EXHIBIT 10.4
NOVEMBER 15, 1995
TECHNOLOGY TRANSFER AND LICENSING AGREEMENT
THIS AGREEMENT made and entered into on the 15th day of November, 1995
BETWEEN:
DIGITAL COURIER INTERNATIONAL INC., a corporation duly incorporated
under the laws of Canada and having an office at 8618 Commerce Court,
Burnaby, British Columbia
(hereinafter called "DCI")
OF THE FIRST PART
AND:
MPR TELTECH LTD., a corporation duly incorporated under the laws of
Canada and having its executive offices at 8999 Nelson Way, Burnaby,
British Columbia
(hereinafter called "MPR")
OF THE SECOND PART
WHEREAS DCI is a wholly owned subsidiary of MPR;
WHEREAS, MPR has agreed to sell and DCI has agreed to buy certain software and
hardware designs as they exist on the date of execution of this Agreement, and
MPR and BC TEL shall receive a license back to use the software and hardware
designs for certain specified purposes; and
WHEREAS the parties hereto wish to record in a single agreement their full
arrangement in respect of the software and hardware designs;
NOW THEREFORE this Agreement witnesseth that in consideration of the mutual
premises hereinafter set forth, the parties agree as follows:
1 INTERPRETATION.
1.1 DEFINITIONS. In and for the purpose of this Agreement:
1.1.1 "AFFILIATE" means:
.1 with respect to a natural person, the spouse of such person,
any corporation that is directly or indirectly controlled by
such person and any corporation that employs such person as a
director, officer or employee; and
.2 with respect to a corporation an affiliate of such corporation
within the meaning of "affiliated" under Section 2(2) of the
Canada Business Corporations Act;
1.1.2 "ASSETS" means all of the right, title and interest in and to the:
.1 the Software Copyright;
.2 Hardware Technical Information;
.3 Trademarks; and
.4 Third Party Licenses;
all as same exist as at the Execution Date;
1.1.3 "BC TEL" means BC TEL, a Canadian company with an address at 3777
Kingsway, Burnaby, British Columbia;
1.1.4 "CLAIM" shall have the meaning ascribed thereto in subsection 1(b)
of the Indemnity Sharing Agreement, provided, for the purposes of
this Agreement, that any such Claim shall only arise pursuant to
this Agreement;
1.1.5 "COMMON SHARES" means common shares in DCI;
1.1.6 "ENCUMBRANCE" means any of a mortgage, pledge, hypothecation, lien,
covenant, condition, lease, licence, assignment, option, Claim or
any other title defect, encumbrance or charge whatsoever, whether or
not registered or registerable;
1.1.7 "EXECUTION DATE" means the date of execution of this Agreement;
1.1.8 "EXISTING PURPOSES" has the meaning set out in Schedule 1.1.7;
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1.1.9 "HARDWARE TECHNICAL INFORMATION" means that information of MPR,
including drawings, tooling, test programs and manufacturing
information related to the hardware identified in Schedule 1.1.15,
but shall not include (except for approved supplier's lists,
specifications and inspection documentation) that information which
relates to parts, components, subassemblies and assemblies
commercially available from OEM suppliers, or that which relates to
building and plants generally;
1.1.10 "INDEMNITEES" means, in respect of a Person, that Person's
employees, directors and officers;
1.1.11 "INDEMNITY SHARING AGREEMENT" means the agreement of that title
dated as of the date hereof among MPR, DCI, 945 Investments Ltd.,
CIBC Wood Gundy Capital (SFC) Inc. and Kwikstar Communications Ltd.;
1.1.12 "LICENCES" shall mean those sub-licences entered into by MPR as of
the Execution Date;
1.1.13 "PERSON" means an individual, corporation, body corporate,
partnership, joint venture, association, trust or unincorporated
organization or any trustee, executor, administrator or other legal
representative;
1.1.14 "PREFERENCE SHARES" means the Preferred Shares Series 1 in DCI;
1.1.15 "SHARE EXCHANGE AGREEMENTS" means those Agreements between Kwikstar
and the holders of the common shares of DCI pursuant to which
Kwikstar will acquire all of the outstanding common shares of DCI
from the holders of common shares of DCI in exchange for common
shares of Kwikstar;
1.1.16 "SOFTWARE" shall mean the programs and hardware technical
information proprietary to MPR described in Schedule 1.1.15;
1.1.17 "SOFTWARE COPYRIGHT" means all right, title and interest, including
copyright, in and to the Software and the Source Code;
1.1.18 "SOURCE CODE" means the human readable embodiment of the computer
code associated with the Software, whether contained on paper,
magnetic medium, electronic impulse or other form of media;
1.1.19 "THIRD PARTY LICENSES" means the licenses granted to MPR by third
parties described in Schedule 1.1.18 which are to be assigned to
DCI;
1.1.20 "THIRD PARTY SOFTWARE" shall mean those programs or elements of
programs that are not proprietary to MPR used in conjunction with
the Software;
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1.1.21 "TRADE SECRETS" means all trade secrets and other industrial or
intellectual property pertaining to the Software and or the Hardware
Technical Information, and all documents, records, correspondence
and other information pertaining thereto, including the Source Code;
1.1.22 "TRADEMARKS" means those trademarks and the applications therefor
listed in Schedule 1.1.21; and
1.1.23 "WAVE PRODUCT" means computer and communication hardware, firmware
and software for use in broadband transmission networks to manage
and deliver enhanced multi-media transmission services, whether sold
in association with the trademark WAVE or any trademark used in
substitution for WAVE;
2 PURCHASE OF ASSETS.
2.1 PURCHASE AND SALE. Relying upon the representations and warranties of MPR
set forth herein, and subject to the conditions herein, DCI agrees to purchase
from MPR and MPR agrees to sell to DCI, on the Execution Date, the Assets,
subject to Section 6.2, free and clear of all Encumbrances, for the Purchase
Price, to be paid at the time, and in the manner, set out in Section 2.2.
2.2 PAYMENT OF THE PURCHASE PRICE. DCI shall pay to MPR the sum of
$5,338,577.30 (the "Technology Transfer Fee"), by issuing to MPR, no later than
the Execution Date, 2,000,000 Preference Shares and 3,338,577.30 Common Shares,
which shares represent the Technology Transfer Fee.
3 TECHNOLOGY TRANSFER.
3.1 DELIVERY OF ASSETS. Upon the Execution Date, and as may be reasonably
requested thereafter, MPR shall co-operate with DCI so that DCI shall be placed
in actual possession and operating control of the Assets in accordance with all
of the terms of this Agreement.
3.2 INITIAL TECHNOLOGY TRANSFER. The initial technology transfer will take
place forthwith upon this Agreement coming into effect by means of MPR providing
DCI with information and related materials in the form of documents or otherwise
reflecting the present state of the Assets to the extent permitted by MPR's
existing obligations of confidentiality (hereinafter the "Technology Transfer
Documents").
3.3 TECHNOLOGY TRANSFER DOCUMENTS. The Technology Transfer Documents shall be
copies of all documents, materials and information used in association with or
pertaining to the Assets in the possession or control of MPR to the extent
permitted by MPR's existing obligations of confidentiality.
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3.4 FURTHER OBLIGATIONS. Forthwith following the Execution Date, MPR and DCI
shall meet to determine and agree upon a schedule according to which MPR will
furnish any additional support requested by DCI in writing to permit DCI to
exploit the Assets and the charges for such support.
3.5 REIMBURSEMENT OF COSTS. DCI shall pay to MPR within thirty (30) days of
invoicing the agreed charges for any additional support provided pursuant to
Section 3.4. Upon request by DCI, MPR will provide supporting documentation in
respect of such charges.
4 REPRESENTATIONS AND WARRANTIES OF MPR.
4.1 REPRESENTATIONS AND WARRANTIES. To induce DCI to enter into and to
complete the transactions contemplated by this Agreement, MPR represents and
warrants to DCI, as warranties and representations that are true as of the
Execution Date, that:
4.1.1 ALL NECESSARY CORPORATE ACTION TAKEN BY MPR: all necessary corporate
action on the part of the directors and shareholders of MPR will
have been taken to authorize and approve the execution, delivery and
performance of this Agreement;
4.1.2 TITLE TO THE ASSETS: MPR is the owner of the Assets and, upon
execution of this Agreement, DCI will have good, valid and
marketable title to the Assets free and clear of all Encumbrances
and rights of creditors under applicable bulk sales, bankruptcy or
insolvency legislation or any trustee appointed thereunder;
4.1.3 SOFTWARE ORIGINAL: the Software is original work not copied wholly
or substantially from any other work or material, and no rights in
the Software have been granted to or acquired by any other Person;
4.1.4 SOURCE CODE A TRADE SECRET: the Source Code is a trade secret of MPR
and there has been no disclosure of the Source Code except to
employees and contractors of MPR on a need-to-know basis for the
purpose of performing duties in the course of their employment, and
to customers of MPR pursuant to valid license agreements between MPR
and such customers;
4.1.5 NO OTHER COPIES OF SOURCE CODE: except for the Source Code delivered
by MPR to DCI on execution of this Agreement, the copies of the
Source Code retained by MPR, and the copies of the Source Code
delivered to Persons pursuant to Licenses with or sublicenses from
MPR and the license to BC TEL contemplated in Section 11, there are
no other copies of the Source Code in existence;
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4.1.6 NO BREACHES OF THE THIRD PARTY LICENSES: MPR is not in default of
the Third Party Licenses and has not exploited the property of the
Institute referred to in Section 6.2 except to the extent same is
incorporated into software which is used in conjunction with the
Software;
4.1.7 NO INFRINGEMENT BY THIRD PARTIES: except as disclosed in this
Agreement, MPR is not aware of any activities or conduct of any
third party that would constitute infringement of any intellectual
property or proprietary rights respecting the Assets; and
4.1.8 NO NOTICE OF CLAIM: MPR has not received any notice, claim or threat
of any claim that the manufacture, use or sale of products
incorporating or using the Assets infringe the rights of any third
party.
5 LIMITATIONS ON WARRANTIES OF MPR.
5.1 SPECIFIC EXCLUSION OF OTHER WARRANTIES. THE WARRANTIES SET OUT IN SECTION
4.1 ARE IN LIEU OF ALL OTHER WARRANTIES, AND THERE ARE NO OTHER WARRANTIES,
REPRESENTATIONS, CONDITIONS, OR GUARANTEES OF ANY KIND WHATSOEVER, EITHER
EXPRESS OR IMPLIED BY LAW OR CUSTOM MADE BY MPR TO DCI.
6 REPRESENTATIONS AND WARRANTIES OF DCI.
6.1 REPRESENTATIONS AND WARRANTIES OF DCI. DCI represents and warrants to MPR
that all necessary corporate action on the part of the directors and
shareholders of DCI has been taken to authorize and approve the execution,
delivery and performance of this Agreement and the performance by DCI of its
obligations hereunder and this Agreement has been duly executed and delivered
by, and constitutes a valid and binding obligation of DCI enforceable in
accordance with its terms.
6.2 THIRD PARTY LICENSES. The Third Party Licenses are assigned by MPR to DCI
to the extent of MPR's right to so assign same, and DCI shall take whatever
actions it deems necessary to confirm the assignment of same to DCI and DCI's
rights pursuant to such agreements. The Agreement between MPR and Institut for
Rundfunktechnik Gmbh (the "Institut") referred to in Schedule 1.1.18 has not
been finalized. DCI shall use reasonable commercial efforts to execute an
agreement with the Institut on the terms disclosed in the correspondence
referred to in Schedule 1.1.18 (the "Correspondence"), which will not result in
any liability on the part of MPR. DCI shall forthwith comply with the request
in the Correspondence to deliver object code for the 56002 implementation of the
acoustic cancellation software and the correspondent documentation. MPR will
make no use of and retain no copies of any materials supplied by the Institute
in respect of the Correspondence.
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7 SURVIVAL OF REPRESENTATIONS, WARRANTIES AND COVENANTS.
7.1 SURVIVAL OF REPRESENTATIONS, WARRANTIES AND COVENANTS. All covenants,
agreements, representations and warranties made by MPR and DCI hereunder or
pursuant hereto shall survive from the execution of this Agreement, in the case
of MPR, for the period referenced in the Indemnity Sharing Agreement and, in the
case of DCI, for the period of three years.
8 MPR'S ADDITIONAL COVENANTS.
8.1 MPR'S NON-COMPETE. Except as otherwise expressly provided in writing
between the parties, in consideration of the benefits granted to MPR by DCI, MPR
covenants for a period of two years from the Execution Date that MPR will not:
8.1.1 provide engineering services directly to Digital Generation Systems,
Virtex Services or any entity whose primary business involves the
electronic distribution of advertisements and content to radio
stations; and
8.1.2 directly or indirectly, either alone or in conjunction with any
person, whether as principal, agent, shareholder or investor, engage
in, have an interest in or permit MPR's name to be used in
connection with any business which is directly competitive with the
business of DCI as that business existed as at the date hereof.
9 CONVEYANCE AND FURTHER ASSURANCES.
9.1 SPECIFIC CONVEYANCE OF SOFTWARE COPYRIGHT. On the execution of this
Agreement, MPR shall deliver to DCI a duly executed assignment for the Software
Copyright in the form set out as Schedule 9.1. The License set out in Section
11 of this Agreement shall exist notwithstanding the absolute assignment of
rights contained in the assignment contained in this Agreement.
9.2 SPECIFIC CONVEYANCE OF TRADEMARKS. On the execution of this Agreement, MPR
shall deliver to DCI duly executed assignments of the Trademarks in the form set
out as Schedule 9.2.
9.3 FURTHER ASSURANCES. Each of MPR and DCI shall nevertheless from time to
time on or after the execution of this Agreement execute and deliver all such
conveyances, transfers, assignments and other instruments in writing and further
assurances as may be reasonably within its power in order to give effect to the
provisions hereof, including the completion of any permitted assignment by MPR
pursuant to Section 12.3 of this Agreement.
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10 INDEMNITY.
10.1 MPR'S INDEMNITY. MPR covenants and agrees to indemnify and save harmless
DCI and DCI's Indemnitees of and from all Claims whatsoever arising, directly or
indirectly, out of, under, pursuant to or as a result of:
10.1.1 MPR's federal, provincial, sales, excise, income, corporate or any
other taxes of MPR outstanding at the time of the execution of this
Agreement;
10.1.2 any Claim arising, directly or indirectly, out of, under, pursuant
to or as a result of any matter existing or thing done prior to the
Execution Date;
10.1.3 any misrepresentation or the inaccuracy of or any omission from any
representation or warranty of MPR, or the breach of any covenant
made by MPR, in this Agreement, or in any document delivered
pursuant to the Agreement; and
10.1.4 any infringement or alleged infringement or any faulty or allegedly
faulty Assets used by MPR pursuant to the license set out in Section
11.
10.2 DCI'S INDEMNITY. DCI covenants and agrees to indemnify and save harmless
MPR and MPR's Indemnitees from all Claims whatsoever arising, directly or
indirectly, out of, under, pursuant to or as a result of:
10.2.1 any misrepresentation or the inaccuracy of or any omission from any
representation or warranty of DCI, or the breach of any covenant
made by DCI, in this Agreement, or in any document delivered
pursuant to this Agreement; and
10.2.2 any act or failure to act of DCI as the assignee of the Third Party
Licenses validly assigned to DCI, and any and all of the
exploitation by DCI of any software or other materials of the
Institut and any exploitation by MPR of same as described in Section
4.1.6 before the Execution Date.
10.3 INDEMNITY SHARING AGREEMENT. Notwithstanding anything else in this
Agreement, the obligation of MPR to indemnify DCI and DCI's Indemnitees for
Claims is subject to the provisions of the Indemnity Sharing Agreement.
11 LICENSE BACK TO MPR.
11.1 LICENSE. DCI hereby grants back the perpetual, irrevocable, royalty free
right:
11.1.1 to MPR to use, modify and otherwise exploit the Assets identified in
Schedule 1.1.15 for its Existing Purposes;
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11.1.2 to BC TEL to use, modify and otherwise exploit the Assets identified
in Schedule 1.1.15 for its Existing Purposes; and
11.1.3 such licenses shall be non-transferrable except as provided in
Section 11.6 below.
11.2 CONFIDENTIALITY. Subject to the following paragraph, MPR shall hold
information regarding the Assets in confidence for DCI and shall not, at any
time, without the prior written consent of DCI, reproduce the Assets, except as
is absolutely necessary for the use, modification and exploitation thereof in
accordance with the terms of this Agreement, and shall not divulge same to any
Person other than its sub-licensees who are bound by an obligation of confidence
and its employees with a need to know.
11.3 THIRD PARTY ACCESS. MPR shall have the right to permit its suppliers
("Authorized Third Parties") to have access to the Assets to support MPR's
businesses, provided that such access to the Assets by Authorized Third Parties
is related solely to MPR's purchase of services from Authorized Third Parties
that MPR would otherwise perform for itself. MPR shall be responsible for any
damage caused by an Authorized Third Party's use (or abuse) of the Assets in any
manner except as permitted hereunder. MPR shall use best efforts, including
taking legal action, if required, to ensure that each Authorized Third Party
ceases to use the Assets, and ceases to have access to the Assets, upon such
Authorized Third Party ceasing to have commercial dealings with MPR, and MPR
shall ensure that all Authorized Third Parties cease to use the Assets, and to
have access to the Assets, upon MPR ceasing to have the right to use the Assets.
MPR shall cause its Authorized Third Parties to enter into agreements for the
protection of the confidentiality of the Assets no less stringent than set out
for MPR in this Agreement.
11.4 NO OBLIGATION. DCI shall have no obligation hereunder to perform, and
shall have no liability in respect of, the support, updating or maintenance of
any Assets used by MPR and/or BC TEL. However, DCI is prepared to enter into
support, updating or maintenance arrangements with MPR and/or BC TEL in respect
of the Assets, subject to negotiation of applicable terms and conditions, such
terms and conditions to be as favourable as those offered to DCI's most favoured
customers for similar kinds and quantities of service.
11.5 BC TEL LICENSE FORMALITIES. BC TEL may exercise its rights granted under
this Section 11 by notifying DCI of its intention to exercise such rights and
its agreement to be bound with DCI by the terms of Section 11 of this Agreement
as if BC TEL had signed this Agreement as MPR.
11.6 ASSIGNMENT OF LICENSE. Notwithstanding Section 12.3, each of MPR and BC TEL
may assign their respective rights to use, modify or exploit any part of the
Assets to any other Person upon the acquisition by such Person of substantially
all of the assets of the assigning party relating to the business carried on by
the assigning party respecting such element of the Assets, provided that the
assignee agrees to be bound with DCI by the terms of Section 11 of this
Agreement as if the assignee had signed this Agreement in the place and stead of
MPR .
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12 GENERAL PROVISIONS.
12.1 FORCE MAJEURE. No party shall be in default or liable for any loss or
damage resulting from delays in performance or from failure to perform or comply
with terms of this Agreement due to any causes beyond its reasonable control,
which causes include, but are not limited to: Acts of God or the public enemy;
riots and insurrections, war, accidents, fire, strikes and other labour
difficulties (whether or not such party is in a position to concede to such
demands), embargoes, judicial action; lack of or inability to obtain export
permits or approvals, necessary labour, materials, energy, components or
machinery; acts of civil or military authorities.
12.2 NOTICES. Any and all notices or other information to be given by one of
the parties to another shall be in writing and shall be deemed sufficiently
given when forwarded by prepaid, registered or certified first class air mail or
by facsimile transmission or hand delivery to the other party at the following
address:
if to DCI: Digital Courier International Inc.
8618 Commerce Court,
Burnaby, BC, V5A 4N6
Attention: Chief Executive Officer
-----------------------------------
if to MPR: MPR Teltech
8999 Nelson Way,
Burnaby, BC, V5A 4B5
Attention: Vice-President Business Systems and Applications;
----------
Vice-President and Chief Financial Officer
and such notices shall be deemed to have been received fifteen (15) business
days after mailing if forwarded by mail, and the following business day if
forwarded by facsimile transmission or hand. The aforementioned address of
either Party may be changed at any time by giving fifteen (15) business days
prior notice to the other Party in accordance with the foregoing. In the event
of a generally-prevailing labour dispute or other situation which will delay or
impede the giving of notice by any such means, in either the country of origin
or of destination, the notice shall be given by such specified mode as will be
most reliable and expeditious and least affected by such dispute or situation.
12.3 NO ASSIGNMENT. Except as set out in Section 11.6, this Agreement shall not
be assigned or transferred by any Party except with the written consent of the
other. DCI acknowledges and agrees that it has been advised by MPR that control
of MPR may change during the term of this Agreement and agree that such a change
of control shall not constitute an assignment hereunder or affect this Agreement
in any way. Control of any entity by any person shall be deemed to exist if such
entity would be deemed to be controlled directly or indirectly by such person or
persons pursuant to the terms of the Canada Business Corporations Act.
Notwithstanding any other term of this Agreement, MPR may assign its rights
under this Agreement to any Affiliate,
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including an Affiliate with which it amalgamates, merges or consolidates or
enters into a similar reorganization, or into which it is wound up as part of a
bona fide reorganization, provided that the Affiliate or successor corporation
agrees to be bound by this Agreement in addition to MPR and with its rights and
obligations as if such Affiliate or successor corporation were an original
signatory hereto. In addition, MPR may assign its rights pursuant to this
Agreement to any other Person upon the acquisition by such Person of all or
substantially all of the assets of MPR, provided that such assignee agrees to be
bound with DCI by the terms of this Agreement as if the assignee had signed this
Agreement in the place and stead of MPR. In connection with any permitted
assignment of this Agreement, MPR may assign such provisions of the Indemnity
Sharing Agreement as relate to this Agreement.
12.4 NO INTERFERENCE WITH THIRD PARTY OBLIGATIONS. Nothing in this Agreement
shall be construed as requiring MPR to disclose any of the Assets or to grant
rights under licenses, or to render any technical assistance, which would
violate any confidentiality undertakings which they have towards third persons
or which would violate any present or future law or decree of any government or
governmental office or agency and nothing contained herein shall require the
disclosure of any the Assets which would increase or impose any obligations on
MPR with respect to third parties. MPR represents that it is not under any
confidentiality obligations which would materially affect the grants of rights
set forth herein.
12.5 NO WAIVER. The failure of any party to give notice to another party of the
breach or non-fulfilment of any term, clause, provision or condition of this
Agreement shall not constitute a waiver thereof, nor shall the waiver of any
breach or non-fulfilment of any term, clause, provision or condition of this
Agreement constitute a waiver of any other breach or non-fulfilment of that or
any other term, clause, provision or condition of this Agreement.
12.6 ENTIRE AGREEMENT. This Agreement sets forth the entire agreement and
understanding between the parties in respect of the Assets and supersedes and
cancels all previous negotiations, agreements, commitments and writings in
respect to the subject matter hereof. No party hereto shall be bound by any
term, clause, provision or condition save as expressly provided in this
Agreement or as duly set forth on or subsequent to the date hereof in writing,
signed by duly authorized officers of the relevant parties.
12.7 INDEPENDENT CONTRACTORS. Nothing in this Agreement shall be construed as
establishing or implying any partnership between the parties, and nothing in
this Agreement shall be deemed to constitute any of the parties as the agent of
another party or authorize any party to incur any expenses on behalf of another
party or to commit another party in any way whatsoever, without obtaining the
other party's prior written consent.
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12.8 GOVERNING LAW. This Agreement shall be construed in accordance with and
governed by the laws of the Province of British Columbia and the parties attorn
to the jurisdiction of the courts of such province.
IN WITNESS WHEREOF, the Parties hereto have signed and executed this Agreement
on the date first above mentioned.
DIGITAL COURIER INTERNATIONAL INC.
by its authorized signatory:
Per: /s/ I.R. Bardsley
_________________________________
Name: Ian Bardsley
Title: Chairman
MPR TELTECH LTD.
by its authorized signatory:
Per: /s/ I.R. Bardsley
__________________________________
Name: Ian Bardsley
Title: Vice-President Business Systems and Applications
Per: /s/ Peter Inman
__________________________________
Name: Peter Inman
Title: Vice-President and Chief Financial Officer
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SCHEDULE 1.1.7 - EXISTING PURPOSES
"Existing Purposes" means:
1. with respect to BC TEL, the right to use the Assets for audio
conferencing purposes;
2. with respect to MPR:
2.1 the rights to maintain the Licenses already granted before the
Execution Date to any other Person, which Licenses are listed
below;
2.2 with respect to the OB-100 Store and Forward Switching Hub
Software and the MI-320 ISDN Terminal Adaptor and NDIS
Communication Driver Software, use for real estate information
software products; and
2.3 with respect to the Capella MPEG PC Codec Card Software and
Hardware Technical Information, use in association with the WAVE
Product.
The following existing Licenses have been granted by MPR prior to the Execution
Date:
1. the Agreement between MPR and Royal LePage dated January 1, 1992;
2. the Agreement between MPR and IBM dated February 28, 1992;
3. the Agreement between MPR and PRI dated July 4, 1994; and
4. the Agreement between MPR and Scientific Atlanta dated May 25, 1995.
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SCHEDULE 1.1.15 - DESCRIPTION OF SOFTWARE AND HARDWARE
INTELLECTUAL PROPERTY RIGHTS:
ITEM RIGHTS
OB-100 Store and Forward switching hub software . ownership, subject to licence
back to MPR and BC TEL
for Existing Purposes
DCI Billing system software . ownership
DCI Network management system software . ownership
DCI PC application software . ownership
DCI Audio-on-Demand Demo Prototype software . ownership
MI-320 ISDN terminal adapter Hardware . ownership, subject to licence back to MPR and BC TEL for
Technical Information and NDIS communications Existing Purposes
driver software
Capella MPEG PC Codec Card software . ownership, subject to licence back to MPR and BC TEL
and Hardware Technical Information for Existing Purposes
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SCHEDULE 1.1.18 - THIRD PARTY LICENSES
1. Software License Agreement between MPR and Q900 Software, doing business as
Telenetworks, of 5 Keller Street, Petaluma, CA.
2. Agreement between MPR and Institut fur Rundfunktechnik Gmbh formed by the
correspondence dated 16.10.95, June 6, 1995 and 24.5/95.
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SCHEDULE 1.1.21 - TRADEMARKS
Trade-mark Country Apn. No. Wares/Services
- -------------------------- ------------- ---------- -----------------------
DIGITAL COURIER CANADA 757,046 Providing the delivery of audio and video programming,
INTERNATIONAL advertisements, news recordings and information via a
telecommunications network
DIGITAL COURIER UNITED STATES 74/537,235 Telecommunications services, namely electronic transmission of audio
INTERNATIONAL and video programming, advertising, news recordings, and information
DIGITAL COURIER CANADA 760,312 Providing the delivery of audio and video programming,
INTERNATIONAL advertisements, news recordings and information via a
& design telecommunications network
DIGITAL COURIER UNITED STATES 74/557,267 Telecommunications services, namely electronic transmission of audio
INTERNATIONAL and video programming, advertising, news recordings, and information
& design
CAPELLA CANADA 775,086 Encoder and decoder which converts an analog audio signal
into a digital bit stream, compresses the audio signal, and
decompresses the audio signal
1
CAPELLA UNITED STATES 74/633,799 Encoder and decoder which converts an analog audio signal
into a digital bit stream, compresses
the audio signal, and decompresses the audio signal
DIGITAL RECORD CANADA 781,332 wares: computer software for sampling and downloading new music
REP -----
releases for the radio broadcast industry from an on-
line server using the telephone network
services: providing sampling and downloading of new
--------
music releases for the radio broadcast industry from an on-
line server using the telephone network
DIGITAL RECORD UNITED STATES 74/668,886 wares: computer software for sampling and downloading new
REP -----
music release for the radio broadcast industry from an on-
line server using the telephone network
services: providing sampling and downloading of new music releases for
-------
the radio broadcast industry from an on-line server using the
telephone network
AUDIO CANADA 781,334 wares: computer software for sampling and downloading new
EXCHANGE music releases, record chart ratings information, voice
talent, sound effects libraries, and other
2
broadcast audio material for the radio broadcast industr from an on-
line server using the telephone network services: providing sampling
and downloading of new music releases,
--------
record chart ratings information, voice talent, sound effects
libraries, and other broadcast audio material for the radio
broadcast industry from an on-line server using the telephone network
AUDIO UNITED STATES 74/668,884 wares: computer software for sampling and downloading new music
EXCHANGE -----
releases, record chart ratings information, voice talent, sound effects
libraries, and other broadcast audio material for the radio
broadcast industry from an on-line server using the telephone network
services: providing sampling and downloading of new music releases,
--------
record chart ratings information, voice talent, sound effects
libraries, and other broadcast audio material for the radio
broadcast industry from an on-line server using the telephone network
3
SCHEDULE 9.1 - ASSIGNMENT OF COPYRIGHT
ASSIGNMENT OF COPYRIGHT
THIS AGREEMENT made and entered into as of the . day of ., 1995
BETWEEN:
DIGITAL COURIER INTERNATIONAL INC., a corporation duly incorporated
under the laws of Canada and having an office at 8999 Nelson Way,
Burnaby, British Columbia
(hereinafter called the "Assignee")
OF THE FIRST PART
AND:
MPR TELTECH LTD., a corporation duly incorporated under the laws of
Canada and having its executive offices at 8999 Nelson Way, Burnaby,
British Columbia
(hereinafter called the "Assignor")
OF THE SECOND PART
WHEREAS the Assignor has prepared, written, created or developed certain
software programs, as set out in Attachment 1 hereto (hereinafter called the
"Software");
AND WHEREAS the Assignor desires to transfer entire ownership of the copyright
in the Software to the Assignee;
NOW THEREFORE in consideration of $1 and other good and valuable consideration
the receipt and sufficiency of which is hereby acknowledged, the Assignor and
the Assignee agree as follows:
1. The Assignor hereby sells, assigns and transfers to the Assignee the entire
right, title, interest, ownership and all subsidiary rights in and to the
Software throughout the world, including, without limitation, the copyright
thereto and the right to secure copyright registration therein.
2. The Assignor hereby acknowledges and agrees that, as between the Assignor
and the Assignee, Assignee owns the entire right, title and interest in the
Software, including
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the right to reproduce, prepare derivative works based on the Software,
distribute for sale, to perform publicly and to display the Software.
3. This Agreement shall be binding upon and shall enure to the benefit of the
parties hereto and their respective lawful successors and permitted
assigns.
4. This Agreement shall be governed by and construed in accordance with the
laws of the Province of British Columbia and the parties hereto shall
attorn to the jurisdiction of the courts of such province.
DATED as of this . day of ., 1995.
DIGITAL COURIER INTERNATIONAL INC.
by its authorized signatory:
Per: _____________________________
Name:
Title:
MPR TELTECH LTD.
by its authorized signatory:
Per: _____________________________
Name:
Title:
Per: _____________________________
Name:
Title:
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ATTACHMENT 1
TO ASSIGNMENT OF COPYRIGHT
OB-100 Switching Hub Software
DCI Billing system software
DCI Network management system software
DCI PC Application Software
Capella/MI-300/DSPC/DDPB
- ------------------------
- - MPEG encode and decode firmware
- - Capella/MI-300/DDPB controllers and audio utilities firmware
- - AudioCap Application program
- - MIMPG Windows Audio DLL
- - DSIIC DSP56K Debug Monitor and Flash Programming Utilities
- - Capella production test software
- - G.722/G.711 firmware
- - Audition firmware
MI-320
- ------
- - NDIS Media Access Card Driver
- - MI-3X0 Driver
- - MI-3X0 Firmware
- - ComMon MI-320 Test Application
- - Flash Programming Utilities
- - MI-320 test software
Other Items
- -----------
- - Audio on Demand Application
- - Audition Application
Hardware
- --------
Circuit Card design and manufacturing information for:
- - Capella
- - Capella V.35 daughter board
- - MI320
- - MI320 U Interface board
SCHEDULE 9.2 - ASSIGNMENT OF TRADEMARKS
This Assignment is made the ____ day of __________________, 199_,
BETWEEN MPR TELTECH LTD. (hereinafter called the "Assignor"), whose principal
office or place of business is 8999 Nelson Way, Burnaby, British Columbia,
Canada, AND DIGITAL COURIER INTERNATIONAL INC. (hereinafter called the
"Assignee"), whose principal office or place of business is 8999 Nelson Way,
Burnaby, British Columbia, Canada.
In consideration of the sum of Ten Dollars ($10.00) and other good and
valuable consideration paid to it by the Assignee, the receipt and sufficiency
of which is hereby acknowledged, the Assignor as full beneficial owner hereby
sells, assigns, and transfers unto the Assignee all of its right, title,
interest in and to the following unregistered trade-marks:
TRADE-MARK APN. NO.
- ---------------------------------- --------
DIGITAL COURIER INTERNATIONAL 757,046
DIGITAL COURIER INTERNATIONAL & 760,312
DESIGN
CAPELLA 775,086
DIGITAL RECORD REP 781,332
AUDIO EXCHANGE 781,334
together with the benefit of any use of the trade-marks by the Assignor, and the
goodwill of the business relating to the said trade-marks and to the wares or
services associated with them, to hold unto the Assignee absolutely.
IN WITNESS WHEREOF the parties have executed these presents on the
date first above written.
MPR TELTECH LTD.
by: _____________________________
signature of representative
its: _____________________________
office held by representative
1
DIGITAL COURIER INTERNATIONAL
INC.
by: _____________________________
signature of representative
its: _____________________________
office held by representative
2
U.S. TRADEMARK ASSIGNMENT
-------------------------
THIS ASSIGNMENT effective the ____ day of __________________, 199_,
from MPR TELTECH LTD., a corporation organized and existing under the laws of
Canada and having its principal place of business at 8999 Nelson Way, Burnaby,
British Columbia, Canada, (hereinafter referred to as "ASSIGNOR") to DIGITAL
COURIER INTERNATIONAL INC., a corporation organized and existing under the laws
of Canada and having its principal place of business at 8999 Nelson Way,
Burnaby, British Columbia, Canada (hereinafter referred to as "ASSIGNEE"),
WITNESSETH:
WHEREAS ASSIGNOR has adopted and is the owner of the marks set forth
in the United States trademark applications listed on Schedule A;
WHEREAS ASSIGNEE has acquired certain assets of ASSIGNOR relating to
software and hardware designs, including the marks relating to that business,
together with the goodwill of the business with which said marks are used;
NOW THEREFORE, in consideration of One Dollar ($1.00) and other good
and valuable consideration, receipt of which is hereby acknowledged, ASSIGNOR
does hereby sell, assign and transfer unto ASSIGNEE all right, title and
interest in and to the trademarks listed on Schedule A used by ASSIGNOR in
connection with software and hardware and including the applications for
registration thereof, the right to recover for past infringement thereof, and
all goodwill of the business in connection with which said trademarks are used
and which is appurtenant thereto, and which is symbolized by said trademarks.
MPR TELTECH LTD.
_____________________________
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SCHEDULE A
UNITED STATES TRADEMARK APPLICATIONS
TRADEMARK SERIAL NO.
- ----------------------------------------- ----------
DIGITAL COURIER INTERNATIONAL 74/537,235
DIGITAL COURIER INTERNATIONAL & DESIGN 74/557,267
CAPELLA 74,633,799
DIGITAL RECORD REP 74,668,886
AUDIO EXCHANGE 74/668,884
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