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EXHIBIT 10.37
LICENSE AGREEMENT
THIS AGREEMENT is made this 28th day of May, 1993 (the "Effective
Date"), by and among PACKAGED ICE, INC., a Texas corporation ("PI") and
HOSHIZAKI ELECTRIC CO., LTD., a Japanese corporation, and HOSHIZAKI AMERICA,
INC., a Georgia corporation (collectively, "Hoshizaki").
WHEREAS, PI and Hoshizaki entered into a Settlement and Release
Agreement, dated as of the date hereof (the "Settlement Agreement"), under
which Hoshizaki agreed to execute this Agreement to grant to PI certain rights
relating to the PI Bagger (hereinafter defined); and
WHEREAS, PI desires to obtain from Hoshizaki, and Hoshizaki is willing
to grant to PI, a license relating to the PI Bagger in accordance with the
terms and conditions herein;
NOW, THEREFORE, for and in consideration of the premises, and other
good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, PI and Hoshizaki hereby agree as follows:
1. Definitions. As used in this Agreement:
(a) "PI Bagger" means (a) a device or machine and related
components which automatically bags and maintains ice for
retail sale, as reflected in PI's United States Patent No.
5,109,651, (b) any bagger which incorporates inventions
protected by PI's patent rights, (c) the prototype bagger
models manufactured by Hoshizaki in 1991 designated "B" type
and "C" type, and (d) any and all past and future improvements
to any of the foregoing.
(b) "Proprietary Information" means any and all information
relating to the PI Bagger, including without limitation
patents, patent applications, engineering information,
drawings, designs, technical data, know-how, trade secrets,
processes and methods, specifications, parts lists, operating
instructions and other manufacturing or technical information,
in whatever form, that was conceived or developed by Hoshizaki
prior to the Effective Date, or information which is conceived
or developed thereafter by Hoshizaki which relates to patents
or patent applications related to the PI Bagger; provided,
however, the term "Proprietary Information" does not include
any such information, data or other material if the same is:
(1) In the public domain;
(2) Publicly disclosed by a third party, with the prior
written approval of Hoshizaki, who received such
information from Hoshizaki; or
(3) Obtained lawfully from a source other than Hoshizaki.
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Other terms used herein are defined in the context in which
they are used and will have the respective meanings there
indicated.
2. Grant of Rights and License. Hoshizaki hereby grants to PI, and PI
hereby accepts from Hoshizaki, a perpetual, irrevocable, exclusive and
paid-up license to:
(a) Use the Proprietary Information to make, use, sell
and distribute the PI Bagger;
(b) Manufacture, use, sell and distribute the PI Bagger
throughout the world;
(c) Authorize other persons or entities to act as
subcontractors or sublicensees for PI to use the
Proprietary Information and to manufacture, use, sell
and distribute the PI Bagger provided that PI shall
cause each such subcontractor or sublicensee to agree
to maintain the confidentiality of any Proprietary
Information; and
(d) In connection with this grant of license, PI shall
protect, defend, indemnify and hold Hoshizaki
harmless from and against any and all claims,
actions, proceedings, damages, costs, expenses and
other losses and liabilities, consequently, directly
or indirectly incurred (including without limitation
attorneys' fees) as a result of, arising out of, or
connected with any claims of infringement or alleged
infringement of any third party's patent or other
rights, by the PI Bagger from the distribution, use,
marketing or sale of the PI Bagger by PI;
3. Improvements. In the event any improvements, enhancements or
modifications are made by PI to the PI Bagger after the Effective Date
of this Agreement, PI shall own such improvements, enhancements or
modifications.
4. Severability. The provisions of this Agreement are severable, and in
the event that any provisions of this Agreement are determined to be
invalid or unenforceable under any controlling body of the law, such
invalidity or unenforceability will not in any way affect the validity
or enforceability of the remaining provisions hereof.
5. Relationship of Parties. It is the intention of the parties that the
relationship existing among them be that of independent contractors.
Nothing herein contained or done pursuant hereto will constitute any
party or its agents or employees, the legal representative, agent or
employee of the others for any purpose whatsoever and these
individuals or entities will have no right, power or authority to
assume, create or incur, in writing or otherwise, any expense,
liability or obligation in the name or on behalf of the others.
6. Governing Law. This Agreement shall be construed, governed, and
interpreted in
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accordance with the laws of the State of Texas, United States of
America. The English language version of this Agreement shall be the
official text hereof, notwithstanding any translation of this
Agreement in other language.
7. Entire Agreement. This Agreement constitutes the entire agreement and
understanding between the parties with respect to its subject matter
and supersedes all prior oral or written representations,
understandings or agreements with respect to the subject matter
hereof; provided, however, that the terms and conditions of the
Settlement Agreement shall remain to be effective to the extent that
they are not inconsistent with those of this Agreement. No
modification to this Agreement will be binding upon the parties hereto
unless acknowledged in writing by their duly authorized
representatives.
8. Assignment. This Agreement shall be binding upon and shall inure to
the benefit of the parties hereto and their respective successors and
assigns; provided, however, this Agreement may not be assigned by any
party without the written consent of the other party hereto.
Notwithstanding anything to the contrary herein contained, an
assignment of this Agreement to an affiliate of a party, or an
assignment of this Agreement in connection with the sale by a party of
all or substantially all of its assets, shall not require the consent
of the other party hereto. For the purposes of this Agreement, an
"affiliate" of a party means any person which, directly or indirectly,
controls, is controlled by, or is under common control with, such
person. The term "control" (including, with correlative meaning, the
terms "controlled by" and "under common control with"), as used with
respect to any person, means the possession, directly or indirectly,
of the power to direct or cause the direction of the management and
policies of such person, whether through the ownership of voting
securities, by contract or otherwise.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives identified below as of the
Effective Date.
PACKAGED ICE, INC. HOSHIZAKI ELECTRIC CO., LTD.
By: By:
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Name: Name:
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Title: Title:
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HOSHIZAKI AMERICA, INC.
By:
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Name:
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Title:
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