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EXHIBIT 10.28
LICENSING AGREEMENT
Effective March 1, 1997, Xxxxx Xxxxxxx Inc. ("Licensor") and LBE
Technologies, Inc. 00000 Xxxx Xx. Xxxxxxxxx XX 00000 ("Company") agree as
follows:
1. Services, Payment and Options. Licensor agrees to undertake and
complete the Services (as defined in Exhibit A) specified in Exhibit A. As the
only consideration due Licensor regarding the subject matter of this Agreement,
Company will pay Licensor in accordance with Exhibit A. As a consultant,
Licensor will also be entitled to stock options referred to in Exhibit A.
2. Ownership; Rights' Proprietary Information: Publicity.
a. Company shall own all right, title and interest
(including patent rights, copyrights, trade secret rights, trademark rights and
other rights throughout the world) relating to any and all inventions (whether
or not patentable), works of authorship, designations, designs, know-how, ideas
and information made or conceived or reduced in practice, in whole or in part,
by the Licensor during the term of this Agreement that relate to the subject
matter of, or arise out of, the Services or any Proprietary Information (as
defined below) (collectively, "Inventions") and Licensor will promptly disclose
and provide all Inventions to Company. Licensor hereby makes all assignments
necessary to accomplish the foregoing ownership. Licensor shall further assist
Company, at Company's expense, to further evidence, record and perfect such
assignments, and to perfect, obtain, maintain, enforce, and defend any rights
assigned the foregoing with the same legal force and effect as if executed by
Licensor.
b. Licensor agrees that all Inventions and all other
business, technical and financial information (including, without limitation,
the identity of and information relating to the Company's customers or
employees) Licensor develops, learns or obtains during the period over which it
is (or is supposed to be) providing Services that relate to Company or the
business or demonstrably anticipated business of Company or that are received by
or for Company in confidence, constitute "Proprietary Information." Licensor
will hold in confidence and not disclose or, except in performing the Services,
use any Proprietary Information. However, Licensor shall not be obligated under
this paragraph with respect to information Licensor can document is or becomes
readily publicly available without restriction and through no fault of Licensor.
Upon termination and as otherwise requested by Company, Licensor will promptly
return to Company all items and copies containing or embodying Proprietary
Information, except that Licensor may keep its personal copies of its
compensation records and this agreement.
c. As additional protection for Proprietary Information,
Licensor agrees that during the period over which it is (or is supposed to be)
providing Services, and for one year thereafter, (i) Licensor will not encourage
or solicit any employee or consultant of Company to leave Company for any reason
and (ii) Licensor will not engage in any activity that is in any way competitive
with the business or demonstrably anticipated business of the Company, and
Licensor will not assist any other person or
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organization in competing or in preparing to compete with any business or
demonstrably anticipated business of Company.
d. Licensor grants Company the worldwide non-exclusive
license to use, reproduce, disseminate, display, record, photograph, alter and
otherwise exploit Licensor's names, likeness, memorabilia (along with any
trademarks or service marks incorporated therein) and/or voice in connection
with promotion of company's current and future business, products and services,
including but not limited to display and other use at Company's auto racing
simulation centers. To the extent any of the foregoing grant is ineffective
under applicable law, Licensor hereby agrees to provide, or, if necessary, to
obtain from third parties, any and all waivers approvals, licenses and consents
required to accomplish the purpose of foregoing grant. From time to time, as
reasonably requested by Company, Licensor will confirm in writing hat any such
waivers, approvals, licenses and consents have been obtained or granted.
3. Warranty. Licensor warrants that: (i) the Services will be
performed in a professional and workmanlike manner and that none of such
Services or any part of this Agreement is or will be inconsistent with any
obligation Licensor may have to others; (ii) all work under this Agreement shall
be Licensor's original work and none of the Services or Inventions or any
development, use, production, distribution or exploitation thereof will
infringe, misappropriate or violate any intellectual property or other right of
any person or entity; and, (iii) Licensor has the full right and power to make
the assignment and grant the rights to the company as provided for herein.
Licensor shall indemnify, defend and hold harmless Company and its
officers, employees, and agents from any claims, demands liabilities, losses,
damages, judgments or settlements (including reasonable attorney's fees) arising
from any breach by Licensor of any warranty or representation made by Licensor
hereunder, including without limitation a claimed infringement or violation of
any intellectual property right or right of publicity or privacy.
4. Termination. This Agreement will terminate four years from the
date hereof, except that it may be terminated earlier as follows. If either
party materially breaches a material provision of this Agreement or commits (or
is accused by a credible third party of) a illegal or immoral act, the other
party may terminate this Agreement upon 30 days notice, unless, in the case of a
breach, the breach is cured within the notice period. Company also may terminate
this Agreement at any time upon 60 days notice if Licensor is no longer actively
engaged in his NASCAR race driving career. Sections 2 (subject to the
limitations on Section 2.c stated therein) through 5 of this Agreement and any
remedies for breach of this Agreement shall survive any termination or
expiration, except that the license granted pursuant to Section 2(d) shall be
limited such that the Company may continue to use, to the full extent of the
rights granted thereunder, only those promotional materials already produced or
manufactures pursuant to this Agreement prior to termination.
5. Miscellaneous. Each party shall be and act as an independent
contractor and not as partner, joint venture, or agent of the other and shall
not bind nor attempt to
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bind the other to any contract, as such Licensor is an independent contractor
and is solely responsible for all taxes, withholdings, and other statutory or
contractual obligations of any sort. Licensor shall not have the right or
ability to assign, transfer, or subcontract any obligations under this Agreement
without the written consent of Company; any attempt to do so shall be void. All
notices under this Agreement shall be in writing, and shall be deemed given when
personally delivered, or three days after being sent by prepaid certified or
registered U.S. mail to the address of the party to be notified as set forth
herein or such other address as such party last provided to the other by written
notice. The failure of either party to enforce its rights under this Agreement
at any time for any period shall not be construed as a waiver of such rights. No
changes or modifications or waivers to this Agreement will be effective unless
in writing and signed by both parties. In the event that any provision of this
Agreement shall be determined to be illegal or unenforceable, that provision
will be limited or eliminated to the minimum extent necessary so that this
Agreement shall otherwise remain in full force and effect and enforceable. This
Agreement shall be governed by and construed in accordance with the laws of the
State of California without regard to the conflicts of laws provisions thereof.
In any action or proceeding to enforce rights under this Agreement, the
prevailing party will be entitled to recover costs and attorneys fees. Headings
herein are for convenience of reference only and shall in no way affect
interpretation of the Agreement.
Xxxxx Xxxxxxx Inc. LBE Technologies, Inc.
(Licensor) (Company)
By: /s/ By: /s/ Xxxxx Xxxxx
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Title: Vice President Title:
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Exhibit A
SERVICES
Product development. As requested by the Company, test drive the simulator and
provide feedback as well as arrange visits by company representatives to the
Winston Cup #2 race shop to obtain various technical information (e.g., engine,
audio and wind tunnel data but not necessarily the latest results).
Public appearances (expect 3 or 4 public performance trips per year). Visit
operating locations as requested by the Company to meet with the media, sponsors
and some of the general public (at the Company's request, these appearances may
include Licensor memorabilia). Licensor would be an important spokesperson for
the Company, but the Company would use reasonable efforts to limit this work to
high impact-and fun-exposures for Licensor.
Merchandising. Ensure that the Company is able to obtain Licensor licensed
merchandise at most favored reseller prices and terms for licensed merchandise
sales at our operating sites.
FEES
$3,000 per public performance trip (each of which may involve more than one
appearance and/or activity, but all of which will take place at one site/city
per trip; autograph sessions will not exceed two hours).
Expense reimbursement is limited to required, reasonable telephone expenses and
first-class (or equivalent) travel (transportation, lodging and meals)
authorized in writing by Company in advance; payable 30 days after itemized
invoice and delivery of receipts).
STOCK OPTIONS
Licensor will be granted stock options to purchase 65,000 shares of the
company's common stock under the Company's stock option plan and its terms with
vesting over 4 years. (the first vesting period occurs at the end of one year
with 25% of the total shares, and 1/48 of the total amount each month for the
remaining 3 years of the deal term). The per share exercise price will be $0.075
as specified by the Company's board. The options must be exercised at earlier of
(i) seven (7) years from the date of this Agreement or (ii) the date of the
Company's IPO (initial public offering) of its stock.
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