EXHIBIT 10.23
ASSIGNMENT AGREEMENT
This Assignment Agreement (this "Agreement") is made as of May 7, 1999 (the
"Effective Date"), by and between IDT Corporation, a Delaware corporation with
its principal place of business at 000 Xxxx Xxxxxx, Xxxxxxxxxx, Xxx Xxxxxx 00000
("Assignor"), and Net2Phone, Inc., a Delaware corporation with its principal
place of business at 000 Xxxx Xxxxxx, Xxxxxxxxxx, Xxx Xxxxxx 00000 ("Assignee")
(hereinafter referred to collectively as the "Parties" and individually as a
"Party").
RECITALS
WHEREAS, Assignor has heretofore irrevocably transferred and assigned to
Assignee all of its rights, title and interest, on a worldwide basis, including,
without limitation, all intellectual property rights and moral rights, in and to
certain proprietary products, patent applications and proprietary information
set forth herein (excluding any trademark rights) as part of its initial and
original capital contribution in Assignee, and the Parties wish to memorialize
such transfer and assignment in this Agreement;
WHEREAS, Assignor desires and agrees to irrevocably assign to Assignee as
of the Effective Date all of its rights, title and interest, on a worldwide
basis, including, without limitation, all intellectual property rights and moral
rights, in and to certain proprietary products, patent applications and
proprietary information, as set forth herein, that otherwise have not been
transferred and assigned to Assignee prior to the Effective Date, as well as
certain trademark rights as set forth herein;
WHEREAS, except for any ownership interest already held by Assignee,
Assignor is the sole owner of all rights, title and interest, including, without
limitation, all intellectual property rights, in and to such proprietary
products, patents, trademarks, proprietary information and proprietary business
information; and, with respect to the trademarks, Assignee is a successor to a
portion of the business of the Assignor to which these trademarks pertain;
WHEREAS, Assignor has agreed to irrevocably assign to Assignee all of its
rights, title and interest on a worldwide basis, including, without limitation,
all intellectual property rights and moral rights, in and to certain non-
proprietary products set forth herein to the full extent that Assignor has a
license for such rights and subject to and contingent upon Assignor having the
right and necessary consents to assign such license;
WHEREAS, Assignor is a licensee of certain rights in and to such non-
proprietary products;
WHEREAS, Assignor has agreed to license to Assignee certain rights in and
to certain proprietary business information relating to the business operations
of Assignee and the combined business operations of Assignor and Assignee; and
WHEREAS, to enable Assignor to continue its current use of certain
proprietary products, Assignee is willing to grant to Assignor a license back to
certain rights in such proprietary products as set forth herein;
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the Parties hereby agree as
follows:
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AGREEMENT
1. DEFINITIONS
For the purposes of this Agreement, the following terms will have the meanings
ascribed to them as follows:
1.1 "Assigned Property" means the Proprietary Products, Proprietary
Information, Third Party Products, Trademarks and Patents.
1.2 "Patents" means the patent applications set forth in Exhibit C.
1.3 "Price" means a one-time payment of one dollar (US$1).
1.4 "Proprietary Business Information" means any confidential or
proprietary information, know-how, or trade secret described or
comprised in or relating to the general business operations of
Assignee, excluding Proprietary Information (but including, without
limitation, access to the carrier minutes report manager, call costing
and payments settlement system and similar databases to the extent
related to and appropriate for the operation of Assignee's business),
that exists as of the Effective Date or that is subsequently provided
by Assignor to Assignee at its sole discretion, and that is not in the
public domain or regularly disclosed by Assignor to third parties
without confidentiality restrictions.
1.5 "Proprietary Information" means any confidential or proprietary
information, know-how, or trade secret described or comprised in or
relating to the Assigned Property that is not in the public domain or
regularly disclosed by Assignee to third parties without
confidentiality restrictions.
1.6 "Proprietary Products" means the products set forth in Exhibit A,
including, without limitation, all user manuals, reference manuals and
other documentation and materials relating thereto; and any derivative
works, foreign language versions, fixes, upgrades, updates,
enhancements, new versions or previous versions thereof.
1.7 "Trademarks" means the product marks and logos set forth in Exhibit D
and all rights and goodwill associated therewith.
1.8 "Third Party Products" means a mutually agreed upon subset of products
selected by the Parties from among the products set forth in Exhibit B
(and such additional similar products as the Parties may mutually
agree), including, without limitation, any software and firmware
relating thereto; all user manuals, reference manuals and other
documentation and materials relating thereto; and any derivative
works, foreign language versions, fixes, upgrades, updates,
enhancements, new versions or previous versions thereof provided by
the third-party licensor of such products to Assignor.
2. ASSIGNMENT
Assignor hereby irrevocably assigns, conveys, sells, grants and transfers and
agrees to assign, convey, sell, grant and transfer to Assignee the following
rights (collectively, the "Rights"):
2.1 Proprietary Products. Subject to the terms and conditions of this
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Agreement, Assignor hereby irrevocably assigns, conveys, sells, grants
and transfers and agrees to assign, convey, sell, grant
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and transfer to Assignee, its successors and assigns all of its
rights, title and interest of every kind and character throughout the
world in and to the Proprietary Products to the full extent of its
ownership or interest therein; including, without limitation, all
federal, state, foreign, statutory and common law and other rights in
patents, copyrights, moral rights, trademarks, trade secrets, know-
how, design rights and all other intellectual property and proprietary
rights therein; all domestic and foreign intellectual property
applications and registrations therefor (and all divisions,
continuations, continuations-in-part, reexaminations, substitutions,
reissues, extensions, and renewals of such applications and
registrations, and the right to apply for any of the foregoing); all
goodwill associated therewith; all rights to causes of action and
remedies related thereto (including, without limitation, the right to
xxx for past, present or future infringement, misappropriation or
violation of rights related to the foregoing); and any and all other
rights and interests arising out of, in connection with or in relation
to the Proprietary Products. Upon Assignee's reasonable request,
Assignor will promptly take such actions, including, without
limitation, the prompt execution and delivery of documents in
recordable form, as may be reasonably necessary to vest, secure,
perfect, protect or enforce the rights and interests of Assignee in
and to the Proprietary Products.
2.2 Proprietary Information. Subject to the terms and conditions of this
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Agreement, Assignor hereby irrevocably assigns, conveys, sells, grants
and transfers and agrees to assign, convey, sell, grant and transfer
to Assignee, its successors and assigns all of its rights, title and
interest of every kind and character throughout the world, including
moral rights, in and to the Proprietary Information to the full extent
of its ownership or interest therein; including, without limitation,
all intellectual property and proprietary rights therein, all goodwill
associated therewith, all rights to causes of action and remedies
related thereto (including, without limitation, the right to xxx for
past, present or future infringement, misappropriation or violation of
rights related to the foregoing), and any and all other rights and
interests arising out of, in connection with or in relation to the
Proprietary Information.
2.3 Third Party Products. Subject to the terms and conditions of this
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Agreement, and subject to and contingent upon Assignor obtaining any
necessary and applicable third party consents, Assignor hereby
irrevocably assigns, conveys, sells, grants and transfers and agrees
to assign, convey, sell, grant and transfer to Assignee, its
successors and assigns all rights, title and interest of every kind
and character throughout the world, including moral rights, in and to
the Third Party Products and any license agreements related thereto to
the full extent of Assignor's rights or interest therein (if any).
Upon Assignee's request, Assignor will promptly take such actions,
including, without limitation, the prompt execution and delivery of
documents in recordable form, as may be reasonably necessary to vest,
secure, perfect, protect or enforce the rights and interests of
Assignee in and to the Third Party Products and any license agreements
related thereto.
2.4 Patents. Subject to the terms and conditions of this Agreement,
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Assignor hereby irrevocably assigns, conveys, sells, grants and
transfers and agrees to assign, convey, sell, grant and transfer to
Assignee, its successors and assigns all of its rights, title and
interest of every kind and character throughout the world, including
moral rights, in and to the Patents to the full extent of its
ownership or interest therein; including, without limitation, all
domestic and foreign patent applications and registrations therefor
(and all patents that issue therefrom and all divisions,
continuations, continuations-in-part, reexaminations, substitutions,
reissues, extensions, and renewals of such applications, registrations
and patents, and the right to apply for any of the foregoing); all
goodwill associated therewith; all rights to causes of action and
remedies related thereto (including, without limitation, the right to
xxx for past, present or future infringement,
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misappropriation or violation of rights related to the foregoing); and
any and all other rights and interests arising out of, in connection
with or in relation to the Patents. Upon Assignee's request, Assignor
will promptly take such actions, including, without limitation, the
prompt execution and delivery of documents in recordable form, as may
be reasonably necessary to vest, secure, perfect, protect or enforce
the rights and interests of Assignee in and to the Patents.
2.5 Trademarks. Subject to the terms and conditions of this Agreement,
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Assignor hereby irrevocably assigns, conveys, sells, grants and
transfers and agrees to assign, convey, sell, grant and transfer to
Assignee, its successors and assigns all of its rights, title and
interest of every kind and character throughout the world, including
moral rights, in and to the Trademarks to the full extent of its
ownership or interest therein; including, without limitation, all
federal, state, foreign, statutory and common law and other rights;
all domestic and foreign trademark applications and registrations
therefor (and all extensions and renewals of such applications and
registrations, and the right to apply for any of the foregoing); all
goodwill associated therewith symbolized by the Trademarks and the
portion of the business of the Assignor to which the Trademarks
pertain; all rights to causes of action and remedies related thereto
(including, without limitation, the right to xxx for past, present or
future infringement, misappropriation or violation of rights related
to the foregoing); and any and all other rights and interests arising
out of, in connection with or in relation to the Trademarks. The
Parties agree to have executed and file the confirmatory assignment
with respect to the Trademarks attached hereto as Exhibit F. Upon
Assignee's request, Assignor will promptly take such other actions,
including, without limitation, the prompt execution and delivery of
documents in recordable form, as may be reasonably necessary to vest,
secure, perfect, protect or enforce the rights and interests of
Assignee in and to the Trademarks.
2.6 Further Assurances For Third Party Products. Assignor and Assignee
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will use their respective reasonable best efforts to obtain any
consent, approval or amendment required to novate and/or assign the
Third Party Products; provided, however, that, except for filing and
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other administrative charges, Assignee shall not be obligated to pay
any consideration therefor to the third party from whom such consents,
approvals and amendments are requested. In the event and to the extent
that Assignee and Assignor are unable to obtain any such required
consent, approval or amendment, or if any attempted assignment would
be ineffective or would adversely affect the rights of Assignor with
respect to any Third Party Product so that Assignee would not in fact
receive all the rights with respect to such Third Party Product,
Assignor and Assignee will cooperate (to the extent permitted by law
or the terms of any applicable agreement) in a mutually agreeable
arrangement under which Assignee would, to the extent possible and
permissible under any applicable agreement, obtain the benefits and
assume the obligations with respect to such Third Party Product, in
accordance with this Agreement, including sub-contracting, sub-
licensing, or sub-leasing to Assignee, or under which Assignor would
enforce for the benefit of Assignee, with Assignee assuming Assignor's
obligations, any and all rights of Assignor against a third party
thereto. Assignor shall, without further consideration therefor, pay
and remit to Assignee promptly all monies, rights and other
considerations received in respect to Assignee's performance of such
obligations and Assignee shall remit to Assignor (or pay directly) all
amounts due with respect to such Third Party Products to such third
parties. If and when any such consent shall be obtained or such Third
Party Product shall otherwise become assignable or able to be novated,
Assignor shall promptly assign and novate all of its rights and
obligations thereunder to Assignee without payment of further
consideration and Assignee shall, without the payment of any further
consideration therefor, assume such rights and obligations and
Assignor shall be relieved of any and all liability hereunder.
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3. LICENSE
3.1 Subject to the terms and conditions of this Agreement, Assignor
hereby grants and agrees to grant to Assignee a worldwide, royalty-
free, fully paid up, perpetual, irrevocable, nonexclusive,
transferable right and license (with the right to sublicense) to
copy and use Proprietary Business Information for the purposes of
conducting Assignee's business; provided, however, Assignee takes
such steps as are reasonably necessary to protect Assignor's rights
in the Proprietary Business Information, including by providing the
same protection that Assignor affords to Proprietary Business
Information and by treating Proprietary Business Information as
confidential information, if appropriate.
3.2 Subject to the terms and conditions of this Agreement, Assignee
hereby grants and agrees to grant to Assignor a worldwide, royalty-
free, fully paid up, perpetual, irrevocable, non-exclusive license
to use the products identified in Exhibit E only for internal use
by and for Assignor. Assignor will not assign, sublicense, resell,
rent, distribute or provide service-bureau timesharing or related
services with respect to the products identified in Exhibit E or
the license granted in this Section 3.2 .
4. PAYMENT
As payment for the assignment of Rights and the license granted pursuant
to Sections 2 and 3, Assignee will pay to Assignor the Price, the receipt and
full satisfaction of which is hereby acknowledged by the Parties.
5. REPRESENTATIONS AND WARRANTIES
UNLESS EXPLICITLY STATED OTHERWISE IN THIS AGREEMENT, THE ASSIGNED PROPERTY,
PRODUCTS IN EXHIBIT E, AND PROPRIETARY BUSINESS INFORMATION ARE PROVIDED "AS IS"
AND THE PARTIES HEREBY DISCLAIM ALL WARRANTIES OF ANY KIND WITH RESPECT TO ANY
OF THE ASSIGNED PROPERTY, PRODUCTS IN EXHIBIT E OR PROPRIETARY BUSINESS
INFORMATION, INCLUDING, WITHOUT LIMITATION, ANY IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
6. LIMITATION OF LIABILITY
IN NO EVENT WILL EITHER PARTY BE LIABLE FOR ANY CONSEQUENTIAL, INCIDENTAL,
SPECIAL, INDIRECT, EXEMPLARY OR PUNITIVE DAMAGES, OR DAMAGES FOR ANY LOSS OF
PROFITS, REVENUE OR BUSINESS, EVEN IF SUCH PARTY IS NOTIFIED OF THE POSSIBILITY
OF SUCH DAMAGES. The Parties acknowledge that the limitation of liability in
this Section 6 and the allocation of risk that it implements is an essential
element of the bargain agreed to by the Parties, without which the Parties would
not have entered into this Agreement.
7. GENERAL
7.1 This Agreement, and all disputes, claims or controversies arising
under or relating to this Agreement or the breach, termination or
validity hereof, or any transaction contemplated hereby shall be
governed by and settled in accordance with the procedures terms and
conditions set forth in the applicable dispute resolution
provisions of the Separation Agreement to be signed between the
Parties in May or June of 1999.
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7.2 If either Party commences any action or proceeding against the
other Party to enforce this Agreement or any of such Party's rights
hereunder, the prevailing Party will be entitled to its reasonable
expenses related to such action or proceeding, including reasonable
attorneys' and expert fees.
7.3 No delay, failure or waiver by either Party to exercise any right
or remedy under this Agreement, and no partial or single exercise,
will operate to limit, preclude, cancel, waive or otherwise affect
such right or remedy, nor will any single or partial exercise
limit, preclude, impair or waive any further exercise of such right
or remedy or the exercise of any other right or remedy.
7.4 If any provision of this Agreement is determined to be invalid or
unenforceable, the validity or enforceability of the other
provisions or of this Agreement as a whole will not be affected;
and, in such event, such provision will be changed and interpreted
so as best to accomplish the objectives of such provision within
the limits of applicable law or applicable court decision.
7.5 Except as provided in Section 7.1, this Agreement, including any
exhibit(s) hereto which are incorporated herein by this reference,
serves to document formally the entire understanding between the
Parties relating to the subject matter hereof, and supersedes and
replaces any prior or contemporaneous agreements, negotiations or
understandings (whether oral or written), relating generally to the
same subject matter. No amendment or modification of any provision
of this Agreement will be effective unless in writing and signed by
a duly authorized signatory of the Party against which enforcement
of the amendment or modification is sought.
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IN WITNESS WHEREOF, the Parties have caused this Agreement to be
executed by their duly authorized representatives as of the Effective Date.
IDT CORPORATION NET2PHONE, INC.
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By: /s/ Xxxxx Xxxxx By: /s/ Xxxx Xxxxxx
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Name (Print): Xxxxx Xxxxx Name (Print): Xxxx Xxxxxxx
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Title: Chief Financial Officer Title: Chief Financial Officer
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