Attached files
| file | filename |
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| 8-K - NEOMEDIA TECHNOLOGIES INC | v162710_8-k.htm |
| EX-99.1 - NEOMEDIA TECHNOLOGIES INC | v162710_ex99-1.htm |
EXHIBIT
10.1
AGREEMENT
This
License and Support Services Agreement (“Agreement”), effective as of October 7,
2009 (“the Effective Date”), is entered into between NeoMedia Technologies,
Inc., a Delaware (United States of America) corporation having a principal place
of business at Two Concourse Parkway, Suite 500, Atlanta, Georgia 30328
(“NeoMedia”); and Brand Extension Mobile Solutions, S.A., a Madrid (Spain)
corporation having a principal place of business at calle Guzmán el Bueno, No.
133, Madrid, Spain (“BEMS”; together, “The Parties,” or individually,
“Party”).
WHEREAS
BEMS is a company validly organized in Madrid, Spain, which engages mainly in
the provision of technological and market solutions to its customers, designing,
implementing and managing the extension of their trademarks to cellular phones
and technological environments in general, and is a mobile marketing service
provider, with key business interests in Southern Europe and South
America;
WHEREAS,
NeoMedia is a company validly organized in Delaware, United States, which
engages, among other activities, in the provision of mobile barcode platforms,
including technical bi-dimensional code recognition solutions, and is a leading
company in the industry worldwide;
WHEREAS,
BEMS has made a cooperation agreement with Telefónica Internacional, S.A.U
(hereinafter, “Telefónica”), for the exclusive commercial operation in Latin
America for the practice applications and business opportunities arising from
the use of technical bi-dimensional code platforms (hereinafter, for the
purposes hereof, the “Technology”);
WHEREAS,
for BEMS’ operation of the Technology in association with NeoMedia’s Platform,
it is necessary for NeoMedia to grant BEMS a platform license;
WHEREAS,
BEMS intends for such purpose to use as its prime vendor, a technology provider
with renowned experience, technical good standing, and an owner of mobile
barcode platforms capable of providing the support services required by
BEMS;
WHEREAS,
NeoMedia is a technology provider and the leading mobile barcode platform
vendor, with intellectual property and technology assets covering barcode
reading, management and scanning that meet BEMS requirements;
WHEREAS
the Parties desire to enter into an agreement whereby, NeoMedia grants to BEMS a
platform license, and provide the NeoMedia mobile barcode platform and related
products for mobile barcode reading and BEMS becomes a NeoMedia distribution and
sales channel; and
WHEREAS
The parties desire to enter into Purchase Order through which NeoMedia will sell
to BEMS certain hardware products to support barcode and mobile barcode based
ticketing and couponing activities in support of BEMS’
customers;
NOW,
THEREFORE, in accordance with the foregoing and in consideration of the terms
and conditions contained herein, NeoMedia and BEMS agree as
follows:
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1.
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Definitions.
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1.1.
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“Licensed
Platform” shall be set forth in Exhibit A
hereto.
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1.2.
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“Field
of Use” shall be set forth in Exhibit B
hereto.
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1.3.
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“Royalty-Based
Revenue” shall be set forth in Exhibit D
hereto.
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1.4.
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“Territory”
shall mean those countries identified in Exhibit C hereto, which may be
amended in writing from time to time by mutual agreement of the
Parties.
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2.
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License Granted and
Services Provided.
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2.1.
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Subject
to the terms and conditions of this Agreement, and for the consideration
recited herein, NeoMedia grants to BEMS the right to use in the Territory
the Licensed Platform owned by NeoMedia as set forth in Exhibit B hereto
(“License”). The License is granted on a non-exclusive basis in
the Territory. The License further grants BEMS the right to
distribute NeoMedia’s NeoReader (1) by download to the mobile terminal of
the user through the BEMS web site, and/or the web site of third parties
with which BEMS may have reached an agreement to such effect; and (2)
through the inclusion by the manufacturers of the NeoMedia NeoReader in
the mobile terminals. NeoMedia undertakes to cooperate with
BEMS to establish such channels for the distribution of its
NeoReader. For such purpose, NeoMedia shall carry out tasks of
technical assistance that may be necessary to set up the platform for
NeoReader downloads in the web site of BEMS and/or third parties; and for
the manufacturers to include said software in the mobile terminals as set
forth in Exhibit E hereto. In this respect, NeoMedia undertakes to
cooperate with the manufacturers of the terminals on identical terms,
however, NeoMedia reserves the right to charge the handset manufacturer,
on a time and materials basis, for porting, testing, and
customization. BEMS may also distribute the NeoReader through
channels other than those described above, in which NeoMedia shall
cooperate with BEMS on similar terms as those described herein. However,
no rights are extended to BEMS, or any customers or others claiming rights
through BEMS, for products or activities outside of the
Territory.
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2.2.
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Subject
to the terms and conditions of this Agreement, and for the consideration
recited herein, NeoMedia shall provide to BEMS the support, maintenance,
upgrade and update services (hereinafter, the “Support Services”)
described in Exhibit F hereto. The Support Services may be
provided to BEMS or to BEMS’
customers.
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2.3.
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Subject
to the terms and conditions of this Agreement, and for the consideration
recited herein, NeoMedia grants to BEMS the right to grant a limited
sublicense to limited portions of NeoMedia’s intellectual property to any
company set forth in Exhibit H hereto, which may be amended in writing by
NeoMedia from time to time, strictly in the Territory, which sublicense
will be under the terms and conditions of this Agreement, and to the
extent that the particular sublicensee acknowledges in writing that it is
using NeoMedia’s intellectual property, with any revenue under such
sublicense being included in Royalty Based Revenue. The specific portions
of NeoMedia’s intellectual property to be sublicensed by BEMS and other
restrictions on the sublicense will be determined at the time such
sublicense may be granted and shall be determined solely at the discretion
and under the terms established by
NeoMedia.
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2.4.
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Subject
to the terms and conditions of this Agreement, and for the consideration
recited herein, NeoMedia will provide a platform as an ASP service in line
with the Service Level Agreement requirements set forth in Exhibit G
hereto, and will make available BEMS Client branded versions of the
Neoreader client and download site, and work with BEMS’ Clients’ to port
and optimize the reader if requested and to the extent described in
Exhibit E hereto. As described herein, NeoMedia shall provide
hardware scanning units in support of ticketing solution
sales.
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3.
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Consideration.
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Consideration
shall be set forth in Exhibit D hereto.
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4.
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Term.
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The term
of this Agreement shall be an initial four (4) years, with automatic extensions
of one (1) year if BEMS is compliant and up to date with all provisions of the
Agreement including Minimum Annual Payment, which are continuing, and any
royalty payment, as determined by NeoMedia in its sole discretion.
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5.
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Confidentiality.
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For the
purposes of this clause, Confidential Information shall be deemed to mean all
that information and/or documentation of BEMS and NeoMedia which, due to its
commercial, technical, financial, accounting, organizational or strategic nature
or of any other type is not in the public domain, whether in extract form or in
full, and whether communicated in writing, verbally, electronically or through
any other medium and/or procedure.
Having
established the foregoing, pursuant to this clause the said parties shall be
under an express obligation to maintain complete confidentiality and secrecy
regarding any Confidential Information which they are aware of or have become
aware of by reason of this Agreement and its preparation, and the provisions
hereof shall extend to all of their personnel and, as the case may be, to any
third party authorized by the parties in accordance with the provisions of the
following paragraphs.
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Except
where such disclosures are required by law or the Parties have given consent in
writing, the “recipient party” or “recipient” of the Confidential Information
undertakes:
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5.1.
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To
maintain it secret, this obligation including any unauthorized disclosure
or use of the Confidential Information, whether actively (delivery of the
Confidential Information to an unauthorized third party or employee), or
passively (providing the unauthorized third party or employee with access
to the Confidential Information in such manner that the same may become
aware thereof).
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5.2.
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To
use it solely and strictly in relation to the purpose for which the
Confidential Information is delivered thereto, and the same may not use it
for any purpose other than compliance and performance of this Agreement.
In this respect, the recipient of the Confidential Information undertakes,
in respect thereof, not to transfer and/or assign it to third parties not
covered by the contractual relationship, even for its
preservation.
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5.3.
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To
restrict access to Confidential Information solely to those employees of
its company which need to be aware thereof by reason of implementing this
Agreement, its preparation and performance and/or, as the case may be,
those third parties who have been previously and expressly authorized by
the recipient party of the Confidential
Information.
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5.4.
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To
take all measures necessary to prevent the Confidential Information
becoming known to unauthorized employees or third parties. The recipient
shall in this manner protect the Confidential Information of the other
party using the same means of protection which it uses to protect its own
Confidential Information.
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5.5.
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To
take the necessary measures which ensure compliance by authorized
employees and/or third parties with all obligations assumed pursuant to
this clause. In this respect, the recipient of the Confidential
Information undertakes to enter into as many agreements as may be
necessary with its authorized employees and/or third parties for the
purpose of extending all terms and conditions established in this clause
to them.
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5.6.
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Not
to make any copy or reproduction of Confidential Information supplied
pursuant to this Agreement in any format or medium, unless the same is
essential for implementation
hereof.
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5.7.
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To
inform the other party as soon as it becomes aware thereof of any illegal,
improper or unauthorized use of or access to Confidential
Information.
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5.8.
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In
the event that any of the parties is required by a judicial or
administrative authority to disclose Confidential Information of the other
party, it shall previously inform the latter thereof and restrict the
disclosure as far as the requirement
allows.
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5.9.
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Nothing
in this paragraph shall be construed to preclude or prohibit the Parties
from being able to publicly acknowledge that they have entered into this
license agreement, so long as the terms of this Agreement are not
disclosed other than as specifically and expressly permitted herein.
Furthermore, within the context of the foregoing, the parties will
cooperate to create and jointly issue a mutually agreed upon a press
release and to publicly release similar public disclosures about the
agreement, including the relationship of this agreement to BEMS’s
agreement to Telefónica, not later than three (3) business days after the
full execution of this agreement.
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5.10.
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During
the term of this Agreement, neither BEMS or any person under its control
or related party shall provide any assistance or guidance regarding the
alleged non-infringement, invalidity, or unenforceability of any of the
intellectual property covered by this Agreement to any third party who is
challenging or may challenge the scope, validity or enforceability of the
same in any proceeding, including in court, arbitration, or before a
patent office, except as required by law or judicial
process.
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6.
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Marking/Proprietary
Rights Notices.
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BEMS
agrees to mark any relevant products with the proper NeoMedia patent numbers in
accordance with the United States Patent Laws and the laws of the particular
country in which the products are being used.
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7.
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Early
Termination.
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7.1.
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Either
of the parties may terminate this Agreement in the event of serious and
material breach by the other party of its obligations under this
Agreement. To such effect, serious and material breach shall include but
not be limited to, failure by NeoMedia to meeting its commitments under
this Agreement and its schedules and failure by BEMS to pay the sums and
royalties stipulated in section three (3) of the Agreement shall be deemed
an event of serious and material
breach.
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7.2.
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The
non-breaching party shall serve notice in writing on the breaching party
for the breaching party, within thirty (30) days after such notice, to
remedy the breach or, as the case may be, offer an alternative to the
satisfaction of the non-breaching
party.
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7.3.
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Failure
to remedy or implement the alternative accepted by the non-breaching party
within said term shall enable the non-breaching party either to demand
performance or to request the termination of this Agreement, with
indemnification for any loss and damage in either
event.
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7.4.
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The
inter-operability of NeoMedia NeoReader with the mobile network operators
existing in the market is an essential aspect of this Agreement. In this
regard, the breach of this condition by NeoMedia shall entitle BEMS to
terminate this Agreement.
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7.5.
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Upon
BEMS’ petition for relief under any bankruptcy, dissolution or similar
legislation for protection from creditors; or upon BEMS’ cessation of
doing business; or upon any other material breach of this Agreement by
BEMS shall entitle NeoMedia to terminate this
agreement
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7.6.
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This
agreement between NeoMedia and BEMS shall not terminate even though any or
all agreements between BEMS and Telefónica may
terminate.
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7.7.
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Without
prejudice to any other effects under this Agreement or under law, upon the
termination of this Agreement on any grounds, each party shall return at
the request of the other party any Confidential Information furnished
(within the meaning of section five (5) of this Agreement), including any
copies or reproductions that may have been made. In addition, at the
request of the other party, the recipient of the Confidential Information
shall eliminate or erase any Confidential Information that may have been
stored in media that cannot be returned, including, but mot limited to,
the Confidential Information stored on hard disks of the computer
equipment of the recipient.
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8.
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Warranty of
Proprietary Rights.
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8.1.
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NeoMedia
warrants and represents to BEMS that it is the lawful proprietor of all
the intellectual and industrial property rights over the Licensed Platform
and its components. In such respect, NeoMedia represents and warrants that
to the best of its knowledge the Licensed Platform does not infringe any
third-party right that could impede or restrict in any manner whatsoever
its use by BEMS as stipulated
herein.
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8.2.
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NeoMedia
undertakes to hold BEMS harmless from any claim that may be brought by any
third party for a breach by BEMS of the warranties contemplated in the
above paragraph. Accordingly, in such event, NeoMedia accepts to pay the
amount of any penalty, indemnification, damage, loss, etc., that may be
ordered against BEMS due to such breach, and any other expense that BEMS
may incur, including fees for legal defense. Such amounts shall
be enforceable against NeoMedia as from when they are paid by BEMS to any
third party.
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8.3.
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Without
prejudice to the Support Services that NeoMedia is obligated to provide
hereunder, NeoMedia warrants and represents to NeoMedia that the Licensed
Platform meets all the technical requirements set forth in Exhibit E
attached hereto, and its operation conforms accurately to the
specifications of said Exhibit E.
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8.4.
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For
such purpose, NeoMedia undertakes to hold BEMS harmless from any claims
brought by final users for the malfunction of the Licensed Platform,
and/or originating from eventual damage caused by the Licensed Platform to
the devices of the final users, exclusive of any loss of profit,
consequential, incidental or other damages which may be
alleged. Accordingly, in such event, NeoMedia accepts to pay
the amount of the penalty, indemnification, loss, damage etc. that may be
ordered against BEMS due to such damage to the devices, and any other
expense that BEMS may incur, including fees for legal defense. Such
amounts shall be enforceable against NeoMedia as from when they are paid
by BEMS to any third party.
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9.
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Governing
Law.
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This
Agreement shall be governed by and construed under the laws of
Spain.
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9.1.
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The
Parties agree to follow the procedure set forth below to resolve any
dispute (other than patent infringement, patent validity, patent
enforceability, or any other issue concerning a substantive patent right),
by arbitration administered by a mutually agreed-upon arbitral entity, or
in the event of no such agreement, by the American Arbitration Association
(“AAA”) in accordance with its Commercial Rules and other applicable rules
and procedures set forth by the AAA. The place of arbitration
shall be Atlanta, GA.
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9.2.
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The
procedures described herein shall be followed if senior management of both
Parties is unable to resolve the dispute within thirty (30) days after a
dispute is identified to the other Party. There shall be no
arbitration until the thirty (30) day discussion period has
elapsed.
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9.3.
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The
arbitrator(s) may award damages, an injunction, or both to the prevailing
party.
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9.4.
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The
decision of the arbitrator(s) shall be final and binding on all Parties,
and judgment on the award of the arbitration panel may be entered by any
Court having jurisdiction. There shall be no
appeal.
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9.5.
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Any
costs or expenses, including reasonable attorneys’ fees, incurred by the
successful party arising out of the arbitration will be assessed against
the unsuccessful party, borne equally, or assessed in any manner within
the discretion of the
arbitrator(s).
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9.6.
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The
arbitrator(s) may also award interest at a rate not to exceed the Prime
Rate (which exists on the day of the award) from the date of the award
until paid. Unless decided differently by the arbitrator(s),
each Party shall pay one-half (1/2) the fees, costs and expenses charged
by the arbitrator(s).
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10.
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Transferability.
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The
license set forth above is personal and non-transferable, except that BEMS may
transfer its respective rights granted in this Agreement to a successor or
merged entity that acquires substantially all the applicable business of BEMS,
subject to written consent by NeoMedia, which consent shall not be
unreasonably withheld. The successor or merged entity must
agree to abide by all obligations in the Agreement. In the event that
BEMS proposes to so transfer its assets or to be acquired by another entity,
BEMS shall inform NeoMedia in advance of the transfer, and NeoMedia shall have a
reasonable time not less than thirty (30) days to make a decision as to whether
to provide or withhold consent to continue this agreement. NeoMedia
may freely assign this Agreement or its rights hereunder.
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11.
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Counterparts.
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This
Agreement may be executed in any number of separate counterparts, each of which
shall be deemed an original, but all of which, when taken together, shall
constitute one and the same instrument. This Agreement will become
binding and effective upon the exchange of facsimile or other electronic copies
of the required signatures and such facsimile copies shall be binding and
effective until the signed originals are in the possession of each
Party.
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12.
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Further
Assurances.
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12.1.
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The
Parties agree to execute and deliver any additional papers, documents or
other assurances, and take all acts that are reasonably necessary to carry
out the intent of this Agreement.
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12.2.
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Nothing
in this Agreement is or shall be construed
as:
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12.2.1.
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An
obligation to bring or prosecute any action or suit against any third
party for infringement of any Licensed Patent;
or
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12.2.2.
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Conferring
any right for BEMS different from those expressly regulated on the
Agreement, to use, in advertising, publicity or otherwise, any NeoMedia
name, trade name or trademark, or any contraction, abbreviation or
simulation thereof.
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12.3.
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BEMS
agrees to indemnify, defend and hold NeoMedia and its directors, officers,
employees and agents harmless from and against any and all liabilities,
claims, demands, expenses (including, without limitation, attorneys’ and
professional fees and other costs of litigation), losses or causes of
action (each, a “Liability”) arising out of or relating in any way to (i)
the exercise of any right granted to BEMS pursuant to this Agreement or
(ii) any breach of this Agreement by BEMS, except to the extent, in each
case, that such Liability is caused by the negligence or willful
misconduct by NeoMedia as determined by a court of competent
jurisdiction.
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13.
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No Third-Party
Beneficiaries.
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Unless
specifically provided otherwise, nothing in this Agreement shall confer any
rights upon any person or entity who is not a party to this Agreement, nor shall
anything in this Agreement be construed as creating an obligation by either
Party to any non-party to this Agreement.
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14.
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Notices.
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Any
notices that are provided pursuant to this Agreement shall be provided via both
electronic mail and in writing (via overnight courier) to the other Party as
follows:
To
BEMS:
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Attn:
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Chief
Executive Officer
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BEMS,
S.A.
With a
copy to:
To
NeoMedia:
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Attn:
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Chief
Executive Officer or Chief
Financial Officer
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NeoMedia
Technologies, Inc.
Two
Concourse Parkway, Suite 500
Atlanta,
GA 30328
Telephone
(678) 638-0460 X132
FAX (678)
638-0466
With a
copy to:
Michael
H. Baniak, Esq.
McDonnell,
Boehnen, Hulbert & Berhoff, LLP
300 South
Wacker Drive, Suite 3100
Chicago,
IL 60606
Telephone
(312) 913-2137
FAX (312)
913-0002
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15.
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Severability.
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If any
portions of this Agreement are held invalid or unenforceable, all remaining
portions shall nevertheless remain valid and enforceable, to the extent they can
be given effect without the invalid portions.
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16.
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Mutual
Contribution.
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This
Agreement was drafted by counsel for each of the Parties and, thus, shall not be
construed against any Party because that Party initially drafted any particular
provision.
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17.
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Representation of
Authority.
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Each
person signing this Agreement hereby represents and warrants that he or she has
the authority to bind the entity on behalf of which he or she has
signed.
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18.
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Integration.
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This
Agreement sets forth the entire agreement and understanding between the parties
as to the subject matter of this Agreement and merges all prior discussions
between them, and none of the parties shall be bound by any conditions,
definitions, warranties or representations with respect to the subject matter of
this Agreement, other than as expressly provided in this Agreement, or as duly
set forth on or subsequent to the date hereof in writing and signed by a proper
and duly authorized representative of the party to be bound
thereby.
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19.
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Survivability.
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All
confidentiality requirements and obligations of accrued payment shall survive
expiration or termination of this Agreement.
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20.
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Waiver.
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No waiver
of any rights shall be effective unless consented to in writing by the Party to
be charged and the waiver of any breach or default shall not constitute a waiver
of any other right hereunder or any subsequent breach or default.
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21.
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Independent
Contractors.
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Both
Parties are independent contractors under this Agreement. Nothing
contained in this Agreement is intended nor is to be construed so as to
constitute NeoMedia or BEMS as partners or joint venturers with respect to this
Agreement. Neither Party shall have any express or implied right or
authority to assume or create any obligations on behalf of or in the name of the
other Party to bind the other Party to any other contract, agreement, or
undertaking with any third party.
WHEREFORE,
the parties hereby acknowledge their agreement and consent to the terms and
conditions set forth above through their respective signatures as contained
below:
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NeoMedia
Technologies, Inc.
[Signed] /s/ Michael W.
Zima
Chief
Financial Officer
Dated: October
7, 2009
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BEMS,
S.A.
[Signed] /s/
David Gutiérrez
Managing
Director
Dated: October
7, 2009
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