Perpetual License Agreement
THIS AGREEMENT (hereinafter “Agreement”) is entered into on the date indicated herein below, by and among CWS Marketing & Financing Group, Inc a Delaware Corporation with a principal place of business at 3525 Del Mar Heights Rd #316, San Diego, CA 92130(“CWSMF”),, Inc., a Delaware corporation and FN Implementation & Financing Partners, Inc., Delaware corporation with its principal place of business at P.O. Box 9, Fairfield CT, 08624 (“FNIFP”).
WHEREAS , CWSMF is in the business of, among other things, financial and marketing consultancy; and
WHEREAS , FNIFP has developed a proprietary methodology and business process, which it calls Accountmetricing Architectue (“AAI”) and
WHEREAS , CWSMF, on the one hand, and FNIFP, on the other hand wish to enter into an agreement.
NOW THEREFORE , agreeing and acknowledging that this Agreement is supported by good and valuable consideration, the sufficiency and adequacy of which are hereby expressly acknowledged, the Parties hereby agree as follows:
1. Definitions : As used herein the following terms have the following meanings:
1.1 The Parties: The term “Party” or “Parties” shall mean CWSMF on the one hand and FNIFP on the other hand.
1.2 Trademark Rights . The term “Trademark” or “Trademark Rights” shall mean U.S. Trademark Application No., 77075679 approved on November 4 2008, and entitled Accoutmetricing Architecture,” owned by FNIFP,
1.4 Improvements . The term “Improvement” means any and all improvements to or derivatives of the Trademark Rights, including without limitation, enhancements, modifications, updates, new versions, features or functionality.
2. Grant of Rights and License. Subject to the terms of this Agreement, and in consideration of the payment of the amounts set forth herein which payments are hereby acknowledged by FNIFP and FNIFP (to the extent applicable if possesses any residual rights to the Trademark Rights and the Improvements) hereby grants to CWSMF the world-wide, perpetual right as further described in this Agreement.
3. Improvements. If FNIFP has previously developed or hereafter develops any Improvement to the Trademark Rights, FNIFP shall promptly disclose such Improvements to CWSMF and such Improvements shall become a part of this Agreement and licensed to CWSMF hereunder. If any such Improvement may be Trademarkable, FNIFP shall have the first option to file a Trademark application in FNIFP’s name. The expense (including all attorney’s fees) of filing, securing, prosecuting and maintaining Trademark or other intellectual protection on such Improvement shall be borne by FNIFP.
4. Notice of Infringements; Protection of Intellectual Property Rights . CWSMF shall immediately notify and inform FNIFP of any actual or potential infringement of the Trademark Rights, which may come to CWSMF’s attention. Subject to the additional provisions of this section, FNIFP may, in its sole discretion, take whatever steps it deems necessary or advisable to terminate or resolve any such actual or potential infringement. If FNIFP shall elect not to pursue or defend any action, CWSMF, at its sole cost and expense and with FNIFP’s approval, may undertake such action to resolve or terminate such infringement, and FNIFP shall cooperate with CWSMF to resolve or terminate such infringement.
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(a) FNIFP shall maintain the Trademark Rights in good standing and shall pay all maintenance fees due thereon during the term. FNIFP, having the right of ownership of any Improvement hereunder, shall be responsible for all costs and expenses of applying for any U.S. or foreign Trademark protection; provided, however, that if FNIFP fails to apply for a Trademark within nine (9) months of public disclosure of such Improvement, then CWSMF may apply, at its own cost and expense, for a U.S. and/or foreign Trademark on such Improvement and, if a Trademark issues on such Improvement, then CWSMF shall own all rights under such Trademark, other than a royalty-free non-exclusive license to such Improvement, which CWSMF shall grant to FNIFP, at no further cost nor obligation.
(b) In the case of any infringement of any Trademark Rights or any violation of any other intellectual property rights by any third party during the term of this Agreement, FNIFP shall have the right, at its own expense, to cause such third party to cease such infringement and to otherwise enforce such Trademark Rights or such other intellectual property right. CWSMF shall assist FNIFP as reasonably requested, at FNIFP’s expense, in taking any such action against any such infringer. Any amount recovered as a result of any action taken by FNIFP hereunder shall be first applied to reimbursing FNIFP for its out-of-pocket expenses incurred in connection therewith, and the remainder, if any, shall be divided appropriately between CWSMF and FNIFP with reference to the relative monetary injury suffered by each of them by reason of the infringement for which said amounts are recovered. If, following reasonable written notice from CWSMF, FNIFP shall fail to take any action against any infringer which CWSMF may reasonably deem necessary or desirable to prevent such infringement or violation, or to recover damages therefore, in addition to any other remedy available to it, CWSMF may, upon written notice to FNIFP, take any steps CWSMF may deem appropriate against such infringer at CWSMF’s own expense. FNIFP shall assist CWSMF, at CWSMF’s expense, as reasonably requested in taking any such action against any such Infringer. Any amount recovered as a result of any such action taken by CWSMF shall be retained by CWSMF. This paragraph shall survive the termination or expiration of this Agreement.
5. Obligations of the Parties . The Parties agree that each will perform the following services or provide the following products, or otherwise have the following obligations during the term of this Agreement:
5.1 By FNIFP : FNIFP shall provide to CWSMF, and CWSMF shall purchase, license and/or pay FNIFP the amounts set forth on Exhibit “A” to this Agreement for the products, services, or training/support (the “FNIFP Offerings”) also set forth in Exhibit “A” which Exhibit is hereby made a part of this Agreement by specific reference. FNIFP shall accept such amounts in full payment and satisfaction for the provision of the FNIFP Offerings as described in Exhibit “A.”
5.2 By CWSMF : CWSMF shall sell or license the delivery of the FNIFP Offerings to its current and/or prospective clients, and/or to the current or prospective clients of any Identified Agency as described in paragraph 6.3 herein and pay such amounts that are owed under royalty and licensing fees as identified.5.3
6. Additional Terms & Conditions . The Parties agree that the following additional terms and conditions shall apply to this Agreement and the resulting relationship between the Parties:
6.1 Term and Termination . This Agreement is for a set term of 18 months from the effective date set forth below. At the end of such term, CWSMF shall have the exclusive option to renew this Agreement for successive 18-month periods by sending notice to FNIFP of such election at least ten (10) days prior to the end of the initial term or any renewal term. The amounts due to either Party under any renewal of this Agreement shall be those amounts reflected in Exhibit “A” under “Renewal Amounts.” Notwithstanding this automatic renewal clause, either Party may terminate this Agreement as follows:
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6.1(a) A non-breaching Party, at their sole and exclusive election, may terminate this Agreement, or suspend performance of its obligations hereunder, upon written notice, if the other Party shall be subject to one or more of the following events:
the filing by a Party of an involuntary petition in bankruptcy, the entry of a decree or order by a court or agency or supervisory authority of competent jurisdiction for the appointment of a conservator, receiver, trustee in bankruptcy or liquidator for a Party in any insolvency, readjustment of debt, marshaling of assets and liabilities, bankruptcy or similar proceedings, or the winding up or liquidation of its affairs, and the continuance of any such petition, decree or order undismissed or unstayed and in effect for a period of sixty (60) consecutive days; or the consent by a Party to the appointment of a conservator, receiver, trustee in bankruptcy or liquidator in any insolvency, readjustment of debt, marshaling of assets and liabilities, bankruptcy or similar proceedings of or relating to a Party, or relating to substantially all of its property, or if a Party shall admit in writing its inability to pay its debts generally as they become due, file a petition to take advantage of any application insolvency, reorganization or bankruptcy statute, make an assignment for the benefit of its creditors or voluntarily suspend payment of its obligations.
6.1(b) A non-breaching Party may also terminate this Agreement or suspend performance of its obligations hereunder, upon written notice at any time as a result of a material breach of this Agreement as follow: (i) the non-breaching Party shall provide written notice of its claim of a material breach; (ii) the Party receiving such notice shall be afforded 30 days to cure the breach; and (iii) if, after providing notice of a material breach and where the Party receiving such notice fails to cure the conditions causing such material breach, this Agreement shall be terminated (or suspended, at the election of the non-breaching Party).
6.1(c) Either Party may terminate this Agreement with the expressed written consent of the other Party.
6.1(d) All rights and obligations of both Parties as contained in each and every paragraph of this Agreement shall remain in full force and effect during the notice period. Upon termination of this Agreement for any reason in accordance with this Agreement, and at the specific written request of either Party, each Party so requested shall return any products or materials of the other Party which such Party may have in its possession within five (5) business days after the date of termination. Termination by either Party shall relieve both Parties of any remaining obligations under this Agreement, but shall not affect any existing rights of either Party under this Agreement that exist at the time of termination. The following paragraphs of this Agreement shall survive termination: 6.2, 6.3, 6.5 and 6.8.
6.2 Confidentiality & Non-Disclosure Obligation . The Parties understand and acknowledge that in the course of the business relationship contemplated under this Agreement, information of a confidential, proprietary and/or trade secret nature may be revealed by one Party (the “Disclosing Party”) to the other Party (the “Receiving Party”) and that such information constitutes valuable business assets of the Disclosing Party. “Confidential Information” means any and all proprietary information, trade secrets, know-how and technical data, including but not limited to, products, data, compilations, algorithms, code, software, processes, systems, technology, and databases, whether on computer discs, tapes, CD, DVD or other media for sorting, storing or displaying information and including information that is marked as “confidential” or should be reasonably understood to be confidential or proprietary by either Party. The Receiving Party agrees that for the Term of this Agreement and for two (2) years after termination of this Ag