LICENSE AGREEMENT
This
LICENSE AGREEMENT (this “Agreement”) is made
as of the 1st day of
April, 2010 (the “Effective Date”), by
and between CyberDefender Corporation, a California corporation (“Licensor”), and GR
Match, LLC, a Delaware limited liability (“Licensee”). Licensor
and Licensee may be referred to herein each individually as a “Party” and
collectively as the “Parties”.
RECITALS
WHEREAS,
Licensor is the owner of the CyberDefender line of antivirus and Internet
security products and services, including updates, new versions or releases
thereof and new products and/or services which may be developed and/or offered
by Licensor from time to time;
WHEREAS,
Licensor is the owner of the Trademarks (as defined below); and
WHEREAS,
it is desired by both Parties that Licensee be permitted to use and exploit the
Products (as defined below) and the Product IP (as defined below) related
thereto and to advertise, market, promote, sell and distribute the Products via
the applicable Channels in the Territory (each as defined below), as more
specifically set forth below, in accordance with the terms and conditions
hereof.
NOW,
THEREFORE, in consideration of the premises and the mutual agreements and
covenants hereinafter set forth, and other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, the Parties hereby
agree as follows:
Definitions:
A. “Affiliate” of a
Person shall mean an individual, corporation, limited liability company,
partnership, trust or other entity that, directly or indirectly, through one or
more intermediaries, controls, or is controlled by, or is under common control
with, such Person.
B. “Applicable Laws”
shall mean any applicable international, national, federal, state, local and
municipal laws, rules, regulations, standards or orders.
C. “Business Day” means
any day except Saturday, Sunday and any day which shall be a federal legal
holiday in the United States or a day on which banking institutions in the State
of New York are authorized or required by law or other government action to
close.
D. “Channels” shall mean
those channels of distribution listed on Schedule A
hereto.
E. “Confidential
Information” shall have the meaning set forth in Section
8.3.
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F. “Domestic Roll-Out
Date” shall mean the earlier of (i) the date upon which the aggregate
gross revenues, net of any returns, refunds and chargebacks, received by
Licensee or its Affiliates from sales of the Products in the Domestic Territory
exceeds One Million Dollars ($1,000,000.00) or (ii) the date that is eighteen
(18) months following the date that Licensor has delivered to Licensee all
information, code, packaging and insert materials and other materials reasonably
necessary for Licensee and/or the Manufacturer (as defined below) to manufacture
and/or reproduce the Products in tangible medium in the Domestic Territory,
including, without limitation, (A) any programming or modification of the
Products necessary or reasonably requested by Licensee to be able to port the
Software to the media in which it will be distributed and for the Products to be
able to be installed properly from such medium, (B) master gold copies of the
Products, (C) fixes for errors or defects that prevent the production of the
Products in a tangible medium, and (D) all technical data, specifications and
other technical information relating to the Software which is reasonably
requested by Licensee and/or the Manufacturer.
G. “Domestic Territory”
shall mean the United States of America as reflected on Schedule A attached
hereto.
H. “Foreign Country”
shall have the meaning set forth in Section 4.5(b).
I. “International Roll-Out
Date” shall mean the earlier of (i) the date upon which the aggregate
gross revenues, net of any returns, refunds and chargebacks, received by
Licensee or its Affiliates from sales of the Products in the International Territory
exceeds One Million Dollars ($1,000,000.00) or (ii) the date that is eighteen
(18) months following the date upon which Licensor has, at Licensee’s request
pursuant to Section 4.3 hereof, taken all commercially reasonable actions in
order to facilitate the sale and use of the Products in at least three
(3) countries (selected by Licensee in its sole discretion by delivering
written notice to Licensor of such selections) in the International Territory in
which Licensee will sell and/or distribute the Products, including, without
limitation, (A) translating the Software and any tutorials, guides, instructions
and other materials which are included with the Products to the local language
in such three (3) countries, and (B) modifying, reprogramming and otherwise
reconfiguring the Software to be compatible with the local legal, system and
technical requirements of such three (3) countries, including, without
limitation, reconfiguring each selling suite which is included in the
Software to reflect Licensee as the merchant of record upon any renewal of an
applicable Product.
J. “International
Territory” shall mean those territories listed under the heading
“International Territory” as set forth on Schedule A attached
hereto.
K. “Licensee Materials”
shall have the meaning set forth in Section 5.1.
L. “Live Tech Services”
shall mean Live Help Desk 24/7 technology support services (or variations
thereof) or similar live technology support services.
M. “Person” shall mean an
individual, corporation, limited liability company, partnership, trust or other
entity.
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N. “Product” or “Products” shall mean
any individual product or services or the group of products or services
developed, owned and/or controlled by Licensor or its Affiliates which comprise
the CyberDefender line of antivirus and Internet security products or services
(whether now existing or hereafter developed or acquired or offered), whether or
not marketed, licensed or sold under the Trademarks, including, without
limitation, CyberDefender Early Detection Center, CyberDefender Early Detection
Center Family Pak, CyberDefender Registry Cleaner, CyberDefenderCOMPLETE,
CyberDefenderPREMIUM, CyberDefenderULTIMATE, CyberDefender Identity Protection
Services, MyIdentityDefender Toolbar, CyberDefenderFREE and Live Tech Services
(subject to Sections 4.5(a) and (b) below) and including any private label
branding or localized versions of any individual product, service or group of
products, services which comprise the CyberDefender line of antivirus and
Internet security products or services (whether now existing or hereafter
developed or acquired or offered), including, without limitation, “MyCleanPC”
and “DoubleMySpeed.”
O. “Product IP” shall
mean (i) all of the patents, proprietary information, copyrights, trademarks,
trade dress, moral rights, design rights, and other intellectual or industrial
property rights recognized or protectable anywhere in the world, whether now
existing or hereafter created or arising, relating to or necessary for the
manufacture, use, sale, export, import, marketing, reproduction, distribution,
modification or display of any of the Products and/or their packaging,
including, without limitation, the Trademarks, and those inventions described in
the patent applications identified in Schedule B hereto;
(ii) all software, websites, portals, manuals, instruction guides, FAQs, content
and other tangible embodiments of or that comprise any of the Products; (iii)
any Internet website domain names and URLs relating to markets in the
International Territory (other than
xxx.xxxxxxxxxxxxx.xxx); and (iv) all registrations, initial
applications, renewals, extensions, continuations, divisions or reissues thereof
now or hereafter existing (including any intellectual property rights in any of
the foregoing).
P. “Royalty” shall have
the meaning set forth in Section 2.1.
Q. “Software” shall have
the meaning set forth in Section 3.2.
R. “Term” shall have the
meaning set forth in Section 11.1.
S. “Territory” shall mean
the Domestic Territory and the International Territory,
collectively.
T. “Trademarks” shall
mean all trademarks, service marks, brands, logos, slogans and other
symbols owned or controlled by Licensor or its Affiliates, whether at common law
or registered and whether now existing or hereafter developed or used,
(inclusive of any pending trademark applications and registrations owned or
controlled by or licensed to Licensor or an Affiliate and used or usable with
respect to any of the Products, including, without limitation, those trademarks
set forth on Schedule
C hereto.
Other capitalized terms used herein
shall have the meanings ascribed to them in the applicable sections hereof
unless specifically provided otherwise.
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1. Rights Granted and
Enforcement.
1.1 Rights Granted. Licensor
hereby grants and conveys to Licensee a sole, exclusive, transferable (subject
to Section 13.3) and sublicensable right and license, throughout the Term
(including the Sell Off Period (as defined in Section 11.5)), directly or
through others, to (a) advertise, promote, demonstrate, market, sell, lease,
distribute, import, export and otherwise exploit (collectively, “Market”) the Products
through or in any medium (subject to Section 8.2) (including CDs, DVDs, and
other tangible storage medium now existing or hereinafter developed) via the
applicable Channels in the Territory (including in a tangible medium through
websites of Licensee’s distributors, sub-licensees, resellers or other partners
(for example, the companion website of a home shopping channel or a retail store
where the Products are being offered for sale), and (b) manufacture, have
manufactured, reproduce, use, practice, and display all of the Product IP during
the Term in connection therewith. Without limiting the foregoing, the
rights granted herein may be exercised by Licensee and its Affiliates and their
respective distributors, sub-licensees, resellers, joint ventures, marketing and
media partners, advertisers, contractors and other entities in the channels of
trade, and their further sub-licensees, sub-distributors, sub-resellers, joint
ventures, marketing and media partners, advertisers and contractors, and the
successors and assigns of any of the foregoing, whether foreign or
domestic.
1.2 Packaging
Materials. In connection with the rights granted in this
Article 1 and without limitation of Section 1.1, Licensor hereby grants to
Licensee the sublicensable and transferable (to the same extent as the rights in
Section 1.1) right and license throughout the Term (including the Sell Off
Period), directly or through others (including fulfillment houses, Channel
partners and contractors), to (a) design, develop, brand and
manufacture/reproduce the tangible media in which the Products may reside, (b)
design, develop, brand and manufacture/reproduce the packaging (and appropriate
packaging materials and inserts thereto) in which Products may be shipped or
delivered, and (c) use, reproduce in any medium, brand, distribute, display, and
create derivative works of any user guides, manuals, instructions, FAQs,
packaging inserts and other materials and content developed or used or held for
use by Licensor or its Affiliates in connection with the Products, in any
language and form, for packaging and shipping the Products. Licensee shall have
the discretion to sell and distribute the Products on a standalone basis, as a
package or in bundles or multiples in the International Territory and may
develop and use different or the same packaging for all or some of the Products,
as deemed appropriate for the particular Channel of trade and/or
Territory.
1.3 Enforcement
of Rights.
(a) Licensor,
upon becoming aware of any infringement or misappropriation of any Product IP or
any actual or proposed activity by a third party in violation of or that
contravenes the exclusive license rights granted to Licensee under this
Agreement shall promptly notify Licensee in writing of such act.
(b) Promptly
following Licensor’s becoming aware of any (i) actual or proposed activity by
any Person that violates or would (if done or authorized by the Licensor)
contravene or be inconsistent with an exclusive license right granted to
Licensee under this Agreement, including any activities involving grey or
counterfeit units of any Product in the Channels in the Territory (a “License Contravention
Activity”) or (ii) actual or proposed infringement or misappropriation of
any Product IP that is material or likely to adversely diminish the value of the
Products or the exclusive license granted to Licensee hereunder (an “Infringement”),
Licensor shall, at its sole cost and expense, promptly evaluate the License
Contravention Activity or Infringement, as the case may be, with competent
counsel and make a reasonable determination, based on counsel’s advice, as to
whether it is desirable and prudent to make a demand or bring an action to stop
the License Contravention Activity or Infringement. Licensor shall,
at its sole cost and expense, vigorously and diligently prosecute such License
Contravention Activity or Infringement, as the case may be, with counsel
reasonably satisfactory to Licensee and will have control of such action,
including any compromise or settlement thereof; provided, however, that Licensor
shall not settle any such action without the prior written consent of Licensee
in the event such settlement would adversely affect, limit or conflict with the
rights granted to Licensee hereunder or require Licensee to take or withhold
from taking any action that is inconsistent with this Agreement or to pay any
monies. In any action by Licensor against any License Contravention
Activity or Infringement, as the case may be, Licensee shall have the right to
participate in (but not control) the prosecution of such action and to retain
its own counsel at Licensee’s own expense.
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(c) Notwithstanding
the foregoing, if Licensor fails to take action against a License Contravention
Activity or Infringement, as the case may be, within thirty (30) days after
Licensor’s becoming aware of the existence of such activity (whether by written
notice from Licensee or otherwise) or Licensor otherwise fails to vigorously and
diligently prosecute such action after it commences, then Licensee shall have
the right to take action against such License Contravention Activity or
Infringement, as the case may be, in Licensee’s name and/or on behalf of
Licensor if Licensor is already a party to the action and, if Licensee elects to
prosecute such action, shall have full control of the prosecution and resolution
thereof, in which case Licensor shall reimburse Licensee for all reasonable
costs and expenses incurred by Licensee in connection with pursuing such action
net of any damage awards and recoveries actually made by the Licensee from the
action. To the extent necessary in connection with the previous
sentence, Licensor hereby grants to Licensee the right to make demands and bring
actions to mitigate and/or curtail a License Contravention Activity or
Infringement, as the case may be.
(d) At
the request and expense of the Party taking action against a License
Contravention Activity or Infringement, as the case may be, the other Party
agrees to provide the requesting Party with all necessary assistance and
cooperation that the requesting Party reasonably requests. The Party
that brings an action against the License Contravention Activity or
Infringement, as the case may be, shall be entitled to retain any and all
monetary awards obtained as a result of such action, including any damages and
attorneys’ fees. In the event the Parties
jointly pursue any Infringement, all monetary awards obtained as a result
of such action, including any damages and attorneys’ fees, shall first be
applied to cover each Party’s costs and
expenses incurred in connection with such action, and the balance of such
monetary awards shall be split evenly between the Parties.
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2. Compensation.
2.1 Royalty. Licensee
shall pay to Licensor a royalty (the “Royalty”) in the
amount set forth on Schedule D attached
hereto for (i) each annual subscription and (ii) each renewal of an annual
subscription (to the extent such renewal is purchased from Licensee (or its
sub-licensees or distributors)) of an applicable Product which is purchased, or
renewed, as the case may be, by an end user from Licensee (or its sub-licensees
or distributors) in the Domestic Territory or the International Territory, as
the case may be. Licensee shall not be required to pay a Royalty to
Licensor in connection with Licensee’s (or its sub-licensees or distributors)
sale of any Products which are not set forth on Schedule D attached
hereto. Notwithstanding the foregoing, in the event Licensor incurs
substantial out-of-pocket third party expenses in connection with creating or
developing any Product which is significantly different
than Licensor’s current line of Products or an enhancement or new
version of any current Product with respect to which a Royalty is
payable hereunder, the Parties agree to negotiate in good faith to determine the
amount of the Royalty payable by Licensee hereunder in connection with its
Marketing of such new Product or any appropriate modification of
the Royalty payable with respect to any current Product. There
shall only be one Royalty per Product. No Royalty shall be owed for
any Product which is returned or for which a refund or chargeback is made. If a
Royalty has been paid for any such Product that has been returned or for which a
refund or chargeback is made, a credit for the amount of such paid royalties
shall be applied against future Royalties payable by Licensee. Except as
provided in Section 2.2, there is no guarantee of the quantity of Products that
may be sold or the amount of Royalties that may be paid by Licensee to Licensor
under this Agreement. Licensee shall have the sole discretion to
determine the price at which Products are licensed, sold or distributed pursuant
to this Agreement.
2.2 Annual
Advances. From and after the thirty-six (36) month
anniversary of the earlier of the Domestic Roll-Out Date or the International
Roll-Out Date (the “Anniversary Date”),
unless this Agreement is earlier terminated in accordance with Articles 10 or
11, Licensee shall pay to Licensor a non-refundable annual advance in the amount
of Two Hundred Fifty Thousand Dollars ($250,000.00) by wire transfer to a bank
account designated by Licensor, with each annual advance being applied against
any future Royalties payable to Licensor (whether during the year that the
Annual Advance is paid or any subsequent year) (each, an “Annual Advance” and,
collectively, the “Annual Advances”) and
which shall be due and payable to Licensor within ten (10) Business Days
following the beginning of each calendar year, with the initial Annual Advance
due and payable to Licensor within ten (10) Business Days following the
Anniversary Date. If the Anniversary Date does not fall on January 1
of an applicable year, the amount of the initial Annual Advance shall be
prorated based on the number of days then remaining in the applicable
year. In
the event Licensee fails to timely pay any Annual Advance (subject to a thirty
(30) day cure period after receipt of written notice of payment past due from
Licensor), Licensor may elect, at Licensor’s option at any time prior to one
hundred eighty (180) days following the expiration of such cure period, and upon
at least sixty (60) days prior written notice to Licensee, as Licensor’s sole
and exclusive remedy, to cause the license granted in Section 1.1 of this
Agreement to convert from an exclusive license to a non-exclusive license for
the Channels in the Territory.
2.3 Payment of
Royalty. Licensee shall pay Royalty payments (other than
Annual Advances, which shall be paid in accordance with Section 2.2) to Licensor
on a quarterly basis based on calendar quarters, in arrears, no later than
thirty (30) days following the end of the applicable quarter (each, a “Royalty
Payment”). Each Royalty Payment shall be calculated based on
the number of annual subscriptions (including renewals, if applicable) of an
applicable Product which end users purchased from Licensee (or its sub-licensees
or distributors (subject to the last sentence of this Section 2.3)) during the
previous quarter, less (i) any unapplied Annual Advances; and (ii) Localization
Reimbursement Payments (as defined in Section 4.3) (solely with respect to
Royalties payable from sales of the Products in the International Territory),
and net of any returns, refunds and chargebacks. Simultaneously with
Licensee’s delivery of each Royalty Payment Licensee shall deliver to Licensor a
reasonably detailed accounting statement showing (x) Licensee’s calculation of
the Royalty Payment for such quarter and (y) until the Domestic Roll Out Date or
the International Roll Out Date, as the case may be, occurs, the aggregate gross
revenues, net of any returns,
refunds and chargebacks, received by Licensee or its Affiliates from sales of the
Products in each of the Domestic Territory and the International Territory,
respectively (each,
a “Royalty
Statement”). For purposes of calculating the amount of a
Royalty Payment, a Product which end users purchase from Licensee’s
sub-licensees or distributors shall be deemed to have been purchased by the end
user on the date which Licensee actually receives its applicable royalty from
the applicable sub-licensee or distributor for the applicable sale of the
Product.
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2.4 Royalty
Examination. At any time within six (6) months after receiving an
applicable Royalty Statement, Licensor shall have the right, upon at least
thirty (30) days prior written notice to Licensee, which notice shall specify
the particular Royalty Statement(s) which will be examined (a “Royalty Examination
Notice”), to audit the accuracy and completeness of the Royalty Payments
reflected in such Royalty Statement(s) by examining the books and records of
Licensee held in connection with Licensee’s business related to the advertising,
marketing, license, sale and distribution of the Products covered by such
Royalty Statement(s) (but no more than twice each calendar year). Any such audit
shall be conducted at Licensor’s sole cost and expense during normal business
hours at the place where such books and records are maintained and Licensor
shall use reasonable efforts to minimize the interference with Licensee’s
business operations. All information obtained and materials reviewed
during any such audit shall be treated as Confidential Information of Licensee
and shall not be disclosed by Licensor for any purpose or used for any purpose
other than collecting the accurate amount of Royalties under this
Agreement. If Licensor does not deliver a Royalty Examination Notice
with respect to a Royalty Statement within six (6) months after Licensor’s receipt
of such Royalty Statement, such Royalty Statement will be conclusively presumed
to be true and correct in all respects and will be final and binding upon the
parties. Any claim by Licensor that it has been underpaid or any
claim by Licensee that it has overpaid Royalty Payments due under this Agreement
shall not be deemed a breach of this Agreement and both parties agree to resolve
any dispute in connection with the calculation of the Royalty Payments in
accordance with Section 13.8 below. Notwithstanding anything herein
to the contrary, if any such audit reveals a deficiency in any amounts due to
Licensor hereunder which is not disputed by Licensee, Licensee will be invoiced
for such underpaid amounts in effect at the time the audit is completed, and
Licensee shall pay such underpaid amounts within thirty (30) days following
receipt of such invoice. If any such audit reveals an overpayment in
any amounts due to Licensor hereunder which is not disputed by Licensor, the
amount of such overpayment shall be deducted against future Royalty Payments
payable by Licensee to Licensor. If the underpaid Royalties revealed
from any Royalty examination shall exceed five percent (5%) of the aggregate
Royalty Payments actually paid with respect to the examined Royalty Statements,
then Licensee shall also pay Licensor’s reasonable out-of-pocket costs of
conducting the audit (excluding any travel and/or accommodations expense
incurred by Licensee or its representative in connection
therewith).
3. Obligations of
Licensee.
3.1 Marketing by Licensee. Except
as expressly set forth in this Agreement, Licensee shall Market the Products, in
its discretion, via the Channels in the Territory at Licensee’s sole expense for
such efforts. Licensee will be solely responsible during the Term of this
Agreement for managing, directly or through the use of agents or contractors,
all aspects associated with the implementation of the marketing plan relating to
the Products via the Channels in the Territory, the relationship with Channel
partners, and the renewal of any subscriptions for any Products sold, licensed
or distributed pursuant to this Agreement, including any Products for which a
Royalty was paid or is owed under this Agreement.
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3.2 Software. Except as
otherwise provided herein, Licensee shall not intentionally modify, translate,
reverse engineer, decompile, or disassemble the software which is included in
the Product IP (the “Software”), create a
derivative work of the Software or remove or alter any proprietary notices or
labels in the Software. Notwithstanding the foregoing, Licensee may,
directly or through others, make changes to the Software in connection with
Licensee’s sale, license, distribution, import and/or export of the Products in
the Territory to the extent required to implement private labeling, comply with
Applicable Laws or add legends, notices and other markings that may be required
by law.
3.3 Legal
Compliance. Licensee shall be and remain solely
responsible to ensure that all claims made in the Licensee Materials (as defined
below) (except for any claims or information contained in
any materials which Licensor provides to Licensee for use in the Licensee
Materials, which shall be the responsibility of Licensor as provided in Section
4.11) are properly substantiated and each of the Licensee Materials
otherwise complies with all Applicable Laws relating to the advertisement and
sale of the Products.
3.4 International Territory
Compliance. Subject to Licensor’s satisfaction of its
localization obligations for the Products in each market in the International
Territory, Licensee shall, at its sole expense prepare and make all required or
appropriate submissions for governmental, regulatory and any other applicable
licenses and approvals in connection with Licensee’s Marketing of the Products
via the applicable Channels in each applicable country or other applicable
jurisdiction in the International Territory. Licensor shall use its
best efforts provide Licensee with copies of any and all information and
documents necessary to make all regulatory submissions for regulatory approvals
of the Products in each applicable country or other applicable jurisdiction in
the International Territory and shall otherwise cooperate with Licensee as
reasonably requested by Licensee in connection therewith.
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4. Obligations of
Licensor.
4.1 Substantiation. Licensor warrants that it
has previously provided to Licensee all existing written substantiation of any
and all Product claims relating to the Products that are known and available to
Licensor and any and all test results on the Products performed prior to the
date hereof by or on behalf of Licensor. Licensor agrees to provide to Licensee
with additional written substantiation, and test results, if any, which are
subsequently compiled or developed by or on behalf of Licensor during the Term
with respect to any of the Products, or which are required in order to be able
to Market any of the Product in the International Territory. Licensee shall have
the right, but not the obligation, to conduct independent tests to evaluate the
performance and quality of the Products at Licensee’s sole expense and, if
requested by Licensee, Licensor agrees to cooperate in such efforts. Licensor
will diligently collaborate with and provide information to Licensee in the
event Licensee or one of its Channel partners, distributors or sub-licensees
becomes the subject of a governmental investigation or proceeding, and will if
desirable to resolve the matter (as reasonably requested by Licensee), make
marketing, programming or functional changes to the Products or documentation in
question. Further, Licensor agrees to cooperate with Licensee in the filing of
such customs certifications, declarations or authorizations that may be required
in any Territory for the export or import of the Products pursuant to this
Agreement.
4.2 Cooperation by
Licensor. Licensor shall diligently cooperate with Licensee,
as Licensee may reasonably request, in connection with the manufacture and/or
reproduction of the Products and related packaging and insert materials by
Licensee or its designated contractor or
manufacturer(s)/reproducer of the Products and the packaging or
materials (each such entity, a “Manufacturer”),
and/or any programming or modification of the Products desirable or necessary to
be able to port the Software to the media in which it will be distributed and
for the Products to be able to be installed properly from such medium and
perform in the manner contemplated by the Product documentation and
specifications. Licensor will provide Licensee or the Manufacturer with all
information, code and materials reasonably necessary for such activities
described above to allow for timely and quality production of such
Products, including, without limitation, delivery of master gold copies of the
Products, fixes for errors or defects that prevent the production of the
Products in a tangible medium, technical data, specifications and other
technical information relating to the Software, provided that the
Manufacturer has entered into a
confidentiality agreement relating to the non-disclosure of such information on
terms substantially similar to those manufacturing and/or development agreements
which Licensee typically requires for the manufacture or development of products
which are similar in nature to the Products. Licensor shall notify
Licensee in writing of the product development path for the Products, describing
the proposed development and release cycle for upgrades, new versions and new
products, and including not less than ninety (90) days prior written notice of
any intention to declare a Product obsolete or unsupported. Licensor
will to the extent feasible or practical involve Licensee or its Channel
partners in the testing of beta versions of Products, and will provide to
Licensee all upgrades, new versions and new releases of the Products promptly
upon completion of the production versions.
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4.3 Localization of
Products.
(a) It is
contemplated that Licensee, directly or through its agents and contractors, may
need to localize the Products and related materials and branding to comport with
the language, laws and/or customs of the International Territory. For that
purpose, Licensor agrees, not later than thirty (30) days following request by
Licensee, to take all commercially reasonable actions in order to facilitate the
sale and use of the Products in the requested local market in the International
Territory, including, without limitation, (i) translating the Software and any
tutorials, guides, instructions and other materials which are included with the
Products to the local language of any jurisdictions in which Licensee will sell
and/or distribute the Products, (ii) modifying, reprogramming or otherwise
reconfiguring the Software to be compatible with the local legal, system and
technical requirements of such jurisdictions, including, without limitation,
reconfiguring each selling suite which is included in the
Software to reflect Licensee as the merchant of record upon any renewal of an
applicable Product, and (iii) assist with the creation of advertising and
promotional materials for Products to be distributed in the International
Territory.
(b) Prior to
incurring any costs or expenses in connection with the localization of any
Products with respect to an applicable local market, Licensor shall deliver to
Licensee a budget which sets forth in reasonable detail the expected third party
costs of localizing the Products in such local market, which budget shall be
subject to Licensee’s written approval. The budget may be modified
with Licensee’s prior written approval (which shall not be unreasonably
withheld). Licensee shall reimburse Licensor for the actual third
party costs incurred by Licensor, up to the amounts set forth in the applicable
Licensee approved budget, in connection with such localization of the Products
in each applicable local market within thirty (30) days of Licensee’s receipt of
a reasonably detailed invoice (including receipts or other written evidence of
any applicable third party costs incurred by Licensor) (“Localization Reimbursement
Payments”). Notwithstanding the foregoing, in no event shall
Licensee be obligated to reimburse Licensor for any localization expenses in
excess of the following applicable limitations: (i) for localization
of any Products using the English language, Fifty Thousand Dollars ($50,000.00)
per each country in the International Territory (any such country, a
“Foreign
Country”); (ii) for localization of any Products using German or into any
language derived from Latin (e.g. Romance languages), One Hundred Thousand
Dollars ($100,000.00) per Foreign Country; and (iii) for localization using any
other language other than the languages specified in clauses (i) and (ii), One
Hundred Fifty Thousand Dollars ($150,000.00) per Foreign Country. If
a Product needs to be localized in a country where more than one language is
spoken, then Licensee shall reimburse Licensor up to the amount of the higher
reimbursement limitation for the localization expenses for the applicable
languages. For example, if a Product requires localization using both
English and French in Canada, the maximum reimbursement to be paid by Licensee
is One Hundred Thousand Dollars ($100,000.00).
(c) Subject to
the reimbursement limitations set forth in Section 4.3(b) above, fifty percent
(50%) of all Localization Reimbursement Payments shall be treated as advances by
Licensee which shall be applied against any future Royalties payable to Licensor
(whether during the year that the applicable Localization Reimbursement Payment
is paid or any subsequent year) with respect to sales of the Product in the
International Territory. In addition to the foregoing, if Licensor
exercises its right to buy-back and terminate the rights granted to Licensee
hereunder pursuant to Section 10 hereof, then an amount equal to (i) the entire
amount of Localization Reimbursement Payments paid by Licensee to Licensor for
all Foreign Countries from and after the date which is six (6) months prior to
the date of Licensor’s delivery of the Buy-Out Notice (defined below), less (ii)
any Localization Reimbursement Payments during such period which have been
previously applied against Royalties payable by Licensee to Licensor
(collectively, “Unapplied Localization
Reimbursement Expenses”), will be added to the Buy-Out Price (defined
below) and shall be paid by Licensor to Licensee at the Licensor Buy-Out Closing
(defined below) in addition to the Buy-Out Price.
10
4.4 Notification. Licensor
shall promptly notify Licensee in writing if Licensor becomes aware of any
material defects in the Products (including failure of the Products to comply
with any Applicable Laws), including a plan for resolving such
defects. Additionally, Licensee shall promptly notify Licensor in
writing if Licensee becomes aware of any material defects in the Products
(including failure of the Products to comply with any Applicable
Laws).
4.5 Customer Service.
(a) Licensor
shall provide customer service and all product and technical support services
(Tier 1, Tier 2 and, if applicable, Tier 3 support) which are included as part
of an applicable Product, at Licensor’s sole cost and expense, for each customer
who purchases a Product from Licensee (or its sub-licensees or distributors) via
the applicable Channels (each, a “Licensee Customer”)
in the Domestic Territory, and Licensor shall cooperate with Licensee as
reasonably requested by Licensee to establish such customer service
capabilities. Licensor shall have the exclusive right to
promote, offer to sell and sell, or cause a third party designated by Licensor
in its sole and absolute discretion to promote, offer to sell and sell, Live
Tech Services to each Licensee Customer who purchases a Product in the Domestic
Territory, and Licensor (or its designee) shall be entitled to retain the entire
amount of any revenues earned in connection with the provision or sale of such
Live Tech Services.
(b) With
respect to each Foreign Country in which Licensee Markets the Products, Licensee
shall determine in its sole discretion the terms and conditions on which
Licensee or one or more third parties designated by Licensee (which may include
Licensor as provided below) (each, a “Licensee Designated Customer
Service Provider”) shall provide, on terms and conditions satisfactory to
Licensee and such Licensee Designated Customer Service Provider, customer
service, technical and product support services and Live Tech Services for each
Licensee Customer who purchases a Product in such Foreign Country via the
applicable Channels. If Licensee elects to Market Products in an
applicable Foreign Country, Licensee shall first offer to engage Licensor as the
Licensee Designated Customer Service Provider for such Foreign Country by
delivering a written request for services proposal to Licensor requesting
Licensor to provide Licensee Customers with customer service, technical and
product support services and Live Tech Services as specified by Licensee in such
request for services proposal (an “Offer
Notice”). The Offer Notice shall state in reasonably specific
detail the type of service, support and other parameters Licensee desires
Licensor to provide. Licensor shall indicate its desire to provide
those services requested by Licensee in the Offer Notice and to be engaged as
the Licensee Designated Customer Service Provider for the applicable Foreign
Country, subject to terms and conditions which will be mutually agreed upon
by Licensor and Licensee, by delivering written notice of the same not later
than ten (10) Business Days following Licensor’s receipt of the Offer Notice
(the “Licensor
Acceptance Period”). If Licensor has notified Licensee of its
desire to be engaged as the Licensee Designated Customer Service Provider for
the applicable Foreign Country prior to the expiration of the Licensor
Acceptance Period, the Parties shall negotiate in good faith to enter into a
customer service or similar agreement on terms and conditions mutually
acceptable to the Parties with respect to the customer service, technical and
product support services and Live Tech Services requested by Licensee in the
applicable Foreign Country (a “Service
Agreement”). In the event the Parties enter into such Service
Agreement within the thirty (30) day period, Licensor shall, no later than sixty
(60) days following the expiration of the Licensor Acceptance Period or such
other date agreed to by Licensor and Licensee in the Service Agreement, commence
providing such agreed upon customer service and all product and technical
support services (including Tier 1, Tier 2 and, if applicable, Tier 3 support)
which are included as part the services under the Service
Agreement. In the event of a termination of a Service Agreement for
which Licensor is the Licensee Designated Customer Service Provider for an
applicable Foreign Country, Licensor shall cooperate with Licensee as reasonably
requested by Licensee in transitioning to the applicable replacement Licensee
Designated Customer Service Provider for such Foreign Country.
11
(c) If Licensor
does not notify Licensee of its desire to be the Licensee Designated Customer
Service Provider in a Foreign Country prior to the expiration of an applicable
Licensor Acceptance Period or if the Parties fail to enter into a mutually
acceptable Service Agreement for an applicable Foreign Country within the time
specified in Section 4.5(b), (i) Licensee shall have the right, in its sole
discretion, to designate itself or any other Person as the Licensee Designated
Customer Service Provider for such Foreign Country, and (ii) Licensee, or its
designee, shall have the exclusive right to promote, offer to sell and sell, or
cause a third party designated by Licensee in its sole and absolute discretion
to promote, offer to sell and sell, Live Tech Services to each Licensee Customer
who purchases a Product (other than solely Live Tech Services) in such Foreign
Country. Licensee shall not have the right to offer solely Live Tech
Services to a Licensee Customer within a Foreign Country unless Licensee (i) had
initially Marketed Products (other than Live Tech Services) to such Licensee
Customer or (ii) first offers Licensor the right to provide such services in
accordance with the terms of Section 4.5(b) above. Any Licensee
Designated Customer Service Provider in one Foreign Country may be designated by
Licensee as a Licensee Designated Customer Service Provider in one or more other
Foreign Countries subject to the right of first offer to Licensor as provided in
Section 4.5(b).
(d) Licensor
shall use its best efforts to cause its employees, agents and representatives to
provide any customer service, technical and product support services and/or Live
Tech Services which Licensor’s employees, agents and representatives provide to
any Licensee Customers in substantially the same manner as the customer service,
technical and product support and/or Live Tech Services, as the case may be,
which is offered to all other customers of Licensor and in all events consistent
with best industry practices. Licensor agrees that all customer
service, technical and product support functions, and Live Tech Services
provided by Licensor’s employees, agents or representatives to Licensee
Customers will be performed in a professional manner consistent with industry
standards and that all Licensor personnel engaged in fulfilling its customer
service technical and product support obligations will possess sufficient
qualifications and professional competency and experience to carry out the
applicable services provided by such personnel in accordance with the foregoing
standards and the terms and conditions of this Agreement. Licensee
shall have the right to monitor the customer service, product and technical
support and Live Tech Services provided by Licensor and conduct quality control
assessments of Licensee’s customer service, product and technical support and
Live Tech Services from time to time, provided that Licensee shall use
reasonable efforts to minimize the interference with Licensor’s business
operations in the performance of such monitoring.
12
(e) Upon the
reasonable request of Licensee, for no additional consideration, Licensor shall
provide training to Licensee or its designee’s customer service and/or technical
and product support personnel who may from time to time provide customer service
with respect to any Products which are sold to Licensee Customers in the
International Territory.
(f) Licensor
shall use its best efforts to prevent its employees,
agents, representatives and designees who provide customer service,
technical and product support and/or Live Tech Services to Licensee Customers
from time to time from incentivizing or otherwise causing Licensee Customers
from cancelling or returning any applicable Products which they have purchased
from Licensee (or its sub-licensees or distributors) or otherwise attempting to
circumvent or deny any customer’s purchase or renewal of any Products from
Licensee (or its sub-licensees or distributors); provided, however, that nothing
in this Section 4.5(f) shall be deemed to permit or require Licensor or its
employees, agents and representatives to violate Applicable
Law. Subject to the preceding sentence, Licensor shall have the
exclusive right to renew subscriptions for Products originally sold to Licensee
Customers in the Domestic Territory. Licensee shall have the
exclusive right to renew subscriptions for Products originally sold to Licensee
Customers in the International Territory.
(g) Licensee
shall have the right, upon at least thirty (30) days prior written notice to
Licensee (but no more than twice each year), to audit the books, records, call
logs and call recordings of Licensor relating to Product orders, renewals and
cancellations by Licensee Customers to review whether any Licensee Customers who
have cancelled (or not renewed, solely with respect to the sales in the
International Territory) their orders for Products have subsequently purchased
Products directly from Licensor (or its licensees or distributors other than
Licensee). Licensee shall conduct any such audit during normal
business hours and shall use reasonable efforts to minimize the interference
with Licensor’s business operations. If any such audit reveals more
than a de minimus number of Licensee Customers who have cancelled (or not
renewed, solely with respect to the sales in the International Territory) their
orders for Products and have subsequently purchased Products directly from
Licensor (or its licensees or distributors other than Licensee), then, in
addition to any other remedies available to Licensee, Licensee may offset
Licensee’s reasonable out-of-pocket costs of conducting the audit (excluding any
travel and/or accommodations expense incurred by Licensee or its representative
in connection therewith) against any Royalty Payments due to Licensor with
respect to sales in the International Territory.
4.6 Customer
Inquiries/Complaints. If Licensor receives any correspondence
or inquiry from any Licensee Customer regarding any Product, customer service or
technical support complaints, Licensor shall promptly notify Licensee of such
correspondence or inquiry (including the details thereof) and deliver a copy of
any written correspondence to Licensee no later than five (5) days following the
Licensor’s receipt of such correspondence. All information contained
in any correspondence from any Person relating to any Products which are sold to
a Licensee Customer shall be considered Confidential Information subject to the
provisions of Section 8.3 below.
13
4.7 Software Maintenance and
Updates. Licensor shall notify each Licensee Customer of all
applicable malware threats and alerts and provide each Licensee Customer with
all Software maintenance releases, upgrades, updates, new releases and
enhancements for any Products purchased by such Licensee Customer, each on the
same basis as such updates, alerts, notices and other services are provided to
Licensor’s other customers during the entire term (including renewals thereof)
of such Licensee Customer’s subscription for such Product. Not later
than thirty (30) days following the end of each calendar quarter, Licensor shall
deliver to Licensee a list which sets forth in reasonable detail all malware
threats and alerts and Product maintenance releases, upgrades, updates, versions
and enhancements which have been provided to each Licensee Customer during the
preceding quarter.
4.8 Trademarks. Licensor
shall provide “on-file authority” to Licensee and make all necessary registered
user filings for Licensee to use the Trademarks in any jurisdiction where such
authority is necessary or desirable for Licensee and its designated third
parties to exercise the rights granted under this Agreement. Licensee shall have
the right to seek trademark registration in the jurisdictions in the
International Territory where Licensee will Market the Products (and shall have
the right to file all necessary declarations and affidavits in order to maintain
in effect the registrations for trademarks that may be issued in the
International Territory), and Licensor shall cooperate with Licensee as
reasonably requested by Licensee in connection therewith (including executing,
delivering and filing any necessary powers of attorney, forms, agreements,
authorizations or other documents). Licensor shall promptly file all
necessary declarations and affidavits in order to maintain in effect the
registrations for Trademarks that have been issued in the Domestic
Territory. In the event Licensor fails to file any documents or pay
any amounts necessary to maintain such Trademarks when due, Licensee shall have
the right to pay such amounts and file such documents on behalf of and for the
account of Licensor, and Licensor shall, within three (3) Business Days of
Licensee’s request, execute and deliver to Licensee or its designee any powers
of attorney, forms, agreements, authorizations or other documents which are
necessary in order for Licensee to pay such amounts and/or file such documents
on Licensor’s behalf. All costs or expenses actually incurred by
Licensee in connection with (i) Licensee’s registration of trademarks relating
to the Products in jurisdictions in the International Territory (and maintenance
thereof) and (ii) Licensee’s actions on behalf of Licensor with respect to
Trademarks registered in the Domestic Territory shall be credited against future
Royalties payable by Licensee under this Agreement. In connection with the
rights granted herein, Licensor hereby grants and licenses to Licensee, during
the Term, the right to use any trademarks subsequently issued, owned or
prosecuted in connection with the Products by Licensor for no additional
consideration under the terms and conditions of this Agreement.
4.9 Patents. Licensor
or an Affiliate has applied for those patent applications identified in Schedule B hereto for
patent protection of aspects of the Products or improvements thereof and shall
take all reasonable steps to complete the patent prosecution process so as to
result in the maximum patent protection available for the Products in the United
States and in those jurisdictions outside the United States in which Licensee
intends to market and sell the Products. At all times Licensor shall own and
retain ownership of such patents that issue, and all pending patent applications
sought by Licensor. In connection with the rights granted herein, Licensor
hereby grants and licenses to Licensee, during the Term, the right to use any
patents subsequently issued, owned or prosecuted in connection with the Products
by Licensor or its Affiliates for no additional consideration in connection with
the rights granted to Licensee on the terms and conditions set forth in this
Agreement. To the extent that Licensor or an Affiliate includes
patent markings in Software or related materials provided to Licensee, Licensor
covenants and agrees that such patent markings will be accurate and current and,
if a patent lapses or does not issue, a copy of the Product or the material with
no notice or an updated notice shall be promptly provided to
Licensee.
14
4.10 Cooperation upon Bankruptcy or
Cessation of Business. Licensor shall use, and cause its
representatives and Affiliates to use, best efforts to make all necessary
arrangements and take all required actions to permit Licensee to retain all
rights licensed hereunder with respect to the Products and the Product IP in the
event that Licensor (i) fails to provide customer and technical support for the
Products at a level and in a manner at least comparable to the manner and level
of such services as provided by Licensor to its customers as of the date of this
Agreement (which failure is due to a material deterioration in Licensor’s
business or operations as reasonably determined by Licensee and which failure is
not cured within thirty (30) days following written notice from Licensee which
sets forth in reasonable detail such deficiencies), (ii) is dissolved or
liquidated, (iii) commences a voluntary case or other proceeding seeking
liquidation, reorganization or other relief with respect to itself or its debts
under any bankruptcy, insolvency or other similar law, (iv) is subject to an
involuntary case or other proceeding seeking liquidation, reorganization or
other relief with respect to Licensor and an order for relief entered or such
proceeding has not be dismissed or discharged within sixty (60) days of
commencement, (v) has made an assignment for the benefit of creditors, or
(vi) otherwise ceases
to conduct business during the Term (each, an “Extraordinary
Event”). Without limitation of the foregoing, Licensor
covenants and agrees that:
(a) this Agreement
involves intellectual property rights and Licensee shall be entitled to all
benefits and protections afforded by Section 365(n) of the Bankruptcy Code and
any successor or similar statutes, including the right to elect to retain the
rights under this Agreement and to receive, without additional cost, a licensed
copy of all embodiments of the Products (but subject to any restrictions on
Licensor’s right to disclose any such embodiments which are not proprietary to
Licensor), such as source code for the Software (including current and all other
versions still supported for each Product), instructions for compiling the code,
technical information sufficient to allow a reasonably trained programmer to
understand, manipulate, support, maintain and modify the Software, and a list of
tools and third party software required to operate, use, support or manipulate
the Software (collectively, the “Product
Materials”);
(b) with
respect to subsection (a) above, the rights to Trademarks granted hereunder
shall be deemed severable in connection with the application of Section 365(n)
to the extent trademark rights hereunder are not within the purview of such
section;
(c) upon the
occurrence of an Extraordinary Event, Licensee shall be entitled to receive not
later than ten (10) days of written request, a full copy of the Product
Materials;
(d) Licensor
will, upon Licensee’s request and at Licensee’s expense for third party escrow
fees, deposit the Product Materials in a third party escrow arrangement for
release to Licensee upon the occurrence of an Extraordinary Event, and will
update such Product Materials twice each year with updated Software and
documentation;
15
(e) Product
Materials received by Licensee pursuant to Sections 4.10(a) and (c) shall be
used by Licensee and its Affiliates and contractors solely to provide
maintenance and support for the Products sold to Licensee Customers and continue
to Market, enhance and improve the Products; and
(f) Licensee
shall hold any Product Materials in the strictest confidence and treat such
Product Materials as Confidential Information (as defined below) and will not
disclose any Product Materials to third parties outside of its organization
without Licensor’s prior written consent.
4.11 Legal
Compliance. Licensor shall be and remain solely responsible to
ensure that all claims made in any materials, other than the Licensee Materials
(except to the extent that any claims or information in the Licensee Materials
are provided or made available by Licensor or its contractors and agents) in
whatever form, relating to the advertising, marketing, sale and distribution of
the Products, are properly substantiated and each of such materials otherwise
complies with all Applicable Laws relating to the advertisement and sale of the
Products. Licensor shall engage legal counsel for such purpose with
expertise in the regulation of advertising products that are similar in nature
to the Products and shall be solely responsible for the fees, costs and expenses
of such counsel.
5. Marketing Plan; Certain
Covenants of the Parties.
5.1 Marketing Materials/International
Websites.
Licensee may from time to time, in its sole discretion and at its sole
cost and expense, (i) produce or have produced one or more long or short form
direct response television (including cable, satellite and other means of
distribution) or radio commercials (in each case, solely in the
International Territory), spot commercials, print ads, radio advertisements,
instructional videos, packaging materials and/or other collateral material in
connection with the Marketing of the Products (including any private label
branding of the Products in the Territory) via the applicable Channels in the
Territory and/or (ii) apply for, register, and maintain new, one or more
separately identifiable Internet website addresses and domain names in
connection with the advertising, marketing, promotion, sale and distribution of
the Products in the International Territory (collectively, “Licensee Materials”).
At all times during and after the Term, Licensee will be the sole owner of all
rights to all Licensee Materials produced by or for Licensee during the Term,
and Licensee shall determine all content and other creative aspects of the
Licensee Materials, in its sole and absolute
discretion. Notwithstanding anything herein to the contrary, any
advertisements and other material developed and/or created by any applicable
marketing and/or Channel partners in connection with the Marketing of the
Products (including any private label branding of the Products) via the
applicable Channels in the Territory) (collectively, “Partner Materials”)
shall remain the sole and exclusive property of such marketing and/or Channel
partners.
16
5.2 Ownership of Certain Intellectual
Property Rights. Licensee shall have the right to apply for legal
protection of all trademarks, service marks, brands, logos, slogans which
Licensee or its designee may from time to time create or develop in connection
with Licensee’s Marketing of the Products, including, without limitation,
Licensee’s private label branding of the Products under marks other than the
Trademarks (collectively, “Licensee Trademarks”)
so long as such Licensee Trademarks do not infringe upon any then existing
Product IP. To the extent that Licensee’s Marketing of the Products
generates legally protectable intellectual property rights relating to the
Licensee Materials (including, without limitation, any Licensee Trademarks or
related goodwill other than the Trademarks), such intellectual property rights
shall be at all times Licensee’s exclusive property. All legally
protectable intellectual property relating to the Products other than the
Licensee Trademarks and Licensee Materials and which is created exclusively by
Licensor shall be owned exclusively by Licensor but shall be included in the
rights granted to Licensee and licensed to Licensee hereunder as Product
IP.
5.3 Private Label
Branding. Licensee shall have the right, during the Term and
directly or through third parties, to use and create derivative works of the
Product IP for purposes of private label branding of the Products via the
applicable Channels in the International Territory, and the manufacture,
advertisement, marketing, sale and distribution thereof by Licensee (or its
sub-licensees or distributors) via the applicable Channels in the International
Territory on the terms and conditions set forth in this
Agreement. Unless otherwise agreed to by Licensor, Licensee shall not
have the right to use and create derivative works of the Product IP for purposes
of private label branding (other than “MaxMySpeed” or any additional Licensor
approved trademarks under which Licensee may Market the Products from time to
time) of the Products in the Domestic Territory. The amount of any
Royalties payable with respect to Licensee’s private label branding of the
Products shall be calculated based on the Royalty applicable to the underlying
Product as set forth on Schedule D
hereto.
6. Representations and
Warranties of the Parties.
6.1 Mutual. Each Party
represents and warrants to the other Party that it has the complete right, power
and authority to enter into this Agreement and the ability, power, and authority
to perform all of its obligations hereunder, and this Agreement constitutes a
valid and legally binding obligation of Licensor, enforceable against such Party
in accordance with its terms.
6.2 Licensee. Licensee represents
and warrants to Licensor that:
(a) no consent
or approval is required by any third party for Licensee to enter into this
Agreement or for Licensee to exercise the rights granted hereunder;
and
(b) there are no
pending or threatened actions, suits or claims against Licensee or any of
Licensee’s Affiliates that would impair Licensee’s ability to enter into this
Agreement.
6.3 Licensor. Licensor represents
and warrants to Licensee that:
(a) it has not
entered into any oral or written contract or negotiations with any third party
which would impair the rights granted to Licensee under this Agreement, or limit
the effectiveness of this Agreement, nor is it aware of any claims or actions
which may limit or impair any of the rights granted to Licensee
hereunder;
17
(b) all trademarks, logos,
copyrights, materials and work product provided by Licensor to Licensee (which
is not created or provided by Licensee under this Agreement) are owned by,
and/or exclusively licensed to Licensor and, to Licensor’s knowledge, do not
infringe or violate any copyrights, trademarks, trade secrets, patents or other
proprietary rights of any kind belonging to any third party or violate any right
of privacy, right to publicity, misappropriate anyone’s name or likeness or
contain any defamatory, obscene or illegal material;
(c) it and all Product IP
is now in compliance in all material respects with all local, state, and federal
laws, rules and regulations applicable to its business and the advertising,
marketing, sale and distribution of the Products, including without limitation,
those of the Federal Telephone Consumer Protection Act (TCPA), the Federal
Consumer Fraud and Abuse Prevention Act, Federal Trade Commission, the Federal
Communications Commission, Payment Card Industry Data Security Standards, and
data security and privacy laws, as such may be amended from time to time, and
any other state or federal regulatory agency that has jurisdiction over
Licensor’s business activities or the Products of Product IP;
(d) no consent or approval is
required by any third party for Licensor to enter into this Agreement or to
grant the rights to the Product IP set forth herein or for Licensee to exercise
the rights granted hereunder (including with respect to any third party
software, content or other property included in the Products);
(e) the Product IP is valid
and subsisting in all material respects;
(f) Licensor has all
necessary rights and licenses to grant to Licensee the rights granted under this
Agreement and for Licensee to exercise such rights in the manner contemplated
hereunder;
(g) except for liens in
favor of Licensee, there are no liens, charges or encumbrances of any type, kind
or nature with respect to the Products and/or the Product IP;
(h) there are no pending
or, to Licensor’s knowledge, threatened actions, suits or claims against
Licensor or any of Licensor’s Affiliates relating to the Products and/or the
Product IP, and no third party has offered to license pending or issued patents
in connection with the Products or sent a demand alleging that any of the
Products or the use thereof infringe the patent or other intellectual property
rights of any third party;
(i) no actions,
suits or claims have ever been brought against Licensor or any of its Affiliates
relating to the Products and/or the Product IP;
(j) Licensor
has not heretofore assigned, transferred or otherwise disposed of any right,
title, interest or license which Licensor owns or controls related to the
Products or the Product IP in a manner that would conflict with this
Agreement;
(k) Licensor is not
in default in any material respects under any agreement related to the Products
and/or the Product IP;
(l) the
Software will conform to Licensor’s current published specifications when
installed and will be free of defects which affect system performance;
and
18
(m) the
Software will be free of programming code, devices or other software routines
(e.g., viruses, Trojan horses, worms, software locks, drop-dead devices, back
doors, time bombs) that are designed to disrupt the use of the Software or any
system with which the Software operates, or destroy or damage data or make data
inaccessible or delayed.
7. Indemnification;
Insurance.
7.1 Licensor’s
Indemnity. Licensor will indemnify, defend and hold harmless
Licensee and its Affiliates and its and their respective employees, members,
stockholders, directors, officers, agents, employees and representatives from
and against any and all actual damages, fines, fees, penalties, liabilities,
claims, losses, demands, suits, judgments, awards, settlements, actions,
obligations, costs and expenses (including reasonable costs of attorneys,
accountants and other experts or other reasonable expenses of litigation or
other Actions or of any default or assessment (collectively, “Losses”) that
are caused by or shall arise out of any of the following: (i) any Product or
Software defects; (ii) any customer service or product or technical support
provided by any of Licensor’s employees, contractors, representatives or agents
or the failure to provide it as required hereunder, including, without
limitation, any Live Tech Support upsells; (iii) any claims or actions arising
out of or resulting from Licensor or its other licensees’ and partners’
Marketing of the Products including, without limitation, claims or actions
relating to any class actions and governmental or regulatory investigations,
inquiries, and actions (except as otherwise subject to indemnification by
Licensee in accordance with Section 7.2(ii) below); (iv) any actual or alleged
infringement by the Products or any Product IP, or any advertising and materials
with respect thereto provided by Licensor, of any patent, copyright, trademark
or other intellectual property rights of any third parties or misappropriation
of any trade secrets of any third parties, other than actual or alleged
infringement by the Products or any Product IP or any of Licensee’s advertising
and materials directly resulting from any modifications made thereto by Licensee
or its employees, agents or representatives in connection with Licensee’s
Marketing of the Products; (v) any other breach of Licensor’s obligations under
this Agreement, including any breach of the representations, warranties and
covenants of Licensor set forth in this Agreement; (vi) any materials provided
by Licensor or its employees, agents or representatives and used by Licensee in
any of the Licensee Materials; or (vii) Licensor’s or its employees,
agents, representatives or licensees’ use of any Licensee Materials which are
transferred, assigned, or licensed to Licensor pursuant to Section 11.5 below
following the termination of this Agreement.
7.2 Licensee’s
Indemnity. Licensee will indemnify, defend and hold harmless
Licensor and its Affiliates and its and their employees, directors, officers and
agents against any Losses that are caused by or shall arise out of: (i) any
Product or Software defects solely to the extent such defects directly result
from any modifications made to a Product or Software by Licensee or its
employees, agents or representatives; (ii) any actual or alleged failure of
Licensee or its sublicensees’ and distributors’ to comply with Applicable Laws
in connection with Licensee’s or its sublicensees’ and distributors’ Marketing
of the Products including any related governmental investigations and class
actions (except to the extent such any Losses are caused by or relate to the
Products, Product IP and any materials provided or made available by Licensor or
its contractors and agents and are used by Licensee in any of the Licensee
Materials); (iii) any other breach of Licensee’s obligations under this
Agreement, including, without limitation, any breach of the representations,
warranties and covenants of Licensee set forth in the Agreement; and/or (iv)
actual or alleged infringement by the Products or any Product IP directly
resulting from any modifications made thereto by Licensee or its employees,
agents or representatives in connection with Licensee’s Marketing of the
Products (except to the extent such modifications are made at the request of
Licensor).
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7.3 Indemnification
Procedures.
(a) The Party
entitled to indemnification under this Article 7 (the “Indemnified Party”)
will provide the Party obligated to provide indemnification under this Article 7
(the “Indemnifying
Party”) with
prompt notice of any action for which its seeks indemnification; provided that
the failure to do so will not excuse the Indemnifying Party of its obligations
under this Article except to the extent prejudiced by such failure or
delay.
(b) The
Indemnifying Party will defend, with counsel reasonably satisfactory to the
Indemnified Party, at the sole cost and expense of the Indemnifying Party, such
action in all related proceedings, which proceedings will be vigorously and
diligently defended or prosecuted by the Indemnifying Party to a final
conclusion or will be settled at the discretion of the Indemnifying Party (but
only with the consent of the Indemnified Party in the case of any settlement
that provides for any relief other than the payment of monetary damages, or
which admits guilt, liability or culpability on the part of the Indemnified
Party or which could be reasonably expected to have an adverse impact on the
Indemnified Party’s business operations or reputation). The
Indemnifying Party will have control of such defense and proceedings, including
any compromise or settlement thereof (subject to the preceding sentence),
provided, however, that if (i) the Indemnifying Party fails to vigorously and
diligently defend, prosecute or settle any action (subject to the Indemnified
Party’s approval as provided above), (ii) the claim for indemnification relates
to or arises in connection with any criminal or quasi-criminal proceeding,
action, indictment, allegation or investigation involving an Indemnified Party,
(iii) the action seeks an injunction or equitable relief against the
Indemnified Party or (iv) the Indemnified Party has been advised by counsel that
a reasonable likelihood exists of a conflict of interest between the
Indemnifying Party and the Indemnified Party, then the Indemnified Party will
have: (a) the right to defend, at the sole cost and expense of the Indemnifying
Party, the action by all appropriate proceedings, which proceedings will be
defended or prosecuted by the Indemnified Party in a reasonable manner and in
good faith or will be settled at the discretion of the Indemnified Party (with
the consent of the Indemnifying Party which shall not be unreasonably withheld);
and (b) full control of such defense and proceedings, including any compromise
or settlement thereof, provided, however, that if requested by the Indemnified
Party, the Indemnifying Party will, at the sole cost and expense of the
Indemnifying Party, provide reasonable cooperation to the Indemnified Party and
its counsel in contesting any action which the Indemnified Party is
contesting. In any action the defense of which the Indemnifying Party
shall assume, the Indemnified Party shall have the right to participate in (but
not control) the defense and resolution of such action and to retain its own
counsel at such Indemnified Party’s own expense, so long as such participation
does not interfere with the Indemnifying Party’s control of such
litigation.
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(c) If
the Indemnifying Party notifies the Indemnified Party that it does not dispute
its liability to the Indemnified Party with respect to any action, then any
Losses suffered by the Indemnified Party as a result of the action will be
conclusively deemed a liability of the Indemnifying Party and the Indemnifying
Party will pay the amount of such Losses to the Indemnified Party on
demand. In the event any Indemnified Party should have a claim under
this Article 7 against any Indemnifying Party that does not involve a third
party action, the Indemnified Party will deliver notice of such claim with
reasonable promptness to the Indemnifying Party. The failure by any
Indemnified Party to give said notice will not impair such Party’s rights
hereunder except to the extent that an Indemnifying Party demonstrates that it
has been irreparably prejudiced thereby. If the Indemnifying Party
notifies the Indemnified Party that it does not dispute the claim described in
such notice, then any Losses suffered by the Indemnified Party in the amount
specified in the notice will be conclusively deemed a liability of the
Indemnifying Party and the Indemnifying Party will pay the amount of such Losses
to the Indemnified Party on demand. If the Indemnifying Party gives
notice to the Indemnified Party to the effect that the Indemnifying Party
disputes the claim, the Indemnifying Party and the Indemnified Party will
proceed in good faith to negotiate a resolution of such dispute, and if not
resolved through good faith negotiations within thirty (30) days of Indemnifying
Party’s notifying Indemnified Party of its dispute with the claim, the
Indemnified Party may pursue its other remedies hereunder, as it deems
appropriate.
7.4 Insurance.
(a) During the
Term of this Agreement and for a period of two (2) years thereafter, each Party
shall procure and maintain, at its sole cost and expense, in full force and
effect its own comprehensive general business liability insurance policy,
consistent with commercial practices or standards for similar industries,
insuring against any and all loss, liability or business interruption arising
from the obligations and activities of that Party hereunder including, without
limitation, those arising from, product liability, personal injury, wrongful
death or property damage. The coverage amount of such insurance
policy shall not be less than Five Million Dollars ($5,000,000.00) per
occurrence and Five Million Dollars ($5,000,000.00) in the
aggregate.
(b) During the
Term of this Agreement and for a period of two (2) years thereafter, each Party
shall procure and maintain Errors and Omissions/Professional Liability including
Media Liability insurance with a limit of not less than Five Million Dollars
($5,000,000.00) per occurrence and Five Million Dollars ($5,000,000.00) in the
aggregate and Cyberliability insurance with a limit of not less than Five
Million Dollars ($5,000,000.00) per occurrence and Five Million Dollars
($5,000,000.00) in the aggregate.
(c) The
insurance companies providing such insurance required under this Section 7.4
must have an A.M. Best rating of A-VII or better and be licensed or authorized
to conduct business in all fifty (50) of the United States. The
policies shall contain a waiver of subrogation with respect to the Indemnifying
Party and each policy shall contain all appropriate riders and endorsements
based on the nature of any Product manufactured or sold hereunder and its
intended use. Each Party shall name the other Party as an “additional
insured” and provide the other Party with originals or copies of certificates of
insurance so reflecting, and such insurance shall also provide, that the other
Party shall be notified in writing by the insurance carrier of any change or
modification in the policy (including termination), not less than thirty (30)
days prior to the effective date of such change (including
termination).
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7.5 Policies to be
Primary. The insurance maintained by each Party pursuant to
this Agreement shall provide that such Party’s insurance is primary to and
noncontributory with any and all other insurance maintained by or otherwise
afforded to the Indemnified Party, its members, stockholders, officers,
directors, employees and agents, but only for injury, damage or loss that falls
within such Party’s indemnity obligations under this Agreement.
8.
Restrictive and Other
Covenants.
8.1 Licensor Non-Competition.
Except as otherwise expressly provided herein, the rights and licenses
granted under this Agreement are sole and exclusive to Licensee (and its
distributors, sub-licensees and Affiliates or other such entities used in its
channels of distribution), and Licensor shall not, directly or indirectly, and
shall not authorize, permit or grant any rights to any Person other than
Licensee to, during the Term: (i) manufacture or Market any of the Products
(including, without limitation, the private label branding or localization of
any of the Products) or any products similar to the Products for sale or license
to any end user via any of the Channels in the Territory without the prior
written consent of Licensee; (ii) produce for itself, or for any other third
party, or allow a third party to produce, any infomercial, commercial or ad
placement for broadcast or publication in any markets in the International
Territory selling or marketing products which are identical, substantially
similar or similar to any of the Products or which would be in competition with
any of the Products in the International Territory; or (iii) grant or license
rights to use the Product IP or any variations or derivatives thereof to any
third party or otherwise enter into any agreement which would conflict with or
contravene the rights granted to Licensee under this Agreement. Notwithstanding the
foregoing, nothing herein shall prohibit Licensor during the Term from
advertising, marketing and selling pre-paid cards solely via “brick and mortar”
retail distribution channels and affinity relationships solely through the
currently existing agreement with Allianex (which pre-paid cards enable the end
user to purchase the Products solely via Licensor’s Internet website located at
xxx.xxxxxxxxxxxxx.xxx).
8.2 Licensee Limitation of Rights.
Licensee covenants and agrees that it shall not Market the Products, or
assist or authorize any third party in Marketing the Products, directly or
indirectly, except as expressly set forth herein nor shall it use the Product IP
except as expressly set forth herein, including selling or licensing the
Products to any Person in the Domestic Territory via a download from an Internet
website or portal.
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8.3 Confidentiality. In connection with the
activities contemplated under this Agreement, the Parties and their respective
Affiliates will disclose to each other confidential and non-public proprietary
information about their respective businesses, products and operations including
without limitation, the Product IP, Product technical information, marketing and
advertising strategies and plans, media purchasing strategies, Customer
Information (as defined below in this Agreement), financial data, the identity
of and arrangements with suppliers and Channel partners, information regarding
infomercial and other ads production, and other company information which may be
deemed a trade secret, or is sensitive in nature and not otherwise known to the
public (“Confidential
Information”). The Parties each agree not to (i) disclose to third
parties outside of its organization the Confidential Information of the other
Party or the Party’s Affiliates, except to Affiliates and its and their
respective employees, contractors, accountants, advisors, legal counsel, and
agents with a need to know, and including in the case of Licensee, to
Manufacturers, Channel partners, distributors and sub-licensees for the purpose
of exercising and implementing the rights granted hereunder; or (ii) use such
Confidential Information of the other Party or the other Party’s Affiliates for
commercial purposes or for the benefit of any third party, except in furtherance
of the manufacturing, sale, advertising, marketing, and distribution of the
Products contemplated by this Agreement, unless such Confidential Information is
readily available to the public or known in the trade, without the prior written
consent of the other Party and further shall treat all such Confidential
Information in strict confidence; provided, however, that each Party shall have
the right to disclose Confidential Information as required by law so long as
such disclosing Party notifies the other Party (with reasonable prior written
notice) of such legally required disclosure prior to its making of such
disclosure. The terms of this Agreement shall not be considered
Confidential Information and will be disclosed by Licensor in a Current Report
on Form 8-K filed with the Securities and Exchange Commission following the
execution hereof, to which this Agreement will be attached as an
exhibit.
8.4 Customer Information and
Ownership. Licensor and Licensee acknowledge that each such
Party, from time to time during the Term, may be provided with or otherwise have
access to certain customer information of Licensee Customers (including, without
limitation, customer lists, social security numbers, names, addresses, e-mail
addresses, product purchase information, credit card and/or bank account
information, phone numbers, unsubscribe/opt-out information, orders, revenues
and conversion) (collectively, “Customer
Information”). Each Party that has
Customer Information in its possession or under its control shall only use such
Customer Information in compliance with this Agreement and all Applicable
Laws. Licensor shall not disclose the Customer Information to any
third parties or use such Customer Information for commercial purposes,
including, without limitation, for the furtherance of its business or the
business of any of its Affiliates, except as required to satisfy any customer
service, technical support or other obligations of Licensor
hereunder. Each Party agrees to maintain good and sound safeguards to
protect against the destruction, loss, theft, disclosure, or alteration of
Customer Information in its possession or under its control, which safeguards
shall be at least as good and sound as the safeguards it utilizes for its own
data and not less than what is accepted in the industry for the type of
information involved and the type of business being conducted, and to observe
Applicable Laws in the use, disclosure and retention of the Customer
Information. Without limiting the foregoing, each Party agrees to implement or
utilize security measures that include firewalls, encryption, or other means,
where appropriate, that protect the integrity of the Customer Information and
control access to the Customer Information. Either Party shall,
immediately (and in any event, within twenty-four (24) hours) after it becomes
aware that any Customer Information has been disclosed or revealed to, or
accessed by any unauthorized third party, whether inadvertently, by means of a
breach of security processes or otherwise, provide the other with immediate
written notice of any such security breach and immediately and at its own
expense investigate and take all steps to identify, prevent and mitigate the
effects of such security breach. Further, the affected Party shall
promptly provide the other Party with a detailed description of the incident,
the data accessed, the identity of affected consumers, and such other
information as may be reasonably requested concerning the security breach and
conduct any recovery necessary to remediate the impact.
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8.5 Contacts with Governmental Entities;
Inspections. In the event that Licensor is contacted by any
governmental entity with any inquiry that would involve any disclosures about
any of the Products, Licensor shall notify Licensee within two (2) Business Days
of such contact, providing Licensee with the substance of the inquiry (including
any written materials where provided) and an opportunity to
respond. Upon consultation with Licensee, Licensor shall promptly
address any such inquiries relating to the Products and shall at all times do
all necessary things to protect the confidentiality of any of the Confidential
Information. Licensee agrees to comply with any such reasonable
requests made by Licensor in the course of responding to any such
inquiry. Licensor agrees to timely provide Licensee with any
materials generated by either Licensor or the governmental entity in responding
to any inquiry relating to the Products, including, in the case of an
inspection, a copy of the inspection findings and Licensor’s proposed response
to them. In the event of any contact by any governmental entity of
Licensee, Licensor agrees to cooperate with Licensee in providing any materials
to customer and/or governmental entity that are deemed to be responsive to the
inquiry. All information exchanged pursuant to this Section 8.5 shall
be held in the strictest confidence and shall not be disclosed to any third
party (other than the Parties’ advisors) without the other Party’s prior written
consent, unless such disclosure is required by Applicable Law or court order (in
which case the Party disclosing such information shall give the other Party
prior written notice of the anticipated disclosure).
8.6 Compliance with Applicable
laws. Each Party shall, throughout the Term, comply with all
Applicable Laws in connection with such Party’s Marketing of the Products and
use of the Product IP, including without limitation, those of the Federal
Telephone Consumer Protection Act (TCPA), the Federal Consumer Fraud and Abuse
Prevention Act, Federal Trade Commission, the Federal Communications Commission,
Payment Card Industry Data Security Standards, and data security and privacy
laws, as such may be amended from time to time, and any other state or federal
regulatory agency that has jurisdiction over such Party’s business activities or
the Products of Product IP.
9. Independent
and Separate Companies. The Parties will each be
responsible for the payment of their respective compensation, wages, taxes,
dues, employment benefits and other operating expenses in connection with the
separate operations of their respective businesses and companies. This Agreement
does not create a partnership, agency or joint venture relationship between
Licensor and Licensee. Each of Licensee and Licensor agree that it will not, nor
will it permit any person or entity acting for or on its behalf to, bind or
obligate the other Party, or represent to have such authority, without the
express prior written approval of the other Party.
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10. Licensor
Buy-Out Rights.
10.1 Generally. From and
after the eighteen (18) month anniversary of each of the Domestic Roll-Out Date
and the International Roll-Out Date, as the case may be (the “Buy-Out Anniversary
Date”), Licensor shall have the right, but not the obligation (the “Licensor’s Buy-Out
Option”), exercisable within one (1) year following the applicable
Buy-Out Anniversary Date (the “Initial Exercise
Period”), to buy-back and terminate the rights granted to Licensee
hereunder solely with respect to the Domestic Territory or the International
Territory, or both (assuming each Buy-Out Anniversary Date has been met), as the
case may be, upon at least sixty (60) days prior written notice to Licensor
specifying which rights (i.e. the Domestic Territory or International Territory,
as the case may be) Licensee elects to terminate (the “Buy-Out Notice”) and
by delivering payment of the applicable Buy-Out Price. The Parties
acknowledge and agree that the Licensor Buy-Out Option with respect to the
Domestic Territory is separate and distinct from the Licensor Buy-Out Option
with respect to the International Territory, and that Licensor’s exercise or
non-exercise of the Licensor Buy-Out Option with respect to the Domestic
Territory shall not affect Licensor’s right to exercise the Licensor Buy-Out
Option with respect to the International Territory, and vice
versa. Licensor shall continue to have the right to exercise the
Licensor Buy-Out Option for each year of the Term following the expiration of
the Initial Exercise Period, by delivering a Buy-Out Notice to Licensor not less
than ninety (90) days prior to each annual anniversary of the expiration of the
Initial Exercise Period (each, an “Exercise Period Anniversary
Date”), specifying which rights (i.e. Domestic Territory, International
Territory or both, as the case may be) Licensee elects to buy back and terminate
and by delivering payment of the applicable Buy-Out Price. The
effective date of any buy-out occurring after the Initial Exercise Period shall
be the upcoming Exercise Period Anniversary Date for which Licensor has given
the requisite Buy-Out Notice within the time period specified
above. For purposes of this Agreement, the “Buy-Out Price” shall be
the price determined in accordance in Section 10.2(a) or 10.3(a), as
applicable.
10.2 Buy-Out
Price – Initial Exercise Period
(a) If Licensor
delivers the Buy-Out Notice to Licensee during the Initial Exercise Period then
the Buy Out Price with respect to Licensee’s license rights hereunder relating
to the Domestic Territory or the International Territory, as the case may be,
shall be equal to the product of (X) the annualized gross revenue earned by
Licensee in connection with the sale and distribution of the Products in the
Domestic Territory or the International Territory, as the case may be (based on
the average gross revenue for the three (3) month period ended as of the last
Business Day of the last full month immediately preceding the date of Licensor’s
delivery of the Buy-Out Notice (the “Buy-Out Calculation
Date”) (“Licensee Annualized Gross
Revenue”), multiplied by (Y) a fraction, the numerator of which shall be
equal to one-half (1/2) of the enterprise value of Licensor as of the Buy-Out
Calculation Date and the denominator of which shall be equal to the aggregate
gross revenue of Licensor for the trailing twelve (12) month period ended as of
the end of the most recent fiscal quarter of
Licensor. Notwithstanding the foregoing, the Buy-Out Price for the
Initial Exercise Period shall not be less than an amount equal to the factor of
1.5 multiplied by Licensee Annualized Gross Revenue from the sale and
distribution of the Products in the Domestic Territory or the International
Territory, or both, as the case may be (the “Minimum Initial Buy-Out
Price”).
(b) For
example, if (i) Licensor delivers a Buy-Out Notice during the Initial Exercise
Period with respect to the Domestic Territory on April 15, 2013; (ii) the
aggregate gross revenue earned by Licensee in connection with the sale and
distribution of the Products in the Domestic Territory for the three (3) month
period ended March 31, 2013 (the Buy-Out Calculation Date) equals
$15,000,000.00; (iii) the enterprise value of Licensor as of March 31, 2013
equals $240,000,000.00 and (iv) Licensor’s aggregate gross revenue for the
twelve (12) month period ended as of March 31, 2013 equals $60,000,000.00, then
the Buy-Out Price would be calculated as follows:
Buy-Out Price = ($15,000,000 x 4) x
((.5 x 240,000,000)/60,000,000)
= $120,000,000
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(c) If
the Parties cannot agree on the Buy-Out Price upon exercise of Licensor’s
Buy-Out Option during the Initial Exercise Period within thirty (30) days
following Licensor’s delivery of the Buy-Out Notice, then within ten (10) days
thereafter, the Parties shall submit the calculation of the Buy-Out Price to a
certified public accounting firm mutually acceptable to the Parties (or, if
they are unable to agree within such ten (10) day period, then to a certified
public accounting firm selected by the Los Angeles office head of Ernst &
Young) (the “Neutral
Auditor”). Each of the Parties agrees to execute, if requested
by the Neutral Auditor, an engagement letter reasonably satisfactory to such
Party and to provide any documents or financial statements reasonably requested
by the Neutral Auditor in connection with the calculation of the Buy-Out
Price. The Neutral Auditor shall act as an arbitrator to determine
the Buy-Out Price. The calculation of the Buy-Out Price by the
Neutral Auditor shall be final and binding upon the Parties; provided, however,
that in no event shall the Buy-Out Price be less than the Minimum Initial
Buy-Out Price.
10.3. Buy-Out
Price – Following Initial Exercise Period.
(a) If
the Buy-Out Notice is delivered at any time following the expiration of the
Initial Exercise Period, the Buy-Out Price shall be equal to (i) seventy five
percent (75%) of the fair market value (“FMV”) (as determined
below) of Licensee’s rights hereunder relating to the Domestic Territory,
International Territory, or both, as the case may be, if the Buy-Out Notice is
delivered within the ninety (90) day notice period prior to the first Exercise
Period Anniversary Date or (ii) one hundred percent (100%) of the FMV of
Licensee’s rights hereunder relating to the Domestic Territory, International
Territory, or both, as the case may be, if the Buy-Out Notice is delivered
within the ninety (90) day notice period prior to any subsequent Exercise Period
Anniversary Date. Notwithstanding the foregoing to the contrary, in
the event Licensor’s Buy-Out Option is exercised following the expiration of the
Initial Exercise Period, the Buy-Out Price shall not be less than an amount
equal to the factor of 3.0 multiplied by Licensee Annualized Gross Revenue from
the sale and distribution of the Products in the Domestic Territory or the
International Territory, or both, as the case may be.
(b) FMV
shall be the value of the Licensee’s rights which are subject to the Buy-Out
Notice as of the specified Exercise Period Anniversary Date (i) as determined by
the mutual agreement of Licensor and Licensee or (ii) if Licensor and Licensor
are unable to agree upon the FMV within thirty (30) days after the specified
Exercise Period Anniversary Date, then the FMV shall be determined by an
independent appraiser who has experience in determining the fair market value of
licensing rights similar to the rights granted to Licensee hereunder which
appraiser shall be selected jointly by Licensor and Licensee. The
determination of the fair market value by that appraiser shall be binding and
conclusive on all parties to this Agreement. If Licensor and Licensee
are unable to agree on the selection of an appraiser within thirty (30) days,
Licensor and Licensee shall then have ten (10) days to each select an
independent appraiser who has experience in determining the value of licensing
rights. The two appraisers so selected shall select a third appraiser
who has experience in determining the value of licensing rights and whose
appraisal shall be conclusively deemed to be the FMV and shall be binding on the
parties. Each appraiser selected hereunder shall be instructed to
complete the determination of FMV not later than thirty (30) days following
their engagement by the Parties and to take into account the intellectual
property rights and other rights and assets being transferred to Licensor
(including any inventory of Licensee) upon the buy-out of Licensee’s rights, in
addition to the value of the license rights. Each Party shall bear
the cost of its selected appraiser, and the Parties shall split equally the cost
of any jointly selected appraiser or a third appraiser, if
required.
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10.4 Cooperation of Parties in Determining
Buy-Out Price. The Parties shall cooperate with one another
and any appointed auditor or appraiser in providing any necessary documents or
financial statements necessary to calculate the applicable Buy-Out Price and
shall act in good faith in negotiating and determining the Buy-Out
Price.
10.5 Payment of Buy-Out
Price. Licensor shall pay the Buy-Out Price (as
adjusted to include any Unapplied Localization Reimbursement Expenses in
accordance with Section 4.3(c)) to Licensee in cash or in shares of validly
issued and authorized shares of common stock of Licensor which have been fully
registered with the U.S. Securities and Exchange Commission (the “Commission”) for
resale (to the extent legally permitted under applicable federal securities laws
and regulations), or any combination thereof, at Licensee’s sole
option. In the event that all or any portion of the Buy-Out Price is
paid in shares of common stock of Licensor, the number and price of shares to be
issued to Licensee for payment of the Buy-Out Price shall be equal to an amount
agreed to by the Parties. Licensor agrees to cooperate with the
Licensee as reasonably requested by Licensee in structuring the payment of the
Buy-Out Price in such a manner to achieve the most tax efficient structure for
Licensee’s receipt of the Buy-Out Price.
10.6 Closing of
Buy-Out.
(a) The closing
(the “Licensor Buy-Out
Closing”) of the transactions in connection with Licensor’s exercise
of Licensor Option shall occur at such place and date as Licensee and
Licensor may agree in writing but in no event later than the later of (i)
one hundred twenty (120) days after Licensor’s delivery of the Buy-Out
Notice or (ii) determination of the Buy-Out Price by the auditor or
appraiser, as the case may be, pursuant to Sections 10.2 or 10.3, as the case
may be (the “Buy-Out
Closing Date”). Any portion of the Buy-Out Price which is
payable in cash shall be paid by Licensor at the Buy-Out Closing Date by wire
transfer of immediately available funds to a bank account designated by
Licensee. Any portion of the Buy-Out Price which is payable in common
stock of Licensor shall be paid by Licensor’s delivery of stock certificates (or
other written evidence satisfactory to Licensee) at the Buy-Out Closing Date
representing the number of shares of common stock which Licensee has agreed to
accept in connection with Licensor’s payment of the Buy-Out
Price. From and after the effective date of such termination, this
Agreement shall continue in full force and effect with respect to any portion of
the Territory not subject to the exercise of Licensor’s Buy-Out Option in
accordance with this Section 10.6.
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(b) On the
Buy-Out Closing Date, Licensee shall (i) transfer to Licensor all of Licensee’s
Product inventory to be sold in the Domestic Territory, the International
Territory, or both, as the case may be, which is subject to Licensor’s exercise
of Licensor’s Buy-Out Option; (ii) assign and transfer all of Licensee’s right,
title and interest in and to any Licensee Materials used by Licensee in the
Domestic Territory, the International Territory, or both as the case may be
(excluding any non-Product specific trade secrets, processes, templates, or
other creative items which are used by Licensee in connection with its business
and/or any Partner Materials) to Licensor, without any continuing liability of
Licensee and only to the extent such rights are transferrable (and subject to
any required third party consents which shall be the responsibility of Licensor
to obtain); and (iii) to the extent permitted by Applicable Law, provide
Licensor with reasonable access to Customer Information then in Licensee’s
possession or control solely for the purposes of enabling Licensor to provide
ongoing customer service, product and technical support and subscription
renewals to existing Licensee Customers following the Buy-Out Closing Date. If
any Licensee Materials cannot be assigned to Licensor, Licensee shall grant to
Licensor, subject to any required third party consents, an exclusive,
irrevocable, royalty-free license to use and exploit such Licensee Materials
following the termination hereof for so long as Licensee has such
rights. In addition to the foregoing, Licensee shall use commercially
reasonable efforts to assign and transfer to Licensor all of Licensee’s rights
under any third party agreements (to the extent transferable) entered into by
Licensee with respect to the Products sold and the services provided under this
Agreement relating to the Domestic Territory or International Territory, or
both, as the case may be, which is subject to Licensor’s exercise of Licensor’s
Buy-Out Option.
(c) Licensor
shall have the right to request Licensee to provide management services in the
Domestic Territory, the International Territory, or both, as the case may be,
following the applicable Buy-Out Closing Date, which request shall be set forth
in the applicable Buy-Out Notice. Licensee and Licensor shall then
negotiate in good faith a management services agreement to be executed and
delivered by Licensee and Licensor on the Buy-Out Closing Date pursuant to which
the services shall be provided. Licensee shall not be obligated to
provide any such management services unless and until a management services
agreement is entered into between the Parties on terms and conditions
satisfactory to both Parties.
11. Term and
Termination.
11.1 Length of Term. Licensee and
Licensor agree that the term of this Agreement (the “Term”) shall be in
perpetuity unless terminated sooner as provided in this Agreement.
11.2
Default by Licensee;
Cure Period. In the event of a default by Licensee under this Agreement,
Licensor shall provide written notice of default to Licensee in the manner
required under Section 13.13 hereof. This notice of default shall clearly state
the precise nature of the default. In the event Licensee fails to
cure the default within thirty (30) days of receipt of the written notice of
default from Licensor, Licensor may, at its option, seek to recover actual
damages against Licensee; provided, however that Licensor’s sole and exclusive
remedy in the event of Licensee’s failure to pay any Annual Advance shall be to
elect to cause the exclusive rights granted to Licensee hereunder to convert to
non-exclusive rights in accordance with the terms and conditions of Section
2.2.
11.3 Default by Licensor; Cure Period.
In the event of a default by Licensor under this Agreement, Licensee
shall provide written notice of default to Licensor in the manner required under
Section 13.13 hereof. This notice of default shall clearly state the precise
nature of the default and state that Licensee may terminate this Agreement if
the default is not cured by Licensor within thirty (30) days of Licensor’s
receipt of the notice of default. In the event Licensor fails to cure the
default within thirty (30) days of receipt of the written notice of default from
Licensee, Licensee may, at its option, seek actual damages against Licensor or
an order of specific performance or injunctive relief solely to correct or
enjoin any such breach and/or terminate this Agreement without further notice to
Licensor.
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11.4 Termination by Licensee for
Convenience.
(a) Licensee
shall have the right to terminate this Agreement at any time with respect to the
Domestic Territory, International Territory or both, with or without cause, upon
at least ninety (90) days prior written notice to Licensor. Upon
Licensor’s receipt of any such notice, the licenses set forth herein shall
become non-exclusive and Licensor shall have the right to grant such licenses to
any other Person or Persons in the applicable territory, provided that any such
grant to another Person shall be non-exclusive during such ninety (90) day
notice period of termination and the Sell Off Period.
(b) If
Licensee elects to terminate this Agreement in accordance with this Section
11.4, Licensee agrees that for a period of one (1) year from the date of
termination, Licensee will not Market any antivirus and Internet security
products and services in the Channels in the Territory which are competitive
with the Products (as of the date of termination) without the prior written
consent of Licensor. Licensee agrees that the duration and geographic
scope of the non-competition provisions set forth in this Section 11.4 are
reasonable. In the event that any court determines that the duration
or the geographic scope, or both, are unreasonable and that such provision is to
that extent unenforceable, the Parties agree that the provision shall remain in
full force and effect for the greatest time period and in the greatest area that
would not render it unenforceable. The Parties intend that the foregoing
non-competition provision shall be deemed to be a series of separate covenants,
one for each and every state of the United States of America where this
provision is intended to be effective in the case of the Domestic Territory, and
one for each and every political subdivision of each and every Foreign Country
where this provision is intended to be effective in the case of the
International Territory.
11.5 Effect of Termination. Upon
termination of this Agreement for any reason, the licenses granted to Licensee
hereunder, together with all rights and privileges relating thereto, shall
immediately terminate (but in the event of a partial termination in accordance
with Section 11.4, the rights granted to Licensee hereunder shall only terminate
with respect to the Domestic Territory or the International Territory, as the
case may be), and the Parties shall have no further rights or obligations
hereunder except pursuant to Sections 4.5(a), 4.5(b), 4.6, 5.2, 8.3, 8.4, 8.5,
11.6, and Articles 7 and 13, which shall survive the termination of this
Agreement; provided that for the period of one hundred fifty (150) calendar days
following the effective date of such termination (including any partial
termination in accordance with Section 10.4 (but not including any termination
as a result of an exercise of Licensor’s Buy-Out Option) with respect to the
rights granted to Licensee hereunder with respect to the Domestic Territory or
the International Territory, as the case may be) (the “Sell Off Period”),
Licensee shall retain (for itself and its sublicensees and distributors) the
right to (i) sell off and distribute any Products remaining in Licensee’s or its
sublicensees and distributors’ inventories at termination in the terminated
Channels; (ii) fill any orders for Products that have been received as of the
termination date; and (iii) use the Product IP in connection with the
Marketing of such remaining Products.
29
11.6 Ownership of Licensee Materials; Customer
Information. Promptly following the expiration of the Sell Off Period,
Licensee shall assign and transfer, at Licensor’s sole cost and expense, all of
its right, title and interest in and to any Licensee Materials (excluding any
non-Product specific trade secrets, processes, templates, or other creative
items which are used by Licensee in connection with its business and/or any
Partner Materials) to Licensor, without any continuing liability of Licensee and
only to the extent such rights are transferrable (and subject to any required
third party consents which shall be the responsibility of Licensor to obtain).
If any Licensee Materials cannot be assigned to Licensor, Licensee shall grant
to Licensor, subject to any required third party consents, an exclusive,
perpetual, irrevocable, royalty-free license to use and exploit such Licensee
Materials following the termination hereof. Notwithstanding the
foregoing, Licensee shall retain ownership of any Customer Information in its
possession or under its control. Upon termination of this Agreement,
Licensor shall promptly deliver to Licensee any Customer Information then in
Licensor’s possession and shall destroy any copies of any Customer Information.
12. Specific
Performance. The rights granted to
Licensee hereunder are of unique and extraordinary character, therefore in
addition to whatever other relief it may otherwise be entitled, the Parties
agree that Licensee shall be entitled to obtain an injunction issued by any
court of competent jurisdiction in order to specifically enforce the terms of
this Agreement.
13. Miscellaneous.
13.1 Choice of Law. This Agreement will be
governed by and construed in accordance with the laws of the State of
California, without regard to its conflict of laws principles.
13.2 Entire Agreement. This
instrument constitutes the entire agreement between the Parties relating to the
subject matter hereof and supersedes in its entirety any prior agreements or
understandings between the Parties relating to the subject matter
hereof. This Agreement may be amended only by an agreement in writing
signed by both of the Parties.
13.3 Assignment;
Sublicense.
(a) The rights
and obligations of a Party under this Agreement may not be assigned by such
Party without the prior written consent of the other Party; provided, however,
that the entire rights and obligations of either Party under this Agreement are
transferable, without the prior consent of the other Party, to (i) any person or
entity that acquires all or substantially all of the business or assets of a
Party (the “successor”) (whether by purchase of assets, equity merger or other
corporate reorganization) and (ii) any Affiliate of such Party as long as such
Party agrees to remain liable for its obligations hereunder. Any such
Affiliate or successor (whether by purchase of assets, equity merger or other
corporate reorganization) to all or substantially all of a Party’s business
and/or assets shall assume all of such Party’s rights and shall assume all of
the obligations of such Party under this Agreement and shall agree to perform
all of that Party’s obligations under this Agreement in the same manner and to
the same extent as the original Party is required to perform such obligations in
the absence of such a succession. Assignment under the terms of this paragraph
shall not effect termination of the Agreement. Notwithstanding the
foregoing, Licensor shall not be entitled to transfer all or any portion of its
rights and obligations hereunder to any third-party that is engaged in the
business of selling consumer products or any other products via direct response
or via continuity methods without the prior written consent of Licensee, which
consent Licensee may withhold in its sole and absolute
discretion.
30
(b) Upon
Licensor’s prior written consent (which consent shall not be unreasonably
withheld), Licensee may, during the Term, grant sub-licenses of its rights to
Market the Products and use and otherwise exploit the Product IP in accordance
with the terms hereof to any Person for such sub-licensees’ use in connection
with the Marketing of the Products via the applicable Channels in the
Territory. Licensor’s failure to disapprove of a proposed sub-license
by Licensee within five (5) Business Days following Licensee’s written request
therefore shall be deemed Licensor’s approval thereof. Any consent by
Licensor with respect to Licensee’s grant of a sub-license under this Section
13.3(b) shall not be deemed to be a consent to any other sub-licenses or any
sub-license to any Person to whom such consent was not
specified. Notwithstanding the foregoing, Licensor’s prior written
consent shall not be required for Licensee to Market the Products via its
Channel partners.
13.4
Binding Terms. Subject
to Section 13.3, the rights and obligations of the parties under this Agreement
will inure to the benefit of and be binding upon their respective successors and
permitted assigns.
13.5 Severability. If any provision
or application of this Agreement to any person or circumstance shall be held
invalid, inoperative or unenforceable, the remaining Agreement and application
to other persons or circumstances shall not be affected, impaired nor
invalidated thereby. Each provision of this Agreement shall be
enforceable to the fullest extent permitted by applicable law.
13.6 Third Party Beneficiaries.
Nothing in this Agreement: (a) confers any direct rights and remedies
under this Agreement on any person not a party hereto; (b) releases,
discharges or satisfies any obligation of any person not a party; nor (c) gives
any person not a party hereto any right of action against any party
hereto.
13.7 Section Headings. The section
and paragraph headings are included for reference purposes only, and in no way
define, limit or describe the scope or intent of this Agreement nor in any way
affect the terms and provisions thereof.
13.8 Dispute
Resolution.
(a) Except as
otherwise provided in this Agreement, Licensor and Licensee will attempt in
good faith to resolve through negotiation any dispute, claim or controversy
arising out of or relating to this Agreement. Either Party may
initiate negotiations of any dispute by providing written notice to the other
Party, setting forth the subject of the dispute. The recipient of
such notice will respond in writing within ten (10) calendar days with a
statement of its position on and recommended solution to the
dispute. If the dispute is not resolved by this exchange of
correspondence, then representatives of each Party with full settlement
authority will meet at a mutually agreeable time and place within thirty (30)
calendar days of the date of the initial notice in order to exchange relevant
information and perspectives, and to attempt to resolve the
dispute.
31
(b) If the
dispute is not resolved by these negotiations, unless otherwise agreed to by the
Parties in writing, the matter will be submitted for mediation administered by
the Judicial Arbitration & Mediation Service (“JAMS”) before a
single mediator who
shall have experience in the subject matter of the dispute. The
Parties shall jointly select the mediator within fifteen (15) days following the
commencement of such action. If the Parties cannot agree upon the
mediator within fifteen (15) days following the commencement of such action,
each Party shall select a mediator with experience in the subject matter of the
dispute, and the two (2) selected mediators shall select a third mediator
with such experience, who shall mediate such dispute. The Parties
shall share any fees or expenses of the mediator.
(c) If the
matter is not resolved through mediation, any dispute, claim or controversy
arising out of or relating to this Agreement, or the construction, validity,
enforcement or interpretation of this Agreement shall be resolved exclusively in
the state or federal courts sitting in the City of Los Angeles. Each
party hereby irrevocably submits to the exclusive jurisdiction of the state and
federal courts sitting in the City of Los Angeles for the adjudication of any
dispute hereunder or in connection herewith or with any transaction contemplated
hereby or discussed herein, and hereby irrevocably waives, and agrees not to
assert in any proceeding, any claim that it is not personally subject to the
jurisdiction of any such court, that such proceeding is improper or is an
inconvenient venue for such proceeding. Each party hereby irrevocably
waives personal service of process and consents to process being served in any
such proceeding by mailing a copy thereof via registered or certified mail or
overnight delivery (with evidence of delivery) to such party at the address in
effect for notices to it under this Agreement and agrees that such service shall
constitute good and sufficient service of process and notice
thereof. Nothing contained herein shall be deemed to limit in any way
any right to serve process in any other manner permitted by law. The
parties hereby waive all rights to a trial by jury. If either party
shall commence a proceeding to enforce any provisions of this Agreement, then
the prevailing party in such proceeding shall be reimbursed by the other party
for its reasonable attorneys’ fees and other costs and expenses incurred with
the investigation, preparation and prosecution of such proceeding.
13.9 Counterparts. This Agreement
may be executed in any number of counterparts, each of which when duly
executed and delivered shall be an original, but all such counterparts shall
constitute one and the same agreement. Any signature page of this Agreement may
be detached from any counterpart without impairing the legal effect of any
signatures, and may be attached to another counterpart, identical in form, but
having attached to it one or more additional signature pages. This Agreement may
be executed by signatures provided by electronic facsimile transmission (also
known as “Fax” copies) or email delivery of a portable data file (also known as
a PDF), which facsimile or PDF signatures shall be as binding and effective as
original signatures.
13.10 Limitation of
Liability. Notwithstanding anything to the contrary in this
Agreement, except to the extent such damages are part of a damages award or
governmental order which is subject to the indemnification obligations under
Section 7 above or related to a breach by a Party of Section 8.4, no Party or
its Affiliates shall, in any event, be liable to the other Party (or its
Affiliates) for any punitive, consequential or special damages of any kind,
including, but not limited to, loss of revenue or income, cost of capital, loss
of opportunity relating to the breach or the alleged breach of this Agreement,
except in cases of fraud or intentional misrepresentation by such
Party.
32
13.11 Publicity. Licensor
and Licensee shall consult with each other in issuing any press releases with
respect to the transactions contemplated hereby, and neither the Licensor nor
the Licensee shall issue any such press release or otherwise make any such
public statement without the prior consent of Licensor, with respect to any
press release of Licensee, or without the prior consent of Licensee, with
respect to any press release of Licensor, which consent shall not unreasonably
be withheld or delayed, except if such disclosure is required by law or
regulation, in which case the disclosing party shall promptly provide the other
party with prior notice of such public statement or
communication. Notwithstanding the foregoing, subject to applicable
law, Licensor shall not publicly disclose the name of Licensee, or include the
name of the Licensee in any filing with the Commission or any regulatory agency
or trading market, without the prior written consent of Licensee.
13.12 No Guarantee. Licensor
acknowledges and agrees that: (i) it is well-informed about the financial
risks associated with the direct response advertising industry and
(ii) Licensee makes no warranty, expressed or implied, as to the degree of
success to be achieved by reason of the airing or other distribution of any
Licensee Materials, nor shall Licensor seek to hold Licensee liable with respect
thereto. Licensee has not made, and does not hereby make, any
representation or warranty with respect to the level of sales and revenue to be
derived as a result of Licensee’s advertising, promotion and marketing of the
Products and/or Licensee’s airing or other distribution of Licensee
Materials. Licensor recognizes and acknowledges that the level of
revenues from sales of the Products of any kind contemplated by this Agreement
is speculative. Licensor agrees that it shall not make any claim, nor
shall it seek to impose any liability upon Licensee based upon any claim that
more sales, revenues, media exposure or customers could have been obtained or
better business could have been done than was actually made or done by Licensee
or its successors, licensees and assigns, or that better business terms, prices
or opportunities could have been obtained.
13.13 Notices. Any notice, request,
payment or other communication under this Agreement shall be in writing and
shall be given or made by physical delivery, confirmed facsimile with a copy
sent the same day by first class mail postage prepaid, overnight carrier (e.g.,
Federal Express) or by U.S. mail, registered or certified mail (postage prepaid,
return receipt requested) addressed to the appropriate Party. All such notices
shall be addressed as follows or such other addresses of which a Party
subsequently notifies the other Party (provided that a Party’s inadvertent
failure to comply with the provisions of this Section 13.13 shall not be deemed
a breach of this Agreement provided that the notice reaches the other Party in a
reasonably timely manner).
IF TO
LICENSOR:
CyberDefender Corporation
000 Xxxx 0xx Xxxxxx, Xxxxx 0000
Xxx Xxxxxxx, XX 00000
Fax: 000-000-0000
Attn: Xxxx Xxxxxxxx
WITH A COPY TO:
Xxxxxxxxxx & Xxxxx,
LLP
33
00000 Xxxxxxxx Xxxx.
Xxxxx 000
Xxx Xxxxxxx, XX 00000
Fax: 000-000-0000
Attn:
Xxxxx Xxxxxxxxx, Esq.
IF TO
LICENSEE:
GR Match,
LLC
c/o
Xxxxx-Xxxxxx LLC
0000
Xxxxx Xxxx Xxxxxxxxx, Xxxxx 0000
Xxxxx
Xxxxxx, XX 00000
Fax (000)
000-0000
Attn:
General Counsel
WITH A
COPY TO:
GR Match,
LLC
c/o
Xxxxx-Xxxxxx LLC
0000
Xxxxx Xxxx Xxxxxxxxx, Xxxxx 0000
Xxxxx
Xxxxxx, XX 00000
Fax (000)
000-0000
Attn:
President
WITH A
COPY TO:
Xxxxxxx
LLP
000 0xx
Xxxxxx, XX
Xxxxxxxxxx,
XX 00000
Fax (000)
000-0000
Attn:
Xxxxxx X. Xxxxxx, Xx., Esq.
[remainder
of page intentionally left blank]
34
IN
WITNESS WHEREOF, this Agreement is entered into as of the day and year first
above written.
“LICENSOR”
|
|
CYBERDEFENDER
CORPORATION,
|
|
a
California corporation
|
|
By:
|
|
Name:
Xxxx Xxxxxxxx
|
|
Title:
Chief Executive Officer
|
|
“LICENSEE”
|
|
GR
MATCH, LLC,
|
|
a
Delaware limited liability company
|
|
By:
|
|
Name:
Bennet Van xx Xxxx
|
|
Title:
Manager
|
35
Schedule
A
Territory
and Channels of Distribution
Territory
|
Channels of Distribution
|
|
“DOMESTIC
TERRITORY”
|
||
United
States
|
(1)
Retail stores (including online retail storefronts, such as online
websites of “brick and mortar” retailers, as well as strictly online
retailers such as Xxxxxx.xxx), kiosks, counters and other similar retail
channels of distribution
(2)
Television shopping channels (e.g. QVC and HSN) regardless of the delivery
means (e.g. broadcast, cable, satellite television, closed circuit,
etc.)
|
|
“INTERNATIONAL
TERRITORY”
|
||
Australia
Canada
China
Hong
Kong
India
Japan
New
Zealand
Russia
Taiwan
Western
Europe
Ø Andorra
Ø Austria
Ø Belgium
Ø Denmark
Ø Finland
Ø France
Ø Germany
Ø Greece
Ø Iceland
Ø Ireland
Ø Italy
Ø Liechtenstein
Ø Luxembourg
Ø Netherlands
Ø Norway
Ø Portugal
Ø Spain
Ø Sweden
Ø Switzerland
Ø United
Kingdom
|
|
(1)
Retail stores (including online retail storefronts), kiosks, counters and
other similar retail channels of distribution
(2)
Television shopping channels (e.g. QVC and HSN) regardless of the delivery
means (e.g. broadcast, cable, satellite television, closed circuit,
etc.)
(3)
Direct Response Television and Radio (including cable, satellite and other
means of distribution)
(4)
Internet websites (other than xxx.xxxxxxxxxxxxx.xxx) used in connection
with Marketing of the Products pursuant to clauses (1) through (3)
above.
|
36
Schedule
B
Patents
|
1.
|
“Threat
Protection Network”, Application No. US2005/034205 (file date Sep. 22,
2005); and EPO Application No. 05821356.2 (file date April 23,
2007)
|
|
2.
|
“System
for Distributing Information Using a Secure Peer to Peer Network”,
Application No. US2005/034069
|
|
3.
|
“System
and Method for Operating an Anti-Malware Network on a Cloud Computing
Platform”, Provisional Application No. 61/221,477 (file date June 29,
2009)
|
37
Schedule
C
Trademarks
1.
|
CYBERDEFENDER,
United States Registration No.
3217137
|
2.
|
CYBERDEFENDER
X-RAY, Xxxxxx Xxxxxx Xxxxxx Xx.
00000000
|
0.
|
XXXXXXXXXXXXX,
Xxxxxx Xxxxxx Serial No. 77831517
|
4.
|
CYBERDEFENDER
REGISTRY CLEANER
|
5.
|
CYBERDEFENDER
EARLY DETECTION CENTER
|
6.
|
CYBERDEFENDER
REGISTRY CLEANER
|
7.
|
CYBERDEFENDERULTIMATE
2008
|
8.
|
CYBERDEFENDERCOMPLETE
2008
|
9.
|
CYBERDEFENDER
IDENTITY PROTECTION SERVICES
|
10.
|
MYIDENTITYDEFENDER
TOOLBAR
|
11.
|
CYBERDEFENDERFREE
|
12.
|
MYCLEANPC,
United States Serial No. 77961498
|
13.
|
FASTERPCFOR
DUMMIES
|
14.
|
PCSPEEDFOR
DUMMIES
|
38
Schedule
D
Products;
Royalty
Territory in
Which
Product is
Sold
|
Product
|
Amount of
Royalty
(per annual
subscription)
|
||
Any
jurisdiction within the Domestic Territory
|
CyberDefender
Early Detection Center
Ø Antispyware and
Antivirus PC software with unlimited software and threat updates for 1
year. Tier 1 and Tier 2 technical support
included.
Ø All software
updates included
|
$2.50
*
|
||
CyberDefender
Early Detection Center Family Pak
Ø Antispyware and
Antivirus PC software with unlimited software and threat updates for 1
year. Tier 1 and Tier 2 technical support
included.
Ø All software
updates included.
Ø Software bundle
includes 5 licenses which can protect up to 5 PCs
|
$3.00
*
|
|||
CyberDefender
Registry Cleaner
Ø Analyzes and
fixes broken PC registries and performs other PC optimization
tasks.
Ø Unlimited updates
for 1 year.
|
$2.50
*
|
|||
Any
jurisdiction within the International Territory
|
CyberDefender
Early Detection Center
Ø Antispyware and
Antivirus PC software with unlimited software and threat updates for 1
year. Tier 1 and Tier 2 technical support
included.
Ø All software
updates included
|
$4.00
*
|
||
CyberDefender
Early Detection Center Family Pak
Ø Antispyware and
Antivirus PC software with unlimited software and threat updates for 1
year. Tier 1 and Tier 2 technical support
included.
Ø All software
updates included.
Ø Software bundle
includes 5 licenses which can protect up to 5 PCs
|
$6.00
*
|
|||
|
CyberDefender
Registry Cleaner
Ø Analyzes and
fixes broken PC registries and performs other PC optimization
tasks.
Ø Unlimited updates
for 1 year
|
|
$4.50
*
|
* This
information has been omitted pursuant to a request for confidential
treatment. The redacted information has been filed separately with
the Securities and Exchange Commission.
39