. Apparatus and Materials used in the repair,
rehabilitation or reconstruction of water and sewer pipelines by using the
PRODUCT.
1.28 "Term" shall mean the period commencing on the date hereof and
shall continue for 5 years or the expiration of the last extension, unless
sooner terminated as hereinafter provided. For the purposes of the agreement
between these parties, the Contractor is hereby granted the right to extend
the term for 5 additional years, on the terms and conditions set out in
ARTICLE II hereof.
1.29 "Territory" shall mean that geographical area lying within the
political boundaries of the Counties of Frederick, Clarke, Loudoun,
Alexandria, Warren, Fauquier, Prince Xxxxxxx, Page, Rappahannock, Madison,
Cullpepper, Stafford, King Xxxxxx, Orange, Spotsylvania, Xxxxxxxx, Essex,
Westmoreland, Xxxxxxxx, Xxxxxx, Hanover, King Xxxxxxx, Xxxx and Queen,
Fluvanna, Goochland, Henrico, New Kent, Cumberland, Powhatan, Xxxxxx,
Shenandoah, and Chesterfield, and the cities of Hopewell, Colonial Heights,
Richmond, Winchester, and any other cities lying within the geographic
boundaries of this territory being a political sub-division of Virginia.
1.30 "Tools" means any and all special equipment, apparatus or
materials used in the Process.
1.31 "Trademark" means ULTRALINER and ULTRALINER PVC ALLOY PIPELINER
and ULTRALINER PVC ALLOY PIPELINER SYSTEM and such other trademarks as may be
adopted by Licensor.
1.32 "Trademark Rights" means certain trademarks, service marks and
trade names including, without limitation, the Trademark, which have been
adopted and used by ULTRALINER, INC. and which have been promoted and are
becoming favorably known to and recognized by the pipe lining industry.
1.33 "ULTRALINER PVC ALLOY PIPELINER SYSTEM (Trademark)" means a
deformed pipe lining system developed by ULTRALINER, INC. for installation in
accordance with the specifications of the Process.
ARTICLE II - GRANT OF LICENSE, TERM AND EXTENSION
2.01 Grant of License.
(a) In consideration of the License Fee and the other covenants and
agreements of the Contractor hereunder, the Licensor hereby grants the
Contractor an exclusive right and license within and throughout the Territory
during the Term:
(i) to utilize in the Territory, the Know-how, Equipment,
Materials, Tools and the Products to practice the inventions of the
Patent Rights relating to the Subject Matter, and to sell and to
install products incorporating the Subject Matter to customers of its
choice, in each case solely in and for the Permitted Uses but only by
Contractor through Contractor's direct employees and not through or by
any other entity (such as non-owned installers), unless expressly
authorized by Licensor;
(ii) to use any and all Copyrights only as an adjunct to the
practice of such methods and the commercialization thereof as permitted
by this Agreement; and
(iii) subject to Sections 2.02 and 4.04 hereof, to use and
display ULTRALINER PVC ALLOY PIPELINER (Trademark) and ULTRALINER PVC
ALLOY PIPELINER SYSTEM (Trademark) as a service xxxx and trademark in
connection with each and every aspect of the commercial exploitation of
the Subject Matter in the Permitted Uses.
(b) The exclusivity of the license is subject to and limited by the
right heretofore granted by Licensor to Xxxx Xxxxxxx, personally acting
solely through his company, as long as he owns 100% of Xxxxxxx Construction
Company, to sell and install Product within the Territory.
(c) In the event the Licensor, in its sole but reasonable discretion,
determines that the Subject Matter may be commercialized in the Territory in
connection with the repair, rehabilitation or reconstruction of pipelines and
other passageways, the Licensor and the Contractor may agree to enter into an
agreement to license Contractor to sell and install the Subject Matter for
such uses. Without this subsequent agreement, the Licensor and Contractor
hereby agree and acknowledge that notwithstanding any other provision of this
Agreement, neither the right and license granted under Section 2.01 hereof,
nor the Permitted uses, shall extend to any utilization of the Know-how or
the Patent Rights or practice of any inventions relating to the Subject
Matter in the use, manufacture or promotion of any materials.
Notwithstanding any other provision contained in this paragraph (b),
the Licensor shall not be obligated to commercialize the Subject Matter in
any application described under this paragraph.
2.02 Use of Service Xxxx and Trademark
(a) The Contractor hereby acknowledges that, except as described in
2.01(b), only the Licensor or its designated licensees have the right within
the Territory to use the name ULTRALINER PVC ALLOY PIPELINER (Trademark) and
ULTRALINER PVC ALLOY PIPELINER SYSTEM (Trademark) as a service xxxx or
trademark, and such other trademarks, service marks, trade names and
copyrights as may presently exist or be acquired by the Licensor and licensed
for use by the Contractor, along with all ancillary signs, symbols or other
indicia used in connection or conjunction with said marks. The Contractor
further acknowledges that valuable goodwill is attached to all such
trademarks, service marks, trade names, and copyrights, and that it will use
same in the manner and to the extent specifically licensed by this Agreement.
The Licensor, in its sole discretion, has the right itself to operate
businesses under said trademarks, service marks, trade names and copyrights
and (subject to paragraph (a), (b), and (c) of Section 2.01 hereof) to grant
other licenses in, to and under such trademarks, service marks, tradenames
and copyrights, on any terms the Licensor deems fit; except for the Permitted
Uses in the Territory (and subject, in all respects, to the final sentence of
Section 2.03). The Contractor expressly recognizes that any and all goodwill
associated with said trademarks, service marks, trade names, and copyrights,
including any goodwill which might be deemed to have arisen through the
Contractor's activities, inures directly and exclusively to the benefit of
the Licensor, except as otherwise provided herein. The Licensor covenants
that any subsequent license to a third party (which may be an Affiliate of
the Licensor) for ULTRALINER PVC ALLOY PIPELINER (Trademark) application of
the Subject Matter in the Territory other than in the Permitted Uses shall
provide that any trademarks, service marks, tradenames and copyright covered
by such license (which may include ULTRALINER PVC ALLOY PIPELINER
(Trademark)) shall be adequately distinctive in form from the trademarks,
service marks, tradenames and copyrights licensed hereunder.
(b) All Apparatus, Materials, letterheads, invoices, advertising
signs of all types and printed material utilized by the Contractor in the
exercise of its rights under this Agreement shall bear appropriate insignia
acknowledging such products Materials or Apparatus as under exclusive license
from the Licensor.
2.03 Rights Reserved to Licensor.
It is specifically understood and agreed that the grant of this
exclusive license for the Territory during the Term is based upon the size
and ability of the Contractor to provide and/or exploit the demand for the
Subject Matter within the Territory in the Permitted Uses, and the nature and
scope of the Territory has been determined accordingly. The Contractor
further understands and agrees that the Licensor retains the right to grant
exclusive licenses to other Contractors in other territories and to grant
exclusive licenses to other parties in the Territory to utilize the Subject
Matter for purposes other than in the Permitted Uses. The Licensor reserves
the right to vary or otherwise modify the nature and scope of subsequent
licenses granted to subsequent licensees to accommodate specific
applications, territories, population considerations and other factors. The
Contractor acknowledges and agrees that the Licensor shall not be obligated
to prevent other of its licensees for the Permitted Uses from exploiting the
Subject Matter in the Territory in the Permitted Uses.
2.04 TERMS AND EXTENSIONS.
(a) The Term of this Agreement shall commence on the date of this set
out in the opening paragraph hereof and shall terminate at midnight on the
1st day of February, 2001, unless the termination date is extended in
accordance with the following paragraph.
(b) The Contractor is granted the right to extend the termination date
for five (5) years provided that the Contractor is not in default on any of
its obligations to Licensor under the terms hereof or otherwise created and
the financial condition of the Contractor to maintain a bonding capacity, is
adequate to allow Contractor to perform its obligations hereunder during the
extended term.
ARTICLE III - LICENSE FEE AND CROSS-OVER PAYMENT
3.01 ADEQUACY OF CONSIDERATION
It is specifically understood and agreed that the License Fee, and the
other terms and conditions hereinafter described shall be deemed adequate
consideration for the exclusive license defined in Article II above relating
to the Territory during the Term.
3.02 License Fee
Concurrently with the execution and delivery of this Agreement, the
Contractor shall pay to Licensor the amount of $65,000.00 US (Sixty-Five
Thousand Dollars US), which shall not be refundable in part or whole at any
time after execution of this Agreement.
3.03 Purchase
All orders by Contractor for Product shall be only on the terms set out
in the Licensor's written acceptance of Contractor's written order.
3.04 Cross-Over Payment
(a) The Contractor shall, during the Term, exploit the Subject Matter
in the Territory in the Permitted Uses for the mutual benefit of the
Contractor, the Licensor, and the customers and potential customers of the
Contractor, in order to fulfill the Contractor's obligations under Section
4.03 hereof, and the Contractor shall ensure that the customers of the
Contractor are provided such information, warranties, and services by the
Contractor as shall assure that such obligations are met. In so exploiting
the Subject Matter in the Permitted Uses, the Contractor shall be required to
make significant financial investments, necessary for market development, in
capital and equipment, in marketing and promotion, and in providing
information and services.
(b) In order to compensate the Licensor's licensees in other
territories for the making of such investments, and to induce them to do so,
should the Contractor seek to exploit the Subject Matter outside of the
Territory in any of the Permitted Uses, whether or not in an area where an
exclusive license for such Permitted Uses has been granted by the Licensor,
the Contractor shall make an immediate Cross-Over Payment of twenty-five
percent (25%) of the Gross Product Price of all Product so exploited outside
the Territory. All Cross-Over Payments shall be paid by the Contractor to
the Licensor, as agent for the Contractor, who shall in turn promptly pay
twenty percent (20%) of such Cross-Over Payment to the Licensee in whose
territory the installation was performed, if any. Should the Contractor fail
to make a Cross-Over Payment to the Licensor within the time applicable for
payment, no further Product will be shipped to the Cross-Over Contractor and
such failure shall be a material breach of this Agreement; it being
understood and agreed that nothing contained in this Agreement shall obligate
the Licensor to take any collection action with respect to any Cross-Over
Payment.
(c) All licenses governing the commercialization of the Subject Matter
for the Permitted Uses within the United States of America shall provide for
a similar cross-over payment, in the amount of twenty-five percent (25%) of
the Gross Product Price for installations utilizing the Subject Matter for
any of the Permitted Uses within the Territory, to be paid by the Licensee
who commits the cross-over thereunder to the Licensor, as agent for such
licensee, who shall in turn promptly pay such cross-over payment to the
Contractor into whose Territory the cross-over has been committed, if any,
less five percent (5%) deduction.
(d) Notwithstanding any other provision contained in this Agreement,
any utilization of the Subject Matter within the Territory for the Permitted
Uses by another licensee of the Licensor shall be attributable to the
Contractor for purposes of determining achievement by the Contractor of its
Performance Objectives.
(e) In addition to all other obligations of the Contractor hereinafter
set forth, in order to assure top product quality and to meet all products
liability and health and safety requirements it shall be the responsibility
of the Contractor, should it perform work outside the Territory to assure
satisfactory arrangements are made to provide full and complete after-sales
service and warranty protection for the job involved, including specifically,
but not limited to, the ability to rapidly deploy a repair crew to the site
of any such job.
3.05 Reports and Payments. The Contractor shall submit and deliver to
the Licensor separate written reports at the times hereinafter set forth and
in such form as may be reasonably required and as may be amended, from time
to time by the Licensor as follows:
(a) No later than one month prior to the commencement of each calendar
quarter of the Term, the Contractor shall deliver to the Licensor a report
containing the Contractor's forecast of product requirements, in linear feet
by diameter, for each month of the immediately following calendar quarter and
each of the next two (2) calendar quarters.
(b) Within three (3) weeks after the end of each calendar quarter of
the Term, the Contractor shall deliver to the Licensor a report of work
performed by the Contractor utilizing the Subject Matter for the Permitted
Uses during such calendar quarter, whether or not invoiced or paid, the total
amount invoiced, the Gross Contract Price and terms for the work performed,
and any Cross-Over Payment due to the Licensor, as agent for the Contractor,
and such other information as the Licensor may reasonably require to enable
the Licensor to evaluate computation of any Cross-Over Payments and the
Contractor's achievement of the Performance Objectives. Such report shall be
accompanied by payment in full of all Cross-Over Payments not paid and due
the Licensor, as agent for the Contractor, with respect to such calendar
quarter.
3.06 Default in Payment.
Should the Contractor fail to pay the License Fee or any Cross-Over
Payment as aforesaid, or fail to pay for Materials, to the Licensor, arising
from or in connection with this Agreement, when validly due, or fail to
deliver any report due under Section 3.04 hereof, this Agreement shall,
pursuant to Article VI hereof (and subject, without limitation, to the
applicable notice and cure periods therein) terminate.
3.07 PLACE AND METHOD OF PAYMENT.
All payments required under this Agreement shall be made in Oxford,
Alabama or such other location within the United States as shall be
identified by the Licensor. Payments are to be paid in U.S. Dollars or Gold.
ARTICLE IV - GENERAL COVENANTS
4.01 Information Sharing.
With a view to avoiding unnecessary duplication of research and
development work in relation to the System and/or the Products as far as
possible, both the Licensor and the Contractor shall have the right to
discuss with each other fully and openly at half-year intervals relevant
research and development projects which they have in hand or which are
planned.
4.02 Financial Covenants.
To assure the financial ability of the Contractor to meet obligations
hereunder, the Contractor shall provide a semi-annual balance sheet to the
Licensor with an officer's certificate, notarized, certifying that such
balance sheet has been prepared in accordance with generally accepted
accounting principles applied consistently with the prior six months and
presents fairly the financial position of such party for the six months then
ended. The Contractor's obligation under this Section 4.02 shall be deemed
met in the event guaranteed by an Affiliate of the Contractor which itself
also complies with this Section 4.02.
4.03 Performance Objectives. Performance objectives are the minimum
quantities of Product that the Contractor is required to order from Licensor
within the time period specified. The parties recognize and agree that the
covenant of the Contractor that it will achieve these Performance Objectives
is a material term of this agreement and its representation that it has and
will dedicate the necessary financial and manpower resources, to this
specific obligation, as well as its other duties hereunder, have been and
will continue to be relied upon by Licensor in entering into this agreement
and performing thereunder.
(a) For the first contract year, Contractor shall not be assigned any
performance objective.
(b) For the contract year beginning February 1, 1997, Contractor shall
order (only valid order is that accepted and paid for) not less than twenty
thousand feet (20,000) of Product.
(c) Contract Years subsequent to 1997, Performance Objectives shall be
established by the Licensor and Contractor taking into consideration the
following factors:
(i) reconstruction budget line items of major municipalities
in the territory;
(ii) major projects planned in the Territory for the
performance period;
(iii) the Contractor's actual performance in prior years;
(iv) distorting impact of major programs, Acts of God and
events beyond the Contractor's control in prior year's performance;
(v) territory population;
(vi) population of realistic potential markets in the
territory;
(vii) Contractor forecasts;
(viii)Contractor backlogs;
(ix) sales activities of competitive methods and volume of work
lost or delayed due to competitor's activities;
(x) political and economic conditions in the territory;
(xi) new markets and applications and diameters for which
products will be available and compatible;
(xii) environmental concerns
(xiii)product availability and price; and
(xiv) maintenance of product exclusivity.
(d) Contractor shall develop and provide Licensor such information as
is described above and such other data and information which the Contractor
believes to be pertinent and relevant to establishment of Performance
objectives.
(e) Within 90 days prior to the end of a Contract Year, and following
good faith negotiations with the Contractor on the basis of the foregoing
criteria, Performance Objectives applicable to, shall be announced by
Licensor and Contractor as agreed upon, for next Contract Year.
(f) Commencing February 1st, 1997, and on a quarterly basis thereafter
the Contractor and the Licensor shall consult to determine the Contractor's
progress during the preceding calendar quarter in achieving the Performance
objectives then applicable. Licensor shall consider the criteria set out in
the foregoing section and the following criteria when conducting its
evaluation of Contractor's performance to determine if the Contractor has
failed to achieve its Performance Objectives:
(i) major governmental agency or industrial buyer decisions
relating to the Subject Matter, as well as delays in releasing
contracts for bids;
(ii) Contractor's overall satisfactory business performance in
all diameters;
(iii) competitor's adverse activities in the Territory;
(iv) Contractor's long-term investment in business under the
License, both capital and human resources;
(v) sales activity and effort to promote the product.
(g) The Licensor hereby agrees that, subject to the notices and for the
period hereinafter specified, the Contractor shall not be deemed to have
failed to achieve any Performance Objective for a particular year if
prevented by a material failure of performance by the Licensor that is not
caused by the fault of the Contractor (including those excuses for
nonperformance as are herein afforded to Contractor); by federal, state or
municipal action or regulations; by strikes or other labor trouble or
stoppage; by fire, damage to, or destruction in whole or in part of
merchandise or plant; by lack of, or inability to obtain, raw materials,
labor, fuel or supplies; by war, riot or revolution; by Acts of God; by
perils of the sea; by shortage of cars; or by any other unavoidable cause
beyond the control of Contractor, in each case, under this sentence, except
if caused by the negligence or design of the Contractor. In the occurrence
of any such event, and after receiving written notice from the Contractor
thereof, Licensor shall, for as long as such event shall continue to prevent
such achievement, reduce any Performance Objective so affected by a
proportion that reasonably accounts for such event. The Contractor shall
promptly deliver written notice to the Licensor that such event shall have
ceased.
(h) The parties understand and agree that the provisions of this
Section 4.03 shall in no manner operate to limit any obligation of the
Contractor contained elsewhere in this Agreement.
(i) It is specifically understood and agreed that nothing herein
provided shall be construed as requiring the Operator to operate in
accordance with any designated marketing plan or system, which, except for
the maintenance of high standards of quality with respect to the Subject
Matter and its usage, the exercise of diligence and the performance in
accordance with the terms and conditions hereof, are left to the
determination of the Operator.
4.04 Disclosure and Training.
Promptly upon execution of this Agreement, and continuing throughout
the Term, the Licensor thereupon shall fully disclose to the Contractor all
Know-how, and any Patent Rights and Copyrights, intended to be utilized in
the practice of the methods of the Subject Matter for the Permitted Uses.
Promptly after the commencement of the Term, the Contractor, at its expense,
but with no fee or payment to the Licensor, shall require its principal sales
personnel to attend an installation demonstration and training session
conducted by the Licensor. Further, promptly after the commencement of the
Term (and in all events prior to any application by the Contractor of the
Subject Matter), the Contractor, at its expense, shall require an adequate
number of supervisory personnel who will be involved in installations
utilizing the Subject Matter to be trained by the Licensor specifically in
the utilization of the Subject Matter; and no such installations shall be
initiated by the Contractor unless and until such supervisory personnel are
certified by the Licensor as qualified to utilize the Subject Matter for the
Permitted Uses. The Licensor shall thereafter provide an adequate continuing
technical and engineering support capability to support the efforts of the
Contractor, the content, extent, and frequency of which shall be solely at
the discretion of the Licensor; except that the Licensor will conduct an
annual training seminar with respect to application of the Subject Matter in
the Permitted Uses, and the Contractor agrees to have, at its expense, at
least one supervisory representative in attendance. The Contractor shall not
be obligated to pay any fees or other charges to the Licensor in exchange for
the foregoing training. At the request of the Contractor and subject to
availability, the Licensor will provide a technician experienced in the
operation of the Subject Matter to assist and render advice to the Contractor
subject to payment by the Contractor of all reasonable direct traveling and
hotel expenses and a reasonable per diem rate which shall be agreed upon
between the parties at a location agreed upon by both parties.
4.05 Insurance
The Contractor agrees to procure at its expense, a policy or policies
of insurance from an insurance company or companies reasonably satisfactory
to the Licensor and Contractor's customers, providing coverage for the
operations of the Contractor, including product and completed operations,
with amounts not less than $1,000,000 single limit liability for injury to
persons and damage to property. The Contractor also agrees to have the
Licensor named as an additional named insured under the above described
policy or policies and to cause the Licensor to be furnished with a
Certificate of Insurance which shall contain a requirement that the Licensor
be notified 30 days prior to any cancellation or any reduction in coverage
limits. The insurance required above shall commence prior to the time the
Contractor commences operations under this Agreement and shall continue in
force throughout the Term.
4.06 Taxes; Compliance with Laws.
The Contractor shall promptly pay when due all taxes and assessments
against the premises or the equipment used in connection with the
Contractor's business, and all liens or encumbrances of every kind or
character created or placed upon or against any of said property, and all
accounts and other indebtedness of every kind incurred by the Contractor in
the conduct of said business, the failure to pay which would have a
materially adverse effect on the ability of the Contractor to perform its
obligations hereunder. The Contractor shall have the right to contest the
validity or amount of any assessment, tax, lien or encumbrance, provided that
the Contractor shall: (1) give the Licensor notice of its intention to
contest; (2) diligently prosecute such contest; and (3) at all times
effectively stay or prevent any official or judicial sale of such property or
any thereof by reason of the non-payment of any lien, encumbrance, tax, or
assessment. The Contractor shall comply with all applicable federal, state,
county and municipal laws and regulations, now in effect or hereinafter
enacted, including, without limitation, all environmental laws and all
occupational safety and health laws, the failure to comply with which would
have a materially adverse effect on the ability of the Contractor to perform
its obligations hereunder, and shall timely obtain any and all permits,
certificates, or licenses necessary for the full and proper conduct of its
business.
4.07 Standards and Inspection.
The Contractor shall maintain a high standard of quality in all
installations made and in all other activities under the Service Xxxx or
Trademark. To ensure the maintenance of such standards, the Licensor may
periodically inspect the Contractor's practice of the methods of the Subject
Matter at the Licensor's own expense and without unreasonable inconvenience
to the Contractor. The Contractor shall cooperate fully with the Licensor in
any such inspections in its practices of the methods of the Subject Matter
made by the Licensor. At all times the Contractor shall exert diligent
effort to practice the methods and techniques included in the Subject Matter
in accordance with the best available technical information and advice
received from the Licensor. The Contractor hereby agrees that failure by the
Licensor to exercise any right of inspection or any other right under this
Section 4.08 shall not operate subsequently to preclude exercise by the
Licensor of this right, and that failure of the Contractor to permit such
inspections or to maintain such standards shall constitute a material breach
of this Agreement and shall form the basis of termination hereof, but solely
in accordance with the notice and cure provisions of Article VI hereof.
ARTICLE V - IMPROVEMENTS; SECRECY
5.01 Commercialization of Improvements.
The Contractor recognizes and agrees that from time to time hereafter
the Licensor may, in its discretion, change or modify the Subject Matter
and/or adopt and use new or modified trade names, trademarks, service marks
or copyrighted materials with respect thereto, and that the Contractor, at
the election of the Licensor, will accept, use and display for the purpose of
this Agreement any such changes and such new or modified trade names,
trademarks, servicemarks or copyrighted materials, as if they were part of
this Agreement at the time of execution hereof. The Contractor shall furnish
such cooperation as such changes or modifications may reasonably require, and
do so within a reasonable time.
5.02 Title to Improvements.
(a) The Contractor hereby assigns, and shall cause its officers,
directors, agents, employees and representatives to assign, to the Licensor
the entire right, title and interest in and to any and all inventions, trade
secrets, improvements, plans and specifications (i) which the Contractor, or
its officers, directors, agents, employees or representatives, alone or in
conjunction with others, may make, conceive or develop during the Term; and
(ii) which constitute or derive from the Subject Matter. The Contractor
further agrees that it will promptly disclose, and cause its officers,
directors, agents, employees and representatives promptly to disclose, fully
to the Licensor the aforesaid inventions, trade secrets, improvements, plans
and specifications and will at any time render, and cause its officers,
directors, agents, employees and representatives to render, to the Licensor
such cooperation and assistance (excluding financial assistance) as the
latter may reasonably deem to be advisable in order to obtain copyrights or
patents, as the case may be, on or otherwise perfect or defend the Licensor's
rights in each such invention, trade secret, improvement, plan or
specification, including, but not limited to, the execution of any and all
applications for copyrights or patents, assignments of copyrights or patents
and other instruments in writing which the Licensor, its officers or
attorneys may deem necessary or desirable, and the aforesaid obligation shall
be binding on the assigns, executors, administrators and other legal
representatives of the Contractor.
(b) Without prejudice to any right or remedy available to the
Contractor against third parties, which shall be exercised in consultation
with and subject to the Licensor's approval, which approval shall not
unreasonably be withheld, the Contractor hereby constitutes and appoints the
Licensor the attorney for the Contractor, with full power of substitution,
for it and in its name and stead or otherwise, but at the sole expense and on
behalf of and for the benefit of the Licensor, to institute and prosecute
from time to time, any proceedings at law, in equity or otherwise, that the
Licensor may deem proper in order to assert or enforce any claim, right or
title of any kind in and to the inventions, trade secrets and improvements
described under paragraph (a) immediately preceding, to defend and compromise
any and all actions, suits or proceedings in respect of any said inventions,
trade secrets and improvements, and generally to do any and all such acts and
things in relation thereto as the Licensor shall deem advisable, including,
but not limited to, the execution of any and all applications, assignments
and instruments contemplated under such paragraph. The Contractor declares
that the appointment hereby made and the powers hereby granted are coupled
with an interest and shall be irrevocable by the undersigned.
(c) The Licensor hereby agrees that, during the Term, it shall be
obliged to disseminate at no charge to all of its licensees, for their mutual
benefit to be used subject to the terms of their respective license
agreements, such of its inventions, trade secrets, plans, specification,
improvements or modifications which are necessary to utilize the System.
5.03 Secrecy.
Each Receiving Party shall, and shall instruct all of its officers,
directors, employees, agents or representatives to, hold in absolute secrecy
and treat confidentially all Confidential Material of a Disclosing Party, and
not disclose, reproduce, publish, distribute or by any other means
disseminate, in whole or in part, any such Confidential Material, except as
shall be specifically necessary for the Receiving Party to disclose such
Confidential Material to its employees in order to exercise its rights under
this Agreement. Neither the Receiving Party nor any of its employees, agents
or representatives may in any manner use for its benefit or for the benefit
of others any such Confidential Material except as shall be specifically
necessary for the Receiving Party to exercise its rights authorized under
this Agreement.
5.04 Remedies.
(a) Without in any manner limiting the obligation of either party to
cause its officers, directors, agents, employees and representatives to
comply with the provisions of Section 5.02 and 5.03 hereof, as applicable,
each party shall cause each of its officers, directors and key employees to
execute an agreement in a form prescribed by Licensor and, except as set
forth in the next succeeding sentence, all other employees which have access
to Confidential Material or information constituting or derived from the
Subject Matter to execute an agreement in any form prescribed by Licensor.
(b) In view of the irreparable harm and damage which would be incurred
by a party in the event of any violation by the other party or any of its
officers, directors, employees, agents or representatives of any of the
provisions of Sections 5.02 or 5.03 hereof, as applicable, each party hereby
consents and agrees that, if it or any of its officers, directors, employees,
agents or representatives violate any such provision, the other party shall
be entitled to an injunction or similar equitable relief to be issued by any
court of competent jurisdiction restraining the said party and its employees,
agents and representatives from committing or continuing any such violation.
(c) The provisions of Sections 5.02 and 5.03 and 5.04 shall, in
accordance with their respective terms, survive the Term and this Agreement,
notwithstanding any termination or expiration thereof. Without limiting the
generality of any other provision hereof, each party shall enforce the
provisions of such sections insofar as they relate to its employees, agents
and representatives; provided, however, that neither party shall be liable
for the acts of its employees, agents and representatives which are not
within the scope of their employment.
ARTICLE VI - TERMINATION
6.01 Termination by Contractor.
The Contractor may terminate this Agreement at any time by service of
written notice to such effect on the Licensor 30 days in advance of the
effective date thereof and by complying with the applicable terms and
conditions of this Article VI. During such period after notice but prior to
actual termination, the Contractor shall not bid or accept any additional
jobs (except those outstanding bids with bid bonds that have not been
awarded) which will require the utilization of the Subject Matter from the
Licensor under the Patent Rights or the Know-How without the written consent
of the Licensor, which consent shall not unreasonably be withheld.
6.02 Termination by Licensor.
(a) This Agreement and the rights of the Contractor hereunder may be
terminated by the Licensor in the event the Contractor:
(i) becomes insolvent or a petition in bankruptcy is filed by
or against the Contractor and not removed within 20 days thereafter, or
a receiver is appointed for the Contractor; or
(ii) utilizes the Subject Matter in any application outside of
the Permitted Uses; or
(iii) fails to achieve the Performance Objectives described in
Section 4.03 hereof in a particular Contract Year, without any excuse
provided by this agreement;
(iv) fails to pay when validly due any sum owed to the Licensor
or any of its Affiliates arising from or in connection with this
Agreement and such failure shall continue for a period of 30 days after
written notice the Licensor to the Contractor; or
(v) fails to perform any other material term or condition of
this Agreement and fails to correct the same within 30 days after
written notice from the Licensor to the Contractor, or if not
reasonably capable of correction within such period, fails to commence
such correction within such period and thereafter fails to diligently
proceed to make such correction; or
(vi) fails to submit and deliver to the Licensor any written
report required under paragraph (a) of Section 3.05 hereof when due and
such failure shall continue for a period of 30 days after written
notice from the Licensor to the Contractor.
(b) In the event the Contractor fails to pay the License Fee or any
cross-over payment in accordance with Article III hereof, or fails to provide
any written report required under paragraph (b) of Section 3.05 hereof in
accordance with such provision and, in the case of the first such breach in
any calendar year, such failure shall continue for a period of 30 days after
written notice from the Licensor to the Contractor, then in any such event,
this Agreement shall automatically terminate.
(c) No termination under this Section 6.02 shall limit or affect any
other right or remedy of the Licensor, including the right to damages
resulting from the Contractor's breach.
6.03 Consequences of Expiration or Termination.
(a) Upon expiration or termination of this Agreement, the Contractor
shall promptly pay the Licensor all amounts then due under this Agreement,
terminate all use by it of any service xxxx, tradenames, trademark,
certification xxxx or corporate name that includes any of the forgoing words;
avoid all subsequent use of all service marks, tradenames, trademarks,
certification marks or corporate names likely to be confused with ULTRALINER
as well as all stationery, invoices, signs or other visual devices displaying
or otherwise associated with ULTRALINER; terminate all use of the Subject
Matter and the Licensor's Confidential Material, as well as the use and sale
of any products under any Patent Rights or Copyrights or the Know-how; and
assign to the Licensor free of charge, any and all rights and claims to any
and all rights arising from the use of ULTRALINER, or any combination
involving ULTRALINER, the above mentioned Corporate rights in the Territory;
and return to the Licensor all Confidential Material in its possession, and
any copies which it has made of the same. Following termination, the
Contractor shall continue to be obligated to provide all after sales services
for which it has theretofore contracted, including the honoring of all
contract warranties. Should the Contractor fail to fulfill such obligations,
and should the Licensor, in its reasonable discretion after notice to the
Contractor, whether for reason of preserving product goodwill or otherwise,
choose to perform any such obligations (this paragraph in no way to be
construed as an assumption by the Licensor of any obligations for which it is
not specifically contractually responsible), then the Contractor shall
promptly reimburse the Licensor the reasonable charges issued by the Licensor
to the Contractor of performing such obligations of the Contractor. If the
Contractor is a corporation having the word ULTRALINER as a part of its
corporate name, the Contractor shall, within 60 days of termination, amend
its corporate name to remove the word ULTRALINER therefrom.
(b) Each party hereto shall promptly pay to the other party all
damages, costs and expenses, including reasonable attorney's fees, incurred
by such other party by reason of default on the part of such party hereto,
whether or not such default occurred prior to or subsequent to the
termination or expiration of this Agreement, and said sum shall include all
costs and expenses, including reasonable attorney's fees, incurred by such
other non-defaulting party in obtaining injunctive or other relief to enforce
the provisions of this Agreement. Notwithstanding the foregoing, in any
dispute under this agreement, the ultimate prevailing party shall be entitled
to recover from the other party its reasonable attorney's fees. No right or
remedy herein conferred upon or reserved to either party is exclusive of any
other right or remedy herein or by law or equity provided or permitted; but
each shall be cumulative of every right or remedy given hereunder. In
addition to whatever remedy or remedies a party may have by way of damages
for violation of the provisions of this Agreement and/or expiration or
termination of the same, such party shall also have the right to injunctive
relief to enforce the provisions of this Agreement.
(c) In the event of the termination of this Agreement by the Licensor
or Contractor as a consequence of any event described under sub-paragraphs
(i), (iii), or (iv) or Paragraph (a) of Section 6.02 or 6.01 hereof, the
Licensor shall thereafter assist the Contractor in disposing of any Materials
or Apparatus then in the possession of the Contractor, including but not
limited to the sale of excess inventory to other qualified Licensees, subject
in such case to the constraints of the Licensor's business and its other
obligations.
(d) Licensor shall supply to the Contractor, at the current rates and
prices, any and all materials or apparatus Contractor may need to complete
any outstanding projects or projects that may have been bid prior to the
termination, but not awarded, and a bid bond was provided by the Contractor,
provided the Contractor is not in default of any provision of Section 6.02.
ARTICLE VII - WARRANTIES; INDEMNIFICATION
7.01 Limited Subject Matter Warranty
(a) The Licensor represents and warrants that the Product can
successfully rehabilitate many types of sewer (sewerage and storm) and water
pipelines within the Permitted Uses when installation is properly performed.
Every reasonable precaution will be taken by the Licensor in compiling all
data, and offering instructions in the methods of use of the Product
purchased from the Licensor for operation hereunder, to assure compliance
with the Licensor's exacting standards and that the use of the Subject Matter
for the Permitted Uses in accordance with the terms and conditions of the
Agreement maintains a high standard of quality. To the best of the
Licensor's knowledge, all information given will be correct in all material
respects. However, it is impossible to anticipate every possible variation
in the manner of use or the conditions under which the Contractor will apply
the Product and Licensor makes no warranty or representation of results which
the Contractor will attain, and, except as stated above, shall under no
circumstances be held responsible for any such results that occur as a
consequence of a departure from the instructions provided by the Licensor or
from negligence or malfeasance on the part of the Contractor.
(b) Licensor does warrant that the Product will comply with Licensor's
standard specifications and will perform in the Permitted Uses as described
herein and for a period of one year, or as may be required by customers for a
particular project, from the date of sale will not fail in the performance in
such uses on account of manufacturing defects. In the event of any such
failure, the liability of the Licensor shall be limited to the replacement of
the product that has failed.
THE FOREGOING WARRANTY IS IN LIEU OF AND EXCLUDES ALL OTHER WARRANTIES
NOT EXPRESSLY SET FORTH HEREIN, WHETHER EXPRESSED OR IMPLIED BY OPERATION OF
LAW OR OTHERWISE, INCLUDING ANY IMPLIED WARRANTIES OF MERCHANTABILITY OF
FITNESS FOR ANY PURPOSE OTHER THAN AS IS CONTEMPLATED BY THIS AGREEMENT.
LICENSOR SHALL NOT BE LIABLE FOR EXEMPLARY, PUNITIVE, SPECIAL,
INCIDENTAL OR CONSEQUENTIAL DAMAGES, INCLUDING BUT NOT LIMITED TO LOSS OF
PROFITS OR REVENUES, LOSS OF USE OF GOODS OR EQUIPMENT, DAMAGE TO PROPERTY,
COST OF CAPITAL, COST OF SUBSTITUTION OF GOODS OR COVER, LIQUIDATED DAMAGES,
CLAIMS BY PURCHASERS FROM CONTRACTOR. LICENSOR'S LIABILITY TO CONTRACTOR IS
LIMITED TO REPLACEMENT OF GOODS NOT COMPLYING WITH THE AGREEMENT, OR, AT
LICENSOR'S ELECTION, TO THE REFUNDING OR CREDITING OF THE PRICE PAID FOR THE
GOODS, WHETHER THE CLAIM ASSERTED IS IN CONTRACT OR TORT.
The Licensor makes no representation nor warranty that ULTRALINER PVC
ALLOY (Trademark) or ULTRALINER PVC ALLOY PIPELINER (Trademark) or ULTRALINER
PVC ALLOY PIPELINER SYSTEM (Trademark) is available for use as a service
xxxx, tradename, trademark, and/or certificate xxxx in the United States.
Further, except as expressly set forth in this Article VII, the
Licensor shall not be held responsible for use by the Contractor of any
Product, Materials, Apparatus, Know-how, Patents Rights or Confidential
Material in such manner as to infringe any patent, trademark or copyright
owned by another. The Licensor warrants that it has rights to the patents
pertaining to the Materials subject to no lien, encumbrance or charge
whatsoever.
7.02 Forbearance by Contractor.
The Contractor expressly covenants that during the Term and after the
expiration or termination thereof, the Contractor shall not, directly or in-
directly, contest or aid in contesting the validity, or the ownership or
licensing by the Licensor, of the Subject Matter, the Know-how, any Patent
Rights and any Copyrights, as well as any trademarks, service marks, trade
names, and copyrights described under Section 2.02, or the limitation of the
Contractor's right with respect to the Subject Matter by the terms and
provisions of this Agreement. The Contractor agrees promptly to notify the
Licensor of any claim, demand, suit or litigation based upon or arising from,
or of any attempt by any other person, firm or corporation, to use the
Subject Matter, the Know-how, the Patent Rights, any Copyrights or any such
other service and/or trademarks, tarde names, copyrights licenses hereunder
without the consent of the Licensor, or any other Confidential Material or
trademark, servicemark, symbol, trade name, copyright or variation thereof,
in which the Licensor has a proprietary interest. The Contractor agrees also
promptly to notify the Licensor of any material litigation instituted by the
Contractor, or by any person, firm, corporation or governmental agency
against the Contractor. In the event the Licensor, pursuant to the terms of
this Agreement hereinafter set forth, undertakes the defense or prosecution
of any litigation except in the case of the Contractor, the Contractor agrees
to execute any and all documents and do such acts and things which may, in
the opinion of counsel for the Licensor, be necessary or of assistance to
carry out such defense or prosecution, either in the name of the Licensor or
in the name of the Contractor, as the Licensor shall elect and to cooperate
with the Licensor in its efforts to protect the Copyrights, as well as any
trademarks, service marks, trade names, and copyrights described under
Section 2.02.
7.03 Defense of Patent Rights and Trademarks.
Notwithstanding any other provision herein, the Licensor does hereby
agree, at its expense, to defend Patent Rights, if any, and the servicemarks
and trademarks herein described by such means as it in its sole discretion
may determine appropriate, including but not limited to, patent or trademark
infringement suits, as the case may be.
The Licensor reserves, however, the exclusive right to determine
whether a patent infringement has occurred, and whether a trademark
infringement has occurred, and whether litigation or other action is
appropriate or feasible. Subject to approval by the Licensor and control by
the Licensor of any and all proceedings initiated as a result thereof, the
Contractor, with its own counsel reasonably acceptable to the Licensor, may,
at its option and expense, take steps to defend the Patent Rights, any
service xxxx or trademark and the Contractor's rights thereunder.
7.04 Indemnification by Contractor.
The Contractor agrees to indemnify, defend and hold the Licensor
harmless from any and all claims, including, without limitation, for bodily
injury (including death), personal injury and damage to property of the
Contractor, the Licensor and/or others, which arise from the alleged
negligence or malfeasance of the Contractor or from the existence or use of
Materials and/or Apparatus acquired from sources other than the Licensor or
which are produced by the Contractor.
ARTICLE VIII - LIMITED ARBITRATION PROCEDURES
8.00 Limited Arbitration Procedures.
Any controversy or claim arising out of or relating to the subject
matter of this contract, or the breach thereof, shall be submitted to
arbitration in accordance with the rules of the American Arbitration
Association, and the results thereof shall be binding on the parties.
ARTICLE IX - INDEPENDENT CONTRACTORS
9.00 Independent Contractors.
This Agreement does not constitute either party as an agent, legal
representative, joint venturer, partner, employee, or servant of the other
party for any purpose whatsoever; and it is understood between the parties
hereto that each party is an independent contractor and is in no way
authorized to make any contract, agreement, warranty or representation on
behalf of the other party, or to create any obligation, express or implied,
on behalf of the other party. The Contractor shall prominently display in
its place of business a certificate from the Licensor stating that said
business is operated by the Contractor as a licensee of the Licensor, and not
as an agent thereof.
ARTICLE X - TRANSFER OR ASSIGNMENT OF LICENSE.
10.00 Transfer or Assignment of License.
Subject to the requirements of the immediately succeeding sentence, the
Contractor, if not in default under this Agreement, shall have the right to
sell and assign its rights hereunder.
This Agreement shall be binding upon and inure to the benefit of the
parties hereto and their respective successors and assigns, with the specific
understanding and requirement that the Contractor, without the Licensor's
prior written consent, which consent shall not unreasonably be withheld,
shall not, by operation of law or otherwise, sell, assign, transfer, convey,
subcontract, give away, or encumber to any person, firm or corporation, its
interest in this Agreement, or its interest in the license granted hereby,
nor offer, permit, or suffer the same. Any such assignment permitted by the
Licensor to any Affiliate of the Contractor shall be made on the express
condition that the assignor guarantees the performance of its assignee
strictly in accordance with the terms and provisions hereof. In the event
that the Contractor is a corporation or partnership, should beneficial
ownership of an amount of the outstanding capital stock or other interest, as
the case may be, or other indicia of ownership in the Contractor be conveyed
so as to effect a Change in Control of the Contractor, whether by sale,
conveyance, operation of law or otherwise, without have first obtained the
written consent of the Licensor to transfer the license, which consent shall
not unreasonably be withheld, the Licensor shall at its option have the right
to immediately terminate this Agreement or enter into a new Agreement with
the Change in Control. Any purported assignment, transfer, conveyance or
subcontract of this Agreement not having the aforesaid consent shall be null
and void and shall constitute a material default hereunder. If any event has
occurred or fact or circumstance exists which, but for the giving of notice
passage of time or otherwise, would constitute a default hereunder, the
Contractor shall so advise any proposed transferee hereunder.
Upon approval of any assignment, transfer, or conveyance of the
Agreement by the Licensor, the assignment, transfer, or conveyance shall be
completed without additional License fees or other costs being assessed to
the Contractor.
ARTICLE XI - MISCELLANEOUS
11.01 Notices.
Any notice required or permitted to be given or served upon either
party hereto pursuant to this Agreement shall be sufficiently given or served
if sent to such party by United States registered mail, postage prepaid
addressed to such party as set forth below is signature at the foot hereof
and/or to such other address as it shall designate by written notice to the
other party.
11.02 Successors and Assigns.
This Agreement shall be binding upon and inure to the benefit of the
parties hereto and their respective successors and assigns, subject to the
terms set out in Article X.
11.03 Exclusivity of License.
If, despite the Licensor's efforts to maintain the exclusivity of the
license granted hereunder, such exclusivity should be terminated for any
reason whatsoever, and the Agreement is continued, but amended, the
Contractor is nevertheless obligated to comply in full with each and every
term and condition of this Agreement, including but not limited to, the
maintenance of high standards of quality and service.
11.04 Exclusions.
It is the intention of the Licensor and the Contractor that the
provisions of this Agreement shall be enforced to the fullest extent
permissible under the laws and public policies of each jurisdiction in which
enforcement is sought, but that the unenforceability of any provisions of
this Agreement shall not render unenforceable, or impair, the remainder of
this Agreement. In the event that any one or more of the provisions of this
Agreement is, or are, held to be invalid, it is agreed between the parties
that, if legally practical said provision or provisions shall be considered
never to have been contained herein and this Agreement shall otherwise
continue in force and effect. To the extent that the provisions of this
Agreement provide for periods of notice less than those required by
applicable law, or provide for termination, cancellation, non-renewal or the
like other than in accordance with applicable law, such provisions shall, to
the extent such are not in accordance with applicable law, not be effective,
and the Licensor shall comply with applicable law in connection with each of
these matters. References in this Agreement to the materiality of any terms
hereof are not intended to be exhaustive of all such material terms, and
shall not preclude any other provision from construction as or constituting a
material provision hereof.
11.05 Entire Agreement.
This Agreement constitutes the entire agreement between the parties
hereto with respect to the Subject Matter hereof and supersedes all prior
oral and written understandings and agreements between the parties hereto
concerning the Subject Matter. The article headings of this Agreement are
for convenience only and have no other significance. The Provisions of this
Agreement shall not be waived, modified or amended, except by a subsequent
writing signed by both parties.
11.06 Gender.
Words of the neuter gender utilized in this Agreement shall be deemed
to be of the masculine or feminine gender where the context requires. Words
of the singular number utilized in this Agreement shall be deemed to be
plural where the context requires and vice versa.
11.07 Applicable Law.
This Agreement shall be governed by and construed in accordance with
the laws of the State of Alabama.
11.08 Counterparts.
This Agreement may be executed in counterparts, each of which shall be
deemed as original and both of which or a photocopy thereof shall constitute
one and the same agreement.
11.09 Standard of Dealing.
The parties shall perform such further acts and deeds as shall be
necessary to effectuate the purposes of this Agreement and shall, in their
respective performance hereunder, at all times deal in the utmost good faith
with each other.
11.10 Most Favored Licensee.
In the event the Licensor subsequently enters into any license
agreement for the Subject Matter in the Permitted Uses within the United
States or its territories, and such license contains terms materially more
favorable to the licensee thereunder than are contained herein with respect
to the Contractor, then, at the option of the Contractor, this agreement
shall be amended to incorporate such more favorable terms.
IN WITNESS HEREOF, THE PARTIES HERETO HAVE CAUSED THIS CONTRACTOR LICENSE
AGREEMENT TO BE SIGNED AND DELIVERED BY THEIR AUTHORIZED REPRESENTATIVES ON
THE DATE SET OUT IN THE OPENING PARAGRAPH.
ATTEST: ETS WATER AND WASTE
MANAGEMENT, INC., dba
XXXXXX X. XXXXXX COMPANY
By: s/Xxxxx X. Xxxxx By: s/Xxxxxxx X. Xxxxxx
---------------------- ------------------------
Xxxxx X. Xxxxx Xxxxxxx X. Xxxxxx
Its: Exec. V. P. Its: President
---------------------- -----------------------
ATTEST: ULTRALINER, INC.
By: By:
-------------------- ---------------------------
Xxxxxxx X. Xxxxx Xxxxxx X. Xxxxxxx
Its: Its:
-------------------- ---------------------------
Secretary President
STATE OF VIRGINIA
CITY OF RICHMOND
I, the undersigned Notary Public, do hereby certify that on this 5th day of
February, 1996, personally appeared before me Xxxxxxx X. Xxxxxx who, being by
me first duly sworn, declared that he is the President, that he signed the
foregoing CONTRACTOR LICENSE AGREEMENT as President of ETS Water and Waste
Management, Inc., dba Xxxxxx X. Xxxxxx Co., and with full authority, executed
same voluntarily for and as the act of said Corporation.
s/Xxxxx X. Xxxxx
--------------------------
Notary Public
(SEAL) My Commission Expires: May 31, 0000
XXXXX XX XXXXXXX
XXXXXXX XXXXXX
I, the undersigned Notary Public, do hereby certify that on this day
of , 199 , personally appeared before me, Xxxxxx X. Xxxxxxx
and Xxxxxxx X. Xxxxx, who, being by me first duly sworn, declared that they
are the President and Secretary of ULTRALINER, Inc., that they signed the
foregoing CONTRACTOR LICENSE AGREEMENT as President and Secretary of the
corporation, and with full authority, executed same voluntarily for and as
the act of said Corporation.
--------------------------------
Notary Public
(SEAL) My Commission Expires:
---------
ADDENDUM TO
CONTRACTOR LICENSE AGREEMENT
THIS ADDENDUM TO CONTRACTOR LICENSE AGREEMENT is made and entered into as of
the date set out at the foot hereof, by and between ULTRALINER, INC.
(Licensor), and ETS WATER and WASTE MANAGEMENT, INC., dba XXXXXX X. XXXXXX
COMPANY (Contractor).
RECITALS
1. The parties hereto have entered into a CONTRACTOR LICENSE AGREEMENT of
even date herewith, which is hereinafter described by the term "Agreement".
2. The parties have agreed to modify certain of the terms and conditions of
the Agreement and desire to memorialize those changes in writing.
3. For the consideration described in the Agreement and in the following
provisions, the parties hereto do enter into this ADDENDUM TO CONTRACTOR
LICENSE AGREEMENT.
AMENDMENTS AND ADDITIONAL TERMS AND CONDITIONS
1. Section 1.20 is amended to add as additional Permitted Uses, the repair,
rehabilitation, or reconstruction of liquid carrying conduits and/or other
use to which the Licensor and Contractor might agree.
2. Section 1.28 is amended to change the term of the Agreement from three
years to five years.
3. Section 2.04(b) is amended to read as follows, italics indicating the
added or amended language:
(b) The Contractor is granted the right to extend the termination date
for five years provided that the Contractor is not in default on any of
its obligations to Licensor under the terms hereof or otherwise created
and the financial condition of the Contractor, as interpreted in good
faith by the Licensor under the Contract and as is indicated by
Contractor's then current bonding capacity, is adequate to allow
Contractor to perform its obligations hereunder during the extended
term.
4. Section 4.05 is amended to read as follows, italics indicating amended or
added language:
4.05. Insurance. The Contractor agrees to procure at its expense, a
policy or policies of insurance from an insurance company or companies
reasonably satisfactory to the Licensor, providing coverage for the
operations of the Contractor, including product and completed
operations, with amounts not less than $1,000,000 single limit
liability for injury to persons and damage to property. The Contractor
also agrees to have the Licensor named as an additional named insured
under the above described policy or policies and to cause the Licensor
to be furnished with a Certificate of Insurance which shall contain a
requirement that the Licensor be notified 30 days prior to any
cancellation or any reduction in coverage or limits. The insurance
required above shall commence prior to the time the Contractor
commences operations under this Agreement and shall continue in force
throughout the Term. This requirement may be satisfied in part by any
insurance procured by Contractor in compliance with its contract with
the owner of any project that utilizes Product.
5. Section 6.01 is amended to reduce the time for prior notice of
termination by the Contractor from 180 days to 30 days.
6. The terms of this ADDENDUM TO CONTRACTOR LICENSE AGREEMENT are to be
effective as of the effective date of the CONTRACTOR LICENSE AGREEMENT.
7. All terms and conditions of the CONTRACTOR LICENSE AGREEMENT that are not
specifically amended herein, remain in full force and effect.
IN WITNESS HEREOF, ULTRALINER, INC. and ETS WATER AND WASTE MANAGEMENT, INC.,
dba XXXXXX X. XXXXXX COMPANY have caused this ADDENDUM TO CONTRACTOR LICENSE
AGREEMENT to be executed and deliver by their authorized representatives on
the 31st day of January, 1996.
WITNESS: ULTRALINER, INC.
BY
---------------------- -------------------------------
XXXXXX X. XXXXXXX, ITS PRESIDENT
WITNESS: ETS WATER AND WASTE MANAGEMENT, INC.
dba XXXXXX X. XXXXXX COMPANY
s/Xxxxx X. Eatsey BY s/Xxxxxxx X. Xxxxxx
---------------------- --------------------------------
Xxxxxxx X. Xxxxxx
ITS President
-------------------------
