EXHIBIT 10.12
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LICENSE AGREEMENT BETWEEN
INTACTA TECHNOLOGIES, INC.
AND
Kforce Consulting
This LICENSE AGREEMENT (the "Agreement") is entered into on this 31 day of
March, 2000 (Effective Date) by and between INTACTA TECHNOLOGIES, INC. (ITI), a
Delaware corporation, with offices located at 235 Peachtree Street N.E. 2215
North Tower, Atlanta, GA 30303, USA, and Kforce Consulting, a Division of
Kforce.com (KC), a U.S. corporation, having its principal place of business at
400 N Tampa Street, Suite 1200, Tampa, FL. 33672.
RECITALS
WHEREAS, ITI owns certain Patented and Proprietary Technology and has developed
KnowHow (herein defined), related to Compression, Encoding, Decoding, Encryption
and,
WHEREAS KC wishes to use these Technologies for building applications and
services integrating into IBM's Transcoding Architecture for e-commerce and
mobile solutions, one of the first of which is the Palm OS market, and,
WHEREAS, KC wishes to obtain, and ITI wishes to grant to KC, an non-exclusive,
non-assignable and non-transferable royalty license to use the Licensed
Technologies hereinafter described, in the development and distribution of
applications and services for e-commerce and mobile solutions, and
WHEREAS, KC is engaged, among others, in the sale and marketing of services and
applications for the IBM Transcoding Architecture platform and customer base,
which ITI wishes to grant an 18 month exclusive market window to develop new
applications and markets worldwide on IBM's Transcoding Architecture
platform.
NOW, THEREFORE, KC and ITI agree as follows:
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1. Definition
As used in this
Agreement, the following terms shall have the meaning set forth below:
1.1 Licensed Technologies" are defined in Appendix A as
Technologies along with all Improvements except
for Improvements provided by ITI
subsequent to the expiration of the one (1) year warranty period
defined as
expiring March 31, 2001. The
Licensed Technology is called IntactaCode, which is defined
in Appendix A and includes:
*
IntactaCode (32-bit) DLL
1.2 "Know-How" means all information and data now
possessed, owned, acquired or developed by ITI
which relates to the design,
engineering,
development, manufacturing, or use of equipment for and related
to e-commerce, document
management,
compression, encoding, decoding, encryption technologies and
communication of
XML documents for Palm OS and
related industries and similar applications in the
e-commerce industry, as of
the Effective Date, or at any time
during the term of this Agreement, including
without limitation:
- all information, data and experience of ITI relating to the development,
design, manufacture,
promotion, marketing and sale of systems and components
designed to compress, encode,
decode and encrypt XML documents;
- methods, algorithms and procedures (and related test results and design
data) for the design,
development or manufacture of the components and
systems used in the development of
software tools related to the
applications mentioned
above;
- methods, algorithms and procedures used in the design, development,
creation, modification,
manufacture, production, processing, storage,
testing
and evaluation of the applications mentioned
above including without
limitation,
all electronic testing and evaluation (and results thereof) together
with all
correspondence, notes, memoranda, and other information or data provided to,
or received
from all
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testing, troubleshooting, evaluation or certification entities,
organizations, individuals or governmental authorities.
1.3 "Improvements" means and includes all
modifications and improvements of any kind (whether or not
patentable or
commercially usable) to the
Patented and Proprietary Technology, Information or Know-
How related to the
Technologies and Products.
1.4 "Products" means products, which ITI has
developed, develops and will develop, including, but not
limited to the
IntactaCode, MobileCE,
Bridgeway, Courier, etc., which may originate from the
Technologies of compressing,
encoding and decoding,
encryption and transmission of files, XML
documents, and other
documents.
1.5 "Proprietary Information" means, whether in human
or machine readable form, all Know-How,
documentation or
data, related to
document management, compression, encoding, decoding and
encryption of XML
documents,
documents as well as document
communications using fax or e-mail,
provided to KC by ITI, whether
orally or in
writing, now owned or hereafter
acquired, which is marked
with a legend indicating that
it is confidential or
which isorally designated
as confidential. In the event KC
is unclear as to
the proprietary nature of any element of information disclosed, ITI
shall, upon
request,
confirm whether or not such
information is deemed confidential.
1.6 "Technologies" means in a general manner the
various product and software modules and applications of
ITI's Patented and Proprietary
Technologies and Information, Know-How including Improvements.
1.7 "Licensed Product" means any KC or IBM products
incorporating in full or in part the Licensed
Technologies that is not defined
in Paragraph 1.4. The Intacta 2D Transcoder and Transcoder
Developer's Toolkit
KC intends to develop falls under the
definition of Licensed Products.
1.8 "Intacta Code" means a patented and proprietary
technology for creating a graphic form representing
binary information on paper
and on CPUs.
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1.9 "Subsidiaries" means all and any corporations,
companies or other entities, organized under the laws of
any nation, more than
50% of the shares of ownership of which are owned by one of the parties to the
Agreement.
1.10 IBM customer means corporate and organizational entities that
have purchased or intend to purchase
IBM's Transcoding Architecture
and supporting products as defined in Appendix B.
2. Grant of License
2.1 Subject to the terms of this agreement, ITI hereby grants
KC a worldwide, non-exclusive license to use,
incorporate, market and sell the
Licensed Technologies, in full or in part in Licensed Products.
2.2 For a period of 18 months from the Effective Date of this
Agreement, ITI agrees not to grant any new
license to
any IBM Alliance Partner
for the Licensed Software for applications as defined in Appendix B.
KC
understands
that this 18 month period is
subject to continuing successful completion of required
business
development objectives listed in Appendix
C.
2.3 KC agrees that, should it not meet any quarterly target
defined in Attachment C, the 18 months protection
provided by ITI to KC under
Article 2.2 will be relinquished.
2.4 KC warrants that the Licensed Technology and the Licensed
Products will not be sold, either directly or
indirectly, to anyone other than
of IBM customers as defined in Appendix B for any purpose under this
Agreement.
2.5 Should, any KC customer that does not fall under the
definition of Appendix B wish to license the
Technology and/or Licensed
Products
ITI and KC agree to negotiate an addendum to this Agreement.
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2.6 Nothing contained in this Agreement shall be construed as
restricting KC's right to make Improvements to
the Licensed Technology. If
such
Improvements use or relate to the Licensed Technologies, then such
products
which may be derived from the Licensed
Products shall also be subject to the royalty payment
under Section 5. KC agrees
that ITI shall
exclusively own all such Improvements, patentable or otherwise.
2.7 ITI is entitled to license its Technologies to any other
third party, except as defined in Section 2.2
2.8 Except as otherwise provided herein, KC shall only make
copies of the Licensed Technologies for the
purpose of
incorporating it in its
Licensed Products. Unauthorized copying of the Licensed Technologies
and
Proprietary Information directly or
indirectly by KC or by any of its employees
or independent
contractors, will constitute a
fundamental and material breach
of this Agreement.
2.9 KC shall have an unrestricted right to make copies of the
Licensed Technologies for internal use, for the
purposes of demonstration and
evaluation
as well as for including it into its own Licensed Products.
3. Transfer of Licensed Technologies
3.1 ITI shall transfer to KC the Licensed Technologies in the
form of DLL's of IntactaCode (defined as
"DLL" for the
purposes of this section only)
that meets the requirements detailed below as well as design
materials in
accordance with the following
schedule.
(i) IntactaCode
(32-bit) DLL
April 15, 2000
3.2 Within six (6) weeks of receipt of the deliverables listed
in Section 3.1, KC will perform compatibility
tests with hardware and software
specifically used for building an e-commerce solution with IBM's
Transcoding Architecture. KC
will provide
to ITI an outline of all the tests conducted and the results of
those tests
including a detailed description of
failures, if any, or any inconsistencies in performance.
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4. Representations, Warranties and Technical
Support
4.1 ITI warrants and represents:
4.1.1 that it owns by itself through the work of its employees and
consultants the entire right, title and interest in
and to the Licensed
Technologies worldwide which does not infringe on any third party's patent
rights,
mask work rights,
copyrights, utility models
and/or other intellectual property rights;
4.1.2 that it has the right to enter into this Agreement;
4.1.3 that there are no liens, conveyances, mortgages, assignments,
encumbrances, or other agreements which
would
prevent or impair the
exercise of all rights granted to KC pursuant to this Agreement and that it
has
not and will not enter into any
agreements which would interfere with the licenses granted to
KC
during the full term of
this
Agreement except as to
other grants of non-exclusive licenses to other
licensees.
4.2 For the life if this Agreement, ITI shall provide Software
Maintenance Support to KC as defined in
Appendix D.
4.3 ITI agrees to provide KC with R&D support to help KC
develop Licensed Products and/or Modifications
and Improvements to the Licensed
Technologies. KC agrees that any such Improvements or Modifications
to the Licensed Technologies
will
remain the exclusive and sole ownership of ITI.
4.4 ITI agrees to negotiate in good faith, the conditions of
any technical and/or R&D support requested by KC
under section 5.1. Except as
specifically provided herein, there are no other warranties of ITI expressed or
implied, including warranties of
merchantability and fitness for a particular purpose.
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5. Royalties
In full consideration of the
license granted and Licensed Technologies provided and ITI's expertise
rendered to KC by ITI herein,
KC shall pay to ITI the following royalties.
5.1 All orders shall be subject to acceptance by ITI and shall
be subject exclusively to the terms of this
Agreement. ITI
shall not accept the order
unless KC has submitted a written copy of either a customer
proposal, statement
of work, or request for proposal
specifying the use of Licensed Product. ITI notice
of its acceptance will be
providedto KC promptly and not to
exceed within five (5) days of its receipt.
5.2 The acceptance provided in 5.1 shall be subject to the
agreement between ITI and KC regarding the
pricing model for the specific
client. It is understood between the parties that the pricing models may
vary
among clients,
depending on a number of factors
including pioneer preference, enterprise size,
specific use, types of
transactions,
size of transactions, etc. It is
therefore the intent of the parties to
work together and with
individual clients to
develop pricing models that are
acceptable to all parties.
For greater clarity, the
inability to reach agreement among ITI, KC and the client shall void the
acceptance
granted in 5. 1.
5.3 The terms hereof shall not be modified or supplemented by
any communication unless such
communication is in writing,
identified as an
amendment to this Agreement, and subsequently duly signed
by both parties.
5.4 All taxes imposed as a result of the existence of this
License Agreement shall be borne and
paid by the
party required to comply with
such applicable tax laws.
5.5 ITI shall provide KC with the information and reports it
requires for all Licensed Products, and Products
which are subject to Royalty
under this
License Agreement. Within thirty (30) days of the end of each
calendar
quarter period, KC shall make a report
of the Licensed Products and the Products sold and
subject to Royalty
statements. If Royalties are payable to
ITI, payment will be made within sixty (60) days
of the end of the calendar
quarter.
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5.6 ITI shall have the right during normal business hours, with
respect to the sales of the Licensed Products
and Products, to have KC's
records
examined by independent chartered or certified accountants for the
purpose
of verifying such Royalty
statements. ITI shall provide notice in writing to a duly authorized
representative of KC no
less than fifteen (15) business
days prior to any such examination of KC's records.
Such examinations shall
be limited to a maximum of two (2)
per year. One examination near the calendar
year end, and one
examination near the conclusion of Q2
business.
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6. Confidentiality
6.1 KC and ITI agree that certain information which either
party may receive fromthe other party under this
Agreement will be proprietary
and
confidential information of the disclosing party. Such information
includes,
but is not limited to:
6.1.1 the fact that the disclosing party intends to develop or market any
particular hardware or software
products;
6.1.2 the designs, specifications, development schedule, pricing and all
other technical and business
information concerning the
Licensed Products, the Products and any Improvements;
6.1.3 any non-public information concerning the business or finance of the
disclosing party;
6.1.4 any other information the disclosure of which might harm or destroy a
competitive advantage enjoyed by
the disclosing party (all of the
above 6. 1.1 through 6.1.4 hereafter called Proprietary and Confidential
Information).
6.2 The parties shall not disclose the Proprietary and
Confidential Information to any other person or entity,
other than its own employees,
its
Subsidiaries and sub-contractors and consultants who participate directly
in
the performance of the receiving
party's obligations under this License Agreement and its attorneys.
Subsequently, all employees,
its Subsidiaries and
sub-contractors and consultants who participate in the
performance of the receiving
party's obligations
must sign a confidentiality agreement, provided by ITI,
prior to performing
services to KC's obligations.
6.3 KC affirms and acknowledges that the unauthorized
disclosure of the Technologies, the Licensed
Technology and privileged
commercial
information provided by ITI pursuant to this Agreement may cause
irreparable
harm to ITI. KC affirms and acknowledges that
in the event of a breach of this Agreement by
KC, ITI will be entitled to
seek appropriate and available relief
under applicable laws.
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6.4 The parties hereto agree that they will keep the terms and
conditions of this Agreement confidential and
neither of the parties shall
disclose its
terms to any third party without the prior written consent of the other
party
except as required by federal or state
securities law or court order.
6.5 The obligations set forth in Sections 6.1 through 6.3 above
shall not be applicable to any information
which:
6.5.1 the receiving party is authorized by the disclosing party in writing to
disclose, or
6.5.2 becomes public knowledge through no breach of this License Agreement or
the Development Agreement
which enters into effect
at the
same date as this License Agreement by the receiving party, or
6.5.3 has been legally obtained from a bona fide third party, or
6.5.4 was in possession of the receiving party prior to the receipt thereof
or
6.5.5 is required to be disclosed in the context of administrative or
judicial proceedings or otherwise pursuant to
applicable laws or
regulations.
7. Indemnity
7.1 If Licensed Products and Products sold in accordance with
this Agreement, are alleged to infringe or
misappropriate partially or
totally any patent, copyright or intellectual property right belonging to a
third
party which is not listed in
Appendix
A hereto, and if the third party makes a claim or institutes a legal
action
or commences a proceeding against
KC because such infringement or misappropriation is caused
by the use of
the Licensed Technologies, KC shall
promptly notify ITI thereof
Upon receipt of such notice, ITI
shall, at its own expense, promptly take over the defense of such claim,
action
or proceeding or may pursue
settlement with the third party or may require KC to modify the
design of the
Licensed Products to avoid the
infringement or
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misappropriation, provided that
such modification preserves the essential functioning of the Licensed
Products.
ITI shall bear all charges,
expenses, and liabilities incurred by KC, including, but not limited
to,
its attorneys' fees in connection
with any such
allegation.
7.2 The maximum amount of liability for charges and additional
development fees that ITI shall bear, shall not
exceed $100,000 in total.
7.3 ITI shall not be liable or responsible for indirect and
incidental damages resulting from the application or
use of the Licensed Technologies
by KC other than as indicated in Section 7.1 above.
8. Term
8.1 This Agreement shall become effective on its Effective Date
and shall remain in effect until October 1,
2001 subjectto the requirements
of Appendix
C. If either party wishes to renew this agreement, notice
must be given to
the other at least 6 months prior to
the expiration of this Agreement. The parties may
then by mutual consent
renegotiate or renew this
Agreement for a period to be agreed.
9. Termination
9.1 Either party may terminate this Agreement by giving written
notice to the other party, in the event of a
breach or default under this
Agreement and
the party in default having failed to remedy such breach or
default within
forty-five (45) days from the date of
a written notice given by the other party specifying the
nature of the breach
or default.
9.2 Either party may terminate this Agreement by giving written
notice in the event the other party should
become insolvent or make an
assignment
for the benefit of its creditors or voluntarily file for or be placed
in
bankruptcy written notice to such other
party and is not withdrawn within sixty (60) days from the date
of filing.
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9.3 Upon termination of this Agreement KC shall pay all
Royalties due to ITI with respect to all the
Licensed Technologies, Products,
and Products sold and subject to the Royalty for which payment has
not yet been made, within
thirty (30)
days following the termination of this Agreement.
9.4 Upon the termination of this Agreement, KC shall cease to
use the Licensed Technologies and Products,
to manufacture and sell the
Licensed Products and at KC's expense, return to ITI all Licensed
Technologies
Evaluation Software and any
other Confidential and Proprietary Information.
9.5 In the event, however, this Agreement is terminated without
a breach or default by KC, KC shall have the
right to manufacture, to have
manufactured, use, lease, sell or otherwise dispose of the Licensed ITI
Products, development of which
has been
completed by KC before the termination of this Agreement, for
the full
marketable lifetime of such Licensed
Products by paying the Royalty as described in Section 5.
9.7 No termination of this Agreement, by expiration or
otherwise, shall release either party from any of its
obligations under Section 6.
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10. Notices
All notices required or
permitted to be given hereunder (except for routine communications to be
addressed to the persons in
charge of its subject
business) shall be in writing and shall be valid and
sufficient if dispatched by
a reputable express delivery
service by air or registered airmail, and addressed
as follows:
If to KC:
kforce Consulting
2100 Powers Ferry Road
Suite 110
Atlanta, GA 30339, USA
Attn: Christian Kotscher
if to ITI:
Intacta. Technologies Inc.
235 Peachtree Street N.E.
2215 North Tower
Atlanta, GA 30303, USA
Attn.
Either party may change its address by a notice given to the other party in the
manner set forth above. Notices given as herein provided shall be considered to
have been given seven (7) days after the dispatch thereof
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11. Applicable Law
This Agreement shall be governed
by and construed in accordance with the laws, of the State of Georgia,
U.S.A.
12. Miscellaneous
12.1 The headings to Sections of this Agreement are to facilitate reference
only, do not form a part of this
Agreement, and shall not in any
way affect
the interpretation hereof,
12.2 This Agreement, and Appendices attached hereto and made a part hereof,
embody the entire understanding
of the parties with respect to
the subject matter contained herein and shall supersede all previous
communications, representations
or understandings, either oral or written, between the parties relating to
the subject matter hereof. No
amendment or modification of
this Agreement shall be valid or binding
upon the parties unless signed
by their respective, duly authorized officers.
12.3 The parties hereto acknowledge and agree that each party has
participated in the drafing of this Agreement
and that the rule of
construction to
the effect that any ambiguities are to be resolved against the drafting
part shall not beapplied to the
interpretation of this Agreement. No inference in favor of, or against,
any party shall be drawn
from the fact that one party has
drafted any portion hereof
12.4 This Agreement shall not be assignable by either party without the prior
written consent of the other party.
12.5 No express or implied waiver by either party of any breach of any terms
and obligations of this
Agreement by the other party
shall be construed
as a waiver of any subsequent breach of said terms and
obligations or any
other terms and obligations of this
Agreement of the same or of a different nature.
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12.6 If any term, clause, or provision of this Agreement shall be judged to
be invalid, the validity of any other
term, clause, or provision,
shall not be affected, and such invalid term, clause, or provision shall be
deemed deleted
from this Agreement.
12.7 This Agreement sets forth the entire agreement and understanding between
the parties as to the subject
matter of this Agreement and
merges all
prior discussions and writings between the parties with
respect to the contents
of this Agreement.
12.8 This License Agreement precedes for any purpose of interpretation, any
other agreement that may have
been signed between the two
parties.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
by their duly authorized representatives on the day and year first above
written.
INTACTA TECHNOLOGIES INC.
Kforce Consulting
By: /s/ Noel Bambrough
By: /s/ "Signature Illegible"
Title: Executive Vice-President & COO
Title: President
Date: 05/04/2000
Date: 05/02/2000
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APPENDIX "A"
LICENSED TECHNOLOGIES
* IntactaCode (32-bit) DLL
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APPENDIX "B"
IBM CUSTOMER DEFINITION
The following IBM customer profile defines the sales and marketing territory for
Kforce Consulting to deliver it's Intacta 2D Transcoder product and services
portfolio.
Kforce Consulting acknowledges that qualification is dependant upon the customer
having IBM product in use and installed satisfying the requirements in all
tiers:
1. Hardware
Requirements -
One required to qualify tier.
IBM AS/400
IBM RS/6000
IBM Netfinity (NT)
2 Software
Requirements -
All required to qualify tier.
- WebSphere/Domino Server Software
- DB2 or ORACLE
3. Pervasive
Computing Requirements -
One required to qualify tier.
- IBM WorkPad
- Palm OS Digital Devices
- iii. Windows CE
- iv. WAP Digital Devices
* Customer Intent to Purchase -
IBM customers who may not have either server or software requirements
installed during pre-sales qualification, but can provide documentation
(purchase order) indicating a procurement is in process would qualify.
* Requirements not met -
Customer opportunities that do not meet the above IBM Customer definition
requirement tiers may be presented to ITI for addendum consideration to KC's
license agreement with ITI, or KC may negotiate a new and separate license
agreement with ITI.
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APPENDIX "C"
BUSINESS DEVELOPMENT REQUIREMENTS SCHEDULE
Yearly and Quarterly sales targets, subject to annual revision, Kforce
Consulting has to meet in order to maintain the rights to sell Licensed
Products.
|
DATE |
BUSINESS DEVELOPMENT |
MARKETING & PR |
COMPOSITE TOTAL |
|
2000 |
|
|
|
|
Q2 |
Q2-0 installed accounts* |
Q2-1 press releases & front page feature* |
Q2-0 acct & 1 PR event |
|
Q3-6 month review |
Q3-2 installed accounts* |
Q3-2 press releases & front page feature* |
Q3-2 acct & 3 PR event |
|
Q4 |
Q4-3 installed accounts* |
Q3-3 press releases and front page feature* |
Q4-5 acct & 6 PR event |
| |
|
|
|
|
2001 |
|
|
|
|
Q1 |
Q1-4 installed accounts* |
Q1-4 press releases & front page feature* |
Q1-9 acct & 10 PR event |
|
Q2 |
Q2-4 installed accounts* |
Q2-4 press releases & front page feature* |
Q2- 13 acct & 14 PR event |
|
Q3 |
Q3-4 installed accounts* |
Q3-4 press releases & front page feature* |
Q3-17 acct & 18 PR event |
|
Q4 |
Q4-4 installed accounts* |
Q4-4 press releases & front page feature* |
Q4-21 acct & 22 PR event |
|
- Agreement Renewal |
|
|
|
* 6 month review date - 9/29/00
* Agreement renewal date - 10/01/01
* Front page feature - Article and or, announcement on Kforce Consulting's www
site, with mirrored article and or announcement on Intacta's web site.
* Installed account defined as completion of a Intacta 2D Transcoder site
installation, and or completion of an account's testing and pilot deployment
stage.
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APPENDIX "D"
SOFTWARE MAINTENANCE SUPPORT
ITI agrees to supply post-sale, Level 2 and 3 technical phone support to Kforce
Consulting. ITI will provide Level 2 and 3 Software Support Services via remote
dial-in or phone. By this, the parties agree that ITI will provide the following
support to Kforce Consulting:
1. Access to telephone technical assistance to ITI support
center for the reporting and alerting of problems and
consultation as necessary during normal
business hours of M's support center in the USA.
2. Log and record all requests from Kforce Consulting for
technical assistance in a manner, which will
allow Kforce Consulting to track, reported
problems and progress.
3. Provide remedial software support by providing a patch or
bypass solution to verified problems reported by
Kforce Consulting.
4. Provide Kforce Consulting with access through its web site
or other means acceptable to Kforce Consulting
to the following information.
5. Known bug database and diagnostic/troubleshooting knowledge
base for the duration of this Agreement.
6. FAQ (frequently asked questions).
7. Documentation updates.
8. Copies of any/all user documentation, technical
specifications and maintenance documents related to
Licensed Software as defined in Appendix
A.
9. Software and hardware compatibility information for revision
of Licensed Technologies and updates
thereafter.
10. Support pricing:
10.1 For the life of this agreement beginning with the Effective Date of
this Agreement, ITI will provide to
Kforce Consulting a free of
charge Software Maintenance Support that is limited to bug fixing.
10.3 Kforce Consulting agrees that ITI will not have to provide any
support, under this agreement, to any
Kforce Consulting customers,
resellers, distributors and/or end-users. The responsibility to provide
technical support to such
parties lies exclusively
with Kforce Consulting.
