EXCLUSIVE LICENSE AGREEMENT by and between MOBOT, INC., as Licensor and NEOMEDIA TECHNOLOGIES, INC., as Licensee December 5, 2006
Exhibit
16.5
by
and between
MOBOT,
INC., as Licensor
and
NEOMEDIA
TECHNOLOGIES, INC., as Licensee
December
5, 2006
CONTENTS
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1
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.
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Definitions
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1
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2
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.
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License
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3
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2.1
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Grant
of License
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3
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2.2
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Limitations
on Rights
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3
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2.3
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Modifications
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4
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3
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.
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Exclusive
Dealings and Restrictions
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4
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3.1
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Exclusivity
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4
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3.2
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Termination
of Exclusivity
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4
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3.3
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Restrictions
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4
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4
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Responsibilities
of Mobot
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4
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5
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Responsibilities
of Licensee
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5
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6
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.
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Fees
and Royalties
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6
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6.1
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Fees
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6
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6.2
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Payment
Terms
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6
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7
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.
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Promotion
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6
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7.1
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Licensee
Web Site
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6
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7.2
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Reference
by Mobot
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6
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7.3
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Branding
on Mobile Camera Devices
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7
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8
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Proprietary
Rights and Confidentiality
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7
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8.1
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Proprietary
Rights of Mobot
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7
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8.2
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Proprietary
Rights of Licensee
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7
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8.3
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Confidentiality
of Mobot Technology
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7
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8.4
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Mobot
Trademarks
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8
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8.5
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Confidentiality
of Licensee Technology
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8
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8.6
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Licensee
Trademarks
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9
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8.7
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Competitive
Technology
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9
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9
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Warranties
and Liability
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10
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-i-
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9.1
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Intellectual
Property Warranty and Indemnity by Mobot
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10
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9.2
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Intellectual
Property Warranty and Indemnity by Licensee
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11
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9.3
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Exclusion
of Warranties
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12
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9.4
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Limitation
of Liability
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12
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| 10. |
Term
and Termination
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12
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10.1
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Term
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12
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10.2
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Termination
by Mobot
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13
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10.3
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Termination
by Licensee for Cause
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13
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10.4
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Termination
by Licensee Without Cause
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13
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10.5
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Rights
and Obligations on Termination
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13
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| 11. |
General
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14
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11.1
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Payments
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14
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11.2
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Taxes
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14
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11.3
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Notices
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14
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11.4
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Severability
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14
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11.5
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Entire
Agreement
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14
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11.6
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Effect
of Waiver
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14
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11.7
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Force
Majeure
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15
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11.8
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Assignment
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15
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11.9
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Headings
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15
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11.10
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Independent
Contractors
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15
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11.11
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Disputes
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15
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11.12
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Governing
Law
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16
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11.13
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Export
Regulation
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16
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11.14
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Execution
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16
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11.15
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Public
Announcements
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16
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-ii-
This
Exclusive License Agreement (the “Agreement”) dated as of December 5, 2006 (the
“Effective Date”), is entered into by and between Mobot, Inc. (“Mobot”), a
Delaware corporation having its principal place of business at ▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇,
and
NeoMedia Technologies, Inc. (“Licensee”), a Delaware corporation having its
principal place of business at ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ #▇▇▇, ▇▇▇▇ ▇▇▇▇▇,
▇▇
▇▇▇▇▇. Mobot or Licensee will be referred to herein as a “Party,” together as
the “Parties.”
Mobot
provides a proprietary image processing and recognition service and related
wireless communications services for Mobile Camera Device applications (the
“Mobot Service”). Licensee markets services and devices in connection with
Mobile Camera Device applications (the “Licensee Service”). Licensee desires to
acquire a license to use the Mobot Service in connection with Licensee’s
provision of Licensee Services, as more particularly described herein.
In
consideration of the mutual covenants set forth herein and other good and
valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, the parties hereto hereby agree as follows:
1. Definitions.
The
following capitalized terms shall have the meanings herein as set forth
below:
(a) “Affiliate”
shall mean, with respect to any Party, any company or other legal entity which
directly or indirectly controls, or is controlled by, or is under common control
with, such Party. For the purposes of this definition, “control” means the
ability to direct the policy or operations of an entity, directly or indirectly,
and shall be presumed in the case of the possession of more than fifty percent
(50%) of the voting stock of the controlled entity or the possession of the
maximum ownership permitted by operation of local laws or regulations governing
such entity;
(b) “Barcode”
shall mean one or more of: barcodes, 2D codes (such as QR code), smartcodes,
and
other symbols generated expressly for optical machine reading.
(c) “Competitive
Business” means products
and services which provide image matching technology for the purposes of
retrieving information, or participating in merchandising or marketing solutions
and services, expressly for users of mobile camera phones or similar mobile
devices.
(d) “Customers”
shall mean Licensee’s business customers, whether software or hardware
manufacturers, service providers or brand owners, with respect to the
Mobot-Enabled Licensee Services.
(e) “End
Users” shall mean individual consumers who own or use camera-equipped cell
phones and camera-equipped PDAs.
1
of 17
(f) “Exclusive
Territory” shall mean the territory within which Licensee has exclusive rights
under Section 3.1 (subject to the termination of such exclusivity under Section
3.2), as defined in Schedule 2 hereto.
(g) “Exclusivity
Term” shall mean the period during the Term during which Licensee sustains
continuous Minimum Levels
(h) “Extended
Period” shall have the meaning set forth in Schedule 1 hereto.
(i) “Hosting
Services” shall mean the hosting and maintenance of the Mobot Site and Mobot
Test Site by Mobot as provided in this Agreement, according to the service
level
standards set forth in Schedule 3 hereto
(j) “Initial
Term” shall have the meaning set forth in Schedule 1 hereto.
(k) “Licensee
Service” shall mean Licensee’s mobile marketing service for Mobile Camera Device
applications using the Licensee Technology.
(l) “Licensee
Technology” shall mean Licensee’s proprietary technology for Barcode reading
marketed as of the date hereof under the brand name “Qode,” (as the name under
which such proprietary technology may be marketed may change from time to time),
including, without limitation, all related software, source code, object code,
specifications, algorithms, and documentation.
(m) “Licensee
Materials” shall have the meaning set forth in Schedule 4 hereto.
(n) “Minimum
Levels” shall mean the amounts set forth in Schedule 1 hereto.
(o) “Mobot-Enabled
Licensee Services” shall mean the Licensee Service provided by or on behalf of
Licensee on a Special Basis with the Mobot Service.
(p) “Mobile
Camera Devices” shall mean camera-equipped cell phones and camera-equipped PDAs
used by End Users.
(q) “Mobot
Service” shall mean Mobot’s proprietary image processing and recognition service
for Mobile Camera Device applications using the Mobot Technology, high level
functional specification for which is described in Schedule 4.
This
service is accessed through the Mobot Site.
(r) “Mobot
Site” shall mean the uniform resource locator (“URL”) designated by Mobot as the
URL(s) at which Licensee shall be able to access and use the Mobot Service
for
commercial purposes.
2
of 17
(s) “Mobot
Technology” shall mean all technology and associated documentation which Mobot
owns or is permitted to use including, without limitation, all software, source
code, object code, specifications, algorithms, and any related
documentation.
(t) “Mobot
Test Site” shall mean the uniform resource locator (“URL”) designated by Mobot
as the URL(s) at which Licensee shall be able to access and use the Mobot
Service for development, testing, demonstration, and other pre-sales purposes
only.
(u) “Non-exclusive
Territory” shall mean the territory within which Licensee has non-exclusive
rights under the License, as defined in Schedule 2 hereto.
(v) “Other
Companies” shall have the meaning set forth in Schedule 2 hereto.
(w) “Restricted
Territory” shall mean the territory within which Licensee has no right or
license to use the Mobot Service, as defined in Schedule 2 hereto.
(x) “Special
Basis” shall have the meaning set forth in Schedule 4 hereto.
(y) “Territory”
shall mean the Exclusive Territory and the Non-exclusive Territory. When the
phrase “in the Territory” is used in connection with the provision of the Mobot
Service, the Licensee Service or Mobot-Enables Licensee Services, it shall
mean
the provision of such services to or use of such services by End Users residing
within the geographic confines of the Territory.
2. License.
2.1 Grant
of License. Subject
to the terms and conditions of this Agreement, Mobot hereby grants to Licensee
a
license (the “License”) to access and use the Mobot Service via the Mobot Sites
and Mobot Test Sites solely for purposes of providing and supporting
Mobot-Enabled Licensee Services in the Territory to and for the benefit of
Customers and applicable End Users. The License shall not be
transferable.
2.2 Limitations
on Rights. Licensee
shall not be permitted to use the Mobot Service except as expressly permitted
under Section 2.1. Licensee shall not sublicense, resell or rent the Mobot
Service to, or otherwise permit the use of the Mobot Service by, any third
party. Licensee shall have no right to have access to Mobot Technology, and
Licensee shall not access or attempt to access or alter any of the Mobot
Technology. To the extent that the Mobot Technology is incorporated into
software or electronic files used to operate the Mobot Sites and Mobot Test
Sites, Licensee may not use (except to the extent that its receipt of Mobot
Services under this Agreement is deemed to constitute an indirect use of the
Mobot Technology), copy, distribute, sublicense or otherwise permit any third
party to use such software or electronic files, except for the purposes of
providing the Mobot-Enabled Licensee Services to Customers and applicable End
Users. Licensee will not reverse assemble or reverse engineer any of the Mobot
Technology. Licensee will not use the Mobot Service or the Mobot Technology
in
order to build a competitive product or service, build a product or service
using similar ideas, features, functions of the Mobot Technology, or copy any
ideas, features, or functions of the Mobot Technology. Licensee will not
interfere with or disrupt the integrity of the Mobot Sites, the Mobot Test
Sites, or the data contained therein. Licensee will not attempt to, and will
not, access or use any portion of the Mobot Sites, the Mobot Test Sites, or
any
systems or servers owned or controlled by Mobot except for access and use
expressly permitted in this Agreement. All rights not expressly granted to
Licensee in this Agreement are reserved by Mobot.
3
of 17
2.3 Modifications. Mobot
may, from time to time, make modifications to the Mobot Service and the Mobot
Technology (“Modifications”), all of which shall be the sole property of Mobot,
provided that no such Modifications shall remove any material functionality
of
the Mobot Service as it exists as of the date of this Agreement as is more
particularly defined in Schedule 4 unless such Modifications are approved in
advance, in writing by Licensee. Mobot will deliver to Licensee reasonable
advance notice of any material Modifications affecting delivery of the Mobot
Service.
3. Exclusive
Dealings and Restrictions.
3.1 Exclusivity.
Subject
to Section 3.2,
during
the Term, Mobot will not (i) license the Mobot Service for use on a Special
Basis with any other Barcode reading application used on Mobile Camera Devices
in the Exclusive Territory, or (ii) license the Mobot Service to any of the
Other Companies (except to the extent Mobot has done so pursuant to agreements
entered into prior to the date hereof).
3.2 Termination
of Exclusivity. Licensee’s
exclusive rights under Section 3.1 shall automatically terminate if Licensee
shall fail to met the Minimum Levels as described in Schedule 2.
3.3 Restrictions.
Notwithstanding
any other provision of this Agreement, Licensee may not sell, offer, access
or
use the Mobot Service to provide Mobot-Enabled Licensee Services in the
Restricted Territory. Licensee shall not be responsible if an End User in the
Territory transports a Mobile Camera Device into the Restricted Territory and
seeks to access the Mobot Service from within the Restricted Territory provided
that Licensee takes any measures that are reasonably available to it to prevent
such use.
4. Responsibilities
of Mobot. During
the Term, Mobot shall host or have hosted the Mobot Site and the Mobot Test
Site
so that the Mobot Service shall generally be accessible to Licensee via the
Internet twenty-four (24) hours a day, seven (7) days a week. Mobot
shall set up, and Licensee shall use, the Mobot Site only for providing Mobot
Services on a commercial basis to third parties, and the Mobot Test Site only
for testing. In addition, Mobot shall provide the following services for no
additional consideration, except as noted:
4
of 17
(a) Mobot
shall be responsible for maintenance and management of the servers that host
the
Mobot Sites and Mobot Test Sites and shall provide the Hosting Services and
other services described on Schedule 3 hereto. In the event that additional
dedicated hardware and/or software (“Dedicated Resources”) are requested by
Licensee, Mobot shall provide such Dedicated Resources for reasonable additional
fees to be paid solely by Licensee;
(b) Mobot
shall provide technology that supports communication between the Licensee
Service and Mobot’s Sites and Mobot Test Sites and servers, as currently
configured, for purposes of allowing Licensee to provide Mobot-Enabled Licensee
Services. After initial implementation, additional programming required to
adapt
such technology to any changes in the Licensee Service (including hardware
and
software under its control) shall be provided on a time and materials basis
only, at Licensee’s sole cost and expense, as generally approved in advance by
the Licensee; and
(c) Mobot
shall cooperate with Licensee in developing client software code, in all cases
for use on Mobile Camera Devices (together, the “Developed Handset Technology”)
that will facilitate the use of Licensee Technology via Mobile Camera Devices.
In developing the Developed Handset Technology, each Party shall bear its own
expenses. To the extent that Mobot assists Licensee in Licensee’s development of
Developed Handset Technology and such Developed Handset Technology is not owned
by Licensee, Mobot agrees to, and hereby does, grant Licensee a permanent,
irrevocable, royalty-free, unlimited license to use such Developed Handset
Technology as part of, and in connection with, the Licensee Technology. Upon
request from time to time, Mobot shall provide Developed Handset Technology
source code to Licensee.
5. Responsibilities
of Licensee.
(a) Licensee
shall be responsible for all development and management of the Mobile Camera
Device development platform in connection with Mobot-Enabled Licensee Services,
and for any and all maintenance and support requested and/or furnished to
Licensee’s Customers or End Users of Mobot-Enabled Licensee Services. Mobot
shall have no responsibility to deal directly with Customers with respect to
such matters or any problems experienced by Licensee’s Customers or End Users of
Mobot-Enabled Licensee Services and Licensee shall not refer any of its
Customers or such users to Mobot for resolution of any inquiry or
complaint.
(b) Licensee
shall cooperate with Mobot in developing the Developed Handset Technology to
facilitate the use of Mobot Technology via Mobile Camera Devices. To the extent
that such Developed Handset Technology is not owned by Mobot, Licensee agrees
to, and hereby does, grant Mobot a permanent, irrevocable, royalty-free,
unlimited license to use the Developed Handset Technology as part of, and in
connection with, the Mobot Technology. Upon request from time to time, Licensee
shall provide Developed Handset Technology source code to Mobot.
5
of 17
6. Fees
and Royalties.
6.1 Fees. In
consideration of the License granted under this Agreement and Licensee’s access
and use of the Mobot Service, Licensee shall pay Mobot the fees set forth on
Schedule 1 hereto (the “Fees”).
6.2 Payment
Terms.
(a) Mobot
shall send quarterly invoices to Licensee stating the Fees incurred in the
quarter-year covered by the applicable invoice. Licensee shall pay such invoices
within forty-five (45) days after delivery of such invoice to Licensee. All
invoices will be sent to Licensee by email to the email address provided to
Mobot from time to time by the Licensee. Any fees due and unpaid shall accrue
interest at the rate of one percent (1%) per month until paid. In addition,
License shall pay Mobot for Mobot’s reasonable attorney’s fees and costs
incurred in collection efforts for any unpaid amounts due Mobot hereunder.
Mobot
shall, upon reasonable request by the Licensee, provide copies of its records
of
the basis for the Fees in sufficient detail for the Licensee to verify such
Fees.
(b) In
the
event that Licensee disputes a portion of an invoice from Mobot, Licensee may:
(i) pay the full undisputed amount to Mobot, (ii) send a Dispute
Document to Mobot as provided in Section 11.11,
and
(iii) remit the full disputed amount to Van ▇▇▇▇, ▇▇▇▇▇▇ & ▇▇▇▇▇▇,
P.C., Mobot’s attorneys (or to other attorneys designated by Mobot in writing),
to be held by such attorneys in escrow pending joint written instruction from
the Parties or appropriate order of a court of competent jurisdiction. Provided
Licensee has completed all of the three (3) enumerated steps in the prior
sentence before the due date of the invoice at issue, Licensee shall not be
in
breach of this Agreement for non-payment of the sums properly placed in escrow.
7. Promotion.
7.1 Licensee
Web Site. Licensee
shall display Mobot’s logo and trade name and a link to Mobot’s web site, as
provided by Mobot, in the “Technology” and/or “Partners” section of Licensee’s
corporate website. Such display shall be at least equal in size and placement
prominence to other similar technology partners listed therein. In addition,
Licensee shall include a description of the Mobot Service and Licensee’s use
thereof in the “Technology” section of Licensee’s corporate website. The content
of such description shall be subject to the prior review and approval of Mobot.
Any of the foregoing placements shall be removed upon written request of Mobot.
Mobot hereby grants to Licensee a limited license to use and display such logos
and trade name on Licensee’s corporate website solely as set forth above during
the Term (or the earlier written request by Mobot pursuant to the previous
sentence).
6
of 17
7.2 Reference
by Mobot. Mobot
shall have the right to identify Licensee and its use of the Mobot Service
in
Mobot’s advertising and promotional materials (including on its web site), and
to use Licensee’s logo and trade name in connection therewith, as examples of
services and applications developed using the Mobot Service and/or the Mobot
Technology, provided that the Mobot shall inform Licensee of such materials
prior to their use by Mobot. If any such material contains any inaccuracy
involving Licensee, Mobot shall correct such inaccuracy upon being made aware
of
the same by Licensee in writing. Licensee hereby
grants to Mobot a limited license to use and display such logos and trade name
in such advertising and promotional materials solely as set forth above during
the Term. Mobot shall have no right to use any other logo, trade name or other
name used by, licensed to or proprietary to the Licensee without the prior
permission of Licensee.
7.3 Branding
on Mobile Camera Devices. In
branding the Mobot-Enabled Licensee Services, Licensee shall display Mobot
Trademarks (defined below) with equal prominence with those of “Qode” or other
Licensee Affiliates. Full “white-branding” is permitted so long as the source
for all mobile imaging technology is not identified on the applicable Mobile
Camera Device.
8. Proprietary
Rights and Confidentiality.
8.1 Proprietary
Rights of Mobot. The
Mobot
Technology and all copies thereof, and any and all copyrights, patents, trade
secret rights or other intellectual property rights under any jurisdiction
with
respect thereto, shall be and remain at all times the property of Mobot (or
its
licensors), and neither Licensee nor any of its Customers
or users of Mobot-Enabled Licensee Service
shall
have any right, title or interest therein (other than the right to receive
Mobot-Enabled Licensee Services as provided in this Agreement).
8.2 Proprietary
Rights of Licensee. Licensee
Technology, Licensee Materials, all copies thereof, and any and all copyrights,
patents, trade secret rights or other intellectual property rights under any
jurisdiction with respect thereto, shall be and remain at all times the property
of Licensee (or its licensors), and neither Mobot nor any of its
partners
or users
of the Mobot Service
shall
have any right, title or interest therein. In
addition to the foregoing, Mobot shall maintain the Licensee Materials in the
format in which they ▇▇▇▇ provided to Mobot, which Licensee Materials shall
be
available for return to Licensee as provided in Section 10.5(d),
below.
8.3 Confidentiality
of Mobot Technology. Licensee
understands and acknowledges that the Mobot Technology (including for purposes
of this Section 8,
all
information related thereto provided by Mobot to Licensee or otherwise coming
into the possession of Licensee) comprises a trade secret of Mobot, that the
Mobot Technology is of great commercial value to Mobot, and that the value
of
the Mobot Technology would be significantly impaired by its unauthorized
distribution or disclosure. Licensee shall keep confidential, and shall protect
from unauthorized disclosure by its employees, agents and customers, the Mobot
Technology and any and all copies or physical embodiments thereof that may
come
into its possession notwithstanding the limitations of Section 2.2,
and
Licensee shall secure and protect the Mobot Technology and any and all copies
or
physical embodiments thereof that may so come into its possession in a manner
consistent with the maintenance of Mobot’s rights and interest therein. Promptly
upon discovery that Licensee or any other person has acquired possession, use
or
knowledge of any portion of the Mobot Technology, Licensee shall notify Mobot
of
such fact and the surrounding circumstances. The obligations of this Section
8.3
of this
Agreement shall survive any termination of this Agreement for any
reason.
7
of 17
8.4 Mobot
Trademarks. Subject
to Section 7.1 and 7.3, Licensee shall not have any right to use Mobot’s trade
name other than in the form and stylization approved from time to time by Mobot
and according to such standards for use as shall be set from time to time by
Mobot, and shall not have the right to use any other trademark, service ▇▇▇▇
or
trade name of Mobot except as may be otherwise permitted by Mobot in writing.
Licensee shall not have the right to assign or sublicense to any person any
of
the rights granted to it with respect to use of Mobot’s trade name under this
Agreement. The Licensee acknowledges that the Mobot trade name and other
trademarks, service marks and trade names of Mobot (collectively, “Mobot
Trademarks”) and all rights and goodwill pertaining thereto belong exclusively
to Mobot. Without limiting the generality of the foregoing, any rights that
arise by virtue of the use of the Mobot Trademarks in the Territory, whether
by
the Licensee, Mobot or any third party, shall belong exclusively to Mobot.
To
the extent any rights in and to any Mobot Trademarks are deemed to accrue to
Licensee, Licensee hereby assigns any and all such rights, at such time as
they
may be deemed to accrue, including the related goodwill, to Mobot. Licensee
shall never challenge the validity, or Mobot’s ownership of, any trademark or
other rights in or to any Mobot Trademarks or any application for registration
thereof, or any trademark registration thereof, and will never contest the
fact
that Licensee’s rights under this Agreement are solely those of a licensee, and
terminate upon expiration or termination of this Agreement, or earlier as
provided below. In the event that Mobot determines at any time in its sole
discretion that the continued use by Licensee of Mobot’s trade name in the
manner permitted under this Agreement (or the use by Licensee of any other
Mobot
Trademark that Mobot may permit Licensee to use hereafter) impairs or is likely
to impair the positioning, prestige, goodwill or reputation of Mobot or its
trade name or other Mobot Trademarks, Mobot may terminate Licensee’s right to
use Mobot’s trade name (or such other Mobot Trademark) upon written notice to
Licensee, whereupon Licensee shall discontinue all further use thereof. Licensee
shall not use (except for use of Mobot’s trade name in accordance with the terms
and conditions of this Agreement) or register or attempt to register any Mobot
Trademark or any trade name or trademark which Mobot reasonably deems to be
confusingly similar to the Mobot trade name or any other Mobot
Trademark.
8.5 Confidentiality
of Licensee Technology. Mobot
understands and acknowledges that the Licensee Technology (including for
purposes of this Section 8,
all
information related thereto provided by the Licensee to Mobot or otherwise
coming into the possession of Mobot) comprises a trade secret of the Licensee,
that the Licensee Technology is of great commercial value to the Licensee,
and
that the value of the Licensee Technology would be significantly impaired by
its
unauthorized distribution or disclosure. Mobot shall keep confidential, and
shall protect from unauthorized disclosure by its employees, agents and
customers, the Licensee Technology and any and all copies or physical
embodiments thereof that may come into its possession, and Mobot shall secure
and protect the Licensee Technology and any and all copies or physical
embodiments thereof that may so come into its possession in a manner consistent
with the maintenance of the Licensee’s rights and interest therein. Promptly
upon discovery that Mobot or any other person has acquired possession, use
or
knowledge of any portion of the Licensee Technology, Mobot shall notify the
Licensee of such fact and the surrounding circumstances. The obligations of
this
Section of this Agreement shall survive any termination of this Agreement for
any reason.
8
of 17
8.6 Licensee
Trademarks. Subject
to Section 7.2, Mobot shall not have any right to use the Licensee’s trade name
other than in the form and stylization approved from time to time by the
Licensee and according to such standards for use as shall be set from time
to
time by the Licensee, and shall not have the right to use any other trademark,
service ▇▇▇▇ or trade name of the Licensee except as may be otherwise permitted
by the Licensee in advance and in writing. Mobot acknowledges that the
Licensee’s trade names and other trademarks, service marks and trade names of
the Licensee (collectively, “Licensee Trademarks”) and all rights and goodwill
pertaining thereto belong exclusively to the Licensee. Without limiting the
generality of the foregoing, any rights that arise by virtue of the use of
the
Licensee Trademarks in the Territory, whether by the Licensee, Mobot or any
third party, shall belong exclusively to the Licensee. To the extent any rights
in and to any Licensee Trademarks are deemed to accrue to Mobot, Mobot hereby
assigns any and all such rights, at such time as they may be deemed to accrue,
including the related goodwill, to the Licensee. Mobot shall never challenge
the
validity, or the Licensee’s ownership of, any trademark or other rights in or to
any Licensee Trademarks or any application for registration thereof, or any
trademark registration thereof, and will never contest the fact that Mobot’s
rights to use the Licensee Trademarks or Licensee Technology under this
Agreement are solely those of a licensee, and will terminate upon expiration
or
termination of this Agreement, or earlier as provided below. Mobot shall
exercise its best efforts in its use of the Licensee’s trade name in the manner
permitted under this Agreement not to impair such positioning, prestige,
goodwill and reputation. In the event that the Licensee determines at any time
in its sole discretion that the continued use by Mobot of the Licensee
Trademarks in the manner permitted under this Agreement (or the use by Mobot
of
any other Licensee trade ▇▇▇▇ that the Licensee may permit Mobot to use
hereafter) impairs or is likely to impair the positioning, prestige, goodwill
or
reputation of the Licensee or its trade name or other Licensee Trademarks,
the
Licensee may terminate Mobot’s right to use the Licensee’s trade name (or such
other Licensee Trademark) upon written notice to Mobot, whereupon Mobot shall
discontinue all further use thereof. Mobot shall not use (except for use of
the
Licensee’s trade name in accordance with the terms and conditions of this
Agreement) or register or attempt to register any Licensee Trademark or any
trade name or trademark which the Licensee reasonably deems to be confusingly
similar to the Licensee trade name or any other Licensee Trademark.
8.7 Competitive
Technology.
(a) Licensee
agrees that, during the Term, neither the Licensee nor any of its Affiliates
as
at the date of this Agreement shall, directly or indirectly, develop, implement
or use, or have developed. implemented or used (whether on Licensee’s own or by
obtaining from any third party any license or other right to use or any services
based upon) any technology that is competitive with the Mobot Technology.
In
addition, Licensee agrees that, during the Term, neither the Licensee nor any
of
its Affiliates as of the date of this Agreement shall, directly or indirectly,
engage or participate in (as an owner, investor, partner, consultant,
independent -contractor, advisor or otherwise), or assist in any manner or
in
any capacity in, or have any interest in or make any loan to any person, firm,
corporation or business which engages in, any Competitive Business.
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(b) In
addition to the provisions of Section 8.7(a),
if
Licensee acquires or merges with (regardless of the exact form of such
combination) another party such that such other party would then be an Affiliate
of Licensee (a “Future Affiliate”), and the Future Affiliate at the time of such
acquisition or merger or at any time thereafter either (i) directly or
indirectly, develops or implements or has developed or implemented any image
processing or recognition technology that is competitive with the Mobot
Technology, or (ii) directly or indirectly, engages or participates in (as
an
owner, investor, partner, consultant, independent -contractor, advisor or
otherwise), or assists in any manner or in any capacity in, or has any interest
in or makes any loan to any person, firm, corporation or business which engages
in, any Competitive Business, then, at Mobot’s option, Mobot may terminate this
Agreement upon no less than sixty (60) days’ written notice to Licensee. Such
termination by Mobot shall be treated as a Termination by Licensee, without
cause, as more fully described in Section 10.5,
below.
9. Warranties
and Liability.
9.1 Intellectual
Property Warranty and Indemnity by Mobot.
(a) Mobot
warrants that the Mobot Services and the use of the Mobot Technology by the
Licensee will not infringe the intellectual property rights (copyright,
trademark, patent, and trade secrets only) of any third party in the Territory
(the “Mobot Warranted IP”). In the event of any claim by any third party against
Licensee of infringement of the Mobot Warranted IP by the Mobot Technology,
Mobot shall defend Licensee against such action at Mobot’s expense, and shall
indemnify and hold harmless Licensee against any expense, judgment or loss
(including reasonable attorneys’ fees) arising therefrom, provided that (i)
Mobot is notified promptly in writing of such action; (ii) Mobot shall have
sole
control of the defense of any such action and all negotiations for its
settlement or compromise; and (iii) Licensee shall cooperate reasonably
with Mobot, at Mobot’s expense, in the defense, settlement or compromise of any
such action.
(b) In
the
event of a claim relating to Mobot Warranted IP by any third party, Mobot shall,
or if Mobot reasonably believes that Licensee’s use of the Mobot Technology
could be enjoined, or if in Mobot’s opinion any part of the Mobot Technology is
likely to become the subject of a successful claim of such infringement, Mobot
may, at Mobot’s option and expense, (i) procure for Licensee the right to
continue using the Mobot Technology as provided in this Agreement, (ii) replace
or modify the Mobot Technology so that it becomes non-infringing (so long as
the
functionality of the Mobot Technology is essentially unchanged) or, in the
event
neither of the previous two options are commercially feasible for Mobot, (iii)
terminate this Agreement.
(c) Notwithstanding
the provisions of Section 9.1(a),
Mobot
shall not have any liability to Licensee under this Section 9.1
to the
extent that any infringement or claim thereof is based upon (i) the combination,
operation or use of the Mobot Technology in combination with equipment,
technology, software or services not supplied by Mobot hereunder where the
Mobot
Technology would not itself be infringing, (ii) compliance with designs,
specifications or instructions provided by Licensee, (iii) use of the Mobot
Technology in an application or environment for which it was not designed or
not
contemplated under this Agreement, or (iv) modifications of the Mobot
Technology by anyone other than Mobot where the unmodified version of the Mobot
Technology would not be infringing.
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(d) If
notified promptly in writing, Licensee shall indemnify, defend and hold harmless
Mobot against any expense, judgment or loss (including reasonable attorneys’
fees) arising from infringement or alleged infringement of any valid patent,
copyright, trademark, trade secret in the Territory as a result of Mobot’s
compliance with Licensee’s designs, specifications or instructions or inclusion
in the Mobot Technology of any content provided by or through Licensee provided
that (i) Licensee shall have sole control of the defense of any such action
and
all negotiations for its settlement or compromise and (ii) Mobot shall cooperate
reasonably with Licensee, at Licensee’s expense, in the defense, settlement or
compromise of any such action.
9.2 Intellectual
Property Warranty and Indemnity by Licensee.
(a) Licensee
warrants that the Licensee Services and the use of the Licensee Technology
will
not infringe the intellectual property rights (copyright, trademark, patent,
and
trade secrets only) of any third party in the Territory (the “Licensee Warranted
IP”). In the event of any claim by any third party against Mobot of infringement
of the Licensee Warranted IP by the Licensee Technology, Licensee shall defend
Mobot against such action at Licensee’s expense, and shall indemnify and hold
harmless Mobot against any expense, judgment or loss (including reasonable
attorneys’ fees) arising therefrom, provided that (i) Licensee is notified
promptly in writing of such action; (ii) Licensee shall have sole control of
the
defense of any such action and all negotiations for its settlement or
compromise; and (iii) Mobot shall cooperate reasonably with Licensee, at
Licensee’s expense, in the defense, settlement or compromise of any such
action.
(b) In
the
event of a claim relating to Licensee Warranted IP by any third party, Licensee
shall, or if Licensee reasonably believes that use of the Licensee Technology
could be enjoined, or if in Licensee’s opinion any part of the Licensee
Technology is likely to become the subject of a successful claim of such
infringement, Licensee may, at Licensee’s option and expense, (i) procure the
right to continue using the Licensee Technology as provided in this Agreement,
(ii) replace or modify the Licensee Technology so that it becomes non-infringing
(so long as the functionality of the Licensee Technology is essentially
unchanged) or, in the event neither of the previous two options are commercially
feasible for Licensee, (iii) terminate this Agreement.
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(c) Notwithstanding
the provisions of Section 9.2(a),
Licensee shall not have any liability to Mobot under this Section 9.2
to the
extent that any infringement or claim thereof is based upon (i) the combination,
operation or use of the Licensee Technology in combination with the Mobot
Technology where the Licensee Technology would not itself be infringing, or
(ii) compliance with designs, specifications or instructions provided by
Mobot.
(d) If
notified promptly in writing, Mobot shall indemnify, defend and hold harmless
Licensee against any expense, judgment or loss (including reasonable attorneys’
fees) arising from infringement or alleged infringement of any valid patent,
copyright, trademark, trade secret in the Territory as a result of Licensee’s
compliance with Mobot’s designs, specifications or instructions or inclusion in
the Licensee Technology of any content provided by or through Mobot provided
that (i) Mobot shall have sole control of the defense of any such action and
all
negotiations for its settlement or compromise and (ii) Licensee shall cooperate
reasonably with Mobot, at Mobot’s expense, in the defense, settlement or
compromise of any such action.
9.3 Exclusion
of Warranties. EXCEPT
AS
EXPRESSLY STATED HEREIN, THE
MOBOT
SERVICES AND MOBOT TECHNOLOGY ARE
LICENSED
AS-IS, AND MOBOT DISCLAIMS ANY REPRESENTATIONS OR WARRANTIES, IMPLIED OR
STATUTORY, INCLUDING WITHOUT LIMITATION ANY REPRESENTATIONS OR WARRANTIES AS
TO
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE RESPECTING ANY OF THE MOBOT
TECHNOLOGY OR THE MOBOT SERVICES OR ANY OTHER MATTER RELATED TO THIS
AGREEMENT.
9.4 Limitation
of Liability. IN
NO
EVENT SHALL EITHER PARTY BE LIABLE FOR ANY INDIRECT, SPECIAL, INCIDENTAL OR
CONSEQUENTIAL DAMAGES ARISING OUT OF OR IN ANY WAY CONNECTED WITH THIS
AGREEMENT, THE LICENSE GRANTED HEREBY, THE SERVICES PERFORMED HEREUNDER, OR
ANY
OTHER MATTER RELATED HERETO (INCLUDING, WITHOUT LIMITATION, DAMAGES FOR LOST
SAVINGS, LOST PROFITS OR BUSINESS INTERRUPTION), EVEN IF SUCH PARTY HAS BEEN
ADVISED, IS AWARE OR SHOULD BE AWARE, OF THE POSSIBILITY OF SUCH DAMAGES. EXCEPT
AS OTHERWISE EXPRESSLY PROVIDED HEREIN, IN NO EVENT SHALL EITHER PARTY BE LIABLE
IN DAMAGES OR OTHERWISE IN EXCESS OF AN AMOUNT EQUAL TO US $50,000 OR ALL
FEES AND ROYALTIES PAID BY LICENSEE TO MOBOT HEREUNDER WITHIN THE TWELVE (12)
MONTHS PRIOR TO THE DATE OF ACCRUAL OF THE CLAIM, WHICHEVER IS THE GREATER.
THE
FOREGOING LIMITATIONS DO NOT APPLY TO ANY CLAIMS RELATING TO LICENSEE’S USE OF
THE MOBOT SERVICE OR THE MOBOT TECHNOLOGY OTHER THAN AS EXPRESSLY PERMITTED
HEREUNDER OR ANY OTHER BREACH OF MOBOT’S PROPRIETARY RIGHTS, OR TO AMOUNTS
REPRESENTING FEES DIRECTLY PAYABLE TO MOBOT HEREUNDER, AS SPECIFICALLY SET
FORTH
IN SECTION 6, ABOVE. THE PARTIES AGREE THAT THIS SECTION 9
REPRESENTS A REASONABLE ALLOCATION OF RISK.
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10. Term
and Termination.
10.1 Term.
This
Agreement shall be effective as of the Effective Date and, unless earlier
terminated pursuant to this Section 10,
shall
continue for the Initial Term and shall be renewed thereafter for successive
one
(1)-year terms (each, an "Extended Term") unless either Party gives to the
other
not less than ninety (90) days’ notice in writing that it does not wish to renew
for the next applicable Extended Term. Both the Initial Term and any Extended
Term are referred to throughout this Agreement as the “Term.”
10.2 Termination
by Mobot. Mobot
may
terminate this Agreement by written notice to Licensee in the event of the
occurrence of any of the following: (a) if Licensee fails to pay any amount
due
hereunder within ten (10) days after written demand by Mobot for payment thereof
(after expiration of the 45 day period to pay as set forth in Section 6.2
hereof), (b) if Licensee violates the confidentiality provisions of Section
8
of this
Agreement, or uses the Mobot Service or the Mobot Technology in any manner
not
authorized by the License granted in Section 2,
(c) if Licensee fails to observe or perform any other term or condition of
this Agreement and does not cure such failure within thirty (30) days after
written demand by Mobot, (d) if Licensee fails to meet the Minimum Levels for
the Extended Period, or (e) if Licensee makes a general assignment for the
benefit of creditors, or files a voluntary petition in bankruptcy or for
reorganization or arrangement under the bankruptcy laws, or if a petition in
bankruptcy is filed against Licensee and is not dismissed within thirty (30)
days after the filing, or if a receiver or trustee is appointed for all or
any
part of the property or assets of Licensee.
10.3 Termination
by Licensee for Cause.
Licensee
may terminate this Agreement by written notice to Mobot in the event of the
occurrence of any of the following: (a) if Mobot fails to observe or
perform any term or condition of this Agreement and does not cure such failure
within thirty (30) days after written demand by Licensee, or (b) if Mobot
makes a general assignment for the benefit of creditors, or files a voluntary
petition in bankruptcy or for reorganization or arrangement under the bankruptcy
laws, or if a petition in bankruptcy is filed against Mobot and is not dismissed
within thirty days after the filing, or if a receiver or trustee is appointed
for all or any part of the property or assets of Mobot.
10.4 Termination
by Licensee Without Cause. Licensee
may terminate this Agreement by written notice to Mobot without cause at any
time, upon no less than ninety (90) days’ notice to Mobot.
10.5 Rights
and Obligations on Termination.
(a) Upon
any
termination of this Agreement, the License granted under Section 2
shall
immediately terminate and, except as provided in Section 10.5(c),
Licensee shall immediately cease all use of the Mobot Service.
(b) Upon
any
termination of this Agreement, all rights and obligations of the parties under
this Agreement shall cease except for (i) Licensee’s obligations to make any
payment which was due and payable on or prior to the date of termination, (ii)
the rights and obligations of the parties that state that they survive the
termination of this Agreement, (iii) the Parties’ obligations under Sections
8.1-8.6,
and
(iv) the obligations of the parties under this Section 10.
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(c) In
the
event of a termination by Licensee as provided in Section 10.3
(for
cause), then Mobot shall, upon written request of Licensee delivered with any
notice of termination of this Agreement, continue to provide the Mobot Service
to Licensee, upon the applicable terms and conditions of this Agreement, for
up
to an additional thirty (30) days after termination of this
Agreement.
(d) Within
ninety (90) days after termination of this Agreement, upon written request
from
a Party, the other Party shall promptly return to the requesting Party (or,
at
the requesting Party’s option, destroy and certify in writing to the requesting
Party that it has destroyed) the original and all copies of any confidential
or
proprietary materials (excluding Licensee Materials) in the other Party’s
possession.
The
Parties’ counsel may retain one archival copy of materials returned pursuant to
Section 10.5(d),
to be
used only in case of a dispute between the Parties, and all such materials
shall
remain subject to the provisions of Section
8.3.
11. General.
11.1 Payments.
All
payments under this Agreement shall be made in US dollars.
11.2 Taxes.
The
amounts payable under this Agreement are in addition to all local, state or
federal sales, use, excise, or personal property or other similar taxes or
duties, and any applicable value added taxes, and any such taxes shall be
assumed and paid by Licensee except those taxes based on the net income of
Mobot.
11.3 Notices.
Notices
to either Party under or relating to this Agreement shall be in writing to
the
address indicated in the first paragraph of this Agreement, or such other
address of which notice has been given to the other Party in accordance
herewith, and shall be deemed effective when received, on the day following
sending if sent by a recognized overnight delivery service, or on the third
day
following the date of postmark if sent by prepaid certified mail, return receipt
requested.
11.4 Severability.
The
terms
and conditions of this Agreement are severable. If any term or condition of
this
Agreement is deemed to be illegal or unenforceable under any rule of law, all
other terms shall remain in force. Further, the term or condition which is
held
to be illegal or unenforceable shall remain in effect as far as possible in
accordance with the intention of the parties hereto.
11.5 Entire
Agreement. The
Schedules 1 through 3 attached hereto are incorporated by reference and made
a
part hereof. The parties hereto agree that this Agreement is the complete and
exclusive statement of the agreement between the parties, and supersedes all
prior proposals and understandings, oral or written, relating to the subject
matter of this Agreement. This Agreement may be amended only by a writing
executed by Licensee and Mobot.
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11.6 Effect
of Waiver. No
waiver
of any provisions of this Agreement shall be effective unless contained in
a
writing signed by the Party waiving its rights hereunder. Failure by either
Party to enforce any provision of this Agreement shall not be deemed a waiver
of
that provision or of any other provision of this Agreement.
11.7 Force
Majeure.
(a) Except
for Licensee’s obligations to pay Mobot fees hereunder, neither Party shall be
liable to the other Party for any failure or delay in performance caused by
reasons beyond its or its suppliers (with whom it has a contractual
relationship) reasonable control (having
taken all steps which are in compliance with acting in accordance with standard
industry practice) including
without limitation any act of God, inclement weather, failure or shortage of
power supplies, flood, drought, lightning or fire, strike, lockout, trade
dispute or labor disturbance, failure of telecommunications or digital
transmission links, Internet slowdowns or failures, the negligent or malicious
acts of third parties, the act or omission of Government, highways authorities,
other telecommunications or utility operators or administrations or other
competent authority, war, terrorism, military operations,
or riot (“an event of Force Majeure”).
(b) If
the
delay or failure caused by the event of Force Majeure lasts for a continuous
period of thirty (30) days or less from the date that either Party notifies
the
other of the event of Force Majeure, any obligation outstanding shall be
fulfilled by the Party affected as soon as reasonably possible after the event
of Force Majeure has ended, save to the extent that such fulfillment
is no
longer possible.
(c) If
the
delay or failure caused by the event of Force Majeure lasts for more than thirty
(30) days from the date that either Party notifies the other of the event of
Force Majeure, then either Party shall be entitled (but not obliged) to
terminate this Agreement by giving not less than 30 days’ written notice to the
other Party on expiry of the said thirty (30)- day period.
11.8 Assignment.
This
Agreement shall be binding on the parties hereto and their respective successors
and assigns. Licensee may not assign this Agreement in whole or in part without
the prior written consent of Mobot. Any change of control of Licensee, whether
by way of a business reorganization, merger, sale of stock or otherwise, shall
be regarded as an assignment subject to the terms of this Section
11.8.
11.9 Headings.
The
headings and captions used in this Agreement are for convenience only and are
not to be used in the interpretation of this Agreement.
11.10 Independent
Contractors. The
parties to this Agreement are independent contractors and engage in the
operation of their own respective businesses. Neither Party is the agent or
employee of the other Party for any purpose whatsoever. Nothing in this
Agreement shall be construed to establish a relationship of co-partners or
joint
venturers between the two parties. Neither Party has the authority to enter
into
any contracts or assume any obligations for the other Party or to make any
warranties or representations on behalf of the other Party.
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11.11 Disputes.
(a) In
the
event of a dispute arising out of or in connection with this Agreement both
parties shall agree to use all reasonable efforts to resolve the dispute prior
to commencement of the formal legal proceedings.
(b) Within
five (5) days of the dispute each Party shall record in writing the exact nature
of the dispute (the “Dispute Document”) and shall send to the other Party in
accordance with Section 11.3
(Notices). Both parties shall appoint a senior representative to review the
Dispute Document within two (2) days of receipt.
(c) Within
two (2) days of the review of the Dispute Document, the appointed senior
representatives of both parties shall meet (in person, or, if not commercially
practical, using telephonic means) and use all reasonable efforts to produce
an
action plan to resolve all the matters contained in the Dispute Document. If
within five (5) days an action plan cannot be agreed between the parties then
both parties shall be entitled enforce all rights available to them at law
or in
equity.
11.12 Governing
Law. This
Agreement shall be construed under and governed by the laws of the Commonwealth
of Massachusetts, excluding of choice of law provisions, and
excluding the 1980 United Nations Convention on Contracts for the International
Sale of Goods. The parties hereby submit to the nonexclusive jurisdiction of
state courts of the Commonwealth of Massachusetts or the United States District
Court for the District of Massachusetts. The prevailing Party in any litigation
shall be entitled to recover all reasonable expenses thereof, including
reasonable attorney’s fees in connection with such proceedings or any appeal
thereof.
11.13 Export
Regulation. The
parties shall comply with all applicable export laws and regulations of the
United States, the country in which Licensee is located or the Mobot Service
is
used, and any other country having competent jurisdiction.
11.14 Execution.
This
Agreement may be executed in two or more counterparts (and may be executed
and
delivered by facsimile), each of which shall be an original, but all of which
shall constitute one and the same instrument.
11.15 Public
Announcements. Neither
of the parties shall make any press release or other disclosure of this
Agreement or the transactions contemplated hereby without the prior written
consent of the other party, except as may be required by law. To the extent
that
any such disclosure is required by law, the party required to make such
disclosure shall provide written notice thereof (together with a copy of the
disclosure it proposes to make) to the other party at least twenty-four (24)
hours prior to such disclosure, shall permit the other party to comment upon
such proposed disclosure, and shall make any corrections or changes to such
disclosure reasonably requested by such other party provided such corrections
or
changes are true and accurate and may be made consistent with the disclosing
party’s legal obligations.
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EXECUTED
as a document under seal as of the date first set forth above by the duly
authorized representatives of the parties hereto.
| MOBOT, INC. | NEOMEDIA TECHNOLOGIES, INC. | ||||
| By: | /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇ | By: | /s/ ▇▇▇▇▇ ▇. Dodge | ||
|
Name: ▇▇▇▇▇▇▇ ▇▇▇▇▇ |
Name: ▇▇▇▇▇ ▇. Dodge |
||||
|
Title:
CEO
|
Title:
Chief Financial Officer
|
||||
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