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STI/SPFA Fabricator Membership Trademark and License Agreement Shop Fabricated Atmospheric Tank Section

THIS AGREEMENT is made and entered into the potential new member company (the "Company") and “STI/SPFA,” an Illinois not-for-profit corporation, located at 944 Donata Court, Lake Zurich, Illinois 60047 ("STI/SPFA").

WHEREAS, STI/SPFA is the owner of the marks ”STI” to designate membership in Steel Tank Institute, a division of STI/SPFA, and “SPFA” to designate membership in Steel Plate Fabricators Association, a division of STI/SPFA (the “Mark(s)”); 

 

WHEREAS, STI/SPFA is the owner of various trademarks (hereinafter referred to as "Marks") and may hereafter acquire additional Mark(s), which are used to identify the Steel Tank Institute as well as to identify the design for various underground and aboveground steel storage tank systems more fully described in Schedule A and the Technology Forms described therein, attached hereto and incorporated herein by reference (the "Technologies") which were developed by STI/SPFA;

 

WHEREAS, STI/SPFA has obtained certain Underwriters Laboratories ("UL") and/or Underwriters Laboratories of Canada (“ULC”) and Southwest Research Institute (“SwRI”) listings for various technologies;

 

WHEREAS, STI/SPFA desires to permit its members to access and use the Technologies described in Schedule A, and information available in STI/SPFA’s UL, ULC, and/or SwRI Listing(s) related thereto;

 

WHEREAS, STI/SPFA desires to permit such members to access and use STI/SPFA’s UL, ULC, and/or SwRI Listing(s) described in Schedule A; and

 

WHEREAS, the Company has qualified to become a Fabricator Member and participate in the Shop Fabricated Atmospheric Tank Section of STI/SPFA and desires to become a Licensee of the Marks, have access to and use the Technologies under STI/SPFA’s UL, ULC, and/or SwRI Listing(s), (the “Listings”) for those Technologies recorded in Schedule B, attached hereto and incorporated herein by reference, upon the terms and conditions set forth herein:

 

NOW, THEREFORE, in consideration of the mutual promises and covenants contained herein, the parties agree as follows:

 

  1. Grant of License.

 

(a)        STI/SPFA hereby grants to the Company a non-exclusive license to access the Listings recorded on Schedule B, the non-exclusive right to have access to use the Listings for these Technologies, and the non-exclusive right to employ and utilize these Technologies in the Company's business of manufacturing tanks recorded in Schedule B. The Company shall be entitled to utilize the Technologies at the plant location(s) (the (“Plants”) set forth in Schedule B. The license granted under this Agreement shall commence upon the date of acceptance by STI/SPFA, and shall expire when the Agreement is terminated under the provisions of Section 7 herein.

 

(b)        STI/SPFA grants unto the Company the right to apply for a listing with UL and/or ULC for the Technologies recorded in Schedule B (an “Alternative Listing or AL”), which will permit the Company to manufacture the applicable Technologies at the Plants recorded in Schedule B operated by the Company. STI/SPFA does not guarantee that the Company shall obtain such a listing, however, and expressly disclaims any responsibility and any liability, from any source whatsoever, for the Company's failure to obtain such AL.

 

(c)        STI/SPFA grants unto the Company the right to use the Mark(s) on all tanks manufactured which utilize or employ the Technologies provided such tanks are built to the requirements of the applicable Technology standard and applicable UL, ULC, and/or SwRI listings with the appropriate STI/SPFA Mark(s), as may be amended from time to time, for the Technologies recorded in Schedule B. All such tanks must be labeled. During the term of this Agreement, Company shall not, directly or indirectly, make use of the Technologies for manufacturing or selling any other tank design which uses unique elements of STI/SPFA Technologies as described in Schedule A (herein referred to as a “Look Alike”), and Company acknowledges that it is STI/SPFA’s intent through this Agreement, during the term of the Agreement and for a period thereafter, as set forth in Section 8(b), below, to restrict the Company from manufacturing or selling, from the Plants (as set forth on Schedule B) or from or to any location within a 300-mile radius of the Plants (the “Restricted Territory”), any Look Alike or other tank design which uses unique elements of STI/SPFA Technologies.

 

                        (d)        STI/SPFA grants unto the Company the non-exclusive right to use the Mark(s) for the programs recorded in Schedule B, in connection with its advertisements to the general public provided that it does not hold itself out to be other than a non-exclusive licensee of said Mark(s) and provided that such advertising is truthful in all respects. Further, the Company may represent to third parties that to the extent truthful and where applicable, its tanks conform with the applicable STI/SPFA Technology standards for such tanks.

 

(e)        The Company shall provide or cause to be provided, when required by the attached Technology Forms, a Limited Warranty (“Warranty”) to purchasers of tanks manufactured by the Company and installed in accordance with the STI/SPFA Technology standard as indicated on the attached Technology Forms, upon such terms and conditions as STI/SPFA shall specify from time to time; provided, however, that all applicable registration procedures established by STI/SPFA have been complied with and all applicable tank registration fees have been paid by the Company.  Such Warranty coverage, which is required under the Technology Forms, must be the only warranty provided by the Company, and must be purchased in accordance with the terms and conditions set forth in the applicable Technology Forms from either STICO Mutual Insurance Company, Risk Retention Group or a nationally recognized insurer that meets the requirements set forth herein. An insurer seeking to provide the Warranty coverage to the Company must provide proof to STI/SPFA of compliance with all requirements, and approval remains in the discretion of STI/SPFA. An insurer seeking to provide Warranty coverage must meet the following minimum requirements, which may be exceeded, but in all cases must at least be met:

1. Be an insurer able to provide coverage for STI/SPFA designated products sold into all 50 United States and the Commonwealth of Puerto Rico;

2. Be an insurer with at least a B++ or greater rating as defined by AM Best, or at a minimum, provide a fronting carrier with a rating of the same or better and STI/SPFA shall be named as an additional insured by the insurer; if a fronting carrier is used, STI/SPFA shall also be named on the policy;

3. Have at least the financial resources (e.g., capital) of $5,000,000 US Dollars, or at a minimum, provide a fronting carrier with financial resources of the same or better;

4. Offer first dollar coverage with a minimum per policy limit of $1,000,000 US Dollars;

5. Offer warranty insurance policies on STI technologies built to STI specifications as designated by the STI/SPFA Board of Directors;

6. Sign a confidentiality agreement with STI/SPFA regarding STI technologies, warranties, manufacturers and claims;

7. Promptly notify and apprise STI/SPFA of all claims, claim investigative materials, findings, and the resolution of all claims and provide copies to STI/SPFA of all documents related to the same;

8. Undertake and/or be subject to the following, to be performed by such third parties as selected by STI/SPFA and all of which must be acceptable to STI/SPFA: (a) a search of outstanding litigation to determine whether there are any obvious litigation threats to its ability to discharge its obligations; (b) a review of the policy to determine if it meets the minimums of the STI/SPFA Warranty Insurer Program; and (c) a review of whether remedies are limited to the three offered by the warranty statement (repair, replace, refund); and

9. Submit to any other review as requested by STI/SPFA, as STI/SPFA may conduct its own additional reviews of approved Warranty insurers to ensure that the STI/SPFA Warranty Insurer Program minimum requirements continue to be met.

In addition, the Company applying to use an insurer to provide the Warranty coverage must pay a one-time application fee of $10,000 US Dollars to STI/SPFA to cover the administrative costs and legal fees incurred by STI/SPFA with respect to the review required as set forth above (the fee is non‐refundable).  No such review fee will be required for a Company to use the contractual liability insurance product of STICO Mutual Insurance Company, Risk Retention Group (“STICO”) to meet the STI/SPFA Warranty Insurer Program minimum requirements).  If another nationally recognized insurance carrier is to be used by the Company, in addition to the insurance carrier meeting the requirements set forth above, the coverage must meet the same minimum requirements as the coverage provided by the STICO policy, proof of which must be provided to STI/SPFA. 

STI/SPFA retains the ultimate decision as to whether any insurer and/or coverage meets the program requirements detailed above.

(f)        The licenses granted herein are restricted solely to the Company and do not permit the Company to further sublicense the Technologies or the Mark(s).

 

(g)        Notwithstanding anything contained herein to the contrary, including Section 14 hereof, STI/SPFA shall have the exclusive and unilateral right to amend this Agreement from time to time in order to protect its rights in its UL, ULC, and/or SwRI Listings, the Technologies and the Mark(s)

 

2.         Fees. The Company agrees to pay the following fees:

 

(a)        The parties acknowledge that the right to use the Mark(s) shall be royalty-free;

 

(b)        To pay STI/SPFA the amount indicated on the Technology Fee Schedule(s) for the Technologies recorded in Schedule B, as an initial enrollment fee for each Technology;

 

(c)        To pay directly to UL, ULC, and/or SwRI any fees charged by those entities to obtain a listing on any of STI/SPFA’s UL, ULC, and/or SwRI files; and

 

(d)        The Company hereby agrees to pay to STI/SPFA annual plant dues and other dues assessed by STI/SPFA which are covered by this Agreement. The Company further agrees to pay to STI/SPFA on a timely basis the applicable tank registration fee on all tanks manufactured and installed in accordance with any STI/SPFA standard and such other dues and fees in such amounts as the Board of Directors of STI/SPFA shall from time to time require of its members.

3.         Records. The Company shall keep accurate and complete records and books of account with respect to its employment or utilization of the Technologies and the number of tanks manufactured using such Technologies. The Company shall permit STI/SPFA or its authorized independent accountants to review such records or books upon reasonable notice and during normal business hours.

 

4.         Indemnification. The Company agrees to indemnify and hold harmless STI/SPFA, and its respective officers, directors, employees, agents and members from any and all claims, demands or causes of action and all costs of defense, including court costs, expenses, and reasonable attorneys' fees, incurred by STI/SPFA or its officers, directors, employees, agents and members, which are:  (a) caused by the Company's alleged negligence or the act of or failure to act by the Company, any employee, agent or representative of the Company; or (b) caused or alleged to have been caused, directly or indirectly, by reason of any defect in the manufacture of product utilizing the Technologies or negligence in the installation of the products utilizing the Technologies.  

 

5.         Quality Control Standards.

 

(a)        The Company agrees to comply with all quality control standards issued by STI/SPFA from time to time and agrees to cooperate fully with STI/SPFA or its designated agent in connection with any inspections of the Company's facilities or any tanks manufactured by the Company utilizing or employing the Technologies to ensure compliance with such quality control standards. The Company further agrees to pay all costs related to such inspections as determined from time to time by the Board of Directors of STI/SPFA. Such inspections may include but are not limited to:

 

(i)         Up to five (5) tanks manufactured in accordance with the applicable STI/SPFA Technology standard; and

 

(ii)        Any re-inspection necessitated by a Non-compliance (as herein-after defined).

 

            (b)        If not previously a licensee of STI/SPFA, the Company agrees to a probationary period of one (1) year from the date hereof or until the Company has manufactured twenty (20) tanks in accordance with each new STI/SPFA Technology  standard, whichever is the last to occur, during which period the Board of Directors of STI/SPFA shall assess the ability and intent of the Company to build tanks to the quality standards as determined by the applicable STI/SPFA Technology standard as defined by said Board of Directors from time to time. During such probationary period, said Board of Directors may, in its sole discretion and judgment, terminate this Agreement if it determines that the Company has failed to comply with the letter and spirit of said quality standards and the applicable STI/SPFA Technology standards.

 

                        (c)        Non-compliance. At any time after the hereinbefore described probationary period, if applicable, the Company agrees that any tank purportedly manufactured by it in accordance with the applicable STI/SPFA Technology standard that does not comply with such standard shall be deemed a Non-compliance tank ("Non-compliance") whether such Non-compliance occurs or is discovered before or after shipment. For purposes of this Paragraph, each Plant of the Company, if more than one, shall be considered separately with respect to the procedure outlined herein.  One (1) Non-compliance shall be deemed to include one tank with multiple Non-compliances and all tanks manufactured within three (3) working days if they are all defective for the same reasons, whenever the individual Non-compliances may be discovered. In the event of a Non-compliance and for all future Non-compliances, the representative of the Company responsible for quality control at the plant where such Non-compliance occurs shall, within five (5) working days of the discovery of the Non-compliance, whether by the Company itself or as a result of an inspection by STI/SPFA or its agents, send a full written report to

STI/SPFA outlining the nature and details of how such Non-compliance was discovered, an explanation of why the Non-compliance occurred, the immediate action taken to correct the Non-compliance, and the action which will be taken to prevent future Non-compliance for the same or similar reasons. Any Non-compliance must be brought into compliance with the applicable STI/SPFA Technology standard and re-inspected as directed by STI/SPFA at the Company's expense prior to shipment.

 

Further, in the event of a second Non-compliance at the same Plant within a one-year period,  the next three (3) tanks purportedly manufactured in accordance with the applicable STI/SPFA Technology standard or delivered by the Company from that Plant must be inspected by STI/SPFA or its agents prior to their shipment at the Company's expense. Further, in the event of a third Non-compliance at the same Plant within a one-year period, the next six (6) tanks purportedly manufactured in accordance with the applicable STI/SPFA Technology  standard or delivered by the Company from that Plant must be inspected by STI/SPFA or its agents prior to their shipment at the Company's expense. If more than three (3) Non-compliances are found to occur at the same Plant within a one-year period, the Board of Directors of STI/SPFA may consider terminating the Company's license to use the Mark(s) upon the procedures as hereinafter set forth.

 

(d)        If the Company should not agree with a determination from STI/SPFA’s Board of Directors concerning termination of the Company's license as the result of Non-compliance, it may, within ten (10) days of receipt of such notice, request a rehearing by the Board of Directors of STI/SPFA and may elect to be represented by counsel, at such rehearing. The Company agrees that any decision by the Board upon such rehearing is final and hereby waives all rights of appeal there from.

 

(e)        All tanks or sub-assemblies to be used for STI/SPFA licensed Technologies must be fabricated and/or completed by a manufacturer and at a location subject to and under the auspices of STI/SPFA’s Quality Control. A sub-assembly is defined as a part or portion of the tank that is an essential element for operation of the tank. The element or operation must be subject to STI/SPFA quality control. Examples are: blasting and coating operations, steel tank manufacture, pumping of Fireguard® premix, and application of secondary containment systems. Not included are the manufacturing of bushings, emergency vents, man ways, saddles, platforms, ladders, containment boxes and other items that are easily seen and assembled at the tank manufacturer’s plant.

 

(f)        STI/SPFA must be notified of all off-site contractor work for pumping of the Fireguard® premix, and/or any coating and blasting of any tank built to an STI/SPFA standard.  Approval must be provided by STI/SPFA in advance of the work.  The cost of STI/SPFA inspectors visiting such contractors, if any, must be absorbed by the Company using the subcontractor. Quality control shall be done by the Company on site, or the subcontractor shall attend STI/SPFA Quality Control Meetings.

 

(g)        Should a Company refuse an STI/SPFA inspection, STI/SPFA can demand the return of the Licensee's STI/SPFA labels.

 

(h)        Notwithstanding anything contained to the contrary in this Section 5, in the event the Non-compliance occurs at one or more of the Company’s Plants, STI/SPFA may, at its option, terminate this Agreement with respect to such Non-compliance Plants without affecting the validity of this Agreement with respect to the Company’s other Plants.

 

6.         Procedures.

 

(a)        The Company agrees that if, at any time hereafter, it desires to manufacture tanks pursuant to any applicable STI/SPFA Technology standard at a Plant other than or in addition to the Plant or Plants recorded on the Company’s Schedule B, it must first notify STI/SPFA of the additional Plant and comply with such other requirements as the Board of Directors of STI/SPFA shall, from time to time, determine.

 

(b)        The Company agrees to purchase from STI/SPFA, or from such other source as STI/SPFA shall designate and from no other source, all labels and other identifications bearing the Mark(s) which shall be placed on any tank fabricated in accordance with the applicable STI/SPFA Technology standard and the applicable Listings recorded in the Technology Forms, provided, however, that nothing herein contained shall restrict the right of the Company to use its own name and address also on any such tank.

 

(c)        The Company agrees that its use of the Mark(s) shall conform in every respect with all directions for the use thereof given to it by STI/SPFA, from time to time, including but not limited to, the proper placement of the Mark(s) on tanks and related components which qualify for such identification. The Company further agrees that it will not sell, distribute or otherwise dispose of any labels required to be placed on any tank manufactured in accordance with any applicable STI/SPFA Technology standard and any STI/SPFA UL and/or ULC or SwRI standard, nor any components necessary for such manufacture which were purchased from STI/SPFA or its designated supplier, unless such labels or components are utilized on and incorporated in a tank or tanks manufactured in accordance with the applicable STI/SPFA Technology standard.

 

(d)        The Company agrees that it will send at least one representative who has responsibility for quality control from each of its plants which manufactures tanks in accordance with any applicable STI/SPFA Technology standard to each STI/SPFA Quality Control Meeting and hereby acknowledges that failure to do so will cause immediate revocation of the license granted by this Agreement and termination of Fabricator Membership in STI/SPFA. In addition, should the Company fail to attend the entire Quality Control Meeting, the Board has mandated QC visits of the next 20 tanks fabricated by the Company at the Company’s expense or attend a make-up session at an additional expense to the Company as determined by STI/SPFA.

 

(e)        The Company, as a Fabricator Member of STI/SPFA and a licensee under the terms of this Agreement, hereby agrees to be bound by and subject to all the provisions contained in the STI/SPFA By-Laws as presently set forth and as they may be amended from time to time and any and all rules, regulations or resolutions adopted by the STI/SPFA Board of Directors of STI/SPFA including, but not limited to, any changes or modifications to any STI/SPFA Technology standard, and any STI/SPFA UL and/or ULC or SwRI file for the Technologies recorded in Schedule B.

 

(f)        The Company admits to the validity of each applicable STI/SPFA Technology standard for which the Company is licensed, as incorporated into this Agreement on Schedule B, as proven methods for underground and aboveground steel storage tanks, and hereby agrees to take no action inconsistent therewith.

 

(g)        Based on the insurance requirements defined on the attached Technology Forms, the Company may be required to carry liability type coverage (Product, Pollution, and/or Professional) and Limited Warranty Coverage. The Company authorizes STI/SPFA to obtain a certificate of insurance from its insurance carrier and will provide to STI/SPFA any other insurance related documents that may request to prove that such required insurance is adequate and is being carried and maintained. New documentation will be provided to STI/SPFA each time the Insurance Coverage(s) are renewed or new Coverage(s) acquired. This authorization shall continue in full force and effect until the Company’s license to fabricate all Technologies under this Agreement is terminated.

 

7.         Termination.

 

(a)        (i)         If the Company ceases to be a Fabricator Member of STI/SPFA for any reason, the Company agrees that this Agreement is terminated effective as of the date Fabricator Membership is terminated;

 

            (ii)        If the Company fails to perform any of the obligations and undertakings required by this Agreement or if it appears to the Board of Directors of STI/SPFA that the Company is not willing or able to manufacture tanks in conformity with the Technologies or STI/SPFA’s applicable Technology standards or specifications, the Board of Directors may terminate this Agreement, upon written notice to the Company;

 

            (iii)       If the Company violates the terms of this Agreement with respect to any of STI/SPFA’s Technologies or Mark(s) licensed to the Company, the Board of Directors of STI/SPFA may terminate the license of such Technologies or Mark(s) or this Agreement upon written notice to the Company;

 

            (iv)       If STI/SPFA’s use or license of any Technologies or Mark(s) is challenged by any other entity, the Board of Directors of STI/SPFA may terminate the license and use of such Technologies or Marks or this Agreement upon written notice to the Company; or

 

            (v)        If, the Company, for a period of twelve (12) consecutive months or more, discontinues the manufacture of tanks or other products incorporating the Technologies or applying the Mark(s) as licensed under this Agreement, including but not limited to by reason of a Plant closing or related event, the use of the Technologies and/or Mark(s) related to the discontinued operations shall be deemed abandoned and the license for such Technologies and/or Mark(s) may be terminated by the Board of Directors of STI/SPFA unless the Company holds a valid license for other Technologies and/or Mark(s) and continues to be subject to the inspection rights of STI/SPFA as set forth in this Agreement.

 

(b)        In the event of termination of this Agreement, all rights of the Company as set forth above shall be terminated effective as of the date of termination.

 

(c)        Should the Company desire to terminate its participation in one or more of the Technologies recorded in Schedule B, without terminating its Fabricator Membership in STI/SPFA, the Company shall, with respect to STI/SPFA Technology(ies) it wishes to terminate,

 

  1. (i.) Notify STI/SPFA in writing that it wishes to cancel its license to fabricate the Technologies; and

 

    (ii)        return to STI/SPFA all confidential manufacturing materials including:

 

  1. Technology specification and confidential manufac-turing addenda;

 

b)       STI/SPFA Technology labels including adhesive labels and all label kit components including numbered brass or paper labels or combination UL/STI/SPFA labels or combination SwRI/STI/SPFA labels;

 

c)        complete a label audit for all assigned label numbers and register all unregistered tanks;

 

d)       remove all STI/SPFA identifying labels from all tanks remaining on the premises; and

 

e)        pay all fees relative to the Technology(ies).

 

With respect only to those Technologies in which the Company is terminating its participation, all provisions in Article 8 shall apply.

 

8.         Effect of Termination.

 

(a)        In the event this Agreement is terminated for any reason, the Company expressly authorizes the termination of the Company’s access to and use of the Listings for the Technologies recorded in Schedule B. The Company shall immediately forfeit the right to access and use the Listings for the Technologies recorded in Schedule B, and shall immediately forfeit any and all rights, privileges and authorizations of such designation.

 

(b)        The parties agree that in the event this Agreement is terminated for any reason, the Company shall not (i) at any time for a period of three (3) years after the date of termination of this Agreement, directly or indirectly, make use of the Technologies for manufacturing or selling, from the Plants or from or to any location in the Restricted Territory, any Look Alike or other tank design which uses the STI/SPFA Technologies as described in Schedule A, or (ii) at any time after termination divulge, furnish, or cause to be divulged or furnished, or make accessible to any person, corporation or other entity, the Technologies or any confidential knowledge or information relating to the Technologies, which the Company or its directors, officers, employees or agents and its or their successors or assigns may have obtained in connection with this Agreement. The foregoing restriction shall not limit or affect any other right or remedies available to STI/SPFA by reason of any patents it may have for the Technologies. Upon termination of this Agreement, the Company and any director, officer, employee, agent of the Company or their successors or assigns shall deliver promptly to STI/SPFA all materials of any kind relating to the Technologies.

 

(c)        In the event this Agreement is terminated for any reason, the Company or any subsidiary or affiliate, shall not at any time for a period of one (1) year after the date of termination of this Agreement, for itself or any person, corporation or other entity, seek use of the Marks from Underwriters Laboratories, Underwriters Laboratories of Canada, or Southwest Research Institute  to access and use  any other STI/SPFA’s UL,  ULC, and/or SwRI Listing(s), or similar authorization from any other organization to use any STI/SPFA Technologies described in Schedule A. For purposes of this Section 8, the term ‘affiliate’ shall mean:

 

(i) Any shareholder, partner, member or equity owner of the Company that holds in excess 50 percent of the Company’s shares, assets or ownership interests;

  1. any officer, director, manager, executive or employee of the Company;
     
  2. any person or group of persons who, directly or indirectly, controls, is controlled by, or is under common control (by reason of owning in excess of 50 percent (50%) of the Company’s shares,
    assets or ownership interests), with the Company or any
    person or entity referred to in clause (i) or (ii) above; and

  3. any entity which, directly or indirectly, is controlled (by reason of holding in excess of 50 percent (50%) of the Company’s shares, assets or ownership interests), by one or more of the individuals referred to in clauses (i) or (ii) above.

 

(d)        The parties acknowledge and agree that if a court of competent jurisdiction should declare the covenants under this Section 8 unenforceable because of any unreasonable restriction, such court shall have the express authority to reform these covenants to provide for reasonable restrictions and/or grant STI/SPFA or the Company such other relief at law or in equity reasonably necessary to protect the interests of STI/SPFA and the Company as the case may be.

 

e)         The parties agree that upon termination of this Agreement for any reason, the Company shall promptly and completely cease the use of the Mark(s) and any and all other Marks confusingly similar thereto and shall, at its own expense, return to STI/SPFA or to the source from which such were purchased, any unused labels or materials used to identify tanks manufactured in accordance with any applicable STI/SPFA Technology standard.

 

(f)        In the event of a violation by the Company of the covenants under this Section 8, it is mutually agreed that the term of the covenant shall be automatically extended against the Company for a period of two (2) years from the date on which the Company permanently ceases such violation or for a period of two (2) years from the date of the entry by a court of competent jurisdiction of a final order or a judgment enforcing the covenant, whichever period is earlier. The extension of the term of the covenant provided in this Section 8(f) shall be in addition to, and not in lieu of, the remedies provided in Section 8(g) below.

 

(g)        The Company specifically acknowledges that a breach of the covenants under this Section 8 would cause STI/SPFA to suffer immediate and irreparable harm, which could not be remedied by the payment of money. In the event of a breach or threatened breach by the Company of the provisions of this covenant, STI/SPFA shall be entitled to injunctive relief to prevent or end such breach, without the requirement to post bond. Nothing herein shall be construed as prohibiting STI/SPFA from pursuing any other remedies available to it for such breach or such threatened breach, including the recovery of damages.

 

(h)        Upon termination or expiration of this Agreement, all obligations of STI/SPFA to the Company shall immediately terminate except those obligations of STI/SPFA or the Company which are intended to survive the termination or expiration of this Agreement, including without limitation, Sections 1(e), 2, 3, 4, 8, 9, 10, 11, 12 and 18, shall survive and continue in full force and effect.

 

9.         Notice of Improvements.  The Company agrees and covenants that it will disclose to STI/SPFA each improvement, modification or enhancement of the Technologies developed by the Company. STI/SPFA shall not be liable, however, for any loss, claim or cause of action or expense arising out of such improvement, modification or enhancement.

10.       Disclaimer of Warranties. STI/SPFA makes no representation or warranty, express or implied, including but not limited to, any express or implied or warranty of merchantability or fitness for a particular purpose, or against infringement.  In no event shall STI/SPFA be liable for any incidental, resulting, “benefit of the bargain” or consequential damages of any kind, or for lost profits, arising from a breach of any provision of this Agreement or any other matter arising out of this Agreement.

 

            11.       Title to Technology. Nothing herein shall be construed as a sale, assignment or grant by STI/SPFA to the Company of any right, title or interest in or to the Mark(s), Technologies and/or patents owned by STI/SPFA, other than the non-exclusive right to access and use STI/SPFA’s UL, ULC, and/or SwRI Listing(s) and to utilize or employ the Mark(s) and Technologies for the programs recorded on Schedule B on the terms and conditions set forth in this Agreement. STI/SPFA shall at all times continue to hold the title to the Technologies.

 

12.       Protection of Rights. STI/SPFA may take such legal action and commence such proceedings in the name of the Company or of STI/SPFA, which are reasonably necessary or advisable in order to protect the rights of STI/SPFA in the Mark(s) and the Technologies. The Board of Directors of STI/SPFA shall notify the Company of any litigation filed involving the Company, and shall consult with the Company prior to commencing any legal action on behalf of the Company. The Company agrees to execute such documents as from time to time are necessary to enable STI/SPFA to take such action or commence such proceedings, but nothing shall obligate STI/SPFA at any time to take such action or commence such proceedings. STI/SPFA shall be responsible for all costs and expenses in connection with such legal action or proceedings except as otherwise provided for by law or herein. In addition to the Company’s obligation to execute such documents as from time to time are necessary to enable STI/SPFA to take such action or commence such proceedings, upon request by STI/SPFA and with respect to a third party claim or potential third party claim by or against STI/SPFA and/or the Company, the Company agrees to fully cooperate with STI/SPFA with respect to any such claim, including, without limitation:

 

(a)        providing STI/SPFA access to documents or other information relevant to any such claim and in the custody or control of the Company;

 

(b)        upon reasonable request of STI/SPFA, making any of the Company’s current owners, manager, employees, agents and representatives promptly available to STI/SPFA and its counsel to answer questions, provide information, attend depositions and/or give testimony, both in and outside of the State of Illinois;

 

(c)        using reasonable efforts to make available individuals who cease to be an employee, owner, manager, agent or representative of the Company during the term of this Agreement so that said individual continues to be available to STI/SPFA to answer questions, provide information and/or give testimony;

 

(d)        sharing certain privileged communications and work-product, but only in a manner which seeks to avoid waiving any applicable privileges; and

 

(e)        cooperating with, and making information and persons available to, consultants and counsel of STI/SPFA, to the same extent required by Company to STI/SPFA under this Agreement.

 

13.       Effect of Agreement. This Agreement shall be binding upon the parties hereto and upon their successors and assigns.

 

14.       Entire Agreement.  This Agreement, and the other documents referenced herein, constitute the entire understanding of the parties hereto with respect to the subject matter hereof, and (except as otherwise provided for herein) no amendment, modification or alteration of the terms hereof shall be binding unless the same be in writing, dated subsequent to the date hereof and duly approved and executed by each of the parties hereto. Notwithstanding the foregoing or any other provisions to the contrary, but subject to the remaining terms of this Section 14, this Agreement may be amended in any respect by STI/SPFA at any time by giving the Company thirty (30) days written notice accompanied by a description in writing, of the amendment. If the amendment is not acceptable to the Company, the Company may object to the amendment, in writing, within thirty (30) days of receiving such notice. If STI/SPFA does not receive an objection within such thirty (30)-day notice period, the Company shall be deemed to have accepted the amendment as of its effective date (which shall be no earlier than the expiration of the thirty (30)-day notice period). Furthermore, this Agreement, as amended, supersedes all prior agreements, whether oral or in writing, among the parties hereto with respect to the subject matter hereof, including, without limitation, Section 4 hereof.

15.       Headings. The headings of this Agreement are inserted for convenience and identification only, and are in no way intended to describe, interpret, define or limit the scope, extent or intent hereof.

            16.       Assignment. The Company shall not transfer, sell, assign, encumber or sublet this Agreement or any rights hereunder without the express, written consent of the Board of Directors of STI/SPFA. A change in control of the Company shall constitute an assignment of this Agreement for purposes of this Section 16. For purposes of this Section 16, a “change in control” shall be said to have occurred if the Company sells assets, or is party to a merger, consolidation, stock exchange or extraordinary transaction involving assets with a value in excess of 50 percent (50%) of the Company’s total assets, or stock representing in excess of 50 percent (50%) of the Company’s outstanding issued capital stock.

 

17.       Severability. In the event that any provision of this Agreement is held to be invalid or unenforceable, the other provisions hereof shall remain in full force and effect.

 

18.       Governing Law. This Agreement shall be governed and interpreted by the laws of the State of Illinois, United States of America (USA). The Company agrees that all suits, actions or other proceedings in any way, manner or respect, arising out of or from or related to this Agreement shall be subject to litigation in courts having situs within Lake County, Illinois, USA, and, in the case of a United States federal court, in the Northern District of Illinois, Eastern Division. The Company hereby consents and submits to the jurisdiction of such state or federal courts located within said counties and state and hereby waives any right it may have to transfer or change the venue of any suit, action or other proceedings brought against the Company by STI/SPFA in accordance with this Section 18, or to claim that any such proceeding has been brought in an inconvenient form.

 

19.       Authority. By executing this Agreement, the signatory attests that he/she has the authority to bind this Company to this Agreement.