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Exhibit 10.13
SELVAC ACQUISITION CORP.
LICENSING AGREEMENT
This LICENSING AGREEMENT effective as of the 13th day of
March, 1997 between SELVAC ACQUISITION CORP., a Delaware corporation and
successor by way of merger with Classy Lady by Xxxx of Puerto Rico, Inc.
("Sublicensor") and XXXX GROUP MARKETING, INC. a Puerto Rico corporation
("Sublicensee").
WHEREAS, on October 22, 1991, inventor Xxxxx Xxxxx ("Zaias")
was issued United States Patent No. 5,509,192 (the "Zaias Patent");
WHEREAS, Zaias granted to Sublicensor by that certain Amended
Exclusive License Agreement for Patented Laser Hair Removal Invention dated as
of the 5th day of December, 1995 (the "Patent Licensing Agreement"), certain
rights with respect to the Zaias Patent;
WHEREAS, Sublicensor and Sublicensee desire to enter into a
sublicense of certain intellectual property rights as set forth more fully
herein;
NOW, THEREFORE, in consideration of the mutual premises and
promises contained herein, and for other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, the parties agree as
follows:
1. DEFINITIONS.
a. The term "Know-how" shall be used herein to mean those
trade secrets, inventions, designs, data, drawings, operating techniques,
models, manufacturing, engineering and other drawings, technical information,
research records and other information owned by Sublicensor in the field of
laser hair removal.
b. The term "Patent" shall be used herein to mean the Zaias
Patent and patent applications pertaining to the Zaias Patent, together with all
reissues, reexaminations, renewals, divisions, continuations and
continuations-in-part thereof, any patents which may be granted based upon any
of the foregoing, and any foreign counterpart patents and patent applications to
any of the foregoing.
c. The term "Improvement Patents" shall be used herein to mean
those patents and patent applications, together with all reissues,
re-examinations, renewals, divisions, continuations and continuations-in-part
thereof and any patents which may be granted based upon any of the foregoing,
and any foreign counterpart patents and patent applications to any of the
foregoing, relating to inventions conceived by Zaias in the field of laser hair
removal subsequent to the effective date of Patent Licensing Agreement and
exclusively licensed to Sublicensor.
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d. The term "Territories" shall mean the United States of
America, or with respect to the Improvement Patents, the territories in which
patents have been granted or applications are pending therefor.
2. GRANT OF SUBLICENSE.
a. Know-how. Sublicensor hereby grants to Sublicense a
non-transferable sublicense to use the Know-how which is necessary for the
research and development, manufacturing, marketing and sale of laser hair
removal products and services in the Territories.
b. Patent. Sublicensor hereby grants to Sublicensee a
non-transferable sublicense to engage in research and development, manufacture,
market and sell in the Territories products and services covered by the Patent.
c. Improvement Patents. Sublicensor also agrees to grant to
Sublicensee a sublicense to any Improvement Patents and any associated Know-how
relating thereto, subject to terms that are generally comparable to, and are no
less favorable than, the terms and conditions of this Agreement.
d. Additional Sublicense. Sublicensor has entered into a
Licensing Agreement dated as of December 19, 1995 with Sharplan 2000, Inc.
("Sharplan") pertaining to the sublicense of the Know-how, Zaias Patent and
Improvement Patents to Sharplan (the "Additional Sublicense"). Except as set
forth in this Agreement and in the Additional Sublicense, Sublicensor agrees
that it will not sublicense any rights to, in or under the Know-how, Zaias
Patent or Improvement Patents in the Territories to any other party; provided,
however, that if the Additional Sublicense is terminated, the foregoing
restriction shall, upon such termination, be null and void and of no further
force and effect.
e. Cross License. Sublicensee agrees that if any technology is
developed as a result of this Licensing Agreement, including any patents
(collectively "Developments"), Sublicensee shall assign to Sublicensor all of
its right, title and interest in and to the Developments and Sublicensor shall
grant to Sublicensee a non-exclusive, non-transferable license to use the
Developments for the manufacturing, marketing and sale of laser hair removal
products and services on the same royalty terms set forth in this Agreement.
f. Extension. Sublicensee shall have the right to extend this
sublicense to any contractor for purposes of research and development. Any such
extension shall be in writing, and the party to whom the sublicense is extended
shall be bound by all liabilities and obligations to which the Sublicensee is
bound under this Agreement.
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g. Territories. The sublicense granted herein pertains to the
market of the Territories only and specifically excludes any right to distribute
or sell products in any other country.
3. ROYALTY.
Sublicensor and Sublicensee will use their good faith efforts
to negotiate a mutually agreeable royalty for the rights granted by Sublicensor
in Section 2 hereof. In the event that Sublicensor and Sublicensee are unable to
agree upon such rate on or before December 31, 1997, Sublicensee shall pay to
Sublicensor a quarterly royalty payment equal to [1%] of the gross revenues
received by Licensee attributable to the sale or distribution of goods, products
and services covered by the rights licensed hereunder.
4. TERMINATION OF SUBLICENSE.
a. Term. The sublicense granted by section 2 hereof shall
extend for the period during which the Patent or Improvement Patents are in
force. The expiration of the term shall not limit or otherwise affect the
Sublicensee's right to continue to use Know-how made available hereunder.
5. CONFIDENTIALITY.
a. In the course of the performance of this Agreement, the
parties each hereby recognize that each may obtain access to confidential
technical, business, and operational information owned by and/or controlled by
the other parties (the "Confidential Information"), and that such Confidential
Information has been acquired and maintained at great effort and expense and is
not generally known, and that each party considers its own Confidential
Information to constitute valuable assets thereof.
b. Subject to section 5(c), all information transmitted
pursuant to this Agreement shall be considered as being designated as
Confidential Information.
c. Confidential Information will not include information
which: (i) is at the time of disclosure or later becomes generally available to
the public through no fault of the receiving or disclosing party or any
employee, independent contractor, consultant or agent thereof, and under
circumstances involving no breach of any agreement between Sublicensor and
Sublicensee; (ii) was already known both to Sublicensor and Sublicensee; or
(iii) is lawfully and in good faith made available or known to the receiving
party by a third party, not connected with the disclosing party and without an
obligation of confidence to the disclosing party, directly or indirectly.
d. Each party hereby agrees that it will maintain the
confidential nature of the disclosed or received Confidential Information. In
furtherance of such
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obligation, each party hereby agrees to instruct its employees, independent
contractors, consultants and agents receiving or holding any Confidential
Information regarding these confidentiality obligations, and ensure that the
foregoing adhere to the same.
e. Each party hereby covenants that it shall not disclose any
Confidential Information to any third party; provided, however, that disclosure
may be made to a third party pursuant to a non-disclosure agreement with such
third party adequate to protect the confidential nature of such Confidential
Information in a manner at least consistent with the provisions of this section
5, but only if such disclosure to said third party is necessary for the parties
to conduct their respective businesses.
6. TITLE, FEES AND INFRINGEMENT.
a. Title. Sublicensor represents and warrants that Sublicensor
is the sole owner of the exclusive rights in the Patent and the Know-how, and
that Sublicensor has the rights and authority to enter into this Agreement and
grant licenses of the scope set forth herein.
b. Noninfringement. Sublicensor represents and warrants that
to the best of its knowledge, the use of the rights licensed herein does not
interfere with, infringe or otherwise come into conflict with any other patent
or patent application.
c. Fees. Sublicensor shall be solely responsible for applying
all patent renewal fees and related expenses for securing continued protection
under the Patent in the United States.
d. Infringement Actions. If Sublicensee learns that a third
party is infringing the Patent, Sublicensee shall give prompt written notice to
Sublicensor of the infringement. Sublicensor shall use its best efforts to
protect the Patent from infringements in the United States including by taking
legal action. The foregoing notwithstanding, if Sublicense so elects, then
Sublicensee shall have the right at its own expense to undertake such legal or
other action or settlement negotiations, provided that Sublicensee should be
reimbursed for its legal expenses if its election to pursue legal or other
action was a result of Sublicensor's failure to commence or use its best efforts
to advance the success of such legal or other action against the infringer. If
Sublicensee undertakes any such action, then Sublicensor agrees to provide all
reasonably necessary cooperation, including appearing as a party at its own
expense. Sublicensee shall be entitled to all amounts received, including
without limitation reasonable attorney's fees, which relate to damages suffered
by Sublicensee or other amounts related thereto.
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7. INDEMNIFICATION.
Sublicensor agrees to indemnify and hold harmless Sublicensee
from and against any liability, cost or expenses (including without limitation
reasonable attorney's fees) arising out of a breach of Sublicensor's
representations and warranties under sections 6(a) or 6(b) hereof.
8. NO ASSIGNMENTS OR SUBLICENSE.
The rights and obligations of any party under this Agreement
may not be assigned or sublicensed, except as provided herein, without the prior
written consent of the other party hereto.
9. MISCELLANEOUS.
a. Entire Agreement. This Agreement embodies the entire
agreement between the parties with respect to the subject matter hereof and
supersedes all prior agreements and understandings, oral or written, with
respect to the transactions contemplated herein. No supplement, modification or
amendment of this Agreement shall be binding unless executed in writing by all
parties hereto.
b. Binding Agreement. This Agreement and all covenants,
promises and agreements herein shall be binding upon all parties hereto upon the
effective date hereof, and shall be binding upon and inure to the benefit of
each party and its respective permitted successors and assigns.
c. Further Assurances. During the effectiveness of this
Agreement, each of the parties agrees that, upon the reasonable request of any
other party hereto, it will take such actions and execute and deliver such
additional documents and instruments as may be necessary or appropriate to carry
out the intent of this Agreement and to more fully vest in each party the rights
granted herein.
d. Counterparts. This Agreement may be executed in
counterparts, each of which will constitute an original and both of which
together will constitute one and the same Agreement.
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IN WITNESS WHEREOF, the parties hereto have executed this
Agreement by their respective duly authorized representatives as of the date and
year set forth above.
SELVAC ACQUISITION CORP.
By: _________________________________
Name: Xxxxxx X. Xxxx, Xx.
Title: President
XXXX GROUP MARKETING, INC.
By: __________________________________
Name: Xxxx Xxxxxx
Title: Vice President
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