LICENSING AGREEMENT
This agreement made and entered into this 19th day of July, 1999 (the
"Agreement") by and between InfoImaging Technologies Inc., a Delaware
corporation, with offices located at 0000 Xxxx Xxxxxx Xxxxxxx, Xxxxx 000,
Xxxxxxxxxx, XX 00000, hereinafter called "ITI" and DataLode Inc., a
California corporation organized and existing under the laws of California
with principal offices at 25 Xxxxx, San Rafael, CA, hereinafter called
"DataLode".
WHEREAS, ITI owns certain patented and Proprietary Technology (Software)
related to, compression, error correction, encoding and decoding of data on
printed and electronic mediums.
WHEREAS, ITI has developed Products based on such Software that ITI
wishes to market
WHEREAS, DataLode is in the business of providing solution in the area of
customer relationships such as product registration
WHEREAS, DataLode wishes to integrate some of ITI's applications and
products into its own product and solution offerings.
NOW, THEREFORE, the parties have agreed as follows:
Article 1. DEFINITIONS
1.1 "Software" shall mean all dynamic library links ("DLLs") or other
executable files or components required to accomplish ITI's encoding and
decoding functionality.
1.2 "Products" means products, which ITI developed, develops and will
develop
1.3 "SRF" means the Smart Registration Form (SRF) Product that ITI which
may originate from the Proprietary Technologies of compression, encoding,
decoding, error correction and other third party software included in the
Products.
1.4 "Proprietary Technology" shall mean U.S. Patent No. 5,313,564, copyrights
in the Software and any trade secrets and know how related to the Software and
the Products.
Article 2. LICENSE
2.1 ITI hereby grants to DataLode the worldwide, non-exclusive, perpetual
and royalty-bearing right and license to incorporate the SRF and modifications
thereof in DataLode's products and solution offerings, and to use, reproduce,
display, market and distribute the SRF and modifications thereof, as part of
the DataLode's products.
Article 3. MARKETING
3.1 DataLode will use commercially reasonable efforts to develop a demand for
the SRF by promoting and extending the sale of its products together with the
SRF.
Article 4. DELIVERY OF SOFTWARE AND TECHNICAL SUPPORT
4.1 ITI shall deliver to DataLode one copy, for all Windows 3.x, 95 & 98
operating systems as existing at the date of execution of this license
agreement, of the SRF Software upon execution of this Agreement. Furthermore,
ITI agrees to deliver to DataLode an SRF Software based on Macintosh 7.55
operatins system by September 10, 1999. ITI shall deliver all subsequent
releases of this version upon release by ITI.
4.2 ITI will provide, at no cost to DataLode, reasonable technical support to
DataLode personnel in the form of phone, e-mail and fax support during ITI's
regular business hours.
4.3 ITI will provide maintenance support for Software during the period this
license agreement is in effect. ITI will notify DataLode of, and ITI will
send to DataLode on DataLode's request, all available software releases
related to the Software. These potentially could include maintenance
releases, corrections, modifications and changes or work-arounds.
4.4 ITI shall provide (*) man-days of such maintenance support, free of any
charge to DataLode during any twelve months period. For any additional day of
maintenance support requested by DataLode, ITI will charge daily fees of
US$(*) per man-day or $(*) per man-hour.
4.5 During the period this license agreement is in effect, any maintenance
support related to bug fixing will be provided by ITI free of charge to
DataLode.
Article 5. ROYALTIES
5.1 As consideration for the license grants contained herein and subject to
other conditions and terms hereof, DataLode shall pay to ITI a per unit
royalty of US$(*) for each single use of the SRF by DataLode or by any third
party using DataLode's product.
*** Confidential portion omitted pursuant to a request for confidential
treatment and filed separately with the Commission.
or solution offering that incorporates the SRF. A single use is defined as
receiving and scanning the SRF into a readable and data accessible format.
5.2 Notwithstanding anything to the contrary herein, DataLode shall have no
obligation to pay any royalty under section 5.1 for any maintenance,
replacement, support and demonstration copies of the SRF, provided, however,
distribution of demonstration copies of SRF or modification thereof are
consistent with reasonable and customary industry practices.
Article 6. ACCOUNTING
6.1 Within thirty (30) days after each calendar quarter DataLode shall send to
ITI a report signed by an officer of DataLode setting forth the
appropriate royalties due to ITI pursuant to Section 5.1 herein. The amount
declared in this report must be paid to ITI within thirty (30) days after each
calendar quarter.
6.2 DataLode agrees that it will maintain separate records of its sales of the
SRF. DataLode further agrees that it will provide to ITI, at DataLode's cost
and not later than 90 days after the end of DataLode's fiscal year, a
certified statement regarding the use of ITI's SRF by DataLode and/or by
DataLode's customers. Furthermore, DataLode agrees to allow an ITI financial
auditor access to records of DataLode's SRF usage, including client billing.
Such access will be granted during DataLode's normal business hours once a
year.
Article 7. WARRANTIES, DISCLAIMER, AND INDEMNIFICATION
7.1 EXCEPT AS OTHERWISE SET FORTH HEREIN, ITI'S PRODUCT IS SOLD AND
LICENSED "AS IS". ALL WARRANTIES, EITHER EXPRESSED OR IMPLIED ARE DISCLAIMED
AS TO THE SOFTWARE AND ITS QUALITY, PERFORMANCE, MERCHANTABILITY OR FITNESS
FOR ANY BUSINESS OR ANY PARTICULAR PURPOSE. IN NO EVENT WILL ITI BE
LIABLE FOR DIRECT, INDIRECT, INCIDENTAL, OR CONSEQUENTIAL DAMAGES RESULTING
FROM ANY DEFECT IN THE SOFTWARE, AND ITS SOLE RESPONSIBILITY WILL BE TO
CORRECT ANY DEFECT IN THE SOFTWARE WITHIN A REASONABLE TIME AFTER RECEIVING A
COMPLAINT.
UNDER NO CIRCUMSTANCES SHALL THE TOTAL LIABILITY OF ITI PURSUANT TO THIS
SECTION 7.1 EXCEED THE ROYALTIES PAID BY LICENSEE TO ITI.
7.2 ITI warrants that it has the right to enter into this Agreement, to
disclose the Proprietary Technology and to grant the specified licenses and
that there are no outstanding assignments, grants, licenses, encumbrances,
obligations, or agreements inconsistent with this Agreement.
7.3 ITI warrants that the Software included in the SRF and the SRF do not
infringe any third party patents, copyrights or trade secrets and that it is
not aware of any facts or
circumstances that would constitute an infringement on any third party
patents, copyrights or trade secrets.
7.4 ITI agrees to defend, indemnify and hold harmless DataLode. its
subsidiaries, affiliates and their respective directors, officers and
employees from and against any and all alleged or actual claims by a third
party arising out of, or in connection with a breach by ITI of its
warranties in this Agreement, and pay all costs, damages, expenses, attorney
fees, liens and liabilities whatsoever incurred by DataLode in connection
therewith.
Article 8. COPYING RESTRICTIONS
8.1 Except as otherwise provided herein, DataLode shall only make copies of
the SRF for the purpose of incorporating it in its products. Unauthorized
copying of the Software, and Proprietary Technology directly or indirectly by
DataLode or by any of its employees or independent contractors will constitute
a fundamental and material breach of this Agreement.
8.2 DataLode shall have an unrestricted right to make copies of the SRF for
internal use, for the purposes of demonstration and evaluation as well as for
including it into its own product and business solution offering.
Article 9. PROPRIETARY RIGHTS
DataLode agrees that:
9.1 The Software, the SRF, ITI's logo, product names, software,
documentation and other support materials are either patented, copyrighted,
trademarked or owned by ITI as trade secrets and/or proprietary
information. DataLode agrees not to remove any Software copyright or patent
notices of such proprietary restriction from Software. ITI retains
exclusive ownership of the Software, of printed material and of the Software's
trademarks. All techniques, algorithms and processes contained in Software or
any modification or extraction thereof constitute trade secrets and/or
proprietary information of IRI ("Confidential Information") and will be
protected by this Agreement.
9.2 DataLode agrees that the Proprietary Technology shall be held in the
strictest confidence and shall not be reproduced or disclosed to others in
while or in part without the express written consent of ITIensor except in the
case of DataLode's personnel and Dealers having a need to know such
information for the purpose of this Agreement.
9.3 DataLode shall procure an undertaking from any such personnel and dealers
to keep the Proprietary Technology confidential. DataLode undertakes to take
legal action against any personnel and Dealer who will not act according to
the above. ITI shall be entitled to call from time to time for a
certificate signed by a responsible officer of the DataLode that DataLode has
complied with the provisions of this article.
9.4 DataLode will immediately bring to the attention of ITI any improper
or wrongful use of Software which came to the notice of DataLode.
9.5 The provisions of this Article shall continue in full force and effect
notwithstanding termination of this Agreement howsoever arising.
Article 10. ASSIGNMENT
Either party agree not to assign, transfer, or otherwise dispose of this
Agreement in whole or in part to any third party without the prior consent of
the other party.
Article 11. TERMINATION
11.1 If the terms and conditions of this agreement are breached by either
party, and such breach is not rectified within thirty (30) days after
receiving a written notice from the other party, the injured party may, in
addition to any other remedy available to it, terminate this Agreement
immediately.
11.2 If a petition in a bankruptcy is filed involuntarily against either party
and is not discharged or withdrawn within 60 days, the other party shall have
the right to forthwith terminate this Agreement unconditionally with a written
notice to the counter party.
11.3 If DataLode shall do or allow to be done any act or thing which it
knows or can reasonably be expected to know as likely to jeopardize ITI's
rights in the Software or any part thereof and in particular if DataLode
shall make or allow to be made unauthorized copies of the Software. ITI
shall have the right to terminate this Agreement provided that ITI has
give written notice of such circumstance to DataLode and DataLode failed to
remedy such default within thirty (30) days of such notice.
11.4 Upon termination of this Agreement, DataLode will certify, in writing to
ITI, that through its best efforts, and to the best of its knowledge, the
original and copies in whole or in part of the programs have been destroyed
and deleted from any updated work into which they have been merged. except
that, upon prior written authorization from ITI, DataLode may retain a
copy for archive purposes only.
11.5 DataLode will compensate ITI for SRF and Software usage for programs in
distribution where SRF and/or Software cannot be removed. ITI shall be
obligated to perform its obligations as described in Article 4. Of this
agreement.
11.6 In the event of non-payment by DataLode, ITI shall have the right to
terminate DataLode's license, provided that ITI has given written notice of
non-payment to DataLode and DataLode failed to remedy such default within
thirty (30) days of such notice.
11.7 ITI's and DataLode's obligations of confidentiality pursuant to this
Agreement, or any other agreement, shall survive termination of this Agreement
for any reason.
Article 12. CAPACITY OF PARTIES
This Agreement shall not be deemed to create any partnership, joint venture,
agency or employment relation between the parties.
Article 13. ENTIRE AGREEMENT
This Agreement and the exhibits constitute the entire agreement between the
parties hereto and supersedes all previous negotiations, agreements,
commitments in respect thereto, and shall not be released, discharged, changed
or modified in any manner, except by instrument signed by duly authorized
officers or representatives of each of the parties thereto.
Article 14. JURISDICTION, GOVERNING LAW AND ARBITRATION
14.1 This Agreement and the interpretation thereof shall be in accordance with
and governed by the laws of California, excluding that body of law known as
conflicts law.
14.2 Any controversy or claim arising out of or relating to this Agreement, or
the breach thereof, shall be settled pursuant to the Commercial Arbitration
Rules of the American Arbitration Association (the "AAA"), and judgment upon
the award rendered by the arbitrators may be entered in any court having
jurisdiction thereof. Notice of a demand for arbitration of any dispute
subject to arbitration by one party shall be filed in writing with the other
party and the AAA One of the arbitrators shall be appointed to decide
discovery disputes, and the decision of this arbitrator shall be final and
binding as to discovery. Discovery and disclosure shall be completed within
90 days after filing of such notice of arbitration unless extended by such
arbitrator upon a showing of good cause. Provided, however, that this
paragraph shall not apply to claims for equitable relief.
Article 15. WAIVER
The failure or delay of a party hereto to enforce any of its rights under this
Agreement shall not be deemed to be a continuing waiver or a modification by
such party of any of its rights or obligations of the other party under this
Agreement Any failure to enforce or delay in enforcement shall not constitute
a defense.
Article 16. NOTICE
16.1 All notices required or permitted to be given hereunder (except for
routine communications to be addressed to the persons in charge of its subject
business) shall be in writing and shall be valid and sufficient is dispatched
by a reputable express delivery service by air or registered airmail, and
addressed as follows:
If to Data Lode: If to InfoImaging Technologies Inc.
DataLode Inc. ITI Inc.
27 Xxxxx 0000 Xxxx Xxxxxx Xxxxxxx #000
Xxx Xxxxxx, XX Pleasanton, CA 9456
Fax: Fax 000-000-0000
Attention: Xxxxx Xxxxxx
All notices to be given hereunder shall be in writing and sent by registered
mail or fax to the addresses stated above or to such addresses as are notified
in writing by the parties. If either party has changed its address, a written
notice thereof shall be given to the other party.
16.2 All notices shall be deemed to have been given on the day when such
notice is received by registered mail or fax.
In witness whereof the contracting parties have signed this Agreement.
DATALODE INC. INFOIMAGING TECHNOLOGIES INC.
"Xxxxxx Xx Xxxxxxx" "Xxxxx Xxxxxx"
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Xxxxxx Xx Xxxxxxx Xxxxx Xxxxxx
President Vice-President
07/21/99 07/20/99
