Exhibit 10.99.4
LICENSE AGREEMENT
THIS LICENSE AGREEMENT ("License") is entered into this 6th day of March,
1997, by and between Youth Services International, Inc. ("YSI"), a Maryland
corporation with principal place of business at ▇ ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇,
▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, and International Youth Institute, Inc. ("IYI"), a
Maryland corporation with principal place of business at ▇▇▇ ▇. ▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇. Both YSI and IYI are sometimes referred
to herein as "the Parties".
WHEREAS, IYI owns certain notes, outlines, books, compositions, writings,
inventions, processes, computer programs, ideas, know-how, formulae, trade
secrets, patents, trademarks, trade names, brand names, copyrights, intangibles
or tangibles directly related or incidental to the training of youth workers and
transferred to IYI by YSI, a non-exhaustive list of which is set forth on
Exhibit A hereto, ("Intellectual Property") which are commercially valuable and
used in IYI's educational activities and in a variety of products and services
("IYI Products and Services"); and
WHEREAS, the Intellectual Property covered by this License was purchased by
IYI from YSI pursuant to that certain Agreement For the Transfer and Assignment
of Intellectual Property Rights ("Assignment") of even date, appended hereto and
incorporated herein by reference; and
WHEREAS, IYI desires to grant YSI a license to use the Intellectual
Property; and
WHEREAS, YSI desires to license from IYI, the exclusive use (with the
exception of use by IYI) of the Intellectual Property; and
WHEREAS, the grant of this License to use the Intellectual Property
constitutes an integral part of the consideration to YSI for the sale of the
Intellectual Property in the Assignment to IYI, YSI would not have sold the
Intellectual Property to IYI without the execution of this License Agreement.
NOW, THEREFORE, in consideration of their mutual promises, the Parties
agree as follows:
1. Grant of License.
▇. ▇▇▇▇▇ of License. Subject to the provisions of this License, IYI
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grants to YSI a perpetual, irrevocable, fully paid-up and royalty-free license
and right to use the Intellectual Property (subject to the provisions of Section
4 of the Assignment) anywhere in the world, subject to the provisions of Section
3C hereof.
Nothing in this License shall be construed as granting rights to use any
intellectual property other than the Intellectual Property, and any enhancements
covered in Section 1E. Except as set forth in the following sentence, the
License is, and shall at all times continue to be, exclusive in nature, and IYI
hereby agrees that it shall not grant to any person, party or entity any right,
license or privilege with respect to the Intellectual Property. Nothing
contained in this Agreement shall be construed, however, to limit, prohibit,
restrict or preclude the use of the Intellectual Property or the IYI Products or
Services by IYI or any of its subsidiaries for any purpose permitted by the
terms of the Assignment.
B. As a significant and material characteristic of the License contracted
for by YSI in this Agreement, the provisions of Section 4 of the Assignment are
specifically incorporated herein by reference and constitute the obligations of
IYI herein as if fully set forth in this Agreement.
C. Independent Contractors. YSI's relationship with IYI, and IYI's
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relationship with YSI, during the term of this License will be that of
independent contractors. Neither Party will have, and will not represent that
it has, any authority to bind the other Party, to assume or create any
obligation, express or implied, to enter into any agreement or licenses on
behalf of the other Party or to make any warranties or representations on behalf
of the other Party or in the other Party's name.
D. IYI's Reserved Rights. Except for those uses as expressly and
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specifically permitted by this License and the Assignment Agreement, all rights
are reserved to IYI. IYI does not sell any IYI Products or Intellectual
Property to YSI by this License.
E. Discoveries. Improvements and Derivative Works. In the event that IYI
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or YSI (the "Developing Party") develops, discovers, or creates any
improvements, enhancements, revisions, derivatives or alternative uses of the
Intellectual Property, which may be applicable to the other Party, the
Developing Party agrees to make available all such developments, discoveries,
improvements, enhancements, revisions, derivatives or alternative uses (and all
information directly related thereto and necessary for the use thereof) to the
other Party without additional consideration.
F. Permission to Sublicense. YSI shall not have the right to sublicense
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the Intellectual Property without the prior written consent of IYI, which shall
not be unreasonably withheld provided, however, that nothing contained herein
shall prevent or prohibit YSI from sublicensing to, or permitting use of the
Intellectual Property by, any subsidiary, affiliate or joint venture or other
partner of YSI. YSI represents and warrants that in the event permission to
sublicense is granted, that sublicense will contain provisions at least as
favorable as this License with respect to the protection of the Intellectual
Property.
G. IYI WARRANTY. ALL Intellectual property IS LICENSED TO YSI "AS IS."
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IYI DISCLAIMS ALL WARRANTIES, INCLUDING BUT NOT LIMITED TO THE WARRANTY OF
FITNESS FOR A PARTICULAR PURPOSE OR THE WARRANTY OF MERCHANTABILITY.
2. Covenants.
A. Notification. Each of YSI and IYI shall notify the other party in
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writing of the existence of any claim or proceeding by or against such party
involving the Intellectual Property or the IYI Products within 10 days of the
filing or commencement of such claim or proceeding, or within 10 days of such
party's learning of such claim or proceeding, whichever is later.
B. Permitted Use. IYI agrees that, during the existence of the License,
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it shall not assert any claim for infringement of the Intellectual Property
against YSI, for any use of the Intellectual Property that is consistent with
the terms of the License.
C. Further Assurances. IYI agrees to execute, make, acknowledge, file and
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deliver such further instruments, agreements, certificates and other documents
as may be reasonably requested by YSI in order to more fully evidence the
License granted herein, to record this License or notices of the License granted
herein with any governmental agency or instrumentality or otherwise to
effectuate the full purpose of this License.
D. Infringement. In the event that either party becomes aware of any use
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of any name, symbol, design, logo, information or other device which it
considers to be an infringement of the intellectual property rights in the
Intellectual Property or any derivative product thereof or to constitute unfair
competition with respect to the Intellectual Property or such derivative
product(s), such party shall promptly notify the other party of the same. IYI
shall have a period of 30 days from and after its giving or receiving of such
notice to advise YSI of its proposed actions in connection with such
infringement or unfair competition. If IYI elects not to institute any legal
proceedings or not to take any action with respect thereto, YSI shall have the
right to institute any legal proceedings or tee any other actions in its own
name, at its sole cost and expense, to remedy any such infringement or unfair
competition. IYI and YSI shall cooperate with each other, at their respective
cost and expense, in connection with any action or other legal proceeding
instituted with respect to the Intellectual Property or the derivative products
thereof. Any recovery resulting from the initiation of any legal proceedings or
other actions shall be equitably apportioned between IYI and YSI unless YSI
shall have funded the full cost and expenses thereof, or unless IYI shall have
filed a petition under Title 11 of the United States Code, as amended, in which
cases, YSI shall be entitled to receive and retain, without participation by
IYI, the full amount of any such recovery. IYI
and YSI shall cooperate with each other in defending any claim of infringement,
unfair competition or the like asserted by a third party against IYI or YSI
which relates to wide use of the Intellectual Property or any derivative
products thereof.
3. Proprietary Information.
A. Obligation. Each of IYI and YSI acknowledge that in the course of
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using the Intellectual Property and performing various obligations under this
License, it may obtain information relating to the other Party which is of a
confidential and proprietary nature to such other party ("Proprietary
Information"). Such Proprietary Information includes without limitation trade
secrets, know-how, formulas, compositions of matter, inventions, techniques,
processes, programs, diagrams, customer and financial information aid safes and
marketing plans, such as customer or prospect lists. Each of IYI and YSI will
(a) use such Proprietary Information only as reasonably necessary in connection
with the use of the Intellectual Property, (b)hold such Proprietary Information
in strict confidence and exercise due care with respect to its handling and
protection of such Proprietary Information, providing at least as much
protection as such party would use in protecting its own proprietary and/or
trade secret information, and (c) disclose, divulge or publish the same only to
such of its employees who have a business need to know in order for IYI or YSI,
as the case may be, to make proper use of the Intellectual Property. Each of
IYI and YSI further agrees to ensure that any such employee keeps all
Proprietary Information of the other party in confidence and does not use or
disclose such Proprietary Information except as permitted, and further to return
all copies of all Proprietary Information of the other party in its possession,
control or custody immediately upon termination or expiration of this License.
B. Exceptions. The obligations contained in Section 3(A) will not apply
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to Proprietary Information which (a) is or becomes public knowledge without the
fault or action of the other party, (b)is received by the other party from a
source other than the originating parry, which source received the information
without violation of any confidentiality restriction, (c) is independently
developed by the other party without violation of any confidentiality
restriction or (d) is or becomes available on an unrestricted basis from the
originating party whose Proprietary Information is at issue.
C. The parties acknowledge the provisions of Section 10 of the Assignment
(Covenant Not to Compete) and specifically incorporate such provisions by herein
by reference.
4. Indemnification.
A. Indemnification by IYI. IYI shall defend, indemnify and hold harmless
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YSI and its subsidiaries, and the officers, directors, employees, agents,
successor
and assigns of YSI or any of its subsidiaries, from and against all claims,
damages, judgments, fines, penalties, costs or expenses incurred or sustained by
YSI or any of its subsidiaries, or the officers, directors, employees, agents,
successors or assigns of YSI or any of its subsidiaries, (i) by reason of any
direct or indirect breach by IYI of any of the representations, warranties,
covenants or agreements of IYI contained in this License or (ii) in connection
with the Intellectual Property or any derivative product thereof, as a result of
the negligent or intentional misconduct of IYI or its officers, directors,
employees or agents.
B. Indemnification by YSI. YSI shall defend, indemnify and hold harmless
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IYI and its subsidiaries and its officers, directors, employees, agents,
successor and assigns from and against all claims, damages, judgments, fines,
penalties, costs or expenses incurred or sustained by IYI, or its officers,
directors, employees, agents, successors or assigns, (i) by reason of any direct
or indirect breach by YSI of any of the representations, warranties, covenants
or agreements of YSI contained in this License or (ii) in connection with the
IYI Intellectual Property or any derivative product thereof, as a result of the
negligent or intentional misconduct of YSI or its officers, directors, employees
or agents.
5. Proprietary Rights.
Use During License. During the term of this License, YSI is authorized by
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IYI to use the intellectual property used by IYI for IYI Products and Services
in connection with YSI's advertisement and promotion of IYI Products and
Services. YSI's use of such intellectual property will be in accordance with
IYI's policies in effect from time to time, including but not limited to
trademark usage and cooperative advertising policies.
6. Term and Termination of License.
A. Term. This License is for a perpetual term and shall continue in full
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force and effect from and after the date hereof unless and until terminated in
accordance with this Section 6, and nothing contained in this License will be
interpreted as requiring either party to renew this License. Notwithstanding
the provisions of this Section, or any other provisions of this License, this
License may be terminated at any time as set forth below.
B. Automatic Termination. (i) This License shall terminate automatically,
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with no further act or action of either party, and all right, title and interest
in the Intellectual Property shall be transferred, conveyed and assigned to YSI,
immediately upon the reversion back to YSI of the Intellectual Property in
accordance with Section 4 of the Assignment.
7. Limitation of Liability.
IN NO EVENT WILL EITHER YSI OR IYI BE LIABLE FOR ANY ANTICIPATORY PROFITS
OR PUNITIVE DAMAGES OF ANY KIND, FROM ALL CAUSES OF ACTION OF ANY KIND,
INCLUDING TORT (INCLUDING NEGLIGENCE), CONTRACT AND BREACH OF WARRANTY, EVEN IF
YSI OR IYI HAS BEEN INFORMED IN ADVANCE OF THE POSSIBILITY OF SUCH DAMAGES.
8. Remedies.
Each of IYI and YSI hereby acknowledges and agrees that (i) a remedy at law
may not adequately protect the rights of IYI or YSI in the event of any breach
or threatened breach of the provisions of this Agreement by the other party or
any of its officers, employees, representatives, agents or affiliates, and (b)
any such breach or threatened breach of such provisions will result in
irreparable harm to the non-breaching party. Therefore, without prejudice to
any other remedies at law or in equity to which they may be entitled, each of
IYI and YSI hereby agrees that the non-breaching party shall be entitled to seek
injunctive relief in any court of competent jurisdiction in the event of any
actual or threatened breach of any of the provisions of this Agreement in order
to prevent or terminate the continuance of any such breach or threatened breach
of such provisions, together with reimbursement of legal and other expenses and
fees incurred by the non-breaching party in enforcing such provisions or seeking
such relief.
9. Bankruptcy Provisions.
A. The parties hereto acknowledge and agree that the Intellectual Property
is "intellectual property" as that term is defined by Title 11 of the United
States Code, as amended ("Title 11").
B. IYI agrees that in the event a petition is filed by or against it under
Title 11 Chapter 7, IYI will consent to YSI's obtaining relief under 11 U.S.C.
(S)107.
C. IYI agrees that, in the event that a petition is filed by or against
IYI under Title 11 Chapter 11, or IYI becomes the subject of receivership
proceedings, IYI or any subsequently appointed trustee or receiver shall, at the
sole option of and on written request by YSI, continue to perform under this
Agreement. Further, IYI and any trustee or receiver shall not interfere with
the rights of YSI as provided in this Agreement, including but not limited to
any covenant not to compete, or confidentiality provisions, which rights shall
continue in YSI.
10. General.
The General Terms of this License shall be the terms set forth in paragraph
13 of the Agreement for the Transfer and Assignment, which is appended hereto
and incorporated by reference herein.
IN WITNESS WHEREOF, the parties hereto have executed this License Agreement
as of the date first written above.
Youth Services International, Inc. International Youth Institute, Inc.
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇ By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇
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Title: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇,
Chief Executive Officer Title: Chairman & Chief Executive Officer
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EXHIBIT A
The following is a representative, nonexhaustive list of Intellectual Property
being purchased, assigned and licensed back:
. Curriculum as received from YSI
. The 3 I's
. YSI Formula for Success
. World of Work
. Transfer of Experienced Trainers
. Youth Development Professionals Career Path
. Comprehensive YSI Program
