Updated: January 20, 2022
WHEREAS, Licensor owns all right, title and interest in and to the intellectual property, identified in Exhibit A attached hereto (the “Intellectual Property”). For the purposes of this Agreement, “Intellectual Property” shall mean any and all of the following in any jurisdiction throughout the world: (a) trademarks and service marks, including all applications and registrations, and the goodwill connected with the use of and symbolized by the foregoing, (b) copyrights, including all applications and registrations related to the foregoing, (c) trade secrets and confidential know-how, (d) patents and patent applications, (e) websites and internet domain name registrations, and (f) other intellectual property and related proprietary rights, interests and protections. Except for rights expressly granted under this Agreement, nothing in this Agreement will function to transfer any of either party’s Intellectual Property rights to the other party, and each party will retain exclusive interest in and ownership of its Intellectual Property developed before this agreement or developed outside the scope of this agreement.
WHEREAS, Licensee desires to use the Intellectual Property as part of an asset sale involving Licensor; and
WHEREAS, Licensor desires to grant Licensee a limited, non-exclusive, and revocable license to use the Intellectual Property, pursuant to the terms and conditions of this Agreement.
NOW, THEREFORE, for and in consideration of the premises hereof, the agreements and covenants hereinafter set forth, and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:
1. License Grant. Pursuant to the terms and conditions of this Agreement, Licensor hereby grants to Licensee a limited, non-exclusive, revocable right and license to use the Intellectual Property during the term of this Agreement.
2. Term. The term of this Agreement shall be for 1 year(s) (“Initial Term”), commencing on the date of purchase unless earlier terminated in accordance with this Agreement. If this Agreement has not been otherwise terminated, the Agreement shall automatically renew for an additional 1-year term (“Renewal Term”). If either party elects not to renew this Agreement, the non-renewing party shall provide the other party with written notice of the intent not to renew this Agreement at least ninety (90) days prior to the end of the Initial Term or any Renewal Term. Failure to provide timely notice of non-renewal shall result in the Agreement being renewed.
3. Warranty. Licensee acknowledges and agrees that, prior to execution of this Agreement, Licensor has advised Licensee that the Intellectual Property is in a prototype “Beta testing” phase of development. As such, Licensee expressly agrees that the Intellectual Property is subject to errors and bugs, and is not being licensed as a completely error free product, and Licensee waives any claims for damages for downtime or system error, including consequential damages and lost profits. Further, Licensee expressly agrees to cooperate with Licensor in installing patches, software updates, and other modifications and improvements from time to time, as requested by Licensor. Licensee also further agrees, as part of the consideration for this Agreement, to provide periodic feedback to Licensor for fixes and improvements that Licensee would request to the Intellectual Property.
Unless otherwise provided in a warranty to Licensee, the Intellectual Property is provided “as is,” with all faults, defects, bugs, and errors. Licensor does not make any warranty regarding the Products, which includes Licensor’s statement that
LICENSOR DISCLAIMS TO THE FULLEST EXTENT AUTHORIZED BY LAW ANY AND ALL OTHER WARRANTIES, WHETHER EXPRESS OR IMPLIED, INCLUDING ANY IMPLIED WARRANTIES OF TITLE, NON-INFRINGEMENT, MERCHANTABILITY, OR FITNESS FOR A PARTICULAR PURPOSE.
4. Compensation. In consideration for the license granted hereunder, Licensee hereby agrees to pay Licensor the License Fees and/or Royalties set forth on Exhibit B.
5. No Right to Sublicense. Licensee may not sublicense any of its rights under this Agreement without the prior written consent of Licensor which consent may be withheld in the sole discretion of Licensor. Licensee shall remain fully liable for the acts and omissions of any sublicensee authorized under this Agreement.
6. Online Uses. Licensee may not register or use any domain name or social media account name that contains any of the Intellectual Property, or a colorable imitation of any of the Intellectual Property, as a portion thereof, without the prior written consent of Licensor which consent may be withheld in the sole discretion of Licensor. Immediately upon termination of this Agreement, Licensee shall assign and transfer to Licensor all right, title and interest in and to any domain names or social media accounts registered by Licensee which include any of the Intellectual Property, or a colorable imitation of any of the Intellectual Property, as a portion thereof.
7. Compliance with Laws. Licensee agrees that its use of the Intellectual Property, and all goods and services provided by Licensee under the Intellectual Property, shall comply with all applicable laws, regulations, rules and ordinances, and that Licensee shall obtain all required governmental licenses, approvals and permissions relating thereto.
8. Protection of Goodwill. Licensee shall take no action which does or is likely to derogate Licensor’s rights in the Intellectual Property or the value of the Intellectual Property, or interfere with, diminish, tarnish, damage or impair such rights or value, or the quality image and goodwill associated with the Intellectual Property.
9. Required Notices. Licensee must include appropriate notices evidencing the protected intellectual property status of copyright, patented, or trademarked, as reasonably required by Licensor, in connection with any use of the Intellectual Property.
10. No Licensor Liability. Under no circumstances shall any approval of any Marketing Materials by Licensor be construed as a determination that such Marketing Materials conform to any laws, regulations, rules or ordinances, nor shall any approval or disapproval of any Marketing Materials subject Licensor to any damages, claims or liability to Licensee or any third party.
11. Ownership. Licensee acknowledges and agrees that Licensor is the sole and exclusive owner of all right, title and interest in the Intellectual Property, and that Licensee acquires no ownership interest in the Intellectual Property by virtue of anything in this Agreement or otherwise. Licensee agrees that it will not, directly or indirectly, do anything or cooperate with or assist any person in doing anything that is inconsistent with Licensor’s sole and exclusive ownership of the Intellectual Property. Without limiting the generality of the foregoing, Licensee will not (a) claim or assert any contrary rights or interest in any of the Intellectual Property, or a colorable imitation of any of the Intellectual Property, (b) register or attempt to register any of the Intellectual Property, or a colorable imitation of any of the Intellectual Property, with the United States Patent and Trademark Office (“USPTO”) or any other governmental agency (whether as a trademark/service-mark, trade name, fictitious name, or otherwise), or (c) oppose any application or attempt to cancel any registration of any of the Intellectual Property owned by Licensor. Licensee further agrees that any and all rights that may be acquired by the use of the Intellectual Property by Licensee shall inure to the sole benefit of Licensor. Unless otherwise set forth in writing, and, in the event Licensee obtains Licensor’s written consent to register any of the Intellectual Property, or a colorable imitation with the USPTO or any other governmental agency (“Licensee Registration”), such Licensee Registration shall inure to the sole benefit of Licensor, and upon Licensor’s written request, or at the latest upon termination of this Agreement, Licensee shall take all necessary actions including to execute and deliver any and all documents, in such forms as are provided by Licensor, to initiate cancelation, or transfer exclusive ownership to Licensor, of such Licensee Registration (“Registration Rights Termination”). For this limited purpose, Licensee hereby appoints Licensor as its attorney in fact to execute and deliver to Licensor, on behalf of Licensee, any and all such documents or instruments necessary to accomplish such Registration Rights Termination. This appointment shall be deemed to be a power coupled with an interest and shall be irrevocable.
a. No Reverse Engineering. Licensee will not (1) create or attempt to, or aid or permits others to, create by reverse engineering, disassembly, decompilation, reverse engineering or otherwise, the internal structure, the source code, hardware design, or organization of any Intellectual Property, unless expressly permitted by Law, (2) copy, modify, translate, or create derivative works of any Intellectual Property, unless Licensor consents in writing, or separate any Intellectual Property into component parts for distribution or transfer to a third party.
b. Licensee’s Own Intellectual Property. Notwithstanding the foregoing, Licensee shall have the right to develop Licensee’s owner intellectual property not in violation of this Agreement, so long as such intellectual property is not a derivative, imitation, copy, disassembly, reverse engineering, or similar duplication or element of Licensor’s Intellectual Property.
12. Execution of Papers. Licensee agrees to execute all papers reasonably requested by Licensor to effect registration, maintenance and renewal of the Intellectual Property with the USPTO or any other governmental agency.
13. Non-Exclusive Agreement. Licensee expressly agrees that Licensor’s provision of intellectual property to the Licensee is on a non-exclusive basis, and the Licensee agrees that Licensor shall be allowed to provide the intellectual property to third parties during the term of this Agreement.
14. Infringement. In the event that Licensee learns of any infringement or threatened infringement of the Intellectual Property, Licensee shall forthwith notify Licensor giving particulars thereof. Licensee shall provide necessary information and reasonable assistance to Licensor or its authorized representatives in the event that Licensor in its sole discretion decides that legal action should be taken with respect to such infringement or threatened infringement. Any such legal action shall be made at the expense of Licensor and any monetary recoveries resulting from such legal action shall be the sole property of Licensor. Except as expressly set forth in this paragraph, Licensee shall not take any action with respect to any infringement or threatened infringement of the Intellectual Property.
15. Confidential Information. For the purposes of this Agreement, “Confidential Information” shall mean and include all information regarding Licensor’s Intellectual Property not generally available to the public, whether written or oral, and whether in the form of documentation, correspondence, employee, operating, or other manuals, memoranda, reports, records, notes, computer retained information, blueprints, plans, technical or engineering specifications, or otherwise, including, without limitation, information relating to processes, procedures, methods, techniques, formula, know how, products, services, advertising or promotion, research, inventions, improvements, innovations, insignias, logos, compounds, compositions, customer, supplier and/or employee identifications, potential business contacts, patents, copyrights, trademarks, trade names, trade secrets, service marks, pricing policies, clients, prospective clients, business plans, financial information, intellectual property, or other information owned by or relating to Licensor, any of its present of future affiliates, or which relates to the actual or anticipated business operations of Licensor, any of its present or future affiliates, or which has been acquired by Licensor or any present or future affiliate of Licensor under terms limiting or protecting the disclosure thereof, including, without limitation, information created or provided by Licensor for Licensee, whether or not any such Confidential Information is protectable under applicable law. Confidential Information specifically includes all information derived from, or based upon, in whole or in part, any other Confidential Information.
a. Non-Disclosure. Licensee, and Licensee’s employees, contractors, agents, managers, principals, and officers, acknowledge and agree that the Confidential Information is confidential and should not be disclosed to any other person. Licensee shall preserve and protect the confidentiality of the Confidential Information. Licensee shall take all necessary steps to ensure that the Confidential Information is not disclosed to, nor accessed or used by, any person or entity, other than those expressly approved in writing by Licensor. Licensee shall use the Confidential Information strictly in accordance with this Agreement and only for the limited purpose of evaluating Licensor’s business for the purpose of potentially doing business together. Licensee hereby acknowledges that the Information is a confidential, valuable, and unique asset of Licensor.
b. Protection of Information. Licensee agrees that Licensee shall ensure that employees, contractors, agents, managers, principals, and officers of Licensee with access to Confidential Information shall be bound by and agree to the obligations of Licensee herein. Licensee also agrees that Licensee will not use for its own benefit or the benefit of any third party any of the Confidential Information.
c. Exclusions. For the purposes hereof, Confidential Information does not include any information that (a) was in the public domain prior to the date of disclosure or subsequently falls into the public domain without fault of the receiving party, (b) was lawfully received by the receiving party from a third party not, to the receiving party’s knowledge, subject to any contractual or fiduciary duty not to disclose, (c) was already known or in the possession of the receiving party prior to receipt thereof from the disclosing party, as evidenced by the receiving party’s written records, (d) is subsequently and independently developed by the receiving party without reference to the Confidential Information, as evidenced by the receiving party’s written records.
d. Survival. This provision shall survive termination of this Agreement.
e. Return of Information. Within ten (10) days of a written demand for return of information by Licensor, or within ten (10) days of a written notice of termination, Licensee shall return to Licensor any and all documents of any medium that contain Confidential Information.
16. Term. The term of this Agreement shall commence on the Effective Date and shall continue for an initial term of three (3) years. The term shall automatically renew for successive one (1) year renewal terms unless either Party provides the other Party with written notice of its intent not to renew no less than thirty (30) days prior to the end of the initial term or then current renewal term.
17. Injunctive Relief. Upon breach or threatened breach of this Agreement, in addition to any and all other rights it may have, Licensor shall be entitled to injunctive relief, both temporary and permanent, against the breaching party, as the parties recognize that a remedy at law would be inadequate and insufficient. Licensor shall be entitled to recover from the undersigned all costs and expenses, including but not limited to attorneys’ fees and court costs, incurred by Licensor as a result or arising out of any breach or threatened breach under or pursuant to this Agreement in addition to such other rights or remedies Licensor may have under this Agreement or any other Agreement, at law or in equity.
18. Termination by Either Party. Either Party may upon notice to the other Party terminate this Agreement (a) if the other Party commits a material breach of this Agreement and fails to cure said breach within ten (30) days following its receipt of notice of said breach from the non-breaching Party, (b) in the case of the commencement of a voluntary case or other proceeding seeking liquidation, reorganization or other relief with respect to the other Party or its debts under any bankruptcy, insolvency or other, similar law now or hereafter in effect that authorizes the reorganization or liquidation of such Party or its debts or the appointment of a trustee, receiver, liquidator, custodian or other similar official, (c) if the other party makes a general assignment for the benefit of creditors, becomes insolvent or takes any corporate action to authorize any of the foregoing.
19. Immediate Termination of Intellectual Property Use. Notwithstanding anything in this Agreement to the contrary, Licensee shall cease using any Intellectual Property of Licensor immediately upon termination.
20. No Agency. Nothing in this Agreement is intended to, or shall be deemed to, constitute a partnership or joint venture between the Parties, create an agency relationship between the Parties, or otherwise grant either Party the authority to act on behalf of the other or to bind the other to any agreement or obligation.
21. Disclaimer. EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, LICENSOR DOES NOT MAKE, AND HEREBY DISCLAIMS, ANY AND ALL EXPRESS OR IMPLIED WARRANTIES RELATING TO THE MARKS, INCLUDING, BUT NOT LIMITED TO, WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, QUIET ENJOYMENT AND NONINFRINGEMENT, AND ANY WARRANTIES ARISING FROM A COURSE OF DEALING, USAGE, OR TRADE PRACTICE.
22. Limitation. EXCEPT FOR CLAIMS, DAMAGES OR LIABILITIES ARISING FROM LICENSOR’S RESPECTIVE GROSS NEGLIGENCE, FRAUD OR WILLFUL MISCONDUCT, (a) LICENSOR SHALL NOT HAVE ANY LIABILITY, WHETHER BASED IN CONTRACT, TORT (INCLUDING NEGLIGENCE) OR ANY OTHER LEGAL THEORY, FOR INDIRECT, CONSEQUENTIAL, INCIDENTAL, SPECIAL OR PUNITIVE DAMAGES OF ANY KIND, EVEN IF THE PARTIES HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, AND (b) LICENSOR’S MAXIMUM LIABILITY FOR DAMAGES ARISING OUT OF OR RELATING TO THIS AGREEMENT, WHETHER BASED IN CONTRACT, TORT OR ANY OTHER LEGAL THEORY, SHALL NOT UNDER ANY CIRCUMSTANCES EXCEED THE AMOUNT OF TEN THOUSAND DOLLARS ($10,000.00).
23. Notices. Any notice, demand or request which may be permitted, required or desired to be given in connection with this Agreement shall be given in writing and directed to Licensee or Licensor, as appropriate, as follows:
If to Licensor:
18848 US Hw 441
Mount Dora, FL 32757 US
Except for service of process, notices shall be deemed properly delivered (a) if personally delivered; (b) if delivered by overnight courier; or (c) on the fifth business day following deposit in the United States Mail, by registered or certified mail, return receipt requested, postage prepaid and addressed as set forth herein. Any Party may change its address for the purpose of receiving notice under this Agreement by giving written notice of such change to the other Party at least fifteen days prior to the intended effective date of such change.
24. Governing Law; Venue. This Agreement shall be governed in its enforcement, construction, and interpretation by the laws of the State of Florida. The parties hereby consent to the exclusive jurisdiction of the courts of Lake County, State of Florida in connection with any matter related to or arising out of this Agreement or any breach thereof. The parties hereby irrevocably submit to the jurisdiction of the Circuit Court of the Fifth Judicial Circuit in and for Lake County, Florida, in any action or proceeding arising out of or relating to this Agreement, or the corresponding federal court in the Middle District of Florida. The parties hereby irrevocably agree that all claims in respect to such action or proceeding may be heard and determined in such courts. The parties hereby irrevocably waive, to the fullest extent that they may do so, the defense of an inconvenient forum to maintenance of such action or proceeding. The parties agree that a final judgment in any such action or proceedings will be conclusive and may be enforced in other jurisdictions by suit or judgment or any other manner provided by law.
25. Assignment. Licensor may assign its right and obligation under this Agreement, in whole or in part, to one or more successors in interest to the Intellectual Property. Licensee may not assign any of its rights or obligations under this Agreement, by assignment, merger or operation of law, without the express written consent of Licensor.
a. Binding upon Successors and Assigns. Subject to, and unless otherwise provided in, this Agreement, each and all of the covenants, terms, and provisions contained herein shall be binding upon, and inure to the benefit of, the permitted successors and assigns of the parties hereto.
26. No Waiver. Forbearance or neglect on the part of either Party to insist upon strict compliance with the terms of this Agreement shall not be construed as or constitute a waiver thereof.
27. Severability. If any provision of this Agreement shall be held invalid or unenforceable by any court of competent jurisdiction or as a result of future legislative action, such holding or action shall be strictly construed and shall not affect the validity or effect of any other provision hereof, as long as the remaining provisions, taken together, are sufficient to carry out the overall intentions of the Parties as evidenced hereby.
28. Headings. The headings of each section contained herein are provided only for convenience of reference and form no part of the substantive agreement of the Parties.
29. Entire Agreement. This Agreement constitutes the entire agreement between the Parties with respect to the subject matter hereof. This Agreement supersedes all prior oral or written agreements between the Parties concerning said subject matter. This Agreement may be amended only in a writing signed by both Parties.
30. Counterparts. This Agreement may be executed in counterparts, each of which shall for all purposes be deemed to be an original and all of which shall constitute the same instrument. Counterpart signature pages to this Agreement transmitted by facsimile transmission, by electronic mail in portable document format form, or by any other electronic means intended to preserve the original graphic and pictorial appearance of a document, will have the same effect as physical delivery of the paper document bearing an original signature. An electronic or facsimile signature by any person on a counterpart of this Agreement shall be binding and effective for all purposes.
31. Invalidity of Provisions. The unenforceability, for any reason, of any term, condition, covenant, or provision of this Agreement shall neither limit nor impair the operation, enforceability, or validity of any other terms, conditions, provisions, or covenants of this Agreement.
32. Attorney’s Fees and Costs. In the event of any litigation between the parties arising out of or relating to this Agreement, the prevailing party shall be entitled to recover all costs incurred and reasonable attorneys’ fees, including attorneys’ fees in all investigations, trials, bankruptcies, and appeals.
33. Good Faith Efforts. The Parties each covenant to use their best efforts in good faith to comply with the provisions of this Agreement.
34. Construction. This Agreement shall not be construed against either party regardless of who is responsible for its drafting.