WHEREAS, Licensor is the owner of all right, title and interest in the IPC Pricing System and U.S. Patent No. 7,089,195 and any related continuations (“the ‘195 Patent”), and Licensee desires to receive a license to the IPC Pricing system and method.
NOW, THEREFORE, in consideration of the mutual undertakings and covenants contained herein, and other valuable consideration, the receipt and sufficiency of which is acknowledged, the Parties agree as follows: License Grant; Restrictions. Subject to the limitations and restrictions contained herein, Licensor hereby grants to Licensee a non-exclusive, non-transferable, non-sub licensable, license to offer for sale advertising priced using the IPC Method (as defined below) within the United States. “IPC Method” shall mean an Internet- or web-based advertising method as disclosed by and claimed in the ‘195 Patent and any equivalents thereto. Licensee shall use the license granted herein solely for its own internal business purposes, and shall use its best efforts to promote, offer for sale, and sell advertising using the IPC Method.
2. Royalties; Payments; Audits. Licensee shall pay Licensor a royalty of 2.5% of every advertising dollar sold using or incorporating the IPC pricing system and method. For the avoidance of doubt, the total royalty payment for $1,000,000 of advertising sold by Licensee, using the IPC system and method will equal $25,000. Royalties shall be payable within 30 days of payment received for each campaign sold using the IPC system and method. All payments under this Agreement shall be paid in United States currency, without deductions of taxes of any kind, payable to Licensor by wire transfer or check or to any other accounts, as instructed in writing by Licensor. Licensee shall maintain sales records of sufficient detail to permit verification of the Royalties paid hereunder for at least three (3) years. Licensor shall have the right, during reasonable business hours and at the reasonable convenience of Licensee, to audit such sales records to confirm the correctness of any royalty report. Such audits to be performed by independent public accountants, selected by Licensor, and reasonably acceptable to Licensee.
3. Representations; Disclaimers. Licensor represents that it has the right to grant the licenses and rights granted herein and to enter into this Agreement, and that, as of the Effective Date; it has no knowledge of and has not been made aware of an infringement of any third party rights by the IPC Method and System. Licensee represents (i) that it has the right to enter into this Agreement, and shall not enter into any conflicting agreements during the Term, (ii) that it will not use the IPC Method and System in any unauthorized manner or in combination with goods or services that cause the IPC system and method to infringe third party rights, (iii) that it will not, nor will it cause anyone, to attack the title of Licensor in and to the ‘195 Patent or its validity. Licensor shall promptly notify Licensee in writing of any suspected infringement of the ‘195 Patent. Licensor shall have the right, but shall not be obligated, to bring any legal action related to the ‘195 Patent.
OTHER THAN AS EXPRESSLY SET FORTH IN THIS SECTION 3, LICENSOR MAKES NO REPRESENTATIONS OR WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, RELATING TO THE IPC METHOD OR THE ‘195 PATENT, INCLUDING IT VALIDITY AND ENFORCEABILITY, AND LICENSOR HEREBY EXPRESSLY DISCLAIMS ALL WARRANTIES, REPRESENTATIONS, AND GUARANTEES OF ANY KIND AS TO THE IPC METHOD OR THE ‘195 PATENT, INCLUDING WARRANTIES OF NON-INFRINGEMENT, MERCHANTABILITY, AND FITNESS FOR A PARTICULAR PURPOSE.
IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL, PUNITIVE, OR SPECIAL DAMAGES ARISING HEREFROM OR RELATED HERETO IN ANY CAUSES OF ACTION OF ANY KIND, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
4. Term; Termination. All licenses granted herein are effective as of the date of this Agreement, and shall continue for one year (the “Initial Term”). The Agreement shall automatically renew for subsequent ninety (90) day periods until the date of expiration of ‘195 Patent (the “Renewal Term”), unless terminated by a Party on sixty (60) days written notice prior to the end of the Initial Term or any Renewal Term (collectively the “Term”).
If a Party breaches any material term of this Agreement, the non-breaching Party may terminate this Agreement upon written notice to the breaching Party and a failure of the breaching Party to cure such breach within thirty (30) days of such written notice. Any termination of this Agreement shall not relieve Licensee of its liability for any payments accrued or owing prior to the effective date of such termination.
5. Confidentiality. Each Party shall treat as confidential (a) the terms and conditions of this Agreement (excluding the existence of this Agreement), and (b) all information received by a Party (i) marked as confidential, or (ii) which the recipient should know by its nature or the manner of its disclosure, to be confidential (“Confidential Information”). Notwithstanding the foregoing, Confidential Information will not include information (i) independently developed by the receiving Party or lawfully received free of restriction from another source having the right to furnish such information; (ii) that has become generally available to the public by acts not attributable to the receiving Party, its employees or agents; or (iii) which, at the time of disclosure, was known to the receiving Party free of restriction. The Parties shall each keep the other Party’s Confidential Information strictly confidential and shall not disclose or use the other’s Confidential Information for any purpose other than the performance of its obligations, or exercise of its rights, hereunder. If disclosure of Confidential Information is mandated by applicable law, rule or regulation, or by an order of a court or tribunal, then the Party so ordered shall: (A) promptly notify the other Party of such requirement; and (B) use good faith efforts to minimize disclosure of the Confidential Information.
6. Announcements. The Parties may mutually agree to a joint press release announcing Licensee’s license of the IPC Pricing Method and System. Notwithstanding Section 5, Licensor shall have the right to disclose the fact that Licensee has licensed the IPC System/Method, including placement of a notice on Licensor’s website.
7. Assignment. Licensee shall not transfer or assign any of its rights or delegate any of its obligations hereunder, in whole or in part, whether voluntarily or by operation of law, without the prior written consent of Licensor. Licensor may freely assign any or all of its rights and obligations under this Agreement to any successor of all or a substantial portion of its business.
8. Notices. Any notice delivered under this Agreement shall be in writing and shall be effective upon actual receipt, addressed as follows:
9. In the case of LICENSOR:
Performance Pricing LLC
1303 3rd Avenue, Suite 3R
New York, NY 10021
10. Governing Law and Choice of Law. This Agreement shall be governed by and construed in accordance with the internal laws of the State of New York, without giving effect to principles of conflicts of law. Each Party submits to the jurisdiction of the State and Federal Courts located in New York City, Borough of Manhattan, and expressly waives any objections thereto.
11. General Terms. This Agreement shall not be amended, modified, or supplemented by the Parties in any manner, except by a writing signed by both Parties. Neither Party shall be deemed to have waived any of its rights or remedies hereunder unless such waiver is in writing and signed by the waiving Party. This Agreement shall be deemed to have been drafted jointly by the Parties. In the event that any provision hereof shall be held to be invalid or unenforceable, then: (i) such provision shall be reformed to the extent strictly necessary to render such provision valid and enforceable; and (ii) the validity and enforceability of all of the other provisions hereof, shall in no way be affected or impaired thereby. This Agreement constitutes the entire Agreement between the Parties, and supersedes all prior and contemporaneous agreements between the Parties with respect to such subject matter. Each Party is an independent contractor and shall not be deemed to make either party an agent, partner or joint venture of the other. Nothing express or implied herein is intended to confer, nor does confer, upon any third party (other than permitted successors or assignees) any rights, remedies, obligations or liabilities whatsoever. All headings are for convenience only and shall not affect the meaning of any provision of this Agreement. This Agreement may be executed in two counterparts, each of which when executed shall be deemed an original, and both together shall constitute one same instrument.