CONFIDENTIAL TREATMENT REQUESTED BY IQROM COMMUNICATIONS, INC.
Exhibit 10.12
AUTHORIZATION AGREEMENT
This Agreement made and entered into as of the 19th day of
January, 2001 by and between DISKXPRESS U.S. INC., a corporation duly organized
and existing under the laws of the State of Delaware, having at its registered
office at 00 Xxx Xxxxxxx Xxxx, Xxxxx, Xxxxxxxx 00000 (hereinafter referred to as
"DISKXPRESS"); and IQROM Solutions, Inc., a corporation duly organized and
existing under the laws of the State of Nevada, having its principal office at
0000 Xxxxxx Xxxx Xxxxx, Xxxxx 000-X, Xxxxxxx, Xxxxxxx (hereinafter referred to
as "IQROM"); and XXXXXX COMPANY OF JAPAN, LIMITED, a corporation duly organized
and existing under the laws of Japan, having its principal office at 12,
3-chome, Xxxxxx-xxx, Xxxxxxxx-xx, Xxxxxxxx 000-0000, Xxxxx (hereinafter referred
to as "JVC") JVC.
WITNESSETH
WHEREAS, DISKXPRESS has acquired and owns or controls the
exclusive rights for U.S. Patent Nos. 5,982,736 and 6,078,557, and any and all
reissues, divisions, continuations and continuations-in-part thereof relating to
certain unique types of optically readable and/or recordable media;
WHEREAS, DISKXPRESS has, pursuant to a Patent License
Agreement dated April 7, 2000, granted to IQROM an exclusive right and license
under the Licensed DISKXPRESS Patents as defined below to use, market,
distribute, sell and import optically and readable and/or recordable media;
WHEREAS, JVC has been engaged in and has full experience in,
among other things, licensing of intellectual property rights;
WHEREAS, JVC has upon the date hereof entered into a License
Agreement with DISKXPRESS and IQROM ("The License Agreement"); and
WHEREAS, DISKXPRESS and IQROM now desire to appoint JVC as an
exclusive licensing agent, subject to DISKXPRESS' approval, having the right to
negotiate with any potential licensees to grant a license and right to sell and
otherwise dispose of Licensed Products (as defined below) pursuant to such
approved licenses;
NOW, THEREFORE, the parties hereto agree as follows:
Article 1. Definitions:
For the purpose of this Agreement, the following terms shall have respective
meanings set forth below:
(1) "Patents" shall mean U.S. Patent Nos. 5,982,736 and 6,078,557, and any and
all of reissues, divisions, continuations and continuations-in-part thereof
owned or controlled by DISKXPRESS.
CONFIDENTIAL TREATMENT REQUESTED BY IQROM COMMUNICATIONS, INC.
(2) "Licensed Product" shall mean the card type optically readable and/or
recordable media as shown, described and/or claimed in the Patents.
Article 2. Authorization of Rights as Agent
(1) DISKXPRESS and IQROM hereby agrees to appoint JVC as an exclusive agent and
authorize JVC, subject to IQROM's right of approval, to negotiate with any
interested third party potential licensees to grant a limited, non-exclusive
non-transferable limited right and licenses to such interested third-party
licensees to sell, lease, use or otherwise dispose of Licensed Products in
the United States in accordance with the terms of this Agreement and the
License Agreement. All negotiation for licenses to be granted to the
licensees hereunder shall conform to the form license attached hereto (the
"Licensee Agreement") and all licensees hereunder shall be subject to prior
approval by IQROM prior to the execution of any Licensee Agreement, and
subject to the approval of IQROM prior to any termination of an executed
Sub-Licensee Agreement.
(2) DISKXPRESS and IQROM agree that as part of any authorization or licenses to
be granted hereunder, DISKXPRESS covenants and agrees not to xxx authorized
licensees under the Patents, for as long as such licensees are not in
default of the Licensee Agreement, and further authorize JVC, subject to
DISKXPRESS' prior right of approval to negotiate with such third party
licensees to grant releases of third party licensees from any and all claims
of the Patents arising from such third parties' manufacture, sale, lease,
use or other disposal of Licensed Products for the period prior to the
execution of an approved Licensee Agreement referred to in the preceding
paragraph in accordance with terms of this Agreement.
Article 3. Execution of the Licensing Program
(1) DISKXPRESS and IQROM retain the right to (i) grant licenses under the
Patents to manufacture, have manufactured, sell, lease, use or otherwise
dispose of Licensed Products in the United States in accordance with the
terms of this Agreement; (ii) grant releases to all authorized third party
licensees, from any and all claims of the Patents arising from manufacture,
sale, lease, use or other disposal of Licensed Products by such third
parties for the period prior to the effective date of the license referred
to in (i) above, (iii) collect royalties pursuant to licenses of the Patents
as provided in this Agreement and (iv) enforce such licenses as hereinafter
provided.
(2) Each of the parties hereto shall promptly notify the other of any
infringement or other misuse or unauthorized use of any of the rights
pursuant to this Agreement that may come to its attention. The parties shall
cooperate in taking such steps as may be reasonably necessary to prevent any
such unauthorized uses.
(3) DISKXPRESS and IQROM agree that they will be responsible for prosecuting
unauthorized use or infringement of the Patents and shall be responsible for
the enforcement, defense and maintenance of the Patents. JVC shall cooperate
fully, at its own expense, with DISKXPRESS and IQROM in prosecuting
unauthorized use or infringement of the Patents, enforcing or defending
DISKXPRESS' and IQROM's rights under the Patents.
CONFIDENTIAL TREATMENT REQUESTED BY IQROM COMMUNICATIONS, INC.
Article 4. Report and Payment
(1) JVC shall act as the licensing agent to cooperate with DISKXPRESS to collect
all licensing income with respect to the Patents and shall receive fees for
its services as agent, all as provided in this Article 4.
(2) It is agreed by the parties hereto that JVC's fee for acting as the patent
licensing agent shall be [Confidential Information filed separately with the
Securities and Exchange Commission].
(3) At the same time DISKXPRESS pays [Confidential Information filed separately
with the Securities and Exchange Commission] to IQROM as provided in the
preceding paragraph, DISKXPRESS shall send to IQROM and JVC a royalty
statement showing the amount of all licensing income and unit quantities of
products sold during the reporting period.
(4) In the event that the agent fee payable by DISKXPRESS to JVC pursuant to
Article 4(2) above are subject to income taxes imposed by the government of
the United States, DISKXPRESS shall withhold such taxes from the payment and
furnish JVC with tax certificates issued by the tax authorities of the
United States.
(5) JVC shall make periodic reports on its agent activities to DISKXPRESS within
ninety (90) days after march 31, June 30, September 30 and December 31 of
each year for the preceding three (3) months period.
Article 5. Third Party License Terms
DISKXPRESS shall grant licenses and rights to interested third parties
substantially pursuant to this Agreement. Royalties to be charged to third
parties shall be jointly determined by DISKXPRESS and JVC, provided, however,
that [Confidential Information filed separately with the Securities and Exchange
Commission].
Article 6. Earlier Termination
(1) If any party shall have defaulted in the performance of any of the
obligations assumed hereunder, the other party shall give a written notice
to the delinquent party specifying the default, and if the delinquent party
shall not have rectified such default within sixty (60) days after the
receipt of such notice, the other party may terminate this Agreement
immediately by giving a written notice to such effect.
(2) If any party should be dissolved or file a voluntary petition in bankruptcy
or seek any court or governmental protection from creditors or make any
assignment for creditors or should an order be entered pursuant to any law
relating to bankruptcy or insolvency appointing a receiver or trustee for
such party, the other party may terminate this Agreement by giving a written
notice to immediate effect.
CONFIDENTIAL TREATMENT REQUESTED BY IQROM COMMUNICATIONS, INC.
Article 7. Term of Agreement
This Agreement shall become effective on the date first above written and,
unless terminated earlier in accordance with the preceding Article 6, shall
continue to be effective until [Confidential Information filed separately with
the Securities and Exchange Commission].
Article 8. Representation and Warranty
DISKXPRESS represents and warrants that it owns the Patents identified herein
together with the right to grant the rights herein granted during the term of
this Agreement.
Article 9. Assignment
Neither this Agreement nor any licenses or rights hereunder to be granted, in
whole or in part, shall be assignable or otherwise transferable by a party
without the prior written consent of the other party. Any attempted assignment
or transfer of this Agreement or any of the rights or licenses to be granted
hereunder without such prior written consent shall be null and void.
Notwithstanding the foregoing, no consented-to assignment or transfer shall be
effective unless such third party transferee agrees in writing to be bound by
all terms of this Agreement.
Article 10. Notices
All notices, requests, demands, instructions, consents or other communications
required or permitted to be given under this Agreement shall be in writing and
shall be deemed to have been duly given if (i) delivered personally, (ii)
transmitted by prepaid telegram, telex or facsimile, (iii) mailed postage
prepaid by certified mail, return receipt requests, (iv) sent by a nationally
recognized express courier service, postage or delivery charges prepaid, at the
address hereinafter specified, or to such other address as the parties may
advise each other in writing from time to time. Any notice shall be addressed as
follows:
As to DISKXPRESS:
With a copy to
Xx. Xxx Xxxx Xxxxxx X. Xxxxxxxxx, Esq.
CEO Stroock & Stroock & Xxxxx LLP
x/x 0000 Xxxxxx Xxxxxx, Xxxxx Floor 000 Xxxxxx Xxxx
Xxxxxxxxxxxx XX 00000 0000 Xxx Xxxx, Xxx Xxxx 00000
As to IQROM
With a copy to
Xx. Xxxxx Xxxxxxx Xxxxxx X. Xxxxxxxxx, Esq.
0000 Xxxxxx Xxxx Xxxxx, Xxxxx 000-X, Xxxxxxx & Stroock & Xxxxx LLP
Xxxxxxx, Xxxxxxx 00000 000 Xxxxxx Xxxx
Xxx Xxxx, Xxx Xxxx 00000
As to JVC
Mr. Tokio Nohara
Associate Director
General Manager of
Legal & Intellectual Property Dept.
0-00 Xxxxxx-xxx, Xxxxxxxx-xx
Xxxxxxxx 000-0000, Xxxxx
CONFIDENTIAL TREATMENT REQUESTED BY IQROM COMMUNICATIONS, INC.
Article 11. Force Majeure
Neither party shall be liable for failure to perform its part of this Agreement
during the period when such failure is due to Acts of God, fire, flood, war and
other similar causes beyond the control of the parties.
Article 12. Applicable Law and Jurisdiction
This Agreement shall be governed by and interpreted under the laws of the State
of New York. The courts of the State of New York shall have jurisdiction over
all disputes which may arise with respect to the execution, interpretation and
performance of this Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement signed in
duplicate copies, each party keeping one copy.
On: 09.01.01/
At: Bourton on the Water DISKXPRESS U.S. INC.
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/s/ Xxx Xxxx
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On: Jan. 19, 2001
At: Yokohama, Japan XXXXXX COMPANY OF JAPAN,
-------------------------------------- LIMITED
/s/ Tokio Nohara
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Tokio Nohara, Associate Director
General Manager
Legal & Intellectual Property Dept.
On: 09.01.01
At: Bourbon on the Water IQROM SOLUTIONS, INC.
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/s/ Xxx Xxxx
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