Intellectual Property and Software. (a) Schedule 4.16 correctly identifies (where applicable, by owner, place of registration, registration or application number and registration or application dates) all issued domestic and foreign patents, patent applications pending, patent applications in process, trademarks, trademark registrations, trademark registration applications, service marks, service ▇▇▇▇ registrations, service ▇▇▇▇ registration applications, copyright registrations, copyright registration applications, license agreements, rights acquired through litigation, logos, trade names, slogans owned by MMI and all books and training manuals published or printed by or on behalf of MMI and which are presently used in the business of MMI, and are material to the operation of MMI (the foregoing, along with know-how and trade secrets owned by MMI which are material to the operation of MMI are hereinafter collectively referred to as the "Intellectual Property"). Schedule 4.16 correctly identifies all issued patents, patent applications pending, patent applications in process, trademarks, trademark registrations, trademark registration applications, service marks, service ▇▇▇▇ registrations, service ▇▇▇▇ registration applications, copyright registration applications, licenses, rights acquired through litigation, logos, trade names, slogans, know-how and trade secrets other than Software (as defined in Section 4.16(g) below) that are currently expressly licensed to or by MMI and are material to the operation of MMI ("Licensed Intellectual Property"). Except for any implied licenses, neither Sellers nor MMI has granted any license to any person with respect to any Intellectual Property or Licensed Intellectual Property, except those set forth in Schedule 4.16. Except as set forth in Schedule 4.16, the agreements and/or arrangements for the Licensed Intellectual Property are in full force and effect, and are free and clear of all adverse claims, options, liens, charges, security interests, covenants, conditions, agreements, restrictions, encumbrances and defenses and no material default by MMI exists thereunder. (b) Intellectual Property consisting of issued trademarks ("Trademarks") are valid and subsisting and there are no challenges pending or, to the knowledge of Sellers, threatened, to the validity of any Trademarks. (c) Except as disclosed on Schedule 4.16, MMI is not a party to any license or agreement relating to any unpatented inventions, discoveries, specifications, data, processes, formulae, trade secrets, proprietary technical information or know-how used by MMI with respect to its business (hereinafter collectively "Know-How"). Except as disclosed on Schedule 4.16, MMI owns and is legally entitled to exploit the Know-How as used in the business as currently conducted without restrictions and free of any adverse claim or claim of infringement. (d) There are no interference, opposition or cancellation proceedings or infringement suits pending or, to the knowledge of Sellers, threatened, with respect to any Intellectual Property or Licensed Intellectual Property, except to the extent disclosed in Schedule 4.16 hereto. To Sellers' knowledge, no other person is infringing any Intellectual Property, Licensed Intellectual Property, or Know-How currently owned by or licensed to MMI, except as disclosed in Schedule 4.16 hereto, and MMI is not infringing, nor within the last five (5) years has MMI infringed or been charged with infringing, any patent or trademark right of any person, or the rights of any person with respect to Know-How, except to the extent disclosed in Schedule 4.16 hereto. (e) The Intellectual Property, Licensed Intellectual Property and Know-How comprise all of the intellectual property rights owned or expressly licensed to MMI and pertaining to the conduct of its business as now operated, or as presently planned to be operated, and there are no limitations or restrictions and no conflict or asserted conflict with intellectual property rights of others. (f) Except as set forth on Schedule 4.16 hereto, all of the computer software used by or for MMI in the conduct of its business (the "Software") is either (i) owned by MMI free and clear of any and all liens, claims, equities, security interests and encumbrances whatsoever, or (ii) used by MMI pursuant to a fully-paid license granted to MMI by the third party pursuant to the terms of such license. Except as set forth on Schedule 4.16, no such computer software license shall terminate or become terminable as a result of the transaction contemplated herein. There are no infringement suits pending or, to the knowledge of Sellers or MMI, threatened, against MMI with respect to any of the Software, and, to the knowledge of Sellers, no fact or condition exists which could give rise to any such infringement suit.
Appears in 2 contracts
Sources: Purchase and Sale Agreement (Prism Financial Corp), Purchase and Sale Agreement (Prism Financial Corp)
Intellectual Property and Software. (a) Schedule 4.16 correctly identifies (where applicable, by owner, place of registration, registration or application number and registration or application dates) all issued domestic and foreign patents, patent applications pending, patent applications in process, trademarks, trademark registrations, trademark registration applications, service marks, service ▇▇▇▇ registrations, service ▇▇▇▇ registration applications, copyright registrations, copyright registration applications, license agreements, rights acquired through litigation, logos, trade names, slogans owned by MMI and all books and training manuals published PGM or printed by or on behalf of MMI any PGM Joint Venture and which are presently used in the business of MMIPGM or such PGM Joint Venture, and are material to the operation of MMI PGM (the foregoing, along with know-how and trade secrets owned by MMI PGM or by any PGM Joint Venture which are material to the operation of MMI PGM or any PGM Joint Venture are hereinafter collectively referred to as the "Intellectual Property"). Schedule 4.16 correctly identifies all issued patents, patent applications pending, patent applications in process, trademarks, trademark registrations, trademark registration applications, service marks, service ▇▇▇▇ registrations, service ▇▇▇▇ registration applications, copyright registration applications, licenses, rights acquired through litigation, logos, trade names, slogans, know-how and trade secrets other than Software (as defined in Section 4.16(g) below) that are currently expressly licensed to or by MMI PGM or to or by any PGM Joint Venture and are material to the operation of MMI PGM or any PGM Joint Venture ("Licensed Intellectual Property"). Except for any implied licenseslicenses and those licenses granted in the Branch Operators Agreements or in the Joint Venture Agreements, neither Sellers nor MMI PGM has granted any license to any person with respect to any Intellectual Property or Licensed Intellectual Property, except those set forth in Schedule 4.16. Except as set forth in Schedule 4.16, the agreements and/or arrangements for the Licensed Intellectual Property are in full force and effect, and are free and clear of all adverse claims, options, liens, charges, security interests, covenants, conditions, agreements, restrictions, encumbrances and defenses other than Permitted Encumbrances, and no material default by MMI PGM or by any PGM Joint Venture exists thereunder.
(b) Neither PGM nor any PGM Joint Venture has any registered or registerable patents with respect to its products, services, and business.
(c) Intellectual Property consisting of issued trademarks ("Trademarks") are valid and subsisting and there are no challenges pending or, to the knowledge of Sellers, PGM or any PGM Joint Venture, threatened, to the validity of any Trademarks.
(cd) Except as disclosed on Schedule 4.16, MMI neither PGM nor any PGM Joint Venture is not a party to any license or agreement relating to any unpatented inventions, discoveries, specifications, data, processes, formulae, trade secrets, proprietary technical information or know-how used by MMI PGM with respect to its business (hereinafter collectively "Know-How"). Except as disclosed on Schedule 4.16, MMI PGM owns and is legally entitled to exploit the Know-How as used in the business as currently conducted without restrictions and free of any adverse claim or claim of infringement.
(de) There are no interference, opposition or cancellation proceedings or infringement suits pending or, to the knowledge of Sellers', PGM's or any PGM Joint Venture's knowledge, threatened, with respect to any Intellectual Property or Licensed Intellectual Property, except to the extent disclosed in Schedule 4.16 hereto. To Sellers' or PGM's knowledge, no other person is infringing any Intellectual Property, Licensed Intellectual Property, or Know-How currently owned by or licensed to MMIPGM or any PGM Joint Venture, except as disclosed in Schedule 4.16 hereto, and MMI neither PGM nor any PGM Joint Venture is not infringing, nor within the last five (5) years has MMI PGM infringed or been charged with infringing, any patent or trademark right of any person, or the rights of any person with respect to Know-How, except to the extent disclosed in Schedule 4.16 hereto.
(ef) The Intellectual Property, Licensed Intellectual Property and Know-How comprise all of the intellectual property rights owned or expressly licensed to MMI PGM or to any PGM Joint Venture and pertaining to the conduct of its business as now operated, or as presently planned to be operated, and there are no limitations or restrictions and no conflict or asserted conflict with intellectual property rights of others.
(fg) Except as set forth on Schedule 4.16 hereto, all of the computer software used by or for MMI PGM or by or for any PGM Joint Venture in the conduct of its business (the "Software") is either (i) owned by MMI PGM or such PGM Joint Venture, as applicable, free and clear of any and all liens, claims, equities, security interests and encumbrances whatsoeverwhatsoever except Permitted Encumbrances, or (ii) used by MMI PGM or by such PGM Joint Venture pursuant to a fully-paid license granted to MMI PGM or to such PGM Joint Venture by the third party pursuant to the terms of such license. Except as set forth on Schedule 4.16, no such computer software license shall terminate or become terminable as a result of the transaction contemplated herein. There are no infringement suits pending or, to the knowledge of Sellers or MMIPGM, threatened, against MMI PGM or any PGM Joint Venture with respect to any of the Software, and, to the knowledge of SellersSellers and PGM, no fact or condition exists which could give rise to any such infringement suit.
Appears in 2 contracts
Sources: Purchase and Sale Agreement (Prism Financial Corp), Purchase and Sale Agreement (Prism Financial Corp)
Intellectual Property and Software. (a) Set forth in the Seller Disclosure Schedule 4.16 correctly identifies is a true and complete list of all: (where applicable, by owner, place of registration, registration or application number and registration or application datesi) all issued domestic and foreign patents, patent applications, provisional patents and utility models and applications pending, patent applications therefor and equivalent or similar rights anywhere in process, the world in inventions and discoveries including invention disclosures; (ii) trademarks, trademark registrations, trademark registration applications, service marks, service ▇▇▇▇ registrations, service ▇▇▇▇ registration applications, copyright registrations, copyright registration applications, license agreements, rights acquired through litigation, logostrade dress, trade names, slogans owned logos and corporate names (in each case, whether registered or unregistered) and registrations and applications for registration thereof; (iii) registered copyrights and registrations and applications for registration thereof; (iv) rights in data, databases or other compilations of fact; (v) trade secrets and other confidential or proprietary information (including ideas, formulas, compositions, inventions (whether patentable or unpatentable and whether or not reduced to practice), know-how, manufacturing and production processes and techniques, marketing and other business systems, research and development information, drawings, specifications, designs, plans, proposals, financial and marketing plans and customer and supplier lists and information); (vi) uniform resource locator and World Wide Web addresses and domain names and applications and registrations therefor; (vii) works of authorship including computer programs, source code and executable code, whether embodied in software, firmware or otherwise, including, software compilations, software implementations of engines, algorithms, software tool sets, compilers, and software models and methodologies (regardless of the stage of development or completion), documentation, designs, files, records, data and mask works; and (viii) goodwill associated with any of the foregoing of any kind now used by MMI and all books and training manuals published Seller in connection with the operation or printed by commercial exploitation of the Gaming Platform (collectively, the “Acquired Intellectual Property”), other than any off-the shelf, shrink-wrapped or on behalf of MMI and which are presently used “click to accept” software licenses or other licenses to generally commercially available software obtained in the business ordinary course of MMIbusiness. Set forth in the Seller Disclosure Schedule is a complete list of all licenses or agreements, and are material to which Seller is a party granting third-parties rights in the operation Acquired Intellectual Property or pursuant to which the Seller has acquired rights incorporated in the Acquired Intellectual Property respect to any of MMI the Acquired Intellectual Property (the foregoing“Intellectual Property Licenses”).
(b) Except as set forth in the Seller Disclosure Schedule, along with know-how and neither the Acquired Intellectual Property nor any Intellectual Property License violates, misappropriates or infringes upon any validly issued trademark, trade secrets owned by MMI which are material to the operation of MMI are hereinafter collectively referred to as the "Intellectual Property"). Schedule 4.16 correctly identifies all issued patents, patent applications pending, patent applications in process, trademarks, trademark registrations, trademark registration applicationsname, service marks, service m▇▇▇▇ registrations, service ▇▇▇▇ registration applications, copyright registration applicationsor, licensesany validly issued patent or patent application or other right of any other Person, rights acquired through litigationnor does Seller have knowledge of any basis for such a claim or demand. To the knowledge of Seller, logosno Person is misappropriating, trade namesinfringing, slogans, know-how and trade secrets other than Software (as defined in Section 4.16(g) below) that are currently expressly licensed to violating or by MMI and are material to the operation making unlawful use of MMI ("Licensed Intellectual Property"). Except for any implied licenses, neither Sellers nor MMI has granted any license to any person with respect to any Intellectual Property or Licensed Acquired Intellectual Property, except those set forth in Schedule 4.16nor does Seller have knowledge of any basis for such a claim or demand. Except as set forth in Schedule 4.16the Disclosure Schedules, Seller has not received any demand, notice or communication from any Person claiming any violation, misappropriation or infringement by Seller of another Person’s rights in connection with the agreements and/or arrangements for the Licensed Acquired Intellectual Property are in full force and effect, and are free and clear of all adverse claims, options, liens, charges, security interests, covenants, conditions, agreements, restrictions, encumbrances and defenses and no material default by MMI exists thereunder.
(b) or any Intellectual Property consisting of issued trademarks ("Trademarks") are valid and subsisting and there are no challenges pending or, to the License nor does Seller have knowledge of Sellersany basis for any such notice, threatenedcommunication, to the validity of any Trademarksclaim or demand.
(c) Except as disclosed on Schedule 4.16set forth in the Seller Disclosure Schedule, MMI Seller is not a party to any license the sole and exclusive owner or agreement relating to any unpatented inventionslicensee of:
(i) the Acquired Intellectual Property and the technology, discoveries, specifications, data, processes, formulae, trade secrets, proprietary technical information or know-how and processes used by MMI Seller in connection with the operation or commercial exploitation of the Gaming Platform; and
(ii) all rights, title and interest in and to the computer software incorporated in the Acquired Intellectual Property (“Software”), with all modifications, enhancements and additions thereto, including, without limitation, all rights in and to all versions thereof and all source code, object code, manuals and other documentation and related materials thereof, copyright in and to each and all works derivative therefrom (including the registrations of copyright incorporated in the Acquired Intellectual Property), all current, enhanced and developmental versions of the source and object code and any variations thereof, all user and programmer documentation, all design specifications, all system documentation (including all flow charts, systems procedures and program component descriptions), all procedures for modification and preparation for the release of enhanced versions and all test data available (excluding all proprietary information of third parties) with respect to its business (hereinafter collectively "Know-How"). Except as disclosed on Schedule 4.16, MMI owns and is legally entitled to exploit the Know-How as used in the business as currently conducted without restrictions and free of any adverse claim or claim of infringementSoftware.
(d) There Each of the Intellectual Property Licenses is valid, binding and enforceable in accordance with its terms against the parties thereto (subject, as to enforceability, to bankruptcy, insolvency, fraudulent conveyance, reorganization, moratorium and other laws of general applicability affecting the rights of creditors and to general principles of equity), Seller has performed all obligations imposed upon it thereunder, and Seller is not in default thereunder, nor is there any event which with notice or lapse of time, or both, would constitute a default thereunder. Except as set forth in the Seller Disclosure Schedule, Seller has not received notice that any party to any of the Intellectual Property Licenses intends to cancel, terminate or refuse to renew the same or to exercise or decline to exercise any option or other right thereunder. No licenses, sublicenses, covenants or agreements have been granted or entered into by Seller in respect of any of the Acquired Intellectual Property except the Intellectual Property Licenses.
(e) Seller has the right to use all trade secrets, customer lists, graphics, logos, illustrations, programming processes, software and other information incorporated in the Acquired Intellectual Property; to the knowledge of Seller, all trade secrets and other confidential information of Seller incorporated in the Acquired Intellectual Property are no interferencenot part of the public domain or publicly known, opposition or cancellation proceedings or infringement suits pending ornor, to the knowledge of SellersSeller, threatenedhave they been misappropriated by any Person; and, with respect to any Intellectual Property or Licensed Intellectual Property, except to the extent disclosed in Schedule 4.16 hereto. To Sellers' knowledgeknowledge of Seller, no employee or consultant of Seller has used or disclosed any trade secrets or other person is infringing any Intellectual Property, Licensed Intellectual Property, or Know-How currently owned by or licensed to MMI, except as disclosed in Schedule 4.16 hereto, and MMI is not infringing, nor within the last five (5) years has MMI infringed or been charged with infringing, any patent or trademark right confidential information of any person, other Person in the course of their work for Seller except under an obligation to maintain such trade secrets or the rights of any person with respect to Know-How, except to the extent disclosed other confidential information in Schedule 4.16 hereto.
(e) The Intellectual Property, Licensed Intellectual Property and Know-How comprise all of the intellectual property rights owned or expressly licensed to MMI and pertaining to the conduct of its business as now operated, or as presently planned to be operated, and there are no limitations or restrictions and no conflict or asserted conflict with intellectual property rights of othersconfidence.
(f) No Acquired Intellectual Property or product, technology or service of Seller incorporated therein is subject to any proceeding or outstanding decree, order, judgment, settlement agreement or stipulation that restricts in any manner the use, transfer or licensing thereof by Seller. To the knowledge of Seller, no (i) product, technology, service or publication of Seller, or (ii) material published or distributed by Seller or any statement of Seller, in each case incorporated in the Acquired Intellectual Property, constitutes obscenity, defames any Person, constitutes false advertising or otherwise violates any applicable law or regulation.
(g) The Seller Disclosure Schedule sets forth all Internet domain names used by Seller in connection with the operation or commercial exploitation of the Gaming Platform. Seller has no knowledge of any third party disputing ownership of any such domain names or alleging infringement of any rights of any such parties by Seller with respect thereto.
(h) Each item of registered Acquired Intellectual Property is valid and subsisting and all necessary registration, maintenance and renewal fees in connection with such Acquired Intellectual Property have been paid to the extent applicable, and all necessary documents and certificates in connection with such Acquired Intellectual Property have been filed with the relevant authorities in the United States or foreign jurisdictions, as the case may be, for the purposes of maintaining such Acquired Intellectual Property. There is no threatened or reasonably foreseeable loss or expiration of any Acquired Intellectual Property, and the Transactions do not and will not (with notice, the happening of any event and/or the passage of time or notice) result in the loss or expiration of any license or of any Acquired Intellectual Property rights of Seller.
(i) Except as set forth on Schedule 4.16 heretothe Disclosure Schedules, none of the Acquired Intellectual Property incorporates, includes, uses, is distributed or otherwise made available or accessible together with, was developed with or is compiled with, linked with or otherwise dependent on any open source, free software, community source, shareware, freeware or other code licensed under any similar licensing arrangement (“Open Source Materials”) and there are no current plans to include any Open Source Materials in any of the Acquired Intellectual Property. The Disclosure Schedules describe the manner in which these Open Source Materials were used in the Acquired Intellectual Property, including the license under which each of the Open Source Materials is licensed to Seller; whether and how the Open Source Materials were modified or distributed or otherwise made available or accessible by Seller; and with which Seller Product(s) the Open Source Materials were used, distributed or otherwise made available or accessible. Seller has complied with all of the computer software requirements of each license applicable to any Open Source Materials used by or for MMI in the conduct of its business (the "Software") is either (i) owned by MMI free and clear of any and all liens, claims, equities, security interests and encumbrances whatsoever, or (ii) used by MMI pursuant to a fully-paid license granted to MMI by the third party pursuant to the terms of such licenseit. Except as set forth on Schedule 4.16the Disclosure Schedules, no such computer software license shall terminate or become terminable as a result Seller has not provided (nor is it obligated to provide, nor will the closing of the transaction contemplated hereintransactions under this Agreement obligate it to provide) the source code for any Acquired Intellectual Property to any other Person. Except as set forth on the Disclosure Schedules, Seller has not, by license, transfer, escrow or otherwise, permitted any other Person to reverse engineer, disassemble or decompile any Acquired Intellectual Property to create such source code, except as may be required by law. All copies of any Acquired Intellectual Property consisting of Software code distributed in connection with Seller’s business have been distributed solely in object code form. There are has been no infringement suits pending ordisclosure of any Acquired Intellectual Property consisting of source code or confidential Software documentation (e.g., functional, system, and development specifications) by Seller or any of its Affiliates, or to the knowledge of Sellers Seller, by any other Person to any third party. Customers of Seller permitted to use the Acquired Intellectual Property consisting of Software code have done so only through execution of object code versions. Each Person so permitted by Seller is party to a valid, existing and written license or MMIservices agreement enforceable against such Person with regards thereto.
(j) Seller has taken all steps that are reasonably required to protect its rights in, threatenedand the confidentiality of, against MMI the Acquired Intellectual Property (including trade secret rights) developed by or on behalf of, and all other confidential or proprietary information belonging to, Seller or provided by any other Person to Seller and incorporated in the Acquired Intellectual Property. Without limiting the foregoing, Seller has, and enforces, a policy requiring each of its employees, consultants and contractors to execute enforceable proprietary information, assignment of inventions and confidentiality agreements assigning all rights in any Acquired Intellectual Property to Seller, and all current and former employees, consultants and contractors of Seller have executed such an agreement. Seller has recorded each such assignment of any registered Acquired Intellectual Property assigned to Seller with the relevant Governmental Authority in accordance with applicable laws and regulations in each jurisdiction in which such assignment is required to be recorded. To the knowledge of Seller, no employee of Seller is obligated under any agreement or commitment, or subject to any judgment, decree or order of any court or administrative agency, that could interfere with such employee’s duties to Seller with respect to any the Acquired Intellectual Property, or that could conflict with the conduct of Buyer’s use of the SoftwareAcquired Intellectual Property.
(k) No person employed by or affiliated with Seller has used or proposes to use any trade secret or any information or documentation in connection with the Acquired Intellectual Property that is confidential or proprietary to any other Person. Seller has been and is in compliance with each confidentiality obligation, anduse restriction and legal requirement, if any relating to the confidential or proprietary information of any other Person, including, without limitation, any customers and their vendors, solely in connection with the Acquired Intellectual Property.
(l) Seller has the right to use, pursuant to valid licenses, all software development tools, library functions, compilers and all other third-party software and hosted services that are used or necessary to create, modify, compile, operate or support the Acquired Intellectual Property or is incorporated into or otherwise used in the performance of the Acquired Intellectual Property. Seller owns or has valid licenses for, and possesses, all of the source code for the Acquired Intellectual Property owned, licensed, distributed, made available or accessible, performed or presently supported by Seller. Seller has taken all actions customary in the software industry to document the software that is Seller Intellectual Property and its operation, such that such software, including the source code and documentation, has been written in a clear and professional manner so that it may be understood, modified and maintained in an efficient manner by reasonably competent programmers certified in the applicable programming languages. For the avoidance of doubt, the software referred to in the preceding sentence shall include any and all bug tracking, source code management and other information technology systems that have been programmed, designed or otherwise developed in any way by Seller.
(m) No government, military or quasi-governmental funding, facilities of a university, college, other educational institution or research center was used in the development of the Acquired Intellectual Property. To the knowledge of SellersSeller, no fact current or condition exists former employee, consultant or independent contractor of Seller, who was involved in, or who contributed to, the creation or development of any Acquired Intellectual Property, has (i) performed services for a Governmental Entity, university, college or other educational institution or research center, or any other entity or person during a period of time during which could give rise such employee, consultant or independent contractor was also performing services for Seller; or (ii) entered into a contract granting such an entity an exclusive license to any such infringement suitowned Acquired Intellectual Property.
(n) Seller’s rights in and to its Acquired Intellectual Property are free and clear of all liens (other than Permitted Liens). Seller owns all of the source code for all Acquired Intellectual Property .
(o) To the knowledge of Seller, the Software is free from material defects and errors, was coded in well-defined, professional, and workmanlike manner, and conforms in all material respects to the functional, system, and development specifications for the Travel Search engine.
Appears in 2 contracts
Sources: Intellectual Property Purchase Agreement (NextPlay Technologies Inc.), Intellectual Property Purchase Agreement (NextPlay Technologies Inc.)
Intellectual Property and Software. (a) Set forth in the Seller Disclosure Schedule 4.16 correctly identifies is a true and complete list of all: (where applicable, by owner, place of registration, registration or application number and registration or application datesi) all issued domestic and foreign patents, patent applications, provisional patents and utility models and applications pending, patent applications therefor and equivalent or similar rights anywhere in process, the world in inventions and discoveries including invention disclosures; (ii) trademarks, trademark registrations, trademark registration applications, service marks, service ▇▇▇▇ registrations, service ▇▇▇▇ registration applications, copyright registrations, copyright registration applications, license agreements, rights acquired through litigation, logostrade dress, trade names, slogans owned logos and corporate names (in each case, whether registered or unregistered) and registrations and applications for registration thereof; (iii) copyrights (whether registered or unregistered) and registrations and applications for registration thereof; (iv) rights in data, databases or other compilations of fact; (v) trade secrets and other confidential or proprietary information (including ideas, formulas, compositions, inventions (whether patentable or unpatentable and whether or not reduced to practice), know-how, manufacturing and production processes and techniques, marketing and other business systems, research and development information, drawings, specifications, designs, plans, proposals, financial and marketing plans and customer and supplier lists and information); (vi) uniform resource locator and World Wide Web addresses and domain names and applications and registrations therefor; (vii) works of authorship including computer programs, source code and executable code, whether embodied in software, firmware or otherwise, including, software compilations, software implementations of engines, algorithms, software tool sets, compilers, and software models and methodologies (regardless of the stage of development or completion), documentation, designs, files, records, data and mask works; and (viii) goodwill associated with any of the foregoing of any kind now used by MMI and all books and training manuals published Seller in connection with the operation or printed by commercial exploitation of the Travel Booking Engine (collectively, the “Acquired Intellectual Property”), other than any off-the shelf, shrink-wrapped or on behalf of MMI and which are presently used “click to accept” software licenses or other licenses to generally commercially available software obtained in the business ordinary course of MMIbusiness. Set forth in the Seller Disclosure Schedule is a complete list of all licenses or agreements, and are material to which Seller is a party granting third-parties rights in the operation Acquired Intellectual Property or pursuant to which the Seller has acquired rights incorporated in the Acquired Intellectual Property respect to any of MMI the Acquired Intellectual Property (the foregoing“Intellectual Property Licenses”).
(b) Except as set forth in the Seller Disclosure Schedule, along with know-how and neither the Acquired Intellectual Property nor any Intellectual Property License violates, misappropriates or infringes upon any validly issued trademark, trade secrets owned by MMI which are material to the operation of MMI are hereinafter collectively referred to as the "Intellectual Property"). Schedule 4.16 correctly identifies all issued patents, patent applications pending, patent applications in process, trademarks, trademark registrations, trademark registration applicationsname, service marks, service m▇▇▇▇ registrations, service ▇▇▇▇ registration applications, copyright registration applicationsor, licensesany validly issued patent or patent application or other right of any other Person, rights acquired through litigationnor does Seller have knowledge of any basis for such a claim or demand. To the knowledge of Seller, logosno Person is misappropriating, trade namesinfringing, slogans, know-how and trade secrets other than Software (as defined in Section 4.16(g) below) that are currently expressly licensed to violating or by MMI and are material to the operation making unlawful use of MMI ("Licensed Intellectual Property"). Except for any implied licenses, neither Sellers nor MMI has granted any license to any person with respect to any Intellectual Property or Licensed Acquired Intellectual Property, except those set forth in Schedule 4.16nor does Seller have knowledge of any basis for such a claim or demand. Except as set forth in Schedule 4.16the Disclosure Schedules, Seller has not received any demand, notice or communication from any Person claiming any violation, misappropriation or infringement by Seller of another Person’s rights in connection with the agreements and/or arrangements for the Licensed Acquired Intellectual Property are in full force and effect, and are free and clear of all adverse claims, options, liens, charges, security interests, covenants, conditions, agreements, restrictions, encumbrances and defenses and no material default by MMI exists thereunder.
(b) or any Intellectual Property consisting of issued trademarks ("Trademarks") are valid and subsisting and there are no challenges pending or, to the License nor does Seller have knowledge of Sellersany basis for any such notice, threatenedcommunication, to the validity of any Trademarksclaim or demand.
(c) Except as disclosed on Schedule 4.16set forth in the Seller Disclosure Schedule, MMI Seller is not a party to any license the sole and exclusive owner or agreement relating to any unpatented inventionslicensee of:
(i) the Acquired Intellectual Property and the technology, discoveries, specifications, data, processes, formulae, trade secrets, proprietary technical information or know-how and processes used by MMI Seller in connection with the operation or commercial exploitation of the Travel Booking Engine; and
(ii) all rights, title and interest in and to the computer software incorporated in the Acquired Intellectual Property (“Software”), with all modifications, enhancements and additions thereto, including, without limitation, all rights in and to all versions thereof and all source code, object code, manuals and other documentation and related materials thereof, copyright in and to each and all works derivative therefrom (including the registrations of copyright incorporated in the Acquired Intellectual Property), all current, enhanced and developmental versions of the source and object code and any variations thereof, all user and programmer documentation, all design specifications, all system documentation (including all flow charts, systems procedures and program component descriptions), all procedures for modification and preparation for the release of enhanced versions and all test data available (excluding all proprietary information of third parties) with respect to its business (hereinafter collectively "Know-How"). Except as disclosed on Schedule 4.16, MMI owns and is legally entitled to exploit the Know-How as used in the business as currently conducted without restrictions and free of any adverse claim or claim of infringementSoftware.
(d) There Each of the Intellectual Property Licenses is valid, binding and enforceable in accordance with its terms against the parties thereto (subject, as to enforceability, to bankruptcy, insolvency, fraudulent conveyance, reorganization, moratorium and other laws of general applicability affecting the rights of creditors and to general principles of equity), Seller has performed all obligations imposed upon it thereunder, and Seller is not in default thereunder, nor is there any event which with notice or lapse of time, or both, would constitute a default thereunder. Except as set forth in the Seller Disclosure Schedule, Seller has not received notice that any party to any of the Intellectual Property Licenses intends to cancel, terminate or refuse to renew the same or to exercise or decline to exercise any option or other right thereunder. No licenses, sublicenses, covenants or agreements have been granted or entered into by Seller in respect of any of the Acquired Intellectual Property except the Intellectual Property Licenses.
(e) Seller has the right to use all trade secrets, customer lists, graphics, logos, illustrations, programming processes, software and other information incorporated in the Acquired Intellectual Property; to the knowledge of Seller, all trade secrets and other confidential information of Seller incorporated in the Acquired Intellectual Property are no interferencenot part of the public domain or publicly known, opposition or cancellation proceedings or infringement suits pending ornor, to the knowledge of SellersSeller, threatenedhave they been misappropriated by any Person; and, with respect to any Intellectual Property or Licensed Intellectual Property, except to the extent disclosed in Schedule 4.16 hereto. To Sellers' knowledgeknowledge of Seller, no employee or consultant of Seller has used or disclosed any trade secrets or other person is infringing any Intellectual Property, Licensed Intellectual Property, or Know-How currently owned by or licensed to MMI, except as disclosed in Schedule 4.16 hereto, and MMI is not infringing, nor within the last five (5) years has MMI infringed or been charged with infringing, any patent or trademark right confidential information of any person, other Person in the course of their work for Seller except under an obligation to maintain such trade secrets or the rights of any person with respect to Know-How, except to the extent disclosed other confidential information in Schedule 4.16 hereto.
(e) The Intellectual Property, Licensed Intellectual Property and Know-How comprise all of the intellectual property rights owned or expressly licensed to MMI and pertaining to the conduct of its business as now operated, or as presently planned to be operated, and there are no limitations or restrictions and no conflict or asserted conflict with intellectual property rights of othersconfidence.
(f) No Acquired Intellectual Property or product, technology or service of Seller incorporated therein is subject to any proceeding or outstanding decree, order, judgment, settlement agreement or stipulation that restricts in any manner the use, transfer or licensing thereof by Seller. To the knowledge of Seller, no (i) product, technology, service or publication of Seller, or (ii) material published or distributed by Seller or any statement of Seller, in each case incorporated in the Acquired Intellectual Property, constitutes obscenity, defames any Person, constitutes false advertising or otherwise violates any applicable law or regulation.
(g) The Seller Disclosure Schedule sets forth all Internet domain names used by Seller in connection with the operation or commercial exploitation of the Travel Booking Engine. Seller has no knowledge of any third party disputing ownership of any such domain names or alleging infringement of any rights of any such parties by Seller with respect thereto.
(h) Each item of registered Acquired Intellectual Property is valid and subsisting and all necessary registration, maintenance and renewal fees in connection with such Acquired Intellectual Property have been paid to the extent applicable, and all necessary documents and certificates in connection with such Acquired Intellectual Property have been filed with the relevant authorities in the United States or foreign jurisdictions, as the case may be, for the purposes of maintaining such Acquired Intellectual Property. There is no threatened or reasonably foreseeable loss or expiration of any Acquired Intellectual Property, and the Transactions do not and will not (with notice, the happening of any event and/or the passage of time or notice) result in the loss or expiration of any license or of any Acquired Intellectual Property rights of Seller.
(i) Except as set forth on Schedule 4.16 heretothe Disclosure Schedules, none of the Acquired Intellectual Property incorporates, includes, uses, is distributed or otherwise made available or accessible together with, was developed with or is compiled with, linked with or otherwise dependent on any open source, free software, community source, shareware, freeware or other code licensed under any similar licensing arrangement (“Open Source Materials”) and there are no current plans to include any Open Source Materials in any of the Acquired Intellectual Property. The Disclosure Schedules describe the manner in which these Open Source Materials were used in the Acquired Intellectual Property, including the license under which each of the Open Source Materials is licensed to Seller; whether and how the Open Source Materials were modified or distributed or otherwise made available or accessible by Seller; and with which Seller Product(s) the Open Source Materials were used, distributed or otherwise made available or accessible. Seller has complied with all of the computer software requirements of each license applicable to any Open Source Materials used by or for MMI in the conduct of its business (the "Software") is either (i) owned by MMI free and clear of any and all liens, claims, equities, security interests and encumbrances whatsoever, or (ii) used by MMI pursuant to a fully-paid license granted to MMI by the third party pursuant to the terms of such licenseit. Except as set forth on Schedule 4.16the Disclosure Schedules, no such computer software license shall terminate or become terminable as a result Seller has not provided (nor is it obligated to provide, nor will the closing of the transaction contemplated hereintransactions under this Agreement obligate it to provide) the source code for any Acquired Intellectual Property to any other Person. Except as set forth on the Disclosure Schedules, Seller has not, by license, transfer, escrow or otherwise, permitted any other Person to reverse engineer, disassemble or decompile any Acquired Intellectual Property to create such source code, except as may be required by law. All copies of any Acquired Intellectual Property consisting of Software code distributed in connection with Seller’s business have been distributed solely in object code form. There are has been no infringement suits pending ordisclosure of any Acquired Intellectual Property consisting of source code or confidential Software documentation (e.g., functional, system, and development specifications) by Seller or any of its Affiliates, or to the knowledge of Sellers Seller, by any other Person to any third party. Customers of Seller permitted to use the Acquired Intellectual Property consisting of Software code have done so only through execution of object code versions. Each Person so permitted by Seller is party to a valid, existing and written license or MMIservices agreement enforceable against such Person with regards thereto.
(j) Seller has taken all steps that are reasonably required to protect its rights in, threatenedand the confidentiality of, against MMI the Acquired Intellectual Property (including trade secret rights) developed by or on behalf of, and all other confidential or proprietary information belonging to, Seller or provided by any other Person to Seller and incorporated in the Acquired Intellectual Property. Without limiting the foregoing, Seller has, and enforces, a policy requiring each of its employees, consultants and contractors to execute enforceable proprietary information, assignment of inventions and confidentiality agreements assigning all rights in any Acquired Intellectual Property to Seller, and all current and former employees, consultants and contractors of Seller have executed such an agreement. Seller has recorded each such assignment of any registered Acquired Intellectual Property assigned to Seller with the relevant Governmental Authority in accordance with applicable laws and regulations in each jurisdiction in which such assignment is required to be recorded. To the knowledge of Seller, no employee of Seller is obligated under any agreement or commitment, or subject to any judgment, decree or order of any court or administrative agency, that could interfere with such employee’s duties to Seller with respect to any the Acquired Intellectual Property, or that could conflict with the conduct of Buyer’s use of the SoftwareAcquired Intellectual Property.
(k) No person employed by or affiliated with Seller has used or proposes to use any trade secret or any information or documentation in connection with the Acquired Intellectual Property that is confidential or proprietary to any other Person. Seller has been and is in compliance with each confidentiality obligation, anduse restriction and legal requirement, if any relating to the confidential or proprietary information of any other Person, including, without limitation, any customers and their vendors, solely in connection with the Acquired Intellectual Property.
(l) Seller has the right to use, pursuant to valid licenses, all software development tools, library functions, compilers and all other third-party software and hosted services that are used or necessary to create, modify, compile, operate or support the Acquired Intellectual Property or is incorporated into or otherwise used in the performance of the Acquired Intellectual Property. Seller owns or has valid licenses for, and possesses, all of the source code for the Acquired Intellectual Property owned, licensed, distributed, made available or accessible, performed or presently supported by Seller. Seller has taken all actions customary in the software industry to document the software that is Seller Intellectual Property and its operation, such that such software, including the source code and documentation, has been written in a clear and professional manner so that it may be understood, modified and maintained in an efficient manner by reasonably competent programmers certified in the applicable programming languages. For the avoidance of doubt, the software referred to in the preceding sentence shall include any and all bug tracking, source code management and other information technology systems that have been programmed, designed or otherwise developed in any way by Seller.
(m) No government, military or quasi-governmental funding, facilities of a university, college, other educational institution or research center was used in the development of the Acquired Intellectual Property. To the knowledge of SellersSeller, no fact current or condition exists former employee, consultant or independent contractor of Seller, who was involved in, or who contributed to, the creation or development of any Acquired Intellectual Property, has (i) performed services for a Governmental Entity, university, college or other educational institution or research center, or any other entity or person during a period of time during which could give rise such employee, consultant or independent contractor was also performing services for Seller; or (ii) entered into a contract granting such an entity an exclusive license to any such infringement suitowned Acquired Intellectual Property.
(n) Seller’s rights in and to its Acquired Intellectual Property are free and clear of all liens (other than Permitted Liens). Seller owns all of the source code for all Acquired Intellectual Property presently supported or supported since January 1, 2018 by Seller.
(o) To the knowledge of Seller, the Software is free from material defects and errors, was coded in well-defined, professional, and workmanlike manner, and conforms in all material respects to the functional, system, and development specifications for the Travel Booking Engine.
Appears in 1 contract
Sources: Intellectual Property Purchase Agreement (Monaker Group, Inc.)
Intellectual Property and Software. (a) Schedule 4.16 correctly identifies No Company owns any (where applicable, by owner, place of registration, registration i) material unregistered Intellectual Property or application number and registration or application dates(ii) all issued domestic and foreign patents, patent applications pending, patent applications in process, trademarks, trademark registrations, pending trademark registration applications, service markstrademark registrations, service ▇▇▇▇ registrations, pending service ▇▇▇▇ registration applications, copyright registrationspending patent applications, patents, pending copyright registration applications, license agreements, rights acquired through litigation, logos, copyright registrations or domain name registrations. Schedule 4.13(a) lists all trade names, slogans owned names and company names used by MMI and all books and training manuals published or printed by or on behalf of MMI and which are presently used in each Company during the business of MMI, and are material two (2) year period prior to the operation of MMI (the foregoing, along with know-how and trade secrets owned by MMI which are material to the operation of MMI are hereinafter collectively referred to as the "Intellectual Property"). Schedule 4.16 correctly identifies all issued patents, patent applications pending, patent applications in process, trademarks, trademark registrations, trademark registration applications, service marks, service ▇▇▇▇ registrations, service ▇▇▇▇ registration applications, copyright registration applications, licenses, rights acquired through litigation, logos, trade names, slogans, know-how and trade secrets other than Software (as defined in Section 4.16(g) below) that are currently expressly licensed to or by MMI and are material to the operation of MMI ("Licensed Intellectual Property"). Except for any implied licenses, neither Sellers nor MMI has granted any license to any person with respect to any Intellectual Property or Licensed Intellectual Property, except those set forth in Schedule 4.16. Except as set forth in Schedule 4.16, the agreements and/or arrangements for the Licensed Intellectual Property are in full force and effect, and are free and clear of all adverse claims, options, liens, charges, security interests, covenants, conditions, agreements, restrictions, encumbrances and defenses and no material default by MMI exists thereunderClosing.
(b) No Company is in breach of or default under any agreement whereby Intellectual Property consisting is licensed to such Company (the “Licensed Intellectual Property”), all of issued trademarks ("Trademarks") are valid and subsisting and there are no challenges pending orwhich Licensed Intellectual Property is, to except for generally commercially available “off the knowledge of Sellersshelf” or “shrink-wrap” software, threatened, to the validity of any Trademarksset forth on Schedule 4.13(b).
(c) Except as disclosed set forth on Schedule 4.164.13(c), MMI is to the Knowledge of the Shareholders, (i) the Companies possess all right, title and interest in and to, or have a valid license to use, all Intellectual Property used in or necessary for the conduct of the Business and (ii) each Company’s online auction activities, including online vehicle auctions, do not a party to infringe, misappropriate or violate any license or agreement relating to Intellectual Property rights of any unpatented inventions, discoveries, specifications, data, processes, formulae, trade secrets, proprietary technical information or know-how other Person. The Licensed Intellectual Property constitutes all material Intellectual Property used by MMI with respect the Companies to its business (hereinafter collectively "Know-How"). Except as disclosed on Schedule 4.16, MMI owns and is legally entitled to exploit operate the Know-How as used Business substantially in the business manner conducted as currently conducted without restrictions and free of any adverse claim or claim the date of infringementthis Agreement.
(d) There are no interferenceNo Company has received any written notice asserting any misuse, opposition infringement, or cancellation proceedings or infringement suits pending or, to the knowledge other violation of Sellers, threatened, with respect to any Intellectual Property or Licensed a Third Person’s Intellectual Property, except to including, but not limited to, as a result of the extent disclosed in Schedule 4.16 heretosale or license of any product or service by the Companies. To Sellers' knowledgethe Knowledge of Shareholders and any Company, no other person Intellectual Property used in the conduct of the Business has been or is infringing being infringed or otherwise violated.
(e) Each Company has taken all commercially reasonable measures to safeguard and maintain the secrecy and confidentiality of any Intellectual Propertyand all trade secrets and confidential processes, Licensed Intellectual Propertyalgorithms, source code, know how, business methods, data, or Know-How currently other confidential information, data and materials owned by or licensed to MMI, except as disclosed in Schedule 4.16 hereto, and MMI is not infringing, nor within the last five (5) years has MMI infringed or been charged with infringing, any patent or trademark right of any person, or the rights of any person with respect to Know-How, except to the extent disclosed in Schedule 4.16 hereto.
(e) The Intellectual Property, Licensed Intellectual Property and Know-How comprise all of the intellectual property rights owned or expressly licensed to MMI and pertaining to the conduct of its business as now operated, or as presently planned to be operated, and there are no limitations or restrictions and no conflict or asserted conflict with intellectual property rights of otherssuch Company.
(f) Except as set forth described on Schedule 4.16 hereto4.13(f), all of the computer software Intellectual Property used by or for MMI any Company in the conduct of its business (the "Software") is either (i) owned by MMI free and clear of any and all liensBusiness will be available to such Company, claimsimmediately after the Closing, equities, security interests and encumbrances whatsoever, or (ii) used by MMI on such terms as are substantially identical to those pursuant to a fully-paid license granted to MMI which such Intellectual Property is available for use by the third party pursuant such Company immediately prior to the terms of such license. Except as set forth on Schedule 4.16, no such computer software license shall terminate or become terminable as a result of the transaction contemplated herein. There are no infringement suits pending or, to the knowledge of Sellers or MMI, threatened, against MMI with respect to any of the Software, and, to the knowledge of Sellers, no fact or condition exists which could give rise to any such infringement suitClosing.
Appears in 1 contract
Intellectual Property and Software. (a) Schedule 4.16 SCHEDULE 4.14(a) hereto lists and describes correctly identifies (where applicable, by owner, place of registration, registration or application number the Intellectual Property and registration or application dates) all issued domestic and foreign patents, patent applications pending, patent applications in process, trademarks, trademark registrations, trademark registration applications, service marks, service ▇▇▇▇ registrations, service ▇▇▇▇ registration applications, copyright registrations, copyright registration applications, license agreements, rights acquired through litigation, logos, trade names, slogans owned by MMI and all books and training manuals published or printed by or on behalf of MMI and which are presently Software used in any manner, or otherwise developed, sold or conceived by the Business, Seller, or its Affiliates.
(b) All registered Intellectual Property is in full force and effect and will not expire or require renewal until the date (if any) set forth in SCHEDULE 4.14(a). The Software and Intellectual Property set forth on SCHEDULE 4.14(a) are the only intellectual property needed to conduct the business of MMI, and are material to the operation of MMI (the foregoing, along with know-how and trade secrets owned by MMI which are material to the operation of MMI are hereinafter collectively referred to as the "Intellectual Property"). Schedule 4.16 correctly identifies all issued patents, patent applications pending, patent applications in process, trademarks, trademark registrations, trademark registration applications, service marks, service ▇▇▇▇ registrations, service ▇▇▇▇ registration applications, copyright registration applications, licenses, rights acquired through litigation, logos, trade names, slogans, know-how and trade secrets other than Software (as defined in Section 4.16(g) below) that are currently expressly licensed to or by MMI and are material to the operation of MMI ("Licensed Intellectual Property"). Except for any implied licenses, neither Sellers nor MMI has granted any license to any person with respect to any Intellectual Property or Licensed Intellectual Property, except those set forth in Schedule 4.16Seller. Except as set forth in Schedule 4.16SCHEDULE 4.14(b), Seller does not own or have any interest in or to any other copyrights, patents, trademarks, service marks, trade names, master works, logos, trade secrets, designs, and other intellectual property (or applications therefor) and does not license from others the agreements and/or arrangements right to use any industrial or intellectual property rights. Except as set forth on SCHEDULE 4.14(b), Seller owns or possesses, is licensed under, or otherwise has lawful access to, all copyrights, patents, trademarks, service marks, trade names, master works, logos, trade secrets, designs, and other intellectual property (or applications therefor) necessary for the Licensed lawful conduct of the Business as now conducted, without any infringement of or conflict with the industrial or intellectual property rights of others.
(c) There have been no unauthorized use or disclosure or misappropriation of any Intellectual Property are in full force and effector Software, and are Seller has taken reasonable steps to protect against the unauthorized use or disclosure of its Intellectual Property and Software. Except as disclosed in SCHEDULE 4.14(b), none of the Selling Parties has reason to believe that (i) any of the Intellectual Property listed in SCHEDULE 4.14(a) is invalid or unenforceable (whether due to the existence of prior art, inequitable conduct such as patent fraud or misuse, prior use or creation, or otherwise), (ii) any payments to governmental agencies required to maintain the effectiveness of any of such registered Intellectual Property have not been timely paid, or (iii) any of such pending applications will be denied or will be materially restricted or conditioned or any prior art exists which would cause such denial, restriction or condition.
(d) Except as set forth on SCHEDULE 4.14(b), Seller either: (i) exclusively owns the entire right, title and interest in and to the Intellectual Property and Software used by Seller in the conduct of its business, free and clear of all adverse claimsany encumbrance, optionsand Seller has not, liensexpressly or by implication, chargeslicensed, security interestssold, covenantsassigned or transferred any rights to such Intellectual Property, conditionsSoftware or any rights to copies of the Software or other copyrightable materials; (ii) has the perpetual royalty-free right to use the same; or (iii) in the case of Software owned by and/or licensed from a third party vendor as set forth on SCHEDULE 4.14(d), agreements, restrictions, encumbrances and defenses and no material default by MMI exists thereunderSeller is in compliance with such third party's licenses or other agreements as set forth on SCHEDULE 4.14(d).
(be) Except as set forth on SCHEDULE 4.14(b), (i) all Intellectual Property consisting of issued trademarks ("Trademarks"including registrations therefor), which is identified in SCHEDULE 4.14(a) are as being owned by Seller, is valid and subsisting in force, and there all registration applications so identified are no challenges pending orand in good standing, all without challenge of any kind; (ii) Seller has the sole and exclusive right to bring actions for infringement or unauthorized use of the Intellectual Property and Software owned by or licensed to Seller and, to the knowledge of SellersSeller, threatened, there is no basis for any such action; (iii) Seller has taken all actions reasonably necessary to protect the validity of any Trademarks.
(c) Except as disclosed on Schedule 4.16, MMI is not a party to any license or agreement relating to any unpatented inventions, discoveries, specifications, data, processes, formulae, trade secrets, proprietary technical information or know-how used by MMI with respect to its business (hereinafter collectively "Know-How"). Except as disclosed on Schedule 4.16, MMI owns and is legally entitled to exploit the Know-How as used in the business as currently conducted without restrictions and free of any adverse claim or claim of infringement.
(d) There are no interference, opposition or cancellation proceedings or infringement suits pending or, to the knowledge of Sellers, threatened, with respect to any Intellectual Property or Licensed Intellectual Property, except to the extent disclosed in Schedule 4.16 hereto. To Sellers' knowledge, no other person is infringing any Intellectual Property, Licensed Intellectual Property, or Know-How currently owned by or licensed to MMI, except as disclosed in Schedule 4.16 hereto, and MMI is not infringing, nor within the last five (5) years has MMI infringed or been charged with infringing, any patent or trademark right of any person, or the rights of any person with respect to Know-How, except to the extent disclosed in Schedule 4.16 hereto.
(e) The Intellectual Property, Licensed Intellectual Property and Know-How comprise all of the intellectual property rights Software owned or expressly licensed to MMI and pertaining to the conduct of its business as now operatedby Seller, or as presently planned to be operated, and there are no limitations or restrictions and no conflict or asserted conflict with intellectual property rights of othersincluding by pursuing registration where necessary.
(f) Except as set forth on Schedule 4.16 heretoSCHEDULE 4.14(b), all Seller is not in breach of any agreement affecting any of the computer software used by or for MMI in the conduct of its business (the "Software") is either (i) Intellectual Property and Software owned by MMI free Seller, and clear has not directly or indirectly taken any action which would impair or otherwise adversely affect its rights in such Intellectual Property and Software. Correct and complete copies of any registrations for all registered Intellectual Property in SCHEDULE 4.14(a) as being owned by Seller; and all liens, claims, equities, security interests and encumbrances whatsoever, pending applications to register unregistered Intellectual Property identified in SCHEDULE 4.14(a) as being owned by Seller (together with any subsequent correspondence or (ii) used by MMI pursuant to a fully-paid license granted to MMI by the third party pursuant filings relating to the terms of such license. foregoing) have heretofore been delivered by Seller to the Buyer.
(g) Except as set forth on Schedule 4.16SCHEDULE 4.14(b), (i) no such computer software license shall terminate infringement of any Intellectual Property of any other person or become terminable as a result entity has occurred or results in any way from the operations of the transaction contemplated herein. There Business of Seller as previously or currently conducted or from the use of any of the Intellectual Property or Software owned by or licensed to Seller; (ii) no claim of any infringement of any Intellectual Property of any other Person has been made or asserted in respect of the operations of the business of Seller or the use of any of the Intellectual Property or Software used by Seller; (iii) Seller has not received notice of any claim of invalidity of any Intellectual Property owned by Seller; (iv) no proceedings are no infringement suits pending or, to the knowledge of Sellers Seller, threatened which challenge the validity, ownership or MMIuse or continued use by Seller or its assignees of any of the Intellectual Property or Software used by Seller; (v) Seller has not had notice of, threatenedor knowledge of any basis for, a claim against MMI Seller that the operations, activities, products, Software, equipment, machinery or processes of the business of Seller infringe any Intellectual Property of any other Person; and (vi) Seller has not granted to any other Person any license or rights to use the Intellectual Property or Software except as set forth on SCHEDULE 4.14(g).
(h) Except as set forth on SCHEDULE 4.14(b), (i) the Intellectual Property and Software owned by Seller is not subject to any transfer, assignment, source code escrow agreement, reversion, site, equipment, or operational limitations; (ii) Seller has maintained and protected the Intellectual Property and Software owned by Seller (including, without limitation, all source code and system specifications) with appropriate proprietary notices (including, without limitation, the notice of copyright in accordance with the requirements of 17 U.S.C. ss. 401), confidentiality and non-disclosure agreements and such other measures as are necessary to protect the proprietary, trade secret or confidential information contained therein; (iii) the Software owned by Seller is protectable under applicable copyright law and has not been forfeited to the public domain and has been registered with the U.S. Copyright Office or is eligible for registration; (iv) Seller has copies of all releases or separate versions of the Software owned by Seller and source code thereto, so that the same may be subject to registration in the United States Copyright Office; (v) Seller has complete and exclusive right, title and interest in and to the Software owned by Seller; (vi) Seller has exclusively developed the Software owned by Seller through its own efforts and for its own account without the aid or use of any consultants, agents, independent contractors or other persons (other than persons that are Employees of Seller); (vii) the Software owned by Seller does not infringe any Intellectual Property rights of any other Person; (viii) any Software owned by Seller includes the source code, system documentation, statements of principles of operation and schematics, as well as any pertinent commentary and explanation used for the development, maintenance, implementation and use thereof, so that a trained computer programmer could develop, maintain, enhance, modify, support, compile and use all releases or separate versions of the same that are currently subject to maintenance obligations by Seller; and (ix) there are no agreements or arrangements in effect with respect to any marketing, distribution, licensing, sale, resale or promotion of the SoftwareSoftware owned by Seller by any other Person.
(i) Except as set forth on SCHEDULE 4.14(b), andall agents, consultants or contractors who have contributed to or participated in the creation or, development of any Intellectual Property or Software on behalf of Seller or any predecessor in interest thereto (including but not limited to all employees and consultants of Administaff Companies, Inc.) either: (i) are a party to an enforceable "work-for-hire" agreement under which Seller is agreed to by the parties to be the original exclusive owner/author of all intellectual property rights therein in the form attached hereto as SCHEDULE 4.14(i); or (ii) have executed an assignment or an agreement to assign in favor of Seller (or such predecessor in interest, as applicable) of all right, title and interest in such material in the form attached hereto as SCHEDULE 4.14(i).
(j) Except as set forth on SCHEDULE 4.14(b), the Software and all components thereof will be fully compatible and shall operate in an integrated manner. The Software owned by Seller and all portions or components thereof shall be and are free of material defects, malfunctions or nonconformities. The Software owned by Seller, or any portion thereof, does not contain any timer, virus, copy protection device, disabling code, clock, counter or other limiting design or routine which causes the Software (or any portion thereof) to become erased, inoperable, impaired, or otherwise incapable of being used in the full manner for which it was designed and contemplated under this Agreement.
(k) Except as set forth on SCHEDULE 4.14(b), the Software owned by Seller complies with all applicable requirements of laws relating to the export or reexport of the same and may be exported or reexported to all countries without the necessity of any license, other than to those countries specified as prohibited destinations pursuant to applicable regulations of the U.S. Department of Commerce and/or the United States State Department.
(l) To the best of Seller's Knowledge, the list of all Persons who have any copy, whether full, partial, or an embedded copy, of any Software attached hereto as SCHEDULE 4.14(l) ("User List") is a substantially complete list of the customers of product sold or provided by Seller. The only recipients of alpha and beta versions of the Software distributed by or on behalf of Seller have been those on SCHEDULE 4.14(l).
(m) The Software performs in accordance with the specifications set forth in SCHEDULE 4.14(m), and there are currently no claims or assertions pending or, to the knowledge best of SellersSelling Parties' knowledge, threatened alleging a failure of the product to so perform.
(n) The Selling Parties acknowledge that all intellectual property developed under the Tracor Agreement vested in Tracor Instruments Austin, Inc., with Seller retaining a license to exploit a portion of such intellectual property. The Selling Parties acknowledge and agree that Buyer is purchasing the Assets of the Seller upon the Selling Parties representation that no fact intellectual property developed by the Selling Parties under the Tracor Agreement is currently used or condition exists which could give rise needed in the Business, other than such as is provided to Seller under the WA License. The current or prospective business of Buyer will not be adversely effected in any such infringement suitway whatsoever by the absence of an assignment of the Tracor Agreement (including the intellectual property developed thereunder) to Buyer.
Appears in 1 contract
Intellectual Property and Software. (a) Schedule 4.16 correctly identifies Each of the Credit Parties shall provide the Agent and the Lenders within 30 days of the end of each Fiscal Quarter and each Financial Year a list of any registered patents (where applicablealong with the applicable date of registration and jurisdiction), registered trademarks (along with the applicable date of registration and jurisdiction), registered trade names (along with the applicable date of registration and jurisdiction), or registered copyrights (along with the applicable date of registration and jurisdiction), owned or acquired by owner, place any Credit Party after the date of registration, registration or application number and registration or application dates) all issued domestic and foreign patents, patent applications pending, patent applications in process, trademarks, trademark registrations, trademark registration applications, service marks, service ▇▇▇▇ registrations, service ▇▇▇▇ registration applications, copyright registrations, copyright registration applications, license agreements, rights acquired through litigation, logos, trade names, slogans owned by MMI and all books and training manuals published or printed by or on behalf of MMI and which are presently used in the business of MMI, and are material this Agreement not previously reported to the operation of MMI (Agent and the foregoing, along with know-how and trade secrets owned by MMI which are material to the operation of MMI are hereinafter collectively referred to as the "Intellectual Property"). Schedule 4.16 correctly identifies all issued patents, patent applications pending, patent applications in process, trademarks, trademark registrations, trademark registration applications, service marks, service ▇▇▇▇ registrations, service ▇▇▇▇ registration applications, copyright registration applications, licenses, rights acquired through litigation, logos, trade names, slogans, know-how and trade secrets other than Software (as defined in Section 4.16(g) below) that are currently expressly licensed to or by MMI and are material to the operation of MMI ("Licensed Intellectual Property"). Except for any implied licenses, neither Sellers nor MMI has granted any license to any person with respect to any Intellectual Property or Licensed Intellectual Property, except those set forth in Schedule 4.16. Except as set forth in Schedule 4.16, the agreements and/or arrangements for the Licensed Intellectual Property are in full force and effect, and are free and clear of all adverse claims, options, liens, charges, security interests, covenants, conditions, agreements, restrictions, encumbrances and defenses and no material default by MMI exists thereunder.Lenders;
(b) Each of the Credit Parties shall (i) use its commercially reasonable efforts to protect, defend and maintain the validity and enforceability of the material trademarks, patents, copyrights, designs and each item of the material Intellectual Property consisting in which it has an interest, and (ii) use its commercially reasonable efforts to detect infringements of issued trademarks ("Trademarks") are valid such trademarks, patents, copyrights or designs thereof and subsisting promptly advise the Agent and there are no challenges pending or, to the knowledge Lenders in writing of Sellers, threatened, to the validity of any Trademarks.infringements detected;
(c) Except Each of the Credit Parties shall execute and file, no later than 90 days after such Credit Party acquires a registered patent, registered trademark, registered trade name, or registered copyright after the date of this Agreement (the “After-Acquired Intellectual Property”), such instruments, and take such actions as disclosed on Schedule 4.16, MMI is not a party the Agent and the Lenders may reasonably request from time to time to perfect or continue the perfection of the Agent’s Security Interests in any license or agreement relating to any unpatented inventions, discoveries, specifications, data, processes, formulae, trade secrets, proprietary technical information or knowAfter-how used by MMI with respect to its business (hereinafter collectively "Know-How"). Except as disclosed on Schedule 4.16, MMI owns and is legally entitled to exploit the Know-How as used in the business as currently conducted without restrictions and free of any adverse claim or claim of infringement.Acquired Intellectual Property; and
(d) There are no interferenceUpon any senior officer of a Credit Party obtaining actual knowledge thereof, opposition or cancellation proceedings or infringement suits pending or, to the knowledge Canadian Borrower will promptly notify the Agent and the Lenders in writing of Sellers, threatened, with respect to any event that materially adversely affects the value of any material Intellectual Property or Licensed Intellectual Property, except to the extent disclosed in Schedule 4.16 hereto. To Sellers' knowledge, no other person is infringing any Intellectual Property, Licensed Intellectual Property, or Know-How currently owned by a Credit Party or licensed in which it has an interest, the ability of a Credit Party to MMI, except as disclosed in Schedule 4.16 hereto, and MMI is not infringing, nor within the last five (5) years has MMI infringed or been charged with infringing, any patent or trademark right dispose of any person, or the rights of any person with respect to Know-How, except to the extent disclosed in Schedule 4.16 hereto.
(e) The Intellectual Property, Licensed material Intellectual Property and Know-How comprise all the rights and remedies of the intellectual property rights owned or expressly licensed to MMI Agent and pertaining to the conduct of its business as now operated, or as presently planned to be operated, and there are no limitations or restrictions and no conflict or asserted conflict with intellectual property rights of othersLenders in relation thereto.
(f) Except as set forth on Schedule 4.16 hereto, all of the computer software used by or for MMI in the conduct of its business (the "Software") is either (i) owned by MMI free and clear of any and all liens, claims, equities, security interests and encumbrances whatsoever, or (ii) used by MMI pursuant to a fully-paid license granted to MMI by the third party pursuant to the terms of such license. Except as set forth on Schedule 4.16, no such computer software license shall terminate or become terminable as a result of the transaction contemplated herein. There are no infringement suits pending or, to the knowledge of Sellers or MMI, threatened, against MMI with respect to any of the Software, and, to the knowledge of Sellers, no fact or condition exists which could give rise to any such infringement suit.
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Sources: Credit Agreement