Exhibit 10.9
SOFTWARE LICENSE AGREEMENT
This agreement (hereinafter, the "Agreement") is effective as of October
1, 2002 ("Effective Date"), by and between Software Publishing Corporation, a
Delaware corporation with its principal place of business at 0000 Xxxxxxxx
Xxxxxxxx Xxxxxxx, Xxxxxxx, Xxx Xxxx, 00000 ("Licensor"), and 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 "Licensee"), and Vizacom, Inc. ("Vizacom"), a Delaware corporation with its
principal place of business at 0000 Xxxxxxxx Xxxxxxxx Xxxxxxx, Xxxxxxx, Xxx
Xxxx, 00000.
RECITALS
WHEREAS, Licensor owns, develops and distributes certain presentation,
charting and clipart collection software (hereinafter, the "Software") which is
incorporated into and/or used in connection with the products identified in the
second to fifth (inclusive) columns of the table in Schedule 1.5 annexed hereto
as Exhibit A (hereinafter, the "Products");
WHEREAS, Licensee desires to acquire the rights to use the Software in the
Products, and Licensor is willing to grant such rights to Licensee;
WHEREAS, pursuant to an agreement between Licensee and President and
Fellows of Harvard College (hereinafter, "Harvard") (a copy of which is annexed
hereto as Exhibit B and hereinafter referred to as the "Trademark License
Agreement"), Licensee is licensed to use certain HARVARD-formative trademarks
(the "Marks") in connection with the Products identified in
Schedule 1.5, such marks appearing on the product packaging, product manuals and
inserts, promotional literature in any medium including without limitation the
Internet, and on the product itself;
WHEREAS, pursuant to an agreement between Harvard and Licensor (a copy of
which is annexed hereto as Exhibit C), Licensor is authorized to include certain
HARVARD-formative trademarks embedded in the code of the Software which causes
the marks to appear on the user's computer screen;
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. "Exploit" means any use including without limitation, to copy,
develop, upgrade, modify, package, maintain, repair, promote, market, license
(in respect of the Marks only as set out in paragraphs 29 and 30 of the
Trademark License Agreement annexed hereto as Exhibit B), produce, redesign,
distribute, display and/or sell, and the terms "exploited," "exploiting" and
"exploitation" shall be interpreted accordingly.
1.2. "Intellectual Property Rights" means all existing and/or future
patents, copyright, trademark and/or design rights (whether registered or
unregistered) and trade secret rights anywhere in the world, all applications
for any of them, all rights to apply for such intellectual property rights and
all renewals and extensions of such rights, excluding all marks comprising, in
whole or in part, the HARVARD xxxx or any confusingly similar xxxx.
1.3. "Royalty and Royalties" has the meaning set forth in Section 4
hereof.
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1.4 "Term" means the period from October 1, 2002 through to September 30 ,
2007 and any subsequent renewals.
1.5 "Updates" means any modifications, developments, fixes and/or patches
to and/or any translations, upgrades, and new versions of the Software,
excluding any xxxx comprising, in whole or in part, the HARVARD xxxx or any
confusingly similar xxxx, and the term "update" shall be interpreted
accordingly.
ARTICLE II
GRANT OF LICENSE
2.1. Software License. Licensor grants Licensee, during the term of this
Agreement, unless or until terminated pursuant to Section 2.2 herein, if
earlier, an exclusive worldwide license to exploit the Software together with
any Updates (hereinafter, the "Software License").
2.2 Duration of License. The Software License shall continue in operation
for the Term, unless or until terminated by either party in accordance with
Article VI below or by Licensee for any reason or for no reason, upon giving
sixty (60) days written notice to the other party.
2.3. Automatic Renewal. If this Software License is not terminated by
either party at any time prior toSeptember 30, 2007, it shall automatically
renew for a term of one (1) year on the same terms and conditions other than in
respect of duration. It shall continue to renew automatically for successive one
(1) year terms unless and until terminated by either party for any reason or for
no reason upon giving sixty (60) days prior written notice to the other party.
2.4. Effect of Termination of Other Agreements. Should the Trademark
License Agreement terminate, Licensor and Licensee agree that they will both
immediately cease all use of any and all HARVARD-formative trademarks, other
than Licensee who may continue to exploit
SOFTWARE LICENSE AGREEMENT
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the Marks in accordance with the provisions of paragraph 22 of the Trademark
License Agreement.
2.5. Non-Competition. During the term of this Agreement and for a period
of six (6) months after the date of termination, Licensor shall not itself
exploit, nor shall it license and/or permit any third party, including without
limitation any company within Licensor's group of companies, to exploit, or make
any direct sale of the Software, the Updates and/or any software which a
potential purchaser would reasonably consider to be interchangeable with, or a
substitute for, the Software and/or the Updates or any substantial part of them.
In addition, Licensor shall promptly refer any sales inquiries and reseller
opportunities to Licensee in writing and cooperate in the transfer of any
marketing and sales opportunities to Licensee, whether new or existing.
2.6. Limitations. Licensee acknowledges that the Software is the property
of Licensor and Licensee has no rights in the foregoing except to the extent
expressly granted by this Agreement and the Trademark License Agreement. The
Licensor acknowledges that the Updates are the property of the Licensee and the
Licensor has no rights in the Updates or any part of them.
ARTICLE III
SOFTWARE
3.1. "As is" and "Where is". Licensor licenses the Software "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.
3.3. Modification. During the Term, Licensee shall have the exclusive
right to amend the source code of the Software to create Updates provided that
any such Updates do not materially adversely interfere with the operability of
any Software and provided that such amendments conform with the terms of the
agreement between Licensee and Harvard (Exhibit B).
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Licensee shall not include any third party technology which incurs additional
royalties to be paid by Licensor.
3.4. Prior to any creating any Update, and in no case later than October
31, 2002, Licensee shall provide reference CDs to Licensor of existing code
within Licensee's possession, custody and/or control.
3.5. Expenses. Licensor shall be responsible for and shall pay any and all
expenses, royalties and/or license fees due, owing and/or payable at the date of
this Agreement and/or at any time during the Term to existing third party
licensors (and/or their assignees and/or successors in title) in respect of the
Software and/or any part of it (including royalties payable to existing third
parties for embedded technology). If Licensor and/or its successors in title
fail to pay any such expenses, royalties and/or license fees on or before the
due dates for payment, and/or intend to cease and/or suspend any such payments,
Licensor and/or its successors in title will immediately notify Serif in writing
of any such failure and/or intention. Licensor will immediately on request
further disclose to Licensee full details and supporting documentation of any
such obligations to make such payments . Licensor agrees and undertakes to
permit Licensee to make any such payments direct to the relevant third parties.
Licensor undertakes to reimburse Licensee for any such payments made to third
parties in settlement of Licensor's financial obligations. If Licensor fails to
so reimburse Licensee within 21 days of the date on which Licensee effected
payment to the relevant third party, Licensor will use its best endeavors to
negotiate and complete an assignment to Licensee of Licensor's rights and
obligations in respect of the Software or the relevant part of it to which the
payment relates. Following completion of any such assignment, any future
royalties due from Licensee to Licensor under this Agreement will be reduced by
the amount of any payments made or to be made by Licensee to third party
licensors in accordance
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with and/or in connection with any such assignment.3.6. Technical Support.
Licensee may provide technical support to all users of the Products at the
expense of the Licensee.
ARTICLE IV
ROYALTY & PAYMENT PROCEDURE
4.1. Royalties.
(a) In consideration for the Software License granted herein and subject
to the provisions of clause 3.5 above, , 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 December 31, 2002, 4% of Net Receipts for the Products. For
purposes hereof, Net Receipts shall mean the amounts received by Licensee in
connection with the sale, licensing or other commercial exploitation of the
Products, including any amendments or improvements thereto, 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 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 Products shipped, sold and licensed, during the quarter to
which the Royalty payment relates. Such report shall set forth all information
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.
SOFTWARE LICENSE AGREEMENT
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4.2. Books and Records. Licensee agrees to maintain adequate books and
records relating to the production and distribution of the 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 may instruct an independent
accountant or other representative ("Auditor") acting at Licensor's expense to
audit that part of the books and records of Licensee which relate to the
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. Licensor will provide to Licensee a
copy of the Auditor's written report within thirty (30) days after the audit is
completed. Licensor shall procure that the Auditor keeps all details of
Licensee's books, records and accounting practices including without limitation
copies of all notes and work product strictly confidential pursuant to Section 7
of this Agreement as if the Auditor were a party to this Software License
Agreement, and that only the final written report shall be disclosed to
Licensor. The Auditor will on request disclose its workings and calculations to
Licensee to support the Auditor's report, and Licensor will further procure that
the Auditor uses such details only for the purposes of preparing its report and
verifying the royalties due under this Agreement. Licensor shall itself keep the
basis and levels of such royalties strictly confidential.
4.4. Audits shall not occur more than once per year and shall not cover
any period previously audited. Audits shall take place during normal business
hours, upon at least five (5) business days prior written notice, in such manner
so as not to unreasonably interfere with Licensee's business activities.
4.5. If it is established by the Auditor that there has been any
underpayment in the 12 month period ending on the Quarter Date immediately prior
to the date of commencement of the
SOFTWARE LICENSE AGREEMENT
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audit to Licensor at the date of the audit's completion of 5% or more of the
total Royalties properly payable from Licensee to Licensor, Licensee shall pay
Licensor all reasonable costs charged by the Auditor in respect of such audit.
Regardless of the percentage of underpayment determined by the Audit, Licensee
agrees to pay Licensor all royalties correctly identified in the Audit report as
being underpaid and which remain overdue. For the purposes of this clause,
Quarter Date shall mean 31st March, 30th June, 30th September and 31st December.
ARTICLE V
REPRESENTATIONS, WARRANTIES AND INDEMNIFICATIONS
5.1. WARRANTY DISCLAIMER.
5.1.1. THE SOFTWARE IS PROVIDED AND LICENSED "AS IS" AND THERE ARE NO
WARRANTIES, REPRESENTATIONS, OR CONDITIONS, EXPRESS 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, 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,
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FITNESS FOR A PARTICULAR USE OR PURPOSE OR ANY OTHER FEATURES OF THE SOFTWARE
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 Products and the performance by Licensee of its obligations
hereunder in the jurisdictions where Licensee carries on activities under this
Agreement and where the Products are distributed from time to time. For each
country in which Licensee intends to distribute the 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 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.
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 or any part of it infringe
any Intellectual Property Right of any third party; and
SOFTWARE LICENSE AGREEMENT
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5.4.2. Any claims by any customers of the 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 the Software License 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. If the Licensor is declared bankrupt; makes a general assignment for
the benefit of creditors; suffers or permits the appointment of a receiver
(provided such action is not dismissed within thirty days) and/or suffers any
analogous and/or material event of insolvency, Licensee will have the right to
purchase the Software within a period of 120 days from date on which such event
occurs at the then current market price.
6.3. Material Breach. Either party may terminate this Agreement and the
Software License granted hereunder upon thirty (30) days written notice for
breach of a material provision of this Agreement, such notice only to be served
if such breach is not cured within thirty (30) days of the party in breach
receiving written notice to remedy the breach. In addition, Licensor may
terminate this Agreement for non-payment of undisputed Royalties as provided
hereunder unless Licensee cures such non-payment within thirty (30) days of
receiving written notice of non-payment, such notice to expressly refer to the
right of the Licensor to terminate for non-payment.
6.4. Effect of Termination.
6.4.1. In the event of any termination, Licensee shall pay to Licensor
immediately all Royalties due up at the termination date.
SOFTWARE LICENSE AGREEMENT
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6.4.2. Replication of Software in the Products shall immediately cease
upon termination of the Software License. Notwithstanding the foregoing,
Licensee shall have the right to exploit and distribute any remaining inventory
of Products for a period of six (6) months after termination of the Software
License and to continue to perform its obligations under any contracts with end
users in existence at the date of termination for the remainder of the term of
each such contract.
ARTICLE VII
CONFIDENTIALITY
7.1. Definition. Confidential Information means (a) information received
by either party relating to this Agreement and/or its subject matter; (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 or 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 reference and/or 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.
SOFTWARE LICENSE AGREEMENT
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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, 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.
SOFTWARE LICENSE AGREEMENT
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8.3. Severability; Waiver. This Agreement is severable and the invalidity
of any term or condition (in whole or in part) shall not affect the validity of
any other term or condition or the remaining part of the offending 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 Majeure. 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.
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 and/or partnership with, the other party.
8.7. Assignment. Neither party may assign this Agreement without the
express written consent of the other party, such consent not to be unreasonably
withheld or delayed except that, provided the proposed new licensor is
authorized by Harvard to use the Marks to extent necessary to fulfil its
obligations to Licensee under this Agreement, 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. Licensee
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will not be deemed to have unreasonably withheld consent if Harvard fails to
authorize the proposed assignee to use the Marks to the extent necessary for the
proposed assignee to fulfil its obligations to Licensee under this Agreement. A
change in control of either party 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. If Licensor wishes
to assign its rights and obligations under this Agreement, Harvard must be
notified in writing of such assignment at least thirty (30) days prior to such
assignment so that Harvard may authorize the new licensor to use the marks
identified in paragraph 9 in the agreement between Harvard and Licensor annexed
hereto as Exhibit C.
8.8. UNCONDITIONAL GUARANTEE. Vizacom, Inc hereby agrees to be bound to
the terms of this Agreement and unconditionally guarantees all of SPC's
obligations hereunder. Specifically, Vizacom, Inc 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).
8.9. AUTHORIZATION TO SIGN. Each person executing this Agreement warrants
that he or she is the duly authorized representative of the respective entity
designated below, and is fully empowered to execute this Agreement on its
behalf.
8.10. 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:
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If sent to Licensor: If sent to Licensee: If sent to either party:
Software Publishing Corporation Serif (Europe) Limited Xx. Xxxx Xxxxxxx
c/o Vizacom Inc. Xxxx 00 Trademark Program Director
00 Xxxx 00xx Xxxxxx Xxxxxxx Xxxxxxxxxx Xxxxxx Harvard University
Xxx Xxxx, XX 00000 Xxxxxxxxxx, XX00 0XX 0000 Xxxxxxxxxxxxx Xxxxxx
Attn: Accounting Department Attn: Financial Director Xxxxxxx Xxxxxx, Xxxxx 000
Fax: 000-000-0000 Fax: 0000 000 0000 Xxxxxxxxx, XX 00000
Fax: 000-000-0000
With a copy to: With a copy to: With a copy to:
Xxxx Xxxxxxxx, Esq. Xxxxxx Xxxxx, Esq Xxxx X. Xxxxxxxxx
Xxxxxxx & Xxxxxxxxx Xxxxxxx Wareing Brinks, Hofer, Xxxxxx & Xxxxx
000 Xxxxxxxxx Xxxxxx 00 Xxxxxx Xxxxxx NBC Tower - Xxxxx 0000
Xxx Xxxx, XX 00000 Nottingham 000 Xxxxx Xxxxxxxxx Xxxxx Xxxxx
Fax: 000-000-0000 XX0 0XXX Xxxxxxx, XX 00000
Fax: 0000 000 0000
8.11. The provisions of Articles IV, V, VII and clauses 2.5, 6.4., 8.4,
8.8 and 8.11 shall survive termination of this Agreement.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the Effective Date.
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
------------------------------
SOFTWARE LICENSE AGREEMENT
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Exhibit A: SCHEDULE 1.5
PRODUCTS
-----------------------------------------------------------------------------------------------------
Xxxx Product Version Lang. Type
---- ------- ------- ----- ----
-----------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and HARVARD GRAPHICS Advanced English Presentation
HARVARD GRAPHICS Presentations
ADVANCED PRESENTATIONS
-----------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and HARVARD GRAPHICS Advanced German Presentation
HARVARD GRAPHICS
ADVANCED PRESENTATIONS Presentations
-----------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and
HARVARD GRAPHICS
ADVANCED PRESENTATIONS 2 HARVARD GRAPHICS 2 English Presentation
-----------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and
HARVARD GRAPHICS
ADVANCED PRESENTATIONS 2 HARVARD GRAPHICS 2 German Presentation
-----------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and
HARVARD GRAPHICS 3 HARVARD GRAPHICS 3 English Presentation
-----------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and
HARVARD GRAPHICS 98 HARVARD GRAPHICS 98 English Presentation
-----------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and
HARVARD GRAPHICS 98 HARVARD GRAPHICS 98 German Presentation
-----------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and HARVARD GRAPHICS 98 Spanish Presentation
HARVARD GRAPHICS 98
-----------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------
HARVARD GRAPHICS HARVARD GRAPHICS PRO 1 English Presentation
PRO PRESENTATIONS and PRESENTATIONS
HARVARD GRAPHICS
PRO PRESENTATIONS 1
-----------------------------------------------------------------------------------------------------
HARVARD GRAPHICS HARVARD GRAPHICS PRO 2 English Presentation
PRO PRESENTATIONS and PRESENTATIONS
HARVARD GRAPHICS
PRO PRESENTATIONS 2
-----------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------
HARVARD GRAPHICS HARVARD GRAPHICS EASY 1 English Presentation
EASY PRESENTATIONS and PRESENTATIONS
HARVARD GRAPHICS
EASY PRESENTATIONS 1
-----------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------
HARVARD INSTANT CHARTS and HARVARD INSTANT CHARTS 1 English Charting
HARVARD INSTANT CHARTS 1
-----------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------
HARVARD CHARTXL and HARVARD CHARTXL 2 English Charting
HARVARD CHARTXL 2
-----------------------------------------------------------------------------------------------------
HARVARD CHARTXL and
HARVARD CHARTXL 3 HARVARD CHARTXL 3 English Charting
-----------------------------------------------------------------------------------------------------
HARVARD CHARTXL and German Charting
HARVARD CHARTXL 3
-----------------------------------------------------------------------------------------------------
HARVARD CHARTXL and HARVARD CHARTXL 3 Spanish Charting
HARVARD CHARTXL 3
-----------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------
HARVARD GALLERY and HARVARD GALLERY 1 English Clipart
HARVARD GALLERY 1 Collection
-----------------------------------------------------------------------------------------------------
HARVARD GALLERY and HARVARD GALLERY 1 German Clipart
HARVARD GALLERY 1 Collection
-----------------------------------------------------------------------------------------------------
SOFTWARE LICENSE AGREEMENT
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Exhibit B: TRADEMARK LICENSE AGREEMENT
This License Agreement (hereinafter, the "Agreement") is effective as of
October 1, 2002 by and between President and Fellows of Harvard College, a
Massachusetts Charitable Corporation, with a principal place of business at
Xxxxxxxxxxxxx Xxxx, Xxxxxxxxx, Xxxxxxxxxxxxx, 00000 (hereinafter "Harvard") and
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 referred to
collectively as "Serif");
WHEREAS, Serif assigned all its ownership rights, if any, in and to all
marks comprising, in whole or in part, the HARVARD xxxx, and any confusingly
similar marks (other than the right for Serif to own and operate the
xxxxxxxxxxxxxxx.xxx domain name) to Software Publishing Corporation ("SPC") by
an agreement of even date between Serif, SPC and Vizacom, Inc. ("Vizacom");
WHEREAS, SPC assigned all its ownership rights in and to all marks
comprising, in whole or in part, the HARVARD xxxx, and any confusingly similar
marks, to Harvard under an agreement of even date between SPC, Vizacom and
Harvard;
WHEREAS, Harvard owns all right, title and interest in and to, among other
marks, certain HARVARD-formative trademarks identified in Schedule A annexed
hereto a Exhibit A (hereinafter, the "Marks");
WHEREAS, Serif is desirous of obtaining a license from Harvard to use the
Marks in connection with certain presentation, charting and clipart collection
software;
WHEREAS, Harvard is desirous of licensing to Serif the right to use the
Marks in connection with certain presentation, charting and clipart collection
software;
NOW THEREFORE, in consideration of the promises and covenants contained
herein and for other good and valuable consideration, the sufficiency of which
is hereby acknowledged, Harvard and Serif agree as follows:
A. LICENSE
1.
a. Harvard hereby grants Serif an exclusive, worldwide license to use the
marks identified in the first column of the table below in connection with the
software products identified in the second to fifth (inclusive) columns of the
table below ("Software Products") on any product packaging, product
specifications, advertising and/or promotional material in whatever form,
product manuals/inserts, and on the products themselves (i.e., on the
SOFTWARE LICENSE AGREEMENT
-18-
CD-rom disk), and/or incorporated into any website owned and/or operated by
Serif and/or any website operated to promote, market, display, distribute,
license and/or otherwise exploit any of the Software Products from time to time
during the term of this Agreement:
--------------------------------------------------------------------------------------------------------
Xxxx Product Version Lang. Type
---- ------- ------- ----- ----
--------------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and HARVARD HARVARD GRAPHICS Advanced English Presentation
GRAPHICS ADVANCED PRESENTATIONS Presentations
--------------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and HARVARD Advanced German
GRAPHICS ADVANCED PRESENTATIONS HARVARD GRAPHICS Presentations Presentation
--------------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and HARVARD
GRAPHICS ADVANCED PRESENTATIONS 2 HARVARD GRAPHICS 2 English Presentation
--------------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and HARVARD
GRAPHICS ADVANCED PRESENTATIONS 2 HARVARD GRAPHICS 2 German Presentation
--------------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and HARVARD
GRAPHICS 3 HARVARD GRAPHICS 3 English Presentation
--------------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and HARVARD
GRAPHICS 98 HARVARD GRAPHICS 98 English Presentation
--------------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and HARVARD
GRAPHICS 98 HARVARD GRAPHICS 98 German Presentation
--------------------------------------------------------------------------------------------------------
HARVARD GRAPHICS and HARVARD HARVARD GRAPHICS 98 Spanish Presentation
GRAPHICS 98
--------------------------------------------------------------------------------------------------------
--------------------------------------------------------------------------------------------------------
HARVARD GRAPHICS HARVARD GRAPHICS PRO 1 English Presentation
PRO PRESENTATIONS and PRESENTATIONS
HARVARD GRAPHICS
PRO PRESENTATIONS 1
--------------------------------------------------------------------------------------------------------
HARVARD GRAPHICS HARVARD GRAPHICS PRO 2 English Presentation
PRO PRESENTATIONS and PRESENTATIONS
HARVARD GRAPHICS
PRO PRESENTATIONS 2
--------------------------------------------------------------------------------------------------------
--------------------------------------------------------------------------------------------------------
HARVARD GRAPHICS HARVARD GRAPHICS 1 English Presentation
EASY PRESENTATIONS and EASY PRESENTATIONS
HARVARD GRAPHICS
EASY PRESENTATIONS 1
--------------------------------------------------------------------------------------------------------
--------------------------------------------------------------------------------------------------------
HARVARD INSTANT CHARTS and HARVARD INSTANT 1 English Charting
HARVARD INSTANT CHARTS 1 CHARTS
--------------------------------------------------------------------------------------------------------
--------------------------------------------------------------------------------------------------------
HARVARD CHARTXL and HARVARD CHARTXL 2 English Charting
HARVARD CHARTXL 2
--------------------------------------------------------------------------------------------------------
HARVARD CHARTXL and HARVARD CHARTXL 3 English Charting
HARVARD CHARTXL 3
--------------------------------------------------------------------------------------------------------
HARVARD CHARTXL and HARVARD CHARTXL 3 German Charting
HARVARD CHARTXL 3
--------------------------------------------------------------------------------------------------------
HARVARD CHARTXL and HARVARD CHARTXL 3 Spanish Charting
HARVARD CHARTXL 3
--------------------------------------------------------------------------------------------------------
--------------------------------------------------------------------------------------------------------
HARVARD GALLERY and HARVARD GALLERY 1 English Clipart
HARVARD GALLERY 1 Collection
--------------------------------------------------------------------------------------------------------
HARVARD GALLERY and HARVARD GALLERY 1 German Clipart
HARVARD GALLERY 1 Collection
--------------------------------------------------------------------------------------------------------
SOFTWARE LICENSE AGREEMENT
-19-
b. Harvard hereby grants Serif an exclusive, worldwide license to use the
marks identified below within any of the Software Products (i.e., embedded in
code which causes the xxxx(s) to appear on the user's computer screen) and/or on
any product packaging, product specifications, advertising and/or promotional
material in whatever form, product manuals/inserts, and on the products
themselves (i.e., on the CD-rom disk), and/or incorporated into any website
owned and/or operated by Serif and/or any website operated to promote, market,
display, distribute, license and/or otherwise exploit any of the Software
Products from time to time during the term of this Agreement:
HARVARD GRAPHICS
HARVARD CHARTXL
HARVARD F/X
HARVARD SPOTLIGHT
HARVARD MONTAGE
HARVARD MONTAGE LITE
HARVARD GRAPHICS ADVISOR
HARVARD WEBSHOW
HARVARD CLIPART BROWSER
c. The license granted by Harvard to Serif in paragraphs 1(a) and 1(b) is
hereinafter referred to collectively as the "License."
2. xxxxxxxxxxxxxxx.xxx. Harvard agrees that Serif shall retain the right
to own and operate the xxxxxxxxxxxxxxx.xxx domain name during the term of the
License and Serif agrees that it shall not own or operate any other domain name
which comprises, in whole or in part, the HARVARD xxxx or any confusingly
similar xxxx. Harvard agrees that Serif may use the Marks in any subdomain of
the xxxxxxxxxxxxxxx.xxx domain name, e.g., xxxxxxxxxxxxxxx.xxx/xxxxxxxxxxxxxx.
Within six (6) months of expiration or termination of the License, Serif agrees
that it will, at the sole cost of Harvard, execute a Registrant Name Change
Agreement, or other appropriate document or documents, for the transfer of the
xxxxxxxxxxxxxxx.xxx domain name to Harvard; will take all necessary steps
outlined in the Registrant Name Change Agreement, or other appropriate document
or documents, to transfer the xxxxxxxxxxxxxxx.xxx domain name to Harvard; and
will deliver the Registrant Name Change Agreement, or other appropriate document
or documents, executed before a notary public to Harvard. Serif also agrees to
execute any additional documents necessary to transfer to Harvard the
xxxxxxxxxxxxxxx.xxx domain name at the sole cost of Harvard.
3. Harvard agrees not to use and/or license a third party to use the Marks
or any of them in connection with and/or incorporated into any computer software
which a potential purchaser would consider to be interchangeable with or a
substitute for any of the Software Products ("interchangeable products").
SOFTWARE LICENSE AGREEMENT
-20-
4. Harvard will maintain all existing registrations for the Marks which
are currently in use in the country in which the Xxxx is registered. Harvard
shall have the sole right, but not obligation, to register any of the Marks
worldwide currently not registered at Harvard's expense, or shall do so upon
request by Serif at Serif's expense. Harvard agrees and undertakes that no
current and/or future registration of any of the Marks will adversely affect any
of Serif's rights to use the Marks or any of them under this Agreement.
5. From time to time, Serif may request, in writing, to amend the License
to include new marks (other than the Marks) comprising, in whole or in part, the
HARVARD xxxx, to be used in connection with the advertising, promotion,
distribution and sale of the Software Products and/or any other computer
software. Harvard agrees that, upon Serif's written request, and at Harvard's
sole discretion, and subject to any conflicting prior third party interests it
will consent to such amendments.
6. PROPER USE OF MARKS. Harvard acknowledges that the current style,
design, display and use of the Marks and/or any part of them by Serif in
connection with the Software Products and any minor variations to such style,
design, display and/or use is acceptable for the duration of the Agreement. If
Harvard acting reasonably considers any then current use of the Marks by Serif
to be offensive and/or materially detrimental to the goodwill in the Marks,
Serif will use its reasonable commercial endeavors to comply with any reasonable
requests for a change to the style, design and display of the Marks received in
writing from Harvard.
7. Harvard undertakes and agrees that it will not pursue or instigate any
claims against Serif whether under contract, tort, common law or statute which
Harvard may have at the date of this Agreement or at any time in the future in
respect of the style, design, display and/or use of the Marks and/or the
xxxxxxxxxxxxxxx.xxx domain name in connection with the Software Products in the
form currently used by Serif and approved by Harvard pursuant to paragraph 6
herein.
8. RIGHT TO INSPECT/QUALITY CONTROL. Serif agrees to permit Harvard or its
duly authorized representative to inspect Serif's use of the Marks, at no cost
to Harvard, whenever Harvard reasonably deems fit to ensure Serif's proper use
of the Marks in accordance with this Agreement. Upon reasonable written request
by Harvard, Serif agrees to send samples of its use of the Marks to Harvard to
permit Harvard to determine whether Serif's use of the Marks meets the
standards, specifications and directions approved by Harvard in this Agreement.
9. OWNERSHIP. Harvard warrants to Serif that:
(a) it has the authority to enter into this Agreement and to grant the
rights granted under this Agreement;
SOFTWARE LICENSE AGREEMENT
-21-
(b) it has not granted and will not during the term of this Agreement
grant any rights to any third party which are inconsistent with the rights
granted under this Agreement; and
(c) it is not aware of any third party rights which would prevent the
exercise by Serif of any of the rights granted under this Agreement.
10. Serif agrees that ownership of the Marks and goodwill relating thereto
shall remain vested in Harvard both during the period of the License and
thereafter, and Serif further agrees never to challenge, contest or question the
validity of Harvard's ownership of the Marks.
11. POLICING OF THE MARKS. Serif agrees to inform Harvard promptly in
writing, as it comes to Serif's attention, of any unauthorized use of any marks
identical or confusingly similar to the Marks and any potential infringements of
the Marks. Harvard will promptly notify Serif in writing as it comes to
Harvard's attention of any infringement by any third party of any of the rights
granted to Serif under this License. Harvard has the sole right to bring,
defend, resolve, and control, at its expense, any and all claims and disputes
based on unauthorized use of the Marks or any confusingly similar marks. In the
event that Harvard does not pursue judicial relief against any third party for
any claim of trademark infringement, unfair competition or false designation of
origin that may affect Serif's use of the Marks within 120 days after becoming
aware of any such a claim and/or fails to actively progress any such
proceedings, Serif, upon Harvard's express written consent, such consent not to
be unreasonably withheld or delayed, may bring an action directly, at its own
expense. Any damages, attorney fees, or costs recovered by Serif in such action
shall be retained by Serif. Harvard and Serif shall attempt to cooperate in good
faith with each other in connection with prosecution of claims by either party
against third parties for any claim of trademark infringement, unfair
competition or false designation of origin that may affect Serif's use of the
Marks.
12. LITIGATION. In the event Serif is named as defendant in any action
based on its use of the Marks, Serif agrees to immediately notify Harvard, and
Harvard shall indemnify Serif and keep Serif indemnified against any damages
and/or costs arising to the extent that such damages and/or costs are not based
on any material breach of Serif's obligations under this License. Harvard shall
have the right on prior written notice to Serif to intervene in any such action
and to control and direct the defense thereof, including the right to select
defense counsel, provided Harvard shall first provide Serif with an undertaking
to reimburse Serif for the costs of its defense and any damages awarded on a
full indemnity basis together with reasonably adequate security for such costs
and damages in respect of any such action.
SOFTWARE LICENSE AGREEMENT
-22-
13. NO JOINT VENTURE. Nothing herein contained shall be construed to place
the parties in a relationship of partners or joint venturers, and Serif shall
have no power to obligate or bind Harvard in any manner whatsoever.
14. INDEMNIFICATION. Serif hereby assumes all responsibility for and
agrees to indemnify Harvard against any and all damages, losses, claims, suits
or other expenses whatsoever including Harvard's reasonable attorneys' fees
incurred in the defense of any such action against Harvard to the extent that
such damages, losses, claims, suits, fees or other expenses arise directly out
of Serif's use of the Marks in material breach of this Agreement,.
15. Harvard agrees to indemnify and keep Serif indemnified against any and
all damages, losses, claims, or other expenses arising out of:
(a) any breach by Harvard of clause 9 above;
(b) Serif's use of the Marks in accordance with the provisions of this
Agreement including Serif's reasonable legal fees incurred in respect of any
such action and/or any threat of any such action.
16. TERM. The License shall continue in operation for five (5) years from
October 1, 2002, unless or until terminated earlier by either party in
accordance with the terms of this Agreement or by Serif for any reason or for no
reason, upon giving sixty (60) days written notice to the other party.
Thereafter, either party shall have the right to terminate the License, for any
reason or for no reason, upon giving sixty (60) days written notice to the other
party.
17. TERMINATION ON NOTICE: Either party may terminate the License if the
other party breaches a material provision of the Agreement and, if the breach is
capable of remedy, fails to remedy it within thirty (30) days of receiving a
written notice from the party wishing to terminate containing full particulars
of the breach and requiring it to be remedied.
18. IMMEDIATE TERMINATION. A party may immediately terminate the License
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.
19. AUTOMATIC TERMINATION. Concurrently herewith, Licensee is entering
into a software license agreement with SPC (an executed copy of that agreement
is annexed hereto as Exhibit B, hereinafter the "Software License Agreement").
The parties agree that this Agreement shall terminate immediately if Serif
ceases for a period of at least 120 days to have the right to exploit the
Software (as that term is defined in the Software License Agreement), however,
if Serif receives an assignment of rights from SPC or its successors in title in
and to
SOFTWARE LICENSE AGREEMENT
-23-
the Software prior to the expiry of 120 days from the date of any termination of
the Software License Agreement, then this Agreement will not automatically
terminate pursuant to this paragraph.
20. AUTOMATIC RENEWAL. If the License is not terminated in accordance with
the provisions of this Agreement by either party at any time prior to the
expiration of the initial 5-year term, it shall automatically renew on the same
terms as set out in this Agreement (except as to duration and royalties) for a
term of one (1) year. It shall continue to renew automatically for successive
one (1) year terms unless and until terminated by either party as provided in
paragraphs 16 or 17 herein.
21. EFFECT OF TERMINATION. Upon and after the expiration or termination of
the License, Serif agrees that:
(a) all rights granted to it hereunder shall forthwith revert to Harvard;
(b) it will refrain from any further use of the Marks or any xxxx or
domain name comprising, in whole or in part, the HARVARD xxxx, or any
confusingly similar xxxx, in connection with the advertising, promotion or sale
of any product or service anywhere in the world; and
(c) it will never apply to register or register any xxxx or domain name
comprising, in whole or in part, the HARVARD xxxx, or any confusingly similar
xxxx, anywhere in the world.
22. Upon and after the expiration or termination of the License, the
parties agree that Serif shall have the right to market and distribute any
remaining inventory of Software Products bearing or containing the Marks and/or
to own and operate the xxxxxxxxxxxxxxx.xxx domain name for a period of six (6)
months. Thereafter, any remaining inventory of such Software Products must, at
Serif's sole discretion, be destroyed or returned to Harvard.
23. ROYALTIES. In consideration of the License, Serif agrees to pay
Harvard (3%) three-percent of the Net Receipts received by Serif. For the
purposes of this Agreement, Net Receipts shall mean the amounts received by
Serif from its retail sales of the Software Products sold or bearing and/or
containing any of the Marks, 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, as applicable (not including any tax based on Serif's net
income) and (3) any set-off, deduction or withholding which Serif is required by
law to set-off, deduct or withhold on behalf of taxing authorities with respect
to payments to Harvard. The parties agree that Harvard shall have the right to
renegotiate the royalty percentage after the fifth
SOFTWARE LICENSE AGREEMENT
-24-
anniversary of the date of this Agreement, namely, September 30, 2007, provided,
however, that such renegotiated royalty percentage shall not increase by more
than 0.5% per annum with a cap of 8% (i.e., no more than 3.5% the first year, 4%
the second year, etc.). Serif shall submit royalty reports and payments to
Harvard on a quarterly basis with calendar quarters commencing on January 1,
April 1, July 1 and October 1 in each year. All royalty reports and payments are
due by April 30, July 31, October 31, and January 31 of each year for the
calendar quarter preceding the date of the report. Serif must submit a royalty
report at the end of each calendar quarter even if no sale occurred in that
quarter. Such report shall set forth in sufficient detail all information
necessary to compute royalties due to Harvard on retail sales in a given
quarter. All payments made by Serif shall be made in U.S. dollars to the
PRESIDENT AND FELLOWS OF HARVARD COLLEGE, and sent to:
Trademark Program Director
Harvard University
Trademark Program
0000 Xxxxxxxxxxxxx Xxxxxx
Xxxxxxx Xxxxxx, Xxxxx 000
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
Any royalty payment not paid within 7 days of the due date for settlement
will bear interest at the lesser of (a) 12 % per annum or (b) the maximum rate
permitted by law.
24. BOOKS AND RECORDS. Serif agrees to maintain adequate books and records
relating to the Software Products sold bearing and/or containing any of the
Marks, and the receipt of payment with respect thereto, which books shall be
maintained in sufficient detail to enable any royalties due to be calculated.
25 AUDIT. Serif agrees that Harvard may instruct an independent accountant
or other representative ("Auditor") acting at Harvard's sole expense to audit
the books and records of Serif which relate to the Software Products bearing
and/or containing any of the Marks together with the amounts received by Serif
in respect of these Software Products pursuant to this Agreement for the
purposes of determining the accuracy of Serif's royalty reports to Harvard.
Harvard will provide to Serif a copy of the Auditor's written report within
thirty days after the audit is completed. Harvard shall procure that the Auditor
keeps all details of Serif's books, records and accounting practices including
without limitation copies of all notes and work product strictly confidential,
and that only the final written report shall be disclosed to Harvard. The
Auditor will on request disclose its workings and calculations to Serif to
support the Auditor's report, and Harvard will further procure that the Auditor
uses such details only for the purposes of preparing its report and verifying
the royalties due under this Agreement. Harvard shall itself keep the basis and
levels of such royalties strictly confidential. Audits shall not occur more than
once per year and shall
SOFTWARE LICENSE AGREEMENT
-25-
not cover any period previously audited. Audits shall take place during normal
business hours, upon prior written notice, in such manner so as not to
unreasonably interfere with Serif's business activities. If it is established by
the Auditor that there has been any underpayment in the 12 month period ending
on the Quarter Day immediately prior to the date of commencement of the audit to
Harvard at the date of the audit's completion of 5% or more of the total
Royalties properly payable from Serif to Harvard, Serif shall pay Harvard all
reasonable costs charged by the Auditor in respect of such audit. Regardless of
the percentage of underpayment determined by the Audit, Serif agrees to pay
Harvard all royalties correctly identified in the Audit report as being
underpaid and which remain overdue. For the purposes of this clause, Quarter
Date shall mean 31st March, 30th June, 30th September and 31st December.
B. COVENANTS, REPRESENTATIONS AND WARRANTIES
26. 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.
27. 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 other xxxx comprising, in whole
or in part, the HARVARD xxxx or any confusingly similar xxxx, anywhere in the
world.
28. Serif covenants, represents and warrants that it has not applied to
register, will not apply to register, and does not own any registrations for any
domain name comprising, in whole or in part, the HARVARD xxxx or any confusingly
similar xxxx, other than the xxxxxxxxxxxxxxx.xxx domain name.
29. 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 Products incorporating and/or
displaying the Marks; and
(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 Products incorporating, and/or displaying the
Marks.
C. MISCELLANEOUS PROVISIONS
30. SUBLICENSING. Serif may not sublicense any of the rights granted
herein other than sub-licenses to be granted by Serif in the ordinary course of
its business only as follows:
(a) licenses to end users of Software Products incorporating and/or
displaying the Marks; and
SOFTWARE LICENSE AGREEMENT
-26-
(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 Products incorporating, and/or displaying the
Marks.
31. ASSIGNMENT. Serif may not assign any of the rights granted herein
without the prior written consent of Harvard. Serif may, however, transfer,
convey or sell all of its assets and liabilities to a third party, including
this Agreement, provided that such third-party agrees to be bound by the terms
and conditions set forth herein.
32. CHOICE OF LAW. The Agreement shall be interpreted under the laws of
the Commonwealth of Massachusetts.
33. WAIVER. No provision of this Agreement may be waived unless in writing
and signed by the party benefited by the provision waived. The waiver by either
party of a provision of the Agreement shall not operate or be construed to
invalidate the balance of the provisions contained in the Agreement, which shall
continue to remain in full force and effect.
34. SEVERABILITY. The finding by a court that a provision of the Agreement
is invalid shall not operate or be construed to invalidate the balance of the
provisions contained in the Agreement, which provisions shall continue to remain
in full force and effect.
35. ENTIRE AGREEMENT. This Agreement contains the entire agreement between
the parties relating to the subject matter hereof, and no party has entered into
this Agreement based upon any promise, representation, warranty or covenant not
included herein. All prior proposals, discussions or writings are superseded
hereby. The terms of the Agreement shall be binding upon and shall inure to the
benefit of the parties and their successors, heirs and assigns.
36. CONSULTATION WITH COUNSEL. 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.
37 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
SOFTWARE LICENSE AGREEMENT
-27-
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.
38. AUTHORIZATION TO SIGN. Each person executing this Agreement warrants
that he or she is the duly authorized representative of the respective entity
designated below, and is fully empowered to execute this Agreement on its
behalf.
IN WITNESS WHEREOF, the parties have caused this instrument to be duly
executed as of the dates indicated below:
President and Fellows of Harvard College Serif Holdings Limited
By: /s/ Xxxxx Xxxxxxx By: /s/ Xxxxx Xxxxxxxxx
------------------------------------- --------------------------------
Name: Xxxxx Xxxxxxx Name: Xxxxx Xxxxxxxxx
----------------------------------- --------------------------------
Title: Director, Office of Technology Title: Financial Director
and Trademark Licensing Harvard -----------------------------
University
----------------------------------
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
---------------------------------- -----------------------------
SOFTWARE LICENSE AGREEMENT
-28-
Exhibit C: AGREEMENT Between Harvard and Software Publishing Corporation
THIS AGREEMENT (hereinafter, the "Agreement") is effective as of October
1, 2002 by and between President and Fellows of Harvard College, a Massachusetts
Charitable Corporation, with a principal place of business at Xxxxxxxxxxxxx
Xxxx, Xxxxxxxxx, Xxxxxxxxxxxxx, 00000 (hereinafter "Harvard"), Vizacom Inc., a
Delaware corporation having its principal place of business at 0000 Xxxxxxxx
Xxxxxxxx Xxxxxxx, Xxxxxxx, Xxx Xxxx 00000 (hereinafter "Vizacom") and Software
Publishing Corporation ("SPC"), a Delaware corporation with its principal place
of business at the same aforementioned address as Vizacom;
WHEREAS, SPC is a wholly-owned subsidiary of Vizacom;
WHEREAS, SPC has adopted, owns and is using certain HARVARD-formative
trademarks on or in connection with certain computer software programs
(hereinafter, the "Marks"), including, but not limited to, those marks
identified in Schedule A annexed hereto as Exhibit A;
WHEREAS, SPC is the owner of trademark registrations for some of the
Marks, all of which are identified in Schedule B annexed hereto as Exhibit B
(hereinafter, the "Registrations");
WHEREAS, Harvard and SPC are parties to a Consent Agreement effective June
29, 1989, a true and correct copy of which is annexed hereto as Exhibit C
(hereinafter, the "1989 Consent Agreement");
WHEREAS, Harvard and SPC are desirous of terminating the 1989 Consent
Agreement in its entirety and the parties' rights and liabilities thereunder;
WHEREAS, SPC and Serif (Europe) Limited, an English company, are parties
to a Software License Agreement, a true and correct copy of which is annexed
hereto as Exhibit D (hereinafter, the "2001 Software License Agreement");
WHEREAS, in an Agreement effective October 1, 2002, a true and correct
copy of which is annexed hereto as Exhibit E, Serif Holdings Limited, Serif
(Europe) Limited and Serif Inc. (hereinafter referred to collectively as
"Serif") assigned all of their right, title and interest in and to any and all
HARVARD-formative marks to SPC (hereinafter, the "Serif-SPC Assignment");
WHEREAS, Harvard is desirous of acquiring all of the right, title and
interest in and to the Marks and Registrations from SPC and Vizacom;
WHEREAS, SPC and Vizacom are desirous of assigning all of their right,
title and interest in and to the Marks and Registrations to Harvard;
SOFTWARE LICENSE AGREEMENT
-29-
NOW THEREFORE, in consideration of the promises and covenants contained
herein and for other good and valuable consideration, the sufficiency of which
is hereby acknowledged, Harvard, SPC and Vizacom agree as follows:
A. TERMINATION OF 1989 CONSENT AGREEMENT
1. Harvard and SPC hereby agree that the 1989 Consent Agreement, and the
parties' rights and obligations thereunder, are terminated.
B. ASSIGNMENT
2.
a. ASSIGNMENT OF RIGHTS: SPC and Vizacom hereby irrevocably sell, grant,
convey, assign, transfer and set over to Harvard all of their worldwide right,
title, and interest in and to the Marks and the Registrations, including, but
not limited to, the HARVARD-formative marks assigned to SPC in the Serif-SPC
Assignment, and any other marks, applications for trademark or service xxxx
registration or trademark or service xxxx registrations, or domain name
registrations, comprising, in whole or in part, the HARVARD xxxx, or any
confusingly similar xxxx, together with any and all goodwill of the business
symbolized by the Marks and Registrations, and the right to xxx and recover for
past and future infringement of the Marks (hereinafter, the "Assignment");
b. Except as provided in paragraph 9 herein, Vizacom and SPC agree never
to use, apply to register or register any xxxx comprising, in whole or in part,
the HARVARD xxxx or any confusingly similar xxxx.
3. RECORDAL OF ASSIGNMENT: Vizacom and SPC agree that they will undertake
to record this Assignment as to all Registrations and to take any other steps
reasonably necessary to transfer ownership of the Registrations to Harvard.
Vizacom and SPC agree that they shall bear all expenses in connection with the
assignment of the Registrations to Harvard.
SOFTWARE LICENSE AGREEMENT
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4. COOPERATION: Vizacom and SPC agree to forward file-stamped copies of
documents submitted by SPC in the various Trademark Offices throughout the world
or other reasonable proof of filing to effectuate assignment of the
Registrations to Harvard within thirty (30) days of the effective date of this
Agreement. SPC and Vizacom agree to execute such additional documents as Harvard
reasonably deems necessary to enable Harvard to transfer ownership of the
Registrations to Harvard. SPC and Vizacom also agree to execute and/or provide
such additional documents as Harvard deems reasonably necessary to establish
Harvard's rights in the Marks and Registrations, including, but not limited to,
such documents to establish the dates of first use for the Marks by Harvard
through SPC and/or Vizacom. Harvard agrees to execute such additional documents
as SPC and Vizacom reasonably deem necessary to enable SPC to transfer ownership
of the Registrations in any country throughout the world to Harvard.
5. COMPENSATION: In full consideration of the transfer of rights to
Harvard herein, Harvard agrees to pay four hundred and twenty thousand United
States dollars (US $420,000.00) as follows:
a. Harvard agrees to pay one hundred and seventy thousand United
States dollars (US $170,000.00) to Vizacom within fourteen (14) days of the
effective date of this Agreement. Such payment shall be in the form of a
certified check and shall be delivered to Vizacom via Federal Express overnight
delivery.
b. Harvard agrees to pay two hundred and fifty thousand United
States dollars (US $250,000.00) to Vizacom within fourteen (14) days of
receiving file-stamped copies of documents submitted by SPC in the various
Trademark Offices throughout the world (or other reasonable proof of filing) to
effectuate assignment of the Registrations to
SOFTWARE LICENSE AGREEMENT
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Harvard. Such payment shall be in the form of a certified check and shall be
delivered to Vizacom via Federal Express overnight delivery.
C. TERMINATION OF 2001 SOFTWARE LICENSE AGREEMENT
6. Contemporaneous with the execution of this Agreement, SPC shall
exercise its right to terminate the 2001 Software License Agreement in its
entirety.
SOFTWARE LICENSE AGREEMENT
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D. AUTHORIZATION TO USE
7. In a separate document to be executed concurrently herewith, Harvard is
licensing to Serif the right to use certain HARVARD-formative marks in
connection with certain presentation, charting and clipart collection software
(the "Harvard-Serif License," an executed copy of which is annexed hereto as
Exhibit F).
8. In a separate document to be executed concurrently herewith, Serif is
contracting with SPC, whereby SPC is granting Serif the right to manufacture the
software products referenced in paragraph 6 above (the "SPC-Serif Software
License Agreement," an executed copy of which is annexed hereto as Exhibit G).
9. Harvard hereby expressly authorizes SPC to use the following
HARVARD-formative marks only within the software products (i.e., embedded in
code which causes the xxxx(s) to appear on the user's computer screen)
identified in, and solely for the purpose of fulfilling its obligations under,
the SPC-Serif Software License Agreement:
HARVARD GRAPHICS
HARVARD CHARTXL
HARVARD F/X
HARVARD SPOTLIGHT
HARVARD MONTAGE
HARVARD MONTAGE LIGHT
HARVARD GRAPHICS ADVISOR
HARVARD WEBSHOW
HARVARD CLIPART BROWSER
10. The authorization expressly granted by Harvard to SPC in paragraph 9
above shall terminate upon the effective date of termination of the
Harvard-Serif License. Thereafter, SPC shall have no right to use any xxxx
comprising, in whole or in part, the HARVARD xxxx, or any confusingly similar
xxxx.
E. MISCELLANEOUS PROVISIONS
11. CHOICE OF LAW: The Agreement shall be interpreted under the laws of
the Commonwealth of Massachusetts.
12. WAIVER: No provision of this Agreement may be waived unless in writing
and signed by the party benefited by the provision waived. The waiver by either
party of a provision of the Agreement shall not operate or be construed to
invalidate the balance of the provisions contained in the Agreement, which shall
continue to remain in full force and effect.
13. SEVERABILITY: The finding by a court that a provision of the Agreement
is invalid shall not operate or be construed to invalidate the balance of the
provisions contained in the Agreement, which provisions shall continue to remain
in full force and effect.
SOFTWARE LICENSE AGREEMENT
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14. ENTIRE AGREEMENT: This Agreement contains the entire agreement between
the parties relating to the subject matter hereof, and no party has entered into
this Agreement based upon any promise, representation, warranty or covenant not
included herein. All prior proposals, discussions or writings are superseded
hereby. The terms of the Agreement shall be binding upon and shall insure to the
benefit of the parties and their successors, heirs and assigns.
15. CONSULTATION WITH COUNSEL: 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.
16. 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.
17. AUTHORIZATION TO SIGN: Each person executing this Agreement warrants
that he or she is the duly authorized representative of the respective entity
designated below, and is fully empowered to execute this Agreement on its
behalf.
18. UNCONDITIONAL GUARANTEE: Vizacom hereby agrees to be bound to the
terms of this Agreement and unconditionally guarantees all of SPC's obligations
hereunder. Specifically, Vizacom 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).
SOFTWARE LICENSE AGREEMENT
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IN WITNESS WHEREOF, the parties have caused this instrument to be duly
executed as of the dates indicated below:
President and Fellows of Harvard College Vizacom, Inc.
By: /s/ Xxxxx Xxxxxxx By: /s/ Xxxx Xxxxxxxxxx
----------------------------------------- ---------------------------
Name: Xxxxx Xxxxxxx Name: Xxxx Xxxxxxxxxx
--------------------------------------- -------------------------
Title: Director, Office for Technology and Title:CFO
Trademark Licensing Harvard University
--------------------------------------
Dated: October 2, 2002 Dated: October 2, 2002
-------------------------------------- -------------------------
Software Publishing Corporation
By: /s/ Xxxx Xxxxxxxxxx
----------------------------------------
Name: Xxxx Xxxxxxxxxx
--------------------------------------
Title: CFO
--------------------------------------
Dated: October 2, 2002
-------------------------------------
SOFTWARE LICENSE AGREEMENT
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