License Agreement - SunnComm Inc. and Will-Shown Technology Co. Ltd.
LICENSE AGREEMENT between SunnComm, Inc. and Will-Shown Technology Company, Ltd. THIS LICENSE AGREEMENT (this "Agreement") is made effective this 5th day of December, 2000 between WILL-SHOWN TECHNOLOGY COMPANY, LTD, incorporated under the laws of the R.O.C.with corporate offices located at 2A, No 137, SEC, 2, TA-Tung Road, Shiju City, Taipei Hsien, Taiwan, R.O.C. ("Licensee"), and SUNNCOMM, INC., a Nevada corporation, with offices at 668 North 44th Street, Suite 220, Phoenix, Arizona 85008 USA ("Licensor"). WHEREAS, Licensor is the owner of proprietary, patent-pending encryption and copy-protection technology designed to copy protect digital music (the "Audio Copy Protection System"), together with the Licensed Properties as defined below, and; WHEREAS, Licensee is desirous of acquiring a license to apply the Audio Copy Protection System, together with the Licensed Properties, to sound recordings embodied on compact discs manufactured, marketed and distributed by Licensee (the "Products"), and; WHEREAS, Licensor is willing to grant said license upon the terms and conditions set forth herein: NOW, THEREFORE, in consideration of the foregoing, and of the mutual covenants, terms, conditions, and agreements, hereinafter expressed, and other good and valuable consideration, the receipt and sufficiency for which is acknowledged, the parties agree as follows: DEFINITIONS. As used in this Agreement: A. "Licensed Properties" shall mean the rights to the Know-How and the Marks, as defined herein. B. "Know-How" shall mean all trade secrets, patent rights and otherproprietary information, technology, processes and procedures that are necessary to develop, apply, produce and otherwise commercially exploit the Audio Copy Protection System. C. "Marks" shall mean all rights to use the name "SUN-X" and other names, trademarks, service marks or logos used by Licensor in connection with the Know-How. D. "Net Factory Sales Price" is defined as the gross retail selling price of each unit of the Products. If Products are made abroad, less usual trade discounts actually allowed, but not including advertising allowances or fees or commissions paid to employees or agents of Licensee. The Net Factory Sales Price shall not include (1) import and export taxes, excise and other sales taxes, and customs duties, and (2) costs of insurance and transportation, if separately billed, from the place of manufacture if in the U.S., or from the place of importation if manufactured abroad, to the customer's premises or next point of distribution or sale. Subject to the minimum royalty payment described in Section 2(A) below, bona fide returns not to exceed 25% of total sales of Products may be deducted from units of Products shipped in computing the royalty payable after such returns are made. 1. GRANT OF LICENSE. A. In accordance with this Agreement, Licensor grants to Licensee a nonexclusive, nontransferable worldwide license to apply the Audio Copy Protection System, together with the Licensed Properties, to the Products solely in connection with the manufacturing, sale, marketing, distribution and advertising of the Products. Licensor shall, at its expense and without additional costs to Licensee, disclose the Know-How to Licensee, including manuals, test data and research results. Licensor shall also, at its expense and without additional costs to Licensee, share with Licensee the informationpossessed by Licensor, whether now or in the future, that my be beneficial to Licensee's use of the license granted hereunder, including without limitation Know-How developed after the date of this Agreement. B. The license granted to Licensee hereunder shall be exclusive only as it relates to any Products by artists for which Licensee promotes and distributes exclusively pursuant to a written exclusive recording agreement between such artists and Licensee. It is not the intent of Licensor to grant an exclusive right to the use of the Audio Copy Protection System and the Licensed Properties otherwise, except as stated herein. Licensee agrees that it shall use the Audio Copy Protection System exclusively during the term of this Agreement and any extensions thereof. C. The rights granted to Licensee hereunder shall include any additional intellectual property rights used, developed or otherwise acquired by Licensor that are in any way related to the Audio Copy Protection System and the Licensed Properties, including any rights in any modifications or improvements to the Audio Copy Protection System and the Licensed Properties developed by Licensor (either alone or jointly with third parties) without substantial aid or involvement by Licensee (collectively, "Licensor Modifications"). Licensor Modifications shall be solely owned by Licensor. Licensor shall, at its expense, promptly disclose to Licensee all such additional intellectual property rights (including without limitation Licensor Modifications) and shall share with Licensee the related information free of charge. 2. PERFORMANCE & COMPENSATION. Upon the execution of this Agreement, Licensee agrees to pay Licensor an advance royalty fee of USD Forty Thousand Dollars ($40,000.00). A. Licensee herein agrees that Licensee shall pay Licensor a three percent(3%) royalty on the Net Factory Sales Price on each unit of Product sold to which the Audio Copy Protection System has been applied, but in no event shall Licensor receive a royalty of less than twenty cents ($.20) for each such unit of Product sold. Payment shall be calculated on a monthly basis and shall be paid within 30 days from the end of each prior month. B. Licensee hereby agrees to ship the minimum number of units of Product to which the Audio Copy Protection System has been applied in accordance with the schedule set forth on TABLE A below (the "Minimum Performance Requirement"). Licensee's failure to meet the Minimum Performance Requirement shall not relieve Licensee of the obligation to pay monthly royalties pursuant to Section 2(A) above based upon such Minimum Performance Requirement. TABLE A ------- Minimum Units per Month Contract Year ----------------------- ------------- 100,000 0 - 6 months 200,000 7 - 9 months 800,000 2 - 3 1,250,000 4 - 5 1,500,000 6 - 7 1,750,000 8 - 9 2,000,000 10 - 11 2,500,000 12 - 13 C. Licensee shall pay to Licensor all royalties due on a monthly basis within thirty (30) days from the end of each month. Within thirty (30) days after the end of each calendar month, Licensee shall submit to Licensor a written statement setting forth the actual number of units shipped of Product to which the Audio Copy Protection System has been applied, the Net Factory Sales Price for each such unit of Product, the amount of royalty due on each such unit of Product for the previous month, and any adjustments for returns. Failure to pay any royalty payment when due shall constitute a material breach of this Agreement. If such breach is not cured within the applicable cure period set forth in Section 3(C) below, Licensor may terminate this Agreement upon written notice to Licensee and pursue any and all legal and equitable remedies available to Licensor Late royalty payments shall bear simple interest at the rate of twelve percent (12%) per annum until paid in full. D. Upon at least three (3) days advance written notice given to Licensee by Licensor, Licensee shall make available to Licensor, or if requested by Licensee, to a Certified Public Accountant or other independent third-party agreeable to Licensor and Licensee, during reasonable business hours at Licensee's principal place of business those books and records of Licensee that relate to the subject matters of this Agreement. Licensor may, at its expense, cause an audit of such books and records by a Certified Public Accountant or other independent third-party agreeable to Licensor and Licensee, and any additional royalties determined to be due shall be paid by Licensee within fifteen (15) days of written notification of underpayment to Licensee. If such underpayment exceeds five percent (5%) of the outstanding royalties owed, Licensee shall pay the cost and expense of the audit. 3. DURATION, DEFAULTS & TERMINATION. A. This Agreement shall remain in effect, unless sooner terminated upon the mutual agreement of Licensor and Licensee, upon the following terms and conditions: 1. The initial term of the license granted herein shall be seven (7) years with three (3) consecutive option periods of two (2) years each beginning at the end of the initial term. Each option, which shall be exercised at the sole discretion of Licensee, shall be subject to the applicable Minimum Performance Requirement as set forth in TABLE A above. 2. Licensor shall supply or provide to Licensee the following: e. Available Know-How to enable Licensee to apply the Audio Copy Protection System to its Products and to develop and manufacture on a commercial scale all of its Products in the same manner as it is currently using. f. Suitably qualified technical support staff to assist and supervise in the transfer of the Audio Copy Protection System and additional assistance to Licensee as reasonably required. g. Licensee shall not be entitled to sub-license the license granted under this Agreement to any third party or to any subsidiary. h. Licensee shall have no right to manufacture, use or sell the Audio Copy Protection System or the Licensed Properties otherwise than as expressly set forth herein. B. This Agreement shall expire simultaneously with the expiration of the longest-lived option as extended by Licensee, unless sooner terminated pursuant to the terms of this Agreement. C. If Licensee fails to pay Licensor moneys payable under the terms hereof, or if Licensee violates or fails to keep or perform any other obligation, term, or condition, or covenant, hereof, or if Licensee shall be adjudged bankrupt or become insolvent or make an assignment for the benefit of creditors, or be placed in the hands of a receiver or Trustee in bankruptcy, then Licensor may, at its option, cancel and terminate this Agreement by giving thirty (30) days written notice specifying default complained hereof, provided however, that if Licensee shall, within such (30) thirty days cure the default complained of, then the notice shall cease to be operative and this Agreement shall continue in full force and effective as though such default had not occurred, and provided further that if Licensee shall within such (30) days notify Licensor in writing that it disputes the asserted default, the matter shall be submitted to arbitration a hereinafter provided. D. Termination of this Agreement granted herein shall not relieve Licensee of its obligations to pay Licensor moneys due and unpaid at the time of termination. Termination of this Agreement shall not impair or prejudice any cause of action or claim that one party may have against the other party for any breach of this Agreement. 4. Quality Control and Use of Licensed Properties A. The quality of the Audio Copy Protection System and the Licensed Properties provided by Licensee shall be substantially consistent with such services and products provided by Licensor or by others authorized by Licensor unless otherwise approved by Licensor. B. Each unit of Product to which the Audio Copy Protection System has been applied shall bear the trademark "SUN-X" in form, print size and position mutually acceptable to the parties hereto. C. Licensee shall use confidentiality, patent, trademark and other notices in connection with the Audio Copy Protection System and the Licensed Properties in accordance with reasonable guidelines provided by Licensor. D. Licensor shall provide Licensee with samples of all promotional materials, if any, used by Licensor in connection with the Audio Copy Protection System and the Licensed Properties. Licensee may duplicate and distribute promotional materials obtained from Licensor to promote its Products to which the Audio Copy Protection System has been applied, and may prepare and use its own promotional materials (subject to Licensor's approval, which shall not be unreasonably withheld) for the marketing and promotion of such Products. Licensee may use its own marks in conjunction with the Marks. 5. ARBITRATION. All disputes under this Agreement that cannot be resolved by the parties shall be submitted to arbitration under the rules and regulations of the American Arbitration Association. Either party may invoke this Section after providing 30 days' written notice to the other party. Any award may be enforced by a court of law. The arbitration hearing shall be held in Maricopa County in the State of Arizona. Each party hereto shall choose one arbitrator, and the two chosen arbitrators shall choose a third arbitrator. The majority decision of the arbitrators shall be final, and the non-prevailing party shall bear the cost and expense of the arbitration, including the reasonable attorneys' fees and arbitration costs and fees of the prevailing party. 6. WARRANTIES. A. Licensor represents and warrants that it is the exclusive owner of all right, title and interest in and to the Audio Copy Protection System and the Licensed Properties, that no other person has any superior rights to or in theAudio Copy Protection System and the Licensed Properties, and that it knows of no person who claims any superior rights in or to the Audio Copy Protection System and the Licensed Properties. Licensor represents and warrants that it has the power, authority and legal right to enter into this Agreement. B. Licensor represents and warrants that the use of the Audio Copy Protection System and the Licensed Properties by Licensee pursuant to this Agreement will not conflict with or infringe on the rights of other persons, and that it knows of no person who claims that the use of the Audio Copy Protection System and the Licensed Properties by Licensee will conflict with or infringe on the rights of any person. C. During the term of this Agreement, Licensor shall take all actions reasonably necessary to maintain and protect the Audio Copy Protection System and the Licensed Properties, and shall take no action that impairs or diminishes the Audio Copy Protection System and the Licensed Properties. D. Licensor shall take all actions necessary to enforce, defend and otherwise protect the Audio Copy Protection System and the Licensed Properties. If Licensee requests Licensor to take legal action to protect any aspect of the Audio Copy Protection System and the Licensed Properties, Licensor shall either: (i) promptly take such legal action at Licensor's expense; or (ii) cooperate with Licensee to allow Licensee to take such legal action at Licensee's expense. Each party shall promptly notify the other if such party becomes aware of any information indicating that there may be an infringing or otherwise unauthorized use of the Audio Copy Protection System and the Licensed Properties or that there is an authorized claim or potential claim of a right in the Audio Copy Protection System and the Licensed Properties. Either party who takes legal action under this Section shall keep the other party informed of all decisions and actions relating to such legal action, and shall, upon request, provide the other party with copies of all documents relating to such action. Licensor and Licensee shall cooperate with each other to take all actions authorized under this Section. Nothing in this Section shall prevent Licensee from taking legal action to enforce or defend its own intellectual properties. The rights provided under this Section are without prejudice to any other available remedies. 7. TRANSFER OF RIGHTS. This Agreement shall be binding on any successors and assigns of the parties. Licensor retains the right to assign its interests in this Agreement to any other party. Licensee may assign its interest in this Agreement upon receipt of prior written consent from Licensor. 8. ENTIRE AGREEMENT. This Agreement contains the entire agreement of the parties and there are no other promises or conditions in any other agreement whether oral or written. This Agreement supersedes any prior written or oral agreements between the parties. 9. RELATIONSHIP. Licensor and Licensee and their employees and agents or independent contractors in relation to one another with respect to all matters arising under this Agreement. Neither this Agreement nor any transaction under or relating to this Agreement shall be deemed to create an agency, partnership, joint venture, association or employment relationship between the parties. 10. AMENDMENT. This Agreement may be modified or amended, if the amendment is made in writing and is signed by both parties. 11. SEVERABILITY. If any provision of this Agreement shall be held to be invalid or unenforceable for any reason, the remaining provisions shall continue to be valid and enforceable. If a court finds that any provision of this Agreement is invalid or unenforceable, but that by limiting such provision it would become valid or enforceable, then such provision shall be deemed to be written, construed, and enforced as so limited. 12. WAIVER OF CONTRACTUAL RIGHT. The failure of either party to enforce any provision of this Agreement shall not be construed as a waiver or limitation of that party's right to subsequently enforce and compel strict compliance with every provision of this Agreement. 13. NOTICE. All correspondence such as purchase orders, statements, payments, notices, etc. shall be considered as so delivered to Licensor or Licensee when sent by registered mail, postage prepaid, within (10) days' written notice thereof delivered to: If to Licensor: SUNNCOMM INC. Attn: President 668 North 44th Street Suite 220 Phoenix, AZ 85008 Attn: Peter H. Jacobs Facsimile: (602) 267-7400 Telephone: (602) 267-7500 With copies to: Gammage & Burnham Two N. Central Avenue, 18th Floor Phoenix, Arizona 85004 Attn: William D. O'Neal, Esq. Facsimile (602) 256-4475 Telephone: (602) 256-4468 If to Licensee: WILL-SHOWN TECHNOLOGY CO. LTD. Attn: Joe Shih 2A, No 137, SEC, 2, TA-Tung Road, Shiju City, Taipei Hsien, Taiwan, R.O.C. 14. APPLICABLE LAW. This Agreement shall be governed by the laws of the State of Arizona without regard to conflict of law rules 15. COUNTERPARTS. This Agreement may be executed in one or more counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same Agreement. 16. CONFIDENTIALITY. Licensee acknowledges that the Audio Copy Protection System and the Licensed Properties are proprietary to Licensor and highly confidential (its "Confidential Information") and Licensor acknowledges that Licensee may disclose proprietary and confidential information (its "Confidential Information") to Licensor during the term hereof. Accordingly, each party agrees to: A. Maintain the other party's Confidential Information in confidence and not use, copy, modify or distribute any such Confidential Information except as permitted by this Agreement; B. Restrict access to the other party's Confidential Information to those of its employees, contractors and agents who reasonably require access to such Confidential Information in order to perform the activities permitted by this Agreement; C. Provide the other party written notice of any breach to this Section within fifteen (15) days of learning of such breach; D. Upon early termination of this Agreement immediately return all originals and copies of the other party's Confidential Information, including without limitation computer data and other records or memorials of Know-How in any form or quantity, that may have been provided to the other. E. No obligation of confidentiality or return of information as stated above shall extend to information that: (i) was known by the receiving party prior to its delivery hereunder, except for all material provided by Licensor to Licensee prior to the execution of this Agreement; (ii) becomes known to the receiving party through no act of its own or its employees, subcontractors or agents; or (iii) becomes a matter of public knowledge through no fault of the receiving party or its agents, subcontractors or agents. F. Each party represents and warrants to the other that it will maintain confidentiality agreements and obligations with its respective employees, subcontractors and agents which will impose upon them confidentiality obligations consistent with this Agreement. IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the date first written above. LICENSOR: SUNNCOMM INC., a Nevada corporation By: /s/ Peter H Jacobs ----------------------------- Peter H Jacobs, President LICENSEE: WILL-SHOWN TECHNOLOGY CO. LTD, By /s/ Joe Shih ------------------------------- Joe Shih, it's President AGREEMENT ADDENDUM 1. The "Licensee" will ask the "Licensor" to provide one set of software package which has been installed with "The Audio Copy Protection System" 2. Licensee shall be given thirty (30) days from the date of installation at Licensee's facilities to penetrate the technology and confirm Licensee's systems as described herein function normally. IN WITNESS whereof the parties hereto have executed the Agreement Addendum in accordance with their respective constitutions the day and year first written above. FOR SUNNCOMM, INC. BY__________________________________ Peter H. Jacobs, President FOR WILL-SHOWN TECHNOLOGY COMPANY BY____________________________________ Joe Shih, President