EXHIBIT 10.1
AGREEMENT
JANUARY 28, 2002
BY AND BETWEEN:
OZ COMMUNICATIONS, INC.
&
ERICSSON RADIO SYSTEMS AB
ERICSSON TELECOM AB
ERICSSON INC.
ERICSSON CANADA INC.*
* Certain portions of this exhibit have been omitted and filed separately with
the Securities and Exchange Commission under an application for confidential
treatment.
AGREEMENT
1 PARTIES
1.1 This Agreement ("Agreement") is made and entered into this 24th day of
January 2002 by and between OZ Communications, Inc., a California
corporation formerly known as ▇▇.▇▇▇, with its principal office at
▇▇▇▇▇▇▇▇▇▇▇ ▇▇, ▇▇-▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ("OZ") on the one hand, and
Ericsson Radio Systems AB ("Ericsson Radio Systems"), registration
number 556251-3258, a limited liability company duly incorporated under
the laws of Sweden and having its principal place of business at
▇▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇, ▇▇-▇▇▇ ▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇, Ericsson Telecom AB
("Ericsson Telecom"), registration number 556251-3258, a limited
liability company duly incorporated under the laws of Sweden and having
its principal place of business at Telefonplan, ▇-▇▇▇ ▇▇ ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇, Ericsson Inc., a Delaware corporation, and Ericsson Canada Inc.
("Ericsson Canada"), a Canada corporation having its principal place of
business at ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇., ▇▇▇▇ ▇▇ ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇
(Ericsson Radio Systems, Ericsson Telecom, Ericsson Inc. and Ericsson
Canada sometimes collectively referred to as "Ericsson").
2 BACKGROUND AND INTENTIONS
2.1 OZ and Ericsson (the "Parties") have worked together since 1998 under
the terms of certain agreements between them to develop, market and
otherwise exploit the iPulse(TM) Software, a description of which is set
forth as Exhibit A.
2.2 The Parties desire to terminate and supersede certain agreements more
particularly specified in Section 3.
3 AGREEMENTS AMENDED OR TERMINATED BY THIS AGREEMENT
3.1 The Parties wish to modify their contractual relationship with respect
to the following agreements:
- General Co-operation and Development Agreement made and entered into
as of November 1, 2000 (the "GCDA"), by and between OZ and Ericsson
Radio Systems.
- Hosted Service Agreement made and entered into as of July 19th, 2001
("Hosting Agreement"), by and between OZ and Ericsson Inc.
- iPulse Agency Agreement made and entered into as of November 1, 2000,
by and between OZ and Ericsson Radio Systems.
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- mPresence Agency Agreement made and between into as of November 1,
2000, by and among OZ, Ericsson Radio Systems and certain
shareholders of OZ.
- Shareholder Rights Agreement made and entered into as of February 4,
1999, (the "Shareholder Rights Agreement") by and between OZ,
Ericsson Inc and certain shareholders of OZ.
- Shareholder Rights Agreement made and entered into as of November 8,
2000 (the "Shareholder Agreement"), by and between OZ, Ericsson
Canada and certain shareholders of OZ.
- Specific Co-operation and Development Agreement for Communities and
Link made and entered into as of February 4, 1999 (the "iPulse
SCDA"), by and between OZ and Ericsson Telecom.
- Specific Co-operation and Development Agreement made and entered into
as of November 8, 2000 (the "Canada SCDA"), by and between OZ and
Ericsson Canada.
- Value Added Distribution and License Agreement, made and entered into
as of November 1, 2000 (the "VADLA"), by and between OZ and Ericsson
Radio Systems.
3.2 Except for the Shareholders Rights Agreement, which will be amended
according to the agreement signed on December 20, 2001, the parties
hereby terminate all of the agreements listed above.
4 iPULSE INTELLECTUAL PROPERTY RIGHTS
4.1 Ericsson herby irrevocably assigns to OZ an equal and undivided share of
its right, title and interest in and to a) the iPulse(TM) Software,
including source and object code, b) the "iPulse" trademark, with the
limitation that Ericsson shall have the right to use iPulseTM as it has
done before for any material it has in it possession the date of this
agreement and c) hereby grant to OZ a worldwide and perpetual license
for all purposes to all other intellectual property rights contained in
and related to the iPulse(TM) software, including any Patent Rights,
copyrights, rights to photographs, design rights, technical
documentation and any other industrial and intellectual property rights
contained in the source and object code, as set forth in Exhibit A.
"Patent Rights" as used herein shall mean patents or patent applications
relating to the iPulse(TM) software, in existence today, including, but
not limited to the patents and patent applications of Appendix A of this
Agreement, , and continuations-in-part and their counterparts in other
countries, in whole or in part.
4.2 OZ shall as soon as reasonably possible but not later then March 30,
return to Ericsson all Ericsson property including but not limited to
all third-party develop
3
ment tools that Ericsson has previously made available to OZ for the
development of the iPulse Software.
4.3 OZ and Ericsson shall each have the unrestricted and unlimited rights to
exploit the iPulse(TM) software code and the iPulse Software in any way
it sees fit, including but not limited to the rights to copy, modify,
license, transfer rights to, use and distribute the iPulse(TM) software
code.
4.4 Ericsson shall execute all papers, including patent applications,
invention assignments, trademark and copyright assignments, and
otherwise shall assist OZ as reasonably required to perfect in OZ the
rights, title and other interests in iPulse(TM) expressly granted to OZ
under this Agreement. Costs related to such assistance, if required,
shall be paid by OZ.
5 UNCONDITIONAL PAYMENTS
5.1 In consideration for iPulse development services already provided by OZ
to Ericsson up to the date hereof, which Ericsson has received and
accepted, Ericsson agrees to pay OZ a final payment of US $6,000,000 on
times as set forth below:
- Already received by OZ $ 350,000
- On January 30, 2002 $ 2,000,000
- On February 28, 2002 $ 2,000,000
- On March 30, 2002 $ 1,650,000
5.2 The Parties agree that these payments and the services already rendered
shall constitute the complete and final settlement of any claims or
obligations between them and that would relate to any services performed
under the agreements set forth in Section 3.
5.3 No royalties shall be payable by either Party to the other related to
the sale or licensing of iPulse(TM) Software.
6 MISCELLANEOUS
6.1 Except for the fact that Ericsson no longer will offer iPulse to its
customers, Ericsson and OZ agree not to communicate, internally within
Ericsson, otherwise than on a need-to-know basis, or externally in press
releases or by other means, the content of this Agreement without OZ's
express consent in advance.
6.2 No announcement to news media pertaining to this Agreement shall be made
until reviewed and approved by OZ and Ericsson. OZ has received the
advice of counsel that the making of a public announcement and
disclosure in United States Securities and Exchange Commission ("SEC")
filings is necessary to comply with
4
the requirements of applicable laws and regulations and that, because of
the materiality of the Ericsson relationship to OZ's shareholders, the
SEC will deem this Agreement to be sufficiently material that no
provision herein will be eligible for confidential treatment.
6.3 . If any Party should default in the payment, when due, of any amount
whatsoever due under this Agreement or under any of the agreements
described in Section 5, the overdue amount shall bear interest at the
prime rate of the bank of the Party to whom the obligation is due plus
two percent (2%) per annum, calculated from the due date until full
payment is made, without prejudice to the other rights of the Parties to
this Agreement.
6.4 Neither Party shall be in default if failure to perform any obligation
hereunder is caused solely by supervening conditions beyond that party's
control, including acts of God, terrorism, civil commotion,
telecommunications break down, strikes, labor disputes, and governmental
demands or requirements.
6.5 If any legal action or other proceeding is brought with respect to the
subject matter of this Agreement, its enforcement or as a result of a
breach, default or misrepresentation in connection with any of the
provisions of this Agreement, the successful or prevailing party shall
be entitled to recover reasonable attorneys' fees and other costs
incurred in such action or proceeding, in addition to any other relief
to which such party may be entitled.
OZ Communications Inc.
By: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇
-----------------------
Title: CEO
--------------------
Date: 28/01/02
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ERICSSON RADIO SYSTEMS AB ERICSSON CANADA INC.,
by power of attorney
By: /s/ ▇▇▇▇ ▇▇▇▇▇ By: /s/ ▇▇▇▇ ▇▇▇▇▇
----------------------- -----------------------
Title: VP & GM Title: VP & GM
-------------------- --------------------
Date: 2002-02-11 Date: 2002-02-11
--------------------- ---------------------
ERICSSON TELECOM AB, ERICSSON INC.,
by power of attorney by power of attorney
By: /s/ ▇▇▇▇ ▇▇▇▇▇ By: /s/ ▇▇▇▇ ▇▇▇▇▇
----------------------- -----------------------
Title: VP & GM Title: VP & GM
-------------------- --------------------
Date: 2002-02-11 Date: 2002-02-11
--------------------- ---------------------
6
EXHIBIT A
The following is a list of all object code and documentation relative to iPulse,
but the iPulse Software as defined in the agreement shall only include the
portions of the below that are solely owned by Ericsson and developed by OZ for
Ericsson or solely developed by Ericsson within the iPulse development projects.
For the avoidance of doubt such iPulse Software does not include, a) any
Software developed by a third party for Ericsson, regardless of whether this
development was inside or outside the common development project with OZ, b) any
intellectual property rights owned by third parties or c) intellectual property
rights developed by Ericsson in any project outside the scope of the common
iPulse development projects with OZ, such as but not limited to IP Telephony
System, whether it is included in any object code or documentation set out in
the list below or not. Further for the avoidance of doubt, any subsidiary of OZ
is not regarded as a third party with respect to this Exhibit A.
[***]
*** These provisions consisting of 17 pages have been omitted and filed
separately under an application for confidential treatment.
INTERVENTION
▇▇.▇▇▇ Canada Company, a Nova Scotia company with an office at Montreal, Canada,
intervenes in this Agreement, agreeing to be bound by it as a "Party and, for
greater certainty, agrees to the termination of the Canada SCDA, and
acknowledges the consideration granted by Ericsson under this Agreement
constitutes complete and final settlement of any claims or obligations that
▇▇.▇▇▇ Canada Company might have against Ericsson.
▇▇.▇▇▇ Canada Company, by power of attorney
By: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇
----------------------------------------
Title: CEO
Date: 12-02-02