U.S. INTELLECTUAL PROPERTY LICENSE AGREEMENT
This Agreement is made and effective this 17th day of October, 2000, by
and between MicroStrategy Incorporated, a corporation organized and existing
under the laws of Delaware, having its office located at 0000 Xxxxxx Xxxxxxxx
Xxxxx, Xxxxxx, XX 00000 ("Licensor" or "MSTR"), and Xxxxxxxx.xxx
Incorporated, a corporation organized and existing under the laws of
Delaware, having its principal place of business located at 0000
Xxxxxxxxxxxxx Xxxxx, Xxxxxx, XX 00000 ("Licensee" or "SDC").
WITNESSETH:
WHEREAS, MSTR and certain of its subsidiaries desire to realign their
worldwide corporate structure in accordance with their separate lines of
business, the "Xxxxxxxx.xxx Business" and the "MicroStrategy Business"; and
WHEREAS, the entities now enter into various agreements and make
certain mutual promises as described in the "Agreement and Plan of
Reorganization" by and among MicroStrategy Incorporated, MicroStrategy
International Limited, MicroStrategy International II Limited, Xxxxxxxx.xxx
Incorporated, and Xxxxxxxx.xxx International Limited dated October 17, 2000
to effectuate this realignment and reorganization; and
WHEREAS, Licensor is the owner of all right, title and interest in and
to certain pending patent applications in the United States as set forth in
Schedule A hereto (the "Licensed Inventions") and is the owner of all right,
title and interest in and to copyrights and trade secret and other
intellectual property rights in the United States as set forth in Schedule B
hereto (the "Licensed Technology"); and
WHEREAS, Licensor is willing to supply Licensee with certain
information with respect to the Licensed Technology and to grant Licensee a
perpetual non-exclusive, nontransferable, royalty-free license to use,
manufacture, distribute, sell and offer to sell products and services
utilizing the Licensed Technology and the Licensed Inventions in the United
States and to use the technical and engineering information supplied by the
Licensor in the manufacture, use and sale of products and/or services in the
United States subject to the terms and conditions set forth herein; and
WHEREAS, Licensee desires to secure and use such Licensed Technology,
Licensed Inventions and technical and engineering services and information
and to secure such rights and license under Licensor's intellectual property
and trade secret rights, including all of the patents which mature from the
aforesaid pending patent applications in the United States;
NOW, THEREFORE, in consideration of the premises set forth above and
the covenants set forth below, and other valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, the parties agree as
follows:
1
1. LICENSE.
1.1 License.
(a) Licensor hereby grants to Licensee a perpetual,
royalty-free, non-exclusive non-transferable license to manufacture, have
manufactured, distribute, use, lease, sell and offer to sell products and/or
services utilizing the Licensed Technology and the Licensed Inventions and to
use any changes, developments or improvements to the Licensed Inventions and
patents licensed hereunder in the United States. To the extent, however,
that any of the MicroStrategy Platform as defined in the U.S. Software
License Agreement falls within the scope of the Licensed Technology and/or
Licensed Inventions hereunder and, to the extent there is any conflict
between the provisions of this Intellectual Property License Agreement and
the U.S. Software License Agreement executed concurrently herewith with
respect to such MicroStrategy Platform, the terms of the U.S. Software
License Agreement shall govern.
(b) No grant or right is conveyed to Licensee by this
Agreement to sublicense the manufacture, distribution, use, lease and/or sale
of the Licensed Technology and the Licensed Inventions under the license
granted under this Article without the express written consent of Licensor,
other than and solely to the extent that such Licensed Technology and the
Licensed Inventions are incorporated by Licensee in the delivery of services
by Licensee to its customers.
(c) Licensee acknowledges and agrees that all right,
title and interest in the Licensed Technology and the Licensed Inventions are
and shall remain the property of Licensor. No license, grant, immunity or
other right is granted by implication or otherwise with respect to any patent
or patent application other than those patents resulting from the pending
applications set forth in Schedule A, or any continuations, divisionals or
reissues relating to those pending applications.
(d) All title and ownership in and to all changes,
developments or improvements by the Licensee in the Licensed Inventions
and/or the Licensed Technology shall be the property of the Licensor to the
extent that Licensor incorporates such changes, developments or improvements
into the MicroStrategy Platform. If Licensor does not so incorporate such
changes, developments and/or improvements into the MicroStrategy Platform,
then all title and ownership in and to such changes, developments or
improvements shall vest in Licensee, provided, however, that as to any such
changes, developments or improvements by the Licensee, Licensee hereby grants
to Licensor a perpetual, royalty-free, nonexclusive, nontransferable license
to manufacture, have manufactured, distribute, use, lease, sell and offer to
sell products and/or services utilizing such changes, developments or
improvements to the Licensed Inventions or the Licensed Technology in the
United States, provided, however, that Licensor shall not make any
distribute, use, lease, sell, license or sublicense such changes,
developments or improvements in a manner that xxxxx the competitive interests
of Licensee.
(e) Notwithstanding any provisions to the contrary
contained in this Agreement and for the avoidance of doubt, SDC shall have
the right to use and/or sublicense the
2
Licensed Inventions and Licensed Technology solely for the purpose of
licensing or offering the Services as defined in the U.S. Software Licensing
agreement to a third party that relicenses the Services for example an OEM
relationship.
(f) Licensee agrees that it will not reveal, disclose or
make any Confidential Information of Licensor available to any person without
the prior written consent of the Licensor. Licensee further agrees to
safeguard and protect the Licensor's Confidential Information in a manner at
least consistent with the protections Licensee uses to protect its own
Confidential Information. The Confidential Information shall include the
software, documentation and technical specifications relating to the Licensed
Inventions as well as the contents of the pending patent applications at
least until such time as such pending patent applications are published or
are issued as patents by a patent regulatory agency.
2. MARKING.
2.1. In the event that a U.S. patent issues for any of the
Licensed Inventions, Licensee agrees to affix to each product a legible
notice reading: "Licensed under U.S. Patent No. _______________" followed by
the number of the issued patent licensed hereunder. Until such patent issues
(or is finally rejected), Licensee shall place an appropriate notice
regarding such pendency on each product.
3. ASSIGNMENT.
3.1 Assignment. Licensee shall not assign or transfer this
Agreement, in whole or in part, without the written consent of Licensor, such
consent not to be unreasonably withheld or delayed; provided, however, that
Licensee may assign or transfer this Agreement to any affiliate without
Licensor's consent, provided that any such contemplated assignment by
Licensee shall be permitted under the Patent License. For purposes of this
Section, "affiliate" shall mean an entity which by voting power controls, is
controlled by or is under common control with said party. Licensor shall
have the right to assign or transfer this Agreement to a third party without
the approval of Licensee provided such assignment or transfer is permitted
under the Patent License.
4. TERM OF THE LICENSE.
4.1 The license granted herein under any patent shall continue for
the entire term of such patent or for as much of such term as the Licensor
has the right to grant. The license granted to any non-patented Licensed
Technology shall be perpetual.
5. DEFAULT AND EARLY TERMINATION.
5.1 Default by Either Party. Either party may terminate this Agreement on
thirty (30) days' prior written notice, if one or more of the following events
shall occur:
5.1.1 If either party becomes insolvent or if its
business is placed in the hands of a trustee, custodian, or receiver, whether
by voluntary act or otherwise.
3
5.1.2 If any bankruptcy, reorganization, debt arrangement,
or other proceeding or case under any bankruptcy or insolvency law, or any
dissolution or liquidation proceeding is instituted by or against either
party.
5.1.3 The notice of termination shall specify the reason
for termination and a termination date. Such termination shall become
effective on the date of termination set forth in the notice of termination
but in no event earlier than thirty (30) days from the date of mailing
thereof. This Agreement may be terminated by mutual agreement of both
parties.
5.2. Licensor. If Licensee shall default in any of its obligations under
this Agreement and such default shall continue uncured for a period of thirty
(30) days from the date of written notice thereof by Licensor to Licensee. Upon
termination of this Agreement pursuant to this provision, Licensee shall
immediately cease all making, having made, use, lease and/or sale of the
products and/or services utilizing the Licensed Technology and/or Licensed
Inventions and shall promptly return to Licensor all copies of software,
documentation, technical specifications and other Confidential Information of
the Licensor.
5.3 Licensee. Licensee may terminate this Agreement on thirty (30) days'
prior written notice in the event Licensor defaults in any of its obligations
hereunder and such default shall continue uncured for a period of thirty (30)
days from the date of written notice thereof by Licensee to Licensor; provided,
however, that if Licensor has taken steps to effect a cure during such period,
Licensor shall be granted reasonable additional time to complete such cure. In
the event of such default and the termination of this Agreement, Licensee shall
have any and all remedies available at law or in equity. If Licensor defaults in
any of its obligations hereunder and such default continues uncured for such
thirty (30) day period set forth above, and Licensee does not elect to terminate
the Agreement, Licensee may pursue whatever remedies it chooses at law or
equity.
6. WARRANTIES
6.1 IP Rights Ownership. MSTR warrants that it owns, free and clear of all
liens or encumbrances, or has valid licenses in the IP Rights contained in
Schedules A and B that it has full legal right to grant to SDC the licenses
contained herein.
6.2. No Additional Warranties. MSTR offers no warranties other than those
specifically set in this Section and to the extent permitted by law specifically
disclaim all others, including merchantability and fitness
for a particular purpose.
7. INDEMNIFICATION
7.1 Indemnification of SDC. MSTR shall defend and indemnify SDC against and
hold SDC harmless from any and all claims that the IP Rights contained in
Schedule A and B infringes a United States patent or copyright of a third party
provided that SDC: (i) promptly notifies MSTR in writing of any such claim; (ii)
allows MSTR to have sole control of the defense and all related settlement
negotiations; and (iii) provides MSTR with the
4
information, authority and assistance necessary to perform MSTR obligations
under this Section.
7.2 Excluded Claims. Notwithstanding Section 7.1 above, MSTR shall not be
liable to SDC for any claim arising from or based upon the combination,
operation or use of the IP Rights contained in Schedule A and B with equipment,
data or programming not supplied by MSTR (including the SDC software and
services) or for other than an intended purpose as set forth in the User
Documentation, or arising from any alteration or modification of the
MicroStrategy Platform product, if the claim would not have arisen without such
alteration or modification.
7.3 Indemnification of MSTR. SDC shall defend and indemnify MSTR (including
paying all reasonable attorneys' fees and costs of litigation) against and hold
MSTR harmless from any and all claims by any other party resulting from SDC's
negligent or tortious acts, omissions or misrepresentations relating to the
marketing, sublicensing, distribution, demonstration, evaluation or use of the
IP Rights contained in Schedule A and B, regardless of the form of action
provided that MSTR: (i) promptly notifies SDC in writing of any such claim; (ii)
allows SDC to have sole control of the defense and all related settlement
negotiations; and (iii) provides SDC with the information, authority and
assistance necessary to perform SDC's obligations under this Section.
8. LEGAL PROCEEDINGS.
8.1 Notice. Each of Licensee and Licensor shall promptly notify the other
of any claim, demand or suit based upon or arising from the manufacture,
distribution, use or sale of the products and/or services utilizing the Licensed
Technology and/or Licensed Inventions or any colorable imitation thereof, or of
any attempt by any other person, firm or corporation to manufacture, distribute,
use or sell the products and/or services utilizing the Licensed Technology
and/or Licensed Inventions or any colorable imitation thereof. Should legal
action against a third party be deemed necessary by either party for the
protection of their respective interests under this Agreement, the parties each
agree to cooperate by rendering the other party all possible mutual support and
assistance.
9. LICENSE INVALIDITY.
9.1 Invalidity. Should any part of this Agreement for any reason be
declared invalid, such declaration shall not affect the validity of any
remaining portions, which remaining portions shall remain in full force and
effect as if this Agreement had been executed with the invalid part eliminated.
10. MISCELLANEOUS.
10.1 Notices. All notices, approvals, and other communications hereunder
shall be in writing and shall be hand delivered or sent by telegram, telex
(followed by overnight delivery), or overnight courier services (next day
delivery) or by registered or certified mail, return receipt requested, and
shall be directed to the parties as follows:
5
If to Licensor: MicroStrategy Incorporated
0000 Xxxxxx Xxxxxxxx Xxxxx
Xxxxxx, XX 00000
Attn: General Counsel
If to Licensee: Xxxxxxxx.xxx Incorporated
0000 Xxxxxx Xxxxxxxx Xxxxx
Xxxxxx, XX 00000
Attn: President
or at such other address as may be furnished in writing by either party for
such purpose.
10.2 Entire Agreement. This Agreement embodies the entire understanding and
agreement of the parties with respect to the subject matter hereof and may not
be altered, amended or otherwise modified except by an instrument in writing and
signed on behalf of each of the parties by their respective duly authorized
officers. The parties further acknowledge that there have been no
representations, covenants, or understandings except those that are expressly
set forth in this Agreement.
10.3 Binding Effect. This Agreement shall be binding on and shall inure to
the benefit of the parties hereto and their respective successors and assigns;
provided, however, that this Agreement shall not be assignable by Licensee
without the prior written consent of Licensor, not to be unreasonably withheld
or delayed.
10.4 Governing Law. This Agreement shall be governed and interpreted in
accordance with the laws of the Commonwealth of Virginia, United States of
America and for all purposes shall be interpreted in its entirety in accordance
with the laws of said Commonwealth. In the event this Agreement is translated
into any language other than the English language for any purpose, the parties
agree that the English version shall be the governing version.
10.5 Survival. Sections 1.1(f) and 5.2 shall survive the termination of
this Agreement.
10.6 Headings. The headings in this Agreement are for convenience of
reference only and shall not have any substantive effect.
10.7 Waiver. The waiver by either party of the breach of any term or
condition of this Agreement by the other shall not constitute a waiver of a
subsequent breach thereof or nullify the effectiveness of that term or
condition.
10.8 Severability of Provisions. Both parties expressly agree that it is
not the intention of either party to violate statutory or common law and that if
any section, sentence, paragraph, clause or combination of same is in violation
of any law, such sections, sentences,
6
paragraphs, clauses or combination of same shall be inoperative and the
remainder of this Agreement shall remain binding upon the parties.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed as of the day and year first written above.
LICENSOR
MICROSTRATEGY INCORPORATED
By: Xxxx X. Xxxxx
Its: CFO
Date: 10/17/2000
LICENSEE
XXXXXXXX.XXX INCORPORATED
By: Xxxx X. Xxxxx
Its: CFO
Date: 10/17/2000
7
