EX-10.6
ASSIGNMENT OF RIGHTS AND
EXCLUSIVE LICENSE
AND ASSUMPTION OF OBLIGATIONS AND SALE OF CERTAIN ASSETS
AGREEMENT FOR ASSIGNMENT OF RIGHTS AND LICENSE AND ASSUMPTIONS OF OBLIGATIONS
("Agreement"), for certain Intellectual Property and for Inventory, is made
February __, 2004, between Homeland Safety Training, Inc., ("HSTi"), and Sonoma
College, Inc., a California corporation ("Company").
RECITALS
WHEREAS HSTi has acquired the Intellectual Property, Inventory, and other assets
of Victory Technology, Inc. ("Victory"), and
WHEREAS Company desires to obtain the Intellectual Property and acquire the
Inventory that HSTi obtained from Victory,
NOW, THEREFORE, HSTi and Company, in consideration of the agreements and
covenants set forth in this Agreement and subject to the satisfaction of the
conditions set forth herein, agree as follows;
ARTICLE 1.
DEFINITIONS
SECTION 1.1. INTELLECTUAL PROPERTY. "Intellectual Property" shall mean all
intangible personal property, whether deemed patents, copyrights, trademarks,
service marks, trade names, masks, trade secrets and licenses, together with any
goodwill, owned by HSTi or for which HSTi has a license, that HSTi acquired from
Victory, and including any revisions, enhancements or derivative works made by
HSTi subsequent to the acquisition by HSTi, all as set forth Schedule 1.
ARTICLE 2.
ASSIGNMENT AND LICENSE
SECTION 2.1. STATEMENT OF ASSIGNMENT. For valuable consideration received, HSTi
assigns to Company, HSTi's entire right, title, and interest in and to the
Intellectual Property, including goodwill, as set forth in Schedule 1.A. for
which can assign such rights.
SECTION 2.2. SCOPE OF ASSIGNMENT. By this Assignment, HSTi delegates to Company
all of HSTi's duties and obligations under the Intellectual Property subject to
previous non-exclusive grants as disclosed in Schedule 1.C No share, interest,
license or assignment, or other right to any or all of the Intellectual Property
has been transferred, assigned, or granted to any other party except as
disclosed to Company in this Agreement in Schedule 1.C.
SECTION 2.3. GRANT OF EXCLUSIVE LICENSE. HSTi hereby grants to Company an
exclusive, world-wide, right and license to make, use, market, sell and offer
for sale the Intellectual Property, as set forth in Schedule 1.B., subject to
previous non-exclusive grants as disclosed in Schedule 1.C.
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ARTICLE 3.
PAYMENTS FOR ASSIGNMENT AND LICENSE
SECTION 3.1. PAYMENT. In consideration of the assignments and licenses granted
the Company under Article 2 of this Agreement, the Company agrees to grant
options to HSTi on the Company's stock equal to in value of $200,000, as of June
30, 2007, provided that the granting of such options shall be accelerated in the
same manner of Xxxx Xxxxxxx'x options under section 3.4.3 of his employment
agreement.
SECTION 3.2. SALES TAXES. Company will pay all sales taxes associated with the
licensing of the Intellectual Property or the sale of Inventory, if any.
SECTION 3.3. NO ASSUMPTION OF THIRD PARTIES' LIABILITIES. The Parties do not
assume the debts of any third party.
ARTICLE 4.
REPRESENTATIONS AND WARRANTIES OF HSTi
Section 4.1. RIGHTS TO INTELLECTUAL PROPERTY. The Intellectual Property
includes all rights necessary for Company to use the Intellectual Property
without the need for any license or consent from any third person. To the best
of the knowledge of HSTi, the past conduct of HSTi's business and use of the
Intellectual Property in HSTi's business does not infringe on any rights of any
third parties, and no third party, to the knowledge of HSTi, asserted or
threatened to asset against HSTi any claim of infringement of the rights of the
third party by the use of the Intellectual Property. HSTi owns or has the right
under license to make, use sell, offer to sell, import, export, copy, publicly
display, publicly perform, create derivative works of, distribute, license, and
bring actions for the infringement of the Intellectual Property. HSTi has not
granted any third party any outstanding licenses or other rights to any of the
Intellectual Property, except as set forth in Schedule 1. HSTi is not liable
for, no has made any contract or arrangement by which HSTi is liable to any
person for any royalty, fee or other compensation for the use of any derivative
work based on or disposition of any of the Intellectual Property. The parties
recognize that Xxxxxxx Xxxxx as a co-owner of the rights HSTi obtained from
Victory, and to the extent allowed under federal law, has the right to exploit
the Intellectual Property.
SECTION 4.2. CONSENTS AND APPROVALS; NO VIOLATIONS. HSTi is not aware of any
filing, permit, authorization, consent, or approval of any public body,
authority, or other third party which is necessary for the consummation by HSTi
of the transactions contemplated by this Agreement.
SECTION 4.3. GOOD TITLE TO ASSETS. HSTi represents and warrants that it is the
owner, and has good and marketable title to, the Intellectual Property, free of
any liens, encumbrances, security interests or rights of others, except as set
forth in Schedule 1, and elsewhere in this Agreement. With the exception of this
Agreement, there are no agreements, understandings or commitments binding upon
HSTi for the sale or other disposition of any of the Intellectual Property and
Inventory or any interest therein, except as set forth in Schedule 1, and
elsewhere in this Agreement.
SECTION 4.4. AUTHORITY. As of the date of execution of this Agreement, HSTi
shall have due corporation authority for its execution and consummation of this
Agreement under the California Corporations Code.
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SECTION 4.5. NO ENCUMBRANCES. HSTi represents and warrants that it has not
incurred any liability on behalf of the HSTi, other than attorneys' fees and
accounting costs incurred in connection with this Agreement and other than as
disclosed on Schedule 1.
SECTION 4.6. CO-OWNERSHIP OF ASSETS. The parties acknowledge that Xxxxxxx Xxxxx
is a co-owner of the Assets and he has the right to assign or license his
interest in the Intellectual Property. However, his interest in the Assets does
not prohibit the parties from entering into this Agreement. HSTi and Xxxxxxx
agree to assign to Company any funds either receives for the use of the
Intellectual Property by Xxxxxxx Xxxxx as described under 1A of Schedule 1, to
create any products that compete with the Company.
ARTICLE 5.
REPRESENTATIONS AND WARRANTIES OF THE COMPANY
SECTION 5.1. CONSENTS AND APPROVALS OF THIRD PARTIES: NO VIOLATIONS. Company is
not aware of any filing, permit, authorization, consent or approval of any
public body, authority or other third party, which is necessary for the
consummation by Company of the transactions contemplated by this Agreement.
SECTION 5.2. CONSENT OF COMPANY. The execution and delivery of this agreement
and the consummation of this transaction by Company have been duly authorized,
and no further corporate authorization is necessary on the part of Company.
SECTION 5.3. CONDITION OF THE ASSETS. Company has investigated the Intellectual
Property and Inventory and is satisfied as to their condition, and will purchase
the same at the Closing, subject to fulfillment of all other conditions herein.
SECTION 5.4. NO ENCUMBRANCES. Company represents and warrants that it has not
incurred any liability on behalf of HSTi.
ARTICLE 6.
COVENANTS
SECTION 6.1. OBTAINING PERMITS AND CONSENTS. The parties agree to use their
best efforts to obtain all permits and consents of any third parties that are
requisite to consummation of the Agreement as contemplated hereunder.
SECTION 6.2. FURTHER ACTS. The parties agree to perform any and all acts, and
to execute any and all documents reasonably necessary to accomplish the
Agreement as contemplated hereunder.
SECTION 6.3. MARKETING EFFORTS. Company shall use best efforts, to effect the
introduction of the Intellectual Property into the courses, course materials and
bookstores of Company.
ARTICLE 7.
MISCELLANEOUS
SECTION 7.1. SURVIVAL OF REPRESENTATIONS, WARRANTIES AND COVENANTS. The
representations,
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warranties and covenants made herein, and the covenants made in this Agreement
shall survive beyond the Closing Date.
SECTION 7.2. BROKERAGE FEES, COMMISSIONS AND EXPENSES. The parties acknowledge
that no person or entity is entitled to receive from HSTi or Company, any
brokerage or finder's fee in connection with this Agreement or the transactions
contemplated hereby. Each party agrees to bear its own expenses with respect to
any legal or consulting services obtained by such party with respect to this
Agreement.
SECTION 7.3. LIMITATIONS ON WARRANTY AND REMEDIES. HSTi MAKES NO WARRANTIES OR
REPRESENTATIONS, EXPRESSED OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, WARRANTIES
OF FITNESS OR MERCHANTABILITY, REGARDING OR WITH RESPECT TO THE SUBJECT
INTELLECTUAL PROPERTY, AND HSTi MAKES NO WARRANTIES OR REPRESENTATIONS,
EXPRESSED OR IMPLIED, OF THE PATENTABILITY OF THE SUBJECT TECHNOLOGY OR THAT THE
INTELLECTUAL PROPERTY SHALL BE FREE FROM INFRINGEMENT OF ANY PATENT. HSTi SHALL
NOT BE LIABLE FOR COMPANY'S LOSS OF PROFITS, BUSINESS GOODWILL OR OTHER
CONSEQUENTIAL DAMAGE, DESPITE ANY FAILURE TO REPAIR OR REPLACE THE GOODS.
COMPANY HAS ACCEPTED THIS RESTRICTIONS ON ITS RIGHT TO RECOVER CONSEQUENTIAL
DAMAGES AS PART OF ITS BARGAIN WITH HSTi.
SECTION 7.4 ENTIRE AGREEMENT. This Agreement together with the Schedules, which
are incorporated herein, constitute the entire agreement between the parties
with respect to the subject matter hereof, and supersedes all other prior
agreements and understandings, both written and oral, between the parties or any
of them with respect to the subject matter hereof.
SECTION 7.5. AMENDMENTS. This Agreement may not be amended except by an
instrument in writing signed by all of the parties.
SECTION 7.6. VALIDITY. The invalidity or unenforceability of any provision of
this Agreement shall not affect the validity or enforceability of any other
provisions of this Agreement, which shall remain in full force and effect.
SECTION 7.7. NOTICE. All Notices, requests, claims, demands and other
communications hereunder shall be in writing and shall be given (and shall be
deemed to have been duly given upon receipt) by delivery in person, by FAX or by
registered mail, certified mail (postage prepaid, return receipt requested),
express mail or overnight courier delivery service to the respective parties as
follows:
Party Address Telephone/Fax Number
Sonoma College, Inc. Xxxxxxx Xxxxxx (000) 000-0000
Port Parties (000) 000-0000 (fax)
000 00xx Xxxxxx,
Xxxxxxxxx Xxxxx, Xxxxx 000
New York, New York, 10019
HSTi H. Xxxx Xxxxxxx (000) 000-0000
X.X. Xxx 000
Xxxx Xxxxx, Xxxxxxxxxx 00000
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or to such other address as the person whom notice is given may have previously
furnished to the other in writing in the manner set forth above.
SECTION 7.8. PARTIES IN INTEREST. This Agreement shall be binding upon and
inure solely to the benefit of each party hereto, and its successors and
assigns, but nothing in this Agreement, express or implied, is intended to nor
shall confer upon any other person any rights, benefits or remedies of any
nature whatsoever.
SECTION 7.9. COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which shall be deemed to be an original, but all of which
shall constitute one and the same agreement.
SECTION 7.10. GOVERNING LAW. This Agreement and any disputes arising hereunder
shall be interpreted and construed under, and be governed by, the local,
internal laws of the State of California as such laws are applied to any act or
agreement entered into in California between California residents and performed
entirely within California.
SECTION 7.11. ARBITRATION. Except as otherwise provided within this Agreement,
any controversy or claim arising out of or relating to this Agreement shall be
settled by binding arbitration in Santa Rosa, California, in accordance with the
rules of the American Arbitration Association, and judgment upon the award
rendered by the arbitrator(s) may be entered in any court having jurisdiction
thereof. The parties authorize the arbitrators to grant equitable as well as
monetary relief. In any action where the HSTi is named as a party by other than
a party to this Agreement, the HSTi may name HSTi at its discretion as a party
in that action for the purpose of resolving all issues and claims in one forum
without resorting to arbitration. By submitting a dispute to arbitration, the
parties do not waive the right to seek provisional remedies from a court, such
as attachment and receivership.
IN WITNESS WHEREOF, each of the parties has executed this Agreement as of the
day and year first above written.
Homeland Safety Training, Inc.
/s/ H. Xxxx Xxxxxxx
-----------------------------
by H. Xxxx Xxxxxxx, President
Sonoma College, Inc.
/s/ Xxxxxxx Xxxxxx
-----------------------------
by Xxxxxxx Xxxxxx, CEO
/s/ Xxxxx Xxxxxx
-----------------------------
by Xxxxx Xxxxxx, Treasurer
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SCHEDULE I
Intellectual Property Assigned and Licensed
1.A. Intellectual Property Assigned:
All updates, modifications, and enhancements made to the MedEMT - A Learning
System for Prehospital Care hardbound book, the MedEMT (CD version), and
MedCollege/SafetyCollege online content to create the HSTi First Responder
textbook, CD, and online material and blended online and textual material.
1.B. Intellectual Property Licensed (property not owned outright or usable
concurrently in unrelated products.)
The library of medical illustrations, photographs, tables, and charts
(approximately 650), video footage of first response medical procedures
(approximately 1 and 1/2 hours), medical animations of first response
instruction (approximate 7 minutes). MedCollege/SafetyCollege HTML-ready first
response multimedia curricula (approximately 40 hours of Internet-ready
content),l MedART - A&P CD software and medical illustration and photographic
content, MedART - EMS CD software and medical illustration and photographic
content, whether developed by HSTi or obtained from Victory on January 15, 2002.
1.C. Disclosure of Prior Grants that may impact on items listed under 1.A. or
1.B.
Agreement with Xxxxxxx, PLS, for MedEMT textbook.
Agreement with Crimcast for marketing Agreement.
Agreement with Xxxxxxxxxx for distribution.
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