EXHIBIT 10.10
AMENDED AND RESTATED
LICENSE AND DISTRIBUTION AGREEMENT
BY AND BETWEEN
TARGETTI XXXXXX S.P.A.,
AND
TIVOLI INDUSTRIES, INC.
TABLE OF CONTENTS
PAGE
1. DEFINITIONS......................................................... 1.
2. GRANT OF LICENSE.................................................... 2.
3. TECHNICAL ASSISTANCE................................................ 2.
4. NON-DISCLOSURE OF TECHNICAL INFORMATION............................. 3.
5. NEW DESIGNS, MODIFICATIONS AND IMPROVEMENTS......................... 3.
6. PURCHASES FROM LICENSOR............................................. 3.
7. ADVERTISING ASSISTANCE.............................................. 4.
8. LICENSOR TRADEMARK.................................................. 4.
9. LICENSOR REPRESENTATIONS AND WARRANTIES............................. 4.
10. RECORDS............................................................. 5.
11. QUALITY STANDARDS................................................... 6.
12. DURATION OF AGREEMENT............................................... 6.
13. OBLIGATIONS UPON TERMINATION........................................ 6.
14. FORCE MAJEURE....................................................... 6.
15. ARBITRATION......................................................... 7.
16. ASSIGNMENTS AND SUCCESSORS.......................................... 7.
17. RIGHTS AND REMEDIES CUMULATIVE...................................... 8.
18. GOVERNING LAW....................................................... 8.
19. LANGUAGE............................................................ 8.
20. NOTICES............................................................. 8.
21. AMENDMENT........................................................... 9.
i
TABLE OF CONTENTS
(CONTINUED)
PAGE
22 WAIVER ......................................................... 9.
23. SEVERABILITY .................................................... 9.
ii
AMENDED AND RESTATED
LICENSE AND DISTRIBUTION AGREEMENT
THIS AMENDED AND RESTATED LICENSE AND DISTRIBUTION AGREEMENT (the
"Agreement") is made and entered into as of this 1st day of November, 1997 (the
"Effective Date"), by and between TARGETTI XXXXXX S.P.A, a corporation under the
laws of Italy ("Licensor"), and TIVOLI INDUSTRIES, INC., a California
corporation ("Licensee").
RECITALS
WHEREAS, Licensor and Licensee entered into a License and Distribution
Agreement dated November 4, 1994 (the "Old Agreement"); and
WHEREAS, Licensor and Licensee now desire to amend and restate the Old
Agreement, pursuant to the terms set forth below;
NOW, THEREFORE, for valuable consideration, the receipt and sufficiency of
which is hereby acknowledged, the parties hereby agree as follows:
1. DEFINITIONS
1.1 DESIGNS. The lighting product designs which Licensor has created or
may create during the life of this Agreement, whether or not protected by
patents, patent applications, copyrights, trade secrets, know how or other forms
of proprietary confidential information or intellectual property protection.
1.2 TECHNOLOGY. All data, specifications, inventions, processes,
documents, drawings, knowledge and technical information related to the
manufacture, marketing, sale and/or use of the Products, whether or not
protected by patents, patent applications, copyrights, trade secrets, know how
or other forms of proprietary confidential information or intellectual property
protection.
1.3 LICENSED TECHNICAL INFORMATION. All Technology and Designs related to
the manufacture, marketing, sale and/or use of the Products.
1.4 PRODUCTS. The lighting products designed and manufactured by
Licensor, including product lines manufactured by its affiliates and
subsidiaries. Products are broken into three categories:
(A) COMPLETE OR FINISHED PRODUCTS. Licensee will not be required to
perform any assembly, wiring or value added manufacturing.
1.
(B) PARTIALLY COMPLETE ASSEMBLIES, COMPONENTS OR MATERIALS. Licensee
will have to perform some assembly, wiring or value added manufacturing using
Licensed Technical Information provided by Licensor.
(C) DESIGN PRODUCTS. Licensee will have to completely manufacture
Products using Licensed Technical Information provided by Licensor.
1.5 OLD AGREEMENT SUPERSEDED. Upon the Effective Date hereof, the Old
Agreement is hereby amended and superseded in its entirety by this Agreement.
1.6 TERRITORY. The United States of America. Upon the expiration or
termination of the Licensor's license and distribution agreements with third
parties in Canada and Mexico, Licensor agrees to offer Licensee a right of first
refusal with respect to Canada or Mexico, as applicable. If Licensee agrees to
become a distributor in Canada or Mexico, Canada or Mexico, as applicable, will
automatically be added to and become part of the Territory.
1.7 MARKS. All trademarks owned or used by Licensor for Products licensed
or sold to Licensee hereunder, including but not limited to the product lines
identified on Exhibit A.
2. GRANT OF LICENSE
2.1 Licensor hereby grants to Licensee the exclusive right and license for
and during the life of this Agreement to import, manufacture, market and sell
the Products in the Territory, making full and exclusive use of the Licensed
Technical Information and Marks in the Territory, subject to all the terms and
conditions of this Agreement.
2.2 Except where otherwise provided for in this Agreement, the Licensor
shall not grant any rights to any person, firm or corporation to actively sell
the Products in the Territory, nor shall it sell the Products in the Territory
except to the Licensee; nor shall the Licensor sell or otherwise supply Products
to any third party outside the Territory if it has reason to believe that such
third party intends to actively resell Products within the Territory.
2.3 Licensor and Licensee shall periodically visit each other to
coordinate their activities in connection with the promotion and advertising of
the Products. Each party will provide all reasonable assistance and information
relevant to its distribution of the Products for the carrying out of the above
purpose.
2.4 Licensee shall manufacture or complete the manufacture of Partially
Complete Assemblies or Design Products consistent with Targetti's quality
standards.
3. TECHNICAL ASSISTANCE
3.1 Licensor shall provide Licensee with Licensed Technical Information
necessary for the manufacturing and marketing of the Products.
2.
3.2 At the request of Licensee, technical assistance may include visits by
technical personnel of Licensor to the manufacturing plant of Licensee in the
U.S.A. or of Licensee to the manufacturing plant of Licensor in Italy.
4. NON-DISCLOSURE OF TECHNICAL INFORMATION
4.1 Licensee agrees to maintain in confidence and not to disclose to
others the Licensed Technical Information which is made available to Licensee
under the provisions of this Agreement. This non-disclosure obligation shall
not apply to:
(A) Licensed Technical Information which at the time of disclosure
hereunder is in the public domain or thereafter comes into the public domain
through no fault of Licensee; or
(B) Licensed Technical Information which must be disclosed to parties
with whom Licensee contracts to manufacture the Products or components of the
Products, provided, however, such parties shall be under an obligation not to
disclose the Licensed Technical Information to others.
5. NEW DESIGNS, MODIFICATIONS AND IMPROVEMENTS
Licensor shall disclose and make available to Licensee all new Products,
Designs and Technology developed by Licensor during the term of this Agreement.
Such disclosures shall be subject to the terms and conditions of this Agreement.
6. PURCHASES FROM LICENSOR
6.1 Pricing for Complete or Finished Products will be determined [*]
The parties agree that from time to time special pricing may be required, and
agree to negotiate such special pricing in good faith on a case-by-case basis.
6.2 Pricing for Partially Complete Assemblies, Components or Materials
will be priced as a combination of [*]
6.3 All amounts due and payable with respect to Complete or Finished
Products delivered by Licensor shall be paid in full within [*] after Licensee
receives the invoice covering such product. All amounts due and payable with
respect to Partially Complete Assemblies, Components or Materials delivered by
Licensor shall be paid in full within [*] after Licensee receives the invoice
covering such Product. All such amounts shall be paid in US Dollars by wire
transfer, to such bank or account as Licensor may from time to time designate in
writing. Whenever any amount hereunder is due on a day which is not a day on
which banks in Florence, Italy are open for business (a "Business Day"), such
amount shall be
[*]= CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY WITH
THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE
OMITTED PORTIONS.
3.
paid on the next such Business Day. Amounts hereunder shall be considered to be
paid as of the day on which funds are received by Licensor bank.
6.4 Licensee may purchase components of Products directly from other
sources in Italy or other countries, provided that purchases directly from
Licensor's suppliers will be made only with the prior written approval of
Licensor, which will not be unreasonably withheld.
7. ADVERTISING ASSISTANCE
Licensor shall provide, at no cost to Licensee, for purposes of brochures
and advertising related to the Products, those photographs, drawings and other
graphic materials used by Licensor in its own brochures and advertising.
8. LICENSOR TRADEMARK
8.1 Licensee shall undertake to use the Marks in the Territory for the use
of Licensee in producing and marketing the Products. Licensor herein grants to
Licensee the exclusive right to the use of the Marks for all Products sold
within the Territory.
8.2 All Products manufactured by or on behalf of Licensee and bearing the
Marks shall be manufactured according to the samples approved in writing by
Licensor. Licensee shall permit representatives of Licensor to inspect samples
of the Products for approval thereof. Approval of Licensor shall not be
unreasonably withheld.
9. LICENSOR REPRESENTATIONS AND WARRANTIES
9.1 Licensor represents and warrants that:
(A) It is the sole and exclusive owner of the Licensed Technical
Information and Marks and has the full right and authority to give and grant
exclusive rights and licenses for the use of the Licensed Technical Information
and Marks in the Territory in connection with the manufacture and sale of the
Products, including without limitation the license granted to Licensee pursuant
to this Agreement.
(B) Licensor makes no representation or warranty in connection with
use of the Licensed Technical Information or Marks in any part of the world
except the Territory.
(C) Licensee shall immediately inform Licensor of any knowledge on
its part of infringement or threats of infringement of the Licensed Technical
Information and Marks or any other actions by third parties which may be
prejudicial to the Licensor's interests.
(D) Nothing contained in this Agreement shall be construed as
conferring upon Licensee any right or interest in the Licensed Technical
Information and Marks or in any application for registration thereof except that
contained in this Agreement. Licensee shall have the right to use, but only
during the term of this Agreement, and any renewal thereof, the
4.
Licensed Technical Information and the Marks only in connection with the sale
and promotion of the Products pursuant to this Agreement and only subject to
Licensor's prior written approval as provided herein. Further, Licensee shall
not register nor cause a company to be registered using Targetti or a similar
name as the corporate name of said company.
9.2 As to all Designs, Technology and Products manufactured by Licensor,
Licensor makes the following warranties:
(A) Products will conform to their specifications at all times for
one year following sale by Licensee to its customers;
(B) Products will be free from defects in design, material and
workmanship under normal use and service at all times for one year following
sale by Licensee to its customers; and
(C) Products will perform substantially in accordance with the
Product's specifications when properly used pursuant to the applicable
instructions at all times for one year following sale by Licensee to its
customers.
The time and scope of the warranties described above shall not exceed the
time and scope of any warranties granted by Licensee to any purchaser of such
Product.
9.3 Licensor hereby warrants that it is aware of no patents, patent
applications, trademarks, copyrights, trade secrets, know how or other
proprietary information owned by third parties which would infringe upon the
Licensed Technical Information or Marks or prohibit the Licensee from
manufacturing or selling Products; and that if, during the terms hereof,
Licensor becomes aware of such conflicting third-party rights, Licensor shall
immediately notify Licensee thereof.
9.4 Licensor hereby indemnifies Licensee against any and all charges of
infringement which may be asserted by third parties alleging infringement of
such third parties' patents, patent applications, trademarks, copyrights, trade
secrets, know how or other proprietary information by the Licensee's use of the
Products, Licensed Technical Information or Marks supplied to Licensee
hereunder, including without limitation all damages, out-of-pocket expenses and
attorneys' fees.
10. RECORDS
10.1 Licensee shall keep full, true and accurate accounts in accordance
with United States' generally accepted accounting principles, showing the amount
of royalties payable to Licensor pursuant to this Agreement, and ensure such
accounts are made available at Licensor's request at Licensee's corporate
headquarters. Licensee shall retain the accounts for three years.
10.2 Licensee agrees that the relevant books and records of Licensee may
be audited on behalf of Licensor by an independent auditor no more frequently
than once per year and upon
5.
reasonable notice to Licensee. Licensor will pay the fees and expenses
connected with such audit, unless such audit shows a discrepancy of more than
10% of royalty fees due, in which event Licensee will pay expenses and costs of
the audit, as well as the amounts overdue plus interest as determined below.
11. QUALITY STANDARDS
Licensee shall at all times use its best efforts to maintain the quality
standards established from time to time by Licensor in respect to the Products.
12. DURATION OF AGREEMENT
Concurrently with the execution of this Agreement, Licensor, Licensee, and
Targetti USA LLC, a California limited liability company (the "LLC"), will enter
into an Operating Agreement (the "Operating Agreement"). This Agreement may not
be terminated by either party as long as the Operating Agreement remains in
force, and this Agreement will terminate automatically, without any action on
the part of Licensor or Licensee, upon the effective date of termination of the
Operating Agreement.
13. OBLIGATIONS UPON TERMINATION
13.1 After termination of this Agreement, neither Licensee, nor any
subcontracted factory of Licensee shall manufacture or sell the Products. It is
provided, however, that Licensee shall be entitled to finish and sell Products
which are in the process of being manufactured or are completed at the time of
termination hereof.
13.2 Licensee shall return to Licensor immediately following completion of
those Products in the process of being manufactured, all Licensed Technical
Information connected with the manufacture of the Products.
14. FORCE MAJEURE
If the performance of this Agreement or any obligation hereunder is
prevented, restricted or interfered with by reason of fire or other casualty or
accident, strikes or labor disputes, inability to procure raw materials, power
or supplies, war or other violence, any law, order, proclamation, regulation,
ordinance, demand or requirement of any government agency, or other act or
condition whatsoever beyond the control of the parties hereto, the party so
affected, upon giving prompt notice to the other party, shall be excused from
such performance to the extent of such prevention, restriction or interference,
provided, however, that the party so affected shall use its best efforts to
avoid or remove such causes of nonperformance and shall continue performance
hereunder with the utmost dispatch whenever such causes are removed.
6.
15. ARBITRATION
15.1 All disputes, controversies or difference in connection with this
Agreement each individually (a "Dispute") are in principle to be settled between
both parties with sincerity and with mutual understanding and reliance.
15.2 Any Dispute that has not been resolved after good faith negotiations
between the parties shall be referred to a mediator to be designated by the
parties (the "Designated Mediator") by delivery of written notice to such
Designated Mediator by any party. Upon receiving written notice of any such
Dispute, the Designated Mediator shall have 60 days to attempt to resolve such
Dispute. If the Dispute has not been resolved by the end of such 60 day
mediation period, the matter shall be referred to arbitration, as set forth
below.
15.3 In the event that mediated settlement is not possible, the Dispute
shall be referred to and settled by arbitration in Orange County, California,
U.S.A., pursuant to the standard rules and procedures of JAMS/Endispute, by
which each party hereto is bound. Judgment upon the award rendered may be
entered in any court for judicial acceptance of the award and an order or
judgment of enforcement, as the case may be. Such proceedings shall be
conducted in the English language.
15.4 In any action or arbitration proceeding arising between the parties
hereto regarding this Agreement, the prevailing party shall be entitled to
recover reasonable attorneys' fees and costs. Further, both parties hereby
agree that the Licensor and Licensee shall each deposit $20,000 into an escrow
account designated by the arbitrator upon commencement of any arbitration
between the Licensor and Licensee in connection with a dispute arising from this
Agreement. Such amounts may be used by the prevailing party to offset against
legal fees or attorney costs incurred during the proceedings or against the
judgment. Any unused amounts left in escrow after satisfaction of the
prevailing party and after the return of the prevailing party's deposit to the
prevailing party shall be returned to the other party.
16. ASSIGNMENTS AND SUCCESSORS
This Agreement shall be binding on the respective successors and assigns of
the parties. Licensee shall not assign this Agreement unless and until the
prior written consent of Licensor to such assignment has been obtained, which
consent shall not be unreasonably withheld; provided, however, that Licensor
acknowledges and agrees that Licensee may assign all of its rights or
obligations under this Agreement to the LLC. Notwithstanding the foregoing, no
consent shall be required in connection with the sale by Licensee of all or
substantially all of its assets or business operations by merger, stock
transaction or asset transaction or otherwise.
7.
17. RIGHTS AND REMEDIES CUMULATIVE
Except as expressly provided herein, the rights and remedies provided in
this Agreement shall be cumulative and not exclusive of any other rights and
remedies provided by law or otherwise.
18. GOVERNING LAW
This Agreement shall be governed by, and interpreted and enforced in
accordance with the laws of the State of California, USA, excluding its conflict
of law provisions.
19. LANGUAGE
All actions or proceedings arising between the parties hereto shall be
conducted in the English language.
20. NOTICES
Any notice or other communication required or which may be given hereunder
shall be in writing and shall be delivered personally, telegraphed, telexed or
sent by facsimile, or sent by certified, registered or express mail, postage
prepaid and shall be deemed given when so delivered personally, telegraphed or
telexed or sent by facsimile or computer transmission, or if mailed, five (5)
days after the date of mailing, as follows:
If to Licensee to:
Tivoli Industries, Inc.
0000 Xxxx Xx. Xxxxxxxx Xxxxx
Xxxx Xxxxxx Xxx 00000
Santa Ana, CA 92705
ATTN: Xxxxxxxx X. Xxxxx
Chairman and Chief Executive Officer
TELEPHONE: (000) 000-0000
FAX: (000) 000-0000
With a copy to:
Cooley Godward LLP
Five Palo Alto Square
0000 Xx Xxxxxx Xxxx
Xxxx Xxxx, XX 00000-0000
ATTN: Xxxxxx Xxxxxxx, Esq.
TELEPHONE: (000) 000-0000
FAX: (000) 000-0000
8.
If to Licensor to:
Targetti Xxxxxx S.p.A.
Xxx Xxxxxxx, 000
00000 Xxxxxxxx, Xxxxx
ATTN: Paolo Targetti
President and Chief Executive Officer
and Xxxxxxx Targetti
Managing Director
TELEPHONE: 000-00-00-0000-000
FAX: 000-00-00-0000-000
With a copy to: Xxxxxxx Xxxxxxxxxxxx
Xxxxx Xxxxxxx 00
00000 Xxxxxxxx, Xxxxx
21. AMENDMENT
No amendment, modification or supplement of any provision of this Agreement
will be valid or effective unless made in writing and signed by a duly
authorized officer of each party.
22. WAIVER
No provision of the Agreement unless such provision otherwise provides will
be waived by any act, omission or knowledge of a party or its agents or
employees except by an instrument in writing expressly waiving such provision
and signed by a duly authorized officer of the waiving party.
23. SEVERABILITY
Whenever possible, each provision of the Agreement will be interpreted in
such manner as to be effective and valid under applicable law, but if any
provision of the Agreement is held to be prohibited by or invalid under
applicable law, such provision will be ineffective only to the extent of such
prohibition or invalidity, without invalidating the remainder of the Agreement.
9.
AMENDED AND RESTATED
LICENSE AND DISTRIBUTION AGREEMENT
IN WITNESS WHEREOF, this Agreement has been executed as of the day and year
first above written.
TARGETTI XXXXXX S.P.A
By: /s/ Paolo Targetti
--------------------------------------------
Paolo Targetti
President and Chief Executive Officer
TIVOLI INDUSTRIES, INC.
By:_____________________________________________
Xxxxxxxx X. Xxxxx
Chairman and Chief
Executive Officer
AMENDED AND RESTATED
LICENSE AND DISTRIBUTION AGREEMENT
IN WITNESS WHEREOF, this Agreement has been executed as of the day and year
first above written.
TARGETTI XXXXXX S.P.A
By: ____________________________________________
Paolo Targetti
President and Chief Executive Officer
TIVOLI INDUSTRIES, INC.
By: /s/ Xxxxxxxx X. Xxxxx
--------------------------------------------
Xxxxxxxx X. Xxxxx
Chairman and Chief
Executive Officer
