EXHIBIT 10.1
AGREEMENT
This License and Support Services Agreement
(“Agreement”), effective as of October 7, 2009
(“the Effective Date”), is entered into between
NeoMedia Technologies, Inc., a Delaware (United States of America)
corporation having a principal place of business at Two Concourse
Parkway, Suite 500, Atlanta, Georgia 30328
(“NeoMedia”); and Brand Extension Mobile Solutions,
S.A., a Madrid (Spain) corporation having a principal place of
business at calle Guzmán el Bueno, No. 133, Madrid,
Spain (“BEMS”; together, “The
Parties,” or individually, “Party”).
WHEREAS BEMS is a company validly organized in
Madrid, Spain, which engages mainly in the provision of
technological and market solutions to its customers, designing,
implementing and managing the extension of their trademarks to
cellular phones and technological environments in general, and is a
mobile marketing service provider, with key business interests in
Southern Europe and South America;
WHEREAS, NeoMedia is a company validly organized
in Delaware, United States, which engages, among other activities,
in the provision of mobile barcode platforms, including technical
bi-dimensional code recognition solutions, and is a leading company
in the industry worldwide;
WHEREAS, BEMS has made a cooperation agreement
with Telefónica Internacional, S.A.U (hereinafter,
“Telefónica”), for the exclusive commercial
operation in Latin America for the practice applications and
business opportunities arising from the use of technical
bi-dimensional code platforms (hereinafter, for the purposes
hereof, the “Technology”);
WHEREAS, for BEMS’ operation of the
Technology in association with NeoMedia’s Platform, it is
necessary for NeoMedia to grant BEMS a platform license;
WHEREAS, BEMS intends for such purpose to use as
its prime vendor, a technology provider with renowned experience,
technical good standing, and an owner of mobile barcode platforms
capable of providing the support services required by
BEMS;
WHEREAS, NeoMedia is a technology provider and
the leading mobile barcode platform vendor, with intellectual
property and technology assets covering barcode reading, management
and scanning that meet BEMS requirements;
WHEREAS the Parties desire to enter into an
agreement whereby, NeoMedia grants to BEMS a platform license, and
provide the NeoMedia mobile barcode platform and related products
for mobile barcode reading and BEMS becomes a NeoMedia distribution
and sales channel; and
WHEREAS The parties desire to enter into
Purchase Order through which NeoMedia will sell to BEMS certain
hardware products to support barcode and mobile barcode based
ticketing and couponing activities in support of BEMS’
customers;
NOW, THEREFORE, in accordance with the foregoing
and in consideration of the terms and conditions contained herein,
NeoMedia and BEMS agree as follows:
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“Licensed
Platform” shall be set forth in Exhibit A hereto.
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“Field of
Use” shall be set forth in Exhibit B hereto.
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“Royalty-Based Revenue” shall be set
forth in Exhibit D hereto.
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“Territory” shall mean those
countries identified in Exhibit C hereto, which may be amended in
writing from time to time by mutual agreement of the
Parties.
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License
Granted and Services Provided .
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Subject to the
terms and conditions of this Agreement, and for the consideration
recited herein, NeoMedia grants to BEMS the right to use in the
Territory the Licensed Platform owned by NeoMedia as set forth in
Exhibit B hereto (“License”). The License is
granted on a non-exclusive basis in the Territory. The
License further grants BEMS the right to distribute
NeoMedia’s NeoReader (1) by download to the mobile terminal
of the user through the BEMS web site, and/or the web site of third
parties with which BEMS may have reached an agreement to such
effect; and (2) through the inclusion by the manufacturers of the
NeoMedia NeoReader in the mobile terminals. NeoMedia
undertakes to cooperate with BEMS to establish such channels for
the distribution of its NeoReader. For such purpose,
NeoMedia shall carry out tasks of technical assistance that may be
necessary to set up the platform for NeoReader downloads in the web
site of BEMS and/or third parties; and for the manufacturers to
include said software in the mobile terminals as set forth in
Exhibit E hereto. In this respect, NeoMedia undertakes to cooperate
with the manufacturers of the terminals on identical terms,
however, NeoMedia reserves the right to charge the handset
manufacturer, on a time and materials basis, for porting, testing,
and customization. BEMS may also distribute the
NeoReader through channels other than those described above, in
which NeoMedia shall cooperate with BEMS on similar terms as those
described herein. However, no rights are extended to BEMS, or any
customers or others claiming rights through BEMS, for products or
activities outside of the Territory.
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Subject to the
terms and conditions of this Agreement, and for the consideration
recited herein, NeoMedia shall provide to BEMS the support,
maintenance, upgrade and update services (hereinafter, the
“Support Services”) described in Exhibit F
hereto. The Support Services may be provided to BEMS or
to BEMS’ customers.
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Subject to the
terms and conditions of this Agreement, and for the consideration
recited herein, NeoMedia grants to BEMS the right to grant a
limited sublicense to limited portions of NeoMedia’s
intellectual property to any company set forth in Exhibit H hereto,
which may be amended in writing by NeoMedia from time to time,
strictly in the Territory, which sublicense will be under the terms
and conditions of this Agreement, and to the extent that the
particular sublicensee acknowledges in writing that it is using
NeoMedia’s intellectual property, with any revenue under such
sublicense being included in Royalty Based Revenue. The specific
portions of NeoMedia’s intellectual property to be
sublicensed by BEMS and other restrictions on the sublicense will
be determined at the time such sublicense may be granted and shall
be determined solely at the discretion and under the terms
established by NeoMedia.
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Subject to the
terms and conditions of this Agreement, and for the consideration
recited herein, NeoMedia will provide a platform as an ASP service
in line with the Service Level Agreement requirements set forth in
Exhibit G hereto, and will make available BEMS Client branded
versions of the Neoreader client and download site, and work with
BEMS’ Clients’ to port and optimize the reader if
requested and to the extent described in Exhibit E
hereto. As described herein, NeoMedia shall provide
hardware scanning units in support of ticketing solution
sales.
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Consideration
shall be set forth in Exhibit D hereto.
The term of
this Agreement shall be an initial four (4) years, with automatic
extensions of one (1) year if BEMS is compliant and up to date with
all provisions of the Agreement including Minimum Annual Payment,
which are continuing, and any royalty payment, as determined by
NeoMedia in its sole discretion.
For the
purposes of this clause, Confidential Information shall be deemed
to mean all that information and/or documentation of BEMS and
NeoMedia which, due to its commercial, technical, financial,
accounting, organizational or strategic nature or of any other type
is not in the public domain, whether in extract form or in full,
and whether communicated in writing, verbally, electronically or
through any other medium and/or procedure.
Having
established the foregoing, pursuant to this clause the said parties
shall be under an express obligation to maintain complete
confidentiality and secrecy regarding any Confidential Information
which they are aware of or have become aware of by reason of this
Agreement and its preparation, and the provisions hereof shall
extend to all of their personnel and, as the case may be, to any
third party authorized by the parties in accordance with the
provisions of the following paragraphs.
Except where
such disclosures are required by law or the Parties have given
consent in writing, the “recipient party” or
“recipient” of the Confidential Information
undertakes:
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To maintain it secret, this obligation including
any unauthorized disclosure or use of the Confidential Information,
whether actively (delivery of the Confidential Information to an
unauthorized third party or employee), or passively (providing the
unauthorized third party or employee with access to the
Confidential Information in such manner that the same may become
aware thereof).
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To use it solely and strictly in relation to the
purpose for which the Confidential Information is delivered
thereto, and the same may not use it for any purpose other than
compliance and performance of this Agreement. In this respect, the
recipient of the Confidential Information undertakes, in respect
thereof, not to transfer and/or assign it to third parties not
covered by the contractual relationship, even for its
preservation.
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To restrict access to Confidential Information
solely to those employees of its company which need to be aware
thereof by reason of implementing this Agreement, its preparation
and performance and/or, as the case may be, those third parties who
have been previously and expressly authorized by the recipient
party of the Confidential Information.
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To take all measures necessary to prevent the
Confidential Information becoming known to unauthorized employees
or third parties. The recipient shall in this manner protect the
Confidential Information of the other party using the same means of
protection which it uses to protect its own Confidential
Information.
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To take the necessary measures which ensure
compliance by authorized employees and/or third parties with all
obligations assumed pursuant to this clause. In this respect, the
recipient of the Confidential Information undertakes to enter into
as many agreements as may be necessary with its authorized
employe
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