DATABASE AND TRADEMARK LICENSE AGREEMENT - …



DATABASE AND TRADEMARK LICENSE AGREEMENT

This Database and Trademark License Agreement (“Agreement”) is made and entered into as of this ___ day of _______ 2010 (“Effective Date”) by and between MetaMetrics, Inc., a North Carolina corporation with offices located at 1000 Park Forty Plaza Drive, Suite 120, Durham, North Carolina 27713 (“Licensor”), and ____________________________, whose address is ___________________________________________________________(“Licensee”).

WHEREAS, Licensor has developed, and owns all rights in, databases of books ranked using its proprietary LEXILE® measurement of reading difficulty (the “Licensor Content”), and provides licensed rights to use certain of its trademarks in connection with the Licensor Content; and

WHEREAS, Licensee has developed or purchased and owns all rights in its proprietary product and services (“Licensee Product”),

WHEREAS, Licensor desires to grant Licensee a license to incorporate the Licensor Content into the Licensee Product (“Incorporated Product”) on an annual license basis non-profit, educational usage by Licensee;

NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, and other mutual covenants contained herein, the parties hereby agree as follows:

1. License and Fees

(a) Lexile Marks: The term “Lexile Marks” shall mean the following registered trademarks owned by Licensor: LEXILE® (U.S. Reg. No. 2,231,125), LEXILE® (and design) (U.S. Reg. No. 2,706,910), and LEXILE FRAMEWORK® (U.S. Reg. Nos. 2,2180,729 and 2,180,702). Licensee acknowledges and agrees that Licensor retains all rights in and to the Lexile Marks, and that this Agreement grants Licensee a limited license to use the Lexile Marks as set forth herein.

(b) Trademark License: Licensor hereby grants to Licensee a limited non-exclusive, non-transferable license, without the right to sublicense, to use the Lexile Marks contained in the Licensor Content, for the term of this Agreement solely in connection with Licensee’s use of Incorporated Product for non-profit, educational purposes in the United States. If Licensee uses the Lexile Marks in any marketing, advertising, or promotion of or otherwise, Licensee shall clearly identify Licensor as the owner of all of the Lexile Marks. Licensee further agrees to use the Lexile Marks as specified in the Marketing and Branding Guidelines attached hereto as Exhibit A (“Marketing and Branding Guidelines”).

(c) Licensor Content: Licensor hereby grants to Licensee the right to use the Licensor Content solely for the purpose as described in Exhibit B (“Scope of License for Incorporated Product”). If Licensee wishes to create future products, services, or features using Licensor Content, the parties shall execute a separate Agreement regarding such future joint promotion.

(d) Fees: Licensor waives the annual license fee as long as Licensee’s use of the Licensor Content is for non-profit and educational purposes.

(e) Updates to Licensor Content: Licensor may from time to time update the Licensor Content. If Licensor releases an additional or updated database of books ranked by LEXILE® measure, any part of which was not included in the Licensor Content provided to Licensee (“Additional Data”), then Licensor shall promptly make available such Additional Data to Licensee as part of the Licensor Content. Such Additional Data shall be a part of the Licensor Content for all purposes. Licensee shall fill out Exhibit C (“Contact Information”) for such contact for said updates.

(f) Availability: Licensor Content is generally made available to Licensee electronically through access to a Licensor website (“Portal”). Such Portal shall generally be available to Licensee except during periods of normally scheduled maintenance. Licensor shall use reasonable commercial efforts to notify Licensee prior to performing any maintenance other than regularly scheduled maintenance that may affect the Licensee’s access to the Portal. Note however that access to the Portal is provided to Licensee on an “AS IS, AS AVAILABLE” basis. Therefore, Licensee’s access to the Portal may be limited by the actions or inactions caused by third party service providers, such as providers of communications services, that Licensor uses to store the Licensor Content and provide access to the Portal, and such actions or inactions may disrupt or impair Licensee’s connection to communications networks (or portions thereof) serving the Portal. Although Licensor will use commercially reasonable efforts to take any action it deems appropriate to remedy and avoid such circumstances, Licensor cannot guarantee that such disruptions will not occur. Accordingly, Licensor shall not be responsible for and will have no liability whatsoever resulting from or related to outages caused by such circumstances.

2. Proprietary Information.

(a) Licensor Proprietary Information: Licensee acknowledges that ownership of and title in and to all intellectual property rights, including trademark, service mark, copyright, trade secret rights, know-how and other proprietary rights in the Licensor Content and the Lexile Marks (including copyrights in the Licensor Content as a compilation and valuable trade secrets embodied in Licensor’s Portal and other systems used to generate and store the Licensor Content and design and coding methodologies thereof) are and shall remain exclusively in Licensor. Licensee acquires only the limited right to use the Licensor Content and the Lexile Marks as set forth herein and does not acquire any ownership rights or title in or to the Licensor Content and/or the Lexile Marks. In addition, Licensee shall not disclose, in whole or in part, any portion of the Licensor Content to any person, except to those of Licensee’s employees, agents or consultants who require access for Licensee’s authorized use of Licensor Content and Lexile Marks, subject to the following additional limitations. Before disclosing any of the foregoing information to any such parties, Licensee will require that each such party (i) expressly recognize Licensor’s confidential and proprietary rights in the Licensor Content and the Lexile Marks; and (ii) agree in writing to comply with the use and non-disclosure restrictions applicable to the Licensor Content and the Lexile Marks set forth in this Agreement. Licensee will ensure that anyone who uses the Licensor Content and/or the Lexile Marks (accessed either locally or remotely) does so only for Licensee’s authorized use and complies with the terms of this Agreement. Licensee’s rights are limited to itself alone and do not extend to any other parties including Licensee’s Affiliates. Licensor reserves all rights and licenses not expressly granted to Licensee under this Agreement.

(b) Licensee Proprietary Information: Licensor acknowledges that ownership of and title in and to all intellectual property rights, including trademark, service mark, copyright, trade secret rights, know-how and other proprietary rights in any Licensee products are and shall remain exclusively in Licensee, including any Incorporated Product created by Licensee (subject to Licensor’s rights in the Licensor Content and the Lexile Marks). Licensor does not acquire any ownership rights or title in any Licensee products hereunder.

(c) Further Limitations: Licensee further acknowledges and agrees that additions or modifications to Licensee’s products as a result of any collaboration between the Licensor and Licensee does not relieve the Licensee of its obligations under Section 7 of this Agreement and in no way whatsoever grants ownership to Licensee in whole or in part to any portion of the Licensor Content and/or the Lexile Marks.

3. Confidentiality

(a) Definition: “Confidential Information” shall mean any information or data that is disclosed by one party (a disclosing party) to the other party (a receiving party) pursuant to this Agreement. Confidential information, however, does not include information that (i) is or becomes publicly known or available without breach of this Agreement; (ii) is received by a receiving party from a third party without breach of any obligation of confidentiality; (iii) was previously known by the receiving party as demonstrated by its written records; or (iv) is independently developed by the receiving party without access to or use of such Confidential Information as demonstrated by contemporaneously prepared documentation.

(b) Limitations: A receiving party (i) agrees to hold the disclosing party’s Confidential Information in confidence and (ii) except as expressly authorized under this Agreement, agrees not to directly or indirectly use, disclose, copy, transfer, or allow access to the Confidential Information by any third party. Notwithstanding the foregoing, a receiving party may disclose Confidential Information of the disclosing party as required by law or court order; however, in such event the receiving party shall immediately inform the disclosing party via telephone, e-mail, or facsimile, prior to any such disclosure and reasonably assist the disclosing party in obtaining a protective order limiting any such compelled disclosure.

(c) Injunctive and Other Relief: Each party acknowledges and agrees that any violation of this Section 3 by a party may cause the other party irreparable harm for which the other party would have no adequate remedy at law, and that the other party shall be entitled to preliminary and other injunctive relief against such party for any such violation. Such injunctive relief shall be in addition to, and in no way in limitation of, all other remedies or rights that the wronged party shall have at law or in equity.

(d) Return of Confidential Information: Upon the termination or expiration of this Agreement, the receiving party will return to the disclosing party all the Confidential Information delivered or disclosed to the receiving party, together with all copies in existence thereof at any time made by the receiving party, or destroy such Confidential Information and all copies thereof as directed by the disclosing party.

4. Indemnification

(a) Licensor: Licensor agrees to indemnify, defend and hold harmless Licensee from and against any and all loss, damage, liability, and expense (including reasonable attorneys’ fees and costs) arising out of any third-party claim, action, or proceeding (“Claims”) alleging (i) infringement of any patent, copyright, trademark or other intellectual property right arising out of Licensee’s use of the Licensor Content and/or the Lexile Marks by Licensee under by this Agreement or (ii) any negligent or wrongful act or omission of Licensor or its agents or employees.

(b) Licensee: Licensee agrees to indemnify, defend and hold harmless Licensor, its officers, directors, employees, successors and assigns, from and against any and all loss, damage, liability and expense (including reasonable attorneys’ fees and costs) arising out of any Claims (i) with respect to Licensee’s use of the Incorporated Products or (ii) alleging any negligent or wrongful act or omission of Licensee.

(c) Limitations: The indemnification provided for above in Sections 4(a) and 4(b) above shall be subject to the following terms and conditions: (i) the party claiming indemnification (“Indemnified Party”) must notify the other party (“Indemnifying Party”) promptly in writing of any notice of the Claim subject to indemnification; (ii) provided that the Indemnifying Party provides reasonable assurance to the Indemnified Party of its financial capacity to defend the Claim and provide indemnification with respect to the Claim, the Indemnifying Party shall have sole control over such defense and all negotiations for the settlement and compromise of such Claim; (iii) for so long as the Indemnifying Party is diligently conducting such defense, it shall not be liable for any attorneys' fees of the Indemnified Party; and (iv) the Indemnified Party shall cooperate with the Indemnifying Party in the defense and settlement of any such claim, provided that the Indemnifying Party shall not be liable hereunder for any settlement or compromise negotiated by the Indemnified Party unless the Indemnifying Party agrees in writing to be so bound. If the Indemnified Party provides notice of a claim in accordance with (i) above and is not notified within ten (10) days thereafter that the Indemnifying Party intends to defend the claim, or the Indemnifying Party does not notify the Indemnified Party with reasonable assurances under (ii) above, the Indemnified Party shall be entitled to defend such Claim, and settle or compromise such Claim, subject to indemnification by the Indemnifying Party as provided for herein.

(d) Option to Eliminate Infringement: In the event of a Claim subject to indemnification under Section 4(a)(i), Licensor may, in lieu of defending such Claim, procure at Licensor’s expense the right for Licensee to continue using the Licensor Content and/or the Lexile Marks, or replace or modify the Licensor Content and Lexile Marks so as to make them non-infringing. If neither of these two options is commercially reasonable as determined in Licensor’s sole discretion, Licensor may, upon thirty (30) days’ written notice, terminate the agreement.

5. Obligation to Provide Notice of Infringement

Licensee agrees to promptly notify Licensor of any unauthorized use of the Licensor Content and/or Lexile Marks and/or access to the Portal by any third party which comes to the attention of Licensee. Licensor shall have the sole right and discretion to bring an action for infringement, unfair competition, or any other appropriate proceeding, against any such third party, and any proceeds from such proceedings shall be the sole property of Licensor.

6. Term and Termination

(a) Term: This Agreement shall become effective on the Effective Date and shall remain in effect for an initial term ending one (1) year from the Effective Date (the “Initial Term”). Thereafter, this Agreement shall automatically renew for successive one (1) year periods (each a “Renewal Term”), unless either party gives written notice of termination not fewer than thirty (30) days prior to the expiration of the Initial Term or the then-current Renewal Term.

(b) Termination: Notwithstanding the provisions of subsection 6(a), Licensor shall have the right, immediately upon giving notice, to terminate this Agreement upon the occurrence of any of the failure by Licensee to comply with any other material obligations hereunder or the breach by Licensee of any of the material provisions hereof, which failure or breach is not cured within thirty (30) days after dispatch of written notice by Licensor.

7. Obligations upon Termination

(a) Lexile Marks: Upon the expiration or termination of this Agreement, Licensee shall promptly discontinue all use of the Lexile Marks, and destroy all materials and papers upon which the Lexile Marks appear; provided, however, that subject to the terms and conditions of this Agreement, Licensee shall have the right to retain such materials that already are marked with the Lexile Marks prior to the effective date of termination of this Agreement and as are necessary to fulfill any obligations to Licensee’s customers incurred prior to the effective date of termination.

(b) Licensor Content: Upon the expiration or termination of this Agreement (i) Licensee’s access to Licensor Content, whether through the Portal or otherwise, shall cease, and Licensee shall discontinue any further use of the Licensor Content in Licensee’s possession, and (ii) Licensee shall destroy all copies of the Licensor Content in its possession and deliver an affidavit to Licensor stating the means of such destruction and verifying the completion of the same.

(c) Confidentiality: Neither the expiration nor termination of this Agreement shall relieve Licensee of its obligations regarding confidentiality set forth herein or any nondisclosure agreement between Licensor and Licensee.

8. Representations and Warranties

(a) By Licensor: Licensor represents and warrants that: (i) Licensor has full authority to enter into this Agreement; (ii) Licensor is and will continue to be the owner of, or otherwise has valid licenses to use and distribute and sublicense, the Lexile Content and/or the Lexile Marks; and (iii) the Lexile Marks do not now and will not knowingly infringe any trademark or other third party right in the United States;

(b) By Licensee: Licensee represents and warrants that (i) Licensee has full authority to enter into this Agreement; and (ii) Licensee will not create any Incorporated Products that infringe upon any copyright, patent, trade secret, contract right, or other third party right of any third party.

9. LIMITATION OF LIABILITY

(a) Licensee agrees and acknowledges that access to Licensor’s THE PORTAL AND THE LICENSOR CONTENT is provided “AS IS” and “AS AVAILABLE” and without any warranty of any kind whatsoever, whether as to the performance of the PORTAL or the results obtained from USING THE PORTAL OR THE LICENSOR CONTENT. licensor makes no warranty that access to the PORTAL will be uninterrupted, timely, secure, or error-free. Any results obtained from the PORTAL and any material downloaded from the PORTAL is obtained and used at licensee’s risk and sole discretion. LICENSOR DISCLAIMS ALL WARRANTIES, WHETHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. LICENSEE ASSUMES THE ENTIRE RISK AS TO ACCESSING THE PORTAL AND ANY RESULTS OBTAINED OR CONTENT DOWNLOADED AND THE CONSEQUENCES OF ANY ACTION TAKEN BY LICENSEE BASED UPON THE SAME.

(b) NOTWITHSTANDING ANY OTHER PROVISIONS OF THIS AGREEMENT TO THE CONTRARY, IN NO EVENT SHALL EITHER PARTY, OR ANY OF THEIR RESPECTIVE AFFILIATES, OR ANY OF THEIR RESPECTIVE DIRECTORS, OFFICERS, EMPLOYEES, AGENTS OR SUBCONTRACTORS, BE LIABLE TO THE OTHER PARTY FOR ANY SPECIAL, INDIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES OR FOR LOSS OF ANTICIPATED PROFITS, SAVINGS OR BUSINESS, LOSS OF COMMERCIAL REPUTATION OR OTHER ECONOMIC LOSS, EVEN IF THE PARTIES HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

(C) EXCEPT WITH RESPECT TO CLAIMS FOR BREACH OF CONFIDENTIALITY UNDER SECTION 3 OR CLAIMS FOR INFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS UNDER SECTION 4, AND NOTWITHSTANDING ANY OTHER PROVISIONS OF THIS AGREEMENT TO THE CONTRARY, IN NO EVENT SHALL EITHER PARTY’S AGGREGATE LIABILITY TO THE OTHER PARTY OR ANY OTHER PERSON OR ENTITY FOR DIRECT DAMAGES ARISING OUT OF BREACH OF CONTRACT, STRICT LIABILITY, NEGLIGENCE AND OTHER TORTS, EXCEED THE TOTAL FEES PAID OR THERETOFORE REQUIRED TO HAVE BEEN PAID BY LICENSEE TO LICENSOR UNDER THIS AGREEMENT.

10. Miscellaneous

(a) Assignment and Delegation: Neither party shall assign this Agreement, or any portion thereof, without the prior written consent of the other party, which consent shall not be unreasonably withheld; provided however, that either party may assign this Agreement without the consent of the other party to the acquirer of all or substantially all such party’s business operations, stock, or assets, further contingent upon such acquirer agreeing in writing to be bound by and to perform the obligations hereof.

(b) Waiver of Compliance: Any failure by either party to enforce any term or condition of this Agreement shall not be considered a waiver of that party’s right thereafter to enforce each and every term and condition of this Agreement.

(c) Entire Agreement, Amendments: Each party acknowledges that it has read this Agreement, understands it, and agrees to be bound by its terms. This instrument states the entire agreement of the parties with respect to its subject matter. Any modification or amendment of any provisions of this Agreement shall not be binding on either party unless in writing and signed by the authorized representatives of both parties.

(d) Notice: Any notice given under this Agreement shall be in writing and addressed to the other party at the address shown for such party on the initial page of this Agreement, or to such other address as either party shall have designated in writing to the other from time to time, and sent by registered or certified mail return receipt requested, hand delivery or facsimile transmission. Notices shall be deemed to have been given on the date of receipt when sent by registered or certified mail, upon receipt by the addressee when delivered by hand, or upon confirmed receipt when sent by facsimile transmission.

(e) Force Majeure: Neither party shall be responsible for any failure to perform or delay in performing its obligations hereunder where and to the extent that such failure nor delay results from causes outside the reasonable control of the other party. The non-performing or delaying party shall be diligent in attempting to remove any such cause and shall promptly notify the other party of the extent and probable duration of such delay or nonperformance.

(f) Governing Law: This Agreement and the rights, obligations and relations of the parties under this Agreement shall be governed by and construed in accordance with the substantive laws of the State of North Carolina regardless of its place of performance and without regard to any conflict of law provisions.

(g) Disputes: The parties agree that all disputes arising between the parties in connection with this Agreement that cannot be settled by mutual discussion shall be subject to the jurisdiction of the federal and state courts located in Raleigh, North Carolina.

(h) Severability: If any provision of this Agreement is declared illegal or unenforceable, the remainder of this Agreement shall be valid and enforceable to the extent permitted by applicable law. In such event, the parties shall use their best efforts to replace the invalid or unenforceable provision by a provision that, to the extent permitted by applicable law, achieves the purposes intended under the invalid or unenforceable provision.

(i) Counterparts: This Agreement may be executed in any number of counterparts, each of which, when executed, shall be deemed to be an original and all of which together shall constitute a single agreement.

(j) Survival: The provisions of Sections 2, 3, and 10 shall survive the cancellation, termination or expiration of this Agreement.

IN WITNESS WHEREOF, the parties have executed this Agreement intending to be legally bound as of the Effective Date.

Licensor: Licensee:

MetaMetrics, Inc. _

By:______________________________ By:_____________________________ Timothy J. Klasson Name:__________________________

Chief Operating Officer Title:___________________________

EXHIBIT A

BRANDING AND MARKETING GUIDELINES

SUPPLIED IN PDF FORMAT FOR DISTRIBUTION

(Version ©2009 MetaMetrics, Inc.)

EXHIBIT B

SCOPE OF LICENSE FOR INCORPORATED PRODUCT

The scope of license for the incorporated product is for educational purposes only. Licensee cannot redistribute or sell the product to outside agencies.

EXHIBIT C

CONTACT INFORMATION

|Contact |Name | |

| |Title | |

| |Phone Number | |

| |E-mail | |

|Address |Organization | |

| |Street | |

| |City | |

| |Zip Code | |

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