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Exhibit: 10.21FT
AGREEMENT
THIS IS AN AGREEMENT between FUTECH EDUCATIONAL PRODUCTS, INC. of 0000
Xxxxx 00xx Xxxxxx, Xxxxxxx, Xxxxxxx 00000 (hereinafter the "Company") and
XXXXXXX X. XXXXXXXXX, an individual resident in Maricopa County, Arizona
("XxXxxxxxx").
WHEREAS:
A. The Company is engaged in the business of developing electronic
books and printed electronic products, and marketing such products and has
developed or otherwise obtained certain confidential information and proprietary
technology related to its business.
X. XxXxxxxxx is a founder of the Company, an equity holder in, and
Director of the Company, and has been employed by the Company at various times
in the capacities of President and as Senior Vice President Research and
Development.
X. XxXxxxxxx has particular expertise in the design and manufacture of
electronic books and printed electronic products, and has been instrumental in
developing the Company's products, confidential information and proprietary
technology. XxXxxxxxx has obtained patents on various inventions employed by the
Company in its products, and has entered into agreements dated March 1990 and
June 14, 1991 (purporting to supersede the March 1990), granting the Company an
exclusive worldwide license under such patents to make, use and sell the
inventions described and claimed therein.
D. The Company is in the process of obtaining further financing, and
negotiating strategic alliances and wishes to ensure that there are no potential
issues pertaining to its past or continuing relationship with XxXxxxxxx or its
rights and obligations with respect to the inventions and contributions to
the Company technology that have been made by XxXxxxxxx.
ACCORDINGLY, for good and valuable consideration, receipt of which is hereby
acknowledged, the parties agree as follows:
1. DEFINITIONS. For purposes of this Agreement:
1.1 The term "Technology" includes, for example, conceptions,
discoveries, technological developments, technical contributions, methods,
processes, compositions, techniques, systems, machines, devices, improvements,
computer software and programs, at a and information (irrespective of whether in
human or machine readable form), inventions (whether or not patentable), works
of authorship, mask works and products.
1.2 The term "Existing Technology" means any and all Technology: (a)
disclosed in an Existing Patent, or (b) in use by the Company before the
effective date of this Agreement; or (c) relating to the business of the Company
( e.g. printed electronic products), and conceived (as evidenced by written
records) before the effective date of this Agreement.
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1.3 The term "Existing Patents" means all patents, U.S. or foreign, which have
or will in the future issue based upon, or claiming priority of, applications
filed before the effective date of this Agreement and naming XxXxxxxxx as
inventor thereon, including, but not limited to the patents and applications
listed in Schedule 1.3, as well as any continuation, divisional, and
corresponding foreign patent applications and any patents issuing therefrom,
and any reissue or reexamination patents arising therefrom.
2. ASSIGNMENT OF EXISTING TECHNOLOGY AND PATENTS.
2.1 Upon receipt of the payment pursuant to Paragraph 3.1, XxXxxxxxx
shall assign to the Company the full and exclusive worldwide right, title, and
interest in and to the Existing Patents and any right he might have in the
Existing Technology, as well as the right to pursue and retain any proceeds from
past infringement or other causes of action.
2.2 XxXxxxxxx shall promptly execute and deliver to the Company or its
legal representatives any and all assignment documents, papers, instruments or
affidavits required to effect the assignment and maintenance of the Existing
Patents and Existing Technology as may be necessary or desirable to carry out
the purpose of this Agreement.
2.3 XxXxxxxxx shall, upon request of the Company, and without further
remuneration, promptly provide the Company with all pertinent facts, documents,
notes or files relating to the Existing Patents and the Existing Technology, as
may be known and accessible to XxXxxxxxx and to testify as to the same in any
interference, litigation or proceeding related thereto.
3. CONSIDERATION
3.1 In addition to stock and other consideration previously provided to
XxXxxxxxx by XxXxxxxxx the Company, in consideration of the assignment
hereunder, the Company agrees to pay XxXxxxxxx the sum of Two Hundred Fifty
Thousand Dollars ($250,000.00) upon execution of this Agreement.
3.2 As additional consideration of the assignment hereunder, and as
consideration for XxXxxxxxx'x continued assistance and cooperation as set forth
in Paragraphs 2.2 and 2.3 hereof, the Company shall issue to XxXxxxxxx a
Promissory Note obligating the Company to pay XxXxxxxxx Two Hundred Fifty
Thousand Dollars ($250,000.00) on or before December 31, 1996 in the form of
Exhibit "1" attached hereto.
3.3 As full and complete satisfaction for any and all obligations of
the Company to XxXxxxxxx for past royalties relating to the Existing Technology,
the Company agrees to pay XxXxxxxxx One Hundred Thousand Dollars ($100,000.00)
upon execution of this Agreement and to issue to XxXxxxxxx a Promissory Note
obligating the Company to pay XxXxxxxxx One Hundred Thousand Dollars
($100,000.00) on or before December 31, 1996 in the form of Exhibit "2" attached
hereto.
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3.4 Subject to Paragraph 3, XxXxxxxxx hereby forgives, releases and
discharges the Company from any and all liability, arising from the March 1990
Agreement, June 14, 1991 Agreement, or otherwise, for any and all other
royalties, fees, or obligations to pay monies, past or future, to XxXxxxxxx with
respect to the Existing Patents and Existing Technology.
4. XXXXXXXXX'X REPRESENTATIONS.
4.1 Except for those matters disclosed on Schedule 5.1 hereto,
XxXxxxxxx represents that he has full title and rights of ownership to the
Existing Patents and Existing Technology being assigned hereunder, free and
clear of any liens, encumbrances or restrictions of any nature whatsoever.
4.2 XxXxxxxxx represents to the Company that he has not entered into,
and will not enter into, any agreement or obligation which will prevent his full
compliance with the terms of this Agreement.
5. GENERAL.
5.1 This Agreement is the entire agreement between the parties upon the
subject hereof and supersedes any prior or similar agreements upon the same
subject, and in particular the March 1990 and June 14, 1991 Agreements.
5.2 This Agreement shall inure to the benefit of, be binding upon and
be enforceable by the Company, its nominees, successors, and assigns, and shall
be binding upon and be enforceable by XxXxxxxxx his heirs, assigns and legal
representatives.
5.3 THIS AGREEMENT SHALL BE GOVERNED BY AND CONSTRUED IN ACCORDANCE
WITH THE FEDERAL LAW OF THE UNITED STATES OF AMERICA AND THE INTERNAL LAWS OF
THE STATE OF ARIZONA, WITHOUT REFERENCE TO PRINCIPLES OF CONFLICTS OF LAW. The
federal and state courts within the State of Arizona will have exclusive
jurisdiction to adjudicate any dispute arising out of this Agreement. Each party
expressly consents to: (a) the personal jurisdiction of the federal and state
courts within the State of Arizona, County of Maricopa; and (b) to be bound by
orders of such courts.
5.4 If any clause or provision of this Agreement is or becomes illegal,
invalid, or unenforceable, the remaining provisions of this Agreement shall be
unimpaired, and the illegal, invalid or unenforceable provision shall be
replaced by a provision, which, being legal, valid and enforceable, comes
closest to the intent of the parties underlying the illegal, invalid or
unenforceable provision.
5.5 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 will
constitute one and the same instrument.
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IN WITNESS WHEREOF, the parties have executed this Agreement on this
day of August, 1996,
Xxxxxxx X. XxXxxxxxx FUTECH EDUCATIONAL PRODUCTS, INC.
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/s/ Xxxxxxx X. XxXxxxxxx By /s/ Xxxxxxx X. Xxxxx
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Its
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CONSENT OF SPOUSE
1. Xxxxx XxXxxxxxx, spouse of Xxxxxx X. XxXxxxxxx, a party to the
foregoing Agreement (the "Agreement"), do hereby confirm that I have read and
understand the Agreement and that I consent to, agree to and ratify all of the
provisions, terms and conditions set forth in the Agreement, and I agree to
execute any and all instruments or documents necessary to carry out said
Agreement, to the extent that I have any interest in the Agreement, the
transactions contemplated therein and the property and assets affected by the
Agreement.
/s/ Xxxxx XxXxxxxxx
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Xxxxx XxXxxxxxx
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Schedule 1.3 Existing Patents
Patent Number Serial Number Country Filing Date Grant Date
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57656 78210811 Taiwan August 21, 1989 September 1, 1990
5,167,508 07/685,278 USA April 15, 1991 December 1, 1992
664,701 17841/92 Australia April 14, 1992 March 19, 1996
2,108,554 Canada April 14, 1992
EP 92911059.1 XXX Xxxxx 00, 0000
0-000000 Xxxxx April 14, 1992
18887 South Korea April 14, 1992
(Republic of Korea)
178299 925737 Mexico April 14, 1992 June 7, 1995
PCT/US92/03056 PCT April 14, 1992
Not yet received Russian Federation April 14, 1992
92 1 11051.0 China April 14, 1992
000/Xxx/00 Xxxxx April 14, 1992
5,417,575 08/137,063 USA April 14, 1992 May 23, 1995
Not yet assigned Kazakhstan Not yet confirmed
5,484,292 07/980,649 USA November 24, 1992 January 16, 1996
PCT/US93/10705 PCT November 11, 1993
08/195,755 USA February 11, 1994
93120335.X China November 24, 1993
0000/Xxx/00 Xxxxx November 9, 1993
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Patent Number Serial Number Country Filing Date Grant Date
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55940/94 Australia November 4, 1993
2,150,013 Canada November 4, 1993
Not yet assigned XXX Xxxxxxxx 0, 0000
000000 Xxxxxxx November 4, 1993
6-513158 Japan November 4, 1993
702092/1995 Korea November 4, 1993
258342 New Zealand November 4, 1993
952042 Norway November 4, 1993
95118875 Russian Federation November 4, 1993
10815 10815 Sri Lanka November 4, 1993 February 23, 1996
08/474,707 USA November 4, 1993
08/554,734 USA November 7, 1995
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Schedule 5. 1 LIENS AND ENCUMBRANCES
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EXHIBIT "1"
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PROMISSORY NOTE
Due not later than: December 31, 1996
Principal Amount: US$250,000 Phoenix, Arizona
For value received, the undersigned hereby promises to pay to Xxxxxxx X.
XxXxxxxxx on or before December 31, 1996 the sum of TWO HUNDRED FIFTY THOUSAND
UNITED STATES (US $250,000) DOLLARS with interest accruing from the date hereof
at a rate of ONE (1%) PERCENT per month, compounded monthly, before and after
each of maturity, default and judgment, payable by certified check, cash or bank
draft and delivered to Xxxxxxx X. XxXxxxxxx at _______________________________ .
The undersigned hereby waives notice of dishonor and presentment.
Dated this ________ of __________ , 1996.
SIGNED, SEALED AND DELIVERED
by FUTECH EDUCATIONAL PRODUCTS, INC.
By /s/ Xxxxx Xxxxx
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Xxxxx Xxxxx, President
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EXHIBIT "2"
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PROMISSORY NOTE
Due not later than: December 31, 1996
Principal Amount: US$100,000 Phoenix, Arizona
For value received, the undersigned hereby promises to pay to Xxxxxxx X.
XxXxxxxxx on or before December 31, 1996 the sum of XXX XXXXXXX XXXXXXXX XXXXXX
XXXXXX (US$100,000) DOLLARS with interest accruing from the date hereof at a
rate of ONE (1%) PERCENT per month, compounded monthly, before and after each of
maturity, default and judgment, payable by certified check, cash or bank draft
and delivered to Xxxxxxx X. XxXxxxxxx at _____________________________________ .
The undersigned hereby waives notice of dishonor and presentment.
Dated this 7 of August, 1996.
SIGNED, SEALED AND DELIVERED
by FUTECH EDUCATIONAL PRODUCTS, INC.
By /s/ Xxxxx Xxxxx
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Xxxxx Xxxxx, President
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