TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT (this "Agreement") is made and entered
into as of March 30, 1998 (the "Effective Date"), by and between Harnischfeger
Technologies, Inc., a Delaware corporation ("Licensor"), and Morris Material
Handling, Inc., a Delaware corporation ("Licensee").
WHEREAS, Affiliates of Licensor and Licensee are parties to that certain
Recapitalization Agreement made and entered into as of January 28, 1998, as
amended (the "Recapitalization Agreement"), pursuant to which this Agreement is
made and attached as Exhibit A.
WHEREAS, Licensee acknowledges and agrees that Licensor owns all right,
title and interest in and to the Licensed Trademarks (as hereinafter defined);
and
WHEREAS, Licensee desires to acquire from Licensor, and Licensor desires
to grant to Licensee, a sole and exclusive license to use the Licensed
Trademarks for the limited purposes set forth herein.
NOW, THEREFORE, in consideration of the promises and mutual covenants
hereinafter set forth and for other good and valuable consideration, the parties
hereto agree as follows:
1 DEFINITIONS
1.1 General. Any term used herein with initial capital letters and not
otherwise defined herein shall have the meaning ascribed to such term in the
Recapitalization Agreement.
1.2 EBITDA. The term "EBITDA" shall mean, with respect to any particular
fiscal period, net income before interest, taxes, depreciation and amortization
for such period, calculated in accordance with Generally Accepted Accounting
Principles used in the preparation of Audited Financial Statements. The
calculation of EBITDA in respect of any particular fiscal period shall be
discrete and without regard to such results of operations in any other preceding
or subsequent fiscal period.
1.3 Licensed Equipment. The term "Licensed Equipment" shall mean Licensed
Original Equipment and Licensed Post-Original Equipment and Services,
collectively.
1.4 Licensed Original Equipment. The term "Licensed Original Equipment"
shall mean original industrial cranes, hoists, winches, and other related types
of industrial "through-the-air" material handling equipment; provided, however,
that "Licensed Original Equipment" shall not include mining-related material
handling equipment or any other material handling equipment intended to be moved
from work-site to work-site on a regular basis.
1.5 Licensed Post-Original Equipment and Services. The term "Licensed
Post-Original Equipment and Services" shall mean aftermarket products
(including repair parts, spare
parts and modernizations) and services (including inspection, repair and
maintenance) related to Licensed Original Equipment.
1.6 Licensed Trademarks. The term "Licensed Trademarks" shall mean the
trade names, trademarks and service marks "P&H" and "MAGNETORQUE," in any form
or design used in the MHE Business as of the Closing Date and any other form or
design, in each case consistent with the requirements of Section 5 of this
Agreement, whether or not registered, and all registrations and applications to
register in any country such trade name, trademark or service mark owned by
Licensor, including but not limited to those set forth on Exhibit 1 hereto.
1.7 Net Sales Price. The term "Net Sales Price" shall mean Licensee's or
its Affiliates' net selling price to any unaffiliated third party after the
deduction of normal trade and cash discounts, returns accepted for credit and,
if separately itemized, applicable sales taxes, customs, duties and freight
charges.
2 LICENSE
2.1 Grant.
2.1.1 Licensed Original Equipment. Subject to the terms and
conditions set forth in this Agreement, Licensor hereby grants to Licensee, and
Licensee hereby accepts, a sole and exclusive, worldwide license to use the
Licensed Trademarks on or in connection with the manufacture, distribution,
marketing, advertising, promotion and sale of Licensed Original Equipment.
2.1.2 Licensed Post-Original Equipment and Services. Subject to the
terms and conditions set forth in this Agreement, Licensor hereby grants to
Licensee, and Licensee hereby accepts, a sole and exclusive, worldwide license
to use the Licensed Trademarks on or in connection with the manufacture,
distribution, provision, marketing, advertising, promotion and sale of Licensed
Post-Original Equipment and Services.
2.2 Sublicenses. Licensee shall have the right to sublicense any of its
rights under this Agreement to any of its Affiliates and distributors according
to terms and conditions approved in writing by Licensor, which approval shall
not be unreasonably withheld. Excluding services from this limitation, any
sublicenses granted to Licensee's distributors shall be limited to use of the
Licensed Trademarks only in connection with Licensed Equipment manufactured by
and sold to such distributors by Licensee or its Affiliates at their respective
then-current normal prices. Licensee shall have no right to sublicense any of
its rights under this Agreement to any Person other than its Affiliates and
distributors, except with the prior written consent of Licensor and according to
terms and conditions approved in writing by Licensor. All sublicenses granted
under this Section 2.2 shall immediately terminate upon expiration or
termination of this Agreement for any reason whatsoever. To the extent that any
of Licensee's Affiliates or distributors are licensed, as of the Closing Date,
to use the Licensed Trademarks in connection with Licensed Equipment, Licensee
shall have the right to grant sublicenses to such Affiliates and distributors
under the same terms and conditions under which such Affiliates and distributors
are licensed as of the Closing
Date, provided that: (i) such licenses are in writing or reduced to writing
within ninety (90) days following the Closing Date; (ii) Licensee uses its best
efforts to modify such sublicenses to the extent necessary to make them
consistent with this Agreement; and (iii) Licensee terminates any such
sublicenses that are inconsistent with this Agreement as soon as permitted by
the terms and conditions of such sublicenses.
2.3 Limitations. No rights or licenses, express or implied, other than
those granted in Sections 2.1 and 2.2 of this Agreement, are granted by this
Agreement. The rights granted in Sections 2.1 and 2.2 of this Agreement extend
only to the Licensed Equipment and the Licensed Trademarks. Except as licensed
hereunder, Licensee shall not use any term, phrase or design that is confusingly
similar to, or a colorable imitation or translation of the Licensed Trademarks,
or any portion of the Licensed Trademarks, in any manner whatsoever, other than
as used in the MHE Business on actual Licensed Equipment in existence as of the
Closing Date, but only with respect to such actual Licensed Equipment in
existence as of the Closing Date.
2.4 Reservation of Rights. Licensor expressly reserves the right to use
and license the Licensed Trademarks anywhere in the world for any purpose other
than on or in connection with the manufacture, distribution, provision,
marketing, advertising, promotion or sale of Licensed Equipment.
3 OWNERSHIP
3.1 Licensor's Ownership. Licensee acknowledges and agrees that Licensor
is the owner of all right, title and interest in and to the Licensed Trademarks
(in any form or embodiment), and in and to any applications for registrations
and registrations thereof, and is also the owner of the goodwill associated with
or which shall become associated with the Licensed Trademarks in connection with
the business and goods in relation of which the Licensed Trademarks has been, is
or shall be used. Licensee acknowledges and agrees that the Licensed Trademarks
is famous, well-known and internationally recognized. Licensee shall at any
time, whether during or after the term of this Agreement, execute any documents
reasonably required by Licensor to confirm Licensor's ownership rights. Licensor
represents for the benefit of Licensee that it has not granted any licenses to
any third parties with respect to the Licensed Trademarks with respect to the
Licensed Equipment. Licensee acknowledges and agrees that it has received copies
of all of the licenses and amendments thereto set forth on Exhibit 2 hereto and
that those licenses are consistent with the foregoing representation made by
Licensor.
3.2 Licensee's Use. Licensee acknowledges and agrees that all use of the
Licensed Trademarks by Licensee shall inure to the benefit of Licensor and
hereby assigns any and all right, title or interest in or to the Licensed
Trademarks and all the goodwill associated therewith that may accrue to the
benefit of, or be acquired by, Licensee as a result of its exercise of the
rights and licenses granted pursuant to this Agreement or otherwise. Sales by
Licensee of Licensed Equipment in connection with the Licensed Trademarks shall
be deemed to have been made by Licensor for purposes of trademark registrations
of the Licensed Trademarks and all uses of the Licensed Trademarks by Licensee
shall inure to the benefit of Licensor for such purposes.
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3.3 Licensor Representation as to Ownership. Licensor represents that it
is the owner of the Licensed Trademarks and that, to the Knowledge of the
Specified Employees, there are no third party rights that are inconsistent with
the license being granted herein to Licensee.
3.4 Goodwill. Any reference to goodwill hereunder shall only mean the
consumer recognition or drawing power of a trade name, trademark or service
mark; provided that nothing in this Agreement shall entitle Licensor (or any of
its Affiliates) to any of Licensee's customer lists or to represent to customers
of Licensee that the business of Licensee is or was that of Licensor.
4 QUALITY CONTROL
4.1 Quality of Licensed Equipment. Licensee recognizes the importance of
uniformity of the goods and services in connection with the Licensed Trademarks
and maintenance of the high quality of workmanship, service and materials and of
consistency in the merchandising, promotion and sale of such goods and services.
Licensee represents, warrants and covenants that all Licensed Equipment
manufactured, distributed, provided, marketed, advertised, promoted or sold by
Licensee in connection with the Licensed Trademarks or bearing the Licensed
Trademarks shall strictly conform to quality standards that are substantially
equivalent to those standards used in the MHE Business as of the Closing Date.
Licensor shall have the right, at any time and for good cause, to modify or
supplement the quality standards to be maintained by Licensee in a manner
consistent with the then-existing standards by providing reasonable advance
written notice thereof to Licensee, provided that complying with such
modifications or supplementations will not impose undue hardship on Licensee.
4.2 Inspections. Licensor and its duly authorized representatives shall
have the right to inspect, upon reasonable written notice and during normal
business hours (unless requested by Licensee to be at other than normal business
hours), each of Licensee's premises one time during each of Licensee's fiscal
quarters during the term of this Agreement for the purpose of ensuring that
Licensee complies with Section 4.1 of this Agreement. Upon Licensor's request,
Licensee shall supply Licensor with all other information necessary to confirm
that Licensee is complying with Section 4.1 of this Agreement.
5 USE OF TRADEMARKS
5.1 Prior Approval Required. Licensee shall not, without Licensor's prior
written consent, which consent shall not be unreasonably withheld, use the
Licensed Trademarks, or any reproduction or variation thereof, in any manner
whatsoever (including advertising and promotion), except as used in the MHE
Business as of the Closing Date in a manner consistent with the requirements of
Section 5 of this Agreement. Licensee shall, at its own expense, submit to
Licensor for Licensor's prior written approval, examples of any proposed
modification or change to the uses of the Licensed Trademarks previously
approved by Licensor.
5.2 Standards. Licensee shall comply with Licensor's written requirements
and
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guidelines for using the Licensed Trademarks, which requirements and guidelines
have been provided by Licensor to Licensee. Such requirements and guidelines
shall include examples of the styles, scripts, colors and devices prescribed by
Licensor. Licensor shall have the right, at any time and for good cause, to
modify or supplement such requirements and guidelines in a manner consistent
with the then-existing requirements or guidelines by providing reasonable
advance written notice thereof to Licensee, provided that complying with such
modifications or supplementations will not impose undue hardship on Licensee.
5.3 Proper Usage. Licensee shall use the Licensed Trademarks in accordance
with generally acceptable proper trademark usage standards. Licensee shall place
all proper trademark notices after the Licensed Trademarks. Licensee shall
strictly comply with all laws and regulations pertaining to the Licensed
Trademarks in force at any time worldwide. Licensee shall not use the Licensed
Trademarks in any manner to disparage Licensor or the reputation of Licensor nor
take any action that will harm or jeopardize the Licensed Trademarks, or
Licensor's ownership thereof, in any way. Licensee shall not use the Licensed
Trademarks as part of a trademark, service mark or corporate name of any
corporation or business organization, except with Licensor's prior written
consent, which consent may be withheld in Licensor's sole discretion. Licensee
shall not use the Licensed Trademarks in connection with any other trademark,
service mark or trade name, except in the manner as presently used in the MHE
Business or except with Licensor's prior written consent, which consent may be
withheld in Licensor's sole discretion.
5.4 Samples. At Licensor's reasonable request and at Licensee's expense,
Licensee shall provide Licensor with copies, photographs or representative
samples of advertising copy, promotional materials or other materials bearing
the Licensed Trademarks.
5.5 Registered User. To the extent required by the laws of any
jurisdiction in which Licensee uses the Licensed Trademarks, Licensee agrees to
execute registered user applications or agreements in a form specified by
Licensor for the purposes of registration of Licensee as a registered user of
the Licensed Trademarks. For this purpose, Licensor shall execute and deliver
any and all documents and instruments as may be required for the purposes of
registration of Licensee as a registered user of the Licensed Trademarks.
6 PROTECTION OF TRADEMARKS
6.1 Validity and Enforceability. Licensee shall not, during the term of
this Agreement or any time thereafter, contest or assist any other party in
contesting the validity or enforceability of or Licensor's ownership of all
right, title and interest in and to the Licensed Trademarks.
6.2 Notice of Infringement. Licensee shall promptly notify Licensor of any
apparent infringement or dilution of the Licensed Trademarks of which Licensee
is aware.
6.3 Enforcement. Licensor, at its sole cost and expense and in its own
name, may
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prosecute and defend any action or proceeding that Licensor deems necessary or
desirable to protect the Licensed Trademarks, including but not limited to
actions or proceedings involving infringement or dilution of the Licensed
Trademarks. Licensee, upon written request by Licensor, shall join Licensor in
any such action or proceeding at Licensor's sole cost and expense. Licensee
shall not commence any action or proceeding alleging infringement or dilution of
the Licensed Trademarks and shall not defend any such action unless it first
makes written demand upon Licensor to do so. Any and all damages recovered in
any action or proceeding commenced by Licensor based on the Licensed Trademarks
shall belong solely and exclusively to Licensor, except to the extent such
damages are based upon infringement of the Licensed Trademarks in connection
with the Licensed Equipment, in which case, Licensee shall be entitled to (a)
the amount of such damages that exceed the total cost to Licensor of bringing
such action or proceeding minus (b) a royalty equal to three-fourths of one
percent (3/4%) of such damages that relate to a period of time during which
royalties were due. With respect to any and all damages recovered in any action
or proceeding commenced by Licensee based on the Licensed Trademarks, Licensor
shall be entitled to (a) the amount of such damages that exceed the total cost
to Licensee of bringing such action or proceeding multiplied by (b) a royalty
rate equal to three-fourths of one percent (3/4%) with respect to such damages
that relate to a period of time during which royalties were due, and if
otherwise, zero.
6.4 Cooperation. Licensee shall cooperate with Licensor in the execution,
filing and prosecution of any trademark applications or renewal documents that
Licensor files for the Licensed Trademarks and, for that purpose, Licensee shall
supply to Licensor from time to time such samples, containers, labels and
similar material as may reasonably be required. Licensee shall reasonably
cooperate with Licensor to do all acts necessary or desirable for maintaining,
renewing, protecting, strengthening, and enforcing the Licensed Trademarks.
Licensor shall, at Licensee's reasonable request and sole expense, in Licensor's
name, apply for new registrations of and renew existing registrations of the
Licensed Trademarks in connection with Licensed Equipment. The foregoing
sentence shall not limit or restrict Licensor's ability to apply for new
registrations or renew existing registrations of the Licensed Trademarks in
connection with Licensed Equipment at its own option and expense.
7 ROYALTIES AND PAYMENT
7.1 Royalties. As compensation to Licensor for all rights granted to
Licensee hereunder, beginning twelve (12) months after the Effective Date and
continuing for a period of ten (10) years thereafter, Licensee shall pay
Licensor a royalty equal to three-fourths of one percent (3/4%) of the total Net
Sales Price of all Licensed Equipment (including newly developed or acquired
goods and services constituting Licensed Equipment) distributed, provided or
sold by Licensee and its Affiliates during such time period, regardless of
whether such Licensed Equipment bears the Licensed Trademarks (including but not
limited to Licensed Equipment distributed, provided or sold under trademarks
other than the Licensed Trademarks). In computing such Net Sales Price, no
deduction shall be made for uncollectible accounts or for any costs associated
with the manufacture, distribution, provision, marketing, advertising, promotion
or sale of Licensed Equipment. Such royalty shall be payable on all such
Licensed Equipment
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manufactured, distributed, provided, marketed, advertised, promoted or sold by
Licensee and its Affiliates even if such manufacture, distribution, provision,
marketing, advertising, promotion or sale is in violation of this Agreement. Any
payment of such royalty shall be without prejudice to Licensor's right to
terminate this Agreement on account of such violation. Only one royalty payment
shall be made as to any given item of Licensed Equipment, provided that such
royalty payment shall be based upon the highest Net Sales Price for such
Licensed Equipment.
7.2 Payment Terms. No more than ninety (90) days following the end of each
of Licensee's fiscal years during which royalty payments are due (the first such
payment to be due January 30, 2000), Licensee shall pay to Licensor all
royalties due and payable for such fiscal year (including partial fiscal years
on a pro rata basis) pursuant to Section 7.1 of this Agreement. All such
payments shall be made in U.S. dollars to the address set forth below or at such
other address or addresses as Licensor may designate in writing from time to
time:
Harnischfeger Technologies, Inc.
3513 Concord Pike, Suite 3001
Wilmington, DE 19803
Attn: Accounts Receivable
7.3 Royalty Deferral. In the event that the EBITDA of Licensee's parent,
MMH Holdings, Inc., a Delaware corporation, for a particular fiscal year, after
deducting the royalty owed for such year, would be less than forty-five million
nine hundred thousand dollars ($45,900,000), Licensee may defer payment of such
royalty for up to two (2) fiscal years from the end of the royalty period to
which such payment relates. Licensee may exercise the right in the preceding
sentence twice during the term of this Agreement; provided, each right shall be
limited exclusively to the royalty payment relating to the current period for
which such right is exercised. Within thirty days of the end of a deferral
period, Licensee shall pay Licensor the deferred royalties plus simple interest
at the rate of twelve (12%) per annum. Notwithstanding anything to the contrary,
no royalty payment shall be deferred for a period of greater than two (2) fiscal
years.
8 ACCOUNTING; BOOKS AND RECORDS
8.1 Accounting. Licensee shall provide to Licensor, within ninety (90)
days after the end of each of its fiscal years during which royalty payments are
due, complete and accurate statements, certified by the chief financial officer
of Licensee as accurate, showing all information necessary to calculate the
total Net Sales Price of all Licensed Equipment distributed, provided or sold by
Licensee and its Affiliates during such fiscal year. For this purpose, Licensee
shall use the form of statement provided by Licensor, or, if no such form is
provided by Licensor, such form or statement as may be reasonably acceptable to
Licensor.
8.2 Books and Records. Licensee shall keep, during each of its fiscal
years during which royalty payments are due and for a period of six (6) months
following the end of the last such fiscal year, accurate books of account and
records covering all transactions relating to this Agreement and all other
records and information necessary to calculate the total Net Sales Price
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of all Licensed Equipment distributed, provided or sold by Licensee and its
Affiliates during each of its fiscal years during which royalty payments are
due. Licensor and its duly authorized representatives, at Licensor's sole cost
and expense, upon reasonable notice, shall have the right, at least twice during
each of Licensee's fiscal years during which royalty payments are due and once
during the six (6) month period following the end of the last such fiscal year,
during normal business hours, to examine such books of account, records and
other information and all other accounts, records, information, materials and
inventory in the possession or under the control of Licensee with respect to the
subject matter of this Agreement. Licensor shall have full and free access
thereto and shall have the right to make copies and extracts therefrom.
8.3 Audit. Once during each of Licensee's fiscal years during which
royalty payments are due and once during the six (6) month period following the
end of the last such fiscal year, upon demand of Licensor with reasonable
notice, Licensee shall, at Licensor's expense, furnish to Licensor a detailed
statement by an independent certified public accountant selected by Licensor
showing all information necessary to calculate the total Net Sales Price of all
Licensed Equipment distributed, provided or sold by Licensee and its Affiliates
during each of Licensee's fiscal years during which royalty payments are due.
8.4 Errors. If as a result of an audit conducted pursuant to Section 8.3
of this Agreement Licensee is required to make additional payments to Licensor
in excess of ten percent (10%) of the total previously paid by Licensee during
Licensee's fiscal year that immediately precedes such audit, Licensee shall
reimburse Licensor for all expenses incurred in connection with such examination
or audit, and interest will accrue from the date such payment was originally due
at one percent (1%) per month or the highest lawful rate, whichever is lower.
9 TERM AND TERMINATION
9.1 Term.
9.1.1 Licensed Original Equipment. The term of the license granted
under Section 2.1.1 of this Agreement shall begin on the Closing Date and,
unless this Agreement is earlier terminated pursuant to Section 9.2 or Section
13.15 of this Agreement, continue until fifteen (15) years after the date of the
earlier to occur of the following: (i) the consummation of a public offering of
Licensee's or its direct or indirect parent's or successors' common stock
(excluding, for purposes hereof, transactions in connection with the Closing);
(ii) the sale of Licensee or its direct parent or successor to any unaffiliated
third party (whether by sale of a majority of stock, sale of a majority of
assets, merger, consolidation or otherwise); or (iii) a Change of Control (as
such term is defined in the Indenture dated March 30, 1998 relating to the
Licensee's 9 1/2% Senior Notes due 2008 (as in effect on the date hereof)).
9.1.2 Licensed Post-Original Equipment and Services. The term of the
license granted under Section 2.1.2 of this Agreement shall begin on the Closing
Date and, unless this Agreement is earlier terminated pursuant to Section 9.2 or
Section 13.15 of this Agreement, continue until twenty two (22) years after the
date of the earlier to occur of the following: (i) the
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consummation of a public offering of Licensee's or its direct or indirect
parent's or successors' common stock (excluding, for purposes hereof,
transactions in connection with the Closing); (ii) the sale of Licensee or its
direct parent to any unaffiliated third party (whether by sale of a majority of
stock, sale of a majority of assets, merger, consolidation or otherwise); or
(iii) a Change of Control (as such term is defined in the Indenture dated March
30, 1998 relating to the Licensee's 9 1/2% Senior Notes due 2008 (as in effect
on the date hereof)).
9.2 Termination for Default. Either party may terminate this Agreement by
written notice at any time following the occurrence of any one or more of the
following events: (i) the other party ceases to do business; (ii) the other
party makes an assignment for the benefit of creditors; or (iii) the other party
materially breaches this Agreement and does not cure such breach within ninety
(90) days after receiving written notice of such breach.
9.3 Effect of Termination. Upon expiration or termination of this
Agreement for any reason whatsoever, Licensee shall, and shall cause all of its
sublicensees to, discontinue immediately all use of the Licensed Trademarks and,
with respect to all materials bearing the Licensed Trademarks, either: (i)
destroy immediately such materials; or (ii) remove the Licensed Trademarks from
such materials or overlabel the Licensed Trademarks appearing on such materials.
Notwithstanding the foregoing, upon termination of this Agreement for any reason
other than Licensee's breach of its obligations set forth in Section 4 of this
Agreement or pursuant to Section 13.15 of this Agreement, Licensee shall have
the right, during the period of nine (9) months following such termination, to
dispose of its inventory of materials, equipment or parts bearing the Licensed
Trademarks existing as of the date of such termination, so long as Licensee
complies with all of the terms and conditions of this Agreement during such nine
(9) month period. Licensee shall also have the right to use the Licensed
Trademarks (in the manner prescribed by this Agreement) to the extent necessary
to comply with the terms and conditions of any definite purchase orders accepted
by Licensee and in existence as of the date of such termination. Licensee shall
have no obligation to retrieve or recall any equipment, parts or material
distributed prior to such expiration or termination. Nothing herein shall
prohibit Licensee or any of its sublicensees from making reference to the fact
that the parts it or they sell or distribute are for P&H equipment, or a
statement to that effect; provided that any such reference or statement does not
infringe Licensor's rights in and to the Licensed Trademarks. An officer of
Licensee shall certify in writing to Licensor that Licensee has complied with
the requirements of this Section 9.3. Licensee shall execute any and all
documents necessary to terminate of record any of Licensee's rights hereunder,
which documents shall be prepared by Licensor at Licensor's expense.
Notwithstanding Licensee's discontinuance of use of the Licensed Trademarks, for
as long as Licensee or its successors are doing business in connection with
Licensed Equipment, Licensor and its Affiliates shall never use, or license
third parties to use, the Licensed Trademarks (or any mark confusingly similar
thereto) in connection with Licensed Equipment after termination or expiration
of this Agreement. Except as set forth above, or as otherwise permitted by law,
upon expiration or termination of this Agreement, Licensee and its Affiliates
shall never use the Licensed Trademarks (or any mark confusingly similar
thereto) in connection with Licensed Equipment at any time after such expiration
or termination.
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10 DISCLAIMER OF WARRANTY
EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, LICENSOR DISCLAIMS ALL
WARRANTIES, EXPRESS OR IMPLIED, WITH REGARD TO THE LICENSED
TRADEMARKS AND THIS AGREEMENT.
11 INDEMNIFICATION AND INSURANCE
11.1 Indemnification by Licensee. Licensee shall indemnify, defend,
protect and forever hold harmless Licensor and each of its Affiliates, and the
shareholders, officers, directors, representatives, partners, members,
employees, agents, successors and assigns of Licensor and each of its Affiliates
from and against all actual damages, losses, liabilities (including, but not
limited to, judgments and settlements entered into in good faith), taxes,
penalties, fines, claims, suits, injunctions, proceedings, liens, demands,
charges, costs and expenses paid or payable to third parties of any kind or
nature (including attorneys' fees and expenses of counsel selected by Licensor)
incurred by Licensor ("Indemnifiable Damages") for which they or any of them
become liable or may incur or be compelled to pay in any action or claim against
them or any of them, for or by reason of any breach of warranty, covenant or
agreement by Licensee contained herein or any acts, whether of omission or
commission, that may be committed or suffered by Licensee or any of its agents,
servants, officers, directors and employees in connection with Licensee's
performance or enjoyment of this Agreement, including without limitation: (i)
the manufacturing, distribution, provision, marketing, advertising, promotion,
sale or use of any Licensed Equipment bearing the Licensed Trademarks or with
which the Licensed Trademarks is associated; or (ii) any use by Licensee of the
Licensed Trademarks, except as set forth in Section 11.2 of this Agreement. The
limitations set forth in Section 12 of this Agreement shall not apply to this
Section 11.1.
11.2 Indemnification by Licensor. Licensor shall indemnify and hold
harmless Licensee, its officers, directors, employees and Affiliates from any
and all liability arising out of any third party suit, action, legal proceeding,
claim or demand, of whatever kind or character, including claims of trademark or
service mark infringement or unfair competition, that the use by Licensee of the
Licensed Trademarks, as authorized and approved by Licensor pursuant to this
Agreement, violates the rights of such third party. Licensor's obligations under
this Section 11.2 shall apply only to those acts that occur during the period
during which royalties are due, and only if: (i) Licensee promptly notifies
Licensor of any claim giving rise to such liability and fully discloses to
Licensor all information relating to such claim; (ii) Licensee provides
reasonable cooperation to Licensor in the defense of all such claims, which
defense costs and expenses, and to the extent that Licensee incurs any legal
expenses that have been approved in writing by Licensor for providing assistance
in the defense of any such claims, shall be Licensor's responsibility; (iii)
Licensee neither acts nor fails to act in such manner as may jeopardize or
compromise such defense or hinder Licensor in providing such defense; and (iv)
the claim is by either (a) a third party licensed by Licensor to use the
Licensed Trademarks other than under any of the licenses set forth on Schedule
4(l)(i) of the Recapitalization Agreement or Exhibit 2 hereto, or (b) any other
third party whose rights the Specified Employees had Knowledge of as of the
Effective Date. The limitations set forth in Section 12 of this Agreement shall
not apply to this
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Section 11.2.
11.3 Insurance. In furtherance of Licensee's covenants contained in
Section 11.1 of this Agreement, Licensee shall maintain in full force and effect
during the term of this Agreement and for a period of five (5) years thereafter
policies of insurance against product liability and other liabilities with
financially sound and reputable insurance companies in at least such amounts,
against at least such risks and with such levels of self-retention as are
usually insured against in the same general area by companies engaged in the
same or similar business and, upon request by Licensor, to provide Licensor with
evidence of such policies.
12 LIMITATION OF LIABILITY
EXCEPT TO THE MINIMUM EXTENT REQUIRED BY APPLICABLE LAW, LICENSOR SHALL NOT BE
LIABLE TO LICENSEE OR ANY THIRD PARTY FOR ANY DIRECT DAMAGES OR FOR ANY SPECIAL,
CONSEQUENTIAL, EXEMPLARY OR INCIDENTAL DAMAGES (INCLUDING BUT NOT LIMITED TO
LOST OR ANTICIPATED REVENUES OR PROFITS) ARISING FROM ANY CLAIM ARISING UNDER OR
RELATING TO THIS AGREEMENT OR THE LICENSED TRADEMARKS, WHETHER SUCH CLAIM IS
BASED ON WARRANTY, CONTRACT, TORT (INCLUDING BUT NOT LIMITED TO NEGLIGENCE AND
STRICT LIABILITY) OR OTHERWISE, EVEN IF AN AUTHORIZED REPRESENTATIVE OF THE
PARTY IS ADVISED OF THE POSSIBILITY OR LIKELIHOOD OF SAME. LICENSEE ACKNOWLEDGES
AND AGREES THAT THE FOREGOING LIMITATION SHALL NOT BE DEEMED OR ALLEGED BY
LICENSEE TO HAVE FAILED OF ITS ESSENTIAL PURPOSE.
13 MISCELLANEOUS
13.1 Amendments and Waivers. No amendment of any provision of this
Agreement shall be valid unless the same shall be in writing and signed by a
duly authorized representative of the party against whom it is being enforced.
No waiver by any party of any default, misrepre sentation, or breach of warranty
or covenant hereunder, whether intentional or not, shall be deemed to extend to
any prior or subsequent default, misrepresentation, or breach of warranty or
covenant hereunder or affect in any way any rights arising by virtue of any
prior or subsequent such occurrence.
13.2 Approvals. Licensee understands that this License may not constitute
all the consents or licenses required in order to manufacture, distribute,
provide, market, advertise, promote or sell the Licensed Equipment.
13.3 Construction. The parties have participated jointly in the
negotiation and drafting of this Agreement. In the event an ambiguity or
question of intent or interpretation arises, this Agreement shall be construed
as if drafted jointly by the parties and no presumption or burden of proof shall
arise favoring or disfavoring any party by virtue of the authorship of any of
the provisions of this Agreement. Any reference to any federal, state, local, or
foreign statute or law
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shall be deemed also to refer to all rules and regulations promulgated
thereunder, unless the context requires otherwise. The word "including" shall
mean including without limitation.
13.4 Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original but all of which
together shall constitute one and the same instrument.
13.5 Dispute Resolution. In the event of a dispute between the parties
arising under or relating to this Agreement, such dispute shall promptly be
resolved in accordance with the provisions for dispute resolution set forth in
the Recapitalization Agreement.
13.6 Entire Agreement. This Agreement together with the Recapitalization
Agreement (including the documents incorporated herein) constitutes the entire
agreement between the parties and supersedes any prior understandings,
agreements or representations by or between the parties, written or oral, that
may have related in any way to the subject matter hereof.
13.7 Governing Law. This Agreement shall be governed by and construed in
accordance with the domestic laws of the State of New York without giving effect
to any choice or conflict of law provision or rule (whether of the State of New
York or any other jurisdiction) that would cause the application of the laws of
any jurisdiction other than the State of New York.
13.8 Headings. The section headings contained in this Agreement are
inserted for convenience only and shall not affect in any way the meaning or
interpretation of this Agreement.
13.9 Incorporation of Exhibits and Schedules. The Exhibits and Schedules
identified in this Agreement are incorporated herein by reference and made a
part hereof.
13.10 No Third Party Beneficiaries. This Agreement shall not confer any
rights or remedies upon any person other than the parties and their respective
successors and permitted assigns.
13.11 Notices. All notices, requests, demands, claims, and other
communications hereunder will be in writing. Any notice, request, demand, claim,
or other communication hereunder shall be deemed duly given if (and then two
business days after) it is sent by registered or certified mail, return receipt
requested, postage prepaid, and addressed to the intended recipient as set forth
below:
If to Licensor: Copy to:
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Harnischfeger Technologies, Inc. Kirkland & Ellis
3513 Concord Pike, Suite 3001 200 East Randolph Drive
Wilmington, DE 19803 Chicago, IL 60601
Attn: President Attn: Keith S. Crow
Telephone No.: (302) 477-0644 Telephone No.:(312) 861-2000
Facsimile No.: (302) 477-0578 Facsimile No.:(312) 861-2200
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If to Licensee: Copy to:
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Morris Material Handling, Inc. Akin, Gump, Strauss, Hauer & Feld,
315 West Forest Hill Avenue L.L.P. Suite 400
Oak Creek, WI 53154 1333 New Hampshire Avenue, N.W.
Attn: General Counsel Washington, D.C. 20036
Telephone No.:(414) 764-8593 Attn: Russell W. Parks, Jr.
Facsimile No.:(414) 764-8594 Telephone No.:(202) 887-4000
Facsimile No.:(202) 887-4288
Any party may send any notice, request, demand, claim or other communication
hereunder to the intended recipient at the address set forth above using any
other means (including personal delivery, expedited courier, messenger service,
telecopy, telex, ordinary mail, or electronic mail), but no such notice,
request, demand, claim, or other communication shall be deemed to have been duly
given unless and until it actually is received by the intended recipient. Any
party may change the address to which notices, requests, demands, claims, and
other communications hereunder are to be delivered by giving the other party
notice in the manner herein set forth.
13.12 Relationship of the Parties. This Agreement does not constitute
Licensee as the agent or legal representative of Licensor or Licensor as the
agent or legal representative of Licensee for any purpose whatsoever. Licensee
is not granted any right or authority to assume or to create any obligation or
responsibility, express or implied, on behalf of or in the name of Licensor or
to bind Licensor in any manner or thing whatsoever; nor is Licensor granted any
right or authority to assume or create any obligation or responsibility, express
or implied, on behalf of or in the name of Licensee or to bind Licensee in any
manner or thing whatsoever. No joint venture or partnership between Licensee and
Licensor is intended or shall be inferred.
13.13 Severability. Whenever possible, each provision of this Agreement
shall be interpreted in such manner as to be effective under applicable law, but
if any provision of this Agreement is held to be prohibited by or invalid under
applicable law, such provision shall be ineffective only to the extent of such
prohibition or invalidity, without invalidating the remainder of such provision
or the remaining provisions of this Agreement.
13.14 Submission to Jurisdiction. Each of the parties consents to the
exclusive jurisdiction of the federal courts of the Eastern District of
Wisconsin for any legal action, suit, or proceeding arising out of or in
connection with this Agreement, and agree that any such action, suit, or
proceeding may be brought only in such courts. If such forum is not available,
each of the parties consents to the exclusive jurisdiction of the Milwaukee
County Circuit Court for any such action, suit or proceeding. Each of the
parties further waives any objection to the laying of venue for any such suit,
action, or proceeding in such courts. Each party agrees to accept and
acknowledge service of any and all process that may be served in any suit,
action, or proceeding. Each party agrees that any service of process upon it
mailed by registered or certified mail, return receipt requested to such party
at the address provided in Section 13.11 of this Agreement shall be deemed in
every respect effective service of process upon such party in any such suit,
action,
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or proceeding. Each party agrees to waive any right it might have to a trial by
jury in any such suit, action or proceeding.
13.15 Succession and Assignment. This Agreement shall be binding upon and
inure to the benefit of the parties named herein, their respective Affiliates
and their permitted successors and assigns. Licensee (and any permitted
successor or assign) may assign or transfer its rights hereunder only as part of
a merger or consolidation with, or the sale, exchange or other transfer of all
or substantially all of its assets to, any Person other than a Licensor
Competitor (as defined below). Any attempted assignment made in violation of
this Agreement shall be null and void. As used in this Agreement, the term
"Licensor Competitor" shall mean any Person that engages in a business or
enterprise that competes on a significant level with (i) any business or
enterprise conducted by HII or its Subsidiaries immediately after the Closing
Date or (ii) any other business or enterprise conducted by HII or its
Subsidiaries in the future (other than as a result of the acquisition of HII by
a third party) that accounts for at least twenty percent (20%) of HII's gross
revenue on a consolidated basis. If a Licensor Competitor (x) acquires more than
fifty percent (50%) of Licensee's or its direct or indirect parent's voting
stock (or more than fifty percent (50%) of the voting stock of a permitted
successor or assign) or (y) acquires, directly or indirectly, the power to
direct or cause the direction of Licensee's (or a permitted successor's or
assign's) management or policies (whether through ownership of securities or
partnership or other ownership interests, by contract or otherwise), Licensee
shall immediately notify Licensor in writing of such acquisition or this
Agreement shall automatically terminate and be of no further force and effect.
Licensor shall have the right to terminate this Agreement, at its sole
discretion, within thirty (30) days after receiving such notice.
13.16 Survival. To the extent the terms of this Agreement provide for
rights, interests, duties, claims, undertakings or obligations subsequent to the
termination or expiration of this Agreement, the terms of this Agreement shall
survive such termination or expiration, including but not limited to the terms
contained in Articles 8, 9, 10, 11 and 12 of this Agreement.
13.17 Confidentiality and Use Restriction. Any confidential information,
drawings, specifications and technical data furnished to Licensor under this
Agreement (including non-public information learned by Licensor as a result of
Licensor's inspection right under this Agreement) shall remain the property of
Licensee, shall be used by Licensor only for the purpose of exercising its
rights under this Agreement, and shall be retained in confidence by Licensor.
Licensor shall use the same degree of care as it uses to protect its own
confidential information of a similar nature, but no less than a reasonable
degree of care, to prevent the unauthorized use, dissemination or publication of
such confidential information, drawings, specifications and technical data. No
such confidential information, drawings, specifications or technical data shall
be copied or, except as set forth above, otherwise used without the prior
written consent of Licensee.
* * * * *
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IN WITNESS WHEREOF, the parties have executed this Agreement as of
the date first above written.
MORRIS MATERIAL HARNISCHFEGER TECHNOLOGIES, INC.
HANDLING, INC.
By: /s/ David D. Smith By: /s/ John P. Garniewski, Jr.
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Name: David D. Smith Name: John P. Garniewski, Jr.
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Title: Vice President Title: President
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