Exhibit 10.8
Certain portions of
this Exhibit have
been omitted and
filed separately
pursuant to a request
for confidential
treatment. The Symbol
"****" has been
inserted in place of
the portions so
omitted.
Between MAUSER-WERKE GMBH
SCHILDGESSTR. 71-163
50321 BRUHL
FEDERAL REPUBLIC OF GERMANY
hereinafter referred to as "MAUSER"
and RUSSELL-STANLEY CORPORATION
230 HALF MILE ROAD
RED BANK, NEW JERSEY 07701
UNITED STATES OF AMERICA
hereinafter referred to as "RUSSELL-STANLEY"
LICENSING AGREEMENT
PREAMBLE
The parties have concluded a Know-How and Patent Licensing Agreement
(hereinafter referred to as the "US-AGREEMENT") for Know-How and United States
patents concerning blow molded one piece closed head plastic containers
according to 1H1 of the "Recommendation on the Transport of Dangerous Goods of
the United Nations" (Orange book, 8th edition, page 202, Art. 9.6.7) with
L-Ring, i.e. closed head bung type drums with top handling ring, the bung
opening with an internal thread not exceeding 100 mm in diameter, embraced
within the PATENT RIGHTS and/or produced in accordance with the KNOW HOW made
available by MAUSER under the US-AGREEMENT for the LICENSED ARTICLES for the
manufacture and sale of such drums in the United States of America.
RUSSELL-STANLEY wishes to be authorized also in Canada to sell such drums as
manufactured in the United States of America under the US-AGREEMENT.
Therefore, the contracting parties agree as follows:
ARTICLE 1
PATENT RIGHTS
MAUSER holds the following Patens and Patent Application in
Canada:
PATENT NO. DATE TITLE
1,276,572 20.12.1990 Short L-Ring
Des 68 100 28.02.1991 L-Ring Plus (Design Patent)
1,312,560 12.01.1993 Long L-Ring
2.075.806 21.12.1990 ODD L-Ping Plus (Patent Application)
The above Patents and Patent Application are the contractual PATENT RIGHTS.
PATENT RIGHTS also include all future Canadian Patents relating to improvements
on the design of L-Ring shaped top handling rings, limited to the LICENSED
ARTICLES.
ARTICLE 2
CONTRACTUAL TERRITORY
Contractual TERRITORY is Canada.
ARTICLE 3
LICENSE GRANT
1. MAUSER hereby grants to RUSSELL-STANLEY a non-exclusive license under
the PATENT RIGHTS and any future patents parallel to any future United
States patents covered by the US-AGREEMENT to sell in the TERRITORY the
LICENSED ARTICLES manufactured in RUSSELL-STANLEY's presently existing
locations under the US-AGREEMENT in the United States of America.
2. RUSSELL-STANLEY is not authorized to grant sublicenses.
ARTICLE 4
ROYALTIES
1. RUSSELL-STANLEY shall pay **** on the sale of the first **** units
per year, in excess of **** units per year a royalty of **** of the
net invoice value per LICENSED ARTICLE has to be paid.
Each year shall be measured from the anniversary date of the effective
date of this Agreement. However, any LICENSED ARTICLE delivered to
HUNTER DRUMS or to a customer of HUNTER DRUMS at the request of HUNTER
DRUMS shall be **** and shall not be counted for purposes of
determining the **** LICENSED ARTICLES per year.
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2. The net invoice value shall be deemed to be the sales price billed by
RUSSELL-STANLEY after deduction of taxes on sales, and/or turnover
and/or the added value, costs for packaging, transport and insurance,
credits and returns and customery trade discounts. Where material is
supplied free of charge, its current value shall be added to the sales
price.
If taxes are payable in the United States of America on the royalties,
RUSSELL-STANLEY shall be responsible for the payment of such taxes and
shall remit to MAUSER the net amount due to MAUSER after deduction of
such taxes.
RUSSELL-STANLEY shall observe the Double Taxation AGREEMENT between the
United States of America and the Federal Republic of Germany when
deducting such taxes and shall furnish MAUSER with all receipts issued
for such taxes deducted by RUSSELL-STANLEY and paid to the revenue
authorities in the United States of America.
3. For the purpose of this AGREEMENT RUSSELL-STANLEY shall maintain
complete records at its Corporate Headquarters relating to licensed
sales. Within 30 (thirty) days after the end of each calendar quarter
of this AGREEMENT up to and including the end of the calendar quarter
following termination of this AGREEMENT RUSSELL-STANLEY shall render a
written report to MAUSER listing the total net sales of the LICENSED
ARTICLE sold by RUSSELL-STANLEY during such calendar quarter and the
royalty due thereon. Each report so rendered shall be accompanied by
the required royalty payment.
4. MAUSER shall have the right during normal business hours on 3 (three)
days prior written notice at its own expense and not more than once in
any calendar quarter to have the pertinent records of RUSSELL-STANLEY
examined by an independent certified public accountant for the purpose
of verifying the reports rendered hereunder, provided, however, any
report of the accountant to MAUSER shall be made in such a manner that
all information properly deemed confidential by RUSSELL-STANLEY will
not be disclosed to MAUSER and further provided that in the event
MAUSER's accountants' report is not accepted by RUSSELL-STANLEY or if
acceptable adjustments are made thereon, confidential information may
be disclosed as necessary to MAUSER and its attorneys.
ARTICLE 5
LIFE OF AGREEMENT
1. This AGREEMENT will come into effect on being signed by the latest
contracting party commencing with January 1, 1995.
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2. The lifetime of this AGREEMENT is in accordance with the lifetime of
the US-AGREEMENT.
3. MAUSER has the right to cancel this AGREEMENT by written notice of
cancellation and with immediate effect for any of the following, if
RUSSELL-STANLEY is in default of a material obligation resulting from this
AGREEMENT, especially with the payment of the Royalties, or has violated
material obligations under the AGREEMENT and has not remedied such violation
within three months after receipt of a corresponding notice by MAUSER to do so,
RUSSELL-STANLEY undertakes measures which are a material breach of trust
and/or breach of secrecy
4. RUSSELL-STANLEY has the right to cancel this AGREEMENT by written
notice of cancellation and with immediate effect, if
MAUSER does not fulfill material obligations under this AGREEMENT
within three months after having received a corresponding notice to do so.
5. In the event of any adjudication of bankruptcy, assignment for the
benefit of creditors or levy of execution directly involving RUSSELL-STANLEY or
MAUSER, the other shall have the immediate right to terminate this AGREEMENT by
giving written notice to the other party hereto.
6. In the event of a premature termination of this AGREEMENT by
cancellation all rights of RUSSELL-STANLEY arising from this AGREEMENT will
cease by the latest two months after receipt of the notice of cancellation. The
Royalties shall be payable until that date, when RUSSELL-STANLEY loses all
rights resulting from this AGREEMENT.
7. Upon the termination of this AGREEMENT all rights of the contracting
parties from this AGREEMENT will cease, unless such termination is coincident
with the termination of said US-Agreement, in which event the rights of the
parties shall be as set forth in the US-Agreement.
8. ****.
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ARTICLE 6
APPLICABLE LAW, JURISDICTION
1. This AGREEMENT has been drawn up in English. Any amendments and
additions to this AGREEMENT must be made in writing and signed by both
parties to become valid.
2. The contracting parties have agreed that as a whole and in all its
individual provisions this AGREEMENT is subject to German substantive
and procedural law, except for the contractual PATENT RIGHTS which fall
under Canadian patent law.
3. Any and all disputes arising from or in connection with the execution,
delivery, performance or interpretation and construction of this
AGREEMENT shall be submitted to binding arbitration before a single
arbitrator in Zurich, Switzerland, in accordance with the rules and
regulations of the International Chamber of Commerce except that where
such rules and regulations differ from the provisions of this Article
6.3 the latter shall govern. There shall be no discovery, the
arbitrator shall be selected within 30 days of the service of the
written demand for arbitration, the first hearing shall be conducted
within 60 days of the service and shall continue day to day until
completed. The decision shall be rendered within 15 business days from
the date of the last hearing, shall set forth the decision and the
reasons for same and shall be unappealable except for fraud or bias.
The loser shall pay all the administrative costs of the arbitration and
the winner's costs including without limitation attorneys' fees,
experts' fees, reasonable travel and living costs. The winning party
shall have the right to seek confirmation of the arbitrator's award in
any court of competent jurisdiction over the losing party without
objection.
ARTICLE 7
SUBSTITUTION CLAUSE
Should any individual provision of this AGREEMENT be or become void, or should a
gap be ascertained in this AGREEMENT, the validity of the other provisions shall
not be affected thereby. As a substitute for the provision, which is void or
inoperative, or for the purpose of filling the gap, an appropriate arrangement
shall be valid, which, if it is legally possible, shall be as close as possible
to what the contracting parties would have reasonably intended, had they
considered that point. If a provision is void or inoperative owing to measures
or outputs or times (periods or time limits) indicated therein, this shall be
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replaced by a measure which is as close as legally possible to the provision in
question.
ARTICLE 8
The parties to this Agreement are aware that their contractual relationship has
been renewed by a group of agreements signed today, namely
1. KNOW HOW and LICENSING AGREEMENT L-Ring USA;
2. LICENSING AGREEMENT L-RING Canada;
3. KNOW HOW and LICENSING AGREEMENT Open Top USA and
4. LICENSING AGREEMENT L-Ring USA between RUSSELL-STANLEY CORP. and HUNTER
DRUM LTD.
5. Release of any rights and obligations under the L-RING AGREEMENT of January
1, 1995.
Bruhl, 26.06.1995 Red Bank,_______________
___________
MAUSER-WERKE RUSSELL-STANLEY
G M B H CORPORATION
By /s/Dr. Burgdorf /s/Effnert By /s/John Priesing
_______________________________ ________________________
Dr. Burgdorf Effnert John Priesing
(Chief Exec. Officer) (Director) (President)