Exhibit 10.3
NON EXCLUSIVE LICENSE AGREEMENT
This Agreement (this "Agreement") is made as of the 15th day of November,
2004 by and between GENERAL FINANCE AND DEVELOPMENT, INC., a Minnesota
corporation (hereinafter called "Licensor") and VITAL HEALTH TECHNOLOGIES, INC.
(a.k.a. Caribbean American Health Resorts, Inc.), a Minnesota corporation. Vital
Health Technologies, Inc. and its subsidiaries are collectively referred to
hereinafter as "Licensee".
BACKGROUND
WHEREAS, there exists a technology called Variance Cardiography for the
diagnosis of heart disease, involving computer processing and pattern
recognition of electrocardiograms (the "Technology");
WHEREAS, the Licensee owned the Technology and, pursuant to that certain
Settlement Agreement dated as of November 15, 2004 by and between the Licensor,
Vital Health Technologies and Aurora Capital Holdings, L.L.C. (the "Settlement
Agreement"), the Licensee agreed to transfer the Technology to the Licensor in
accordance with the terms and conditions of the Settlement Agreement;
WHEREAS, pursuant to the terms of the Settlement Agreement, the Licensor
has agreed to execute this License Agreement, granting the Licensee a
non-exclusive license to the Technology; and
WHEREAS, the Licensor desires to license the Technology to Licensee for the
continued development and commercialization of Technology on the terms and
conditions set forth.
AGREEMENT
NOW, THEREFORE, in consideration of the foregoing and other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties hereby agree as follows:
1. License. Licensor hereby grants to Licensee a non-exclusive, irrevocable,
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worldwide, unlimited license to make, have made, modify, copy, distribute,
publicly perform, publicly display, electronically transmit, reverse
engineer, make derivatives of, develop, use, market and sell the
Technology, with the right to sublicense third parties to do any of the
foregoing. Licensor reserves the right to enter into non-exclusive license
agreements with other parties.
2. Technology Transfer. Within 10 days of a written request by Licensee, all
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available proprietary information regarding the Technology will be made
available to Licensee including, but not limited to: one (1) prototype
system, software codes, copies of schematics and clinical studies, contacts
for development purposes including physicians, engineers, manufacturers,
suppliers and consultants. In the event Licensee requires a prototype
system to be shipped to a designated location, Licensee shall arrange for
and pay the shipping cost. Licensor will arrange for a one (1) day
orientation and training session on the operation of the prototype system
(limited to the United States) without charge to the Licensee. Licensor
shall pay all costs of storage for the Technology prior to and throughout
the term of this Agreement; provided, however, that the Licensee shall pay
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any costs of storage incurred for the storage of the Technology outside of
the state of Minnesota if the Licensee requests the Licensor to ship such
Technology under this Section 2.
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3. Improvements. Any improvements, extensions, updates, derivatives,
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variations and versions of and to the Technology developed after the date
hereof by Licensor shall be included in the Technology. Any improvements,
extensions, updates, derivatives, variations and versions of and to the
Technology made by Licensee after the date hereof shall be the exclusive
property of Licensee and Licensee shall have no obligation to share any
such improvements developed by it with Licensor.
4. Licensor's Representations and Warranties. Licensor represents and warrants
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as follows:
a. Licensor has the full power and authority to execute, deliver, and
perform this Agreement and has taken all steps and shall do all things
appropriate and necessary to consummate these transactions described
herein.
b. Licensor is the sole and exclusive owner of the Technology and has the
right to license the Technology as described in this Agreement without
the consent of any other person. The Technology licensed hereby is
free and clear of all claims, security interests, encumbrances and
liens of any kind. Licensor warrants that it owns the entire right,
title and interest in and to the Technology and that no prior sale,
license, assignment or transfer thereof has been granted.
c. There are no pending or threatened claims, actions, suits,
arbitrations, administrative or governmental proceedings or
investigations, or infringement, unfair competition or trade
restrictions that will or are likely to affect the terms of this
Agreement, nor has Licensor received any notice or communication of
any impending action that could reasonably result in any of the
foregoing.
5. Royalty Payments. It is understood and agreed that the license granted
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hereunder includes the right to market and sell the Technology. During the
term of this Agreement, Licensor shall be entitled to the sums herein
provided from Licensee as royalty payments: Five percent (5%) of gross
revenue actually received by the Licensee upon the marketing and sale of
the Technology, to be paid to the Licensor on a quarterly basis, 60 days
following the end of each calendar quarter. These payments will start in
the calendar quarter in which Licensee first receives revenue in respect of
the Technology.
6. Accounting. Licensee shall make and keep at its usual place of business
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true, complete and contemporary entries of all particulars relating to
revenues received by Licensee in respect of the Technology. Upon request by
Licensor, Licensor shall be permitted, at its own expense and not more than
once each calendar year, to cause an independent third party to review the
books and records of Licensee to ensure that it has received all payments
owed to the Licensor under Section 5 of this Agreement. The accountants
shall only report to the Licensor the proper amount of payment due to the
Licensor in each accounting period and a copy of their report shall be
given to Licensee.
7. Licensee's Right of First Refusal. If, during the term of this Agreement,
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Licensor intends to assign or transfer all or any part of the Technology,
Licensor shall first give notice thereof to Licensee, whereupon Licensee
shall have thirty (30) days after the receipt of such notice to elect to
purchase all right, title and interest in and to the Technology at the
price to be paid to Licensor by the third party assignee.
8. Right to assign. Neither party may assign this Agreement without the prior
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express written consent of the other party.
9. Termination. This Agreement shall continue into perpetuity until terminated
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as provided below:
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a. If Licensee shall fail to make payment to Licensor of any undisputed
amount, when due and in the manner stated, then Licensor may terminate
this Agreement if the failure to pay remains uncured for 30 days after
written notice was given by the Licensor of such failure to pay;
b. If Licensor breaches any provision of this Agreement, then Licensee
may terminate this Agreement if the default remains uncured for 30
days after written notice was given by the Licensee of such breach;
and
c. If Licensee exercises the Right of First Refusal for all of the
Technology as provided in Section 7 of this Agreement, this Agreement
will terminate immediately upon the closing of the purchase of the
Technology.
10. Liability and Indemnification. Licensee agrees to indemnify and hold
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harmless the Licensor and its directors, officers and employees, from any
and all claims, demands and actions whatsoever which may be brought against
Licensor, its directors, officers, and employees, by virtue of anything
arising from the development, marketing and application of the Technology
by Licensee. Licensor agrees to indemnify and hold harmless the Licensee
and its directors, officers and employees from any and all claims, demands
and actions whatsoever (including attorneys' fees) which may be brought
against Licensee, its directors, officers and employees, relating to the
Technology or to a breach by Licensor of this Agreement, including but not
limited to claims or allegations by third parties that the Technology
infringes a third party's proprietary rights.
11. Licensor Bankruptcy. All rights and licenses granted under or pursuant to
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this Agreement by Licensor to Licensee are, and shall otherwise be deemed
to be, for purposes of Section 365(n) of the United States Bankruptcy Code,
licenses of rights to "intellectual property" as defined under Section
101(56) of the United States Bankruptcy Code. The parties agree that
Licensee, as a licensee of such rights under this Agreement, shall retain
and may fully exercise all of its rights and elections under the United
States Bankruptcy Code. The parties further agree that, in the event of the
commencement of a bankruptcy proceeding by or against Licensor under the
United States Bankruptcy Code, Licensee shall be entitled to a complete
duplicate of (or complete access to, as appropriate) any such intellectual
property and embodiments of such intellectual property, and the same, if
not already in its possession, shall be promptly delivered to Licensee upon
written request therefor by Licensee (a) upon any such commencement of a
bankruptcy proceeding, unless Licensor elects to continue to perform all of
its obligations under this Agreement, or (b) if not delivered under this
Agreement, or if not delivered under (a) above, upon the rejection of this
Agreement by or on behalf of Licensor.
12. Relationship. Nothing in this Agreement shall create a partnership, joint
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venture or establish the relationship of principal and agent or any other
relationship of similar nature between the parties. There are no third
party beneficiaries to this Agreement.
13. No Obligation to Use. Nothing herein shall be construed as an obligation of
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the Licensee to use the Technology or any part thereof, in any manner or
for any purpose whatsoever.
14. Notices. All notices, requests, demands and other communications hereunder
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shall be in writing, and shall be delivered by hand or sent by mail,
facsimile transmission or overnight courier. Notices sent by mail shall be
sent by certified mail, return receipt requested and shall be deemed
received on the date of receipt indicated by the receipt verification
provided by the U.S. Postal Service. Notices delivered by overnight courier
shall be deemed received on the date of receipt indicated by the
verification provided by the courier. Notices sent by facsimile
transmission shall be deemed received the day on which sent, and shall be
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conclusively presumed to have been received in the event that the sender's
copy of the facsimile transmission contains the "answer back" of the other
party's facsimile transmission. Notices shall be effective upon receipt.
Notice shall be given, mailed or sent to the parties at the following
addresses, or such other addresses as are provided by the parties:
If to the Licensee:
CEO
Caribbean American Health Resorts, Inc.
0000 Xxxxxxxx Xxxx., Xxxxx 000
Xxxxxxx Xxxxx, XX 00000
Fax: (000) 000-0000
With a copy to:
Dennis P. R. Codon, Esq.
Robins, Kaplan, Xxxxxx & Xxxxxx L.L.P.
0000 Xxxxxxx Xxxx Xxxx, Xxxxx 0000
Xxx Xxxxxxx, XX 00000
Fax: (000) 000-0000
If to the Licensor:
CEO
General Finance and Development, Inc.
000 Xxxxxxx Xxxxxx Xx., Xxxxx 000
Xx. Xxxx, XX 00000 Fax: ( 000 ) 000-0000 (Call first)
15. Entire Agreement; Amendment; Waiver. This Agreement, together with the
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Settlement Agreement, constitutes the entire agreement between the parties
hereto pertaining to the subject matter hereof and supersedes all prior
agreements, understandings, negotiations and discussions, whether oral or
written, of the parties hereto, pertaining to such subject matter. There
are no warranties, representations or agreements, express or implied,
between the parties in connection with the subject matter hereof except as
may be specifically set forth herein. No amendment, supplement,
modification or waiver of this Agreement shall be binding unless it is set
forth in a written document signed by the Licensor and the Licensee. No
waiver of any of the provisions of this Agreement shall be deemed or shall
constitute a waiver of any other provisions (whether or not similar) nor
shall such waiver constitute a continuing waiver unless otherwise expressly
provided in a written document signed by the parties hereto.
16. Severability. In the event that any provision of this Agreement is held
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invalid by the final judgment of any court of competent jurisdiction, the
remaining provisions shall remain in full force and effect as if such
invalid provision had not been included herein.
17. Binding Effect. Except as otherwise provided herein, this Agreement shall
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inure to the benefit of and shall be binding upon only the parties, their
respective successors and their permitted transferees and assigns.
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18. Construction. This Agreement has been entered into after negotiation and
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review of its terms and conditions by parties under no compulsion to
execute and deliver a disadvantageous agreement. No ambiguity or omission
in this Agreement shall be construed or resolved against either Licensor or
Licensee on the ground that this Agreement or any of its provisions were
drafted or proposed by Licensor or Licensee.
19. Survival. The provisions of Sections 10 and 11 shall survive the
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termination of this Agreement and remain in full force and effect
thereafter.
20. Governing Law. This Agreement shall be governed by and construed in
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accordance with the laws of the State of Minnesota, without giving effect
to the rules or principles of any jurisdiction or sovereign county with
respect to conflict of laws.
IN WITNESS WHEREOF the parties hereto have executed this License Agreement
effective as of the date above:
Vital Health Technologies, Inc.
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By: /s/ Xxxxxx Xxxxxx
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Xxxxxx Xxxxxx, CEO
General Finance and Development, Inc.
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By: /s/ Xxxxxxx Xxxxxx
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Xxxxxxx Xxxxxx, CEO
