Court filing
Exhibit A- Assignment of the Acorn Logo from Blue Acorn, LLC to Plaintiff — Blueacorn Beringer (Dkt. 1.2)
No. 5:21-cv-00251-BO · Doc. 1-2 · Docket on CourtListener
Full text
EXHIBIT A
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INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
This Intellectual Property Assignment Agreement IP Assignment July 16, 2020, and effective as of March 20,
2019 is made by Blue Acorn, LLC Assignor a Delaware limited-liability company, located at 145 Williman Street,
Charleston, SC 29403, in favor of Beringer Commerce Inc. Assignee Delaware corporation, located at 261 Madison Ave,
Floor 8, New York, NY 10016 Parties Party , the transferee of certain assets of
Assignor pursuant to a licensing agreement among Assignor and Assignee and the other parties thereto, dated as of July 16,
2020 Licensing Agreement
WHEREAS, under the terms of the Licensing Agreement, Assignor has conveyed, transferred and assigned to Assignee certain
intellectual property of Assignor, and has agreed to execute and deliver this IP Assignment;
NOW THEREFORE, the Parties agree as follows:
1. Assignment. For good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Assignor
and
interest in and to the following Assigned IP
(a) all patents issued and patent applications filed, all interest in the invention related thereto, all entitlement or right to
claim priority thereto, and all divisions, continuations, continuations-in-part, reissues, extensions, reexaminations, and
Patents , whereas the assignment of the right to claim entitlement and/or priority is executed nunc
pro tunc and is considered effective as of the filing date of the earliest application to which priority and/or entitlement is
claimed;
(b) all trademark registrations, trademark applications and unregistered trademarks and all extensions and renewals
thereo Trademarks
Trademarks, including but not limited to the following: (i) BLUE ACORN word mark, (ii) BLUE ACORN stylized marks (some
are depicted in Attachment A), and (iii) Acorn logos (some are depicted in Attachment A);
(c) all copyright registrations, applications for registration, unregistered copyrights and exclusive copyright licenses and
all Copyrights
(d) all trade secrets, technology, know-how, proprietary information, and other intellectual property;
(e) all rights of any kind whatsoever of Assignor accruing under any of the foregoing provided by applicable law of any
jurisdiction, by international treaties and conventions, and otherwise throughout the world;
(f) any and all royalties, fees, income, payments, and other proceeds now or hereafter due or payable with respect to
any and all of the foregoing; and
(g) any and all claims and causes of action with respect to any of the foregoing, whether accruing before, on, or after the
date hereof, including all rights to and claims for damages, restitution, and injunctive and other legal and equitable relief for
past, present, and future infringement, dilution, misappropriation, violation, misuse, breach, or default, with the right but no
obligation to sue for such legal and equitable relief and to collect, or otherwise recover, any such damages.
2. Recordation and Further Actions. Assignor hereby authorizes the Commissioner for Patents and the Commissioner for
Trademarks in the United States Patent and Trademark Office, and the Register of Copyrights in the United States Copyright
Office, and the officials of corresponding entities or agencies in any applicable jurisdictions to record and register this IP
reasonable request, Assignor shall take
such steps and actions, and provide such cooperation and assistance to Assignee and its successors, assigns, and legal
representatives, including the execution and delivery of any affidavits, declarations, oaths, exhibits, assignments, powers of
attorney, or other documents, as may be necessary to effect, evidence, or perfect the assignment of the Assigned IP to Assignee,
or any assignee or successor thereto.
3. Terms of the Licensing Agreement. The Parties hereto acknowledge and agree that this IP Assignment is entered into
pursuant to the Licensing Agreement, to which reference is made for a further statement of the rights and obligations of Assignor
and Assignee with respect to the Assigned IP. The representations, warranties, covenants, agreements, and indemnities
contained in the Licensing Agreement shall not be superseded hereby but shall remain in full force and effect to the full extent
provided therein. In the event of any conflict or inconsistency between the terms of the Licensing Agreement and the terms
hereof, the terms of the Licensing Agreement shall govern.
4. Counterparts. This IP Assignment may be executed in counterparts, each of which shall be deemed an original, but all of
which together shall be deemed one and the same agreement. A signed copy of this IP Assignment delivered by facsimile, e-
mail, or other means of electronic transmission shall be deemed to have the same legal effect as delivery of an original sign ed
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copy of this IP Assignment.
5. Successors and Assigns. This IP Assignment shall be binding upon and shall inure to the benefit of the Parties hereto and
their respective successors and assigns.
6. Governing Law. This IP Assignment and any claim, controversy, dispute, or cause of action (whether in contract, tort or
otherwise) based upon, arising out of, or relating to this IP Assignment and the transactions contemplated hereby shall be
governed by, and construed in accordance with, the laws of the United States and the State of Delaware, without giving effect
to any choice or conflict of law provision or rule (whether of the State of Delaware or any other jurisdiction).
IN WITNESS WHEREOF, Assignor has duly executed and delivered this IP Assignment as of the date first above written.
Blue Acorn, LLC
By: ________________________________
Name: Bill Kostenko
Title: Director
AGREED TO AND ACCEPTED: Beringer Commerce, Inc.
By: _______________________________
Name: Bill Kostenko
Title: Director
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Attachment A
INTELLECTUAL PROPRTY ASSIGNMENT AGREEMENT
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Intercompany Intellectual Property License Agreement
Agreement July 16, 2020, and effective as of March
20, 2019 Effective Date and between Beringer Licensor
261 Madison Ave, Floor 8, New York, NY 10016 and Blue Acorn, LLC Licensee a Delaware limited-liability company,
located at 145 Williman Street, Charleston, SC 29403 Parties Party
WHEREAS, Licensor and Licensee are members of a group of affiliated companies engaged in providing services to analyze,
improve and create digital customer experiences Business
WHEREAS, Licensor and Licensee have executed, or are contemporaneously executing, an Intellectual Property Assignment
IP Assignment
technology, know-how, proprietary information, and other intellectual property of Licensee to Licensor;
WHEREAS, Licensor, owns certain patents, trademarks, copyrighted works, trade secrets, technology, know-how, proprietary
information, Licensed Intellectual Property
WHEREAS, Licensee wishes to use the Licensed Intellectual Property, and Licensor is willing to grant to Licensee a license to
NOW, THEREFORE, in consideration of the mutual covenants and agreements hereinafter set forth and for other good and
valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties hereby agree as follows:
1. License.
1.1 License Grant. Subject to the terms and conditions of this Agreement, Licensor hereby grants to Licensee during the
Term (as defined below) a non-exclusive, royalty-free, non-transferable, sublicensable license to use the Licensed
Intellectual Property in connection with the conduct of the Business, including to:
(a) make, use, offer to sell, sell, import, advertise, market, and distribute products and services relating to the Business,
and any other products or services that the Parties may agree upon in writing from time to time (collectively, the
Licensed Products ;
(b) use one or more of the trademarks , including
Blue Acorn iCi , as applicable; and
(c) reproduce, publicly perform, transmit, publicly display, distribute, and create derivative works based on the
copyrighted works for purposes relating to the Business.
1.2 Sublicensing. Licensee may grant sublicenses under this Agreement, provided that: (a) Licensee shall ensure that
each sublicensee complies with the applicable terms and conditions of this Agreement; (b) any act or omission of a
sublicensee that would be a material breach of this Agreement if performed by Licensee will be deemed to be a material
breach by Licensee; and (c) each sublicense will terminate automatically effective as of the termination of this Agreement
under Section 10.
1.3 Reservation of Rights. Licensor hereby reserves all rights not expressly granted to Licensee under this Agreement.
2. Use of Licensed Intellectual Property.
2.1 Notices. Licensee shall ensure that all use of Licensed Intellectual Property hereunder is accompanied by or marked
with the appropriate proprietary rights notices, symbols, and legends as may be reasonably necessary under applicable law
to maintain the Licensed
may be specified by Licensor.
2.2 Modifications. As between the Parties, Licensor owns any improvement, enhancement, or other modification of or
derivative work based on any of the Licensed Intellectual Property made by or on behalf of Licensee or Licensor (each, a
Modification Licensee
Modification see hereby assigns to Licensor all of its right, title, and interest in and to all Licensee Modifications,
including all rights to apply for any intellectual property registrations with respect to such Licensee Modifications and all
enforcement rights and remedies for past, present, and future infringement thereof and all rights to collect royalties and
damages therefor. All intellectual property applications for registration filed by Licensor with respect to any such Licensee
Modification and all patents or registrations issuing therefrom shall automatically be included in the Licensed Intellectual
Property and subject to the license granted to Licensee under Section 1.1. At the request of Licensor, Licensee shall
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promptly execute and deliver such documents as may be necessary or desirable to effect and perfect the foregoing
assignment of rights.
2.3 Quality Control. Licensor may exercise quality control over all uses of any trademarks included in the Licensed
o maintain the validity of the Licensed Marks and protect the goodwill associated
therewith.
3. Ownership and Protection of the Licensed Intellectual Property.
(a) Acknowledgment of Ownership. Licensee and Licensor have executed, or are contemporaneously executing, the
IP Assignment conveying, transferring and assigning the patents, trademarks, copyrighted works, trade secrets,
technology, know-how, proprietary information, and other intellectual property of Licensee to Licensor. Further,
Licensee acknowledges that Licensor owns and will retain all right, title, and interest in and to the Licensed Intellectual
Property subject to the license granted in Section 1.1. All use by Licensee or any sublicensee of the Licensed Marks,
and all goodwill accruing therefrom, will inure solely to the benefit of Licensor.
(b) Prosecution and Maintenance. Licensor has the sole right, in its discretion, to file, prosecute, and maintain all
applications, registrations, and patents relating to the Licensed Intellectual Property. Licensee shall provide, at the
Any other expenses related to the filing, prosecuting or maintaining of the applications, registrations and patents related
to the Licensed Intellectual Property shall be shared equally amongst all Licensees of the Licensed Intellectual Property.
4. Enforcement.
4.1 Licensee shall promptly notify Licensor in writing of any actual, suspected, or threatened infringement,
misappropriation, or other violation of any Licensed Intellectual Property by any third party of which it becomes aware.
Licensor has the sole right, in its discretion, to (a) bring any action or proceeding with respect to any such infringement; (b)
defend any declaratory judgment action concerning any Licensed Intellectual Property; and (c) control the conduct of any
such action or proceeding (including any settlement thereof). Licensee shall provide Licensor with all assistance that
Licensor may reasonably request, at Licensee
be entitled to retain any monetary recovery resulting from any such action or proceeding (including any settlement thereof)
and shall distribute such monetary recovery first to cover any expenses of any Licensees of the Licensed Intellectual
Property relating from such action or proceeding, with the remaining amount of the monetary recovery distributed equally
amongst all Licensees of the Licensed Intellectual Property.
4.2 Non-Enforcing Party
Enforcing Party Enforcing Party may reasonably request,
at the Non-
to retain any monetary recovery resulting from any such action or proceeding (including any settlement thereof) and shall
distribute such monetary recovery first to cover any expenses of any Licensees of the Licensed Intellectual Property relating
from such action or proceeding, with the remaining amount of the monetary recovery distributed equally amongst all
Licensees of the Licensed Intellectual Property.
5. Recordation of License
United States Patent and Trademark Office and the United States Copyright Office, and in the corresponding offices or agencies
in any and all countries where it may be required under applicable law, including as a prerequisite to enforcement of the Licensed
Intellectual Property or enforceability of this Agreement in the courts of such countries, and any recordation fees and related
6. Consideration. As consideration in full for the rights granted herein, Licensee shall
trademarks, copyrighted works, trade secrets, technology, know-how, proprietary information, and other intellectual property of
Licensee to Licensor by executing the IP assignment
comprises only a portion of the Licensed Intellectual Property.
7. Confidentiality. Each Party acknowledges that in connection with this Agreement it will gain access to certain confidential and
Confidential Information
of this Agreement, all trade secrets and confidential information included in the Licensed Intellectual Property, including
unpublished patent applications and invention disclosures, will be deemed Confidential Information of Licensor. Each Party shall
maintain the Confidential Information in strict confidence and not disclose any Confidential Information to any other person,
except to its employees who (a) have a need to know such Confidential Information for such Party to exercise its rights or perform
its obligations hereunder; and (b) are bound by written nondisclosure agreements. Each Party shall use reasonable care, at
least as protective as the efforts it uses with respect to its own confidential information, to safeguard the Confidential Information
from use or disclosure other than as permitted hereby.
8. Indemnification. Licensee shall indemnify, defend, and hold harmless Licensor, its affiliates, officers, directors, employees,
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agents and representatives against all losses, liabilities, claims, damages, actions, fines, penalties, expenses or costs (including
-party claim, suit, action, or proceeding
relating to (a) any breach of this Agreement by Licensee; (b) use by Licensee or any sublicensee of any Licensed Intellectual
Property under this Agreement[; except for any claim based solely on infringement, misappropriation, or other violation of any
itted use
of any Licensed Intellectual Property in accordance with this Agreement.
9. Disclaimer; Limitation of Liability.
9.1 Disclaimer. EACH PARTY EXPRESSLY DISCLAIMS ALL REPRESENTATIONS AND WARRANTIES, WHETHER
EXPRESS, IMPLIED, STATUTORY, OR OTHERWISE, IN CONNECTION WITH THIS AGREEMENT AND THE LICENSED
INTELLECTUAL PROPERTY, INCLUDING ANY WARRANTIES OF TITLE, NON-INFRINGEMENT, MERCHANTABILITY,
OR FITNESS FOR A PARTICULAR PURPOSE. WITHOUT LIMITING THE GENERALITY OF THE FOREGOING, (A)
LICENSOR MAKES NO REPRESENTATION OR WARRANTY CONCERNING THE VALIDITY, ENFORCEABILITY, OR
SCOPE OF THE LICENSED INTELLECTUAL PROPERTY; AND (B) LICENSOR SHALL HAVE NO LIABILITY
WHATSOEVER TO LICENSEE OR ANY OTHER PERSON FOR OR ON ACCOUNT OF ANY INJURY, LOSS, OR
DAMAGE ARISING OUT OF OR IN CONNECTION WITH THE MANUFACTURE, USE, OFFER FOR SALE, SALE, OR
IMPORT OF ANY LICENSED PRODUCT OR OTHERWISE IN CONNECTION WITH THE USE OF ANY LICENSED
INTELLECTUAL PROPERTY.
9.2 Limitation of Liability. EXCEPT FOR BILITY FOR INDEMNIFICATION UNDER SECTION 8,
NEITHER PARTY WILL BE LIABLE TO THE OTHER PARTY OR ANY THIRD PARTY FOR ANY CONSEQUENTIAL,
INCIDENTAL, INDIRECT, EXEMPLARY, SPECIAL, OR PUNITIVE DAMAGES RELATING TO THIS AGREEMENT OR
USE OF THE LICENSED INTELLECTUAL PROPERTY HEREUNDER, WHETHER ARISING OUT OF BREACH OF
CONTRACT, TORT (INCLUDING NEGLIGENCE) OR OTHERWISE, REGARDLESS OF WHETHER SUCH DAMAGE
WAS FORESEEABLE AND WHETHER SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES.
10. Term and Termination.
10.1 Term. This Agreement begins on the Effective Date and will remain in force until terminated pursuant to Section
10.2 or 10.3 Term
10.2 Termination by Licensor. Licensor may terminate this Agreement immediately upon written notice to Licensee if (a)
Licensee materially breaches this Agreement and fails to cure such breach within sixty (60) days after receiving written
notice thereof; or (b) Licensee ceases to be an affiliate of Licensor.
10.3 Termination by Licensee. Licensee may terminate this Agreement at any time without cause, and without incurring
any additional obligation, liability, or penalty, by providing at least sixty (60)
11. Assignment
prior written consent. Any purported assignment or transfer in violation of this Section 11 will be void and of no force and effect.
12. General Provisions.
12.1 Amendments. No amendment to this Agreement will be effective unless it is in writing and signed by both Parties.
12.2 No Third-Party Beneficiaries ployees, agents, and
representatives to enforce their rights to indemnification under Section 8, this Agreement solely benefits the Parties and
their respective permitted successors and assigns and nothing in this Agreement, express or implied, confers on any other
person any legal or equitable right, benefit or remedy of any nature whatsoever under or by reason of this Agreement.
12.3 Counterparts. This Agreement may be executed in counterparts, each of which is deemed an original, but all of
which together are deemed to be one and the same agreement.
12.4 Severability. If any term or provision of this Agreement is invalid, illegal, or unenforceable in any jurisdiction, such
invalidity, illegality, or unenforceability will not affect any other term or provision of this Agreement or invalidate or render
unenforceable such term or provision in any other jurisdiction.
12.5 Governing Law. This Agreement, including all exhibits, schedules, attachments, and appendices attached to this
Agreement and thereto, and all matters arising out of or relating to this Agreement, are governed by, and construed in
accordance with, the laws of the State of Delaware, without regard to the conflict of laws provisions thereof to the extent
such principles or rules would require or permit the application of the laws of any jurisdiction other than those of the State
of Delaware.
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12.6 Waiver. Except as otherwise set forth in this Agreement, no failure to exercise, or delay in exercising, any rights,
remedy, power, or privilege arising from this Agreement will operate or be construed as a waiver thereof, nor will any single
or partial exercise of any right, remedy, power, or privilege hereunder preclude any other or further exercise thereof or the
exercise of any other right, remedy, power, or privilege.
12.7 Notices. All correspondence or notices required or permitted to be given under this Agreement must be in writing,
in English and addressed to the other Party. Each Party shall deliver all notices by personal delivery, nationally recognized
overnight courier (with all fees prepaid), facsimile or email (with confirmation of transmission) or certified or registered mail
(in each case, return receipt requested, postage prepaid). Except as otherwise provided in this Agreement, a notice is
effective only (a) upon receipt by the receiving Party; and (b) if the Party giving the notice has complied with the requirements
of this Section.
12.8 Entire Agreement. This Agreement, including and together with any related exhibits, schedules, attachments, and
appendices, constitutes the sole and entire agreement of Licensor and Licensee with respect to the subject matter contained
herein, and supersedes all prior and contemporaneous understandings, agreements, representations, and warranties, both
written and oral, regarding such subject matter.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed as of the date first written above by their
respective officers thereunto duly authorized.
Beringer Commerce Inc.
By_________________
Name: Bill Kostenko
Title: Director
Blue Acorn, LLC
By_________________
Name: Bill Kostenko
Title: Director
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INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
This Intellectual Property Assignment Agreement IP Assignment of July 16, 2020, and effective as of March 20,
2019 is made by iCiDIGITAL, LLC Assignor a Delaware limited-liability company, located at 4000 Westchase Blvd., Suite
280, Raleigh, NC 27607, in favor of Beringer Commerce Inc. Assignee Delaware corporation, located at 261 Madison
Ave, Floor 8, New York, NY 10016 Parties Party , the transferee of certain assets
of Assignor pursuant to a licensing agreement among Assignor and Assignee and the other parties thereto, dated as of July 16,
2020 Licensing Agreement
WHEREAS, under the terms of the Licensing Agreement, Assignor has conveyed, transferred and assigned to Assignee certain
intellectual property of Assignor, and has agreed to execute and deliver this IP Assignment;
NOW THEREFORE, the Parties agree as follows:
1. Assignment. For good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Assignor
and
Assigned IP
(a) all patents issued and patent applications filed, all interest in the invention related thereto, all entitlement or right to
claim priority thereto, and all divisions, continuations, continuations-in-part, reissues, extensions, reexaminations, and
Patents , whereas the assignment of the right to claim entitlement and/or priority is executed nunc
pro tunc and is considered effective as of the filing date of the earliest application to which priority and/or entitlement is
claimed;
(b) all trademark registrations, trademark applications and unregistered trademarks and all extensions and renewals
Trademarks th the goodwill of the business connected with the use of, and symbolized by, the
Trademarks, including but not limited to the following: (i) ICIDIGITAL word mark, (ii) ICIDIGITAL stylized marks (some are
depicted in Attachment A), and (iii) iCiDigital logos (some are depicted in Attachment A);
(c) all copyright registrations, applications for registration, unregistered copyrights and exclusive copyright licenses and
all Copyrights
(d) all trade secrets, technology, know-how, proprietary information, and other intellectual property;
(e) all rights of any kind whatsoever of Assignor accruing under any of the foregoing provided by applicable law of any
jurisdiction, by international treaties and conventions, and otherwise throughout the world;
(f) any and all royalties, fees, income, payments, and other proceeds now or hereafter due or payable with respect to
any and all of the foregoing; and
(g) any and all claims and causes of action with respect to any of the foregoing, whether accruing before, on, or after the
date hereof, including all rights to and claims for damages, restitution, and injunctive and other legal and equitable relief for
past, present, and future infringement, dilution, misappropriation, violation, misuse, breach, or default, with the right but no
obligation to sue for such legal and equitable relief and to collect, or otherwise recover, any such damages.
2. Recordation and Further Actions. Assignor hereby authorizes the Commissioner for Patents and the Commissioner for
Trademarks in the United States Patent and Trademark Office, and the Register of Copyrights in the United States Copyright
Office, and the officials of corresponding entities or agencies in any applicable jurisdictions to record and register this IP
Assignor shall take
such steps and actions, and provide such cooperation and assistance to Assignee and its successors, assigns, and legal
representatives, including the execution and delivery of any affidavits, declarations, oaths, exhibits, assignments, powers of
attorney, or other documents, as may be necessary to effect, evidence, or perfect the assignment of the Assigned IP to Assignee,
or any assignee or successor thereto.
3. Terms of the Licensing Agreement. The Parties hereto acknowledge and agree that this IP Assignment is entered into
pursuant to the Licensing Agreement, to which reference is made for a further statement of the rights and obligations of Assignor
and Assignee with respect to the Assigned IP. The representations, warranties, covenants, agreements, and indemnities
contained in the Licensing Agreement shall not be superseded hereby but shall remain in full force and effect to the full extent
provided therein. In the event of any conflict or inconsistency between the terms of the Licensing Agreement and the terms
hereof, the terms of the Licensing Agreement shall govern.
4. Counterparts. This IP Assignment may be executed in counterparts, each of which shall be deemed an original, but all of
which together shall be deemed one and the same agreement. A signed copy of this IP Assignment delivered by facsimile, e-
mail, or other means of electronic transmission shall be deemed to have the same legal effect as delivery of an original sign ed
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copy of this IP Assignment.
5. Successors and Assigns. This IP Assignment shall be binding upon and shall inure to the benefit of the Parties hereto and
their respective successors and assigns.
6. Governing Law. This IP Assignment and any claim, controversy, dispute, or cause of action (whether in contract, tort or
otherwise) based upon, arising out of, or relating to this IP Assignment and the transactions contemplated hereby shall be
governed by, and construed in accordance with, the laws of the United States and the State of Delaware, without giving effect
to any choice or conflict of law provision or rule (whether of the State of Delaware or any other jurisdiction).
IN WITNESS WHEREOF, Assignor has duly executed and delivered this IP Assignment as of the date first above written.
iCiDIGITAL, LLC
By: ________________________________
Name: Bill Kostenko
Title: Director
AGREED TO AND ACCEPTED: Beringer Commerce, Inc.
By: _______________________________
Name: Bill Kostenko
Title: Director
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Attachment A
INTELLECTUAL PROPRTY ASSIGNMENT AGREEMENT
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Intercompany Intellectual Property License Agreement
Agreement of July 16, 2020, and effective as of March
20, 2019 Effective Date and between Beringer Licensor
261 Madison Ave, Floor 8, New York, NY 10016 and iCiDigital, LLC Licensee a Delaware limited-liability company, located
at 4000 Westchase Blvd., Suite 280, Raleigh, NC 27607 Parties Party
WHEREAS, Licensor and Licensee are members of a group of affiliated companies engaged in providing services to analyze,
improve and create digital customer experiences Business
WHEREAS, Licensor and Licensee have executed, or are contemporaneously executing, an Intellectual Property Assignment
IP Assignment , copyrighted works, trade secrets,
technology, know-how, proprietary information, and other intellectual property of Licensee to Licensor;
WHEREAS, Licensor, owns certain patents, trademarks, copyrighted works, trade secrets, technology, know-how, proprietary
information, Licensed Intellectual Property
WHEREAS, Licensee wishes to use the Licensed Intellectual Property, and Licensor is willing to grant to Licensee a license to
use the
NOW, THEREFORE, in consideration of the mutual covenants and agreements hereinafter set forth and for other good and
valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties hereby agree as follows:
1. License.
1.1 License Grant. Subject to the terms and conditions of this Agreement, Licensor hereby grants to Licensee during the
Term (as defined below) a non-exclusive, royalty-free, non-transferable, sublicensable license to use the Licensed
Intellectual Property in connection with the conduct of the Business, including to:
(a) make, use, offer to sell, sell, import, advertise, market, and distribute products and services relating to the Business,
and any other products or services that the Parties may agree upon in writing from time to time (collectively, the
Licensed Products ;
(b) use one or more of the trademarks , including
Blue Acorn iCi , as applicable; and
(c) reproduce, publicly perform, transmit, publicly display, distribute, and create derivative works based on the
copyrighted works for purposes relating to the Business.
1.2 Sublicensing. Licensee may grant sublicenses under this Agreement, provided that: (a) Licensee shall ensure that
each sublicensee complies with the applicable terms and conditions of this Agreement; (b) any act or omission of a
sublicensee that would be a material breach of this Agreement if performed by Licensee will be deemed to be a material
breach by Licensee; and (c) each sublicense will terminate automatically effective as of the termination of this Agreement
under Section 10.
1.3 Reservation of Rights. Licensor hereby reserves all rights not expressly granted to Licensee under this Agreement.
2. Use of Licensed Intellectual Property.
2.1 Notices. Licensee shall ensure that all use of Licensed Intellectual Property hereunder is accompanied by or marked
with the appropriate proprietary rights notices, symbols, and legends as may be reasonably necessary under applicable law
to maintain the Licensed
may be specified by Licensor.
2.2 Modifications. As between the Parties, Licensor owns any improvement, enhancement, or other modification of or
derivative work based on any of the Licensed Intellectual Property made by or on behalf of Licensee or Licensor (each, a
Modification Licensee
Modification see hereby assigns to Licensor all of its right, title, and interest in and to all Licensee Modifications,
including all rights to apply for any intellectual property registrations with respect to such Licensee Modifications and all
enforcement rights and remedies for past, present, and future infringement thereof and all rights to collect royalties and
damages therefor. All intellectual property applications for registration filed by Licensor with respect to any such Licensee
Modification and all patents or registrations issuing therefrom shall automatically be included in the Licensed Intellectual
Property and subject to the license granted to Licensee under Section 1.1. At the request of Licensor, Licensee shall
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promptly execute and deliver such documents as may be necessary or desirable to effect and perfect the foregoing
assignment of rights.
2.3 Quality Control. Licensor may exercise quality control over all uses of any trademarks included in the Licensed
o maintain the validity of the Licensed Marks and protect the goodwill associated
therewith.
3. Ownership and Protection of the Licensed Intellectual Property.
(a) Acknowledgment of Ownership. Licensee and Licensor have executed, or are contemporaneously executing, the
IP Assignment conveying, transferring and assigning the patents, trademarks, copyrighted works, trade secrets,
technology, know-how, proprietary information, and other intellectual property of Licensee to Licensor. Further,
Licensee acknowledges that Licensor owns and will retain all right, title, and interest in and to the Licensed Intellectual
Property subject to the license granted in Section 1.1. All use by Licensee or any sublicensee of the Licensed Marks,
and all goodwill accruing therefrom, will inure solely to the benefit of Licensor.
(b) Prosecution and Maintenance. Licensor has the sole right, in its discretion, to file, prosecute, and maintain all
applications, registrations, and patents relating to the Licensed Intellectual Property. Licensee shall provide, at the
Any other expenses related to the filing, prosecuting or maintaining of the applications, registrations and patents related
to the Licensed Intellectual Property shall be shared equally amongst all Licensees of the Licensed Intellectual Property.
4. Enforcement.
4.1 Licensee shall promptly notify Licensor in writing of any actual, suspected, or threatened infringement,
misappropriation, or other violation of any Licensed Intellectual Property by any third party of which it becomes aware.
Licensor has the sole right, in its discretion, to (a) bring any action or proceeding with respect to any such infringement; (b)
defend any declaratory judgment action concerning any Licensed Intellectual Property; and (c) control the conduct of any
such action or proceeding (including any settlement thereof). Licensee shall provide Licensor with all assistance that
Licensor may reasonably request, at Licensee
be entitled to retain any monetary recovery resulting from any such action or proceeding (including any settlement thereof)
and shall distribute such monetary recovery first to cover any expenses of any Licensees of the Licensed Intellectual
Property relating from such action or proceeding, with the remaining amount of the monetary recovery distributed equally
amongst all Licensees of the Licensed Intellectual Property.
4.2 Non-Enforcing Party
shall provide the other Enforcing Party
at the Non-
to retain any monetary recovery resulting from any such action or proceeding (including any settlement thereof) and shall
distribute such monetary recovery first to cover any expenses of any Licensees of the Licensed Intellectual Property relating
from such action or proceeding, with the remaining amount of the monetary recovery distributed equally amongst all
Licensees of the Licensed Intellectual Property.
5. Recordation of License
United States Patent and Trademark Office and the United States Copyright Office, and in the corresponding offices or agencies
in any and all countries where it may be required under applicable law, including as a prerequisite to enforcement of the Licensed
Intellectual Property or enforceability of this Agreement in the courts of such countries, and any recordation fees and related
6. Consideration. As consideration in full for the rights granted herein, Licensee shall
trademarks, copyrighted works, trade secrets, technology, know-how, proprietary information, and other intellectual property of
Licensee to Licensor by executing the IP assignment
comprises only a portion of the Licensed Intellectual Property.
7. Confidentiality. Each Party acknowledges that in connection with this Agreement it will gain access to certain confidential and
Confidential Information
of this Agreement, all trade secrets and confidential information included in the Licensed Intellectual Property, including
unpublished patent applications and invention disclosures, will be deemed Confidential Information of Licensor. Each Party shall
maintain the Confidential Information in strict confidence and not disclose any Confidential Information to any other person,
except to its employees who (a) have a need to know such Confidential Information for such Party to exercise its rights or perform
its obligations hereunder; and (b) are bound by written nondisclosure agreements. Each Party shall use reasonable care, at
least as protective as the efforts it uses with respect to its own confidential information, to safeguard the Confidential Information
from use or disclosure other than as permitted hereby.
8. Indemnification. Licensee shall indemnify, defend, and hold harmless Licensor, its affiliates, officers, directors, employees,
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Case 5:21-cv-00251-BO Document 1-2 Filed 06/10/21 Page 14 of 16
agents and representatives against all losses, liabilities, claims, damages, actions, fines, penalties, expenses or costs (including
-party claim, suit, action, or proceeding
relating to (a) any breach of this Agreement by Licensee; (b) use by Licensee or any sublicensee of any Licensed Intellectual
Property under this Agreement[; except for any claim based solely on infringement, misappropriation, or other violation of any
tted use
of any Licensed Intellectual Property in accordance with this Agreement.
9. Disclaimer; Limitation of Liability.
9.1 Disclaimer. EACH PARTY EXPRESSLY DISCLAIMS ALL REPRESENTATIONS AND WARRANTIES, WHETHER
EXPRESS, IMPLIED, STATUTORY, OR OTHERWISE, IN CONNECTION WITH THIS AGREEMENT AND THE LICENSED
INTELLECTUAL PROPERTY, INCLUDING ANY WARRANTIES OF TITLE, NON-INFRINGEMENT, MERCHANTABILITY,
OR FITNESS FOR A PARTICULAR PURPOSE. WITHOUT LIMITING THE GENERALITY OF THE FOREGOING, (A)
LICENSOR MAKES NO REPRESENTATION OR WARRANTY CONCERNING THE VALIDITY, ENFORCEABILITY, OR
SCOPE OF THE LICENSED INTELLECTUAL PROPERTY; AND (B) LICENSOR SHALL HAVE NO LIABILITY
WHATSOEVER TO LICENSEE OR ANY OTHER PERSON FOR OR ON ACCOUNT OF ANY INJURY, LOSS, OR
DAMAGE ARISING OUT OF OR IN CONNECTION WITH THE MANUFACTURE, USE, OFFER FOR SALE, SALE, OR
IMPORT OF ANY LICENSED PRODUCT OR OTHERWISE IN CONNECTION WITH THE USE OF ANY LICENSED
INTELLECTUAL PROPERTY.
9.2 Limitation of Liability. EXCEPT FOR ILITY FOR INDEMNIFICATION UNDER SECTION 8,
NEITHER PARTY WILL BE LIABLE TO THE OTHER PARTY OR ANY THIRD PARTY FOR ANY CONSEQUENTIAL,
INCIDENTAL, INDIRECT, EXEMPLARY, SPECIAL, OR PUNITIVE DAMAGES RELATING TO THIS AGREEMENT OR
USE OF THE LICENSED INTELLECTUAL PROPERTY HEREUNDER, WHETHER ARISING OUT OF BREACH OF
CONTRACT, TORT (INCLUDING NEGLIGENCE) OR OTHERWISE, REGARDLESS OF WHETHER SUCH DAMAGE
WAS FORESEEABLE AND WHETHER SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES.
10. Term and Termination.
10.1 Term. This Agreement begins on the Effective Date and will remain in force until terminated pursuant to Section
10.2 or 10.3 Term
10.2 Termination by Licensor. Licensor may terminate this Agreement immediately upon written notice to Licensee if (a)
Licensee materially breaches this Agreement and fails to cure such breach within sixty (60) days after receiving written
notice thereof; or (b) Licensee ceases to be an affiliate of Licensor.
10.3 Termination by Licensee. Licensee may terminate this Agreement at any time without cause, and without incurring
any additional obligation, liability, or penalty, by providing at least sixty (60)
11. Assignment. Licensee may not assign o
prior written consent. Any purported assignment or transfer in violation of this Section 11 will be void and of no force and effect.
12. General Provisions.
12.1 Amendments. No amendment to this Agreement will be effective unless it is in writing and signed by both Parties.
12.2 No Third-Party Beneficiaries
representatives to enforce their rights to indemnification under Section 8, this Agreement solely benefits the Parties and
their respective permitted successors and assigns and nothing in this Agreement, express or implied, confers on any other
person any legal or equitable right, benefit or remedy of any nature whatsoever under or by reason of this Agreement.
12.3 Counterparts. This Agreement may be executed in counterparts, each of which is deemed an original, but all of
which together are deemed to be one and the same agreement.
12.4 Severability. If any term or provision of this Agreement is invalid, illegal, or unenforceable in any jurisdiction, such
invalidity, illegality, or unenforceability will not affect any other term or provision of this Agreement or invalidate or render
unenforceable such term or provision in any other jurisdiction.
12.5 Governing Law. This Agreement, including all exhibits, schedules, attachments, and appendices attached to this
Agreement and thereto, and all matters arising out of or relating to this Agreement, are governed by, and construed in
accordance with, the laws of the State of Delaware, without regard to the conflict of laws provisions thereof to the extent
such principles or rules would require or permit the application of the laws of any jurisdiction other than those of the State
of Delaware.
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Case 5:21-cv-00251-BO Document 1-2 Filed 06/10/21 Page 15 of 16
12.6 Waiver. Except as otherwise set forth in this Agreement, no failure to exercise, or delay in exercising, any rights,
remedy, power, or privilege arising from this Agreement will operate or be construed as a waiver thereof, nor will any single
or partial exercise of any right, remedy, power, or privilege hereunder preclude any other or further exercise thereof or the
exercise of any other right, remedy, power, or privilege.
12.7 Notices. All correspondence or notices required or permitted to be given under this Agreement must be in writing,
in English and addressed to the other Party. Each Party shall deliver all notices by personal delivery, nationally recognized
overnight courier (with all fees prepaid), facsimile or email (with confirmation of transmission) or certified or registered mail
(in each case, return receipt requested, postage prepaid). Except as otherwise provided in this Agreement, a notice is
effective only (a) upon receipt by the receiving Party; and (b) if the Party giving the notice has complied with the requirements
of this Section.
12.8 Entire Agreement. This Agreement, including and together with any related exhibits, schedules, attachments, and
appendices, constitutes the sole and entire agreement of Licensor and Licensee with respect to the subject matter contained
herein, and supersedes all prior and contemporaneous understandings, agreements, representations, and warranties, both
written and oral, regarding such subject matter.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed as of the date first written above by their
respective officers thereunto duly authorized.
Beringer Commerce Inc.
By_________________
Name: Bill Kostenko
Title: Director
iCiDIGITAL, LLC
By_________________
Name: Bill Kostenko
Title: Director
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Case 5:21-cv-00251-BO Document 1-2 Filed 06/10/21 Page 16 of 16
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