EXHIBIT 10.1
PATENT AND TRADEMARK LICENSE AGREEMENT BETWEEN AMOEBA CORPORATION
AND INTERACTIVE PROCESSING, INC. DATED APRIL 17, 1996
PATENT AND TRADEMARK LICENSE
THIS LICENSE is made this __17__ day of __April___, 1996, by and
between AMOEBA CORPORATION, an Irish corporation ("Licensor") and INTERACTIVE
PROCESSING, INC., a Nevada corporation ("Licensee").
RECITALS
A. Licensor is the owner of, and has the right to grant a license with
respect to an invention entitled TV Terminator, described generally as an
interactive universal remote control, including United States Patent Number
5,253,068 and Canadian patent number 2,107,736, and under any divisions,
continuations, and continuations-in-part thereof, and under any patents that may
issue thereon or any reissues or extensions thereof ("Amoeba Patent").
B. Licensor is or will be utilizing the marks TV Terminator, TVT and
The Fazer, and other marks that may be developed, in connection with the Amoeba
Patent ("Trademarks").
C. Licensee is desirous of securing and Licensor is willing to grant, a
non-exclusive license for the development, manufacture, marketing, distribution,
and sale of products based in whole or in part on the Amoeba Patent and all
improvements and developments pertaining thereto ("Licensed Products") to
Licensor, or its affiliates, subject to the terms and conditions contained
herein.
D. Licensee is desirous of securing and Licensor is willing to grant, a
license for use of the Trademarks in connection with the Licensed Products only,
subject to the terms and conditions contained herein.
NOW, THEREFORE, in consideration of the mutual promises and covenants
contained herein, the parties agree as follows:
1. GRANT OF LICENSE.
X. XXXXX. Licensor hereby grants to Licensee an exclusive
license within the territory identified in subparagraph 1.c to develop, make,
have made, use, modify, market, manufacture, distribute, and sell Licensed
Products; and to use the Trademarks and any trade names, trademarks, service
marks and the like utilized by Licensor in the manufacture, sale and
distribution of Licensed Products ("Intellectual Property"). This grant shall
include all rights of Licensor, whether presently existing or hereafter arising,
and whether scheduled in this Agreement or not. Licensee may use the Trademarks
in product labels, tags, containers, displays, publicity, advertising, telephone
listings, electronic data interchange (including on-line services), business
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names, signs or in any other manner whatsoever without the prior written
approval of Licensor.
B. NEW INVENTION PRODUCTS. The parties acknowledge that new or
modified versions of the Licensed Products ("New Invention Products") other than
as defined herein are anticipated. Any New Invention Products shall be the
exclusive property of Licensor, whether or not developed by Licensor and whether
or not Licensor's trade secrets are used to develop the New Invention Products;
provided that such New Invention Products shall be deemed to be within the
license granted hereunder.
C. REGION. The territory within which this exclusive
license is valid is: United States, Canada and Mexico.
2. PAYMENT AND ROYALTY. In consideration for the grant of the
license hereunder Licensee shall:
a. Issue to Licensor Two Million Nine Hundred Thousand
(2,900,000) shares of the common stock of Licensee (the "Shares"), free and
clear of all liens and encumbrances, representing Thirty One and 10/100ths
percent (31.10%) of the issued and outstanding and reserved common stock of
Licensee; and
b. Pay Licensor royalties on gross sales of the Licensed
Products and any New Invention Products during the term of this license. Such
royalties shall be paid quarterly within thirty (30) days after the first days
of January, April, July, and October of each year during the continuance of this
Agreement for the prior three (3) calendar months (except that the first such
report shall cover only the portion of the quarter between the date of this
Agreement and the end of the quarter), and shall be equal to One and 50/100
Dollars ($1.50) per unit of Licensed Products sold; and
c. In the event of a sublicense granted in accordance with the
terms of this Agreement Licensor shall be paid a royalty of One and 50/100
Dollars ($1.50) per unit of Licensed Products sold by or through such
sublicensee (or other arrangement), unless agreed otherwise by Licensor in
writing in connection with the sublicense.
3. TITLE; WARRANTY. This Agreement shall not act to transfer title or
ownership of the Amoeba Patent, Trademarks or Intellectual Property. Licensor
warrants it has good title to the Amoeba Patent, Trademarks and Intellectual
Property, no knowledge of conflicting claims to the Amoeba Patent, Trademarks
and Intellectual Property and that the Amoeba Patent, Trademarks and
Intellectual Property do not infringe the rights of any other person.
4. RECORDS. Licensee shall keep full and accurate records and books of
account showing the manufacture, inventory and sale quantities and the selling
prices of the Licensed Products. Any
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accountant authorized in writing by Licensor shall be given access to such
records and books at all reasonable times. Any inspection or audit of the
records by Licensor or its agent shall be at the expense of Licensor unless such
shall disclose a discrepancy of two percent (2%) or more. Quarterly, within
thirty (30) days after the first days of January, April, July, and October of
each year during the continuance of this Agreement, Licensee shall render
written reports to Licensor stating in each such report the quantities and net
selling prices of all Licensed Products sold and manufactured by Licensee during
the preceding three (3) calendar months, except that the first such report shall
cover only the portion of the quarter between the date of this Agreement and the
end of the quarter. Each such report shall be accompanied by remittance in full
covering the royalties shown thereby to be due Licensor. Licensed Products shall
be considered sold when billed out; if Licensed Products are not billed out,
they shall be considered sold when delivered, shipped or when paid for, in part
or full, whichever occurs first. Royalties paid on Licensed Products that are
returned by customers may be credited against future royalty payments, provided
royalties are paid on any such returned Licensed Products that are later sold.
No royalties need be paid on Licensed Products furnished to customers without
charge to replace returned Licensed Products on which royalties had previously
been paid, provided no credit is taken against royalty payments for such
returned Licensed Products. Licensed Products shall not be given free to any
third party without Licensor's written permission or used internally by
Licensee, without commission being paid.
5. REPRESENTATIONS AND WARRANTIES OF LICENSEE. Licensee represents and
warrants to Licensor as of the date hereof, and as of the date of consummation
of each and every element of this Agreement, as follows:
a. ORGANIZATION AND STANDING: POWER AND AUTHORITY. Licensee is
a corporation duly organized, validly existing and in good standing under the
laws of the State of Nevada and has the full corporate power and corporate
authority to carry on its business, as it is now being conducted, and to execute
and deliver this Agreement and to consummate the transactions contemplated
hereby and thereby. Licensee is qualified as a foreign corporation in all
jurisdictions in which the failure so to qualify would have a material adverse
effect on Licensee. Licensee has no subsidiaries or equity or other interest in
any entity.
b. CAPITALIZATION. The authorized capital of Licensee consists
of 25,000,000 shares of Common Stock, par value $.001 per share, of which
3,124,000 shares have been validly issued and are outstanding, fully paid and
nonassessable on the date hereof. Licensee has reserved 2,900,000 shares of
capital stock for issuance in connection with the acquisition of product
licenses. There are no other reserved shares and no outstanding options,
restricted stock awards, warrants, calls, commitments or rights of any character
to purchase or otherwise to acquire from Licensee
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shares of capital stock of any class, no outstanding securities of Licensee that
are convertible into shares of capital stock of Licensee of any class, and no
options, warrants or rights to purchase from the Company any of such convertible
securities.
c. CORPORATE APPROVAL. Licensee has the necessary corporate
power and authority to enter into this Agreement and to carry out its
obligations hereunder and thereunder. The execution and delivery of this
Agreement by Licensee, the performance by Licensee of its obligations hereunder
and thereunder, and the consummation by Licensee of the transactions
contemplated hereby and thereby, have been duly authorized by the Board of
Directors of Licensee, which authorization has not been modified and is in full
force and effect, and no other corporate proceeding on the part of Licensee is
necessary for the execution and delivery of this Agreement by Licensee and the
performance by Licensee of its obligations hereunder and the consummation by
Licensee of the transactions contemplated hereby, does not violate any provision
of the Articles of Incorporation or the By-Laws of Licensee.
d. GOVERNMENTAL FILINGS AND AUTHORIZATIONS. No filing,
authorization or approval, governmental or otherwise, is necessary to enable
Licensee to enter into, and to perform each of its obligations under, this
Agreement except for such filings as may be required to comply with federal and
state securities laws which filings, if any, have been made prior to the date
hereof.
e. LICENSEE COMMON STOCK - VALID ISSUANCE. The shares of the
Licensee's common stock to be issued to Licensor hereunder will be duly
authorized, validly issued, fully paid and nonassessable and will be issued in
compliance with the Act and any appropriate state securities laws.
f. BINDING OBLIGATION. This Agreement has been duly and
validly executed and delivered by Licensee. This Agreement and each document and
instrument to be executed by Licensee pursuant hereto constitutes a legal, valid
and binding obligation of Licensee, enforceable in accordance with its terms,
except to the extent that its enforceability may be subject to limitations
imposed by general principles of equity (regardless of whether such
enforceability is considered in a proceeding at law or in equity) and to the
effect of applicable bankruptcy, reorganization, insolvency, moratorium and
similar laws of general application relating to or affecting creditors' rights,
including, without limitation, the effect of statutory or other laws regarding
fraudulent conveyances and preferential transfers.
g. CONSENTS. Licensee is not subject to any law, ordinance,
regulation, rule, order, judgment, injunction, decree, charter or bylaw,
contract, commitment, lease, agreement, instrument or other restriction that
would prevent the consummation of this Agreement or any of the transactions
contemplated hereby and thereby without the consent of any third party, that
would
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require the consent of any third party to the consummation of this Agreement or
of the transactions contemplated hereby or thereby or, to the knowledge of
Licensee, that would result in any penalty, forfeiture or termination which
would be materially adverse to Licensee as a result of such consummation.
h. OBLIGATIONS: ABSENCE OF VIOLATION. Neither the execution
and delivery of this Agreement nor the consummation of the transactions
contemplated hereby and thereby constitutes a violation or default under, or
conflicts with, any term or provision of the Articles of Incorporation or Bylaws
of Licensee, or any material agreement, including, without limitation, any
material contract, license, commitment, lease, instrument, arrangement or
understanding to which Licensee is a party or to which Licensee or any of its
property is subject, or by which Licensee or any of its property is bound, where
such encumbrance would be materially adverse to the Licensor.
i. DISCLOSURE. No representation or warranty by Licensee,
contains or will contain any untrue statement of a material fact or omits or
will omit to state any material fact necessary, in order to make the statements
contained therein, in light of the circumstances under which they were made, not
misleading.
j. 504 OFFERING. Licensee sold 3,124,000 shares of its common
stock at $.05 per share in an offering pursuant to an exemption from
registration provided by Rule 504 of Regulation D promulgated under the
Securities Act of 1933, as amended, and applicable state law.
6. REPRESENTATIONS AND WARRANTIES OF LICENSOR. Licensor represents and
warrants to Licensee as of the date hereof, and as of the date of consummation
of each and every element of this Agreement, as follows:
a. ORGANIZATION AND STANDING: POWER AND AUTHORITY.
Licensor is a corporation duly organized, validly existing and in
good standing under the laws of Ireland and has the full corporate
power and corporate authority to carry on its business, as it is
now being conducted, and to execute and deliver this Agreement and
to consummate the transactions contemplated hereby and thereby.
b. CORPORATE APPROVAL. Licensor has the necessary corporate
power and authority to enter into this Agreement and to carry out its
obligations hereunder and thereunder. The execution and delivery of this
Agreement by Licensor, the performance by Licensor of its obligations hereunder
and thereunder, and the consummation by Licensor of the transactions
contemplated hereby and thereby, have been duly authorized by the Licensor,
which authorization has not been modified and is in full force and effect, and
no other corporate proceeding on the part of Licensor is necessary for the
execution and delivery of this Agreement by
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Licensor and the performance by Licensor of its obligations hereunder and the
consummation by Licensor of the transactions contemplated hereby, does not
violate any provision of the constituting articles of Licensor.
c. BINDING OBLIGATION. This Agreement has been duly and
validly executed and delivered by Licensor. This Agreement and each document and
instrument to be executed by Licensor pursuant hereto constitutes a legal, valid
and binding obligation of Licensor, enforceable in accordance with its terms,
except to the extent that its enforceability may be subject to limitations
imposed by general principles of equity (regardless of whether such
enforceability is considered in a proceeding at law or in equity) and to the
effect of applicable bankruptcy, reorganization, insolvency, moratorium and
similar laws of general application relating to or affecting creditors' rights,
including, without limitation, the effect of statutory or other laws regarding
fraudulent conveyances and preferential transfers.
7. NO SUBLICENSES. Licensee shall not have the right to grant
sublicenses hereunder or to transfer any rights to manufacture, modify, develop,
make, have made, market or sell the Amoeba Patent or Licensed Products, or use
the Trademarks or Intellectual Property, without the prior written consent of
Licensor. In the event of any approved sublicense or other transfer to third
parties, Licensee shall take reasonable steps to preclude the further sublicense
or transfer of the Amoeba Patent or Licensed Products.
8. BEST EFFORTS. Licensee agrees to utilize its best efforts to promote
and exploit the Licensed Products, subject to the restrictions of this
Agreement.
9. PROSECUTION OF APPLICATIONS. Licensor shall have full and complete
control over the prosecution of any patent or trademark applications, or any
reissue of such licensed patents and of any disclaimer proceedings in connection
therewith. Licensor shall keep Licensee fully and promptly informed of such
prosecution, and shall give Licensee reasonable opportunity to make suggestions
with regard to such prosecution. Licensor shall be under no obligation to accept
any such suggestion, or to continue such prosecution beyond the point that it
considers desirable. Each party shall bear the cost of its own activities in
connection with the foregoing.
10. MARKING.
a. PRODUCTS. Licensee shall xxxx all Licensed Products sold by
it under this Agreement with the number of any patent that is applicable thereto
and under which it is hereby licensed.
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b. TRADEMARKS. Licensee agrees to xxxx all Trademarks with
either a (R) (for registered trademark) or "TM" (for unregistered trademarks)
and to designate Licensor as owner.
11. INFRINGEMENT. In the event that any infringement of the
Licensed Products comes to the attention of Licensee, Licensee
shall promptly notify Licensor of the infringement. Licensor shall
control the prosecution of any such action.
If the use of the Amoeba Patent, Trademark, or Intellectual Property,
or any information or material furnished hereunder is enjoined, Licensor shall
have the right and option to:
a. procure for Licensee the right to continue such
further use;
b. modify such so they no longer infringe any such
rights;
c. obtain for Licensee similar products or marks which
do not infringe any marks; or
d. terminate the agreement and pay Licensee liquidated damages
of the lesser of actual damages or the amount of royalties actually received by
Licensor for the previous six-month period immediately preceding such injunction
for that specific property.
This paragraph 12 states the entire obligation and liability of Licensor with
respect to infringement or violation of any proprietary interest of another or
claims thereof.
12. INVALIDITY OF PATENT. If any claim of any patent under which this
license is granted shall be declared invalid by a final decision of a court of
competent jurisdiction, whether an appellate court or a lower court whose
decision becomes final by failure to appeal therefrom, or if, as a result of a
final decision, any such claim shall be hereafter awarded to another, Licensee
shall not be relieved of any obligations hereunder. In the event that any claim
of any patent application under which this license is granted shall be finally
rejected, such claim shall thenceforth be treated as if it did not exist, unless
and until such final rejection shall be withdrawn or reversed and such claim
allowed, and this license shall be deemed to be of trade secrets and know how of
Licensor.
13. NON-USE. In the event that Licensee makes no substantial use of the
Amoeba Patent or Licensed Products or of any claims of an issued patent under
which it is hereby licensed for any six (6) month period after the date hereof,
Licensor shall have the right to cancel this license, in part or in full, on
thirty (30) days' written notice to Licensee.
14. ATTORNEYS' FEES. In the event either party shall enforce
this Agreement by legal means, the prevailing party shall be
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entitled to reasonable attorneys' fees, experts' fees and costs whether in
pretrial, trial, arbitration or appeal or in any bankruptcy proceeding. Venue
shall be in King County, Washington. This Agreement shall be construed in
accordance with the laws of the State of Washington.
15. NOTICE. Any written notice necessary or appropriate under this
Agreement shall be deemed to be properly given if delivered or sent by United
States Registered Mail or the Canadian equivalent to the party to be notified at
the address set forth below or at such other address as either party may
hereafter designate in writing. The date of service of any notice so sent by
registered mail shall be deemed to be three (3) days after the mailing thereof.
16. BINDING EFFECT; ASSIGNMENT. This Agreement shall be binding on and
inure to the benefit of the successors of the parties, and Licensee shall not
have any right to assign this Agreement without the consent in writing of
Licensor. Licensor shall be free to assign its interest herein upon written
notice to Licensee.
17. QUALITY CONTROL. Licensee acknowledges that the quality of the
Licensed Products and any advertising or promotional materials used in
connection with the Trademarks and Intellectual Property is of utmost importance
to Licensor and that any use of unauthorized products or materials will damage
Licensor's goodwill and name. Therefore, Licensee agrees to maintain the quality
of the Licensed Products and Trademarks and all advertising and promotional
materials used at a high level. The Licensed Products and Trademarks and
advertising and promotional materials shall be subject to prior written approval
of Licensor. Licensor may withhold approval for any use or proposed use which
may disparage or bring into disrepute Licensor's name in Licensor's sole
discretion. For each and every type of Licensed Product or New Invention Product
and for each material change to a Trademark, Licensee shall provide Licensor a
randomly selected example for inspection before such is marketed and on a
quarterly basis thereafter.
18. WARRANTY. The parties recognize that Licensor is the owner and
developer of the Amoeba Patent, Licensed Products, Trademarks and Intellectual
Property and that nothing herein shall give Licensee any continuing interest in
and to such Amoeba Patent, Licensed Products, New Invention Products, or
Trademarks or any derivatives therefrom. Further, Licensee understands that
Licensor has developed the Amoeba Patent on its own but that Licensor is not in
the business of manufacturing or selling products. Licensee therefore agrees to
hold harmless, defend and indemnify Licensor from any and all damages and claims
arising out of Licensor's, Licensee's or any third party's use of the Amoeba
Patent or Licensed Products. In addition, Licensee shall be responsible to
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meet any requirements of any law or regulating agency in connection therewith,
including warning requirements.
19. CONFIDENTIAL INFORMATION. Licensee shall keep confidential and
otherwise protect from disclosure all information and property obtained from
Licensor in connection with this Agreement and identified as confidential or
proprietary. Licensee agrees, unless otherwise expressly authorized herein or by
Licensor, Licensee shall use such information and property, and the features
thereof, only in the performance and for the purpose of this Agreement. Upon
Licensor's request, and in any event upon the completion, termination or
cancellation of this Agreement, the Licensee shall return all such information
and property to the Licensor or make such other disposition thereof as is
directed by Licensor. In all lower tier subcontracts and purchase contracts
issued by Licensee and involving subcontractor receipt of such information or
property, Licensee shall provide to Licensor the same rights and protection as
contained in this clause. This provision shall survive termination of this
Agreement. Information shall not be confidential or proprietary for the purposes
of this provision, if
a. Known to the receiving party without restriction when
received, or thereafter is developed independently by the receiving party
without reference to proprietary information of the originating party; or
b. Obtained from a source other than the originating party
through no breach of confidence by the receiving party; or
c. In the public domain when received, or thereafter enters
the public domain through no fault of the receiving party; or
d. Disclosed by the originating party to a third party without
restriction; or
e. Required by applicable law or regulation, provided the
receiving party notifies the originating party of the requirement promptly, and
cooperates with the originating party (at the request and expense of the
originating party) in contesting the requirement.
20. DEFAULT. Any payment due from Licensee to Licensor shall bear
interest at the rate of the lesser of 1-1/2% per month or the highest rate
permitted by law. In addition, if Licensee shall be in arrears in the payment of
any such amount, Licensor shall have the right to cancel this Agreement upon
giving Licensee thirty (30) days' written notice with an opportunity to cure. If
Licensee violates or fails to keep or perform any other obligation, term or
condition hereof, or if Licensee shall be adjudged a bankrupt or become
insolvent or makes an assignment for the benefit of creditors, or is placed in
the hands of a receiver or trustee in
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bankruptcy, then Licensor may, at its option, cancel and terminate this
Agreement by giving thirty (30) days' written notice, specifying the default
complained of; provided, however, that if Licensee shall, within such thirty
(30) days, cure the default complained of, then the notice shall cease to be
operative and this License Agreement shall continue in full force and effect as
though such default had not occurred. These remedies are in addition to any and
all remedies available at law or in equity to Licensor.
21. RIGHTS UPON TERMINATION. Upon termination of this Agreement, by
expiration or otherwise, all use of Licensor's Licensed Products, New Invention
Products, Trademarks and Intellectual Property shall immediately cease except
that termination shall not release Licensee from any monetary obligations,
continuing warranties or restrictive covenants herein. Licensee shall have no
future rights to the Licensed Products, New Invention Products, Trademarks,
Intellectual Property or confidential information and Licensee agrees to return
all Intellectual Properties to Licensor. Upon termination, no future
manufacturing shall occur for or on behalf of Licensee. Existing stock shall be
offered at wholesale first to Licensor and if Licensor decides not to purchase
such in ten days, then such may be sold for an additional 60 days at not less
than standard wholesale prices. No extensions will be granted.
The rights of termination herein are absolute, and Licensee
acknowledges it has considered such in making expenditures of money and time in
preparing for the performance of this Agreement and further the possible losses
of or damages on account of the loss of prospective profits or anticipated sales
or on account of expenditures, investments, leases, property improvements, or
commitments in connection with the goodwill or business of Licensee resulting
for the termination hereof.
IN WITNESS WHEREOF, the parties have executed this Agreement on the day
and year first above written.
"LICENSOR" AMOEBA CORPORATION
By/s/Xxxxx Xxxxxx
Its Director
00 Xxxx Xxxxx Xxxxxxx
Xxxxxxx, Xxxxx
XXXXXXX XX0 0XX
"LICENSEE" INTERACTIVE PROCESSING, INC.
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By/s/Xxxxx Xxxxxxxxx
Its President/Director
0000 - 000 Xxxxxxxxx Xx.
Xxxxxxxxx, X.X.
XXXXXX X0X 0X0
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