LICENSE AGREEMENT
THIS LICENSE AGREEMENT (this "Agreement") is made and entered into as
of the 4th day of December, 1998 by and between AGGREKO INC., a Louisiana
corporation ("Aggreko") and TOWER TECH, INC., an Oklahoma corporation ("Tower
Tech").
WITNESSETH:
WHEREAS, pursuant to that certain Asset Purchase Agreement (herein so
called), dated as of December 4, 1998 by and between Aggreko and Tower Tech,
Tower Tech has agreed to sell to Aggreko and Aggreko has agreed to purchase from
Tower Tech, substantially all of the properties and assets of Tower Tech
relating to the leasing and renting and servicing of industrial modular cooling
towers (the "Business");
WHEREAS, as contemplated by the Asset Purchase Agreement, Tower Tech
shall retain the ownership of certain patents, trademarks, trade names and other
proprietary rights which have been utilized in connection with the Business;
WHEREAS, Aggreko desires to obtain an exclusive license to use for a
limited time period of time such patents, trademarks, trade names and other
proprietary rights in its operation of the Business and Tower Tech is willing to
grant such license to Aggreko on the terms and conditions hereinafter provided;
and
WHEREAS, pursuant to Section 3.07 of the Asset Purchase Agreement,
Aggreko and Tower Tech have agreed to execute and deliver this Agreement on the
closing date contemplated by the Asset Purchase Agreement; and the mutual
execution and delivery of this Agreement is a condition precedent to the
obligations of Aggreko and Tower Tech to consummate the transactions
contemplated by the Asset Purchase Agreement.
NOW, THEREFORE, in consideration of the above premises, the mutual
agreements set forth herein and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the Parties hereto
hereby agree as follows:
ARTICLE ONE
DEFINITIONS
1.1 Certain Definitions. The terms specified in this Section 1.1 shall,
for all purposes of this Agreement, have the meanings herein specified, unless
the context expressly or by necessary implication otherwise requires.
"Affiliate" shall mean, with respect to any Person, any other Person
that, directly or indirectly through one or more intermediaries, controls, or is
controlled by, or is under common control with, such Person.
"Cooling Tower", and collectively, "Cooling Towers," shall mean any and
all cooling towers models manufactured by or on behalf of Tower Tech, including,
without limitation those models described on Exhibit A as may be amended from
time to time by adding or deleting cooling towers, and in or to which Tower Tech
owns or holds Proprietary Rights, but specifically excluding all concrete
cooling towers.
"Cooling Tower Patent", and collectively, "Cooling Tower Patents",
shall mean any and all Patents specifically related to the Cooling Towers which
are owned or held by Tower Tech at any time during the Term.
"Cost," and collectively "Costs," shall mean any and all reasonable and
necessary expenses and other costs incurred or sustained regarding the subject
matter, including without limitation attorney fees, court costs, accountant or
bookkeeping fees, broker fees, filing, certificate, license or permit fees,
fabrication, shipping, handling, postage, long distance telephone, facsimile
transmission, photocopies, courier delivery, freight, travel, lodging and meals.
"Develop" or "Developed" or "Developing" or "Development" shall
collectively mean to design, plan, manufacture, assemble, produce, erect,
construct, install, or otherwise develop the Cooling Towers and any
Improvements, with or without the Licensor Technology.
"Effective Date" shall mean the date of this Agreement.
"Improvement", and collectively, Improvements, shall mean any and all
additions, alterations, modifications, design changes, and other improvements to
the Cooling Towers which are individually or jointly Developed by Tower Tech,
Aggreko, any Sublicensee or any third parties at any time during the Term, and
regardless whether Tower Tech owns or holds any Proprietary Rights therein or
thereto.
"Improvement Patent," and collectively, "Improvements Patents" shall
mean any and all Patents specifically related to the Improvements which are
owned or held by Tower Tech at any time during the Term.
"License," shall collectively mean any and all exclusive rights and
licenses which Tower Tech shall grant to Aggreko regarding the Proprietary
Rights within the License Territory pursuant to Article Two.
"License Territory," shall collectively mean anywhere in the world.
"Licensed Product," shall collectively mean (a) the Cooling Towers,
less and except any Nonproprietary Parts, (b) any Improvements, less and except
any Nonproprietary Parts, (c) the Proprietary Rights, (d) the Licensor
Technology and (e) any Materials.
"Licensed Product Patent," and collectively, "Licensed Product Patents,"
shall mean any and all Cooling Tower Patents and Improvement Patents.
"Licensor Technology," shall collectively mean any and all of Tower
Tech's engineering and technical processes, techniques, know-how, data,
information, and other technology specifically used to Develop the Cooling
Towers and any Improvements.
"Material," and collectively, "Materials" shall mean any and all Technology
Materials and Promotional Materials.
"Nonproprietary Part," and collectively, "Nonproprietary Parts," shall
mean any and all parts and components of the Cooling Towers and any
Improvements, in or to which Tower Tech does not own or hold any Proprietary
Rights at any time during the Term.
"Part," and collectively, "Parts" shall mean any and all Proprietary Parts
and Nonproprietary Parts.
"Party," and collectively, "Parties," shall mean either or both Tower
Tech and Aggreko.
"Patent," and collectively, "Patents," shall mean any and all patents,
corresponding letters patent, patents pending, and associated patent rights, any
subsequent patent applications and resulting issued patents claiming priority
from or based on the original patents, and all divisions, reissues, renewals,
extensions, and substitutions of the foregoing, which the holder owns or has a
right to grant licenses under pursuant to U.S.A. or foreign law.
"Person," shall mean an individual, corporation, partnership, trust,
unincorporated organization or a government or any agency or political
subdivision thereof.
"Promotional Material," shall collectively mean any and all of Tower
Tech's papers, brochures, pamphlets, documents, advertisements, displays, video
and audio presentations, and other tangible media and materials specifically
used to promote the Licensed Product, and regardless whether Tower Tech has any
Proprietary Rights therein or thereto.
"Proprietary Part," and collectively, "Proprietary Parts," shall mean
any and all parts and components of the Cooling Towers and any Improvements, in
or to which Tower Tech owns or holds any Proprietary Rights at any time during
the Term.
"Proprietary Right," and collectively, "Proprietary Rights," shall mean
any and all Licensed Product Patents, copyrights, and other proprietary rights,
titles and interest in or to the Cooling Towers, any Improvements, the
Materials, the Trademark, the Trade Name and the CTI certification number(s)
which Tower Tech owns, holds or has a right to grant licenses under at any time
during the Term, including without limitation those certain Licensed Product
Patents more particular described on Exhibit B.
"Royalty," and collectively, "Royalties," shall mean any and all
continuing percentage royalties payable to Tower Tech pursuant to this
Agreement.
"Sublicense," and collectively, "Sublicenses," shall mean any and all
sublicenses of the License granted by Aggreko to a Sublicensee pursuant to
Article Two.
"Tax," and collectively, "Taxes," shall mean any and all fees,
impositions, premiums, duties, assessments, and other taxes of any nature
incurred or sustained regarding the subject matter, including without limitation
any imposed for sales, use, income, import, export, currency, exchange,
certificates, licenses and permits.
"Technology Material," and collectively, "Technology Materials," shall
mean any and all of Tower Tech's designs, drawings, blueprints, schematics,
documents, manuals, specifications, software, and other tangible materials
regarding the Licensor Technology which are specifically used to Develop the
Cooling Towers and any Improvements, whether or not copyrighted.
"Trademark," shall collectively mean those certain logos or trademarks
of Tower Tech more particularly described or displayed on Exhibit C, and any
other trademarks, service marks, logos, or other proprietary marks regarding the
Licensed Product in or to which Tower Tech shall have any right, title or
interest at any time during the Term.
"Trade Name," shall collectively mean those certain trade names of
Tower Tech more particularly described or displayed on Exhibit D, and any other
trade names or other proprietary names regarding the Licensed Product in or to
which Tower Tech shall have any right, title or interest at any time during the
Term
1.2 Other Definitions. In addition to the terms defined in Section 1.1
hereof, certain other terms are defined elsewhere in this Agreement, and
whenever such terms are used in this Agreement, they shall have their respective
defined meanings, unless the context expressly or by necessary implication
otherwise requires.
ARTICLE TWO
LICENSE; SUBLICENSES
2.1 Grant of License. Tower Tech hereby grants to Aggreko the License,
which shall be limited solely to the following rights and license, for the Term
and within the License Territory:
(a) an exclusive, nontransferable right and license to utilize the
Proprietary Rights in connection with the business of the leasing and rental of
the Cooling Towers and any Improvements within any geographic area of the
License Territory; and
(b) an exclusive, nontransferable right and license to utilize the
Trademark and Trade Name in connection with the business of the leasing and
rental of the Cooling Towers and any Improvements within any geographic area of
the License Territory.
Notwithstanding anything contained in this Article Two to the contrary,
Aggreko acknowledges and agrees that the License granted hereunder shall be
subject to the rights of those parties designated as "Licensees" in those
certain License Agreements listed on Exhibit E attached hereto (the "Existing
License Agreements"). Tower Tech specifically agrees that hereinafter it shall
not grant any license or similar right with respect to the Proprietary Rights,
the Trademark or the Trade Name which would impair or violate the exclusive
rights and licenses granted to Aggreko hereunder. In addition, Tower Tech agrees
to promptly use its best efforts to amend, modify and/or alter the Existing
License Agreements to clarify and specifically provide that the Licensees
thereunder do not have any right or license to utilize the Proprietary Rights,
the Trademark or the Trade Name in connection with the business of the leasing
and rental of the Cooling Towers and any Improvements.
2.2. Sublicenses. Aggreko shall have no authority or right to grant any
Sublicenses of any part of the License to Sublicensees within any part of the
License Territory; provided, that, Aggreko may grant Sublicenses to any of its
Affiliates anywhere in the License Territory. Aggreko shall provide Tower Tech
with written notice of any such Sublicense within thirty (30) days after
granting any such Sublicense.
ARTICLE THREE
ROYALTIES; PERIODIC STATEMENTS
3.1 Royalties. Commencing upon the Effective Date and no later than
forty-five (45) days after the end of each calendar quarter during the Term,
Aggreko shall pay to Tower Tech Royalties in an amount equal to three percent
(3%) of the revenue received by Aggreko or its Affiliates which is directly
derived from the leasing or rental of the Cooling Towers. Tower Tech
acknowledges and agrees that it shall not be entitled to any Royalty for amounts
received by Aggreko with respect to labor performed or any ancillary equipment
or services provided by Aggreko or its Affiliates in connection with the leasing
or rental of any Cooling Tower. In addition, Tower Tech shall be entitled to a
Royalty of three (3%) of the revenue received by Aggreko or its Affiliates from
the sale of any Cooling Tower, exclusive of all taxes collected by Aggreko. Any
such Royalties shall be due and payable within forty-five (45) days after the
end of the calendar quarter in which Aggreko or any of its Affiliates receives
the sales price with respect to any sale of a Cooling Tower.
3.2 Periodic Statements. During the Term, within forty-five (45) days
after the end of every calendar quarter, Aggreko shall furnish to Tower Tech a
written statement setting forth all calculations relating to the Royalty payable
with respect to such quarter, including, without limitation, the number of
Cooling Towers sold, leased or rented and the revenue received by Aggreko or its
Affiliates during such quarter from such sales, leases and rentals.
3.3 Books and Records. Aggreko shall keep at its principal executive
offices all such proper books of account and records as may be necessary to
enable the Royalties hereunder to be accurately ascertained and shall permit
Tower Tech or its duly authorized representative to audit and investigate the
same during Aggreko's regular business hours, at Tower Tech's own expense.
3.4 Taxes On Royalties. In event that any governmental authority shall
impose any Taxes on any of the Royalties required by this Agreement, and
requests Aggreko to withhold the amount thereof from such Royalties, then
Aggreko may so deduct them. Proper receipts indicating the payment or
withholding thereof on behalf of Tower Tech shall be promptly submitted to Tower
Tech. If requested by Tower Tech, Aggreko shall fully cooperate with Tower Tech
in a determination of the legality or propriety of any such Taxes, and in
pursuing any legal remedies available to Tower Tech, with the cost thereof to be
paid by Tower Tech.
ARTICLE FOUR
PROPRIETARY RIGHTS; INDEMNIFICATION
4.1 Proprietary Rights. Tower Tech represents that , to the best of its
knowledge, it is the exclusive owner or holder of the Proprietary Rights as of
the Effective Date, that it will be such as to any subsequent Licensed Product
Patents as of their issue date, and that Tower Tech has the right to grant the
License to Aggreko. At all times during the Term, the Licensed Product Patents
shall be and remain the exclusive and separate property of Tower Tech, subject
to this Agreement and the License.
4.2 Patent Applications. At all times during the Term, Tower Tech shall
have the right and option, without obligation and in its sole discretion, to
prepare, file and prosecute any application for Licensed Product Patents within
the License Territory.
4.3 Infringement. At all times during the Term, and regardless whether
either Party will or may be adversely affected thereby, each Party shall
promptly notify the other in writing of any actual, potential or alleged
infringement regarding the Proprietary Rights, the Licensed Product, or the
License within the License Territory. Tower Tech shall have the first right and
option, without obligation and in its sole discretion, to take such appropriate
action as Tower Tech deems necessary regarding the infringement. If Tower Tech
shall fail or refuse to do so, then Aggreko shall have the second right and
option, without obligation and in its sole discretion, to take such appropriate
action as Aggreko deems necessary regarding the infringement. If any legal
proceedings are commenced by either or both Parties against a third party
alleging infringement of the Proprietary Rights, the Licensed Product, or the
License within the License Territory, then if Tower Tech shall have exercised
its aforesaid first option, any settlements, judgments, or Costs awarded to
either Party, including any ongoing payments of royalties or fees by the
infringer, shall be allocated and paid, first, to the Costs associated with the
legal proceedings and second, to the Party prosecuting the proceeding. If
Aggreko shall have exercised its aforesaid second option, all of the foregoing
shall be paid to Aggreko and all such Costs shall be paid by Aggreko.
If any legal proceedings are commenced against either or both Parties
or the Licensed Product by a third party alleging infringement by the
Proprietary Rights, the Licensed Product, or the License of the rights or
property of such third party within the License Territory, then in the event
Aggreko receives written notice of any such legal proceedings Aggreko shall
promptly notify Tower Tech thereof (the "Infringement Notice"). Thereupon, Tower
Tech shall promptly take such action as may be necessary to protect and defend
Aggreko against any such claim by any third party and shall indemnify and hold
Aggreko harmless against any loss or Costs incurred by Aggreko in connection
therewith. If Tower Tech notifies Aggreko within ten (10) days of its receipt of
the Infringement Notice (the "Response Period") of its agreement to assume
responsibility for such legal proceeding and to indemnify and hold Aggreko
harmless against any loss or Costs incurred by Aggreko in connection therewith
and diligently pursues its obligations in this regard, then Aggreko shall have
no power or authority to settle or compromise any such claim by a third party.
Tower Tech shall have the right after considering the best interests of Aggreko
and diligently consulting with Aggreko thereon to defend, compromise or settle
any such claims at the sole cost and expense of Tower Tech, using attorneys of
its own choosing, and bearing always in mind Aggreko's best interest. Aggreko
agrees to cooperate at Tower Tech's sole cost and expense with Tower Tech in
connection with the defense or settlement of any such claim.
If, with respect to such third party claim, Tower Tech does not
acknowledge in writing as provided above within the Response Period or Tower
Tech disclaims in writing to Aggreko Tower Tech's obligation to indemnify
Aggreko pursuant hereto, Aggreko may defend against such claim or related legal
proceeding with such counsel and in such manner as it deems appropriate, and may
consent to the settlement or compromise or, consent to the entry of a judgement
arising from, such claim or legal proceeding without the consent of Tower Tech.
Aggreko shall have the right to discontinue the payment of Royalties to Tower
Tech during the period commencing upon the termination of the Response Period
and ending upon the termination of such proceedings, whether by settlement or
otherwise. In addition, upon the termination of such legal proceedings, whether
by settlement or otherwise, Aggreko shall be entitled to discontinue the payment
of Royalties to Tower Tech until such time as Aggreko shall have been reimbursed
for the Costs associated with such legal proceedings.
In every case, (a) the Party taking action shall do so in the name of
the real party in interest as determined by applicable law, (b) each Party shall
provide the other, its nominees and attorneys, with all available information
and documents regarding the infringement, and (c) the Parties shall fully
cooperate with each other and, if necessary, provide testimony or other evidence
in any legal proceedings.
4.4 Improvements. All Improvements Developed during the Term shall
become the separate and individual property of the Party or Parties Developing
them, and such Party or Parties shall own, hold or have the sole right to
acquire all Proprietary Rights therein or thereto. Immediately upon Development
by Tower Tech and issuance thereof, all Improvements and Improvements Patents
thereon shall automatically be deemed licensed to Aggreko during the Term.
4.5 Trademark and Trade Name. In any and all use of any Trademark and
any Trade Name for any promotion of the Licensed Product or otherwise, Aggreko
shall (a) acknowledge and recognize the Proprietary Rights therein or thereto,
and not do or permit any act or thing which will or may contest, impair or
otherwise adversely affect the same, (b) clearly disclose and indicate such
Proprietary Rights to all customers and other third parties, and not to in any
manner represent that Aggreko has any ownership or other interest in or to any
Trademark or any Trade Name, other than pursuant to this Agreement.
ARTICLE FIVE
TERM OF AGREEMENT
Subject to the terms of this Article Five, the Term shall be the ten
(10) year period commencing on the Effective Date. In the event either Party
fails to comply with any of the terms and conditions of this Agreement, the
non-breaching Party may give the breaching Party thirty (30) days' written
notice specifying the breach, and if such breach fails to be cured within such
period, the non-breaching Party may immediately terminate this Agreement
ARTICLE SIX
ARBITRATION
THE PARTIES SHALL USE THEIR RESPECTIVE BEST EFFORTS TO SETTLE AMICABLY
ANY DISPUTES, DIFFERENCES OR CONTROVERSIES ARISING BETWEEN THE PARTIES OUT OF OR
IN CONNECTION WITH OR IN RESPECT OF THIS AGREEMENT. HOWEVER, IF NOT SO SETTLED
THEN THE SAME SHALL BE SUBMITTED TO ARBITRATION AND TO THE FULLEST EXTENT
PERMITTED BY LAW, BE SOLELY AND FINALLY SETTLED BY ARBITRATION. THE ARBITRATION
PROCEEDING SHALL BE HELD IN DALLAS, TEXAS, AND SHALL BE CONDUCTED IN ACCORDANCE
WITH THE COMMERCIAL ARBITRATION RULES OF THE AMERICAN ARBITRATION ASSOCIATION
AND TO THE EXTENT NOT INCONSISTENT THEREWITH, THE TEXAS GENERAL ARBITRATION ACT,
TITLE 10, XXXXXX'X XXX.CIV.STAT. JUDGEMENT UPON THE AWARD RENDERED BY THE
ARBITRATORS MAY BE ENTERED IN ANY COURT HAVING JURISDICTION, OR APPLICATION MAY
BE MADE TO SUCH COURT FOR A JUDICIAL ACCEPTANCE OF THE AWARD AND ANY ORDER OF
ENFORCEMENT AS THE CASE MAY BE.
ARTICLE SEVEN
MISCELLANEOUS
7.1 Notices. All notices, requests and other communications under this
Agreement shall be in writing (including a writing delivered by facsimile
transmission) and shall be deemed to have been duly given if delivered
personally, or sent by either certified or registered mail, return receipt
requested, postage prepaid, by overnight courier guaranteeing next day delivery,
or by facsimile, addressed as follows:
a) If to Tower Tech :
Tower Tech, Inc.
11935 South X-00 Xxxxxxx Xx.
X.X. 0000
Xxxxxxxx Xxxx, XX 00000
Attn: Xxxxxx X. Xxxxxx, Chief Executive Officer
Facsimile No.: (000) 000-0000
or at such other address or facsimile number as Tower Tech may have advised
Aggreko in writing; and
(b) If to Aggreko:
Aggreko Inc.
0000 X. Xxxxxxx Xxxxx Xxxxx
Xxx Xxxxxx, XX 00000
Attn: Xxxxx Xxxxxxx, Chief Financial Officer
Facsimile No.: (000) 000-0000
or at such other address or facsimile number as Aggreko may have advised Tower
Tech in writing.
All such notices, requests and other communications shall be deemed to have been
received on the date of delivery thereof, if delivered by hand, on the third day
after the mailing thereof, if mailed, on the next day after the sending thereof,
if by overnight courier, and when receipt is acknowledged, if faxed.
7.2. Waivers and Amendments. No amendment or waiver of any provision of
this Agreement, nor consent to any departure therefrom, shall be effective
unless the same be in writing and signed by each party hereto, and then such
waiver or consent shall be effective only in the specific instance and for the
specific purpose for which given. No failure on the part of any party hereto to
exercise, and no delay in exercising, any right hereunder shall operate as a
waiver thereof; nor shall any single or partial exercise of any right hereunder
preclude any other or further exercise thereof or the exercise of any other
right. The remedies provided in this Agreement are cumulative and not exclusive
of any remedies provided by law.
7.3. Binding Effect. This Agreement shall be binding upon and inure to
the benefit of the Parties hereto and there respective successors and
permitted assigns.
7.4 Assignment.
Neither party shall have any right to transfer or assign its interest
or rights in this Agreement or delegate its obligations under this Agreement
without the prior written consent of the other party hereto.
7.5 Change in Control. In the event of the occurrence of a Change in
Control (as hereinafter defined) with respect to Tower Tech, Aggreko shall have
the right, in its sole discretion, to either (i) terminate this Agreement upon
providing Tower Tech with at least thirty (30) days written notice of Aggreko's
intention to terminate this Agreement, or (ii) continue the performance of this
Agreement; provided, that, the surviving or resulting entity or entities
involved in any such Change in Control transaction shall specifically assume, as
a co-obligor with Tower Tech and as a condition to the effectiveness of any such
Change in Control transaction, the obligations of Tower Tech hereunder.
For purposes of this Agreement, a Change in Control shall be deemed to
have occurred if (i) a majority of the voting capital stock in Tower Tech is
acquired by a third party or third parties, other than those persons holding
shares of Tower Tech's capital stock on the date of this Agreement, or their
respective affiliates, (ii) Tower Tech enters into a merger or consolidation
with another corporation or business entity in which Tower Tech is not the
surviving entity, (iii) Tower Tech becomes a majority-owned subsidiary of
another corporation, (iv) a change during any period of two consecutive years of
a majority of the members of the Board of Directors of Tower Tech for any
reason, unless the election, or the nomination for election by Tower Tech's
stockholders, of each director was approved by a majority vote of the directors
then still in office who were directors at the beginning of such period, or (v)
more than forty percent (40%) of the assets of Tower Tech are transferred or
sold.
7.6 GOVERNING LAW. THIS AGREEMENT, AND THE RIGHTS AND OBLIGATIONS OF
THE PARTIES HERETO, SHALL BE GOVERNED BY AND CONSTRUED AND ENFORCED IN
ACCORDANCE WITH THE SUBSTANTIVE LAWS OF THE STATE OF TEXAS, WITHOUT REGARD TO
ITS PRINCIPLES OF CONFLICT OF LAWS.
7.7 Number and Gender. Whenever herein the singular number is used, the
same shall include the plural where appropriate, and words of any gender shall
include each other gender where appropriate.
7.8 Captions. The captions, headings and arrangements used in this
Agreement are for convenience only and do not in any way affect, limit or
amplify the provisions hereof.
7.9 Entirety. This Agreement contains the agreement and understanding
among the Parties with respect to the matters addressed herein and supersedes
all prior representations, inducements, promises or agreements, oral or
otherwise, which are not embodied herein.
7.10 Third Party Beneficiaries. Nothing contained herein, express or
implied, is intended to confer upon any person or entity other than the Parties
hereto and their successors in interest and permitted assigns any rights or
remedies under or by reason of this Agreement.
IN WITNESS WHEREOF, the Parties hereto have executed this Agreement as
of the date first above written.
AGGREKO: AGGREKO INC.
By:ss/XXXXXX X. XXXXXX
-------------------------------
Printed Name: Xxxxxx X. Xxxxxx
Title: Executive Vice President
By: ss/XXXXXX X. XXXXXXX, XX.
----------------------------------
Printed Name: Xxxxxx X. Xxxxxxx, Xx.
Title: Vice President Finance
TOWER TECH: TOWER TECH, INC.
By:ss/XXXXXX X. XXXXXX
------------------------------
Printed Name: Xxxxxx X. Xxxxxx
Title: Chief Executive Officer
