EXHIBIT 10.8
EXECUTION COPY
INTELLECTUAL PROPERTY AGREEMENT
BETWEEN
ALCAN INTERNATIONAL LIMITED
AND
NOVELIS INC.
TABLE OF CONTENTS
1.0 PREAMBLE............................................................... 1
2.0 DEFINITIONS............................................................ 1
3.0 TRANSFER OF TECHNOLOGY................................................. 7
4.0 LICENSE RIGHTS GRANTED................................................. 10
5.0 EXCLUDED TECHNOLOGY.................................................... 12
6.0 TERMINATION OF PARTICIPATION IN JTA.................................... 14
7.0 PROTECTION OF INFORMATION.............................................. 15
8.0 TERM AND TERMINATION................................................... 17
9.0 SURVIVAL OF OBLIGATIONS................................................ 19
10.0 REPRESENTATIONS....................................................... 19
11.0 DISCLAIMER............................................................ 19
12.0 TRADEMARK, TRADE NAME AND LOGO........................................ 20
13.0 NON-WAIVER............................................................ 20
14.0 NO PARTNERSHIP, JOINT VENTURE......................................... 20
15.0 FURTHER ASSURANCES, CONSENTS, ETC..................................... 21
16.0 NOTICES............................................................... 21
17.0 ASSIGNMENT............................................................ 22
18.0 INDEMNIFICATION....................................................... 22
19.0 ENTIRE AGREEMENT, AMENDMENTS.......................................... 24
20.0 DISPUTE RESOLUTION.................................................... 25
21.0 MISCELLANEOUS......................................................... 25
22.0 GOVERNING LAW......................................................... 26
INTELLECTUAL PROPERTY AGREEMENT
This Intellectual Property Agreement is entered into with effect as of the
Effective Date.
BETWEEN: Alcan International Limited, a Canadian corporation having its head
office at 1188 Sherbrooke Street West, Montreal, Quebec, Canada
(hereinafter referred to as "ALCANINT")
AND: Novelis Inc., a Canadian corporation having its registered office at
1188 Sherbrooke Street West, Montreal, Quebec, Canada (hereinafter
referred to as "NOVELIS ") acting as principal and as agent for other
members of Novelis Group, as herein provided.
WHEREAS, Alcanint is a wholly-owned subsidiary of Alcan; and
WHEREAS, Alcan Inc. and Novelis have entered into the Separation Agreement with
effect as of the Effective Date, which provides, among other things, for the
transfer of certain assets from Alcan to Novelis and the assumption by Novelis
of certain liabilities in connection with the distribution of common shares of
Novelis to Alcan shareholders and the execution and delivery of certain other
agreements, including this Agreement; and
WHEREAS Alcanint owns and manages certain technology on behalf of and for the
benefit of Alcan and its Affiliates and desires to transfer or license to
Novelis certain rights in technology owned by it;
WHEREAS a further purpose of this Agreement is to achieve compliance with
regulatory requirements in respect of the separation of certain aluminum rolling
assets from Alcan in a manner which allows them to continue to be viable;
NOW THEREFORE, in consideration of the foregoing and the mutual agreements set
forth below, and other good and valuable consideration, the receipt and adequacy
of which is hereby acknowledged, the parties hereto agree as follows:
1.0 PREAMBLE
The preamble hereto shall be considered an integral part of this Agreement.
2.0 DEFINITIONS
2.1 "AEROSPACE INDUSTRY" shall mean the production of aircraft,
spacecraft, satellites and similar craft for manned or unmanned
flight;
2.2 "AFFILIATE" shall mean, with respect to any corporation, association
or other business entity, any other entity directly or indirectly
controlling, controlled by or
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under common control with such specified corporation, association or
entity. For purposes of this definition, "control" (including, with
correlative meanings, the terms "controlling," "controlled by" and
"under common control with"), means the possession, directly or
indirectly, of the power to direct or cause the direction of
management or policies, whether through the ownership of voting
securities, by agreement or otherwise; provided, however, that
beneficial ownership of 10% or more of the securities or other
interest entitled to vote generally in the election of directors shall
be deemed to be control;
2.3 "AGREEMENT" shall mean this Intellectual Property Agreement and all
other documents that are made a part hereof;
2.4 "ALCAN" shall mean Alcan Inc., a Canadian corporation;
2.5 "ALCAN GROUP COMPANY" shall mean Alcan or any entity of which a
majority of the total voting power of capital stock or other interests
entitled (without regard to the occurrence of any contingency) to vote
in the election of directors, managers or trustees thereof is at the
time owned or controlled, directly or indirectly, by Alcan;
2.5A "ARRANGEMENT" shall have the meaning ascribed to such term in the
Separation Agreement;
2.6 "AUTOMOTIVE SHEET" shall mean aluminum Sheet products destined or
intended for use in or principally related to the production of inner
and outer body panels (including closures, skin, hoods, deckslids and
fenders) and Sheet-based body-in-white structures for road vehicles;
2.7 "AUTOMOTIVE SHEET PATENTS" shall mean the patents and patent
applications in respect of Automotive Sheet as listed in Appendix ASP;
2.8 "COCAST TECHNOLOGY" shall mean the Technology originally developed by
Wagstaff Inc. and further developed by Alcan Group Companies,
primarily at the Solatens Facility, related to the casting of
composite ingots with distinct regions having different alloy
compositions as generally described in the patents and patent
applications listed in Appendix CCT;
2.9 "DESIGNATED PATENTS" shall mean patents and patent applications owned
by Alcanint and listed in Appendix DP;
2.10 "EFFECTIVE DATE" shall mean the Effective Date as defined in the
Separation Agreement;
2.11 "EXCLUDED TECHNOLOGY" shall mean the Technology described in Section
5.1;
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2.12 "FLEXCAST TECHNOLOGY" shall mean the Technology specific to continuous
casting of a thin strip between two chilled metallic belts as
generally described in the patents and patent applications listed in
Appendix FCT;
2.13 "FLEXSTREME TECHNOLOGY" shall mean the Technology and equipment
designs originally developed by Wagstaff Inc. and further developed by
Alcan Group Companies, primarily at the Solatens Facility, related to
the horizontal direct chill casting of small diameter ingots suitable
for use as forging stock as generally described in the patents and
patent applications listed in Appendix FST;
2.14 "INSITU HOMOGENIZATION TECHNOLOGY" shall mean ***.
2.15 "JOINT TECHNOLOGY AGREEMENTS" or "JTAS" shall mean the Agreements
between Alcanint and various other Alcan Group Companies for joint
research and technical assistance in the field of aluminum and other
materials fabricating and/or aluminum reduction and/or the production
of raw materials for the production of aluminum and/or manufacturing
packaging using aluminum foil and other materials;
2.16 "LICENSED PATENTS" shall mean the patents and patent applications
listed in Appendix LP;
2.17 "LICENSED EQUIPMENT PATENTS" shall mean the patents and patent
applications listed in Appendix LEP;
2.18 "LICENSED TECHNOLOGY" shall mean any and all, copyrights, trade
secrets, information, data, inventions, designs and similar rights
that have been used or developed, or are being used or developed for
use by Novelis or any Novelis Subsidiaries on or immediately before
the Effective Date for or in connection with the use and exploitation
of any one of the facilities that form part of Novelis as of the
Effective Date that are related to the following:
- Sheet ingot casting and metallurgy and associated melting,
metal cleaning, molten metal delivery, quality measurement
and environmental technologies;
- ----------
*** Certain information on this page has been omitted and filed separately with
the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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- laminated products as pursued as of the Effective Date at
the Ohle, Ludensheid, Berlin, Bridgnorth or Etobicoke foil
operations of Alcan;
- Technology specific to the production of rolled Plate with a
thickness of less than 12mm to the extent that such
technology was in use immediately prior to the Effective
Date at manufacturing facilities that will form a part of
Novelis as of the Effective Date;
- the Ouro Preto/Aratu/Petrocoque Technology;
Licensed Technology shall also include all Technology related to
management systems and business processes including environment health
and safety, value based management, continuous improvement, production
scheduling and management and individual performance and career
management and all business forms, contract forms, and other written
and electronic business materials used by Novelis or a Novelis
Subsidiary prior to the Effective Date subject in each case to Novelis
obtaining at its sole cost any necessary consents, provided that all
such Technology and materials have been modified as necessary to
delete any reference to brand names, trademarks, service marks being
retained by Alcan Group Companies.
2.19 "NETCAST TECHNOLOGY" shall mean the Technology originally developed by
Wagstaff Inc. and further developed by Alcan Group Companies,
primarily at the Solatens Facility, related to the direct chill
casting of complex shapes certain aspects of which are described in
the patents and patent applications listed in Appendix NCT;
2.19A "NOVELIS GROUP" means Novelis and the Novelis Subsidiaires.
2.20 "NOVELIS SUBSIDIARY" shall mean, as of and from the Effective Date,
(i) Petrocoque S.A. - Industria E Comercio, Aluminium Norf GmbH and
Logan Aluminum Inc, in each case for so long as Novelis retains at
least its current ownership stake in such entity and (ii) any other
entity of which a majority of the total voting power of capital stock
or other interests entitled (without the occurrence of any
contingency) to vote in the election of directors, managers or
trustees thereof is at the time owned or controlled, directly or
indirectly by Novelis;
2.21 "OURO PRETO/ARATU/PETROCOQUE TECHNOLOGY" shall mean the Technology
employed in the operations of any one or more of the facilities known
as Ouro Preto, Aratu and Petrocoque as of the Effective Date. Ouro
Preto is a bauxite mine, alumina refinery and aluminum smelter, Aratu
is an aluminum smelter with an associated electricity generating
facility; and Petrocoque is a facility that produces calcined
petroleum coke;
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2.21A "PECHINEY" means Pechiney, a wholly-owned subsidiary of Alcan,
together with all entities that were subsidiaries of Pechiney when
Pechiney became a subsidiary of Alcan, in December 2003.
2.22 "PAE TWIN ROLL CASTING TECHNOLOGY" shall mean Technology specific to
the continuous casting of a relatively thin metal strip between two
chilled rolls which is marketed by Pechiney Aluminium Engineering
certain aspects of which are described in the patents and patent
applications listed in Appendix TRCT;
2.23 "PAE METAL TREATMENT TECHNOLOGY" shall mean Technology specific to the
melting, holding and casting of aluminum, treatments of molten
aluminum to remove hydrogen, solid and liquid inclusions and alkali
metal and related equipment namely IRMA, JetCleaner, Alpur, PDBF, CCF
and Autopak which is marketed by Pechiney Aluminium Engineering as of
the Effective Date, certain aspects of which are described in the
patents and patent applications listed in Appendix MTT;
2.24 "PLATE" shall mean rolled and/or cast aluminum product with a
thickness of greater than 6.5mm that is not intended for further
rolling to a thickness of 6.5mm or less (reroll);
2.25 "ROLLED PRODUCTS" means rolled aluminum products in the form of Foil,
Sheet and rolled Plate of a thickness of less than 12 mm;
2.26 "SECONDARY INTELLECTUAL PROPERTY AGREEMENT" shall mean that other
Intellectual Property Agreement of even date herewith between Novelis
as party of the first part and Alcanint as party of the second part;
2.27 "SEPARATION AGREEMENT" shall mean the Separation Agreement herewith
between Alcan and Novelis, as described in the Preamble to this
Agreement;
2.28 "SHEET" and "FOIL" shall have the same meaning as is commonly ascribed
to those expressions in the aluminum industry in reference to rolled
aluminum provided that it is of a thickness of 6.5mm or less;
2.29 "SOLATENS FACILITY" shall mean the facility in Spokane, Washington
known as Solatens;
2.30 "TECHNOLOGY" shall mean any and all patents, patent applications,
copyrights, trade secrets, information, data, inventions, designs,
manufacturing processes, know-how, technical information,
specifications, creative works and similar rights either conceived or
first reduced to practice on or before the Effective Date that are
owned, licensable or otherwise under the control and direction of
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Alcanint or any other Alcan Group Company before the Effective Date,
including Novelis Subsidiaries;
2.31 "TRANSFERRED TECHNOLOGY" shall mean the Technology described in
Section 3.1; and
2.32 "UNRESTRICTED LICENSED TECHNOLOGY" shall mean any and all, copyrights,
trade secrets, information, data, inventions, designs and similar
rights that have been used or developed, or are being used or
developed for use in connection with research, development,
production, marketing or sale of Rolled Products by Novelis or any
Novelis Subsidiary on or immediately before the Effective Date or in
connection with the use and exploitation of any of the facilities
owned or operated by Novelis or a Novelis Subsidiary as of the
Effective Date that are freely licensable by Alcanint or any Alcan
Group Company and related to the following:
- Recycling aluminum, scalping, homogenization and preheating
technology, hot rolling, cold rolling, foil rolling,
coiling, cooling and lubrication, continuous and batch heat
treatment, quenching, mechanical finishing, slitting,
cutting to length, laser blanking and all associated
technologies (e.g. profile, gauge and shape measurement and
control and pollution reduction and control);
- Mechanical finishing, surface texturing, chemical
pre-treatment, painting, lacquering and curing technologies
for Sheet and Foil;
- Metallurgy related to the properties and microstructural
evolution through continuous casting, hot rolling, coiling,
cooling, cold rolling, foil rolling, heat-treatment,
quenching, mechanical finishing, and downstream finishing
and fabrication processes for sheet, foil and sheet ingot
applied internally or by customers for Sheet and Foil (e.g.
forming, rolling, painting and lacquering, curing and
etching of Sheet and Foil);
- Manufacture of rigid and semi-rigid aluminum foil containers
and closures;
- Metal property and alloy composition specifications related
to Rolled Products;
- In-service sheet and foil product performance in terms of
mechanical property changes, corrosion (bare and surface
treated Sheet) in final applications;
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- All process simulation models, scheduling and productivity
models and historic information to the extent recorded and
relevant to the Licensed Technology, Unrestricted Licensed
Technology or Transferred Technology;
- Enabling Technologies and know-how related to processes and
application of aluminum Rolled Products materials used by
customers (e.g. AVT automotive body-in-white assembly
process, spot welding, adhesive bonding, riveting
technologies, etching and finishing, structural simulation
models pertinent to applications); and
- Technology for the production of Foil to the extent it is
being used or has been used under existing or past practices
at the former Pechiney Annecy, Rugles, Dudelange and
Flemalle sites for the sole purpose of painting Sheet or
producing circles from Sheet or producing Foil.
- Technology specific to making and using the inventions
claimed in the Designated Patents and the Automotive Sheet
Patents;
- All other Technology, other than Excluded Technology, that
is in use or held for use as of the Effective Date in
connection with the research, development, production,
marketing or sale of Rolled Products at the facilities of
Novelis and the Novelis Subsidiaries as of the Effective
Date subject to Alcanint's right, upon reasonable request,
to be informed as to the identity, scope and use of such
other Technology;
2.33 In the event of any ambiguity as to the inclusion of a particular
Technology within Excluded Technology, Licensed Technology,
Transferred Technology, or Unrestricted Licensed Technology, such
Technology still be allocated in the following order of preference:
(1) Transferred Technology; (2) Excluded Technology; (3) Licensed
Technology; and (4) Unrestricted Licensed Technology.
3.0 TRANSFER OF TECHNOLOGY
3.1 Alcanint hereby grants, conveys, transfers and assigns and agrees to
deliver (and agrees to cause any appropriate Alcan Group Company to
grant, convey, transfer, assign and agree to deliver) to Novelis, in
its capacity as principal for the sole purpose of acquiring legal
title therein, and in its capacity as agent for the relevant members
of Novelis Group for the purpose of acquiring all beneficial ownership
therein and for all other purposes, all right, title and interest, of
whatever nature or kind throughout the world of Alcanint or any Alcan
Group Company in and to the following:
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3.1.1 the Designated Patents;
3.1.2 the Automotive Sheet Patents and related Technology which is
only useful in the production of Automotive Sheet and which
originated: (i) without use of or reference to Technology owned
or developed by Pechiney, and (ii) within a business unit or
manufacturing facility that will be owned by Novelis Group as of
the Effective Date;
3.1.3 Technology that is only useful in the production of beverage can
body Sheet, beverage can end Sheet and tab stock (for beverage
cans) which originated: (i) without use of or reference to
Technology owned or developed by Pechiney, and (ii) within any
business unit or manufacturing facility that will form part of
Novelis as of the Effective Date;
3.1.4 NetCast Technology, CoCast Technology, FlexStreme Technology and
Insitu Homogenisation Technology;
3.1.5 PAE Twin Roll Casting Technology and FlexCast Technology, in
both cases subject to Schedule FT;
3.1.6 PAE Metal Treatment Technology;
3.1.7 the right to grant licenses and rights under and with respect to
any of the foregoing and to sue for any infringement occurring
before or after the Effective Date as well as all statutory,
contractual and other claims, demands and causes of action for
royalties, fees or other income from, or infringement,
misappropriation or violation of, any of the foregoing, and all
of the proceeds from the foregoing that are accrued and unpaid as
of, and/or accruing after, the Effective Date;
3.1.8 all causes of action and rights of recovery against third
parties for past infringement in and to the Transferred
Technology, and for past misappropriation by third parties of
trade secrets in and to the Transferred Technology; and
3.1.9 the right to apply for and obtain statutory rights and
registrations with respect to any of the foregoing Technology.
3.2 The foregoing transfer and assignment shall be subject to the licenses
granted to Alcanint and other Alcan Group Companies pursuant to the
Secondary Intellectual Property Agreement.
3.3 If and to the extent that, as a matter of law in any jurisdiction,
ownership, title, or any rights of interest in or to any of the
Transferred Technology cannot be assigned as provided in Section 3.1,
(i) Alcanint agrees subject to the other
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terms and conditions of this Agreement to assign and transfer, and
hereby assigns and transfers to Novelis (as agent for the relevant
member of Novelis Group) all rights (including, without limitation,
all economic and commercialization rights) that can be assigned
pursuant to Section 3.1 to the fullest extent permissible; and (ii)
Alcanint agrees subject to the other terms and conditions of this
Agreement to grant, and hereby grants, Novelis (as agent for the
relevant member of Novelis Group) an unlimited, exclusive,
irrevocable, worldwide, perpetual, royalty-free license, to use,
exploit and commercialize in any manner now known or in the future
discovered and for whatever purpose, any rights to Transferred
Technology that cannot be assigned as contemplated by Section 3.1.
3.4 Alcanint further covenants that it will, without demanding any further
consideration therefor, at the request and expense of Novelis (except
for the value of the time of Alcanint employees), do (and cause Alcan
Group Companies to do) all lawful and just acts that may be or become
necessary for evidencing, maintaining, recording and perfecting
Novelis' rights to such Transferred Technology consistent with Alcan's
general business practice as of the Effective Date, including but not
limited to, execution and acknowledgement of (and causing Alcan Group
Companies to execute and acknowledge) assignments and other
instruments in a form reasonably required by Novelis for each relevant
jurisdiction.
3.5 Alcanint and each other Alcan Group Company shall retain any
Technology not transferred to Novelis by virtue of the foregoing.
Novelis warrants to Alcanint that neither it nor any Novelis
Subsidiary owns any Technology (other than the Transferred Technology
and only to the extent conveyed hereunder) as of the Effective Date
and further acknowledges that any other Technology that it or any
Novelis Subsidiary may be deemed to have owned prior to the Effective
Date was intended to be owned by Alcanint and shall be deemed to have
been held by Novelis or such Novelis Subsidiary for the benefit of
Alcanint. This provision shall not apply to that Technology described
in the final paragraph of Section 2.18.
3.6 Each of Alcanint and Novelis shall deliver to the other all documents
and instruments necessary or appropriate to be duly executed where
appropriate by the applicable party(ies) and notarized where indicated
in the exhibits to this Agreement.
3.7 Novelis acknowledges and agrees that the foregoing assignment is
subject to any and all licenses or other rights that may have been
granted by Alcanint or any other Alcan Group Company with respect to
the Transferred Technology prior to the Effective Date.
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3.8 The determination regarding which Novelis Group company (sometimes
referenced in this Agreement as the "relevant member of Novelis
Group") shall be entitled to beneficial ownership of Transferred
Technology or to a license of Licensed Patents, Unrestricted Licensed
Technology or Licensed Technology shall be made having regard to the
following factors:
3.8.1 whether the relevant member of Novelis Group was a party to any
JTA while such entity was an Alcan Group Company;
3.8.2 whether the relevant member of Novelis Group reasonably requires
the relevant beneficial ownership or license in connection with
the ownership or operation of one or more of its businesses on
and after the Effective Date, based on the use of Technology in
connection with such business prior to the Effective Date; and
3.8.3 such other factors as may reasonably be taken into account by
Novelis and as are consistent with the provisions of this
Agreement.
3.9 Novelis covenants that it will enter into such agreements with the
relevant members of Novelis Group as may be necessary or desirable for
the orderly management of the Technology mentioned in section 3.8.
4.0 LICENSE RIGHTS GRANTED
4.1.1 Alcanint hereby grants to Novelis and Novelis hereby accepts, as
agent for the relevant members of Novelis Group and subject to
the terms and conditions of this Agreement a royalty free license
to use and commercialize the Licensed Patents, Unrestricted
Licensed Technology and Licensed Technology to operate, maintain,
repair, reconstruct, rebuild and expand any present or future
facilities of Novelis Group and to use and sell the products
produced using the Licensed Patents, Unrestricted Licensed
Technology and/or the Licensed Technology pursuant thereto world
wide; provided that the royalty free license in respect of the
Ouro Preto/Aratu/Petrocoque Technology shall be limited such that
it may be used only at the same geographic sites.
4.1.2 Pursuant to the license granted under Section 4.1.1, Novelis
shall be permitted to sublicense any Unrestricted Licensed
Technology except to the extent the use of such Unrestricted
Licensed Technology is covered by patents held by Alcanint or any
other Alcan Group Company.
4.1.3 Novelis may grant sublicenses under the Licensed Patents and the
Licensed Technology (i) to third parties (such as customers and
vendors)
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to the extent necessary or appropriate to give commercial effect
to the rights sought to be transferred, assigned or licensed
hereunder and (ii) to Novelis Subsidiaries provided that any such
sublicense may be made effective retroactively but not prior to
the sublicensee's becoming a Novelis Subsidiary and any such
sublicense shall terminate immediately upon such sublicensee no
longer being a Novelis Subsidiary, except in a transaction that
meets the conditions of Section 17.2.
4.2 All licenses granted to Novelis under this Agreement are personal,
indivisible, royalty-free, non-exclusive, and non-transferable except
as otherwise specifically provided herein, and shall be subject to all
terms and conditions herein set forth and apply only to the extent
herein specified and defined. The non-exclusive licenses granted
hereunder shall exist as long as this Agreement is effective in
accordance with Article 8.0, provided, however that the non-exclusive
licenses granted hereunder is subject to termination in accordance
with Article 8.0.
4.2.1 Alcanint hereby grants to Novelis (and agrees to cause any
appropriate Alcan Group Company to grant to Novelis) and Novelis
hereby accepts, as agent for the relevant members of Novelis
Group and subject to the terms and conditions to this Agreement
(i) a royalty-free right and license to operate, maintain and
repair equipment subject to the Licensed Equipment Patents that
was acquired prior to the Effective Date and to use and sell the
products produced therewith on a world-wide basis and (ii) a
conditional royalty-free right and license to use the Licensed
Equipment Patents to build, operate, maintain, repair,
reconstruct, rebuild and expand any present or future facilities
of Licensee and to use and sell the products produced therewith
on a world-wide basis.
4.2.2 To the extent that (i) Alcanint continues the commercial sale of
equipment for implementing any Licensed Equipment Patent either
directly or through a licensee and (ii) Alcanint or its licensee
offers such equipment to Novelis for sale on terms and conditions
(including royalties) at least as favourable to Novelis as the
best of those offered to any third party during the previous 24
months or, if no such equipment has not been offered within the
previous 24 months at market rates (such conditions (i) and (ii)
being referred to herein as a "COMMERCIAL LICENSE"), then Novelis
shall operate under the terms of such Commercial License rather
than the licenses granted in clause (ii) herein which shall be
deemed suspended until the occurrence of condition (i) or (ii)
above. At any time thereafter, Novelis shall be entitled to
operate under the license granted under clause (ii) or Section
4.2.1 as the case may be, with no further action required by
either Alcanint or Novelis provided that Novelis shall provide
reasonably prompt notice to Alcanint that Novelis is operating
under the license set forth in paragraph 4.2 (ii). The licenses
provided for in clause
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(ii) of Section 4.2.1 shall not apply to any equipment purchased
by Novelis prior to the date of such notice for implementing
Licensed Equipment Patents to the extent that equipment has been
acquired with a valid Commercial License. Such previously
purchased equipment shall continue to be operated under the terms
and conditions specified at the time such equipment was acquired
by Novelis.
Except as otherwise specifically provided in this Agreement, Novelis
is not granted and does not have the right to assign, sub-license or
otherwise dispose of the Licensed Patents or Licensed Technology or
any part thereof.
4.3 Except as otherwise specifically provided in this Agreement, Alcanint
shall retain all right, title and interest in and to the Licensed
Technology and Licensed Patents including the right (but not the
obligation) to file for, prosecute and maintain any applications,
registrations or recordation thereof and to bring any action to
enforce or otherwise seek to abate any infringement thereof.
4.4 Novelis shall have the right (to be exercised reasonably) from time to
time to request additional information concerning the Transferred
Technology, Licensed Technology, Unrestricted Licensed Technology and
Licensed Patents. Alcanint shall, subject to the availability of
appropriate personnel, supply the information so requested with the
related cost and expense of doing so, if any, being for Novelis'
account.
5.0 EXCLUDED TECHNOLOGY
5.1 For the avoidance of doubt, all Technology that is not clearly
identified as one of Licensed Patents, Licensed Equipment Patents,
Licensed Technology, Unrestricted Licensed Technology or Transferred
Technology shall not be transferred pursuant to Article 3.0 nor shall
it be licensed pursuant to Article 4.0, all rights in such Technology
shall be retained by Alcanint and such Technology shall be deemed
"EXCLUDED TECHNOLOGY" and any license or right granted hereunder shall
be specifically limited such that no right, license or permission to
use Excluded Technology is granted. Without limitation and
notwithstanding anything else contained herein, "Excluded Technology"
specifically includes:
- all Technology owned or licensable or controlled by Pechiney
except for the following Technology to the extent such
Technology is otherwise agreed to be transferred or licensed
hereunder: (i) the PAE Twin Roll Casting Technology; (ii)
the PAE Metal Treatment Technology; and (iii) other
Technology to the extent that it is being used or has been
used under the existing or past practice at the former
Pechiney Annecy, Rugles, Dudelange and Flemalle sites for
the sole purpose of painting Sheet or the production of
circles from Sheet or the production of Foil;
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- all Technology specific to the production of bright Sheet,
reflector Sheet and capacitor Foil to the extent that the
rights thereto originated with the 2000 acquisition by Alcan
of Alusuisse Group AG together with any subsequent
improvements thereto made at the Singen facility;
- all Technology related to the production and application of
metal - non-metal bonded composites (e.g. Alucobond),
structural composites, foamed plastics, balsa wood products,
honeycomb-cored composites, non-aluminum core materials and
roll bond Sheet and components made from roll bond except
for any such Technology related to the production and
application of laminates typically used for roofs, walls,
ceilings, automotive applications and caravans (e.g., FF2,
FF2 Plus, FALZONALI and AluSilent) or anti-graffiti
composite products (e.g., Aluclean) that are in use or held
for use as of the Effective Date in connection with the
research, development, production, marketing or sale such
products at the facilities of Novelis and the Novelis
Subsidiaries;
- all Technology specific to the production and application
of, diecastings, forgings, except forging stock, non-Rolled
Products mass transport systems, non-Rolled Products
automotive components and assemblies (e.g. auto bumper
beams, crash management systems, side impact beams, cockpit
carriers, and certain BIW sub-assemblies, chassis parts and
engine cradles) except to the extent that any such
Technologies are in use or held for use as of the Effective
Date in connection with the research, development,
production, marketing or sale of Rolled Products at the
facilities of Novelis and the Novelis Subsidiaries;
- all Technology related to the mining of bauxite, the
refining and production of alumina and alumina based
chemicals other than the Ouro Preto/Aratu/Petrocoque
Technology to the extent licensed under Section 4.1;
- all Technology related to the smelting, the operation of
smelters, reduction and other processes and techniques
relating to the production of molten aluminum metal from
alumina or other ores, the generation and transmission of
electricity and related technologies other than the Ouro
Preto/Aratu/Petrocoque Technology to the extent licensed
under Section 4.1;
- all Technology other than Technology related only to Foil
that is specific to the manufacturing of any packaging
related products made from or incorporating rigid plastics,
flexible plastics, carton,
13
steel, glass or paper but subject to the rights under
Section 4.2.2(i) and except for any such Technology that was
in use or in development for use in May 2004 in connection
with, manufacturing activities conducted at the Ohle,
Ludensheid, Berlin, Bridgnorth and Etobicoke facilities;
- all Technologies specific to the production of magnesium
chloride and magnesium metal.
5.2 For the avoidance of doubt, the rights and licenses granted in
Technology pursuant to Article 3.0 and licensed pursuant to Article
4.0, do not grant such rights and licenses to use any of Licensed
Patents, Licensed Technology, Unrestricted Licensed Technology or
Transferred Technology in the following fields:
- Plate, except to the extent that they relate to rolled Plate
of a thickness of less than 12mm and except as otherwise
specifically permitted in Appendix PE;
- products destined or intended for use in the Aerospace
Industry;
- aluminum lithium alloys and Series 2000 and Series 7000
alloys;
- production and application of aluminum extruded products and
multi-material co-extrusions for all markets, including the
casting of extrusion billet except to the extent that they
relate to casting extrusion billet using FlexStream
Technology and except that Novelis may continue to use such
co-extrusion Technology that is being used in, has been used
in or is being developed for use in the manufacturing
activities conducted by Novelis at the Ludensheid facility
to produce products for its existing markets (e.g. cable
wrap and pipes);
- production and application of continuous cast bar, rolled
rod and products made therefrom including rod, strip, wire
and cables; and
- smooth wall containers adapted for the application of heat
sealed lids and such lids, destined or intended for use in
the packaging of pet food and coating and/or laminating
strip used in their manufacture.
6.0 TERMINATION OF PARTICIPATION IN JTA
6.1 As of the Effective Date and provided that the Arrangement becomes
effective, Novelis and all Novelis Subsidiaries will cease to be
Participants in the JTAs as
14
that term is defined in the JTAs. In consideration of the rights and
licenses granted herein and other good and valuable rights received
pursuant to the Separation and related Agreements, Novelis hereby
grants and will cause each such Participant to grant to Alcanint all
rights of such Participants in technology developed under the JTAs,
other than the rights described herein.
6.2 Alcanint on behalf of the Participants in the JTAs hereby releases
Novelis and the Novelis Subsidiaries from all obligations under the
JTAs as of the Effective Date, provided that Novelis and the Novelis
Subsidiaries shall remain responsible for performance of all of their
respective obligations under the JTA, up to and including the
Effective Date; and provided further that any default in the
performance of these obligations shall be deemed a default hereunder.
7.0 PROTECTION OF INFORMATION
7.1 Alcanint and Novelis hereby agree that the Licensed Technology made
available to or produced or developed for the other party at any time
and Excluded Technology that may be in the possession of Novelis (the
"INFORMATION") is confidential information of Alcanint and shall not
be disclosed to any third party except as may be expressly provided
for herein and that Novelis shall have only such rights in the
Information as are expressly provided herein.
7.2 The obligations of confidentiality and non-disclosure shall not apply
to Information to the extent that said Information:
7.2.1 is in the public domain through no fault of Novelis, or lawfully
is or becomes public knowledge through no breach of this
Agreement;
7.2.2 was received from any third party on a non-confidential basis
and did not originate from Alcanint or any Alcan Group Company;
or
7.2.3 was disclosed by Novelis pursuant to legal process, governmental
request or regulatory requirement; provided, however, that
Novelis shall use all reasonable efforts to provide notice to
Alcanint in order to afford Alcanint a reasonable opportunity to
seek a protective order or an injunction.
7.3 Specific information shall not be deemed to be within the exceptions
of Section 7.2 above merely because such specific information may be
construed as being within broader, non-confidential information which
is either in the public domain or the possession of the receiving
party on the Effective Date, nor shall a combination of features which
form confidential information be deemed to be non-confidential
information merely because the individual features, without being
combined, are non-confidential.
15
7.4 Novelis shall not use the Information received hereunder for any
purpose other than that specified in this Agreement without first
obtaining written consent from Alcanint.
7.5 Novelis may disclose the Information relating to Licensed Technology
received hereunder to its officers, employees, contractors, suppliers,
customers for Sheet and Foil, representatives and others to the extent
necessary for the normal operation of its business. Novelis shall take
reasonable precautions, consistent with past practices to preserve the
value of the Information. Novelis shall advise the appropriate
officers, employees, contractors, suppliers, customers,
representatives and others to whom such information is supplied of the
confidentiality obligation hereunder, and shall ensure that, where
appropriate, they have agreed to comply with the provisions of this
Article 7.0.
7.6 The obligations of confidentiality and non-disclosure with respect to
specific Information received under this Agreement or otherwise shall
expire ten years after the Effective Date of this Agreement.
7.7 The parties recognize that a breach of this Article 7.0 may give rise
to irreparable injury to Alcanint that cannot be adequately
compensated by monetary damages. Accordingly, in the event of a breach
or threatened breach, Alcanint may be entitled to preliminary and
permanent injunctive relief to prevent or enjoin a violation of this
Article 7.0 and the unauthorized use or disclosure of any confidential
Information in addition to such other remedies as may be available for
such breach or threatened breach, including the recovery of damages.
7.8 No provision of this Agreement shall be construed to require Alcanint
to furnish any information (i) acquired from others on terms
prohibiting or restricting disclosure by Alcanint, or (ii) the
furnishing of which is in contravention of any law, regulation, or
executive order of any government. Each party shall use its
commercially reasonable efforts to avoid conditions that prevent the
exchange of information under this Agreement.
7.9 Nothing in this Agreement shall preclude Novelis from using any
information that is in the public domain at the time of its use of
such information unless such information is in the public domain as a
result of Novelis' breach of the confidentiality obligations under
this Article 7.0.
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8.0 TERM AND TERMINATION
8.1 This Agreement shall be effective until and shall terminate on the ***
anniversary of the Effective Date except for the restrictions in
respect of Transferred Technology as reflected in Section 5.2 which
shall be effective until and shall terminate on the *** anniversary of
the Effective Date. Upon termination pursuant to this Section 8.1,
each of the licenses granted hereunder shall be deemed a fully-paid,
unrestricted, unconditional, perpetual license, with the right to
grant unrestricted sublicenses subject only to any patents held by
Alcanint or an Alcan Group Company and to any obligations to pay any
royalties due to any third party from which the Technology was
originally acquired or licensed. For clarity, the parties intend that
upon termination of this agreement pursuant to this Section 8.1,
Novelis shall have all of the rights of a nonexclusive owner of the
Licensed Technology, Unrestricted Technology and Transferred
Technology and have an unrestricted, unconditional right to use and
license such Technology without notice or accounting to Alcanint or
any Alcan Group Company.
8.2 Should there be a material default by Novelis in the performance of
any of its obligations under this Agreement or under the Separation
Agreement and such default is not cured within 30 days following
written notification of such default from Alcanint, this Agreement
shall terminate on the date specified on such notice which shall not
be less than 30 days following the date of such notice, unless Novelis
cures such default before such specified termination date. This shall
be referred to as early termination.
8.3 This Agreement shall terminate immediately upon the occurrence of any
of the following:
(a) the bankruptcy or insolvency of Novelis;
(b) the appointment of a receiver for Novelis' assets;
(c) the making by Novelis of a general assignment for the
benefit of creditors; or
(d) the institution by Novelis of proceedings for a
reorganization of
- ----------
*** Certain information on this page has been omitted and filed separately with
the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
17
Novelis under the Bankruptcy Act or similar legislation for
the relief of debtors or the institution of involuntary
proceedings by a party other than Novelis which are not
terminated in 30 days.
8.4 All of the licenses of Licensed Technology shall terminate and this
Agreement shall terminate (1) upon the occurrence of a Non Compete
Breach (as defined in the Separation Agreement) and the giving of
notice of such termination by Alcan to Novelis pursuant to Section
14.03(b) of the Separation Agreement, or (2) upon the occurrence of a
Change of Control Non Compete Breach (as defined in the Separation
Agreement) and the giving of notice of such termination by Alcan to
Novelis pursuant to Section 15.04 of the Separation Agreement. In the
case of a termination of licenses of Licensed Technology granted to
Novelis under this Agreement and termination of this Agreement
pursuant to clause (1) or clause (2) hereof, such termination shall be
effective immediately upon Alcan providing Novelis notice pursuant to
Section 14.03(b) or Section 14.04(e) of the Separation Agreement, as
the case may be and Novelis shall cease all use of the Licensed
Technology that is the subject of licenses terminated pursuant to this
section (including any license granted by virtue of Section 3.3). This
section shall not preclude Novelis from using any information that is
in the public domain at the time of its use of such information unless
such information is in the public domain as a result of Novelis'
breach of the confidentiality obligations under Article 7.0.
8.5 This Agreement shall be terminated upon written notice from Alcanint
in the event that (i) the Secondary Intellectual Property Agreement is
at any time no longer in full force and effect (other than by virtue
of a termination caused by the actions or inaction of Alcanint) or
(ii) Novelis or any Novelis Subsidiary or any of their respective
Affiliates asserts that the Secondary Intellectual Property Agreement
is invalid, unenforceable or no longer in full force and effect and
does not withdraw such assertion within five business days following a
request to do so from Alcanint.
8.6 Early termination pursuant to this Article 8.0 shall not prejudice
Alcanint 's rights to recover any amounts due at the time of such
termination nor shall it prejudice any other remedy or cause of action
or claim of Alcanint accrued or to accrue against Novelis on account
of any such default by Novelis.
8.7 This Agreement may be terminated at the option of Novelis, upon
receipt of written notice to Alcanint, at any time provided all
payments owed hereunder have been remitted to Alcanint.
8.8 Upon early termination of this Agreement pursuant to this Article 8.0,
all licenses of any Licensed Technology shall terminate and Novelis
shall cease all use of the Licensed Technology. This section shall not
preclude Novelis from using any information that is in the public
domain at the time of its use of such
18
information unless such information is in the public domain as a
result of Novelis' breach of the confidentiality obligations under
Article 7.0.
8.9 Notwithstanding the foregoing, Novelis may, after the date this
Agreement is terminated pursuant to this Article 8.0 sell any product
made before such termination, as if such product were sold prior to
termination.
9.0 SURVIVAL OF OBLIGATIONS
Except as otherwise provided in this agreement and unless otherwise agreed
in writing by the parties, the rights and obligations of the parties under
Articles 7.0, 10.0, 11.0, 12.0, 15.0, 16.0, 17.0, 18.0, 19.0, 21.0 and 22.0
shall survive the termination of this Agreement.
10.0 REPRESENTATIONS; COVENANT
Each party hereto represents that it has full power and authority to enter
into this Agreement and to perform all obligations hereunder. Novelis
further represents that it has fully power and authority to act as agent
for each member of Novelis Group for all purposes under this Agreement.
Novelis covenants that it will cause each member of Novelis Group to act
strictly in accordance with the provisions of this Agreement.
11.0 DISCLAIMER
11.1 Novelis acknowledges and agrees that the foregoing assignments and
licenses are made on an "as is" quitclaim basis and that neither
Alcanint nor any Alcan Group Company is providing or is responsible to
provide any representation or warranty of any nature or kind (whether
express, implied, statutory, contractual or other in nature and
whether relating to title enforceability, merchantability, fitness for
purpose, non-infringement, absence of rights of third parties or
other) in respect of the Transferred Technology or, Licensed
Technology or any use to be made thereof or any product to be produced
therewith. Neither Alcanint nor any Alcan Group Company shall be
liable to Novelis, or any other person, for any damage, injury or
loss, including loss of use arising from any activities or obligations
under this Agreement; or for any direct or indirect, incidental,
consequential special or punitive damages.
11.2 Nothing in this Agreement shall be construed as a warranty or
representation that any product made, used, sold or otherwise disposed
with the benefit of any rights or license granted pursuant to this
Agreement is or will be free from infringement of patents of third
parties.
11.3 Neither Alcan nor any other Alcan Group Company nor any of their
current Affiliates shall have any infringement action or claim against
Novelis or any or its current Affiliates in respect of Designated
Patents, Licensed Patents or
19
Technology to the extent of any use of same prior to the Effective
Date. None of Novelis, any Novelis Subsidiary nor any of their
Affiliates shall have any infringement action against any Alcan Group
Company in respect of any past, use of Technology. Each party, on
behalf of itself and its Subsidiaries and Affiliates, hereby releases
the other party and it Affiliates and Subsidiaries, from, and agrees
not to sue concerning, any and all claims for infringement in respect
of any use of Technology prior to the Effective Date, whether based on
contract, tort, statutory or other legal or equitable theory of
recovery, which such party (or its Subsidiaries or Affiliates) has
asserted or could have asserted against the other party (or its
Subsidiaries or Affiliates). Promptly following the Effective Date,
the relevant Alcan Group Company (or Affiliate) and Novelis (or
Affiliate) shall promptly execute and deliver stipulations of
dismissal with prejudice of any claims filed in respect of any such
alleged infringement, in forms suitable for immediate filing in the
relevant court.
11.4 Without limiting Section 11.1 hereof, in no event shall either party
or any of their respective Affiliates be liable to the other party or
its Affiliates 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.
12.0 TRADEMARK, TRADE NAME AND LOGO
No right is conveyed under this Agreement for the use, either directly,
indirectly, by implication or otherwise, of any trademark, trade name or
logo owned by Alcanint or any Alcan Group Company. The parties will enter
into a separate trademark license agreement if appropriate.
13.0 NON-WAIVER
The failure of any party to insist in any one or more instances upon the
strict performance of any one or more of the obligations of this Agreement
or to exercise any election herein contained, shall not be construed as a
waiver for the future of the performance of such one or more obligations of
this Agreement or of the right to exercise such election. No waiver of any
breach or default of this Agreement shall be held to be a waiver for any
subsequent breach.
14.0 NO PARTNERSHIP, JOINT VENTURE
The parties to this Agreement agree and acknowledge that the Agreement does
not create a partnership, joint venture or any other relationship between
Alcanint and Novelis save the relationship specifically set out herein
before and solely for the limited purposes herein.
20
15.0 FURTHER ASSURANCES, CONSENTS, ETC.
The parties to this Agreement shall co-operate together using their
respective commercially reasonable best efforts to take such further steps,
including the execution and delivery of documentation and applications
which are required for legal or regulatory purposes or to obtain the
consents or approvals of third parties or necessary or advisable
registrations. All fees and expenses related to registrations which are
advisable or necessary shall be at the expense of the future owner of such
registrations and all registrations will be the responsibility of such
owner. Nothing contained in this Agreement shall be interpreted to oblige
any party to do anything more than apply its commercially reasonable best
efforts (without material expense to it) to obtain any consent, approval or
registration which may be required to give full effect to the terms and
conditions hereof. Similarly, no party shall be obliged to convey any
rights or do any other thing which would cause it to be in breach of any
legal or contractual obligation.
16.0 NOTICES
Any notice, consent or other instrument required or permitted to be given
by one party to the other party hereunder shall be in writing and shall be
delivered or sent by first class mail or telefax and shall be deemed
received five days following prepaid mailing or the next business day when
telefaxed to the other party with receipt confirmation at the addresses set
forth below;
To Alcanint: Alcan International Limited
1188 Sherbrooke Street West
Montreal, Quebec, Canada H3A 3G2
Fax: (514) 848-8555
Attention: Company Secretary
In all cases with copy (which
shall not constitute notice) to:
Alcan Inc.
1188 Sherbrooke Street West
Montreal, Quebec, Canada H3A 3G2
Fax: (514) 848-8555
Attention: Company Secretary
21
To Novelis: Novelis Inc.
Suite 3800
Royal Bank Plaza, South Tower
P. O. Box 84
200 Bay Street
Toronto, Ontario, Canada M5J 2Z4
Fax: (416) 216-3930
Attention: President
Either party may change the notice address by giving written notice to the
other party. If sent by telefax, a confirming copy of such shall be sent by
regular mail to the addressee.
17.0 ASSIGNMENT
17.1 This Agreement shall not be assignable, in whole or in part, directly
or indirectly, by any party hereto without the prior written consent
of the others, and any attempt to assign any rights or obligations
under this Agreement without such consent shall be null and void and
deemed to be in breach hereof.
17.2 Notwithstanding the preceding Section 17.1, this Agreement may be
assigned (i) by Alcanint to any Alcan Group Company, by Novelis to any
Novelis Subsidiary and (ii) by either party in whole in connection
with a merger or consolidation or the sale of all or substantially all
of the assets of such Party, or (iii) by Novelis in part in connection
with a sale or other divestiture of a Novelis Subsidiary, plant, or
business unit whose field of activity is principally related to the
portion of Novelis' business that makes actual use of the Technology
licensed under this Agreement; provided, however, that such assignee
must expressly agree in writing to be bound by the terms and
conditions of this Agreement.
17.3 Nothing in this Article 17.0 shall operate to entitle any transfer,
assignment or license to any entity which has any activities directly
or through Affiliates of a type which would be contrary to Section
8.4. Any such transfer assignment, or license (actual or attempted)
shall in all aspects be void ab initio and any attempted assignment in
violation thereof shall be deemed to constitute a material default
within the meaning of Section 8.2 hereunder.
18.0 INDEMNIFICATION
18.1 Novelis shall indemnify, defend and hold harmless Alcanint and all
Alcan Group Companies and their respective directors and officers (the
"ALCANINT INDEMNITEES") from and against any and all losses incurred
or suffered by any of the Alcanint Indemnitees arising out of the use
of any Transferred Technology or Licensed Technology by Novelis or any
of its Affiliates or customers.
22
18.2 If any Alcanint Indemnitee determines that it is or may be entitled to
indemnification by any party (the "INDEMNIFYING PARTY"), under this
Article 18.0, (other than in connection with an action subject to
Section 18.3), the Indemnified Party shall deliver to the Indemnifying
Party a written notice describing to the extent reasonably
practicable, the basis for its claim for indemnification and the
amount for which the Indemnified Party reasonably believes it is
entitled to be indemnified. If the Indemnifying Party has not
responded within 30 days after receipt of such notice, the Indemnified
Party shall deliver a second notice to the Indemnifying Party within
ten days of the expiration of the original 30 day period. Within 30
days after receipt of any second notice, the Indemnifying Party shall
pay the Indemnified Party such amount in cash or other immediately
available funds unless the Indemnifying Party objects to the claim for
indemnification or the amount thereof.
18.3 Promptly following the earlier of (i) receipt of notice of the
commencement of an action by a third party against or otherwise
involving any indemnified party, or (ii) receipt of information from a
third party alleging the existence of a claim against an Indemnified
Party, in either case, with respect to which indemnification may be
sought pursuant to this Agreement, (a "THIRD PARTY Claim"), the
Indemnified Party shall give the Indemnifying Party written notice
thereof. The failure of the Indemnified Party to give notice as
provided in this Article 18.0 shall not relieve the Indemnifying Party
of its obligations under this Agreement, except to the extent that the
Indemnifying Party is prejudiced by such failure to give notice.
Within 30 days after receipt of such notice, the Indemnifying Party
may (i) by giving written notice thereof to the Indemnified Party,
acknowledge liability for such indemnification claim and at is option
elect to assume the defence of such Third Party Claim at its sole cost
and expense or (ii) object to the claim for indemnification set forth
in the notice delivered by the Indemnified Party pursuant to the first
sentence of this Section 18.3; provided that if the Indemnifying Party
does not within such 30 day period give the Indemnified Party written
notice objecting to such indemnification claim and setting forth the
grounds therefor, the Indemnified Party shall give the Indemnifying
Party an additional notice of its claim for indemnification and if the
Indemnifying Party does not give the Indemnified Party written notice
objecting to such claim within ten days after receipt of such notice
the Indemnifying Party shall be deemed to have acknowledged its
liability for such indemnification claim. If the Indemnifying Party
has elected to assume the defence of a Third Party Claim, (x) the
defence shall be conducted by counsel retained by the Indemnifying
Party and reasonably satisfactory to the Indemnified Party, provided
that the Indemnified Party shall have the right to participate in such
proceedings and to be represented by counsel of its own choosing at
the Indemnified Party's sole cost and expense; and (y) the
Indemnifying Party may settle or compromise the third Party claim
without the prior written consent of the Indemnified Party so long as
such settlement includes and unconditional release of the Indemnified
Party from all claims that are the subject of such
23
Third Party Claim provided the Indemnifying Party may not agree to any
such settlement pursuant to which any remedy or relief, other than
money damages for which the Indemnifying Party shall be responsible
hereunder, shall be applied to or against the Indemnified Party,
without the prior written consent of the Indemnified Party, which
consent shall not be unreasonably withheld. If the Indemnifying Party
does not assume the defence of a Third Party Claim for which it has
acknowledged liability for indemnification hereunder, the Indemnified
Party may require the Indemnifying Party to reimburse it on a current
basis for its reasonable expenses of defending against such Third
Party Claim and the Indemnifying party shall be bound by the result
obtained with respect thereto by the Indemnified Party; provided that
the Indemnifying Party shall not be liable for any settlement effected
without its consent, which consent shall not be unreasonably withheld.
The Indemnifying Party shall pay to the Indemnified Party in cash the
amount, if any, for which the Indemnified Party is entitled to be
indemnified hereunder within 15 days after such Third Party Claim has
been finally determined, or in the case of an indemnity claim as to
which the Indemnifying Party has not acknowledged liability, within 15
days after such Indemnifying Party's objection to liability hereunder
has been finally determined.
18.4 If for any reason the indemnification provided for in Section 18.1 is
unavailable to an Indemnified Party, or insufficient to hold it
harmless, then the Indemnifying Party shall contribute to the amount
paid or payable to such Indemnified Party as a result of such losses
in such proportion as is appropriate to reflect all relevant equitable
considerations.
18.5 The remedies provided for in this Article 18.0 are not exclusive and
shall not limit any rights or remedies which may otherwise be
available to any Indemnified Party at law or in equity.
19.0 ENTIRE AGREEMENT, AMENDMENTS
19.1 This Agreement constitutes the entire agreement and understanding
between the parties with respect to the subject matter hereof and
supersedes all prior agreements, understandings, negotiations and
discussions whether oral or written of the parties, and there are no
representations, warranties or conditions expressed or implied or
otherwise between the parties in connection with the subject matter
hereof, except as specifically set forth herein. No amendment to the
terms and conditions hereof or waiver in respect thereto shall be
binding unless it is in writing and signed by duly authorized
representatives of both parties.
19.2 Notwithstanding the foregoing, the rights and interests transferred,
assigned or granted to Novelis or Novelis Subsidiaries or otherwise to
be made available to them pursuant to the terms of this Agreement,
shall in all respects be subject to
24
the provisions of the Separation Agreement and nothing in this
Agreement shall entitle Novelis or Novelis Subsidiaries to have any
rights or pursue any activity which would otherwise be restricted by
the Separation Agreement. The Separation Agreement shall not in
defining the assets, businesses, rights and obligations to form part
of Novelis, be interpreted so as to grant, convey or confirm, directly
or indirectly, any rights on the part of Novelis in respect of
Technology which would be greater than those established herein.
20.0 DISPUTE RESOLUTION
The Master Agreement with Respect to Dispute Resolution, effective on the
Effective Date, among Alcanint, Novelis and other parties thereto shall
govern all disputes, controversies or claims (whether arising in contract,
delict, tort or otherwise) between the Parties that may arise out of, or
relate to, or arise under or in connection with, this Agreement or the
transactions contemplated hereby (including all actions taken in
furtherance of this Agreement) or the commercial or economic relationship
of the Parties relating hereto or thereto.
21.0 MISCELLANEOUS
21.1 The division of this Agreement into sections, subsections and other
subdivisions and the insertion of headings are for convenience of
reference only and shall not affect or be utilized in the construction
or interpretation of this Agreement.
21.2 The parties hereto have requested that this Agreement and all other
documents, notices or written communications relating thereto, be in
the English language.
21.3 The parties may amend this Agreement only by a written agreement
signed by each party to be bound by the amendment and that identifies
itself as an amendment to this Agreement.
21.4 Except as expressly stated to the contrary herein, the provisions of
this Agreement are solely for the benefit of the parties and are not
intended to confer upon any person except the parties any rights or
remedies hereunder, and there are no third party beneficiaries of this
Agreement, and this Agreement shall not provide any third person with
any remedy, claim, liability, reimbursement, claim of action or other
right in addition to those existing without reference to this
Agreement.
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22.0 GOVERNING LAW
Recognizing the numerous jurisdictions associated with this Agreement and
the activities contemplated by it, the parties agree that this Agreement
shall be governed, construed and interpreted according to the laws of the
Province of Quebec, Canada without the application of the provisions
relating to the conflict of laws. Any provision in this Agreement
prohibited by law or by court decree shall be ineffective to the extent of
such prohibition without in any way invalidating or affecting the remaining
provisions of this Agreement, and this Agreement shall be construed as if
such prohibited provision had never been contained herein. Alcanint and
Novelis hereby agree, however, to negotiate an equitable amendment of this
Agreement if a material provision is adversely affected.
IN WITNESS WHEREOF duly authorised representatives of the parties hereto have
signed duplicate copies of this Agreement.
ALCAN INTERNATIONAL LIMITED NOVELIS INC.
Per: /s/ David McAusland Per: /s/ Brian W. Sturgell
-------------------------------- -----------------------------------
INTERVENTION
Alcan Inc. has intervened in this Agreement to acknowledge its terms and agree
to be bound by and benefit from same.
ALCAN INC.
Per: /s/ David McAusland
--------------------------------
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