called
`(hereinafter
`agreement
`This
`“License”) is made and entered into by and between
`Skype Technologies SA, Skype, Inc, and Affiliates
`thereof (hereinafter called “Licensee”) and Licensor,
`defined below, on November 19, 2009 ("Effective
`Date”).
`‘
`1
`
`WHEREAS Licensor is in the business of
`developing,
`selling,
`servicing,
`and maintaining
`software that enables the distribution of authorized,
`licensed content over electronic networks;
`WHEREAS Licensor is the owner of the
`Patents, as defined below;
`WHEREAS Licensee desires
`to obtain
`certain rights being offered for license by Licensor
`pursuant to the terms and conditions of this License.
`NOW, THEREFORE, In consideration of the
`foregoing and the mutual covenants and obligations
`herein undertaken and for good and valuable
`consideration, Licenscr and Licensee (individually the
`''Party’’ and collectively the “Partles”) agree as
`follows:
`‘
`
`’
`
`l.
`
`DEFINITIONS
`
`"Affiliate" shall mean, with respect to any entity,
`any other entity that, directly or indirectly, controls, is
`controlled by or is under common control with, that
`entity; provided, however, that in each case any such
`other entity shall be considered to be an Affiliate only
`during the time period during which such control
`exists. For purposes of
`this definition,
`"control”
`(including, with
`correlative meaning,
`the
`terms
`"controlled by" and "under common control with"), as
`used withrespect
`to any entity,
`shall mean the
`possession, directly or indirectly, of the power to
`direct and/or cause the direction of the management
`and policies of such entity, whether through the
`ownership of voting securities,
`by contract or
`otherwise.
`
`“Field of Use" shall mean any and all uses,
`practiced worldwide,
`to which, and for which,
`the
`Licensee Application(s) have been designed or for
`which they maybe used.
`
`“Llcensee Applicaiion(s)” shall be defined as
`those
`software-based
`products
`and
`services
`deveioped, and made commercially available for use,
`
`Confidential ‘
`
`“Licensee Application(s)” shall further
`by Licensee.
`include
`softwarebased
`products
`and
`services
`developed, and made commercially available, by
`third party licensees of Licensee's software-based
`products and services‘ (“Third Party Software") but
`only to the extent such Third Party Software is
`. designed to interface with,
`and is
`running
`in
`connection with, a software-based product or service
`developed, or made commercially available for use,
`by Licensee.
`For avoidance of doubt, Third Party
`Software shall not qualify as a Licensee Application it,
`such Third Party Software is not designed to interface
`with, and is not running in connection with, accessing,
`using, or otherwise relying upon or interfacing with a
`softwarebased product or service developed, or
`made commercially available for use by Licensee.
`
`Digital
`Brilliant
`mean
`shall
`"Licensed
`Entertainment, Inc, a Delaware corporation having its
`principal placeof business at 14011 Ventura Bivd.,
`Suite 501, Sherman Oaks, 91428 and Alinet,
`lnc., a
`Delaware corporation having its principal place of
`business at 14011 Ventura Blvd., Suite 501, Sherman
`Oaks, 91423, and any Affiliates thereof.
`
`shall mean (i) U.S. Patent Nos.
`“Patents"
`5,978,791, 6,415,280, and 6,928,442, and (ii) any.
`and all
`improvements, modifications, continuations,
`continuations-in-part, divisions,
`re—issues and re-
`examinations thereof (including any patent claiming
`priority from or derived from U.S. Patent Application
`‘No.08/425,160).
`
`‘
`
`ll.
`
`LICENSE GRANT
`
`this License,
`to the provisions of
`Subject
`.
`Licensor hereby grants to Licensee a nonexclusive,
`irrevocable, hon-assignable (subject to Section lX),
`non—transferabie (subject to Section lX), royalty-free,
`fully paid-up, sublicense under any and all claims of
`the Patents for the sole purpose of making, having
`made, using,
`importing,’ offering to sell and selling
`Licensee Applications within the Field of Use. For
`purposes of the foregoing license grant the "selling of
`Licensee Applications" shall include (a) making such
`Licensee Applications available without charge,
`(b)
`licensing or otherwise disposing of any products or
`services, and (is) hosting such Licensee Applications.
`
`%.0
`3
`
`EXHIBIT
`?2.ii§or\a.j(A)(LE
`'2, at 0
`
`
`
`

`
`
`
`
`
`Any and all rights not expiicitiy granted to
`Licensee in the license grant, designated above, are
`expressly reserved by Licensor. Unless otherwise
`provided in this Agreement, no license or immunity as
`to the Patents is granted by Licensor, either by
`implication, estoppei, or otherwise and no license or
`immunity as to the Patents is granted by Licensor to
`any
`other
`party,
`by
`implication,
`estoppei,
`or
`otherwise.
`
`.
`
`The License grant does not confer upon
`Licensee the right to grant or othenrrise transfer (via
`sublicense, assignment, or otherwise) any rights to
`any other persons or entities for any other purpose.
`Notwithstanding the above, Licensor recognizes that,
`to the extent Licensee Appilcationis) are properly
`licensed, rights to use the Licensee Applicationis)
`shall be concurrently conterred upon the Licensees
`users of the Licensee Appiicationisl. These limited
`use rights do not obviate or otherwise negate the
`prohibition
`against Licensee's
`transference
`(via
`subiicense, assignment, or otherwise) of any rights to
`any other persons or entities for any other purpose,
`unless otherwise provided for in Section IX.
`
`Licensee agrees to cause ahy products
`made by or for Licensee, or distributed by or on
`behalf Licensee, which are covered by one or more
`claims of the Patents to have clearly marked thereon,
`or on materials associated therewith, a notice listing
`the numbers of the Patents.
`
`-
`
`LICENSEE PERFORMANCE,
`III.
`WARRANTIES, AND REPRESENTATIONS
`
`is a
`it
`‘Licensee represents and warrants that
`corporation duly organized, validly existing and in
`good standing under the laws of the Jurisdiction of its
`incorporation.
`it has alt requisite corporate power
`and authority to own and operate its properties and
`assets, to execute and deliver this Agreement, and to
`carry out the provisions of this Agreement.
`-
`V
`
`alt of its obligations hereunder has been taken. This
`License, when executed and delivered, shall be, valid
`and binding upon it and enforceable in accordance
`with its terms.
`
`LICENSOR PERFORMANCE,
`IV;
`WARRANTIES, AND REPRESENTATIONS
`
`Licensor represents and warrants that Licensor
`has sufficient
`rights in the Patents to grant
`the
`License as set forth herein, and Licensor’s grant oi
`any license herein and the practice of
`the rights
`granted herein does not,
`to the best of Licensor’s
`actual knowledge as of the Eifective Date, infringe (i)
`any proprietary rights of any thirdparty under any
`United States patent
`law, or
`(ii) any intellectual
`property rights of Licensor
`that are not
`licensed
`hereunder.
`'
`
`OTHER THAN THE REPRESENTATIONS AND
`WARRANTIES STATED HEREIN, THE LICENSE
`GRANTED TO LICENSEE BY LICENSOR IS
`GRANTED IN “AS IS/WHERE IS” CONDITION.
`LICENSOR MAKES NO REPRESENTATIONS OR
`WARRANTIES TO LICENSEE OF ANY KiND,
`INCLUDING WITHOUT LIMITATION, EXPRESS,
`IMPLIED,
`STATUTORY,
`MERCHANTABILITY,
`FITNESS FOR A PARTICULAR PURPOSE, PATENT
`ENFORCEABILITY,
`OR
`PATENT
`VALIDITY.
`I LICENSOR SHALL NOT BE LIABLE TO LICENSEE
`FOR ANY SPECIAL,
`INDIRECT,
`INCIDENTAL OR
`CONSEQUENTIAL DAMAGES, EVEN IF INFORMED
`OF THE POSSIBILITY THEREOF IN ADVANCE.
`THESE LIMITATIONS APPLY TO ALL CAUSES OF
`
`INCLUDING
`THE AGGREGATE,
`ACTION IN
`WITHOUT LIMITATION, BREACH OF CONTRACT,’
`BREACH OF WARRANTY, NEGLIGENCE, STRICT .
`LIABILITY, FRAUD, MISREPRESENTATION AND
`OTHER TORTS, LOSS OF PROFIT, LOSS OF
`BUSINESS, LOSS OF SAVINGS OR OTHER LOSS.
`
`.
`
`V. CONSIDERATION
`
`Licensee represents and warrants that it has all
`requisite corporate power and authority to execute,
`deliver and perform its obligations under this License.
`All corporate action on its part and on the part of its
`oificers, directors and stockholders necessary for the
`authorization of this License and the performance of
`
`in consideration of the licenses, releases, and
`covenants granted herein, Licensee has received
`good and valuable consideration (the “Fee"), receipt
`of which is hereby acknowledged by Licensor. The
`licenses,
`releases, and covenants granted herein
`remain in full force and effect, throughout the term of
`
`Confidential
`
`I
`
`Page 2
`
`

`
`
`
`this Agreement, without any other payments of
`money or other consideration or compensation.
`
`
`
`VI. TERM AND TERMINATION
`
`This License shall commence upon Licensods
`countersignature or this Agreement after being signed
`by Licensee, and shall continue until the expiration of
`the last
`to expire of the Patents or termination in
`accordance with the terms of this Section Vi. This
`License shall be non~terminable and irrevocable.
`
`Notwithstanding any other terms in this Section
`this Agreement shall automatically terminate if
`6,
`Licensee, or any party on Licensee's behalf, pursuant
`to Licensee's
`instructions,
`or under Licensee's
`control, challenges the validity of one or more claims
`in the Patents.
`n
`‘
`
`VII. RELEASE AND COVENANT NOT TO SUE
`
`Generai Release. Each Party, on behalf of itself
`and each of
`its Affiliates (the “Releasing Party”),
`hereby unconditionally and irrevocably releases,
`remises, acquits and forever discharges the other
`Party and each of
`its Affiliates, and its and their
`respective
`successors,
`assigns,
`employees,
`directors, offioers, and agents, past and present, from
`any and all actions, causes of action, proceedings,
`suits, accounts, rights, claims, demands,
`liabilities,
`interest, costs and expenses, of any kind or nature,
`whether in law or in equity, known or unknown,
`in
`each case, on account of, arising out of or relating in
`any way to the Licensed Patents or infringement
`thereof, whether direct,
`indirect, contributory or by
`inducement.
`
`The Releasing Party, on
`Unknown Claims.
`behalf of itself and its Affiliates, hereby irrevocabiy
`and forever expressly waives all
`rights that
`the
`Releasing Party and/or its Affiliates may have arising
`under California Civil Code Section i542 and all
`simiiar rights under the laws of any other applicable
`jurisdictions with respect to the release granted by
`the Releasing Party under Section 3.t..——’ The
`Releasing Party understands that Section 1542
`provides that:
`
`Confidential
`
`Page 3
`
`release does not extend to claims
`Ageneral
`which the creditor does not know or suspect to exist
`in his or her favor at
`the time of executing the
`release, which if known by him or her must have
`materially affected his or her settlement with the
`debtor.
`
`The Releasing Party acknowledges that it has
`been fully informed by its counsel concerning the
`effect and import of this Agreement under California
`Civil Code Section i542 and similar laws of any other
`applicable iurisdictions and knowingly waives
`all
`rights under Section 1542 and similar laws of other
`applicable iurisdictions
`'
`
`VIII. NOTICE
`
`All communications and notices required under
`this License shall be considered duly given it sent by
`courier requiring signedreceipt upon delivery or if
`timely mailed by U.S. Postal Service,
`first class,
`postage prepaid and addressed as follows:
`
`(a)
`
`(b)
`
`V
`if to Licensor:
`Brilliant Digital Entertainme
`i27ii Venture Boulevard, Suite 210
`Studio City, CA 91604
`
`if to Licensee:
`Skype Technologies S.A.
`22.24 Boulevard Royal
`L-2449 Luxembourg
`Telephone No.: +4420”/1937201
`Facsimile No.2 +352 26 10 21 84
`
`or such mailing address as either party may from time
`to time specify in writing.
`
`IX. MISCELLANEOUS
`
`this License shall be
`Nothing contained in
`interpreted to grant
`to Licensee any rights with
`respect to any other patents or software than those
`specified in Section 2.
`
`. This License may be modified or terminated in
`whole or
`in part consistent with the law and
`applicable regulations upon mutual agreement of
`Licensee and Llcensor evidenced in writing and
`signed by both parties. This License sets forth the
`
`

`
`
`
`entire agreement and understanding between the
`Parties as to the entire subject matter thereof and
`merges all prior discussions between them.
`’
`
`is
`Parties
`the
`between
`relationship
`The
`contractual only. Neither this License nor the conduct
`of the Parties shall be construed to make Licensee
`
`ioint venture partners, or
`and Licensor partners,
`agents of one another. Neither Party shall have any
`authority or ability to enter into any agreement or
`obligation on behalf of the other Party, or to bind the
`other Party in any manner whatsoever.
`
`the
`that any one or more or
`in the event
`any
`provisions’ contained
`in
`this License
`or
`application thereof is held to be invalid,
`illegal or
`unenforceable in any respect, the validity, legality and
`enforceability of the remaining provisions contained
`herein shall not in any way be affected or impaired
`thereby, unless a manifest injustice or inequity would
`result from the applicability or enforceability of such
`remaining provisions; and the parties agree to
`substitute for
`the invalid,
`illegal or unenforceable
`provision
`a
`provision which most
`closely
`approximates the intent and economic effect of the
`invalid, illegal or unenforceable provision or to reform
`the invalid,
`illegal or unenforceable provision to the
`maximum which would
`be
`valid,
`legal
`and
`enforceable.
`
`This License will inure to the benefit of, and be
`binding
`on
`the
`Parties
`and their
`respective.
`successors and permitted assigns. The undersigned
`warrant that they have full authority to sign and bind
`their respective entities to this License.
`
`Licensee may not assign, delegate, sell, transfer,
`sublicense or otherwise dispose of, voluntarily or
`involuntarily, by operation of law or otherwise, any or
`all of its rights or obligations under this Agreement to
`A any other person, business or entity without the prior
`written consent of Licensor. Any such attempted
`assignment shall be null and void. Notwithstanding
`the above, Licensee may assign its rights hereunder
`to any other person, business or entity, without the
`prior written consent of Licensor,
`it such assignment
`is being made pursuant
`to the sale of
`all or
`substantially all of its interests in, and to, the source
`code and object code for Global
`index software
`
`Confidential
`
`'
`
`Page 4
`
`
`
`
`
`(whether by assignment, merger, consolidation or
`otherwise).
`in such a case, Licensee will no longer
`have any rights to practice the Patents, as provided
`‘herein, and all such rights shall inure to the benefit of
`the acquirer of the source code and object code for
`Global index software.
`4
`
`This License may be executed in one or more
`counterparts, each of, which shall be deemed an
`original, but all of which together shall constitute one
`and the same document. The Parties may rely upon »
`facsimile copies of this License as though they were
`originals.
`
`Each Party acknowledges that if it breaches any
`of its obligations under this Agreement, it will cause
`damage of an irreparable and continuing nature to
`the other party, for which money damages will not
`provide adequate relief. Therefore, in addition to any
`money damages to which the non~breaching party is
`entitled, the non-breaching party also is entitled to
`obtain lniunctlve relief (including but not
`limited to
`immediate entry of a temporary restraining order) to
`prohibit the breaching party's continuing breach of the
`applicable term. The nonbreaching party will have
`the right to obtain such relief without having to prove
`any damages or post any bond.
`
`Licensee covenants that, during the term of this
`Agreement,
`it shall not attack, compromise, file suit
`against or in any manner attempt to vitlateor commit
`or fail to take any action, which could vitiate any of
`the rights,
`titles or interests of the Licensor in the
`Patents.
`A
`
`shall be governed by and
`This Agreement
`i construed in accordance with the laws of the State of
`California, exclusive of its provisions on conflicts of
`laws.
`in respect of any dispute relating to this
`Agreement, such dispute shall be brought exclusively
`in a court of competent jurisdiction sitting in Los
`Angeies County, California.
`
`The losing party-in any proceeding related to or
`arising out of this Agreement, including actions in tort,
`shall
`pay
`the
`costs
`and expenses
`(including
`reasonable attorneys’ fees) of the prevailing party.
`Any and all
`remedies herein expressly conferred
`upon a party shall be deemed cumulative and not
`
`

`
`
`
`exclusive of any other remedy conferred hereby or by
`iaw, and the exercise of any one remedy shalt not
`preclude the exercise of any other.
`
`No waiver of any provision of this License shalt
`be effective as against the waiving Party uniess such
`waiver is
`in writing signed by the waiving Party.
`Waiver by a'Party in respect of a specific matter shaii
`
`»
`
`not be construed as, or constitute, either a continuing
`waiver or a waiver of any other matter. This License
`may only be modified, supplemented or amended by
`a written instrument executed by all of the Parties _
`hereto."
`
`The headings contained in the License are for
`the sole purpose of convenience oi reference.
`
`
`
`Confidential
`
`K
`
`'
`
`Page 5
`
`

`
`
`
`
`
`
`
`IN WITNESS WHEREOF, the parties hereto have caused this instrument to be executed by their duly authorized
`representatives.
`
`LICENSOR:
`
`‘_
`I
`
`.2
`
`'
`
`arrrrram Digital Enreyfaigrnenr. Inc. and Annex, inc‘
`By:
`L"
`Kevin Berrne§§, Presfdent and CEO
`
`LICENSEE:
`'
`
`Skype Technologies SA
`By:
`
`
`
`
`
`< SIGNATURE >
`
`V
`
`c SIGNATURE >
`
`
`
`Date:
`
`
`
`Date:
`
`Skype, rnc.
`
`
`
`5&4
`
`
`< SIGNATURE >
`
`Date:
`
`
`
`Cvnfidumial
`
`[Slgmarun-. Pagc to Pawn! and Sofiwaxc License Agrcscmcnfl
`
`

`
`9N WITNESS WHEREOF. the parties heme have caused this Instrument to be executed by U181! duty authorized
`representatives.
`
`‘
`LICENSOR:
`Brflfianl Digital snrenmnem, Inc. and Ntnet. Inc.
`
`LICENSEE:
`Skype Technologies SA
`
`89¢ ......_....._......................__._
`Kevin Eennalster, President and CEO
`
`< SIGNATURE >
`
`
`confidential
`
`[Signature Page to Pawn: and Sofiwan: License Agrwmcnt]
`
`
`
` x 4
`
`2II
`K5
`
`I