Exhibit 10.16
AMENDED AND RESTATED
LICENSE AGREEMENT
THIS AMENDED AND RESTATED LICENSE AGREEMENT (this "Agreement") is made and
entered into as of the 16th day of December, 1996 by and between APOLLO
INTERNATIONAL of DELAWARE, INC., a Delaware corporation ("Licensee"), and
XXXXXXX X. XXXXXX, Xx. d/b/a/ WHR PARTNERS ("Licensor").
R E C I T A L S:
WHEREAS, this Agreement amends, restates and supersedes in its entirety
that certain License Agreement entered into by and between Licensee and Licensor
dated December 16, 1996 (the "Original").
WHEREAS, this Agreement sets forth the terms and conditions under which
Licensor grants to Licensee, its successors and assigns, certain rights and
licenses in and to the Licensed Work (as hereinafter defined).
NOW, THEREFORE, in consideration of the mutual covenants and agreements set
forth herein and other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, Licensor and Licensee agree as
follows:
1. CERTAIN DEFINITIONS. As used in this Agreement, the following
capitalized terms shall have the following meanings:
"CODE" shall mean computer programming code in both Object Code and
Source Code.
" CUSTODIAN" shall mean a person or entity selected from time to time
by Licensee to act as its agent and under its instruction with respect to the
custody of some or all of the Licensed Work.
"DERIVATIVE WORK" shall mean a work which is based upon one or more
preexisting works, such as a revision, enhancement, modification, translation,
abridgment, condensation, expansion, or any other form in which such preexisting
works may be recast, transformed, or adapted, and which, if prepared without
authorization of the owner of the copyright in such preexisting work, would
constitute a copyright infringement. For purposes hereof, a Derivative Work
shall also include any compilation that incorporates such a preexisting work.
"DEVELOPMENT ENVIRONMENT" shall mean any device, programming,
documentation, media, and other materials, including compilers, "workbenches,"
tools, and higher-level or "proprietary" languages, used by Licensor or required
by Licensee for the development, maintenance, or implementation of any portion
of the Licensed Work.
"DOCUMENTATION" shall mean user manuals and other written materials
that relate to particular Code, including materials useful for design (e.g.,
logic manuals, flow charts, and principles of operation), and machine-readable
text or graphic files subject to display or printout.
"INTELLECTUAL PROPERTY" shall mean the intangible legal rights or
interests evidenced by or embodied in (1) any idea, design, concept, technique,
invention, discovery, or improvement, whether or not patentable, but including
patents, patent applications, trade secrets, and know-how, (2) any work of
authorship, whether or not copyrightable, but including copyrights and any moral
rights recognized by law, and (3) any other similar rights, in each case on a
worldwide basis.
"LICENSED WORK" shall mean (1) the Code and Documentation described
in ATTACHMENT 1 hereto, (2) all Updates that Licensor offers generally to its
customers from time to time
"OBJECT CODE" shall mean the machine-readable form of the Code.
"SOURCE CODE" shall mean the human-readable form of the Code and
related system documentation, including all comments and any procedural code
such as job control language.
"SUBSIDIARY" shall mean a corporation, company, or other entity more
than fifty percent (50%) of whose outstanding shares or securities (representing
the right to vote for the election of directors or other managing authority),
are, or which does not have outstanding shares or securities, as may be the case
in a partnership, joint venture, or unincorporated association, but more than
fifty percent (50%) of the ownership interest representing the right to make the
decisions for such corporation, company, or other entity is, now or hereafter,
owned or controlled, directly or indirectly, by a party hereto, but such
corporation, company, or other entity shall be deemed to be a Subsidiary only so
long as such ownership or control exists.
"THIRD-PARTY WORK" shall mean any Code or Documentation in which any
person or entity other than Licensor owns any pertinent Intellectual Property
rights and which either is incorporated in the Licensed Work or represents a
preexisting work of which the Licensed Work is a Derivative Work.
"UPDATES" shall mean all changes or additions, including all
modifications, revisions, or enhancements, to any portion of the Licensed Work
that correct errors, problems, or defects, or that provide corrections, or that
improve functions, add new functions, or improve performance by changes in or
additions to system design or coding.
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2. GRANT OF LICENSE.
a. SCOPE. Licensor hereby grants to Licensee, its successors and
assigns, a worldwide, irrevocable, nonexclusive right and license to use,
execute, reproduce, display, perform, incorporate into products, distribute
internally and externally, and to prepare Derivative Works of, the Licensed
Work.
b. PICTORIAL, GRAPHIC, AND AUDIOVISUAL WORKS. The rights and
licenses granted hereunder shall include the right and license to copy, display,
and perform pictorial, graphic, or audio/visual works, including icons, screens
and characters, created as a result of execution of the Licensed Work or any
Derivative Work thereof, whether such pictorial, graphic works are created by
use of the Licensed Work or with other programming or through other means.
c. INFORMATION AND DOCUMENTS. Licensor further grants to Licensee,
its successors and assigns, a worldwide, irrevocable, nonexclusive right and
license to use, copy, and distribute, and prepare Derivative Works of, any
information or documents that Licensor may provide to Licensee, its successors
and assigns, in connection with the use of the Licensed Work.
d. INTELLECTUAL PROPERTY AND MORAL RIGHTS. The rights and licenses
granted hereunder shall include the right and license in and to any Intellectual
Property to the extent required for Licensee to exercise the other rights and
licenses granted hereunder. Licensor hereby waives any and all moral rights,
including any right to identification of authorship, rights of approval of
modifications, or limitation on subsequent modification that Licensor has or may
have in the Licensed Work.
e. FURTHER ASSISTANCE. Promptly upon request by Licensee, Licensor
shall give Licensee all assistance reasonably required to evidence more fully
and otherwise give full and proper effect to the aforementioned grant of rights
and licenses.
f. THIRD-PARTY WORKS. Licensor shall at all times assure that the
Licensed Work, in executable form, is free from Third-Party Works.
g. IRREVOCABILITY. Except as expressly provided herein, this
Agreement and the rights and licenses granted hereunder shall not be impaired or
diminished by the occurrence or continuance of any breach of any other agreement
between the parties, any lack of capacity or authority, any reorganization,
liquidation, dissolution, merger, or consolidation, or any other change of
circumstances of Licensor or Licensee.
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3. PAYMENTS. Licensee shall pay Licensor for the license and other
rights granted Licensee herein as follows:
a. CASH. One Hundred Twenty Five Thousand ($125,000) Dollars in
lawful money as follows:
(i) Licensee shall repay up to one-half (1/2) of the above
amount on the earlier of (a) September 1, 1998; or (b) the last day of the first
(1st) fiscal quarter that Licensee's gross revenue exceeds Five Hundred
Thousand ($500,000) dollars, subject to the determination by the Licensee's
President that there will be sufficient funds available to meet Licensee's
expenses.
(ii) Licensee shall repay one-half (1/2), or more, of the then
outstanding balance of the above amount on the last day of each subsequent
fiscal quarter that Licensee's gross revenue exceeds Five Hundred Thousand
($500,000) dollars, subject to the determination by the Licensee's President
that there will be sufficient funds available to meet Licensee's expenses.
b. STOCK. One Hundred Twenty Five Thousand ($125,000) Dollars in
the form of common stock of Licensee at $3.00 per share. The total payment
shall be Forty One Thousand Six Hundred Sixty-Six and 6666/10000 (41,666.6666)
shares (the "Shares") of Licensee's common stock. The first payment in stock of
20,833.3333 shares shall be made on the date the software licensed hereunder is
successfully run on any of Licensee's product. The second payment in stock of
20,833.3333 Shares shall be made when the first successful beta trial is
concluded prior to the first full commercial shipment. The transfer of the
shares shall be in accordance with a stock purchase agreement to be entered into
concurrently herewith, the form of which is appended hereto as ATTACHMENT 2.
For purposes of this Agreement, the terms "beta trial" shall mean testing the
product at a customer's site under normal operating conditions.
4. DELIVERIES. Licensor has delivered a complete set of the Source
Code for the Licensed Work to Licensee. Licensee and its designees shall at all
times be entitled to at least one full set of all media and other tangible
property representing or containing the Licensed Work, which shall promptly be
delivered to Licensee upon Licensee's request to the extent it at any time does
not have possession of any part thereof. In addition, in such event, if it so
elects, Licensee or its designee may enter Licensor's premises, in as
nondisruptive a manner as possible, and collect, copy, and retain one full set
of all such items. Licensee shall reimburse Licensor for reasonable
out-of-pocket costs of media, copy charges, or supplies incurred as a result of
such retrieval.
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5. TREATMENT OF SOURCE CODE. Licensee agrees to treat (or instruct a
Custodian to treat) the Source Code version of the Licensed Work, including
related development documentation, with the same care and discretion with which
it treats the similar Source Code versions of other programming products under
similar circumstances, for a period of five (5) years after the date of receipt
of such Source Code. If Licensee decides to license some or all of the Source
Code to its customers, such license shall be subject to protective terms
equivalent to the terms Licensee uses to protect other similar Source Code. The
foregoing obligations shall not apply to any aspect of the Source Code that is
(1) publicly available or becomes so in the future without restriction, (2)
rightfully received by Licensee from a third party and not accompanied by
confidentiality obligations, (3) already in Licensee's possession and lawfully
received from sources other than Licensor, (4) independently developed by
Licensee, or (5) approved in writing for release or disclosure without
restriction by Licensor.
6. PROTECTION. Licensor shall, at Licensor's expense, take such action
from time to time as may be necessary or prudent, in its reasonable judgment, to
protect and preserve its title and interest in the Intellectual Property
represented by the Licensed Work, including by compliance with applicable laws
and regulations respecting the continued registration of any registered
copyrights and by seeking to enjoin any infringement of the Intellectual
Property represented by the Licensed Works by third parties.
7. REPRESENTATIONS AND WARRANTIES OF LICENSOR REGARDING LICENSE OF
SOFTWARE. Licensor makes the following representations and warranties for the
benefit of Licensee:
a. NO CONFLICT. Licensor represents and warrants that it is under
no obligation or restriction, nor will it assume any such obligation or
restriction, that does or would in any way interfere or conflict with, or that
does or would present a conflict of interest concerning, the performance to be
rendered by Licensor hereunder or the rights and licenses granted to Licensee
hereunder.
b. OWNERSHIP AND AUTHORITY. Licensor represents and warrants that
(1) it is the owner of the Licensed Work, free from all Third-Party Works; (2)
Licensor has full and sufficient right to grant the rights and/or licenses
granted to Licensee hereunder; (3) the Licensed Work has not been published
under circumstances which have caused a loss of copyright therein; and (4) the
Licensed Work does not infringe any Intellectual Property rights of any third
party, nor has any claim (whether or not embodied in an action, past or present)
of such infringement been threatened or asserted, and no such claim is pending,
against Licensor or (insofar as Licensor is aware) against any entity from which
Licensor has obtained such rights.
c. CONFORMITY OF LICENSED WORK. Licensor represents and warrants
that the Licensed Work (1) has been prepared by Licensor (or its assignors or
predecessors-in-interest) with professional diligence and skill, (2) will
function on the machines and with operating systems for which it is designed,
and (3) will conform to the specifications and requirements set forth.
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d. NO EXTRINSIC ASSURANCES. Licensor represents and warrants that,
in entering into this Agreement, it does not and will not rely on any promises,
inducements, or representations made by Licensee with respect to the subject
matter of this Agreement, nor on the expectation of any other business dealings
with Licensee, now or in the future, except as specifically provided herein.
e. FREE FROM DEFECTS. Licensor warrants that the Licensed work is
free from all errors or defects and will function in accordance with the
expectations of Licensee. Licensor shall repair any errors or defects free of
charge, including both labor and materials, reported to it by Licensee for a
period of one (1) year from the date of the last payment of common stock under
Section 3 hereof. Any errors or defects Licensor is requested to repair after
One (1) year from the above referenced date, will be done on a time and
materials basis at Licensor's usual and customary rates or by separate contract.
8. TERM AND TERMINATION.
a. TERM OF AGREEMENT. This Agreement shall become effective
commencing on the date first set forth above. Unless terminated hereunder, this
Agreement shall remain in force through the expiration of all copyrights and
other Intellectual Property rights in the Licensed Work.
b. TERMINATION. Licensor shall have the right to terminate this
Agreement, including the rights and licenses granted under Section 2 hereof, if
and only if one of the following occurs:
(i) An involuntary proceeding shall be commenced or an
involuntary petition shall be filed in a court of competent jurisdiction seeking
(x) relief in respect of Licensee or any Subsidiary of Licensee, or of a
substantial part of the property or assets of Licensee or any Subsidiary of
Licensee under Title 11 of the United States Bankruptcy Code, as now constituted
or hereafter amended, or any other federal or state bankruptcy, insolvency,
receivership, or similar law; (y) the appointment of a receiver, trustee,
custodian, sequestrator, conservator, or similar official for Licensee or any
Subsidiary of Licensee or any substantial part of the property or assets of
Licensee or a Subsidiary of Licensee; or (z) the winding-up or liquidation of
Licensee or any Subsidiary of Licensee; and such proceeding or petition shall
continue undismissed for ninety (90) days or an order or decree approving or
ordering any of the foregoing shall be entered; or
(ii) Licensee or any Subsidiary of Licensee shall (u) voluntarily
commence any proceeding or file any petition seeking relief under Title 11 of
the United States Code, as now constituted or hereafter amended, or any other
federal or state bankruptcy, insolvency, receivership, or similar law; (v)
consent to the institution of, or fail to contest in a timely and appropriate
manner, any proceeding or the filing of any petition described in subsection
8.b.i. above; (w) apply for or consent to the appointment of a receiver,
trustee, custodian, sequestrator, conservator, or similar official for Licensee
or any Subsidiary of Licensee or for a substantial part of the property or
assets of
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Licensee or any Subsidiary of Licensee; (x) file an answer admitting the
material allegations of a petition filed against it in any such proceeding; (y)
make a general assignment for the benefit of creditors; or (z) become unable or
admit in writing its inability, to pay its debts as they become due.
Provided that such conditions have been satisfied, Licensor may effect such
termination by sending Licensee notice to that effect. Promptly following
receipt of such notice, Licensee (and any Custodian then in possession of any
portion of the Licensed Work) shall return or destroy any copies of the Licensed
Work then in its possession. Any other termination shall be wrongful and beyond
the scope of this Agreement, and shall in no way terminate or xxxxx the rights
and licenses granted under Section 2 hereof, which shall remain in full force
and effect.
c. SURVIVAL. The termination of this Agreement shall not terminate
or xxxxx the continued applicability of Sections 7, 8 and 9 hereof, which shall
remain in full force and effect with respect to the subject matter of this
Agreement.
d. RESERVATION OF RIGHTS. In the event of termination of this
Agreement, Licensee, its Subsidiaries, and customers shall, in addition, have
all rights which it or they would have had if Licensee had never entered into
this Agreement and which the public has at the time of termination.
e. RESIDUALS. It is mutually acknowledged that, during the normal
course of its dealings with Licensor and the Licensed Work under this Agreement,
Licensee or its agents may become acquainted with ideas, concepts, know-how,
methods, techniques, processes, skills, concepts, and adaptations pertaining to
the Licensed Work, including those which Licensor considers to be proprietary or
secret. Notwithstanding anything in this Agreement to the contrary, and
regardless of any termination of this Agreement under this Section 8, Licensee
shall be entitled to use, disclose, and otherwise employ any ideas, concepts,
know-how, methods, techniques, processes, and skills, concepts, and adaptations,
including generalized features of the sequence, structure, and organization of
any works of authorship, in conducting its business, and Licensor shall not
assert against Licensee or its personnel any prohibition or restraint from so
doing; provided, however, that prior to termination of this Agreement under this
Section 8, the foregoing provision shall apply only to information known to and
remembered by such party or its personnel without the use of or reliance on any
materials or other tangible objects containing the information of Licensor.
9. LIMITATIONS OF LIABILITIES.
a. EXCLUSION OF INDIRECT DAMAGES, ETC. Neither party shall be
entitled to indirect, incidental, or consequential damages, including lost
profits based on any breach or default of this Agreement by the other party.
This limitation shall not apply to any liabilities of Licensor to Licensee under
Sections 2 and 7 hereof.
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b. MAXIMUM LIABILITY. In no event shall Licensee be liable to
Licensor, its successors and assigns, for damages exceeding the payment
amounts specified in Section 3 hereof.
10. GENERAL.
a. NOTICE OR PAYMENTS. Any notice or payment required or permitted
to be made or given by either party hereto pursuant to this Agreement will be
sufficiently made or given on the date of issuance if sent by such party to the
other party by mail, telecopy, commercial courier, personal delivery, or a
similar reliable delivery method, addressed as set forth below or to such other
address as a party shall designate by written notice given to the other party.
In the case of Licensee: Apollo International of Delaware, Inc.
Attention: Xxxxx Xxxxxx
0000 Xxxxx X.X. Xxxxxxx 00
Xxxxx 000
Xxxxxx Xxxxx, Xxxxxxx 00000
In the case of Licensor: WHR Partners
Attention: Xxxx Xxxxxx
X.X. Xxx 000
Xxxx Xxxxxxxxx X.X. 00000
b. INDEPENDENT CONTRACTOR. Licensor is and shall remain an
independent contractor with respect to all performance rendered pursuant to this
Agreement. Neither Licensor nor any of its employees shall be considered an
employee or agent of Licensee for any purpose.
c. COMPLIANCE WITH LAWS AND REGULATIONS. Licensor shall, at its own
expense, comply with any governmental law, statute, ordinance, administrative
order, rule, or regulation relating to its duties under this Agreement and shall
procure all licenses and pay all fees and other charges required thereby.
d. TAXES. Licensor shall have sole responsibility for the payment
of all taxes and duties imposed by all governmental entities, as they pertain to
its duties, obligations, and performance under this Agreement.
e. TRADEMARKS. Licensee may, at its option, identify the Licensed
Works prepared by Licensor as having been developed by Licensor.
f. TIME OF THE ESSENCE. Unless otherwise specified in this
Agreement, time shall be of the essence with respect to the duties, obligations,
and performance of Licensor under this Agreement.
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g. ASSIGNMENT. Whenever in this Agreement any of the parties hereto
is referred to, such reference shall be deemed to include the successors and
assigns of such party; and all covenants, promises, and agreements by or on
behalf of Licensor or Licensee that are contained in this Agreement shall bind
and inure to the benefit of their respective successors and assigns. Because it
is the intent of the parties that the rights, duties, and obligations of
Licensor under this Agreement shall be recognized to consist in large part of
personal services of a unique, specialized, and individual nature, Licensor
shall not assign or delegate this Agreement or any of its rights, duties, or
obligations to any person or entity without Licensee's prior written approval.
h. GOVERNING LAW. This Agreement shall be construed in accordance
with and governed by the internal, substantive laws of the State of Florida,
without giving effect to the conflicts of law principals thereof.
i. AMENDMENT AND WAIVER. No amendment or modification of this
Agreement shall be effective unless set forth in a writing executed by
authorized representatives of both parties. No waiver of any provision of this
Agreement shall be effective unless it is set forth in a writing which refers to
the provisions so waived and the instrument in which such provision is contained
and is executed by an authorized representative of the party waiving its rights.
No failure or delay by either party in exercising any right, power, or remedy
will operate as a waiver of any such right, power, or remedy.
j. FREEDOM OF ACTION. This Agreement shall not be construed to
limit Licensee's right to obtain services or software programs from other
sources, to prohibit or restrict Licensee from independently developing or
acquiring competitive materials, or to restrict Licensee from making, having
made, using, leasing, licensing, selling, or otherwise disposing of any products
or services whatsoever, nor is either party's right to deal with any other
licensors, suppliers, contractors, or customers limited hereby.
k. ENTIRE AGREEMENT. This Agreement and its Attachments, by their
terms, constitute and express the entire agreement and understanding of the
Licensee and Licensor and supersede all prior agreements, oral or written, and
all other communications relating to the subject matter hereof.
l. INVALIDITY OF PROVISIONS. If any provisions of this Agreement
shall be determined by a court of competent jurisdiction to be invalid, illegal
or unenforceable in any respect, the validity, legality and enforceability of
the remaining provisions contained herein shall not be affected thereby.
m. HEADINGS. The headings in this Agreement are for purposes of
reference only and shall not be deemed to alter or affect the meaning or
interpretation of any of the provisions of this Agreement.
n. COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be deemed to be an original but all of which
together shall constitute one and the same instrument.
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IN WITNESS WHEREOF, the parties hereof have caused this Agreement to be
executed by their respective authorized representatives.
XXXXXXX X. XXXXXX d/b/a WHR
PARTNERS
By: /s/ Xxxxxxx X. Xxxxxx
---------------------------------
Xxxxxxx X. Xxxxxx
APOLLO INTERNATIONAL OF DELAWARE, INC.
BY: /s/ Xxxxx X. Xxxxxx
----------------------------------
Xxxxx X. Xxxxxx, President
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