LICENSE AGREEMENT
Exhibit
10.1
This
License Agreement (the “Agreement”) is entered into
on the 2nd day of
October, 2009 (the “Effective
Date”) by and between
NeoMedia Technologies, Inc. (“NeoMedia”), a Delaware corporation with a principal place of
business at Xxxxx 000, Xxx
Xxxxxxxxx Xxxxxxx, Xxxxxxx, Xxxxxxx, 00000 and NeuStar, Inc. (“Neustar”), a Delaware corporation, with a
principal place of business at 00000 Xxxxxx Xxx Xxxxx, Xxxxxxxx, XX 00000 (each
a “Party” and collectively the “Parties”).
RECITALS
WHEREAS, NeoMedia asserts that it is the
owner of certain intellectual property rights
concerning machine-readable code resolution, and that as such,
entities performing campaign management services will require licenses from
NeoMedia to its intellectual property rights in order to interact with a
machine-readable code-related clearinghouse;
WHEREAS, Neustar desires to develop,
deploy and administer a machine-readable code-related registry and
clearinghouse;
WHEREAS, NeoMedia desires to grant to
Neustar, and Neustar desires to obtain from NeoMedia, rights to sublicense certain NeoMedia intellectual property
rights concerning machine-readable code resolution, as more particularly set forth
below;
WHEREAS, the Parties desire to share in
certain revenues concerning the licensing of machine-readable code-related
intellectual property, regardless of the source of the
licensing.
NOW THEREFORE, in exchange for the
consideration and covenants herein, the receipt and sufficiency of which the
Parties hereby acknowledge as follows.
TERMS AND
CONDITIONS
1. INCORPORATION
The recitals set forth above are hereby
incorporated by reference.
2. DEFINITIONS
2.1 “Clearinghouse” means a Code-related system that
receives encoded messages and presents them to a third party for resolution, as
more fully set forth in Section 3 below.
2.2 “Code” means a machine-readable symbol (e.g., barcode,
alpha-numeric character strings, linear code, graphic, wired or wireless
electronic signal, or other similar representation or
figure).
2.3 “Confidential
Information” means all
information, whether of a technical, business, financial or any other nature,
disclosed in any manner, whether verbally, electronically, visually or in a
written or other tangible form, which is either identified as confidential or
proprietary or which should be reasonably understood to be confidential or
proprietary in nature with respect to the disclosing Party, an affiliate or a
third party.
2.4 “Event of
Default” means any
representation or warranty made by a Party which was incorrect in any respect
when made and that could reasonably be expected to have a material adverse
effect upon the other Party’s ability to realize the benefits of its bargain or
a material breach of this Agreement that is not cured within thirty (30) days
after notice of breach to the breaching Party.
2.5 “Field of Use”
means a method or system for mobile handsets
(or other devices) to resolve
machine-readable codes through scanning (or other machine-reading methods) in
which a mobile phone subscriber is connected to a Clearinghouse in the
Territory. However, the
Field of Use is specifically limited by the claims contained in the Licensed
Patents set forth the in Schedule 1 hereto. For the avoidance of
doubt, the processing of a
Code-related message solely
within an enterprise, and which are not processed by a clearinghouse, shall be
deemed outside the Field of Use.
2.6 “Governing
Authority” means an entity
under whose auspices a Code-related Registry or Clearinghouse is
deployed. If a third party is not a Governing Authority, then Neustar
shall be considered the Governing Authority.
2.7 “Intellectual
Property” or “IPR” means all patent, copyright, trademark,
trade name, service xxxx, trade secret and other intellectual property rights,
including applications thereof, arising and/or enforceable under U.S.
law.
2.8 “License
Customer” means an entity
to which a license or sublicense is granted to the Licensed Patents.
2.9 “Licensed Collection
Revenue” means Revenue that
Neustar collects on behalf of NeoMedia from a
NeoMedia Licensed Customer.
Such Revenue may include Revenue for the licensing of NeoMedia IPR
(including the Licensed Patents). Licensed Collection Revenue
shall not in any event
include monies Neustar derives from any other Clearinghouse or Registry-related
activities, including, but not limited to, fees from a Resolution Authority for
Neustar’s development, deployment, operation, management,
or administration of a Registry or Clearinghouse, fees Neustar charges its
customers for registering a Code in a Registry, fees Neustar charges its
customer for processing Transactions through a Clearinghouse, fees for ancillary
services.
2.10 “Licensed
Patents” means the
patent applications and issued patents owned by NeoMedia, set forth in
Schedule 1 hereto, containing claims to any invention(s) useful in or relating
to the Field of Use, together with all related divisional applications,
continuation applications, continuation-in-part applications, reissues, and
reexaminations thereof, and any other future applications or patents hereafter
acquired by NeoMedia, in which claims are directed to the Field of Use, to the
extent they issue during the Term of this Agreement.
2.11 “Licensed Transaction
Revenue” means
fees collected under the Licensed Patents for the Field of Use that are based on Revenue associated with
Transactions licensed by Neustar with respect to a
Clearinghouse on behalf of
Neustar Sublicense
Customers. Licensed Transaction
Revenue shall not in any
event include monies Neustar derives from any other Clearinghouse or
Registry-related activities, including, but not limited to, fees from a
Resolution Authority for Neustar’s development,
deployment, operation, management, or administration of a
Registry or Clearinghouse, fees Neustar charges its customers for registering a
Code in a Registry, fees Neustar charges its customer for processing
Transactions through a Clearinghouse, fees for ancillary
services.
2.12 “Licensee”
means
Neustar.
2.13 “Licensor” means NeoMedia.
2.14 “NeoMedia Fee” means the
amount of the License Transaction Revenue remaining after Neustar deducts the
Neustar Fee.
2.15 “NeoMedia License
Customer” means
the License Customers to whom a license to Licensed Patents
is granted by NeoMedia, and
which are limited to those entities set forth in Schedule 2. Upon a
NeoMedia License Customer ceasing to be a License Customer (i.e., no longer
receiving a license from NeoMedia), such entity shall no longer be deemed a
NeoMedia License Customer, and such entity is not precluded from becoming a
Neustar Sublicense Customer or a (again) a NeoMedia License
Customer.
2.16 “Neustar Fee”
means the compensation due
Neustar under and calculated in accordance with Article 7
below.
2.17 “Neustar Sublicense
Customer” means a License
Customer to whom a sublicense to Licensed Patents is granted by Neustar
hereunder.
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2.18 “Referral Fee”
means the fee set forth in
Section 8.7 below for Neustar’s referral to
NeoMedia of a customer.
2.19 “Registry” means a Code-related system in which
Codes are associated with Resolution Authorities and related data, as more fully
set forth in Article 3 below.
2.20 “Resolution
Authority” means an entity
designated in an associated Registry as having rights to resolve a given code
(e.g., campaign managers),
wherever situated.
2.21 “Revenue”
means monies actually
received as payment or the
equivalent payment value if any form of non-monetary compensation. However, Revenue shall not, by way of example and not
limitation, in any way include and shall specifically exclude, sales or other
similar value added taxes, collection costs, credit card processing fees,
credits, amounts under dispute, and any monies associated with ancillary
services (e.g., connectivity, set-up, deployment, professional services,
etc.) to the extent rendered by
Neustar.
2.22
“Territory” means the
United States of America, including its territories and
possessions.
2.23 “Transaction”
means the processing of a
Code-related message in a Clearinghouse.
3. REGISTRY &
CLEARINGHOUSE
3.1 Intention. Neustar intends to develop, deploy and
administer a Registry and Clearinghouse, whereby on behalf of Resolution
Authorities, Code identifiers and related conditions of use are registered,
associated, and communicated.
Currently, Neustar envisions that a
Registry may perform the following activities or enable the following
functions:
· perform a documentary and referential
function for Codes and their issuing entities
· apply terms and conditions of the
Governing Authority to business policies for registering both Codes and
authorities for the use of Codes
· serve as the definitive authority for
clearing services for Code relationships
Currently, Neustar envisions that a
Clearinghouse may perform the following activities or enable the following
functions:
· receive Code strings from
devices
· reference the appropriate Registry to
determine Resolution Authority
· forward the Code strings to the
applicable Resolution Authority
· receive from the Resolution Authority a
content-related response in the form of a uniform resource identifier, or
similar identifier, or content as specified by the Resolution
Authority
· forward that identifier to the
requesting device
3.2 Administration
Neustar shall store all administrative
data related to licensing hereunder, e.g., rates cards, terms of use, policies,
types, etc., separate and apart from other operational systems, including the
Registry database(s).
3.3 Reservations. The development, deployment, operation,
management, or administration of a Registry and/or a Clearinghouse is merely a
statement of intent by Neustar, which intent is dependent on various factors, as
well as Neustar business judgment, in its sole discretion. Nothing
herein shall impose on Neustar an obligation to develop, deploy or administer a
Registry or Clearinghouse, whether or not dependent on the sublicensing of
Licensed Patents. Nothing herein prohibits Neustar from sublicensing
third party IPR as part of the Registry or Clearinghouse, provided the resulting
deployment does not violate NeoMedia’s Licensed Patents.
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3.4 Conflicts. The Parties acknowledge
that Neustar’s development,
deployment, operation, management, or administration of a Registry and/or a Clearinghouse may
be subject to requirements issued by a Governing Authority. Because
those requirements may conflict with the requirements in this Agreement, the
Parties agree that in such a situation, they will use commercially reasonable
efforts to resolve any such conflict, including by way of amendment to this
Agreement, but only as necessary to resolve the conflict and maintain the
benefit of the bargain between the Parties.
3.5 Additional
Services. Nothing herein shall
prohibit Neustar from providing, and it is Neustar’s intention to provide,
value-added services not subject to this Agreement.
3.6 Billing
& Collection Agent. For any current or future NeoMedia
License Customer within the Territory, if NeoMedia, solely in its discretion,
chooses to outsource any billing and collection services, NeoMedia shall provide
to Neustar a right of first refusal to provide those services relating to the Field of Use with
respect to that NeoMedia
License Customer. NeoMedia shall provide to Neustar a copy
of the license, pricing and collections terms between NeoMedia and the NeoMedia
License Customer. Neustar shall review these terms and may, in its
sole discretion, determine whether it wishes to accept an appointment as
NeoMedia’s exclusive billing and collections agent for that NeoMedia License
Customer. If Neustar accepts in writing such an appointment,
then Neustar
shall invoice the
NeoMedia
License Customer for services relating to the
Field of Use and collect monies, on behalf of NeoMedia, but subject to Article
7. If Neustar
accepts any such appointment, NeoMedia shall then provide to Neustar any other relevant compensation provisions in the
agreement(s) with each NeoMedia License Customer. Revenue collected
by Neustar hereunder shall be deemed Licensed Collection
Revenue as provided in
Article 7. Neustar’s
performance of billing and collection activities under this Section are
contingent upon full and timely receipt of the information required to be sent
to Neustar (e.g., identity of the customer and the relevant compensation
provisions). If the compensation provisions in any agreement between
NeoMedia and a NeoMedia License Customer are either not commercially reasonable
or not practicable for Neustar (in its sole discretion) to implement, then
Neustar shall not be under any obligation to serve as a billing and collections
agent under this Section, provided that Neustar provides NeoMedia with written
notice thereof.
4. LICENSES
4.1 Grant. NeoMedia
hereby grants to Neustar, as a Clearinghouse and Registry, the right to
sublicense NeoMedia’s Licensed Patents to License Customers in the Field of Use
and Territory, subject to Exhibit B to this Agreement.
4.2 Conditional
Grant. It is not
considered by the Parties that Neustar’s development, deployment, operation,
management, or administration of a Clearinghouse or Registry as
contemplated herein would require Neustar to obtain a license to the NeoMedia
Licensed Patents. However, to the extent that it might require it,
NeoMedia shall grant to Neustar a royalty-free license to the NeoMedia Licensed
Patents for the purpose of administering or operating a Clearinghouse and
Registry , as contemplated herein.
4.3
Exclusion. The grant of the licenses under Section 4.1
excludes the right to use or sublicense NeoMedia’s Campaign Manager and Code
Management platforms, and NeoMedia is not obligated or expected to provide any
rights or technical information on the same, beyond what may be necessary to
interface with the Registry and Clearinghouse.
4.4
Condition. Nothing herein requires the licensing or
sublicensing of any rights in the Licensed Patents to the extent that the
activities associated with the NeuStar Clearinghouse would not otherwise read on
the claims of such Licensed Patents absent the licensing or sublicensing of the
Licensed Patents hereunder, or when claims are cancelled or modified, the term
of the Licensed Patent expires, or the Licensed Patents are
overturned.
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4.5 Licensing
Restriction. NeoMedia shall not during the Term license the
Licensed Patents to third parties within the Field of Use, with the sole
exception of, and with respect to, the NeoMedia Licensed Customers set forth in
Schedule 2.
5. OWNERSHIP AND
RESPONSIBILITIES
5.1 Generally. As a condition of NeoMedia’s provision
of the licenses and other matters set forth hereunder, Neustar acknowledges
NeoMedia’s representation that all right, title and interest, including
Intellectual Property rights, in and to the Licensed Patents pertaining to the Field of Use,
is owned exclusively by
NeoMedia, or its licensors, and are protected by applicable Intellectual
Property laws.
5.2 Maintenance
& Enforcement. NeoMedia asserts that the Licensed
Patents are necessary to a License Customer’s benefit of a Code-related Registry
and Clearinghouse. Consequently, the benefit of the bargain set forth
in this Agreement requires the maintenance and enforcement of the Licensed
Patents pertaining to the Field of
Use. NeoMedia
shall therefore at all times during the Term take all steps necessary to
maintain and enforce the Licensed Patents pertaining to the Field of
Use.
5.3 Notification. NeoMedia shall inform
Neustar if any claims in a Licensed Patent pertaining to the Field of Use,
expire or are cancelled,
overturned, modified, or the subject of a legal, regulatory or administrative
challenge, within fourteen
(14)
days. NeoMedia shall also within fourteen (14) days inform Neustar should NeoMedia
acquire or be granted IPR related to the Field of Use, in which case the Parties
shall enter into good faith
negotiations for amending this Agreement, if reasonably
necessary, on mutually-agreeable commercial terms,
to include such acquired or
granted IPR in the definition of Licensed Patents. However, NeoMedia shall in no way be
obligated to include such IPR in this Agreement and, should the Parties not
modify this Agreement, this shall not constitute a breach of the
Agreement.
6. SUBLICENSE AGREEMENT AND
RESTRICTIONS
6.1 Sublicense
Agreement. Neustar shall enter into a written agreement with
Neustar Sublicense Customers for the sublicensing of the Licensed Patents pertaining to the Field of
Use. Neustar shall submit to NeoMedia Neustar’s sublicensing
terms and conditions in Neustar’s written template agreement with Neustar
Sublicense Customers for NeoMedia’s review and consent, which consent shall not
be unreasonably withheld, conditioned or delayed. If Neustar desires
to modify materially any sublicensing terms and conditions, then Neustar shall
submit those modifications in writing to NeoMedia for review and consent, which
consent shall not be unreasonably withheld, conditioned or
delayed. Neustar-proposed modifications to sublicensing terms and
conditions shall be deemed accepted by NeoMedia when (a) NeoMedia provides
Neustar with notice of acceptance of such modifications or (b) if NeoMedia fails
to provide written notice to Neustar of its objection, which objections sets
forth the reasons therefor, within fourteen (14) days. Neustar’s
billing and collection methods are reserved to its sole
discretion. Nothing herein shall be deemed to require Neustar to
commence legal proceedings, to engage a collections agency, or perform another
similar act, all of which is the ultimate obligation of Neustar.
6.2 Restrictions. Neustar
shall include in its written agreements with License Customers the following
restrictions:
(a) The grant
of a license to Licensed Patents pertaining to the Field of Use,
is non-transferable, non-sublicensable, and non-exclusive.
(b) The
Neustar Sublicense Customer’s use of the inventions set forth in claims in the
Licensed Patents is limited to License Customer’s internal business purposes in
interacting with the Clearinghouse and Registry.
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(c) NeoMedia
is a third-party beneficiary with respect to the xxxxxxxxxx.Xxxxxxx Sublicense Customer will agree
to indemnify, defend and hold Neustar, NeoMedia, their 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 Neustar Sublicense Customer pursuant to the License Agreement
or (ii) any breach of the License Agreement by Neustar License Customer, except
to the extent, in each case, that such Liability is caused by the negligence or
willful misconduct by Neustar or NeoMedia, respectively.
7. COMPENSATION
Compensation
is set forth in Exhibit A.
8. A NCILLARY
RESPONSIBILITIES
8.1 Accounting. Information concerning licensing,
sublicensing and revenues remains confidential to NeoMedia,
Neustar and the particular License Customer to which a license, sublicense,
and/or Transaction pertains. However, NeoMedia’s use of any data received
hereunder shall be limited to its own internal business
uses. By way of
clarification, and not limitation, NeoMedia is not permitted to disclose any
data provided to it under this Agreement, whether customer-specific or aggregate
in nature, to any third party, except as may be permitted or required
under Article 12 below . Neustar shall provide reports to
NeoMedia on a monthly basis in a format agreeable to the
Parties.
8.2 Audit. Each Party shall maintain (to the extent
possible under this Agreement) auditable records of revenues, licensing, sublicensing, accounts,
collections, payments, and Control Point Events (as defined below) with respect
to License Customers, and
maintain those records for at least three (3) years. Upon one (1) month’s prior written notice from a Party, the other Party shall make
such records available to the requesting Party and their designated professionals
including but not limited to Certified Public Accountant, consultant, or other
professional designated by
the requesting Party. The records shall be made available either
electronically and remotely through a secure interface or at a location
controlled by the Party receiving the request. Either Party may
invoke the audit rights hereunder no more than twice in any twelve (12) month
period. When an
audit is conducted at a Party’s location, the audit shall be performed only
during normal business hours. All audits shall be subject to
commercially reasonable security and other similar requirements. Any
audit invoked hereunder shall be limited in scope to all matters necessary to
examine compliance
with the terms and conditions related
thereof. All audits invoked hereunder shall be performed at the
requesting Party’s expense
unless the discrepancy in amounts due under this Agreement exceeded
ten percent (10%), in which case the other party shall pay the reasonable and
customary fees of the designated professionals and the actual costs of the
requesting party and their designated professionals.
8.3 Control
Point. If during
the Term of this Agreement Neustar deploys a Registry and Clearinghouse system,
then Neustar shall during the Term configure into such system the ability to
enable and disable the clearing of Transactions if either a Resolution Authority
or a License Customer fails to comply with either (a) policies issued by the
Governing Authority, (b) its written agreement with Neustar, or (c) terms and
conditions that
Neustar and
NeoMedia have agreed are to
be flowed down to Neustar agreements with its Neustar License
Customer. The
policies concerning the enabling and disabling of Transaction clearing (the
“Control
Point Policies”) shall be
developed and agreed to by the Parties within four (4) months after the award to
Neustar of a contract to implement a Clearinghouse in the
Territory. Neustar shall prevent Code-related Transactions that fail
to comply with the Control Point Policies. As part of the Control
Point Policies, Neustar and NeoMedia shall in good faith develop an escalation
process for bringing License Customer’s into compliance with the Control Point
Policy or terminating/suspending the License Customer’s
sublicense.
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8.4 Reporting. During the Term of this
Agreement, Neustar will create and provide to NeoMedia reporting capabilities
regarding Licensed
Transaction Revenues consisting of reports setting forth the
identity of the License Customer, frequency of Clearinghouse Transactions for
License Customers, type of License Customer, rate of the Transaction, types/use
classes to the extent these
require different pricing treatment (and possibly carrier) over specified
periods. NeoMedia may request additional reporting capabilities in
accordance with mutually-agreeable terms. Neustar shall provide to
NeoMedia access to a GUI over a secure connection to allow ad hoc reporting
(subject to reasonable requirements issued by Neustar’s engineering
department). Neustar shall not be obligated to provide to NeoMedia, and NeoMedia is not
entitled to receive (a) any Codes in a Neustar Registry or Clearinghouse
associated with any customer, or (b) the content or information associated with
those Codes unless the
codes or content are required under the scope of audit provisions described in
Section 8.2 above.
8.5 Sales, Marketing and
Cooperation. The
Parties shall cooperate in good faith with respect to the promotion of licensing
of the Licensed Patents in the context of a Neustar-administered Registry and
Clearinghouse. Neustar shall use commercially reasonable efforts to
promote the licensing of the Licensed Patents pertaining to the Field of
Use, including but not
limited to, content on Web sites, direct sales, trade show appearances, and
direct marketing through e-mail and other electronic means within its
control. NeoMedia shall promptly and fully provide to Neustar
supporting collateral, explanations, value propositions, and other similar
materials. Within one (1) month after the Effective Date of this
Agreement, the Parties shall develop a schedule for cooperative events listing
at least three events for which the Parties will cooperate to promote licensing
of the Licensed Patents.
8.6 Management. Each
Party shall promptly after the Effective Date designate in writing its business
point of contact under this Agreement. NeoMedia and Neustar shall
jointly perform periodic business reviews to review business practices and
performance.
8.7 Referral Fee As of the effective date of this
agreement NeoMedia will communicate to Neustar its current “Sales Prospects”.
NeoMedia is not obligated to update this list of Sales Prospects after the
Effective Date of this Agreement. If Neustar refers a third party to
NeoMedia who is not at the time of such referral a Sales Prospect of NeoMedia;
or has not subsequently become a Sales Prospect of NeoMedia; or has become a
customer of NeoMedia under a written agreement for services with NeoMedia , and
such third party purchases from NeoMedia services, such as campaign
management services, and that customer becomes a NeoMedia License Customer, but
NeoMedia does not request that Neustar account for that NeoMedia License
Customer through the License Collection Revenue as described in Section 7, then
NeoMedia shall pay to Neustar a Referral Fee equal to Ten Percent (10%) of
monies actually received by NeoMedia as payment, excluding taxes, late charges,
collection costs, credit card processing fees, credits, and amounts under
dispute, in the twenty-four-month period beginning with the month in which fees
are first received by NeoMedia. If, however, NeoMedia requests that
Neustar serve as a billing and collections agent with respect to such NeoMedia
License Customer, then Neustar is entitled to the Licensed Collection
Revenue for actions related to performing Clearinghouse Transactions plus the Referral Fee for monies associated
with NeoMedia services not related to Neustar’s performance of Clearinghouse Transactions; e.g., campaign management, and other services
provided by NeoMedia apart from the licensing of patents.
9. TERM
Subject to the limitations in Section
4.1, the Term of this
Agreement shall begin on its Effective Date, and shall continue in full force
and effect for four (4) years thereafter (with any renewals,
the “Term”). If neither Party provides
written notice to the other no later than three (3) months prior to the
expiration of the then-current Term that it does not intend for the Agreement to
renew, then the Agreement shall renew for additional an additional three (3)
year period. The expiration or termination of the Term shall not
affect the sublicense term granted by Neustar to a Neustar Sublicense
Customer.
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10. TERMINATION
Either Party may terminate this
Agreement, without prejudice to any other remedy it may have, immediately and
without further obligation upon the following with respect to the Party receiving the
termination notice:
(a) an Event
of Default;
(b) the making of an assignment for the benefit of
creditors;
(c) the filing under any voluntary
bankruptcy or insolvency law, under the reorganization or arrangement provisions
of the United States Bankruptcy Code, or under the provisions of any law of like
import, or the appointment of a trustee or receiver; and
(d) failure of Neustar to deploy into production a
Clearinghouse and Registry within twelve (12) months after the Effective
Date.
For purposes of item (d) immediately
above, deployment into production means the actual provision of the
Clearinghouse and Registry, or an announcement of a clear and unambiguous intent
to provide the Clearinghouse and Registry in an immediately deployable and
usable capability.
Termination of this Agreement shall not
relieve the Parties from their payment obligations, confidentiality and intellectual
property obligations, including indemnification thereof, under this
Agreement.
11. NON-COMPETITION
During the first twelve (12) months of the Term, and provided Neustar has not committed an Event of
Default, NeoMedia shall
neither entertain entering nor actually enter into any collaboration,
cooperation, subcontract, teaming, partnering, licensing, or similar arrangement
with any third party for the purpose of enabling the Field of Use in a system or
systems similar to the Clearinghouse or Registry within the Territory. Nothing contained in this Article 11,
or any other portion of this Agreement, restricts NeoMedia from licensing its
IPR or technology platform to additional NeoMedia License Customers outside the
Field of Use and outside the Territory at any time during the Term of this
Agreement.
12. CONFIDENTIAL
INFORMATION
12.1 Confidential
Information. Each Party acknowledges
that they may be furnished with, receive, or otherwise have access to
Confidential Information of the other Party. Confidential Information
excludes any information that the receiving Party can
demonstrate:
(a) at the time of disclosure, was in the
public domain or in the possession of the receiving Party;
(b) after disclosure, is published or
otherwise becomes part of the public domain through no fault of the receiving
Party;
(c) was received after disclosure from a
third party who had a lawful right to disclose such information to the receiving
Party without any obligation to restrict its further use or
disclosure;
(d) was independently developed by the
receiving Party without reference to Confidential Information of the disclosing
Party; or
(e) was required to be disclosed to satisfy
a legal requirement of a competent government body (e.g., securities laws or regulations
of the U.S. Securities & Exchange Commission).
12.2 Obligations. The obligations set forth
in this Article
12 with respect to
Confidential Information shall survive the expiration or termination of this
Agreement for a period of three (3) years or such longer period as required by
law, regulation, or court order.
(a) Each Party’s Confidential Information
shall remain the property of that Party. Each Party shall use at
least the same degree of care, but in any event no less than a reasonable degree
of care, to prevent unauthorized disclosure of Confidential Information as it
employs to avoid unauthorized disclosure of its own Confidential Information of
a similar nature. Except as otherwise permitted hereunder, the
Parties may disclose such information to entities performing services required
hereunder where: (i) use of such entity is authorized hereunder, (ii) such
disclosure is necessary or otherwise naturally occurs in that entity’s scope of
responsibility, and (iii) the entity agrees in writing to assume the obligations
described in this Article
12. Any
disclosure to such entity shall be under the terms and conditions of this
Article 12.
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(b) Each Party shall take reasonable steps
to ensure that its employees comply with this Article 12. In the event of any
disclosure or loss of, or inability to account for, any Confidential Information
of the disclosing Party, the receiving Party shall promptly, and at its own
expense notify the disclosing Party in writing, and take such actions as may be
necessary and cooperate in all reasonable respects with the disclosing Party to
minimize the violation and any damage resulting therefrom.
(c) Except as otherwise provided herein,
either Party may disclose the terms and conditions of this Agreement to (i) its
directors, officers, employees, consultants, auditors, accountant, lawyers,
subcontractors or agents and (ii) any other third parties that have expressed a
bona fide interest in consummating a significant financing, merger or
acquisition transaction between such third parties and such Party,
(iii) have a reasonable ability (financial
and otherwise) to consummate such transaction; provided that in either case
there exists a nondisclosure agreement that includes within its scope the terms
and conditions of this Article 12 or terms and conditions similar
thereto. Each Party shall endeavor to delay the disclosure of the
terms and conditions of this Agreement until the status of discussions
concerning such transaction warrants such disclosure.
(d) A Party receiving a request pursuant to
Section 12.1(e) above to disclose Confidential Information shall immediately
upon receiving such request, and to the extent that it may legally do so, advise
the disclosing Party promptly and prior to making such disclosure in order that
the disclosing Party may interpose an objection to such disclosure, take action
to assure confidential handling of the Confidential Information, or take such
other action as it deems appropriate to protect the Confidential
Information.
12.3 Trademarks
and Press Releases. Neither Party shall use the
trade names, trademarks, service marks, or other proprietary marks of the other
Party in any advertising, sales presentation, news releases, advertising, or
other promotional or marketing materials without such other Party’s prior
written consent, which shall not be unreasonably withheld. The
Parties shall issue a joint press release regarding their relationship under
this Agreement and shall cooperate to issue a mutually agreed press release
within a reasonable time after the Effective Date.
13. REPRESENTATIONS & WARRANTY
NeoMedia
hereby represents and warrants as follows:
(a) it is the
rightful owner of the Licensed Patents pertaining to the Field of
Use;
(b) the
Licensed Patents pertaining to the Field of Use,
are enforceable and shall remain in full force and effect during the Term
(except for the natural expiration of a patent term);
(c) Schedule
1 sets forth all pending or anticipated claims against the Licensed Patents pertaining to the Field of Use;
e.g., legal, regulatory, or administrative proceedings directed at cancelling, overturning, or modifying
any of the claims set forth in the Licensed Patents.
(d) at least
one claim in each Licensed Patent is directed at practicing the Field of
Use.
14. INDEMNIFICATION
Neustar
shall 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 Neustar’s breach of Articles 3, 4 or 6
of this Agreement, except to the extent, in each case, that such Liability is
caused by the negligence or willful misconduct by NeoMedia.
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NeoMedia
shall indemnify, defend and hold Neustar and its directors, officers, employees
and agents harmless from and against any and all Liability arising out of or
relating in any way to Neomedia’s breach of Article 4 and
Article 5 of this Agreement, except to the extent, in each case, that such
Liability is caused by the negligence or willful misconduct by
Neustar.
15. LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY BE LIABLE
TO THE OTHER FOR ANY LOST PROFITS, LOST DATA, OR LOST EQUIPMENT, ANY WEBSITE OR
NETWORK DOWNTIME, COST OF PROCURING SUBSTITUTE SERVICES, OR FOR ANY INCIDENTAL,
SPECIAL, CONSEQUENTIAL OR OTHER INDIRECT DAMAGES OF ANY KIND, HOWEVER ARISING,
WHICH ARE RELATED TO THIS AGREEMENT AND THE PROVISION OF LICENSES HEREUNDER,
EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES.
16. DISPUTE
RESOLUTION
16.1 Generally. Any
controversy, claim or dispute arising out of or relating to this Agreement or
the breach thereof, whether such claim is based on rights, privileges or
interests recognized by or based upon statute, contract, tort, common law or
otherwise (“Dispute”)
shall be settled as provided in this Article 16.
16.2 Initial
Attempts. If a Dispute arises, the Parties shall initially
attempt to resolve the Dispute informally, as follows:
(a) A
Party shall provide written notice of a Dispute (the “Dispute Notice”) to the other
Party which sets forth the nature of the Dispute and the relief
requested. Upon receipt of such Dispute Notice, the Parties each
shall appoint a designated representative who does not devote substantially all
of his or her time to performance under this Agreement and whose task its shall
be to meet for the purpose of attempting to resolve the Dispute.
(b) The
designated representatives shall meet as often as the Parties deem reasonably
necessary and shall gather information which the Parties deem to be appropriate
and germane to the Dispute. The representatives shall discuss the
Dispute and attempt to resolve it without the necessity of any formal
proceeding.
(c) A
Party may commence arbitration proceedings in accordance with Section 15.3 below
upon the earlier to occur of any of the following: (1) the designated
representatives reasonably conclude that an amicable resolution through
continued negotiation of the matter is unlikely; or (2) thirty (30) days after
delivery of the Dispute Notice or such longer period as may be agreed by the
Parties. No Party may commence arbitration with respect to any
Dispute unless that Party has pursued informal negotiation as provided
herein.
16.3 Arbitration. Any
Dispute that cannot be resolved by informal negotiations as set forth above
shall be settled by binding arbitration in accordance with the Commercial
Arbitration Rules of the American Arbitration Association (“AAA”) then in
effect. The arbitration shall take place in Washington
DC. The Parties shall share the costs of arbitration equally,
including the fees and expenses of the arbitrator unless the arbitration award
provides otherwise. Each Party shall bear the cost of preparing and
presenting its case. The arbitrator shall have no power or authority
to make awards or issue orders of any kind except as expressly permitted by this
Agreement, and in no event shall the arbitrator have the authority to make any
award that provides for punitive or exemplary damages. The arbitrator
shall use all reasonable means to settle the Dispute with dispatch and shall
state his or her opinion in writing along with his or her reasons for the
decision. The arbitrator’s decision shall follow the plain meaning of
the relevant documents, and shall be final and binding. The award may
be confirmed and enforced in any court of competent jurisdiction.
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16.4 Specific Performance.
Any Party may seek specific performance of this Article, and may seek to compel
the other Party to comply with such provisions by petition to any court of
general jurisdiction. The prevailing Party in any proceeding
enforcing such provisions shall be entitled to the court’s order for payment of
reasonable attorneys’ fees and costs in connection with such
proceeding.
16.5 Equitable
Relief. Nothing in this Article 16 shall preclude any Party
from seeking interim or provisional relief concerning the Dispute, including a
temporary restraining order, a preliminary injunction or an order of attachment,
either prior to or during the information dispute resolution or
arbitration.
16.6 Compromise. All
communications, whether oral, written or electronic, in any negotiation or
arbitration pursuant to this Article 16 shall be treated as confidential and as
compromise and settlement negotiations for purposes of applicable rules of
evidence.
16.7 Waiver of Jury
Trial. To the extent applicable, each Party waives any right
it may have to a trial by jury in any legal proceeding arising from or related
to this Agreement.
17. MISCELLANEOUS
17.1 Headings. The headings and captions
used in this Agreement are for convenience only and not intended to be used as
an aid to interpretation.
17.2 Severability. The provisions of this
Agreement are severable, and if any part of this Agreement is held to be illegal
or unenforceable, the validity of the remainder of this Agreement shall not be
affected.
17.3 Governing
Law. This Agreement shall be construed and interpreted in
accordance with the laws of the State of New York, USA, without regard to its
conflict of laws principles. In the event of litigation or any
collection activity arising out of the Services or this Agreement, the
prevailing party shall be awarded its costs and reasonable expert and attorneys’
fees.
17.4 Binding. This Agreement will be
binding upon and inure to the benefit of the Parties hereto, their respective
successors and assigns.
17.5 No
Waiver. Failure
by either party to exercise any right or remedy under this Agreement does not
signify acceptance of the event giving rise to such right or
remedy.
17.6 Notices. Unless otherwise agreed to
by the parties, any notice required or permitted to be given or delivered under
this Agreement shall be given in writing and delivered to the address set forth
in this Agreement, and addressed to the attention of:
If to
Neustar:
Neustar,
Inc.
00000
Xxxxxx Xxx Xxxxx
Xxxxxxxx,
XX 00000
Attention: General
Counsel
P: (000)
000-0000
F: (000)
000-0000
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If to
NeoMedia:
NeoMedia
Technologies, Inc.
Xxx
Xxxxxxxxx Xxxxxxx, Xxxxx 000
Xxxxxxx,
XX 00000
Attention:
CEO or CFO
P: (000)
000-0000 xxx.000
F: (000)
000-0000
17.7 Assignment. Neither Party may assign or
otherwise transfer, including by way of merger, acquisition or operation of law,
all or any portion of its rights or obligations under this Agreement without the
prior written consent of the other Party, which consent shall not be
unreasonably conditioned, withheld or delayed, except that either Party may
assign this Agreement upon notice, but without consent, to an
Affiliate. Any assignment or transfer in violation of this Section
shall be void and have no effect.
17.8 Force
Majeure. Except
for either party’s payment obligations hereunder, a party shall be excused from
any delay or failure in performance of their obligations hereunder to the extent
caused by reason of any occurrence or contingency beyond its reasonable control,
including but not limited to, acts of God, earthquake, labor disputes and
strikes, riots, acts of terrorism, war or other unanticipated occurrences or
problems, and governmental requirements (“Force Majeure
Events”).
17.9 Entire
Agreement. This Agreement along with
any Schedules, appendices or amendments hereto, represents the entire agreement
between NeoMedia and Neustar with respect to its subject matter, and there are
no other representations, understandings, or agreements between NeoMedia and
Neustar relative to such subject matter.
[THIS SPACE INTENTIONALLY LEFT
BLANK]
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By
signing below, the individuals signing this License Agreement represent that
they are duly authorized to execute and deliver this License Agreement on behalf
of the Party for which they have signed, effective as of the Effective
Date.
NEOMEDIA TECHNOLOGIES,
INC.
|
NEUSTAR,
INC.
|
|||||
By:
|
/s/
Xxxxxxx X. Xxxx
|
By:
|
/s/
Xxxxxxx X. Xxxxx
|
|||
Name:
|
Xxxxxxx
X. Xxxx
|
Name:
|
Xxxxxxx
X. Xxxxx
|
|||
Title:
|
Chief
Financial Officer
|
Title:
|
V.P.
Finance & Corporate Controller
|
|||
Date:
|
October
2, 2009
|
Date:
|
October
2, 2009
|
|||
Address:
|
Two
Concourse Parkway
|
Address:
|
00000
Xxxxxx Xxx Xxxxx
|
|||
Xxxxx
000
|
Xxxxxxxx,
Xxxxxxxx 00000
|
|||||
Xxxxxxx,
Xxxxxxx 00000
|
||||||
Fax:
|
(000)
000-0000
|
Fax:
|
(000)
000-0000
|
|||
E-Mail:
|
xxxxx@xxxx.xxx
|
E-Mail:
|
xxxxxxxxx@xxxxxxx.xxx
|
|||
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