Intellectual Property; Software. (a) SCHEDULE 5.15 contains a list and description (showing in each case the registered or other owner, expiration date and registration or application number, if any) of all Copyrights, Patents and Trademarks (including all assumed or fictitious names under which any Seller is conducting the Business or has within the previous five years conducted the Business) owned by, licensed to or used by any Seller in connection with the conduct of the Business. (b) SCHEDULE 5.15 contains a list and description (showing in each case any owner, licensor or licensee) of all Software owned by, licensed to or used by any Seller primarily in the conduct of the Business, provided that SCHEDULE 5.15 does not list mass market Software licensed to any Seller that is available in consumer retail stores or otherwise generally commercially available and subject to "shrink-wrap" or "click-through" license agreements. (c) SCHEDULE 5.15 contains a list and description of all agreements, contracts, licenses, sublicenses, assignments and indemnities that relate to (i) any Copyrights, Patent Rights or Trademarks listed in SCHEDULE 5.15, (ii) any Trade Secrets owned by, licensed to or used by any Seller used primarily in or relating primarily to the Business or (iii) any Software listed in SCHEDULE 5.15. (d) Except as disclosed in SCHEDULE 5.15, each Seller either: (i) owns the entire right, title and interest in and to the Intellectual Property and Software included in the Purchased Assets, free and clear of any Encumbrance, or (ii) has the perpetual, royalty-free right to use the same. Except as set forth in SCHEDULE 5.15, each Seller is listed in the records of the appropriate United States, state or foreign registry as the sole current owner of record for each application or registration identified in SCHEDULE 5.15 as being owned by such Seller. (e) Except as disclosed in SCHEDULE 5.15: (i) all registrations for Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller are valid and in force, and all applications to register any unregistered Copyrights, Patent Rights and Trademarks so identified are pending and in good standing, all without challenge of any kind; (ii) the Intellectual Property owned by any Seller has not been cancelled or abandoned and is valid and enforceable; and (iii) such Seller has the sole and exclusive right to bring actions for infringement, misappropriation, dilution, violation or unauthorized use of the Intellectual Property and Software owned by such Seller, and to the knowledge of each Seller, there is no basis for any such action. Correct and complete copies of: (x) registrations for all registered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller; and (y) all pending applications to register unregistered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller (together with any subsequent correspondence or filings relating to the foregoing) have heretofore been delivered by Sellers to Buyer. (f) Except as set forth in SCHEDULE 5.15, (i) no infringement, misappropriation, violation or dilution of any Intellectual Property, or any rights of publicity or privacy relating to the use of names, likenesses, voices, signatures or biographical information, of any other Person has occurred or results in any way from the operations of the Business, (ii) no claim of any infringement, misappropriation, violation or dilution of any Intellectual Property or any such rights of any other Person has been made or asserted in respect of the operations of the Business and (iii) none of the Sellers has had notice of, or knowledge of any basis for, a claim against any Seller that the operations, activities, products, software, equipment, machinery or processes of the Business infringe, misappropriate, violate or dilute any Intellectual Property or any such rights of any other Person. (g) Except as disclosed in SCHEDULE 5.15: (i) the Software included in the Purchased Assets is not subject to any transfer, assignment, change of control, site, equipment, or other operational limitations; (ii) each Seller has maintained and protected the Software included in the Purchased Assets that it owns (the "Owned Software") (including all source code and system specifications) with appropriate proprietary notices, confidentiality and non-disclosure agreements and such other measures as are necessary to protect the proprietary, trade secret or confidential information contained therein; (iii) the Owned Software has been registered or is eligible for protection and registration under applicable copyright law and has not been forfeited to the public domain; (iv) each Seller has copies of all releases or separate versions of its Owned Software so that the same may be subject to registration in the United States Copyright Office; (v) each Seller has complete and exclusive right, title and interest in and to its Owned Software; (vi) each Seller has developed its Owned Software through its own efforts and for its own account without the aid or use of any consultants, agents, independent contractors or Persons (other than Persons that are employees of such Seller); (vii) the Owned Software does not infringe, misappropriate, violate or dilute any Intellectual Property of any other Person; (viii) any Owned Software includes the source code, system documentation, statements of principles of operation and schematics, as well as any pertinent commentary, explanation, program (including compilers), workbenches, tools, and high-level or proprietary language used for the development, maintenance, implementation and use thereof, so that a trained computer programmer could develop, maintain, support, compile and use all releases or separate versions of the same that are currently subject to maintenance obligations by any Seller; (ix) there are no agreements or arrangements in effect with respect to the marketing, distribution, licensing or promotion of the Owned Software by any other Person; (x) the Owned Software complies with all applicable Requirements of Laws relating to the export or re-export of the same; and (xi) the Owned Software may be exported or reexported to all countries without the necessity of any license, other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. Department of Commerce and/or the United States State Department. (h) Except as disclosed in SCHEDULE 5.15, all employees, agents, consultants or contractors who have contributed to or participated in the creation or development of any Intellectual Property or Software on behalf of any Seller or any predecessor in interest thereto: (i) has created such materials in the scope of his or her employment; (ii) is a party to a valid and enforceable "work-for-hire" agreement under which such Seller is deemed to be the author of the Copyrights; or (iii) has executed an assignment or an agreement to assign in favor of such Seller (or such predecessor in interest, as applicable) of all right, title and interest in such material.
Appears in 2 contracts
Samples: Asset Purchase Agreement (Peapod Inc), Asset Purchase Agreement (Streamline Com Inc)
Intellectual Property; Software. (a) SCHEDULE 5.15 contains a list and description (showing in each case any product, device, process, service, business or publication covered thereby, the registered or other owner, expiration date and registration or application number, if any) of all Copyrights, Patents Patent Rights and Trademarks (including all assumed or fictitious names under which any Seller or Hastings Canada is conducting the Business or has within the previous five years conducted the Business) owned by, licensed to or used by any Seller or Hastings Canada in connection with the conduct of the Business, including the Hastings Trade Names and the Trademark "Hastings", which Trademark consists of the spelling of such word pierced by an arrow running from left to right and is further depicted on SCHEDULE 5.15 (the "HASTINGS TRADEMARK").
(b) SCHEDULE 5.15 contains a list and description (showing in each case any owner, licensor or licensee) of all Software owned by, licensed to or used by any Seller primarily or Hastings Canada exclusively in the conduct of the Business, provided PROVIDED that SCHEDULE 5.15 does not list mass market Software licensed to any Seller or Hastings Canada that is available in consumer retail stores or otherwise generally commercially available and subject to "shrink-wrap" or "click-through" license agreements.
(c) SCHEDULE 5.15 contains a list and description (showing in each case the parties thereto and the material terms thereof) of all agreements, contracts, licenses, sublicenses, assignments and indemnities that which relate to (i) any Copyrights, Patent Rights or Trademarks listed in SCHEDULE 5.15, (ii) any Trade Secrets owned by, licensed to or used by any Seller used primarily or Hastings Canada in or relating primarily to connection with the conduct of the Business or (iii) any Software listed in SCHEDULE 5.15.
(d) Except as disclosed in SCHEDULE 5.15, each either Seller eitheror Hastings Canada: (i) owns the entire right, title and interest in and to the Intellectual Property and Software included in the Purchased Assets, free and clear of any Encumbrance, Encumbrance (other than Permitted Encumbrances); or (ii) has the perpetual, royalty-free right to use the same. Except as set forth in SCHEDULE 5.15, each Seller is listed in the records of the appropriate United States, state or foreign registry as the sole current owner of record for each application or registration identified in SCHEDULE 5.15 as being owned by such Seller.
(e) Except as disclosed in SCHEDULE 5.15: (i) all registrations for Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller or Hastings Canada are valid and in force, and all applications to register any unregistered Copyrights, Patent Rights and Trademarks so identified are pending and in good standing, all without challenge of any kind; (ii) the Intellectual Property (other than the Trademarks) owned by any Seller has not been cancelled or abandoned and Hastings Canada is valid and enforceable; and (iii) such Seller has the sole and exclusive right to bring actions for infringement, misappropriation, dilution, violation or unauthorized use of the Intellectual Property and Software owned by such Seller, and to the knowledge of each Seller, there is no basis for any such action. Correct and complete copies of: (x) registrations for all registered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller; and (y) all pending applications to register unregistered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller (together with any subsequent correspondence or filings relating to the foregoing) have heretofore been delivered by Sellers to Buyer.
(f) Except as set forth in SCHEDULE 5.15, (i) no infringement, misappropriation, violation or dilution of any Intellectual Property, or any rights of publicity or privacy relating to the use of names, likenesses, voices, signatures or biographical information, of any other Person has occurred or results in any way from the operations of the Business, (ii) no claim of any infringement, misappropriation, violation or dilution of any Intellectual Property or any such rights of any other Person has been made or asserted in respect of the operations of the Business and (iii) none of the Sellers has had notice of, or knowledge of any basis for, a claim against any Seller that the operations, activities, products, software, equipment, machinery or processes of the Business infringe, misappropriate, violate or dilute any Intellectual Property or any such rights of any other Person.
(g) Except as disclosed in SCHEDULE 5.15: (i) the Software included in the Purchased Assets is not subject to any transfer, assignment, change of control, site, equipment, or other operational limitations; (ii) each Seller has maintained and protected the Software included in the Purchased Assets that it owns (the "Owned Software") (including all source code and system specifications) with appropriate proprietary notices, confidentiality and non-disclosure agreements and such other measures as are necessary to protect the proprietary, trade secret or confidential information contained therein; (iii) the Owned Software has been registered or is eligible for protection and registration under applicable copyright law and has not been forfeited to the public domain; (iv) each Seller has copies of all releases or separate versions of its Owned Software so that the same may be subject to registration in the United States Copyright Office; (v) each Seller has complete and exclusive right, title and interest in and to its Owned Software; (vi) each Seller has developed its Owned Software through its own efforts and for its own account without the aid or use of any consultants, agents, independent contractors or Persons (other than Persons that are employees of such Seller); (vii) the Owned Software does not infringe, misappropriate, violate or dilute any Intellectual Property of any other Person; (viii) any Owned Software includes the source code, system documentation, statements of principles of operation and schematics, as well as any pertinent commentary, explanation, program (including compilers), workbenches, tools, and high-level or proprietary language used for the development, maintenance, implementation and use thereof, so that a trained computer programmer could develop, maintain, support, compile and use all releases or separate versions of the same that are currently subject to maintenance obligations by any Seller; (ix) there are no agreements or arrangements in effect with respect to the marketing, distribution, licensing or promotion of the Owned Software by any other Person; (x) the Owned Software complies with all applicable Requirements of Laws relating to the export or re-export of the same; and (xi) the Owned Software may be exported or reexported to all countries without the necessity of any license, other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. Department of Commerce and/or the United States State Department.
(h) Except as disclosed in SCHEDULE 5.15, all employees, agents, consultants or contractors who have contributed to or participated in the creation or development of any Intellectual Property or Software on behalf of any Seller or any predecessor in interest thereto: (i) has created such materials in the scope of his or her employment; (ii) is a party to a valid and enforceable "work-for-hire" agreement under which such Seller is deemed to be the author of the Copyrights; or (iii) has executed an assignment or an agreement to assign in favor of such Seller (or such predecessor in interest, as applicable) of all right, title and interest in such material.;
Appears in 1 contract
Samples: Asset Purchase Agreement (Hastings Manufacturing Co)
Intellectual Property; Software. (a) SCHEDULE 5.15 Schedule 5.15(a) contains a list and description (showing in each case the registered or other owner, expiration date and registration or application number, if any) of all registered Copyrights, Patents applications to register Copyrights, Patent Rights and Trademarks (including all assumed or fictitious names under which any Seller is conducting the Business business or has within the previous five years conducted the Businessbusiness) owned by, licensed to or used by any Seller in connection with respect to the conduct of the BusinessPurchased Assets.
(b) SCHEDULE 5.15 Schedule 5.15(b) contains a list and description (showing in each case any owner, licensor or licensee) of all Software owned by, licensed to or used by any the by Seller primarily in with respect to the conduct of the BusinessPurchased Assets, provided that SCHEDULE 5.15 does not list mass market except Software licensed to any Seller that is available in consumer retail stores or otherwise generally commercially available and subject to "“shrink-wrap" or ",” “click-through" ” or similar license agreements.
(c) SCHEDULE 5.15 Schedule 5.15(c) contains a list and description of all agreements, contracts, licenses, sublicenses, assignments and indemnities with respect to the Purchased Assets that relate to to: (i) any Copyrights, Patent Rights or Trademarks listed in SCHEDULE 5.15, required to be identified on Schedule 5.15(a); (ii) any Trade Secrets owned by, by or licensed to or used by any Seller used primarily in or relating primarily to the Business or (iii) any Software listed in SCHEDULE 5.15required to be identified on Schedule 5.15(b).
(d) Except for the Permitted Encumbrances or as disclosed expressly stated in SCHEDULE 5.15, each Seller either: Schedule 5.15(d): (i) Seller owns the entire all right, title and interest in and to the Owned Intellectual Property and Software included in the Purchased AssetsProperty, free and clear of any Encumbranceliens, claims or (ii) has the perpetual, royalty-free right to use the same. Except as set forth in SCHEDULE 5.15, each Seller is listed in the records of the appropriate United States, state or foreign registry as the sole current owner of record for each application or registration identified in SCHEDULE 5.15 as being owned by such Seller.
(e) Except as disclosed in SCHEDULE 5.15: (i) all registrations for Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller are valid and in force, and all applications to register any unregistered Copyrights, Patent Rights and Trademarks so identified are pending and in good standing, all without challenge of any kindEncumbrances; (ii) the Owned Intellectual Property owned by is not subject to any Seller has not been cancelled license (royalty bearing or abandoned royalty free) and is valid not subject to any other arrangement requiring any payment to any person or the obligation to grant rights to any person in exchange; (iii) the Licensed Rights are free and enforceableclear of any royalties, obligations or Encumbrances; (iv) the Owned Intellectual Property and the Licensed Rights are all those material Intellectual Property rights necessary to the conduct of the Business at the Operate Location Pharmacies as presently conducted; and (iiiv) such Seller has the sole and exclusive right to bring actions for infringement, misappropriation, dilution, violation infringement or unauthorized use of the Owned Intellectual Property.
(e) Except as expressly stated in Schedule 5.15(e), the Owned Intellectual Property and Software owned by such Sellerthe Licensed Rights are valid and in force, and the validity of the Owned Intellectual Property and title thereto and validity of the Licensed Rights: (i) have not been questioned in any prior action, suit, investigation or proceeding; (ii) are not being questioned in any pending action, suit, investigation or proceeding; and (ii) to the knowledge of each Seller, there is no basis for are not the subject(s) of any such threatened action. Correct and complete copies of: (x) registrations for all registered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller; and (y) all pending applications to register unregistered Copyrightssuit, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller (together with any subsequent correspondence investigation or filings relating to the foregoing) have heretofore been delivered by Sellers to Buyerproceeding.
(f) Except as set forth expressly stated in SCHEDULE 5.15, Schedule 5.15(f): (i) no infringement, misappropriation, violation or dilution of any Intellectual Property, or any rights of publicity or privacy relating to the use of names, likenesses, voices, signatures or biographical information, of any other Person has occurred or results in any way from the operations of the Business, as presently conducted, does not conflict with and, to the knowledge of Seller, has not been alleged to conflict with any Patents, Trademark, Trade Secret, Copyrights or other rights of others; (ii) no claim the consummation of the transactions contemplated hereby will not result in the loss or impairment of any infringement, misappropriation, violation or dilution of any the Owned Intellectual Property or the right to use any such rights of any other Person has been made or asserted in respect of the operations of Licensed Rights in the Business Business; and (iii) none there are no third parties using any of the Sellers has had notice of, or knowledge of any basis for, a claim against any Seller Owned Intellectual Property that the operations, activities, products, software, equipment, machinery or processes of is material to the Business infringe, misappropriate, violate or dilute any Intellectual Property or any such rights of any other Personas presently conducted.
(g) Except as disclosed expressly stated in SCHEDULE 5.15: Schedule 5.15(g): (i) the Software included in the Purchased Assets is not subject to any transfer, assignment, change of control, site, equipmentSeller owns, or other operational limitationspossesses valid rights to, all Software that is material to the conduct of the Business; and (ii) each Seller has maintained and protected the Software included in the Purchased Assets that it owns (the "Owned Software") (including all source code and system specifications) with appropriate proprietary notices, confidentiality and non-disclosure agreements and such other measures as are necessary to protect the proprietary, trade secret or confidential information contained therein; (iii) the Owned Software has been registered or is eligible for protection and registration under applicable copyright law and has not been forfeited to the public domain; (iv) each Seller has copies of all releases or separate versions of its Owned Software so that the same may be subject to registration in the United States Copyright Office; (v) each Seller has complete and exclusive right, title and interest in and to its Owned Software; (vi) each Seller has developed its Owned Software through its own efforts and for its own account without the aid or use of any consultants, agents, independent contractors or Persons (other than Persons that are employees of such Seller); (vii) the Owned Software does not infringe, misappropriate, violate or dilute any Intellectual Property of any other Person; (viii) any Owned Software includes the source code, system documentation, statements of principles of operation and schematics, as well as any pertinent commentary, explanation, program (including compilers), workbenches, tools, and high-level or proprietary language used for the development, maintenance, implementation and use thereof, so that a trained computer programmer could develop, maintain, support, compile and use all releases or separate versions of the same that are currently subject to maintenance obligations by any Seller; (ix) there are no agreements infringement suits, actions or arrangements in effect proceedings pending or, to the knowledge of Seller threatened, against Seller with respect to the marketing, distribution, licensing any Software owned or promotion of the Owned Software licensed by any other Person; (x) the Owned Software complies with all applicable Requirements of Laws relating to the export or re-export of the same; and (xi) the Owned Software may be exported or reexported to all countries without the necessity of any license, other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. Department of Commerce and/or the United States State DepartmentSeller.
(h) Except as disclosed in SCHEDULE 5.15, all employees, agents, consultants or contractors who have contributed to or participated in the creation or development of any Intellectual Property or Software on behalf of any Seller or any predecessor in interest thereto: (i) has created such materials in the scope of his or her employment; (ii) is a party to a valid and enforceable "work-for-hire" agreement under which such Seller is deemed to be the author of the Copyrights; or (iii) has executed an assignment or an agreement to assign in favor of such Seller (or such predecessor in interest, as applicable) of all right, title and interest in such material.
Appears in 1 contract
Samples: Asset Purchase Agreement (Graymark Healthcare, Inc.)
Intellectual Property; Software. (a) SCHEDULE 5.15 5.4 contains a list and description (showing in each case the registered or other owner, expiration date and registration or application number, if any) of all CopyrightsPatents, Patents and Trademarks (including all assumed or fictitious names under which any Seller is conducting the Business or has within the previous five years conducted the Business) and registered Copyrights owned by, licensed to or used by any Seller in connection with the conduct of the Business.
(b) SCHEDULE 5.15 5.4 contains a list and description (showing in each case any owner, licensor or licensee) of all Software owned by, licensed to or used by any Seller primarily in the conduct of connection with the Business, provided PROVIDED that SCHEDULE 5.15 5.4 does not list mass market Software licensed to any Seller that is available in consumer retail stores or otherwise generally commercially available and subject to "shrink-wrap" or "click-through" license agreements.
(c) SCHEDULE 5.15 5.4 contains a list and description (showing in each case the parties thereto) of all agreements, contracts, licenses, sublicenses, assignments and indemnities that to which Seller or Parent is a party which relate to (i) any Copyrights, Patent Rights or Trademarks listed in SCHEDULE 5.155.4, (ii) any Trade Secrets owned by, licensed to or used by any Seller used primarily in or relating primarily to connection with the Business or Purchased Assets and (iii) any Software listed in SCHEDULE 5.155.4.
(d) Except as disclosed in SCHEDULE 5.155.4, each Seller either: (i) owns the entire right, title and interest in and to the Intellectual Property and to the Software listed or required to be listed in SCHEDULE 5.4 and included in the Purchased Assets, free and clear of any Encumbrance, Encumbrance other than Permitted Encumbrances or (ii) has the perpetual, royalty-free right to use the same. Except as set forth in SCHEDULE 5.15, each Seller is listed in the records of the appropriate United States, state or foreign registry as the sole current owner of record for each application or registration identified in SCHEDULE 5.15 as being owned by such Seller.
(e) Except as disclosed in SCHEDULE 5.15: 5.4, (i) all registrations for Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 5.4 as being owned by any Seller are valid and in force, and all applications to register any unregistered Copyrights, Patent Rights and Trademarks so identified are pending and in good standing, all without challenge of any kind; (ii) the Intellectual Property owned by any Seller has not been cancelled or abandoned and is valid and enforceable; and (iii) such Seller has the sole and exclusive right to bring actions for infringement, misappropriation, dilution, violation or unauthorized use of the Intellectual Property and Software owned by such SellerSeller and included in the Purchased Assets, and to the knowledge Knowledge of each Seller, there is no basis for any such action. Correct and complete copies of: (x) registrations for all registered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller; and (y) all pending applications to register unregistered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller (together with any subsequent correspondence or filings relating to the foregoing) have heretofore been delivered by Sellers to Buyer.
(f) Except as set forth in SCHEDULE 5.155.4, (i) no infringement, misappropriation, misappropriation or violation or dilution of any Intellectual Property, Property has occurred from the operation of the Business or any rights of publicity or privacy relating to the use of names, likenesses, voices, signatures the Purchased Assets as such Business was operated and such Purchased Assets were used on or biographical information, of any other Person has occurred or results in any way from prior to the operations of the BusinessClosing Date, (ii) no claim of any infringement, misappropriation, misappropriation or violation or dilution of any Intellectual Property or any such rights of any other Person has been made or asserted in respect of the operations operation of the Business or the use of the Purchased Assets and (iii) none of the Sellers Seller has not had notice of, or knowledge of any basis for, a claim against any Seller that the operations, activities, products, software, equipment, machinery or processes of included in the Business Purchased Assets infringe, misappropriate, misappropriate or violate or dilute any Intellectual Property or any such rights of any other Person.
(g) Except as disclosed in the software license agreements described in SCHEDULE 5.15: 5.4, (i) the Software listed or required to be listed in SCHEDULE 5.4 and included in the Purchased Assets is not subject to any transfer, assignment, change of control, site, equipment, or other operational limitations; , (ii) each Seller has maintained and protected the Software included in the Purchased Assets that it owns (the "Owned SoftwareOWNED SOFTWARE") (including including, without limitation, all source code and system specifications) with appropriate proprietary notices, confidentiality and non-disclosure agreements and such other measures as are reasonably necessary and customarily used to protect the proprietary, trade secret or confidential information contained therein; , (iii) the Owned Software has been registered or is eligible for protection and registration under applicable copyright law and has not been forfeited to as of the public domain; date hereof, (iv) each Seller has copies of all releases or separate versions of its Owned Software so that the same may be subject to registration in the United States Copyright Office; (v) each Seller has complete and exclusive right, title and interest in and to its the Owned Software; , (vi) each Seller has developed its Owned Software through its own efforts and for its own account without the aid or use of any consultants, agents, independent contractors or Persons (other than Persons that are employees of such Seller); (viiv) the Owned Software does not infringe, misappropriate, misappropriate or violate or dilute any Intellectual Property of any other Person; , (viiivi) any Owned Software includes (x) the source code, (y) all relevant system documentation, statements of principles of operation and schematics, as well as schematics in the possession of Parent or Seller and (z) any pertinent commentary, explanation, program (including compilers), workbenches, tools, and high-higher level (or proprietary "proprietary") language used for the development, maintenance, implementation and use thereof, so that a trained computer programmer could develop, maintain, support, compile and use all releases or separate versions of the same that are currently subject to maintenance obligations by any Seller; (ixvii) there are no agreements or arrangements in effect with respect to the marketing, distribution, licensing or promotion of the Owned Software by any other Person; (x) the Owned Software complies with all applicable Requirements of Laws relating to the export or re-export of the same; and (xi) the Owned Software may be exported or reexported to all countries without the necessity of any license, other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. Department of Commerce and/or the United States State Department.
(h) Except as disclosed in SCHEDULE 5.155.4, all employeeseach employee, agentsagent, consultants consultant or contractors contractor who have has contributed to or participated in the creation or development of any Intellectual Property copyrightable, patentable or Software trade secret material on behalf of any Seller or any predecessor in interest thereto: (i) has created such materials thereto and included in the scope of his or her employment; (ii) is a party to a valid and enforceable "work-for-hire" agreement under which such Seller is deemed to be the author of the Copyrights; or (iii) Purchased Assets has executed an assignment or an agreement to assign in favor of such Seller (or such predecessor in interest, as applicable) of all right, title and interest in such material.
Appears in 1 contract
Intellectual Property; Software. (a) SCHEDULE Schedule 5.15 contains a list and description (showing or identifying, in each case case, the subject covered thereby, the registered or other ownerowner thereof, the expiration date thereof and registration or application the number, if any) of all Copyrights, Patents Patent Rights and Trademarks (including all assumed or fictitious names under which any Seller DMI and/or Quixote, as the case may be, is currently conducting the Business or in the past has within the previous five years conducted the Business) owned acquired by, owned by or licensed to or used by DMI, Quixote or any Seller predecessor in interest to LaserVideo Acquisition Corporation, as the case may be, in connection with the conduct of the Business.
, whether or not currently valid and in force. (b) SCHEDULE Schedule 5.15 contains a list and description title or description, to be updated in compliance with such Schedule (showing showing, in each case case, any owner, licensor or licensee) ), of all Software owned by, licensed to or used by any Seller primarily DMI and/or Quixote, as the case may be, in the conduct of the Business; PROVIDED, provided HOWEVER, that SCHEDULE Schedule 5.15 does need not list mass market Software licensed to any Seller DMI and/or Quixote, as the case may be, that is available in consumer retail stores or otherwise generally commercially available and subject to "shrink-wrap" or "click-through" license agreements.
(c) SCHEDULE Schedule 5.15 contains a list and description (showing, in each case, the parties thereto and the material terms thereof) of all agreements, contracts, licenses, sublicenses, assignments and indemnities that which relate to (i) any Copyrights, Patent Rights or Trademarks listed in SCHEDULE on Schedule 5.15, (ii) any Trade Secrets owned by, licensed to or used by any Seller used primarily DMI or Quixote, as the case may be, in or relating primarily to connection with the Business or conduct of the Business, (iii) any Software listed on Schedule 5.15 or (iv) any Intellectual Property licensed to DMI or Quixote, as the case may be, in SCHEDULE 5.15connection with the conduct of the Business, including either a specific identification of such Intellectual Property or a schedule attached to such licenses.
(d) Except as disclosed in SCHEDULE on Schedule 5.15, each Seller eithereither DMI or Quixote: (i) owns the entire right, title and interest in and to the Intellectual Property and Software included in the Purchased Assets, free and clear of any Encumbrance, ; or (ii) has the perpetual, royalty-free right to use the same. Except as set forth in SCHEDULE 5.15, each Seller is listed in with the records of the appropriate United States, state right to assign or foreign registry as the sole current owner of record for each application or registration identified in SCHEDULE 5.15 as being owned by transfer such Sellerrights to Cinram.
(e) Except as disclosed in SCHEDULE on Schedule 5.15: (i) all registrations for Copyrights, Patent Rights and Trademarks identified in SCHEDULE on Schedule 5.15 as being owned by any Seller DMI or Quixote are valid and in force, and all applications to register any unregistered Copyrights, Patent Rights and or Trademarks so identified are pending and in good standing, all without challenge of any kind; (ii) the Intellectual Property owned by any Seller has not been cancelled DMI, or abandoned Quixote with respect to the Business, is, to the best knowledge of Quixote and is DMI, valid and enforceable; and (iii) such Seller DMI or Quixote, as the case may be, has the sole and exclusive right to bring actions for infringement, misappropriation, dilution, violation misappropriation or unauthorized use of the Intellectual Property and Software owned by such Sellerit and included in the Purchased Assets, and and, to the best knowledge of each SellerDMI and Quixote, there is no basis for any such action. Correct and complete copies of: of each of the following shall be delivered to Parent (xwithin 60 days after the execution of this Agreement): (i) the registrations for all registered Copyrights, Patent Rights and Trademarks identified in SCHEDULE listed on Schedule 5.15 as being owned by any SellerDMI or Quixote; and (yii) all pending applications to register unregistered Copyrights, Patent Rights and Trademarks identified in SCHEDULE listed on Schedule 5.15 as being owned by any Seller DMI or Quixote (together with any subsequent correspondence or filings relating to the foregoing); (iii) have heretofore been delivered evidence of valid proof of ownership or possession of all Software loaded on personal computers and laptop computers used in the Business by Sellers its personnel; and (iv) all expired Patent Rights and abandoned or cancelled Trademarks relating to Buyerthe Business.
(f) Except as set forth in SCHEDULE on Schedule 5.15, : (i) no infringement, misappropriation, violation infringement or dilution misappropriation of any Intellectual Property, Property of any other Person or any rights violation of publicity or a right of privacy relating to the use of names, likenesses, voices, signatures or biographical information, of any other Person has occurred or results in any way from the operations of the Business, ; (ii) no claim of any infringement, misappropriation, violation or dilution of any Intellectual Property or any such rights of any other Person has been made or asserted in respect of the operations of the Business and (iii) none of the Sellers has had notice of, or knowledge of any basis for, a claim against any Seller that the operations, activities, products, software, equipment, machinery or processes of the Business infringe, misappropriate, violate or dilute any Intellectual Property or any such rights of any other Person.A-20
(g) Except as disclosed in SCHEDULE on Schedule 5.15: (i) the Software included in the Purchased Assets is not subject to any transfer, assignment, change of control, site, equipment, equipment or other operational limitations; (ii) each Seller has Quixote and DMI have maintained and protected the Software included in the Purchased Assets that it owns is owned by either (the "Owned Software") (including ), including, without limitation, all source code and system specifications) , with appropriate proprietary noticesnotices (including, without limitation, the notice of copyright in accordance with the requirements of 17 U.S.C. Section 401), confidentiality and non-disclosure agreements and such other measures as are necessary to protect the proprietary, trade secret or confidential information contained therein; (iii) the Owned Software has been registered or is eligible for protection and registration under applicable copyright law and has not been forfeited to the public domain; (iv) each Seller has Quixote and/or DMI have copies of all releases or separate versions of its the Owned Software so that the same may be subject to registration in the United States Copyright Office; (v) each Seller DMI or Quixote, as the case may be, has complete and exclusive right, title and interest in and to its the Owned Software; (vi) each Seller DMI or Quixote has developed its the Owned Software through its their own efforts and for its their own account without the aid or use of any consultants, agents, independent contractors or Persons (other than Persons that individuals who are employees of such SellerDMI or Quixote); (vii) the Owned Software does not infringe, misappropriate, violate infringe or dilute misappropriate any Intellectual Property of any other Person or violate any right of privacy of any other Person; (viii) any Owned Software includes the source code, system documentation, statements of principles of operation and schematics, as well as any pertinent commentary, explanation, program (including compilers), workbenches, tools, tools and high-higher level (or proprietary "proprietary") language used for the development, maintenance, implementation and use thereof, so that a trained computer programmer could develop, maintain, support, compile and use all releases or separate versions of the same that are currently subject to maintenance obligations by any SellerDMI or Quixote, as the case may be; (ix) there are no agreements or arrangements in effect with respect to the marketing, distribution, licensing or promotion of the Owned Software by any other Person; (x) the Owned Software complies with all applicable Requirements of Laws relating to the export or re-export reexport of the same; and (xi) the Owned Software may be exported or reexported to all countries without the necessity of any license, other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. United States Department of Commerce and/or the United States State Department.
(h) Except as disclosed in SCHEDULE on Schedule 5.15, all employees, agents, consultants or contractors who have contributed to or participated in the creation or development of any Intellectual Property copyrightable, patentable or Software trade secret material on behalf of any Seller DMI, or Quixote with respect to the Business, or any predecessor in interest theretothereto either: (i) has created such materials in the scope of his or her employment; (ii) is a party to a valid and enforceable "work-for-hire" agreement under which such Seller DMI or Quixote, as the case may be, is deemed to be the original owner/author of the Copyrightsall property rights therein; or (iiiii) has executed an assignment or an agreement to assign in favor of such Seller DMI or Quixote (or such predecessor in interest, as applicable) of all right, title and interest in such material.
Appears in 1 contract
Intellectual Property; Software. (a) SCHEDULE 5.15 Schedule 5.13(A) contains a list and description (showing in each case the registered or other owner, expiration date and registration or application number, if any) of all Copyrights, Patents registered Copyrights and Patent Rights and material Trademarks (including all assumed owned by or fictitious names under which any Seller is conducting the Business or has within the previous five years conducted the Business) owned by, licensed to or used by any either Seller in connection with the conduct of the BusinessBusiness (other than any Excluded Asset) (“Business Registered Intellectual Property”), in each case indicating whether the Copyright, Patent Right or Trademark is owned by or licensed to a Seller.
(b) SCHEDULE 5.15 Schedule 5.13(B) contains a list and description (showing in each case any owner, licensor or licensee) of all Software owned by, by or licensed to or used by any either Seller primarily in the conduct of the Business, Business (other than any Excluded Asset); provided that SCHEDULE 5.15 Schedule 5.13(B) does not list mass market Software licensed to any a Seller that is available in consumer retail stores or otherwise generally commercially available and subject to "“shrink-wrap" ” or "“click-through" ” license agreementsagreements (“Business Software”).
(c) SCHEDULE 5.15 Schedule 5.13(C) contains a list and description of all agreements, contracts, licenses, sublicenses, assignments and indemnities that which relate to (i) any Copyrights, Patent Rights or Trademarks listed in SCHEDULE 5.15Business Intellectual Property, (ii) any Trade Secrets owned by, licensed to or used by any of either Seller used primarily in or relating primarily to the Business (other than any Excluded Asset) (“Business Trade Secrets”), or (iii) any Business Software listed (other than any mass market Software licensed to a Seller that is available in SCHEDULE 5.15consumer retail stores or otherwise commercially available and subject to “shrink-wrap” or “click-through” license agreements).
(d) Except as disclosed set forth in SCHEDULE 5.15Schedule 5.13(D), each a Seller either: (i) either (A) exclusively or together with the other Seller owns the entire right, title and interest in and to the Business Intellectual Property Property, Business Trade Secrets and Software included in the Purchased AssetsBusiness Software, free and clear of any Encumbrance, or (iiB) has the perpetual, royalty-free right to use the same. Except Business Intellectual Property, Business Trade Secrets and Business Software as set forth in SCHEDULE 5.15, each Seller is listed currently used in the records of Business, and (ii) has the appropriate United States, state or foreign registry as the sole current owner of record for each application or registration identified in SCHEDULE 5.15 as being owned by right to assign such Sellerrights to a Buyer.
(e) Except as disclosed in SCHEDULE 5.15: (i) all registrations for Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller are valid and in force, and all applications to register any unregistered Copyrights, Patent Rights and Trademarks so identified are pending and in good standing, all without challenge of any kind; (ii) the Intellectual Property owned by any Seller has not been cancelled or abandoned and is valid and enforceable; and (iii) such Seller has the sole and exclusive right to bring actions for infringement, misappropriation, dilution, violation or unauthorized use of the Intellectual Property and Software owned by such Seller, and to the knowledge of each Seller, there is no basis for any such action. Correct and complete copies of: (x) registrations for all registered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller; and (y) all pending applications to register unregistered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller (together with any subsequent correspondence or filings relating to the foregoing) have heretofore been delivered by Sellers to Buyer.
(f) Except as set forth in SCHEDULE 5.15Schedule 5.13(E), (i) to the Knowledge of Sellers, no infringement, misappropriation, violation or dilution of any third Person Intellectual Property, or any rights of publicity or privacy relating to the use of names, likenesses, voices, signatures or biographical information, of any other Person Property has occurred or results in any way from the operations use of the BusinessBusiness Intellectual Property or Business Trade Secrets owned by either Seller in the conduct of the Business as currently conducted by Sellers, (ii) to the Knowledge of Sellers, no claim of any infringement, misappropriation, violation or dilution of relating to any Business Intellectual Property or any such rights of any other Person Business Trade Secrets owned by either Seller has been made or asserted by any third Person, (iii) each item of Business Registered Intellectual Property owned by either Seller is valid, subsisting and in respect full force and effect and has not been abandoned or otherwise allowed to fall into the public domain, (iv) neither Seller has transferred ownership of, or granted any license of or right to use, the operations Business Intellectual Property or Business Trade Secrets owned by such Seller to any third Person (other than as listed in Schedule 5.13(C)), (v) to the Knowledge of Sellers, there are no facts or circumstances that may be reasonably expected to (A) render the Business Intellectual Property or Business Trade Secrets owned by either Seller to be invalid or unenforceable, or (B) adversely impede the ability of a Seller to use the same in the conduct of the Business as it is currently conducted by Sellers, and (iiivi) none of the Sellers each Seller has had notice of, or knowledge of any basis for, a claim against any Seller that the operations, activities, products, software, equipment, machinery or processes of taken all actions reasonably necessary to maintain and protect the Business infringe, misappropriate, violate or dilute any Intellectual Property or any such rights of any other Personand Business Trade Secrets owned by either Seller.
(gf) Except as disclosed set forth in SCHEDULE 5.15: Schedule 5.13(F), (i) the Business Software included in the Purchased Assets is not subject to any transfer, assignment, change of control, site, equipment, equipment or other operational limitations; (ii) each Seller has maintained and protected the Business Software included that is listed as owned by a Seller in the Purchased Assets that it owns Schedule 5.13(B) (the "“Owned Software"”) (including all source code and system specifications) with appropriate proprietary noticesnotices (including the notice of copyright in accordance with the requirements of 17 U.S.C. § 401), confidentiality and non-disclosure agreements and such other measures as are necessary to protect the proprietary, trade secret or confidential information contained therein; (iii) the Owned Software has been registered or is eligible for protection and registration under applicable copyright law and has not been forfeited to the public domain; (iv) each Seller has copies of all releases or separate versions of its Owned Software so that the same may be subject to registration in the United States Copyright Office; (v) each Seller has complete and exclusive right, title and interest in and to its the Owned Software; (iv) to the Knowledge of Sellers, no infringement, misappropriation, violation or dilution of any third party Intellectual Property has occurred or results in any way from the use of the Owned Software by Sellers in the conduct of the Business as currently conducted by Sellers; (v) to the Knowledge of Sellers, no claim of any infringement, misappropriation, violation or dilution related to the Owned Software has been made or asserted by any third Person; (vi) each neither Seller has developed its transferred ownership of, or granted any license of or right to use, the Owned Software through its own efforts and for its own account without the aid or use of to any consultants, agents, independent contractors or Persons (third Person other than Persons that are employees of such Selleras listed in Schedule 5.13(C); (vii) to the Knowledge of Seller, there are no facts or circumstances that may reasonably be expected to adversely impede the ability of a Seller to use the Owned Software does not infringe, misappropriate, violate or dilute any Intellectual Property in the conduct of any other Personthe Business as currently conducted by Sellers; and (viii) any Owned Software includes the source code, system documentation, statements of principles of operation each Seller has taken all actions reasonably necessary to maintain and schematics, as well as any pertinent commentary, explanation, program (including compilers), workbenches, tools, and high-level or proprietary language used for the development, maintenance, implementation and use thereof, so that a trained computer programmer could develop, maintain, support, compile and use all releases or separate versions of the same that are currently subject to maintenance obligations by any Seller; (ix) there are no agreements or arrangements in effect with respect to the marketing, distribution, licensing or promotion of protect the Owned Software by any other Person; (x) the Owned Software complies with all applicable Requirements of Laws relating to the export or re-export of the same; and (xi) the Owned Software may be exported or reexported to all countries without the necessity of any license, other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. Department of Commerce and/or the United States State DepartmentSoftware.
(h) Except as disclosed in SCHEDULE 5.15, all employees, agents, consultants or contractors who have contributed to or participated in the creation or development of any Intellectual Property or Software on behalf of any Seller or any predecessor in interest thereto: (i) has created such materials in the scope of his or her employment; (ii) is a party to a valid and enforceable "work-for-hire" agreement under which such Seller is deemed to be the author of the Copyrights; or (iii) has executed an assignment or an agreement to assign in favor of such Seller (or such predecessor in interest, as applicable) of all right, title and interest in such material.
Appears in 1 contract
Intellectual Property; Software. (a) SCHEDULE Schedule 5.15 contains a list and description (showing in each case the registered or other owner, and, if Seller is the registered or other owner, the expiration date and registration or application number, if any) of all Copyrights, Patents and Trademarks (including all assumed or fictitious names under which any Seller is conducting the Business or has within the previous five years conducted the Business) owned by, licensed to or used by any Seller in connection with the conduct of the BusinessSeller.
(b) SCHEDULE Schedule 5.15 contains a list and description (showing in each case any owner, licensor or licensee) of all Software owned bySoftware, licensed to or used by any Seller primarily in the conduct of the Business, Seller; provided that SCHEDULE Schedule 5.15 does not list mass market Software licensed to any Seller that is available in consumer retail stores or otherwise generally commercially available and subject to "“shrink-wrap" ” or "“click-through" ” license agreements. Seller owns no Software.
(c) SCHEDULE Schedule 5.15 contains a list and description of all agreements, contracts, licenses, sublicenses, assignments and indemnities that to which Seller is a party which relate to (i) any Copyrights, Patent Rights or Trademarks listed in SCHEDULE Schedule 5.15, (ii) any Trade Secrets owned by, licensed to or used by any Seller used primarily in or relating primarily to the Business or (iii) any Software listed in SCHEDULE Schedule 5.15.
(d) Except as disclosed in SCHEDULE Schedule 5.15, each Seller either: (i) owns the entire right, title and interest in and to the Intellectual Property and Software included in the Purchased Assets, free and clear of any EncumbranceEncumbrance (other than Permitted Encumbrances), or (ii) has the perpetual, royalty-free right to use the samesame and to use all Software listed in Schedule 5.15. Except as set forth in SCHEDULE Schedule 5.15, each Seller is listed in the records of the appropriate United States, state or foreign registry as the sole current owner of record for each application or registration identified in SCHEDULE Schedule 5.15 as being owned by such Seller.
(e) Except as disclosed in SCHEDULE Schedule 5.15: (i) all registrations for Copyrights, Patent Rights and Trademarks identified in SCHEDULE Schedule 5.15 as being owned by any Seller are valid and in force, and all applications to register any unregistered Copyrights, Patent Rights and Trademarks so identified are pending and in good standing, all without challenge of any kind; (ii) the Intellectual Property owned by any Seller has not been cancelled or abandoned and is valid and enforceable; and (iii) such Seller has the sole and exclusive right to bring actions for infringement, misappropriation, dilution, violation or unauthorized use of the Intellectual Property and Software owned by such Seller, and to the knowledge of each Seller, there is no basis for any such action. Correct and complete copies of: (x) registrations for all registered Copyrights, Patent Rights and Trademarks identified in SCHEDULE Schedule 5.15 as being owned by any Seller; and (y) all pending applications to register unregistered Copyrights, Patent Rights and Trademarks identified in SCHEDULE Schedule 5.15 as being owned by any Seller (together with any subsequent correspondence or filings relating to the foregoing) have heretofore been delivered or made available by Sellers Seller to Buyer.
(f) Except as set forth in SCHEDULE Schedule 5.15, (i) no infringement, misappropriation, violation or dilution of any Intellectual Property, or violation of any rights of publicity or privacy relating to the use of names, likenesses, voices, signatures or biographical information, of any other Person has occurred (or results resulted in any way way) from the operations of the Business, (ii) no claim of any infringement, misappropriation, violation or dilution of any Intellectual Property or violation of any such rights of any other Person has been made or asserted in respect of the operations of the Business and (iii) none of the Sellers Seller has had no notice of, or knowledge of any basis for, a claim against any Seller that the operations, activities, products, software, equipment, machinery or processes of the Business infringe, misappropriate, or violate or dilute any Intellectual Property or any such rights of any other Person.
(g) Except as disclosed in SCHEDULE 5.15: (i) the Software included in the Purchased Assets is not subject to any transfer, assignment, change of control, site, equipment, or other operational limitations; (ii) each Seller has maintained and protected the Software included in the Purchased Assets that it owns (the "Owned Software") (including all source code and system specifications) with appropriate proprietary notices, confidentiality and non-disclosure agreements and such other measures as are necessary to protect the proprietary, trade secret or confidential information contained therein; (iii) the Owned Software has been registered or is eligible for protection and registration under applicable copyright law and has not been forfeited to the public domain; (iv) each Seller has copies of all releases or separate versions of its Owned Software so that the same may be subject to registration in the United States Copyright Office; (v) each Seller has complete and exclusive right, title and interest in and to its Owned Software; (vi) each Seller has developed its Owned Software through its own efforts and for its own account without the aid or use of any consultants, agents, independent contractors or Persons (other than Persons that are employees of such Seller); (vii) the Owned Software does not infringe, misappropriate, violate or dilute any Intellectual Property of any other Person; (viii) any Owned Software includes the source code, system documentation, statements of principles of operation and schematics, as well as any pertinent commentary, explanation, program (including compilers), workbenches, tools, and high-level or proprietary language used for the development, maintenance, implementation and use thereof, so that a trained computer programmer could develop, maintain, support, compile and use all releases or separate versions of the same that are currently subject to maintenance obligations by any Seller; (ix) there are no agreements or arrangements in effect with respect to the marketing, distribution, licensing or promotion of the Owned Software by any other Person; (x) the Owned Software complies with all applicable Requirements of Laws relating to the export or re-export of the same; and (xi) the Owned Software may be exported or reexported to all countries without the necessity of any license, other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. Department of Commerce and/or the United States State Department.
(h) Except as disclosed in SCHEDULE Schedule 5.15, all employees, agents, consultants or contractors who have contributed to or participated in the creation or development of any material Intellectual Property or Software on behalf of any Seller or any predecessor in interest theretothereto either: (i) has created such materials in the scope of his or her employment; (ii) is a party to a valid and enforceable "“work-for-hire" ” agreement under which such Seller is deemed to be the original owner/author of the Copyrightsall rights, title and interest therein; or (iii) has executed an assignment or an agreement to assign in favor of such Seller (or such predecessor in interest, as applicable) of all right, title and interest in such material.
Appears in 1 contract
Samples: Asset Purchase Agreement (Navigant International Inc)
Intellectual Property; Software. (a) SCHEDULE Schedule 5.15 contains a list and description (showing in each case the registered or other owner, expiration date and registration or application number, if any) of all Copyrights, Patents and Trademarks (including all assumed or fictitious names under which any Seller is conducting the Business or has within the previous five years conducted the Business) owned by, licensed to or used by any Seller in connection with the conduct of the BusinessSeller.
(b) SCHEDULE Schedule 5.15 contains a list and description (showing in each case any owner, licensor or licensee) of all Software owned by, licensed to or used by any Seller primarily in the conduct of the BusinessSeller, provided that SCHEDULE Schedule 5.15 does not list mass market Software licensed to any Seller that is available in consumer retail stores or otherwise generally commercially available and subject to "shrink-wrap" or "click-through" license agreements.
(c) SCHEDULE Schedule 5.15 contains a list and description of all agreements, contracts, licenses, sublicenses, assignments and indemnities that which relate to (i) any Copyrights, Patent Rights or Trademarks listed in SCHEDULE Schedule 5.15, (ii) any Trade Secrets owned by, licensed to or used by any Seller used primarily in or relating primarily to the Business or (iii) any Software listed in SCHEDULE Schedule 5.15.
(d) Except as disclosed in SCHEDULE Schedule 5.15, each Seller either: (i) owns the entire right, title and interest in and to the Intellectual Property and Software included in the Purchased Assets, free and clear of any Encumbrance, or (ii) has the perpetual, royalty-free right to use the same. Except as set forth in SCHEDULE Schedule 5.15, each Seller is listed in the records of the appropriate United States, state or foreign registry as the sole current owner of record for each application or registration identified in SCHEDULE Schedule 5.15 as being owned by such Seller.
(e) Except as disclosed in SCHEDULE Schedule 5.15: (i) all registrations for Copyrights, Patent Rights and Trademarks identified in SCHEDULE Schedule 5.15 as being owned by any Seller are valid and in force, and all applications to register any unregistered Copyrights, Patent Rights and Trademarks so identified are pending and in good standing, all without challenge of any kind; (ii) the Intellectual Property owned by any Seller has not been cancelled or abandoned and is valid and enforceable; and (iii) such Seller has the sole and exclusive right to bring actions for infringement, misappropriation, dilution, violation or unauthorized use of the Intellectual Property and Software owned by such Seller, and to the knowledge of each SellerParent, Seller or any Shareholder, there is no basis for any such action. Correct and complete copies of: (x) registrations for all registered Copyrights, Patent Rights and Trademarks identified in SCHEDULE Schedule 5.15 as being owned by any Seller; and (y) all pending applications to register unregistered Copyrights, Patent Rights and Trademarks identified in SCHEDULE Schedule 5.15 as being owned by any Seller (together with any subsequent correspondence or filings relating to the foregoing) have heretofore been delivered by Sellers Seller to Buyer.
(f) Except as set forth in SCHEDULE Schedule 5.15, (i) no infringement, misappropriation, dilution, violation or dilution of any Intellectual Property, or any rights of publicity or privacy relating to the use of names, likenesses, voices, signatures or biographical information, of any other Person has occurred or results in any way from the operations of the Business, (ii) no claim of any infringement, misappropriation, dilution, violation or dilution of any Intellectual Property or any such rights of any other Person has been made or asserted in respect of the operations of the Business and (iii) none of the Sellers neither Parent, Seller nor any Shareholder has had notice of, or knowledge of any basis for, a claim against any Seller that the operations, activities, products, software, equipment, machinery or processes of the Business infringe, misappropriate, violate or dilute any Intellectual Property or any such rights of any other Person.
(g) Except as disclosed in SCHEDULE Schedule 5.15: (i) the Software included in the Purchased Assets is not subject to any transfer, assignment, change of control, site, equipment, or other operational limitations; (ii) each Seller has maintained and protected the Software included in the Purchased Assets that it owns (the "Owned Software") (including all source code and system specifications) with appropriate proprietary noticesnotices (including the notice of copyright in accordance with the requirements of 17 U.S.C. ss. 401), confidentiality and non-disclosure agreements and such other measures as are necessary to protect the proprietary, trade secret or confidential information contained therein; (iii) the Owned Software has been registered or is eligible for protection and registration under applicable copyright law and has not been forfeited to the public domain; (iv) each Seller has copies of all releases or separate versions of its the Owned Software so that the same may be subject to registration in the United States Copyright Office; (v) each Seller has complete and exclusive right, title and interest in and to its the Owned Software; (vi) each Seller has developed its the Owned Software through its own efforts and for its own account without the aid or use of any consultants, agents, independent contractors or Persons (other than Persons that are employees of such Seller); (vii) the Owned Software does not infringe, misappropriate, violate or dilute any Intellectual Property of any other Person; (viii) any Owned Software includes the source code, system documentation, statements of principles of operation and schematics, as well as any pertinent commentary, explanation, program (including compilers), workbenches, tools, and high-higher level (or proprietary "proprietary") language used for the development, maintenance, implementation and use thereof, so that a trained computer programmer could develop, maintain, support, compile and use all releases or separate versions of the same that are currently subject to maintenance obligations by any Seller; (ix) there are no agreements or arrangements in effect with respect to the marketing, distribution, licensing or promotion of the Owned Software by any other Person; (x) the Owned Software complies with all applicable Requirements of Laws relating to the export or re-export reexport of the same; and (xi) the Owned Software may be exported or reexported to all countries without the necessity of any license, other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. Department of Commerce and/or the United States State Department.
(h) Except as disclosed in SCHEDULE Schedule 5.15, all employees, agents, consultants or contractors who have contributed to or participated in the creation or development of any Intellectual Property or Software on behalf of any Seller or any predecessor in interest theretothereto either: (i) has created such materials in the scope of his or her employment; (ii) is a party to a valid and enforceable "work-for-hire" agreement under which such Seller is deemed to be the original owner/author of the Copyrightsall rights, title and interest therein; or (iii) has executed an assignment or an agreement to assign in favor of such Seller (or such predecessor in interest, as applicable) of all right, title and interest in such material.
Appears in 1 contract
Intellectual Property; Software. (a) SCHEDULE 5.15 contains Set forth in Schedule 4.05
(a) is a complete list and description (showing in each case any product, device, process, service, business or publication covered thereby, the registered or other owner, expiration date and registration or application number, if any) of all Copyrights, Patents Patent Rights and Trademarks (including all assumed or fictitious names under which any Seller is the Companies are conducting the Business or has have within the previous five years conducted the Business) owned by, licensed to or used by any Seller in connection with the conduct of otherwise material to the Business.
(b) SCHEDULE 5.15 contains Set forth in Schedule 4.05(b) is a complete list and description (showing in each case any owner, licensor or licensee) of all Software owned by, licensed to or used by any Seller primarily in the conduct of the Business, provided that SCHEDULE 5.15 does not list mass market Software licensed to any Seller that is available in consumer retail stores or otherwise generally commercially available and subject to "shrink-wrap" or "click-through" license agreements.
(c) SCHEDULE 5.15 contains Set forth in Schedule 4.05(c) is a complete list and description (showing in each case the parties thereto and the material terms thereof) of all agreements, contracts, licenses, sublicenses, assignments Contracts and indemnities that which relate to (i) any Copyrights, Patent Rights or Trademarks listed in SCHEDULE 5.15Schedule 4.05(a), (ii) any Trade Secrets owned by, licensed to or used by any Seller used primarily in or relating primarily to the Business Companies or (iii) any Software listed in SCHEDULE 5.15Schedule 4.05(b).
(d) Except as disclosed in SCHEDULE 5.15, each Seller The Companies or Parent either: (i) owns own the entire right, title and interest in and to the Intellectual Property and Software included in the Purchased Acquired Assets, free and clear of any Encumbrance, ; or (ii) has have the perpetual, royalty-free right to use use, and transfer as required under this Agreement, the same. Except as set forth in SCHEDULE 5.15, each Seller is listed in the records of the appropriate United States, state or foreign registry as the sole current owner of record for each application or registration identified in SCHEDULE 5.15 as being owned by such Seller.
(e) Except as disclosed in SCHEDULE 5.15: (i) all All registrations for Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 Schedule 4.05
(a) as being owned by any Seller the Companies or Parent are valid and in force, and all applications to register any unregistered Copyrights, Patent Rights and Trademarks so identified are pending and in good standing, all without challenge of any kind; (ii) the Intellectual Property and Intellectual Property Rights owned by any Seller has not been cancelled the Companies or abandoned and is Parent are valid and enforceable; and (iii) such Seller has each of the Companies and Parent have the sole and exclusive right to bring actions for infringement, misappropriation, dilution, violation misappropriation or unauthorized use of the Intellectual Property and Software owned by such Sellerthe Companies or Parent and included in the Purchased Assets or related to the Business, as the case may be, and to the best knowledge of each Sellerof the Companies, there is no basis for any such action. Correct and complete copies of: (x) registrations for all registered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 Schedule 4.05
(a) as being owned by any Sellerthe Companies or Parent; and (y) all pending applications to register unregistered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 Schedule 4.05(a) as being owned by any Seller the Companies or Parent (together with any subsequent correspondence or filings relating to the foregoing) have heretofore been delivered by Sellers Seller to Buyer.
(f) Except as set forth in SCHEDULE 5.15, (i) no infringement, misappropriation, violation The Companies' and Parent's Intellectual Property and Intellectual Property Rights do not infringe and the Companies and Parent have not misappropriated or dilution otherwise violated the Intellectual Property or Intellectual Property Rights of any Intellectual Property, or any rights of publicity or privacy relating to the use of names, likenesses, voices, signatures or biographical information, of any other Person has occurred or results in any way from the operations of the Business, (ii) no third party. No claim of any infringement, misappropriation, misappropriation or other violation or dilution of any Intellectual Property or any such rights Intellectual Property Right of any other Person has been made or asserted in respect of against the operations of Companies or Parent relating to the Purchased Assets or the Business and (iii) none of the Sellers has Companies or Parent have not had notice of, or knowledge of any basis for, a claim against any Seller the Companies or Parent that the their operations, activities, products, software, equipment, machinery or processes of the Business infringe, misappropriate, violate or dilute infringe any Intellectual Property or any such rights Intellectual Property Right of any other Person.
(g) Except as disclosed in SCHEDULE 5.15: (i) the The Software included in the Purchased Acquired Assets is not subject to any transfer, assignment, change of control, site, equipment, or other operational limitations; (ii) each Seller has the Companies and Parent have maintained and protected the Software included in the Purchased Assets that it owns (the "Owned Software") (including including, without limitation, all source code and system specifications) with appropriate proprietary noticesnotices (including, without limitation, the notice of copyright in accordance with the requirements of 17 U.S.C. Section 401), confidentiality and non-disclosure agreements and such other measures as are necessary to protect the proprietary, trade secret or confidential information contained therein; (iii) the Owned Software has been registered or is eligible for protection and registration under applicable copyright law and has not been forfeited to the public domain; (iv) each Seller has the Companies have copies of all releases or separate versions of its Owned the Software so that the same may be subject to registration in the United States Copyright OfficeOffice or foreign copyright offices; (v) each Seller has the Companies have the complete and exclusive right, title and interest in and to its Owned Softwarethe Software subject only to licenses issued by the Companies to users in the ordinary course of business; (vi) each Seller has the Companies have developed its the Owned Software through its their own efforts and for its their own account without the aid or use of any consultants, agents, independent contractors or Persons (other than Persons that are employees of such Sellerthe Companies); (vii) no third party Software or other property was used in or necessary for the development of the Owned Software or Documentation or is intended to be embedded in, included with or shipped with the Owned Software; (viii) the Software does not infringe, misappropriate, misappropriate or violate or dilute any Intellectual Property or Intellectual Property Right of any other Person; (viiiix) any Owned Software includes the source codeSource Code, system documentationDocumentation, statements of principles of operation and schematics, as well as any pertinent commentary, explanation, program (including compilers), workbenches, tools, and high-higher level (or proprietary "proprietary") language used for the development, maintenance, implementation and use thereof, so that a trained computer programmer could develop, maintain, support, compile and use all releases or separate versions of the same that are currently subject to maintenance obligations by any Sellerof the Business; (ixx) there are no agreements or arrangements in effect with respect to the marketing, distribution, licensing or promotion of the Owned Software by any other Person; (xxi) the Owned Software complies with all applicable Requirements of Laws relating to the export or re-export reexport of the same; and (xixii) the Owned Software may be exported or reexported to all countries without the necessity of any license, other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. Department of Commerce and/or the United States State DepartmentDepartment and (xiii) the Software is Year 2000 Compliant.
(h) Except as disclosed in SCHEDULE 5.15, all All employees, agents, consultants or contractors who have contributed to or participated in the creation or development of any Intellectual Property copyrightable, patentable or Software trade secret material on behalf of any Seller the Companies or Parent or any predecessor in interest theretoof them either: (i) has created such materials in the scope of his or her employment; (ii) is a party to a valid and enforceable "work-made-for-hire" agreement under which such Seller is the Companies or Parent are deemed to be the original owner/author of the Copyrightsall property rights therein; or (iiiii) has have executed an assignment or an agreement to assign in favor of such Seller the Companies or Parent (or such predecessor in interest, as applicable) of all right, title and interest in such material.
Appears in 1 contract
Samples: Asset and Stock Purchase Agreement (Mark Solutions Inc)
Intellectual Property; Software. (a) SCHEDULE 5.15 Schedule 5.15(a) contains a list and description (showing of all registered Copyrights, applications to register Copyrights, in each case case, owned by any of the registered or other ownerSellers with respect to the Worksite Pharmacies, expiration date and registration or application number, if any) of all Copyrights, Patents Patent Rights and Trademarks (including all assumed or fictitious names under which any Seller is of the Sellers are conducting the Business business or has have within the previous five years conducted the Businessbusiness) owned by, licensed to or used by any Seller in connection with the conduct of the BusinessSellers with respect to the Worksite Pharmacies.
(b) SCHEDULE 5.15 Schedule 5.15(b) contains a list and description (showing in each case any owner, licensor or licensee) of all Software owned by, licensed to or used by any Seller primarily in the conduct of the BusinessSellers with respect to the Worksite Pharmacies, provided that SCHEDULE 5.15 does not list mass market except Software licensed to any Seller of the Sellers that is available in consumer retail stores or otherwise generally commercially available and subject to "“shrink-wrap" or ",” “click-through" ” or similar license agreements.
(c) SCHEDULE 5.15 Schedule 5.15(c) contains a list and description of all material agreements, contractsContracts, licenses, sublicenses, assignments and indemnities with respect to the Worksite Pharmacies that relate to to: (i) any Copyrights, Patent Rights or Trademarks listed in SCHEDULE 5.15, required to be identified on Schedule 5.15(a); (ii) any Trade Secrets owned by, by or licensed to or used by any Seller used primarily in or relating primarily to of the Business Sellers or (iii) any Software listed in SCHEDULE 5.15required to be identified on Schedule 5.15(b).
(d) Except as disclosed expressly stated in SCHEDULE 5.15, each Seller either: Schedule 5.15(d): (i) owns the entire right, title and interest in and to the Intellectual Property and Software included in the Purchased Assets, free and clear of any Encumbrance, or (ii) has the perpetual, royalty-free right to use the same. Except as set forth in SCHEDULE 5.15, each Seller is listed in the records of the appropriate United States, state or foreign registry as the sole current owner of record for each application or registration identified in SCHEDULE 5.15 as being owned by such Seller.
(e) Except as disclosed in SCHEDULE 5.15: (i) all registrations for Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller are valid and in force, and all applications to register any unregistered Copyrights, Patent Rights and Trademarks so identified are pending and in good standing, all without challenge of any kind; (ii) the Intellectual Property owned by any Seller has not been cancelled or abandoned and is valid and enforceable; and (iii) such Seller has the sole and exclusive right to bring actions for infringement, misappropriation, dilution, violation or unauthorized use of the Intellectual Property and Software owned by such Seller, and to the knowledge of each Seller, there is no basis for any such action. Correct and complete copies of: (x) registrations for all registered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller; and (y) all pending applications to register unregistered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller (together with any subsequent correspondence or filings relating to the foregoing) have heretofore been delivered by Sellers to Buyer.
(f) Except as set forth in SCHEDULE 5.15, (i) no infringement, misappropriation, violation or dilution of any Intellectual Property, or any rights of publicity or privacy relating to the use of names, likenesses, voices, signatures or biographical information, of any other Person has occurred or results in any way from the operations of the Business, (ii) no claim of any infringement, misappropriation, violation or dilution of any Intellectual Property or any such rights of any other Person has been made or asserted in respect of the operations of the Business and (iii) none of the Sellers has had notice of, or knowledge of any basis for, a claim against any Seller that the operations, activities, products, software, equipment, machinery or processes of the Business infringe, misappropriate, violate or dilute any Intellectual Property or any such rights of any other Person.
(g) Except as disclosed in SCHEDULE 5.15: (i) the Software included in the Purchased Assets is not subject to any transfer, assignment, change of control, site, equipment, license (royalty bearing or royalty free) and is not subject to any other operational limitationsarrangement requiring any payment to any Person or the obligation to grant rights to any Person in exchange; (ii) each Seller has maintained and protected the Software Licensed Rights included in the Purchased Assets that it owns (the "Owned Software") (including all source code are free and system specifications) with appropriate proprietary noticesclear of any royalties, confidentiality obligations or Encumbrances; and non-disclosure agreements and such other measures as are necessary to protect the proprietary, trade secret or confidential information contained therein; (iii) the Owned Software has Sellers have the sole and exclusive right to bring actions for infringement or unauthorized use of the Intellectual Property included in the Purchased Assets.
(e) Except as expressly stated in Schedule 5.15(e), the Intellectual Property and the Licensed Rights included in the Purchased Assets are in all material respects valid and in force, and the validity of the Intellectual Property and title thereto and validity of the Licensed Rights included in the Purchased Assets: (i) have not been registered questioned in any prior action, suit, investigation or is eligible for protection proceeding; (ii) are not being questioned in any pending action, suit, investigation or proceeding; and registration under applicable copyright law and (ii) to the Knowledge of the Sellers, are not the subject(s) of any threatened action, suit, investigation or proceeding.
(f) Except as expressly stated in Schedule 5.15(f): (i) the Worksite Business, as presently conducted, does not conflict with and, to the Knowledge of the Sellers, has not been forfeited alleged to the public domainconflict with any Patents, Trademark, Trade Secret, Copyrights or other rights of others; (ivii) each Seller has copies the consummation of all releases or separate versions of its Owned Software so that the same may be subject to registration transactions contemplated hereby will not result in the United States Copyright Office; (v) each Seller has complete and exclusive right, title and interest in and to its Owned Software; (vi) each Seller has developed its Owned Software through its own efforts and for its own account without the aid loss or use impairment of any consultants, agents, independent contractors or Persons (other than Persons that are employees of such Seller); (vii) the Owned Software does not infringe, misappropriate, violate or dilute any Intellectual Property of or the right to use any other Person; (viii) any Owned Software includes the source code, system documentation, statements of principles of operation and schematics, as well as any pertinent commentary, explanation, program (including compilers), workbenches, tools, and high-level or proprietary language used for the development, maintenance, implementation and use thereof, so that a trained computer programmer could develop, maintain, support, compile and use all releases or separate versions of the same that are currently subject to maintenance obligations by any SellerLicensed Rights included in the Purchased Assets; and (ixiii) there are no agreements third parties using any of the Intellectual Property that is material to the Worksite Business as presently conducted.
(g) Except as expressly stated in Schedule 5.15(g): (i) the Sellers own, or arrangements in effect possesses valid rights to, all Software that is material to the conduct of the Worksite Business; and (ii) there are no infringement suits, actions or proceedings pending or, to the Knowledge of the Sellers, threatened against any of the Sellers with respect to any Software owned or licensed by the marketing, distribution, licensing or promotion of the Owned Software by any other Person; (x) the Owned Software complies with all applicable Requirements of Laws relating to the export or re-export of the same; and (xi) the Owned Software may be exported or reexported to all countries without the necessity of any license, other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. Department of Commerce and/or the United States State DepartmentSellers.
(h) Except as disclosed in SCHEDULE 5.15, all employees, agents, consultants or contractors who have contributed to or participated in the creation or development of any Intellectual Property or Software on behalf of any Seller or any predecessor in interest thereto: (i) has created such materials in the scope of his or her employment; (ii) is a party to a valid and enforceable "work-for-hire" agreement under which such Seller is deemed to be the author of the Copyrights; or (iii) has executed an assignment or an agreement to assign in favor of such Seller (or such predecessor in interest, as applicable) of all right, title and interest in such material.
Appears in 1 contract
Intellectual Property; Software. (a) SCHEDULE 5.15 6.15(A) contains a list and description (showing in each case any product, device, process, service, business or publication covered thereby, the registered or other owner, expiration date and registration or application number, if any) of all Copyrights, Patents Patent Rights and Trademarks (including all assumed or fictitious names under which any Seller is conducting the Business or has within the previous five years conducted the Business) owned by, licensed to or used by any Seller in connection with NTS or the conduct of the BusinessNTS Subsidiary.
(b) SCHEDULE 5.15 6.15(B) contains a list and description (showing in each case any owner, licensor or licensee) of all Software owned by, licensed to or used by any Seller primarily in NTS or the conduct of the BusinessNTS Subsidiary, provided PROVIDED that SCHEDULE 5.15 6.15(B) does not list mass market Software licensed to any Seller NTS or the NTS Subsidiary that is available in consumer retail stores or otherwise generally commercially available and subject to "shrink-wrap" or "click-throughclick on" license agreements.
(c) SCHEDULE 5.15 6.15(C) contains a list and description (showing in each case the parties thereto) of all agreements, contracts, licenses, sublicenses, assignments and indemnities that which relate to (i) any Copyrights, Patent Rights or Trademarks listed in SCHEDULE 5.156.15(A), (ii) any Trade Secrets owned by, licensed to or used by any Seller used primarily in NTS or relating primarily to the Business NTS Subsidiary or (iii) any Software listed in SCHEDULE 5.156.15(B).
(d) Except as disclosed in SCHEDULE 5.156.15(D), each Seller NTS or the NTS Subsidiary either: (i) owns the entire right, title and interest in and to the Intellectual Property and Software included in the Purchased NTS Assets, free and clear of any Encumbrance, ; or (ii) has the perpetual, royalty-free right to use the same. Except as set forth in SCHEDULE 5.15, each Seller is listed same or (iii) in the records case of third party vendor Software, has the appropriate United States, state ability to transfer such Software without the necessity of obtaining consents or foreign registry as the sole current owner payment of record for each application or registration identified in SCHEDULE 5.15 as being owned by such Sellerfees.
(e) Except as disclosed in SCHEDULE 5.15: 6.15(E): (i) all registrations for Copyrights, Patent Rights and Trademarks Trademarks, including registration therefor, identified in SCHEDULE 5.15 6.15(A) as being owned by any Seller NTS or the NTS Subsidiary are valid and in force, and all patent applications with respect to Patent Rights and all applications to register any unregistered Copyrights, Patent Rights Copyrights and Trademarks so identified are pending and in good standing, all without challenge of any kind; (ii) the Intellectual Property owned by any Seller has not been cancelled NTS or abandoned and the NTS Subsidiary is valid and enforceable; and (iii) such Seller NTS or the NTS Subsidiary has the sole and exclusive right to bring actions for infringement, misappropriation, dilution, violation infringement or unauthorized use of the Intellectual Property and Software owned by such SellerNTS or the NTS Subsidiary, and to the knowledge of each SellerIPS, NTS or the NTS Subsidiary, there is no basis for any such action; (iv) NTS or the NTS Subsidiary has taken all actions reasonably necessary to protect the Copyrights, Trademarks, Software, Patent Rights or Trade Secrets included in the Purchased NTS Assets, including by pursuing registration where necessary; and (v) neither NTS or the NTS Subsidiary is in breach of any agreement affecting any of the Intellectual Property and Software included in the Purchased NTS Assets, and has not taken any action which would impair or otherwise adversely affect its rights in the Intellectual Property and Software included in the Purchased NTS Assets. Correct and complete copies of: (x) registrations for all registered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 6.15
(A) as being owned by any SellerNTS or the NTS Subsidiary; and (y) all pending applications to register unregistered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 6.15(A) as being owned by any Seller NTS or the NTS Subsidiary (together with any subsequent correspondence or filings relating to the foregoing) have heretofore been delivered by Sellers IPS to BuyerComdata.
(f) Except as set forth in SCHEDULE 5.156.15(F), (i) to the knowledge of IPS, NTS or the NTS Subsidiary, no infringement, misappropriation, violation or dilution infringement of any Intellectual Property, or any rights of publicity or privacy relating to the use of names, likenesses, voices, signatures or biographical information, Property Right of any other Person has occurred or results in any way from the operations of NTS or the Business, NTS Subsidiary as previously or currently conducted; (ii) no claim of any infringement, misappropriation, violation or dilution infringement of any Intellectual Property or any such rights Right of any other Person has been made or asserted in respect of the operations of the Business and NTS Business; (iii) none neither IPS, NTS or the NTS Subsidiary has received notice that any claim of invalidity of any Copyright, Trademark or Patent Right, Software or Trade Secret has been made; (iv) no proceedings are pending or, to the knowledge of IPS, NTS or the NTS Subsidiary, threatened which challenge the validity, ownership or use of any of the Sellers NTS Business Intellectual Property; and (v) neither IPS, NTS or the NTS Subsidiary has had notice of, or knowledge of any basis for, a claim against any Seller NTS or the NTS Subsidiary that the operations, activities, products, software, equipment, machinery or processes of NTS or the Business infringe, misappropriate, violate or dilute NTS Subsidiary infringe any Intellectual Property or any such rights Right of any other Person.
(g) Except as disclosed in SCHEDULE 5.15: 6.15(G): (i) the Software included used in the Purchased Assets NTS Business (the "NTS OWNED SOFTWARE") is not subject to any transfer, assignment, change of controlsource code escrow agreement, reversion, site, equipment, or other operational limitations; (ii) each Seller NTS or the NTS Subsidiary has maintained and protected the NTS Owned Software included in the Purchased Assets that it owns (the "Owned Software") (including including, without limitation, all source code and system specifications) with appropriate proprietary noticesnotices (including, without limitation, the notice of copyright in accordance with the requirements of 17 U.S.C. SECTION 401), confidentiality and non-disclosure agreements and such other measures as are reasonably necessary to protect the proprietary, trade secret or confidential information contained therein; (iii) the NTS Owned Software has been registered or is eligible for protection and registration protectable under applicable copyright law and has not been forfeited to the public domaindomain and has been registered with the U.S. Copyright office or is eligible for registration; (iv) each Seller NTS or the NTS Subsidiary has copies of all releases or separate versions of its the NTS Owned Software so that the same may be subject to registration in the United States Copyright Office; (v) each Seller NTS or the NTS Subsidiary has complete and exclusive right, title and interest in and to its the NTS Owned Software; (vi) each Seller NTS or the NTS Subsidiary has developed its the NTS Owned Software through its own efforts and for its own account without the aid or use of any consultants, agents, independent contractors or Persons (other than Persons that are employees of such SellerNTS or the NTS Subsidiary); (vii) to the knowledge of IPS, NTS or the NTS Subsidiary, the NTS Owned Software does not infringe, misappropriate, violate or dilute infringe any Intellectual Property Right of any other Person; (viii) any NTS Owned Software includes the source code, system documentation, statements of principles of operation and schematics, as well as any pertinent commentary, explanation, program (including compilers), workbenches, tools, commentary and high-level or proprietary explanation language used for the development, maintenance, implementation and use thereof, so that a trained computer programmer could develop, maintain, enhance, modify, support, compile and use all releases or separate versions of the same that are currently subject to maintenance obligations by any SellerNTS or the NTS Subsidiary; and (ix) there are no agreements or arrangements in effect with respect to the marketing, distribution, licensing or promotion of the NTS Owned Software by any other Person; (x) the Owned Software complies with all applicable Requirements of Laws relating to the export or re-export of the same; and (xi) the Owned Software may be exported or reexported to all countries without the necessity of any license, other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. Department of Commerce and/or the United States State Department.
(h) Except as disclosed in SCHEDULE 5.156.15(H), all employees, agents, consultants or contractors who have contributed to or participated in the creation or development of any Intellectual Property or Software on behalf of any Seller NTS or the NTS Subsidiary or any predecessor in interest theretothereto either: (i) has created such materials in the scope of his or her employment; (ii) is a party to a valid and enforceable "work-for-hire" agreement under which such Seller NTS or the NTS Subsidiary is deemed to be the original owner/author of the Copyrightsall property rights therein; or (iii) has executed an assignment or an agreement to assign in favor of such Seller (or such predecessor in interest, as applicable) of all right, title and interest in such material.or
Appears in 1 contract
Samples: Exchange Agreement (Ceridian Corp)
Intellectual Property; Software. (a) SCHEDULE 5.15 contains Sections 5.10(a)(1) and ------------------------------- 5.10
(a) (2) of the Disclosure Schedule together contain a list and description (showing in each case the registered or other owner, expiration date and registration or application number, if any) of all subsisting registered Copyrights, Patents Patent Rights, and Trademarks and all subsisting pending applications for registration of such Copyrights, Patent Rights, and Trademarks (including all assumed or fictitious names under which any Seller is conducting the Business Division or has within the previous five years conducted the BusinessDivision) owned by, licensed to or used by any Seller exclusively in connection with the conduct of the BusinessDivision, and contains a breakdown by Copyright, Patent Right and Trademark and pending application of the owner thereof and the registration or application number thereof. Such Trademarks include all the material Trademarks under which the RYKA and Yukon brands of footwear have been sold by the Seller.
(b) SCHEDULE 5.15 contains a list and description (showing in each case any ownerThere exists no Software which is used exclusively by the Division, licensor or licensee) of all Software owned by, licensed to or used by any Seller primarily in the conduct of the Business, provided that SCHEDULE 5.15 does not list mass market Software licensed to any Seller that is available in consumer retail stores or otherwise generally other than commercially available and subject to "shrink-wrap" or "click-through" license agreementsSoftware.
(c) SCHEDULE 5.15 The Disclosure Schedule contains a list and description of all material agreements, contracts, licenses, sublicenses, assignments licenses and indemnities that sublicenses which relate to (i) any Copyrights, Patent Rights or Trademarks listed in SCHEDULE 5.15the Disclosure Schedule. Neither the Seller nor its Affiliates have entered into any material agreements, (ii) whether oral or written, by which any Trade Secrets owned byPerson shall have the right to use, licensed to license, sublicense or used by otherwise exploit for value any Seller used primarily in such Copyright, Patent Right or relating primarily to the Business or (iii) any Software listed in SCHEDULE 5.15Trademark.
(d) Except as disclosed in SCHEDULE 5.15, each Seller either: (i) owns the entire right, title and interest in and to the Intellectual Property Copyrights, Patent Rights and Software included Trademarks listed in Section 5.10(a)(2) of the Purchased AssetsDisclosure Schedule. Seller has not granted any Encumbrance to any Person with respect to the Copyrights, free Patent Rights and clear Trademarks listed in Sections 5.10(a)(1) and 5.10(a)(2) of the Disclosure Schedule which are outstanding as of Closing. Seller has taken no action before the date hereof to actively divest itself of any Encumbranceof the Copyrights, or (ii) has the perpetual, royalty-free right to use the same. Except as set forth in SCHEDULE 5.15, each Seller is Patent Rights and Trademarks listed in the records Sections 5.10(a)(1) and 5.10(a)(2) of the appropriate United States, state or foreign registry as the sole current owner of record for each application or registration identified in SCHEDULE 5.15 as being owned by such SellerDisclosure Schedule.
(e) Except as disclosed in SCHEDULE 5.15: (i) all registrations for Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 Section 5.10(a)(2) in the Disclosure Schedule as being owned by any the Seller are valid in good standing and in force, and all applications to register any unregistered Copyrights, Patent Rights and Trademarks so identified are pending and in good standing, to the knowledge of Seller, all without material challenge of any kind; (ii) during the Intellectual Property owned by any five year period before the Closing Date, Seller has not been cancelled or abandoned attempted in good faith to maintain the Copyrights, Patent Rights and is valid and enforceableTrademarks listed in Section 5.10(a)(2) of the Disclosure Schedule; and (iii) such the Seller has the sole and exclusive right to bring actions for infringement, misappropriation, dilution, violation infringement or unauthorized use of the Intellectual Property and Software owned by such Seller, and to the knowledge of each Seller, there is no basis for any such action. Correct and complete copies of: (x) registrations for all registered Copyrights, Patent Rights and Trademarks identified listed in SCHEDULE 5.15 as being owned by any SellerSection 5.10(a)(2) of the Disclosure Schedule; and (yiv) all pending applications to register unregistered the knowledge of the Seller, there exists no basis for any action by Seller for infringement or unauthorized use by a third party of the Copyrights, Patent Rights and Trademarks identified listed in SCHEDULE 5.15 as being owned by any Seller (together with any subsequent correspondence Section 5.10(a)(2) of the Disclosure Schedule which infringement or filings relating to unauthorized use would have a Material Adverse Effect on the foregoing) have heretofore been delivered by Sellers to BuyerPurchased Assets.
(f) Except as set forth in SCHEDULE 5.15, (i) To the knowledge of the Seller no infringement, misappropriation, violation or dilution material infringement of any Intellectual Property, or any rights of publicity or privacy relating to the use of names, likenesses, voices, signatures or biographical information, Property right of any other Person has occurred or results in any way from the operations opera tions of the BusinessDivision and the use of the Purchased Brands, (ii) and no claim of any infringement, misappropriation, violation or dilution material infringement of any Intellectual Property or any such rights right of any other Person has been made or asserted within the last five years in respect of the operations of the Business Division and (iii) none the use of the Sellers has had notice of, or Purchased Brands. To the knowledge of the Seller, there is no basis for any basis for, a claim against any the Seller that the operations, activities, products, software, equipment, machinery or processes of the Business infringe, misappropriate, violate or dilute Division infringe any Intellectual Property or any such rights right of any other Person, to the extent that such infringement would have a Material Adverse Effect on the Purchased Assets.
(g) Except As of the Closing Date Seller hereby cancels without cost to Buyer any and all licenses, assignments or other conveyances as disclosed may have been in SCHEDULE 5.15: (i) existence or effect between any two or more Sellers respecting the Software included in Intellectual Property related to the Purchased Assets is not subject to any transfer, assignment, change of control, site, equipment, or other operational limitations; (ii) each Seller has maintained and protected the Software included in the Purchased Assets that it owns (the "Owned Software") (including all source code and system specifications) with appropriate proprietary notices, confidentiality and non-disclosure agreements and such other measures as are necessary to protect the proprietary, trade secret or confidential information contained therein; (iii) the Owned Software has been registered or is eligible for protection and registration under applicable copyright law and has not been forfeited to the public domain; (iv) each Seller has copies of all releases or separate versions of its Owned Software so that the same may be subject to registration in the United States Copyright Office; (v) each Seller has complete and exclusive right, title and interest in and to its Owned Software; (vi) each Seller has developed its Owned Software through its own efforts and for its own account without the aid or use of any consultants, agents, independent contractors or Persons (other than Persons that are employees of such Seller); (vii) the Owned Software does not infringe, misappropriate, violate or dilute any Intellectual Property of any other Person; (viii) any Owned Software includes the source code, system documentation, statements of principles of operation and schematics, as well as any pertinent commentary, explanation, program (including compilers), workbenches, tools, and high-level or proprietary language used for the development, maintenance, implementation and use thereof, so that a trained computer programmer could develop, maintain, support, compile and use all releases or separate versions of the same that are currently subject to maintenance obligations by any Seller; (ix) there are no agreements or arrangements in effect with respect to the marketing, distribution, licensing or promotion of the Owned Software by any other Person; (x) the Owned Software complies with all applicable Requirements of Laws relating to the export or re-export of the same; and (xi) the Owned Software may be exported or reexported to all countries without the necessity of any license, other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. Department of Commerce and/or the United States State DepartmentAssets.
(h) Except as disclosed in SCHEDULE 5.15, all employees, agents, consultants or contractors who have contributed to or participated in the creation or development of any Intellectual Property or Software on behalf of any Seller or any predecessor in interest thereto: (i) has created such materials in the scope of his or her employment; (ii) is a party to a valid and enforceable "work-for-hire" agreement under which such Seller is deemed to be the author of the Copyrights; or (iii) has executed an assignment or an agreement to assign in favor of such Seller (or such predecessor in interest, as applicable) of all right, title and interest in such material.
Appears in 1 contract
Intellectual Property; Software. (a) SCHEDULE 5.15 Schedule 5.14(A) contains a list and description (showing in each case the registered or other owner, expiration date and registration or application number, if any) of all Copyrightsregistered Trademarks, registered Copyrights and issued Patents and Trademarks (including all assumed applications therefor owned by Seller or fictitious names under which any Seller is conducting the Business or has within the previous five years conducted the Business) owned by, licensed to or used by any Seller in connection with the conduct of the BusinessSubsidiary.
(b) SCHEDULE 5.15 Schedule 5.14(B) contains a list (i) and description (showing in each case any owner, licensor or licensee) of all Software owned by, licensed by Seller or Seller Subsidiary and (ii) of all licenses to Seller or Seller Subsidiary for Software used by any Seller primarily in the conduct of that is material to the Business; provided, provided however, that SCHEDULE 5.15 Schedule 5.14(B) does not list mass market Software licensed to any Seller or Seller Subsidiary that is available in consumer retail stores or otherwise generally commercially available and subject to "“shrink-wrap" ” or "“click-through" ” license agreements.
(c) SCHEDULE 5.15 Schedule 5.14(C) contains a list and description of all agreements, contracts, licenses, sublicenses, assignments and indemnities that which relate to to: (i) any Copyrights, Patent Rights or Trademarks Intellectual Property listed in SCHEDULE 5.15, Schedule 5.14(A) that is licensed to third parties or (ii) any Trade Secrets owned by, Software required to be listed in Schedule 5.14(B)(i) that is licensed to or used by any Seller used primarily in or relating primarily to third parties (together with the Business or (iii) any Software licenses listed in SCHEDULE 5.15Schedule 5.14(B)(ii), the “Intellectual Property Agreements”).
(d) Except as disclosed in SCHEDULE 5.15Schedule 5.14(D), each Seller eitheror Seller Subsidiary: (i) owns the entire and exclusive right, title and interest in and to the Intellectual Property and Software included in the Purchased Assets, free and clear of any Encumbrance, except for a Permitted Encumbrance, or (ii) has the perpetual, royalty-free right to use the same. Except as set forth in SCHEDULE 5.15, each Seller is listed same and to use all Software included in the records of the appropriate United States, state or foreign registry as the sole current owner of record for each application or registration identified in SCHEDULE 5.15 as being owned by such SellerPurchased Assets.
(e) Except as disclosed in SCHEDULE 5.15: Schedule 5.14(E): (i) all registrations for Copyrightsto the knowledge of Seller, Patent Rights Seller Subsidiary and Trademarks the Selling Parties, the Intellectual Property identified in SCHEDULE 5.15 Schedule 5.14(A) as being owned by any Seller are valid or Seller Subsidiary has not been cancelled or abandoned and is valid, in forceforce and enforceable, and all applications to register any unregistered Copyrights, Patent Rights and Trademarks Intellectual Property so identified are pending pending, not abandoned and in good standing, all without challenge of any kindnot challenged by third parties; and (ii) Seller or Seller Subsidiary has taken all action reasonably necessary to protect and where necessary, in its reasonable discretion, register the Intellectual Property owned by any Seller has not been cancelled or abandoned and is valid and enforceable; and (iii) such Seller has the sole and exclusive right to bring actions for infringement, misappropriation, dilution, violation or unauthorized use it. Complete copies of the prosecution history in the possession of Seller, Seller Subsidiary or representatives thereof for all applications for registration of Intellectual Property and Software owned by such Seller, and included in the Purchased Assets will be delivered to the knowledge of each Seller, there is no basis for any such action. Correct and complete copies of: (x) registrations for all registered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller; and (y) all pending applications to register unregistered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller (together with any subsequent correspondence or filings relating to the foregoing) have heretofore been delivered by Sellers to BuyerBuyer at Closing.
(f) Except as set forth in SCHEDULE 5.15Schedule 5.14(F), to the knowledge of Seller, Seller Subsidiary and the Selling Parties, as related to the Purchased Assets: (i) no infringement, misappropriation, violation or dilution of any Intellectual Property, or any rights of publicity or Seller and Seller Subsidiary have complied with all applicable privacy relating to the use of names, likenesses, voices, signatures or biographical information, of any other Person has occurred or results in any way from the operations of the Businesslaws, (ii) no claim of any infringement, misappropriation, dilution or violation or dilution of any material Intellectual Property or any such rights of any other Person has been made or asserted in respect of the operations of the Business and Business; (iii) none no claim of the Sellers has had notice of, or knowledge invalidity of any basis formaterial Intellectual Property owned by Seller or Seller Subsidiary has been made by any other Person; and (iv) no Person infringes, a claim against any Seller that the operationsmisappropriates, activitiesdilutes, products, software, equipment, machinery uses without authorization or processes of the Business infringe, misappropriate, violate or dilute violates any Intellectual Property or any such rights of any other PersonSoftware owned by Seller or Seller Subsidiary.
(g) Except as disclosed in SCHEDULE 5.15: Schedule 5.14(G): (i) the Software included in the Purchased Assets is not subject to any transfer, assignment, change of control, site, equipment, or other operational limitations; (ii) each Seller has maintained and protected the Software included in the Purchased Assets that it or Seller Subsidiary owns (the "Owned Software") (including all source code and system specifications) with appropriate proprietary notices, confidentiality and non-disclosure agreements and such other measures as are necessary to protect the proprietary, trade secret or confidential information contained therein; (iii) the Owned Software has been registered or is eligible for protection and registration under applicable copyright law and has not been forfeited to the public domain; (iv) each Seller has copies of all releases or separate versions of its Owned Software so that the same may be subject to registration in the United States Copyright Office; (v) each Seller has complete and exclusive right, title and interest in and to its all of the Software included in the Purchased Assets and identified as being owned by the Seller or Seller Subsidiary in Schedule 5.14(B) (the “Owned Software; ”) (vi) each Seller has developed its Owned Software through its own efforts provided, however, that the parties acknowledge the effect of the principle of fair use under the Copyright laws of the United States and for its own account without the aid or use of any consultants, agents, independent contractors or Persons (other than Persons that are employees of such Sellerforeign jurisdiction); (viiiii) to the knowledge of Seller, Seller Subsidiary and the Selling Parties, the Owned Software does not infringe, misappropriate, violate or dilute any Intellectual Property of any other Person; (viiiiv) any Owned Software includes the source code, system documentation, statements of principles of operation and schematics, as well as any pertinent commentary, explanation, program (including compilers), workbenches, tools, and high-higher level (or proprietary “proprietary”) language used for the development, maintenance, implementation and use thereof, so to the extent they exist; (v) the Owned Software operates in accordance with and conforms in all material respects to any specifications, manuals, guides, descriptions and other similar documentation, in written or electronic form; (vi) neither the Seller nor Seller Subsidiary has incorporated any “open source” software into any Owned Software and the Owned Software is not based on any Software that is licensed pursuant to a trained computer programmer could developso-called “open source” license, maintain, support, compile in each case that requires the Seller or Seller Subsidiary to disclose free of charge to third parties the source code to its own proprietary software; and use all releases or separate versions of the same that are currently subject to maintenance obligations by any Seller; (ix) there are no agreements or arrangements in effect with respect to the marketing, distribution, licensing or promotion of the Owned Software by any other Person; (x) the Owned Software complies with all applicable Requirements of Laws relating to the export or re-export of the same; and (xi) the Owned Software may be exported or reexported to all countries without the necessity of any license, Person other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. Department of Commerce and/or the United States State DepartmentIntellectual Property Agreements.
(h) Except as disclosed in SCHEDULE 5.15Schedule 5.14(H), all employees, agents, consultants or contractors who have contributed to or participated in the creation or development of any Intellectual Property or Software included in the Purchased Assets on behalf of any Seller or Seller Subsidiary or any predecessor in interest thereto: (i) has created such materials in the scope of his or her employment; (ii) is a party to a valid and enforceable "work-for-hire" agreement under which such Seller is deemed to be the author of the Copyrights; or (iii) thereto has executed an assignment or an agreement to assign in favor of such Seller or Seller Subsidiary (or such predecessor in interest, as applicable) of all right, title and interest in such material.
(i) Except as disclosed in Schedule 5.14(I), each of Seller and Seller Subsidiary has entered into agreements with its employees, consultants, officers, directors and agents with access to confidential information, and Trade Secrets, processes and formulas, research and development results and other know how of Seller or Seller Subsidiary sufficient to maintain the confidentiality of such confidential information, and Trade Secrets, processes and formulas, research and development results and other know how of Seller or Seller Subsidiary, the value of which is dependent upon the maintenance of the confidentiality thereof. To the knowledge of Seller, Seller Subsidiary or the Selling Parties, there has been no unauthorized disclosure or use of, confidential information, or Trade Secrets, processes and formulas, research and development results and other know how of Seller or Seller Subsidiary. Each of Seller and Seller Subsidiary has taken adequate steps to prevent the unauthorized disclosure or use of confidential information and Trade Secrets, processes and formulas, research and development results and other know how of Seller or Seller Subsidiary related to the Purchased Assets.
Appears in 1 contract
Intellectual Property; Software. (a) SCHEDULE 5.15 Schedule 5.11(a) contains a list and description (showing in each case the registered or other owner, applicant, expiration date and registration or application number, if any) of all CopyrightsPatents, Patents and Trademarks (including all assumed or fictitious names under which any Seller the Company is conducting the Business or has within the previous five years conducted the Businessits business) and registered Copyrights owned by, licensed to or used by any Seller in connection the Company (it being understood and agreed that Schedule 5.11(a) is not limiting with respect to the conduct of Intellectual Property directly or indirectly being acquired by Parent pursuant to the Businesstransactions contemplated by this Agreement). Except as disclosed on Schedule 5.11(a), no Intellectual Property that are United States Patents are subject to a terminal disclaimer against another Patent.
(b) SCHEDULE 5.15 Schedule 5.11(b) contains a list and description (showing in each case any owner, licensor or licensee) of all material Software owned by, licensed to or used by any Seller primarily in the conduct of the Business, provided that SCHEDULE 5.15 does not list mass market Company (except for Software licensed to any Seller the Company that is available in consumer retail stores or otherwise generally commercially available and subject to "“shrink-wrap" ” or "“click-through" ” license agreements). None of the Software on Schedule 5.11(b) is subject to an Open Source License.
(c) SCHEDULE 5.15 Schedule 5.11(c) contains a list and description (showing in each case the parties thereto) of all agreements, contracts, licenses, sublicensesmaterial Contracts, assignments and indemnities that to which the Company is a party and which relate to any [*] or to: (i) any Copyrights, Patent Rights Patents or Trademarks listed in SCHEDULE 5.15, on Schedule 5.11(a); (ii) any Trade Secrets owned by, licensed to or used by any Seller used primarily in or relating primarily to the Business Company; or (iii) any Software listed in SCHEDULE 5.15on Schedule 5.11(b). Except as set forth on Schedule 5.11(c), the Company is not a party to any Contract pursuant to which it has been granted a license to any Intellectual Property and is obligated, or may become obligated, to pay any royalties, milestones, license fees or other similar payments.
(d) All Trade Secrets that are: (i) required in order to research, develop, manufacture, market or sell any product researched, developed, manufactured, marketed or sold by the Company or (ii) otherwise material to the Company (collectively, the “Material Trade Secrets”), have been documented by the Company in sufficient detail so as to ensure that the Company will be able to continually use and exploit all such Material Trade Secrets as such Material Trade Secrets are currently used and exploited, regardless of employee turnover. The Company operates and enforces reasonable procedures designed to ensure the recording and maintenance of all know-how and other Intellectual Property and assignment to the Company of all Intellectual Property that is material to the business or likely to be patentable, and such procedures include requiring all employees, agents, consultants and contractors of the Company involved in any manner in the creation, development or implementation of Intellectual Property to maintain notebooks describing such activities in reasonable detail sufficient to enable the Company to document and otherwise protect, enforce and defend its rights in and to such Intellectual Property.
(e) Except as disclosed in SCHEDULE 5.15on Schedule 5.11(e), each Seller eitherthe Company: (i) owns the entire right, title and interest in and to the Intellectual Property and Software included purported to be owned by the Company (including as set forth in the Purchased AssetsSchedule 5.11(a)), free and clear of any EncumbranceEncumbrances except for Permitted Encumbrances (“Owned Intellectual Property”), or (ii) has the perpetual, world-wide, royalty-free right to use the sameIntellectual Property and Software purported to be licensed to the Company (including as set forth in Schedule 5.11(a)) (“Licensed Intellectual Property”), and (iii) has not granted any license, covenant not to xxx or similar interest or benefit, exclusive or otherwise, in, to or under the Owned Intellectual Property or Licensed Intellectual Property and there is no other Intellectual Property or Software necessary for the Company to conduct its business as currently conducted. The Company’s ability to use Licensed Intellectual Property necessary for the Company to conduct its business substantially as currently conducted will not be affected by the transactions contemplated by this Agreement. Except as set forth in SCHEDULE 5.15Schedule 5.11(e), each Seller the Company is listed in the records of the appropriate United States, state or foreign non-U.S. registry as the sole current owner of record for each application and registration required to be identified on Schedule 5.11(a) or registration identified in SCHEDULE 5.15 Schedule 5.11(b) as being owned by such Sellerthe Company.
(ef) Except as disclosed in SCHEDULE 5.15: on Schedule 5.11(f): (i) all Owned Intellectual Property and, to the Knowledge of the Company, all Licensed Intellectual Property and all registrations for CopyrightsOwned Intellectual Property and, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller to the Knowledge of the Company, Licensed Intellectual Property are valid and in forceforce and all maintenance fees and annuity fees relating thereto have been paid, and all applications to register any unregistered CopyrightsOwned Intellectual Property or, Patent Rights and Trademarks so identified to the Knowledge of the Company, Licensed Intellectual Property are pending and in good standing, all without challenge of any kind; (ii) to the Knowledge of the Company, the issued Patents, registered Copyrights and Registered Trademarks with the Owned Intellectual Property owned by any Seller are valid and enforceable and the Company has not been cancelled taken or abandoned failed to take any action in the prosecution of the issued Patents or the registration of the registered Copyrights and is Trademarks that has caused them not to be valid and enforceable; and (iii) such Seller there are no pending or, to the Knowledge of the Company, threatened interference, re-examination, reissue, opposition, cancellation or other similar proceedings involving the Owned Intellectual Property or the Licensed Intellectual Property; (iv) the Company has the sole and exclusive right to bring actions for infringement or unauthorized use of the Owned Intellectual Property; (v) the Company has taken all actions reasonably necessary to protect, and where necessary register, the material Copyrights, Trademarks, Patents and Trade Secrets owned by or licensed exclusively to the Company; and (vi) the Company is not in breach of any agreement affecting the Intellectual Property used by the Company, and has not taken any action that would impair or otherwise adversely affect its rights in the Intellectual Property used by the Company.
(g) Except as set forth on Schedule 5.11(g): (i) to the Knowledge of the Company, no infringement, misappropriation, dilution, violation or other unauthorized use of the Intellectual Property and Software owned by such Seller, and to the knowledge of each Seller, there is no basis for any such action. Correct and complete copies of: (x) registrations for all registered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller; and (y) all pending applications to register unregistered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any Seller (together with any subsequent correspondence or filings relating to the foregoing) have heretofore been delivered by Sellers to Buyer.
(f) Except as set forth in SCHEDULE 5.15, (i) no infringement, misappropriation, violation or dilution of any Intellectual Property, or any rights of publicity or privacy relating to the use of names, likenesseslikeness, voices, signatures or biographical information, of any other Person has occurred or results resulted in any way from the operations operation of the Business, Company’s business; (ii) no claim of any infringement, misappropriation, violation misappropriation or dilution other unauthorized use of any Intellectual Property or any such rights right of any other Person has been made or asserted in writing to the Company, or to the Knowledge of the Company, by any other means, in respect of the operations of the Business and Company’s business; (iii) none no claim of invalidity of any Owned Intellectual Property has been made in writing to the Company, or to the Knowledge of the Sellers has had notice ofCompany, by any other means; (iv) no proceedings are pending or, to the Knowledge of the Company, threatened which challenge the validity, ownership or knowledge use of any basis forOwned Intellectual Property; (v) the Company has not received written notice or, a to the Knowledge of the Company, notice by any other means of any claim against any Seller that the operations, activities, products, software, equipment, machinery or processes operations of the Business Company’s business infringe, misappropriate, dilute, violate or dilute otherwise use without authorization any Intellectual Property right of any other Person and, to the Knowledge of the Company, there is no basis for any such claim; and (vi) to the Knowledge of the Company, no Person infringes, misappropriates, violates, dilutes or otherwise violates any Owned Intellectual Property or any such rights of any other PersonIntellectual Property exclusively licensed to the Company.
(gh) Except as disclosed on Schedule 5.11(h), to the Knowledge of the Company [*], there are no Patents of any other Person dominating, interfering, or potentially dominating or interfering, with the issued Patents included in SCHEDULE 5.15: the Owned Intellectual Property of the Company, or that could be asserted by a Person to exclude or prevent the Company from practicing the methods or other inventions in issued Patents included in the Owned Intellectual Property or Licensed Intellectual Property or that are otherwise necessary to conduct the business of the Company as currently conducted. No Intellectual Property owned or controlled by the Company has been developed or otherwise obtained using any funding or other resources provided by any Governmental Body or institution of higher education except as indicated in Schedule 5.11(h).
(i) The Company has made available to Parent all information, including prior art, in its possession of which it has Knowledge and that it reasonably believes is material to the Software included in patentability, inventorship or ownership of any of the Purchased Assets is not subject to any transferPatents. To the Knowledge of the Company, assignmentthere are no published (whether by physical or electronic publication) Patents, change of control, site, equipmentarticles or other prior art references, or any other operational limitations; (iiprior art or material information, that could reasonably be expected to render invalid or unenforceable or could prevent the issuance of, in whole or in part, any Patents listed in Schedule 5.11(a) or any claim therein. For each Seller has maintained and protected of the Software included Patents listed in the Purchased Assets that it owns (the "Owned Software") (including all source code and system specifications) with appropriate proprietary noticesSchedule 5.11(a), confidentiality and non-disclosure agreements and such other measures as are necessary to protect the proprietary, trade secret or confidential information contained therein; (iii) the Owned Software has been registered or is eligible for protection and registration under applicable copyright law and has not been forfeited to the public domain; Knowledge of the Company, each of the Company, its attorneys, agents and relevant employees and representatives (ivand, to the Knowledge of the Company, the owners and inventors, and their attorneys, agents and relevant employees and representatives, of the Patents listed in Schedule 5.11(a) each Seller that are otherwise controlled by the Company) has copies met its duty of all releases or separate versions candor as required under 37 C.F.R. 1.56 and complied with analogous Requirements of its Owned Software so that the same may be subject to registration in Law outside the United States Copyright Office; requiring disclosure of references. [*]
(vj) Except as disclosed on Schedule 5.11(j), each Seller inventor named on the Patents listed in Schedule 5.11(a) that were filed or are owned by the Company (and, to the Knowledge of the Company, each inventor named on the Patents listed in Schedule 5.11(a) that are otherwise controlled by the Company), alone or together with any joint owners, has complete and exclusive executed an agreement actually assigning his or her entire right, title and interest in and to its Owned Software; such Patent, and the inventions embodied and claimed therein, to the Company (vi) each Seller or to the Person who has developed its Owned Software through its own efforts and for its own account without entered into a written agreement to license such Patent to the aid Company as reflected on Schedule 5.11(a)), alone or use together with any joint owners as reflected in Schedule 5.11(a), except as indicated in Schedule 5.11(a). To the Knowledge of the Company, no such inventor has any consultants, agents, independent contractors contractual or Persons (other than Persons obligation that are employees would preclude or render void or voidable any such assignment or otherwise conflict with the obligations of such Seller); (vii) inventor to the Owned Software does not infringe, misappropriate, violate Company or dilute any Intellectual Property of any other Person; (viii) any Owned Software includes the source code, system documentation, statements of principles of operation and schematicsappropriate owners under such agreement with the Company or such appropriate owners, as well as any pertinent commentary, explanation, program (including compilers), workbenches, tools, and high-level or proprietary language used for the development, maintenance, implementation and use thereof, so that a trained computer programmer could develop, maintain, support, compile and use all releases or separate versions of the same that are currently subject to maintenance obligations by any Seller; (ix) there are no agreements or arrangements in effect with respect to the marketing, distribution, licensing or promotion of the Owned Software by any other Person; (x) the Owned Software complies with all applicable Requirements of Laws relating to the export or re-export of the same; and (xi) the Owned Software case may be exported or reexported to all countries without the necessity of any license, other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. Department of Commerce and/or the United States State Departmentbe.
(hk) Except as disclosed in SCHEDULE 5.15on Schedule 5.11(k), no Owned Intellectual Property is subject to any transfer, assignment, site, equipment or other operational limitations, whether pursuant to Contract or any order, judgment, writ, injunction or decree of any court or other Governmental Body.
(l) Except as disclosed on Schedule 5.11(l), all employees, agents, consultants or contractors who have contributed to or participated in the creation or development of any Owned Intellectual Property or Software on behalf of any Seller the Company or any predecessor in interest thereto: thereto (i) has created such materials in the scope of his or her employment; (ii) is a party to a valid and enforceable "“work-for-hire" agreement ” Contract under which such Seller the Company is deemed to be the original owner/author of the Copyrights; or all rights, title and interest therein and (iiiii) has executed an assignment or an agreement to assign in favor of such Seller the Company (or such predecessor in interest, as applicable) of all right, title and interest in such materialIntellectual Property.
(m) Except as disclosed in Schedule 5.11(m), the Company has entered into agreements with employees, consultants, contractors, officers, managers, agents and Affiliates of the Company sufficient to maintain the confidentiality of the Trade Secrets of the Company, the value of which is dependent upon the maintenance of the confidentiality thereof. There is no breach or violation by the Company under, and, to the Knowledge of the Company, no breach or violation by any other party to, any such agreement. No current or former employees, consultants, contractors or founders of the Company have any right, license, claim or interest whatsoever in or with respect to any Owned Intellectual Property that is necessary to conduct the business of the Company as currently conducted. To the Knowledge of the Company, there has been no unauthorized disclosure or use of Material Trade Secrets of the Company. The Company has taken reasonable steps to prevent the unauthorized disclosure or use of its Trade Secrets.
(n) Except as disclosed on Schedule 5.11(n), the Company has not granted to any third Person any ownership rights, options, exclusive rights, rights to sublicense, or any other right or interest in, any of the products it has researched or developed or is currently researching or developing, or any Intellectual Property relating to such products.
(o) The Company has synthesized all of the compounds listed in Schedule 5.11(o).
Appears in 1 contract
Intellectual Property; Software. (a) SCHEDULE 5.15 5.15(A) contains a list and description (showing in each case any product, device, process, service, business or publication covered thereby, the registered or other owner, expiration date and registration or application number, if any) of all Copyrights, Patents Patent Rights and Trademarks (including all assumed or fictitious names under which any Seller is conducting the Business or has within the previous five years conducted the Business) owned by, licensed to or used by any Seller Comdata or the Gaming Subsidiary in connection with the conduct of the Gaming Business.
(b) SCHEDULE 5.15 5.15(B) contains a list and description (showing in each case any owner, licensor or licensee) of all Software owned by, licensed to or used by any Seller primarily Comdata or the Gaming Subsidiary in the conduct of the Gaming Business, provided that SCHEDULE 5.15 5.15(B) does not list mass market Software licensed to any Seller Comdata or the Gaming Subsidiary that is available in consumer retail stores or otherwise generally commercially available and subject to "shrink-wrap" or "click-throughclick on" license agreements.
(c) SCHEDULE 5.15 5.15(C) contains a list and description (showing in each case the parties thereto) of all agreements, contracts, licenses, sublicenses, assignments and indemnities that which relate to (i) any Copyrights, Patent Rights or Trademarks listed in SCHEDULE 5.155.15(A), (ii) any Trade Secrets owned by, licensed to or used by any Seller used primarily Comdata or the Gaming Subsidiary in or relating primarily to connection with the conduct of the Gaming Business or (iii) any Software listed in SCHEDULE 5.155.15(B).
(d) Except as disclosed in SCHEDULE 5.155.15(D), each Seller Comdata or the Gaming Subsidiary either: (i) owns the entire right, title and interest in and to the Intellectual Property and Software included in the Purchased Gaming Assets, free and clear of any Encumbrance, or ; (ii) has the perpetual, royalty-free right to use the same. Except as set forth in SCHEDULE 5.15, each Seller is listed same or (iii) in the records case of third party vendor Software, has the appropriate United States, state ability to transfer such Software without the necessity of obtaining consents or foreign registry as the sole current owner payment of record for each application or registration identified in SCHEDULE 5.15 as being owned by such Sellerfees.
(e) Except as disclosed in SCHEDULE 5.15: 5.15(E): (i) all registrations for Copyrights, Patent Rights and Trademarks Trademarks, including registrations therefor, identified in SCHEDULE 5.15 5.15(A) as being owned by any Seller Comdata or the Gaming Subsidiary are valid and in force, and all patent applications with respect to Patent Rights and all applications to register any unregistered Copyrights, Patent Rights Copyrights and Trademarks so identified are pending and in good standing, all without challenge of any kind; (ii) the Intellectual Property owned by any Seller has not been cancelled Comdata or abandoned the Gaming Subsidiary and included in the Purchased Gaming Assets is valid and enforceable; and (iii) such Seller Comdata or the Gaming Subsidiary has the sole and exclusive right to bring actions for infringement, misappropriation, dilution, violation infringement or unauthorized use of the Intellectual Property and Software owned by such SellerComdata or the Gaming Subsidiary and included in the Purchased Gaming Assets, and to the knowledge of each SellerComdata or the Gaming Subsidiary, there is no basis for any such action. Correct and complete copies of: such
(xA) registrations for all registered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 as being owned by any SellerComdata or the Gaming Subsidiary; and (y) all pending applications to register unregistered Copyrights, Patent Rights and Trademarks identified in SCHEDULE 5.15 5.15(A) as being owned by any Seller Comdata or the Gaming Subsidiary (together with any subsequent correspondence or filings relating to the foregoing) have heretofore been delivered by Sellers Comdata to BuyerIPS.
(f) Except as set forth in SCHEDULE 5.155.15(F), (i) to the knowledge of Comdata or the Gaming Subsidiary, no infringement, misappropriation, violation or dilution infringement of any Intellectual Property, or any rights of publicity or privacy relating to the use of names, likenesses, voices, signatures or biographical information, Property Right of any other Person has occurred or results in any way from the operations of the Business, Gaming Business as previously or currently conducted; (ii) no claim of any infringement, misappropriation, violation or dilution infringement of any Intellectual Property or any such rights Right of any other Person has been made or asserted in respect of the operations of the Business and Gaming Business; (iii) none neither Comdata or the Gaming Subsidiary has received notice that any claim of invalidity of any Copyright, Trademark or Patent Right, Software or Trade Secret has been made; (iv) no proceedings are pending or, to the knowledge of Comdata or the Gaming Subsidiary, threatened which challenge the validity, ownership or use of any of the Sellers Gaming Business Intellectual Property; and (v) neither Comdata or the Gaming Subsidiary has had notice of, or knowledge of any basis for, a claim against any Seller Comdata or the Gaming Subsidiary that the operations, activities, products, software, equipment, machinery or processes of the Gaming Business infringe, misappropriate, violate or dilute infringe any Intellectual Property or any such rights Right of any other Person.
(g) Except as disclosed in SCHEDULE 5.15: 5.15(G): (i) the Software included used in the Purchased Assets Gaming Business (the "GAMING BUSINESS OWNED SOFTWARE") is not subject to any transfer, assignment, change of controlsource code escrow agreement, reversion, site, equipment, or other operational limitations; (ii) each Seller Comdata or the Gaming Subsidiary has maintained and protected the Gaming Business Owned Software included in the Purchased Assets that it owns (the "Owned Software") (including including, without limitation, all source code and system specifications) with appropriate proprietary noticesnotices (including, without limitation, the notice of copyright in accordance with the requirements of 17 U.S.C. Section 401), confidentiality and non-disclosure agreements and such other measures as are reasonably necessary to protect the proprietary, trade secret or confidential information contained therein; (iii) the Gaming Business Owned Software has been registered or is eligible for protection and registration protectable under applicable copyright law and has not been forfeited to the public domaindomain and has been registered with the U.S. Copyright Office or is eligible for registration; (iv) each Seller Comdata or the Gaming Subsidiary has copies of all releases or separate versions of its the Gaming Business Owned Software so that the same may be subject to registration in the United States Copyright Office; (v) each Seller Comdata or the Gaming Subsidiary has complete and exclusive right, title and interest in and to its the Gaming Business Owned Software; (vi) each Seller Comdata or the Gaming Subsidiary has developed its the Gaming Business Owned Software through its own efforts and for its own account without the aid or use of any consultants, agents, independent contractors or Persons (other than -45- Persons that are employees of such SellerComdata or the Gaming Subsidiary); (vii) to the knowledge of Comdata or the Gaming Subsidiary, the Gaming Business Owned Software does not infringe, misappropriate, violate or dilute infringe any Intellectual Property Right of any other Person; (viii) any Gaming Business Owned Software includes the source code, system documentation, statements of principles of operation and schematics, as well as any pertinent commentary, explanation, program (including compilers), workbenches, tools, commentary and high-level or proprietary language explanation used for the development, maintenance, implementation and use thereof, so that a trained computer programmer could develop, maintain, enhance, modify, support, compile and use all releases or separate versions of the same that are currently subject to maintenance obligations by any SellerComdata or the Gaming Subsidiary; and (ix) there are no agreements or arrangements in effect with respect to the marketing, distribution, licensing or promotion of the Gaming Business Owned Software by any other Person; (x) the Owned Software complies with all applicable Requirements of Laws relating to the export or re-export of the same; and (xi) the Owned Software may be exported or reexported to all countries without the necessity of any license, other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. Department of Commerce and/or the United States State Department.
(h) Except as disclosed in SCHEDULE 5.155.15(H), all employees, agents, consultants or contractors who have contributed to or participated in the creation or development of any Intellectual Property or Software on behalf of any Seller Comdata or the Gaming Subsidiary or any predecessor in interest theretothereto either: (i) has created such materials in the scope of his or her employment; (ii) is a party to a valid and enforceable "work-for-hire" agreement under which such Seller Comdata or the Gaming Subsidiary is deemed to be the original owner/author of the Copyrightsall property rights therein; or (iiiii) has executed an assignment or an agreement to assign in favor of such Seller Comdata or the Gaming Subsidiary (or such predecessor in interest, as applicable) of all right, title and interest in such material.
(i) Except as expressly provided herein, FDFS acknowledges and agrees that the conveyance of the Purchased Gaming Assets from Comdata to FDFS does not result in any express or implied license or other rights to FDFS or any third person under any patent rights of Comdata or its Affiliates or under any patent rights of any third parties licensed to Comdata or its Affiliates whether by implication, estoppel or otherwise. All such express or implied licenses or other rights are hereby expressly excluded and disclaimed.
Appears in 1 contract
Samples: Exchange Agreement (Ceridian Corp)
