EXHIBIT 10.66
AGREEMENT
FOR
STRATEGIC ADVISORY SERVICES
This Agreement for Strategic Advisory Services (the "Agreement"), dated
as of October 19, 2003, is entered into by and between Xxxxx Xxxx, a citizen of
Japan with his principal place of residence located at 0-00-0-000 Xxxxxxx,
Xxxxxx-xx, Xxxxx 000-0000, Xxxxx (the "Strategic Adviser"), and Xxxxxxx
Technology Company, Inc. ("BTI") having its principal place of business at 00
Xxxxxxxx Xxxxx, Xxxxxxx, XX 00000-0000 XXX (each a "Party," and collectively the
"Parties").
WHEREAS, the Strategic Adviser is currently employed as the Chairman
and serves as a Director of Xxxxxxx Japan Limited ("BJL"), and as a Director of
BTI, as well as an officer and/or director of various subsidiaries of BTI
(collectively, BTI, BJL and all other subsidiaries and affiliates are referred
to as the "BTI Group");
WHEREAS, the Strategic Adviser desires to retire from full-time
employment with BJL and from part-time positions with various companies in the
BTI Group effective as of the close of business on December 31, 2003; and
WHEREAS, BTI desires to continue to benefit from the knowledge and
experience of the Strategic Adviser in the form of strategic advisory services
rendered on behalf of the BTI Group, and Strategic Adviser is willing to
continue in this capacity, under the terms and conditions provided in this
Agreement.
NOW, THEREFORE, in consideration of the mutual promises contained
herein, the sufficiency of which is hereby acknowledged, the Parties agree as
follows:
1. ENGAGEMENT. Company hereby engages the Strategic Adviser and the
Strategic Adviser hereby agrees to hold himself available to render, at the
request of the Chairman and CEO of BTI and the President and Representative
Director of BJL, strategic advisory services to the BTI Group, to the best of
his ability, upon the terms and conditions hereinafter set forth.
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2. TERM AND TERMINATION. The term of this Agreement shall begin on
January 1, 2004, and shall continue indefinitely until terminated. Either Party
may terminate this Agreement at any time, with or without cause, by giving the
other Party 180 days notice in advance of termination in accordance with the
provisions of Paragraph 12 below, provided however, that if BTI elects to
terminate this Agreement without good and substantial cause prior to December
31, 2008, BTI shall cause BJL to pay the Strategic Adviser a cancellation fee
equal to the total outstanding and unpaid amount of the Retainer Fee that would
have been payable had this Agreement remained in force through December 31,
2008, along with any earned but unpaid Project Fees, both as defined in
Paragraph 3 below.
3. RETAINER FEE AND PROJECT FEE. BTI shall cause BJL to pay the
Strategic Adviser an annual retainer fee of Six Million Seven Hundred and Twenty
Thousand (JPY6,720,000) Japanese Yen (adjusted annually for inflation in
Japan)(1) divided into 12 equal monthly payments to fulfill the duties set forth
in Paragraph 4(a) and 4(b) below (the "Retainer Fee"). Payment of the Retainer
Fee shall entitle the Chairman and CEO of BTI and the President and
Representative Director of BJL to call upon the Strategic Adviser for up to a
maximum of 45 days per year, provided however, that the Retainer Fee shall be
due and payable whether or not the services of the Strategic Adviser are
actually required for the entire 45 days in any given year. If services of the
Strategic Adviser in excess of 45 days per year are required, and the Strategic
Adviser is willing and able to render such additional services, the Strategic
Adviser shall be paid at the rate of One Hundred Twenty Thousand (JPY120,000)
Japanese Yen per day, with a half-day minimum being guaranteed at Sixty Thousand
(JPY60,000) Japanese Yen (the "Project Fee"). The Retainer Fee and the Project
Fee shall be payable without deduction, except for Japanese withholding taxes if
and as required by law, and shall be paid monthly on the same day and in the
same manner as BJL makes its regular monthly payroll deposits.
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(1) adjusted annually as of January 1 of each calendar year commencing
January 1, 2005
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4. DUTIES AND SUPPORT. The Strategic Adviser shall perform the
following duties for the BTI Group:
(a) Strategic Adviser shall continue to serve as the Chairman
and as a Director of BJL, and as a Director of Xxxxxxx India
Private Limited ("BIN"), and will serve for one additional
term if re-elected by the shareholder of each entity upon
expiration of the current terms. Strategic Adviser shall
serve as the representative of BJL to the Japan Printing
Machinery Industry Association (the "JPMA"), where he is
currently a Vice President, so long as he remains as
Chairman of BJL or until such time as the JPMA requests that
he resign from the Vice President post.
(b) If the Strategic Adviser ceases to serve in an executive
position at the JPMA, he shall resign from the position of
Chairman of BJL, but shall continue as a strategic adviser
pursuant to the terms and conditions of this Agreement.
(c) Strategic Adviser shall perform additional duties and
provide strategic advice as reasonably requested by the
Chairman and CEO of BTI and the President and Representative
Director of BJL.
In addition to the above duties, the Strategic Advisor shall continue to serve
as a Director of BTI, and if re-elected by the shareholders of BTI, will serve
for one additional term as a Director of BTI. The Strategic Adviser will not
receive a fee for attending Board of Directors meetings of BTI, and time doing
so shall not be counted towards the 45 days per year covered by the Retainer
Fee. He shall, however, be entitled to receive any and all other benefits, stock
options and perquisites afforded to (2)Directors of BTI. Consistent with (c)
above, the Strategic Adviser shall report directly to the Chairman and CEO of
BTI, and to the President and Representative Director of BJL. The BTI Group
shall provide the Strategic Adviser with the support necessary to perform his
duties effectively. In particular and without limitation, BTI and BJL shall
provide the Strategic Adviser, in a timely manner, with all pertinent
information relating to the business and affairs of the BTI Group, as well as
with specific and general information relating to the field of graphic arts and
control products at-large (the "Industry").
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(2)...to "Non-Employee Directors"...
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5. CLUB MEMBERSHIPS AND EXPENSES. The Strategic Adviser shall be
reimbursed on a monthly basis by BJL for all reasonable business expenses
incurred by the Strategic Adviser in connection with the performance of his
services hereunder in the same manner as present. Specifically, and without
limitation, the Strategic Adviser shall continue to be entitled to payment by
BJL of all current club membership dues, such as the Tokyo American Club, and
shall continue to enjoy the same travel and business expense reimbursement
policies as he currently enjoys.
6. RETIREMENT PAYMENTS, AND SOCIAL AND WELFARE BENEFITS. BTI shall
cause BJL to continue to provide the Strategic Adviser with all vested and
accrued retirement payments, and all Japanese social and welfare benefits as
currently enjoyed by the Strategic Adviser. Nothing contained herein shall be
deemed to amend, modify or reduce any retirement compensation or other benefits
provided to the Strategic Adviser under any prior agreement, retirement
allowance program, or other arrangement currently in place.
7. D&O INSURANCE, LIMITATION OF LIABILITY, AND INDEMNIFICATION. BTI
shall maintain at all times officer and director insurance covering the
Strategic Adviser in the same manner as it does for the other Directors of BTI
and the BTI Group, for so long as Strategic Adviser remains as a Director of BTI
or of any company in the BTI Group. The Strategic Adviser shall not be
answerable for the default or misconduct of any agent, accountant or attorney
appointed by him in pursuance of his duties hereunder, if such agent, accountant
or attorney shall have been selected with reasonable care. The duties and
responsibilities of the Strategic Adviser shall be limited to those expressly
set forth in this Agreement, and no implied covenants or obligations shall be
read into this Agreement against the Strategic Adviser. BTI shall indemnify and
save harmless the Strategic Adviser from any claim, liability, loss, cost or
expense of any kind or character whatsoever, and will at all times pay all costs
and expenses of any suit or litigation of any character, arising from, in
connection with or with respect to this Agreement, and if the Strategic Adviser,
BTI or any member of the BTI Group, as the case may be, shall be made a party
thereto, BTI shall pay all costs and expenses, including reasonable counsel fees
and expenses, to which the Strategic Adviser may be subject by reason thereof.
The Strategic Adviser may consult with counsel, and the opinion of such counsel
shall be full and complete authorization and protection in respect of any action
taken or omitted or suffered by the Strategic Adviser, as
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the case may be, hereunder in good faith and in accordance with such opinion.
Notwithstanding anything contained herein to the contrary, the Strategic Adviser
shall not be liable for any ordinary, actual, direct, special, indirect or
consequential damages or for loss of profits or business resulting from the
conduct or advice of the Strategic Adviser.
8. NON-COMPETITION. The Strategic Adviser shall not compete, directly
or indirectly, with the BTI Group during the term of this Agreement, or for a
period of six months following its termination, except as provided in Paragraph
9 below.
9. INVENTIONS AND INTELLECTUAL PROPERTY. The special terms and
conditions pertaining to the rights of BTI and the Strategic Adviser with
respect to any inventions or other intellectual property created or otherwise
developed by the Strategic Adviser ("IPR") are set forth in Appendix A, attached
hereto and incorporated herein by reference.
10. ASSIGNMENT. Neither BTI nor the Strategic Adviser shall voluntarily
or by operation of law assign or otherwise transfer the obligations incurred on
their respective parts, pursuant to the terms of this Agreement, without the
prior written consent of the other, provided however, that(3) the parties shall
have the automatic right to assign their IPR to any company in which (4)they
own, directly or indirectly, a controlling interest. Any attempted assignment or
transfer in violation of the preceding sentence shall be wholly void. It is
expressly understood that any request by BTI to assign this Agreement shall be
accompanied by a written undertaking, in form and substance reasonably
acceptable to the Strategic Adviser, from the assignee unequivocally stating
that it will assume, and faithfully fulfill, all of the terms and conditions of
this Agreement.
11. MODIFICATION OF AGREEMENT. This Agreement can be modified by the
Parties only by a written supplemental agreement executed by both Parties.
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(3)...either of the parties...
(4)...it owns, directly...
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12. NOTICE. Any notice required, or permitted, to be given hereunder
shall be sufficient if in writing, and if sent by courier or by registered or
certified mail, postage prepaid, addressed as follows:
If to BTI:
Xxxxxxx Technology Company, Inc.
00 Xxxxxxxx Xxxxx
Xxxxxxx, XX 00000-0000 XXX
Attn: Xx. Xxxxxx X. Xxxxx(5)
With a copy to:
Xxxxxxx Japan Limited
0-0-00 Xxxx
Xxxxxx-xx, Xxxxx 000-0000 Xxxxx
Attn: President and Representative Director
If to the Strategic Adviser:
Xxxxx Xxxx
2-21-6-501 Xxxxxxxx
Xxxxxx-xx, Xxxxx 000-0000, Xxxxx
13. WAIVER OF BREACH. The waiver by either Party of any beach of any
provision of this Agreement shall not operate or be construed as a waiver of any
subsequent breach.
14. HEADINGS. Paragraph headings have been inserted in this Agreement
as a matter of convenience for reference only and it is agreed that such
paragraph headings are not a part of this Agreement and shall not be used in the
interpretation of any provision of this Agreement.
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(5)(or then current CEO)
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15. GOVERNING LAW AND CHOICE OF FORUM. This Agreement shall be governed by
the laws of Japan without regard to the conflict of law rules thereof. All
disputes, controversies or differences which may arise between the Parties
hereto, out of or in relation to or in connection with this Agreement shall be
finally settled by arbitration in Tokyo, Japan in accordance with the Commercial
Arbitration Rules of The Japan Commercial Arbitration Association. Arbitration
shall be conducted before a single arbitrator if both Parties can agree on the
arbitrator. If the Parties cannot agree on a single arbitrator, three
arbitrators shall be appointed, with each Party selecting one arbitrator and the
two so selected jointly agreeing on the third arbitrator who shall serve as
chair of the arbitral panel. The award rendered by the arbitrator(s) shall be
final and binding upon the Parties hereto. The language of any such arbitration,
and the award, shall be Japanese.
16. ENTIRE AGREEMENT. This Agreement contains the entire agreement of
the Parties with respect to the subject matter hereof and supercedes all
contracts, agreements and understandings between the Parties concerning the
subject matter hereof, except as contemplated by, and provided for in, Paragraph
6 above.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be duly
executed, as of the day and year first above written, in triplicate with each
signed version being deemed to be an original.
STRATEGIC ADVISER: XXXXXXX TECHNOLOGY COMPANY, INC.
/s/ Xxxxx Xxxx By: /s/ Xxxxxx X. Xxxxx
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Xxxxx Xxxx Xxxxxx X. Xxxxx
President & CEO
ACKNOWLEDGED AND AGREED:
XXXXXXX JAPAN LIMITED
By: /s/ Takayuki Miyaoku
---------------------
Takayuki Miyaoku
President and Representative Director
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APPENDIX A
(REFERENCE PARAGRAPH 9)
INVENTIONS AND INTELLECTUAL PROPERTY
The Strategic Adviser may, but shall not be obligated to, create or
otherwise develop valuable IPR, whether patentable or not, with applications in
the Industry during the term of this Agreement. In the event that the Strategic
Adviser creates or otherwise develops multiple IPR, the provisions of this
Appendix A shall apply to each item of IPR separately.
With respect to the IPR, the Strategic Adviser hereby grants to BTI a
right of first refusal to license the IPR, subject to the following terms and
conditions:
A. The Strategic Adviser shall, in his sole discretion and cost,
decide whether or not to apply for patents and other legal protection with
respect to the IPR. It is currently anticipated that patent applications, if
filed at all, will be limited to major Industry countries such as, the US,
Japan, China, India, the UK, Italy France and Germany.
B. At such time as the Strategic Adviser believes, in his sole
discretion, that the IPR is commercially valuable in the Industry, or a patent
application has been filed, the Strategic Adviser shall provide BTI with a
written description of the IPR (the "Disclosure") solely for the purpose of
evaluation. BTI shall have no right to use, directly or indirectly, the IPR
contained in the Disclosure other than for the purpose of evaluation.
Specifically, and without limitation, BTI shall not use the Disclosure to
further its own research and development without having first entered into a
license agreement with the Strategic Adviser as contemplated herein.
C. BTI shall hold the Disclosure in strict confidence, disclose it to
employees only on a "need to know" basis, and shall treat it in the same manner
as it treats its own confidential and proprietary information.
D. Any improvements, inventions or other intellectual property made
by BTI in connection with or resulting from the Disclosure shall be jointly
owned by BTI and the Strategic Adviser.
E. In the event that the Disclosure is of interest to BTI, then BTI
shall pay to the Strategic Adviser the non-refundable sum of Five Thousand
($5,000) US Dollars to compensate the Strategic Adviser for the time and effort
required to assist BTI during the evaluation. This sum will be credited to the
non-refundable, lump sum, upfront royalty payment contemplated in paragraph 2
below in the event that the Strategic Adviser and BTI enter into a license
agreement for the IPR.
F. Within 90 days of the Disclosure, BTI shall inform the Strategic
Adviser in writing whether or not BTI intends to exercise its right to entire
into a license agreement with the Strategic Adviser (the "Notice of Intent to
License") for the IPR.
G. Within 30 days after receipt of the Notice of Intent to License,
the Parties shall enter into good faith negotiations with the aim of concluding
a mutually acceptable license agreement covering the IPR. Failure to conclude a
valid and binding license agreement within 180 days after the start of good
faith negotiations shall be treated in the same manner
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as a notice from BTI to the Strategic Adviser that it does not intend to license
the IPR, to wit, the Strategic Adviser shall be released from his obligations
hereunder to BTI with respect to the IPR, including without limitation the duty
not to compete as provided in Paragraph 8 of the Agreement, and he shall be free
to use, sell, license or otherwise benefit, directly or indirectly, from the IPR
in any manner as he deems appropriate in his sole discretion.
H. In the event BTI (a) notifies the Strategic Adviser that it does
not intend to license the IPR, or (b) fails to send the Notice of Intent to
License as contemplated in F above in a timely manner, or (c) fails to enter
into good faith negotiations as contemplated in G above in a timely manner, then
the Strategic Adviser shall be released from his obligations hereunder to BTI
with respect to the IPR, including without limitation the duty not to compete as
provided in Paragraph 8 of the Agreement, and he shall be free to use, sell,
license or otherwise benefit, directly or indirectly, from the IPR in any manner
as he deems appropriate in his sole discretion. Release of the Strategic
Adviser's obligations as contemplated by the preceding sentence is contingent on
the Strategic Adviser having negotiated in good faith with BTI.
In order to guide the Parties negotiations as contemplated in G
above, any license agreement shall include the following:
1. Payment of a sum of money sufficient to compensate the Strategic
Adviser for all of his reasonable costs and expenses, including, without
limitation, attorneys' fees, licensing fees for included technology, other third
party charges, and patent application fees. The costs and expenses are estimated
to be in the approximate range of Seventy-five Thousand ($75,000) to One Hundred
Thousand ($100,000) US Dollars depending on the complexity of the IPR and the
number of countries in which patent protection is sought.
2. Payment of a non-refundable, lump sum, upfront royalty based on a
mutually agreed joint estimate of the net invoice value of the IPR during the
first two years of the license agreement (the "Lump Sum Royalty"). The amount of
the Lump Sum Royalty is estimated to be between One Hundred Thousand ($100,000)
and Three Hundred Thousand ($300,000) US Dollars for most IPR. Seventy-five
percent (75%) of the Lump Sum Royalty will be applied as a credit against the
payment of running royalties, if any, calculated pursuant to Paragraph 3 below
during the first two years of the license agreement; provided however, that the
Strategic Adviser shall not be obligated under any circumstances to refund any
part or portion of the Lump Sum Royalty.
3. Payment of a running royalty calculated in accordance with the
following schedule:
(a) 3% of net invoice value for IPR that is not the subject of a
patent application or issued patent,
(b) 5% of net invoice value for IPR that is the subject of a
patent application or issued patent,
(c) 7% of net invoice value for IPR that is the subject of a
patent application or issued patent, and is very useful to
BTI, and
(d) 10% of net invoice value for IPR that is the subject of a
patent application or issued patent, is very useful to BTI,
and gives BTI a substantial competitive advantage in the
Industry.
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For purposes of Paragraph 3(c), IPR that is very useful is any IPR that allows
BTI not only to develop and enter into the market with a new or improved product
but also provides a strong sales or cost reduction opportunity or technological
advantage(s) over competitors. IPR providing a substantial competitive advantage
in the Industry under Paragraph 3(d) means IPR that enables BTI to develop and
market a new or improved product with an exclusive technological solution or
advantage for extremely strong sales or cost reduction opportunities.
4. Such other terms and conditions, such as audit rights, as are
customarily found in international license agreements pertaining to intellectual
property rights.
-END-
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