This Agreement is entered into with reference to the following facts.
WHEREAS, Licensor is engaged in the business of, among other things, manufacturing, designing, marketing, and selling electrical construction and consumer products catering to the wholesale and retail distribution market.
WHEREAS, Licensor desires to grant to Licensee a non-exclusive license to promote, market, and sell products manufactured and sold by Licensor using Licensor’s intellectual property subject to the terms and conditions set forth herein.
WHEREAS, Licensor and Licensee will enter into separate agreements regarding the purchase and resale of Licensor’s products and this Agreement is meant to govern Licensee’s use of Licensor’s intellectual property.
In consideration of the foregoing premises and covenants, conditions, representations and warranties set forth herein, the Parties hereby agree as follows:
1. LICENSE OF ORBIT INTELLECTUAL PROPERTY.
a. Licensor hereby grants to Licensee a non-exclusive license, with no right to sublicense, a license to promote, market, and sell products manufactured, designed, marketed, and sold by Licensor (hereinafter referred to as “Orbit Products”) utilizing “Orbit Intellectual Property.” Orbit Intellectual Property” is defined as all intellectual property rights of Licensor including, but not limited to, the following on a worldwide basis: (i) patents, patent applications, patent disclosures and improvements thereto and other patent rights (including any divisions, continuations, continuations-in-part, substitutions or reissues thereof, whether or not any such applications are modified, withdrawn or resubmitted), utility models and inventions; (ii) trade names, brand names, logos, trademarks, service marks, trade dress, domain names, designs, logos or corporate names, whether registered or unregistered, all registrations and applications for registration thereof, and all goodwill associated therewith; (iii) copyright, (including all renewals and extensions), copyright registrations, applications for registration, non-registration, non-registered copyrights and works of authorship, (including those in computer software), including all source code, object code and documentation related thereto; (iv) trade secrets, known-how, any other confidential or proprietary information, concepts, techniques, methods, data, raw materials, testing results, testing methods, discoveries, inventions, improvements, and other proprietary rights (whether or not patentable or subject to trade secret or copyright protection), including formulas and formulations for all products currently sold; and (v) registrations and applications for any of the foregoing. “Orbit Intellectual Property” includes, but is not limited to, Orbit website and catalog photographs, charts, and drawings.
b. This License Agreement shall not be construed as giving Licensee any right, title, interest or ownership in the Orbit Intellectual Property, but only permits Licensee to use the Orbit Intellectual Property in connection with the promotion, sale, and service of the Orbit Products, and only as long as this License Agreement shall remain in effect. On the termination of this License Agreement, all rights and privileges granted to Licensee under this Agreement shall immediately cease, and Licensee shall thereon discontinue the use of the Orbit Intellectual Property. Licensee shall promptly, freely and cooperatively relinquish to Licensor any and all such rights upon termination of this License Agreement for any reason without recourse or cost to Licensor and shall thereafter refrain from any further usage of said Orbit Intellectual Property used or owned by Licensor. Licensee shall not commence any sales effort in any country until an application for trademark registration has been filed with the proper governmental authorities in the respective country. Licensee shall not seek to file, register or assert any claim of ownership to the Orbit Intellectual Property. Licensee shall not make any use of any sales materials unless those sales materials have been approved by Licensor. Licensee shall submit to Licensor for review, samples of all sales materials that Licensee desires to use which incorporate the Orbit Intellectual Property. Licensor shall have the sole and absolute discretion to approve or reject any such samples. All uses of the Orbit Intellectual Property supplied by Licensor shall be deemed approved. All samples shall be submitted for approval pursuant to the notice provisions set forth hereinafter. The failure of Licensor to respond to a request for approval on a particular sample within ten (10) calendar days of actual receipt by Licensor shall result in that particular sample only being approved. All samples which contain a foreign language shall be accompanied by an accurate English translation. Licensee shall not make any use of the Licensor Orbit Intellectual Property and trade names which have not been previously approved by Licensor in writing. All uses of the Orbit Intellectual Property during the term of this License Agreement anywhere in the world by Licensee shall inure to the benefit of Licensor.
c. Licensee acknowledges and agrees that Licensor owns and will remain the owner of all Orbit Intellectual property, including any intellectual property developed during the term of this License Agreement.
d. Licensee shall not use any Orbit Intellectual Property that does not include an Orbit copyright mark on the copyright graphic or catalog page showing Orbit Intellectual Property.
e. Licensor shall have the right to continue to sell Orbit Products and use Orbit Intellectual Property directly and to grant a non-exclusive license to promote, market, sell, and use Orbit Products and Orbit Intellectual Property to any other third party licensees.
f. Licensee shall use its best efforts to market, promote, sell and create a demand for Orbit Products to the maximum extent possible. Licensee assumes full responsibility for all costs and expenses which it incurs in carrying out its obligations under this License Agreement including, but not limited to, all rentals, salaries, commissions, advertising, travel and accommodations without the right to reimbursement from Licensor. Licensee shall maintain a qualified and fully trained sales staff sufficient to meet its obligations under this License Agreement.
g. Licensee shall at all times conduct its efforts in strict accordance with all applicable laws and regulations and with the highest commercial standards.
2. SEARCH ENGINE OPTIMAZTION
Licensee agrees that it will take any and all efforts to ensure that its internet Search Engine Optimization (“SEO”) does not exceed that of Licensor with respect to Orbit Products or Orbit Intellectual Property (“Orbit SEO”). This would include, but would not be limited to, a higher ranking by Licensee than Licensor on any internet website search engine (e.g. Google, Yahoo, Bing, etc.) with regard to Orbit SEO. In the event that Licensee learns that Licensee’s SEO exceeds that of Licensor’s SEO with regard to Orbit SEO on any internet search engine, Licensee agrees to take any and all action to ensure that Licensee’s SEO does not exceed that of Licensor’s SEO at no cost to Licensor. This includes, but is not limited to, immediately communicating with any applicable internet search engine to ensure that Orbit SEO conforms with this License Agreement. Licensee agrees that the cost of compliance with this section shall be borne by Licensee. Should Licensor take any action ensure that the SEO conforms to this section, Licensee agrees to reimburse, defend, indemnify, and hold Licensor harmless from any cost and expense, including attorneys’ fees and costs, incurred by Licensor.
a. The Term of this Agreement shall be for FIVE (5) years from the date first set forth above unless terminated earlier by Licensor.
b. In the event of a material breach of this License Agreement by Licensee, Licensor shall provide Licensee fifteen (15) days’ written notice and an opportunity to cure said breach. If at the end of such 15-day period the breach has not been cured, then Licensor, at its option, may terminate this License Agreement by giving Licensee written notice of such termination. Material breach shall include, but shall not be limited to,
(1) Failure to make timely payment for Orbit Products;
(2) Failure to comply with the material provisions of this License Agreement;
(3) Failure to comply with the laws or regulations applicable to Licensee’s obligations under this License Agreement;
(4) If Licensee shall
(a) Make an assignment for the benefit of creditors or a composition with creditors;
(b) Generally fail to pay or admit in writing its inability to pay its debts as they mature;
(c) File a petition for bankruptcy;
(d) Be adjudicated bankrupt or insolvent or commence any proceeding under any bankruptcy, reorganization, arrangement, readjustment, or debt or receivership law or statute of any jurisdiction, whether now or hereafter in effect;
(e) Have a receiver or trustee or other officer or representative of a court, governmental officer, or agency, under color of legal authority, take and hold possession of any substantial part of its property or assets for a period in excess of 60 days;
(f) Be dissolved or liquidate; or
(g) Engage in or is charged with unethical or illegal practices, or, in the judgment of Licensor, jeopardizes, Licensor’s good name, goodwill, and/or reputation.
c. The termination of this License Agreement shall not affect Licensee’s obligations to pay for Orbit Products delivered prior to termination. On the termination or expiration of this License Agreement, all rights and privileges under this License Agreement shall cease (except those pertaining specifically to post termination activities), and Licensee shall immediately discontinue any sales activities or advertising whereby the Licensee represents or implies that it is an authorized distributor of Licensor.
d. In the event of termination of this License Agreement for any reason, Licensor shall have the option, but not the obligation, to repurchase from Licensee all or any portion of Licensee’s unsold Orbit Products on hand or in transit at a price equal to Licensee’s net purchase cost for such Orbit Products based on Licensee’s net prices in effect ninety (90) days prior to the date of termination, provided Licensor notifies Licensee in writing of its intent to exercise the aforementioned option within thirty (30) days of the effective date of termination. In the event Licensor does not purchase all of Licensee’s inventory, Licensee shall be entitled to sell the Orbit Products for ninety (90) days on a non-exclusive basis after the effective date of termination after which time Licensee shall not sell any Orbit Products.
e. Prior to the termination of this License Agreement for any reason, Licensor shall have the right to make whatever arrangements it may choose to insure continuity of distribution of Orbit Products including, but not limited to, appointing a new licensee so that it may make preparations to sell upon the expiration of the Term of this License Agreement.
f. Upon termination of this License Agreement for any reason, Licensee shall promptly deliver to Licensor all documents and other items in Licensee’s possession, custody or control, which refer or relate to the Orbit Products or the business of Licensor regardless of whether created by Licensor, Licensee or third parties including, but not limited to confidential information, diskettes, computer programs and print outs, advertising materials, sales literature, memoranda, notes, reports, customer lists, samples, records, manuals and all copies of the foregoing including versions stored in electronic, optical magnetic or other formats. In the alternative, Licensor will have the right to require Licensee to destroy Orbit Products and Orbit Intellectual Property in Licensee’s possession at the time of such termination, as well as any components or raw materials bearing Licensor’s trademarks, trade names or logos. Licensee will complete such destruction at Licensee’s expense and in a manner acceptable to Licensor, acting reasonably, and Licensor will have the right to witness such destruction. Upon request, Licensee will provide Licensor with a certificate of destruction, photographs and other evidences of the destruction in a form acceptable to Licensor.
Licensee shall procure and maintain continuously during the term hereof, comprehensive liability insurance insuring both Licensee and Licensor against claims for false advertising, bodily injury, death, property damage and any other liability arising out of or as a result of Licensee’s or Licensee’s agent’s activities. Such insurance shall be for an amount that is reasonable and customary in the business; provided, however, that Licensor may establish minimum amounts for such insurance by written notice to Licensee. Licensee shall provide to Licensor a certificate of insurance evidencing such coverage and showing Licensor as an additional named insured within ten (10) days after request for same by Licensor.
5. LIMITATION OF LIABILITY.
LICENSOR SHALL NOT BE LIABLE FOR ANY LOSS OR DAMAGE CAUSED ARISING FROM THIS AGREEMENT AND MAKES NO REPRESENTATIONS OR WARRANTIES OF ANY KIND TO LICENSEE, CUSTOMERS AND/OR SUBDISTRIBUTORS, INCLUDING BUT NOT LIMITED TO ANY IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY WARRANTY OF NON-INFRINGEMENT. FURTHERMORE, UNDER NO CIRCUMSTANCES SHALL LICENSOR BE RESPONSIBLE FOR INDIRECT, SPECIAL, INCIDENTAL, CONSEQUENTIAL, PUNITIVE, OR EXEMPLARY DAMAGES ARISING OUT OF OR IN CONNECTION WITH THIS LICENSE AGREEMENT OR ANY ACTS OR OMISSIONS ASSOCIATED THEREWITH OR RELATING TO THE USE OF ANY ITEMS OR SERVICES FURNISHED, WHETHER SUCH CLAIM IS BASED ON BREACH OF WARRANTY, CONTRACT, TORT OR OTHER LEGAL THEORY AND REGARDLESS OF THE CAUSES OF SUCH LOSS OR DAMAGES OR WHETHER ANY OTHER REMEDY PROVIDED HEREIN FAILS, NOR SHALL LICENSOR’S TOTAL LIABILITY EXCEED AN AMOUNT EQUAL TO THE TOTAL AMOUNT PAID BY LICENSEE TO LICENSOR FOR PRODUCTS PURSUANT TO THIS LICENSE AGREEMENT.
Licensee shall indemnify, defend and hold Licensor harmless from and against any and all claims, demands, losses, liabilities, judgments, awards, damages, liens and costs (including attorneys’ fees, litigation costs, expert witness fees, etc., irrespective of whether those costs fall within C.C.P. section 1032) arising from the subject matter of this agreement, including, but not limited to any claims for personal injury, advertising injury, or intellectual property infringement. Licensor shall have the right to the independent counsel of its choice.
7. CONFIDENTIAL INFORMATION.
7.1 Confidential Information.
As used herein, “Confidential Information” shall mean all confidential knowledge, trade secrets, and proprietary data of any kind or nature, which relate or refer to the Orbit Products or Orbit Intellectual Property and any and all Improvements (as hereinafter defined) thereto furnished to Licensee by or on behalf of Licensor. For purposes of this License Agreement, “Improvements” shall mean all inventions, modifications, revisions, alterations, enhancements, betterments, ideas and discoveries (whether or not patentable) conceived or reduced to practice (actually or constructively), either solely or jointly with others, which are in any way related to the Orbit Products or Orbit Intellectual Property. Confidential Information shall also include information provided to Licensee by or on behalf of Licensor prior to the date of this License Agreement as well as information obtained through reverse engineering or independent derivation. Confidential Information by way of example shall include, but not be limited to, technical specifications, diagrams, flow charts, methods, systems, production plans, designs, research and development plans, business opportunities, cost and pricing data, accounting records, sources of supply, customer lists, marketing strategies, and business plans. Confidential Information does not include information which (1) was available to the public prior to the time of such disclosure, discovery or production as established by presently existing written documentation, (2) becomes available to the public through no act or omission of the Licensee, (3) becomes available to Licensee through or from a third party (not an employee or affiliate of Licensee) who is not under any obligation of confidentiality, or (4) is required to be furnished pursuant to law. However, if Licensee is required by legal process to disclose the Confidential Information, Licensee shall promptly notify Licensor so that Licensor may seek an appropriate protective order. Failure to mark any of the Confidential Information as “confidential” or “proprietary” shall not affect its status as part of the Confidential Information pursuant to the terms of this License Agreement.
During the term of this License Agreement and thereafter, Licensee shall hold the Confidential Information in strictest confidence and trust for the sole and exclusive benefit of Licensor and shall use the Confidential Information only within the scope of the terms of this License Agreement. Licensee shall not disclose any of the Confidential Information to any third party except to those employees (“Representatives”) of Licensee who need to know such information for the purpose of performing pursuant to the terms of this License Agreement and such Representatives shall be informed by Licensee of the confidential nature of the material and Licensee shall be responsible for such Representatives’ compliance with this License Agreement. If Licensee determines it must consult with one or more third parties who are not Representatives of Licensee in order to adequately perform its work, all such third parties must enter into a separate confidentiality agreement directly with Licensor prior to any disclosure of Confidential Information by Licensee. A fully signed copy of the confidentiality agreement between Licensor and such third party must be received by Licensee prior to Licensee’s release of any Confidential Information to the third party. Licensee shall not make any copies of the Confidential Information except as necessary to perform pursuant to the terms of this License Agreement. Licensee shall not make any use or make any disclosures of the Confidential Information except as expressly provided for herein. Licensor shall have the right to review the procedures of Licensee and its Representatives for protecting the Confidential Information and to require reasonable changes in said procedures to insure that such procedures are adequate. The obligations of the recipient hereunder shall survive the termination of this License Agreement regardless of the reason for termination.
7.3 Ownership of Confidential Information And Improvements.
The Confidential Information together with all Improvements thereto shall be the sole and exclusive property of Licensor. Notwithstanding the foregoing, Licensee hereby irrevocably assigns to Licensor any and all right, title and interest Licensee may have or hereafter acquire in the Orbit Products, Orbit Intellectual Property, the Confidential Information, and all Improvements (whether patentable or not), together with:
a. All applications for Letters Patent and all divisions, renewals, reissues and continuations thereof and all continuations-in-part thereof to the extent such continuation-in-part applications relate to the Orbit Products or Orbit Intellectual Property, and all Letters Patent of the United States which may be granted thereon and all reissues and applications for Letters Patent which may hereafter be filed for the Orbit Products or Orbit Intellectual Property in any country or countries foreign to the United States, and all Letter Patent which may be granted for the Products in any country or countries foreign to the United States and all extensions, renewals and reissues thereof;
b. All copyrightable works and applications for registration and registrations thereof; and
c. All common law, state, and federal rights relating to and under any trademarks, trade names or service marks.
7.4 Return of Confidential Information and Documents.
All notes, data, tapes, reference items, sketches, drawings, memoranda, records and other materials in any way relating to any of the Confidential Information, together with the ideas, concepts, knowledge and information contained therein, shall belong exclusively to Licensor, whether prepared by Licensee or otherwise, and the Licensee agrees to turn over to Licensor the original and all copies of such materials in Licensee’s possession or under Licensee’s control at the request of Licensor or, in the absence of such a request, upon termination of Licensee’s relationship with Licensor for any reason. Licensee shall not retain any written or tangible materials which relate or refer to the Confidential Information after the termination of the relationship of the Parties for any reason.
7.5 Specific Performance.
It is understood and agreed that money damages would not be a sufficient remedy for a breach of any of the terms or conditions of this License Agreement and in addition to any remedies available at law, Licensor, upon an appropriate showing, shall also be entitled to equitable relief including injunction and specific performance in the event of any breach or threatened breach of this License Agreement. Such remedies shall not be deemed to be the exclusive remedy for any such breach of this Agreement but shall be in addition to all other remedies available at law or in equity to Licensor.
7.6 Proprietary Information or Trade Secrets of Others.
Licensee will not disclose to Licensor, or use, or induce Licensor to use, any confidential knowledge, proprietary information or trade secrets of others. Licensee represents and warrants that Licensee’s performance of all terms of this License Agreement and any services to be rendered to Licensor do not and shall not breach any fiduciary or other duty or any covenant, agreement or understanding (including, without limitation, any agreement relating to any proprietary information, knowledge or data acquired by Licensee in confidence, trust or otherwise) to which Licensee is a party or by the terms of which the recipient may be bound.
Licensee acknowledges that in the event that Licensee exceeds the scope of this License Agreement and infringes upon Orbit Intellectual Property in a manner that is outside the scope of this License Agreement, Licensor will be exposed to considerable damage and financial loss and that Licensor’s actual damages would be difficult to estimate accurately. Accordingly, Licensor shall be entitled to the amount of one thousand dollars ($1,000) per act of infringement as liquidated damages, and not as a penalty.
9. RELATIONSHIP OF PARTIES.
The relationship between Licensor and Licensee is that of licensor and licensee only. Licensee is an independent contractor and is not a joint venturer with or partner, agent, representative, or employee of Licensor. Nothing in this License Agreement shall be deemed to permit Licensee to conduct business in the name of or on account of Licensor, or to incur or assume any expense, debt, obligation, liability, tax, or responsibility on behalf of or in the name of Licensor, or to act on Licensor’s behalf or to bind Licensor in any way whatsoever and represent to any third party that it has the authority to do so. No fiduciary duty exists between the Parties. Nothing in this License Agreement shall be construed as creating a franchise relationship between the Parties.
10. SURVIVAL OF REPRESENTATIONS AND WARRANTIES.
The representations and warranties of each of the Parties hereto shall remain in full force and effect and shall survive the consummation of this License Agreement.
11. FURTHER ASSURANCES.
Each of the Parties hereto agrees to execute and deliver any and all additional papers and documents, and to do any and all acts reasonably necessary in connection with the performance of its obligations hereunder to carry out the intent of the Parties hereto.
12. ENTIRE AGREEMENT.
This Agreement and the documents expressly incorporated herein shall constitute the entire Agreement between the Parties hereto with respect to the subject matter hereof, and shall supersede all prior and contemporaneous agreements and representations of the Parties concerning the subject matter hereof and the terms applicable thereto.
This License Agreement may not be supplemented, modified or amended in any manner, except by an instrument in writing stating that it is a supplement, modification or amendment of this License Agreement and signed by each of the Parties hereto.
No waiver of any of the provisions of this Agreement shall be deemed or constitute a waiver of any other provision, whether or not similar, nor shall any waiver constitute a continuing waiver. No waiver shall be binding unless executed in writing by the Party making the waiver.
15. SUCCESSORS AND ASSIGNS.
All terms and provisions contained herein shall inure to the benefit of and shall be binding on each of the Parties hereto and their respective directors, officers, shareholders, employees, agents, heirs, representatives, successors and permitted assigns, and each of them.
16. APPLICABLE LAW AND FORUM SELECTION.
This Agreement shall be deemed to have been entered into, and shall be construed and interpreted, in accordance with the laws of the State of California without reference to California’s application of principles of conflicts of law. The Parties hereby agree to submit to the jurisdiction of the state and/or federal courts in the County of Los Angeles, State of California, U.S.A.
In the event that any provision hereof is deemed to be illegal or unenforceable, such a determination shall not affect the validity or enforceability of the remaining provisions hereof, all of which shall remain in full force.
18. TIME IS OF THE ESSENCE.
Time is of the essence for this License Agreement and all of the terms, provisions, covenants and conditions hereof.
19. PARTIES IN INTEREST.
Nothing in this License Agreement, whether express or implied, is intended to confer any rights or remedies under or by reason of this License Agreement on any persons other than the Parties to it and their respective successors and permitted assigns, nor is anything in this License Agreement intended to relieve or discharge the obligation or liability of any third persons to any Party to this License Agreement, nor shall any provision give any third persons any right of subrogation or action over or against any Party to this License Agreement.
No remedy conferred by any specific provision of this License Agreement is intended to be exclusive of any other remedy, and each and every remedy shall be cumulative and shall be in addition to every other remedy given hereunder, or now, or hereinafter existing at law, in equity, by statute or otherwise. The election of one or more remedies by a Party shall not constitute a waiver of the right to pursue other available remedies.
This Agreement may not be assigned without the express written consent of each of the Licensor.