CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR CERTAIN REDACTED PROVISIONS OF
THIS AGREEMENT. THE REDACTED PROVISIONS ARE IDENTIFIED BY THREE ASTERISKS
ENCLOSED BY BRACKETS AND UNDERLINED. THE CONFIDENTIAL PORTION HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
Exhibit 10.5
Technology and Trademark License Agreement
This Technology and Trademark License Agreement ("Agreement") is
entered into effective as of April 26, 2000 ("Effective Date") by and between
▇▇▇.▇▇▇, Inc., a Delaware corporation ("▇▇▇.▇▇▇") and BuyNow, Inc. a Delaware
corporation ("Licensee").
WHEREAS, ▇▇▇.▇▇▇ owns and operates an Internet superstore and, in
connection therewith, ▇▇▇.▇▇▇ has developed and uses the Licensed Technology,
and ▇▇▇.▇▇▇ is the owner of the Licensed Marks;
WHEREAS, Licensee is formed as a wholly owned subsidiary of ▇▇▇.▇▇▇ to
launch an outsource retail fulfillment business;
WHEREAS, ▇▇▇.▇▇▇ has distributed a 75% ownership interest in Licensee
to the stockholders of ▇▇▇.▇▇▇; and
WHEREAS, Licensee desires to obtain, and ▇▇▇.▇▇▇ desires to grant to
Licensee a license to use the Licensed Technology and Licensed Marks, to conduct
the Licensee Business in the Territory, on the terms and conditions specified
herein;
NOW, THEREFORE, in consideration of the mutual promises and covenants
contained in this Agreement, and intending to be legally bound, the parties
hereto mutually agree as follows:
1. DEFINITIONS.
1.1. "Enhancement" means those changes or additions to the Licensed
Technology that add new functions or modify performance thereto by
changes in design or coding. As a matter of clarity, the
"Enhancement" shall [***] and shall not include [***] thereto.
--- ---
1.2. "Defect" means any failure of the Licensed Technology to
substantially perform in accordance with the corresponding situation.
1.3. "Licensed Marks" means the trademarks, service marks, trade names,
logos, brands, domain names and other marks of ▇▇▇.▇▇▇ listed on
Exhibit B, and all variants and derivatives thereof including, but
---------
not limited to, foreign language equivalents, transliterations,
visual and phonetic equivalents and truncated forms, as used in
connection with Licensee Business.
1.4. "Licensee Business" means the Internet outsource retail fulfillment
business operated by Licensee through the Licensee Site, that
provides [***] services directly and solely for (i) [***]; (ii)
--- ---
companies or entities whose primary business is to [***]; or
---
(iii) companies or entities that operate [***]. The definition of
---
Licensee Business may be expanded only upon the express written
approval of ▇▇▇.▇▇▇'s Chief Executive Officer using the form attached
hereto as Exhibit C which written approval shall serve as an
---------
amendment to this Agreement.
1.5. "Licensed Technology" means (i) the software (in source code and
object code) designs, specifications, data, inventions (whether
patentable or not), discoveries, works of authorship, techniques,
processes, methods, plans and other technology listed on Exhibit A,
---------
(ii) the related specifications, manuals and documentation made
available by ▇▇▇.▇▇▇, in any medium, and (iii) all Proprietary Rights
therein.
1.6. "Licensee Site" means the Internet site through which the Licensee
Business shall be conducted in the Territory accessible through the
URL ▇▇▇.▇▇▇▇▇▇.▇▇▇ or any other URL needed as part of the Licensee
--------------
Business
[***] Confidential treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
1
1.7. "Modification" means modifications or revisions to the Licensed
Technology that correct Defects therein.
1.8. "Proprietary Rights" means all patent rights including, but not
limited to, any rights in a U.S. Patent Application entitled "System
and Method of Processing On-Line Transactions" which was filed on
April 7, 2000 and claims priority to U.S. Provisional Patent
Application No. 60/163,883 filed on November 5, 1999 ("the Patents"),
as well as all copyright rights, trademark rights, trade secret
rights, rights of publicity, rights of privacy, moral rights and
other intellectual property or proprietary rights anywhere in the
world.
1.9. "Territory" means anywhere in the world.
2. TECHNOLOGY LICENSE.
2.1. License Grant. Subject to the terms and conditions of this
-------------
Agreement, ▇▇▇.▇▇▇ grants Licensee, under ▇▇▇.▇▇▇'s Proprietary
Rights in the Licensed Technology, a royalty-free, non-exclusive
license to install, use, reproduce, display, perform, Modify and
create derivative works of the Licensed Technology, [***]
---
(Technology License"). The Technology License may not be [***];
---
provided, however, the Technology License [***], but only if the
---
the [***] between the (i) [***], (ii) is [***], (iii) provides that
--- --- ---
[***], (iv) provides that all [***], (v) provides that the [***],
--- --- ---
(vi) provides for [***] to any [***] and (vii) provides for such
--- ---
other [***] confidentiality that are reasonably necessary [***].
--- ---
Notwithstanding the foregoing, the [***] in this Section 2.1 shall
---
[***] (i) the [***] in connection with [***] or (ii) the date that
--- --- ---
[***].
---
2.2. Covenant and Representations. Except as unambiguously provided
----------------------------
herein, and as conditions of the Trademark License (as defined in
Section 4) and the Technology License, Licensee represents, warrants
and agrees to each of the following:
2.2.1. Licensee will not grant or purport to grant any right, title
and interest, lien or option in any Licensed Technology, or
in any Proprietary Rights therein.
2.2.2. Licensee will not violate in any material respect any
applicable laws, rules, regulations (including export
regulations) pertaining to the conduct of the Licensee
Business.
2.2.3. Licensee's employees and consultants, as applicable, have at
all times executed written non-disclosure, assignment of
rights and other appropriate agreements sufficient to protect
the confidentiality of the Licensed Technology, and
sufficient to allow Licensee to grant the assignments and
licenses to ▇▇▇.▇▇▇ that are herein provided.
2.3. Copies and Notices. Licensee will not delete, alter, add or fail to
------------------
reproduce any copyright, trade secret or other proprietary notice
specified by ▇▇▇.▇▇▇ at any time for the Licensed Technology
(including notices required on documentation, magnetic media
containers, printed listings and programming code). Upon request,
Licensee shall keep ▇▇▇.▇▇▇ informed as to the physical location of
each copy and, upon request, permit the inspection thereof by ▇▇▇.▇▇▇
or its designee. This Section 2.3 shall not require any of Licensee's
customers to place any of ▇▇▇.▇▇▇'s trademarks on their web sites.
2.4. Licensee shall pay for the cost of prosecuting the Patents and any
corresponding foreign patent rights; provided however, that if
▇▇▇.▇▇▇ licenses the Patents to another party, Licensee shall be
refunded such Patent prosecution costs upon ▇▇▇.▇▇▇'s receipt of any
royalties from such third party. As regards to filing of foreign
patent applications corresponding to the Patents, ▇▇▇.▇▇▇ shall
designate that country or those countries, if any, in which ▇▇▇.▇▇▇
desires foreign patent application(s) to be filed. Such United States
and foreign prosecution shall be by counsel of ▇▇▇.▇▇▇'s choosing and
shall be in the name of ▇▇▇.▇▇▇. If ▇▇▇.▇▇▇ decides to allow any such
[***] Confidential treatment has been requested for the bracketed portions. The
---
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
2
issued patent, or pending application, reexamination, reissue or
extension to lapse or go abandoned (e.g., by not paying a fee or by
not responding to a patent office communication), ▇▇▇.▇▇▇ shall to
give Licensee notice of such decision sixty (60) days prior to any
non-extensible deadlines and Licensee can choose to take action to
maintain such rights in ▇▇▇.▇▇▇'s name.
3. REVISIONS; SUPPORT
3.1. Revisions. ▇▇▇.▇▇▇ is not under any obligation to revise or update
---------
the Licensed Technology, correct any errors in the Licensed
Technology, or maintain or support it in any way.
3.2. Maintenance and Support. ▇▇▇.▇▇▇ will provide Licensee with the
-----------------------
following support:
(i) ▇▇▇.▇▇▇ Software: ▇▇▇.▇▇▇ will provide to Licensee, until
----------------
July 1, 2000, consulting services via telephone and e-mail
support during regular business hours, with respect to the
Licensed Technology. If requested by Licensee, such
technical support may be expanded on a case-by-case basis to
include services other than telephone and e-mail support,
but only upon written consent of ▇▇▇.▇▇▇.
(ii) Support Fees: Licensee shall reimburse ▇▇▇.▇▇▇ for all
------------
support and service provided to Licensee.
3.3. Appointment of Representative. To assist in the transfer of Licensed
-----------------------------
Technology, and to monitor Licensee's compliance with the terms of
this Agreement, ▇▇▇.▇▇▇ shall have the right to designate a technical
representative to observe the operations of Licensee at any time upon
reasonable advance notice. Licensee will permit such observation and
provide such additional cooperation and support as is reasonably
requested.
4. TRADEMARK LICENSE
4.1. License Grant. ▇▇▇.▇▇▇ grants Licensee, during the term of this
-------------
Agreement, an exclusive, non-transferable, non-sublicensable, royalty
free license to use and display the Licensed Marks, only in
connection with the advertising and operation of the Licensee
Business within the Territory ("Trademark License"). Licensee hereby
acknowledges and agrees that (i) except for the license rights
expressly granted herein, Licensee has no rights, title or interest
in or to the Licensed Marks, and (ii) all goodwill arising out of the
use of the Licensed Marks by Licensee shall inure to the benefit of
▇▇▇.▇▇▇.
4.2. No Variation. Licensee will use the Licensed Marks exactly as
------------
specified in Exhibit B, in accordance with the orientation, legends
---------
and markings that are reasonably specified by ▇▇▇.▇▇▇ from time to
time. In no event shall Licensee use or display (or allow others to
use or display) any Licensed ▇▇▇▇, or any ▇▇▇▇ confusingly similar
thereto, or any service ▇▇▇▇, trademark trade name, brand or logo
containing the word "buy" or "buynow" in any part of the Territory,
except as expressly authorized in this Agreement.
4.3. Quality Standards. Licensee shall adhere to all operating,
-----------------
merchandising and advertising policies, standards and requirements,
and such other quality standards that are established by ▇▇▇.▇▇▇ for
▇▇▇.▇▇▇'s use of their ▇▇▇.▇▇▇ marks. Notwithstanding the foregoing,
▇▇▇.▇▇▇ shall have the right to review Licensee's use of the Licensed
Marks from time to time and upon request Licensee shall provide
complete samples of such usage.
4.4. Supervision/Control. Licensee shall supervise, manage and control
-------------------
its use of the Licensed Marks to ensure compliance with this
Agreement and preserve the value of the Licensed Marks and the
goodwill associated therewith. Licensee shall be solely responsible
for all costs associated with
[***] Confidential treatment has been requested for the bracketed portions. The
---
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
3
such supervision and control. Licensee shall establish and implement
appropriate operating methods and procedures to prevent misuse or
unauthorized use of the Licensed Marks in the Territory, and shall
provide a copy of same to ▇▇▇.▇▇▇ upon request.
4.5. Registration. Licensee will determine whether and in what
------------
territories to file and prosecute applications to register and
maintain registrations for the Licensed Marks. Licensee shall
coordinate with ▇▇▇.▇▇▇, and ▇▇▇.▇▇▇ shall file and prosecute such
applications and registrations in the territories requested by
Licensee, provided that Licensee reimburses ▇▇▇.▇▇▇ for all costs and
expenses incurred in such applications and registrations within a
reasonable period of time. Licensee agrees that it will not challenge
the validity of, or oppose, any registration by ▇▇▇.▇▇▇ for any
▇▇▇.▇▇▇ trademark, service ▇▇▇▇, logo, brand or other ▇▇▇▇
(including, without limitation, any trademark or domain name
incorporating the term "Buy"), nor bring any claim adverse to ▇▇▇.▇▇▇
regarding any such ▇▇▇▇. Licensee shall provide such assistance and
cooperation as deemed necessary by ▇▇▇.▇▇▇ to procure and maintain
applications and registrations for the Licensed Marks, and to record
▇▇▇.▇▇▇'s status as the owner of same.
4.6. Covenant and Representations of Licensee. Except as unambiguously
----------------------------------------
permitted herein, and as conditions of the Trademark License and the
Technology License, Licensee represents, warrants and agrees to each
of the following:
4.6.1. Licensee shall conduct the Licensee Business in a manner that
reflects favorably at all times on the reputation of ▇▇▇.▇▇▇,
and the goodwill associated with the Licensed Marks.
4.6.2. Licensee shall not engage in any deceptive, misleading or
unethical practices, or any other business practices that are,
or might be, detrimental to ▇▇▇.▇▇▇, the goodwill associated
with the Licensed Marks, or the public, including, without
limitation, any disparagement of ▇▇▇.▇▇▇ or any products or
services of ▇▇▇.▇▇▇.
4.6.3. Licensee shall make no false or misleading statements about
the Licensee Business or ▇▇▇.▇▇▇ or its business, or about any
product or service provided under the Licensee Business, and
Licensee shall not publish or employ any misleading or
deceptive advertising material respecting such services and
products.
4.6.4. The Licensee Site shall not contain any content or information
that infringes on the intellectual property or other
proprietary rights of any third party, or that is disparaging,
obscene, defamatory, libelous, slanderous or discriminatory,
or that is materially false or misleading, or that refers in
an offensive manner to the gender, race or ethnicity of any
person or group.
4.6.5. Licensee will not use any Licensed ▇▇▇▇ in connection with the
promotion, sale or offer for sale, of any product or service
offered by ▇▇▇.▇▇▇, without the prior written consent of
▇▇▇.▇▇▇.
4.6.6. Licensee shall not use any trademark, word, symbol, letter,
design or layout in combination with any Licensed ▇▇▇▇ that
violates any third party copyright, trademark, service ▇▇▇▇,
trade dress or other rights.
4.6.7. Licensee shall not make any reference to Licensee's
relationship with ▇▇▇.▇▇▇ to any vendor, distributor or other
business partner of ▇▇▇.▇▇▇ in an effort to obtain
preferential treatment or gain favorable treatment or other
business advantages from such vendors, distributors or
business partners without previously coordinating with
▇▇▇.▇▇▇'s senior management. In addition, Licensee will not
otherwise conduct itself
[***] Confidential treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
4
in a way that would adversely affect ▇▇▇.▇▇▇'s business
relationships with any vendors, distributors or other business
partners.
4.6.8 Licensee shall not [***]. Notwithstanding the foregoing, [***]
--- ---
upon the earlier of (i) [***] in connection with [***] (ii)
--- ---
date that [***].
---
5. PROPRIETARY RIGHTS
5.1. Ownership of Licensed Technology and Licensed Marks. Subject to the
---------------------------------------------------
license herein granted to Licensee, as between the parties, ▇▇▇.▇▇▇
is the sole owner of all right, title and interest in (i) the
Licensed Technology including, without limitation, all Modifications
thereto (by whomever produced), and all related documentation and
materials, and all copies thereof, (ii) all of ▇▇▇.▇▇▇'s service
marks, trademarks, trade names, logos, brands and other marks
including, without limitation, the Licensed Marks, and (iii) all
Proprietary Rights in the foregoing. Licensee agrees not to take any
action challenging or opposing, on any grounds whatsoever, the
ownership by ▇▇▇.▇▇▇ of the Licensed Technology or Proprietary
Rights. Furthermore, Licensee agrees not to contest the validity or
enforceability, or assist or request any third party to contest the
validity or enforceability of any of the Licensed Technology or
Proprietary Rights, in any judicial, governmental, or quasi-
governmental suit or proceeding; and not to request reexamination, or
assist or request any third party to request reexamination of any of
the Patents. Licensee is the sole owner of all right, title and
interest in all Enhancements.
5.2. Validity of Marks. Licensee hereby acknowledges the validity of
-----------------
▇▇▇.▇▇▇'s rights in the Licensed Marks. Licensee shall not, during or
after the term of this Agreement, directly or indirectly take any
action, or aid or assist any other party to take any action which
would infringe upon, harm or contest the validity of ▇▇▇.▇▇▇'s right,
title or interest in any Licensed ▇▇▇▇.
5.3. Cooperation. Licensee agrees to perform, during and after the term
-----------
of this Agreement, all reasonable acts deemed necessary or desirable
by ▇▇▇.▇▇▇ to permit and assist it in evidencing, perfecting,
obtaining, maintaining, defending and enforcing its Proprietary
Rights in the Licensed Technology and the Licensed Marks in any and
all countries. Such acts may include, but are not limited to,
execution of assignments and documents acknowledging ▇▇▇.▇▇▇'s
ownership and rights, and cooperation with ▇▇▇.▇▇▇ in the prosecution
or defense of any infringement action.
6. FURTHER COVENANTS
6.1. Non-Compete. The parties shall comply with the terms and conditions
-----------
set forth in the Non-Competition Agreement dated April 26, 2000 which
is incorporated by reference herein.
6.2. Compliance with Laws. Licensee shall conduct the Licensee Business
--------------------
in compliance with all applicable laws, ordinances, regulations and
other requirements of any governmental body.
7. CONFIDENTIALITY
7.1. Each party (the "Receiving Party") agrees to keep confidential and
not disclose or use except in performance of its obligations under
this Agreement, confidential or proprietary information related to
the other party's (the "Disclosing Party") technology or business
that the Receiving Party learns in connection with this Agreement and
any other information received from the other, including without
limitation, to the extent previously, currently or subsequently
disclosed to the Receiving Party hereunder or otherwise: information
relating to products or technology of the Disclosing Party or the
properties, composition, structure, use or processing thereof, or
systems therefor, or to the Disclosing Party's business (including,
without limitation, computer programs, code, algorithms, schematics,
data, know-how, processes, ideas, inventions (whether patentable or
not), all information relating to customers and customer transactions
and other technical, business,
[***] Confidential treatment has been requested for the bracketed portions. The
---
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
5
financial, customer and product development plans, forecasts,
strategies and information), all of the foregoing, ("Confidential
Information"). The Disclosing Party must identify Confidential
[***] Confidential treatment has been requested for the bracketed portions. The
---
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
6
Information as such at the time of disclosure by marking it (if in
written form) in a conspicuous place or (if disclosed orally), by
reducing it to written form and so marking it within thirty (30) days
of the oral disclosure. Neither party shall disclose the terms of
this Agreement to any third party without the prior written consent
of the other party, except as to Licensee, in connection with any
financing event in which Licensee is trying to issue equity
securities to a third party investor or in connection with filing a
Registration Statement on form S-1, including any amendments thereto,
with the Securities and Exchange Commission. Each party shall use
reasonable precautions to protect the other's Confidential
Information and employ at least those precautions that such party
employs to protect its own confidential or proprietary information.
Confidential Information shall not include information that (a) is in
or (through no improper action or inaction by the Receiving Party or
any affiliate, agent or employee) enters the public domain (and is
readily available without substantial effort), or (b) was rightfully
in the Receiving Party's possession or known by it prior to receipt
from the Disclosing Party, or (c) was rightfully disclosed to the
Receiving Party without restriction by another person not under
obligations of confidentiality to the Disclosing Party, or (d) was
independently developed by it by persons without access to and
without use of any Confidential Information of the Disclosing Party.
Each party, with prior written notice to the Disclosing Party, may
disclose Confidential Information to the minimum extent possible that
is required to be disclosed to a governmental entity or agency in
connection with seeking any governmental or regulatory approval, or
pursuant to the lawful requirement or request of a governmental
entity or agency (including a court order or subpoena), provided that
prompt notice thereof is given to the Disclosing Party and reasonable
measures are taken to guard against further disclosure, including
without limitation, seeking appropriate confidential treatment or a
protective order, or assisting the Disclosing Party to do so.
7.2. The Receiving Party acknowledges and agrees that due to the unique
nature of the Disclosing Party's Confidential Information, there may
be no adequate remedy at law for any breach of its obligations
hereunder, that any such breach may allow the Receiving Party or
third parties to unfairly compete with the Disclosing Party resulting
in irreparable harm to the Disclosing Party, and therefore, that upon
any such breach or any threat thereof, the Disclosing Party shall be
entitled to appropriate equitable relief in addition to whatever
remedies it might have at law, and to be indemnified by the Receiving
Party from any loss or harm, including without limitation, lost
profits and attorney's fees, in connection with any breach or
enforcement of the Receiving Party's obligations hereunder or the
unauthorized use or release of any such Confidential Information. The
Receiving Party will notify the Disclosing Party in writing
immediately upon the occurrence of any such unauthorized release or
other breach. Any breach of this Section will constitute a material
breach of this Agreement.
8. DISCLAIMER AND LIMITATION OF LIABILITY
8.1. Disclaimer of Warranties. THE LICENSED TECHNOLOGY (INCLUDING ALL
------------------------
RELEASES AND OTHER MODIFICATIONS), AND THE LICENSED MARKS ARE
PROVIDED "AS IS" WITHOUT ANY WARRANTY OF ANY KIND INCLUDING, WITHOUT
LIMITATION, ANY WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE AND NON-INFRINGEMENT. ▇▇▇.▇▇▇ DOES NOT WARRANT THAT THE
LICENSED TECHNOLOGY IS ERROR-FREE OR THAT IT WILL OPERATE WITHOUT
INTERRUPTION, OR THAT IT WILL CORRECTLY PROCESS TIME AND DATE
INFORMATION. ▇▇▇.▇▇▇ DOES NOT WARRANT, GUARANTEE OR MAKE ANY
REPRESENTATION REGARDING THE USE, OR THE RESULTS OF THE USE OF THE
LICENSED TECHNOLOGY INCLUDING, WITHOUT LIMITATION, THE CORRECTNESS,
ACCURACY OR RELIABILITY OF SUCH USE OR RESULTS, OR ITS COMPLETENESS
OR SUITABILITY FOR THE LICENSEE BUSINESS. LICENSEE ACKNOWLEDGES AND
AGREES THAT ▇▇▇.▇▇▇ IS NOT RESPONSIBLE FOR AND WILL HAVE NO LIABILITY
FOR HARDWARE, SOFTWARE, OR OTHER ITEMS OR ANY SERVICES USED WITH THE
LICENSED TECNOLOGY.
7
8.2. Limitation of Liability. NEITHER PARTY WILL BE LIABLE WITH RESPECT TO
-----------------------
ANY SUBJECT MATTER OF THIS AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE,
STRICT LIABILITY OR OTHER LEGAL OR EQUITABLE THEORY FOR ANY LOST DATA
OR OTHER SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY
CHARACTER, INCLUDING, WITHOUT LIMITATION, COMPUTER FAILURE OR
MALFUNCTION, LOSS OF DATA, OR ANY AND ALL OTHER COMMERCIAL DAMAGES OR
LOSSES, EVEN IF THE OTHER PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF
SUCH DAMAGES.
9. INFRINGEMENT, INDEMNIFICATION AND INSURANCE
9.1. Infringement. Licensee shall promptly notify ▇▇▇.▇▇▇ in the event that
------------
it knows or has reason to believe that the Licensed Technology or any
Licensed ▇▇▇▇ is being infringed, either directly or indirectly, by
any third party. In said event, ▇▇▇.▇▇▇ shall have the first right,
but not the obligation, to take action against such infringement
including, without limitation, the prosecution of a lawsuit. Should
▇▇▇.▇▇▇ elect not to take any action against the infringement within
fifteen (15) days of written notice thereof by Licensee, then Licensee
may take such action as it deems appropriate at its sole cost and
expense. Both Licensee and ▇▇▇.▇▇▇ will provide such non-financial
assistance as reasonably requested by the other in prosecuting the
infringement including, but not limited to, appearing as a nominal
plaintiff. Licensee shall reimburse ▇▇▇.▇▇▇ any costs and expenses
incurred in providing such assistance within a reasonable period of
time. The parties agree that all recoveries and awards that may be
obtained as a result of any such action shall be applied first to
reimburse the costs (including attorneys fees and expenses) of taking
such action against the infringing party. In the event that Licensee
has borne the costs and expenses of taking action against
infringement, one-half of the remainder shall be paid to Licensee to
repay its damages and the other one-half shall be paid to ▇▇▇.▇▇▇. In
the event that ▇▇▇.▇▇▇ has borne the costs and expenses of taking
action against infringement, the entire remainder shall be paid to
▇▇▇.▇▇▇.
9.2. Indemnification. Licensee will indemnify, defend and hold ▇▇▇.▇▇▇
---------------
(and its subsidiaries and Affiliates) harmless from and against any
and all losses, claims, damages, suits, proceedings, liabilities,
costs and expenses (including attorneys' fees) resulting from or
arising out of or relating to (i) the Licensee Business including, but
not limited to, all consumer claims of any kind, and (ii) any breach
by Licensee of a representation or warranty provided by it herein.
▇▇▇.▇▇▇ shall have the right to require Licensee to provide financial
assurances and security in connection with any third party dispute or
claim and in the event such assurances and security are not provided,
▇▇▇.▇▇▇ shall have the right to require the discontinuance of the
Licensed Technology and the Licensed ▇▇▇▇ in the territory subject to
such dispute or claim.
10. TERM AND TERMINATION
10.1. Term. The term of this Agreement will commence on the Effective
----
Date and shall remain in full force and effect for perpetuity, but
will be terminable in accordance with this Section 10.
10.2. Termination.
-----------
10.2.1. Breach for cause. In the event that Licensee materially or
----------------
repeatedly defaults in the performance of any of its
obligations, covenants or representations hereunder and fails
to cure such default within [***] after being given
---
written notice specifying the default, then ▇▇▇.▇▇▇ may
terminate this Agreement by providing written notice of
termination. Both parties agree that any breach of the
covenants and representations in Sections 4.2, 4.3, 4.4. and
4.5 shall only trigger ▇▇▇.▇▇▇'s ability to terminate the
Trademark License if Licensee is notified of any breach of
any such covenant or representation and fails to cure such
breach [***]. Notwithstanding the foregoing, if any
---
default is capable of cure
[***] Confidential treatment has been requested for the bracketed portions. The
---
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
8
but cannot reasonably be cured within such [***] or [***]
--- ---
period, as the case may be, then the Agreement or the
Trademark License, as the case may be, shall not terminate if
the defaulting party commences corrective action after the
demand for cure is made within such [***] or [***] period, as
--- ---
the case may be, and diligently prosecutes such corrective
action to completion within a reasonable time.
10.2.2. Automatic. This Agreement shall automatically terminate if
---------
Licensee ceases to conduct its business or becomes insolvent,
makes an assignment for the benefit of its creditors, or in
the event of the institution under any applicable law of any
voluntary or involuntary insolvency proceedings against
either party (including bankruptcy, consent to a
receivership, adoption of an arrangement with creditors,
dissolution or liquidation, or similar action), which
proceedings, consent, adoption or arrangement is not vacated
within [***] after inception.
10.3. Effect of Termination.
---------------------
10.3.1. Expiration of Licenses. Upon termination of this Agreement
----------------------
for any reason, the Technology License and Trademark License,
any sublicenses shall immediately terminate, and Licensee and
any sublicensees shall immediately (i) discontinue all use of
the Licensed Technology in any form, (ii) remove the Licensed
Technology from the Licensee Site or any of its customers'
web sites, and return to ▇▇▇.▇▇▇ the Licensed Technology
(including all documents, software, data and other materials
relating thereto) or, in ▇▇▇.▇▇▇'s discretion, destroy same
and provide ▇▇▇.▇▇▇ certification of such destruction, (iii)
modify any and all identification of the Licensee Business
with, or reference to any Licensed ▇▇▇▇, and refrain from
making any subsequent representation, advertisement or
published statement or product sales using or in reference to
any Licensed ▇▇▇▇, or the business previously conducted using
any Licensed ▇▇▇▇, and (iv) take such action as shall be
necessary to change any corporate name, assumed name or
equivalent registration which mentions or refers to any
Licensed ▇▇▇▇, or any ▇▇▇▇ similar thereto.
10.3.2. Cooperation; Title. Licensee shall take all necessary action
-------------------
to revest in or transfer to ▇▇▇.▇▇▇ all rights in the
Licensed Marks and Licensed Technology granted to Licensee by
this Agreement, or otherwise acquired by Licensee. Licensee
shall execute such documents and take such action as ▇▇▇.▇▇▇
may deem reasonably necessary or desirable to evidence the
fact that Licensee no longer has the right to use the
Licensed Marks and Licensed Technology.
10.3.3. Confidential Information. Each party shall deliver to the
------------------------
other (or its designee) within thirty (30) days after the
effective date of termination all of the Confidential
Information of the other party furnished to it hereunder,
including all copies documents, product, data and other
materials which embody such Confidential Information.
10.3.4. Accrued Obligations. Neither party shall be relieved of an
-------------------
obligation accruing under this Agreement prior to its
termination.
10.4. Equitable Relief. The parties acknowledge that any unauthorized use
----------------
of any Licensed Technology or Licensed ▇▇▇▇ will constitute a material
breach of this Agreement and will cause substantial harm to ▇▇▇.▇▇▇
for which damages would not be a fully adequate remedy. In the event
of any such breach, in addition to other available remedies, ▇▇▇.▇▇▇
shall have the right to obtain injunctive relief (without being
required to post any bond or other security).
[***] Confidential treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
9
10.5. Survival. Any provision of this Agreement that must survive in order
--------
to give effect to its meaning including, without limitation, the
provisions of Sections 5, 7, 8, 9, 10.3, 11 and 12 (as necessary)
shall survive the expiration or termination of this Agreement.
11. ARBITRATION OF DISPUTES. Any dispute or controversy arising under,
relating to, or concerning this Agreement shall be settled by binding
arbitration. The arbitration shall be conducted under the then current
Commercial Arbitration Rules of the American Arbitration Association
("AAA") in Orange County, California. Each party shall select one (1)
arbitrator, and a third arbitrator shall be chosen by the two arbitrators
chosen by the parties. If the two arbitrators cannot agree on the third
arbitrator, the third arbitrator shall, within thirty (30) days of
submission of a request by the two arbitrators chosen by the parties, be
chosen by the AAA from a panel of arbitrators knowledgeable and experienced
in matters involving commercial transactions, computer technology and
software licensing. The arbitrators shall decide the dispute within thirty
(30) days of the conclusion of the parties' presentation of the dispute.
The arbitrators are not empowered to award damages in excess of
compensatory damages, and each party waives any damages in excess of
compensatory damages. The written determination of the arbitrators shall
be final and shall not be subject to judicial review; provided however,
that any award of determination rendered by the arbitrators may be entered
in a court of competent jurisdiction. The prevailing party shall be
entitled to recover the costs of arbitration and attorneys' fees and
expenses, which shall be made part of the arbitrator's award. The
arbitrators shall determine the prevailing party for this purpose.
Notwithstanding the foregoing, the parties reserve the right to seek a
judicial temporary restraining order, preliminary injunction, or other
similar short-term equitable relief, and grant the arbitrator the right to
make a final determination of the parties' rights, including whether to
make permanent or dissolve such order.
12. MISCELLANEOUS
12.1. Force Majeure. A party shall not be liable for any delays or
-------------
failure to perform as a direct result of causes beyond the control
of such party and not due to the negligence on the part of the party
claiming excuse for delay or failure, including, but not limited to,
acts of God (such as fire, storm, earthquake), labor disputes, wars,
hostilities, revolutions, riots, civil commotion, national
emergency, ordinance or other act or order of any court, government
or governmental agency. The party claiming excuse must promptly
notify the other of the event and its expected duration and use its
best efforts to mitigate its effects.
12.2. Assignment. Neither this Agreement nor any rights, licenses or
----------
obligations hereunder, may be assigned by either party without the
prior written consent of the other party. Notwithstanding the
foregoing, this Agreement shall be assignable by ▇▇▇.▇▇▇ in the
event any person or entity acquires ▇▇▇.▇▇▇'s business or
substantially all of its assets by merger, stock sale, or other
means. Any attempted assignment in violation of this Agreement shall
be void and without effect. Subject to the foregoing, this Agreement
will benefit and bind the parties' successors and permitted assigns.
Licensee's restriction on the assignability of this Agreement shall
cease upon the earlier of (i) the effective date of Licensee's
Registration Statement on Form S-1 (or such other comparable form)
in connection with its initial public offering, or (ii) the date
that ▇▇▇.▇▇▇'s business or substantially all of its assets is
acquired by any person or entity by merger, stock sale or other
means.
12.3. Waiver. The waiver or failure of either party to exercise in any
------
respect any right provided for herein shall not be deemed a waiver
of that right in any other circumstances or a waiver of any further
rights.
12.4. Relationship. The parties to this Agreement are independent
------------
contractors. Nothing herein shall be deemed to establish a
partnership, joint venture, franchise or any other form of
relationship as participants in a joint undertaking. Each party
shall be solely responsible for any claims, damages or lawsuits
arising out of its acts or those of its employees and agents.
Neither party shall incur any obligations for or in the name of the
other party, or have the authority to bind or obligate the other
party.
10
12.5. Notices. All notices and reports required by this Agreement shall
-------
be in writing and shall be delivered personally, by facsimile
transmission, by overnight courier or by registered or certified
mail, return receipt requested. All postage and other delivery
charges shall be prepaid by the party sending the notice. Notice
shall be effective only upon receipt by the party being served,
except notice shall be deemed received 72 hours after posting by the
United States Post Office, by method described above. Confirmation
of receipt of any facsimile sent must be received in order to
presume that the transmission was received, and notice by facsimile
shall, if received after close of business for the receiving party,
be deemed received on the next business day. All notices shall be
addressed as follows unless changed by written notice pursuant to
the terms of this Section 12.5:
To ▇▇▇.▇▇▇, Inc.: ▇▇▇.▇▇▇ Inc.
▇▇ ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: Chief Executive Officer
With Copy To: ▇▇▇.▇▇▇ Inc.
▇▇ ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: General Counsel
To Licensee: BuyNow Inc.
▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: Chief Executive Officer
With Copy To: BuyNow Inc
▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: General Counsel
12.6 Governing Law. This Agreement shall be governed by and construed
-------------
and interpreted in accordance with the laws of the State of
California, disregarding any conflict-of-laws rules which may
direct the application of the laws of another jurisdiction. No
provision of this Agreement shall be construed against any party by
reason of that party having drafted the same. The sole jurisdiction
and venue for actions related to the subject matter hereof shall be
the state and federal courts having within their jurisdiction the
location of ▇▇▇.▇▇▇'s principal place of business, and both parties
hereby consent to such jurisdiction and venue.
12.7 Attorneys Fees. In the event of any dispute or legal proceeding
--------------
between the parties arising out of or relating to this Agreement or
its breach, the prevailing party shall be entitled to recover from
the other party all of its fees, costs and expenses, including but
not limited to attorneys fees, costs and expert witness fees,
incurred in connection with such dispute or legal proceeding.
12.8 Entire Agreement. This Agreement and the exhibits attached hereto
----------------
constitute the entire and only agreement of the parties relating to
the subject matter hereof and supersede all prior agreements,
understandings and negotiations regarding the same. This Agreement
may not be modified or amended except in writing signed by both
parties.
12.9 Severability. If any term or provision of this Agreement, or the
------------
application thereof to any person or circumstance, shall to any
extent be found to be invalid, void, or unenforceable, the
remaining provisions of this Agreement and any application thereof
shall, nevertheless, continue in full force and effect without
being impaired or invalidated in any way.
11
12.10 Headings. Headings and captions are for convenience only and are
--------
not to be used in the interpretation of this Agreement.
12.11 Counterparts. This Agreement may be executed in two or more
------------
counterparts, each of which will be deemed an original, but all of
which taken together shall constitute one and the same instrument.
A facsimile signature shall be deemed an original for purposes of
evidencing execution of this Agreement.
IN WITNESS WHEREOF, the parties have executed this Agreement as of
the Effective Date.
LICENSEE ▇▇▇.▇▇▇
By:___________________ By:____________________
Name:_________________ Name:__________________
Title:________________ Title:_________________
Date:_________________ Date:__________________
12
EXHIBIT A
Licensed Technology
▇▇▇.▇▇▇ Licensed Technology Components
---------------------------------------------------------------------------------------------------------------
Component Description
---------------------------------------------------------------------------------------------------------------
1. [***] The [***] with [***]. The technology behind [***] is comprised of [***] and
--- --- --- --- ---
[***] that was developed by ▇▇▇.▇▇▇.
---
----- --------------------------------------------------------------------------------------------------------
2. [***] [***] is an internal application that [***].
--- --- ---
--------------------------------------------------------------------------------------------------------------
3. [***] Interacts with [***] for [***].
--- --- ---
--------------------------------------------------------------------------------------------------------------
4. [***] Various administrative modules that [***]. This includes [***].
--- --- ---
--------------------------------------------------------------------------------------------------------------
5. [***] Distributes [***].
--- ---
--------------------------------------------------------------------------------------------------------------
6. [***] An application that [***] for [***].
--- --- ---
--------------------------------------------------------------------------------------------------------------
Note: The Licensed Technology shall in each case consist of [***] and shall not
---
include [***].
---
C-1
