`
`
`
`
`
`
`
`
`
`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 i9, 2009 ("Effective
`Date").
`A
`'
`
`the
`
`WHEREAS Llcensor 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
`Patents, as defined below;
`to obtain
`WHEREAS Licensee desires
`certain rights being offered for license by Liceneor
`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, Licensor and Licenses (individually the
`‘'Party’’
`and collectively the "Parties”) 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
`"controiled by" and “under common control with"), as
`used withyrespect
`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 Appiicationis) have been designed or for
`which they may be used.
`
`“Licensee Application(s)" shall be defined as
`those
`software-based
`products
`and
`services
`developed, and made commercially available for use,
`
`Confidential ‘
`
`“Licensee Appiication(s)” shall further
`by Licensee.
`include
`sottwarebaeed
`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 if.
`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
`sottwarebased 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 piaoeof business at 14011 Vcntura Bivd.,
`Stilts 501, Sherman Oaks, 91428 and Aitnet,
`inc., a
`Delaware corporation having its principal place of
`business at Mott Vsntura Blvd, Suite 5301, Sherman
`Oaks, 9i423, and any Affiliates thereof.
`
`shall mean (i) US. Patent Nos.
`“Patents"
`5,97'8,79i, 6,4i5,280, and 6,928,442, and (ii) any.
`and all
`improvements, modifications, continuatlons,
`continuations~i‘n~part, divisions,
`reissues and re-
`examinations thereof (including any patent claiming
`priority from or derived from US. Patent Application
`- No. 08/425,i60).
`
`’
`
`ii.
`
`LICENSE GRANT
`
`to the provisions of this License,
`Subject
`.
`Licensor hereby grants to Licensee a nonexclusive,
`irrevocable, non-assignable (subject to Section IX),
`non~trensferable (subiect to Section ix), royaity~tree,
`fully paid~up, subllcense under any and all claims of
`the Patents for the sole purpose of making, having
`made, using,
`importing,’ offering to seiiand selling
`Licensee Applications within the Field of Use. For
`purposes of the foregoing license grant the "selling of
`Licenses Applications" shall include (at) making such
`Licensee Applications available without charge,
`(b)
`licensing or otherwise disposing of any products or
`services, and (o) hosting such Licensee Applications.
`
`’)%,rsmiit)<aL,
`
`7, <3 i 6
`
`

`

`
`
`Any and all rights not explicitly 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 Llcensor, either by
`implication, estoppel, or otherwise and no license or
`immunity as to the Patents is granted by Licensor to
`any
`other
`party,
`by
`implication,
`estcppel,
`or
`otherwise.
`—
`
`.
`
`The License grant does not confer upon
`Licensee the right to grant or otherwise transfer (via
`subiicense, 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 Appiicationls) are properly
`licensed,
`rights to use the Licensee Appllcationtsi
`shall be concurrently conferred upon the Licensees
`users of the Licensee Appilcatlon(s). 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 tor any other purpose,
`unless otherwise provided for in Section IX.
`
`Licensee agrees to cause any products
`made by or for Licensee, or distributed by or on
`behalf Licensee, which are covered by one or more
`claims or 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 all 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 oi‘ this Agreement.
`-
`«
`
`
`
`
`
`all 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.
`
`LICENSOFI PERFORMANCE,
`IV".
`WARRANTIES, AND REPRESENTATIONS
`
`Licensor represents and warrants that Lioensor
`has sufficient
`rights
`in the Patents to grant
`the
`License as set forth herein, and Licensor’s grant of
`any license herein and the practice ct
`the rights
`granted herein does not,
`to the best of Licensors
`actual knowledge as or the Ettective Date, infringe ii)
`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.
`'
`
`E
`
`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
`ACTION
`IN
`THE AGGREGATE,
`INCLUDING
`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 pertcrm its obligations under this License.
`All corporate action on its part and on the part of its
`ctiicers, directors and stockholders necessary for the
`authorization of this License and the performance or
`
`in consideration of the licenses, releases, and
`covenants granted herein, Licensee has received
`good and valuable consideration (the “Fee"), receipt
`oi which is hereby acknowledged by Licensor. The
`licenses,
`releases, and covenants granted herein
`remain in full force and effect, throughout the term of
`
`Confidential
`
`‘
`
`Page 2
`
`

`

`
`
`this Agreement, without any other payments of
`money or other consideration or compensation.
`
`Vi. TERM AND TERl‘t’llNAT!ON
`
`
`
`This License shall commence upon Licensofs
`countersignature of 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 nontermlnabie 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 Licensees
`control, challenges the validity of one or more claims
`in the Patents.
`-
`‘
`
`Vii. RELEASE AND COVENANT NOT TO SUE
`
`General Release. Each Party, on behalf of itseit
`and each of
`its Affiliates (the “ eleasing Pa¢y”)_,
`hereby unconditionally and irrevocably releases,
`remises, acquits and forever discharges the other
`Party and each of
`its Atfiiiates, and its and their
`respective
`successors,
`assigns,
`employees,
`directors, officers, 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 irrevocably
`and forever expressly waives all
`rights that
`the
`Releasing Party and/or its Affiliates may have arising
`under California Civil Code Section 1542 and all
`similar rights under the laws of any other applicable
`jurisdictions with respect to the release granted by
`the Releasing Party under Section 3.1.1
`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 it known by him or her must have
`materially attested his or her settlement with the
`debtor.
`
`it has
`The Releasing Party acknowledges that
`been fully informed by its counsel concerning the
`effect and import of this Agreement under California
`Civil Code Section 1542 and similar laws of any other
`applicable
`jurisdictions and knowingly waives
`all
`rights under Section 1542 and similar laws of other
`applicable jurisdictions
`'
`
`Vlli. NOTICE
`
`All communications and notices required under
`this License shall be considered duly given it sent by
`courier requiring signedrecsipt upon delivery or if
`timely mailed by U.8. Postal Service,
`first class,
`postage prepaid and addressed as follows:
`
`(a)
`
`'1
`.
`if to Llcensor:
`Brilliant Digital Entartalnme
`12711 Ventura Boulevard, Suite 210
`Studio City, CA 91604
`
`(b)
`
`if to Licensee:
`Skype Technologies S.A.
`22.24 Boulevard Royal
`L-2449 Luxembourg
`Telephone No: +442071937201
`Facsimile No.: +352 26 1 O 21 34
`or such mailing address as either party may from time
`to time specify in writing.
`
`lX. 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 Licensor 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
`
`joint 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 remalnlrg provisions contained
`herein shall not in any way be affected or impaired
`thereby, unless a manifest ilt§.lStlC8 or inequity would
`result from the applicability or enforceability of such
`remaining provisions;
`and the parties agree to
`substitute for
`the invalid,
`iiegai or unenforceable
`provision
`a
`provision which most
`closely
`approximates the intent and economic effect of the
`invalid, illegal or unontorceab e 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,
`rsubilcense or otherwise dispose of, voiuntarliy 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 Llcensor, if such assignment
`is being made pursuant
`to the sale of
`all or
`substantially all of its interests in, and to, the source
`code and obtect code for Global
`index software
`
`Confidential
`
`’
`
`A
`
`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.
`.
`
`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 reiiet. Therefore, in addition to any
`money damages to which the non~breaching party is
`entitled, the nonebreaching party also is entitled to
`obtain lniunctive 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 vltiate any of
`the rights,
`titles or interests of the Llcensor in the
`Patents.
`T
`
`shall be governed by and
`This Agreement
`I construed in accordance with the laws of the State of
`Caiifornla, exclusive or‘ its provisions on contiicts of
`laws.
`in
`respect of any dispute rotating to this
`Agreement, such dispute shail be brought exclusively
`in a court of competent jurisdiction sitting in Los
`Angeles County, California.
`
`The losing partyrin any proceeding related to or
`arising out of this Agreement, including actions in ion,
`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 conterred hereby or by
`iaw, and the exercise of any one remedy shall not
`preclude the exercise of any other.
`
`No waiver of any provision of this License shall
`be eitectlve as against the waiving Party unless such
`waiver
`is in writing signed by the waiving Party.
`Waiver by a‘Party in respect of a specific matter snail
`
`A
`
`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 _
`heretoj
`
`The headings contained in the License are for
`the sole purpose of convenience oi reference.
`
`
`
`Confidential
`
`‘
`
`r
`
`Page 5
`
`

`

`
`
`
`
`
`
`IN WITNESS WHEREOF, the parties hereto have caused this instrument to be executed by their duly authodzed
`rr_3pre1sen1atfv6s.b
`
`UCENSORJ
`6
`‘
`Brmiant Dlgfiai(Enteq§i’;2rnen!. inc. and Ahnet, Inc.
`14/)"
`§_ \k
`»a*‘
`"’
`Kevén Bemegfi, Pmfdent and CEO
`
`83::
`
`w
`
`LICENSEE:
`Skype Technotogiss SA
`
`
`
`By:
`
`< SIGNATURE >
`
`< SIGNATURE >
`
`Date:
`
`,WW,,,_M__,._.
`
`Date:
`
`
`
`__m
`
`Skype, Inc,
`
`
`
`534
`
`< SIGNATURE >
`
`Date:
`
`
`
`Confidential
`
`[SIgna\urc Page to men! and Somme License Agmcmcnl}
`
`

`

`IN W1TNI-SSS WHEREOF. the parties hetero have caused this Instrument to be executed by thel: duty authorized
`representaiivas,
`
`_
`LICENSOR:
`Brflfianl Digital Emertahnen1,Im and NM. Inc.
`
`LJOENSEF;
`Sxype Technokxgies SA
`
`By:
`
`
`Kevin Bememer, President and CEO
`
`< 8lGNATURE>
`
`
`
`< SIGNATURE >
`
`Dam:
`
`
`Date:
`’‘‘‘’‘'°‘‘5 N’ 15 “Q?
`
`SW96» ‘D0.
`
`
`
`£5‘£2: E _Z?~ vi0 in
`
`Confidmuxl
`
`[Signature Page mo Pawn: and Software License Azmcmcm)
`
`
`
`
`
`EcJ1:4 {
`
`
`
`