CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR CERTAIN REDACTED PROVISIONS OF
THIS AGREEMENT. THE REDACTED PROVISIONS ARE IDENTIFIED BY THREE ASTERISKS AND
ENCLOSED BY BRACKETS. THE CONFIDENTIAL PORTION HAS BEEN FILED SEPARATELY WITH
THE SECURITIES AND EXCHANGE COMMISSION.
EXHIBIT 10.43
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (this "Agreement") is made and entered into as of
February 9, 2000 (the "Effective Date") by and between: EncrypTix, Inc., a
Delaware corporation ("EncrypTix"), having its principal place of business at
000 X. Xxxxxxxxx Xxxx., Xxxxx 000, Xx Xxxxxxx, XX 00000 and Xxxxxx.xxx, Inc., a
Delaware corporation ("Stamps"), with principal offices at 0000 Xxxxx Xxxx
Xxxx., Xxxxx 0000, Xxxxx Xxxxxx, XX 00000-0000.
RECITALS
A. Stamps is engaged in the business of providing mailing and shipping
products and services via the Internet through the creation of technology for
such purposes (as further defined herein, the "Stamps Technology").
B. EncrypTix, which is now being organized and capitalized, desires to
exploit the Stamps Technology throughout the world exclusively in the events and
travel industries and non-exclusively for certain uses within the financial
services industry, each as further specified herein.
C. In connection with the organization and capitalization of EncrypTix,
the parties desire to enter into this agreement pursuant to which Stamps grants
EncrypTix a perpetual, worldwide license to the Stamps Technology (subject to
the reservation by Stamps of certain rights with respect to such technology) for
the uses specified herein.
NOW, THEREFORE, in consideration of the mutual covenants contained herein, the
parties agree as follows:
1. DEFINITIONS
-----------
For purposes of this Agreement, the following terms shall have the following
meanings:
(a) "Change of Control," as to a party shall mean (i) the consummation of a
reorganization, merger or consolidation in which such party is not the surviving
entity or in which it is the surviving entity but less than [***]* of the equity
---
interests of such entity outstanding after such transaction are held, pursuant
to the terms of the transaction, by the pre-transaction security holders of such
party; (ii) a sale or other disposition of assets of such party affecting [***]*
---
or more of the party's assets; or (iii) the acquisition by any individual,
entity or group (within the meaning of Section 13(d)(3) or 14(d)(2) of the
Securities Exchange Act of 1934, as amended) of beneficial ownership (as defined
for purposes of Section 13(d) of such Act) of more than [***]* of either (A) the
---
then outstanding shares of common stock of such party or (B) the combined voting
power of the then outstanding voting securities of such party entitled to vote
generally in the election of directors or similar managers.
(b) "Confidential Information" shall mean any and all information relating
to or disclosed in the course of the negotiation or performance of this License
or any related services agreements or otherwise disclosed between the parties to
this Agreement, which is or should be
-----------------------------------
* Confidential treatment has been requested for redacted portion. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
reasonably understood by the receiving party to be confidential or proprietary
to the disclosing party, including without limitation, the material terms of
this Agreement, source code, trade secrets, inventions, discoveries, formulas,
designs, techniques, applications, processes, ideas, concepts, research and
development, and know-how. "Confidential Information" shall not, however,
include information that: (i) is or shall become generally known or available by
publication, commercial use or otherwise through no fault of the receiving
party; (ii) is known by the receiving party at the time of disclosure and is not
subject to restriction; (iii) is independently developed by the receiving party;
(iv) is lawfully obtained from a third party that rightfully makes such
disclosure without breach of a duty of confidentiality; or (v) is made generally
available by the disclosing party without restriction on disclosure.
(c) "Derivative Work" shall mean with respect to the Stamps Technology, any
modification, improvement or enhancement thereof: (i) with respect to a pre-
existing work entitled to copyright protection under federal law, any work that
is based upon the relevant pre-existing work, such as a revision, modification,
translation, abridgment, condensation or any other form in which the relevant
pre-existing work may be recast, transformed or adapted, which, as a whole,
represents an original work of authorship and the preparation, use and/or
distribution of which, in the absence of this Agreement or other authorization
from the owner, would constitute an infringement of copyright in such pre-
existing work under federal law; (ii) with respect to any intellectual property
for which a patent has Issued, any adaptation, subset, addition, improvement or
combination of such intellectual property the preparation, manufacture, sale,
practice, use and/or distribution of which, in the absence of this Agreement or
other authorization from the owner, would constitute patent infringement of such
intellectual property under federal law or the laws of any foreign jurisdiction;
and (iii) with respect to information entitled to trade secret protection under
California law, any new material, manufacture, invention, information, or data
derived from such information (including new material (etc.) which may be
protectable by copyright, patent or other proprietary rights) the preparation,
manufacture, sale, practice, use and/or distribution of which, in the absence of
this Agreement or other authorization from the owner, would constitute
misappropriation of the trade secret under California law (provided that works
created by or for EncrypTix without the use of any Stamps Confidential
Information shall not be deemed to be "Derivative Works" under this clause
"iii").
(d) "Event" shall mean [***]*.
(e) "Events Field of Use" shall mean [***]*.
(f) "Financial Services Field of Use" shall mean [***]*.
(g) "Intellectual Property Rights" shall mean any and all secret,
proprietary or confidential information, trade secrets, inventions, discoveries,
formulas, designs, techniques, applications, processes, ideas, concepts,
patents, copyrights, and similar rights of any type under the laws of any
governmental authority including, without limitation, all applications and
registrations relating to patents and copyrights, whether presently existing or
created in the future.
(h) "Issued," "Issuing," "Issues" and "Issuance" shall mean the awarding of
a patent based upon a patent application, whether such awarding is effected by
issuance, registration,
-----------------------------------
* Confidential treatment has been requested for redacted portion. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
2
deliverance, sealing, granting or any other act by the United States Patent and
Trademark Office or any foreign governmental entity.
(i) "Licensed Fields of Use" shall mean the Travel and Events Fields of Use
and the Financial Services Field of Use.
(j) "Mail and Postage Field of Use" shall mean [***]*.
(k) "Patents" shall mean all patents (including without limitation, utility
and design patents) Issued or Issuing at any time on patent applications
entitled to an effective filing date on or prior to the third anniversary of the
Effective Date for which, as of the Effective Date or at any time during the
term of this Agreement, Stamps is an actual or beneficial owner or assignee. The
term "Patents" shall also include any patent of the United States or foreign
jurisdiction, which is a substitution, extension, reissue, reexamination or
renewal of any of the foregoing, and any patent issuing on any patent
application related as a divisional or a continuation or a continuation-in-part
of any of the foregoing. Without limiting the foregoing, "Patents" includes the
patents listed on Schedule 1(k) hereto. The foregoing definition shall not limit
the rights, if any, licensed under other terms of this agreement, to technology
that may be developed, reduced to practice, and put on sale or in public use by
Stamps prior to such third anniversary but as to which a patent application is
filed after such third anniversary.
(l) "Stamps Client Software" shall mean the client side software that
allows end-users to use the Stamps Technology in the Licensed Fields of Use. The
foregoing shall not imply that existing client-side software of Stamps would
allow end users to use Stamps Technology in the Licensed Fields of Use.
(m) "Stamps Competitor" shall mean any Third Party that engages in, or that
holds a 10% or greater interest (directly or indirectly) in another Third Party
that engages in, activities that Stamps considers competitive with it in the
mailing or shipping of products and/or services or activities ancillary thereto
including activities related to payment for or in connection with such
activities.
(n) "Stamps Technology" shall mean any and all Intellectual Property Rights
(A) that are now owned by or licensed to Stamps or (B) that are hereafter
created or developed by Stamps at any time during the Technology Transfer Term
or acquired by or licensed to Stamps at any time during the Technology Transfer
Term. "Stamps Technology" shall include Stamps: (1) Patents; (2) software
programs and components (in object code form and source code form, except as
provided in Section 2(g)), including client and/or server software for all
supported platforms along with all related products including, without
limitation, upgrade packs, integrated databases and tools; (3) APIs and
technical and end-user documentation for the programs and components described
in clause "2"; (4) Derivative Works of the products described in clauses "1"
through "3" that are created or developed by Stamps during the Technology
Transfer Term or acquired by or licensed to Stamps during the Technology
Transfer Term (including without limitation, any such Derivative Works that are
created or developed by Stamps pursuant to the provisions of the Incubation,
Technology Transfer and Maintenance Agreement (the "Incubation Agreement")); and
(5) Derivative Works of the products described in clauses "1" through "3" that
are created or developed by or for EncrypTix at any time, including
------------------------------------
* Confidential treatment has been requested for redacted portion. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
3
without limitation, any such Derivative Works that are created or developed by
or for EncrypTix pursuant to the provisions of this Agreement.
(o) "Technology Transfer Term" means the period commencing on the Effective
Date and ending upon the later of (i) the [***]* anniversary of the Effective
Date and (ii) if exclusivity of rights licensed hereunder is extended pursuant
to Section 2(b)(v) hereof in the Travel Field of Use or the Events Field of use
or both such fields of use, the end of the period of such extension.
(p) "Third Party" shall mean any individual, corporation, partnership,
limited liability company, trust, association, governmental entity or other
legal entity other than Stamps and EncrypTix.
(q) "Travel Field of Use" shall mean [***]*.
2. LICENSE TO STAMPS TECHNOLOGY
(a) License Grant. Subject to all the terms of this Agreement, Stamps
-------------
hereby grants to EncrypTix, a fully paid-up, royalty free, perpetual,
irrevocable and worldwide license to exploit the Stamps Technology only as
follows:
(i) distribute and transmit, solely for exploitation in connection with
EncrypTix' business within the Licensed Fields of Use, any product embodying the
Stamps Technology in all media now known or hereafter developed by all methods
of distribution or transmission now known or hereafter developed provided that
--------
reasonable precautions are taken to ensure that such product will be used solely
in the Licensed Fields of Use;
(ii) publicly perform and publicly display, solely for exploitation in
connection with EncrypTix' business within the Licensed Fields of Use, any
product embodying the Stamps Technology in all media now known or hereafter
developed and by all methods of performance or display now known or hereafter
developed within provided that reasonable precautions are taken to ensure that
--------
such product will be used solely in the Licensed Fields of Use;
(iii) make, have made, use, and have used any products or devices clamed
by any Patent, and practice and have practiced any method or process claimed by
any Patent, in either case solely for exploitation in connection with EncrypTix
business within the Licensed Fields of Use, provided that reasonable precautions
--------
are taken to ensure that any such product or device is not resold and is used
only in the Licensed Fields of Use.
(iv) make copies of the Stamps Technology solely for purposes of
exercising the rights granted in this Section 2(a);
(v) create and authorize the creation of Derivative Works of the Stamps
Technology and exercise any of the rights granted in this Section 2(a) with
respect to such Derivative Works provided that: (a) such Derivative Works are
-------- -----
intended and adapted for use in the Licensed Fields of Use and (b) reasonable
precautions are taken to ensure that such Derivative Works will be used only in
connection with EncrypTix business within the Licensed Fields of Use;
------------------------------------
* Confidential treatment has been requested for redacted portion. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
4
(vi) sublicense only the Stamps Client Software as necessary or
appropriate in connection with the provision of EncrypTix' products and services
in the ordinary course of its business within the Licensed Fields of Use; and
(vii) upon prior written notice to Stamps, sublicense any or all of the
rights granted in Sections 2(a)(i) through 2(a)(vi) to any one or more Third
Parties in which EncrypTix owns no less than [***]* of the equity securities;
provided that (A) such sublicensee(s) shall be prohibited from further
--------
sublicensing the Stamps Technology except for sublicenses of the Stamps Client
Software as necessary or appropriate in connection with the provision of such
sublicensees' products and services in the ordinary course of business within
the Licensed Fields of Use and (B) that the sublicensee's rights corresponding
to those in Sections 2(a)(i) through 2(a)(vi) shall be subject to the same
limitations and requirements as to precautions reasonably acceptable to Stamps
as are stated in the corresponding provisions above.
(b) Exclusivity
-----------
(i) Exclusivity in the Travel and Events Fields of Use. The license
--------------------------------------------------
granted to EncrypTix pursuant to Section 2(a) is exclusive with respect to the
Travel and Events Fields of Use for a period of [***]* years from the Effective
Date; provided that to maintain exclusivity, EncrypTix must continue as a
--------
going concern and maintain its ability to pay its debts as they become
due.
(ii) Termination of Exclusivity. At any time that EncrypTix fails to
--------------------------
meet the criteria to maintain exclusivity set forth in Section 2(b)(i), the
license of the Stamps Technology pursuant to Section 2(a) shall become a non-
exclusive license in the Travel and Events Fields of Use.
(iii) Exceptions to Exclusivity. EncrypTix shall be entitled to enforce
the exclusivity set forth in this Section 2(b) against all Third Parties and
Stamps, with the following limited exceptions:
(A) Each of Stamps' existing (as of the Effective Date) non-
exclusive licenses, as set forth on Schedule 2(b)(iii)(A) attached hereto (the
------------
"Existing Agreements"), shall remain in full force and effect until its
expiration and the expiration of any renewal periods exercisable and exercised
by the respective licensees, and EncrypTix shall not be entitled to enforce its
exclusivity hereunder with respect to such Existing Agreements; provided that
--------
Stamps shall not exercise any options to extend such licenses into any fields of
use other than those fields of use licensed thereunder as of the Effective Date
or to renew or extend the term of any such license;
(B) Stamps shall have the right, with prompt notice to Encryptix,
to grant licenses of the Stamps Technology (other than copyright licenses to
Stamps' software) in the Travel and Events Fields of Use to one or more Third
Parties [***]* involving the Stamps Technology;
---
(C) Stamps shall have the right, with prompt notice to Encryptix,
to [***]*; and
---
(D) Stamps shall retain the right to: (i) use the Stamps
Technology and all Derivative Works thereof in the Travel and Events Fields of
Use for the sole purpose of fulfilling its
-------------------
* Confidential treatment has been requested for redacted portion. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
5
obligations under this Agreement or other agreements with EncrypTix and/or to
provide EncrypTix with technical support and maintenance services; (ii) use the
Stamps Technology and all Derivative Works thereof for all purposes outside of
the Travel and Events Fields of Use; and (iii) copy, reproduce and create
Derivative Works of the Stamps Technology (provided that copying pursuant to
this clause (iii) shall not occur to permit, or in connection with, commercial
exploitation of the technology by Stamps in the Travel and Events Fields of Use
while exclusivity continues for that field of use).
(iv) Non-Exclusivity of Financial Services Field of Use;
---------------------------------------------------
Potential Termination. The license granted to EncrypTix pursuant to Section 2(a)
---------------------
is a non-exclusive license of rights in and to the Stamps Technology in the
Financial Services Field of Use (except that, if an activity should exist that
is within both the Travel and Events Fields of Use an the Financial Services
Field of Use, the license will be exclusive as to that activity). Stamps may
terminate EncrypTix' license in the Financial Services Field of Use in the event
that EncrypTix: (i) fails to obtain no less than twenty million dollars
($20,000,000) of equity financing prior to the first anniversary of the
Effective Date; or (ii) fails at any time to continue as a going concern or to
maintain its ability to pay its debts as they become due.
(v) Extension of Exclusivity in the Travel and Events Fields of
-----------------------------------------------------------
Use. Upon the expiration of the [***]* year period of exclusivity defined in
----
Section 2(b)(i), the license granted to EncrypTix pursuant to Section 2(a) shall
remain exclusive with respect to any exclusive field of use (i.e., the Travel
Field of Use or the Events Field of Use, or, if applicable, both of those fields
of use) for an additional [***]* (to the extent that such exclusivity was not
---
theretofore terminated pursuant to Section 2(b)(i) or 2(b)(ii)) if, in [***]*,
---
EncrypTix shall have issued more than [***]* tickets in revenue-generating (for
---
EncrypTix) issuances in such field of use.
(c) Sublicensed Matter.
------------------
(i) To the extent that any of the Stamps Technology is acquired
by or licensed to Stamps from any Third Party licensor that is not under direct
or indirect common ownership with Stamps ("Third Party Technology"), the grant
of license or sublicense rights to EncrypTix with respect to all Third Party
Technology is subject to Stamps' right under its license from each respective
Third Party licensor (the "Primary License") to sublicense the Third Party
Technology, and, consistent with the rights granted to EncrypTix under Section
2.1(a) but subject to the further provisions in this paragraph, Stamps shall
grant to EncrypTix such rights as the Primary License permits. Unless EncrypTix
declines all rights under licenses of Third Party Technology as provided in the
following sentence, EncrypTix shall pay or reimburse Stamps for appropriately
prorated expenses and acquisition costs and any incremental royalties which
Stamps becomes obligated to pay to such Third Party licensor by reason of
EncrypTix' license or sublicense of, or exploitation of, the Third Party
Technology. In connection with future acquisitions of Third Party Technology,
Stamps will, to the extent consistent with any applicable confidentiality
requirements and its other contractual commitments, provide EncrypTix with (i) a
copy of such new license agreements and information on the subject technology
and (ii) a period of ten (10) business days to decline, by notice to Stamps, any
rights thereunder; in which case, notwithstanding the foregoing provisions of
this Section 2, EncrypTix shall have no rights to the Third Party Technology
licensed to Stamps thereunder.
-----------------------
* Confidential treatment has been requested for redacted portion. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
6
(ii) Stamps will maintain accurate records with regard to its obligations
and payments for Third Party Technology and the amounts due from EncrypTix in
connection with Third Party Technology. For the purpose verifying its payment
obligations in connection with Third Party Technology, EncrypTix (or its
representative) will have the right to conduct a reasonable inspection of the
portions of such records that are relevant to those EncrypTix' payment
obligations. Any such audit may be conducted after ten (10) business days prior
written notice to Stamps. EncrypTix shall bear the expense of any audit
conducted pursuant to this paragraph unless such audit shows overcharges in the
amounts reported as payable to Stamps or actually paid to Stamps by EncrypTix
for Third Party Technology for any quarterly period in excess of the greater of
(a) ten percent (10%) of the actual or reported amounts paid or payable to
Stamps for Third Party Technology for such period and (b) Five Thousand Dollars
($5,000.00), in which event Stamps shall bear the reasonable expenses of the
audit.
(d) Additional Field of Use. During the term of this license, EncrypTix
-----------------------
shall have the right to petition Stamps to expand the license granted hereunder
to specific fields of use in addition to the Travel and Events Fields of Use and
the Financial Services Field of Use. Stamps shall consider such petitions in
good faith, however, any grant of additional fields of use (whether exclusive or
-------
non-exclusive) will be at Stamps' sole discretion and for additional
compensation.
(e) Restrictions. EncrypTix shall not (and shall not allow any Third Party
------------
to): (i) decompile, disassemble, or otherwise reverse engineer or attempt to
reconstruct or discover any source code, underlying ideas, or algorithms of the
Stamps Technology by any means whatsoever (except to the extent that applicable
law prohibits reverse engineering restrictions), (ii) remove any product
identification, copyright, patent or other notices, (iii) except to the extent
expressly authorized in this Section 2, modify or incorporate into or with other
software or create a derivative work of any part of the Stamps Technology, or
(iv) sublicense or assign any rights hereunder to any Third Party (including
without limitation, end-user licenses) unless otherwise expressly permitted
under this Section 2.
(f) Patent Markings and Copyright Notices. EncrypTix shall reproduce on or
-------------------------------------
within all products, software, webpages and other media incorporating the Stamps
Technology and on any related media all patent markings and copyright notices as
supplied by Stamps and such additional notices as may reasonably be requested by
Stamps.
(g) Exception to License. Notwithstanding anything else in this Agreement,
--------------------
no license whatsoever is or will be conveyed or granted by this Agreement as to:
(i) the source code version of any Stamps Technology that consist(s) of
[***]*, provided that nothing in this clause "i" limits EncrypTix's rights to
---
obtain object code versions of the foregoing;"
(ii) a new version of, or a replacement for, an item of source code not
furnished to EncrypTix pursuant to the preceding clause "i" provided that Stamps
-------------
will consult with EncrypTix and may include in the license new source code that
would be included but for this restriction unless Stamps determines that it has
legitimate security or other reasons not to do so, and provided that nothing in
this clause "ii" limits EncrypTix's rights to obtain object code versions of the
foregoing; or
--------------------
* Confidential treatment has been requested for redacted portion. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
7
(iii) as to which licensing and provision to EncrypTix as provided in
this Agreement would (A) violate applicable laws or regulations including,
without limitation, Postal Service or Department of Commerce laws or
regulations; (B) violate contractual arrangements between Stamps and shippers or
other entities connected with the Mail and Postage Field of Use; or (C) create a
meaningful risk of a security violation.
Schedule 2(g) hereto presents certain information on the Stamps Technology
being licensed hereunder.
3. TRADEMARKS.
The license granted hereunder does not include any license to use any of
Stamps' trade names, trademarks or service marks; and Stamps reserves all of its
rights and interest therein. Solely in connection with the marketing, promotion
and distribution of its products and services in the Licensed Fields of Use,
EncrypTix shall be entitled to state that its technology is licensed from, or is
the same as, or is based upon, the technology used by Stamps, with wording
approved in advance by Stamps, such approval not to be unreasonably withheld or
delayed.
4. SUPPORT AND MAINTENANCE.
As soon as reasonably practicable, Stamps and EncrypTix will enter into the
Incubation Agreement that will set forth the parties' obligations with respect
to the incubation services to be provided by Stamps to EncrypTix and the
transfer, set-up, support and maintenance of the Stamps Technology being
licensed to EncrypTix hereunder.
5. OWNERSHIP OF INTELLECTUAL PROPERTY
(a) Stamps Technology. Subject to the licenses granted in Section 2, as
-----------------
between Stamps and EncrypTix, Stamps owns and shall own all right, title and
interest in and to the Stamps Technology, as of the Effective Date and at all
times thereafter. EncrypTix agrees that it will not, at any time during or after
the term of this Agreement, (i) do anything which may adversely affect the
validity or enforceability of the Stamps Technology (including any act, or
assistance to any act, which would infringe or lead to the infringement of the
Stamps Technology), or (ii) exercise, or attempt to exercise, any proprietary
rights in the Stamps Technology, other than as expressly set forth herein and in
any other written agreement(s) that may be entered into by the Parties.
(b) Derivative Works. Subject to the licenses granted in Sections 2, as
----------------
between Stamps and EncrypTix, Stamps owns and shall own all right, title and
interest in and to all Derivative Works of the Stamps Technology, regardless of
whether such Derivative Works are created by EncrypTix, Stamps, or any Third
Parties. EncrypTix agrees that it will not, at any time during or after this
Agreement, (i) do anything which may adversely affect the validity or
enforceability of the Derivative Works (including any act, or assistance to any
act, which would infringe or lead to the infringement of the Derivative Works),
or (ii) exercise, or attempt to exercise, any proprietary rights in the
Derivative Works, other than as expressly set forth herein and in any other
written agreement(s) that may be entered into by the Parties. To the extent that
any Derivative Works of the Stamps Technology are created by or for EncrypTix,
such Derivative Works shall be included in the license granted under Section 2
and shall be subject to the terms of this Agreement. Furthermore, to the extent
that EncrypTix creates or has created any patents that are Derivative Works of
any of Stamps' Patents, EncrypTix shall assign such patents, and cause the
patentee(s) to assign such patents to Stamps subject to such license thereto as
this Agreement provides to EncrypTix.
8
(c) EncrypTix Technology. Except as provided in Section 5(b) and 5(d),
--------------------
EncrypTix shall own all right, title and interest in and to all intellectual
property created by EncrypTix (the "EncrypTix Technology"). EncrypTix hereby
grants to Stamps a non-exclusive, fully paid-up, royalty free, perpetual,
irrevocable and worldwide license, with right to sublicense, to use, reproduce,
distribute, transmit, publicly perform and display, modify and create derivative
works of EncrypTix Technology developed during the Technology Transfer Term and
products embodying the EncrypTix Technology developed during the Technology
Transfer Term, and to make, use, offer for sale and sell products and services
that incorporate the EncrypTix Technology developed during the Technology
Transfer Term or modifications thereof, each for exploitation solely in the
Mailing and Shipping Field of Use. Stamps agrees that it will not, at any time
during or after this Agreement, (i) do anything which may adversely affect the
validity or enforceability of the EncrypTix Technology (including any act, or
assistance to any act, which would infringe or lead to the infringement of the
EncrypTix Technology), or (ii) exercise, or attempt to exercise, any proprietary
rights in the EncrypTix Technology, other than as expressly set forth herein and
in any other written agreement(s) that may be entered into by the Parties.
(d) Co-Development. Any intellectual property resulting from co-development
--------------
efforts of EncrypTix and Stamps that do not constitute Derivative Works of the
Stamps Technology shall be owned by the parties jointly (the "Joint
Technology"). Each of EncrypTix and Stamps hereby grants to the other party a
non-exclusive, fully paid-up, royalty free, perpetual, irrevocable and worldwide
license to use, reproduce, distribute, transmit, publicly perform and display,
sublicense, modify and create derivative works of the Joint Technology and
products embodying the Joint Technology, and to make, use, offer for sale and
sell products and services that incorporate Joint Technology or modifications
thereof; provided that EncrypTix shall have the sole right to use and sublicense
--------
the Joint Technology in the Travel and Events Fields of Use, and Stamps shall
have the sole right to use and sublicense the Joint Technology in the Mailing
and Shipping Field of Use.
6. CONFIDENTIAL INFORMATION
(a) Treatment of Confidential Information. Stamps and EncrypTix recognize
-------------------------------------
that, in connection with the preparation or performance of this Agreement, each
of them may disclose to the other its Confidential Information, or each may
obtain Confidential Information of the other through preparation of or
performance under this Agreement, including by the creation of materials and the
development of technology and techniques that are not generally known. Except as
permitted in connection with the license rights granted pursuant to this
Agreement, a party who obtains any Confidential Information of the other agrees
to maintain the confidential status of such Confidential Information, not to use
any such Confidential Information for any purpose other than the purpose for
which it was originally disclosed to the receiving party, to disclose such
Confidential Information only to those of its employees having a need to know
such information, and not to disclose any of such Confidential Information to
any Third Party other than consultants, contractors and advisors under a written
obligation to keep such information confidential and to use it only for the
purposes set forth above. Neither Stamps and EncrypTix shall disclose the
other's Confidential Information to any person except on a "need-to-know" basis.
(b) Stamps Security Policies. EncrypTix shall comply at all times with
------------------------
Stamps' security policies as they may be amended from time to time. Stamps shall
keep EncrypTix reasonably advised of Stamps security policies and changes
therein.
(c) Required Disclosure. The Parties recognize that each may be required
-------------------
by law or order of a court or other governmental authority, SEC regulations, or
the like, to disclose the other's
9
Confidential Information, and that each shall endeavor to stop or limit such
disclosure and afford the other the opportunity to do so. Each party shall
immediately give the other party written notice of any anticipated disclosure
pursuant to this Section 6(c) and will provide reasonable assistance to the
other party, at the other party's expense, in resisting such disclosure. Without
limiting the foregoing, any party making filings with the Securities and
Exchange Commission shall include a copy of this Agreement only if and to the
extent required and shall withhold, or use its best efforts to prevent public
disclosure of, Schedule 2(g) hereto. In the case of filings made by EncrypTix,
EncrypTix shall also consult with Stamps, withhold Schedule 2(g) if possible,
seek confidential treatment of Schedule 2(g) if it cannot be withheld entirely,
and, to the extent necessary to secure confidential treatment of the material
therein that Stamps seeks to protect, redact such schedule.
(d) Third-party Confidential Information. Any confidential information of a
------------------------------------
third party disclosed by a party to the other shall be considered Confidential
Information hereunder and shall be subject to such additional restrictions as
may be imposed by such third party on the discloser and communicated in writing
by the discloser to the recipient.
(e) Injunctive Relief. Each party agrees that if a court of competent
-----------------
jurisdiction determines that one party has breached, or attempted or threatened
to breach, any of its confidentiality obligations to the other party or its
proprietary rights, such other party will be entitled to obtain appropriate
injunctive relief and other measures restraining further attempted or threatened
breaches of such obligations.
7. ENFORCEMENT AND DEFENSE
(a) Control.
-------
(i) Stamps shall have the right, but not the obligation, to control the
investigation, enforcement, defense and settlement of any action with respect to
the Stamps Technology (including any action in which the ownership, validity, or
enforceability of any of the Stamps Technology is or may be put at issue or in
which any third party asserts or may assert that use of the Stamps Technology
(including Derivative Works prepared by or for EncrypTix pursuant to
authorization in this License Agreement) by Stamps or by EncrypTix infringes or
will infringe the intellectual property rights of one or more third parties)
provided that, with respect to copyrights and trade secrets only, and only for
--------
claims within the Travel and Events Fields of Use, EncrypTix shall have the
right, at its own cost and expense, to participate in such action with counsel
of its choice. Except as provided in Section 2(c)(i), any settlement that (A)
grants to third parties any rights to the Stamps Technology in the Travel and
Events Fields of Use, or (B) that limits any of EncrypTix' rights in any
Licensed Fields of Use, shall be subject to EncrypTix' prior written consent,
which shall not be unreasonably withheld.
(ii) If Stamps elects not to pursue any enforcement or defense of an
action referred to in the first sentence of the immediately preceding paragraph
"i", EncrypTix shall have the right to pursue such enforcement or defense on its
own, solely with respect the validity and use of the Stamps Technology in the
Licensed Fields of Use, including the settlement of any claims solely within the
Licensed Fields of Use. Any settlements that may affect the Stamps Technology
outside of the Licensed Fields of Use will require Stamps' prior written
consent, which shall not be unreasonably withheld.
(b) Notice. Each party shall provide the other prompt notice of any claims
------
of infringement of which such party becomes aware.
10
(c) Assistance. Each party will provide the other all assistance
----------
reasonably necessary to enforce or defend the Stamps Technology.
(d) Sharing of Economics. If EncrypTix participates in an action with
--------------------
respect to the Stamps Technology, then Stamps and EncrypTix will share equitably
the benefits (net of their respective burdens) of such enforcement action, such
sharing to reflect: (i) the total benefits received collectively by Stamps and
EncrypTix as a result of the action (including any appeals, etc.) and (ii) the
extent to which those benefits reflected the efforts and contributions made in
such action by Stamps or by EncrypTix respectively.
8. TERM AND TERMINATION
(a) Term. Unless earlier terminated under the provisions of this Section,
----
this Agreement shall remain in full force and effect perpetually.
(b) Termination for Breach Generally.
--------------------------------
(i) Notwithstanding the provisions of Section 8(a), this Agreement may
be terminated by either party (A) following a determination by the arbitrator
pursuant to the expedited arbitration procedures set forth in Schedule 8(b),
that the Terminating Party (as defined in Schedule 8(b)) would be likely to
prevail at a full trial on the merits on the claim that the Responding Party (as
there defined) has committed a material breach of the Agreement, unless (i) the
breach is curable and (ii) the Responding Party provides notice of its intent to
cure it and such cure is effected within the time stated in paragraph "9" of
Schedule 8(b) or (B) after a judicial declaration or finding to the effect of
the determination referred to in clause "A" above (or that a material breach has
actually occurred) unless the breach is curable, a notice of intent to cure is
provided thereafter, and the breach is cured as described (and pursuant to the
time provisions referred to) in clause "A.ii" above. A breach involving an
improper release of any Stamps Technology is not effectively cured unless and
until (A) such improper release ends and (B) Stamps receives reasonable
assurances that it will not suffer substantial injury or loss as a consequence
of such improper release and reasonable assurances that such a breach will not
occur again.
(ii) The parties to this agreement will use their best efforts to agree
on the pre-approved arbitrators for purposes of Schedule 8(b) hereof within
fifteen calendar days after the date of this agreement and to list them on
Attachment B to Schedule 8(b) hereof. If at least four (4) such pre-approved
arbitrators are not so agreed upon in a specific order of priority as provided
in that Schedule before the time that one party or the other to this Agreement
delivers a written notice of material breach by the other party to such other
party (or within five business days thereafter, as to which the parties will use
their good faith efforts to agree), the requirement for an arbitrator's
determination prior to the commencement of a cure period and prior to a
termination of this Agreement for a material beach shall not apply. In that
event, if there actually has been a material breach by one party, the other
party may provide written notice thereof and terminate this agreement thirty
calendar days thereafter unless the breach is curable and is cured within that
thirty-day period.
(iii) Nothing in Sections 8(a) or 8(b) shall limit the right of either
party to seek and obtain judicial relief including, without limitation: (a)
injunctive or other judicial relief to prevent or halt an improper disclosure,
release, or use of either party's Intellectual Property Rights; (b) damages or
other relief for a breach of this Agreement; and (c) a declaration that a
material breach has occurred.
11
(c) Other Events of Early Termination. Stamps may, in Stamps' sole and
---------------------------------
absolute discretion, terminate this Agreement immediately by notice to EncrypTix
in the event of any of the following events: (i) except to the extent that an
opportunity for cure may be available in accordance with the last sentence of
this paragraph and a cure may be effected as provided there, any sublicense by
EncrypTix of rights to any Stamps Competitor other than a sublicense by
EncrypTix in the ordinary course of its business of only client-side software to
such entity as an end user consistent with the rights of EncrypTix in Section 2
hereof; (ii) any assignment of rights (including a Change of Control) by
EncrypTix to any Stamps Competitor; (iii) a Change of Control of EncrypTix at a
valuation of that entire company, on a fully diluted basis, of less than [***]*
dollars; and (iv) to the extent permitted under law, in the event that (A) any
proceeding shall be instituted by or against EncrypTix seeking to adjudicate it
bankrupt or insolvent, or seeking liquidation, winding up, reorganization,
arrangement, adjustment, protection, relief or composition of it or its debts
under any law relating to bankruptcy, insolvency or reorganization or relief of
debtors, or seeking an entry of an order for relief or the appointment of a
receiver, trustee or other similar official for it or any substantial part of
its property (if such proceeding shall not have been dismissed without any such
relief within sixty days after such institution) or (B) EncrypTix shall take any
action to authorize any of the foregoing actions, or (C) EncrypTix shall be
unable at any time to pay its debts as they become due. In the case of clause
"i" above only, EncrypTix shall have an opportunity to cure the event allowing
termination if it provides notice to Stamps within twenty days after such
sublicense occurs; and such a cure shall be deemed to have been effected if,
within thirty (30) days after receipt of notice from Stamps that the licensee is
a Stamps Competitor, EncrypTix terminates such sublicense fully and effectively.
(d) No Waiver or Release. Termination of this Agreement by either party
--------------------
shall not act as a waiver of any breach of this Agreement and shall not act as a
release of either party from any liability for breach of such party's
obligations under this Agreement. No termination of this Agreement shall affect
the stock ownership or other rights or privileges obtained by Stamps in the
organization and capitalization of EncrypTix or, except as provided in other
agreements between the parties, the rights of the parties under those
agreements.
(e) Return of Confidential Information. Within thirty (30) calendar days
----------------------------------
after termination of this Agreement, each party hereunder shall either deliver
to the other, or destroy, all copies of any materials provided hereunder in its
possession or under its control, and shall furnish to the other party an
affidavit signed by an officer of its company certifying that to the best of its
knowledge, such delivery or destruction has been fully effected.
(f) Survival of Certain Provisions. Notwithstanding the termination of
------------------------------
the Agreement for any reason, the provisions of Sections 5; 6; 8(e) and (f); 9;
10; and 11(c), (d), (e), (h), (i) and (k) of this Agreement shall survive such
termination indefinitely. In addition, any obligations which expressly or by
their nature are to continue after termination of the Agreement shall survive
and remain in effect.
9. REPRESENTATIONS AND WARRANTIES
(a) Mutual Representations and Warranties. Each party represents,
-------------------------------------
warrants, and covenants to the other that: (i) it has the full corporate right,
power and authority to enter into this Agreement and to perform the acts
required of it pursuant to this Agreement; (ii) the execution of this Agreement
and the performance of its obligations and duties under this Agreement will not
violate any agreement to which it is a party or the rights of any other party;
and (iii) it is not relying on nor does the other party make any
representations, warranties or agreements not expressly stated in this
Agreement.
* Confidential treatment has been requested for redacted portion. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
12
(b) Stamps' Representations and Warranties. Stamps represents and warrants
--------------------------------------
that the Stamps Technology, as used by Stamps, does not infringe any copyright
or misappropriate any trade secret of any third party. [***]*.
(c) [***]*
(d) Remedy for Infringement. If EncrypTix is enjoined or restrained by a
court of competent jurisdiction from exercising any of its rights under this
Agreement as a result of an Infringement claim, Stamps shall take one of the
following steps (determined as among those steps in Stamps' sole discretion)
provided that at least one of them is commercially reasonable: (i) procure for
-------------
EncrypTix the right to continue using the Stamps Technology; (ii) modify the
Stamps Technology to perform its intended function without infringing Third
Party rights; or (iii) substitute technology of substantially comparable
functionality and performance. Subject to compliance with the immediately
preceding sentence, Stamps shall have no further obligations or liability to
EncrypTix for the inability of EncrypTix to use any or all of the Stamps
Technology because of conflicting Third Party reports.
(e) [***]*
--------------------------
* Confidential treatment has been requested for redacted portion. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
13
(f) Exception. The provisions of Sections 9(c) and (d) shall not apply (i)
---------
if the Stamps Technology is modified by EncrypTix or EncrypTix' designee (which
includes Stamps acting as required by EncrypTix under the Incubation Agreement)
(it being agreed that a Derivative Work prepared by EncrypTix or its designee
shall be deemed "modified" Stamps Technology notwithstanding that such
Derivative Work may fall within the definition of "Stamps Technology"), but
solely to the extent the alleged Infringement is caused by such modification;
(ii) if the Stamps Technology is combined with products, processes or materials
by or for EncrypTix but solely to the extent the alleged Infringement is caused
by such combination; (iii) to the extent that the allegedly Infringing activity
continues after Stamps has provided EncrypTix modifications that would have
avoided the alleged Infringement; or (iv) to the extent that the alleged
Infringement is based on a United States patent [***]*.
---
(g) Limited Remedy. Without limiting the effect of Section 10(b) hereof, in
--------------
no event shall EncrypTix have any right to recover from Stamps any amount
representing lost profits or lost business value of EncrypTix that might result
from (i) EncrypTix being precluded from using any of the Stamps Technology in
the Licensed Fields of Use because of conflicting proprietary rights of one or
more Third Parties or (ii) the invalidity of any of the Stamps Technology.
LIMITATIONS OF LIABILITY
(a) Disclaimer. STAMPS MAKES NO REPRESENTATION OR WARRANTY TO ENCRYPTIX,
----------
NOR SHALL STAMPS BE LIABLE TO ENCRYPTIX, FOR THE FAILURE OF PERFORMANCE OF THE
STAMPS TECHNOLOGY EXCEPT AS EXPRESSLY PROVIDED HEREIN. WITHOUT LIMITING THE
GENERALITY OF THE FOREGOING, THE STAMPS TECHNOLOGY IS PROVIDED TO ENCRYPTIX BY
STAMPS "AS-IS" AND STAMPS HEREBY DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO, ANY IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS
FOR A PARTICULAR PURPOSE OR, EXCEPT AS EXPRESSLY PROVIDED HEREIN, OF NON-
INFRINGEMENT OF THIRD PARTIES' RIGHTS.
(b) No Consequential Damages. EXCEPT FOR A BREACH OF SECTIONS 5 (OWNERSHIP
------------------------
OF INTELLECTUAL PROPERTY) AND 6 (CONFIDENTIAL INFORMATION), IN NO EVENT SHALL A
PARTY TO THIS AGREEMENT BE LIABLE FOR LOST PROFITS, OR ANY SPECIAL, INDIRECT,
INCIDENTAL OR CONSEQUENTIAL DAMAGES IN ANY WAY ARISING OUT OF OR RELATING TO
THIS AGREEMENT, EVEN IN THE EVENT SUCH PARTY HAS BEEN ADVISED AS TO THE
POSSIBILITY OF SUCH DAMAGES.
10. MISCELLANEOUS PROVISIONS
(a) Exports; Re-Exports. EncrypTix shall adhere to The Export
-------------------
Administration Act of 1979, as amended, The U.S. Export Administration
Regulations (15 C.F.R. Parts 730-799), and any other applicable laws and
regulations of the United States or any other countries governing the export or
import of commodities and technical data. EncrypTix agrees not to export or re-
export the Stamps Technology or any Intellectual Property Rights therein from
the United States to any other country, or between two countries, without first
obtaining any appropriate U.S. and foreign government export
----------------------
* Confidential treatment has been requested for redacted portion. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
14
and import licenses and permits, and the prior written consent of Stamps, which
consent shall not be unreasonably withheld.
(b) Bankruptcy. All rights and licenses granted under or pursuant to this
----------
Agreement by Stamps to EncrypTix with respect to the Stamps Technology are, and
shall otherwise be deemed to be, for purposes of (S) 365(n) of the United States
Bankruptcy Code, 11 U.S.C. (S) 101, et seq. (the "Bankruptcy Code"), licenses of
rights to "intellectual property" as defined under (S) 101(56) of the Bankruptcy
Code. The parties agree that EncrypTix, as a licensee of such rights and
licenses, shall retain and may fully exercise all of its rights and elections
under the Bankruptcy Code; provided it abides by the terms of this Agreement.
The parties further agree that, in the event that any proceeding shall be
instituted by or against Stamps seeking to adjudicate it bankrupt or insolvent,
or seeking liquidation, winding up, reorganization, arrangement, adjustment,
protection, relief or composition of it or its debts under any law relating to
bankruptcy, insolvency or reorganization or relief of debtors, or seeking an
entry of an order for relief or the appointment of a receiver, trustee or other
similar official for it or any substantial part of its property, or Stamps shall
take any action to authorize any of the foregoing actions (each a "Proceeding"),
EncrypTix shall have the right to retain and enforce its rights under this
Agreement including, but not limited to, the right to continue to use the Stamps
Technology and all versions and derivatives thereof, and all documentation and
other supporting material related thereto, in accordance with the terms and
conditions of this Agreement.
(c) Notices. Except as expressly provided herein to the contrary, any
-------
notice, request, demand or communication required or permitted hereunder shall
be in writing and shall be deemed to be properly given upon the earlier of: (i)
actual receipt by the addressee; and (ii) five (5) business days after deposit
in the U.S. mail, postage prepaid, when mailed by registered or certified U.S.
mail, return receipt requested, or two (2) business days after being sent via
private industry courier to the respective parties at the addresses forth set
forth above or to such other person or address as the parties may from time to
time designate in a writing delivered pursuant to this Section 11(c). Notices
to: (i) Stamps shall be attention to: Xxxx Xxxxx, President and CEO with a copy
to: Xxxx Xxxxxxxx, Senior Director, IP & Licensing, at the address for Stamps
first indicated above; and (ii) EncrypTix shall be attention to: Xxx Xxxxx,
President, at the address for EncrypTix first indicated above.
(d) Waiver and Amendment. The waiver by either party of a breach of or a
--------------------
default under any provision of this Agreement, shall not be construed as a
waiver of any subsequent breach of the same or any other provision of the
Agreement, nor shall any delay or omission on the part of either party to
exercise or avail itself of any right or remedy that it has or may have
hereunder operate as a waiver of any right or remedy.
(e) Remedies Cumulative. Except where otherwise specified, the rights and
-------------------
remedies granted to a party under this Agreement are cumulative and in addition
to, and not in lieu of, any other rights or remedies which the party may possess
at law or in equity, including, without limitation, rights or remedies under
applicable patent, copyright, trade secret or proprietary rights laws, rules or
regulations.
(f) Nature of Relationship. No agency, partnership, joint venture, or
----------------------
employment is created as a result of this Agreement and neither EncrypTix nor
EncrypTix' agents shall have any authority of any kind to bind Stamps in any
respect whatsoever, nor shall Stamps or Stamps' agents have any authority of any
kind to bind EncrypTix.
(g) Headings. The captions and section and paragraph headings used in this
--------
Agreement are inserted for convenience only and shall not affect the meaning or
interpretation of this Agreement.
15
(h) Attorneys' Fees. If any party to this Agreement brings an action
---------------
against the other party to enforce its rights under this Agreement, the
prevailing party shall be entitled to recover its costs and expenses, including
without limitation, attorneys' fees and costs incurred in connection with such
action, including any appeal of such action.
(i) Enforceability. If the application of any provision or provisions of
--------------
this Agreement to any particular facts of circumstances shall be held to be
invalid or unenforceable by any court of competent jurisdiction, then: (i) the
validity and enforceability of such provision or provisions as applied to any
other particular facts or circumstances and the validity of other provisions of
this Agreement shall not in any way be affected or impaired thereby; and (ii)
such provision or provisions shall be reformed without further action by the
parties hereto and only to the extent necessary to make such provision or
provisions valid and enforceable when applied to such particular facts and
circumstances.
(j) Entire Agreement. This Agreement, including the attachments hereto,
----------------
constitute the entire agreement between the parties concerning the subject
matter hereof and supersedes all proposals or prior agreements whether oral or
written, and all communications between the parties relating to the subject
matter of this Agreement and all past courses of dealing or industry custom. The
terms and conditions of this Agreement shall prevail, notwithstanding any
variation with any purchase order or other written instrument submitted by
EncrypTix, whether formally rejected by Stamps or not.
(k) Applicable Law. This Agreement shall be interpreted and construed in
--------------
accordance with the laws of the State of California without regard to the
principles of conflicts of laws, and with the same force and effect as if fully
executed and performed therein. Any action or proceeding brought by either party
against the other arising out of or related to this Agreement shall be brought
in a state or federal court of competent jurisdiction located in the county of
Los Angeles, California and EncrypTix and Stamps each hereby submits to the in
personam jurisdiction of such courts for purposes of any such action or
proceeding.
IN WITNESS WHEREOF, the parties to this Agreement by their duly authorized
representatives have signed their names below:
XXXXXX.XXX, INC. ENCRYPTIX, INC.
By: /s/ Xxxx Xxxxx By: /s/ Xxx Xxxxx
-------------------------- -------------------------------
Xxxx Xxxxx, Chairman and CEO Xxx Xxxxx, President and CEO
16
Schedule 1(k)
Existing Stamps Patents
-----------------------
Number Inventor Title
------ -------- -----
US5638513 Xxxxx Xxxxxx Secure software rental system using
continuous asynchronous password
verification
XX0000000 Xxxxx Xxxxxx Secure software rental system using
distributed software
US5495411 Xxxxx Xxxxxx Secure software rental system using
continuous asynchronous password
verification
Schedule 2(b)(iii)(A)
Existing Agreements
-------------------
1. License Agreement dated May 13, 1999 by and between Xxxxx Xxxxxx and
Xxxxxx.xxx.
Schedule 2(g)
Licensed Software
-----------------
1. [***]*
---
____________________________
* Confidential treatment has been requested for redacted portion. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
Schedule 8(b)
Expedited Arbitration Procedures
--------------------------------
The following procedures are applicable solely for an expedited confirmation for
a material breach of the Agreement for purposes of Section 8(b).
1. A party desiring to terminate the Agreement for a material breach (the
"Terminating Party") by the other party shell deliver a Demand for
Expedited Determination ("Demand") to each of the following:
a. The opposite party to the Agreement (the "Responding Party"), and
b. Each of the individuals identified on Attachment B to this
Schedule (the "Pre-Approved Arbitrators").
2. The Demand shall be executed by the Terminating Party and shall:
a. State that the Terminating Party demands an expedited
determination regarding whether the Responding Party has
committed a material breach of the Agreement and that this
expedited determination is to be made under Section 8 of the
Agreement and pursuant to the procedures set forth in this
Schedule 8(b),
b. Provide reasonable notice of the events and circumstances
believed to amount to the material breach, and
c. Be accompanied by (i) a Notice to Pre-Approved Arbitrators (the
"Notice") which shall include, without limitation, substantially
the statements set forth on Attachment A to this Schedule and
(ii) a copy of this Agreement and its Schedules.
3. A single arbitrator shall decide the matter, and that person shall be
the "available" Pre-Approved Arbitrator (as "available" is defined in
the Notice) listed highest on Attachment B to this Schedule who
responds to the parties as provided and within the time stated in the
Notice. The parties to this Agreement agree to pay (initially in equal
amounts but subject to an award of fees and costs to the prevailing
party as provided below) the normal or customary charges of the
arbitrator, to advance promptly and in equal amounts an aggregate
amount requested by the arbitrator as a retainer (which shall be
refundable if and to the extent not used), to replenish such retainer
as used to the extent such arbitrator may request, and to execute such
reasonably customary submission agreement as the arbitrator may
request.
4. The arbitrator shall convene a hearing to determine the following
issue: whether the Terminating Party would be likely to prevail at a
full trial on the merits on the claim that the Responding Party has
committed a material breach of the Agreement. The determination of the
arbitrator shall be based upon the evidence and argument presented
during the hearings as well as any written briefs and evidence that
may be submitted to him/her (and the adverse party) prior to the
hearing. The arbitrator shall select a date or dates for the hearing
that are no less than ten days and no more than 20 days after delivery
of the Demand. The hearing shall last not more than two full days, and
the parties shall split equally the time available to them for the
presentation of evidence. The
arbitrator shall also state in writing whether he believes that the
position of one party in and in connection with the arbitration was
significantly more justified and correct than that of the other party. If
so, the party identified as having had the more justified and correct
position shall be deemed the "prevailing party," and the arbitrator's
statement so identifying such party shall amount to an award of the
reasonable costs and fees incurred by such party in connection with the
arbitration, which shall be paid by the other party within thirty days
after delivery to it of reasonable summary documentation thereof.
5. No later than five (5) calendar days before the hearing, each party may
deliver to the other party a request for immediate production of such
documents and/or other evidence or information as the requesting party
believes are readily available to the other party and are important for
preparation or presentation at the hearing. The requested documents shall
be produced three (3) days prior to the hearing. The failure of either
party to produce such available materials as are so requested by the other
party shall not be grounds for sanctions but may be taken into
consideration by the arbitrator to the extent, if any, that he/she believes
it relevant.
6. Not later than twenty-four (24) hours before the hearing, each party may
file with the arbitrator and serve on the adverse party a brief and any
supporting evidence, including declarations or documentary materials.
7. The arbitrator's decision shall not be admissible in evidence or disclosed
in any judicial proceeding; provided, however, that this provision shall
not apply to any notice of the claimed breach (which shall not include the
Demand) nor any action taken to cure the claimed breach.
8. To the extent they are consistent with the provisions of the Agreement
(including this Schedule and its attachments), the arbitration shall be
conducted under and pursuant to the Commercial Arbitration Rules of the AAA
(the "AAA Rules") (but need not be administered by the AAA except as
hereinafter provided). In the event that the procedures in this Schedule
and the attachments hereto fail to produce an arbitrator able to proceed
with the arbitration or fail in another respect(s) to permit the expedited
determination to be made as contemplated in the Agreement, a single
arbitrator shall be appointed by the AAA and the proceeding shall be
conducted under the AAA Rules consistent, to the extent possible, with the
provisions of this Schedule. (The parties shall request that the AAA select
as the arbitrator a single person having experience in technology or
technology licensing disputes or in disputes involving computer software.)
The arbitration conducted by the AAA shall be for the limited purposes
specified in paragraph 4 hereof and shall be decided within 30 days. Once
an arbitrator is selected, the timing of the arbitration and the procedures
for the arbitration shall be as specified in paragraphs 4 through 7 hereof.
9. If the arbitrator determines that the Terminating Party would be likely to
prevail at a full trial on the merits on the claim that the Responding
Party committed a material breach of the Agreement, and if the breach is
curable, the Responding Party may decide whether to cure the confirmed
breach and, if it is and such party provides notice to the Terminating
Party within two (2) business days after receipt of the arbitrator's
decision that it has elected to effect such a cure, shall have thirty (30)
calendar days from the decision of the arbitrator to cure the breach.
10. If the arbitrator determines that there was a material breach of this
Agreement, the parties hereby express their willingness to have the
arbitrator comment upon and offer suggestions as to whether the breach is
curable and, if so, how the cure may be effected. Any such statements,
however, shall be non- binding and inadmissible for any purposes in any
separate proceedings. In no event,
2
absent the written consent of both parties, shall there be continuing
proceedings or additional hearings before the arbitrator on the nature or
adequacy of the cure.
These expedited procedures are intended to allow either party to the Agreement
to terminate the Agreement without undue delay in the event of a material breach
by the other party while giving the other party the benefit of an outside
person's review of the matter prior to the termination and, if the breach is
curable, an opportunity to cure. These procedures are intended to be summary in
nature and non-exclusive. A party believing that the opposite party has
committed a material breach may institute judicial proceedings (for damages
and/or for declaratory, equitable, and/or other relief): (a) at the same time as
utilizing these summary procedures or (b) after trying unsuccessfully to utilize
these procedures or having begun but not having completed use of these
procedures or (c) after and notwithstanding an adverse determination by the
arbitrator in an expedited arbitration under these procedures. The doctrines of
collateral estoppel and res judicata shall be inapplicable to the findings,
rulings, and all other aspects of these summary proceedings.
3
Attachment A
to
Schedule 8(b)
Notice to Pre-Approved Arbitrators
----------------------------------
An expedited arbitration has been initiated under the procedures set forth in
the License Agreement between Xxxxxx.xxx and EncrypTix, Inc. As you will recall,
you and several other individuals are on the list of pre-approved arbitrators
for that expedited arbitration. A copy of the Demand for Expedited Determination
(which has an attached copy of the License Agreement) is enclosed with this
notice.
Under the License Agreement, the expedited arbitration hearing is to commence
within ten (10) days after the date this Notice is delivered to your address and
to the addresses of the other pre-approved arbitrators and to the responding
party (the "Delivery Date"), or as soon thereafter as the top-listed available
arbitrator on the list is able to schedule a hearing. The Delivery Date is
-----------.
The pre-approved arbitrators such as you are considered "available" if they can
schedule one full day for the hearing (which may be a Saturday, Sunday, or legal
holiday) within twenty (20) days after the delivery date identified above and
can commit to deliver a brief written statement of their determination (no
explanation, findings, conclusion, or opinion necessary) within five (5)
business days after that. Unless otherwise agreed by the parties, the location
of the arbitration hearing is to be in Los Angeles or Santa Monica, California
at 9:30 A.M. on the date and at a place set by the top-listed available
arbitrator.
The other procedures for the expedited arbitration are set forth in Schedule
8(b) to the License Agreement, a copy of which is enclosed herewith.
Please fax, email or deliver to both of the parties to the License Agreement --
as soon as possible -- a statement of when you can be available to conduct a
one-day hearing in this matter at some time from the tenth day to the twentieth
day after the Delivery Date. The current addresses fax numbers and email numbers
of the parties are:
Xxxxxx.xxx EncrypTix, Inc.
______________________ ______________________
______________________ ______________________
If you are available to take part in these proceedings, it is important that you
deliver your response to both of the parties listed above no later than the
fourth (4th) day after the Delivery Date.
4
Attachment B
to
Schedule 8(b)
Pre-Approved Arbitrators
------------------------
1. __________________________________
__________________________________
__________________________________
fax: ___________________________
email: ___________________________
2. __________________________________
__________________________________
__________________________________
fax: _____________________________
email: ___________________________
3. __________________________________
__________________________________
__________________________________
fax: _____________________________
email: ___________________________
4. __________________________________
__________________________________
__________________________________
fax: _____________________________
email: ___________________________
5
