LICENSING AGREEMENT
BETWEEN
MOTOROLA, INC.
AND
BRIGHT TECHNOLOGIES
Bright Technologies -1- January 13, 1999
LICENSING AGREEMENT
This Agreement is made as of the Effective Date defined in Section 1.1 below,
between MOTOROLA, INC., a corporation organized and existing under the laws
of the State of Delaware, United States of America, by and through its
Subscriber Sector having its principal place of business at 000 X. X.X.
Xxxxxxx 00, Xxxxxxxxxxxx, Xxxxxxxx 00000, X.X.X. (hereinafter "Motorola"),
and Bright Technologies, Inc., a corporation organized and existing under the
laws of Georgia and having its principal place of business 0000 Xxxxxx Xxxx,
Xxxxxxxxx, XX 00000 (hereinafter "COMPANY").
RECITALS
1. Motorola owns a United States Patent entitled "A Self-Clocking Data
Transmission System"; and
2. COMPANY desires to obtain a limited non-exclusive license under said
patent on the terms and conditions set forth herein.
NOW THEREFORE, in consideration of the mutual covenants and undertakings set
out herein and other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, Motorola and COMPANY agree as
follows:
1. DEFINITIONS
1.1 EFFECTIVE DATE
The term "Effective Date" shall mean the date upon which the last
party below executes the present Agreement.
1.2 LICENSED EQUIPMENT
The term "Licensed Equipment" shall mean a controller identified in
Attachment "A" having a Motorola cellular transceiver identified in
Attachment "B" which is sourced from Motorola, Inc., and such other equipment
which shall be identified in writing by Motorola and COMPANY.
1.3 LICENSED TERRITORY
The term "Licensed Territory" shall mean the United States, Canada and
Latin America.
Bright Technologies -2- January 13, 1999
1.4 MOTOROLA PATENT
The term "Motorola Patent" shall mean U.S. Patent No. 4,369,516 issued
on January 18, 1983 to Xxxxx and any foreign counterparts in the Licensed
Territory.
1.5 PROPRIETARY INFORMATION
The term "Proprietary Information" shall mean proprietary business and
technical information, know-how, and data of Motorola, identified by a
"Confidential" or "Proprietary" legend and provided to COMPANY during the
term of this Agreement or any renewal thereof.
1.6 SUBSIDIARY
The team "Subsidiary" shall mean, with respect to a party, any business
enterprise which more than fifty percent (50%) of its outstanding shares of
stock which are entitled to designate managerial personnel or vote for the
election of directors (other than any shares the voting rights of which are
subject to restriction), are owned or controlled, directly or indirectly, by
that party or by the same shareholders or substantially the same shareholders
who own or control, directly or indirectly, more than fifty percent (50%) of
such shares of stock of that party, as of the Effective Date of this
Agreement and thereafter for so long as such ownership or control exists.
2. LICENSE
2.1 Motorola hereby grants to COMPANY a non-exclusive, non-assignable,
non-transferable, royalty-free license under the Motorola Patent and Motorola
Proprietary Information, commencing on the Effective Date and thereafter for
the Term of this Agreement, to make, have made by Creative Engineering
Concepts, Incorporated or a third party approved in writing by Motorola, use,
and sell, in the Licensed Territory, Licensed Equipment that include cellular
radiotelephones sourced from Motorola, Inc. to COMPANY.
2.2 Company shall not have the right to grant any sub-licenses under any
of the foregoing licenses and rights in this paragraph 2.1, other than
sublicenses normally made to end users incident to the sale or lease of
product, unless otherwise agreed to in writing by Motorola.
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3. INFORMATION AND CONFIDENTIALITY
3.1 COMPANY agrees that it will keep confidential and not disclose,
publish, provide or other wise transmit Motorola's Proprietary Information to
a third party without Motorola's prior written consent. COMPANY further
agrees to use Motorola's Proprietary Information only for the purposes of
operating and maintaining and using Licensed Equipment, as contemplated in
this Agreement. COMPANY may make additional copies of Motorola' Proprietary
Information for internal use by its employees, provided that Motorola's
copyright notice and confidentiality legend are included on all such copies.
Motorola's Proprietary Information, all copies thereof, and all intellectual
property rights therein are and shall remain the exclusive property of
Motorola. Notwithstanding the foregoing, COMPANY shall have no obligation to
keep confidential any portion of Motorola's Proprietary Information which:
(A) was known to COMPANY prior to receipt thereof from Motorola;
(B) comes into the public domain without breach of the provisions
of this Section;
(C) can be shown to have been rightfully received from a third
party free of any restrictions as to its disclosure; or
(D) can be shown to have been independently developed without
breach of provisions of this Section.
3.2 Motorola's Proprietary Information, including without limitation
specifications for Motorola products, is subject to change without notice.
Motorola accepts no responsibility for any expenses, losses, or action
incurred or undertaken by COMPANY as a result of the receipt of Motorola's
Proprietary Information. It is further understood by COMPANY that Motorola
does not warrant or represent that it will continue production of COMPANY
product or introduce any product to which such Motorola Proprietary
Information is related.
3.3 COMPANY accepts any Proprietary Information provided hereunder "AS
IS". MOTOROLA EXTENDS NO INDEMNITIES OR WARRANTIES FOR THE PROPRIETARY
INFORMATION OR THE ACCURACY THEREOF, EXPRESSED, IMPLIED OR OTHERWISE,
INCLUDING, BUT NOT LIMITED TO, PATENT INDEMNIFICATION OR IMPLIED WARRANTIES
OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
3.4 COMPANY agrees to treat and safeguard Motorola's Proprietary
Information in the same manner as it treats and safeguards its own
Bright Technologies -4- January 13, 1999
confidential information, (but at least with reasonable care) and further
agrees to implement any reasonable extra security measures with respect to
such Proprietary Information as may from time to time be requested in writing
by Motorola.
3.5 Except as required by applicable law and patent marking under
Paragraph 4 of this Agreement, neither party shall disclose to third party
the existence and contents of this Agreement without the prior written
consent to the other party.
3.6 COMPANY agrees that it will not, without the prior written consent of
the Office of Export Control, United States Department of Commerce,
Xxxxxxxxxx, X.X. 00000, X.X.X. knowingly export, re-export or cause to be
exported or re-exported, either directly or indirectly, Licensed Equipment,
Motorola Proprietary Information, or any direct or indirect product thereof,
to any destination prohibited or restricted under United States law.
3.7 The obligations of the parties under this Section 3 shall survive
termination or expiration of this Agreement or any renewal thereof for a
period of five (5) years.
3.8 COMPANY agrees to be bound by the terms of the Non-Disclosure
Agreement effective on January 16, 1996 by Motorola and Bright Technologies,
Incorporated, attached hereto as Attachment C from the effective date of
January 16, 1996 until the execution of this Agreement, and the obligations
to maintain the confidentiality of Confidential Proprietary Information
received by COMPANY during that period shall also survive termination or
expiration of this Agreement or any renewal thereof for a period of five (5)
years.
4. RIGHTS AND OBLIGATIONS
4.1 COMPANY shall apply a patent marking of the Motorola Patents to
Licensed Equipment manufactured, tested, used and/or sold within the Licensed
Territory under the License herein granted stating that the Licensed
Equipment is licensed under US Patent 4,369,516 and foreign counterparts.
Bright Technologies -5- January 13, 1999
4.2 COMPANY shall provide a quarterly report of units of Licensed
Equipment shipped, date of shipment, and country of destination, as shown in
Attachment D.
5. OTHER PATENTS AND PRODUCTS
5.1 Except as specifically provided in this Agreement, no license or right
is granted, by implication, estoppel, or otherwise, by Motorola to COMPANY to
manufacture, assemble and/or sell under any patents of Motorola, nor any
license to make, use or sell any products of Motorola.
5.2 Except as specifically provided in this Agreement, no license under
copyrights of Motorola is granted by Motorola to COMPANY.
5.3 Except as specifically provided in this Agreement, no license under
trademarks or tradenames of Motorola is granted by Motorola to COMPANY.
COMPANY shall only have the right to use Motorola's trademarks or tradenames
according to the guidelines set forth in Attachment E.
6. COMPLIANCE WITH LEGAL PROVISIONS
6.1 This Licensing Agreement shall be governed by and interpreted under
the laws of the State of Illinois, U.S.A., and any federal laws of the United
States of America applicable to the transactions contemplated hereunder.
6.2 With respect to the transactions arising under this Agreement, it is
agreed that neither party shall give or shall receive, either directly or
indirectly, any unlawful payment to or for the benefit of any individual
for the purpose of obtaining any order for a Licensed Equipment.
7. TERM AND TERMINATION
7.1 The Term of this Agreement shall begin upon the Effective Date and
shall continue in full force and effect for a period of one (1) year unless
sooner terminated as provided herein. This Agreement shall automatically
renew for one (1) year terms unless expressly terminated in writing. Either
party shall have the right to terminate this Agreement at any time for any
reason.
7.2 If either Motorola or COMPANY shall default in the performance of any
of the terms and provisions of this Agreement and such default shall
Bright Technologies -6- January 13, 1999
not be cured within thirty (30) days after written notice of the default is
given by the other party to the defaulting party, then at any time after the
expiration of such thirty (30) days, the nondefaulting party may give written
notice to the defaulting party of its election to terminate this Agreement.
Thereupon, this Agreement shall terminate on the date specified in such
notice, which shall not be less than thirty (30) days following the filing of
such notice. Such right of termination shall not be exclusive of any other
remedies or means for redress to which the non-defaulting party may be
lawfully entitled, it being intended that all such remedies shall be
cumulative.
7.3 If either party should be dissolved, or should file a voluntary
petition in bankruptcy, or any order should be entered pursuant to any law
relating to bankruptcy or insolvency or appointing a receiver or trustee for
that party, then the other party may, within ten (10) days thereafter, given
written notice of its desire to terminate this Agreement. Thereupon, this
Agreement shall terminate on the date specified in such notice, which shall
not be less than thirty (30) days after the date of such notice.
7.4 In the event that a majority of the ownership, equity, outstanding
shares, securities, or the right to control COMPANY or Motorola becomes owned
or controlled directly or indirectly by another party other than the owning
or controlling party, if any, on the Effective Date, COMPANY or Motorola
shall promptly give written notice of such change of control, acquisition, or
merger to COMPANY or Motorola, and the Agreement may be terminated
immediately at the option of COMPANY or Motorola but no later than thirty
(30) days following such notification.
7.5 Termination, expiration, cancellation, or abandonment of this
Agreement through any means or for any reason, shall be without prejudice to
the rights and remedies of both parties in respect to any antecedent breach
of any of the provisions of this Agreement and thereafter:
(A) COMPANY shall forthwith cease to use any of the rights obtained
by it from Motorola under this Agreement, except as expressly provided in
this Agreement.
(B) COMPANY shall return to Motorola, or at Motorola's option,
destroy and certify in writing the destruction of all copies of Motorola's
Proprietary Information, regardless of form, in COMPANY's possession.
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(C) COMPANY shall not use any Proprietary Information received from
Motorola, or the residual thereof, in the use of any Licensed Equipment.
8. INJUNCTIVE RELIEF
Since unauthorized utilization or transfer of Motorola's Proprietary
Information will diminish the value of Motorola of the trade secrets and
intellectual property rights which are the subject matter of this Agreement,
if COMPANY commits a material breach of any of its obligations hereunder,
COMPANY agrees that Motorola shall be entitled to equitable relief to protect
its interests, including, but not limited to, temporary and permanent
injunctive relief, without the proving of damage by Motorola.
9. LIMITATION OF LIABILITY
To the full extent of any disclaimer permitted under applicable law, neither
party under this Agreement, whether as a result of breach of contract,
warranty, tort (including negligence), patent infringement, copyright
infringement or otherwise, shall have any liability to the other party nor
shall either party indemnify the other party for incidental or consequential
damages, including, but not limited to, loss of profit or revenues, loss of
business opportunity, loss of use of the products or any associated
equipment, cost of capital, cost of substitute products, facilities or
services, or downtime costs.
10. NOTICES
All notices, consents, approvals, or other notifications required or
permitted hereunder shall be sent in writing either by mail, postage prepaid,
or by FAX, telex or cable, and addressed to each party as follows:
To COMPANY: To Motorola:
0000 Xxxxxx Xxxx 000 Xxxxx Xxxxxxx 00
Xxxxxxxxx, XX 00000 Xxxxxxxxxxxx, XX 00000
Attn: Attn:
Xxxxxx Xxxxxxxxxx Manager, OEM Products
CEO/Pres Cellular Subscriber Sector
Bright Technologies -8- January 13, 1999
FAX NO.: FAX NO.: (000) 000-0000
or to such other address or person as such party may, from time to time,
designate to the other party by written notice. All such notices and
communications shall be deemed to have been duly given (i) if by mail, ten
(10) days after deposit in the mail, and (ii) if by FAX, telex, or cable, on
the date so sent, and the appropriate answer back received. In the event
notice is given by FAX, cable or telex, a copy of such FAX, cable or telex
shall be mailed to the notified party on the same day sent.
11. GENERAL
11.1 This Agreement does not create any joint venture or agency agreement
between the parties hereto and does not give rise to any fiduciary obligation
between them and does not create any obligations between them other than
those defined herein. Neither party has authority to bind the other party.
11.2 Neither party shall assign this Agreement or any of the rights
accorded hereunder without the prior written consent of the other party. This
Agreement and each and every covenant, term and condition herein are binding
upon and inure to the benefit of the parties and their respective successors
and permitted assigns.
11.3 The headings to the Sections in this Agreement are inserted for
reference only and shall not affect the interpretation of this Agreement.
11.4 This Agreement may be amended or modified only by an instrument in
writing duly executed by the authorized representatives of the parties.
11.5 No relaxation, forbearance, delay, or indulgence by either party in
enforcing its rights hereunder or the granting of time by such party shall
prejudice or affect its rights hereunder, and no waiver by either party shall
operate as a waiver of any subsequent or continuing breach.
12. ENTIRE AGREEMENT
This Agreement, consisting of Sections 1 through 12 and Attachments "A", "B",
"C", "D" and "E" hereto, constitutes the entire understanding between the
parties concerning the subject matter hereof and supersedes all prior
discussions, agreements and representations, whether oral or written and
whether or not executed by Motorola and COMPANY. The obligations of
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the parties hereto are corporate obligations alone and not the obligations
of, nor are they implied or otherwise guaranteed by individuals signatory to
this Agreement or otherwise associated with the parties hereto.
MOTOROLA, INC. COMPANY BRIGHT TECHNOLOGIES INC
/s/Xxx X. Xxxxxx /s/Xxxxxx Xxxxxxxxxx
-------------------------------- ---------------------------------
By: Xxx Xxxxxx By: Xxxxxx Xxxxxxxxxx
---------------------------- -----------------------------
Title: V.P. and Director Title: CEO/Pres
------------------------- --------------------------
Date: 3/12/99 Date: 1-14-99
-------------------------- ---------------------------
---------------------------------
By: Xxxxxxxx X. Xxxxx
----------------------------
Title: Corporate Vice President
----------------------------
Patents, Trademarks and Licensing
Date:
----------------------------
Bright Technologies -10- January 13, 1999
ATTACHMENT "A"
Licensed Equipment
1. Bright Technologies Wireless Local Loop Credit/Debit card controller
2. Bright Technologies Celular Pay Telephone Credit/Debit card controller
3. Bright Technologies Credit Card verification terminal
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ATTACHMENT "B"
Transceivers for Licensed Equipment
1. Model S5689 OEM AMPS 3 watt transceiver
2. Model S6317 OEM NAMPS 3 watt transceiver
Bright Technologies -12- January 13, 1999
ATTACHMENT "C"
Non-Disclosure Agreement
Bright Technologies -13- January 13, 1999
ATTACHMENT "D"
Reporting Letter
Motorola, Inc
000 X. XX Xxxxxxx 00
Xxxxxxxxxxxx, XX 00000
Attn:
Re: Motorola License Agreement
Pursuant to the License Agreement, we are reporting the Net Sales of Licensed
Equipment:
Quarterly Reporting Period Quarter 19
--- ---
Countries of Destination
Units Dates Shipped:
--------------- ------
Units Dates Shipped:
--------------- ------
Units Dates Shipped:
--------------- ------
Units Dates Shipped:
--------------- ------
Net Sales Units
------
Certified by,
Bright Technologies -14- January 13, 1999
ATTACHMENT "E"
POLICY FOR THE USE OF
MOTOROLA NAME/TRADEMARKS
AND PRODUCT DESCRIPTIONS
1. USE OF THE MOTOROLA NAME/TRADEMARKS
a. COMPANY shall not use or reproduce the circled "M", the name
"Motorola" in Helvetica Bold italic typeface, or any other
stylized version of the Motorola name.
b. COMPANY shall not use or reproduce any Motorola trademarks or
tradenames, except as expressly agreed to in writing by Motorola.
c. Other than outlined below, COMPANY shall make no use of the
Motorola name, Motorola model names, or Motorola model numbers,
or disclose the existence of this Agreement except for purposes
of providing a patent marking as set forth in Paragraph 4.1 of
this Agreement.
II. PRODUCT PROMOTIONAL LITERATURE
In any promotional literature for COMPANY's Finished Product, COMPANY may
include any of the following statements:
a. "The cellular transceiver in this product is manufactured by
Motorola, Inc."
b. "Motorola cellular transceiver".
c. "Motorola quality and performance."
d. "Cellular transceiver made by Motorola, Inc."
III. WRITTEN RESPONSE TO BIDS, PROPOSALS, TENDERS
When COMPANY is required by bid specifications or written indication
from end-user and/or equipment purchasers to divulge the name of the
manufacturer of components within COMPANY's Finished Product, COMPANY
may state that Motorola, Inc. is the manufacturer of the transceiver
and provide the Motorola model number and specifications. COMPANY may
also identify Motorola, Inc. as the manufacturer of the transceiver in
customer presentations provided that such reference to Motorola, Inc.
is limited to the statements outlined in Paragraph II
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(above). COMPANY shall not otherwise mention Motorola generically as
the cellular product supplier.
IV. ADVERTISING, PRESS RELEASES
a. As part of advertising in trade publications of COMPANY's
Finished Product, COMPANY may include the statements in Paragraph
II (above).
b. Neither party shall make a press releases without the express
written consent of the other party.
Bright Technologies -16- January 13, 1999
