NeoMedia Technologies, Inc.
Exhibit 10.52
Agreement for Implementation of Symbol Licensed Software materials
by and between Symbol Technologies, Inc. and
NeoMedia Technologies, Inc. Dated April 29, 1997
20
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[LOGO]
AGREEMENT
FOR
IMPLEMENTATION
OF SYMBOL LICENSED SOFTWARE MATERIALS
ATTACHMENTS:
Schedule A - License Fees and Royalty Payments.
Schedule B - Licensee's Products.
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COMPANY NAME: NEOMEDIA TECHNOLOGIES, INC.
ADDRESS: ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇, ▇▇▇▇▇, ▇▇▇: ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
PHONE: (▇▇▇) ▇▇▇-▇▇▇▇ FAX: (▇▇▇) ▇▇▇-▇▇▇▇
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CONTRACT COORDINATORS:
SELLER: ▇▇▇▇ ▇▇▇▇▇▇▇ PHONE: (▇▇▇)▇▇▇-▇▇▇▇
BUYER: ▇▇▇▇▇▇ ▇▇▇▇▇ PHONE: (▇▇▇)▇▇▇-▇▇▇▇
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AGREEMENT FOR IMPLEMENTATION OF SYMBOL LICENSED SOFTWARE
MATERIALS
THIS AGREEMENT, entered into this__ day of April, 1997 by and between Symbol
Technologies, Inc., a corporation duly organized and existing under the laws of
the State of Delaware, having it principal place of business at ▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇, NY 11716 (hereinafter "Symbol"), and NeoMedia
Technologies, Inc. a Delaware Corporation (hereinafter "Licensee"), having its
principal place of business at:
▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇
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(Street Address)
▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
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(City, State, Zip)
THE PARTIES AGREE AS FOLLOWS:
1. DEFINITIONS
1.1 AFFILIATE shall mean, as to any party, any entity that directly or
indirectly is under common control with that party, including a subsidiary
or parent company of that party.
1.2 BACKUP REMEDY shall have the meaning set forth in Article 12.
1.3 CLAIM shall mean any and all claims, counterclaims, cross claims and the
like for monetary or injunctive relief in respect to any alleged or proven
injury (including bodily injury or death) in or before any court,
administrative agency, or other forum having the legal power to adjudicate
such disputes, and any and all demands not yet matured into one or more
of the foregoing, with the exception in the case of an intellectual
property infringement claim of a claim solely for contributory and/or
inducement for infringement.
1.4 COMBINATION USE shall mean the Use of the Licensed Software in combination
or in conjunction with any of the following:
1.) any software not provided by Symbol; or
2.) any apparatus, device or equipment not provided by Symbol;
or;
3.) any activity beyond the scope of the License Activities or
engagement in any Licensed Activities by any person other
than Licensee.
1.5 CUSTOMER shall mean any entity to which Licensee sublicenses the Licensed
Software in combination with the sale, lease, transfer or license of
Licensee's Product(s).
1.6 DATE OF DELIVERY shall have the meaning set forth in Article 4.1
1.7 INFRINGEMENT CLAIM shall have the meaning set forth in Article 11.1
1.8 LICENSE ACTIVITIES shall have the meaning set forth in Article 2.1
1.9 LICENSE COMMENCEMENT DATE shall mean the date of execution of this
Agreement by Symbol.
1.10 LICENSED DOCUMENTATION shall mean documentation relating to Licensed
Software, if any, but shall include documentation that describes the data
flows, data structures, and control logic of Licensed Software.
1.11 LICENSED SOFTWARE shall mean the PaperData Application Software including
PaperData decoder, (including Secure Macro), PaperData encoder (including
Secure Macro), PDF417 Encode, and PDF417 Decode software available from
Symbol.
1.12 LICENSEE'S PRODUCT(S) shall mean either or both of: (i) Software Products,
as defined in Exhibit B hereto, that Licensee creates and/or owns and
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that Licensee utilized the Licensed Software to operate in conjunction with; or
(ii) Hardware Products as defined in Exhibit B hereto, in which the Licensed
Software is Used but is inaccessible directly to the user and can be used only
in conjunction with the use of the hardware product. Licensee's Product(s),
whether hardware or software, shall include a substantial portion of software
code that performs functions that do not duplicate in any way the functions of
the Licensed Software, Licensee's Product(s) shall not include a "tool kit" or
software routine "library" wherein the Licensed Software is or would be licensed
to Customers by Licensee for code incorporation into Customer's software
programs to perform the functions of the Licensed Software alone, or where
Licensee's Product(s) are comprised of minimal software code or hardware that
adds no significant value to the Licensed Software above the value of the
Licensed Software itself.
1.13 PHYSICAL MEDIA WARRANTY shall have the meaning set forth in Article 10.1
1.14 SYMBOL shall mean Symbol Technologies, Inc. and its subsidiaries and
Affiliates.
1.15 SYMBOL TRADEMARK shall mean the trademark PaperData registered by Symbol
in respect of software programs.
1.16 TERRITORY shall mean all countries.
1.17 USE shall mean copying any portion of the Licensed Software into a machine
and/or transmitting such software to a machine for processing of the
machine instructions or statements contained in such software.
1.18 DERIVATIVE WORKS shall mean any software program sufficiently based on the
Licensed Software such that copying it without permission would infringe
the copyright and violate the license under which the Licensed Software, is
provided. Further, the Licensed Software, or appropriate subset thereof,
shall be sufficiently embedded in the software program to prevent an End
User from accessing the Licensed Software shall derive its primary
functionality from operations that are fundamentally different from the
functions of the embedded Licensed Software.
1.19 SPECIFICATIONS shall mean requirements for the Licensed Software operation,
function, capabilities and performance and the Licensed Documentation to be
delivered therewith.
1.20 IMPROVEMENTS shall mean improvements in function and/or performance made
for or by NeoMedia to the Licensed Software, but excluding those functions
in the Licensee's Products that perform functions that do not duplicate
in any way the functions of the Licensed Software.
2. LICENSED GRANT
2.1 LICENSED GRANT Subject to the terms and conditions of this Agreement,
Symbol hereby grants to Licensee, and Licensee hereby accepts an exclusive
license in respect of the PaperData (including Secure Macro) software for
a period of twelve (12) months from the first delivery and a non-exclusive
license in respect of the PDF417 encoder and decoder software (the
"License") solely in the Territory, under any and all intellectual property
rights in such software owned or otherwise assertable by Symbol, to engage
in the following License Activities and no others:
(1) Use TWENTY (20) copies of the Licensed Software on Licensee owned or
leased equipment solely for Licensee's business, software
engineering or demonstration purposes, solely with Licensee's
business or enginering data, but not including renting or leasing.
Use of the Licensed Software on Licensee owned or leased equipment,
such as, for example, timesharing arrangements or data services; and
(2) sublicensing distribution of Licensed Software in accordance with
the requirements of Article 16, only in executable form and only in
combination with the sale, lease, transfer or license of Licensee's
Product(s); and
(3) creation of Improvements subject to Article 9 and/or Derivative
Works; and
(4) copying the License Software as necessary to engage in sublicensing
distribution rights and making one copy for archival and backup
purposes;
(5) distributing reasonable quantities of the Licensed Software without
incurring royalty payments to Symbol for
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promotional purposes only. It is agreed that Licensee will be able
to develop and/or market Licensee's Products in which software
containing the Licensed Software will be distributed by Licensee
free or at a nominal charge, with revenues realized from other
components of the Licensee's Products, only after the parties have
negotiated and agreed upon a new basis for royalty payments to
Symbol for such Licensee's Products, which shall be based on a
mutually agreed upon target price, reflective of the value delivered
by the software containing the Licensed Software or any component
thereof, in the overall Licensee's Product.
2.2 SYMBOL RIGHT TO USE. It is specifically understood and agreed to by
Licensee, that notwithstanding any exclusive rights granted to Licensee
hereunder, Symbol retains the rights to use, modify, upgrade and update
the Licensed Software.
2.3 EXTENSION OF EXCLUSIVITY. At the end of the twelve months period the
parties hereto will negotiate in good faith the terms for an extension of
the exclusive license rights granted hereunder for additional terms.
Nothing contained herein will be construed as an obligation on Symbol's
behalf to extend the exclusive license granted herein for any additional
terms.
2.4 SYMBOL TRADEMARK. Subject to the terms and conditions of this Agreement,
Symbol hereby grants to Licensee an option for an exclusive license to use
the Symbol Trademark as defined in Section 1.15 of this Agreement in
connection with the marketing and sale of the Licensee Products (the
"Option"). The Option expires at the end of ninety (90) days from
execution of this agreement by Licensee.
2.5 NO OTHER RIGHTS GRANTED. Apart from the License rights enumerated in this
Agreement, the License does not include a grant to Licensee of any right to
engage in any other activity (including Combination Use under any Symbol
intellectual property rights and use of any Symbol trademark or tradename
other than as required herein), nor any ownership right, title, or
interest, nor any security interest or other interest, in any intellectual
property rights relating to the Licensed Software nor in any copy of any
part of the Licensed Software.
2.6 LICENSED SOFTWARE AS CONFIDENTIAL INFORMATION. The Licensed Software and
Licensed Documentation shall be deemed Confidential Information.
2.7 Symbol represents that the Licensed Software is copyrighted and published
by Symbol and that any markings or notices thereon are proper and
authorized. Licensee agrees to reproduce any proper and authorized Symbol
copyright notice or other proprietary legend of Symbol appearing thereon
that is not inconsistent with this Agreement and to include the same on all
copies it makes in whole or in part, and in the case of object code
software embedded in EPROM or other semiconductor memory, to include a
copyright notice on a label on such product or the packaging or
specifications therefor. Symbol's copyright or proprietary notice may
appear in several forms, including machine-readable form and Licensee
agrees to reproduce such notice in each form it appears, to the extent it
is physically possible to do so. With reference to Derivative Works
Licensee creates, if any, Licensee agrees to produce a proper and
authorized Symbol copyright notice thereon in accordance with this Article
2.7.
2.8 The Licensed Software delivered hereunder and any copies made by Licensee,
in whole or part, and all of Symbol's intellectual property rights in such
software shall remain the property solely of Symbol.
3. TERM AND TERMINATION
3.1 TERM OF LICENSE. The License shall be in effect until termination of the
Licensed Software copyright unless otherwise terminated in accordance with
this Agreement.
3.2 TERMINATION. In case of a breach of this Agreement by either party, other
party shall have the right, without limitation of any other right it may
have on account of such failure, to terminate this Agreement and the
License granted herein by giving the breaching party at least sixty (60)
days' written notice of its intention, specifying the default; provided,
however, that if, the breaching party remedies such failure during such
sixty (60) day period, then this Agreement and the License granted herein
shall not be terminated on the date specified in such notice.
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3.3 EFFECT OF TERMINATION. Upon termination, neither party shall have further
obligation to the other hereunder, except as provided in the Articles
herein entitled "Confidential Information" and "Improvements", and
Licensee shall return all copies of the Licensed Software in Licensee's
possession or under Licensee's control to Symbol forthwith, and the license
granted herein shall be automatically canceled, provided, however,
Customer's of Licensee who have already received Licensee's Product(s)
which incorporate Licensed Software shall be permitted to continue to use
the Licensed Software, subject to the terms and conditions of the
sublicense Agreement between the Customer and Licensee involving the
Licensed Software. Symbol may terminate Customer's right to use the
Licensed Software and ▇▇▇ Customer if Customer fails to comply with the
terms of its sublicense Agreement with Licensee.
4. DELIVERY OF LICENSED SOFTWARE
4.1 DELIVERY OF LICENSED SOFTWARE PRODUCT. Unless the Licensed Software has
already been provided for evaluation, within fifteen (15) days following
the execution hereof by Symbol, Symbol shall ship the Licensed Software
(source code and object code) to Licensee. The date on which delivery
is deemed complete is referred to herein as the "Date of Delivery" and
shall be the later of the actual date the Licensed Software is received by
Licensee or the License Commencement Date.
4.2 LICENSED SOFTWARE TESTING BY LICENSEE. Licensee shall have sixty (60) days
from the Date of Delivery to test and examine the Licensed Software to
ensure it meets Licensee's requirements. If for any reason whatsoever
Licensee determines within the sixty (60) day testing period that the
Licensed Software does not meet its requirements, Licensee shall notify
Symbol in writing of that fact and this Agreement shall thereafter be
terminated. It is specifically agreed by both parties that in the case of
termination of the Agreement under this clause, there will be no
reimbursement to Licensee of the first one half ($125,000) of the initial
License Fee paid in accordance with the Exhibit A of this Agreement.
4.3 ACCEPTANCE BY LICENSEE. Absent written notice of non-acceptance by
Licensee, acceptance of the Licensed Software by Licensee shall be deemed
to have occurred on the sixty first (61st) day after the Date of Delivery.
Symbol will have 30 business days, commencing upon receipt by Symbol of
such non-acceptance notice, specifying in detail why the Licensed Software
does not materially conform to the Specifications, to cure the reported
nonconformity.
5. LICENSE FEE AND ROYALTY PAYMENTS
5.1 PAYMENTS. For rights granted under this Agreement, Licensee shall pay an
Initial License Fee and Running Royalty Payments, in the amounts and at
the terms stated in Exhibit A hereto (the "Fee Schedule").
5.2 ROYALTY STATEMENTS. Within sixty (60) days after the end of each calendar
year, Licensee shall furnish to Symbol a written statement signed by an
authorized representative of Licensee (the "Royalty Statement")
identifying:
5.2.1 the number of Licensed Products with which the Licensed Software is
distributed by Licensee during such period;
5.2.2 the per Licensed Product royalty for such products;
5.2.3 the net amount of the royalty payment based upon the Fee Schedule.
5.3 PAYMENT DUE. Within such sixty (60) days of the end of each year, Licensee
shall pay to Symbol the Running Royalty Payment due in accordance with
Exhibit A for sales made by Licensee in the year as shown on the Royalty
Statement.
5.4 ADDITIONAL INFORMATION. Licensee shall furnish whatever additional
information Symbol may reasonably prescribe from time to time to enable
Symbol to ascertain the amounts of any payments due hereunder.
5.5 RECORDS. Licensee shall keep full, clear and accurate records sufficient
to prepare statements to Symbol as required hereunder.
6. UPGRADE VERSIONS
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During the term Licensee has the exclusive License rights to the Licensed
Software under this Agreement, Symbol will offer to Licensee for no
additional fee, copies of upgrade versions of the Licensed Software, if
available from Symbol. Upon expiration of Licensee's exclusivity to the
Licensed Software, such offers, if available, may be conditioned on
Licensee paying a charge to Symbol in an amount determined by Symbol in its
sole discretion. Any copy of an upgrade version provided by Symbol shall be
deemed to be Licensed Software.
Nothing contained in this provision shall be interpreted as an
undertaking by Symbol to come up with any upgrade versions to the Licensed
Software.
7. ASSISTANCE AND RIGHTS IN DATA
Licensee agrees that Symbol may, without additional cost, use all
suggestions, inventions, Improvements, and written materials furnished in
connection with this Agreement by Licensee to Symbol relating or applying
to the Licensed Software but excluding all suggestions, inventions,
improvements and written materials furnished by Licensee to Symbol in
connection with this Agreement in the Licensee's Products which perform
functions that do not duplicate in any way the functions of the Licensed
Software, and that Symbol may include the foregoing in any software or
products and claim the copyright thereon as part of Symbol's overall
copyright on any software or products, without accounting to the Licensee.
8. SOFTWARE SUPPORT
8.1 Symbol shall provide two (2) weeks of initial training at its Holtsville,
New York facility for up to three (3) of Licensee's associates.
8.2 Symbol shall provide telephone support for a period of three months from
first delivery of the Licensed Software to Licensee for no additional
charge to Licensee. Following this period support services shall be
available at Symbol's then current standard software support rates.
9. IMPROVEMENTS
As part of this Agreement, without additional compensation, and
notwithstanding any other provisions hereof and notwithstanding any
terminations of this Agreement, Licensee hereby grants to Symbol (subject
to the terms of this Agreement) a fully paid up, royalty free, perpetual,
non exclusive license to use, make, have made and sell the Improvements
and Symbol may include the Improvements in any software or products and
claim the copyright thereon as part of Symbol's overall copyright on any
software or products, without accounting to the Licensee.
10. LIMITED WARRANTIES AND REPRESENTATION, AND LIMITED REMEDIES, CONCERNING
THE LICENSED SOFTWARE.
SYMBOL PROVIDES THE WARRANTIES AND REPRESENTATION SET FORTH BELOW IN THIS
ARTICLE 10 ("SYMBOL'S WARRANTIES"), AND NO OTHER WARRANTIES OR
REPRESENTATIONS, WITH RESPECT TO THE LICENSED SOFTWARE.
10.1 PHYSICAL MEDIA WARRANTY. Symbol warrants that the Licensed Software will
perform in accordance with the Specifications. Symbol further warrants to
Licensee, subject to the warranty exclusions set forth in this Article 10,
that each copy of the Licensed Software provided by Symbol is and will be
free from physical defects in the media that tangibly embodies the copy
(the "Physical Media Warranty"), for a period of ninety (90) days
following the Date of Delivery. The Physical Media Warranty does not
apply to defects arising from acts of non-Symbol personnel, misuse, theft,
vandalism, fire, water, acts of God, or other peril. Licensee's sole
remedy for breach of the Physical Media Warranty, TO THE EXCLUSION OF ALL
OTHER REMEDIES THEREFOR, shall be replacement by Symbol of any copy
provided by Symbol that does not comply with the warranty, at Symbol's
expense, including shipping and handling costs.
10.2 DISCLAIMER OF ALL OTHER WARRANTIES AND REPRESENTATIONS. THE EXPRESS
WARRANTIES AND REPRESENTATIONS SET FORTH IN THIS ARTICLE 10 ARE IN LIEU
OF, AND SYMBOL DISCLAIMS, ANY AND ALL OTHER WARRANTIES, CONDITIONS, OR
REPRESEN-
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TATIONS (EXPRESS OR IMPLIED, ORAL OR WRITTEN), WITH RESPECT TO THE LICENSED
SOFTWARE OR ANY PART THEREOF, INCLUDING ANY AND ALL IMPLIED WARRANTIES OR
CONDITIONS OF TITLE. NON-INFRINGEMENT, MERCHANTABILITY, OR FITNESS OR
SUITABILITY FOR A PARTICULAR PURPOSE OR ANY PURPOSE (WHETHER OR NOT SYMBOL
KNOWS, HAS REASON TO KNOW, HAS BEEN ADVISED, OR IS OTHERWISE IN FACT AWARE
OF ANY SUCH PURPOSE), WHETHER ALLEGED TO ARISE BY LAW, BY REASON OF CUSTOM
OR USAGE IN THE TRADE, OR BY COURSE OF DEALING. IN ADDITION, SYMBOL
EXPRESSLY DISCLAIMS ANY WARRANTY OR REPRESENTATION TO ANY PERSON OTHER THAN
LICENSEE, INCLUDING CUSTOMERS, WITH RESPECT TO THE LICENSED SOFTWARE OR ANY
PART THEREOF.
11. INTELLECTUAL PROPERTY INFRINGEMENT DEFENSE
11.1 In the event a Claim is brought against Licensee by third parties, other
than Affiliates of Licensee, alleging that the Use or sublicense of the
Licensed Software constitutes an infringement of a United States patent
or copyright in existence as of the License Commencement Date (an
"Infringement Claim"), Symbol shall defend such Claim so long as Symbol is
notified promptly in writing by Licensee as to any such claim and is given
full authority, information and assistance (at Symbol's expense) for the
defense. In addition to Symbol's obligation to defend, Symbol shall pay
all damages and costs (except consequential damages) awarded therein
against Licensee. The obligations set forth above shall not, however,
extend to products delivered hereunder which would give rise to a claim,
suit, proceeding, finding or conclusion solely for contributory
infringement or inducement of infringement. Symbol shall not be
responsible for any compromise made by Licensee without its consent.
Notwithstanding the foregoing, in the event of an Infringement Claim,
Symbol's obligation under this paragraph shall be fulfilled, at Symbol's
sole option and expense, if Symbol at any time: (i) obtains a license
for Licensee to continue the use or sublicense the infringing product
licensed from Symbol, or (ii) refunds the Initial License Fee and Royalty
Payments paid to Symbol by Licensee for such infringing product less a
reasonable amount for use, damage, or obsolenscence, and removes such
product, or (iii) replaces or modifies the infringing product so as to be
substantially functionally equivalent to the infringing product but non-
infringing.
Symbol shall have no further liability to Licensee for any Infringement
Claim based on Licensee's use or transfer of the product delivered
hereunder, incurred after Symbol's notice that Licensee shall cease use or
transfer of such product due to such Claim.
11.2 Licensee agrees that in the event an Infringement Claim is made against
Symbol as a result of Licensee's exercise of License Activities or Symbol's
compliance with Licensee's particular design requirements, specifications
or instructions, Licensee shall indemnify Symbol for any and all damages
and costs, including, but not limited to reasonable attorney's fees,
arising therefrom.
11.3 Licensee grants to Symbol the benefit of any license to Licensee under any
patent which may be the subject of an infringement allegation hereunder,
to the extent permitted by said license.
11.4 Symbol shall have no liability to Licensee under this Article to the extent
any Infringement Claim is based upon the (i) Combination Use of Licensed
Software, or (ii) use of Licensed Software delivered hereunder in a manner
for which the same were not designed, or (iii) modification by Licensee of
the Licensed Software delivered hereunder to the extent such modification
is the cause of the claim or suit. EXCEPT AS STATED ABOVE, SYMBOL DISCLAIMS
ALL WARRANTIES AND INDEMNITIES, EXPRESS, IMPLIED, OR STATUTORY, FOR PATENT
OR COPYRIGHT INFRINGEMENT.
12. BACKUP REMEDY DEFINITION
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TO THE EXCLUSION OF ALL OTHER REMEDIES AVAILABLE TO LICENSEE EXCEPT AS
EXPRESSLY STATED OTHERWISE IN THIS AGREEMENT, AND EXERCISABLE ONLY IN
CONNECTION WITH A TERMINATION OF THE LICENSE BY THE LICENSEE UPON A FAILURE
OF OTHER REMEDIES FOR BREACH OF A WARRANTY OR COVENANT MADE BY SYMBOL, the
"Backup Remedy" shall be for Symbol to pay Licensee (and/or credit against
any amounts owed to Symbol by Licensee) the INITIAL LICENSE fEE to the
extent paid or owed to Symbol and for Licensee to return the Licensed
Software, all copies thereof and all Licensed Documentation to Symbol.
13. LIMITATION OF LIABILITY
13.1 EXCLUSION OF INCIDENTAL AND CONSEQUENTIAL DAMAGE. INDEPENDENT OF, SEVERABLE
FROM, AND TO BE ENFORCED INDEPENDENTLY OF ANY OTHER ENFORCEABLE OR
UNENFORCEABLE PROVISION OF THIS AGREEMENT, OTHER THAN FOR INFRINGEMENT OF
ONE PARTY'S INTELLECTUAL PROPERTY RIGHTS BY ANOTHER PARTY (INCLUDING ANY
ENGAGEMENT IN ACTIVITIES BY LICENSEE BEYOND THE SCOPE OF THE LICENSE
ACTIVITIES) OR FOR BREACH OF A NONCOMPETITION COVENANT OR FOR
INDEMNIFICATION BY LICENSEE OF SYMBOL FOR A CLAIM OF INTELLECTUAL PROPERTY
INFRINGEMENT, NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY (NOR TO ANY
PERSON CLAIMING RIGHTS DERIVED FROM THE OTHER PARTY'S RIGHTS) FOR
INCIDENTAL, CONSEQUENTIAL, SPECIAL, PUNITIVE, OR EXEMPLARY DAMAGES OF ANY
KIND, INCLUDING LOST PROFITS, LOSS OF BUSINESS, OR OTHER ECONOMIC DAMAGE,
AND FURTHER INCLUDING INJURY TO PROPERTY, AS A RESULT OF BREACH OF ANY
WARRANTY OR OTHER TERM OF THIS AGREEMENT, REGARDLESS OF WHETHER THE PARTY
ALLEGEDLY LIABLE WAS ADVISED, HAD OTHER REASON TO KNOW, OR IN FACT KNEW OF
THE POSSIBLITY THEREOF. EACH PARTY ACKNOWLEDGES THAT THE FOREGOING SENTENCE
REFLECTS AND INFORMED, VOLUNTARY ALLOCATION BETWEEN THE PARTIES OF THE
RISKS (KNOWN AND UNKNOWN) THAT MAY EXIST IN CONNECTION WITH THIS AGREEMENT,
THAT SUCH VOLUNTARY RISK ALLOCATION WAS A MATERIAL PART OF THE BARGAIN
BETWEEN THE PARTIES, AND THAT THE ECONOMIC AND OTHER TERMS OF THIS
AGREEMENT WERE NEGOTIATED AND AGREED TO BY THE PARTIES IN RELIANCE ON SUCH
VOLUNTARY RISK ALLOCATION.
13.2 MAXIMUM AGGREGATE LIABILITY. INDEPENDENT OF, SEVERABLE FROM, AND TO BE
ENFORCED INDEPENDENTLY OF ANY OTHER ENFORCEABLE OR UNENFORCEABLE PROVISION
OF THIS AGREEMENT, IN NO EVENT SHALL SYMBOL'S AGGREGATE LIABILITY TO
LICENSEE (INCLUDING LIABILIITY TO ANY PERSON OR PERSONS WHOSE CLAIM OR
CLAIMS ARE BASED ON OR DERIVED FROM A RIGHT OR RIGHTS CLAIMED BY LICENSEE),
WITH RESPECT TO ANY AND ALL CLAIMS AT ANY AND ALL TIMES ARISING FROM OR
RELATED TO THE SUBJECT MATTER OF THIS AGREEMENT, IN CONTRACT, TORT, OR
OTHERWISE, EXCEED THE AGGREGATE AMOUNTS PAID TO SYMBOL BY LICENSEE, PLUS
INTEREST AS PROVIDED HEREIN, COMPUTED AS OF THE DATE OF ANY FINAL JUDGMENT
AGAINST SYMBOL.
14. INDEMNITY AND DEFENSE OBLIGATIONS
APPLICABILITY OF THIS ARTICLE. Other than the indemnity obligations set
forth in Article 11, there shall be no other indemnity obligations or
right to indemnification based on this Agreement.
15. CONFIDENTIAL INFORMATION
15.1 NO CONFIDENTIAL DISCLOSURE BY LICENSEE. The parties do not intend that
Licensee will disclose to Symbol, and agree that Licensee will refrain from
disclosing to Symbol, any information that Licensee regards as
confidential. Licensee warrants that all information disclosed to Symbol by
Licensee is or will be free of any obligation of confidence.
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15.2 DEFINITION OF CONFIDENTIAL INFORMATION. AS USED IN THIS AGREEMENT, the term
"Confidential Information" means THE CONFIDENTIAL INFORMATION AS DEFINED IN
SECTION 2.6 HEREUNDER and information that is disclosed in writing or other
tangible form to Licensee by Symbol or a person or entity having an
obligation of confidence to Symbol (or, if disclosure is made orally, is
reduced to or summarized in such a writing or other tangible form within
thirty (30) days after such oral disclosure).
15.3 Licensee agrees to keep in confidence and prevent the disclosure to any
unauthorized person or persons of ALL CONFIDENTIAL INFORMATION and all
written information, documentation, or software which is designated by an
appropriate stamp or legend by Symbol to be of a proprietary nature and is
received from Symbol under the terms hereof (including, but not limited to,
the source code version of the Licensed Software,) provided that Licensee
shall not be liable for any use or disclosure of such information if the
same:
(1) was in the public domain or copyrighted as a published work at the time
it was disclosed; or
(2) was known to Licensee prior to the time of receipt from Symbol, without
any restrictions on its disclosure and the same is reported in writing
to Symbol within ten (10) days of disclosure; or
(3) is disclosed with the prior written approval of Symbol; or
(4) is made available to a third party by Symbol without restriction on its
further dissemination by the third party; or
(5) becomes known to Licensee from a source other than Symbol without
direct or indirect obligation restricting its use or disclosure.
(6) is disclosed in response to a valid order of a court or government body
of the USA or any political subdivision thereof, provided however, that
Licensee shall: (a) immediately notify Symbol of such order; and (b)
first make a good faith effort as an interested party to such
proceeding to obtain a protective order or similar provision requiring
that the Confidential Information so disclosed be used only for the
purpose for which such order was issued.
15.4 APPROPRIATE MEASURES. Licensee shall take all appropriate measures, by
instruction, agreement or otherwise, with employees and persons permitted
access to Confidential Information, including, but not limited to, the
source code version of the Licensed Software, to enable Licensee to satisfy
its obligations under this Agreement. Such appropriate measures shall
include at least the same measures Licensee uses to protect its own
Confidential Information.
16. SUBLICENSING DISTRIBUTION
16.1 SUBLICENSE AGREEMENTS. Licensee shall enter into only such forms of
sublicense agreement with Customers that provide adequate protection for
Symbol's intellectual property rights in the Licensed Software, as set
forth herein.
16.2 Subject to the limitations of this Article 16, Licensee may use any form of
sublicense agreement that provides the same or equivalent protection for
Symbols's intellectual property rights in the Licensed Software as for
Licensee's intellectual property rights in its own proprietary software
distributed to the public; provided that Licensee shall include a statement
granting Symbol the right to enforce the sublicense agreement against
Customers.
16.3 Licensee shall limit license rights of Customer in its sublicense
agreements in accordance with following restrictions;
(1) no right for any Customer(s) to sublicense the Licensed Software shall
be granted; and
(2) Customer(s) shall only be permitted to Use the License Software within
the Territory; and
(3) Customer(s) shall only be permitted to make one backup and/or archival
copy of the Licensed Software.
Licensee's failure to include the foregoing limitations of rights in its
sublicense agreements with Customer(s) shall be deemed a material breach of
this Agreement
16.4 Any form of sublicense agreement used by Licensee for Licensed Software
shall include a disclaimer of any warranty or representation made by
Symbol to the sublicensee, an exlusion of incidental, consequential,
special, punitive, or exemplary damage remedies against Symbol, and a
limitation of Symbol's maximum liability substantially as set forth in this
Agreement.
16.5 If at any time Symbol gives Licensee notice of circumstances that in
Symbol's business
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judgment make continued use of Licensee's form of sublicense agreement
inappropriate to protect Symbol's intellectual property rights, then
Licensee shall discontinue use of that form.
16.6 Licensee acknowledges that;
(1) any review by Symbol and/or Symbol's counsel of any form of sublicense
agreement is intended solely to protect Symbol's interests for
Symbol's benefit; and
(2) neither Symbol nor its counsel warrants or represents that any form of
sublicense agreement will protect Licensee's interest or otherwise meet
any particular standard of suitability; and
(3) no attorney-client relationship is established between Licensee and
Symbol's counsel by virtue of any such review.
16.7 Symbol shall have no right to object to pricing terms in any proposed form
of sublicense agreement.
16.8 Any form of sublicense agreement used by Licensee for transactions that
involve the Licensed Software with U.S. Government departments or agencies
shall include a restricted-rights clause conforming to the Federal
Acquisition Regulations (FARs) then in effect that apply to software
developed entirely at private expense.
17. MISCELLANEOUS
17.1 ENTIRE AGREEMENT. This Agreement constitutes the entire Agreement and
understanding between the parties as to the subject matter hereof, and
supersedes and replaces all prior or contemporaneous Agreements, written or
oral, as to such subject matter. This Agreement may be changed only in a
writing stating that is is an amendment to this Agreement, and signed by
an authorized representative of each of the parties hereto.
17.2 RELATIONSHIP OF PARTIES. This Agreement does not constitute a partnership,
joint venture or agency between the parties thereto, nor shall either of
the parties hold itself out as such contrary to the terms hereof by
advertising or otherwise, nor shall wither of the parties become bound or
become liable because of any representation, action or omission of the
other.
17.3 OPERATING SYSTEMS. Licensee hereby acknowledges its understanding that the
Licensed Software is intended to be used with computer equipment
manufactured by other parties and manufacturer provided operating systems,
and that such computer equipment and operating systems software are not
provided under this Agreement. Licensee is sole responsible for acquiring
and maintaining such equipment and software, the utilization rights of
such software, and for the overall effectiveness and efficiency of the
operating environment in which Licensed Software is to function. Symbol
does not make any representations, warranties, or understanding concerning
the suitability, availability, or performance of any computer or operating
system software for use with the Licensed Software provided hereunder.
17.4 OTHER AGREEMENTS. This Agreement has been expressly requested by Licensee
from Symbol, and has been negotiated between the parties to include all
those rights which Licensee, at the present time, requires from Symbol.
Except as expressly set forth herein, this Agreement is not conditioned
upon, and does not require or contemplate, Licensee to purchase or license
from Symbol any additional software, hardware, laser scanners and/or
related subassemblies or components, or entry into any other agreement with
Symbol, such as for software maintenance or service. Licensee is free to
manufacture, or contract with other manufacturers and suppliers, for the
procurement of software, hardware, laser scanner, and/or related
subassemblies or components, or maintenance services, subject to any
applicable intellectual property rights of Symbol or third parties
pertaining thereto.
17.5 NO OTHER PATENT LICENSES. Other than as specifically set forth herein, no
right or license is granted by this Agreement, either expressly or by
implication, estoppel, otherwise, under any Symbol patent, patent
application, or patent right.
17.6 SEVERABILITY. Should any part or provision of this Agreement be held
unenforceable or in conflict with the law of any jurisdiction, the validity
of the remaining parts or provisions shall not be affected by such
holding, provided the intent of the parties can be given effect except for
immaterial matters.
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17.7 WAIVER. Any waiver of a default or condition held by either party shall not
be deemed a continuing waiver of such default of condition or a waiver of
any other default or condition.
17.8 NON-ASSIGNABILITY. The parties acknowledge that his agreement is personal
in nature and agree that this Agreement shall not be assigned by the other,
in whole or in part. Any purported assignment of this Agreement or any
interest therein without the other party's written consent shall be void.
17.9 CAPTIONS. The headings of articles, sections and other subdivisions hereof
are inserted only for the purpose of convenient reference and it is
recognized that they may not adequately or accurately describe the
contents of the paragraphs which they head. Such headings shall not be
deemed to govern, limit, modify or in any other manner affect the scope,
meaning or intent of the provisions of this agreement or any part or
portion thereof, nor shall they otherwise be give any legal effect.
17.10 APPLICABLE LAW. This Agreement shall be governed by, performed under and
construed in accordance with the laws of the State of New York, without
giving effect to the conflict of law principles thereof.
17.11 CHOICE OF FORUM. Each party hereby irrevocably and unconditionally submits
for itself and its property in any legal action or proceeding relating to
this Agreement or for recognition and enforcement of any judgment in
respect thereof, to the exclusive general jurisdiction of the courts of the
United States of New York, and the courts of America for the Eastern
District of New York, and appelate courts for any thereof. It is agreed
that the party intending to so initiate such proceedings, prior to
instituting any action or proceeding, will first offer to the other party
the opportunity to submit the dispute(s) to a mutually acceptable mediator
for non-binding mediation. If (i) the party to whom the offer is made fails
to accept such offer within seven days of its receipt, or (ii) if the
parties are unable to resolve their dispute(s) following the nonbinding
decision of the mediator, then, either party may, at is descretion,
thereafter pursue any remedy, legal or quasi-legal, available to it.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed as of
the date below:
LICENSEE
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SIGNATURE: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇, ▇▇. DATE: 4/22/97
-------------------------
NAME: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇, ▇▇.
TITLE: EVP/CTO
SYMBOL TECHNOLOGIES, INC.
SIGNATURE: /s/ TONO HAZMILOVIC DATE: 4/29/97
--------------------
NAME: Tono Hazmilovic
TITLE: President/COO
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EXHIBIT A
LICENSE FEES AND ROYALTY PAYMENTS
INITIAL LICENSE FEE
Licensee shall pay an Initial License Fee in the amount of $250,000, out of
which $125,000 shall be paid on the Date of Delivery of the Licensed Software
and the additional $125,000 shall be paid upon the acceptance of the Licensed
Software by Licensee as specified in Section 4.3 of the Agreement. In the event
the Licensed Software does not materially perform in accordance with the
Specifications, after Symbol has had the opportunity to cure the non-conformity,
all as specified in said Section 4.3, any amount paid as the Initial License Fee
will be reimbursed to Licensee by Symbol.
RUNNING ROYALTY.
Licensee shall pay a Running Royalty of 5% of the sale price of all Licensee
Products.
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EXHIBIT B
LICENSEE'S PRODUCTS
SOFTWARE
1. AUTOMATED RELATIONAL INDEXING APPLICATION.
2. WEBLINK APPLICATION.
3. PAPERDATA ANNOTATION APPLICATION
HARDWARE
NONE.
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