Exhibit 10.27
LICENSE AGREEMENT
This License Agreement (this "Agreement") is entered into as of February
8th, 1999 by and between America's Doctor, Inc. (the "Licensee or the
"Company") and Jaspin Interactive, Inc. (the "Licensor"), for the purpose of
granting the Licensee an in perpetuity license to use certain software which
has been developed by the Licensor, and fully-paid for by the Licensee.
RECITALS:
WHEREAS, the Licensee is an on-line company which provides medical
information and image marketing services through America Online and other
sites on the Internet, which sites may change from time to time (the
"Websites");
WHEREAS, the Licensee hired the Licensor as an independent contractor to
build chat-related Source Code, Executable Code, and software (the "AD
Chatware") for the Company's site and to integrate the code(s) into the
Company's site(s) in order to assist the Company in providing on-line chat to
its consumers;
WHEREAS, the Licensee fully and completely paid for the development of
the AD Chatware in exchange for an in perpetuity and partially-exclusive
license to utilize the Licensed Software in its Websites and as otherwise
described in this Agreement;
WHEREAS, the Licensor has developed the AD Chatware and has agreed to
furnish the Licensee with the in perpetuity right to use the Licensed
Software in any manner connected with the Licensee's business, and has agreed
to provide the Licensee exclusive rights to the use of the Licensed Software
in connection with any medical or health-related company, venture entity or
enterprise;
WHEREAS, the Licensor has agreed to perform maintenance and services for
the Licensee including maintenance and support for the Licensed Software and
the Websites; wherefore, in connection with this Agreement, the parties intend
to execute a maintenance agreement for the Licensor's continued maintenance
of and assistance with the Licensed Software and the Websites;
WHEREAS, in connection with this Agreement, the parties intend to
execute a marketing agreement for the marketing and sale of the Licensed
Software to other non-medical or health-related companies;
WHEREAS, the Licensor and the Licensee desire to memorialize this
Agreement in writing;
NOW THEREFORE, in consideration of the above-stated recitals, which are
incorporated herein as a material part of this Agreement, and for other
valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, the parties agree as follows:
1. DEFINITIONS. As used in this Agreement:
"Affiliates" means, with respect to a party, any person or entity that
controls, is controlled by, or is under common control with such party.
"Confidential Information" means: (1) any information relating to either
party's product plans, design, costs, prices and names, finances, marketing
plans, business opportunities, personnel, research development or know-how;
and (ii) the terms and conditions of this Agreement. "Confidential
Information" shall not include information that: (i) is or becomes generally
known or available by publication, commercial use or otherwise through no
fault of the receiving party; (ii) is independently developed or learned by
the receiving party; (iii) is lawfully obtained from a third party that has
the right to make such disclosure; or (iv) is made generally available by the
disclosing party without restriction on disclosure.
"Documentation" means any user manual, technical documentation regarding
the design and structure or other explanatory document provided to the
Licensee along with the Licensed Software.
"Executable Code" means the fully compiled version of a software program
that can be executed by a computer and used by an end user without further
compilation.
"Intellectual Property Rights" means all copyrights, trademarks, service
marks, trade secrets, patents, patent applications, moral rights, contract
rights, and other proprietary rights.
"Licensed Software" means the software program or programs described as
the AD Chatware and any modified, updated or enhanced versions of such
program(s) the Licensor may provide to the Licensee pursuant to this
Agreement or pursuant to a separate maintenance agreement.
"Source Code" means the human-readable version of a software program
that can be compiled into Executable Code.
2. LICENSE GRANT. Subject to the terms and conditions of this Agreement,
the Licensor grants to the Licensee and its Affiliates a partially-exclusive
(as defined in Section 3), worldwide, perpetual and irrevocable fully-paid
and royalty-free license under all of the Licensor's worldwide Intellectual
Property Rights to use the Licensed Software and to make unlimited copies of
the Licensed Software for backup and archival purposes.
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3. PARTIALLY EXCLUSIVE GRANT. Subject to the terms and conditions of
this Agreement, the Licensor grants to the Licensee and its Affiliates the
EXCLUSIVE, worldwide, perpetual and irrevocable fully-paid and royalty-free
license under all of the Licensor's worldwide Intellectual Property Rights
to use the Licensed Software in connection with any medical or health-related
purpose, business, company, venture, entity, or individual. The Licensor
represents and warrants that it will not allow any use of the Licensed
Software or programs created by the Licensor that perform the same or similar
function as the Licensed Software in connection with any medical or
health-related purpose, business, company, venture, entity, or individual,
nor will the Licensor assist any business, company, venture, entity or
individual develop such software. Subject to the terms and conditions of this
Agreement, the Licensor grants to the Licensee and its Affiliates the
NON-EXCLUSIVE, worldwide, perpetual and irrevocable fully-paid and
royalty-free license under all of the Licensor's worldwide Intellectual
Property Rights to use the Licensed Software in connection with any
business, company, venture or entity which is not medical or health-related.
4. RESTRICTIONS ON USE. The Licensee acknowledges the Licensor's claim
that the Licensed Software and its structure or organization constitute
valuable secrets of the Licensor. Accordingly, the Licensee agrees not to use
or copy the Licensed Software except as allowed under Sections 2 or 3. The
Licensee agrees not to sublicense, lease, rent or sell (except in connection
with an assignment of the Licensee's rights permitted under Section 12.3 or
as otherwise provided in a marketing agreement between the Licenses and
Licensor to be executed in connection with this Agreement) the Licensed
Software to any third party (other than the Licensee's Affiliates). The
Licensee further agrees not to disassemble, reverse engineer or decompile the
Licensed Software, except as otherwise permitted in this Agreement.
5. DELIVERY, INSTALLATION AND ACCEPTANCE. The Licensee acknowledges that
the Licensor has delivered and installed the Licensed Software and the
Documentation to the Licensee, and the Licensee has accepted the Licensed
Software and Documentation subject to the warranties contained in Section 7.
6. LICENSE FEES AND PAYMENTS. The Licensor acknowledges that the
Licensee has made all payments for the License of the Licensed Software
hereunder, and that no further fee, duty, royalty or payment is due or owing
to the Licensor from the Licensee.
7. WARRANTIES
7.1 METHOD OF TRANSFER. The Licensor warrants that the method in
which the Licensed Software (and any modified, updated, or enhanced versions
of the Licensed Software) is provided to the Licensee, shall be free of
defects in material and workmanship, and the Licensed Software will arrive at
the transfer destination in an undamaged and fully-functioning state. This
warranty does not apply to damage resulting from misuse, abuse or neglect by
the Licensee.
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7.2 PERFORMANCE. For a period of 180 days from the commencement of the
Term of this Agreement (the "Warranty Period"), the Licensor warrants that
the Licensed Software, when used as permitted under this Agreement, will
operate substantially as described in the Documentation and as anticipated by
the Licensee. The Licensor acknowledges that the Licensed Software is
mission critical and warrants that the Licensee's use of the initial Licensed
Software will be error-free and uninterrupted during the Warranty Period, and
the Licensor will undertake all commercially reasonable efforts to ensure
error-free and uninterrupted operation of the Licensed Software following any
upgrades or modifications of the Licensed Software. Notwithstanding the
foregoing, the Licensor shall not be responsible for any error or
interruption caused by the Licensee, such as: defects in the Licensee's
hardware or operating system software; or breakdowns in the Licensee's
communications equipment or service. The Licensor will, at its own expense
for any breach of this warranty, use commercially reasonable efforts to
correct any reproducible error in the Licensed Software reported to the
Licensor by the Licensee during the Warranty Period. Any such error
correction provided to the Licensee will not extend the original Warranty
Period.
The warranty under this Section 7.2 will not apply to output, results,
errors, or abnormal terminations caused in whole or part by:
(a) any functionality of the Licensed Software not created or integrated
by the Licensor or use of the Licensed Software in combination with any other
product not created or integrated by the Licensor; or
(b) any modifications of the Licensed Software made by a party other
than the Licensor.
7.3 VIRUSES. The term "Virus" means any computer code designed to (a)
disrupt, disable, harm, or otherwise impede in any manner the operation of a
computer program or computer system or (b) damage or destroy any data files
residing on a computer system without the users' consent. Licensor
represents and warrants that the Licensed Software (and any modifications,
upgrades or enhancements thereto) and the media on which the Licensed
Software is furnished to the Licensee, when delivered to the Licensee, will
not contain any reasonably detectable Viruses.
7.4 YEAR 2000 COMPLIANCE. The Licensor warrants that the Licensed
Software is Year 2000 Compliant with respect to any functionality of the
Licensed Software. For purposes of this section, "Year 2000 Compliant" means:
(a) all data receivable by the Licensed Software, as well as the
functions, calculations, output, results, and other computing processes of
the Licensed Software (collectively, "Processes") perform in a consistent
manner regardless of the date in time on which the Processes are actually
performed and regardless of the date input to the system, whether before, on,
or after January 1, 2000 and whether or not the dates are affected by leap
years;
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(b) the Licensed Software accepts, calculates, compares, sorts,
extracts, sequences, and otherwise processes date inputs and date values, and
returns and displays date values in a consistent manner regardless of the
dates used, whether before, on, or after January 1, 2000;
(c) the Licensed Software will function without interruptions caused by
the date in time on which the Processes are actually performed or by the date
input to the system, whether before, on or after January 1, 2000;
(d) the Licensed Software accepts and responds to year input in a manner
that resolves any ambiguities as to century in a defined and predetermined
and appropriate manner; and
(e) the Licensed Software stores and displays date information in ways
that are unambiguous as to the determination of the century.
The warranty under this Section 7.4 will not apply to output, results,
errors, or abnormal terminations caused in whole or part by:
(a) any functionality of the Licensed Software not created or integrated
by the Licensor or use of the Licensed Software in combination with any other
product not created or integrated by the Licensor; or
(b) any modifications of the Licensed Software made by a party other
than the Licensor.
During the Warranty Period, the Licensor will, at its own expense for
any breach of this warranty, use commercially reasonable efforts, time being
of the essence, to correct any reproducible error in the Licensed Software
reported to the Licensor by the Licensee within 24 hours of the Licensee's
notice to the Licensor of the error.
7.5 DISCLAIMERS. THE EXPRESS WARRANTIES IN THIS SECTION 7 ARE IN LIEU OF
ALL OTHER WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, REGARDING THE LICENSED
SOFTWARE, INCLUDING ANY WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE, TITLE, AND NON-INFRINGEMENT OF THIRD PARTY RIGHTS.
LICENSEE ACKNOWLEDGES THAT IT HAS RELIED ON NO WARRANTIES OTHER THAN THE
EXPRESS WARRANTIES IN THIS AGREEMENT.
8. INTELLECTUAL PROPERTY RIGHTS; INFRINGEMENT. The Licensor shall take
all reasonable action to obtain any patent, Intellectual Property Rights,
worldwide intellectual property rights, copyright, or Berne Convention
copyrights which may be obtained for the Licensed Software, and which the
Licensor, in its sole discretion, determines to seek. Notwithstanding the
foregoing, within thirty (30) days of the execution of this Agreement, the
Licensor shall apply for copyright registration. The Licensor shall take all
reasonable action to prevent infringement of any patent, Intellectual
Property Rights, worldwide intellectual property rights, copyright, or Berne
Convention copyrights obtained for the Licensed Software, and shall
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promptly take all reasonable action to halt any such infringement discovered.
The cost of enforcing any patent, Intellectual Property Rights, worldwide
intellectual property rights, copyright or Berne Convention copyrights of the
Licensed Software shall be borne by the Licensor, provided however, that if
the infringement is with respect to the use of the Licensed Software in
connection with any medical or health-related purpose, business, company,
venture, entity or individual, the Licensor and the Licensee shall jointly
cooperate to enforce and prosecute any infringement, each bearing one-half
(1/2) of such costs and each receiving one-half (1/2) of any settlement or
award; provided however, that if the Licensee has terminated this Agreement,
the Licensee shall not be responsible for any portion of such costs. In the
event that the Licensor fails to take all reasonable actions to prevent
infringement of the Licensed Software, the Licensee may, after giving written
notice to the Licensor, take such appropriate action at the Licensor's cost
and expense.
The Licensor will indemnify and defend at its own expense any action
against the Licensee brought by a third party to the extent that the action
is based upon a claim that the Licensed Software infringes any patents or
other Intellectual Property Rights, worldwide intellectual property right,
copyrights or Berne Convention copyrights, and the Licensor shall pay those
costs and damages incurred as a result of a settlement or final
non-appealable judgment against the Licensee from a court of competent
jurisdiction, and any consequential, indirect, exemplary, special or
incidental damages arising from or relating to, any such action, settlement
or judgment. The foregoing obligations are conditioned on the Licensee
notifying the Licensor promptly in writing of such known action, and Licensee
cooperating and, at Licensor's request and expense, assisting in such
defense. Notwithstanding the foregoing, the Licensor will have no obligation
under this Section 8 with respect to any infringement claim based upon (i)
any use by the Licensee of the Licensed Software for a purpose outside the
scope of this Agreement, (ii) any use by the Licensee of the Licensed
Software in combination with other products, equipment, software, or data not
supplied by the Licensor, if without such use the Licensed Software would not
have been infringing, or (iii) any modification by the Licensee of the
Licensed Software by any person other than the Licensor or its authorized
agents or subcontractors, if without such use the Licensed Software would not
have been infringing.
9. TERM AND TERMINATION.
9.1 TERM. The term of this Agreement begins on September 16, 1998,
and will continue indefinitely unless terminated pursuant to Section 9.2.
9.2 TERMINATION. The Licensee may terminate this Agreement at any
time, with or without cause, upon written notice to the Licensor. The
Licensor may terminate this Agreement, upon written notice to the Licensee,
if (a) the Licensee materially breaches any provision in Section 4 and fails
to cure the breach within thirty (30) days after receiving written notice
thereof from the Licensor, or (b) the Licensee materially breaches any other
provision of this Agreement and fails to cure the breach within sixty (60)
days after receiving written notice thereof from the Licensor.
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9.3 SURVIVAL. Section 1 ("Definitions"), Section 2 ("License
Grant"), Section 3 ("Partially Exclusive Use"), Section 4 ("Restrictions on
Use"), Section 6 ("License Fees and Payments"), Section 7 ("Warranties"),
Section 8 ("Intellectual Property Rights: Infringement"), Section 9.3
("Survival"), Section 10 ("Confidentiality"), and Section 12 ("General") will
survive the termination of this Agreement.
10. CONFIDENTIALITY. Each party shall protect the other's Confidential
Information from unauthorized dissemination and use with the same degree of
care that such party uses to protect its own like information. Neither party
will use the other's Confidential Information for purposes other than those
necessary to directly further the purposes of this Agreement. Neither party
will disclose to third parties the other's Confidential Information without
the prior written consent of the other party. Except as expressly provided
in this Agreement, no ownership or license rights is granted in any
Confidential Information.
11. ESCROW AGREEMENT: RIGHTS UPON DEFAULT. Within thirty (30) days after
the execution of this Agreement, the Licensor will deposit two (2) copies of
the Source Code and Executable Code for the Licensed Software, and all
associated flowcharts, decision tables, schematics, Documentation and other
technical documentation and information necessary for a reasonably skilled
programmer to understand the structure of, correct errors in, and make
modifications to such Source Code and Executable Code (the "Escrowed
Materials") into escrow with a mutually acceptable third party escrow agent
(the "Escrow Agent"). The Licensor must update the Escrowed Materials each
time a generally applicable modification, revision, upgrade or enhancement to
the Licensed Software is made, which update shall be within thirty (30) days
of each such modification, revision, upgrade or enhancement. The cost of
maintaining the Escrowed Materials with the Escrow Agent during the term of
this Agreement shall be borne equally by the Licensor and the Licensee. In
the event that the Licensor fails or refuses to escrow the Escrowed Materials
in accordance with this Agreement, the Licensee shall be entitled to
injunctive and other equitable relief for such breach or threatened breach of
this Section 11 and the Licensor shall be responsible for any and all
expenses incurred by the Licensee in enforcing its rights including court
costs and reasonable attorneys fees. The Licensee shall be entitled to
receive a copy of the Escrowed Materials upon the occurrence of any of the
following events: (i) any material failure of the Licensor to perform in
accordance with the terms of a maintenance agreement to be entered into
between the Licensor and the Licensee for the maintenance of the Licensed
Software; (ii) the Licensor: ceases to do business in the normal course;
becomes a debtor under any proceeding pursuant to the U.S. Bankruptcy Code; is
subject of any state insolvency proceeding such as an assignment for the
benefit of creditors; or seeks to sell substantially all of its assets in a
bulk sale transaction. In the event of a dispute between the Licensor and
the Licensee as to whether the Escrow Agent shall release the Escrowed
Materials from escrow, the dispute shall be resolved in accordance with
Section 12.10. During the pendency of such dispute, the Escrowed Materials
shall be released to a third party mutually agreed upon by the Licensor and
the Licensee for the Licensee's use and benefit of the Escrowed Materials
(the "Third Party"). In the event the Licensor and the Licensee are unable to
mutually agree upon the selection of the Third Party, the Licensor and the
Licensee shall each designate a
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third party (the "Designee"), and the Licensor's Designee and the Licensee's
Designee shall jointly select the Third Party. In the event the dispute
between the Licensor and the Licensee is resolved in favor of the Licensor,
the Third Party shall immediately return all copies of the Escrowed Materials
to the Escrow Agent, and shall retain no copies of the Escrowed Materials in
its files.
12. GENERAL.
12.1 PROPRIETARY RIGHTS. The Licensed Software and Documentation,
and all worldwide Intellectual Property Rights therein, are the exclusive
property of the Licensor. All rights in and to the Licensed Software not
expressly granted to the Licensee in this Agreement are reserved by the
Licensor.
12.2 MAINTENANCE AND SUPPORT. The Licensor has agreed to perform
maintenance and support for the Licensed Software for a minimum of one (1)
year from the date of execution of a Maintenance Agreement, contemplated by
the parties to be executed simultaneously with this Agreement, which will
contain the terms of the Licensor's maintenance obligations. The licensor
agrees it will not charge in excess of those customarily charged by
developers who provide similar services for the maintenance and support
(including modifications, upgrades, and enhancements) of the Licensed
Software.
12.3 ASSIGNMENT. The Licensee may not assign or transfer, by
operation of law or otherwise, any of its rights under this Agreement to any
third party other than the Licensee's Affiliates without the Licensor's prior
written consent except pursuant to a transfer of all or substantially all of
the Licensee's business and assets, whether by merger, sale of assets, sale
of stock or otherwise. Any attempted assignment or transfer in violation of
the foregoing will be void.
12.4 NOTICES. All notices, consents and approvals under this
Agreement must be delivered in writing by courier or by certified or
registered mail, postage prepaid and return receipt requested, to the other
party at the address set forth beneath such party's signature, and will be
effective upon receipt or three(3) business days after being deposited in the
mail as required above, whichever occurs sooner. Either party may change its
address by giving notice of the new address to the other party in accordance
with this provision.
12.5 GOVERNING LAW. The Agreement will be governed by the laws of
the State of Maryland without regard to its conflict of laws principles. Any
action or proceeding arising from or relating to this Agreement must be
brought in Maryland, and each party irrevocably submits to the jurisdiction
and venue of a Maryland forum in any such action or proceeding.
12.6 WAIVERS. All waivers must be in writing. Any waiver or
failure to enforce any provision of this Agreement on one occasion will not
be deemed a waiver of any other provision or of such provision on any other
occasion.
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12.7 SEVERABILITY. If any provision of this Agreement is
determined to be unenforceable, such provision will be changed and interpreted
to accomplish the objectives of such provision to the greatest extent possible
under applicable law and the remaining provisions will continue in full force
and effect.
12.8 CONSTRUCTION. The headings of Sections of this Agreement
are for convenience only and are not to be used in interpreting this
Agreement. As used in this Agreement, the word "including" means "including
but not limited to." Unless the context otherwise requires, whenever used in
this Agreement, the singular shall include the plural, the plural shall
include the singular, and the masculine gender shall include the neuter and
feminine genders, and vice versa. Where the context requires the words "and"
and "or" means "and/or." and the word "any" means "all" where context
requires.
12.9 ENTIRE AGREEMENT. This Agreement constitutes the entire
agreement between the parties regarding the subject hereof and supersedes all
prior or contemporaneous agreements, understandings, and communications,
whether written or oral. This Agreement may be amended only by a written
document signed by both parties.
12.10 ARBITRATION. Any dispute between the Licensor and the
Licensee under or in connection with this Agreement, unless otherwise
provided in this Agreement, shall be submitted up and settled by binding
arbitration under and pursuant to the Maryland Uniform Arbitration Act and
the rules and regulations of the American Arbitration Association, and the
decision in such arbitration shall be final, conclusive and binding upon each
of the parties and judgment may be entered thereon in any court of competent
jurisdiction.
12.11 COUNTERPARTS. This Agreement may be executed in
counterparts, each of which shall be deemed an original and all of which
together shall be one and the same instrument.
(CONTINUED NEXT PAGE)
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first hereinabove written.
LICENSOR
JASPIN INTERACTIVE, INC.
By: /s/ XXXX XXXXXXXX
--------------------------
Name: Xxxx Xxxxxxxx
lts
Address:
00000 Xxxxx Xxxx Xxxxxxx
Xxxxx 000
Xxxxxxxx, XX 00000
Phone: 000-000-0000
LICENSEE
AMERICA'S DOCTOR, INC.
By: /s/ XXXXX XXXXXX
------------------------
lts:
Address:
00000 Xxxxxxxxx Xxxxx, Xxxxx 000
Xxxxxx Xxxxx, XX 00000
Phone: 000-000-0000
Fax: 000-000-0000
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Schedule 3.11: Intellectual Property Rights
The following is a complete list of the Intellectual Property Rights of the
Corporation and except as listed below, there are not Intellectual Property
Rights necessary or required to enable the Corporation to carry on its
respective business as now conducted and as presently proposed to be
conducted.
1. A fully-paid, partially-exclusive, in perpetuity license with Jaspin
Interactive, the terms of which have been agreed to. The written agreement in
draft form is attached to Schedule 3.10.
2. The Corporation has filed for various trademark protections. Attached as
an exhibit is the client status report from the Corporation's trademark
counsel detailing the filings of various names, phrases, etc. for trademark
protection by the Corporation.
3. The Corporation is currently using the registered domain names of
xxx.xxxxxxxxxxxxxx.xxx., xxxxxxxxxxxxxxxxxx.xxx and xxx.xxxxxxxxxxxxxxx.xxx.
4. On or about November 4, 1998, the Corporation received one telephone call
from a representative of Empower Health Corporation, the owners of a
health-related web site affiliated with Dr. C. Xxxxxxx Xxxx to inquire about
the corporate name. The representative stated that Xx. Xxxx has used the term
"America's Doctor" when referring to himself. The Corporation informed this
representative of the trademark filings and the absence of Xx. Xxxx'x "common
law usage" in any of various trademark searches. The Corporation has not been
contacted again from this or any other individual affiliated with Xx. Xxxx
regarding this matter. There was no reference to "America's Doctor" at that
time on the Empower Health Corporation web site. Subsequent to that
conversation, the Corporation's outside counsel hired an investigator to
investigate the claims of Xx. Xxxx and Xx. Xxxx Xxxxx, respectively (see
below).
5. Attached hereto is an investigative report dated November 20, 1998,
written at the request of the Corporation upon learning of the alleged use of
"America's Doctor" by Xx. Xxxx and the appearance of "America's Doctor" on
Xx. Xxxxx'x web site in connection with the sale of eyeglasses and regarding
any potential infringement of intellectual property rights by use of the name
"America's Doctor."
