License Agreement - Vidikron of America Inc. and Distributed Media Corp.
LICENSE AGREEMENT
License Agreement made this 29th day of September, 2000 by and between Vidikron
of America, Inc., a _________ Corporation ("Licensee", "Vidikron" or "VAI") and
Distributed Media Corporation, a subsidiary of NCT Group, Inc. a Delaware
Corporation with offices at 20 Ketchum Street, Westport, CT 06880, USA, ("DMC").
WHEREAS Licensee is engaged in the design, development, manufacture and
marketing of Systems for the projection of TV images for the home theater market
for various geographic markets around the world; and
WHEREAS Distributed Media Corporation is engaged in the development of digital
transmission and control technology that has been applied to various fields and
industries, and is the licensee of certain United States and foreign patents and
copyrights covering various aspects of Internet connectivity and digital control
technology which both parties believe can be applied to products sold by
Licensee; and
WHEREAS Licensee is desirous of obtaining a license from DMC to use, make and
sell the Licensed Techgnology in the Market;
NOW THEREFORE, in consideration of the mutual covenants contained herein, as
well as other good and valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, the parties agree as follows:
<PAGE>
ARTICLE 1. DEFINITIONS
As used herein, the terms described below have the following meanings.
1.1 "Affiliate" shall mean any legal entity which directly or indirectly, is
controlled by, is in control of, or under common control with the legal
entity with reference to which the term "Affiliate" is used.
1.2 "Confidential Information" shall mean the information described in Article
5 below and shall include the Deliverables and any and all samples, models,
prototypes, drawings, specifications, formulas, algorithms, software,
operating techniques, processes, data, technical and other information,
including any information relating to the status of research or other
investigations being conducted, whether given in writing, orally, or in
magnetic or other electronic processing form to the extent that such
information is not in the public domain through other than a breach of this
Agreement.
1.3 "Deliverables" shall mean the models, specifications, codes and other
documentation and materials described on Schedule A hereto to be delivered
by DMC to Licensee under Section 4.3 of this Agreement.
1.4 "Know-how", in general, will have its usual and accepted meaning, that is,
inter alia, all factual knowledge and information not capable of precise,
separate description but which, in an accumulated form, after being
acquired as the result of trial and error, gives to the one acquiring it an
ability to produce and market something which one otherwise would not have
known how to produce and market with the same accuracy or precision
necessary for commercial success.
1.5 "Licensed Patents" shall mean all those patents relating to the Market
licensed by DMC together with those patents issued under patent
applications filed or to be filed relating to the Market including any
continuations, continuations-in-part, divisions, extensions, reissues,
re-examinations or renewals of any of the foregoing.
1.6 "Licensed Product" shall mean the Vidikron Products embodying or employing
all or part of the Licensed Patents and/or the Licensed Technology.
1.7 "Licensed Technology" shall mean that unpatented technology relating to the
Market licensed by DMC.
1.8 "Licensee Technology" shall mean any and all existing, other than Sponsor
Technology, relating to the design, development, manufacture and assembly
of VAI Products, now owned or licensed by or to Licensee and/or its
Subsidiaries, including without limitation all know-how, trade secrets,
methods, operating techniques, processes, software, materials, technical
data, engineering information, formulas, specifications, drawings,
machinery and apparatus, patents, patent applications, copyrights and other
intellectual property relating thereto.
1.9 "Market" shall mean the video portion relating to the Home Theater and the
Outdoor Billboard market in the World.
1.10 "DMC Technology" shall mean any and all existing technology, other than
Sponsor Technology, relating to the Market, now owned or licensed by or to
DMC and/or its Subsidiaries or affiliates, including without limitation all
know-how, trade secrets, methods, operating techniques, processes,
software, materials, technical data, engineering information, formulas,
specifications, drawings, machinery and apparatus, patents, patent
applications, copyrights and other intellectual property relating thereto.
1.11 "DMC Technology License" shall mean the license to the Licensed Patents and
the Licensed Technology granted by DMC to Licensee under Article 2 of this
Agreement.
1.12 "Sponsor Technology" shall mean with respect to a party hereto (i) all
existing technology owned or licensed by or to a party and/or its
Affiliates or affiliates which, by virtue of contract restrictions binding
on such party, cannot be disclosed or transferred to the other party on the
same terms and conditions as DMC Technology or Licensee Technology, as the
case may be; and (ii) all existing technology which results from the
combination of a party's technology and a third party's technology, and
which by virtue of contract restrictions binding on the party in question,
cannot be disclosed or transferred to the other party on the same terms and
conditions as DMC Technology or Licensee Technology, as the case may be.
1.13 "Technical Information" shall mean technical, design, engineering, and
manufacturing information and data pertaining to the design, manufacture,
commercial production and distribution of Licensed Products in the form of
designs, prints, plans, material lists, drawings, specifications,
instructions, reports, records, manuals, other written materials, computer
programs and software and other forms or media relating thereto.
ARTICLE 2. LICENSES
2.1 The DMC Technology License - License to Licensed Patents and Licensed
Technology. Subject to the terms and conditions of this Agreement, DMC
hereby grants to Licensee, its Affiliates and partners a license to use,
make, distribute, sell and/or have sold Licensed Products which inCorporate
or embody, or are covered or claimed by, or are based on one or more of the
Licensed Patents and/or Licensed Technology as practiced, claimed or
contained in object code form.
2.2 Limitations. The DMC Technology License shall be non-exclusive as against
all others for the manufacture, use and sale of Licensed Products in the
Market. Said licenses are limited to: (a) the manufacture, use,
distribution and sale of Licensed Products which practice, claim or contain
the Licensed Patents and/or Licensed Technology, and (b) the Market.
2.3 Assignment and Sublicensing. The rights and licenses granted hereunder may
not be sublicensed, conveyed, assigned or otherwise transferred by Licensee
to any third party without DMC's prior written consent in each instance. In
addition, Licensee shall have the right to have Licensed Products
manufactured for it by others but only after obtaining DMC's prior written
consent and only under nondisclosure agreements implemented in accordance
with the provisions of Articles 4 and 5 hereof.
2.4 Acceptance. Licensee hereby (i) accepts the rights under the DMC Technology
License granted to it by DMC under this Article 2, and (ii) acknowledges
that the rights that DMC has granted to Licensee hereunder are
non-exclusive and limited to the manufacture, use, distribution and sale of
Licensed Products in the Market subject to the limitations set forth
herein.
2.5 Patent and Copyright Notices. Licensee shall mark each Licensed Product
sold, leased, distributed or otherwise transferred and shall cause all
licenses, contracts and agreements with other parties for the sale, lease,
distribution, use or other disposition of Licensed Products to contain a
provision requiring, if feasible in Licensee's reasonable opinion, such
other parties to mark each Licensed Product with a suitable legend
identifying the Licensed Patents and Licensed Technology with the
appropriate patent or copyright notice, as the case may be. If, in
Licensee's reasonable opinion, the Licensed Product is too small to have a
legend placed on it, Licensee will use all reasonable efforts to have a
legend placed on the software and/or packaging.
ARTICLE 3. FEES AND ROYALTIES
3.1 Fees. Licensee shall pay DMC $1,000,000 (one million dollars) as a
non-refundable up-front license fee. These fees are due upon execution of
this Agreement.
3.2 Unit royalties. Licensee shall not pay DMC any royalties.
3.3 Payment. (Intentionally Blank)
ARTICLE 4. DISCLOSURE OF INFORMATION, DATA AND KNOW-HOW
4.1 Disclosure. The parties shall disclose to each other such appropriate
Technical Information as may be reasonably required to accomplish the
purposes of this Agreement. It is agreed, however, that neither party shall
be obligated to disclose information, the disclosure of which has been
restricted by a third party.
4.2 Treatment. All disclosed Technical Information which is Confidential
Information (as defined in Article 5 below) shall be kept confidential by
the receiving party in accordance with the further provisions of Article 5
below and will remain the property of the disclosing party.
4.3 Deliverables. DMC shall deliver the Deliverables to Licensee and in
accordance with the delivery dates set forth on Schedule A hereto.
ARTICLE 5. CONFIDENTIALITY
5.1 Definitions. Each party possesses and will continue to possess confidential
information relating to its business and technology which has substantial
commercial and scientific value in the business in which it is engaged
("Confidential Information"). Subject to Section 5.4, Confidential
Information includes, but is not limited to: Deliverables, Technical
Information, trade secrets, processes, formulas, data and know-how,
discoveries, developments, designs, improvements, inventions, techniques,
marketing plans, strategies, forecasts, new products, software
documentation, unpublished financial statements, budgets, projections,
licenses, prices, costs, customer lists, supplier lists and any other
material marked "Confidential Information", "Proprietary Information" or in
some other reasonable manner to indicate it is confidential. Any
Confidential Information disclosed between the parties hereto orally or
visually, in order to be subject to this Agreement, shall be so identified
to the receiving party at the time of disclosure and confirmed in a written
summary appropriately marked as herein provided within ten (10) days after
such oral or visual disclosure.
5.2 Treatment. Each party shall during the term of this Agreement and for a
period of five (5) years thereafter, hold in confidence and not disclose to
third parties except as specifically permitted under this Section 5.2 and
Section 5.4 below any and all Confidential Information of the other party
disclosed directly or indirectly to it by the other party.
Each party shall take the following minimum safeguards with respect to the
Confidential Information of the other party:
(a) only those of its employees who need to receive the other party's
Confidential Information in order to carry out the purposes of this
Agreement shall have access to such information and such access shall
be limited to only so much of such information as is necessary for the
particular employee to properly perform his or her duties;
(b) all documents, drawings, writings and other embodiments which contain
Confidential Information of the other party shall be maintained in a
prudent manner in a secure fashion separate and apart from other
information in its possession and shall be removed therefrom only as
needed to carry out the purposes of this Agreement;
(c) all documents, drawings, writings and other embodiments of information
the security or safekeeping of which are subject to governmental
regulations shall be kept in accordance with those regulations;
(d) all employees and contractors who shall have access to Confidential
Information of the other party shall be under written obligation to
it; (i) to hold in confidence and not disclose all Confidential
Information made available to them in the course of their employment;
(ii) to use such Confidential Information only in the course of
performing their employment duties; and (iii) to assign to their
employer or the party retaining them all inventions or improvements
relating to their employer's business and conceived while in their
employer's employ unless such assignment is prohibited by applicable
law.
Notwithstanding the foregoing, a party receiving Confidential Information
of the other party may disclose to its subcontractors and material and
component suppliers so much of such Confidential Information as is
necessary to enable such party to perform its duties and obligations
related to the accomplishment of the purposes of this Agreement provided
that such subcontractors and suppliers are obligated to such party in
writing; (i) to hold in confidence and not disclose such information; and
(ii) not to use such information except as authorized by such party.
In no event shall the party receiving Confidential Information of the other
party disassemble, reverse engineer, re-engineer, redesign, decrypt,
decipher, reconstruct, re-orient, modify or alter any Confidential
Information of the disclosing party or any circuit design, algorithm, logic
or program code in any of the disclosing party's products, models or
prototypes which contain Confidential Information or attempt any of the
foregoing without first obtaining written consent of the disclosing party
in each instance.
5.3 Return. All documents, drawings, writings and other embodiments of a
party's Confidential Information, as well as those produced, created or
derived from the disclosing party's Confidential Information which
incorporate the disclosing party's Confidential Information and all copies
thereof shall be returned promptly to it by the other party upon the
termination of this Agreement provided that the parties shall continue to
be bound by the provisions of Section 5.2 above.
5.4 Exclusions. Confidential Information shall not include information that;
(a) was at the time of disclosure in the public domain through no fault of
the party receiving it;
(b) becomes part of the public domain after disclosure to the party
receiving it through no fault of such party;
(c) was in the possession of the party receiving it (as evidenced by
written records) at the time of disclosure and was not acquired
directly or indirectly from the other party, or a third party, as the
case may be, under a continuing obligation of confidence of which the
party receiving it was aware;
(d) was received by the party receiving it (as evidenced by written
records) after the time of disclosure hereunder from a third party who
did not require it to be held in confidence and who did not acquire it
directly or indirectly from the other party under a continuing
obligation of confidence of which the party receiving it was aware;
(e) required by law, governmental regulations, court order or the rules of
any relevant securities exchange to be disclosed, but only to the
extent of such required disclosure; provided, that a party required to
so disclose Confidential Information shall use best efforts to notify
the other party of such potential disclosure so that such party may
seek a protective order or other remedies to maintain in confidence
any such Confidential Information;
(f) was developed independently by the receiving party and without the use
of any Confidential Information received from the disclosing party
under this Agreement; or
(g) was or is disclosed by the party owning it to third parties without
restrictions on use or disclosure comparable to those contained
herein.
ARTICLE 6. PAYMENTS, REPORTS AND RECORDS
(Intentionally Blank)
ARTICLE 7. TERM
The term of this Agreement shall begin on the date hereof and, unless extended
or earlier terminated by the written agreement of the parties or the provisions
of Article 9 below, shall expire immediately upon either: (i) with respect to
rights granted under any patent hereunder, the expiration of that patent under
applicable law; or (ii) with respect to the other rights granted hereunder, upon
the expiration of the last to expire of the patents licensed hereunder.
ARTICLE 8. TERMINATION
8.1 General. This Agreement may be terminated prior to the end of the term
provided in Article 8 above under any of the following provisions of this
Article.
8.2 Breach. In the event of a material breach of this Agreement, if the
defaulting party fails to cure the breach within thirty (30) days, in the
case of a breach involving non-payment of amounts to be paid hereunder, or
sixty (60) days, in the case of any other kind of breach following its
receipt of written notice from the non-defaulting party specifying the
nature of the breach and the corrective action to be taken, then the
non-defaulting party may terminate this Agreement forthwith by delivering
its written declaration to the defaulting party that this Agreement is
terminated; provided any payment default will require the defaulting party
to pay interest in order to cover the default at the rate of the then
current prime rate at The Chase Manhattan Bank N.A.
8.3 Insolvency. If one of the parties becomes bankrupt or insolvent, or files a
petition therefor, or makes a general assignment for the benefit of
creditors, or otherwise seeks protection under any bankruptcy or insolvency
law, or upon the appointment of a receiver of the assets of a party
("defaulting party") then the other party shall have the right to
immediately terminate this Agreement upon written notice to the defaulting
party provided, in any such instance, that said right of termination shall
be postponed for as long as the defaulting party continues to conduct its
business in the ordinary course.
8.4 Survival of Certain Terms. Notwithstanding the termination of this
Agreement under any of the provisions of this Article 9, the terms and
conditions of Section 4.2 and Article 5, and those pertaining to the
ownership of rights acquired under Article 6 shall survive termination of
this Agreement and shall continue to be applicable and govern the parties
with respect to the subject matter thereof.
8.5 Document Return. Each party shall return to the other party within thirty
(30) days of the date of termination under either Article 8 or this Article
9 all of the secret and confidential information, patent applications, and
know-how received pursuant to this Agreement together with all other
tangible property loaned for the implementation of this Agreement.
ARTICLE 9. FORCE MAJEURE
In the event of enforced delay in the performance by either party of obligations
under this Agreement due to unforeseeable causes beyond its reasonable control
and without its fault or negligence, including, but not limited to, acts of God,
acts of the government, acts of the other party, fires, floods, strikes, freight
embargoes, unusually severe weather, or delays of subcontractors due to such
causes (an "Event of Force Majeure"), the time for performance of such
obligations shall be extended for the period of the enforced delay; provided
that the party seeking the benefit of the provisions of this paragraph shall,
within ten (10) days after the beginning of any such enforced delay, have first
notified the other party in writing of the causes and requested an extension for
the period of the enforced delay and shall use all reasonable endeavors to
minimize the effects of any Event of Force Majeure.
ARTICLE 10. APPLICABLE LAW
The terms and conditions of this Agreement and the performance thereof shall be
interpreted in accordance with and governed by the laws of the State of Delaware
and the United States of America.
ARTICLE 11. DISPUTE RESOLUTION
The parties agree to attempt in good faith to resolve any dispute arising out of
or in connection with the performance, operation or interpretation of this
Agreement promptly by negotiation between the authorized contacts of the
parties.
If a dispute should arise, the authorized contacts will meet at least once and
will attempt to resolve the matter. Either authorized contact may request the
other to meet within fourteen (14) days, at a mutually agreed time and place. If
the matter has not been resolved within thirty (30) days of a request being made
for such a meeting, the authorized contacts shall refer the matter to the
representatives of the parties who are responsible for matters at the policy or
strategic level who shall meet within fourteen (14) days of the end of the
thirty (30) day period referred to above, at a mutually agreed time and place.
If the matter has not been resolved within thirty (30) days of a request being
made for this meeting, the parties shall proceed as follows:
(a) Any action, suit or proceeding where the amount in controversy as to
at least one party, exclusive of the interest and costs, exceeds one
million dollars (a "Summary Proceeding"), arising out of or relating
to this Agreement or the breach, termination or validity thereof,
shall be litigated exclusively in the Superior Court of the State of
Delaware (the "Delaware Superior Court") as a summary proceeding
pursuant to Rules 124-131 of the Delaware Superior Court, or any
successor rules (the "Summary Proceeding Rules"). Each of the parties
hereto hereby irrevocably and unconditionally (i) submits to the
jurisdiction of the Delaware Superior Court for any Summary
Proceeding, (ii) agrees not to commence any Summary Proceeding except
in the Delaware Superior Court, (iii) waives, and agrees not to plead
or to make, any objection to the venue of any Summary Proceeding in
the Delaware Superior Court, (iv) waives, and agrees not to plead or
to make, any claim that any Summary Proceeding brought in the Delaware
Superior Court has been brought in an improper or otherwise
inconvenient forum, (v) waives, and agrees not to plead or to make,
any claim that the Delaware Superior Court lacks personal jurisdiction
over it, (vi) waives its right to remove any Summary Proceeding to the
federal courts except where such courts are vested with sole and
exclusive jurisdiction by statute and (vii) understands and agrees
that it shall not seek a jury trial or punitive damages in any Summary
Proceeding based upon or arising out of or otherwise related to this
Agreement and waives any and all rights to any such jury trial or to
seek punitive damages.
(b) In the event any action, suit or proceeding where the amount in
controversy as to at least one party, exclusive of interest and costs,
does not exceed One Million Dollars (a "Proceeding"), arising out of
or relating to this Agreement or the breach, termination or validity
thereof is brought, the parties to such Proceeding agree to make
application to the Delaware Superior Court to proceed under the
Summary Proceeding Rules. Until such time as such application is
rejected, such Proceeding shall be treated as a Summary Proceeding and
all of the foregoing provisions of this Section relating to Summary
Proceedings shall apply to such Proceeding.
(c) In the event a Summary Proceeding is not available to resolve any
dispute hereunder, the controversy or claim shall be settled by
arbitration conducted on a confidential basis, under the U.S.
Arbitration Act, if applicable, and the then current Commercial
Arbitration Rules of the American Arbitration Association
("Association") strictly in accordance with the terms of this
Agreement and the substantive law of the State of Delaware. The
arbitration shall be conducted at the Association's regional office
located closest to Licensee's principal place of business by three
arbitrators, at least one of whom shall be knowledgeable in Active
Technology and one of whom shall be an attorney. Judgment upon the
arbitrators' award may be entered and enforced in any court of
competent jurisdiction. Neither party shall institute a proceeding
hereunder unless at least sixty (60) days prior thereto such party
shall have given written notice to the other party of its intent to do
so. Neither party shall be precluded hereby from securing equitable
remedies in courts of any jurisdiction, including, but not limited to,
temporary restraining orders and preliminary injuDMCions to protect
its rights and interests but such shall not be sought as a means to
avoid or stay arbitration.
(d) Licensee hereby designates and appoints
________________________________ with offices on the date hereof
at______________________________, as its agent to receive service of
process in any Proceeding or Summary Proceeding. DMC hereby designates
and appoints Corporation Service Company with offices on the date
hereof at 1013 Centre Road, Wilmington, DE 19805, as its agent to
receive such service. Each of the parties hereto further covenants and
agrees that, so long as this Agreement shall be in effect, each such
party shall maintain a duly appointed agent for the service of
summonses and other legal processes in the State of Delaware and will
notify the other parties hereto of the name and address of such agent
if it is no longer the entity identified in this article.
ARTICLE 12. ANNOUNCEMENTS AND PUBLICITY; INDEPENDENT CONTRACTORS
Except for any disclosure which may be required by law, including appropriate
filings with the Securities Exchange Commission and the Nasdaq Stock Market,
Inc., neither party may use the other's name or disclose the terms of this
Agreement without the consent of the other, which consent shall not be
unreasonably withheld. Notwithstanding the foregoing, upon the execution of this
Agreement DMC may issue a press release in DMC's customary format and manner
reporting the execution of this Agreement and its general subject matter
provided DMC shall have received Licensee's prior written approval thereof which
approval shall not be unreasonably withhold or delayed.
Each party to this Agreement is an independent contractor and neither shall be
considered the partner, employer, agent or representative of the other.
ARTICLE 13. SEVERABILITY
If any part of this Agreement for any reason shall be declared invalid or
unenforceable, such decision shall not affect the validity or enforceability of
any remaining portion, which shall remain in full force and effect; provided,
however, that in the event a part of this Agreement is declared invalid and the
invalidity or enforceability of such part has the effect of materially altering
the obligations of any party under this Agreement, the parties agree, promptly
upon such declaration being made, to negotiate in good faith to amend this
Agreement so as to put such party in a position substantially similar to the
position such party was in prior to such declaration.
ARTICLE 14. RIGHTS OF ASSIGNMENT; SUCCESSORS AND ASSIGNS
Neither DMC nor Licensee shall have any right to assign this Agreement or any of
their respective rights or obligations under this Agreement to any third party
except by operation of law or with the prior written consent of the other party.
In the event Licensee wishes to assign any of its rights or obligations under
this Agreement to an Affiliate of Licensee, DMC's consent will not be
unreasonably withheld. In the event DMC wishes to assign any of its rights or
obligations under this Agreement to an Affiliate of DMC, Licensee's consent will
not be unreasonably withheld. The provisions of this Agreement shall inure to
the benefit of, or be binding upon, the successors and assigns of each party
hereto.
ARTICLE 15. NOTICES
Any notices under this Agreement shall be in writing and shall be deemed
delivered on the date of delivery if delivered by personal service, or sent by
telecopy and confirmed by first class registered or certified mail, or same day
or overnight courier service with postage or charges prepaid and on the third
day following dispatch if sent only by first class registered or certified mail
or same day or overnight courier service with postage or charges prepaid. Unless
subsequently notified in writing in accordance with this Section by the other
party, any notice or communication hereunder shall be addressed to DMC as
follows:
Distributed Media Corporation
20 Ketchum Street
Westort, CT 06880
Attn: President
Telecopy No: 1-203-226-3123
to Licensee as follows:
Vidikron of America, Inc.
Attn: President
Telecopy No: _________________
ARTICLE 16. TAXES
Licensee shall be solely responsible for any sales, use, occupational or
privilege taxes, duties, fees or other similar charges imposed by any
governmental authority in connection with the manufacture, sale, lease,
distribution, use or other disposition by Licensee of Licensed Products or the
Licenses granted hereunder. Any other taxes, including income taxes based on
royalties and other payments to DMC, shall be the responsibility of DMC.
ARTICLE 17. INDEMNIFICATION
Each of DMC and Licensee agrees to indemnify, defend, and hold harmless the
other party and each of its officers, directors, employees, agents, successors
and assigns (hereinafter referred to in the aggregate in this section as "the
Indemnified Party") against any and all losses, claims, damages, liabilities,
costs and expenses (including without limitation, reasonable attorneys' fees and
other costs of defense of every kind whatsoever and the aggregate amount of
reasonable settlement of any suit, claim or proceeding) which the Indemnified
Party may incur or for which the Indemnified Party may become liable on account
of any suit, claim or proceeding purporting to be based upon a failure to
perform obligations under this Agreement to be performed by the other party
(hereafter the "Indemnifying Party") and its employees or agents. The
Indemnified Party shall promptly advise the Indemnifying Party of any such suit,
claim or proceeding and shall cooperate with the Indemnifying Party in the
defense or settlement of such suit, claim or proceedings providing no settlement
shall be made without the consent of the Indemnified Party, which consent shall
not be unreasonably withheld. In any event, the Indemnified Party shall furnish
to the Indemnifying Party such information relating to such suit, claim or
proceeding as the Indemnifying Party shall reasonably request for use in
defending the same.
ARTICLE 18. MAINTENANCE AND DEFENSE OF LICENSED PATENTS
18.1 Enforcement of Patents. Throughout the term of this Agreement, DMC shall
maintain in force the Licensed Patents. In this connection, DMC shall
promptly pay all costs of any and all continuations, continuations-in-part,
divisions, extensions, reissues, re-examinations, or renewals of the
Licensed Patents, including, without limitation, the costs and expenses of
any and all attorneys, experts or other professionals engaged in connection
with any of the foregoing. In addition, DMC shall actively protect the
Licensed Patents and shall institute all such suits, actions or proceedings
for infringement of any of the Licensed Patents as may be necessary in this
regard. Unless DMC shall have received the advice of counsel that success
on the merits is reasonably certain, DMC shall be excused from its duty to
commence and/or may withdraw from any enforcement action under the Licensed
Patents and Licensee shall then be free to pursue enforcement of the
Licensed Patents in its own name and at its sole expense and risk, but only
to the extent such infringement occurs in the Market. In the event DMC
fails to commence an enforcement action or otherwise protect the Licensed
Patents as aforesaid after notice of possible infringement from Licensee,
Licensee shall be entitled by itself to take proceedings in the name of and
with the cooperation of DMC to restrain any such infringement at Licensee's
expense and for Licensee's benefit. Where Licensee proceeds alone and
achieves an award from the official enforcement forum in such an action
brought by it, Licensee shall be entitled to retain such award. However,
any compromise of such enforcement action or concession of invalidity or
priority of invention of any patent whether in connection with an
enforcement action or any other proceeding shall require DMC's
participation and express prior written approval. If DMC has elected to
participate in and share in the expense of any such enforcement action, any
award shall be shared equally by DMC and Licensee.
18.2 Infringement. DMC shall defend and save harmless Licensee against any suit,
damage claim or demand, and any loss, cost or expense suffered as a result
thereof (including reasonable attorneys fees), based on actual or alleged
infringement of any patent or trademark or any unfair trade practice
resulting from the exercise or use of any right or license granted under
this Agreement; provided that Licensee (a) promptly notifies DMC of such
suit, claim or demand and (b) provides DMC with such assistance as DMC may
reasonably request for the defense or settlement of such suit, claim or
demand.
Notwithstanding the foregoing, DMC shall have no liability to defend or pay
damages or costs to Licensee with respect to any claim of infringement
which is based on an implementation designed or modified by any third party
or Licensee's use of the Licensed Patents or the Licensed Technology for
any purpose other than the design, manufacture, use or sale of Licensed
Products pursuant to this Agreement.
ARTICLE 19. WARRANTIES
DMC represents and warrants that it has the right, power and authority to enter
into this Agreement and to grant the licenses and other rights contained herein
to Licensee as herein provided and that none of the same will breach or be in
violation of any agreement, license, or grant made with or to any other party by
DMC and that to the best of DMC's knowledge and belief the Licensed Patents are
valid and do not infringe any other patent issued prior to the date hereof.
ARTICLE 20. DISCLAIMER
EXCEPT AS SPECIFICALLY SET FORTH IN THIS AGREEMENT, DMC HEREBY DISCLAIMS ANY
EXPRESS OR IMPLIED WARRANTY OF THE ACCURACY, RELIABILITY, TECHNOLOGICAL OR
COMMERCIAL VALUE, COMPREHENSIVENESS OR MERCHANTABILITY OF THE LICENSED PATENTS,
THE DMC TECHNOLOGY, OR THE LICENSED PRODUCTS, OR THEIR SUITABILITY OR FITNESS
FOR ANY PURPOSE WHATSOEVER. DMC DISCLAIMS ALL OTHER WARRANTIES OR WHATEVER
NATURE, EXPRESS OR IMPLIED. DMC DISCLAIMS ALL LIABILITY FOR ANY LOSS OR DAMAGE
RESULTING, DIRECTLY OR INDIRECTLY, FROM THE USE OF THE LICENSED PATENTS, THE DMC
TECHNOLOGY, OR THE LICENSED PRODUCTS, OTHER THAN THOSE ARISING FROM CLAIMS OF
INFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES; WITHOUT LIMITING
THE GENERALITY OF THE FOREGOING, THIS DISCLAIMER EMBRACES CONSEQUENTIAL DAMAGES,
LOSS OF PROFITS OR GOOD WILL, EXPENSES FOR DOWNTIME OR FOR MAKING UP DOWNTIME,
DAMAGES FOR WHICH LICENSEE MAY BE LIABLE TO OTHER PERSONS, DAMAGES TO PROPERTY,
AND INJURY TO OR DEATH OF ANY PERSONS.
ARTICLE 21. SUPPORT SERVICES
DMC shall provide Licensee with engineering, maintenance and sales support with
respect to Licensed Products to be sold, leased, distributed or otherwise
transferred by Licensee under this Agreement to the extent and at the rates set
forth in Schedule D hereto.
ARTICLE 22. SCOPE OF THE AGREEMENT
This Agreement constitutes the entire agreement between the parties with respect
to the subject matter hereof and supersedes all prior oral or written agreements
or understandings of the parties with regard to the subject matter hereof. No
interpretation, change, termination or waiver of any provision hereof shall be
binding upon a party unless in writing and executed by the other party. No
modification, waiver, termination, recession, discharge or cancellation of any
right or claim under this Agreement shall affect the right of any party hereto
to enforce any other claim or right hereunder.
IN WITNESS THEREOF, Licensee and DMC have executed this Agreement effective as
of the date first written above.
VIDIKRON OF AMERICA, INC. DISTRIBUTED MEDIA CORPORATION
By: /s/ STEPHEN HICKS By: /s/ CY E. HAMMOND
----------------------- ---------------------------
Stephen Hicks Cy E. Hammond
Title: President Title: Treasurer
<PAGE>
Schedule A
Deliverables
Pursuant to Section 4.3 DMC will supply Licensee with the following
Deliverables on or before the dates set forth below:
Deliverable Date
[To be completed]
<PAGE>
Schedule D
Support Services
DMC will provide engineering, maintenance and sales support services, subject to
personnel availability, at the following standard rates. Actual rates may vary,
and rates are subject to change without notice. Out-of-pocket, travel and
material expenses are additional and will be billed at cost.
Technician/Draftsman $ ____/Hour
Junior Engineer ____/Hour
Engineer ____/Hour
Senior Engineer ____/Hour
Manager ____/Hour