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Exhibit 10.20
ACIS-VSI LICENSE AGREEMENT
This License Agreement is entered into by and between ACIS, Inc.
("ACIS"), a Texas corporation, 0000 XX Xxxx 000, Xxx. 000, Xxx Xxxxxxx, Xxxxx
00000 and VSI Enterprises, Inc., ("VSI"), a Delaware corporation, and
Videoconferencing Systems, Inc., 0000 Xxxxxx Xxxxxxx Xxxx, Xxxxxxxx, Xxxxxxx
00000, sometimes simply referred to herein as the parties ("Parties").
WITNESSETH
WHEREAS, ACIS and Videoconferencing Systems, Inc., a subsidiary of VSI,
entered into that certain license agreement dated December 21, 1998 (the "Prior
License Agreement"), concerning certain software derived from a computer program
known as the Xxxxxx-event-kernel (TM); and
WHEREAS, the Xxxxxx-event-kernel (TM) is the subject of U.S. Patent
Application No. 08/268,201, entitled "Method for Enforcing a Hierarchical
Invocations Structure in Real Time Asynchronous Software Applications" (the
"Patent Application"); and
WHEREAS, ACIS and VSI desire to replace the Prior Agreement and enter
into this License Agreement ("Agreement"), as herein provided:
NOW, THEREFORE, in consideration of the premises and the mutual
agreements contained herein, and other good and valuable consideration, the
receipt, adequacy and sufficiency of which are hereby acknowledged, the parties
hereto agree as follows:
1. This License Agreement replaces the Prior License
Agreement.
2. Defined Terms
(a) For purposes of this License Agreement, the term "VSI
Licensed Kernel" shall mean that certain implementation of the
Xxxxxx-event-kernel(TM), known as a single stack, polling
kernel, as the same is utilized by VSI as of the date hereof,
together with any modifications or enhancements thereto that
are developed. It shall not include (1) a single stack,
non-polling kernel, or (2) a multiple stack, polling or
non-polling kernel. The VSI Licensed Kernel shall include any
related VSI documentation.
(b) The term "Video Conferencing Field" shall mean any and all
products and systems, the principal purpose of which is
devoted to facilitating video conferencing, through the
transmission of video in a compressed format between and among
remote locations.
(c) the term "ACIS Kernel" shall mean the implementation of
the Xxxxxx-event-kernel(TM) in either (1) a single stack,
non-polling kernel, and/or (2) a multiple stack, polling or
non-polling kernel, together with any modifications or
enhancements thereto that are developed. The ACIS Kernel shall
include any related documentation.
(d) The term "ACIS Server Kernel" shall mean the ACIS Kernel
developed under the Microsoft Windows NT platform, or any
successor platform released through the year 2002.
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(e) The term "ACIS Software" shall mean any implementation of
the Xxxxxx-event-kernel(TM) including the VSI Licensed Kernel,
the ACIS Kernel, and the ACIS Server Kernel. An implementation
shall include, but not be limited to, a preprocessor, a single
stack kernel, a multi-stack kernel, associated utilities,
i.e., any software developed by ACIS, or on behalf of ACIS by
others.
3. Grant of License.
(a) ACIS grants to VSI the perpetual, assignable right and
license to use, copy and distribute the VSI Licensed Kernel,
in either object code or source code form, for applications
and uses that are within the Video Conferencing Field. This
license shall be royalty free for all applications and uses
that are within the Video Conferencing Field.
(b) ACIS grants to VSI the perpetual, assignable right and
license to use, copy and distribute the VSI Licensed Kernel,
in either source code or object code form, for applications
and uses that are outside the Video Conferencing Field. There
shall be a license fee due and payable to ACIS, Inc. for any
and all applications and uses that are outside the Video
Conferencing Field, beginning October 1, 1998.
(c) ACIS grants to VSI a non-assignable right, and license to
use, copy and distribute the ACIS Server Kernel, in either
source code or object code form, for applications which VSI
develops. There shall be a license fee due and payable to
ACIS, Inc. for any and all implementations and uses of the
ACIS Server Kernel.
(d) No license is granted to VSI at this time to use, copy and
distribute the ACIS Kernel for any application or
implementation which does not use the Microsoft Windows NT
platform, or any successor platform to Microsoft Windows NT.
(e) VSI is specifically prohibited from developing, using or
distributing any operating systems using the ACIS Software.
4. License Fees. Subject to section 6 below, ACIS has the absolute,
unilateral right to determine any and all license fees for ACIS Software. ACIS
may increase or decrease any license fee at any time at its sole discretion,
including, without limitation, the amount, frequency, and scope of the fee. ACIS
has no obligation to set a commercially reasonable license fee, either now or in
the future.
5. Best Price. Notwithstanding section 4 above, ACIS agrees that VSI
will be guaranteed a price for the licensed use of any ACIS Software which is as
low as the lowest price offered to any other person or entity. VSI agrees that
if the price for any licensed use of ACIS Software is increased, then VSI's
price shall also be increased, as long as VSI's price remains as low as the
lowest price offered to any other person or entity.
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6. Current License Fees. The Parties agree that it is critical to ACIS
that this License Agreement not be available as a vehicle to exploit the value
of the Kernel without negotiating directly with ACIS. The Parties also agree
that it is critical to VSI to have a set license fee for the applications which
it has and which it plans to develop. If the ACIS Kernel is implemented on the
foundation of the Microsoft Windows NT platform or any successor platform
released through the year 2002, ACIS agrees that its license fees to VSI shall
be fixed as follows below under License Fees. If the Microsoft Windows NT
platform is replaced by a different underlying platform after the year 2002,
ACIS shall determine the appropriate ACIS Server Kernel license fees for such
alternate platform and grant VSI best pricing on said license fees.
LICENSE FEES
VSI Agrees to pay a one-time license fee to ACIS of $20.00 for each installed
copy of each product or application that includes or uses (a) the VSI Licensed
Kernel outside the Video Conferencing Field or (b) the ACIS Server Kernel that
is sold by, or on account of, VSI. [Beginning January 1, 2000, and continuing
January 1 of each year thereafter, the foregoing royalty shall be adjusted by a
percentage equal to the percentage change in the U.S. Consumer Price Index for
the twelve month period ending on November of the preceding year.]
7. Intellectual Property Rights. VSI agrees to release, and hereby
unconditionally releases, now and in the future, any and all claims of right or
ownership in and to ACIS Software. ACIS agrees to release, and hereby
unconditionally releases, any and all claims of right or ownership in and to VSI
patents on the Omega operating system, to VSI patents on VSI's video
conferencing system, and to VSI patents on VSI's new Voyager development. The
parties contemplate that VSI will code one or more parts of the ACIS Software.
VSI agrees that any ACIS Software shall be a "work made for hire." and that ACIS
shall own all the copyright rights in such work. IF AND TO THE EXTENT ANY SUCH
MATERIAL DOES NOT SATISFY THE LEGAL REQUIREMENTS TO CONSTITUTE A WORK MADE FOR
HIRE, VSI HEREBY ASSIGNS ALL ITS COPYRIGHT RIGHTS AND OTHER INTELLECTUAL
PROPERTY RIGHTS IN THE WORK TO ACIS.
8. Modifications or Enhancements. ACIS grants VSI the right to modify,
improve or enhance ACIS Software, and agrees that any change shall not modify
the Grant of License as provided herein.
9. Covenant Against Exceeding Scope of License. VSI is specifically
granted the right to use the ACIS Software pursuant to this license, but VSI
agrees that any use outside the scope of this license is prohibited, without
prior written agreement by ACIS, Inc.
10. Patent Notice. VSI agrees to label all of its products as "Patent
Pending, ACIS, Inc., 1999," until the patent is granted, and thereafter label
all of its products as "Patent No. XXXXX, ACIS, Inc. 1999," where XXXXX
represents the number actually assigned to the patent. In the event that the
required patent notice must have a different form, the Parties agree to modify
the notice appropriately.
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11. Ownership Warranty. ACIS represents and warrants that ACIS owns,
with the exception of VSI's rights under the License Agreement, all of the
property rights in the ACIS Software, and all rights necessary to grant VSI the
license and rights granted herein. ACIS further represents and warrants that the
ACIS Software has not been published under circumstances that have caused the
loss of the U.S. copyright therein. ACIS further represents and warrants that no
claim or action relating to the infringement of any copyright or other
intellectual property right has been made or is pending against ACIS. ACIS
further represents and warrants that the ACIS Software does not infringe any
copyright or other propriety right (including trade secrets) of any third party.
ACIS does not guarantee that the U.S. Patent and Trademark Office will issue a
patent on the Patent Application.
12. Litigation. In the event of litigation to determine the rights of
the parties hereto, the losing party agrees to pay the reasonable attorney's
fees, costs and expenses of the prevailing party.
13. Other documents. Each party agrees, upon the request of the other,
to execute such additional documents as may be reasonable necessary to confirm
the rights of the other party concerning the ACIS Software, or to carry out the
intent of this agreement.
14. Indemnification. VSI does hereby agree to indemnify, hold harmless
from and against any losses, liabilities, costs or expenses (including
attorney's fees) incurred with respect to or arising out of any claim by VSI to
any copyright, trademark, trade secret, or other intellectual property right of
ACIS concerning the ACIS Software.
15. Notices. All notices, requests, demands and other communications
required herein shall be in writing and shall be deemed to have been given when
delivered by hand, or mailed, first class certified mail with prepaid postage or
by overnight receipted courier service to:
ACIS, Inc. to: X.X. Xxxx, Xx., President
ACIS, Inc.
0000 XX Xxxx 000, Xxx. 000
Xxx Xxxxxxx, Xxxxx 00000
VSI Enterprises, Inc. to Xxxxxxx Xxxxxxxx, Chief Executive Officer
VSI Enterprises, Inc.
0000 Xxxxxx Xxxxxxx Xxxx
Xxxxxxxx, Xxxxxxx 00000
or to such other person or address as either Party shall furnish by notice to
ACIS or VSI, respectively, in writing.
16. Governing Law. This License Agreement shall be governed by and
construed in accordance with the laws of the State of Texas, and venue for any
action shall be in Bexar County, Texas.
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17. Severability. If any provisions of this License Agreement is deemed
by a court of competent jurisdiction to be unenforceable or contrary to any
applicable law or regulation, such provision shall be considered deleted and the
remainder of this License Agreement shall continue in full force and effect.
18. Headings. The section headings are for reference purposes only and
shall not affect the meaning or interpretation of this License Agreement.
19. Parties in Interest. This License Agreement shall inure to the
benefit of, and be binding upon, the successors, assigns and personal
representatives of the parties hereto.
20. Entire Agreement. This License Agreement is one of four (4)
documents concurrently executed. The other three are the Strategic Investment
Agreement, the ACIS-VSI Warrant Agreement, and the Security Holders Agreement.
All four documents contain the entire understanding of the parties hereto with
respect to the matters contained herein, and may not be modified or amended
orally, but only through a written instrument signed by the party to be so
bound.
21. Counterparts. This License Agreement may be executed in two or more
counterparts, all of which taken together shall constitute one and the same
instrument.
IN WITNESS WHEREOF, ACIS and VSI execute this License Agreement on this
the 9th day of September, 1998.
ACIS, INC., a Texas Corporation
By: /s/ X.X. Xxxx, Xx.
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X.X. Xxxx, Xx., President
VSI Enterprises, Inc., a Delaware
corporation
By: /s/ Xxxxxxx Xxxxxxxx
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Xxxxxxx Xxxxxxxx
Chief Executive Officer
Videoconferencing Systems, Inc.,
a subsidiary of VSI Enterprises, Inc.
By: /s/ Xxxx Xxxx
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Xxxx Xxxx
President
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