exv10w1



 





Exhibit 10.1




Novint/Tournabout Intellectual Property Acquisition Agreement



This Intellectual Property Acquisition Agreement (this “Agreement’) is between Novint Technologies,
Inc., a Delaware corporation having offices in Albuquerque, NM (“Novint”) and Tournabout, Inc., a
California corporation having offices in Carpinteria, CA (“Tournabout’), and is effective as of
April 21, 2007 (the “Effective Date”).





	1.	 	Background






	 	1.1.	 	Tournabout owns intellectual property related to computer software, including
without limitation a program called “ContestMaker,” which includes server software,
database software, and API;
	 
	 	1.2.	 	Tournabout has represented to Novint that Tournabout’s computer software can be
adapted to provide capabilities that Novint desires prior to Novint’s planned June 18
product launch, which capabilities are an important part of the value of the
intellectual property to Novint;
	 
	 	1.3.	 	Tournabout desires to sell, and Novint desires to acquire, all the intellectual
property assets of Tournabout, subject to the terms and conditions of this Agreement.






	2.	 	Definitions






	 	2.1.	 	Confidential Information. Confidential and proprietary Information that has
been or will be transferred or disclosed to the other Party, including, without
limitation, the terms of this Agreement. Confidential Information does not include any
information that a Party can demonstrate by competent written evidence is or becomes
any of the following: (i) generally available to the public or otherwise part of the
public domain other than through any act or omission of such Party in breach of this
Agreement; (ii) disclosed to such Party by a third party that has no obligation not to
disclose such information; (iii) independently developed by such Party without use of
Confidential Information of the other Party, and (iv) known by such Party at the time
of disclosure to such Party by the other Party.






	 	2.2.	 	ContestMaker. A system that provides a client-server software application that
runs online game contests, captures player information (both at registration and during
game play) and then analyzes that information for trends and behaviors. The
ContestMakerTM Client is a set of application programmer interfaces (APIs)
that are integrated in previously developed video game software including without
limitation (a) all trade or service marks, and any goodwill associated therewith,
embodied in the system or used to reference the system, including without limitation
“ContestMaker”; (b) all copyrights in the system or any portion thereof; (c) all
versions of computer software implementing the system regardless of programming
language or platform, and regardless of form (e.g., source, object, executable); (d)
all images, sounds, and any other content embodied in the system or used in execution
of any version of the system; (e) all computer software reasonably required for
operation, distribution, maintenance, or improvement of any version of the system,
including tools and libraries, regardless of




 









 






	 	 	 	programming language or platform, and regardless of form (e.g., source, object,
executable), but not including software that meets all of the following conditions:
(a) was not created or authored by Tournabout, and (b) was licensed by Tournabout
from other parties, (c) is generally commercially available, and (d) has been
disclosed by Tournabout to Novint as an exception to this definition.






	 	2.3.	 	Controlling Persons. Ed Zanelli and Michael Musson.
	 
	 	2.4.	 	Demonstration Date. June 18, 2007.
	 
	 	2.5.	 	Information. Information and data of any type and in any tangible or intangible
form, whether or not patentable, including without limitation ideas, inventions
(whether or not patentable), preclinical, clinical and other data, physical, chemical
and biological materials, algorithms, software, works of authorship, plans, designs,
practices, methods, techniques, specifications, production technical operating
procedures, standard operating procedures, protocols under development, formulations,
software, formulae, work product, knowledge, know-how, skill, experience, test data,
analytical and quality control data, stability data, results of studies and patent and
other legal information or descriptions.
	 
	 	2.6.	 	Integration Milestone. Novint will utilize tests after the successful
completion of the milestones outlined in Attachment A, to determine, in Novint’s
reasonable discretion, whether the Intellectual Property of Tournabout, including but
not limited to, Contest Maker, has been effectively integrated into the IP of Novint.
	 
	 	2.7.	 	Integration Plan. The project set forth in Exhibit B.
	 
	 	2.8.	 	Intellectual Property. (i) Patents, applications therefor, and all foreign
counterparts thereof, divisions, continuations, continuations-in-part to the extent
claiming Intellectual Property otherwise licensed or assigned by this Agreement,
reissues, renewals, re-examinations or extensions thereof (“Patent Rights”), (ii)
copyrights, copyright applications and registrations, copyrightable works of
authorship, and all other rights corresponding thereto throughout the world
(“Copyrights”), (iii) Information, and trade secrets, know-how and confidentiality
rights and any other intellectual property or proprietary right associated with
Information.
	 
	 	2.9.	 	License Price. $50,000 in cash.
	 
	 	2.10.	 	Purchase Price. If Ed Zanelli has agreed to enter into full time service to
Novint before the Demonstration Date, and continues full time service to Novint, either
as an employee or as a consultant, for at least one year thereafter, 250,000 shares of
Novint common stock plus $75,000 in cash; otherwise 200,000 shares of Novint common
stock plus $60,000 in cash.
	 
	 	2.11.	 	Subject IP. All Intellectual Property owned, controlled, or licensed by
Tournabout, including without limitation ContestMaker and the Intellectual Property set
forth in Exhibit A.




 









 












	3.	 	Acquisition of Intellectual Property Assets






	 	3.1.	 	Tournabout hereby sells and assigns to Novint all right, title, and interest in
and to the Subject IP.
	 
	 	3.2.	 	Tournabout, for itself and for any party claiming through Tournabout, hereby
releases Novint from any intellectual property claims arising out of Novint’s
use of the Subject IP.






	4.	 	Integration Plan






	 	4.1.	 	Novint and Tournabout will each apply its best efforts toward to the completion
of the Integration Plan set forth in Exhibit B.
	 
	 	4.2.	 	Novint shall own all Intellectual Property developed during the Integration Plan.
	 
	 	4.3.	 	Ed Zanelli will apply his full-time efforts to the completion of the
Integration Plan from the Effective Date until the Demonstration Date, pursuant to the
terms of a Consulting Agreement to be entered between Ed Zanelli and Novint.
	 
	 	4.4.	 	Tournabout will apply its best efforts to ensure that Jeremy Link will apply
his efforts, not less than one half time unless otherwise agreed by Novint, to the
completion of the Integration Plan from the Effective Date until the Demonstration
Date, pursuant to the terms of a Consulting Agreement to be entered between Jeremy Link
and Novint.
	 
	 	4.5.	 	Michael Musson will be available for consultation with Novint regarding the
Subject IP and the Integration Plan from the Effective Date until ninety days
thereafter, for not more than 10 hours per month, at no charge to Novint.






	5.	 	Compensation






	 	5.1.	 	If the Integration Milestone is met by the Demonstration Date, as determined by
Novint’s Board of Directors acting in good faith, then Novint shall pay the Purchase
Price within 30 days of the Demonstration Date.
	 
	 	5.2.	 	If the Integration Milestone is not met by the Demonstration Date, then Novint
shall elect one of the following three alternatives:






	 	5.2.1.	 	Purchase Alternative. Pay the Purchase Price within 30 days of the
Demonstration Date.
	 
	 	5.2.2.	 	License Alternative. Pay the License Price within 30 days of the
Demonstration Date, in which case Novint shall assign all right, title, and
interest in and to the Subject IP acquired from Tournabout to Tournabout, and
Novint’s rights in any derivative works of copyrighted software in the Subject IP,
and Novint shall have the rights set forth under the License provisions.




 









 






	 	5.2.3.	 	Termination Alternative. Only if the failure to meet the Integration
Milestone by the Demonstration Date is principally due to the fault of Tournabout
or the Controlling Persons, Novint may terminate this Agreement by written notice
to Tournabout within 30 days of the Demonstration Date, in which case Novint shall
assign all right, title, and interest in and to the Subject IP acquired from
Tournabout to Tournabout, and Novint’s rights in any derivative works of
copyrighted software in the Subject IP, and Novint shall have no further rights to
the Subject IP and no obligations to Tournabout.






	 	5.3.	 	If Ed Zanelli leaves employment with Novint, either voluntarily or by
termination for cause, after Novint has paid the Purchase Price but before one year
thereafter, then Tournabout shall refund $15,000 in cash and 50,000 shares of Novint
common stock within 30 days of written notice from Novint to Tournabout of such
occurrence.






	6.	 	License Alternative. Tournabout agrees to and hereby grants to Novint, effective on
the date of Novint’s payment of the License Price, an irrevocable, perpetual, worldwide
license to the Subject IP and to any derivative works assigned to Tournabout by Novint
hereunder, for all purposes, and including the right to grant sublicenses to others, and
exclusive in the field of computer games having force feedback capability. Tournabout shall
not grant licenses to the Subject IP, or any derivative works assigned to Tournabout by Novint
hereunder, to any other party for use in connection with computer games having force feedback
capability.






	7.	 	Technology Transfer. Tournabout agrees to provide Novint with all information
reasonably necessary or requested for the exercise of the rights granted herein, including
without limitation copies of documents relating to patent filing and prosecution, electronic
copies of





     software programs, copies of electronic design files, and other embodiments of or documents
describing the Subject IP.




	8.	 	Confidentiality.






	 	8.1.	 	Each Party understands that maintenance of the confidential nature of both
Parties’ Confidential Information is important to the other Party’s future
use, practice, and commercial exploitation thereof. Each Party agrees that it shall use
reasonable efforts to preserve the confidentiality of any and all Confidential
Information of the other Party. For clarity, information in the Subject IP assigned to
Novint is Confidential Information of Novint.
	 
	 	8.2.	 	Permitted Disclosure. A Party may disclose Confidential Information of
the other Party only to current and prospective employees, agents, confidential
advisers, and investors who have reasonable need to know, given the nature of their
relationship to the Party, and shall not disclose Confidential Information of the other
party to any other party or use the Confidential Information for any purpose other than
exercise of the rights granted herein.






	9.	 	Representations and Warranties






	 	9.1.	 	Tournabout, and the Controlling Persons, jointly and severally represent and
warrant to Novint that:




 









 












	 	9.1.1.	 	Tournabout owns all right, title, and interest in and to the Subject IP, free of
any liens or encumbrances of any kind, and Tournabout has the right to make the
assignments and grant the licenses expressed or implied herein,
and the intellectual property rights in the Subject IP are valid and
enforceable against unlicensed use;
	 
	 	9.1.2.	 	Tournabout has not, and will not, assign or license the Subject IP or any part
thereof to any other party;
	 
	 	9.1.3.	 	To the best of the knowledge of Tournabout and the Controlling Persons, the use
of the Subject IP for hosting games that enables Novint to run online game contests
for users of the Falcon and other Novint Products will not infringe the
intellectual property rights of any other party.
	 
	 	9.1.4.	 	Tournabout is duly organized and validly existing under the laws of the state of
its incorporation and has full corporate power and authority to enter into this
Agreement and to carry out the provisions hereof, and after execution and
performance of this Agreement will have sufficient resources to pay its obligations
as they come due;
	 
	 	9.1.5.	 	Tournabout has taken all corporate action necessary to authorize the execution
and delivery of this Agreement and the performance of its obligations under this
Agreement; and such execution, delivery andlor performance does not and will not
violate any law, regulation, permit held by Tournabout, or contract to which
Tournabout is bound;
	 
	 	9.1.6.	 	This Agreement is a legal and valid obligation of Tournabout and the Controlling
Persons, binding upon Tournabout and the Controlling Persons and enforceable
against Tournabout and the Controlling Persons in accordance with its terms, except
as such enforcement may be limited by applicable bankruptcy, insolvency,
reorganization, arrangement, moratorium or other similar laws affecting creditors’
rights, and subject to general equity principles and to limitations on availability
of equitable relief, including specific performance;
	 
	 	9.1.7.	 	Tournabout has disclosed to Novint any written or electronic mail communications
alleging that it has violated or, by conducting its obligations as currently
proposed under this Agreement, would be violating, any of the Intellectual Property
rights of any third party;
	 
	 	9.1.8.	 	All information provided to Novint by Tournabout or the Controlling Persons in
relation to this Agreement is true and accurate in all material respects, all
information necessary to make any information disclosed to Novint not false or
misleading in any material respect has been disclosed to Novint.






	 	9.2.	 	Novint represents and warrants to Tournabout that:




 









 












	 	9.2.1.1.	 	Novint is duly organized and validly existing under the laws of the state of
its incorporation and has full corporate power and authority to enter into this
Agreement and to carry out the provisions hereof;
	 
	 	9.2.1.2.	 	Novint has taken all corporate action necessary to authorize the execution and
delivery of this Agreement and the performance of its obligations under this
Agreement; and such execution, delivery andlor performance does not and will not
violate any law, regulation, permit held by Novint, or contract to which Novint is
bound;
	 
	 	9.2.1.3.	 	this Agreement is a legal and valid obligation of Novint, binding upon Novint
and enforceable against Novint in accordance with its terms, except as such
enforcement may be limited by applicable bankruptcy, insolvency, reorganization,
arrangement, moratorium or other similar laws affecting creditors’ rights, and
subject to general equity principles and to limitations on availability of
equitable relief, including specific performance;






	 	9.3.	 	Each Party shall indemnify and hold harmless the other Party from and against
any and all claims arising out of any breach of the representations, warranties, and
covenants set forth herein.






	10.	 	Noncompetition and Nonsolicitation






	 	10.1.	 	For one year after the Effective Date, Tournabout shall not directly or
indirectly solicit any Novint employees or customers.
	 
	 	10.2.	 	Until the Demonstration Date, Tournabout and the Controlling Persons will not
engage in similar projects for any other party.






	11.	 	Miscellaneous






	 	11.1.	 	Further Assurances. Each Party hereby agrees to execute and deliver
any further assignments and other documents as the other Party reasonably believes to
be necessary to effect the foregoing assignment, license, or other enjoyment of the
rights granted to such other Party hereunder, and each Party hereby grants to the other
Party a limited, irrevocable power of attorney to execute and deliver such further
assignments and other documents in the event that it is unable to obtain such execution
and delivery from the other Party within ten (10) days of requesting the same.






	 	11.2.	 	Limitation of Liability. Neither Party shall be liable to the other
for any consequential, incidental, indirect, special or punitive damages arising from
this Agreement.






	 	11.3.	 	Governing Law. This Agreement shall be governed by the laws of the
State of New Mexico, without giving effect to any of its conflicts of law provisions.






	 	11.4.	 	Entire Agreement. This Agreement constitutes the entire, final and
complete




 









 






	 	 	 	agreement and understanding between the Parties with respect to the subject matter
hereof, and replaces and supersedes all prior discussions and agreements between the
Parties with respect to such subject matter. No amendment, modification or waiver of
any terms or conditions hereof shall be effective unless made in writing and signed
by a duly authorized officer of each Party.






	 	11.5.	 	Headings. All headings are inserted for convenience of reference only
and are not intended to be a part of or to affect the meaning or interpretation of the
terms of this Agreement.
	 
	 	11.6.	 	Notices. All notices required or permitted to be given under this
Agreement shall be in writing and shall be mailed by registered or certified mail, or
delivered by a nationally recognized overnight courier, or delivered by hand to the
address set forth in the first paragraph of this Agreement, or such other address as a
Party may use as its headquarters, provided that such Party has notified the other of
such new address, to the attention of the Party’s President. All notices shall be
deemed to have been given two (2) business days after such notice is mailed, as
evidenced by the postmark at the point of mailing, or on the date of personal delivery,
if not mailed.
	 
	 	11.7.	 	Counterparts. This Agreement may be executed in counterparts, each of
which shall be considered an original and all of which shall constitute together the
same document.
	 
	 	11.8.	 	Severability. If a court of competent jurisdiction declares any
provision of this Agreement invalid or unenforceable, or if any government or other
agency having jurisdiction over any Party deems any provision to be contrary to any
laws, then that provision shall be severed and the remainder of the Agreement shall
continue in full force and effect. The Parties further agree to negotiate in good faith
with the intention of agreeing to and implementing an amendment to replace such void,
invalid, unenforceable, or unlawful provision with a valid and enforceable provision
that will achieve, to the extent possible, the economic, business and other purposes of
such void, invalid, unenforceable or unlawful provision.
	 
	 	11.9.	 	Independent Contractors. Each Party shall act solely as an independent
contractor, and nothing in this Agreement shall be construed to give either Party the
power or authority to act for, bind or commit the other Party in any way. Nothing
herein shall be construed to create the relationship of partnership, principal and
agent or joint venture between the Parties.
	 
	 	11.10.	 	Dispute Resolution. All disputes, claims, and controversies between the
parties arising out of or related to this Agreement or the breach thereof (except for
breach of any obligation of confidentiality or infringement of any intellectual
property right for which an injunction may be sought) will be settled by binding
arbitration. The arbitration will be conducted by a single arbitrator, experienced in
the field of licensing intellectual property related to medical devices or life
sciences, under the then-current Commercial Arbitration Rules of the American
Arbitration Association. The decision and award of the arbitrator will be final and
binding and judgment on the award so rendered may be entered in any court having




 









 






	 	 	 	jurisdiction thereof. The arbitration will be held in Albuquerque, New Mexico, or a
mutually convenient location agreed to by the Parties, and the award will be deemed
to be made in New Mexico.






	 	11.11.	 	Bankruptcy. All rights and licenses granted to each Party under or pursuant
to this Agreement are, and shall be deemed to be, for purposes of Section 365(n) of the
United States Bankruptcy Code, licenses to rights of “intellectual property” as defined
thereunder. Notwithstanding any provision contained herein to the contrary, if either
Party is under any proceeding under the Bankruptcy Code and the trustee in bankruptcy
of such Party, or such Party, as a debtor in possession, rightfully elects to reject
this Agreement, the other Party may, pursuant to 11 U.S.C. Section 365(n) (1) and (2)
retain any and all of such other Party’s rights hereunder, to the maximum extent
permitted by law, subject to the payments specified herein.





(signature page follows)




 









 








signature page to Novint/Tournabout Intellectual Property Acquisition Agreement





	 	 	IN WITNESS WHEREOF, the Parties have executed and delivered this Agreement.





	 	 	 	 	 	 	 
	NOVINT

	 	 	 	TOURNABOUT	 	 
	 
	 	 	 	 	 	 
	/s/ Thomas G. Anderson

	 	7/17/07
	 	/s/ Michael Musson
	 	4/24/07
	 

	 	 
	 	 
	 	 
	Thomas G. Anderson, CEO

	 	date
	 	Michael Musson, CEO
	 	date
	of Novint Technologies, Inc.

	 	 	 	Tournabout, Inc.	 	 
	 
	 	 	 	 	 	 
	 

	 	 	 	/s/ Ed Zanelli
	 	4/24/07
	 

	 	 
	 	 
	 	 
	Michael Musson

	 	date
	 	Ed Zanelli
	 	date






 









 






Exhibit A





	1.	 	All IP associated with the ContestMaker platform including:






	1.1.	 	All MySQL database objects and create scripts, including:






	 	1.1.1.	 	tables
	 
	 	1.1.2.	 	stored procedures
	 
	 	1.1.3.	 	stored functions
	 
	 	1.1.4.	 	stored triggers






	1.2.	 	ContestMaker Server, including:






	 	1.2.1.	 	Registration and Player Accounts Interface (php code)
	 
	 	1.2.2.	 	Alert Engine (php and java code) Note1
	 
	 	1.2.3.	 	Ranking Engine (php code)
	 
	 	1.2.4.	 	Player Statistics and History Interface (php code) Note2
	 
	 	1.2.5.	 	Message Board and Chat (php code) Note3
	 
	 	1.2.6.	 	Administrative Interface (php code) Note2






	1.3.	 	ContestMaker Client API, including:
	 
	1.4.	 	Java version
	 
	1.5.	 	C/C++ version




Note1: Alert Engine extends PHPMailer, a freeware mailer based on the standard AspEmail classes.



Note2: Player Statistics and History Interface and Administrative Interface include Open Source
(java) line graphs from Play-Free-Games.com.



Note3: Message Board and Chat extends Phorum, an Open Source (php/MySQL) message board application.





	2.	 	Patent application and any resulting patents on VIDEO GAME CONTESTS
	 
	2.1.	 	Application Number: 11/086,876
	 
	2.2.	 	Filed Named Inventor: Zanelli, et al.
	 
	2.3.	 	Filing Date: March 22, 2005




 









 











Exhibit B




	 	 	 	 	 
	Date	 	Task/Milestone	 	Who’s Responsible
	4/20/2007

	 	Finalize Novint requirements.
	 	Novint/Tom
	 
	 	 	 	 
	4/20/2007

	 	Provide connection for development MySOL
database server to Ed. Provide connection for
development web server to Ed.
	 	Red 8/Randy
	 
	 	 	 	 
	4/27/2007

	 	Install ContestMaker schema, including tables,
triggers, functions, procedures and seed data on
development MySQL database server.
	 	Tournabout/Ed
	 
	 	 	 	 
	4/27/2007

	 	Install ContestMaker php API on development
web server. Deliver php templates to Red 8.
	 	Tournabout/Ed
	 
	 	 	 	 
	4/27/2007

	 	Deliver ContestMaker C/C++ dll to Novint.
	 	Tournabout/Jeremy
	 
	 	 	 	 
	4/27/2007

	 	Begin integration of ContestMaker php files with
N Touch.
	 	Red 8/Randy
	 
	 	 	 	 
	4/27/2007

	 	Support Red 8 with integration of ContestMakerTM
php API with N Touch. Make all changes or bug
fixes as necessary.
	 	Tournabout/Ed
	 
	 	 	 	 
	4/27/2007

	 	Begin integration of ContestMakerTM C/C++ dll
with Novint games.
	 	Novint/Bill
	 
	 	 	 	 
	4/27/2007

	 	Support Novint with integration of
ContestMakerTM C/C++ dll with Novint games.
Make all changes or bug fixes as necessary.
	 	Tournabout/Jeremy
	 
	 	 	 	 
	5/4/2007

	 	Accept installation of ContestMakerTM schema.
	 	Novint/Tom
	 
	 	 	 	 
	5/4/2007

	 	Accept installation of ContestMakerTM php files.
	 	Novint/Tom
	 
	 	 	 	 
	5/4/2007

	 	Accept installation of ContestMakerT”” C/C++ dll.
	 	Novint/Tom
	 
	 	 	 	 
	5/18/2007

	 	Complete integration of ContestMakerTM php API
with N Touch.
	 	Red 8/Randy
	 
	 	 	 	 
	5/18/2007

	 	Complete integration of ContestMakerTM C/C++
dll with Novint games.
	 	Novint/Bill
	 
	 	 	 	 
	5/18/2007

	 	Begin testing.
	 	All
	 
	 	 	 	 
	6/8/2007

	 	Complete testing.
	 	All
	 
	 	 	 	 
	6/18/2006

	 	Launch.
	 	All