Exhibit (10)
USERNET SOFTWARE ACQUISITION AGREEMENT
THIS AGREEMENT made as of the 22nd day of May, 1997
A M O N G:
XXXXXX XXXXXXXXXXX, a company formed under the laws of the State of Delaware
(hereinafter called "Unisys")
- and -
UNISYS CANADA INC., a company formed under the laws of Canada
(hereinafter called "Unisys Canada")
- and -
3364569 CANADA INC., a company formed under the laws of Canada
(hereinafter called the "Purchaser")
- and -
TENGTU INTERNATIONAL CORP., a company formed under the laws of Canada
(hereinafter called "Tengtu")
WHEREAS Unisys Canada is the owner of certain computer software known as
"UserNet" and the trademark known as "ICONIX", together with certain related
intellectual property rights;
AND WHEREAS Unisys is the owner of the trademark known as "USERNET", together
with certain related intellectual property rights;
AND WHEREAS the Purchaser wishes to purchase from each of Unisys and Unisys
Canada its respective interests in that software and those intellectual property
rights under the terms and conditions herein specified;
NOW THEREFORE, in consideration of the premises and of the mutual covenants
herein contained and provided for, the parties hereto agree as follows:
PART I - INTERPRETATION
1.1
DEFINITIONS. For the purposes of this Agreement, the following terms shall have
the meanings herein:
"Closing" means the date hereof.
"Development Documentation" shall mean a complete copy of all plans,
specifications, applicable documentation and other explanatory materials,
technical or otherwise, including programmer's notes, pertaining to the
Software, including without limitation the online notes for version 4.0 of the
Software, in the possession of Unisys Canada.
"Encumbrance" shall mean, in respect of property, including intangible property,
any encumbrance of any kind whatever and includes a security interest, mortgage,
lien, pledge, assignment, charge, trust or deemed trust (whether contractual,
statutory or otherwise arising), any restriction, royalty or obligation to pay a
royalty or any other right or claim of others of any kind whatever affecting the
applicable property and any restrictive covenant or other agreement, restriction
or limitation (registered or unregistered), on the use of the applicable
property; and "Encumber" has a corresponding meaning.
"Enhancements" shall mean any and all modifications, additions, or substitutions
made by Unisys Canada to the Software as of the date first above written.
"Hardware" shall mean the networked hardware environment which consists of the
units identified on Schedule A, as attached hereto.
"ICONIX Trademark" shall mean the registered Canadian trademark "ICONIX".
"Intellectual Property Rights" shall mean the Trademarks and those rights to
use, copy, adapt or distribute the Software including: (A) any and all
proprietary rights provided under (i) patent law, (ii) copyright law, (iii)
trade xxxx law, or (iv) any other statutory provision or common law principle
applicable which may provide a right in either (ideas, formulae, algorithms,
concepts, inventions or know-how generally, including trade secret law), or the
expression or use of such ideas, formulae, algorithms, concepts, inventions or
know-how; and (B) any and all applications, registrations or any other evidence
of a right in any of the foregoing;
"Mailing List" shall mean the Unisys/ICONIX customer mailing list and any
product marketing documentation not containing any reference to Unisys or Unisys
Canada and not otherwise reusable by Unisys or Unisys Canada for non-ICONIX
products or services.
"Non-Compete Period" shall mean from the date hereof until the later of: (i)
December 31, 1997; and (ii) the date of completion of delivery of any product
ordered pursuant to any valid purchase orders from the Peel School Board of
Education outstanding as of December 31, 1997.
"Software" shall mean the following: (i) the source code for UserNet 3.xx, (ii)
the executable object code for UserNet 3.xx, and (iii) Enhancements.
"Tools" shall mean the software development tools including Microsoft Visual
Basic and C++ that are presently loaded on the Hardware and are not restricted
by Unisys Canada's corporate site licenses.
"User Documentation" shall mean all manuals and other written materials relating
to the use and operation of the Software including without limitation the course
training materials.
"UserNet Development Environment" shall mean the Software, Hardware, Development
Documentation, User Documentation and Tools.
"UserNet 3.xx" shall mean UserNet versions of 3.0 and 3.5.
"UserNet Trademark" shall mean the registered United States trademark "USERNET"
(Reg. No. 1,429,892).
1.2
INTERPRETATION. For all purposes of the Agreement, except as otherwise expressly
provided or unless the context otherwise requires:
(a)
"this Agreement" means this software acquisition agreement as it may from time
to time be supplemented or amended by one or more agreements entered into
pursuant to the applicable provisions hereof;
(b)
the words "herein", "hereof" and "hereunder" and other words of similar import
refer to this Agreement as a whole and not to any particular Article, section or
other subdivision;
(c)
the headings are for convenience only and do not form a part of this Agreement
nor are they intended to interpret, define or limit the scope, extent or intent
of this Agreement or any provision hereof;
(d)
the word "including", when following any general statement, term or matter,
shall not be construed to limit such general
statement, term or matter to the specific items or matters set forth immediately
following such word or to similar items or matters, whether or not non-limiting
language (such as "without limitation" or "but not limited to" or words of
similar import) is used with reference thereto but rather shall be deemed to
refer to all other items or matters that could reasonably fall within the
broadest scope of such general statement, term or matter;
(e)
all references to currency herein are deemed to mean the currency of Canada; and
(f)
any reference to an entity shall include and shall be deemed to be a reference
to any entity that is a successor to such entity.
PART II - REPRESENTATIONS, WARRANTIES AND COVENANTS
2.1
Unisys Canada hereby represents, warrants and covenants to the Purchaser and
acknowledges that the Purchaser is relying on such representations, warranties
and covenants in entering into this Agreement:
(a)
This Agreement has been duly executed and delivered by each of Unisys and Unisys
Canada and constitutes a valid and binding obligation of each of Unisys and
Unisys Canada enforceable against them in accordance with its terms. The
Intellectual Property Rights to be acquired by the Purchaser hereunder are valid
and enforceable. All registrations and filings with all relevant governmental
intellectual property offices, domestic and foreign, required to evidence or
protect or preserve the Intellectual Property Rights in Canada and the United
States have been made, are up-to-date, are valid, subsisting and enforceable,
are in good standing and all fees in connection therewith have been paid. Each
of Unisys and Unisys Canada shall reasonably assist Purchaser in transferring
all trademarks and copyright registrations for the ICONIX Trademark, the UserNet
Trademark and the Software. Each of Unisys and Unisys Canada shall reasonably
assist Purchaser to register and/or enforce all patents, copyrights, trade
secret rights and other forms of intellectual property protection relating to
the Software in any and all countries, provided that in no event shall either
Unisys or Unisys Canada be required to incur any out-of-pocket costs in
connection therewith.
(b)
To the knowledge of each of Unisys and Unisys Canada, there are no legal actions
pending by any third party, including any governmental agency, relating to the
UserNet Development Environment, nor is either such party aware of: (i) any
adverse claim which has ever been, or is currently being, threatened against the
UserNet Development Environment, the Intellectual Property Rights or the
Software; of (ii) any claim by any third party that any of the Intellectual
Property Rights or the intellectual property rights in the Software is or may be
invalid or unenforceable.
(c)
Unisys and Unisys Canada have the full right to sell, transfer and assign the
UserNet Development Environment, including any component software comprising a
part thereof, to the Purchaser in the manner contemplated herein and without any
restrictions of any kind whatsoever other than the Software License Agreement
among the parties hereto and dated the date hereof and those restrictions
imposed upon the Purchaser under this Agreement.
(d)
Unisys or Unisys Canada is the owner of the Intellectual Property Rights and
User Development Environment, and are, if applicable, registered as the sole
owners of the Intellectual Property Rights and have full and exclusive right,
title, and interest in each of the Intellectual Property Rights and the
Software, free and clear of all Encumbrances. To the knowledge of Unisys and
Unisys Canada, no portion of the Software uses coies or comprises the work of
any third party including, without limitation, the structure, sequence or
organization of any third party work. No royalty or other consideration is due
to any third party arising out of the creation, copying or distribution of the
Software or Intellectual Property Rights therein.
(e)
Except as previously disclosed to the Purchaser, neither Unisys nor Unisys
Canada have granted, transferred, licensed or assigned any right or interest in
either the Intellectual Property Rights or the Software to any third party which
is or could be in any way inconsistent with the rights acquired or to be
acquired by the Purchaser hereunder. There are no contracts, agreements,
licenses or other commitments or arrangements in effect with respect to or which
would permit the manufacture, marketing, distribution, licensing, promotion,
maintenance or support of the Software or any part thereof by any third party.
To the knowledge of Unisys and Unisys Canada, no third party has a copy of the
source code of the Software.
(f)
To the knowledge of each of Unisys and Unisys Canada, the Software has not been
published under circumstances that have created loss of any copyright or trade
secret protection therein.
(g)
To the knowledge of each of Unisys and Unisys Canada, the use by the Purchaser
in the manner contemplated herein of hte Software in the form delivered soes not
and will not infringe any copyright, trade secret, intellectual property or
other proprietary rights of any third party.
(h)
No authorization, approval or other action by, and no notice to or filing with,
any governmental authority or regulatory body is requried or desirable for the
assignment by Unisys and Unisys Canada of the UserNet Development Environment.
(i)
Unisys and Unisys Canada have the entire right to assign to the Purchaser the
Intellectual Property Rights in accordance with the terms of this Agreement and
in any agreement referred to or contemplated in this Agreement and such
assignment of rights is sufficient to allow the Purchaser to carry out the
business of marketing, licensing, selling, exploiting, installing, operating,
maintaining and supporting the Software.
2.2
The representations and warranties of each of Unisys and Unisys Canada contained
in this Part II shall survive Closing for a period of one year, and shall
thereafter be void and have no further effect.
2.3
The total aggregate liability of Unisys and Unisys Canada for all claims made
against them by the Purchaser and/or Tengtu for any breaches of the
representations and warranties contained in Section 2.1 hereof shall not exceed
$200,000. Neither Unisys nor Unisys Canada shall be liable hereunder for any
breach of representation or warranty as of the date hereof known by
Purchaser or Tengtu to be untrue.
PART III - SALE, POSSESSION AND USE
3.1
In consideration of the payment of the purchase price, as set out in Part IV:
(i) Unisys hereby sells, assigns and transfers to the Purchaser the UserNet
Trademark; and (ii) Unisys Canada hereby sells, assigns and transfers to the
Purchaser the remaining Intellectual Property Rights and each of Unisys and
Unisys Canada confirms the Purchaser's right to exercise all rights and benefits
incident to ownership of the Intellectual Property Rights including, without
limitation, the right to take the following actions, in each case subject to the
terms and conditions set forth herein and in the Software License Agreement:
(a)
copy, reproduce, sell, license, modify, develop, enhance, merge, adopt,
transcribe or otherwise distribute copies of the derivative works thereof, in
whole or in part;
(b)
develop, modify, use, reproduce, display or license the derivative works
thereof, for purposes of promoting and demonstrating the Products;
(c)
develop, use and reproduce derivative works of the Software as necessary to
prepare or integrate Enhancements thereto; and
(d)
xxx or commence proceedings against others for infringement of the rights
acquired hereunder.
PART IV - PURCHASE AND OWNERSHIP
4.1
PURCHASE PRICE. The purchase price for a 100% undivided interest in the UserNet
Development Environment, the Mailing List and the Intellectual Property Rights
shall be $200,000 plus applicable taxes (the "Purchase Price"). The Purchase
Price shall be allocated as follows: (i) $199,999 to the Software; and (ii) $1
to all remaining assets being purchased.
4.2
PAYMENT OF PURCHASE PRICE. The Purchaser agrees to make payment of the Purchase
Price to Unisys and Unisys Canada by wire transfer payable in immediate funds to
Unisys Canada at closing.
4.3
RECEIPT OF USERNET DEVELOPMENT ENVIRONMENT AND MAILING LIST. Unisys Canada
agrees to provide to the Purchaser at Closing the UserNet Development
Environment and Mailing List on diskette or hard drive in order to permit the
Purchaser to verify that Unisys Canada has properly delivered the UserNet
Development Environment and Mailing List.
PART V - INDEMNIFICATION
5.1
Unisys Canada agrees, in respect of the Software, to forthwith defend and
indemnify and hold the Purchaser and its directors, officers, agents, employees,
licensees, assignees and designees harmless from and against any and all losses,
costs (including all legal fees), claims, damages, demands, actions and causes
of action which any of them may incur, suffer or become liable for as a result
of or in connection with any claim now exiting or in the future arising out of:
(i) the licensing, sale or use of the Software by Unisys Canada prior to the
Closing; and (ii) the licensing or sale of Software by Unisys Canada during the
Non-Compete Period.
5.2
The Purchaser and Tengtu agree to forthwith defend and indemnify and hold each
of Unisys, Unisys Canada and their respective directors, officers, affiliates,
agents, employees, licensees, assignees and designees harmless from and against
any and all losses, costs, claims, damages, demands, actions and causes of
action which any of them may incur, suffer or become liable for as a result of
or in connection with any claim in the future arising out of the licensing, sale
or use of Software, any other Intellectual Property Rights or the UserNet
Development Environment by the Purchaser, Tengtu or any of their permitted
successors and assigns following the Closing.
PART VI - GENERAL
6.1
ASSIGNMENT AND REPURCHASE RIGHTS. No party may assign this Agreement without the
written consent of the other parties, except that the Purchaser may assign this
Agreement without the prior written consent of Unisys and/or Unisys Canada to
Tengtu or an affiliate thereof. In no event may the Purchaser, or any successor
or assign of the Purchaser, assign or transfer to EMC Partners, Xxxxxxx
Ozerkevich, Xxxxxxx Xxxxxxx or any partner or affiliate thereof, within one year
following the date hereof, any rights in the UserNet Development Environment or
the Intellectual Property Rights.
6.2
LAW OF AGREEMENT. This Agreement shall be governed and interpreted in accordance
with the laws of the Province of Ontario and the laws of Canada applicable
therein, as interpreted by the Courts of such province, and the parties
irrevocably attorn to the jurisdiction of the courts of such province.
6.3
SUCCESSORS AND ASSIGNS. Subject to the restrictions on assignment and trasnfer
herein contained, this Agreement shall enure to the benefit of and be binding
upon the parties hereto and their respective heirs executors, administrators and
other legal representatives, successors, and assigns.
6.4
SEVERABILITY. Each provision of this Agreement is intended to be severable. If
any provision hereof is illegal or invalid, such illegality or invalidity shall
not affect the validity of the remainder hereof.
6.5
TIME OF THE ESSENCE. Time shall be of the essence of this Agreement.
6.6
UNITED NATIONS CONVENTION. The rights and obligations under this Agreement shall
not be governed by the United Nations Convention on Contracts for the
International Sale of Goods and/or any local implementing legislation, the
application of which is expressly excluded.
6.7
COUNTERPARTS. This Agreement may be executed by the parties in separate
counterparts each of which, when so executed and delivered, shall be deemed to
constitute an original, but all of which together shall constitute one and the
same agreement.
6.8
ENTIRE AGREEMENT. This Agreement constitutes the entire agreement between the
parties hereto with respect to the subject matter hereof and cancels and
supersedes any prior understandings and agreements between the parties hereto
with respect thereto, other than the Software License Agreement among the
parties hereto dated the date hereof. Schedule A attached hereto shall form a
part of this Agreement. There are no representations, warranties, terms,
conditions, undertakings or collateral agreements, expressed, implied or
statutory, between the parties other than as expressly set forth in this
Agreement.
IN WITNESS WHEREOF, this Agreement has been executed by the parties hereot as of
the date first above written.
XXXXXX XXXXXXXXXXX
By: /S/
-----------------
Name: Xxxxxx X. [illegible]
Title: President, GCS Group
I have the authority to bind the Corporation.
UNISYS CANADA INC.
By: /S/
---------------
Name: XXXXX [illegible]
Title: G.M. G.C.S. CANADA
I have the authority to bind the Corporation.
3364569 CANADA INC.
By: /S/
---------------
Name: President
Title: Xxxx XxXxxxxxx
I have the authority to bind the Corporation.
TENGTU INTERNATIONAL CORP.
By: /S/
---------------
Name: Xxxxx X. Xxxxx
Title: President
I have the authority to bind the Corporation.
SCHEDULE A
USERNET HARDWARE INVENTORY
SERIAL NUMBER DESCRIPTION SERIAL NUMBER DESCRIPTION
A-5467700-000 486-DX266 A-5387291-000 Pentium - 90 MHZ
16 Meg Memory Mini Tower
420 IDE Xxxxxx 24 Meg Memory
Hard Drive 2.5 GB Scsi Wide
Nic Card Hard Drive
On Board Video Xxx Xxxx
XX000000XXX Controller Card
Monitor 2 Nic Cards
Keyboard Pci Video Card
Mouse Keyboard
Mouse
Samsung4237LR
Monitor
A-5014281 486-DX266 A-5489565 Pentium - 75 MHZ
16 Meg Memory 32 Meg Memory
240 Scsi Hard 340 IDE Hard
Drive Drive
1520 Adaptec Scsi Nic Card
Card On Board Video
Nic Card Fax Modem
On Board Video SVG 100-COL -
CA910001VDC Monitor
Monitor PCK 101-KBD
Keyboard Mouse
Mouse
A-5012365 486-DX266
8 Meg Memory
340 Scsi Hard
Drive
1540 Adaptec Scsi
Card
Nic Card
On Board Video
CA910001VDC
Monitor
Keyboard
Mouse
A-3012T Hub
