Transitional License and Linking Agreement
Exhibit B in this Exhibit 10.1 has been omitted in accordance with
Item 601(b)(2) of Regulation S-K. Autobytel Inc. will
furnish supplementally a copy of any omitted exhibit to the
Securities and Exchange Commission upon request; provided, however,
that Autobytel Inc. may request confidential treatment pursuant to
Rule 24b-2 of the Securities Exchange Act of 1934, for any exhibit
so furnished.
Exhibit 10.1
This
Transitional License and Linking Agreement (“Agreement”) is made and entered
into effective as of January 1, 2017 (“Effective Date”), by and between
Autobytel Inc., a Delaware corporation (“Autobytel” or “Company”), Xxx.xxx, Inc., a
Delaware corporation (“Licensor”), and Internet Brands,
Inc., a Delaware corporation (“Licensee”).
Background
Effective as of
December 19, 2016, Company, Licensor and Licensee entered into an
Asset Purchase and Sale Agreement (“Asset Purchase
Agreement”) pursuant to which Licensee
purchased from Company and Licensor certain operating assets of
Licensor’s automotive specialty finance leads business
(“Purchased
Assets”). The transaction closed effective as of the
Effective Date. The Asset Purchase Agreement provided that the
parties would enter into this Agreement upon closing of the
transaction contemplated by Asset Purchase Agreement.
The
parties desire to provide for (i) a limited, transitional license
to Licensee for use of Licensor’s Xxx.xxx name and logo for
sales and marketing purposes in connection with the Purchased
Assets; and (ii) the transitional redirecting of any links to specialty
finance application lead forms from any consumer websites owned or
operated by Company or Licensor to Licensee’s
designated landing page.
In
order to document the foregoing, and in consideration of the mutual
covenants and promises contained herein and for other good and
valuable consideration, the receipt and adequacy of which is hereby
acknowledged, the parties hereto agree as follows.
Article I
Definitions
As used
herein, the terms below shall have the following
meanings:
“Affiliates” means, with reference
to a specified Person, (i) a Person that, directly or indirectly,
through one or more intermediaries, controls, is controlled by or
is under common control with, the specified Person, (ii) any Person
that is an officer, partner or trustee of, or serves in a similar
capacity with respect to, the specified Person, or for which the
specified Person is an officer, partner or trustee or serves in a
similar capacity or (iii) any member of the Immediate Family of the
specified Person.
“Xxx.xxx Logo” means
Licensor’s Xxx.xxx logo set forth on Exhibit A attached
hereto.
“Xxx.xxx Name” means the name
“Xxx.xxx.”
“Confidential Information” means,
with respect to a designated party hereto, all trade secrets and
other proprietary and confidential information relating to the
designated party, including, without limitation, data; existing and
prospective customer, vendor and supplier lists and files;
obligations; documents; financial and accounting statements and
records, business plans, budgets and projections; prospective
customer proposals; technical information; marketing materials; and
employee related information of the designated party. Confidential
Information shall not include (i) any Confidential Information
that subsequently becomes publicly available without breach of any
obligation of confidentiality owing to the owner of the
Confidential Information; (ii) Confidential Information that is
independently derived or developed by a party without use of the
Confidential Information of the other party; (iii) Confidential
Information that becomes available on a non-confidential basis from
a third party that is not bound by a confidentiality agreement with
or subject to any obligation or duty of confidentiality to the
owner of the Confidential Information or (iv) disclosure that
is required by applicable Law, Rule, Regulation or Order, provided
that the party required to disclose the Confidential Information
shall provide the owner of the Confidential Information with prompt
notice of any such order prior to disclosure so that appropriate
protective orders may be sought.
“Damages” is as defined in
Section 5.2 hereof.
“Law, Rule, Regulation or Order”
means any statute, law, rule, regulation, notice or filing
requirement, permit, ordinance, code, guideline, judgment,
decision, consent decree, injunction, ruling or order of any
federal, state or local court or governmental agency, department or
authority or any arbitration authority that is binding on or
applicable or related to specified party.
“Licensed Marks” means the Xxx.xxx
Logo and Xxx.xxx Name.
“Person” means and includes an
individual and any corporation, partnership, joint venture, limited
liability company, trust, unincorporated organization, government
or any department or agency thereof, or any other
entity.
“Term” is as defined in
Section 4.1 hereof.
-1-
“Termination Date” means the fifth
anniversary of the Effective Date.
“Transitional License” is as
defined in Section 2.1 hereof.
“Transitional Linking” is as
defined in Section 2.2 hereof.
“Transitional Services” means the
Transitional License and the Transitional Linking.
“Transition Services Agreement”
means the Transition Services Agreement under the Asset Purchase
Agreement.
Article II
Transitional Services
2.1
Transitional
License.
(a)
During the Term, Licensor hereby grants to Licensee a limited,
non-exclusive, non-transferable license (“Transitional License”) for use of
the Licensed Marks solely for sales and marketing of automotive
specialty finance leads to purchasers of automotive specialty
finance leads from Licensee’s automotive specialty finance
leads business. The parties acknowledge that the Transitional
License does not include any license to use Company’s Xxx.xxx
domain name or to use the Licensed Marks for any consumer marketing
or advertising or for placement on any consumer-facing
websites.
(b)
Licensor shall be the sole and exclusive owner of, and retains all
rights, title and interests in and to all, the Licensed Marks,
including all trademark and copyright rights and moral rights
therein, free from any claim or retention of rights thereto on the
part of Licensee or any employee, consultant or agent of Licensee.
Licensee will (i) not create a unitary composite xxxx involving any
of the Licensed Marks and one (1) or more of its own trade names,
trademarks, service marks, trade dress, logos or other commercial
symbols; (ii) at all times display the Licensed Marks with such
symbols and notices as Licensor may designate to clearly and
sufficiently indicate the registration or other status and
ownership thereof by Licensor in accordance with applicable
trademark law and practice; (iii) comply with all written
guidelines in accordance with this Agreement relating to the use
thereof as provided to it by Licensor; (iv) will not seek to
register the Licensed Marks in any jurisdiction; (v) will not use
the Licensed Marks in the name of any corporate or other entity;
(vi) hold itself out as being Licensor; and (vii) in no way use the
Licensed Marks in a manner so as to tarnish, blur or dilute the
quality, goodwill or reputation of Licensor associated therewith;
provided, however, for restrictions (i)-(vii) no claim is made to
the exclusive right to use “Car” apart from the
Licensed Marks. Licensee acknowledges and agrees that its use of
the Licensed Marks as licensed hereunder: (i) will at all times
inure to the benefit, and be on behalf, of Licensor; and (ii) will
not create in Licensee, nor will Licensee represent that Licensee
has, any right, title, or interest in or to the Licensed Marks
other than the license expressly granted herein. Licensee agrees
not to do anything to contest or impair Licensor’s rights,
title or interest in and to any of the Licensed Marks. Except as
restricted by Section 4.1(a) of the Asset Purchase Agreement, the
parties acknowledge that neither Licensor nor Autobytel is
restricted in any way from using of the Licensed
Marks.
(c)
Licensor shall have the sole right and discretion to bring and
prosecute third party proceedings alleging infringement of the
Licensed Marks or unfair competition related thereto. Upon
reasonable request by Licensor, Licensee agrees to provide
Licensor, at no expense to Licensee, with reasonable cooperation
and assistance with respect to any such infringement proceedings.
Licensor shall not be under any obligation to bring or prosecute
any such proceedings or to enforce Licensor’s rights, title
and interests in the Licensed Marks or Licensee’s license
rights therein.
2.2
Transitional
Linking.
(a)
Except as may be specifically provided otherwise in the Transition
Services Agreement, during the Term or until the earlier removal in
accordance with Section 4.1(a) of the Asset Purchase Agreement of
existing links on any consumer website owned or operated by
Autobytel pointing to specialty finance lead forms, Autobytel shall
redirect such links to Buyer’s landing page (xxx.xxxxxxxxxxxxxxxxx.xxx/xxxxx/);
provided that during the entire Term, the business-to-consumer
links located on xxx.xxxxxxxxx.xxx/xxx-xxxxxxxxx/
will be redirected to Buyer’s landing page (xxx.xxxxxxxxxxxxxxxxx.xxx/xxxxx/).
The first
300 clicks or redirects per month during the Term will be provided
without charge to Licensee. Thereafter, Licensee will pay Company
at the rate of $2.00 per click or redirect. The parties will use
Google Analytics to track reporting of such clicks and redirects
and will reconcile Licensee’s Google Analytics account
reporting to Company’s server-level redirects. Licensee may
pause or terminate this transitional linking or request redirection
to a different landing page for Licensee’s automotive
specialty finance leads business at any time during the
Term upon written notice to Company (email notice
sufficient).
(b) Once consumers are redirected, Licensee shall have full
responsibility for such redirected consumers, including
responsibility for all compliance with all applicable privacy,
consent and other laws, rules, regulations and orders (including
compliance the Telephone Consumers Protection Act). Upon being
redirected, Licensee will ensure that redirected consumers are
provided notification or other indication that the consumer has
been redirected to Licensee’s website and that the consumers
are notified of, or otherwise exposed to, and bound by
Licensee’s privacy policy and opt-out
procedures.
(c) During the Term of
this Agreement, Licensor will maintain negative phrase match type
keywords on all paid Xxx.xxx SEM accounts, campaigns and ad groups
as listed on
Exhibit B.
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2.3
Disclaimer
of Representations and Warranties. THE TRANSITIONAL SERVICES ARE PROVIDED ON AN
“AS-IS” BASIS, WITHOUT REPRESENTATION OR WARRANTY OF
ANY TYPE OR NATURE, WHETHER EXPRESS OR IMPLIED, INCLUDING (I) ANY
IMPLIED WARRANTIES OF FITNESS FOR A PARTICULAR PURPOSE,
MERCHANTABILITY, NON-INFRINGEMENT, OR INTERFERENCE; AND (II) ANY
REPRESENTATIONS OR WARRANTIES REGARDING THE PERFORMANCE OF THE
AUTOBYTEL LINKING OR REDIRECTS OR NUMBER OF CLICKS THAT MAY RESULT
FROM SUCH LINKING OR REDIRECTS. LICENSEE ACKNOWLEDGES THAT LICENSOR
DOES NOT HOLD ANY REGISTRATIONS WITH ANY GOVERNMENTAL AUTHORITY FOR
THE LICENSED MARKS. LICENSOR BELIEVES THAT LICENSOR MAY HAVE
CERTAIN COMMON LAW RIGHTS IN THE LICENSED MARKS, BUT CANNOT PROVIDE
LICENSEE WITH ANY ASSURANCES AS TO THE EXTENT OF SUCH RIGHTS, IF
ANY.
Article III
Transitional Services Fees
3.1
Transitional
Services Fees. For and in consideration of the Transitional
Services, Licensee shall pay to Licensor the following annual fees,
payable in equal installments as set forth below:
|
Quarters in Calendar Year
|
Total Annual Fees
|
Installments
|
Payment Dates
|
|
|
|
|
|
|
2017
|
$425,000.00
|
$106,250.00
|
March 30, 2017, June 30, 2017
September 30, 2017
December 31 2017
|
|
2018
|
$350,000.00
|
$87,500.00
|
March 30, 2018, June 30, 2018
September 30, 2018
December 31 2018
|
|
2019
|
$300,000.00
|
$ 75,000.00
|
March 30, 2019, June 30, 2019
September 30, 2019
December 31 2019
|
|
2020
|
$250,000.00
|
$ 62,500.00
|
March 30, 2020, June 30, 2020
September 30, 2020
December 31 2020
|
|
2021
|
$250,000
|
$ 62,500
|
March 30, 2021, June 30, 2021
September 30, 2021
December 31 2021
|
3.2
Payment
Terms. Payments shall be due and payable by Licensee to
Licensor within thirty (30) days after the end of the applicable
three month period as illustrated above. In the event Licensor
fails to make payments when due, Licensor will notify (email
notification sufficient) Licensee and if Licensee does not cure the
breach within five (5) business days of notification, the amount of
such unpaid payments shall accrue interest at a rate equal to ten
percent (10%) per annum. In addition if the breach remains uncured,
Licensor may (i) withhold further Transitional Services under this
Agreement until such time as all payments are made; (ii) require
that payments for subsequent Transitional Services be paid in
advance; and/or (iii) pursue any remedies available at law or
equity.
Article IV
Term and Termination
4.1
Term. The
term of this Agreement (“Term”) shall commence as of the
Effective Date and shall expire on the Termination Date, unless
terminated earlier pursuant to Section 4.2
hereof.
4.2
Termination.
This Agreement may be terminated prior to its
expiration:
(a) By
the mutual consent of all parties.
(b) By
any party upon thirty (30) days’ written notice to the other
parties in the event of any material breach of this Agreement by
another party and such breach is not cured within such thirty
(30)-day notice period;
provided, however, that in the case of breach related to
payments due to a party, the foregoing notice and cure period shall
be five business (5) days. A notice of breach and intent to
terminate shall include a description of the events giving rise to
the breach in reasonable detail.
(c) By
Licensor or Autobytel in accordance with Section
5.2(b).
4.3
Effect On
Rights. Termination of this Agreement shall not act as a
waiver of any breach of this Agreement by any party and shall not
act as a release of any party from any liability for a breach or
default under this Agreement.
4.4
Survival of
Provisions. The provisions of Section 4.3 and of
Articles V and VI shall survive any termination or expiration
of this Agreement.
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Article V
Exclusion and Limitation of Damages; Indemnification
5.1
Exclusion and
Limitation of Damages. IN NO EVENT SHALL
ANY PARTY BE LIABLE TO ANOTHER PARTY FOR INDIRECT, INCIDENTAL,
SPECIAL OR CONSEQUENTIAL DAMAGES, INCLUDING LOST PROFITS OR
REVENUES, FOR ANY BREACH OF THIS AGREEMENT, EVEN IF THE BREACHING
PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
IN THE EVENT THAT A
PARTY BREACHES ITS OBLIGATIONS UNDER THIS AGREEMENT, THE
NON-BREACHING PARTY SHALL HAVE THE RIGHT TO EXERCISE ALL RIGHTS AND
REMEDIES AVAILABLE TO IT AT LAW OR IN EQUITY; PROVIDED, HOWEVER,
THAT THE LIABILITY OF THE BREACHING PARTY, REGARDLESS OF THE FORM IN WHICH ANY LEGAL OR
EQUITABLE ACTION MAY BE BROUGHT, SHALL BE LIMITED TO DIRECT,
ACTUAL DAMAGES ONLY AND ALL OTHER DAMAGES AND REMEDIES ARE WAIVED,
AND IN NO EVENT SHALL SUCH ACTUAL DAMAGES EXCEED
THE TOTAL AMOUNT OF THE
TRANSITIONAL SERVICES FEES PAYABLE TO COMPANY UNDER THIS AGREEMENT.
NOTWITHSTANDING THE FOREGOING PROVISIONS OF THIS SECTION 5.1, THE
FOREGOING LIMITATIONS ON LIABILITY SHALL NOT APPLY TO
A PARTY’S
INDEMNIFICATION OBLIGATIONS UNDER SECTION 5.2.
5.2
Indemnification.
(a)
Each party to this Agreement will defend, indemnify and hold
harmless the other party and each of its parent company, affiliate
companies, officers, directors, employees and agents against and in
respect of any loss, debt, liability, damage, obligation, claim,
demand, fines, penalties, forfeitures, judgment, or settlement of
any nature or kind, known or unknown, liquidated or unliquidated,
including without limitation all reasonable costs and expenses
incurred (legal, accounting or otherwise) (collectively,
“Damages”)
arising out of, resulting from or based upon any claim, action or
proceeding by any third party, including any governmental or
regulatory body, alleging facts or circumstances constituting, or
that results or arises from, (i) a breach of any obligations,
representations or warranties of the indemnifying party set forth
in this Agreement; or (ii) any violation by the indemnifying party
of any law, rule, regulation or order.
(b)
Licensor will defend, indemnify and hold harmless Licensee and each
of Licensee’s parent company, affiliate companies, officers,
directors, employees and agents against and in respect of any
Damages arising out of, resulting from or based upon any claim,
action or proceeding by any third party for infringement or alleged
infringement of any copyright, trademark or other intellectual
property of such third party resulting from Licensor’s use of
the Licensed Marks in compliance with this Agreement. If a third
party claim is made under this Section 5.2(b), or appears likely to
be made, Licensor may elect to attempt to obtain such rights as are
necessary to enable Licensee to continue to use the Licensed Marks
in compliance with this Agreement. If such continued use cannot be
obtained on a commercially reasonable basis, Licensor or Autobytel
may elect to terminate this Agreement without liability to Licensor
for any Damages resulting from the termination of this Agreement.
The foregoing indemnification obligation under this Section 5.2(b)
will not apply to the extent the claim arises as a result of any
use of the Licensed Marks by Licensee in a manner other than as
specified in, or that is not in compliance with, this
Agreement.
(c) If
a party entitled to indemnification under this Section 5.2 (an
“Indemnified
Party”) makes an indemnification request to the other
party, the Indemnified Party shall permit the other party (the
“Indemnifying
Party”) to control the defense, disposition or
settlement of the matter at its own expense, and the Indemnifying
Party, at its discretion, may enter into a stipulation of
discontinuance and settlement thereof, provided that the
Indemnified Party is fully and unconditionally released from such
claims. The Indemnifying Party, however, will not have any
authority to obligate the Indemnified Party in any way. The
Indemnified Party shall be permitted to participate in such defense
and represent itself at its own expense and to use counsel of its
own choosing. The Indemnified Party shall notify the Indemnifying
Party promptly of any claim for which Indemnifying Party is
responsible and shall cooperate with the Indemnifying Party in
every commercially reasonable way to facilitate defense of any such
claim; provided that the Indemnified Party’s failure to
notify Indemnifying Party shall not diminish Indemnifying
Party’s obligations under this Section 5.2 except to the
extent that Indemnifying Party is materially prejudiced as a result
of such failure. An Indemnified Party shall at all times have the
option to participate in any matter or litigation through counsel
of its own selection and at its own expense.
-4-
Article VI
General Provisions
6.1
Relationship of the
Parties. Nothing contained in this Agreement shall be
construed to imply a joint venture, partnership, employment or
agency relationship between the parties. Neither party shall be
liable for the debts, obligations or responsibilities of the other,
and neither party shall have the right or authority to assume or
create any obligation or responsibility, whether express or
implied, on behalf of or in the name of the other party or to bind
the other party in any manner.
6.2
Force
Majeure. The obligations of a party to the other party under
this Agreement shall be suspended with respect to any specified
obligation during the period and to the extent the providing party
is prevented or hindered from performing such obligation by any
Law, Rule, Regulation or Order or by any cause beyond the control
of such party, including acts of God, strikes, lockouts and other
labor and industrial disputes and disturbances, unavailability of
personnel, civil disturbances, accidents, acts of war or conditions
arising out of or attributable to war (whether declared or
undeclared), terrorism, fires, flood, storm, explosions,
earthquakes, Internet or telecommunication failures or outages,
governmental action, or shortage or failure of necessary equipment,
materials or labor. In such event, the obligated party shall give
notice of suspension as soon as reasonably practicable to the other
party stating the estimated date and extent of such suspension and
the cause thereof, and the providing party shall resume the
performance of its suspended obligations as soon as reasonably
practicable after the removal of the cause.
6.3
Incorporation by
Reference. The terms, conditions and provisions of Sections
7.1 (Notices), 7.3 (Severability), 7.4 (Entire Agreement), 7.6
(Parties in Interest) 7.7 (Specific Performance) 7.8 (Governing
Law), 7.9 (Jurisdiction and Waiver of Jury Trial), 7.11
(Counterparts), and 7.13 (Amendment, Waiver) of the Asset Purchase
Agreement are incorporated by reference herein, and shall be a part
of this Agreement as if set forth in full herein.
[REMAINDER OF PAGE INTENTIONALLY
LEFT BLANK]
-5-
IN
WITNESS WHEREOF, the parties have executed this Agreement as of the
Effective Date.
|
Licensee
Internet Brands, Inc.
By:
/s/ Xxxxxx X.
Xxxxxx
Xxxxxx
X. Xxxxxx, Chief Executive Officer
|
Company
By:
/s/ Xxxxx X.
Xxxxxx
Xxxxx
X. Xxxxxx, Executive
Vice
President, Chief Legal and Administrative Officer and
Secretary
|
Licensor
Xxx.xxx,
Inc.
By: /s/ Xxxxx X. Xxxxxx
Xxxxxx
Xxxxx X. Xxxxxx,
Executive Vice President, Chief Legal and Administrative Officer
and Secretary
-6-
Exhibit A
Xxx.xxx
Logo
-7-
Exhibit B
This Exhibit has been omitted in accordance with Item 601(b)(2) of
Regulation S-K. Autobytel Inc. will furnish supplementally a
copy of any omitted schedule or exhibit to the Securities and
Exchange Commission upon request; provided, however, that Autobytel
Inc. may request confidential treatment pursuant to Rule 24b-2 of
the Securities Exchange Act of 1934, as amended, for any schedule
or exhibit so furnished.
-8-
