EXHIBIT 10.8
INTELLECTUAL PROPERTY LICENSE AGREEMENT
THIS AGREEMENT, made this 4th day of November 1999, by and between SQL
ACQUISITION LLC, a Delaware limited liability company ("SQLALLC"), and ASA
INTERNATIONAL LTD., a Delaware corporation ("ASA").
W I T N E S S E T H:
WHEREAS, ASA, Design Data Systems Corporation ("DDS") and certain
other parties are parties to an Asset Purchase Agreement dated of even date
herewith (the "Acquisition Agreement") pursuant to which ASA has agreed to
acquire certain assets and assumed certain liabilities associated with the
Business (as defined in the Acquisition Agreement) previously conducted by DDS;
and
WHEREAS, ASA has assigned to SQLALLC its rights under the Acquisition
Agreement to acquire certain intellectual property owned by DDS and used in the
conduct of the Business; and
WHEREAS, SQLALLC Fidelity National 1031 Exchange Services, Inc.,
Pacific American Property Exchange Corporation and ASA are parties to an Asset
Acquisition and Exchange Agreement dated of even date herewith (the "Exchange
Agreement); and
WHEREAS, during the term of the Exchange Agreement, SQLALLC and ASA
desire that ASA conduct the Business; and
WHEREAS, to facilitate the conduct of the Business by ASA during the
term of the Exchange Agreement, SQLALLC and ASA desire to enter into this
License Agreement in which SQLALLC grants to ASA a license for the use of
SQLALLC's Intellectual Property (as hereinafter defined);
NOW, THEREFORE, in consideration of the premises and mutual promises
contained in this Agreement, IT IS AGREED:
1. INTELLECTUAL PROPERTY. "Intellectual Property" shall mean
all right, title and interest of SQLALLC in and to (a) the software previously
designed, developed, maintained, implemented, supported, licensed or sold by DDS
commonly referred to as "SQL*TIME" ("SQL*TIME"), including all released and
unreleased source code and object code versions thereof and all related
documentation and development notes (the "Software"), and (b) all other
intellectual property of DDS specifically related to the Software, including
databases, market information, research and development, patents, patent
applications, copyrights, copyright registration applications, trademarks and
service marks and related applications, trade names, trade secrets, proprietary
information, technology rights and licenses, proprietary rights and processes,
know-how, research and development in progress, and any and all other
intellectual property including, without limitation, all things authored,
discovered, developed, made, perfected, improved, designed, engineered, devised,
acquired, produced, conceived or first reduced to practice by DDS, or that are
relevant to an understanding or to the development of the Software or to the
performance by the Software of its intended functions or purposes, whether
tangible or intangible, in any stage of development, including without
limitation enhancements, designs, technology, improvements, inventions, works of
authorship, formulas, processes, routines, subroutines, techniques, concepts,
object code, flow charts, diagrams, coding sheets, source code, listings and
annotations, programmers' notes, information, work papers, work product and
other materials of any types whatsoever, and all rights of any kind in or to any
of the foregoing (collectively, with the Software, "Intellectual Property", and
being the same Intellectual Property acquired by SQLALLC from DDS on this date).
2. GRANT OF LICENSE. SQLALLC hereby grants to ASA and ASA
hereby accepts upon the terms and conditions hereinafter set forth, an
exclusive, royalty-free, worldwide right and license (the "License"), under all
of SQLALLC's rights in and to the Intellectual Property, (a) to use, reproduce,
distribute, publicly perform, display and sell the Intellectual Property, and
(b) to make, have made, use, sell, offer for sale and import any product and
practice any process, subject, however, to the terms and provisions of this
Agreement. The License hereunder includes the right to grant sublicenses. During
the term of the License, SQLALLC shall not use or grant to any other party the
right to use the Intellectual Property for any purpose and SQLALLC shall keep
confidential all of the information contained in the Intellectual Property. Upon
the execution of this Agreement, SQLALLC shall provide ASA with a copy of all
source code for the Software.
3. TERM. The term of this Agreement shall commence on the
date of the execution of this Agreement and shall continue until November 3,
2000, unless this Agreement is terminated pursuant to Section 7.
4. LICENSE FEE. Upon execution of this Agreement, ASA shall
pay SQLALLC a non-refundable license fee for use of the Intellectual Property
during the term of this Agreement in the amount of Two Hundred Eighty Five
Thousand Dollars ($285,000).
5. OWNERSHIP. During the term of this Agreement, all
Intellectual Property shall remain the property of SQLALLC.
6. PROTECTION OF THE INTELLECTUAL PROPERTY. Subject to
Section 2, the parties agree that, during the term of this Agreement, each shall
take all such steps as may be necessary or reasonable to safeguard the
confidentiality of the Intellectual Property and shall not disclose any of the
foregoing to any third party, except for purposes consistent with this
Agreement.
7. TERMINATION. This Agreement, and the License granted
hereby, will terminate upon the earlier of (i) November 4, 2000 or (ii) the date
on which that certain promissory note of even date herewith in the original
principal amount of $4,000,000 from SQLALLC to ASA is paid in full.
8. WARRANTY. SQLALLC represents and warrants to ASA that at
all times during the term of this Agreement (a) SQLALLC has the full right,
power and authority to enter into this Agreement and fully perform its
obligations hereunder, and (b) SQLALLC owns exclusively all right, title and
interest in and to the Intellectual Property.
9. ASSIGNMENT. Neither this Agreement nor any interest
herein may be assigned, in whole or in part, by either party without the prior
written consent of the other party.
10. WAIVER. The failure of either party to insist, in any
one or more instances, upon performance of the terms or conditions of this
Agreement shall not be construed as a waiver or a relinquishment of any right
granted hereunder or of the future performance of any such term, covenant or
condition.
11. NOTICES. Any notice to be given hereunder shall be
deemed sufficient if in writing and delivered in accordance with the notice
provisions of the Exchange Agreement.
12. SEVERABILITY. In the event that any provisions shall be
held to be invalid or unenforceable for any reason whatsoever, it is agreed that
such invalidity or unenforceability shall not affect any other provision of this
Agreement and the remaining covenants, restrictions and provisions hereof shall
remain in full force and effect and that any court of competent jurisdiction may
so modify the objectionable provisions as to make it valid, reasonable and
enforceable.
13. ENTIRE AGREEMENT. This Agreement constitutes the entire
agreement between the parties hereto and supersede all prior agreements,
understandings and arrangements, oral or written, between the parties with
respect to the subject matter hereof.
14. GOVERNING LAW. This Agreement shall be governed by and
construed in accordance with the laws of the State of Delaware.
15. HEADINGS. The headings of this Agreement are intended
solely for convenience of reference and shall be given no effect in the
construction or interpretation of this Agreement.
16. RELATIONSHIP. Nothing in this Agreement is intended to
or shall (i) establish any agency, partnership or joint venture relationship
between the parties hereto; or (ii) except as otherwise specifically provided,
confer on any person other than the parties, or their authorized assigns, any
rights, remedies, obligations or liabilities under or by reason of this
Agreement.
17. DISPUTE RESOLUTION. Any dispute between the parties
arising out of or related to this Agreement shall be settled in accordance with
the provisions of the Exchange Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this
Agreement to be executed by their duly authorized officers or representatives.
SQL ACQUISITION LLC
By: /S/ E. XXXX XXXXX, PRESIDENT
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ASA INTERNATIONAL LTD.
By: /S/ XXXXXX X. XXXXXXXX, CEO
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