Exhibit
10.20
-------------
TECHNOLOGY TRANSFER AND ASSIGNMENT AGREEMENT
AND MUTUAL RELEASE
THIS TECHNOLOGY
TRANSFER AND
ASSIGNMENT AGREEMENT
AND MUTUAL RELEASE
("Agreement") is made effective as of the 10th day of October, 2006
by and among
VIDEOLOCITY
INTERNATIONAL, INC.
("Assignee"),
Robert Holt
("Holt"), Daniel
Osorio ("Osorio"),
and E. Oliver Capital
Group, LLC ("EOCG"),
EOCG Media, LLC
("EOCG Media"),
EOCG Media Ltd.
("EOCG Media Ltd"), and Gilbert R. Armenta
("Armenta"). EOCG,
EOCG Media,
EOCG Media Ltd and
Armenta, together with
any
affiliate thereof,
individually, an
"Assignor" and, collectively, and jointly
and severally,
"Assignors"). All of
the foregoing parties may also be referred
to herein collectively as the "Parties."
RECITALS
A. Each of Assignee,
EOCG and EOCG Media previously entered into that
certain Sale and Joint Venture Agreement (the "Sale
Agreement");
B. Each of Assignee
and EOCG previously entered into that certain
Limited Liability Company Operating Agreement of EOCG Media, LLC
(the "Operating
Agreement");
C. Pursuant to the Sale Agreement and the Operating Agreement,
Assignee
agreed to contribute
the Intellectual Property Technology (as that term is
defined below) to EOCG Media, and/or certain of its affiliates,
in exchange for
certain monies to be
paid and obligations
to be performed by EOCG Media to
Assignee and for certain other monies to be paid and obligations to
be performed
by EOCG to EOCG Media in connection with the operation and
deployment related to
Intellectual Property
Technology (such transactions as contemplated by the Sale
Agreement, Operating
Agreement and Transfer Agreements (as such term is defined
below) are referred to herein as the "JV Transaction");
D. In connection with the JV Transaction, Assignee, EOCG, EOCG Media,
and/or EOCG Media Ltd,
variously entered
into certain
agreements,
including
without limitation
that certain
Assignment regarding
U.S. patent
application
File No. 1051.2.1 by and between Assignee and EOCG Media, that certain
Assignment regarding
European patent
application File No.
1051.2.1EPO by and
between Assignee and EOCG Media Ltd, that certain Assignment of
Videolocity U.S.
Trademark by and between Assignee and EOCG Media, that certain
Assignment of DES
Canadian Trademark
by and between
Assignee and EOCG Media Ltd, that certain
Assignment of DES U.S.
Trademark by and between Assignee and EOCG Media,
that
certain Assignment of
Videolocity
(and Design) U.S.
Trademark by and
between
Assignee and EOCG
Media, that certain Assignment of Videolocity Canadian
Trademark by and between Assignee and EOCG Media Ltd, that certain
Assignment of
Videolocity European
Trademark by and between Assignee and EOCG Media Ltd, that
certain Assignment of
Videolocity Japan
Trademark by and between Assignee and
EOCG Media Ltd, and that certain Assignment of Videolocity TV U.S.
Trademark by
and between Assignee
and EOCG Media (such
agreements
together with the Sale
Agreement and
Operating Agreement and any other
documents,
instruments
and
agreements, written or
oral, relating to the
transfer, sale, assignment or
conveyance of the
Intellectual
Property Technology and the JV Transaction,
collectively, the "Transfer Agreements");
<PAGE>
E. Armenta was at the time of the JV Transaction, and remains so as of
the date hereof, the Manager of EOCG Media and the president and
chief executive
officer of EOCG and Holt was at the time of the JV Transaction, and remains so
as of the date hereof, the president and chief executive officer of
Assignee;
F. The Parties are in disagreement as to whether various of the
Parties
and/or their employees
and officers are in
compliance with their
obligations
under the Transfer Agreements or otherwise to various of the
Parties; and
G. The parties now desire to enter into this Agreement to transfer and
reassign all of
Assignors'
right, title and interest in the Intellectual
Property Technology to Assignee with certain grant backs as
provided below, and,
considering the
complexity of the
issues involved with
respect to the matters
related to the JV Transaction and the Transfer Agreements, the parties hereto
wish to avoid the burdens, expense, and uncertainties of potential
litigation
and to compromise, settle, and resolve any and all claims or causes
of action as
between and among themselves as provided in this Agreement without
any admission
of liability by any party to any other person or entity.
NOW, THEREFORE, in consideration of the mutual promises, covenants,
and
agreements set forth
herein, and other good and valuable
consideration,
the
receipt and
sufficiency of which
are hereby
acknowledged, the
parties agree,
represent, warrant, and covenant as follows:
1. TRANSFER OF
ASSETS.
-------------------
1.1
The Intellectual Property Technology. The Intellectual Property
Technology which
is the subject of this Agreement shall include all of
Assignors' right,
title and interest in any and all technology and intellectual
property transferred
by, or acquired from,
Assignee, and/or its affiliates,
directors, officers,
employees,
agents, or representatives, in any manner
whatsoever, including
pursuant to the
Transfer Agreements or
otherwise,
and
including without limitation all copyrights, trade secrets,
patents, trademarks,
moral rights, confidential information, proprietary information or
property, and
further including without limitation Videolocity's Digital
Entertainment System
(DESTM) and related
services, trade
secrets, patents, copyrights and other
intellectual property rights, including High Speed Internet Access
together with
digital streaming video technology, and Videolocity's license agreements and
agreements for Video-On Demand programming for the DESTM, including digital
movie titles,
other content and entertainment (including music and gaming
content), and
including without
limitation
any derivative
works therefrom,
improvements thereon or inventions related thereto, or based
thereon or claiming
priority therefrom, in any manner or form, and including the
goodwill associated
in any manner therewith, and including any notes,
documents,
reports or other
materials that contain
all or any portion of the above-described items in any
form or media (collectively, the "Intellectual Property
Technology").
1.2
Transfer. Subject to
the terms and
conditions herein,
each Assignor
hereby jointly and severally transfers, sells, assigns and conveys to
Assignee,
free and clear of any lien, pledge, hypothecation, encumbrance,
claim, charge or
-2-
<PAGE>
security interest of
any kind or nature,
all of each Assignor's
entire right,
title and interest in, to and under the Intellectual Property Technology,
including without limitation the goodwill associated therewith.
1.3
Disclaimer
of Interest in Intellectual Property Technology. Each
Assignor on his or its
own behalf
and on behalf of each
of his or its
heirs,
successors and assigns hereby jointly and severally relinquishes all rights in,
to and under the
Intellectual Property
Technology
and disclaims any
interest
therein, including without limitation any ownership, title,
license, sublicense,
lease, or other
right in, to or under the Intellectual Property Technology
except as provided herein. None of Assignee, Holt, Osorio or Assignors shall,
and do not hereby,
assume or otherwise become responsible for any
liabilities,
obligations or
expenses of the other relating to the other party's use or
ownership of the
Intellectual Property
Technology
during that other
party's
respective ownership periods.
1.4
Closing. The closing of the transactions contemplated in this
Agreement
(the "Closing")
shall occur on October 10, 2006, or such later date as the
parties mutually agree (the "Closing Date").
2.
CONSIDERATION. In
consideration for the agreements contained herein, the
Parties hereby agree to the following:
2.1
Payment. Assignee
shall pay to Assignors
One Hundred Fifty
Thousand
United States Dollars (US$150,000) at Closing in immediately
available funds by
wire transfer to EOCG's account set forth on Schedule 2.1 hereto.
If such funds
are not received in
EOCG's account
set forth on Schedule
2.1 by the close
of
business on the Closing Date, this Agreement shall be deemed void
ab initio.
2.2
Exclusive License. Assignee hereby grants to Assignors an
Exclusive
license within the Exclusive License Territories of: Anguilla,
Antigua, Aruba,
Cayman Islands,
Dominican Republic,
Netherlands Antilles,
St. Martin (French
Side), St. Barthelemy,
St. Kitts and Nevis, and Trinidad and Tobago; provided,
however, that the
Exclusive License
shall be for a term of five (5) years from
the date hereof
and provided further, however, that, with respect to an
Exclusive Licensed
Territory in which
Assignor does not secure an agreement to
provide the Intellectual Property Technology to an end-user within
the Exclusive
Licensed Territory,
the term of the Exclusive License for that Exclusive
Licensed Territory Assignee shall terminate two (2) years from the
date hereof.
2.2.1 In the event (i) Assignee is entering into an agreement
to provide the Intellectual Property Technology to an end-user
outside
the Exclusive
License Territories and (ii) such end-user has the
ability to require an affiliated end-user within the Exclusive
Licensed
Territories to
utilize the same Intellectual Property Technology
product, Assignee
shall so notify
Assignors in which event Assignors
shall have sixty (60)
days in which to enter
into an agreement
with
such affiliated end-user within the Exclusive Licensed Territories for
provision of the Intellectual Property Technology product. If
Assignors
are unable to complete
an agreement with such affiliated end-user
within the Exclusive Licensed Territories, then Assignee shall have
the
right to do so.
-3-
<PAGE>
2.3
Nonexclusive License.
Assignee hereby grants
to Assignors a worldwide
nonexclusive license
in, to and under the
Intellectual
Property Technology,
subordinate to the
Exclusive License
granted herein in certain territories,
until the date the rights in the last of the Intellectual Property Technology
subject to this Agreement expire.
2.4
Royalty. In the event
that an Assignor uses a Videolocity product that
is covered by the Intellectual Property Technology licensed hereunder, such
Assignor agrees to pay Assignee a royalty calculated on a per unit, lump sum
or
other mutually
agreeable basis at a mutually agreed upon royalty rate not
to
exceed the then-usual
and customary
per
