Washington, D.C. Location
CO-BRANDED MARKETING AGREEMENT
THIS AGREEMENT is made as of this [Date] by and between [PCT Patent Co.’s] a [PCT Patent Co.’s State of Incorporation] corporation with offices at [PCT Patent Co.’s Address] (“PCT Patent Co.”) and [International Lawyer Co.], a [International Lawyer Co.’s State of Incorporation] corporation with offices at [International Lawyer Co.’s Address] (“International Lawyer Co.”) (collectively the “Parties”).
W I T N E S S E T H:
WHEREAS, PCT Patent Co. is in the business of and has developed certain [Description of PCT Patent Co.’s Services] services for customers, identified more fully in the attached Schedule A (the “Services”);
WHEREAS, International Lawyer Co. is in the business of and provides certain [Description of International Lawyer Co.’s Services] services; and
WHEREAS, PCT Patent Co. and International Lawyer Co. desire to enter into a marketing agreement providing for the development and marketing of a co-branded version of PCT Patent Co.’s Services for use by International Lawyer Co.’s clients (the “Clients”);
NOW, THEREFORE, in consideration of the mutual promises and covenants contained in this Agreement, the parties hereto agree as follows:
1. DEVELOPMENT OF THE CO-BRANDED SERVICE
A. In accordance with the terms of this Agreement, PCT Patent Co. agrees to develop [describe co-branded services] services, as provided for in the attached Schedule A (the “Co-Branded Services”), for commercial distribution. The Co-Branded Service shall be installed at the Client site, and be accessible via commercially available Internet browsers, such as Microsoft Internet Explorer [version number] or higher or Netscape Navigator Version [version number] or higher.
B. Co-Branded Services will be offered to Clients and made available only to such Clients that have agreed to be bound by the terms and conditions set forth in PCT Patent Co.’s customized service agreement, as provided in the attached Schedule B (the “Service Agreement”), which Service Agreement shall provide the terms and conditions of use by Clients of the Co-Branded Service.
C. In the event that PCT Patent Co. cannot develop the Co-Branded Service on or before [date] but can demonstrate to International Lawyer Co.’s reasonable satisfaction that PCT Patent Co. can, in accordance with the terms of this Agreement, develop the Co-Branded Service for commercial distribution within [number] [(#)] months from [date], International Lawyer Co. may, in its sole discretion, agree that the Co-Branded Service will be made commercially available.
D. During the Term of this Agreement as provided for herein, PCT Patent Co. and International Lawyer Co. shall develop certain service features for integration into the Co-Branded Service (the “Exclusive Features”) according to the schedule provided for in the attached Schedule A.
E. Upon Co-Branded Services being made available to Clients, PCT Patent Co. shall deliver to International Lawyer Co., in a format reasonably requested by International Lawyer Co., a comprehensive user’s manual which any user of the Co-Branded Service (including without limitation any upgrade thereof) may utilize in order to properly operate the Co-Branded Service. PCT Patent Co. will reasonably assist International Lawyer Co. in the production of such manual and will provide International Lawyer Co. with all materials created by PCT Patent Co. that may be useful in the production of such manual. The approved manual shall be printed by International Lawyer Co. and shall be made available for distribution to Clients.
2. GRANT OF RIGHTS
PCT Patent Co. hereby grants to International Lawyer Co., subject to the terms and conditions of this Agreement, a nonexclusive and nontransferable worldwide right to market the Co-Branded Service, directly and through International Lawyer Co.’s agents and affiliates, to Clients.
3. SERVICE AGREEMENT
A. The Service Agreement shall grant to Clients a non-exclusive, non-transferable right to use the Co-Branded Service in accordance with the terms and conditions stated therein.
B. The Service Agreement shall also offer to Clients a service contract and shall contain other terms and conditions, including, without limitation, PCT Patent Co.’s warranty, not materially less favorable to the Client than offered to PCT Patent Co.’s own business customers.
C. The Service Agreement shall provide for payments by the Client directly to PCT Patent Co.. For the purposes of such payments, PCT Patent Co. shall be deemed the seller of the Co-Branded Service and shall be responsible for collection and remittance to the appropriate jurisdiction any and all applicable taxes. PCT Patent Co. shall fully indemnify and hold International Lawyer Co. harmless from any taxes that are assessed (whether against International Lawyer Co. or PCT Patent Co.) with respect to such sales.
4. TRAINING AND SUPPORT
A. PCT Patent Co. shall train at least [number] sales personnel of International Lawyer Co. with respect to the Co-Branded Service (including new versions thereof) for the purpose of educating International Lawyer Co.’s sales team on the features and benefits of the Co-Branded Service and how to demonstrate and market it.
B. During the Term of this Agreement, PCT Patent Co. will provide maintenance and support services for the Co-Branded Service to Clients on the terms set forth in the Service Agreement. Such maintenance and support services shall include upgrade notices as well as a dedicated telephone technical support line during PCT Patent Co.’s customary support hours. PCT Patent Co. agrees that the level of service and support provided to Clients will be no less favorable than the level of service and support generally provided to PCT Patent Co.’s commercial customers.
A. “Confidential Information” shall mean any confidential technical data, trade secret, know-how or other confidential information disclosed by any party hereunder in writing, orally, or by drawing or other form and which shall be marked by the disclosing party as “Confidential” or ”Confidential”. If such information is disclosed orally, or through demonstration, in order to be deemed Confidential Information, it must be specifically designated as being of a confidential nature at the time of disclosure and reduced in writing and delivered to the receiving party within [number] ([#]) days of such disclosure.
B. Notwithstanding the foregoing, Confidential Information shall not include information which: (i) is known to the receiving party at the time of disclosure or becomes known to the receiving party without breach of this Agreement; (ii) is or become publicly known through no wrongful act of the receiving party or any subsidiary of the receiving party; (iii) is rightfully received from a third party without restriction on disclosure; (iv) is independently developed by the receiving party or any of its subsidiary; (v) is furnished to any third party by the disclosing party without restriction on its disclosure; (vi) is approved for release upon a prior written consent of the disclosing party; (vii) is disclosed pursuant to judicial order, requirement of a governmental agency or by operation of law.
C. The receiving party agrees that it will not disclose any Confidential Information to any third party and will not use Confidential Information of the disclosing party for any purpose other than for the performance of the rights and obligations hereunder during the term of this Agreement and for a period of [number] ([#]) years thereafter, without the prior written consent of the disclosing party. The receiving party further agrees that Confidential Information shall remain the sole property of the disclosing party and that it will take all reasonable precautions to prevent any unauthorized disclosure of Confidential Information by its employees. No license shall be granted by the disclosing party to the receiving party with respect to Confidential Information disclosed hereunder unless otherwise expressly provided herein.
D. Upon the request of the disclosing party, the receiving party will promptly return all Confidential information furnished hereunder and all copies thereof.
E. The Parties shall cooperate in the development and delivery of a press release announcing the relationship between International Lawyer Co. and PCT Patent Co. relative to the Co-Branded Service. The Parties agree that all publicity and public announcements concerning the formation and existence of this Agreement shall be jointly planned and coordinated by and among the Parties. Neither party shall disclose any of the specific terms of this Agreement to any third party without the prior written consent of the other party, which consent shall not be withheld unreasonably. Notwithstanding the foregoing, any party may disclose information concerning this Agreement as required by the rules, orders, regulations, subpoenas or directives of a court, government or governmental agency, after giving prior notice to the other party.
F. If a party breaches any of its obligations with respect to confidentiality and unauthorized use of Confidential information hereunder, the non- breaching party shall be entitled to equitable relief to protect its interest therein, including but not limited to injunctive relief, as well as money damages notwithstanding anything to the contrary contained herein.
G. The Parties shall use their best efforts to ensure that only employees and third parties whose duties give them a need to know such Confidential Information of the other Party shall have access thereto. All such persons and entities shall be obligated to treat the same as proprietary and confidential and the receiving Party shall take such other measures to protect the confidentiality of such Confidential Information. Without limiting the generality of the foregoing, each Party shall require any third party to whom it discloses any Confidential Information to sign a confidentiality agreement, enforceable by the other Party, whereby such third party agrees to be bound by the confidentiality provisions set forth herein.
H. If a Party or any of its employees, shall be under a legal obligation in any administrative, governmental or judicial circumstance involuntarily to disclose any Confidential Information of the other Party, it shall give the Party that owns such Confidential Information (the “Disclosing Party”) prompt notice thereof so that the Disclosing Party may seek an appropriate protective order. If the Disclosing Party is finally unsuccessful in obtaining such protective order and if the Party receiving such Confidential Information (the “Receiving Party”) or any such employee would, in the opinion of its counsel, be held in contempt or suffer other censure or penalty for failure to disclose, disclosure pursuant to the order or decree of an administrative, governmental or judicial authority with jurisdiction over such Party may be made by the Receiving Party or its employees without liability hereunder.
A. PCT Patent Co. shall be paid standard licensing fees for the Co-Branded Service is provided for in the attached Schedule A (the “Licensing Fees”). Licensing Fees do not include any national, state or local sales, use, value added or other taxes, customs duties or similar tariffs and fees which PCT Patent Co. may be required to pay or collect upon the delivery of the Co-Branded Service or upon collection of the fees or otherwise. PCT Patent Co. will provide International Lawyer Co. with not less than [number] ([#]) days notice of any adjustment to the Licensing Fees.
B. PCT Patent Co. shall be responsible for the collection and accounting of all amounts paid by any Client with respect to the period during which a Client is a party to Service Agreement (the “Revenue Period”) and relating to the Co-Branded Service, including transaction fees and one-time payments, but excluding (i) direct costs for licensing of third party software products that are integrated into the Co-Branded Service and (ii) duty, sales, use or other taxes or withholdings other than those based on PCT Patent Co.’s income (the “Revenue”), as well as any amounts received from a Client for consulting, implementation services, training and other similar services related to the Co-Branded Service less duties or sales use or other taxes or withholdings other than those based on PCT Patent Co.’s before tax income (the “Consulting Revenue”).
C. PCT Patent Co. shall be entitled to [Percentage] ([#] %) of the Revenue and International Lawyer Co. shall be entitled to [Percentage] ([#] %) of the Revenue; provided, however, that any portion of the Revenue attributable to licensing fees payable by any Client to PCT Patent Co. shall be divided on a [number]-[number] basis between PCT Patent Co. and International Lawyer Co.. PCT Patent Co. shall retain One-Hundred Percent (100%) of Consulting Revenues from Clients.
D. International Lawyer Co.’s share of the Revenues shall be calculated on a monthly basis and shall be payable no later than [number] ([#]) days after the last day of each calendar month.
E. PCT Patent Co. shall provide International Lawyer Co. with a written statement in a form acceptable to International Lawyer Co. with each payment. Such statement shall be certified as accurate by a duly authorized officer of PCT Patent Co. detailing the Revenues received during such calendar month from Clients. Within [number] ([#]) days after the end of each calendar quarter following the execution date, PCT Patent Co. will provide a report, with appropriate back-up documentation, to International Lawyer Co. detailing all Consulting Revenues generated during such calendar quarter, including without limitation, any associated costs.
F. All payments due Advertiser shall be made in U.S. currency by check drawn on a U.S. bank, unless otherwise specified by Advertiser.
G. Late payments shall incur interest at the rate of [number] Percent ([#]%) per month from the date such payments were originally due.
H. PCT Patent Co. shall, at the end of every calendar month, calculate amounts payable by International Lawyer Co., and shall invoice such amounts and forward such invoice, along with appropriate back-up documentation, to International Lawyer Co.. International Lawyer Co. agrees to pay such invoiced amount within [number] ([#]) days of its receipt.
7. RECORD INSPECTION AND AUDIT
A. Each party shall have the right, upon reasonable notice, to inspect the books and records and all other documents and material in their possession or control with respect to the subject matter of this Agreement. The inspecting party shall have free and full access thereto for such purposes and may make copies thereof.
B. In the event that such inspection reveals an underpayment of the actual monies or fee owed the other party, that party shall pay the difference, plus interest calculated at the rate of [Percentage] PERCENT ([#] %) per month. If such underpayment be in excess of [Amount] UNITED STATES DOLLARS ($ [#]) for any period, the party shall also reimburse the inspecting party for the cost of such inspection.
C. All books and records relative to a party’s obligations hereunder shall be maintained and made accessible to the other party for inspection at a location in the United States for at least [number] ([#]) years after termination of this Agreement.
D. Each party shall provide the other party with monthly site usage reports within [number] ([#]) days of the end of each month.
8. INTELLECTUAL PROPERTY AND MARKING
A. Each Party hereby grants the other Party the right to use the Party’s trademarks identified in the attached Schedule A during the term of this Agreement in connection with the marketing, advertisement and promotion of the Co-Branded Service. Each Party may revoke or modify this right at any time in its sole reasonable discretion. It is understood and agreed that each Party shall retain all right, title and interest in and to its own trademarks. Nothing contained in this Agreement shall give the other Party any interest in such trademarks. Each Party agrees that it will not at any time during or after this Agreement assert or claim any interest in or do anything which may adversely affect the validity or enforceability of any trademark or trade name belonging to or licensed to the other Party. Neither Party will register, seek to register or cause to be registered any of the other Party’s trademarks without that Party’s prior written consent. The Parties agrees not to attach any additional trademarks or trade designations to any Co-Branded Service other than those mutually agreed to.
B. The Parties agree to mutually develop a trademark identifying the Co-Branded Service for use in connection with such service. Furthermore, the Parties shall include the designation “Powered by” (or other designation(s) determined by the Parties) and each Party’s logo on all printed and electronic marketing materials which references the Co-Branded Service. International Lawyer Co. acknowledges and agrees that PCT Patent Co. will include a PCT Patent Co. designation or logo on the screen of the software delivered to Clients as part of the Co-Branded Service.
This Agreement and the provisions hereof, except as otherwise provided, shall be in full force and effect commencing on the date of execution by both Parties and shall extend for an Initial Term of [number] ([#]) years (the “Term”). This Agreement shall be automatically renewed for additional “Extended Terms” each of [number] ([#]) years unless either party notifies the other in writing of its intention not to renew the Agreement, such notification to be provided at least [number] ([#]) days prior to the expiration of the then in-effect Term.
The following termination rights are in addition to the termination rights that may be provided elsewhere in this Agreement:
A. Right to Termination Upon Notice. Either Party may terminate this Agreement on [number] ([#]) days written notice to the other party in the event of a breach of any provision of this Agreement by the other Party, provided that, during the [number]-day period, the breaching Party fails to cure such breach.
B. International Lawyer Co. Right to Terminate. International Lawyer Co. shall have the right to terminate this Agreement at any time on [number] ([#]) months’ written notice to PCT Patent Co. upon: (i) the acquisition of a controlling interest in PCT Patent Co. by an International Lawyer Co. Competitor; or (ii) the appointment of an officer, director or other designee of an International Lawyer Co. Competitor to serve on the Board of Directors of PCT Patent Co..
11. POST-TERMINATION RIGHTS
Upon expiration or termination of this agreement, each Party shall: (i) immediately cease distribution of all items in its possession which bear the trademarks of the other Party; (ii) as promptly as is practicable cease all use of the trademarks of the other Party; (iii) agree not use any mark which is confusingly similar to any trademarks of the other Party; and (iv) return to the other Party marketing literature and materials of the other Party in its possession or shall destroy such items and certify their destruction to the other Party.
12. DISCLAIMERS, LIMITATIONS AND RESERVATIONS
A. EXCEPT AS SET FORTH IN THIS AGREEMENT, BOTH PARTIES SPECIFICALLY DISCLAIM ALL WARRANTIES PROVIDED THEREUNDER, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION, THE WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. IN PARTICULAR, AND NOT BY WAY OF LIMITATION, THE PARTIES SPECIFICALLY DISCLAIM ANY REPRESENTATION OR WARRANTY REGARDING (A) THE AMOUNT OF SALES REVENUE THAT MAY GENERATED DURING THE TERM, AND (B) ANY ECONOMIC OR OTHER BENEFIT THAT THE PARTIES MIGHT OBTAIN THROUGH THEIR PARTICIPATION IN THIS AGREEMENT.
B. IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY INDIRECT, SPECIAL, INCIDENTAL, PUNITIVE OR CONSEQUENTIAL DAMAGES, INCLUDING, BUT NOT LIMITED TO, LOSS OF PROFITS, LOSS OF DATA, LOSS OF BUSINESS OR OTHER LOSS ARISING OUT OR RESULTING FROM THE AGREEMENT, EVEN IF EITHER PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. THE FOREGOING SHALL APPLY REGARDLESS OF THE NEGLIGENCE OR OTHER FAULT OF EITHER PARTY AND REGARDLESS OF WHETHER SUCH LIABILITY SOUNDS IN CONTRACT, NEGLIGENCE, TORT OR ANY OTHER THEORY OF LIABILITY. NOTWITHSTANDING THE FOREGOING, IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY FOR THE GREATER OF (i) THE CUMULATIVE AMOUNT ACTUALLY PAID BY EACH PARTY TO THE OTHER PARTY, OR (ii) $[number].
13. REPRESENTATIONS AND WARRANTIES
A. The Parties represent and warrant that: (i) they have the right, power and authority to execute, deliver and perform this Agreement and all agreements and documents executed in connection herewith (the “Ancillary Documents”); (ii) the entering into and performance of this Agreement and the Ancillary Documents does not require the consent or approval of any third party or governmental authority; and (iii) there is no litigation, action at law or equity, suit, or administrative proceeding, claim, or governmental investigation presently pending or threatened against them or any of their Affiliates that would impair or otherwise affect their ability to perform their obligations hereunder and thereunder.
B. PCT Patent Co. hereby represents and warrants to International Lawyer Co. that it is the owner of the Co-Branded Service and the components thereof, or otherwise has the right to sell, license and market the Co-Branded Service, as contemplated by the terms of this Agreement, without infringing or violating any law, rule, regulation, United States or foreign copyright, patent, trade secret or other proprietary rights of any third party, and further that the grant of rights hereunder to International Lawyer Co. does not violate or constitute a default under any agreement to which PCT Patent Co. is a party, nor shall the performance by International Lawyer Co. hereunder in accordance with the terms of this Agreement subject International Lawyer Co. to liability as a result of any such agreement.
C. PCT Patent Co. further represents and warrants to International Lawyer Co. that, to the best of its knowledge and belief, the Co-Branded Service and/or any component thereof does not infringe upon or otherwise violate the patents, trademarks or other intellectual property rights of any third parties.
D. EXCEPT AS SET FORTH IN THE SERVICE AGREEMENT OR EXPRESSLY PROVIDED FOR IN THIS AGREEMENT, SERVICE DISCLAIMS ALL OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE, WITH RESPECT TO THE CO-BRANDED SERVICE.
A. Each Party hereby agrees to defend, indemnify, and hold the other party, and its officers, directors, agents, and employees, harmless against all costs, expenses, and losses (including reasonable attorney fees and costs) incurred through claims of third parties against such Party based on a breach of any representation or warranty set forth herein; any breach by it of the licenses granted by it hereunder; or the use by the Party of any trademarks or Content other than in accordance with the terms hereof.
B. Each Party’s right to indemnification is conditioned upon the indemnified party: (i) promptly notifying the indemnifying party of any claim, suit, or proceeding for which indemnity is claimed; (ii) cooperating reasonably with the indemnifying party at the latter’s expense; and (iii) allowing the indemnifying party to control the defense or settlement thereof. The indemnified party will have the right to participate in any defense of a claim and/or to be represented by counsel of its own choosing at its own expense.
15. FORCE MAJEURE
Neither party will be liable for, or will be considered to be in breach of or default under this Agreement on account of, any delay or failure to perform as required by this Agreement as a result of any causes or conditions that are beyond such Party’s reasonable control and that such Party is unable to overcome through the exercise of commercially reasonable diligence. If any force majeure event occurs, the affected Party will give prompt written notice to the other Party and will use commercially reasonable efforts to minimize the impact of the event.
16. NOTICE AND PAYMENT
A. Any notice required to be given under this Agreement shall be in writing and delivered personally to the other designated party at the above stated address or mailed by certified, registered or Express mail, return receipt requested or by Federal Express.
B. Either party may change the address to which notice or payment is to be sent by written notice to the other under any provision of this paragraph.
This Agreement shall be governed in accordance with the laws of the State of [State]. All disputes under this Agreement shall be resolved by litigation in the courts of the State of [State] including the federal courts therein and the Parties all consent to the jurisdiction of such courts, agree to accept service of process by mail, and hereby waive any jurisdictional or venue defenses otherwise available to it.
18. AGREEMENT BINDING ON SUCCESSORS
The provisions of the Agreement shall be binding upon and shall inure to the benefit of the Parties hereto, their heirs, administrators, successors and assigns.
Neither party may assign this Agreement or the rights and obligations thereunder to any third party without the prior express written approval of the other party which shall not be unreasonably withheld.
No waiver by either party of any default shall be deemed as a waiver of prior or subsequent default of the same of other provisions of this Agreement.
If any term, clause or provision hereof is held invalid or unenforceable by a court of competent jurisdiction, such invalidity shall not affect the validity or operation of any other term, clause or provision and such invalid term, clause or provision shall be deemed to be severed from the Agreement.
This Agreement constitutes the entire understanding of the Parties, and revokes and supersedes all prior agreements between the Parties and is intended as a final expression of their Agreement. It shall not be modified or amended except in writing signed by the Parties hereto and specifically referring to this Agreement. This Agreement shall take precedence over any other documents which may conflict with this Agreement.
IN WITNESS WHEREOF, the Parties hereto, intending to be legally bound hereby, have each caused to be affixed hereto its or his/her hand and seal the day indicated.
[PCT Patent Co.] [International Lawyer Co.]
TO CO-BRANDED MARKETING AGREEMENT BETWEEN
[PCT Patent Co.]
[International Lawyer Co.]
1. PCT Patent Co.’s Services
[Describe PCT Patent Co.’s Services]
2. Development of Services
[Describe the co-branded services to be developed by PCT Patent Co.]
3. Exclusive Features
[Describe the exclusive features to be developed by PCT Patent Co. for integration into the co-branded services]
4. Licensing Fees
International Lawyer Co. shall pay to PCT Patent Co. a standard licensing fee in the amount of [Amount] UNITED STATES DOLLARS ($[#]).
The Parties grant rights to the other Party for the following trademarks:
International Lawyer Co. Trademarks
[List International Lawyer Co. trademarks by mark, country, Registration Number and Date, and goods/services]
PCT Patent Co. Trademarks
[List PCT Patent Co. trademarks by mark, country, Registration Number and Date, and goods/services]
TO CO-BRANDED MARKETING AGREEMENT BETWEEN
[PCT Patent Co.]
[International Lawyer Co.]
[Insert PCT Patent Co.’s Customized Service Agreement]