Technology and Intellectual Property Rights. (a) The "Company Intellectual Property" consists of the following: (i) all patents, trademarks, trade names, service marks, mask works, domain names, copyrights and any renewal rights, applications and registrations for any of the foregoing, and all trade dress, net lists, schematics, technology, manufacturing processes, supplier lists, trade secrets, know-how, moral rights, computer software programs or applications (in both source and object code form) owned by Company; (ii) all goodwill associated with trademarks, trade names service marks and trade dress owned by Company; (iii) all software and firmware listings, and updated software source code, and complete system build software and instructions related to all software described herein owned by Company; (iv) all documents, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing or customer support for all intellectual property described herein owned by Company; (v) all other tangible or intangible proprietary information and materials owned by Company; and (vi) all license and other rights in any third party product, intellectual property, proprietary or personal rights, documentation, or tangible or intangible property, including without limitation the types of intellectual property and tangible and intangible proprietary information described in (i) through (v) above; that are being, and/or have been, used, or are currently under development for use, in the business of Company as it has been, is currently or is currently anticipated to be (up to the Closing), conducted. Company Intellectual Property described in clauses (i) to (v) above is referred to herein as "Company Owned Intellectual Property" and Company Intellectual Property described in clause (vi) above is referred to herein as "Company Licensed Intellectual Property". Unless otherwise noted, all references to "Company Intellectual Property" shall refer to both Company Owned Intellectual Property and Company Licensed Intellectual Property. (b) The Company Disclosure Schedule lists: (i) all patents, registered copyrights, mask works, trademarks, service marks, trade dress, any renewal rights for any of the foregoing, and any applications and registrations for any of the foregoing, that are included in the Company Owned Intellectual Property; (ii) all hardware products and tools, software products and tools, and services that are currently published, offered, or under development by Company; (iii) all licenses, sublicenses and other agreements to which Company is a party and pursuant to which any other person is authorized to have access to or use the Company Owned Intellectual Property or exercise any other right with regard thereto; (iv) all Company Licensed Intellectual Property (other than license agreements for standard "shrink wrapped, off the shelf," commercially available, third party products used by the Company); and (v) any obligations of exclusivity, noncompetition, nonsolicitation, or first negotiation with respect to Company Intellectual Property to which Company is subject under any agreement that does not fall within the ambit of (iii) or (iv) above. (c) The Company Intellectual Property consists solely of items and rights that are either: (i) owned by Company, (ii) in the public domain, or (iii) rightfully used and authorized for use by Company and its successors pursuant to a valid license or other agreement. Company has all rights in the Company Intellectual Property reasonably necessary to carry out Company's current, and, to the knowledge of the Company, anticipated future (up to the Closing) activities and has or had all rights in the Company Intellectual Property reasonably necessary to carry out Company's former activities, including without limitation, if necessary to carry out such activities, rights to make, use, exclude others from using, reproduce, modify, adapt, create derivative works based on, translate, distribute (directly and indirectly), transmit, display and perform publicly, license, rent, lease, assign, and sell the Company Owned Intellectual Property in all geographic locations and fields of use, and to sublicense any or all such rights to third parties, including the right to grant further sublicenses. (d) Company is not, nor as a result of the execution or delivery of this Agreement, or performance of Company's obligations hereunder, will Company be, in a material violation of any license, sublicense or other agreement relating to the Company Intellectual Property to which Company is a party or otherwise bound. Except pursuant to the terms of the agreements listed in the Company Disclosure Schedule, Company is not obligated to provide any consideration (whether financial or otherwise) to any third party, nor is any third party otherwise entitled to any consideration, with respect to any exercise of rights by Company or its successors in the Company Intellectual Property. (e) The use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any Company Owned Intellectual Property by Company and its Licensees or any other authorized exercise of rights in or to the Company Owned Intellectual Property by Company or its licensees does not and will not infringe any copyright, patent, trade secret, trademark, service ▇▇▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, right of publicity or right in personal or other data of any person. Further, the authorized use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any Company Licensed Intellectual Property by Company or its licensees or any other authorized exercise of rights in or to the Company Licensed Intellectual Property by Company or its licensees does not and will not infringe any copyright, patent, trade secret, trademark, service ▇▇▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, right of publicity or right in personal or other data of any person. No claims (i) challenging the validity, effectiveness, or ownership by Company of any of the Company Owned Intellectual Property, or (ii) to the effect that the use, reproduction, modification, manufacturing, distribution, licensing, sublicensing, sale or any other exercise of rights in any Company Owned Intellectual Property by Company or its licensees infringes, or will infringe on, any intellectual property or other proprietary or personal right of any person, have been asserted or, to the knowledge of Company, are threatened by any person nor, to the knowledge of the Company, are there any valid grounds for any bona fide claim of any such kind. To the knowledge of Company, there is no unauthorized use, infringement or misappropriation of any of the Company Owned Intellectual Property by any third party, employee or former employee. (f) No parties other than Company possess any current or contingent rights to any source code that is part of the Company Owned Intellectual Property (including, without limitation, through any escrow account). (g) The Company Disclosure Schedule lists all parties who have created any material portion of, or otherwise have any rights in or to, the Company Owned Intellectual Property other than employees of Company whose work product was created by them entirely within the scope of their employment by Company and constitutes works made for hire owned by Company. Company has secured from all parties who have created any material portion of, or otherwise have any rights in or to, the Company Owned Intellectual Property valid and enforceable written assignments or licenses of any such work or other rights to Company and has provided true and complete copies of such assignments or licenses to Parent. (h) The Company Disclosure Schedule includes a true and complete list of support and maintenance agreements relating to Company Owned Intellectual Property or to which Company is a party as to Company Licensed Intellectual Property including the identity of the parties and the respective dates of such agreements.
Appears in 1 contract
Technology and Intellectual Property Rights. (a) The As used in this Section 4.15, "Company Intellectual Property" consists of the following:
(i) all inventions, patents, trademarks, trade names, service marks, mask works, domain names, original works of authorship, copyrights and any renewal rights, applications and registrations for any of the foregoing, and all trade dress, net lists, schematics, technology, manufacturing processes, supplier lists, trade secrets, know-how, moral rights, computer software programs or applications (as applicable, in both source and object code form) owned in whole or in part by Companythe Company or any Company Subsidiary;
(ii) all goodwill associated with trademarks, trade names service marks and trade dress owned in whole or in part by Companythe Company or any Company Subsidiary;
(iii) all software and firmware listingssoftware, and updated software including without limitation, all source code, object code and complete system build software and instructions related to all software described herein owned in whole or in part by Companythe Company or any Company Subsidiary;
(iv) all documents, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing or customer support for all intellectual property described herein owned in whole or in part by Companythe Company or any Company Subsidiary;
(v) all other tangible or intangible proprietary information and materials owned in whole or in part by Companythe Company or any Company Subsidiary; and
(vi) all license and other rights held by the Company or any Company Subsidiary in any third party product, intellectual property, proprietary or personal rights, documentation, or tangible or intangible property, including without limitation the types of intellectual property and tangible and intangible proprietary information described in (i) through (v) above; that are being, and/or have been, used, or are currently under development for use, in the business of Company as it has been, is currently or is currently anticipated also Assets being transferred pursuant to be (up to the Closing), conductedthis Agreement. Company Intellectual Property described in clauses (i) to (v) above is referred to herein as "Company Owned Intellectual Property" and the Company Intellectual Property described in clause (vi) above is referred to herein as "Company Licensed Intellectual Property". ." Unless otherwise noted, all references to "Company Intellectual Property" shall refer to both Company Owned Intellectual Property and Company Licensed Intellectual Property.
(b) The Company Section 4.15 of the Transferred Divisions Disclosure Schedule lists: (i) all patents, registered copyrights, mask works, trademarks, registered and material unregistered trademarks and service marks, trade dress, any renewal rights for any of the foregoing, marks and any applications and registrations for any of the foregoing, that are included in the Company Owned Intellectual Property; (ii) all hardware products and tools, software products and tools, and services that are currently published, offered, or under development by Company; (iii) all material licenses, sublicenses and other agreements to which the Company or any Company Subsidiary is a party and pursuant to which any other person is authorized to have access to or use the Company Owned Intellectual Property or exercise any other right with regard theretothereto (except standard form, unmodified end user license agreements as they existed from time to time and dealer/distributor agreements for the Company's and the Company Subsidiaries' commercially distributed products, entered into between the Company or any Company Subsidiary and the end users of the Company products in the ordinary course of business); and (iviii) all material Company Licensed Intellectual Property (other than license agreements for standard "shrink wrapped, off the shelf," commercially available, third party products used by the CompanyCompany or any Company Subsidiary but including any software tools or "open source" licenses); and (v) any obligations of exclusivity, noncompetition, nonsolicitation, or first negotiation with respect to Company Intellectual Property to which Company is subject under any agreement that does not fall within the ambit of (iii) or (iv) above.
(c) The Company Intellectual Property consists solely of items and rights that are either: (i) owned by Companythe Company or any Company Subsidiary, (ii) in the public domain, or (iii) rightfully used and authorized for use by the Company or any Company Subsidiary and its their successors pursuant to a valid license or other agreement. The Company has and each of the Company Subsidiaries have all rights in the Company Intellectual Property reasonably necessary to carry out the Company's current, and, to the knowledge of the Company, anticipated future (up to the Closing) and each Company Subsidiaries' current activities and has or had all rights in the Company Intellectual Property reasonably necessary to carry out the Company's and each Company Subsidiaries' former activities, including without limitation, if necessary to carry out such activities, rights to make, use, exclude others from using, reproduce, modify, adapt, create derivative works based on, translate, distribute (directly and indirectly), transmit, display and perform publicly, license, rent, lease, assign, and sell the Company Owned Intellectual Property in all geographic locations and fields of use, and to sublicense any or all such rights to third parties, including the right to grant further sublicenses.
(d) The Company is and the Company Subsidiaries are not, nor as a result of the execution or delivery of this Agreement, or performance of the Company's obligations hereunder, will the Company or any Company Subsidiary be, in a material violation of any license, sublicense or other agreement relating to the Company Intellectual Property to which the Company or any Company Subsidiary is a party or otherwise bound. Except pursuant to the terms of the agreements listed in the Company Transferred Divisions Disclosure Schedule, the Company is and the Company Subsidiaries are not obligated to provide any consideration (whether financial or otherwise) to any third party, nor is any third party otherwise entitled to any considerationconsideration from the Company or any Company Subsidiary, with respect to any exercise of rights by the Company or its any Company Subsidiary or their successors in the Company Intellectual Property.
(e) The use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any Company Owned Intellectual Property by Company and its Licensees or any other authorized exercise of rights in or to the Company Owned Intellectual Property by the Company or its licensees does not and will not infringe any copyright, patent, trade secret, trademark, service ▇▇▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, right of publicity or right in personal or other data of any person. Further, the authorized use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any Company Licensed Intellectual Property by Company Subsidiary or its licensees or any other authorized exercise of rights in or to the Company Licensed Intellectual Property by Company or its their licensees does not and will not infringe any copyright, patent, trade secret, trademark, service ▇▇▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, right of publicity or right in personal or other data of any person. No claims (i) challenging the validity, effectiveness, or ownership by the Company or any Company Subsidiary of any of the Company Owned Intellectual Property, or (ii) to the effect that the use, reproduction, modification, manufacturing, distribution, licensing, sublicensing, sale or any other exercise of rights in any Company Owned Intellectual Property by the Company or its any Company Subsidiary or their licensees infringes, or will infringe on, any intellectual property or other proprietary or personal right of any person, have been asserted or, to the knowledge of Company, are threatened by any person nor, to the knowledge of the Company, are there any valid grounds for any bona fide claim of any such kind. All granted or issued patents and all registered trademarks listed on the Transferred Divisions Disclosure Schedule and all copyright registrations held by the Company or any Company Subsidiary are valid, enforceable and subsisting. To the knowledge of the Company, there is no unauthorized use, infringement or misappropriation of any of the Company Owned Intellectual Property by any third party, employee or former employee.
(f) No Except as set forth in Section 4.15(f) of the Transferred Divisions Disclosure Schedule, no parties other than the Company or any Company Subsidiary possess any current or contingent rights to any source code that is part of the Company Owned Intellectual Property (including, without limitation, through any escrow account).
(g) The Company Section 4.15(g) of the Transferred Divisions Disclosure Schedule lists all parties who have created any material portion of, or otherwise have any rights in or to, the Company Owned Intellectual Property other than employees of the Company and any Company Subsidiary whose work product was created by them entirely within the scope of their employment by the Company or any Company Subsidiary. The Company and constitutes works made for hire owned by Company. the Company has Subsidiaries have secured from all parties who have created any material portion of, or otherwise have any rights in or to, the Company Owned Intellectual Property valid and enforceable written assignments or licenses of any such work or other rights to the Company and has the Company Subsidiaries and have provided Purchaser access to true and complete copies of such assignments or licenses to Parentlicenses.
(h) The Company Section 4.15(h) of the Transferred Divisions Disclosure Schedule includes a true and complete list of all support and or maintenance agreements relating to Company Owned Intellectual Property or to which the Company or any Company Subsidiary is a party as to Company Licensed Intellectual Property including the identity Property.
(i) Except as set forth in Section 4.15(i) of the parties Transferred Divisions Disclosure Schedule, the Company and the respective dates of Company Subsidiaries have entered into written agreements with employees and third parties with whom the Company or any Company Subsidiary has (i) shared material confidential or proprietary information concerning the Assets or the Product Lines businesses, or (ii) received from others confidential or proprietary information which the Company or any Company Subsidiary is obligated to treat as confidential, which the Assumed Contracts require such agreementsemployees and third parties to keep such information confidential in accordance with their terms.
Appears in 1 contract
Sources: Asset Purchase Agreement (Eagle Point Software Corp)
Technology and Intellectual Property Rights. (ai) The "Company Duck Intellectual Property" consists of the following:
(i) : all patents, trademarks, trade names, service marks, mask works, domain names, copyrights and any renewal rights, applications and registrations for any of the foregoing, and all trade dress, net lists, schematics, technology, manufacturing processes, supplier lists, trade secrets, know-how, moral rights, computer software programs or applications (in both source and object code form) owned by Company;
(ii) Duck; C all goodwill associated with trademarks, trade names service marks and trade dress owned by Company;
(iii) Duck; D all software and firmware listings, and updated software source code, and complete system build software and instructions related to all software described herein owned by Company;
(iv) Duck; E all documents, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing or customer support for all intellectual property described herein owned by Company;
(v) Duck; F all other tangible or intangible proprietary information and materials owned by CompanyDuck; and
(vi) and G all license and other rights in any third party product, intellectual property, proprietary or personal rights, documentation, or tangible or intangible property, including without limitation the types of intellectual property and tangible and intangible proprietary information described in (iA) through (vE) above; above that are being, and/or have been, used, or are currently under development for use, in the business of Company Duck as it has been, is currently or is currently anticipated to be (up to the Closing), conducted. Company Duck Intellectual Property described in clauses (iA) to (vE) above is referred to herein as "Company Duck Owned Intellectual Property" and Company Duck Intellectual Property described in clause (viF) above is referred to herein as "Company Duck Licensed Intellectual Property". ." Unless otherwise noted, all references to "Company Duck Intellectual Property" shall refer to both Company Duck Owned Intellectual Property and Company Duck Licensed Intellectual Property.
(bii) The Company Disclosure Schedule SCHEDULE 3.01(f) lists: (i) all patents, registered copyrights, mask works, trademarks, service marks, trade dress, any renewal rights for any of the foregoing, and any applications and registrations for any of the foregoing, that are included in the Company Duck Owned Intellectual Property; (ii) all hardware products and tools, software products and tools, and services that are currently published, offered, or under development by CompanyDuck; (iii) all material licenses, sublicenses and other agreements to which Company Duck is a party and pursuant to which any other person is authorized to have access to or use the Company Duck Owned Intellectual Property or exercise any other right with regard thereto; and (iv) all Company Duck Licensed Intellectual Property (other than license agreements for standard "shrink wrapped, off the shelf," commercially available, third party products used by the CompanyDuck); . The disclosures described in (iii), (iv) and (v) any obligations hereof include the names and dates of exclusivitythe relevant agreements, noncompetition, nonsolicitation, or first negotiation with respect to Company Intellectual Property to which Company is subject under any agreement that does not fall within as well as the ambit identities of the parties thereto.
(iii) or (iv) above.
(c) The Company Duck Intellectual Property consists solely of items and rights that are either: (i) owned by CompanyDuck, (ii) in the public domain, or (iii) rightfully used and authorized for use by Company Duck and its successors pursuant to a valid license or other agreement. Company Duck has all rights in the Company Duck Intellectual Property reasonably necessary to carry out CompanyDuck's current, and, to the knowledge of the Company, and anticipated future (up to the Closing) activities and has or had all rights in the Company Duck Intellectual Property reasonably necessary to carry out CompanyDuck's former activities, including without limitation, if necessary to carry out such activities, rights to make, use, exclude others from using, reproduce, modify, adapt, create derivative works based on, translate, distribute (directly and indirectly), transmit, display and perform publicly, license, rent, lease, assign, and sell the Company Owned Duck Intellectual Property in all geographic locations and fields of use, and to sublicense any or all such rights to third parties, including the right to grant further sublicenses. All material software and firmware listings that are part of the Duck Owned Intellectual Property are adequately commented in accordance with current software industry standards.
(div) Company Duck is not, nor as a result of the execution or delivery of this Agreement, or performance of CompanyDuck's obligations hereunder, will Company Duck be, in a material violation of any license, sublicense or other agreement relating to the Company Duck Intellectual Property to which Company Duck is a party or otherwise bound. Except pursuant to the terms of the agreements listed in the Company Disclosure Scheduleon SCHEDULE 3.01(f), Company Duck is not obligated to provide any consideration (whether financial or otherwise) to any third party, nor is any third party otherwise entitled to any consideration, with respect to any exercise of rights by Company Duck or its successors in the Company Duck Intellectual Property.
(ev) The To the knowledge of Duck, the use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any Company Duck Owned Intellectual Property by Company and its Licensees or any other authorized exercise of rights in or to the Company Duck Owned Intellectual Property by Company Duck or its licensees does not and will not infringe any copyright, patent, trade secret, trademark, service ▇▇▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, right of publicity or right in personal or other data of any person. Further, to the authorized knowledge of Duck, the use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any Company Duck Licensed Intellectual Property by Company or its licensees or any other authorized exercise of rights in or to the Company Duck Licensed Intellectual Property by Company Duck or its licensees does not and will not infringe any copyright, patent, trade secret, trademark, service ▇▇▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, right of publicity or right in personal or other data of any person. No Except as set forth on SCHEDULE 3.01(f), no claims (i) challenging the validity, effectiveness, or ownership by Company Duck of any of the Company Duck Owned Intellectual Property, or (ii) to the effect that the use, reproduction, modification, manufacturing, distribution, licensing, sublicensing, sale or any other exercise of rights in any Company Duck Owned Intellectual Property by Company Duck or its licensees infringes, or will infringe on, any intellectual property or other proprietary or personal right of any person, have been asserted or, to the knowledge of CompanyDuck, are threatened by any person nor, to the knowledge of the CompanyDuck, are there any valid grounds for any bona fide claim of any such kind. All granted or issued patents and mask works and all registered trademarks listed on the Duck Disclosure Schedule and all copyright registrations held by Duck are valid, enforceable and subsisting. To the knowledge of CompanyDuck, there is no material unauthorized use, infringement or misappropriation of any of the Company Duck Owned Intellectual Property by any third party, employee or former employee.
(fvi) No Except as set forth on SCHEDULE 3.01(f), no parties other than Company Duck possess any current or contingent rights to any source code that is part of the Company Duck Owned Intellectual Property (including, without limitation, through any escrow account).
(gvii) The Company Disclosure Schedule SCHEDULE 3.01(f) lists all parties who have created any material portion of, or otherwise have any rights in or to, the Company Duck Owned Intellectual Property other than employees of Company Duck whose work product was created by them entirely within the scope of their employment by Company Duck and constitutes works made for hire owned by CompanyDuck. Company Duck has secured from all parties who have created any material portion of, or otherwise have any rights in or to, the Company Duck Owned Intellectual Property valid and enforceable written assignments or licenses of any such work or other rights to Company Duck and has provided true and complete copies of such assignments or licenses to Parent.
(hviii) The Company Disclosure Schedule SCHEDULE 3.01(f) includes a true and complete list of support and maintenance agreements relating to Company Duck Owned Intellectual Property or to which Company Duck is a party as to Company Duck Licensed Intellectual Property including the identity of the parties and the respective dates of such agreementsagreements and remedies for their breach.
(ix) Duck has obtained legally binding written agreements from all employees and third parties with whom Duck has shared confidential proprietary information (i) of Duck, or (ii) received from others which Duck is obligated to treat as confidential, which agreements require such employees and third parties to keep such information confidential.
(x) Duck has obtained any and all necessary consents from consumers with regard to Duck's collection and dissemination of personal consumer information in accordance with Duck's privacy policy as published on its website. Duck's practices regarding the collection and use of consumer personal information are in accordance with Duck's privacy policy as published on its website.
(xi) To the knowledge of Duck, the Duck Owned Intellectual Property is, and any products manufactured and commercially released by Duck or currently under development, are fully Year 2000 Compliant in all material respects and will not cease to be fully Year 2000 Compliant in any material respect at any time prior to, during or after the calendar year 2000. To the best of Duck's knowledge, the Duck Licensed Intellectual Property is fully Year 2000 Compliant in all material respects and will not cease to be fully Year 2000 Compliant in any material respect at any time prior to, during or after the calendar year 2000. SCHEDULE 3.01(f) sets forth the tests, inquiries and other activities undertaken by Duck up to Closing, with respect to the Year 2000 Compliant nature of any and all Duck Licensed Intellectual Property. For the purposes of this Agreement, "Year 2000 Compliant" means that neither the performance nor the functionality of the applicable Duck Intellectual Property or applicable product is or will be materially affected by dates prior to, during or after the calendar year 2000 and in particular (but without limitation): A such Duck Intellectual Property or product accurately receives, provides and processes, and will accurately receive, provide and process, date/time data (including calculating, comparing and sequencing) from, into and between the twentieth and twenty-first centuries, including calendar years 1999 and 2000; B such Duck Intellectual Property or product will not malfunction, cease to function, provide invalid or incorrect results or cause any interruption in the operation of the business of Duck as a result of any date/time dat C data-based functionality of such Duck Intellectual Property or product behaves and will continue to behave consistently for dates prior to, during and after the year 2000; D in all interfaces and data storage of such Duck Intellectual Property or product, the century in any date is and will be specified either explicitly or by unambiguous algorithms or inferencing rules; and E the year 2000 is and will be recognized as a leap year of such Duck Intellectual Property or product.
Appears in 1 contract
Sources: Merger Agreement (On2com Inc)
Technology and Intellectual Property Rights. (ai) The "Company Duck Intellectual Property" consists of the following:
(i) : all patents, trademarks, trade names, service marks, mask works, domain names, copyrights and any renewal rights, applications and registrations for any of the foregoing, and all trade dress, net lists, schematics, technology, manufacturing processes, supplier lists, trade secrets, know-how, moral rights, computer software programs or applications (in both source and object code form) owned by Company;
(ii) Duck; C all goodwill associated with trademarks, trade names service marks and trade dress owned by Company;
(iii) Duck; D all software and firmware listings, and updated software source code, and complete system build software and instructions related to all software described herein owned by Company;
(iv) Duck; E all documents, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing or customer support for all intellectual property described herein owned by Company;
(v) Duck; F all other tangible or intangible proprietary information and materials owned by CompanyDuck; and
(vi) and G all license and other rights in any third party product, intellectual property, proprietary or personal rights, documentation, or tangible or intangible property, including without limitation the types of intellectual property and tangible and intangible proprietary information described in (iA) through (vE) above; above that are being, and/or have been, used, or are currently under development for use, in the business of Company Duck as it has been, is currently or is currently anticipated to be (up to the Closing), conducted. Company Duck Intellectual Property described in clauses (iA) to (vE) above is referred to herein as "Company Duck Owned Intellectual Property" and Company Duck Intellectual Property described in clause (viF) above is referred to herein as "Company Duck Licensed Intellectual Property". ." Unless otherwise noted, all references to "Company Duck Intellectual Property" shall refer to both Company Duck Owned Intellectual Property and Company Duck Licensed Intellectual Property.
(bii) The Company Disclosure Schedule SCHEDULE 3.01(f) lists: (i) all patents, registered copyrights, mask works, trademarks, service marks, trade dress, any renewal rights for any of the foregoing, and any applications and registrations for any of the foregoing, that are included in the Company Duck Owned Intellectual Property; (ii) all hardware products and tools, software products and tools, and services that are currently published, offered, or under development by CompanyDuck; (iii) all material licenses, sublicenses and other agreements to which Company Duck is a party and pursuant to which any other person is authorized to have access to or use the Company Duck Owned Intellectual Property or exercise any other right with regard thereto; and (iv) all Company Duck Licensed Intellectual Property (other than license agreements for standard "shrink wrapped, off the shelf," commercially available, third party products used by the CompanyDuck); . The disclosures described in (iii), (iv) and (v) any obligations hereof include the names and dates of exclusivitythe relevant agreements, noncompetition, nonsolicitation, or first negotiation with respect to Company Intellectual Property to which Company is subject under any agreement that does not fall within as well as the ambit identities of the parties thereto.
(iii) or (iv) above.
(c) The Company Duck Intellectual Property consists solely of items and rights that are either: (i) owned by CompanyDuck, (ii) in the public domain, or (iii) rightfully used and authorized for use by Company Duck and its successors pursuant to a valid license or other agreement. Company Duck has all rights in the Company Duck Intellectual Property reasonably necessary to carry out CompanyDuck's current, and, to the knowledge of the Company, and anticipated future (up to the Closing) activities and has or had all rights in the Company Duck Intellectual Property reasonably necessary to carry out CompanyDuck's former activities, including without limitation, if necessary to carry out such activities, rights to make, use, exclude others from using, reproduce, modify, adapt, create derivative works based on, translate, distribute (directly and indirectly), transmit, display and perform publicly, license, rent, lease, assign, and sell the Company Owned Duck Intellectual Property in all geographic locations and fields of use, and to sublicense any or all such rights to third parties, including the right to grant further sublicenses. All material software and firmware listings that are part of the Duck Owned Intellectual Property are adequately commented in accordance with current software industry standards.
(div) Company Duck is not, nor as a result of the execution or delivery of this Agreement, or performance of CompanyDuck's obligations hereunder, will Company Duck be, in a material violation of any license, sublicense or other agreement relating to the Company Duck Intellectual Property to which Company Duck is a party or otherwise bound. Except pursuant to the terms of the agreements listed in the Company Disclosure Scheduleon SCHEDULE 3.01(f), Company Duck is not obligated to provide any consideration (whether financial or otherwise) to any third party, nor is any third party otherwise entitled to any consideration, with respect to any exercise of rights by Company Duck or its successors in the Company Duck Intellectual Property.
(ev) The To the knowledge of Duck, the use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any Company Duck Owned Intellectual Property by Company and its Licensees or any other authorized exercise of rights in or to the Company Duck Owned Intellectual Property by Company Duck or its licensees does not and will not infringe any copyright, patent, trade secret, trademark, service ▇▇▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, right of publicity or right in personal or other data of any person. Further, to the authorized knowledge of Duck, the use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any Company Duck Licensed Intellectual Property by Company or its licensees or any other authorized exercise of rights in or to the Company Duck Licensed Intellectual Property by Company Duck or its licensees does not and will not infringe any copyright, patent, trade secret, trademark, service ▇▇▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, right of publicity or right in personal or other data of any person. No Except as set forth on SCHEDULE 3.01(f), no claims (i) challenging the validity, effectiveness, or ownership by Company Duck of any of the Company Duck Owned Intellectual Property, or (ii) to the effect that the use, reproduction, modification, manufacturing, distribution, licensing, sublicensing, sale or any other exercise of rights in any Company Duck Owned Intellectual Property by Company Duck or its licensees infringes, or will infringe on, any intellectual property or other proprietary or personal right of any person, have been asserted or, to the knowledge of CompanyDuck, are threatened by any person nor, to the knowledge of the CompanyDuck, are there any valid grounds for any bona fide claim of any such kind. All granted or issued patents and mask works and all registered trademarks listed on the Duck Disclosure Schedule and all copyright registrations held by Duck are valid, enforceable and subsisting. To the knowledge of CompanyDuck, there is no material unauthorized use, infringement or misappropriation of any of the Company Duck Owned Intellectual Property by any third party, employee or former employee.
(fvi) No Except as set forth on SCHEDULE 3.01(f), no parties other than Company Duck possess any current or contingent rights to any source code that is part of the Company Duck Owned Intellectual Property (including, without limitation, through any escrow account).
(gvii) The Company Disclosure Schedule SCHEDULE 3.01(f) lists all parties who have created any material portion of, or otherwise have any rights in or to, the Company Duck Owned Intellectual Property other than employees of Company Duck whose work product was created by them entirely within the scope of their employment by Company Duck and constitutes works made for hire owned by CompanyDuck. Company Duck has secured from all parties who have created any material portion of, or otherwise have any rights in or to, the Company Duck Owned Intellectual Property valid and enforceable written assignments or licenses of any such work or other rights to Company Duck and has provided true and complete copies of such assignments or licenses to Parent.
(hviii) The Company Disclosure Schedule SCHEDULE 3.01(f) includes a true and complete list of support and maintenance agreements relating to Company Duck Owned Intellectual Property or to which Company Duck is a party as to Company Duck Licensed Intellectual Property including the identity of the parties and the respective dates of such agreementsagreements and remedies for their breach.
(ix) Duck has obtained legally binding written agreements from all employees and third parties with whom Duck has shared confidential proprietary information (i) of Duck, or (ii) received from others which Duck is obligated to treat as confidential, which agreements require such employees and third parties to keep such information confidential.
(x) Duck has obtained any and all necessary consents from consumers with regard to Duck's collection and dissemination of personal consumer information in accordance with Duck's privacy policy as published on its website. Duck's practices regarding the collection and use of consumer personal information are in accordance with Duck's privacy policy as published on its website.
(xi) To the knowledge of Duck, the Duck Owned Intellectual Property is, and any products manufactured and commercially released by Duck or currently under development, are fully Year 2000 Compliant in all material respects and will not cease to be fully Year 2000 Compliant in any material respect at any time prior to, during or after the calendar year 2000. To the best of Duck's knowledge, the Duck Licensed Intellectual Property is fully Year 2000 Compliant in all material respects and will not cease to be fully Year 2000 Compliant in any material respect at any time prior to, during or after the calendar year 2000. SCHEDULE 3.01(f) sets forth the tests, inquiries and other activities undertaken by Duck up to Closing, with respect to the Year 2000 Compliant nature of any and all Duck Licensed Intellectual Property. For the purposes of this Agreement, "Year 2000 Compliant" means that neither the performance nor the functionality of the applicable Duck Intellectual Property or applicable product is or will be materially affected by dates prior to, during or after the calendar year 2000 and in particular (but without limitation): A such Duck Intellectual Property or product accurately receives, provides and processes, and will accurately receive, provide and process, date/time data (including calculating, comparing and sequencing) from, into and between the twentieth and twenty-first centuries including calendar years 1999 and 2000; B such Duck Intellectual Property or product will not malfunction, cease to function, provide invalid or incorrect results or cause any interruption in the operation of the business of Duck as a result of any date/time dat C data-based functionality of such Duck Intellectual Property or product behaves and will continue to behave consistently for dates prior to, during and after the year 2000; D in all interfaces and data storage of such Duck Intellectual Property or product, the century in any date is and will be specified either explicitly or by unambiguous algorithms or inferencing rules; and E the year 2000 is and will be recognized as a leap year of such Duck Intellectual Property or product.
Appears in 1 contract
Sources: Merger Agreement (On2com Inc)
Technology and Intellectual Property Rights. (a) The "Company Intellectual PropertyDMI INTELLECTUAL PROPERTY" consists of the following:
(i) all patents, trademarks, trade names, service marks, mask works, domain names, copyrights and any renewal rights, applications and registrations for any of the foregoing, and all trade dress, net lists, schematics, technology, manufacturing processes, supplier lists, trade secrets, know-how, moral rights, computer software programs or applications (in both source and object code form) owned by CompanyDMI;
(ii) all goodwill associated with trademarks, trade names service marks and trade dress owned by CompanyDMI;
(iii) all software and firmware listings, and updated software source code, and complete system build software and instructions related to all software described herein owned by CompanyDMI;
(iv) all documents, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing or customer support for all intellectual property described herein owned by Company;
DMI; (v) all other tangible or intangible proprietary information and materials owned by CompanyDMI; and
(vi) all license and other rights in any third party product, intellectual property, proprietary or personal rights, documentation, or tangible or intangible property, including without limitation the types of intellectual property and tangible and intangible proprietary information described in (i) through (v) above; that are being, and/or have been, used, or are currently under development for use, in the business of Company DMI as it has been, is currently or is currently anticipated to be (up to the Closing), conducted. Company DMI Intellectual Property described in clauses (i) to (v) above is referred to herein as "Company Owned Intellectual PropertyDMI OWNED INTELLECTUAL PROPERTY" and Company DMI Intellectual Property described in clause (vi) above is referred to herein as "Company Licensed Intellectual PropertyDMI LICENSED INTELLECTUAL PROPERTY". Unless otherwise noted, all references to "Company DMI Intellectual Property" shall refer to both Company DMI Owned Intellectual Property and Company DMI Licensed Intellectual Property.
(b) The Company DMI Disclosure Schedule lists: (i) all patents, registered copyrights, mask works, trademarks, service marks, trade dress, any renewal rights for any of the foregoing, and any applications and registrations for any of the foregoing, that are included in the Company DMI Owned Intellectual Property; (ii) all hardware products and tools, software products and tools, and services that are currently published, offered, or under development by CompanyDMI; (iii) all licenses, sublicenses and other agreements to which Company DMI is a party and pursuant to which any other person is authorized to have access to or use the Company DMI Owned Intellectual Property or exercise any other right with regard thereto; (iv) all Company DMI Licensed Intellectual Property (other than license agreements for standard "shrink wrapped, off the shelf," commercially available, third party products used by the CompanyDMI); and (v) any obligations of exclusivity, noncompetition, nonsolicitation, or first negotiation with respect to Company Intellectual Property to which Company DMI is subject under any agreement that does not fall within the ambit of (iii) or (iv) above.
(c) The Company DMI Intellectual Property consists solely of items and rights that are either: (i) owned by CompanyDMI, (ii) in the public domain, or (iii) rightfully used and authorized for use by Company DMI and its successors pursuant to a valid license or other agreement. Company DMI has all rights in the Company DMI Intellectual Property reasonably necessary to carry out CompanyDMI's current, and, to the knowledge of the Company, and anticipated future (up to the Closing) activities and has or had all rights in the Company DMI Intellectual Property reasonably necessary to carry out CompanyDMI's former activities, including without limitation, if necessary to carry out such activities, rights to make, use, exclude others from using, reproduce, modify, adapt, create derivative works based on, translate, distribute (directly and indirectly), transmit, display and perform publicly, license, rent, lease, assign, and sell the Company Owned DMI Intellectual Property in all geographic locations and fields of use, and to sublicense any or all such rights to third parties, including the right to grant further sublicenses. All software and firmware listings that are part of the DMI Owned Intellectual Property are adequately commented in accordance with current software industry standards.
(d) Company DMI is not, nor as a result of the execution or delivery of this Agreement, or performance of CompanyDMI's obligations hereunder, will Company DMI be, in a material violation of any license, sublicense or other agreement relating to the Company DMI Intellectual Property to which Company DMI is a party or otherwise bound. Except pursuant to the terms of the agreements listed in the Company DMI Disclosure Schedule, Company DMI is not obligated to provide any consideration (whether financial or otherwise) to any third party, nor is any third party otherwise entitled to any consideration, with respect to any exercise of rights by Company DMI or its successors in the Company DMI Intellectual Property.
(e) The use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any Company DMI Owned Intellectual Property by Company and its Licensees or any other authorized exercise of rights in or to the Company DMI Owned Intellectual Property by Company DMI or its licensees does not and, and to DMI's knowledge, will not infringe any copyright, patent, trade secret, trademark, service ▇▇▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, right of publicity or right in personal or other data of any person. Further, to the authorized knowledge of DMI, the use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any Company DMI Licensed Intellectual Property by Company or its licensees or any other authorized exercise of rights in or to the Company DMI Licensed Intellectual Property by Company DMI or its licensees does not and will not infringe any copyright, patent, trade secret, trademark, service ▇▇▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, right of publicity or right in personal or other data of any person. No claims (i) challenging the validity, effectiveness, or ownership by Company DMI of any of the Company DMI Owned Intellectual Property, or (ii) to the effect that the use, reproduction, modification, manufacturing, distribution, licensing, sublicensing, sale or any other exercise of rights in any Company DMI Owned Intellectual Property by Company DMI or its licensees infringes, or will infringe on, any intellectual property or other proprietary or personal right of any person, have been asserted or, to the knowledge of CompanyDMI, are threatened by any person nor, to the knowledge of the CompanyDMI, are there any valid grounds for any bona fide claim of any such kind. All granted or issued patents and mask works and all registered trademarks listed on the DMI Disclosure Schedule and all copyright registrations held by DMI are valid, enforceable and subsisting. To the knowledge of CompanyDMI, there is no unauthorized use, infringement or misappropriation of any of the Company DMI Owned Intellectual Property by any third party, employee or former employee.
(f) No parties other than Company DMI possess any current or contingent rights to any source code that is part of the Company DMI Owned Intellectual Property (including, without limitation, through any escrow account).
(g) The Company DMI Disclosure Schedule lists all parties who have created any material portion of, or otherwise have any rights in or to, the Company DMI Owned Intellectual Property other than employees of Company DMI whose work product was created by them entirely within the scope of their employment by Company DMI and constitutes works made for hire owned by CompanyDMI. Company DMI has secured from all parties who have created any material portion of, or otherwise have any rights in or to, the Company DMI Owned Intellectual Property valid and enforceable written assignments or licenses of any such work or other rights to Company DMI and has provided true and complete copies of such assignments or licenses to ParentOnHealth.
(h) The Company DMI Disclosure Schedule includes a true and complete list of support and maintenance agreements relating to Company DMI Owned Intellectual Property or to which Company DMI is a party as to Company DMI Licensed Intellectual Property including the identity of the parties and the respective dates of such agreementsagreements and remedies for their breach.
(i) DMI has obtained legally binding written agreements from all third parties with whom DMI has shared confidential proprietary information (i) of DMI, or (ii) received from others which DMI is obligated to treat as confidential, which agreements require such third parties to keep such information confidential.
(j) DMI has obtained any and all necessary consents from consumers with regard to the DMI's collection and dissemination of personal consumer information in accordance with DMI's privacy policy as published on its
Appears in 1 contract
Sources: Agreement and Plan of Reorganization (Onhealth Network Co)