LICENSE AGREEMENT
This Agreement is entered into by and between by and between MGS Grand
Sport, Inc., Xxxxxx Xxxxxxxxx and all associates ("Licensor") and Xxxxxx
International Holdings, Inc.("Licensee") on this 18th day of June 2008, with
reference to the following facts:
A. Licensor is the owner of a United States Patents for the "Rescue
Jet" personal water craft and related assemblies, systems and design rights all
as set forth in Exhibit A, attached hereto, and incorporated herein by this
reference herein ("the patents").
B. Prior Royalty Agreement
On 15th day of June 2006, Patent Owner entered into that certain Royalty
Agreement with Licensee for the licensing rights to various patents including
the patent and design for 15' Hull and deck design. Herein after this Royalty
Agreement will be referred to as the "Prior Royalty Agreement".
On 23rd day of February 2005, Patent Owner entered into that certain Royalty
Agreement with Licensee for the licensing rights to various patents including
the patent and design for 22' Vortex boat. Herein after this Royalty Agreement
will be referred to as the "Prior Royalty Agreement.
On 24th day of January 2006, Patent Owner entered into that certain Royalty
Agreement with Licensee for the licensing rights to various patents including
the patent for water Pump for Fire Rescue Jet. Herein after this Royalty
Agreement will be referred to as the "Prior Royalty Agreement.
C. Licensee wishes to license such design on an exclusive basis for
the manufacture of the boats from Licensor.
D. Licensor wishes to license to Licensee the right to use the
Design for the use set forth
E. Licensor wishes to license to Licensee the right to use the
Patent and Designs developed relating to water Craft approved at
a Subsequent date upon the same terms on all future designs such
as water Taxi, Water Limo, Trash collection boat etc..
NOW THEREFORE, in consideration of the mutual covenants and
agreements contained in this Agreement and for other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged,
the parties agree as follows:
1. Grant of License.
a) Licensor hereby grants to Licensee the exclusive right to use and
enjoy the benefits of the Patent and design rights associated with the patent
for a period of 15 years.
b) Licensor's Representations. Licensor hereby states and warrants
that the following representations are true:
i. Licensor is the sole legal holder of the patent and design
rights associated with the patent.
ii. The Xxxxxx Xxxxxxxxx'x Licensing Agreement is based on valid
existing patents issued by the United States Patent and
Trademark Office.
iii. The Patent granted to Licensor Xxxxxx Xxxxxxxxx'x are the
sole property of the Licensor and there are no existing
liens, mortgages, security interests or other encumbrances
against such licenses.
iv. No share, interest, assignment, or other right to such
license has been transferred, assigned or granted to any
other party.
v. Licensee will hold the License in its name.
vi. Licensee will have the right to sub License the Rights to
Design and Patents to its subsidiaries and associate
companies.
vii. Licensee will enter into separate contract with Hull and
deck manufacturer.
2. Other Materials. Patent Owner agrees to make available in a timely
manner, upon written request, any and all written documentation, technical data,
xxxx of materials, engineering drawings and prototype samples relating to the
patent, to the extent such written documentation is available.
3. Continuing Advise. Patent Owner agrees to provide appropriate expert
advice and consultation to Licensee, as may from time to time be required, to
facilitate the use and enjoyment of the rights granted by this Agreement.
4. Effective Date. This Agreement shall be effective on the date of the
signature both the parties.
5. Prior Royalty Agreement. The Prior Royalty Agreement shall become part
of this agreement with exclusivity on all patents and designs and terms and
conditions of this agreement applies.
2.1. Term and Payment, Licensee agrees to pay as a royalty for the use
and enjoyment of the Design and Patent for all products mentioned in Exhibit A,
an amount equal to mentioned here under upon all GROSS sale less sales returns &
Freight & Sales Commission, for a period of Fifteen (15) calendar years
commencing on the date first above mentioned. Royalties shall be determined on a
quarterly basis, for the periods ending each April 30, July 31, October 31 and
January 31 of every year and shall be paid on the fifteenth of the month
following the end of the determination period, except that upon the expiration
of this Agreement the determination period shall end and Licensee shall
determine the royalty amount and pay such amount fifteen (15) days after the
expiration date of this Agreement.
a) 2% for Patented Designs with or with out Patented Fire Pump
technology used in Xxxxxx production.
b) 1% for Patented Pump Technology used in designs other
than Xxxxxxx or his Associates.
c) 1% for using Patents in any of our distributor or associated
companies products.
d) Xxxxxx agrees to pay $1,000,000 to MGS as under: $200k in 2
months minimum and 3 months maximum, and balance $800K will be
released at the rate of 10% of each boat sale until the complete
debt of balance $800K is paid off.
2.2 Royalty will be renegotiated in any of the following
circumstances:
i) If Xxxxxx Xxxxxxxxx'x employment agreement expires or
is terminated by the Company.
ii) If the Company is acquired by any other Company. .
3. Certain Restrictions. The license granted herein is subject to and
limited by the following restrictions:
3.1 Restrictive Terms. Licensee may use and enjoy the Design only
under the terms of this Agreement, however, Licensor may not offer or
impose any terms on the use of the Design that alter or restrict the
terms of this License or the Licensee's exercise of the rights
granted, hereunder;
4. Representation and Warranties. Licensor represents and warrants as
follows:
4.1 Rights. Licensor has secured all rights in the Design
necessary to grant the license rights here to Licensee., and permit
the lawful exercise of the rights granted hereunder, to Licensee;
4.2 Infringements. The use of the Licensor's Design do not
infringe the copyright, trademark, publicity rights, common law rights
or any other right of any third party or constitute defamation,
invasion of privacy or other tortuous injury to any third party.
4.3 Sole Property. The Design is the sole property of the
Licensor and no lien, mortgage, security interest or other encumbrance
against the Design exists.
4.4 Assignment. No share, interest, assignment, or other right to
the Patent has been transferred, assigned or granted to any other
party.
4.5 Good Title. Licensor will at all times have good title to the
Design and will at all times keep the Design free and clear of all
liens, encumbrances security interests and rights and claims of others
except for the rights and claims arising under this Agreement.
4.6 Without Warranties. Except as expressly stated in this
license or otherwise agreed in writing, or required by applicable law,
the Design is licensed on an "as is" basis, without warranties of any
kind, either express or implied including, without limitation, any
warranties regarding the use of the Design to produce profit.
5. Events of Default. Any one of the following occurrences shall constitute
an event of default under this Agreement:
5.1.1 Failure to make Payment. The failure of Licensee to make any royalty
payment by its due date thereof;
5.1.2 Bankruptcy. The filing of a voluntary or involuntary petition under
any provision of a state or federal bankruptcy law by either party hereto.
5.1.3 Other Default. The occurrence of any other default under this
Agreement.
If an event of default occurs under paragraph 5.1.1, above, Licensor
may, in its sole discretion (i) declare all accrued but unpaid royalties
immediately due and payable, without notice, unless otherwise required by
applicable statute; (ii) declare this agreement canceled and of no further force
and effect and Licensor shall have and may exercise any and all rights and
remedies available at law or in equity. In the event of any other default under
this Agreement the non-defaulting party shall deliver written notice of such
default to the defaulting party and the defaulting party shall have fifteen (15)
days after receipt of such written notice of default to cure the same. After
such fifteen (15) day period, provided the defaulting party has not cured the
default(s), the non-defaulting party shall have and may exercise any and all
rights and remedies available at law or in equity.
6. Option to Renew. Licensor hereby grants Licensee an option to renew this
Agreement to be effective at the expiration of the term, or any subsequent term
of this Agreement, for an additional five (5) year period. In order to exercise
this option (i) Licensee must provide Licensor with written notice of its
election to exercise the renewal option hereunder ninety (90) days prior to the
expiration of the term of this Agreement and (ii) Licensee must not be in
default under this Agreement.
7. Attorneys' Fees and Costs. If any action at law or in equity is
necessary to enforce or interpret the terms of this Agreement, the prevailing
party shall be entitled to reasonable attorney's fees, costs and necessary
disbursements in addition to any other relief to which that party may be
entitled.
8. Entire Agreement. This Agreement supersedes any and all other agreements
oral or in writing, between the parties hereto with respect to the matters set
forth herein, and contains all of the covenants and agreements between the
parties with respect to the Design. This Agreement applies only to the Design as
set forth herein and to no other Patents or design rights. Each party to this
agreement acknowledges that no representation, inducements, promises or
agreements, orally or otherwise, have been made by any party, or anyone acting
on behalf of any party, which are not embodied herein, and that no other
agreement, statement or promise not contained in this agreement shall be valid
or binding on either party. Any modification of this Agreement shall be
effective only if it is in writing and signed by the parties hereto.
9. Successors and Assigns. This Agreement shall be binding upon and inure
to the benefit of the parties and their successors and assigns.
10. Headings. The headings herein are for convenience only, do not
constitute a part of this Agreement and shall not be deemed to limit or affect
any of the provisions hereof
11. Amendment, Waiver. No provision of this Agreement may be waived or
amended except in a written instrument signed, in the case of an amendment, by
the Licensor and the Licensee or, in the case of a waiver, by the party against
whom enforcement of any such waiver is sought. No waiver of any default with
respect to any provision, condition or requirement of this Agreement shall be
deemed to be a continuing waiver in the future or a waiver of any other
provision, condition or requirement hereof, nor shall any delay or omission of
either party to exercise any right hereunder in any manner impair the exercise
of any such right accruing to it thereafter.
12. Notices. Any notice, demand, request, consent or other
communication which either party desires or is required to give to any other
party shall be in writing and shall be deemed to have been given when either:
(a) delivered in person or by facsimile transfer, or (b) sent by overnight
courier or first-class registered or certified mail, postage pre-paid, return
receipt requested, addressed to such party at the address set forth above.
Either party may designate another address for itself at any time upon written
notice to the other party
13. Interpretation. Each party hereto has been represented by counsel of
its choice, and this Agreement is not to be interpreted as if it was prepared by
either party.
14. Authority. Each party signing on behalf of a party to this Agreement
represents and warrants that he has all authority to bind that party to this
Agreement.
15. Provision Unenforceable. If any provision of this License is invalid or
unenforceable under applicable law, it shall not affect the validity or enforce
ability of the remainder of the terms of this License, and without further
action by the parties to this agreement, such provision shall be reformed to the
minimum extent necessary to make such provision valid and enforceable.
16. Governing Law. This Agreement shall be governed by, and construed in
accordance with, the law of the State of California.
IN WITNESS WHEREOF, the parties have executed this Agreement effective
on the date first set forth above.
"Licensor"
"Licensee"
---------------------------- ----------------------------
Xxxxxx Xxxxxxxxx, Xxxxxx Xxxxxx Xxxxxxx Xxx
MGS Grand Sports, LLC President CFO
Modena Sports Designs Xxxxxx International Holdings, Inc.
00 Xxxxxx Xxxxx Xxxxx 255 S. Xxxxxx Xxxxxx Xxx,
Xxxxxx Xxx Xxx, XX 00000 Xxx Xxxxxxxxxx, XX 00000
Exhibit A
DESCRIPTION OF PATENTS AND DESIGN
License transferred by Xxxxxxxxx to produce patented items under Xxxxxx include
the following:
Product
12' Rescue and Fire Rescue water craft design 15' Rescue and Fire Rescue
water craft design 18' Rescue and Fire Rescue water craft design 20'
Rescue and Fire Rescue water craft design 24' Rescue and Fire Rescue water
craft design 26; Rescue and Fire Rescue water craft design 28' Rescue and
Fire Rescue water craft design 30' Rescue and Fire Rescue water craft
design 35' Rescue and Fire Rescue water craft design 22' Vortex 30' Modena
302
Water Pump technology and designs.
Doors on the boat
Vortex 22' Closed Bow MD 1225-C Vortex 22' Open Bow MD 1226-O Vortex 19'
Closed Bow MD 1997-C Vortex 19' Open Bow MD 1998-O MCD System
New projects like Trash, Limousine, Taxi and all other marine related
projects MM will also have the right to produce in any of the models
mention above in any configuration, such as Police Model, Patrol Model,
Military Model, Ballistic Model, etc....
