MASTER LICENSE AGREEMENT
EXHIBIT
10.4
between
PureDepth
Limited
and
PureDepth,
Inc.
Table
of Contents
|
1.
|
Definitions
and Construction
|
1
|
|
2.
|
Grant
of License
|
3
|
|
3.
|
Commencement
of License
|
3
|
|
4.
|
Payment
of License Fee and Revenue Fee
|
3
|
|
5.
|
Covenants
and Acknowledgments of the Licensee
|
4
|
|
6.
|
Intellectual
Property Improvements
|
4
|
|
7.
|
Termination
of License
|
5
|
|
8.
|
Indemnity
|
5
|
|
9.
|
Limitation
of Liability
|
5
|
|
10.
|
Assignment
|
5
|
|
11.
|
Confidentiality
|
6
|
|
12.
|
Further
Assurances
|
6
|
|
13.
|
No
Waiver
|
6
|
|
14.
|
Severability
|
6
|
|
15.
|
Entire
agreement
|
6
|
|
16.
|
Jurisdiction
and Governing Law
|
6
|
|
17.
|
Counterparts
|
6
|
|
18.
|
Notices
|
7
|
|
SCHEDULE
1
|
9
|
|
|
License
Fee
|
9
|
|
|
SCHEDULE
2
|
10
|
|
|
Contact
Details for Notices
|
10
|
|
Date: 19 July
2005
Parties
1. PureDepth
Limited (“Licensor”)
2. PureDepth,
Inc. (“Licensee”)
Background
The
Licensor wishes to grant an exclusive license to the Licensee to use the
Intellectual Property on the terms and conditions set out in this
Agreement.
Terms
and Conditions
1.
Definitions
and Construction
1.1
Defined
Terms.
In
this
Agreement, unless the context requires otherwise:
|
“Business”
means the business of the Licensor, including the development, marketing,
licensing, distribution and sale of certain multi-layered screen
technology and all associated products and services including any
software
and hardware used or developed in connection with such
technology.
|
|
“Business
Day”
means any day of the week other than Saturday, Sunday and any statutory
holiday in either Auckland, New Zealand or Santa Clara,
California.
|
|
“Confidential
Information”
means, in respect of any party to this Agreement (the “first party”), any
and all proprietary information owned by or which is in the possession
or
under the control of the other party to this Agreement (the “other party”)
and which is not in the public domain (or otherwise known to the
other
party without any breach of an obligation of confidence owed to the
first
party) including, but not limited to, ideas, records, price lists,
technical and marketing data, know-how, trade secrets, strategies,
designs
or policies of or relating to the first party and which have been
or may
be disclosed to the other party.
|
|
“Effective
Date”
mean 20 July 2005.
|
|
“Intellectual
Property”
means any and all intellectual property rights and interests (including
common law rights and interests) owned or held by the Licensor in
New
Zealand and internationally in connection with the Business,
including:
|
| a. |
all
or any formulae, methods, plans, data, drawings, specifications,
characteristics, equipment designs, inventions, discoveries, improvements,
know-how, experience, trade secrets, Confidential Information or
other
information (of a confidential nature or otherwise) used in, or developed
for and/or in connection with the Business by past and present employees
or contractors of the Licensor;
|
| b. |
trade
marks, designs, patents and service marks (in each case, whether
registered or unregistered), applications for any of the foregoing
and the
rights to apply for them anywhere in the world, copyrights, trade
names
(including the name “PureDepth”),
symbols and logos;
|
| c. |
all
rights and interests of the Licensor under any license
agreements;
|
| d. |
all
rights and interests of the Licensor under any non-disclosure
agreements;
|
| e. |
all
rights and interests of the Licensor under any memoranda of
understanding;
|
| f. |
all
rights and interests of the Licenser in relation to any claims or
legal
proceedings in connection with the registration or protection of
the
Intellectual Property or any part of it which have arisen prior to
the
Effective Date; and
|
| g. |
any
and all other intellectual property developed by the Licenser, or
its
employees or contractors (acting in their capacity as such) in connection
with the Business.
|
“Intellectual
Property Improvements”
has the
meaning given to that term in clause 6.1.
“License”
has the
meaning given to that term in clause 2.1.
|
“License
Fee”
means the fee described in Schedule 1 payable annually by the Licensee
to
the Licenser in arrears in accordance with clause 4.1, as such fee
may be
modified from time to time by written agreement of the Licensee and
the
Licenser, in accordance with clause
4.4.
|
“License
Fee Invoice”
has the
meaning given to that term in clause 4.2.
|
“Penalty”
means, in relation to any cancellation or termination of, or withdrawal
from, the License by the Licensee during the six month period commencing
on the Effective Date, 1.5 times the pro rata portion of the first
annual
installment of the License Fee payable by the Licensee for the period
between the date of such cancellation, termination or withdrawal
and the
first anniversary of the Effective
Date.
|
|
“Purpose”
means arranging the manufacture and distribution in the Territory
of
multi-layered screen technology incorporating the Intellectual Property
and, subject to the approval of the Licensor, granting non-exclusive
sub-licenses to entities in the Territory for the marketing and
distribution by such entities of mufti-layered screen technology
incorporating the Intellectual
Property.
|
|
“Revenue
Fee”
means a fee representing a percentage of the net profits of the Licensee
arising directly from the use, development or other exploitation
of the
intellectual Property, to be negotiated by the Licenser and the Licensee
subsequent to the date of this Agreement and to be payable by the
Licenser
to the Licensee in accordance with clause 4.1
b.
|
|
“Term”
means the period from the Effective Date until the date this agreement
is
terminated in accordance with clause
7.
|
“Territory”
means
the world.
1.2
Construction
In
the
construction of this Agreement, unless the context requires
otherwise:
| a. |
a
reference to a clause is to a clause in this
Agreement;
|
| b. |
a
reference to any document, including this Agreement, includes a reference
to that document as amended or replaced from time to
time;
|
| c. |
a
reference to “including”
or
“includes”
means “including
without limitation”;
|
| d. |
headings
appear as a matter of convenience and do not affect the construction
of
this Agreement;
|
| e. |
a
reference to a prohibition against doing anything includes a reference
to
not permitting, suffering or causing that thing to be
done;
|
| f. |
where
a word or expression is defined in this Agreement, other parts of
speech
and grammatical forms of that word or expression have corresponding
meanings;
|
| g. |
the
singular Includes the plural and vice versa, and words importing
one
gender include the other genders;
|
| h. |
a
reference to a party to this Agreement includes that party’s successors
and permitted assigns;
|
| i. |
a
reference to a person includes a corporation sole and also a body
of
persons, whether corporate or
unincorporated;
|
| j. |
for
the avoidance of doubt, any defined term shall have the same meaning
throughout this Agreement;
|
| k. |
a
reference to an enactment or statutory regulation is a reference
to that
enactment or regulation as amended, or to any enactment or regulation
that
has been substituted for that enactment or regulation;
and
|
| l. |
a
reference to a time or date is to such time or date in Auckland,
New
Zealand.
|
2.
Grant
of License
| 2.1 |
In
consideration for payment by the Licensee to the Licensor of the
License
Pee in accordance with clause 4, and subject to clause 2.3, the Licensor
hereby grants the Licensee an exclusive right to use the Intellectual
Property (and, in accordance with clause 6.2, any Intellectual Property
Improvements) for the Purpose in the Territory for the Term (the
“License”).
|
|
2.2
|
Subject
to termination of the license in accordance with clause 7, the License
will be for a perpetual term.
|
|
2.3
|
The
rights granted to the Licensee under the License are personal to
the
Licensee who shall not be permitted to transfer or assign any such
rights
without the express prior written consent of the Licensor, provided
however, that the Licensee is expressly permitted to grant non-exclusive
sub-licenses to any wholly-owned subsidiary of the Licensee to use
certain
aspects of the Intellectual
Property.
|
3.
Commencement
of License
| 3.1 |
The
License will commence on the Effective
Date.
|
4.
Payment
of License Fee and Revenue Fee
| 4.1 |
In
consideration for the grant of the License by the Licensor and
subject to
the rest of this clause 4, the Licensee will pay to the
Licensor:
|
| a. |
the
License Fee plus GST (if any) annually in arrears on each anniversary
of
the Effective Date or, if any such day is not a Business Day, on
the next
succeeding Business Day; and
|
| b. |
in
any year (the first such year commencing on the Effective Date) in
which
the Licensee makes a net profit arising directly from the use, development
or other exploitation of the Intellectual Property, the Revenue Fee,
which
will represent a percentage of such net profit, such percentage,
the
payment dates for such Revenue Fee and the precise meaning of “net profit”
to be negotiated on an annual basis in good faith between the Licensor
and
the Licensee subsequent to the date of this
Agreement.
|
| 4.2 |
The
Licensor will deliver the Licensee an invoice (the “License Fee Invoice”)
for each annual installment of the License Fee. The Licensor will
deliver
the initial License Fee Invoice for the initial installment of the
License
Fee on the first anniversary of the Effective Date and will deliver
a
License Fee Invoice for each subsequent installment of the License
Fee on
each subsequent anniversary of the Effective Date or, if any such
day is
not a Business Day, on the next succeeding Business
Day.
|
| 4.3 |
The
amount of the License Fee payable by the Licensee to the Licensor
as set
out in any License Fee Invoice shall be subject to pro-rata reduction
if
this Agreement and the License is terminated other than on any anniversary
of the Effective Date (or on the next succeeding Business Day if
any such
day is not a Business Day).
|
| 4.4 |
The
Licensor and the Licensee may review the License Fee at any time
during
the Term and may, by written agreement, modify the amount, and/or
due date
for payment of, the License Fee.
|
5.
Covenants
and Acknowledgments of the Licensee
| 5.1 |
The
licensee:
|
| a. |
undertakes
not to, and will not, at any time challenge or otherwise call into
question the validity of any of the Intellectual Property or the
Intellectual Property improvements;
and
|
| b. |
undertakes
not to, and will not, take any action which may prejudice or harm
the
Intellectual Property or the Intellectual Property Improvements or
the
interests of the Licensor in the Intellectual Property or the Intellectual
Property Improvements.
|
| 5.2 |
The
Licensee will give notice in writing to the Licensor immediately
upon
learning of any infringement or threatened infringement of the
Intellectual Property or the Intellectual Property
Improvements.
|
6.
Intellectual
Properly Improvements
| 6.1 |
The
Licensee acknowledges and agrees that any further developments it
may make
to the Intellectual Property (the “Intellectual Property Improvements”)
during the term of the License will belong solely and exclusively
to the
Licensor, notwithstanding that such Intellectual Property Improvements
(if
any) are likely to be funded by, and/or created on the instructions
of,
the Licensee.
|
| 6.2 |
Any
Intellectual Property Improvements made by the Licensee pursuant
to the
Licensee’s exercise of its rights under the License will be assigned by
the Licensee to the Licensor and, if required by the Licensor, the
Licensee will execute a formal assignment agreement (and any other
documentation necessary to effect such assignment, including powers
of
attorney and deeds of assignment from inventors) and the Licensor
will
have the sole right to apply for any patents and/or to obtain any
copyright protection in respect of any such Intellectual Property
Improvements. Notwithstanding the foregoing, any such Intellectual
Property Improvements shall, upon their creation, automatically form
park
of the Intellectual Property licensed to the Licensee pursuant to
the
License granted in clause 2.1.
|
| 6.3 |
For
the avoidance of doubt, clause 6.2 constitutes a written assignment
by the
Licensee to the Licensor of the Licensee’s future copyright in any
copyright works created during the term of the
License.
|
7.
Termination
of License
| 7.1 |
The
License may be terminated by either party by written notice if the
other
party commits a material breach of the License and fails to remedy
the
breach within 20 Business Days of receipt of written notice from
the other
party requiring it to do so.
|
| 7.2 |
If:
|
| a. |
the
Licensee has a person appointed in the nature of a receiver, custodian,
trustee or similar official for, or a receiver, custodian, trustee
or
similar official takes possession of, all or substantially all of
its
assets, in proceedings brought by or against the Licensee and such
appointment is not discharged or such possession is not terminated
within
sixty days or if the Licensee consents to or acquiesces in such
appointment or possession; or
|
| b. |
the
Licensee files a petition for relief under the insolvency, bankruptcy
or
similar laws of the United States of America or the State of California,
or an involuntary petition for such relief is filed against the Licensee
under such laws and is not dismissed or terminated within sixty days
after
such involuntary petition is filed; or
|
| c. |
the
Licensee takes any action or causes or induces or supports any action
to
call into question the validity of the Intellectual
Property,
|
then
the
Licensor may by notice to the Licensee immediately terminate the
License.
| 7.3 |
The
Licensor may terminate the License by 20 Business pays’ written notice to
the Licensee for any reason
whatsoever.
|
| 7.4 |
If
the Licensee cancels, terminates or otherwise withdraws from the
License
at any time during the six month period commencing on the Effective
Date
it will, except if otherwise agreed by the parties, pay the Penalty
to the
Licensor within 2 Business Days of such cancellation, termination
or
withdrawal.
|
8.
Indemnity
| 8.1 |
The
Licensee will indemnify and hold harmless the Licensor in respect
of all
liabilities, costs (including costs as between solicitor and client),
losses (including economic), claims or demands arising out of or
flowing
from any material breach or negligent act or omission by the Licensee
of
the License, including any act or omission by any of the Licensee’s
employees, contractors or agents.
|
9.
Limitation
of Liability
| 9.1 |
The
Licensor will not be liable to the Licensee (or any third party)
for any
indirect, special, incidental, consequential or exemplary damages
or
losses suffered by the Licensee (or any third party) arising out
of the
terms of the License and whether attributable to contract, tort (including
negligence), equity or otherwise.
|
10.
Assignment
| 10.1 |
The
Licensee may not assign the License without the prior written consent
of
the Licensor, in accordance with clause
2.3.
|
11.
Confidentiality
| 11.1 |
Neither
party may disclose the provisions of this Agreement or any Confidential
Information of the other party,
except;
|
| a. |
after
obtaining the written consent of the other party;
or
|
| b. |
as
required by applicable law or a stock exchange or any court or government
agency after submitting the information intended to be released for
prior
approval of the other party prior to such release, such prior approval
not
to be unreasonably withheld; or
|
| c. |
as
required in connection with the enforcement of this
Agreement,
|
|
provided
in all cases that each party must use its reasonable endeavors to
ensure
that all permitted disclosures are kept confidential by the party
to whom
the disclosure is made.
|
12.
Further
Assurances
| 12.1 |
The
Licensee and the Licensor will do all things and execute all documents
necessary to obtain the full benefit of this Agreement in accordance
with
its true intent including all things necessary to give effect to
the grant
of the License under this
Agreement.
|
13.
No
Waiver
| 13.1 |
No
delay, failure or forbearance on the part of any party to exercise
any
power or right under this Agreement will operate as a waiver of such
power
or right. A waiver of any breach of any provision of this Agreement
will
not be effective unless that waiver is in writing and is signed by
the
party against whom that waiver is claimed. A waiver of any breach
will not
be, or be deemed to be, a waiver of any other or subsequent
breach.
|
14.
Severability
| 14.1 |
If
a provision of this Agreement, or a right or remedy of any party
under
this Agreement is invalid or unenforceable, the parties agree it
shall be
read down or severed to the extent of the invalidity or
unenforceability.
|
15.
Entire
agreement
| 15.1 |
This
Agreement records all matters relating to the License and shall supersede
all previous arrangements whether oral, written or both relating
to the
License.
|
16.
Jurisdiction
and Governing Law
| 16.1 |
This
Agreement is governed by the laws of New Zealand and is subject to
the
non-exclusive jurisdiction of the courts of New
Zealand.
|
17.
Counterparts
| 17.1 |
This
Agreement may be executed in counterparts, all of which together
will
constitute one and the same instrument. Either party may execute
this
Agreement by signing any such counterpart. Any such counterpart may
be
provided to the other party by facsimile transmission, with the intent
that receipt by a party of a facsimile of any executed copy will
be as
binding and effective as receipt of the
original.
|
18.
Notices
| 18.1 |
Any
notice produced under this agreement shall be in writing addressed
to the
other party according to the details designated by such other party
in
writing. Until any other designation is given, the contact details
of each
party are as set out in Schedule 2.
|
| 18.2 |
Delivery
may be effected by hand, fastpost or airmail (with the postage prepaid),
facsimile or email.
|
| 18.3 |
Any
notice given under this Agreement shall be deemed to have been
received;
|
| a. |
at
the time of delivery, if delivered by
hand;
|
| b. |
on
the fifth Business Day after the date of mailing, if sent by fastpost
or
airmail with the postage prepaid;
|
| c. |
on
the day on which the transmission is sent, if sent by facsimile,
provided
that in any dispute between any of the parties over the fact of
transmission, production by the sender of a confirmation of clear
transmission shall be conclusive evidence of transmission and shall
bind
the parties accordingly; and
|
| d. |
in
the case of an email, upon the earlier
of,
|
| i. |
receipt
by the sending party of confirmation of successful delivery;
or
|
| ii. |
2
Business Days after despatch, provided that the sending party does
not
receive any indication of failure or delay of delivery within 2 Business
Days after despatch.
|
| 18.4 |
For
the purposes of this clause 18, “despatch”
occurs when the relevant email first leaves the sending party’s network
for delivery to the receiving party’s
network.
|
| Signed by PureDepth Limited: | |||
|
Director’s signature |
|||
|
Director’s full name |
|||
|
|
|||
| Signed by PureDepth, Inc.: | |||
|
By: Xxxx Angelopoules |
SCHEDULE
1
LICENSE
FEE
$100,000
per annum.
SCHEDULE
2
Contact
Details for Notices
1. PureDepth
Limited
Address: Xxxx
X,
Xxxxxx Xxxxx 00
Xxxxxx
Xxxx
Panmure
X
X Xxx
00 000
Xxxxxxx
Xxxxxxxx
Telephone:
(00)
000
0000
Facsimile:
(00)
000
0000
Attention: Xxxxxxx
Xxxxxx
Email: xxxxxxx.xxxxxx@xxxxxxxxx.xxx
2. PureDepth,
Inc.
Address: 000
Xxxx
Xxxxxxx Xxxxx
Xxxxxxx
Xxxx
XX
00000
U.S.A.
Telephone:
x0
000
000 0000
Facsimile:
x0
000
000 0000
Attention: Xxxx
Xxxxxxxxxxxx
Email: xxxxxxxxxx@xxxxx.xxx
