Exhibit 10.20
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TECHNOLOGY TRANSFER AND ASSIGNMENT AGREEMENT
AND MUTUAL RELEASE
THIS TECHNOLOGY TRANSFER AND ASSIGNMENT AGREEMENT AND MUTUAL RELEASE
("Agreement") is made effective as of the 10th day of October, 2006 by and among
VIDEOLOCITY INTERNATIONAL, INC. ("Assignee"), Xxxxxx Xxxx ("Xxxx"), Xxxxxx
Xxxxxx ("Xxxxxx"), and X. Xxxxxx Capital Group, LLC ("EOCG"), EOCG Media, LLC
("EOCG Media"), EOCG Media Ltd. ("EOCG Media Ltd"), and Xxxxxxx X. Xxxxxxx
("Xxxxxxx"). EOCG, EOCG Media, EOCG Media Ltd and Xxxxxxx, together with any
affiliate thereof, individually, an "Assignor" and, collectively, and jointly
and severally, "Assignors"). All of the foregoing parties may also be referred
to herein collectively as the "Parties."
RECITALS
A. Each of Assignee, EOCG and EOCG Media previously entered into that
certain Sale and Joint Venture Agreement (the "Sale Agreement");
B. Each of Assignee and EOCG previously entered into that certain
Limited Liability Company Operating Agreement of EOCG Media, LLC (the "Operating
Agreement");
C. Pursuant to the Sale Agreement and the Operating Agreement, Assignee
agreed to contribute the Intellectual Property Technology (as that term is
defined below) to EOCG Media, and/or certain of its affiliates, in exchange for
certain monies to be paid and obligations to be performed by EOCG Media to
Assignee and for certain other monies to be paid and obligations to be performed
by EOCG to EOCG Media in connection with the operation and deployment related to
Intellectual Property Technology (such transactions as contemplated by the Sale
Agreement, Operating Agreement and Transfer Agreements (as such term is defined
below) are referred to herein as the "JV Transaction");
D. In connection with the JV Transaction, Assignee, EOCG, EOCG Media,
and/or EOCG Media Ltd, variously entered into certain agreements, including
without limitation that certain Assignment regarding U.S. patent application
File No. 1051.2.1 by and between Assignee and EOCG Media, that certain
Assignment regarding European patent application File No. 1051.2.1EPO by and
between Assignee and EOCG Media Ltd, that certain Assignment of Videolocity U.S.
Trademark by and between Assignee and EOCG Media, that certain Assignment of DES
Canadian Trademark by and between Assignee and EOCG Media Ltd, that certain
Assignment of DES U.S. Trademark by and between Assignee and EOCG Media, that
certain Assignment of Videolocity (and Design) U.S. Trademark by and between
Assignee and EOCG Media, that certain Assignment of Videolocity Canadian
Trademark by and between Assignee and EOCG Media Ltd, that certain Assignment of
Videolocity European Trademark by and between Assignee and EOCG Media Ltd, that
certain Assignment of Videolocity Japan Trademark by and between Assignee and
EOCG Media Ltd, and that certain Assignment of Videolocity TV U.S. Trademark by
and between Assignee and EOCG Media (such agreements together with the Sale
Agreement and Operating Agreement and any other documents, instruments and
agreements, written or oral, relating to the transfer, sale, assignment or
conveyance of the Intellectual Property Technology and the JV Transaction,
collectively, the "Transfer Agreements");
X. Xxxxxxx was at the time of the JV Transaction, and remains so as of
the date hereof, the Manager of EOCG Media and the president and chief executive
officer of EOCG and Xxxx was at the time of the JV Transaction, and remains so
as of the date hereof, the president and chief executive officer of Assignee;
F. The Parties are in disagreement as to whether various of the Parties
and/or their employees and officers are in compliance with their obligations
under the Transfer Agreements or otherwise to various of the Parties; and
G. The parties now desire to enter into this Agreement to transfer and
reassign all of Assignors' right, title and interest in the Intellectual
Property Technology to Assignee with certain grant backs as provided below, and,
considering the complexity of the issues involved with respect to the matters
related to the JV Transaction and the Transfer Agreements, the parties hereto
wish to avoid the burdens, expense, and uncertainties of potential litigation
and to compromise, settle, and resolve any and all claims or causes of action as
between and among themselves as provided in this Agreement without any admission
of liability by any party to any other person or entity.
NOW, THEREFORE, in consideration of the mutual promises, covenants, and
agreements set forth herein, and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties agree,
represent, warrant, and covenant as follows:
1. TRANSFER OF ASSETS.
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1.1 The Intellectual Property Technology. The Intellectual Property
Technology which is the subject of this Agreement shall include all of
Assignors' right, title and interest in any and all technology and intellectual
property transferred by, or acquired from, Assignee, and/or its affiliates,
directors, officers, employees, agents, or representatives, in any manner
whatsoever, including pursuant to the Transfer Agreements or otherwise, and
including without limitation all copyrights, trade secrets, patents, trademarks,
moral rights, confidential information, proprietary information or property, and
further including without limitation Videolocity's Digital Entertainment System
(DESTM) and related services, trade secrets, patents, copyrights and other
intellectual property rights, including High Speed Internet Access together with
digital streaming video technology, and Videolocity's license agreements and
agreements for Video-On Demand programming for the DESTM, including digital
movie titles, other content and entertainment (including music and gaming
content), and including without limitation any derivative works therefrom,
improvements thereon or inventions related thereto, or based thereon or claiming
priority therefrom, in any manner or form, and including the goodwill associated
in any manner therewith, and including any notes, documents, reports or other
materials that contain all or any portion of the above-described items in any
form or media (collectively, the "Intellectual Property Technology").
1.2 Transfer. Subject to the terms and conditions herein, each Assignor
hereby jointly and severally transfers, sells, assigns and conveys to Assignee,
free and clear of any lien, pledge, hypothecation, encumbrance, claim, charge or
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security interest of any kind or nature, all of each Assignor's entire right,
title and interest in, to and under the Intellectual Property Technology,
including without limitation the goodwill associated therewith.
1.3 Disclaimer of Interest in Intellectual Property Technology. Each
Assignor on his or its own behalf and on behalf of each of his or its heirs,
successors and assigns hereby jointly and severally relinquishes all rights in,
to and under the Intellectual Property Technology and disclaims any interest
therein, including without limitation any ownership, title, license, sublicense,
lease, or other right in, to or under the Intellectual Property Technology
except as provided herein. None of Assignee, Xxxx, Xxxxxx or Assignors shall,
and do not hereby, assume or otherwise become responsible for any liabilities,
obligations or expenses of the other relating to the other party's use or
ownership of the Intellectual Property Technology during that other party's
respective ownership periods.
1.4 Closing. The closing of the transactions contemplated in this Agreement
(the "Closing") shall occur on October 10, 2006, or such later date as the
parties mutually agree (the "Closing Date").
2. CONSIDERATION. In consideration for the agreements contained herein, the
Parties hereby agree to the following:
2.1 Payment. Assignee shall pay to Assignors Xxx Xxxxxxx Xxxxx Xxxxxxxx
Xxxxxx Xxxxxx Dollars (US$150,000) at Closing in immediately available funds by
wire transfer to EOCG's account set forth on Schedule 2.1 hereto. If such funds
are not received in EOCG's account set forth on Schedule 2.1 by the close of
business on the Closing Date, this Agreement shall be deemed void ab initio.
2.2 Exclusive License. Assignee hereby grants to Assignors an Exclusive
license within the Exclusive License Territories of: Xxxxxxxx, Xxxxxxx, Xxxxx,
Xxxxxx Xxxxxxx, Xxxxxxxxx Xxxxxxxx, Xxxxxxxxxxx Antilles, St. Xxxxxx (French
Side), St. Barthelemy, St. Kitts and Nevis, and Trinidad and Tobago; provided,
however, that the Exclusive License shall be for a term of five (5) years from
the date hereof and provided further, however, that, with respect to an
Exclusive Licensed Territory in which Assignor does not secure an agreement to
provide the Intellectual Property Technology to an end-user within the Exclusive
Licensed Territory, the term of the Exclusive License for that Exclusive
Licensed Territory Assignee shall terminate two (2) years from the date hereof.
2.2.1 In the event (i) Assignee is entering into an agreement
to provide the Intellectual Property Technology to an end-user outside
the Exclusive License Territories and (ii) such end-user has the
ability to require an affiliated end-user within the Exclusive Licensed
Territories to utilize the same Intellectual Property Technology
product, Assignee shall so notify Assignors in which event Assignors
shall have sixty (60) days in which to enter into an agreement with
such affiliated end-user within the Exclusive Licensed Territories for
provision of the Intellectual Property Technology product. If Assignors
are unable to complete an agreement with such affiliated end-user
within the Exclusive Licensed Territories, then Assignee shall have the
right to do so.
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2.3 Nonexclusive License. Assignee hereby grants to Assignors a worldwide
nonexclusive license in, to and under the Intellectual Property Technology,
subordinate to the Exclusive License granted herein in certain territories,
until the date the rights in the last of the Intellectual Property Technology
subject to this Agreement expire.
2.4 Royalty. In the event that an Assignor uses a Videolocity product that
is covered by the Intellectual Property Technology licensed hereunder, such
Assignor agrees to pay Assignee a royalty calculated on a per unit, lump sum or
other mutually agreeable basis at a mutually agreed upon royalty rate not to
exceed the then-usual and customary per-unit royalty rate applicable to such
products at that time.
2.5 Assignee's Obligations.
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2.5.1 Assignee shall perform all acts necessary to preserve all rights,
and keep the licensed Intellectual Property Technology in force, in all licensed
territories at all times, including payment of all fees and annuities and filing
for protection as allowed by the respective jurisdictions under their respective
laws.
2.5.2 Assignee will take no action, or fail to take action where
otherwise required, with respect to any of the Intellectual Property Technology
in such a manner as would destroy the value of the licensed Intellectual
Property or otherwise place the licensed Intellectual Property into the public
domain in any jurisdiction.
2.5.3 Assignee will take no action, or fail to take action where
otherwise required, with respect to any of the Intellectual Property Technology
in such a manner as would materially impair Assignors rights under the Licenses
granted herein, other than to grant additional nonexclusive licenses outside the
Exclusive License Territories based upon commercially reasonable Arms Length
Negotiations.
2.5.4 In the event that Assignee elects to not maintain any such
Intellectual Property Technology in force, or to make filings needed to maintain
or preserve rights in any jurisdiction, Assignee will give Assignor prompt
written notice of such election at least sixty (60) days prior to the applicable
deadline by which an action to maintain or preserve rights must be taken and
which, if not taken, would result in a loss of rights in such jurisdiction. Upon
such notice, ownership of such licensed Intellectual Property at issue will
automatically revert back to Assignors without further action by the parties or
compensation from any Assignor. Assignee hereby agrees that in the event of such
reversion in ownership, Assignee will promptly execute any and all documents
provided by an Assignor at such Assignor's expense, as would be necessary to
evidence such ownership change. Nothing herein shall obligate any Assignor to
maintain such Intellectual Property Technology in force or make such filings in
any jurisdiction following such reversion in ownership.
3. MUTUAL RELEASE.
3.1 Assignee's Release. Each of Assignee, Xxxx and Xxxxxx hereby,
knowingly and voluntarily, forever releases and discharges each Assignor and
Xxxxxxx and their respective affiliates, agents, representatives, managers,
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members, stockholders, officers, employees, attorneys, heirs, executors,
successors and assigns, past and present, (collectively, the "Assignor Released
Parties"), of and from any and all past, present or future claims, disputes,
losses, demands, actions, causes of action, damages, declaratory relief,
compensation, costs, fees, expenses, contracts, covenants, obligations, debts,
indemnities and liabilities of every kind and nature whatsoever (collectively,
"Claims"), presently known or unknown, that any of Assignee, Xxxx and Xxxxxx may
now or in the future claim, assert or have, whether in tort, contract, law,
equity, statute or otherwise, against the Assignor Released Parties based on any
events or facts that have occurred up to and through the date hereof.
3.2 Assignors' Release. Each Assignor and Xxxxxxx, jointly and
severally with each other Assignor and Xxxxxxx, hereby, knowingly and
voluntarily, forever releases and discharges Assignee, Xxxx, Xxxxxx and their
respective affiliates, agents, representatives, managers, members, stockholders,
officers, employees, attorneys, heirs, executors, successors and assigns, past
and present, (collectively, the "Assignee Released Parties"), of and from any
and all Claims, presently known or unknown, that any Assignor or Xxxxxxx may now
or in the future claim, assert or have, whether in tort, contract, law, equity
or otherwise, against the Assignee Released Parties based on any events or facts
that have occurred up to and through the date hereof.
3.3 Unknown Claims. The parties understand that the nature, amount, and
extent of the actual or potential claims in the matters being released may not
be known at the date hereof, and that additional or different facts than now
known, suspected, or believed to be true may be discovered, or that present
Claims may have been underestimated in amount. Nevertheless, the parties assume
the risk of such unknown, unsuspected, and unanticipated claims in the matters
being released, and intend to forever and fully discharge and release the
parties from, and to irrevocably waive, all such claims, actions, causes of
action, liabilities, injuries and damages, even if hereafter discovered or
brought to the attention of any of the parties.
4. MISCELLANEOUS.
4.1 Entire Agreement. This Agreement contains the entire agreement of
the parties with respect to the subject matter hereof and any prior agreements,
promises, inducements, negotiations, or representations, not expressly set forth
herein, are void and of no force or effect.
4.2 Construction. The headings in this Agreement are for convenience
only and are in no way intended to describe, interpret, define or limit the
scope, extent or intent of this Agreement or any of its provisions. All pronouns
and any variations thereof shall be deemed to refer to the masculine, feminine,
neuter, singular or plural as the identity of the person or persons may
reasonably require.
4.3 Authority of Signatories. The parties covenant that they possess
the necessary capacity and authority to sign and enter into this Agreement, each
on his or its own behalf and on behalf of any party whose rights it may effect.
No party has previously assigned or encumbered their rights with respect to any
of the rights described in this Agreement.
4.4 Binding Effect. The provisions of this Agreement and the releases
set forth herein will be binding upon and inure to the benefit of the heirs,
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children, executors, administrators, personal representatives, successors in
interest, assigns, officers, directors, representatives, agents, members,
managers, limited partners, subsidiaries, shareholders, stockholders, attorneys,
member companies and employees of the parties.
4.5 Further Documents. The parties agree to execute and deliver such
other additional documents or instruments as may be required to effectuate each
of the terms of this Agreement.
4.6 No Modification. This Agreement may not be altered, amended or
modified in any respect except by written instrument, duly executed by all of
the parties hereto. All earlier understandings, oral agreements and writings
with respect to the subject matter hereof are expressly superseded hereby and
are of no further force or effect. Any waiver of any condition or of the breach
of any provision, term, covenant, representation, or warranty contained in this
Agreement, in any one or more instances, shall not be deemed to be or construed
as a further or continuing waiver of any condition or of the breach of any other
provision, term, covenant, representation, or warranty of this Agreement.
4.7 Governing Law; Jurisdiction. This Agreement, and any and all rights
and duties set forth in it, including matters of construction, validity and
performance, shall be interpreted, enforced and governed by the laws of the
State of Utah, without reference to its conflicts of law provisions. Any action
arising out of this Agreement shall be filed exclusively, and each party hereto
submits to such jurisdiction, in the state and federal courts sitting in the
County of Salt Lake, State of Utah.
4.8 Attorneys' Fees. Each party to this Agreement shall bear its own
costs and expenses, including attorneys' fees, incurred in connection with the
preparation and negotiation of this Agreement. In any action arising out of this
Agreement, the losing party shall be required to pay the prevailing party's
costs, including reasonable attorneys' fees and court costs. Any party breaching
this Agreement shall be liable to the others for attorneys' fees and court costs
in enforcing this Agreement.
4.9 Status of Parties. Nothing contained in this Agreement will be
deemed or construed as creating a joint venture or partnership between Assignee
and Assignors. Neither of Assignee or Assignors will have the power to control
the activities and operations of the other. Neither of Assignee or Assignors
will hold itself out as having any authority or relationship with the other in
contravention of this Agreement, and neither party will act on behalf of the
other or enter into any contract, warranty or representation as to any other
matter on behalf of the other.
4.10 Counterparts and Facsimile Signatures. For the convenience of the
parties, the parties agree that this Agreement may be signed in counterpart and
when all signatures are attached to this Agreement, it shall be binding as
though they each originally signed the same signature page. Further, the parties
agree to accept signatures by facsimile that is transmitted from the facsimile
machine.
4.11 Severability. If any term, provision, covenant or condition of
this Agreement is held by a court of competent jurisdiction to be invalid, void
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or unenforceable, the rest of this Agreement shall remain in full force and
effect and shall in no way be affected, impaired or invalidated.
4.12 Arms' Length Negotiations. This Agreement and its terms and conditions were
determined in arms' length negotiations between the parties hereto and the same
represents a final, mutually agreeable compromise. Each of the parties to the
Agreement has been represented by an attorney and has carefully read and
understands its terms and conditions. The attorneys and advisors for each of the
parties hereto have had a full and fair opportunity to review the facts and all
provisions and no party has relied upon any representations or advice of any
other of the parties or any attorney not its own.
4.13 Non-Disparagement. Each of Assignee, Xxxx and Xxxxxx agrees not to in any
manner disparage any of the Assignors, Xxxxxxx or their respective affiliates,
agents, representatives, managers, members, stockholders, officers, employees
and each of the Assignors and Xxxxxxx agrees not to in any manner disparage any
of Assignee, Xxxx, Xxxxxx or their respective affiliates, agents,
representatives, managers, members, stockholders, officers, employees.
[Signature page follows]
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THE UNDERSIGNED HEREBY ACKNOWLEDGE THAT THEY HAVE RECEIVED THE ADVICE OF THEIR
ATTORNEY AND HAVE READ THIS AGREEMENT AND FULLY UNDERSTAND AND HEREBY AGREE TO
THE TERMS AND CONDITIONS CONTAINED HEREIN.
Executed this 7th day of October, 2006
ASSIGNEE:
VIDEOLOCITY INTERNATIONAL, INC.
By:
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Name:
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Title:
XXXX
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Xxxxxx Xxxx
XXXXXX
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Xxxxxx Xxxxxx
ASSIGNORS:
EOCG
X. XXXXXX CAPITAL GROUP, LLC
By:
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Name:
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Title:
EOCG MEDIA
EOCG MEDIA, LLC
By:
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Name:
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Title:
EOCG MEDIA LTD.
EOCG MEDIA LTD.
By:
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Name:
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Title:
XXXXXXX
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Xxxxxxx X. Xxxxxxx
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STATE OF ____________________________ )
) : ss.
COUNTY OF ____________________________)
On October 7, 2006, before me personally appeared Xxxxxx Xxxx, for and
on behalf of Videolocity International, Inc., known to be to be the person
described and who signed the foregoing instrument in my presence and
acknowledged under oath before me that he has read the same and knows the
contents thereof and that he executed the same as his free act and deed and for
the purposes set forth therein.
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NOTARY PUBLIC
Residing at
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My Commission Expires:
STATE OF ____________________________ )
) : ss.
COUNTY OF ____________________________)
On October 7, 2006, before me personally appeared Xxxxxx Xxxx,
individually, known to be to be the person described and who signed the
foregoing instrument in my presence and acknowledged under oath before me that
he has read the same and knows the contents thereof and that he executed the
same as his free act and deed and for the purposes set forth therein.
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NOTARY PUBLIC
Residing at
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My Commission Expires:
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STATE OF ____________________________ )
) : ss.
COUNTY OF ____________________________)
On October 7, 2006, before me personally appeared Xxxxxx Xxxxxx,
individually, known to be to be the person described and who signed the
foregoing instrument in my presence and acknowledged under oath before me that
he has read the same and knows the contents thereof and that he executed the
same as his free act and deed and for the purposes set forth therein.
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NOTARY PUBLIC
Residing at
-----------------------------------
My Commission Expires:
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STATE OF FLORIDA )
) : ss.
COUNTY OF BROWARD )
On October , 2006, before me personally appeared Xxxxxxx X. Xxxxxxx,
for and on behalf of X. Xxxxxx Capital Group, LLC, known to be to be the person
described and who signed the foregoing instrument in my presence and
acknowledged under oath before me that he has read the same and knows the
contents thereof and that he executed the same as his free act and deed and for
the purposes set forth therein.
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NOTARY PUBLIC
Residing at
-----------------------------------
My Commission Expires:
STATE OF FLORIDA )
) : ss.
COUNTY OF BROWARD )
On October 7, 2006, before me personally appeared Xxxxxxx X. Xxxxxxx,
for and on behalf of EOCG Media, LLC, known to be to be the person described and
who signed the foregoing instrument in my presence and acknowledged under oath
before me that he has read the same and knows the contents thereof and that he
executed the same as his free act and deed and for the purposes set forth
therein.
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NOTARY PUBLIC
Residing at
-----------------------------------
My Commission Expires:
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STATE OF FLORIDA )
) : ss.
COUNTY OF BROWARD )
On October 7, 2006, before me personally appeared Xxxxxxx X. Xxxxxxx,
for and on behalf of EOCG Media, Ltd., known to be to be the person described
and who signed the foregoing instrument in my presence and acknowledged under
oath before me that he has read the same and knows the contents thereof and that
he executed the same as his free act and deed and for the purposes set forth
therein.
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NOTARY PUBLIC
Residing at
-----------------------------------
My Commission Expires:
STATE OF FLORIDA )
) : ss.
COUNTY OF BROWARD )
On October 7, 2006, before me personally appeared Xxxxxxx X. Xxxxxxx,
individually, known to be to be the person described and who signed the
foregoing instrument in my presence and acknowledged under oath before me that
he has read the same and knows the contents thereof and that he executed the
same as his free act and deed and for the purposes set forth therein.
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NOTARY PUBLIC
Residing at
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My Commission Expires:
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Schedule 2.1
E XXXXXX CAPITAL GROUP LLC
Wiring Instructions
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