EXHIBIT 10.3
GAIA-TIETEK
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LICENSE AGREEMENT
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(APPLICABLE HARD GOODS)
This License Agreement (hereinafter, this "Agreement") is made and entered
into as of December ____, 1995 (the "Effective Date") by and between Gaia
Technologies, Inc., a Texas corporation (hereinafter "Licensor"), and TieTek,
Inc., a Texas corporation (hereinafter "Licensee").
W I T N E S S E T H:
WHEREAS, Licensor is the owner of Technology (as that term is defined
below) relating to the manufacture of Products (as that term is defined below);
WHEREAS, pursuant to the terms of that one certain Asset Purchase Agreement
of even or approximate date herewith executed by and among Licensor and other
parties, Licensor is required to grant to Licensee a license of the Technology;
NOW, THEREFORE, in consideration of the foregoing, the mutual covenants and
agreements hereinafter set forth, the sum of $10.00, and other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
Parties (as that term is defined below) hereby agree as follows:
ARTICLE I
Definitions
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The following terms shall have the following meanings for purposes of the
Agreement:
1.1 "Affiliate" means "affiliate" and "insider" as those terms are
defined in Section 24.002 of the Texas Business & Commerce Code, except that the
term "debtor" shall be substituted with "Payor".
1.2 "Applicable Hard Goods" shall mean (a) those Products which take the
form of oil field mats, marine structures, railroad ties, and other Products all
having advanced structural properties derived from or growing out of Technology
used to produce railroad cross-ties, and (b) roofing materials. "Applicable
Hard Goods" does not include air conditioning pads.
1.3 "Area of Use" shall mean the entire Universe.
1.4 "Equipment" shall mean that equipment now or hereafter designed,
engineered, acquired, created or employed for the implementation or practice of
the Technology or Improvements, including any prototypes thereof.
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1.5 "Improvements" shall mean additions to or modifications of the
Technology, including, without limitation, additions to or modifications of (a)
the methods of manufacturing the Products, (b) the methods of use of the
Equipment or the Products, (c) the design of the Equipment or the Products, (d)
the construction or fabrication of the Equipment or the Products, and/or (e) the
operating procedures which improve the manufacture, design, or operation of the
Equipment or the Products. The term "Improvements" includes any patent rights
associated with any Improvement.
1.6 "Parties" shall mean both Licensor and Licensee and "Party" shall mean
either of them.
1.7 "Patents" means (a) United States Patent Numbers 4,191,522, 4,003,408,
4,168,799 and 4,110,420, together with any modifications, Improvements,
corrections or substitutions thereto or thereof, and (b) any new patent
applications, newly issued patents, patents pending or patent applications, in
any way associated therewith.
1.8 "Products" means any tangible good or thing.
1.9 "Research and Development" shall mean those activities involved in (a)
the testing and evaluation of the Technology and the Products and (b) the
development of Improvements.
1.10 "Technology" shall mean (a) the Patents, (b) the trade secrets,
design, instrumentation, technology, method and know-how developed, conceived,
owned, acquired and/or reduced to practice by Licensor for materials, processes
and methods (including Equipment) to be used in the production, manufacture or
refinement of Products, (c) any information, data, or experience relating to the
foregoing, including such information, data, or experience relating to the
operation and maintenance of the Equipment and the method or procedural steps
followed to practice anything described in subparts (a), (b) or (d) hereof, and
(d) any Improvements.
ARTICLE II
Grant of License
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Licensor does hereby grant to Licensee the following (collectively, the
"License"): (a) a non-exclusive license to incorporate the Technology and all
Improvements into one or more manufacturing facilities owned and operated by
Licensee in the Area of Use, (b) an exclusive license to use the Technology to
manufacture Applicable Hard Goods, (c) an exclusive license to market,
distribute, and sell Applicable Hard Goods, (d) a non-exclusive license to
engage in research and development with respect to the Technology, and (e) an
exclusive license to otherwise exploit the Technology in the Area of Use for
purposes of manufacturing, using, marketing, and selling Applicable Hard Goods.
The exercise of all aspects of the License shall be at Licensee's sole cost,
risk and expense.
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ARTICLE III
Technical and Development Activities
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3.1 Exchange of Information. Licensor and Licensee hereby mutually
agree that, throughout the term of this Agreement, both Parties shall freely
exchange all information, data, and results arising from research and
development and the manufacture or sale of Applicable Hard Goods which they may
develop or which may become known to them, insofar as such activities are
applicable to the production of Applicable Hard Goods.
3.2 Disclosure and Ownership of Improvements. Licensor and Licensee
agree to make prompt disclosure to each other of any Improvements, as soon as
practicable, but in any case, not more that 90 days following the commencement
of activities which lead or may lead to Improvements. Licensor and Licensee
mutually agree that in the event that Licensee or Licensor (or any Affiliate of
Licensor) shall develop Improvements on the Technology during the term of this
Agreement, such Improvements shall be promptly disclosed to the other party and
any patents which may mature therefrom shall be owned by Licensor. Licensee
shall cause any such Improvements, including any patents thereon, to be assigned
to Licensor, who, according to the terms of the License, is required to assign
such Improvements to the Licensor. Upon (a) the assignment of any Improvement,
including any patents thereon, developed by Licensee to Licensor, or (b)
Licensor's disclosure of any Improvements developed by Licensor (or its
Affiliate), Licensee shall have the option to acquire, from time to time, for
the sum of $10.00, the license to use such Improvements in the same manner and
subject to the same restrictions as the License. Licensor shall take all
necessary action under the License so that such Improvements are treated as a
part of the License. Upon Licensee's exercise of option described above, the
licenses so acquired shall be deemed to be included within the defined term
"License," and shall be governed by the terms of this Agreement without
additional payment. Notwithstanding anything contained in this Agreement to the
contrary, Licensee shall have the right, but not the obligation, to patent any
Improvement so acquired.
ARTICLE IV
Restriction on Licensor
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Licensor shall not incorporate or use the Technology, nor license to
others any rights to the Technology, for purposes of manufacturing, marketing,
distributing, selling or otherwise exploiting Applicable Hard Goods. Licensee
shall have the exclusive right to manufacture Applicable Hard Goods using all or
any part of the Technology.
ARTICLE V
Indemnification Obligations of Licensee
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Licensee agrees to indemnify and defend Licensor against any and all
liabilities and/or damages that may be incurred as a result of Licensee's use of
the Technology under this Agreement. Licensee agrees to hold Licensor harmless
for and defend Licensor from any injuries or claims made by virtue of Licensee's
employees', subcontractors', distributors' or agents' manufacture, use, or sale
of Applicable Hard Goods.
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ARTICLE VI
[INTENTIONALLY DELETED]
ARTICLE VII
Confidentiality
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During the performance of each Party's obligations under this
Agreement, each Party may obtain information of various types from the other
Party. Each Party agrees that all such information, whether technical,
financial, business or other nature shall be held in confidence and not used to
the detriment of the disclosing Party by the non-disclosing Party nor disclosed
to any third party by the non-disclosing Party. This Article VII shall not
apply to any information which (a) can be shown by a Party to have been in that
Party's possession prior to the date hereof, (b) is now or hereafter (by
operation of law) becomes information in the public domain, (c) can be shown by
a Party to have been received on a non-confidential basis from a third party who
did not acquire same, directly or indirectly, from the other Party, (d) can be
shown by a Party to have been developed without access to any confidential
information otherwise covered by this Article VII, (e) is required to be
disclosed as a matter of law, or (f) is required to be disclosed pursuant to a
written agreement between the Parties.
ARTICLE VIII
Default; Remedies; Termination
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8.1 Default. Upon the breach of or default under any term of this
Agreement by any Party, the non-defaulting Party may give the defaulting Party
written notice of such default or breach. After such notice, the defaulting
Party shall have thirty (30) days within which to cure such default or breach.
If such default or breach is not cured within said thirty day period, then, the
non-defaulting Party shall have the right at any time following such thirty (30)
day period to submit the issue of whether a default has occurred to mediation
(or, if necessary, arbitration) as provided in Article X of this Agreement, and
seek an award for damages relating to such default or breach.
8.2 Breach of Confidentiality Provisions. In the event that either
Party knows of a breach of Article VII hereof or has a reason to believe a
breach of such Article VII is imminent, then such Party shall, in addition to
all other remedies available to it under this Agreement, at law, or in equity,
be entitled to an immediate temporary restraining order and preliminary
injunction until the rights of such party, can be finally determined by a trial
on the merits.
8.3 Termination. This License shall be irrevocable and perpetual,
and may be terminated only by the express written agreement of the Parties.
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ARTICLE IX
Records
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Both Parties shall maintain accurate records on Research and
Development and the manufacture of Applicable Hard Goods. Each Party shall
provide to the other Party timely summaries of such records to keep each other
informed of such Research and Development as required by Paragraph 3.1 hereof.
ARTICLE X
Settlement of Disputes
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10.1 Mediation. In the event either of the Parties believes the
other has committed a breach of this Agreement or the parties cannot agree on an
interpretation of one or more provisions of this Agreement, the parties agree to
submit same to mediation pursuant to the terms and conditions of the alternative
dispute resolution system of Tex. Civ. Prac. & Rem. Code Xxx. Sections 152.001 -
154.004. If mediation does not permit the Parties to resolve the dispute
between them, then the Parties agree to submit it to binding arbitration in
accordance with Paragraph 10.2.
10.2 Arbitration. Any controversy or claim arising out of or
relating to this Agreement, or the breach thereof, which cannot otherwise be
resolved between the parties shall be settled by arbitration in Houston, Texas
in accordance with the Commercial Arbitration Rules of the American Arbitration
Association and judgment upon the award rendered by the Arbitrator(s) may be
entered in any court having jurisdiction thereof. The award rendered by the
Arbitrator(s) may include an award of attorney's fees.
ARTICLE XI
Miscellaneous
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11.1 Governing Law. The construction and interpretation of this
Agreement shall be in accordance with the laws of the State of Texas and the
applicable laws of the United States of America.
11.2 Notice. Any payment, report, communication, request, or notice
required or permitted by this Agreement shall be in writing and shall become
effective at the time of receipt thereof and shall be addressed to the Parties
as follows:
(a) If to Licensor:
Gaia Technologies, Inc.
0000 Xxxxxxxx Xxxx., Xxxxx 000
Xxxxxxxx, Xxxxx 00000
Attention: Xxx Xxxxxxxxx
Telecopier: 713/662-3728
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(b) If to Licensee:
TieTek, Inc.
0000 Xxxxxxxx Xxxx., Xxxxx 000
Xxxxxxxx, Xxxxx 00000
Attention: Xxxxxxx X. Xxxxxxx
Telecopier: 713/661-1677
Notice may be effected by hand delivery, U.S. mail, or telecopy. Each Party
shall have the continuing right to change its address for notice at any time or
times by giving ten (10) days' notice in the manner hereinabove described.
Notices shall be deemed given only upon actual receipt; however, notice sent by
U.S. mail, postage prepaid, certified, return receipt requested shall be deemed
received three business days after deposited with the U.S. Postal Service.
11.3 Amendments. This Agreement shall not be modified, amended or
otherwise varied by any oral agreement or representation and all modifications,
amendments and variations shall be by an instrument in writing executed by the
Parties hereto.
11.4 Severability. If, contrary to expectation, any term or
provision of this Agreement shall be held invalid or unenforceable, the Parties
shall endeavor to replace the invalid term or provision by valid term or
provision which correspond as nearly as possible to their original economic
terms and general intentions. If the Parties fail to agree, either Party may
submit the matter to be resolved in accordance with Article X of this Agreement
for the purpose of making such modification to this Agreement as Parties (in the
case of mediation) or the arbitrator shall consider appropriate to return the
Parties as nearly as possibly to their original economic terms and general
intentions. The Agreement shall thereafter be read and interpreted to include
such modification.
11.5 Successors and Assigns. Subject to the restrictions of this
Section 11.5, this Agreement shall be binding on and inure to the benefit of the
Parties hereto and their successors and assigns. Neither Party shall assign
its rights or delegate its duties under this Agreement without the prior written
consent of the other Party.
11.6 No Partnership. Nothing in this Agreement shall in any way be
construed to make Licensor and Licensee partners, joint venturers, agents,
servants or employees of one another, and no such relationship is intended.
11.7 Headings. The headings and subheadings that are in this
Agreement are for convenience only and are not to be used in the interpretation
of the provisions of this Agreement.
11.8 Integration. This Agreement represents the final agreement
between the parties and may not be contradicted by evidence of prior,
contemporaneous, or subsequent oral agreements by the Parties. There are no
unwritten oral agreements between the Parties.
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IN WITNESS WHEREOF, the Parties hereto have caused this instrument to
be executed in duplicate by duly authorized persons to be effective as of the
Effective Date.
"LICENSOR"
GAIA TECHNOLOGIES, INC.
A TEXAS CORPORATION
By: _____________________________
Name: Xxx Xxxxxxxxx
Title: President
"LICENSEE"
TIETEK, INC.,
A TEXAS CORPORATION
By: _____________________________
Xxxxxxx X. Xxxxxxx,
President
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