Exhibit 10.8
SETTLEMENT AGREEMENT
This Agreement (hereinafter, the Agreement") is effective as of October 1,
2002 by and between Serif Holdings Limited, an English corporation with its
principal place of business at The Software Centre, Xxxx 00, Xxxxxxx Xxxxxxxxxx
Xxxxxx, Xxxxxxxxxx XX00 0XX, Serif (Europe) Limited, an English Company with its
principal place of business at The Software Centre, Xxxx 00, Xxxxxxx Xxxxxxxxxx
Xxxxxx, Xxxxxxxxxx XX00 0XX, Serif Inc., a Delaware corporation with its
principal place of business at 000 Xxxxxxxxxxxx Xxxxxxxxx, Xxxxxx, Xxx
Xxxxxxxxx, 00000 (Serif Holdings Limited, Serif (Europe) Limited and Serif Inc.
are hereinafter referred to collectively as "Serif"), Software Publishing
Corporation ("SPC"), a Delaware corporation with its principal place of business
at 0000 Xxxxxxxx Xxxxxxxx Xxxxxxx, Xxxxxxx, Xxx Xxxx, 00000, and Vizacom, Inc.
("Vizacom"), a Delaware corporation with its principal place of business at 0000
Xxxxxxxx Xxxxxxxx Xxxxxxx, Xxxxxxx, Xxx Xxxx, 00000.
WHEREAS, Serif may have ownership rights in and to certain
HARVARD-formative trademarks for use in connection with certain presentation,
charting and clipart collection software (hereinafter, the "Marks"), including,
but not limited to, the HARVARD-formative trademarks identified in Schedule A,
annexed hereto as Exhibit A;
WHEREAS, Serif is desirous of assigning its ownership rights, if any, in
and to the Marks to SPC;
WHEREAS, SPC is desirous of acquiring Serif's ownership rights, if any, in
and to the Marks;
WHEREAS, SPC and Serif (Europe) Limited are parties to a Software License
Agreement, a true and correct copy of which is annexed hereto as Exhibit B
(hereinafter, the "2001 Software License Agreement");
WHEREAS, the parties desire to terminate the 2001 Software License
Agreement in its entirety and the parties' rights and obligations thereunder;
NOW THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties agree as follows:
A. COVENANTS, REPRESENTATIONS AND WARRANTIES
1. Serif covenants, represents and warrants that it does not own any
right, title or interest in or to any of the Marks, or any xxxx comprising, in
whole or in part, the HARVARD xxxx, or any confusingly similar xxxx, anywhere in
the world other than the right to own and operate the xxxxxxxxxxxxxxx.xxx
domain name including without limitation using the Marks in any subdomain of
such domain name.
2. Serif covenants, represents and warrants that it has not applied to
register, will not apply to register, and does not own any trademark or service
xxxx registrations for any of the Marks, or any xxxx comprising, in whole or in
part, the HARVARD xxxx, or any confusingly similar xxxx, anywhere in the world.
3. Serif covenants, represents and warrants that it has not granted any
third party any rights in or to any of the Marks, whether by license, assignment
or otherwise other than licenses granted by Serif in the ordinary course of its
business only as follows:
(a) licenses to end-users of software incorporating and/or displaying the
Marks; and
SETTLEMENT AGREEMENT
-2-
(b) the right for companies and other organizations within Serif's
distribution network to use the Marks only in connection with the promotion
and/or distribution of software incorporating and/or displaying the Marks.
B. ASSIGNMENT
4. Serif hereby quit claims and irrevocably sells, grants, transfers,
assigns, conveys and sets over to SPC, its successors and assigns, all of
Serif's worldwide right, title and interest, if any, in and to:
(a) the Marks;
(b) any xxxx comprising, in whole or in part, the HARVARD xxxx, and any
confusingly similar xxxx other than the xxxxxxxxxxxxxxx.xxx domain name;
(c) the goodwill of the business symbolized by the Marks; and
(d) the right to xxx and recover for past and future infringement of the
Marks.
5. Serif agrees that if additional documents, instruments or information
are required from time to time to confirm SPC's ownership of the Marks, or its
successors or assigns, Serif will, at SPC's sole cost, undertake any reasonably
requested actions to provide whatever is reasonably required in order to secure
to SPC, its successors or assigns the benefits of all rights hereby transferred.
6. Serif agrees not to challenge use of the Marks by SPC, its successors
or assigns, or to oppose or object in any other manner to any application for
registration of the Marks by SPC, its successors or assigns, or to oppose or
object to any registration arising from any such application.
SETTLEMENT AGREEMENT
-3-
C. 2001 SOFTWARE LICENSE AGREEMENT
7. In consideration for SPC procuring the written consent of XX Xxxxxx
Chase Bank to Serif reducing by US$30,000 (thirty thousand US dollars) its
payment due on December 31, 2002 to XX Xxxxxx Xxxxx Bank under the promissory
note dated March 31, 2001 issued by Serif Inc in favor of Vizacom and assigned
by Vizacom to XX Xxxxxx Chase Bank on May 30, 2002, SPC and Serif agree that,
subject to the terms of this Agreement, the 2001 Software License Agreement is
hereby terminated in its entirety, together with the parties' rights and
liabilities thereunder, effective as of the date of this Agreement. Other than
as expressly set out in this Agreement, the parties hereby agree that SPC shall
not incur any additional penalty, fine, fee or any other liability to Serif
whatsoever for termination of the 2001 Software License Agreement.
8. SPC agrees that it will not pursue or instigate any claims against
Serif whether under contract, tort, common law or statute which SPC may have at
the date of this Agreement or at any time in the future in respect of the 2001
Software License Agreement and/or its subject matter and/or the use of the Marks
to promote Software referred to in the 2001 Software License Agreement and SPC
confirms that it waives any and all such claims.
9. Serif agrees that it will forward any outstanding royalties due to SPC
under the 2001 Software License Agreement on or before November 15, 2002.
D. MISCELLANEOUS
10. This Agreement together with the agreements referred to in this
Agreement constitute the entire Agreement between the parties in respect of the
subject matter of this Agreement and no party has entered into this Agreement
based upon any promise, representation, warranty or covenant not included
herein.
SETTLEMENT AGREEMENT
-4-
11. This Agreement constitutes a binding contract between the parties and
shall not be amended, rescinded or otherwise modified.
12. This Agreement shall be binding upon and shall inure to the benefit of
the parties, their successors, assigns, subsidiaries, licensees, affiliated
companies, and all those in active concert or participation with them.
13. The parties hereto acknowledge that each has read this Agreement; that
each fully understands its rights, privileges and duties hereunder; that each is
relying solely on its own judgment and belief as to the adequacy of the
consideration provided to the other; and that each enters into this Agreement
freely and voluntarily. Each party further acknowledges that each has had the
opportunity to consult with an attorney of its choice to explain the terms of
this Agreement and the consequences of signing it.
14. This Agreement will be governed by and construed in accordance with
the laws of the State of New York.
15. Counterparts: This Agreement may be executed in counterparts, each of
which when executed shall be an original and a facsimile copy of this Agreement
signed by one party, transmitted to each party, and countersigned by each party
shall constitute a binding Agreement. All counterparts therefore shall
constitute one and the same document.
16. Each person executing this Agreement warrants that he or she is the
duly authorized representative of the respective party designated below, and is
fully empowered to execute this Agreement on its behalf.
17. Vizacom hereby agrees to be bound to the terms of this Agreement and
unconditionally guarantees all of SPC's obligations hereunder. Specifically,
Vizacom
SETTLEMENT AGREEMENT
-5-
expressly agrees to assume any and/or all of SPC's obligations under this
Agreement in the event SPC cannot or does not perform its obligation(s).
IN WITNESS WHEREOF, the parties have caused this instrument to be duly
executed as of the dates indicated below:
Software Publishing Corporation Serif Holdings Limited
By: /s/ Xxxx Xxxxxxxxxx By: /s/ Xxxxx Xxxxxxxxx
Name: Xxxx Xxxxxxxxxx Name: Xxxxx Xxxxxxxxx
--------------------------------- ------------------------------
Title: CFO Title: Financial Director
------------------------------- ----------------------------
Dated: October 2, 2002 Dated: October 2, 2002
-------------------------------- ----------------------------
Serif (Europe) Limited Serif Inc.
By: /s/ Xxxxx Xxxxxxxxx By: /s/ Xxxx Xxxxxxx
Name: Xxxxx Xxxxxxxxx Name: Xxxx Xxxxxxx
--------------------------------- ------------------------------
Title: Financial Director Title: VP Operations
------------------------------- ----------------------------
Dated: October 2, 2002 Dated: October 2, 2002
------------------- ----------------------------
Vizacom Inc
By: /s/ Xxxx Xxxxxxxxxx
Name: Xxxx Xxxxxxxxxx
--------------------------------
Title: CFO
--------------------------------
Dated: October 2, 2002
--------------------------------
SETTLEMENT AGREEMENT
-6-
EXHIBIT A - Marks
HARVARD
HARVARD GRAPHICS
HARVARD GRAPHICS ADVANCED PRESENTATIONS
HARVARD GRAPHICS ADVANCED PRESENTATIONS 2
HARVARD GRAPHICS 2
HARVARD GRAPHICS 3
HARVARD GRAPHICS 98
HARVARD GRAPHICS PRO PRESENTATIONS
HARVARD GRAPHICS PRO PRESENTATIONS 1
HARVARD GRAPHICS PRO PRESENTATIONS 2
HARVARD GRAPHICS EASY PRESENTATIONS
HARVARD GRAPHICS EASY PRESENTATIONS 1
HARVARD GRAPHICS ADVISOR
HARVARD GRAPHICS PUBLISHER
HARVARD GRAPHICS PRINT & PUBLISH
HARVARD GRAPHICS DRAW
HARVARD GRAPHICS 3D MAGIC
HARVARD GRAPHICS PHOTO PLUS
HARVARD GRAPHICS HOME PAGE CREATOR
HARVARD INSTANT CHARTS
HARVARD INSTANT CHARTS 1
HARVARD CHARTXL
HARVARD CHARTXL 2
HARVARD CHARTXL 3
HARVARD CHARTXL 98
HARVARD GALLERY
HARVARD GALLERY 1
HARVARD PUBLISHER
HARVARD DRAW
HARVARD DESIGNER
HARVARD 3D
HARVARD PHOTO PLUS
HARVARD HOME PAGE
HARVARD F/X
HARVARD SPOTLIGHT
HARVARD MONTAGE
HARVARD MONTAGE LITE
HARVARD WEBSHOW
HARVARD CLIPART BROWSER
SETTLEMENT AGREEMENT
-7-
EXHIBIT B - 2001 Software License Agreement
SOFTWARE LICENSE AGREEMENT
This agreement ("Agreement") is entered into as of March 31, 2001
("Effective Date"), by and between Software Publishing Corporation, a Delaware
corporation ("Licensor") and Serif (Europe) Limited, an English company
("Licensee").
RECITALS
WHEREAS, Licensor owns, develops and distributes the Software Products (as
defined below) and Licensee owns, develops and distributes the HG Branded
Products (as defined in clause 2.2 below); and
WHEREAS, Licensee desires to acquire a license to use certain of
Licensor's trademarks with respect to certain of the Licensee's software
products and Licensor is willing to grant such rights to Licensee; and
WHEREAS, Licensee desires to acquire the rights to develop and distribute
the Software Products, and Licensor is willing to grant such rights to Licensee.
NOW, THEREFORE, in consideration of the mutual covenants and agreements
contained herein and for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, Licensor and Licensee hereby agree
as follows:
ARTICLE I
DEFINITIONS
1.1 "European Territory" means Europe.
1.2 "exploit" means to use, copy, package, market, distribute, display, sell
and/or sub- license, and the terms "exploiting" and "exploitation" shall
be interpreted accordingly.
1.3 "Intellectual Property Rights" means all patent, trademark, copyright,
trade secret and other intellectual property rights recognized by law.
1.4 "inventory" means components and packaging for the Software Products and
HG Branded Products used by the Licensee at the date of this Agreement for
sale of such products and stored at the Licensee's premises at the date of
this Agreement.
1.5 "Worldwide Territory" means anywhere in the world except the European
Territory.
1.6 "Royalty and Royalties" has the meaning set forth in Section 4 hereof.
1.7 "Software Products" means those software products listed on Schedule 1.5
hereto.
1.8 "Territory" means collectively the Worldwide Territory and the European
Territory.
1.9 "2001 Term" means the period from April 1, 2001 through March 31, 2002.
SETTLEMENT AGREEMENT
-8-
1.10 "2002 Term" means the period from April 1, 2002 through March 31, 2003.
ARTICLE II
GRANT OF LICENSES
2.1 Software Licenses. Licensor grants Licensee, during the term of this
Agreement or until terminated pursuant to Section 6.3.1, if earlier, (a)
for the 2001 Term, an exclusive license to exploit the Software Products
in the European Territory (the "European 2001 License"); (b) for the 2002
Term, a non-exclusive license to exploit the Software Products in the
European Territory (the "European 2002 License"); and (c) for the 2001
Term and the 2002 Term, a non-exclusive license to exploit the Software
Products in the Worldwide Territory (the "Worldwide License"; and together
with the European 2001 License and European 2002 License, the "Software
Licenses"). Each of the European 2002 License and the Worldwide License
shall be automatically renewable (on a non-exclusive basis) for successive
two year terms if there is and has been no failure on the part of Licensee
to comply with all of the terms and conditions of this Agreement and, in
each year of such respective license, with respect to the European 2002
License and the Worldwide License, not less than an aggregate of $25,000
in Royalties are paid to Licensor pursuant to such license.
2.2 Trademark License. Licensor grants Licensee, during the term of this
Agreement or until terminated pursuant to Section 6.3.3, if earlier, a
non-exclusive, non- transferable license (the "Trademark License") to use
the "Harvard Graphics" name and trademark (the "Trademark") in the
Territory for the purpose of exploiting the products listed on Schedule
2.2 ("HG Branded Products") and subsequent modification thereof under the
Trademark. Any use of the Trademark on products other than the HG Branded
products must be approved by Licensor in writing in advance of such use.
All such use of the Trademark must reference the Trademark as being owned
by Licensor. Licensor retains the sole and exclusive right to own, hold,
apply for registration of, and register, the Trademark, during the term of
and after the termination or expiration of this Agreement. Licensee will
neither take nor authorize any activity inconsistent with such right.
2.3 Non-Competition. (a) The Licensor shall not during the 2001 Term in any
country within the European Territory exploit, nor license any third party
to exploit, the Software Products; provided, that if the Trademark License
terminates prior to the expiration of the 2001 Term, this section 2.3
shall cease to have any force or effect; and
(b) So long as the Software Licenses continue in effect, Licensor
shall (i) not make any direct sale of Software Products in the Territory
except pursuant to a strategic relationship established after the date of
this Agreement with respect to the Software Products; and (ii) refer sales
inquiries and reseller opportunities (except with respect to Microgistix)
to Licensee and cooperate in the transfer of marketing and sales
opportunities to Licensee, whether new or existing.
2.4 Technology License. Licensor hereby grants Licensee a non-exclusive
SETTLEMENT AGREEMENT
-9-
perpetual royalty-free license to use, in connection with the distribution
of the products listed on Schedule 2.3, throughout the world any
copyrighted material owned by Licensor which is currently incorporated
into the existing software products listed on Schedule 2.3 (the
"Technology") and subsequent modification thereof. For purposes of this
Agreement, such license shall be referred to as the "Technology License".
2.5 Websites. Licensee shall have the exclusive right to operate the following
websites of Licensor, subject to Licensor's reasonable approval (such
approval not to be unreasonably withheld or delayed) of any content not
directed to marketing and selling Software Products and/or HG Branded
Products or which could create liability to Licensor or its affiliates:
xxx.xxxxxxxxxxxxxxx.xxx
2.6 Limitations. Licensee acknowledges that the Software Products and the
Trademark, and all Intellectual Property Rights related thereto, whether
affixed or applied to Serif products or otherwise, are the property of
Licensor and Licensee has no rights in the foregoing except to the extent
expressly granted by this Agreement.
2.7 Consents. Any license granted hereby that requires the consent or approval
of a third party is made subject to such consent or approval being
obtained if such consent or approval has not been obtained. Licensor shall
use its reasonable best efforts to obtain any such consent or approval
after the date hereof until such time as such consent or approval has been
obtained. Licensor shall cooperate with Licensee to provide that, subject
to Section 3.4, Licensee shall receive Licensor's interest in the benefits
provided by such third party, provided that Licensee shall undertake to
pay or satisfy the corresponding liabilities for the enjoyment of such
benefit; provided, that nothing hereunder shall be deemed to be an
assignment of any agreement giving rise to such benefits.
2.8 Compliance with Licensor Agreement. Licensee acknowledges that is has
reviewed the terms of that certain Consent Agreement (the "Harvard
University Agreement"), dated as of June 29, 1989, between Harvard
University and Licensor. During the term of the Trademark License,
Licensor shall comply with all of Licensor's restrictions and obligations
under the Harvard University Agreement with respect to Licensee's
exploitation of the Trademark.
ARTICLE III
SOFTWARE
3.1 Software. Licensor licenses the Software Products "as is" and "where is."
Licensor shall not be obligated to provide any technical assistance or
customer support.
3.2 Delivery. Licensee acknowledges that Licensor has no obligation to deliver
additional source code for the Software Products. Licensee further
acknowledges that it is in possession of existing inventory of the
Software Products. Such inventory may be sold by Licensee,
SETTLEMENT AGREEMENT
-10-
provided that Licensor shall retain title to such inventory until the sale
of any such inventory by Licensee, upon which event title to the proceeds
from the sale of such units of inventory as shall have been sold shall
vest in Licensor and remain Licensor's property until the cost of such
sold inventory to Licensor and all Royalties payable hereunder are
accounted for and paid by Licensee to Licensor. Attached hereto as
Schedule 3.2 is a list of such inventory and the cost thereof to Licensor.
To the extent that any of the inventory is determined by Licensor to be
unsaleable, Licensor and Licensee will either cooperate in good faith in
disposing of such unsaleable inventory or (i) at Licensor's request, such
unsaleable inventory shall be returned to Licensor at Licensor's cost or
(ii) at Licensee's request, the Licensor shall within 21 days of such
request either collect or dispose of any such inventory.
3.3 Modification. During the 2001 Term, Licensee shall have the non-exclusive
right to amend the source code and/or object code of the Harvard Graphics
products that are part of the Software Products; provided that any such
amendments do not interfere with the operability of any Harvard Graphics
products. Licensee shall not include any third party technology which
incur royalties to or require license agreements with third parties
without the consent of the Licensor. Licensor shall have a perpetual
royalty-free license to market, sell and use any such amendments and, upon
request of Licensor, Licensee shall deliver to Licensor the source and
object codes related to any and all such amendments. In any event, and
whether or not requested by Licensor, Licensee shall deliver such
amendments, if any, to Licensee no less often than quarterly. Licensee
shall at all times keep Licensor fully informed as to any and all such
amendments made and in the process of being made.
3.4 Expenses. (a) Licensee shall be responsible for and shall pay any and all
expenses and/or license fees currently due and owing or payable to third
party licensors with respect to the HG Branded Products (including
royalties payable to third parties for embedded technology) and shall, in
respect of any third party technology that it wishes to incorporate into
the HG Branded Products pay any and all expenses payable to any such third
parties in respect of such incorporation.
(b) Licensor shall be responsible for and shall pay any and all
expenses and/or license fees currently due and owing or payable to
existing third party licensors in respect of the Software Products
(including royalties payable to existing third parties for embedded
technology but not with respect to Serif products).
3.5 Technical Support. Licensee shall provide technical support to all users
of the Software Products at the expense of the Licensee.
3.6 Microgistix. Licensee shall treat Microgistix no less favorably than any
other reseller of the Software Products.
SETTLEMENT AGREEMENT
-11-
ARTICLE IV
ROYALTY & PAYMENT PROCEDURE
4.1 Royalties. (a) In consideration for the licenses granted herein, Licensee
shall pay Licensor in U.S. Dollars a royalty ("Royalty" or "Royalties"),
payable within 30 days after the end of each calendar quarter with respect
to such quarter commencing with the quarter ending June 30, 2001, as
follows: (i) with respect to Software Products, 12.5% of Net Receipts; and
(ii) with respect to any HG Branded Products by 3% of Net Receipts.
Notwithstanding the foregoing, Licensor shall be entitled to 100% of the
Net Receipts in connection with the OEM contract between Licensee and
Microgistix. For purposes hereof, Net Receipts shall mean the amounts
received by Licensee in connection with the sale, licensing or other
commercial exploitation of the Software Products, including any amendments
or improvements thereto, or HG Branded Products, as applicable, less (1)
any refunds, credits, discounts, allowances, rebates, returns and
adjustments consistent with normal business practices and (2) federal,
state, foreign or other taxes or tariffs imposed on the Software Products
or HG Branded Products, as applicable (not including any tax based on
Licensee's net income) and (3) any set-off, deduction or withholding which
the Licensee is required by law to set-off, deduct or withhold on behalf
of taxing authorities with respect to payments to Licensor.
(b) Together with each Royalty payment, Licensee shall deliver a report
setting forth the Software Products and HG Branded Products shipped, sold
and licensed, during the quarter to which the Royalty payment relates.
Such report shall set forth in detail all information reasonably necessary
to compute Net Receipts and Royalties due to Licensor relating to such
quarter. In the event a Royalty payment is not received on its due date,
such late payment shall accrue interest at a rate equal to the lesser of
(a) 12% per annum or (b) the maximum rate permitted by law.
4.2 Books and Records. Licensee agrees to maintain adequate books and records
relating to the production and distribution of the Software Products and
the HG Branded Products, and the receipt of payment with respect thereto,
which books shall be maintained in sufficient detail to enable Royalties
due hereunder to be calculated.
4.3 Audit. Licensee agrees that Licensor or an accountant or other
representative ("Auditor") acting on Licensor's behalf and at Licensor's
expense may audit the books and records of Licensee which relate to the
Software Products or the HG Branded Products and the quantity distributed
or supplied pursuant to this Agreement for the purposes of determining the
accuracy of Licensee's reports to Licensor. Licensor will provide to
Licensee a copy of the Auditor's written report within thirty days after
the audit is completed. Copies of all notes and work product shall remain
confidential pursuant to Section 7 of this Agreement. Audits shall not
occur more than twice per year and shall take place during normal business
hours, upon prior written notice, in such manner so as not to unreasonably
interfere with Licensee's business activities. If it is established by the
Auditor that there has been an underpayment to Licensor of 7.5% or more of
total Royalties due as at the date of the audit's completion, Licensee
shall pay Licensor all costs of such audit, together with all unpaid
Royalties.
SETTLEMENT AGREEMENT
-12-
ARTICLE V
REPRESENTATIONS, WARRANTIES AND INDEMNIFICATIONS
5.1 WARRANTY DISCLAIMER.
5.1.1 THE SOFTWARE PRODUCTS ARE PROVIDED AND LICENSED "AS IS" AND THERE
ARE NO WARRANTIES, REPRESENTATIONS, OR CONDITIONS, EXPRESSED OR
IMPLIED, WRITTEN OR ORAL, ARISING BY STATUTE, OPERATION OF LAW,
COURSE OF DEALINGS, USAGE OF TRADE OR OTHERWISE, REGARDING THEM, OR
ANY OTHER PRODUCT OR SERVICE PROVIDED HEREUNDER OR IN CONNECTION
HEREWITH BY LICENSOR. LICENSOR DISCLAIMS ANY IMPLIED WARRANTY OR
CONDITION OF MERCHANTABLE QUALITY, SATISFACTORY QUALITY,
MERCHANTABILITY, DURABILITY, OR FITNESS FOR A PARTICULAR PURPOSE. NO
REPRESENTATION OR OTHER AFFIRMATION OF FACT, INCLUDING BUT NOT
LIMITED TO STATEMENTS REGARDING PERFORMANCE OR CONDITION OF THE
SOFTWARE PRODUCTS, WHICH IS NOT CONTAINED IN THIS AGREEMENT, SHALL
BE DEEMED TO BE A WARRANTY, CONDITION OR REPRESENTATION BY LICENSOR.
5.1.2 LICENSEE NOT TO BIND. LICENSEE WILL GIVE AND MAKE NO WARRANTIES OR
REPRESENTATIONS ON BEHALF OF LICENSOR AS TO QUALITY, MERCHANTABLE
QUALITY, SATISFACTORY QUALITY, MERCHANTABILITY, FITNESS FOR A
PARTICULAR USE OR PURPOSE OR ANY OTHER FEATURES OF THE SOFTWARE
PRODUCTS AND LICENSEE SHALL NOT INCUR ANY LIABILITIES, OBLIGATIONS
OR COMMITMENTS ON BEHALF OF LICENSOR.
5.2 Compliance with Laws. Licensee shall comply with all laws, rules,
regulations and industry standards, including, without limitation, export
restrictions and prohibitions, existing with respect to its use, marketing
and distribution of the Software Products and HG Branded Products and the
performance by Licensee of its obligations hereunder in the jurisdictions
where Licensee carries on activities under this Agreement and where the
Software Products and HG Branded Products are distributed from time to
time. For each country in which Licensee intends to distribute the
Software Products or HG Branded Products, Licensee shall, at its own
expense, obtain and arrange for all government approvals, consents,
licenses, authorizations, declarations, filings, and registrations as may
be necessary or advisable for the distribution of the Software Products
and HG Branded Products according to the terms and conditions of this
Agreement, including but not limited to foreign exchange approvals, import
licenses, fair trade approvals, and customs clearance.
5.3 Intellectual Property Protection. Licensee will give Licensor prompt
written notice of any such third party claim and fully cooperate with
Licensor in the defense of such claim. In the event that Licensee becomes
aware that a third party is potentially infringing on Licensor's
Intellectual Property Rights licensed to Licensee hereunder, Licensee
shall promptly notify Licensor thereof in writing. Licensor shall, to the
extent it deems advisable, prosecute such infringement.
SETTLEMENT AGREEMENT
-13-
5.4 Indemnification. Licensor will indemnify Licensee against any and all
claims, demands, actions, costs (including all reasonable attorney's fees
and expenses), awards, damages and any other losses and/or liabilities
suffered by the Licensee and arising from or due to:
5.4.1 any third party claims that the Software Products or the Trademark
infringe the Intellectual Property Rights of such third party; and
5.4.2 any claims by any customers of the Software Products and/or
Technology under any of the Licensor's end-user licenses.
ARTICLE VI
TERMINATION
6.1 Immediate Termination. A party may immediately terminate this Agreement
and all the licenses granted hereunder if the other party is declared
bankrupt; makes a general assignment for the benefit of creditors; or
suffers or permits the appointment of a receiver, provided such action is
not dismissed within thirty days.
6.2 Material Breach. Either party may terminate this Agreement and all the
licenses granted hereunder upon ten days written notice for breach of the
terms of this Agreement unless such breach is cured within such ten days.
In addition, Licensor may terminate this Agreement for non-payment of
Royalties as provided hereunder unless Licensee cures such non-payment
within five days of notice of non-payment.
6.3 Licensor's Right to Terminate.
6.3.1 Licensor shall have the right to terminate the Software Licenses
granted hereunder and the rights granted pursuant to Sections 2.2,
2.3, 2.4 and 3.3, upon payment of a $75,000 termination fee to
Licensee, (i) during the 2001 Term and 2002 Term, if either Vizacom
Inc., the parent corporation of Licensor, or Licensor enters into a
strategic relationship with respect to the Harvard Graphics products
that are part of the Software Products, and (ii) at any time after
the 2002 Term for any reason, in each case such termination to be
effective sixty days after written notice thereof to Licensee.
6.3.2 In the event aggregate Royalties do not exceed $25,000 under this
Agreement during the 2001 Term, the 2002 Term or any succeeding
twelve month period, the Licensor may terminate this Agreement
without any liability or payment.
6.3.3 Licensor shall have the right to terminate the Trademark License
granted hereunder for any reason (i) during the 2001 Term or 2002
Term, upon payment of a $45,000 termination fee to Licensee, and
(ii) after the 2002 Term, without payment of a termination fee, such
termination to be effective sixty days after written notice thereof
to Licensee.
6.4 Effect of Termination.
SETTLEMENT AGREEMENT
-14-
6.4.1 In the event of any termination, Licensee shall pay to Licensor
immediately all Royalties due up through the termination date.
6.4.2 Replication of Software Products shall immediately cease upon
termination of the Software License. Notwithstanding the foregoing,
Licensee shall have the right to distribute any remaining inventory
of Software Products for a period of three months after termination
of the Software License, except that Licensee shall have the right
to distribute any remaining inventory and continue to perform for
the remainder of the term of existing OEM contracts, which shall
have a maximum full term of no more than two years, in effect at the
time of termination; provided that Licensee continues to pay
Royalties to Licensor.
6.4.3 Replication of HG Branded Products shall immediately cease upon
termination of the Trademark License. Notwithstanding the foregoing,
Licensee shall have the right to distribute any remaining inventory
of such products for a period of three months after such
termination, except that Licensee shall have the right to distribute
any remaining inventory and continue to perform for the remainder of
the term of existing OEM contracts, which shall have a maximum full
term of no more than two years, in effect at the time of
termination; provided that Licensee continues to pay Royalties to
Licensor.
ARTICLE VII
CONFIDENTIALITY
7.1 Definition. Confidential Information means (a) information received by
either party relating to this Agreement; (b) information disclosing any of
the business practices of either party, as applicable, including without
limitation, Licensor's or Licensee's pricing and marketing practices,
revenue information and relationships with licensors, authorized
resellers, or customers; (c) specifications or other technical information
about or concerning the Software Products or business models; (d)
information designated by either party as confidential in writing or, if
disclosed orally, identified as confidential at the time of disclosure;
and (e) the terms and conditions of this Agreement, but not the existence
of this Agreement. It does not include information, technical data, or
know-how which is (w) already published or available to the public other
than by a breach of this Agreement; (x) rightfully received from a third
party not in breach of any obligation of confidentiality; (y)
independently developed by personnel or agents of the receiving party
without access to the Confidential Information of the other party; or (z)
produced in compliance with applicable law or a court order, provided that
the receiving party first gives the disclosing party reasonable notice of
such law or order, provides reasonable cooperation to the disclosing party
in its efforts to lawfully limit disclosure, and gives the disclosing
party opportunity to defend and/or attempt to limit such production.
SETTLEMENT AGREEMENT
-15-
7.2 Confidentiality. During the term of this Agreement and thereafter, each
party shall safeguard and keep confidential the other party's Confidential
Information and will not, without prior written consent, disclose the
other party's Confidential Information, in whole or in part, except as
authorized in writing. Each party agrees to protect the Confidential
Information as it would its own information of a like nature against
unauthorized use, dissemination, or publication. No use of the
Confidential Information is permitted except as authorized by the
disclosing party and provided herein. Confidential Information may only be
disclosed to agents or employees of the receiving party who need to know
such information and in those instances only to the extent justified by
that need.
7.3 Return. Upon termination of this Agreement and request of the disclosing
party, the receiving party shall return all copies of the other party's
Confidential Information to the other party or certify in writing that all
copies of the Confidential Information have been destroyed. A party may
return Confidential Information, or any part thereof, to the other party
at any time. The obligations of this Section 7 will survive any return or
destruction of the Confidential Information.
ARTICLE VIII
ADMINISTRATIVE PROVISIONS
8.1 Entire Agreement. This Agreement represents the final, complete and
exclusive agreement between the parties concerning the matters
contemplated hereby. Any amendments or modifications to this Agreement
must be in writing and signed by both parties to this Agreement.
8.2 Counterparts. This Agreement may be executed in counterparts, and a
facsimile copy of this Agreement signed by Licensee, transmitted to
Licensor, and countersigned by Licensor shall constitute a binding
Agreement.
8.3 Severability; Waiver. This Agreement is severable and the invalidity of
any term or condition shall not affect the validity of any other term or
condition. Any delay or failure to enforce a provision of this Agreement
shall not be deemed to constitute a waiver of the same.
8.4 Governing Law; Arbitration. This Agreement shall be governed by the laws
of the United States and the State of New York (without regard to its
principles of conflicts of laws) and any legal action brought pursuant to
this Agreement shall be brought in the state or federal courts located in
the Southern District of New York. Each of the parties hereto irrevocably
consents to the exclusive jurisdiction of any state or federal court
within the State of New York, in connection with any matter based upon or
arising out of this Agreement or the matters contemplated herein, and
agrees that process may be served upon them anywhere in the world.
8.5 Force Xxxxxx. Notwithstanding any provisions in this Agreement to the
contrary, neither party shall be liable to the other, nor shall any breach
of this Agreement occur, by reason of any delay or loss reasonably
incurred by Acts of God, fire, natural disaster, governmental order,
material shortages, war, riot, work stoppage or strike.
SETTLEMENT AGREEMENT
-16-
8.6 Independent Contractors. The parties hereto shall for all purposes be
deemed to be independent contractors. Nothing in this Agreement shall be
construed as making either Licensor or Licensee the agent of, or in joint
venture with, the other party.
8.7 Assignment. Neither party may assign this Agreement without the express
written consent of the other party, except that no consent shall be
required in the event of a merger, consolidation or sale of all or
substantially all of the assets of either party. A change in control of
Licensee shall be deemed an assignment for purposes hereof. The provisions
of this Agreement shall inure to the benefit of and be binding upon the
parties hereto, their successors or assigns.
8.8 Notices. All notices shall be in writing and either mailed or sent by
facsimile or nationally recognized overnight courier to the parties at the
addresses noted below to the attention of the appropriate persons. Notices
may also be sent by confirmed delivery of electronic mail when the
electronic mail addresses are known. All Royalty reports and payments will
be sent to Licensor at the address set forth below. Either party may
change the address for notices by giving notice to the other party as
provided herein.
If sent to Licensor: If sent to Licensee:
Software Publishing Corporation Serif (Europe) Limited
c/o Vizacom Inc. Xxxx 00
00 Xxxx Xxxxxx Xxxxxxx Xxxxxxxxxx Xxxxxx
New York, NY 10038 Xxxxxxxxxx, XX00 0XX
Attn: Accounting Department Attn: Financial Director
Fax: 000-000-0000 Fax: 0000 000 0000
With a copy to: With a copy to:
Xxxx X. Xxxxxxx, Esq. Xxxxxx Xxxxx, Esq
Xxxxxxx & Xxxxxxxx, LLC Xxxxxxx Wareing
50 Xxxxxxx Xxxxxxxxx Blvd. Cumberland House
Xxxxxxx Xxxxx, XX 00000 00 Xxxx Xxx, Xxxxxxxxxx
Fax: 000-000-0000 XX0 0XX
Fax: 0000 000 0000
8.9 The provisions of Articles IV, V, VII and clauses 6.4, 8.4 and this shall
survive termination of this Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed as of the Effective Date.
SERIF (EUROPE) LIMITED SOFTWARE PUBLISHING CORPORATION
By: /s/ Xxxx Xxxxx By: /s/ Xxxxxxx XxXxxxxx
-------------------------- ---------------------------
Name: Xxxx Xxxxx Name: Xxxxxxx XxXxxxxx
Title: Director Title: President
SETTLEMENT AGREEMENT
-17-
