Exhibit 10
MANUFACTURING AND MARKETING
EXCLUSIVE LICENSE AGREEMENT
This Agreement made the 16th day of February, 2004.
BETWEEN:
XXXXXXXXX XXXXXXX
an individual
(The "Licensor")
AND:
ONYX INTERNATIONAL, INC.
a Corporation incorporated in the
State of Nevada
(The "Licensee")
WHEREAS:
A. The Licensor is the sole owner of proprietary technologies and "Know-how"
related to the Products hereinafter referred to as the "Properties;" and
B. The Licensor warranties that the Trade Secrets related to the Properties,
have been maintained as Trade Secrets and are afforded the protections under
trade secret laws; and
C. The Licensor further warranties that the Properties and the related Products
are free of any lien, encumbrance, joint-ownership, or prior commitment to a
third party;
D. The Licensor wishes to grant and the Licensee desires the exclusive rights to
the Products, including but not limited to the development, manufacturing,
marketing, sale, sublicensing, and any and all usages of the Products, in the
United States and throughout the world;
E. The Licensor wishes to grant and the Licensee desires the exclusive rights to
use the Properties, as well as Licensor's "Know-how", related to the
development, manufacturing, marketing, sale, sublicensing, and usage of the
Products, and any future products derived from the Properties, in the United
States and throughout the world;
NOW THEREFORE, in consideration of the premises and mutual promises, terms and
conditions and other good and valuable considerations, the parties do hereby
agree as follows:
1. DEFINITIONS
For the purposes of the Agreement:
1.1 "Products" shall mean all licensed proprietary property, specified in
Exhibit A1;
1.2 "Properties" shall mean all proprietary intellectual properties,
encompassed in the Trade Secret, set forth in Exhibit A1;
1.3 "Know-how" shall mean secret processes, formulae, trade secrets,
engineering, design, process and operating information, inventions,
developments, technical data and other scientific and technical information
relating to any process or method now owned or controlled by the licensor or its
Affiliate relating in any way to the Products;
1.4 "Confidential Information": shall mean that part of the Technical
Information, whether written or oral which is:
1.41 not publicly known, and
1.42 annotated as "confidential" or "proprietary." Any information
which is not annotated as "confidential" or "proprietary" shall be deemed to be
in the public domain. In addition, "Confidential Information" shall include
information disclosed by either party to the other party in accordance with
(Modifications and/or Improvements of Products);
1.5 "Affiliate" whether of the Licensee or the Licensor, shall mean any
corporation, firm, association or other business owned or controlled
beneficially or directly or indirectly by the Licensee or the Licensor, by its
principal officers, directors, supervisory employees or members of their
families. Ownership of 50% or more of such business by any one of such persons
shall constitute beneficial ownership or control;
1.6 "Manufacturing Cost" shall mean the cost of the "Products" F.O.B. the
Licensee's manufacturing plant at point of shipment;
1.7 "Effective Date" shall mean the later of:
1.71 the date on which Licensor executes this Agreement,
1.72 the date on which Licensee executes this Agreement.
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2. GRANT OF RIGHTS
The Licensor grants the following rights to Licensee:
2.1 LICENSED TERRITORY
Exclusive Worldwide Rights: The Licensor grants the Licensee the
exclusive rights to the Products and the Properties in the United States and
throughout the world;
2.2 GRANTS RELATED TO LICENSOR'S PRODUCTS, PROPERTIES AND "KNOW-HOW"
2.21 Grants Related to Products. The Licensor grants the Licensee the
exclusive right to the Products, specified in Exhibit A1, including but not
limited to, the Licensee's rights to the development, manufacturing, marketing,
sale, sublicensing, and any and all usages of the Products, in the United States
and throughout the World.
2.22 Grants Related to Properties. The Licensor grants the Licensee
the exclusive right to use the Licensor's Properties, specified in Exhibit A1,
including but not limited to, the Licensee's rights to develop, manufacture,
market, sell and sublicense any and all products, having derived and to be
derived from the Properties, in the United States and throughout the world;
2.23 Grants Related to "Know-how". The Licensor grants the Licensee
the exclusive right to the Licensor's "know-how" trade secrets, and other
technical information, related to the Products and the Properties, to be
conveyed to Licensee in confidence, upon the consummation of this Agreement.
3. CONSIDERATIONS TO LICENSOR
As considerations for the Grants, the Licensee agrees to provide the
Licensor with the following payments:
3.1 Equity Consideration
(i) 1% of gross revenues of the Licensee.
4. TERMS AND CONDITIONS
4.1 TERMS AND CONDITIONS RELATED TO THE GRANTS TO LICENSEE
4.11 Development of Technology. The Licensor agrees to assist the
Licensee to conclude the negotiations on technologies under consideration as set
out in Exhibit A1, "Properties."
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4.12 Marketing and Manufacturing Perimeters. The Licensee, at its own
costs, shall manufacture and market the Products to potential client firms.
4.13 Best Effort by Licensee. The Licensee agrees to use its best
efforts and all due diligence to promote the sale of the product and other
products derived from the Properties, in all licensed territories;
4.14 Training and Technical Assistance. To assist Licensee in
exercising its rights hereunder, Licensor agrees to provide appropriate training
and technical assistance to Licensee, its employees and its permitted
sublicensees, in order for the Licensee to utilize the licensed technology
appropriately to their full potential. Such training and assistance shall be
provided by Licensor from time to time, for training purposes at Licensee's
facilities. Travel costs, lodging and all related expenses incurred by one
party, in connection with sending its employees or permitted sublicensees to the
other party's location, shall be paid in full by the party requesting the
training or technical assistance. However, the Licensee acknowledges hereunder
that said training obligation of the Licensor may be limited by the availability
of its training and technical personnel;
4.15 When to Disclose "Know-how" by Licensor. Commencing ten (10) days
after the execution of this Agreement, the Licensor agrees to make full
disclosure of its "know-how" to the Licensee's technical personnel, designated
by the Licensee. In addition, the Licensor agrees to promptly inform the
Licensee of any newly developed technical and trade "know-how", which the
Licensee is entitled to record confidentially with any available medium;
4.16 Terms for "Know-how" Disclosure. All disclosures and instructions
shall be made or given at the Licensor's locations, without cost to the
Licensee, provided, however, that at the Licensee's request, the Licensor may
from time to time send one of its qualified personnel for the purpose of
"know-how" disclosure, to the Licensee's location, at the request of the
Licensee, for not more than 15 days, the related costs of which shall be assumed
by the Licensee;
4.17 Confidentiality Maintained by Licensee. All disclosures of the
Licensor's "know-how" shall be confidential and shall be held confidentially by
the Licensee, without disclosure to a third party, and shall remain confidential
for a period of five years. This obligation of non-disclosure shall not apply to
any information, which is already known to the Licensee, at the time of
disclosure, or which is rightfully obtained from a third party without
obligation of confidence, or which is freely available in the public domain.
Licensee agrees that the Licensor has a proprietary interest in its Confidential
Information, provided to the Licensee. During the term of the Agreement and for
five years thereafter, all proprietary disclosures to the Licensee, its agents,
and employees shall be held in strict confidence by Licensee. Licensee shall
disclose the Confidential Information only to its agents and employees, to whom
the dissemination of confidential information is deemed necessary, in order to
properly carry out their duties, designated by the Licensee, in its execution of
the License. During the term of this Agreement and for five years thereafter,
Licensee shall not use the Confidential Information, except for the purposes of
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exercising its rights and carrying out its duties hereunder. This provision of
the Agreement shall also apply to any consultants or subcontractors of the
Licensee, that Licensee may engage in connection with its execution of the
License.
4.18 Product Quality Maintained by Licensee. In order to comply with
the Licensor's quality control standards, Licensee agrees to maintain the
quality of the Product, adhering to specific quality control standards, in all
aspects of manufacturing, that the Licensor may from time to time communicate to
the Licensee, with respect to certain product;
4.2 TERMS AND CONDITIONS RELATED TO THE CONSIDERATIONS TO LICENSOR
Interim Funding to Licensor. Licensee shall advance funds to the Licensor,
subject to written approval by the Licensee for services required of the
Licensor by the Licensee.
4.3 OTHER TERMS AND CONDITIONS
4.31 Ownership of New Product Development. The undersigned mutually
agree to the following ownership rights to new product development:
(a) Joint Ownership. Any invention, protectable by patent,
copyright or other legal proprietary protection, made or conceived during the
term of this Agreement, by one or more employees or consultants of the Licensor
jointly with one or more employees or consultants of the Licensee, shall be
jointly owned, of which the parties agree to grant the license of the related
invention(s) to each other without any payment, royalty or consideration. Title
to all related patents issued shall be jointly owned. All expenses incurred in
obtaining and maintaining such patents, shall be jointly shared. In the event
one of the parties declines to apply for a patent, or alternatively fails to pay
their portion of the patent costs, then the ownership of the patent shall be
held by that party, who wishes to file the patent and assumes the related
expenditures;
(b) Sole Ownership. Any invention, protectable by patent,
copyright or other legal proprietary protection made or conceived solely by the
employees or consultants of either party of the undersigned, shall become the
sole property of such party.
4.32 Right to Assign License Agreement. The Licensor and the Licensee
mutually agree not to assign the explicit rights of the Licensor or the
Licensee, as defined by this Agreement, in whole or part, to a third party,
whether by operation of law or otherwise, without the prior written consent of
the other party, except that either party may assign its rights hereunder to a
successor, subsidiary or affiliated corporation, without releasing the assignor
and the assignee, from the contractual responsibilities, stipulated hereunder.
Any assignment contrary to the terms hereof shall be null and void and of no
force or effect.
4.33 Non-Competition. The Licensor, during the term of this Agreement
agrees not to compete with the Licensee on the Licensed Products;
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5. WARRANTIES
5.1 LICENSOR'S WARRANTIES
5.11 Patents Maintained. The Licensor warranties that the Patents and
Patent Applications, related to the Properties, are current, updated, and
properly maintained with respective patent agencies, with jurisdiction over the
Patent and Patent Applications; and
5.12 Properties Without Other Commitment. The Licensor further
warranties that the Properties and the related Products are free of any lien,
encumbrance, joint- ownership, or prior commitment to a third party.
5.13 No Knowledge of Third Party Claims. Licensor represents and
warrants to Licensee that Licensor knows of no claim by any third party of
infringement by Licensor on such party's trademark, copyright, trade secret or
any other intellectual property rights in the Territory of the Licensee.
5.2 LICENSEE'S WARRANTIES
5.21 Lawful Corporation. The licensee is a lawful U. S. Corporation
incorporated in the State of Nevada.
6. DEFENSE OF LICENSED INTELLECTUAL PROPERTIES
Pertaining to the infringement of patented licensed technology by a third
party, the Licensor of the technology and the Licensee shall together determine
whether to take any and all actions, legal or otherwise, which are necessary to:
6.1 terminate infringements of any part of the Licensed Products; or
6.2 terminate any attempt of imitation of any of the Licensed Products,
including without limitation, obtaining damages, injunction and all other
appropriate relief.
The legal costs of said intellectual property defense shall be the
responsibility of the Licensee and said Licensor. In addition, if the defense is
successful and damages are awarded by the court related to the infringement,
such damage award shall be shared equally between the Licensor and the Licensee.
However, if for any reason or for no reason, a party of the undersigned elects
not to incur the expenditure of the legal defense, and the other party elects to
carry solely said expenditure, then accordingly, the damage award, if any, shall
be received by the party which has incurred the expenditure of the defense.
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7. INDEMNITY
7.1 Indemnity by Licensor
7.11 Except as provided in subsection 7.12 below, Licensor of the
technology shall defend and indemnify Licensee from and against any damages,
liabilities, costs and expenses, including reasonable attorney's fees and court
costs, arising out of any claim, involving Licensee's usages of the Licensed
Products, or manufacturing of the products, which infringe a valid intellectual
property right, or which represent a misappropriation of a trade secret of a
third party; provided, however, that:
7.11a Licensee shall have promptly submitted to said Licensor the
related written notice of infringement, along with reasonable cooperation,
information and assistance from the Licensee, in connection with the case; and
7.11b The said Licensor shall have sole control and authority
with respect to the defense settlement, or compromise thereof;
7.12 The said Licensor shall have no liability or obligation to
Licensee under this Article with respect to any claim based upon:
7.12a Use of the Products by Licensee, its sublicensees or its
customers in an application or environment for which such Products were not
designed or contemplated; or
7.12b Modifications and/or improvements of the Products
introduced by Licensee, its permitted sublicensees or its customers.
7.13 In the event a claim is based partially on an indemnified claim,
described in subsection 7.11, and partially on an non-indemnified claim
described in subsection 7.12, any payments and reasonable legal fees incurred in
connection with such claim are to be apportioned between the parties in
accordance with the degree of cause attributable to each party.
7.2 INDEMNITY BY LICENSEE
7.21 Indemnity for Products. Licensee shall defend and indemnify
Licensor of the technology from and against any damages, liabilities, costs and
expenses, including any reasonable legal fee and court cost, arising out of
injuries or damages caused by the Products, which are not attributable to faulty
materials or workmanship in the manufacture, or the assembly of the Products by
the said Licensor and by the Licensee;
7.22 Offering Related Indemnity. The Licensee hereunder agrees to
indemnify and hold harmless the said Licensor, against any and all losses,
claims, damages, liabilities and expenses, including any litigation arising from
the Licensee's Offering, or involving the subject matter hereof, including but
not limited to litigation by the shareholders of the Licensee, upon the
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fulfillment of the Licensor's contractual duties, except for willful default or
negligence perpetrated by the Licensor, involving this Agreement. The Licensee
agrees to assume the sole responsibility toward its investors, in all matters
relating to the Offering.
8. DURATION AND TERMINATION
8.1 TERMS OF AGREEMENT
The Licensor shall offer the Grants to the Licensee, for a period of ten
(10) years, with automatic renewal each year thereafter, subject to written
notification, sixty (60) days in advance to the renewal, by both parties of the
undersigned.
8.2 TERMINATION FOR CAUSE
This Agreement may be terminated by a party of the undersigned, by serving
written notice of termination to the other party, which shall become immediately
effective upon the documented receipt of such notice of termination, after the
occurrence of any of the following events, unless a mutual remedy is reached, by
both parties of the undersigned in writing, to obviate the termination, within
ninety (90) days from the date of receipt of the notice by a served party:
8.21 a material breach or default as to any obligation, specified
hereunder, by the Licensee or the Licensor, and the failure of the notified
party to promptly pursue a reasonable remedy to cure such material breach or
default; or
8.22 the filing of a petition in bankruptcy, insolvency or
reorganization by the Licensee or the Licensor, or the Licensee or Licensor
becoming the subject to a composition for creditors, whether by law or
agreement, or the Licensee or the Licensor going into receivership or otherwise
becoming insolvent; or
8.23 in the event of liquidation, caused by insolvency, the Licensor
and the Licensee hereunder agree to give the first right of refusal to acquire
the liquidation properties of the other, subject to the rulings of the court on
this matter.
8.3 AFTER TERMINATION OR EXPIRY
The parties hereto agree to the following conditions, once this Agreement
is terminated or expires:
8.31 Terminate Usage of Products and Properties by Licensee. Licensee
shall cease any use or practice of the Licensed Products and other products
involving the Properties; and upon termination or expiration of this Agreement,
all sublicenses granted by Licensee during the term of this Agreement shall
terminate. Licensee shall, at its own expense, return to Licensor all
Confidential Information as soon as practicable after the date of such
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termination, including original documents, drawings, computer diskettes, models,
samples, notes, reports, notebooks, letters, manuals, prints, memoranda and any
copies which have been received by Licensee. All such Confidential Information
shall remain the exclusive property of Licensor during the term of this
Agreement and for five (5) years thereafter.
8.32 Payment Obligations for Unpaid Consideration to Licensor. Upon
termination of this Agreement, nothing shall be construed to release Licensee
from its obligations to pay Licensor any and all royalties or other accrued but
unpaid considerations due Licensor, incurred prior to the date of such
termination or expiration.
9. DISPUTE RESOLUTION
The Licensor and the Licensee agree mutually hereunder to submit any and
all unresolved disputes, related to this Agreement, firstly, to the American
Arbitration Board (or to a licensed arbitrator mutually agreed on by both
parties) and abide by the binding resolution of said arbitration. The venue, if
any, of said arbitration board shall reside in the State of Nevada. Since the
offices of the Licensor and the Licensee may be situated at a considerable
distance from each other, to conserve time and costs, the Licensor and the
Licensee agree herein to conduct said arbitration by video conferencing, if
permitted by the arbitrator. The non-prevailing party in said arbitration shall
be responsible for the costs directly incurred by the arbitration, including but
not limited to the arbitrator's fees and telecommunication fees. In addition,
the Licensor and the Licensee agree mutually herein that any dispute arising
from the Agreement is limited to the compensatory (not punitive) considerations
of this Agreement, unless the disputes arise from some unanticipated factors
based on criminal negligence or criminal act committed by a party, or malicious
and egregious refusal to participate in the dispute arbitration by a party, in
which case the ruling of a competent court with jurisdiction over the matter
shall be binding. In the unlikely eventuality of the requirement of a court
ruling, the venue of said court action shall reside in the State of Nevada or
alternatively, in the city where the Licensee has its primary business. In said
case, the ruling of a competent court, in said venue, with jurisdiction over the
matter shall be binding;
10. SEVERABILITY
If any provision of this Agreement is held in whole or in part to be
unenforceable for any reason, the Licensor and the Licensee agree hereunder to
notify the other party immediately of said unenforceable provision(s) in the
Agreement, and to modify this Agreement accordingly to the benefit and consent
of both parties. Furthermore, if any provision of this Agreement is declared
invalid or unenforceable by a court having competent jurisdiction, it is
mutually agreed that this Agreement shall endure except for the part declared
invalid or unenforceable by order of such court. The parties shall consult and
use their best efforts to agree upon a valid and enforceable provision which
shall be a reasonable substitute for such invalid or unenforceable provision in
light of the intent of this Agreement.
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11. FORCE MAJEURE
11.1 Either the Licensee or the Licensor shall be released from its
obligations. hereunder to the extent that performance thereof is delayed,
hindered or prevented by Force Majeure as defined below, provided that the party
claiming hereunder shall notify the other with all possible speed specifying the
cause and probable duration of the delay or non-performance and shall minimize
the effects of such delay or non-performance.
11.2 Force Majeure means any circumstances beyond the reasonable control of
the affected party;
11.3 Without prejudice to the generality of Section 10.12a and without
being thereby limited, force majeure includes any one or more of the following:
acts or restraints of governments or public authorities; wars, revolution, riot
or civil commotion, strikes, lockouts or other industrial action; failure of
supplies of power or fuel; damage to the premises or storage facilities by
explosion, fire, corrosion, ionizing radiation, radio-active contamination,
flood, natural disaster, malicious or negligent act of accident; and breakdown
or failure of equipment whether of the affected party or others.
12. ENTIRE AGREEMENT, NO OTHER RELATION, COUNTERPARTS
This Agreement contains the entire Agreement between the Licensor and the
Licensee. No other agreement, or promise made or before the effective date of
the Agreement will be binding on the parties. No modification or addendum to
this Agreement is valid, unless mutually endorsed and dated by both parties.
Nothing contained herein shall be deemed to create a joint venture, agency or
partnership relationship between the parties hereto. Neither party shall have
any power to enter into any contracts or commitments in the name of or on behalf
of the other party, or to bind the other party in any respect whatsoever, in
business outside of this A This Agreement may be executed in any number of
counterparts and by a different party hereto on separate counterparts, each of
which, when so executed, shall be deemed to be original and all of which, when
taken together, shall constitute one and the same Agreement.
IN WITNESS WHEREOF, the Licensor and the Licensee have executed this Agreement
on the day and the year first above-written.
BY: /s/ Xxxxxxxxx Xxxxxxx Dated 2/16/04
----------------------------------------- ---------------------
Xxxxxxxxx Xxxxxxx, an Individual
BY: /s/ Xxxxxxxxx Xxxxxxx Dated 2/16/04
----------------------------------------- ---------------------
Onyx International, Inc.
Xxxxxxxxx Xxxxxxx, President & Director
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LISTS OF EXHIBITS
EXHIBIT A1 Description
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Exhibit A1
DESCRIPTION OF PROPERTIES
The Licensor's beer brewing recipes, including selection of ingredients, unique
blending processes, and step-by-step directions as to the exact ingredient
measurements, the brewing and blending times and each step's precise brewing
temperature, the chronological sequence of blending, the blending device and
related systems, the order of ingredients, the cooling steps and exact
temperatures, and the fermenting time.
The Licensor's secret processes, formulae, trade secrets, engineering, design,
process and operating information, inventions, developments, technical data and
other scientific and technical information relating to any process or method now
owned or controlled by the Licensor or its Affiliate relating in any way to the
Products shall remain a trade secret and are non-disclosable.
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