EXHIBIT 2.3
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement (the "Agreement") is effective as of
December 15, 2000 (the "Effective Date"), between Catalytica, Inc., a Delaware
corporation ("Catalytica") and Catalytica Energy Systems, Inc., a Delaware
corporation formerly known as Catalytica Combustion Systems, Inc. ("CESI").
Capitalized terms used in the recitals below without definitions shall have the
definitions set forth in Article I hereof.
WHEREAS, Catalytica has entered into that certain Agreement and Plan
of Merger, dated August 2, 2000, with Synotex Company, Inc. and Synotex
Acquisition Corporation (the "Merger Agreement") which contemplates, among other
things, the distribution by Catalytica to all its stockholders of the CESI
capital stock held by it (the "Distribution") and the execution and delivery of
certain other agreements in order to facilitate and provide for the foregoing;
WHEREAS, Catalytica and CESI have entered into a Master Separation
Agreement which provides for, among other things, the transfer from Catalytica
to CESI of certain assets and liabilities, the distribution of CESI stock held
by Catalytica and the execution and delivery of certain other agreements in
order to facilitate and provide for the foregoing; and
WHEREAS, Catalytica Advanced Technologies, Inc. has merged with and
into CESI; and
WHEREAS, the parties further desire that under the terms and subject
to the conditions set forth herein, Catalytica license the Licensed Xxxx to CESI
after the separation of the CESI business;
NOW, THEREFORE, in consideration of the mutual promises of the
parties, and of good and valuable consideration, it is agreed by and between the
parties as follows:
ARTICLE 1
DEFINITIONS
For the purpose of this Agreement, the following capitalized terms
shall have the meaning specified below:
1.1 "Authorized Manufacturers" means any distributor, dealer, OEM
customer, systems integrator or other agent that on or after the Separation Date
is engaged or authorized by CESI or its subsidiaries to market, advertise, sell,
service or otherwise offer CESI Business Products.
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1.2 "CESI Business" means the business and operations of CESI and its
Subsidiaries as it presently exists and as it may develop in the future within
the Field, provided however that in no event shall CESI Business include any
fine chemicals or pharmaceutical business.
1.3 "CESI Business Products" means any and all products and services of
the CESI Business.
1.4 "Collateral Materials" means all packaging, tags, labels, advertising
warranties and other materials of any and all types associated with the CESI
Business Products that are marked with the Licensed Xxxx.
1.5 "Corporate Identity Materials" means materials that are not products
or product-related and that CESI may now or hereafter use to communicate its
identity, including, by way of example and without limitation, business cards,
letterhead, stationery, paper stock and other supplies, and signage on real
property and buildings.
1.6 "Distribution Date" means the date the Distribution is effective.
1.7 "Field" means the business of producing, storing, generating, or
otherwise using energy from stationary, transportation, or portable power
sources and other directly related products and services, as currently conducted
by CESI as of the date hereof.
1.8 "Licensed Xxxx" means the Xxxx "Catalytica" as used in accordance
with each of the license restrictions and the other license terms set forth
herein.
1.9 "Xxxx" means any trademark, service xxxx, trade name, domain name,
and the like, or other word, name, symbol or device, or any combination thereof,
used or intended to be used by a person to identify and distinguish the products
or services of that person from the products or services of others and to
indicate the source of such goods or services, including without limitation all
registrations and applications therefor throughout the world and all common law
and other rights therein throughout the world.
1.10 "Master Separation Agreement" means the Master Separation Agreement
of even date herewith between the parties.
1.11 "Quality Standards" means standards of quality applicable to the CESI
Business Products, as in use immediately prior to the Separation Date, and as
revised or supplemented, and communicated in writing to CESI by Catalytica from
time to time.
1.12 "Separation Date" means 12:01 a.m., Pacific Time, on the date that
Catalytica distributes all of the CESI stock to its stockholders.
1.13 "Subsidiary" of any entity means a corporation or other organization
whether incorporated or unincorporated of which at least a majority of the
securities or
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interests having by the terms thereof ordinary voting power to elect at least a
majority of the board of directors or others performing similar functions with
respect to such corporation or other organization is directly or indirectly
owned or controlled by such entity or by any one or more of its Subsidiaries, or
by such entity and one or more of its Subsidiaries; provided, however, that no
corporation or other organization that is not directly or indirectly wholly-
owned by any other entity shall be a Subsidiary of such other entity unless such
other entity controls, or has the right, power or ability to control, that
corporation or other organization. For purposes of this Agreement, CESI shall be
deemed not to be a Subsidiary of Catalytica.
1.14 "Third Party" means a person other than Catalytica and its
Subsidiaries and CESI and its Subsidiaries.
1.15 "Trademark Usage Guidelines" means the guidelines for proper usage of
the Licensed Xxxx, as in use by Catalytica and/or CESI immediately prior to the
Separation Date, as such guidelines may be revised, updated or supplemented, and
communicated to CESI from time to time.
ARTICLE 2
LICENSES
2.1 License Grant. Catalytica hereby grants (and agrees to cause its
appropriate Subsidiaries to grant) to CESI a perpetual, royalty-free,
irrevocable, exclusive within the Field, worldwide, fully-paid and non-
transferable (except as set forth in Section 12.9) license to use the Licensed
Xxxx in any manner in the Field, in each case in conformity with the terms and
conditions set forth herein and limited by the restrictions set forth in Section
2.2(a).
2.2 License Restrictions.
(a) CESI shall, at all times and in all countries of the world, use
the Licensed Xxxx solely in connection with, and as an integral
part of, one of the following names: (i) "Catalytica Combustion
Systems, Inc."; (ii) "Catalytica Energy Systems, Inc."; (iii)
"Catalytica Advanced Technologies, Inc."; (iv) "Catalytica
Novotec"; (v) "SudChemie-Catalytica" or (vi) subject to the prior
written approval of Catalytica which shall not be unreasonably
withheld or delayed, such other names that relate to the Field
(collectively, the "CESI Business Marks"), and shall not, at any
time, anywhere or for any purposes (including, without
limitation, in connection with any internet domain names), use
the Licensed Xxxx by itself, or in combination with any other
words or phrases, or as a part of any other compound name or
Xxxx.
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(b) CESI may not make any use whatsoever, in whole or in part, of the
Licensed Xxxx, or any other Xxxx owned by Catalytica, in
connection with CESI's corporate, doing-business-as, or
fictitious name, or on Corporate Identity Materials without the
prior written consent of Catalytica, except as expressly set
forth in this Section 2.2(b) or Section 2.1 or in Section 2.4
below. Notwithstanding the foregoing, CESI may use any business
cards, letterhead, stationery, paper stock and similar materials
in connection with the conduct of the CESI Business, to the
extent that, as of the date hereof, they are in use, in inventory
or on order.
(c) CESI may not use the Licensed Xxxx in direct association with
another Xxxx such that the two Marks appear to be a single or
corporate Xxxx or in any other composite manner with any Marks of
CESI or any Third Party (other than the CESI Business Marks as
permitted herein).
(d) In all respects, CESI's usage of the Licensed Xxxx pursuant to
the license granted hereunder shall be in a manner consistent
with the high standards, reputation and prestige represented by
the Licensed Xxxx, and any usage by CESI that is inconsistent
with the foregoing shall be deemed to be outside the scope of the
license granted hereunder. As a condition to the license granted
hereunder, CESI shall at all times present, position and promote
the CESI Business Products marked with the Licensed Xxxx in a
manner consistent with the high standards and prestige
represented by the Licensed Xxxx.
2.3 Licensee Undertakings. As a condition to the licenses granted
hereunder, CESI undertakes to Catalytica that:
(a) CESI shall not use the Licensed Xxxx (or any other Xxxx of
Catalytica) in any manner which is deceptive or misleading, which
may be perceived to ridicule or to be derogatory to the Licensed
Xxxx, or which may compromise or reflect unfavorably upon the
goodwill, good name, reputation or image of Catalytica or the
Licensed Xxxx.
(b) CESI shall not use the Licensed Xxxx in any manner in connection
with any products or services other than the CESI Business
Products.
(c) CESI shall not (i) misrepresent to any person the scope of its
rights, authority and obligations under this Agreement, (ii)
incur or authorize any expenses or liabilities chargeable to
Catalytica, or (iii)
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take any actions that would impose upon Catalytica any obligation
or liability to a Third Party other than obligations which
Catalytica expressly approves in writing for CESI to incur on its
behalf.
(d) All press releases and corporate advertising and promotions that
embody the Licensed Xxxx and all messages conveyed thereby shall
be consistent with the high standards and prestige represented by
the Licensed Xxxx.
2.4 Non-Trademark Use. Each party may make appropriate and truthful
references to the other party and the other party's products and technology.
2.5 Reservation of Rights. Except as otherwise expressly provided in this
Agreement, Catalytica shall retain all title, interests and rights in and to the
Licensed Xxxx, including without limitation:
(a) All rights of ownership in and to the Licensed Xxxx;
(b) The right to use (including the right of Catalytica's
Subsidiaries to use) the Licensed Xxxx in any manner and for any
purposes, either alone or in combination with other Marks,
including without limitation, in connection with the marketing,
offer or provision of any products or services, excluding any
product or service within the Field; and
(c) The right to license Third Parties to use the Licensed Xxxx
outside the Field.
2.6 Third Party Licenses. Catalytica agrees that it and its Subsidiaries
will not license or transfer the Licensed Xxxx to Third Parties for use in
connection with products or services within the Field. Such restriction shall be
binding on any successors and assigns of the Licensed Xxxx.
ARTICLE 3
PERMITTED SUBLICENSES
3.1 Sublicenses. Subject to the terms and conditions of this Agreement,
including without limitation all applicable Quality Standards and Trademark
Usage Guidelines and other restrictions in this Agreement, CESI may grant
sublicenses to its Subsidiaries to use the Licensed Xxxx in accordance with, and
within the scope of, the license grant in Section 2.1 above; provided, that (a)
CESI enters into a written sublicense agreement with each such Subsidiary
sublicensee, and (b) such sublicense agreement (i) expressly provides that the
sublicensee has no right to grant to any person any further sublicense or any
other right to use the Licensed Xxxx in any manner, and contains license
restrictions, sublicensee's undertakings, trademark usage guidelines, quality
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standards and trademark protection provisions (collectively, "Sublicense
Restrictions") no less stringent and protective of the Licensed Xxxx and
Catalytica's interests than corresponding provisions set forth in this
Agreement; (ii) expressly provides that Catalytica is an intended third-party
beneficiary of such sublicense agreement, having the right directly to enforce
any Sublicense Restrictions or any other provision thereunder as though a party
thereof; and (iii) expressly provides that, in the event the sublicensee ceases
to be a Subsidiary of CESI, such sublicense agreement and all of sublicensee's
rights thereunder shall automatically terminate ninety (90) days after the date
on which the sublicensee ceases to be a subsidiary. CESI shall provide copies of
all such written sublicense agreements to Catalytica upon request.
3.2 Authorized Manufacturers' Use of the Licensed Xxxx. Subject to the
terms and conditions of this Agreement, including all applicable Quality
Standards and Trademark Usage Guidelines and other restrictions in this
Agreement, CESI (and those Subsidiaries sublicensed to use the Licensed Xxxx
pursuant to Section 3.1) may allow Authorized Manufacturers to, and may allow
such Authorized Manufacturers to allow other Authorized Manufacturers to, use
the Licensed Xxxx in the advertisement and promotion of products incorporating
CESI Business Products.
3.3 Enforcement of Agreements. CESI shall use reasonable efforts and take
all reasonable measures at CESI's expense promptly and diligently to enforce the
terms of any sublicense agreement or other agreement with any Subsidiary or
Authorized Manufacturer, or of any existing agreement with any Authorized
Manufacturer, and shall restrain any such Subsidiary or Authorized Manufacturer
from violating such terms, including without limitation (i) monitoring the
Subsidiaries' and Authorized Manufacturers' compliance with the relevant
Trademark Usage Guidelines and Quality Standards and causing any noncomplying
Subsidiary or Authorized Manufacturer promptly to remedy any failure, (ii)
terminating such agreement and/or (iii) commencing legal action, in each case,
using a standard of care consistent with Catalytica's practices as of the
Separation Date. In the event that Catalytica determines that CESI has failed
promptly and diligently to enforce the terms of any such agreement using such
standard of care, Catalytica reserves the right to enforce such terms, and CESI
shall reimburse Catalytica for its out-of-pocket costs and expenses.
ARTICLE 4
TRADEMARK USAGE GUIDELINES
4.1 Trademark Usage Guidelines. CESI and its Subsidiaries and Authorized
Manufacturers shall use the Licensed Xxxx only in a manner that is consistent
with the Trademark Usage Guidelines.
4.2 Trademark Reviews. At Catalytica's request, CESI agrees promptly to
furnish or make available for inspection to Catalytica samples of all CESI
Business Products and Collateral Materials of CESI, its Subsidiaries and
Authorized
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Manufacturers that are actively marketed and marked with the Licensed Xxxx (to
the extent that CESI has the right to obtain such samples) and information on
all uses by CESI and its Subsidiaries of the Licensed Xxxx. If CESI is notified
or determines that it or any of its Subsidiaries or Authorized Manufacturers is
not in material compliance with any Trademark Usage Guidelines, it shall notify
Catalytica and the provisions of Article 6 and Section 3.3 shall apply to such
noncompliance.
ARTICLE 5
TRADEMARK USAGE GUIDELINE ENFORCEMENT
5.1 Initial Cure Period. If Catalytica becomes aware that CESI or any
Subsidiary or Authorized Manufacturer sublicensee is not in material compliance
with any Trademark Usage Guidelines, Catalytica shall notify CESI in writing,
setting forth in reasonable detail a written description of the noncompliance
and any requested action for curing such noncompliance. In the event that, in
Catalytica's reasonable opinion, continued noncompliance can be reasonably
expected to result in substantial and irreparable harm to the goodwill,
reputation or prestige of the Licensed Xxxx, Catalytica's notice shall direct
CESI to, and CESI shall, immediately take all commercially practicable steps to
cease, or cause its Subsidiaries or Authorized Manufacturers to cease, such
noncomplying use of the Licensed Xxxx and the noncomplying Collateral Materials
until the noncomplying use has been corrected to Catalytica's reasonable
satisfaction. In all other cases, CESI shall have thirty (30) days with regard
to noncompliance by Authorized Manufacturers and twenty (20) days with regard to
noncompliance by CESI or any Subsidiary after receipt of such notice ("Guideline
Initial Cure Period") to correct such noncompliance or submit to Catalytica a
written plan to correct such noncompliance which written plan is reasonably
acceptable to Catalytica.
5.2 Second Cure Period. If noncompliance with the Trademark Usage
Guidelines continues beyond the Guideline Initial Cure Period, CESI and
Catalytica shall each promptly appoint a representative to negotiate in good
faith actions that may be necessary to correct such noncompliance. The parties
shall have twenty (20) days following the expiration of the Guideline Initial
Cure Period to agree on corrective actions, and CESI shall have twenty (20) days
from the date of an agreement of corrective actions to implement such corrective
actions and cure or cause the cure of such noncompliance ("Second Guideline Cure
Period").
5.3 Final Cure Period. If the noncompliance with the Trademark Usage
Guidelines remains uncured after the expiration of the Second Guideline Cure
Period, then at Catalytica's election, CESI, or the noncomplying Subsidiary or
Authorized Manufacturer, whichever is applicable, promptly shall cease using the
noncomplying Collateral Materials until Catalytica reasonably determines that
CESI, or the noncomplying Subsidiary or Authorized Manufacturer, whichever is
applicable, has demonstrated its ability and commitment to comply with the
Trademark Usage
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Guidelines. Nothing in this Article 5 shall be deemed to limit Catalytica's
rights or CESI's obligations hereunder (including under Section 3.3 above) or to
preclude Catalytica from exercising any of its rights or remedies hereunder
(including under Section 3.3 above.)
ARTICLE 6
QUALITY STANDARDS
6.1 General. CESI acknowledges that the CESI Business Products permitted
by this Agreement to be marked with the Licensed Xxxx must continue to be of
sufficiently high quality as to provide protection of the Licensed Xxxx and the
goodwill it symbolizes, and CESI further acknowledges that the maintenance of
the high quality standards associated with such products is of the essence of
this Agreement.
6.2 Quality Standards. CESI and its Authorized Manufacturers and
Subsidiaries shall use the Licensed Xxxx only on and in connection with CESI
Business Products that meet or exceed in all respects the Quality Standards.
6.3 Quality Control Reviews. At Catalytica's request, CESI agrees to
furnish or make available to Catalytica for inspection sample CESI Business
Products marked with the Licensed Xxxx.
ARTICLE 7
QUALITY STANDARD ENFORCEMENT
7.1 Initial Cure Period. If Catalytica becomes aware that CESI or any
Subsidiary or Authorized Manufacturer sublicensee is not complying with any
Quality Standards, Catalytica shall notify CESI in writing, setting forth in
reasonable detail a written description of the noncompliance and any requested
action for curing such noncompliance. In the event that, in Catalytica's
reasonable opinion, continued noncompliance can be reasonably expected to result
in substantial and irreparable harm to the goodwill, reputation or prestige of
the Licensed Xxxx, Catalytica's notice shall direct CESI to, and CESI shall,
immediately take all commercially practicable steps to cease, or cause its
Subsidiaries or Authorized Manufacturers to cease, offering, selling and/or
delivering such noncomplying CESI Business Products under the Licensed Xxxx
until the noncomplying use has been corrected to Catalytica's reasonable
satisfaction. In all other cases, CESI shall have twenty (20) days after receipt
of such notice ("Initial Cure Period") to correct such noncompliance or submit
to Catalytica a written plan to correct such noncompliance which written plan is
reasonably acceptable to Catalytica.
7.2 Second Cure Period. If noncompliance with the Quality Standards
continues beyond the Initial Cure Period, CESI and Catalytica shall each
promptly
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appoint a representative to negotiate in good faith actions that may be
necessary to correct such noncompliance. The parties shall have twenty (20) days
following the expiration of the Initial Cure Period to agree on corrective
actions, and CESI shall have twenty (20) days from the date of an agreement of
corrective actions to implement such corrective actions and cure or cause the
cure of such noncompliance ("Second Cure Period").
7.3 Final Cure Period. If the noncompliance with the Quality Standards
remains uncured after the expiration of the Second Cure Period, then at
Catalytica's election, CESI, or the noncomplying Subsidiary or Authorized
Manufacturer, whichever is applicable, promptly shall cease offering the
noncomplying CESI Business Products under the Licensed Xxxx until Catalytica
determines that CESI, or the noncomplying Subsidiary or Authorized Manufacturer,
whichever is applicable, has demonstrated its ability and commitment to comply
with the Quality Standards. Nothing in this Article 7 shall be deemed to limit
Catalytica's rights or CESI's obligations hereunder (including under Section 3.3
above) or to preclude Catalytica from exercising any of its rights or remedies
hereunder (including under Section 3.3 above).
ARTICLE 8
PROTECTION OF LICENSED XXXX
8.1 Ownership and Rights. CESI acknowledges and agrees that, between the
Parties, Catalytica is the sole owner of all title, interests and rights in the
Licensed Xxxx (except for CESI's license rights expressly set forth herein) and
all goodwill associated therewith, and further agrees that all goodwill
associated with or arising from the use of the Licensed Xxxx by CESI shall inure
solely to the benefit of Catalytica. CESI shall do nothing inconsistent with
Catalytica's ownership of the Licensed Xxxx, nor take any action that could be
detrimental to the goodwill associated with the Licensed Xxxx. To the extent not
contrary to applicable law, CESI agrees not to challenge the ownership or
validity of the Licensed Xxxx. CESI shall not directly or indirectly undertake
any action anywhere which in any manner might disparage, dilute, infringe,
impair or adversely affect the validity of or Catalytica's title in the Licensed
Xxxx. CESI's use of the Licensed Xxxx shall inure exclusively to the benefit of
Catalytica, and CESI shall not acquire or assert any rights therein except as
granted pursuant to this Agreement. CESI recognizes the value of the goodwill
associated with the Licensed Xxxx, and that the Licensed Xxxx xxx have acquired
secondary meaning in the minds of the public.
8.2 Protection of Xxxx. CESI shall assist Catalytica, at Catalytica's
request and expense, in the procurement and maintenance of Catalytica's
intellectual property rights in the Licensed Xxxx. CESI will not grant or
attempt to grant a security interest in the Licensed Xxxx, or to record any such
security interest in the United States Patent and Trademark Office or elsewhere,
against any trademark application or registration belonging to Catalytica. CESI
agrees to, and to cause its Subsidiaries to, execute all documents reasonably
requested by Catalytica to effect further registration of,
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maintenance and renewal of the Licensed Xxxx, recordation of the license
relationship between Catalytica and CESI, and recordation of CESI as a
registered user. Catalytica makes no warranty or representation that trademark
registrations have been or will be applied for, secured or maintained in the
Licensed Xxxx throughout, or anywhere within, the world. CESI shall cause to
appear on all CESI Business Products, and all Collateral Materials, such
legends, markings and notices as may be required by applicable law or reasonably
requested by Catalytica.
8.3 Similar Marks. CESI agrees not to use or register in any country any
Xxxx that infringes Catalytica's rights in the Licensed Xxxx, or any element
thereof. If any application for registration is, or has been, filed in any
country by CESI which relates to any Xxxx that infringes Catalytica's rights in
the Licensed Xxxx, CESI shall immediately abandon any such application or
registration or assign it to Catalytica. To the extent not contrary to
applicable law, CESI shall not challenge Catalytica's ownership of or the
validity of the Licensed Xxxx or any application for registration thereof
throughout the world. CESI shall not use or register in any country any
copyright, domain name, telephone number or any other intellectual property
right, whether recognized currently or in the future, or other designation which
would affect the ownership or rights of Catalytica in and to the Licensed Xxxx,
or otherwise to take any action which would adversely affect any of such
ownership rights, or assist anyone else in doing so. CESI shall cause its
Subsidiaries and Authorized Manufacturers to comply with the provisions of this
Section 8.3.
8.4 Infringement Proceedings. In the event that CESI or any of its
officers learns of any infringement or threatened infringement of the Licensed
Xxxx, or any unfair competition, passing-off or dilution with respect to the
Licensed Xxxx, CESI shall notify Catalytica or its authorized representative
giving particulars thereof, and CESI shall provide necessary information and
assistance to Catalytica or its authorized representatives at Catalytica's
expense in the event that Catalytica decides that proceedings should be
commenced. Notwithstanding the foregoing, CESI is not obligated to monitor or
police use of the Licensed Xxxx by Third Parties other than as specifically set
forth in Section 3.3. Catalytica shall have exclusive control of any litigation,
opposition, cancellation or related legal proceedings, relating to the use of
the licensed trademarks by third parties. The decision whether to bring,
maintain or settle any such proceedings shall be at the exclusive option and
expense of Catalytica, and all recoveries shall belong exclusively to
Catalytica. CESI shall not and shall have no right to initiate any such
litigation, opposition, cancellation or related legal proceedings in its own
name, but, at Catalytica's request, agrees to be joined as a party in any action
taken by Catalytica to enforce its rights in the Licensed Xxxx. Catalytica shall
incur no liability to CESI or any other person under any legal theory by reason
of Catalytica's failure or refusal to prosecute or by Catalytica's refusal to
permit CESI to prosecute, any alleged infringement by Third Parties, nor by
reason of any settlement to which Catalytica may agree.
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ARTICLE 9
TERMINATION
9.1 Termination. This Agreement may be terminated at any time prior to
the Effective Date of the Merger (as defined in the Merger Agreement) by and in
the sole discretion of Catalytica without the approval of CESI. This Agreement
may be terminated at any time after the Effective Date of the Merger (as defined
in the Merger Agreement) by mutual consent of Catalytica and CESI. In the event
of termination pursuant to this Section 9.1, no party shall have any liability
of any kind to the other party.
ARTICLE 10
DISPUTE RESOLUTION
10.1 Resolution. If a dispute, controversy or claim ("Dispute") arises
between the parties relating to the interpretation or performance of this
Agreement, such Dispute shall be resolved in the manner specified in Section 5.6
of the Master Separation Agreement.
10.2 Continuity of Service and Performance. Unless otherwise agreed in
writing, the parties will continue to provide service and honor all other
commitments under this Agreement and each Ancillary Agreement (as defined in the
Master Separation Agreement) during the course of dispute resolution pursuant to
the provisions of this Article 10 with respect to all matters not subject to
such dispute, controversy or claim.
ARTICLE 11
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE
OTHER PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT,
INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS OR ANY OTHER DAMAGES, HOWEVER
CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY
OUT OF THIS AGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES.
ARTICLE 12
MISCELLANEOUS PROVISIONS
12.1 Disclaimer. EACH PARTY ACKNOWLEDGES AND AGREES THAT THE LICENSED
XXXX AND ANY OTHER INFORMATION OR MATERIALS LICENSED OR PROVIDED HEREUNDER ARE
LICENSED OR PROVIDED ON AN "AS IS" BASIS AND THAT NEITHER PARTY NOR ANY OF ITS
SUBSIDIARIES
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MAKE ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES WHATSOEVER, EXPRESS, IMPLIED
OR STATUTORY, WITH RESPECT THERETO INCLUDING WITHOUT LIMITATION ANY IMPLIED
WARRANTIES OF TITLE, ENFORCEABILITY OR NON-INFRINGEMENT. WITHOUT LIMITING THE
GENERALITY OF THE FOREGOING, NEITHER CATALYTICA NOR ANY OF ITS SUBSIDIARIES
MAKES ANY WARRANTY OR REPRESENTATION AS TO THE VALIDITY OF THE LICENSED XXXX OR
ANY WARRANTY OR REPRESENTATION THAT ANY USE OF THE LICENSED XXXX WITH RESPECT TO
ANY PRODUCT OR SERVICE WILL BE FREE FROM INFRINGEMENT OF ANY RIGHTS OF ANY THIRD
PARTY.
12.2 No Implied Licenses. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any intellectual property right, other than the rights expressly granted in this
Agreement with respect to the Licensed Xxxx. Neither party is required hereunder
to furnish or disclose to the other any information (including copies of
registrations of the Licensed Xxxx), except as specifically provided herein.
12.3 Infringement Suits. Except as set forth in Section 3.3, (i) neither
party shall have any obligation hereunder to institute any action or suit
against Third Parties for infringement of the Licensed Xxxx or to defend any
action or suit brought by a Third Party which challenges or concerns the
validity of the Licensed Xxxx and (ii) CESI shall not have any right to
institute any action or suit against Third Parties for infringement of any of
the Licensed Xxxx.
12.4 No Other Obligations. Neither party assumes any responsibilities or
obligations whatsoever, other than the responsibilities and obligations
expressly set forth in this agreement or a separate written agreement between
the parties. Without limiting the generality of the foregoing, neither party,
nor any of its Subsidiaries, is obligated to (i) file any application for
registration of any Xxxx, or to secure any rights in any Marks, (ii) to maintain
any Xxxx registration, or (iii) provide any assistance, except for the
obligations expressly assumed in this Agreement. Catalytica is solely authorized
to file and renew the Licensed Xxxx in its own name. CESI is not authorized to
file applications or renewal registrations for the Licensed Xxxx without the
prior written consent of Catalytica.
12.5 Entire Agreement. This Agreement, the Merger Agreement, the Master
Separation Agreement and the other Ancillary Agreements (as defined in the
Master Separation Agreement) and the Exhibits and Schedules referenced or
attached hereto and thereto constitute the entire agreement between the parties
with respect to the subject matter hereof and thereof and shall supersede all
prior written and oral and all contemporaneous oral agreements and
understandings with respect to the subject matter hereof and thereof. To the
extent there is a conflict between this Agreement and the
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Master Separation Agreement between the parties, the terms of this Agreement
shall govern.
12.6 Governing Law. This Agreement shall be construed in accordance with
and all Disputes hereunder shall be governed by the laws of the State of
Delaware (regardless of the laws that might otherwise govern under applicable
principles of conflicts of laws thereof) as to all matters, including, but not
limited to, matters of validity, construction, effect, performance and remedies.
12.7 Descriptive Headings. The headings contained in this Agreement, are
for reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement.
12.8 Notices. Notices, demands, offers, requests or other communications
required or permitted to be given by either party pursuant to the terms of this
Agreement shall be made in accordance with Section 6.6 of the Master Separation
Agreement.
12.9 Nonassignability. Neither party may, directly or indirectly, in
whole or in part, whether by operation of law or otherwise, assign or transfer
this Agreement, without the other party's prior written consent, and any
attempted assignment, transfer or delegation without such prior written consent
shall be voidable at the sole option of such other party. Notwithstanding the
foregoing, each party (or its permitted successive assignees or transferees
hereunder) may assign or transfer this Agreement as a whole without consent to a
person that succeeds to all or substantially all of the business or assets of
such party as long as such person agrees to accept all the terms and conditions
set forth herein. Without limiting the foregoing, this Agreement will be binding
upon and inure to the benefit of the parties and their permitted successors and
assigns. Neither party shall engage in any transaction or series of transactions
in which another entity becomes the owner of 50% or more of the equity
securities of such party unless the acquiror and any ultimate parent entity
shall have executed and delivered to the other party an agreement confirming
that such acquiror and/or ultimate parent entity shall, upon consummation of
such transaction or series of transactions, cause the relevant party to continue
to perform under the terms of this Agreement and each Ancillary Agreement.
12.10 Severability. If any term or other provision of this Agreement is
determined by a court, administrative agency or arbitrator to be invalid,
illegal or incapable of being enforced by any rule of law or public policy, all
other conditions and provisions of this Agreement shall nevertheless remain in
full force and effect so long as the economic or legal substance of the
transactions contemplated hereby is not affected in any manner materially
adverse to either party. Upon such determination that any term or other
provision is invalid, illegal or incapable of being enforced, the parties hereto
shall negotiate in good faith to modify this Agreement so as to effect the
original intent of the parties as closely as possible in an acceptable manner to
the end that the transactions contemplated hereby are fulfilled to the fullest
extent possible.
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12.11 Failure or Indulgence not Waiver; Remedies Cumulative. No failure
or delay on the part of either party hereto in the exercise of any right
hereunder shall impair such right or be construed to be a waiver of, or
acquiescence in, any breach of any representation, warranty or agreement herein,
nor shall any single or partial exercise of any such right preclude other or
further exercise thereof or of any other right. All rights and remedies existing
under this Agreement are cumulative to, and not exclusive of, any rights or
remedies otherwise available.
12.12 Amendment. No change or amendment will be made to this Agreement
except by an instrument in writing signed on behalf of each of the parties to
such agreement.
12.13 Counterparts. This Agreement, including the Ancillary Agreements
and the Exhibits and Schedules hereto and thereto and the other documents
referred to herein or therein, may be executed in counterparts, each of which
shall be deemed to be an original but all of which shall constitute one and the
same agreement.
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WHEREFORE, the parties have signed this Trademark License Agreement
effective as of the date first set forth above.
CATALYTICA, INC.
By: /s/ Xxxxxxxx X. Xxxxxxx
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Name: Xxxxxxxx X. Xxxxxxx
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Title: Chief Financial Officer
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CATALYTICA ENERGY SYSTEMS, INC.
By: /s/ Xxxxx X. Kitchen
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Name: Xxxxx X. Kitchen
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Title: President and Chief Executive Officer
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