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Exhibit 10.09
AGREEMENT FOR TRANSFER OF ALL RIGHTS
AND RESERVATION OF LICENSES IN SOFTWARE
THIS TRANSFER AGREEMENT (the "Agreement") is made and entered into, and
is effective as of September 4, 2000, by and among PLUSSTATION, LLC, a
Massachusetts limited liability company ("PlusStation"), XXXXX XXXXXXX
("Xxxxxxx") and XXXXX XXXXXXX ("Xxxxxxx"), each an individual and together
constituting all of the members and managers of PlusStation, and SUMMUS, LTD., a
Delaware corporation (hereinafter "Summus"), having an address for purposes of
this Agreement at 000 Xxxxxxxxxxxx Xxxxxx Xxxx, Xxxxx 000, Xxxxxxx, Xxxxx
Xxxxxxxx 00000.
WITNESSETH:
WHEREAS, PlusStation is the exclusive owner of all U.S. and foreign
copyrights and other intellectual property and proprietary rights in and to the
Software (as defined in Exhibit A attached hereto); and
WHEREAS, Radovic and Xxxxxxx are the sole members and managers of
PlusStation and all benefits and consideration given to PlusStation inures to
their benefit; and
WHEREAS, Summus wishes to acquire all of the right, title and interest
in and to the Software and thereafter conduct the Business exclusively for
Summus' benefit; and
WHEREAS, PlusStation wishes to reserve a license to the Software that
will allow PlusStation to continue to conduct business that is not competitive
with the Business; and
WHEREAS, Radovic and Xxxxxxx are each presently employed by Summus as
product development engineers whose principal job function is the development
and creation of new software products;
NOW, THEREFORE, in consideration of the mutual promises contained herein
and other good and valuable consideration, the receipt and sufficiency of which
the parties hereby acknowledge, the parties hereto, intending to be legally
bound, agree as follows:
(1) CERTAIN DEFINITIONS. When used in this Agreement, capitalized terms shall
have the meanings set forth on Exhibit A attached hereto.
(2) CONVEYANCE OF THE CONVEYED RIGHTS; RETENTION OF LICENSE.
(a) Subject to the provisions of this Agreement, PlusStation hereby
conveys, delivers, sells, transfers, and assigns to Summus all of the
Conveyed Rights, and Summus hereby accepts such Conveyance, effective
immediately.
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(b) Upon receipt of the Conveyed Rights, Summus hereby grants to
PlusStation, but only in the Field of Use, an exclusive worldwide,
royalty-free, transferable (subject to the restrictions below), perpetual,
and irrevocable right and license to use, execute, reproduce, display,
perform, sublicense, distribute, and prepare Derivative Works based on, the
Software, and to authorize others to do some or all of the foregoing and
PlusStation hereby accepts such right and license, subject to the following
restrictions:
(i) PlusStation shall not offer (by sublicense, transfer, or otherwise) to
Customers the Software or any Substantially Equivalent Software for
intended use outside the Field of Use, or (2) use or authorize others
to use the Software or any Substantially Equivalent Software in
competition with the Business of Summus; and
(ii) PlusStation and Summus acknowledge their mutual intent to restrict
PlusStation's license rights to the Field of Use. Both parties further
acknowledge that the Software would be usable as a substitute for
Summus' products outside the Field of Use for Customers. Accordingly,
PlusStation agrees that it shall not sell, license or sublicense the
Software to any Customer of Summus without the prior written consent
of Summus, which consent shall not be unreasonably withheld; provided,
however, that license or sublicense restricted to the Field of Use to
a Customer shall be permissible under this paragraph provided that
PlusStation notifies Summus in writing of such Customer.
PlusStation shall be entitled to receive one (1) copy of the source
code to the Software, as it then exists and for the purpose of the license
granted above, as of the effective date of the termination of employment
with Summus of both Radovic and Xxxxxxx, or at such earlier time as the
parties shall mutually agree.
PlusStation may transfer the exclusive license granted above, upon
thirty (30) days' prior written notice to Summus of such proposed transfer,
provided that (i) the transferee is not a direct competitor of Summus, and
(ii) that the exclusive license transferred shall not permit sublicensing
or subsequent transfer by the transferee.
(c) PlusStation, Radovic and Xxxxxxx each agree to execute and deliver such
further instruments, and take such further actions, as may be reasonably
requested by the other party in order to evidence more fully the conveyance of
the Conveyed Rights in favor of Summus hereunder, and the license granted to
PlusStation hereunder, provided that such further instruments and actions shall
not, unless otherwise agreed, require either party to incur any obligation in
addition to the obligations undertaken or assumed elsewhere in this Agreement.
(d) If, prior to payment in full of amounts payable pursuant to Section 3 below,
liquidation proceedings under federal or state bankruptcy laws is instituted
against Summus, which proceedings are not terminated within one hundred and
twenty (120) days after their commencement, PlusStation shall be granted
automatically, without need of further action by
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any party hereto, a nonexclusive worldwide, royalty-free, transferable,
perpetual, and irrevocable right and license to use, execute, reproduce,
display, perform, sublicense, distribute, and prepare Derivative Works
based on, the Software, and to authorize others to do some or all of the
foregoing on its behalf. Upon payment in full of amounts payable pursuant
to Section 3 hereof, this Section 2(d) shall be of no further force or
effect.
(3) PAYMENT. In consideration of the Conveyance, Summus will pay to PlusStation
the sum of Two Hundred Thousand Dollars ($200,000.00), payable in eight (8)
equal, consecutive quarterly payments of $25,000.00 beginning December 30, 2000.
Each installment payment shall be made on the last business day of each calendar
quarter until paid in full. Payment shall be made, at PlusStation's option, by
check or wire transfer to a bank account designated in writing by PlusStation.
Radovic and Xxxxxxx, as the sole members of PlusStation, hereby acknowledge that
the payments provided for hereunder inure to their benefit and are sufficient
consideration for their entering into this Agreement and any related documents,
instruments or agreements.
(4) DELIVERY
(a) At Closing, PlusStation shall deliver to Summus the following:
(i) a master copy of the Software, or any other relevant
documentation or media that evidences or supports the Software,
including both object code and source code forms of programming,
any system or user documentation, and any design or development
specifications pertaining thereto, if any, as then existing, or
such portion thereof as the other party may request. Such
documentation and media shall include, to the extent the same
exist, the source code, system documentation, statements of
principles of operation, and schematics for the Software, as well
as any pertinent commentary or explanation that may be necessary
to render such Software understandable and usable by a trained
computer programmer. For a reasonable period following the
Closing until delivery of the Software is complete under the
preceding paragraph, the parties shall mutually establish and
conform to reasonable requirements for technical and functional
documentation with respect to the preparation and retention of
the Software.
(ii) A certified copy of the resolutions adopted by the members and
manager(s) of PlusStation authorizing the execution and delivery
of this Agreement and the transactions contemplated hereby,
certified by the Manager of PlusStation;
(iii) A Certificate of Good Standing of PlusStation issued by the
Secretary of State of Massachusetts as of a recent date;
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(iv) Copies of the Articles of Organization and Operating Agreement of
PlusStation certified by the Manager;
(v) A quit claim agreement, in the form attached as Exhibit C hereto,
regarding all rights in and to the Software executed and
delivered by all members of PlusStation;
(vi) Such other instruments of assignment, conveyance or transfer from
PlusStation and/or its members and managers as Summus may
reasonably request.
(5) REPRESENTATIONS AND WARRANTIES. PlusStation, Radovic and Xxxxxxx, jointly
and severally, represent and warrant that:
(a) PlusStation is a limited liability company duly organized, validly
existing and in good standing under the laws of the state of Massachusetts.
PlusStation has all requisite limited liability company power and authority
to own, operate, and use its properties and assets and to carry on its
business as it now being conducted.
(b) The execution, delivery and performance of this Agreement by
PlusStation and the consummation of the transactions contemplated hereby
have been duly authorized by all requisite company action; the Agreement
constitutes the legal, valid, and binding obligation of PlusStation,
enforceable in accordance with its terms (except to the extent enforcement
is limited by bankruptcy, insolvency, reorganization or other laws
affecting creditors' rights generally and by general principles of equity);
and this Agreement and performance hereunder do not violate or constitute a
breach under any organizational document of PlusStation or any contract,
other form of agreement, or judgment or order to which it is a party or by
which it is bound.
(c) Upon execution of this Agreement, PlusStation shall convey to Summus
good and marketable title to the Software, free and clear from all liens,
encumbrances or claims of third parties, of whatever nature or kind.
(d) Except for any Third-Party Software that is specifically identified by
PlusStation and is included or incorporated in the Software, the Conveyed
Rights constitute all Software required by Summus for the operation of the
Business in the manner currently conducted by Summus and as presently
planned by Summus.
(e) PlusStation has full and sufficient right and authority to grant Summus
the rights, licenses, and/or interests in and to the Conveyed Rights as
provided in this Agreement. The conveyance of the Conveyed Rights, exercise
of the Conveyed Rights by Summus, and delivery of the Software in
accordance with this Agreement do not and will not infringe or abridge any
third-party interest in any intellectual property right in or related to
the Software.
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(f) No claim (whether or not embodied in any action, past or present) of
infringement of any intellectual property involving or concerning the
Conveyed Rights or the Software has been threatened or asserted against
PlusStation, and no such claim is pending against PlusStation, and neither
PlusStation, Radovic nor Xxxxxxx has any knowledge of any basis for such a
claim.
(g) Virus Free; No Disabling Code. The Software delivered under this
Agreement shall contain no viruses. The Licensed Software does not and will
not contain any computer code that would disable the Software or impair in
any way its operation based on the elapsing of a period of time, exceeding
an authorized number of copies, advancement to a particular date or other
numeral, or other similar self-destruct mechanisms (sometimes referred to
as time bombs", "time locks", or "drop dead" devices) or that would permit
any party to access the Software to cause such disablement or impairment
(sometimes referred to as a "trap door" device). In the event of a breach
or alleged breach of this paragraph, Summus shall not have an adequate
remedy at law and that Summus shall consequently be entitled to seek a
temporary restraining order, injunction, or other form of equitable relief
against the continuance of such breach, without need of bond, in addition
to any and all remedies to which Summus shall be entitled.
(6) EMPLOYMENT STATUS. Radovic and Xxxxxxx acknowledge their status a employees
of Summus as of the date hereof, and further acknowledge and agree that this
Agreement does not limit or diminish the rights, duties, and obligations of each
of them and Summus within the employee/employer relationship, including without
limitation, any rights of the employer to the inventions and developments of its
employees. This Agreement does not expand, diminish, modify or amend the terms
of any other agreements between Xxxxxxx, Xxxxxxx and Summus regarding their
employment.
(7) PROTECTION AND DEFENSE.
(a) Summus may, in its discretion and at its expense, take such action from
time to time after the Closing Date as may be reasonable or appropriate, in
its judgment, to protect and preserve its title and interest in the
Copyrights included in the Conveyed Rights, including by compliance to the
extent Summus deems reasonable or appropriate, in its judgment, with
applicable laws and regulations respecting the continuing registration of
any registered copyrights and by seeking to enjoin any infringement by
third parties of the intellectual property represented by the Software.
(b) Summus shall be solely entitled to determine and carry out, in its
discretion, the course of action, if any, that may be appropriate for
responding to instances of infringement by third parties of the Copyrights
included in the Conveyed Rights or violations of Summus' rights with
respect to the Software after the Closing Date. In such regard, Summus
shall have no
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obligation to PlusStation regarding Summus' decision whether to take action
or regarding any course of action Summus may choose to take.
(8) INFORMATION EXCHANGE.
(a) In connection with the delivery of the Software, PlusStation shall
furnish to Summus, pursuant to Section (4) of this Agreement, and Summus
may use, Confidential Information associated with the Software.
(b) Each party shall use ordinary care consistent with normal business
practice to maintain the confidentiality of the Confidential Information.
(9) INDEMNIFICATION. PlusStation, Radovic and Xxxxxxx, jointly and severally,
shall indemnify and hold harmless Summus, and its directors, officers,
employees, agents, successors, assigns, licensees and customers against any and
all claims, penalties, losses, liabilities, judgments, settlements, awards, and
damages (but excluding legal fees, expert witness fees and expenses) arising out
of or related to any claim of patent, trademark or copyright infringement and
claims of unfair competition or trade secret violation arising out of the sale,
possession or use of the Software, and any claims arising out of or related to
any material breach of PlusStation's representations and warranties contained
herein (collectively "Claims"). Summus may offset against any amount(s) owed by
it to PlusStation hereunder the amount of any unpaid indemnification obligation
of PlusStation under this paragraph.
(10) MISCELLANEOUS.
(a) PLUSSTATION SPECIFICALLY DISCLAIMS ANY WARRANTY OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE.
(b) The provisions of this Agreement constitute the entire agreement
between the parties and supersede all prior agreements, oral or written,
and all other communications relating to the subject matter hereof.
(c) This Agreement shall be binding on and shall inure to the benefit of
the parties hereto, and their successors or assigns. PlusStation, Radovic
and Xxxxxxx may not assign any of their respective rights or obligations
hereunder without the prior written consent of Summus.
(d) The headings found in this Agreement are for reference purposes only
and are to be given no effect in the construction of this Agreement.
(e) This Agreement may be executed in counterparts, each of which shall be
an original and all of which shall together constitute one and the same
instrument.
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(f) Any provision of this Agreement that is prohibited or unenforceable in
any jurisdiction shall, as to such jurisdiction, be ineffective to the
extent of such prohibition or unenforceability without invalidating the
remaining provisions hereof or affecting the validity or enforceability of
such provision in any other jurisdiction.
(g) Nothing herein shall make any person or entity not a party hereto a
beneficiary hereof.
(h) This Agreement shall be governed by the laws of the State of North
Carolina, without giving effect to conflicts of laws principles.
(i) Any controversy or claim arising out of or relating to this Agreement,
or the breach thereof, shall be settled by binding arbitration administered
by the American Arbitration Association ("AAA") under its Commercial
Arbitration Rules (the "Rules"), before a single arbitrator selected in
accordance with the Rules. Arbitration shall be conducted in Raleigh, North
Carolina, at a site selected by the arbitrator. Any judgment on the award
rendered by the arbitrator may be entered in any court of competent
jurisdiction.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their respective authorized representatives as of the date first
above written.
PLUSSTATION, LLC
a Massachusetts limited liability company
By: Member
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Title: Member/Manager
/s/ Xxxxx Xxxxxxx
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Xxxxx Xxxxxxx
By signing this Agreement, the above person
represents that he has read the Agreement
and understands its terms and restrictions,
and has had the opportunity to seek legal
counsel in relation to this Agreement.
/s/ Xxxxx Xxxxxxx
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Xxxxx Xxxxxxx
By signing this Agreement, the above person
represents that he has read the Agreement
and understands its terms and restrictions,
and has had the opportunity to seek legal
counsel in relation to this Agreement.
BUYER
SUMMUS, LTD.
By: /s/ Xxxx Ban
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Title: Chief Operating Officer
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