Software License and Strategic Alliance Agreement
between
Intelli-Check, Inc.
and
SiVault Systems, Inc
Effective as of EXECUTION
Relating to ID-Check Verification Software
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SOFTWARE LICENSE AGREEMENT
TABLE OF CONTENTS
ARTICLE I - RIGHT TO USE LICENSED SOFTWARE
1.01 Grant of Right
1.02 Furnishing of LICENSED SOFTWARE
1.03 Ownership
1.04 Non-Transmission
1.05 U.S. Export Control
ARTICLE II - FEES
2.01 Initial and Additional Fees
2.02 Payments
2.03 Taxes
ARTICLE III - TERMINATION
3.01 Termination
3.02 Survival
ARTICLE IV - MISCELLANEOUS PROVISIONS
4.01 Agreement Prevails
4.02 Disclaimer
4.03 Nothing Construed
4.04 Confidentiality
4.05 Publicity
4.06 Nonassignability
4.07 Addresses
4.08 Integration
4.09 Choice of Law
DEFINITIONS APPENDIX
APPENDIX A
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SOFTWARE LICENSE AGREEMENT
Effective as of EXECUTION*, Intelli-Check Inc., a Delaware corporation,
("Intelli-Check"), having an office at 000 Xxxxxxxxx Xxxx Xxxx, Xxxxxxxx, Xxx
Xxxx 00000 and SiVault Systems, Inc, a Nevada corporation, ("Licensee") having
an office at 000 Xxxxx Xxxxxx, Xxx Xxxx, X.X. 00000, agree as follows:
ARTICLE I
RIGHT TO USE LICENSED SOFTWARE
1.01 Grant of Right
(a) Intelli-Check grants to Licensee a personal, nontransferable and
nonexclusive right to use the LICENSED SOFTWARE in the SYSTEM. As an attribute
of this right, Licensee may furnish the SYSTEM, either directly or through its
distributors ("customers") in the United States and Canada, solely for use in
connection with its sale of its signature verification technology. No right is
granted to make any changes to the LICENSED SOFTWARE. However, Licensee may
make changes to other software and/or hardware in the SYSTEM.
(b) Licensee's rights as set forth in Section 1.01(a) are contingent
upon Licensee obtaining an agreement in writing from each customer, before or at
the time of furnishing each copy of the LICENSED SOFTWARE, that:
(1) only a personal, nontransferable and nonexclusive right to use the
copy of the LICENSED SOFTWARE in the furnished SYSTEM is granted to such
customer;
(2) no ownership interest in the LICENSED SOFTWARE is transferred to
such customer;
(3) such customer will not copy the LICENSED SOFTWARE, except as
necessary to use the same in the furnished SYSTEM, and for backup and
archive purposes in connection with such use, and each such copy shall
contain any copyright notice or notices;
(4) if a customer's right-to-use is terminated for any reason, such
customer will either destroy or return all copies of LICENSED SOFTWARE in
its possession;
(5) such customer will not transfer LICENSED SOFTWARE to any other
party except, as authorized in writing by LICENSEE;
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(6) such customer will not export or re-export LICENSED SOFTWARE;
(7) such customer will not reverse compile or disassemble the LICENSED
SOFTWARE; and
(8) Intelli-Check does not warrant the LICENSED SOFTWARE, does not
assume any liability regarding the LICENSED SOFTWARE and does not undertake
to furnish any support or information regarding the LICENSED SOFTWARE
unless provided for within this agreement.
(c) Licensee shall use its best efforts to enforce the agreements with
its customers as specified in this Agreement.
(d) No right is granted for the use of the LICENSED SOFTWARE, other
than as set forth herein.
(e) Licensee may make those copies of the LICENSED SOFTWARE necessary
for the use by Licensee for which rights are granted hereunder, provided that
each such copy contains any copyright or proprietary notice appearing on or in
the LICENSED SOFTWARE being copied.
(f) Licensee agrees that it will not use or copy the LICENSED SOFTWARE
except as authorized herein.
1.02 Furnishing of LICENSED SOFTWARE
Intelli-Check shall furnish the LICENSED SOFTWARE to Licensee within a
reasonable time (generally within 10 days after receipt of a bonafide purchase
order).
1.03 Ownership
No ownership interest in LICENSED SOFTWARE is being transferred to Licensee
under this Agreement.
1.04 Non-Transmission
LICENSEE agrees that it will not, without the prior written consent of
Intelli-Check, transmit, directly or indirectly, LICENSED SOFTWARE to any
country outside of the United States and Canada.
1.05 U.S. Export Control
Licensee hereby assures Intelli-Check that it will not directly or indirectly
use, distribute, transfer or transmit all or any portion of the LICENSED
SOFTWARE, whether alone or in combination with other products or equipment
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(including other software), except in compliance with U.S. export laws and
regulations (the "Export Laws"). The obligations stated above in this clause
will survive the expiration, cancellation or termination of this Agreement or
any other related agreement.
ARTICLE II
FEES
2.01 Fees
(a) Licensee shall pay to Intelli-Check a fee of $475 for each
SYSTEM that uses the LICENSED SOFTWARE. In addition, License will pay for any
hardware or other products and services offered by Intelli-Check as described in
appendix A.
(b) Should Licensee desire any updates and modifications to the
LICENSED SOFTWARE (to the extent that Intelli-Check makes the same commercially
available, or to the extent that same are required to correct bugs or defects
brought to Intelli-Check's notice by Licensee), then Licensee shall pay an
annual fee per Exhibit attached for each SYSTEM that uses the LICENSED
SOFTWARE. This election shall be at the option of the LICENSEE. If elected,
the annual fee of $150.00/SYSTEM shall be paid on an annual basis for all
SYSTEMS furnished by the LICENSEE after EXECUTION. LICENSEE may not elect to
receive updates and modifications on some but not all SYSTEMS. In addition, if
Licensee elects not to receive updates and modifications to the LICENSED
SOFTWARE, then LICENSEE shall have a right to receive such updates and
modifications at a later time upon notification in writing to Intelli-Check and
payment of unpaid annual fees retroactive to the date the original Warranty
Period expired. The first annual fee on a SYSTEM shall be paid along with the
fees specified for this SYSTEM in Section 2.01(a). Subsequent annual fees on a
SYSTEM shall be paid on each anniversary date of the first annual fee payment
for that SYSTEM. There shall be no credit on any annual fee once paid.
(c) Should licensee require the Intelli-Check Data Capture Module (DCM)
for use with the Licensed Software for parsing the encoding on Driver Licenses,
State and Provincial ID Cards and Military IDs, they will be provided at a price
of $505, which does not include any power supply or cable.
(d) Any support or software modification requested, other than as
set forth above, will be handled on a consulting basis at a fee of $125 per hour
plus out of pocket expenses and other mutually acceptable terms and conditions
to be agreed upon by Intelli-Check and Licensee prior to the commencement of any
such support or modification.
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(e) Licensee shall keep full, clear and accurate records with
respect to each SYSTEM furnished with the LICENSED SOFTWARE and shall furnish
any information which Intelli-Check may reasonably prescribe from time to time
to enable Intelli-Check to ascertain that it has been properly compensated under
this Agreement. Licensee shall retain such records for at least five (5) years
from the sale, lease, furnishing or putting into use of any SYSTEM.
Intelli-Check shall have the right through its accredited auditors to make
examinations, during normal business hours, of all records and accounts bearing
upon the amounts of fees payable to it under this Agreement. Prompt adjustment
shall be made by the proper party to compensate for any errors or omissions
disclosed by any such examination. The cost of any examination shall be paid
for by Intelli-Check, unless the examination reveals an underpayment by Licensee
to Intelli-Check of ten percent (10%) or more.
(f) Independent of any such examination, Intelli-Check will credit
to Licensee the amount of any overpayment made in error which is identified and
fully explained in a written notice to Intelli-Check delivered within twelve
(12) months after the due date of the payment which included such alleged
overpayment, provided that Intelli-Check is able to verify, to its own
satisfaction, the existence and extent of the overpayment.
(g) No refund, credit or other adjustment of fee payments shall be
made by Intelli-Check except as provided in this Section 2.01. Rights conferred
by this Section 2.01 shall not be affected by any statement appearing on any
check or other document, except to the extent that any such right is expressly
waived or surrendered by a party having such right and signing such statement.
(h) Within fifteen (15) days after the end of each monthly period,
Licensee shall furnish to Intelli-Check a statement, certified by a responsible
official of Licensee, showing all SYSTEMS using the LICENSED SOFTWARE which were
furnished or put into use during such period, its serial number, and an
identification of the associated customers, including the full name, address and
telephone number. If no SYSTEM which uses the LICENSED SOFTWARE was furnished,
that fact shall be shown on the statement.
(i) Past due payments hereunder shall be subject to a late payment
charge calculated at an annual rate of three percentage points (3%) over the
prime rate (as posted in New York City) during delinquency. If the amount of
such charge exceeds the maximum permitted by law, such charge shall be reduced
to such maximum. Additionally, if Licensee overpays Intelli-Check for any fees
due under this agreement, and notice of such overpayment is given to
Intelli-Check, such overpayment shall be immediately refunded by Intelli-Check
to Licensee plus interest which shall accrue on such overpayment at the same
rate stated above for the period from the date of the overpayment until the date
of such refund thereof.
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2.02 Payments
Payments to Intelli-Check shall be made in United States dollars to the address
specified in Section 4.07. All payments are due within thirty (30) days from
date of delivery of LICENSED SOFTWARE. Any conversion to United States dollars
shall be at the prevailing rate for bank cable transfers on New York City as
quoted for the last day of such semiannual period by leading United States banks
in New York City dealing in the foreign exchange market.
2.03 Taxes
(a) Licensee shall bear all taxes, duties, levies and similar charges
(and any related interest and penalties), however designated, imposed as a
result of the existence or operation of this Agreement, except (i) any tax
imposed upon Intelli-Check in a jurisdiction other than the United States if
such tax is allowable as a credit against the United States income taxes of
Intelli-Check; and (ii) any income tax imposed upon Intelli-Check by the United
States or any governmental entity within the United States (the fifty (50)
states and the District of Columbia). In order for the exception contained in
(i) to apply, Licensee must furnish Intelli-Check with evidence issued by the
taxing authority in such jurisdiction that such tax has been paid. The evidence
must be furnished within thirty (30) days of issuance by the taxing authority
and must be sufficient to satisfy United States taxing authorities that such tax
has been paid.
(b) If Licensee is required to bear a tax, duty, levy or similar charge
pursuant to (a) above, Licensee shall pay such tax, duty, levy or similar charge
and any additional amounts as are necessary to ensure that the net amounts
received by Intelli-Check hereunder after all such payments or withholdings
equal the amounts to which Intelli-Check is otherwise entitled under this
Agreement as if such tax, duty, levy or similar charge did not apply.
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ARTICLE III
TERMINATION
3.01 Termination
(a) If Licensee fails to fulfill one or more of its obligations under
this agreement, Intelli-Check may, upon its election and in addition to any
other remedies that it may have, at any time terminate all the rights granted by
it hereunder by not less than two (2) months' written notice to Licensee
specifying any such breach, unless within the period of such notice all breaches
specified therein shall have been remedied. Upon such termination Licensee
shall destroy all copies of LICENSED SOFTWARE in its possession and certify such
destruction in writing to Intelli-Check within thirty (30) days. In the event of
termination, Intelli-Check shall have no obligation to refund any amounts paid
it pursuant to Section 2.01.
(b) In the event of any breach of this agreement by Intelli-Check or
any of its SUBSIDIARIES, or of any loss or injury to LICENSEE arising out of
this agreement, for which Intelli-Check or its SUBSIDIARIES is liable to
Licensee (excluding breaches, losses and injuries arising out of infringement of
any patent, copyright or trade secret), Intelli-Check's and its SUBSIDIARIES'
total cumulative liability to Licensee for all such breaches, losses and
injuries shall be the lesser of (i) the actual value of the injury or loss to
Licensee or (ii) the total fees paid to Intelli-Check.
(c) Licensee may voluntarily terminate its licenses and rights under
this Agreement at any time, by providing Intelli-Check with sixty (60) days
written notice of such termination. In the event of a termination under this
paragraph (c), all rights to use or furnish the LICENSED SOFTWARE shall cease,
except for SYSTEMS with the LICENSED SOFTWARE which are in Licensee's inventory
as of the date of termination. The fees specified in Section 2.01 shall be due
on this inventory as of the end of the semi annual period immediately following
the date of termination
3.02 Survival
The obligations of Licensee under Sections 1.04, 1.05 and 4.04 shall survive and
continue after any termination of rights under this agreement.
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ARTICLE IV
MISCELLANEOUS PROVISIONS
4.01 Agreement Prevails
This agreement shall prevail notwithstanding any conflicting terms or legends,
which may appear on or in LICENSED SOFTWARE.
4.02 Disclaimer and Limitation of Warranties
(a) Intelli-Check and its affiliates make no representations or
warranties, other than as expressly set forth in this agreement (including its
Appendices). By way of example but not of limitation, Intelli-Check and its
affiliates make no representations or warranties of merchantability or fitness
for any particular purpose.
(b) If a third party claims that the LICENSED SOFTWARE directly
infringes any U.S. patent, copyright, or trade secret, Intelli-Check will (as
long as Licensee is not in default under this agreement or any other agreement
with Intelli-Check) defend Licensee against such claim at Intelli-Check's
expense and pay all damages that a court finally awards, provided that Licensee
promptly notifies Intelli-Check in writing of the claim, and allows
Intelli-Check to control, and cooperates with Intelli-Check in, the defense or
any related settlement negotiations. If such a claim is made or appears
possible, Intelli-Check shall, at its option, promptly either (i) secure for
Licensee the right to continue to use the LICENSED SOFTWARE, or (ii) modify or
replace the LICENSED SOFTWARE so that it is non-infringing but equivalent in
performance, functions and interface to the original LICENSED SOFTWARE;
provided, however, that if Intelli-Check and Licensee agree that neither of the
foregoing two options is reasonably available, then Intelli-Check shall refund
to Licensee all amounts previously paid by Licensee under this agreement, and,
upon receipt of such refund, Licensee shall return the LICENSED SOFTWARE to
Intelli-Check. However, Intelli-Check has no obligation for any claim based on
a version of the LICENSED SOFTWARE which is modified by any entity other than
Intelli-Check or based on the combination, operation, or use of the LICENSED
SOFTWARE with any product, data, or apparatus not provided by Intelli-Check.
THIS PARAGRAPH STATES INTELLI-CHECK'S ENTIRE OBLIGATION TO LICENSEE WITH RESPECT
TO ANY CLAIM OF INFRINGEMENT.
(c) The Licensed Software complies to specifications, as contained in
Appendix A, in all material respects. However, Intelli-Check specifically
makes no representation or warranty as to the performance of the Licensed
Software with the System.
4.03 Nothing Construed
Nothing contained herein shall be construed as:
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(i) conferring by implication, estoppel or otherwise, any license or right
to use any name, trade name, trademark, service xxxx, symbol or any other
identification or any abbreviation, contraction or simulation thereof;
(ii) an obligation upon Intelli-Check or any of its affiliates to furnish
any person, including Licensee, any assistance of any kind whatsoever, or
any information or documentation other than the LICENSED SOFTWARE and any
updates and modifications pursuant to Section 2.01 (b) above.
4.04 Confidentiality
(a) Licensee agrees to hold all parts of LICENSED SOFTWARE in
confidence for Intelli-Check. Licensee further agrees not to make any
disclosure of LICENSED SOFTWARE (including methods or concepts utilized therein)
to anyone, except to employees of Licensee to whom such disclosure is necessary
to the use for which rights are granted hereunder.
(b) Licensee shall appropriately notify all employees to whom any such
disclosure is made that such disclosure is made in confidence and shall be kept
in confidence by them.
(c) Licensee agrees not to disassemble or reverse compile the COMPUTER
PROGRAMS in the LICENSED SOFTWARE.
(d) Licensee's obligations under this Section 4.04 shall not apply to
any information relating to LICENSED SOFTWARE (including any method or concept
utilized therein) that:
(i) is or becomes available without restriction to the general public by
acts not attributable to Licensee or its employees,
(ii) was rightfully in Licensee's possession without limitation on
disclosure before disclosure hereunder to Licensee, or
(iii) is rightfully disclosed to Licensee by a third party without
restrictions on disclosure.
4.05 Publicity
Licensee agrees that it will not, without the prior written permission of
Intelli-Check:
(i) use in advertising, publicity, packaging, labeling or otherwise any
trade name, trademark, trade device, service xxxx, symbol or any other
identification or any abbreviation, contraction or simulation thereof owned
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by Intelli-Check or any of its affiliates or used by Intelli-Check or any
of its affiliates to identify any of its or their products or services; or
(ii) represent, directly or indirectly, that any product or service of
Licensee is a product or service of Intelli-Check or any of its affiliates
or is made in accordance with or utilizes any information or documentation
of Intelli-Check or any of its affiliates, except as provided for in this
agreement.
4.06 Nonassignability
The parties hereto have entered into this agreement in contemplation of personal
performance by Licensee and intend that the rights granted to Licensee hereunder
not extend to other entities without Intelli-Check's express written consent.
Accordingly, neither this agreement nor any of Licensee's rights hereunder shall
be assignable or transferable (in insolvency proceedings or otherwise) without
such consent.
4.07 Addresses
(a) (a) Any notice or other communication hereunder shall be
sufficiently given to SiVault Systems, Inc. when sent by certified mail
addressed to the Chief Financial Officer or any other specified company officer
subsequently identified by SiVault Systems at 000 Xxxxx Xxxxxx, Xxx Xxxx, XX
00000, or to Intelli-Check when sent by certified mail addressed to Xx Xxxxxxx,
Intelli-Check, Inc., 000 Xxxxxxxxx Xxxx Xxxx, Xxxxxxxx, Xxx Xxxx 00000. Changes
in the individuals to be notified and such addresses may be specified by written
notice.
(b) Payments by the Licensee shall be made to Intelli-Check at
Intelli-Check, Inc., 000 Xxxxxxxxx Xxxx Xxxx, Xxxxxxxx, Xxx Xxxx 00000, Attn:
Accounting Department. Changes in such address or account may be specified by
written notice.
4.08 Integration
This agreement sets forth the entire agreement and understanding between the
parties as to the subject matter hereof and merges all prior discussions between
them. Neither of the parties shall be bound by any warranties, understandings
or representations with respect to such subject matter other than as expressly
provided herein, in prior written agreements, or in a writing executed with or
subsequent to the execution of this agreement by an authorized representative of
the party to be bound thereby.
4.09 Choice of Law
The parties agree that the law of the State of New York shall apply in any
dispute arising with respect to this agreement.
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IN WITNESS WHEREOF, each of the parties has caused this agreement to be executed
in duplicate originals by its duly authorized representatives on the respective
dates entered below.
Intelli-Check, Inc. SiVault Systems, Inc.
By: /s/ Xxxxx Manelbaum By: /s/ Xxxxxxx Xxxxxxxxxxx
Title: CEO Title: CEO
Date: 8/24/2004 Date: 8/24/2004
THIS AGREEMENT DOES NOT BIND OR OBLIGATE EITHER PARTY
IN ANY MANNER UNLESS DULY EXECUTED BY AUTHORIZED
REPRESENTATIVES OF BOTH PARTIES
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DEFINITIONS APPENDIX
CPU means central processing unit.
COMPUTER PROGRAM means any object-code instruction or plurality of such
instructions for controlling the operation of a CPU.
EXECUTION means the date the last party signs this Agreement.
LICENSED SOFTWARE means all or any portion of the COMPUTER PROGRAM and
supporting files designated by Intelli-Check as of EXECUTION as the "ID-Check
Verification Software." LICENSED SOFTWARE shall be in a DLL format and shall
comply with the specifications as previously provided. LICENSED SOFTWARE
includes updates and modifications to such software, to the extent that they are
made commercially available by Intelli-Check, for so long as the fees specified
in Section 2.01(b) are paid.
SUBSIDIARY of a company means a corporation or other legal entity (i) the
majority of whose shares or other securities entitled to vote for election of
directors (or other managing authority) is now or hereafter controlled by such
company either directly or indirectly; or (ii) which does not have outstanding
shares or securities but the majority of whose ownership interest representing
the right to manage such corporation or other legal entity is now or hereafter
owned and controlled by such company either directly or indirectly; but any such
corporation or other legal entity shall be deemed to be a SUBSIDIARY of such
company only as long as such control or ownership and control exists.
SYSTEM means that combination of hardware and software offered by Licensee that
Intelli-Check's LICENSED SOFTWARE will run on and designated as "___________
System;" such system being adapted for use by customers. Other combinations of
software and hardware furnished by Licensee may be deemed to be a SYSTEM upon
Intelli-Check's written approval.
SOFTWARE UPGRADE SUPPORT means Intelli-Check will provide updated LICENSED
SOFTWARE for the processing on new jurisdiction formats as Intelli-Check
develops and commercially releases these updates, as expressly provided for in
Section 1.0 in this agreement.
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