TRADEMARK LICENSE FROM EMPYREAN TO IBC
(for sales of Licensed Products in Brazil)
TRADEMARK LICENSE FROM EMPYREAN TO IBC
This License Agreement (the "Agreement") made as of the 9th day of August, 2000
("the Effective Date") by and among EMPYREAN BIOSCIENCE, INC. ("Empyrean"), a
Wyoming corporation, having an office at 23800 Commerce Park Road, Suite A,
Cleveland, Ohio 44122, and INTERNATIONAL BIOSCIENCE CORPORATION ("IBC"), a
Florida corporation, having an office at 777 South Flagler Drive, Phillips Point
Building, East Tower, Suite 909, West Palm Beach, Florida 33401;
WITNESSETH THAT:
WHEREAS, IBC and Empyrean each own one-half of the membership interest in
IBC-Empyrean LLC, a Delaware limited liability corporation established to
manufacture the Licensed Products and to sell and distribute the Licensed
Products (as defined below) in all countries of the world except United States
and Brazil;
WHEREAS, IBC has the right to manufacture, sell and distribute Licensed
Product in Brazil;
WHEREAS, IBC desires to acquire the right to use Empyrean Trade Dress (as
defined below) and Trademark (as defined below) on and in connection with the
manufacture, promotion, merchandising, distribution and sale of the Licensed
Products in Brazil;
NOW, THEREFORE, in consideration of the premises and of the mutual
undertakings hereinafter set forth, and for other good and valuable
consideration, Empyrean and IBC hereby agree as follows:
1. DEFINITIONS
In this Agreement the following terms shall have the meanings hereinafter
specified:
(a) "Copyrights" shall mean the copyrights subsisting in the Trade Dress.
(b) "Derivative Products" shall mean products hereinafter developed by IBC
having an effective amount of Formulation therein, and being of a different
product category than those Licensed Products currently being manufactured
(c) "Empyrean Trade Dress" shall mean the two-dimensional or
three-dimensional packaging decorations, designs, slogans, tag lines and
appliques that are applied to the Licensed Products or packaging therefor.
(d) "Formulation" shall mean the proprietary formulation (including
manufacturing technology and processes) comprising Benzalkonium Chloride as an
active ingredient with Octoxynol 9 (and others) invented and created by Dr.
David Thornburgh and exclusively owned by IBC known as the GEDA line of
products.
(e) "Gel Product" shall mean the spermicide and microbicide contraceptive
gel product embodying the Formulation presently being developed by IBC, also
known as the GEDA Plus product, designed to prevent the transmission of sexually
transmitted diseases including, but not limited to, gonorrhea, chlamydia,
syphilis, Trichomonas, herpes I and II and HIV, and which is presently
undergoing the appropriate and necessary United States governmental regulatory
compliance process to permit Empyrean to include such product as a Licensed
Product hereunder.
(f) "Licensed Products" shall mean products having an effective amount of
the Formulation therein and having all necessary government approval for
commercialization, including, but not limited to, the Lotion Products, Gel
Product and any Derivative Products hereinafter developed by IBC.
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(g) "Lotion Products" (also known as GEDA Lotion) shall mean the hand
sanitizing lotion presently being manufactured for Empyrean by Canadian Custom
Packaging and sold by Empyrean as a Licensed Product, and presently being
marketed by Empyrean under appropriate and necessary United States governmental
regulatory compliance.
(h) "Net Sales" shall mean the total of gross sales of the Licensed
Products by IBC to a third party, at the invoice selling price, net of normal
and reasonable cash, trade and quantity discounts and returns for credit, and
without deductions for costs incurred in manufacturing, selling, distributing or
advertising or for uncollectable accounts.
(i) "Territory" shall mean the country of Brazil.
(j) "Trademark" shall mean the mark "Prevent-X", any modification,
variation or designation of origin that is confusingly similar thereto;
2. REPRESENTATIONS
Empyrean represents as follows:
(a) Empyrean has the right and authority to enter into this Agreement.
(b) Empyrean has executed no agreement in conflict herewith.
(c) Empyrean is the owner of the trademark "Prevent-X" in the United States
and certain countries foreign to the United States (the "Trademark").
(d) Empyrean, during the Term of this Agreement will, from time to time,
provide IBC with additional trade dress (all of which packaging decorations,
ornamentations and appliques are collectively, the "Trade Dress" or "Empyrean
Trade Dress").
(e) Empyrean is the owner of all rights, title and interest in and to the
copyrights subsisting in the Trade Dress (collectively the "Copyrights").
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3. TRADEMARK LICENSE FROM EMPYREAN TO IBC
(a) Empyrean hereby grants to IBC, upon the terms and conditions of this
Agreement, whatever rights Empyrean may have to use the Trademark and Empyrean
Trade Dress, in the Territory, on and in connection with the manufacture,
promotion, merchandising, distribution and sale of Licensed Products.
(b) To the extent such Trademark and/or Trade Dress is available for use in
the Territory, IBC shall use the Trademark and Empyrean Trade Dress only on or
in connection with the manufacture, promotion, merchandising, distribution and
sales of Licensed Products in the Territory. IBC shall not use the Trademark and
Empyrean Trade Dress or manufacture or sell products using or incorporating the
Trademark and Empyrean Trade Dress except as expressly provided in this
Agreement or as approved by Empyrean.
(c) Empyrean reserves all rights to the Trademark and Empyrean Trade Dress
except as expressly granted herein to IBC. Nothing contained herein shall be
deemed or construed to prohibit Empyrean from using or granting the right to use
the Trademark and Trade Dress for any purpose in the United States.
(d) Nothing contained herein shall be deemed or construed to obligate IBC
to use the Trademark or Empyrean Trade Dress on or in connection with the
manufacture, promotion, merchandising, distribution or sales of Licensed
Products in the Territory.
(e) In the event IBC breaches the provisions of this Section, Empyrean may,
in addition to its other rights, including damages, enjoin any such breach upon
thirty (30) days written notice specifying the nature of such breach, unless,
within such 30-day period IBC discontinues such breach and provides a written
notice to Empyrean of such discontinuance together with the identification of
the steps taken by IBC to discontinue such breach.
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4. ROYALTIES
(a) For the Term of this Agreement, IBC shall pay to Empyrean a Royalty
which shall be computed as five percent (5%) of IBC's Net Sales of Licensed
Products in the Territory to any third party. Royalties shall be payable
regardless of whether the Licensed Product contains Empyrean Trade Dress or
Trademark.
(b) IBC shall pay all Royalties to Empyrean quarterly, within forty-five
(45) days after the end of each calendar quarter.
(c) Within forty-five (45) days after the end of each calendar quarter,
irrespective of whether any Net Sales have been made or whether any sum is then
due to Empyrean, IBC shall deliver to Empyrean via regular mail a complete and
accurate written statement setting forth the amount of Licensed Products sold,
the gross price at which such Licensed Products were sold, the amount of any
discount or allowances given consistent with the terms of this Agreement, the
credit for Licensed Products allowed to be returned and other deductions allowed
herein to compute Net Sales in specific detail, so as to reasonably allow an
audit of underlying documents, together with IBC's calculation of the amount of
royalties then due Empyrean for the period covered by such report.
5. REPORTING AND RECORD KEEPING
(a) IBC shall keep or cause to be kept accurate, complete and up-to-date
books of accounts separately stating by clear means records of all sales of the
Licensed Products including records pertaining to invoiced amounts by customer
and records pertaining to all freight charges, discounts, allowances, and
returns allowed by IBC. Such books and records of accounts shall reflect that a
sale of the Licensed Products shall be deemed to have occurred as of the date
such Licensed Products were invoiced to IBC's customers.
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(b) Empyrean or its authorized representatives shall have the right, once
each calendar year, to inspect all such records of IBC with respect to the
Licensed Products and to make copies of said record utilizing IBC's facilities
without charge and shall have free and full access thereto on reasonable notice
during the normal business hours of IBC. In the event that such inspection or
audit reveals an underpayment by IBC under this Agreement, IBC shall immediately
pay to Empyrean the balance of all such amounts found to be due pursuant to such
audit or inspection together with interest thereon at the "best commercial
customer" rate at the Bank of America, plus six percent (6%) per annum from the
date such amounts first became due to Empyrean until all such amounts have been
paid in full. Further, if such inspection or audit discloses that, for the
annual period reviewed or audited, IBC has underpaid or understated its
obligation under this Agreement by twenty percent (20%) or more, then IBC shall
also pay three times the reasonable professional fees of the independent
representatives engaged to conduct or review such inspection or audit.
6. TRADEMARK
(a) IBC recognizes that Empyrean is the owner of all right, title and
interest in and to the Trademark in any form or embodiment thereof and is also
the owner of the goodwill attached or which shall become attached to the
Trademark in connection with the business and goods in relation to which the
same has been, is, or shall be used. Sales by IBC shall be deemed to have been
made by Empyrean for the purposes of goodwill and all uses of the Trademark by
IBC shall inure to the benefit of Empyrean and any rights of Empyrean. IBC shall
not at any time intentionally or recklessly do or suffer to be done by anyone
acting on its behalf or in connection with IBC any act or thing which will in
any way impair the rights of Empyrean in or to the Trademark or any application
or registration thereof or which depreciates the value of the Trademark or its
reputation.
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(b) IBC shall, at the request of Empyrean, fully cooperate with Empyrean in
preparing, executing and causing to be recorded or filed such agreements
(including registered user agreements and other documents reasonably required by
Empyrean) to confirm the ownership by Empyrean of the Trademark, and to
evidence, protect and implement its rights to the Trademark within and outside
the Territory and the respective rights of Empyrean and IBC pursuant to this
Agreement. Empyrean and IBC acknowledge that only Empyrean may file and
prosecute trademark applications regarding the Trademark or IBC's use of the
Trademark anywhere. IBC will cooperate with Empyrean, at Empyrean's request, in
connection with the preparation, execution, filing and prosecution of
applications to register the Trademark both inside and outside the Territory and
the maintenance of such registrations as may issue. Upon expiration or
termination of this Agreement for any reason whatsoever, IBC will execute and
file such documents as shall be required by Empyrean, including without
limitation, termination of any agreements and assignments of rights.
(c) IBC shall cause to appear on all Licensed Products and on all materials
on or in connection with which the Trademark is used such legend, markings and
notice of any trademark, trade name or other rights therein or pertaining
thereto as Empyrean shall reasonably require and shall comply with all notice
and marking requirements of any law applicable or necessary to the protection of
the Trademark.
(d) IBC shall never (i) challenge Empyrean's ownership of or right to
license, or the validity of, the Trademark, any application for registration
thereof or any trademark registration thereof nor (ii) contest the fact that
IBC's rights under this Agreement are solely those of a Licensee.
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(e) At the expiration or termination of this Agreement, except as expressly
provided herein, all rights of IBC with respect to use of the Trademark shall
thereupon cease and terminate for all purposes whatsoever.
7. QUALITY CONTROL
(a) IBC acknowledges that the preservation and enhancement of the value of
the Trademark and Trade Dress requires Empyrean to reasonably control the type,
image and quality of products manufactured and sold using the Trademark and
Trade Dress and the use of the Trademark and Trade Dress in connection with the
manufacture and sale of Licensed Products.
(b) IBC shall only use the Trademark on the Licensed Products in
stylization consistent with and conforming to a Style Guide to be provided to
IBC-Empyrean LLC by Empyrean ("Style Guide").
(c) IBC shall only use the Trade Dress consistent with and conforming to
the Style Guide provided to IBC-Empyrean LLC by Empyrean.
(d) IBC shall submit to Empyrean for Empyrean's approval, samples of all
labels, tags, packaging and other materials incorporating the Trademark and/or
Trade Dress and intended to be used in connection with Licensed Products, before
the same may be used, and no use shall be made of the same unless approved by
Empyrean in writing, which approval shall not be unreasonably withheld.
(e) In order that Empyrean may assure itself of the maintenance of the
quality standards set forth in this Agreement:
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(i) Before manufacturing or having manufactured for it any Licensed
Products intended to bear the Trademark and Trade Dress, IBC shall deliver to
Empyrean, or as Empyrean may direct, for Empyrean approval, free of charge, one
(1) pre-production sample and six (6) production samples related to same, of
such Licensed Products intended to be sold by IBC. Nothing herein shall preclude
Empyrean from requesting additional samples from IBC in order to monitor quality
control, and IBC shall provide such samples when requested.
(ii) All Licensed Products bearing the Trademark and Trade Dress
manufactured by or for IBC or sold, distributed or promoted by it shall conform
in all material respects to the samples approved by Empyrean.
(f) IBC shall not use any Trade Dress or samples furnished by Empyrean,
created by or for IBC for use in connection with Licensed Products, or approved
for such use by Empyrean, except as provided in this Agreement, it being the
understanding of the parties that IBC may use the same solely in connection with
Licensed Products.
(g) IBC will use and display the Trademark and Trade Dress only in such
forms and manners as are approved by Empyrean, specifically, as displayed in the
Style Guide.
(h) IBC shall submit to Empyrean, or as Empyrean may direct, before
publication, any and all advertising and promotional material for approval by
Empyrean.
(i) Except as otherwise expressly provided herein, whenever, under the
terms of this Agreement, the approval, consent or permission of Empyrean shall
be required, such approval, consent or permission, shall not be unreasonably
withheld or delayed. If Empyrean shall deny approval, it shall state in writing
the reasons therefor. After any sample, copy or art work has been approved by
Empyrean, IBC shall not vary or depart therefrom in any material respect without
the further approval of Empyrean.
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(j) IBC agrees that all Licensed Products will be manufactured, labeled,
sold, distributed, promoted and advertised in accordance with all applicable
Federal, State and local, and if appropriate, foreign laws and regulations.
(k) Subject to the Trademark and Trade Dress requirements set forth herein,
the parties agree that co-branding the Trademark and Trade Dress with the
trademark of a third party is permitted by IBC as long as such third party
trademark preserves the value of the Trademark and Trade Dress.
8. COPYRIGHT
(a) Empyrean is the owner of all right, title and interest in and to the
Trade Dress, Style Guide and Copyrights in any form or embodiment thereof. IBC
shall not at any time intentionally or recklessly do or suffer to be done by
anyone acting on its behalf or in connection with IBC any act or thing which
will in any way impair the rights of Empyrean in or to the Copyrights or any
application or registration thereof or which depreciates the value of the
Copyrights.
(b) IBC shall, at the request of Empyrean, fully cooperate with Empyrean in
preparing, executing and causing to be recorded or filed such agreements
(including registered user agreements and other documents reasonably required by
Empyrean) to confirm the ownership by Empyrean of the Copyrights, and to
evidence, protect and implement its rights to the Copyrights inside and outside
the Territory and the respective rights of Empyrean and IBC pursuant to this
Agreement. IBC acknowledges that only Empyrean may file and prosecute copyright
applications regarding the Copyrights or IBC's use of the Trade Dress anywhere.
IBC will cooperate with Empyrean, at Empyrean's request, in connection with the
preparation, execution, filing and prosecution of applications to register the
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Copyrights of Licensed Products both inside and outside the Territory and the
maintenance of such registrations as may issue, and shall supply to Empyrean at
no cost, from time to time such samples, containers, labels and similar
materials as may reasonably be required in connection with any such
applications.
(c) Upon expiration or termination of this Agreement for any reason
whatsoever, IBC will execute and file such documents as shall be required by
Empyrean, including without limitation, termination of any agreements and
assignments of rights.
(d) IBC shall cause to appear on all Licensed Products and on all materials
on or in connection with which the Trade Dress are used such legend, markings
and notice of any copyright or other rights therein or pertaining thereto as
Empyrean shall reasonably require and shall comply with all notice and marking
requirements of any law applicable or necessary to the protection of the
Copyrights.
(e) IBC shall never (i) challenge Empyrean's ownership of or right to
license, or the validity of, the Trade Dress and the Copyrights, any application
for registration thereof or any copyright registration thereof nor (ii) contest
the fact that IBC's rights under this Agreement are solely those of a Licensee.
(f) At the expiration or termination of this Agreement, except as expressly
provided herein, all rights of IBC with respect to use of the Copyrights and
Trade Dress shall thereupon cease and terminate for all purposes whatsoever.
(g) Any copyright which may be created in the Licensed Products and in any
package design, label or the like bearing the Trademark or Trade Dress shall be
the property of Empyrean and shall carry such copyright notices as Empyrean may
reasonably direct.
(h) Any copyrights in and to the Style Guide shall remain property of
Empyrean.
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(i) The artistic and creative designs and ornamental appearances of, and
the copyrights, industrial designs and design patents on the Licensed Products
shall be the sole property of Empyrean, and IBC agrees to execute such documents
as may be required to effectuate this provision. Empyrean hereby grants a
license to IBC during the term of this Agreement to use the properties referred
to in this section on or in connection with Licensed Products.
9. INFRINGEMENT OF TRADEMARK
(a) IBC shall, promptly after becoming aware of same, notify Empyrean of
any infringement or imitation of the Trademark and/or Trade Dress, of any use by
any person or entity of a trademark or design similar to the Trademark or Trade
Dress, or of any unfair competition relating to the Trademark or Trade Dress, or
of any other apparent violation of the rights of Empyrean, so as to allow for
Empyrean to take such action as Empyrean deems advisable for the protection of
Empyrean's rights. IBC shall, if requested by Empyrean, fully cooperate with
Empyrean and, if so requested by Empyrean, shall join with Empyrean at IBC's
expense, as a party to any action brought by IBC for such purpose. In no event,
however, shall Empyrean be required to take any action if Empyrean deems it
inadvisable to so do. Empyrean shall have full control over any action taken by
it, including without limitation, the right to select counsel, to settle on any
terms it deems advisable, in its discretion, to appeal any adverse decision
rendered in any court, to discontinue any action taken by it, and otherwise to
make any decision in respect thereto as it in its discretion deems advisable.
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10. TERMINATION OF TRADEMARK LICENSE FROM EMPYREAN TO IBC
(a) On the expiration, or termination of this Agreement or the IBC-Empyrean
LLC Operating Agreement executed concurrently with this Agreement (the
"Operating Agreement"), except as otherwise expressly provided herein, all
rights of IBC hereunder shall terminate forthwith and revert automatically to
Empyrean, and neither IBC nor its receivers, trustees, representatives, agents,
successors or assigns shall have any right to exploit or in any way use the
Trademark or Trade Dress in connection with the manufacture, advertising,
merchandising, promotion, sale or distribution of Licensed Products or otherwise
or any right to use any designs, patterns, stylings or samples furnished by
Empyrean created by or for IBC for use in connection with Licensed Products or
approved by Empyrean for such use. Except as otherwise expressly provided
herein, upon the expiration or termination of this Agreement or the Operating
Agreement, IBC shall forthwith discontinue all use of the Trademark and Trade
Dress and any variation or simulation thereof.
11. TERM
(a) The term of this Agreement shall begin on the Effective Date and shall
continue for a period of ten (10) years (the "Initial Term").
(b) This Agreement shall be automatically renewed at the conclusion of the
Initial Term, and each subsequent Additional Term, if applicable, for Additional
Terms of ten (10) years, unless terminated in accordance with Section 12 below.
12. TERMINATION
(a) Empyrean shall have the right to terminate this Agreement upon
termination of the Operating Agreement.
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13. INDEMNITY
Empyrean agrees
(a) to assume the defense of any suit brought against IBC based upon any
claim asserted against any Licensed Product label, Trade Dress or advertising or
promotional material that is required and approved by Empyrean; and
(b) to indemnify IBC against any money damages and/or costs, including
reasonable attorneys fees, provided that (i) Empyrean is given exclusive control
of the defense of such suit and all negotiations relative to the settlement
thereof, (ii) IBC promptly informs Empyrean in writing of any claims for which
Empyrean has assumed responsibility hereunder, and (iii) the liability claim
shall not have arisen because of wrongful or negligent conduct by IBC.
14. APPLICABLE LAW
(a) This Agreement, its terms and conditions and all business conducted
hereunder shall be governed and interpreted under the laws of the State of
Florida, without regard to conflict of laws provisions. The venue of any
arbitration between the parties arising from or related to this Agreement shall
be in either Miami-Dade County or Palm Beach County, Florida. Any litigation
arising from or related to this Agreement shall be brought exclusively in an
appropriate state or federal court in Miami-Dade County or Palm Beach County,
Florida, and the parties waive any right to challenge such venue
(b) Except for actions brought for wrongful termination or to seek
termination of this Agreement, if any disagreement arises regarding the
interpretation of any points of the Agreement or any other point not covered
herein or any claims for damages or specific performance, the disagreement, upon
request of either party hereto delivered in writing to the other party, shall be
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resolved by arbitration before a single arbitrator in accordance with the
commercial rules and procedures set forth by the American Arbitration
Association. Any Party may seek a temporary injunction in court to the extent
necessary to preserve the status quo during the pendency of any dispute or
arbitration proceeding. The prevailing party in any litigation or arbitration
brought under this Agreement shall be entitled to recover reasonable attorney's
fees and costs.
(c) In the event any provision of this Agreement shall be held to be
invalid, illegal or unenforceable, the remaining terms shall remain in full
force and effect, to effectuate this Agreement in accordance with its intent.
Headings, title and subtitles of this Agreement are for convenience of reference
only and are not to be considered in construing the terms of this Agreement.
15. SOLE AND COMPLETE AGREEMENT
(a) This Agreement is the sole and complete statement of the parties of
their rights and obligations with respect to the subject matter hereof. This
Agreement is an integrated agreement and replaces and supersedes any and all
previous obligations and agreements between the parties, their predecessors and
subsidiaries, both oral and written. The Parties hereto recognize and agree that
no representations or warranties have been made except as set forth in this
Agreement. Except as may otherwise be expressly provided herein, by signing this
Agreement the parties expressly release each other, their predecessors and
subsidiaries from any and all existing obligations that pre-date this Agreement
as if such obligations have been fully performed and satisfied. Any amendments
to this Agreement shall be in writing and executed by both parties hereto.
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16. Notices
(a) All notices, requests, demands, instructions, consents or other
communications required or permitted to be given under this Agreement shall be
in writing and shall be deemed to have been duly given if (i) delivered
personally, (ii) mailed postage prepaid by certified mail, return receipt
requests, (iii) sent by a nationally recognized express courier service
requiring a signature by the recipient, postage or delivery charges prepaid, at
the address hereinafter specified, or to such other address as the parties may
advise each other in writing from time to time. Any notice shall be addressed as
follows:
As to Empyrean:
Mr. Richard C. Adamany
Empyrean Bioscience, Inc.
23800 Commerce Park Road, Suite A
Cleveland, Ohio 44122
With a copy to
Richard H. Kronthal, Esq.
Kaye, Scholer, Fierman, Hays & Handler, LLP
425 Park Avenue
New York, New York 10022
As to IBC:
Ms. Sara Gomez
International Bioscience Corporation
777 South Flagler Drive
Phillips Point Building
East Tower, Suite 909
West Palm Beach, Florida 33401
With a copy to:
Joseph L. Raia, Esq.
Holtzman, Krinzman, Equels & Furia
2601 South Bayshore Drive, Suite 600
Miami, Florida 33133
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17. ASSIGNMENT
(a) IBC has no right to sub-license or otherwise assign its rights and
delegate its duties under this Agreement.
(b) Neither IBC nor Empyrean may assign its rights or delegate its duties
under this Agreement without the express written consent of the other party.
(c) This Agreement shall be binding on and inure to the benefit of the
parties, and their respective legal representatives, successors and assigns.
(d) No assignment shall be valid unless accepted in writing by the party to
be bound. Any assignment of rights of one party without the express written
consent of the other party shall be void, not valid and of no legal effect.
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IN WITNESS WHEREOF, the parties hereto do hereby sign, enter into and
acknowledge this Agreement.
EMPYREAN BIOSCIENCE, INC.
By:
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Title:
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INTERNATIONAL BIOSCIENCE CORPORATION
By:
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Title:
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