EX-10
EXHIBIT 10(c)(11)
INTER*ACT SYSTEMS, INCORPORATED
00 XXXXXXXX XXXXXX
XXXXXXX, XXXXXXXXXXX 00000
October 2, 1998
Xxxxxx X. Xxxxxx
00000 Xxxxxxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxxxx 00000
Xxxxx X. Xxxxxx, Trustee
under the XXXXXX AND XXXXX X. XXXXXX
FAMILY TRUST dated May 18, 1995
0000 Xxxxxxx Xxxxx Xxxxxxx, Xxxxx 000
Xxxxxxxx, Xxxxxxxxxx 00000
This letter amends in certain respects the present agreement (the "License
Agreement") whereby Inter*Act Systems, Incorporated, a North Carolina
corporation ("Inter*Act") (formerly Interactive Networks Incorporated), has the
exclusive (to the extent of your rights therein) worldwide right and license to
manufacture, use, sell and grant sublicenses with respect to United States
Patent Number 4,554,446, United States Patent Number 4,672,377 and United States
Patent Number 5,305,195 and improvements thereon (collectively, the "Patents")
and has agreed to pay you certain royalties. The Agreement is reflected in: (i)
a License Agreement dated as of December 31, 1990 (the "Original License
Agreement") between Xxxxxx X. Xxxxxx, an individual ("Xxxxxx"), and Xxxxxx
Xxxxxx, an individual (deceased) ("Singer"), as licensors and Xxxxxxx X. Xxxxx,
an individual ("Xxxxx"), as original licensee; (ii) an Assignment of License
Agreement dated as of June 15, 1993 (the "Assignment") among Murphy, Singer,
Xxxxx and Network Licensing, Inc., a North Carolina corporation and wholly owned
subsidiary of Inter*Act ("Network"); (iii) an Addendum to License Agreement
dated as of June 15, 1993 (the "Addendum") among Xxxxxx, Singer and Network;
(iv) a Sublicense Agreement dated as of June 16, 1993 between Inter*Act and
Network (the "Sublicense"); (v) a Settlement Agreement and Mutual General
Release dated as of September 6, 1994 (the "Settlement Agreement") among Xxxxxx
and Singer, their spouses, Network and Inter*Act; and, (vi) a Letter Agreement
dated July 22, 1996 (the "Letter Agreement") among Xxxxxx, Singer and Inter*Act.
The Original License Agreement, as modified by the Assignment, Addendum,
Settlement Agreement and Letter Agreement, is referred to herein as the "License
Agreement". The rights of
Network in and to the License Agreement have been assigned to Inter*Act by
instrument dated July 23, 1996. The rights of Singer in and to the Patents and
the License Agreement have been assigned to Xxxxxx Xxxxxx and Xxxxx X. Xxxxxx,
Trustees, or their Successor, under the XXXXXX AND XXXXX X. XXXXXX FAMILY TRUST
dated May 18, 1995.
The License Agreement is amended as follows:
1. Paragraph G.3 of the License Agreement is amended in its entirety to
read as follows:
If Licensee desires to file an infringement action, Licensor must be
notified and Licensee will bear all costs, expenses and attorneys'
fees associated with the lawsuit. In the event of recovery from such
action instituted by Licensee, all amounts recovered, whether cash or
other property, will belong to Licensee and amounts recovered, whether
cash or other property, as a result of infringement of the Patents in
excess of the costs, expenses and attorneys' fees of such action (the
"Infringement Recoveries") will be subject to the royalty provisions
of paragraph B; provided, however, that a royalty of seven percent
(7%) shall be paid on the Infringement Recoveries until such time as
Licensor has received the aggregate sum of Ten Million Dollars
($10,000,000) in royalties under paragraph B and this subparagraph G.3
of this Agreement. Thereafter Infringement Recoveries will be subject
to a royalty of six percent (6%) and other gross collected revenues
referred to in paragraph B will be subject to a royalty of one percent
(1%) as provided in paragraph B.
2. Paragraph D.3 of the License Agreement is amended in its entirety to
read as follows:
Either party may terminate this License Agreement at any time after
only the minimum payments called for in Paragraph B.1 hereof shall
have been paid to the Licensor for any period of sixty-two months (62)
consecutive months beginning on or after October 1, 1998.
If the following is in accordance with our agreements, please sign the enclosed
copy of this letter and return it to us.
INTER*ACT SYSTEMS, INCORPORATED
/s/Xxxxxxx X. Xxxxxxx
___________________________________________
Xxxxxxx X. Xxxxxxx, Chief Executive Officer
AGREED TO AND ACCEPTED:
/s/Xxxxxx X. Xxxxxx
_____________________
by Xxxxxx X. Xxxxxx Xx. Attorney-in-fact
_________________________________________
Xxxxxx X. Xxxxxx
/s/Xxxxx X. Xxxxxx, Trustee
_________________________________________
Xxxxx X. Xxxxxx, Trustee under the
XXXXXX AND XXXXX X. XXXXXX
FAMILY TRUST dated May 1, 1995
