LICENSE AGREEMENT
This License Agreement (this "Agreement") is made effective as of
January 13, 2000 (the "Effective Date") by and between Amerifit Nutrition, Inc.,
a Delaware corporation with its principal place of business at 166 Highland Park
Drive, Bloomfield, Connecticut 06002 ("Licensor"), and Optim Nutrition, Inc., a
Utah corporation and a wholly-owned subsidiary of Biomune Systems, Inc., and
with its principal place of business at 2401 S. Foothill Drive, Salt Lake City,
Utah 84109 ("Licensee"). Licensor and Licensee are each hereafter referred to
individually as a "Party" and together as the "Parties".
WHEREAS, Licensor has transferred to Licensee certain assets related to
its NiteBite Product pursuant to an Asset Purchase Agreement of even date
herewith (the "Purchase Agreement"); and
WHEREAS, in connection with such acquisition, Licensor has agreed to
license to Licensee, on an exclusive basis with respect to the "Market" defined
herein and on a non-exclusive basis elsewhere, a certain Trademark in accordance
with the terms of this Agreement.
NOW, THEREFORE, in consideration of the mutual covenants contained
herein, and for other good and valuable consideration, including the
consideration received by Licensor pursuant to the Purchase Agreement, the
receipt and adequacy of which is hereby acknowledged, the Parties hereby agree
as follows:
1. DEFINITIONS
Whenever used in the Agreement with an initial capital letter, the
terms defined in this Section 1 shall have the meanings specified.
1.1 "Affiliate" means any corporation, firm, limited liability
company, partnership or other entity, which directly or indirectly controls
or is controlled by or is under common control with a Party to this Agreement.
"Control" means ownership, directly or through one or more Affiliates, of more
than fifty percent (50%) of the shares of stock entitled to vote for the
election of directors, in the case of a corporation, or more than fifty percent
(50%) of the equity interests in the case of any other type of legal entity,
status as a general partner in any partnership, or any other arrangement whereby
a Party controls or has the right to control the Board of Directors or
equivalent governing body of a corporation or other entity.
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1.2 "Market" means the market for timed-release glucose products
for persons with diabetes or hypoglycemia.
1.2 "Product" has the meaning set forth in the Purchase Agreement,
and includes future modified versions of such Product.
1.3 "Term" has the meaning set forth in Section 4.1.
1.4 "Territory" means worldwide.
1.5 "Trademark" means the mark "Timed-Release Glucose Bar(TM)".
2. LICENSE GRANT
2.1. License Grant. Licensor hereby grants to Licensee a perpetual
(subject to termination under Section 3 below), royalty-free license, with the
right to grant sublicenses as provided in Section 2.2, to use the Trademark
within the Territory in connection with the manufacturing, marketing and sale of
Products. This license shall be exclusive with respect to the Market for a
period of ten (10) years from the Effective Date. Licensor shall not itself
utilize the Trademark for any product within the Market during such period, and
shall not authorize others to use the Trademark within the Market during such
period. In all other markets, this license shall be non-exclusive.
2.2 Sublicense Rights. Licensee shall have the right to sublicense
the rights granted to it under Section 2.1 of this Agreement in whole or in part
to its Affiliates and to Licensee's other sublicensees and distributors with
respect to the Product, to use in connection with their sales and distributions
of the Product.
3. TERM AND TERMINATION
3.1. Term. This Agreement and the licenses granted hereunder shall
continue until terminated as provided in this Section 3.
3.2 Termination Provisions.
(a) This Agreement and the licenses granted herein may be
terminated by Licensor upon any breach by Licensee of any material obligation
or condition, effective sixty (60) days after giving written notice to Licensee
of such termination, which notice shall describe such breach in reasonable
detail, and opportunity to cure the breach. The foregoing notwithstanding, if
the default or breach is cured or shown to be non-existent within the aforesaid
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or sixty (60) day period, the notice shall be deemed automatically withdrawn and
of no effect.
3.3 Termination by Licensee. Licensee may terminate this
Agreement, and the rights and obligations hereunder, in its sole discretion at
any time by giving written notice thereof to Licensor. Such termination shall be
effective fifteen (15) days following the date such notice is received by
Licensor and shall have all consequences as set forth in Section 3.4 and 3.6
below.
3.4 Effect of Termination. Upon termination of this Agreement
under Section 3.2 or Section 3.3, Licensee shall cease all use of the Trademark
and all relevant licenses and sublicenses granted by Licensor to Licensee
hereunder shall terminate and Licensee shall promptly transfer to Licensor or
destroy all documents, instruments, records and data relevant to the use of the
Trademark.
3.5 Remedies. If either Party shall fail to perform or observe or
otherwise breaches any of its material obligations under this Agreement, in
addition to any right to terminate this Agreement, the non-defaulting Party may
elect to obtain other relief and remedies available under law.
3.6 Surviving Provisions. Notwithstanding any provision herein to
the contrary, the rights and obligations set forth in Articles 3, and Sections
4.1, 4.2, 4.3, 4.4, 4.6, 4.7, and 4.17 hereof shall survive the expiration
or termination of the Term of this Agreement.
4. MISCELLANEOUS
4.1 Licensor Representations. Licensor represents and warrants
that: (a) the execution and delivery of this Agreement and the performance of
the transactions contemplated hereby have been duly authorized by all
appropriate Licensor corporate action; (b) Licensor is under no obligation
which is inconsistent with this Agreement; (c) Licensor is the owner of the
Trademark and that, to the best of its knowledge, it has the free and
unencumbered right to license the Trademark to Licensee as provided hereunder;
and (d) to the best of Licensor's knowledge, the Trademark does not infringe
the rights of any third party.
4.2 Licensee Representations. Licensee represents and warrants
that: (a) the execution and delivery of this Agreement and the performance of
the transactions contemplated hereby have been duly authorized by all
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appropriate Licensee corporate action; and (b) Licensee is under no obligation
which is inconsistent with this Agreement.
4.3 Limitation of Warranties.
EXCEPT AS SET FORTH IN SECTIONS 4.1 AND 4.2, THE PARTIES MAKE NO REPRESENTATIONS
AND EXTEND NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED. THERE ARE NO
EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE, OR ANY OTHER EXPRESS OR IMPLIED WARRANTIES.
4.4 Liability. NOTWITHSTANDING ANYTHING ELSE IN THIS AGREEMENT
OR OTHERWISE, THE PARTIES WILL NOT BE LIABLE WITH RESPECT TO ANY SUBJECT MATTER
OF THIS AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER
LEGAL OR EQUITABLE THEORY FOR (I) ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL OR
PUNITIVE DAMAGES OR LOST PROFITS OR (II) COST OF PROCUREMENT OF SUBSTITUTE
GOODS, LICENSED TECHNOLOGY OR SERVICES.
4.5 Trademark Enforcement. Licensor may, in its sole discretion,
(a) take all reasonable measures, including without limitations bringing civil
actions for trademark infringement, to stop the use of marks which, in its sole
judgment, are the same as or confusingly similar to the Trademark and (b) take
all reasonable measures, including without limitations bringing inter partes
proceedings in the United States Patent and Trademark Office, to prevent the
registration of marks which, in its sole judgment, are the same as or
confusingly similar to the Trademark. Licensor shall have the right to bring all
such actions involving the Trademark and any award received in any such actions
shall belong solely to Licensor. Licensor agrees to take such actions as are
reasonably requested by Licensee to require third parties who are using the
Trademark within the Market during the term of Licensee's exclusive license to
cease such use, including making written demands to cease and desist such use;
provided that Licensor shall not be required to bring legal action against such
infringing users. However, if Licensor declines to bring any such action within
thirty (30) days after Licensee's written request, Licensee shall have the right
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to bring such an action in order to protect the exclusivity of its license with
respect to the Market. Any award received in any such action brought by Licensee
shall belong solely to Licensee.
4.6 Notices. Any notices, requests, deliveries, approvals or
consents required or permitted to be given under this Agreement to Licensee or
Licensor shall be in writing and shall be personally delivered or sent by
telecopy (with written confirmation to follow via United States first class
mail), overnight courier providing evidence of receipt or certified mail,
return receipt requested, postage prepaid, in each case to the respective
address specified below (or to such address as may be specified in writing to
the other Party hereto):
If to Licensor:
Mr. Peter J. Vitulli
Amerifit Nutrition, Inc.
166 Highland Park Drive
Bloomfield, CT 06002
With a copy to:
Mintz, Levin, Cohn, Ferris,
Glovsky & Popeo, P.C.
One Financial Center
Boston, MA 02111
Attn: Douglas A. Zingale
If to Licensee:
Randy E. Olshen
Optim Nutrition, Inc.
2401 S. Foothill Dr.
Salt Lake City, UT 84109
With a copy to:
Kevin R. Pinegar
Durham Jones & Pinegar
50 South Main, Suite 850
Salt Lake City, UT 84044
Such notices shall be deemed to have been sufficiently given on: (a)
the date sent if delivered in person or transmitted by telecopy, (b) the next
business day after dispatch in the case of overnight courier or (c) five (5)
business days after deposit in the U.S. mail in the case of certified mail.
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4.7 Governing Law. The Parties agree: (i) this Agreement will be
construed, interpreted and applied in accordance with the laws of the State of
Utah (excluding its body of law controlling conflicts of law); (ii) if any
dispute arises concerning this Agreement, such action shall be brought in a
state or federal court in the state in which the defendant's principal office is
located (i.e., Utah court if Licensee is the defendant and Connecticut court if
the Licensor is the defendant), and such court shall have exclusive jurisdiction
over any dispute concerning this Agreement and each Party hereby consents to the
personal jurisdiction of such court; and (iii) in the event that a dispute shall
arise concerning this Agreement, the prevailing Party shall be entitled to
recover from the non-prevailing Party all attorneys' fees and costs incurred by
the prevailing Party in connection with such dispute, regardless of whether such
dispute results in the filing of a lawsuit.
4.8 Limitations. Except as set forth elsewhere in this Agreement
or in a written agreement between the Parties, neither Party grants to the other
Party any right or license to any of its intellectual property.
4.9 Entire Agreement. This is the entire Agreement between the
Parties with respect to the subject matter herein. No modification shall be
effective unless in writing and signed by the Parties.
4.10 Waiver. The terms or conditions of this Agreement may be
waived only by a written instrument executed by the Party waiving compliance.
The failure of either Party at any time or times to require performance of any
provision hereof shall in no manner affect its rights at a later time to enforce
the same. No waiver by either Party of any condition or term shall be deemed as
a continuing waiver of such condition or term or of another condition or term.
4.11 Headings. Section and subsection headings are inserted for
convenience of reference only and do not form part of this Agreement.
4.12 Assignment. This Agreement is binding upon and shall inure to
the benefit of the parties and their respective successors, representatives
and assigns. Licensee may assign this Agreement and Licensee's rights and
obligations hereunder to any third party in connection with a sale or transfer
of Licensee's rights in the Product to such third party; provided that Licensee
gives Licensor prompt written notice of such assignment.
4.13 Force Majeure. Neither Party shall be liable for failure of
or delay in performing obligations set forth in this Agreement, and neither
shall be deemed in breach of its obligations, if such failure or delay is
due to natural disasters or any causes beyond the reasonable control of such
Party. In event of such force majeure, the Party affected thereby shall use
reasonable efforts to cure or overcome the same and resume performance of its
obligations hereunder.
4.14 Construction. The Parties hereto acknowledge and agree that:
(i) each Party and its counsel reviewed and negotiated the terms and provisions
of this Agreement and have contributed to its revision; (ii) the rule of
construction to the effect that any ambiguities are resolved against the
drafting Party shall not be employed in the interpretation of this Agreement;
and (iii) the terms and provisions of this Agreement shall be construed fairly
as to all Parties hereto and not in a favor of or against any Party, regardless
of which Party was generally responsible for the preparation of this Agreement.
4.15 Severability. If any provision(s) of this Agreement are or
become invalid, are ruled illegal by any court of competent jurisdiction or are
deemed unenforceable under then current applicable law from time to time in
effect during the Term hereof, it is the intention of the Parties that the
remainder of this Agreement shall not be affected thereby provided that a
Party's rights under this Agreement are not materially affected. The Parties
hereto covenant and agree to renegotiate any such term, covenant or application
thereof in good faith in order to provide a reasonably acceptable alternative
to the term, covenant or condition of this Agreement or the application
thereof that is invalid, illegal or unenforceable, it being the intent of the
Parties that the basic purposes of this Agreement are to be effectuated.
4.16 Status. Nothing in this Agreement is intended or shall be
deemed to constitute a partner, agency, employer-employee, or joint
venture relationship between the Parties.
4.17 Indemnification.
(a) Licensor shall indemnify, defend and hold harmless Licensee,
its affiliates and their respective directors, officers, employees, and agents
and their respective successors, heirs and assigns (the "Licensee Indemnitees"),
against any liability, damage, loss or expense (including reasonable attorneys'
fees and expenses of litigation) incurred by or imposed upon the Licensee
Indemnitees, or any of them, in connection with any claims, suits, actions,
demands or judgments of third parties arising out of any inaccuracy in
Licensor's representations and warranties under Section 4.1. The Licensee
Indemnitees shall promptly notify Licensor of any action or claim for which they
are to be indemnified hereunder and Licensor shall have the sole right to
defend, settle or compromise any such claim or action.
(b) Licensee shall indemnify, defend and hold harmless Licensor,
its Affiliates and their respective directors, officers, employees, and agents
and their respective successors, heirs and assigns (the "Licensor Indemnitees"),
against any liability, damage, loss or expense (including reasonable attorneys'
fees and expenses of litigation) incurred by or imposed upon the Licensor
Indemnitees, or any of them, in connection with any claims, suits, actions,
demands or judgments of third parties arising out of any inaccuracy in
Licensee's representations and warranties under Section 4.2. The Licensor
Indemnitees shall promptly notify Licensee of any action or claim for which they
are to be indemnified hereunder and Licensee shall have the sole right to
defend, settle or compromise any such claim or action.
4.18 Further Assurances. Each Party agrees to execute,
acknowledge and deliver such further instructions, and to do all such other
acts, as may be necessary or appropriate in order to carry out the purposes
and intent of this Agreement.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be
executed by their duly authorized representative in two (2) originals.
Amerifit Nutrition, Inc. Optim Nutrition, Inc.
By: /s/ Peter J. Vitulli By:
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Peter J. Vitulli, President and CEO Randy E. Olshen, President
Date: Date:
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