Exhibit 10.1
EXCLUSIVE TECHNOLOGY LICENSE AGREEMENT
This EXCLUSIVE TECHNOLOGY LICENSE AGREEMENT is entered into as of
September 18, 2006, by and between Zingerang, Inc., a Nevada corporation
("LICENSEE"), and Roaming Messenger, Inc., a Nevada corporation ("LICENSOR").
Each of Licensor and Licensee may be referred to herein individually as a
"party" or, collectively, as the "parties."
RECITALS
WHEREAS, Licensor owns and/or has rights to certain technology
commercially known as Roaming Messenger(R), which provides a comprehensive
development and deployment platform for adding secure, interactive, intelligent
mobile messaging capabilities to any application; and
WHEREAS, Licensee wishes to obtain from Licensor, and Licensor is
willing to grant to Licensee, an exclusive (including to the exclusion of
licensor), worldwide license to commercialize the Roaming Messenger(R)
technology in all current and potential fields of use.
NOW, THEREFORE, in consideration of the foregoing premises and the
mutual covenants and promises set forth below, and for other good and valuable
consideration, the receipt and sufficiency of which is hereby acknowledged, the
parties agree as follows:
AGREEMENT
1. DEFINITIONS.
In addition to any terms defined above, the italicized and bolded terms
below shall have the following definitions:
1.1 "ADVANCE" shall have the meaning set forth in SECTION 4.1 of this
Agreement.
1.2 "AFFILIATE" shall mean, with respect to any Person, any other
Person with regard to which the Person is controlling, controlled or commonly
controlled. For purposes of the preceding sentence, "control" shall mean the
power to direct the principal business management and activities of a Person,
whether through ownership of voting securities, by agreement, or otherwise.
1.3 "AGREEMENT" shall mean this Exclusive Technology License Agreement.
1.4 "BUSINESS" shall mean the business of Licensor relating to the
Roaming Messenger(R) technology as presently conducted or as contemplated to be
conducted.
1.5 "CHANGE OF CONTROL" shall mean (a) a sale to a third party of all
or substantially all of the assets of a party; or (b) the transfer to a third
party of fifty percent (50%) or more of the outstanding voting power of such
party.
1.6 "CONFIDENTIAL INFORMATION" shall mean any information or data,
including but not limited to all source code, inventions, algorithms, know-how,
ideas, and all other business, technical, and financial information, which a
party obtains from the other party after the Effective Date, that is marked or
otherwise identified as "Confidential" or that, by its nature or the
circumstances surrounding its disclosure, should reasonably be considered
confidential. The material terms of this Agreement shall be considered the
Confidential Information of each party. All other information or data disclosed
orally will be deemed Confidential Information only if it is identified as such
at the time of disclosure and is confirmed to be Confidential Information in
writing no more than seven (7) days after its disclosure.
1.7 "CONTROLLING PARTY" shall have the meaning set forth in Section 7.3
of this Agreement.
1.8 "DERIVATIVE" shall mean computer software or other intellectual
property developed by Licensee, which includes, or is based in whole or in part
on, the Licensed Technology, including, but not limited to, translations of
software to other foreign or computer languages, adaptation of the Licensed
Technology to other hardware platforms, abridgments, condensations or revisions.
1.9 "DISCLOSING PARTY" shall have the meaning set forth in SECTION 8.1
of this Agreement.
1.10 "DOCUMENTATION" shall mean all materials, in any medium,
describing or providing instruction on the use and/or functionality of the
Licensed Technology.
1.11 "EFFECTIVE DATE" shall mean the date set forth in the introductory
paragraph of this Agreement.
1.12 "FIELD OF USE" shall mean any and all commercial and non-
commercial applications of the Licensed Technology.
1.13 "GROSS SALES" shall mean the gross amounts actually collected by
Licensee (including royalties from sublicensees) during the relevant fiscal
period in connection with the sale of Licensed Products less returns, allowances
and bad debt.
1.14 "IMPROVEMENT" shall mean any improvement, enhancement, refinement,
modification or other new invention or discovery, whether or not patentable,
deriving from or otherwise relating to, in whole or in part, any of the claims
of any of the Licensed Patents or any of the Licensed Technology.
1.15 "INITIAL TERM" shall have the meaning set forth in SECTION 12.1 of
this Agreement.
1.16 "INTELLECTUAL PROPERTY RIGHTS" or "IPR" shall mean any and all now
known or hereafter known tangible and intangible: (i) rights associated with
works of authorship throughout the world, including but not limited to
copyrights, moral rights, and mask works, (ii) trademark and trade name rights
and similar rights, (iii) trade secret rights, (iv) patents, designs, algorithms
and other industrial property rights, (v) all other intellectual, proprietary
and industrial property rights (of every kind and nature throughout the world
and however designated) whether arising by operation of law, contract, license,
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or otherwise, and (vi) all registrations, initial applications, renewals,
extensions, continuations, divisions or reissues thereof now or hereafter in
force (including any rights in any of the foregoing).
1.17 "LICENSED PATENTS" shall mean (a) all patent applications listed
on EXHIBIT A to this Agreement; (b) any patents issuing from such patent
applications; and (c) any patents or patent applications claiming a right of
priority thereto (in each such case of (a), (b) and (c) including reissues,
reexaminations, renewals, extensions, divisionals, continuations, continued
prosecution applications, continuations-in-part and foreign counterparts of any
of the foregoing).
1.18 "LICENSED PRODUCT" shall mean any product, device, system, article
of manufacture, composition of matter or service, within the Field of Use, that
is covered by, or is made by a process covered by, any claim of the Licensed
Patents or that utilizes the Licensed Technology in material part.
1.19 "LICENSED SOFTWARE" shall mean any computer software component(s)
of the Licensed Technology.
1.20 "LICENSED TECHNOLOGY" means any proprietary information, software
(in Object Code and Source Code), know-how, processes, methods, formulas,
systems, designs, prototypes and materials, existing as of the Effective Date,
that comprise or relate to the Roaming Messenger(R) technology, including
without limitation the technology specifically listed on EXHIBIT B hereto, and
all IPR therein that is not otherwise covered by the Licensed Patents or
Trademarks.
1.21 "OBJECT CODE" shall mean the machine-readable form of computer
programming code that results from compiling the Source Code.
1.22 "PERSON" shall mean any individual, corporation, association,
partnership (general or limited), joint venture, trust, joint-stock company,
estate, limited liability company, unincorporated organization or other legal
entity or organization.
1.23 "RECEIVING PARTY" shall have the meaning set forth in SECTION 8.1
of this Agreement.
1.24 "RENEWAL TERM" shall have the meaning set forth in SECTION 12.1 of
this Agreement.
1.25 "ROYALTIES" shall have the meaning set forth in SECTION 4.2 of
this Agreement.
1.26 "ROYALTY REPORT" shall mean a written report stating, for the
calendar quarter covered by such report, the Gross Sales in respect of the sale
of Licensed Products, separately stated for Licensee and any sublicensee of
Licensee that sold Licensed Products during such month.
1.27 "SOURCE CODE" shall mean the human-readable form of computer
programming code that can be modified, compiled, and executed and all related
documentation for such code.
1.28 "TERM" shall have the meaning set forth in SECTION 12.1 of this
Agreement.
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1.29 "TRADEMARKS" shall mean the trademarks and service marks listed on
EXHIBIT C hereto.
2. GRANTS OF LICENSE.
2.1 EXCLUSIVE LICENSE TO PATENTS. Subject to the terms and conditions
set forth in this Agreement, Licensor hereby grants to Licensee an exclusive
(including to the exclusion of Licensor), worldwide, sub-licensable,
transferable, royalty-bearing right and license under the Licensed Patents to
make, have made, import, use, offer for sale and sell Licensed Products.
2.2 EXCUSIVE LICENSE TO TECHNOLOGY. Subject to the terms and conditions
set forth in this Agreement, Licensor hereby grants to Licensee an exclusive
(including to the exclusion of Licensor), worldwide, sub-licensable,
transferable, royalty-bearing right and license to use the Licensed Technology
to make, have made, import, use, offer for sale, sell, reproduce, distribute,
display, perform or otherwise exploit the Licensed Products, including the right
to create Derivatives.
2.3 EXCLUSIVE LICENSE TO TRADEMARKS. Subject to the terms and
conditions set forth in this Agreement, Licensor hereby grants to Licensee an
exclusive (including to the exclusion of Licensor), worldwide, sub-licensable,
transferable, royalty-bearing right and license to use the Trademarks in
connection with any of the rights granted in SECTIONS 2.1 AND 2.2 above.
2.4 SUBLICENSES. Licensee has the right hereunder to grant sublicenses
to third parties, provided that sublicensees shall not have the right to grant
further sublicenses, and the sublicenses may be of no greater scope or terms
than the licenses under SECTIONS 2.1-2.3 above. Licensee shall furnish Licensor
within thirty (30) days of the execution thereof a true and complete copy of
each sublicense and any changes or additions thereto. Any sublicenses granted by
Licensee shall survive termination of the licenses granted to Licensee under
SECTIONS 2.1-2.3 of this Agreement, provided that the following conditions are
met as of the date of such termination: (a) the written agreement between
Licensee and sublicensee pursuant to which the sublicense was granted (i)
obligates the sublicensee to thereafter render to Licensor all sublicense
royalties or other sublicense-related consideration that the sublicensee would
have owed to Licensee under the sublicense, (ii) names Licensor as a third party
beneficiary, (iii) affirms that Licensee shall remain responsible for all
obligations to sublicensee, unless Licensor (at its discretion) elects to assume
such obligations; and (iv) the sublicensee under the sublicense agreement is not
directly or indirectly an Affiliate of the Licensee at the time of the
termination of this Agreement or for a period of three (3) years after the
termination of this Agreement, and if the sublicensee is or becomes an Affiliate
of Licensee during such time, then the Licensor will have the right in its sole
discretion to terminate the sublicense agreement; and (b) Licensee informs the
sublicensee in writing (with a copy to Licensor) that the sublicensee's
obligations pursuant to subsection (a) are in effect as a result of the
termination.
2.5 MARKING AND COMPLIANCE WITH LAW. Licensee shall mark the Licensed
Products and related documents with all applicable patent numbers, in accordance
with Licensor's reasonable instructions and as required by the patent laws;
provided, however, that Licensee may make any such reasonable changes in
markings so as to minimize interference with manufacturing or commercialization
of the Licensed Products.
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3. DISCLOSURE AND DELIVERY.
3.1 LICENSED PATENTS. As soon as practicable after the Effective Date,
but in no event later than September 15, 2006, Licensor shall disclose and
deliver to Licensee copies of all patent applications and/or issued patents
within the Licensed Patents, including all patent office correspondence related
thereto.
3.2 TANGIBLE EMBODIMENTS. As soon as practicable after the Effective
Date, but in no event later than September 15, 2006, Licensor shall disclose and
deliver to Licensee any tangible embodiments (existing as of the Effective Date)
of: (a) the inventions covered by the Licensed Patents; and (b) the Licensed
Technology. Such disclosure and delivery may be provided in writing, orally,
and/or in other tangible or intangible form, as appropriate to the subject
matter thereof, and shall include without limitation the Licensed Software (in
Object Code and Source Code) and all Documentation.
4. ROYALTIES.
4.1 ADVANCE. Upon mutual execution of this Agreement, Licensee shall
pay to Licensor a one-time payment of One Hundred Thousand Dollars ($100,000) as
a recoupable advance against Royalties (the "ADVANCE").
4.2 ROYALTIES. For each calendar quarter during the Term, Licensee
shall pay to Licensor an amount equal to Five Percent (5%) of Gross Sales (the
"ROYALTIES") for such period.
4.3 PAYMENT. Within thirty (30) days after the end of each calendar
quarter, Licensee shall remit to Licensor the Royalties due for the preceding
calendar quarter and provide to Licensor a Royalty Report for said quarter;
provided, however, that no payment shall be remitted under this SECTION 4.3
until the amounts due hereunder cumulatively exceed the amount of the Advance.
4.4 OPTIONAL ONE-TIME FEE. At any time during the Term, Licensee may,
at its sole and absolute discretion, pay to Licensor, in lieu of ongoing
Royalties, a one-time payment in an amount equal to Five Hundred Thousand
Dollars ($500,000 USD) less amounts, not to exceed Fifty Thousand Dollars
($50,000 USD), in legal and filing fees incurred by Licensee in connection with
the continual prosecution of the three (3) patent applications in Exhibit A of
this Agreement, which payment shall render the licenses granted under this
Agreement fully-paid-up and without any further payment obligation. In the event
that Licensee exercises the option set forth in this SECTION 4.4 and pays said
amount, then (i) the license grants set forth in SECTIONS 2.1 AND 2.2 above
shall be fully-paid and non-executory, (ii) the Term shall become perpetual, and
(iii) in the event of Licensor's bankruptcy or insolvency, Licensee shall have
all rights under Section 365(n) of the U.S. Bankruptcy Code.
4.5 AUDIT. Licensee shall maintain accurate and complete books and
records with respect to the production and distribution of the Licensed
Products, and it shall retain such information for three (3) years following the
termination or expiration of this Agreement. Copies of Licensee's books and
records shall be maintained at Licensee's principal place of business. Licensor,
or an independent certified public accountant acting on its behalf, may, upon
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reasonable notice to Licensee and at a mutually convenient time, conduct an
annual audit of Licensee's books and records necessary to confirm the accuracy
of Licensee's Royalty Reports. All audits of Licensee's books and records shall
be conducted at Licensor's expense, provided that if the audit discloses an
underpayment by Licensee of Ten Percent (10%) or more, Licensee shall bear the
cost of the audit, including, without limitation, reasonable accountants' and
attorneys' fees.
4.6 TAXES. Licensee may withhold from payments hereunder all taxes,
duties or levies the withholding of which may from time to time be required by
law or regulation regarding any payments under this Agreement; Licensee will
provide available documentation thereof to Licensor.
5. OWNERSHIP.
5.1 LICENSOR. Subject to the rights granted to Licensee in SECTION 2 of
this Agreement, Licensor shall continue to own all right, title and interest in
the Licensed Patents, Licensed Technology and Trademarks.
5.2 LICENSEE. Subject to Licensor's rights in the Licensed Patents and
Licensed Technology, Licensee shall own all right, title and interest in
Derivatives and Improvements, including without limitation all IPR therein.
6. PROSECUTION OF PATENT APPLICATIONS.
As of the Effective Date, Licensee shall assume, at its own expense and
in Licensor's name, responsibility for the prosecution and/or maintenance of the
Licensed Patents. Licensor agrees to fully cooperate with Licensee in filing,
prosecuting, and maintaining the Licensed Patents, and Licensor agrees to
execute any documents that may be necessary for such purpose, and not to impair
in any way the patentability of any of the foregoing. Additionally, Licensee may
elect, in its sole and absolute discretion, to file, prosecute and maintain, at
its own expense and in its own name, patent applications in connection with any
Improvement.
7. THIRD PARTY LITIGATION.
7.1 ENFORCEMENT. Both Licensor and Licensee agree to promptly notify
the other in writing should either party become aware of possible infringement
by a third party of the Licensed Patents, Licensed Technology or Trademarks.
Licensee may, upon written notice to Licensor and at its own expense, initiate
an action against the alleged infringer, either in Licensee's name or in
Licensor's name, if so required by law. Licensee shall be entitled to control
any such action initiated by it. If Licensee does not, within ninety (90) days
of notice of such infringement, initiate an action against the alleged
infringer, Licensor shall, at its own expense and sole discretion, initiate an
action against the alleged infringer, in which case Licensor shall be entitled
to control any such action.
7.2 OTHER DEFENSIVE LITIGATION. If a declaratory judgment action
alleging invalidity, unenforceability or non-infringement of any of the Licensed
Patents is brought against Licensee and/or Licensor, Licensee may elect to
control the defense of such action, and if Licensee so elects, it shall bear all
the costs of the action. If mutually agreed between the parties, Licensee may
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also undertake the defense of any interference, opposition or similar procedure
with respect to the Licensed Patents, providing that Licensee bears all the
costs thereof.
7.3 COOPERATION. In the event either party takes control of a legal
action or defense pursuant to this SECTION 7.1 OR 7.2 above, (thus becoming the
"CONTROLLING PARTY") the other party shall fully cooperate with and supply all
assistance reasonably requested by the Controlling Party instituting or carrying
on such action or defense, including by: (a) using commercially reasonable
efforts to have its employees consult and testify when requested; (b) making
available relevant records, papers, information, samples, specimens, and the
like; and (c) joining any such action in which it is an indispensable party. The
Controlling Party shall bear the reasonable expenses (including salary and
travel costs) incurred by the other party in providing such assistance and
cooperation. Each party shall keep the other party reasonably informed of the
progress of the action or defense, and the other party shall be entitled to
participate in such action or defense at its own expense and using counsel of
its choice. As a condition of controlling any action or defense involving the
Licensed Patents pursuant to SECTION 7.1 OR 7.2 above, Licensee shall use its
best efforts to preserve the validity and enforceability thereof.
7.4 SETTLEMENT. If Licensee controls any action or defense under
SECTION 7.1 OR 7.2 above, then Licensee shall have the right to settle any
claims thereunder, but only upon terms and conditions that are reasonably
acceptable to Licensor. Should Licensee elect to abandon such an action or
defense other than pursuant to a settlement that is reasonably acceptable to
Licensor, Licensee shall give timely advance notice to Licensor which, if it so
desires, may continue the action or defense.
7.5 RECOVERIES. Any amounts paid by third parties as the result of an
action or defense pursuant to SECTION 7.1 OR 7.2 above (including in
satisfaction of a judgment or pursuant to a settlement) shall be retained by the
Controlling Party.
8. CONFIDENTIAL INFORMATION.
8.1 GENERALLY. Each party agrees that Confidential Information
disclosed by a party (the "DISCLOSING PARTY") will be considered the
Confidential Information of that party. Except as expressly and unambiguously
allowed in this Agreement, the party receiving Confidential Information (the
"RECEIVING PARTY") will hold the Disclosing Party's Confidential Information in
confidence, and will treat the Disclosing Party's Confidential Information with
the same degree of care taken to protect its own similar Confidential
Information, but in no event with less than reasonable care. Receiving Party
further agrees to limit disclosure of such information to those of its
directors, employees, contractors, and agents who have a need for such
information for the use permitted under this Agreement and who are bound under a
written agreement to keep such information confidential. Without limiting the
generality of the foregoing, it is understood and agreed that Licensee may
disclose to its sublicensees such Confidential Information of Licensor as
reasonably necessary.
8.2 EXCEPTIONS. Notwithstanding the foregoing, the Receiving Party will
not be required to protect or hold in confidence any information that: (i)
becomes publicly known through no wrongful act or omission of the Receiving
Party; (ii) was previously disclosed by Disclosing Party to Receiving Party
without obligation of confidentiality; (iii) becomes known to the Receiving
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Party, without confidential restriction, from a third party whom the Receiving
Party has no reason to believe is under any obligation of confidentiality with
respect to such information; (iv) is approved by the Disclosing Party for
disclosure without restriction in a written document that is signed by a duly
authorized officer of the Disclosing Party; or (v) is independently developed by
the Receiving Party without use of the Disclosing Party's Confidential
Information.
8.3 REQUIRED DISCLOSURES. Disclosure of Confidential Information will
not be precluded by this Agreement if such disclosure is (i) necessary to
establish rights under this Agreement, or (ii) required by law or regulation or
in response to a valid order of a court or other governmental body of a country
or political subdivision thereof, provided that the Receiving Party notifies the
Disclosing Party of such order on a timely basis and if possible prior to such
disclosure; provided, however, that the foregoing is subject to the Receiving
Party's obligation, at its expense, to make a good faith attempt to obtain a
protective order prior to such disclosure.
9. REPRESENTATIONS, WARRANTIES AND COVENANTS
9.1 BY LICENSOR. Licensor hereby represents warrants and covenants to
Licensee that, as of the Effective Date:
(a) Licensor is a corporation duly organized and validly existing
under the laws of the State of Nevada.
(b) Licensor has all requisite power and authority to enter into
this Agreement and to perform its obligations hereunder. This Agreement has been
duly and validly authorized, executed and delivered by Licensor and is a legal,
valid and binding obligation of Licensor, enforceable against it in accordance
with its terms.
(c) Licensor is the owner of all right, title and interest in the
Licensed Patents, Licensed Technology and Trademarks and has the right to grant
the licenses granted to Licensee as set forth in this Agreement.
(d) There are no outstanding licenses, options or agreements of
any kind relating to the Licensed Patents, Licensed Technology or Trademarks
other than pursuant to this Agreement.
(e) None of the Licensed Patents, License Technology or
Trademarks is the subject of any judicial, administrative or other proceedings
in any jurisdiction concerning or potentially affecting its validity,
enforceability, or Licensor's rights of ownership thereof or right to grant
licenses thereunder.
(f) To the best knowledge of Licensor, the practice of the
Licensed Patents or use of the Licensed Technology or the Trademarks by Licensee
as contemplated herein will not infringe the IPR of any third party.
(g) The execution, delivery and performance of this Agreement by
Licensor do not and will not violate or constitute a default under any other
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agreement or any order, judgment, decree or like restriction, statute or
regulation by which it or any of its assets and properties may be bound.
(h) The execution, delivery and performance of this Agreement by
Licensor do not and will not require any consent, approval or authorization of
any third party.
9.2 BY LICENSEE. Licensee hereby represents, warrants and covenants to
Licensor that, as of the Effective Date:
(a) Licensee is a corporation duly organized and validly existing
under the laws of the State of Nevada.
(b) Licensee has all requisite power and authority to enter into
this Agreement and to perform its obligations hereunder. This Agreement has been
duly and validly authorized, executed and delivered by Licensee and is a legal,
valid and binding obligation of Licensee, enforceable against it in accordance
with its terms.
(c) The execution, delivery and performance of this Agreement by
Licensee do not and will not violate or constitute a default under any other
agreement or any order, judgment, decree or like restriction, statute or
regulation by which it or any of its assets and properties may be bound.
(d) The execution, delivery and performance of this Agreement by
Licensee do not and will not require any consent, approval or authorization of
any third party.
9.3 SURVIVAL OF REPRESENTATIONS AND WARRANTIES. The representations and
warranties of the parties, as set forth herein, shall be true and accurate as of
the Effective Date, and shall survive the execution of this Agreement.
9.4 DISCLAIMER OF CERTAIN WARRANTIES. EXCEPT AS EXPRESSLY PROVIDED IN
SECTION 9.1 ABOVE, LICENSOR MAKES NO EXPRESS OR IMPLIED WARRANTY OF ANY KIND,
INCLUDING WITHOUT LIMITATION, ANY IMPLIED WARRANTY OF MERCHANTABILITY, TITLE,
NON-INFRINGEMENT OR FITNESS FOR A PARTICULAR PURPOSE. IF ANY OF THE FOREGOING
DISCLAIMERS IS DETERMINED BY A COURT OF COMPETENT JURISDICTION TO BE
UNENFORCEABLE, THEN ONLY THE INVALID DISCLAIMER SHALL BE STRICKEN AND ALL OTHERS
WILL REMAIN IN FULL FORCE AND EFFECT.
10. INDEMNIFICATION.
10.1 INDEMNIFICATION BY LICENSOR. Licensor shall defend any action,
suit or proceeding brought against Licensee so far as it is based on a claim
arising from any breach of a representation, warranty or covenant made by
Licensor hereunder. Licensor shall indemnify and hold harmless Licensee and its
officers, directors, agents and employees, from and against any and all damages,
liabilities, costs and expenses (including but not limited to attorneys' fees)
arising out of or incurred in connection with or as a result of any such action,
suit or proceeding, provided that Licensor shall not be responsible for any
settlement made without its written consent.
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10.2 INDEMNIFICATION BY LICENSEE. Licensee shall defend any action,
suit or proceeding brought against Licensor so far as it is based on a claim
arising from any breach of a representation, warranty or covenant made by
Licensee hereunder. Licensee shall indemnify and hold harmless Licensor and its
officers, directors, agents and employees, from and against any and all damages,
liabilities, costs and expenses (including but not limited to attorneys' fees)
arising out of or incurred by Licensor in connection with or as a result of any
such action, suit or proceeding, provided that Licensee shall not be responsible
for any settlement made without its written consent.
10.3 INDEMNIFICATION PROCEDURE. The obligations in SECTIONS 10.1 AND
10.2 hereof are subject to the indemnifying party being promptly notified of any
and all threats, claims and proceedings related thereto and given reasonable
assistance and the opportunity to assume sole control over the defense and all
negotiations for a settlement or compromise.
11. LIMITATION ON LIABILITY.
EXCEPT WITH RESPECT TO THEIR OBLIGATIONS UNDER SECTIONS 8 AND 10
HEREOF, EACH PARTY SHALL NOT BE RESPONSIBLE OR LIABLE WITH RESPECT TO ANY
SUBJECT MATTER OF THIS AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE, STRICT
LIABILITY OR OTHER THEORY FOR ANY INCIDENTAL, INDIRECT, SPECIAL OR CONSEQUENTIAL
DAMAGES, INCLUDING BUT NOT LIMITED TO LOSS OF REVENUES AND LOSS OF PROFIT.
12. TERM AND TERMINATION.
12.1 TERM. The term of this Agreement will commence on the Effective
Date and, unless terminated earlier in accordance with SECTION 12.2 below, shall
continue for a period of ten (10) years (the "INITIAL TERM"). In its sole and
absolute discretion, Licensee may: (i) extend the term of this Agreement for
additional ten (10) year terms (each, a "RENEWAL TERM") by providing to Licensor
written notice of such election within thirty (30) days prior to the expiration
of the Initial Term or then-current Renewal Term, as applicable; or (ii) at any
time, render the term of this Agreement perpetual by exercising the option and
paying the one-time fee provided for in SECTION 4.4 above. The Initial Term
together with any Renewal Term shall collectively be referred to as the "TERM".
12.2 TERMINATION.
12.2.1 Licensee may terminate this Agreement, at any time, upon
ten (10) days' prior written notice of such termination to Licensor.
12.2.2 Either party may terminate this Agreement in the event
that the other party fails in any material respect to observe or perform any of
its material obligations under this Agreement, which failure is not remedied
within one hundred eighty (180) days after receipt of written notice from the
non-breaching party specifying such failure.
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12.3 EFFECT OF TERMINATION.
12.3.1 From and after the effective date of the expiration or the
termination of this Agreement, Licensee shall no longer have any right,
whatsoever, to practice the Licensed Patents, utilize the Licensed Technology or
Trademarks or otherwise exercise any rights granted hereunder; provided,
however, that (a) nothing herein shall prevent any customers of Licensee from
continuing to utilize Licensed Products paid for prior to such date of
expiration or termination, (b) Licensee shall have twelve (12) months to
complete and deliver any Licensed Products ordered by customers prior to the
effective date of expiration or termination, provided that Licensee pays the
applicable Royalties, if any, and (c) any sublicenses shall survive termination
in accordance with SECTION 2.4 of this Agreement.
12.3.2 Promptly upon the expiration or termination of this
Agreement, Licensee shall return to Licensor all copies of Confidential
Information that is then in the possession of Licensee.
12.3.3 The right of termination under SECTION 12.2.2 hereof shall
be in addition to, and not in lieu of, all other rights and remedies the
terminating Party may have under this Agreement, at law or in equity.
12.3.4 All provisions of this Agreement that by their nature must
survive the termination of this Agreement, including without limitation the
parties' rights and obligations under SECTIONS 2.4 (IN RELEVANT PART), 4.2 (AS
APPLICABLE), 4.5, 5, 7.5 (AS APPLICABLE), 8, 10, 11, 12.3, 13 (IN RELEVANT PART)
AND 14 (IN RELEVANT PART), and all causes of action arising prior to
termination, shall survive the termination of this Agreement.
13. INDEPENDENT CONTRACTORS.
This Agreement is not intended to create, nor should it be construed as
creating, an agency, joint venture, partnership or similar relationship between
the parties. Each party is solely responsible for its own taxes, withholdings,
and other similar statutory obligations, including, but not limited to, workers'
compensation insurance. None of a party's employees, agents, or associates is an
employee the other party, and each party agrees to defend, indemnify and hold
the other harmless from any and all claims made by any of its employees, agents,
or associates, or by any entity or agency on account of an alleged failure to
satisfy any such tax or withholding obligations. Neither party has authority to
act on behalf of the other, or to enter into any contract, incur any liability,
or make any representation on behalf of the other.
14. MISCELLANEOUS.
14.1 FORCE MAJEURE. Neither party shall be considered in default of
performance of its obligations under this Agreement to the extent that
performance of such obligations is delayed by FORCE MAJEURE. If either party to
this Agreement is prevented from or delayed in performing any of its obligations
hereunder by force majeure, it shall notify the other party of the circumstances
constituting FORCE MAJEURE and of the obligation which is delayed or prevented,
and the party giving the notice shall thereupon be excused of the performance of
such obligation for as long as the circumstances of FORCE MAJEURE may continue.
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14.2 SEVERABILITY. In the event that any provision in this Agreement is
held to be invalid, unenforceable, void or illegal, in whole or in part, by any
court of competent jurisdiction, it will be deemed severable from the remainder
of this Agreement and will in no way affect, impair or invalidate any other
provision in this Agreement. If such provision will be deemed invalid due to its
scope or breadth, such provision will be deemed valid to the extent of the scope
of breadth permitted by law.
14.3 GOVERNING LAW. The validity, construction and performance of this
Agreement will be governed by and construed in accordance with the laws of the
State of California without regard to its choice of laws provisions and, if
applicable, the laws of the United States.
14.4 ARBITRATION. The parties shall submit any dispute concerning the
interpretation of or the enforcement of rights and duties under this Agreement
to final and binding arbitration pursuant to the Commercial Arbitration Rules of
the American Arbitration Association. At the request of any party, the
arbitrators, attorneys, parties to the arbitration, witnesses, experts, court
reporters, or other persons present at the arbitration shall agree in writing to
maintain the strict confidentiality of the arbitration proceedings. Arbitration
shall be conducted in Los Angeles, California, by a single, neutral arbitrator,
or, at the election of any party, three neutral arbitrators, appointed in
accordance with the Commercial Arbitration Rules of the American Arbitration
Association. The award of the arbitrator(s) shall be enforceable according to
the applicable provisions of the California Code of Civil Procedure. The parties
hereby consent to the jurisdiction of any court located in Los Angeles,
California to enforce the arbitral award or to enforce any provisions of this
Agreement which are not subject to arbitration. The arbitrator(s) may award
damages and/or permanent injunctive relief, but in no event shall the
arbitrator(s) have the authority to award punitive or exemplary damages.
Notwithstanding the foregoing, a party may apply to a court of competent
jurisdiction for relief in the form of a temporary restraining order or
preliminary injunction, or other provisional remedy pending final determination
of a claim through arbitration in accordance with this paragraph. The arbitral
award shall be rendered in writing and shall state the reasons for the award,
and shall be final and binding upon the parties.
14.5 ENTIRE AGREEMENT. This Agreement and all exhibits thereto
constitute the complete agreement between the parties with respect to the
subject matter hereof and replace and supersede all prior and contemporaneous
written and oral agreements or statements by the parties concerning the subject
matter hereof.
14.6 AMENDMENTS. This Agreement may not be amended or modified in any
respect without further written agreement of both parties, signed by their
respective authorized representatives.
14.7 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, which will together constitute but one and the same instrument.
14.8 WAIVERS. Neither party's failure to insist, in one or more
instances, upon the performance of any term of this Agreement will be construed
as a waiver or relinquishment of its right to such performance or other
performance of such term, and the other party's obligations will continue in
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full force. Either party's consent to any act by the other party on any one
occasion will not be deemed consent of the same act on any other occasion.
14.9 CAPTIONS. The captions and heading in this Agreement are for
convenience only and will not affect in any way the meaning or interpretation of
this Agreement.
14.10 ASSIGNMENT. Except in connection with a Change of Control,
Licensee may not assign any of its rights or delegate any of its duties under
this Agreement without the prior written consent of Licensor, which consent
shall not be unreasonably withheld or delayed; any such attempted assignment
shall be null and void. Subject to the foregoing, the provisions of this
Agreement shall be binding upon and shall inure to the benefit of the successors
and assigns of the respective parties, including without limitation any
partnerships, corporations, or other entities in which the parties may have a
controlling interest or position.
14.11 INTERPRETATION. In the event of any claimed conflict, omission or
ambiguity in this Agreement, no presumption or burden of proof or persuasion
will be implied by virtue of the fact that this Agreement was prepared by or at
the request of a particular party. This Agreement will be interpreted equally as
to both parties and not against the party that drafted it. Whenever the context
requires, the gender of all words will include the masculine, feminine and
neuter, and the number of all words will include the singular and plural.
14.12 ATTORNEYS' FEES. In the event that any dispute between the
parties should result in litigation or arbitration, the prevailing party in such
dispute shall be entitled to recover from the other party all reasonable fees,
costs and expenses of enforcing any right of the prevailing party, including
reasonable attorneys' fees and expenses, all of which shall be deemed to have
accrued upon the commencement of such action and shall be paid whether or not
such action is prosecuted to judgment.
14.13 NOTICES. All notices must be given in writing and be personally
delivered or delivered by facsimile (with copy of such notice sent by certified
or registered mail) or by certified or registered mail, return receipt
requested, postage prepaid, addressed to the parties as set forth opposite their
respective names below:
LICENSOR: Roaming Messenger, Inc.
50 Castilian Drive, Suite A,
Santa Barbara, California 93117
Facsimile: 805-964-6968
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Attention: Chief Executive Officer
LICENSEE: Zingerang, Inc.
3375 Wild Oak Road
Santa Rita Hills, California 93436
Facsimile:
Attention: Chief Executive Officer
Items delivered personally will be deemed delivered on the date of
actual delivery. Items sent electronically or by facsimile will be deemed
delivered on the first business day after the date of transmission. Items sent
by certified or registered mail will be deemed delivered three (3) business days
after mailing. A party may change the foregoing information for notices by
notifying the other party of such change in writing in accordance with the
foregoing.
[SIGNATURES ON FOLLOWING PAGE]
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the
Effective Date.
ROAMING MESSENGER, INC. ZINGERANG, INC.
By: /s/Jonathan Lei By:/s/Derek McLeish
-------------------------- ------------------------------
Name: Jonathan Lei Name: Derek McLeish
------------------------ ------------------------------
Title: President Title: Chief Executive Officer
----------------------- ------------------------------
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EXHIBIT A
LICENSED PATENTS
U.S. PUB. APP. NO. TITLE
------------------ ---------------------------------------------
1 20060165030 METHOD OF AND SYSTEM FOR TRANSMITTING
----------- -------------------------------------
A MOBILE AGENT FOR INSTRUCTION EXECUTION
----------------------------------------
2 20060123396 METHOD OF AND INSTRUCTION SET FOR EXECUTING
----------- -------------------------------------------
OPERATIONS ON A DEVICE
----------------------
3 20030110097 SELF-CONTAINED BUSINESS TRANSACTION CAPSULES
----------- --------------------------------------------
EXHIBIT B
TECHNOLOGY
o All source codes for software applications currently named:
- Roaming Messenger Platform
- Roaming Messenger Outlook Edition
- Smart EDIS Alerts
- Voicemail Smart Alerts
EXHIBIT C
TRADEMARKS
o Roaming Messenger(R)
o eCapsule(R)