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EXHIBIT 10.47
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LICENSE AND SERVICE AGREEMENT
LICENSE AGREEMENT ("Agreement") made this 15 day of February, 2000, by and
between MyWeb Xxx.xxx., a Nevada corporation ("Licensor") of Block G, Unit
606, Phileo Demansara 1, No. 9 Xxxxx 00/00, Xxx Xxxxx Xxxxxxxxx, 00000
Xxxxxxxx Xxxx, Xxxxxxxx, Xxxxxxxx and MyWeb Americas, Inc. of Rus do Xxxxx
220, Conjunto 132, Xxxxxxxx Xxxxxx 0, Xxxx Xxxxxxx 04552-000, Sao Paulo, Brazil,
a Delaware corporation ("Licensee").
RECITALS
A. Licensor has: (i) developed software for internet set-top
boxes which permit users to access the Internet via television
sets, and (ii) developed and operates internet portals (the
"Online Service") in several countries;
B. Licensee has been incorporated to develop and offer: (i)
television Internet access in North, Central and South
America; and (ii) develop and offer country-specific portals
for users accessing the Internet via television sets
(together, the "Business");
C. Licensor desires to have its Licensed Technology (as defined
in Section 5.1 below) commercialized in the Territory (as
defined in Section 3 below) through the granting of an
exclusive license, and Licensee desires to acquire an
exclusive license to commercialize and otherwise use the
Licensed Technology in the Territory, pursuant to terms and
conditions of this Agreement.
NOW THEREFORE, for good and valuable consideration, the receipt and sufficiency
of which is hereby acknowledged, the parties agree as follows:
1. RECITALS.
The recitals to this Agreement are true and correct and hereby
incorporated by reference into this Agreement.
2. TERM.
This Agreement and the license granted hereby shall, unless terminated
in accordance with the terms of this Agreement, remain and continue in full
force and effect for a period of five years from the date first above written
(the "Term") and upon expiration of the Term, this Agreement and the license
granted hereby shall automatically be renewed for successive three-year terms
(each such new term, a "Renewal Term") unless either party has given to the
other party at least ninety days prior written notice to expire on the end of
the Term or any Renewal Term of their intention not to renew the Agreement.
3. TERRITORY.
This Agreement is for South America, Central America, Mexico and the
Caribbean (the "Territory").
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4. EXCLUSIVE LICENSE IN THE TERRITORY.
4.1 Subject to the payment of consideration as provided in Section 8 below,
Licensor hereby grants to Licensee the [***] exclusive right and license to the
Licensed Technology (as defined below) in the Territory. The exclusive license
granted above shall include, but is not limited to, the right to use, reproduce,
display, perform, transmit, distribute, market and promote the Licensed
Technology within the Territory.
4.2 Licensor also hereby grants to Licensee the exclusive right to
sublicense the Licensed Technology in the Territory to other parties
("Sub-licensees"). The Licensee shall be responsible for all acts and omissions
of each Sub-licensee during the term of that Sub-licensee's sub-license as
though they were by the Licensee. Any sub-licenses that are exclusive shall
become non-exclusive if and when Licensee's right and license to the Licensed
Technology becomes non-exclusive, except to the extent that Licensee may bind
itself to an exclusive relationship with a Sub-licensee to the extent that it
does not bind Licensor to an exclusive relationship when Licensee's right and
license to the Licensed Technology is non-exclusive.
5. LICENSED TECHNOLOGY.
5.1 For purposes of this Agreement, the Licensed Technology shall mean:
(i) all software offered or sold by Licensor during the Term, or
any Renewal Term (including its "Thunder" and "ThunderServe" software
and the other software listed in Annex A hereto) in object format,
including all modifications, improvements, enhancements, additions,
derivative works, updates, releases and versions thereof (collectively,
the "Software");
(ii) Licensor's copyright and any other intellectual property
rights related to its Online Service and the Software;
(iii) Licensor's xxxx "MyWeb" and any other marks (including the
marks listed in Annex B hereto) used in Licensor's business and/or in
respect of the Software or the Licensor's Online Service (collectively,
the "Marks");
(iv) all copyrights, patent rights, trade secret rights, trademark
rights, mask works rights and all other intellectual property in,
incorporated or embodied in, used to develop, or related to any of the
foregoing, including but not limited to any documentation, manuals,
marketing and promotional materials (collectively "Intellectual
Property"); and
(v) any documentation related to the foregoing.
5.2 Licensee acknowledges that title to and ownership of the Licensed
Technology shall at all times remain with Licensor. Licensee further agrees not,
during the Term, any Renewal Term or at any time after the expiry or
termination of this Agreement, to decompile or reverse engineer any of the
Software (as defined above) included in the Licensed Technology.
[***] Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
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6. INTELLECTUAL PROPERTY
6.1 The Licensee shall not use (other than in relation to this Agreement)
or seek to register outside the Territory without the written consent of the
Licensor as a trade xxxx or domain name, "MyWeb" or any other xxxx which is
identical to or confusingly similar with or incorporates any trade xxxx or trade
name in which the Licensor claims rights anywhere in the world.
6.2 Licensee acknowledges that (i) the Intellectual Property including
any goodwill associated therewith is owned solely and exclusively by Licensor
(or its respective licensors) whether or not specifically recognised or
perfected under the laws of the Territory; (ii) nothing contained under this
Agreement shall give to Licensee or Sub-licensee(s) any right title or interest
in the Intellectual Property other than that granted under this Agreement,
(iii) to the extent that new inventions, designs, processes, modifications, or
improvements are made to the Licensed Technology by Licensor, they are subject
to the terms of this Agreement, shall be promptly provided to Licensee
hereunder and title shall remain with Licensor. The parties acknowledge that,
to the extent that new inventions, designs, processes, modifications, or
improvements are made to the Licensed Technology by the Licensee, title shall
belong to Licensee and a royalty-free non-exclusive license shall be given to
Licensor outside the Territory.
7. CONFIDENTIALITY
7.1 The Licensee agrees to maintain in strict confidence any confidential
information of the Licensor including but not limited to the Licensed
Technology, obtained pursuant to this Agreement and prior to and in
contemplation of it and all other information that it may acquire from the
Licensor in the course of this Agreement, to respect the Licensor's (or its
respective licensors') proprietary rights therein, to use the same exclusively
for the purposes of this Agreement, and to disclose the same only to those of
its employees and Sub-licensees pursuant to this Agreement (if any) to whom and
to the extent that such disclosure is contemplated by this Agreement.
7.2 The foregoing obligations of Section 7.1 above shall not apply to
information which:
(i) prior to receipt thereof from the Licensor was in the
possession of the Licensee and at its free disposal;
(ii) is subsequently disclosed to the Licensee without any
obligation of confidence by a third party who has not derived
it directly or indirectly from the other;
(iii) is or becomes generally available to the public through no
act or default of the Licensee or its agents or employees.
7.3 The Licensee shall procure that all its employees and Sub-licensees
pursuant to this Agreement (if any) who have access to any information
of the other to which the obligations of this Section 7 apply shall be
made aware of and subject to these obligations.
8. CONSIDERATION.
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Licensee shall issue to Licensor 3,405,405 shares ("Shares") of
Licensee's common stock, par value $.001 per share, which Shares shall represent
40% of the presently issued and outstanding capital stock of the Licensee,
prior to any financing, including, without limitation, the financing
contemplated by the Capital Increase Agreement, dated December 22, 1999, as
amended, between Licensee and Southern Cross Latin American Private Equity
Fund, L.P. The Shares shall be issued to Licensor no later than February 18,
2000, and in connection with and as a requirement of such issuance, the parties
hereto and the other shareholders of Licensee shall enter into the shareholders'
agreement contemplated by the Capital Increase Agreement. If the Shares are not
so issued by February 18, 2000, Licensor may terminate this Agreement upon
written notice to Licensee, provided that such notice is received by the
Licensee prior to February 29, 2000. The Shares shall be the only consideration
required of the Licensee with respect to the subject matter of this Agreement.
9. SERVICES.
9.1 Licensor shall provide the necessary technical support to Licensee in
order to successfully develop and launch the Business in the Territory. Without
limiting the generality of the foregoing, Licensor shall provide the following
services at no additional cost to Licensee:
(i) translate and fully adapt the Software to Spanish and
Portuguese by no later than February 29, 2000;
(ii) assist the Company to develop and launch a portal that is
substantially the same as the Online Service in each of the
countries in which Licensee operates or may operate in the
Territory, including, without limitation, providing the
Licensee with the site map, content, features, graphic user
interface, back-end applications and other components of
Licensor's Online Service;
(iii) provide two dedicated engineers familiar with the Licensed
Technology for a minimum period of 6 months from the date of
this Agreement to support and provide in-person assistance to
the Licensee at Licensee's principal place of business in Sao
Paolo, Brazil, including assistance with all aspects of the
Software and the development and launch by the Licensee of
the online services; and
(iv) promptly provide Licensee with all upgrades and enhancements
to the Software.
All Licensor personnel involved in providing services to Licensor
hereunder (including the two dedicated engineers) shall sign a confidentiality
agreement offering at least the same level of protection of Licensee's
confidential information as Section 7 above provides Licensor's confidential
information.
9.2 The parties acknowledge that the Licensor shall not be responsible for
providing first-line support to Sub-licensees and End Users. Without limiting
the generality of the foregoing, it is acknowledge that Licensor shall not have
any obligation with respect to the following:
(i) establishing a help desk for Sub-licensees and End Users;
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(ii) creating and maintaining a localised web site to provide help
and other useful information;
(iii) creating and distributing localised user documentation
and manuals; and
(iv) distributing to Sub-licensees and End Users all upgrades and
enhancements to the Software received by the Licensee during
the term of this Agreement.
10. LICENSOR'S REPRESENTATIONS.
The Licensor represents that:
(i) Licensor is the exclusive owner of all rights, title and
interest in the Licensed Technology;
(ii) Licensor has not assigned, transferred, licensed, pledged or
otherwise encumbered any Licensed Technology in the Territory;
(iii) Licensor has full power and authority to enter into this
Agreement; and
(iv) to the best of Licensor's knowledge, the Licensed Technology
does not violate, infringe, or misappropriate any third
party's rights.
11. WARRANTY.
11.1 Licensor warrants to Licensee that when delivered, the Software shall
perform substantially in accordance with its specification and accompanying
documentation. This warranty shall apply for a period of [***] from the date of
delivery ("Warranty Period"). In the event of any breach of this warranty during
the Warranty Period, Licensor shall, at its own cost and expense, as Licensee's
sole and exclusive remedy, use its best efforts to correct any problem(s)
specifically identified by the Licensee or at its option replace the defective
Software. The Licensor's warranty as provided above shall only apply provided
that (i) the Software has been used at all times properly and in accordance with
instructions of use; (ii) no alteration, modification or addition has been made
to the Software by the Licensee.
11.2 EXCEPT AS EXPRESSLY PROVIDED IN SECTION 11.1 ABOVE, THERE ARE NO
TERMS, CONDITIONS, REPRESENTATIONS, WARRANTIES, EXPRESS OR IMPLIED, INCLUDING,
BUT NOT LIMITED TO, ANY CONDITIONS OR WARRANTIES OF MERCHANTABILITY OR FITNESS
FOR PARTICULAR PURPOSE.
12. INDEMNIFICATION.
12.1 Licensor hereby indemnifies Licensee and any Sub-licensee thereof
against any claim, demand or action related to any breach of this Agreement by
Licensor, and/or any allegation that any of Licensed Technology furnished under
this Agreement infringes any patent, copyright, trademark, moral right, trade
secret or other proprietary right.
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Confidential Treatment and filed separately with the Commission.
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12.2 The Licensee undertakes that the Licensor shall be given prompt notice
of any claim specified in 12.1 above that is made against the Licensee
and the Licensor shall have the right to defend any such claims and
make settlements thereof at its own discretion and the Licensee shall
give such assistance as the Licensor may reasonably require to settle
or oppose any such claims.
12.3 In addition to indemnifying the Licensee as provided above, in the
event that any such infringement occurs or may occur, the Licensor may
at its expense and in consultation with Licensee:
(i) procure for the Licensee the right to continue using the
Software or infringing part thereof;
(ii) modify or amend the Software or infringing part thereof so
that the same becomes non-infringing;
(iii) replace the Software or infringing part thereof by other
software of substantially similar capability; or
(iv) return the Shares to the Licensee.
12.4 Licensee hereby indemnifies Licensor against any claim, demand or
action arising out of any breach of this Agreement by Licensee.
13. RIGHT OF FIRST REFUSAL AND MOST FAVORED NATIONS.
If Licensor offers the right to license the Licensed Technology to a
person in any of the following states: Arizona, Florida, New Mexico, California,
Texas or New York, then Licensor shall, prior to the making of such an offer,
notify the Licensee in writing of the terms and conditions of such offer and
then offer to Licensee the opportunity to accept such offer according to
comparable terms and conditions. Additionally, if Licensor has agreed to license
or agrees to license the Licensed Technology, directly or indirectly, pursuant
to any agreement, understanding or arrangement (including orally) to any third
party located anywhere in the world under any term, provision or condition which
is more favorable to such third party than those set forth in this Agreement,
Licensor shall give written notice thereof to Licensee and, at Licensee's
election, this Agreement shall be deemed to have been modified so that Licensee
shall receive such more favorable provision (retroactive to the date first
provided to the third party).
14. SOURCE CODE ESCROW ACCOUNT.
All Source Code associated with the Licensed Technology shall be kept
in escrow and updated on a regular basis, and will be updated and released to
Licensee in the event of one of the following:
(i) liquidation of Licensor;
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(ii) filing of insolvency or bankruptcy by Licensor which is not
dismissed within ninety (90) days;
(iii) appointment of a trustee or receiver for Licensor which is
not dismissed within ninety (90) days; or
(iv) Licensor's material breach resulting in termination.
15. TERMINATION
Either party may terminate this Agreement if the other party:
(i) is in breach of any material term, condition or provision of
this Agreement or required by the applicable law and fails to
remedy such breach (if capable of remedy) within 30 days of
having received written notice of such breach from the party
wishing to terminate; or
(ii) shall commence a voluntary case concerning itself under Title
11 of the United States Code entitled "Bankruptcy" as now or
hereafter in effect or any successor thereto (the "Bankruptcy
Code"); or an involuntary case is commenced against the other
party and the petition is not controverted within ten (10)
days or is not dismissed within sixty (60) days, after the
commencement of the case; or a custodian (as defined in the
Bankruptcy Code) is appointed for, or takes charge of, all or
substantially all of the property of the other party or the
other party commences any other proceeding under any
reorganization, arrangement, adjustment of debt, relief of
debtors, dissolution, insolvency or liquidation or similar
law of any jurisdiction whether now or hereafter in effect
relating to the other party or there is commenced against the
other party any such proceeding which remains undismissed for
a period of sixty (60) days, or the other party is
adjudicated insolvent or bankrupt; or any relief of any order
approving any such case or proceeding is entered; or the
other party suffers the appointment of any custodian or the
like for it or any substantial part of its property to
continue undischarged or unstayed for a period of sixty (60)
days; or the other party makes a general assignment for the
benefit of creditors, or any corporate action is taken by the
other party for the purpose of effecting any of the foregoing.
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16. CONSEQUENCES OF TERMINATION.
Neither party may terminate this Agreement before the end of the Term
or, in the event of a renewal pursuant with the term hereof, before the end of a
Renewal Term, except as provided under Section 15 hereof. In the event of
termination due to material breach by the Licensor, the exclusive right and
license to the Licensed Technology (including updates) in the Territory shall
remain in force until the end of the Term, and then become a perpetual
royalty-free, fully paid, nonexclusive right and license. Otherwise, upon
expiration of the Term or other termination of this Agreement, the exclusive
right and license to the Licensed Technology in the Territory shall become a
perpetual royalty-free, fully paid, nonexclusive right and license to the
Licensed Technology (including updates) in the Territory. Licensor shall, upon
termination of this Agreement, provide Licensee with any material, including
source code, documentation, software, and instructions, necessary for Licensee
to continue the Business.
17. MISCELLANEOUS.
17.1 Assignment
This Agreement shall not be assignable or transferable by a party
hereto (other than to an affiliate of such party) without the prior written
consent of the other party and any attempt to do so shall be void.
17.2 Force Majeure
For the purpose of this Agreement, "Force Majeure" shall mean any event
which is beyond the control of the parties and which is unforeseen, or if
foreseen, unavoidable, and which prevents total or partial performance by a
party. Such event shall include but are not limited to any strikes, lock-outs or
other industrial action; civil commotion, riot, invasion, war threat or
preparation for war, fire, explosion, storm, flood, earthquake, subsidence,
epidemic or other nature physical disaster; impossibility of the use of
railways, shipping, aircraft, motor transport or other means of public or
private transport; political interference with the normal operations of any
party; and any other events that are accepted as force majeure in general
international commercial practice. If an event of Force Majeure occurs, to the
extent that the commercial obligations of the parties to this Agreement cannot
be performed as a result of such event, performance of such contractual
obligations shall be suspended during the period of delay caused by the Force
Majeure and shall automatically be extended, without penalty and without
constituting a breach of contract, for a period equal to such suspension. The
party claiming Force Majeure shall promptly inform the other party in writing
and shall furnish within 10 days thereafter sufficient evidence of the
occurrence and duration of such Force Majeure. The party claiming Force Majeure
shall also use all reasonable endeavours to terminate the Force Majeure. In the
event of Force Majeure, the parties shall immediately consult with each other in
order to find an equitable solution and shall use all reasonable endeavours to
minimise the consequences of such Force Majeure.
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17.3 Notice
All notices, reports, approvals, consents or other communications
required, desired or permitted to be given under this Agreement shall be in
writing and shall be deemed "given" (a) upon personal delivery to the party to
be notified, (b) upon deposit with the official governmental postal service, and
addressed to the recipient at the address set forth below, postage prepaid,
return receipt requested, or (c) upon transmission via facsimile to the
recipient at the facsimile number set forth below during the business hours at
the location of the recipient, subject to a confirmed answerback at the end of
the transmission and dispatch. Any notice given in any other manner shall be
deemed "given" only when actually received.
Licensor:
Attn:
Facsimile No.:
Licensee:
Attn: Xxxxxxxx Xxxxxx
Facsimile No.: 00-00-0000000
17.4 Waivers
No failure to exercise, and no delay in exercising, on the part of
either party, any privilege, power or right hereunder will operate as a waiver
thereof. No single or partial exercise of any right or power hereunder will
preclude further exercise of any other right or power hereunder. Any waivers
shall be effective only if made in writing and signed by a representative of the
respective parties authorized to bind the parties.
17.5 Amendment
This Agreement cannot be changed or terminated orally. Any amendments
shall be effective only if made in writing and signed by a representative of the
respective parties authorized to bind the parties.
17.6 Enforceability
If any provision of this Agreement shall be adjudged by any court of
competent jurisdiction to be uneforceable or invalid, that provision shall be
limited or eliminated to the minimum extent necessary so that this Agreement
shall otherwise remain in full force and effect and enforceable.
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17.7 Governing Law
This Agreement shall be deemed to have been made in, and shall be
governed and construed in accordance with the domestic laws of the State of New
York, without giving effect to any choice of law or conflicting provision or
rule that would cause the laws of any jurisdiction other than the State of New
York to be applied. In furtherance of the foregoing, the internal law of the
State of New York will control the interpretation and construction of this
Agreement, even if under such jurisdiction's choice of law or conflict of law
analysis, the substantive law of some other jurisdiction would ordinarily apply.
17.8 Entire Agreement
Both parties agree that this Agreement is the complete and exclusive
statement of the mutual understanding of the parties and supersedes and cancels
all previous written and oral agreements and communications relating to the
subject matter of this Agreement, including but not limited to that certain
letter agreement, dated November 1, 1999 between the parties.
17.9 Arbitration/Forum
In the event of any dispute, claim, question, or disagreement arising
from or relating to this agreement or the breach thereof, the parties hereto
shall use their best efforts to settle the dispute, claim, question, or
disagreement. To this effect, they shall consult and negotiate with each other
and, recognizing their mutual interests, attempt to reach a final solution
satisfactory to both parties. If they do not reach such solution within a period
of 60 days, then, upon notice by either party to the other any dispute,
controversy or claim arising out of or relating to this Agreement or to a breach
hereof, including its interpretation, performance or termination, shall be
finally resolved by arbitration. The arbitration shall be conducted by one (1)
arbitrator appointed jointly by Licensor and Licensee or, if they cannot agree,
by the President of the American Arbitration Association ("AAA"). The
arbitration shall be conducted in English in accordance with the commercial
arbitration rules of the AAA. The arbitration, including the rendering of the
award, shall take place in New York, New York and shall be the exclusive forum
for resolving such dispute, controversy or claim. The decision of the arbitrator
shall be final and binding upon the parties hereto, and the expense of the
arbitration (including without limitation the award of reasonable attorney's
fees to the prevailing party) shall be allocated as determined by the
arbitrator. The decision of the arbitrator may be entered by any court of
competent jurisdiction.
17.10 Consent
Without limiting the rights granted hereunder, Licensor irrevocably
consents to Licensee's perpetual use of the MyWeb name for its business,
wherever located, including the use of such name in connection with listing
securities on any securities exchange, over-the-counter market or the like.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed as of the date first above written.
SIGNED by ) /s/
for and on behalf of ) ----------------------------
MyWeb Americas, Inc. ) /s/
in the presence of:- ) ----------------------------
) /s/
) ----------------------------
) /s/
) ----------------------------
) /s/
) ----------------------------
SIGNED by ) /s/
for and on behalf of ) ----------------------------
MyWeb Xxx.xxx ) /s/
in the presence of:- ) ----------------------------
)
