LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement") is entered into this 29th day
of July, 1999 by and between Xxxxxxxx Xxxxxxx (herein referred to as "Licensor")
and MCY Music World, Inc. (hereinafter referred to as "Licensee").
W I T N E S S E T H:
WHEREAS, Licensor is the owner of certain technology relating to a (i)
sales tracking system; (ii) music delivery system; (iii) shopping basket system;
(iv) music interface system; (v) shopping history system; and (vi) digital
delivery chain and player system, for which he has filed provisional patent
applications described on Exhibit A annexed hereto (hereinafter collectively the
"Technology");
WHEREAS, Licensor is the owner of certain trademarks which are
described on the annexed Exhibit A (collectively the "Trademarks");
WHEREAS, Licensor is the owner of certain copyrights which are
described on the annexed Exhibit A (collectively the "Copyrights");
WHEREAS, the Licensor is the Chief Executive Officer of Licensee and in
connection with his employment by Licensee has agreed to license the Technology,
the Trademarks and the Copyrights to Licensee;
WHEREAS, the Licensor desires to further develop, exploit and
commercialize the Technology through the granting of an exclusive license for
the Technology, the Trademarks and the Copyrights to the Licensee;
WHEREAS, the Licensee desires to acquire an exclusive license to
commercialize and exploit and commercialize the Technology, the Trademarks and
the Copyrights (collectively the "Licensed Products"); and
WHEREAS, in connection with the granting of the License to the
Technology, the Licensor desires to grant and the Licensee desires to acquire an
exclusive license under all patents which may issue pursuant to the provisional
patent applications described on the annexed Exhibit A (collectively the
"Licensed Patents").
NOW, THEREFORE, in consideration of the premises and the mutual
covenants herein contained, the parties agree to the following:
ARTICLE 1.
EXCLUSIVE LICENSE
1.1 The Licensor hereby grants to Licensee an exclusive worldwide right
and license (i) to commercialize and exploit the Licensed Products; and (ii) to
make, use, sell or offer for sale and in any way commercialize the inventions
disclosed in or claimed by the Licensed Patents.
1.2 Licensee shall have the exclusive right to manufacture, acquire and
assemble all equipment, apparatus, machinery, auxiliaries and devices required
to manufacture or distribute or utilize the Licensed Products and to carry same
into commercial practice.
1.3 The licenses hereby granted may not be sublicensed without the
prior written approval of Licensor.
1.4 The exclusive rights and license herein granted shall include all
patents throughout the world which may issue from or claim priority from the
Licensed Patents, including all divisionals, continuations or continuations in
part, which may issue from the provisional patent applications described on the
annexed Exhibit A.
1.5 Promptly, upon execution of this Agreement and from time to time,
Licensor shall provide to Licensee all source codes and other data and
information which is available to enable Licensee to exploit the Technology and
manufacture or distribute the Licensed Products.
1.6 As used herein, the term "Technology" shall include all patents,
inventions discoveries, know-how, show-how or intellectual property as same
relates to a (i) sales tracking system; (ii) music delivery system; (iii)
shopping basket system; (iv) music interface system; (v) shopping history
system; (vi) digital delivery chain and player system; or (vii) the digital
delivery of music. The term "Technology" shall also include any improvements to
the Technology or the mode of using, processing, commercializing or exploiting
the Technology obtained either through patents or otherwise.
1.7 The License granted to Licensee under this Agreement shall commence
on the date hereof and shall terminate on the later of the date on which the
last patent licensed hereunder to Licensee shall expire or twenty years from the
date of commencement of this Agreement.
ARTICLE 2.
DEVELOPMENT OF THE TECHNOLOGY
2.1 Licensee shall pay all fees for all past and future development of
the Technology and the Licensed Products, including the costs associated with
the prosecution of any patent applications or issuance of any patents based upon
the Technology.
2.2 The Licensor shall not have any financial obligation to the
Licensee hereunder.
2.3 The Licensee shall provide the facilities necessary for any further
development of the Technology and the exploitation and commercialization of the
Technology and the Licensed Products.
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ARTICLE 3
NON-DISCLOSURE AND CONFIDENTIALITY
3.1 The Licensee agrees to report to the Licensor all inventions and
discoveries when first conceived or reduced to practice, to the extent such
inventions or discoveries relate to the Licensed Products or the Licensed
Patents. Licensee and Licensor both agree that all inventions and discoveries
are to be kept confidential and both of said parties hereby agree not to
disclose any confidential information to any person or entity outside of the
Licensor and Licensee's organization. This same caution and confidentiality must
be exercised by all Licensee employees and other agents who work for the
Licensee or Licensor or have access to the confidential information.
Furthermore, Licensee and Licensor each represent and warrant to the other that
each such employee or agent will, before gaining access to any confidential
information or any derivative thereof, have personally recognized in writing his
obligations regarding the confidential information to be disclosed pursuant to
this Agreement. Notwithstanding the foregoing, in the event that (i) the
Licensee becomes a public corporation; or (ii) the Licensee is acquired by a
public corporation, the Licensee shall have the right to make such releases,
filings and disclosures regarding this Agreement, the Technology and license
granted hereunder as shall be necessary or required under State and Federal
Securities Laws.
ARTICLE 4.
INTELLECTUAL PROPERTY RIGHTS
4.1 All right, title and interest in all inventions and discoveries
identified or developed pursuant to this Agreement and any trademarks or
copyrights developed hereunder shall belong to the Licensor and are hereby
exclusively licensed to Licensee subject to the terms and conditions of this
Agreement.
4.2 All inventions and discoveries which are conceived and/or reduced
to practice during the course of this Agreement and which are generated by the
development by Licensee shall become the property of Licensor and are hereby
licensed to the Licensee.
4.3 Licensor may seek patent protection for any discovery and/or
invention developed pursuant to this Agreement. All costs to prosecute the
patent will be paid by the Licensee, upon presentation by Licensor of invoices
for same.
4.4 In the event that the Licensor shall determine to prosecute the
patent for any discovery and/or invention pursuant to this Agreement, the
Licensee will provide the Licensor with all the necessary source codes,
information, drawings and other data requested by Licensor.
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ARTICLE 5
PAYMENT FOR LICENSE
5.1 As partial consideration for the License granted hereunder, the
Licensee agrees to pay the Licensor a Fee of $1,000 per annum.
ARTICLE 6.
EMPLOYMENT OF LICENSEE; TERMINATION OF LICENSE
6.1 As further consideration for the grant of this License, the
Licensee hereby agrees to employee the Licensor pursuant to the terms of his
Employment Agreement dated July 11, 1999 and as amended on the July 28, 1999. In
the event that Licensee fails to pay the compensation to Licensor as provided in
Section 3.5 or 5.5 of the Employment Agreement, as amended, this License shall
thereupon terminate upon thirty (30) days written notice to Licensee. The
Licensee shall have the right to cure any breach of such Section 3.5 or 5.5
during said thirty (30) day notice period.
ARTICLE 7.
INDEMNIFICATION
7.1 Licensee hereby agrees to indemnify and hold harmless Licensor, his
heirs and assigns from and against any and all losses, damages, or liabilities,
joint or several, which Licensor, his heirs or assigns may become subject under
this Agreement or in connection with the exploitation or commercialization of
the Technology or the Licensed Products. Licensee will reimburse Licensor, his
heirs and/or assigns for any legal or any other expenses reasonably incurred by
Licensor, his heirs or assigns in defending any such actions.
ARTICLE 8.
MISCELLANEOUS
8.1 If any term or provision of this Agreement or the application
thereof to any person or circumstances shall, to any extent, be invalid or
unenforceable, the remainder of this Agreement or the application of such term
or provision to persons or circumstances other than those as to which it is held
invalid or unenforceable, shall not be affected thereby, and each such term and
provision of this Agreement shall be valid and shall be enforced to the fullest
extent permitted by law.
8.2 No waiver of any breach of any covenant or provision herein
contained shall be deemed a waiver of any preceding or succeeding breach
thereof, or of any other covenant or provision herein contained. No extension of
time for performance of any obligation or act shall be deemed an extension of
the time for performance of any other obligation or act.
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8.3 All notices or other communications required or permitted hereunder
shall be in writing, and shall be sent by registered or certified mail, postage
prepaid, return receipt requested, or by Federal Express Priority Overnight
delivery and shall be deemed received upon mailing thereof.
To: The Chief Executive Officer
and Secretary of
MCY Music World, Inc.
0000 Xxxxxx xx xxx Xxxxxxxx
Xxx Xxxx, Xxx Xxxx
To: Xxxxxxxx Xxxxxxx
c/o MCY Music World, Inc.
0000 Xxxxxx xx xxx Xxxxxxxx
Xxx Xxxx, Xxx Xxxx
Notices of change of address shall be given by written notice in the
manner detailed in this subparagraph 8.3.
8.4 This Agreement shall be binding upon and shall inure to the benefit
of the permitted successors and assigns of the parties hereto.
8.5 In the event of the bringing of any action or suit by a party
hereto against another party hereunder by reason of any breach of any of the
covenants, agreements or provisions on the part of the other party arising out
of this Agreement, then in that event the prevailing party shall be entitled to
have and recover from the other party all costs and expenses of the action or
suit, including actual attorneys' fees, accounting fees, and any other
professional fees resulting therefrom.
8.6 This Agreement is the final expression of, and contains the entire
agreement between the parties with respect to the subject matter hereof and
supersedes all prior understandings with respect thereto. This Agreement may not
be modified, changed, supplemented or terminated, nor may any obligations
hereunder be waived, except by written instrument signed by the party to be
charged or by his agent duly authorized in writing or as otherwise expressly
permitted herein.
8.7 Heading at the beginning of each paragraph are solely for the
convenience of the parties and are not a part of the Agreement. Whenever
required by the context of this Agreement, the singular shall include the plural
and the masculine shall include the feminine. This Agreement shall not be
construed as if it had been prepared by one of the parties, but rather as if
both parties had prepared the same. Unless otherwise indicated, all references
to paragraphs and subparagraphs are to this Agreement. In the event the date on
which any party is required to take any action under the terms of this Agreement
is not a business day, the action shall be taken on the next succeeding day.
8.8 This Agreement may be executed in counterparts.
8.9 The parties hereto expressly agree that this Agreement shall be
governed by, interpreted under, and construed and enforced in accordance with
the laws of the State of New York.
8.10 From and after the date hereof, all persons subject to or bound by
this Agreement shall from time and without further consideration, do, execute
and deliver, or cause to be done, executed and delivered, all such further acts,
things and instruments as may be reasonably be requested or required more
effectively to evidence and give effect to the provisions of this Agreement
(including, without limitation, certificates to the effect that this Agreement
and the representations made herein continue to be operative and as to any
defaults hereunder or modifications hereof).
8.11 This Agreement can only be assigned by the Licensor and may not be
assigned by the Licensee without the prior written consent of the Licensor.
Notwithstanding the foregoing, in order for any assignment by Licensor to be
effective, any party to whom Licensor may assign this Agreement must agree to
abide by the terms of this Agreement with Licensee, so that any such assignment
will not adversely affect the rights granted to Licensee hereunder.
IN WITNESS WHEREOF, the parties hereto have executed as of the 29th day
of July, 1999.
XXXXXXXX XXXXXXX
By: /s/ Xxxxxxxx Xxxxxxx
Xxxxxxxx Xxxxxxx
MCY MUSIC WORLD, INC.
By: /s/ Xxxxxxxx Xxxxxxx
Xxxxxxxx Xxxxxxx, Chief
Executive Officer
ATTEST:
By: /s/ Xxxxxxxx Xxx Xxxxx
--------------------------
Xxxxxxxx Xxx Xxxxx
Director
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