Exhibit 10.1
LICENSE
AGREEMENT
This License Agreement (the
“Agreement” ) is entered into on the 2
nd day of October, 2009 (the “Effective
Date” ) by and between
NeoMedia Technologies, Inc. ( “NeoMedia” ), a
Delaware corporation with a principal place of business at Suite
500, Two Concourse Parkway, Atlanta, Georgia, 30328 and NeuStar,
Inc. (“Neustar” ), a Delaware corporation, with
a principal place of business at 46000 Center Oak Plaza, Sterling,
VA 20166 (each a “Party” and collectively the
“Parties” ).
WHEREAS, NeoMedia asserts that it is
the owner of certain intellectual property rights
concerning machine-readable code resolution, and that as
such, entities performing campaign management services will require
licenses from NeoMedia to its intellectual property rights in order
to interact with a machine-readable code-related
clearinghouse;
WHEREAS, Neustar desires to develop,
deploy and administer a machine-readable code-related registry and
clearinghouse;
WHEREAS, NeoMedia desires to grant
to Neustar, and Neustar desires to obtain from NeoMedia, rights to
sublicense certain NeoMedia intellectual property rights concerning
machine-readable code resolution, as more particularly set forth
below;
WHEREAS, the Parties desire to share
in certain revenues concerning the licensing of machine-readable
code-related intellectual property, regardless of the source of the
licensing.
NOW THEREFORE, in exchange for the
consideration and covenants herein, the receipt and sufficiency of
which the Parties hereby acknowledge as follows.
The
recitals set forth above are hereby incorporated by
reference.
2.1
“Clearinghouse” means a Code-related system that
receives encoded messages and presents them to a third party for
resolution, as more fully set forth in Section 3 below.
2.2 “Code”
means a machine-readable symbol (e.g., barcode, alpha-numeric
character strings, linear code, graphic, wired or wireless
electronic signal, or other similar representation or
figure).
2.3 “ Confidential
Information ” means all information, whether of a
technical, business, financial or any other nature, disclosed in
any manner, whether verbally, electronically, visually or in a
written or other tangible form, which is either identified as
confidential or proprietary or which should be reasonably
understood to be confidential or proprietary in nature with respect
to the disclosing Party, an affiliate or a third party.
2.4 “Event of
Default” means any representation or warranty made by a
Party which was incorrect in any respect when made and that could
reasonably be expected to have a material adverse effect upon the
other Party’s ability to realize the benefits of its bargain
or a material breach of this Agreement that is not cured within
thirty (30) days after notice of breach to the breaching
Party.
2.5
“Field of
Use” means a method or system for mobile
handsets (or other devices) to resolve machine-readable codes
through scanning (or other machine-reading methods) in which a
mobile phone subscriber is connected to a Clearinghouse in the
Territory. However, the Field of Use is specifically limited by the
claims contained in the Licensed Patents set forth the in Schedule
1 hereto. For the avoidance of doubt, the processing of
a Code-related message solely within an enterprise, and which are
not processed by a clearinghouse, shall be deemed outside the Field
of Use.
2.6
“Governing
Authority” means an entity under whose auspices
a Code-related Registry or Clearinghouse is deployed. If
a third party is not a Governing Authority, then Neustar shall be
considered the Governing Authority.
2.7 “
Intellectual Property ” or “IPR”
means all patent, copyright, trademark, trade name, service mark,
trade secret and other intellectual property rights, including
applications thereof, arising and/or enforceable under U.S.
law.
2.8 “License
Customer” means an entity to which a license or
sublicense is granted to the Licensed Patents.
2.9 “Licensed Collection
Revenue” means Revenue that Neustar collects on
behalf of NeoMedia from a NeoMedia Licensed Customer. Such Revenue
may include Revenue for the licensing of NeoMedia IPR (including
the Licensed Patents). Licensed Collection Revenue shall
not in any event include monies Neustar derives from any other
Clearinghouse or Registry-related activities, including, but not
limited to, fees from a Resolution Authority for Neustar’s
development,
deployment, operation, management, or
administration of a Registry or Clearinghouse, fees Neustar charges
its customers for registering a Code in a Registry, fees Neustar
charges its customer for processing Transactions through a
Clearinghouse, fees for ancillary services.
2.10 “Licensed
Patents” means the patent applications and issued patents owned by
NeoMedia, set forth in Schedule 1 hereto, containing claims to any
invention(s) useful in or relating to the Field of Use, together
with all related divisional applications, continuation
applications, continuation-in-part applications, reissues, and
reexaminations thereof, and any other future applications or
patents hereafter acquired by NeoMedia, in which claims are
directed to the Field of Use, to the extent they issue during the
Term of this Agreement.
2.11 “Licensed Transaction
Revenue” means fees collected under the Licensed
Patents for the Field of Use that are based on Revenue associated
with Transactions licensed by Neustar with respect to a
Clearinghouse on behalf of Neustar Sublicense
Customers. Licensed Transaction Revenue shall not in any
event include monies Neustar derives from any other Clearinghouse
or Registry-related activities, including, but not limited to, fees
from a Resolution Authority for Neustar’s development,
deployment, operation, management, or
administration of a Registry or Clearinghouse, fees Neustar charges
its customers for registering a Code in a Registry, fees Neustar
charges its customer for processing Transactions through a
Clearinghouse, fees for ancillary services.
2.12 “Licensee”
means Neustar.
2.13 “Licensor”
means NeoMedia.
2.14 “NeoMedia Fee”
means the amount of the License
Transaction Revenue remaining after Neustar deducts the Neustar
Fee.
2.15 “NeoMedia License
Customer” means the License Customers to whom a license
to Licensed Patents is granted by NeoMedia, and which are limited
to those entities set forth in Schedule 2. Upon a
NeoMedia License Customer ceasing to be a License Customer (i.e.,
no longer receiving a license from NeoMedia), such entity shall no
longer be deemed a NeoMedia License Customer, and such entity is
not precluded from becoming a Neustar Sublicense Customer or a
(again) a NeoMedia License Customer.
2.16 “Neustar
Fee” means the compensation due Neustar under and
calculated in accordance with Article 7 below.
2.17 “Neustar Sublicense
Customer” means a License Customer to whom a sublicense
to Licensed Patents is granted by Neustar hereunder.
2.18 “Referral
Fee” means the fee set forth in Section 8.7 below for
Neustar’s referral to NeoMedia of a customer.
2.19 “Registry”
means a Code-related system in which Codes are associated
with Resolution Authorities and related data, as more fully set
forth in Article 3 below.
2.20 “Resolution
Authority” means an entity designated in an associated
Registry as having rights to resolve a given code (e.g., campaign
managers), wherever situated.
2.21 “Revenue”
means monies actually received as payment or the equivalent payment
value if any form of non-monetary compensation.
However, Revenue shall not, by way of example and not
limitation, in any way include and shall specifically exclude,
sales or other similar value added taxes, collection costs, credit
card processing fees, credits, amounts under dispute, and any
monies associated with ancillary services (e.g., connectivity,
set-up, deployment, professional services, etc.) to the extent
rendered by Neustar.
2.22
“Territory” means the United States of America,
including its territories and possessions.
2.23
“Transaction” means the processing of a
Code-related message in a Clearinghouse.
3.
REGISTRY &
CLEARINGHOUSE
3.1 Intention . Neustar
intends to develop, deploy and administer a Registry and
Clearinghouse, whereby on behalf of Resolution Authorities, Code
identifiers and related conditions of use are registered,
associated, and communicated.
Currently, Neustar envisions that a
Registry may perform the following activities or enable the
following functions:
·
perform a documentary
and referential function for Codes and their issuing
entities
·
apply terms and
conditions of the Governing Authority to business policies for
registering both Codes and authorities for the use of
Codes
·
serve as the definitive
authority for clearing services for Code relationships
Currently, Neustar envisions that a
Clearinghouse may perform the following activities or enable the
following functions:
·
receive Code strings
from devices
·
reference the
appropriate Registry to determine Resolution Authority
·
forward the Code
strings to the applicable Resolution Authority
·
receive from the
Resolution Authority a content-related response in the form of a
uniform resource identifier, or similar identifier, or content as
specified by the Resolution Authority
·
forward that identifier
to the requesting device
Neustar shall store all
administrative data related to licensing hereunder, e.g., rates
cards, terms of use, policies, types, etc., separate and apart from
other operational systems, including the Registry
database(s).
3.3 Reservations . The
development, deployment, operation, management, or administration
of a Registry and/or a Clearinghouse is merely a statement of
intent by Neustar, which intent is dependent on various factors, as
well as Neustar business judgment, in its sole
discretion. Nothing herein shall impose on Neustar an
obligation to develop, deploy or administer a Registry or
Clearinghouse, whether or not dependent on the sublicensing of
Licensed Patents. Nothing herein prohibits Neustar from
sublicensing third party IPR as part of the Registry or
Clearinghouse, provided the resulting deployment does not violate
NeoMedia’s Licensed Patents.
3.4 Conflicts
. The Parties acknowledge that Neustar’s
development, deployment, operation, management, or administration
of a Registry and/or a Clearinghouse may be subject to requirements
issued by a Governing Authority. Because those
requirements may conflict with the requirements in this Agreement,
the Parties agree that in such a situation, they will use
commercially reasonable efforts to resolve any such conflict,
including by way of amendment to this Agreement, but only as
necessary to resolve the conflict and maintain the benefit of the
bargain between the Parties.
3.5 Additional Services
. Nothing herein shall prohibit Neustar from providing,
and it is Neustar’s intention to provide, value-added
services not subject to this Agreement.
3.6 Billing & Collection
Agent . For any current or future NeoMedia
License Customer within the Territory, if NeoMedia, solely in its
discretion, chooses to outsource any billing and collection
services, NeoMedia shall provide to Neustar a right of first
refusal to provide those services relating to the Field of Use with
respect to that NeoMedia License Customer. NeoMedia
shall provide to Neustar a copy of the license, pricing and
collections terms between NeoMedia and the NeoMedia License
Customer. Neustar shall review these terms and may, in
its sole discretion, determine whether it wishes to accept an
appointment as NeoMedia’s exclusive billing and collections
agent for that NeoMedia License Customer. If Neustar
accepts in writing such an appointment, then Neustar
shall invoice the NeoMedia License Customer for services
relating to the Field of Use and collect monies, on behalf of
NeoMedia, but subject to Article 7. If Neustar accepts
any such appointment, NeoMedia shall then provide to Neustar any
other relevant compensation provisions in the agreement(s) with
each NeoMedia License Customer. Revenue collected by
Neustar hereunder shall be deemed Licensed Collection Revenue as
provided in Article 7. Neustar’s performance
of billing and collection activities under this Section are
contingent upon full and timely receipt of the information required
to be sent to Neustar (e.g., identity of the customer and the
relevant compensation provisions). If the compensation
provisions in any agreement between NeoMedia and a NeoMedia License
Customer are either not commercially reasonable or not practicable
for Neustar (in its sole discretion) to implement, then Neustar
shall not be under any obligation to serve as a billing and
collections agent under this Section, provided that Neustar
provides NeoMedia with written notice thereof.
4.1 Grant . NeoMedia hereby grants to Neustar,
as a Clearinghouse and Registry, the right to sublicense
NeoMedia’s Licensed Patents to License Customers in the Field
of Use and Territory, subject to Exhibit B to this
Agreement.
4.2 Conditional Grant . It is not considered by the Parties that
Neustar’s development, deployment,
operation, management, or administration of a Clearinghouse
or Registry as contemplated herein would require Neustar to obtain
a license to the NeoMedia Licensed Patents. However, to
the extent that it might require it, NeoMedia shall grant to
Neustar a royalty-free license to the NeoMedia Licensed Patents for
the purpose of administering or operating a Clearinghouse and
Registry , as contemplated herein.
4.3 Exclusion . The grant of the licenses under
Section 4.1 excludes the right to use or sublicense
NeoMedia’s Campaign Manager and Code Management platforms,
and NeoMedia is not obligated or expected to provide any rights or
technical information on the same, beyond what may be necessary to
interface with the Registry and Clearinghouse.
4.4 Condition . Nothing herein requires the
licensing or sublicensing of any rights in the Licensed Patents to
the extent that the activities associated with the NeuStar
Clearinghouse would not otherwise read on the claims of such
Licensed Patents absent the licensing or sublicensing of the
Licensed Patents hereunder, or when claims are cancelled or
modified, the term of the Licensed Patent expires, or the Licensed Patents are
overturned.
4.5 Licensing Restriction
. NeoMedia shall not
during the Term license the Licensed Patents to third parties
within the Field of Use, with the sole exception of, and with
respect to, the NeoMedia Licensed Customers set forth in Schedule
2.
5.
OWNERSHIP AND
RESPONSIBILITIES
5.1
Generally
. As a
condition of NeoMedia’s provision of the licenses and other
matters set forth hereunder, Neustar acknowledges NeoMedia’s
representation that all right, title and interest, including
Intellectual Property rights, in and to the Licensed Patents
pertaining to the Field of Use, is owned exclusively by NeoMedia,
or its licensors, and are protected by applicable Intellectual
Property laws.
5.2 Maintenance &
Enforcement . NeoMedia asserts that the Licensed
Patents are necessary to a License Customer’s benefit of a
Code-related Registry and Clearinghouse. Consequently,
the benefit of the bargain set forth in this Agreement requires the
maintenance and enforcement of the Licensed Patents pertaining
to the Field of Use. NeoMedia shall therefore at all
times during the Term take all steps necessary to maintain and
enforce the Licensed Patents pertaining to the Field of
Use.
5.3 Notification
. NeoMedia shall inform Neustar if any claims in a
Licensed Patent pertaining to the Field of Use, expire or are
cancelled, overturned, modified, or the subject of a legal,
regulatory or administrative challenge, within fourteen (14)
days. NeoMedia shall also within fourteen (14) days
inform Neustar should NeoMedia acquire or be granted IPR related to
the Field of Use, in which case the Parties shall enter into good
faith negotiations for amending this Agreement, if reasonably
necessary, on mutually-agreeable commercial terms, to include
such acquired or granted IPR in the definition of Licensed Patents.
However, NeoMedia shall in no way be obligated to include such IPR
in this Agreement and, should the Parties not modify this
Agreement, this shall not constitute a breach of the
Agreement.
6.
SUBLICENSE AGREEMENT
AND RESTRICTIONS
6.1 Sublicense
Agreement. Neustar shall enter into a written
agreement with Neustar Sublicense Customers for the sublicensing of
the Licensed Patents pertaining to the
Field of Use . Neustar shall submit to NeoMedia
Neustar’s sublicensing terms and conditions in
Neustar’s written template agreement with Neustar Sublicense
Customers for NeoMedia’s review and consent, which consent
shall not be unreasonably withheld, conditioned or
delayed. If Neustar desires to modify materially any
sublicensing terms and conditions, then Neustar shall submit those
modifications in writing to NeoMedia for review and consent, which
consent shall not be unreasonably withheld, conditioned or
delayed. Neustar-proposed modifications to sublicensing
terms and conditions shall be deemed
