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EXHIBIT 10.25
AGREEMENT
The following when signed by both parties constitutes an agreement dated as
of August 30, 2000 between A. T. Cross Company ("Cross") and
DigitalConvergence.:Com Inc. ("DCCI"), under which DCCI grants a license to
Cross to use DCCI's proprietary Decoder Software (defined below) for Cross'
line of graphic code reader Pens (defined below) which can be used in
connection with linking print to the World Wide Web, and under which Cross
grants DCCI the right to have certain Cross advertisements included in DCCI
advertisements related to DCCI's :CueCat-TM- Technology (defined below) and
products, including but not limited to the right to place printed inserts
relating to the Cross Pens in DCCI's :CueCat reader boxes, as further
provided below. The Agreement also covers matters relating to the
distribution, marketing and sale of Pens.
1. DEFINITIONS: The terms set forth below shall have the following
respective meanings when used herein:
"Agreement" means this agreement, as the same may be amended and
supplemented from time to time.
"A. T. Cross Company or Cross" means Cross, its affiliated, subsidiary,
parent and related companies, and their predecessors, successors,
assignors, assignees, and the officers, directors, shareholders,
agents, attorneys, representatives, and employees of all of them.
":CRQ Software" means DCCI's proprietary software that, when installed
on a personal computer, will allow a user of a graphic code reader Pen
(defined below) to gain access to the World Wide Web or data file and
automatically link with a designated web site (the "Linked Site") by
passing the pen over a proprietary slanted striated graphic image (a
"Graphic").
":CueCat Technology" means DCCI's proprietary software, hardware or
other technology, and any related intellectual property, used to
transmit Graphics in printed material and allow a personal computer
installed with :CRQ Software to automatically link to a Linked Site
(including, without limitation, :CRQ Software, Decoder Software,
Graphics, and :CueCat readers).
"Decoder Software" means DCCI's proprietary decryption software that
permits a device (such as Cross' graphic code reader pen) to interact
with DCCI's :CRQ Software and also includes any algorithms, processes
and techniques imbedded in the Decoder Software used to describe the
encryption, encoding and decoding systems.
"DigitalConvergence.:Com Inc." means DigitalConvergence.:Com Inc., its
affiliated, subsidiary, parent and related companies, and their
predecessors, successors, assignors,
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assignees, and the officers, directors, shareholders, agents,
attorneys, representatives, and employees of all of them.
"Pen(s)" means writing instruments (e.g., ball-point pens, felt-tip
pens, mechanical pencils) with a graphic code reader manufactured by
Cross, that incorporates the Decoder Software. Such code readers may be
detachable from the writing instrument (i.e. in form of a fob). Such
Pens will be marketed and sold under the name ":Cross:Convergence",
:Cross:Cat or such other name as the parties mutually agreed upon in
writing ("CD Mark"). The parties agree that neither of them will use
the CD Mark or authorize or permit any third party to use the CD Mark
after the Term.
2. TERRITORY: The Territory is the United States. If DCCI elects to
license its Decoder Software for use in devices similar to the Pens for
distribution outside the United States during the Term, DCCI will grant
Cross a thirty (30) day period in which the parties will negotiate in
good faith with each other exclusively regarding terms of a deal to
have Cross manufacture/distribute Pens outside the United States before
DCCI negotiates such a deal with any unrelated third party.
3. LICENSE: Subject to the terms and conditions of this Agreement:
a. DCCI grants to Cross a non-transferable and exclusive (as
provided in Section 7 below) license to use DCCI's Decoder
Software only in the Pens manufactured and distributed to the
public during the Term and in the Territory.
b. Cross grants to DCCI, on terms consistent with those afforded
by Cross to its usual retailers, a non-transferable and
non-exclusive license to sell the Pens, should DCCI decide to
do so, during the Term and in the Territory, either directly
to customers or through any other channel(s) of distribution.
c. DCCI grants Cross a royalty-free, non-exclusive,
non-transferable license to use DCCI's name, logo, trademarks
and/or service marks, and all other such DCCI images (as set
forth on Exhibit A attached hereto and hereafter any other
DCCI marks or images for which DCCI gives its express written
permission as may be amended from time to time on prior
written notice to Cross) ("D-Marks"), for the purposes set
forth in and under the terms of this Agreement. If such
express written permission is not given to Cross from DCCI
within three (3) business days from DCCI's receipt of a
written request from Cross for such express written permission
then such consent will deemed to have been received by Cross
from DCCI. Cross' use of the D-Marks will be limited to the
purposes described in this Agreement. Cross agrees that
ownership of the D-Marks will remain solely with DCCI. Cross
further agrees that its use of the D-Marks will maintain the
high standard with which DCCI has maintained the D-Marks and
that the use of the D-Marks will be subject to DCCI's
Trademark Use Guidelines as are in effect, which from time to
time may be amended and which such
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amendments will be provided to Cross. Cross will not be
responsible for prosecuting any infringement of a DCCI mark or
a D-Mark. DCCI shall vigorously defend the DCCI marks and the
D-Marks and keep the same registered at all times. All Cross
Pen materials shall display a DCCI mark or D-Mark, which shall
be subject to the prior written approval of DCCI, which
approval will not be unreasonably withheld or delayed and such
DCCI mark or D-Marks shall be prominently displayed. If such
prior written approval is not given to Cross from DCCI within
three (3) business days from DCCI's receipt of a written
request from Cross for such written approval then such
approval will be deemed to have received by Cross from DCCI.
The parties approve use on the Pens of the D-Mark and the
Cross mark in the form of the clip on the body of the Pen
having the word "Cross" stamped on the length of the clip as
the mark customarily appears on other Cross pens and having
the clip terminate in the form of a ":C" emblem such ":C"
emblem being no less prominent than the letter "C" in the word
Cross and in any event legible to an average viewer. The
parties agree that the configuration of marks described in the
immediately preceding sentence will be the only marks or logos
on the Pens unless the parties agree otherwise in writing;
provided, however, that DCCI consent will not be required if
content providers (who are operating under a current fully
executed written license agreement with DCCI) request a
particular logo to be placed on the Pen.
4. LICENSE FEE:
a. Cross shall pay a "Fee" equal to ten percent (10%) of the
actual gross revenue net of actual returns received by Cross
and its affiliates from the sales solely of the Pens by Cross
(the "Fee"). Cross shall be obligated to pay the Fee only from
and after the date on which the gross revenue received by
Cross or its affiliates from the sale solely of Pens, net only
of actual returns to Cross, equal or exceed $45 million. The
License Fee shall be calculated by Cross, on a monthly basis,
with notice to DCCI and with any amounts due DCCI to be paid
thirty (30) days after such calculation by Cross. Irrespective
of the prior sentence, Cross shall be obligated to pay the Fee
only from and after the date on which the gross revenue
received by Cross or its affiliates from the sale solely of
Pens, net only of actual returns to Cross, equal or exceed $40
million if any agreement entered into from the date of this
Agreement between Cross and a third party manufacturer or
distributor of code reading pens does not require such third
party manufacturer to place, at DCCI's written election,
Decoder Software in its code reading pens. Cross will use best
efforts to include DCCI's Decoder Software in all devices that
function similarly to Pens or otherwise read Graphics that are
distributed or manufactured by Cross (such as a pen marketed
solely under Cross or under a third party's name or a
Cross/third party name).
b. Cross hereunder makes an irrevocable assignment to DCCI of any
and all payments, receivables, proceeds and any other
consideration, excluding dividends, distributions or other
consideration from NeoMedia common stock owned by Cross,
("Amounts")
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that Cross receives from NeoMedia Technologies Inc. and
Affiliates ("NeoMedia") from and after the date of this
Agreement under Exhibit D of Cross' agreement with NeoMedia
dated June 2, 1999 or otherwise. Cross represents and warrants
that no Amounts are or will be due to Cross from NeoMedia
other than Amounts due under such Exhibit D, except ownership
by Cross of common stock in NeoMedia or dividends,
distributions or other consideration therefrom. Cross agrees
that all payments made to DCCI pursuant to such irrevocable
assignment shall be for the full Amounts due without any set
offs or recoupments subtracted from Amounts. Any revenues
Cross receives from pens or other devices that are not Pens
will be Cross' sole and separate property.
5. TERM: The Term will commence upon the full execution of this Agreement
("Effective Date") and continue for five (5) years thereafter.
Notwithstanding the foregoing, Cross may terminate this Agreement on
written notice to DCCI within thirty (30) days of the following: (a) if
DCCI has not shipped or otherwise distributed or caused to be shipped
or otherwise distributed to consumers at least 2 million :CueCat
readers by December 31, 2000 or at least a total (including the
previously mentioned 2 million) of 10 million :CueCat readers by
December 31, 2001; or (b) if DCCI at anytime during the Term has
consistently failed to link Graphics with Linked Sites subject to
customary industry variances and tolerances (due solely to :CueCat
Technology) for performance and DCCI is unable to cure such failure
within thirty (30) days after written notice thereof by Cross. In the
event of DCCI's failure to comply with 5(a) as specified above in this
paragraph, then such termination will be Cross' sole and exclusive
right and remedy.
6. ADVERTISING AND PROMOTIONAL MATERIALS: DCCI will send each of its :CRQ
Software users who register during the Term an e-mail (which will
include a URL to the Cross website) at such time as DCCI deems
appropriate in its good faith discretion which will include Cross
promotional material regarding the Pen. Cross may create a print insert
promoting the Pen at its expense which will be no larger than the
envelope for the :CRQ Software CD-Rom for inclusion in the :CRQ
Software CD-Rom envelope. Cross may also create at its expense an
insert intended to be included in packages containing :CueCat readers
shipped to the public. DCCI will include a print insert (as described
above) in each of the CD-Rom envelopes and the :CueCat reader packages
for distribution to the public during the Term; provided that if
control, financing or other participation of such :CueCat packages or
CD-Roms is shared with any third party, DCCI will not be obligated to
include such inserts in the applicable CD-Rom envelope or :CueCat
package if such third party objects or DCCI is otherwise prohibited by
such third party to include the inserts; provided further, if DCCI has
included such inserts in the CD-Rom envelopes and such third party so
objects, Cross will remove the offering inserts at its expense at
DCCI's election. In any event, DCCI will not be obligated to include
any such printed insert if it would cause the weight of the :CueCat
package (including any CD-Rom with a Cross print insert in the
envelope) or CD-Rom envelope (where not included in a :CueCat package)
to move into a more expensive shipping weight class than the package's
or envelope's targeted shipping weight class as determined by DCCI in
its sole good
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faith discretion (provided Cross may elect to pay the additional
expenses attendant to such excess weight). In addition, during the Term
DCCI will include a reference to the Pen (e.g. a shot of the pen) in
the video portion and the audio portion of each of the DCCI promotional
videos, "The Next Exit" and "Convergence Day," and in such other DCCI
promotional videos as DCCI determines. The content of such Cross
materials in such print insert(s), e-mail content and the promotional
video(s) will be subject to DCCI's written approval which will not be
unreasonably withheld and will be deemed given if DCCI has not objected
thereto within three (3) business days of receipt of the Cross material
in written or readily readable electronic form. DCCI also will mention
the Pen in paid print ads issued by DCCI during the Term as DCCI deems
appropriate in its sole good faith discretion. Cross consents to the
placement of the print inserts and the Pen in the applicable above
mentioned DCCI materials and such Cross marks, logos and names and
similar materials that may appear therewith; provided that any material
not created by or under the control of Cross included therein will be
subject to Cross's written approval not to be unreasonably withheld and
which will be deemed given if Cross has not objected thereto with three
(3) business days of receipt of such material by Cross.
7. EXCLUSIVITY: Before and during the Term, DCCI will not license or
otherwise enter into an agreement or arrangement with any other
manufacturer of writing (on paper) pens in the Territory the right to
include the Decoder Software on its pens for the consumer market, if
being understood such exclusivity does not extend beyond such writing
pens and specifically excludes other wireless graphic code readers such
as those included in wireless telephones.
8. CROSS' DUTIES:
a. Cross will include copies of the CD-ROM's containing the :CRQ
Software (free of charge to the customers) in the packaging of
all Pens Cross sells or otherwise distributes during the Term
in the Territory. Cross will be solely responsible for all
packing and shipping costs related thereto.
b. Cross will include references to DCCI in all of the print,
television and other advertising and promotional materials
created by or on behalf of Cross related to the Pens in a
manner which prominently references DCCI. DCCI has prior
written approval over the form and substance of such
references to DCCI, not to be unreasonably withheld or
delayed, which will be deemed given if DCCI does not object in
writing within three (3) business days of receipt from Cross
of the applicable copy or draft for the advertising or
promotional material. In any single piece of advertising or
promotional material printed and distributed under DCCI's
control in which two (2) or more Graphic reading devices from
different manufacturers or distributors are mentioned, DCCI
will mention the Pen as well.
c. During the Term, Cross will incorporate at least one (1) Cue
in each and every television advertisement telecast in the
Territory (a "Cue", like a Graphic, allows the
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user of a DCCI proprietary :CueCat reader device to gain
access to the World Wide Web and automatically link to a
Linked Site, but is in the form of a telecast of DCCI's
standard icon in the form of a ":C" which is also accompanied
by a telecast audio sound, as opposed to a Graphic) and a
Graphic in each and every print advertisement, catalog and
promotional material distributed in the Territory that feature
Cross products except code reader pens of third parties that
are directly competitive with the Pens. Cross will use a
unique Graphic in each different print advertisement in each
issue of each publication. For each Cue telecast and for each
Graphic incorporated in each advertisement in each issue of
each publication Cross will pay DCCI $100. DCCI will provide
to Cross in total one hundred forty (140) Cues and/or Graphics
in the aggregate, free of charge. All other terms and
conditions relating to the use of such Cues and/or Graphics
will be according to DCCI's standard license agreement subject
to any good faith negotiated changes. Cross will not authorize
or permit any Cue and/or Graphic to be linked directly to any
site, page or other material relating to any competitor of
DCCI or the Pens, without DCCI's written approval.
d. For Decoder Software licensed hereunder and the Pens, Cross
will provide, at its sole expense, technology and sales
support consistent with such support it provides for its own
products and services; provided, however, that if Pen customer
problems arise relating to the Decoder Software, DCCI will
diligently and promptly proceed to remedy the problem and will
supply Pen customers with the remedial technology. If DCCI
furnishes Cross with updates of the DCCI technology (defined
for the purposes of this Agreement as minor releases,
bug-fixes, enhancements, revisions and upgrades), Cross will
as promptly as reasonably possible, incorporate and implement
such updates; provided, however, that DCCI shall give Cross at
least one hundred and twenty (120) days written notice before
Cross must incorporate any modification to the Decoder
Software. Such modified Decoder Software must be used in any
pens manufactured or distributed after such one hundred and
twenty (120) days.
e. Cross will print and include with each Pen written
instructions for the Pen, in the form of a foldout sheet, the
content of which is subject to DCCI's written approval, which
will not be unreasonably withheld or delayed. The performance
of Cross' obligations under this Agreement will be at its sole
expense unless specifically stated to the contrary.
f. During the Term, Cross will include on each page of its Pen
websites DCCI's standard icon (in the form of ":C") and the
accompanying software on Cross' server by which the public can
download DCCI's :CRQ Software free of charge.
g. Cross will advertise, promote and market the Pens on a basis
no less favorable to DCCI than the basis on which Cross
advertises, promotes, markets and distributes its other code
reader pens. Cross will use reasonable commercial efforts to
distribute the
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Pens through all of Cross' distribution channels that sell
product(s) that include any technology other than a basic
writing on paper implement. Without limiting the foregoing, if
Cross has failed to sell, net of returns, at least the
following number of Pens by the following dates, DCCI may
terminate this Agreement: (i) the number of Pens sold by the
date two hundred forty (240) days after written acceptance of
the Decoder Software (as provided in Section 9(b) below) equal
to at least two percent (2%) of all :CueCat readers
distributed by DCCI in the Territory one hundred and fifty
(150) days after DCCI receives Cross' written acceptance of
the Decoder Software (i.e., Pens sales two hundred forty (240)
days out measured against two percent (2%) of reader
distribution one hundred fifty (150) days out); and (ii)
thereafter, a number of Pens sold by December 31st of each
year during the Term equal to at least two percent (2%) of all
:CueCat readers distributed by DCCI in the Territory by the
90th day before such December 31st (i.e., October 1st) of each
year during the Term (i.e., Pens sales by December 31st of
each year during the Term measured against two percent (2%) of
reader distribution by the preceding October 1st of each such
year); and DCCI will provide Cross monthly reports specifying
the number of :CueCat readers shipped to enable Cross to
compute the above ratios of Pens to :CueCat readers. Any such
termination relating to the October 1st test dates will be
effective on the December 31st of the year in which such
failure occurs. Subject to Cross otherwise complying with the
terms of this Agreement, the above DCCI termination right will
be DCCI's sole and exclusive remedy if Cross fails to sell the
above prescribed numbers of Pens by the specified dates. Cross
agrees that it will spend $1,000,000 on advertising the Pens
within the Territory during the first twelve (12) months of
the Term; $500,000 of such amount shall be spent by Cross on
such advertising of Pens by March 31, 2001. Thereafter, Cross
will spend an amount equal to at least ten percent (10%) of
gross annual sales of the Pens as forecast by Cross and as
presented to the Cross' Board of Directors for purposes of
Cross' annual budget each calendar year during the Term.
h. Cross will deliver a prototype of a Pen (which will
incorporate the Decoder Software) to DCCI as soon as
reasonably possible after being delivered the Decoder Software
by DCCI. DCCI will test the prototype Pen as soon as
reasonably possible after receipt of the same and inform Cross
if the pen does not read, store and upload the Codes. If DCCI
fails to notify Cross within five (5) business days of receipt
of the prototype Pen of the prototype's failure to read, store
and upload Codes, DCCI will be deemed to have given Cross
notice that the prototype properly operates to read, store and
upload Codes. If the Pen cannot be made operational with the
Decoder Software by Cross within thirty (30) days from the
time of receiving such notice from DCCI, then Cross shall so
inform DCCI and either party may terminate this Agreement on
thirty (30) days prior written notice to the other party. Such
termination will be each party's sole and exclusive remedy in
the event of Cross' failure to make the Pen operational as
provided above.
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i. Prior to Cross delivering Decoder Software to any third party
(e.g., a third party manufacturer of code reading pens for
inclusion in such pens) Cross will cause such third party to
execute a DCCI confidentiality agreement approved in writing
by DCCI. Such confidentiality agreement shall at a minimum
bind such third party to: 1) hold the Decoder Software in
confidence; 2) not reverse assemble, reverse engineer, or
dissemble the Decoder Software; and 3) use the Decoder
Software in only code reader pens as authorized in writing by
DCCI.
j. Cross will use all reasonable efforts to have DCCI's and
Cross' disclaimers of warranty, as mutually agreed upon,
passed on to wholesalers, distributors, consumers and other
third parties who may distribute, purchase or use the Pens.
9. DCCI'S DUTIES:
a. DCCI will supply all necessary copies of its :CRQ Software
free of charge in the form of a CD-ROM to Cross for inclusion
with all Pens sold, on a schedule to be mutually agreed by the
parties consistent with Cross' reasonable and customary
schedule relating to shipment of Pens. If the :CRQ Software
does not operate as intended within customary and reasonable
variances of operation, Cross will give written notice to that
effect to DCCI and DCCI shall have thirty (30) days from
receipt of such notice to cure the defect. If DCCI fails to
cure the defect Cross may terminate this Agreement on at least
thirty (30) days prior written notice to DCCI. Such
termination will be Cross' sole and exclusive remedy in the
event of DCCI's failure to cure the defect.
b. DCCI will supply Cross with the Decoder Software promptly
after DCCI receives delivery of operational Decoder Software
from a third party or promptly after DCCI has itself completed
writing the Decoder Software. Cross will have five (5)
business days from receipt of the Decoder Software to provide
DCCI with written acceptance or rejection of the Decoder
Software. Failure by Cross to provide such acceptance or
rejection to DCCI within five (5) business days from receipt
of the Decoder Software from DCCI shall be deemed as Cross'
acceptance of such Decoder Software. Cross' rejection of such
delivered Decoder Software shall be based upon a reasonable
determination of a technical deficiency with the Decoder
Software and in the event of such rejection by Cross its
written notice of such rejection to DCCI shall provide detail
as to the technical deficiencies that such rejection shall be
based upon. After DCCI endeavors to correct such deficiencies
DCCI shall resubmit the Decoder Software to Cross. The above
process shall be repeated until Decoder Software, acceptable
to Cross as is specifically described in this paragraph, is
provided by DCCI to Cross; provided that if Decoder Software
acceptable to Cross, as described in this paragraph, has not
been submitted to Cross by DCCI by December 31, 2000, this
Agreement will terminate automatically and such termination
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shall be Cross' sole and exclusive remedy for DCCI's failure
to provide Cross with acceptable Decoder Software.
c. DCCI will endeavor to help Cross obtain retail distribution
during the Term and in the Territory of the Pens through the
Radio Shack store chain of the Tandy Corporation.
10. SERVICE SUPPORT: DCCI is under no obligation to include DCCI's phone
number or other contact information on any Cross materials related to
support. Cross will provide all technical and customer support to
Cross' customers with respect to the Pens and :CueCat Technology
provided to customers in relation to Pens, and provide to its customers
customary product warranties (subject to disclaimers regarding :CRQ
Software as provided above). Such technical support for the Pens and
:CRQ Software shall be available to Cross' customers twenty-four (24)
hours a day, seven (7) days a week via online support and in person
telephone support from 8 a.m. through 9 p.m. EST, Monday through
Friday, on the same basis and at the same level of service as Cross
affords its customers relating to other Cross products and services.
11. OWNERSHIP/LIMITS ON LICENSE: All rights not specifically granted to
Cross are reserved to DCCI. Cross will not add to or otherwise alter or
edit or re-purpose any :CueCat Technology or other relating to DCCI
properties, electronic or physical, received from or otherwise relating
to DCCI except as otherwise provided in this Agreement. Cross will make
no use other than that specifically licensed hereunder of the :CueCat
Technology, or any other DCCI properties, nor will it authorize any
other party to do so, nor will it exploit any :CueCat Technology or
other DCCI properties beyond the terms of this Agreement, including
without limitation, beyond the Territory or Term, except in order for
Cross to perform its obligations hereunder and Cross will conform to
DCCI's standards and practices as provided by DCCI to Cross for use of
DCCI's standards and practices as provided by DCCI to Cross for use of
DCCI's :CueCat Technology or other DCCI hardware, software, technology
and intellectual and other DCCI properties. Without limiting the
foregoing: (a) Cross will not reverse assemble, reverse compile,
reverse engineer, disassemble, rent, lease, modify, merge, create
derivative works from, incorporate within any other software or
hardware, copy or transfer copies of any :CueCat Technology or other
DCCI properties; or perform or display any :CueCat Technology or other
DCCI property to or for any third party; or license or sublicense any
:CueCate Tecnology or DCCI properties, except as specifically licensed
hereunder; and (b) Cross acknowledges that DCCI's service marks, and
trademarks, and D-Marks as well as all other DCCI rights under
copyright, patent, trademark, trade dress, trade secret and all other
DCCI intellectual property rights, are and shall remain the sole
property of DCCI. In all uses of all DCCI properties, Cross will
display any copyright, trademark or other notices directed by DCCI, and
shall conform to all criteria of use furnished by DCCI, including,
without limitation, conforming to DCCI's reasonable instructions
regarding any packaging, inserts, advertising or promotional or other
material prepared by DCCI relating to DCCI or DCCI property. All
goodwill arising from Cross' use of DCCI's Marks or D-Marks shall inure
to DCCI.
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12. REPORTS AND ACCOUNTINGS: Commencing within thirty (30) days of the
beginning of the Term, Cross will render to DCCI accountings monthly
within thirty (30) days of the close of the month showing the amounts
due under this Agreement to DCCI and accompany each accounting with
payment of the amount due. DCCI may audit Cross' books and records (and
make copies thereof) annually on at least twenty (20) days notice
during normal business hours. The obligations of Cross in this
paragraph are of the essence. Amounts past due will carry interest at
LIBOR plus two percent (2%), and Cross will pay DCCI's audit and legal
costs if such audit discovers Cross had underpaid DCCI by five percent
(5%) or more.
13. REPRESENTATIONS AND WARRANTIES. DCCI and Cross each represent and
warrant that it has the right to enter into this Agreement and grant
the rights herein granted and that entering into this Agreement,
granting the rights granted and assuming the obligations assumed does
not violate any third party agreements or rights. Cross warrants and
represents that the :CueCat Technology and all other DCCI property will
be used by Cross solely in accordance with the terms and conditions of
the Agreement and will not be used in a way that reflects negatively on
DCCI or the DCCI marks and/or D-Marks or that violates any third party
rights or any state, local or federal laws or other laws or
regulations. Cross further warrants and represents that the :CueCat
Technology and other DCCI property shall not be adapted, reproduced
distributed or disclosed to any third party except to enable Cross to
perform its obligations in accordance with this Agreement without the
prior consent in writing of DCCI, except as provided herein. Each party
shall indemnify and hold the other, and its affiliates, successors,
assigns, licensees, officers, directors and employees harmless from and
against any claims, suits or proceedings brought by or on behalf of any
third party unaffiliated with the indemnified party, arising out of or
relating to any breach of any representation, warranty or agreement by
the indemnifying party herein including, without limitation all
damages, losses, civil and criminal penalties and fines, costs and
expenses including reasonable outside attorneys' fees incurred as a
result of any such claims, suits or proceedings. Without limiting the
foregoing, Cross shall indemnify and hold DCCI harmless regarding any
liability that may arise from any claim or allegation that any Cross
technology, or any third party hardware or software not supplied by
DCCI but used by Cross in or in relation to Pens, infringes, in whole
or in part, any patent, copyright, trade secret, or other intellectual
property right of any party. Cross represents and warrants that
throughout the Term and for at least three (3) years thereafter, it
will carry standard product liability insurance with limits of at least
$10 million, name DCCI as an additional insured under such policy and
provide DCCI a certificate of such insurance before the Term commences.
Notwithstanding the foregoing limitations, DCCI hereby indemnifies and
shall hold harmless Cross from any claims, actions, costs, losses and
liabilities arising from allegations by any party unaffiliated with
Cross that the :CRQ Software supplied by DCCI for use with the Pens
herewith infringes a U.S. patent or copyright, or the trade secrets of
any unrelated third party, and shall pay resulting costs, damages and
attorney fees finally awarded by a court of competent jurisdiction.
DCCI will consider in good faith Cross consultation regarding any
possible infringement of DCCI's patent rights licensed hereunder to
Cross. DCCI also agrees that, if DCCI decides, in its sole discretion
to enforce
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any of its intellectual property rights to any of the :CueCat
Technology related to its use with Pens, it shall initiate any such
action at DCCI's expense. If an unrelated third party claim for any
patent, copyright, trade secret, or other intellectual property right,
is asserted claiming that the Pen, solely due to the combination of
Cross technology (or any third party hardware or software not supplied
by DCCI but used by Cross in or in relation to Pens) and DCCI
technology, in whole or in part, is infringing (as opposed to either
the Cross or Cross' use of any third party technology or DCCI
technology alone, in whole or in part, being infringing) then both
Cross and DCCI agree to defend such claim together and share equally
all costs associated with such defense or settlement, and additionally
to share equally all costs, damages and attorney fees finally awarded
by a court of competent jurisdiction. Both parties agree that if any
claim for intellectual property infringement is brought against either
party and rights can not be secured within sixty (60) days of a lawsuit
being filed by such third party relating to the continued use of the
intellectual property claimed to be infringing (or securing such rights
is in the reasonable opinion of DCCI or Cross prohibitively costly),
then either party may terminate this Agreement on at least thirty (30)
days prior written notice to the other party. DCCI represents and
warrants and throughout the Term and for at least three (3) years
thereafter it will carry standard product liability insurance with
limits of at least $10 million, naming Cross as an additional insured
under such policy and provide Cross with a certificate of such
insurance before the Term commences.
14. LIMITATIONS ON WARRANTIES. Except as it relates to indemnification
relating to actions brought by unrelated third parties as described in
Section 13 above, and notwithstanding anything else to the contrary
herein, the :CueCat Technology, Graphics and Cues and the services and
materials being furnished or licensed to Cross hereunder are furnished
or licensed by DCCI under this Agreement "AS IS," without any
warranties of any kind, whatsoever. If DCCI is unable to deliver any
Graphic or Cue to which Cross is entitled hereunder, DCCI shall
authorize one substitute "make-good" Cue or Graphic during the term for
each such undelivered Cue or Graphic, and at DCCI's election, provide a
pro rata reduction of the license fee for such undelivered Cues or
Graphics, and the foregoing shall be DCCI's sole obligation and Cross'
sole and exclusive remedy for undelivered Cues or Graphics. In no event
shall DCCI be liable for damages or Cross entitled to a refund in such
event. In no event will DCCI be responsible to Cross or any other party
for any default, breach or failure of performance by any third party.
EXCEPT AS SPECIFICALLY PROVIDED IN THIS AGREEMENT (PARTICULARLY, EXCEPT
AS IT RELATES TO INDEMNIFICATION RELATING TO ACTIONS BROUGHT BY
UNRELATED THIRD PARTIES AS DESCRIBED IN SECTION 13), CROSS ASSUMES
TOTAL RESPONSIBILITY AND RISK FOR ITS USE OF THE DCCI SOFTWARE AND DCCI
TECHNOLOGY, AND WITH RESPECT TO THE OBTAINING AND USE OF THE SOFTWARE;
DCCI DOES NOT MAKE, AND EXPRESSLY DISCLAIMS, ANY AND ALL EXPRESS AND
IMPLIED WARRANTIES OF ANY KIND WHATSOEVER, INCLUDING, WITHOUT
LIMITATION, WARRANTIES REGARDING MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE. IN NO EVENT SHALL DCCI BE LIABLE FOR (A) LOST
PROFITS OR ANY INCIDENTAL, CONSEQUENTIAL OR INDIRECT DAMAGES
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ARISING OUT OF THE USE OF OR INABILITY TO USE THE DCCI SOFTWARE; OR (B)
ANY CLAIM ATTRIBUTABLE TO LOST DATA, ERRORS, OMISSIONS, OR OTHER
INACCURACIES IN THE DCCI SOFTWARE. UNDER NO CIRCUMSTANCES SHALL CROSS
BE ENTITLED TO SPECIFIC PERFORMANCE, INJUNCTIVE RELIEF OR OTHER
EQUITABLE REMEDY ARISING OUT OF, OR RELATED TO THE SUBJECT MATTER OF,
THIS AGREEMENT AND CROSS HEREBY WAIVES ALL RIGHTS THERETO.
15. MISCELLANEOUS:
a. CONFIDENTIALITY: Each party will keep the terms of this
Agreement confidential except as may be required by law,
regulation or judicial proceeding. The parties understand that
they will have access to proprietary and confidential
information in performance of this Agreement and each agrees
to hold all such information in strict confidence under the
terms of DCCI's standard agreement for the exchange of
confidential information. Further, Cross agrees that only
employees with a strict need to know for Cross to perform its
obligations under this Agreement will have access to the
Decoder Software or any other DCCI confidential material
associated with the Decoder Software.
b. OWNERSHIP OF INTELLECTUAL PROPERTY AND TECHNOLOGY: Without
limiting any other provision of this Agreement, each party
retains all rights, title, and interest, in and to their
respective intellectual property and technology. For example,
the combination or inclusion of one party's technology with
another party's technology and delivery of the resulting
product, does not itself effect a transfer of ownership or
grant a license or any right to use the technology of the
other party. DCCI retains all rights, title, and interest, in
and to the :CueCat Technology. Cross agrees to place the word
"Patent" followed by a patent number on each and every
package, that includes a Pen, as requested by DCCI. In the
event Cross places any non-DCCI patent number on Pens then
Cross agrees to also place the appropriate DCCI patent numbers
on Pens, as described in the prior sentence.
c. INITIAL SUPPLY OF PENS. Cross will provide two hundred (200)
Pens to DCCI free of charge within a month after such time as
DCCI has confirmed that the Pens are acceptable pursuant to
Paragraph 8(h) hereof.
d. EXPORT: The parties understand and acknowledge that they are
subject to regulations of agencies of the United States
government, including the United States Department of
Commerce, which prohibit export or diversion of certain
products and technology to certain countries. Any and all
obligations of either party to provide technical information,
technical assistance, any media in which any of the foregoing
is contained, training and related technical data
(collectively, "Data") shall be subject in all respects to
such United States laws and regulations as shall from time to
time
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govern the license and delivery of technology and products
abroad by persons subject to the jurisdiction of the United
States, including the Export Administration Act of 1979, as
amended, any successor legislation, and the Export
Administration Regulations issued by the Department of
Commerce, or the Bureau of Export Administration. All Parties
warrant that they will comply in all respects with the export
and re-export restrictions set forth in any export license (if
necessary) for Data disclosed to any other party hereunder.
e. TAXES: Cross shall be responsible for any and all taxes
(except for DCCI's income taxes based upon payments of fees
hereunder to DCCI) incurred in connection with the grant of
rights hereunder, including, without limitation, the exercise
by Cross of rights granted hereunder and the sale of the Pens.
f. INDEPENDENT CONTRACTORS: Cross and DCCI are independent
contractors under this Agreement, and nothing herein shall be
construed to create a partnership, joint venture or agency
relationship between Cross and DCCI. Cross has no authority to
enter into agreements of any kind on behalf of DCCI. Cross
will not assign this Agreement or any of its rights or
delegate any of its duties hereunder without the prior consent
in writing of DCCI and any purported assignment or delegation
without such required consent shall be null and void.
g. TRADEMARKS: Any license right granted under this Agreement is
in no way a license, granted by one party to the other herein,
to use of the other's trademark, trade name, or trade dress,
without the express written consent of the other, except as
specifically granted herein.
h. AFFILIATES: Affiliate of (or affiliated with) a party means a
corporation or other entity that controls, is controlled by or
is under common control with another corporation or entity,
where "control" means direct or indirect ownership or control
of more than fifty percent (50%) of the stock or other equity
interest entitled to vote for the election of directors or
equivalent governing body.
i. CHOICE OF LAW: This Agreement shall be construed in accordance
with the laws of the Sate of New York.
j. ARBITRATION: Any and all disputes, differences or
controversies arising out of, under or in connection with this
Agreement, or the breach of alleged breach thereof, shall be
submitted to arbitration to be held in New York, New York
under the rules and regulations of the American Arbitration
Association before a single arbitrator, and judgment upon the
award rendered may be entered in any court having jurisdiction
thereof; except any claim (including defenses thereto) which
potentially concerns the validity, enforceability or
infringement of intellectual property owned or controlled by
DCCI shall not be resolved by arbitration without the prior
approval in writing of
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DCCI, and instead shall be resolved exclusively in a court of
competent jurisdiction located in New York, New York, and both
parties waive any objections to jurisdiction or venue with
respect hereto.
k. NOTICES: All notices, demands or other communications
hereunder shall be in writing and shall be deemed to have been
duly given: (i) if mailed by certified mail, postage prepaid,
on the date three (3) days following the date of mailing, (ii)
if delivered by overnight courier, when received by the
addressee or (iii) if sent by confirmed telecommunication, one
business day following receipt by the addressee at the address
set forth at the beginning of this Agreement, or such other
address as either party may specify in writing.
l. TERMINATION: The termination or expiration of this Agreement,
howsoever occasioned, shall not affect any of the provisions
of this Agreement that are expressly or by implication to come
into or continue in force after such termination or
expiration.
m. MULTIPLE COPIES: This Agreement may be executed in one or more
counterpart copies, each of which shall be considered an
original, and all of which when taken together shall
constitute one and the same agreement. Delivery of an executed
counterpart of a signature page by telecopier shall be as
effective as delivery of an original manually executed
counterpart.
n. WAIVER: No waiver of any breach of any provision of this
Agreement shall constitute a waiver of any prior, concurrent
or subsequent breach of the same or any other provisions
hereof, and no waiver shall be effective unless made in
writing and signed by an authorized representative of the
waiving party.
o. SURVIVAL: In the event any provision of this Agreement shall
for any reason be held to be invalid, illegal or unenforceable
in any respect, the remaining provisions shall remain in full
force and effect.
p. PRESUMPTIONS: In resolving any dispute or contruing any
provision hereunder, there shall be no presumptions made or
inferences drawn (i) because the attorneys for one of the
parties drafted the Agreement; (ii) because of the drafting
history of the Agreement; or (iii) because of the inclusion of
a provision not contained in a prior draft, or the deletion of
a provision contained in a prior draft.
q. HEADINGS: Section headings are for convenience only and are
not a part of this Agreement.
r. ENTIRE AGREEMENT: This Agreement contains the entire
understanding of the parties hereto with respect to the
transactions and matters contemplated hereby, supersede
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all previous agreements between DCCI and Cross concerning the
subject matter, and cannot be amended except by a writing
signed by both parties. No party hereto has relied on any
statement, representation or promise of any other party or
with any other officer, agent, employee or attorney for the
other party in executing this Agreement except as expressly
stated herein.
DIGITALCONVEREGENCE.:COM INC.
By: /s/ John G. Huncke
Title: EVP Media
Date: 9/1/00
ACCEPTED AND AGREED:
A. T. CROSS COMPANY
By: /s/
------------------------------
Title: Exec. V.P.
Date: 9/1/00
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