Exhibit 10.4
ASSIGNMENT OF INVENTIONS
THIS ASSIGNMENT OF INVENTIONS ("Assignment") is entered into on this
the 4th day of February, 2004, with an effective date of April 15, 2003
("Effective Date"), by and between Dwango North America Corp. ("Assignee"), a
Nevada corporation with a principal place of business at 5847 San Felipe St.,
Suite 3220, Houston, Texas 77057-3000, and [Assignor name], an individual
residing [Assignor address] ("Assignor").
WHEREAS Assignor was employed by and/or otherwise provided services to
Over-the-Air Wireless, Inc. ("OTA") during the period from May 2002 until April
15, 2003;
WHEREAS contemporaneously herewith, Assignor has entered into an
agreement with Assignee entitled "Agreement and Plan of Merger" ("Merger
Agreement"), wherein, inter alia, Assignor transferred all his right, title and
interest in OTA to Assignor, including, but not limited to all Intellectual
Property Rights held by OTA; and,
WHEREAS in conjunction with and as a material part of the Merger
Agreement, Assignor and Assignee desire to clearly establish that Assignee has
acquired all Assignor's right, title and interest in all Assignor's Intellectual
Property Rights arising out of or related to his employment with OTA;
NOW, THEREFORE, for and in consideration of the mutual promises
contained herein, the mutual promises contained in the Merger Agreement and for
other good and valuable consideration, the receipt and sufficiency of which is
hereby acknowledged, Assignee and Assignor (hereinafter collectively "the
Parties" and each a "Party") do hereby agree as follows:
1. DEFINITIONS
a. "Intellectual Property Rights" shall mean all copyrights
(including, without limitation, the exclusive right to
reproduce, distribute copies of, display and thereupon perform
the copyrighted work and to prepare derivative works); all
copyright registrations and applications; all moral rights;
all author's rights; all trademark rights (including, without
limitation, registrations and applications); all right, title
and interest in and to any patent, letters patent, industrial
model, design patent, petty patent, patent of importation,
utility model, certificate of invention, and/or other indicia
of inventorship and/or invention ownership, and any
application for any of the foregoing, and including any such
rights granted upon any reissue, division, continuation or
continuation-in-part applications now or hereafter filed,
related to any such application; all trade names; all mask
work rights; all right, title and interest in and to all trade
secret rights arising under the common law, state law, federal
law or the laws of any foreign country; all algorithms; all
rights in packaging, goodwill and other intellectual property
rights; and all divisions, continuations, reissues, renewals
and extensions thereof, regardless of whether any such rights
arise under the laws of the United States or any other state,
country or jurisdiction, and all derivative works thereof.
2. ASSIGNMENT
Assignor hereby unconditionally and irrevocably assigns and transfers
to Assignee all of Assignor's Intellectual Property Rights arising out
of or related to any work or services Assignor performed for OTA
(regardless of whether Assignor was actually compensated for such
services), including but not limited to all Intellectual Property
Rights arising out of any research or development work Assignor
performed either at the request of OTA or using any equipment,
supplies, facility or trade secret information of OTA (collectively all
such Intellectual Property Rights "OTA IP").
Assignor agrees that all OTA IP shall be the absolute property of
Assignee or Assignee's designees and, at the request of Assignee,
Assignor shall provide any reasonably necessary assistance to Assignee
in making application in due form for United States letters patent and
foreign letters patent on such OTA IP. In the event that Assignee
requests that Assignor provide such application assistance after
termination of Assignor's employment with Assignee, Assignee agrees to
compensate Assignor for time spent providing the requested assistance
at a rate equal to the most recent hourly rate Assignee paid Assignor
for his services. In calculating such hourly rate, it shall be assumed
that Assignor works forty (40) hours per week to earn his salary.
Assignor shall execute any and all instruments and do any acts
necessary or desirable in connection with any such application for
letters patent in order to establish and perfect in Assignee the entire
right, title, and interest in such OTA IP, and also to execute any
instruments desirable in connection with any continuations, renewals,
or reissues thereof or in the conduct of any related proceedings or
litigation. Assignee shall bear all reasonably necessary out of pocket
expenses incurred by Assignor as a result of the performance of the
obligations provided for in this Section 2. Except as authorized by
Assignee (in writing if after termination of Assignor's employment with
Assignee), Assignor shall not disclose, directly or indirectly, any
information relating to any OTA IP.
If Assignor has any Intellectual Property Rights to any OTA IP that
cannot be assigned to Assignee, Assignor unconditionally and
irrevocably waives the enforcement of such rights, and all claims and
causes of action of any kind against Assignee with respect to such OTA
IP, and agrees, at Assignee's request and expense, to consent to and
join in any action to enforce Assignee's rights in the OTA IP. If
Assignor has any Intellectual Property Rights in any OTA IP that cannot
be assigned to Assignee or waived by Assignor, the Assignor, to the
extent Assignor has the legal right to do so, unconditionally and
irrevocably grants to Assignee during the term of such rights, an
exclusive, irrevocable, perpetual, worldwide, fully paid and
royalty-free license, with rights to sublicense through multiple levels
of sublicensees, to reproduce, create derivative works of, distribute,
publicly perform and publicly display by all means now known or later
developed, to the OTA IP.
3. MISCELLANEOUS
a. The Parties hereby acknowledge and agree that breach of the
covenants and Assignments contained in Paragraphs 2 of this
Assignment shall cause immediate and irreparable damage to
Assignee and that Assignee's remedy at law for any such breach
would be inadequate. Assignor agrees that Assignee shall be
entitled to have temporary or permanent injunctive relief
without the necessity of proof of actual damage or bond. Such
injunctive relief shall not be exclusive, but shall be in
addition to any other rights or remedies to which Assignee
shall be entitled. In any dispute under this Assignment, the
Parties agree that the prevailing Party shall be entitled to
recover the costs and expenses of such dispute, including
reasonable attorneys' fees and costs.
b. The Parties agree that any failure by Assignee to exercise any
of its rights under this Assignment or at law, or to insist on
the complete performance of all obligations by Assignor under
the terms of this Assignment shall not constitute or be
construed as a waiver by Assignee of any of its rights,
privileges, obligations or duties, or as creating any contrary
custom or course of conduct.
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c. The Parties agree that this Assignment shall be construed
under and in accordance with the laws of the State of Texas
(excluding its conflicts of law provisions) and that all of
the obligations of the Parties are performable in Harris
County, Texas.
d. The Parties agree that this Assignment shall be binding on and
inure to the benefit of the Parties to this Assignment and
their respective heirs, executors, administrators, legal
representatives, successors, and assigns.
f. The Parties agree that if any provision of this Assignment is
for any reason held to be invalid, illegal or unenforceable in
any respect, the remaining provisions will remain in full
force and effect. If any provision of this Assignment is, for
any reason, determined by a court of competent jurisdiction to
be excessively broad or unreasonable as to scope or subject,
such provision must be enforced to the extent necessary to be
reasonable under the circumstances and consistent with
applicable law while reflecting as closely as possible the
intent of the parties as expressed herein.
g. The Parties agree that, excluding the Merger Agreement, this
Assignment supersedes any prior understanding or written or
oral agreements between the Parties to this Assignment
concerning the subject matter hereof.
h. This Assignment may be transmitted by facsimile, and it is the
intent of the Parties for the facsimile of any autograph
printed by a receiving facsimile machine to be an original
signature and for the facsimile and any complete photocopy of
the Assignment to be deemed an original.
i. This Assignment may be executed in two or more counterparts,
each of which shall be deemed an original and all of which
together shall constitute one instrument.
[signature page follows]
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DWANGO NORTH AMERICA CORP.
By:
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Robert E. Huntley, Chairman
[Assignor]
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[Assignor]
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