Exhibit 10.1
LICENSE & TRANSFER AGREEMENT
THIS
LICENSE AND TRANSFER AGREEMENT (this “Agreement”)
is effective as of April 15, 2007, by and between Caler &
Company, Inc., an OHIO corporation (''LICENSOR''), and
Guardian Zone Technologies, Inc., a Delaware corporation
(''LICENSEE'').
RECITALS
WHEREAS,
LICENSOR currently owns the common law and/or registered
copyright and service/trade marks and related marks and
intellectual property rights in the brand names and
designations (collectively ''Licensed Property'') created by
LICENSOR specifically for use in LICENSEE’s wireless
location products business (the
“Business”);
WHEREAS,
the parties desire that LICENSEE have the right to use the
Licensed Property in the Territory (as hereinafter defined)
pursuant to the provisions of this Agreement and further, upon
full payment to LICENSOR for creation of the Licensed
Property, LICENSEE should be the rightful owner of all such
Licensed Property going forward.
NOW,
THEREFORE, in consideration of the mutual provisions herein,
the sufficiency of which is hereby acknowledged, the parties
agree as follows:
AGREEMENT
ARTICLE 1 - GRANT OF LICENSE
1.1.1 Perpetual
License to use Licensed Property.
LICENSOR
grants to LICENSEE an exclusive, non-transferable,
indivisible, perpetual license (the “License”) to
use the Licensed Property in any respect related to the
operation, management and advertisement of LICENSEE’s
Business worldwide (the “Territory”), provided
LICENSEE properly complies with all the provisions of this
Agreement.
1.1.2 Licensed
Property.
The
term ''Licensed Property'' shall mean LICENSOR’s
copyrights and service/trade and related marks and
intellectual property rights listed in
Exhibit A ,
attached hereto and fully incorporated herein.
ARTILE 2 - CONSIDERATION; TRANSFER OF MARKS
2.1 Consideration for License.
The
parties hereby agree that LICENSEE has already provided good
and valuable consideration to LICENSOR for the License granted
hereunder.
2.2
Transfer of Licensed
Property.
The
parties hereby agree that, effective as of the date that full
and complete payment is made by LICENSEE to LICENSOR of
$78,759.00 (Seventy Eight Thousand Seven Hundred Fifty Nine
Dollars), which is the balance of the money owed to LICENSOR
with respect to the creation of the brands related to
LICENSEE’s Business, LICENSOR shall forever
sell, assign, transfer, release and convey to LICENSEE, and
its successors and assigns, LICENSOR's entire right, title and
interest in and to all copyrights, service and/or trade marks,
all rights of authorship and all other intellectual property
rights in the Licensed Property and all physical embodiments
and copies thereof. The foregoing transfer shall take place
automatically and, except as otherwise provided in this
Section 2.2, without any further action required on the part
of either party hereto. LICENSOR further agrees, promptly upon
request of the LICENSEE, or any of its successors or assigns,
to execute and deliver, without further compensation of any
kind, any power of attorney, assignment, application for
copyright, service or trademark, patent or other intellectual
property right protection, or any other documents which may be
necessary or desirable to fully secure to LICENSEE, its
successors and assigns, all right, title and interest in and
to the Licensed Property and all physical embodiments and
copies thereof, and to cooperate and assist in the prosecution
of any opposition proceedings involving said rights and any
adjudication of the same. Further, following the transfer of
the Licensed Property to LICENSEE pursuant to this Section
2.2, LICENSOR agrees never to assert any claims, rights or
moral rights in or to the Licensed Property or any physical
embodiments or copies thereof.
ARTICLE 3 - REPRESENTATIONS AND WARRANTIES;
INFRINGEMENT
3.1
Licensor’s Representations and
Warranties.
LICENSOR
represents and warrants to LICENSEE that: (i) LICENSOR has the
right to furnish the Licensed Property, such Licensed Property
does not and will not infringe any third party intellectual
property rights, and LICENSOR will provide the Licensed
Property hereunder free of all liens, claims, encumbrances and
other restrictions; and (ii) LICENSEE shall be entitled to use
and enjoy the benefit of the Licensed Property, subject to and
in accordance with the terms of this Agreement.
3.2
Intellectual Property Infringement.
a.
LICENSOR
agrees to defend and/or handle, at its own expense, any claim
or action against LICENSEE for actual or alleged infringement
of any
intellectual
or industrial property right, including, without limitation,
trademarks, service marks, patents, copyrights,
misappropriation of trade secrets or any similar proprietary
rights on the Licensed Property furnished hereunder by
LICENSOR or based on LICENSEE’s use thereof. LICENSOR
further agrees to indemnify and hold LICENSEE harmless from
and against any and all liabilities, losses, costs, damages
and expenses (including reasonable attorneys' fees) associated
with any such claim or action. LICENSOR shall conduct the
defense of any such claim or action, consistent with
LICENSEE’s rights hereunder, all negotiations for its
settlement or compromise, unless otherwise mutually agreed to
in writing; provided, however, that LICENSEE may participate
in such defense or settlement negotiations and pay its own
costs associated therewith.
b.
If
any portion of the Licensed Property becomes, or in LICENSOR's
opinion is likely to become, the subject of any such claim or
action, then LICENSOR
,
at its expense, may either: (i) procure for LICENSEE the right
to continue using such Licensed Property as contemplated
hereunder; (ii) modify such Licensed Property or portion
thereof to render it non-infringing (provided such
modification does not adversely affect LICENSEE's use as
contemplated hereunder); or (iii) replace such Licensed
Property with equally suitable, functionally equivalent,
compatible, non-infringing products (provided that such
products do not adversely affect LICENSEE's use as
contemplated hereunder). If none of the foregoing are
commercially practicable after LICENSOR
has exhausted
all reasonable efforts, LICENSEE shall be entitled to a
pro-rata refund of the payments made by LICENSEE to
LICENSOR
in
respect of such portion of the Licensed Property.
c.
Notwithstanding
anything to the contrary in this Agreement, LICENSOR shall
have no obligation to LICENSEE with respect to any action
based on the combination or use of the Licensed Property with
other products not furnished by LICENSOR
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