Grant-Back License. Subject to the terms and conditions of this Agreement, IV hereby grants to Digimarc a fully paid-up, royalty-free, non-exclusive, irrevocable, nonsublicensable, nontransferable (except as set forth in subsection 2.2) right and license, without geographic limitation, under each of the Patents (a) to make, have made, use, lease, sell (or license, in the case of software), offer to sell, import or export any Digimarc Product (the “Digimarc Product License”), and (b) to conduct Digimarc’s own research and development activities, and to provide Digimarc Services to third parties (the “Digimarc Practice License”, and collectively with the Digimarc Product License, the “Digimarc License”); provided, however, that: (i) Digimarc shall [**] when the [**] first [**], unless: (a) such [**] has first received [**] such Digimarc Products and/or Digimarc Services, and that read on any combination of such Digimarc Products and/or Digimarc Services with products and services of such customer, provided that [**]; (b) such Digimarc Customer is a [**]; (c) such Digimarc Customer receives such Digimarc Products and/or Digimarc Services pursuant to [**]; provided, that [**] of any such [**] are [**] to, and do not expand the scope of, such [**]; or ** CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. (d) Digimarc and such Digimarc Customer have previously entered into a license agreement with respect to the Patents that is in effect as of the Effective Date, and the Digimarc Products and/or Digimarc Services received by such Digimarc Customer fall within such Digimarc Customer’s licensed field of use under such license agreement. A Digimarc Customer to which one or more of subsections 2.1(i)(a), (b), (c) or (d) applies shall be referred to as an “[**] Digimarc Customer”. (ii) Digimarc shall [**] for each Digimarc Customer that is not an [**] Digimarc Customer, [**]. For each Digimarc Customer that is not an [**] Digimarc Customer, Digimarc shall determine whether, [**], the [**] for such Digimarc Customer has [**]. In the event that as of [**], the [**] for such Digimarc Customer [**], Digimarc shall notify such Digimarc Customer in writing within ten (10) days after the end of [**] that such Digimarc Customer [**] Digimarc Products and/or Digimarc Services, as applicable, [**] ([**], the “[**]”), [**] such Digimarc Customer has [**] that is described in subsection 2.1(i)(a). Any such agreement with such Digimarc Customer after the [**], and the Digimarc License [**], [**] such Digimarc Customer has [**] that is described in subsection 2.1(i)(a). (iii) Any customer or recipient of a Digimarc Product that is sold or otherwise distributed by Digimarc in accordance with the other provisions of this subsection 2.1 shall have the right under the Digimarc License to use such Digimarc Product. For purposes of the preceding sentence, “use” shall include the limited right under the Patents as necessary for a Digimarc Customer to use, sell (or license, in the case of software), offer to sell, lease, make or have made products or services incorporating the Digimarc Product (“Use Right”), provided that the Use Right will apply only to the extent provided by operation of law or equity under the principles of implied license or patent exhaustion, and in particular will not apply to the extent that the incorporation of the Digimarc Product or combination of the Digimarc Product with any other third party technology, product or service results in an infringement of any claim of any Patent that would not have been infringed by the Digimarc Products or Digimarc Services absent such incorporation or combination. (iv) In no event will the Digimarc License cover (a) any incorporation or combination of Digimarc Products or Digimarc Services into or with any other products, processes or services, except in cases where [**], (b) any products, processes or services designed by the Digimarc Customer or any other third party (other than by a Government Customer or any other [**] Digimarc Customer, solely to the extent provided for in the IV license (under subsection 2.1(i)(a) or under the existing agreement (under subsection 2.1(i)(c) and (d)), or (c) any other products, processes or services of the Digimarc Customer or any other third party. ** CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. (v) Any agreement between Digimarc and a Digimarc Customer (other than an [**] Digimarc Customer) covering the sale or provision of Digimarc Products and/or Digimarc Services to such customer will include an express acknowledgement that Digimarc is not providing the Digimarc Customer with the right to incorporate or combine Digimarc Products and/or Digimarc Services with or into any other technologies, products or services if such incorporation or combination infringes any patent of a third party (relative to that customer) that would not have been infringed by the Digimarc Products and/or Digimarc Services absent such incorporation or combination. (vi) Digimarc will not sell, license or provide Digimarc Products or Digimarc Services to any Person in conjunction with knowingly and actively advising or assisting such Person with: (a) any use of such Digimarc Products or Digimarc Services, or (b) integration into or combination of such Digimarc Products or Digimarc Services with technology, processes or services of such Person, in a manner which infringes the Patents and which Digimarc is not permitted to authorize under this Agreement. (vii) Except as expressly set forth above in this subsection 2.1, all rights granted to IV in the Exclusive License Transaction are expressly reserved by IV. In particular (but without limitation), Digimarc shall not have any right to grant any third party any license under any of the Patents except to the extent provided by operation of law under the principles of implied license or patent exhaustion in connection with actions expressly permitted under the Digimarc License.
Appears in 1 contract
Sources: Grant Back License Agreement
Grant-Back License. Subject to the terms and conditions of this Agreement, IV hereby grants to Digimarc a fully paid-up, royalty-free, non-exclusive, irrevocable, nonsublicensable, nontransferable (except as set forth in subsection 2.2) right and license, without geographic limitation, under each of the Patents (a) to make, have made, use, lease, sell (or license, in the case of software), offer to sell, import or export any Digimarc Product (the “Digimarc Product License”), and (b) to conduct Digimarc’s own research and development activities, and to provide Digimarc Services to third parties (the “Digimarc Practice License”, and collectively with the Digimarc Product License, the “Digimarc License”); provided, however, that:
(i) Digimarc shall [**] when the [**] first [**], unless:
(a) such [**] has first received [**] such Digimarc Products and/or Digimarc Services, and that read on any combination of such Digimarc Products and/or Digimarc Services with products and services of such customer, provided that [**];
(b) such Digimarc Customer is a [**]Government Customer;
(c) such Digimarc Customer receives such Digimarc Products and/or Digimarc Services pursuant to [**]; provided, that [**] of any such [**] are [**] to, and do not expand the scope of, such [**]; or ** CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.or
(d) Digimarc and such Digimarc Customer have previously entered into a license agreement with respect to the Patents that is in effect as of the Effective Date, and the Digimarc Products and/or Digimarc Services received by such Digimarc Customer fall within such Digimarc Customer’s licensed field of use under such license agreement. A Digimarc Customer to which one or more of subsections 2.1(i)(a), (b), (c) or (d) applies shall be referred to as an “[**] Digimarc Customer”.
(ii) Digimarc shall [**] for each Digimarc Customer that is not an [**] Digimarc Customer, [**]on at least a calendar quarterly basis. For each Digimarc Customer that is not an [**] Digimarc Customer, Digimarc shall determine whether, as of the end of each calendar quarter [**], the [**] for such Digimarc Customer has [**]. In the event that as of [**]the end of any such calendar quarter, the [**] for such Digimarc Customer [**], Digimarc shall notify such Digimarc Customer in writing within ten (10) days after the end of [**] such calendar quarter that such Digimarc Customer [**] Digimarc Products and/or Digimarc Services, as applicable, at the end of the calendar quarter [**] ([**], the “[**]”), [**] such Digimarc Customer has [**] that is described in subsection 2.1(i)(a). Any such agreement with such Digimarc Customer after the [**], and the Digimarc License [**], [**] such Digimarc Customer has [**] that is described in subsection 2.1(i)(a).
(iii) Any customer or recipient of a Digimarc Product that is sold or otherwise distributed by Digimarc in accordance with the other provisions of this subsection 2.1 shall have the right under the Digimarc License to use such Digimarc Product. For purposes of the preceding sentence, “use” shall include the limited right under the Patents as necessary for a Digimarc Customer to use, sell (or license, in the case of software), offer to sell, lease, make or have made products or services incorporating the Digimarc Product (“Use Right”), provided that the Use Right will apply only to the extent provided by operation of law or equity under the principles of implied license or patent exhaustion, and in particular will not apply to the extent that the incorporation of the Digimarc Product or combination of the Digimarc Product with any other third party technology, product or service results in an infringement of any claim of any Patent that would not have been infringed by the Digimarc Products or Digimarc Services absent such incorporation or combination.
(iv) In no event will the Digimarc License cover (a) any incorporation or combination of Digimarc Products or Digimarc Services into or with any other products, processes or services, except in cases where [**], (b) any products, processes or services designed by the Digimarc Customer or any other third party (other than by a Government Customer or any other [**] Digimarc Customer, solely to the extent provided for in the IV license (under subsection 2.1(i)(a) or under the existing agreement (under subsection 2.1(i)(c) and (d)), or (c) any other products, processes or services of the Digimarc Customer or any other third party. ** CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
(v) Any agreement between Digimarc and a Digimarc Customer (other than an [**] Digimarc Customer) covering the sale or provision of Digimarc Products and/or Digimarc Services to such customer will include an express acknowledgement that Digimarc is not providing the Digimarc Customer with the right to incorporate or combine Digimarc Products and/or Digimarc Services with or into any other technologies, products or services if such incorporation or combination infringes any patent of a third party (relative to that customer) that would not have been infringed by the Digimarc Products and/or Digimarc Services absent such incorporation or combination.
(vi) Digimarc will not sell, license or provide Digimarc Products or Digimarc Services to any Person in conjunction with knowingly and actively advising or assisting such Person with:
(a) any use of such Digimarc Products or Digimarc Services, or
(b) integration into or combination of such Digimarc Products or Digimarc Services with technology, processes or services of such Person, in a manner which infringes the Patents and which Digimarc is not permitted to authorize under this Agreement.
(vii) Except as expressly set forth above in this subsection 2.1, all rights granted to IV in the Exclusive License Transaction are expressly reserved by IV. In particular (but without limitation), Digimarc shall not have any right to grant any third party any license under any of the Patents except to the extent provided by operation of law under the principles of implied license or patent exhaustion in connection with actions expressly permitted under the Digimarc License.Product
Appears in 1 contract
Grant-Back License. Subject to the terms and conditions of this Agreement, IV hereby grants to Digimarc a fully paid-up, royalty-free, non-exclusive, irrevocable, nonsublicensable, nontransferable (except as set forth in subsection 2.2) right and license, without geographic limitation, under each of the Patents (a) to make, have made, use, lease, sell (or license, in the case of software), offer to sell, import or export any Digimarc Product (the “Digimarc Product License”), and (b) to conduct Digimarc’s own research and development activities, and to provide Digimarc Services to third parties (the “Digimarc Practice License”, and collectively with the Digimarc Product License, the “Digimarc License”); License”); provided, however, that:
(i) Digimarc shall [**] when the [**] first [**], unless:
(a) such [**] has first received [**] such Digimarc Products and/or Digimarc Services, and that read on any combination of such Digimarc Products and/or Digimarc Services with products and services of such customer, provided that [**];;
(b) such Digimarc Customer is a [**];Government Customer;
(c) such Digimarc Customer receives such Digimarc Products and/or Digimarc Services pursuant to [**]; ; provided, that [**] of any such [**] are [**] to, and do not expand the scope of, such [**]; or ** CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.; or
(d) Digimarc and such Digimarc Customer have previously entered into a license agreement with respect to the Patents that is in effect as of the Effective Date, and the Digimarc Products and/or Digimarc Services received by such Digimarc Customer fall within such Digimarc Customer’s licensed field of use under such license agreement. A Digimarc Customer to which one or more of subsections 2.1(i)(a), (b), (c) or (d) applies shall be referred to as an “[**] Digimarc Customer”.
(ii) Digimarc shall [**] for each Digimarc Customer that is not an [**] Digimarc Customer, [**]on at least a calendar quarterly basis. For each Digimarc Customer that is not an [**] Digimarc Customer, Digimarc shall determine whether, as of the end of each calendar quarter [**], the [**] for such Digimarc Customer has [**]. In the event that as of [**]the end of any such calendar quarter, the [**] for such Digimarc Customer [**], Digimarc shall notify such Digimarc Customer in writing within ten (10) days after the end of [**] such calendar quarter that such Digimarc Customer [**] Digimarc Products and/or Digimarc Services, as applicable, at the end of the calendar quarter [**] ([**], the “[**]”), [**] such Digimarc Customer has [**] that is described in subsection 2.1(i)(a). Any such agreement with such Digimarc Customer after the [**], and the Digimarc License [**], [**] such Digimarc Customer has [**] that is described in subsection 2.1(i)(a).
(iii) Any customer or recipient of a Digimarc Product that is sold or otherwise distributed by Digimarc in accordance with the other provisions of this subsection 2.1 shall have the right under the Digimarc License to use such Digimarc Product. For purposes of the preceding sentence, “use” shall include the limited right under the Patents as necessary for a Digimarc Customer to use, sell (or license, in the case of software), offer to sell, lease, make or have made products or services incorporating the Digimarc Product (“Use Right”), provided that the Use Right will apply only to the extent provided by operation of law or equity under the principles of implied license or patent exhaustion, and in particular will not apply to the extent that the incorporation of the Digimarc Product or combination of the Digimarc Product with any other third party technology, product or service results in an infringement of any claim of any Patent that would not have been infringed by the Digimarc Products or Digimarc Services absent such incorporation or combination.
(iv) In no event will the Digimarc License cover (a) any incorporation or combination of Digimarc Products or Digimarc Services into or with any other products, processes or services, except in cases where [**], (b) any products, processes or services designed by the Digimarc Customer or any other third party (other than by a Government Customer or any other [**] Digimarc Customer, solely to the extent provided for in the IV license (under subsection 2.1(i)(a) or under the existing agreement (under subsection 2.1(i)(c) and (d)), or (c) any other products, processes or services of the Digimarc Customer or any other third party. ** CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
(v) Any agreement between Digimarc and a Digimarc Customer (other than an [**] Digimarc Customer) covering the sale or provision of Digimarc Products and/or Digimarc Services to such customer will include an express acknowledgement that Digimarc is not providing the Digimarc Customer with the right to incorporate or combine Digimarc Products and/or Digimarc Services with or into any other technologies, products or services if such incorporation or combination infringes any patent of a third party (relative to that customer) that would not have been infringed by the Digimarc Products and/or Digimarc Services absent such incorporation or combination.
(vi) Digimarc will not sell, license or provide Digimarc Products or Digimarc Services to any Person in conjunction with knowingly and actively advising or assisting such Person with:
(a) any use of such Digimarc Products or Digimarc Services, or
(b) integration into or combination of such Digimarc Products or Digimarc Services with technology, processes or services of such Person, in a manner which infringes the Patents and which Digimarc is not permitted to authorize under this Agreement.
(vii) Except as expressly set forth above in this subsection 2.1, all rights granted to IV in the Exclusive License Transaction are expressly reserved by IV. In particular (but without limitation), Digimarc shall not have any right to grant any third party any license under any of the Patents except to the extent provided by operation of law under the principles of implied license or patent exhaustion in connection with actions expressly permitted under the Digimarc License.
Appears in 1 contract