Exhibit 10.15
License Agreement
This Agreement is made this 4th December 2000, by and between:
MediaSec Technologies LLC, a Delaware Limited Liability Company, with its
business office at 000 Xxxxx Xxxx Xxxxxx, Xxxxx 000, Xxxxxxxxxx, Xxxxx Xxxxxx
00000, and MediaSec Technologies GmbH with its business office at Xxxxxxxx Xxxxx
0-0 00000 Xxxxx, Xxxxxxx ("LICENSOR"),
and
Spectra Science Corporation, with its business office at 000 Xxxxx Xxxx Xxxxxx,
Xxxxx 000, Xxxxxxxxxx, Xxxxx Xxxxxx 00000 ("LICENSEE").
1. LICENSE
1.1. LICENSOR grants, and LICENSEE accepts, a set of licenses as specified in
Schedule A ("Scope of Licenses") to use LICENSOR's patents and products as
specified in Schedule A ("Patent" and "Software") subject to all the terms
conditions of this Agreement.
1.2. The Patent and Software are licensed for use solely for LICENSEE's product
("Product") as specified in Schedule A.
1.3. LICENSEE has rights to sublicense the Software and the Patent to
third-parties ("Sublicensee"). No sublicense will grant the right to
further sublicense the Software or the Patent. LICENSEE may freely transfer
all or any portion of its license rights under this Agreement to any
subsidiary of LICENSEE or to any affiliated entity upon receiving written
approval by LICENSOR.
1.4. Any sublicense requires a written approval by LICENSOR.
1.5. All rights not specifically granted to LICENSEE by this Agreement shall
remain in LICENSOR.
1.6. LICENSEE has right of first refusal to license new patents owned or
licensed by the LICENSOR relating or applicable to the applications
described in Schedule A "Scope of Licenses" during the license period.
1.7. LICENSOR agrees that it shall not compete or interfere with LICENSEE with
respect to any contract (including any extensions to any contract) or
commercial relationship held or developed by LICENSEE.
1.8. LICENSEE shall not clone (except as necessary for archival and back-up
purposes and for the purposes of this Agreement), reverse assemble, or
reverse compile any part of the Software or adopt any part of the Software
as its own.
For LICENSEE /s/ Xxxxx X. Xxxxxxx For LICENSOR /s/ Xxxx Xxxx
-------------------- -------------
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1.9. LICENSEE is licensed to use only the binary format of the Software under
this Agreement.
1.10. In the event of either of the LICENSOR's bankruptcy or cessation of
business, LICENSOR shall ensure that LICENSEE shall receive the identical
license rights under this Agreement from the right holder of the Patent and
Software.
1.11. LICENSOR agrees to provide reasonable technical support to LICENSEE.
LICENSEE shall pay LICENSOR for the effort to significantly enhance or
change the Software and to develop new functions based on the Patent. This
shall be agreed on the basis of a separate development or consulting
contract.
1.12. LICENSEE shall not collaborate with any other competitor of LICENSOR in
the related businesses.
1.13. Both parties agree to make public announcements on the license agreement
and future milestones. The content of the announcements shall be agreed by
both parties before they become public.
2. CONFIDENTIALITY AND NON-DISCLOSURE
2.1. LICENSEE acknowledges that the Software is proprietary products of and
shall remain the property of LICENSOR or its suppliers.
2.2. LICENSEE shall take appropriate action by instruction or signed agreements
with employees, users and any third party who are provided access to the
Software to satisfy LICENSEE's obligations under this Agreement.
2.3. If for any reason LICENSEE gains access to LICENSOR's manuals containing
any confidential or proprietary marking, or LICENSOR's software source code
to which LICENSEE does not have a right of access under a written agreement
between LICENSEE and LICENSOR, LICENSEE agrees to net examine, use, copy,
or keep such items, but shall return them promptly to LICENSOR. LICENSEE's
obligations of confidentiality and nondisclosure shall apply to all forms
of software received.
2.4 Provisions of this Article shall survive any termination of this Agreement.
3. PATENT AND COPYRIGHT
3.1. LICENSOR will indemnify LICENSEE as to any rightful claim that the Patent
and the Software, or any part thereof (except third party software provided
to LICENSEE by LICENSOR), constitutes an infringement of any patent,
copyright, or trade secret.
3.2. To qualify for this indemnity, however, LICENSEE must give LICENSOR prompt
notice of any such claim and must cooperate fully with LICENSOR's defense
or settlement, if the use of the Software, or any part thereof is enjoined,
LICENSOR will, at its own expense and at its option, either (A) procure for
LICENSEE the right to continue using the Software or the infringing part
For LICENSEE /s/ Xxxxx X. Xxxxxxx For LICENSOR /s/ Xxxx Xxxx
-------------------- -------------
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thereof; (B) replace same with non-infringing substitutes; (C) modify it so
that it becomes non-infringing; or (D) if LICENSOR finds no commercially
reasonably solution under (A), (B), or (C) above, terminate the license of
same at no cost to LICENSEE except for charges accrued to such time as use
is enjoined; provided, however, that such amounts will be set off against
LICENSOR's indemnification obligations under this Section 3.
3.3. LICENSOR shall not be liable to LICENSEE for any claim which is based upon
the use of the Software, or any part of it, in connection with equipment,
software, or devices not furnished or approved by LICENSOR, or in any
manner for which the Software was not designed, or where the Software has
been modified by or for LICENSEE.
3.4. Parts of the Software may have been patented or copyrighted by LICENSOR or
its third-party providers. Patent or copyright notices have been included
in the Software for protective purposes, and such notices shall not be
construed as causing publication of the Software.
4. FEES
4.1. LICENSEE agrees to pay LICENSOR royalties (including the minimum annual
royalties) recited in Schedule A (the "Royalty") on the receipt of payment
for Product.
4.2. The Royalty owed LICENSOR shall be calculated on a quarterly calendar basis
("Royalty Period") and shall be payable no later than 30 days after March
31, June 30, September 30 and December 31 of each year during the term of
this Agreement, except that the first and last calendar quarters may be
"short," depending on the effective date of this Agreement.
4.3. For each Royalty Period, LICENSEE shall provide LICENSOR with a written
royalty statement in a form acceptable to LICENSOR. Such royalty statement
shall be certified as accurate by a duly authorized officer of LICENSEE
reciting the quantity of each Product used, sold, leased or otherwise
disposed of by LICENSEE or LICENSEE's affiliates, gross invoice and amount
billed customers less discounts for each Product, or other information
which is reasonably necessary to LICENSOR to understand LICENSEE's
calculation of the royalty due under this Agreement. Such statements shall
be furnished to LICENSOR regardless of whether and the Product was sold
during the Royalty Period or whether any actual Royalty was owed.
4.4. The receipt by LICENSOR of the Royalty shall not prevent LICENSOR from
subsequently challenging the validity or accuracy of such payment provided
that LICENSOR shall not challenge any Royalty payable for a period ended
more than 3 years as of the date of such challenge.
4.5. The Royalty shall be based on "Net Sales" which are LICENSEE's gross sales
(the gross invoice amount billed customers) of the Product, less sales,
tariff duties and/or use taxes directly imposed and with reference to
particular sales, and, further less amounts allowed or credited to returns.
For LICENSEE /s/ Xxxxx X. Xxxxxxx For LICENSOR /s/ Xxxx Xxxx
-------------------- -------------
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4.6. Late payments shall incur interest at the rate of One Percent(1%)per month
from the date such payment were originally due.
4.7. All payments due LICENSOR shall be made in U.S. currency by check drawn on
a U.S. bank, or by bank wire transfer to the bank account ("Bank
Account") provided in Appendix A, unless otherwise specified by LICENSOR.
5. WARRANTY
5.1. LICENSOR warrants that when it delivers the Software, the Software will
conform in all material respects to LICENSOR's published specifications.
LICENSOR reserves the right to correct manuals due to typographical or
clerical error. LICENSOR represents that this Agreement provides LICENSEE
with sufficient rights to use the Software free of violation of LICENSOR or
any third party's rights.
5.2. In the event of any breach of these warranty, provided notice of the breach
of is given in writing to LICENSOR within thirty (30) days after the
delivery of the Software, LICENSOR will, at its option, repair or replace
the Software.
5.3. LICENSOR will provide LICENSEE with technical and other qualified experts
for the purpose of using the Software via phone, fax and email at no
additional charge. In case that LICENSEE requires on-the-spot
assistance. LICENSEE agrees to pay all related travel, out-of-pocket
expenses and labor cost incurred by any such LICENSOR personnel. In case
that LICENSEE requires significant changes on Software's functionality, a
separate development agreement shall be agreed between LICENSOR and
LICENSEE on a case-by-case basis.
5.4. Neither LICENSOR nor any of its suppliers warrants or guarantees the
results from use of the Software.
6. IMPLIED WARRANTIES, DISCLAIMER, INDEMNIFICATION
6.1. EXCEPT AS OTHERWISE REQUIRED BY LAW, THE EXPRESS WARRANTY IN THE WARRANTY
ARTICLE OF THIS AGREEMENT IS LICENSOR'S EXCLUSIVE WARRANTY AND IS IN LIEU
OF ALL IMPLIED WARRANTIES, INCLUDING THE IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE, AND THE REMEDIES
STATED THEREIN ARE THE EXCLUSIVE REMEDIES FOR ANY BREACH OF WARRANTY.
LICENSOR WILL NOT BE LIABLE IN ANY EVENT FOR ANY CONSEQUENTIAL, SPECIAL,
INCIDENTAL, OR INDIRECT DAMAGES ARISING OUT OF OR IN CONNECTION WITH THIS
AGREEMENT, THE PERFORMANCE OF THE SOFTWARE OR ITS USE IN ANY AND ALL CASES.
LICENSOR DOES NOT WARRANT OR GUARANTEE THAT THE SOFTWARE WILL ACCURATELY
READ ALL CHARACTERS OR MARKS. LICENSEE AGREES TO ASSUME ALL RISK AND
LIABILITY FOR DAMAGES RESULTING FROM THE FAILURE OF THE SOFTWARE TO
CORRECTLY IDENTIFY SUCH CHARACTERS OR MARKS. LICENSOR'S MAXIMUM LIABILITY
IN CONNECTION WITH OR ARISING OUT OF THIS AGREEMENT SHALL BE THE AMOUNT
PAID BY THE LICENSEE TO
For LICENSEE /s/ Xxxxx X. Xxxxxxx For LICENSOR /s/ Xxxx Xxxx
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LICENSOR, FOR THE SOFTWARE EXCEPT AS OTHERWISE PROVIDED THEREIN.
7. TERMINATION
7.1. This Agreement is valid for the period as defined in Schedule A ("Valid
Period"), from the effective date thereof, and thereafter, shall be
automatically renewable for successive 1-year periods, unless 60 days prior
to the termination any party hereto gives written notice to the other party
of its election not to renew this Agreement for an additional 1-year
period, in which event this Agreement shall terminate at the end of the
period in which such notice was given.
7.2. The Licensee reserves the right to terminate this agreement if any of the
two patents as described in Schedule A ("Patent") do not issue in the
United States within two (2) years from the effective date of this
Agreement or when any significant "independent" claims are rejected in
final by the United States Patent and Trademark Office.
7.3. Termination of part of the licenses as described in "Scope of Licenses" of
Schedule A shall not change other terms and conditions of this agreement.
7.4. Termination of this Agreement shall not relieve LICENSEE of any of its
obligations under any due royalties and other fees.
8. GENERAL
8.1. This Agreement is governed by the laws of the State of Delaware of the
United States, without giving force and effect to its choice of law
provisions.
8.2. Any legal action in connection with this Agreement must be filed within
two (2) years after the cause for such action has accrued.
8.3. Notwithstanding the termination or completion of this Agreement, all
indemnities, warranties, and duties of non-disclosure in this Agreement
will continue in full force and affect to the extent required for their
full observance and performance.
8.4. The rights and obligations under this Agreement shall not be assigned or
transferred to the third party without written consent of both parties
except LICENSOR's transfer to its parent company, provided that LICENSOR
shall remain secondarily liable for the obligations set forth in this
Agreement in the event of such a transfer.
For LICENSEE /s/ Xxxxx X. Xxxxxxx For LICENSOR /s/ Xxxx Xxxx
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This Agreement constitutes the entire understanding of the parties, and revokes
and supersedes all prior agreements between the parties and is intended as a
final expression of their Agreement. It shall not be modified or amended except
in writing signed by the parties hereto and specifically referring to this
Agreement. This Agreement shall take precedence over any other documents that
therewith.
LICENSEE:
Spectra Science Corporation
By /s/ Xxxxx X. Xxxxxxx
--------------------
Name Xxxxx X. Xxxxxxx
Title Chairman, CEO, President
Date 4th of Dec. 2000
LICENSOR:
MediaSec Technologies LLC
MediaSec Technologies GmbH
By /s/ XXXX XXXX By /s/ Illegible
------------- ----------------
Name XXXX XXXX Name Illegible
Title President Title Managing Partner
Date 12/4/2000 Date 20th Dec. 2000
For LICENSEE /s/ Xxxxx X. Xxxxxxx For LICENSOR /s/ Xxxx Xxxx
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SCHEDULE A
A1. Scope of License
A1.1. Worldwide exclusive license rights to the patents listed in "Patent" of
Schedule A for [***]:
. [***]
. [***]
A1.2. Exclusive rights in North America (USA, Canada and Mexico) for all uses
with the following one (1) collected application in government-issued
documents:
. [***]
. [***]
. [***]
. [***]
. [***]
. [***]
. [***]
. [***]
A1.3. Non-exclusive rights [***]:
. [***]
. [***]
. [***]
. [***]
. [***].
A1.4. Non-exclusive rights:
. [***]
A2. Patent
A2.1. [***]
Patent References: [***]
A2.2. [***]
Patent [***].
[***]
A.2.3 [***]
For LICENSEE For LICENSOR /s/ Xxxx Xxxx
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[*] = Information redacted pursuant to a confidential treatment request.
An unredacted version of this exhibit has been filed separately with
the Commission.
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A3. Software
The Software includes:
. [***]
. [***]
. [***]
. All upgrades above by LICENSOR during the life of this Agreement.
A4. Product
A4.1. LICENSEE's Product is software that incorporates the LICENSOR's patent or
LICENSOR's software.
A4.2. The value of the Product shall be significantly added by LICENSEE based on
LICENSOR's Software and Patent. LICENSEE product functionality must equal
or exceed 50% of LICENSOR's software. Otherwise, it shall be considered as
sublicenses.
A5. Royalty
A5.1. The royalties to LICENSOR is [***] of the Net Sales of LICENSEE's Product
that incorporates the LICENSOR's software or includes the patent and that
will accrue against the minimum annual royalty in each specific application
area as specified in Al.1, A1.2, and A1.3. Application area as specified in
A1.4 will not carry a minimum annual royalty.
A5.2. LICENSEE agrees to pay LICENSOR [***] of all revenues that LICENSEE
receives when LICENSEE sublicenses the Patent to a sublicensee or sells the
Software.
A5.3. The first royalty payment will be made upon completion of a working
demonstration that adequately shows the printing, rescanning and detection
of watermark information on a PC windows platform and windows user
interface.
A6. Minimum Annual Royalty
A6.1. [***] to maintain worldwide exclusivity for each application identified
in Item Al.l of Schedule A through the life of the Patent.
A6.2. [***] to maintain exclusivity in North America for each application
identified in Item A1.2 of Schedule A through the life of the Patent.
A6.3. [***] to prevent LICENSOR from licensing exclusive rights to other party
and, provided that no other party has non-exclusive license rights or the
LICENSOR has the ability to cancel those rights, to maintain a provision
for LICENSEE for a conversion of the non-exclusive rights to exclusive
rights for each application identified in Item A1.3 of Schedule A through
the life of the Patent.
A6.4. LICENSEE agrees to pay to LICENSOR within thirty (30) days after the
expiration of each Royalty Period the difference, if any, between such
minimum royalties and the total royalties received by LICENSOR under this
agreement during such Royalty Period.
For LICENSEE For LICENSOR /s/ Xxxx Xxxx
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[*] = Information redacted pursuant to a confidential treatment request.
An unredacted version of this exhibit has been filed separately with
the Commission.
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A6.5. LICENSEE agrees to pay LICENSOR [***], [***], [***] of the minimum annual
royalties above during the first, second, and the third license year,
respectively. After a period of three (3) years from the effective date of
this Agreement, LICENSEE agrees to pay LICENSOR the full annual Minimum
Annual Royalty as described above.
A6.6. Within 90 days after the effective date of this agreement, LICENSOR has an
option to exchange the first two-year annual minimum royalties as described
above into [***] shares, issued within 15 days of written request,
LICENSEE's Preferred Stock Series D with the current estimated value of
[***].
A7. Valid Period
The valid period for the worldwide exclusive licenses as defined in Al.1 is one
(1) year. The valid period for the exclusive licenses for North America as
defined in A1.2 is two (2) years. The valid period for the non-exclusive
licenses as defined in A1.3 is one (1) year. The valid period for the
non-exclusive licenses as defined in Al.4 is one (1) year.
A8. Bank Account
MediaSec Technologies LLC
Checking Account Number: 9395390082
Routing Number: 011500
Fleet National Bank
000 Xxxxxxxxxxxxx
Xxxxxxxxxx, XX 00000, XXX
For LICENSEE For LICENSOR /s/ Xxxx Xxxx
--------- -------------
[*] = Information redacted pursuant to a confidential treatment request.
An unredacted version of this exhibit has been filed separately with
the Commission.
MediaSec Technologies
PROVIDENCE, RI [GRAPHIC]
USA
================================================================================
[***]
Prepared for:
Spectra Systems Corporation
000 Xxxxx Xxxx Xxxxxx, Xxxxx 000
Xxxxxxxxxx, XX 00000
Date: July 5, 2001
Prepared by:
Xx. Xxxx Xxxx
MediaSec Technologies LLC
000 Xxxxx Xxxx Xxxxxx, Xxxxx 000
Xxxxxxxxxx, XX 00000
Phone:(x0)000-000-0000
FAX: (x0)000-000-0000
EMAIL:xxxxx@xxxxxxxx.xxx
URL: xxxx://xxx.xxxxxxxx.xxx
[*] = Information redacted pursuant to a confidential treatment request.
An unredacted version of this exhibit has been filed separately with
the Commission.
COMPANY CONFIDENTIAL
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MediaSign Customization and Porting for PocketEye
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[*] = Information redacted pursuant to a confidential treatment request.
An unredacted version of this exhibit has been filed separately with
the Commission.
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COMPANY CONFIDENTIAL
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Spectra Systems Corporation MediaSec Technologies LLC
/s/ Xxxxx X. Xxxxxxx /s/ Xxxx Xxxx
---------------------------------- -----------------------------------
7/11/2001 7/11/2001
Xxxx Xxxx
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[*] = Information redacted pursuant to a confidential treatment request.
An unredacted version of this exhibit has been filed separately with
the Commission.
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