WHEREAS, Licensor is the owner of all right, title and interest in the IPC System with claims covered by U.S. Patent No. 7,412,406, and any related patents and continuations and Licensee desires to receive a license to the IPC system and method.
NOW, THEREFORE, in consideration of the mutual undertakings and covenants contained herein, and other valuable consideration, the receipt and sufficiency of which is acknowledged, the Parties agree as follows:
1. License Grant; Restrictions. Subject to the limitations and restrictions contained herein, Licensor hereby grants to Licensee a non-exclusive, non-transferable, non-sub licensable, license to offer and activate the IPC system and method (as defined below) for advertisers. The “IPC Method” shall mean an Internet- or web-based advertising method as disclosed by and claimed in the ‘406 Patent and any equivalents thereto. Licensee shall use the license granted herein solely for its own internal business purposes.
2. Royalties; Payments; Audits. Licensee shall pay Licensor 2.5% of display advertising dollars collected for ad campaigns sold that activate the IPC pricing system and method to determine and schedule the campaigns’ bonus discounts.For the avoidance of doubt, the licensing payment for a $50,000 ad campaign sold and collected by Licensee that utilizes the IPC system and method to determine bonus discounts would equal $750. Furthermore for clarity, there is no monthly fee to offer the IPC system as added value. Licensing fees are only assigned when an ad campaign is sold and runs and the IPC system and method is activated by the Licensee.
Royalties shall be payable within 30 days of the month-end of the month when payment is received for each campaign sold using the IPC system and method. All payments under this Agreement shall be paid in United States currency, without deductions of taxes of any kind, payable to Licensor by wire transfer or check or to any other accounts, as instructed in writing by Licensor. Licensee shall maintain sales records of sufficient detail to permit verification of the Royalties paid hereunder for at least three (3) years. Licensor shall have the right, during reasonable business hours and at the reasonable convenience of Licensee, to audit such sales records to confirm the correctness of any royalty report on a one time basis for each year of the term. Such audits to be performed by independent public accountants, selected by Licensor and Licensee. If both Parties agree there was an error that is greater than 10% of the applicable year’s payment, a correction will be made to either increase or decrease that payment depending on the results of the review. If it results in an increased payment, the Licensee pays the cost of the audit.
Definition(s) of revenue subject to IPC pricing licensing fees:
• Any display media revenue assigned against digital display impressions that contribute to the measured connections that trigger the IPC bonus impressions is subject to agreed upon licensing fees.
• Licensing fees are based on the ad revenue the seller collects/net amounts.
3. Representations; Disclaimers. Licensor represents that it has the right to grant the licenses and rights granted herein and to enter into this Agreement. Licensee represents (i) that it has the right to enter into this Agreement, and shall not enter into any conflicting agreements during the Term, (ii) that it will not use the IPC Method and System in any unauthorized manner, (iii) that it will not, nor will it cause anyone, to attack the title of Licensor in and to the ‘406 Patent or its validity.
OTHER THAN AS EXPRESSLY SET FORTH IN THIS SECTION 3, LICENSOR MAKES NO REPRESENTATIONS OR WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, RELATING TO THE IPC METHOD OR THE ‘406 and RELATED PATENTS, INCLUDING IT VALIDITY AND ENFORCEABILITY, AND LICENSOR HEREBY EXPRESSLY DISCLAIMS ALL WARRANTIES, REPRESENTATIONS, AND GUARANTEES OF ANY KIND AS TO THE IPC METHOD OR THE ‘406 and RELATED PATENTS, INCLUDING WARRANTIES OF NON-INFRINGEMENT, MERCHANTABILITY, AND FITNESS FOR A PARTICULAR PURPOSE.
EXCEPT FOR INDEMNITY OBLIGATIONS, IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL, PUNITIVE, OR SPECIAL DAMAGES ARISING HERE FROM OR RELATED HERETO IN ANY CAUSES OF ACTION OF ANY KIND, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
4. Term; Termination. All licenses granted herein are effective as of the date of this Agreement, and shall continue for one year (the “Initial Term”).
If a Party breaches any material term of this Agreement, the non-breaching Party may terminate this Agreement upon written notice to the breaching Party and a failure of the breaching Party to cure such breach within thirty (30) days of such written notice. Any termination of this Agreement shall not relieve Licensee of its liability for any payments accrued or owing prior to the effective date of such termination.
5. Confidentiality. Each Party shall treat as confidential (a) the terms and conditions of this Agreement (excluding the existence of this Agreement), and (b) all information received by a Party (i) marked as confidential, or (ii) which the recipient should know by its nature or the manner of its disclosure, to be confidential (“Confidential Information”). Notwithstanding the foregoing, Confidential Information will not include information (i) independently developed by the receiving Party or lawfully received free of restriction from another source having the right to furnish such information; (ii) that has become generally available to the public by acts not attributable to the receiving Party, its employees or agents; or (iii) which, at the time of disclosure, was known to the receiving Party free of restriction. The Parties shall each keep the other Party’s Confidential Information confidential and shall not disclose or use the other’s Confidential Information for any purpose other than the performance of its obligations, or exercise of its rights, hereunder. If disclosure of Confidential Information is mandated by applicable law, rule or regulation, or by an order of a court or tribunal, then the Party so ordered shall: (A) promptly notify the other Party of such requirement; and (B) use good faith efforts to minimize disclosure of the Confidential Information.
6. Indemnification. Licensor shall indemnify, defend, and hold harmless Licensee and its officers, directors, employees, agents, successors, and assigns (each, an “Indemnitee”) against all Losses arising out of, or resulting from or relating to any third party claim, suit, action, or proceeding (each an “Action”) involving a claim that the exercise of any rights or privileges by Licensee granted under this Agreement, infringes any patent or other intellectual property right of any third party. The Indemnitee shall promptly notify the Licensor in writing of any Action and cooperate with Licensor at Licensor’s sole cost and expense. Licensor shall immediately take control of the defense and investigation of the Action and shall employ counsel reasonably acceptable to Indemnitee to handle and defend the same, at Licensor’s sole cost and expense. Licensor shall not settle any Action in a manner that adversely affects the rights of any Indemnitee without the Indemnitee’s prior written consent, which shall not be unreasonably withheld or delayed. An Indemnitee’s failure to perform any obligations under this Section 6 shall not relieve Licensor of its obligation under this Section 6 except to the extent that Licensor can demonstrate that it has been materially prejudiced as a result of the failure. An Indemnitee may participate in and observe the proceedings at its own cost and expense with counsel of its own choosing.
7. Assignment. Neither party may assign or transfer, by operation of law or otherwise, any of its rights under this Agreement or delegate any of its duties to any third party without the prior written consent of the other party; provided, however, that either Party may assign its rights and obligations to a successor to its business by merger or acquisition, or to an entity which controls, is controlled by or is under common control with such Party, or pursuant to an internal reorganization, provided, in each case, that the assignee is capable of performing the obligations of the assignor under this Agreement.
8. Notices. Any notice delivered under this Agreement shall be in writing and shall be effective upon actual receipt, addressed as follows:
In the case of LICENSOR: IPC PRICING (PPH HOLDINGS LLC)
240 East 76th Street Suite 14M, New York, NY 10021
9. Governing Law and Choice of Law. This Agreement shall be governed by and construed in accordance with the internal laws of the State of New York, without giving effect to principles of conflicts of law. Any legal suit, action or proceeding arising out of or related to this Agreement or the licenses granted hereunder shall be instituted exclusively in the federal courts of the United States or the courts of the State of New York in each case located in the city of New York and County of New York, and each party irrevocably submits to the exclusive jurisdiction of such courts in any such suit, action or proceeding. Service of process, summons, notice or other document by mail to such party’s address set forth herein shall be effective service of process for any suit, action or other proceeding brought in any such court.
10. General Terms. This Agreement shall not be amended, modified, or supplemented by the Parties in any manner, except by a writing signed by both Parties. Neither Party shall be deemed to have waived any of its rights or remedies hereunder unless such waiver is in writing and signed by the waiving Party. This Agreement shall be deemed to have been drafted jointly by the Parties. In the event that any provision hereof shall be held to be invalid or unenforceable, then: (i) such provision shall be reformed to the extent strictly necessary to render such provision valid and enforceable; and (ii) the validity and enforceability of all of the other provisions hereof, shall in no way be affected or impaired thereby. This Agreement constitutes the entire Agreement between the Parties, and supersedes all prior and contemporaneous agreements between the Parties with respect to such subject matter. Each Party is an independent contractor and shall not be deemed to make either party an agent, partner or joint venture of the other. Nothing express or implied herein is intended to confer, nor does confer, upon any third party (other than permitted successors or assignees) any rights, remedies, obligations or liabilities whatsoever. All headings are for convenience only and shall not affect the meaning of any provision of this Agreement. This Agreement may be executed in two counterparts, each of which when executed shall be deemed an original, and both together shall constitute one same instrument.