As filed with the Securities and Exchange Commission on May 3, 1999
Registration No. 333-76057
- --------------------------------------------------------------------------------
- --------------------------------------------------------------------------------
SECURITIES AND EXCHANGE COMMISSION
Washington, D.C. 20549
---------------
AMENDMENT NO. 1
to
FORM S-4
REGISTRATION STATEMENT
UNDER THE SECURITIES ACT OF 1933
---------------
RUSSELL-STANLEY HOLDINGS, INC.
(Exact Name of Registrant Issuer as Specified in Its Charter--
See Inside Facing Page for Table of Additional Registrant Guarantors)
<TABLE>
<S> <C> <C>
DELAWARE 3412 22-3525626
(State or other jurisdiction of (Primary Standard Industrial (I.R.S. Employer
incorporation or organization) Classification Code Number) Identification Number)
</TABLE>
---------------
685 Route 202/206
Bridgewater, NJ 08807
(908) 203-9500
(Address, including zip code, and telephone number, including area code, of
registrant issuer's principal executive offices)
Daniel W. Miller
Russell-Stanley Holdings, Inc.
685 Route 202/206
Bridgewater, NJ 08807
(908) 203-9500
(Name, address, including zip code, and telephone number, including area code,
of agent for service)
---------------
With a copy to:
Stephan J. Feder, Esq.
Simpson Thacher & Bartlett
425 Lexington Avenue
New York, New York 10017
(212) 455-2000
Approximate date of commencement of proposed sale to the public: As soon
as practicable after this Registration Statement becomes effective.
If the securities being registered on this form are being offered in
connection with the formation of a holding company and there is compliance with
General Instruction G, check the following box. [ ]
If this form is filed to register additional securities for an offering
pursuant to Rule 462(b) under the Securities Act, check the following box and
list the Securities Act Registration number of the earlier effective
Registration Statement for the same offering. [ ]
If this form is a post-effective amendment filed pursuant to Rule 462(d)
under the Securities Act, check the following box and list the Securities
Registration Statement number of the earlier effective Registration Statement
for the same offering. [ ]
---------------
The Registrants hereby amend this Registration Statement on such date or
dates as may be necessary to delay its effective date until the Registrants
shall file a further amendment which specifically states that this Registration
Statement shall thereafter become effective in accordance with Section 8(a) of
the Securities Act of 1933, as amended, or until this Registration Statement
shall become effective on such date as the Commission, acting pursuant to said
Section 8(a), may determine.
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<PAGE>
TABLE OF ADDITIONAL REGISTRANT GUARANTORS
<TABLE>
<CAPTION>
State or Other
Jurisdiction of
Exact Name of Registrant Incorporation I.R.S. Employer Address, Including Zip Code, and Telephone
Guarantor as Specified in its or Identification Number, Including Area Code, of Registrant
Charter Organization Number Guarantor's Principal Executive Offices
- ------------------------------------- ---------------- ----------------- -------------------------------------------
<S> <C> <C> <C>
Russell-Stanley Corp. New Jersey 22-1505645 685 Route 202/206
Bridgewater, NJ 08807, (908-203-9500)
Container Management Services, Inc. South Carolina 57-0941972 685 Route 202/206
Bridgewater, NJ 08807, (908-203-9500)
New England Container Co., Inc. Rhode Island 05-0268961 685 Route 202/206
Bridgewater, NJ 08807, (908-203-9500)
Russell-Stanley, Inc. Illinois 22-2623485 685 Route 202/206
Bridgewater, NJ 08807, (908-203-9500)
RSLPCO, Inc. Delaware 22-3611710 685 Route 202/206
Bridgewater, NJ 08807, (908-203-9500)
Russell-Stanley, L.P. Texas 22-3611707 685 Route 202/206
Bridgewater, NJ 08807, (908-203-9500)
</TABLE>
<PAGE>
Explanatory Note
This Amendment No. 1 is being filed solely for the purpose of filing exhibits
which previously had been designated as to be filed by amendment. Accordingly,
Part I, Information Required in the Prospectus, has not been repeated in this
filing.
<PAGE>
PART II
INFORMATION NOT REQUIRED IN THE PROSPECTUS
Item 20. Indemnification of Directors and Officers
Section 145 of the Delaware General Corporation Law (the "DGCL") provides
that a corporation may indemnify directors and officers as well as other
employees and individuals against expenses (including attorneys' fees),
judgments, fines, and amounts paid in settlement in connection with specified
actions, suits or proceedings, whether civil, criminal, administrative, or
investigative (other than action by or in the right of the corporation a
"derivative action"), if they acted in good faith and in a manner they
reasonably believed to be in or not opposed to the best interests of the
corporation and, with respect to any criminal action or proceedings, had no
reasonable cause to believe their conduct was unlawful. A similar standard is
applicable in the case of derivative actions, except that indemnification only
extends to expenses (including attorneys' fees) incurred in connection with the
defense or settlement of such actions, and the statute requires court approval
before there can be any indemnification where the person seeking
indemnification has been found liable to the corporation. The statute provides
that it is not exclusive of other indemnification that may be granted by a
corporation's charter, by-laws, disinterested director vote, stockholder vote,
agreement or otherwise. The Registrant's by-laws provide that the Registrant
will indemnify any person to the fullest extent permitted by Delaware law who
is or was made, or threatened to be made, a party to any threatened, pending or
completed action, suit or proceeding, whether civil, criminal, administrative
or investigative, including, without limitation, an action by or in the right
of the Registrant to procure a judgment in its favor, by reason of the fact
that such person, or a person of whom such person is the legal representative,
is or was a director or officer of the Registrant, or is or was serving in any
capacity at the request of the Registrant for any other corporation,
partnership, joint venture, trust, employee benefit plan or other enterprise,
against judgments, fines, penalties, excise taxes, amounts paid in settlement
and costs, charges and expenses (including attorneys' fees and disbursements).
Persons who are not directors or officers of the Registrant may be similarly
indemnified in respect of service to the Registrant or to any of the above
other entities at the request of the Registrant to the extent the board of
directors at any time specifies that such persons are entitled to the benefits
of such indemnification. Pursuant to the by-laws, the Registrant also has the
power to purchase officers' and directors' liability insurance which insures
against liabilities that officers and directors of the Registrant, in such
capacities, may incur.
Such 102(b)(7) of the DGCL permits a corporation to provide in its
certificate of incorporation that a director of the corporation shall not be
personally liable to the corporation or its stockholders for monetary damages
for breach of fiduciary duties as a director, except for liability (i) for any
transaction from which the director derives an improper personal benefit, (ii)
for acts or omissions not in good faith or that involve intentional misconduct
or a knowing violation of law, (iii) for improper payment of dividends or
redemptions of shares, or (iv) for any breach of a director's duty of loyalty
to the company or its stockholders. Article Seventh of the Registrant's
certificate of incorporation includes such a provision.
Item 21. Exhibits and Financial Statement Schedules
The following exhibits are filed pursuant to Item 601 of Regulation S-K.
<TABLE>
<CAPTION>
Exhibit No. Description of Exhibit
- ------------- ---------------------------------------------------------------------------
<S> <C>
*3.1 Certificate of Incorporation of Russell-Stanley Holdings, Inc.
*3.2 By-Laws of Russell-Stanley Holdings, Inc.
*3.3 Amended and Restated Certificate of Incorporation of Russell-Stanley Corp.
*3.4 By-Laws of Russell-Stanley Corp.
*3.5 Articles of Incorporation of Container Management Services, Inc.
</TABLE>
II-1
<PAGE>
<TABLE>
<CAPTION>
Exhibit No. Description of Exhibit
- ----------------- --------------------------------------------------------------------------------------
<S> <C>
*3.6 By-Laws of Container Management Services, Inc.
*3.7 Restated Articles of Incorporation of New England Container Co., Inc.
*3.8 Amended and Restated By-Laws of New England Container Co., Inc.
*3.9 Articles of Incorporation of Russell-Stanley, Inc.
*3.10 By-Laws of Russell-Stanley, Inc.
*3.11 Certificate of Incorporation of RSLPCO, Inc.
*3.12 By-Laws of RSLPCO, Inc.
*3.13 Certificate of Limited Partnership of Russell-Stanley, L.P.
*3.14 Agreement of Limited Partnership of Russell-Stanley, L.P.
*4.1 Indenture, dated as of February 10, 1999, by and among Russell-Stanley Holdings,
Inc., the guarantors named therein and The Bank of New York, as the Trustee
*4.2 Form of 10-7/8% Senior Subordinated Notes due 2009 (included as part of the
Indenture filed as Exhibit 4.1 hereto)
*5 Opinion of Simpson Thacher & Bartlett
*10.1 Fifth Amended and Restated Revolving Credit Agreement and Term Loan Agreement,
dated as of February 10, 1999, among Russell-Stanley Holdings, Inc. and its
subsidiaries, as borrowers, the lenders listed therein and BankBoston, N.A., as
administrative agent, and Goldman Sachs Credit Partners, L.P., as syndication agent
*10.2 Stock Purchase Agreement dated as of July 21, 1998, among Vincent J. Buonanno,
New England Container Co., Inc. and Russell-Stanley Holdings, Inc.
*10.3 Stock Purchase Agreement dated as of July 1, 1997, among Mark E. Daniels, Robert
E. Daniels, Mark E. Daniels Irrevocable Family Trust, R.E. Daniels Irrevocable Family
Trust, Container Management Services, Inc. and Russell-Stanley Corp.
*10.4 Share Purchase Agreement dated as of October 24, 1997, among Michael W.
Hunter, John D. Hunter, Michael W. Hunter Holdings Inc., John D. Hunter Holdings
Inc., Hunter Holdings Inc., 373062 Ontario Limited, Hunter Drums Limited, Russell-
Stanley Holdings, Inc. and HDL Acquisition, Inc.
*10.5 Purchase and Sale Agreement dated as of October 23, 1997, among Smurfit
Packaging Corporation, Russell-Stanley Holdings, Inc. and Russell-Stanley Corp.
*10.6 Vestar Management Agreement, dated as of July 23, 1997, among Russell-Stanley
Holdings, Inc., Russell-Stanley Corp., Container Management Services, Inc. and
Vestar Capital Partners
+**10.7 Know How and Patent Licensing Agreement between Mauser-Werke GmbH and
Russell-Stanley Corp., dated June 26, 1995
+**10.8 Licensing Agreement between Mauser-Werke GmbH and Russell-Stanley Corp.,
dated June 26, 1995
+**10.9 Know How and Patent Licensing Agreement between Mauser-Werke GmbH and
Russell-Stanley Corp., dated June 26, 1995
+**10.10 Know How and Patent Licensing Agreement between Mauser-Werke GmbH and
Hunter Drums Limited, dated July 31, 1996
+**10.11 Know How and Patent Licensing Agreement between Mauser-Werke GmbH and
Hunter Drums Limited, dated July 31, 1996
+**10.12 Consent and Agreement between Hunter Drums Limited and Mauser-Werke GmbH,
dated September 29, 1997
</TABLE>
II-2
<PAGE>
<TABLE>
<CAPTION>
Exhibit No. Description of Exhibit
- ----------------- ----------------------------------------------------------------------------------------
<S> <C>
*10.13 1998 Stock Option Plan
*10.14 Russell-Stanley Holdings, Inc. Management Annual Incentive Compensation Plan
1998
*10.15 Employment Agreement, dated October 30, 1997, among Russell-Stanley Holdings,
Inc., Hunter Drums Limited and Michael W. Hunter
*10.16 Stay Pay Agreement, dated October 30, 1997, among Russell-Stanley Holdings, Inc.,
Hunter Drums Limited and Michael W. Hunter
*10.17 Employment Agreement, dated as of July 23, 1997, between Russell-Stanley
Holdings, Inc. and Mark E. Daniels
*10.18 Stay Pay Agreement, dated as of July 23, 1997, between Russell-Stanley Holdings,
Inc. and Mark Daniels
*10.19 Employment Agreement, dated as of July 23, 1998, between Russell-Stanley
Holdings, Inc. and Gerard C. DiSchino
**10.20 Employment Agreement, dated September 20, 1996, between Russell-Stanley Corp.
and Robert Singleton
*10.21 Services Agreement, dated as of February 10, 1999, between Russell-Stanley
Holdings, Inc. and Vincent J. Buonanno
**10.22 License Agreement between Gallay SA and Hunter Drums Limited, dated February 7,
1997
**10.23 License Agreement between Gallay SA and Hunter Drums Limited, dated April 16,
1987
*12 Computation of Earnings to Fixed Charges
*21 Subsidiaries of the Company
**23.1 Consent of Deloitte & Touche LLP, Independent Auditors
**23.2 Consent of Elliott, Davis & Company, L.L.P., Independent Certified Public
Accountants, with respect to Container Management Services, Inc. as of and for the
year ended December 31, 1996
*23.3 Consent of Simpson Thacher & Bartlett (included as part of its opinion filed as Exhibit
5 hereto).
*24 Power of Attorney
*25 Form T-1 Statement of Eligibility under the Trust Indenture Act of 1939 of The Bank
of New York, as Trustee
*27 Financial Data Schedule for the year ended December 31, 1998
*99.1 Form of Letter of Transmittal
*99.2 Form of Notice of Guaranteed Delivery
</TABLE>
- ----------------
* Previously filed.
** Filed herewith.
+ The registrants have applied for confidential treatment of portions of this
Exhibit. Accordingly, portions thereof have been omitted and filed
separately.
II-3
<PAGE>
Item 22. Undertakings
(a) Insofar as indemnification for liabilities arising under Securities
Act of 1933 may be permitted to directors, officers and controlling persons of
the registrant pursuant to the foregoing provisions, or otherwise, the
registrant has been advised that in the opinion of the Securities and Exchange
Commission such indemnification is against public policy as expressed in the
Act and is, therefore, unenforceable. In the event that a claim for
indemnification against such liabilities (other than the payment by the
registrant of expenses incurred or paid by a director, officer or controlling
person of the registrant in the successful defense of any action, suit or
proceeding) is asserted by such director, officer or controlling person in
connection with the securities being registered, the registrant will, unless in
the opinion of its counsel the matter has been settled by controlling
precedent, submit to a court of appropriate jurisdiction the question whether
such indemnification by it is against public policy as expressed in the Act and
will be governed by the final adjudication of such issue.
(b) The undersigned registrant hereby undertakes:
(1) To file, during any period in which offers or sales are being made,
a post-effective amendment to this registration statement:
(i) to include any prospectus required by Section 10(a)(3) of the
Securities Act of 1933;
(ii) to reflect in the prospectus any facts or events arising after
the effective date of the registration statement (or the most
recent post-effective amendment thereof) which, individually
or in the aggregate, represent a fundamental change in the
information set forth in the registration statement.
Notwithstanding the foregoing, any increase or decrease in
volume of securities offered (if the total dollar value of
securities offered would not exceed that which was registered)
and any deviation from the low or high end of the estimated
maximum offering range may be reflected in the form of
prospectus filed with the Commission pursuant to Rule 424(b)
if, in the aggregate, the changes in volume and price
represent no more that a 20 percent change in the maximum
aggregate offering price set forth in the "Calculation of
Registration Fee" table in the effective registration
statement; and
(iii) to include any material information with respect to the plan
of distribution not previously disclosed in the registration
statement or any material change to such information in the
registration statement;
(2) That, for the purpose of determining any liability under the
Securities Act of 1933, each such post-effective amendment shall be deemed
to be a new registration statement relating to the securities offered
therein, and the offering of such securities at that time shall be deemed
to be the initial bona fide offering thereof; and
(3) To remove from registration by means of a post-effective amendment
any of the securities being registered which remain unsold at the
termination of the offering.
II-4
<PAGE>
SIGNATURES
Pursuant to the requirements of the Securities Act, the Registrant has
duly caused this Registration Statement to be signed on its behalf by the
undersigned, thereunto duly authorized, on April 29, 1999.
RUSSELL-STANLEY HOLDINGS, INC.
By: /s/ Daniel W. Miller
-------------------------------------
Daniel W. Miller
Executive Vice President,
Chief Financial Officer and Treasurer
Pursuant to the requirements of the Securities Act, the Registration
Statement has been signed on the 29th day of April, 1999 by the following
persons in the capacities indicated:
<TABLE>
<CAPTION>
Signature Title
- --------------------------- ---------------------------------------
<S> <C>
* President, Chief Executive Officer,
- ------------------------- Secretary and Director (principal
Robert L. Singleton executive officer)
/s/ Daniel W. Miller Executive Vice President, Chief
- ------------------------- Financial Officer, Treasurer and
Daniel W. Miller Director (principal financial officer)
* Vice President, Controller
- ------------------------- (principal accounting officer)
Ronald M. Litchkowski
* Executive Vice President and
- ------------------------- Director
Mark E. Daniels
* Executive Vice President and
- ------------------------- Director
Michael W. Hunter
* Chairman of the Board of
- ------------------------- Directors
Robert L. Rosner
* Director
- -------------------------
Norman W. Alpert
* Director
- -------------------------
Vincent J. Buonanno
* Director
- -------------------------
Todd N. Khoury
</TABLE>
II-5
<PAGE>
<TABLE>
<S> <C>
* Director
- -------------------------
Leonard Lieberman
* Director
- -------------------------
Kevin Mundt
* Director
- -------------------------
Arthur J. Nagle
* Director
- -------------------------
Vincent J. Naimoli
* Director
- -------------------------
Daniel S. O'Connell
* Director
- -------------------------
John W. Priesing
</TABLE>
* By: /s/ Daniel W. Miller
---------------------
Daniel W. Miller,
Attorney-in-fact
II-6
<PAGE>
SIGNATURES
Pursuant to the requirements of the Securities Act, the Registrant has
duly caused this Registration Statement to be signed on its behalf by the
undersigned, thereunto duly authorized, on April 29, 1999.
RUSSELL-STANLEY CORP.
By: /s/ Daniel W. Miller
-------------------------------------
Daniel W. Miller
Executive Vice President, Chief
Financial Officer and Treasurer
Pursuant to the requirements of the Securities Act, the Registration
Statement has been signed on the 29th day of April, 1999 by the following
persons in the capacities indicated:
<TABLE>
<CAPTION>
Signature Title
- --------------------------- ---------------------------------------
<S> <C>
* President, Chief Executive Officer
- ------------------------- and Director (principal executive
Robert L. Singleton officer)
/s/ Daniel W. Miller Executive Vice President, Chief
- ------------------------- Financial Officer, Treasurer and
Daniel W. Miller Director (principal financial officer)
* Vice President, Controller and
- ------------------------- Secretary (principal accounting
Ronald M. Litchkowski officer)
* Director
- -------------------------
Robert L. Rosner
</TABLE>
* By: /s/ Daniel W. Miller
---------------------
Daniel W. Miller,
Attorney-in-fact
II-7
<PAGE>
SIGNATURES
Pursuant to the requirements of the Securities Act, the Registrant has
duly caused this Registration Statement to be signed on its behalf by the
undersigned, thereunto duly authorized, on April 29, 1999.
RUSSELL-STANLEY, INC.
By: /s/ Daniel W. Miller
------------------------------------
Daniel W. Miller
Executive Vice President, Chief
Financial Officer and Treasurer
Pursuant to the requirements of the Securities Act, the Registration
Statement has been signed on the 29th day of April, 1999 by the following
persons in the capacities indicated:
<TABLE>
<CAPTION>
Signature Title
- --------------------------- ---------------------------------------
<S> <C>
* President, Chief Executive Officer
- ------------------------- and Director (principal executive
Robert L. Singleton officer)
/s/ Daniel W. Miller Executive Vice President, Chief
- ------------------------- Financial Officer, Treasurer and
Daniel W. Miller Director (principal financial officer)
* Vice President, Controller and
- ------------------------- Secretary (principal accounting
Ronald M. Litchkowski officer)
* Director
- -------------------------
Robert L. Rosner
</TABLE>
* By: /s/ Daniel W. Miller
---------------------
Daniel W. Miller,
Attorney-in-fact
II-8
<PAGE>
SIGNATURES
Pursuant to the requirements of the Securities Act, the Registrant has
duly caused this Registration Statement to be signed on its behalf by the
undersigned, thereunto duly authorized, on April 29, 1999.
RSLPCO, INC.
By: /s/ Daniel W. Miller
-------------------------------------
Daniel W. Miller
Executive Vice President, Chief
Financial Officer and Treasurer
Pursuant to the requirements of the Securities Act, the Registration
Statement has been signed on the 29th day of April, 1999 by the following
persons in the capacities indicated:
<TABLE>
<CAPTION>
Signature Title
- --------------------------- ------------------------------------
<S> <C>
* President, Chief Executive Officer,
- ------------------------- Secretary and Director (principal
Robert L. Singleton executive officer)
/s/ Daniel W. Miller Executive Vice President, Chief
- ------------------------- Financial Officer, Treasurer and
Daniel W. Miller Director (principal financial and
accounting officer)
* Director
- -------------------------
Robert L. Rosner
</TABLE>
* By: /s/ Daniel W. Miller
---------------------
Daniel W. Miller,
Attorney-in-fact
II-9
<PAGE>
SIGNATURES
Pursuant to the requirements of the Securities Act, the Registrant has
duly caused this Registration Statement to be signed on its behalf by the
undersigned, thereunto duly authorized, on April 29, 1999.
RUSSELL-STANLEY, L.P.
By: Russell-Stanley, Inc.,
its General Partner
By: /s/ Daniel W. Miller
-------------------------------------
Daniel W. Miller
Executive Vice President, Chief
Financial Officer and Treasurer
Pursuant to the requirements of the Securities Act, the Registration
Statement has been signed on the 29th day of April, 1999 by the following
persons in the capacities indicated:
<TABLE>
<CAPTION>
Signature Title
- --------------------------- ------------------------------------
<S> <C>
* Director, Russell-Stanley, Inc., as
- ------------------------- General Partner
Robert L. Singleton
/s/ Daniel W. Miller Director, Russell-Stanley, Inc., as
- ------------------------- General Partner
Daniel W. Miller
* Director, Russell-Stanley, Inc., as
- ------------------------- General Partner
Robert L. Rosner
</TABLE>
* By: /s/ Daniel W. Miller
---------------------
Daniel W. Miller,
Attorney-in-fact
II-10
<PAGE>
SIGNATURES
Pursuant to the requirements of the Securities Act, the Registrant has
duly caused this Registration Statement to be signed on its behalf by the
undersigned, thereunto duly authorized, on April 29, 1999.
CONTAINER MANAGEMENT SERVICES, INC.
By: /s/ Daniel W. Miller
-------------------------------------
Daniel W. Miller
Executive Vice President and Chief
Financial Officer
Pursuant to the requirements of the Securities Act, the Registration
Statement has been signed on the 29th day of April, 1999 by the following
persons in the capacities indicated:
<TABLE>
<CAPTION>
Signature Title
- --------------------------- ----------------------------------
<S> <C>
* President and Director (principal
- ------------------------- executive officer)
Mark E. Daniels
/s/ Daniel W. Miller Executive Vice President, Chief
- ------------------------- Financial Officer and Director
Daniel W. Miller (principal financial officer)
* Director
- -------------------------
Robert L. Singleton
</TABLE>
* By: /s/ Daniel W. Miller
---------------------
Daniel W. Miller,
Attorney-in-fact
II-11
<PAGE>
SIGNATURES
Pursuant to the requirements of the Securities Act, the Registrant has
duly caused this Registration Statement to be signed on its behalf by the
undersigned, thereunto duly authorized, on April 29, 1999.
NEW ENGLAND CONTAINER CO., INC.
By: /s/ Daniel W. Miller
-------------------------------------
Daniel W. Miller
Executive Vice President, Chief
Financial Officer and Secretary
Pursuant to the requirements of the Securities Act, the Registration
Statement has been signed on the 29th day of April, 1999 by the following
persons in the capacities indicated:
<TABLE>
<CAPTION>
Signature Title
- --------------------------- ---------------------------------------
<S> <C>
* President and Director (principal
- ------------------------- executive officer)
Gerard C. DiSchino
/s/ Daniel W. Miller Executive Vice President, Chief
- ------------------------- Financial Officer, Secretary and
Daniel W. Miller Director (principal financial officer)
* Vice President, Controller and
- ------------------------- Treasurer (principal accounting
Eugene D. Onofrio officer)
* Director
- -------------------------
Robert L. Singleton
</TABLE>
* By: /s/ Daniel W. Miller
---------------------
Daniel W. Miller,
Attorney-in-fact
II-12
<PAGE>
EXHIBIT INDEX
<TABLE>
<CAPTION>
EXHIBIT NO. DESCRIPTION OF EXHIBIT
<S> <C>
*3.1 Certificate of Incorporation of Russell-Stanley Holdings, Inc.
*3.2 By-Laws of Russell-Stanley Holdings, Inc.
*3.3 Amended and Restated Certificate of Incorporation of Russell-Stanley Corp.
*3.4 By-Laws of Russell-Stanley Corp.
*3.5 Articles of Incorporation of Container Management Services, Inc.
*3.6 By-Laws of Container Management Services, Inc.
*3.7 Restated Articles of Incorporation of New England Container Co., Inc.
*3.8 Amended and Restated By-Laws of New England Container Co., Inc.
*3.9 Articles of Incorporation of Russell-Stanley, Inc.
*3.10 By-Laws of Russell-Stanley, Inc.
*3.11 Certificate of Incorporation of RSLPCO, Inc.
*3.12 By-Laws of RSLPCO, Inc.
*3.13 Certificate of Limited Partnership of Russell-Stanley, L.P.
*3.14 Agreement of Limited Partnership of Russell-Stanley, L.P.
*4.1 Indenture, dated as of February 10, 1999, by and among Russell-Stanley Holdings,
Inc., the guarantors named therein and The Bank of New York, as the Trustee
*4.2 Form of 10 7/8% Senior Subordinated Notes due 2009 (included as part of the
Indenture filed as Exhibit 4.1 hereto)
*5 Opinion of Simpson Thacher & Bartlett
*10.1 Fifth Amended and Restated Revolving Credit Agreement and Term Loan Agreement,
dated as of February 10, 1999, among Russell-Stanley Holdings, Inc. and its
subsidiaries, as borrowers, the lenders listed therein and BankBoston, N.A., as
administrative agent, and Goldman Sachs Credit Partners, L.P., as syndication
agent
*10.2 Stock Purchase Agreement dated as of July 21, 1998, among Vincent J.
Buonanno, New England Container Co., Inc. and Russell-Stanley Holdings,
Inc.
*10.3 Stock Purchase Agreement dated as of July 1, 1997, among Mark E.
Daniels, Robert E. Daniels, Mark E. Daniels Irrevocable Family Trust, R.E.
Daniels Irrevocable Family Trust, Container Management Services, Inc. and
Russell-Stanley Corp.
*10.4 Share Purchase Agreement dated as of October 24, 1997, among Michael
W. Hunter, John D. Hunter, Michael W. Hunter Holdings Inc., John D.
Hunter Holdings Inc., Hunter Holdings Inc., 373062 Ontario Limited,
Hunter Drums Limited, Russell-Stanley Holdings, Inc. and HDL
Acquisition, Inc.
*10.5 Purchase and Sale Agreement dated as of October 23, 1997, among Smurfit
Packaging Corporation, Russell-Stanley Holdings, Inc. and Russell-Stanley
Corp.
*10.6 Vestar Management Agreement, dated as of July 23, 1997, among Russell-
Stanley Holdings, Inc., Russell-Stanley Corp., Container Management
Services, Inc. and Vestar Capital Partners
+**10.7 Know How and Patent Licensing Agreement between Mauser-Werke
GmbH and Russell-Stanley Corp., dated June 26, 1995
<PAGE>
+**10.8 Licensing Agreement between Mauser-Werke GmbH and Russell-Stanley
Corp., dated June 26, 1995
+**10.9 Know How and Patent Licensing Agreement between Mauser-Werke
GmbH and Russell-Stanley Corp., dated June 26, 1995
+**10.10 Know How and Patent Licensing Agreement between Mauser-Werke
GmbH and Hunter Drums Limited, dated July 31, 1996
+**10.11 Know How and Patent Licensing Agreement between Mauser-Werke
GmbH and Hunter Drums Limited, dated July 31, 1996
+**10.12 Consent and Agreement between Hunter Drums Limited and Mauser-Werke GmbH, dated
September 29, 1997
*10.13 1998 Stock Option Plan
*10.14 Russell-Stanley Holdings, Inc. Management Annual Incentive Compensation
Plan 1998
*10.15 Employment Agreement, dated October 30, 1997, among Russell-Stanley
Holdings, Inc., Hunter Drums Limited and Michael W. Hunter
*10.16 Stay Pay Agreement, dated October 30, 1997, among Russell-Stanley
Holdings, Inc., Hunter Drums Limited and Michael W. Hunter
*10.17 Employment Agreement, dated as of July 23, 1997, between Russell-Stanley
Holdings, Inc. and Mark E. Daniels
*10.18 Stay Pay Agreement, dated as of July 23, 1997, between Russell-Stanley
Holdings, Inc. and Mark Daniels
*10.19 Employment Agreement, dated as of July 23, 1998, between Russell-Stanley
Holdings, Inc. and Gerard C. DiSchino
**10.20 Employment Agreement, dated September 20, 1996, between Russell-Stanley
Corp. and Robert Singleton
*10.21 Services Agreement, dated as of February 10, 1999, between Russell-Stanley
Holdings, Inc. and Vincent J. Buonanno
**10.22 License Agreement between Gallay SA and Hunter Drums Limited, dated February 7, 1997
**10.23 License Agreement between Gallay SA and Hunter Drums Limited, dated April 16, 1987
*12 Computation of Earnings to Fixed Charges
*21 Subsidiaries of the Company
**23.1 Consent of Deloitte & Touche LLP, Independent Auditors
**23.2 Consent of Elliot, Davis & Company, L.L.P., Independent Certified Public Accountants,
with respect to Container Management Services, Inc. as of and for the year ended
December 31, 1996
*23.3 Consent of Simpson Thacher & Bartlett (included as part of its opinion filed as
Exhibit 5 hereto).
*24 Power of Attorney
*25 Form T-1 Statement of Eligibility under the Trust Indenture Act of 1939 of
The Bank of New York, as Trustee
*27 Financial Data Schedule for the year ended December 31, 1998
*99.1 Form of Letter of Transmittal
*99.2 Form of Notice of Guaranteed Delivery
</TABLE>
* Previously filed.
** Filed herewith.
+ The registrants have applied for confidential treatment of portions of this
Exhibit. Accordingly, portions thereof have been omitted and filed
separately.
Exhibit 10.7
Certain portions of
this Exhibit have
been omitted and
filed separately
pursuant to a request
for confidential
treatment. The Symbol
"****" has been
inserted in place of
the portions so
omitted.
Between MAUSER-WERKE GMBH
SCHILDGESSTR. 71-163
50321 BRUHL
FEDERAL REPUBLIC OF GERMANY
- - hereinafter referred to as "MAUSER"
and RUSSELL-STANLEY CORPORATION
230 HALF MILE ROAD
RED BANK, NEW JERSEY 07701
UNITED STATES OF AMERICA
hereinafter referred to as "RUSSELL-STANLEY"
the following
KNOW HOW AND PATENT
LICENSING AGREEMENT
With this new Agreement all previous Agreements relating to the subject matter
of the new Agreement, and including the KNOW HOW and Patent License Agreement
dated January 1, 1985 between the parties, letters, etc. are superseded hereby.
PREAMBLE
MAUSER possesses several years of experience and knowledge in the manufacture
and marketing of blown plastic containers made of thermoplastic synthetic
materials. MAUSER has developed its own machines, appliances and molds for the
production of such containers.
The experience for the manufacture of blown plastic containers, as developed by
MAUSER, relates in particular to:
- - the processing of plastic materials
- - the industrial design of blown plastic containers
- - the design of production plants and equipment
- - selling and marketing, i.e. the special points relating to this market
for plastic packagings, the relevant selection of suitable plastic
containers for particular products, information on previously used and
new fields of application and also publicity to this market as
developed by MAUSER
- - the design of plastic containers which comply with the requirements
called for under international transport and packing regulations
(especially concerning dangerous products)
<PAGE>
- - testing procedures for the operation of plastic containers
- - quality control
- - possibilities of exchange of experience on the occasion of MAUSER KNOW
HOW Conferences
RUSSELL-STANLEY intends to manufacture and market in the United States of
America LICENSED ARTICLES according to the MAUSER PATENT RIGHTS and the MAUSER
KNOW HOW, all as defined in Article I hereof.
Therefore, the contracting parties agree as follows:
2
<PAGE>
ARTICLE 1
LICENSED ARTICLES, PATENT RIGHTS AND KNOW HOW
LICENSED ARTICLES means blow molded one piece closed head plastic containers
according to 1H1 of the "Recommendation on the Transport of Dangerous Goods of
the United Nations" (Orange book, 8th edition, page 202, Art. 9.6.7) with
L-Ring, i.e. closed head bung type drums with top handling ring, the bung
opening with an internal thread not exceeding 100 mm in diameter, embraced
within the scope of a valid, unexpired claim of a patent included within the
PATENT RIGHTS and/or produced in accordance with the KNOW HOW made available by
MAUSER under this Agreement for the LICENSED ARTICLES.
PATENT RIGHTS are the following patents owned by MAUSER as well as any reissue,
continuation, continuation-in-part or divisional patent arising therefrom
relating to LICENSED ARTICLES.
PATENT NO. DATE TITLE
4,228,122 14.10.1980 Method of manufacturing of roller chimes for
closed head drums
4,674,648 23.06.1987 Bung keg
295,108 05.04.1988 Bunged drum or the like
5,033,639 23.07.1991 Bunged vessel
319,133 13.08.1991 Bunged drum or the like
319,134 13.08.1991 Bunged drum or the like
PATENT RIGHTS also include all future United States Patents relating to
improvements on the design of and the processes for producing L-Rings shaped top
handling rings, limited to the LICENSED ARTICLES.
PATENT RIGHTS are limited to the LICENSED ARTICLES because some special features
of these patents are also utilized with other drum designs, such as but not
limited to open top drums/lid type drums.
KNOW HOW means all of the KNOW HOW in the possession of MAUSER relating to the
LICENSED ARTICLES, and in particular, but not limited to, technical data,
drawings, photographs, engineering and/or market test reports, models, specimen,
samples and/or other information relating to the LICENSED ARTICLES of this
Agreement.
ARTICLE 2
USE OF TRADEMARKS
RUSSELL-STANLEY shall mark all LICENSED ARTICLES with such patent numbers and/or
trademarks as MAUSER may reasonably request. RUSSELL-STANLEY shall have the
3
<PAGE>
non-exclusive right during the term of this Agreement and any renewals or
extensions thereof to use the following United States' trademark owned by
MAUSER:
1. "ELRING" in which event RUSSELL-STANLEY shall indicate on the LICENSED
ARTICLES an (R), in a circle or "Reg. US Pat. Off." after the
trademark.
2. "MAUSER" (trademark only - not company name) may be used on the
LICENSED ARTICLES produced by RUSSELL-STANLEY only in connection with
RUSSELL-STANLEY's own name.
In order to protect the reputation of MAUSER and MAUSER's rights in and to the
Trademarks, RUSSELL-STANLEY agrees that all LICENSED ARTICLES sold by it and
marked with any of MAUSER's Trademarks shall meet the highest quality standards
set by MAUSER. RUSSELL-STANLEY also agrees that MAUSER shall have the right at
any time on not less than two days prior written notice during ordinary business
hours to inspect the premises and facilities of RUSSELL-STANLEY, to inspect the
operations being conducted therein and to inspect and take samples of the
LICENSED ARTICLES manufactured, assembled and/or sold by it and marked with any
of MAUSER's Trademarks, in reasonable quantities, to enable MAUSER to verify
that its quality standards are being met at all times.
ARTICLE 3
CONTRACTUAL TERRITORY
TERRITORY means the United States of America and its territories and
possessions.
ARTICLE 4
LICENSE GRANT AND TRANSMISSION OF KNOW HOW
1. Except as otherwise set forth herein, MAUSER hereby grants to
RUSSELL-STANLEY an exclusive license to manufacture LICENSED ARTICLES
in RUSSELL-STANLEY's plants in the TERRITORY and to sell empty LICENSED
ARTICLES during the life of this Agreement in the TERRITORY in
accordance with the PATENT RIGHTS and/or the KNOW HOW.
2. MAUSER represents that on or about November 11, 1982 it entered into a
non-exclusive license agreement with FLORIDA DRUM COMPANY INC. (FDC),
(the "FDC Agreement"). Pursuant to the FDC agreement FDC has
established manufacturing facilities at Pine Bluff, Arkansas and
Charlotte/Harrisburg, North Carolina and has expressed its intention to
establish a manufacturing facility at Pensacola, Florida (collectively
4
<PAGE>
the FDC Locations, but only to manufacture at FDC locations and to sell
anywhere within the TERRITORY), RUSSELL STANLEY hereby consents for the
sale of LICENSED ARTICLES under the FDC Agreement by FDC anywhere in
the TERRITORY and agrees that MAUSER may renew the FDC agreement
provided that no additional FDC location for the LICENSED ARTICLES may
be established.
RUSSELL-STANLEY further agrees not to establish any plants
manufacturing LICENSED ARTICLES within 300 miles air distance from FDC
Locations as long as the FDC Agreement is in full force and effect with
the exception of the existing plant of RUSSELL-STANLEY in Nitro, West
Virginia and Reserve, Louisiana.
3. Besides the PATENT RIGHTS, MAUSER grants to RUSSELL STANLEY a
non-exclusive license to manufacture and to sell LICENSED ARTICLES in
accordance with U.S.-Patent Applications 07/923,877 of 11.08.1992 "Bung
Barrel" and 07/920,562 of 13.08.1992 "Stackable Drum". MAUSER does not
assume any liability that these Patent Applications will not infringe
upon rights of third parties.
4. Except for the delivery of documents and for assistance provided in the
Agreement, MAUSER will not assume any liability for the risk of
technical production, operation and commercial use of the LICENSED
ARTICLES described in Article 1.
MAUSER declares that the KNOW HOW and the PATENT RIGHTS, to the best
knowledge of MAUSER, do not infringe upon the rights of third parties
with respect to the manufacture of the LICENSED ARTICLES.
Possible future MAUSER patents which apply generally to plastic drums
with top handling ring including the LICENSED ARTICLES, other than the
future patents contemplated in the third paragraph of Article 1, are
not included in this Agreement, however, MAUSER is prepared to discuss
in good faith the use of such patents by RUSSELL-STANLEY on a
nonexclusive basis, when the case should arise.
5. The transmission of KNOW HOW in the TERRITORY shall be limited to the
present business premises of RUSSELL-STANLEY or any relocation thereof:
Rancho Cucamonga, California; Houston, Texas; Romeoville, Illinois;
Reserve, Louisiana; Nitro, West Virginia; Camden, New Jersey. In case
of establishment of a new location, RUSSELL-STANLEY shall pay a lump
sum charge, the amount of which is to be negotiated in good faith to
compensate MAUSER for its technical assistance in connection with the
start up of said new location.
5
<PAGE>
6. RUSSELL-STANLEY is not authorized to grant sublicenses under the PATENT
RIGHTS and/or the KNOW HOW or otherwise to pass the MAUSER KNOW HOW to
third parties other than its subsidiaries. As agreed by today's letter
from RUSSELL STANLEY to MAUSER, RUSSELL-STANLEY may, however, enter
into a sublicense agreement with HUNTER DRUMS CORP./Canada with respect
to the TERRITORY.
ARTICLE 5
TECHNICAL ASSISTANCE
1. MAUSER will provide RUSSELL-STANLEY during the life of this Agreement
with all information, experience and methods, present and future,
including special techniques and production secrets that are required
to enable technicians of average qualification to produce the LICENSED
ARTICLES referred to in this Agreement after a reasonable start-up
time.
2. MAUSER will furnish RUSSELL-STANLEY with all documents, plans and
drawings required for the production, use and distribution of the
LICENSED ARTICLES described in this Agreement. All documents, plans and
drawings made available in accordance with this Agreement must not be
used by RUSSELL-STANLEY for purposes other than the execution of this
Agreement.
ARTICLE 6
TRAINING OF SPECIALIST STAFF
1. MAUSER undertakes to acquaint specialists of RUSSELL-STANLEY on
MAUSER's production premises with the manufacture and use of the
LICENSED ARTICLES described in this Agreement. In supplementation of
any plans and drawings that may have been made available, suitable
specialists of MAUSER will give further verbal information,
explanations and normal additional instructions for a better
understanding of the KNOW HOW.
2. Details of the technical instructions shall be fixed by separate
agreements between the contracting parties. Their agreements shall
relate in particular to the regulation of:
- - the number and duration of instruction courses;
- - the number and technical qualification of the specialists of
RUSSELL-STANLEY to be instructed; and
6
<PAGE>
- - the lodging, boarding, liability and insurance of the specialists.
3. The contracting parties agree that all expenses directly incurred by
personnel of RUSSELL-STANLEY during the training courses, in particular
travel and daily expenses and salaries, will always be at
RUSSELL-STANLEY's charge. However, expenses and costs for MAUSER
personnel for the training and instruction of personnel of
RUSSELL-STANLEY will be borne by MAUSER. Should MAUSER, however, at the
request of RUSSELL-STANLEY, send specialists to the United States of
America, the travel and daily expenses and salaries for such
specialists will be borne by RUSSELL- STANLEY.
ARTICLE 7
SECRECY
RUSSELL-STANLEY is under strict obligation to keep secret the documents received
from MAUSER and the KNOW HOW transmitted by MAUSER from the commencement of
negotiations of this Agreement and during its life. Such obligation to secrecy
shall continue even after termination of this Agreement for any cause, except
for information (a) which enters the public domain without the fault or
negligence of RUSSELL-STANLEY or (b) which RUSSELL- STANLEY receives from a
third party who is legally entitled to such information and to communicate it to
RUSSELL-STANLEY. RUSSELL-STANLEY undertakes to take all precautionary measures
necessary for the maintenance of such secrecy (also for their employees).
ARTICLE 8
KNOW HOW FEES AND ROYALTIES
For LICENSED ARTICLES manufactured under this Agreement RUSSELL-STANLEY shall
pay MAUSER a combined royalty and Know-How fee of **** of the net invoice
value per LICENSED ARTICLE as long as (1) any of the KNOW HOW supplied to
RUSSELL-STANLEY, either before or after execution of this Agreement, is being
used by RUSSELL-STANLEY in connection with its manufacture and/or sale of any
LICENSED ARTICLES since the execution of this Agreement and/or as long as (2)
such manufacture of the LICENSED ARTICLES sold by RUSSELL-STANLEY is covered by
any one or all of the PATENT RIGHTS and/or the KNOW HOW.
The maximum fee per annum is limited to ****.
The net invoice value shall be deemed to be the sales price billed by
RUSSELL-STANLEY after deduction of taxes on sales,
7
<PAGE>
and/or turnover and/or the added value, costs for packaging, transport and
insurance, credits and returns and customery trade discounts. Where material is
supplied free of charge, its current value shall be added to the sales price.
If taxes are payable in the United States of America on the KNOW HOW fee,
RUSSELL-STANLEY shall be responsible for the payment of such taxes and shall
remit to MAUSER the net amount due to MAUSER after deduction of such taxes.
RUSSELL-STANLEY shall observe the Double Taxation Agreement between the United
States of America and the Federal Republic of Germany when deducting such taxes
and shall furnish MAUSER with all receipts issued for such taxes deducted b
RUSSELL-STANLEY and paid to the revenue authorities in the TERRITORY.
ARTICLE 9
KNOW HOW FEE ACCOUNTS AND PAYMENTS
1. RUSSELL-STANLEY shall maintain complete records at its Corporate
Headquarters relating to licensed production and sales. Within 30
(thirty) days after the end of each calendar quarter of this Agreement,
up to and including the end of the calendar quarter following
termination of this Agreement, RUSSELL-STANLEY shall render a written
report to MAUSER listing the total net sales of the LICENSED ARTICLES
produced and sold by RUSSELL-STANLEY during such calendar quarter and
the royalty due thereon. Each report so rendered shall be accompanied
by the required royalty payment.
2. MAUSER shall have the right during normal business hours on 3 (three)
days prior written notice at its own expense and not more than once in
any calendar quarter to have the pertinent records of RUSSELL-STANLEY
examined by an independent certified public accountant for the purpose
of verifying the reports rendered hereunder, provided, however, any
report of the accountant to MAUSER shall be made in such a manner that
all information properly deemed confidential by RUSSELL-STANLEY will
not be disclosed to MAUSER and further provided that in the event
MAUSER's accountant's report is not accepted by RUSSELL-STANLEY or if
acceptable adjustments are made thereon, confidential information may
be disclosed as necessary to MAUSER and its attorneys.
8
<PAGE>
ARTICLE 10
INFRINGEMENT
1. In the event that any unlicensed third party infringes any of the
PATENT RIGHTS, affecting the LICENSED ARTICLES by the commercial use,
manufacture and/or sale of the LICENSED ARTICLES in the TERRITORY and
after written notification to MAUSER of the name of the infringer and
place and circumstances of the infringement and delivery of a sample of
the infringing product to MAUSER and after determination that such
infringement requires action because of the economic extent or impact
thereof, ****.
The costs and expenses (preparation and execution) and the proceeds of
such legal action shall be shared equally by MAUSER and
RUSSELL-STANLEY. MAUSER's share of such cost shall be restricted to and
derived from a fund of one-third (1/3) of license and royalty fees
actually received from RUSSELL-STANLEY after commencement of legal
action until its termination.
2. **** MAUSER agrees to be bound by the decisions of the court and to
waive any objections to providing discovery by subpoena.
RUSSELL-STANLEY will use its best efforts to avoid any involvement
of MAUSER in such action, however, if the court in which the action
is pending decides that MAUSER must formally join in the law suit,
MAUSER will join. In such case RUSSELL-STANLEY agrees to reimburse
MAUSER for any and all costs accruing to MAUSER in connection with
such involvement. Any recovery shall be for the benefit of RUSSELL
STANLEY.
3. In the event a relevant patent is held to be invalid, this Agreement
may be terminated at the option of RUSSELL-STANLEY and RUSSELL-STANLEY
shall not be obligated to pay future license fees to MAUSER provided
the LICENSED ARTICLES produced and sold by RUSSELL-STANLEY are not
covered by any other patent held by MAUSER.
9
<PAGE>
Should RUSSELL-STANLEY, in particular in order to continue to receive
Technical Assistance under Art. 5 and Training of Specialist Staff
under Art. 6, elect to continue this Agreement, royalties and fees
shall be continuously payable for the KNOW-HOW in an amount equal to
**** of the royalties and fees otherwise specified hereunder. In such
case the maximum fee per annum remains **** as provided in Article 8
para 2.
ARTICLE 11
LIFE OF AGREEMENT
1. This Agreement will come into effect on being signed by the latest
contracting party commencing with January 1, 1995.
2. This agreement will terminate July 31, 2008 unless one or more
improvement patents issues under Article 1 in which event this
agreement terminates on the earlier of a) the latest to expire of such
improvement patents or b) July 31, 2015, unless upon 6 months prior
written notice MAUSER has given notice of renewal. In such event the
Agreement will be tacitly renewed by periods of one year each, unless
notice of cancellation is given by either contracting party not later
than six months before the end of any contractual year.
All notices given pursuant to this Article 11.2 shall be in writing and
delivered by facsimile transmission and confirmed by international
overnight delivery service, delivery receipt requested, or the
functional equivalent thereof at the time of notice. Decisive date for
the observance of the period of notice shall be the date of receipt of
the notice.
3. MAUSER has the right to cancel this Agreement by written notice of
cancellation and with immediate effect for any of the following, if
- - RUSSELL-STANLEY is in default of a material obligation resulting from
this Agreement, especially with the payment of the KNOW HOW and License
fees, or has violated material obligations under the Agreement and has
not remedied such violation within three months after receipt of a
corresponding notice by MAUSER to do so,
- - RUSSELL-STANLEY undertakes measures which are a material breach of
trust and/or breach of secrecy,
- - ****
10
<PAGE>
4. RUSSELL-STANLEY has the right to cancel this Agreement by written
notice of cancellation and with immediate effect for any of the
following, if
MAUSER does not fulfill material obligations under this Agreement
within three months after having received a corresponding notice to do
so.
5. In the event of any adjudication of bankruptcy, assignment for the
benefit of creditors or levy of execution directly involving RUSSELL
STANLEY or MAUSER, the other shall have the immediate right to
terminate this Agreement by giving written notice to the other party
hereto,
6. Except as provided in Article 11, para 7, in the event of a termination
pursuant to Article 10, para 3 or to para 2 - 4 of Article 11 by
cancellation, all rights of RUSSELL-STANLEY arising from this Agreement
will cease by the latest two months after receipt of the notice of
cancellation. The contractual KNOW HOW fees shall be payable until that
date, when RUSSELL-STANLEY loses all rights resulting from this
Agreement.
Except as provided in Article 11, para 7, within one month after
expiration or termination of this Agreement pursuant to para 3 + 4 of
Article 11 RUSSELL-STANLEY shall return all documents and drawings
received from MAUSER. Upon the cancellation of this Agreement pursuant
to Article 10, para 3 or to para 2 - 4 of Article 11 all rights of the
contracting parties from this Agreement will cease, with the exception
of those provided in its Article 7 (Secrecy) and in its Article 11,
para 7.
7. Should this Agreement expire in accordance with Article 10, para 3 or
Article 11, para 2 hereof, RUSSELL STANLEY shall have the absolute
nonexclusive right to use the KNOW HOW forever thereafter free of any
and all royalties and fees.
8. ****.
11
<PAGE>
ARTICLE 12
APPLICABLE LAW, JURISDICTION
1. This Agreement has been drawn up in English. Any amendments and
additions to this Agreement must be made in writing and signed by both
parties to become valid.
2. The contracting parties have agreed that as a whole and in all its
individual provisions this Agreement is subject to German substantive
and procedural law, except for the contractual PATENT RIGHTS which fall
under the patent law of the United States of America.
3. Any and all disputes arising from or in connection with the execution,
delivery, performance or interpretation and construction of this
Agreement shall be submitted to binding arbitration before a single
arbitrator in Zurich, Switzerland, in accordance with the rules and
regulations of the International Chamber of Commerce except that where
such rules and regulations differ from the provisions of this Article
12.3 the latter shall govern. There shall be no discovery, the
arbitrator shall be selected within 30 days of the service of the
written demand for arbitration, the first hearing shall be conducted
within 60 days of the service and shall continue day to day until
completed. The decision shall be rendered within 15 business days from
the date of the last hearing, shall set forth the decision and the
reasons for same and shall be unappealable except for fraud or bias.
The loser shall pay all the administrative costs of the arbitration and
the winners costs including without limitation attorneys' fees,
experts' fees, reasonable travel and living costs. The winning party
shall have the right to seek confirmation of the arbitrator's award in
any court of competent jurisdiction over the losing party without
objection.
ARTICLE 13
SUBSTITUTION CLAUSE
Should any individual provision of this Agreement be or become void, or should a
gap be ascertained in this Agreement, the validity of the other provisions shall
not be affected thereby. As a substitute for the provision, which is void or
inoperative, or for the purpose of filling the gap, an appropriate arrangement
shall be valid, which, if it is legally possible, shall be as close as possible
to what the contracting parties would have
12
<PAGE>
reasonably intended, had they considered that point. If a provision is void or
inoperative owing to measures or outputs or times (periods or time limits)
indicated therein, this shall be replaced by a measure which is as close as
legally possible to the provision in question.
ARTICLE 14
The parties to this Agreement are aware that their contractual relationship has
been renewed by a group of agreements signed today, namely
1. KNOW HOW and LICENSING AGREEMENT L-Ring USA;
2. LICENSING AGREEMENT L-RING Canada;
3. KNOW HOW and LICENSING AGREEMENT Open Top USA and
4. LICENSING AGREEMENT L-Ring USA between RUSSELL-STANLEY CORP. and HUNTER
DRUM LTD.
5. Release of any rights and obligations under the L-RING AGREEMENT of
January 1, 1995.
Bruhl, 26.06.1995 Red Bank,
____________________________ ___________________________
MAUSER-WERKE RUSSELL-STANLEY
G M B H CORPORATION
By /s/Dr. Burgdorf /s/Effnert By /s/John Priesing
_________________________________ _____________________________________
Dr. Burgdorf Effnert John Priesing
(Chief Exec. Officer) (Director) (President)
13
Exhibit 10.8
Certain portions of
this Exhibit have
been omitted and
filed separately
pursuant to a request
for confidential
treatment. The Symbol
"****" has been
inserted in place of
the portions so
omitted.
Between MAUSER-WERKE GMBH
SCHILDGESSTR. 71-163
50321 BRUHL
FEDERAL REPUBLIC OF GERMANY
hereinafter referred to as "MAUSER"
and RUSSELL-STANLEY CORPORATION
230 HALF MILE ROAD
RED BANK, NEW JERSEY 07701
UNITED STATES OF AMERICA
hereinafter referred to as "RUSSELL-STANLEY"
LICENSING AGREEMENT
PREAMBLE
The parties have concluded a Know-How and Patent Licensing Agreement
(hereinafter referred to as the "US-AGREEMENT") for Know-How and United States
patents concerning blow molded one piece closed head plastic containers
according to 1H1 of the "Recommendation on the Transport of Dangerous Goods of
the United Nations" (Orange book, 8th edition, page 202, Art. 9.6.7) with
L-Ring, i.e. closed head bung type drums with top handling ring, the bung
opening with an internal thread not exceeding 100 mm in diameter, embraced
within the PATENT RIGHTS and/or produced in accordance with the KNOW HOW made
available by MAUSER under the US-AGREEMENT for the LICENSED ARTICLES for the
manufacture and sale of such drums in the United States of America.
RUSSELL-STANLEY wishes to be authorized also in Canada to sell such drums as
manufactured in the United States of America under the US-AGREEMENT.
Therefore, the contracting parties agree as follows:
ARTICLE 1
PATENT RIGHTS
MAUSER holds the following Patens and Patent Application in
<PAGE>
Canada:
PATENT NO. DATE TITLE
1,276,572 20.12.1990 Short L-Ring
Des 68 100 28.02.1991 L-Ring Plus (Design Patent)
1,312,560 12.01.1993 Long L-Ring
2.075.806 21.12.1990 ODD L-Ping Plus (Patent Application)
The above Patents and Patent Application are the contractual PATENT RIGHTS.
PATENT RIGHTS also include all future Canadian Patents relating to improvements
on the design of L-Ring shaped top handling rings, limited to the LICENSED
ARTICLES.
ARTICLE 2
CONTRACTUAL TERRITORY
Contractual TERRITORY is Canada.
ARTICLE 3
LICENSE GRANT
1. MAUSER hereby grants to RUSSELL-STANLEY a non-exclusive license under
the PATENT RIGHTS and any future patents parallel to any future United
States patents covered by the US-AGREEMENT to sell in the TERRITORY the
LICENSED ARTICLES manufactured in RUSSELL-STANLEY's presently existing
locations under the US-AGREEMENT in the United States of America.
2. RUSSELL-STANLEY is not authorized to grant sublicenses.
ARTICLE 4
ROYALTIES
1. RUSSELL-STANLEY shall pay **** on the sale of the first **** units
per year, in excess of **** units per year a royalty of **** of the
net invoice value per LICENSED ARTICLE has to be paid.
Each year shall be measured from the anniversary date of the effective
date of this Agreement. However, any LICENSED ARTICLE delivered to
HUNTER DRUMS or to a customer of HUNTER DRUMS at the request of HUNTER
DRUMS shall be **** and shall not be counted for purposes of
determining the **** LICENSED ARTICLES per year.
2
<PAGE>
2. The net invoice value shall be deemed to be the sales price billed by
RUSSELL-STANLEY after deduction of taxes on sales, and/or turnover
and/or the added value, costs for packaging, transport and insurance,
credits and returns and customery trade discounts. Where material is
supplied free of charge, its current value shall be added to the sales
price.
If taxes are payable in the United States of America on the royalties,
RUSSELL-STANLEY shall be responsible for the payment of such taxes and
shall remit to MAUSER the net amount due to MAUSER after deduction of
such taxes.
RUSSELL-STANLEY shall observe the Double Taxation AGREEMENT between the
United States of America and the Federal Republic of Germany when
deducting such taxes and shall furnish MAUSER with all receipts issued
for such taxes deducted by RUSSELL-STANLEY and paid to the revenue
authorities in the United States of America.
3. For the purpose of this AGREEMENT RUSSELL-STANLEY shall maintain
complete records at its Corporate Headquarters relating to licensed
sales. Within 30 (thirty) days after the end of each calendar quarter
of this AGREEMENT up to and including the end of the calendar quarter
following termination of this AGREEMENT RUSSELL-STANLEY shall render a
written report to MAUSER listing the total net sales of the LICENSED
ARTICLE sold by RUSSELL-STANLEY during such calendar quarter and the
royalty due thereon. Each report so rendered shall be accompanied by
the required royalty payment.
4. MAUSER shall have the right during normal business hours on 3 (three)
days prior written notice at its own expense and not more than once in
any calendar quarter to have the pertinent records of RUSSELL-STANLEY
examined by an independent certified public accountant for the purpose
of verifying the reports rendered hereunder, provided, however, any
report of the accountant to MAUSER shall be made in such a manner that
all information properly deemed confidential by RUSSELL-STANLEY will
not be disclosed to MAUSER and further provided that in the event
MAUSER's accountants' report is not accepted by RUSSELL-STANLEY or if
acceptable adjustments are made thereon, confidential information may
be disclosed as necessary to MAUSER and its attorneys.
ARTICLE 5
LIFE OF AGREEMENT
1. This AGREEMENT will come into effect on being signed by the latest
contracting party commencing with January 1, 1995.
3
<PAGE>
2. The lifetime of this AGREEMENT is in accordance with the lifetime of
the US-AGREEMENT.
3. MAUSER has the right to cancel this AGREEMENT by written notice of
cancellation and with immediate effect for any of the following, if
RUSSELL-STANLEY is in default of a material obligation resulting from this
AGREEMENT, especially with the payment of the Royalties, or has violated
material obligations under the AGREEMENT and has not remedied such violation
within three months after receipt of a corresponding notice by MAUSER to do so,
RUSSELL-STANLEY undertakes measures which are a material breach of trust
and/or breach of secrecy
4. RUSSELL-STANLEY has the right to cancel this AGREEMENT by written
notice of cancellation and with immediate effect, if
MAUSER does not fulfill material obligations under this AGREEMENT
within three months after having received a corresponding notice to do so.
5. In the event of any adjudication of bankruptcy, assignment for the
benefit of creditors or levy of execution directly involving RUSSELL-STANLEY or
MAUSER, the other shall have the immediate right to terminate this AGREEMENT by
giving written notice to the other party hereto.
6. In the event of a premature termination of this AGREEMENT by
cancellation all rights of RUSSELL-STANLEY arising from this AGREEMENT will
cease by the latest two months after receipt of the notice of cancellation. The
Royalties shall be payable until that date, when RUSSELL-STANLEY loses all
rights resulting from this AGREEMENT.
7. Upon the termination of this AGREEMENT all rights of the contracting
parties from this AGREEMENT will cease, unless such termination is coincident
with the termination of said US-Agreement, in which event the rights of the
parties shall be as set forth in the US-Agreement.
8. ****.
4
<PAGE>
ARTICLE 6
APPLICABLE LAW, JURISDICTION
1. This AGREEMENT has been drawn up in English. Any amendments and
additions to this AGREEMENT must be made in writing and signed by both
parties to become valid.
2. The contracting parties have agreed that as a whole and in all its
individual provisions this AGREEMENT is subject to German substantive
and procedural law, except for the contractual PATENT RIGHTS which fall
under Canadian patent law.
3. Any and all disputes arising from or in connection with the execution,
delivery, performance or interpretation and construction of this
AGREEMENT shall be submitted to binding arbitration before a single
arbitrator in Zurich, Switzerland, in accordance with the rules and
regulations of the International Chamber of Commerce except that where
such rules and regulations differ from the provisions of this Article
6.3 the latter shall govern. There shall be no discovery, the
arbitrator shall be selected within 30 days of the service of the
written demand for arbitration, the first hearing shall be conducted
within 60 days of the service and shall continue day to day until
completed. The decision shall be rendered within 15 business days from
the date of the last hearing, shall set forth the decision and the
reasons for same and shall be unappealable except for fraud or bias.
The loser shall pay all the administrative costs of the arbitration and
the winner's costs including without limitation attorneys' fees,
experts' fees, reasonable travel and living costs. The winning party
shall have the right to seek confirmation of the arbitrator's award in
any court of competent jurisdiction over the losing party without
objection.
ARTICLE 7
SUBSTITUTION CLAUSE
Should any individual provision of this AGREEMENT be or become void, or should a
gap be ascertained in this AGREEMENT, the validity of the other provisions shall
not be affected thereby. As a substitute for the provision, which is void or
inoperative, or for the purpose of filling the gap, an appropriate arrangement
shall be valid, which, if it is legally possible, shall be as close as possible
to what the contracting parties would have reasonably intended, had they
considered that point. If a provision is void or inoperative owing to measures
or outputs or times (periods or time limits) indicated therein, this shall be
5
<PAGE>
replaced by a measure which is as close as legally possible to the provision in
question.
ARTICLE 8
The parties to this Agreement are aware that their contractual relationship has
been renewed by a group of agreements signed today, namely
1. KNOW HOW and LICENSING AGREEMENT L-Ring USA;
2. LICENSING AGREEMENT L-RING Canada;
3. KNOW HOW and LICENSING AGREEMENT Open Top USA and
4. LICENSING AGREEMENT L-Ring USA between RUSSELL-STANLEY CORP. and HUNTER
DRUM LTD.
5. Release of any rights and obligations under the L-RING AGREEMENT of January
1, 1995.
Bruhl, 26.06.1995 Red Bank,_______________
___________
MAUSER-WERKE RUSSELL-STANLEY
G M B H CORPORATION
By /s/Dr. Burgdorf /s/Effnert By /s/John Priesing
_______________________________ ________________________
Dr. Burgdorf Effnert John Priesing
(Chief Exec. Officer) (Director) (President)
Exhibit 10.9
Certain portions of
this Exhibit have
been omitted and
filed separately
pursuant to a request
for confidential
treatment. The Symbol
"****" has been
inserted in place of
the portions so
omitted.
Between MAUSER-WERKE GMBH
SCHILDGESSTR. 71-163
50321 BRUHL
FEDERAL REPUBLIC OF GERMANY
hereinafter referred to as "MAUSER"
and RUSSELL-STANLEY CORPORATION
230 HALF MILE ROAD
RED BANK, NEW JERSEY 07701
UNITED STATES OF AMERICA
hereinafter referred to as "RUSSELL-STANLEY"
KNOW HOW AND PATENT
LICENSING AGREEMENT
PREAMBLE
MAUSER possesses several years of experience and knowledge in the manufacture
and marketing of blown plastic containers made of thermoplastic synthetic
materials. MAUSER has developed its own machines, appliances and molds for the
production of such containers.
The experience for the manufacture of blown plastic containers, as developed by
MAUSER, relates in particular to:
- - the processing of plastics
- - the industrial design of blown containers
- - the design of production plants and equipment
- - selling and marketing, e.g. the special points relating to this market
of plastic packagings, the relevant selection of suitable plastic
containers for particular products, information on previously used and
new fields of application and also publicity to this market as
developed by MAUSER
- - the design of plastic containers which comply with the requirements
called for under international transport and packing regulations
(especially concerning dangerous products)
- - testing procedures for the operation of plastic containers
- - quality control
1
<PAGE>
- - possibilities of exchange of experience on the occasion of MAUSER Know
How Conferences
RUSSELL-STANLEY intends to manufacture and market in the United States of
America plastic container of the types according to the MAUSER PATENT RIGHTS and
the MAUSER KNOW HOW, all as defined in Article I hereof.
Therefore, the contracting parties agree as follows:
ARTICLE 1
LICENSED ARTICLE AND KNOW HOW
LICENSED ARTICLE refers to lid type or open top plastic drums made with or
otherwise involving any of the KNOW HOW made available by MAUSER under this
Agreement and made in accordance with the United States Letters Patent No.
4,177,934.
This Patent is the contractual PATENT RIGHT.
ARTICLE 2
USE OF TRADEMARKS
RUSSELL-STANLEY has the right to use the MAUSER trademark: No. 634.252 for the
LICENSED ARTICLES.
"MAUSER" may be used on the LICENSED ARTICLES by RUSSELL-STANLEY only in
connection with RUSSELL-STANLEY's own name and not as a company name.
The permission to use the trademark extends for the lifetime of the Agreement.
However, it can be cancelled at half year's notice to the end of every calendar
year.
In order to protect the reputation of MAUSER and MAUSER's rights in and to the
Trademarks, RUSSELL-STANLEY agrees that all LICENSED ARTICLES sold by it and
marked with any of MAUSER's Trademarks shall meet the highest quality standards
set by MAUSER. RUSSELL-STANLEY also agrees that MAUSER shall have the right at
any time on not less than two days prior written notice during ordinary business
hours to inspect the premises and facilities of RUSSELL-STANLEY, to inspect the
operations being conducted therein and to inspect and take samples of the
LICENSED ARTICLES manufactured, assembled and/or sold by it and marked with any
of MAUSER's Trademarks, in reasonable quantities, to enable MAUSER to verify
that its quality standards are being met at all times.
2
<PAGE>
ARTICLE 3
CONTRACTUAL TERRITORY
TERRITORY means the United States of America and its territories and
possessions.
ARTICLE 4
LICENSE GRANT AND TRANSMISSION OF KNOW HOW
1. MAUSER hereby grants to RUSSELL-STANLEY a non-exclusive license to
manufacture LICENSED ARTICLES in RUSSELL-STANLEY's plants in the
TERRITORY and to sell empty LICENSED ARTICLES during the life of this
Agreement in the TERRITORY in accordance with the PATENT RIGHT and the
KNOW HOW.
2. Except for the delivery of documents and for assistance provided in the
Agreement, MAUSER will not assume any liability for the risk of
technical production, operation and commercial use of the LICENSED
ARTICLE described in Article 1.
MAUSER declares that the KNOW HOW and the PATENT RIGHT to the best
knowledge of MAUSER do not infringe upon the rights of third parties
with respect to the manufacture of the LICENSED ARTICLE.
3. The transmission of KNOW HOW in the TERRITORY shall be limited to the
present business premises of RUSSELL-STANLEY or any relocation thereof:
Rancho Cucamonga, California; Houston, Texas; Romeoville, Illinois;
Reserve, Louisiana; Nitro, West Virginia; Camden, New Jersey. In case
of establishment of a new location, RUSSELL-STANLEY shall pay a lump
sum charge, the amount of which is to be negotiated in good faith to
compensate MAUSER for its technical assistance in connection with the
start up of said new location.
4. RUSSELL-STANLEY is not authorized to grant sublicenses under the PATENT
RIGHT or to pass the MAUSER KNOW HOW to third parties.
ARTICLE 5
TECHNICAL ASSISTANCE
1. MAUSER will provide RUSSELL-STANLEY during the life of this Agreement
with all information, experience and methods, present and future,
including special techniques and production secrets that are required
to enable technicians
3
<PAGE>
of average qualifications to produce the LICENSED ARTICLES after a
reasonable start-up time.
2. MAUSER will furnish RUSSELL-STANLEY with all presently existing
documents, plans and drawings required for the production, use and
distribution of the LICENSED ARTICLES. All documents, plans and
drawings made available in accordance with this Agreement must not be
used by RUSSELL-STANLEY for purposes other than the execution of this
Agreement.
ARTICLE 6
TRAINING OF SPECIALIST STAFF
1. MAUSER undertakes to acquaint specialists of RUSSELL-STANLEY on
MAUSER's production premises with the manufacture and use of the
LICENSED ARTICLES. In supplementation of any plans and drawings that
may have been made available, suitable specialists of MAUSER will give
further verbal information, explanations and normal additional
instructions for a better understanding of the KNOW HOW.
2. Details of the technical instructions shall be fixed by separate
agreements between the contracting parties. Their agreements shall
relate in particular to the regulation of:
- - the number and duration of instruction courses;
- - the number and technical qualification of the specialists of
RUSSELL-STANLEY to be instructed; and
- - the lodging, boarding, liability and insurance of the specialists.
3. The contracting parties agree that all expenses directly incurred by
personnel of RUSSELL-STANLEY during the training courses, in particular
travel and daily expenses and salaries, will always be at
RUSSELL-STANLEY's charge. However, expenses and costs for MAUSER
personnel for the training and instruction of personnel of
RUSSELL-STANLEY will be borne by MAUSER. Should MAUSER, however, at the
request of RUSSELL-STANLEY send specialists to The United States of
America, the travel and daily expense and salaries for such specialists
will be borne by RUSSELL-STANLEY.
4
<PAGE>
ARTICLE 7
SECRECY
RUSSELL-STANLEY is under strict obligation to keep secret the documents received
from MAUSER and the KNOW HOW transmitted by MAUSER from the commencement of
negotiations of this Agreement and during its life. Such obligation to secrecy
shall continue even after termination of this Agreement for any cause. Except
for information (a) which enters the public domain without the fault or
negligence of RUSSELL-STANLEY or (b) which RUSSELL-STANLEY receives from a third
party who is legally entitled to such information and to communicate it to
RUSSELL-STANLEY. RUSSELL-STANLEY undertakes to take all precautionary measures
necessary for the maintenance of such secrecy (also for their employees).
ARTICLE 8
KNOW HOW FEES AND ROYALTIES
For LICENSED ARTICLES manufactured under this Agreement RUSSELL-STANLEY shall
pay to MAUSER until 31.12.1996 a combined royalty and KNOW HOW fee of **** of
the net invoice value of all LICENSED ARTICLES manufactured or sold by
RUSSELL-STANLEY under the authority of this Agreement.
Starting from January 1st, 1997 the combined royalty and KNOW HOW fee will be
**** of the net invoice value per LICENSED ARTICLE.
The net invoice value shall be deemed to be the sales price billed by
RUSSELL-STANLEY after deduction of taxes on sales, and/or turnover and/or the
added value, costs for packaging, transport and insurance, credits and returns
and customery trade discounts. Where material is supplied free of charge, its
current value shall be added to the sales price.
If taxes are payable in the United States of America on the KNOW HOW fee,
RUSSELL-STANLEY shall be responsible for the payment of such taxes and shall
remit MAUSER the net amount due to MAUSER after deduction of such taxes.
5
<PAGE>
RUSSELL-STANLEY shall observe the Double Taxation Agreement between the United
States of America and the Federal Republic of Germany when deducting such taxes
and shall furnish MAUSER with all receipts issued for such taxes deducted by
RUSSELL-STANLEY and paid to the revenue authorities in the TERRITORY.
ARTICLE 9
KNOW HOW FEE ACCOUNTS AND PAYMENTS
1. RUSSELL-STANLEY shall maintain complete records at its Corporate
Headquarters relating to licensed production and sales. Within 30
(thirty) days after the end of each calendar quarter of this Agreement
up to and including the end of the calendar quarter following
termination of this Agreement RUSSELL-STANLEY shall render a written
report to MAUSER listing the total net sales of the LICENSED ARTICLE
produced and sold by RUSSELL-STANLEY during such calendar quarter and
the royalty due thereon. Each report so rendered shall be accompanied
by the required royalty payment.
2. MAUSER shall have the right during normal business hours on 3 (three)
days prior written notice at its own expense and not more than once in
any calendar quarter to have the pertinent records of RUSSELL-STANLEY
examined by an independent certified public accountant for the purpose
of verifying the reports rendered hereunder, provided, however, any
report of the accountant to MAUSER shall be made in such a manner that
all information properly deemed confidential by RUSSELL-STANLEY will
not be disclosed to MAUSER and further provided that in the event
MAUSER's accountants' report is not accepted by RUSSELL-STANLEY or
acceptable adjustments made thereon, confidential information may be
disclosed as necessary to MAUSER and its attorneys.
ARTICLE 10
LIFE OF AGREEMENT
1. This Agreement will come into effect on being signed by the latest
contracting party commencing with January 1, 1995. Therefore, the first
contract year will end on December 31, 1995. The first contractual
period will be five years.
2. After December 31, 1999, this Agreement will be tacitly renewed by
periods of one year each, unless notice of cancellation by registered
letter is given by either contracting party not later than six months
before expiry of any contract year. All notices given pursuant to this
Article 10.2 shall be in writing and delivered by facsimile
transmission and confirmed by international overnight
6
<PAGE>
delivery service, delivery receipt requested, or the functional
equivalent thereof at the time of notice. Decisive date for the
observance of the period of notice shall be the date of receipt of the
notice.
3. MAUSER has the right to cancel this Agreement by written notice of
cancellation and with immediate effect for any of the following, if
RUSSELL-STANLEY is in default of a material obligation resulting from
this Agreement, especially with the payment of the KNOW HOW and License
fees, or has violated material obligations under the Agreement and has
not remedied such violation within three months after receipt of a
corresponding notice by MAUSER to do so,
RUSSELL-STANLEY undertakes measures which are a material breach of
trust and/or breach of secrecy,
****
4. RUSSELL-STANLEY has the right to cancel this Agreement by written
notice of cancellation and with immediate effect, if
- - MAUSER does not fulfill material obligations under this Agreement
within three months after having received a corresponding notice to do
so,
5. In the event of any adjudication of bankruptcy, assignment for the
benefit of creditors or levy of execution directly involving RUSSELL
STANLEY or MAUSER, the other shall have the immediate right to
terminate this Agreement by giving written notice to the other party
hereto,
6. In the event of a premature termination of this Agreement by
cancellation all rights of RUSSELL-STANLEY arising from this Agreement
will cease by the latest two months after receipt of the notice of
cancellation. The contractual KNOW HOW fees shall be payable until that
date, when RUSSELL-STANLEY loses its rights resulting from this
Agreement.
7. Within one month after expiry or termination of this Agreement for any
cause RUSSELL-STANLEY shall return all documents and drawings received
from MAUSER. Upon the termination of this Agreement all rights of the
contracting parties from this Agreement will cease, with the exception
of those provided in its Article 7 (Secrecy).
7
<PAGE>
8. Should this Agreement expire in accordance with paragraph 10.2 hereof,
RUSSELL-STANLEY shall have the absolute non-exclusive right to use the
Know How forever thereafter free of any and all royalties and fees.
9. ****.
ARTICLE 11
APPLICABLE LAW, JURISDICTION
1. This Agreement has been drawn up in English. Any amendments and
additions to this Agreement must be made in writing and signed by both
parties to become valid.
2. The contracting parties have agreed that as a whole and in all its
individual provisions this Agreement is subject to German substantive
and procedural law, except for the PATENT RIGHT which falls under the
patent law of the United States of America.
3. Any and all disputes arising from or in connection with the execution,
delivery, performance or interpretation and construction of this
Agreement shall be submitted to binding arbitration before a single
arbitrator in Zurich, Switzerland, in accordance with the rules and
regulations of the International Chamber of Commerce except that where
such rules and regulations differ from the provisions of this Article
12.3 the latter shall govern. There shall be no discovery, the
arbitrator shall be selected within 30 days of the service of the
written demand for arbitration, the first hearing shall be conducted
within 60 days of the service and shall continue day to day until
completed. The decision shall be rendered within 15 business days from
the date of the last hearing, shall set forth the decision and the
reasons for same and shall be unappealable except for fraud or bias.
The loser shall pay all the administrative costs of the arbitration and
the winners costs including without limitation attorneys' fees,
experts' fees, reasonable travel and living costs. The winning party
shall
8
<PAGE>
have the right to seek confirmation of the arbitrator's award in any of
competent jurisdiction over the losing party without objection.
ARTICLE 12
SUBSTITUTION CLAUSE
Should any individual provision Of this Agreement be or become void, or should a
gap be ascertained in this Agreement, the validity of the other provisions shall
not be affected thereby. As a substitute for the provision, which is void or
inoperative, or for the purpose of filling the gap, an appropriate arrangement
shall be valid, which, if it is legally possible, shall be as close as possible
to what the contracting parties would have reasonably intended, had they
considered that point. If a provision is void or inoperative owing to measures
or outputs or times (periods or time limits) indicated therein, this shall be
replaced by a measure which is as close as legally possible to the provision in
question.
ARTICLE 13
The parties to this Agreement are aware that their contractual relationship has
been renewed by a group of agreements signed today, namely
1. KNOW HOW and LICENSING AGREEMENT L-Ring USA;
2. LICENSING AGREEMENT L-RING Canada;
3. KNOW HOW and LICENSING AGREEMENT Open Top USA and
4. LICENSING AGREEMENT L-Ring USA between RUSSELL-STANLEY CORP. and HUNTER
DRUM LTD.
5. Release of any rights and obligations under the L-RING AGREEMENT of
January 1, 1995.
Bruhl, 26.06.1995 Red Bank,
_____________________________ _____________________________
MAUSER-WERKE RUSSELL-STANLEY
G M B H CORPORATION
By /s/Dr. Burgdorf /s/Effnert By /s/John Priesing
__________________________________ _____________________________________
Dr. Burgdorf Effnert John Priesing
(Chief Exec. Officer) (Director) (President)
9
Exhibit 10.10
Certain portions of
this Exhibit have
been omitted and
filed separately
pursuant to a request
for confidential
treatment. The Symbol
"****" has been
inserted in place of
the portions so
omitted.
BETWEEN MAUSER-WERKE GMBH
SCHILDGESSTR. 71-163
50321 BRUHL
FEDERAL REPUBLIC OF GERMANY
- - hereinafter referred to as "MAUSER"
AND HUNTER DRUMS LIMITED
5420 NORTH SERVICE ROAD
BURLINGTON, ONTARIO L7L 6C7
CANADA
hereinafter referred to as HUNTER DRUMS
the following
KNOW HOW AND PATENT
LICENSING AGREEMENT
With this new Agreement all previous Agreements relating to the subject matter
of the new Agreement and including the KNOW HOW AND PATENT LICENSE AGREEMENT
dated 1, March, 1980 between the parties, letters, etc. become invalid and are
superseded hereby.
PREAMBLE
MAUSER and HUNTER DRUMS have, for approximately fifteen (15) years cooperated to
develop markets for LICENSED ARTICLES, shared technical experience and generally
enjoyed a mutually beneficial relationship, and;
MAUSER possesses several years of experience and knowledge in the manufacture
and marketing of blown plastic container made of thermoplastic synthetic
materials. MAUSER have developed their own machines, appliances and moulds for
the production of such containers.
The experience for the manufacture of blown plastic container, as developed and
patented by MAUSER, relates in particular to:
- - the processing of plastic materials
- - the Industrial design of blown plastic container
- - the design of production plants and equipment
- - selling and marketing, e.g. the special points relating to this market
for plastic packagings, the relevant selection
1
<PAGE>
of suitable plastic container for particular products, information on
previously used and new fields of application and also publicity to
this market as developed by MAUSER
- - the design of plastic container which comply with the requirements
called for under international transport and packing regulations
(especially concerning dangerous products)
- - testing procedures for the operation of plastic container
- - quality control
- - possibilities of exchange of experience on the occasion of MAUSER KNOW
HOW Conferences
HUNTER DRUMS also possess many years of experience and knowledge in the
manufacture and marketing of blow molded plastic containers made of
thermoplastic synthetic materials.
HUNTER DRUMS intends to continue to manufacture in Canada LICENSED ARTICLES
according to the MAUSER PATENT RIGHTS and the MAUSER KNOW HOW, all as defined in
Article 1 hereof.
Therefore, the contracting parties agree as follows:
ARTICLE 1
LICENSED ARTICLES, PATENT RIGHTS AND KNOW HOW
LICENSED ARTICLES means blow molded one piece closed head plastic containers
according to 1H1 of the "Recommendation on the Transport of Dangerous Goods of
the United Nations" (Orange book, 8th edition, page 202, Art. 9.6.7) with
L-Ring, i.e. closed head bung type drums with top handling ring, the bung
opening with an internal thread not exceeding 100 mm in diameter, embraced
within the scope of a valid, unexpired claim of a patent included within the
PATENT RIGHTS and/or produced in accordance with the KNOW HOW made available by
MAUSER under this Agreement for the LICENSED ARTICLES.
PATENT RIGHTS are the following patents and patent applications owned by MAUSER
as well as any reissue, continuation, continuation-in-part or divisional patent
arising therefrom relating to LICENSED ARTICLES.
=============== ========== =========== ============= =========== ==============
APPLICATION NO. PATENT NO. FILING DATE ISSUEING DATE EXPIRY DATE TITLE
=============== ========== =========== ============= =========== ==============
1,114,116 15.12.1981 15.12.1998 Method for
forming roller
chimes
DES.67442 13.11.1990 13.11.2000 L-Ring Drum
(EL-2)
2
<PAGE>
=============== ========== =========== ============= =========== ==============
APPLICATION NO. PATENT NO. FILING DATE ISSUEING DATE EXPIRY DATE TITLE
=============== ========== =========== ============= =========== ==============
1.276,572 20.12.1990 20.12.2007 short L-Ring
DES.68100 27.02.1991 27.02.2001 L-Ring PLUS
1,312,560 12.01.1993 12.01.2010 long L-Ring
1,323,316 19.10.1993 19.10.2010 Footring
2,075,806 21.12.1990 21.12.2010 L-Ring PLUS
2,075,810 21.12.1990 21.12.2020 Internal
Pressure
=============== ========== =========== ============= =========== ==============
PATENT RIGHTS are limited to the LICENSED ARTICLES because some special features
of these patents are also utilized with other drum designs, such as but not
limited to open top drums/lid type drums.
KNOW HOW means all of the KNOW HOW in the possession of MAUSER relating to the
LICENSED ARTICLES, and in particular, but not limited to, technical data,
drawings, photographs, engineering and/or market test reports, models, specimen,
samples and/or other information relating to the LICENSED ARTICLES of this
Agreement.
ARTICLE 2
USE OF TRADEMARKS
HUNTER DRUMS shall mark all LICENSED ARTICLES with such patent Nos. and/or
trademark as MAUSER may reasonably request. HUNTER DRUMS shall have the
non-exclusive right during the term of this Agreement and any renewals or
extensions thereof to use the following Canadian trademark owned by MAUSER:
"L-RING" No. 249 623, No. 213/46564
[TRADEMARK OF MAUSER]
in which event HUNTER DRUMS shall indicate on the goods an (R), in a circle or
"Reg. CA Pat. Off." after the trademark.
1. The name MAUSER (trademark only - not company name) may be used on the
LICENSED ARTICLE produced by HUNTER DRUMS only in connection with
HUNTER DRUMS' own name.
2. In order to protect the reputation of MAUSER and MAUSER's rights in and
to the Trademarks. HUNTER DRUMS agrees that all LICENSED ARTICLES sold
by it and marked with any of
3
<PAGE>
MAUSER's Trademarks shall meet the highest quality standards set by
MAUSER. HUNTER DRUMS also agrees that MAUSER shall have the right at
any time during ordinary business hours to inspect the premises and
facilities of HUNTER DRUMS, to inspect the operations being conducted
therein and to inspect and take samples of the LICENSED ARTICLES
manufactured, assembled and/or sold by it and marked with any of
MAUSER's Trademarks, in reasonable quantities, to enable MAUSER to
verify that its quality standards are being met at all times.
ARTICLE 3
CONTRACTUAL TERRITORY
CONTRACTUAL TERRITORY means the Dominion at Canada and its Provinces and
Territories
ARTICLE 4
LICENSE GRANT AND TRANSMISSION OF KNOW NOW
1. MAUSER hereby grants to HUNTER DRUMS the exclusive license in Canada
(the Contractual Territory) to manufacture LICENSED ARTICLES and to
sell empty LICENSED ARTICLES during the life of this Agreement.
2. There is a separate contract giving the right to HUNTER DRUMS to sell
and to deliver (not to manufacture) the LICENSED ARTICLE in the U.S. as
well.
There is a separate contract giving RUSSELL-STANLEY from their
presently existing manufacturing plants in the U.S. (as at January 1,
1995) the right to sell (not to manufacture) the LICENSED ARTICLE in
CANADA as well.
3. Except for the delivery of documents and for assistance provided in the
Agreement, MAUSER will not assume any liability for the risk of
technical production, operation and commercial use of the LICENSED
ARTICLE described in Article 1.
MAUSER declare that the KNOW HOW and the contractual PATENT RIGHTS to
the best knowledge of MAUSER do not infringe upon the rights of third
parties with respect to the manufacture of the LICENSED ARTICLE.
Possible future patents with regard to the LICENSED ARTICLE are not
included in this contract but MAUSER is prepared to discuss the use of
such patents by HUNTER DRUMS in case such need should arise. In any
event MAUSER shall not
4
<PAGE>
unreasonably withhold the addition and use of any new patents relating
to the LICENSED ARTICLE, and shall give HUNTER DRUMS the right of first
refusal on any patents in the Territory for the LICENSED ARTICLE.
4. HUNTER DRUMS is not authorized to grant sublicenses or to pass the
MAUSER KNOW HOW to third parties except as required in the normal
course of business.
ARTICLE 5
TECHNICAL ASSISTANCE
1. MAUSER will provide HUNTER DRUMS during the life of this Agreement with
all information, experience and methods, present and future, including
special techniques and production secrets that are required to enable
technicians of average qualification to produce the LICENSED ARTICLES
referred to in this Agreement after a reasonable start-up time.
2. MAUSER will furnish HUNTER DRUMS with of documents, plans and drawings
required for the production, use and distribution of the LICENSED
ARTICLES described in this Agreement. All documents, plans and drawings
made available in accordance with this Agreement must not be used for
purposes other than the execution of this Agreement.
ARTICLE 6
TRAINING OF SPECIALIST STAFF
1. MAUSER undertakes to acquaint specialists of HUNTER DRUMS on MAUSER
production premises with the manufacture and use of the LICENSED
ARTICLE described in this Agreement. In supplementation of any plans
and drawings that may have been made available, suitable specialists of
MAUSER will give further verbal information, explanations and normal
additional instructions for a better understanding of the KNOW HOW.
2. Details of the technical instructions shall be fixed by separate
agreements between the contracting parties. Their agreements shall
relate in particular to the regulation of
- - the number and duration of instruction courses
- - the number and technical qualification of the specialists of HUNTER
DRUMS to be instructed
5
<PAGE>
- - the lodging, boarding, liability and insurance of the specialists
3. The contracting parties agree that all expenses directly incurred by
personnel of HUNTER DRUMS during the training courses, in particular
travel and daily expenses and salaries, will always be at HUNTER DRUMS'
charge. However, expenses and cost for MAUSER personnel for the
training and instruction of personnel of HUNTER DRUMS will be borne by
MAUSER. Should MAUSER, however, on the request of HUNTER DRUMS send
specialists to Canada, the travel and daily expenses and salaries for
such specialists will be borne by HUNTER DRUMS.
ARTICLE 7
SECRECY
HUNTER DRUMS is under strict obligation to keep secret the documents received
from MAUSER and the KNOW HOW transmitted by MAUSER, except as required during
the normal course of business, from the commencement of negotiations of this
Agreement and during its life. Such obligation to secrecy shall continue even
after termination of this Agreement for any cause except for information (a)
which enters the public domain without the fault or negligence of HUNTER DRUMS
or (b) which HUNTER DRUMS receives from a third party who is legally entitled to
such information and to communicate it to HUNTER DRUMS. HUNTER DRUMS undertakes
to take all precautionary measures necessary for the maintenance of such secrecy
(also for their employees).
ARTICLE 8
KNOW HOW FEES AND ROYALTIES
HUNTER DRUMS shall pay to MAUSER for the new L-Ring drum as a continuing fee or
royalty **** and for the classic L-Ring drum design **** of the net invoice
value for each LICENSED ARTICLE manufactured under this Agreement.
For L-Ring drums delivered to the United States, HUNTER DRUMS will pay for the
first **** units per year a royalty of ****. In excess of **** units per
year a royalty of **** of the net invoice value per LICENSED ARTICLES has to be
paid.
The net invoice value shall be deemed to be the sales price billed by HUNTER
DRUMS after deduction of taxes on sales, and/for turnover and/for the added
value, duties, brokerage charges, cost for transport and insurance, credits and
returns, brokerage
6
<PAGE>
charges and customary trade discounts. Where material is supplied free of
charge, its current value shall be added to the sales price.
With respect to LICENSED ARTICLES produced by HUNTER DRUMS for its own use or
the use of its affiliated companies the current market price is to be taken as
the basis for calculation of the continuing fee or royalty.
The minimum royalty for each year shall be **** in Canadian funds and both
license fees and minimum royalties to remain constant over the first six year's
period.
If taxes are payable in Canada on the KNOW HOW fee/Royalty, HUNTER DRUMS shall
be responsible for the payment of such taxes and shall remit to MAUSER the net
amount due to MAUSER after deduction of such taxes.
HUNTER DRUMS shall observe the Double Taxation Agreement between Canada and the
Federal Republic of Germany when deducting such taxes and shall furnish MAUSER
with all receipts issued for such taxes deducted by HUNTER DRUMS and paid to the
revenue authorities in the Contractual Territory.
ARTICLE 9
KNOW HOW FEE ACCOUNTS AND PAYMENTS
1. HUNTER DRUMS shall maintain complete records at its Corporate
Headquarters relating to licensed production and sales for a period of
at least 3 (three) years from the date they occurred. Within 60 (sixty)
days after the end of each calendar half of this Agreement up to and
including the end of the calendar half following termination of this
Agreement HUNTER DRUMS shall render a written report to MAUSER listing
the total net sales of the LICENSED ARTICLE produced and sold by HUNTER
DRUMS during such calendar half and the royalty due thereon. Each
report so rendered shall be accompanied by the required royalty
payment.
2. MAUSER shall have the right during normal business hours on 5 (five)
days prior written notice at its own expense and not more than once in
any calendar year to have the pertinent records of HUNTER DRUMS
examined by an independent certified public accountant for the purpose
of verifying the reports rendered hereunder, provided, however, any
report of the accountant to MAUSER shall be made in such a manner that
all information properly deemed confidential by HUNTER DRUMS will not
be disclosed to MAUSER and further provided that in the event MAUSER's
accountants' report is not accepted by HUNTER DRUMS or acceptable
adjustments made thereon,
7
<PAGE>
confidential information may be disclosed as necessary to MAUSER and
its attorneys.
3. All reports supplied to MAUSER by HUNTER DRUMS or any independent
public accountant shall be kept confidential by MAUSER.
ARTICLE 10
INFRINGEMENT
1. In the event that any unlicensed third party infringes any of the
PATENT RIGHTS, affecting the LICENSED ARTICLES by the commercial use,
manufacture and/or sale of the LICENSED ARTICLES in the TERRITORY and
after written notification to MAUSER of the name of the infringer and
place and circumstances of the infringement and delivery of a sample of
the infringing product to MAUSER and after determination that such
infringement requires action because of the economic extent or impact
thereof, ****.
The costs and expenses and the proceeds of such legal action
(preparation and execution) shall be shared equally by MAUSER and
HUNTER DRUMS. MAUSER's share of such cost shall be restricted to and
derived from a fund of one-third (1/3) of license and royalty fees
actually received from HUNTER DRUMS after commencement of legal action
until its termination.
In the event a PATENT RIGHT Is held to be invalid or has expired, this
Agreement may be terminated at the option of HUNTER DRUMS and/or HUNTER
DRUMS shall not be obligated to pay future license fees to MAUSER
provided the LICENSED ARTICLE produced and sold by HUNTER DRUMS is not
covered by any other valid Canadian patent held by MAUSER.
Should HUNTER DRUMS, in particular in order to continue to receive
Technical Assistance under Art. 5 and Training of Specialist Staff
under Art. 6. elect to continue this Agreement, royalties and fees
shall be continuously payable for the KNOW-HOW in an amount equal to
8
<PAGE>
**** percent of the royalties and fees otherwise specified
hereunder.
ARTICLE 11
LIFE OF AGREEMENT
1. This Agreement will come into effect on being signed by the latest
contracting party commencing with January 1, 1995. Therefore, the first
contractual year will end on December 31, 1995. The first contractual
period will be six years.
2. AfterDecember 31, 2000, this Agreement will be tacitly renewed by
periods of 5 (five) years each, unless notice of cancellation by
registered letter is given by either contracting party not later than
six months before expiry of any contractual period. Decisive date for
the observance of the period notice shall be the date of mail delivery
of the registered letter.
3. MAUSER have the right to cancel this Agreement by written notice of
cancellation and with immediate effect for any of the following, if
- - HUNTER DRUMS is in default with an obligation resulting from this
Agreement, especially with the payment of the KNOW HOW and License
fees, or has violated his obligations under the Agreement and did not
remedy such default or violation within three months after receipt of a
corresponding notice by MAUSER to do so,
- - HUNTER DRUMS undertakes measures which have to be regarded as breach of
trust and/or breach of secrecy.
- - insolvency or bankruptcy proceedings are applied for or ordered for the
property of HUNTER DRUMS,
- - ****
4. HUNTER DRUMS has the right to cancel this Agreement with immediate
effect for an important reason, particularly if S MAUSER do not fulfill
their obligations under this Agreement within three months after having
received a corresponding notice to do so,
- - insolvency or bankruptcy proceedings are applied for or ordered for the
property of MAUSER.
9
<PAGE>
- - MAUSER undertakes measures which have to be regarded as breach of trust
and/or breach of secrecy,
5. In the event of a premature termination of this Agreement by
cancellation all rights of HUNTER DRUMS arising from this Agreement
will cease by the latest two months after receipt of the notice of
cancellation. The contractual KNOW HOW fees shall be payable until that
date, when HUNTER DRUMS loses all rights resulting from this Agreement.
6. Within one month after expiry or termination of this Agreement for any
cause HUNTER DRUMS shall return all documents and drawings received
from MAUSER. Upon the termination of this Agreement all rights of the
contracting parties from this Agreement will cease, with the exception
of those provided in its Article 7 (Secrecy).
ARTICLE 12
APPLICABLE LAW, JURISDICTION
1. This Agreement has been drawn up in English. Any amendments and
additions to this Agreement must be made in writing and signed by both
parties to become valid.
2. The contracting parties have agreed that as a whole and in all its
individual provision this Agreement is subject to German substantive
and procedural law, except for the contractual patent rights which fall
under Canadian patent law.
3. Court of jurisdiction for all disputes arising from this Agreement
shall be the District Court in Dusseldorf (Chamber for Patent
Disputes), FRG.
4. Place of performance for all obligations under this Agreement for both
contracting parties shall be Cologne, FRG.
ARTICLE 13
SUBSTITUTION CLAUSE
Should any individual provision of this Agreement be or become void, or should a
gap be ascertained in this Agreement, the validly of the other provisions shall
not be affected thereby. As a substitute for the provision, which is void or
inoperative, or for the purpose of filling the gap, an appropriate arrangement
shall be valid, which, if it is legally possible, shall be as close as possible
to what the contracting parties would have intended, had they reasonably
considered that point. If a
10
<PAGE>
provision is void or inoperative owing to measures or outputs or times (periods
or time limits) indicated therein, this shall be replaced by a measure which is
as close as legally possible to the provision in question.
Bruhl, 29.07.1996 Burlington, 31-07-1996
____________________________ ___________________________
MAUSER-WERKE HUNTER DRUMS LIMITED
G M B H
By /s/Dr. Schonwald /s/Effnert By /s/Michael W. Hunter
_________________________________ _____________________________________
Dr. Schonwald Effnert
(Chief Exec. Officer) (Director)
11
Exhibit 10.11
Certain portions of
this Exhibit have
been omitted and
filed separately
pursuant to a request
for confidential
treatment. The Symbol
"****" has been
inserted in place of
the portions so
omitted.
Between MAUSER-WERKE GMBH
SCHILDGESSTR. 71-163
50321 BRUHL
FEDERAL REPUBLIC OF GERMANY
- - hereinafter referred to as "MAUSER"
and HUNTER DRUMS LIMITED
5420 NORTH SERVICE ROAD
BURLINGTON, ONTARIO L7L 6C7
CANADA
hereinafter referred to as HUNTER DRUMS
the following
KNOW HOW AND PATENT
LICENSING AGREEMENT
With this new Agreement all previous Agreements relating to the subject matter
of the new Agreement and including the KNOW HOW AND PATENT LICENSE AGREEMENT
dated 1, March, 1980 between the parties, letters, etc. become invalid and are
superseded hereby.
PREAMBLE
MAUSER and HUNTER DRUMS have, for approximately fifteen (15) years cooperated to
develop markets for LICENSED ARTICLES, shared technical experience and generally
enjoyed a mutually beneficial relationship, and:
MAUSER possess several years of experience and knowledge in the manufacture and
marketing of blown plastic container made of thermoplastic synthetic materials.
MAUSER have developed their own machines, appliances and moulds for the
production of such containers.
The experience for the manufacture of blown plastic container, as developed by
MAUSER, relates in particular to:
- - the processing of plastic materials
- - the industrial design of blown plastic container
- - the design of production plants and equipment
1
<PAGE>
- - selling and marketing, e.g. the special points relating to this market
for plastic packagings, the relevant selection of suitable plastic
container for particular products, information on previously used and
new fields of application and also publicity to this market as
developed by MAUSER
- - the design of plastic container which comply with the requirements
called for under international transport and packing regulations
(especially concerning dangerous products)
- - testing procedures for the operation of plastic container
- - quality control
- - possibilities of exchange of experience on the occasion of MAUSER KNOW
HOW Conferences
HUNTER DRUMS also possess many years of experience and knowledge in the
manufacture and marketing of blow molded plastic containers made of
thermoplastic synthetic materials.
HUNTER DRUMS intends to continue to manufacture in Canada LICENSED ARTICLES
according to the MAUSER PATENT RIGHTS and the MAUSER KNOW HOW, all as defined in
Article 1 hereof.
Therefore, the contracting parties agree as follows:
ARTICLE 1
LICENSED ARTICLES, PATENT RIGHTS AND KNOW HOW
LICENSED ARTICLES refers to lid-type or open-top plastic drums made with or
otherwise involving any of the KNOW HOW made available by MAUSER under this
Agreement and made in accordance with the Canadian patents/patent applications
as defined in Article 1 hereof.
PATENT RIGHTS ore the following patents and patent applications owned by MAUSER
as well as any reissue, continuation, continuation-in-part or divisional patent
arising therefrom relating to LICENSED ARTICLES.
<TABLE>
<CAPTION>
<S> <C> <C> <C> <C> <C>
================== ========== =========== ============= =========== ==================
APPLICATION NO. PATENT NO. FILING DATE ISSUEING DATE EXPIRY DATE TITLE
================== ========== =========== ============= =========== ==================
1.093.015 06.01.1981 06.01.1998 Standard
lid-type drum
1.323.316 19.10.1993 19.10.2010 Footring
PCT/EP95/03586 12.09.1995 12.09.2015 Lid-type drum
(Vanguard design)
Ser. No. 2,134,879 12.05.1993 12.05.2013 HOT Drum
================== ========== =========== ============= =========== ==================
</TABLE>
2
<PAGE>
PATENT RIGHTS are limited to the LICENSED ARTICLES because some special features
of these patents are also utilized with other drum designs, such as but not
limited to closed head drums.
KNOW HOW means all of the KNOW HOW in the possession of MAUSER relating to the
LICENSED ARTICLES, and in particular, but not limited to, technical data,
drawings, photographs, engineering and/or market test reports, models, specimen,
samples and/or other information relating to the LICENSED ARTICLES of this
Agreement.
ARTICLE 2
USE OF TRADEMARKS
HUNTER DRUMS shall mark all LICENSED ARTICLES with such patent Nos. and/or
trademark as MAUSER may reasonably request. HUNTER DRUMS shall have the
non-exclusive right during the term of this Agreement and any renewals or
extensions thereof to use the following Canadian trademark owned by MAUSER: No.
213/46564
[TRADEMARK OF MAUSER]
in which event HUNTER DRUMS shall indicate on the goods an (R), in a circle or
"Reg. CA Pat. Off." after the trademark.
1. The name MAUSER (trademark only - not company name) may be used on the
LICENSED ARTICLE produced by HUNTER DRUMS only in connection with
HUNTER DRUMS' own name.
2. In order to protect the reputation of MAUSER and MAUSER's rights in and
to the Trademarks, HUNTER DRUMS agrees that all LICENSED ARTICLES sold
by it and marked with any of MAUSER's Trademarks shall meet the highest
quality standards set by MAUSER. HUNTER DRUMS also agrees that MAUSER
shall have the right at any time during ordinary business hours to
inspect the premises and facilities of HUNTER DRUMS, to inspect the
operations being conducted therein and to inspect and take samples of
the LICENSED ARTICLES manufactured, assembled and/or sold by it and
marked with any of MAUSER's Trademarks, in reasonable quantities, to
enable MAUSER to verify that its quality standards are being met at all
times.
ARTICLE 3
CONTRACTUAL TERRITORY
3
<PAGE>
CONTRACTUAL TERRITORY means the Dominion of Canada and its Provinces and
Territories.
ARTICLE 4
LICENSE GRANT AND TRANSMISSION OF KNOW HOW
1. MAUSER hereby grants to HUNTER DRUMS an exclusive license in Canada to
manufacture LICENSED ARTICLES and to sell empty LICENSED ARTICLES
during the life of this Agreement in the Territory. In case of standard
lid-type drums (Canadian Patent No. 1,093,015 - US Patent No.
4,177,934), HUNTER DRUMS is allowed to manufacture and sell those drums
in the US as well. In case of Canada the LICENSE is exclusive, in case
of the US the LICENSE is non-exclusive.
2. Except for the delivery of documents and for assistance provided in the
Agreement, MAUSER will not assume any liability for the risk of
technical production, operation and commercial use of the LICENSED
ARTICLE described in Article 1.
MAUSER declare that the KNOW HOW and the contractual PATENT RIGHTS to
the best knowledge of MAUSER do not infringe upon the rights of third
parties with respect to the manufacture of the LICENSED ARTICLE.
Possible future patents with regard to the LICENSED ARTICLE are not
included in this contract but MAUSER is prepared to discuss the use of
such patents by HUNTER DRUMS in case such need should arise. In any
event MAUSER shall not unreasonably withhold the addition and use of
any new patents relating to the LICENSED ARTICLE, and shall give HUNTER
DRUMS the right of first refusal on any patents in the Territory for
the LICENSED ARTICLE.
3. HUNTER DRUMS is not authorized to grant sublicenses or to pass the
MAUSER KNOW HOW to third parties except as required in the normal
course of business.
ARTICLE 5
TECHNICAL ASSISTANCE
1. MAUSER will provide HUNTER DRUMS during the life of this Agreement with
all information, experience and methods, present and future, including
special techniques and production secrets that are required to enable
technicians of average qualification to produce the LICENSED ARTICLES
referred to in this Agreement after a reasonable start-up time.
4
<PAGE>
2. MAUSER will furnish HUNTER DRUMS with all documents, plans and drawings
required for the production, use and distribution of the LICENSED
ARTICLES described in this Agreement. All documents, plans and drawings
made available in accordance with this Agreement must not be used for
purposes other than the execution of this Agreement.
ARTICLE 6
TRAINING OF SPECIALIST STAFF
1. MAUSER undertakes to acquaint specialists of HUNTER DRUMS on MAUSER
production premises with the manufacture and use of the LICENSED
ARTICLE described in this Agreement. In supplementation of any plans
and drawings that may have been made available, suitable specialists of
MAUSER will give further verbal information, explanations and normal
additional instruction for a better understanding of the KNOW HOW.
2. Details of the technical instructions shall be fixed by separate
agreements between the contracting parties. Their agreements shall
relate in particular to the regulation of
- - the number and duration of instruction courses
- - the number and technical qualification of the specialists of HUNTER
DRUMS to be instructed
- - the lodging, boarding, liability and insurance of the specialists
3. The contracting parties agree that all expenses directly incurred by
personnel of HUNTER DRUMS during the training courses, in particular
travel and daily expenses and salaries, will always be at HUNTER DRUMS'
charge. However, expenses and cost for MAUSER personnel for the
training and instruction of personnel of HUNTER DRUMS will be borne by
MAUSER. Should MAUSER, however, on the request of HUNTER DRUMS send
specialists to Canada, the travel and daily expenses and salaries for
such specialists will be borne by HUNTER DRUMS.
ARTICLE 7
SECRECY
HUNTER DRUMS is under strict obligation to keep secret the documents received
from MAUSER and the KNOW HOW transmitted by MAUSER, except as required during
the normal course of business, from the commencement of negotiations of this
Agreement and
5
<PAGE>
during its life. Such obligation to secrecy shall continue even after
termination of this Agreement for any cause except for information (a) which
enters the public domain without the fault or negligence of HUNTER DRUMS or (b)
which HUNTER DRUMS receives from a third party who is legally entitled to such
information and to communicate it to HUNTER DRUMS. HUNTER DRUMS undertakes to
take all precautionary measures necessary for the maintenance of such secrecy
(also for their employees).
ARTICLE 8
KNOW HOW FEES AND ROYALTIES
HUNTER DRUMS shall pay to MAUSER for the lid-type drum (VANGUARD design) and for
the HOT style Open Head Drum as a continuing fee or royalty **** and for the
standard lid-type drum **** of the net invoice value per container for LICENSED
ARTICLES manufactured under this Agreement.
The net invoice value shall be deemed to be the sales price billed by HUNTER
DRUMS after deduction of taxes on sales, and/for turnover and/for the added
value, duties, brokerage charges, cost for transport and insurance, credits and
returns and customary trade discounts. Where material is supplied free of
charge, its current value shall be added to the sales price.
With respect to LICENSED ARTICLES produced by HUNTER DRUMS for its own use or
the use of its affiliated companies the current market price is to be taken as
the basis for calculation of the continuing fee or royalty.
Both license and know-how fees to remain constant over the six years' period.
If taxes are payable in Canada on the KNOW HOW fee/royalty, HUNTER DRUMS shall
be responsible for the payment of such taxes and shall remit to MAUSER the net
amount due to MAUSER after deduction of such taxes.
HUNTER DRUM shall observe the Double Taxation Agreement between Canada and the
Federal Republic of Germany when deducting such taxes and shall furnish MAUSER
with all receipts issued for such taxes deducted by HUNTER DRUMS and paid to the
revenue authorities in the Contractual Territory.
6
<PAGE>
ARTICLE 9
KNOW HOW FEE ACCOUNTS AND PAYMENTS
1. HUNTER DRUMS shall maintain complete records at its Corporate
Headquarters relating to licensed production and sales for a period of
at least 3 (three) years from the date they occurred. Within 60 (sixty)
days after the end of each calendar half of this Agreement up to and
including the end of the calendar half following termination of this
Agreement HUNTER DRUMS shall render a written report to MAUSER listing
the total net sales of the LICENSED ARTICLE produced and sold by HUNTER
DRUMS during such calendar half and the royalty due thereon. Each
report so rendered shall be accompanied by the required royalty
payment.
2. MAUSER shall have the right during normal business hours on 5 (five)
days prior written notice at its own expense and not more than once in
any calendar year to have the pertinent records of HUNTER DRUMS
examined by an independent certified public accountant for the purpose
of verifying the reports rendered hereunder, provided, however, any
report of the accountant to MAUSER shall be made in such a manner that
all information properly deemed confidential by HUNTER DRUMS will not
be disclosed to MAUSER and further provided that in the event MAUSER's
accountants' report is not accepted by HUNTER DRUMS or acceptable
adjustments made thereon, confidential information may be disclosed as
necessary to MAUSER and its attorneys.
3. All reports supplied to MAUSER by HUNTER DRUMS or any independent
public accountant shall be kept confidential by MAUSER.
ARTICLE 10
INFRINGEMENT
1. In the event that any unlicensed third party infringes any of the
PATENT RIGHTS, affecting the LICENSED ARTICLES by the commercial use,
manufacture and/or sale of the LICENSED ARTICLES in the TERRITORY and
after written notification to MAUSER of the name of the infringer and
place and circumstances of the infringement and delivery of a sample of
the infringing product to MAUSER and after determination that such
infringement requires action because of the economic extent or impact
thereof, ****.
7
<PAGE>
shall MAUSER be required to prosecute more than one legal action at any
given time. Should action be taken, there shall be no settlement of any
legal action without the prior written consent of both MAUSER and
HUNTER to such settlement.
The costs and expenses and the proceeds of such legal action
(preparation and execution) shall be shared equally by MAUSER and
HUNTER DRUMS. MAUSER's share of such cost shall be restricted to and
derived from a fund of one-third (1/3) of license and royalty fees
actually received from HUNTER DRUMS after commencement of legal action
until its termination.
In the event a PATENT RIGHT is held to be invalid or has expired, this
Agreement may be terminated at the option of HUNTER DRUMS and/or HUNTER
DRUMS shall not be obligated to pay future license fees to MAUSER
provided the LICENSED ARTICLE produced and sold by HUNTER DRUMS is not
covered by any other valid Canadian patent held by MAUSER.
Should HUNTER DRUMS, in particular in order to continue to receive
Technical Assistance under Art. 5 and Training of Specialist Staff
under Art. 6. elect to continue this Agreement, royalties and fees
shall be continuously payable for the KNOW-HOW in an amount equal to
**** of the royalties and fees otherwise specified hereunder.
ARTICLE 11
LIFE OF AGREEMENT
1. This Agreement will come into effect on being signed by the latest
contracting party commencing with January 1, 1995. Therefore, the first
contractual year will end on December 31, 1995. The first contractual
period will be six years.
2. After December 31, 2000, this Agreement shall be tacitly renewed by
periods of 5 (five) years each, unless notice of cancellation by
registered letter is given by either contracting party not later than
six months before expiry of any contractual period. Decisive date for
the observance of the period of notice shall be the date of mail
delivery of the registered letter.
3. MAUSER have the right to cancel this Agreement by written notice of
cancellation and with immediate effect for any of the following, if
- - HUNTER DRUMS is in default with an obligation resulting from this
Agreement, especially with the payment of the KNOW HOW
8
<PAGE>
and License fees, or has violated his obligations under the Agreement
and did not remedy such default or violation within three months after
receipt of a corresponding notice by MAUSER to do so,
- - HUNTER DRUMS undertakes measures which have to be regarded as breach of
trust and/or breach of secrecy,
- - insolvency or bankruptcy proceedings are applied for or ordered for the
property of HUNTER DRUMS,
- - ****
4. HUNTER DRUMS has the right to cancel this Agreement with immediate
effect for an important reason, particularly if
- - MAUSER do not fulfill their obligations under this Agreement within
three months after having received a corresponding notice to do so,
- - insolvency or bankruptcy proceedings are applied for or ordered for the
property of MAUSER,
- - MAUSER undertakes measures which have to be regarded as breach of trust
and/or breach of secrecy,
5. In the event of a premature termination of this Agreement by
cancellation all rights of HUNTER DRUMS arising from this Agreement
will cease by the latest two months after receipt of the notice of
cancellation. The contractual KNOW HOW fees shall be payable until that
date, when HUNTER DRUMS loses all rights resulting from this Agreement.
6. Within one month after expiry or termination of this Agreement for any
cause HUNTER DRUMS shall return all documents and drawings received
from MAUSER. Upon the termination of this Agreement all rights of the
contracting parties from this Agreement shall cease, with the exception
of those provided in its Article 7 (Secrecy).
ARTICLE 12
APPLICABLE LAW, JURISDICTION
1. This Agreement has been drawn up in English. Any amendments and
additions to this Agreement must be made in writing and signed by both
parties to become valid.
9
<PAGE>
2. The contracting parties have agreed that as a whole and in all its
individual provisions this Agreement is subject to German substantive
and procedural law, except for the contractual patent rights which fall
under Canadian patent law.
3. Court of jurisdiction for all disputes arising from this Agreement
shall be the District Court in Dusseldorf (Chamber for Patent
Disputes), FRG.
4. Place of performance for all obligations under this Agreement for both
contracting parties shall be Cologne, FRG.
ARTICLE 13
SUBSTITUTION CLAUSE
Should any individual provision of this Agreement be or become void, or should a
gap be ascertained in this Agreement, the validity of the other provisions shall
not be affected thereby. As a substitute for the provision, which is void or
inoperative, or for the purpose of filling the gap, an appropriate arrangement
shall be valid, which, if it is legally possible, shall be as close as possible
to what the contracting parties would have intended, had they reasonably
considered that point. If a provision is void or inoperative owing to measures
or outputs or times (periods or time limits) indicated therein, this shall be
replaced by a measure which is as close as legally possible to the provision in
question.
Bruhl, 29.07.1996 Burlington, 31-07-1996
____________________________ ___________________________
MAUSER-WERKE HUNTER DRUMS LIMITED
G M B H
By /s/Dr. Schonwald /s/Effnert By /s/Michael W. Hunter
_________________________________ _____________________________________
Dr. Schonwald Effnert
(Chief Exec. Officer) (Director)
10
Exhibit 10.12
Certain portions of
this Exhibit have
been omitted and
filed separately
pursuant to a request
for confidential
treatment. The Symbol
"****" has been
inserted in place of
the portions so
omitted.
CONSENT AND AGREEMENT
THIS CONSENT AND AGREEMENT made between Hunter Drums Limited ("HDL")
and Mauser-Werke GmbH ("Mauser") as of the 29th day of September, 1997.
WITNESSETH THAT:
WHEREAS HDL and Mauser entered into a Know-How and Patent Licensing
Agreement dated July 31, 1996 ("L-Ring License") in respect of the manufacture
by HDL of L-Ring Plastic Drums using Mauser Patents and Know-How;
AND WHEREAS HDL and Mauser entered into a Know-How and Patent Licensing
Agreement dated July 31, 1996 ("Open-Top License") in respect of the manufacture
by HDL of Open-Top Plastic Drums using Mauser Patents and Know-How
(collectively, the L-Ring License and the Open-Top License are referred to
herein as the "Licenses");
****
AND WHEREAS the shareholders of HDL are negotiating a proposed
transaction to sell or otherwise dispose of ("Transfer") all of the issued and
outstanding equity securities of HDL to HDL Acquisition Inc., an Ontario
corporation, which is a wholly owned subsidiary of Russell-Stanley Holdings,
Inc. ("Russell-Stanley");
****
NOW THEREFORE in consideration of the premises and other good and
valuable consideration, (the receipt and adequacy of which is hereby
acknowledged), the parties hereby agree as follows:
1. ****
1
<PAGE>
2. HDL agrees to advise Mauser promptly upon the signing of an agreement
relating to the Transfer and upon the closing of the Transfer.
3. Mauser further agrees that upon the closing of the Transfer, the life
of each License will be extended to coincide with the Life of Agreement
set out in Article 11 of the Know-How and Patent Licensing Agreement
between Mauser and Russell-Stanley, dated January 1, 1995.
IN WITNESS WHEREOF this Consent and Agreement has been executed by the
parties hereto as at the date first above written.
MAUSER-WERKE GMBH
Per: /s/ Dr. Bernd Schonwald
__________________________________
Dr. Bernd Schonwald
President & C.E.O.
HUNTER DRUMS LIMITED
Per: /s/ Michael W. Hunter
________________________
Michael W. Hunter
President
Signed under the precondition that Art. 8 of the Contract for HUNTER DRUMS Ltd.
(Know How Fees and Royalties) will be changed as follows:
FOR L-RING DRUMS DELIVERED TO THE UNITED STATES, HUNTER DRUMS WILL PAY A ROYALTY
OF **** OF THE NET INVOICE VALUE PER LICENSED ARTICLES.
HUNTER DRUMS LIMITED MAUSER-WERKE GmbH
Per: Per: /s/ Dr. Bernd Schonwald
______________________________ __________________________________
Michael W. Hunter Dr. Bernd Schonwald
President President & C.E.O.
Bruhl, Sept. 30th, 1997
2
Exhibit 10.20
September 17, 1996 PRIVATE & CONFIDENTIAL
Mr. Robert Singleton
8124 Greencastle Drive
Charlotte, NC 28210
Dear Bob:
On behalf of Vestar Capital Partners and the Board of Directors of Russell-
Stanley Corporation, we are delighted to extend to you this offer to become
President and Chief Executive Officer of Russell-Stanley, Inc. and a member
of its Board of Directors. We are looking forward to your taking charge of
the Company and leading it to sustained growth and profitability in the years
ahead. The balance of this letter will address specific aspects of our
compensation package for you:
Base Compensation: Your base compensation will be $275,000 per
- ----------------- annum. This will be paid to you in weekly
increments.
Incentive Bonus: The incentive bonus, which you will be
- --------------- eligible for beginning in 1997, payable in
1998, is targeted at $150,000 and is based
upon achievement of the Company's 1997
profit plan. Bonus payments will be made in
April of each year, (following issuance of
the audited financial statements) for
performance rendered in the prior year.
Details of the plan are described in the
plan document which you have received.
Long-Term Incentive Plan: The long-term incentive plan, is based on
- ------------------------ the performance of the Corporation over a
three-year time frame (currently 1995-
1997). The targeted long-term incentive for
you, as CEO, will be $75,000 per annum.
This long-term performance incentive is
accrued each year and, provided the three-
year target is achieved by the end of the
three-year plan period, the plan will pay
out ratably over the ensuing three years.
Details of this plan are described in the
<PAGE>
long-term plan document you received. You
will be eligible to participate in the
1995-97 plan, which will payout in 1998-
2000. Your participation will apply to the
year 1997 of this three-year plan.
Stock Option Plan: The stock option plan for you will be
- ----------------- comprised of two types of programs,
Performance Options and Time Vesting
Options.
Time Vesting Options: Will be awarded to you upon joining
-------------------- Russell-Stanley. These will be equivalent
to 1.5% of the current equity of Russell-
Stanley. These shares will vest at the rate
of .5% per annum for each of your first
three years of employment, upon your
anniversary date. The strike price of these
options will be the fair market value of
the corporation's shares on the first day
of your employment with the Corporation.
Performance Options: These options, totaling 1.5% of the current
------------------- Russell-Stanley equity, will be awarded to
you as an incentive, and granted upon your
achievement of the Corporation's stated
business goals and financial targets for
each of the first five years of your
employment. These options will vest upon
award. The strike price of these incentive
options shall be the fair market value of
the shares, to be calculated on the day of
the grant award.
In the case of a change of control, you
shall be 100% vested in both options
programs.
Company Car and Auto
Allowance: You will be entitled to the lease of a
- --------- Buick Park Avenue or equivalent automobile.
Expenses associated with driving and
maintaining the vehicle, including
insurance, will be covered by Company
policy. This is a taxable benefit, which
will be reflected on your W-2 Form.
-3-
<PAGE>
Company Benefits: You and your family will be entitled to the
- ---------------- Company medical, dental, disability and
life insurance plans. Copies of these plans
have been given to you.
Relocation Package: Russell-Stanley's relocation package
- ------------------ includes coverage of house-hunting
expenses, temporary living expenses and
transaction costs associated with
selling/buying your old/new homes. This
service is managed by PHH Relocation Inc.,
for Russell-Stanley. The plan is generous
and basically covers all the costs incurred
in relocating to New Jersey.
Term of Employment: Russell-Stanley offers an initial two-year
- ------------------ term of employment and/or compensation
which will, after year one, become a
rolling one-year employment/compensation
guarantee. This package applies solely to
your base salary compensation. In the event
of change of control, responsibility for
this offer shall transfer to the new owners
of Russell-Stanley.
Authority: You shall assume the President & CEO title
- --------- on the first day of employment. There will
be a transition period, which will range
from three to a maximum of six months,
during which time the Chairman will
transfer his knowledge, contacts and
experience and transition out of the
management of Russell-Stanley.
<PAGE>
Start Date: Approximately 30 days from date of
- ---------- acceptance of this employment offer.
Bob, we are pleased you have agreed to join us and we are excited about the
prospect of, together, building Russell-Stanley into a significantly larger
and more profitable enterprise.
Very truly yours,
/s/ Daniel W. Miller
Daniel W. Miller
Managing Director
AGREED & ACCEPTED BY
/s/ Robert L. Singleton
Name: ROBERT L. SINGLETON
Date: 9/20/96
-------------------
cc: Daniel O'Connell
Arthur Nagle
John Priesing
-5-
Exhibit 10.22
LICENSE AGREEMENT
-----------------
AGREEMENT entered into the 7th day of February, 1997 by and between GALLAY SA
having its offices at 1-3 rue de la Poterie - 93200 SAINT-DENIS, France
(hereinafter called "Licensor") and HUNTER DRUMS LIMITED, 5420 North Service
Road, BURLINGTON, ONTARIO, Canada (hereinafter called "Licensee").
WITNESSETH
----------
Whereas, GALLAY SA, of Paris, France ("Gallay") has developed, perfected and
is using a new process to manufacture steel drums or containers with improved
performances and possesses necessary technical information, confidential
know-how and trade secrets in the production of such containers and is the
owner of US Letters Patent No. 4,697,972, 4,784,282 and 4,781,301 (the
"Patents") and of European Patents No. 0,177,426 and 0,258,087.
Whereas, Licensee is desirous of obtaining, confidential know-how and trade
secrets in the manufacture of such steel containers and a non-exclusive
license for the use thereof and a non-exclusive license under the Patents for
the manufacture and sale of such steel containers in the North of America.
Now, therefore, in consideration of the premises, the mutual undertakings and
obligations of the parties hereto, it is hereby agreed as follows:
<PAGE>
I - DEFINITIONS
- ---------------
The term "Products" as used herein shall mean steel containers which are
manufactured in accordance with Gallay's process, hereinabove mentioned
technical information, confidential know-how and trade secrets and the
Patents. The term "Plant" as used herein is defined as a Plant equipped to
manufacture "Products".
II - LICENSE
- ------------
a) Subject to the provisions and conditions herein, in exchange for each
fee paid under Article IV for each Plant, hereinafter referred to as
"fully paid up License", Licensor hereby grants to Licensee a fully paid
up non-exclusive, non-transferable and non-divisible License in the United
States and Canada, only to use the technical information, confidential
know-how and trade secrets as set forth in Article III hereof, in the
manufacture of Products at the Plant(s) wherever located in Canada.
b) Subject to the provisions and conditions herein, Licensor also grants to
Licensee for the term hereof a fully paid up non-exclusive, non-transfer-
able and non-divisible License to make, use and sell said Products under
the Patents and under any other patent where Licensee's licensed practice
hereunder would be within the scope of any claim of the Patents.
-2-
<PAGE>
III - KNOW-HOW AND TECHNICAL ASSISTANCE
- ---------------------------------------
a) As soon as practicable, after execution of this Agreement, and payment
of the initial fee hereinafter set forth in Article IV, Licensor will
provide Licensee with necessary technical information, procedures,
technical skills and drawings (in manuals, in English and in the metric
system) for the manufacture of the Products at the Plant(s).
Licensor further agrees to provide all technical information,
confidential knowhow and trade secrets periodically, to the extent
originated by Gallay, existing and available and "up-to-date", for the
purpose of including intervening or additional technical
advancements made by Gallay for the manufacture of Products at said Plant
under Article II for which said fee has been paid under Article IV.
b) As soon as practicable after receipt of the fee set forth hereinafter
and delivery of the manuals referred to above, Licensor agrees to make
necessary arrangements so that Licensee's technicians (two persons
maximum) will be received by Gallay in its plants for training at a
mutually acceptable time and for a period not to exceed two weeks.
Licensee agrees to pay all expenses involved including salaries,
traveling and living expenses of such technicians.
-3-
<PAGE>
c) If deemed necessary by Licensee that the aforesaid period would exceed
two weeks, Licensee agrees to compensate Gallay additionally for such
time exceeding two weeks in accordance with the per diem rate schedule
attached hereto and made a part hereof.
d) During the period of one year following the start or initiation of the
process by Licensee in its facilities, Licensor agrees, upon the
establishment of the necessity thereof and upon request by Licensee, to
make necessary arrangements for Gallay to provide Licensee with technical
assistance at Licensee's facilities in Canada to the extent of one
engineering man week, and at mutually acceptable time. Licensee agrees to
pay to Gallay reasonable travelling and living expenses of Gallay's
employees or representatives engaged in such additional technical
assistance, and further Licensee agrees to compensate Gallay therefor
in accordance with the per diem rate schedule attached hereto and made a
part hereof.
IV - FEES AND ROYALTIES
- -----------------------
a) Licensee agrees to pay to Licensor a one time fee in the amount of
Canadian $ 30,000 for the first Plant. This payment shall be due and
payable at the time of execution of this Agreement.
-4-
<PAGE>
b) In case of an additional Plant or Plants, an additional payment of
Canadian $ 20,000 if located in Canada and of US $ 20,000 if located in
another country shall be due and payable at the time each additional Plant
is put in service.
c) The fees paid hereunder shall not be refundable to Licensee under any
circumstances subject to the terms of Article VII (d).
d) The payments set forth in paragraphs (a) and (b) above shall be
attributable to the disclosure of technical information,
confidential know-how and trade secrets and technical assistance as
hereinabove provided. The License under patent rights, granted in
Article II, shall continue for the life of patents licensed hereunder.
V - PAYMENTS AND RECORDS
- ------------------------
a) Licensee agrees that Licensor shall have the right to select an
independent auditor, acceptable to Licensee, which such auditor shall
inspect records of Licensee to report to Gallay the number of Plants.
b) In the event that errors are found by the auditor, Licensee agrees to
pay the full cost of auditing and any other fees and costs encountered by
Licensor for any proceedings involving failure to pay the agreed amounts
herein requested.
-5-
<PAGE>
c) Licensor may at its option demand interest at a rate commensurate with
interest rates prevailing at the time but not less than 1% per month or
part thereof that payments are overdue.
d) Payments to Licensor by Licensee under the provisions set forth in
Article IV above are to be made without any deductions whatsoever for any
tax or other reason.
VI - PATENT INFRINGEMENT AND PATENT ENFORCEMENT
- -----------------------------------------------
a) In the event that Licensor declines to institute suit for infringement,
Licensee shall have the right, but not the obligation, to commence and
prosecute, in the names of Licensor and Licensee, an action for
infringement of any one or more of the Patents. If Licensee shall commence
and prosecute an action for infringement of any one or more of the
Patents, Licensee shall control and make all decisions in prosecuting and
settling any such action; provided, that Licensor shall have the right to
participate and shall be consulted prior to the making of such
decisions. Licensee shall pay its costs and expenses of commencing and
prosecuting any infringement action, and Licensor shall pay any costs
and expenses, including its attorney's fees, that Licensor may incur in
any action for infringement. In the event of a favorable monetary
judgment of patent infringement, Licensee and Licensor shall receive, from
-6-
<PAGE>
said monetary judgment, reimbursement of their respective costs, expenses
and attorney's fees. After payment thereof, the remaining monetary
judgment shall be split sixty percent (60 %) to Licensee and forty percent
(40 %) to Licensor. In any event, Licensor and Licensee shall
cooperate in any infringement action, and Licensor and Licensee, at
no expense to the other, shall make available to each other any relevant
books, records, papers, information, designs, samples, specimens and
the like in their possession or control and shall cause their employees to
be deposed or to testify, whenever requested to do so by the other.
b) In the event that Licensee is sued by another party for infringement of
United States Letters Patent as a direct result of using the process for
the manufacture and sale of Products licensed hereunder, Licensee shall
inform Licensor of any notice of such suit and Licensor agrees to consult
with Licensee as to the reasons for said suit and the defense thereof.
Should such suit be brought for infringement solely as a result of use of
the process and sale of Products manufactured using the process licensed
hereunder, Licensor agrees to defend such suit and pay damages, provided
however, that Licensor's total liability shall not exceed fifty percent
(50 %) of the fees paid by and received from Licensee under the License
Agreement less any amounts previously expended by Licensor in
defense of any action including any damages for infringement as a result
of use of the Process and sale of Products manufactured using the Process
licensed hereunder. Should such suit be brought for infringement
-7-
<PAGE>
against Licensee using other or additional processes, equipment, tools,
etc. . . not specifically required in the process herein disclosed by
Licensor, the Licensee agrees that Licensor shall have no liability or
responsibility for such infringement.
VII - TERMINATION
- -----------------
a) Unless otherwise terminated as provided herein, this Agreement shall
expire at the time of expiration of the last of any patent licensed
hereunder provided however that Licensee's fully paid up right and
License under Article II shall survive such expiration to the extent of
use of technical information, confidential know-how and trade secrets
previously received from Licensor.
b) In the event that Licensee shall fail to pay amounts required under
Article IV hereof when due or to permit the inspection of records as
hereinaove provided, or to comply with other provisions of this Agreement,
Licensor at its option may terminate the License granted hereunder by
giving thirty days notice, in writing, to Licensee of its intention to do
so, and such License shall automatically terminate upon the expiration of
such thirty days period without further action or notice by Licensor,
unless within such thirty days period Licensee shall have rectified and
corrected the breach and default complained of by Licensor.
-8-
<PAGE>
c) Licensor at its option, but subject to Bankruptcy Law, may terminate
this Agreement forthwith and without any liability if Licensee be or
becomes insolvent or makes a general assignment for the benefit of
creditors, or if any proceedings are brought by or against Licensee
seeking reorganization or similar relief under the Bankruptcy Law of the
country in which Licensee is doing business.
d) Licensee, at its option, may terminate the Agreement forthwith if
Licensor shall have failed to perform in accordance with the
requirements of this Agreement. Licensee should be able to obtain fifty
percent (50 %) of fees paid on a pro-rated reimbursement based on twelve
(12) months if such termination of Agreement occurs within one (1) year of
inception.
e) No failure or delay on the part of either Licensor or Licensee to
exercise its right of termination hereunder shall be construed to
prejudice its right of termination for such or for any other breach or
default.
VIII - MISCELLANEOUS
- --------------------
a) Licensee agrees to adhere to the quality of the Products contemporarily
produced by Licensor. For this purpose, Licensee shall permit Licensor's
technicians and employees, at Licensor's sole cost and expense, to
-9-
<PAGE>
examine Licensee's Products and Plants therefor upon request with
reasonable notice.
b) In the event that Licensee or any of its employees, agents, or
representatives shall discover any improvement in the process,
machinery used therein or products made thereby, all as covered by
Licenses under this Agreement, Licensee agrees to disclose such
improvements to Licensor and to grant to Licensor a royalty free, non-
exclusive license for such improvements, inventions and patents in all
countries of the world. Licensor agrees to keep Licensee advised of any
such improvements made available under the conditions of this paragraph
VIII (b).
c) Licensee agrees to keep confidential, as Licensee would maintain its own
information confidential, all information, materials, manuals, drawings,
data and trade secrets in any form received from Licensor pursuant to
this Agreement with notice of confidentiality and Licensee further agrees
to take all reasonable steps to keep confidential all such information in
whatever disclosure necessarily may be made to third parties under the
provisions of paragraph (d) hereof or until such information is otherwise
publicly known, or until such information is non-confidentially disclosed
to a third party through no fault of Licensee or becomes independently
known to Licensee without breach of its agreement of confidentiality
hereunder.
-10-
<PAGE>
d) In the event that Licensee require parts, materials or tools from a
third party supplier thereof, and which utilize confidential information
and know-how of Licensor, Licensee agrees to obtain from such supplier
an agreement to keep such information confidential.
e) Licensee further agrees that upon early termination of this Agreement,
under Article VII paragraph (b), it will return to Licensor all materials
received under this Agreement.
f) Licensor represents that it possesses technical information and
confidential know-how as recited in paragraph (a) of Article III hereof
and has the right to disclose such information and know-how and to license
the use thereof and also has the right to grant license under the
Patents.
g) It is understood that Licensee may produce Products in Canada which
thereafter are exported empty or filled and exported from Canada to
other countries of the world. In such event Licensor would take no action
against Licensee or a customer of Licensee for enforcement of one of its
patents, if any, that may exist in any other country which would
prevent or in any way interfere with the importation into such other
countries of such empty of filled products.
-11-
<PAGE>
h) The License Agreement is personal to Licensee and may not be assigned or
transferred by Licensee except as part of sale or assignment of
Licensee's entire business in Products. Licensor may assign or transfer
this Agreement at any time.
i) Licensor agrees to notify Licensee of any other license hereinafter
granted to a third party not affiliated with Licensor under the know-how
and Patents herein licensed, which other license includes within the
terms thereof royalty or fee payments less than those defined in Article
IV hereof and Licensee will have the right to have a license under all the
same terms and conditions thereof.
j) Notices under this Agreement shall be in writing and shall be sufficient
if sent by registered mail, addressed to the last known address of
the other party.
k) This Agreement shall be construed in accordance with the laws of France.
LICENSOR LICENSEE
/s/ J-C. Carayon /s/ Michael W. Hunter
By: J-C. Carayon By: M.W. Hunter
------------ -----------
HUNTER DRUMS LIMITED
-12-
<PAGE>
ANNEX 1
-------
PER DIEM RATE SCHEDULE
In France Elsewhere
Department Head US $ 315 US $ 625
Engineer US $ 250 US $ 500
-13-
Exhibit 10.23
LICENSE AGREEMENT
-----------------
AGREEMENT entered into the 16th day of April, 1987 by and between
GALLY S.A. a Limited Company, having its Registered Offices at 26 Boulevard
Louise Michel - 92232 GENNEVILLIERS, FRANCE (hereinafter called "Gallay") and
HUNTER DRUMS LIMITED, having its offices at 1121 Pioneer Road - BURLINGTON -
ONTARIO L7M 1K5, CANADA (hereinafter called "Licensee").
W I T N E S S E T H
-------------------
WHEREAS, Gallay S.A. of Paris, France has developed, perfected and
is using a new Triple Seam Process for steel drums or containers, possesses
necessary technical information and confidential know-how in the production
of such containers and is the owner of United States Letters Patent Reissue
No. 29 307.
WHEREAS, Licensee is desirous of obtaining such information and
confidential know-how in the manufacture of such metal containers and a non-
exclusive license for the use thereof and a non-exclusive license under the
aforesaid patents for the manufacture and sale of metal containers.
NOW, THEREFORE, in consideration of the premises, the mutual
undertakings and obligations of the parties hereto, it is hereby agreed as
follows:
I. DEFINITIONS
-----------
The term "Products" as used herein shall mean steel containers in
accordance with Gallay's process and confidential know-how and United States
Letters Patent Reissue No. 29 307.
The term "Production Line" as used herein is defined as a line to
manufacture Products, said line having one welding machine at the beginning
thereof and at least one seaming machine at the end thereof.
II. LICENSE
-------
(a) Subject to the provisions and conditions herein, Gallay hereby
grants to Licensee a non-exclusive, non-transferable and non-divisible right
to use the confidential information and know-how, as defined in Article III
hereof, as used in the manufacture of Products.
(b) Subject to the provisions and conditions herein, Gally also
grants to Licensee a non-exclusive, non-transferable and non-divisible
license under United States Letters Patent Reissue No. 29 307 thereof.
<PAGE>
III. KNOW-HOW AND TECHNICAL ASSISTANCE
---------------------------------
As soon as practicable, after execution of this Agreement and
payment of the fee hereinafter set forth in Article IV, Gallay will provide
to Licensee necessary technical information, procedures, technical skills and
drawings (in manuals, in English and in the metric system) for the
manufacture of the Products. Gallay will also provide at no cost to the
licensee, all technical information, procedures, technical skills and
drawings relevant to any future developments and improvements which pertain
to the manufacture of the Products covered by this Agreement.
IV. FEES AND ROYALTIES
------------------
(a) Licensee agrees to pay to Gallay a fee in the amount of 9,200
US $ per year for a period of five years for each Production Line
established and equipped by Licensee for the manufacture of Products. The
total fee being 46,000 US $ and payable as outlined above, will represent the
total license fee and will guarantee the licensee use of all know-how and
technical assistance as outlined in Article III hereof, indefinitely. The
first payment shall be due and payable at the time of execution of this
Agreement.
(b) The fee paid hereunder, shall not be refundable to Licensee
under any circumstances.
(c) The payment set forth in paragraph (a) above shall be
attributable to the disclosure of information and confidential know-how and
trade secrets.
V. PAYMENTS AND RECORDS
--------------------
(a) Licensee agrees that Gallay shall have the right to select an
independent auditor, acceptable to Licensee, which such auditor shall report
to Gallay the number of Production Lines for Products.
(b) In the event that errors are found by the auditor, Licensee
agrees to pay the full cost of auditing and any other fees and costs
encountered by Gallay for any proceedings involving failure to pay the agreed
amount herein requested.
(c) Payment to Gallay by Licensee under the provisions set forth
in Article IV above are to be made without any deductions whatsoever for any
tax or other reasons. If, because of this clause, the Licensee is assessed
any penalty or withholding fee by the Canadian Government then Gallay shall
accept reduced payments of the license fee to offset such penalty or will
reimburse the Licensee for the total amount of the assessment, whichever is
applicable.
-2-
<PAGE>
VI. PATENT INFRINGEMENT AND PATENT ENFORCEMENT
------------------------------------------
(A) In the event that Licensee is sued by another party for
infringement of a United States Patent or of a Canadian patent as a direct
result of using the process for manufacture of Products licensed hereunder,
Licensee shall inform Gallay of any notice of such suit and Gallay agrees to
consult with Licensee as to the reasons for said suit and the defense
thereof. Should such suit be brought for infringement solely as a result of
use of the process licensed hereunder, Gallay agrees to defend such suit and
pay damages, provided however, that Gallay's total liability shall not exceed
fifty percent (50%) of the fee paid by and received from Licensee. Should
such suit be brought for infringement against Licensee using other or
additional processes, equipment, tools, etc., not specifically required in
the process herein disclosed by Gallay, the Licensee agrees that Gallay shall
have no liability or responsibility for such infringement.
(b) Licensee shall have the right to participate in defense of any
such infringement suit provided, however, that Licensee shall pay its full
own costs of such participation.
VII. MISCELLANEOUS
-------------
(a) Licensee agrees to use its best efforts to promote and sell
Products and, in so doing, to adhere to the quality of the Products
contemporarily produced by Gallay. For this purpose, Licensee shall permit
Gallay's technicians and employees to examine Licensee's licensed Products
and Production Line therefore upon request with reasonable notice.
(b) Licensee agrees to keep confidential all information,
materials, manuals, drawings, data and trade secrets in any form received
from Gallay pursuant to this Agreement with notice of confidentiality and
Licensee further agrees to take all reasonable steps to keep confidential all
such information in whatever disclosure necessarily may be made to third
parties during and after this Agreement, or until such information is
otherwise publicly known.
(c) In the event that Licensee requires parts, materials or tools
from a third party supplier thereof, and which utilize confidential
information and know-how of Gallay, Licensee agrees to obtain from such
supplier an agreement to keep confidential in the form attached hereto as
Exhibit 1.
-3-
<PAGE>
(d) It is understood that Licensee may produce Products in Canada
which thereafter are exported from Canada to other countries of the world
including the United States. In such event Gallay would take no action
against Licensee or a customer of Licensee for enforcement of a patent of
Gallay, if any, that may exist in any other country which would prevent or in
any way interfere with the importation into such other countries of such
products.
(e) This License Agreement is personal to Licensee and may not be
assigned or transferred by Licensee except as part of sale or assignment of
Licensee's entire business in Products.
(f) Notices under this Agreement shall be in writing and shall be
sufficient if sent by registered mail, addressed to the last known address of
the other party.
(g) This Agreement shall be construed in accordance with the laws
of France.
(h) This Agreement shall expire at the time of expiration of the
patent of Gallay licensed hereunder.
(Gallay) (Licensee)
HUNTER DRUMS LIMITED,
By /s/ Pierre-Henri Gallay Per /s/ M.W. Hunter
------------------------ ------------------------
M.W. Hunter, President
-4-
<PAGE>
EXHIBIT 1
----------
In consideration of (Licensee's) order for the manufacture of seaming rolls
and other tooling, which order is hereby acknowledged, (Supplier) agrees to
maintain in confidence all information and data contained in or on or
disclosed by the specifications and drawing numbers furnished to (Supplier)
in connection therewith, and (Supplier) agrees not to disclose to another or
use, either directly or indirectly, for its own benefit said confidential
information, data or specifications, until such information otherwise becomes
public through acts or others than (Supplier).
-5-
EXHIBIT 23.1
INDEPENDENT AUDITORS' CONSENT
We consent to the use in this Amendment No. 1 to Registration Statement No.
333-76057 of Russell-Stanley Holdings, Inc. and subsidiaries on Form S-4 of our
reports dated February 22, 1999 relating to Russell-Stanley Holdings, Inc. and
subsidiaries; dated January 29, 1998 relating to Container Management Services,
Inc. and Hunter Drums Limited; and dated June 8, 1998 relating to Smurfit
Plastic Packaging. All such reports appear in the Prospectus, which is part of
this Registration Statement.
We also consent to the reference to us under the headings "Summary Historical
and Pro Forma Consolidated Financial and Other Data," "Selected Historical
Consolidated Financial and Other Data" and "Experts" in such Prospectus.
/s/Deloitte & Touche LLP
Parsippany, New Jersey
April 30, 1999
[Letterhead of Elliott, Davis & Company]
CONSENT OF INDEPENDENT CERTIFIED PUBLIC ACCOUNTANTS
The Board of Directors
Container Management Services, Inc.
We consent to the use of our report on the financial statements of
Container Management Services, Inc. as of and for the year ended December 31,
1996 included in this Registration Statement on Amendment No. 1 to Form S-4 for
Russell-Stanley Holdings, Inc. and to the reference to our Firm under the
caption "Experts" in the Prospectus.
/s/ELLIOTT, DAVIS & COMPANY, L.L.P.
ELLIOTT, DAVIS & COMPANY, L.L.P.
Greenville, South Carolina
April 29, 1999
