EXHIBIT 10.9
FORM OF ASSIGNMENT AND ASSUMPTION AGREEMENT
This Assignment and Assumption Agreement is made and entered into as of
January 1, 1999, by and between Kronos, Inc., a Delaware corporation formerly
known as Kronos (USA), Inc. ("Kronos"), and Kronos International, Inc., a
Delaware corporation ("Kronos Int'l").
WHEREAS, Kronos, pursuant to a contribution to the capital of Kronos,
Int'l, in exchange for six hundred forty-seven (647) shares of Class B Preferred
Stock (the "Preferred Stock") of Kronos, Int'l, issued pursuant to the
Certificate of Amendment to Certificate of Incorporation of Kronos
International, Inc. in the form attached hereto as Exhibit A and incorporated
herein by reference, desires to assign its right, title and interest in and to
intellectual property relating to titanium dioxide products to Kronos Int'l in
the countries of Belgium, Canada and Norway, as well as Kronos' licenses to
affiliate in such countries, and Kronos Int'l desires to issue the Preferred
Stock in exchange for such intellectual property and to assume all of Kronos'
obligations thereunder;
WHEREAS, Kronos and Kronos Int'l agree upon the valuation of such
intellectual property as set forth on Exhibit B attached hereto and incorporated
herein by this reference, which valuation is based upon methodologies
appropriate to third party, arms' length transactions;
NOW, THEREFORE, in consideration of their mutual covenants and
agreements hereinafter set forth and intending to be legally bound hereby, the
parties hereto covenant and agree as follows:
I. DEFINITIONS
1.1 "Copyrights" means all copyrights, copyright registrations and
applications for copyright registrations which relate to the Products and which
are owned or controlled by, or recorded in the name of, Kronos in the Territory.
1.2 "Intellectual Property" means the Patents, Technology, Trademarks
and Copyrights.
1.3 "License Agreements" means those license agreements listed on
Schedule I between Kronos and its affiliates which license certain Intellectual
Property to those affiliates in the Territory.
1.4 "Patents" means all patents and patent applications, together with
any and all continuations, continuations-in-part, extensions, reissues,
reexaminations and divisions thereof, and all inventions disclosed and claimed
therein, which relate to the Products and the Technology and which are owned or
controlled by, or recorded in the name of, Kronos in the Territory.
1.5 "Products" means titanium dioxide products.
1.6 "Technology" means any and all technical information, improvements,
discoveries, inventions, know-how, formulations, processes, techniques and data
which relate to
the manufacture, use and sale of Products and which are owned or controlled by
Kronos in the Territory.
1.7 "Territory" means Belgium, Canada and Norway.
1.8 "Trademarks" means all tradenames, trademarks, trademark
registrations and applications, and the goodwill associated therewith, relating
to the Products, and which are owned or controlled by, or recorded in the name
of, Kronos in the Territory.
II. ASSIGNMENT OF RIGHTS RELATING TO TITANIUM DIOXIDE
2.1 Patent and Technology Assignment. Kronos hereby grants, conveys and
assigns to Kronos Int'l effective as of January 1, 1999 Kronos' entire right,
title and interest in and to the Patents and Technology.
2.2 Copyright Assignment. Kronos hereby grants, conveys and assigns to
Kronos Int'l effective as of January 1, 1999 Kronos' entire right, title and
interest in and to the Copyrights.
2.3 Trademark Assignments. Kronos hereby grants, conveys and assigns to
Kronos Int'l effective as of January 1, 1999 Kronos' entire right, title and
interest in and to the Trademarks.
2.4 License Agreement Assignment. Kronos hereby grants, conveys and
assigns to Kronos Int'l effective as of January 1, 1999 Kronos' entire right,
title and interest under the License Agreements.
2.5 Confidentiality. Kronos hereby agrees to maintain the
confidentiality of any confidential information assigned hereunder, except to
the extent that such confidential information has entered, or comes into, the
public domain.
III. ASSUMPTION
3.1 Assumption. Kronos Int'l hereby accepts effective as of January 1,
1999 the assignment of the Intellectual Property effected hereunder and
expressly assumes and agrees unconditionally to be bound by and to pay, observe,
perform, fulfill and discharge, all of the covenants, agreements, conditions,
terms, taxes, duties and obligations of Kronos in respect of the Intellectual
Property and the License Agreements. Kronos will promptly send notice of
assignment substantially in the form set forth on Schedule II attached hereto to
each of the licensees under the License Agreements. Kronos shall, without
further consideration therefor, promptly pay, assign and remit to Kronos Int'l
all monies, rights and other consideration received in respect of performance of
the License Agreements at any time after January 1, 1999.
IV. MISCELLANEOUS
4.1 Further Assurances. From time to time after delivery of this
instrument, at either party's request, the other party shall do, execute,
prepare, acknowledge and deliver or cause to be done, executed, prepared,
acknowledged and delivered, such further acts, conveyances, transfers,
assignments and assurances as the first party may reasonably request to more
effectively convey
or transfer to Kronos Int'l, and to put Kronos Int'l in possession of, the
Intellectual Property, or for Kronos Intl'l to more effectively assume any
obligations under the Intellectual Property being assumed by Kronos Int'l
hereunder.
4.2 Successors and Assigns. All of the covenants, terms and conditions
set forth in this Agreement shall be binding upon and shall inure to the benefit
of the parties hereto and their respective successors and assigns.
4.3 Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original for all purposes and all
of which together shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties hereto have caused this Assignment and
Assumption Agreement to be executed by their duly authorized representatives as
of the date first written above.
KRONOS, INC. KRONOS INTERNATIONAL, INC.
By: By:
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Title: Title:
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By:
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Title:
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EXHIBIT B
KRONOS INTERNATIONAL, INC. 22-FEB-99
VALUATION OF ROYALTY CONTRACTS PAGE 1/2 OF SUMMARY
SUMMARY:
VALUE
ROYALTY RATE PRODUCT BASE YSD 000'S
Kronos Titan A/S 5.00% Sulphate All sales $ 31,717
Titania A/S 2.00% Ilmenite Ilmenite sales $ 6,281
Kronos Europe S.A./N.V. 5.00% Chloride All sales $ 80,992
Kronos Canada, Inc. 5.00% Chloride All sales $73,856
Kronos Canada, Inc. 2.25% Sulphate All sales in Canadian market $11,080
$ 84,936
$203,926
Less: Risk factor of 20% (40,785)
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163,141
ASSUMPTIONS USED IN THE CALCULATIONS
Value based on present value of cash flows for the 15-year period 1999-2013.
Discount rate of 6.5%
One-half of the royalty is paid at mid-year and one-half at the end of the year.
Tonnage of TiO2 and ilmentite sold is according to 7-year plan nos. For 8th
through 15th year, it is assumed that plan results for the 7th year are
constant.
