Exhibit 10.7 Licensing Agreement
LICENSING AGREEMENT
This agreement ("Agreement"), effective on the date of the last party's
signature ("Effective Date"), is between Mitigo, Inc., a Delaware corporation
having a principal place of business at 000 Xxxxxxxxxxxx Xxx, Xxxxx 000, Xxxxxx,
Xxxxxxxxxxxxx 00000 ("Licensee"), and Cobblestone Software, Inc., a Delaware
corporation having a principal place of business at 00 Xxxxxx Xxxxxx, Xxxxxxxxx,
Xxxxxxxxxxxxx 00000 ("Licensor").
In consideration of the mutual promises and undertakings described herein,
the parties agree as follows:
1.0 DEFINITIONS
As used in this Agreement and where not otherwise distinctly defined, the
following terms will have the following definitions:
1.1 "Licensed Technology" shall mean any and all methods,
implementations, designs, devices, techniques, inventions (including the claims
of U.S. Patents Nos. 6,098,882 and 6,176,427), trade secrets, know how,
formulae, processes, practices, knowledge, skill, experience, works of
authorship (including computer software), and mask works which are involved in
the source code, object code and computer software entitled PaperDisk (i.e.,
the encoding and decoding functions of Cobblestone's proprietary matrix code),
subject to and limited by the licenses granted in section 2.0.
1.2 "Intellectual Property Rights" shall mean all rights protecting
intellectual property granted under domestic or foreign statutory and/or common
laws including patents, trade secrets, copyrights, mask work rights, rights of
privacy or publicity, moral rights, contract and licensing rights, and other
proprietary rights, and any applications and registrations therefore in all
countries of the world, subject to and limited by the licenses granted in
section 2.0.
1.3 "Mobile Commerce" shall mean any activity where mobile devices,
such as mobile telephones, Personal Digital Assistants (PDAs), handheld
computers, or other wireless enabled devices as may be developed in the future,
that are used to communicate via the Internet to consummate a purchase or
exchange of goods or services, or to send or retrieve information related to an
actual or prospective purchase or exchange of goods or services.
1.4 "License" shall mean the perpetual, worldwide right to make, have
made, reproduce, have reproduced, use, perform, display, import, sell, have
sold, offer for sale, rent, lease, distribute, transmit, make improvements and
derivative works, and otherwise dispose of products or components (including,
but not limited to, chips, cores and software), and to sublicense others to do
the same to the extent necessary to carry out the licensing rights granted to
the Licensee.
1.5 "Improvements" shall mean any beneficial modification of the
Licensed Technology made on or after September 1, 2001.
1.6 "Derivative Work" shall mean any modification, reflecting a modicum
of creativity, of a preexisting work.
2.0 LICENSES
2.1 Cobblestone hereby grants Mitigo an exclusive License to all of
Cobblestone's Intellectual Property Rights associated with the Licensed
Technology for decoding visibly-encoded public-domain symbols officially
approved by the Uniform Council Code, or other commonly recognized symbology
standards organizations, for use in mobile commerce.
2.2 Cobblestone hereby grants Mitigo an exclusive License to all of
Cobblestone's Intellectual Property Rights associated with the Licensed
Technology to encode and decode visual symbols, in the visible spectrum, at less
than or equal to seventy-five (75) data bits, plus an additional number of bits
used for error correction and detection techniques.
2.3 Cobblestone hereby grants Mitigo an exclusive License under its
Intellectual Property Rights associated with the Licensed Technology to decode
visibly-encoded proprietary symbols, licensed to Mitigo by third parties (to the
extent of those licenses) that relate to enabling Mobile Commerce activities.
3.0 RESERVATIONS TO EXCLUSIVE LICENSES
3.1 Notwithstanding the exclusive character of the exclusive Licenses
granted under sections 2.2, 2.3 and 2.4 of this Agreement, Mitigo shall take
such Licenses subject to the rights granted to JumpJot, Inc. by a written
agreement attached to this Licensing Agreement as Exhibit A. Cobblestone
represents that no other Licenses have been granted which may affect the subject
matter of the Licensed Technology or which would substantially diminish the
value of the Licenses granted herein. In the event of a default or other event
which would cause the License granted to JumpJot, Inc. to expire, Mitigo shall
have a right of first refusal to acquire the rights that Licensor would
otherwise grant to a third party where those rights consist of all or
substantially all of the rights granted to JumpJot. If Mitigo does not, within
thirty (30) days of receipt from Cobblestone of notice of default or expiration
of JumpJot's License, indicate in writing its acceptance of a License to such
rights, then Mitigo shall be deemed to have refused a License for such rights.
This right of first refusal shall apply only in the first three (3) years
following the date of this Agreement.
4.0 WORKS CREATED AND INVENTIONS DEVELOPED WITHIN THE SCOPE OF EMPLOYMENT
4.1 Cobblestone acknowledges that one or more of Mitigo's employees,
including, but not limited to, Xxxxxx Xxxxxxx Xxxxxxxxx, are employees of
Cobblestone, and that any works created, or inventions developed, by any such
employees of Mitigo, within the scope of the employees' employment at Mitigo,
are the property of Mitigo, provided that Mitigo shall not have rights to such
works created or inventions developed, more extensive than would be covered by
an employment contract that includes the following terms:
"I. Computer Programs Are Works Made for Hire: I understand that as part of
my job duties I may be asked to create, or contribute to the creation of,
computer programs, documentation and other copyrightable works. I agree
that any and all computer programs, documentation and other copyrightable
materials that I am asked to prepare or work on as part of my employment
with the Company, shall be "works made for hire" and that
the Company shall own all the copyright rights in such works, provided that
such works satisfy paragraphs IIa, IIb, and IIc.
II. Disclosure of Developments: While I am employed by the Company, I will
promptly inform the Company of the full details of all my inventions,
discoveries, improvements, innovations and ideas - whether or not
patentable, copyrightable or otherwise protectible -- that I conceive,
complete or reduce to practice (whether jointly or with others) and which:
(a) relate to the Company's present or prospective business related
to handheld wireless applications, or actual or demonstrably anticipated
research and development related to handheld wireless applications,
(b) result from any work I do using non-incidental amounts of
equipment, facilities, materials, trade secrets or personnel of the
Company, and
(c) result from or are suggested by any work that I may do for the
Company, provided that such works do not relate to the PaperDisk technology
(i.e., the encoding and decoding functions of Cobblestone's proprietary
matrix code).
Such items shall collectively be called "Developments".
III. Assignment of Developments: I hereby assign to the Company or the
Company's designee, my entire right, title and interest in all of the
following, that I conceive or make (whether alone or with others) while
employed by the Company:
(a) all Developments;
(b) all copyrights, trade secrets, trademarks and mask work rights in
Developments; and
(c) all patent applications filed and patents granted on any
Developments, including those in foreign countries."
5.0 LICENSING FEES AND POTENTIAL ROYALTIES
5.1 As consideration for the Licenses granted in section 2.0, Mitigo
will pay Cobblestone $5,000.00 upon the execution of this Licensing Agreement,
and an additional $25,000.00 on each September 1 that occurs after the Effective
Date of this Licensing Agreement, whereby the first $25,000.00 payment will be
due on September 1, 2002. Mitigo shall pay the amounts required under this
subsection on or before September 1 of the applicable year. Mitigo shall pay
interest at the rate of 12% per annum for any payments received more than
forty-five (45) days after September 1 of the applicable year. If for any reason
this Licensing Agreement is terminated lawfully in writing under the terms of
this Licensing Agreement, Mitigo shall pay, within thirty (30) days of the
termination date of this Licensing Agreement, an amount less than or equal to
$25,000.00, to Cobblestone, whereby the amount due will be determined by
prorating the $25,000.00 for the portion of the then current year that has
passed since the preceding September 1 as of the termination date based on
receipt of written notice.
5.2 As consideration for the exclusive License granted in subsection
2.3, Mitigo shall pay Cobblestone royalties of an additional $25,000 on
September 1 of each year starting in 2003 provided, however, that if Mitigo
elects, in its sole discretion, to cede back all exclusive rights granted in
subsection 2.3, Mitigo shall not be required to make any of these additional
payments for years subsequent to such election. Mitigo shall pay interest at the
rate of 12% per annum for any payments received more than forty-five (45) days
after the end of the applicable quarter.
6.0 TAXES
6.1 Payment. Mitigo shall, in addition to the payments required
hereunder, pay all applicable sales, use, transfer or other taxes, however
designated, which are levied or imposed by reason of the transaction
contemplated hereunder; excluding, however, income taxes on income which may be
levied against Cobblestone. The parties agree that the determination of the
amount of state and local sales and use taxes, if any, the jurisdiction to which
such taxes are to be paid, and any other determinations of a substantive or
procedural nature relating to such taxes, will be the responsibility and
prerogative of Mitigo, in its sole discretion.
6.2 Tax Indemnity. All such taxes shall be specifically stated and
billed to Mitigo by Cobblestone and Cobblestone shall itemize the components on
the invoices. All such taxes shall be collected and remitted to the appropriate
state by Cobblestone. Cobblestone shall have sole responsibility for the timely
payment of all applicable state and local sales and use taxes with respect to
all of Mitigo's purchases under this Agreement.
7.0 RECORDS AND REPORTING
Mitigo shall maintain financial records. Such records shall be maintained
by Mitigo for at least three (3) years following the applicable reporting
period. Such records shall be made available during normal business hours and
upon reasonable advance notice for inspection by and at the expense of
Cobblestone.
8.0 CONFIDENTIALITY
8.1 Confidential Information: Each party acknowledges that certain
information disclosed in connection with the transactions contemplated hereunder
may contain confidential information and trade secrets of the other party, and
that such confidential information and trade secrets are the property of the
disclosing party. Such information disclosed hereunder shall be treated as
"Confidential Information" of the disclosing party under this section only if
such information, if disclosed in written or other tangible form, is marked
conspicuously as "confidential" or with a similar legend, or, if disclosed
orally or by non-tangible visible means, is reduced to writing (and similarly
marked) by the disclosing party within thirty (30) days after the date of
disclosure.
8.2 Non-disclosure: A party receiving Confidential Information shall take
the same measures to prevent unauthorized disclosure and maintain the
confidentiality of such Confidential Information as it takes with respect to its
own confidential information of similar importance, but shall in no event take
less than reasonable measures.
8.3 Need-to-Know Restriction: A party receiving Confidential Information
shall limit dissemination of and access to any Confidential
Information to those personnel of the receiving party who have a good faith need
for such access to effectuate the purposes of this Agreement.
8.4 Confidential Information shall not include information that: (a) is
now or subsequently becomes generally available to the public through no fault
or breach on a party's part; (b) a receiving party can demonstrate to have had
rightfully in the receiving party's possession prior to disclosure to the
receiving party by the disclosing party; (c) is independently developed by the
receiving party without the use of any of the disclosing party's Confidential
Information; (d) the receiving party rightfully obtained the information from a
third party who has the right to transfer or disclose it to receiving party; (e)
the receiving party discloses with the disclosing party's prior written consent,
or (f) the existence but not the details of a business relationship between
Mitigo and Cobblestone.
9.0 REPRESENTATIONS AND WARRANTIES
9.1 Representations.
9.1.1 Cobblestone hereby represents to Mitigo:
a. That Cobblestone is the sole owner of the Licensed
Technology and has the sole right to grant the Licenses
granted under section 2.0 in and to the Licensed Technology.
b. That Mitigo's licensed use, possession and duplication of
the Licensed Technology will not be interrupted or otherwise
disturbed by any entity asserting a claim related to the
Licensed Technology.
c. That neither the Licensed Technology, or any portion
thereof, constitutes or may give rise to a claim of
infringement of any patent, copyright, trade secret or other
property right of a third party.
d. That, as pertains to the encoding and decoding of digital
data using the Licensed Technology, Cobblestone is not aware
of any facts or circumstances that would constitute an
infringement of any third party patents, copyrights or trade
secrets.
9.2 Warranties.
Except as otherwise set forth herein, Cobblestone's Licensed Technology is
licensed as is. All warranties, either expressed or implied, are disclaimed as
to the technology in its quality, performance, merchantability, or fitness for
any business or a particular purpose. In no event will Cobblestone be liable
for direct, indirect or incidental or consequential damages resulting from any
defect in the PaperDisk software. However, it will be Cobblestone's
responsibility to correct any defect in the PaperDisk software within a
reasonable time after receiving a complaint, where such reasonable time will in
no event exceed twelve (12) months from the Effective Date of this Licensing
Agreement.
9.3 General Representations and Warranties.
NOTHING IN THIS AGREEMENT, EXCEPT AS SET FORTH IN SUBSECTIONS 9.1 AND
9.2, SHALL BE DEEMED TO BE A REPRESENTATION OR WARRANTY BY EITHER PARTY OF
THE VALIDITY, ENFORCEABILITY OR SCOPE OF ANY OF THE INTELLECTUAL PROPERTY
RIGHTS. NEITHER PARTY SHALL HAVE LIABILITY WHATSOEVER TO THE OTHER PARTY OR
ANY OTHER PERSON OR A THIRD PARTY FOR OR ON ACCOUNT OF ANY INJURY, LOSS, OR
DAMAGE OF ANY KIND OR NATURE, SUSTAINED BY, OR ANY DAMAGE ASSESSED OR
ASSERTED AGAINST, OR ANY OTHER LIABILITY INCURRED BY OR IMPOSED UPON A
PARTY OR ANY OTHER PERSON, ARISING OUT OF OR IN CONNECTION WITH OR
RESULTING FROM (A) THE PRODUCTION, USE OR SALE OF ANY APPARATUS OR PRODUCT,
OR THE PRACTICE OF THE INTELLECTUAL PROPERTY RIGHTS; OR (B) ANY ADVERTISING
OR OTHER PROMOTIONAL ACTIVITIES WITH RESPECT TO ANY OTHER INTELLECTUAL
PROPERTY RIGHTS.
10.0 ASSIGNMENT AND DELEGATION
No right may be assigned, and no duty may be delegated, by either party
under this Agreement except to a successor of all or substantial all of its
assets or voting securities whether by sale, merger or otherwise, provided that
the assigning party shall provide the other party with prompt written notice and
cause such assignee to be bound by this Licensing Agreement.
11.0 NOTICE
Any notice, report or payment provided for in this Licensing Agreement
shall be deemed sufficiently given when sent by certified or registered mail
addressed to the party for whom intended at the address given in this Licensing
Agreement or at such changed address as the party shall specify by written
notice.
12.0 INDEMNIFICATION
Each party agrees to indemnify and hold harmless the other party from and
against any cost, loss or expense (including attorneys' fees) resulting from any
and all claims by third parties for loss, damage, or injury allegedly caused by
the actions, admissions, or misrepresentations of the other party, as agents or
employees provided that the indemnified parties provides the indemnifying party
with (a) prompt written notice of such claims or actions, (b) sole controlling
authority over the defense or settlement of such claim or action, and (c) proper
and full information and reasonable assistance to defend and/or settle any such
claim or action.
13.0 TERMINATION
13.1 Right to Terminate.
13.1.1 Either party may terminate this Licensing Agreement if the
other party materially breaches its obligations under this Licensing Agreement
and does not remedy such breach within thirty (30) days of its receipt of
written notice of such breach.
13.1.2 In addition to the rights provided in 13.1, It will
constitute a material breach of this Licensing Agreement, permitting either
party to immediately terminate this Licensing Agreement, if the other party:
a. Persistently repeats a remedial breach;
b. Files a petition under the United States Bankruptcy Act or any
state insolvency law;
c. Has filed against it any petition under the United States
Bankruptcy Act or any state insolvency law which is not dismissed
within sixty (60) days; or
d. Makes an assignment for the benefit of creditors.
13.2 Effect of Termination.
Upon termination, each party shall return to the other party the other
party's confidential information established under section 2.0.
14.0 LITIGATION
14.1 Each party shall notify the other party in writing of any
suspected infringement of the Intellectual Property Rights by a third party and
shall inform the other party of any evidence of such infringement. As the
exclusive Licensee of the Licensed Technology, Mitigo shall have the initial
right to institute suit for infringement. Cobblestone agrees to cooperate as
reasonably necessary with Mitigo, if requested, with all costs, attorneys' fees
and expenses to be paid by Mitigo. However, if Mitigo chooses not to institute
suit for infringement within ninety (90) days of receipt of written notice of
the infringement, Cobblestone may bring suit for infringement in its own name,
on its own behalf, and at its own expense. Whichever party brings the law suit
shall be entitled to any recovery or damages resulting from the law suit. The
instituting party may not settle with an infringer without the prior approval of
the other party if such settlement would affect any rights of the other parties.
14.2 Each party is responsible for defending its rights under this
Agreement and any action initiated by a third party. The other party will
cooperate as reasonably necessary, if requested, with the party involved in any
action to defend the involved party's rights, and any costs, attorneys' fees and
expenses to be paid by the involved party.
15.0 GENERAL PROVISIONS
15.1 This Licensing Agreement will be binding on and inure to the
benefit of the parties and their respective successors and assigns.
15.2 Neither party shall be liable to the other party for any loss
profits, loss savings, or other consequential damages, even if such party has
been advised of the possibility of or could have foreseen such damages.
15.3 The waiver or breach of this Agreement or the failure of either of
the parties to exercise any rights under this Agreement will in no event
constitute a waiver as to any future breach, whether similar or dissimilar in
nature, or as to the exercise of any future right under this Agreement.
15.4 This Agreement constitutes the entire understanding of the
parties, supersedes all prior agreements, written or oral, between the parties
and is intended as a final expression of their agreement. This Agreement will
not be modified or amended except in writing signed by both parties.
15.5 If any part, term or provision of this Agreement will be found
illegal or in conflict with any valid controlling law, the validity of the
remaining provisions will not be effected.
15.6 This Agreement shall be governed by the laws of the Commonwealth
of Massachusetts without regard to conflict of laws. Jurisdiction and venue for
any litigation arising from or relating to this Agreement shall be in an
appropriate federal or state court in Massachusetts.
15.7 Sections 4.0, 8.0, 9.0, 10.0, 12.0, and 15.1-15.7 shall survive
the expiration, termination or rescission of this Agreement.
15.8 Both parties acknowledge and agree that successful development and
implementation of the Licensed Technology to make the Licensed Technology
operational for Mitigo's purposes shall require the party's full and mutual good
faith cooperation.
15.9 The parties are and shall remain independent contractors. Nothing
herein shall be deemed to establish a partnership, joint venture or agency
relationship between the parties. Neither party shall have the right to
obligate nor bind the other party in any manner to any third party.
15.10 This Agreement may be executed in several counterparts, all of
which taken together shall constitute a single agreement between the parties.
15.11 The section headings used herein are for reference and
convenience only and shall not enter into the terms of this Agreement.
15.12 Where agreement, approval, acceptance, consent or similar action
by either party is required by any section of this Agreement, such action shall
not be unreasonably delayed or withheld.
15.13 If the performance of this Agreement or any obligations hereunder
is prevented, restricted or interfered with by reason of fire or other casualty
or accident, strikes or labor disputes, war or other violence, any law or
proclamation, regulation, ordinance, demand or requirement of any government
agency, or any other act or condition beyond the reasonable control of the
parties, the parties so effected upon giving prompt notice to the other party,
shall be excused from such performance during such prevention, restriction or
interference.
15.14 Quiet Enjoyment. Unless this Agreement is terminated, Mitigo's
Licenses to the Licensed Technology shall not be impaired, revoked, or
restricted by Cobblestone in any manner or at any time. The foregoing shall
not, however, affect Cobblestone's right to seek injunctive relief to prevent a
breach of this Agreement by Mitigo.
15.15 For the purpose of all written communications and notices between
the parties, the parties addresses will be:
Cobblestone Software, Inc.
00 Xxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Mitigo, Inc.
000 Xxxxxxxxxxxx Xxx, Xxxxx 000
Xxxxxx, XX 00000
or any other address of which any party will notify the other party in writing.
15.16 Cobblestone and Mitigo agree to negotiate in good faith on potential
future licensing of intellectual property rights of either party.
IN WITNESS WHEREOF, each of the parties have caused this Agreement to be
executed on its behalf by its duly authorized representative as follows:
COBBLESTONE SOFTWARE, INC. MITIGO, INC.
By: /s/Xxxxxx Xxxxxxxxx By: /s/Xxxxx Xxxxx
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Name: Xxxxxx Xxxxxxxxx Name: Xxxxx Xxxxx
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Title: President Title: President/CEO
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Dated: January 10, 2002 Dated: January 10, 2002
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