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EXHIBIT 10.1
AMENDMENT NO 1.
TO
LICENSE AGREEMENT
This Amendment No. 1 (the "Amendment") to License Agreement dated
February 2, 1996 (the "License Agreement") is made as of February 21, 1997 by
and between RICOR Racing and Development L.P., a California limited partnership
("Licensor"), Ricor, Inc., a California corporation ("Ricor, Inc."), Edelbrock
Corporation, a Delaware corporation ("Licensee"), and, with respect to Sections
2, 5(a), 5(b) and 5(h) only, Mr. Xxx Xxxxxxxxxx, an individual residing in the
State of California.
RECITALS
A. Licensor possesses certain intellectual property rights,
including patent rights, trademark rights, trade secrets, proprietary
information, technical information, know-how and use data relating to
manufacturing techniques and design specifications for shock absorbers.
B. Licensor and Licensee entered into the License Agreement
pursuant to which Licensee obtained a license to make, use and sell such shock
absorbers in a certain territory and in certain markets subject to the terms,
conditions and restrictions set forth in the License Agreement.
C. Licensor and Licensee desire to amend the License
Agreement pursuant and subject to the terms and conditions of this Amendment.
In consideration of these premises and of the mutual promises contained
in this Amendment and in the License Agreement, the parties hereby agree as
follows:
1. Definitions. Except as otherwise set forth herein, all defined
terms as used herein shall have the same meaning as in the License Agreement,
with the following exceptions:
(a) Section 1.5 of the License Agreement shall be restated
in its entirety as follows:
1.5 Exclusive Territory. "Exclusive Territory" means all of
the countries of the world, except for Central and South
America, Asia, the Far and Middle East and the island nations of
the South Pacific (such as Indonesia and the Philippines) (the
"Excluded Territory"), but including Australia, New Zealand and
the countries of the Caribbean. From and after one year from the
date of
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this Amendment, the term "Exclusive Territory" shall mean all of
the countries of the world except for (i) any countries situated
in the Excluded Territory with respect to which Licensor has
entered into a definitive agreement providing exclusive
aftermarket rights under the Licensed Patents, Trademarks and
Technical Information to make, use, sell, advertise and
distribute Licensed Items to a party other than Licensee and
(ii) the Non-Exclusive Territory as defined herein.
(b) Section 1.6 of the License Agreement shall be restated
in its entirety as follows:
1.6 Field of Use. "Field of Use" means the non-OEM
aftermarket for all applications that have the ability to
utilize the Licensed Items and Technical Information (excluding
military vehicle applications sold to the French military in the
country of France and racing applications in Europe and Africa
as defined in the Letter Agreement dated September 28, 1995, by
and between Xxx Xxxxxxxxxx and Xxxxxx XxXxxxxx).
(c) Section 1.12 of the License Agreement shall be restated
in its entirety as follows:
1.12 Non-Exclusive Territory. "Non-Exclusive Territory" means
any countries situated in the Excluded Territory with respect to
which Licensor has entered into a definitive agreement providing
non-exclusive aftermarket rights under the Licensed Patents,
Trademarks and Technical Information to make, use, sell,
advertise and distribute Licensed Items to a party other than
Licensee.
(d) Section 1.15 of the License Agreement shall be restated in its
entirety as follows:
1.15 RICOR Shock Absorbers. "RICOR Shock Absorbers" means
shock absorbers containing Licensor's proprietary "inertia
sensitive system" embodied in the Licensed Patents and Technical
Information, including both single and multiple-tube
applications.
2. Additional Patents, Improvements and Discoveries
Section 2.4 of the License Agreement shall be restated in its
entirety as follows:
2.4 Additional Patents, Improvements and Discoveries.
Licensor and/or Xxx Xxxxxxxxxx will promptly notify Licensee
whenever either of them has
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filed an application for a patent in the United States Patent
and Trademark Office pertaining to the subject matter of the
Licensed Items, upon any material change in the status of any
Licensed Patents or upon discovery of any improvement to or
derivation of any Licensed Patent. All of such new patents,
Improvements, derivations or discoveries (collectively, the
"Rights") shall remain the property of Licensor and/or Xxx
Xxxxxxxxxx, provided that Licensor and/or Xxx Xxxxxxxxxx pays
all costs and expenses of ownership of the Rights and provided
that such Rights shall be added to Exhibit A to the License
Agreement and become licensed to Licensee to the same extent as
other rights licensed under the license Agreement at no
additional cost or consideration. In the event Licensor and/or
Xxx Xxxxxxxxxx, within a reasonable time after notification of
Licensee, chooses not to secure ownership of any Right which may
result in a patent, Licensee shall have the right to take
ownership of such Right without any additional consideration to
Licensor provided that Licensee pays all costs and expenses of
ownership of any such Rights. Licensor and Xxx Xxxxxxxxxx agree
that, upon the reasonable request of Licensee and without
further consideration, they will execute and deliver to Licensee
such documents and will take such other actions as may be
necessary and appropriate in order to vest in Licensee the full
legal rights in any Right assumed by Licensee under this Section
2.4.
3. Additional Performance Standards
(a) In addition to the minimum net sales price goals set
forth in Section 8.1(b) of the License Agreement, Licensor or Licensee, at
either party's discretion and option shall have the right to terminate the
License Agreement including this Amendment or to convert any license granted
hereunder or thereunder into a nonexclusive license, in respect of any region
designated below, in the event Licensee fails to "address the market" in such
region in accordance with the following schedule:
TERRITORY "ADDRESS BY" DATES
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Europe July 1, 1999
Australia/New Zealand July 0, 0000
Xxxx/Xxx Xxxx (xxxxxxxxx Xxxxxx Xxxx)
(xx not addressed by Licensor) July 1, 1999
South Pacific Nations (if not
addressed by Licensor) July 0, 0000
Xxxxxxx xxx Xxxxx Xxxxxxx (xx not
addressed by Licensor) July 1, 2000
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Middle East (if not addressed by Licensor) July 1, 0000
Xxxxxx July 1, 2002
(b) Failure by Licensee to meet an "address by" date with
respect to a particular region will not permit Licensor or Licensee to
terminate the license or convert the license into a nonexclusive license with
respect to any other region.
(c) The term "address the market" means the taking of willful
efforts towards commercializing RICOR Shock Absorbers for aftermarket
applications in the region, including commencement of research and development
and marketing efforts, either directly or through a third party sublicensee,
consistent with and similar to the efforts undertaken by Licensee to
commercialize RICOR Shock Absorbers for the North American aftermarket. Merely
entering into a sublicense without taking the efforts referred to in the
previous sentence shall not be sufficient for this purpose.
(d) Licensor's or Licensee's right to terminate or convert due
to failure to meet an "address by" date shall be exercisable by Licensor or
Licensee by six (6) months written notice to the other party. If, during such
six (6) month period, Licensee takes action sufficient to "address the market"
as defined above, Licensor or Licensee shall withdraw its notice, which shall
be deemed of no further effect.
4. Advances, Loans and Prepaid Royalties
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(a) Section 2.5(g) of the License Agreement shall be
deleted in its entirety.
(b) In lieu of Section 2.5(g), the parties agree as
follows: The parties understand and acknowledge that Licensee has paid to
Licensor the amount of $50,000 and has loaned to the Licensor the amount of
$160,000 (with interest accrued to date of $8,524.58) (the "Loan"). In addition
to the foregoing, on the date of execution of this Amendment, Licensee shall
advance to Licensor the amount of $140,000. From and after the date of this
Amendment, all of such amounts, totalling $358,524.58, shall be deemed as
advances on royalties and upon execution of this Amendment the Loan shall be
cancelled.
Beginning one year from the date of execution of this
Amendment, Licensee shall be entitled to deduct from royalty payments required
to be made under the License Agreement an aggregate of $358,524.58 (plus all
amounts designated as "prepaid royalties" paid pursuant to the Consulting
Agreement referred to in Section 5(a) of this Amendment), which deduction, if
taken, shall be reflected on the appropriate royalty statement furnished under
the License Agreement and in no event shall the deduction with respect to any
royalty payment exceed 50% of such payment. Prior to one year from the date of
this Amendment Licensee shall not be entitled to any royalty set-off in respect
of any amounts loaned or advanced.
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5. Development Provisions
(a) Xxx Xxxxxxxxxx Consulting. In addition to its support
obligations set forth in the License Agreement, Licensor shall cause Xxx
Xxxxxxxxxx, and Xxx Xxxxxxxxxx hereby agrees, to provide consulting services
and advice to Licensee, at the request of Licensee from time to time, in
connection with the research and development of patents, improvements,
derivations, discoveries and other inventions in connection with the subject
matter of the Licensed Items and Technical Information. In exchange for such
services Licensee shall pay to Licensor, for a period of one year, the amount
of $12,500 per month, of which $7,500 per month shall be credited against
future royalties beginning one year from the date of this Amendment as set
forth in Section 4(b) of the Amendment. From and after one year from the date
of the Amendment, Licensee shall pay to Licensor $5,000 per month for such
services, provided, that either party may terminate the agreement set forth in
this Section 5(a) on thirty (30) days prior written notice, such termination
not to affect any other term or provision of this Amendment or the License
Agreement. Licensee shall reimburse Licensor for all reasonable pre-approved
expenses incurred by Licensor in reasonable transportation, room and board of
Licensor personnel while at any facility of Licensee.
(b) Confidentiality. Mr. Xxx Xxxxxxxxxx, by executing this
Amendment, hereby personally agrees to keep confidential any and all
Confidential Information with respect to Licensee to the same extent as
Licensor and Licensee have agreed to maintain the confidentiality of each
other's Confidential Information as set forth in Article 9 of the License
Agreement.
(c) Research and Development Employees. Upon execution of
this Amendment, Licensee, Licensor and Ricor, Inc. shall use their reasonable
efforts to cause Licensee to hire certain current employees of Licensor and/or
Ricor, Inc., as designated by Licensee ("Ricor Employees"), for the purpose of
conducting shock absorber research and development. Any employment by Licensee
of any Ricor Employees shall be on similar terms to current employees of
Licensee engaged in similar work. Licensee understands and acknowledges that
employment of any current Licensee employee is subject to the approval of the
particular employee and Licensor can offer no guarantee of acceptance of
employment by any Ricor Employee. Licensor and Ricor, Inc. reserve the right to
continue to employ any person not employed by Licensee for whatever reason.
(d) Purchase of Equipment. Licensor shall sell and
Licensee shall purchase certain equipment and inventory owned by Ricor, Inc.
for a purchase price of $95,000 pursuant to an asset purchase agreement in
substantially the form attached hereto as Exhibit A.
(e) Licensor Development Needs. Licensee recognizes that
Licensor may, from time to time, desire to use Licensee's development resources
in connection with any additional aftermarket licenses in the territories
excluded from the definition of Exclusive
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Territory and in connection with OEM commercialization efforts as set forth in
Section 6 of this Amendment. Licensee agrees that it will use its reasonable
best efforts to make such development resources available to Licensor when
reasonably requested by Licensor subject to payment to Licensee by Licensor or
any licensee of Licensor of usual and customary development fees to be
negotiated in good faith from time to time by the parties. Such fees shall be
based on Licensee's cost plus usual and customary profit and shall be
substantially in accordance with the schedule of costs outlined in Exhibit B
hereto.
(f) Payment of Licensor/Ricor, Inc. Rent, Utilities, Etc.
Licensee shall promptly pay, upon submission of monthly bills in accordance
with Licensee's instructions, all rent, utilities and other approved costs in
respect of the Ricor, Inc. development facility in Xxxxxx Creek, California,
provided, that any increase in rent from the current level shall be paid only
upon approval of such increase by Licensee. In addition, Licensor may from time
to time request additional material, equipment and supplies, payment for which
shall be in the sole discretion of Licensee.
(g) Indemnification. In addition to the indemnification
obligations set forth in Section 7.3 of the License Agreement, Licensee agrees
to include any claims, demands, liabilities, actions, suits, proceedings
losses, damages, judgments, expenses and/or costs (including without limitation
reasonable attorneys' fees and related costs) based on or arising out of any
claims or demands by any third party that a Licensed Item or Licensed Items
were improperly or defectively designed and such improper or defective design
was caused by acts or omissions of Licensee, provided that Licensee shall not be
responsible for indemnifying Licensor to the extent that such improper or
defective design was caused by acts or omissions of Xxx Xxxxxxxxxx, Licensor
and/or Ricor, Inc.
(h) Xxxxxxxxxx Covenant Not to Compete. During such time as
Licensee is paying Licensor pursuant to Section 5(a) hereof and for a period of
two (2) years thereafter, Xxx Xxxxxxxxxx agrees not to, directly or indirectly,
own more than 10% of, manage, operate, join, control, assist or participate in
the ownership, management, operation or control of any business which, directly
or indirectly, competes with the Licensee in the business of making, using and
selling shock absorbers within the Exclusive Territory. The restrictive
covenant contained in this Section 5(h) shall be suspended during any time
during the period that Licensee shall not be engaged in the business of making,
using or selling RICOR Shock Absorbers.
6. OEM Provisions.
(a) All OEM markets and applications shall remain the sole
and exclusive property of Licensor; however, Licensor and Licensee agree to
work together to exploit the OEM market on the terms outlined below.
(b) Licensee and Licensor understand and acknowledge that
in certain circumstances it may be beneficial for Licensee to market certain
OEM applications under
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the "Edelbrock umbrella", by which it is meant use of Licensee's name,
expertise and facilities in order to validate and strengthen the image of RICOR
Stock Absorbers to potential OEM licensees. In the event Licensor deems it
beneficial to market its technology to the OEM market under the Edelbrock
umbrella, Licensee agrees to make available to Licensor its name, facilities,
expertise and/or personnel, the extent and nature of which shall be determined
by agreement of the parties on a case-by-case basis, taking into account
Licensor's needs and Licensee's resources.
(c) In the event Licensee independently encounters what it believes
to be a significant OEM opportunity, Licensee shall make every reasonable effort
to promptly notify Licensor of such opportunity and shall make available
appropriate resources of Licensee to assist Licensor in exploiting such
opportunity.
(d) If Licensee contributes to the securing of any OEM license or
other arrangement, whether by permitting Licensor to market OEM under the
Edelbrock umbrella and/or by introducing Licensor to a significant OEM
opportunity, Licensee shall be entitled to receive a percentage of all fees and
royalties actually received from any such license or arrangement, which
percentage shall generally be assumed to be 20% but shall be subject to
adjustment by the Committee (as defined below) in light of the relative
contribution and efforts of each Licensor and Licensee. In addition, Licensor
shall be entitled to receive a percentage of any consideration actually
received by Licensee in connection with the manufacture by Licensee of any
Licensed Items for the OEM market or to the extent Licensee participates in the
chain of distribution with respect to any Licensed Items for the OEM market,
which percentage shall generally be assumed to be 20% but shall be subject to
adjustment by the Committee (as defined below).
(e) The Committee shall consist of six members, three of which shall
be appointed by Licensee ("Licensee Members") and three of which shall be
appointed by Licensor ("Licensor Members"). The initial Licensee Members shall
be Messrs. Xxxxxx Xxxxxxxxx, Xxxxxxx Xxxxxxxx and Xxxx Xxxxxxxx. The initial
Licensor Members shall be Messrs. Xxx XxXxxxxx, Xxx Xxxxxxxxxx and Xxxxx
Xxxxxxx. The Committee shall meet from time to time as needed to further the
commitments and obligations of the parties set forth in this Amendment and the
License Agreement. The Committee shall endeavor to seek 100% consensus in all
matters; however, in the event 100% consensus cannot be achieved, approval of a
majority of the Committee members shall be required for any action to be
effective. Should any Licensee Member resign or die or become disabled, the
vacancy shall be filled by a member or an affiliate of Licensor's organization
as selected by a majority of the remaining Licensor Members. The Committee may
act by unanimous written consent in lieu of a meeting. The presence in person or
telephonically of each Committee member shall be required to constitute a
quorum, except that any Committee member may designate another Committee member
as his proxy with respect to any particular meeting or action.
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(f) In the event the Committee is deadlocked and cannot
come to an agreement on any particular matter, the parties agree to submit such
matter for binding resolution to a mutually-agreeable third-party who is not an
affiliate of, advisor to, employee of or otherwise associated with either of
Licensor or Licensee. Subject in all cases to the rights of the parties to seek
arbitration under the License Agreement or any other rights, the parties agree
that the decision of such third-party shall be binding and that such third-party
shall be entitled to consider any and all information such person believes is
relevant to a resolution of the matter.
7. Miscellaneous
(a) Other Licensor Agreements. In the event Licensor
enters into any agreement in respect of aftermarket territories not included in
the Exclusive Territory licensed hereby, Licensor shall include in such license
a prohibition on the licensees, any sublicensees, any suppliers or any
manufacturers thereunder from selling any RICOR Shock Absorbers falling within
the scope of the Licensed Patents or Technical Information for aftermarket
applications in any territory exclusively licensed to Licensee under this
Amendment and the License Agreement, and shall designate Licensee as a third
party beneficiary of such prohibition. Licensor agrees that any person who is
known to violate such prohibition shall be treated as a third party infringer
as set forth in Section 5.3 of the License Agreement and further agrees that it
will cooperate with Licensee to permit Licensee to enforce such prohibition as
a third party beneficiary. Licensor represents and warrants to Licensee that
the license agreement with Xxxxxx XxXxxxxx referred to in Section 1(b) of this
Agreement and the License Agreement are the only agreements under which the
Licensed Patents and Technical Information are licensed to any third party.
(b) Press Releases. There shall be no public disclosure by
Licensor or any of its agents or affiliates of the contents of this Amendment
or of the transactions contemplated herein unless and until agreed to in
writing by Licensee. Licensee may make disclosure of the contents of this
Amendment and/or of the transactions contemplated hereby at its discretion,
provided, that Licensee shall make all reasonable efforts to allow Licensor the
opportunity to review any press releases mentioning Licensor or its technology
prior to release. Nothing herein shall in any way affect Licensee's obligations
to comply with applicable laws relating to the disclosure of public information.
(c) Dispute Resolution. The parties understand and
acknowledge that certain provisions of this Amendment are subject to
interpretation, including, but not limited to the definition of "address the
market" in Section 3(c) hereof. Without in any way limiting the rights of the
parties to seek arbitration under the License Agreement or any other rights, the
parties agree that in the event of a dispute regarding any matter under this
Amendment or the License Agreement the parties will attempt to resolve the
dispute through the Committee.
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(d) Effect of Amendment. Except as otherwise modified hereby, the
terms of the License Agreement shall remain in full force and effect.
IN WITNESS WHEREOF, the parties have executed this Amendment as of the
date first written above.
RICOR RACING AND DEVELOPMENT, L.P. EDELBROCK CORPORATION
000 Xxxxxx Xxxx 0000 Xxxxxxxxxx Xxxxxx
Xxxxxx Xxxxx, XX 00000 Xxxxxxxx, XX 00000
By: RICOR, Inc., its General
Partner
/s/ XXX XXXXXXXXXX By: /s/ XXXXXX XXXXXXXXX
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Xxx Xxxxxxxxxx Xxxxxx Xxxxxxxxx
President President
RICOR, Inc.
By: /s/ XXX XXXXXXXXXX
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Xxx Xxxxxxxxxx
President
With respect to Sections 2, 5(a), 5(b)
and 5(h) hereof only:
/s/ XXX XXXXXXXXXX
--------------------------------
Xxx Xxxxxxxxxx
