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ref102.htm
SYNERMEDICS
LICENSING AGREEMENT
REFERENCE 10.2 SYNERMEDICS, INC.
LICENSING AGREEMENT
LICENSE
AGREEMENT
This LICENSE AGREEMENT is made as of
the 28th day of February, 2001 between SYNERMEDICS, INC., a Georgia corporation
(the “Licensor”), and InnerSpace Corporation, a Delaware corporation
("Licensee").
The Effective Date is February 28,
2001.
WHEREAS Licensor owns the Licensed
Program and Licensed Technical Information (each as defined below) and patents,
copyrights and other proprietary rights relating thereto; and
WHEREAS Licensee desires to obtain from
Licensor a nonexclusive license to use the Licensed Program and Licensed
Technical Information, subject to the terms, conditions and provisions
hereinafter set forth;
NOW, THERFORE in consideration of the
premises and of the promises and mutual covenants contained herein, and
intending to be legally bound hereby, the parties hereto agree as
follows:
ARTICLE
I
DEFINITIONS
The following terms, as used herein,
shall have the following meanings:
"AFFILIATE" means, when used with
references to Licensee, any Person directly or indirectly controlling,
controlled by or under common control with Licensee. For purposes of this
Agreement, 'control' means the direct or indirect ownership of over 50% of the
outstanding voting securities of a Person, or the right to receive over 50 % of
the profits or earnings of a Person, or the right to control the policy
decisions of a Person.
"BANKRUPTCY EVENT" means the Person in
question becomes insolvent, or voluntary or involuntary proceedings by or
against such Person are instituted in bankruptcy or under any insolvency law, or
a receiver or custodian is appointed for such Person, or proceedings are
instituted by or against such Person for corporate reorganization or the
dissolution of any such Person, which proceeding, if involuntary, shall not have
been dismissed within ninety (90) days after the date of filing, or such Person
makes an assignment for the benefit of creditors, or substantially all of the
assets of such Person are seized or attached and not released within sixty (60)
days thereafter.
"CALENDAR QUARTER"' means each
three-month period, or any portion thereof, beginning on January 1, April 1,
July 1 and October 1.
"CONFIDENTIAL INFORMATION" means and
includes (i) the source code and object code of the Licensed Program and the
related Documentation, (ii) the Licensed Technical Information; (iii) any other
information or material in tangible form that is marked as confidential or
proprietary by the furnishing party at the time it is delivered to the receiving
party, (iv) information that is furnished orally if the furnishing party
identifies such information as confidential or proprietary when it is disclosed
and promptly confirms such designation in writing after such disclosure, and (v)
any other information or material in tangible form from which the party that
releases, exchanges, or discloses Confidential Information derives economic
value, actual or potential, from such information not being generally known to,
and not being readily ascertainable by proper means by, other persons who can
obtain economic value from its disclosure or use, and which is the subject of
efforts that are reasonable under the circumstances to maintain its secrecy.
.
"CUSTOMER" means any Person who has
executed a valid End User Agreement or any other form of sublicense agreement
approved by Licensor relating to the license set forth herein.
"DOCUMENTATION" means the explanatory
and instructive materials in hard copy, including manuals and other printed or
visually perceptible materials that describe the use, function or operation of a
computer software program.
"END USER AGREEMENT" means an agreement
between Licensee and a Person granting the right to use or benefit from any of
the rights granted hereinunder.
"FEES" shall mean, cumulatively,
Service Fees and Sublicense Fees. Licensee shall establish; (i) stand-alone
Sublicense Fees and (ii) Service Fees for use of the Licensed Work. If Licensee
charges a customer Service Fees for a package of services, only some of which
involves use of the Licensed Program, and no volume or other customer discount
is provided, then the portion of Licensee's revenues representing Fees shall not
be less than the separate prices or Fees charged by Licensee on a stand-alone
basis for services using the Licensed Work. If Licensee charges a customer
Service Fees on such a package of services and a volume or other discount is
provided, then the discount related to use of the Licensed Work shall be no
greater than the discount related to other services provided by Licensee.
Licensor acknowledges that Licensee may have to negotiate Sublicense Fee
discounts from its published fees in the usual course of doing business.
Licensee shall be permitted to deduct qualifying costs directly attributable to
the sublicensing of the Licensed Work, which are actually identified on the
invoice and borne by Licensee, or the provision of services using the Licensed
Work, which are actually identified on the invoice and borne by Licensee or its
sublicensee.
Such qualifying costs shall be limited
to the following:
(i) Discounts, in amounts customary in
the trade, for quantity purchases, prompt payments and for wholesalers and
distributors;
(ii) Credits
or refunds, not exceeding the original invoice amount, for claims or
returns.
(iii) Prepaid
transportation insurance
amounts;
(iv) Prepaid
outbound transportation expenses;
and
(v) Sales and use
taxes, imposed by a government agency upon Licensee.
"LICENSED PROGRAM" means the software
program in source code, object code, or any other form described in patent
registrations, applications for patent registrations, copyright registrations
and applications for copyright registration, together with (i) Modifications
thereto, (ii) all Documentation, and (iii) all derivative works based on the
foregoing.
"LICENSED TECHNICAL INFORMATION" means
the underlying proprietary analytic routines related to the Licensed Program.
"LICENSED WORK" means the Licensed
Program and Licensed Technical Information, and any portion or Modification
thereof, as well as all United States and foreign Patents and
Copyrights.
"MODIFICATION" of work means any and
all changes including improvements, enhancements, corrections, revisions to the
work or any portion thereof, and any derivative of or work substantially similar
to any of the foregoing, made by Licensor or the Licensee.
"NET SERVICE BUREAU ACCESS FEES”
means (i) total Fees paid to Licensee for Licensed Work, minus (ii)
unreimbursed, out-of-pocket costs of Licensee directly attributable to the
establishment and maintenance of the service bureau (excluding Licensee’s
general and administrative costs as determined in accordance with
GAAP).
"PERSON" or "PERSONS" means any
corporation, partnership, joint venture or natural person.
"SALE" as applied to the Licensed Work
means a genuine BONA FIDE transaction for which consideration is received or
expected for the use, lease, sublicense, transfer or any other disposition of
the Licensed Work. A Sale of the Licensed Work shall be deemed completed at the
time Licensee or its sublicensee invoices, ships, or receives payment for such
Licensed Work, whichever occurs first.
"SERVICE FEES" means gross
consideration actually received by Licensee as a fee for Use of the Licensed
Work.
"SUBLICENSE FEES" means gross
consideration actually received by Licensee (i) as a fee for sublicensing the
Licensed Work in object code form to any third party or (ii) as royalties under
the terms of any such sublicense agreement.
ARTICLE
II
GRANT OF
LICENSE
- GRANT OF LICENSE. Subject to the terms
and conditions contained in this Agreement, Licensor hereby grants to Licensee
for the term of this Agreement a royalty-bearing, worldwide, nonexclusive
license, with a right to sublicense to:
(a) make copies of, to make derivative
works of, and to use the Licensed
Work,
(b) distribute the
Licensed Work;
(c)
sublicense the Licensed Work to customers of Licensee who have first executed
an End User Agreement. Licensee shall use best efforts to include all of the
provisions found in the End User Agreement that forms Exhibit A hereto in all
sublicense agreements, where such efforts must result in an agreement that is at
least substantially similar to the End User Agreement identified in Exhibit
A.
2.2 RESERVATION OF RIGHTS. Licensor
reserves the right to make copies of, to make derivative works of and to use the
Licensed Work for any purpose whatsoever, including any commercial application.
Licensor also reserves the right to grant the same rights to any other Person,
whether for itself or another party.
2.3 NO RIGHTS BY IMPLICATION. No rights
or licenses with respect to the Licensed Work are granted or deemed granted
hereunder or in connection herewith, other than those rights or licenses
expressly granted in this Agreement.
2.4 FEDERAL GOVERNMENT INTEREST.
Licensee acknowledges that the United States Government may retain certain
rights in inventions funded in whole or in part under any contract, grant or
similar agreement with a Federal agency under Public Laws 96-517, 97-256 and
98-620, codified at 35 U.S.C. Section 200-212, and any regulation issued
thereunder, as such statute or regulations may be amended from time to time
hereafter. The license to the Licensed Work granted under this Article II is
expressly subject to all such rights.
ARTICLE
III
COMPENSATION
3.1 ROYALTIES.
(a) In consideration for the license
granted by this Agreement, Licensee shall pay Licensor royalties as follows on
all Sales of the Licensed Work and all subsequent Modifications developed
exclusively by Licensor.
(i) For Licensed Work which Licensee
makes available to End Users as hosted applications through the operation of a
service bureau, ten percent (10%) of the Net Service Bureau Access Fees derived
therefrom;
(ii) For Licensed Work which Licensee
makes available to End Users as standalone applications, ten percent (10%) of
the Fees derived
therefrom.
(iii) plus
312,800 common shares valued at $31,280 due upon signing of this
agreement.
(b) In the event that Licensor and
Licensee jointly develop a Modification, Licensee shall pay a royalty to
Licensor based upon the relative contributions of the two parties, such
contributions to be mutually agreed upon.
3.2 SALES TO FEDERAL GOVERNMENT. To the
extent required by any existing Federal Government Interest, a sublicense to the
United States Government shall not be subject to any Royalty.
3.3 PAYMENTS. Royalties payable under
Section 3.1 hereof shall be paid within forty-five (45) days following the last
day of the Calendar quarter in which the royalties accrue. The final payment
shall be made within thirty (30) days after termination of this Agreement.
Royalties shall be deemed paid as of the day on which they are received at the
account designated pursuant to Section 3.4 Royalties that are not paid when due
shall be subject to interest in accordance with Section 3.7
hereof.
3.5 REPORTS. Licensee shall deliver to
Licensor within forty-five (45) days after the end of each Calendar Quarter a
report, certified by the chief financial officer of Licensee, setting forth in
reasonable detail the calculation of the earned royalties and Minimum Advance
Royalties available for credit payable to Licensor for such Calendar
Quarter.
3.6 CURRENCY, PLACE OF PAYMENT,
INTEREST.
(a) CURRENCY; PLACE OF PAYMENT. All
dollar amounts referred to in this Agreement are expressed in United States
dollars. All payments of Royalties and other amounts to Licensor under this
Agreement shall be made in United States dollars (or other legal currency of the
United States) by check payable to "Synermedics, Inc.".
(b) INTEREST. Amounts that are not paid
when due shall accrue interest from the due date until paid, at a rate equal to
the prime rate plus two percent (2%) with a maximum cap of eighteen percent
(18%). Licensor may treat unpaid payments as a breach of this Agreement
notwithstanding the payment of interest.
3.7 RECORDS. Licensee will maintain
complete and accurate books and records that enable the royalties payable
hereunder to be verified. The records for each calendar quarter shall be
maintained for five years after the submission of each report under Section 3.6
hereof. Upon reasonable prior notice to Licensee, Licensor and its accountant
shall have access to the relevant books and records of Licensee necessary to
conduct a review or audit thereof. Such limited access shall be available not
more than twice each calendar year, during normal business hours, and for three
years after the expiration or termination of this Agreement. If Licensor
determines that Licensee has underpaid royalties by ten percent (10%) or more,
Licensee will immediately pay to Licensor such amount plus interest as set forth
above in addition to the documented costs and expenses of Licensor's accountant
in connection with its review or audit. If an overpayment is determined to
exist, Licensor shall refund any monies overpaid by Licensee back to
Licensee.
ARTICLE
IV
USE OF LICENSED
PROGRAM
4.1 MAINTENANCE. Licensee acknowledges
and agrees that the Licensor shall be under no obligation to Licensee to
install, maintain, support, modify or enhance the Licensed Program, all such
obligations being the responsibility of Licensee.
4.2 Copy Limitations. Licensee shall be
entitled to receive from Licensor one copy of the Licensed Program and related
Documentation, and the Licensed Technical Information. Licensee shall keep a
record of the location of each and every copy of the Licensed Program that it
makes and shall maintain such copies in locations consistent with Licensee's
confidentiality obligations as set forth in Article V hereof. Licensee shall
reproduce without alteration any disclaimers, legends and proprietary rights
notices on all copies of the Licensed Program and related Documentation and the
Licensed Technical Information.
4.3 MODIFICATION OF LICENSED
WORK.
(a) Licensee shall have the right to
make Modifications of the Licensed Work, including derivatives, provided that
such Modifications, and all patents, copyrights and trademarks relating thereto,
shall remain the property of the Licensor from the moment of their creation,
subject to the Licensee's license rights hereunder. Licensee shall provide one
copy of any Modification of the Licensed Work to Licensor promptly upon request.
Licensee shall obtain from each and every individual or entity who makes a
Modification of the Licensed Work an assignment of all rights to Licensor,
including but not limited to copyright, whether or not such contribution may be
a "work made for hire." Prior to the commencement of work by such individuals or
entities, Licensee shall have each individual or entity sign a document in
reasonable form acknowledging that all rights in their respective contributions
will be assigned to Licensor whether or not such contributions are works made
for hire.
(b) Licensor may from time to time
release Modifications developed by Licensor, subject to the Licensee's license
rights hereunder. Licensor will provide one copy of such Modifications to
Licensee. The parties shall reflect the incorporation into the Licensed Work of
any Modification developed by Licensor in the royalty schedule for the Licensed
Work after good faith negotiations. Notwithstanding, Licensee acknowledges and
agrees that the Licensor shall have no obligation to make Modifications of the
Licensed Work.
ARTICLE
V
CONFIDENTIALITY
5.1 CONFIDENTIALITY.
(a) NONDISCLOSURE. Licensee shall
maintain in confidence and shall not disclose to any third Party (except an
authorized sublicensee) the Confidential Information received pursuant to this,
without the prior written consent of Licensor. The foregoing obligation shall
not apply to:
(i) information that is known to
Licensee or independently developed by Licensee prior to the time of disclosure,
to the extent evidenced by written records promptly disclosed to Licensor upon
receipt of the Confidential Information. This exception shall not apply to
information learned by Licensee from any employee or contractor who was
previously engaged by, or a student of, Licensor, with responsibility for the
development or use of the Licensed Work;
(ii) information disclosed to Licensee
by a third party that has a right to make such disclosure;
(iii) information that becomes
patented, published or otherwise part of the public domain as a result of acts
by the Licensor or by a third person who has the right to make such disclosure;
or
(iv) information that is required to
be disclosed by order of any governmental authority or a court of competent
jurisdiction; provided that Licensee shall notify the Licensor if it believes
such disclosure is required and shall use its best efforts to obtain
confidential treatment of such information by the agency or
court.
(b) USE OF CONFIDENTIAL INFORMATION.
Licensee shall ensure that all of its employees and contractors having access to
the Confidential Information of Licensor are obligated in writing to abide by
Licensee's obligations hereunder. Licensee shall use the Confidential
Information only for the purposes contemplated under this
Agreement.
(c) NO OBLIGATION BY LICENSOR.
Licensor shall not be obligated to accept any Confidential Information of the
Licensee. If Licensee desires to furnish any of Licensee's Confidential
Information to any Licensor personnel, Licensee may request such individual to
sign a confidentiality agreement with Licensee in form and substance
satisfactory to Licensor, as attached hereto in Exhibit B. The Licensor bears no
institutional responsibility for maintaining the confidentiality of any
Confidential Information of Licensee.
(d) COPYRIGHT NOTICE. The placement of
a copyright notice by Licensor on the Licensed Work, or any portion thereof,
shall not be construed to mean that the program or information has been
published. Such placement will not release Licensee from its obligations of
confidentiality hereunder.
5.2 INJUNCTIVE RELIEF. Because damages
at law will be an inadequate remedy for breach of any of the covenants, promises
and agreements contained in this Article V hereof, Licensor shall be entitled to
injunctive relief in any state or federal court located within Xxxxxx County,
Georgia including specific performance or an order enjoining the breaching party
from any threatened or actual breach of such covenants, promises or agreements.
Licensee hereby waives any objection it may have to the personal jurisdiction or
venue of any such court with respect to any such action. The rights set forth in
this Section shall be in addition to any other rights that Licensor may have at
law or in equity.
ARTICLE
VI
WARRANTIES AND
REPRESENTATIONS
6.1 REPRESENTATIONS AND WARRANTIES OF
LICENSOR. The Licensor represents and warrants to Licensee that this Agreement,
when executed and delivered by Licensor, will be the legal, valid and binding
obligation of Licensor, enforceable against Licensor in accordance with its
terms. Licensor also represents to Licensee that Licensor has not received any
written notice that the Licensed Work infringes the proprietary rights of any
third party. These representations are to the knowledge of Licensor but Licensor
has made no independent investigation of the matters that are subject to these
representations.
6.2 REPRESENTATION AND WARRANTIES OF
LICENSEE. Licensee represents and warrants to Licensor as
follows:
(a) is a good corporation duly
organized, validly existing and in good standing under the laws of Delaware, and
has all requisite corporate power and authority to execute, deliver and perform
this Agreement;
(b) This Agreement, when executed and
delivered by Licensee, will be the legal, valid and binding obligation of
Licensee, enforceable against Licensee in accordance with its terms; and
(c) The execution, delivery and
performance of this Agreement by Licensee does not conflict with, or constitute
a breach or default under, (i) the charter documents of Licensee, (ii) any law,
order, judgment or governmental rule or regulation applicable to Licensee, or
(iii) any provision of any agreement, contract, commitment or instrument to
which Licensee is a party; and the execution, delivery and performance of this
Agreement by Licensee does not require the consent, approval or authorization
of, or notice or declaration to or filing or registration with, any governmental
or regulatory authority.
ARTICLE
VII
LIMITATION ON
LIABILITY AND INDEMNIFICATION
7.1 NO WARRANTIES; LIMITATION ON
LIABILITY. EXCEPT AS EXPLICITLY SET FORTH IN SECTION 6.1 HEREOF, THE LICENSED
PROGRAM AND LICENSED TECHNICAL INFORMATION IS PROVIDED ON AN "AS IS" BASIS AND
LICENSOR MAKES NO REPRESENTATIONS OR WARRANTEES, EXPRESS OR IMPLIED, WITH
RESPECT TO THE LICENSED PROGRAM AND LICENSED TECHNICAL INFORMATION. BY WAY OF
EXAMPLE BUT NOT OF LIMITATION, THE LICENSOR MAKES NO REPRESENTATIONS OR
WARRANTEES (i) OF COMMERCIAL UTILITY, (ii) OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE, OR (iii) THAT THE USE OF THE LICENSED PROGRAM AND LICENSED
TECHNICAL INFORMATION WILL NOT INFRINGE ANY PATENT, COPYRIGHT OR TRADEMARK OR
OTHER PROPRIETARY OR PROPERTY RIGHTS OF OTHERS. EXCEPT AS EXPRESSLY PROVIDED
HEREIN, LICENSOR DISCLAIMS ANY WARRANTY THAT THE LICENSED PROGRAM AND LICENSED
TECHNICAL INFORMATION IS FREE FROM THE RIGHTFUL CLAIMS OF ANY THIRD PARTY.
LICENSOR SHALL NOT BE LIABLE TO LICENSEE, LICENSEE'S SUCCESSORS OR ASSIGNS, OR
ANY OTHER THIRD PARTY WITH RESPECT TO ANY CLAIM ON ACCOUNT OF, OR ARISING FROM
THE USE OF INFORMATION IN CONNECTION WITH THE LICENSED PROGRAM AND LICENSED
TECHNICAL INFORMATION SUPPLIED HEREUNDER OR THE USE OR LICENSE OF THE LICENSED
PROGRAM AND LICENSED TECHNICAL INFORMATION OR ANY OTHER MATERIAL OR ITEM DERIVED
THEREFROM. LICENSOR SHALL NOT BE LIABLE TO LICENSEE, OR ANY OTHER PERSON FOR ANY
LOSS OF PROFITS, LOSS OF BUSINESS OR INTERRUPTION OF BUSINESS, OR FOR ANY
INDIRECT, SPECIAL OR CONSEQUENTIAL DAMAGES OF ANY KIND INCURRED BY LICENSEE OR
ANY OTHER PERSON WHETHER UNDER THIS AGREEMENT OR OTHERWISE, EVEN IF LICENSOR HAS
BEEN ADVISED OF THE POSSIBILITY OF SUCH LOSS.
7.2 LICENSEE INDEMNIFICATION. Licensee
will indemnify and hold harmless Licensor, its, officers, agents and employees
(collectively, the "Indemnified Parties"), from and against any and all
liability, loss, damage, action, claim or expense suffered or incurred by the
Indemnified Parties (including reasonable attorney's fees) (individually, a
"Liability" and collectively, the "Liabilities") which results from or arises
out of (a) the use of the Licensed Work by Licensee, its Affiliates, assignees,
vendors or other third parties; (b) breach by Licensee of any covenant or
agreement contained in this Agreement; and (c) the successful enforcement by an
indemnified Party of its right under this Section 7.2. The indemnification
obligation under clause (a) shall be mitigated by the sole negligence of the
Indemnified Party. Without limiting the foregoing, Licensee will indemnify and
hold harmless the Indemnified Parties from and against any Liabilities resulting
from:
(a) Any claim of any kind related to
the use by a third party of the Licensed Work by Licensee, its Affiliates,
assignees, or other third parties; and
(b) claim by a third party that the
Licensed work infringes or violates any patent, copyright, trademark or other
intellectual property rights of such third party.
7.3 PROCEDURES. The Indemnified Party
shall promptly notify Licensee of any claim or action giving rise to a Liability
that is subject to the provisions of Section 7.2. Licensee shall have the right
to defend any such claim or action, at its cost and expense. Licensee shall not
settle or compromise any such claim or action in a manner that imposes any
restrictions or obligations on Licensor or grants any rights to the Licensed
Work, without Licensor's written consent, which consent shall not be
unreasonably withheld. If Licensee fails or declines to assume the defense of
any such claim or action within thirty (30) days after notice thereof, Licensor
may assume the defense of such claim or action for the account and at the risk
of Licensee, and any Liability related thereto shall be conclusively deemed a
liability of Licensee. Licensee shall pay promptly to the Indemnified Party any
Liabilities to which the foregoing indemnify relates, as incurred. The
indemnification rights of Licensor or other indemnified Party contained herein
are in addition to all other rights which such indemnified Party may have at law
or in equity or otherwise.
7.4 LIABILITY INSURANCE. By not later
than January 1, 2002 and during the remaining Term of this Agreement, Licensee
shall maintain general liability and product liability, insurance in amounts not
less than $1,000,000 per incident and $1,000,000 in the aggregate, issued by an
insurance company rated AA or better and naming Licensor as an additional
insured. The minimum insurance amounts specified herein shall not be deemed a
limitation on Licensee's indemnification liability under this Agreement.
Licensee shall provide Licensor with copies of the endorsements to such
policies, upon request of Licensor. Licensee shall notify the Licensor at least
thirty (30) days prior to cancellation of any such coverage.
ARTICLE
VIII
PROPRIETARY
RIGHTS AND INFRINGEMENT
8.1 PROPRIETARY RIGHTS
PROTECTION.
(a) LICENSOR CONTROL. Licensor shall
be responsible for and shall control the preparation, prosecution and
maintenance of all copyrights and patent rights pertaining to the Licensed Work.
Upon Licensor’s request, Licensee shall reimburse Licensor for all
documented expenses (including legal fees, filing and maintenance fees or other
governmental charges) incurred in connection with the filing, prosecution and
maintenance of any such rights.
(b) LICENSEE OBLIGATIONS. Licensee and
Licensor shall mutually determine the countries where copyrights and patents
pertaining to the Licensed Work will be prosecuted and maintained. If Licensee
declines to pay for such prosecution and maintenance costs in any jurisdiction,
Licensor may do so at its cost and expense but such rights shall be excluded
from the definition of Licensed Work.
(c) LICENSEE PROSECUTION. If Licensor
elects not file, prosecute or maintain any copyright to the Licensed Work, it
shall notify Licensee at least sixty (60) days prior to taking, or not taking,
any action which would result in abandonment, withdrawal, or lapse of such
right. Licensee shall then have the right to file, prosecute or maintain the
right at its own expense.
(d) COOPERATION. Each party shall
cooperate with the other party to execute all lawful papers and instruments and
to make all rightful oaths and declarations as may be necessary in the
preparation and prosecution of all rights referred to in this Section 8.
1.
8.2 OWNERSHIP. Licensee acknowledges
that all right, title and interest in and to the Licensed Work and any
copyrights, patents, trademarks and other protection related thereto is and
shall remain in Licensor, regardless of which party prepares prosecutes or
maintains the foregoing, subject to the express license granted to Licensee
under Article II hereof.
8.3 INFRINGEMENT BY THIRD
PARTY.
(a) LICENSEE'S OBLIGATIONS. Each party
will promptly notify the other party of any infringement or possible
infringement of rights relating to the Licensed Work. Licensee shall have the
right, but not the obligation, to prosecute such infringement at its own
expense. In such event, Licensor shall cooperate with Licensee, at Licensee's
expense. Licensee shall not settle or compromise any such suit in a manner that
imposes any obligations or restrictions on Licensor or grants any rights to the
Licensed Work, without Licensor's written consent.
(b) LICENSOR'S RIGHTS. If Licensee
fails to prosecute such infringement within ninety (90) days after receiving
notice thereof, Licensor shall have the right, but not the obligation, to
prosecute such infringement at its own expense. In such event, Licensee shall
cooperate with Licensor, at Licensor's expense.
(c) RECOVERY DISTRIBUTION. Any
recovery obtained by the prosecuting party as a result of such proceeding, by
settlement or otherwise, shall be applied first to the prosecuting party, in an
amount equal to its costs and expenses of the litigation, with the remainder to
be paid to the Licensee, subject to the earned royalties due to Licensor under
Article 3 hereof.
ARTICLE
IX
TERM AND
TERMINATION
9.1 TERM. This Agreement and the
licenses granted herein shall commence on the Effective Date and shall continue,
subject to earlier termination under Sections 9.2 or 9.3 hereof, for a period of
thirty (30) years thereafter.
9.2 TERMINATION BY
LICENSOR.
(a) EVENTS OF DEFAULT. Upon the
occurrence of any of the events set forth below ("Events of Default"), Licensor
shall have the right to terminate this Agreement by giving written notice of
termination, such termination being effective with the giving of such
notice:
(i) Nonpayment of any amount payable
to Licensor that is continuing then (10) calendar days after the Licensor gives
Licensee written notice of such nonpayment;
(ii) breach by Licensee of any
covenant (other than a payment breach referred to in clause (i) above) or any
representation or warranty contained in this Agreement that is continuing sixty
(60) calendar days after Licensor gives Licensee written notice of such breach;
provided that if Licensee, using its best efforts, cannot cure such breach
within the flat sixty (60) days, the cure period shall be extended by an
additional sixty (60) calendar days, the total cure period not to exceed one
hundred twenty (120) days.
(iii) Licensee fails to comply with
the terms of the license granted under Article II hereof and such noncompliance
is continuing thirty (30) calendar days after Licensor gives Licensee notice of
such noncompliance;
(iv) Licensee becomes subject to a
Bankruptcy Event;
(v) the dissolution or cessation of
operations by Licensee;
(vi) Licensee has failed to receive
any fees for use or sublicensing of the Licensed Program by January 1,
2003.
(b) NO WAIVER. No exercise by Licensor
of any right of termination shall constitute a waiver of any right of Licensor
for recovery of any monies then due to it hereunder or any other right or remedy
Licensor may have at law or under this Agreement.
(c) Sublicenses. Any sublicense(s) in
effect at the time of such termination by Licensor will be assigned to Licensor
and will remain in fun force and effect so long as (1) Licensor is in full
compliance with the term and conditions of any such sublicense(s), and (2) such
sublicense(s) are consistent with the terms of this AGREEMENT, and (3) Licensor
has no obligation to provide any support, maintenance or other service to
sublicensee. The assignment will occur automatically upon the request of
Licensee, notwithstanding the provision of Section 9.5.
9.3 TERMINATION BY LICENSEE. Licensee
shall have the right terminate this Agreement, at any time only with cause, upon
(90) days written notice to Licensor.
9.4 RIGHTS AND DUTIES UPON TERMINATION.
Within thirty (30) days after termination of this Agreement, each party shall
return to the other party any Confidential Information of the other Party.
Licensee also shall return all copies of the Licensed Program in its possession
that are embodied in physical form to Licensor promptly upon the termination of
this Agreement.
9.5 SUBLICENSES. Any sublicenses
granted by Licensee under this Agreement may survive termination of this
Agreement in accordance with the terms of such sublicense if so requested by
Licensor, in which event the sublicense shall be assigned to
Licensor.
9.6 PROVISIONS SURVIVING TERMINATION.
Licensee's obligation to pay Royalties accrued but unpaid prior to termination
of this Agreement shall survive such termination. In addition, Sections 3.7,
3.8, 4.1, 8.2 and this 9.6 and Articles V, VI and VII and any other provisions
required to interpret the rights and obligations of the parties arising prior to
the termination date shall survive expiration or termination of this
Agreement.
ARTICLE
X
ADDITIONAL
PROVISIONS
10.1 ASSIGNMENT. This Agreement and the
rights and duties appertaining thereto may not be assigned by the Licensee,
directly or indirectly except to an Affiliate of Licensee wherein Licensee
guarantees performance of assignee or in the case of merger, acquisition or
operation of law, without first obtaining the written consent of Licensor (which
consent shall not be unreasonably withheld). Any such purported assignment,
without the written consent of Licensor, shall be null and of no effect. No
assignment shall relieve Licensee of responsibility for the performance of any
obligations that have accrued prior to such assignment.
10.2 NO WAIVER. A waiver by either
party of a breach or violation of any provision of this Agreement must be in
writing in order to be effective. No waiver will constitute or be construed as a
waiver of any subsequent breach or violation of that provision or as a waiver of
any breach or violation of any other provision of this
Agreement.
10.3 INDEPENDENT CONTRACTOR. Nothing
herein shall be deemed to establish a relationship of principal and agent
between Licensor and Licensee, nor any of their agents or employees for any
purpose whatsoever. This Agreement shall not be construed as constituting
Licensor and Licensee as partners, or as creating any other form of legal
association or arrangement that could impose liability upon one party for the
act or failure to act of the other party.
10.4 NOTICES. Any notice under this
Agreement shall be sufficiently given if sent in writing by prepaid, first
class, certified or registered mail, return receipt requested, addressed as
follows:
(a) if to Licensor,
to:
SynerMedics,
Inc.
0000 Xxxxxxx
Xxxx
Xxxxx
000
Xxxxxxx, Xxxxxxx
00000
Attention: Chief
Executive Officer
(b) if to Licensee, to:
InnerSpace
Corporation
0000
Xxxxxxxxx
Xxxxx
0000
Xxxxxxx, Xxxxxxx
00000
Attention: Chief
Executive Officer
or to such other addresses as may be
designated from time to time by notice given in accordance with the terms of
this Section.
10.5 ENTIRE AGREEMENT. This Agreement
embodies the entire understanding between the parties relating to the subject
matter hereof and supersedes all prior understandings and agreements, whether
written or oral. This Agreement may not be varied except by a written document
signed by duly authorized representatives of both parties.
10.6 SEVERABILITY. Any of the
provisions of this Agreement which are determined to be invalid or unenforceable
in any jurisdiction shall be ineffective to the extent of such invalidity or
unenforceability in such jurisdiction, without rendering invalid or
unenforceable the remaining provisions hereof or affecting the validity or
unenforceability of any of the terms of this Agreement in any other
jurisdiction.
10.7 HEADINGS. Any headings and
captions used in this Agreement are for convenience of reference only and shall
not affect its construction or interpretation.
10.8 NO THIRD PARTY BENEFITS. Nothing
in this Agreement, express or implied, is intended to confer on any person other
than the parties hereto or their permitted assigns, any benefits, rights or
remedies.
10.9 GOVERNING LAW. This Agreement
shall be construed, governed, interpreted and applied in accordance with the
laws of the State of Georgia, without giving effect to conflict of law
provisions.
10.10 COUNTERPARTS. This Agreement
shall become binding when any one or more counterparts hereof, individually or
taken together, shall bear the signatures of each of the parties hereto. This
Agreement may be executed in any number of counterparts, each of which shall be
deemed an original as against the party whose signature appears thereon, but all
of which together shall constitute but one and the same
instrument.
INTENDING TO BE BOUND, the parties
hereto execute this Agreement through their authorized
representatives.
|
SYNERMEDICS, INC.
By:__________________________________
Chief Executive
Officer
|
|
INNERSPACE CORPORATION
By:__________________________________
Chief Executive
Officer
|
EXHIBIT
A
END USER
AGREEMENT
PLEASE READ THIS DOCUMENT CAREFULLY.
THIS IS A LEGAL AGREEMENT BETWEEN SUB-LICENSEE ("YOU"), THE END USER, AND
INNERSPACE (“INNERSPACE”).
1. GRANT OF LICENSE. The application,
demonstration and system software ("the SOFTWARE") and related documentation are
licensed to you by INNERSPACE. You own the tape on which the SOFTWARE is
recorded but INNERSPACE’S licensor, SynerMedics, Inc., ("SYNERMEDICS")
retains title to the SOFTWARE. This License allows you to use the SOFTWARE and
to make one copy of the SOFTWARE in a machine-readable form for backup purposes
only. You must reproduce on such copy the SynerMedics copyright notice and any
other proprietary legends that were on the original copy of the SOFTWARE. This
License is not transferable. The terms of this License extends to the backup
copy.
2. INTELLECTUAL PROPERTY RIGHTS. The
software is owned by SynerMedics, and is protected r by United States patent,
copyright laws and international treaty provisions. Therefore, you must treat
the SOFTWARE like any other patented product or copyrighted material (such as a
book or musical recording) except that you may either: (a) make one copy of the
SOFTWARE solely for backup or archival purposes, or (b) transfer the software to
a single hard disk, provided that you keep the original solely for backup or
archival purposes. You may not copy the written material accompanying the
SOFTWARE. You acknowledge the existence of valid patent rights and a valid
copyright in the SOFTWARE and that both the SOFTWARE and copyright are the sole
and exclusive property of SynerMedics. By accepting this license, you do not
become the owner of either the SOFTWARE, the copyright or the patent
rights.
3. OTHER RESTRICTIONS. You may not
transfer, sell, rent or lease either the SOFTWARE, the backup copy of the
SOFTWARE or the related documentation to another party. You may not reverse
engineer, decompile, or disassemble the SOFTWARE. You may not in any manner
re-create or assist another in re-creating the source code for the SOFTWARE. You
may not make any revisions to or enhancements of the SOFTWARE. "Revisions" as
made in this license includes all corrections or modifications that add no
substantial feature or function to the SOFTWARE. "Enhancements" includes all
upgrades or improvements that add a feature or function to the
SOFTWARE.
4. EXPORT LAW ASSURANCES. the SOFTWARE
and documentation are provided with restricted rights. Use, duplication, or
disclosure by the Government is subject to restrictions as set forth in
subparagraph (c)(1)(ii) of The Rights in Technical Data and Computer Software
clause at DFARS 252.227-7013, or subparagraphs (c)(1) and (2) of the Commercial
Computer Software-Restricted Rights at 48 CFR 52.227-19, as applicable.
Contractor/manufacturer is SynerMedics, Inc.
5. TERMINATION. This license is
effective until terminated. You may terminate this License at any time by
destroying the SOFTWARE and all copies thereof. This License will terminate
immediately without notice from INNERSPACE or SynerMedics if you fail to comply
with any provision of this License. Upon termination, you must destroy the
SOFTWARE and all copies thereof.
6. LIMITED WARRANTY ON MEDIA.
INNERSPACE warrants the tape on which Health Choice is recorded to be free from
defects in materials and workmanship under normal use for a period of ninety
(90) days from the date of purchase as evidenced by a copy of the receipt.
INNERSPACE's entire liability and your exclusive remedy will be replacement of
the disk not meeting INNERSPACE's limited warranty, if returned to INNERSPACE or
an INNERSPACE authorized representative with a copy of the receipt. INNERSPACE
will have no responsibility to replace a tape damaged by accident, abuse or
misapplication. ANY IMPLIED WARRANTIES ON THE TAPE, INCLUDING THE IMPLIED
WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE, ARE LIMITED
IN DURATION TO NINETY (90) DAYS FROM THE DATE Of DELIVERY.
7. DISCLAIMER OF WARRANTY ON
SOFTWARE. You expressly acknowledge and agree that use of the SOFTWARE is at
your sole risk. The SOFTWARE and related documentation are provided "AS IS" and
without warranty of any kind and INNERSPACE EXPRESSLY DISCLAIMS ALL WARRANTIES,
EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, THE IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. INNERSPACE DOES NOT
WARRANT THAT THE FUNCTIONS CONTAINED IN the SOFTWARE WILL MEET YOUR
REQUIREMENTS, OR THAT THE OPERATION OF the SOFTWARE WILL BE UNINTERRUPTED OR
ERROR-FREE, OR THAT DEFECTS IN the SOFTWARE WILL BE CORRECTED. FURTHERMORE,
INNERSPACE DOES NOT WARRANT OR MAKE ANY REPRESENTATIONS REGARDING THE USE OR THE
RESULTS OF THE USE OF the SOFTWARE OR RELATED DOCUMENTATION [OR THAT the
SOFTWARE WILL NOT INFRINGE ANY PATENT, COPYRIGHT OR TRADEMARK OR OTHER
PROPRIETARY RIGHTS OF OTHERS]. NO ORAL OR WRITTEN INFORMATION OR ADVICE GIVEN BY
INNERSPACE OR A INNERSPACE AUTHORIZED REPRESENTATIVE SHALL CREATE A WARRANTY OR
IN ANY WAY INCREASE THE SCOPE OF THIS WARRANTY; SHOULD the SOFTWARE PROVE
DEFECTIVE, YOU (AND NOT INNERSPACE OR A INNERSPACE AUTHORIZED REPRESENTATIVE)
ASSUME THE ENTIRE COST OF ALL NECESSARY SERVICING, REPAIR OR
CORRECTION.
8. LIMITATION OF LIABILITY. UNDER
NO CIRCUMSTANCES, INCLUDING NEGLIGENCE, SHALL INNERSPACE BE LIABLE FOR ANY
INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES THAT RESULT FROM THE USE OR
INABILITY TO USE the SOFTWARE OR RELATED DOCUMENTATION, EVEN IF INNERSPACE OR A
INNERSPACE AUTHORIZED REPRESENTATIVE HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES. In no event shall INNERSPACE's total liability to you for all
damages, losses, and causes of action (whether in contract, tort including
negligence or otherwise) exceed the amount paid by you for the
SOFTWARE.
9. [INDEMNIFICATION. You agree to
indemnify and hold harmless INNERSPACE, SYNERMEDICS, their respective trustees,
directors, officers, employees and agents (collectively "Indemnified Parties")
from and again any and all liability, loss, damage, action, claim or expense
suffered or incurred by the Indemnified Parties, including reasonable attorney's
fees (individually a "Liability" and collectively "Liabilities") which result
from or arise out of any use of the SOFTWARE by you, your officers, employees,
agents or other third parties, or your breach of any covenant contained in this
agreement.]
10. CONTROLLING LAW AND SEVERABILITY.
This License shall be governed by and construed in accordance with the laws of
the State of Georgia. If for any reason a court of competent jurisdiction finds
any provision of this License, or portion thereof, to be unenforceable, that
provision of the License shall be enforced to the maximum extent permissible so
as to effect the intent of the parties, and the remainder of this License shall
continue in full force and effect.
11. COMPLETE AGREEMENT. This License
constitutes the entire agreement between the parties with respect to the use of
the SOFTWARE and related documentation, and supersedes all prior or
contemporaneous understandings or agreements, written or oral, regarding such
subject matter.
_____________________________________________________________
NAME
_____________________________________________________________
TITLE
_____________________________________________________________
DATE
Licensee shall use best efforts to
include bracketed provisions in all sublicense agreements.
EXHIBIT B
CONFIDENTIALITY
AGREEMENT
InnerSpace Corporation ("INNERSPACE"),
a Delaware Corporation, located at 0000 Xxxxxxxxx, Xxxxx 0000, Xxxxxxx, Xxxxxxx
00000
AND
-------------------------------------------------------------------------------
From time to time, before and after the
date hereof, each party may, at the other's request, disclose to the other
certain of its proprietary and/or confidential information including, but not
limited to: company know-how, techniques and methodology(ies), statistical
information, sample reports, software code and/or algorithms, or, among other
things, notes, drawings, etc. related to the other's business. In addition,
either party may make certain of its personnel, consultants, affiliates and/or
agents accessible to the other. The above items and all data related thereto
are collectively referred to, for convenience, as the
"Information".
All such Information when submitted by
either party shall clearly reflect that it is confidential and the other hereby
acknowledges receipt of same under those conditions.
With respect to any and all the
foregoing Information, at any time provided by either party to the other,
anything obtained therefrom, or from any discussions between the parties or with
any of their employees, affiliates, consultants, representatives or agents, the
undersigned and each of their respective personnel, directors, attorneys and
consultants (collectively hereafter referred to for convenience as "Parties")
agree as follows:
(1) Parties will not disclose to
anyone or any entity, at any time or under any circumstances and for any purpose
whatsoever any of the Information. Such Information will be used only for its
internal purposes in connection with its relationship with the
other.
(2) Parties will not copy (except for
purely internal use as permitted hereby) or disseminate any of the Information
and will destroy or return anything furnished by the other (including copies it
has made) at the completion of its review and furnish the other with a
certificate of compliance upon the other's request.
(3) Parties will make no use of any of
the Information independently for its own purposes.
(4) Information supplied by the
Parties hereunder shall be used solely for the purposes of the relationship
between the Parties.
Notwithstanding the foregoing, the
above shall not apply if, and only if, one or more of the following are in
effect:
(a) the Information is clearly in the
public domain at the time of disclosure;
(b) becomes generally available to the
public other than as a result of a disclosure; or
(c) the Information is known to the
other prior to its disclosure by the disclosing party.
To be free of the restrictions of this
Agreement in either (a) or (b) above, the receiving party must notify the
disclosing party in writing as soon as practicable after the receipt of same.
Parties further agree that at such time as Parties are no longer making use of
the Information or if the relationship terminates, the Parties will cease to
make any use of the Information and will: 1) return the Information to whichever
party provided it, or 2) destroy the same and furnish to the providing party an
affidavit duly executed before a notary public by an authorized official, under
oath, certifying the destruction of the Information at the providing party's
written request.
NOTWITHSTANDING THE FOREGOING, THIS
CONFIDENTIALITY AGREEMENT IN NO WAY SUPERSEDES LICENSOR'S AND ITS EMPLOYEES'
RIGHTS, INCLUDING BUT NOT LIMITED TO ANY RIGHTS TO PUBLICATION, UNDER THE
LICENSING AGREEMENT BETWEEN LICENSOR OF DELAWARE AND THE CENTER FOR the
SOFTWARE.
By my authorized signature below, I
hereby agree to the above: