Technology Transfer and License Agreement
EXHIBIT
10.28
THIS TECHNOLOGY TRANSFER AND LICENSE
AGREEMENT ("the Agreement") effective as of December 14, 2010 (the
“Effective Date”) is entered into by and between NETLAB SYSTEMS, LLC, with its
principal office at 0000 Xxxxx Xxxxx Xxxxxx, Xxxxx, Xxxxxxx
00000 (“Netlab”) and OPENFILM, LLC, with its principal office at 0000
Xxxxx Xxxxx Xxxxxx, Xxxxx, Xxxxxxx 00000 ("Openfilm").
WHEREAS, Openfilm has
developed certain technologies that comprise it’s website portal business (the
“Technologies”) and has transferred all right, interest and title to such
Technologies to Netlab as part of a Technology Transfer Agreement.
WHEREAS, Openfllm desires to
license the Technologies from Netlab and Netlab desires to license the
Technologies to Openfilm, pursuant to the terms and conditions contained
herein.
NOW, THEREFORE, as
consideration for the mutual premises and other covenants contained herein, the
receipt and sufficiency of which is hereby acknowledged, the parties agree as
follows:
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1.
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GRANT
OF LICENSE
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1.1
License. Subject
to the terms of this Agreement, Netlab hereby grants to Openfilm, and Openfilm
hereby accepts, a perpetual, non-exclusive, non-transferable (except as provided
herein) license to use, incorporate, modify and enhance the Technologies in the
use of Openfilm’s Website business, including without limitation, Openfilm’s
ability to license portions of the Technologies to
third-parties.
1.2 Proprietary Marks, Legends
and Notices. Openfilm shall not remove any proprietary marks,
legends and patent and copyright notices that appear on the Technologies
including any users' manuals, handbooks and other written or electronic material
relating to the Technologies.
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2.
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LICENSE
FEES AND PAYMENT TERMS
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2.1 License
Fees. Openfilmshall pay to Netlab a license fee of five
percent (5%) of all gross revenue generated by Openfilm using the
Technologies.
2.2
Payment Terms.
Openfilm shall make payment of the License Fee within ten (10) business days of
the end of each calendar quarter.All payments shall be made in U.S.
Dollars. Any amount not paid when due shall bear a late payment
charge on the unpaid balance at the rate of 1.5% per month or the maximum amount
permitted by law, whichever is less. Receipt of a check, draft or
other commercial paper shall not constitute payment until Netlab shall have
received in cash the full amount thereof.
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3.
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TERM
AND TERMINATION
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This
Agreement shall have an initial term of ten (10) years from the Effective
Date. The initial term shall be renewed for successive renewal terms
of one (1) year each, upon the expiration of the then existing term; provided,
however, that Openfilm can terminate this Agreement by discontinuing its use of
the Technologies. Netlab may only terminate this Agreement at the end
of the initial term or at the end of any subsequent term, by providing
thirty-days (30) written notice of its intent to terminate. Neither party shall
be responsible to the other for any losses arising out of
termination.
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4.
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DEVELOPMENT
AND SUPPORT
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4.1
Development. Netlab
shall provide reasonabledevelopment support services to Openfilm.Openfilm and
Netlab shall meet to discuss the development of additional functionality for the
Website at least once per quarter. After such meeting, Netlab shall
provide a development timetable.Netlab shall provide such development at no
additional costs to Openfilm.
4.2
Assignment of
Innovations. Openfilm shall assign all of its rights in future
innovations related to the Technologies to Netlab for no additional
consideration other than Netlab’s obligation to provide future
development.
4.3 Support. Netlab
shall respond to support requests within 24 hours. Openfilm and
Netlab will monitor user submitted support issues and will coordinate the
prioritization of such issues and requests.
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5.
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LIMITED
WARRANTY
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5.1
Intellectual Property
Rights. Netlab has all Intellectual Property Rights necessary
to license the Technologies to Openfilm in accordance with the terms of this
Agreement.
5.2
Limitations. The
foregoing warranties apply only to Openfilm. Netlab makes no
warranties, express or implied, to any third parties. Netlab
shall provide warranty service only for the most current version of the
Technologies. Netlab shall have no obligation to provide warranty
services if any Material Defect in the Technologies is caused by: (i)
a malfunction of hardware or software not supplied by Netlab; (ii)
modification of the Technologies by any person or entity other than Netlab;
(iii) operator error; (iv) use of the Technologies that is not in accordance
with the operating instructions for the Technologies; or (v) accident, abuse,
misapplication, hackers, Internet viruses, acts of war, terrorism or force
majeure.
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5.3
Disclaimer. EXCEPT
FOR NETLAB'S EXPRESS WARRANTIES STATED HEREIN, TECHNOLOGIES IS PROVIDED "AS IS"
WITHOUT ANY WARRANTY WHATSOEVER. NETLAB AND ITS LICENSORS DISCLAIM
ALL IMPLIED WARRANTIES WITH RESPECT TO THE TECHNOLOGIES, INCLUDING WITHOUT
LIMITATION, ALL IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR
A PARTICULAR PURPOSE.
5.4
Limitation of
Liability. NETLAB'S LIABILITY ARISING OUT OF THIS AGREEMENT OR
LICENSING OF THE TECHNOLOGIES SHALL BE LIMITED TO THE LICENSE FEES PAID BY
OPENFILM DURING THE SIX (6) MONTH PERIOD PRECEDING THE EVENT GIVING
RISE TO NETLAB'S LIABILITY. IN NO EVENT SHALL NETLAB BE LIABLE TO
OPENFILM OR ANY OTHER PERSON OR ENTITY FOR ANY EXEMPLARY, SPECIAL,
CONSEQUENTIAL, INCIDENTAL OR INDIRECT DAMAGES, OR FOR ANY LOST PROFITS, BUSINESS
INTERRUPTION, OR LOSS OF BUSINESS INFORMATION, HOWEVER CAUSED, ON ANY THEORY OF
LIABILITY, AND WHETHER OR NOT NETLAB HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES. NOR SHALL ANY LICENSOR OF NETLAB BE LIABLE FOR ANY DIRECT OR
OTHER DAMAGES OF ANY KIND WHATSOEVER, ARISING OUT OF THE USE OF THE PRODUCTS
PROVIDED PURSUANT TO THIS AGREEMENT. THESE LIMITATIONS SHALL APPLY
NOTWITHSTANDING ANY FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED
REMEDY.
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6.
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OWNERSHIP,
INTELLECTUAL PROPERTY RIGHTS AND
TRADEMARKS
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6.1
Ownership and Intellectual
Property Rights. Openfilm hereby acknowledges Netlab’s
exclusive ownership, title and interest in the Intellectual Property Rights and
Marks and Trademarks as defined herein. Openfilm further agrees that
Netlab retains ownership and all forms of Intellectual Property Rights in the
Confidential Information and Technologies. As used herein, the term
"Intellectual Property Rights" includes without limitation all right, title and
interest in and to all (i) Letters Patent and all filed, pending or potential
applications for Letters Patent, including any reissue, reexamination, division,
continuation or continuation-in-part applications throughout the world now or
hereafter filed; (ii) trade secret rights and equivalent rights arising under
the common law, state law, federal law and laws of foreign countries; (iii)
copyrights, mask works, other literary property or authors rights, whether or
not protected by copyright or as a mask work, under common law, state law,
federal law and laws of foreign countries; and (iv) proprietary indicia,
trademarks, tradenames, symbols, logos and/or brand names under common law,
state law, federal law and laws of foreign countries. Openfilm
assigns to Netlab any Intellectual Property Rights it may now or hereafter
possess in the Confidential Information and theTechnologies and agrees to
execute all documents, and take all actions, that may be necessary to confirm
such rights.
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6.2
Use of
Marks. As used herein, the terms "Marks" or "Trade Marks" mean
all proprietary indicia, trademarks, tradenames, symbols, logos and/or brand
names Netlab may adopt from time to time to identify Netlab, its products, or
any related parties or materials. During the Term, Openfilm shall
have the right to indicate to the public that it is an authorized provider of
the Netlab Software and use the Marks to identify the Netlab Software; but shall
not make any other use of the same (and shall not make any use of any
trademarks, trade names, symbols, or logos of any of Netlab's licensors) for any
reason, except as expressly authorized by this Agreement. At no time
during or after the term of the Agreement shall Openfilm challenge or assist
others to challenge Netlab's Intellectual Property Rights in the Marks or the
registration thereof or attempt to register any trademarks, tradenames or other
proprietary indicia confusingly similar to the Marks, nor shall the
authorized use of the Marks or Trademarks create in Openfilm’s favor any right
or interest in the Netlab Marks or Trademarks.
6.3 Quality
Control. All representations of the Marks that Openfilm
intends to use shall be exact copies of those used by Netlab or shall first be
submitted to Netlab for prior written approval of design, color, and other
details. Upon reasonable notice and request, Netlab may inspect
copies of the Technologies and other materials on which the Marks are used so
that Netlab may monitor the quality of the products bearing the
Marks.
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7.
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CONFIDENTIALITY.
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As used
in this Agreement, "Confidential Information" shall mean all information that is
disclosed by Netlab to Openfilm, including without limitation, hardware and
software designs, product specifications and documentation, trade secrets,
business and product plans, marketing information, know-how and other
confidential business information. Confidential Information shall not
include information which: (i) is or becomes public knowledge without any action
by, or involvement of, the receiving party; (ii) is disclosed by the receiving
party with the prior written approval of Netlab; or (iii) is disclosed pursuant
to any judicial or governmental order, rule or regulation or judicial or
administrative proceeding or request; provided that the receiving party gives
Netlab sufficient prior notice to contest such order. Openfilm shall
not disclose, or permit any third party or entity access to, the Confidential
Information (or any portion thereof) without prior written permission of Netlab
(except such disclosure or access which is required to perform any obligations
under this Agreement). Openfilm shall insure that any employees, or
any third parties who receive access to the Confidential Information, are
advised of the confidential and proprietary nature thereof and are prohibited
from copying, utilizing or otherwise revealing the Confidential
Information. Without limiting the foregoing, Openfilm agrees to
employ with regard to the Confidential Information procedures no less
restrictive than the strictest procedures used by it to protect its own
confidential and proprietary information, but not less than reasonable
care.
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8.
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NOTIFICATION
OF CLAIMS OR UNAUTHORIZED USE
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Openfilm
shall promptly notify Netlab in writing upon: (i) receipt of any
notice of any claims by third parties that might affect the rights of Netlab or
any of its licensors in the Technologies and (ii) its discovery of any
unauthorized use or infringement of the Confidential Information, the
Technologies or Netlab's Intellectual Property Rights with respect
thereto. Netlab shall have the sole and exclusive right to bring an
infringement action or proceeding against infringing third party, and, in the
event that Netlab brings such an action or proceeding, Openfilm shall cooperate
and provide full information and assistance to Netlab and its counsel in
connection with any such action or proceeding.
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9.
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INDEMNIFICATION
BY OPENFILM
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Openfilm
shall protect, defend, indemnify and hold Netlab harmless, at its expense, from
any and all claims, demands, liabilities, obligations, deficiencies, losses,
damages, actions, suits, proceedings, assessments, judgments or settlements,
including all reasonable costs and expenses related thereto such as attorneys'
fees, that arise from or are connected with the development, modification, use
and distribution of the Technologies by Openfilm including, but not limited to,
any unauthorized reproduction, warranty violations, maintenance, defects in
design, workmanship, materials or otherwise or any misrepresentation or covenant
or agreement on the part of Openfilm relating to the
Technologies.
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10.
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GENERAL
PROVISIONS
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10.1
Compliance with Laws of
Other Jurisdictions. Openfilm shall comply with all laws,
legislation, rules, regulations, governmental requirements and industry
standards with respect to the Technologies, and the performance by Openfilm of
its obligations hereunder, existing in any jurisdiction into which Openfilm
directly or indirectly uses the Technologies.
10.2
Governing
Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of Florida, without regard to its choice
of law provisions.
10.3
Cost, Expenses and
Attorneys' Fees. If either party commences any action or
proceeding against the other party to enforce or interpret this Agreement, the
prevailing party in such action or proceeding shall be entitled to recover from
the other party the actual costs, expenses and reasonable attorney's fees,
incurred by such prevailing party in connection with such action or proceeding
and in connection with obtaining and enforcing any judgment or order thereby
obtained.
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10.4
Assignment. This
Agreement, and the rights and obligations hereunder, may not be assigned, in
whole or in part by Openfilm, except to a successor to the whole of
Openfilm's business, without the prior written consent of Netlab. In
the case of any permitted assignments or transfer this Agreement shall be
binding upon, and inure to the benefit of, the successors and assigns of the
parties hereto.
10.5 Notices. Except as
otherwise provided herein, all notices regarding obligations under this
Agreement shall be in writing and either personally delivered or sent
via facsimile, email or certified mail, postage prepaid and return receipt
requested addressed, to such other party at the address specified on the first
page.
10.6 Entire Agreement;
Amendment. This Agreement constitutes the entire agreement
between the parties with regard to the subject matter hereof. No
waiver, consent or modification of terms of this Agreement shall bind either
party unless in writing and signed by both parties, and then such waiver,
consent or modification shall be effective only in the specific instance and for
the specific purpose given. Openfilm shall not be construed as a
third party beneficiary of any agreement between Netlab and any of its
licensors.
IN WITNESS WHEREOF, the parties, as of
the Effective Date, have caused this Agreement to be executed by their duly
authorized representatives.
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NETLAB
SYSTEMS, LLC
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OPENFILM,
LLC
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By:
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/s/ Xxxx Xxxxxxx
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By:
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/s/ Xxxxxx Xxxxx
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Name:
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Xxxx
Xxxxxxx
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Name:
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DmitryKozko
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Title:
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Chief
Technology Officer
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Title:
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Chief
Executive
Officer
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