License Agreement [Amendment No. 3] - Carnegie Mellon University and Coda Music Technology Inc.
Amendment #3 (August 28, 1996) to
License Agreement between CMU and Coda Music Technology/Vivace
The License Agreement made on June 10, 1992 between Carnegie Mellon University
("CMU") and the LICENSEE Coda Music Technology Inc. ("Coda", formerly known as
Vivace, Inc., the name of which was legally changed to Coda Music Technology,
Inc. on March 17, 1994), having its current principal office at 6210 Bury Drive,
Eden Prairie, MN 55346-1718, as first amended by the letter agreement, dated
November 12, 1993, and further amended by Amendment #2 dated May 12, 1994, is
hereby further amended, (the June 10, 1992 Agreement as modified by the three
amendments is referred to as the "License Agreement") and the parties hereto do
hereby mutually covenant and agree as follows.
A. Intent and Purposes of this Amendment.
The general purposes and intent of this Amendment are :
1 To have the License adjusted to changes and developments in technology and
markets which have occurred since the conception of the original License
Agreement.
2 To encourage and facilitate cooperation between Coda and CMU toward (1) the
success of Coda and (2) the widest possible dissemination and use of the
CMU music technology subject to the License Agreement.
3 To simplify certain provisions of the License Agreement in order to avoid
complicated, time consuming and potentially costly issues and
disagreements, including adaptation of certain definitions and provisions
of the License Agreement; to accomplish these changes while maintaining the
original intent of the parties.
B. Royalties; License Maintenance and Exclusivity Requirements.
Paragraph 4.1 of the License Agreement is hereby amended to read as follows :
LICENSEE agrees to pay CMU Annual Royalties as follows :
* For calendar year 1996 -- $100,000 (one hundred thousand dollars)
* for 1997 -- $100,000 (one hundred thousand dollars);
* for 1998 -- $200,000 (two hundred thousand dollars);
* for each of the following years - 1999, 2000, 2001, 2002, 2003, 2004 -
$300,000 (three hundred thousand dollars) per year;
* for the period from 1/1/2005 through 5/24/2005 -
$150,000 (one hundred and fifty thousand dollars).
<PAGE>
Annual Royalties shall be due and payable on the following Due Dates, in the
following Payment Increments :
<TABLE>
<CAPTION>
March 31 June 30 Sept. 30 Dec. 31 (Annual Total)
-------- ------- -------- ------- -------------
<S> <C> <C> <C> <C> <C>
1996 0 0 $50,000 $50,000 $100,000
1997 $15,000 $15,000 $35,000 $35,000 $100,000
1998 $40,000 $40,000 $60,000 $60,000 $200,000
1999 through
2004 $60,000 $60,000 $90,000 $90,000 $300,000
May 31, 2005
2005 $75,000 $75,000 $150,000
</TABLE>
Payment of the above specified Annual Royalty amounts on the specified Due Dates
shall discharge the payment obligations of LICENSEE required to keep the
exclusive licenses in effect as provided in Section 2.1 of the License Agreement
(as amended by Amendment #2, Section III,) subject to the other provisions of
the License Agreement.
Paragraphs 4.2 and 4.3 of the License Agreement and any amendments thereto are
deleted.
Any payments due from LICENSEE to CMU for (1) CMU Sub-license Royalty Splits
(per Section 2.5 of the License Agreement), (2) Future Related CMU Technology
(Section 2.2 of the License Agreement), (3) any new license agreements between
CMU and LICENSEE, (4) Penalty Payments (see Section C below), and/or (5) any
reason other than Annual Royalties, shall be amounts due and payable by LICENSEE
to CMU in addition to the Annual Royalties specified herein.
<PAGE>
C. CMU MusicTutor Products and Features.
LICENSEE has presented to CMU its plans to introduce two Assessment Products
and/or Features ("Assessment Products") during 1997 calendar year, tentatively
defined as the Intonation Trainer and The Rhythm Trainer; LICENSEE reserves the
right to change these names in the event that research indicates that another
name would enhance marketability. LICENSEE has requested, and CMU hereby agrees,
that meeting of the following conditions will meet the Due Diligence marketing
and sales performance Requirements of Article III of the License Agreement with
regard to MusicTutor products ("Requirements") :
Starting during the third quarter of 1997, both Assessment Products have been
developed and introduced to the market, are included in LICENSEE's product
brochures and selling programs, and are promoted in LICENSEE's general
promotion programs, including LICENSEE's customer exhibits and presentations.
LICENSEE and CMU agree that, in the event that LICENSEE should not meet these
Requirements, LICENSEE will pay CMU an annual Penalty Payment of $10,000 for
1997 and/or for each year of the remaining Term of the License Agreement during
which such a deficiency exists; such Payments shall be due at the end of each
such year.
D. Reports
In addition to the reporting requirements of Article V (Reports and Records) of
the License Agreement, LICENSEE will report to CMU, quarterly and for each
calendar year -
(1) total number of Licensed Products sold
(2) number of each Coda / Vivace Assessment product sold - (a) as a
separate unit or module, and/or (b) as a built-in component or
function of other Vivace / Coda products.
Where classification is unclear, LICENSEE will consult with CMU as to proper
method of reporting.
<PAGE>
E. Termination.
Paragraph 13.2 of the License Agreement is hereby amended to read as follows :
Should LICENSEE fail to pay amounts due for payment to CMU within fourteen (14
days) after the date when due and payable hereunder, CMU shall have the right to
terminate this Agreement on thirty (30) days' written notice, unless LICENSEE
pays CMU within that thirty (30) day period all such amounts due. Upon the
expiration of the thirty (30) day period, if LICENSEE has not paid such amounts
due, the rights, privileges and License granted to LICENSEE shall thereupon
terminate, except as provided for in paragraph 13.6 of the License Agreement as
amended below.
Paragraph 13.5 of the License Agreement, is hereby amended to read as follows :
LICENSEE may initiate or cause the Termination of the License Agreement only as
of the end of a calendar year during the remaining Term of the license (with the
exception of the last period, ending 5/24/2005) ("Permitted Effective
Termination Dates"), with minimum required written Termination Notice to CMU to
be in accordance with the following schedule :
Latest date when Termination Notice must Permitted Effecitve Dates for
be received by CMU, as related to Termination initiated or
Permitted Effective Termination Dates caused by LICENSEE
12/20/1996 12/31/1997
12/20/1997 12/31/1998
12/20/1998 12/31/1999
12/20/1999 12/31/2000
6/30/2000 12/31/2001
6/30/2001 12/31/2002
6/30/2002 12/31/2003
11/24/2003 5/24/2005
<PAGE>
Paragraph 13.6 of the License Agreement is hereby amended to read as follows :
Upon Termination of this Agreement for any reason, nothing herein shall be
construed to release either party from any obligation that has matured prior to
the Effective Date of the Termination. LICENSEE and any sub-licensee thereof
may, however, after the Effective Date of such Termination, sell all Licensed
Products and complete the manufacture and sale of all Licensed Products which
were in LICENSEE's or sub-licensee's physical inventory or were in the process
of manufacture at the time of such Termination, provided that LICENSEE shall (1)
report to CMU a complete listing of any such products with within 30 days after
such Termination, (2) pay to CMU any Annual Royalties specified in this
Amendment for any calendar year during which such sales occurred until all such
products have been sold, (3) pay to CMU any remaining CMU Sub-license Royalty
Split amounts as provided for in Section 2.5 of the License Agreement, and (4)
submit to CMU the reports required under the License Agreement until all such
sales have been completed.
F. Notices (General)
Article XIV is amended as follows : The designated name and address for CMU
shall be
Benno A. Bernt, Director of Technology Transfer
Carnegie Mellon University, Warner Hall 407
5000 Forbes Avenue,
Pittsburgh, PA 15213-3890
Fax 412-268-7395
G. Other Provisions
Except as amended hereby, the License Agreement shall continue in full force and
effect.
<PAGE>
IN WITNESS WHEREOF, the parties have executed this agreement, with the intention
of being legally bound, as of August 28, 1996.
Accepted and agreed to :
For Carnegie Mellon University For Coda Music Technology, Inc.
/s/ Benno A. Bernt /s/ Ron Raup
Benno A. Bernt, Ron Raup,
Director of Technology Transfer President
9/22/96 9/9/96
Date Date
/s/ Susan Burkett
Susan Burkett,
Associate Provost
9/23/96
Date