EXHIBIT 10.9
AMENDED AND RESTATED
TECHNOLOGY LICENSE AGREEMENT
This Amended and Restated Technology License Agreement (the
"Agreement") is made and entered into as of
the 19th day of May, 2005, by and
between TERRA INSIGHT CORPORATION, a
Delaware corporation ("TIC"), and THE
INSTITUTE OF GEOINFORMATIONAL ANALYSIS OF
THE EARTH, a Liechtenstein
establishment (the "INSTITUTE"). This
Agreement amends and restates the
Technology License Agreement dated as of
January 7, 2005 between the parties.
WHEREAS, the INSTITUTE is in the business of developing, using,
and
licensing others to use, and is the
developer and owner of certain technology
and know-how used in the surveying,
mapping, detection, and reporting of natural
resources of the Earth (the "Mapping
Technology");
WHEREAS, TIC is in the business of providing services and products
in
connection with the identification,
location, exploration and recovery of
deposits of natural resources ("TIC
Services"); and
WHEREAS, the INSTITUTE desires to license all of its commercial
Mapping
Technology and to provide related
commercial services in the use of the Mapping
Technology, which will be subject to a
separate Services Agreement between the
parties;
WHEREAS, TIC desires to license the Mapping Technology and
obtain
services from the Institute for use in
conjunction with the TIC Services;
NOW THEREFORE, for good and valuable consideration and on the
promises
and premises set forth below, the parties
agree as follows:
1.
DEFINITIONS.
1.1
CONFIDENTIAL INFORMATION:
a. INSTITUTE CONFIDENTIAL INFORMATION: Confidential and/or
proprietary information relating to the
Mapping Technology, research,
development, products, processes, trade
secrets, business plans, customers,
finances, and personnel data related to the
business of INSTITUTE. INSTITUTE
Confidential Information does not include
any information (i) which TIC knew
before INSTITUTE disclosed it to TIC; (ii)
which has become publicly known
through no wrongful act of TIC; (iii) which
TIC developed independently, as
evidenced by appropriate documentation,
including Derivatives; (iv) which is
disclosed to TIC by a third party without
restriction of confidentiality; or (v)
the disclosure of which is required by
law.
b. TIC CONFIDENTIAL INFORMATION: Confidential and/or
proprietary information and Derivatives
thereof relating to the research,
development, products, processes, trade
secrets, business plans, customers,
finances, personnel data and Project Work
Product related to the business of
TIC. TIC Confidential Information does not
include any information (i) which
INSTITUTE knew before TIC disclosed it to
INSTITUTE; (ii) which has become
publicly known through no wrongful act of
INSTITUTE; (iii) which INSTITUTE
developed independently, as evidenced by
appropriate documentation; (iv) which
is disclosed to INSTITUTE by a third party
without restriction of
confidentiality; or (v) the disclosure of
which is required by law.
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1.2 DERIVATIVES: Any or all translation (including translation
into
other human or computer languages),
portation, modification, correction,
addition, extension, upgrade, update,
enhancement, revision, new version,
improvement, compilation, abridgement, or
other form in which the Intellectual
Property Rights may be recast, transformed,
or adapted, including any products,
systems or other items which provide
comparable or enhanced functionality
whether or not specifically based on or
derived from such Intellectual Property
Rights.
1.3 INSTITUTE DOCUMENTATION: Any and all manuals, user guides,
product
specifications and other documentation,
owned by or licensed to INSTITUTE,
relating or referring to the Mapping
Technology.
1.4 INSTITUTE RIGHTS: Any and all Intellectual Property Rights of
the
INSTITUTE in and to the INSTITUTE
mathematical apparatus, formulae, Neuro-net
based software, knowledge database and
know-how related thereto, Copyrights,
INSTITUTE Documentation, INSTITUTE Marks,
INSTITUTE Patents, and Mapping
Technology.
1.5 MAPPING TECHNOLOGY: INSTITUTE's proprietary Neuro-net based
software, including, but not limited to,
all English, Russian and other foreign
language, all commercial and
non-commercial, and all present and future versions
thereof, and all required and/or relevant
INSTITUTE Documentation, Intellectual
Property Rights and other proprietary
rights therein, that is required and/or
relevant to TIC's development of current
and future versions of TIC Services.
1.6 FIELDS OF USE ("FOU"): All commercial markets and
industries
worldwide.
1.7 INTELLECTUAL PROPERTY RIGHTS: Any and all proprietary, common
law,
and/or statutory intellectual property
rights, including but not limited to,
patentable materials and patent rights,
copyrightable materials and copyrights,
moral rights, trade secret rights,
trademark rights, service mark rights, and/or
any and all other proprietary rights,
including all Derivatives.
1.8 PROJECT WORK PRODUCT: Any report, map, layout, matrix,
diagram,
data, analysis, profile modeling,
photograph, image, reproduction, simulation,
forecast, study, interpretation,
assessment, plan, determination, recommendation
or report generated in any way for or
related to a request by or agreement with
TIC or any customer introduced by TIC to
the Institute or by the Institute to
TIC.
1.9 TIC CLIENT: A customer or client of TIC in the FOU and
Territory.
1.10 TIC SERVICES: Any and all natural resource or other matter
identification, mapping, reports,
recommendations for exploration and/or
recovery services that use, integrate,
refer to or contain analysis,
mapping/survey or recommendations for
exploration and/or recovery thereof, made,
distributed, and/or sold by TIC.
1.11 TIC RIGHTS: Any and all Confidential Information and
Intellectual
Property Rights of TIC in and to the TIC
Services, exclusive of the INSTITUTE
Rights.
1.12 TERRITORY:
Worldwide.
1.13 THIRD PARTY RIGHTS: Any and all of the proprietary third
party
patents, copyrights, and trade secrets
licensed to INSTITUTE and included in the
INSTITUTE Intellectual Property Rights
relating or referring to the Mapping
Technology.
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2. GRANT BY INSTITUTE.
Subject to the terms and conditions set forth in this
Agreement,
INSTITUTE hereby grants to TIC during the
Term and in the Territory, and TIC
hereby accepts an exclusive license to use
the INSTITUTE Technology in the FOU.
During the term of this Agreement,
INSTITUTE will not use, or authorize, license
or permit any person other than TIC to use
the INSTITUTE Technology to develop
or offer any mapping or survey services or
products for commercial use or other
similar products or services which would,
in any manner, compete with TIC in the
FOU. TIC is specifically permitted to use,
reproduce, distribute, and prepare
derivative works of the INSTITUTE
Technology, and to sublicense such portion of
its rights to affiliated entities of TIC
that are reasonably anticipated or
calculated to enhance TIC's market value or
to further its business plan,
without further compensation to the
INSTITUTE, provided such entities
acknowledge, in writing, and agree to
comply with, such material provisions
hereof as are designed to protect the
ownership rights of the INSTITUTE, and the
confidentiality of the confidential and/or
proprietary information of the
INSTITUTE. Without limitation, TIC's rights
shall include the rights:
(i) To use the Mapping Technology internally for
testing, demonstration, training, support
and promotional purposes by its
personnel;
(ii) To demonstrate the INSTITUTE Technology to
potential TIC Clients;
(iii) To provide training and technical support to
employees, and TIC Clients;
(iv) To use the INSTITUTE Documentation in support of
TIC Services and/or TIC's authorized use of
Mapping Technology; and
(v) To own the Project Work Product as to any TIC
Services.
3. LIMITATIONS ON TIC.
The foregoing license grants are expressly conditioned upon
TIC's
compliance with the following
requirements:
3.1 TIC acknowledges that the INSTITUTE Rights and INSTITUTE
Confidential Information are proprietary to
INSTITUTE and that INSTITUTE retains
all right, title, and interest therein and
thereto, including without limitation
all Intellectual Property Rights therein
and therefor, and that TIC has no
rights therein other than as set forth in
this Agreement.
3.2 Notwithstanding anything contrary herein, TIC is
specifically
permitted to develop derivative works based
upon the INSTITUTE Technology. Such
derivative works shall be the property of
TIC.
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4. OBLIGATIONS OF THE PARTIES.
4.1 INSTITUTE
OBLIGATIONS. During the Term of this Agreement,
INSTITUTE agrees to:
a. Provide the expertise of sufficient personnel, with
appropriate expertise and competence
("INSTITUTE Key Personnel"), to provide
technical information and support to TIC
Key Personnel in the development, use
and sale of TIC Services. INSTITUTE will
determine the identity of INSTITUTE Key
Personnel. INSTITUTE will also determine
the level of effort of these INSTITUTE
Key Personnel, but it will be reasonable
and sufficient to meet INSTITUTE's
obligations under this Agreement. TIC Key
Personnel must sign appropriate
individual non-disclosure agreements prior
to receiving confidential information
from INSTITUTE. TIC has the right, with
prior written permission from INSTITUTE,
to add individuals to the list of TIC Key
Personnel;
b. Provide relevant Mapping Technology to TIC in accordance
with the terms and conditions of this
Agreement;
c. Provide TIC Key Personnel with access to the relevant
Mapping Technology, including participation
in INSTITUTE's testing of relevant
Mapping Technology;
d. Provide sufficient and appropriate training to TIC
personnel to enable TIC to understand the
developing Mapping Technology
including, but not limited to:
(i) INSTITUTE will provide appropriate training, at
TIC's sole cost and expense, to TIC in the
marketing, use and installation of
the Mapping Technology at INSTITUTE's
Corporate Headquarters;
(ii) At TIC's option, INSTITUTE will provide TIC with
training on INSTITUTE's standard technical
support procedures at TIC's sole
expense;
(iii) INSTITUTE will provide all other reasonable and
necessary training, support and maintenance
to TIC, and TIC shall be responsible
for providing such training, support and
maintenance to TIC at TIC's sole
expense.
e. Refrain from developing, marketing, licensing, selling or
otherwise distributing, directly or
indirectly (including activities through or
in cooperation with any third party), any
language models in the FOU.
4.2 TIC OBLIGATIONS.
During the Term of this Agreement TIC agrees to:
a. Engage in and utilize appropriate marketing and promotional
efforts in the FOU in the manner and
methods to be mutually agreed between the
parties in writing.
b. Make payment to the INSTITUTE, as provided in Section 8.
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5. CONFIDENTIALITY.
a. Each party agrees not to disclose any Confidential Information
of
the other party and to maintain such
Confidential Information in strictest
confidence, to take all reasonable
precautions to prevent its unauthorized
dissemination and to refrain from sharing
any or all of the information with any
third party for any reason whatsoever
except as required by court order, both
during and after the termination of this
Agreement. Without limiting the scope
of this duty, each party agrees to limit
its internal distribution of the
Confidential Information of the other party
only on a "need to know" basis and
solely in connection with the performance
of this Agreement, and to take steps
to ensure that the dissemination is so
limited.
b. Each party agrees not to use the Confidential Information of
the
other party for its own benefit or for the
benefit of anyone other than the
providing party, or other than in
accordance with the terms and conditions of
this Agreement.
c. All TIC Confidential Information remains the property of TIC and
all
INSTITUTE Confidential Information remains
the property of INSTITUTE, and other
than as expressly provided by this
Agreement.
d. Upon written request of the providing party, or upon the
expiration
or other termination of this Agreement for
any reason whatsoever, the receiving
party agrees to return to the providing
party all such provided Confidential
Information, including but not limited to
all copies thereof.
e. TIC agrees to limit access to the INSTITUTE Technology, and
any
tangible embodiments thereof (including
without limitation documentation,
descriptions, notes, memoranda and other
materials defining, describing or
containing the INSTITUTE Technology) shall
be made available only to those
individuals identified as TIC Key
Personnel, and such other employees of TIC
whom INSTITUTE may have approved in writing
and who require access to the
INSTITUTE Technology and such tangible
embodiments in connection with TIC's
activities under the licenses granted
herein. Copies of such INSTITUTE
Technology shall be subject to appropriate
physical and electronic protection to
prevent access by unauthorized
personnel.
f. The provisions of this Section shall survive the expiration or
other
termination of this Agreement.
6. OWNERSHIP, INTELLECTUAL PROPERTY RIGHTS, AND NON-DISCLOSURE.
6.1 INSTITUTE
RIGHTS:
a. INSTITUTE shall retain all rights, title and interest
(including all intellectual property
rights) of the Mapping Technology and
INSTITUTE Documentation, and any copies
thereof.
b. TIC shall not alter or remove any copyright, trade secret,
patent, proprietary and/or other legal
notices contained on or in copies of the
Mapping Technology and INSTITUTE
Documentation. TIC shall reproduce and include
any INSTITUTE trademark, copyright, trade
secret or proprietary information
notices and other legends on every copy, in
whole or in part, of the Mapping
Technology in any form.
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c. TIC shall render to INSTITUTE commercially reasonable
assistance in connection with INSTITUTE's
enforcement of its rights in and to
the Mapping Technology and INSTITUTE
Documentation, including without limitation
using efforts to prevent TIC's customers
and clients from copying or using the
Mapping Technology and INSTITUTE
Documentation outside the scope of this
Agreement.
d. Certain data or portions thereof which may be supplied by
INSTITUTE relating to the Mapping
Technology are confidential and proprietary to
INSTITUTE and will be so marked. TIC shall
abide its obligations under Section
4.2 as applicable to such data.
6.2 TIC RIGHTS: TIC is, and as to INSTITUTE, shall be, the owner of
all
worldwide right, title and interest,
including any and all Intellectual Property
Rights, and Derivatives in and to the TIC
Confidential Information and the TIC
Rights, and owner of the Project Work
Product as to any project for which TIC
retains the services of the INSTITUTE.
7.
TERM.
The license granted under this Agreement shall commence on the
Effective Date set forth above and
terminate at the expiration of thirty years
from such effective date. The Agreement
shall automatically renew for another
thirty year period unless terminated by
either party in writing within ninety
(90) days before the end of the initial
thirty year term unless sooner
terminated in accordance with the
provisions of Section 14 below.
8.
PAYMENTS.
8.1 TIC shall
pay to INSTITUTE an annual license fee of $600,000,
payable on or before December 31 of each
year.
8.2 In addition, TIC shall make the payments to the INSTITUTE
as
provided for in the Services Agreement
between the parties dated as of January
7, 2005. Until such time as TIC has
revenues of at least $10,000,000 in a
calendar year, or such time as the market
capitalization for TIC exceeds
$200,000,000, the minimum services fees per
year of $500,000 shall be credited
against the annual license fee of $600,000.
Notwithstanding the above, in any
calendar year in which TIC has revenues of
less than $6,000,000, the minimum
services fees per year of $500,000 shall be
credited against the annual license
fee of $600,000. Commencing in years after
calendar year 2006, the minimum
services fees pe
