LICENSE AGREEMENT
THIS LICENSE AGREEMENT (this "Agreement") is made and entered into as of
this ____ day of ____________, 1999 by and between (i) DataXchg, Inc., a
Delaware corporation having a business address of ______________________ (the
"Licensor") and (ii) XML-Global Technologies, Inc., a Colorado corporation a
Colorado corporation having a place of business at 0000 Xxxx Xxxxxxxx,
Xxxxxxxxx, Xxxxxxxx 00000 (the "Licensee").
WHEREAS, pursuant to that certain Joint Venture Technology Agreement (the
"JV Technology Agreement") of even date herewith by and among XML-Global
Technologies, Inc. ("XML-Global"), Gnosis Inc. ("Gnosis") and Xxxxx X.X.
Xxxxxx ("Xxxxxx"), Xxxxxx and Gnosis agreed to transfer the Technology (as
defined in the JV Technology Agreement) to Licensor, and Licensee agreed to
transfer to Xxxxxx common stock shares in the Licensor representing sixty
percent (60%) of all outstanding common stock shares of the Licensor on the
Closing Date of the JV Technology Agreement;
WHEREAS, it is a condition of the closing of the JV Technology Agreement
that Licensor and Licensee enter into this Agreement;
WHEREAS, Licensor desires to grant Licensee a license to the Technology;
WHEREAS, Licensee desires a license to the Technology from Licensor;
WHEREAS, Licensor and Licensee wish to set out in writing the terms and
conditions of their agreements and understandings in respect of such license;
and
WHEREAS, capitalized terms used but not otherwise defined herein shall
have the meaning specified in the JV Technology Agreement;
NOW, THEREFORE, in consideration of the foregoing and of the mutual
promises contained herein, the parties hereto, intending to be legally bound,
hereby agree as follows:
1. Definitions. Whenever used in this Agreement, unless the context
clearly requires otherwise, the following words and phrases shall have the
following meaning:
"Improvements" means any improvements, modifications, or
enhancements to the Technology.
"License Fees" means all amounts paid to Licensee pursuant to the
grant of sublicenses by Licensee with respect to sublicensing the right to
make or sell Products.
"Net Sales" means Licensee's gross revenues received from the sale
or license of software, less taxes, royalties payable to other than the
Licensor, shipping charges, quantity trade discounts and returns.
"Products" means any product(s) that is covered by one or more valid
claims in any patent wholly owned by Licensor, any software program(s)
developed or owned by Licensor and implemented using any of the Technology or
any Improvements, or any software products created in collaboration between
the parties.
2. Grant. Licensor hereby grants Licensee a sole, perpetual, world-
wide, exclusive license to make, use and sublicense the Technology and any
Improvements thereto, and to make, use and sell products based on the
Technology and any Improvements thereto (collectively, the "License"). The
parties agree that the Licensee shall have the sole right to make, use, sell
and distribute products created or owned by Licensor or created in
collaboration between the parties.
2.1 Source Code. The parties agree that the Licensor and the
Licensee will not distribute the source code for the "Xchg" and "BizTokens"
software or any jointly developed product, and may only license such source
code with the prior written agreement of both parties.
2.2 Access. Licensee will have full access to the source code for
the "Xchg" and "BizTalk" software, and may subsequently modify, extend,
rewrite and adapt such software as it sees fit for the requirements of the
Licensee's products.
3.1. Licensor Royalty. In consideration of the licenses granted
hereunder, Licensee agrees to pay Licensor a royalty (the "Licensor Royalty")
equal to:
3.1.1 Twenty percent (20%) of the Net Sales earned by Licensee,
for sales comprising a combination of (1) the sale or license of Products and
(2) any of the Licensee's suite of products, including software licensed from
third parties.
3.1.2 Eighty percent (80%) of the Net Sales earned by Licensee,
for sales composed solely of the sale or license of Products,.
3.2. Versions Offered. Only limited evaluation Products may be used for
marketing and promotional purposes. Fully enabled versions of Products will
only be available to customers who have purchased licenses to use such
Products.
4. Sales Taxes. The amounts payable to Licensor and Licensee pursuant
to this Agreement are exclusive of any applicable sales taxes and the payor
(whether Licensor or Licensee) shall be responsible for payment of such taxes.
5. Royalty Payments. The Licensor Royalty and the Licensee Royalty
shall be calculated on a semi-annual calendar basis (the "Royalty Period") and
shall be payable no later than thirty (30) calendar days after the termination
of the preceding half calendar year, i.e. no later than twenty nine (29)
calendar days from the first day of July, and January of each year. For the
purposes of determining Royalty Periods, the first semi-annual calendar period
hereunder shall be an extended period commencing on the date hereof and ending
on July 30, 2000.
6. Licensor's Representations. Licensor covenants, represents and
warrants to Licensee as follows:
6.1 Licensor is a corporation duly organized, validly existing and
in good standing under the laws of the State of Maryland and is authorized to
do business in all jurisdictions where such authorization is necessary.
6.2 Licensor has full corporate power, authority, and legal right
to enter into this Agreement and this Agreement has been duly executed and
delivered by Licensor to Licensee and is a legal, valid and binding obligation
of Licensor, enforceable against Licensor in accordance with its terms.
6.3 Licensor is the sole owner of the Technology and has all legal
and beneficial title to the Technology free and clear of all encumbrances.
6.4 Licensor will use its best efforts to maintain all existing
patents and patent applications that Licensor owns in respect of the
Technology, at no charge to Licensee.
6.5 Licensor will, at the request of Licensee, continue to
undertake research and development to improve the Products and Technology.
6.6 Licensor will work with Licensee to develop the Technology and
will provide Licensee with guidance on technical matters at Licensee's
request.
6.7 Licensor will not assert, against Licensor, any claim that the
use or sublicense of any Technology or any manufacture, use, sale or
sublicense of any products relating to the Technology in accordance with this
Agreement infringes or violates any intellectual property rights of Licensor
now or hereafter existing.
7. Licensee's Representations. Licensee covenants, represents and
warrants to Licensor as follows:
7.1 Licensee is a corporation duly organized, validly existing and
in good standing under the laws of Colorado and is authorized to do business
in all jurisdictions where such authorization is necessary.
7.2 Licensee has full corporate power, authority, and legal right
to enter into this Agreement and this Agreement has been duly executed and
delivered by Licensee to Licensor and is a legal, valid and binding obligation
of Licensee, enforceable against Licensee in accordance with its terms.
7.3 Licensee shall make reasonable efforts to market and sell
Products based on the Technology and made available by Licensor.
8. Patent Protection. Licensor retains ownership over the Technology
licensed hereunder and the ability to file additional patent applications and
copyright applications in its developments, which shall form part of the
License. Licensor will, at the Licensee's written request, use its best
efforts to apply for and obtain registered patent and/or copyright protection
for the Technology and/or any Improvements thereto developed or owned by
Licensor. Where Licensee provides a written request that Licensor obtain such
protection or a written request that Licensee participate in such patent
and/or copyright protection, Licensee will pay for the cost of such efforts,
and may obtain reimbursement from Licensor for up to half of such costs.
Licensor hereby grants to Licensee a sole, perpetual, world-wide, exclusive
license to use the Improvements developed or owned by Licensor, to make, use
and sell products based on the Improvements and to sublicense same.
8.1 Developments by the Parties. Any developments that the parties
jointly develop will be jointly owned and subject to the royalty provisions of
Section 3.1 and 3.2. Each party must notify the other party of any intentions
to file any patent applications or copyright applications on such joint
developments at least thirty calendar days before making such filings, and
provide the other party with the opportunity to participate and benefit
equally in the rights sought in such applications and registrations and
patents issuing therefrom.
9. Confidentiality. Each party hereby acknowledges that trade secrets
and confidential information contained herein or obtained hereby or otherwise
disclosed to the other party have been disclosed or made available in the
strictest confidence and, accordingly, each party hereby covenants and agrees
with the other that they will not disclose or use such information except in
order to fulfill the terms of this Agreement. This Section 9 shall survive
for three (3) years following any termination of this Agreement.
10. Term and Termination. This Agreement shall continue until
terminated in accordance with this Section 10. Either party may terminate
this Agreement with written notice of termination if the other party is in
breach of any covenant hereunder on its part and such other party fails to
cure the breach within sixty (60) days of receiving written notice to cure
such breach. Termination under this Section shall be effective from the date
written notice is delivered to such other party or the date specified in the
written notice of termination, whichever is later. Neither party shall be
liable to the other for damages of any sort resulting solely from such party
terminating this Agreement in accordance with its terms.
11. Notices. Any notice required or permitted to be given under this
Agreement shall be made in writing and shall be deemed to have been given if
it is in writing and is delivered in person, sent by same day or overnight
courier, or mailed by certified or registered mail, return receipt requested,
postage prepaid, addressed to the party at its address set forth first above
or at such other address as such party may subsequently furnish to the other
party by notice hereunder. Notices will be deemed effective on the date of
delivery in the case of personal delivery, or two (2) business days after
mailing or courier pickup.
12. Governing Law. This Agreement shall be construed, enforced,
performed and in all respects governed by and in accordance with the laws of
Delaware. The parties hereto submit and attorn to the exclusive jurisdiction
of the courts of the Delaware.
13. Waiver. No waiver by any party of any term or condition of this
Agreement or any breach thereof shall be made effective unless made in writing
and signed by the party purporting to give the waiver. No waiver by any party
of any term or condition of this Agreement, in any one or more instances,
shall be deemed to be or construed as a waiver of the same or any other term
or condition of this Agreement on any future occasion.
14. Severability. Any provision of this Agreement which is prohibited
or unenforceable shall be deemed automatically amended so that it is
enforceable to the maximum extent permissible under the laws of that
jurisdiction without invalidating the remaining provisions hereof.
15. Specific Enforcement. Each party acknowledges that money damages
would be inadequate for any breach of the provisions of this Agreement. Upon
a breach or threatened breach of the terms, covenants or conditions of this
Agreement by any of the parties hereto, the other parties shall, in addition
to all other remedies, be entitled to a temporary or permanent injunction,
without showing any actual damage, or a decree for specific performance, in
accordance with the provisions hereof.
16. Arbitration. Any unresolved dispute arising out of or in connection
with this Agreement or any breach thereof shall be referred to and finally
resolved by arbitration under the rules of the American Arbitration
Association ("AAA") then in effect. Unless the parties otherwise agree in
writing, all arbitration proceedings hereunder shall be conducted by a three
(3) person arbitration panel, with one arbitrator selected by Xxxxxx, one
arbitrator selected by XML-Global and a third arbitrator selected the by the
two arbitrators selected by Xxxxxx and XML-Global. If XML-Global or Xxxxxx
fails to appoint its arbitrator within sixty (60) days after receipt of notice
of the appointment by the other of its arbitrator, or if the arbitrators fail
to appoint a third, then the third arbitrator shall be appointed by the AAA.
All arbitrators shall be neutral, independent, disinterested, unbiased
arbitrators, bound by the Rules of Ethics of the ABA or AAA for neutral
arbitrators, and none shall have ex parte communications with parties. Each
arbitration shall be conducted at a location selected by the arbitrators or,
if no location can be agreed to by the arbitrators, at a location selected by
the AAA. In each arbitration: (a) on any issue where the relevant information
is in the possession of one party and another party has the burden of proof,
the party having the information shall yield such discovery as is appropriate
to ensure a fair determination of the issue; (b) oral discovery depositions,
interrogatories and requests for admissions, as well as examinations of
witnesses by the parties and the arbitrators shall be permitted; (c) a written
transcript of all hearings shall be made and furnished to the parties at a
cost borne equally amongst the parties; (d) evidence, arguments and
submissions shall be held in confidence by the parties, their counsel and the
arbitrators; and (e) the parties agree that exclusion of evidence by the
arbitrators on the grounds of irrelevance, redundance, or prejudice beyond its
probative value shall not be grounds of failure to confirm and enforce an
award arising from such arbitration. The arbitrators shall not have the
authority to add to, detract from, or modify any provision hereof nor to award
punitive damages to any injured party. A decision by a majority of the
arbitration panel shall be final and binding. It is agreed by the parties
that the arbitrators shall render an award in any arbitration within sixty
(60) days of the close of evidence or any post-evidence briefing argument.
The language of any arbitration shall be English. The prevailing party in any
arbitration or legal action arising out of or related to this Agreement shall
be entitled, in addition to any other rights and remedies it may have, to
reimbursement for its expenses incurred in such arbitration or action,
including court costs and reasonable lawyer's fees. Judgment may be entered
on the arbitrators' award in any court having jurisdiction. Notwithstanding
the foregoing, the parties shall be entitled to seek injunctive or other
equitable relief from any court of competent jurisdiction, without the need to
resort to arbitration.
17. Further Assurances. Each of the parties shall execute all further
documents and instruments and do all further and other things as may be
necessary to implement and carry out the terms of this Agreement.
18. Successors and Assigns. This Agreement shall inure to the benefit
of and be binding upon the parties and their respective successors and
permitted assigns. Neither party may assign its interests hereunder without
the prior written consent of the other party.
19. Independent Parties. The relationship between the parties is that of
independent contractors.
20. Headings and Plurals. The headings herein have been inserted as a
matter of convenience only and in no way define, limit or enlarge the scope or
meaning of this Agreement or any of its provisions. Unless the context
clearly indicates otherwise, where appropriate the singular shall include the
plural and vice versa, to the extent necessary to give the terms defined
herein and/or the terms otherwise used in this Agreement their proper
meanings.
21. Facsimile Transmission. The parties agree that this Agreement may
be entered into by a party by means of facsimile transmission and, in such an
event, the same shall constitute a legal and binding obligation in the same
manner as if an originally executed version hereof had been delivered by such
party to the other party.
22. Entire Agreement. This Agreement and those documents expressly
referred to herein embody the entire agreement and understanding between the
parties concerning the subject matter hereof and supersede all prior
understandings, communications and agreements between the parties, written or
oral, with respect to the subject matter hereof, and all past courses of
dealing or industry custom. This Agreement may only be amended, supplemented
or modified in a written instrument duly executed by or on behalf of each
party hereto. Time is of the essence in this Agreement and for each and every
term and condition hereof.
IN WITNESS WHEREOF, the parties have caused this Agreement to be duly
executed.
DATAXCHG, INC., XML-GLOBAL TECHNOLOGIES, INC.,
a Delaware corporation a Colorado corporation
By: By:
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(Authorized Signatory) (Authorized Signatory)
Name: Name:
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Title: Title:
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Date: Date:
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