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.


 


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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 transfer of substantially all
of the business of the licensed party (by merger, sale of assets or otherwise),
the licenses granted by this Agreement may be transferred without the licensor’s
consent to the transferee entity for continued use of any product or service
which the transferor licensee had under development or production as of the
date of the change of control.


 


2.6       For purposes of
this Article “have made” includes manufacture of the products or their
components by third persons not party to this Agreement.


 


2.7       Notwithstanding
the provisions in Sections 2.2 and 2.5 hereof limiting sublicense grants by
ADLT, FBST hereby consents to ADLT granting non-exclusive sublicense rights to Rohm
and Haas Company (without right to grant further sub-sublicenses) to use that
portion of the Licensed Rights which had been owned by Rohm and Haas prior to January 31,
2000, so long as such sublicense use rights are limited and restricted to
exclude all Fiberoptic Field of Use.


 


ARTICLE 3           - TERM


 


3.1       The initial
term of this Agreement shall begin on the Commencement Date and continue for
five (5) years from the Commencement Date.


 


3.2       The term shall
automatically renew for an additional five (5) years unless any party
shall provide at least sixty (60) days prior written notice of termination
prior to the last day of the initial term.


 


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ARTICLE 4           TERMINATION


 


4.1       Subject to
provisions of Section 4.3, this Agreement may be prospectively terminated
with respect to the grant of a license to use any additional Intellectual
Property Rights by any party upon written notice to the other party upon 180
days’ prior written notice, or immediately upon any termination of a
Development Agreement.


 


4.2       This License
Agreement may be terminated for cause by either Party upon written notice to
the other Party, where the other Party has been found by a court of competent
jurisdiction in the United States to be in violation of law with respect to
this License Agreement including violation of state or federal antitrust laws,
or otherwise has materially breached or defaulted this License Agreement and
has failed to cure such breach or default within sixty (60) days of receiving
notice setting out the nature and extent of such breach or default in
reasonable detail.


 


4.3       The provisions
of Section 2.3 hereof shall remain in effect after any termination of this
Agreement


 


ARTICLE 5           - INFRINGEMENT


 


5.1       No licensing
party makes any warranty with respect to non-infringement of the rights of
third parties by the exercise of the Licensed Rights, and the licensed party
shall bear the defense of and satisfy all liability resulting from any such
charge of infringement. The licensing party may, at its sole option and
expense, join in the defense.  The
licensing party agrees to provide technical assistance to the licensed party at
the request of and at the expense of the licensed party.


 


5.2       Each party who
learns of infringement by a third party shall bring to the attention of the
other parties all instances of infringement by third parties of the Licensed
Rights.  The licensed party shall have
the option to enforce the Licensed Rights within the licensed field of use at
its own expense, in which event the licensing party may, at its sole option and
expense, join in any enforcement action and share in any recovery in a manner
equitable with the licensing party’s damages and participation therein.  Should the licensed party decline to enforce
the Licensed Rights, the licensing party may do so at its sole expense and
shall be entitled to all recovery therefrom. 
Each party agrees to provide technical assistance to the enforcing party
at the request of and at the expense of the enforcing party.


 


ARTICLE 6           - NOTICE


 


6.1       Any notice
required or authorized to be given by either party under this Agreement shall
be in writing and shall be deemed effectively made when sent by first class
mail or by facsimile transmission with telephone confirmation.  Notices shall be addressed to the other party
at the following address:


 


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Advanced Lighting Technologies, Inc.


32000 Aurora Road


Solon, Ohio 44139


Attention: 
Wayne J. Vespoli


Fax: 
440-519-0503


 


Fiberstars, Inc.


32000 Aurora Road


Solon, OH 
44139


Attention: Roger Buelow, Chief Technology
Officer


Fax: 440 519-1038


 


ARTICLE 7           - MISCELLANEOUS


 


7.1       This Agreement
shall be governed by and construed in accordance with the laws of the State of
Ohio.


 


7.2       No modification
of this Agreement or waiver of any of its terms or conditions will be of any
force or effect unless made in writing and signed by the party claiming to be
bound.


 


7.3       If a court of
competent jurisdiction determines that one or more paragraphs of this Agreement
are invalid or unenforceable, such decision shall not affect the remainder of
the Agreement.


 


7.4       None of the
parties shall be deemed to have waived any of its rights under this Agreement
by failure to take any action to enforce any of its rights at any particular
time.


 


7.5       None of the
parties or any of its affiliates or licensees shall make any representations,
extend any warranties of any kind, or assume any responsibility or obligations,
or confer any right by implication, estoppel or otherwise, binding upon any of
the other parties hereto, other than the licenses and rights herein expressly
granted.


 


7.6       The parties
agree to use their diligent efforts in order to reach an amicable agreement
with respect to all disagreements which might arise from the application of
this Agreement.  All disputes arising
under this Agreement which are not settled amicably as specified above shall be
finally settled in accordance with the following:


 


(1)           The parties
will attempt in good faith to resolve any controversy or claim arising out of
or relating to this Agreement promptly by negotiations between senior
executives of the parties who have authority to settle the controversy.


 


(2)           The disputing
party shall give the other party written notice of the dispute.  Within twenty (20) days after receipt of said
notice, the receiving party shall submit to the other a written response.  The notice and response shall


 


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include (a) a statement
of each party’s position, and (b) the name and title of the executive who
will represent the party.  The executives
shall meet at a mutually acceptable time and place within one (1) month of
the date of the disputing party’s notice and thereafter as often as they
reasonably deem necessary to exchange relevant information and to attempt to
resolve the dispute.


 


(3)           If the matter
has not been resolved within two (2) months of the disputing party’s
notice, or if the party receiving said notice will not meet within one (1) month,
either party may initiate mediation of the controversy or claim in accordance
with the Center for Public Resources Model Procedure for Mediation of Business
Disputes.


 


(4)           If the matter
has not been resolved pursuant to the aforesaid mediation procedure within two (2) months
of the initiation of such procedure, or if either party will not participate in
mediation, the controversy shall be settled by arbitration in accordance with
the Center for Public Resources Rules for Non-Administered Arbitration of
Business Disputes by a sole arbitrator. 
The arbitrator shall be selected from the CPR Panels of Distinguished
Neutrals.  The arbitration shall be
governed by the United States Arbitration Act, Title 9 U.S.C. and 35 U.S.C.
§294, and judgment upon the award rendered by the arbitrator may be entered by
any court having jurisdiction thereof. 
The place of arbitration shall be a neutral venue where neither party
has its principal place of business, or such other location as mutually agreed.  The arbitrator shall be empowered to award
damages.  In the case of fraud, the
arbitrator in addition to damages, may award attorney fees (including in-house
and outside attorney fees) but not punitive damages.


 


(5)           All deadlines
specified in this Article 7 may be extended by mutual agreement.


 


(6)           The procedures
specified in this Article 7 shall be the sole and exclusive procedures for
the resolution of disputes between the parties arising out of or relating to
this Agreement; provided, however, that a party may seek a preliminary
injunction or other preliminary judicial relief if in its judgment such action
is necessary to avoid irreparable damages. 
Despite such action, the parties will continue to participate in good
faith in the procedures specified in this Article 7.  All applicable statutes of limitation shall
be tolled while the procedures specified in the Article 8 are
pending.  The parties will take such
action, if any, required to effectuate such tolling.


 


7.7   Neither this
Agreement nor any interest herein is assignable, transferable or delegatable by
one party without prior written consent of the other parties, other then as set
forth in Article 2 hereof.


 


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7.8   To the extent
not in conflict with this License Agreement, the terms of this Agreement shall
be governed by the Master Services Agreement, including such provisions
covering confidentiality, headings, approval and other provisions.


 


IN WITNESS
WHEREOF, the parties
have caused this document to be executed in duplicate as of the date and year
first above written.


 


	
   

  	
   

  	
  ADVANCED LIGHTING

  
	
   

  	
   

  	
  TECHNOLOGIES,
  INC.

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
  By:

  	
  /s/ Wayne Vespoli

  	
   

  
	
   

  	
   

  	
  Name:

  	
  Wayne Vespoli

  	
   

  
	
   

  	
   

  	
  Its:

  	
  EVP

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
  FIBERSTARS, INC.

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
  By:

  	
  /s/ John M. Davenport

  	
   

  
	
   

  	
   

  	
  Name:

  	
  John M. Davenport

  	
   

  
	
   

  	
   

  	
  Its:

  	
  CEO

  	
   

  
							



 


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