Exhibit 2iC
ATTACHMENT C
LICENSE AGREEMENT
AGREEMENT made by and between Optelecom, Inc., a Delaware corporation
("Licensor"), and Paragon Audio Visual Limited, a United Kingdom company
("Licensee").
WHEREAS, Licensor desires to grant to Licensee, and Licensee desires to
accept from Licensor, a license with respect to those assets of Licensor set
forth in Schedule 1 hereto (the "As sets");
NOW, THEREFORE, in consideration of the premises and the covenants
contained herein, the parties agree as follows:
1. Grant of License. Subject to the terms and conditions of this
Agreement, Licensor hereby grants to Licensee, to the extent of Licensor's
interest in the Assets, and Licensee hereby accepts from Licensor, a
nonexclusive, worldwide, nontransferable license to use the Assets (the
"License"). The Closing of this Agreement shall take place at the offices of
Licensor at 0000 Xxxxxxx Xxxx, Xxxxxxxxxxxx, Xxxxxxxx 00000 immediately after
the signing of this Agreement.
2. Consideration for License. In consideration for the grant of the
License, Licensee shall pay to Licensor, or to such other person as Licensor may
designate in writing, an annual license fee of US$175,000 which shall be due and
payable in four equal amounts on the last business day of each calendar quarter
of each year during the term of the License.
3. Delivery of Assets. At the Closing, Licensor shall deliver to
Licensee the Assets and execute such documents and take such actions as may
reasonably be necessary in connection therewith to put Licensee in actual
possession and control of the Assets. At any time and from time to time after
the Closing, Licensor and its officers and directors shall take such further
actions and execute such further documents as may reasonably be requested by
Licensee for purposes of fully effectuating the License granted under this
Agreement.
4. Termination. The License shall be perpetual; provided, however, that
Licensor shall have the right to terminate this Agreement and the License
granted hereunder in the event that Licensee ceases to be a direct or indirect
wholly-owned subsidiary of Licensor. Upon any such termination, all rights
granted to Licensee under this Agreement shall automatically revert to Licensor,
and Licensee shall refrain from further use of and promptly return the Assets to
Licensor. Licensee agrees to execute such documents as may reasonably be
necessary to confirm or accomplish such reversion of rights to Licensor.
5. Ownership of Assets. Licensee acknowledges Licensor's exclusive
right, title and interest in and to the Assets, including any and all patents,
contract rights, copyrights, trademarks, trade secrets and other intellectual
property rights included therein, and shall not at any time during the term of
this Agreement do or cause to be done any act or thing in any way impairing or
tending to
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impair such right, title and interest or represent in any manner that Licensee
has any ownership interest in the Assets. Licensee acknowledges that its use of
the Assets shall not create any right, title or interest in or to the Assets in
Licensee. Licensee shall use its best efforts to maintain the confidentiality of
any and all trade secrets and other proprietary information included in the
Assets and not otherwise publicly available. Licensee agrees to execute such
further documents as Licensor may reasonably request for purposes of protecting,
perfecting, safe-guarding or renewing its proprietary interests in the Assets.
Licensor shall have no obligation to provide support of any kind to Licensee in
connection with its use of the Assets.
6. Disclaimer of Warranties. THE ASSETS ARE LICENSED BY LICENSOR TO
LICENSEE ON AN "AS IS" BASIS. LICENSOR MAKES NO WARRANTIES WITH RESPECT TO THE
ASSETS, INCLUDING, WITHOUT LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY
OR FITNESS FOR A PARTICULAR PURPOSE. LICENSOR DOES NOT WARRANT THAT THE ASSETS
WILL MEET THE REQUIREMENTS OF LICENSEE OR ANY SUBLICENSEE OR THAT THE USE OR
OPERATION OF THE ASSETS WILL BE UNINTERRUPTED OR ERROR FREE. THE ENTIRE RISK AS
TO THE QUALITY AND PERFORMANCE OF THE ASSETS LICENSED BY LICENSOR TO LICENSEE IS
WITH LICENSEE.
7. Infringements. Licensee shall promptly notify Licensor in writing of
any infringement of any patent, contract right, copyright, trademark, trade
secret or other intellectual property right included in the Assets that may come
to Licensee's attention. Licensor shall have the sole right to determine whether
or not any suit shall be instituted or any action shall be taken on account of
any such infringement. Licensee shall cooperate with Licensor in connection with
any such suit or other action.
8. Indemnification. Licensee shall defend, indemnify and hold harmless
Licensor against and in respect of any and all loss, cost, damage, expense or
liability (including reasonable attorneys' fees) resulting from any claim or
threatened claim arising out of Licensee's use of the Assets, including any
claim or threatened claim that such use violates or infringes any patent,
contract right, copyright, trademark, trade secret or other intellectual
property right of any third party, and any and all actions, suits, proceedings,
claims, demands, assessments, judgments, costs, and expenses (includ ing
reasonable attorneys' fees) incident to any of the foregoing.
9. Limitation of Liability. IN NO EVENT SHALL LICENSOR BE LIABLE TO
LICENSEE OR ANY SUBLICENSEE FOR ANY LOST PROFITS, LOST SAVINGS, LOST DATA OR
OTHER INDIRECT, INCIDENTAL, SPECIAL OR CONSEQUENTIAL COSTS OR DAMAGES ARISING
OUT OF OR RELATED TO THIS AGREEMENT.
10. Licensor's Remedies. Licensee acknowledges that its failure to
cease use of or return the Assets to Licensor upon the termination of this
Agreement will result in immediate and irreparable damage to Licensor. Licensee
acknowledges and admits that there is no adequate remedy at law for such failure
to cease use of or return the Assets, and Licensee agrees that, in any such
event, Licensor
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shall be entitled to equitable relief by way of temporary and permanent
injunctions and such further relief as any court with jurisdiction may deem just
and proper.
11. Miscellaneous.
11.01 Assignment and Binding Effect. This Agreement shall
inure to the benefit of and be binding upon Licensor and Licensee and their
respective assigns, successors and legal representatives. This Agreement may not
be assigned or sublicensed by Licensee without the written consent of Licensor.
11.02 Applicable Law. This Agreement shall be construed and
enforced in accordance with the laws of the State of Maryland, without reference
to the principles of conflict or choice of law thereof. Each of Licensor and
Licensee hereby agrees to submit to the exclusive jurisdiction of the federal
and state courts within the State of Maryland in any action or proceeding
arising out of or related to this Agreement, agrees that process may be served
upon it in any manner authorized for those courts and covenants not to assert or
plead any objection which it might otherwise have to such jurisdiction and such
process.
11.03 Other. The headings contained in this Agreement are for
reference purposes only and shall not affect in any way the meaning or
interpretation of any provision of this Agreement. This Agreement may be
executed in two or more counterparts, each of which shall be deemed an original
but all of which together shall constitute one and the same instrument and may
be amended only by a written instrument executed by Licensor and Licensee.
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IN WITNESS WHEREOF, Licensor and Licensee have caused this Agreement to
be executed by their respective, duly authorized officers, as of December 12,
1997.
OPTELECOM, INC.
By /s/ Xxxxxx X. Xxxxxx
---------------------------
Xxxxxx X. Xxxxxx
President
PARAGON AUDIO VISUAL LIMITED
By: /s/ Xxxxx X. Xxxxx
---------------------------
Xxxxx X. Xxxxx
Chairman
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Schedule 1
The Assets
The assets covered by this License are, to the extent of the Licensor's
interest therein, the following assets in so far as they relate to the family of
products known as Video Link:
- The use of the names "Video Link" and "Paragon"
- All customer lists for past, current and potential customers
- All copyrights, formulae, processes, methodologies, designs,
patterns, know-how, formats and similar items
- All functional specification requirements
- All technical documentation, business books and records and other
product-related information
- All contractual arrangements with Studio Systems Electronics,
Hauppauge Computer Works, Inc. and STB Systems Inc. for manufacturing and other
services in connection with the Video Link products, and all other contractual
and other relationships with suppliers of goods or services used in connection
with those products
- The Reuters Master Purchase Agreement, the Reuters Approval, the
Bloomberg Approval and informal approvals of Dow Xxxxx Markets, ICB and others.
- All contractual arrangements with Paragon Audio Visual (Asia) Limited
and Repcom Inc. for distribution and other services in connection with the Video
Link products, and all other contractual and other relationships with customers,
distributors and franchisees relating to the future sale of or provision of
services in connection with those products
