Exhibit 10.4
INTELLECTUAL PROPERTY LICENSE
AGREEMENT
By & between
MDI, Inc (“Licensor”)
&
Monitor Dynamics, Inc.
(“Licensee”)
This INTELLECTUAL PROPERTY LICENSE
AGREEMENT (“Agreement”) is dated as of
September 8, 2009 (the “Effective Date”) between
Monitor Dynamics, Inc., a Texas corporation
(“Licensee”), and MDI, Inc, a Delaware corporation
(“Licensor”). Licensor and Licensee are sometimes
referred to herein individually as, “Party” and
collectively as, the “Parties.”
I
RECITALS
WHEREAS, Licensee desires to obtain
the right and license to use the Licensed IP upon the terms and
conditions set forth herein.
NOW THEREFORE, in consideration of
the foregoing premises, and for other good and valuable
consideration, the receipt and adequacy of which are hereby
acknowledged, the Parties hereto hereby covenant and agree as
follows:
I.
DEFINITIONS: Whenever used in this
Agreement, the following terms have the meanings respectively
assigned to them in this Section:
(a) “Affiliate”
means a Person who directly or indirectly through one or more
intermediaries, controls, or is controlled by or is under common
control with, the Person specified.
(b) “Control”
means the possession, directly or indirectly, of the power to
direct or cause the direction of the management and policies of a
Person whether through the ownership of voting securities, by
contract, or otherwise.
(c) “Person” means
an individual, firm, partnership, joint venture, corporation, bank,
trust, unincorporated organization or governmental body.
(d) “Licensed IP”
means the following patent applications and any patent issued
thereon: (a) United States Patent Application “Security
Operating System for Networked Access Control with Single Board
Computer Door Controller filed May 8, 2009; (b) United
States Patent Application No. 10/843,180, titled
“Integrated Security Suite Architecture and System
Software/Hardware”; (c) United States Patent Application
No. 11/268,880, titled “Integrated Security
Suite Architecture and System Software/Hardware. As used in
this Agreement, the term “Intellectual Property”
expressly excludes Trademarks.
II.
LICENSE GRANT
2.1.
License Grant. From and after the
Effective Date, Licensor hereby grants to Licensee, and Licensee
hereby accepts from Licensor, subject to any licenses previously
granted to third parties, a perpetual, irrevocable, world-wide,
fully paid-up, royalty-free license to use the Licensed IP to make,
have made, use, offer for sale, promote, distribute, sell and
otherwise commercially exploit the Licensed IP. Such license
includes, without limitation, the right to distribute, and create
derivative works from any copyrighted materials included in
Licensed IP, the right to make, have made, use, offer for sale,
promote, distribute, sell and otherwise commercially exploit any
such derivative works and the right to use any trade secrets and
know-how included in Licensed IP.
2.2.
Copies. Licensee may make such
number of copies of the applicable Licensed IP as is reasonably
necessary to accomplish the permitted uses set forth in
Section 2.1. All copies shall be subject to the terms and
conditions of this Agreement.
2.3.
Exclusion of All Other Rights.
Except as expressly provided herein, Licensee is granted no rights
or licenses whatsoever in or to the Licensed IP or any other
Licensor products, services or other Licensor intellectual
proprietary or personal rights. Licensor hereby expressly reserves
all rights and licenses not expressly granted in this Agreement. In
particular and without limiting the foregoing, nothing in this
Agreement will be deemed to convey to Licensee the legal title to
any Licensed IP.
2.4.
Right to Sublicense. Licensee shall
be free to grant sublicenses to any majority-owned subsidiary or
Affiliate of Licensee for so long as such Person remains a
majority-owned subsidiary or an Affiliate of Licensee. Any such
sublicense shall be subordinate to and conform to the terms and
conditions of this Agreement, and shall not include the right for
such sublicensee to grant sublicenses to persons who are not also
majority-owned subsidiaries or Affiliates of Licensee. Licensee
shall also be free to grant sublicenses to persons who are not
majority-owned subsidiaries or Affiliates of Licensee to the extent
necessary to exercise its “have made” rights as
provided in Section 2.1. Any such sublicense shall be
subordinate to and conform to the terms and conditions of this
License; shall not include the right for such sublicensee to grant
sublicenses to other persons; and shall not include the right for
such sublicensee to make, sell or distribute products made using
the Licensed IP for such sublicensee’s own account or the
account of any person other than Licensee or a majority-owned
subsidiary or Affiliate of Licensee. In addition, Licensee shall
require that any such sublicensee implement and maintain practices
and policies sufficient to preserve the confidentiality of all
Licensed IP provided to such sublicensee by Licensee, and Licensee
shall be solely responsible, as between Licensee and Licensor, for
any breach of confidentiality with respect to the Licensed IP by
any such sublicensee. Except as expressly set forth in this
provision, Licensee shall not, without the prior written approval
of Licensor, which approval shall not be unreasonably withheld,
delayed, or conditioned, sublicense or transfer in any way any
Licensed IP.
2.5.
Intellectual Property Notices and
Markings. Licensee shall accurately produce and reproduce all
Licensor intellectual property notices on all copies Licensee
produces or reproduces of the Licensed IP.
III.
OWNERSHIP
3.1.
Licensed IP. Licensee acknowledges
and agrees that, as between the Parties and subject to the rights
and licenses granted herein, Licensor is, and at all times shall
remain, the sole and exclusive owner of all right, title and
interest, throughout the world (including all intellectual property
and other proprietary rights), in and to all Licensed IP, and any
copies of the Licensed IP, whether made by or on behalf of Licensor
or Licensee.
3.2
Derivative Works. Licensor
acknowledges and agrees that, as between the Parties, any
derivative works of Licensed IP created by or on behalf of Licensee
are and shall remain the sole and exclusive property of
Licensee.
IV.
PROTECTION OF LICENSED
TECHNOLOGY
4.1.
Protection of Intellectual Property
Rights.
(a) Licensor and the Licensee
shall cooperate to police diligently the Licensed IP. The Parties
shall promptly notify each other in writing of any unauthorized
use, infringement, misappropriation, dilution or other violation of
the Licensed IP of which it becomes aware.
(b) Licensor shall have the
primary right, but not the obligation, to bring and control any
suits against any unauthorized use, infringement, misappropriation,
dilution or other violation of the Licensed IP. Licensee agrees to
cooperate with Licensor in any litigation or other enforcement
action that Licensor may undertake to enforce or protect the
Licensed IP and, upon Licensor’s request, to execute, file
and deliver all documents and proof necessary for such purpose,
including being named as a Party to such litigation as required by
law. Licensee shall have the right to participate and be
represented in any such action, suit or proceeding by its own
counsel and at its own cost and expense. Licensee shall have no
claim of any kind against Licensor based on or arising out of
Licensor’s handling of or decisions concerning any such
action, suit, proceeding, settlement, or compromise, and the
Licensee
hereby irrevo
