Exhibit 10.3
CONFIDENTIAL TREATMENT REQUESTED
The confidential portions of this exhibit have been delivered
separately to the Securities and Exchange Commission pursuant to a
confidential application for confidential treatment in accordance
with Rule 24b-2 under the Securities Exchange Act of 1934, as
amended.
REDACTED PORTIONS OF THIS EXHIBIT ARE MARKED BY AN
[***].
LICENSE AGREEMENT
BETWEEN
MOTOROLA MOBILITY LLC.
AND
ZOOM TELEPHONICS, INC.
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TABLE OF CONTENTS
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1
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DEFINITIONS
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4
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2
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GRANT OF LICENSE
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6
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3
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SAMPLES; QUALITY CONTROL
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7
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4
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APPROVED MANUFACTURERS
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10
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5
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CONDITIONS APPLICABLE TO APPEARANCE OF TRADEMARKS
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12
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6
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PROTECTION OF TRADEMARKS
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13
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7
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PRODUCT WARRANTY AND SUPPORT
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14
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8
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ROYALTIES, REPORTS AND SET-UP FEE
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15
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9
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SALES AND MARKETING
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17
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10
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TERM AND TERMINATION
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18
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11
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POST TERMINATION RIGHTS AND OBLIGATIONS
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20
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12
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CONFIDENTIALITY AND INTELLECTUAL PROPERTY
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21
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13
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EXPORT; NO TRANSSHIPPING
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23
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14
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REPRESENTATIONS AND WARRANTIES
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24
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15
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INDEMNITY AND INSURANCE
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25
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16
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DISPUTE RESOLUTION
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27
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17
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FORCE MAJEURE
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27
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18
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LIMITATION OF LIABILITY
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28
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19
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COMPLIANCE WITH LAWS
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28
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20
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INTELLECTUAL PROPERTY
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28
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21
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PRESS RELEASES
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29
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22
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ETHICS AND CONFLICTS OF INTEREST
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29
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23
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NOTICES
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29
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24
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ASSIGNMENT OF RIGHTS AND SUBLICENSE
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30
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25
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FREEDOM OF ACTION
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30
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26
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APPROVALS
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31
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27
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WAIVER OF DEFAULT OR OTHER RIGHTS
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31
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28
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SEVERABILITY
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31
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29
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SECTION HEADINGS
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31
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30
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EXHIBITS
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32
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31
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SURVIVAL
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32
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32
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TIME IS OF THE ESSENCE
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32
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33
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RIGHTS CUMULATIVE
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32
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34
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ENTIRE AGREEMENT
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32
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35
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GOVERNING LAW
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33
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TRADE MARK LICENSE AGREEMENT
THIS AGREEMENT (“Agreement”)
is made
between:
BETWEEN
(1)
MOTOROLA MOBILITY
LLC., a Delaware Limited Liability Corporation, having its
principal office at 222 West Merchandise Mart Plaza, Chicago, IL
60654 , USA (“
Motorola
”); and
(2)
ZOOM TELEPHONICS,
INC., a Delaware Corporation having its principal office at 207
South Street, Boston MA 02111 USA (“
Licensee
”).
with
reference to the following recitals:
A.
Motorola has the
right to license certain Trademarks, including MOTOROLA and the
Stylized M logo. The Trademarks constitute valuable rights owned
and used by Motorola in conducting its business and designating the
origin or sponsorship of distinctive branded products by
Motorola;
B.
Motorola wishes to
grant a license to certain Trademarks to Licensee for use in
connection with certain Products;
C.
Licensee wishes to
use the Trademarks upon and in connection with the manufacture,
sale, marketing, and distribution of certain Products;
D.
Motorola desires to
protect the integrity of its Trademarks and to preserve its right
to label its products with its Trademarks so as to avoid consumer
confusion and to distinguish its products from those of its
competitors; and
E.
Licensee and
Motorola agree that certain restrictions on Licensee’s use of
the Trademarks are necessary to ensure that the Trademarks are not
diluted or subject to disrepute in the course of Licensee’s
use of them, that Motorola’s reputation is not subjected to
disrepute, and that Motorola’s rights in the Trademarks and
ownership of the Trademarks are preserved.
NOW,
THEREFORE, in consideration of the mutual promises of this
Agreement, the parties agree as follows:
1.
DEFINITIONS
1.1
In this
Agreement:
“Affiliates”
means affiliated, associated or
subsidiary companies of Licensee or Motorola (as applicable) or
persons or other entities with a common ownership, common
management, common control, or interest in or interlocking
directorate with, Licensee or Motorola.
“
Approved
Sample
”
means Product or Product Materials
that have been delivered to and approved in writing by
Motorola’s Representative as provided in Section 3 of this
Agreement.
“
Approved
Manufacturer
” means a contract manufacturer or
supplier to Licensee of the Product or Product Materials that has
been approved by Motorola and that has executed a
Manufacturer’s Agreement incorporating all of the terms of
the Manufacturer’s Agreement set forth in Exhibit
D.
“
Authorized
Channels”
means the channels in the Territory set
forth in Exhibit A.
“
Business
Day
” means a day that is not a Saturday or Sunday or a
legal holiday and on which banks are not required or permitted by
law or other governmental action to close in Illinois.
“
Days
”
means calendar days.
“
Derivative
Works
” means any computer
program, work, industrial design, ornamental design, product,
service, improvement, supplement, modification, alteration,
addition, revision, enhancement, new version, new edition, remake,
sequel, translation, adaptation, design, plot, theme, character,
story line, concept, scene, audio-visual display, interface element
or aspect, in any medium, format, use or form whatsoever, whether
interactive or linear and whether now known or unknown (including
but not limited to sound recordings, phonorecords,
computer-assisted media, games, books, magazines, periodicals,
merchandise, animation, home videos, radio, motion pictures, cable
and television), that is derived directly or indirectly, from any
Motorola Intellectual Property Rights, or any part or aspect of any
thereof, or that uses or incorporates any of the Motorola
Intellectual Property Rights, or any part or aspect of any
thereof.
“
Effective
Date
” means January 1,
2016.
“
Intellectual
Property Rights
”
means
any and all (by whatever name or term known or designated) tangible
and intangible and now known or hereafter existing: (i) rights
associated with works of authorship throughout the universe,
including but not limited to copyrights (including without
limitation the sole and exclusive right to prepare Derivative Works
of copyrighted works and to copy, manufacture, reproduce, lend,
distribute copies of, modify, publicly perform and publicly display
the copyrighted work and all derivative works thereof), moral
rights (including without limitation any right to identification of
authorship and any limitation on subsequent modification) and
mask-works; (ii) rights in and relating to the protection of
trademarks, service marks, trade names, internet domain names,
goodwill, rights in packaging, rights of publicity, merchandising
rights, advertising rights and similar rights; (iii) rights in
and relating to the protection of
innovations, know-how,
trade secrets and confidential,
technical, and non-technical information
; (iv) patents, designs, algorithms and other
industrial property rights and rights associated therewith;
(v) other intellectual and industrial property and proprietary
rights (of every kind and nature throughout the universe and
however designated) relating to intangible property that are
analogous to any of the foregoing rights (including without
limitation logos, character rights, “rental” rights and
rights to remuneration), whether arising by operation of law,
contract, license or otherwise; (vi) registrations,
applications, renewals, extensions, continuations, divisions or
reissues thereof now or hereafter in force throughout the universe
(including without limitation rights in any of the foregoing); and
(vii) rights in and relating to the sole and exclusive
possession, ownership and use of any of the foregoing throughout
the universe, including without limitation the right to license and
sublicense, franchise, assign, pledge, mortgage, sell, transfer,
convey, grant, gift over, divide, partition and use (or not use) in
any way any of the foregoing now or hereafter (including without
limitation any claims and causes of action of any kind with respect
to, and any other rights relating to the enforcement of, any of the
foregoing).
“
Laws
” mean any and all applicable laws,
statutes, rules, regulations, including, but not limited to, local
and national laws, statutes, rules and regulations, treaties,
ministerial guidance or guidelines, voluntary industry standards,
association laws, codes, etc. pertaining to any activities of
Motorola or any third party engaged by Motorola in connection with
the performance of the obligations arising under this
Agreement.
“
Manufacturer’s
Agreement
” means an
agreement among Motorola, Licensee and a manufacturer or supplier
of the Product or Product Materials incorporating all of the terms
of the Manufacturer’s Agreement set forth in Exhibit
D.
“
Net
Sales
” means gross sales
(the gross invoice amount billed by Licensee or its Affiliate(s) to
customers) of the Products, less Product refunds or credits to
customers for returned Products.
“
Product
” or “
Products
” means specific products or product
categories as established in Exhibit A for which the Licensee is
authorized under this Agreement and
which have been
manufactured in accordance with the Product Specification(s) and
which bear the Trademarks.
“
Product
Materials
” means packaging, warranty statements, user
guides, and other in-box materials, and marketing materials,
including but not limited to point-of-sale materials, publicity,
advertising, websites, signs, catalogs, product brochures, posters
and other materials relating to the Product.
“Promptly”
means a reasonable effort to perform
within 15 business days.
“
Specifications
”
means the industrial design finishing specifications and
engineering specifications for each Product approved by Motorola as
provided in section 3.
“Sales Year”
or
“Sales
Years”
means a period of
time that is twelve months or less in time, as defined in Exhibit
A, during which sales of Products are measured.
“
Territory
”
means the authorized countries referred to in Exhibit A subject to
the restrictions in Section 13.
“
Trademarks
”
means one or more the trade names, logos, trade dress, trademarks,
and service marks referred to in Exhibit B.
2. GRANT
OF LICENSE
2.1
Motorola grants to
Licensee, subject to the terms and conditions of this Agreement,
the exclusive, non-assignable, limited right and license during the
Term to use the Trademarks upon the Products and in connection with
the manufacture, sale, marketing and distribution of the Products
through Authorized Channels in the Territory.
2.2
Licensee may
manufacture Products or have Products manufactured for it anywhere
in the world subject to the terms of this Agreement including the
restrictions and obligations of Sections 2.1, 3, 13, and 19 of this
Agreement.
2.3
Licensee is further
authorized to use in the Territory the Trademarks in Product
Materials directly related to Products including the use of the
Trademarks and in publicity, advertising, signs, catalogs, product
brochures, packaging, point-of-sale materials, websites, and other
forms of advertising, subject to the terms and conditions of this
Agreement.
2.4
Co-branding
. Licensee may not
include any other trademarks, other than the licensed Trademark, on
the Products, without the express written permission of Motorola.
For purposes of clarification, the forgoing prohibition includes
co-branding with Licensee’s own trademarks (including product
names), or third party trademarks.
2.5
MSI License
. Notwithstanding
anything herein to the contrary, the licenses granted hereunder are
subject to the terms and conditions of, and shall not be construed
to grant any rights exclusively granted pursuant to the MSI
License.
2.6
No Use as Business Name
.
Licensee shall not use, or permit, direct or encourage a third
party to use, the Trademarks or any other designation of origin
that is confusingly similar thereto in or as part of (i) any
corporate name, “d/b/a,” business name, fictitious
name, partnership name or other identifier (without limiting
Licensee’s rights to use the Trademarks as pursuant to
Section 2.1), or (ii) any domain name; in each case, except with
the express written permission of Motorola.
2.7
Reservation of Rights
. All
rights not expressly granted herein are reserved by Motorola and
its Affiliates. Without limiting the foregoing, Licensee shall have
(i) no right to use any other trademarks of Licensor, its licensors
or their respective Affiliates, and (ii) no license is granted
hereunder for the use of the Trademarks for any purpose, in any
territory, or on any product or for any use through any channel of
distribution other than as expressly set forth herein.
3.
SAMPLES;
QUALITY CONTROL
3.1
Motorola shall provide Licensee with artistic renderings of the
Trademarks and with Trademark Use Guidelines, as provided in
Exhibits B and C. Licensee shall use the Trademarks only as
provided in the artistic renderings provided by Motorola and shall
comply with the Trademark Use Guidelines provided by
Motorola.
3.2
Licensee may propose the Products to market and sell under this
Agreement by submitting sketches or other artistic renderings to
Licensor. Licensor may provide the sketches to its internal design
department or external design consultants for comment and revision.
If Licensor approves the product sketches, Licensee shall then
submit finishing specifications and engineering specifications for
approval by Licensor. When approved by Licensor, these documents
shall be the Specifications for the Product. Motorola’s
approvals do not modify Licensee’s representations, and
warranties or eliminate Licensee’s indemnification
obligations as provided in Sections 14.2 and 15.1.
3.3
Prototypes. Licensee shall produce and submit to Motorola one or
more prototypes of the proposed Product. Motorola agrees to
Promptly review the prototype(s) and to notify Licensee of its
decision in writing to designate the prototype(s) as approved or
not approved. Motorola may approve or disapprove any prototype in
its sole discretion. Motorola’s approvals do not modify
Licensee’s representations, and warranties or eliminate
Licensee’s indemnification obligations as provided in
Sections 14.2 and 15.1.
3.4
Sample
Product
Materials.
Licensee shall produce and submit to Motorola one
or more samples of all Product Materials it proposes to use in
connection with the Product. If Licensee plans to make any
advertising claims in the Product materials it shall submit
substantiation of the claim(s) with the samples. Any Product
Materials that are not produced in English shall be accompanied by
an English translation. Motorola agrees to Promptly review the
sample(s) and to notify Licensee of its decision in writing to
designate the sample(s) as approved or not approved. Motorola may
approve or disapprove any sample in its sole discretion.
Motorola’s approvals do not modify Licensee’s
representations, and warranties or eliminate Licensee’s
indemnification obligations as provided in Sections 14.2 and
15.1.
3.5
Checklist.
Motorola
shall provide Licensee with a checklist of requirements for final
approval of the Product, including, but not limited to, analyses of
Licensee’s or its proposed manufacturer’s quality
control practices, and the results of quality testing of the
proposed Product. Motorola reserves the right to require Licensee
to perform certain quality tests at Motorola qualified testing
labs. Licensee must meet all checklist requirements in order to
obtain final approval of the Product. Motorola’s approvals do
not modify Licensee’s representations, and warranties or
eliminate Licensee’s indemnification obligations as provided
in Sections 14.2 and 15.1.
3.6
Licensee must obtain Motorola’s written approval of final
production samples of each Product and all Product Materials, prior
to the sale, publication, distribution or use of such Product
and/or Product Materials. Licensee shall furnish, at no cost to
Motorola, final production samples of each Product and
corresponding Product Materials to Motorola’s Representative,
who may retain such final samples at Motorola’s discretion.
Motorola agrees to Promptly notify Licensee in writing if it
approves of such final production samples of each Product and final
production samples of Product Materials If such Product and/or
Product Materials are not approved, Motorola will advise Licensee
of the reasons for the rejection. Licensee shall make all
corrections at its expense and re-submit the proposed Product or
Product Materials, or withdraw the proposed Product and/or Product
Materials from consideration. Motorola may approve or disapprove
any sample in its sole discretion. Motorola’s approvals do
not modify Licensee’s representations, and warranties or
eliminate Licensee’s indemnification obligations as provided
in Sections 14.2 and 15.1.
3.7
Licensee agrees that, once approved, it will not make any changes
to an approved Product or Product Materials without seeking new
approval from Motorola. Individual Approved Products may not be
bundled together without separate approval of the bundle and its
Product Materials. Each Product and the Product Materials shall at
all times: (i) conform to the terms of this Agreement; (ii) conform
to the Trademark Use Guidelines and the Specifications and (iii) be
the same in appearance, form, fit, function, quality and regulatory
compliance to the Approved Sample of the Product and/or Product
Materials. If at any time the Product and/or Product Materials fail
to meet these requirements, Licensee shall Promptly, but in no
event later than thirty (30) days of becoming aware of such
failure, make all changes necessary to bring such Product and/or
Product Materials into conformance, or cease using the Trademarks
on a nonconforming Product and/or Product Materials, or cease
selling the Product and distributing the Product Materials. In
addition, Licensee may be required by Motorola within ten (10)
business days after becoming aware of such nonconformance, to take
steps to withdraw any nonconforming Products and/or Product
Materials from the market if it is determined by Motorola to be a
nonconformance creating significant safety, quality, customer
satisfaction or negative brand impact issues.
3.8
If requested by Motorola due to reasonable concerns over
nonconformance with the Approved Samples, Licensee shall, at its
own expense, submit to Motorola the results of inspections and
tests that have been performed by a Motorola approved independent
testing laboratory on randomly selected samples of each Product to
show conformance. In addition, Motorola may require Licensee, at
Licensee’s own expense, to perform tests at an independent
laboratory approved by Motorola
to show conformance of the Product
with the Specifications. At its sole discretion, Motorola may
purchase the Product, at its own expense, and review the Product
and Product Materials to ensure that they conform to the
Specifications and conform in appearance, form, fit, quality,
function and regulatory compliance to the Approved
Samples.
3.9
Upon five (5) business days’ notice to Licensee, Motorola
shall have the right to conduct or have conducted, during regular
business hours, an examination of Products manufactured by or for
Licensee (including those assembled or tested) at Licensee’s
facilities to determine compliance of such Products with the
Specifications and the Approved Sample(s) and the Trademark
Guidelines.
3.10
Costs.
Motorola and
Licensee shall each bear their own costs, including, but not
limited to, reasonable and necessary travel and inspection services
associated with the inspection and testing of Products for
conformance with the requirements of this Section 3 , except that
Licensee alone shall bear any costs associated with the inspection
and testing of Products that are conducted by an independent
testing laboratory as referenced in Section 3.5 and shall bear the
cost of the samples referenced in this Agreement.
3.11
Licensee acknowledges that Motorola considers Motorola’s
quality assurance programs for its products to be essential for
maintaining its superior reputation and goodwill, the safeguarding
of which is of primary consideration in entering into this
Agreement. In consideration of this, Licensee agrees to develop and
implement a quality improvement program for the Products, the
requirements for which will be determined by mutual agreement. This
plan may include data retention requirements in addition to those
otherwise specified in this Agreement, tests of the Products, and
Product/Process improvements as reasonably deemed necessary by
Motorola.
3.12
Licensee shall upon reasonable notice participate in quality
meetings whenever deemed necessary by Motorola. Licensee agrees
upon reasonable notice to participate in quality training whenever
deemed appropriate by Motorola.
3.13
Licensee shall provide Motorola with on-going lot acceptance
histogram data per Motorola specified format for each shipment of
Product units for quality assurance review. Licensee shall provide
the previous month’s data by the 15
th
day of each month.
This requirement shall be in effect from the effective date of this
Agreement and continue until Motorola determines that the
manufacturing process and the Products are stable.
3.14
Licensee shall institute a product quality program as required by
Motorola that generates monthly quality reports, the content of
which shall be determined by mutual agreement, covering items such
as total defects per hundred unit (“DPHU”), yields,
sigma for each process, Pareto, corrective actions and other items
reasonably deemed necessary to maintain and track Product quality.
Licensee shall provide the previous month’s data by the
15
th
day
of each month.
3.15
Licensee shall comply with Motorola quality metrics that are
appropriate to the Product as a conformance standard such as
statistical product control (“SPC”) limit DPHU > 2,
Manufacturer’s final quality audit (“FQA”) 0.0%
Critical, 0.2% Major and 1% Minor constituting a Stop Build/Ship
condition with fifteen (15) days maximum to recovery. If these
metrics are not met it will constitute a Stop Build/Ship condition
and Licensee will have fifteen (15) days maximum to
recovery.
3.16
Licensee shall institute an Out-of-Box Testing program as required
by Motorola that yields Out-of-Box (OOB) defect rate data.0.0%
Critical, 0.2% Major and 1% Minor . Motorola shall have the right
to reject lots that test above the acceptable minimum OOB defect
standards.
3.17
Licensee shall comply with products manufactured by the Approved
Manufacturer hereunder are required to have in-service reliability
and failure rates reasonably comparable to competing high volume
models, but in no event higher than 2% field failure rate per
month.
3.18
If Licensee or any Approved Manufacturer receives notice of any
recall, proposed recall or government warning letter regarding the
Products, Licensee shall comply with the notice and shall
immediately notify Motorola and shall provide Motorola with a
detailed corrective action plan.
4.
APPROVED
MANUFACTURERS
4.1
Licensee must obtain Motorola’s written consent prior to
using any third party to manufacture or to supply Licensee with any
Product or Product accessory (including batteries). Licensee shall
forward to Motorola a written list of proposed manufacturers or
suppliers and the Product or Product accessories that each is to
manufacture or supply and the location(s) where they shall be
manufactured. Motorola may inspect the proposed manufacturing
facilities and Motorola may request any additional business or
credit information regarding the proposed manufacturer or supplier
it deems necessary to make a determination. Motorola shall notify
Licensee of its decision to approve or disapprove a proposed
manufacturer in writing and, if not approved shall explain the
reasons for its disapproval. A manufacturer or supplier who is so
approved is an Approved Manufacturer for only that Product or
Product accessory for which it is approved and only after executing
a Manufacturer’s Agreement.
4.2
Prior to manufacturing any Product or using any manufacturer to
manufacture any Product, Licensee shall execute a
Manufacturer’s Agreement or have the proposed manufacturer
execute a Manufacturer’s Agreement that has terms that are
legally enforceable in the jurisdiction in which the Product or
Product accessories are manufactured or supplied and includes at
least the same terms and conditions as those set out in the
Manufacturer’s Agreement in Exhibit D. Licensee may include
additional terms in the Manufacturer’s Agreement provided
they do not result, in the opinion of Motorola, in a reduction in
the protections and remedies available to Motorola under the terms
in Exhibit D. A copy of the executed Manufacturer’s Agreement
shall be delivered to Motorola before the Licensee or any Approved
Manufacturer may commence the manufacture or supply of any Product
or Product accessories.
4.3
Should either party become aware of any applicable laws or
regulations in any jurisdiction in the Territory that are
inconsistent with the provisions and intent of the
Manufacturer’s Agreement, it shall notify the other party
within five (5) days of becoming aware of such
inconsistency.
4.4
If Motorola determines that the Licensee or an Approved
Manufacturer has breached any Manufacturer’s Agreement,
Motorola shall advise the Licensee of a breach or to enforce the
Manufacturer’s Agreement against the breaching Approved
Manufacturer. Breaches shall include failure of the Licensee or an
Approved Manufacturer to meet any of its obligations included in
the terms of the Manufacturer’s Agreement in Exhibit D.
Licensee will comply with the Manufacturer’s Agreement or
will enforce the Manufacturer’s Agreement against the
breaching Approved Manufacturer by obtaining a cure of the breach
or terminating the Manufacturer’s Agreement within thirty
(30) days from Motorola’s notice to Licensee. If the Licensee
or the Approved Manufacturer fails within this thirty (30) day
period to cure such breach to the satisfaction of Motorola, the
Licensee or that Approved Manufacturer shall immediately be
terminated as an Approved Manufacturer and all rights to
manufacture Product and/or Product Materials under this Agreement
are immediately terminated.
4.5
If Licensee determines that an Approved Manufacturer has breached
any Manufacturer’s Agreement, Licensee shall immediately give
notice to Motorola of such breach. Licensee will enforce the
Manufacturer’s Agreement against the breaching Approved
Manufacturer by obtaining a cure of the breach or terminating the
Manufacturer’s Agreement within thirty (30) days of
Licensee’s determination. Licensee acknowledges that any
failure by Licensee to comply with the Manufacturer’s
Agreement or to enforce or terminate any Manufacturer’s
Agreement against a breaching Approved Manufacturer in accordance
with Sections 4.4 and 4.5 is a material breach of this Agreement,
and that such failure will cause irreparable harm and damages to
Motorola.
4.6
If Licensee fails or refuses to immediately comply with or enforce
the Manufacturer’s Agreement against the breaching Approved
Manufacturer in accordance with Sections 4.4 and 4.5, Motorola
shall have the right to enforce the provisions of the
Manufacturer’s Agreement relating to use and registration of
the Trademarks and/or Copyrights against the Licensee or the
breaching Approved Manufacturer. In such cases, the cost of
enforcing the Manufacturer’s Agreement, including but not
limited to attorneys fees, shall be paid by Licensee, whether the
Manufacturer’s Agreement is enforced by Motorola or Licensee.
Licensee agrees to cooperate fully with Motorola, at
Licensee’s own expense, if Motorola enforces the provisions
of the Manufacturer’s Agreement relating to use and
registration of the Trademarks and/or Copyrights breached by an
Approved Manufacturer.
4.7
Upon seven (7) business days’ notice to Licensee, who shall
in turn notify any pertinent Approved Manufacturer, Motorola shall
have the right to inspect or have inspected, at Motorola’s
expense, the manufacturing facilities of the Approved Manufacturer
during regular business hours to determine compliance with the
terms of the Manufacturer’s Agreement and compliance of the
Products, Product accessories and/or Product Materials with the
Specifications and Approved Sample(s) being manufactured at
Approved Manufacturer’s facilities. If at any time the
Products, Product accessories and/or Product Materials fail to
conform to the Specifications or are not the same in appearance,
form, fit, function and regulatory compliance to the Approved
Sample(s), Motorola or its authorized representative shall so
notify Licensee. Upon such notification, Licensee shall Promptly,
but in no event later than thirty (30) business days, work with the
Approved Manufacturer to make all changes necessary to bring such
Products, Product accessories and/or Product Materials into
conformance, or cease using the Trademarks on such nonconforming
Products and/or Product Materials, or cease selling such Products.
In addition, Licensee, at its cost, may be required by Motorola
within ten (10) business days after becoming aware of such
nonconformance, take steps to withdraw any nonconforming Products,
Product accessories and/or Product Materials from the market if
reasonably determined by Motorola to be a nonconformance creating
significant safety, quality, customer satisfaction or negative
brand impact issues.
5.
CONDITIONS
APPLICABLE TO APPEARANCE OF TRADEMARKS
5.1
Motorola may modify the Trademarks Use Guidelines regarding the
style, appearance and manner of use of the Trademarks as necessary,
in its sole discretion. If Motorola requires Licensee to implement
such changes, it shall give written notice to Licensee of any such
change(s). Licensee shall Promptly implement the revised Trademarks
Use Guidelines on a running change basis, but in no event later
than one hundred twenty (120) business days of Licensee’s
receipt of Motorola’s notification of any change in the
Trademarks Use Guidelines. Any use of the Trademarks not
specifically provided for by the Trademarks Use Guidelines shall be
adopted by Licensee only upon prior approval in writing by
Motorola.
5.2
Motorola may require that the following notice, all or in part, be
used on the Products and/or Product Materials to identify the
licensed use under the Agreement and the proprietary rights of
Motorola:
Motorola TM attribution statement for Licensee
packaging
:
Manufactured, distributed or sold by (INSERT LICENSEE
NAME
HERE), official licensee for this product.
MOTOROLA and the
Stylized M Logo (and/or insert other Marks, as applicable) are
trademarks or registered trademarks of Motorola Trademark Holdings,
LLC. and are used under license. All other trademarks are the
property of their respective owners. © 20XX Motorola Mobility
LLC.
(with X being the
date of publication)
All rights
reserved.
.
Please contact customer service at XXX-XXX-XXXX (INSERT CUSTOMER
SERVICE NUMBER HERE) for questions/comments, warranty, support or
service related to this product.
Motorola TM attribution statement for Licensee
Collateral
:
MOTOROLA and the Stylized M Logo (and/or insert other Marks, as
applicable) are trademarks or registered trademarks of Motorola
Trademark Holdings, LLC. and are used under license. . All other
trademarks are the property of their respective owners. © 20XX
Motorola Mobility LLC.
(with X being the
date of publication)
All rights
reserved.
.
5.3
Motorola may require through written notice that Licensee adopt and
use different Trademarks and/or Product Materials specifications
for different countries in the Territory, and Licensee agrees to be
bound by such requirements of Motorola.
6.
PROTECTION
OF TRADEMARKS
6.1
Licensee acknowledges that Motorola is the exclusive owner of the
Trademarks and any trademark incorporating all or any part of the
Trademarks. Without limiting the foregoing, Licensee hereby assigns
to Motorola all right, title and interest in the Trademarks,
together with the goodwill attaching thereto that may inure to
Licensee in connection with this Agreement or from its use of the
Trademarks hereunder. Licensee agrees to execute and deliver such
documents as necessary for Motorola to register Licensee as
registered user or permitted user, or to withdraw Licensee as a
registered user or permitted user, of the Trademarks. All use of
the Trademarks by Licensee shall inure to the sole benefit of
Motorola. Licensee shall cooperate and shall execute all papers
reasonably requested by Motorola to affect further registration,
maintenance and renewal of the Trademarks at the sole expense of
Motorola.
6.2
Licensee will not attempt in any country or territory to register,
nor encourage or assist a third party to register, the copyright,
or to register as a trademark, internet domain name, design patent
or industrial design, any portion of the Motorola Intellectual
Property Rights or derivations or adaptations thereof, or any work,
symbol or design that is so similar thereto as to clearly suggest
associations with or sponsorship by Motorola. In the event of any
breach of the foregoing, Licensee agrees to terminate the
unauthorized registration activity and to execute and deliver, or
cause to be delivered, to Motorola such assignments and other
documents as Motorola may require to transfer to Motorola all
rights to the registrations, patents or applications involved.
Licensee will not, nor will it encourage or assist a third party
to, challenge the validity or ownership of any patent, copyright,
trademark, internet domain name, or other Intellectual Property
Rights or registrations of Motorola.
6.3
If Licensee learns of any infringement of the Trademarks or
Copyrights or of the existence, use or promotion of any mark or
design similar to the Trademarks or the Copyrights, Licensee shall
Promptly notify Motorola. Motorola shall have the sole right and
discretion to decide what legal proceedings or other action, if
any, shall be taken, by whom, how such proceedings or other action
shall be conducted. Any legal proceedings instituted pursuant to
this Section 6.3 shall be for the sole benefit of Motorola.
Licensee shall, at the request of Motorola, cooperate and assist
Motorola in any such suit or action, provided that Motorola will
reimburse Licensee for all documented reasonable costs, including
attorneys’ fees.
6.4
In the performance of this Agreement, Licensee shall comply with
applicable Laws and regulations, and those Laws and regulations
particularly pertaining to the proper use and designation of
trademarks in the countries of the Territory. Should Licensee be or
become aware of any applicable Laws or regulations that are
inconsistent with the provisions of this Agreement, Licensee shall
Promptly notify Motorola of such inconsistency. The parties then,
shall in good faith, negotiate a modification to this Agreement
such that it complies with applicable law and regulations or
Motorola may terminate the license and rights granted hereunder in
that jurisdiction, and the Territory set forth in Exhibit A shall
be appropriately amended.
7.
PRODUCT
WARRANTY AND SUPPORT
7.1
Licensee shall provide a warranty and support service plan for each
Product. Licensee must obtain Motorola’s written approval of
the warranty and support service plan for each Product prior to the
manufacture of the Product for each country in the Territory.
Licensee shall specify the warranty and support service plan it
will provide for each Product in the Product Specification or
otherwise provide it to Motorola in writing. Such warranty shall,
at a minimum, provide a one-year warranty period and comply with
the requirements set forth in Exhibit E, unless otherwise approved
in writing by Motorola. Motorola agrees to Promptly notify Licensee
if it approves the warranty and support plan or, if not approved,
Motorola will advise the Licensee of corrections required by
Motorola for the warranty and support service to be approved. Any
approval by Motorola shall not relieve Licensee from its
obligations set forth in this Agreement, including but not limited
to complying with local laws on warranties in the Territories the
Products are sold.
7.2
Licensee will be fully responsible for all end user support service
and warranty costs, including but not limited to the following (if
applicable): transportation costs, Product replacements, service
labor, field repair, refunds, returns, and other customer
concessions to ensure each customer’s satisfaction for the
duration of the applicable warranty period. Motorola may require
Licensee to halt sales or to recall Product in whole or in part or
to take other corrective actions where Motorola reasonably
determines customer satisfaction, quality, safety, returns or
compliance problem(s) exist.
7.3
All Product packaging shall include a conspicuous use of the
telephone number for Licensee’s customer service department
or customer service representative so that any questions regarding
support service for the Products including warranty can be directed
by the consumer or by Motorola to Licensee. At its sole discretion,
Motorola may also require the Licensee to affix a sticker on each
Product indicating the telephone number of Licensee’s
customer service department. Licensee shall provide the telephone
number and address for customer service and warranty repair to
Motorola for each Product before the initial sale of such Product.
If Motorola determines an excess number of questions regarding any
Product have been directed by the consumer to Motorola, Motorola
and the licensee shall mutually agree on a corrective action. If a
reasonable corrective action cannot be agreed to, Motorola may
require Licensee to withdraw such Product from the market or
require Licensee to pay Motorola for future costs incurred related
to such questions.
7.4
Throughout the period during which the warranty for any Product is
in effect, Licensee shall provide a well-manned toll-free (where
available) telephone service number for receipt of service calls
for the Products. At a minimum, such telephone service number shall
operate manned with live personnel between the hours of 08:30hr -
17:00hr local time for all time zones in which the Products are
sold. At all other times, such telephone service number shall have,
at a minimum, an automated message specifying the times during
which the service number shall be manned with live
personnel.
7.5
Licensee will collect, and maintain, and, upon request, deliver to
Motorola all applicable data and records relating to Product
returns, Product warranty and warranty service rendered. In
addition, Licensee shall prepare monthly reports regarding Product
Returns, Product Warranty, and warranty service rendered, due to
Motorola the 15
th
day after the close
of the month In addition, within thirty (30) days after the end of
each quarterly period, Licensee shall furnish to Motorola a
statement summarizing all significant problems and quality issues
reported to Licensee’s customer service department for each
Product in the preceding quarter.
8.
ROYALTIES,
REPORTS AND SET-UP FEES
8.1
Licensee agrees to pay Motorola a royalty equal to a percentage, as
shown in Exhibit A for each Product, of all Net Sales for the
Products (”Royalty”). The Royalty for each Sales Year
shall be at least the Minimum Royalty amount shown in Exhibit A.
Licensee shall pay the Royalties in quarterly periods ending on the
last day of March, June, September and December during the Sales
Year. The Royalty obligation shall accrue upon the sale of the
Products regardless of the time of collection by Licensee. For
purposes of this agreement, Products shall be considered
“sold” on the date when such Products are billed,
invoiced, shipped or paid for, whichever event occurs first,
provided that Products sold on consignment shall be deemed
“sold” when such products are billed, invoiced, or paid
for, whichever event occurs first. No deductions shall be made for
uncollectible accounts. Royalties will be paid in US dollars. If
the gross sale price is expressed in any currency other than United
States Dollars, the royalty rate shall be applied to that currency
converted to United States Dollars based upon the exchange rate
that appears in the “Currency Trading” section of the
Eastern Edition of
The
Wall Street Journal
on the last day of the quarterly period
in which the royalties become due.
8.2
On or before the fifteenth (15
th
) day following each
calendar quarter during the Sales Year, as set forth in Exhibit A,
Licensee shall make a quarterly payment to Motorola which shall be
calculated as follows: The greater of the year-to-date Minimum
Royalty due or the year-to-date Royalties due, minus the actual
Royalty payments made for the Sales Year. The Minimum Royalty due
in each quarter shall be the Minimum set forth in Exhibit A divided
by the number of whole quarters for the Sales Year. Neither the
expiration nor the termination of this Agreement shall relieve
Licensee from its Royalty and Minimum Royalty payment
obligations.
8.3
Fifteen (15) days after the close of each month, Licensee will also
furnish to Motorola, on forms provided or approved by Motorola, a
statement of Net Sales and number of units of all Products sold by
country within the Territory during the immediately preceding month
and statements of other information as the forms may require. Such
statements shall be sent via email to Nadim Halabi at
nhalabi@motorola.com. Such statements will be certified true and
correct by a duly authorized officer of Licensee if Licensee is a
corporation or by a principal of Licensee if Licensee is a
partnership or sole proprietor. In the event Licensee does not
provide Motorola with payment of the required royalties as provided
or does not provide the required reports, Licensee agrees to pay
interest on the royalties as provided in paragraph 8.10 from the
due date until the date royalties are paid to Motorola and the
corresponding monthly reports are made and delivered to
Motorola.
8.4
Credits for Products for which royalties were previously paid shall
be made against royalties in the quarter the Product returns are
received and credited to Licensee’s customers.
8.5
The Licensee shall pay in U.S. Dollars to Motorola a one-time,
non-refundable license setup fee in the amount set forth in Exhibit
A by no later than January 1, 2016. The setup fee is not a royalty
payment and is incremental to royalties for the first Sales
Year.
8.6
All payments shall be electronically transferred to Motorola with
all electronic transfer fees to be paid by Licensee
at:
[*****************]
[*****************]
[*****************]
[*****************]
[*****************]
[*****************]
[*****************]
8.7
During the term of this Agreement and for at least five (5) years
following the termination or expiration of this Agreement, Licensee
and its Affiliates shall maintain at Licensee’s or its
Affiliate’s principal office such books and records including
but not limited to production, inventory and sales records
(collectively “Books and Records”) as are necessary to
substantiate that (i) all statements submitted to Motorola
hereunder were true, complete and accurate, (ii) all royalties and
other payments due Motorola hereunder shall have been calculated
and paid to Motorola in accordance with the provisions of this
Agreement, and (iii) no payments have been made, directly or
indirectly, by or on behalf of Licensee to or for the benefit of
any Motorola employee or agent who may reasonably be expected to
influence Motorola’s decision to enter this Agreement or the
amount to be paid by Licensee under this Agreement. (As used in
this Section, “payment” shall include money, property,
services, and all other forms of consideration.) All Books and
Records shall be maintained in accordance with generally accepted
accounting principles consistently applied, and Licensee shall have
its financial statements audited annually. During the term of, and
for five (5) years after the termination or expiration of this
Agreement, the Books and Records shall be open to inspection,
audit, and copy by or on behalf of Motorola during business
hours.
8.8
If any examination reveals that Licensee has underpaid the royalty,
Licensee shall pay the shortfall to Motorola within ten (10) days
of being notified of the shortfall. Motorola shall bear the costs
and expenses of conducting each examination. However, if the
examination reveals that Licensee has underpaid the royalty by more
than five percent (5%) of the actual amount due in any one-year
period, Licensee shall pay to Motorola the shortfall, plus interest
as provided in section 8.10 and Licensee shall reimburse Motorola
for all costs and expenses incurred in conducting the
examination.
8.9
Licensee shall pay any tax (and any related interest and
penalties), however designated, imposed solely as a result of the
existence or operation of this Agreement including any tax that
Licensee is required to withhold or deduct from payments to
Motorola, except (i) any such tax constituting an income tax
imposed upon Motorola by any governmental entity within the United
States proper (the fifty (50) states and the District of Columbia);
and (ii), if the aforesaid office of Licensee is located in or
relocated to a jurisdiction outside of the United States proper,
any foreign tax imposed on Motorola or any of its subsidiaries if
such tax is allowable as a credit against U.S. income taxes of any
of such companies. In the case of taxes imposed pursuant to
sub-section (ii) of this section, Licensee shall furnish Motorola
with any evidence required by United States taxing authorities to
establish that such tax has been paid.
8.10
Interest
. Any
payment or underpayment under this Agreement that is delayed beyond
the due date shall be subject to an interest charge, calculated on
the due date and monthly thereafter, of four percent (4%) over the
United States prime rate (as reported by the Wall Street Journal on
the due date and monthly thereafter) per annum, compounded monthly
until paid, on the unpaid balance, payable in United States
dollars. If the amount of such interest exceeds the maximum
interest rate permitted by law, such fee shall be reduced to such
maximum.
9
.
SALES
AND MARKETING
9.1
Licensee shall provide Motorola with written descriptions in such
detail as may be requested from time to time by Motorola of
Licensee’s marketing and distribution
program
before the program’s
implementation or modification. Licensee shall not proceed with the
implementation of the initial program or any modification of its
marketing and distribution program without obtaining
Motorola’s prior approval.
9.2
Licensee agrees to attend an annual Planning Meeting and Operations
Review with Motorola to review its performance in comparison with
previously projected goals and objectives and to adopt goals and
objectives for the coming year. Prior to the Operations Review,
Motorola agrees to provide Licensee with a list of relevant issues
and questions to be addressed, and the Licensee agrees to address
the issues and questions in the meeting. In addition, Licensee
agrees to develop and present a detailed sales marketing plan with
projected goals and objectives for the coming year. The sales
marketing plans shall be structured in collaboration with Motorola.
The Planning Meeting and Operations Review shall take place at a
mutually agreed location during the 4
th
calendar quarter of
the year. In addition, at the discretion of Motorola, and at
Licensee’s expense, Licensee agrees to attend semi-annual or
other required performance review meetings with
Motorola.
9.3
Throughout the term of this Agreement, Licensee agrees to promote
the sales of Products in Licensee’s business operations in
the Territory. Licensee agrees to make a good faith effort to
achieve the Minimum Royalty for each Sales Year (as shown in
Exhibit A) through sale of Products.
9.4
Licensee agrees not
to offer, without prior written approval from Motorola, branded
products that are substantially similar in function and in
appearance to Products, except for the Trademarks. Motorola
acknowledges that the foregoing restriction is intended only to
prohibit Licensee from offering items that are substantially
similar to the Products under a different brand name, and is not
intended to prohibit Licensee from offering non-Trademarks branded
products generally. In the event the parties mutually agree to
customizations that differentiate the Products by including in
appearance elements that create an identity associated with the
Products, Licensee agrees to use and limit such customizations to
Products sold under this Agreement unless Motorola agrees in
writing to their use for other products. Neither party assigns to
the other party any rights in its industrial designs, technology,
and/or Intellectual Property Rights in and associated with the
Products unless specifically agreed to in writing by the
owner.
9.5
Advertising Reserve. Licensee agrees to reserve a minimum of 2% of
wholesale price and use it for advertising, merchandising and
promotion of the Product. Licensee will provide a report at the
Annual Operations Review and Planning meeting detailing how the
advertising reserve was used. If Licensee fails to provide a
detailed report demonstrating that the advertising reserve was used
for advertising, merchandising and promotion activities related
directly to the Product(s), Licensee shall pay the amount of the
reserve to Licensor as a penalty.
9.6
In order to preserve the value and integrity of the Trademarks, the
parties agree that the Products will be sold only in channels where
the suitability of the trading premises and the technical
competence of the resellers are of sufficient quality and
reliability and are appropriate for the resale of the Products
consistent with Motorola’s brand image. For the avoidance of
doubt, the following channels would satisfy such requirements;
department stores (e.g. Sears), chain consumer electronics stores
(eg. Best Buy), cable operator stores (e.g. Comcast), and general
merchandise stores (e.g. Target). Motorola reserves the right to
disapprove or withdraw approval of any specific retailer or
distributor if, in Motorola’s reasonable belief, that
retailer or distributor does not provide suitable service or
competence or maintain a suitable trading premises, or may
otherwise subject the Trademarks to devaluation or disrepute in any
way.
9.7
Other than warranty replacement Products, Licensee is prohibited
from refurbishing and reselling the Products without
Motorola’s prior written approval.
9.8
Online Sales. Motorola is in the process of developing an online
sales platform in order to consolidate the sale of all Motorola
licensed products. At Motorola’s request, Licensee shall work
with Motorola’s selected website vendor, at Licensee’s
cost, to participate in such online sales platform.
10.
TERM
AND TERMINATION
10.1
Unless sooner terminated in accordance with this Agreement, the
license and rights granted under this Agreement shall commence on
the Effective Date and shall continue in effect until December 31,
2020.
10.2
Without prejudice to any other rights that Motorola may have,
Motorola may at any time give notice of termination of this
Agreement effective immediately:
10.2.1
If Licensee shall be unable to pay its obligations when due, shall
make any assignment for the benefit of creditors, shall file a
voluntary petition in bankruptcy, shall be adjudicated bankrupt or
insolvent, shall have any receiver or trustee in bankruptcy or
insolvency appointed for its business or property, or shall make an
assignment for the benefit of creditors; or
10.2.2
If
Licensee manufactures, sells, markets, or distributes any Products
without obtaining Motorola’s approval as provided for by this
Agreement or continues to manufacture, sell, market, or distribute
any Products after receiving notice from Motorola disapproving such
Products; or
10.2.3
If Licensee breaches any provision of this Agreement relating to
the unauthorized assertion of rights in the Trademarks or
Copyrights; or
10.2.4
If Licensee breaches any provision of this Agreement prohibiting
Licensee from directly or indirectly arranging for manufacture by
third parties, assigning, transferring, sublicensing, delegating or
otherwise encumbering this Agreement or any of its rights or
obligations; or
10.2.5
If reasonable grounds for insecurity arise with respect to
Licensee’s performance of this Agreement, and Motorola
demands adequate assurance of due performance in writing, and
Licensee fails to provide such adequate assurance. within five
(5)
days after the date of
Motorola’s request therefore (or within such other shorter
period of time as Motorola may reasonably designate under the then
existing circumstances). The parties further agree that if Motorola
has requested adequate assurances, Motorola may suspend its
performance of this Agreement until Motorola receives such
assurance in writing; or
10.2.6
If Licensee shall fail for one hundred and twenty (120) consecutive
days to continue the
bona
fide
distribution and sale of the Products in commercially
reasonable quantities throughout the Territory. “Commercially
reasonable” shall mean sufficient sales to generate 50% of
the Minimum Royalty for the 120 day period or 75% or the Minimum
Royalty for the Sales Year; or
10.2.7
If Licensee fails to comply with applicable laws or ethical
standards as provided in section 19.2 and Exhibit F or refuses to
allow an inspection to determine compliance with laws and ethical
standards, as provided in section 19.3; or
10.2.8
If the quality in any Products has reached unacceptable levels
pursuant to Section 3 and a mutually agreeable action plan to
remedy the defects has not been established within seven (7) days
from notice by Motorola, or if subsequent quality reports required
by Sections 3.3 through 3.18 reveal that the defect rates have not
been reduced to the acceptable standard; or
10.2.9
If by June 1, 2016 Licensee has not begun the
bona fide
distribution and sale of the
Products in commercially reasonable quantities in the locations in
the Territory agreed in the current marketing and distribution
program adopted pursuant to Section 9 of this Agreement;
or
10.2.10
If Licensee breaches any provision of this Agreement relating to
the Territory, including but not limited to Section 2 and Section
13: or
10.2.11
If Licensee fails to recall or withdraw any nonconforming Products
and/or Product Materials from the market after being notified by
Motorola or a government entity that it must do so as provided in
Section 3.
10.3
Without prejudice to any other rights that Motorola may have,
Motorola shall have the right to terminate this agreement for any
material breach thirty (30) days after mailing a written notice to
Licensee unless the breaches are cured in the reasonable discretion
of Motorola within the thirty (30) day period. Material breaches
include but are not limited to the following:
10.3.1
If Licensee distributes or uses any Product Materials without
obtaining Motorola’s approval as provided for by this
Agreement;
10.3.2
If Licensee shall fail to make any payment due hereunder or fails
to provide any report or any statement required
hereunder;
10.3.3
If Licensee fails to obtain or maintain insurance as required by
the Section 15 of this Agreement;
10.3.4
Motorola’s reasonable determination that significant customer
satisfaction issues have arisen with any Product;
10.3.5
Licensee fails to enforce or terminate a Manufacturer’s
Agreement against a breaching Approved Manufacturer as required in
Sections 4.4, 4.5 and 4.6 or such breaching Approved Manufacturer
fails to cure such material breach; or
10.3.6
If the quality of the Products does not meet the requirements of
Section 3.
11. POST-TERMINATION
AND EXPIRATION RIGHTS AND OBLIGATIONS
11.1
If this Agreement
is terminated for any cause under Section 10.2, Licensee and
Licensee’s receivers, representatives, trustees, agents,
administrators, successors or permitted assigns shall have no right
after the effective date of termination to manufacture, sell, ship,
market or distribute Products or to use any promotional and
packaging material relating to the Products and Product Materials.
Motorola shall have the right, but not the obligation, to purchase
all or part of Licensee’s inventory of Products at cost. Any
Products not sold, shipped, and distributed by Licensee prior to
termination must, at Motorola’s election, be destroyed or
reprocessed so that the Trademarks and Motorola Intellectual
Property are no longer present in whole or in part on the Products
or on their Product Materials. Upon Motorola’s request,
Licensee shall provide evidence satisfactory to Motorola of such
destruction or reprocessing of remaining Products or Product
Materials.
11.2
After expiration of the initial term and any renewal term(s) of
this Agreement or the termination of this Agreement under any
provision other than Section 10.2, Licensee
may sell, ship,
market and distribute in the Territory Products that are on hand or
in the process of manufacture at the date of expiration or at the
time notice of termination is received for a period of ninety (90)
days after the date of expiration or the date of notice of
termination, as the case may be, provided that the royalties with
respect to that period are paid and the appropriate statements for
that period are furnished. Motorola shall have the right, but not
the obligation, to purchase all or part of Licensee’s
inventory of Products at cost upon expiration of the ninety (90)
day sell-off period permitted by this Section 11.2. Unless
purchased by Motorola, any Products not sold, shipped, and
distributed by Licensee within this ninety (90) day period must, at
Motorola’s election, be destroyed or reprocessed so that the
Trademarks and the Motorola Intellectual Property are no longer
present in whole or in part on the Products or on their Product
Materials. Upon Motorola’s request, Licensee shall provide
evidence satisfactory to Motorola of such destruction or
reprocessing of remaining Products or Product
Materials.
11.3
After the expiration or termination of this Agreement and except as
provided in Section 11.2, all rights granted to Licensee under this
Agreement shall forthwith revert to Motorola, and Licensee shall
refrain from further use of the Copyrights and/or the Trademarks or
any further reference to the Trademarks and/or the Copyrights,
either directly or indirectly, or from use of any marks or designs
similar to the Copyrights or the Trademarks in connection with the
manufacture, sale, marketing or distribution of Licensee’s
products. Licensee also shall turn over to Motorola all molds,
silk-screens, and other materials that reproduce the Copyrights or
the Trademarks or shall give evidence satisfactory to Motorola of
their destruction. Licensee shall be responsible to Motorola for
any damages caused by the unauthorized use by Licensee or by others
of such molds, silk-screens or reproduction materials that are not
turned over to Motorola.
11.4
Licensee
acknowledges that its failure to cease the manufacture, sale,
marketing or distribution of the Products and the Product Materials
at the termination or expiration of this Agreement, except as
provided in Section 11.2, will result in immediate and irreparable
damage to Motorola and to the rights of any subsequent licensee of
Motorola. Licensee acknowledges and admits that there is no
adequate remedy at law for failure to cease such activities, and
Licensee agrees that in the event of such failure, Motorola shall
be entitled to injunctive relief and such other relief as any court
with jurisdiction may deem just and proper.
11.5
Within twenty (20)
days after expiration or within ten (10) days after notice of
termination of this Agreement, as the case may be, Licensee shall
deliver to Motorola a written report indicating the number and
description of the Products and Product Materials that it had on
hand or in the process of manufacture as of the date of expiration
or at the time termination notice is received. Motorola may conduct
a physical inventory in order to verify such report. If Licensee
fails to submit the required written report or refuses to permit
Motorola to conduct such physical inventory, Licensee shall forfeit
its rights under this Agreement to dispose of such inventory. In
addition to such forfeiture, Motorola shall have recourse to all
other available remedies.
11.6
If this Agreement is terminated under section 10.2,
Licensee’s final statement and payment of royalties, which
shall include the difference, if any, between all royalties paid
and the full Minimum Royalty for the Term shall be received by
Motorola within thirty (30) days after the effective date of
termination. After termination of this Agreement under any
provision other than Section 10.2, Licensee shall make the next
quarterly statement and payment as required by Section 8 and
Licensee shall make a final statement and payment of royalties
including the difference, if any, between all royalties paid and
the Minimum Royalty for the Term to Motorola no later than one
hundred (100) days after the effective date of termination.
Licensee shall send all payments and statements required by this
Section 11.6 in accordance with Section 8.6.
12.
CONFIDENTIALITY AND INTELLECTUAL
PROPERTY
12.1
Motorola’s “Confidential Information” shall mean
Motorola’s business and financial information, information
concerning Motorola’s products, specifications, property,
data, drawings, schematics, diagrams, dimensions, prints, reprints,
customer and vendor lists, pricing and sales information, and
Motorola’s customer information provided to Licensee or to
which Licensee otherwise gains access. Products created by Motorola
for Licensee under this Agreement, submitted or presented by
Motorola to Licensee under this Agreement, or jointly developed by
the parties are deemed Motorola’s Confidential
Information.
12.2
Licensee’s “Confidential Information” shall mean
Licensee’s business and financial information, information
concerning Licensee’s products and related specifications,
property, data, drawings, schematics, diagrams, dimensions, prints
and reprints, Licensee’s customer and vendor lists, pricing
and sales information, and Licensee’s customer information
provided to Motorola by Licensee or to which Motorola otherwise
gains access. Products created by Licensee under this Agreement and
submitted and presented to Motorola under this Agreement for
approval, are deemed Licensee’s Confidential
Information.
12.3
Each of the parties and its contractors agrees to maintain the
confidentiality of the other party’s Confidential Information
furnished in oral, visual, written and/or other tangible form
including electronic form, and not disclose such Confidential
Information to any third party, except as authorized by the other
party in writing. Each party further agrees to keep confidential
the terms of this Agreement.
12.4
Each of the parties agrees to restrict disclosure of the other
party’s Confidential Information to its employees and
contractors who have a “need to know.” Each of the
parties agrees that the other party’s Confidential
Information shall be handled with the same degree of care that it
applies to its own confidential information (but in no event less
than reasonable care) and shall not be exported directly or
indirectly to any restricted or prohibited country set forth in
Section 13 or such other restricted or prohibited countries as may
be designated by the United States Department of Commerce except in
compliance with the regulations of the Office of Export Control for
the United States Department of Commerce.
12.5
Licensee is the “Receiving Party” with respect to
Motorola’s Confidential Information and Motorola is the
“Receiving Party” with respect to Licensee’s
Confidential Information. The parties agree to exclude from these
obligations of confidentiality any Confidential Information that
the Receiving Party can demonstrate: (i) is wholly independently
developed by the Receiving Party without the use of the other
party’s Confidential Information; or (ii) is known or becomes
known to the general public without breach of this Agreement; or
(iii) was known to the Receiving Party without confidential
limitation at the time of disclosure by the other party as
evidenced by documentation in the Receiving Party’s
possession; or (iv) is approved for release by written
authorization of the other party, but only to the extent of and
subject to such conditions as may be imposed in such written
authorization; or (v) is disclosed in response to a valid order to
a court, regulatory agency, or other governmental body in the
United States or any political subdivision thereof, but only to the
extent and for the purposes stated in such order; provided,
however, that the Receiving Party shall first notify the other
party in writing of the order and cooperate with the other party if
the other party desires to seek an appropriate protective order; or
(vi) is received rightfully and without confidential limitation by
the Receiving Party from a third party.
12.6
In the course of its relationship with Motorola, Motorola may give
Licensee access to Motorola’s facility including its
manufacturing, distribution or accelerated life testing area.
Licensee agrees that the manufacturing, handling or testing
techniques, processes, methodologies and know how embodied in
equipment and equipment arrangements; equipment supplier names; and
products under manufacture, handling or testing in Motorola’s
facility are deemed to be Motorola Confidential Information, even
if not identified as confidential at the time of disclosure and
confirmed in correspondence. In the course of its relationship with
Licensee, Licensee may give Motorola access to Licensee’s
facility including its manufacturing, distribution or accelerated
life testing area. Motorola agrees that the manufacturing, handling
or testing techniques, processes, methodologies and know how
embodied in equipment and equipment arrangements; equipment
supplier names; and products under manufacture, handling or testing
in Licensee’s facility are deemed to be Licensee Confidential
Information, even if not identified as confidential at the time of
disclosure and confirmed in correspondence.
12.7
Upon termination of this Agreement, all Confidential Information
transmitted to the Receiving Party by the other party in record
bearing media or other tangible form including electronic form, and
any copies thereof made by the Receiving Party shall be either
destroyed and its destruction certified in writing or, at the other
party’s written request, returned to the other party, except
that the Receiving Party shall be entitled to retain a secure copy
of the other party’s Confidential Information for archival
purposes only. Additionally, Motorola agrees to return
Licensee’s Confidential Information upon Licensee’s
written request, and Licensee agrees to return Motorola’s
Confidential Information upon Motorola’s written
request.
12.8
Licensee agrees
that it will not in any manner use its knowledge of Motorola
business for the benefit of any other party or divulge to others
information or data concerning Motorola’s business affairs,
including the names of customers, names of employees, number or
character of contracts, marketing strategies and prices, terms or
particulars of Motorola’s business. Licensee will, in all
things and in good faith, protect the good will of Motorola’s
business and keep confidential its knowledge of such business
affairs acquired prior to and during the terms of this Agreement.
Motorola agrees that it will not in any manner use its knowledge of
Licensee business for the benefit of any other party or divulge to
others information or data concerning Licensee’s business
affairs, including the names of customers, names of employees,
number or character of contracts, marketing strategies and prices,
terms or particulars of Licensee’s business. Motorola will,
in all things and in good faith, protect the good will of
Licensee’s business and keep confidential its knowledge of
such business affairs acquired prior to and during the terms of
this Agreement.
12.9
The existence of
this Agreement, and its terms and conditions, are Confidential
Information, and the parties shall not now or hereafter divulge any
part thereof to any third party except: (i) with the prior written
consent of the other party; or (ii) to any governmental body having
jurisdiction to request and to read it; or (iii) as may be required
by law or legal processes, for defense of a claim, or to assert or
enforce a party’s rights under this Agreement; or (iv) to
auditors and accountants representing either party, or (v) to its
employees, officers, directors, agents, representatives or
affiliates having a “need to know”; provided that, to
the extent permissible by law, such divulging party shall impose
equivalent confidentiality obligations on the recipient in writing
prior to any such divulgence. For any disclosure required by law or
legal process, the Receiving Party shall give the Disclosing Party
prompt written notice of the request and a reasonable opportunity
to object to the disclosure and to seek a protective order or other
appropriate remedy, use reasonable efforts to limit disclosure, and
disclose only the Confidential Information specifically required
and only to the extent compelled to do so, and shall continue to
maintain confidentiality after the required
disclosure.
13. EXPORT;
NO TRANSSHIPING
13.1
Export. Licensee agrees and represents that it is aware of all
pertinent export laws and regulations and will not violate them. To
the extent that Licensee exports, transports or manufactures or has
manufactured any products or technologies in any way connected to
the Trademarks and Copyrights, Licensee hereby assures Motorola
that it does not intend to and will not, without the prior written
consent of the Office of Export Licensing of the U.S. Department of
Commerce, P.O. Box 273, Washington, D.C. 20230, exports,
transports, manufactures or have manufactured directly or
indirectly (i) Products or other items in any way associated
therewith or (ii) any technical information provided hereunder in,
to or by (a) any individuals or entities listed in the Table of
Denial Orders as published from time to time in Supplement No.2 to
Part 764 of the above referenced regulations, (b) embargoed
countries or foreign nationals of such countries, as may be changed
from time to time, under U.S. export laws and regulations or (c)
controlled countries and foreign nationals of such countries to the
extent such products and technologies are defined as controlled
technologies in the U.S. Export Administration Regulations Part
774. Embargoed and controlled countries are defined in the U.S.
Export Administration Regulations Parts 740 Supplement No.1, 746
and 772 and currently include Cuba, Iran, Libya, North Korea,
Sudan, and Syria.
13.2
No Transshipping.
Licensee agrees to limit its distribution of the Products to direct
sale by Licensee in the Territory or to resellers of the Products
limiting sales, distribution and transfer of the Products to the
Territory. Licensee shall not sell, transship, distribute or
otherwise transfer products outside the Territory, except to
resellers who agree to the preceding limitation in writing.
Licensee shall incorporate this limitation into all of its
agreements for the resale of the Products and obtain
reseller’s acknowledgement and agreement to the limitation.
Licensee shall enforce the limitation with its agents, distributors
and any other resellers including termination of agency and
distribution agreements and termination of further sales to parties
violating the terms of the limitation. If Licensee sells or
distributes Products outside the Territory, or if Licensee sells or
distributes Products to others when Licensee knows or reasonably
should know that the Products will then be distributed or sold
outside the Territory, such action will be a material breach of
this agreement and will result in irreparable harm to Motorola for
which money damages will not be adequate. In the event of such
material breach, the parties agree that Motorola, in addition to
any other remedies it may have at law and/or in equity, may
immediately terminate this agreement or require Licensee to recall
the products until Licensee can demonstrate that Licensee has
instituted policies and procedures to prevent any such occurrences
in the future, and licensee has paid Motorola an amount equal to
two times the amount of the sales of the Product made outside the
Territory as liquidated damages. Licensee further agrees that
Motorola shall be entitled to injunctive relief to prevent a
threatened or continued material breach and to specifically enforce
these provisions. If Licensee sells or distributes Products outside
the Territory, Licensee shall reimburse Motorola for all costs and
expenses incurred in conducting a subsequent audit under section
8.7.
14.
REPRESENTATIONS AND
WARRANTIES
14.1
Motorola represents and warrants that it has the power to grant a
license of the Trademarks in the Territory and that such grant, to
the best of its knowledge, is in compliance with applicable law and
does not infringe the rights of any third party. No other
warranties, express or implied, are given by Motorola, and all
other warranties, express or implied, are expressly disclaimed by
Motorola.
14.2
Licensee represents and warrants that at all times:
14.2.1
Licensee has and shall maintain all rights and licenses needed to
sell the Products and to the best of its knowledge the Products do
not infringe any patent, copyright, mask work right, moral right,
trademark, service mark, trade secret and/or all other Intellectual
Property Rights and/or similar rights of any third party. Licensee
is solely responsible for all royalties, fees or other payments to
secure such rights and licenses for end user
customers.
14.2.2 Licensee
shall secure and maintain all certifications and requirements to
sell the Products and Licensee shall affix all labels on the
appropriate area of each Product regarding such certifications and
requirements. Licensee shall provide written evidence of such
certifications and approvals to Motorola upon Motorola’s
request.
14.2.3 All
Products are new, and do not contain anything used, except for
warranty replacement Products and/or parts provided by Licensee all
of which shall be conspicuously labeled as “Used” on
the warranty replacement Product and/or part, on the carton, and on
the shipping paperwork and Licensee shall have processes,
procedures and documentation in place to comply with and
substantiate this representation and warranty, and shall provide
Motorola with copies of such documentation upon
request.
14.2.4 Product
Materials shall not claim or suggest that any Products improve the
health of users, have therapeutic capabilities, or can help the
users to avoid injuries that otherwise might occur through the use
of alternative products, or otherwise make any false or misleading
claims.
14.2.5 All
claims made in connection with the Products and Product Materials
are accurate, complete and have been substantiated prior to use in
advertising, promotion or on the Products or Product
Materials.
14.2.6 Licensee,
at its expense, shall be responsible for obtaining and maintaining
all licenses, permits and approvals that are required by all
appropriate governmental authorities, with respect to this
Agreement, excluding any licenses, permits or approvals necessary
for Motorola to maintain its rights in the Trademarks and/or
Copyrights, and to comply with any requirements of such
governmental authorities for the registration or recording of this
Agreement and for making payments hereunder. Licensee shall furnish
to Motorola within thirty (30) days of receipt of same, written
evidence from such governmental authorities of any such licenses,
permits, clearances, authorizations, approvals, registration or
recording.
14.2.7 All
Products are safe for any use consistent with the warranties,
specifications and requirements of this Agreement.
14.2.8 All
Products are of merchantable quality, and conform to the
specifications and requirements of quality in materials, design,
and workmanship in this Agreement.
15.
INDEMNITIES AND INSURANCE
15.1
Licensee acknowledges that except for claims relating to
infringement of Trademark rights, it will have no claims against
Motorola for any damage to property or injury to persons arising
out of the operation of Licensee’s business. Licensee agrees
to indemnify, hold harmless and defend Motorola and all of its
past, present, and future officers, directors, employees,
customers, agents, Affiliates, successors, assigns and insurers
(the “Motorola Indemnitees”) with legal counsel
acceptable to Motorola from and against all suits, actions, claims,
damages, liabilities, costs and expenses, including attorneys fees,
court costs and other legal expenses, arising out of or connected
with the Products, Licensee’s acts or omissions,
Licensee’s methods of manufacturing, marketing, selling,
distributing or use of the Products, the promotional or packaging
material relating to the Products, or any breach or violation by
Licensee of any provision of this Agreement or of any
representation or warranty made by Licensee in this Agreement.
Motorola agrees to give Licensee written notice of any claim within
ten (10) days of receipt by Motorola. Motorola’s failure to
provide written notice of the claim within ten days shall not
affect its right to indemnification unless the delay materially
prejudices Licensee’s ability to respond to the claim.
Licensee shall bear full responsibility for the defense (including
any settlements) of any such claim; provided, however, that: (i)
Licensee shall keep Motorola informed of, and consult with Motorola
in connection with the progress of such litigation or settlement;
and (ii) Licensee shall not have any right, without
Motorola’s prior written consent, to settle any such claim if
such settlement arises from or is part of any criminal action, suit
or proceeding or contains a stipulation to or admission or
acknowledgement of, any liability or wrongdoing (whether in
contract, tort, or otherwise) on the part of Motorola or any
Motorola Affiliate.
15.2
Motorola agrees to indemnify, hold harmless and defend Licensee
from and against all suits, actions, claims, damages, liabilities,
costs and expenses, including attorney’s fees, court costs
and other legal expenses, arising out of or relating to
infringement of the trademarks or copyrights of any third party by
the Trademarks and/or Copyrights so long as such claims arise from
Licensee’s promotion or sale of the Products in the Territory
and Licensee’s use of the Trademarks and/or Copyrights in
accordance with the Control Specifications. Licensee agrees to give
Motorola written notice of any claim within ten (10) days business
days of receipt by Licensee and agrees to give Motorola control of
the defense of the claim and cooperates with Motorola in the
defense and any related settlement negotiations. Licensee’s
failure to provide written notice of the claim within ten days
shall not affect its right to indemnification unless the delay
materially prejudices Motorola’s ability to respond to the
claim.
15.3
During the term of the Agreement, Licensee will maintain at its own
expense, commercial general liability (“CGL”) insurance
including contractual liability coverage, products and completed
operations in an amount not less than Ten Million Dollars ($10,
000,000.) per occurrence for bodily injury, personal injury and
property damage liability for occurrences happening throughout the
world. The insurance will be placed with an insurer acceptable to
Motorola having a Best’s Rating not less than A-VII. The CGL
policy will name MOTOROLA MOBILITY LLC. as an additional insured
and provide a minimum thirty (30) days prior written notice of
cancellation or material change. Licensee shall furnish Motorola
within thirty (30) days after execution of this Agreement or, if
earlier, prior to the sale of the Products, with a certificate of
insurance referencing this License Agreement and stating thereon
the limits of liability, the period of coverage, the parties
insured (including Licensee and Motorola), and the insurer’s
agreement not to terminate or materially modify such insurance
without endeavoring to notify Motorola in writing at least ten (10)
days before such termination or modification. The Certificate of
insurance will reference MOTOROLA MOBILITY LLC., 222 West
Merchandise Mart Plaza, Chicago, IL 60654 U.S.A. Coverage provided
for Motorola shall be primary, and any insurance maintained by
Motorola shall be in excess and not contributing with any insurance
provided by Licensee. Coverage shall be on a claims made basis.
Motorola shall not be responsible for the payment of the premiums,
charge taxes, assessments, or other costs for the
insurance.
15.4
The existence of the insurance shall not mitigate, alter, or waive
the indemnity provisions of Section 15.1.
16.
DISPUTE
RESOLUTION
16.1
The Parties will attempt to settle any claim or controversy
relating to this Agreement through negotiation in good faith and a
spirit of mutual cooperation. If those attempts fail to achieve a
settlement, then the dispute will be mediated by a mutually
acceptable mediator to be chosen by the Parties within forty-five
(45) days after written notice by either Party demanding mediation.
Neither Party may unreasonably withhold consent to the selection of
a mediator, and the Parties will share the costs of mediation
equally. The non-binding mediation hearing shall be conducted
within forty-five (45) calendar days after the selection of the
mediator. Each Party shall bear its own attorney’s fees and
other costs. Any mediation shall be conducted in the English
language.
16.2
Any
dispute that cannot be resolved between the Parties through
negotiation or mediation within six (6) months of the date of the
initial demand for mediation by one of
the Parties may then be submitted to the courts for resolution. The
use of any mediation procedures will not be construed under the
doctrines of laches, waiver or estoppel to affect adversely the
rights of either Party. Nothing in this Section will prevent either
Party from resorting to judicial proceedings if interim relief from
a court is necessary to prevent serious and irreparable injury to
that Party or to others. In addition, nothing in this Section shall
be construed as applying to disputes regarding the Intellectual
Property Rights (including Confidential Information) or Trademarks
and/or Copyrights.
17.
FORCE
MAJEURE
17.1
The terms of this Agreement are binding upon the parties hereto
except where prevented, delayed or interfered with by causes beyond
the reasonable control and without the fault or negligence of the
non-performing party, including, without limitation, riot, war, or
hostilities between nations, governmental regulation (other than
action taken in response to Motorola’s or Licensee’s
violation or failure to act with respect to any law or governmental
regulation, in which case the party at fault shall not be permitted
to claim the benefit of this Section 17), acts of God, fire,
accidents, strikes or earthquakes.
17.2
The party affected by
force
majeure
shall give notice to the other party of said
force majeure
event
Promptly after the occurrence thereafter, stating therein the
nature of suspension of performance and reasons thereof. Such party
shall use its best efforts to resume performance as soon as
reasonably possible. Upon restoration of the affected party’s
ability to perform its obligations hereunder, the affected party
will give immediate notice to the other party.
17.3
If the
force majeure
condition that prevents a party’s performance hereunder shall
continue for a period of six (6) consecutive months, and there
shall be no reasonable prospect for the immediate cure thereof
despite the best efforts of the affected party to cure the same,
then either party shall have the right to terminate this Agreement
in its entirety and without liability upon ninety (90) days prior
notice to the other party.
18.
LIMITATION
OF LIABILITY
18.1
Except for third party damages included in settlements and
judgments subject to Section15.2 Motorola shall not be liable to
Licensee for lost profits, or consequential, indirect, incidental,
special or punitive damages, even if advised in advance of the
possibility of such damages. Except for judgments subject to
Section 15.2, Motorola shall not be liable to Licensee for direct
damages in excess of the total Royalties paid by Licensee to
Motorola under this Agreement.
19.
COMPLIANCE
WITH LAWS
19.1 In
the performance of this Agreement, Licensee shall comply with
applicable laws and regulations in the countries of said Territory.
Should Licensee be or become aware of any applicable laws or
regulations that are inconsistent with the provisions of this
Agreement, Licensee shall Promptly notify Motorola of such
inconsistency. The parties then, shall in good faith, negotiate a
modification to this Agreement such that it complies with
applicable law and regulations and if the parties are unable to
successfully negotiate such a modification Motorola may terminate
the license and rights granted hereunder in that jurisdiction, and
the Territory set forth in Exhibit A shall be appropriately
amended.
19.2
Compliance with Laws and Ethical Standards. Licensee, on behalf of
itself, its Affiliates, and its suppliers and subcontractors,
including any Approved Manufacturers, (“Supply Chain”),
represents and warrants that all Products are produced,
manufactured and supplied, and Services are rendered, in compliance
with applicable laws, rules, regulations and standards, including
those concerning environmental protection, freedom of association,
wages and humane treatment of workers, as set forth in Exhibit
F.
19.3
Inspection of
Facilities.
Upon five (5) business days’ notice to
Licensee, Motorola shall have the right to conduct or have
conducted, during regular business hours, an examination of
Licensee’s, its Affiliate’s or an Approved
Manufacturer’s manufacturing, assembly, testing and business
facilities to determine compliance with laws and ethical standards
as set forth on Exhibit F.
20. INTELLECTUAL
PROPERTY
20.1
No grant or transfer of any of Intellectual Property Rights owned
by Motorola is given or intended under this Agreement, including
any license implied or otherwise, except as expressly provided in
Section 2 of this Agreement.
Licensee
acknowledges that entities, including but not limited to Motorola,
own Intellectual Property Rights that pertain to cellular telephone
products or other wireless communication products (“Cellular
Telephone Intellectual Property”). Licensee acknowledges that
this Agreement (i) does not include a license under such Cellular
Telephone Product Intellectual Property for the manufacture, use,
sale, import or other disposal of any cellular telephone or other
wireless communication products including the Products, and (ii)
does not exhaust any of Motorola’s rights in the Cellular
Telephone Product Intellectual Property with respect to any claim
that is instantiated in or would otherwise be infringed by the
Products.
20.2
Licensee understands that other manufacturers supply to Motorola
product(s) that are the same or similar to the Products
manufactured by Licensee hereunder. Licensee hereby covenants and
agrees not to: (a) assert, bring, cause to be brought or threaten
to bring against Motorola (or its manufacturers or its customers)
(collectively, “Motorola Parties”) any claim, action or
proceeding alleging that a Motorola Party’s purchasing,
manufacturing, having made, using, importing, offering for sale,
selling, providing or otherwise distributing (i) such additional
manufacturer’s product(s), or (ii) any Motorola product(s)
(including products designed, assembled or manufactured for
Motorola by third-parties) (collectively, “Motorola
Products”), incorporating such additional
manufacturer’s product(s), infringes or misappropriates any
of Licensee’s Intellectual Property Rights; and (b) seek to
enjoin, or enjoin the supply, import, sale, distribution, or
manufacture of (i) such additional manufacturer’s product(s)
to or for Motorola, or (ii) the purchase, manufacture, use, import,
sale, or distribution of the Motorola Product(s) incorporating such
additional manufacturer’s product(s). The obligations
of Licensee in this Section will survive expiration or termination
of this Agreement for any such additional manufacturer’s
product(s) purchased by or for, or supplied to or for, Motorola
prior to or during the term of this Agreement. This covenant will
be binding on Licensee’s successors in interest to, all
transferees or assignees of and any exclusive licensee of any
Licensee’s Intellectual Property Rights. Licensee
agrees to inform all successors in interest, transferees, assignees
or licensees of this covenant and to obtain their written consent
to be bound by this covenant.
20.3
As between Motorola and Licensee, Motorola owns and, upon creation
shall own, all Intellectual Property Rights associated with the
Product’s industrial design user interface design, and any
packaging, marketing materials, point-of-sale materials, publicity,
advertising, signs, catalogs product brochures, warranty statement,
user guide, and other in-box materials relating to the Products and
any derivative works created from them. If for any reason, the
foregoing provision does not result in Motorola’s ownership
of such Intellectual Property Rights, immediately upon creation,
Licensee agrees to, and does hereby, irrevocably assign exclusively
to Motorola, Licensee’s entire right, title and interest to
such Intellectual Property Rights. Licensee shall cooperate and
shall execute all papers reasonably requested by Motorola to effect
assignment, registration, maintenance and renewal of these rights,
at the sole expense of Motorola.
21.
PRESS
RELEASES
21.1
Licensee shall make no press releases concerning the business
relationship or license granted in this Agreement or the
introduction or sales of Products without Motorola’s written
agreement as to the form and content of the proposed press release.
All press releases shall conform to Motorola’s Press Release
Guidelines. Such guidelines may be modified by Motorola from time
to time. Licensee shall submit all press releases regarding the
Products to Motorola for written approval. If the press release
contains any advertising claims, Licensee shall submit
substantiation for those claims with the proposed press
release.
22.
ETHICS AND CONFLICTS OF
INTEREST
.
22.1
Both parties will refrain from activities that: (i) are illegal,
unethical; (ii) might bring either party into disrepute; or (iii)
might constitute or represent a serious conflict of interest or
that might give the appearance of impropriety. Both parties will
cooperate fully in any investigation or evaluation of such matters.
Breach of this obligation by either party will entitle the
non-breaching party to terminate this Agreement without
notice.
23. NOTICES
23.1
Any notice required or permitted to be given under this Agreement
shall be in writing and shall be directed by one party to the other
at its respective address as follows unless otherwise provided for
in this Agreement:
Licensor:David
Westendorf
Director, Trademark
Licensing
Motorola Mobility
LLC.
Office
7.F.16
1000
Enterprise Way
Sunnyvale,
California 94089
United
States of America
and
to:
David
Carroll
Director and Lead
Counsel, Trademarks and Marketing
Law
Department, Mobile Devices
Motorola Mobility
LLC.
Office
16-P19
222
West Merchandise Mart Plaza
Chicago, IL
60654
Licensee:
Frank Manning
President and
CEO
Zoom
Telephonics, Inc.
207
South Street
Boston,
MA 02111
And
to:
John
DuPre
Principal
Hamilton Brook
Smith & Reynolds
530 Virginia Rd
Concord, MA 01742
23.2
Any notice required or permitted to be given under this Agreement
shall be deemed to have been received (i) when delivered
personally; (ii) when sent by confirmed facsimile or by e-mail
except for notices that relate to default provisions; (iii) five
(5) days after having been sent by registered or certified mall,
return receipt requested, postage prepaid; or (iv) one business (1)
day after deposit with a commercial overnight carrier with written
verification of receipt.
23.3
Either party may change the address to which notices or requests
shall be directed by written notice to the other party, but such
written notice to be effective must be received by the other party
at least thirty (30) days before the effective date of the change
of address.
24.
ASSIGNMENT OF RIGHTS AND SUBLICENSE
24.1
The benefit of this Agreement shall be personal to Licensee who
shall not, without the prior consent in writing of Motorola, assign
its rights, or delegate its duties hereunder, nor grant or purport
to grant any sublicense in respect to the Trademarks and/or
Copyrights to third parties.
24.2
Notwithstanding the above, Licensee shall have the right to assign
its rights and to delegate its duties under this Agreement, with
Motorola’s prior written consent, which shall not be
unreasonably withheld, to wholly-owned subsidiaries of Licensee. In
the event that Licensee undergoes a substantial change of
ownership, whether or not such a change results from a merger,
acquisition, consolidation or otherwise, Licensee shall have the
right to assign its rights and to delegate its duties to such new
owner under this Agreement, with Motorola’s prior written
consent, provided that the substantial change of ownership does not
result in a substantial change in the nature of the
Licensee’s business, a substantial change in nature
including, but not limited to, a change in product mix, pricing
structure, financial condition or method of doing business.
However, in any instance, Licensee and its assignee shall remain
joint and severally liable to Motorola for all of the obligations
assumed by it under the terms of the Agreement.
24.3
In the event Motorola separates one or more of its businesses (each
a “Separated Business”), whether by way of a sale,
establishment of a joint venture, spin-off or otherwise (each
a “Separation Event”), Motorola may, without the prior
written consent of Licensee and at no additional cost to Motorola,
assign this Agreement such that it will continue to benefit the
Separated Business and its Affiliates following the Separation
Event.
25.
FREEDOM OF ACTION
25.1
Nothing in this Agreement shall be construed as prohibiting or
restricting Motorola or its subsidiaries from independently
developing, having developed independently, acquiring, licensing,
distributing or marketing products, services and other materials
that are competitive in any form with the Products. Licensee agrees
and acknowledges that it shall not hold Motorola liable for any
lost sales or revenues in respect to the sales performance of the
Products, regardless of the reason for such lost sales or revenues
including, but not limited to, Motorola’s direction in the
appearance, function or marketing of the Products.
26.
APPROVALS
26.1
Any approval required by this Agreement to be obtained from
Motorola must be in writing and may be withheld by Motorola for any
reason deemed reasonable and justifiable in the sole determination
of Motorola. If approval is not delivered in writing to the
Licensee within fifteen (15) business days of submission of a
request for approval, the request for approval shall be deemed to
be denied.
27.
WAIVER OF DEFAULT OR OTHER RIGHTS
27.1
The failure of Motorola to insist in any one or more instances of
the performance of any term, obligation or condition of this
Agreement by Licensee or to exercise any right or privilege herein
conferred upon Motorola shall not be construed as thereafter
waiving such term, obligation, or condition, or relinquishing such
right or privilege, and the acknowledged waiver or relinquishment
by Motorola of any default or right and shall not constitute waiver
of any other default or right.
28.
SEVERABILITY
28.1
If any provision of this Agreement shall be determined to be
illegal and unenforceable by any court of law or any competent
governmental or other authority, the remaining provisions shall be
severable and enforceable in accordance with their terms so long as
this Agreement without such terms or provisions does not fail of
its essential purpose or purposes. The parties will negotiate in
good faith to replace any such illegal or unenforceable provision
or provisions with suitable provisions that will maintain the
economic purposes and intentions of this Agreement.
29.
SECTION HEADINGS
29.1
The captions for each Section have been inserted for the sake of
convenience and shall not be deemed to be binding upon the parties
for the purpose of interpretation of this Agreement.
30.
EXHIBITS
30.1
All references to
“Exhibit” or “Exhibits” herein shall mean
those Exhibits A through F attached to this Agreement, which
Exhibits are hereby incorporated into this Agreement as though
fully set forth herein.
31.
SURVIVAL
31.1
Licensee’s obligations and agreements under Sections 6, 7, 8,
11, 12, 13, 15, 16, 18, 20, 23, 27, 28, 34 and 35 shall survive the
termination or expiration of this Agreement.
32.
TIME IS OF THE ESSENCE
32.1
Time is of the
essence with respect to the obligations to be performed under this
Agreement.
33.
RIGHTS CUMULATIVE
33.1
Except as expressly
provided in this Agreement, and to the extent permitted by law, any
remedies described in this Agreement are cumulative and not
alternative to any other remedies available at law or in
equity.
34.
ENTIRE AGREEMENT
34.1
The provisions of this Agreement contain the entire agreement
between the parties relating to use by Licensee of Trademarks
and/or Copyrights on Products, and on Product Materials, and
supersede and cancel all prior provisions, negotiations, agreements
and commitments (whether oral or in writing) with respect to the
subject matter hereof. This Agreement shall be interpreted to
achieve the objectives and intent of the parties as set forth in
the text and factual recitals of the Agreement. It is specifically
agreed that no evidence of discussions during the negotiation of
the Agreement or drafts written or exchanged may be used in
connection with the interpretation or construction of this
Agreement. This Agreement may not be released, discharged,
abandoned, changed or modified in any manner except by an
instrument in writing signed by the parties. In the event of any
conflict between the provisions of this Agreement and provisions in
any other agreement with Licensee, the provisions of this Agreement
shall prevail.
35.
GOVERNING LAW
35.1
This Agreement is deemed to be executed in the State of Illinois
and the construction and performance of this Agreement will be
construed and interpreted according to the substantive laws of that
State without regard to its conflicts of law principles or rules.
The parties agree that any legal action or proceeding between
Motorola and Licensee with respect to this Agreement, including the
Manufacturer’s Agreement, shall be brought in the United
States District Court for the Northern District of Illinois or, if
such court does not have jurisdiction, in any court of general
jurisdiction in Cook County, Illinois.
IN
WITNESS WHEREOF, the parties haves caused this Agreement to be
executed in
triplicate
originals by their duly authorized representatives on the dates
indicated below.
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MOTOROLA MOBILITY
LLC.
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ZOOM TELEPHONICS,
INC.
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By:
_/s/ David
Westendorf
______
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By:
_/s/ Frank
Manning
_________
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Print Name: David
Westendorf
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Print Name:Frank
Manning
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Title: VP Companion
Products
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Title: President
and CEO
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Date: May 13,
2015
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Date: May 12,
2015
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EXHIBIT A
License between Motorola and Zoom Telephonics, Inc.
Products:
Standalone c
able modems; cable modems
containing internet gateways; and cable set-top boxes containing
cable modems. All of the foregoing shall be consumer-grade, and
designed for and intended for use by consumers. These products may
or may not include voice, Packetcable, or EMTA capability, provided
such modems shall not be marketed or bundled with wireless, corded
or cordless phones, or otherwise as an end-to-end solution for
making phone calls.
Territory:
United States of America and
Canada
Authorized Channels:
1)
Retail and cable operator stores, including
department stores (e.g. Sears), chain consumer electronics stores
(e.g. Best Buy), cable operator stores (e.g. Comcast), etailers
(e.g. Amazon), warehouse clubs (e.g. Costco), Shop-at-home TV
channels (e.g. QVC) and general merchandise stores (e.g. Walmart),
but specifically excluding
deep discount retailers, and
liquidators (e.g. Big Lots).
2)
Service providers
(e.g. Comcast)
3)
Distributors to
these channels (e.g. Ingram).
Royalty Rate:
[*.*]% of Net
Sales
Minimum Royalty:
$12.2 million, broken down as
follows:
●
2016: $2M
●
2017: $2.4M
●
2018: $2.6M
●
2019: $2.6M
●
2020: $2.6M
Set-Up Fee:
$[*********]
Term:
January 1, 2016 –
Dec 31, 2020
Sales Year:
Jan. to December 31.
EXHIBIT B
The
Licensed
Motorola Trademarks
are: the MOTOROLA signature and the stylized M logo
(“Emsignia”) and associated Motorola Trade
Dress
EXHIBIT C
TRADEMARK USE GUIDELINES
Artistic renderings of the Licensed Motorola Trademarks and Trade
Dress shall be provided to Licensee under the following items,
which become a part of this agreement by reference:
- Motorola Basic Corporate Identity Standards
- Motorola Consumer Packaging Guidelines
- Motorola logo and artwork files
- Motorola Global POS guidelines
- Motorola PR Guidelines
- Motorola Tradeshow Guidelines
FILES ARE SUBJECT TO CHANGE
EXHIBIT D
MANUFACTURING AUTHORIZATION AGREEMENT
This
Manufacturing Authorization Agreement (this
“Agreement”), dated as of ___________ (the
“Effective Date”), is by and among
___________________________ (“Licensee”);
________________________ (“Manufacturer”), and MOTOROLA
MOBILITY LLC., 222 West Merchndise Mart, Chicago, Illinois 60654
(“Motorola”).
WHEREAS,
Licensee has obtained a license from Motorola to use the
Trademarks, Motorola Trade Dress and Copyrights referred to in
Exhibit 1 to this Agreement (collectively
“Trademarks”), on or in conjunction with the product(s)
referred to in Exhibit 2 to this Agreement
(“Product(s)”); and WHEREAS, Motorola owns throughout
the world certain trademark registrations for the Trademarks for
use on a variety of goods; and
WHEREAS,
Manufacturer wishes to manufacture, exclusively for Licensee,
Product(s) using the Trademarks.
NOW
THEREFORE, in consideration of the foregoing, the covenants
hereinafter set forth, and other good and valuable consideration,
the receipt and adequacy of which are hereby acknowledged, the
parties agree as follows:
1.
TRADEMARKS,
TRADE DRESS, ORNAMENTAL DESIGNS
1.1 Manufacturer
agrees that any and all rights that may be acquired by the use of
the Trademarks and Copyrights by the Manufacturer shall inure to
the sole benefit of Motorola. Manufacturer shall execute all papers
and make such filings as are required to confirm such use inures to
the benefit of Motorola.
1.2 As
between Motorola and Manufacturer, Motorola owns and, upon creation
shall own, all Intellectual Property Rights in the trade dress,
copyrights, ornamental designs, industrial designs and design
patents associated with the Product and any packaging, marketing
materials, point-of-sale materials, publicity, advertising, signs,
catalogs product brochures, warranty statement, user guide, and
other in-box materials relating to the Products and any derivative
works created from them. If for any reason, the foregoing provision
does not result in Motorola’s ownership of such Intellectual
Property Rights, immediately upon creation, Manufacturer agrees to,
and does hereby, irrevocably assign exclusively to Motorola,
Manufacturer’s entire right, title and interest to such
Intellectual Property Rights. Manufacturer shall cooperate and
shall execute all papers reasonably requested by Motorola to effect
assignment, registration, maintenance and renewal of these rights,
at the sole expense of Motorola.
1.3 For
the purposes of this Agreement, “
Intellectual Property Rights
”
means any and all (by whatever name or
term known or designated) tangible and intangible and now known or
hereafter existing: (i) rights associated with works of
authorship throughout the universe, including but not limited to
copyrights (including without limitation the sole and exclusive
right to prepare Derivative Works of copyrighted works and to copy,
manufacture, reproduce, lend, distribute copies of, modify,
publicly perform and publicly display the copyrighted work and all
derivative works thereof), moral rights (including without
limitation any right to identification of authorship and any
limitation on subsequent modification) and mask-works;
(ii) rights in and relating to the protection of trademarks,
service marks, trade names, internet domain names, goodwill, rights
in packaging, rights of publicity, merchandising rights,
advertising rights and similar rights; (iii) rights in and
relating to the protection of
innovations, know-how,
trade secrets and confidential,
technical, and non-technical information
; (iv) patents, designs, algorithms and other
industrial property rights and rights associated therewith;
(v) other intellectual and industrial property and proprietary
rights (of every kind and nature throughout the universe and
however designated) relating to intangible property that are
analogous to any of the foregoing rights (including without
limitation logos, character rights, “rental” rights and
rights to remuneration), whether arising by operation of law,
contract, license or otherwise; (vi) registrations,
applications, renewals, extensions, continuations, divisions or
reissues thereof now or hereafter in force throughout the universe
(including without limitation rights in any of the foregoing); and
(vii) rights in and relating to the sole and exclusive
possession, ownership and use of any of the foregoing throughout
the universe, including without limitation the right to license and
sublicense, franchise, assign, pledge, mortgage, sell, transfer,
convey, grant, gift over, divide, partition and use (or not use) in
any way any of the foregoing now or hereafter (including without
limitation any claims and causes of action of any kind with respect
to, and any other rights relating to the enforcement of, any of the
foregoing).
2.
PROTECTION
AND MAINTENANCE OF TRADEMARK
2.1 Manufacturer
shall cooperate and execute all papers reasonably requested by
Licensee or Motorola to effect further registration, maintenance,
and renewal of the Trademarks and Copyrights at the sole expense of
Motorola and, where applicable, to record Manufacturer as a
registered user of the Trademarks. Manufacturer agrees not to use
the Trademarks and Copyrights or any part thereof as part of its
corporate or trade name nor use any name or mark confusingly
similar to, or derivative of, the Trademarks and
Copyrights.
2.2 Manufacturer
shall not to register in any country any name or mark resembling or
confusingly similar to or derivative of the Trademarks and
Copyrights.
2.3 If
any application for registration is, or has been filed in any
country by Manufacturer which relates to any name or trademark
which, in the opinion of Motorola, is confusingly similar,
deceptive or misleading with respect to the Trademarks and
Copyrights, Manufacturer shall abandon immediately any such
application or registration or, at Motorola’s sole
discretion, assign it to Motorola.
2.4 If
Manufacturer is notified by Licensee or Motorola of any change in
any of the Trademarks and Copyrights, Manufacturer shall
immediately change the Trademarks and Copyrights to conform with
such change.
3.
MANUFACTURING
AUTHORIZATION
3.1 Manufacturer
is hereby authorized to manufacture the Products listed in Exhibit
2, solely in accordance with the terms and conditions of this
Agreement. Manufacturer agrees that it will not manufacture any
goods using the Trademarks, Copyrights, ornamental designs,
industrial designs and design patents other than the Product(s)
specified in Exhibit 2 or other Products for which Manufacturer
receives express written approval by Motorola, and Manufacturer
shall exclusively manufacture for and/or sell to Licensee any such
Product(s) during the term of Licensee’s license from
Motorola to use the Trademark and Copyrights on such
Product(s).
3.2 Manufacturer
will make no changes to any Product it is manufacturing hereunder
at any time after such Product has been approved by Motorola,
without Motorola’s prior written consent, including but not
limited to changes to:
i.
the form, fit,
function, design, appearance, performance, or packaging of the
Product;
ii.
the materials or
software used in the Product including any changes to the
Manufacturers or subcontractors at any level in
Manufacturer’s supply chain for such Materials or software;
or
iii.
the manufacturing
processes or production lines used to manufacture the
Product.
3.3. If
Manufacturer makes changes to a Product approved hereunder without
Motorola’s prior written consent, Motorola will have the
right to immediately terminate this Agreement for cause.
Manufacturer will be liable to Motorola for all damages incurred by
MOTOROLA MOBILITY LLC including without limitation, damage to
goodwill and reputation, even if Motorola does not terminate this
Agreement.
4.
REPRESENTATION
AND WARRANTIES
4.1 Manufacturer
represents and warrants that it shall comply with all applicable
laws, orders, rules and regulations in performing its obligations
hereunder. Manufacturer, on behalf of itself and its Manufacturers,
represents and warrants that (i) all Products are produced,
manufactured, assembled, packaged, labeled, and supplied in
compliance with all applicable laws, rules, regulations and
standards, including those set out in Exhibit 3, and (ii) the
actual Products provided to Licensee are in compliance with
applicable laws, rules, regulations and standards, including those
set out in Exhibit 3. Manufacturer shall immediately correct any
non-compliance with the foregoing requirements.
4.2
Manufacturer represents and warrants that: (i) Manufacturer has no
knowledge of and that there are no unresolved claims, demands, or
pending litigation alleging that the Products infringe, or
misappropriate any Intellectual Property Rights of any third party,
(ii) Manufacturer has obtained all necessary rights under any
Intellectual Property Rights of third parties necessary for the
sale, use, or other distribution of the Products, (iii) the
Products manufactured under this Agreement do not infringe or
misappropriate any Intellectual Property Rights of any third party,
and (iv) upon receipt of notice from a third party alleging
infringement or misappropriation of such third-party’s
Intellectual Property Rights by the manufacture or sale of a
Product, Manufacturer shall take all appropriate actions to handle
the claim responsibly in accordance with established legal practice
in response to receipt of such a claim, including obtaining
opinion(s) of outside counsel regarding non-infringement by
Manufacturer or invalidity of such allegedly infringed or
misappropriated Intellectual Property Rights, instituting
proceedings to invalidate such allegedly infringed or
misappropriated Intellectual Property Rights, and investigating
design changes that would avoid such allegedly infringed or
misappropriated Intellectual Property Rights. At Motorola’s
written request with respect to a specific Product, subject to
entering into confidentiality agreements or other appropriate
arrangements, Manufacturer shall advise Motorola of any third-party
Intellectual Property Rights known by Manufacturer to be in the
specific Product, including licenses for third-party Intellectual
Property Rights.
4.3 Manufacturer
represents and warrants that it shall secure and maintain at its
expense all technical certifications, and all applicable national
and international regulatory and safety standard approvals,
certifications and/or marks required for each Product, including
all accessories for such Products, for the markets where the
Products are intended to be sold to end-users, and all requirements
to manufacture and sell the Products. Manufacturer shall affix all
labels on the appropriate area of each Product regarding such
certifications and requirements. Manufacturer shall provide written
evidence of such certifications and approvals upon
request.
4.4 Manufacturer
represents and warrants that all Products will be manufactured by
it, whether assembled or packaged in whole or in part, without the
use of any forced labor, indentured labor, prison labor or child
labor, and that such Products will not be trans-shipped for the
purpose of mislabeling, evading quota or country of origin
restrictions, or avoiding compliance with provisions against forced
labor, prison labor or child labor.
4.5 Manufacturer
represents and warrants that all Products are new, and do not
contain anything used, and Manufacturer shall have processes,
procedures and documentation in place to comply with and
substantiate this representation and warranty.
4.6 Manufacturer
represents and warrants that it shall exclusively manufacture, sell
or distribute the Product solely to Licensee.
5.
REPORTING
On or
before the fifteenth (15th) day following each calendar quarter
during the term of this Agreement, Manufacturer agrees to furnish
Motorola with quarterly reports detailing the number of units of
Product sold to Licensee during the quarter and the associated
sales price of such units. Such reports shall be sent via email to
Nadim Halabi at nhalabi@motorola.com.
6.
INDEMNIFICATION
6.1
Manufacturer shall fully defend, indemnify, and hold harmless
Motorola and all of its past, present, and future affiliates,
customers, distributors, officers, directors, employees,
contractors, successors, assigns, agents, attorneys and insurers
(the “Motorola Indemnitees”) against any and all
against any and all claims, damages, costs, expenses (including,
without limitation, court costs and attorneys’ fees), suits,
losses, or liabilities (“Claims”) under any theory of
liability or recovery, arising from, or connected with, the
Products, Manufacturer’s acts or omissions under this
Agreement, or the acts or omissions of Manufacturer’s past,
present, or future officers, directors, employees, contractors,
subcontractors, representatives, or agents under this Agreement,
including without limitation a) the delivery of Products that are,
or are alleged to be, defective, non-conforming, or not in
compliance with Manufacturer’s warranties as set forth in
this Agreement or b) Manufacturer's methods of manufacturing the
Products, and the promotional or packaging material relating to the
Products; or c) any breach by Manufacturer of any provision of this
Agreement or of any warranty made by Manufacturer in this
Agreement..
6.2
Manufacturer shall fully defend, indemnify and hold harmless the
Motorola Indemnitees from any and all Claims arising from or by
reason of any actual or claimed infringement or misappropriation of
any patents, trade secrets, trademarks, maskworks, copyrights or
other Intellectual Property Rights, with respect to the
manufacture, having made, use, license, distribution, importation,
offer for sale, or sale, of a Product. Manufacturer
6.3
Motorola will promptly notify Manufacturer in writing of any Claims
(prior to settling such Claims or filing a formal answer to any
complaint based thereon) and provide reasonable cooperation.
Motorola’s failure to provide written notice of the Claim
shall not affect its right to indemnification unless the delay
materially prejudices Manufacturer’s ability to respond to
the Claim. Manufacturer shall bear full responsibility for the
defense (including any settlements) of any Claims. Notwithstanding
anything to the contrary, Manufacturer shall not enter into any
settlement agreement that affects any Motorola Indemnitee without
Motorola’s prior written consent. Motorola may, at its sole
expense, actively participate in any suit or proceeding, through
its own counsel. If Motorola takes over the defense of any Claim,
the Manufacturer Indemnities agree to assert, or permit Motorola to
assert on the Manufacturer Indemnitees’ behalf, any defense
that the Manufacturer Indemnitees may have against the Claim,
including, but not limited to, any affirmative defenses
thereto.
6.4
Notwithstanding anything to the contrary, the indemnity obligations
of Manufacturer in Section 11 will not in any way be limited
by any other obligations of Manufacturer under this
Agreement. If Manufacturer is required to indemnify, defend and/or
hold harmless Motorola and fails to do so within thirty (30) days
after written notice of such failure, then Motorola may undertake
the defense and/or settlement of such Claim, with all costs of
defense and settlement being the responsibility of Manufacturer.
The obligations set forth in this Section 11 will survive
termination or expiration of this Agreement.
7.
INSURANCE
7.1
Manufacturer shall (i) maintain statutory Worker’s
Compensation, Employer’s Liability, Broad Form Commercial
General Liability, and Business Automobile Liability Insurance on
behalf of Manufacturer and its subcontractors, and Contractual
Liability Insurance for liability under this Agreement, in each
instance of at least $2,000,000 (U.S.) combined single limit; (ii)
maintain insurance covering its assets and operations in an amount
sufficient to fund the costs of compliance with the Business
Interruption and Recovery Plan required by this Agreement; (iii)
maintain Umbrella / Excess Liability Insurance of $5,000,000 (U.S.)
per occurrence; (iv) name Motorola as an additional insured and,
under the Commercial General Liability policy, include a
cross-liability endorsement; (v) provide a waiver of subrogation in
favor of Motorola under the Workers Compensation and
Employers’ Liability policies; (vi) cause its insurance to be
designated as primary and provide for thirty days’ minimum
prior notice of cancellation to Motorola; (vii) at Motorola's
request, furnish evidence of insurance from a locally licensed
insurance provider reasonably acceptable to Motorola; and (viii)
require its Supply Chain to maintain, at a minimum, the same
coverage and limits required of Manufacturer.
7.2
Nothing contained within these insurance requirements will be
deemed to limit or expand the scope, application and/or limits of
the coverage afforded, which coverage will apply to each insured to
the full extent provided by the terms and conditions of the
policies. Nothing contained within this provision will affect
and/or alter the application of any other provision contained with
this Agreement. Deductibles or self-insured retentions must not
exceed $50,000 unless declared to and approved by Motorola prior to
the date of this Agreement. The deductible and/or self-insured
retention of the policies will not limit or apply to the
Manufacturer’s liability to Motorola and will be the sole
responsibility of the Manufacturer.
8.
INSPECTION AND AUDIT
8.1 Manufacturer
further agrees that upon one (1) day notice to Licensee, who shall
in turn notify Manufacturer, Motorola shall have the right to
inspect, at Motorola’s expense, the manufacturing facilities
of Manufacturer during regular business hours to determine
compliance of the Product(s) manufactured by Manufacturer with the
applicable Control Specifications approved by Motorola and supplied
to Manufacturer by Licensee, and for compliance with laws,
standards and labor practices.
8.2 Manufacturer
further agrees that, during the term of this Agreement and for at
least five (5) years following the termination or expiration of
this Agreement, Manufacturer and its affiliates shall maintain at
Manufacturer’s or its affiliate’s principal office,
such books and records, including, but not limited to, production,
inventory and sales records (collectively “Books and
Records”) as are necessary to substantiate that: (i) all
statements submitted to Motorola by Licensee were true, complete
and accurate with regard to the quantities of Products sold to
Licensee by Manufacturer and the countries to which they were
shipped; (ii) Manufacturer has manufactured and sold Products
exclusively to Licensee in accordance with the provisions of this
Agreement; and (iii) no payments have been made, directly or
indirectly, by or on behalf of Manufacturer or Licensee to or for
the benefit of any Motorola employee or agent who may reasonably be
expected to influence Motorola’s decision to enter into this
Agreement, or the amounts to be paid by Licensee or Manufacturer
under this Agreement. (As used in this Section,
“payment” shall include money, property, services, and
all other forms of consideration.) All Books and Records shall be
maintained in accordance with generally accepted accounting
principles consistently applied. During the term of this Agreement,
and for five (5) years after any termination or expiration of this
Agreement, the Books and Records shall be open to inspection,
audit, and copy by or on behalf of Motorola during business
hours.
9.
PATENT
NON-ASSERT AND NO PATENT LICENSE
9.1 Manufacturer
understands that other manufacturers supply to Motorola product(s)
that are the same or similar to the Products manufactured by
Manufacturer hereunder. Manufacturer hereby covenants and agrees
not to: (a) assert, bring, cause to be brought or threaten to bring
against Motorola (or its manufacturers or its customers)
(collectively, “Motorola Parties”) any claim, action or
proceeding alleging that a Motorola Party’s purchasing,
manufacturing, having made, using, importing, offering for sale,
selling, providing or otherwise distributing (i) such additional
manufacturer’s product(s), or (ii) any Motorola product(s)
(including products designed, assembled or manufactured for
Motorola by third-parties) (collectively, “Motorola
Products”), incorporating such additional
manufacturer’s product(s), infringes or misappropriates any
of Manufacturer’s Intellectual Property Rights; and (b) seek
to enjoin, or enjoin the supply, import, sale, distribution, or
manufacture of (i) such additional manufacturer’s product(s)
to or for Motorola, or (ii) the purchase, manufacture, use, import,
sale, or distribution of the Motorola Product(s) incorporating such
additional manufacturer’s product(s). The obligations
of Manufacturer in this Section 9 will survive expiration or
termination of this Agreement for any such additional
manufacturer’s product(s) purchased by or for, or supplied to
or for, Motorola prior to or during the term of this Agreement.
This covenant will be binding on Manufacturer’s successors in
interest to, all transferees or assignees of and any exclusive
licensee of any Manufacturer’s Intellectual Property
Rights. Manufacturer agrees to inform all successors in
interest, transferees, assignees or licensees of this covenant and
to obtain their written consent to be bound by this
covenant.
9.2 No
grant or transfer of any of Intellectual Property Rights owned by
Motorola is given or intended under this Agreement, other than what
is necessary in order for Manufacturer to perform its duties under
this Agreement. Manufacturer
acknowledges that entities, including but not
limited to Motorola, own Intellectual Property Rights that pertain
to cellular telephone products or other wireless communication
products (“Cellular Telephone Intellectual
Property”).
Manufacturer
acknowledges that this Agreement (i) does not
include a license under such Cellular Telephone Product
Intellectual Property for the manufacture, use, sale, import or
other disposal of any cellular telephone or other wireless
communication products including the Products, and (ii) does not
exhaust any of Motorola’s rights in the Cellular Telephone
Product Intellectual Property with respect to any claim that is
instantiated in or would otherwise be infringed by the
Products.
10.
TERMINATION
AND EXPIRATION
10.1 The
initial term of this Agreement is 1 (one) year, starting on the
Effective Date. After the initial term, the Agreement will
automatically renew for additional successive one-year period(s)
unless either party provides the other with written notice of its
intention not to renew the Agreement at least one hundred twenty
(120) days prior to the expiration of the initial term or any
one-year renewal period. Motorola may immediately terminate this
Agreement if Motorola terminates its license agreement with the
Licensee. In addition Motorola may terminate for convenience upon
ninety (90) days prior written notice to Manufacturer.
10.2. Motorola
may immediately terminate this Agreement upon written notice in the
event Manufacturer files a bankruptcy petition of any type or has a
bankruptcy petition of any type filed against it, ceases to conduct
business in the normal course, becomes insolvent, enters into
suspension of payments, moratorium, reorganization, makes a general
assignment for the benefit of creditors, admits in writing its
inability to pay debts as they mature, goes into receivership, or
avails itself of or becomes subject to any other judicial or
administrative proceeding that relates to insolvency or protection
of creditors’ rights.
10.3 Manufacturer
agrees that upon any termination or expiration of this Agreement,
Manufacturer shall execute all papers and make such filings as
necessary to terminate any registered user agreements or similar
agreements that may have been executed, filed and/or recorded while
this Agreement was in effect.
10.4 Manufacturer
acknowledges that any material breach by Manufacturer of this
Agreement will cause irreparable harm and damages to Licensee
and/or Motorola. If Licensee or Motorola determine Manufacturer has
materially breached this Agreement, Manufacturer shall have thirty
(30) days to cure such breach to the satisfaction of Motorola and
Licensee. If Manufacturer fails to cure such material breach in
thirty (30) days, this Agreement shall terminate.
11.
CONFIDENTIAL
INFORMATION
11.1
Confidential Information is, and at all times will remain, the
property of the disclosing party. The parties shall: (i) maintain
the confidentiality of each other’s Confidential Information
and not disclose it to any third party, except as authorized by the
original disclosing party in writing; (ii) restrict disclosure of,
and access to, Confidential Information to employees, contractors
and agents who have a "need to know" in order for the party to
perform its obligations or exercise its rights under this
Agreement, and who are bound to maintain the confidentiality of the
Confidential Information by terms of nondisclosure no less
restrictive than those contained herein; (iii) handle Confidential
Information with the same degree of care the receiving party
applies to its own confidential information, but in no event, less
than reasonable care; (iv) use Confidential Information only for
the purpose of performing, and to the extent necessary, to fulfill
their respective obligations under this Agreement; and (v) promptly
notify each other upon discovery of any unauthorized use, access,
or disclosure of the Confidential Information, take reasonable
steps to regain possession and protection of the Confidential
Information, and prevent further unauthorized action or breach of
this Agreement.
11.2
The receiving party has no obligation to preserve the
confidentiality of any information that is: (i) previously known,
or received rightfully by the receiving party without any
obligation to keep it confidential; (ii) distributed to third
parties by the disclosing party without restriction; (iii) publicly
available other than by unauthorized disclosure by the receiving
party; (iv) independently developed by the receiving party; or (v)
required to be disclosed under applicable law, court order, or
other governmental authority lawfully demanding Confidential
Information, provided that the receiving party gives the disclosing
party prompt written notice of the request and a reasonable
opportunity to object to the disclosure and to seek a protective
order or other appropriate remedy, uses reasonable efforts to limit
disclosure, and discloses only the Confidential Information
specifically required and only to the extent compelled to do so,
and continues to maintain confidentiality after the required
disclosure.
11.3
Except as otherwise provided in this Agreement, no use of any
Confidential Information of the disclosing party is permitted, and
no grant under any Intellectual Property Rights of the disclosing
party is given or intended, including any license implied or
otherwise. Manufacturer shall not reverse engineer, de-compile, or
disassemble any Motorola Confidential Information. Manufacturer
shall not export or re-export, directly or indirectly, any of
Motorola’s Confidential Information to any country for which
any applicable government, at the time of export or re-export,
requires an export license or other governmental approval, without
first obtaining the license or approval.
11.4
The receiving party acknowledges that Confidential Information may
contain information that is proprietary and valuable to the
disclosing party and that unauthorized dissemination or use of the
Confidential Information may cause irreparable harm to the
disclosing party.
11.5
Unless otherwise agreed by the parties in writing, the
parties’ obligations under Section 10 of this Agreement will
survive for five (5) years following the date of any expiration or
termination of this Agreement.
11.6
The existence of this Agreement, and its terms and conditions, are
Confidential Information, and the parties shall not now or
hereafter divulge any part thereof to any third party except: (i)
with the prior written consent of the other party; or (ii) to any
governmental body having jurisdiction to request and to read it; or
(iii) as may be required by law or legal processes, for defense of
a Claim, or to assert or enforce a party’s rights under this
Agreement; or (iv) to auditors and accountants representing either
party, or (v) to its employees, officers, directors, agents,
representatives or affiliates having a need to know; provided that,
to the extent permissible by law, such divulging party shall impose
equivalent confidentiality obligations on the recipient in writing
prior to any such divulgence.
11.7.
“Confidential Information” means confidential or
proprietary data or information disclosed by one party to the other
under this Agreement (i) in written, graphic, machine recognizable,
electronic, sample, or any other visually perceptible form, which
is clearly designated as "confidential" or "proprietary" at the
time of disclosure, and (ii) in oral form, if it is identified as
confidential at the time of disclosure, and confirmed in a written
summary designated as “confidential” or
“proprietary” within thirty (30) days after disclosure.
Notwithstanding the foregoing, all Motorola information regarding
product specifications, prototypes, designs, samples, testing
processes and results, quality and manufacturing procedures and
requirements, customer information, computer software and related
documentation, product or technology roadmaps, cost or price
information, demand or volume information, market share, market or
financial projections, and other similar information is Motorola
Confidential Information without regard to designation or written
confirmation as 'confidential' or 'proprietary'.
12.
LIMITATION
OF LIABILITY
IN NO
EVENT WILL MOTOROLA BE LIABLE TO MANUFACTURER FOR ANY DAMAGES
WHATSOEVER UNDER ANY THEORY OF LIABILITY OR RECOVERY, ARISING FROM,
OR CONNECTED WITH, ANY ACT OR OMMISSION BY MOTOROLA IN ANY WAY
RELATED TO THIS AGREEMENT, INCLUDING ANY DIRECT DAMAGES AND/OR ANY
SPECIAL, INDIRECT, INCIDENTAL, CONSEQUENTIAL, OR PUNITIVE
DAMAGES.
13.
GOVERNING
LAW AND DISPUTE RESOLUTION
13.1
Governing Law
. The
laws of the state of Illinois, disregarding its conflict of laws
provisions, exclusively govern this Agreement, all transactions and
conduct related to this Agreement, and all disputes and causes of
action between the parties (in contract, warranty, tort, strict
liability, by statute, regulation, or otherwise). The parties
specifically disclaim application of the United Nations
Convention on Contracts for the
International Sale of Goods.
13.2
Dispute Resolution
.
Either party may submit the dispute to a state or federal court of
competent jurisdiction within the geographic bounds of the United
States District Court for the Northern District of Illinois, U.S.A.
The sole and exclusive venue for any disputes, claims, or causes of
action, whether legal or equitable, is the state or federal courts
within the geographic bounds of the United States District Court
for the Northern District of Illinois. Use of any dispute
resolution procedure will not be construed under the doctrines of
laches, waiver, or estoppel to adversely affect the rights of
either party. Nothing herein prevents either party from resorting
directly to judicial proceedings if the dispute is with respect to
intellectual property rights, or interim relief from a court is
necessary to prevent serious and irreparable injury to a party or
others. Manufacturer’s performance under this Agreement will
not be suspended during the pendency of any dispute.
13.3
Manufacturer agrees that should it be or become aware of any
applicable laws or regulations which are materially inconsistent
with the provisions of this Agreement, it shall notify Licensee
within five (5) days of becoming aware of such material
inconsistency.
14.
OTHER
TERMS AND CONDITIONS
14.1
Assignment
. Except
as otherwise provided in this Section, neither party may assign
this Agreement or any of its rights or obligations under this
Agreement, without the prior written approval of the other party,
which will not be unreasonably withheld. Any attempted assignment,
delegation, or transfer without the necessary approval will be
void. Unless otherwise agreed in writing by Motorola, in the event
of a sale or transfer of Manufacturer’s business or assets,
whether by operation of law or otherwise, Manufacturer shall make
assumption of its obligations under this Agreement a condition of
the sale or transfer. Notwithstanding the foregoing, for any
Motorola acquisition, merger, consolidation, reorganization, or
similar transaction, or any spin-off, divestiture, or other
separation of a Motorola business, Motorola may, without the prior
written consent of Manufacturer and at no additional cost to
Motorola or to the assignee entity(ies): (i) assign its rights and
obligations under this Agreement, in whole or in part, or (ii)
split and assign its rights and obligations under this Agreement so
as to retain the benefits of this Agreement for both Motorola and
the assignee entity(ies) (and their respective Affiliates)
following the split. Manufacturer will work cooperatively with
Motorola and the assignee entity(ies) to ensure a smooth and
orderly transition.
14.2
Publicity
.
Manufacturer shall not issue a press release or make any other
disclosure regarding this Agreement, the parties’ business
relationship, or Motorola or any other aspect of Motorola’s
business, without Motorola’s prior written
consent.
14.3
Relationship
.
Manufacturer will perform under this Agreement solely as an
independent contractor. Under no circumstances will any of
Manufacturer’s personnel be considered employees or agents of
Motorola. Nothing in this Agreement grants either party the right
or authority to make commitments of any kind for the other, implied
or otherwise, without the other party's prior written approval.
This Agreement does not constitute or create, in any manner, a
joint venture, partnership, or formal business organization of any
kind.
14.4
Severability
. If a
provision of this Agreement is held to be unenforceable under
applicable law, the unenforceable provision will not affect any
other provision in this Agreement, and this Agreement will be
construed as if the unenforceable provision was not present. The
parties shall negotiate in good faith to replace the unenforceable
provision with an enforceable provision with effect nearest to that
of the provision being replaced.
14.5
Subcontracting
.
Manufacturer shall not subcontract any of its obligations under
this Agreement without Motorola's prior written consent.
Manufacturer retains responsibility for all obligations
subcontracted hereunder and shall indemnify, defend and hold
harmless the Motorola Indemnities against any Claim arising from or
caused by the acts or omissions of Manufacturer’s
subcontractors.
14.6
Successors
. This
Agreement is binding upon, inures to the benefit of, and is
enforceable by the parties and their respective successors and
permitted assigns.
14.7
Survival
. A
provision of this Agreement will survive expiration or termination
of this Agreement if the context of the provision indicates that it
is intended to survive.
14.8
Waiver
. Failure of
either party to insist upon the performance of any term, covenant,
or condition in this Agreement, or to exercise any rights under
this Agreement, will not be construed as a waiver or relinquishment
of the future performance of any such term, covenant, or condition,
or the future exercise of any such right. The obligation of each
party with respect to such future performance will continue in full
force and effect. Any waiver is enforceable only if in writing and
signed by an authorized representative of the waiving
party.
IN
WITNESS WHEREOF, each of the parties has caused this Agreement to
be executed in duplicate originals by its duly authorized
representative on the respective dates entered below.
MANUFACTURER
LICENSEE
Signature:
_________________________
Signature: ___________________
Print Name:
_______________________
Print Name: __________________
Title:
_____________________________
Title: ________________________
Date:
_____________________________
Date: ________________________
MOTOROLA MOBILITY LLC.
Signature:
__________________________
Print
Name: ________________________
Title:
_____________________________
Date:
_____________________________
EXHIBIT 1
TRADEMARKS, TRADE DRESS, AND COPYRIGHTS
The
Licensed Motorola Trademarks are: the MOTOROLA signature and the
stylized M logo (“Emsignia”) and associated Motorola
Trade Dress
EXHIBIT 2
PRODUCTS
<NEED TO FILL IN WHAT PRODUCT(S) THE AGREEMENT IS
FOR>
EXHIBIT 3
1.
Ethical
Conduct, Anticorruption and Unfair Business Practices
Motorola
has historically depended on product quality and superiority,
combined with outstanding support capability, to sell its products.
Accordingly, Manufacturer agrees to perform the services hereunder
with the highest ethical standards. Motorola will not do business
with any entity or person where Motorola believes that payoffs or
similar improper or unethical practices are involved. Motorola
expects its Manufacturers to abide by this policy and not to have a
relationship with another entity or person, or engage in any
activity that results or may result in a conflict of interest, or
embarrassment to Motorola, or harm to Motorola's reputation.
Manufacturer shall: (i) maintain transparency and accuracy in
corporate record keeping; (ii) act lawfully and with integrity in
handling competitive data, proprietary information and other
Intellectual Property Rights; and (iii) comply with legal
requirements regarding fair competition and antitrust, and accurate
and truthful marketing. Manufacturer shall not engage in corrupt
practices, including public or private bribery or kickbacks. If
Manufacturer fails to comply in any respect with all of these
requirements, then Motorola may immediately and without liability
terminate this Agreement.
2.
Antidiscrimination
and Humane Treatment of Workers
a.
Manufacturer shall employ workers on the basis of their ability to
do the job and not on the basis of their personal characteristics
or beliefs.
b.
Manufacturer shall ensure that Products (including parts) are not
produced, manufactured, mined, or assembled with the use of forced,
prison, or indentured labor, including debt bondage, or with the
use of illegal child labor in violation of International Labor
Conventions for minimum age (ILO-C138) and child labor (ILO-C182).
If Manufacturer recruits contract workers, Manufacturer shall pay
agency recruitment commissions, shall not require workers to remain
in employment for any period of time against their will, and shall
not impose any early termination penalties on workers. If
Manufacturer provides housing or eating facilities, Manufacturer
shall ensure the facilities are operated and maintained in a safe,
sanitary and dignified manner.
c.
Manufacturer shall operate safe, healthy and fair working
environments, including managing operations so levels of overtime
do not create inhumane working conditions. Manufacturer shall pay
workers at least the minimum legal wage, or where no wage laws
exist, the local industry standard. Manufacturer shall ensure that
workers are free to join, or refrain from joining, associations of
their own choosing, unless otherwise prohibited by law.
Manufacturer shall not routinely require workers to work in excess
of six consecutive days without a rest day.
3.
Environmental
Protection
a.
Manufacturer shall implement a functioning environmental management
system in accordance with ISO 14001 or equivalent. Third-party
registration is recommended but not required.
b.
Manufacturer certifies that Products and their parts do not contain
and are not manufactured with a process that uses any Class I
ozone-depleting substances (as identified in 40 CRF Part 82
Appendix A to Subpart A, or as subsequently identified by the U.S.
Environmental Protection Agency as Class I ozone-depleting
substances). For Products imported into the United States,
Manufacturer shall provide Motorola with a completed and signed ODS
Certification Questionnaire, accessible at the following URL:
http://www.motorola.com/Manufacturers/materialsdisclosure
c.
For Products used as parts for Motorola products, including the
packaging used with such products and any manuals that accompany
such products in the ordinary course, Manufacturer shall provide
material disclosure or certification, as defined in
Motorola’s Controlled and Reportable Materials Disclosure
Process, accessible at the following URL:
http://www.motorola.com/Manufacturers
4.
Material
Safety Data Sheets
Manufacturer
shall electronically provide material safety data sheets, chemical
safety data sheets, or equivalent documentation for all chemicals
sold to Motorola. For all chemicals supplied or imported into the
United States, Manufacturer shall certify that the chemicals are
listed on the Toxic Substances Control Act, 15 USCS §2601, et.
seq., chemical inventory, or are subject to an exemption specified
in the material safety data sheets.
5.
Imports
and Customs
Manufacturer
shall comply with all import and customs laws, regulations and
administrative determinations of the importing country.
Manufacturer shall comply with the security criteria of the
importing country’s government security program. If
Manufacturer is providing Products to be delivered to, or Services
to support delivery to, the U.S., Manufacturer shall comply with
the security criteria of the U.S. Customs and Border
Protection’s
Customs-Trade
Partnership against Terrorism (C-TPAT) Program
(available on
http://www.cbp.gov).
6.
Export
Restriction
If
Manufacturer is the exporter of record for any shipments,
Manufacturer shall obtain all export authorizations from the U.S.
government or other governments that may be required to lawfully
make such shipments.
7.
Utilization
of Small Business Concerns
If
applicable, Manufacturer shall comply with the provisions of U.S.
Federal Acquisition Regulation (FAR) 52.219-8 pertaining to
Utilization of Small Business Concerns, as well as any other state
and local, small and other business utilization laws.
8.
Equal
Opportunity
If
applicable, Manufacturer shall comply with the provisions of FAR
52.222-21, 52.222-26, 52.222-35, 52.222-36, and 52.222-50
pertaining to Segregated Facilities, Equal Opportunity, Equal
Opportunity for Veterans, Affirmative Action for Workers with
Disabilities, and Human Trafficking. If applicable, Manufacturer
shall maintain, at each establishment, affirmative action programs
required by the rules of the U.S. Secretary of Labor (41 CFR 60-1
and 60-2).
9.
Manufacturer
Diversity
If
Manufacturer is located in the United States or is supplying
Products to Motorola locations based in the United States,
Manufacturer shall track and report its Supply Chain’s spend
with minority-owned, women-owned and disabled veteran-owned
business enterprises located in the United States. Manufacturer and
Motorola will agree on a goal for Manufacturer’s Supply Chain
spend, based upon a percentage of Manufacturer’s total gross
revenues under this Agreement. Manufacturer shall submit quarterly
progress reports, in a format designated by Motorola, by the
twenty-fifth day of the month following the end of each calendar
quarter. All reports will be forwarded to the Motorola Manufacturer
Diversity Group, 2501 S. Price Road, M/D G1232, Chandler, AZ 85248,
or sent via email to
Manufacturerdiversity@motorola.com.
10.
Product
Safety and Regulatory Compliance
Manufacturer
shall ensure that all Products and services provided comply with
all applicable regulations and laws, including all applicable
product safety, environmental, and recycling regulations and
laws.
11.
ICT
Manufacturer Self Assessment Questionnaire
Upon
Motorola’s request, Manufacturer shall obtain a subscription
to the Global e-sustainability Initiative (GeSI) and Electronic
Industry Code of Conduct’s (EICC) online system E-TASC at
www.E-TASC.com and complete the ICT Manufacturer Self-Assessment
within that system.
12.
ICT
Manufacturer Self Assessment Questionnaire
Upon
Motorola’s request, Manufacturer will obtain a subscription
to the Global e-sustainability Initiative (GeSI) and Electronic
Industry Code of Conduct’s (EICC) online system E-TASC at
www.E-TASC.com and complete the ICT Supplier Self-Assessment within
that system. Details regarding this ICT Supplier Self Assessment
Questionnaire and Motorola Corporate Responsibility initiatives are
available for review at:
http://compass.mot.com/web/wikinethome.
EXHIBIT E
PRODUCT WARRANTY
Licensee
shall include a written warranty statement on or in
all
Product
packaging. Such
warranty shall, at a minimum:
a.
comply with all
applicable laws of the country or countries in which the Product is
sold;
b.
specify what
components the warranty covers;
c.
specify the time
period of the warranty, which shall be no less than one (1) and no
more than five
(5)
years
from date of purchase;
d.
specify the remedy
(e.g. repair, replacement, or refund) if the
Product
does not conform to the
warranty;
e.
specify the
Licensee
’s toll-free
telephone number available to
Product
purchasers for warranty and
other support;
f.
to the extent
allowed by law, exclude consequential, incidental and punitive
damages and limit any remedies to repair, replace or refund;
and
g.
clearly indicate
that Motorola is not responsible for warranty support of the
Product
h.
be substantively
equivalent to the sample warranty statement below:
The
following statement shall be used for all goods sold in the United
States:
Statement of Limited Warranty
: (Licensee) warrants that for
a period of — years from the date of purchase that this
product 1) is free from defects in materials and workmanship and 2)
conforms to its specifications. If this product does not function
as warranted during the warranty period, (Licensee), at its option,
will either replace this product with one that is functionally
equivalent or will refund your purchase price. These are your
exclusive remedies under this warranty. Please call 1-800
(XXXXXXXX) for warranty service.
This product is manufactured, distributed or sold by XXXXXX,
official licensee for this product.
MOTOROLA
and the Stylized M Logo (and/or insert other Marks, as applicable)
are trademarks or registered trademarks of Motorola Trademark
Holdings, LLC.
and are used
under license.
All
other trademarks are the property of their respective owners.
© 20XX Motorola Mobility LLC.
(with
X being the date of publication)
All
rights reserved.
Please contact XXXXXX at YYYYYYYY for
questions/comments, warranty, support, or service related to this
product
This
warranty will be voided by misuse, improper physical environment,
accident, or
improper
maintenance by you. THIS WARRANTY REPLACES ALL OTHER WARRANTIES OR
CONDITIONS, EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, THE
IMPLIED WARRANTIES OR CONDITIONS OF MERCHANTABILITY AN]) FITNESS
FOR A PARTICULAR PURPOSE. THESE WARRANTIES GIVE YOU SPECIFIC LEGAL
RIGHTS AND YOU MAY ALSO HAVE OTHER RIGHTS WHICH VARY FROM
JURISDICTION TO JURISDICTION. SOME JURISDICTIONS DO NOT ALLOW THE
EXCLUSION OR LIMITATION OF EXPRESS OR IMPLIED WARRANTIES, SO THE
ABOVE EXCLUSION OR LIMITATION MAY NOT APPLY TO YOU. IN THAT EVENT,
SUCH WARRANTIES ARE LIMITED IN DURATION TO THE WARRANTY PERIOD. NO
WARRANTIES APPLY AFTER THAT PERIOD.
Circumstances
may arise where, because of a default on (Licensee’s) part or
other liability, you are entitled to recover damages from
(Licensee). In each such instance, regardless of the basis on which
you are entitled to claim damages from (Licensee) (including
fundamental breach, negligence, misrepresentation, or other
contract or tort claim), (Licensee) is only liable
for:
1.
damages for bodily
injury (including death) and damage to real property
and
tangible
personal property; and
2. the amount
of any other actual direct damages or loss, up to the greater of
$500 or
the
price paid for this product.
UNDER
NO CIRCUMSTANCES IS (Licensee) OR XXX LIABLE FOR ANY OF THE
FOLLOWING: (1) THIRD-PARTY CLAIMS AGAINST YOU FOR LOSSES OR DAMAGES
(OTHER THAN THOSE UNDER THE FIRST ITEM LISTED ABOVE); (2) LOSS OF,
OR DAMAGE TO, YOUR RECORDS OR DATA: OR (3) SPECIAL, INCIDENTAL OR
INDIRECT DAMAGES OR FOR ANY ECONOMIC CONSEQUENTIAL DAMAGES
(INCLUDING LOST PROFITS OR SAVINGS), EVEN IF (Licensee) OR XXX ARE
INFORMED OF THEIR POSSIBILITY. SOME JURISDICTIONS DO NOT ALLOW THE
EXCLUSION OR LIMITATION OF INCIDENTAL OR CONSEQUENTIAL DAMAGES, SO
THE ABOVE EXCLUSION OR LIMITATION MAY NOT APPLY TO
YOU.
EXHIBIT F
Compliance with Laws and Ethical Standards
1.
Ethical Conduct, Anticorruption and Unfair Business
Practices
Motorola has historically depended on product
quality and superiority, combined with outstanding support
capability, to sell its products. Accordingly, Licensee agrees to
perform the services hereunder with the highest ethical standards.
Motorola will not do business with any entity or person where
Motorola believes that payoffs or similar improper or unethical
practices are involved. Motorola expects its Licensees to abide by
this policy and not to have a relationship with another entity or
person, or engage in any activity that results or may result in a
conflict of interest, or embarrassment to Motorola, or harm to
Motorola's reputation.
Licensee will: (i) maintain
transparency and accuracy in corporate record keeping; (ii) act
lawfully and with integrity in handling competitive data,
proprietary information and other intellectual property; and (iii)
comply with legal requirements regarding fair competition and
antitrust, and accurate and truthful marketing. Licensee will not
engage in corrupt practices, including public or private bribery or
kickbacks. I
f Licensee fails to comply
in any respect with all of these requirements, then Motorola may
immediately and without liability terminate this
Agreement.
2.
Antidiscrimination and Humane Treatment of Workers
a.
Licensee will employ workers on the basis of their ability to do
the job and not on the basis of their personal characteristics or
beliefs.
b.
Licensee will assure that Products (including parts) will not be
produced, manufactured, mined, or assembled with the use of forced,
prison, or indentured labor, including debt bondage, or with the
use of illegal child labor in violation of International Labor
Conventions for minimum age (ILO-C138) and child labor (ILO-C182).
If Licensee recruits contract workers, Licensee will pay agency
recruitment commissions, will not require workers to remain in
employment for any period of time against their will, and will not
impose any early termination penalties on workers. If Licensee
provides housing or eating facilities, Licensee will assure the
facilities are operated and maintained in a safe, sanitary and
dignified manner.
c.
Licensee will operate safe, healthy and fair working environments,
including managing operations so levels of overtime do not create
inhumane working conditions. Licensee will pay workers at least the
minimum legal wage, or where no wage laws exist, the local industry
standard. Licensee will assure that workers are free to join, or
refrain from joining, associations of their own choosing, unless
otherwise prohibited by law. Licensee will not routinely require
workers to work in excess of six consecutive days without a rest
day.
3.
Environmental Protection
a.
Licensee will implement a functioning environmental management
system in accordance with ISO 14001 or equivalent. Third-party
registration is recommended but not required.
b.
Licensee certifies that Products and their parts do not contain and
are not manufactured with a process that uses any Class I
ozone-depleting substances (as identified in 40 CRF Part 82
Appendix A to Subpart A, or as subsequently identified by the U.S.
Environmental Protection Agency as Class I ozone-depleting
substances). For Products imported into the United States, Licensee
will provide Motorola with a completed and signed ODS Certification
Questionnaire, accessible at the following URL:
http://www.motorola.com/content.jsp?globalObjectId=8343
c.
For Products used as parts for Motorola products, including the
packaging used with such products and any manuals that accompany
such products in the ordinary course, Licensee will provide
material disclosure or certification, as defined in
Motorola’s Controlled and Reportable Materials Disclosure
Process, accessible at the following URL:
http://www.motorola.com/mot/doc/1/1501_MotDoc.pdf
4.
Material Safety Data Sheets
Licensee
will electronically provide material safety data sheets, chemical
safety data sheets, or equivalent documentation for all chemicals
sold to Motorola. For all chemicals supplied or imported into the
United States, Licensee will certify that the chemicals are listed
on the Toxic Substances Control Act, 15 USCS §2601, et. seq.,
chemical inventory, or are subject to an exemption specified in the
material safety data sheets.
5.
Imports and Customs
Licensee
will comply with all import and customs laws, regulations and
administrative determinations of the importing country. Licensee
will comply with the security criteria of the importing
country’s government security program. If Licensee is
providing Products to be delivered to, or Services to support
delivery to, the U.S., Licensee will comply with the security
criteria of the U.S. Customs and Border Protection’s
Customs-Trade Partnership against
Terrorism (C-TPAT) Program
(available on
http://www.cbp.gov).
6.
Export Restriction
If
Licensee is the exporter of record for any shipments, Licensee will
obtain all export authorizations from the U.S. government or other
governments that may be required to lawfully make such
shipments.
7.
Utilization of Small Business Concerns
If
applicable, Licensee will comply with the provisions of U.S.
Federal Acquisition Regulation (FAR) 52.219-8 pertaining to
Utilization of Small Business Concerns, as well as any other state
and local, small and other business utilization laws.
8.
Equal Opportunity
If
applicable, Licensee will comply with the provisions of FAR
52.222-21, 52.222-26, 52.222-35, and 52.222-36 pertaining to
Segregated Facilities, Equal Opportunity, Equal Opportunity for
Veterans, and Affirmative Action for Workers with Disabilities. If
applicable, Licensee will maintain, at each establishment,
affirmative action programs required by the rules of the U.S.
Secretary of Labor (41 CFR 60-1 and 60-2).
9.
Government Subcontract
If an
Order is issued under a government contract, Licensee will comply
with the terms of the government contract that appear on the Order,
and with any other applicable laws, regulations and executive
orders.
10.
Licensee Diversity
If
Licensee is located in the United States or is supplying Products
to Motorola locations based in the United States, Licensee will
track and report its Supply Chain’s spend with
minority-owned, women-owned and disabled veteran-owned business
enterprises located in the United States. Licensee and Motorola
will agree on a goal for Licensee’s Supply Chain spend, based
upon a percentage of Licensee’s total gross revenues under
this Agreement. Licensee will submit quarterly progress reports, in
a format designated by Motorola, by the twenty-fifth day of the
month following the end of each calendar quarter. All reports will
be forwarded to the Motorola Licensee Diversity Group, 2501 S.
Price Road, M/D G1232, Chandler, AZ 85248, or sent via email to
supplierdiversity@motorola.com.
11.
Product Safety and Regulatory Compliance
Licensee
will ensure that all Products and services provided comply with all
applicable regulations and laws, including all applicable product
safety, environmental, and recycling regulations and
laws.
12.
ICT Licensee Self Assessment Questionnaire
Upon
Motorola’s request, Licensee will obtain a subscription to
the Global e-sustainability Initiative (GeSI) and Electronic
Industry Code of Conduct’s (EICC) online system E-TASC at
www.E-TASC.com and complete the ICT Supplier Self-Assessment within
that system. Details regarding this ICT Supplier Self Assessment
Questionnaire and Motorola Corporate Responsibility initiatives are
available for review at:
http://compass.mot.com/web/wikinethome.
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