LICENSE AGREEMENT
THIS LICENSE AGREEMENT is entered into as of this 6th day of April,
1998, by and between ▇▇▇▇▇▇▇▇, INC., a Minnesota corporation ("▇▇▇▇▇▇▇▇") and
EARTHWATCH COMMUNICATIONS, INC., a Minnesota corporation ("EarthWatch").
WHEREAS, EarthWatch has developed and is the owner of certain software
which it desires to license to ▇▇▇▇▇▇▇▇, and which ▇▇▇▇▇▇▇▇ desires to license
from EarthWatch, under the terms and conditions set forth herein.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties hereto agree as
follows:
1. Grant of License.
a. EarthWatch hereby grants to ▇▇▇▇▇▇▇▇, and ▇▇▇▇▇▇▇▇ hereby
accepts, an exclusive (including as to EarthWatch), royalty-free
license under the Licensed Rights (as hereinafter defined) to make,
have made, use, market, license, sublicense, distribute, reproduce,
copy, sell and incorporate into derivative works the Licensed Products
(as defined hereinafter). As used herein, the term "Licensed Rights"
means:
(1) U.S. Patent No. 5,379,215, "Method for Creating a 3D
Image of Terrain and Associated Weather," any patent
resulting from a continuation application,
continuation-in-part application, divisional
application, re-examination application, re-issue
application or foreign application related to the
subject matter of U.S. Patent No. 5,379,215, "Method
for Creating a 3D Image of Terrain and Associated
Weather;"
(2) all other patents covering the manufacture, use or
sale of the Licensed Products;
(3) all copyrights related to the Licensed Products;
(4) all mask work registrations related to the Licensed
Products;
(5) all trade secrets, know-how and show-how related to
the Licensed Products;
(6) all shop rights related to the Licensed Products;
and
(7) any and all other rights now owned or hereafter
acquired by EarthWatch related to the Licensed
Products.
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As used herein, the term "Licensed Products" means:
(1) EarthWatch's Reality 3d Realtime Software
(including, without limitation, Reality 3D textured
skylines and the product referred to internally by
EarthWatch as "virtual set");
(2) EarthWatch's SchoolWatch Software (and all
work-in-progress thereon to the extent incomplete);
(3) EarthWatch's ▇▇▇▇▇▇▇▇▇ Software;
(4) EarthWatch's StormWatch Software (provided that the
license to this software product only shall be
non-exclusive);
(5) all enhancements, other software, modules and
components used to produce real time
three-dimensional and fly-through effects used in
television broadcast, including those necessary to
create a fully functional on-air news and weather
graphics system (excluding EarthVision, also known
as WorldScape);
(6) all manuals or other documentation pertaining to any
of the foregoing; and
(7) all derivative works or other products developed by
or for ▇▇▇▇▇▇▇▇ which relate in any way to any of
the foregoing.
b. EarthWatch hereby grants to ▇▇▇▇▇▇▇▇ a non-exclusive,
royalty-free license to use and or sublicense the trademarks "Reality
3D," "Reality 3D Real Time" and "SchoolWatch." EarthWatch further
grants to ▇▇▇▇▇▇▇▇ a non-exclusive, perpetual, royalty-free license to
use and sublicense the use of any other trademark, service ▇▇▇▇, logo,
trade name or trade dress used by EarthWatch in connection with the
Licensed Products. Upon reasonable notice and during normal business
hours, EarthWatch shall have the right to review (1) how ▇▇▇▇▇▇▇▇ is
using any ▇▇▇▇ licensed in advertising, promotional materials,
packaging and labeling; and (2) samples of the products with which
▇▇▇▇▇▇▇▇ is using the marks. All information obtained in conjunction
with such review shall be held in confidence by EarthWatch and used
exclusively for determining whether ▇▇▇▇▇▇▇▇ is using the ▇▇▇▇(s) in a
manner consistent with this Agreement and in connection with products
and services that are of good quality. Upon completion of such review,
EarthWatch may, at its option, deliver written notice to ▇▇▇▇▇▇▇▇
requesting specific reasonable changes to the advertisements,
promotional materials, packaging and labeling or products with which
▇▇▇▇▇▇▇▇ is using the marks. ▇▇▇▇▇▇▇▇ shall then have a reasonable time
to implement any such changes reasonably requested by EarthWatch.
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c. EarthWatch shall deliver to ▇▇▇▇▇▇▇▇ all information and
materials required to carry out this Agreement, including, but not
limited to: (1) patents and patent applications, (2) trademark or
service ▇▇▇▇ applications and registrations, (3) copyright applications
and registrations, (4) mask works and mask work registrations, (5)
source code, (6) object code, (7) software, (8) know-how and show-how,
(9) drawings, specifications, designs, plans, proposals, data, and
other works, (10) manufacturing and production processes, techniques,
research and development information, and (11) notes, shop manuals,
formulae and prototypes.
▇. ▇▇▇▇▇▇▇▇ shall also have the right, at the sole cost and
expense of ▇▇▇▇▇▇▇▇, to take whatever steps it deems necessary to
protect the Licensed Rights and Licensed Products. EarthWatch agrees to
cooperate with such efforts and sign any papers required to acquire,
protect or enforce such rights.
e. It is agreed and understood that the exclusive licenses
hereby granted shall be subject only to the rights of those existing
licensees under existing agreements, all of whom and which are set
forth on Exhibit A attached hereto, provided that EarthWatch will not
renew and agrees to terminate any and all of such license agreements at
the earliest possible date upon the reasonable request of ▇▇▇▇▇▇▇▇ with
respect to any specific licensee.
f. The term of the licenses granted herein shall be twenty
(20) years from the date hereof, provided that any sublicenses granted
to end users of the Licensed Products shall be perpetual.
2. License Fee. Contemporaneously herewith, ▇▇▇▇▇▇▇▇ shall pay to
EarthWatch as the sole and only one-time license fee and fee for acquiring an
option to license pursuant to a separate agreement of even date herewith the sum
of One Million Five Hundred Thousand and No/100 Dollars ($1,500,000.00). The
parties have agreed that Two Hundred Fifty Thousand and No/100 Dollars
($250,000.00) of the foregoing payment shall be escrowed pursuant to a escrow
agreement of even date herewith. No other payments shall be due or owing from
▇▇▇▇▇▇▇▇ for the rights granted hereunder.
3. Territory. The licenses granted herein, and the exclusivity rights
in connection therewith, shall extend throughout the world, with the exception
of the United States and Canada. The limitation of the Territory herein shall
only limit sales and distribution, which shall be limited to customers outside
the United States and Canada, but shall not limit or prohibit manufacturing,
packaging, software development, initiating marketing (e.g. placing phone calls
from, purchasing and preparing documentation in the United States and/or
Canada), and similar activities within the United States and/or Canada.
4. Representations and Warranties. EarthWatch hereby represents and
warrants to ▇▇▇▇▇▇▇▇ that:
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a. EarthWatch is the sole and exclusive owner, free from any
liens, security interests or other encumbrances or claims of third
parties, of the Licensed Products including all copyright and other
proprietary rights therein, and of the ideas, procedures, processes,
systems, methods of operation and concepts which are embodied therein.
EarthWatch has been granted such rights under U.S. Patent No.
5,379,215, "Method for Creating a 3D Image of Terrain and Associated
Weather," and the license of the Licensed Products herein granted or
the use of the Licensed Products for the purposes permitted hereunder
will not constitute an infringement of any third party's intellectual
property rights or constitute a breach of any agreement between
EarthWatch and any third party, including, without limitation, that
certain Reseller License Agreement by and between EarthWatch and WSI
Corporation, as amended, that certain Software License Agreement by and
between EarthWatch and Weather Central, Inc. and that certain Exclusive
Distributor Agreement for EarthWatch Products in the Government Market
by and between EarthWatch and Sterling Software (U.S.), Inc. (the
parties agree that EarthWatch shall immediately request and shall
diligently pursue and obtain no later than fourteen days after the date
hereof a UCC-3 to release of record all filings in favor of Northern
Trust);
b. the right and license granted to ▇▇▇▇▇▇▇▇ hereunder is
exclusive to ▇▇▇▇▇▇▇▇ within the Territory except as expressly set
forth herein and no parties, other than the licensees under the
agreements set forth on Exhibit A, have rights to the Licensed Products
within the Territory;
c. the Licensed Products, and all portions thereof, are free
from material defects in material and workmanship and will, without
modification or supplementation, permit the user thereof to create
real-time 3D images of terrain and associated weather from data
supplied by or to the user, provided that ▇▇▇▇▇▇▇▇ acknowledges that
the current version of the Licensed Products will not permit the user
thereof to create real-time 3D images of terrain and associated weather
from data supplied by or to the user using ▇▇▇▇▇▇▇▇ data and that
▇▇▇▇▇▇▇▇ and EarthWatch are in the process, pursuant to a Consulting
Agreement, of creating the data interface to permit such functionality;
d. The individuals executing this Agreement on behalf of
EarthWatch have the requisite authority to execute this Agreement and
such other documents as are contemplated or to be delivered by
EarthWatch herein, and to bind EarthWatch thereto; and EarthWatch has
the full and complete authority to perform its obligations hereunder;
In the event of a breach of the representations and warrantees
contained above, EarthWatch agrees to diligently pursue and obtain at its sole
cost and expense all intellectual property and contract rights necessary to make
such representation and warranty true and correct and to provide ▇▇▇▇▇▇▇▇ with
the exclusive rights to the Licensed Products granted hereunder. EarthWatch's
failure to do so within a reasonable time and in any event prior to the
suffering by ▇▇▇▇▇▇▇▇ of any damages, whether to third parties or otherwise,
shall result in ▇▇▇▇▇▇▇▇ having the rights and remedies provided in Section 5
hereof.
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5. Indemnification. EarthWatch agrees to indemnify, defend and hold
▇▇▇▇▇▇▇▇ harmless from and against any and all loss, cost, damage, judgments and
liabilities (including reasonable attorneys' fees) arising out of any breach of
the representations and warrantees made by EarthWatch herein. Without limiting
the foregoing, EarthWatch shall pay any and all damages, costs and attorneys'
fees awarded in any action against ▇▇▇▇▇▇▇▇ based on such claim, as well as any
other damages which may be suffered by ▇▇▇▇▇▇▇▇ by reason of its being deprived
of its rights hereunder or its having such rights limited, restricted or
infringed in any manner. ▇▇▇▇▇▇▇▇ agrees to provide EarthWatch with notice of
any such claim within a reasonable time after ▇▇▇▇▇▇▇▇ learns of such claim. In
addition to the foregoing indemnity and defense obligations, EarthWatch agrees
to provide to ▇▇▇▇▇▇▇▇ at EarthWatch's sole cost and expense all necessary
assistance in evaluating and/or opposing any such claim, including, without
limitation, providing access to programmers, documentation and prior versions of
the Licensed Products. Notwithstanding and in limitation of the foregoing, the
parties agree that EarthWatch's liability under this paragraph 5 shall not
exceed the consideration paid to EarthWatch by ▇▇▇▇▇▇▇▇ pursuant to this
Agreement, together with any sums paid to third party claimants as a result of
such breaches.
6. [Intentionally Deleted].
7. Source Code. Within ten (10) days after the date hereof, EarthWatch
agrees to provide ▇▇▇▇▇▇▇▇ with a copy of the source code for the Licensed
Products, together with all other materials and intellectual property necessary
to permit ▇▇▇▇▇▇▇▇ to fully exercise the rights granted to it hereunder and to
fulfill the obligations of EarthWatch hereunder. It is agreed that ▇▇▇▇▇▇▇▇ may
copy or modify or incorporate such source code and other property, or any
portion thereof, into products to be created hereafter by or for ▇▇▇▇▇▇▇▇, which
products shall be the sole property of ▇▇▇▇▇▇▇▇.
8. Registration of License. EarthWatch agrees that ▇▇▇▇▇▇▇▇ may, at the
sole costs and expense of ▇▇▇▇▇▇▇▇, file notice of its rights under this license
with the United States Copyright Office and/or the United States Patent and
Trademark Office and EarthWatch agrees to cooperate with any such filings,
including, without limitation, executing and delivering for no additional
consideration any assignments or similar documents necessary to accomplish such
filing.
9. Support. EarthWatch agrees that it will provide reasonable support
to ▇▇▇▇▇▇▇▇ in the exercise of ▇▇▇▇▇▇▇▇' rights under this Agreement.
10. No Agency. ▇▇▇▇▇▇▇▇ and EarthWatch are not, and shall not be deemed
or considered to be joint venturers, partners, agents, servants, employees,
fiduciaries or representatives of each other, and no party to this Agreement
shall have the right or power to bind or obligate any other party to this
Agreement.
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11. No Waiver. Failure by either party to enforce any provision
hereunder shall not be deemed a waiver of such provision or of the right to
enforce such provision in the future.
12. Governing Law; Venue. This Agreement shall be governed by and
construed in accordance with the laws of the State of Minnesota. Any action
brought under this Agreement shall be brought in the state or federal courts of
the State of Minnesota, provided that, notwithstanding this provision, ▇▇▇▇▇▇▇▇
shall have the right to implead EarthWatch in any action which falls within the
scope of EarthWatch's indemnification obligations under this Agreement, without
regard to the venue of such action.
13. Severability. In the event that any provision of this Agreement
shall be held by a court of competent jurisdiction to be unlawful or
unenforceable, the remaining provisions of this Agreement shall remain in full
force and effect and shall not be affected, impaired or invalidated in any
manner.
14. Assignment. Neither party may assign its rights hereunder without
the consent of the other, which consent will not be unreasonably withheld or
delayed, except in connection with a sale of all or substantially all of the
assets of a party. The parties hereto acknowledge and agree that the benefits,
but not the burdens, of the interests of ▇▇▇▇▇▇▇▇ in this Agreement have been
assigned to DTN Market Communications Group, Inc. ("DTN") pursuant to that
certain Agreement Regarding Purchase of Contract and Contract Rights
("Assignment") dated March 30, 1998, among ▇▇▇▇▇▇▇▇, DTN and Data Transmission
Network Corporation, subject to such beneficial interests and rights reverting
back to ▇▇▇▇▇▇▇▇ as provided in the Assignment; and that DTN shall have no
liabilities or obligations under this Agreement except the obligation to
▇▇▇▇▇▇▇▇ to pay the EarthWatch Payments as defined in and provided for in the
Assignment. While this Assignment remains in effect, EarthWatch shall send
copies of all notices given to ▇▇▇▇▇▇▇▇ hereunder to Data Transmission Network
Corporation, ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇, ▇▇ ▇▇▇▇▇, Attention ▇▇▇▇ ▇.
▇▇▇▇▇, President.
15. Entire Agreement. This Agreement contains and states the entire
agreement of the parties with regard to the license granted hereby and
supersedes all proposals, oral or written, and all other communications between
the parties relating to this Agreement.
16. Amendment. No modification or amendment of this Agreement shall be
made except by an instrument in writing signed by both of the parties hereto.
17. Notices. Any notices required or permitted to be given hereunder
shall be in writing and shall be (i) personally delivered, (ii) sent by a
reputable overnight courier (e.g., Federal Express) or (iii) mailed by
registered or certified United States Mail, return receipt requested and shall
be deemed delivered (x) on the date of personal delivery, if such is a business
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day or the next business day if not, (y) the day designated for delivery by the
overnight courier, or (z) three days after posting in the United States Mail in
the manner provided above. All such notices shall be directed to the receiving
party at the following addresses or such other address as a party may designate
by notice in accordance with the provisions hereof:
If to ▇▇▇▇▇▇▇▇: ▇▇▇▇▇▇▇▇, Inc.
▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
With copy to: Malkerson ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ LLP
1500 AT&T Tower
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
If to EarthWatch: EarthWatch Communications, Inc.
Woodland Office Building
▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. Kruehoeffer
With copy to: ▇▇▇▇▇▇▇ Street & Deinard
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
18. Servicing. Commencing July 1, 1998, ▇▇▇▇▇▇▇▇ shall assume
EarthWatch's written obligations to service and/or maintain the Reality 3D
software which has been licensed to third parties, excluding third parties in
the United States and Canada, and ▇▇▇▇▇▇▇▇ shall be entitled to any and all fees
payable in connection with such servicing and/or maintenance, including any fees
which have been paid prior to the date hereof for service and maintenance which
will be performed by ▇▇▇▇▇▇▇▇. EarthWatch represents and warrants to ▇▇▇▇▇▇▇▇
that EarthWatch has disclosed to ▇▇▇▇▇▇▇▇ in writing all of EarthWatch's written
obligations for servicing and/or maintenance of the Reality 3D software and all
fees which have been paid prior to the date hereof for service and maintenance
which will be performed by ▇▇▇▇▇▇▇▇ (See attached Exhibit B). EarthWatch and
▇▇▇▇▇▇▇▇ agree that ▇▇▇▇▇▇▇▇ shall have no responsibility to service or maintain
any other EarthWatch software unless the parties reach a separate written
agreement regarding such services.
19. Non-Competition. In consideration for the sums paid hereunder and
the agreements made herein, EarthWatch shall not, within the Territory (i) shall
not compete directly or indirectly with the ▇▇▇▇▇▇▇▇, DTN or their assignees, in
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the sale, license, distribution or development of weather and/or news graphics
and/or imagery products and services within the replayed or live broadcast
market, including, without limitation, television (broadcast, cable, satellite
and other broadcast means) and internet-delivered live or replayed broadcasts,
provided that EarthWatch may sell, license and distribute the product known as
Stormwatch, and (ii) shall not sell, license, distribute or develop products
which compete directly or indirectly with, or have the capabilities of competing
with, the Licensed Products, provided that the products known as StormWatch and
Earthvision, without modification to add real time effects or other
modifications that make such products more competitive with the Licensed
Products, are excepted from this subparagraph (ii).
EXECUTED by the parties hereto effective the day and year first above
written.
▇▇▇▇▇▇▇▇, INC.
By:/s/ ▇▇▇▇▇ ▇▇▇▇▇▇
-----------------------------
▇▇▇▇▇ ▇▇▇▇▇▇, Chief Operating Officer
EARTHWATCH COMMUNICATIONS, INC.
By:/s/▇▇▇▇▇ ▇▇▇▇▇▇▇▇
------------------------------
▇▇▇▇▇ ▇▇▇▇▇▇▇▇, President
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EXHIBIT A
Licensees and License Agreements
EXISTING LICENSEES/DISTRIBUTORS
--------------------------------------------------------------------------------------------------------------------
Parties: EarthWatch Communications,
Inc. & Type of Agreement Date
--------------------------------------------------------------------------------------------------------------------
Clever Telecom, S.A. Distributor Agreement 05/19/94
--------------------------------------------------------------------------------------------------------------------
Digital Broadcast Systems Distribution Agreement 12/15/96
--------------------------------------------------------------------------------------------------------------------
ATM Ltd. Distributor Agreement 05/12/94
--------------------------------------------------------------------------------------------------------------------
ATLAS SA Distributor Agreement 05/18/94
--------------------------------------------------------------------------------------------------------------------
Symbolic Technologies PTE LTD. Distributor Agreement 05/12/94
--------------------------------------------------------------------------------------------------------------------
Video Graphics & Communication CO Ltd. Distributor Agreement 05/12/94
--------------------------------------------------------------------------------------------------------------------
Salam Technical Services (Qatar) Distributor Agreement 06/23/94
--------------------------------------------------------------------------------------------------------------------
Mitsui & Co. Ltd. Distributor Agreement 02/01/95
--------------------------------------------------------------------------------------------------------------------
Advanced Communication Equipment
(Int'l) Co Ltd. Distributor Agreement 05/12/94
--------------------------------------------------------------------------------------------------------------------
Reality Horizons Pty Ltd. Distribution Agreement 07/01/97
--------------------------------------------------------------------------------------------------------------------
Quantum Pacific Pty Ltd. Distribution Agreement 12/01/96
--------------------------------------------------------------------------------------------------------------------
Video Design Systems Inc. Distributor Agreement 05/20/94
--------------------------------------------------------------------------------------------------------------------
Salam Technical Services/OMNIX Distributor Agreement 06/20/94
--------------------------------------------------------------------------------------------------------------------
END USER LICENSEES
--------------------------------------------------------------------------------------------------------------------
Sterling Software (U.S.), Inc. Exclusive Distributor Agreement 12/11/96
--------------------------------------------------------------------------------------------------------------------
ICELAND AGREEMENT
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EXHIBIT B
Written Servicing Obligations and Fees Already Received
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EXHIBIT C
Existing Agreements for License or Distribution of Products Which May Compete
With the Licensed Products Within the Territory
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