INTELLECTUAL PROPERTY RIGHTS TRANSFER AGREEMENT
INTELLECTUAL
PROPERTY RIGHTS TRANSFER AGREEMENT
concluded
by and between
Octavian
International Limited
Company
No. 04185988
Bury
House
0-0
Xxxx
Xxxxxx
Xxxxxxxxx
Xxxxxx XX0 0XX
Xxxxxx
Xxxxxxx
hereinafter
referred to as "Octavian"
and
Ziria
Enterprises Ltd.
000,
00xx
Xxxxxxx
Xxxxxx
Xxxxxx
Business Centre
2nd
Floor
Limassol
Cyprus
hereinafter
referred to as "Ziria"
and
Xxxxxx
Xxxxxxxxxxxxxx
born
23
January 1965
00
Xxxxx
Xxxxx Xxx Xxxxx 000
Xxxxxxxx
Xxxxxx
3027
hereinafter
referred to as "HB"
ON
THE
ONE HAND
and
Austrian
Gaming Industries GmbH
FN
109445
z
Xxxxxx
Xxxxxxx 000
0000
Xxxxxxxxxxxxxxx
Xxxxxxx
hereinafter
referred to as "AGI"
ON
THE
OTHER HAND
as
follows:
2
Octavian,
Ziria, HB and AGI (together the "Parties")
mutually declare and agree that:
| 1. |
Octavian
asserted to be the sole owner of all present and future local,
foreign or
international patents, trade marks, service marks, trade names,
design
rights, database rights, copyrights (including copyright in software),
rights in inventions and topography rights whether or not registered,
including all applications and rights to apply for registration
(hereinafter referred to as "IP
Rights")
in all products listed in Annex A
(these products and any part thereof hereinafter referred to as
the "Products");
|
|
2.
|
Octavian
asserted to be the owner of all IP Rights in and to hold ownership
title
to all materials related to the Products (these materials and any
part
thereof hereinafter referred to as the "Materials
and this shall include Software Materials")
as far as necessary to perform those IP-Rights in the
Products;
|
|
3.
|
“Software
Materials”
means the Source and Object codes for (i) Accounting, Control and
Progressive System (which provides all the required processes to
run route
clot operations including machine meter collection, collation, accounting,
cashless, play tracking, bonussing, multiple progressive, data
visualisation, asset logs, full asset control, Wide Area Progressives
(centrally controlled) and flexible reporting with remote .net access),
(ii) all software embedded within the Products as are necessary to
be
delivered or deposited to comply with this Agreement and (iii) any
necessary software documentation to perform the IP-Rights in the
Products
under this Agreement.
|
| 3. |
they
have entered into a loan agreement dated the same date as this Agreement
(hereinafter referred to as the "Loan
Agreement");
|
| 4. |
when
entering into the Loan Agreement, the Parties intended that all the
IP
Rights of Octavian in the Products and Materials are transferred
to AGI
under the Condition as set forth in Article 1 of this Intellectual
Property Rights Transfer Agreement (the "Agreement");
|
| 5. |
the
Parties now want to confirm this conditional full transfer of IP
Rights in
the Products and Materials in
writing.
|
NOW,
THEREFORE, THE PARTIES AGREE AS FOLLOWS:
Article
1 Condition
The
transfer of IP Rights in the Products and Materials pursuant to Article 2
of this Agreement shall be conditional upon an Event of Default (as
defined in the Loan Agreement) having
occurred (hereinafter referred to as the "Condition").
3
Article
2 Full
Transfer of all Rights in the Products
The
Parties hereby confirm and agree that all IP Rights and the ownership of
Octavian in the Products and Materials are transferred to AGI upon AGI giving
notice that (i) the Condition has been fulfilled; (ii) the IP Rights in the
Products and Materials will be fully transferred to AGI 5 Business Days after
receipt of the notice by Octavian (in accordance with the notice provisions
of
this Agreement); and (iii) setting out the details required pursuant to Article
5 below (the "Transfer
Notice").
This
transfer shall be without limitation with regard to content, duration and area
(territory), including possible extensions of the duration of copyright,
including the right to identify itself as producer of the Products and including
the right to possible new exploitation methods and rights, and – insofar as the
transfer of the full IP Rights in the Products and Materials under any
jurisdiction may not be possible – accordingly, with regard to content, duration
and area (territory) unlimited, exclusive, transferable and irrevocable rights
of use and/or rights to utilize the IP Rights in the Products and Materials
are
granted to AGI. Therefore, AGI shall have acquired the exclusive unlimited
right
in and/or right to utilize the IP Rights in the Products and Materials. Octavian
hereby irrevocably confirms that AGI is entitled without restrictions and
irrevocably to all the IP Rights in the Products. AGI is therefore in particular
exclusively entitled to the use of the IP Rights in the Products and Materials
by itself or any third party, true to original or processed by any existing
or
future possible method, worldwide and without time limitations, for any purpose,
in particular to – irrespective of method and quantity – copy, distribute
copies, further develop and change, disseminate, lease, send, perform, make
available to the public and/or to transfer or grant these rights entirely or
in
part to third parties and/or grant (sub-)licences.
The
provision of this paragraph are subject only to any rights of use granted to
third parties by Octavian in the ordinary course of business (being distributing
and selling the Products and other gaming products to distributors to distribute
said Products or other gaming products and end users to use said Products and
other gaming products as end user, hereinafter “Octavian´s Business”.
There
is
no obligation of use by AGI but it is intended that AGI uses reasonable efforts
to exploit the IP Rights in the Products and Materials transferred to it during
the Protected Period pursuant to Article 5. AGI shall not be obliged to
affix any reference to the author of the Products.
Article
3 Transfer
of Rights in the Products, Materials and Software
Materials
At
signing of this Agreement, Octavian shall have deposited the Software Materials
in escrow with NCC Escrow International Limited, acting as escrow agent
(the "Escrow
Agent").
The
Escrow Agent shall hold in escrow and release the Software Materials subject
to
the terms and conditions of this Agreement and the escrow agreement attached
hereto as Annex B
(the
"Escrow
Agreement").
4
Upon
dispatch of the Transfer Notice in accordance with Article 2, AGI shall be
entitled to immediately notify the Escrow Agent in writing that the Condition
has been fulfilled and notice has been given to Octavian that the IP Rights
in
the Products and Materials, including Software Materials will be transferred
on
the date set out in the Transfer Notice.
Upon
receipt of such notice, the Escrow Agent shall hand over the Software Materials
to AGI without undue delay in order to transfer the Software Materials to
AGI.
Upon
transfer of the IP Rights in the Products and the Materials, including Software
Materials to AGI, AGI shall be entitled to use the IP Rights in the Materials
including Software Materials as far as necessary to perform the IP-Rights in
the
Products.
Article
4 Compensation
for the Transfer of Rights and Materials
The
transfer of the IP Rights in the Products and Materials hereunder shall become
valid upon fulfilment of the Condition and service on the Transfer Notice in
accordance with Article 2 and shall occur on the date set out in the Transfer
Notice. It serves as security for the full settlement of claims by AGI out
of or
in connection with the Loan Agreement and this Agreement.
Octavian
therefore has no claim for any compensation, regardless of the value of the
transferred rights today or in the future. Any right for rescission of this
Agreement or any claim for invalidation or avoidance or adjustment of this
Agreement including without limitation for reasons of error, change of
circumstances, frustration of contract or on the basis of leasio
enormis
(Sec 934 ABGB) shall be excluded.
Article
5 Protected
Period
This
Article 5 shall apply in the event that the IP Rights in the Products and
Materials are transferred to AGI in accordance with Article 2 (other than where
such transfer occurs as a result of an Event of Default under clause 6.1.2
of
the Loan Agreement). In the Transfer Notice, AGI shall set out the amount of
the
Loan (plus all accrued but unpaid interest thereon) which is outstanding in
accordance with the Loan Agreement at the date that the transfer occurs in
accordance with Article 2.
For
a
period of 12 months following the transfer of the IP Rights in the Products
and
Materials pursuant to Article 2 (the "Protected
Period"),
it is
intended that AGI uses reasonable efforts to exploit the IP Rights in the
Products and Materials transferred to it provided always that for the Protected
Period, AGI shall not transfer, licence, assign, pledge or otherwise grant
rights to any person in respect of the IP Rights in the Products and Materials,
other than in the ordinary course of business, which, for the avoidance of
doubt
and without limitation shall include. the right also within the Protection
Period for AGI to license the IP Rights in the Products and Materials on an
End User License level to be able to exploit the IP Rights in the Products
and
Materials.
5
If,
at
any time during the Protected Period,
|
1.
|
Octavian
repays to AGI the amount of the Loan and accrued but unpaid interest
thereon along with any reasonable costs incurred by AGI in enforcing
the
terms of the Loan Agreement or this Agreement including any moneys
required to be paid under the Escrow Agreement for the release of
the
Software Materials from Escrow; or
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2.
|
AGI
receives from the exploitation of the IP Rights in the Products and
Materials an amount that is equal to the total of the Loan plus accrued
but unpaid interest thereon and any reasonable costs incurred by
AGI in
enforcing the terms of the Loan Agreement or this Agreement including
any
moneys required to be paid under the Escrow Agreement for the release
of
the Software Materials from Escrow and any reasonable costs incurred
by
AGI in connection with such
exploitation,
|
AGI
shall, within 5 Business Days of such event occurring, undertake all steps
required to transfer the IP Rights in the Products and Materials back to
Octavian and shall promptly pursue all registrations and other steps required
to
complete such transfer. Octavian shall reimburse AGI for all reasonable costs
incurred by AGI in completing the transfer to Octavian as contemplated by this
Article 5.
Nothing
contained in this Article 5 shall, however, in any way limit or prejudice the
transfer of the IP Rights in the Products and of the Materials to AGI
hereunder.
Article
6 Representations
and Warranties and Indemnification
Octavian
represents, warrants and guarantees (§ 880a second case ABGB) that each of
the following are true, correct, complete and not misleading as of the date
hereof and acknowledges that AGI has entered into this Agreement and the Loan
Agreement in reliance of these representations, warranties and
guarantees:
|
(i)
|
the
Products have been created by Octavian‘s employees, and Octavian is the
sole and unrestricted owner of the exclusive rights in the
Products;
|
|
(ii)
|
Octavian
is the sole and unrestricted owner of all the IP-Rights in the Products
and Materials;
|
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(iii)
|
no
third party is entitled to any IP Rights with regard to the Products
and
Materials other than in the ordinary course of Octavian's Business
or as
approved in writing by AGI, provided that Octavian is not limited
in its
disposition regarding these rights by any grant of such rights of
use in
the ordinary course of Octavian´s Business to third
parties;
|
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(iv)
|
Octavian
is authorized to transfer the IP Rights in the Products and Materials
without any approval of any third party and without any limitation(other
than in respect of licenses or similar rights of use granted in the
ordinary course of Octavian's Business provided that Octavian is
not
limited in its disposition of such
IP-Rights.;
|
6
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(v)
|
all
persons that are considered as authors of the Products have explicitly
waived their rights to be named as authors of the
Products.
|
The
representations, warranties and guarantees set forth under (i) through (v)
above
shall be deemed to be repeated on and as of each date on which a payment is
due
to be made by Octavian under the Loan Agreement.
Octavian
shall indemnify and hold AGI harmless from and against any damages, liabilities,
losses, penalties, expenses, assessments or judgements of any nature whatsoever
(including, without limitation, attorney's fees and expenses, consultant's
and
investigator's fees and expenses, and other costs and expenses incident to
any
suit, action or proceeding), suffered or incurred, directly or indirectly,
by
AGI as a result of, arising out of or relating to (A) any breach of any
representation, warranty or guarantee made by Octavian under or pursuant to
this
Agreement; or (B) any violation, contravention or breach of any covenant,
agreement or obligation of Octavian under or pursuant to this
Agreement.
Article
7 Covenants
of Octavian, HB and Ziria
Octavian
undertakes that it shall not, from the date of this Agreement until repayment
of
the Loan (and all interest accrued thereon) in full in accordance with the
terms
of the Loan Agreement:
|
(i)
|
assign
ownership of any of the IP Rights in the Products or Materials to
any
person other than AGI;
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(ii)
|
grant
any licence or sub-licence of any IP Rights in the Products or Materials
to any person other than in the ordinary course of Octavian's Business
or
with the prior written consent of AGI;
or
|
|
(iii)
|
create
or permit to subsist any Encumbrance (as defined in the Loan Agreement)
over the IP Rights in the Products or Materials other than pursuant
to
this Agreement and the Loan Agreement or otherwise to
AGI.
|
Ziria
and
HB hereby confirm and guarantee (§ 880a second case ABGB) that,
as
at the date of this Agreement, Octavian owns all the IP-Rights in the Products
and Materials as set out in paragraphs 1 and 2 and concerning the compliance
with and the fulfilment of Octavian´s obligations out or in connection with this
Agreement Ziria and HB must use their best reasonable endeavours that Octavian
fulfils its obligations under this Agreement.
7
Article
8 Governing
Law and Dispute Resolution
This
Agreement shall be governed by and construed in accordance with Austrian law,
with the exception of (i) the UN Sales Convention and (ii) the conflict of
law
rules of Austrian private international law.
Any
and
all disputes arising out of or in connection with this Agreement, including,
without limitation, a dispute as to the conclusion, validity or existence of
this Agreement, shall be finally and exclusively resolved and settled under
the
Rules of Arbitration and Conciliation of the International Arbitral Centre
of
the Economic Chamber Austria in Vienna, Austria, as amended from time to time
(the "Vienna
Rules"),
by 3
(three) arbitrators appointed in accordance with these rules. The language
of
the arbitration shall be English. The seat of the arbitration shall be Munich.
Any award and/or final decision of the arbitrators shall include a decision
on
costs, including, without limitation, fees of counsel.
Each of
the Parties agrees not to resist the enforcement of any arbitration award
obtained in connection with this Agreement other than as expressly permitted
by
the 1958 New York Convention on the Recognition and Enforcement of Foreign
Arbitration Awards.
Notwithstanding
the foregoing, the Parties agree that, in addition to any and all other remedies
that may be available under this Agreement, each Party shall be entitled to
request injunctive relief or to initiate injunction proceedings at the
(ordinary) courts of competent jurisdiction.
Article
9 Final
Provisions
Each
of
the Parties shall from time to time execute such documents and perform such
acts
and things as any Party may reasonably require to give any Party the full
benefit of this Agreement.
This
Agreement shall be drawn up in English and the English language shall therefore
be the governing language. Any translations are for convenience only and shall
thus not be authorative for the interpretation of this Agreement.
This
Agreement is executed in 2 (two) counterparts, one for Octavian and one for
AGI,
each of which shall be deemed an original and all of which together shall
constitute one and the same instrument.
This
Agreement constitutes the entire agreement and understanding of the Parties
relating to the subject matter hereof and supersedes all prior agreements and
understandings, whether oral or written, relating to the subject matter hereof.
Any amendments and modifications shall be valid only if agreed upon in writing
and signed by the Parties hereto; this formal requirement may only be waived
in
writing.
8
IP
RIGHTS TRANSFER AGREEMENT
This
Agreement shall be binding upon, and inure to the benefit of, the Parties and
their respective successors and permitted assigns. This Agreement may not be
assigned by Octavian or Emperor without the prior written consent of AGI or
by
AGI without the prior written consent of Octavian.
All
Exhibits to this Agreement are an integral part of this Agreement. All Exhibits
to this Agreement and all information disclosed therein is (are) true, accurate
and complete and not misleading. All references in this Agreement to an Exhibit
shall be deemed to be references to a clause of this Agreement unless the
context otherwise requires.
Clause
and subsection headings of this Agreement are for ease of reference only and
do
not affect the substance, meaning or interpretation of any provision hereof.
Words denoting the singular include the plural and vice versa, words denoting
any one gender include both genders. All references to legal provisions shall
include references to any statutory modification or re-enactment thereof,
whether before or after the Signing.
The
Parties to this Agreement have participated jointly in the negotiation and
drafting of this Agreement. If any ambiguity or question of intent or
interpretation arises, this Agreement shall be construed as if drafted jointly
by all Parties hereto, and no presumption or burden of proof shall arise
favouring or disfavouring any Party by virtue of the authorship of any provision
of this Agreement.
The
failure of any Party to enforce or to exercise, at any time or for any period
of
time any term of or any right or remedy arising pursuant to or under this
Agreement shall not constitute, and shall not be construed as, a waiver of
such
term or right or remedy and shall in no way affect that Party's right to enforce
or exercise it later, provided that such right is not time barred, expired
or
precluded. Any waiver to this effect must be explicitly in writing.
If
any
provision of this Agreement shall be held to be illegal, invalid or
unenforceable, in whole or in part, such provision or part shall to that extent
be deemed not to form a part of this Agreement but the legality, validity or
enforceability of the remainder of this Agreement shall not be affected. The
illegal, invalid or unenforceable provision, in whole or in part, shall be
replaced by such valid and enforceable provision which corresponds to the
original intention and purpose of the illegal, invalid or unenforceable
provision.
Any
notice(s) required or permitted in connection with this Agreement or by law
(each a "Notice")
shall
be given in writing by an authorized representative of the relevant Party and
shall be delivered by hand, sent to the recipient by certified or registered
mail or by international courier service (such as DHL, UPS or the like), or
facsimile transmission (with the original to follow within 5 Business Days)
to
the address set forth below or an address to be provided by the relevant Party
in writing and by certified or registered mail, postage prepaid, with reference
to this Article 8 to the other Party. Any Notice shall be effective upon receipt
and shall be deemed to have been received:
9
IP
RIGHTS TRANSFER AGREEMENT
|
§
|
at
the time of delivery, if delivered by hand, registered or certified
mail
or courier;
|
|
§
|
at
the time of transmission in legible form, if delivered by
fax.
|
If
to
Octavian:
Octavian
International Limited
Attn:
Xxxxxx Xxxxxxxxxxxxxx and Xxxxx Xxxxxx
Xxxx
Xxxxx
0-0
Xxxx
Xxxxxx
Xxxxxxxxx
Xxxxxx XX0 0XX
Xxxxxx
Xxxxxxx
Fax:
x00
(0) 0000 000 000
If
to
AGI:
Austrian
Gaming Industries GmbH
x/x
XXX
Xxxxxxxx Kft.
Emese
Altusz
Attn:
Xxxxx Xxxxx
Xx
xxxx
000
0000
Xxxxxxxx
Xxxxxxx
Fax:
x00
00 000 000
The
Parties agree that notwithstanding any other provisions of this Agreement
Agreements, any communication to be made under or in connection with this
Agreement shall be made to an address outside the Republic of Austria. The
foregoing sentence applies to any communication under or in connection made
by
fax, electronic message, including in particular emails or attachments thereto,
or in any other written form relevant for purposes of the Austrian Stamp Duty
Act (GebG).
In
particular, no such communication shall be sent, read, brought, transferred,
saved or kept within the Republic of Austria at any time.
________________,
this ______________. 2008
For
and on behalf of Octavian International Limited
|
/s/
Xxxxxx Xxxxxxxxxxxxxx
|
|
Xxxxxx
Xxxxxxxxxxxxxx ,
1/23/65
|
10
IP
RIGHTS TRANSFER AGREEMENT
For
and on behalf of Ziria Enterprises Ltd.
| /s/ Xxxxxx Xxxxxxxxxxxxxx |
|
Xxxxxx
Xxxxxxxxxxxxxx , 1/23/65
|
For
and on behalf of Xxxxxx Xxxxxxxxxxxxxx
For
and on behalf of Austrian Gaming Industries GmbH
|
[● Name], born [● date]
|
[● Name], born [● date]
|
11
IP
RIGHTS TRANSFER AGREEMENT
ANNEX
A
The
flat
pack game kit commonly known as "Maverick" developed by Octavian including
all
and any modifications thereto and all games developed by Octavian for use on
a
Maverick but in any event not less than all of the IPR and materials required
to
be deposited in escrow under the terms of the eBet escrow/loan as on 14.07.2008
(see in Annex A enclosed Escrow Deposit Lodgment Form dated on 14th
July,
2008).
The
(i)
Accounting, Control and Progressive System –ACP- (which provides all the
required processes to run route slot operations including machine meter
collection, collation, accounting, cashless, play tracking, bonussing, multiple
progressive, data visualisation, asset logs, full asset control, Wide Area
Progressives (centrally controlled) and flexible reporting with remote .net
access), (ii) all software embedded within the Products, but in any event not
less than all of the IPR and materials required to be deposited in escrow under
the terms of the eBet escrow/loan as on 14.07.2008 (see enclosed Escrow Deposit
Lodgment Form dated on 14th
July,
2008).
Escrow
Deposit Lodgment Form dated on 14th
July,
2008
IP
RIGHTS TRANSFER AGREEMENT
2
IP
RIGHTS TRANSFER AGREEMENT
3
ANNEX
B
Escrow
Agreement
4
