Digital Envoy Inc., v. Google Inc.,

Filing 74

Case 5:04-cv-01497-RS

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THIS PRODUCT AND ELECTRONIC DATABASE EVALUATION AND LICENSE AGREEMENT (this "Agreement') is made and entered into as of the-If'-day of ovember, 2040, by and between Google, inc . ("Licensee') and Digital Envoy Inc_ ("Licensorl:
WITNESSETH :

WHEREAS, Li censee is in the business of producing and maintaining information search technology (the *Business') ; and WHEREAS, Licensee desires to secure from Licensor the right to use UoenWs Rersonum produ ct (the 'Product'} and certain geographMP address databases (the "Database Libraries") for purposes of utilizing the Product and the Database Libraries in the Business (the "Service");

NOW, THEREFORE, the parties hereto, intending to be legally bound, hereby agree as follows: ection 7 DATABASE LIBRARIES

Licensor agrees to establish and maintain the Database Libraries in a form suitable for Licensee's use pursuant to this Agreement . It is agreed that the form suitable for Licensee's use shall be electronic with data stored in a server database licensed in conjunction with the product
Section 2

LICENSOR SUPPORT AND LICENSEE RESPON SIBILITIE S

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Licensor agrees to provide electronic updates of the Database Libraries to Licensee, no less frequent than monthly . The updates shad have the most recent eograph''mAP address data compiled by Licensor. it is understood that Licensor hall have no responsibility to maintain or support Licensee's content serving network The Database Libraries shall be treated as confidential and proprietary information of Licensor, and except as otherwise noted herein the receiving party shag not disclose such information, directly or indirectly . to any third party, without the consent of the disclosing party. Licensor shall provide Licensee with on-going 247 technical support . Licensee shall be responsible for supplying a server that meets the following specifications: a. Pentium 111 Xeon 550 MHz Linux server, dual processors preferred with a minimum of 512 Mb of RAM ; b. High speed Ethernet card or other network interface card that interfaces with Licensee's network; c. Minimum of 10 gigabyte hard drive on a SCSI bus, RAiuing optional ; d. Providing an intemet mutable IP address for the server. icensor shall be responsible for providing Licensee with information to configure its server to interface with Licensor's central servers and shall provide Licensee with a C, Java or Ped API that encompasses functions that allow Licensee to interface to Licensee's database. The parties agree to establish commercially reasonabl e security measures wr'th respect to such interface . Lic6nsor shall not be responsible for supporting Licensee's server(s) or other hardware .

Section 3 GRANT OF RIGHT S

Licensor hereby grants Licensee the limited, worldwide right to use in its Business (and not distribute to any third party in whole or in part) the Product and the Database Libraries . Such right shall be nonexclusive . Such rights shall be strictly limited to .the right to :
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1. Input, download, and store some or all of the Database Libraries in files and memory, and compile some or all of the Database libraries at the Site . Licensee may also use the Database Libraries to develop indices . services, or applications that are provided to third parties :(e .g .. developing a country,-specific index of web pages) . In no event, however, are the Database Libraries to be sold, licensed, distributed, shared or otherwise given (in any form) to any other party or used outside of the site set forth herein . 2. Access and use the Database Libraries in the Business only at the Site . The "Site" shall be defined as GoogWs offices and data centers . Section 4 RESERVED RIGHT S Licensor reserves the right to use the Database libraries for its own business purposes and reserves the right to distribute the Database Libraries to others in the course of its business as A sees fit . Nothing in this license shall in any way restrict Licensors or its customers` use of its Database Libraries .

Section 5

PAYMENT AND EVALUATION PERIO D 5.1 Licensee shall pay Licensor a monthly fee of three thousand dollars ($3,000) per month during the term of this Agreement for access to Licensor's geographic tailoring Product and the Database Libraries . Notwithstanding the foregoing, Licensor and licensee acknowledge that it may take a brief period of time for Licensee to evaluat e er the Product and the Database Libraries will be useful in Licensee's business . Hence, subject to the terms and conditions of this License, Licensee shall be permitted to use the Database Libraries and the Product for a period of fourteen (14) days, withou t
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charge and may temdnate this agreement during such fourteen (14) day period in the event that Licensee, in its reasonable discretion, determines that-the Database Libraries and Product are not usefW for Licenser's business needs. 52 Licensee shall pay to Licensor all amounts accruing with respect to charges billed in each calendar month within 30 days after the said payment Is due . There shall be applied to any amounts not paid by Licensee when due a delinquency charge of Eighteen Percent (18%) per annum p ro rated for partial periods of the unpaid p rincipal balance thereof, commencing to accrue the calendar day after such due date .

Section G

NO OTHER PAYMENT, ETC. Except as expressly provided in this Agreement, neither party shall be entitled to any payment, cost reimbursement, or other compensation from the other party In respect of its performance, and each party shall bear all its own expenses incurred in rendering performance . Section 7 PROPRIETARY PROTECTION 7 .1 As between the parties hereto, Licensor shall be the sole owner of th e Database Libraries, including any patents, copyrights or trade secrets associated with the Database Libraries or the underlying applications. 7.1a As between the parties hereto . Licensee shall be the sole owner of any services or products developed using the Database Libraries (but excluding the Database Libraries), including any patents . copyrights or trade secrets associated with such seMms or products. 7.2 licensee shall have no right to copy or reverse engineer the Database
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Libraries and/or the Product . Except as set forth In this Agreement, in no event shall Licensee distribute, discbse or otherwise make avWa* the Database Ubrades . or any Information contained therein to any other party whatsoever or at any other site other than the Ste, widW the express written consent of Lkxnsor . Licensee shall hold all of Licensor's product information, including the results of any evaluation or testing thereof by icensee in strict confidence and shall In no event share such infosmat ton with any third parties. 7.3 Licensee shah cooperate with L ice nsor (at Licensor's expense) wi th regard to any copyright registration of the Database Libraries, I n cluding updated versions thereof, that Licensor may choose to obtain . Both parties agree to cooperate with each other with respect to any other ac tio n that may be necess a ry or appropriate for the protec tion of the Database Libraries under applicable intelle ctual property laws .
7.4 in the event that either party discovers an instance of passible infringement of Licensor's rights In the Database L ibraries, such party shall promptly notify the other. The par ties shalt consult with one another with respect to the action th at may be appropriate to stop or remedy such infringement .

7 .5 If a third party claims that the exercise by Licensee of the rights granted herein, inducting the provision and use of the Product based on the Database Libraries in accordance with this Agreement, infringes any patent, copyright, trade secret, or other proprietary right of any third party, Licensor will defend Licensee against that claim at Licensor's expense and Licensor will indemnify and hold harmless Licensee f rom and against any associated loss, liabil ity. damage, or expense (including costs of nvestigation, court costs, and reasonable atto rn eys fees). Licensee agrees to cooperate with Licensor to determine the most cost-effective and practical means for responding to and disposing of any such matter .
Section 8

WARRANTIES ; UMtTATI.ONS; DISCLAIME R
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Licensor warrants that the Product wig mate rially conform with its written specifications during the term of this Agreement . it is mutually acknowledged that data entry, communication and storage a re subject to a possibW of human and machine rrors, omissions, delays, and losses, including Inadvertent loss of data or damage to media, which may give rise to loss or damage . Neither party hereto undertakes any GabW4 to the other for any such erro rs, omissions, delays, or losses . EXCEPT AS STATED ABOVE, LICENSOR MAKES AND LICENSEE RECEIVES NO WARRANTIES, EXPRESS, IMPLIED, STATUTORY, OR IN ANY OTHER PROVISION OF THIS AGREEMENT OR ANY OTHER COMMUNICATION, REGARDING THE PRODUCT, THE DATABASE LIBRARIES AND THE SERVICES, AND LICENSOR SPECIFICALLY DISCLAIMS ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE . NEITHER PARTY UNDERTAKES OR ACCEPTS ANY LIABILITY WHATSOEVER *TO THE OTHER FOR ERRORS, OMISSIONS, DELAYS, INTERRUPTIONS, OR LOSSES UNLESS CAUSED BY THEIR WILLFUL ISCONDUCT . EXCEPT FOR INDEMNIFICATION UNDER SECTION 7 .5, IN NO EVENT SHALL EITHER PARTY'S DAMAGES IN ANY LAWSUIT OR OTHER ACTION BROUGHT UNDER THIS AGREEMENT EXCEED THE AMOUNTS PAID BY LICENSEE HEREUNDER.
Section 9 TER M

This Agreement shalt commence to be effective on the date first shown above and shall remain in effect for an Initial term of six (6) months from the initial payment hereunder. The Agreement shall be renewable for an additional six (6) month term at the discretion of Licensee . in addition, either party may terminate the Agreement in the event that the other party commits a material breach of this Agreement, provided that the aggrieved party shall first notify the other party of the breach and give such other party at least tan (10) days to rare the breach . ection 10 FORCE MAJEURE
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Neither party shall be liable or be deemed to be In default for any delay or failure In performance or interruption resulting directly or Indirectly from any cause or circumstance beyond its reasonable control, equipment or telecommunications failure, labor dispute, or failure of any third party to perform any agreement that adversely affects such parts ability to perform its obligations hereunder. Section 1! NOTICES All notices or other communications required to be given hereunder shall be In writing and delivered either personally or by read, courier, or similar reliable means of dispatch and addressed as provided In this Agreement or as otherwise requested by the receiving party . Notices delivered personally shall be effective upon delivery and notices delivered by any other means shad be effective upon their receipt by the party to whom they are addressed . Section 12 GOVERNING LAW This Agreement shall be governed by and construed and enforced in accordance with the laws of the Stabs of California as it applies to a contract made and performed in such state, excluding -conflicts of laws principles . Any lawsuit regarding this Agreement shall be filed In the state or federal courts in Santa Clara County, California . Section 13 MODIFICATION AND WAIVERS This Agreement represents the entire understanding of the parties concerning Its subject matter and may not be modified except by a writing signed by and or'rzed representatives of both parties . A waiver by either party of its rights hereunder shall not be
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binding unless contained in a writing signed by an authorized representative of the party waiving its rights . The nonenforcement or waiver of any provision of this Agreement on one occasion shall not constitute a waiver of such provision on any other occasion unless expressly so agreed in writing . It Is agreed that no use of trade or other regular practice or method of dealing between the par ti es hereto shall be used to modify, interpret, supplement, or alter in any manner the terms of this Agreement ection U ASSIGNMEN T Neither party shall be entitled to assign its rights and . obligations under this Agreement to any successor to the ownership, management, or operation of the facilities and services of such party relating to the subject of this Agreement, without the written approval of the other party.
Section 1 5

NO IMPLIED RIGHTS OR OBLIGATIONS Nothing in this Agreement is intended to create any implied right to require, or any implied duty to provide, a level of effort or results (in general or In particular) not expressly stated herein, or to refrain from engaging in any other activity, including any activity involving the same or similar products or services with the same or similar customers or providers . During the term of this Agreement, Licensor may Include Licensee's name in a listing of L .icensor's customers . Before making any such listing available to the public, however, Ucensor will submit the listing to Licensee to obtain written approval of its content and intended use, which approval shall not be unreasonably withheld or delayed . Except for the foregoing, Licensor must first obtain Licensee's written consent before making any public use of Licensee's trade name, trademarks, service marks, logos, or other distinctive brand features, such public use Including but not being limited to press releases and other marketing efforts .

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IN WITNESS WHEREOF, the part ies have executed this Agreement can the day

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.THIS FIRST AMENDMM TO THE PRODUCT AND ELECTRONIC DATABASE EVALUATION AND LICENSE AGREEMENT (this "A,greementl Is made and entered Wo as of the ZL day of Dece Aw, 2000, by and between Google, Inc. ("Licensee") and Digi ta l E nvoy Inc. irL1censor"): 1 . The second paragraph under 'WITNESSETH ' sha ll be amended to read as follows: 'WHEREAS, Licensee desires to secure from Licensor the right to use Licensoes Personum product (the 'Product') and certain geographicAP address databases hat provide information at a me tropolitan area level (the "Database libraries') for :., poses of utilizing the Product and the Database L ib raries in the Business (the "Service") ; " 2 The first sentence of Section 5.1 of the Agreement sha ll be amended to read as follows:
'Licensee shall pay Licensor a monthly fee of Four thousand Five Hundred dollars ($4,500) per month during the *ftn of Ws Agreement for acsesa to Umnsoes geographic tailoring Product and Database libraries '

3 . The remainder of the Agreement shall continue in full force and effect .

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IN W!'fNESS WHEREOF. the parties have executed this Agreement the day and year first above written. DIGENVOY, INC . GOGGLE, INC .

Authorized Signahue Name:
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JUL-11-4UU! lUt U3 :L3 rut 07/27/1401 TUB 12 :21 FAI GOOCtii INC .

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TWS SECOND AMENDMENT TO THE PRODUCT AND ELECTRONIC DATABASE EVALUATM AND UCENSE AGREEMENT (ties `Agreemenr) Is ade and entered kAo as of the 0A day of July, 2001, by ar,d between Google . . CL =nsae") and Digital Envoy Inc. CLksnsor'): . Section 9 of the agreement shall be amended to react as follows : his Agreement shag commence to be effective an the date first shown above and shag remain In effect for an initial term of eigpteen (18) /months from the Mittel payment hereunder. The Agr+eemer*shatt t ramble-for-an°addMoroal six (Gj ;notM,term atthe disc retiortWUcerrsee. In addition, e4w party may temtinate the Agreement in the event that itye other' party commits a material breach of this Agreement, pmded that `iS zgg,,eved partly sting ',L'-t'-cCfy the othw party of the breach and 9W such other party at least ten (14) days to cure the breach

2. The remainder of the Agreement shag continue In fug force and effect as amended by the F'ust Amendment to the Agreement previously executed by the parties and this Second Amendment.

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07/17/ 2001 TUE 11 :22 FAI GOOGLE IPC .

IN WCTNESS WHEREOF, the patdes have executed this Agreement the day and year W above written .

GOOGLE, INC.

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WWA40 Taar~ and 000edirsty Wkh ft kr>dat Tamp 1114 Term's. itce *ft In IS dSMOK afro! We ate option to etdand lta Agreemedfor *A ad* otW two (2) yw Wm ilarsaftsr (t m EAwxkd ; erml by WvA*V wf n mks b !]censor to low flan r6V (W) days prior io the woAtiort of tha Tetra. AdMorYaly, prior to the ergsirdm of tha Eftndpd Tents, Lk w~ , In III; &"Not% Ad ave the opiton b e AvA ftte A6 mrw t for an a*wa w am (t) year tams by pcv,* V wftn ta tiae to ttconsor na War tttoo titirty 00) days prior b 9* ea*Kron ci the ErdendedTam? 3. The raaairtder of the Aemayant Aa ft* am in tul loins and Oe t. c Thb Agreernent maybe attectkd In counferpwb . kutudirfp taeskr& cotAttcpatt s. IN Wtr 4M WHEREOF. the parties have wacuted *k Agrawnerv " day and y+aar fast abow
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