EXHIBIT 10.1
INTELLECTUAL PROPERTY TRANSFER AGREEMENT
This agreement (this "Agreement") is entered into this 10th day of March, 2005
(the "Effective Date"), between QuietTiger, Inc ("QT"), a Nevada corporation
having its principal place of business located at 000 Xxxxx 00xx Xxxxxx, Xxxxx
000, Xxxxxxx, Xxxxxxx 00000, and Dark Noise Technologies Ltd ("DNT") located at
00 Xx. Xxxxx Xx., Xxxxxxxxx, Xxxxx Xxxxxxxxx, XX0 0XX.
RECITALS
WHEREAS QuietTiger, Inc. maintains the exclusive marketing rights to SunnComm's
intellectual property and trademarks associated with current and future versions
of the MediaMax copy control and content management technology used for the
protection and management of enhanced audio-only and audiovisual compact discs
(hereinafter "CD(s)") and enhanced audio-only and audiovisual digital video
discs (hereinafter "DVD(s)"); and
WHEREAS QuietTiger, Inc. is engaged in the business of developing, marketing,
and licensing proprietary copy control and content management technologies and
products designed to prevent the illegal usable reproduction of the content
embodied on CDs and DVDs as well as to provide a legal means for the CD/DVD
buyer to make licensed copies of their legally purchased CD/DVDs as designated
by the copyright owner; and
WHEREAS Dark Noise Technologies Ltd owns certain Intellectual Property
(hereinafter "IP") including, but not limited to, patent applications
114789P102817GB, 117332P102817US and PCT/GB2004/000269 together with all related
documentation and technology demonstrators and prototypes associated with the
listed patent applications; and
WHEREAS the parties desire to enter into this Agreement, whereby DNT transfers
ownership of their intellectual IP to QT.
AGREEMENT
1. The DNT IP consists of the patent applications 114789P102817GB,
117332P102817US and PCT/GB2004/000269 together with all related documentation
and the technology demonstrators and prototypes developed by DNT to date. DNT
shall transfer ownership of its IP to QT and, as of the date of that transfer,
QT will take over responsibility for all costs and liabilities related to the
patents including the costs involved in patent filing and administration. DNT
shall deliver to QT the existing technology demonstrators and prototypes
developed by DNT to date as well as test results, source code, software, program
modules, patent filings and status, documentation, utilities and all research
and development notes. The pending patents are to include the current
disposition of each and countries where they are filed.
2. QT may engage external resources to continue the Research and Development of
the IP and once a marketable product has been developed, QT shall undertake
sales and marketing of the product. QT shall provide DNT with detailed quarterly
revenue updates relating to any marketing or sales of any products using the DNT
IP.
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3. DNT shall receive a 25% royalty on incremental net revenues generated by the
inclusion of DNT within current and future QT product offerings. Said royalties
are subject to QT first recouping their investment in the development of such
products. QT shall keep a record of all research and development expenditure and
provide these details to DNT in order to calculate the amounts to be recouped by
QT out of net revenues achieved.
4. QT shall provide DNT with quarterly statements of sales revenues achieved by
any products based on or using the DNT IP. Any royalties due to DNT shall be
paid by QT within 30 days of the end of the quarter within which the revenue is
collected.
5. DNT shall retain the right, where commercially reasonable, to exploit its IP
in commercial environments such as broadcasting and cinemas that do not conflict
with QT's business strategy.
6. Xxxxxxx Xxxxx shall retain the right to exploit the IP in its current state,
prior to any and all enhancements and adjustments made by QT or by third parties
on QT's behalf, for the purpose of downloaded music protection on his
prospective online business known as xxxxxxxxxxx.xxx only, not assignees or
partners.
7. In the event that QT wishes to contract the services of DNT staff for the
purposes of technology and skills transfer, QT shall pay DNT a per diem
consulting fee of not less than $1,000 per day plus reasonable expenses.
8. DNT shall return to QT any equipment and property relating to previous joint
development initiatives including, but not limited to, a Dell laptop computer
with associated accessories.
9. This Agreement shall be governed and interpreted in accordance with the laws
of the State of Arizona without regard to principles of conflict of laws.
Arizona courts (state or federal) will have the exclusive jurisdiction over any
controversies regarding this Agreement; any action or other proceeding which
involves such a controversy will be brought in such Arizona courts and not
elsewhere. The Parties agree to submit to the exclusive jurisdiction over all
disputes hereunder in the appropriate federal or state courts in the State of
Arizona.
10. To the extent permitted by applicable law, the rights and remedies of the
Parties provided under this Agreement are cumulative, and the exercise or
failure to exercise any particular right or remedy will not be in limitation of
any other right or remedy, whether hereunder, at law or equity or by contract.
11. Each party shall use its reasonable efforts to (i) keep confidential the
terms of this Agreement and all other information obtained from the other party
pursuant to this Agreement, provided that such terms and/or information are
identified, in writing, as confidential, (ii) keep confidential all information
which is specifically designated in writing as "trade secret" for so long as the
information remains secret, and (iii) not divulge to or discuss with any third
parties the results of any testing and/or evaluation of the SunnComm MediaMax
Process. All business terms of this Agreement are to be considered as
confidential. Such obligations shall not apply to information already known to
the recipient at the time of disclosure and not subject to terms of
confidentiality, independently developed by the recipient, or otherwise
generally publicly available. It shall not be deemed to be a breach of this
section or of this Agreement if either party is required to disclose
confidential information pursuant to: (a) any statute, regulation, order,
subpoena or document discovery request, provided that, if allowed by applicable
law, prior written notice of such disclosure is furnished to the disclosing
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party as soon as practicable in order to afford the disclosing party an
opportunity to seek a protective order (it being agreed that if the disclosing
party is unable to obtain or does not seek a protective order and the receiving
party is legally compelled to disclose such information, disclosure of such
information may be made without liability); or (b) in connection with an audit
or review by any taxing authority, provided that, if allowed by applicable law,
prior written notice of the request thereof is furnished to disclosing party.
12. This Agreement constitutes the entire agreement between the parties, and
supersedes any and all prior written or oral agreement or understanding relating
to the same subject matter. No change to this Agreement will be effective unless
made in writing and signed by both parties.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the Effective
Date.
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Xxxxx Xxxxx Xxxxxxx Xxxxx
Chairman, Dark Noise Technology
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Xx Xxxxxxx
CFO, QuietTiger, Inc.
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