Exhibit 10.7
CROSS LICENSE
AGREEMENT
This Cross License Agreement, made
as of September 19, 2005 (“License Agreement”), is
by and between ADVANCED LIGHTING TECHNOLOGIES, INC ., an
Ohio Corporation and its Affiliates as defined herein
(“ADLT”), and FIBERSTARS, INC. , a
California Corporation and its Affiliates as defined herein
(“FBST”).
W I T N E S S E T
H
WHEREAS , ADLT and FBST have entered into a Master
Services Agreement of even date herewith (the “ Master
Services Agreement ”), which contemplates that the
Parties will enter into several ancillary agreements, including
this License Agreement and certain Development Agreements pursuant
to which the Parties will provide research and development Services
and Custom Deliverables for each other;;
WHEREAS , the Parties and their affiliates have
previously been parties to a Cross License Agreement among ADLT,
Unison Fiber Optics Lighting systems, LLC and FBST, dated
January 31, 2000, and ADLT and Fiberstars wish to restate and
re-define certain of the terms thereof (“ Prior License
Agreement ”);
WHEREAS , ADLT and FBST wish to extend the licenses
granted to each other under the Prior License Agreement and to
grant royalty free licenses for intellectual property which may be
developed by them under the development agreements;
WHEREAS , ADLT and Fiberstars are or will be the owners
or licensees of patents, patent applications and design rights, and
further each party has by long experience and through diligent
efforts accumulated and owns or hereafter shall become the owner of
technology and product development information, know how,
inventions, processes and trade secrets;
NOW, THEREFORE
, for and in consideration of the
faithful performance by each party hereto of the obligations and
covenants herein contained on their part to be performed, and for
other good and valuable consideration, the receipt of which is
hereby acknowledged, the parties hereto agree as
follows:
ARTICLE 1
- DEFINITIONS
As used in this
Agreement:
1.1
“Affiliates” shall mean any business entity in which ADLT or
FBST directly or indirectly owns or controls at least fifty percent
(50%) of the equity, profit interests or voting power.
1.2
“ Civilian
Transportation ” shall mean all passenger automobiles,
commercial (non-military) aircrafts, trucks, motorcycles, and
off-road vehicles, but excludes ships, RVs (recreation vehicles),
limousines and mining equipment and other industrial or
military vehicles or
equipment.
1.3
“ Commencement Date
” is defined in Section 3.11 of the Master Services
Agreement.
1.4
“ Developed IP ”
shall mean Developed IP as defined in either Section 2.9 of
the Fiberstars Development Agreement or Section 2.10 of the
ADLT Development Agreement or both, as the context respectively
implies
1.5
“Fiberoptic Field of
Use” means lighting
applications or systems (and components of such systems) which
include both (A) a remote light source, and (B) either
(i) fiberoptics, or (ii) light pipes, or (iii) other
light guides, for conveying light from the remote source, but
excluding applications in civilian transportation, television and
projection.
1.6
“ Fiberstars Development
Agreement ” shall mean that certain Fiberstars
Development Agreement entered between the Parties on even date
herewith and attached to the Master Services Agreement as
Exhibit D .
1.7
“ Intellectual Property
Right ( s )” is defined in Section 3.25 of
the Master Services Agreement.
1.8
“ Licensed Rights
” shall mean (a) Patent Rights and (b) Intellectual
Property Rights to Developed IP.
1.9
Patent Rights
- shall mean all utility and/or
design patent applications and/or patents owned or controlled by a
party to this Agreement in the United Sates and throughout the
world at any time during the term of this Agreement.
1.10
“ Services ” as
used herein means Services as defined in either Section 2.19
of the Fiberstars Development Agreement or Section 2.18 of the
ADLT Development Agreement or both, as the context respectively
implies.
ARTICLE 2
-GRANTS OF
CROSS-LICENSES
2.1
ADLT grants to FBST a royalty free,
non-exclusive license, with the right to sub-license limited solely
to Affiliates, to make, have made, use, import, offer to sell and
sell products within the scope of the Licensed Rights in the United
States and all foreign countries, said license being limited to the
Fiberoptic Field of Use but having no restrictions as to the price,
quantity or class of customers to whom such products are offered
for sale or sold.
2.2
FBST hereby grants to ADLT a royalty
free, non-exclusive license, with the right to sub-license limited
solely to Affiliates, to make, have made, use, import, offer to
sell and sell products within the scope of the Licensed Rights in
the United States and all foreign countries, said license excluding
Fiberoptic Field Of Use but having no restrictions as to the price,
quantity or class of customers to whom such products are offered
for sale or sold.
2
2.3
To the extent that the licenses
granted under §§2.1 and 2.2 hereof pertain to Patent
Rights, such licenses shall extend to and expire upon the
termination of the individual patent within the Licensed Rights
notwithstanding the expiration of this Agreement or the termination
of this Agreement under Article 4 hereof. For avoidance
of doubt, any Licensed Rights existing as of any termination of
this Agreement shall continue to be licensed hereunder for the
licensed party to continue to use for any old or new product within
the licensed party’s designated field of use.
2.4
The parties agree to cooperate fully
with respect to the registration of and extension of the Licensed
Rights in countries foreign to the United States. No party
shall be obligated to extend the Licensed Rights to any foreign
country, but the licensed party may extend them and maintain them
at its sole option and expense.
2.5
The licenses granted under
§§ 2.1 and 2.2 hereof are personal and are not
assignable or otherwise transferable to any third party without the
prior consent of the party granting the license, consent not being
unreasonably withheld; excepting however, in the event of a change
of control by
