EXHIBIT 10.11
AMENDED AND RESTATED
TECHNOLOGY LICENSE AGREEMENT
This Amended and Restated Technology License Agreement (the "Agreement")
is made and entered into as of the 19th day of May, 2005, by and between TERRA
INSIGHT CORPORATION, a Delaware corporation ("TIC"), and THE INSTITUTE OF
GEOINFORMATIONAL ANALYSIS OF THE EARTH, a Liechtenstein establishment (the
"INSTITUTE"). This Agreement amends and restates the Technology License
Agreement dated as of January 7, 2005 between the parties.
WHEREAS, the INSTITUTE is in the business of developing, using, and
licensing others to use, and is the developer and owner of certain technology
and know-how used in the surveying, mapping, detection, and reporting of natural
resources of the Earth (the "Mapping Technology");
WHEREAS, TIC is in the business of providing services and products in
connection with the identification, location, exploration and recovery of
deposits of natural resources ("TIC Services"); and
WHEREAS, the INSTITUTE desires to license all of its commercial Mapping
Technology and to provide related commercial services in the use of the Mapping
Technology, which will be subject to a separate Services Agreement between the
parties;
WHEREAS, TIC desires to license the Mapping Technology and obtain services
from the Institute for use in conjunction with the TIC Services;
NOW THEREFORE, for good and valuable consideration and on the promises and
premises set forth below, the parties agree as follows:
1. DEFINITIONS.
1.1 CONFIDENTIAL INFORMATION:
a. INSTITUTE CONFIDENTIAL INFORMATION: Confidential and/or
proprietary information relating to the Mapping Technology, research,
development, products, processes, trade secrets, business plans, customers,
finances, and personnel data related to the business of INSTITUTE. INSTITUTE
Confidential Information does not include any information (i) which TIC knew
before INSTITUTE disclosed it to TIC; (ii) which has become publicly known
through no wrongful act of TIC; (iii) which TIC developed independently, as
evidenced by appropriate documentation, including Derivatives; (iv) which is
disclosed to TIC by a third party without restriction of confidentiality; or (v)
the disclosure of which is required by law.
b. TIC CONFIDENTIAL INFORMATION: Confidential and/or proprietary
information and Derivatives thereof relating to the research, development,
products, processes, trade secrets, business plans, customers, finances,
personnel data and Project Work Product related to the business of TIC. TIC
Confidential Information does not include any information (i) which INSTITUTE
knew before TIC disclosed it to INSTITUTE; (ii) which has become publicly known
through no wrongful act of INSTITUTE; (iii) which INSTITUTE developed
independently, as evidenced by appropriate documentation; (iv) which is
disclosed to INSTITUTE by a third party without restriction of confidentiality;
or (v) the disclosure of which is required by law.
1
1.2 DERIVATIVES: Any or all translation (including translation into other
human or computer languages), portation, modification, correction, addition,
extension, upgrade, update, enhancement, revision, new version, improvement,
compilation, abridgement, or other form in which the Intellectual Property
Rights may be recast, transformed, or adapted, including any products, systems
or other items which provide comparable or enhanced functionality whether or not
specifically based on or derived from such Intellectual Property Rights.
1.3 INSTITUTE DOCUMENTATION: Any and all manuals, user guides, product
specifications and other documentation, owned by or licensed to INSTITUTE,
relating or referring to the Mapping Technology.
1.4 INSTITUTE RIGHTS: Any and all Intellectual Property Rights of the
INSTITUTE in and to the INSTITUTE mathematical apparatus, formulae, Neuro-net
based software, knowledge database and know-how related thereto, Copyrights,
INSTITUTE Documentation, INSTITUTE Marks, INSTITUTE Patents, and Mapping
Technology.
1.5 MAPPING TECHNOLOGY: INSTITUTE's proprietary Neuro-net based software,
including, but not limited to, all English, Russian and other foreign language,
all commercial and non-commercial, and all present and future versions thereof,
and all required and/or relevant INSTITUTE Documentation, Intellectual Property
Rights and other proprietary rights therein, that is required and/or relevant to
TIC's development of current and future versions of TIC Services.
1.6 FIELDS OF USE ("FOU"): All commercial markets and industries
worldwide.
1.7 INTELLECTUAL PROPERTY RIGHTS: Any and all proprietary, common law,
and/or statutory intellectual property rights, including but not limited to,
patentable materials and patent rights, copyrightable materials and copyrights,
moral rights, trade secret rights, trademark rights, service xxxx rights, and/or
any and all other proprietary rights, including all Derivatives.
1.8 PROJECT WORK PRODUCT: Any report, map, layout, matrix, diagram, data,
analysis, profile modeling, photograph, image, reproduction, simulation,
forecast, study, interpretation, assessment, plan, determination, recommendation
or report generated in any way for or related to a request by or agreement with
TIC or any customer introduced by TIC to the Institute or by the Institute to
TIC.
1.9 TIC CLIENT: A customer or client of TIC in the FOU and Territory.
1.10 TIC SERVICES: Any and all natural resource or other matter
identification, mapping, reports, recommendations for exploration and/or
recovery services that use, integrate, refer to or contain analysis,
mapping/survey or recommendations for exploration and/or recovery thereof, made,
distributed, and/or sold by TIC.
1.11 TIC RIGHTS: Any and all Confidential Information and Intellectual
Property Rights of TIC in and to the TIC Services, exclusive of the INSTITUTE
Rights.
1.12 TERRITORY: Worldwide.
1.13 THIRD PARTY RIGHTS: Any and all of the proprietary third party
patents, copyrights, and trade secrets licensed to INSTITUTE and included in the
INSTITUTE Intellectual Property Rights relating or referring to the Mapping
Technology.
2
2. GRANT BY INSTITUTE.
Subject to the terms and conditions set forth in this Agreement, INSTITUTE
hereby grants to TIC during the Term and in the Territory, and TIC hereby
accepts an exclusive license to use the INSTITUTE Technology in the FOU. During
the term of this Agreement, INSTITUTE will not use, or authorize, license or
permit any person other than TIC to use the INSTITUTE Technology to develop or
offer any mapping or survey services or products for commercial use or other
similar products or services which would, in any manner, compete with TIC in the
FOU. TIC is specifically permitted to use, reproduce, distribute, and prepare
derivative works of the INSTITUTE Technology, and to sublicense such portion of
its rights to affiliated entities of TIC that are reasonably anticipated or
calculated to enhance TIC's market value or to further its business plan,
without further compensation to the INSTITUTE, provided such entities
acknowledge, in writing, and agree to comply with, such material provisions
hereof as are designed to protect the ownership rights of the INSTITUTE, and the
confidentiality of the confidential and/or proprietary information of the
INSTITUTE. Without limitation, TIC's rights shall include the rights:
(i) To use the Mapping Technology internally for testing,
demonstration, training, support and promotional purposes by its personnel;
(ii) To demonstrate the INSTITUTE Technology to potential TIC
Clients;
(iii) To provide training and technical support to employees,
and TIC Clients;
(iv) To use the INSTITUTE Documentation in support of TIC
Services and/or TIC's authorized use of Mapping Technology; and
(v) To own the Project Work Product as to any TIC Services.
3. LIMITATIONS ON TIC.
The foregoing license grants are expressly conditioned upon TIC's
compliance with the following requirements:
3.1 TIC acknowledges that the INSTITUTE Rights and INSTITUTE Confidential
Information are proprietary to INSTITUTE and that INSTITUTE retains all right,
title, and interest therein and thereto, including without limitation all
Intellectual Property Rights therein and therefor, and that TIC has no rights
therein other than as set forth in this Agreement.
3.2 Notwithstanding anything contrary herein, TIC is specifically
permitted to develop derivative works based upon the INSTITUTE Technology. Such
derivative works shall be the property of TIC.
3
4. OBLIGATIONS OF THE PARTIES.
4.1 INSTITUTE OBLIGATIONS. During the Term of this Agreement,
INSTITUTE agrees to:
a. Provide the expertise of sufficient personnel, with appropriate
expertise and competence ("INSTITUTE Key Personnel"), to provide technical
information and support to TIC Key Personnel in the development, use and sale of
TIC Services. INSTITUTE will determine the identity of INSTITUTE Key Personnel.
INSTITUTE will also determine the level of effort of these INSTITUTE Key
Personnel, but it will be reasonable and sufficient to meet INSTITUTE's
obligations under this Agreement. TIC Key Personnel must sign appropriate
individual non-disclosure agreements prior to receiving confidential information
from INSTITUTE. TIC has the right, with prior written permission from INSTITUTE,
to add individuals to the list of TIC Key Personnel;
b. Provide relevant Mapping Technology to TIC in accordance with the
terms and conditions of this Agreement;
c. Provide TIC Key Personnel with access to the relevant Mapping
Technology, including participation in INSTITUTE's testing of relevant Mapping
Technology;
d. Provide sufficient and appropriate training to TIC personnel to
enable TIC to understand the developing Mapping Technology including, but not
limited to:
(i) INSTITUTE will provide appropriate training, at TIC's sole
cost and expense, to TIC in the marketing, use and installation of the Mapping
Technology at INSTITUTE's Corporate Headquarters;
(ii) At TIC's option, INSTITUTE will provide TIC with training
on INSTITUTE's standard technical support procedures at TIC's sole expense;
(iii) INSTITUTE will provide all other reasonable and
necessary training, support and maintenance to TIC, and TIC shall be responsible
for providing such training, support and maintenance to TIC at TIC's sole
expense.
e. Refrain from developing, marketing, licensing, selling or
otherwise distributing, directly or indirectly (including activities through or
in cooperation with any third party), any language models in the FOU.
4.2 TIC OBLIGATIONS. During the Term of this Agreement TIC agrees
to:
a. Engage in and utilize appropriate marketing and promotional
efforts in the FOU in the manner and methods to be mutually agreed between the
parties in writing.
b. Make payment to the INSTITUTE, as provided in Section 8.
4
5. CONFIDENTIALITY.
a. Each party agrees not to disclose any Confidential Information of the
other party and to maintain such Confidential Information in strictest
confidence, to take all reasonable precautions to prevent its unauthorized
dissemination and to refrain from sharing any or all of the information with any
third party for any reason whatsoever except as required by court order, both
during and after the termination of this Agreement. Without limiting the scope
of this duty, each party agrees to limit its internal distribution of the
Confidential Information of the other party only on a "need to know" basis and
solely in connection with the performance of this Agreement, and to take steps
to ensure that the dissemination is so limited.
b. Each party agrees not to use the Confidential Information of the other
party for its own benefit or for the benefit of anyone other than the providing
party, or other than in accordance with the terms and conditions of this
Agreement.
c. All TIC Confidential Information remains the property of TIC and all
INSTITUTE Confidential Information remains the property of INSTITUTE, and other
than as expressly provided by this Agreement.
d. Upon written request of the providing party, or upon the expiration or
other termination of this Agreement for any reason whatsoever, the receiving
party agrees to return to the providing party all such provided Confidential
Information, including but not limited to all copies thereof.
e. TIC agrees to limit access to the INSTITUTE Technology, and any
tangible embodiments thereof (including without limitation documentation,
descriptions, notes, memoranda and other materials defining, describing or
containing the INSTITUTE Technology) shall be made available only to those
individuals identified as TIC Key Personnel, and such other employees of TIC
whom INSTITUTE may have approved in writing and who require access to the
INSTITUTE Technology and such tangible embodiments in connection with TIC's
activities under the licenses granted herein. Copies of such INSTITUTE
Technology shall be subject to appropriate physical and electronic protection to
prevent access by unauthorized personnel.
f. The provisions of this Section shall survive the expiration or other
termination of this Agreement.
6. OWNERSHIP, INTELLECTUAL PROPERTY RIGHTS, AND NON-DISCLOSURE.
6.1 INSTITUTE RIGHTS:
a. INSTITUTE shall retain all rights, title and interest (including
all intellectual property rights) of the Mapping Technology and INSTITUTE
Documentation, and any copies thereof.
b. TIC shall not alter or remove any copyright, trade secret,
patent, proprietary and/or other legal notices contained on or in copies of the
Mapping Technology and INSTITUTE Documentation. TIC shall reproduce and include
any INSTITUTE trademark, copyright, trade secret or proprietary information
notices and other legends on every copy, in whole or in part, of the Mapping
Technology in any form.
5
c. TIC shall render to INSTITUTE commercially reasonable assistance
in connection with INSTITUTE's enforcement of its rights in and to the Mapping
Technology and INSTITUTE Documentation, including without limitation using
efforts to prevent TIC's customers and clients from copying or using the Mapping
Technology and INSTITUTE Documentation outside the scope of this Agreement.
d. Certain data or portions thereof which may be supplied by
INSTITUTE relating to the Mapping Technology are confidential and proprietary to
INSTITUTE and will be so marked. TIC shall abide its obligations under Section
4.2 as applicable to such data.
6.2 TIC RIGHTS: TIC is, and as to INSTITUTE, shall be, the owner of all
worldwide right, title and interest, including any and all Intellectual Property
Rights, and Derivatives in and to the TIC Confidential Information and the TIC
Rights, and owner of the Project Work Product as to any project for which TIC
retains the services of the INSTITUTE.
7. TERM.
The license granted under this Agreement shall commence on the Effective
Date set forth above and terminate at the expiration of thirty years from such
effective date. The Agreement shall automatically renew for another thirty year
period unless terminated by either party in writing within ninety (90) days
before the end of the initial thirty year term unless sooner terminated in
accordance with the provisions of Section 14 below.
8. PAYMENTS.
8.1 TIC shall pay to INSTITUTE an annual license fee of $600,000, payable
on or before December 31 of each year.
8.2 In addition, TIC shall make the payments to the INSTITUTE as provided
for in the Services Agreement between the parties dated as of January 7, 2005.
Until such time as TIC has revenues of at least $10,000,000 in a calendar year,
or such time as the market capitalization for TIC exceeds $200,000,000, the
minimum services fees per year of $500,000 shall be credited against the annual
license fee of $600,000. Notwithstanding the above, in any calendar year in
which TIC has revenues of less than $6,000,000, the minimum services fees per
year of $500,000 shall be credited against the annual license fee of $600,000.
Commencing in years after calendar year 2006, the minimum services fees per year
shall increase annually by the lesser of (i) four percent (4%) or (ii) the
percentage increase of the New York Consumer Price Index using 2005 as the base
year.
9. INSTITUTE REPRESENTATIONS AND WARRANTIES.
INSTITUTE represents and warrants to TIC, during the Term and in the
Territory, as follows:
6
a. OWNERSHIP. INSTITUTE is the owner, or has the right to enter into this
Agreement on behalf of the owner, of all worldwide right, title and interest in
and to any and all INSTITUTE Confidential Information and the INSTITUTE Rights.
INSTITUTE will obtain in writing, prior to delivery to TIC of any INSTITUTE
Confidential Information or INSTITUTE Rights, any and worldwide assignments,
licenses, permissions, or other consents of all third party Intellectual
Property Rights and/or other third party proprietary rights as are or shall be
necessary to enable INSTITUTE to fulfill its obligations to TIC hereunder, and
to enable TIC to utilize the INSTITUTE Rights for their intended purpose.
INSTITUTE shall immediately notify TIC in writing of any limitations on use
required by the proprietor of such third party materials, and INSTITUTE shall
not agree to any such demands or requirements without the prior written approval
of TIC.
b. NON-INFRINGEMENT. To the best of INSTITUTE's knowledge, the INSTITUTE
Rights do not infringe any existing patent, copyright, trademark, service xxxx,
trade name, trade secret, patent, or other Intellectual Property Right of any
third person, firm, corporation or other entity.
c. NO ENCUMBRANCES. To the best of INSTITUTE's knowledge, the INSTITUTE
Rights shall be free and clear of any and all encumbrances and/or liens of any
nature whatsoever, other than those identified by INSTITUTE pursuant to this
Agreement, and other than non-exclusive licenses granted by INSTITUTE to others
to use the INSTITUTE Rights.
d. NO CONFLICTS. To the best of INSTITUTE's knowledge, INSTITUTE's
performance of this Agreement does not conflict with any other Agreement to
which INSTITUTE is bound and, while performing this Agreement, INSTITUTE will
not knowingly enter into any other Agreement in conflict with this Agreement or
which would impair the ability of INSTITUTE to perform this Agreement.
e. MAINTENANCE OF MAPPING TECHNOLOGY. INSTITUTE warrants in the course of
regular business that it will use its best efforts to maintain, update, and
upgrade the Mapping Technology on a continuing and real-time basis during the
Term of this Agreement to ensure the continued and continuing operation,
operating system compatibility, relevance, and viability of the Mapping
Technology during the Term of the Agreement, and that it will hire, train, and
maintain sufficient, and sufficiently qualified, programmers and technology
support/maintenance personnel during the Term of the Agreement. Upon development
and first commercial availability (including beta test) of any new version of
Mapping Technology, INSTITUTE shall promptly deliver a copy thereof, with
available documentation, to TIC.
10. INDEPENDENT CONTRACTOR.
Nothing in this Agreement shall be construed to create a partnership,
joint venture, agency relationship or employment relationship between TIC and
INSTITUTE. Neither party has the right or authority to assume or to create any
obligation on behalf of the other party.
7
11. CONFIDENTIAL INFORMATION.
Because of the nature of this transaction, the parties may encounter
information that is confidential to one another ("Confidential Information").
Confidential Information is information that is clearly marked as confidential
or proprietary. Oral information will be treated as Confidential Information if
the disclosing party submits to the other party written notice describing the
Confidential Information within thirty (30) days of its disclosure. Both parties
agree to protect Confidential Information in the same manner as they protect
their own confidential information. Information is not confidential if the: (i)
information is disclosed by a third party without a duty of nondisclosure; (ii)
information is previously in the public domain; (iii) information is in the
other party's lawful possession prior to disclosure; or (`v) information is
independently developed by the other party. Both parties agree to keep each
other's Confidential Information confidential for the term of this Agreement and
for two (2) years after termination.
12. INDEMNIFICATION.
12.1 BY INSTITUTE. INSTITUTE will defend TIC against a claim that an TIC
Product supplied hereunder infringes a U.S. or foreign patent or copyright, or
other proprietary right of a third party, and INSTITUTE will indemnify TIC and
hold it harmless from and against any loss, liability and any costs, expenses
and reasonable attorneys' fees finally awarded. TIC shall prompt notify
INSTITUTE in writing of the claim, and INSTITUTE shall have sole control of the
defense and all related settlement negotiations, and TIC shall provide INSTITUTE
complete information concerning the claim but any failure to provide prompt
notice or information shall not impair TIC's rights to indemnification hereunder
except to the extent that such failure has materially prejudiced or materially
delayed INSTITUTE in defense of its claim. INSTITUTE shall have the right to
assume the defense of any claim against TIC in connection with such violation or
infringement. After notice from INSTITUTE to TIC of election to assume the
defense thereof, INSTITUTE will not be liable to TIC for any legal or other
expenses subsequently incurred by TIC in connection with the defense thereof
other than reasonable costs of investigation, unless incurred at the written
request of INSTITUTE, in which event such legal or other expenses shall be borne
by INSTITUTE. TIC shall, however, have the right to participate in the defense
and settlement of such claim being defended by INSTITUTE through separate
counsel at TIC's expense. TIC shall not be subject to any liability or
restriction under any settlement entered into by INSTITUTE without TIC's prior
written approval.
a. INSTITUTE shall have no obligation to TIC under this Section if
any claimed infringement is based upon: (i) use of any Mapping Technology
delivered hereunder in connection or in combination with equipment, software or
devices not supplied by INSTITUTE; (ii) TIC's use of a Mapping Technology in the
practicing of any process or in a manner for which the Mapping Technology was
not designed; or (iii) INSTITUTE's compliance with TIC's designs, specifications
or instructions. TIC shall indemnify and hold INSTITUTE harmless from and
against any loss, cost or expense suffered or incurred in connection with any
suit, claim or proceeding brought against INSTITUTE so far as it is based on a
claim that the manufacture or sale of any Mapping Technology delivered hereunder
which has been either (1) modified, altered or combined with any product,
software, or device not supplied by INSTITUTE or (2) modified by INSTITUTE in
accordance with TIC's designs, specifications or instructions, constitutes such
an infringement because of any such modification, alteration or combination.
8
The foregoing states INSTITUTE's entire liability for
infringement by INSTITUTE Technology furnished under this Agreement
b. EXCEPT AS STATED ABOVE, INSTITUTE DISCLAIMS ALL WARRANTIES,
EITHER EXPRESS OR IMPLIED, WITH RESPECT TO THE MAPPING TECHNOLOGY, INCLUDING BUT
NOT LIMITED TO THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE. INSTITUTE SHALL IN NO EVENT SHALL INSTITUTE BE LIABLE FOR
ANY DAMAGES RESULTING FROM LOSS OF DATA, PROFITS OR USE OF EQUIPMENT, OR FOR ANY
SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF OR IN CONNECTION
WITH THE USE OR PERFORMANCE OF THE MAPPING TECHNOLOGY.
c. IT IS ALSO UNDERSTOOD BY BOTH PARTIES TO THIS AGREEMENT THAT THE
MAPPING TECHNOLOGY IS INHERENTLY A STATISTICAL PROCESS; THAT ERRORS ARE INHERENT
IN THE PROCESS OF MAPPING; THAT MAPPING APPLICATIONS AND USAGE MUST BE DESIGNED
TO ALLOW FOR SUCH ERRORS IN THE MAPPING PROCESS. INSTITUTE SHALL IN NO EVENT BE
LIABLE FOR ANY DIRECT OR INDIRECT DAMAGES, INCLUDING PERSONAL INJURY, RESULTING
FROM ERRORS IN THE MAPPING PROCESS.
12.2 BY TIC. TIC agrees to indemnify and hold harmless INSTITUTE, its
officers, agents, and employees from and against all liability, loss, cost,
damages, claims or expenses (including reasonable attorneys fees) arising out of
any claims or suits, whatever their nature and however arising, which may be
brought or made against INSTITUTE by reason or arising from (i) any material
breach this Agreement by TIC or (ii) any allegation of third party intellectual
property right(s) infringement or unfair competition, where such claim or suit
is based upon the combination, operation, modification, or use of the INSTITUTE
Rights, if such claim of infringement would have been avoided but for such
combination, operation, modification, or use. TIC shall have sole control over
the selection of counsel and the defense of any claim or any settlement thereof,
at TIC's expense. INSTITUTE shall provide TIC with its reasonable assistance in
the defense of such claim, at the expense of TIC. In no event may TIC enter into
any third party settlement agreements which would in any manner whatsoever
affect the right of, or bind, INSTITUTE in any manner to said third party,
without the prior written consent of INSTITUTE.
12.3 NOTIFICATION. The party seeking indemnification under this Section
shall immediately notify the other party, in writing, of any claim or proceeding
brought against it for which it seeks indemnification hereunder.
IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY INCIDENTAL,
CONSEQUENTIAL, INDIRECT OR SPECIAL DAMAGES OF ANY NATURE WHATSOEVER, EVEN IF
SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
9
12.4 INSURANCE. Each party will carry appropriate and sufficient policies
of insurance, which must comply with all statutory regulations in the state (or
country) where this Agreement is being performed, which shall be in effect at
least as early as the Effective Date of this Agreement and which shall remain in
force and provide coverage throughout the Territory until the effective date of
Termination. Each party shall be solely responsible for the payment of all
deductibles on its own policies. Such policies of insurance shall include, but
are not limited to, the following: (i) Workers' Compensation and State
Disability, including Employers' Liability, (ii) Comprehensive General
Liability, (iii) Umbrella Liability, and (iv) Auto Liability. Prior to the
Effective Date of this Agreement, each party will deliver to the other a
certificate of insurance or other documentary proof that each party has obtained
the required insurance policies pursuant to this Agreement.
12.5 The provisions of this Section shall survive the expiration or other
termination of this Agreement.
13. LIMITATIONS OF ACTIONS.
Neither party shall maintain any action against the other party
unless written notice of any claim alleged to exist is delivered by the other
party within three business days after the event complained of first becomes
known, and an action is commenced within ninety days after such notice.
14. TERMINATION.
14.1 FOR CAUSE: Without prejudice to any rights which it may have under
this Agreement or in law, equity, or otherwise:
a. Either party shall have the right to terminate this Agreement if
the other party materially defaults in the performance of any of its material
obligations or material breaches any material term, provision, warranty or
representation under this Agreement ("Defaults"). Upon the occurrence of any of
the foregoing Defaults, the non-Defaulting party shall give notice of Default in
writing to the Defaulting party, who shall have sixty (60) days from the date of
notice in which to correct any Default, or if not wholly curable within said
sixty days, to use its best efforts to commence any and all steps reasonably
necessary to cure such Default. If the Defaulting party fails to correct the
Default or to commence any and all steps reasonably necessary to cure such
Default within the notice period, the non-Defaulting party shall give notice of
termination of this Agreement in writing to the Defaulting party, and if not
cured prior to thirty (30) days thereafter, this Agreement shall terminate on
the last day of such notice period unless otherwise agreed to in writing signed
by both parties.
b. This Agreement shall terminate automatically and without further
notice to the other party in the event that either party shall make any
unauthorized assignment for the benefit of creditors, file any petition under
the bankruptcy or insolvency laws of any jurisdiction, have or suffer a receiver
or trustee to be appointed for its business or property, or be adjudicated a
bankrupt or an insolvent.
14.2 EFFECT OF TERMINATION FOR DEFAULT OF EITHER PARTY. Upon expiration or
termination of this Agreement for the Default of either party, or for any reason
(including expiration under Section 6.0) other than the insolvency, bankruptcy,
reorganization of INSTITUTE or its authorized successors or assigns, or the
termination, cessation, or inability or failure to maintain the Mapping
Technology or that portion of the business associated with the Mapping
Technology during the Term of the Agreement, by INSTITUTE or its authorized
successors or assigns:
10
a. TIC shall, within five (5) business days thereof, return or, at
INSTITUTE's option, destroy all whole or partial copies of the INSTITUTE Rights
in TIC's possession, custody or control, and certify to INSTITUTE in writing
within five (5) business days thereafter that it has complied with the foregoing
obligation;
b. Each party shall return all copies of Confidential Information
disclosed by the other party which remain in its possession or under its
control;
c. Termination shall not affect the rights of TIC Clients to
continue to use the Mapping Technology acquired from TIC in accordance with the
terms of this Agreement;
d. Termination shall not affect TIC's obligation to pay to INSTITUTE
all amounts due as of the effective date of Termination and shall not affect
INSTITUTE's obligation to refund to TIC any amounts paid by TIC attributable to
any period of time after the effective date of termination; and,
e. Except in the case of termination of this Agreement for the
Default of TIC, TIC shall have the continued right to exercise the rights and
licenses granted in Section 2 in connection with the Mapping Technology as in
existence as of the date of expiration or termination (and any subsequent
improvements or Derivatives thereof), by TIC after such expiration or
termination, and provided that TIC's rights under Section 2.a shall no longer be
exclusive.
14.3 EFFECT OF TERMINATION FOR INSTITUTE INSOLVENCY, ETC. In addition to
requirements and dispositions set forth in preceding paragraph 11.2, upon
termination of this Agreement for the (i) insolvency, bankruptcy, reorganization
of INSTITUTE or its authorized successors or assigns, (ii) insolvency,
bankruptcy, reorganization of INSTITUTE or its authorized successors or assigns,
including the transfer (by cash, credit, or stock purchase) of all or a majority
of either INSTITUTE's total assets or that portion of INSTITUTE's business
attributable to the Mapping Technology to a third party, or (iii) the
termination, cessation, or inability or failure to maintain the Mapping
Technology or that portion of the business associated with the Mapping
Technology, during the Term of the Agreement, by INSTITUTE or its authorized
successors or assigns, then all of the rights granted by INSTITUTE to TIC
hereunder shall immediately and automatically convert into worldwide, fully paid
up, fully transferable, perpetual licenses (a)exclusive in the Exclusive FOU and
(b) Non-Exclusive in the Non-Exclusive FOU.
15. ASSIGNMENT.
15.1 Either party may assign its rights, duties and/or obligations under
this Agreement in connection with the transfer (by merger or by sale of assets
or stock) of all or a majority of either its total assets or that portion of its
business attributable to the Mapping Technology (in the case of INSTITUTE) or
the TIC Services (in the case of TIC) to a third party, provided that any such
assignment is made expressly subject to the terms and conditions of this
Agreement, and the assignee agrees in writing to be bound by the terms and
conditions hereof. TIC may sublicense such portion of its license or other
rights hereunder to any affiliate of TIC for any good business reason.
15.2 Except as otherwise provided by this Agreement, neither party may
assign its rights, duties and obligations under this Agreement, without the
prior written consent of the other party, and further provided that any such
assignment is made expressly subject to the terms and conditions of this
Agreement, and the assignee agrees in writing to be bound by the terms and
conditions hereof.
11
16. NO PARTNERSHIP.
This Agreement does not constitute and shall not be construed as
constituting a partnership or joint venture between TIC and INSTITUTE. Neither
party shall have any right to obligate or bind the other party in any manner
whatsoever, and noting herein contained shall give, or is intended to give, any
rights of any kind to any third persons.
Any commitment made by TIC to its customers with respect to quantities,
delivery, modifications, interfacing capability, suitability of software, or
suitability in specific applications will be TIC's sole responsibility. TIC has
no authority to modify the warranties contained in this Agreement or to make any
other commitment on behalf of INSTITUTE, and TIC will indemnify and defend
INSTITUTE from any liability, suit or proceeding for any such modified warranty
or other commitment by TIC.
TIC has the right to determine its own resale prices, and no
INSTITUTE representative will require that any particular price be charged by
TIC or grant or withhold any treatment to TIC based on TIC's pricing policies.
TIC agrees that it will promptly report directly to INSTITUTE officer any effort
by INSTITUTE personnel to interfere with its pricing policies.
17. NOTICES.
All notices required under this Agreement will be in writing, will
reference this Agreement, and will be deemed given: (i) when delivered
personally; (ii) when sent by confirmed electronic mail or facsimile; (iii) five
(5) days after having been sent by registered or certified mail, return receipt
requested, postage prepaid; or (iv) one (1) day after deposit with a commercial
overnight carrier for one day overnight service, with written verification of
receipt. All communications will be sent to the names and addresses set forth
beneath the signature of each party to this Agreement.
If to TIC:
Attn.: Xxxxx Xxxxxxxxx
Terra Insight Corporation.
00 Xxxx Xxxxxx, 00xx Xxxxx
Xxx Xxxx, Xxx Xxxx 00000
Fax: 000-000-0000
With a copy (which shall not constitute notice) to:
Xxx Xxxxxxx, Esq.
Law Offices of Xxx Xxxxxxx
00 Xxxx Xxxxxx, 00xx Xxxxx
Xxx Xxxx, Xxx Xxxx 00000
Fax: 000-000-0000
If to INSTITUTE:
THE INSTITUTE OF GEOINFORMATIONAL ANALYSIS OF THE EARTH
x/x Xxxx Xxxxxxx
0-00 X. Xxxxxxxxx Xxxxxx
Xxxxxx, Xxxxxx
Fax: x0 000 0000000
12
Such notice shall be deemed given when actually received. Any party may change
the address for notices by service of notice to the other as herein provided.
18. ENTIRE AGREEMENT.
This Agreement, including the Exhibits annexed hereto, represent the
entire agreement between the parties concerning the subject matter hereof, and
supersede any previous contemporaneous oral or written agreements, commitments,
representations or communications regarding the subject matter of this
Agreement. The failure of either party to require performance of any provision
of this Agreement shall not be, construed as a waiver of its rights to insist on
performance of that same provision, or any other provision, at some other time.
The waiver by either party of any right created by this Agreement in one or more
instances shall not be construed as a further continuing waiver of such right or
any other right created by this Agreement.
19. WAIVER, AMENDMENT, OR MODIFICATION.
Any waiver, amendment or modification of this Agreement shall not be
effective unless made in writing and signed by both parties. No failure or delay
by either party in exercising any right, power or remedy with respect to any of
its rights hereunder shall operate as a waiver thereof in the future.
20. SEVERABILITY.
If any provision of this Agreement is declared void, or otherwise
unenforceable, that provision shall be deemed to have been severed from this
Agreement, which shall otherwise remain in full force and effect.
21. COUNTERPARTS.
This Agreement may be executed in two or more counterparts, each of which
shall be deemed an original, but all of which together shall constitute one and
the same instrument.
22. FORCE MAJEURE.
Neither party will be deemed in default or breach of this Agreement to the
extent that performance of its obligations or attempts to cure any breach are
delayed or prevented by reason of any act of God, fire, natural disaster,
accident, act of government, or an act that is beyond the reasonable control of
either party, provided that such party gives the other party written notice
thereof promptly and, in any event, within fifteen (15) days of discovery
thereof and uses its best efforts to continue to so perform or cure. In the
event of such a Force Majeure, the time for performance or cure will be extended
for a period equal to the duration of the Force Majeure.
13
23. GOVERNING LAW.
This Agreement shall be governed for all purposes by the laws of the State
of New York without regard to conflict of laws principles. The parties expressly
agree to jurisdiction of the state and federal courts located in the City,
County and State of New York. The parties irrevocably waive any objection they
now or hereafter may have respecting the venue of any such action or proceeding
brought in such a court or respecting the fact that such court is an
inconvenient forum, relating to or arising out of this Agreement, and consent to
the service of process in any such action or legal proceeding by means of
certified mail, return receipt requested, or overnight courier, in care of the
address set forth herein or such other address as provided for in accordance
with this Agreement. The parties expressly agree to waive rights to a jury
trial.
24. 1NJUNCTION.
The parties recognize and acknowledge that a breach by one party of any of
its covenants, agreements or undertakings hereunder with respect to the
Confidential Information or Intellectual Property Rights of the other party will
cause the non-breaching party irreparable damage, which cannot be readily
remedied in monetary damages in an action at law. In the event of any default or
breach by one party which could result in irreparable harm to the non-breaching
party, or cause some loss or dilution of the good will, reputation or business
of the non-breaching party, the non-breaching party shall be entitled to an
immediate injunction in addition to any other remedies available, to stop or
prevent such irreparable harm, loss or dilution.
[signature page follows]
14
AGREED TO AND ENTERED INTO BY AND BETWEEN THE PARTIES AS OF THE EFFECTIVE DATE
SET FORTH ABOVE.
TERRA INSIGHT CORPORATION THE INSTITUTE OF GEOINFORMATIONAL
ANALYSIS OF THE EARTH
By: /s/ Xxxxx Xxxxxxxxx By: /s/ Xxxx Railyan
------------------------- ----------------------------
Roman Xxxxxxxxx Xxxx Railyan
Chief Executive Officer Authorized Signatory
Date: May 19, 2005 Date: May 19, 2005
15
