United States Intellectual Property Assignment
and License Back Agreement
This United States Intellectual Property Assignment and License Back
Agreement (the "Agreement") is made by and between MicroStrategy
Incorporated, a Delaware corporation ("MSTR"), and Xxxxxxxx.xxx Incorporated,
a Delaware corporation ("SDC"). The effective date of this Agreement shall
be the date last signed below (the "Effective Date").
Recitals
WHEREAS, MicroStrategy Incorporated and certain of its subsidiaries desire
to realign their worldwide corporate structure in accordance with their separate
lines of business, the "Xxxxxxxx.xxx Business" and the "MicroStrategy Business";
and
WHEREAS, the entities now enter into various agreements and make certain
mutual promises as described in the "Agreement and Plan of Reorganization" by
and among MicroStrategy Incorporated, MicroStrategy International Limited,
MicroStrategy International II Limited, Xxxxxxxx.xxx Incorporated, and
Xxxxxxxx.xxx International Limited dated October 17, 2000 to effectuate this
realignment and reorganization;
WHEREAS, MSTR has developed the suite of software known as the
MicroStrategy platform and other technology related to a personalized
information network.
WHEREAS, MSTR has agreed to assign certain United States intellectual
property rights to SDC, subject to a license from SDC to continue its activities
involving such intellectual property.
NOW, THEREFORE, in consideration of the premises set forth above and the
covenants set forth below, and other valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties agree as follows:
Agreement
The parties agree to the following:
Article 1.
1. Definitions.
As used herein, the following terms have the following meanings:
1.1 "MSTR Products" means the products of MSTR in existence or in
development by MSTR as of the Effective Date, and future MSTR products.
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1.2 "Subsidiary" means a corporation or other legal entity: (i) the
majority of whose shares or other securities entitled to vote for election of
directors (or other managing authority) is now or hereafter controlled by
such company either directly or indirectly; or (ii) which does not have
outstanding publicly traded shares or securities but the majority of whose
ownership interest representing the right to manage such corporation or other
legal entity is now or hereafter owned and controlled by such company either
directly or indirectly; but any such corporation or the other legal entity
shall be deemed to be a Subsidiary of such company only as long as such
control or ownership and control exists.
1.3 "Trade Secret" means that information identified as of the
Effective Date in Schedule A, along with any other formula, pattern,
compilation, program, device, method, technique, or process, that: (i)
derives independent economic value, actual or potential, from 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
(ii) is the subject of efforts that are reasonable under the circumstances to
maintain its secrecy; and including any other Trade Secrets that may be added
to this agreement by mutual agreement of the parties in writing using a form
substantially as shown in Schedule A.
1.4 "Copyrighted Works" means the works subject to copyright rights
associated with the expression of certain ideas embodied in such works
identified as of the Effective Date in Schedule A; and including any other
copyrights and/or copyrighted works that may be added to this Agreement by
mutual agreement of the parties in writing using a form substantially as
shown in Schedule A.
Article 2.
Trade Secret Assignments and Licenses
2.1 Trade Secret Assignment.
Subject to the license in Section 2.2, MSTR hereby assigns, transfers,
and sets over to SDC, its lawful successors and assigns, MSTR's entire right,
title, and interest in and to the Trade Secrets in the United States.
2.2 Trade Secret License.
(a) License Grant. SDC agrees that in consideration for the
assignment in Section 2.1, MSTR shall retain a personal, perpetual,
nonexclusive and nontransferable, royalty-free license to the Trade Secrets
identified in Schedule A for the scope set forth below in the United States.
(b) Scope. The license granted from SDC to MSTR herein is a
license to (i) make, have made, use, lease and sell MSTR Products to the
extent that any MSTR Products incorporate any Trade Secrets; (ii) make, have
made, use and import other instrumentalities, insofar as such other
instrumentalities are involved in or incidental to the development or testing
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of MSTR Products that incorporate any Trade Secrets which are or have been
made, used, leased, owned, sold or imported by MSTR; and (iii) convey to any
customer of MSTR with respect to any MSTR Product which is sold or licensed
by MSTR to such customer, rights to use and resell such MSTR Product as sold
or licensed by MSTR (whether or not as part of a larger combination) in the
United States.
(c) Subsidiaries. The grant of each license from SDC to MSTR
hereunder includes the right of MSTR to grant sublicenses within the scope of
such license to MSTR'S Subsidiaries for so long as they remain its
Subsidiaries. Any such sublicense may be made effective retroactively.
(d) All rights in and to all changes, developments or
improvements by MSTR in the Trade Secrets licensed above shall be the
property of SDC to the extent that SDC incorporates such changes,
developments or improvements into SDC's commercial products and/or services
and those changes, developments or improvements are incorporated into the
Trade Secrets licensed above. If SDC does not so incorporate such changes,
developments and/or improvements into SDC's commercial products and/or
services, then ownership in and to such changes, developments or improvements
shall vest in MSTR, provided, however, that as to any such changes,
developments or improvements by the MSTR, MSTR hereby grants to SDC a
perpetual, royalty-free, nonexclusive, nontransferable license to
manufacture, have manufactured, distribute, use, lease, sell and offer to
sell products and/or services utilizing such changes, developments or
improvements to the Trade Secrets in the United States, provided, however,
that SDC shall not make any use of such changes, developments or improvements
in a manner which xxxxx the competitive interests of MSTR.
Article 3.
Copyright Assignment and Licenses
3.1 Copyright Assignment.
Subject to the license in Section 3.2, MSTR hereby assigns, transfers,
and sets over to SDC, its lawful successors and assigns, MSTR's entire right,
title, and interest in and to the Copyrighted Works in the United States.
The Copyrighted Works will be the sole property of SDC and SDC will have the
sole right to determine the treatment of any Copyrighted Work, including the
right to keep it as a trade secret, to file registrations for copyright on it
in its own name, or to follow any other procedure that SDC deems appropriate
in the United States.
3.2 Copyright License.
(a) License Grant. SDC agrees that in consideration for the
assignment in Section 3.1, MSTR shall retain a personal, nonexclusive and
nontransferable, royalty-free license to the Copyrighted Work identified in
Schedule A in the United States.
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(b) Duration. All licenses granted herein under any
Copyrighted Work shall continue for the entire unexpired term of such
Copyrighted Work or for as much of such term as SDC has the right to grant in
the United States.
(c) Scope. The license granted from SDC to MSTR herein is a
license to (i) develop and test the Copyrighted Works for the sole purpose of
incorporating the Copyrighted Works, or portions thereof, in any MSTR Product
and (ii) to make copies of, distribute copies of, publicly perform, publicly
display, make derivatives of, use, lease, license and import/export the
Copyrighted Works to the extent incorporated in any such MSTR Product and
collateral; and (iii) convey to any customer of MSTR with respect to any MSTR
Product that incorporates any Copyrighted Work a license to use such
Copyrighted Work to the extent incorporated into any MSTR Product and the
right to resell such MSTR Product (whether or not as part of a larger
combination) in the United States.
(d) All rights in and to all changes, developments or
improvements by MSTR in the Copyrighted Works licensed above shall be the
property of SDC to the extent that SDC incorporates such changes,
developments or improvements into SDC's commercial products and/or services
and those changes, developments or improvements are incorporated into the
Copyrighted Works licensed above. If SDC does not so incorporate such
changes, developments and/or improvements into SDC's commercial products
and/or services, then ownership of all rights in and to such changes,
developments or improvements shall vest in MSTR, including all intellectual
property rights in and to such changes, developments and/or improvements,
provided, however, that as to any such changes, developments or improvements
by MSTR, MSTR hereby grants to SDC a perpetual, royalty-free, nonexclusive,
nontransferable license to manufacture, have manufactured, distribute, use,
lease, sell and offer to sell products and/or services utilizing such
changes, developments or improvements to the Copyrighted Works in the United
States, provided, however, that SDC shall not make any use of such changes,
developments or improvements in a manner which xxxxx the competitive
interests of MSTR.
Article 4.
Termination
4.1 Termination by MSTR. MSTR may terminate any license under this
Agreement at any time.
4.2 Termination by SDC. SDC may terminate this Agreement or any
license upon written notice if MSTR breaches this Agreement and fails to
correct the breach within thirty (30) days following written notice
specifying the breach.
Article 5.
Miscellaneous Provisions
5.1 IP Rights Ownership. MSTR warrants that it owns, free and clear
of all liens or encumbrances, or has valid licenses in the IP Rights
contained in Schedule A and that it has full legal right to grant to SDC the
licenses contained herein.
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5.2 Indemnification of SDC. MSTR shall defend and indemnify SDC
against and hold SDC harmless from any and all claims that the IP Rights
contained in Schedule A infringe a United States patent or copyright of a
third party provided that SDC : (i) promptly notifies MSTR in writing of any
such claim; (ii) allows MSTR to have sole control of the defense and all
related settlement negotiations; and (iii) provides MSTR with the
information, authority and assistance necessary to perform MSTR 's
obligations under this Section.
5.3 Excluded Claims. Notwithstanding Section 5.2 above, MSTR shall
not be liable to SDC for any claim arising from or based upon the
combination, operation or use of any MicroStrategy Platform product with
equipment, data or programming not supplied by MSTR (including the SDC
software and services) or for other than an intended purpose as set forth in
the User Documentation, or arising from any alteration or modification of the
MicroStrategy Platform product, if the claim would not have arisen without
such alteration or modification.
5.4 Indemnification of MSTR. SDC shall defend and indemnify MSTR
(including paying all reasonable attorneys' fees and costs of litigation)
against and hold MSTR harmless from any and all claims by any other party
resulting from SDC's negligent or tortious acts, omissions or
misrepresentations relating to the marketing, sublicensing, distribution,
demonstration, evaluation or use of the MicroStrategy Platform products,
regardless of the form of action provided that MSTR: (i) promptly notifies
SDC in writing of any such claim; (ii) allows SDC to have sole control of
the defense and all related settlement negotiations; and (iii) provides SDC
with the information, authority and assistance necessary to perform SDC 's
obligations under this Section.
5.5 Disclaimer.
Neither MSTR nor any of its Subsidiaries makes any representations,
extends any warranties of any kind, assumes any responsibility or obligations
whatever, or confers any right by implication, estoppel or otherwise, other
than the rights herein expressly granted.
5.6 Nonassignability. Neither party may assign this Agreement
without the prior written consent of the other party. Notwithstanding the
foregoing to the contrary, either party may assign any of its rights or
obligations hereunder to any one or more of its Subsidiaries. Each party
acknowledges that it shall continue to be obligated if and to the extent that
a permitted assignee under this paragraph fails to perform the obligations
that such party has assigned. Any attempted assignment in violation of this
paragraph without consent shall be null and void.
5.7 Addresses. Any notice or other communication hereunder
shall be sufficiently given to SDC when sent by certified mail addressed to
Xxxxxxxx.xxx Incorporated, Attn: CEO, 0000 Xxxxxx Xxxxxxxx Xxxxx, Xxxxxx
Xxxxxxxx 00000 or to MSTR when sent by certified mail addressed to
MicroStrategy Incorporated, Attn: General Counsel, 0000 Xxxxxx Xxxxxxxx
Xxxxx, Xxxxxx Xxxxxxxx 00000.
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5.8 Integration. This Agreement sets forth the entire agreement
and understanding between the parties as to the subject matter hereof and
merges all prior discussions between them. Neither of the parties shall be
bound by any warranties, understandings or representations with respect to
such subject matter other than as expressly provided herein or in a writing
signed with or subsequent to execution hereof by an authorized representative
of the party to be bound thereby.
5.9 Dispute Resolution.
(a) If a dispute arises out of or relates to this Agreement, or
the breach, termination or validity thereof, the parties agree to submit the
dispute to a sole mediator selected by the parties or, at any time at the
option of a party, to mediation by the American Arbitration Association
("AAA"). If not thus resolved, it shall be referred to a panel of three
arbitrators selected by the parties within thirty (30) days of the mediation,
or in the absence of such selection, to AAA arbitration which shall be
governed by the United States Arbitration Act.
(b) Any award made (i) shall be an award affording such remedy
as is deemed equitable, just and within the scope of this Agreement; (ii)
shall be with findings as to issues (including but not limited to patent
validity and/or infringement) or a statement of the reasoning on which the
award rests; (iii) may in appropriate circumstances include injunctive
relief; (iv) shall be made within four (4) months of the appointment of the
arbitrator; and (v) may be entered in any court.
(c) The requirement for mediation and arbitration shall not be
deemed a waiver of any right of termination under this Agreement and the
arbitrator is now empowered to act or make any award other than based solely
on the rights and obligations of the parties prior to any such termination.
(d) The arbitrator shall determine issues of arbitrability but
may not limit, expand or otherwise modify the terms of this Agreement.
(e) This Agreement shall be interpreted in accordance with the
laws of the Commonwealth of Virginia exclusive of its conflict of laws
provisions and the place of mediation and arbitration shall be Fairfax County.
(f) Each party shall bear its own expenses but those related to
the compensation and expenses of the mediator and arbitrator shall be borne
equally.
(g) A request by a party to a court for interim measures shall
not be deemed a waiver of the obligation to mediate and arbitrate.
(h) The arbitrator shall not have authority to award punitive
or other damages in excess of compensatory.
(i) The parties, their representatives, other participants and
the mediator and arbitrator shall hold the existence, content and result of
mediation and arbitration in confidence.
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In Witness Whereof, each of the parties has caused this Agreement to be
executed in duplicate originals by its duly authorized representatives on the
respective dates entered below.
MicroStrategy Incorporated Xxxxxxxx.xxx Incorporated
Signed: /s/Xxxx X. Xxxxx Signed: /s/Xxxx X. Xxxxx
Name: Xxxx X. Xxxxx Name: Xxxx X. Xxxxx
Title: CFO Title: CFO
Dated: 10/17/2000 Dated: 10/17/2000
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