Exhibit 10.3
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LICENSE AGREEMENT
BETWEEN
SYNTHONICS, INCORPORATED
AND
MEDSCAPE, LLC
This LICENSE AGREEMENT is entered into between Synthonics, Incorporated
(hereinafter referred to as "Synthonics, Incorporated"), a California
corporation with principal offices at 31324 Xxx Xxxxxxx, Xxxxx 000, Xxxxxxxx
Xxxxxxx, Xxxxxxxxxx, 00000, and MedScape, LLC (hereinafter referred to as
"MedScape"), a California limited liability company with principal offices at
00000 Xxx Xxxxxxx, Xxxxx 000, Xxxxxxxx Xxxxxxx, XX 00000.
RECITALS
A. On or about September 2, 1996, Synthonics Technologies, Inc., a Utah
corporation (hereinafter referred to as "Synthonics Technologies, Inc.") and
Xxxxxxx X. Xxxxxxx, Xx., DMD, P.C., an Alabama professional corporation
(hereinafter referred to as "Xxxxxxx") entered a written Operating Agreement as
members of MedScape. MedScape came into existence on or about August 13, 1996,
when its Articles of Organization were filed with the California Secretary of
State. Synthonics, Incorporated is the wholly owned subsidiary of Synthonics
Technologies, Inc.
B. Synthonics Technologies, Inc., and Xxxxxxx desire that H&M Associates,
LLC (hereinafter referred to as "H&M Associates"), a California limited
liability company, be added as a member of MedScape. H&M Associates desires to
become a member of MedScape. Therefore, concurrently with the execution of this
License Agreement, Synthonics Technologies, Inc., Xxxxxxx, and Xxxxxxx are
executing a First Amended Operating Agreement (hereinafter referred to as "First
Amended Operating Agreement") pursuant to which H&M Associates is being added as
a member of MedScape.
C. Also concurrently with or prior to the execution of this License
Agreement, Xxxxxxx and H&M Associates have each entered a License Agreement with
MedScape which is virtually identical in form and substance to this License
Agreement except that those separate license agreements provide for the
licensing by H&M Associates and H&M Associates to MedScape of other proprietary
technology which is owned by Xxxxxxx and H&M Associates, respectively.
X. Xxxxxxx, Synthonics Technologies, Inc., and H&M Associates have founded
MedScape to combine their proprietary technologies to create, develop and offer
software products to the medical and dental professions and their support labs.
The software will be modular and include a system for sending, retrieving,
cataloging and storing images. Each module will have an application to solve or
enhance specific diagnostic challenges, improve treatment planning capabilities
and may be used to enhance communication with colleagues and patients.
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E. In accordance with the First Amended Operating Agreement, Synthonics,
Incorporated is required to grant certain exclusive, worldwide license rights to
certain proprietary technology under the terms and conditions of this License
Agreement as the initial contribution by Synthonics Technologies, Inc. to
MedScape.
F. MedScape desires to use that proprietary technology to develop the
software products referenced above.
NOW THEREFORE, in consideration of the foregoing, the mutual covenants and
obligations hereinafter contained, and other good and valuable consideration,
Synthonics, Incorporated and MedScape agree as follows:
TERMS
1.0 DEFINITIONS
1.1 Usage
All words, terms and phrases used in this License Agreement shall have
meanings ascribed to them in standard English language dictionaries. However,
where this License Agreement specifically defines a word, term or phrase, that
definition shall be used in this License Agreement. That definition shall govern
whether the term is used in the singular or plural, and shall apply regardless
of the gender of the object or person to which it is applied. Capitalization
will have no effect on the meaning of the word, term or phrase in question.
1.2 Synthonics, Incorporated
"Synthonics, Incorporated" means the California corporation having that
name with its principal offices at 31324 Xxx Xxxxxxx, Xxxxx 000, Xxxxxxxx
Xxxxxxx, Xxxxxxxxxx 00000, and its successors, any surviving Entity into which
that corporation may be merged, or any Entity resulting from a consolidation of
that corporation with any other Entity. Synthonics, Incorporated is the licensor
in this License Agreement. It is understood that Synthonics, Incorporated is
acting as the wholly owned subsidiary of Synthonics Technologies, Inc., and that
Synthonics, Incorporated is and shall be completely controlled by Synthonics
Technologies, Inc..
1.3 MedScape
"MedScape" means the California limited liability company having that name
with its principal offices at 00000 Xxx Xxxxxxx, Xxxxx 000, Xxxxxxxx Xxxxxxx, XX
00000, and its successors, any surviving Entity into which that limited
liability company may be merged, or any Entity resulting from a consolidation of
that limited liability company with any other Entity. MedScape is the licensee
in this License Agreement.
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1.4 Affiliate
"Affiliate" means, with respect to a party to this License Agreement, any
Entity in which such party, its managers or members, singly or cumulatively, has
a direct or indirect ownership interest exceeding twenty percent (20%), or any
Entity which, directly or indirectly, through one or more intermediaries,
controls, is controlled by, or is under common control with such party. The term
"control" means possession, direct or indirect, of the powers to direct or cause
the direction of the management or policies of a person or Entity; whether
through ownership of equity participation, voting securities, or beneficial
interests; by contract; by agreement; or otherwise.
1.5 Distributor
"Distributor" means any person or Entity engaged by MedScape, or any agent
or representative of MedScape, which distributes any Licensed Product(s) to any
End User, either directly or indirectly through other distributors.
1.6 Effective Date
"Effective Date" means the date upon which this License Agreement is fully
executed.
1.7 End User(s)
"End User" means any individual or Entity licensed to use Licensed
Product(s) for his/her/its own use, in the regular conduct of its own business
and not for licensing to other Entities or individuals.
1.8 Entity
"Entity" means a corporation, a limited liability company, an association,
a joint venture, a partnership, a trust, a business, a government or political
subdivision thereof, including an agency, or any other organization which can
exercise independent legal standing.
1.9 Gross Revenues
"Gross Revenues" means the actual money received, in the ordinary course of
business, as revenues for goods or services less any returns or allowances
granted.
1.10 Improvements
"Improvements" means any alterations, modifications, revisions,
enhancements, betterments, and the like of the software codes or ideas related
directly to the Licensed Technology, made at the request of MedScape during the
term of this License Agreement. Notwithstanding the foregoing, software codes or
ideas that are patentable shall not be considered Improvements of the Licensed
Technology under this License Agreement.
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1.11 Invention
"Invention" means any idea, design, concept, technique, discovery, or
Improvement, whether or not patentable, copyrightable or otherwise protectable
as intellectual property, which is conceived or brought to practice as a result
of work done or acquisition made by MedScape or Synthonics, Incorporated during
the term of this License Agreement.
1.12 Know-How
"Know-How" means information, skills, ingenuity, and other intellectual
property which are not generally known to the public, including without
limitation knowledge, techniques, processes, and Inventions relating to or
developed in connection with the Licensed Technology and owned, developed, or
acquired by and proprietary to Synthonics, Incorporated during the term of this
License Agreement. Information, skills, ingenuity, and other intellectual
property which Synthonics, Incorporated does not have the right, by restriction
in a prior contract, restriction under government law, or otherwise, to disclose
or transfer to MedScape shall be specifically excluded from the definition of
Know-How for purposes of this License Agreement.
1.13 License Agreement
"License Agreement" means the license agreement in which this Subsection
1.13 appears. This License Agreement is between Synthonics, Incorporated, as
licensor, and MedScape, as licensee. Also included in this License Agreement are
all Exhibits attached hereto and all amendments which may be made.
1.14 Licensed Process
"Licensed Process" means any process or method which makes use of or
incorporates all or any part of the Licensed Technology combined directly or
indirectly with all or any part of the technology licensed in the Xxxxxxx
License Agreement and the H&M Associates License Agreement.
1.15 Licensed Product(s)
"Licensed Product(s)" means any product, apparatus, or service the
production, manufacture, sale, lease, use, or practice of which incorporates or
makes use of all or any part of the Licensed Technology combined directly or
indirectly with all or any part of the technology licensed in the Xxxxxxx
License Agreement and the H&M Associates License Agreement. It is understood
that the Licensed Products are products, apparatus, or services which are only
for use in diagnosis, treatment planning, and image management by orthodontists,
dentists, oral surgeons and cosmetic surgeons.
1.16 Licensed Technology
"Licensed Technology" means proprietary technology and intellectual
property owned by Synthonics, Incorporated relating to photogrammetry described
on Exhibit B attached to this License Agreement and incorporated by this
reference.
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1.17 Original Members
"Original Members" means Xxxxxxx, Synthonics Technologies, Inc., and H&M
Associates, the three members of MedScape after the execution of the First
Amended Operating Agreement.
1.18 Xxxxxxx License Agreement
"Xxxxxxx License Agreement" means the license agreement between Xxxxxxx and
MedScape executed prior to or concurrently with this License Agreement.
1.19 H&M Associates License Agreement
"H&M Associates License Agreement" means the license agreement between H&M
Associates and MedScape executed prior to or concurrently with this License
Agreement.
1.20 Confidential Information
"Confidential Information" means all information or material that is
confidential and proprietary to the disclosing party, including, without
limitation, the following types of information or material or other information
or material of a similar nature:
(a) Software (in various stages of development);
(b) Designs;
(c) Drawings;
(d) Specifications;
(e) Models;
(f) Source Code;
(g) Object Code;
(h) Documentation;
(i) Diagrams;
(j) Flow Charts;
(k) Marketing and Development Plans;
(l) Business Plans;
(m) Financial Information;
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(n) Procedures;
(o) Processes; and
(p) Customer and Contact Lists.
All written information and material which are provided by either party to the
other shall be deemed to be Confidential Information if it is prominently marked
"Confidential." Additionally, all verbal information disclosed by a party to the
other party shall be deemed Confidential Information if it is identified as such
in writing within five (5) days of disclosure. Information disclosed by one
party to the other shall cease to be Confidential Information only if the party
or parties to whom such disclosure is made can prove by written, clear, and
convincing evidence that the Confidential Information 0) is now or has
subsequently become generally known or available to or from the general public,
(ii) is known to the party to whom such disclosure is made at the time of
receipt, (iii) is provided by the disclosing party to a third party without
restriction or disclosure, (iv) is subsequently provided to the party to whom
disclosure is made by a third party without restriction on disclosure, or (v) is
independently developed by the party to whom disclosure is made, and the person
or persons developing the same have not had access to the Confidential
Information of the disclosing party.
2.0 LICENSE RIGHTS GRANTED/RESERVED
2.1 Grant of Rights
(a) Subject to the terms and conditions of this License Agreement,
Synthonics, Incorporated hereby grants to MedScape, and MedScape hereby accepts,
worldwide, exclusive license rights to use the Licensed Technology for the
development of Licensed Products and Licensed Processes and the production,
manufacture, marketing, distribution, sale, lease, or other transfers of
Licensed Products and/or Licensed Processes during the term of this License
Agreement.
(b) MedScape shall be given only the object code for the computer programs
included in the Licensed Technology and any Improvements thereon. Synthonics,
Incorporated agrees that it will be reasonably responsive to MedScape's requests
for alterations and Improvements that MedScape wants to have made in the source
code of the computer programs included in the Licensed Technology. In a
reasonably timely manner, Synthonics, Incorporated shall make such alterations
and Improvements, where such can reasonably be made, at a cost to MedScape equal
to Synthonics, Incorporated's actual costs. At all times, Synthonics,
Incorporated shall have title to and full ownership of the Licensed Technology
including, without limitation, all Improvements and all software codes or ideas
which are patentable.
(c) Within thirty (30) days after the execution of this License Agreement,
Synthonics, Incorporated and MedScape shall execute and deliver a Master Source
Code Escrow Agreement (hereinafter referred to as "Escrow Agreement") providing,
among other things, that MedScape would have the right to obtain the source code
from the escrow agent designated in the Escrow Agreement and use it to maintain,
update, and enhance the computer software included as part of the Licensed
Technology in the event that (i) Synthonics, Incorporated materially fails to
perform its obligations pursuant to this License Agreement, or (ii) Synthonics,
Incorporated becomes bankrupt or insolvent.
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(d) This grant will extend to and authorize the production, manufacture,
marketing, distribution, sale, lease or other transfer of Licensed Products
and/or Licensed Processes directly or through an Affiliate, Distributor, or
retail outlet and shall authorize End Users' use of Licensed Products and/or
Licensed Processes transferred by MedScape or MedScape's Affiliates,
Distributors, or retail outlets.
2.2 Royalties
As a royalty, Synthonics, Incorporated will receive, quarterly in arrears,
three percent (3%) of the Gross Revenues of MedScape. MedScape will provide
Synthonics, Incorporated with a written accounting of the royalty calculation
along with each payment. Synthonics, Incorporated shall be entitled to inspect
and copy the financial books and records of MedScape relating to the calculation
of royalties at any time upon reasonable notice.
2.3 Rights to Sublicense
Unless specifically authorized in writing by Synthonics, Incorporated,
MedScape shall not either directly or indirectly, sell, transfer, sublicense,
assign in whole or in part, convey, pledge, or otherwise dispose of this License
Agreement, the Licensed Technology, or any right, duty, or license granted by
this License Agreement to any individual or Entity except as provided in the
immediately subsequent sentence. MedScape shall be permitted to grant the right
to use the Licensed Product(s) and the Licensed Processes to (i) End Users, and
(ii) manufacturers or developers of Licensed Products. Except as specifically
provided in this License Agreement, any attempted sale, transfer, sublicense,
assignment in whole or in part, conveyance, pledge, or other disposition of this
License Agreement, the Licensed Technology, or any right, duty, or license
granted by this License Agreement without the prior express written consent of
Synthonics, Incorporated is null and void and is a material breach of this
License Agreement. Synthonics, Incorporated may refuse to give its consent to
such action in the sole and absolute discretion of Synthonics, Incorporated.
2.4 Rights Reserved
This License Agreement shall not be interpreted or construed as granting to
MedScape any rights, express or implied, by estoppel or otherwise, to any
copyrights, patents, patent applications, inventions, methods, technical
information, confidential information, proprietary information, expertise,
Know-How, trade secrets, or knowledge not specifically licensed by this License
Agreement; and all such items and rights not expressly granted to MedScape by
this License Agreement are expressly reserved by Synthonics, Incorporated. The
words used in this Subsection 2.4 are intended to have their broadest possible
meanings, and are not to be limited by definitions set forth in this License
Agreement. Without limitation, nothing contained in this License Agreement shall
be construed as granting MedScape any right or license to produce, process or
otherwise manufacture, use, sell, lease or otherwise transfer any items other
than Licensed Product(s) and Licensed Process(es).
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2.5 Rights Granted Back to Licensor
MedScape hereby grants to Synthonics, Incorporated, and Synthonics,
Incorporated accepts, worldwide, non-exclusive, royalty-free license rights to
use, produce, manufacture, market, distribute, sell, lease or otherwise transfer
any Improvements and Inventions and all copyrighted, non-copyrighted, patented,
non-patented, technological or Know-How developments relative to the Licensed
Technology arising from MedScape's use, research, or development associated with
the Licensed Technology.
2.6 Training and Support
At no additional charge to MedScape, Synthonics, Incorporated agrees to
provide, from time to time, up to a total of 40 (forty) hours of training
concerning the Licensed Technology to one or more of MedScape's representatives,
as shall be designated by MedScape. Any training in excess of such 40 hours
shall be provided at reasonable rates to be agreed upon by Synthonics,
Incorporated and MedScape, which shall in no event exceed rates Synthonics,
Incorporated may charge to third parties for similar training.
3.0 TERM AND TERMINATION
3.1 Term of Agreement
The term of this License Agreement shall commence on its Effective Date and
this License Agreement shall terminate on the sixth (6th) anniversary of the
Effective Date unless this License Agreement earlier terminates by operation of
law or by acts of the parties in accordance with the terms of this License
Agreement; provided, however, that (i) Synthonics, Incorporated shall have the
option to terminate this License Agreement at any time prior to the second (2nd)
anniversary of the Effective Date of this License Agreement in the event that,
for any three fiscal quarters taken as a whole, the actual Gross Revenues of
MedScape are not at least twenty-five percent (25%) of the projected Gross
Revenues of MedScape as shown in Exhibit A attached to this License Agreement
and incorporated by this reference, and (ii) MedScape shall have the option to
renew this License Agreement for an unlimited number of additional successive
six (6) year terms provided that MedScape is not in default under this License
Agreement at the time any particular option is exercised and, with respect to
the option for any particular six (6) year renewal term, Synthonics,
Incorporated shall have received during the previous six (6) year term an
aggregate of at least $5,000,000 in royalties under this License Agreement and
cash member distributions from MedScape.
3.2 Licensee's Rights to Termination
This License Agreement may be terminated at any time by MedScape. In order
to terminate, MedScape must give written notice of termination at least sixty
(60) days prior to actual termination.
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3.3 Licensor's Rights to Termination
(a) Upon (i) any material breach of or default under this License Agreement
by MedScape, (ii) the termination of the Xxxxxxx License Agreement or the H&M
Associates License Agreement, or (iii) the failure of MedScape to actually
receive at least $250,000 in cash contributions from equity investors other than
the Original Members within 180 days of the Effective Date, Synthonics,
Incorporated may terminate this License Agreement.
(b) Synthonics, Incorporated shall give MedScape written notice of
termination prior to terminating this License Agreement. Such notice shall state
the cause(s) for termination and the procedures, if any, MedScape must follow to
prevent such termination. MedScape shall have thirty (30) days after the
effective date of the notice to remedy the stated cause(s) for termination,
according to the procedures stated, otherwise this License Agreement and all
rights granted MedScape shall automatically terminate at the end of the
thirtieth (30th) day.
(c) In the event MedScape ceases conducting business in a normal course,
becomes insolvent, makes a general assignment for the benefit of creditors,
suffers or permits the appointment of a receiver for its business or assets, or
avails itself of, or becomes subject to, any proceeding under the Federal
Bankruptcy Act or any other statute of any state or country relating to
insolvency or the protection of creditor rights, this License Agreement shall
immediately and automatically terminate on the occurrence of any such event.
3.4 Results of Termination
Should this License Agreement be terminated for any reason, excepting a
material breach by Synthonics, Incorporated which is not cured or remedied by
Synthonics, Incorporated within thirty (30) days after the effective date of
notice given to Synthonics, Incorporated which specifically describes the
material breach and the procedures, if any, Synthonics, Incorporated must follow
to remedy or cure it, then MedScape shall cease all use of the Licensed
Technology for any purpose, and shall cease all production, manufacturing,
marketing, distribution, sale, lease, or transfer of the Licensed Product(s) and
Licensed Process(es). Termination of this License Agreement shall not affect the
rights granted back to Synthonics, Incorporated by this License Agreement nor
any other provisions, the nature of which are intended to survive such
termination. Within ten (10) days after termination of this License Agreement,
MedScape shall return to Synthonics, Incorporated the computer programs included
as part of the Licensed Technology in the form provided by Synthonics,
Incorporated or as modified by Synthonics, Incorporated or as modified by
MedScape, and shall deliver to Synthonics, Incorporated all documentation and
records of any sort, whether on paper, magnetic media, memory, etc., and all
copies wherever located, referring or relating to all or any part of the
Licensed Technology.
4.0 REPRESENTATIONS AND WARRANTIES OF SYNTHONICS, INCORPORATED
Synthonics, Incorporated hereby represents and warrants to MedScape that:
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(a) To the best of its knowledge, Synthonics, Incorporated's execution and
delivery of this License Agreement, and the performance of its obligations under
this License Agreement, do not breach, and will not result in a breach or
violation of any indenture, security interest, mortgage, grant, research
project, endowment, gift, contract or other agreement or commitment to which
Synthonics Technologies, Inc., Synthonics, Incorporated or any of their
Affiliates is a party or is bound or of any law, governmental rule, regulation,
order or grant.
(b) To the best of its knowledge, Synthonics, Incorporated owns all right,
title and interest in and to all the Licensed Technology.
(c) To the best of its knowledge, neither the Licensed Technology, nor any
component part thereof, nor the grant of the rights by Synthonics, Incorporated
to MedScape hereunder or MedScape's exercise of such rights infringes or will
infringe upon the contractual or proprietary rights or intellectual property
rights of any third party.
(d) To the best of its knowledge, there is no action, suit, claim,
arbitration, or proceeding pending or threatened (or basis therefor) which (i)
questions this License Agreement or the power, authority and right of
Synthonics, Incorporated to execute, deliver and perform its obligations under
this License Agreement, or (ii) alleges that the Licensed Technology infringes
any rights (including intellectual property rights) of any third party.
5.0 CONFIDENTIAL INFORMATION RESTRICTIONS
5.1 Protection Requirements
(a) Each party acknowledges that the other party (the "Disclosing Party")
may be required to disclose to it (the "Receiving Party") information which is
Confidential Information considered to be the Disclosing Party's intellectual
property. Each party agrees to take reasonable precautions to protect such
Confidential Information and preserve its confidential, proprietary, or trade
secret status. The Receiving Party shall use at least the same degree of care
and precaution as is customarily used to protect its own Confidential
Information or which would customarily be used in the software or high
technology industries. A Receiving Party shall hold and maintain the
Confidential Information disclosed to it in the strictest confidence and in
trust for the sole and exclusive benefit of the Disclosing Party.
(b) The Receiving Party shall utilize all such Confidential Information
solely for furthering the objectives of this License Agreement and it will not,
either during the term of this License Agreement or at any time subsequent to
the termination of this License Agreement, otherwise use such information for
its own benefit or for the benefit of others; nor will it publish or otherwise
disclose such Confidential Information to any other individual or Entity without
first complying with the terms of this License Agreement and obtaining written
consent from the Disclosing Party, which consent may be withheld in the sole
discretion of the Disclosing Party.
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(c) The obligations of Synthonics, Incorporated and MedScape pursuant to
the provisions of this License Agreement regarding Confidential Information
shall survive termination of this License Agreement for a period of five (5)
years.
(d) The Receiving Party may allow employees and independent contractors to
access and use the Confidential Information as reasonably necessary in the
performance of their duties for the Receiving Party and in the exercise of the
Receiving Party's rights hereunder. All such employees and independent
contractors shall be contractually obligated in writing to make no other use of
the Confidential Information before such access and use is permitted. Upon
request, the Receiving Party shall provide copies of said writings to the
Disclosing Party. The Receiving Party shall take all reasonable precautions
necessary to ensure that no employee or independent contractor makes an
unauthorized use or disclosure of the Confidential Information.
(e) In the event of a default or an imminent default under this License
Agreement, and upon request, the Receiving Party shall immediately return to the
Disclosing Party any and all records, notes, and other written, printed, and
tangible material, and copies thereof pertaining to the Confidential Information
disclosed. The Disclosing Party may be liable to the Receiving Party for any
damages which may be suffered by the Receiving Party as a result of compliance
with any such request which is improper or unjustified.
(f) MedScape will not copy all or any portion of the computer programs
which are included in the Licensed Technology other than as expressly allowed
pursuant to this License Agreement or as Synthonics, Incorporated may
specifically authorize in writing. MedScape agrees to respect and not to remove,
obliterate, or cancel from view any copyright, trademark, or confidentiality
notice, xxxx, or legend appearing on any of such computer programs or output
generated by such computer programs. Further, MedScape agrees not to modify,
disassemble, or decompile such computer programs, or any portion thereof.
(g) Notwithstanding any of the foregoing provisions, nothing in this
License Agreement shall prevent a Receiving Party from disclosing all or part of
the Confidential Information that it is legally compelled to disclose, by oral
deposition, interrogatories, requests for information or documents, subpoena,
civil investigative demand, or any other process; provided, however, that before
any such disclosure the Receiving Party shall notify the Disclosing Party in
writing of any such order or request to disclose and cooperate with the
Disclosing Party (at the Disclosing Party's cost) with respect to any procedures
sought to be pursued by the Disclosing Party in protecting against such
disclosure.
6.0 INTELLECTUAL PROPERTY MAINTENANCE AND MARKINGS
6.1 Maintenance
Synthonics, Incorporated shall prosecute and maintain the intellectual
property included in the Licensed Technology during the term of this License
Agreement. Matters related to the prosecution, filing and maintenance of all
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copyrights, trademarks and patents related to the Licensed Technology shall be
primarily the responsibility of Synthonics, Incorporated; provided, however,
MedScape shall be given reasonable opportunity to advise Synthonics,
Incorporated concerning such matters, and MedScape agrees to reasonably
cooperate with Synthonics, Incorporated in such matters.
6.2 Markings
MedScape shall comply with all applicable United States and foreign
statutes relating to the marking of Licensed Product(s), Licensed Product
packaging, and Licensed Processes with patent pending, patent number(s),
copyrights, trademark or other intellectual property notices and legends
required to maintain the intellectual property rights included in the Licensed
Technology.
7.0 WARRANTIES
7.1 Warranties, Rights and Liabilities
SYNTHONICS, INCORPORATED MAKES NO WARRANTIES, EXPRESS, IMPLIED OR STATUTORY,
WITH RESPECT TO THE LICENSED TECHNOLOGY NOT EXPRESSLY SET FORTH IN THIS LICENSE
AGREEMENT. ALL ITEMS INCLUDED IN THE LICENSED TECHNOLOGY ARE MADE AVAILABLE BY
SYNTHONICS, INCORPORATED TO MEDSCAPE STRICTLY ON AN "AS IS" BASIS. SYNTHONICS,
INCORPORATED DOES NOT WARRANT THAT THE LICENSED TECHNOLOGY IS ERROR FREE OR THAT
IT WILL MEET MEDSCAPE REQUIREMENTS. MEDSCAPE ACKNOWLEDGES THAT THE COMPUTER
SOFTWARE INCLUDED IN THE LICENSED TECHNOLOGY IS IN A DEVELOPMENT STAGE AND IS
NOT IN A FINAL, USABLE FORM. ALL IMPLIED WARRANTIES OF MERCHANTABILITY AND
FITNESS FOR A PARTICULAR PURPOSE ARE EXPRESSLY DISCLAIMED AND EXCLUDED. THE
ENTIRE RISK AS TO THE RESULTS AND PERFORMANCE OF THE LICENSED TECHNOLOGY,
TANGIBLE ITEMS TO BE DELIVERED TO MEDSCAPE WHICH RELATE TO THE LICENSED
TECHNOLOGY, AND ANY PRODUCTS, SERVICES OR METHODS BASED ON THE LICENSED
TECHNOLOGY IS ASSUMED BY MEDSCAPE. NO SYNTHONICS, INCORPORATED AGENTS OR
EMPLOYEES SHALL ASSUME ANY PERSONAL LIABILITY RESULTING FROM ANY EXERCISE OF
RIGHTS GRANTED UNDER THIS LICENSE AGREEMENT. NO AGENT OF SYNTHONICS,
INCORPORATED IS AUTHORIZED TO ALTER OR EXCEED THE WARRANTY OBLIGATIONS OF
SYNTHONICS, INCORPORATED SET FORTH IN THIS LICENSE AGREEMENT.
8.0 INFRINGEMENT; INDEMNIFICATION; LIMITATION ON LIABILITY
8.1 Obligation to Notify
(a) Should either Synthonics, Incorporated or MedScape become aware of any
infringement or potential infringement of any intellectual property rights
included in the Licensed Technology, it shall give the other party prompt
written notice detailing as many facts as possible concerning such infringement
or potential infringement.
(b) Synthonics, Incorporated and MedScape agree that they shall promptly
give each other written notice of any action taken to enforce or defend any
intellectual property rights included in the Licensed Technology.
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8.2 Obligation to Enforce
Notwithstanding any other provisions of this License Agreement, neither
Synthonics, Incorporated nor MedScape shall be obligated to institute suit or
take any action against any alleged infringer of the Licensed Technology.
8.3 Rights to Join or Obtain Support
(a) Synthonics, Incorporated shall have the right to join MedScape as a
party plaintiff in any action brought by Synthonics, Incorporated to enforce any
intellectual property rights included in the Licensed Technology. Should
Synthonics, Incorporated so join MedScape, Synthonics, Incorporated shall pay
all expenses incurred by MedScape in connection with its participation in the
action, and Synthonics, Incorporated shall indemnify MedScape against any
losses, judgments, or awards that MedScape may incur as a result of such action.
(b) MedScape shall have the right to join Synthonics, Incorporated as a
party plaintiff in any action brought by MedScape to enforce any intellectual
property rights included in the Licensed Technology. Should MedScape so join
Synthonics, Incorporated, MedScape shall pay all expenses incurred by
Synthonics, Incorporated in connection with its participation in the action, and
MedScape shall indemnify Synthonics, Incorporated against any losses, judgments,
or awards that Synthonics, Incorporated may incur as a result of such action.
(c) At the expense of the requesting party, Synthonics, Incorporated and
MedScape agree to furnish to the other data, records, evidence, testimony,
technical assistance, and cooperation as reasonably necessary to facilitate any
actions or defenses against actions, including without limitation reexamination
or reissue proceedings, brought by or against Synthonics, Incorporated or
MedScape in connection with the defense or enforcement of any intellectual
property rights included in the Licensed Technology.
8.4 Licensed Technology Infringes Third Party's Rights
Should a claim that the Licensed Technology infringes a third party's
intellectual property rights be threatened or made against Synthonics,
Incorporated, MedScape, or any Entity receiving rights to the Licensed
Technology through MedScape pursuant to the provisions of this License
Agreement, Synthonics, Incorporated and MedScape agree that they shall give the
other party prompt written notice detailing as many facts as possible concerning
such claim.
8.5 Indemnification
(a) Synthonics, Incorporated will indemnify MedScape from and against any
and all liability, costs, expenses or damages of any kind or nature, including
but not limited to reasonable fees of attorneys, accountants and other
professionals, incurred by MedScape as a result of any claim or proceeding
brought against MedScape (or its sublicensees or customers) by any individual or
Entity not a party to this License Agreement, which claim or proceeding is based
in whole or in part on any of the representations and warranties contained in
Page 13
Section 4 hereof being untrue, provided that MedScape will promptly notify
Synthonics, Incorporated of any such claim or proceeding in writing and will
give Synthonics, Incorporated the opportunity to defend or settle by its sole
control such claim or proceeding. MedScape agrees to cooperate with Synthonics,
Incorporated, at Synthonics, Incorporated's expense, in defending or settling
any such claim or proceeding. Synthonics, Incorporated will not be liable under
this Section 8.5 to the extent that the claim or proceeding brought against
MedScape is based on modifications or enhancements to the Licensed Technology
made by MedScape or its agents or Affiliates.
(b) MedScape will indemnify Synthonics, Incorporated from and against any
and all liability, costs, expenses or damages of any kind or nature, including
but not limited to reasonable fees of attorneys, accountants, and other
professionals, incurred by Synthonics, Incorporated as a result of any claim or
proceeding brought against Synthonics, Incorporated by any individual or Entity
not a party to this License Agreement, which claim or proceeding is based in
whole or in part on MedScape's (i) use of the Licensed Technology in a manner
exceeding the scope of rights granted to MedScape pursuant to this License
Agreement, 00 use of the Licensed Technology in any manner inconsistent with the
terms and conditions of this License Agreement, or (iii) use of the Licensed
Technology after Synthonics, Incorporated's written reasonable notice that
MedScape should cease the use of the Licensed Technology due to an infringement
claim.
8.6 Limitation of Liability
EXCEPT AS OTHERWISE SET FORTH HEREIN, NEITHER PARTY SHALL BE LIABLE TO THE
OTHER WITH RESPECT TO ANY LOSS (DIRECT OR INDIRECT) OF PROFITS, LOSS OF BUSINESS
REVENUE, OR FAILURE TO REALIZE EXPECTED SAVINGS OR FOR ANY INDIRECT, SPECIAL OR
CONSEQUENTIAL LOSS OR DAMAGES OF ANY NATURE OCCASIONED BY THE PARTY'S
PERFORMANCE OR NON-PERFORMANCE OF ITS OBLIGATIONS PURSUANT TO THIS LICENSE
AGREEMENT. IN NO EVENT SHALL SYNTHONICS, INCORPORATED'S AGGREGATE LIABILITY
PURSUANT TO THIS LICENSE AGREEMENT EXCEED THE AGGREGATE AMOUNT OF ROYALTY
PAYMENTS RECEIVED BY SYNTHONICS, INCORPORATED FROM MEDSCAPE. THE ABOVE
LIMITATION SHALL NOT APPLY TO VIOLATIONS OF THE REPRESENTATIONS AND WARRANTIES
DESCRIBED IN SECTION 4.0 ABOVE OF THIS LICENSE AGREEMENT.
9.0 GENERAL PROVISIONS
9.1 Assignment
This License Agreement may not be assigned or transferred by either party
without the prior written consent of the other party. Such consent may be
withheld in the sole, absolute discretion of either party.
9.2 Mediation
If any dispute arises under this License Agreement, the parties shall
negotiate in good faith to settle such dispute. If the parties cannot resolve
such dispute themselves within ten (10) days, then either party to the dispute
may submit the dispute to mediation by a mediator approved by both parties. The
parties shall both cooperate with the mediator. If the parties cannot agree to
any mediator, then the dispute shall be mediated by the Judicial and Arbitration
Mediation Service, Inc. office nearest the party submitting the dispute. The
parties shall share equally in the costs of such mediator.
Page 14
9.3 Arbitration
In the event that any dispute which arises under this License Agreement is
not resolved within a total of thirty (30) days by mediation as provided above
in Subsection 9.2 above of this License Agreement, such dispute shall be settled
by arbitration in accordance with the Commercial Rules of the American
Arbitration Association. After the failure to settle through mediation,
arbitration shall be the exclusive dispute resolution process. Any party may
commence arbitration by sending a written demand for arbitration to the other
party. Such demand shall set forth the nature of the matter to be resolved by
arbitration. Any arbitration shall take place in Sacramento, California. The
substantive law of the State of California shall be applied by the arbitrator to
the resolution of the dispute. The parties shall share equally all initial costs
of arbitration. The prevailing party shall be entitled to reimbursement of
attorney fees, costs, and expenses incurred in connection with the arbitration.
All decisions of the arbitrator shall be final, binding, and conclusive on both
parties. Judgment may be entered upon any such decision in accordance with
applicable law in any court having jurisdiction thereof. The arbitrator (if
permitted under applicable law) or such court may issue a writ of execution to
enforce the arbitrator's decision.
9.4 Entire Agreement
This License Agreement and the First Amended Operating Agreement constitute
the entire agreement and understanding between Synthonics, Incorporated and
MedScape with respect to the Licensed Technology, and any modification of this
License Agreement shall be in writing and shall be signed by a duly authorized
representative of both Synthonics, Incorporated and MedScape. There are no
understandings, representations, or warranties, between Synthonics, Incorporated
and MedScape concerning the Licensed Technology which are not fully expressed in
this License Agreement or in the First Amended Operating Agreement and no rights
are granted by this License Agreement which are not expressly set forth in this
License Agreement.
9.5 Export Control
This License Agreement is subject to laws and regulations controlling the
export of technical data, computer software, laboratory prototypes, and all
other export controlled commodities that may be imposed by the United States or
any country or organization of nations within whose jurisdiction MedScape
operates or does business. These laws include, but are not limited to, the Arms
Export Control Act and the Export Administration Act as they may be amended. All
rights granted by this License Agreement are contingent upon compliance with
these laws and regulations. MedScape shall not, directly or indirectly, export
any export controlled commodities, which are subject to this License Agreement,
unless the required authorization and/or license is obtained from the proper
government agency(ies) prior to export. By granting rights in this License
Agreement, Synthonics, Incorporated does not represent that export authorization
or an export license will not be necessary or, if necessary, that such
authorization or export license will be granted.
Page 15
9.6 Force Majeure
Neither Synthonics, Incorporated nor MedScape shall be in default of the
terms of this License Agreement because it delays performance or fails to
perform such terms, provided such delay or failure is not the result of the
party's intentional or negligent acts or omissions, but the result of causes
beyond the reasonable control of such party. Causes reasonably beyond the
control of Synthonics, Incorporated and MedScape shall include, but not be
limited to, revolutions; civil disobedience; fires; acts of God, war, or public
enemies; blockades; embargoes; strikes; labor disputes; laws; governmental,
administrative or judicial orders, proclamations, regulations, ordinances,
demands, or requirements; delays in transit or deliveries; or inability to
secure necessary permits, permissions, raw materials, or equipment.
9.7 Governing Law
This License Agreement shall be deemed to have been made in California and
shall be governed and construed in accordance with the laws of the State of
California.
9.8 Headings
The section and subsection titles and headings contained in this License
Agreement are for convenience and reference only. Such titles and headings do
not form a part of this License Agreement, shall not define or limit the scope
of the sections or subsections, and shall not affect the construction or
interpretation of any of the sections or subsections.
9.9 Independence of the Parties
Synthonics Incorporated and MedScape are independent entities engaged in
independent business, and neither party nor any agent or employee of either
party shall be regarded as an agent or employee of the other except to the
extent that Synthonics Technologies, Inc., the parent of Synthonics,
Incorporated, is a member of MedScape. Nothing herein shall be construed as
reserving to either party the right to control the other in the conduct of its
employees or business, nor shall either party have the authority to make any
promise, guarantee, warranty, or representation which will create any obligation
or liability whatsoever, whether express or implied, on behalf of the other.
Synthonics, Incorporated and MedScape are not joint ventures or partners in any
sense.
9.10 Modifications
Either Synthonics, Incorporated or MedScape may propose a modification to
this License Agreement. The proposing party shall give the other party notice
which sets forth the proposed modification. Within thirty (30) days following
the effective date of such notice, the other party shall accept or reject the
modification proposed. Synthonics, Incorporated and MedScape agree to work in
good faith to modify this License Agreement should modification be required to
meet the needs of either party.
Page 16
9.11 Notices
Any notice, demand, or communication required or permitted to be given by
any provision of this License Agreement shall be deemed to have been
sufficiently given or served for all purposes if delivered personally or by
express mail or courier service (with receipt acknowledged) to the party or to a
manager of the party to whom the same is directed, if telecopied or sent via
facsimile (with receipt acknowledged) to the party or a manager of the party to
whom the same is directed or, if sent by registered or certified mail, postage
and charges prepaid, addressed to the party's address as appropriate, which is
set forth below or to such other address as may be designated by written notice
from either party to the other party. Except as otherwise provided herein, any
such notice shall be deemed to be given two (2) business days after the date on
which the same was deposited in the United States mail, addressed and sent as
indicated above, if sent by mail or upon confirmation of receipt if delivered by
telecopier, facsimile, personal delivery, or courier service.
Synthonics, Incorporated's Notification Address:
Synthonics, Incorporated
00000 Xxx Xxxxxxx, Xxxxx 000
Xxxxxxxx Xxxxxxx, XX 00000
MedScape's Notification Address:
MedScape, LLC
00000 Xxx Xxxxxxx
Xxxxx 000
Xxxxxxxx Xxxxxxx, XX 00000
With Copies to:
H&M Associates, LLC
0 Xxxxxxx Xxxxx, Xxxxx 000
Xxxxxxxxxx, XX 00000
and
Xxxxxxx X. Xxxxxxx, Xx., DMD, P.C.
Suite 1A, Medical Arts Xxxx.
000 Xxxxxx Xxxxx
Xxxxxxxxx Xxxx, XX 00000
9.12 Severability
The provisions of this License Agreement are severable, and should any
provision(s) be determined, by agreement of the parties or by an arbitrator or a
court of competent jurisdiction to be invalid, illegal or unenforceable, the
parties and the arbitrator or the court shall have the right to strike the
Page 17
provision(s) or modify the provision(s), within the original intent of the
parties, to make the provision(s) valid and enforceable. The remainder of this
License Agreement shall remain in full force and effect.
9.13 Waiver of Rights
In order to be effective, any waiver, by either party, of any right under
this License Agreement must be in a writing signed by an authorized
representative of the party making the waiver. No such waiver or failure of
Synthonics, Incorporated or MedScape to enforce a right or strict performance
under this License Agreement shall be deemed to be a waiver or forbearance which
would in any way prevent Synthonics, Incorporated or MedScape from subsequently
asserting or exercising any such right, making a claim not specifically waived,
or requiring strict performance of this License Agreement. No such waiver or
failure to enforce shall affect the validity of this License Agreement or be a
continuing waiver excusing compliance with any provision of this License
Agreement in the future.
9.14 Insolvency
Each party hereto acknowledges that if such party, as a
debtor-in-possession, or if a trustee in bankruptcy, in a case under of Xxxxx
00, Xxxxxx Xxxxxx Code (the "Bankruptcy Code") rejects this Agreement, then the
other party may elect to retain its rights under this Agreement as provided in
Section 365(n) of the Bankruptcy Code. The parties acknowledge and agree that
the Licensed Technology hereunder constitutes "intellectual property" as that
term is used in the Bankruptcy Code. Upon written request of a party hereto to
the other party or the bankruptcy trustee, the party to whom such request is
made or such trustee will not interfere with the rights of the requesting party
as provided in this Agreement.
9.15 Counterparts
This Agreement may executed in two or more counterparts, each of which
shall be deemed an original, and all of which together shall constitute one and
the same instrument. This Agreement shall become binding when one or more
counterparts, individually or taken together, shall bear the signatures of all
the parties hereto.
9.16 Conditions Precedent
Neither Synthonics, Incorporated nor MedScape shall have any rights or
obligations pursuant to this License Agreement until all of the following
conditions precedent have been satisfied:
(a) The Xxxxxxx License Agreement has been fully executed and delivered;
(b) The H&M Associates License Agreement has been fully executed and
delivered;
(c) The First Amended Operating Agreement has been fully executed and
delivered; and
Page 18
(d) A research and development agreement between MedScape and the Original
Members has been fully executed and delivered.
These conditions will be deemed to have failed in the event that they are not
satisfied on or before November 30, 1996. In the event of such failure of
conditions, the parties to this License Agreement shall have no rights or
obligations pursuant to this License Agreement, and this License Agreement shall
be null and void as though it was never executed.
9.17 Legal Representation
The parties acknowledge and agree that neither of them have been
represented in connection with this License Agreement by attorney Xxxxx X.
Xxxxxxx or the law firm of Moore, Meegan, Xxxxxxx & Xxxxxxxxxxx. Although the
final version of this License Agreement was generated by Xx. Xxxxxxx, Xx.
Xxxxxxx and the law firm of Moore, Meegan, Xxxxxxx & Kassenbrock have
represented H&M Associates only. The parties to this License Agreement consulted
with independent counsel of their own choosing prior to signing this License
Agreement.
IN WITNESS WHEREOF, Synthonics, Incorporated and MedScape have caused this
License Agreement to be executed in duplicate originals by their duly authorized
representatives.
LICENSOR: LICENSEE:
Synthonics, Incorporated, MedScape, LLC
a California corporation a California limited liability company
/S/ F. Xxxxxxx Xxxx F. Xxxxxxx Xxxx
------------------------------- ---------------------------------------
By: F Xxxxxxx Xxxx, President By: F. Xxxxxxx Xxxx, Manager
Page 19
EXHIBIT "A"
PROJECTED GROSS REVENUES OF MEDSCAPE, LLC
Calendar
Year 1996 1997 1998 1999
Projected $0 $669 $10,921 $36,286
Gross Revenues
(amounts in thousands)
A-1
EXHIBIT "B"
LICENSED TECHNOLOGY
The following is a description of the Licensed Technology:
Photogrammetry (measurement from photographs) proprietary technology and
intellectual property consisting of:
1. The software product known commercially as Wireframe Express 4.0 that
contains the following software executable files:
a. WFE40AB.EXE (the main executable program);
b. Wmerge dll (a dynamic link library that merges wireframe components);
c. WVRX dlI (a dynamic link library that creates VRX user-interactive
files);
d. WL.dII and WF30QL.dll (dynamic link libraries that creates "QuickLook"
photorendered images);
e. and various support libraries including Ddeml.dll, Cmdialog.vbx,
gauge.vbx, ikcoll6.dll, ikdspl6.vbx, ikengl6.dll, Lead5ln.dll, Muscle.vbx,
Spin.vbx, Spread20.vbx, Vbrun300.dll and Ver.dll;
2. VRX04.EXE: a real-time, user-interactive rendering viewer that is based on
the Argonaut Xxxxxxx game engine. This viewer can display wireframe models,
surface models and phototextured models in standard 3D perspective views as well
as stereoscopic 3D that convey depth perception when viewed through red-blue
glasses;
3. Software modules that have yet to be incorporated in commercial products, but
have the following operating characteristics:
a. Assign3.dll: a utility for assigning a "generic wireframe model" to a
photograph by means of assigning three known 3-dimensional locations
on the generic model to three 2 dimensional perspective projection
image points of that same object.
b. Assign4.dll: a utility for fitting (by assignment and scaling) a
"generic wireframe model" to a photograph by means of assigning four
known 3-dimensional locations on the generic model to four
2-dimensional perspective projection image points of a similar object,
thus creating a patient-specific wireframe model; and
4. All Know-How and Confidential Information relating in any manner to the
foregoing.
B-1
