EXECUTION COPY
EXHIBIT 10.9
INTELLECTUAL PROPERTY AGREEMENT
BETWEEN
NOVELIS INC.
AND
ALCAN INTERNATIONAL LIMITED
TABLE OF CONTENTS
1.0 PREAMBLE .............................................................. 1
2.0 DEFINITIONS ........................................................... 1
3.0 LICENSE RIGHTS GRANTED ................................................ 4
4.0 ROYALTY AND ROYALTY PAYMENT ........................................... 7
5.0 TECHNICAL ASSISTANCE .................................................. 7
6.0 PROTECTION OF INFORMATION ............................................. 7
7.0 TERM AND TERMINATION .................................................. 9
8.0 SURVIVAL OF OBLIGATIONS ............................................... 10
9.0 REPRESENTATIONS ....................................................... 10
10.0 DISCLAIMER ........................................................... 10
11.0 TRADEMARK, TRADE NAME AND LOGO ....................................... 11
12.0 NON-WAIVER ........................................................... 11
13.0 NO PARTNERSHIP, JOINT VENTURE ........................................ 11
14.0 FURTHER ASSURANCES, CONSENTS, ETC .................................... 11
15.0 NOTICES .............................................................. 11
16.0 ASSIGNMENT ........................................................... 12
17.0 INDEMNIFICATION ...................................................... 12
18.0 ENTIRE AGREEMENT, AMENDMENTS, ETC .................................... 14
19.0 DISPUTE RESOLUTION ................................................... 15
20.0 MISCELLANEOUS ........................................................ 15
21.0 GOVERNING LAW ........................................................ 15
INTELLECTUAL PROPERTY AGREEMENT
This Intellectual Property Agreement is entered into with effect as of the
Effective Date.
BETWEEN: Novelis Inc. a Canadian corporation having its registered office at
▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇ (hereinafter
referred to as "NOVELIS") acting as principal and as agent for the
other members of Novelis Group, as herein provided.
AND: Alcan International Limited, a Canadian corporation having its head
office at ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇
(hereinafter referred to as "ALCANINT")
WHEREAS, Alcanint is a wholly-owned subsidiary of Alcan Inc.; and
WHEREAS, Alcan Inc. and Novelis have entered into the Separation Agreement
which provides, among other things, for the transfer of certain assets from
Alcan to Novelis and the assumption by Novelis of certain liabilities in
connection with the distribution of common shares of Novelis to the holders
of the common shares of Alcan and the execution and delivery of certain
other agreements including this Agreement; and
WHEREAS Alcanint has pursuant to the Principal Intellectual Property
Agreement (as defined below) entered into, transferred and assigned
ownership of certain Technology to Novelis and desires to retain certain
rights in respect thereof;
NOW THEREFORE, in consideration of the foregoing and the mutual agreements
set forth below, and other good and valuable consideration, the receipt and
adequacy of which is hereby acknowledged, the parties hereto agree as
follows:
1.0 PREAMBLE
The preamble hereto shall be considered an integral part of this Agreement.
2.0 DEFINITIONS
As used herein, the following terms shall have the following meanings:
2.1 "AEROSPACE INDUSTRY" shall mean the production of aircraft,
spacecraft, satellites and similar craft for manned or unmanned
flight;
2.2 "AFFILIATE" shall mean, with respect to any corporation, association
or other business entity, any other entity directly or indirectly
controlling, controlled by or under common control with such specified
corporation, association or entity. For purposes of this definition,
"control" (including, with correlative meanings, the terms
"controlling," "controlled by" and "under common control with"), means
the possession, directly or indirectly, of the power to direct or
cause the direction of management or policies, whether through the
ownership of voting securities, by agreement or otherwise; provided,
however, that beneficial ownership of 10% or
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more of the securities or other interest entitled to vote generally in
the election of directors shall be deemed to be control;
2.3 "AGREEMENT" shall mean this Intellectual Property Agreement and all
other documents that are made a part hereof;
2.4 "ALCAN" means Alcan Inc., a Canadian corporation;
2.5 "ALCAN GROUP COMPANY" shall mean Alcan or any entity of which a
majority of the total voting power of capital stock or other interests
entitled (without regard to the occurrence of any contingency) to vote
in the election of directors, managers or trustees thereof or at the
time owned or controlled, directly or indirectly, by Alcan.
2.6 "AUTOMOTIVE SHEET" shall mean aluminum Sheet products destined or
intended for use in or principally related to the production of body
panels (including closures, skin, hoods, decks, lids and fenders) and
Sheet-based body-in-white structures for road vehicles;
2.7 "AUTOMOTIVE SHEET PATENTS" shall mean the patents and patent
applications in respect of Automotive Sheet as listed in Appendix ASP;
2.8 "COCAST TECHNOLOGY" shall mean the Technology originally developed by
▇▇▇▇▇▇▇▇ Inc. and further developed by Alcan Group Companies,
primarily at the Solatens Facility, related to the casting of
composite ingots with distinct regions having different alloy
compositions as generally described in the patents and patent
applications listed in Appendix CCT;
2.9 "EFFECTIVE DATE" shall mean the Effective Date as defined in the
Separation Agreement;
2.10 "FLEXCAST TECHNOLOGY" shall mean the Technology specific to continuous
casting of a thin strip between two chilled metallic belts and as
generallydescribed in the patents and patent applications listed in
Appendix FCT;
2.11 "FLEXSTREME TECHNOLOGY" shall mean the Technology and equipment
designs originally developed by ▇▇▇▇▇▇▇▇ Inc. and further developed by
Alcan Group Companies, primarily at the Solatens Facility, related to
the horizontal direct chill casting of small diameter ingots suitable
for use as forging stock as generally described in the patents and
patent applications listed in Appendix FST;
2.12 "INSITU HOMOGENIZATION TECHNOLOGY" shall mean ***;
2.13 "LICENSED NOVELIS PATENTS" shall mean the patents and patent
applications listed on Appendix LNP;
2.14 "LICENSED NOVELIS TECHNOLOGY" shall mean the technology licensed by
Novelis to Licensee pursuant to Section 3.1.hereof;
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*** Certain information on this page has been omitted and filed separately with
the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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2.15 "LICENSEE" shall mean Alcanint or any of its Affiliates as determined
by the context or as otherwise designated for any particular purpose
by Alcanint, provided that an Alcan Group Company other than Alcan or
Alcanint shall be a Licensee under this Agreement only if such company
agrees to be bound by the terms of this Agreement and provided further
that Alcanint shall remain liable for license related obligations on a
joint and several basis for any of its Affiliates as determined by the
context or as otherwise designated for any particular purpose by
Alcanint.
2.16 "NETCAST TECHNOLOGY" shall mean the Technology originally developed by
▇▇▇▇▇▇▇▇ Inc. and further developed by Alcan Group Companies,
primarily at the Solatens Facility, related to the direct chill
casting of complex shapes as more particularly described in the
patents and patent applications listed in Appendix NCT;
2.17 "NOVELIS GROUP" shall mean Novelis and the Novelis subsidiaires.
2.18 "NOVELIS SUBSIDIARY" shall mean, as of and from the Effective Date,
(i) Petrocoque S.A. - Industria E Comercio, Aluminium Norf GmbH and
▇▇▇▇▇ Aluminum Inc, in each case for so long as Novelis retains at
least its current ownership stake in such entity and (ii) any other
entity of which a majority of the total voting power of capital stock
or other interests entitled (without the occurrence of any
contingency) to vote in the election of directors, managers or
trustees thereof is at the time owned or controlled, directly or
indirectly by Novelis;
2.19 "NOVELIS TECHNOLOGY" shall mean any and all patents, patent
applications, copyrights, trade secrets, information, data,
inventions, designs and similar rights either conceived or first
reduced to practice on or before the Effective Date that are owned or
licensable by Novelis or under the control of Novelis pursuant to the
Principal Intellectual Property Agreement and forming the subject
matter hereof;
2.20 "PAE TWIN ROLL CASTING TECHNOLOGY" shall mean Technology specific to
the continuous casting of a relatively thin metal strip between two
chilled rolls which is marketed by Pechiney Aluminium Engineering as
more particularly described in the patents and patent applications
listed in Appendix TRCT;
2.21 "PAE METAL TREATMENT TECHNOLOGY" shall mean Technology specific to the
melting, holding and casting of aluminum, treatments of molten
aluminum to remove hydrogen, solid and liquid inclusions and alkali
metal and related equipment including but not limited to ▇▇▇▇,
JetCleaner, Alpur, PDBF, CCF and Autopak which is marketed by Pechiney
Aluminium Engineering as more particularly described in the patents
and patent applications listed in Appendix MTT.
2.22 "PRINCIPAL INTELLECTUAL PROPERTY AGREEMENT" shall mean that other
Intellectual Property Agreement, of even date herewith, between
Alcanint as the party of the first part and Novelis as the party of
the second part;
2.23 "SEPARATION AGREEMENT" shall mean the Separation Agreement of even
date herewith between Alcan and Novelis, as described in the Preamble
of this Agreement;
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2.24 "SHEET" and "FOIL" shall have the same meaning as is commonly ascribed
to those expressions in the aluminum industry in reference to rolled
aluminum provided that it is of a thickness of 6.5 mm or less;
2.25 "SIERRE TECHNOLOGY shall mean the patents and patent applications
listed on Appendix SP which are a subset of the Automotive Sheet
Patents as well as the Technology used from time to time in connection
with the operation of the business and manufacturing activities at the
Sierre North Building;
2.26 "SIERRE NORTH BUILDING LEASE" shall mean the lease for the premises
commonly referred to as the "SIERRE NORTH BUILDING" between an Alcan
Group Company as lessor and Novelis or one of its Affiliates as lessee
which lease is further referred to in, annexed to or defined in the
Separation Agreement.
2.27 "SUBSIDIARY" shall mean, with respect to any corporation, association
or other business entity, any other entity of which a majority of the
total voting power of capital stock or other interests entitled
(without regard to the occurrence of any contingency) to vote in the
election of directors, managers or trustees thereof is at the time
owned or controlled, directly or indirectly, by such corporation,
association or entity or one or more of its other Subsidiaries; and
2.28 "TECHNICAL ASSISTANCE" shall mean the services rendered by Novelis, or
a third party selected by Novelis, to the Licensee, to install, test
and operate and maintain the Novelis Technology.
3.0 LICENSE RIGHTS GRANTED
3.1 Novelis hereby grants to Licensee and Licensee hereby accepts, subject
to the terms and conditions of this Agreement, the following rights
and licenses:
3.1.1 a royalty-bearing right and license to use the NetCast
Technology to build, operate, maintain, repair, reconstruct,
rebuild and expand present or future facilities of Licensee and
to use and sell the products produced using the NetCast
Technology on a world-wide basis,
3.1.2 a royalty-bearing right and license to use the CoCast Technology
to build, operate, maintain, repair, reconstruct, rebuild and
expand present or future facilities of Licensee and to use and
sell the products using the CoCast Technology produced
world-wide; provided, however, that Licensee shall have no right
under this license to make or sell products using the CoCast
Technology other than in respect of products destined for use in
the Aerospace Industry;
3.1.3 a conditional royalty-bearing right and license to use the
FlexStreme Technology to build, operate, maintain, repair,
reconstruct, rebuild and expand present or future facilities of
Licensee and to use and sell the products produced using the
FlexStreme Technology on a world-wide basis,
3.1.4 a royalty-free right and license to use the InSitu
Homogenization Technology to build, operate, maintain, repair,
reconstruct, rebuild and
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expand any present or future facilities of Licensee and to use
and sell the products produced using InSitu Homogenization
Technology on a world-wide basis,
3.1.5 a royalty-free right and license to use, commercialize and
sublicense the PAE Metal Treatment Technology on a world-wide
basis, including without limitation to build, operate, maintain,
repair, rebuild and expand any present or future facilities of
Licensee, to manufacture and sell products using the PAE Metal
Treatment Technology and to assign, sublicense or otherwise
convey to any person for any of the foregoing purposes,
3.1.6 a royalty-free right and license to use and commercialize the
Licensed Novelis Patents to build, operate, maintain, repair,
reconstruct, rebuild and expand any present or future facilities
of Licensee and to use and sell the products produced using the
Licensed Novelis Patents on a world-wide basis,
3.1.7 A royalty-free right and license to use and commercialize the
Automotive Sheet Patents and related Technology, as referred to
in paragraph 3.1.2 of the Principal Intellectual Property
Agreement, to build, operate, maintain, repair, reconstruct,
rebuild and expand any present or future facilities of Licensee
and to use and sell the products produced using the Automotive
Sheet Patents and said related Technology on a world-wide basis
provided that Licensee's rights and Licenses in respect thereto
shall not extend to permitting the use and commercialization of
same for Automotive Sheet applications other than for products
destined or intended for use in public or mass transportation,
3.1.8 A conditional royalty-free right and license to use and
commercialize the Sierre Technology to build, operate, maintain,
repair, reconstruct, rebuild and expand any present or future
facilities of Licensee and to use and sell the products produced
using the Sierre Technology on a world-wide basis, and
3.1.9 Rights and/or licenses in the FlexCast Technology and the PAE
Twin Roll Casting Technology under the terms and conditions in
Appendix CNC hereto.
3.2 To the extent that (i) Novelis continues the commercial sale of
equipment for implementing the FlexStreme Technology and (ii) Novelis
offers such equipment to Licensee for sale on terms and conditions
(including royalties) at least as favourable to Licensee as the best
of those offered to any third party during the preceding 12 months
(such conditions (i) and (ii) being referred to herein as a
"COMMERCIAL LICENSE"), then Licensee shall operate under the terms of
such Commercial License rather than the licenses granted in paragraph
3.1.3 herein until the occurrence of condition (i) or (ii) above. At
any time thereafter, Licensee shall be entitled to operate under the
license granted under paragraph 3.1.3, as the case may be, with no
further action required by either Novelis or Licensee, provided that
Licensee shall provide reasonably prompt notice to Novelis that
Licensee is operating under the license set forth in paragraph 3.1.3.
The licenses
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provided for in paragraphs 3.1.3 shall not apply to any equipment
purchased by Licensee prior to the date of such notice for
implementing FlexStreme Technology to the extent that equipment has
been acquired with a valid Commercial License. Such previously
purchased equipment shall continue to be operated under the terms and
conditions specified at the time such equipment was acquired by
Licensee.
3.3 The license granted in paragraph 3.1.8 shall be subject to the
condition that it shall only take effect upon the termination or
expiry of the Sierre North Building Lease provided such termination is
not as the result of a default on the part of Alcan.
3.4 Except as otherwise provided for herein, all licenses granted to
Licensee under this Agreement shall be personal, indivisible,
non-exclusive, and non-transferable except as otherwise provided
herein and shall be subject to all terms and conditions herein set
forth. The licenses granted hereunder shall exist as long as this
Agreement is effective in accordance with Article 7.0, provided
however that, the non-exclusive licenses granted hereunder are subject
to termination in accordance with Article 7.0.
3.5 Except as otherwise specifically provided in this Agreement, Licensee
is not granted and does not have the right to assign, sub-license or
otherwise dispose of the Licensed Novelis Technology or any part
thereof without the express written consent of Novelis.
3.6 Licensee may grant sublicenses (i) to third parties (such as customers
and vendors) to the extent necessary or appropriate to give commercial
effect to the rights sought to be licensed hereunder and (ii) to Alcan
Group Companies provided that any such sublicense may be made
effective retroactively but not prior to the sublicensee's becoming an
Alcan Group Company and any such sublicense shall terminate
immediately upon such sublicensee no longer being an Alcan Group
Company, except in a transaction that meets the conditions of Section
16.2.
3.7 Except as otherwise specifically provided in this Agreement and
subject to its obligations under the Separation Agreement and the
Principal Intellectual Property Agreement, Novelis shall retain all
right and title in and to the Licensed Novelis Technology (subject to
any limitations inherent in the rights received pursuant to the
Principal Intellectual Property Agreement) including without
limitation:
3.7.1 All unencumbered rights of ownership in and to the Licensed
Novelis Technology;
3.7.2 The right to use the Licensed Novelis Technology in connection
with the marketing, offer, use, sale or other transfer of any
product, or service; and
3.7.3 The right to license third parties to use the Licensed Novelis
Technology;
3.7.4 The right (but not the obligation) to file for, prosecute and
maintain any applications, registrations or recordation thereof
and to bring any action to enforce or otherwise seek to ▇▇▇▇▇ any
infringement thereof.
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3.8 The Licensee shall have the right (to be exercised reasonably) to
request, from time to time, additional information concerning the
Licensed Novelis Technology and technology licensed to Novelis under
the Principal Intellectual Property Agreement. Novelis shall, subject
to the availability of appropriate personnel, supply the information
so requested with the related cost and expense of doing so being, if
any, being for the Licensee's account.
3.9 The reference to licenses in this Article 3.0 is intended to cover
permission for use as may be required or contemplated by the Principal
Intellectual Property Agreement in connection with rights and
interests reserved to Alcanint or Alcan Group Companies thereunder.
Nothing in this Agreement shall be interpreted so as to contradict any
reservation of rights or interests provided for under the Principal
Intellectual Property Agreement.
4.0 ROYALTY AND ROYALTY PAYMENT
4.1 Royalty payments shall accrue and be payable, and reports and royalty
payments shall be made as set forth on Schedule ▇▇▇.
5.0 TECHNICAL ASSISTANCE
5.1 Alcanint shall have the right (to be exercised reasonably) from time
to time to request additional information concerning the Licensed
Novelis Technology. Novelis shall, subject to the availability of
appropriate personnel, supply the information so requested with the
related cost and expense of doing so, if any, being for Alcanint's
account. Novelis will provide Alcanint and other Alcan Group Companies
such technical consulting and assistance from qualified personnel as
may from time to time be reasonably requested by Alcanint or such
other Alcan Group Companies with respect to CoCast Technology and
Insitu Homogenization Technology and shall be entitled to reasonable
per diem fees to be agreed between the parties based on actual cost of
providing such services; provided that Novelis shall not be obligated
to provide such assistance in excess of (i) 20 person-days in the
aggregate or (ii) 10 person-days in any calendar month.
6.0 PROTECTION OF INFORMATION
6.1 Licensee hereby agrees that the Licensed Novelis Technology made
available to or produced or developed for it at any time (the
"INFORMATION") is confidential information of Novelis and shall not be
disclosed to any third party except as may be expressly provided for
herein and that Licensee shall have only such rights in the
Information as expressly provided herein.
6.2 The obligations of confidentiality and non-disclosure shall not apply
to Information to the extent that said Information:
6.2.1 is in the public domain through no fault of Licensee, or
lawfully is or becomes public knowledge through no breach of this
Agreement;
6.2.2 was received from any third party on a non-confidential basis
and did not originate from Novelis or any of its Subsidiaries; or
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6.2.3 was disclosed by Licensee pursuant to legal process,
governmental request or regulatory requirement; provided,
however, that the receiving party shall use all reasonable
efforts to provide notice to the disclosing party in order to
afford the disclosing party a reasonable opportunity to seek a
protective order or an injunction.
6.3 Specific information shall not be deemed to be within the exceptions
of Section 6.2 above merely because such specific information may be
construed as being within broader, non-confidential information which
is either in the public domain or the possession of the receiving
party on the Effective Date nor shall a combination of features which
form confidential information be deemed to be non-confidential
information merely because the individual features, without being
combined, are non-confidential.
6.4 Licensee shall not use the Information received hereunder for any
purpose other than that specified in this Agreement without first
obtaining written consent from Novelis.
6.5 Licensee may disclose the Information received hereunder to its
officers, employees, contractors, suppliers, customers,
representatives and others to the extent necessary for the normal
operation of its business. Licensee shall take reasonable precautions,
consistent with past practices, to preserve the value of the
Information. Licensee shall advise the appropriate officers,
employees, contractors, suppliers, customers, representatives and
others to whom such information is supplied of the confidentiality
obligation hereunder, and shall ensure that, where appropriate, they
have agreed to comply with the provisions of this Article 6.0.
6.6 The obligations of confidentiality and non-disclosure with respect to
specific Information received under this Agreement or otherwise shall
expire ten years after the termination of this Agreement.
6.7 The parties recognise that a breach of this Article 6.0 may give rise
to irreparable injury to Novelis that cannot be adequately compensated
by monetary damages. Accordingly, in the event of a breach or
threatened breach, Novelis may be entitled to preliminary and
permanent injunctive relief to prevent or enjoin a violation of this
Article 6.0 and the unauthorised use or disclosure of any confidential
Information in addition to such other remedies as may be available for
such breach or threatened breach, including the recovery of damages.
6.8 No provision of this Agreement shall be construed to require Novelis
to furnish any information i) acquired from others on terms
prohibiting or restricting disclosure by Novelis, or ii) the
furnishing of which is in contravention of any law, regulation, or
executive order of any government. Each party shall use its
commercially reasonable efforts to avoid conditions that prevent the
exchange of information under this Agreement.
6.9 Nothing in this Agreement shall preclude Licensee from using any
information that is in the public domain at the time of its use of
such information unless such information is in the public domain as a
result of Licensee's breach of the confidentiality obligations under
this Article 6.0.
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7.0 TERM AND TERMINATION
7.1 This Agreement shall be effective until and shall terminate on the
***anniversary of the Effective Date. Upon termination pursuant to
this Section 7.1, each of the licenses granted hereunder shall be
deemed a fully-paid, perpetual, unrestricted, unconditional license
with the right to grant unrestricted sublicenses subject only to any
obligation to pay any royalties due to any third party from which the
Novelis Technology licensed hereunder was originally acquired. For
clarity, the parties intend that upon termination of this agreement
pursuant to this Section 7.1, Alcanint shall have all of the rights of
a nonexclusive owner of the Novelis Licensed Technology excluding any
patents included therein and have the right to use and license such
Technology without notice or accounting to Novelis.
7.2 Should there be a material default by Licensee in the performance of
any obligations under this Agreement or the Separation Agreement and
such default is not cured within 30 days following written
notification of such default from Novelis, this Agreement shall
terminate on the date specified on such notice which shall not be less
than 30 days following the date of such notice, unless Licensee cures
such default before such specified termination date.
7.3 This Agreement shall terminate immediately upon the occurrence of any
of the following:
(a) the bankruptcy or insolvency of Licensee
(b) the appointment of a receiver for Licensee's assets,
(c) the making by Licensee of a general assignment for the
benefit of creditors,
(d) the institution by Licensee of proceedings for a
reorganization of Licensee under the Bankruptcy Act or
similar legislation for the relief of debtors or the
institution of involuntary proceedings by a party other than
Licensee which are not terminated in 30 days.
7.4 Early termination under Section 7.2 or Section 7.3 shall not prejudice
Novelis' rights to recover any amounts due at the time of such
termination nor shall it prejudice any other remedy or cause of action
or claim of Novelis accrued or to accrue against Licensee on account
of any such default by Licensee.
7.5 This Agreement may be terminated at the option of Licensee, upon
receipt of written notice to Novelis, at any time provided all
payments owed hereunder have been remitted to Novelis.
7.6 Upon early termination of this Agreement pursuant to this Article 7.0,
all licenses of Licensed Novelis Technology shall terminate and
Licensee shall cease all use of the Licensed Novelis Technology.
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*** Certain information on this page has been omitted and filed separately with
the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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7.7 Notwithstanding the foregoing, Licensee may, after the date this
Agreement is terminated pursuant to this Article 7.0, sell any product
made before such termination, as if such product were sold prior to
termination.
8.0 SURVIVAL OF OBLIGATIONS
Except as otherwise provided in this agreement and unless otherwise agreed
in writing by the parties, the rights and obligations of the parties under
Articles 6.0, 9.0, 10.0, 11.0, 14.0, 15.0, 16.0, 17.0, 18.0, 20.0 and 21.0
shall survive the termination of this Agreement.
9.0 REPRESENTATIONS; COVENANT
Each party hereto represents that it has full power and authority to enter
into this Agreement and to perform all obligations hereunder. Novelis
further represents that it has full power and authority to act as agent for
each member of Novelis Group for all purposes under this Agreement. Novelis
covenants that it will cause each member of Novelis Group to act strictly
in accordance with the provisions of this Agreement.
10.0 DISCLAIMER
10.1 Licensee acknowledges that the foregoing licenses are made on an "as
is" quit-claim basis and Novelis is neither providing nor is
responsible for any representation or warranty of any nature or kind
(whether express, implied, statutory, contractual or other in nature
and whether relating to title, enforceability, merchantability,
fitness for purpose, non-infringement, absence of rights of third
parties or other) in respect of Licensed Novelis Technology or any use
to be made thereof or any product to be produced therewith. Neither
Novelis nor any Novelis Subsidiary shall be liable to Licensee, or any
other person, for any damage, injury or loss, including loss of use
arising from any activities or obligations under this Agreement; or
for any direct or indirect, incidental, consequential special or
punitive damages.
10.2 Nothing in this Agreement shall be construed as a warranty or
representation that any product made, used, sold or otherwise disposed
of under any license granted pursuant to this Agreement is or will be
free from infringement of patents of third parties.
10.3 Neither Novelis nor any other of its Subsidiaries or current
Affiliates shall have any infringement action or claim against Alcan
or any of its current Affiliates in respect of Novelis Technology to
the extent of any use of same prior to the Effective Date. None of
Novelis, any Novelis Subsidiary nor any of their Affiliates shall have
any infringement action against any Alcan Group Company in respect of
any past use of Technology.
10.4 Without limiting Section 10.1 hereof, in no event shall either party
or any of their respective Affiliates be liable to the other party or
its Subsidiaries or other Affiliates for any special, consequential,
indirect, incidental or punitive damages or lost profits, however
caused and on any theory of liability (including negligence) arising
in any way out of this Agreement, whether or not such party has been
advised of the possibility of such damages.
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11.0 TRADEMARK, TRADE NAME AND LOGO
No right is conveyed by either party to the other under this Agreement for
the use, either directly, indirectly, by implication or otherwise, of any
trademark, trade name or logo owned by Licensee or Novelis or any Alcan
Group Company or Novelis Group Company. The parties will enter into a
separate trademark license agreement, if appropriate.
12.0 NON-WAIVER
The failure of any party to insist in any one or more instances upon the
strict performance of any one or more of the obligations of this Agreement
or to exercise any election herein contained, shall not be construed as a
waiver for the future of the performance of such one or more obligations of
this Agreement or of the right to exercise such election. No waiver of any
breach or default of this Agreement shall be held to be a waiver for any
subsequent breach.
13.0 NO PARTNERSHIP, JOINT VENTURE
The parties to this Agreement agree and acknowledge that the Agreement does
not create a partnership, joint venture or any other relationship between
Novelis and Licensee save the relationship specifically set out herein
before and solely for the limited purposes herein.
14.0 FURTHER ASSURANCES, CONSENTS, ETC.
The parties to this Agreement shall co-operate together using their
respective commercially reasonable best efforts to take such further steps,
including the execution and delivery of documentation and applications
which are required for legal or regulatory purposes or to obtain the
consents or approvals of third parties or necessary or advisable
registrations. All fees and expenses related to registrations which are
advisable or necessary shall be at the expense of Novelis and all
registrations shall be the responsibility of Novelis. Nothing contained in
this Agreement shall be interpreted to oblige any party to do anything more
than apply its commercially reasonable best efforts (without material
expense to it) to obtain any consent, approval or registration which may be
required to give full effect to the terms and conditions hereof. Similarly,
no party shall be obliged to convey any rights or do any other thing which
would cause it to be in breach of any legal or contractual obligation.
15.0 NOTICES
Any notice, consent or other instrument required or permitted to be given
by one party to the other party hereunder shall be in writing and shall be
delivered or sent by first class mail or telefax and shall be deemed
received five days following prepaid mailing or the next business day when
telefaxed to the other party with receipt confirmation at the addresses set
forth below;
To Novelis Novelis Inc.
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▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
▇. ▇. ▇▇▇ ▇▇
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▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇ ▇▇▇
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Fax: (▇▇▇) ▇▇▇-▇▇▇▇
Attention: President
To Licensee Alcan International Limited
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▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇ ▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
Attention: Company Secretary
In all cases with copy to:
Alcan Inc.
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▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇ ▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
Attention: Company Secretary
Either party may change the notice address by giving written notice to the
other party. If sent by telefax, a confirming copy of such shall be sent by
regular mail to the addressee.
16.0 ASSIGNMENT
16.1 This Agreement shall not be assignable, in whole or in part, directly
or indirectly, by any party hereto without the prior written consent
of the other party, and any attempt to assign any rights or
obligations under this Agreement without such consent shall be null
and void and deemed to be in breach hereof.
16.2 Notwithstanding the preceding Section 16.1, this Agreement may be
assigned (i) by Alcanint to any Alcan Group Company and (ii) by either
party in whole in connection with a merger or consolidation or the
sale of all or substantially all of the assets of such party, or (iii)
by Licensee in part in connection with a sale or other divestiture of
a subsidiary, plant or business unit whose field of activity is
principally related to the portion of Licensee's business that
licenses and makes actual use of the Licensed Novelis Technology under
this Agreement; provided, however, that such assignee must expressly
agree in writing to be bound by the terms and conditions of this
Agreement.
17.0 INDEMNIFICATION
17.1 Licensee shall indemnify, defend and hold harmless Novelis and its
Affiliates and their respective directors and officers (the "NOVELIS
INDEMNITEES") from and against any and all losses incurred or suffered
by any of the Novelis Indemnitees arising out of the use of any
Licensed Novelis Technology by Licensee or its customers.
17.2 If any Novelis Indemnitee determines that it is or may be entitled to
indemnification by any party (the "INDEMNIFYING PARTY"), under this
Article 17.0, (other than in connection with an action subject to
Section 17.3), the Indemnified Party shall
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deliver to the Indemnifying Party a written notice describing to the
extent reasonably practicable, the basis for its claim for
indemnification and the amount for which the Indemnified Party
reasonably believes it is entitled to be indemnified. If the
Indemnifying Party has not responded within 30 days after receipt of
such notice, the Indemnified Party shall deliver a second notice to
the Indemnifying Party within ten days of the expiration of the
original 30 day period. Within 30 days after receipt of any second
notice, the Indemnifying Party shall pay the Indemnified Party such
amount in cash or other immediately available funds unless the
Indemnifying Party objects to the claim for indemnification or the
amount thereof.
17.3 Promptly following the earlier of (i) receipt of notice of the
commencement of an action by a third party against or otherwise
involving any indemnified party, or (ii) receipt of information from a
third party alleging the existence of a claim against an Indemnified
Party, in either case, with respect to which indemnification may be
sought pursuant to this Agreement, (a "THIRD PARTY CLAIM"), the
Indemnified Party shall give the Indemnifying Party written notice
thereof. The failure of the Indemnified Party to give notice as
provided in this Article 17.0 shall not relieve the Indemnifying Party
of its obligations under this Agreement, except to the extent that the
Indemnifying Party is prejudiced by such failure to give notice.
Within 30 days after receipt of such notice, the Indemnifying Party
may (i) by giving written notice thereof to the Indemnified Party,
acknowledge liability for such indemnification claim and at is option
elect to assume the defence of such Third Party Claim at its sole cost
and expense or (ii) object to the claim for indemnification set forth
in the notice delivered by the Indemnified Party pursuant to the first
sentence of this Section 17.3; provided that if the Indemnifying Party
does not within such 30 day period give the Indemnified Party written
notice objecting to such indemnification claim and setting forth the
grounds therefor, the Indemnified Party shall give the Indemnifying
Party an additional notice of its claim for indemnification and if the
Indemnifying Party does not give the Indemnified Party written notice
objecting to such claim within ten days after receipt of such notice
the Indemnifying Party shall be deemed to have acknowledged its
liability for such indemnification claim. If the Indemnifying Party
has elected to assume the defence of a Third Party Claim, (x) the
defence shall be conducted by counsel retained by the Indemnifying
Party and reasonably satisfactory to the Indemnified Party, provided
that the Indemnified Party shall have the right to participate in such
proceedings and to be represented by counsel of its own choosing at
the Indemnified Party's sole cost and expense; and (y) the
Indemnifying Party may settle or compromise the third Party claim
without the prior written consent of the Indemnified Party so long as
such settlement includes and unconditional release of the Indemnified
Party from all claims that are the subject of such Third Party Claim,
provided the Indemnifying Party may not agree to any such settlement
pursuant to which any remedy or relief, other than money damages for
which the Indemnifying Party shall be responsible hereunder, shall be
applied to or against the Indemnified Party, without the prior written
consent of the Indemnified Party, which consent shall not be
unreasonably withheld. If the Indemnifying Party does not assume the
defence of a Third Party Claim for which it has acknowledged liability
for indemnification hereunder, the Indemnified Party may require the
Indemnifying Party to reimburse it on a current basis for its
reasonable expenses of defending against such Third Party Claim and
the Indemnifying party shall be bound by the result obtained with
respect thereto by the Indemnified Party; provided that the
Indemnifying Party shall not be liable for any settlement effected
without its consent, which consent shall not be
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unreasonably withheld. The Indemnifying Party shall pay to the
Indemnified Party in cash the amount, if any, for which the
Indemnified Party is entitled to be indemnified hereunder within 15
days after such Third Party Claim has been finally determined, or in
the case of an indemnity claim as to which the Indemnifying Party has
not acknowledged liability, within 15days after such Indemnifying
Party's objection to liability hereunder has been finally determined.
17.4 If for any reason the indemnification provided for in Section 17.1 is
unavailable to an Indemnified Party, or insufficient to hold it
harmless, then the Indemnifying Party shall contribute to the amount
paid or payable to such Indemnified Party as a result of such losses
in such proportion as is appropriate to reflect all relevant equitable
considerations.
17.5 The remedies provided for in this Article 17.0 are not exclusive and
shall not limit any rights or remedies which may otherwise be
available to any Indemnified Party at law or in equity.
18.0 ENTIRE AGREEMENT, AMENDMENTS, ETC.
18.1 This Agreement constitutes the entire agreement and understanding
between the parties with respect to the subject matter hereof and
supersedes all prior agreements, understandings, negotiations and
discussions whether oral or written of the parties, and there are no
representations, warranties or conditions expressed or implied or
otherwise between the parties in connection with the subject matter
hereof, except as specifically set forth herein. No amendment to the
terms and conditions hereof or waiver in respect thereto shall be
binding unless it is in writing and signed by duly authorised
representatives of both parties.
18.2 Notwithstanding the foregoing, a breach by any party of its
obligations under the Principal Intellectual Property Agreement shall
be deemed to be a default under this Agreement
18.3 Nothing in this Agreement shall be interpreted so as to permit either
party to do anything which would be prohibited by the Principal
Intellectual Property Agreement. In the event of any conflict between
this Agreement and the Principal Intellectual Property Agreement, the
latter two shall be paramount.
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19.0 DISPUTE RESOLUTION
20.0 THE MASTER AGREEMENT WITH RESPECT TO DISPUTE RESOLUTION, EFFECTIVE ON THE
EFFECTIVE DATE, AMONG ALCANINT, NOVELIS AND OTHER PARTIES THERETO SHALL
GOVERN ALL DISPUTES, CONTROVERSIES OR CLAIMS (WHETHER ARISING IN CONTRACT,
DELICT, TORT OR OTHERWISE) BETWEEN THE PARTIES THAT MAY ARISE OUT OF, OR
RELATE TO, OR ARISE UNDER OR IN CONNECTION WITH, THIS AGREEMENT OR THE
TRANSACTIONS CONTEMPLATED HEREBY (INCLUDING ALL ACTIONS TAKEN IN
FURTHERANCE OF THIS AGREEMENT) OR THE COMMERCIAL OR ECONOMIC RELATIONSHIP
OF THE PARTIES RELATING HERETO OR THERETO.MISCELLANEOUS
20.1 The division of this Agreement into sections, subsections and other
subdivisions and the insertion of headings are for convenience of
reference only and shall not affect or be utilized in the construction
or interpretation of this Agreement.
20.2 The parties hereto have requested that this Agreement and all other
documents, notices or written communications relating thereto, be in
the English language.
20.3 The parties may amend this Agreement only by a written agreement
signed by each party to be bound by the amendment and that identifies
itself as an amendment to this Agreement.
20.4 Except as expressly stated to the contrary herein, the provisions of
this Agreement are solely for the benefit of the parties and are not
intended to confer upon any person except the parties any rights or
remedies hereunder, and there are no third party beneficiaries of this
Agreement, and this Agreement shall not provide any third person with
any remedy, claim, liability, reimbursement, claim of action or other
right in addition to those existing without reference to this
Agreement.
21.0 GOVERNING LAW
Recognizing the numerous jurisdictions associated with this Agreement and
the activities contemplated by it, the parties agree that this Agreement
shall be governed, construed and interpreted according to the laws of the
Province of Quebec, Canada without the application of the provisions
relating to the conflict of laws. Any provision in this Agreement
prohibited by law or by court decree shall be ineffective to the extent of
such prohibition without in any way invalidating or affecting the remaining
provisions of this Agreement, and this Agreement shall be construed as if
such prohibited provision had never been contained herein. Novelis and
Licensee hereby agree, however, to negotiate an equitable amendment of this
Agreement if a material provision is adversely affected.
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IN WITNESS WHEREOF duly authorised representatives of the parties hereto have
signed duplicate copies of this Agreement.
NOVELIS INC. ALCAN INTERNATIONAL LIMITED
Per: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ Per: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
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