PRODUCT LICENSE AGREEMENT AND ENGINEERING SERVICES AGREEMENT
Exhibit
10.1
1. Parties: This
Agreement is between Sequiam Biometrics, Inc., a Florida corporation with its
principal place of business at 000 Xxxxxxx Xxxx, Xxxxxxx, XX 00000 ("Sequiam")
and Tacoma Technology Inc., A Taiwanese corporation with its principal place
of
business at 104 3F-7, Xx.000 Xxxxx-Xx Xxxx Xxxx, Xxx. 0, Xxxxxx, Xxxxxx, X.X.X.
(“Tacoma").
2. Term: This
Agreement shall take effect November 1, 2007 and remain in effect through
October 31, 2008. At the sole option of Sequiam this Agreement may be extended
under the same terms and conditions for additional 1-year periods upon 30 days
written notice. This Agreement may be further extended or modified upon mutual
agreement between the parties.
3. Agreements
A. License
Agreement: Sequiam hereby agrees to license from Tacoma exclusive
rights in all Tacoma Intellectual Properties including all patents and
trademarks (the “IP”), which Tacoma either owns or controls. This license shall
be an exclusive world-wide license. A list of current products to which Sequiam
currently has the rights under the terms of this Agreement is attached as
"Exhibit A." Additional works owned or controlled by Tacoma shall be licensed
to
Sequiam under the terms of this master license Agreement by executing individual
"Intellectual Property License Orders" ("IP Orders") in the form of "Exhibit
B."
Specific IP Orders shall be signed and dated by the licensor of the intellectual
property (Tacoma) and by the licensee (Sequiam) in order to be effective. The
term of each IP Order shall be for the remainder of the term of this Agreement
unless otherwise specified in writing.
B. Services
Agreement: Tacoma hereby agrees to provide software programming
and engineering services to Sequiam. Tacoma agrees to provide
continuous product support to Sequiam on a monthly basis for all existing
products and all derivatives and variations thereof. In addition, Tacoma agrees
to provide continuous product development support to Sequiam on a monthly basis
for new products to the extent that Tacoma’s existing staff and resources are
available on a full time basis. To the extent that outside services
are necessary to supplement Tacoma services in order to support new product
development requirements, Sequiam and Tacoma will agree, on a project-by-project
basis, to outsource such services as needed. Upon approval, Sequiam
will reimburse Tacoma or pay the service provider directly.
4. Earned
Fees and Royalties: Sequiam shall pay to Tacoma, a fixed fee of
$7,500.00 per month and royalty of $0.50 per unit of product manufactured and
sold by Sequiam that includes the use of the Tacoma Matching Algorithm and
related software. No royalty shall be payable on copies furnished for review
and
testing, returned products, destroyed products, products given away free for
publicity, promotional purposes, or to introduce additional sales. Royalties
shall be paid quarterly on the 15th day of
the month
following each calendar quarter.
5. Marketing
and Promotion: Sequiam shall have the right to promote and
advertise Products as it deems appropriate.
6. Tacoma's
Warranty: Tacoma represents and warrants to Sequiam that the work
is original and that Tacoma is the sole author and proprietor thereof, and
has
full power to enter into this Agreement. Tacoma agrees to indemnify and hold
harmless Sequiam against any damage or judgment, including court costs and
attorneys' fees, which may be sustained or recovered against Sequiam by reason
of the sale of any of the Products subject to this Agreement or arising from
anything contained therein. Tacoma also agrees to reimburse Sequiam for all
expenses, including court costs, attorneys' fees, and amounts paid in
settlement, sustained by Sequiam in resisting any claim, demand, suit, action
or
proceeding asserted or instituted against Sequiam as a result of the sale of
any
Product or by reason of anything contained therein.
7. Rights
to Use Trademarks: Tacoma hereby consent to the use of Tacoma's
name, identity, trademarks and trade symbols, for the purposes of fulfilling
this Agreement and in connection with the promotion, advertising, distribution,
financing, marketing and production of the Products or derivatives therefrom,
and for general organizational promotional purposes.
8.
Examination of Books: Sequiam shall make available to Tacoma,
within 30 days written notice, at its headquarters, the financial books related
to payment of royalties hereunder.
9. Derivative
Work: Sequiam reserves the exclusive right to use derivations of
any Products licensed herein. The same terms and conditions as set forth herein
shall apply to each such Products. Sequiam shall have exclusive rights to create
derivative Products. Sequiam shall have sole ownership for any such derivative
works created by Sequiam. Tacoma acknowledges that Sequiam is in the biometric
and identity management business and will continue to market products similar
to
those licensed herein.
10. Promotional
Materials: Sequiam shall own any and all promotional materials
created by Sequiam to sell the Products including brand names, packaging design,
and marketing materials. Upon termination of the Agreement, all rights of
ownership of said promotional materials shall remain with Sequiam. All IP owned
by Tacoma included in the Products shall remain the property of
Tacoma.
11. Infringement
of Patents: If during the existence of this Agreement the patents
shall be infringed or a claim for unfair competition shall arise from the
unauthorized use of the Products or any part thereof, and if the parties proceed
jointly, the expenses and recoveries, if any, shall be shares equally, and
if
they do not proceed jointly, either party shall have the right to prosecute
such
action, and such party shall bear the expenses thereof, and any recoveries
shall
belong to such party. If such party shall not hold the record title of the
Patents, the other party hereby consents that the action be brought in its
or
his name. Sequiam shall not be liable to Tacoma for failure to take such legal
steps.
12. Disputes: Any
dispute between the parties arising out of this Agreement which cannot be
amicably settled shall be referred to arbitration upon written notice by either
party to the other. The arbitration shall be governed by the laws of the State
of Florida. Said arbitration is to be held in Orlando, Florida. Any award
rendered in arbitration shall be binding and conclusive upon the parties and
shall not be subject to appeals or retrying by the court.
13.
Attorney Fees: In the event this Agreement is placed in the
hands of an attorney due to a default in the payment or performance of any
of
its terms, the defaulting party shall pay, immediately upon demand, the other
party's reasonable attorney fees, collection costs, costs of either litigation,
mediation, or arbitration (whichever is appropriate), whether or not a suit
or
action is filed, and any other fees or expenses reasonably incurred by the
none-defaulting party.
14.
Jurisdiction: This Agreement shall be governed by the laws of
Florida.
15.
Final Agreement: This Agreement is the entire, final and
complete agreement of the parties and supersedes all written and oral agreements
heretofore made or existing by and between the parties or their
representatives.
IN
WITNESS WHEREOF the parties hereto have executed and duly witnessed this
Agreement as of the day and year written below.
TACOMA
TECHOLOGIES, INC.
By:
__________________________
Xxxxxx
Xxx, President
Dated:
SEQUIAM
BIOMETRICS, INC.
By:
__________________________
Xxxx
X.
Xxxxxxxxxxx, Executive Vice President and CFO
Dated:
EXHIBIT
A
A
list of
current products to which Tacoma currently owns or has the rights to and is
licensing to Sequiam:
CanSecu3.24
Source Code
CanSecu4U:
Version 1, AES3500 Source Code
CanSecu4u:
Mitusmi A1-2, A2 Sensor APPLICATIONS
CMOS
I
(Patented): Optical USB/Optical DSP Finger Print Sensor
CMOS
II
(Patented): Optical USB Finger Print Sensor
Biometric
Algorithm: Trial Matching Method Finger Print Algorithm
Software
Developer Kit: Windows, Active X, OCX, WinCE Mobile 5.0 Source
Codes
EXHIBIT
B
LICENSE
ORDER
EFFECTIVE
DATE:
EXECUTION
DATE:
LICENSOR:
LICENSEE:
ENDING
DATE:
PRODUCTS:
PUBLICATIONS,
VIDEO & AUDIO TAPES:
TACOMA
TECNOLOGIES, INC.
By:
----------------------------
Name:
Title:
SEQUIAM
BIOMETICS, INC.
By:
----------------------------
Name:
Title:
