EXHIBIT 10.4
FORM OF TECHNOLOGY SHARING AGREEMENT
This is a Technology Sharing Agreement (hereinafter, the AGREEMENT)
dated as of _____________, 1998 by and among Xxxxxxxx Soup Company, a New Jersey
corporation (CSC) and Vlasic Foods International Inc., a New Jersey corporation
(together with its successors and permitted assigns, SPINCO).
Background
----------
A. Spinco is currently a wholly owned subsidiary of CSC. Pursuant to
a Separation and Distribution Agreement, dated as of _______, 1998, (the
DISTRIBUTION AGREEMENT), CSC shall distribute the stock of Spinco to CSC's
shareowners (the DISTRIBUTION), following which Distribution each of CSC and
Spinco shall continue in existence as independent, publicly-traded companies.
B. This Agreement is entered into in conjunction with the
Distribution Agreement in order to facilitate (i) the transfer to Spinco of
certain patent rights and technical information currently owned by CSC, (ii) the
license to Spinco of certain patent rights and technical information currently
owned by CSC, (iii) the license to CSC of certain patent rights currently owned
by Spinco, and (iv) the license back to CSC of certain patents currently owned
by CSC but which will be transferred to Spinco under this Agreement.
C. CSC wishes to grant the assignments and licenses to Spinco set
forth in this Agreement and Spinco wishes to accept such assignments and
licenses on the terms and conditions set forth herein. Spinco wishes to grant
the licenses to CSC set forth in this Agreement and CSC wishes to accept such
licenses on the terms and conditions set forth herein.
Terms
-----
NOW, THEREFORE, in consideration of the respective agreements and
covenants contained herein, and other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, and intending to be
legally bound hereby, the parties agree as follows:
SECTION 1. DEFINITIONS.
(a) As used herein, the following terms have the following meanings:
ACTION means any claim, suit, arbitration, inquiry, proceeding or
investigation by or before any court, governmental or other regulatory or
administrative agency or commission or any other tribunal.
ASSIGNED CSC INTELLECTUAL PROPERTY RIGHTS means collectively the
ASSIGNED CSC PATENTS and the ASSIGNED CSC TECHNICAL INFORMATION.
ASSIGNED CSC PATENTS means any and all Patents currently owned by the
CSC which, as of the date of this Agreement, are or have in the past been used
exclusively or primarily in the Spinco Business, including, without limitation,
the Patents listed on Schedule A.
ASSIGNED CSC TECHNICAL INFORMATION means any and all Technical
Information currently owned by the CSC which, as of the date of this Agreement,
is or has in the past been used exclusively or primarily in the Spinco Business,
including, without limitation, the Technical Information specified on Schedule
B.
CSC INTELLECTUAL PROPERTY RIGHTS means collectively the ASSIGNED CSC
INTELLECTUAL PROPERTY RIGHTS and the SHARED CSC INTELLECTUAL PROPERTY RIGHTS.
PATENTS means any and all issued patents, patent applications,
industrial design rights and the inventions covered by such patents, patent
applications and industrial design rights (including all corresponding patents,
patent application and industrial design rights throughout the world, and all
continuations, continuations-in-part, divisionals, extensions, reissues,
reexaminations and renewals thereof) that are (i) owned by CSC, or (ii) owned by
Spinco, and which, as of the date of this Agreement, are or have in the past
been used in the Spinco Business as such business or businesses are or were
previously conducted by CSC and its Subsidiaries.
SHARED CSC INTELLECTUAL PROPERTY RIGHTS means collectively the SHARED
CSC PATENTS and the SHARED CSC TECHNICAL INFORMATION.
SHARED CSC PATENTS means any and all Patents currently owned by CSC
(other than the Assigned CSC Patents) which, as of the date of this Agreement,
are used in both the Spinco Business and the CSC Business, including, without
limitation, the Patents listed on Schedule C.
SHARED CSC TECHNICAL INFORMATION means any and all Technical
Information owned by CSC (other than the Assigned CSC Technical Information)
which, as of the date of this Agreement, is used in both the Spinco Business and
the CSC Business, including, without limitation, the Technical Information
listed on Schedule D.
SHARED SPINCO PATENTS means any and all Patents currently owned by
Spinco and the Assigned CSC Patents, which, as of the date of this Agreement,
are used in both the Spinco Business and the CSC Business, including, without
limitation, the Patents listed on Schedule E.
2
TECHNICAL INFORMATION means any and all information and data
(including, without limitation, any trade secrets, product formulas, processing
and equipment design and information, specifications, know how, show how,
manufacturing, research, software, unpatented inventions, industrial property
rights, and other technical information and data) that is (i) owned by CSC, or
(ii) owned by Spinco, and which, as of the date of this Agreement, is or has in
the past been used or reduced to practice for use in the Spinco Business as such
business or businesses are or were previously conducted by CSC and its
Subsidiaries.
(b) All other capitalized terms used but not otherwise defined herein
shall have the meanings ascribed thereto in the Distribution Agreement.
SECTION 2. ASSIGNMENTS FROM CSC TO SPINCO.
(a) Effective as of the Distribution Date, CSC hereby assigns and
transfers to Spinco, its successors and assigns, all of CSC's right, title, and
interest, in the United States of America and all foreign countries, in and to
(i) the Assigned CSC Intellectual Property, (ii) all income, royalties, fees,
damages, and payments now or hereafter due or payable by third parties in
respect thereto, and (iii) any and all causes of action (either in law or in
equity), and the right to enforce any rights and file any causes of action,
including the right to recover damages, for any past, present, or future
infringement or misappropriation thereof.
(b) Spinco shall be responsible, at its sole cost and expense, for
filing any documents, paying any fees or other payments, or taking any other
action necessary or advisable to record, evidence, perfect, maintain and
effectuate the rights assigned to Spinco hereunder, including, without
limitation, filing a recordation of the assignments of the Assigned CSC Patents
with the U.S. Patent and Trademark Office and applicable foreign governmental
offices. At Spinco's reasonable request and Spinco's expense, CSC shall from
time to time after the date hereof, execute and deliver such other instruments
and documents, in form or substance reasonably satisfactory to Spinco and
otherwise take reasonable steps to cooperate with Spinco, to record, evidence,
perfect, maintain and effectuate the rights assigned to Spinco hereunder,
including, without limitation, executing and delivering to Spinco an Assignment
of Patents, substantially in the form of Exhibit 1.
(c) The assignments under this Section 2 are contributions to the
capital of Spinco.
SECTION 3. LICENSE TO SPINCO. CSC hereby grants to Spinco, effective as of the
Distribution Date and subject to the terms, covenants, conditions, and
limitations set forth in this Agreement, the Distribution Agreement, and any
other Ancillary Agreements, an exclusive (except as to CSC and its Affiliates)
license throughout the world to use in the Spinco Business (a) the Shared CSC
Patents for the remainder of the terms of such Patents (including any extensions
and renewals thereof), and (b) the Shared CSC Technical Information in
perpetuity, for a combined single royalty payment of _________, receipt of which
is hereby acknowledged. The parties acknowledge and agree that use of the Shared
CSC Intellectual Property by either party or its
3
Affiliates shall be deemed to include any direct or indirect use in the
furtherance of the business of such party and its Affiliates.
SECTION 4. LICENSES TO CSC. Spinco hereby grants to CSC, effective as of the
Distribution Date and subject to the terms, covenants, conditions, and
limitations set forth in this Agreement, the Distribution Agreement, and any
other Ancillary Agreements, an exclusive (except as to Spinco and its
Affiliates) license to use the Shared Spinco Patents for the remainder of the
terms of such Patents (including any extensions and renewals thereof) throughout
the world in the CSC Business for a combined single royalty payment of
_________, receipt of which is hereby acknowledged. The parties acknowledge and
agree that use of the Shared Spinco Patents by either party or its Affiliates
shall be deemed to include any direct or indirect use in the furtherance of the
business of such party and its Affiliates.
SECTION 5. INTELLECTUAL PROPERTY RIGHTS.
(a) Spinco acknowledges that, as between CSC and Spinco, CSC owns all
title to the Shared CSC Intellectual Property Rights, in each case subject to
the license granted to Spinco hereunder. Spinco acknowledges that it has
received a license to use the Shared CSC Intellectual Property Rights and that
this Agreement does not constitute any form of assignment or transfer of
ownership therein to Spinco.
(b) CSC acknowledges that, as between Spinco and CSC, Spinco owns all
title to the Shared Spinco Patents, in each case subject to the license granted
to CSC hereunder. CSC acknowledges that it has received a license to use the
Shared Spinco Patents and that this Agreement does not constitute any form of
assignment or transfer of ownership therein to CSC.
(c) CSC shall be responsible in the first instance, at its sole cost and
expense, for filing any documents, paying any fees or other payments, or taking
any other action which it deems necessary or advisable, in its reasonable
business judgment, to protect, maintain and enforce the parties' rights in and
to the Shared CSC Intellectual Property Rights, including, without limitation,
filing and prosecuting such patent and copyright applications as it deems
advisable and Spinco agrees to provide CSC, at CSC's expense, with such
assistance and cooperation in connection therewith as CSC may reasonably
request. In the event that CSC chooses to file and prosecute any patent and
copyright applications in connection with the Shared CSC Intellectual Property
Rights, it shall do so in its own name. In the event that CSC chooses not to or
fails to take such action as Spinco deems necessary or prudent to protect,
maintain and enforce the parties' rights in and to the Shared CSC Intellectual
Property Rights, Spinco shall have the right, at its sole cost and expense, to
file any documents, pay any fees or other payments, or take any other action
which it deems necessary or advisable, in its reasonable business judgment, to
protect, maintain and enforce the parties' rights therein and thereto,
including, without limitation, filing and prosecuting such patent and copyright
applications as it deems advisable and CSC agrees to provide Spinco, at Spinco's
expense, with such assistance and cooperation in connection therewith as Spinco
may reasonably request. In the event that Spinco chooses to file
4
and prosecute any patent and copyright applications in connection with the
Shared CSC Intellectual Property Rights, it shall do so in CSC's name.
(d) Spinco shall be responsible in the first instance, at its sole cost
and expense, for filing any documents, paying any fees or other payments, or
taking any other action which it deems necessary or advisable, in its reasonable
business judgment, to protect, maintain and enforce the parties' rights in and
to the Shared Spinco Patents, including, without limitation, filing and
prosecuting such patent applications as it deems advisable and CSC agrees to
provide Spinco, at Spinco's expense, with such assistance and cooperation in
connection therewith as Spinco may reasonably request. In the event that Spinco
chooses to file and prosecute any patent applications in connection with the
Shared Spinco Patents, it shall do so in its own name. In the event that Spinco
chooses not to or fails to take such action as CSC deems necessary or prudent to
protect, maintain and enforce the parties' rights in and to the Shared Spinco
Patents, CSC shall have the right, at its sole cost and expense, to file any
documents, pay any fees or other payments, or take any other action which it
deems necessary or advisable, in its reasonable business judgment, to protect,
maintain and enforce the parties' rights therein and thereto, including, without
limitation, filing and prosecuting such patent and copyright applications as it
deems advisable and Spinco agrees to provide CSC, at CSC's expense, with such
assistance and cooperation in connection therewith as CSC may reasonably
request. In the event that CSC chooses to file and prosecute any patent and
copyright applications in connection with the Shared Spinco Patents, it shall do
so in Spinco's name.
(e) Spinco shall comply with the laws and regulations of all relevant
countries with respect to Shared CSC Intellectual Property Rights, including,
without limitation, all laws and regulations with regard to the import/export of
such technology and the marking of goods or other materials that incorporate or
utilize any of the Shared CSC Patents. CSC shall comply with the laws and
regulations of all relevant countries with respect to Shared Spinco Patents,
including, without limitation, all laws and regulations with regard to the
import/export of such technology and the marking of goods or other materials
that incorporate or utilize any of the Shared Spinco Patents.
(f) No party shall have any obligation to assign, license, share or
provide to the other party with any patents, patent applications, industrial
design right, inventions, trade secrets, or any other proprietary information or
know how created, developed or acquired by such party after the Distribution
Date except to the extent contemplated by the Distribution Agreement and the
other Ancillary Agreements.
5
SECTION 6. INFRINGEMENT.
(a) CSC and Spinco shall promptly notify each other of any actual or
threatened infringement with respect to the Shared CSC Intellectual Property
Rights and shall consult with each other about any material action to be taken.
CSC shall use its best reasonable efforts and exercise diligence to successfully
prosecute such infringements. All costs, disbursements and expenses of any
actions which CSC prosecutes for the benefit of Spinco shall be borne by Spinco,
and all other costs, disbursements and expenses shall be borne by CSC. If CSC
elects not to initiate legal action against infringement relating to the Shared
CSC Intellectual Property Rights, Spinco shall have the right at its own expense
to take legal action to obtain appropriate relief, and CSC shall be joined as a
party in any such action and shall reasonably cooperate with and assist Spinco
in its prosecution of such action. The costs of such joinder and any assistance
by CSC shall be reimbursed by Spinco.
(b) CSC and Spinco shall promptly notify each other of any actual or
threatened infringement with respect to the Shared Spinco Patents and shall
consult with each other about any material action to be taken. Spinco shall use
its best reasonable efforts and exercise diligence to successfully prosecute
such infringements. All costs, disbursements and expenses of any actions which
Spinco prosecutes for the benefit of CSC shall be borne by CSC, and all other
costs, disbursements and expenses shall be borne by Spinco. If Spinco elects not
to initiate legal action against infringement relating to the Shared Spinco
Patents, CSC shall have the right at its own expense to take legal action to
obtain appropriate relief, and Spinco shall be joined as a party in any such
action and shall reasonably cooperate with and assist CSC in its prosecution of
such action. The costs of such joinder and any assistance by Spinco shall be
reimbursed by CSC.
(c) If CSC and Spinco agree to jointly take action against an
infringement relating to the Shared CSC Intellectual Property Rights or the
Shared Spinco Patents, the cost of the action and any damages accruing shall be
shared equally. If one party takes action against an infringer, it shall be
entitled to retain all damages, costs or other compensation it may recover.
(d) The parties agree to fully cooperate with each other in relation to
any legal, administrative or other proceedings relating to the Shared CSC
Intellectual Property Rights or the Shared Spinco Patents.
SECTION 7. INDEMNIFICATION.
(a ) Spinco shall indemnify, defend and hold harmless each member of the
CSC Group, and each of their respective directors, officers, employees and
agents (the CSC INDEMNITEES) from and against any and all damage, loss,
liability and expense (including, without limitation, reasonable expenses of
investigation and reasonable attorneys' fees and expenses in connection with any
and all Actions or threatened Actions, but expressly excluding any special or
consequential damages) (collectively, INDEMNIFIABLE LOSSES) incurred or suffered
by any
6
the CSC Indemnitees as a result of or arising out of use by Spinco and its
Affiliates of the Assigned CSC Intellectual Property Rights and the Shared CSC
Intellectual Property Rights.
(b) CSC shall indemnify, defend and hold harmless each member of the
Spinco Group, and each of their respective directors, officers, employees and
agents (the SPINCO INDEMNITEES) from and against any and all Indemnifiable
Losses incurred or suffered by any of the Spinco Indemnitees as a result of or
arising out of use by CSC and its Affiliates of the Shared Spinco Patents.
SECTION 8. CONFIDENTIALITY.
(a) CSC agrees during the term of this Agreement and thereafter (i) to
treat as confidential all Assigned CSC Technical Information and all non-public
patent applications within the Assigned CSC Patents and the Shared Spinco
Patents, (ii) to use the same level of care to prevent the disclosure thereof as
it uses to protect their own similar confidential or proprietary information but
in no event, less than a reasonable degree of care, and (iii) not to disclose or
to permit to be disclosed any portion thereof to any third party other than an
Affiliate, without the consent of Spinco.
(b) The Spinco Group agrees during the term of this Agreement and
thereafter (i) to treat as confidential all Shared CSC Technical Information and
all non-public patent applications within the Shared CSC Patents, (ii) to use
the same level of care to prevent the disclosure thereof as it uses to protect
their own similar confidential or proprietary information but in no event, less
than a reasonable degree of care, and (iii) not to disclose or to permit to be
disclosed any portion thereof to any third party other than an Affiliate,
without the consent of CSC.
(c) The obligations of confidentiality and nondisclosure specified in
subsections (a) and (b) above, shall not apply to any information or data that :
(i) was known to the public or generally available to the public
prior to the date it was received from the disclosing party;
(ii) became known to the public or generally available to the
public subsequent to the date it was received from the
disclosing party without any fault of the receiving party;
(iii) is, subsequent to the date of this Agreement, disclosed to the
receiving party by a third party who is under no obligation of
confidentiality regarding the same; or
(iv) is, subsequent to the date of this Agreement, independently
discovered or developed by the receiving party without
reference to or use of any of the disclosed information or
data.
7
(d) Each party acknowledges and agrees that the confidential information
referred to in this Section 8 is valuable and that breach of this Section 8 may
result in immediate irreparable injury to the other party. Each party agrees
that in the event of a breach or threatened breach by it or its Affiliates of
the terms of this Section 8, the other party shall be entitled to seek from any
court of competent jurisdiction, preliminary and permanent injunctive relief
which remedy shall be cumulative and in addition to any other rights and
remedies to which the other party may be entitled.
SECTION 9. DISCLAIMER OF WARRANTIES; NO INDEMNIFICATION; LIMITATION OF
LIABILITY
(a) ALL ASSIGNMENTS FROM CSC TO SPINCO HEREUNDER ARE ON A QUITCLAIM
BASIS AND ALL LICENSES FROM CSC TO SPINCO ARE ON AN "AS IS" BASIS. ALL
WARRANTIES, EXPRESS OR IMPLIED, ARE HEREBY DISCLAIMED BY CSC. WITHOUT LIMITING
THE GENERALITY OF THE FOREGOING, CSC MAKES NO REPRESENTATION OR WARRANTY,
WHETHER EXPRESS OR IMPLIED, TO SPINCO, ITS AFFILIATES OR ANY THIRD PARTY WITH
RESPECT TO THE CSC INTELLECTUAL PROPERTY RIGHTS, INCLUDING WITHOUT LIMITATION,
THE VALIDITY, ENFORCEABILITY OR OWNERSHIP OF ANY RIGHTS THEREIN, THE RESULTS TO
BE EXPECTED FROM THE USE OF SUCH CSC INTELLECTUAL PROPERTY RIGHTS, OR THAT THE
USE OF SUCH CSC INTELLECTUAL PROPERTY RIGHTS WILL NOT INFRINGE OR OTHERWISE
VIOLATE THE RIGHTS OF ANY THIRD PARTY UNDER THE LAWS OF ANY COUNTRY. CSC SHALL
HAVE NO OBLIGATION TO INDEMNIFY SPINCO OR ITS AFFILIATES IN THE EVENT THAT THE
USE OF SUCH CSC INTELLECTUAL PROPERTY INFRINGES OR OTHERWISE VIOLATES OR ITS
CLAIMED TO INFRINGE OR OTHERWISE VIOLATE THE RIGHTS OF ANY THIRD PARTY UNDER THE
LAWS OF ANY COUNTRY.
(b) ALL LICENSES FROM SPINCO TO CSC ARE ON AN "AS IS" BASIS. ALL
WARRANTIES, EXPRESS OR IMPLIED, ARE HEREBY DISCLAIMED BY SPINCO. WITHOUT
LIMITING THE GENERALITY OF THE FOREGOING, SPINCO MAKES NO REPRESENTATION OR
WARRANTY, WHETHER EXPRESS OR IMPLIED, TO CSC, ITS AFFILIATES OR ANY THIRD PARTY
WITH RESPECT TO THE SPINCO SHARED PATENTS, INCLUDING WITHOUT LIMITATION, THE
VALIDITY, ENFORCEABILITY OR OWNERSHIP OF ANY RIGHTS THEREIN, THE RESULTS TO BE
EXPECTED FROM THE USE OF SUCH SPINCO SHARED PATENTS, OR THAT THE USE OF SUCH
SPINCO SHARED PATENTS WILL NOT INFRINGE OR OTHERWISE VIOLATE THE RIGHTS OF ANY
THIRD PARTY UNDER THE LAWS OF ANY COUNTRY. SPINCO SHALL HAVE NO OBLIGATION TO
INDEMNIFY CSC OR ITS AFFILIATES IN THE EVENT THAT THE USE OF SUCH SPINCO SHARED
PATENTS INFRINGES OR OTHERWISE VIOLATES OR ITS CLAIMED TO INFRINGE OR OTHERWISE
VIOLATE THE RIGHTS OF ANY THIRD PARTY UNDER THE LAWS OF ANY COUNTRY.
8
(c) IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES OF ANY KIND, EVEN IF SUCH PARTY WAS ADVISED OR AWARE OF
THE POSSIBILITY OF SUCH DAMAGES, EXCEPT TO THE EXTENT MANDATED BY APPLICABLE
LAW.
SECTION 10. TERMINATION.
(a) Notwithstanding anything herein to the contrary, this Agreement may be
terminated by either CSC or Spinco on written notice at any time prior to the
Distribution Date.
(b) CSC shall have the right to terminate this Agreement at any time if:
(i) Spinco shall be unable to pay its liabilities when due, or shall
make any assignment for the benefit of creditors, or under any
applicable law admits in writing its inability to meet its
obligations when due or commit any other act of bankruptcy,
institute voluntary proceedings in bankruptcy or insolvency or
permit institution of such proceedings against it; or
(ii) Spinco shall fail to perform or shall be in breach of any other
material term or condition of this Agreement; provided, however,
that if such breach can be cured, termination shall take effect
sixty (60) days after written notice of such breach is sent by
CSC if such breach has not been cured during such sixty (60) day
period.
(c) Spinco shall have the right to terminate this Agreement at any time
if:
(i) CSC shall be unable to pay its liabilities when due, or shall
make any assignment for the benefit of creditors, or under any
applicable law admits in writing its inability to meet its
obligations when due or commit any other act of bankruptcy,
institute voluntary proceedings in bankruptcy or insolvency or
permit institution of such proceedings against it.
(ii) CSC shall fail to perform or shall be in breach of any other
material term or condition of this Agreement; provided, however,
that if such breach can be cured, termination shall take effect
sixty (60) days after written notice of such breach is sent by
Spinco if such breach has not been cured during such sixty (60)
day period.
(d) In the event the events set out in Section 10(b)(i) or 10(b)(ii)
occur, CSC shall have the continued rights to use the Shared Spinco Patents in
accordance with the terms and conditions set forth herein. In the event the
events set out in Section 10(c)(i) or 10(c)(ii) occur, Spinco shall have the
continued rights to use the Shared CSC Intellectual Property Rights in
accordance with the terms and conditions set forth herein.
9
SECTION 11. DISPUTES.
(a) Resolution of any and all disputes arising from or in connection with
this Agreement, whether based on contract, tort, statute or otherwise,
including, but not limited to, disputes in connection with claims by third
parties (collectively, DISPUTES), shall be subject to the provisions of this
Section 11; provided, however, that nothing contained herein shall preclude
either party from seeking or obtaining (i) injunctive relief or (ii) equitable
or other judicial relief to enforce the provisions hereof or to preserve the
status quo pending resolution of Disputes hereunder.
(b) Either party may give the other party written notice of any Dispute not
resolved in the normal course of business. The parties shall attempt in good
faith to resolve any Dispute promptly by negotiation between executives of the
parties who have authority to settle the controversy and who are at a higher
level of management than the persons with direct responsibility for
administration of this Agreement. Within 30 days after delivery of the notice,
the foregoing executives of both parties shall meet at a mutually acceptable
time and place, and thereafter as often as they reasonably deem necessary for a
period not to exceed 15 days, to attempt to resolve the Dispute. All reasonable
requests for information made by one party to the other will be honored. If the
parties do not resolve the Dispute within such 45 day period (the INITIAL
MEDIATION PERIOD), the parties shall attempt in good faith to resolve the
Dispute by negotiation between (a) in the case of CSC, the Chief Financial
Officer or the Vice President - Treasurer and (b) in the case of Spinco, the
Chief Financial Officer (collectively, the DESIGNATED OFFICERS). Such officers
shall meet at a mutually acceptable time and place (but in any event no later
than 15 days following the expiration of the Initial Mediation Period) and
thereafter as often as they reasonably deem necessary for a period not to exceed
15 days, to attempt to resolve the Dispute.
(c) If the Dispute has not been resolved by negotiation within 75 days of
the first party's notice, or if the parties failed to meet within 30 days of the
first party's notice, or if the Designated Officers failed to meet within 60
days of the first party's notice, either party may commence any litigation or
other procedure allowed by law.
SECTION 12. ASSIGNMENT/SUBLICENSES.
(a) Neither of the parties may assign or delegate any of its rights or
duties under this Agreement without the prior written consent of the other
party, which consent will not be unreasonably withheld. This Agreement shall be
binding upon, and shall inure to the benefit of, the parties and their
respective successors and permitted assigns.
(b) Notwithstanding anything herein to the contrary, Spinco shall have the
right to sublicense the Shared CSC Intellectual Property Rights to its
Affiliates subject to the terms and
10
conditions set forth herein, provided that such Affiliates shall have no right
to further sublicense such Shared CSC Intellectual Property Rights without the
express written permission of CSC.
(c) Notwithstanding anything herein to the contrary, CSC shall have the
right to sublicense the Shared Spinco Patents to its Affiliates subject to the
terms and conditions set forth herein, provided that such Affiliates shall have
no right to further sublicense such Shared Spinco Patents without the express
written permission of Spinco.
SECTION 13. GENERAL.
(a) Notices. All notices, requests, claims and other communications
-------
hereunder shall be in writing and shall be given or made (and shall be deemed to
have been duly given or made upon receipt) by delivery by hand, by reputable
overnight courier service, by facsimile transmission, or by registered or
certified mail (postage prepaid, return receipt requested) to the respective
parties at the addresses (or at such other address for a party as shall be
specified in a notice given in accordance with this Section 13(a)) listed below:
if to CSC, to: Xxxxxxxx Soup Company
Xxxxxxxx Xxxxx
Xxxxxx, Xxx Xxxxxx 00000
Attn.: Trademark Counsel
Fax No. (000) 000-0000
if to Spinco, to: Vlasic Foods International Inc.
Xxxxxxxx Xxxxx
Xxxxxx, Xxx Xxxxxx 00000
Attn.: General Counsel
Fax No. (000) 000-0000
or to such other address as any party may, from time to time, designate in a
written notice given in a like manner. Notice given by hand shall be deemed
delivered when received by the recipient. Notice given by mail as set out above
shall be deemed delivered five calendar days after the date the same is mailed.
Notice given by reputable overnight courier shall be deemed delivered on the
next following business day after the same is sent. Notice given by facsimile
transmission shall be deemed delivered on the day of transmission provided
telephone confirmation of receipt is obtained promptly after completion of
transmission.
(b) No Joint Venture. Nothing herein contained shall be construed to place
----------------
the parties in the relationship of partners or joint venturers or principal and
agent or employer and employee and no party shall have the power to obligate or
bind any other party in any manner whatsoever.
11
(c) Entire Agreement. This Agreement constitutes the entire agreement and
----------------
understanding between the parties with respect to the subject matter and
terminates and supersedes any such prior agreement or understanding, oral or
written, between the parties with respect thereto. None of the provisions of
this Agreement can be waived or modified except in writing signed by all the
parties.
(d) Severability. In the event any provision of this Agreement shall for
------------
any reason be void or unenforceable by reason of any provision of applicable
law, it shall be deleted and the remaining provisions shall continue in full
force and effect and be amended to the extent, if at all, necessary to give
effect to the intentions of the parties as of the date of this Agreement.
(e) Survival. The provisions of Sections 5, 6, 7, 8, 9, 10(d), and 11
---------
shall survive the termination of this Agreement.
(f) No Waiver. No waiver by any party of a breach or a default hereunder
---------
shall be deemed a waiver by such party of a subsequent breach of default of a
similar nature.
(g) Captions. The captions used in connection with the sections of this
---------
Agreement are inserted only for the purpose of reference and shall not affect
the interpretation of this Agreement.
(h) Other Actions. The parties agree to cooperate and to take any
-------------
additional action or sign any documents as may be necessary to effectuate the
purposes of this Agreement, including, without limitation, CSC executing and
delivering to Spinco assignments of any Assigned CSC Patents which may be
inadvertently omitted from the Assignment of Patents in Exhibit 1.
12
IN WITNESS WHEREOF, the parties have respectively caused this Agreement to
be executed by a fully authorized officer as of the day and year first above
written.
XXXXXXXX SOUP COMPANY VLASIC FOODS INTERNATIONAL INC.
By: __________________________ By: __________________________
Name: Name:
Title: Title:
13
