non-exclusive license agreement
This License Agreement (hereinafter, “Agreement”) is a legal contract between you (either an individual or a single business entity, hereinafter referred to as “Licensee”) and makesy, a California corporation dba makesy (hereinafter, “Licensor”) for the Lumetique Wooden Wick Technology.
BY SIGNING BELOW, OR BY PURCHASING OR USING THE LUMETIQUE WOODEN WICK TECHNOLOGY, YOU AGREE TO BE BOUND BY THE TERMS OF THIS AGREEMENT. IF YOU DO NOT AGREE TO THE TERMS OF THIS AGREEMENT, DO NOT ACCEPT, PURCHASE, OR USE THE LUMETIQUE WOODEN WICK TECHNOLOGY.
- “Lumetique Wooden Wick Technology” means all patents, patent applications, know-how and trade secrets relating to wooden wicks owned or controlled by Lumetique, Inc. including, without limitation, such technology covered by claims included in U.S. Design Patents Nos. US D644,359, US D643,554, US D644,360, US D678,558, US D705,459, and US D740,761, U.S. Patents Nos. US 8,961,171, US 8,348,662, US 8,961,171, US 9,039,409, US 9,261,275, and US 9,410,696, U.S. Patent Applications Nos. 12/848,557 and 15/188,092, EU Registered Community Designs Nos. 003043512-0001, 003043512-0002, 003043512-0003, 003043512-0004, 003043512-0005, 003043512-0006, 003043512-0007, 003043512-0008, 003043512-0009, 003043512-0010, 003043512-0011, 003043512-0012, 003043512-0013, 003043512-0014, 003043512-0015, 003043512-0016, and 003043512-0017, European Patent No. EP 1 794 267 validated in CH, FR and GB, DE Patent No. 602004046079.6, IT Patent No. 502015000005460 and Delcotto IP LLC 9,120,995, 9,388,365, D663450, D669615, D708777 and D715989, and any domestic and foreign counterparts, parents, substitutions, extensions, reissues, reexaminations, renewals, divisions, continuations, and continuations-in-part thereof.
- license terms
- Grant of License. Provided that Licensee is in material compliance with the terms and conditions of this Agreement, Licensor hereby grants to Licensee, pursuant to the terms and conditions of this Agreement, a nonexclusive, nontransferable license (hereinafter “License”) to use the Lumetique Wooden Wick Technology incorporated in the products Licensee purchases from Licensor.
- Authorized Use. Licensee shall use the Lumetique Wooden Wick Technology only for and on behalf of Licensee’s own business.
- Marking by Licensee. Licensee shall consistently and always virtually mark product packaging (whether a candle label, candle box, hang-tag or other form of packaging) for a Licensed Product with the following notification of intellectual property:
Licensee shall maintain records sufficient to show its virtual marking of products that use or embody the Licensed Technology and shall provide copies of those records to Licensor within 10 days of a request to do so. Licensee will cooperate with any reasonable request by Licensor related to the method or type of patent marking on any of Licensee’s products and the patent numbers marked by Licensee.
- Company and Brand Name Disclosure. Within 30 days of initial production, Licensee shall disclose to Licensor, in writing, its company name and the brand name (if different than your company name) for each candle line manufactured by Licensee that utilizes Lumetique’s Wooden Wick Technology.
- Exclusivity. So long as Licensee is using the Lumetique Wooden Wick Technology, Licensee shall purchase wooden wicks exclusively from Licensor. In addition, as of the effective date of this Agreement and so long as Licensee is using the Lumetique Wooden Wick Technology, Licensee shall only distribute, market and sell wooden wicks purchased from Licensor.
- Modifications; Reverse Engineering. Licensee agrees that only Licensor shall have the right to alter, maintain, enhance or otherwise modify the Lumetique Wooden Wick Technology. Licensee shall not disassemble or reverse engineer the Lumetique Wooden Wick Technology or attempt to do the same. Licensee shall not permit or assist any third party to disassemble or reverse engineer the Lumetique Wooden Wick Technology.
- Reservation of Rights. Licensor hereby reserves any and all rights not expressly and explicitly granted in this Agreement, including, but not limited to, Licensor’s right to license the Lumetique Wooden Wick Technology to any third party.
- Term of License. Unless otherwise terminated as set forth herein, the term of the License granted hereunder shall extend until the earlier of (a) completion or termination of all Licensee uses of the Lumetique Wooden Wick Technology or (b) one year following the effective date of this Agreement. Licensee may terminate this License at any time by discontinuing its use of the Lumetique Wooden Wick Technology.
- Representations by Licensee. By accepting this Agreement and/or by using the Lumetique Wooden Wick Technology, Licensee hereby represents and warrants that (i) all information provided by Licensee to Licensor during the registration process for purchase of the Lumetique Wooden Wick Technology is true and accurate in all material respects, (ii) Licensee has been duly authorized to enter into this Agreement for and on behalf of any person, company, or other entity specified during the initial registration process to purchase the Lumetique Wooden Wick Technology, and (iii) Licensee acknowledges the sufficiency of the Lumetique Wooden Wick Technology for the purposes of this Agreement and agrees not to challenge, or assist any third party in challenging, the validity, patentability, or enforceability of the Lumetique Wooden Wick Technology so long as the Lumetique Wooden Wick Technology remains in force and effect, contest the ownership of the Lumetique Wooden Wick Technology or challenge the validity of or use confusingly similar marks to Lumetique, Inc.’s trademarks “LUMETIQUE,”“CRACKLE,” “SOOTHING SOUND,” “CHANDEL,” “LUMINESSE” or “ECOWOOD WICK.”
- Reservation of Enforcement Rights. The Grant of License under Section 2.a of this Agreement is limited to the use of products purchased by Licensee from Licensor and thus, for example, does not apply to any wicks purchased from sources other than Licensor. Licensor therefore reserves the right to enforce its intellectual property rights in Lumetique Wooden Wick Technology against Licensee or any third party for sale, offer for sale, purchase, manufacture, importation, and/or use of any product not subject to the Grant of License, including, for example, any unauthorized sales made prior to this Agreement.
- Right to Disclose. Licensee agrees that Licensor may disclose in writing, or through use of Licensee’s logo(s), the identity of Licensee.
- Audit. Upon at least ten (10) Business Days prior written notice from Licensor, Licensor shall have the right, during normal business hours, to bring in any consultants and personnel it deems appropriate, including certified public accountants, to audit Licensee's books and records to ensure integrity and compliance with this Agreement. Licensee shall provide reasonable cooperation with such audit.
- Material Terms and Conditions. Licensee specifically agrees that each of the terms and conditions of this Section 2 are material and that failure of Licensee to comply with these terms and conditions shall constitute sufficient cause for Licensor to terminate this Agreement. The presence of this Subsection 2.m shall not be relevant in determining the materiality of any other provision or breach of this Agreement by either Party.
- intellectual property rights
- Title. Licensee and Licensor agree that Licensor owns all proprietary rights, including patent, copyright, trade secret, trademark and other proprietary rights, in and to the Lumetique Wooden Wick Technology and any corrections, enhancements, or other modifications, including custom modifications, to the Lumetique Wooden Wick Technology, whether made by Licensor or any third party. No title to the Lumetique Wooden Wick Technology is transferred hereby and Licensee’s rights hereunder are strictly limited as set forth herein.
- Transfers. Under no circumstances shall Licensee sell, license, distribute, or otherwise transfer to a third party the Lumetique Wooden Wick Technology or any copy thereof, in whole or in part, without Licensor’s prior written consent.
- warranty; disclaimer of warranties
- Disclaimer. EXCEPT AS EXPRESSLY SET FORTH HEREIN, THERE ARE NO OTHER WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, WARRANTIES AS TO TITLE OR INFRINGEMENT OF THIRD-PARTY RIGHTS, MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. THE LUMETIQUE WOODEN WICK TECHNOLOGY IS PROVIDED “AS IS.” LICENSOR AND ITS SUPPLIERS DO NOT AND CANNOT WARRANT THE PERFORMANCE OR RESULTS YOU MAY OBTAIN BY USING THE LUMETIQUE WOODEN WICK TECHNOLOGY. LICENSOR STRONGLY RECOMMENDS TESTING SAMPLES FIRST TO DETERMINE WICK SIZING AND TYPE.
Some jurisdictions do not allow the exclusion of implied warranties, so the above exclusion may not apply to Licensee. This warranty gives Licensee specific legal rights, and Licensee may also have other legal rights, which vary from jurisdiction to jurisdiction.
- limitation of liability
IN NO EVENT WILL LICENSOR BE LIABLE TO LICENSEE OR ANY THIRD PARTY FOR INDIRECT, SPECIAL, INCIDENTAL, CONSEQUENTIAL, EXEMPLARY OR OTHER SIMILAR DAMAGES, INCLUDING LOST PROFITS, ARISING FROM THE USE OF OR INABILITY TO USE THE LUMETIQUE WOODEN WICK TECHNOLOGY OR FROM ANY BREACH OF WARRANTY, EVEN IF LICENSOR HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
- general provisions
- Modifications. Licensor may alter or revise the terms of this Agreement by giving Licensee thirty (30) days notice of the changes to be made. If Licensee does not agree to accept the changes, Licensee’s sole remedy shall be to discontinue Licensee’s use of the Lumetique Wooden Wick Technology.
- Governing Law/Venue/Jurisdiction. This Agreement shall be governed by and construed under the laws of the State of California, without regard to choice of law provisions. The application of the United Nations Convention on Contracts for the International Sale of Goods is expressly excluded. Venue and jurisdiction shall be proper only in the state of California and each party hereby consents to such exclusive and personal jurisdiction and venue.
- Termination. Without prejudice to any other rights, Licensor may terminate this Agreement if Licensee fails to comply with the terms and conditions of this Agreement. In such event, Licensee must discontinue use of the Lumetique Wooden Wick Technology.
- Severability. Except as otherwise set forth in this Agreement, the provisions of this Agreement are severable, and if any one or more such provisions shall be determined to be invalid, illegal or unenforceable, in whole or in part, the validity, legality and enforceability of any of the remaining provisions or portions thereof shall not in any way be affected thereby and shall nevertheless be binding between the parties hereto. Any such invalid, illegal or unenforceable provision or portion thereof shall be changed and interpreted so as to best accomplish the objectives of such provision or portion thereof within the limits of applicable law.
- Complete Agreement. The parties agree that this Agreement is the complete and exclusive statement of the agreement between the parties, which supersedes and merges all prior proposals, understandings and all other agreements, oral or written, between the parties relating to the subject matter.
- Waiver. Any waiver, either expressed or implied, by either party of any default by the other in the observance and performance of any of the conditions and/or covenants of duties set forth herein shall not constitute or be construed as a waiver of any subsequent or other default.
- Read and Understood. Licensee hereby acknowledges that it has read and understands this Agreement and agrees to be bound by its terms.
- Headings. The headings to the Sections and Subsections of this Agreement are included merely for convenience of reference and shall not affect the meaning of the language included therein.