GRANT-BACK LICENSE AGREEMENT
Exhibit 10.3
This
License Agreement (this “Agreement”) is entered into as of
November 15, 2019 (the “Effective Date”) between
IOTA
COMMUNICATIONS, INC., a Delaware corporation,
(“Licensor”),
and LINK
LABS, INC. , a Delaware company (“Licensee”). “Party” means Licensor or Licensee,
as the context requires, and “Parties” means Licensor and
Licensee.
RECITALS
A.
Licensor and
Licensee are parties to a certain Asset Purchase Agreement dated as
of November 15, 2019 (“Purchase Agreement”) pursuant to
which Licensee is selling certain Acquired Assets (as defined in
the Purchase Agreement) to Licensor (as defined
below).
B.
Execution and
delivery of this Agreement is a condition to Closing under the
Purchase Agreement.
THEREFORE, for good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, the parties
hereby agree as follows:
AGREEMENT
1.
DEFINITIONS. As used in this Agreement,
capitalized terms have the meanings given in this Section 1 or elsewhere in this Agreement. Capitalized
terms used but not defined in this Agreement have the meanings
given in the Purchase Agreement. Unless otherwise specified,
references to Sections refer to Sections of this
Agreement.
1.1.
“Affiliate” is defined in
the Purchase Agreement.
1.2.
“Change in Control” of
Licensee means (a) any consolidation or merger of Licensee with or
into any other entity in which the holders of such Licensee’s
outstanding shares immediately before such consolidation or merger
do not, immediately after such consolidation or merger, retain
stock representing a majority of the voting power of the surviving
entity or stock representing a majority of the voting power of an
entity that wholly owns, directly or indirectly, the surviving
entity; (b) the sale, transfer, or assignment of securities of
Licensee representing a majority of the voting power of all of
Licensee’s outstanding voting securities to an acquiring
party or group; (c) the sale of all or substantially all of
Licensee’s assets; or (d) any series of related transactions
that would fall within clause “(a),” “(b),”
or “(c)” above if viewed as a single
transaction.
1.3.
“Field of Use” means: (a)
all fields outside of the IOTA Exclusive Business.
1.4.
“Exclusive License Term”
means five (5) years from the Effective Date of this
Agreement.
2.
LICENSE
AND RELATED OBLIGATIONS.
2.1.
License Grant. Subject to the terms and
conditions of this Agreement, Licensor hereby grants to Licensee
and its Affiliates, solely in the Field of Use, during the
Exclusive License Term, a world-wide, irrevocable, royalty-free,
exclusive license to the Purchased Intellectual Property (as
defined in the Purchase Agreement) that is assigned to Licensor by
Licensee under the Purchase Agreement, to (a) use, copy, license,
sublicense, distribute directly and indirectly, market, sell, offer
for sale, import, export, and create and own derivative works of
the Purchased Intellectual Property and products and services
incorporating or based on such Purchased Intellectual Property, and
to do any of the foregoing with respect to derivative works of such
Purchased Intellectual Property. At the end of the Exclusive
License Term, the foregoing license grant shall become perpetual,
irrevocable, and non-exclusive in the Field of Use.
2.2.
License Restrictions. Licensee shall not
use, copy, or distribute any Purchased Intellectual Property or
products or services incorporating the Purchased Intellectual
Property outside the Field of Use. For end user licenses, Licensee
shall ensure that end user license agreements shall not include any
terms that (i) encumber the Purchased Intellectual Property, (ii)
permit use outside the scope of the Field of Use (iii) permit
reverse engineering or attempts to discover the source code of any
software included in the Purchased Intellectual
Property.
2.3.
Proprietary Rights. The Licensed
Products and all Purchased Intellectual Property therein, are the
exclusive property of Licensor on and after the Effective Date. All
rights in and to the Licensed Products not expressly granted to
Licensee in this Agreement are reserved by Licensor. Except as
expressly provided in Section 2.1, nothing in this Agreement confers, by
implication, estoppel, or otherwise, upon Licensee, a license or
other rights in or to any Rights of Licensor or its Affiliates. If
either Licensee or any of its Affiliates or Licensor or any of its
Affiliates creates or develops any modification or derivative works
of the Purchased Intellectual Property or products or services
incorporating the Purchased Intellectual Property, such
modification or derivative work shall be owned by the respective
party that made the modification or derivative work.
2.4.
No Service Obligations. Licensor is not
required to provide any maintenance, support, or other services
with respect to the Purchased Intellectual Property licensed under
this Agreement.
3.
FEES. No fees or payments shall be
required under this Agreement.
4.
WARRANTY;
DISCLAIMER.
4.2.
DISCLAIMER. THE PARTIES
ACKNOWLEDGE AND AGREE THAT THE LICENSED PRODUCTS WERE ORIGINALLY
OWNED AND DEVELOPED BY LICENSEE, AND LICENSEE BEARS ALL RISK WITH
RESPECT TO THE LICENSED PRODUCTS. THE LICENSED PRODUCTS AND
LICENSES GRANTED HEREIN ARE PROVIDED "AS-IS" AND EXCEPT AS
EXPRESSLY PROVIDED IN SECTION 4.1,
LICENSOR AND ITS AFFILIATES MAKE NO WARRANTIES, WHETHER EXPRESS,
IMPLIED, OR STATUTORY, REGARDING THE LICENSED PRODUCTS, THE
LICENSES GRANTED HEREIN, OR ANY OTHER TECHNOLOGY, MATERIALS OR
SERVICES PROVIDED UNDER THIS AGREEMENT, INCLUDING ANY WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE, AND
NON-INFRINGEMENT OF THIRD-PARTY RIGHTS.
5.
LIMITATION OF LIABILITY. In no event
will either party be liable to the other for any lost profits or
revenues or any consequential, indirect, punitive, exemplary,
special, or incidental damages arising from or relating to this
Agreement or the Purchased Intellectual Property, or any other
rights, technology, materials, or services provided hereunder,
whether in contract or tort or otherwise, even if a party knew or
should have known of the possibility of such damages. Each
party’s total cumulative liability arising from or relating
to this Agreement or the Licensed Products, or any other rights,
technology, materials, or services provided hereunder will not
exceed one thousand United States Dollars (US $1,000). The Parties
acknowledge that the terms of this Section 6 reflect the allocation of risk set forth in
this Agreement and that the Parties would not enter into this
Agreement without these limitations of liability.
6.
GENERAL.
6.1.
Notice. Any notice, approval,
authorization, consent, or other communication required or
permitted to be delivered to either Party under this Agreement must
be in writing and will be deemed properly delivered and given on
receipt (or when delivery is refused) if delivered (a) by hand, or
(b) by courier or express delivery service, or (c) by facsimile
(with a copy sent by postage prepaid first-class mail) to the
address or facsimile number set forth beneath the name of such
Party below (or to such other address or facsimile number as such
Party may have specified in a written notice to the other
Party):
If to
Licensor, to:
000
Xxxxx Xxxxxx
Xxx
Xxxx, Xxxxxxxxxxxx 00000
Attention: Chief
Executive Officer
With a
copy to:
Lucosky
Xxxxxxxx LLP
000
Xxxx Xxxxxx Xxxxx, 0xx Xxxxx
Xxxxxx,
Xxx Xxxxxx 00000
Attention:
Xxxxx Xxxxxxxx
If to
Licensee, to:
Link
Labs, Inc.
000
Xxxxxxx Xxxxx, Xxxxx 000
Xxxxxxxxx, XX
00000
Attn:
Chief Executive Officer
With a
copy to:
Xxxxxx,
Xxxxx & Bockius LLP
0000
Xxxxxxxxxxxx Xxxxxx, XX
Xxxxxxxxxx,
XX 00000
Attention:
Xxxxxx X. Xxx, Esq.
6.2.
Governing Law; Venue. This Agreement
will be construed in accordance with and governed in all respects
by the laws of the United States of America and the State of
Delaware without regard to any conflicts of law principles that
would result in application of laws of any other jurisdiction. The
United Nations Convention on Contracts for the International Sale
of Goods shall not apply to this Agreement. Any legal action or
other legal proceeding relating to this Agreement or the
enforcement of any provision of this Agreement must be brought or
otherwise commenced in any state court located in the state of
Delaware or any federal court located in the state of Delaware.
Each Party expressly and irrevocably consents and submits to the
jurisdiction of each such state and federal court (and each
appellate court located in the state of Delaware in connection with
any such legal proceeding.
6.3.
Export Compliance. Licensee shall comply
with all applicable export and import control laws and regulations.
In particular, Licensee shall not export or re-export any Licensed
Products without all required U.S. and foreign government
licenses.
6.4.
Assignment. Licensee shall not assign
this Agreement without the prior written consent of Licensor;
provided, however, that Licensee may assign or transfer any of its
rights under this Agreement or delegate any of its obligations or
duties under this Agreement (by operation of law or otherwise)
without consent to an Affiliate or in connection with a transaction
involving the sale or transfer of all or substantially all of
Licensee’s assets.
6.5.
Severability. If any provision of this
Agreement is unenforceable, such provision will be changed and
interpreted to accomplish the objectives of such provision to the
greatest extent possible under applicable law and the remaining
provisions will continue in full force and effect.
6.6.
Independent Contractors. This Agreement
is not intended to establish any partnership, joint venture,
employment, or other relationship between the Parties except that
of independent contractors.
6.7.
Construction. The section headings in
this Agreement are for convenience of reference only, will not be
deemed to be a part of this Agreement, and will not be referred to
in connection with the construction or interpretation of this
Agreement. Any rule of construction to the effect that ambiguities
are to be resolved against the drafting Party will not be applied
in the construction or interpretation of this Agreement. As used in
this Agreement, the words “include” and
“including,” and variations thereof, will not be deemed
to be terms of limitation, but rather will be deemed to be followed
by the words “without limitation.” All references in
this Agreement to “Sections” are intended to refer to
sections of this Agreement. This Agreement may be executed in
several counterparts, each of which will be considered an original
and which together will be considered one and the same
agreement.
6.8.
Entire Agreement; Amendments. This
Agreement, including the Exhibits referred to herein (which are
part of this Agreement), and the Purchase Agreement contain the
entire understanding of the Parties relating to the subject matter
hereof and supersede all prior or contemporaneous agreements,
communications, and understandings between the Parties (whether
written or oral) relating to the subject matter hereof. This
Agreement may not be amended, modified, altered, or supplemented
other than by means of a written instrument that specifically
refers to this Agreement and the Parties’ intention to modify
it and that is duly executed and delivered on behalf of both
Parties.
[Signature
page follows]
IN
WITNESS WHEREOF, the Parties have executed this Agreement as of the
Effective Date.
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LINK LABS, INC.:
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By:/s/
Xxxxxxxx XxXxxxxx
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By:/s/
Xxxxxx Xxxxxxx
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Name:
Xxxxxxxx XxXxxxxx
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Name:
Xxxxxx Xxxxxxx
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Title:
Chief Executive Officer
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Title:
Chief Executive Officer
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