LICENSE & TRANSFER AGREEMENT
Exhibit
10.1
LICENSE
& TRANSFER AGREEMENT
THIS
LICENSE AND TRANSFER AGREEMENT (this “Agreement”) is effective as of April 15,
2007, by and between ▇▇▇▇▇ & Company, Inc., an OHIO corporation
(''LICENSOR''), and Guardian Zone Technologies, Inc., a Delaware corporation
(''LICENSEE'').
RECITALS
WHEREAS,
LICENSOR currently owns the common law and/or registered copyright and
service/trade marks and related marks and intellectual property rights in the
brand names and designations (collectively ''Licensed Property'') created by
LICENSOR specifically for use in LICENSEE’s wireless location products business
(the “Business”);
WHEREAS,
the parties desire that LICENSEE have the right to use the Licensed Property
in
the Territory (as hereinafter defined) pursuant to the provisions of this
Agreement and further, upon full payment to LICENSOR for creation of the
Licensed Property, LICENSEE should be the rightful owner of all such Licensed
Property going forward.
NOW,
THEREFORE, in consideration of the mutual provisions herein, the sufficiency
of
which is hereby acknowledged, the parties agree as follows:
AGREEMENT
ARTICLE
1 - GRANT OF LICENSE
1.1.1
Perpetual
License to use Licensed
Property.
LICENSOR
grants to LICENSEE an exclusive, non-transferable, indivisible, perpetual
license (the “License”) to use the Licensed Property in any respect related to
the operation, management and advertisement of LICENSEE’s Business worldwide
(the “Territory”), provided LICENSEE properly complies with all the provisions
of this Agreement.
1.1.2
Licensed
Property.
The
term
''Licensed Property'' shall mean LICENSOR’s copyrights and service/trade and
related marks and intellectual property rights listed in Exhibit
A,
attached hereto and fully incorporated herein.
ARTILE
2 - CONSIDERATION; TRANSFER OF MARKS
2.1
Consideration for License.
The
parties hereby agree that LICENSEE has already provided good and valuable
consideration to LICENSOR for the License granted hereunder.
2.2
Transfer
of Licensed Property.
The
parties hereby agree that, effective as of the date that full and complete
payment is made by LICENSEE to LICENSOR of $78,759.00 (Seventy Eight Thousand
Seven Hundred Fifty Nine Dollars), which is the balance of the money owed to
LICENSOR with respect to the creation of the brands related to LICENSEE’s
Business, LICENSOR shall
forever
sell, assign, transfer, release and convey to LICENSEE, and its successors
and
assigns, LICENSOR's entire right, title and interest in and to all copyrights,
service and/or trade marks, all rights of authorship and all other intellectual
property rights in the Licensed Property and all physical embodiments and copies
thereof. The foregoing transfer shall take place automatically and, except
as
otherwise provided in this Section 2.2, without any further action required
on
the part of either party hereto. LICENSOR further agrees, promptly upon request
of the LICENSEE, or any of its successors or assigns, to execute and deliver,
without further compensation of any kind, any power of attorney, assignment,
application for copyright, service or trademark, patent or other intellectual
property right protection, or any other documents which may be necessary or
desirable to fully secure to LICENSEE, its successors and assigns, all right,
title and interest in and to the Licensed Property and all physical embodiments
and copies thereof, and to cooperate and assist in the prosecution of any
opposition proceedings involving said rights and any adjudication of the same.
Further, following the transfer of the Licensed Property to LICENSEE pursuant
to
this Section 2.2, LICENSOR agrees never to assert any claims, rights or moral
rights in or to the Licensed Property or any physical embodiments or copies
thereof.
ARTICLE
3 - REPRESENTATIONS AND WARRANTIES; INFRINGEMENT
3.1
Licensor’s Representations and Warranties.
LICENSOR
represents and warrants to LICENSEE that: (i) LICENSOR has the right to furnish
the Licensed Property, such Licensed Property does not and will not infringe
any
third party intellectual property rights, and LICENSOR will provide the Licensed
Property hereunder free of all liens, claims, encumbrances and other
restrictions; and (ii) LICENSEE shall be entitled to use and enjoy the benefit
of the Licensed Property, subject to and in accordance with the terms of this
Agreement.
3.2 Intellectual
Property Infringement.
a. LICENSOR
agrees to defend and/or handle, at its own expense, any claim or action against
LICENSEE for actual or alleged infringement of any
intellectual
or industrial property right, including, without limitation, trademarks, service
marks, patents, copyrights, misappropriation of trade secrets or any similar
proprietary rights on the Licensed Property furnished hereunder by LICENSOR
or
based on LICENSEE’s use thereof. LICENSOR further agrees to indemnify and hold
LICENSEE harmless from and against any and all liabilities, losses, costs,
damages and expenses (including reasonable attorneys' fees) associated with
any
such claim or action. LICENSOR shall conduct the defense of any such claim
or
action, consistent with LICENSEE’s rights hereunder, all negotiations for its
settlement or compromise, unless otherwise mutually agreed to in writing;
provided, however, that LICENSEE may participate in such defense or settlement
negotiations and pay its own costs associated therewith.
b. If
any
portion of the Licensed Property becomes, or in LICENSOR's opinion is likely
to
become, the subject of any such claim or action, then LICENSOR,
at its
expense, may either: (i) procure for LICENSEE the right to continue using such
Licensed Property as contemplated hereunder; (ii) modify such Licensed Property
or portion thereof to render it non-infringing (provided such modification
does
not adversely affect LICENSEE's use as contemplated hereunder); or (iii) replace
such Licensed Property with equally suitable, functionally equivalent,
compatible, non-infringing products (provided that such products do not
adversely affect LICENSEE's use as contemplated hereunder). If none of the
foregoing are commercially practicable after LICENSOR
has exhausted
all reasonable efforts, LICENSEE shall be entitled to a pro-rata refund of
the
payments made by LICENSEE to LICENSOR
in
respect of such portion of the Licensed Property.
c. Notwithstanding
anything to the contrary in this Agreement, LICENSOR shall have no obligation
to
LICENSEE with respect to any action based on the combination or use of the
Licensed Property with other products not furnished by LICENSOR where the
Licensed Property otherwise would not itself be infringing.
ARTICLE
4 - OPERATIONS
4.1 Exclusive
Use of Licensed Property.
Throughout
the term of this Agreement and prior to the transfer provided in Section 2.2,
LICENSEE and its successors, transfers, and assigns, has the exclusive right
to
use the Licensed Property as determined by LICENSEE in its good faith business
judgment.
4.2 Operational
Expenses.
LICENSEE,
at its sole expense, shall pay for all operation, management, promotion,
marketing and any other expenses in any way associated with the use of the
Licensed Property in the Business.
ARTICLE
5 - ASSIGMENT
In
the
event LICENSEE or its agents develop or create logos, designs, or other artwork
to be used in conjunction with the License or the Licensed Property, all such
written and graphic materials, designs, logos, and other items (collectively
''Designs'') shall be the exclusive property of LICENSEE. In the event that
LICENSOR or its agents develop or create any additional Designs, such Designs
shall be a ''work-for-hire'' under the copyright laws of the United States,
and
LICENSEE shall be the sole author and owner of all such work. LICENSOR
irrevocably assigns and transfers
to
LICENSEE all right, title and interest worldwide in and to all such Designs,
and
to all modifications and derivative works thereof, and to all worldwide
intellectual property rights related thereto. Upon LICENSEE's request, LICENSOR
shall execute any and all assignments, applications and other documents, and
perform such acts as LICENSEE requests to obtain trademark, copyright or other
proprietary protection in any country in order to protect LICENSEE's interest
in
all such Designs. LICENSOR shall have the right to use the Designs only as
approved by LICENSEE.
ARTICLE
6 - TERMINATION
6.1 Grounds
for Termination.
Both
parties agree that it is an integral part of this Agreement that each party
observe certain high standards of conduct. As a result, each party has the
right
to terminate this Agreement upon thirty (30) days prior written notice for
any
of the following reasons: (i) the other party’s breach of any material provision
of this Agreement, which breach has not been cured during the thirty (30) day
notice period; (ii) the insolvency or bankruptcy of the other party; (iii)
a
violation of any applicable rule or law by the other party; (iv) and/or any
misrepresentation by the other party regarding the Licensed Property.
6.2 Cessation
of Use.
Upon
termination of this Agreement, the License to use the Licensed Property shall
automatically revert to LICENSOR, and, unless full payment is made pursuant
to
Section 2.2 of this Agreement, LICENSEE shall immediately cease using any of
the
Licensed Property, or any marks confusingly similar to the Licensed Property.
ARTICLE
7 - CONFIDENTIALITY
7.1 Confidentiality.
Each
party hereby acknowledges and agrees that prior to executing this Agreement
and/or during the performance of this Agreement, each party (in this Article
7,
a “Disclosing Party”) may disclose to the other party (in this Article 7, a
“Receiving Party”) confidential information regarding the Disclosing Party’s
business, marketing, customers, research and development activities and other
proprietary
information
(collectively ''Confidential Information''). The Receiving Party shall not
in
any way disclose, copy, modify, distribute, sell, or otherwise use or transfer
the Disclosing Party’s Confidential Information, or any part thereof, to any
other person or entity at any time. The Receiving Party shall not disclose
the
Confidential Information to any of its employees other than those who have
a
specific need to know in order to fulfill the Receiving Party's obligations
hereunder, and such employees shall be made aware of and shall be bound by
all
the provisions of this Agreement. The Receiving Party shall immediately notify
the Disclosing Party in writing if any of its employees fail to comply with
any
of the provisions of this Agreement, and the Receiving Party shall be fully
responsible for any damages caused by such failure to comply.
7.2 Restrictions.
The
Receiving Party shall only use the Disclosing Party's Confidential Information
in order to properly fulfill its obligations under this Agreement and, if to
a
party outside of this Agreement, only upon the prior written consent of the
Disclosing Party. The Receiving Party shall not in any way use any of the
Confidential Information in any other business or for any other purpose. Each
party agrees that all the provisions of this Article 7 are necessary to protect
the Confidential Information of the Disclosing Party and goodwill of each
party's business and its competitive position in the marketplace. Each party
hereby represents that these provisions will not prevent such party from
operating a successful business or earning a sufficient livelihood.
7.3 Exceptions.
Confidential
Information shall not include, and these confidentiality obligations shall
not
operate as a restriction on the Receiving Party's right to use, disclose, or
otherwise deal with, information which:
| · |
is
or becomes generally available to the public through no wrongful
act of
the Receiving Party or its employees or
agents;
|
| · |
was
in the Receiving Party's possession prior to the time it was acquired
from
the Disclosing Party and which was not directly or indirectly acquired
from the Disclosing Party or its
affiliates;
|
| · |
is
required to be disclosed by court order or operation of law, provided
the
Disclosing Party is notified immediately in order to contest such
disclosure and the Receiving Party takes reasonable steps to assist
in
contesting such request;
|
| · |
is
independently made available as a matter of right to the Receiving
Party
by a third party without access to the Disclosing Party’s Confidential
Information; or
|
| · |
is
independently developed by or for the Receiving Party by persons
not
having access or exposure to the Disclosing Party’s Confidential
Information.
|
ARTICLE
8 - GENERAL PROVISIONS
8.1 Entire
Agreement.
This
Agreement constitutes the entire agreement between the parties regarding the
subject matter hereof, and supersedes all prior and contemporaneous discussions
and writings between the parties.
8.2 Amendment.
This
Agreement can be modified only by a writing signed by both parties.
8.3 Assignment.
Neither
party may assign or transfer this Agreement without the other party’s prior
written consent.
8.4 Validity.
If
any
provision of this Agreement is held by a court of competent jurisdiction to
be
invalid, void or unenforceable, the remaining provisions shall remain in full
force and effect.
8.5 Governing
Law and Venue.
This
Agreement shall be interpreted and enforced according to the substantive laws
of
the State of Ohio and not its conflict or choice of law rules. Both parties
irrevocably submit to the jurisdiction of the state and/or federal courts in
Cuyahoga County, for any action or proceeding regarding this Agreement. Each
party waives all rights to object to the jurisdiction and venue set forth
above.
8.6 Counterparts.
This
Agreement may be executed in several counterparts, that will all be originals,
and together will constitute one and the same instrument.
8.7 Indemnity.
In
addition to the infringement indemnity contained in Article 3 hereof, each
party
(in this Section 8.7 the “Indemnifying Party”) shall indemnify, defend and hold
the other party harmless from all damages, liabilities, and other expenses,
including attorneys’ fees and costs, that in any way arise out of or relate to
the Indemnifying Party's breach of any provision of this Agreement, the
Indemnifying Party's use of the Licensed Property and/or any other obligations
or agreements that the Indemnifying Party enters into with third parties. This
Section shall survive any termination or expiration of this
Agreement.
8.8 Waiver.
The
waiver by either party of the other party's breach of any provision of this
Agreement shall not be deemed a waiver unless in writing and/or deemed a
continuing waiver, and shall not affect any subsequent breach of the same or
different provisions of this Agreement.
8.9 Relationship
of Parties.
The
relationship between the parties is only that of a licensor and licensee and
transferor and transferee. Neither party is the agent or legal representative
of
the other party and has no right or authority whatsoever to bind such party
in
any way.
IN
WITNESS WHEREOF, the parties execute this Agreement and agree it shall be
effective as of April 15, 2007.
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[▇▇▇▇▇
& Company Inc.]
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Guardian
Zone Technologies, Inc.
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By:
/s/
▇▇▇▇▇ ▇▇▇▇▇
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By:
/s/
▇▇▇▇▇▇ ▇. ▇▇▇▇
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||
|
Name:
▇▇▇▇▇
▇▇▇▇▇
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Name:
▇▇▇▇▇▇
▇. ▇▇▇▇
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||
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Title:
CEO
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Title:
President
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EXHIBIT
A
Guardians
Zone Technologies, Inc., Lost Prevention, Search and Rescue Systems
Brand:
Product line extensions to niche markets
1).
Hug
Bug
Home
unit
garden system
Hugs
for
kids
2).
Guardian Tracker
Find
kids
fast
3).
Invisible Guardian
Protecting
what you love most
4).
HUGS
Home
Unit
Guardian System
5).
Angel
Alert
Monitor
your babies' every move
6).
Guardian Care
Security
for those who need it most
7).
Community Alert
Silent
protection for neighborhood children
8).
Invisible Tracker
Find
lost
pets fast
9).
Park
Sheriff
Keeping
family together, away from home.
10).
the
FOUNDATION
At
national organization to prevent the loss of children.
Comprehensive
marketing strategy, brand extension, target market product development, public
relations support for patented technology and product introduction into select
mass markets.