Exhibit
10.33
CONFIDENTIAL MATERIAL APPEARING
IN THIS DOCUMENT WAS OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION IN ACCORDANCE WITH RULE 24b-2,
PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED,
OMITTED INFORMATION WAS REPLACED WITH ASTERISKS.
SETTLEMENT AGREEMENT AND
RELEASE
This Settlement Agreement and
Release (the “Agreement”) is made and entered into
effective as of December 30, 2005, by and between Horizon
Navigation, Inc., a California corporation (“Horizon”),
and Cobra Electronics Corporation, a Delaware corporation
(“Cobra”), with reference to the following
facts:
A. Horizon and Cobra have entered
into (i) the Amended and Restated Loan Agreement by and
between Horizon and Cobra dated February 6, 2003 (the
“Loan Agreement”); (ii) Stockholders’
Agreement by and among Horizon, Cobra and certain shareholders of
Horizon dated January 8, 2003 (the “Stockholders’
Agreement”); (iii) Development and License Agreement by
and between Horizon and Cobra dated January 8, 2003, as
amended and supplemented (the “Development Agreement”);
(iv) Pledge and Security Agreement by and between Horizon and
Cobra dated February 6, 2003 (the “Security
Agreement”); and (v) Escrow Agreement by and among
Horizon, Cobra and DSI Escrow Services, Inc. (“DSI”),
as escrow agent dated August 31, 2004 (the “Escrow
Agreement”) (the Loan Agreement, Stockholders’
Agreement, Development Agreement, Security Agreement, and Escrow
Agreement are collectively referred to as the “Horizon-Cobra
Agreements”).
B. Pursuant to the Loan Agreement,
Cobra received both callable and non-callable warrants to purchase
Common Stock of Horizon dated as of February 6,
2003, February 19, 2003, April 3,
2003, July 29, 2003, June 7, 2004 and
April 1, 2005, respectively (collectively, the
“Warrants”).
C. Horizon and Cobra have agreed to
the terms and conditions contained herein providing for
(i) the repayment by Horizon to Cobra of all amounts of
principal and interest outstanding under the Loan Agreement, and
(ii) settlement of outstanding issues between the parties as
set forth herein, with all such arrangements to be effective as of
the Settlement Date (as defined in Section 4).
NOW, THEREFORE, in consideration of
the promises, covenants and undertakings contained herein, and
other good and valuable consideration, the receipt and sufficiency
of which is hereby acknowledged, the parties agree as
follows:
1. Payment .
1.1 In full satisfaction of any and
all amounts owed to Cobra under the Loan Agreement, Horizon shall
pay Cobra on the Settlement Date, $2,674,335 (the “Loan
Repayment Amount”) by wire transfer of immediately available
funds to the following account: ***.
1.2 In consideration of the
termination of certain obligations of Horizon under the Development
Agreement as set forth herein, including, without limitation, the
termination of Cobra’s exclusivity rights and rights of first
refusal under the Development Agreement and the agreement of Cobra
not to use Horizon Technology (as defined in the Development
Agreement) in future generations of mobile navigation products, on
the Settlement Date Horizon shall reimburse Cobra for $*** of fees
paid by Cobra to Horizon under the Development Agreement (the
“Fee Reimbursement Amount”) by wire transfer of
immediately available funds to the following account: *** (the Fee
Reimbursement Amount and Loan Repayment Amount are collectively
referred to as the “Payment Amount”).
2. Development Agreement and
License Grant .
2.1 Termination of Development
Agreement . Except as provided in this Agreement, the
Development Agreement shall terminate in its entirety, no terms and
conditions shall survive such termination and Horizon is released
from all obligations thereunder.
2.2 License Grant Regarding GPSM
3000 and GPSM 2750 Products . Effective as of the Settlement
Date, the license granted by Horizon to Cobra under
Section 3.1 of the Development Agreement shall terminate and
Horizon hereby grants to Cobra a non-exclusive***perpetual license
limited to the GPSM 3000 and the GPSM 2750 Products (as defined in
Exhibit A ) in all channels of distribution throughout ***.
The foregoing license shall be ***. The foregoing license shall
include a license under all Horizon Technology (as defined in the
Development Agreement) for the foregoing purposes only, including
without limitation: (i) the right to make, have made, use,
offer to sell, sell, and import anywhere in the *** the GPSM 3000
and GPSM 2750 Products containing inventions covered by one or more
claims of the Patents; (ii) the right to copy, display,
develop, modify and enhance the Horizon Technology (but excluding
the right to create Derivative Works of software included in the
Horizon Technology), in each case for the purposes of incorporating
the same into the GPSM 3000 and GPSM 2750 Products and marketing
and selling the GPSM 3000 and GPSM 2750 Products throughout the
***; and (iii) the right to use and include Trade Secrets
within the GPSM 3000 and GPSM 2750 Products. Cobra shall not have
the right to sublicense any of the rights licensed hereunder,
except to an Affiliate (as defined in the Development Agreement) or
to the extent necessary for Cobra to have the GPSM 3000 and GPSM
2750 Products or component thereof manufactured for Cobra by a
third party.
2.3 Indemnification for Royalty
Payments to Third Party Technology Providers . Cobra hereby
assumes all liability with regard to the payment of required
royalty payments to the Third Party Technology Providers under the
Development Agreement for Third Party Technology (as defined in the
Development Agreement) in connection with Cobra’s license to
the GPSM 3000 and GPSM 2750 Products. Cobra shall continue to be
solely responsible for paying the Third Party Technology Providers
after the termination of the Development Agreement as described
herein and Cobra hereby agrees to indemnify and hold Horizon
harmless from any claims, damages, liabilities, costs and expenses,
including reasonable legal expenses and reasonable counsel fees,
arising as a result of Cobra’s failure to pay the required
royalty payments owed by Cobra to the Third Party Technology
Providers under the Development Agreement.
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2.4 End-User License . In
connection with the sale of GPSM 3000 and the GPSM 2750 Products
(whether before or after the Settlement Date), each end-user
customer of Cobra shall be deemed to have been granted a personal,
non-exclusive, non-transferable, royalty free license, for the life
of the applicable GPSM 3000 or GPSM 2750 Product, to use the
Horizon Technology embodied within such GPSM 3000 or GPSM 2750
Product. The expiration or termination of the Development Agreement
shall not terminate any end-user license.
2.5 No Other Restrictions on
Cobra . Nothing in this Agreement shall be construed as
preventing or limiting the right of Cobra to develop, manufacture,
distribute, sell and service GPS products other than GPSM 3000 or
GPSM 2750 Products so long as such products do not utilize or
incorporate any Horizon Technology or Horizon Materials.
2.6 Reservation of Rights .
Except as expressly provided in this Agreement, no license in the
Horizon Technology is granted (by implied license or otherwise) in
the Territory (as defined in the Development Agreement) by Horizon
to Cobra, and Horizon may, without restriction or liability to
Cobra, directly or indirectly, develop, manufacture, sell and
service products of any nature in any territory.
2.7 Support . Horizon and
Cobra agree that Horizon shall provide Cobra with error correction
and bug fix support services for the GPSM 3000 and GPSM 2750
Products through ***, as set forth in Exhibit B , attached
hereto. Horizon shall have no obligation to provide any support
hereunder due to Cobra’s modifications of the GPSM 3000 and
GPSM 2750 Products. In addition, Horizon will provide database
updates for the GPSM 3000 and GPSM 2750 Products on the following
schedule:
***.
Cobra shall pay Horizon a fee of
$*** upon delivery of each annual database update. Horizon warrants
that all support services provided under Exhibit B and the
quality control services with respect to each annual database
update will be performed in a professional and workmanlike manner
in accordance with the highest applicable professional standards.
Horizon will reperform any services that are not in conformity with
the foregoing warranty. The duration of the warranty shall be ***
from the date of delivery of the service.
2.8 Confidentiality . The
confidentiality provisions contained in Sections 8.1 through 8.6 of
the Development Agreement shall survive through ***.
2.9 Survival of Certain
Provisions . The following provisions of the Development
Agreement shall survive without any time limitation (except for the
provisions listed in clause (iv) below which shall survive for
the respective periods set forth in clause (iv)):
(i) Definitions: Section 1
(capitalized terms used in Sections 2.1 – 2.9 of this
Agreement but not defined in this Agreement shall have the meanings
given to such terms in the Development Agreement)
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(ii) Property Rights: Sections 7.1,
7.2, 7.3 (as to Assigned Work Product produced prior to the date
hereof), 7.4 and 7.5
(iii) Warranties: Sections 9.1
through 9.4
(iv) Indemnification: With respect
to the GPSM 3000 and GPSM 2750 Products (as defined in Exhibit A),
Sections 10.1 through 10.3 (***); the indemnification provisions
set forth in Section 10.1 shall survive (x) without any
time limitation with respect to clause (b) of such Section
(y) until *** with respect to clauses (a) and (c) of
such Section and clause (d) of such Section, except as it
relates to Sections 8.1 through 8.6 of the Development Agreement,
and (z) until *** with respect to clause (d) of such
Section as it relates to Sections 8.1 through 8.6 of the
Development Agreement; the indemnification provisions set forth in
Section 10.2 shall survive (x) without any time
limitation with respect to clause (b) of such Section and
clause (c) of such Section as it relates to Sections 9.2, 9.3
and 9.4 of the Development Agreement (y) until *** with
respect to clause (a) of such Section, clause (c) of such
Section as it relates to representations and warranties of Horizon
contained in the Development Agreement, other than those contained
in Sections 9.2, 9.3 and 9.4, and clause (d) of such Section,
except as it relates to Sections 8.1 through 8.6 of the Development
Agreement, and (z) until *** with respect to clause
(d) of such Section as it relates to Sections 8.1 through 8.6
of the Development Agreement; the provisions set forth in
Section 10.3 shall survive without any time
limitation.
(v) Trademarks: Sections 12.1
(limited to the use of the Horizon Trademarks by Cobra as of the
date hereof) and 12.2
(vi) Consequences of Termination:
Section 13.5(c) (except clause (ii) thereof)
(vii) The following General
Provisions:
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15.1
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Governing
Law
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15.4
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Partial
Invalidity
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15.6
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Modification
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15.8
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Waiver
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15.9
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Entire
Agreement
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15.11
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Independent
Contractors
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15.12
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Third Party
Beneficiaries
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15.13
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Notices
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15.14
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NO
CONSEQUENTIAL DAMAGES
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3. Termination of Agreements
. Effective as of the Settlement Date, Cobra and Horizon agree as
follows:
(a) The Loan Agreement shall
terminate in its entirety and no terms and conditions shall survive
such termination and Horizon is hereby released from all
obligations thereunder; provided that the third and fourth
sentences of Section 11.05 of the Loan Agreement shall survive
such termination and shall remain in full force and
effect;
(b) The Warrants (callable and
non-callable) issued to Cobra pursuant to the Loan Agreement shall
terminate in their entirety and Cobra shall have no right to
exercise the Warrants or claim any right to purchase securities
pursuant to the Warrants. Cobra shall return all executed original
Warrants to Horizon for cancellation;
(c) The Stockholders’
Agreement shall terminate in its entirety, subject to the necessary
approval by the shareholders of Horizon, and no terms and
conditions shall survive such termination and Horizon is hereby
released from all obligations thereunder;
(d) The Security Agreement shall
terminate in its entirety, notwithstanding Section 8.12
thereof, and no terms and conditions sha