EXHIBIT 10.23
TECHNOLOGY TRANSFER AGREEMENT
This Technology Transfer Agreement (the "Transfer Agreement") is made
and entered into as of November 11, 1998 (the "Effective Date"), by and between
WHITE PINE SOFTWARE, INC. ("White Pine"), a Delaware corporation having its
principal place of business at 000 Xxxxxxx Xxxxxx, Xxxxxx, Xxx Xxxxxxxxx 00000,
and CORNELL RESEARCH FOUNDATION, INC. ("Foundation"), a New York corporation
having its principal place of business at 00 Xxxxxxxxx Xxxxx, Xxxxx 000, Xxxxxx,
Xxx Xxxx 000000.
RECITALS
Foundation has developed certain technology ("Technology" and as more
fully detailed in Exhibit B) for providing desk-top video conferencing, in which
Technology Foundation holds, or may hereafter acquire, certain intellectual
property rights, including, but not limited to, patents, copyright, trademark
rights, and/or other proprietary rights. Foundation has also developed certain
names, marks, and other brand identifiers that have become associated with the
Technology and products embodying the Technology (the "Marks").
White Pine is in the business of, among other things, providing
Internet-based videoconferencing solutions which permits users to participate
in real-time, multipoint videoconferences over the Internet and intranets.
White Pine currently has, from Foundation, an exclusive worldwide license to the
Technology, including the rights to develop, modify, support, market,
distribute, copy, make or have made, sell, sublicense, and appoint distributors
in connection with the Technology.
Foundation is interested in conveying to White Pine, and White Pine is
interested in acquiring from Foundation, all present and future intellectual
property rights and title in and to the Technology.
NOW, THEREFORE, White Pine and Foundation (collectively "Parties") in
consideration of the mutual covenants and agreements set forth below, and for
good and valuable consideration the receipt of which is hereby acknowledged, the
parties agree as follows:
1. DEFINITIONS
Defined terms, indicated by the use of initial capitalization, will
have the meaning ascribed to them in context, or, for defined terms not
defined in context, will have the meaning ascribed to them on Exhibit
A, attached hereto and incorporated by reference as though fully set
forth herein.
2. ASSIGNMENT, LICENSE AND COOPERATION
2.1 TECHNOLOGY ASSIGNMENT - Foundation hereby irrevocably assigns,
conveys and transfers to White Pine all rights, title, and
interests in and to the Technology. In
furtherance of this transfer, and contemporaneously with their
execution of this Transfer Agreement, the Parties hereto will
enter into a Technology Assignment in the form attached hereto
as Exhibit B.
2.2 TRADEMARK ASSIGNMENT - Foundation hereby irrevocably assigns,
conveys and transfers to White Pine all rights, title, and
interests in and to the Marks, including applications or
registrations thereof. In furtherance of this transfer, and
contemporaneously with their execution of this Transfer
Agreement, the Parties hereto will enter into an Assignment of
U.S. and Foreign Trademarks in the form attached hereto as
Exhibit C.
2.3 GRANT-BACK LICENSE - In consideration of the assignments set
forth in sections 2.1 and 2.2, White Pine hereby grants to
Foundation a perpetual, non-exclusive, world-wide,
royalty-free, right and license to use the Products subject to
the terms of White Pine's ordinary End User Licenses for such
Products, as amended from time to time by White Pine. The
current End User Licenses for the Products are attached hereto
as Exhibit D.
2.4 COOPERATION IN ASSIGNMENTS, REGISTRATIONS AND LITIGATION
-Foundation, without additional payment or compensation,
other than that provided herein, agrees to assist White
Pine in obtaining and enforcing proper protection for the
Technology and the Marks through patent, copyright,
trademark, service xxxx, other forms of government
certification or registration, or other forms of legal
protection, however denominated, in any country. Upon
request, Foundation will sign all applications,
assignments, releases, affidavits, instruments and papers,
deliver to the White Pine all documentation as may
reasonably be required, and perform all acts necessary or
desired by White Pine to assign all such Technology and all
such Marks fully and completely to White Pine and to enable
White Pine, its successors, assigns and nominees, to
establish, memorialize, perfect, defend, and/or secure the
full and exclusive benefits and advantages any and all
rights, title, and interests in and to the Technology and
the Marks. Without limitation, such cooperation extends to
include cooperating with White Pine in any litigation
initiated by White Pine arising from or relating to the
Technology or the Marks, including, without limitation,
offering good faith testimony and joining or initiating
legal actions if such activity would provide an advantage
consistent with law in any effort by White Pine or its
assigns to establish, perfect, or defend its rights.
Foundation's obligations under this section will continue
after assignment of the Technology and Marks to White Pine
and White Pine will reimburse Foundation for its reasonable
out-of-pocket expenses incurred at White Pine's request in
connection with providing such cooperation.
2.5 TECHNOLOGY AND DOCUMENT TRANSFER - Foundation shall sign
and/or deliver to the White Pine all know-how in Foundation's
possession relating to the Technology
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and all documentation ("Documentation") (a listing of which is
attached hereto as Exhibit E) as may reasonably be required by
the White Pine to effectuate the purposes and intent of this
Transfer Agreement including, without limitation, an
Assignment in and to the Technology in the form attached
hereto as Exhibit B, and those documents deemed by the White
Pine to be necessary or desirable in obtaining and securing
title and control of the Technology, including patent,
copyright, trademark, and/or service xxxx protection, or other
forms of government certification or registration. If the
Foundation fails to sign and/or deliver such Documentation,
the White Pine is irrevocably authorized and appointed
attorney-in-fact of and for the Foundation to sign and deliver
such additional documentation.
3. PAYMENT
3.1 Subject to the terms of this Transfer Agreement, White Pine
agrees to pay Foundation an amount which consists of an
Advance, an Adjusted Amount, and a Remainder, as such are
defined below. All Payments to Foundation will be by check
made out to a party to be designated by Foundation and
acceptable to White Pine and delivered to Foundation at the
following address:
3.2 The Advance payment is one million U.S. dollars (U.S.
$1,000,000). Foundation acknowledges payment of the Advance
from White Pine and receipt of the Advance by Foundation in
full satisfaction of White Pine's obligation to pay the
Advance, with no further obligations with respect to the
Advance except as expressly stated in section 3.3 below.
3.3 The Adjustment payment will be the total difference between
(a) the Royalties from White Pine to Foundation under the
Prior License for the period from January 1, 1997 through
December 31, 2000 and (b) the Advance. If the Royalties
exceeds the Advance, then the Adjustment payment will be a
payment by White Pine to Foundation in the amount of the
excess due on January 31, 2001.
3.4 The Remainder is three hundred thousand U.S. dollars (U.S.
$300,000) per year to be paid by White Pine to Foundation as
follows:
(1) $300,000 on June 30, 2000
(2) $300,000 on June 30, 2001
(3) $300,000 on June 30, 2002
3.5 White Pine agrees to keep accurate records showing the
information by which White Pine arrived at the Adjustment, and
agrees to permit a person appointed by
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Foundation and acceptable to White Pine to make such
inspection of the records as may be necessary to verify the
Adjustment reports made by White Pine.
3.6 In consideration of Foundation's performance under Section 2
of this Transfer Agreement, White Pine will rescind stock
warrants previously issued to Foundation with a warrant
exercise price of $6 per share and will replace such warrants
with warrants to purchase the same number and quantity of
shares at a warrant exercise price of $1 per share. The manner
in which this obligation will be performed will be mutually
acceptable to both parties, provided however, that White Pines
will not issue new warrants until all of such previously
issued warrants are surrendered.
4. REPRESENTATIONS AND WARRANTIES
4.1 The Parties hereby represent and warrant to one another that
each has full corporate power and authority to enter into this
Transfer Agreement and to carry out the provisions hereof.
4.2 Foundation hereby represents and warrants to White Pine
that Foundation is the owner of all rights, title, and
interests in and to the Technology and the Marks, including
all patent rights, trademark rights, copyrights, and trade
secrets, and other proprietary rights, however denominated,
and all Documentation related to the Technology, and has
full legal right, power and authority to grant to White
Pine an Assignment of all such rights and Documentation, as
set forth in this Transfer Agreement without violating any
rights of any third party, including without limitation,
the National Science Foundation, or any person claiming by,
through, or under the National Science Foundation, with the
exception of the University of Illinois. Foundation
represents and warrants that it has executed a license
agreement with the University of Illinois, copy attached
hereto as Attachment F, which grants Foundation the right
to sublicense software pertaining to the processing of
audio information.
4.3 Foundation further represents and warrants to White Pine that
Foundation has no outstanding encumbrances or agreements,
including any agreements with academic institutions,
universities, third party employers, or any person claiming
by, through, or under any of these entities, whether written,
oral or implied, which would be inconsistent with the terms
and provisions of this Transfer Agreement, and there is
currently no actual or threatened suit or claim by any third
party based on an alleged violation of any agreements or
obligations entered into by Foundation.
4.4 Foundation makes no representations or warranties other than
those explicitly specified in this paragraph 4.
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5. INDEMNIFICATION AND LIMITED LIABILITIES
5.1 INDEMNIFICATION - Foundation shall defend, indemnify, and hold
harmless White Pine, its successors, subsidiaries and assigns,
from and against any losses, damages, liabilities, costs,
expenses, fees (including reasonable attorney's fees),
recoveries, actions, claims, causes, allegations, judgments,
and penalties that may be imposed upon, obtained against, or
suffered by White Pine, its successors, subsidiaries and
assigns, by the breach of any warranty, covenant, agreement or
representation made by Foundation in this Transfer Agreement.
Foundation's liability under this paragraph 5.1 shall be
limited to royalties actually paid under paragraphs 3.3 and
3.4.
5.2 Except for and expressly excluding Foundation's
indemnification of White Pine under Paragraph 5.1, White
Pine shall defend, indemnify, and hold harmless Foundation,
its successors, subsidiaries and assigns, from and against
any losses, damages, liabilities, costs, expenses, fees
(including reasonable attorney's fees), recoveries,
actions, claims, causes, allegations, judgments, and
penalties that may be imposed upon, obtained against, or
suffered by Foundation, its successors, subsidiaries and
assigns, arising (a) out of any use, sale, or other
disposition by LICENSEE or its transferees of Technology or
Marks, or (b) out of any use, sale or other disposition by
LICENSEE or its transferees of products made by use of
Technology or Marks. As used in this clause, Foundation
includes its Trustees, Officers, Agents and Employees, and
those of Cornell University, and "LICENSEE" includes its
Affiliates, Subsidiaries, Contractors and Sub-Contractors.
6. CONFIDENTIALITY
6.1 STANDARD OF CARE - Foundation will maintain Confidential
Information received from White Pine in such manner and with
the same degree of care that it exercises with respect to its
own information of a like nature, but in no event less than
reasonable care, so as to prevent unauthorized dissemination
and use of White Pine's Confidential Information.
6.2 OBLIGATION TO PROTECT - Foundation will not disclose
Confidential Information received from White Pine to any third
parties, except as permitted by this Transfer Agreement, or
otherwise permitted in writing by White Pine. Foundation will
not use Confidential Information received from White Pine for
any purpose other than as provided herein.
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7. TERM AND TERMINATION
7.1 TERM - This Transfer Agreement shall commence, on the
Effective Date and shall continue in full force and effect
thereafter unless and until terminated as provided in this
section 7.
7.2 TERMINATION - In the event of a material breach of any
warranty, term, condition or covenant as set forth in this
Transfer Agreement by either party, the non breaching party
may suspend its performance or terminate this Transfer
Agreement, upon the failure of the breaching party to cure
such breach after ninety (90) days of receiving a written
notice thereof from the non-breaching party.
7.3 EFFECT OF TERMINATION - Upon termination of this Transfer
Agreement or any provision thereof, the rights and obligations
of the Parties with respect to the Technology Assignment and
Trademark Assignment, set forth in sections 2.1 and 2.2,
Grant-Back License, set forth in section 2.3, and with respect
to sections 2.4, 2.5, and 6 shall survive such termination and
shall remain in full force and effect. In the event of breach
of the Transfer Agreement by White Pine, Foundation's sole
recourse and remedy shall be an action at law for damages.
Foundation hereby waives and covenants not to assert rights
for recission, or specific performance, or injunctive relief
of any kind.
8. GENERAL PROVISIONS
8.1 FORCE MAJEURE - The failure of any party hereunder to perform
any obligation otherwise due (except for the payment of monies
due hereunder) as a result of governmental action, law, order
or regulation, or as a result of war, act of public enemy,
fire, flood, act of God or other causes of like kind beyond
the reasonable control of such party, will be excused for so
long as said cause exists, provided that the party seeking
excuse under this provision provides prompt written notice of
the events giving rise to such excuse and takes commercially
reasonable steps to mitigate the harm, disruption or delay
caused by such events.
8.2 INDEPENDENT RELATIONSHIP - Foundation and White Pine are
independent contractors and are not, and will not represent
themselves as, principal and agent, partners or joint
venturers. Neither party will attempt to act, or represent
itself as having the power, to bind the other or create any
obligation on behalf of the other.
8.3 SUCCESSORS AND ASSIGNS - This Transfer Agreement shall be
binding upon, and inure to the benefit of, the Parties and
their respective heirs, legal representatives, successors and
assigns.
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8.4 SEVERABILITY - If any term or provision of this Transfer
Agreement is found by a court of competent jurisdiction to be
unenforceable, that provision of the Transfer Agreement shall
be enforced to the maximum extent permissible so as to effect
the intent of the Parties, and the remainder of this Transfer
Agreement will remain in full force and effect.
8.5 NON-WAIVER - The failure of either party to enforce any terms
or provisions of this Transfer Agreement shall not be deemed a
waiver of any rights under, or a waiver of future enforcement
of such terms and of that or any other provisions.
8.6 NOTICES - All notices required or permitted by this Agreement
shall be made in writing, and be deemed given (i) when
personally delivered, (ii) five (5) days after having been
sent by registered or certified mail, return receipt
requested, postage prepaid, or (iii) three (3) days after
having been sent by a reputable private overnight courier with
established tracking capability, such as Federal Express, UPS,
Airborne, or DHL, to the party to be notified, postage
pre-paid and marked for delivery to the party to be notified
at the address first given above or such other address of the
party to be notified may indicate in writing from time to
time.
8.7 GOVERNMENT RIGHTS - To the extent that the Technology, or
any portion thereof, was developed through research
activities subject to 37 C.F.R. Section 401 "Rights to
Inventions Made by Nonprofit Organizations and Small
Business Firms Under Government Grants, Contracts and
Cooperative Agreements," then the federal government shall
have the rights to such Technology, or any portion thereof,
as provided under 37 C.F.R. Section 401, and any
implementing regulations issued by the awarding agency.
8.8 COUNTERPARTS - This Transfer Agreement may be executed by
telephone facsimile and in counterparts. Each signed
counterpart will be deemed to be an original and all the
signed counterparts taken together will be deemed to be one
agreement.
8.9 COMPLETE AGREEMENT - This Transfer Agreement, including all
Exhibits, constitutes the entire agreement between the Parties
regarding the subject matter hereof, and supercedes and
replaces all prior or contemporaneous understandings,
promises, agreements or representations, whether written or
oral, except as provided below.
To the extent necessary, section 5 of the "Prior License"
may be relied upon, for terms specifically relating to the
calculations of Royalties as set forth in sections 3.3
above.
8.10 MODIFICATION -This Transfer Agreement may not be supplemented,
altered, modified, amended, rescinded, canceled or waived, in
whole or part, except by a
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written instrument signed by both Parties and expressly
referencing this Transfer Agreement.
8.11 CHOICE OF LAW AND VENUE - This Transfer Agreement will be
governed by the law of the State of New Hampshire, of the
United States of America, as such law is applied to contracts
made and performed entirely therein. All disputes arising from
or relating to this Transfer Agreement will be heard and
resolved by the courts of Nashua, New Hampshire, USA. The
Parties hereby consent to the personal jurisdiction of such
courts over them, stipulate to the convenience and fairness of
proceeding in such forum, and covenant not to assert any
objection to proceeding in such forum based upon lack of
personal jurisdiction or the alleged inefficiency or
unfairness of proceeding in such forum.
IN WITNESS WHEREOF, the Parties hereto have executed this Transfer
Agreement under seal as of the Effective Date provided above.
White Pine Software, Inc. Cornell Research Foundation, Inc.
By:/s/ Xxxxxx Xxxxxxxxx By: /s/ Xxxxxxx X. Xxxxxx
------------------------------- -------------------------------
Date: Nov. 13, 1998 Date: Nov. 13, 1998
----------------------------- ------------------------------
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EXHIBIT A
SCHEDULE OF DEFINITIONS
In addition to defined terms (indicated by initial capitalization) that
will have the meaning assigned to them as they occur in the context of this
Transfer Agreement, the following terms will have the stated meaning.
"Confidential Information" includes (i) any trade secrets, updates, and
information related to any of the foregoing, including but not limited to any
information relating to White Pine's business plans, product plans, designs,
costs, prices and names, finances, marketing plans, business opportunities,
personnel, research, development or know-how, (ii) all information disclosed to
a Party from or through the other Party in connection with the negotiation and
consummation of the Transfer Agreement that is identified, in writing, as
"Confidential Information" or "Confidential", at the time of the disclosure, or
if not disclosed as such or disclosed orally, reduced to writing and designated
as "Confidential Information" or "Confidential" within five (5) business days
after such time. Confidential Information will not be disclosed to any third
party, or used for any purpose other than the purpose of pursuing the
transactions contemplated by this Transfer Agreement up to the Effective Date,
without the written permission of the other Party. Confidential Information
shall not include information that: (i) is or becomes generally known or
available by publication, commercial use or otherwise through no fault of the
receiving party; (ii) is known and has been reduced to tangible form by the
receiving party at the time of disclosure and is not subject to restriction;
(iii) is independently developed or learned by the receiving party; or (iv) is
lawfully obtained from a third party who has the right to make such disclosure.
Absent a writing agreement signed by both Parties stating otherwise, within
thirty (30) days from the Effective Date, or if the negotiations terminate prior
to closing, within thirty (30) days of such termination, each party will return
to the other all Confidential Information in its possession, including all
copies, duplicates, or transcriptions of such Information, however maintained,
whether in paper, electronic or other medium.
"Documentation" is as defined in Exhibit E.
"Prior License" means the Exclusive Software License Agreement, entered into on
June 1, 1995, between Cornell Research Foundation, Inc. and White Pine Software,
Inc., and as amended on May 22, 1997.
"Products" will mean the White Pine software products which incorporates the
Technology and includes and/or as described below:
"Technology" means the computer software code, developed at Cornell University
known as CU-SeeMe. CU-SeeMe was developed at Cornell University by the Cornell
Information Technologies (CIT) organization, partially under a cooperative
agreement from the National Science Foundation (NSF), and incorporating software
from the University of Illinois for
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processing audio information. The purpose of CU-SeeMe is to make low cost
desktop video conferencing available to Internet users. NSF requested CIT to
further develop the functionality to support another NSF project, the Global
Schoolhouse, an internationally recognized demonstration project on the use of
the Internet in K-12 education. The result is a robust video conferencing system
that provides interactive communication between widely dispersed participants at
a very modest price.
The software consists of two parts, desktop or client software and reflector or
server software. Currently there are two versions of the client, one written for
Apple's Macintosh operating system and one for Windows. The reflector software
runs on a Unix workstation. Both the desktop system and the reflector system
must be connected through an IP (Internet Protocol) network such as a campus
network or the Internet. The desktop system sends the audio and video
information to the reflector which makes the appropriate number of copies and
sends them out to the receiving desktop systems. The reflector may also send
this information to another reflector that, in turn, sends it to the desktop
systems involved in a conference. Currently, a reflector, or multiple reflectors
networked together, will support only one conference at a time.
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EXHIBIT B
TECHNOLOGY ASSIGNMENT
WHEREAS, the undersigned, Cornell Research Foundation, Inc., a New York
corporation having its principal place of business at 00 Xxxxxxxxx Xxxxx, Xxxxx
000, Xxxxxx, Xxx Xxxx 000000 (Hereinafter "Assignor"), has developed technology
(the "Technology") for providing desk-top video conferencing, which Technology
is further defined in Schedule A attached herewith, and executed on even date
herewith, having full right to convey their entire worldwide right, title and
interest, both legal and equitable, in and to said Technology, including all
registrations for patent protection, trademark and/or service xxxx protection,
copyright protection, or other forms of governmental certification or
registration, free from all prior assignments, agreements, licenses, mortgages,
security interests, or other encumbrances whatsoever; and
WHEREAS, White Pine Software, Inc., a Delaware corporation having its
principal place of business at 000 Xxxxxxx Xxxxxx, Xxxxxx, Xxx Xxxxxxxxx 00000
(hereinafter "Assignee"), is desirous of acquiring the entire worldwide
assignment thereof;
NOW, THEREFORE, in consideration of the payments made and to be made
under section 3 and other good and valuable consideration, the sufficiency of
which are hereby acknowledged by the undersigned, the undersigned do hereby
sell, assign, transfer and set over unto said Assignee, its successors and
assigns, their entire right, title and interest throughout the world in and to
said Technology, in any form or embodiment thereof, and in and to the aforesaid
registration; and in and to any application filed in any country based thereon,
including the right to file said foreign applications and claim priority under
the provisions of any international convention or treaty; also the entire right,
title and interest throughout the world in and to any and all patents or
reissues or extensions thereof to be obtained in this or any foreign country
upon said invention or inventions and any divisional, continuation,
continuation-in-part or substitute applications which may be filed upon said
invention or inventions in this or any foreign country; and the undersigned
hereby authorize and request the issuing authority to issue any and all patents
on said application or applications to said Assignee or its successors and
assigns.
The undersigned further agrees, without any further payment or
compensation by said Assignee or its successors and assigns, to communicate to
said Assignee, its representatives or agents or its successors and assigns, any
facts relating to said Technology including evidence for interference purposes
or for other legal proceedings whenever requested; testify in any interference
or other legal proceedings, whenever requested; execute and deliver, on request,
all lawful papers required to make any of the foregoing provisions effective;
and generally do everything possible to aid said Assignee, its successors or
assigns and nominees to secure, obtain and enforce proper protection and
registration for said Technology in this or any foreign country.
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The undersigned further agrees to waive and covenant not to assert any
proprietary rights against the Assignee, including rights for recission,
specific damages, or injunctive relief.
IN TESTIMONY WHEREOF, the undersigned has hereunto set its hand and
seal on the date after its signature.
By: /s/ Xxxxxxx X. Xxxxxx Nov. 13, 1998
--------------------------------- -----------------------------------
of Cornell Research Foundation, Inc. Date
State of New York )
County of Xxxxxxxx)
On this the 13th day of November, 1998, before me personally appeared
Xxxxxxx X. Xxxxxx, to me personally known, and known to me to be the person who
signed the foregoing assignment, and acknowledged the signing of same as his
free act and deed.
/s/ Xxxxxxxx Xxxxxxxx
-------------------------------------------
Notary Public
My commission expires MAY 18, 1999
XXXXXXXX XXXXXXXX
Notary Public, State of New York
No. 4695247
Qualified in Xxxxxxxx County
Term Expires May 18, 1999
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SCHEDULE A
"Technology" means the computer software code, developed at Cornell University
known as CU-SeeMe. CU-SeeMe was developed at Cornell University by the Cornell
Information Technologies (CIT) organization, partially under a cooperative
agreement from the National Science Foundation (NSF), and incorporating software
from the University of Illinois for processing audio information. The purpose of
CU-SeeMe is to make low cost desktop video conferencing available to Internet
users. NSF requested CIT to further develop the functionality to support another
NSF project, the Global Schoolhouse, an internationally recognized demonstration
project on the use of the Internet in K-12 education. The result is a robust
video conferencing system that provides interactive communication between widely
dispersed participants at a very modest price.
The software consists of two parts, desktop or client software and reflector or
server software. Currently there are two versions of the client, one written for
Apple's Macintosh operating system and one for Windows. The reflector software
runs on a Unix workstation. Both the desktop system and the reflector system
must be connected through an IP (Internet Protocol) network such as a campus
network or the Internet. The desktop system sends the audio and video
information to the reflector which makes the appropriate number of copies and
sends them out to the receiving desktop systems. The reflector may also send
this information to another reflector that, in turn, sends it to the desktop
systems involved in a conference. Currently, a reflector, or multiple reflectors
networked together, will support only one conference at a time.
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EXHIBIT C
ASSIGNMENT OF U.S. AND FOREIGN TRADEMARKS
This Assignment is made and entered into as of November 11, 1998, by
and between Cornell Research Foundation, Inc., a New York corporation having its
principal place of business at 00 Xxxxxxxxx Xxxxx, Xxxxx 000, Xxxxxx, Xxx Xxxx
000000 ("Assignor"), and White Pine Software, Inc., a Delaware corporation
having its principal place of business at 000 Xxxxxxx Xxxxxx, Xxxxxx, Xxx
Xxxxxxxxx 00000 ("Assignee").
WHEREAS, the Assignor has rights, title and interests in and to the
marks set forth in paragraph 1 below, the Assignor has used such marks and the
Assignor has filed applications to register such marks with the U.S. Patent and
Trademark Office, and other similar National Offices in the United Kingdom,
France, Germany and Japan; and
WHEREAS, the Assignee is desirous of acquiring all right, title and
interest worldwide in such marks and the applications for registration thereof;
NOW, THEREFORE, in consideration of the payments made and to be made in
section 3, the sufficiency of which are hereby acknowledged, the Assignor hereby
agrees as follows:
1. The Assignor hereby assigns, transfers and conveys to the Assignee
all right, title and interest in and to the following xxxx:
Xxxx Country Serial No.
CU-SeeMe United States
United Kingdom
France
Germany
Japan
2. The Assignor hereby also assigns, transfers and conveys to the
Assignee worldwide rights, title and interests in and to the applications for
registration of the above marks, all registrations and renewals thereof,
together with the goodwill of the business connected with the use of, and
symbolized by, said marks and all rights of action accrued and to accrue under
and
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by virtue thereof, including, without limitation, the right to xxx and recover
for past infringement and passing off of said marks.
3. The Assignor hereby further assigns, transfers and conveys to the
Assignee worldwide rights, title and interests in and to all goodwill of the
business inure to the Assignor in connection with the use of, and symbolized by,
the above xxxx, and all other goodwill, and all rights of action accrued and to
accrue under and by virtue thereof, including, without limitation, the right to
xxx and recover for past infringement and passing off of said marks.
Cornell Research Foundation, Inc.
Date: Nov. 13, 1998 By: /s/ Xxxxxxx X. Xxxxxx
--------------------------------- ------------------------
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XX XXX XXXXXX XXXXXX PATENT AND TRADEMARK OFFICE
Xxxx:
Serial No.:
Filing Date:
Applicant:
Class(es),
Assistant Commissioner for Trademarks
0000 Xxxxxxx Xxxxx
Xxxxxxxxx, XX 00000-0000
Sir:
REVOCATION OF POWER OF ATTORNEY AND
APPOINTMENT OF NEW ATTORNEY
Applicant hereby revokes all previous powers of attorney and appoints
Xxxxxx X. Xxxxx, Esq., Xxxxxxx X. Xxxxxxxxx, Esq., Xxxxx Xxxxxxxx Xxxxxxxxxx,
Esq., Xxxxxx X.X. Xxxxxx, Esq., Xxxxxxx X. Xxxxx, Esq., Xxxxx X. Xxxxxx, Esq.,
T. Xxxxx Xxx, Esq. and Xxxxx X. Xxxx, Esq. of Xxxxx, Xxxx & Xxxxx LLP, or any of
them, Xxx Xxxx Xxxxxx Xxxxxx, Xxxxxx, Xxxxxxxxxxxxx 00000, (000) 000-0000,
Members of the Bar of The Commonwealth of Massachusetts to transact all business
in the U.S. Patent and Trademark Office in connection with the above-referenced
application, and to receive all correspondence from the U.S. Patent and
Trademark Office in connection therewith.
Respectfully submitted,
White Pine Software, Inc.
By:
------------------------------
Name:
----------------------------
Title:
---------------------------
Date: , 1998
-----------------------
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EXHIBIT D
WHITE PINE SOFTWARE, INC. END USER LICENSE AGREEMENT
THIS IS A CONTRACT. BY INSTALLING THIS SOFTWARE YOU ACCEPT ALL THE
TERMS AND CONDITIONS OF THIS AGREEMENT.
1. White Pine grants to you a non-exclusive, non-sublicensable, license to use
this Software in binary executable form.
This White Pine Software, Inc. ("White Pine") End User License Agreement
accompanies a White Pine software product and related explanatory written
materials ("Software"). The term "Software" shall also include any upgrades,
modified versions or updates of the Software licensed to you by White Pine.
YOU MAY NOT USE, COPY, MODIFY, OR TRANSFER THE PROGRAM OR DOCUMENTATION, OR ANY
COPY EXCEPT AS EXPRESSLY PROVIDED IN THIS AGREEMENT.
2. White Pine reserves the right at any time to alter prices, features,
specifications, capabilities, functions, licensing terms, release dates, general
availability or other characteristics of the commercial release of the software.
3. Title, ownership rights, and intellectual property rights in and to the
Software shall remain in White Pine and/or its suppliers. You agree to abide by
the copyright law and all other applicable laws of the United States including,
but not limited to, export control laws. You acknowledge that the Software in
source code form remains a confidential trade secret of White Pine and/or its
suppliers and therefore you agree not to modify the Software or attempt to
decipher, decompile, disassemble or reverse engineer the Software, except to the
extent applicable laws specifically prohibit such restriction.
4. Copyright. The Software is owned by White Pine and its suppliers, and its
structure, organization and code are the valuable trade secrets of White Pine
and its suppliers. The Software is also protected by United States Copyright Law
and International Treaty provisions, You agree not to modify, adapt, translate,
reverse engineer, decompile, disassemble or otherwise attempt to discover the
source code of the Software. You may use trademarks only to identify printed
output produced by the Software, in accordance with accepted trademark practice,
including identification of trademark owner's name. Such use of any trademark
does not give you any rights of ownership in that trademark. Except as stated
above, this Agreement does not grant you any intellectual property rights in the
Software.
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5. White Pine may terminate this License at any time by delivering notice to
you and you may terminate this License at any time by destroying or erasing
your copy of the Software. In the event of termination, the following
sections of this License will survive: 2, 3, 4, 5, and 6. This License is
personal to you and you agree not to assign your rights herein. This License
shall be governed by and construed in accordance with the laws of the State
of New Hampshire and, as to matters affecting copyrights, trademarks and
patents, by U.S. federal law. This License sets forth the entire agreement
between you and White Pine.
6. WHITE PINE OR ITS SUPPLIERS SHALL NOT BE LIABLE FOR (a) INCIDENTAL,
CONSEQUENTIAL, SPECIAL OR INDIRECT DAMAGES OF ANY SORT, WHETHER ARISING IN TORT,
CONTRACT OR OTHERWISE, EVEN IF WHITE PINE HAS BEEN INFORMED OF THE POSSIBILITY
OF SUCH DAMAGES, OR (b) FOR ANY CLAIM BY ANY OTHER PARTY. THIS LIMITATION OF
LIABILITY SHALL NOT APPLY TO LIABILITY FOR DEATH OR PERSONAL INJURY TO THE
EXTENT APPLICABLE LAW PROHIBITS SUCH LIMITATION. FURTHERMORE, SOME STATES DO NOT
ALLOW THE EXCLUSION OR LIMITATION OF INCIDENTAL OR CONSEQUENTIAL DAMAGES, SO
THIS LIMITATION AND EXCLUSION MAY NOT APPLY TO YOU.
7. ACKNOWLEDGMENT: YOU ACKNOWLEDGE THAT YOU HAVE READ THIS AGREEMENT, UNDERSTAND
IT, AND AGREE TO BE BOUND BY ITS TERMS AND CONDITIONS. YOU ALSO AGREE THAT THIS
AGREEMENT IS THE COMPLETE AND EXCLUSIVE STATEMENT OF AGREEMENT BETWEEN THE
PARTIES AND SUPERSEDES ALL PROPOSALS OR PRIOR AGREEMENTS, VERBAL OR WRITTEN, AND
ANY OTHER COMMUNICATIONS BETWEEN THE PARTIES RELATING TO THE SUBJECT MATTER OF
THIS AGREEMENT.
Should you have any questions concerning this Agreement, please contact in
writing: White Pine Software, Inc., 000 Xxxxxxx Xxxxxx, Xxxxxx, XX 00000.
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EXHIBIT E
FOUNDATION DOCUMENTATION
The Foundation Documentation will include all guides, manuals,
laboratory notebooks, documents, notes, diagrams, calculations, tests and tests
results, operating, installation, maintenance or shutdown requirements, and
other written materials reasonably necessary to make the best commercial use of
the Technology, including, without limitation, on-line news groups, web-site
information and content, mailing lists, beta testers and other signed licensees,
and lists of sponsors and consortium members.
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EXHIBIT F
SOFTWARE ROYALTY SHARING AGREEMENT
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SOFTWARE ROYALTY SHARING AGREEMENT
This Agreement made on this 28th day of March, by and between Cornell
Research Foundation, having offices at 00 Xxxxxxxxx Xxxxx, Xxxxx 000, Xxxxxx, XX
00000 (hereinafter "CRF") and the Board of Trustees of the University of
Illinois (hereinafter "UOI").
WITNESSETH THAT:
WHEREAS, CRF desires to out-license intellectual property developed at
Cornell University (CU), and in particular the software known as "CU-SeeMe,"
which implements desk top video conferencing; and
WHEREAS, a portion of the CU-SeeMe software, pertaining to the
processing of audio information (the "Software"), was developed at UOI and
provided to CU at no cost, for the purpose of incorporating it into CU-SeeMe;
and
WHEREAS, CRF has intentions of licensing CU-SeeMe for commercial
purposes under royalty bearing license agreements and is willing to share
royalty income with UOI in proportion to its contribution to CU-SeeMe;
NOW, THEREFORE, the Parties agree as follows:
1. LICENSE. Subject to the terms of this agreement, UOI grants to CRF a license
to use, modify, distribute, and sublicense the Software, in both source code and
executable code forms, under the condition that the Software is integrated with,
and incorporated into, CU-SeeMe.
2. CRF'S RIGHT TO LICENSE CU-SEEME. UOI agrees that CRF shall have the sole
right and responsibility for licensing CU-SeeMe.
3. EXPRESS WARRANTIES. UOI hereby represents and warrants to CRF that (i) UOI
has all rights, absolute title and interest in and to the Software provided to
CU, which is to the best of UOI's present knowledge subject to no adverse claim,
lien, encumbrance or license or rights of any nature of any third party,
including, but not limited to, ownership, patent, trademark, copyright, or trade
secrecy claims or rights of any kind, (ii) to the best of UOI's present
knowledge the Software does not infringe upon any intellectual property rights
of any other person, and (iii) UOI has the full and unrestricted right, power
and authority to enter into this Agreement, to license the Software to CRF and
to consummate the transactions contemplated hereby.
4. NOTIFICATION. UOI reserves the right, at its sole discretion, to release,
license and/or distribute the Software. In the event that UOI makes a decision
to release, license or distribute the Software in source code form, UOI hereby
agrees to provide written notice to CRF at
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least three (3) months in advance of such release, license or distribution.
5. UPDATES. UOI agrees to promptly provide to CRF updates, enhancements,
improvements, additions to, and bug fixes for the Software (the "Updates") for
the duration of the period that UOI distributes the Software and Updates at no
cost. Said Updates shall be provided at no cost and without adjustment to the
royalty distribution, defined in paragraph 6, below.
6. ROYALTY DISTRIBUTION. CRF agrees to provide UOI with ten percent (10%) of
the royalty income, after expenses, derived from the licensing of CU-SeeMe.
Distribution to UOI will be made annually according to CRF's normal accounting
cycle. Under the accounting cycle currently in effect, royalty income is
distributed to institutions in the month of January, for the fiscal year ending
on the previous June 30.
7. ACCOUNTING AND NOTICES. CRF will keep accurate records, certified by it,
showing the information by which CRF arrived at a royalty determination and will
permit a person appointed by UOI and acceptable to CRF (the "Auditor") to make
such inspection of said records as may be necessary to verify royalty reports
made by CRF. Royalty distributions and correspondence shall be sent to the Vice
Chancellor for Research at 000 Xxxx Xxxx Xxxxxx, Xxxxxxxxx XX 00000.
UNDERSTOOD AND AGREED TO:
THE BOARD OF TRUSTEES
UNIVERSITY OF ILLINOIS CORNELL RESEARCH FOUNDATION
/s/ Xxxxx X. Xxxxxxx /s/ H. Xxxxxx Xxxxxxxxx
-------------------------------- ----------------------------------
Signature Signature
Xxxxx X. Xxxxxxx
-------------------------------- ----------------------------------
Name H. Xxxxxx Xxxxxxxxx
Comptroller President
-------------------------------- ----------------------------------
Title Title
3-28-95 March 17, 1995
-------------------------------- ----------------------------------
Date Date
Attest /S/ Xxxxxxxx X. Xxxxxxxx
Xxxxxxxx X. Xxxxxxxx, Secretary
Form Approved
/s/ M. A. Rol____er
Univ. Counsel
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