Exhibit 10.18
COMPUTER SOFTWARE LICENSE AGREEMENT
This Computer Software License Agreement (the "Agreement") is made this 5th
day of September, 2006 (the "Effective Date"), by and between Migo Software, a
Delaware corporation with its principal place of business at 000 Xxxx Xxxxxxx
Xxxxx, Xxxxx 000, Xxxxxxx, XX 00000 (hereinafter referred to as "Migo"), and
Kingston Technology Corporation, a California corporation, and it's wholly-owned
subsidiaries, with its principal place of business at 00000 Xxxxxxx Xxxxxx,
Xxxxxxxx Xxxxxx, XX 00000, as Kingston (hereinafter referred to as "Kingston").
WHEREAS, Migo has developed and is the owner of, or otherwise has the
authority to license certain mobile computing software as specified herein.
WHEREAS, Kingston desires to obtain certain exclusive global marketing and
distribution rights to load currently available and future product releases of
Migo's software on all of Kingston's flash memory products (the "Kingston
Products").
NOW, THEREFORE, for good and valuable consideration the receipt and
adequacy of which are hereby acknowledged, the parties do agree as follows:
1. DEFINITIONS.
(a) The term "End-User" means an entity or person permitted to use the
Software, for its internal use only, under a sublicense agreement granted by
Kingston, and without the right to further sublicense same.
(b) The term "Enhancement" means the upgrading of a function or
feature of software, or any change thereto which improves its performance.
(c) The term "Improvement" means the addition of a previously
unincluded function or feature to software.
(d) The term "Migo Basic" shall mean the software product offered by
Migo as of the Effective Date for all currently supported platforms and all
currently provided functionality. Migo Basic shall contain an upgrade mechanism
which shall be defined by both parties and fully managed and operated by Migo;
provided, however, that the upgrade mechanism will permit upgrade only to the
same Migo software and functionality as Migo Personal or Migo Professional.
(e) The term "Migo Personal" shall mean the Migo software product
offered by Migo as of the Effective Date for all currently supported software
platforms and all currently provided functionality, including the Outlook
Express synchronization feature that works with POP3/SMTP.
(f) The term "Migo Professional" shall mean the Migo software product
offered by Migo as of the Effective Date for all currently supported software
platforms and all currently provided functionality of the Migo Personal version,
plus the Outlook synchronization feature that works with Microsoft Exchange
servers.
(g) The term "Modification" means any other change to software not
encompassed by the terms Enhancement or Improvement, for example, but not
limited to, changes for purposes of maintaining operating system and data base
system compatibility, error correction, or minor changes in the functions of the
Software.
(h) The term "Software" means Migo Basic, Migo Personal and/or Migo
Professional, and all supporting documentation relating thereto, together with
all Enhancements, Improvements, and Modifications thereof. The term "Software"
shall not include the source code of such software unless the context
specifically includes source code.
(i) The term "Release" means a more current edition of the Software
created by Migo for the purpose of codification of all previously created
Enhancements, Improvements and Modifications.
2. GRANT.
(a) Subject to the terms and conditions specified in this Agreement,
Migo hereby grants and Kingston hereby accepts a world-wide, exclusive license,
terminable only as provided herein, to load the Software on Kingston Products
and to market, distribute and sublicense the Software loaded on the Kingston
Products to End-Users through December 31, 2007 (the "Termination Date"). The
title to the Software and all Enhancements, Improvements and Modifications made
thereto remain with Migo.
(b) Subject to the terms and conditions specified in this Agreement,
Migo hereby grants and Kingston hereby accepts an exclusive license to use
Migo's tradename, trademarks, logos and other designations (collectively "the
Marks") solely in connection with Kingston's marketing and sublicensing of the
Software on the Kingston Products. Use of the Marks shall be in accordance with
Migo's policies in effect from time to time and subject to review and approval
by Migo. Kingston has paid no consideration for the use of the Marks and nothing
herein shall give Kingston any interest in the Marks. Kingston agrees that it
will not at any time during or after the term of this Agreement assert or claim
any interest in or do anything which may adversely affect the validity,
enforceability or value of the Marks. Except as specifically provided in this
Agreement, upon termination or cancellation of this Agreement Kingston shall
immediately cease all display, advertising or other use of the Marks and shall
not thereafter use, advertise or display any name, xxxx, logo or other
designation which is, or any part of which is, similar to or confusing with the
Marks. Any and all uses by Kingston of such marks shall inure to the benefit of
Migo.
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3. PAYMENTS. Kingston shall pay to Migo a blanket license fee in the amount
of $1,850,000.00 (the "License Fees"), as sole and complete compensation to
Migo. The License Fees shall be paid as follows:
(a) $850,000.00 shall be payable upon the signing of this Agreement
(the "First Installment"); and
(b) $1,000,000.00 shall be payable on April 1, 2007 (the "Second
Installment"); provided, however, payment of the Second Installment is
contingent upon Migo adhering to the time line as set forth on Exhibit "A"
attached hereto and by this reference incorporated herein (the "Timeline"). Migo
and Kingston may reflect changes in the Timeline as may be mutually agreed upon
by entering any such changes upon the Timeline attached hereto as Exhibit "A".
If a change in the Timeline is entered on Exhibit "A" and duly signed by the
proper officers of Migo and Kingston, said entry shall constitute an amendment
to this Agreement as of the date of said entry and shall supersede the Timeline
provided for in this paragraph.
4. TERM OF AGREEMENT.
(a) The term of this Agreement shall commence on the Effective Date
and shall terminate on the Termination Date (the "Term").
(b) Kingston shall have the right to renew this Agreement for an
additional one (1) year term by providing Migo with ninety (90) days written
notice of its intent to renew prior to the Termination Date. The terms and
conditions shall remain consistent; however, the parties will determine a
mutually agreed upon License Fee for the renewal term, which in no event will
exceed the current License Fees by more than five percent (5%).
5. SOFTWARE DEVELOPMENT/ENHANCEMENTS.
(a) Additionally, for the consideration set forth in Section 3 above,
Migo shall have the ongoing obligation and sole responsibility for ensuring and
maintaining, for the duration of this Agreement, the quality and proper
performance of the Software and for the performance of any and all Enhancements,
Improvements and Modifications thereto as may reasonably be required by Kingston
to maintain the Software.
(b) During the Term of this Agreement, should Migo develop any new
Software or Releases, then Kingston shall have a 90-day "First to Market Right"
(the "Option Period") for such Software or Release. The Option Period shall
commence on the earlier of: (i) the date Kingston completes its internal quality
assurance qualifications; or (ii) the date which is 30 days following the date
Migo delivers a copy of the new Software or Release to Kingston for evaluation.
6. MAINTENANCE.
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(a) Kingston shall provide first level support to all End-Users. Migo
shall provide central site support to Kingston, and at no additional cost or
expense to Kingston, agrees to correct all errors, defects and malfunctions in
the Software and in the user documentation that are identified, classified and
reported by Kingston, as quickly as practicable.
(b) All corrections under this Section 6 shall be furnished with
sufficient information and instructions to enable Kingston employees to install
and fully understand the corrections.
7. TECHNICAL DOCUMENTATION. Migo shall provide to Kingston technical
documentation and user manuals for the Software in electronic form.
8. REPRESENTATIONS AND WARRANTIES.
(a) Migo represents and warrants that it has all right, title and
interest in and to the Software licensed hereunder, that it has the authority to
enter into this Agreement and to grant the rights and licenses provided herein,
and that this Agreement violates no previous agreement between Migo and any
third parties.
(b) Migo represents and warrants that the Software does not infringe,
and that no claim has been made by any party that the Software infringes any
patent, copyright, trade secret or similar proprietary right of any third party.
If Kingston is charged by a third party with any such infringement, Migo shall
defend and hold Kingston harmless against such claim, and will indemnify
Kingston for any and all losses, damages, costs and expenses, including
reasonable attorneys' fees, resulting from such claim, provided that:
(i) Kingston notifies Migo in writing within a reasonable time
after the claim;
(ii) Migo is allowed to exercise sole control over the defense of
the claim, and all related settlement negotiations;
(iii) Kingston's attorneys will be permitted by Migo to
reasonably observe and/or participate in all aspects of the defense of such
claims or suits; and
(iv) Kingston provides Migo, at Migo's expense, with all
reasonably necessary assistance, information and authority to perform the above.
(c) In the event that any claim of infringement under Section 8.2 is
substantiated, Migo shall, at Migo's option, either:
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(i) obtain a license from the third party for Kingston to
continue using the infringing Software;
(ii) modify the infringing Software to avoid such infringement;
or
(ii) refund any portion of the License Fee previously paid by
Kingston hereunder.
(d) THE WARRANTIES AND REPRESENTATIONS STATED WITHIN THIS AGREEMENT
ARE EXCLUSIVE, AND IN LIEU OF ALL OTHER WARRANTIES, EXPRESS OR IMPLIED,
INCLUDING THE IMPLIED WARRANTIES OR MERCHANTABILITY AND FITNESS FOR A PARTICULAR
PURPOSE.
9. LIMITATION OF LIABILITY AND INDEMNIFICATION.
(a) NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR ANY SPECIAL,
INDIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES, INCLUDING, BUT NOT LIMITED TO,
LOSS OF REVENUES AND LOSS OF PROFITS, EVEN IF THAT PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES.
(b) Migo agrees to defend and hold Kingston harmless against any
claims, at law or in equity, brought against or incurred by Kingston, due to its
use, marketing or distribution of the Software, or due to Migo's breach of its
representations or warranties hereunder, and to indemnify Kingston, its
employees, its officers and directors, for all damages, costs and expenses,
including reasonably attorneys' fees, arising from such claims.
10. INTELLECTUAL PROPERTY RIGHTS.
(a) Kingston agrees that Migo owns all right, title, and interest in
the Software now or hereafter subject to this Agreement and in all of Migo's
patents, trademarks, trade names, inventions, copyrights, know-how, and trade
secrets relating to the design, manufacture, operation or service of the
Software, and in all localizations or translations of Migo's Software whether
prepared by Kingston or Migo (collectively, the "Proprietary Information"). The
use by Kingston of any of the Proprietary Information is authorized only for the
purposes herein set forth, and may not be used by Kingston for any reason after
termination of this Agreement. If Kingston becomes aware of the loss, theft, or
misappropriation of Migo's Proprietary Information which is in its possession,
Kingston shall notify Migo in writing within ten (10) business days of its
discovery of the loss, theft, or misappropriation of such Proprietary
Information. Upon termination of this Agreement, all copies of material
containing Proprietary Information (including electronic versions thereof) shall
be destroyed (with destruction certified by an officer of Kingston) or returned
to Migo.
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(b) Kingston shall ensure that such copyright and proprietary rights
notices as in Kingston's reasonable discretion are appropriate to adequately
protect Migo's copyrights and proprietary rights in the Software are
conspicuously placed on all packaging, and on other written materials
distributed therewith by Kingston. Kingston shall not remove, alter, cover or
obfuscate any copyright notices or other proprietary rights notices placed or
embedded by Migo on or in any of the Software. Migo shall have the right to
review and consent to any packaging that incorporates the Software.
(c) Kingston shall not modify, decompile, disassemble, create or
attempt to create, by reverse engineering or otherwise, any of Migo's Software
or technology to create a derivative work. In no event shall Kingston modify or
use any of Migo's Software or technology to create its own product with similar
functionality. Without limiting the generality of the foregoing, Kingston shall
not use any of Migo's Software or technology as a basis to create or develop or
contribute to the creation or development of any product that incorporates any
portion of any of Migo's Software or technology and shall not create or develop
or contribute to the creation or development of any product functionally similar
to any of Migo's Software or technology.
11. DEFAULT.
(a) An event of default by Kingston shall occur hereunder if Kingston:
(i) Fails to pay on the due date any payment required hereunder;
or
(ii) Fails to perform or observe any material covenant, condition
or agreement to be performed or observed by Kingston hereunder or breaches any
representation or provision contained herein, and such failure or breach shall
continue unremedied for a period of thirty (30) days after written notice from
Migo.
(b) An event of default by Migo shall occur hereunder if Migo:
(i) Fails to perform or observe any material covenant, condition
or agreement to be performed or observed by Migo hereunder or breaches any
representation or provision contained herein and such failure or breach shall
continue unremedied for a period of thirty (30) days after written notice from
Kingston.
(c) It shall be deemed an event of default hereunder if a judgment or
decree is entered against either party approving a petition for an arrangement,
liquidation, dissolution or similar relief relating to bankruptcy or insolvency,
and such judgment or decree remains unvacated for sixty (60) days; or
immediately if: (a) the other party shall file a voluntary petition in
bankruptcy or any petition or answer seeking any arrangement, liquidation or
dissolution related to bankruptcy, insolvency or other relief, or (b) debtors
shall seek or consent or acquiesce in the appointment of any trustee or
receiver, or the liquidating of such party's property.
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12. TERMINATION.
(a) Upon an event of default by either party, the other party shall
have the right to terminate this Agreement by giving the defaulting party prior
written notice of its intention to terminate. Termination shall automatically
occur thirty (30) days after receipt by the defaulting party of such written
notice.
(b) Notwithstanding the above, the following rights and obligations of
the respective parties shall survive termination under this Section 12:
(i) the representations and warranties under Section 8 shall
survive and continue and shall bind the parties and their legal representatives,
successors, heirs and assigns; and
(ii) sublicenses granted by Kingston pursuant to this Agreement
prior to the date of termination shall continue in effect; and
(iii) Kingston shall be permitted, pursuant to Section 2 hereof,
to grant sublicenses to End-Users of the Software for written orders received
prior to the effective date of such termination, but in no event shall any right
to sublicense pursuant to this provision extend for more than sixty (60) days
beyond the effective date of termination. Kingston shall not be entitled to
grant any other sublicenses; and
(iv) all provisions of this Agreement relating to either party's
proprietary rights or to confidentiality of information disclosed by either
party shall remain in full force and effect and survive termination of this
Agreement.
13. CONFIDENTIALITY.
(a) It is expected that the parties will disclose to each other
certain information which may be considered by the disclosing party to be
confidential and trade secret information. Each party recognizes the other's
claim to the value and importance of the protection of the other's confidential
information. All confidential information owned solely by one party, identified
in writing as being confidential, and disclosed to the other party shall remain
solely the property of the disclosing party, and its confidentiality shall be
maintained and protected by the other party with the same degree of care used to
protect its own confidential information, but in any event, not less than a
reasonable degree of care. Except to the extent required by this Agreement, both
parties agree not to duplicate in any manner the other's confidential
information or to disclose it to any third party or to any of their employees
not having a need to know for the purposes of this Agreement. Each party shall
ensure that those of its employees to whom such confidential information is
disclosed have first been bound by
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obligations of confidentiality to said party. The parties further agree not to
use each other's confidential information for any purpose other than the
implementation of this Agreement.
(b) Confidential information may include, but is not limited to, trade
secrets, processes, formulae, specifications, programs, software packages, test
results, technical know-how, methods and procedures of operation, business or
marketing plans, customer lists, proposals, and licensed documentation.
Notwithstanding the foregoing, confidential information shall not include
information which (a) is or becomes a part of the public domain through no act
or omission of the receiving party; (b) was in the receiving party's lawful
possession prior to the disclosure and had not been subject to limitations on
disclosure; (c) is lawfully disclosed hereafter to the receiving party by a
third party who, to the receiving party's best knowledge, did not acquire the
information directly or indirectly from the disclosing party and was otherwise
not restricted as to disclosure; or (d) was independently developed by the
receiving party, without use of the information disclosed under this Agreement.
(c) This confidentiality provision shall survive the termination of
this Agreement.
14. GENERAL.
(a) Kingston shall have full freedom and flexibility in its marketing
effort for the sublicensing of the Software (including, without limitation, the
configuration of the Software it sublicenses, its method of marketing, terms and
conditions and pricing). However, Kingston and Migo shall conduct research and
development, product planning and review sessions at least once each calendar
quarter during the Term of this Agreement.
(b) Migo will in all matters relating to this Agreement act as an
independent contractor. The relationship between Migo and Kingston is that of
licensor and licensee, respectively. Neither party will represent that it has
any authority to assume or create any obligation, express or implied, on behalf
of the other party, or to represent the other party as agent, employee, or in
any other capacity, except as specifically provided herein.
(c) Kingston shall identify the Software as having been developed by
Migo and shall use Migo's name in its advertising of the Software, provided that
Kingston shall, when notified in writing by Migo, use best efforts to modify any
such advertising if Migo objects to the manner in which its name is used.
(d) This Agreement sets forth the entire Agreement between the parties
and supersedes prior proposals, agreements and representations between them
related to the licensing and maintenance of the Software, whether written or
oral. No modifications or amendments to this Agreement shall be binding upon the
parties unless made in writing and duly executed by authorized officials of Migo
and Kingston.
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(e) Neither party shall sell, transfer, assign or subcontract any
right or obligation hereunder, except as expressly provided herein, without the
prior written consent of the other party.
(f) Either party's failure to exercise any right under this Agreement
shall not constitute a waiver of any other terms or conditions of this Agreement
with respect to any other or subsequent breach, nor a waiver by such party of
its right at any time thereafter to require exact and strict compliance with the
terms of this Agreement.
(g) Any notice required or permitted to be made or given to either
party hereto pursuant to this Agreement shall be sufficiently made or given on
the date of mailing if sent to such party by certified mail, postage prepaid,
addressed to it at its address set forth below, or to such other address as it
shall designate by written notice given to the other party:
In the case of Kingston: Kingston Technology Corporation
00000 Xxxxxxx Xxxxxx
Xxxxxxxx Xxxxxx, XX 00000
Attn: Xxxxxx Xxxxx, Business Legal
In the case of Migo: Migo Software
000 Xxxx Xxxxxxx Xxxxx
Xxxxx 000
Xxxxxxx, XX 00000
(h) This Agreement shall be governed and construed in accordance with
the laws of the State of California whose courts (including Federal Courts
located therein) shall have exclusive jurisdiction to resolve any dispute
hereunder.
(i) If any provision of this Agreement is declared void, illegal or
unenforceable, the provision shall be deemed amended a necessary to conform to
applicable laws or regulations, or if it cannot be so amended without materially
altering the intention of the parties, the remainder of the Agreement shall
continue in full force and effect as if the offending provision were not
contained herein.
(j) This Agreement may be executed in any number of counterparts, each
of which shall be deemed to be an original and all of which together shall be
deemed to be one and the same instrument.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be duly
executed as of the day and year first above written.
KINGSTON TECHNOLOGYCORPORATION. MIGO SOFTWARE, INC.
By: By:
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Print Name: Print Name:
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Title: Title:
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