INTERNATIONAL INTELLECTUAL PROPERTY LICENSE AGREEMENT
This Agreement is made and effective this 17th day of October 2000, by
and between MicroStrategy International II Limited, a Bermuda corporation
("Licensor" or "MSTR International II"), and Xxxxxxxx.xxx International
Limited, a Bermuda corporation ("Licensee" or "SDC International").
WITNESSETH:
WHEREAS, MicroStrategy Incorporated and certain of its subsidiaries
desire to realign their worldwide corporate structure in accordance with
their separate lines of business, the "Xxxxxxxx.xxx Business" and the
"MicroStrategy Business"; and
WHEREAS, the entities now enter into various agreements and make
certain mutual promises as described in the "Agreement and Plan of
Reorganization" by and among MicroStrategy Incorporated, MicroStrategy
International Limited, MicroStrategy International II Limited, Xxxxxxxx.xxx
Incorporated, and Xxxxxxxx.xxx International Limited dated October 17, 2000
to effectuate this realignment and reorganization; and
WHEREAS, Licensor is the owner of all right, title and interest in and
to certain copyrights and trade secret and other intellectual property rights
outside the United States as set forth in Schedule A hereto (the "Licensed
Technology"); and
WHEREAS, Licensor is willing to supply Licensee with certain
information with respect to the Licensed Technology and to grant Licensee a
perpetual non-exclusive, nontransferable, royalty-free license to use,
manufacture, distribute, sell and offer to sell products and services
utilizing the Licensed Technology outside the United States and to use the
technical and engineering information supplied by the Licensor in the
manufacture, use and sale of products and/or services outside the United
States subject to the terms and conditions set forth herein; and
WHEREAS, Licensee desires to secure and use such Licensed Technology
and technical and engineering services and information and to secure such
rights and license under Licensor's intellectual property and trade secret
rights outside the United States;
NOW, THEREFORE, in consideration of the premises set forth above and
the covenants set forth below, and other valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, the parties agree as
follows:
1. LICENSE.
1.1 License.
(a) Licensor hereby grants to Licensee a perpetual,
royalty-free, non-exclusive non-transferable license to manufacture, have
manufactured, distribute, use, lease, sell and offer to sell products and/or
services utilizing the Licensed Technology and to use any
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changes, developments or improvements to the Licensed Technology outside the
United States. To the extent, however, that any of the MicroStrategy Platform
as defined in the International Software License Agreement falls within the
scope of the Licensed Technology hereunder and, to the extent there is any
conflict between the provisions of this International Intellectual Property
License Agreement and the International Software License Agreement executed
concurrently herewith with respect to such MicroStrategy Platform, the terms
of the International Software License Agreement shall govern.
(b) No grant or right is conveyed to Licensee by this
Agreement to sublicense the manufacture, distribution, use, lease and/or sale
of the Licensed Technology under the license granted under this Article
without the express written consent of Licensor, other than and solely to the
extent that such Licensed Technology are incorporated by Licensee in the
delivery of services by Licensee to its customers.
(c) Licensee acknowledges and agrees that all right,
title and interest in the Licensed Technology are and shall remain the
property of Licensor.
(d) All title and ownership in and to all changes,
developments or improvements by the Licensee in the Licensed Technology shall
be the property of the Licensor to the extent that Licensor incorporates such
changes, developments or improvements into the MicroStrategy Platform. If
Licensor does not so incorporate such changes, developments and/or
improvements into the MicroStrategy Platform, then all title and ownership in
and to such changes, developments or improvements shall vest in Licensee,
provided, however, that as to any such changes, developments or improvements
by the Licensee, Licensee hereby grants to Licensor a perpetual,
royalty-free, nonexclusive, nontransferable license to manufacture, have
manufactured, distribute, use, lease, sell and offer to sell products and/or
services utilizing such changes, developments or improvements to the Licensed
Technology in the United States, provided, however, that Licensor shall not
make any distribute, use, lease, sell, license or sublicense such changes,
developments or improvements in a manner that xxxxx the competitive interests
of Licensee.
(e) Notwithstanding any provisions to the contrary
contained in this Agreement and for the avoidance of doubt, SDC International
shall have the right to use and/or sublicense the Licensed Technology solely
for the purpose of licensing or offering the Services as defined in the
International Software Licensing agreement to a third party that relicenses
the Services for example an OEM relationship.
(f) Licensee agrees that it will not reveal, disclose or
make any Confidential Information of Licensor available to any person without
the prior written consent of the Licensor. Licensee further agrees to
safeguard and protect the Licensor's Confidential Information in a manner at
least consistent with the protections Licensee uses to protect its own
Confidential Information.
2. Intentionally left blank.
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3. ASSIGNMENT.
3.1 Assignment. Licensee shall not assign or transfer this Agreement, in
whole or in part, without the written consent of Licensor, such consent not to
be unreasonably withheld or delayed; provided, however, that Licensee may assign
or transfer this Agreement to any affiliate without Licensor's consent, provided
that any such contemplated assignment by Licensee shall be permitted under the
Patent License. For purposes of this Section, "affiliate" shall mean an entity
which by voting power controls, is controlled by or is under common control with
said party. Licensor shall have the right to assign or transfer this Agreement
to a third party without the approval of Licensee.
4. TERM OF THE LICENSE.
4.1 The license granted to any non-patented Licensed Technology shall be
perpetual.
5. DEFAULT AND EARLY TERMINATION.
5.1 Default by Either Party. Either party may terminate this Agreement on
thirty (30) days' prior written notice, if one or more of the following events
shall occur:
5.1.1 If either party becomes insolvent or if its
business is placed in the hands of a trustee, custodian, or receiver, whether
by voluntary act or otherwise.
5.1.2 If any bankruptcy, reorganization, debt arrangement,
or other proceeding or case under any bankruptcy or insolvency law, or any
dissolution or liquidation proceeding is instituted by or against either
party.
5.1.3 The notice of termination shall specify the reason
for termination and a termination date. Such termination shall become
effective on the date of termination set forth in the notice of termination
but in no event earlier than thirty (30) days from the date of mailing
thereof. This Agreement may be terminated by mutual agreement of both
parties.
5.2. Licensor. If Licensee shall default in any of its obligations under
this Agreement and such default shall continue uncured for a period of thirty
(30) days from the date of written notice thereof by Licensor to Licensee. Upon
termination of this Agreement pursuant to this provision, Licensee shall
immediately cease all making, having made, use, lease and/or sale of the
products and/or services utilizing the Licensed Technology and shall promptly
return to Licensor all copies of software, documentation, technical
specifications and other Confidential Information of the Licensor.
5.3 Licensee. Licensee may terminate this Agreement on thirty (30) days'
prior written notice in the event Licensor defaults in any of its obligations
hereunder and such default shall continue uncured for a period of thirty (30)
days from the date of written notice thereof by Licensee to Licensor; provided,
however, that if Licensor has taken steps to effect a cure during such period,
Licensor shall be granted reasonable additional time to complete such cure. In
the event of such default and the termination of this Agreement, Licensee shall
have any
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and all remedies available at law or in equity. If Licensor defaults in any
of its obligations hereunder and such default continues uncured for such thirty
(30) day period set forth above, and Licensee does not elect to terminate the
Agreement, Licensee may pursue whatever remedies it chooses at law or equity.
6. WARRANTIES
6.1 IP Rights Ownership. MSTR International II warrants that it owns, free
and clear of all liens or encumbrances, or has valid licenses in the IP Rights
contained in Schedule A and that it has full legal right to
grant to SDC International the licenses contained herein.
6.2. No Additional Warranties. MSTR International II offers no warranties
other than those specifically set in this Section and to the extent permitted by
law specifically disclaim all others, including merchantability and fitness for
a particular purpose.
7. INDEMNIFICATION
7.1 Indemnification of SDC International. MSTR International II shall
defend and indemnify SDC International against and hold SDC International
harmless from any and all claims that the IP Rights contained in Schedule A
infringes a non-United States patent or copyright of a third party provided that
SDC International: (i) promptly notifies MSTR International II in writing of any
such claim; (ii) allows MSTR International II to have sole control of the
defense and all related settlement negotiations; and (iii) provides MSTR
International II with the information, authority and assistance necessary to
perform MSTR International II obligations under this Section.
7.2 Excluded Claims. Notwithstanding Section 7.1 above, MSTR International
II shall not be liable to SDC International for any claim arising from or based
upon the combination, operation or use of the IP Rights contained in Schedule A
with equipment, data or programming not supplied by MSTR International II
(including the SDC International software and services) or for other than an
intended purpose as set forth in the User Documentation, or arising from any
alteration or modification of the MicroStrategy Platform product, if the claim
would not have arisen without such alteration or modification.
7.3 Indemnification of MSTR International II. SDC International shall
defend and indemnify MSTR International II (including paying all reasonable
attorneys' fees and costs of litigation) against and hold MSTR International II
harmless from any and all claims by any other party resulting from SDC
International's negligent or tortious acts, omissions or misrepresentations
relating to the marketing, sublicensing, distribution, demonstration, evaluation
or use of the IP Rights contained in Schedule A, regardless of the form of
action provided that MSTR International II: (i) promptly notifies SDC
International in writing of any such claim; (ii) allows SDC International to
have sole control of the defense and all related settlement negotiations; and
(iii) provides SDC International with the information, authority and assistance
necessary to perform SDC International's obligations under this Section.
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8. LEGAL PROCEEDINGS.
8.1 Notice. Each of Licensee and Licensor shall promptly notify the other
of any claim, demand or suit based upon or arising from the manufacture,
distribution, use or sale of the products and/or services utilizing the Licensed
Technology or any colorable imitation thereof, or of any attempt by any other
person, firm or corporation to manufacture, distribute, use or sell the products
and/or services utilizing the Licensed Technology or any colorable imitation
thereof. Should legal action against a third party be deemed necessary by either
party for the protection of their respective interests under this Agreement, the
parties each agree to cooperate by rendering the other party all possible mutual
support and assistance.
9. LICENSE INVALIDITY.
9.1 Invalidity. Should any part of this Agreement for any reason be
declared invalid, such declaration shall not affect the validity of any
remaining portions, which remaining portions shall remain in full force and
effect as if this Agreement had been executed with the invalid part eliminated.
10. MISCELLANEOUS.
10.1 Notices. All notices, approvals, and other communications hereunder
shall be in writing and shall be hand delivered or sent by telegram, telex
(followed by overnight delivery), or overnight courier services (next day
delivery) or by registered or certified mail, return receipt requested, and
shall be directed to the parties as follows:
If to Licensor: MicroStrategy International II Limited
0000 Xxxxxx Xxxxxxxx Xxxxx
Xxxxxx, XX 00000
Attn: President
If to Licensee: Xxxxxxxx.xxx International Limited
0000 Xxxxxx Xxxxxxxx Xxxxx
Xxxxxx, XX 00000
Attn: President
or at such other address as may be furnished in writing by either party for
such purpose.
10.2 Entire Agreement. This Agreement embodies the entire understanding and
agreement of the parties with respect to the subject matter hereof and may not
be altered, amended or otherwise modified except by an instrument in writing and
signed on behalf of each of the parties by their respective duly authorized
officers. The parties further acknowledge that there have been no
representations, covenants, or understandings except those that are expressly
set forth in this Agreement.
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10.3 Binding Effect. This Agreement shall be binding on and shall inure to
the benefit of the parties hereto and their respective successors and assigns;
provided, however, that this Agreement shall not be assignable by Licensee
without the prior written consent of Licensor, not to be unreasonably withheld
or delayed.
10.4 Governing Law. This Agreement shall be governed and interpreted in
accordance with the laws of the Commonwealth of Virginia, United States of
America and for all purposes shall be interpreted in its entirety in accordance
with the laws of said Commonwealth. In the event this Agreement is translated
into any language other than the English language for any purpose, the parties
agree that the English version shall be the governing version.
10.5 Survival. Sections 1.1(f) and 5.2 shall survive the termination of
this Agreement.
10.6 Headings. The headings in this Agreement are for convenience of
reference only and shall not have any substantive effect.
10.7 Waiver. The waiver by either party of the breach of any term or
condition of this Agreement by the other shall not constitute a waiver of a
subsequent breach thereof or nullify the effectiveness of that term or
condition.
10.8 Severability of Provisions. Both parties expressly agree that it is
not the intention of either party to violate statutory or common law and that if
any section, sentence, paragraph, clause or combination of same is in violation
of any law, such sections, sentences, paragraphs, clauses or combination of same
shall be inoperative and the remainder of this Agreement shall remain binding
upon the parties.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed as of the day and year first written above.
LICENSOR
MicroStrategy International II Limited
By: Xxxx Xxxxx
Its: CFO/Director
Date: 10/17/2000
LICENSEE
Xxxxxxxx.xxx International Limited
By: Xxxx X. Xxxxx
Its: CFO/Director
Date: 10/17/2000
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