Exhibit
10.1
EXCLUSIVE TECHNOLOGY LICENSE AGREEMENT
This EXCLUSIVE
TECHNOLOGY
LICENSE AGREEMENT is entered into as of
September 18,
2006, by and between Zingerang, Inc., a Nevada corporation
("LICENSEE"), and
Roaming Messenger,
Inc., a Nevada corporation ("LICENSOR").
Each of Licensor
and Licensee may be referred to herein individually as a
"party" or, collectively, as the "parties."
RECITALS
WHEREAS,
Licensor owns
and/or has rights to certain technology
commercially known as
Roaming Messenger(R),
which provides a comprehensive
development and deployment platform for adding secure, interactive,
intelligent
mobile messaging capabilities to any application; and
WHEREAS, Licensee
wishes to obtain
from Licensor, and Licensor is
willing to grant to
Licensee, an
exclusive (including to the exclusion of
licensor),
worldwide license
to commercialize the Roaming Messenger(R)
technology in all current and potential fields of use.
NOW, THEREFORE,
in consideration of the foregoing premises and the
mutual covenants and
promises set forth below, and for other good and
valuable
consideration, the
receipt and sufficiency of which is hereby acknowledged, the
parties agree as follows:
AGREEMENT
1. DEFINITIONS.
In addition to any terms defined above, the italicized and bolded
terms
below shall have the following definitions:
1.1 "ADVANCE"
shall have the meaning
set forth in SECTION 4.1 of this
Agreement.
1.2 "AFFILIATE"
shall mean,
with respect to any Person, any other
Person with regard to which the Person is controlling, controlled or commonly
controlled. For
purposes of the preceding sentence, "control" shall mean the
power to direct the principal business management and activities of a Person,
whether through ownership of voting securities, by agreement, or
otherwise.
1.3 "AGREEMENT" shall mean this Exclusive Technology License
Agreement.
1.4 "BUSINESS"
shall mean the
business of
Licensor relating to the
Roaming Messenger(R)
technology as presently conducted or as contemplated to be
conducted.
1.5 "CHANGE OF
CONTROL" shall mean
(a) a sale to a third party of all
or substantially
all of the assets of a
party; or (b) the
transfer to a third
party of fifty percent
(50%) or more of the
outstanding
voting power of
such
party.
1.6 "CONFIDENTIAL
INFORMATION"
shall mean any
information
or data,
including but not limited to all source code, inventions,
algorithms,
know-how,
ideas, and all other business, technical, and financial information, which a
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party obtains from the other party after the Effective Date, that is marked or
otherwise
identified as
"Confidential"
or that, by its nature or the
circumstances
surrounding its
disclosure,
should reasonably be considered
confidential. The
material terms of this
Agreement shall be considered the
Confidential
Information of each party. All other information or data
disclosed
orally will be deemed Confidential Information only if it is
identified as such
at the time of disclosure and is confirmed to be
Confidential
Information
in
writing no more than seven (7) days after its disclosure.
1.7 "CONTROLLING PARTY" shall have the meaning set forth in Section
7.3
of this Agreement.
1.8 "DERIVATIVE" shall mean computer software or other intellectual
property developed by Licensee, which includes, or is based in
whole or in part
on, the Licensed
Technology, including,
but not limited to,
translations
of
software to other
foreign or computer
languages, adaptation
of the Licensed
Technology to other hardware platforms, abridgments, condensations
or revisions.
1.9 "DISCLOSING PARTY"
shall have the meaning set forth in SECTION 8.1
of this Agreement.
1.10 "DOCUMENTATION"
shall
mean all materials, in any medium,
describing or
providing instruction on the use and/or functionality of the
Licensed Technology.
1.11 "EFFECTIVE DATE" shall mean the date set forth in the
introductory
paragraph of this Agreement.
1.12 "FIELD
OF USE" shall mean any and all commercial and non-
commercial applications of the Licensed Technology.
1.13 "GROSS SALES" shall mean the gross amounts actually collected by
Licensee (including
royalties from
sublicensees)
during the relevant
fiscal
period in connection with the sale of Licensed Products less
returns, allowances
and bad debt.
1.14 "IMPROVEMENT" shall mean any improvement, enhancement,
refinement,
modification or other
new invention or
discovery, whether or
not patentable,
deriving from or otherwise relating to, in whole or in part,
any of the claims
of any of the Licensed Patents or any of the Licensed
Technology.
1.15 "INITIAL TERM" shall have the meaning set forth in SECTION
12.1 of
this Agreement.
1.16 "INTELLECTUAL PROPERTY RIGHTS" or "IPR" shall mean any and all
now
known or hereafter
known tangible and
intangible: (i) rights
associated with
works of authorship throughout the world, including but not limited to
copyrights, moral
rights, and mask
works, (ii) trademark and trade name rights
and similar rights, (iii) trade secret rights, (iv) patents,
designs, algorithms
and other industrial
property rights, (v) all other intellectual, proprietary
and industrial
property rights (of
every kind and nature
throughout the world
and however designated) whether arising by operation of law,
contract, license,
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or otherwise,
and (vi) all registrations, initial applications, renewals,
extensions,
continuations,
divisions or reissues
thereof now or
hereafter in
force (including any rights in any of the foregoing).
1.17 "LICENSED PATENTS" shall mean (a) all patent applications listed
on EXHIBIT A to this
Agreement;
(b) any patents issuing from such patent
applications; and (c)
any patents or patent
applications
claiming a right
of
priority thereto
(in each such case of
(a), (b) and (c)
including reissues,
reexaminations,
renewals, extensions,
divisionals,
continuations,
continued
prosecution applications, continuations-in-part and foreign
counterparts of any
of the foregoing).
1.18 "LICENSED PRODUCT" shall mean any product, device, system,
article
of manufacture,
composition of matter or service, within the Field of Use, that
is covered by, or is
made by a process
covered by, any claim
of the Licensed
Patents or that utilizes the Licensed Technology in material
part.
1.19 "LICENSED SOFTWARE" shall mean any computer software
component(s)
of the Licensed Technology.
1.20 "LICENSED TECHNOLOGY" means any proprietary information,
software
(in Object Code and
Source Code), know-how, processes, methods, formulas,
systems, designs,
prototypes and materials, existing as of the Effective
Date,
that comprise
or relate to the Roaming Messenger(R) technology, including
without limitation the technology specifically listed on EXHIBIT B hereto,
and
all IPR therein
that is not
otherwise covered by the Licensed Patents or
Trademarks.
1.21 "OBJECT
CODE" shall mean the
machine-readable
form of computer
programming code that results from compiling the Source Code.
1.22 "PERSON"
shall mean any
individual,
corporation,
association,
partnership (general
or limited), joint
venture, trust,
joint-stock
company,
estate, limited
liability company,
unincorporated
organization or other legal
entity or organization.
1.23 "RECEIVING PARTY"
shall have the meaning set forth in SECTION 8.1
of this Agreement.
1.24 "RENEWAL TERM" shall have the meaning set forth in SECTION
12.1 of
this Agreement.
1.25 "ROYALTIES"
shall have the
meaning set forth in SECTION 4.2 of
this Agreement.
1.26 "ROYALTY REPORT"
shall mean a written
report stating, for the
calendar quarter covered by such report, the Gross Sales in respect of the
sale
of Licensed Products,
separately
stated for Licensee
and any sublicensee
of
Licensee that sold Licensed Products during such month.
1.27 "SOURCE
CODE" shall mean the human-readable form of computer
programming code that
can be modified,
compiled, and executed
and all related
documentation for such code.
1.28 "TERM" shall have
the meaning set forth
in SECTION 12.1 of
this
Agreement.
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1.29 "TRADEMARKS" shall mean the trademarks and service marks
listed on
EXHIBIT C hereto.
2. GRANTS OF LICENSE.
2.1 EXCLUSIVE LICENSE
TO PATENTS. Subject to
the terms and conditions
set forth in this
Agreement, Licensor
hereby grants to Licensee an
exclusive
(including to
the exclusion of Licensor), worldwide, sub-licensable,
transferable,
royalty-bearing right
and license under the Licensed Patents to
make, have made, import, use, offer for sale and sell Licensed
Products.
2.2 EXCUSIVE LICENSE TO TECHNOLOGY. Subject to the terms and
conditions
set forth in this
Agreement, Licensor
hereby grants to Licensee an
exclusive
(including to
the exclusion of Licensor), worldwide, sub-licensable,
transferable,
royalty-bearing right
and license to use the Licensed Technology
to make, have made, import, use, offer for sale, sell,
reproduce,
distribute,
display, perform or otherwise exploit the Licensed Products,
including the right
to create Derivatives.
2.3 EXCLUSIVE
LICENSE TO TRADEMARKS. Subject to the terms and
conditions set forth in this Agreement, Licensor hereby grants to Licensee an
exclusive (including to the exclusion of Licensor), worldwide, sub-licensable,
transferable,
royalty-bearing right
and license to use the Trademarks in
connection with any of the rights granted in SECTIONS 2.1 AND 2.2
above.
2.4 SUBLICENSES.
Licensee has the right hereunder to grant sublicenses
to third parties,
provided that sublicensees shall not have the right to
grant
further sublicenses,
and the sublicenses may be of no greater scope or
terms
than the licenses under SECTIONS 2.1-2.3 above. Licensee shall furnish
Licensor
within thirty (30)
days of the execution
thereof a true and
complete copy of
each sublicense and any changes or additions thereto. Any
sublicenses granted by
Licensee shall survive
termination
of the licenses
granted to Licensee
under
SECTIONS 2.1-2.3 of this Agreement, provided that the following
conditions are
met as of the date
of such termination: (a) the written agreement between
Licensee and
sublicensee
pursuant to which the sublicense was granted (i)
obligates the
sublicensee
to thereafter render to Licensor all sublicense
royalties or other
sublicense-related
consideration that the sublicensee would
have owed to Licensee under the sublicense, (ii) names Licensor as
a third party
beneficiary, (iii)
affirms that Licensee shall remain responsible for all
obligations to sublicensee, unless Licensor (at its discretion)
elects to assume
such obligations; and (iv) the sublicensee under the sublicense
agreement is not
directly or
indirectly
an Affiliate of the Licensee at the time of the
termination of this
Agreement or for a period of three
(3) years after the
termination of this Agreement, and if the sublicensee is or becomes
an Affiliate
of Licensee during
such time, then the Licensor will have the right in its sole
discretion to terminate the sublicense agreement; and (b) Licensee informs the
sublicensee in
writing (with a copy to Licensor) that the sublicensee's
obligations pursuant
to subsection (a) are in effect as a result of the
termination.
2.5 MARKING AND COMPLIANCE WITH LAW. Licensee shall mark the
Licensed
Products and related documents with all applicable patent numbers,
in accordance
with Licensor's
reasonable
instructions
and as required by the
patent laws;
provided, however,
that Licensee may make any such reasonable changes in
markings so as to minimize interference with manufacturing or
commercialization
of the Licensed Products.
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3. DISCLOSURE AND DELIVERY.
3.1 LICENSED PATENTS.
As soon as practicable after the Effective Date,
but in no event later than September 15, 2006, Licensor shall disclose and
deliver to Licensee
copies of all patent
applications and/or
issued patents
within the Licensed Patents, including all patent office
correspondence related
thereto.
3.2 TANGIBLE
EMBODIMENTS. As soon
as practicable after
the Effective
Date, but in no event later than September 15, 2006, Licensor shall
disclose and
deliver to Licensee any tangible embodiments (existing as of the
Effective Date)
of: (a) the inventions
covered by the
Licensed Patents;
and (b) the
Licensed
Technology. Such
disclosure
and delivery may be
provided in writing,
orally,
and/or in other
tangible or intangible
form, as appropriate to the subject
matter thereof, and
shall include without
limitation the Licensed Software (in
Object Code and Source Code) and all Documentation.
4. ROYALTIES.
4.1 ADVANCE. Upon
mutual execution of
this Agreement,
Licensee shall
pay to Licensor a one-time payment of One Hundred Thousand Dollars
($100,000) as
a recoupable advance against Royalties (the "ADVANCE").
4.2 ROYALTIES.
For each calendar
quarter during the Term, Licensee
shall pay to Licensor an amount equal to Five Percent (5%) of Gross Sales
(the
"ROYALTIES") for such period.
4.3 PAYMENT.
Within thirty (30) days after the end of
each calendar
quarter, Licensee
shall remit to
Licensor the Royalties
due for the preceding
calendar quarter
and provide to
Licensor a Royalty
Report for said
quarter;
provided, however,
that no payment
shall be remitted
under this
SECTION 4.3
until the amounts due hereunder cumulatively exceed the amount of
the Advance.
4.4 OPTIONAL ONE-TIME
FEE. At any time during the Term, Licensee may,
at its sole
and absolute discretion, pay to Licensor, in lieu of ongoing
Royalties, a
one-time payment in an amount equal to Five Hundred Thousand
Dollars ($500,000
USD) less amounts, not to exceed Fifty Thousand Dollars
($50,000 USD), in legal and filing fees incurred by Licensee in
connection with
the continual
prosecution of the three (3) patent applications in Exhibit A of
this Agreement,
which payment shall render the licenses
granted under this
Agreement fully-paid-up and without any further payment obligation.
In the event
that Licensee
exercises the option
set forth in this SECTION 4.4 and pays said
amount, then (i) the
license grants set forth in SECTIONS 2.1 AND 2.2 above
shall be fully-paid and non-executory, (ii) the Term shall become
perpetual, and
(iii) in the event of Licensor's bankruptcy or insolvency,
Licensee shall
have
all rights under Section 365(n) of the U.S. Bankruptcy Code.
4.5 AUDIT. Licensee
shall maintain accurate and complete books and
records with
respect to the production and distribution of the Licensed
Products, and it shall retain such information for three (3) years
following the
termination or
expiration of this
Agreement.
Copies of Licensee's
books and
records shall be maintained at Licensee's principal place of
business. Licensor,
or an independent
certified public accountant acting on its behalf, may, upon
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reasonable notice to
Licensee and at a
mutually convenient
time, conduct an
annual audit of Licensee's books and records necessary to confirm the
accuracy
of Licensee's Royalty Reports. All audits of Licensee's books and
records shall
be conducted at
Licensor's expense,
provided that if the audit discloses an
underpayment by
Licensee of Ten Percent (10%) or more, Licensee shall bear the
cost of the audit,
including, without
limitation, reasonable
accountants' and
attorneys' fees.
4.6 TAXES. Licensee
may withhold from
payments hereunder all taxes,
duties or levies the
withholding of which
may from time to time be required by
law or regulation
regarding any payments
under this Agreement;
Licensee will
provide available documentation thereof to Licensor.
5. OWNERSHIP.
5.1 LICENSOR. Subject to the rights granted to Licensee in SECTION
2 of
this Agreement,
Licensor shall continue to own all right, title and interest in
the Licensed Patents, Licensed Technology and Trademarks.
5.2 LICENSEE. Subject
to Licensor's rights in the Licensed Patents and
Licensed Technology,
Licensee shall own all right, title and interest in
Derivatives and Improvements, including without limitation all IPR
therein.
6. PROSECUTION OF PATENT APPLICATIONS.
As of the Effective Date, Licensee shall assume, at its own expense
and
in Licensor's name, responsibility for the prosecution and/or
maintenance of the
Licensed Patents.
Licensor agrees to fully cooperate with
Licensee in filing,
prosecuting, and
maintaining
the Licensed
Patents, and Licensor agrees to
execute any documents that may be necessary for
