Intellectual Property License Agreement - Overture Services Inc. and Fast Search & Transfer ASA
DATED FEBRUARY 25, 2003
TABLE OF CONTENTS
1. DEFINITIONS...................................................... 1
1.1 Definitions from Asset Purchase Agreement.................. 1
1.2 Additional Definitions..................................... 1
2. LICENSE BACK OF CERTAIN TRANSFERRED IP........................... 4
2.1 Grant...................................................... 4
2.2 Authorized Contracts....................................... 5
2.3 Limited Exclusivity........................................ 5
2.4 Assignment of Fast Patent License.......................... 5
2.5 Source Code................................................ 6
2.6 Named Portals.............................................. 6
3. DERIVATIVES AND RESERVATION OF RIGHTS............................ 6
3.1 Rights to Derivatives...................................... 6
3.2 Reservation of Rights...................................... 6
4. NON-EXCLUSIVE PATENT LICENSES.................................... 7
4.1 License From Fast.......................................... 7
5. TERM............................................................. 7
5.1 Term....................................................... 7
6. REPORTS AND DATA................................................. 7
6.1 Provision of Reports....................................... 7
6.2 Use of and Responsibility for Report Data.................. 7
7. WARRANTY DISCLAIMERS............................................. 8
7.1 By Company................................................. 8
7.2 By Fast.................................................... 8
8. MISCELLANEOUS PROVISIONS......................................... 8
8.1 Relationship to Asset Purchase Agreement................... 8
8.2 Notices.................................................... 8
8.3 Entire Agreement........................................... 10
8.4 No Third Party Beneficiaries............................... 10
TABLE OF CONTENTS
8.5 Headings and Interpretation........................................10
8.8 Governing Law......................................................10
8.9 Consent to Jurisdiction............................................11
8.10 Assignment and Transfers...........................................11
8.11 Specific Performance...............................................11
8.12 Exhibits and Schedules.............................................11
8.13 Other Remedies.....................................................11
INTELLECTUAL PROPERTY LICENSE AGREEMENT
This INTELLECTUAL PROPERTY LICENSE AGREEMENT (this "Agreement") is made
and entered into as of February 25, 2003, by and between Overture Services,
Inc., a Delaware corporation ("Company"), and Fast Search & Transfer ASA, an
organization organized under the laws of Norway and the Seller Subsidiaries (as
defined below) (together, "Fast"). Company and Fast may be referred to
individually as a "Party" or collectively as "Parties".
A. Concurrently with the execution and delivery of this Agreement, the
Parties are entering into an Asset Purchase Agreement (the "Asset Purchase
Agreement"), under which Fast will transfer to Company, and Company will
acquire, the Transferred Intellectual Property Rights and Transferred
Technology, among other things.
B. In connection with the Asset Purchase Agreement and the transfers
and acquisitions under the Asset Purchase Agreement, effective as of the Closing
Date, Company wishes to grant Fast a license to Transferred Technology under the
Transferred Intellectual Property Rights, and Fast wishes to grant to Company a
non-exclusive license under its retained Patent rights.
NOW, THEREFORE, in consideration of the premises and of the mutual
covenants set forth herein, the sufficiency and receipt of which the Parties
hereby acknowledge, the Parties hereto agree as follows:
1.1 Definitions from Asset Purchase Agreement.
For the purpose of this Agreement the following capitalized terms used in
this Agreement have the meanings set forth in the Asset Purchase Agreement:
Business, Closing Date, Patents, Person, Software, Seller Subsidiaries,
Technology, Transferred IP, Transferred Patents, Transferred Intellectual
Property Rights, and Transferred Technology.
1.2 Additional Definitions.
(a) "Assignment" or "Assignable" means, when used in connection with
the assignment or assignability of this Agreement or any license hereunder, the
direct or indirect assignment or assumption of this Agreement or a license
hereunder, as the case may be, including as a result of, or in connection with a
Change of Control.
(b) "Authorized Contract" means the Development and License
Agreement between Elsevier Science Inc. and Fast, dated November 7, 2000.
(c) "Company Patent License" means the patent license granted by
Fast to Company pursuant to Section 4.1.
(d) "Change of Control" with respect to an entity means the
occurrence of one or more of the following: (i) the acquisition by any Person
(or related group of Persons), whether by tender or exchange offer made directly
to the stockholders, open market purchases or any other transaction or series of
transactions, of 50% or more of the capital stock entitled to elect the members
of the Board of Directors or other analogous governing body of such entity; (ii)
a merger or consolidation in which such entity is not the surviving entity,
except for a transaction in which the securities of such entity immediately
prior to consummation of such merger or consolidation are converted by means of
such merger or consolidation into securities representing more than fifty
percent (50%) of the total combined voting power of the surviving entity; or
(iii) any reverse merger in which such entity is the surviving entity but in
which the securities of such entity immediately prior to consummation of such
reverse merger represent less than fifty percent (50%) of the total combined
voting power of such entity's capital stock outstanding immediately after
consummation of such merger; or (iv) any sale of all or substantially all of the
assets of the entity to any Person (or related group of Persons).
(e) "Derivatives" of Technology means derivative works (as defined
in the United States Copyright Act) and other modifications, improvements,
fixes, enhancements, and upgrades with respect to such Technology.
(f) "Enterprise" means a business, academic or government entity
such as a corporation, university or local government.
(g) "Enterprise Search Field" means creating, using, selling or
distributing to Enterprises Technology or products specifically designed and
adapted to index and search data that either (a) reside behind an Enterprise's
firewalls and are not publicly available via a published web site, or (b) are
proprietary to the Enterprise and not publicly available, in each case only
where the results of indexing or search are provided only to the Enterprise for
its use. The Enterprise Search Field excludes, without limitation, the Web
(h) "Excluded Entity" means Autonomy Corporation plc., Verity, Inc.,
Oracle Corporation, or IBM Corporation.
(i) "Existing Customer" means a customer of Fast under an Existing
(j) "Existing Contract" means a written contract between Fast and a
third party customer entered into prior to the date hereof and in effect as of
the Closing Date and unmodified (with respect to rights related to the Remaining
Modules) since the date hereof which contract includes a specific license to a
(k) "Fast Hosted Web Search Service" means a Web Search Service
hosted and operated by Fast or by a third party, solely and exclusively for
Fast's economic benefit.
(l) "Fast Patents" means patents or applications for patents that,
at any time prior to the first anniversary of the Closing Date, are either (i)
owned by Fast or its Subsidiaries, or (ii) with respect to which Fast or its
Subsidiaries has right to grant to Company a license of the scope granted
Section 4.1 without payment of material consideration to a third party (except
for payments among Fast and its Subsidiaries, and payments to employees for
inventions made by them while employed by Fast or its Subsidiaries), and that
are related to the Business or Web Search Field. "Fast Patents" includes, but is
not limited to (i) any Patent issuing from a patent application filed, or which
would have been entitled to a filing or invention date, prior to the first
anniversary of the Closing Date and (ii) the Patents listed in Schedule B
hereto; provided, however, the Fast Patents do not include any Patents of Fast
that are Transferred Patents.
(m) "Fast Patent License" means the Patent License granted to Fast
pursuant to Section 2.1(b) and as such license may be modified in accordance
with Section 2.4 in the event of a Change of Control of Fast.
(n) "Joint Development Agreement" means the joint development
agreement to be entered into between the Parties hereto, on or prior to the
Closing Date related to the joint development of "Fast Web Search 4.0" and which
references this Agreement.
(o) "Licensed Modules" means both the Overlap Modules and the
(p) "Overlap Modules" means those modules of Software included in
Transferred Technology that are included in or used in the Fast's products
referred to as "FAST Web Search 3.4" and "Fast Data Search 3.1. or 3.2" and that
are listed in Schedule A-2 hereto and Derivatives of the foregoing created by
Fast in accordance the Joint Development Agreement.
(q) "Licensed Products" means a Fast product or service that is
outside of the field of, and not specifically designed or licensed for use in,
the Web Search Field.
(r) "Remaining Modules" means those modules of Software included in
Transferred Technology that are included in or used in the Fast's products
referred to as "FAST Web Search 3.4" and that are listed in Schedule A-1 hereto
and Derivatives of the foregoing created by Fast in accordance with the Joint
(s) "Restricted Portals" means those entities listed on Schedule C.
(t) "Subsidiary" means an entity controlled by one of the Parties,
where "control" means ownership of 50% or more of the stock entitled to vote for
the board of directors or other governing body of that entity.
(u) "Web Search Service" a hosted search service on the world wide
web specifically designed and adapted to either (A) index, locate or search data
on computer servers not defined in advance of such search and where neither the
data nor the servers are owned by or for the benefit of Person requesting or
executing the search including a service that uses Technology to
"crawl" (or locate and index) data stored on computer servers connected to the
world wide web or (B) return search results based on predefined criteria linked
to information on the world wide web where neither the data nor the servers are
owned by, or operated exclusively for the benefit of, the Person requesting or
executing the search, and such search criteria are based, at least in part, on
input from a Person having an ownership or other interest in such linked
information on the world wide web, including without limitation, a "pay for
performance" or "paid-inclusion" search service.
(v) "Web Search Field" means creating, using, selling or
distributing Technology or products specifically designed and adapted to either
(A) index, locate or search data on computer servers not defined in advance of
such search and where neither the data nor the servers are owned by Person
requesting or executing the search or (B) return search results based on
predefined criteria linked to information on the world wide web where neither
the data nor the servers are owned by, or operated exclusively for the benefit
of, the Person requesting or executing the search, and such search criteria are
based, at least in part, on input from a Person having an ownership or other
interest in such linked information on the world wide web, including without
limitation, a "pay for performance" or "paid-inclusion" search service. Except
with respect to the use of the term "Web Search Field" in Section 2.1(b)(ii),
the term "Web Search Field" shall include using Technology to "crawl" (or locate
and index) data stored on computer servers connected to the world wide web. The
Web Search Field includes, without limitation, any Web Search Service or
software or hardware products designed, or adapted for, or licensed for use in,
providing a Web Search Service.
2. LICENSE BACK OF CERTAIN TRANSFERRED IP
(a) Effective as of the Closing Date, and subject to the terms
hereof, Company hereby grants Fast, only under such Intellectual Property Rights
(other than Trademarks, Uniform Resource Locators and domain names and Patents)
as Company may have acquired under the Asset Purchase Agreement:
(i) A fully-paid, royalty-free, irrevocable, perpetual, non
transferable and personal (except as provided in Section 8.10),
non-sublicensable, non-exclusive license to internally copy, use and create
Derivatives of the Overlap Modules for the sole purpose of creating (x) Licensed
Products, and (y) after the first anniversary of the Closing Date, a Fast Hosted
Web Search Service.
(ii) After the first anniversary of the Closing Date, a
fully-paid, royalty-free, irrevocable, perpetual, non-transferable and personal
(except as provided in Section 8.10), non-sublicensable, non-exclusive license
to use and operate a Fast Hosted Web Search Service.
(iii) A fully-paid, royalty-free, irrevocable, perpetual, non
transferable and personal (except as provided in Section 8.10), license to copy
and distribute the Overlap Modules and any Derivatives of the Overlap Modules
created in accordance with 2.1(a)(i), in either object
code or source code form, solely as an integral part of a Licensed Product;
provided, however, under no circumstances may Fast, or shall Fast have a right
or license to, distribute or license, directly or indirectly, the Overlap
Modules (or any part thereof), in either source or object code form, to any
third party as a product or service that is, is part of any product or service
that is, is intended for, or is specifically designed for use, in the Web Search
Field; provided however that the unintentional use by Fast of an insignificant
part of an Overlap Module shall not be prohibited by the foregoing.
(iv) A fully-paid, royalty-free, irrevocable, perpetual,
non-transferable and personal (except as provided in Section 8.10),
non-sublicensable, non-exclusive license to (x) copy the Remaining Modules and
to distribute such Remaining Modules in object code form only to an Existing
Customer to the sole extent necessary to fulfill Fast's obligations to such
Existing Customer under an Existing Contract, and (y) internally create
improvements and fixes to the Remaining Modules for the sole purpose of
distributing improvements or fixes, in object code form only, to an Existing
Customer that has licensed the Remaining Modules to which such improvements or
fixes are made pursuant to an Existing Contract; provided however, except as
provided in Section 2.2, under no circumstances shall Fast have the right to
license any third party, including any Existing Customer, to use or otherwise
have any rights to or with respect to the use of, the Remaining Modules in the
Web Search Field. Under no circumstance shall Fast disclose, license or
distribute the source code for the Remaining Modules to any third party,
including any Existing Customer.
(b) Effective as of the Closing Date, and subject to the terms
hereof, Company hereby grants Fast, only under rights in the Transferred Patents
as Company may have acquired under the Asset Purchase Agreement, a fully-paid,
royalty-free, irrevocable, perpetual, non-sublicensable, non-transferable and
personal (except as provided in Section 2.4) non-exclusive license:
(i) to make, have made (to the extent permitted under Section
2.5(b)) use, import and sell the Licensed Products and operate a Fast Hosted Web
Search Service to the extent permitted pursuant to the licenses set forth in
Section 2.1(a); and
(ii) to make, have made (to the extent permitted under Section
2.5(b)), use, import and sell Licensed Products.
2.2 Authorized Contracts.
Notwithstanding Section 2.3, Fast shall be permitted to exercise the
licenses granted in Section 2.1 for the additional purpose of fulfilling any
Authorized Contract entered into prior to the date hereof for the term of such
contract then in effect.
2.3 Limited Exclusivity.
For one year following the Closing Date, the license granted under Section
2.1(a)(iii) above is exclusive (including as to Company) in the Enterprise
Search Field; provided, however, that if Company acquires an entity (other than
an Excluded Entity) or the assets of an entity (other than an
Excluded Entity) engaged in the Enterprise Search Field then license shall, upon
such, acquisition no longer be exclusive as to Company or such acquired entity.
2.4 Assignment of Fast Patent License.
The Fast Patent License shall not be Assignable by Fast except that in the
event of a Change of Control of Fast and provided Fast provides Company of
written notice within 30 days of entering into a written agreement ("Agreement
Date") for such Change of Control specifying the entity acquiring Fast in such
Change of Control (the "Acquiring Entity"), the Fast Patent License shall
survive only with respect to those products and services of Fast in existence as
of the Agreement Date and updates and new versions of such product and services
that are substantially based on the software constituting the products or
services existing as of the Agreement Date but only if such products or services
do not include any software of the Acquiring Entity. In no event shall the Fast
Patent License extend to any products or services of the Acquiring Entity
existing prior to the date of such acquisition.
2.5 Source Code.
(a) Notwithstanding the limitation on the licensing or distribution
of source code set forth in Section 2.1(a)(iv), where required by a customer,
Fast shall be permitted to place into escrow a copy of the source code for the
Licensed Modules under an agreement that provides for the release of such source
code to a Fast licensee in the event of Fast's bankruptcy and that is otherwise
on the same terms that govern other material Fast software.
(b) Notwithstanding the limitations set forth in Section 2.1(a)(i),
Fast may provide a Licensed Product that includes Overlap Modules in source code
form to a third party for the sole purpose of enabling such third party to
develop such software provided that such developed software is not specifically
designed for use in, or used in, or licensed for use in, the Web Search Field.
2.6 Named Portals.
Prior to the first anniversary of the Closing Date, Fast shall not offer
to sell, or otherwise provide any of its products or services to any of the
Restricted Portals except with the written consent of Company which consent is
not to be unreasonably withheld.
3. DERIVATIVES AND RESERVATION OF RIGHTS
3.1 Rights to Derivatives.
As between the Parties, Fast shall own all Derivatives created by or for
Fast (or any of its affiliates) in accordance with this Agreement ("Fast
Derivatives"); provided, however, Fast shall only have such rights to the works
(including the Transferred Technology) from which such Derivatives are derived
as are expressly granted herein and may only exercise its rights in the Fast
Derivatives in a manner consistent with the ownership of such underlying works
by Company and the licenses granted in Section 2.1 hereunder. Company shall own
all Transferred Technology and Licensed Modules, as well as any Derivatives
created by or for Company (or any of its affiliates) ("Company Derivatives").
3.2 Reservation of Rights.
Except as expressly provided herein, no license or immunity is granted
under this Agreement by either Party, either directly or by implication,
estoppel or otherwise to any third parties acquiring items from either Party for
the combination of such acquired items with other items (including items
acquired from either Party hereto) or for the use of such combination.
4. NON-EXCLUSIVE PATENT LICENSES
4.1 License From Fast.
(a) Fast hereby grants, and shall cause its Subsidiaries to grant,
to Company and its current and future affiliates a non-exclusive, fully-paid,
royalty-free, in all territories in which such Fast Patents exist,
non-transferable (except as provided in Section 8.10), irrevocable, license
under the Fast Patents, to make, have made, use, sell, offer for sale, import
and otherwise exploit products or services, including products or services that
include or rely on the Transferred Technology, in all fields other than the
Enterprise Search Field, and to use Transferred Technology (or Company
Derivatives of such Technology) in all fields other than the Enterprise Search
Field. The foregoing license shall not be sublicenseable by Company to third
parties except in connection with the transfer or licensing of the Transferred
Technology (or Company Derivatives of such Transferred Technology) to a third
party to whom such sublicense is granted.
(b) Fast hereby grants, and shall cause its Subsidiaries to grant,
to Company and its current and future affiliates a non-exclusive, fully-paid,
royalty-free, in all territories in which such Fast Patents exist, irrevocable,
non-sublicensable, license under the Fast Patents, to make, have made, use,
sell, offer for sale, import and otherwise exploit the Transferred Technology
including products or services that include or rely on or use Transferred
Technology (or Company Derivatives of such Transferred Technology). The
foregoing license shall not be transferable except as provided in Section 8.10,
or in connection with the transfer of the Transferred Technology or Company
Derivatives of such Transferred Technology.
This Agreement is effective as of the Closing Date and continues in
perpetuity thereafter. The term of all Patent licenses granted hereunder shall
continue until the last to expire of the Patents so licensed, all other licenses
granted under this Agreement are perpetual.
6. REPORTS AND DATA
6.1 Provision of Reports.
For a period of one year from the Closing Date, to the extent Company has
a right to do so, and subject to applicable legal requirements and obligations
to third parties, Company shall provide to Fast, on a monthly basis, reports
that include the following information: (a) query logs from "alltheweb.com;" and
(b) information about "link cardinality" (i.e., a web graph, or how many pages
link to a particular page and to how many pages that particular page links). Any
or all of the data included in the foregoing reports are "Report Data". In
exchange for the Report Data, Fast shall pay Company an amount equal to
Company's cost for providing the reports that include Report Data, within thirty
(30) days after the date of Company's invoice. This provision and the rights
granted to Fast hereunder shall terminate upon a Change of Control of Fast.
6.2 Use of and Responsibility for Report Data.
The Report Data provided to Fast are Company's Confidential Information,
and are subject to the provisions of the Asset Purchase Agreement governing
Confidential Information. Fast may use Report Data only for its own internal
purposes, and may not provide or disclose such Report Data to any third party.
Fast is solely responsible for its use of the Report Data information, and will
indemnify, defend and hold Company harmless for any liabilities, damages,
losses, and costs arising out of or related to Fast's use or disclosure of
Report Data (or any portion thereof). ALL REPORT DATA ARE PROVIDED AS IS AND
WITHOUT ANY WARRANTY OF ANY KIND WHATSOEVER. COMPANY HEREBY DISCLAIMS ANY AND
ALL IMPLIED WARRANTIES WITH RESPECT TO THE REPORT DATA.
7. WARRANTY DISCLAIMERS
7.1 By Company.
COMPANY MAKES NO WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT
TO THE TRANSFERRED TECHNOLOGY, TRANSFERRED PATENTS, LICENSED MODULES OR
OTHERWISE. COMPANY HEREBY DISCLAIMS ALL OTHER WARRANTIES, EXPRESS, IMPLIED,
STATUTORY OR OTHERWISE, INCLUDING WARRANTIES OF NONINFRINGEMENT,
MERCHANTABILITY, OR FITNESS FOR A PARTICULAR PURPOSE. EXCEPT AS MAY BE PROVIDED
IN THE ASSET PURCHASE AGREEMENT, NEITHER PARTY WILL BE LIABLE FOR INDIRECT,
SPECIAL, INCIDENTAL, PUNITIVE OR CONSEQUENTIAL DAMAGES, ARISING IN CONNECTION
WITH THIS AGREEMENT.
7.2 By Fast.
FAST MAKES NO WARRANTIES EXPRESS, IMPLIED OR STATUTORY UNDER THIS
AGREEMENT WITH RESPECT TO THE LICENSES GRANTED BY IT HEREUNDER, AND FAST HEREBY
DISCLAIMS ALL SUCH WARRANTIES, EXPRESS, IMPLIED OR
STATUTORY INCLUDING WARRANTIES OF NONINFRINGEMENT, MERCHANTABILITY, OR FITNESS
FOR A PARTICULAR PURPOSE; PROVIDED, HOWEVER, THAT THE FOREGOING DISCLAIMER SHALL
NOT APPLY TO ANY WARRANTIES, EXPRESS, IMPLIED, STATUTORY OR OTHERWISE SET FORTH
IN, OR UNDER, THE ASSET PURCHASE AGREEMENT.
8. MISCELLANEOUS PROVISIONS
8.1 Relationship to Asset Purchase Agreement.
This Agreement will be interpreted in connection with the Asset Purchase
Agreement, and is part of the same series of transactions as that Asset Purchase
Agreement. If there is a conflict between the terms of this Agreement and the
terms of the Asset Purchase Agreement, then this Agreement controls but only
with respect to that conflicting item.
Notices will be deemed given if delivered personally or by pre-paid
overnight or same-day commercial messenger or courier service, or mailed by
registered or certified mail (return receipt requested) or sent via facsimile
(with acknowledgment of complete transmission) to the Parties at the following
addresses (or at such other address for a Party as shall be specified by like
(a) If to Company, to:
Overture Services, Inc.
74 North Pasadena Avenue, 3rd Floor
Pasadena, CA 91103
Attn: President and Chief Executive Officer
Fax: (626) 685 5601
with a copy to (which shall not constitute notice):
Wilson Sonsini Goodrich & Rosati
650 Page Mill Road
Palo Alto, CA 94304
Attn: Selwyn B. Goldberg, Esq.
Fax: (650) 493-6811
(b) if to Fast, to:
Fast Search & Transfer ASA
93 Worcester Street
Wellesley, MA 02481
Attn: Howard Novick, Esq.
Fax: (781) 304-2410
with a copy to (which shall not constitute notice):
Lucash, Gesmer & Updegrove, LLP
40 Broad Street
Boston, MA 02109
Attn: William Contente, Esq.
Fax: (617) 350-6878
All such notices, requests and other communications will (a) if delivered
personally to the address as provided in this Section 8.2, be deemed given upon
delivery, (b) if delivered by facsimile transmission to the facsimile number as
provided for in this Section, be deemed given upon facsimile confirmation, and
(c) if delivered by messenger or courier to the address as provided in this
Section, be deemed given on the earlier of the first business day following the
date sent by such messenger or courier upon receipt (in each case regardless of
whether such notice, request or other communication is received by any other
Person to whom a copy of such notice is to be delivered pursuant to this Section
8.2). A Party from time to time may change its address, facsimile number or
other information for the purpose of notices to that Party by giving notice
specifying such change to the other Parties hereto.
8.3 Entire Agreement.
This Agreement, the Exhibits and Schedules hereto, the Ancillary
Agreements (as defined in the Asset Purchase Agreement) and the documents and
instruments and other agreements among the Parties constitutes the entire
agreement among the Parties with respect to the subject matter hereof and
thereof and supersede all prior agreements and understandings, both written and
oral, among the Parties with respect to the subject matter hereof and thereof.
8.4 No Third Party Beneficiaries.
This Agreement is solely for the benefit of the Parties hereunder and
their respective successors and permitted assigns. This Agreement does not
confer upon or give to any other third party any remedy, claim, right to
reimbursement, cause of action or other right, unless expressly provided for in
8.5 Headings and Interpretation.
The headings and table of contents used in this Agreement have been
inserted for convenience of reference only and do not define, limit, describe,
explain, modify, amplify or add to the interpretation, construction or meaning
of any provision of, or scope or intent of, this Agreement nor in any way effect
All rights and licenses granted to Party (in such capacity and for the
purposes of this Section 8.6 only a "Licensee") pursuant to this Agreement are,
and shall otherwise be deemed to be, for purposes of Section 365(n) of the
United States Bankruptcy Code, 11 U.S.C. 101, et seq., licenses to rights of
"intellectual property" as defined thereunder. Notwithstanding any provision
contained herein to the contrary, if the Party granting such license (in such
capacity and for the purposes of this Section only a "Licensor") is under any
proceeding under the United States Bankruptcy Code, and the trustee in
bankruptcy of Licensor, or Licensor, as a debtor in possession, rightfully
elects to reject this Agreement, Licensee may, pursuant to 11 U.S.C. Section
365(n)(1) and (2), retain any and all of the rights grated to it hereunder, to
the maximum extent permitted by law, otherwise subject to the terms of this
Agreement. Any purported assumption of this Agreement or of any license granted
hereunder by the trustee in bankruptcy of Licensee, or Licensee, as a debtor in
possession shall be considered a prohibited Assignment of this Agreement or of
any license to Licensee, as the case may be. If Fast is in bankruptcy, or the
equivalent status, under the laws of Norway, and the United States Bankruptcy
Code does not apply to Fast, the Parties wish the same results and consequences
that are set forth herein with respect to the United States Bankruptcy Code to
apply to the maximum extent permitted under the laws of Norway.
In the event that any provision of this Agreement or the application
thereof, becomes or is declared by a court of competent jurisdiction to be
illegal, void or unenforceable, the remainder of this Agreement will continue in
full force and effect and the application of such provision to other Persons or
circumstances will be interpreted so as reasonably to effect the intent of the
Parties. The Parties further agree to replace such void or unenforceable
provision of this Agreement with a valid and enforceable provision that will
achieve, to the extent possible, the economic, business and other purposes of
such void or unenforceable provision.
8.8 Governing Law.
This Agreement shall be governed by and construed in accordance with the
laws of the State of California without regard to the conflicts of laws
8.9 Consent to Jurisdiction.
Each of the Parties hereto hereby irrevocably and unconditionally submits,
for itself and its property, to the nonexclusive jurisdiction of any California
state court, or federal court of the United States of America, sitting in Los
Angeles County, California, and any appellate court from any thereof, in any
action or proceeding arising out of or relating to this Agreement or the
agreements delivered in connection herewith or the transactions contemplated
hereby or thereby or for recognition or enforcement of any judgment relating
thereto, and each of the Parties hereby irrevocably and unconditionally (i)
agrees that any claim in respect of any such action or proceeding may be heard
and determined in such California state court or, to the extent permitted by
law, in such Federal court, (ii) waives, to the fullest extent it may legally
and effectively do so, any objection which it may now or hereafter have to the
laying of venue of any such action or proceeding in any such California state or
federal court, and (iii) waives, to the fullest extent permitted by law,
the defense of an inconvenient forum to the maintenance of such action or
proceeding in any such California state or federal court. Each of the Parties
hereto agrees that a final judgment in any such action or proceeding shall be
conclusive and may be enforced in other jurisdictions by suit on the judgment or
in any other manner provided by law. Each Party to this Agreement irrevocably
consents to service of process in the manner provided for notices herein.
Nothing in this Agreement will affect the right of any Party to this Agreement
to serve process in any other manner permitted by law. Fast hereby appoints
Howard Novick, as corporate counsel (or his successor), Fast Search & Transfer,
Inc., 93 Worchester Street, Wellesley, MA 02481, tel: (781) 304 2400, fax: (781)
304 2410 as its agent for service of process in connection with any dispute or
action arising hereunder.
8.10 Assignment and Transfers.
Except as otherwise expressly provided herein, neither Party may assign or
delegate either this Agreement or any of its rights, interests, or obligations
hereunder without the prior written approval of the other Party, except in
connection with a Change of Control of a Party. Notwithstanding the foregoing,
in the case of Fast an Assignment of the Fast Patent License is subject to the
limitations set forth in Section 2.4. Subject to the foregoing, this Agreement
shall be binding upon and shall inure to the benefit of the Parties hereto and
their respective successors and permitted assigns.
8.11 Specific Performance.
The Parties agree that irreparable damage would occur in the event that
any of the provisions of this Agreement were not performed in accordance with
their specific terms or were otherwise breached. It is accordingly agreed that
the Parties shall be entitled to an injunction or injunctions to prevent
breaches of this Agreement and to enforce specifically the terms and provisions
hereof in any court of the United States or any state having jurisdiction, this
being in addition to any other remedy to which they are entitled at law or in
8.12 Exhibits and Schedules.
The Exhibits and Schedules to this Agreement, including the Disclosure
Schedule, form an integral part of this Agreement and are hereby incorporated by
reference into this Agreement wherever reference is made to them to the same
extent as if they were set out in full.
8.13 Other Remedies.
Except as otherwise provided herein, any and all remedies herein expressly
conferred upon a Party will be deemed cumulative with and not exclusive of any
other remedy conferred hereby, or by law or equity upon such Party, and the
exercise by a Party of any one remedy will not preclude the exercise of any
This Agreement may be executed in one or more counterparts, all of which
shall be considered one and the same agreement and shall become effective when
one or more counterparts have been signed by each of the Parties and delivered
to the other Party, it being understood that all Parties need not sign the same
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IN WITNESS WHEREOF, each of the Parties have executed this Agreement, in
duplicate originals, by their respective officers hereunto duly authorized, the
day and year first above written.
FAST SEARCH & TRANSFER ASA OVERTURE SERVICES, INC.
By: /s/ John M. Lervik______________ By: /s/ Ted Meisel____________________
Print Name: John M. Lervik_________ Print Name: Ted Meisel_______________
Its: CEO____________________________ Its: CEO______________________________
Date: February 25, 2003___________ Date: February 25, 2003______________