TECHNOLOGY LICENSE AND DISTRIBUTION AGREEMENT
EXHIBIT
10.2
THIS
TECHNOLOGY LICENSE AND DISTRIBUTION AGREEMENT IS MADE AND ENTERED INTO AS OF THE
EFFECTIVE DATE BY AND BETWEEN:
1.
NXP SOFTWARE B.V., a private company with limited liability incorporated under
the laws of the Netherlands, having its registered office in Eindhoven, the
Netherlands, with registration number 17192886 in the trade register of the
Netherlands Chamber of Commerce and Industry for Oost-Brabant, having a
principal place of business at High Xxxx Xxxxxx 00, 0000 XX Xxxxxxxxx, the
Netherlands (“NXP SOFTWARE”); and
2.
LOCATION BASED TECHNOLOGIES INC., a company incorporated in the state of
Nevada, having its principal place of business at 0000 X. Xx Xxxxx Xxxxxx,
Xxxxxxx, Xxxxxxxxxx, 00000 (“LBT”).
WHEREAS:
A.
NXP SOFTWARE develops and licenses, amongst others, real-time software GPS
technologies;
B.
NXP SOFTWARE provides, amongst others, Internet-based GPS assistance
services;
C.
LBT develops GPS based consumer products for locating persons and/or
items;
D.
NXP SOFTWARE is willing to provide licenses and services for use of its
software GPS technologies by LBT in some or all of their consumer GPS-based
products;
E.
The Parties have executed a Framework Agreement that sets forth the
principal terms under which the parties shall conduct business;
F.
This Technology License and Distribution Agreement sets forth the additional
terms under which NXP Software shall license the Technology to LBT.
SECTION
1.0 – FRAMEWORK AGREEMENT
The terms
of the Framework Agreement shall apply to this Technology License and
Distribution Agreement mutatis mutandis. In the
event that any term or clause herein shall be in conflict with any term or
clause within the Framework Agreement then the terms of this Technology License
and Distribution Agreement shall prevail for the exclusive and limited scope of
this Technology License and Distribution Agreement.
1
SECTION
2.0 – LIMITED LICENSE
2.1
License to
Licensed Technology. Subject to the terms and conditions of
this Agreement, NXP SOFTWARE hereby grants to LBT, and LBT hereby accepts from
NXP SOFTWARE, a non-exclusive, personal, non-transferable worldwide copyright
license, without the right to sublicense, to:
(i) test
or evaluate the Licensed Technology;
(ii) use
and reproduce the Licensed Technology for integration of the Licensed Software,
in Object Code form only, in the Products;
(iii) test,
evaluate, market, demonstrate, promote, lend, give or sell these Products, to
(potential) Customers;
(iv) distribute
these Products with the Licensed Technology integrated therein to
Customers;
(v) use
the Licensed Technology for maintaining and supporting its Products with the
integrated Licensed Technology including, but not limited to:
a. performing
error-correction and Customer support on said Products;
b. testing and
evaluating the (performance of) the Licensed Technology; and
c. training its
(support) engineers;
(vi) use
the Documentation only within LBT’s organization solely in connection with the
rights granted above; and
(vii) copy,
modify and create derivative works from the Documentation, for example by
creating technically accurate subsets and supersets thereof or translations it
into other languages; and distribute such Documentation (in its original form or
as modified by LBT as provided above) with the Products distributed by LBT as
permitted under this Agreement.
2.2. Exclusive Use of Licensed
Technology with Assistance Service. The license granted
hereunder is granted solely for the use of the Licensed Technology in
connection with the Assistance Services to be provided by NXP Software to LBT in
accordance to the Assistance Services Agreement. No license is
granted whatsoever for use of the Licensed Technology without the Assistance
Services provided by NXP Software. In the event LBT does not
exclusively uses or ceases to exclusively use NXP Software’s Services in
accordance to the Assistance Services Agreement the license granted hereunder
will terminate with immediate effect.
2
2.3
Beneficiaries.
2.3.1 Contractors
It is agreed that the rights granted to LBT under sections 2.1 (i), (ii), (iii),
(v), (vi) and (vii) above shall inure also to the benefit of any Contractor
engaged by LBT but only to the extent and for the time of their involvement as
regards LBT’s Products.
2.3.2 Distributors. It
is agreed that the rights granted to LBT under sections 2.1 (iii) and (iv) above
shall inure also to the benefit of any Distributor engaged by LBT but only to
the extent and for the time of their involvement as regards LBT’s
Products.
2.3.3 Third
Party Compliance. LBT shall remain responsible for the due and proper
compliance with the terms and conditions of this Technology License and
Distribution Agreement by each Contractor, Distributor and Customer and
acknowledges that it may be held liable to NXP SOFTWARE for damages incurred by
NXP SOFTWARE to the extent caused by any such non-compliance
therewith.
2.4
Third Party
Beneficiary. LBT will make sure that in its agreements with
Contractors and Distributors NXP Software will be appointed as a third party
beneficiary in such a way that NXP Software will be granted the same rights as
LBT as regards claim towards the LBT’s Contractors and Distributors if they
breach their agreements with LBT.
SECTION
3.0 - LICENSE RESTRICTIONS.
3.1
Restrictions. The
Licensed Technology is licensed (under copyright only) and is not
sold. Except as expressly permitted under Section 2.0 or by mandatory
applicable law in spite of this provision, LBT agrees not to, and agrees not to
permit any third party to:
(i) copy,
reproduce or distribute Licensed Technology;
(ii) assign,
sublicense, lease, rent, loan, transfer, disclose, or otherwise make available
the Licensed Technology;
(iii) modify,
adapt, alter, translate, or create Modifications from any portion of the
Licensed Technology;
(iv) Reverse
Engineer the Licensed Technology;
(v) otherwise
produce its own version of the Licensed Technology (without copying the Source
Code thereof); and
(vi) remove
or circumvent the protection of the Licensed Technology.
3.2
No Other Rights
or Licenses. Other than the rights explicitly granted to LBT
under the Agreement, no other licenses are granted, or implied by estoppel or
otherwise, under any Intellectual Property Rights of NXP SOFTWARE and/or its
Affiliates or any intellectual property residing in the Licensed Technology or
any other Confidential Information furnished by NXP SOFTWARE.
3
3.3
Exclusions. Notwithstanding
anything to the contrary herein, this Agreement shall not be construed or
interpreted as:
(i) imposing
on NXP SOFTWARE and/or its Affiliates or any of its or their third party
suppliers any obligation to furnish any manufacturing or technical information
except as expressly required under this Agreement; or
(ii) conferring
any license, right or immunity, either directly or indirectly, to LBT or to any
third party acquiring any Licensed Technology or other Confidential Information
furnished by NXP SOFTWARE or any of its Affiliates under any of its and/or their
Intellectual Property Rights or under any other intellectual property residing
in the Licensed Technology or any other Confidential Information furnished by
NXP SOFTWARE: (a) for the combination of such Licensed Technology or other
Confidential Information with one or more other items (including items acquired
from NXP SOFTWARE and/or its Affiliates) even if such items have no substantial
use other than as part of such combination; (b) covering a Technical Standard,
whether proprietary or open; or (c) with respect to which NXP SOFTWARE and/or
any of its Affiliates has informed LBT or has published (in a quotation,
datasheet, term sheet or memorandum of understanding concerning the Licensed
Technology or elsewhere) a statement that a separate License has to be obtained
and/or that no implied license is granted.
3.4 Open Source License
Terms. The license granted hereunder does not include any
right, license, power or authority to subject the Licensed Technology (or a part
thereof) to Open Source License Terms. LBT expressly agrees that it
shall not perform any actions with regard to the Licensed Software in a manner
that would require the Licensed Technology, or any derivative work thereof to be
licensed under Open Source License Terms. These actions include but
are not limited to:
(i) combining
(a part of) the Licensed Technology (or a part thereof) or a derivative work
thereof with Open Source Software, by means of incorporation or linking or
otherwise; or
(ii)
using Open Source Software to create a derivative work of (a part of) the
Licensed Technology.
LBT shall
indemnify NXP SOFTWARE, its Affiliates and its third party suppliers/licensors
against and hold NXP SOFTWARE, its Affiliates and their Suppliers harmless from
any damage or costs arising from or in connection with any violation or breach
of the provisions of this clause and LBT shall reimburse all costs and expenses
incurred by NXP SOFTWARE, its Affiliates and their suppliers in defending any
claim, demand, suit or proceeding arising from or in connection with such
violation or breach.
3.5
No Trademark
License. LBT hereby acknowledges and agrees that this
Agreement does not confer any rights whatsoever to LBT to use the trade or brand
name, corporate name, trademarks and logos – or any other name or xxxx, or
contraction, abbreviation or simulation thereof – of NXP SOFTWARE or its
Affiliates, for any reason.
4
SECTION
4.0 - DELIVERY
NXP
SOFTWARE shall use commercially reasonable efforts to deliver the Licensed
Software in accordance with the planning as set forth in Appendix PDA1
(‘Statement of Work’). The Licensed Software will be delivered by
means of secured electronic transfer or storage media, as specified by NXP
SOFTWARE for the Licensed Technology, or otherwise as may be mutually agreed to
by the parties.
SECTION
5.0 - OWNERSHIP RIGHTS.
5.1
Exclusive
Ownership. It is acknowledged and agreed by LBT that NXP
SOFTWARE owns all rights, title and interest in the Licensed Technology and
other NXP SOFTWARE Confidential Information and all modifications and derivative
works of each of the foregoing, and all intellectual property rights
therein.
5.2
Notices. LBT
shall not remove or alter, and shall reproduce on copies of the Licensed
Technology and Confidential Information, without any amendments or changes
thereto, any NXP SOFTWARE and its Affiliates Commercial Notices contained in any
of the Licensed Technology and Confidential Information. LBT shall
affix to any media containing a copy of all, or any portion thereof, of the
original media, all Commercial Notices as were affixed to the original
media.
5.3
Right to Use
Feedback. NXP SOFTWARE and its Affiliates shall have the right
to use any feedback provided by LBT to NXP SOFTWARE relating to the Licensed
Technology and the Confidential Information.
5.4
Modifications. LBT
agrees and acknowledges that all Modifications shall be owned by NXP SOFTWARE
and/or its Affiliates. LBT agrees to promptly inform NXP SOFTWARE of
any Modifications made by any of its employees and/or
Contractors. LBT hereby irrevocably and unconditionally assigns and
otherwise transfers (and, to the extent required by law, agrees to continue to
assign and otherwise transfer from to time to time as they accrue) its entire
right, title and interest in and to all Intellectual Property Rights in such
Modifications to NXP SOFTWARE and/or its Affiliates and shall have any and all
of its employees or third parties who have contributed to such Modifications
assign and otherwise transfer (and, to the extent required by law, agrees to
continue to have such employees and third parties assigned and otherwise
transferred from time to time as they accrue) their entire right, title and
interest in same to NXP SOFTWARE and/or its Affiliates. Upon the
request, and at the expense, of NXP SOFTWARE, LBT and such employees shall
execute, and shall have such third parties and such employees, execute all
papers, take all rightful oaths, testify in all legal proceedings and do and
have done, respectively, all other acts which may be necessary, desirable or
convenient for securing and maintaining the Intellectual Property Rights on the
foregoing or for perfecting title thereto in NXP SOFTWARE and/or its
Affiliates. Upon NXP SOFTWARE’s first request, LBT shall deliver the
source code and object code form of such Modifications and all documentation
available to LBT related to such Modification which may be necessary or useful
for the integration, use, maintenance, support, enhancement or modification of
such Modification, including without limitation the design description,
instructions and further documentation.
5
SECTION
6.0 – LICENSE ENTRY FEE, ROYALTIES AND PAYMENTS.
6.1
License
Fee. NXP SOFTWARE hereby waives the license fee for
LBT.
SECTION
7.0 - TERM AND TERMINATION.
7.1
Term. This
Technology License and Distribution Agreement shall become effective as of the
date that the Framework Agreement will become effective and shall remain in
effect for as long as the Framework Agreement remains effective unless parties
explicitly agree otherwise.
7.2
Consequences of
Termination or Expiration. Upon termination or expiration of
this Technology License and Distribution Agreement, all licenses granted to LBT
under this Technology License and Distribution Agreement shall immediately end
and LBT shall immediately return to NXP SOFTWARE, or destroy – so to the sole
discretion of NXP SOFTWARE – all Licensed Technology and other Confidential
Information, including any and all copies and derivative works
thereof. In case, NXP SOFTWARE opts for the latter, LBT shall
subsequently provide NXP SOFTWARE within ultimately 30 (thirty) days of such
termination or expiration, with a written certificate signed by a duly
authorized representative of LBT confirming LBT’s destruction as set forth
above.
SECTION
8.0 - REPRESENTATIONS AND WARRANTIES.
8.1
Delivery and
Acceptance ‘As Is’. The Licensed Technology and related
Documentation is provided to, and is accepted by, LBT AS IS WITHOUT WARRANTY OF
ANY KIND. LBT is deemed to have automatically accepted the Licensed
Technology ‘AS IS’ upon delivery of the Licensed Technology.
8.2
Rights, Power and Authority
to License. NXP SOFTWARE hereby warrants to LBT that NXP
SOFTWARE owns or has acquired all necessary rights, power and authority to grant
the license to LBT under Section 2.0 (‘Limited License’). This clause
will not be construed as a representation or warranty of
non-infringement. LBT’s sole and exclusive remedy for breach of the
warranty set forth in this clause is as set forth in Section 9.
8.3
Disclaimer. EXCEPT
FOR THE LIMITED EXPRESS WARRANTIES SET FORTH IN THIS SECTION 8, NXP SOFTWARE AND
ITS AFFILIATES EXPRESSLY DISCLAIM ALL REPRESENTATIONS AND WARRANTIES, EXPRESS OR
IMPLIED, INCLUDING, BUT NOT LIMITED TO, THE IMPLIED WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND
NON-INFRINGEMENT.
8.4
No
Representations or Warranties. LBT, its Affiliates and their
Customers shall not make or publish any representations, warranties, or
guarantees on behalf of NXP SOFTWARE and/or its Affiliates concerning, directly
or indirectly, the Licensed Software without NXP SOFTWARE’s specific prior
written approval.
8.5
Technology
Protection. LBT warrants that it shall protect the Licensed
Technology from unauthorized use in a manor no less protective than LBT normally
uses for protecting its own technology; provided, however, that in no event the
protection of the Licensed Technology shall be less than the current industry
standard protective measures for similar forms of technology.
6
SECTION
9.0 - INDEMNIFICATION.
9.1
Indemnification
for NXP SOFTWARE. LBT shall indemnify, defend and hold
harmless NXP SOFTWARE and its Affiliates from and against any claims, suits,
losses, damages, liabilities, costs, and expenses (including reasonable
attorneys’ fees) brought by third parties resulting from or relating
to:
(i) any
breach by LBT of its representations, warranties, obligations, duties, or
responsibilities under this Agreement;
(ii) any
representations, warranties, guarantees, or other written or oral statements
made by, or on behalf of, LBT relating to the Licensed Technology, other than as
authorized by NXP SOFTWARE in writing;
(iii) the
use of the Products with the integrated Licensed Technology or the Licensed
Products, notwithstanding clause 9.2.
9.2
Indemnification
for LBT. NXP SOFTWARE, at its sole expense,
shall:
(i) defend
any legal proceeding brought by a third party against LBT to the extent that the
proceeding includes a claim that the Licensed Technology as furnished by NXP
SOFTWARE under the Agreement directly infringes the claimant’s copy rights or
trade secrets; and
(ii) hold
LBT harmless against damages and costs awarded by final judgment in such
proceeding and effectively incurred by LBT to the extent directly and solely
attributable to such infringement.
9.3
No
Indemnification for LBT. NXP SOFTWARE shall have no obligation
or liability to LBT under clause 9.2.
a) if
NXP SOFTWARE is not promptly: (i) notified in writing of any such claim; (ii)
given the sole right and authority to control and direct the investigation,
preparation, defense and settlement of such claim, including but not limited to
the selection of counsel; and (iii) given full reasonable assistance and
cooperation by LBT in such defense and settlement; or
b) to
the extent that any such claim arises from: (i) any modification of the Licensed
Technology, other than by NXP SOFTWARE, if such claim would have been avoided by
use of the unmodified Licensed Technology; (ii) design, specifications,
requirements or instructions furnished by LBT; or (iii) the combination or
implementation of the Licensed Technology with any other product, service or
technology; or
c) if
the claim is not made within the term for claims specified in clause 8.3 of the
Framework Agreement and/or after the termination or expiration date of this
Technology License and Distribution Agreement; or
7
d) to
the extent the claim and/or the calculation of the claim is based, directly or
indirectly, upon the frequency of use or the amount of use of the Products
irrespective of whether such claim alleges that the Products as such, or its
use, infringes or contributes to the infringement of any Intellectual Property
Rights of the claimant; or
e) for
unauthorized use or distribution of the Licensed Technology or use beyond the
Specifications; or
f) to
the extent any such claim arises from any Customer’s manufacture, use, sale,
offer for sale, importation or other disposition or promotion of any Products
after NXP SOFTWARE’s notice to LBT that such Customer should cease any such
activity, provided such notice shall only be given if the Licensed Technology
is, or in NXP SOFTWARE’s opinion is likely to become, the subject of such a
claim of infringement; or
g) for
any costs or expenses incurred by LBT without NXP SOFTWARE’s prior written
consent; or
h) to
the extent any such claim arises from any infringement or alleged infringement
of any Intellectual Property Rights covering a Technical Standard, whether
proprietary or open; or
i) for
infringement of any third party’s Intellectual Property Rights covering the
manufacture, testing or application of any assembly, circuit, combination,
method or process in which the Licensed Technology may have been used;
or
j) for
infringement of any third party’s Intellectual Property Rights with respect to
which NXP SOFTWARE has informed LBT or has published (in a proposal, datasheet,
term sheet or other specifications concerning the Licensed Technology or
elsewhere) a statement that a separate license has to be obtained and/or that no
implied license is granted, to the extent any such claim arises from LBT’s
manufacture, use, sale, offer for sale, importation or other disposition or
promotion of the Licensed Technology after NXP SOFTWARE has informed the LBT or
has published a statement as referred to above in this sub clause
(j).
LBT shall
indemnify NXP SOFTWARE and its Affiliates against and hold NXP SOFTWARE and its
Affiliates harmless from any damages or costs arising from or connected with
claims of infringements as referred to under sub clauses (a) through (j) above
and shall reimburse all costs incurred by NXP SOFTWARE or any of its Affiliates
in defending any claim, demand, suit or proceeding for such infringement,
provided NXP SOFTWARE or any of its Affiliates gives LBT prompt notice in
writing of any such suit or proceeding for infringement.
9.4
Right of
NXP SOFTWARE. If the Licensed Software is, or in NXP
SOFTWARE’s opinion is likely to become, the subject of a claim of infringement
as referred to under clause 9.2 above, NXP SOFTWARE shall have the right,
without obligation and at its sole discretion, to: (i) procure for LBT the right
to continue to use the Licensed Software; (ii) replace or modify the Licensed
Software in such a way as to make the modified Licensed Software non-infringing;
or (iii) terminate this Agreement, provided that in the event of such
termination NXP SOFTWARE shall refund the amount of royalties received by NXP
SOFTWARE hereunder over the previous twelve (12) months for the Licensed
Technology that is then subject to the claimant’s continuing claim of
infringement as prorated on a 6 (six)-year straight-line basis.
8
9.5
Entire
Liability. Subject to the limitations set forth in Section 8
of the Framework Agreement, the foregoing states NXP SOFTWARE’s and its
Affiliates’ entire liability and obligation to LBT and its customers and LBT’s
sole remedy with respect to any actual or alleged infringement of any
Intellectual Property Rights of any kind.
IN
WITNESS WHEREOF, the parties have executed this Technology License and
Distribution Agreement by their duly authorized officers as of the Effective
Date.
| LOCATION BASED TECHNOLOGIES INC. | NXP SOFTWARE B.V. | |||
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By:
/s/ Xxxxxx X. Xxxxxxx
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By:
/s/ Xxxxxx Xxxxxx
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Name:
Xxxxxx X. Xxxxxxx
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Name:
Xxxxxx Xxxxxx
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|||
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Title:
Chief Development Officer
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Title:
Financial Director
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| Date: February 28, 2008 | Date: 29 February 2008 |
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Address
for notices:
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By:
/s/ X. X. Xxx Xxxxxx
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Name:
X. X. Xxx Xxxxxx
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|||
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Location
Based Technologies Inc.
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Title:
Director
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| 0000 X. Xx Xxxxx Xxxxxx | Date: 29 February 2008 | |||
| Xxxxxxx | ||||
| Xxxxxxxxxx 00000 | By: /s/ P.H.J. Xx Xxxxxx | |||
| United States |
Name:
P.H.J. Xx Xxxxxx
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|||
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Fax
no: x0 (000) 000-0000
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Title:
Director
|
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| Date: 29 February 2008 | ||||
| Address for notices: | ||||
| Attention: Xxxxxx Xxxxxx | ||||
| NXP Software X.X. | ||||
| Xxxx Xxxx Xxxxxx 00 | ||||
| 0000 XX | ||||
| Eindhoven | ||||
|
Fax
no: x00 00 00 00000
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9
EXHIBIT
TLDA1
Description
of Licensed Technology
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Component
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Component
Type
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Description
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Arikara
Embedded Software
Engine
and Documentation
|
Software
|
Arikara
Product Specification
v1.0
§3.1
|
