Exhibit 10.4
CONFIDENTIAL TREATMENT REQUESTED
Execution Copy
LICENSE AGREEMENT
License This License Agreement is dated as of February 15, 1999. Subject
to the remaining terms hereof, BlueTape LLC ("BlueTape") hereby
grants Viant Corporation ("Viant") an exclusive, worldwide right
and license (the "License") to reproduce, display, adapt, use, and,
as further described below, sublicense such rights in the software
components of the "Custom Deliverables" as defined in the Master
Services Agreement by and between Viant, Inc. and Bluetape, LLC
(the "Licensed Materials") dated as of June 21, 1998.
Master Services BlueTape and Viant are parties to a Master Services Agreement
Agreement dated as of June 21, 1998. Such Master Services Agreement, as
modified solely to the extent required to reflect the
terms of this License, will be included in an Amended
and Restated Master Services Agreement (the
"Agreement"). In the event that such Amended and
Restated Master Services is not in fact executed, this
License shall amend the Master Services Agreement
(including but not limited to by deleting the second to
last sentence of Section 4(a) thereof) and this License,
together with the Master Services Agreement shall
together constitute the parties' full, complete and
exclusive agreement.
Term The term of the License (the "Term") will be from the
date hereof until [*] The License will terminate at the
end of the Term. Sublicenses granted during the Term
will continue after the Term.
Exclusivity [*]
Right to Sublicense [*]
* Certain information in this Exhibit has been omitted and filed separately
with the Commission. Confidential treatment has been requested with respect
to the omitted portions.
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CONFIDENTIAL TREATMENT REQUESTED
[*]
Viant may not sublicense the Licensed Materials or
Derivatives (as defined herein) to clients or
prospective clients that BlueTape brings to Viant for
integration and consulting services. BlueTape shall
have the exclusive right to license the Licensed
Materials to those clients.
As used herein, the term "Derivative" shall be defined as in Section
101 of the U.S. Copyright Act. Viant may not productize the
Licensed Materials or Derivatives thereof.
Terms of Sublicenses All sublicenses will be substantially in the form of a Form of
Sublicense; such form shall be subject to the approval of BlueTape;
such approval not to be unreasonably withheld or delayed. The
Form of Sublicense will stipulate, in addition to standard
conditions, that sublicensees may use the Licensed Materials only
for their own internal business purposes and may not sublicense,
decompile, reverse engineer, modify, adapt or disassemble the
Licensed Materials or create Derivatives thereof. BlueTape
acknowledges that the term of Viant's sublicenses may extend
beyond the termination hereof.
Intellectual Property Subject to the license granted herein, all intellectual
Rights property and other ownership rights in the Custom Deliverables are
retained by BlueTape as per the Master Services Agreement.
Compensation 1. Viant will pay BlueTape [*] in cash upon execution of
this License Agreement [*]
2. Viant will grant to BlueTape the license in
Developments as described below.
Developments Viant will grant BlueTape a nonexclusive, perpetual,
nonterminable and fully paid-up license, with rights to
sublicense, in all corrections and "bug fixes" to the
Licensed Materials controlled by Viant at any time
during the Term, and all
* Certain information in this Exhibit has been omitted and filed separately
with the Commission. Confidential treatment has been requested with respect
to the omitted portions.
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CONFIDENTIAL TREATMENT REQUESTED
modifications to the Licensed Materials controlled by
Viant at any time during the Term, which modifications
enable the Licensed Materials to perform substantially
the same functions such Licensed Materials previously
performed but in a corrected or more efficient manner
(collectively, "Developments"), in each case subject to
Viant's right to do so in its contractual relations with
its clients. In negotiating with clients and potential
clients, Viant shall use commercially reasonable efforts
to obtain the rights necessary to grant to BlueTape the
license described above.
Termination Right BlueTape shall have the right to terminate the
License prior to the expiration of the Term if Viant
materially breaches or defaults on the Agreement, or
upon any bankruptcy or cessation of business of Viant.
Indemnity Viant shall indemnify BlueTape against any claims or
damages BlueTape suffers arising out of Viant's
exploitation of the License; provided that Viant is
given prompt notice of any claim and is given the right
to control the defense of the claim.
Non-Competition Except with respect to the licensing of the Licensed
Materials permitted hereunder [*] If client declines
such option, Viant shall have the right to provide
services to such client, subject to the other
provisions of this agreement. BlueTape acknowledges
and agrees that nothing herein shall prevent or
restrict Viant from providing services to entities
engaging in the BlueTape Business without
sublicensing the Licensed Materials or Derivatives.
Preferred Partnering Nothing in this licensing arrangement changes the
Arrangement Preferred Partner Arrangement set forth in Exhibit B
to the Master Services Agreement.
General This License Agreement and the Master Services Agreement (as
amended by this License Agreement if no other amendment is
executed) comprise the full, complete and exclusive agreement of
the parties relating to the subject matter hereof.
* Certain information in this Exhibit has been omitted and filed separately
with the Commission. Confidential treatment has been requested with respect
to the omitted portions.
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AGREED AND ACCEPTED BY:
VIANT CORPORATION BLUETAPE, LLC
By: /s/illegible By:/s/illegible
---------------------- -------------------------
Name: Name:
Title: Title:
Date: Date:
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