EXHIBIT 10.14
EXHIBIT H
TECHNOLOGY LICENSE AGREEMENT
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THIS TECHNOLOGY LICENSE AGREEMENT ("Agreement") is made and entered
into on November 25, 2003, by and between BizCom U.S.A., Inc., a Florida
corporation with an address at 0000 XX 00 Xxxxxx, Xxxxx 000, Xxxx Xxxxxxxxxx,
Xxxxxxx 00000 ("BizCom"), and Sophia Communications, Inc., a Delaware
corporation with an address at 0000 Xxxxx Xxxxxxx Xxxxxx, Xxxxx 00, Xxxx Xxxxx,
Xxxxxxxx 00000 ("Sophia").
BACKGROUND
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A. Pursuant to an Asset Purchase Agreement dated this same date, Sophia
is transferring to BizCom certain know-how, intellectual property and other
technology as further described in the Asset Purchase Agreement and defined
therein as the "Transferred Technology."
B. Sophia desires to obtain, and BizCom desires to grant, a
license-back to use the Transferred Technology pursuant to the terms and
conditions of this Agreement, with the exception of any rights under that
certain Technology and Patent License Agreement entered into between NTP, Inc.
and Sophia on February 3, 1998, as amended July 25, 2002 and as hereafter
assigned to BizCom (the "NTP Agreement").
NOW, THEREFORE, the parties hereby agree as follows:
TERMS AND CONDITIONS
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1. GRANT OF RIGHTS
(a) Definition of Licensed Technology. As used herein, the term
"Licensed Technology" means all of the Transferred Technology with the exception
of any rights under the NTP Agreement.
(b) Scope of License. BizCom grants Sophia a non-exclusive, perpetual,
irrevocable, royalty-free license to use, modify, copy, make derivative works
from, and display the Licensed Technology, and to manufacture, sell, market and
distribute radio transmitters and/or services utilizing radio transmitters that
use or incorporate any of the Licensed Technology, but only if such radio
transmitters or services utilizing such radio transmitters are sold, marketed or
distributed by Sophia solely for use in the Territory (defined below) and not
otherwise for resale or export anywhere. Sophia does not have the right to issue
any sub-licenses anywhere in the Territory or otherwise; provided that it may
employ subcontractors to exercise its own rights under this license. All
products that are modified, copied or made from derivative works shall be
packaged, labeled and displayed in a way that clearly differentiates them from
any products sold by BizCom so that there will be no confusion by the
purchaser/user as to the source of such products. Sophia acknowledges and agrees
that by execution of this Agreement no license or sub-license is being granted
in favor of Sophia under the NTP Agreement.
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(c) Territory. Except as provided below, the "Territory" of the license
granted above will be the country of Mexico, all countries in Central America,
and all countries in the continent of South America. If either (1) BizCom incurs
an Insolvency Event as defined in Section 4(a) below, or (2) BizCom commits a
material breach of this Agreement, or a material breach of any other agreement
to which both BizCom and/or any of its affiliates or successors, on the one
hand, and Sophia, on the other, are parties, then the Territory of the License
granted above shall be worldwide, without restriction.
(d) Reservation of Rights. BizCom reserves all rights in and to the
Transferred Technology throughout the world except for the Territory and the
license granted Sophia herein and BizCom reserves a non-exclusive right to the
Licensed Technology in the Territory.
2. OWNERSHIP OF TECHNOLOGY
(a) Ownership. Sophia acknowledges that the Transferred Technology is
the exclusive property of BizCom and title to the above shall at all times
remain with BizCom. Sophia further acknowledges that Sophia has no rights in the
Transferred Technology other than those expressly granted by this Agreement with
respect to the Licensed Technology.
(b) Protection. BizCom will take such steps to protect the Transferred
Technology from any unauthorized use, reproduction, manufacture, publication,
disclosure, or distribution by any third party, as BizCom in its sole discretion
deems necessary. Notwithstanding the foregoing, if after receiving notice from
Sophia, BizCom fails to take action against a third party who, in Sophia's good
faith opinion, is infringing on BizCom's rights in the Licensed Technology to
Sophia's detriment, Sophia will have the right to take any legal action in its
own name, and at solely at Sophia's own cost and expense, including filing and
prosecuting a lawsuit, to protect the rights licensed to it in this Agreement.
(c) Notices. Sophia shall not remove, alter, cover, or distort any
copyright, trademark, patent or other proprietary rights notice placed by BizCom
in or on goods or services that use the Licensed Technology or any Improvements.
3. IMPROVEMENTS TO THE TRANSFERRED TECHNOLOGY
(a) Ownership. Sophia acknowledges that any Improvements are the
exclusive property of BizCom and title to such Improvements shall at all times
remain with BizCom. Sophia further acknowledges that Sophia has no rights in the
Improvements other than those expressly granted by this Agreement. For the
purpose of this Agreement the term Improvement shall mean any modifications,
enhancements, new versions, additions or improvements developed or made by
BizCom to the Transferred Technology.
(b) Covenant Not to Xxx. BizCom acknowledges and agrees that, in light
of Sophia's experience with the Transferred Technology, it is possible Sophia
may independently develop or license from others technology that may have
similar functionality to, or may be a substitute for, Improvements made by
BizCom. Therefore, BizCom covenants not to xxx Xxxxxx, under any patent,
copyright, trade secret or other intellectual property or proprietary right that
may apply to any Improvements made by BizCom, for any alleged infringement or
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violation relating to Sophia's use, manufacture or distribution of radios in the
Territory. By way of clarification, this covenant not to xxx is not applicable
in connection with any goods or services sold or distributed in the U.S.
4. LICENSOR INSOLVENCY
(a) Insolvency Event Defined. BizCom shall be deemed to have incurred
an "Insolvency Event" if (1) BizCom, or any permitted assignee or successor to
BizCom's rights and obligations under this Agreement, becomes insolvent or makes
any assignment for the benefit of creditors or similar transfer evidencing
insolvency; or suffers or permits the commencement of any form of insolvency or
receivership proceeding; or has any petition under any bankruptcy law filed
against it, which petition is not dismissed within sixty (60) days of such
filing; or has a trustee or receiver appointed for its business or assets or any
part thereof and (2) if shares of BizCom common stock are trading on a public
market such shares are trading on, at, or are deemed by a qualified appraiser
chosen by Sophia to have, a value of $0.10 or less per share and if such shares
are not trading on a public market such shares are deemed by a qualified
appraiser chosen by Sophia to have, a value of $0.10 or less per share.
(b) Rights of Sophia if BizCom Suffers an Insolvency Event. The parties
agree that it is their intent: (1) to obtain for Sophia the broadest possible
interpretation of the protection afforded licensees under the provisions of
Section 365(n) of the Bankruptcy Code; and (2) that Sophia's business operations
not be disrupted in any manner in the event that the Licensed Technology,
Improvements or any related intellectual property that are the subject of this
Agreement become the subject of a bankruptcy proceeding or are otherwise not
available from BizCom in the manner contemplated by this Agreement. The parties
further agree that to the extent that this Agreement is determined to be an
executory contract under Section 365 of the U.S. Bankruptcy Code, it is an
intellectual property license within the meaning of Section 365(n)(1) of the
U.S. Bankruptcy Code. If a bankruptcy proceeding is commenced and this Agreement
is rejected by BizCom or, as appropriate, the trustee in bankruptcy, upon such
rejection Sophia shall have the right, at Sophia's option, either to terminate
this Agreement or elect to retain its rights to the Licensed Technology and
Improvements.
5. PURCHASE OBLIGATIONS OF SOPHIA
(a) Purchase Obligations; Price. For a period of five (5) years from
the date of this Agreement, Sophia agrees to purchase any radios that Sophia
uses in its business in any of the Territory only from BizCom, to the extent
that (1) BizCom is, at the time that Sophia is prepared to issue a purchase
order, promptly able to meet Sophia's specifications for such radios, both as to
technical requirements and volume and delivery requirements, and (2) BizCom's
price for the radios is the same or lower than other potential suppliers from
whom Sophia has obtained a written binding quote for such volume and delivery of
such radios. In any event, if Sophia purchases any radios from BizCom, BizCom's
price to Sophia for any radios purchased shall be the lesser of (a) the price at
which BizCom is then selling, or has within the prior sixty (60) day period
sold, radios to any other purchaser and (b) BizCom's Full Manufacturing Cost (as
defined in subsection (b) below) plus ten percent (10%).
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(b) Full Manufacturing Costs. BizCom will determine its per-radio "Full
Manufacturing Cost" in accordance with generally accepted accounting principles.
6. WARRANTIES
(a) No Warranty on Licensed Technology. THE LICENSED TECHNOLOGY IS
PROVIDED "AS IS" WITHOUT WARRANTY OR CONDITION OF ANY KIND. THE ENTIRE RISK AS
TO THE USE OF THE LICENSED TECHNOLOGY AND THE RESULTS OR PERFORMANCE THEREOF IS
ASSUMED BY SOPHIA AND ITS CUSTOMERS.
(b) No Other Warranties. EXCEPT FOR THE WARRANTIES MADE IN THIS SECTION
6, NEITHER SOPHIA NOR BIZCOM MAKES ANY WARRANTIES, EXPRESS OR IMPLIED, TO THE
OTHER, INCLUDING, WITHOUT LIMITATION, ANY WARRANTY OF FITNESS FOR A PARTICULAR
PURPOSE, NONINFRIGEMENT, OR MERCHANTABILITY.
(c) Equipment Warranties. Any radios sold by BizCom to Sophia shall be
warranted against defects in materials and workmanship for a period which is the
greater of one (1) year or the period that BizCom warrants such products in the
normal course of its business.
7. INDEMNITY
(a) Scope. Each party will defend, indemnify and hold the other party
and its officers, directors, affiliates, successors and assigns (each an
"Indemnified Party") harmless from and against any and all liabilities, losses,
damages, costs and expenses (including reasonable attorneys' fees) associated
with any claims, action or proceeding brought by a third party against the
Indemnified Party that may arise from material breach of this Agreement by the
party from which Indemnification is sought.
(b) Process. Each party's obligations under subsection (a) above are
contingent on the Indemnified Party promptly notifying the other party, in
writing, of any notice or claim involving such party's breach or performance of
this Agreement of which the Indemnified Party becomes aware, and permitting the
party from which indemnification is sought to control, in a manner not adverse
to the Indemnified Party, the defense, settlement, adjustment or compromise of
any such claim using counsel reasonably acceptable to the Indemnified Party. The
Indemnified Party may employ counsel, at its own expense, to assist it with
respect to any such claim; provided that if such counsel is necessary because of
a conflict of the party from which indemnification is sought or its counsel, or
because the party from which indemnification is sought does not assume control
of the defense, then the indemnifying party will bear the expense of such
counsel.
8. GENERAL PROVISIONS
(a) Assignment. This Agreement may not be assigned, in whole or in
part, by BizCom to any other person, persons, or entity without the express
written approval of Sophia; provided that BizCom may assign the Agreement to any
entity that acquires a majority of the outstanding voting equity interests in
BizCom or substantially all the assets of BizCom relating to this Agreement.
Sophia may assign its rights and obligations under this Agreement without
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BizCom's prior consent (1) to a wholly-owned subsidiary of Sophia; or (2) to
RD220, an affiliate, but such assignment shall be effective only for so long as
Sophia or any of Sophia's shareholders hold an ownership interest of at least
25% in such affiliate or (3) to any person, corporation or other entity which is
a shareholder of Sophia as of the date of this Agreement, provided that any such
assignee agrees in writing to assume all of Sophia's obligations hereunder, and
only after notice to BizCom of such assignment. Sophia may assign this Agreement
to a person or entity not described in (1), (2) or (3) above, provided that (x)
Sophia obtains the prior written consent of BizCom, which BizCom shall not
withhold unreasonably, and (y) Sophia grants BizCom a right of first refusal on
the same terms and conditions as those offered to the proposed assignee. BizCom
shall have five (5) business days after notice of the proposed assignment in
which to exercise its right of first refusal, after which BizCom shall be deemed
to have declined to exercise such right.
(b) Binding on Successors and Assigns. This Agreement shall be binding
upon and inure to the benefit of the successors and permitted assigns of the
parties.
(c) Notices. All notices, consents, waivers and other communications
under this Agreement shall be in writing, in the English language, and shall be
deemed to have been duly given when (i) delivered by hand (with written
confirmation of receipt), (ii) sent by facsimile (with written confirmation of
receipt), provided that a copy is mailed by registered mail, return receipt
requested, or (iii) when received by the addressee, if sent by a nationally
recognized overnight delivery service (receipt requested), in each case to the
appropriate addresses and facsimile numbers set forth above (or to such other
addresses and facsimile numbers as a party may designate by notice to the other
party).
(d) Relationship of the Parties. The parties to this Agreement are
independent contractors and nothing herein contained shall be deemed to create a
joint venture, partner or agency relationship between the parties. Neither party
shall have any power to enter into any contract or commitment in the name of, or
on behalf of, the other party, or to bind the other party in any respect
whatsoever
(e) Governing Law; Waiver of Jury Trial; Attorneys' Fees. This
Agreement shall be governed by and construed solely in accordance with the
substantive laws of the State of Florida, U.S.A., without giving effect to its
conflict or choice of law provisions thereof. THE PARTIES HERETO SPECIFICALLY
WAIVE ANY RIGHT TO TRIAL BY JURY IN ANY COURT WITH RESPECT TO ANY CONTRACTUAL,
TORTIOUS, OR STATUTORY CLAIM, COUNTERCLAIM OR CROSS-CLAIM AGAINST THE OTHER
ARISING OUT OF OR CONNECTED IN ANY WAY TO THIS AGREEMENT, BECAUSE THE COMPANY
AND CLIENT, BOTH OF WHOM ARE REPRESENTED BY COUNSEL, BELIEVE THAT THE COMPLEX
COMMERCIAL AND PROFESSIONAL ASPECTS OF THEIR DEALINGS WITH ONE ANOTHER MAKE A
JURY DETERMINATION NEITHER DESIRABLE NOR APPROPRIATE. The prevailing party in
any action and/or proceeding shall be entitled to recover its reasonable
attorneys' fees and costs from the other party/parties to such action, suit or
proceeding.
(f) Venue and Jurisdiction; Arbitration. Any action and/or proceeding
relating to or arising out of this Agreement shall be brought solely in the
Federal and/or State courts located in Broward County, Florida. If such venue
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provision is found unenforceable for any reason, the parties agree to arbitrate
such dispute solely in the City of Fort Lauderdale, Florida before a single
arbitrator agreed to by the parties. Any such arbitration shall be binding, and
conducted in English and in accordance with the Commercial Arbitration Rules of
the American Arbitration Association in effect on the date of the controversy or
claim. The Arbitration will be conducted before one arbitrator who shall be
mutually agreed upon by the parties. The arbitrator shall have the power to
order the production of relevant and unprivileged documents by one party for
inspection and duplication by the other party prior to any hearing. The decision
of the arbitrator shall be binding on the parties, and written decision by the
arbitrator, the judgment or award may be entered in any court having
jurisdiction of the respective party, and will be enforceable by such court.
(g) Headings. The titles and headings of the various sections and
paragraphs in this Agreement are intended solely for convenience of reference
and are not intended for any other purpose whatsoever or to explain, modify, or
place any construction on any of the provisions of this Agreement.
(h) All Amendments in Xxxxxxx.Xx supplement, modification, or amendment
of this Agreement shall be binding, unless executed in writing by a duly
authorized representative of each party to this Agreement.
(i) Entire Agreement. The parties have read this Agreement and agree to
be bound by its terms, and further agree that it constitutes the complete and
entire agreement of the parties and supersedes all previous communications, oral
or written, and all other communications between them relating to the Licensed
Technology and/or to the subject matter of this Agreement. No representations or
statements of any kind made by either party that are not expressly stated herein
shall be binding on such party.
(j) Language. The official text of this Agreement shall be the English
language version only.
(k) No Waiver. It is agreed that no waiver by either party hereto of
any breach or default of any of the covenants or agreements herein set forth
shall be deemed a waiver as to any subsequent and/or similar breach or default.
(l) Force Majeure. Neither party shall be responsible for delay or
failure in performance of any of the obligations imposed by this Agreement if
such failure shall be occasioned by fire, flood, explosion, lighting, windstorm,
earthquake, subsidence of soil, court order or government interference, civil
commotion, riot, war, or by any cause of like or unlike nature beyond the
control and without fault or negligence of such party.
(m) Severability. In case any one or more of the provisions contained
in this Agreement shall for any reason be held to be invalid, illegal, or
unenforceable in any respect, such invalidity, illegality, or unenforceability
shall not affect any other provisions hereof, but this Agreement shall be
construed as if such invalid or illegal or unenforceable provisions had never
been contained herein.
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(n) Counterparts. This Agreement may be executed simultaneously in any
number of counterparts, each of which shall be deemed an original, but all of
which together shall constitute one and the same instrument.
[INTENTIONALLY LEFT BLANK]
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date set forth above.
BIZCOM U.S.A., INC.
By: /s/ Xxxxx Xxxxx
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Name: Hanan "Xxxx" Xxxxx
Title: President
SOPHIA COMMUNICATIONS, INC.
By: /s/ Xxxxxxx Xxxxxx
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Name: Xxxxxxx Xxxxxx
Title: Chairman of the Board of Directors
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