Exhibit 10.1
TECHNOLOGY TRANSFER AGREEMENT
THIS TECHNOLOGY TRANSFER AGREEMENT (this "Agreement") is made and entered
into as of the ___ day of May, 1999, by and between SoftTek Technologies Inc., a
California corporation ("SoftTek") on the one hand, and Xxxx Xxxxx, dba
XpressWare ("XpressWare") on the other hand.
RECITALS
WHEREAS, upon executing the Settlement Agreement and Mutual Release,
SoftTek desires to acquire, and XpressWare desires to transfer to SoftTek, all
of XpressWare's right, title and interest in XpressWare's Software Product
"XpressFax" ("XpressFax Software" or sometimes referred to herein as the
"XpressWare Technology"), including without limitation, CD master, and all
copies, tapes and software code, research data, flow charts, designs, technical
information and source code related to the XpressFax Software.
WHEREAS, SoftTek is not assuming any liability for any existing third party
agreements that relate to the XpressFax Software, whether known or unknown.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties hereto agree as
follows:
SECTION 1. TRANSFER OF THE XPRESSWARE TECHNOLOGY.
1.1 Subject to the provisions hereof, upon executing the Settlement
Agreement and Mutual Release, (the "Transfer Date"), XpressWare shall
irrevocably transfer and assign, all of its right, title and interest in and to
the XpressWare Technology (the "Technology Transfer"). SoftTek acknowledges
that it has possession of the source code related to the XpressFax Software.
Upon executing this Agreement, XpressWare agrees to deliver to SoftTek either,
(1) all copies of the XpressWare Technology in its possession or (2) a written
statement certifying that it does not possess any XpressWare Technology.
1.2 XpressWare hereby acknowledges and agrees that from and after the
Transfer Date, SoftTek shall not assume any obligation of XpressWare relating to
the XpressWare Technology, including, but not limited to:
(i) All obligations of XpressWare to provide third parties including,
but not limited to Triteal Corporation, ("Third Party Technology Users"),
with access to the XpressWare Technology, use of the XpressWare Technology,
services relating to the XpressWare Technology, or other similar rights
with respect to the XpressWare Technology;
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(ii) All obligations of XpressWare to other parties with interests in
the XpressWare Technology, whether such parties have interest in the
XpressWare Technology by ownership, license, sub-license or otherwise,
whether such obligations are monetary or non-monetary in nature.
1.3 XpressWare shall defend, indemnify and hold SoftTek and its
affiliates, officers, directors, employees and agents harmless for any damages,
liabilities, costs and expenses (including, but not limited to, reasonable
attorney's fees incurred by SoftTek) which arise as a result of all liabilities,
obligations, losses, damages, penalties, actions, judgments, suits, costs,
expenses or disbursements of any kind whatsoever claimed or recovered by any
third party which may at any time be imposed on, incurred by or asserted against
SoftTek or its affiliates, officers, directors, employees and agents in any way
relating to or arising out of XpressWare's conduct, including, without
limitation, any claim or claims by (i) third parties of infringement or other
violation of their rights in the XpressWare Technology or (ii) Third Party
Technology Users of their rights to use the XpressWare Technology or obtain
services related thereto.
1.4 SoftTek shall defend, indemnify and hold XpressWare and its
affiliates, officers, directors, employees and agents harmless for any damages,
liabilities, costs and expenses (including, but not limited to, reasonable
attorney's fees incurred by XpressWare) which arise as a result of all
liabilities, obligations, losses, damages, penalties, actions, judgments, suits,
costs, expenses or disbursements of any kind whatsoever claimed or recovered by
any third party which may at any time be imposed on, incurred by or asserted
against XpressWare or its affiliates, officers, directors, employees and agents
in any way relating to or arising out of SoftTek's use of the XpressFax Software
under the Source Development and Distribution License Agreement entered into
between SoftTek and XpressWare on or about February 24, 1996 (the "License
Agreement").
SECTION 2. XPRESSWARE REPRESENTATION
2.1 In connection with the Settlement Agreement and Mutual Releases and
the Technology Transfer Agreement, XpressWare hereby represents and warrants to
SoftTek that XpressWare has full capacity, power and right to make and enter
into this Agreement and to sell, assign, transfer and deliver the XpressWare
Technology to SoftTek and has good and marketable title to the XpressWare
Technology free and clear of any lien.
2.2 XpressWare further represents and warrants to SoftTek that there are
no other documents or agreements which relate to XpressWare's rights in the
XpressWare Technology other than XpressWare's agreement with Triteal Corporation
and its agreement with Xxxxx Xxxxxxx, which agreements XpressWare agrees to
provide to SoftTek.
2.3 XpressWare represents and warrants to SoftTek that (1) Xxxxx Xxxxxxx
was given a copy of XpressWare's source code related to the XpressWare
Technology for the limited purpose of providing customer support; (2) that Xxxxx
Xxxxxxx has not other rights to use the source code and (3) that Xxxxx Xxxxxxx
is prohibited from transferring or disclosing the source code to any third
party.
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2.4 XpressWare further represents and warrants to SoftTek that other than
as disclosed in this Agreement, no person or legal entity has any rights,
interests, or claims of any kind with regard to the XpressWare Technology.
SECTION 3. TERMINATION
3.1 In the event of a willful breach by XpressWare of its obligations
hereunder, XpressWare shall be obligated to indemnify SoftTek for documented
commercially reasonable damages (including claims, liabilities, expenses,
reasonable out-of-pocket costs and other legally recoverable damages) resulting
from such breach.
SECTION 4. MISCELLANEOUS
4.1 NOTICES. Any notices required or permitted under this Agreement shall
be in writing and shall be deemed delivered to the party to whom directed on the
date of service if hand delivered or if sent by facsimile transmission, or three
(3) days after mailing if sent first class (or first class international mail in
the case of notices sent outside the country of origin), postage prepaid and
addressed as follows:
If to SoftTek:
SoftTek, Inc.
00000 Xxxxxxx Xxxxxx Xxxx, Xxxxx 000
Xxxxxxx Xxxxxx, XX 00000
If to XpressWare:
XpressWare
0000 Xxxxxxx Xxxxx
Xxxx, XX 00000
Attention: Xxxx Xxxxx
4.2 SUCCESSORS AND ASSIGNS. This Agreement shall be binding and inure to
the benefit of the parties hereto and their permitted successors, and assigns.
4.3 AGREEMENT TO PERFORM NECESSARY ACTS. Each party agrees to perform any
further acts and execute and deliver any documents which may be reasonably
necessary to carry out the provisions of this Agreement.
4.4 ENTIRE AGREEMENT; AMENDMENT. This Agreement evidences the entire
agreement of the parties hereto concerning the matters covered herein and
supersedes all prior agreements or understandings. It may be amended at any
time only by the written consent of all of the parties hereto.
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4.5 ATTORNEYS' FEES. In the event of any dispute relating to this
Agreement, the prevailing party shall be entitled to recover his reasonable
attorneys? fees and costs.
4.6 NUMBER AND GENDER. As used in this Agreement, the masculine shall
include the feminine, and vice versa, the neuter shall include the masculine and
feminine, and vice versa, and the singular shall include the plural, and vice
versa.
4.7 GOVERNING LAW. This Agreement shall be governed by and construed,
interpreted and enforced in accordance with the laws of the United States and
the State of California without giving effect to the principles of conflict or
choice of laws thereof.
4.8 HEADINGS. The caption headings in this Agreement are for reference
purposes only, and do not constitute a part of this Agreement and shall not
affect its meaning or interpretation.
4.9 FORCE MAJEURE. Neither party shall be liable for its failure or delay
in fulfilling its obligations hereunder, if such failure or delay is caused by
fire, flood, weather conditions or other Act of God, invasions, insurrections,
riots, closing of the public highways, strike, lockout or other labor dispute,
civil unrest, war or any other reason beyond the reasonable control of the
party. In the case of strikes, lockouts or other labor disputes, it is
understood that such event is beyond the reasonable control of the party
suffering the event unless and until the party is able to resolve it in a manner
which such party deems reasonable and appropriate.
4.10 NO THIRD PARTY RIGHTS. The provisions of this Agreement shall not
entitle any person not a signatory hereto to any rights hereunder or in respect
hereof, as a third party beneficiary or otherwise, it being the specific
intention of the parties herein to preclude any and all such persons from such
rights.
This Agreement shall enter into full force and effect as of the date first
set forth above upon its execution below by both of the parties.
SOFTTEK, INC. XXXX XXXXX, DBA
XPRESSWARE
By: /s/ X.X. Xxxxxx By: /s/ Xxxx Xxxxx
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Its: CEO Its: President
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