LIMITED TECHNOLOGY LICENSE AGREEMENT
This
Limited Technology License Agreement (“Agreement”) is made and entered into this
9th day of July, 2007 (the “Effective
Date”),
by
and between Trillennium Medical Imaging, Inc. (“Licensor”),
a
Nevada corporation, whose principal office is located at ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇, and Maclath Ltda. (“Licensee”),
a
Costa Rica corporation, whose principal office is located ▇▇▇▇▇▇▇▇
▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇ ▇, ▇▇▇▇▇▇▇ 8-4, San ▇▇▇▇, Costa Rica.
Licensor and Licensee are sometimes referred to individually as a “Party”
or
collectively as the “the
Parties.”
RECITALS
WHEREAS,
Licensor purchases, licenses, sells and distributes the thermal imaging cameras
identified on Schedule A annexed hereto, as the same may be amended from time
to
time during the Term and Renewal Term, if applicable, of this Agreement (the
“Trillennium
Products”)
as
integrated components of one or more systems (each a “System”)
consisting of the Trillennium Products, Trillennium Product Software (as such
term is hereinafter defined), and other parts and components manufactured or
procured by Licensor (the “System
Components”)
(all
of which are collectively referred to hereinafter as the “Trillennium
System”);
WHEREAS,
Licensee desires to purchase, distribute, promote, license and/or sell the
Trillennium System worldwide, in non- embargoed countries exclusive of North
America, United Arab Emirates, Saudi Arabia, Jordan, Kuwait, Iran, Syria,
Lebanon, Egypt, Iraq, Yemen, Bahrain, Qatar, Oman (the “Territories”)
for
usage or application within all medical and veterinary fields (the “Fields
of Use”);
NOW,
THEREFORE,
in
consideration of the mutual covenants and agreements herein contained, Licensor
and Licensee agree as follow:
TERMS
OF AGREEMENT
1.
APPOINTMENT-EXCLUSIVE
LICENSE.
For and
in consideration of the payments and deliveries as set forth in Schedule C
hereto, Licensor hereby appoints Licensee to be the exclusive Licensee of
Trillennium Products and Trillennium Systems to persons and entities located
within the Territories who are engaged in business within the Fields of Use
(the
“End
Users”).
Licensor agrees that in addition to the thermal imaging cameras identified
on
Schedule A annexed hereto, Licensor shall make available to Licensee all such
new or additional products as shall be marketed by Licensor from time to time
during the Term or any Renewal Term hereof on a best market price or best market
rate basis.
2.
TERRITORIAL
LIMITATIONS.
Licensee will not market, sell, or distribute Trillennium Systems or any
components thereof, separately or as a component of any other system, outside
the Territories, or to any business or person other than End Users. This
prohibition includes sales, marketing and distribution activities via any sale,
marketing or distribution channel, including the Internet, provided, however,
that the ability of persons outside of the Territories to view any of the web
pages of Licensee’s website shall not be deemed to be a violation of this
section as long as Licensee does not sell or distribute Trillennium Systems
or
any components thereof to such persons.
3.
TERM.
Unless
sooner terminated as provided herein, this Agreement shall commence on the
Effective Date and continue for a term of twenty-five years (the “Term”).
4.
OPTION
TO RENEW.
In the
event that (a) Licensee shall give notice of its election to renew this
Agreement not later than one-hundred eighty (180) days prior to the expiration
of the Term; and (b) on the date when such notice shall be given, Licensee
shall
have satisfied the Minimum Renewal Purchase Obligation specified in Section
7.2
hereof, this Agreement shall be extended for an additional term of twenty-five
years commencing on the twenty-fifth anniversary of the Effective Date (the
“Renewal
Term”).
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5.
LICENSEE’S
GENERAL OBLIGATIONS
5.1.
Exclusive
Dealings with Licensor.
During
the Term of this Agreement and the Renewal Term, if applicable, and provided
Licensor shall have fulfilled Licensee’s purchase orders in a timely and
commercially reasonable manner in accord with the terms and conditions of this
Agreement, Licensee shall not purchase, lease, license or otherwise acquire,
from any person or entity other than Licensor, thermal imaging cameras or
related software for use in the Territories by End Users in any of the Fields
of
Use. In the event that Licensee violates the exclusivity obligation set forth
in
this Section, it may continue to purchase Trillennium Systems or components
thereof on a non-exclusive basis from Licensor, but Licensor shall be entitled
to sell Trillennium Systems, or any component thereof, directly to, or authorize
other licensees or sales representatives to sell Trillennium Systems and/or
any
components thereof to End Users located within the Territories for use within
the Field of Use.
5.2.
Best
Efforts/Training.
Licensee
agrees to use its best efforts to sublicense and/or sell the Trillennium
Products and/or Systems in a manner that preserves the existing goodwill and
promotes the good image of the Trillennium System and Licensor within the
Territories. Licensor agrees that it shall make its agents or employees
available to Licensee for marketing and equipment use and training purposes
or
for such other and further purposes as Licensee shall reasonably request from
time to time during the Term or any Renewal Term hereof. Licensee agrees that
it
shall be solely responsible for the payment of all costs and expenses associated
with Licensor so providing it agents, employees and/or equipment as requested
by
Licensee.
5.3.
End
User Inquiries.
Licensee will respond promptly to all inquiries from End Users, including
complaints and requests for additional features or performance enhancements,
and
bug fixes and to advise Licensor promptly of all such inquiries to the extent
they relate to a Trillennium Product. Licensor agrees to respond to all
inquiries from End Users, including complaints and requests for additional
features or performance enhancements, and bug fixes relating to its Products
or
Systems in a commercially reasonable manner.
5.4.
Licenses,
Authorizations, Etc.
Except
as otherwise provided in Section 5.6 hereof with respect to export licenses,
Licensee will obtain all necessary licenses, authorizations and approvals from
all governmental authorities having jurisdiction over Licensee and any Systems
incorporating a Trillennium Product, including but not limited to regulatory
authorities similar the United States Food and Drug Administration located
throughout the Territories, for the sale and distribution of the Trillennium
Systems within the Fields of Use.
5.5.
Import
Documentation.
In the
event that any governmental authority within the Territories requires Licensor
or Licensee to obtain any import license, permit or other documentary
authorization in order for Licensor to be able to ship Trillennium Products
and/or Trillennium’s Systems into such jurisdiction, Licensor’s shipment thereof
shall be conditioned upon its receipt of evidence satisfactory to Licensor
of
compliance by Licensee or Licensee’s End User with such
requirements.
5.6.
Export
Regulations.
Licensee shall provide to Licensor on a timely basis all information and
documentation requested by Licensor in order to permit Licensor to obtain such
licenses, permits or other documentary authorizations as may be required for
the
exportation or re-exportation of Trillennium Products and/or Trillennium Systems
to Licensee or Licensee’s End Users. Licensor shall, from time to time and upon
request of Licensee, promptly provide Licensee with all such licenses, permits
or other documentary authorizations or copies thereof as may be required for
the
exportation or re-exportation of Trillennium Products and/or Trillennium Systems
to Licensee’s End Users in the Territories. Licensor shall timely notify
Licensee in writing of any restrictions and/or other reporting requirements
relating to the sale of Trillennium Products or Trillennium Systems in the
Territories
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5.7.
No
Re-Exportation.
Licensee shall not, either directly or indirectly, re-export any Trillennium
Products or any Trillennium Systems from the Territories to any destination
to
which such re-export is not permitted under a general license established under
the United States Export Administration Regulations unless and until Licensor
shall have applied for and obtained, at the request and expense of Licensee,
an
individual validated license from the Office of Export Administration of the
United States Department of Commerce for such re-export. Licensor shall notify
Licensee in writing, and update such notifications on a timely basis, of any
such restrictions of the kind referred to in this paragraph.
5.8.
Lead
Follow-Up.
Licensee will investigate diligently all leads with respect to potential End
Users referred to it by any source, including Licensor.
5.9.
Adequate
Staffing.
Licensee
will maintain, or make provisions for, an adequate staff of trained and
qualified sales and support personnel dedicated on a full-time basis to the
sale
and support of Trillennium Systems.
5.10.
Royalties.
Licensee
agrees to pay Licensor ongoing payments (each a “Royalty”)
of * of gross revenues received by Licensee from the sale, lease or
sublicensing of the Territory or part of the Territory, any Trillennium
Products, Trillennium Systems or any components thereof. Said Royalties are
due
and payable to Licensor’s order within fifteen (15) days after the end of the
calendar month in which any such revenue is received. Any amounts not paid
with
in the time due shall bear interest at the rate of one and one-half percent
(1.5%) per month until said amount(s) are paid in full. Licensor shall have
the
right to audit Licensee’s books and records in accord with U. S. generally
accepted accounting principals at such times and at such places as Licensor
shall from time to time deem appropriate. Licensee shall cooperate with Licensor
and Licensor’s representatives in all such audit requests.
6.
LICENSEE’S
REPRESENTATIONS, WARRANTIES, AND COVENANTS.
Licensee
represents, warrants, covenants, and agrees, as follows:
6.1.
Licensee’s
Trademarks.
Licensee is and shall be during the Term and any Renewal Term of this Agreement
the sole owner of any trademarks adapted by Licensee (the “Licensee
Marks”)
free
and clear of all liens, claims and encumbrances, other than liens arising from
the assignment thereof as collateral security to one or more lenders or
providers of credit to Licensee. The application of Licensee Marks, and any
other trademark or trade name designated by Licensee for inclusion on any of
the
Trillennium Products, the Trillennium System or any component thereof, the
sale
of such Trillennium Products, the Trillennium System or any component thereof
by
Licensor to Licensee and the sale, lease, sublicensing or other disposition
of
such Trillennium Products by Licensee shall not violate the trademark or other
intellectual property rights of any third party.
6.2.
Adherence
to Laws.
Licensee
will at all times perform its obligations under this Agreement in strict
accordance with all applicable laws and regulations in the Territories and
the
highest commercial standards. Licensee will also comply with the U.S. Foreign
Corrupt Practices Act and all United States export control laws, rules and
regulations.
6.3.
Service
and Support.
Licensee shall service all Trillennium Products and Trillennium Systems sold,
leased, sublicensed or otherwise disposed of in the Territories, and shall
provide customer support to the End Users thereof.
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6.4.
Marketing
and Promotion.
Licensee shall use its best efforts to market and promote the Trillennium
Products in the Territories;
6.5.
Corporate
Authority, Etc.
Licensee is a corporation duly organized and validly existing under the laws
of
the Republic of Costa Rica. It has all requisite power and authority to carry
on
the business it now conducts or intends to conduct during the Term of this
Agreement and the Renewal Term, if applicable, in the Territories. The execution
and performance of this Agreement has been authorized and approved by Licensee’s
Board of Directors and constitutes a valid and binding agreement.
7.
LICENSEE’S PURCHASE OBLIGATIONS.
7.1.
Minimum
Purchase Obligations to Maintain Exclusivity of License.
Licensee shall be obligated to purchase and pay for not less than fifty (50)
Trillennium Systems during the one (1) year period commencing on the Effective
Date, and each succeeding one (1) year period during the Term and the Renewal
Term, if applicable. In the event that Licensee fails to comply with such
obligation, it may continue to purchase Trillennium Products, Trillennium
Systems or any components thereof pursuant to this Agreement on a non-exclusive
basis, but Licensor shall also be entitled to sell Trillennium Products,
Trillennium Systems or any components thereof directly to, or authorize other
licensees or sales representatives to sell Trillennium Products, Trillennium
Systems or any component thereof to End Users located within the
Territories.
7.2.
Minimum
Purchase Obligations to Qualify for Renewal of Term.
Licensee shall not be entitled to exercise the renewal option specified in
Article 4 of this Agreement unless, during the period of the Term which shall
end on the last date upon which notice of Licensee’s election to renew this
Agreement may be given to Licensor, Licensee shall have purchased and paid
for
not less than One Thousand Two Hundred Fifty (1,250) Trillennium Systems (the
“Minimum
Renewal Purchase Obligation”).
8.
PRICES.
The
prices to be paid by Licensee from time to time for Trillennium Products,
Trillennium Systems or any components thereof will be equal to the list prices
then published by the Trillennium Product manufacturer(s) minus seven and
one-half percent (7.5%), plus all applicable taxes, fees, duties, or other
charges imposed by any government. Licensee shall be responsible for all
shipping and documentary costs relating to shipment of Trillennium Products,
Trillennium Systems or any components thereof to Licensee’s designated point of
destination. All such deliveries shall be made F.O.B. at Licensor’s point of
distribution in either Oakland, New Jersey or Holland, Ohio, or such other
point
of distribution as Licensor shall designate to Licensee in writing from time
to
time during the Term or any Renewal Term. All prices are in United States
Dollars and all quantities are in United States measures.
9.
SALE
OF PRODUCTS.
9.1.
Purchase
Orders.
Each
order for Trillennium Products, Trillennium Systems or any components thereof
(“Purchase
Order”)
will
be in writing and addressed to Licensor. No Purchase Order will be effective
until accepted by Licensor in writing. No Purchase Order will alter the legal
terms of this Agreement.
9.2.
Private
Labeling of Trillennium Products.
All
Trillennium Products purchased pursuant to this Agreement shall bear Licensee’s
trademarks and/or trade names, as specified in the applicable Purchase Order
unless otherwise agreed to in a writing signed by the Parties.
9.3.
Terms
of Purchase.
Licensee shall make all payments in immediately available funds to Licensor’s
order on or before the date of shipment of any Trillennium Product, Trillennium
System or any component thereof. Licensor reserves the right, in its sole
discretion, to delay shipping additional Trillennium Products or Trillennium
Systems or any component thereof in the event the aggregate of all past due
amounts exceeds $50,000 until such time as such aggregate past due amount,
together with any accrued but unpaid interest thereon shall be paid in
full.
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9.4.
Resale/License
of Trillennium Products.
Licensee may resell, lease or license the use of the Trillennium Products,
the
Trillennium Systems or any components thereof which it shall purchase or obtain
by license pursuant to this Agreement, either separately or as a component
of a
System, at such prices as Licensee in its sole discretion shall from time to
time determine, provided that any Trillennium Products, Trillennium Systems
or
any components thereof which Licensee obtains by license from Licensor may
only
be distributed by sub-license in a form and content approved by Licensor in
writing.
9.5.
Acceptance
of Trillennium Products, Trillennium Systems or any components
thereof.
In the
event of any shortage, damage or discrepancy in or to a shipment of Trillennium
Products, Trillennium Systems or any components thereof, Licensee shall promptly
report the same to Licensor and furnish such written evidence or other
documentation as Licensor may deem appropriate. Licensor shall not be liable
for
any such shortage, damage or discrepancy unless Licensor has received notice
and
substantiating evidence thereof from Licensee within forty-five (45) days after
delivery. If the substantiating evidence delivered by Licensee shall demonstrate
to Licensor’s satisfaction that Licensor is responsible for such shortage,
damage or discrepancy, Licensor shall promptly deliver additional or substitute
Trillennium Products, Trillennium Systems or any components thereof to Licensee
in accordance with the delivery procedures set forth herein, but in no event
shall Licensor be liable for any additional costs, expenses or damages incurred
by Licensee directly or indirectly as a result of such shortage, damage or
discrepancy in or to a shipment.
9.6.
Licensor’s
Failure to Supply Trillennium Products.
In the
event that Licensee submits a Purchase Order and satisfies all of the payment
and export informational requirements imposed upon Licensee pursuant to this
Agreement with respect thereto, but Licensor fails to accept the Purchase Order
or ship the ordered Trillennium Products, Trillennium Systems or any components
thereof for any reason other than those set forth in this Agreement which would
permit Licensor to reject the Purchase Order or fail to fulfill the order,
then
solely for the purpose of determining whether Licensee shall have complied
with
the purchase obligations imposed upon it pursuant to Section 7.1 and/or 7.2
hereof, the Trillennium Products identified in such Purchase Order shall be
deemed to have been purchased and paid for.
9.7.
Product
Changes.
Licensor shall not make changes that materially affect or alter the product
specifications for any product to be marketed by Licensee hereunder without
the
written concurrence of Licensee.
9.8.
Risk
of Loss.
Risk of
loss for Trillennium Products, Trillennium Systems or any components thereof
shipped by Licensor to Licensee or to Licensee’s designated End User shall pass
to Licensee upon departure from Licensor’s first point of shipment.
10.
PRODUCT
SOFTWARE.
10.1.
Pre-Existing
Trillennium Product
Software.
Licensor
previously created software for use as an integrated component of its
Trillennium System which it has engineered pursuant to its own specifications
and which Licensee acknowledges and agrees is exclusively owned by Licensor.
Such Trillennium Product Software is commonly known as the “TMI Med Image 5.0
Product Software.” All such software and all such software as has been developed
and/or is incorporated into use with the Trillennium Products or Trillennium
Systems or shall hereafter be developed and/or incorporated into use with the
Trillennium Products and/or Trillennium Systems, including but not limited
to
all design characteristics and/or source code relating thereto, is Trillennium
Product Software, exclusively owned and controlled by Licensor.
5
10.2.
Future
Software Engineering Services.
In the
event that Licensee asks Licensor to create additional software during the
Term
or the Renewal Term, if applicable, Licensor shall do so, and Licensee shall
pay
therefore, pursuant to the terms of a separate agreement to be entered into
by
the Parties with respect thereto. Any such additional software created by
Licensor shall be deemed to be Trillennium Product Software for all purposes
of
this Agreement. Licensee agrees it shall not directly or indirectly participate
in the creation of any software, design characteristics and/or source code
directly or indirectly competing with Trillennium’s Product Software. Licensor
further agrees that any software enhancements, improvements, upgrades or
modifications as well as any new software developed and made available for
use
in Trillennium Systems shall promptly be made available to Licensee on a best
market price or best market rate basis.
10.3.
Proprietary
Rights in Product Software.
Licensee shall not without the prior written consent of Licensor disclose (a)
any design characteristics or implementation detail of the Product Software
or
(b) any of the source code or the Trillennium Product Software. Licensee shall
not in any manner, directly or indirectly, participate in the distribution,
sale, transfer, or use of any Trillennium Product Software or unlicensed
derivations thereof, with or without incorporation into or with any Trillennium
Product or System, without Licensor’s express written consent, which consent
Licensor shall not be required to grant and if Licensor decides, in its sole
discretion, to grant the same, it may do so on such terms and conditions as
it
shall determine in the exercise of its sole discretion.
10.4.
Cooperative
End User Software Support.
Licensor and Licensee shall use commercially reasonable efforts to reach an
agreement with respect to providing maintenance and other customer support
service to End Users of Licensee within the Territories. There shall be a
separate service and support agreement that describes the service, recalibration
and support obligations of each Party.
10.5.
Public
Information. Licensee
agrees that the existence of a copyright notice or patent application shall
not
cause or be construed as causing any Trillennium Product Software to be deemed
published or in the public domain or as evidencing Licensor’s intent to waive
any rights under law with respect to the protection of Trillennium Product
Software.
10.6.
Legal
Action.
At
either Party’s request, the other Party will cooperate fully with the requesting
Party in any and all legal actions taken by or brought against the requesting
Party to enforce or protect the requesting Party’s rights in and with respect to
any patent, trademark, copyright or other intellectual property encompassing
or
incorporated into any Trillennium Product.
11.
LICENSOR’S
PRODUCT AND SOFTWARE WARRANTIES; LICENSOR’S
REPRESENTATIONS.
11.1.
Trillennium
Products.
Licensor will repair or replace any parts or material contained in any
Trillennium Product or Trillennium System or any component thereof found
defective as the result of flaws in design or manufacture when reported in
writing within one (1) year from the date of sale of the subject Trillennium
Product, Trillennium System or any component thereof to Licensee. Once a return
authorization is approved and assigned, Trillennium Products, Trillennium
Systems or any component thereof to be repaired under this warranty are to
be
returned to Licensor with shipping charges to be prepaid by the End User, who
shall assume all risk and cost of shipping to and from Licensor’s designated
point of delivery. In the event that Licensor determines, in its sole judgment
and discretion, for purpose of repair, that an on-site inspection is required,
this warranty does not cover transportation of factory-trained service personnel
to and from the installation site or expenses while there. The foregoing
warranty shall be void if the Trillennium Product, Trillennium System or any
component thereof in question has been disassembled, tampered with, altered
or
otherwise damaged, without prior written consent from Licensor, or if considered
by Licensor to have been abused or used in abnormal conditions. The foregoing
warranty shall constitute the exclusive remedy available to Licensee and its
End
User and shall be considered a condition of sale and use. Licensor shall not
be
liable for any loss or damage, including loss of profit or consequential
damages, resulting from or attributed to the use of any Trillennium Product,
Trillennium System or any component thereof or resulting from a defect in design
or manufacture of any Trillennium Product or Trillennium System or any component
thereof.
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11.2.
Product
Software.
Licensor warrants, for a period of ninety (90) days after delivery of a
Trillennium System to an End User, and solely for the benefit of such End User,
that the Product Software will perform in all material respects in accordance
with the applicable documentation and specifications provided to Licensee by
Licensor. Licensor shall make such warranty available to Licensee’s End Users,
provided, however, that such warranty shall not apply to any software interface,
modification, installation, integration or other software not developed and
provided by Licensor. Licensor reserves the right to charge a fee based on
time,
materials and costs, for all services provided pursuant to any claim under
this
warranty that Licensor, in its sole discretion, subsequently determines was
not
caused by a defect in the Product Software.
| 11.3. |
Disclaimer.
EXCEPT FOR THE EXPRESS WARRANTIES PROVIDED IN
|
THIS
ARTICLE 11, THE TRILLENNIUM PRODUCTS AND PRODUCT SOFTWARE AND ALL COMPONENTS
THEREOF ARE PROVIDED “AS IS.” THE EXPRESS WARRANTIES SET FORTH IN THIS SECTION
ARE IN LIEU OF ALL OTHER WARRANTIES, WHETHER EXPRESS, IMPLIED, OR STATUTORY,
INCLUDING BUT NOT LIMITED TO ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, CUSTOM, TRADE, QUIET ENJOYMENT, ACCURACY OF
INFORMATIONAL CONTENT, OR SYSTEM INTEGRATION, OR ANY WARRANTIES ARISING UNDER
ANY OTHER LEGAL REQUIREMENT. EXCEPT FOR THE EXPRESS WARRANTY IN SECTION 11.2,
LICENSOR MAKES NO WARRANTY THAT THE PRODUCT SOFTWARE WILL RUN PROPERLY ON ANY
HARDWARE, THAT THE PRODUCT SOFTWARE WILL MEET THE REQUIREMENTS OF LICENSEE
OR
AUTHORIZED END USERS, WILL OPERATE IN THE COMBINATIONS WHICH MAY BE SELECTED
FOR
USE BY LICENSEE OR AUTHORIZED END USERS, OR THAT THE SERVICES OR OPERATION
OF
THE PRODUCT SOFTWARE WILL BE UNINTERRUPTED OR ERROR FREE, OR THAT ALL ERRORS
WILL BE CORRECTED.
11.4.
Licensor’s
Representations.
Licensor
represents, warrants, covenants, and agrees, as follows:
(a)
Licensor is the exclusive owner and distributor of the Trillennium System,
which
currently incorporates thermal imaging cameras manufactured by Mikron Infrared
Inc.
(b)
Mikron Infrared Inc. is, based upon Licensor’s extensive due diligence, the
owner of the proprietary and patented technology incorporated in the thermal
imaging cameras it manufactures and as are currently utilized by Licensor in
its
Trillennium System.
(c)
Licensor has the exclusive right to distribute and license the Trillennium
System worldwide.
12.
INDEMNIFICATION
12.1.
Indemnification
of Licensee.
Licensor shall indemnify, defend and hold harmless Licensee and its officers,
directors, employees, stockholders, agents and representatives (collectively,
the “Licensee
Indemnified Parties”)
from
and against any loss, liability, obligation, claim, diminution in value, damage,
cost or expense, including reasonable attorneys’ fees and disbursements and
costs of investigation in connection with any claim, action, suit or proceeding
(each a “Loss”)
suffered or incurred by, or asserted against, any Licensee Indemnified Party
that is attributable to, is based upon, is caused by, results from, or in any
way arises from any breach or failure to perform by Licensor of any of its
obligations, covenants or agreements set forth in this Agreement.
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12.2.
Indemnification
of Licensor.
Licensee shall indemnify, defend and hold harmless Licensor and its officers,
directors, employees, stockholders, agents and representatives (collectively,
the “Licensor
Indemnified Parties”
and
together with the Licensee Indemnified Parties, the “Indemnified
Parties”)
from
and against any Loss suffered or incurred by, or asserted against, any Licensor
Indemnified Party that is attributable to, is based upon, is caused by, results
from, or in any way arises from:
(a)
any
breach or failure to perform by Licensee of any of its obligations, covenants
or
agreements set forth in this Agreement;
(b)
any
inaccuracy in or breach of any covenant, agreement, representation or warranty
of Licensee contained in this Agreement, and any claim, action, suit or
proceeding by any third party alleging facts that if proven would constitute
an
inaccuracy in or breach of any such covenant, agreement, representation or
warranty of Licensee, provided the same is not the result of any fault of
Licensor; or
(c)
any
claim, action, suit or proceeding brought by any third party (including without
limitation any governmental entity) in connection with Licensee’s production,
distribution, marketing and/or use of any Trillennium System, provided the
same
is not the result of any fault of Licensor.
12.3.
Indemnification
Claim Procedure.
(a)
Any
Indemnified Party seeking indemnification under this Article 12 shall give
prompt written notice to the persons against whom indemnification is sought
(the
“Indemnifying Party”) of the assertion of any claim by a third party or the
discovery of any fact upon which the Indemnified Party intends to base a claim
under this Article 12. The delay or failure of any Indemnified Party to provide
notice hereunder shall not in any way limit its indemnification rights hereunder
except to the extent that the Indemnifying Party demonstrates that its ability
to defend or resolve such claim is actually and materially prejudiced thereby.
Any such notice shall describe the facts and circumstances upon which the
asserted claim for indemnification is based and shall include the amount of
the
indemnified Losses (or, if such amount is not then determined, a good faith
estimate thereof) and the basis for the determination of the amount of such
Losses.
(b)
With
respect to a third party claim:
(i)
The
Indemnifying Party may, if applicable, and at the request of the Indemnified
Party shall, participate in and control the defense of any third party claim
at
its own expense. If the Indemnifying Party elects to assume the defense (whether
or not obligated to) of any such claim, the Indemnified Party may participate
in
such defense, but in such case the expenses of the Indemnified Party shall
be
paid by the Indemnified Party. If the Indemnifying Party shall fail to defend
a
third party claim or, if after commencing or undertaking any such defense,
shall
fail to prosecute or shall withdraw from such defense, the Indemnified Party
shall have the right to undertake the defense thereof at the Indemnifying
Party’s expense. Notwithstanding the foregoing, if the Indemnifying Party
assumes the defense of a third party claim and if the Indemnified Party later
determines in good faith that the third party claim is (x) likely to materially
adversely affect it or its business in a manner that may not be adequately
compensated by money damages or (y) may expose the Indemnified Party to
potential obligations or Losses that may not be fully satisfied by the
Indemnifying Party, then the Indemnified Party may, by written notice to the
Indemnifying Party, assume the exclusive right to defend, compromise, or settle
such claim. If the Indemnified Party shall so assume the exclusive right to
defend, compromise, or settle such claim as it relates to the Indemnified
Party’s liability only, all attorneys’ fees and other expenses incurred by the
Indemnified Party in the defense, compromise or settlement of such claim shall
be at the Indemnifying Party’s expense.
8
(ii)
The
Party controlling the defense of any third party suit, action or proceeding
shall keep the other Party advised of the status of such action, suit or
proceeding and the defense thereof and shall consider in good faith
recommendations made by the other Party with respect thereto.
(iii)
The
Indemnifying Party shall not settle any third party claim without the consent
(which consent shall not be unreasonably withheld or delayed) of the Indemnified
Party if any relief, other than the payment of money damages which the
Indemnifying Party shall be obligated to pay in full, would be granted against
the Indemnified Party or its Affiliates by such settlement or if the Indemnified
Party would be liable to the third party for any portion of such
settlement.
12.4.
LICENSOR’S
TRADEMARKS AND TRADENAMES.
Licensor owns numerous trademarks and trade names (“Trillennium
Marks”),
including but not limited to the Trillennium® trademark and trade name. This
Agreement does not confer or grant to Licensee any right or license to use
Trillennium Marks. Licensee expressly covenants and agrees that it shall not
use
any of the Trillennium Marks for any purpose without first obtaining Licensor’s
written consent to do so.
13.
DEFAULT; TERMINATION.
13.1.
Events
of Default.
Each of
the following shall constitute an Event of Default:
(a)
There
shall occur any failure by Licensee to pay, when due, any sum due and owing
with
respect to the purchase of Trillennium Systems or any components thereof, it
being expressly understood and agreed that Licensee’s payment obligation
hereunder arises only with respect to Trillennium Products, Trillennium Systems
or any components thereof actually ordered and not as the result of any failure
to order regardless of whether Licensee has satisfied its minimum purchase
requirements as set forth in paragraphs 7.1 or 7.2 hereinabove; or
(b)
Any
covenant, representation or warranty made by Licensee or Licensor in this
Agreement shall prove to have been untrue or incorrect in any material respect;
or
(c)
Licensee shall fail to perform any of the agreements or obligations imposed
upon
it pursuant to this Agreement, provided, however, that Licensee’s failure to
comply with the purchase obligations set forth in Article 7 hereof shall not
constitute or be deemed to be an Event of Default which would entitle Licensor
to exercise any of the remedies specified in Section 13.2 hereof;
or
(d)
Licensor shall fail to perform any of the agreements or obligations imposed
upon
it pursuant to this Agreement; or
(e)
Licensee or Licensor shall
(i)
voluntarily dissolve, liquidate or terminate operations or apply for or consent
to the appointment of, or the taking of possession by, a receiver, custodian,
trustee or liquidator of all or of a substantial part of its assets;
(ii)
admit in writing its inability, or be generally unable, to pay its debts as
the
debts become due;
(iii)
make a general assignment for the benefit of its creditors;
(iv)
commence a voluntary case under the federal Bankruptcy Code (as now or hereafter
in effect); or
(v)
file
a petition seeking to take advantage of any other law relating to bankruptcy,
insolvency, reorganization, winding up, or composition or adjustment of debts,
(vi) fail to controvert in a timely and appropriate manner, or acquiesce in
writing to, any petition filed against it in an involuntary case under the
federal Bankruptcy Code, or (vii) take any corporate action for the purpose
of
effecting any of the foregoing; or
9
(f)
An
involuntary petition or complaint shall be filed against Licensee or Licensor
seeking bankruptcy relief or reorganization or the appointment of a receiver,
custodian, trustee, intervener or liquidator of Licensee, of all or
substantially all of its assets, and such petition or complaint shall not have
been dismissed within 60 days of the filing thereof; or an order, order for
relief, judgment or decree shall be entered by any court of competent
jurisdiction or other competent authority approving or ordering any of the
foregoing actions.
13.2.
Rights
and Obligations upon Licensee’s or Licensor’s Default.
Upon
the occurrence of any of the Events of Default specified below, Licensor or
Licensee, as the case may be, shall have the following rights and
obligations:
(a)
Upon
occurrence of an Event of Default specified in Sections 13.1(a), (e) or (f),
to
terminate this Agreement immediately upon the giving of notice thereof to the
non-defaulting Party.
(b)
Upon
occurrence of an Event of Default specified in Section 13.1(b), (c) or (d),
to
terminate this Agreement on the fifteenth (15th)
day
after notice of such termination shall be given to Licensee or Licensor, as
the
case may be, unless within such period of time, the defaulting Party shall
have
cured the Default specified in such notice.
(c)
Termination of this Agreement shall not release the defaulting Party from the
obligation to make payment of all amounts then or thereafter due and payable
to
Licensor hereunder.
(d)
Licensor shall have the right at its option to cancel any or all accepted
purchase orders which provide for delivery after the effective date of any
such
termination.
14.
CONFIDENTIALITY.
Licensee and Licensor both acknowledge a duty of care to each other. Each
Party’s trade secrets and business information, including but not limited to
customer lists, management information, and strategies and plans, that become
known to the other are to be treated as confidential, are to be used solely
in
connection with the performance of this Agreement, and are not to be disclosed
to anyone other than Licensee’s or Licensor’s officers and employees, as the
case may be, who require access to the confidential information to perform
their
obligations under this Agreement. On termination of this Agreement, each Party
shall deliver to the other all confidential information and materials and all
copies thereof. The duty of confidentiality will survive the termination of
this
Agreement.
15.
SUSPENSION
OF PERFORMANCE.
Whenever a Party’s performance of its obligations, other than those obligations
involving payments for goods delivered, are substantially impaired by reason
of
circumstances beyond the reasonable control of such Party, including but not
limited to failures or delay caused by the other Party, acts of God (including
without limitation, flood or earthquake), war, embargo, strike, labor
disturbance, riot, public disorder, terrorism, catastrophes of fire or
explosion, local or foreign laws or regulations not existing at the time of
execution of this Agreement, inability, beyond the party’s ability to control,
to secure materials or transportation facilities, or the intervention of any
governmental authority, then such performance will be excused during the course
of such events and for a reasonable time thereafter. To assert the right to
suspend performance, a Party must provide notice to the other Party within
seven
(7) days of the event justifying the suspension. The Parties will make
commercially reasonable efforts to minimize the impact of such events, and
the
party receiving such notification shall be entitled to suspension of its
performance during such period of interruption.
10
Additionally,
Licensor agrees that it shall notify Licensee within three (3) business days
of
its receipt of any impending or threatened interruption in the supply of any
components, which would impair Licensor’s ability to deliver Trillennium Systems
in accord with the terms of this Agreement.
16.
DISPOSITION
PERIOD.
If this
Agreement is terminated for any reason, Licensee will have One Hundred Twenty
(120) days to dispose of its remaining inventory of Trillennium Products or
Trillennium Systems or any components thereof in a manner consistent with the
terms of this Agreement. If Licensee is unable to sell all remaining inventory
within this period, Licensor will make reasonable efforts to find a third party
buyer or otherwise dispose of the inventory.
17.
GOVERNING
LAW.
All
matters arising out of or relating to this Agreement and the transactions
contemplated hereby (including without limitation its interpretation,
construction, performance and enforcement) shall be governed by and construed
in
accordance with the internal laws of the State of Ohio without giving effect
to
any choice or conflict of law provision or rule (whether of the State of Ohio
or
any other jurisdiction) that would cause the application of laws of any
jurisdictions other than those of the State of Ohio to be applied.
18.
SUBMISSION
TO JURISDICTION.
Each of
the Parties to this Agreement:
(a)
submits to the personal jurisdiction of the courts of the State of Ohio in
▇▇▇▇▇
County or the United States District Court for the Northern District of Ohio
located in Toledo, Ohio, in any action or proceeding arising out of or relating
to this Agreement or any of the transactions contemplated by this Agreement;
(b)
agrees that all claims in respect of such action or proceeding may be heard
and
determined in any such court;
(c)
agrees that it shall not attempt to deny or defeat such personal jurisdiction
by
motion or other request for leave from any such court; and
(d)
agrees not to bring any action or proceeding arising out of or relating to
this
Agreement or any of the transaction contemplated by this Agreement in any other
court.
Each
of
the Parties hereto waives any defense of inconvenient forum to the maintenance
of any action or proceeding so brought and waives any bond, surety or other
security that might be required of any other Party with respect thereto. Any
Party hereto may make service on the other Party by sending or delivering a
copy
of the process to the Party to be served at the address and in the manner
provided for the giving of notices in Section 19. Nothing in this Section 18,
however, shall affect the right of any Party to serve legal process in any
other
manner permitted by law.
19.
NOTICES.
All
notices, and other communications required in this Agreement will be in writing
and will be sent by certified mail, postage prepaid, return receipt requested,
by a recognized international courier service or by electronic communication.
Notices will be sent to the addresses shown at the beginning of this Agreement,
or to any other address a Party may designate by notice in accordance with
this
Section. Notices will be deemed delivered when (a) the return receipt is signed,
delivery is refused, or the notice is designated by the postal authority as
not
deliverable; (b) on the date of delivery recognized by an international courier
service; (c) or on the date of transmission if sent by electronic communication.
Notwithstanding the above, electronic notices and Purchase Orders sent to
Licensor will only be deemed delivered when their delivery or acceptance is
formally acknowledged by return notice from Licensor to Licensee.
20.
INDEPENDENT
CONTRACTOR.
Nothing
herein shall be deemed to constitute Licensor and Licensee as partners or
otherwise associated in or with the business of the other. Licensee is and
will
always remain an independent contractor and neither Party shall be liable for
any debts, obligations, or liabilities of the other. Neither Party is authorized
to incur debts or other obligations of any kind on the part of or as agent
for
the other. It is expressly recognized that no fiduciary relationship exists
between the Parties.
11
21.
WAIVERS.
The
failure or delay of either Party to require performance by the other of any
provision of this Agreement will not affect the right of that Party to require
performance of that provision or to exercise any right, power, or remedy under
this Agreement. A waiver regarding a breach of a provision of this Agreement
is
not to be construed as a waiver of any continuing or succeeding breach of that
provision, a waiver of the provision itself, or a waiver of any right, power,
or
remedy under this Agreement.
22.
SURVIVAL.
All
agreements, representations, and warranties made in this Agreement or made
in
writing pursuant to this Agreement will survive the termination or execution
and
delivery of this Agreement and the consummation of the transactions contemplated
herein and hereby.
23.
SEVERABILITY.
If any
provision of this Agreement is contrary to, prohibited by, or deemed invalid
under applicable laws or regulations, only that provision will be deemed omitted
to the extent it is contrary, prohibited, or invalid, and the remainder of
the
Agreement will be given full force and effect so long as the Agreement does
not
then fail in its essential purpose or purposes. The Parties agree that they
will
negotiate in good faith to replace any invalid or unenforceable provision or
provisions with suitable provisions to maintain the economic purposes and
intentions of this Agreement.
24.
BINDING
EFFECT.
The
terms and provisions of this Agreement are binding upon and shall inure to
the
benefit of the Parties, their respective legal representatives, successors,
and
permitted assigns.
25.
AMENDMENTS;
SCHEDULES.
This
Agreement and the Schedules annexed hereto may only be amended by a writing
that
makes specific reference to this Agreement and that is signed by the Party
against whom enforcement is sought.
26.
ASSIGNMENT.
Licensee shall not assign this Agreement, or delegate its obligations hereunder
without first having received Licensor’s consent thereto.
27.
AUTHORITY AND LEGAL COMPLIANCE.
Licensor represents and warrants that it has the full and unrestricted legal
authority to enter into and perform all of its obligations as set forth herein
and further that it shall comply with all applicable laws, rules and regulations
applicable to this Agreement and its relationship with Licensee.
IN
WITNESS WHEREOF,
the
Parties have executed this Agreement effective as of the day and year written
above.
| “Licensor” | Trillennium Medical Imaging, Inc. | |
|
By:
/s/ John Antonio
Name:
John Antonio
Title:
President and C.E.O.
|
||
| “Licensee” | Maclath LTDA | |
|
By:
/s/ ▇▇▇▇ ▇▇▇▇▇▇
Name: ▇▇▇▇ ▇▇▇▇▇▇ Title:
Managing Director
|
12
Schedule
A
Trillennium
Products
The
following models of Licensor’s thermal imaging cameras and any equivalent or
future models marketed by Licensor in replacement thereof during the Term of
the
Agreement, and the Renewal Term, if applicable, are designated as Trillennium
Products for purposes of the Agreement:
All
Trillennium thermal imaging cameras
Model
7500
Model
7800
(End
of Schedule A)
Schedule
B
Fields
of Use
Medical
and Veterinary applications
(End
of Schedule B)
Schedule
C
Consideration
(a)
Within one (1) business day following Licensee’s receipt of an original of this
Agreement executed by Licensor (the “First Payment Date”), Licensee shall pay to
Licensor’s order, in immediately available funds, the principal sum of *, and
within five (5) business days after the First Payment Date, Licensee shall
pay
to Licensor’s order, in immediately available funds, the principal sum of
*.
(b)
No
later than sixty (60) days after the First Payment Date, Licensee shall pay
to
Licensor’s order, in immediately available funds, the principal sum of
*.
(c)
Unless otherwise extended in accordance with the terms hereof, Licensee shall,
no later than ninety (90)
days
after the First Payment Date, pay to Licensor’s order, in immediately available
funds, the principal sum of *.
(d) Provided
Licensee is not in default of any of the terms and conditions of this Agreement
and further provided
that Licensee gives Licensor no less than ten (10) days’ written notice in each
instance of its election to extend pursuant to this paragraph, Licensee may
extend the deadline for payment of the balance of * due pursuant to paragraph
(d) above as follows:
| i. |
by
payment to Licensor’s order, in immediately available funds, of the
principal sum of * for an initial thirty (30) day
extension;
|
| ii. |
by
payment to Licensor’s order, in immediately available funds, of the
principal sum of * for a second thirty (30) day
extension;
|
| iii. |
by
payment to Licensor’s order, in immediately available funds, of the
principal sum of * for a third thirty (30) day
extension.
|
Licensor
understands and agrees that each of the extension payments described in the
preceding subparagraphs (e)(i) through (e)(iii), inclusive, shall be credited
against the * due pursuant to paragraph (d) above.
(e)Failure
to make all payments in full pursuant to paragraphs (a) through (d) above when
due, except as
may be
extended only in accord with paragraph (e) above, shall be considered an Event
of Default and all of Licensee’s rights under this Agreement shall terminate
without recourse against Licensor or right to refund of any payments or
deliveries made to Licensor; provided, however, that such termination shall
not
be effective unless and until Licensor has in each such instance served Licensee
with not less than ten (10) days’ written notice of default and a right to cure
such default within such notice period, and Licensee has failed to cure the
default within such cure period.
(f) In
addition to the payments of monies due Licensor as set forth in paragraphs
(a)
through (d) above, Licensee
shall issue to Licensor’s order, no later than the First Payment Date, such
quantity of shares of Licensee’s voting, restricted and unregistered common
stock (the “Licensee Shares”) as required to constitute, in the aggregate, a
total value of * based on the average closing price per share of Licensee’s
registered common stock for the first five (5) days of public trading
thereof.
Schedule
C
Page
Two
(g)
Licensor understands and agrees that when the Licensee Shares become eligible
for lifting of restriction and resale in the open market, Licensor shall sell
no
more than * of the total number of shares issued pursuant to the preceding
paragraph (g) in any one (1) calendar month. In furtherance of this paragraph,
Licensor agrees to execute and deliver to Licensee such leakout agreements
from
time to time as Licensee may require in furtherance of Licensee’s strategic
operating plans.
(h)
Failure to make delivery of all shares of stock in accordance with the foregoing
paragraph (g) of this Schedule C shall be considered an Event of Default and
all
of Licensee’s rights under this Agreement shall terminate without recourse
against Licensor or right to refund of any payments or deliveries made to
Licensor, provided, however, that such termination shall not be effective unless
and until Licensor has served Licensee with not less than ten (10) days’ written
notice of default and a right to cure such default within such notice period,
and Licensee has failed to cure the default within such cure
period.
(End
of Schedule C)