EXHIBIT 10.23
INTANGIBLE PROPERTY LICENSE AGREEMENT
THIS AGREEMENT is entered into this as of __________________, 1999
(the "Effective Date"), by and between DVA Inc., a Nevada corporation, with its
principal business address at Suite 4, 0000-X Xxxxxxxxxxx Xxxxx, Xxx Xxxxx, XX
00000 ("Licensor") and Xxxxxx, Inc., a Delaware corporation, with its principal
business address at Xxx Xxxxx Xxxxxx Xxxxxxx, Xxxxxxx, Xxxxxxxxxxxx 00000
("Licensee").
WITNESSETH:
WHEREAS, Licensor is the owner of all right, title and interest in
certain intangible property to this Agreement and know-how relating to Products
(the "Intangible Property");
WHEREAS, Licensee desires to use the Intangible Property within the
Territory;
WHEREAS, Licensor is willing to grant to Licensee the exclusive right
to use the Intangible Property subject to the terms and conditions of this
Agreement, and Licensee is willing to accept such rights and obligations;
NOW, THEREFORE, in consideration of the mutual covenants and
conditions contained herein and intending to be legally bound, the parties
hereby agree as follows.
ARTICLE I
DEFINITIONS
Section 1.1. Affiliate or Affiliates. "Affiliate" or "Affiliates"
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shall mean any corporation, firm, partnership, or other entity, whether de jure
or de facto, that directly or indirectly owns, is owned by, or is under common
ownership with a party to this Agreement to the extent of at least 50 percent of
the equity having the power to vote on or direct the affairs of
the entity and any person, firm, partnership, corporation, or other entity
actually controlled by, controlling, or under common control with a party to
this Agreement.
Section 1.2. Effective Date. "Effective Date" is as defined
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immediately prior to the Recitals at the beginning of this Agreement.
Section 1.3. Improvements. "Improvements" shall mean any findings,
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discoveries, inventions, additions, modifications, formulations, derivative
works, or changes made by either Licensor or Licensee during the term of this
Agreement that relate to Products, including, without limitation, improvements
in the manufacturing process for Product.
Section 1.4. Intangible Property. "Intangible Property" shall mean
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all current and future intellectual property rights of Licensor, including,
without limitation, all trademarks, service marks, patents, mask works,
Know-How, copyrights and similar proprietary rights.
Section 1.5. Know-How. "Know-How" shall mean any and all technical
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information presently available or generated during the term of this Agreement
that relates to Products or Improvements and shall include, without limitation,
all trade secrets, formulae, manufacturing data and any other information
relating to Products or Improvements and useful for the development,
manufacture, or effectiveness of Product.
Section 1.6. Licensee. "Licensee" shall mean Xxxxxx Inc. and its
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Affiliates.
Section 1.7. Licensor. "Licensor" shall mean DVA Inc. and its
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Affiliates.
Section 1.8. Net Sales. "Net Sales" shall mean the gross receipts
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from sales of Product in the Territory by Licensee to Third Parties less
customary deductions, including (a) transportation charges, including insurance;
(b) sales, excise taxes, customs, duties, tariffs, and any other governmental
charges imposed on the production, importation, exportation, use, or sale
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of Product; (c) quantity and cash discounts allowed; (d) returns; and (e)
allowances of credits to customers.
Section 1.9. Product(s). "Product(s)" shall mean any and all
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products acquired, developed, made, used or sold by Licensee utilizing or
incorporating the Intangible Property.
Section 1.10. Territory. "Territory" shall mean the world.
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Section 1.11. Third Party or Third Parties. "Third Party" or
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"Third Parties" shall mean any entity other than a party to this Agreement or an
Affiliate.
Section 1.12. Year. "Year" shall mean the 12-month period ending
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on the last Saturday of December.
ARTICLE II
GRANT OF RIGHT TO USE INTANGIBLE PROPERTY
Section 2.1. Grant by Licensor. Subject to the terms and
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conditions of this Agreement, Licensor grants to Licensee the exclusive (even
as to Licensor) right under any and all Intangible Property of Licenser to:
(i) make, have made, use, offer for sale, sell or otherwise dispose of any
current or future Product; (ii) make, have made, use, offer for sale, sell or
otherwise dispose of modifications and derivatives of Products; and (iii)
copy, use, develop, modify or otherwise commercially exploit the Intangible
Property. During the term of this Agreement, Licensor shall not use or grant
to any other party, the right to use the Intangible Property in the Territory .
Section 2.2. No Further Transfer. Licensee shall not assign,
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sublicense, make available, or otherwise transfer or disclose any, right to use,
develop, or otherwise enjoy the Intangible Property without the express written
consent of Licensor.
Section 2.3. Grant by Licensee. Licensee grants to Licensor a
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nonexclusive, royalty-free right to use, develop, and enjoy any Improvements
made by or for Licensee.
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Section 2.4. Quality.
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a. Product sold by Licensee shall meet the quality control
standards and specifications established from time-to-time by Licensor,
including any requirements of applicable regulatory agencies in the Territory.
Licensor shall have the right, at its expense, to audit Licensee's quality
control of Product from time-to-time on a reasonable basis and on reasonable
prior notice to Licensee.
b. In the event that quality control of Licensee falls below
Licensor's standards and specifications, Licensor shall give Licensee written
notice of such failures, and Licensee shall, at its expense and within the
reasonable notice period set out in the notice, take such corrective action as
is necessary to restore quality to the appropriate level.
ARTICLE III
ROYALTY PAYMENT
Section 3.1. Compensation. Subject to Section 3.2 of this Article III,
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as consideration for the rights granted under this Agreement, with respect to
the intangible property and the know-how Licensee shall pay to Licensor a
royalty of percent ( %) of Licensee's Net Sales of Product in the
Territory.
Section 3.2. Periodic Adjustment. The rate of the royalty set forth
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in Section 3.1 of this Article III may be reviewed periodically by the parties
to provide that it continues to reflect the arm's-length value of the rights
granted to Licensee under the terms of this Agreement. If any change to the
royalty rate is determined by the mutual agreement of the parties to be
appropriate for this purpose, then an appropriate amendment to this Agreement
shall be executed by the parties, as provided in Section 9.4 of this Agreement.
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Section 3.3. Payment and Accounting. Royalties due to Licensor shall be
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due and payable by Licensee on a calendar quarter basis, payable no later than
the 30th day following the end of each calendar quarter of a Year. Such payment
shall be accompanied by a written accounting of all Product sold by Licensee
during such quarter (the "Royalty Notice").
Section 3.4. Currency. All royalties due under this Agreement shall be
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payable in United States dollars.
Section 3.5. Withholding Taxes and Related Matters. Any withholding or
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related tax or other obligations relating to the payments due under the terms of
this Agreement shall be complied with by Licensee, shall be reflected in the
Royalty Notice, and shall not alter the amount of the obligation of Licensee
under this Article 1.11.
Section 3.6. Net Sales Data. Licensee shall maintain complete and
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accurate records of all Net Sales of Product. Licensor shall have the right, at
its expense and on a reasonable basis with reasonable prior written notice to
Licensee, to examine such records during regular business hours during the term
of this Agreement and for 6 months after termination of this Agreement.
ARTICLE IV
EXCHANGE OF INFORMATION AND CONFIDENTIALITY
Section 4.1. Know-How. During the term of this Agreement, the parties
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shall promptly disclose to one another all of their respective Know-How.
Section 4.2. Improvements. During the term of this Agreement, each party
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shall promptly inform the other party of any information that it obtains or
develops regarding Products and Improvements.
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Section 4.3. Confidentiality. During the Term of this Agreement, and
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for a period of twenty (20) years from the date of expiration or termination
of this Agreement, each party (the "Receiving Party") shall treat this
Agreement, Know-How, Intangible Property, Improvements, and all information,
data, reports, and other records that it receives from the other party (the
"Disclosing Party") as secret, confidential, and proprietary and shall not
disclose or use such information without the prior written consent of the
Disclosing Party except as provided in this Agreement. The Receiving Party
shall develop and implement such procedures as may be required to prevent the
intentional or negligent disclosure to Third Parties of confidential
information communicated to the Receiving Party and its employees by the
Disclosing Party including, but not limited to, requiring each of its
employees having access to such information under this Agreement to enter into
an appropriate secrecy agreement with the Receiving Party.
Nothing in this Agreement shall prevent the disclosure by the Receiving
Party or its employees of confidential information that:
a. Prior to the transmittal thereof to the Receiving Party was of
general public knowledge; or becomes, subsequent to the time of transmittal to
the Receiving Party, a matter of General public knowledge otherwise than as a
consequence of a breach by the Receiving Party of any obligation under this
Agreement; or is made public by the Disclosing Party; or
b. was in the possession of the Receiving Party in documentary
form prior to the time of disclosure thereof to the Receiving Party by the
Disclosing Party, and is held by the Receiving Party free of any obligation of
confidence to the Disclosing Party or any third party; and
c. is received in good faith from a Third Party having the right to
disclose it, who, to the best of the Receiving Party's knowledge, did not obtain
the same from the Disclosing Party and who imposed no obligation of secrecy on
the Receiving Party with respect to such information.
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ARTICLE V
WARRANTIES AND REPRESENTATIONS
Section 5.1. Licensor. Licensor warrants that
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a. It owns the exclusive right, title, and interest in the
Intangible Property,
b. Each Intangible Property is valid and enforceable;
c. Use of any Intangible Property does not infringe any rights of
Third Parties; and
d. It has the right and authority to enter into this Agreement.
Section 5.2. Licensee. Licensee warrants that it has the right and
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authority to enter into this Agreement.
ARTICLE VI
INDEMNIFICATION
Licensor shall indemnify, hold harmless, and defend Licensee from and
against any loss, cost, or expense, including reasonable attorneys' fees,
damages, or penalties of any, kind on account of or resulting from any claim or
action for infringement or misappropiation of third party rights by any existing
Intangible Property in the Territory with respect to Products. Licensor shall
defend any such claim or action at its own expense provided that Licensee
promptly notifies Licensor on learning of any such claim or action and
cooperates with Licensor in defending any such claim or action.
ARTICLE VII
INTANGIBLE PROPERTY OWNERSHIP
Licensee acknowledges Licensor's exclusive right, title, and interest in
and to the Intangible Property. Licensee shall not at any time do or cause to
be done, or fail to do or cause
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to be done, any act or thing, directly or indirectly, contesting or in any way
impairing Licensor's right, title, or interest in the Intangible Property. Every
use of any Intangible Property by Licensee shall inure to the benefit of
Licensor.
ARTICLE VIII
TERM AND TERMINATION
Section 8.1. Term. This Agreement shall remain in effect for a period
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of five (5) years from the Effective Date, and shall be extended for successive
periods of five (5) years each unless terminated by either party at any time
upon six (6) months' prior notice.
Section 8.2. Termination. In addition to the provisions of Section
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8.1, either party shall have the right to terminate this Agreement at any time,
by giving written notice to the party in default on the occurrence of any of the
following events:
a. A party fails or neglects to perform covenants or provisions of
this Agreement if such default is not corrected within thirty (30) days after
receiving written notice from the other party with respect to such default;
b. Any act, determination, filing, judgment, declaration. notice,
appointment of receiver or trustee, failure to pay debts, or other events under
any law applicable to a party indicating the insolvency or bankruptcy of such
party;
c. Any extraordinary governmental action, including, without
limitation, seizure or nationalization of assets, stock, or other property
relating to a party.
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Section 8.3. Rights and Duties on Termination. Upon termination of this
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Agreement,
a. Licensor shall have the right to retain any sums already paid by
Licensee under this Agreement, and Licensee shall pay all sums accrued that are
then due under this Agreement; and
b. Licensee shall discontinue all use of the Intangible Property and
shall have no further right, title, or interest in any Intangible Property or
Know-How.
ARTICLE IX
MISCELLANEOUS
Section 9.1. Notices. Any and all notices, elections, offers, acceptances,
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and demands permitted or required to be made under this Agreement shall be in
writing, signed by the person giving such notice, election, offer, acceptance,
or demand and shall be delivered personally, or sent by registered or certified
mail, to the party, at its address on file with the other party or at such other
address as may be supplied in writing. The date of personal delivery or the date
of mailing, as the case may be, shall be the date of such notice, election,
offer, acceptance, or demand.
Section 9.2. Force Majeure. If the performance of any part of this
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Agreement by either party, or of any obligation under this Agreement, is
prevented, restricted, interfered with or delayed by reason of any cause beyond
the reasonable control of the party liable to perform, unless conclusive
evidence to the contrary is provided, the party so affected shall, on giving
written notice to the other party, be excused from such performance to the
extent of such prevention, restriction, interference or delay, provided that the
affected party shall use its reasonable best efforts to avoid or remove such
causes of nonperformance and shall continue
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performance with the utmost dispatch whenever such causes are removed. When such
circumstances arise, the parties shall discuss what, if any, modification of the
terms of this Agreement may be required in order to arrive at an equitable
solution.
Section 9.3. Successors and Assigns. This Agreement shall be binding
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on and shall inure to the benefit of the parties, Affiliates, their respective
successors, successors in title, and assigns, and each party agrees, on behalf
of it, its Affiliates, successors, successors in title, and assigns, to execute
any instruments that may be necessary or appropriate to carry out and execute
the purpose and intentions of this Agreement and hereby authorizes and directs
its Affiliates, successors, successors in title, and assigns to execute any and
all such instruments. Each and every successor in interest to any party or
Affiliate, whether such successor acquires such interest by way of gift, devise,
assignment, purchase, conveyance, pledge, hypothecation, foreclosure, or by any
other method, shall hold such interest subject to all of the terms and
provisions of this Agreement. The rights of the parties, Affiliates, and their
successors in interest, as among themselves and shall be governed by the terms
of this Agreement, and the right of any party, Affiliate or successor in
interest to assign, sell or otherwise transfer or deal with its interests under
this Agreement shall be subject to the limitations and restrictions of this
Agreement.
Section 9.4. Amendment. No change, modification, or amendment of this
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Agreement shall be valid or binding on the parties unless such change or
modification shall be in writing signed by the party or parties against whom the
same is sought to be enforced.
Section 9.5. Remedies Cumulative. The remedies of the parties under
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this Agreement are cumulative and shall not exclude any other remedies to which
the party may be lawfully entitled.
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Section 9.6. Further Assurances. Each party hereby covenants and
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agrees that it shall execute and deliver such deeds and other documents as may
be required to implement any of the provisions of this Agreement.
Section 9.7. No Waiver. The failure of any party to insist on strict
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performance of a covenant hereunder or of any obligation hereunder shall not be
a waiver of such party's right to demand strict compliance therewith in the
future, nor shall the same be construed as a novation of this Agreement.
Section 9.8. Integration. This Agreement constitutes the entire
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agreement among the parties with respect to the subject matter hereof and
supersedes all prior agreements and understandings among the parties with
respect thereto.
Section 9.9. Captions. Titles or captions of articles and paragraphs
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contained in this Agreement are inserted only as a matter of convenience and for
reference, and in no way define, limit, extend, or describe the scope of this
Agreement or the intent of any provision hereof.
Section 9.10. Number and Gender. Whenever required by the context, the
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singular number shall include the plural, the plural number shall include the
singular, and the gender of any pronoun shall include all genders.
Section 9.11. Counterparts. This Agreement may be executed in multiple
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copies, each of which shall for all purposes constitute an Agreement, binding on
the parties, and each partner hereby covenants and agrees to execute all
duplicates or replacement counterparts of this Agreement as may be required.
Section 9.12. Applicable Law. This Agreement shall be governed by and
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construed in accordance with the laws of the State of Nevada.
Section 9.13. Severability. In the event any provision, clause, sentence,
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phrase, or word hereof, or the application thereof in any circumstances, is held
to be invalid or unenforceable,
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invalidity or unenforceability shall not affect the validity or enforceability
of the remainder hereof, or of the application of any such provision, sentence,
clause, phrase, or word in any other circumstances.
Section 9.14. Costs and Expenses. Unless otherwise provided in this
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Agreement, each party shall bear all fees and expenses incurred in performing
its obligations under this Agreement.
[Signature Page Follows]
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed on the date first written above by their duly authorized officers.
DVA, INC.
____________________________________________
Xxxxx X. Xxx
President
RAVISENT TECHNOLOGIES INC.
____________________________________________
Xxxxxxx X.X. Xxxxx III
Chief Executive Officer and President