Exhibit 10.1
LICENSE AGREEMENT
This LICENSE AGREEMENT (this "Agreement") is entered into and made
effective as of the __6th___ day of ______April_______, 2006, by and between
SCHIMATIC CASH TRANSACTIONS XXXXXXX.XXX INC. d/b/a SMART CHIP TECHNOLOGIES, a
Florida corporation ("SCTN"), and PHOENIX TECHNOLOGY HOLDING INCORPORATED, a TCI
company ("Phoenix").
RECITALS
WHEREAS, SCTN has developed and is the sole and exclusive owner of certain
technologies related to incentive rewards, including intellectual property
rights, patents, software, business processes, copyrights, trademarks, and
services associated with the technologies, (the "Technology");
WHEREAS, SCTN has the power and authority to grant the right, privilege,
and license to use, reproduce, manufacture, distribute, sell, and otherwise
commercially exploit the Technology;
WHEREAS, SCTN is not current on filings with the United States Securities
and Exchange Commission (the "SEC");
WHEREAS, SCTN has an authorized share limit of 200,000,000 shares and has
over 300,000,000 committed shares;
WHEREAS, SCTN has debt of approximately One Million Dollars ($1,000,000) to
the United States Internal Revenue Service (the "IRS") for unpaid taxes;
WHEREAS, SCTN has debt of approximately Four Million Five Hundred Thousand
Dollars ($4,500,000) to Airos Group for development services rendered to make
the Technology commercially deployable;
WHEREAS, SCTN has debt of approximately Four Million Dollars ($4,000,000)
to secure note holders for monies the note holders have invested in SCTN;
WHEREAS, SCTN has debt of approximately Five Hundred Thousand Dollars
($500,000) to SCTN ex-employees for accrued salaries and expenses;
WHEREAS, SCTN has debt of approximately Two Million Five Hundred Thousand
Dollars ($2,500,000) for SCTN ex-officers past debts, severance and other
issues;
WHEREAS, SCTN has debt of approximately One Million Dollars ($1,000,000)
owed to IBM for development of the Kid's Card program which commercially failed;
WHEREAS, SCTN has debt of approximately Five Hundred Thousand Dollars
($500,000) to Xxxxx Xxxxx Xxxxxxx & Xxxxx, LLC for legal services;
WHEREAS, SCTN has debt of approximately One Million Dollars ($1,000,000)
for other services related to SCTN operations;
WHEREAS, SCTN has experienced significant dilution caused by its
outstanding debt;
WHEREAS, SCTN has significant conversion rights caused by its outstanding
debt;
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WHEREAS, SCTN has deployed the Technology;
WHEREAS, SCTN has only received trace revenues for the Technology until the
signing of this Agreement;
WHEREAS, SCTN is unable to raise significant capital externally;
WHEREAS, hosting costs for the SCTN system are approximately Twenty
Thousand Dollars ($20,000) per month;
WHEREAS, development fees for the SCTN system have been approximately
Twenty Thousand Dollars ($20,000) to Two Hundred Thousand Dollars ($200,000) per
month during the past 12 months;
WHEREAS, SCTN has due diligence issues with potential clients;
WHEREAS, SCTN does not currently have the funds to maintain the
intellectual property escrow;
WHEREAS, SCTN is currently engaged in several lawsuits;
WHEREAS, SCTN has been technically insolvent for over three (3) years;
WHEREAS, through interest on its debt, Airos Group would likely have Fifty
One Percent (51%) control of SCTN in 2007;
WHEREAS, SCTN has potential liabilities that are currently unknown to the
SCTN Board of Directors, including liabilities from IC One and SCTN;
WHEREAS, SCTN cannot afford to pay for director's liability insurance;
WHEREAS, Miki Radivojsa, Xxxxxxx XxXxxx, and Xxxxx Xxxxx are officers of
SCTN;
WHEREAS, Miki Radivojsa, Xxxxxxx XxXxxx, and Xxxxx Xxxxx xxx have a direct
or indirect interest in Phoenix or Phoenix licensees including officer status,
employment status, and shareholder status;
WHEREAS, SCTN has been primarily funded by Xxxxxxx XxXxxx, Miki Radivojsa,
Xxxxx Xxxxx and Airos Group in the last several years
WHEREAS, SCTN is being primarily funded by Xxxxxxx XxXxxx, Miki Radivojsa,
and Airos Group at the time of entering into this Agreement;
WHEREAS, Phoenix desires to obtain an exclusive license to use, reproduce,
manufacture, distribute, sell, and otherwise commercially exploit the
Technology; and
WHEREAS, SCTN agrees to license the Technology to Phoenix, and Phoenix
agrees to license the Technology from SCTN, on the terms and conditions listed
below.
NOW, THEREFORE, in consideration of the premises, and for other good and
valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, the Parties hereby agree as follows:
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AGREEMENT
1. License. The above recitals are hereby incorporated by reference.
Subject to the terms of this Agreement, SCTN grants to Phoenix an exclusive
license to use and commercially exploit the Technology. Phoenix shall have the
right under this Agreement to sub-license the Technology to third-parties,
subject to the terms of this Agreement.
2. Obligations of SCTN. SCTN agrees to perform the following obligations
under the terms of this Agreement:
a. SCTN will maintain its corporate status, and pay any and all costs
related to the administration of its governance and business.
b. SCTN will provide use and access to Phoenix of all SCTN trademarks,
trade names, and logos to utilize in conjunction with the license
granted under this Agreement.
c. SCTN will, to the extent necessary, assist in facilitating any
sub-licensing of the Technology by Phoenix to third-parties.
d. SCTN will be responsible for any and all interest accrued on any new
debt incurred under this Agreement, excluding any existing SCTN debt
assumed by Phoenix under this Agreement.
e. Upon entering this Agreement, SCTN will transfer to Phoenix the names
and contact information of any potential customers that SCTN is
currently in negotiations with, or has previously been in negotiations
with, concerning the licensing of the Technology.
3. Obligations of Phoenix. In addition to the fees and other obligations
imposed upon Phoenix under the terms of this Agreement, Phoenix agrees to
perform the following obligations:
a. Phoenix will completely fund its own costs of the use, reproduction,
manufacture, distribution, sales, and any other commercial
exploitation of the Technology.
b. Upon entering into this Agreement, Phoenix will assume a certain
portion of the SCTN debt consisting of Airos invoiced debt, SCTN note
holder debt, SCTN accrued salary debt, as well as any other debt that
will be mutually agreed to by the Parties in writing.
c. Phoenix will waive any debt assumed under this Agreement after
generation and payment of fees to SCTN in excess of Ten Million
Dollars.
4. Ownership of the Intellectual Property. Phoenix acknowledges that SCTN
is the owner of the Technology, including all subsequent enhancements,
alterations, changes and/or modifications to the Technology, whether made by
SCTN or Phoenix. In order to clearly define ownership in any development
project, SCTN and Phoenix will agree which changes are owned by SCTN and which
changes are to be owned by Phoenix .If the parties do not agree then any
modifications not specifically commissioned and paid for by SCTN will belong to
Phoenix. . ,..Also, there may be other technologies and products that have no
relationship to the core SCTN technology and Phoenix will hold and maintain sole
ownership of these technologies and these products. Except as prohibited by law,
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Phoenix agrees that it will do nothing inconsistent with such ownership either
during the term of this Agreement or afterwards. Phoenix acknowledges that the
Technology is valid under the applicable law and that its use and commercial
exploitation of the Technology will not create any right, title or interest in
the Intellectual Property in Phoenix. SCTN acknowledges that Phoenix will remain
the exclusive licensor of the Technology, so long as Phoenix meets the
requirements under Section 7 of this Agreement. The Parties agree to cooperate
and assist one another in complying with any formalities of local laws, such as
license recordation. In the event that SCTN elects or is forced to enter into
chapter seven (7) or chapter eleven (11) bankruptcy proceedings, the ownership
of the Intellectual Property will transfer to Phoenix.
5. Indemnification and Limitation on Liability. SCTN and Phoenix agree to
mutually defend, indemnify and hold each other harmless from any claims from
their respective intellectual property. Intellectual property infringements and
costs are to be attributed to the infringer's of the intellectual property based
on any use or commercial exploitation of the Technology. THE ABOVE LIMITATIONS
OR EXCLUSIONS MAY NOT BE ALLOWED BY ALL JURISDICTIONS.
6. Revenue Fees. In payment for the license granted under this Agreement,
on a quarterly basis Phoenix shall pay to SCTN the following percentages from
the following streams related to the Technology (the "Quarterly Payment"):
a. Sub-Licensing of the Technology: ten percent (10%);
b. Professional Services (including Core Development, Customization,
Hosting, and Helpdesk): five percent (5%);
c. Transactions: twenty percent (20%);
d. Licensing/Sub-Licensing of Regional Operating Companies formed by
Phoenix for Phoenix benefit only: zero percent (0%).
Other fees and percentages based on revenue streams from the Technology outside
the above-defined revenue streams will be agreed to in writing by the Parties on
an as needed basis.
The Quarterly Fee shall be paid to SCTN within thirty (30) days after the close
of each quarter, so long as the Agreement remains in effect. The Quarterly
Payment shall be paid on such terms, including the place(s) of such payment(s),
as required by SCTN in its sole and absolute discretion. The Quarterly Payment
may be increased or decreased by mutual written agreement of the Parties at any
time.
In the event that equity is paid to Phoenix through a joint venture or other
commercial vehicle by a third-party for the licensing/sub-licensing of a
Regional Operating Company, SCTN will not receive any of the equity paid by such
third-party.
7. Exclusive License. This Agreement shall remain an exclusive license to
Phoenix subject to the following performance requirements for Phoenix:
a. Fees paid to SCTN under this Agreement for the first year from the
date of entering into this Agreement to meet or exceed Two Hundred
Thousand Dollars ($200,000);
b. Fees paid to SCTN under this Agreement for the second year after the
date of entering into this Agreement to meet or exceed Four Hundred
Thousand Dollars ($400,000);
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c. Fees paid to SCTN under this Agreement after the second year and for
each subsequent year to equal the lesser of:
(1) Ten Million Dollars ($10,000,000); or,
(2) An increase of 100% from the previous year's performance.
In the event that Phoenix fails to meet the performance requirements under the
terms of this Agreement, SCTN shall be allowed to enter into non-exclusive
licensing agreements with third-parties. In the event Phoenix does not retain
exclusive license to the Technology under this Agreement, and prior to meeting
the conditions to forgive said debt as described in Section 3(c) above,
Phoenix's forgiveness of SCTN debt under Section 3 of this Agreement shall be
revoked and all sums due will become immediately due and payable without benefit
of discussion and set off.
8. Escrow. Phoenix agrees to keep and maintain a current copy of the
source code including the code and procedures to build an executable system in
escrow at the cost of SCTN. SCTN has the right to verify that the system is
complete, accurate and buildable at SCTN's expense. If the system is found to
not be complete or accurate or buildable, Phoenix will correct any issues at
Phoenix's expense.
9. Loans by Phoenix to SCTN. Upon request by SCTN, Phoenix, in its sole
discretion, may elect to loan monies to SCTN at the rate of one percent (1%) per
month compounded monthly until paid in full by SCTN, with payment terms
acceptable to SCTN. In the event monies are loaned to SCTN by Phoenix under this
Agreement, such debt shall have priority over all other SCTN debt, excluding IRS
debt, and payments on any such loan shall be deducted from the Quarterly
Payments due by Phoenix under this Agreement, prior to any monies being paid or
transferred to SCTN under this Agreement or any other agreement entered into by
the Parties. Should monies be loaned or transferred to SCTN by Phoenix for
purposes of payment of IRS taxes, then such monies shall be deducted from the
Quarterly Payments due by Phoenix under this Agreement, prior to any monies
being paid or transferred to SCTN under this Agreement or any other agreement
entered into by the Parties.
10. Term and Termination. The term of this Agreement shall commence as of
the effective date hereof and shall remain in effect unless earlier terminated
in accordance with this Section. At any time more than one (1) year after the
effective date of this Agreement, Phoenix may terminate this Agreement by giving
SCTN sixty (60) days' written notice of termination. Upon any such termination
by Phoenix, Phoenix shall immediately cease any and all use of the Technology,
return any and all SCTN property in its possession, including software and
source code, and fulfill any remaining obligations to SCTN under the terms of
this Agreement. Upon thirty (30) days' prior written notice, SCTN may terminate
Phoenix's right to use the Technology where such continued use is prohibited in
any respect by the action of any judicial, administrative or like authority, or
as a result of an agreement with a third party to settle a dispute relating to
Technology or in any country or jurisdiction in which SCTN determines that the
continued use of the Technology in such country or jurisdiction may impose
substantial potential liability on SCTN or seriously threaten SCTN's ownership
of the Technology. In the event Phoenix fails to maintain exclusivity of the
license under Section 7 of this Agreement, SCTN may terminate this Agreement by
giving Phoenix sixty (60) days' written notice of termination. In the event this
Agreement is terminated for any reason other than (1) by Phoenix under Section 9
of this Agreement, or (2) pursuant to Phoenix's failure to maintain exclusivity
of the license under Section 7 of this Agreement, or (3) pursuant to any breach
of this agreement by Phoenix, SCTN shall be required to pay to Phoenix the
following termination fee:
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a. If terminated anytime within the first year of the Agreement, an
amount equal to three (3) times the debt defined in Section 3(b);
b. If terminated anytime within the second year of the Agreement, an
amount equal to four (4) times the debt defined in Section 3(b);
c. If terminated anytime within the third year of the Agreement, an
amount equal to five (5) times the debt defined in Section 3(b); or
d. If terminated anytime after the third year of the Agreement, an amount
equal to twenty (20) times the net earnings of Phoenix for the
previous twelve (12) months.
11. Disclosure of claims and litigation. SCTN represents that it has
disclosed, and Phoenix acknowledges, that SCTN has previously entered into a
non-exclusive licensing agreement with Retention Management Group Inc. ("RMG")
concerning the Technology, and that SCTN has communicated termination of any
agreement with RMG to RMG and instituted litigation against RMG concerning
rights to the Technology (the "RMG Litigation"). The Parties acknowledge that
the outcome of or results from any litigation or settlement related to the RMG
Litigation could have an effect on the full rights and obligations of the
Parties and to the Technology under this Agreement. SCTN further represents that
it has disclosed, and Phoenix acknowledges, that SCTN has submitted an offer in
compromise to the IRS for purposes of resolving IRS taxes assessed against SCTN
(the "Offer in Compromise"). SCTN further represents, and Phoenix acknowledges,
that a lawsuit has been filed against SCTN by Xxxxxxx Xxxxx and Xxxx Xxxxxxx in
the Third Judicial district Court of Utah, Case No. 050905213 (the "Xxxxx &
Xxxxxxx Litigation"). Other than the RMG Litigation, the Xxxxx & Xxxxxxx
Litigation, and the Offer in Compromise, SCTN represents and warrants that SCTN
is not engaged in or a party to any other suit, action, proceeding, inquiry,
enforcement action, investigation, claim, or demand that would have a material
adverse effect on SCTN's obligations and abilities to perform under the terms of
this Agreement.
12. Records and Audit. Phoenix shall maintain accurate records as
necessary to verify compliance with this Agreement. SCTN shall have the right,
upon reasonable notice to Phoenix, to inspect Phoenix's books and records and to
conduct an audit of Phoenix's use of the Technology under this Agreement. Audits
conducted by SCTN under this Agreement shall be conducted at SCTN's expense,
unless such audit reveals that there is a discrepancy of more than ten (10%)
percent between the amount actually paid to SCTN and the actual amount to have
been paid under the terms of this Agreement, in which case Phoenix shall bear
the cost of such audit. Any amounts found to be owing to SCTN under this
Agreement by reason of any audit shall be paid within thirty (30) Business Days
after the completion of the audit with interest at the rate of one percent (1%)
per month compounded monthly until paid in full.
13. Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of Turks and Caicos without giving effect to principles
of conflict of law.
14. Notices. Any notice required or permitted to be sent under this
Agreement shall be delivered by hand, courier service with receipt or, mailed by
registered or certified mail, postage prepaid, return receipt requested, to the
addresses of the parties set forth below or to such other addresses as may be
furnished in writing to the other Party:
SCHIMATIC CASH TRANSACTIONS XXXXXXX.XXX INC.
000 X. Xxxx Xxxxxxx Xx.
Xxx Xxxxx, XX 00000
Attn: _____________________
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With a Copy to:
Xxxxxxxxx & Xxxxxxx, LLC
Peccole Professional Park
00000 X. Xxxx Xxxxx, Xxxxx 000
Xxx Xxxxx, Xxxxxx 00000
Attn: Xxxx X. Xxxxxx, Esq.
PHOENIX TECHNOLOGY HOLDING INCORPORATED
X.X. Xxx 000
Xxxxxxx Xxxxx
Xxxx Xxxxxx
Xxxxx Xxxx
Turks and Caicos, BWI
Attn: Xxxxx Xxxxxxxxx
Notice so sent shall be deemed received on the earlier of personal delivery or
on the tenth (10th) day following dispatch.
14. Miscellaneous.
a. No rights or obligations of either Party under this Agreement shall be
assigned without the prior written consent of the other Party.
b. Nothing contained in this Agreement shall be construed as creating a
joint venture, partnership, agency or employment relationship between
the Parties, and neither Party will have any right to bind the other
or incur any obligation on the other's behalf without the other's
prior written consent. Further, the Parties expressly represent at the
time of entering into this Agreement that they are not affiliates of
one another. In the event it is construed that SCTN and Phoenix are
affiliates of one another prior to, at the time of, or after entering
into this Agreement, each Party acknowledges that this Agreement has
been approved by its respective officers and directors prior to
entering into this Agreement.
c. If any part of this Agreement is found invalid or unenforceable, that
provision shall be deleted from this Agreement and the rest of this
Agreement shall remain in full force and effect unless such provision
materially affects the fundamental purpose of this Agreement.
d. The failure of either Party to exercise any right that is granted
herein or to require any performance of any term of this Agreement or
the waiver by either Party of any breach of this Agreement, shall not
prevent a subsequent exercise or enforcement of the term or be deemed
a waiver of any subsequent breach of the same or any other term of
this Agreement.
e. This Agreement represents the entire agreement between the Parties,
and supersedes any prior proposals, representations or understandings
between the Parties.
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f. If suit is brought under this Agreement, reasonable attorneys' fees
and expert witness and other professional fees, as fixed by an
arbitrator or a court of competent jurisdiction, shall be awarded to
the prevailing Party.
g. To facilitate the execution of this Agreement by the Parties, this
Agreement may be executed in counterparts and a signature transmitted
by facsimile shall have the same effect as an original signature.
IN WITNESS WHEREOF, the Parties have entered into this Agreement as of the
date first set forth above.
SCHIMATIC CASH TRANSACTION PHOENIX TECHNOLOGY HOLDING
XXXXXXX.XXX INC. INCORPORATED,
d/b/a SMART CHIP TECHNOLOGIES, a TCI company
a Florida corporation
/s/ Xxxxx Xxxxx /s/ Xxxxx Xxxxxxxxx
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By: Xxxxx Xxxxx By: Xxxxx Xxxxxxxxx
Its: Director Its: Mandated Signatory
/s/ Miki Radivojsa
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By: Miki Radivojsa
Its: Chairman and CEO
/s/ Xxxxxxx XxXxxx
------------------------------------
By: Xxxxxxx XxXxxx
Its: Director and Treasurer
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