INTELLECTUAL PROPERTY LICENSE AGREEMENT
English Translation
Exhibit 10.16
Exhibit 10.16
THIS INTELLECTUAL PROPERTY LICENSE AGREEMENT (“this Agreement”) is made and entered into by the
parties below in Hangzhou as of July 1, 2010:
Licensor: Hangzhou Dianneng Technologies Co., Ltd.
Address: Xxxx 000, 0# Xxxxxxxx, Xx.0000 Xxx Xx Xxxx, Hangzhou
Licensee: Hangzhou Sky Network Technologies Co., Ltd.
Address: 0X, Xx.00, Xxxx 0, Xxxxxxxxxx Xxxxxxxxx, Xxxxx Xxx-xxxxxxxx, Xxxxxxxx District, Hangzhou
The Licensor and the Licensee are hereinafter individually referred to as a “Party” and
collectively as the “Parties”.
WHEREAS,
| (1) | The Licensor is a company specialized in the research and development of computer and internet application technologies and communications technologies. | |
| (2) | The Licensee is mainly engaged in wireless value-added telecommunications services via mobile phones within the territory of the PRC (the “Licensee Business”) and obtains all the government approvals, authorizations, licenses, permits, registrations and filings required for it to carry on the Licensee Business in the PRC. | |
| (3) | Subject to the terms and conditions of this Agreement, the Licensor agrees to grant the Licensee a license to use a series of intellectual property (the “Licensed Intellectual Property”) developed by the Licensor for the Licensee Business, and the Licensee agrees to accept such license. |
NOW, THEREFORE, the Parties, after friendly negotiations, hereby agree as follows:
Article 1 Definitions
| 1.1 | Except as otherwise defined herein or otherwise required by the context, the terms used herein shall have the following meanings: |
| (1) | “Licensed Intellectual Property” means a series of intellectual properties licensed by the Licensor to the Licensee, the specific contents of which will be indicated by the Parties in the List of Licensed Intellectual Properties attached hereto as Annex 1, depending on the actual operation needs of the Licensee. |
| (2) | “Business Day” means any calendar day other than a Saturday, Sunday or other day on which the banks in the Territory are authorized or obligated by laws to close. | ||
| (3) | “Confidential Information” means any and all technologies, know-how, processes, finance, software, proprietary data, business secrets, industry practices, methodology, specifications and other proprietary information regarding the businesses and affairs of the Licensee, including confidential business and technical information, regardless of whether communicated in writing, orally or otherwise or provided before, on or after the date hereof. | ||
| (4) | “Intellectual Property” means any present and future intellectual property of the Licensor regarding the Licensee Business, including, but limited to, any patent, trademark, service xxxx, registered design, Confidential Information, domain name, utility model, copyright, invention, brand name, trade name and any similar right in any country both now and in the future, and the interests in the foregoing, whether registered or unregistered, including the applications for the granting of the foregoing and the rights to apply for the foregoing all over the world (subject to obligations) but excluding patents, marks and registered software. | ||
| (5) | “PRC” means the People’s Republic of China, for the purpose of this Agreement, excluding Hong Kong SAR, Macao SAR and Taiwan. | ||
| (6) | “Recipient” means the Party receiving the Confidential Information. | ||
| (7) | “RMB” means the lawful currency of the PRC. | ||
| (8) | “Territory” means the PRC. |
| 1.2 | Unless the context otherwise requires, any reference to an “article” or “annex” herein is to an article of or annex to this Agreement. |
Article 2 Grant of License
2.1 Grant of the License
Subject to the Licensee’s strict compliance with the terms hereof and the Licensor’s instructions,
the Licensor hereby grants the Licensee a non-exclusive and non-assignable license to use all and
any Licensed Intellectual Property to carry on the Licensee Business within the Territory, and the
Licensee hereby accepts such license.
2.2 Limitations of Rights
The license granted in respect of the Licensed Intellectual Property shall be used by the Licensee
only for the Licensee Business. Without the consent of the Licensor, the
Licensee shall neither use the Licensed Intellectual Property for any operational or
non-operational activity other than the Licensee Business within the Territory nor in any way,
directly or indirectly, authorize any third party to use the Licensed Intellectual Property. The
license granted to the Licensee is effective only within the Territory and the Licensee shall not
directly or indirectly use or permit other company, person, entity or organization to use the
Licensed Intellectual Property in other countries or regions, provided that the Licensed
Intellectual Property can be used at the website operated by the Licensee within the Territory but
accessible by the users outside the Territory.
2.3 Title
The Licensee acknowledges that the Licensed Intellectual Property is protected by relevant law, and
the Licensor has the right to use the Licensed Intellectual Property and be paid the proceeds
therefrom. The Licensee further acknowledges that its use of the Licensed Intellectual Property
does not confer on it any right, title or interest to or in the same. The Licensee guarantees that
it will not challenge the ownership of the Licensed Intellectual Property. Without the prior
written consent or authorization of the Licensor, the Licensee shall neither create (whether or not
published publicly) or make publicly available its other products with the contents, themes or
styles that are identical, similar or confusingly analogous to the Licensed Intellectual Property
within the Territory or elsewhere, nor attempt to obtain the rights in such other products.
2.4 Goodwill
The Licensee acknowledges the value of the relevant goodwill of the Licensed Intellectual Property
and confirms that all the rights in the Intellectual Property and the goodwill associated therewith
are exclusive to the Licensor.
Article 3 Payment of Royalty
3.1 Royalty
As a consideration for the granting of the Licensed Intellectual Property pursuant to the
provisions of Article 2, the Licensee shall, throughout the term of this Agreement, pay the royalty
(“Royalty”) to the Licensor, whose amount will be determined and notified in writing to the
Licensee (“Payment Notice”) by the Licensor depending on the actual use of the Licensed
Intellectual Property by the Licensee and paid by the Licensee within fifteen (15) days of the
giving of the Payment Notice by the Licensor. The Licensor reserves the right to determine or
adjust the charging standard on the basis of the actual operations of the Licensee. The Parties may
negotiate to increase the amount of the Royalty based on the Licensed Intellectual Property as
listed in Annex 1. The Licensor has the sole right to decide or waive the Licensee’s obligation to
pay the Royalty.
3.2 Payment
Within five working days of receiving the xxxx from the Licensor, the Licensee shall pay the
Royalty on a regular basis to the Licensor pursuant to the provisions of Article 3.1 hereof.
Article 4 Use of the Licensed Intellectual Property
4.1 Method of Use
The Licensee shall use the Licensed Intellectual Property in accordance with the rules as may be
issued by the Licensor from time to time or practices followed by the Licensor. The Licensee shall
not do, make or conduct any act that in any way impairs or adversely affects the validity,
copyright or value of any Licensed Intellectual Property. Furthermore, the Licensee shall carry on
the Licensee Business in a manner and according to a standard consistent with the standard applied
by the Licensor.
4.2 Limitations of Use
Without the prior consent or authorization of the Licensor, the Licensee shall not modify,
supplement, amend, update, make adaptations to, translate, make comments on, proofread or edit or
otherwise make derivatives of the Licensed Intellectual Property.
4.3 Inspection
For the purpose of ensuring the compliance with the standards as stated in Article 4.1 and Article
4.2 hereof, the Licensee shall permit the Licensor or its authorized representative to inspect the
method of operation of the Licensee Business upon reasonable notice to the Licensee, provided,
however, that any such inspection by the Licensor or its authorized representative shall not exempt
the Licensee from its obligations and liabilities for the quality of the Licensee Business
regarding its use of the Licensed Intellectual Property.
4.4 Cessation of Use
If the Licensor reasonably believes that the use of any Licensed Intellectual Property breaches the
standards as set forth in Article 4.1 and Article 4.2 hereof, the Licensor shall inform the
Licensee of the particulars of the nature of that breach. If the Licensee fails to cure that breach
within ten working days of the giving of the notice, the Licensor may demand the Licensee to fully
cease to use the Licensed Intellectual Property.
4.5 Indemnification
Subject to the provisions of Article 5.1 and Article 5.2 hereof, the Licensee shall indemnify and
hold harmless the Licensor, its agents, representatives, directors, officers and employees from and
against all the damages, expenses, costs (including, but not limited to, lawyer’s fees),
obligations or liabilities paid by the Licensor, its agents,
representatives, directors, officers and employees to a third party and directly connected with or
arising as a result of the use by the Licensee of the Licensed Intellectual Property.
Article 5 Claim Notice
5.1 Infringement of Third-party Rights
The Licensee shall promptly keep the Licensor informed about any claim or threatened claim of any
nature by a third party alleging that any use of any Licensed Intellectual Property by the Licensee
infringes upon its rights. The Licensor shall have all the proprietary rights to, at its sole
discretion, decide whether or not to defend any such claim. If the Licensor chooses to defend the
same, then the Licensor will be fully entitled to control the defense.
5.2 Infringement by Third Party
The Licensee shall promptly keep the Licensor informed about any information it receives in respect
of any infringement by any third party of any right in the relevant Licensed Intellectual Property
of the Licensor. The Licensor shall have all the proprietary rights to, at its sole discretion,
decide whether or not to initiate a lawsuit in respect thereof. If the Licensor chooses to bring a
lawsuit in respect of that infringement, then the Licensor will be fully entitled to control the
lawsuit.
5.3 Assistance of the Licensee
The Licensee shall provide the Licensor with all the assistance reasonably requested by it in
respect of any kind of right claim or lawsuit concerning the matters as set forth in Article 5.1
and Article 5.2 and solely bear all the costs and expenses incurred as a result thereof.
Article 6 Representations and Warranties
6.1 Representations of the Licensor
The Licensor makes the following representations and warranties to the Licensee, which shall be
deemed made throughout the term of this Agreement:
| (1) | The Licensor is a wholly foreign-owned enterprise duly organized and validly existing under the PRC laws; | |
| (2) | Licensor has the full corporate right and power to execute and perform this Agreement and has been duly authorized by all necessary corporate action to execute and perform this Agreement and its execution and performance hereof does not violate any legal or corporate restriction by which it is bound or affected; | |
| (3) | This Agreement, once executed, constitutes a legal, valid and binding obligation |
| enforceable against it in accordance with the terms hereof; and | ||
| (4) | All the information furnished by the Licensor or any of its agents, employees or representatives to the Licensee is true, complete and accurate in all material respects and not misleading. |
6.2 Representations of the Licensee
The Licensee makes the following representations and warranties to the Licensor, which shall be
deemed made throughout the term of this Agreement:
| (1) | The Licensee is a limited liability company duly organized and validly existing under the PRC laws and mainly specialized in the Licensee Business; | |
| (2) | The Licensee has obtained all the government approvals, authorizations, licenses, permits, registrations and filings necessary for the operation and development of the Licensee Business and guarantees to maintain their validity throughout the term of this Agreement; | |
| (3) | The Licensee has the full corporate right and power to execute and perform this Agreement and has been duly authorized by all necessary corporate action to execute and perform this Agreement and its execution and performance hereof does not violate any legal or corporate restriction by which it is bound or affected; | |
| (4) | This Agreement, once executed, constitutes a legal, valid and binding obligation enforceable against it in accordance with the terms hereof; and | |
| (5) | All the information furnished by the Licensee or any of its agents, employees or representatives to the Licensor is true, complete and accurate in all material respects and not misleading. |
6.3 Violation of Representations
Each Party shall indemnify and keep indemnified the other Party against any and all liabilities,
obligations, compensations, penalties, awards, lawsuits, expenses, costs and advances imposed on or
incurred by or claimed against the other Party arising as a result of or in connection with any
inaccuracy of its representations and warranties under Article 6.1 or Article 6.2 (as the case may
be) or any breach of or default under an provision or covenant hereunder.
Article 7 Confidentiality
7.1 General Obligations
Throughout the term of this Agreement and for a period of 5 years following termination or
expiration of this Agreement for any reason, the Licensee shall:
| (1) | keep the Confidential Information confidential; | |
| (2) | not disclose the Confidential Information to any third party, except with the prior written consent of the Party disclosing the same or pursuant to the provisions of Article 7.2 and Article 7.3; | |
| (3) | not use the Confidential Information for any purpose other than performing the obligations hereunder. |
7.2 Disclosure to the Recipients
To the extent being necessary for the purpose hereunder, the Licensee may disclose the Confidential
Information to its directors, officers, managers, partners, employees or legal, financial and
professional consultants (collectively the “Recipients”).
7.3 Obligations of the Recipients
The Licensee shall exercise its reasonable endeavors to ensure that each Recipient is aware of and
bound by all the confidentiality obligations of the Licensee hereunder as if such Recipient is a
party hereto.
7.4 Exceptions
The provisions of Article 7.1 shall not apply to:
| (1) | any Confidential Information that has been or will be part of publicly available knowledge and which is not disclosed as a result of the breach of this Agreement by, or under the directions of, the Licensee or any of its Recipients; | |
| (2) | any disclosure made by the Licensee under requirement of any applicable law, regulation or any regulatory body or in accordance with the applicable rules of any stock exchange, provide, however, that relevant disclosure shall be limited to the scope required by applicable laws or regulations, and if possible, the Licensor shall be given the opportunity to review and put forth opinions on the contents to be disclosed prior to the disclosure thereof; and | |
| (3) | any disclosure made by the Licensee in accordance with any applicable law or government regulation or judicial or regulatory proceeding, or in the judicial, regulatory or arbitration proceedings of any legal action, suit or procedures arising out of or related to this Agreement, provide, however, that relevant disclosure shall be limited to the scope required by applicable laws or regulations, and if possible, the Licensor shall be given the opportunity to review and put forth opinions on the contents to be disclosed prior to the disclosure thereof. |
Article 8 Term and Termination
8.1 Term
This Agreement shall become effective upon execution by the Parties as of the date first above
written. Unless prematurely terminated by the Licensor pursuant to the provisions of Article 8.2
hereof or with the mutual consent of the Parties in writing, this Agreement shall be valid for ten
(10) years or until the expiry of the valid term of the Intellectual Property, whichever is the
earlier. The term of this Agreement may be extended with the prior written consent of the Parties.
8.2 Termination
The Licensor may at its sole discretion terminate this Agreement upon one month’s notice. The
Licensor may immediately terminate this Agreement upon giving the Licensee written notice for that
purpose if:
| (1) | The Licensor’s rights in the Licensed Intellectual Property are prejudiced for any reason under any circumstance, or the Licensor ceases to have the right to license or sublicense the Licensee to use any Licensed Intellectual Property for any reason; | |
| (2) | The Licensee breaches any obligation, provision or condition hereunder or under any relevant document and fails to cure that breach within 30 calendar days of the giving by the Licensor of relevant written notice to the Licensee; or | |
| (3) | the Licensee winds up its business, becomes insolvent or bankrupt or goes into any liquidation or dissolution proceedings, or is incapable of paying the debts as they fall due or is dissolved in accordance with law. |
8.3 Actions upon Termination
Following the termination of this Agreement, the Licensee shall immediately cease to use the
Licensed Intellectual Property for any purpose. Within one business day after termination, the
Licensee shall remove any and all Licensed Intellectual Property and Confidential Information from
any relevant memory device and destroy or return all the documents, materials, software or other
tangible media incorporating any Licensed Intellectual Property or Confidential Information. If the
License chooses to destroy relevant documents and materials, upon destruction, one duly authorized
officer shall certify in writing to the Licensor that the Licensee has duly performed such
destruction.
8.4 Remedy
The Licensee shall have no right to claim any loss (including loss of business or revenue) suffered
by it as a result of the termination of this Agreement from the Licensor for whatever reason. The
termination of this Agreement shall be without prejudice to any right or remedy of any Party
accrued up to the date of termination.
Article 9 Quality
9.1 Quality
The Licensee shall exercise its reasonable best efforts to improve the quality of its business so
as to protect and enhance the goodwill of the Intellectual Property.
Article 10 Notices
10.1 All the notices hereunder shall be delivered by personal delivery, facsimile or registered
mail to the addresses below, unless modified by a written notice. The notices shall be deemed duly
served: if sent by registered mail, on the signing date as indicated on the receipt of registered
mail; if delivered by personal delivery or transmitted by facsimile, on the day of delivery or
transmission. If transmitted by facsimile, the originals of notices shall be delivered to the
following addresses by registered mail or hand delivery immediately after transmission.
Licensor: Hangzhou Dianneng Technologies Co., Ltd.
Address: Xxxx 000, 0# Xxxxxxxx, Xx.0000 Xxx Xx Road, Hangzhou
Tel.: 0000-00000000
Fax: 0000-00000000
Attn.: Tao Song
Licensee: Hangzhou Sky Network Technologies Co., Ltd.
Address: 0X, Xx.00, Xxxx 0, Xxxxxxxxxx Xxxxxxxxx, Xxxxx Xxx-xxxxxxxx, Xxxxxxxx District, Hangzhou
Tel.: 0000-00000000
Fax: 0000-00000000
Attn.: Tao Song
Article 11 Miscellaneous
11.1 Governing Law
The rights and obligations of the Parties hereunder and any relevant claims or disputes shall be
governed by the PRC laws, without reference to its choice of law principles.
11.2 Dispute Resolution
Any dispute arising in connection with the interpretation and performance of the provisions hereof
shall first be resolved by the Parties by amicable consultation and if no agreement regarding such
dispute can be reached within thirty (30) days after a Party
gives the other Party written notice requiring such dispute to be resolved by consultation, any
Party may refer their dispute to the China International Economic and Trade Arbitration Commission
(“CIETAC”) for arbitration in Beijing in accordance with CIETAC’s arbitration rules then in effect.
The language to be used in the arbitration proceedings shall be Chinese. The arbitral award shall
be final and binding upon the Parties.
11.3 Severability
11.3 If any one or more of the provisions contained in this Agreement is held invalid, illegal or
unenforceable in any respect under any applicable laws or regulations, the relevant provisions
shall be severable from this Agreement and the validity, legality and enforceability of the
remaining provisions contained herein shall not in any respect be affected or impaired thereby. The
Parties shall in such an instance negotiate in good faith and try to replace the invalid, illegal
or unenforceable provision(s) with valid provision(s), the economic effect of which comes as close
as possible to that of the invalid, illegal or unenforceable provision(s).
11.4 Waiver
No failure or delay by any Party in exercising any right, power or remedy hereunder shall operate
as a waiver thereof, nor will any single or partial exercise thereof preclude any other or further
exercise thereof or the exercise of any other right, power or remedy. Without limiting the
foregoing, no waiver by any Party of any breach by the other Party of any provision herein shall be
construed as a waiver of any subsequent breach thereof or of any other provision herein.
11.5 Assignment
Neither Party may assign this Agreement without the prior written consent of the other Party.
11.6 Registration and Filing
Within three months after the execution of this Agreement, the Licensor shall have the counterpart
of this Agreement or any other agreement reached between the Parties for the purpose of the
performance of this Agreement registered and filed with the relevant PRC intellectual property
office.
11.7 Entire Agreement.
This Agreement between the Licensee and the Licensor constitutes the entire agreement between the
Parties with respect to the transaction contemplated herein. The Parties specifically state that no
amendments to this Agreement shall be binding unless reduced to writing.
11.8 Survival
The provisions hereof (including, but not limited to the warranties contained in Article 6), if not
fully performed on the date hereof, shall remain in full force after the execution of this
Agreement.
11.9 Amendments
No amendments, modifications or supplements to this Agreement may be made except by a written
instrument duly executed by the Parties.
11.10 Annexes
The annexes attached hereto are made an integral part of this Agreement and have the same legal
effect as this Agreement.
11.11 Counterparts
This Agreement may be executed in one or more counterparts, all of which, once executed, together
constitute one and the same instrument.
[THE REMAINDER OF THIS PAGE IS INTENTIONALLY LEFT BLANK]
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by their respective
authorized representatives on and as of the date and year first above written.
Licensor: Hangzhou Dianneng Technologies Co., Ltd.
[seal: Hangzhou Dianneng Technologies Co., Ltd.]
By:
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/s/ Tao Song
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Name: |
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Position: |
Licensee: Hangzhou Sky Network technologies Co., Ltd.
[seal: Hangzhou Sky Network technologies Co., Ltd.]
By:
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/s/ Tao Song
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Name: |
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Position: |
Annex 1
List of Licensed Intellectual Properties
