LICENSE AGREEMENT
Between
Vistar Telecommunications Inc.
Suite 1410, 427 Laurier Avenue West
Ottawa, Ontario, Canada, K1G 3J4
(hereinafter referred to as "Vistar")
And
Comtech Mobile Datacom Corp.
19540 Amaranth Dr. P.O. Box 2126
Germantown, Maryland, USA, 20875-2126
(hereinafter referred to as "CMDC")
WHEREAS, Vistar and CMDC entered into a Memorandum of Agreement (MOA) dated
December 12, 1997 intending to pursue opportunities related to the development
and supply of mobile satellite terminals for use on domestic and international
satellite systems and having identified an opportunity with the United States
Department of Defense under the Commercial Operations and Support Savings
Initiative (the "Project");
WHEREAS, Vistar intended to provide engineering capabilities with respect to
designing and prototyping mobile satellite terminals;
WHEREAS, CMDC intended to provide engineering capabilities with respect to
designing and producing satellite access and control equipment and is a supplier
of mobile satellite equipment to the American Government and commercial users;
WHEREAS, pursuant to the said MOA the Parties intended to enter into a
Development and Supply Contract (DSC) within 90 days;
WHEREAS, the Parties commenced performance of their respective obligations but
failed to enter into a DSC;
WHEREAS, CMDC is now desirous of licensing certain Vistar Technology for the
purpose of continuing with the Project, including the development and marketing
of Mobile Satellite Terminals;
WHEREAS, Vistar is desirous of granting CMDC certain rights to license its MST
Technology;
NOW THEREFORE, in mutual consideration, the payment and sufficiency of which is
hereby expressly acknowledged by both Vistar and CMDC, the Parties hereby agree
as follows:
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1. DEFINITIONS
Defined terms used in this License Agreement shall have the meanings set forth
below:
1.1 "Background Technology" shall mean all technology incorporated into
the MST that is not first conceived, developed or reduced to practice
as part of the activities carried out by the Parties pursuant to the
terms of this Agreement and/or the MOA. Background Technology
includes, without limitation, any hardware and software designs that
come with Vistar to this Agreement and are proprietary to, or the
Confidential Information of Vistar, its subcontractors or any other
supplier of Vistar.
1.2 "CECOM" shall mean the United States Army Communications - Electronics
Command.
1.3 "Confidential Information" or "Information" shall mean all materials
relating to the business or affairs of either Party whether of a
financial, technical operation or economic nature including, without
limitation, MTS Technology, Background Technology, all unpublished
know-how, technical data, techniques, records, formulae, processes,
designs, sketches, photographs, plans, drawings, specifications,
samples, reports, studies, manuals, documents, prototypes, business
plans, equipment, working materials, lists of customers, findings,
inventions and ideas whether patentable or not, whether they be trade
secrets or not and whether they be in written, machine readable,
graphic or oral form, that are now or hereafter owned or acquired by
the Disclosing Party and disclosed to the Receiving Party. It is
expressly understood that Confidential Information shall include all
copies and/or reproductions made by the Receiving Party of Information
originally provided under this License Agreement and that all
Confidential Information shall at all times remain the property of the
Disclosing Party. Confidential Information does not include
information which the Receiving Party can clearly demonstrate to the
satisfaction of the Disclosing Party:
(i) is at the time of disclosure, or thereafter becomes, a part of
the public domain through no act or error by the Receiving Party;
or
(ii) was in the lawful possession of the Receiving Party before
disclosure by the Disclosing Party as shown by competent written
evidence and was not already subject to an agreement between the
Parties restricting the disclosure of the said Confidential
Information; or
(iii)is developed independently by the Receiving Party prior to
receipt of the Information from the Disclosing Party, as shown by
competent written evidence; or
(iv) is required to be released under court order or government
regulation, provided that, to the extent permitted by law, the
Disclosing Party is promptly given a copy of such order and the
Receiving Party co-operates with the Disclosing Party if the
Disclosing Party elects to dispute such requirement for
disclosure.
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1.4 "Deliverables" shall mean the items including, without limitation, the
Technology stipulated in Schedules A and B that one Party to this
Agreement is obligated to provide to the other.
1.5 "Disclosing Party" shall mean the Party to this Agreement that
discloses Confidential Information to the Receiving Party.
1.6 "Dispute" shall mean any disagreement or dispute arising under, out
of, in connection with or relating to the intent or operation of this
License Agreement.
1.7 "Effective Date" shall mean the date upon which this License Agreement
becomes effective, which shall be deemed by the Parties to be
_________________ .
1.8 "Intellectual Property" shall mean all forms of intellectual property
pertaining to the subject matter of this License Agreement, and may
include, without limitation, all right, title and interest in and to
all:
(i) issued patents and all filed or pending applications for patents,
including any continuations, continuations in part, re-issues,
re-examinations, substitutions and extensions thereof, in any
country or other jurisdiction in the world; (ii) trade secrets,
and all trade secret rights and equivalent rights arising under
the common law, state law, Federal law, Provincial law and laws
of foreign countries; (iii) mask works, copyrights, other
literary property or authors' rights, whether or not protected by
copyright or as a mask work, under common law, state law, Federal
law, Provincial law and laws of foreign countries; (iv)
proprietary indicia, trademarks, trade names, symbols, logos
and/or brand names under common law, state law, Federal law,
Provincial law and laws of foreign countries; and (v) other
Confidential Information.
1.9 "Intellectual Property Rights" shall mean all forms of intellectual
property rights and protection in any country or other jurisdiction of
the world that may be obtained for, or pertain to Intellectual
Property.
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1.10 "License" shall mean the license, granted by Vistar to CMDC, subject
to the terms and conditions of this Agreement, including, without
limitation, those set out in Section 3.
1.11 "License Agreement" or "Agreement" shall mean this legal document and
the Schedules hereto, containing the rights and obligations of the
Parties, including, without limitation, those relating to the
Deliverables and the licensing by Vistar to CMDC of certain rights in
the MST Technology.
1.12 "Marks" shall mean all trademarks, trade names, symbols, brand names,
logos and other proprietary indicia wherein a Party to this Agreement
has a right, title or interest.
1.13 "Material Breach" unless otherwise stated, shall mean a failure by one
Party to perform a material covenant, condition or obligation of this
Agreement.
1.14 "Mobile Satellite Terminal" or "MST" shall mean a terminal containing
MST Technology.
1.15 "Mobile Satellite Terminal Technology", "MST Technology" or
"Technology" shall mean the Vistar proprietary terminal design
contained within the Vistar Deliverables including all Intellectual
Property Rights therein licensed to CMDC pursuant to the terms of this
Agreement.
1.16 "Receiving Party" shall mean the Party to this Agreement that receives
Confidential Information from the Disclosing Party.
1.17 "Royalty" or "Royalties" shall mean the payments which CMDC is
obligated to pay Vistar in accordance with the terms of Section 3.3 of
this Agreement.
1.18 "Specifications" shall mean the MTS system and terminal specifications
attached hereto as Schedule C.
1.19 "Term" shall have the meaning set forth in Section 5 of this License
Agreement.
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2. DELIVERABLES
2.1 Vistar Deliverables.
Vistar hereby agrees to provide to CMDC the Deliverables in accordance
with the terms of Schedule A. Upon CMDC's receipt of such Deliverables,
and upon Vistar's receipt of payment for such Deliverables in accordance
with the terms of Section 4, Vistar agrees to grant CMDC the License
described in Section 3.
2.2 CMDC Deliverables.
CMDC hereby agrees to provide to Vistar the Deliverables set out in
Schedule B. It is expressly understood that Vistar requires such CMDC
Deliverables inasmuch as the said CMDC Deliverables are required by Vistar
in order for it to commence and/or continue performance of Vistar's
obligations. Such CMDC Deliverables, including but not limited to PCB
boards, enclosures, components and connectors associated with the
prototype Rev D units shall be manufactured, provided and assembled in
accordance with the requirements set out in the Vistar Deliverables.
2.3 Inventory in Stock.
Vistar agrees to provide to CMDC, in a timely manner, for use by CMDC and
or its manufacturer, any inventory held by Vistar on May 14, 1999 of
applicable parts for up to six (6) prototype boards.
2.4 CMDC Indemnification.
Any costs incurred by CMDC and/or its manufacturer relating to the
obligations of this Section are the responsibility of CMDC. Subject to the
terms of this Agreement, including, without limitation, Section 7, CMDC
assumes liability associated with the obligations of CMDC under this
Section and indemnifies Vistar for any losses and/or damages incurred by
Vistar in connection with CMDC's failure to perform its obligations under
this Section.
2.5 Vistar Indemnification.
Subject to the terms of this Agreement, including without limitation,
Section 7, Vistar assumes liability associated with the obligations of
Vistar under this Section 2 and indemnifies CMDC for any losses and/or
damages incurred by CMDC in connection with Vistar's failure to perform
its obligations under this Section.
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3. LICENSE AND ROYALTIES
3.1 No Transfer of Technology.
Except as expressly set out in this Section 3, this Agreement shall not
result in a conveyance, transfer of title, license, or grant of any rights
in any technology or Intellectual Property of one Party to another.
3.2 Mobile Satellite Terminal License.
In consideration of CMDC's obligations under this Agreement, Vistar hereby
grants to CMDC during the Term of this Agreement only:
(i) a non-exclusive, non-transferable license to use, modify,
maintain, lease or sell Mobile Satellite Terminals containing MST
Technology;
(ii) subject to the provisions of Subsection 3.2(iv), a non-exclusive,
non-transferable license to provide, to the MST manufacturers
selected by CMDC, the MST Technology excluding Source Code
required by such manufacturers for the sole purpose of
manufacturing MSTs. However, the Parties expressly agree that in
the event the manufacturer selected by CMDC is not located in the
United States or Canada, CMDC must obtain the prior written
consent of Vistar, which consent shall not be unreasonably
withheld, for release of MST Technology to the Manufacturer;
(iii)notwithstanding Subsection 3.2(i) above, subject to the
requirement to obtain Vistar's prior written consent in each
case, which consent shall not be unreasonably withheld, and
subject to the terms of Subsection 3.2(iv) as well as any other
commercially reasonable terms stipulated by Vistar, Vistar agrees
to grant CMDC the right to sub-license MST Technology, on a case
by case basis, to third parties. The Parties hereby acknowledge
that such commercial terms may, in Vistar's sole discretion,
include amendments to, or replacements of, the terms respecting
Royalties. In such an event, the Parties agree, for the purposes
of only the specific sub-license under consideration, to enter
into a written agreement reflecting any such amendments. In the
event that Vistar grants its consent to a sub-license it is
expressly understood that CMDC remains responsible for the
payment to Vistar of all Royalties associated with MSTs
sub-licensed in accordance with the terms of this Subsection
3.2(iii) and/or for any other payments due to Vistar pursuant to
the said modifications to the Royalty terms;
iv) In the event that MST Technology, or part thereof is authorized
by Vistar for release to a third party manufacturer pursuant to
Subsection 3.2(ii) above, or the granting of a sub-license to a
third party is authorized by Vistar pursuant to Subsection
3.2(iii) then as a pre-condition to the said authorization coming
into effect, CMDC must enter into (i) a sub-license agreement, in
a form satisfactory to Vistar, with such third party stipulating
the terms of the
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sub-license; and (ii) a Confidentiality Agreement in the form set
out in Schedule D with such third party and Vistar. CMDC hereby
agrees to indemnify Vistar for all losses and/or damages
including, without limitation, legal fees, resulting from the
breach of such agreement by such third party.
3.3 Royalties.
(i) CMDC will also pay to VISTAR, upon successful production and sale
of Mobile Satellite Terminals, a Royalty calculated at the rate
of XX dollars ($XX) per MST for up to and including
each of the first ten thousand (10,000) terminals produced and
sold, and XX dollars ($XX) per terminal for each and every
terminal produced and sold thereafter.
(ii) Unless the Term of this Agreement is extended pursuant to Section
6.2, the Royalty shall be payable for a period of six (6) years
commencing on the production of the first commercial MST. In the
event that the Term of the Agreement is extended pursuant to
Section 6.2 then the Royalty shall continue to be payable to
Vistar for an additional period equivalent to the length of the
extension to the Term. It is expressly agreed that in accordance
with this methodology, CMDC's obligations to pay Royalties will
continue after the expiration of the Term of the Agreement until
the expiration of the periods of time described in this
Subsection.
(iii)Royalties shall be paid on a quarterly basis with the payments
reflecting the Royalties associated with MSTs produced and sold
during the immediately preceding quarter. A report detailing the
Royalty calculation shall be provided with each Royalty payment.
On an annual basis, at Vistar's option, Vistar can request an
audit of the Royalty calculation. The audit will be at Vistar's
expense unless it is determined through the audit that CMDC
failed to pay any Royalties owing to Vistar under this Agreement,
exceeding five percent (5%) of the Royalty amount paid by CMDC in
which case, CMDC shall bear all costs of the audit.
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4. MILESTONE AND PAYMENT
4.1 Vistar Schedule of Milestones and Corresponding CMDC Payments.
Milestone
Milestone Date Milestone Description Amount
- -------------------------- ------------------------------------ ----------------
WEEK 2 Letter of Intent May 14, 1999 Rev C Documentation Package:
o Softcopy Schematic
o Softcopy (Board) Layout $XX
o Softcopy Mechanical Drawing
of Enclosure
o Bill of Materials (Costed)
o Specifications for Custom
o Order Parts (Hardcopy)
o Test Proecedure (Softcopy)
o Softcopy (or hardcopy)
mechanical drawing of antenna
- -------------------------- ------------------------------------ ----------------
WEEK 14, AUG. 9, 1999 Execution of Transfer of Licensing $XX
Agreement
WEEK 8, 6/25/99 Rev D Schematic and
WEEK 10, 7/13/99 BOM (Prototype Build)
WEEK 11, 7/23/99 Rev D Layout Sent for Board Build $XX
WEEK 17, 8/26/99 Start of Rev D Test $XX
WEEK 11, 7/23/99 Rev D Enclosure Drawings $XX
WEEKS 17-23
8/26-10/7 Rev D Test
WEEK 24, 10/14 Deliver Rev D Hardware-Golden Boards
Deliver Rev D Documentation
WEEK 25, 10/21 Deliver Rev D Software $XX
Deliver Test Equipment (Item 2),
OS License (Item 4)
COMPLETION TOTAL $XX
- -------------------------- ------------------------------------ ----------------
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4.2 Payment Terms.
Subject to the terms of this Agreement, CMDC shall pay, and VISTAR agrees
to accept the sum of XX dollars ($XX)
in satisfaction of its obligation to provide Deliverables in accordance
with this Agreement. The Parties agree that payment for Vistar
Deliverables shall be made in accordance with the above Mileston Schedule.
Vistar shall invoice CMDC immediately upon completion of a Milestone. All
Milestone payments shall be paid by CMDC net thirty (30) days from receipt
of an invoice.
4.3 CMDC Schedule of Milestones.
Milestone Date Milestone Description
- ------------------------------------------------------------------------
8/26/99 Two Prototype Rev D Boards ready for Test
9/2/99 Two Sets of Test Housings
5. TAXES
Except for taxes on the income of Vistar, CMDC shall be responsible for any and
all taxes of whatever nature due or arising under or out of this Agreement. All
rates and/or prices set forth in Subsections 3.3, 4.1(i), 15.19 and 15.20 are
exclusive of any and all taxes, levies, assessments, surcharges, duties or
similar items assessed by a government body, and CMDC shall be solely and
exclusively responsible for collection, remittance and/or compliance with any
such taxes.
6. TERM
6.1 Initial Term.
This License Agreement shall come into force on the Effective Date and
shall remain in effect for a period of six (6) years from the production
of the first commercial MST or, in the event that CMDC fails to
commercially produce MSTs, eighteen (18) months from the Effective Date.
6.2 Extension to Initial Term.
At CMDC's option, and subject to CMDC's obligations in Subsection 3.3(ii)
the Term may be extended for four (4) subsequent one year periods. In the
event that CMDC wishes to exercise an option to extend the Term of this
Agreement, then prior to the expiration of the current Term it must
provide Vistar with no less than sixty (60) days prior written notice of
its intent to extend the Term. In no event shall the Term of this
Agreement exceed ten (10) years.
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7. LIABILITY
7.1 LIMITATION OF LIABILITY.
IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY OR ANY OTHER
ENTITY FOR ANY SPECIAL, CONSEQUENTIAL, INCIDENTAL, OR INDIRECT DAMAGES,
HOWEVER CAUSED, ON ANY THEORY OF LIABILITY, AND REGARDLESS OF WHETHER SUCH
PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. THIS LIMITATION
SHALL APPLY NOTWITHSTANDING ANY FAILURE OF ESSENTIAL PURPOSE OF ANY
LIMITED REMEDY.
7.2 Monetary Limitation.
As a material condition of Vistar entering into this Agreement, and in
regard to any causes of action arising out of or related to this Agreement
including, but not limited to, claims of negligence, breach of contract or
breach of warranty or otherwise, or any other claim whether in contract,
tort or any other legal theory, CMDC agrees that the liability of Vistar
shall in no event exceed the total amount already paid by CMDC to Vistar,
including all Royalties, under this Agreement.
8. INTELLECTUAL PROPERTY RIGHTS AND CONFIDENTIALITY
8.1 Intellectual Property Rights.
(i) CMDC acknowledges that VISTAR owns:
a. Background Technology, and the Intellectual Property Rights
therein;
b. the MST Technology including, without limitation, all
hardware and software designs and implementations associated
with the MST Technology and the Intellectual Property Rights
therein; and
c. other Vistar Confidential Information including all
Intellectual Property Rights therein.
(ii) VISTAR acknowledges that CMDC owns:
a. the Intellectual Property Rights to those additional
components of the MST which are not MST Technology or Vistar
Background Technology as defined in this Agreement; and
b. other CMDC Confidential Information including without
limitation to the Specifications and all Intellectual
Property Rights therein.
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8.2 Use of Marks.
All documents (in whatever form, including machine readable or electronic
form) and other product materials owned by a Party must contain all proper
Marks, legends, copyright notices and patent markings reflecting the
Intellectual Property Rights of that Party in such documents and
materials. This License Agreement gives neither Party any proprietary or
other rights whatsoever in the other Party's Marks.
8.3 Confidentiality.
Each Party agrees:
(i) to observe confidentiality with respect to the other Party's
Confidential Information;
(ii) not to disclose, or permit any third party or entity access to,
the Confidential Information (or any portion thereof) without
prior written permission of the Disclosing Party; and
(iii)to ensure that any employees, or any authorized 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; and
(iv) without limiting the foregoing, each Party agrees to employ with
regard to the Confidential Information procedures no less
restrictive than the procedures used by such Party to protect its
own similar confidential and proprietary information, but at a
minimum commercially reasonable procedures.
8.4 Breach and Survival.
It is expressly agreed and understood by the Parties that a breach of this
Section 8 shall be deemed a Material Breach of this Agreement which breach
will give rise to injuries that are not fully compensable by damages.
Accordingly, the Party not in breach shall be entitled to apply for
equitable relief. This Section 8 shall survive the expiration or
termination of the Agreement in any manner whatsoever.
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9. INTELLECTUAL PROPERTY RIGHTS INDEMNITY
9.1 Defense by CMDC.
Except as provided in Subsection 9.2 below, CMDC shall defend, at
its own expense, any action brought against Vistar to the extent
that such action is based upon an IP Claim that the use of MST by
CMDC, its permitted licenses and/or assigns infringes any
Intellectual Property rights of a third party.
9.2 Defense by Vistar.
(i) Vistar shall defend, at its expense, any action brought against
CMDC to the extent that it is based on a claim that the use of
the MST Technology developed by Vistar infringes any Intellectual
Property Right of any third party ("IP Claim" or "IP Claimant").
CMDC agrees to notify Vistar promptly in writing of any IP Claim,
to permit Vistar to defend, compromise or settle such IP Claim
and to provide reasonably available information and assistance
regarding such IP Claim; provided that if Vistar fails to retain
defense counsel for any such claim, CMDC may retain its own
defense counsel and defend against such IP Claim.
(ii) Should the MST Technology in the opinion of Vistar's Legal
Counsel, be likely to become the subject of an IP Claim, Vistar
shall either:
a. Procure for CMDC, at no cost to CMDC, the right for CMDC to
continue exercising the rights granted under the CMDC
License;
b. Replace or modify the MST Technology at no cost to CMDC to
make the MST Technology non-infringing, provided that the
replacement or modified MST Technology provides
substantially similar functionality and performance; or
c. If neither a. or b. is technically feasible, terminate
CMDC's then existing rights under this Agreement and refund
of all amounts already paid to Vistar by CMDC under this
Agreement, including all Royalties.
9.3 Limitation. Vistar shall have no liability for any IP Claim to the
extent that it is based upon the operation or use of CMDC or third
party designs, applications, products or materials not supplied,
specified or approved by Vistar in writing and such IP Claim would not
have occurred but for the use of such unapproved CMDC or third party
designs, applications, products or materials, even if the operation or
use of such designs, applications, products or materials is permitted
by the terms of CMDC's License.
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9.4 Notification of Unauthorized Use. Each Party shall promptly notify the
other in writing upon its discovery of any allegedly unauthorized use
or infringement of the MST Technology or the Confidential Information.
In the event that an action is brought regarding such allegedly
unauthorized use or infringement, the Parties shall co-operate and
provide full information and assistance to each other in connection
with any such action or proceeding.
10. REPRESENTATIONS, WARRANTIES
10.1 General Representations and Warranties.
Each Party represents and warrants to the other Party that:
(i) it is authorized to enter into this License Agreement and to
perform its obligations hereunder;
(ii) except as otherwise set forth in this License Agreement, it will
not impair or encumber, in any manner, the Intellectual Property
Rights or other ownership rights of the other Party;
(iii)the execution of this Agreement does not violate any applicable
law, statute or breach any agreement or covenant to which it is a
party or is bound; and
(iv) the performance of its rights and obligations under this
Agreement will not infringe up on any third party's trademark,
copyright, patent or trade secret.
10.2 Vistar Warranties:
(i) Vistar represents and warrants that the MST Technology
Deliverables provided by Vistar under this Agreement are designed
to be used prior, to, during and after Calendar year 2000 A.D.,
and that the said MST Technology will operate during each such
time period without error relating to date data, specifically
including any error relating to, or the product of, date data
which represents or references different centuries or more than
one century.
(ii) The MST Technology shall substantially conform to and achieve the
functionality stated in the Specifications.
10.3 No Other Representations, Warranties or Guarantees.
EXCEPT FOR THE EXPRESS WARRANTIES STATED HEREIN, NEITHER PARTY IS
PROVIDING TO THE OTHER PARTY ANY OTHER EXPRESS OR IMPLIED WARRANTIES UNDER
THIS AGREEMENT, INCLUDING, WITHOUT LIMITATION, ANY IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
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11. TERMINATION
11.1 Early Termination.
(i) Either Party. This License Agreement shall terminate, without
notice,
a. upon the institution by either Party of insolvency,
receivership or bankruptcy proceedings,
b. upon the institution against either Party of insolvency,
receivership or bankruptcy proceedings, if such proceedings
are not dismissed within ninety (90) days of the Party's
receipt of notice of such proceedings against it;
c. upon either Party's making an assignment for the benefit of
creditors of all or part of its assets, or
d. upon either Party's dissolution or ceasing to do business or
upon a decision by the Shareholders and/or Board of
Directors of either Party to cease to do business.
(ii) Upon the occurrence of any of the events set forth in Subsection
11.1 (i), the Party making the filing, assignment, receiving
notice thereof, or dissolving or ceasing to do business shall
immediately inform the other Party in writing of such event.
(iii)Upon the occurrence of any of the events in Subsection 11.1(i),
in the event that Vistar is the party with respect to which the
event occurred, CMDC shall be entitled to exercise the rights set
out in Section 12.
11.2 Termination for Material Breach.
Except in the case of a Material Breach of Sections 8, in the event
of a Material Breach of any provision of this License Agreement, the
non-breaching Party may terminate this License Agreement by giving
thirty (30) days prior written notice to the breaching Party;
provided, however, that this License Agreement shall not terminate
if the breaching Party has cured the breach prior to the expiration
of such thirty (30) day period, or if subject to the terms of this
Agreement any Dispute regarding such breach has been referred to
Arbitration in accordance with the provisions of Section 13. In the
event of a Material Breach of Sections 8, if the breach is not
capable of being cured to the reasonable satisfaction of the
non-breaching Party, the Party not in default may elect to terminate
this License Agreement upon ten (10) business days prior written
notice to the Party in default. In such circumstances, the Agreement
shall terminate at the conclusion of this notice period unless
otherwise mutually agreed upon by the Parties.
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11.3 Effects of Termination.
In addition to pursuing the remedies available under the law, in the
event of the termination of this Agreement by CMDC,
Vistar may revoke CMDC's License upon five days written advance
notice. Upon receipt of such notice CMDC shall:
(i) immediately cease all development and marketing of MSTs and
all use of Vistar Confidential Information, Marks, equipment,
materials and documentation; and
(ii) Pay all amounts owing to Vistar including all amounts owing as
a result of Section 4 and Subsections 3.3 and 15.19.
12. SOURCE CODE
Vistar shall deliver into escrow the VSLP source code for the Viterbi decoder
and frequency estimator modules. The Parties hereby agree that the escrow agent
shall be legal counsel for Vistar, more particularly:
Nelligan Power
Law Offices
66 Slater Street, 19th Floor
Ottawa, Ontario
K1P 5H1
Attention: Stephanie M. Traynor
Upon the occurrence of an event set out in Subsection 11.1(i), provided only
that Vistar is the party with respect to which the event occurred, the above
described source code shall be released to CMDC and Vistar shall be deemed to
have granted CMDC a license to such source code on the same terms as set out in
Subsection 3.2.
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13. ARBITRATION AND DISPUTE RESOLUTION
13.1 Disputes.
In the event of any Dispute, each Party shall provide the other Party with
written notice setting forth the outstanding issues and positions of such
Party regarding such Dispute. It shall be the obligation and
responsibility of each Party to use his or her best efforts, in good
faith, to resolve any such Dispute, in co-operation with appropriate
representatives of both Parties, as soon as reasonably possible.
13.2 Arbitration.
If the Parties are unable to resolve a Dispute within thirty (30) days of
their initial discussions concerning such Dispute, except for Disputes
arising under Section 8, any such Dispute shall be settled by arbitration
in accordance with the Ontario Arbitration Act. The Parties shall mutually
select a single arbitrator. If the Parties are unable to agree on the
selection of an arbitrator within thirty (30) days of starting their
selection process, then the number of arbitrators shall be three (3), and
each Party shall select one arbitrator and the two arbitrators shall
mutually select and agree upon the third arbitrator. The Parties shall
provide the arbitrators and any expert witnesses with all information and
resources they may require to make their decision. Any failure of either
Party to comply with such request of the arbitrators shall be deemed a
Material Breach of this License Agreement. An arbitration decision shall
be binding. The prevailing Party may enter such decision in any court
having competent jurisdiction and failure to comply with such arbitration
decision shall result in a Material Breach by the non-complying Party. The
arbitration proceeding shall be conducted in the English language in
Ottawa, Ontario, unless the Parties agree in writing to conduct the
arbitration in another location. Failure of either Party to attend
arbitration shall result in a Material Breach by the absent Party.
14. CECOM OBLIGATIONS
Vistar acknowledges and agrees to be bound by the flowdown clauses imposed by
CECOM set forth in Schedule E attached hereto and incorporated by reference
herein. For the purpose of this Schedule, Vistar is deemed to be the "Seller"
and CMDC is deemed to be the "Buyer" therein. As an exception to Subsection
15.2, Vistar acknowledges and agrees that the rights of the Government of the
United States as reflected in Schedule E shall be governed by the U.S. Federal
Laws and to the extent that State law may apply, by the laws of the State of
Maryland. Vistar's obligations with respect to Schedule E shall terminate
concurrent with the termination of CMDC's obligations thereunder.
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15. GENERAL PROVISIONS
15.1 Independent Contractors.
The relationship of Vistar and CMDC established by this License
Agreement is that of independent contractors, and nothing contained
in this License Agreement shall be construed to
(i) give either Party the power to direct and control the day-to-day
activities of the other,
(ii) constitute the Parties as Partners, joint venturers, co-owners or
otherwise as participants in a joint or common undertaking, or
(iii)allow either Party to create or assume any obligation on behalf
of the other Party for any purpose whatsoever.
15.2 Governing law.
This License Agreement shall be governed by and construed under the laws
of the Province of Ontario and the laws of Canada, without reference to
conflicts of law principles thereof.
15.3 Notices.
All formal notices hereunder shall be in writing and shall be deemed
effective upon receipt when delivered by hand, overnight delivery courier,
by facsimile transmission (provided such notice is also given in any of
the other manners set forth herein) or when mailed by registered or
certified mail (return receipt requested), postage prepaid, to the Parties
at the addresses listed below (or at such other address for a Party as
shall be specified by like notice).
If to Vistar:
Vistar Telecommunications, Inc.
Suite 1410, 427 Laurier Avenue West
Ottawa, Ontario K1G 3J4
Attention: Vice President, Technology and Programs
If to CMDC:
Comtech Mobile Datacom Corp.
19540 Amaranch Drive
P.O. Box 2126
Germantown, MD 20875-2126
Attention: Joel Alper, President
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15.4 Assignability and Binding Effect.
CMDC may not assign this License Agreement to any third party without the
prior written consent of Vistar, which consent shall not be unreasonably
withheld.
15.5 Inurement.
Subject to the terms and conditions of this License Agreement, this
License Agreement shall be binding upon and inure to the benefit of the
Parties hereto and their permitted successors and assigns.
15.6 Amounts in U.S. Currency.
Except as otherwise specified in this License Agreement, all amounts
payable under this Agreement or the Schedules are in the currency of the
United States.
15.7 Pre-Printed Terms Void.
The pre-printed terms on any order, acknowledgment, packing slip or
similar document provided by one Party to the other in connection with
this License Agreement shall be of no force or effect.
15.8 Notice of Actions.
Each Party agrees to notify the other Party immediately upon the
commencement of or threat of commencement of any claim, suit or action
brought or that may be brought against either Party, where the outcome of
such claim, suit or action may affect the rights or obligations of either
Party under this License Agreement.
15.9 Headings.
The headings contained in this License Agreement are for convenience of
reference only and shall not control the interpretation of any term or
condition contained herein.
15.10 Severability.
If any provision of this License Agreement is invalid, illegal or
unenforceable in any jurisdiction, such provision shall be deemed amended
to conform to applicable laws so as to be valid and enforceable, or, if it
cannot be so amended without materially altering the intention of the
Parties hereto, it shall be stricken, and the remainder of this License
Agreement shall remain in full force and effect.
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15.11 Cumulation of Remedies.
Except as otherwise expressly stated in this License Agreement, all
remedies available to either Party for breach of this License Agreement
are cumulative and may be exercised concurrently or separately and the
exercise of any one remedy shall not be deemed an election of such remedy
to the exclusion of other remedies.
15.12 Equitable Relief.
The Parties agree that certain breaches of this Agreement may give rise to
injuries that are not fully compensable by damages. Therefore, the Parties
acknowledge and agree that in addition to any other remedies available at
law, and notwithstanding the provisions of Section 12.2, a Party shall be
entitled to apply to a court of competent jurisdiction and seek injunctive
or other equitable relief, including, without limitation, specific
performance, from the other Party to enjoin any breach by the other Party
of the provisions of this Agreement.
15.13 Interest.
Any amount that is not paid when due will bear interest until fully paid
at the rate of the lesser of (i) one percent and one half (1.5%), per
month compounded monthly, or (ii) the highest rate permitted by applicable
law. Vistar shall also be entitled to recover its costs and expenses, if
any, incurred in collecting such amount. Vistar's entitlement to interest
shall in no way effect CMDC's obligations to make payments in accordance
with Section 4 of this Agreement, and Vistar's acceptance of such interest
shall not be deemed to be waiver of any of CMDC's obligations respecting
payments.
15.14 Waiver.
No term or provision hereof shall be deemed waived and no breach excused
unless such waiver or consent shall be in writing and signed by the Party
claimed to have waived or consented, and such written waiver shall only
serve to waive or excuse, as the case may be, the particular breach to
which it applies and no other.
15.15 Force Majeure.
Each Party shall be excused from performance under this License Agreement
and shall have no liability to the other Party for any period if it is
prevented from performing any of its obligations (other than payment
obligations) in whole or in part, as a result of delays caused by an act
of God, war, civil disturbance, company or industry-wide labour disputes,
or other cause beyond its reasonable control and such non-performance
shall not be a default under, or grounds for termination of this License
Agreement. However, if a Force Majeure event continues for more than one
hundred and eighty (180) days, then the Party whose performance is not
affected by the Force Majeure shall have the right to terminate this
License Agreement.
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15.16 Schedules.
Schedules A, B, C, D and E of this License Agreement form part of and are
incorporated into this License Agreement as fully and effectively as if
they were set forth in this License Agreement. In the event of any
conflict or inconsistency between the provisions of this License Agreement
and one or more of the Schedules, the conflict or inconsistency shall be
resolved in favour of the License Agreement.
15.17 Acknowledgment.
Each Party acknowledges that it has read this License Agreement, including
the Schedules attached hereto and forming part hereof, and each Party
understands and agrees to be bound by its terms and conditions.
15.18 Changes to this License Agreement.
No changes to any provision of this License Agreement, including the
Schedules hereto, shall be effective unless reduced to writing and signed
by the Parties hereto.
15.19 Expenses.
Travel and living expenses incurred by Vistar shall be invoiced to CMDC at
cost with associated receipts. Travel and living expenses must be
authorized in advance by CMDC.
15.20 Operating Systems.
To the extent permitted by law or Vistar's existing contractual
obligations, Vistar agrees to make available to CMDC the Precise MQX
Operating System license associated with the CMDC terminal for a price of
$XX.
15.21 Survival.
Except as otherwise provided in this License Agreement, the provisions of
Sections 4, 5, 7, 8, 9, 10 and 15 with the exception of Subsections 15.15,
15.17, 15.18, 15.19, 15.20 and Subsections 3.1, 3.3 and 13.2, as well as
the guarantees and/or indemnifications in Subsections 3.2(iii) and 3.2(iv)
shall survive the termination or rescission of this License Agreement for
any reason. Nothing in this License Agreement shall be construed so as to
extend or override a statutory limitation on the time within which any
action or actions based on this License Agreement may be brought.
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15.22 Publicity.
Any press release or other publication by either Party regarding the
existence or terms of this License Agreement must be approved by both
Parties prior to its publication.
15.23 Entire Agreement.
This License Agreement, together with Schedules A, B, C, D and E set forth
and constitutes the entire agreement by and between the Parties with
respect to the development and licensing of MST Technology and supersedes
any and all prior agreements, understandings and representations made by
the Parties concerning the subject matter of this Agreement. For greater
certainty it is expressly acknowledged and agreed that co-incident with
the execution of this agreement the MOA and amendments thereto shall be
terminated and each Party releases the other of all obligations under that
agreement.
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WHEREOF, Vistar and CMDC have caused this License Agreement to be duly
executed by their respective authorized representatives as of the Effective
Date.
Vistar Telecommunications, Inc. (Vistar) Comtech Mobile Datacom Corp.
(CMDC)
By: By:
/s/ /s/
Name: Dr. Michael Zuliani Name: Joel Alper
Title:President and Chief Executive Officer Title: President
Date: August 31, 1999 Date: August 9, 1999
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