Exhibit 10.5
PATENT LICENSE AGREEMENT
THIS LICENSE AGREEMENT ("Agreement") is entered by and between Call
Compliance.com, Inc., a Delaware corporation with a principal place of
business at 90 Pratt Oval Glen Cove, New York 11542 ("CCC"), Call Compliance
Inc., a New York corporation with a principal place of business at 90 Pratt
Oval Glen Cove, New York 11542 ("CCI"), and Illuminet, Inc., a Delaware
corporation (and a VeriSign Company) with a principal place of business at
4501 Intelco Loop S.E., Olympia WA 98507 ("Illuminet,") (with CCC and
Illuminet being hereinafter individually and collectively referred to herein
as "Party" and "Parties").
WHEREAS, CCC owns the Licensed Patent;
WHEREAS, Illuminet wishes to obtain a license from CCC to use the
Licensed Patent for developing, marketing, operating, and providing certain
services, and CCC is willing to grant such a license, subject to the terms
and conditions set forth below; and
WHEREAS, in addition to the above license, CCI, a wholly owned
subsidiary of CCC, and Illuminet are entering into an Alliance Agreement
("Alliance Agreement") concerning the terms of each such party's
responsibilities with respect to developing, marketing, operating, and
providing the Service.
NOW, THEREFORE, in consideration of the mutual promises contained
herein and other good and valuable consideration, the receipt and sufficiency
of which are hereby acknowledged, the Parties hereto agree as follows:
1.0 Definitions.
1.1 "Intellectual Property Rights" means any and all (by whatever
name or term known or designated) tangible and intangible rights
now known or hereafter existing in and to copyrights, patents,
trade secrets, know-how, any and all inventions, discoveries or
improvements, and any other intellectual and industrial property
and proprietary rights, of every kind and nature throughout the
world and however designated, and including all registrations,
applications, renewals, extensions thereof, but excluding
trademarks, service marks and trade names.
1.2 "Licensed Patent" means the patent rights in the following patent
and patent application and any patents issued thereon and any and
all continuations, continuations-in-part, divisionals, reissues,
reexaminations or extensions thereof: United States Patent
Serial No. 09/435,935 entitled "Call Blocking System" filed on
November 9, 1999 and issued as United States Patent No. 6,330,317
on December 11, 2001. A copy of the Licensed Patent as of the
Effective Date of this Agreement is annexed hereto as Exhibit A.
1.3 "Service" means the services developed, marketed, operated and/or
provided by or on behalf of Illuminet that incorporate, are based
on, related to, would infringe, or are created using, in whole or
in part, the Licensed Patent or Intellectual Property Rights
derived from or related to the Licensed Patent.
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2.0 LICENSE GRANT.
CCC hereby grants to Illuminet a non-transferable, non-exclusive license to
use the Licensed Patent to develop, market, operate, and provide the Service
throughout the United States on the terms and subject to the conditions set
forth in this Agreement or the Alliance Agreement. In addition, CCC hereby
grants to Illuminet a limited right to allow third parties to use the
Licensed Patent for the exclusive purpose of developing software for the
Service, provided that each such third party has executed an non-disclosure
agreement with Illuminet under terms at least as restrictive as those
contained in Section 5 herein (Proprietary Information).
3.0 COMPENSATION.
The consideration to CCC for the license granted herein, is the continued
performance of Illuminet under the terms of Alliance Agreement or as
otherwise may be mutually agreed in writing by the Parties.
4.0 OWNERSHIP.
4.1 The Parties agree that the Licensed Patent (and Intellectual
Property Rights therein) shall be and will remain the exclusive
property of CCC.
4.2 Any discovery, invention, application, technique, process,
specification, system, design or work of authorship that is based
on, or improves upon the Licensed Patent (a "Development"), and
the Intellectual Property Rights therein, shall be and will
remain the property of the Party responsible for creating such
Development and memorializing such Development in writing.
Provided, however, a Development shall not include any idea,
concept, and/or thought not reduced to practice or fixed in a
tangible medium of expression. Any idea, concept, or thought,
that is based on, or improves upon, the Licensed Patent which is
not reduced to practice or fixed in a tangible medium shall be
treated as confidential and shall not be used in any manner by
the Receiving Party without the Disclosing Party's consent and
then only upon the terms and conditions agreed upon.
4.3 If CCC owns a Development, Illuminet shall have a right to use
such Development under the Alliance Agreement and pursuant to the
license granted in Section 2.0 herein
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5.0 PROPRIETARY INFORMATION.
5.1 Identification of Proprietary Information. Each Party may make
available or otherwise disclose to the other Party during the
negotiation or performance of this Agreement certain business
information, including information that is proprietary to a third
party. Except as otherwise stated herein, all such information
shall be considered the confidential and proprietary information
of the Party disclosing such information ("Disclosing Party") if,
when disclosed in writing, it is clearly marked as confidential
and/or proprietary, and if, when disclosed orally, it is clearly
identified at the time of disclosure as being confidential and/or
proprietary ("Proprietary Information"). For the purposes of this
Agreement, "Receiving Party" shall mean the Party and its parties
to whom Proprietary Information is disclosed under Section 5.3
herein.
5.2 Exclusions. Notwithstanding anything to the contrary in this
Section 5, Proprietary Information shall not include information
that the Receiving Party can demonstrate: (i) was known to the
Receiving Party prior to disclosure by the Disclosing Party as
evidenced by documentation that was in existence prior to any
disclosure by the Disclosing Party to the Receiving Party and
that is free from any obligation to keep it confidential; (ii)
was independently developed by the Receiving Party without
reference to or knowledge of the Disclosing Party's Proprietary
Information as evidenced by documentation that was in existence
prior to any disclosure by the Disclosing Party to the Receiving
Party; (iii) is within the public domain through no action on the
part of the Receiving Party as evidenced by documentation; (iv)
was received from a third party who was under no obligation to
keep such information confidential; or (v) was authorized in
writing by the Disclosing Party for release prior to such
release.
5.3 Permitted Uses. Neither Party shall disclose the Proprietary
Information of the other Party, except to its directors,
officers, employees, agents, consultants and attorneys, and those
of its subsidiary and parent entities who have a need to know
such Proprietary Information for negotiation or performance of
this Agreement or the Alliance Agreement, as the case may be, and
who have agreed to maintain the confidentiality of such
Proprietary Information as provided herein ("Related Parties").
5.4 Return of Proprietary Information. The Disclosing Party may
request, at any time, that the Receiving Party return or destroy
the tangible copies and erase from its computer systems
("Eliminate(d)") the Proprietary Information of the Disclosing
Party, unless such Proprietary Information is critical for the
Receiving Party to perform its obligations under this
Agreement.. Such request shall describe with reasonable
particularity the Proprietary Information to be Eliminated.
Within fifteen (15) days of receipt of such a request, the
Receiving Party shall either Eliminate the Information described
in the request, or, if required by law or regulation to retain
copies of such Proprietary Information, notify the Disclosing
Party of and comply with such requirement.
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5.5 Discovery. If a demand under legal or regulatory authority of
competent jurisdiction or a requirement of law for the discovery
or disclosure of Proprietary Information is made known to the
Receiving Party, the Receiving Party shall give the Disclosing
Party notice of the demand or requirement prior to disclosing the
Proprietary Information and shall, upon the request and at the
expense of the Disclosing Party, obtain or cooperate in any
efforts by the Disclosing Party to seek reasonable arrangements
to protect the confidential and proprietary nature of such
Proprietary Information.
5.6 Duration of Obligations. The obligations described in this
Section 5 shall subsist during the term of this Agreement, and
survive the termination of this Agreement for a period of three
(3) years, except for that Proprietary Information marked
"Sensitive Proprietary Information," for which the obligations of
this Section 5 shall subsist during the term of this Agreement
and survive the termination of this Agreement in perpetuity.
5.7 Injunctive Relief. Both Parties agree that a breach of any of
the obligations set forth in this Section 5 would irreparably
damage and create undue hardships for the other Party.
Therefore, the non-breaching Party shall be entitled to immediate
court ordered injunctive relief to stop any apparent breach of
this Section 5, such remedy being in addition to any other
remedies available to such non-breaching Party.
6.0 WARRANTIES.
6.1 Each of CCC and Illuminet represents to the other as follows:
6.1.1. Each is a corporation duly organized, validly
existing, and in good standing under the laws of its
jurisdiction of incorporation with all requisite corporate
power, authority, and legal right to own its property and
conduct its business as now conducted and as contemplated
under this Agreement.
6.1.2. Each is duly qualified to do business in each
jurisdiction in which the nature of its properties or its
business requires such qualification and in which the
failure to so qualify would materially adversely affect its
business or financial condition.
6.1.3. The execution, delivery, and performance by each of
this Agreement and the performance by each of its
obligations hereunder (i) are within their respective power
and authority; (ii) has been duly authorized by all
necessary action on the part of their respective governing
bodies; (iii) will not contravene any provision of law or
regulation, or any writ or decree of any court or
governmental instrumentality or their respective
jurisdictions of incorporation or other agreement of
either, and (iv) will not conflict with or result in a
breach of or default under (with or without notice or lapse
of time), any contract, agreement, indenture, mortgage,
deed of trust, lease, or other instrument to which either
Party is bound or any of their respective assets are
subject.
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6.1.4. This Agreement has been duly executed and delivered
by each Party and constitutes the valid, legal and binding
obligation of each Party, enforceable in accordance with
its terms.
6.1.5. As of the Effective Date, no approval or consent of,
or filing with, any governmental authority is required to
be obtained or effected by either Party in connection with
its execution, delivery, and performance of this Agreement.
6.1.6. As of the Effective Date, there is no pending or, to
its knowledge, threatened action, suit or proceeding or
investigation before any court, board of arbitration or
arbitrator, governmental body, agency, instrumentality or
official against or affecting either Party, the outcome of
which, if adversely determined, would have a material
adverse effect on the ability of either Party to fully
perform its obligations under this Agreement.
6.1.7. Neither Party is a party to any agreement or
instrument or subject to any restriction having a
materially adverse effect on its ability to perform its
obligations under this Agreement.
6.1.8. As of the Effective Date, neither Party is in default
under any applicable order, writ, injunction, or decree of
any court, governmental department, board or agency or
instrumentality of any arbitrator.
6.1.9. Each Party has obtained or shall obtain in respect of
this Agreement and the transactions contemplated hereby, on
or prior to the date hereof, all governmental permissions,
rights, licenses and permits, if any, to carry out the
transactions contemplated thereby. Neither Party has
received notice of any violation of any applicable law,
regulation, order or requirement which would have a
materially adverse effect on the transactions contemplated
by this Agreement, and which has not been complied with or
corrected in all material respects.
6.2 Intentionally deleted.
6.3 CCI hereby guarantees the performance of CCC's obligations under
this Agreement.
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6.4 THE WARRANTIES EXPRESSLY STATED IN THIS AGREEMENT ARE THE SOLE
WARRANTIES, EXPRESS OR IMPLIED, GIVEN BY EITHER PARTY IN
CONNECTION WITH THE LICENSED PATENT. WITH RESPECT TO THIS
AGREEMENT, EACH PARTY DISCLAIMS ALL OTHER WARRANTIES, INCLUDING
WITHOUT LIMITATION, WARRANTIES OF MERCHANTABILITY AND FITNESS FOR
A PARTICULAR PURPOSE.
7.0 INDEMNITY.
7.1 In addition to the indemnity provisions set forth in the Alliance
Agreement, CCC will defend, indemnify and hold harmless Illuminet
from and against any loss, cost, claim, liability, damage, and
expense (including reasonable attorney's fees) brought or claimed
by third parties (collectively, "Claims"), which are brought
against Illuminet alleging that Illuminet's practicing of the
invention of the Licensed Patent infringes upon the Intellectual
Property Rights of a third party. Illuminet shall notify CCC
promptly in writing of any Claims for which CCC is responsible
under this Section 7 and shall tender the defense of such Claims
to CCC. Illuminet shall cooperate in a reasonable manner with
the defense or settlement of such indemnified Claims at CCC's
expense. CCC shall not be liable under this Section 7 for
settlements by Illuminet of any Claims unless the CCC has
approved the settlement in advance or unless the defense of such
Claims has been tendered to CCC in writing and CCC has failed to
promptly undertake the defense
7.2 Illuminet, at its own expense, shall (a) conduct its own defense
of, or otherwise be responsible for, any portion of the third
party's action which is not related to Illuminet's practicing of
the invention of the Licensed Patent and/or (b) at its election,
conduct its own defense of any portion of the Claims against it
which would otherwise be indemnified hereunder.
8.0 LIMITATION OF LIABILITY.
EXCEPT AS PROVIDED IN SECTION 7 HEREINABOVE, NEITHER PARTY SHALL
HAVE ANY LIABILITY TO THE OTHER PARTY WITH RESPECT TO THIS
AGREEMENT FOR ANY LOST INCOME OR PROFITS OR ANY INDIRECT,
SPECIAL, PUNITIVE, CONSEQUENTIAL OR INCIDENTAL DAMAGES OF ANY
KIND WHATSOEVER, EVEN IF IT HAS BEEN ADVISED OF THE POSSIBILITY
OF SUCH DAMAGES.
9.0 DISPUTES.
9.1 Informal Resolution. The Parties agree that they shall attempt
to resolve any dispute regarding any right, obligation, duty, or
liability arising out of the provisions of this Agreement through
informal discussions or negotiations prior to resorting to formal
dispute resolution procedures contained in Section 9.2 below.
If, at any time following the commencement of any such
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discussions or negotiations, either Party determines such
discussions or negotiations are not likely to result in a
reasonable resolution of the dispute, it may send to the other
Party a written statement of the issues or problems being
discussed or negotiated ("Dispute Statement"). If the dispute
has not been resolved within thirty (30) days after the mailing
of the Dispute Statement, either Party shall have the right to
serve a written demand for arbitration upon the other and thereby
commence binding arbitration in accordance with the provisions
set forth below. The mailing of the Dispute Statement and the
passage of thirty (30) days from the date of the mailing of such
Dispute Statement shall be conditions precedent to the
commencement of any arbitration proceedings hereunder.
9.2 Binding Arbitration.
9.2.1 Within five (5) business days of delivery of a demand, each
Party shall designate an arbitrator. The two designated
arbitrators shall then select a third arbitrator to
complete the full arbitration panel within twenty (20)
business days, or as otherwise agreed.
9.2.2 The arbitration panel shall commence hearing within sixty
(60) days of the selection of the panel. The scope of
document production and the enforcement of document
requests may be ordered by the arbitrators to the extent
economical and reasonable. All discovery requests shall be
subject to the proprietary rights of the Parties, and the
arbitrators shall adopt procedures to protect such rights.
Except where contrary to the provisions set forth in this
Agreement, the rules of the American Arbitration
Association ("AAA") shall be applied; Provided, however,
that the arbitration need not be conducted under the
auspices of the AAA, in which event the fee schedule of the
AAA shall not apply. The Parties agree that the
arbitration panel shall have the authority to order
injunctive relief and such order shall be enforceable by a
court of competent jurisdiction.
9.2.3 All costs of arbitration and any award of attorney's fees
shall be awarded pursuant to the provisions of Section
12.15 of this Agreement.
9.3 Time Limitations. The provisions of this Section 9 shall survive
the termination of this Agreement. The commencement of formal
dispute resolution procedures (i.e., the delivery of a Dispute
Statement), or any other action in law or equity arising out of
this Agreement, may not occur more than three (3) years after the
event giving rise to the dispute has occurred.
10.0 TERM; TERMINATION.
10.1 The initial term (the "Initial Term") of this Agreement shall be
five (5) years from the Effective Date. At the expiration of the
Initial Term, this Agreement shall extend for successive one (1)
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year terms (each a "Renewal Term") unless either Party shall have
delivered to the other Party a notice of termination at least
ninety (90) days prior to the expiration of the Initial Term or
the applicable Renewal Term.
10.2 Notwithstanding the above Section 10.1, this Agreement may be
terminated by:
10.2.1 The non-defaulting or non-breaching Party, if the
other Party otherwise defaults in the performance of or
materially breaches any of the provisions of this
Agreement, with the default or breach continuing unremedied
for a period of thirty (30) days after receipt of written
notice from the non-defaulting or non-breaching Party to
the Party in default or breach, specifying in reasonable
detail the nature of such default or breach. The
non-defaulting or non-breaching Party may terminate the
license granted under this Agreement in accordance with
this Section 10.2.1 by providing the Party in default or
breach with written notice of termination upon expiration
of said thirty (30) day period.
10.2.2 Intentionally deleted
10.2.3 Intentionally deleted
10.2.4 Intentionally deleted.
10.2.5 Either Party, if the Alliance Agreement is terminated,
upon written notice of termination to the other Party.
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11.0 WAIVER.
11.1 The failure by either Party to exercise any of its rights under
the license granted under this Agreement shall not be deemed to
constitute waiver of any such rights.
11.2 The waiver of a breach of any of the terms hereof or of any
default hereunder shall not be deemed a waiver of any subsequent
breach or default, whether of the same or similar nature, and
shall not in any way affect the other terms thereof. No waiver
or modification hereof shall be valid or binding unless in
writing and signed by the Parties hereto.
12.0 GENERAL PROVISIONS.
12.1 Notice. All notices, demands and statements to be given under
this Agreement will be made in writing and shall be deemed given
three (3) days after deposit thereof in the U.S. Mail, postage
prepaid, and addressed as follows:
12.1.1 As to CCC:
Call Compliance Inc.
Attention: Alison Garfinkel
90 Pratt Oval
Glenn Cove, New York 11542
With a copy to:
Cadwalader, Wickersham, & Taft
100 Maiden Lane
New York, NY 10038
Telephone: (212) 504-5555
Facsimile: (212) 504-6666
Attention: Dennis J. Block, Esq.
12.1.2 As to Illuminet:
Illuminet Inc.
Attention: Contract Administration
4501 Intelco Loop S.E.
Olympia, WA 98507
A change of address for the giving of notice shall be made in the
same manner as the giving of notice.
Any notice given by facsimile transmissions shall be followed by
a hard copy thereof sent in the manner set forth above, and shall
be deemed given upon receipt of confirmation of transmission of
facsimile.
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12.2 Assignment. Neither Party may assign its rights or obligations
under this Agreement, in whole or in part, by operation of law or
otherwise, without the prior express written consent of the other
Party. Any purported assignment in violation of this article
shall be null and void. Notwithstanding any other provision in
this Agreement, either Party may assign this Agreement, in whole
or in part, to any entity acquiring substantially all of the
stock or assets of such Party or the surviving entity pursuant to
a merger.
12.3 Removed.
12.4 Conformity to Laws, Rules, Regulations and Orders.
Notwithstanding any other provision of this Agreement, each Party
agrees to perform all of its obligations and undertakings
prescribed in this Agreement in compliance with all applicable
laws, orders, rules and regulations that may affect the matters
covered by this Agreement.
12.5 Construction. This Agreement is the product of negotiation among
the Parties and their respective counsel. This Agreement shall
be interpreted fairly in accordance with its terms and conditions
and without any strict construction in favor of any Party. Any
ambiguity shall not be interpreted against the drafting Party.
12.6 Entire Agreement. This Agreement, together with any attached
exhibits, and together with the Alliance Agreement embodies the
entire understanding and agreement between the Parties and
supersedes any prior understanding and agreement between and
among them respecting the subject matter hereof. In the event of
a conflict between the terms and conditions of the Alliance
Agreement and with the terms and conditions of this Agreement,
the terms and conditions of this Agreement shall control. There
are no representations, agreements, arrangements or
understandings, oral or written, between the Parties hereto
relating to the subject matter of this Agreement, which are not
fully expressed herein or in the Alliance Agreement. No change,
modification, extension, termination or waiver of this Agreement,
or any of the provisions herein, shall be valid unless made in
writing and signed by duly authorized representatives of the
Parties.
12.7 Force Majeure. Neither Party shall be deemed in default of this
Agreement to the extent that performance of its obligations or
attempts to cure any breach are delayed, restricted or prevented
by reason of any act of God, fire, natural disaster, governmental
regulations, or other causes arising out of a state of national
emergency or war ("Force Majeure Event"), provided that such
Party gives the other Party written notice thereof promptly and,
in any event, within thirty (30) days of discovery thereof and
uses its best efforts to cure the delay and one Party so informs
the other in writing of such causes and its desire to be
released. In the event that any Force Majeure Event prevents
either Party from carrying out its obligations under this
Agreement for a period of more than thirty (30) days, the other
Party may terminate this Agreement upon thirty (30) days written
notice without liability.
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12.8 Governing Law. This Agreement, in all respects, will be
interpreted, construed, applied and governed in accordance with
the laws of the Commonwealth of Virginia excluding its conflict
of laws rules.
12.9 Venue. Any arbitration or other judicial proceeding brought with
respect to this Agreement must be brought in the state courts
sitting in Fairfax County, Virginia and by execution and delivery
of this Agreement, each signatory hereto (i) hereby submits to
and accepts, generally and unconditionally, the exclusive
jurisdiction of such courts and any related appellate court, and
irrevocably agrees to be bound by any judgment rendered thereby
in connection with this Agreement and (ii) irrevocably waives any
objection it may now or hereafter have as to the venue of any
such suit, action or proceeding brought in such a court or that
such court is an inconvenient forum.
12.10 Headings. The titles and headings of the Sections in this
Agreement are inserted merely for convenience and identification
and are not to be used in the interpretation or construction of
this Agreement.
12.11 No Agency. Nothing contained in this Agreement shall be
construed as making either Party the partner, joint venturer,
agent, or employer/employee of the other. Neither Party shall
have the authority to make any statements, representations, or
commitments of any kind, or to take or omit to take any action,
which shall be binding on the other, except and unless as
expressly and explicitly provided for herein or expressly and
explicitly authorized in writing by the Party to be bound.
12.12 Original Agreement. This Agreement may be executed in one or
more counterparts, each of which shall be deemed an original, but
all of which together shall constitute one and the same
instrument.
12.13 Publicity. Any press release or other publicity issued by a
Party describing this Agreement or otherwise referencing the
Parties to this Agreement shall, be subject to the prior written
approval of the other Party, which approval shall not be
unreasonably withheld or delayed.
12.14 Severability. Any provision of this Agreement which is prohibited
or unenforceable in any jurisdiction shall, as to such
jurisdiction, be ineffective to the extent of the prohibition or
unenforceability without invalidating the remaining provisions
hereof, and shall not invalidate or render unenforceable such
provision in any other jurisdiction. In the event any provision
or portion in this Agreement is held to be unenforceable or
invalid by a court of competent jurisdiction, the validity and
enforceability of the remaining portion of any such provision
and/or the remaining provisions of this Agreement shall not be
affected thereby.
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12.15 Removed.
12.16 Survival. Any termination of the license granted under this
Agreement shall not discharge either Party from any right, duty,
obligation or liability that arose or occurred prior to the
effective date of such termination. Sections 4.0, 5.0, 7.0, 8.0,
9.0, and 12.0 shall survive any termination of the license
granted under this Agreement. Additionally, in the event that,
following termination of this Agreement (except termination of
this Agreement under Section 10.2.3), Illuminet has agreements,
in effect, with customers to provide the Service, all the rights
set forth in this Agreement and Sections 1, 2, 3, 6, 8, 10, 12,
13, 14, 17, and 18 of the Alliance Agreement (unless otherwise
mutually agreed in writing) shall survive with respect to each
such customer until each such customer's agreement for the
Service has been cancelled, terminated, or expired.
12.17 Incorporation by Reference. Exhibits A, annexed hereto, is by
each and every reference thereto incorporated herein by
reference.
# # #
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IN WITNESS WHEREOF, this Agreement has been executed for and on behalf
of each Party by and through its authorized representative to be effective
the date of last signature hereto (the "Effective Date").
Each Party represents and warrants that it has not altered this
Agreement in any manner other than as agreed to in writing by the Parties or
as an inter-delineation initialed by both Parties.
The signatories to this Agreement hereby warrant and represent that
they have the authority to execute this Agreement on behalf of the entity or
entities for which they sign.
# # #
CALL COMPLIANCE.COM, INC. ("CCC") ILLUMINET INC. ("ILLUMINET")
By: ________________________ By: ________________________
Name: ________________________ Name: ________________________
Title: ___________________________ Title: ________________________
Date: ___________________________ Date: __________________________
CALL COMPLIANCE, INC. ("CCI")
Solely with respect to Section 6.4
By:__________________________
Name:________________________
Title:_________________________
Date:_________________________
EXHIBITS:
A: Patent
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EXHIBIT A
Patent
[To be inserted under separate cover.]
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