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 ExhibitA (“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.