Exhibit 10.13
INTELLECTUAL PROPERTY LICENSE AGREEMENT
THIS AGREEMENT is made as of the 28th day of June, 2000 by and
between AmeriCom USA, Inc., a corporation formed and existing under the laws of
the State of Delaware, having an office and principal place of business at 5900
Hollis Street, R-1, Emeryville, California 94608 ("Licensor"), and Robert M.
Cezar, an individual residing at 1003 Acorn Drive, Arroyo Grande, California
93420 ("Licensee");
WHEREAS, pursuant to an Assignment executed by Licensee on
June 28, 2000, Licensor is the owner of the entire right, title and interest in
and to the technology known as Virtual Object State Explication, including all
improvements and related patents and patent applications (collectively, the
"Intellectual Property"); and
WHEREAS, Licensee desires to license the Intellectual Property
from Licensor, and Licensor is willing to grant to Licensee a world-wide,
royalty-free license to use and sublicense the Intellectual Property subject and
pursuant to the terms and conditions herein.
NOW, THEREFORE, in consideration of the foregoing, and for
other good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties, intending to be legally bound, agree as
follows:
1. Grant of License.
a. Licensor hereby grants to Licensee a world-wide,
irrevocable, perpetual, royalty-free right and license to use the Intellectual
Property solely in connection with not-for-profit educational broadcasting
networks.
b. Licensee may sublicense its rights under this Agreement
only to a not-for-profit third party and only upon the prior written consent and
approval of Licensor.
2. Ownership of Intellectual Property.
a. Licensee acknowledges that Licensor owns all right, title
and interest in and to the Intellectual Property, and agrees that all use of the
Intellectual Property shall inure to the benefit of and be on behalf of
Licensor. Licensee shall not acquire any rights in or to any Intellectual
Property under this Agreement except as expressly provided herein.
b. Licensee shall execute all documents and otherwise
reasonably cooperate in establishing, confirming and enforcing Licensor's
ownership rights in the Intellectual Property.
3. Sublicensing.
Any sublicense of the Intellectual Property permitted under
Section 1.b. herein from Licensee to a third party shall: (i) be in writing,
(ii) specifically require the third party sublicensee to agree to comply with
and observe the terms of this Agreement, and (iii) require
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the third party sublicensee to assign all ownership rights in any derivative
work and improvements to the Intellectual Property to Licensor and execute all
documents and otherwise reasonably cooperate in establishing, confirming and
enforcing Licensor's ownership rights in the Intellectual Property.
4. Confidentiality and Non-Disclosure.
a. Licensor and Licensee each agree that they shall not use in
an unauthorized manner, or disclose, reproduce, publish, distribute or
disseminate, in whole or in part, to any third party, any proprietary or
confidential information received in connection with this Agreement, the
Intellectual Property or the performance of any obligations herein.
b. The above obligations of confidentiality and non-disclosure
shall not extend to proprietary or confidential information which: (a) was known
to the receiving party prior to receipt thereof from the disclosing party, (b)
is disclosed to the receiving party in good faith by a third party under no
obligation of confidence and with the right to make such disclosure, (c) is or
shall have become part of the public domain through no fault of the receiving
party or any other party with an obligation of confidentiality to the disclosing
party, or (d) is required to be disclosed by the receiving party by order of a
court of competent jurisdiction, administrative agency or governmental body, or
by any law, rule or regulation, or by subpoena, or any other administrative or
legal process, or by applicable regulatory standards.
c. The foregoing confidentiality and non-disclosure
obligations shall survive the termination or expiration of this Agreement.
5. Infringement by Third Parties.
Promptly upon discovery, Licensee agrees to notify Licensor in
writing of any unauthorized use or potential unauthorized use of the
Intellectual Property by third parties of which it becomes aware. Licensor shall
have the sole right and discretion to take appropriate legal action involving
the Intellectual Property. If Licensor decides that taking legal action is
appropriate, Licensor will be responsible for any legal costs incurred and will
be entitled to retain any damages recovered. Licensee agrees to cooperate fully
with Licensor with respect to any legal action taken by Licensor against a third
party with respect to the Intellectual Property.
6. No Contest.
Licensee agrees that it shall not challenge, dispute or
otherwise contest, or assist others in challenging, disputing or otherwise
contesting, the validity, enforceability or ownership of the Intellectual
Property.
7. Termination.
Licensor may terminate this Agreement immediately upon written
notice to Licensee upon any material breach of this Agreement by Licensee.
8. Miscellaneous.
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a. Complete Agreement. This Agreement constitutes the entire
agreement between the parties with respect to the subject matter hereof, and
supercedes all prior agreements and understandings, both written and oral,
between the parties with respect to such subject matter.
b. Assignment; Transfer. This Agreement, and the obligations,
rights or license hereunder, may not be assigned or transferred by Licensee,
other than to an affiliate, without the prior written consent of Licensor.
c. Successors and Assigns. This Agreement is binding on and
inures to the benefit of the parties, and their respective successors and
assigns.
d. Governing Law; Venue; Jurisdiction. This Agreement, and the
rights and obligations of the parties hereunder, shall be governed, including,
without limitation, as to validity, interpretation and effect, by the laws of
the State of Delaware, without regard to the principles of conflict of laws.
f. Severability. In the event that any provision of this
Agreement conflicts with the law under which this Agreement is to be construed,
or if any such provision is held invalid by a court with jurisdiction over the
parties to this Agreement, and the subject matter of this Agreement, (i) such
provision will be deemed to be restated to reflect as nearly as possible the
original intentions of the parties in accordance with applicable law, and (ii)
the remaining terms, provisions, covenants and restrictions of this Agreement
will remain in full force and effect.
g. Counterparts. This Agreement may be executed in
counterparts, each of which will be deemed an original and all of which together
will constitute one in the same document.
h. Waiver; Amendment. No waiver of any term, condition or
obligation of this Agreement shall be valid unless in writing and signed by the
waiving party. No waiver of any one or several of the terms, conditions or
obligations of this Agreement, and no partial waiver thereof, shall be construed
as a waiver of any of the other terms, conditions or obligations of this
Agreement. This Agreement may not be amended, changed or modified in any fashion
except by written instrument signed by each of the parties hereto.
i. Headings. The headings contained in this Agreement are for
reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement.
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IN WITNESS WHEREOF, each of the parties hereto has caused this
Intellectual Property License Agreement to be executed effective as of the date
first above written.
AmeriCom USA, Inc.
By: /s/ Authorized Signatory /s/ Robert M. Cezar
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Name: Robert M. Cezar
Title:
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