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Technology License (5) Final
TECHNOLOGY LICENSE AGREEMENT
This Technology License Agreement (the "Agreement") is entered into as of May
31, 2001 (the "Effective Date"), by and between Menta Software Ltd., a
corporation organized under the laws of Israel with an office at 13 Gush Etzion
Street, ___ Givat Shmuel, ___ 54030, Israel ("Company"), ___ and GraphOn
Corporation, a Delaware corporation, with an office at 400 Cochrane Circle,
Morgan Hill, CA 95037 USA ("Licensee").
RECITALS
WHEREAS, Company has expended considerable time, effort and resources in the
development of certain proprietary software; and
WHEREAS, Licensee desires to obtain an exclusive license to the proprietary
software on the terms and conditions contained herein.
NOW THEREFORE, in consideration of the mutual promises contained herein, the
parties agree to the following:
1. Definitions. The following terms shall have the following meanings.
1.1 ___ "Company Software" means the proprietary software as described in
Exhibit A, as it exists on the Effective Date together with all add-ons,
supplements, bug fixes, new versions, updates, and the like which Company is
obliged to or does deliver to Licensee under this Agreement. Company Software
includes and shall be delivered in both in commented Source Code and Object Code
form, together with all Documentation.
1.2 ___ "Confidential Information" means (i) the Company Software; (ii)
any enhancements, modifications and derivative works of or to the Company
Software, made by Company or Licensee; (iii) the terms and conditions of this
Agreement; and (iv) all non-public information provided by one party to the
other under this Agreement that is identified as proprietary or confidential.
1.3 ___ "Intellectual Property Rights" means all worldwide copyright,
trademark, trade secret, and all rights related to issued and pending patents,
and all copyright, ___ trademark and patent ___ registrations ___ and
applications for registrations ___ (including ___ patent reissues, ___
divisions, continuations, continuations-in-part, renewals and extensions) in or
related to the Company Software.
1.4 ___ "Documentation" means all user manuals, comments on source code,
schematics, and other documents as may exist that pertain to the use,
performance, capabilities and compatibility, installation, maintenance, or
development (coding) of the Company Software.
1.5 ___ "Development ___ Tools" ___ means all software ___ tools, ___
libraries, proprietary development environments, APIs, and other software
necessary or convenient to the development of derivative works of the Company
Software, or the maintenance and improvement of the Company Software, which are
under the control of Company.
1.6 ___ "Deliverables" means all things, including the Company Software,
and Documentation, that Company is obliged to deliver to Licensee under this
Agreement.
1.7 ___ "Exclusivity Period" mans a period of time commencing on the
Effective Date and lasting one year.
1.8 "Term" means the term of this Agreement as set out in Section 9.
2. License & Ownership.
2.1 ___ License. Company grants to Licensee a perpetual, fully paid-up,
exclusive (as defined below), nontransferable, irrevocable worldwide license to
(i) use, reproduce, modify and create derivative works of the Company Software,
Documentation and Development Tools, and to distribute, license, and perform all
these; and to (ii) license and sublicense the Company Software in Object Code
form, together with anything (including Intellectual Property Rights) owned by
the Company in any derivative works of the Company Software.
2.2 ___ Exclusivity. ___ The license ___ granted in Section 2.1 above is
exclusive in that Company shall not grant any of the same rights to any other
party. Company retains the sole right to sublicense the Company Software and any
derivatives that Company makes to end users.
2.3 ___ Ownership. ___ Company retains all right, ___ title and interest,
including all Intellectual Property Rights, in the Company Software and any part
thereof and any subsequent versions, modifications or enhancements of or to the
Company Software created by or on behalf of Company. Licensee shall own all
right, title and interest, including all Intellectual Property Rights, in any
derivative works including but not limited to any subsequent versions,
modifications or enhancements of or to the Company Software created by or on
behalf of Licensee. For avoidance of doubt, it is the intention of the parties
that Licensee shall own the entire and sole copyright in any derivative works it
makes of Company Software, without regard to the original authorship of any
portion of such derivative work and Licensee hereby grants Company a perpetual
fully paid license to use any such derivative works.
2.4 ___ Support Services. ___ For a period of one (1) year from the
Effective Date, Company shall provide Developer Support Services to Licensee via
telephone, email or in person on customary terms. Developer Support Services are
defined as providing Licensee with (i) any and all updates, bug fixes, upgrades,
new versions, and new features of the Company Software in electronic format,
including commented source code and (ii) technical contact persons for providing
Licensee, among other things, answers to questions regarding the development of
the Company Software.
2.5 ___ Acquisition Option. During the Exclusivity Period, ___ Licensee
shall have the exclusive right, but not the obligation, to acquire the Company
Software, together with all Intellectual Property Rights pertaining to and
inhering in it, in exchange for the fee specified in Exhibit A ("Acquisition
Fee"). To perfect its rights under this Section, Licensee must within the
Exclusivity Period provide notice to Company of its intention to make the
acquisition. During the Exclusively Period, and except licenses to end users,
Company will not sell, transfer, license, assign, burden, pledge, or otherwise
diminish its ownership interest in the Company Software. Licensee shall have
forty five (45) days (which in this event may expire after the Exclusivity
Period) in which to provide effective notice of its exercise, or not, of the
option. If Licensee elects to exercise its Acquisition Option, Company will
transfer ownership in the Company Software (together with the Intellectual
Property Rights inhering in it) to Licensee and the Company shall use
commercially reasonable efforts to assist Licensee in the assignment and
transfer any and all ownership interest, including any Intellectual Property
Rights, it may have in the Company Software to Licensee. If Licensee elects to
exercise its Acquisition Option, Licensee shall also have the right, but not the
obligation, to hire any current or former employee of the Company.
3. Fees & Taxes.
3.1 License Fees. Licensee will pay to Company the license fees
specified in Exhibit A ("License Fees").
3.2 ___ Payment. Licensee will pay all fees under this Agreement in
accordance with Exhibit A and upon the delivery of the Company Software,
Documentation and Development Tools pursuant to Section 4.
3.3 ___ Taxes. Licensee is responsible for the payment of all taxes in
connection with the payments hereunder other than those taxes based on the
income of the Company.
4. Delivery. Company shall deliver the Deliverables to Licensee via
electronic data transfer on the Effective Date.
5. Representations and Warranties.
5.1 ___ Licensee represents and warrants that it has all requisite
corporate power and authority to enter into this Agreement and perform its
obligations hereunder. INCLUDING IN CONNECTION WITH ANY SOFTWARE LICENSEE MAY
DELIVER TO COMPANY, LICENSEE EXPRESSLY DISCLAIMS ANY IMPLIED WARRANTY OF
MERCHANTABILITY OR SUITABILITY FOR PARTICULAR ___ PURPOSE, ___ TITLE, OR ANY
WARRANTY, AND GIVES NO OTHER WARRANTIES OR REPRESENTATIONS.
5.2 ___ Each party is responsible for compliance with US export control
laws and the import laws of any other country.
5.3 Company represents and warrants that, as of the Effective Date,
(a) It has all requisite corporate power and authority to enter
into this Agreement and perform its obligations hereunder;
(b) ___ It owns all Intellectual Property Rights in the Company
Software and that it has not granted and will not grant to any other party
rights to the Company Software that are inconsistent with the rights granted to
Licensee under this Agreement as set forth in Section 2.2;
(c) It has the technical expertise and resources to fulfill its
obligations under this Agreement;
(d) All services will be performed in a professional manner by
qualified personnel;
(e) ___ Any information or materials in the Company Software are
either original with it in the public domain, or it is licensed to dispose of
them as contemplated by this Agreement;
(f) ___ The Company Software, and its contemplated disposition and
use under this Agreement, do not infringe anywhere in the world any person's or
entity's rights including without ___ limitation, ___ patents, ___ copyrights
including rights in a joint work, trademarks, trade dress, rights of publicity,
privacy, moral rights, literary rights, trade secret, libel, other Intellectual
Property Right, or contractual rights pertaining to Confidential Information;
(g) ___ There is no claim, action, suit or proceeding relating to
the rights granted to Licensee herein pending or threatened before any court,
Examiner, Board, tribunal, arbiter, or other adjudicatory entity;
(h) It will comply with all applicable laws and regulations.
5.4 ___ Other than those warranties expressly made in this Agreement,
COMPANY MAKES NO OTHER WARRANTIES, ___ EXPRESS OR IMPLIED, AND EXPRESSLY
DISCLAIMS THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR
PURPOSE.
6. Indemnification.
6.1 ___ Company shall indemnify, defend and hold Licensee harmless from
any and all liability, loss, cost, damage, judgment or expense (including
reasonable attorneys' and experts' fees and costs) resulting from or arising out
of any claim by a third party that the Company Software itself or any part
thereof, unmodified by Licensee or any third party, infringes any Intellectual
Property Rights for a period of two (2) years from the Effective Date. This
obligation is subject to Licensee notifying Company promptly in writing of the
claim, giving Company exclusive control of the defense and settlement thereof,
and providing reasonable assistance and authority as requested by Company. If
use of the Company Software becomes the subject of any claim of infringement,
Company will promptly, and its option and sole expense: (i) obtain the
continuing right to use the Company Software for Licensee; (ii) modify the
Company Software so that it no longer infringes; or (iii) replace it with a
functional ___ equivalent product that does not infringe. If Company selects
options (ii) or (iii), the modification or replacements shall continue to comply
with all representations and warranties herein, and shall not diminish the
functionality or performance, ___ nor adversely affect the compatibility, of the
Software.
7. Limitation Of Liability. Except for the enforcement of or pursuant to
Section 8 (confidentiality):
7.1 ___ To the maximum extent permitted by law, Company shall not be
liable to Licensee for any consequential or incidental damages, including any
lost profits or lost savings arising out of the Company Software, even if
Company has been advised of the possibility of such damages.
7.2 ___ (i) In no event shall either party's total liability for all
damages or losses, whether in contract, tort (including negligence) or otherwise
as a result of any infringement of any Intellectual Property Rights, exceed two
million ($2,000,000) US dollars; and (ii) In no event shall either party's total
liability for all damages or losses, whether in contract, tort (including
negligence) or otherwise, other than as a result of any infringement of any
Intellectual Property Rights, exceed one million ($1,000,000) US dollars.
8. Confidential Information.
8.1 ___ Confidential Information. By virtue of this Agreement, either
party may have access to the other party's Confidential Information. Each party
agrees to use the other party's Confidential Information solely for purposes of
this Agreement and will hold the other party's Confidential Information in
confidence during the term of this Agreement and after termination. Each party
further agrees that it will not make the other party's Confidential Information
available in any form to any third party except its own employees and/or
contractors who need to know or use such Confidential Information for purposes
of implementing this Agreement and who have agreed in writing to be bound by a
confidentiality agreement with terms not less restrictive than those in this
Section. Each party shall ensure that Confidential ___ Information ___ of the
other party is not disclosed, distributed, or used by its employees, agents, or
contractors in violation of the terms of this Agreement.
8.2 ___ Exclusions. ____ Confidential ____ Information ____ does ___ not
___ include information that (i) is or becomes publicly available through no act
or omission of the receiving party; (ii) is rightfully received by the receiving
party from a third party without restriction on disclosure and without breach of
a nondisclosure obligation; (iii) is independently developed by the receiving
party without ___ reference ___ to, or use of, the ___ Confidential Information;
or (iv) is previously rightfully known to the receiving party.
8.3 ___ Confidential Information may be communicated in response to a
valid order by a court or other governmental body, or as otherwise required by
law, or as necessary to establish the rights of either party under this
Agreement, but only provided that the party so disclosing has provided the other
party with notice as soon as practicable of the order, motion, subpoenas, or
equivalent request so as to provide a reasonable opportunity to seek protective
legal treatment for such Confidential Information.
9. Term & Termination.
9.1 ___ Term. This Agreement begins on the Effective Date and continues in
perpetuity unless and until it is terminated pursuant to Section 9.2 below.
9.2 ___ Termination for Material Breach. Either party may terminate this
Agreement upon thirty (30) days written notice of a material breach of this
Agreement by the other party if such breach is not cured within such thirty (30)
day period. ___ Notwithstanding any other provision, ___ any party may terminate
the Agreement immediately for a material breach of Section 8 (confidentiality).
9.3 ___ Rights Upon Termination. In the event Company terminates this
Agreement, in accordance with this Article 9, Licensee agrees to cease all use
of the Company Software, and Licensee will destroy all copies of the Company
Software in the Licensee's possession or under its control within ten (10) days
following the termination date.
9.4 Survival. The following provisions shall survive termination of
this Agreement: Section 2.3 and Articles 5 through 10.
10. General.
10.1 Notice. Any notice or communication required or permitted in this
Agreement shall be in writing and shall be deemed to have been duly given on the
day of service if served personally or personally delivered by a major rapid
delivery courier service with tracking capabilities or three (3) days after
mailing if mailed by first class mail, registered or certified, postage
pre-paid, to the address shown in the opening paragraph of this Agreement, or
such other address as a party may indicate by notice hereunder.
10.2 Amendment and Waiver. This Agreement may only be amended, and the
observance of any provision of this Agreement may be waived (either generally or
any ___ particular ___ instance ___ and either ___ retroactively ___ or
prospectively), only with the written consent of the parties. However, it is the
intention of the parties that this Agreement be controlling over additional or
different terms of any order, confirmation, invoice or similar document, even if
accepted in writing by both parties, and that waivers and amendments shall be
effective only if made by a non-pre-printed agreement which expressly states
that it is an amendment or waiver and that expressly refers to this Agreement.
10.3 Headings. Headings are used in this Agreement for convenience only
and shall not affect any construction or interpretation of this Agreement.
10.4 Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of New York and the United States, without
regard to conflicts of laws provisions thereof and without regard to the United
Nations Convention on Contracts for the International Sale of Goods.
10.5 Assignment. Licensee shall not assign this Agreement or any portion
hereof without Company's prior written consent, which shall not be unreasonably
withheld. ___ Any attempted assignment in violation of this provision shall be
void. Licensee, however, may assign this Agreement to a purchaser of all or
substantially all of the assets or to a successor corporation in the event of a
merger or other reorganization. The Company shall be entitled to assign this
Agreement or any portion hereof to any third party, including its Affiliates,
shareholders and Directors, and including by way of liquidation or dissolution
of the Company.
10.6 Publicity. ___ Except to its counsel and outside ___ accountants,
neither party may disclose the terms of this Agreement or the subject matter
thereof without the prior written consent of the other party.
10.7 Severability. If any provision of this Agreement is held to be
illegal, invalid or unenforceable, that provision shall be limited or eliminated
to the minimum extent necessary so that this Agreement shall otherwise remain in
full force and effect and enforceable.
10.8 Entire Agreement. This Agreement supersedes all proposals, oral or
written, all negotiations, conversations, or discussions between or among
parties relating to the subject matter of this Agreement and all past dealing or
industry custom.
10.9 Personal ___ Jurisdiction. ___ The parties submit to the personal
jurisdiction of the state and federal courts located in the Southern District of
New York and waive any right to file suit elsewhere, or make a motion to
transfer or dismiss for any reasons, including personal jurisdiction, venue, or
the convenience of any party of witness.
10.10 Attorneys Fees. In any dispute in court or before an arbitrary
arising under this agreement the losing party shall pay the reasonable attorneys
fees, testifying (including by declaration) expert fees, and costs of the
prevailing party, but not fees solely attributable to consultants and
investigators.
10.11 Non ___ Solicitation. ___ Except for the ___ rights ___ granted in
the Acquisition Option, neither party will directly or indirectly encourage or
solicit any employee of the other party to leave their company and to accept
employment with other company for fifteen (15) months after the date hereof. For
a period of one (1) year from the Effective Date, if Licensee employs any
employee of the Company that is employed with the Company on or after the
Effective Date, then Licensee will exercise its Acquisition Option rights as
described in Section 2.5 above.
CONTINUED ON THE FOLLOWING PAGE
10.12 Approvals. This Agreement is subject to the approval of the Board of
Directors and the Shareholders of the Company. If such approval has not been
obtained on or before June 18, 2001, this Agreement shall not take effect ab
initio.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
by their duly authorized representatives as of the Effective Date.
Company: Licensee:
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By By
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Name Name
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Title Title
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Date Date
EXHIBIT A
Company Software.
The Company Software are the following technologies:
- HTTP Tunneling
- Local File Sharing
- Local Printing
- Proxy server
- Session reconnect (suspend and resume) - Session shadowing - SSL
encryption - LDAP and Active Directory - XML based portal integration -
Web-tier based user and application management - API trapping - OLE /
RPCSS - Multi-user kernel and application extensions - Win32 GDI
implementation - Software Development Kit (SDK) - Local clipboard -
Drag-and-drop application deployment - Adaptive GUI - Java client with
local desktop integration - Protocol drivers - Compression support -
Multi-user session management - Windows emulation - GDI object table
extensions - GDI performance enhancements - Desktop heap extensions -
Driver letter mappings - Development, debugging, and diagnostic tools -
Testing tools and scripts - Support and logging tools - Web publishing
License Fees.
Licensee agrees to pay a license fee of two million five hundred thousand
(2,500,000) shares of GraphOn common stock for the license granted in Section 2
of this Agreement for the Company Software on the terms and conditions provided
in the Share Purchase Agreement, dated the date hereof, between Company and
Licensee.
Acquisition Fee:
Licensee agrees to pay an acquisition fee of four hundred forty thousand
(440,000) shares of GraphOn common stock for all Intellectual Property Rights
and ownership in the Company Software granted in Section 2.5 of this Agreement.