1
EXHIBIT 10.4
MASTER TECHNOLOGY OWNERSHIP AND
LICENSE AGREEMENT
BETWEEN
MERCURY AIR GROUP, INC.
AND
MERCFUEL, INC.
2
TABLE OF CONTENTS
ARTICLE I - DEFINITIONS......................................................................1
SECTION 1.1 ANCILLARY AGREEMENTS...........................................................1
SECTION 1.2 COPYRIGHTS.....................................................................1
SECTION 1.3 CURRENT MERCFUEL PRODUCTS......................................................1
SECTION 1.4 DISTRIBUTION DATE..............................................................2
SECTION 1.5 INVENTION DISCLOSURE...........................................................2
SECTION 1.6 MASK WORK RIGHTS...............................................................2
SECTION 1.7 MASTER CONFIDENTIAL DISCLOSURE AGREEMENT.......................................2
SECTION 1.8 MASTER DISTRIBUTION AGREEMENT..................................................2
SECTION 1.9 MERCFUEL BUSINESS..............................................................2
SECTION 1.10 MERCFUEL PRODUCTS............................................................2
SECTION 1.11 MERCFUEL PRODUCTS SCHEDULE...................................................2
SECTION 1.12 MERCFUEL TECHNOLOGY..........................................................2
SECTION 1.13 MERCFUEL TECHNOLOGY SCHEDULE.................................................2
SECTION 1.14 PATENTS......................................................................2
SECTION 1.15 PERSON.......................................................................3
SECTION 1.16 SELL.........................................................................3
SECTION 1.17 SUBSIDIARY...................................................................3
SECTION 1.18 TECHNOLOGY...................................................................3
SECTION 1.19 THIRD PARTY..................................................................3
ARTICLE II - OWNERSHIP.......................................................................3
SECTION 2.1 OWNERSHIP OF MERCFUEL TECHNOLOGY...............................................3
SECTION 2.2 PRIOR GRANTS...................................................................4
SECTION 2.3 ASSIGNMENT DISCLAIMER..........................................................4
ARTICLE III - LICENSES AND RIGHTS............................................................4
SECTION 3.1 MERCFUEL LICENSE TO MAG........................................................4
SECTION 3.2 THIRD PARTY TECHNOLOGY.........................................................5
ARTICLE IV - CONFIDENTIALITY.................................................................5
ARTICLE V - NO TERMINATION...................................................................5
ARTICLE VI - DISPUTE RESOLUTION..............................................................5
SECTION 6.1 MEDIATION......................................................................5
SECTION 6.2 ARBITRATION....................................................................5
SECTION 6.3 COURT ACTION...................................................................6
SECTION 6.4 CONTINUITY OF SERVICE AND PERFORMANCE..........................................6
ARTICLE VII - LIMITATION OF LIABILITY........................................................6
ARTICLE VIII - MISCELLANEOUS PROVISIONS......................................................6
SECTION 8.1 DISCLAIMER.....................................................................6
SECTION 8.2 NO IMPLIED LICENSES............................................................7
SECTION 8.3 INFRINGEMENT SUITS.............................................................7
SECTION 8.4 NO OTHER OBLIGATIONS...........................................................7
(ii)
3
SECTION 8.5 ENTIRE AGREEMENT...............................................................7
SECTION 8.6 GOVERNING LAW..................................................................7
SECTION 8.7 DESCRIPTIVE HEADINGS...........................................................8
SECTION 8.8 NOTICES........................................................................8
SECTION 8.9 NONASSIGNABILITY...............................................................8
SECTION 8.10 SEVERABILITY.................................................................9
SECTION 8.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE........................9
SECTION 8.12 AMENDMENT....................................................................9
SECTION 8.13 COUNTERPARTS.................................................................9
(iii)
4
MASTER TECHNOLOGY OWNERSHIP AND LICENSE AGREEMENT
This Master Technology Ownership and License Agreement (the "Agreement")
is dated as of _______, 2001 and effective __________, 2001 (the "Effective
Date"), between Mercury Air Group, Inc., a Delaware corporation ("MAG"), having
an office at 5456 McConnell Avenue, Los Angeles, California 90066 and MercFuel,
Inc., a Delaware corporation ("MercFuel"), having an office at 5456 McConnell
Avenue, Los Angeles, California, 90066.
WHEREAS, the Board of Directors of MAG has determined that it is in the
best interest of MAG and its stockholders to separate MAG's existing businesses
into two independent businesses;
WHEREAS, as part of the foregoing, MAG and MercFuel have entered into a
Master Distribution Agreement (as defined below), which provides, among other
things, for the separation of certain MercFuel assets and MercFuel liabilities,
the distribution of such stock of MercFuel and the execution and delivery of
certain other agreements in order to facilitate and provide for the foregoing;
and
WHEREAS, also as part of the foregoing, the parties desire to confirm
MercFuel's ownership of certain technology.
NOW, THEREFORE, in consideration of the mutual promises of the parties,
and of good and valuable consideration, it is agreed by and between the parties
as follows:
ARTICLE I
DEFINITIONS
For the purpose of this Agreement the following capitalized terms are
defined in this Article 1 and shall have the meaning specified herein:
Section 1.1 Ancillary Agreements. "Ancillary Agreements" shall have the
meaning set forth in the Master Separation and Distribution Agreement.
Section 1.2 Copyrights. "Copyrights" mean (i) any copyright in any
original works of authorship fixed in any tangible medium of expression as set
forth in 17 U.S.C. Section 101 et. seq., whether registered or unregistered,
including any applications for registration thereof, (ii) any corresponding
foreign copyrights under the laws of any jurisdiction, in each case, whether
registered or unregistered, and any applications for registration thereof, and
(iii) moral rights under the laws of any jurisdiction.
Section 1.3 Current MercFuel Products. "Current MercFuel Products" means
MercFuel Products of the businesses in which MercFuel or any of its Subsidiaries
is engaged as of the Effective Date, including any MercFuel Products under
development as set forth in MAG's planning materials or forecasts for Fiscal
Year 2001 or as otherwise agreed by the parties, as well as future versions of
such MercFuel Products, but only to the extent that they use the same designs
and/or technology as such MercFuel Products.
1
5
Section 1.4 Distribution Date. "Distribution Date" shall have the
meaning set forth in the Master Distribution Agreement.
Section 1.5 Invention Disclosure. "Invention Disclosure" means a
disclosure of an invention (i) written for the purpose of allowing legal and
business people to determine whether to file a Patent application with respect
to such invention and (ii) recorded with a control number in the owning party's
records.
Section 1.6 Mask Work Rights. "Mask Work Rights" means any rights in
mask works, as defined in 17 U.S.C. Section 901, whether registered or
unregistered, including applications for registration thereof.
Section 1.7 Master Confidential Disclosure Agreement. "Master
Confidential Disclosure Agreement" means the Master Confidential Disclosure
Agreement between MAG and MercFuel.
Section 1.8 Master Distribution Agreement. "Master Distribution
Agreement" means the Master Distribution Agreement between MAG and MercFuel.
Section 1.9 MercFuel Business. "MercFuel Business" means the business
and operations of MercFuel.
Section 1.10 MercFuel Products. "MercFuel Products" means any and all
products and services of the businesses in which MercFuel or any of its
Subsidiaries is engaged now or in the future, in all cases which products are
designed or created primarily by MercFuel (or by any sublicensed Subsidiary)
and/or by a subcontractor for MercFuel (or for any sublicensed Subsidiary),
including but not limited to the products and services set forth in the MercFuel
Products Schedule.
Section 1.11 MercFuel Products Schedule. "MercFuel Products Schedule"
means the mutually agreed MercFuel Products Schedule, attached hereto as
Schedule 1.11, as it may be updated by the parties upon mutual agreement (signed
by authorized officers) of the parties to add MercFuel products as of the
Effective Date.
Section 1.12 MercFuel Technology. "MercFuel Technology" means (i) all
Technology developed solely by MercFuel or Subsidiaries of MercFuel or by its
subcontractors for MercFuel or its Subsidiaries, (ii) all Technology for which
the direct costs were solely paid for by MercFuel, and (iii) Technology that has
been jointly developed by the parties prior to the Separation Date that is
incorporated into Current MercFuel including but not limited to the Technology
set forth in the MercFuel Technology Schedule.
Section 1.13 MercFuel Technology Schedule. "MercFuel Technology
Schedule" means the mutually agreed MercFuel Technology Schedule attached hereto
as Schedule 1.13, as it may be updated by the parties upon mutual agreement
(signed by authorized officers) of the parties to add MercFuel Technology as of
the Effective Date.
Section 1.14 Patents. "Patents" means patents, utility models, design
patents, design registrations, certificates of invention and other governmental
grants for the protection of
2
6
inventions or industrial designs anywhere in the world and all reissues,
renewals, re-examinations and extensions of any of the foregoing.
Section 1.15 Person. "Person" means an individual, a partnership, a
corporation, a limited liability company, an association, a joint stock company,
a trust, a joint venture, an unincorporated organization, and a governmental
entity or any department, agency or political subdivision thereof.
Section 1.16 Sell. To "Sell" a product means to sell, transfer, lease or
otherwise dispose of a product. "Sale" and "Sold" have the corollary meanings
ascribed thereto.
Section 1.17 Subsidiary. "Subsidiary" of any Person means a corporation
or other organization, whether incorporated or unincorporated, of which at least
a majority of the securities or interests having by the terms thereof ordinary
voting power to elect at least a majority of the board of directors or others
performing similar functions with respect to such corporation or other
organization is directly or indirectly owned or controlled by such Person or by
any one or more of its Subsidiaries, or by such Person and one or more of its
Subsidiaries; provided, however, that no Person that is not directly or
indirectly wholly-owned by any other Person shall be a Subsidiary of such other
Person unless such other Person controls, or has the right, power or ability to
control, that Person. For purposes of this Agreement, MercFuel shall be deemed
not to be a subsidiary of MAG.
Section 1.18 Technology. "Technology" means technological models,
algorithms, manufacturing processes, design processes, behavioral models, logic
diagrams, schematics, test vectors, know-how, computer and electronic data
processing and other apparatus programs and software (object code and source
code), databases and documentation thereof, trade secrets, technical
information, specifications, drawings, records, documentation, works of
authorship or other creative works, websites, ideas, knowledge, data or the
like. The term Technology includes Copyrights and Mask Work Rights, trade
secrets and any other intellectual property right, and also includes (i) any
trademark, trade name, trade dress or service mark, or applications for
registration thereof, (ii) any Patents or applications therefor, including any
of the foregoing that may be based on Invention Disclosures, and (iii) trade
secret rights in and to inventions disclosed in any Patent applications and
Invention Disclosures.
Section 1.19 Third Party. "Third Party" means a Person other than MAG
and its Subsidiaries and MercFuel and its Subsidiaries.
ARTICLE II
OWNERSHIP
Section 2.1 Ownership of MercFuel Technology. The parties hereby confirm
that MercFuel owns all right, title and interest in and to the MercFuel
Technology. Subject to Sections 2.2 and 2.3 below, to the extent that MAG has
any ownership rights in and to the MercFuel Technology, MAG hereby grants,
conveys and assigns (and agrees to cause its appropriate Subsidiaries to grant,
convey and assign) to MercFuel, by execution hereof (or, where appropriate or
required, by execution of separate instruments of assignment), all its (and
3
7
their) right, title and interest in and to the MercFuel Technology, to be held
and enjoyed by MercFuel, its successors and assigns. MAG further grants, conveys
and assigns (and agrees to cause its appropriate Subsidiaries to grant, convey
and assign) to MercFuel all its (and their) right, title and interest in and to
any and all causes of action and rights of recovery for past infringement of
Copyrights and Mask Work Rights in and to the MercFuel Technology, and for past
misappropriation of trade secrets in and to the MercFuel Technology. MAG further
covenants that MAG will, without demanding any further consideration therefor,
at the request and expense of MercFuel (except for the value of the time of MAG
employees), do (and cause its Subsidiaries to do) all lawful and just acts that
may be or become necessary for evidencing, maintaining, recording and perfecting
MercFuel's rights to such MercFuel Technology consistent with MAG's general
business practice as of the Effective Date, including but not limited to,
execution and acknowledgement of (and causing its Subsidiaries to execute and
acknowledge) assignments and other instruments in a form reasonably required by
MercFuel for each Copyright or Mask Work Right jurisdiction.
Section 2.2 Prior Grants.
(a) MercFuel acknowledges and agrees that the foregoing assignment is
subject to any and all licenses or other rights that may have been granted by or
to MAG or its Subsidiaries with respect to the MercFuel Technology prior to the
Effective Date. MAG shall respond to reasonable inquiries from MercFuel
regarding any such prior grants.
(b) MAG acknowledges and agrees that the foregoing assignment is subject
to any and all licenses or other rights that may have been granted by or to
MercFuel or its Subsidiaries with respect to the MAG Technology prior to the
Effective Date. MercFuel shall respond to reasonable inquiries from MAG
regarding any such prior grants.
Section 2.3 Assignment Disclaimer. THE PARTIES ACKNOWLEDGE AND AGREE
THAT THE FOREGOING ASSIGNMENTS ARE MADE ON AN "AS IS," QUITCLAIM BASIS AND THAT
NEITHER PARTY NOR ANY SUBSIDIARY OF EITHER PARTY HAS MADE OR WILL MAKE ANY
WARRANTY WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, INCLUDING WITHOUT LIMITATION
ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
TITLE, ENFORCEABILITY OR NON-INFRINGEMENT. FURTHER, THE PARTIES ACKNOWLEDGE AND
AGREE THAT NEITHER PARTY NOR ANY SUBSIDIARY OF EITHER PARTY SHALL HAVE ANY
OBLIGATION UNDER THIS AGREEMENT TO MAINTAIN OR SUPPORT ANY OF THE TECHNOLOGY
ASSIGNED UNDER THIS AGREEMENT OR TO PROVIDE ANY UPGRADES OR ENHANCEMENTS THERETO
TO THE OTHER PARTY.
ARTICLE III
LICENSES AND RIGHTS
Section 3.1 MercFuel License to MAG. In recognition of the fact that MAG
and MercFuel are affiliated entities, MercFuel agrees to grant separate licenses
to MAG with respect to certain technologies and products on favorable terms. The
parties agree to negotiate such
4
8
licensing agreement(s) reasonably and in good faith as promptly as they can
reasonably accomplish, but in no event later than the Effective Date.
Section 3.2 Third Party Technology. The assignment of any applicable
license agreements with respect to Third Party Technology are set forth in the
General Assignment and Assumption Agreement.
ARTICLE IV
CONFIDENTIALITY
The terms of the Master Confidential Disclosure Agreement between the
parties shall apply to any Confidential Information (as defined therein) which
is the subject matter of this Agreement.
ARTICLE V
NO TERMINATION
Each party acknowledges and agrees that its remedy for breach by the
other party of any provision hereof shall be, subject to the requirements of
Article 6, to bring a claim to recover damages subject to the limits set forth
in this Agreement and to seek any other appropriate equitable relief, other than
termination of this Agreement. For the avoidance of doubt, the parties intend
that this Agreement continue in perpetuity.
ARTICLE VI
DISPUTE RESOLUTION
Section 6.1 Mediation. If a dispute, controversy or claim ("Dispute")
arises between the parties relating to the interpretation or performance of this
Agreement appropriate senior executives of each party who shall have the
authority to resolve the matter shall meet to attempt in good faith to negotiate
a resolution of the Dispute prior to pursuing other available remedies. The
initial meeting between the appropriate senior executives shall be referred to
herein as the "Dispute Resolution Commencement Date". Discussions and
correspondence relating to trying to resolve such Dispute shall be treated as
Confidential Information developed for the purpose of settlement and shall be
exempt from discovery or production and shall not be admissible. If the senior
executives are unable to resolve the Dispute within thirty (30) days from the
Dispute Resolution Commencement Date, and either party wishes to pursue its
rights relating to such Dispute, then the Dispute will be mediated by a mutually
acceptable mediator appointed within thirty (30) days after written notice by
one party to the other demanding non-binding mediation. Neither party may
unreasonably withhold consent to the selection of a mediator or the location of
the mediation. Both parties will share the costs of the mediation equally,
except that each party shall bear its own costs and expenses, including
attorneys' fees, witness fees, travel expenses, and preparation costs. The
parties may also agree to replace mediation with some other form of non-binding
or binding alternate dispute resolution ("ADR").
Section 6.2 Arbitration. Any Dispute which the parties cannot resolve
through mediation within ninety (90) days of the Dispute Resolution Commencement
Date, unless otherwise mutually agreed, shall be submitted to final and binding
arbitration under the then
5
9
current Commercial Arbitration Rules of the American Arbitration Association
("AAA"), by three (3) arbitrators in Los Angeles County, California. Such
arbitrators shall be selected by the mutual agreement of the parties or, failing
such agreement, shall be selected according to the aforesaid AAA rules. The
arbitrators will be instructed to prepare and deliver a written, reasoned
opinion stating their decision within thirty (30) days of the completion of the
arbitration. The prevailing party in such arbitration shall be entitled to
expenses, including costs and reasonable attorneys' and other professional fees,
incurred in connection with the arbitration (but excluding any costs and fees
associated with prior negotiation or mediation). The decision of the arbitrator
shall be final and non-appealable and may be enforced in any court of competent
jurisdiction. The use of any ADR procedures will not be construed under the
doctrine of laches, waiver or estoppel to adversely affect the rights of either
party.
Section 6.3 Court Action. Any Dispute regarding the following is not
required to be negotiated, mediated or arbitrated prior to seeking relief from a
court of competent jurisdiction: breach of any obligation of confidentiality;
infringement, misappropriation, or misuse of any intellectual property right;
any other claim where interim relief from the court is sought to prevent serious
and irreparable injury to one of the parties or to others. However, the parties
to the Dispute shall make a good faith effort to negotiate and mediate such
Dispute, according to the above procedures, while such court action is pending.
Section 6.4 Continuity of Service and Performance. Unless otherwise
agreed in writing, the parties will continue to provide service and honor all
other commitments under this Agreement during the course of dispute resolution
pursuant to the provisions of this Article 6 with respect to all matters not
subject to such dispute, controversy or claim.
ARTICLE VII
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE
OTHER PARTY OR ITS SUBSIDIARIES 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;
PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT EACH PARTY'S
OBLIGATIONS EXPRESSLY ASSUMED IN EXHIBIT J OF THE MASTER SEPARATION AND
DISTRIBUTION AGREEMENT; PROVIDED FURTHER THAT THE EXCLUSION OF PUNITIVE DAMAGES
SHALL APPLY IN ANY EVENT.
ARTICLE VIII
MISCELLANEOUS PROVISIONS
Section 8.1 Disclaimer. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL
TECHNOLOGY AND ANY OTHER INFORMATION OR MATERIALS PROVIDED HEREUNDER IS PROVIDED
ON AN "AS IS" BASIS, AND THAT NEITHER PARTY NOR ANY OF ITS SUBSIDIARIES MAKES
ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES WHATSOEVER, EXPRESS, IMPLIED OR
STATUTORY, WITH RESPECT
6
10
THERETO, INCLUDING WITHOUT LIMITATION ANY IMPLIED WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, TITLE, ENFORCEABILITY OR NON-INFRINGEMENT.
Without limiting the generality of the foregoing, neither party nor any of its
Subsidiaries makes any warranty or representation that any manufacture, use,
importation, offer for sale or sale of any product or service will be free from
infringement of any Patent or other intellectual property right of any Third
Party.
Section 8.2 No Implied Licenses. Nothing contained in this Agreement
shall be construed as conferring any rights by implication, estoppel or
otherwise, under any intellectual property right, other than the rights
expressly granted in this Agreement with respect to the MercFuel Technology.
Neither party is required hereunder to furnish or disclose to the other any
technical or other information, except as specifically provided herein.
Section 8.3 Infringement Suits. Neither party shall have any obligation
hereunder to institute any action or suit against Third Parties for infringement
of any Copyrights or Mask Work Rights or misappropriation of any trade secret
rights in or to any Technology licensed to the other party hereunder, or to
defend any action or suit brought by a Third Party which challenges or concerns
the validity of any of such rights or which claims that any Technology assigned
or licensed to the other party hereunder infringes any Patent, Copyright, Mask
Work Right or other intellectual property right of any Third Party or
constitutes a misappropriated trade secret of any Third Party. MAG shall not
have any right to institute any action or suit against Third Parties for
infringement of any of the Copyrights or Mask Work Rights in or to the MercFuel
Technology.
Section 8.4 No Other Obligations. NEITHER PARTY ASSUMES ANY
RESPONSIBILITIES OR OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND
OBLIGATIONS EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN
AGREEMENT BETWEEN THE PARTIES. Without limiting the generality of the foregoing,
neither party, nor any of its Subsidiaries, is obligated under this Agreement to
provide any technical assistance.
Section 8.5 Entire Agreement. This Agreement, the Master Distribution
Agreement and the other Ancillary Agreements and the Exhibits and Schedules
referenced or attached hereto and thereto constitute the entire agreement
between the parties with respect to the subject matter hereof and thereof and
shall supersede all prior written and oral and all contemporaneous oral
agreements and understandings with respect to the subject matter hereof and
thereof. This Agreement shall prevail in the event of any conflicting terms or
legends which may appear on any portion of the MercFuel Technology. To the
extent that the parties enter into specific agreements regarding specific
projects, such agreements shall supersede this Agreement with respect to any
common subject matter.
Section 8.6 Governing Law. This Agreement shall be construed in
accordance with and all Disputes hereunder shall be governed by the laws of the
State of California, excluding its conflict of law rules and the United Nations
Convention on Contracts for the International Sale of Goods. The Superior Court
of Los Angeles County and/or the United States District Court for the Southern
District of California shall have jurisdiction and venue over all Disputes
between the parties that are permitted to be brought in a court of law pursuant
to Article 6 above.
7
11
Section 8.7 Descriptive Headings. The headings contained in this
Agreement, in any Exhibit or Schedule hereto and in the table of contents to
this Agreement are for reference purposes only and shall not affect in any way
the meaning or interpretation of this Agreement. Any capitalized term used in
any Exhibit or Schedule but not otherwise defined therein, shall have the
meaning assigned to such term in this Agreement. When a reference is made in
this Agreement to an Article or a Section, Exhibit or Schedule, such reference
shall be to an Article or Section of, or an Exhibit or Schedule to, this
Agreement unless otherwise indicated.
Section 8.8 Notices. Notices, offers, requests or other communications
required or permitted to be given by either party pursuant to the terms of this
Agreement shall be given in writing to the respective parties to the following
addresses:
if to MAG: Mercury Air Group, Inc.
5456 McConnell Avenue
Los Angeles, California 90066
Attention: Joseph Czyzyk, Chief Executive Officer
Fax: (310) 827-0650
Copy to: McBreen & Kopko
20 North Wacker Drive, Suite 2520
Chicago, Illinois 60606
Attention: Frederick H. Kopko, Jr.
Fax: (312) 332-2657
if to MercFuel: MercFuel, Inc.
5456 McConnell Avenue
Los Angeles, California 90066
Attention: Chief Executive Officer
Fax: (310) 827-0650
Copy to: McBreen & Kopko
20 North Wacker Drive, Suite 2520
Chicago, Illinois 60606
Attention: Frederick H. Kopko, Jr.
Fax: (312) 332-2657
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non-performance or renewal shall be sent by hand delivery, recognized
overnight courier or, within the United States, may also be sent via certified
mail, return receipt requested. All other notices may also be sent by fax,
confirmed by first class mail. All notices shall be deemed to have been given
and received on the earlier of actual delivery or three (3) days from the date
of postmark.
Section 8.9 Nonassignability. Neither party may, directly or indirectly,
in whole or in part, whether by operation of law or otherwise, assign or
transfer this Agreement, without the other party's prior written consent, and
any attempted assignment, transfer or delegation without
8
12
such prior written consent shall be voidable at the sole option of such other
party. Notwithstanding the foregoing, each party (or its successive assignees or
transferees hereunder) may, without such consent, assign this Agreement to an
entity that succeeds to all or substantially all of the business or assets of
such party as long as such Person agrees to accept all of the terms set forth
herein; provided, however, that the rights and obligations set forth in Section
3.1 may not be assigned or transferred in any event (except in the case of a
reincorporation of such party in another state). Without limiting the foregoing,
this Agreement will be binding upon and inure to the benefit of the parties and
their permitted successors and assigns.
Section 8.10 Severability. If any term or other provision of this
Agreement is determined by a court, administrative agency or arbitrator to be
invalid, illegal or incapable of being enforced by any rule of law or public
policy, all other conditions and provisions of this Agreement shall nevertheless
remain in full force and effect so long as the economic or legal substance of
the transactions contemplated hereby is not affected in any manner materially
adverse to either party. Upon such determination that any term or other
provision is invalid, illegal or incapable of being enforced, the parties hereto
shall negotiate in good faith to modify this Agreement so as to effect the
original intent of the parties as closely as possible in an acceptable manner to
the end that the transactions contemplated hereby are fulfilled to the fullest
extent possible.
Section 8.11 Failure or Indulgence Not Waiver; Remedies Cumulative. No
failure or delay on the part of either party hereto in the exercise of any right
hereunder shall impair such right or be construed to be a waiver of, or
acquiescence in, any breach of any representation, warranty or agreement herein,
nor shall any single or partial exercise of any such right preclude other or
further exercise thereof or of any other right. All rights and remedies existing
under this Agreement are cumulative to, and not exclusive of, any rights or
remedies otherwise available.
Section 8.12 Amendment. No change or amendment will be made to this
Agreement except by an instrument in writing signed on behalf of each of the
parties to such agreement.
Section 8.13 Counterparts. This Agreement, including the Ancillary
Agreements and the Exhibits and Schedules hereto and thereto and the other
documents referred to herein or therein, may be executed in counterparts, each
of which shall be deemed to be an original but all of which shall constitute one
and the same agreement.
WHEREFORE, the parties have signed this Master Technology Ownership and
License Agreement effective as of the date first set forth above.
MERCURY AIR GROUP, INC.
By:
-------------------------------------------
Joseph Czyzyk, Chief Executive Officer
9
13
MERCFUEL, INC.
By:
--------------------------------
Chief Executive Officer
10