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Exhibit 10.1
LICENSE AGREEMENT
This Agreement is effective as of the 25th day of October,
1996 by and between Collaborative Holdings, Inc., ("Collaborative"), an Ohio
Corporation, and Xxxxxx Information, Inc. ("Xxxxxx"), an Indiana Corporation.
WHEREAS, Xxxxxx has developed and is the owner of copyrights relating
to a Database which is described in Schedule A ("Database A"), attached hereto;
WHEREAS, Xxxxxx has collected and is in the possession of the data and
confidential information in Database A that relates to the health conditions of
a group of residents in Louisville, Kentucky and a group of residents in
Indianapolis, Indiana (hereinafter defined in Section 1 of this Agreement as the
"Proprietary Information");
WHEREAS, Xxxxxx has developed and is the owner of copyrights relating
to a Database which is described in Schedule B ("Database B"), attached hereto;
WHEREAS, Xxxxxx has collected and is in the possession of the data and
confidential information in Database B that relates to Xxxxxx'x clients
(hereinafter defined in Section 1 of this Agreement as the "Client List");
WHEREAS, Xxxxxx has the exclusive right to license the Proprietary
Information, the Client List, Database A, and Database B;
WHEREAS, Collaborative desires an exclusive license to use the
Proprietary Information, the Client List, Database A, and Database B in
connection with its business of providing contract research clinical trials for
pharmaceuticals, medical devices, food products and other products which undergo
clinical trials prior to receiving certain regulatory approvals from the Food
and Drug Administration and other Governmental Authorities (the "Business");
WHEREAS, Xxxxxx wishes to retain a license to use the Proprietary
Information, the Client List, Database A, and Database B in connection with
businesses that are different from and do not compete with the Business; and
WHEREAS, Xxxxxx and Collaborative are parties to an asset purchase
agreement dated as of October 16, 1996 (the "Asset Purchase Agreement") which
transfers to Collaborative substantially all Xxxxxx'x assets that are primarily
related to or used in the operation of the Business, but which does not transfer
or assign the Proprietary Information, the Client List Database A, or Database
B;
NOW, THEREFORE, in consideration of the mutual covenants set forth
herein, and other good and valuable consideration set forth in the Asset
Purchase Agreement, the receipt and sufficiency of which is hereby acknowledged,
the parties hereto mutually agree as follows:
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1. DEFINITIONS.
(a) "Client List" shall mean and include any and all data and other
information of any type and in any form which relates to Xxxxxx'x
clients, including, but not limited to, the written, graphic, or
machine-readable data and information which is in Xxxxxx'x possession
as of the date of this Agreement and/or which has been entered into
Database B, except information or data which:
i) is part of the written public knowledge as of the date of
this Agreement;
ii) becomes available in writing to the general public other
than as a result of any action or inaction by either party hereto which
violates any provision of this Agreement;
iii) is received by any party hereto in writing from a third
party which is not under an obligation of secrecy and did not derive
the information, directly or indirectly, from either party to this
Agreement in violation of the terms hereof; or
iv) is developed independently by Collaborative before or
after the date of this Agreement.
(b) "Derivative Work" shall mean a work which is based upon the
pre-existing Databases such as a revision, modification, translation,
abridgment, condensation, expansion, collection, compilation or any
other form which, if prepared without authorization by the owner of the
pre-existing works, would constitute a copyright infringement, and for
which copyright registrations may be obtained, maintained and enforced.
(c) "Proprietary Information" shall mean and include any and all data
and other information of any type and in any form which relates to
Database A, including but not limited to the written, graphic, or
machine-readable data and information which has been entered into the
fields of Database A as of the date of this Agreement, except
information or data which:
i) is part of the written public knowledge as of the date of
this Agreement;
ii) becomes available in writing to the general public other
than as a result of any action or inaction by either party hereto which
violates any provision of this Agreement;
iii) is received by any party hereto in writing from a third
party which is not under an obligation of secrecy and did not derive
the information, directly or indirectly, from either party to this
Agreement in violation of the terms hereof; or
iv) is developed independently by Collaborative before or
after the date of this Agreement.
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2. LICENSE.
(a) Xxxxxx hereby grants, and Collaborative hereby accepts, a
perpetual, exclusive, paid-up, world-wide license to use the Proprietary
Information, the Client List, Database A, and Database B (hereinafter referred
to collectively as "the Licensed Materials") in connection with its development
and operation of the Business. Without limiting the generality of the foregoing,
Collaborative's right to use the Licensed Materials shall include the right to
copy, reproduce and update the Proprietary Information and the Client List and
the right to copy, modify, and make Derivative Works of the Databases.
(b) Xxxxxx shall retain the right to use the Licensed Materials solely
in connection with the development and operation of any business which does not
involve providing contract research clinical trials for pharmaceuticals, medical
devices, food products and other products which undergo clinical trials, and
which does not otherwise compete with the Business.
3. DELIVERY OF THE LICENSED MATERIALS.
(a) Upon execution of this Agreement, Xxxxxx shall deliver to
Collaborative's newly-acquired Indianapolis and Louisville facilities all
Proprietary Information which Xxxxxx may have in documentary form, including two
complete copies of Database A, together with two complete copies of Database X.
Xxxxxx shall bear all freight, shipping and handling costs for delivery of the
Licensed Materials and all risk of loss, including any insurance costs.
(b) As previously provided, Collaborative shall have the right, as part
of the license granted herein, to make as many additional copies of the Licensed
Materials as it, in its sole discretion, determines are needed to operate the
Business.
4. MAINTENANCE AND UPDATES.
(a) Collaborative acknowledges that, pursuant to this Agreement, Xxxxxx
is not required to supply Collaborative with updates of the Licensed Materials
or to provide to Collaborative any improvements, modifications or alternative
versions or enhancements of the Licensed Materials which Xxxxxx develops
subsequent to the date of this Agreement.
(b) Collaborative shall have the right, in its own discretion, to
independently update the Proprietary Information and the Client List for its own
purposes and use, through the services of its own employees or of independent
contractors. Collaborative shall be the owner of any such updates and is not
required to supply such updates to Xxxxxx.
(c) Collaborative shall have the right to improve and prepare
Derivative Works of Database A and of Database B. Collaborative shall be the
owner of any such improvements and Derivative Works and is not required to
supply such improvements or Derivative Works to Xxxxxx.
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5. CONFIDENTIALITY.
(a) Except as necessary to develop, conduct, and operate the Business,
Collaborative shall keep the Proprietary Information secret and shall not
disclose the Proprietary Information to any third party without the prior
written consent of Xxxxxx. The above notwithstanding, Collaborative shall have
the right, with exercise of discretion and insofar as practical, to make
disclosures on a confidential basis of such portions of the Proprietary
Information to its Affiliates, as such term is defined in the Asset Purchase
Agreement, and to representatives of contractors or government agencies where,
in Collaborative's judgment, such disclosure is essential to conducting and
operating the Business.
(b) Xxxxxx shall keep all the Proprietary Information secret and shall
not disclose any of the Proprietary Information to any third party without the
prior written consent of Collaborative; provided, however, that nothing herein
shall be construed to prohibit Xxxxxx from disclosing the Proprietary
Information to any purchaser of substantially all of Xxxxxx'x assets so long as
such purchaser assumes Xxxxxx'x obligations hereunder, including, without
limitation, this Section 5 and that nothing herein shall be construed to
prohibit Xxxxxx from using a statistical representation of the Proprietary
Information as normative data in Xxxxxx'x operation of any business which does
not involve providing contract research clinical trials for pharmaceuticals,
medical devices, food products and other products which undergo clinical trials,
and which does not otherwise compete with the business.
(c) Neither party will use the Proprietary Information for purposes
other than specified in this Agreement.
(d) Both parties shall keep the Client List secret and neither party
shall disclose any of the information contained in the Client List to any third
party without the prior written consent of the other party; provided, however,
that nothing herein shall be construed to prohibit Xxxxxx from disclosing the
Client List to any purchaser of substantially all of Xxxxxx'x assets so long as
such purchaser assumes Xxxxxx'x obligations hereunder, including, with
limitation, with respect to this Section 5, and further provided that nothing
herein shall be construed to prohibit Collaborative from disclosing the Client
List to any Affiliate as such term is defined in the Asset Purchase Agreement.
(e) In protecting the secrecy of the Proprietary Information and Client
List, each party shall exercise the same degree of care that it uses to protect
its own confidential information.
6. TRANSFERABILITY OF THE LICENSED MATERIALS.
Xxxxxx shall not license, sell, or otherwise transfer the Proprietary
Information, the Client List, Database A, or Database B to any third party
without the prior written consent of Collaborative; provided, however, nothing
herein shall be construed to prohibit Xxxxxx from licensing, selling or
otherwise transferring the Proprietary Information, the Client List, Database A,
and Database B to any purchaser of substantially all of Xxxxxx'x assets so long
as
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such purchaser assumes Xxxxxx'x obligations hereunder, including, without
limitation, Section 5 hereof.
7. REPRESENTATIONS AND WARRANTIES.
Xxxxxx represents and warrants to Collaborative as follows:
i) Xxxxxx is a corporation duly organized, validly
existing and in good standing under the laws of the State of
Indiana.
ii) Xxxxxx is the sole owner of the Client List,
Database A, and Database B and has full and exclusive right to
license such property as well as the Proprietary Information
and that no other persons, entities or governmental agencies
whatsoever, have any claim, right, or title to the Proprietary
Information, the Client List, Database A, or Database B.
iii) There is no claim, legal action, suit,
arbitration, governmental investigation or other legal
administrative proceeding, nor any decree or judgment in
progress, pending or in effect or, to the knowledge or Xxxxxx,
threatened against or relating to the Proprietary Information,
the Client List, Database A , Database B, or the transactions
contemplated by this Agreement.
iv) Xxxxxx has not otherwise granted, sold or
licensed any person, firm or corporation any right license or
privileges relating to the Propriety Information, the Client
List, Database A, or Database B. Nor has Xxxxxx disclosed the
Proprietary Information, the Client List, Database A or
Database B to any third party without having a written
agreement with such third party concerning the confidentiality
of such information.
v) No representation or warranty by Xxxxxx contained
in this Agreement knowingly contains any untrue statement of a
material fact or knowingly omits to state any material fact
required to make the statements herein contained not
misleading.
vi) Xxxxxx is fully aware of Business's (as defined
in the Asset Purchase Agreement) business requirements and
intended uses for the Proprietary Information, the Client
List, Database A, and Database B and that the Proprietary
Information, Client List, Database A and Database B shall
satisfy such requirements and is fit for such intended uses.
8. NO OBLIGATION TO XXX OR DEFEND.
The parties agree that Collaborative is not under any obligation to
either xxx infringers of the copyrights to Database A or Database B or to defend
Collaborative against infringement claims.
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9. INDEMNITY BY XXXXXX.
Xxxxxx shall indemnify and hold Collaborative harmless against all
costs, claims, expenses, injuries, losses, damages and liabilities, including
reasonable attorneys fees, arising from any breach by Xxxxxx of the
representations and warranties contained in paragraph 7 of this Agreement.
Collaborative shall indemnify and hold Xxxxxx harmless against all costs,
claims, expenses, injuries, losses, damages, liabilities, including reasonable
attorneys fees, arising from or on account of Collaborative's use of the license
materials.
10. TERM.
Subject to the terms and provisions of this Agreement, the term of this
Agreement shall commence on the date of this Agreement and shall continue in
perpetuity.
11. REMEDIES.
It is understood that a breach of this Agreement Xxxxxx could cause
Collaborative to suffer loss which would not be adequately compensated for by
damages and that in addition to claiming damages in respect of any breach
hereof, Collaborative shall be entitled as a matter of right to seek an
injunction and such right shall be cumulative and in addition to any other
remedies which may be available to Collaborative as a result of the breach.
12. ASSIGNABILITY.
Neither party may assign, license, pledge, mortgage, encumber, or
otherwise transfer any or all of its rights and interests in this Agreement
without prior notice to and the permission of the other party, except that
Collaborative may assign the Agreement to any Affiliate, as such term is defined
in the Asset Purchase Agreement.
13. NOTICES.
All notices shall be in writing delivered as follows:
(a) If to Collaborative, to: Collaborative Holdings, Inc.
00000 Xxxxxxx Xxxxxxxxx, Xxxxx 0000
Xxxxxxxxx, Xxxx 00000
Attention: Xx. Xxxxxxx X. Xxxxx, President
Facsimile: (000) 000-0000
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With a copy to: Xxxxxx, Xxxxxx & Xxxxxxxx
0000 XxXxxxxx Xxxxxxxxxx Center
000 Xxxxxxxx Xxxxxx
Xxxxxxxxx, Xxxx 00000
Attention: Xxxxxx X. XxXxx, Esq.
Facsimile: (000) 000-0000
(b) If to Xxxxxx, to: Xxxxxx Information, Inc.
0000 Xxxxxxxx Xxx Xxxxx Xxxxx
Xxxxxxxxxxxx, Xxxxxxx 00000-0000
Attention: Xx. Xxxxxx X. Xxxxxx,
President and Chief Executive Officer
Facsimile: (000) 000-0000
With a copy to: Ice, Xxxxxx, Xxxxxxx & Xxxx
Xxx Xxxxxxxx Xxxxxx
Xxx 00000
Xxxxxxxxxxxx, Xxxxxxx 00000-0000
Attention: Xxxxxx X. Xxxxx, Esq.
Facsimile: (000) 000-0000
or to such other address as may have been designated in a prior notice. Notices
may be sent via registered or certified mail, nationally recognized overnight
courier or facsimile. Notices sent by registered or certified mail, return
receipt requested, shall be deemed to have been given two business days after
the day of registration or the date of certification, as the case may be, and
otherwise notices shall be deemed to have been given when received by the person
to whom the notice is addressed or any other person with apparent authority to
accept notices on behalf of the person to whom the notice is addressed.
14. MISCELLANEOUS.
(a) This Agreement shall be construed, interpreted and applied in
accordance with the laws of the State of Ohio, without regard to any conflict of
laws principles thereof.
(b) The paragraph headings contained in this Agreement are for
reference purposes only and shall not affect the meaning or interpretation of
this Agreement.
(c) Except for the Asset Purchase Agreement and the Exhibits thereto,
this Agreement constitutes the entire Agreement between the parties with respect
to the subject matter hereof and may not be modified or amended except by an
instrument in writing signed by a duly authorized representative of each party.
(d) If any provision of this Agreement is held to be illegal, invalid,
or unenforceable under present or future laws, then such provision shall be
fully severable, this Agreement shall be construed and enforced as if such
illegal, invalid, or unenforceable provision had never comprised a part of this
Agreement, and the remaining provisions of this
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Agreement shall remain in full force and effect, and shall not be affected by
the illegal, invalid, or unenforceable provision or by its severance from this
Agreement.
(e) This Agreement may be executed in any number of counterparts, each
of which shall be an original, but all of which together shall constitute one
and the same instrument.
IN WITNESS HEREOF, Xxxxxx and Collaborative have caused this Agreement
to be duly executed as of the date first written above.
COLLABORATIVE HOLDINGS, INC.
By: /s/ Xxxxxxx X. Xxxxx
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Xxxxxxx X. Xxxxx, President
("Collaborative")
XXXXXX INFORMATION, INC.
By: /s/ Xxxxxx X. Xxxxxx
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Its: President
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("Xxxxxx")
