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