EXHIBIT 10.6
EXCLUSIVE SOFTWARE LICENSE AGREEMENT
THIS AGREEMENT is between the UNIVERSITY OF SOUTHERN CALIFORNIA,
(hereinafter University) a California nonprofit corporation with its principal
place of business at Xxxxxxxxxx Xxxx, Xxx Xxxxxxx, Xxxxxxxxxx 00000, and GK
INTELLIGENT SYSTEMS, INC., a corporation organized under the laws of Delaware,
with its principal place of business at 0000 Xxxxxx Xxxxx, Xxxxx 000, Xxxxxxx,
Xxxxx, 00000 (hereinafter Licensee).
WHEREAS, University is the owner of certain computer programs and supporting
documentation arising from research funded in part by the U.S. Government; and
WHEREAS, Licensee has represented to University that it believes that it has the
necessary product development capabilities, manufacturing know-how and marketing
resources to introduce products based upon such intellectual property rights
through its own channels of distribution, and Licensee believes that products
based on University intellectual property and the aforesaid product development
efforts will prove to be technically and commercially feasible;
WHEREAS, Licensee desires to license the intellectual property and supporting
documentation.
NOW, THEREFORE, in view of the above premises and in consideration of the terms
and conditions set forth below, University and Licensee agree as follows:
I DEFINITIONS
1.1 "Author" shall collectively mean Xx. Xxx-Min Xxxx.
1.2 "Object Code" means machine-readable, executable code of a computer
program.
1.3 "Derivative Work" means a work which is based upon one or more
pre-existing copyrightable or copyrighted material, such as a revision,
modification, translation, abridgement, condensation, expansion, collection,
compilation, or any other in which such pre-existing works may be recast,
transformed, or adapted such that, in the absence of this Agreement, the
preparation, copying, use, distribution, and/or display thereof would constitute
an infringement of the pro-existing material.
1.4 "Distributor" means any party who Licensee sublicenses the rights
granted in Paragraphs 2.1.1, 2.1.2, and 2.1.3 herein.
1.5 "Effective Date" means the date as of which this Agreement is duly
executed by both parties.
1.6 "End User" means the party licensed to use the Licensed Program and/or
Licensee Derivative Works under an End User License Agreement with Licensee.
1.7 "End User License Agreement" means an end use license agreement
between an End User and Licensee.
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1.8 "Licensed Program" means a computer program which embodies "DATA
CRYSTAL" which is software designed for data mining and discovering relational
patterns from databases as defined in USC File No.367 and the USC Record of
Software therein contained but excludes any changes, modifications, additions or
enhancements thereto which may be made by University from time to time during
the term hereof.
1.9 "Licensee Derivative Work" means a Derivative Work made by Licensee.
1.10 "Net Revenues" means the gross billing revenues on the entire package
received by Licensee for leasing, licensing or otherwise providing Licensed
Programs or User Documentation to End Users, less the amounts actually paid by
Licensee for:
1.10.1 any direct or indirect credits and allowances and adjustments
granted to End Users on account of the rejection or return of
Licensed Program previously leased or licensed;
1.10.2 packing and transportation packing material costs (not
including product containers or product packing containers as
manufactured by Licensee);
1.10.3 customs and duties levied on the Licensed Programs; and
1.10.4 sales, transfer and other excise taxes or other governmental
charges levied on or measured by sales of Licensed Programs,
but no franchise or income tax of any kind whatsoever.
1.11 "Principal Investigator" shall mean Dr. Wel-Min Shen.
1.12 "Source Code" means code of a computer program that is not
executable, by a computer system directly but must be converted into machine
language by compilers, assemblers, and/or interpreters, as well as
documentation, release notes, or other specifications which describe the
content, organization, and structure of the Source Code included therein to the
extent that such documentation is available.
1.13 "University Derivative Work" means a Derivative Work made by
University.
1.14 "User Documentation" means any human-readable program listings, flow
charts, logic diagrams, Input and output forms, manuals, specifications,
instructions, and other materials, and any copies of any of the foregoing, in
any medium, related to the Licensed Programs and delivered to the Licensee under
this license.
2 LICENSE GRANT
2.1 Subject to the terms and conditions, as set forth in this Agreement
University hereby grants to Licensee a nontransferable, exclusive, worldwide
license to:
2.1.1 use, modify and copy the Licensed Program in Source Code form
and the User Documentation solely to develop or have developed
Licensee Derivative Works;
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2.1.2 compile the Source Code of the Licensed Program and Licensee
Derivative Works into Object Code;
2.1.3 use, copy, license, market and distribute the User
Documentation, Licensed Program, and Licensee Derivative Works
in Object Code form only to End Users; and
2.l.4 sublicense the rights granted in Paragraphs 2.1.l, 2.1.2 and
2.1.3 herein to Distributor subject to the conditions and
obligations of Paragraphs 2.3, 2.4 and Paragraph 10.
2.2 Prior to Licensee furnishing the Licensed Program, or any Licensee
Derivative Work to an End User, Licensee shall obtain a signed agreement from
the End User, the terms and conditions of which shall be consistent with the
relevant term's and conditions of this Agreement. Upon termination of this
Agreement under Paragraph 5, the rights and licenses granted to Licensee shall
immediately terminate except that Licensee may continue to use the Licensed
Program solely in connection with maintenance and support of the Licensee
Derivative Works licensed to existing End Users, but only for so long as
Licensee is contractually bound to provide such support and maintenance.
Licenses previously granted to End Users shall terminate in accordance with the
terms and conditions of the written agreement with the End Users.
2.3 Prior to Licensee furnishing the Licensed Program, or any Licensee
Derivative Work to a Distributor, Licensee shall obtain a signed agreement from
the Distributor, the terms and conditions of which shall be consistent with the
relevant terms and conditions of this Agreement Upon termination of this
Agreement under Paragraph 5, the rights and licenses granted to Licensee and
Distributor shall immediately terminate except that Licensee and Distributor may
continue to use the Licensed Program solely in connection with maintenance and
support of the Licensee Derivative Works licensed to existing End Users, but
only for so long as Licensee and Distributor are contractually bound to provide
such support and maintenance. Licenses previously granted to End Users shall
terminate in accordance with the terms and conditions of the written agreement
with the End Users.
2.4 The rights granted in Paragraph 2.1 4 shall not allow the Licensee to
grant the same right to its Distributors.
2.5 The License grunted in Paragraph 2.1 shall not include University
Derivative Works unless University, at it sole option, agrees in writing to a
license to such University Derivative Works.
2.6 The parties expressly acknowledge that, notwithstanding the rights
granted to Licensee herein, University retains the right to furnish copies to
the U.S. Government of that version of the Licensed Program which was developed
pursuant to a U.S. Government grant. The U.S. Government has certain rights in
the software, technical data and other intellectual property developed by the
University under contract with the U.S. Government, including but not limited to
the rights defined in 48 CFR Part 52 and 48 CFR Part 227, and the license
granted to Licensee hereunder is subject to such rights of the U.S. Government.
University reserves the right to use, distribute, promote, advertise and/or
license for educational and research purposes the Licensed Programs, User
Documentation and University Derivative Work.
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2.7 Licensee shall reproduce any copyright notice, trademark notice or
other proprietary legend which appears on or in the Licensed Programs.
University Derivative Works and User Documentation on or in all copies or
duplications made by Licensee. In addition, Licensee agrees to use on or in the
Licensed Programs, University Derivative Works and User Documentation any
copyright notice, trademark notice of other proprietary legend that the
University may designate from time to time. Except foregoing specified use of
trademark notices, Licensee is not authorized to, and shall not, use any
trademark, service xxxx, trade name, symbol or logo of the University or the
Principal Investigator (collectively, "Trademarks"), including without
limitation the "DATA CRYSTAL" xxxx. Should Licensee desire to obtain the right
to use any of the Trademarks, Licensee may apply for a separate trademark
license through the University's Trademarks and Licensing Services.
3 LICENSE FEE AND ROYALTIES
3.1 For the rights and privileges granted under this Agreement and subject
to the terms and conditions of this Agreement, Licensee will pay to University
an initial nonrefundable license fee of Twenty-five Thousand Dollars ($ 25,000)
within ten (10) days of the Effective Date.
3.2 Earned Royalties: Licensee agrees to pay to University Earned
royalties of Five percent (5%) of Net Revenues of the sale of Smart Access when
the Licensed Programs are used as part of the Smart Access System. The Earned
Royalty Rate for stand-alone use of the Licensed Programs stall be a forty
percent (40%) of Net Revenues from the sale of the Licensed Programs. The
agreed-upon royalty rates which correspond to Smart Access with the Licensed
Programs and the Licensed Programs stand-alone shall also apply to any
applicable Net Revenues earned from any corresponding use or sales or rendering
services which use the Smart Access with Licensed Programs or stand-alone the
Licensed Programs software. Earned Royalties shall not be collected on
consulting services for maintenance or configuration of the system. Earned
Royalties will be due and payable within thirty (30) days after the end of each
calendar quarter (March 31, June 30, September 30 and December 31).
3.3 Annual Minimum Royalties: Annual Minimum Royalties shall be
Twenty-five Thousand Dollars ($25 ,OOO) per year calendar year until this
Agreement is terminated. Annual Minimum Royalties shall be due within thirty
(30) days of each December 31st following the Effective Date for the duration of
the Agreement. The Annual Minimum Royalty for the first and last year of this
Agreement shall be prorated based on the number of days the Agreement is
effective for the given year. In the event that Earned Royalties in any Contract
Year shall be less than the Annual Minimum Royalties, Licensee shall pay the
difference between Earned Royalties and Annual Minimum Royalties with the
payment for the fourth quarter of the Contract Year. The Maximum Annual Royalty
shall be Two Hundred Thousand Dollars ($200,000) per calendar year until this
Agreement is terminated.
3.4 With each quarterly payment, Licensee shall deliver to University a
full and accurate written accounting statement to include at least the following
information:
3.4.1 Total number of Licensed Programs leased or licensed (by
country);
3.4.2 Net Revenues received during the quarter, together with
complete detail necessary to compute such Net Revenues; and
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3.4.3 Royalty due to University.
3.5 The Licensee Fee, Earned Royalties and Annual Minimum Royalties as
stated in United States dollars and shall be paid in United States dollars in
Los Angeles, California, or at such other place as University may reasonably
designate; provided, however, that if the laws and regulations controlling in
any foreign country prevent a royalty payment to be made in Los Angeles,
California, or at University's designated place or prevent a royalty payment in
United States dollars, University agrees to accept such royalty in the form and
place as permitted, including deposits by Licensee in the applicable foreign
currency in a local bank or banks designated by University.
3.6 The Earned Royalty and Annual Minimum Royalty payments due under this
Agreement shall, if overdue, shall be subject to a late payment charge equal to
one and a half percent (1.5%) above the prime rate in effect at Bank of America
on the due date, or the maximum permitted by law, whichever is less . The
payments of such late payment charges shall not preclude University from
exercising any other rights it may have as a consequence of the lateness of any
royalty payment.
3.7 Licensee shall keep complete, true and accurate books of account and
records for the purpose of showing the derivation of all amounts payable to
University under this Agreement. Said books and records shall be kept at
Licensee's principal place of business for at least four (4) years following the
end of the calendar year to which they pertain and shall be open at all
reasonable times for inspection by a representative of University for the
purpose of verifying Licensee's royalties statement or Licensee's compliance in
other respects with this Agreement. The representative may disclose to
University the aggregate amount of royalties due to University during each year,
as determined in such audit. Should an audit by University show an underpayment
of royalties by more than ten percent (10%), Licensee shall immediately pay such
underpayment and all interest, as well as for University's reasonable audit
expenses and any late payment charges.
4 DELIVERY AND INSTALLATION
4.1 The Principal Investigator shall deliver one (1) copy of the Licensed
Program in both Source and Object Code forms and User Documentation to Licensee
within two (2) days after receipt of license fee set forth in Paragraph 3.1
above.
4.2 Licensee shall be solely responsible for installation of the Licensed
Program and/or Licensee Derivatives Works on its equipment.
5 TERM AND TERMINATION
5.1 The term of this Agreement shall commence on the Effective Date and
shall continue until terminated in accordance with the provisions of this
Paragraph.
5.2 Upon any breach or default by Licensee, University shall have the
right to terminate this Agreement and the rights and license granted hereunder
by sixty (60) days notice by certified mail to Licensee. Such termination shall
become effective unless Licensee has cured any such breach or default prior to
the expiration of the sixty (60) day period.
5.3 Licensee may terminate this Agreement upon ninety (90) days written
notice by certified mail to University.
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5.4 No fees shall be returnable upon the termination of this Agreement.
5.5 Upon termination of this Agreement for any reason, nothing herein
shall be construed to release either party of any obligation which matured prior
to the date of such termination. Licensee may, after the date of such
termination, perform under customer warranties with respect to any Licensed
Products leased, licensed, or otherwise disposed of under the terms of this
Agreement, but may not solicit, sell, lease or license Licensed Products to any
new End Users or Distributors. Annual Minimum Royalties due upon termination
shall be pro rated for the amount of the Contract Year that has passed prior to
termination.
5.6 Surviving any termination are:
5.6.1 Any cause of action or claim of Licensee or University,
accrued or to accrue because of any breach or default by the
other party.
5.6.2 The provisions of Paragraphs 3.2, 3.3, 3.7, 5.8, 6, 7 ,8, 9
and 11.
5.7 If Licensee shall become bankrupt or admits in writing its inability
to pay debts as they mature or files a petition in bankruptcy, or if the
business of Licensee shall be placed in the hands of a receiver, assignee or
trustee for the benefit of creditors, whether by the voluntary act of Licensee
or otherwise, or if Licensee fails to secure or maintain the Insurance required
in Paragraph 9 herein, University may, at its election, terminate this Agreement
immediately upon written notice to Licensee.
5.8 Upon termination Licensee shall:
5.8.1 delete the Licensed Programs from all other software into
which it had been merged;
5.8.2 immediately deliver to University or destroy all copies of the
licensed programs and support materials; provided that, upon
licensor's written consent, licensee way retain one copy of
the Licensed Programs and User Documentation for archive
purposes only;
5.8.3 erase all Licensed Programs from any storage media before
discarding the storage media;
5.8.4 within one (1) month after the termination of the license,
certify in writing to University that, to the best of the
Licensee's knowledge, all copies of the Licensed Programs and
User Documentation have been returned or destroyed; and
5.8.5 Forever cease from any use or distribution of the Licensed
Programs, User Documentation, Licensee Derivative Works and
University Derivative Works.
5.9 Licensee acknowledges and agrees that any violation of this Agreement
by Licensee would result in irreparable harm to the University. Accordingly,
Licensee consents and
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agrees that, if Licensee violates any of the provisions of this Agreement, the
University shall be entitled, in addition to other remedies available to it, to
an injunction to be issued by any court of competent jurisdiction restraining
Licensee from committing or continuing any violation of this Agreement, without
the need for posting any bond or any other undertaking.
6 CONFIDENTIALITY
6.1 All confidential scientific and technical information communicated by
University to Licensee under this Agreement and identified as "Confidential" at
the time of disclosure to Licensee or within a reasonable period of time
thereafter, including information contained in patent applications, shall be
kept confidential by Licensee. Licensee will exercise reasonable care, including
but not limited to the restricted activities identified in Paragraph 6.2, to not
disclose any confidential information to any third party. Source Code for the
Licensed Product shall be considered confidential. Notwithstanding the
foregoing, Licensee shall be relieved of the confidentiality obligations herein
and not be prevented by this Agreement from utilizing any information received
by it from University if:
6.1.1 the information was previously known to Licensee as evidenced
by written records;
6.1.2 the information is or becomes generally available to the
public through no fault of Licensee, Distributors or End Users
including publication and/or laying open to inspection of any
patent applications or patent that University may file
corresponding to such United States patent applications;
6.13 the information is disclosed in response to an order or demand
of any court or governmental body having jurisdiction
thereover; provided that Licensee provide University with
prompt written notice of any demand or order of disclosure.
6.2 Licensee shall take all reasonable steps to maintain the
confidentiality of the confidential information. The Licensee shall not, without
University's prior written consent disclose, provide, or make available any of
the confidential information in any form to any person, except to employees or
consultants of licensee whose access is necessary to enable the Licensee to
exercise Its rights under this license. The Licensee shall require any employee
or consultant having such access to agree to maintain the confidentiality of the
confidential information.
7 WARRANTIES
7.1 University warrants that the Licensed Programs and User Documentation
are original works of authorship.
7.2 THE LICENSED PROGRAM IS FURNISHED TO LICENSEE AS-IS. UNIVERSITY MAKES
NO REPRESENTATIONS OR WARRANTIES, EXPRESS OR IMPLIED. BY WAY OF EXAMPLE, BUT NOT
LIMITATION, UNIVERSITY MAKES NO REPRESENTATIONS OR WARRANTIES OF MERCHANTABILITY
OR FITNESS FOR ANY PARTICULAR PURPOSE, OR THAT THE USE OF THE LICENSED PROGRAM,
OR
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COMPONENTS THEREOF, OR USER DOCUMENTATION WILL NOT INFRINGE ANY PATENTS,
COPYRIGHTS, TRADEMARKS OR OTHER RIGHTS. UNIVERSITY SHALL NOT BE HELD LIABLE FOR
ANY LIABILITY NOR FOR ANY DIRECT, INDIRECT OR CONSEQUENTIAL DAMAGES WITH RESPECT
TO ANY CLAIM BY LICENSEE OR ANY THIRD PARTY ON ACCOUNT OF OR ARISING FROM THIS
AGREEMENT OR USE OF THE LICENSED PROGRAM OR USER DOCUMENTATION. USC'S AGGREGATE
LIABILITY UNDER THIS AGREEMENT TO LICENSEE SHALL NOT EXCEED THE LICENSE FEE AND
ROYALTY PAID HEREUNDER BY LICENSEE.
7.3 Nothing in this Agreement shall be construed as;
7.3.1 a warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted in this
Agreement is or will be free from infringement of patents,
copyrights and trademarks of third parties;
7.3.2 conferring rights to either party to use in advertising
publicity or otherwise, the name of the other party or of its
employees, subsidiaries or sublicensees except in accordance
with the terms of this Agreement.
8 INDEMNIFICATION
8.1 Licensee shall defend, indemnity and bold harmless University and its
trustees, officers, professional staff, employees and agents and their
respective successors, heirs and assigns (the "Indemnitees"), against all
liability, demand, damage, loss, cost or expense incurred by or imposed upon the
Indemnitees or any one of them in connection with any claims, suits, actions,
demands or judgments, including without limitation those arising out of any
theory of product liability (including but not limited to, actions in the form
of tort, warrantee, or strict liability) for death, personal injury, illness, or
property damage, arising from Licensee's manufacture, design, advertisement,
promotion, use, sale or other disposition of the Licensed Programs, Licensee
Derivative Works, University Derivative Works and/or Documentation.
8.2 Licensee agrees, at its own expense, to provide attorneys reasonably
acceptable to University to defend against any actions brought or filed against
any party indemnified hereunder with respect to the subject of indemnity
contained herein, whether or not such actions are rightfully brought.
9 INSURANCE
9.1 Upon the execution of this Agreement, Licensee shall at its sole cost
and expense, procure and maintain in effect a comprehensive general liability
policy of insurance in single limit coverage of not less than One Million
Dollars ($1,000,000) per incident and One Million Dollars ($1,000,000) annual
aggregate for death, bodily injury or illness and Two Hundred Thousand Dollars
($200,000) annual aggregate in property damage. Such comprehensive general
liability insurance shall provide (i) product liability coverage and (ii) broad
form contractual liability coverage for Licensee's indemnification. If Licensee
elects to self-insure all or part of the limits described above (including
deductibles or retention which are in excess of $50,000 annual aggregate) such
self-insurance program must be acceptable to University. Each such policy of
insurance shall name University as an additional insured and shall provide for
not less than thirty (30) days prior written notice to University before any
cancellation or material change in coverage shall be effective. A
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Certificate evidencing the comprehensive general liability policy herein defined
shall be delivered to University within ten (10) days of the Effective Date of
this agreement. Licensee shall maintain such comprehensive general liability
insurance for fifteen (15) years after the term of this Agreement.
9.2 Alternatively, Licensee and University may obtain an independent
opinion from legal counsel mutually agreeable to the parties in each country in
which Licensee intends to market, advertise, license, manufacture and/or
distribute Licensee Derivative Works, University Derivative Works, Licensed
Programs and User Documentation, such opinion to assist in determining the
amount of general and products liability insurance required to be carried by
Licensee in such country. Where independent legal counsel determines that little
or no liability risk to University exists under the present and reasonably
anticipated future legal trends in that country, Licensee will be required to
maintain liability insurance on University's behalf which is determined by
University to be reasonably adequate to pay litigation defense costs. Where
independent legal counsel determines that the risk of liability on the part of
University is more than minimal in that country, University and Licensee will
evaluate such risk and negotiate in good faith to determine the amounts of
liability insurance necessary to reasonably insure University's interests. If
University and Licensee cannot agree on the amounts and types of insurance
reasonably necessary to protect University's interest in a particular country,
Licensee will not manufacture, or market, advertise, license or distribute the
Licensee Derivative Works, University Derivative Works, Licensed Programs or
User Documentation in that country.
9.3 The minimum amounts of insurance coverage required under this
Paragraph (subparts 9.1 and/or 9.2) shall not be construed to create a limit of
Licensee's liability with respect to its indemnification in Paragraph 8 of this
Agreement.
10 ADDITIONAL CONDITIONS ON GRANTING RIGHTS TO DISTRIBUTORS
10.1 Licensee shall include in the terms of any agreement granting rights
to a Distributor a provision obligating the Distributor to defend, indemnity and
hold harmless University and its trustees, officers, professional staff,
employees and agents and their respective successors, heirs and assigns (the
"Indemnitees"), against all liability, demand, damage, loss, or expense incurred
by or imposed upon the Indemnitees or any one of them in connection with any
claims, suits, actions, demands or judgments, including without limitation those
arising out of any theory of product liability (including but not limited to,
actions in the form of tort, warrantee, or strict liability) for death, personal
injury. illness, or property damage, arising from Distributor's manufacture,
design, advertisement, promotion, license, use, sale, or other disposition of
the Licensed Programs, Licensee Derivative Works, University Derivative Works,
and/or User Documentation.
10.2 Licensee shall include in the terms of any agreement granting rights
to a Distributor a provision obligating the Distributor to procure and maintain
in effect, at Its sole cost and expense, a comprehensive general liability
policy of insurance in single limit coverage of not less than One Million
Dollars ($1,000,OOO) per incident and One Million Dollars ($1,000,000) annual
aggregate for death, bodily injury or illness and Two Hundred Thousand Dollars
($200,000) annual aggregate in property damage. Such comprehensive general
liability insurance shall provide (I) product liability coverage and (II) broad
form contractual liability coverage for Distributor's indemnification. If
Distributor elects to self-insure all or part of the limits described above
(including deductibles or retention which are in excess of $50,000 annual
aggregate) such self-insurance program must be acceptable to university. Each
such policy of Insurance shall name University as an additional insured and
shall provide for not less than thirty (30) days prior written notice to
University before
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any cancellation or material change in coverage shall be effective. A
Certificate evidencing the comprehensive general liability policy herein defined
shall be delivered to University within ten (10) days of the effective date of
the agreement between Licensee and Distributor. Distributor shall maintain such
comprehensive general liability insurance for fifteen (15) years after the term
of this Agreement.
11 MISCELLANEOUS
11.1 RELATIONSHIP OF THE PARTIES. In rendering performances under this
Agreement, Licensee will function solely as an independent contractor and not as
agent, partner, employee or joint venturer, with University. Nothing in this
Agreement shall be deemed or construed to create the relationship of principal
and agent, or of partnership or joint venture, and neither party shall hold
itself out as an agent, legal representative, partner, subsidiary, joint
venturer, servant or employee of the other. Neither party nor any officer,
employee, agent of representative thereof shall, in any event, have any right,
collectively or individually, to bind the other party, to make any
representations or warranties, to accept service of process, to receive notice
or to perform any act or thing on behalf of the other party, except as expressly
authorized under this Agreement or in writing by such other party in its sole
discretion.
11.2 HEADINGS. The headings used herein are intended solely for ease of
reference, and are not intended to describes construe or interpret this
Agreement.
11.3 NON WAIVER. A waiver of any breach of any provision of this Agreement
shall not be construed as a continuing waiver of said breach or a waiver of any
other breaches of the same or other provisions of this Agreement.
11.4 EXPORT. It is understood and agreed that University is subject to
United States laws and regulations controlling the export of technical data,
computer software, laboratory prototypes and other commodities (such laws
include the Arms Export Control Act, as amended and the Export Administration
Act), and that its obligations hereunder are contingent on compliance with
applicable United States export laws and regulations. The transfer of certain
technical data and commodities by the Licensee may require a license from the
cognizant agency of the United States Government and/or written assurances by
Licensee that Licensee shall not export data or commodities to certain foreign
countries without prior approval of such agency. University neither represents
that a license shall not be required nor that, if required, it shall be issued.
Licensee shall not engage in any activity in connection with this Agreement that
is in violation of any applicable U.S. law.
11.5 ASSIGNMENT. Licensee may not assign or transfer this Agreement in
whole or part to any third party without the prior written permission of
University, which permission shall not be unreasonably withheld. Notwithstanding
the foregoing, Licensee may only assign the entire Agreement to successors of
the entire business of the Licensee if the successor agrees in writing to be
bound by this Agreement and prior written notice is provided to University.
11.6 ATTORNEY FEES. If any action in law or in equity is brought to
enforce or interpret the provisions of this Agreement, the prevailing party is
entitled to all costs, expenses and reasonable attorney's fees, costs, and
expenses, in addition to any other relief to which the prevailing party may be
entitled.
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11.7 NOTICE. Any payment, notice or other communication pursuant to this
Agreement shall be sufficiently made or given on the date of mailing if sent to
such party by certified first class mail, postage prepaid, at the respective
addresses given below. The parties shall promptly notify each other in writing
of any changes in address.
In the case of University:
Director
Office of Patent and Copyright Administration
University of Southern California
0000 X. Xxxx Xxxxxx
Xxx Xxxxxxx, XX 00000-0000
In the case of Licensee:
President
OK Intelligent Systems, Inc,
0000 Xxxxxx Xxxxx, Xxxxx 000
Xxxxxxx, XX 00000
11.8 PUBLICATIONS. Nothing in this Agreement shall limit or prevent
University or Principal Investigator from publishing any information about the
Licensed Program or User Documentation.
11.9 SEVERABILITY. If any provision of this Agreement is determined to be
invalid or unenforceable under any controlling body of law, such invalidity or
unenforceability shall not in any way affect the validity of enforceability of
the remaining provisions hereof.
11.10 USE OF NAMES. Neither party shall use the name, trade name,
trademark or other designation of the other party in connection with any
products. promotion or advertising without the prior written permission of the
other party.
11.11 GOVERNING LAW. This Agreement shall be deemed to be executed and to
be performed in the State of California, and shall be construed in accordance
with the laws of the State of California as to all matters, including but not
limited to matters of validity, construction, effect and performance.
11.12 VENUE. In the event of any controversy, claim or dispute between the
parties arising out of or relating to this Agreement, such controversy, claim or
dispute may be tried solely in the courts of the State of California for the
County of Los Angeles or in the United States Federal District Court for the
Central District of California, as either party may elect, and both parties
hereto irrevocably consent to the exclusive jurisdiction and venue of such
courts. Both parties irrevocably waive any objection to such jurisdiction and
irrevocably waive the right to seek dismissal or transfer on the grounds lack of
in personam jurisdiction, improper venue, forum non conveniens or similar
grounds. Both parties acknowledge and agree that, in addition to any other
manner permitted by law, service of process of any such court may be by
certified mail to the parties' respective addresses set forth in Section 11.7
hereof. Both parties irrevocably waive any objection to such service of process
and irrevocably waive the right to seek dismissal on the grounds improper or
lack of service or similar grounds.
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11.13 ENTIRE AGREEMENT. This Agreement constitutes the entire agreement
between the parties concerning the subject matter hereof. No amendment of this
Agreement shall be binding on the parties unless mutually agreed to and executed
in writing by each of the parties.
UNIVERSITY OF SOUTHERN CALIFORNIA GK INTELLIGENT SYSTEMS, INC.
/s/ XXXXXX X. XXXXXXXXX XXXX X. XXXXXXX
(Signature) (Signature)
Xxxxxx X. Xxxxxxxxx Xxxx X. Xxxxxxx
(Print or Type Name) (Print or Type Name)
Sr. Vice President, Administration President & CEO
(Official Title) (Official Title)
5/8/97 4/29/97
(Date) (Date)
12
