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Intellectual Property License Agreement

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INTELLECTUAL PROPERTY AGREEMENT


This Intellectual Property Agreement (the "Agreement"), effective as of May 7, 2002, (the "Effective Date") is entered into by and between NETRATINGS, INC., a Delaware corporation, having its principal place of business at 890 Hillview Court, Milpitas, California 95035 ("NetRatings"), and JUPITER MEDIA METRIX, a Delaware corporation with its principal place of business at 21 Astor Place, 6th Floor New York, NY 10003 ("JMM").


RECITALS


WHEREAS, this Agreement is being entered into pursuant to a Settlement Agreement being executed concurrently herewith wherein JMM and NetRatings are comprising any and all claims they have or may have with respect to Civil Action No. 01-193-SLR (the "Action"); and


WHEREAS, as contemplated by the Settlement Agreement and as part of the settlement contemplated therein, the parties desire that each party shall have rights in certain Covered Patents and certain other Intellectual Property as set forth herein.


In consideration of the promises and mutual covenants herein contained, NetRatings and JMM agree as follows:


AGREEMENT


1. DEFINITIONS. The following terms shall have the meanings set forth below:


1.1 "Closing Date" shall have the meaning set forth in the Asset Purchase Agreement that the parties are executing concurrent with the execution of this Agreement.


1.2 "Covered Patents" shall mean the JMM patents and patent applications (including all patents issuing therefrom) listed in Exhibit A ("JMM Patents") as well as any patents claiming priority, in whole or in part, to either of the foregoing, filed in any country, including utility models and registrations and also including any reissues, divisions, re-examinations, renewals, extensions, provisionals, continuations, continuations-in-part or counterparts thereof.


1.3 "Encumbrances" shall mean restrictions on or conditions to transfer or assignment, claims, liabilities, liens, pledges, mortgages or security interests of any kind, whether accrued, absolute, contingent, or otherwise, affecting any of the Subject IP.


1.4 "Intellectual Property" shall mean United States and foreign patents and utility models and applications therefor and all reissues, divisions, re-examinations, renewals, extensions, provisionals, continuations, continuations-in-part and counterparts thereof (the "Patents"); (ii) rights in inventions (whether patentable or not), improvements, trade secrets, proprietary information, know how, and any rights in technology, invention disclosures, technical data and customer lists, and all documentation relating to any of the foregoing; (iii) copyrights, copyrights registrations and applications therefor, and all other rights corresponding thereto throughout the world; (iv) industrial designs and any registrations and applications therefor; and (v) any similar or equivalent rights to any of the foregoing (as applicable). Notwithstanding the foregoing, Intellectual Property will not include any rights in Trademarks.


1.5 "PC Meter Technology" shall mean the method and software for logging and reporting on-line activity of computer users known as "PC Meter" an all related database systems and technologies used with such method and software, as more particularly described in Exhibit B ("PC Meter Technology").


1.6 "Quarter" shall mean a period of three (3) consecutive calendar months commencing upon either January 1, April 1, July 1 or October 1. "Quarterly" shall mean once per Quarter.


1.7 "Subject IP" shall mean the Covered Patents and PC Meter Technology, collectively.


1.8 "Trademarks" shall mean trade names, logos, common law trademarks and service marks, trademark, and service mark registrations, related goodwill and applications therefor throughout the world, as well as domain names, uniform resource locators, other names and locators associated with the Internet, and applications or registrations therefor.


1.9 "Year" shall mean a twelve (12) calendar month period beginning on January 1.


2. ASSIGNMENT AND LICENSES.


2.1 COVERED PATENTS.


(a) ASSIGNMENT TO NETRATINGS. Effective upon the Closing Date, JMM hereby assigns to NetRatings all of JMM's rights, title and interest in and to the Covered Patents. The foregoing assignments also include the right to sue for infringement or misappropriation of the Covered Patents and collect damages for past as well as future infringement and/or misappropriation of the Covered Patents.


(b) LICENSE BACK TO JMM. In consideration for and subject to the terms and conditions of this Agreement, including but not limited to the payments specified in Section 3.2 (JMM Consideration), NetRatings hereby grants to JMM for a period beginning on the Closing Date through June 30, 2005, under all of NetRatings' rights in the Covered Patents, the non-exclusive, non-sublicensable, royalty-bearing, limited right to exploit the Covered Patents in any manner necessary to conduct the JMM Business (as defined in Section 6.2 (By JMM)) in the United States. The foregoing license is transferable and assignable so long as the transferee, assignee or successor in interest (collectively referred to as "Transferee") agrees in writing to be bound by all the terms applicable to this license, including but not limited to Section 3.2 (JMM Consideration).


2.2 PC METER TECHNOLOGY. JMM hereby grants to NetRatings (including any consultants and contractors working on NetRatings' behalf), under all of JMM's Intellectual Property in and to the PC Meter Technology, the non-exclusive, irrevocable, perpetual, royalty-free, fully-paid up license (including the right to sublicense through multiple tiers) to use, reproduce, distribute, publicly perform, publicly display, prepare derivative works based upon and otherwise exploit the PC Meter Technology in any manner (including without limitation, combining, embedding or integrating the PC Meter Technology, or any portion thereof, with or into any other software), in both source code and object code form. NetRatings shall be the sole owner of all Intellectual Property in and to any derivative works of the PC Meter Technology it creates or has created on its behalf. NetRatings agrees that any sublicense of the PC Meter Technology shall be pursuant to license terms that are no less protective of JMM's Intellectual Property in and to such PC Meter Technology as those that NetRatings imposes on licensees of its own proprietary software.


2.3 DELIVERY. Promptly after the Closing Date, JMM shall deliver to NetRatings, at a location and in a format specified by NetRatings: (a) a copy of the object code and fully documented source code for all versions of the PC Meter Technology; and (b) copies of all documents in JMM's possession or control relating to the Covered Patents and PC Meter Technology.
2.4 RESERVATION OF RIGHTS. Except as specifically stated in this Agreement, nothing contained in this Agreement shall be construed as conferring on a party any license or other right, by implication, estoppel or otherwise to any other Intellectual Property or Trademarks of the other party.


3. PAYMENT TERMS.


3.1 NETRATINGS CONSIDERATION. The parties acknowledge and agree that the consideration provided for in Article 2 of the Settlement Agreement constitutes adequate consideration for, among other things, the assignment to NetRatings of the rights granted in Section 2.1 ("Assignment of Rights").


3.2 JMM CONSIDERATION.


(a) FEE. In consideration of the license granted by NetRatings to JMM in Section 2.1(b) (License Back to JMM), JMM shall pay NetRatings the following amounts:


(i) for each of the three (3) calendar months beginning on July 1, 2002, a non-refundable, irrevocable fee of $125,000 per month, payable in advance by the tenth (10th) day of each month;


(ii) for the Quarter beginning on October 1, 2002, a non-refundable, irrevocable fee of $375,000, payable in advance by the tenth (10th) day of the Quarter;


(iii) for each Year of the license's duration starting January 1, 2003, an annual fee equal to $1,500,000.00 in the first Year and $1,750,000 in the second Year, payable in advance on a Quarterly basis by the tenth (10th) of each Quarter with each such Quarterly payment being non-refundable and irrevocable; and


(iv) for the period from January 1, 2005 until June 30, 2005, a non-refundable, irrevocable fee of $500,000 per Quarter, payable in advance by the tenth (10th) day of the Quarter.


(b) TAXES. JMM shall be responsible for all sales taxes, use taxes, withholding taxes, value added taxes, import and export taxes and any other similar taxes imposed by any United States' federal, state, provincial or local governmental entity or any non-US government entity on the transactions contemplated by this Agreement, excluding taxes based on NetRatings' net income.


4. PROSECUTION, MAINTENANCE AND ENFORCEMENT OF PATENTS.


4.1 PROSECUTION RIGHTS. On and after the Closing Date, the expenses for prosecuting each Covered Patent (including without limitation any taxes, annuities and maintenance fees for any pending application and/or issued patent corresponding to each Covered Patent), and for the issuance of the respective patent shall be borne by NetRatings. JMM agrees to furnish NetRatings with all documents and other assistance, as such may be necessary, for the prosecution of each application. JMM agrees that it will not challenge the validity or enforceability of the Covered Patents, and will not assist, assign or cooperate, directly or indirectly, in (i) challenging the validity or enforceability of any claims of the Covered Patents in any action or (ii) defending any third party in an infringement action asserted by NetRatings related to the Covered Patents.


4.2 NOTIFICATION OF INFRINGEMENT. JMM shall promptly inform NetRatings of any suspected infringement of any of the Covered Patents by a third party.
4.3 FURTHER ASSURANCES. JMM shall perform all acts deemed necessary or desirable by NetRatings to permit and assist NetRatings, at NetRatings' expense, in perfecting and enforcing its rights throughout the world in the Covered Patents. Such acts may include, but are not limited to, execution of documents and assistance or cooperation in the registration and enforcement, including litigation, of the Covered Patents or other legal proceedings. Concurrent with the execution of this Agreement, NetRatings shall receive from JMM assignments substantially in the form of Exhibit C-1 ("Patent Assignment") with re
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