Exhibit 10.1


SETTLEMENT AND ASSIGNMENT AGREEMENT
 
 The SETTLEMENT AND ASSIGNMENT AGREEEMENT (“Agreement”) is made by and between Dropbox, Inc., a Delaware corporation with an address of 185 Berry Street, 4th Floor, San Francisco, California 94107 (“Dropbox”), and Officeware Corporation d/b/a Filesanywhere.com, a Texas corporation with an address of 3301 Airport Freeway, Suite 200, Bedford, Texas 76021 (“Officeware) (individually referred to as a “Party,” and collectively the “Parties”) and is effective as of this 22nd day of April, 2013 (the “Effective Date”).
 
 WHEREAS, on September 1, 2009, Dropbox filed U.S. Trademark Application Serial No. 77/817,716 (the “Dropbox Application”) with the United States Patent and Trademark Office (the “USPTO”) for the mark “DROPBOX” (the “DROPBOX Mark”);
 
 WHEREAS,on April 12, 2010, Officeware filed U.S. Trademark Application Serial No. 85/012,206 (the “Officeware Application”) with the USPTO for the DROPBOX Mark;
 
 WHEREAS, on June 29, 2011, Officeware initiated Opposition Proceeding No. 91-200,444 before the Trademark Trial and Appeal Board of the USPTO (the “TTAB”) opposing registration of the Dropbox Applicatin (the “Opposition”)’
 
 WHEREAS, on June 30, 2011, Officeware filed Lawsuit No. 3:11-cv-01448-L against Dropbox in the United States District Court for the Northern District of Texas (the “Lawsuit”) alleging, among other things, that Dropbox’s use of an open-box logo (the “Dropbox Design”) infringes Officeware’s rights in an open box design element (the design element shown in Schedule A (not including the FILESANYWHERE word mark), which may be referred to as the “Officeware Design”), and that Dropbox’s use of the DROPBOX Mark infringes Officeware’s rights in the DROPBOX Mark;
 
 WHEREAS, third parties, including Thru, LLC/Thru, Inc., YouSendIt, Inc., Box, Inc., Radnostix LLC, and John C. Horton (collectively “Third Party Claimants”) have each claimed superior rights to the DROPBOX Mark in relation to Dropbox, and Dropbox has not settled, in any manner, with any of the Third Party Claimants;
 
 WHEREAS, Officeware represents and warrants, to its knowledge and based on the facts set forth in an accompanying declaration attached hereto as Schedule D, that it is the senior-most user of the DROPBOX Mark and the Officeware Design in the United States and that its trademark rights in the DROPBOX Mark and the Officeware Design are superior to those asserted by any of the Third Party Claimants and any other person or entity;
 
 WHEREAS, as part of the resolution of this matter, Dropbox is desirous of acquiring all right, title, and interest in and to the DROPBOX Mark, Officeware Application, and Officeware Design, and of recording Dropbox’s status as owner of the entire right, title, and interest in and to the DROPBOX Mark, Officeware Application, and Officeware Design, and Officeware is desirous of assigning all right, title, and interest in and to the DROPBOX Mark, Officeware Application, and Officeware Design as set forth below and in accordance with in the Trademark Assignment Agreement (the “Assignment”) at Schedule B; and
 
 WHEREAS, the Parties desire to resolve their differences and settle the Lawsuit, the Opposition, and all other disputes and potential claims which may arise out of the facts alleged in the pleadings in the Lawsuit or in the Opposition, or which relate to the Parties’ rights in the DROPBOX Mark, the Dropbox Application, the Officeware Application, the Dropbox Design, and the Officeware Design, without any admission of liability or culpability on the part of either Party.
  The appearance of [***] denotes confidential information that has been omitted from this Exhibit 10.1 and filed separately with the Securities and Exchange Commission pursuant to a confidential treatment request under Rule 24b-2 of the Securities Exchange Act of 1934, as amended.
  
  NOW THEREFORE, in consideration of the mutual promises and covenants set forth in this Agreement, and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:










3.           No Admission of Liability. Nothing in this Agreement or otherwise shall be construed as an admission of any fact, wrongdoing, or liability of any kind by any of the Parties or by any other person. This Agreement shall not be construed as a waiver of any defense or an admission by either Party of the correctness of any legal position or argument taken or espoused by the other.
 
 4.           Dismissal of the Lawsuit and Withdrawal of the Opposition. On or before the fifth calendar day after the Effective Date (counting from the first day after the Effective Date), and on the same day in which Dropbox makes the entire payment in accordance with Paragraph 11 below, and in any event no later than the Court’s deadline, which the parties acknowledge may have to be extended, Officeware shall file a dismissal that terminates the Lawsuit with prejudice and Officeware shall within 48 hours thereafter file all papers with the TTAB to withdraw the Opposition with prejudice.




- 2 -




5.           Substantiation of Officeware’s Rights.  Officeware represents and warrants that:
  a. Officeware, to its knowledge is the earliest and continuous owner of the trademark rights in the DROPBOX Mark and the Officeware Design for the services described in the Officeware Application and the Lawsuit.
  b. Officeware, to its knowledge (i) is the senior-most user of the DROPBOX Mark and the Officeware Design in the United States for the services described in the Officeware Application and the Lawsuit, and (ii) owns trademark rights in the DROPBOX Mark and the Officeware Design that are superior to those asserted by any of the Third Party Claimants and any other person or entity.
  c. Officeware provides example website screenshots and other available documentation for each year that Officeware has used the DROPBOX Mark, as shown in Schedule C.  These documents, which are representative chronologically and by category of Officeware’s use of the DROPBOX Mark, demonstrate Officeware’s continuous use of the DROPBOX Mark beginning at a time at least as early as January 11, 2004 and continuing to the Effective Date.
  d. Officeware provides the sworn declaration from its Founder and CEO, Mr.  Timothy M.  Rice, as shown in Schedule D, which reasonably substantiates continuous use of the DROPBOX Mark beginning at a time at least as early as January 11, 2004 and continuing to the Effective Date and authenticates the documents shown in Schedule C.
  6.           Assignment and Transfer of Officeware’s Rights.  Officeware hereby assigns to Dropbox all right, title, and interest in and to, including without limitation, any common-law rights, copyright, and trademark rights that Officeware holds in the DROPBOX Mark, the Dropbox Design, and the Officeware Design, together with the goodwill symbolized by and associated therewith, in accordance with the Assignment.  The Parties agree that the assignment in this Paragraph 6 shall be effective only upon Dropbox making the entire payment in accordance with Paragraph 11 below and upon Officeware executing and delivering the Assignment, as shown in Schedule B, no later than the fifth calendar day after the Effective Date (counting from the first day after the Effective Date).
  7.           Ownership of Marks.  Officeware acknowledges that, pursuant to Paragraph 6 and the Assignment, Dropbox shall acquire all of Officeware’s rights in the DROPBOX Mark, the Dropbox Design, the Officeware Design, and the Officeware Application.  Officeware shall not contest or deny Dropbox’s or any assignee’s title to, ownership of, or the validity of the DROPBOX Mark, Dropbox Design, Officeware Design, and Officeware Application.  Neither Officeware nor any of its respective officers, directors, employees, investors, shareholders, administrators, attorneys, divisions, parents, affiliates, subsidiaries, predecessor and successor corporations shall challenge, or otherwise dispute or assist third parties in any way in challenging Dropbox’s rights to the DROPBOX Mark, the Dropbox Design, the Officeware Design, and the Officeware Application, including, but not limited to, in any judicial, administrative, governmental or arbitral proceeding anywhere in the world.
  - 3 -
  8.           Officeware’s Representations and Warranties.  Officeware represents and warrants that it has not previously assigned any rights in the DROPBOX Mark, the Dropbox Design, the Officeware Design or the Officeware Application to any person or entity, and that it is not aware of any challenge, or communication suggesting a challenge, to its use or ownership of the DROPBOX Mark, the Dropbox Design, the Officeware Design, or the Officeware Application, other than the challenge made by Dropbox and the rights asserted by the Third Party Claimants.  Officeware further represents and warrants that there is no claim of ownership of the DROPBOX Mark, the Dropbox Design, the Officeware Design, or the Officeware Application by any shareholder, officer, director, related company of Officeware, any other company with a shareholder, officer, or director in common with Officeware, or any other person or entity.  Officeware represents and warrants that it has not filed any trademark application in any jurisdiction anywhere in the world for the DROPBOX Mark, or any confusingly similar mark thereof, other than the Officeware Application, and that it does not won any domain names containing the letter-string “dropbox”, or any confusingly similar mark.  Officeware further represents and warrants that it has not filed any trademark applications in any jurisdiction anywhere in the world for the Officeware Design, or any confusingly similar mark thereof.
  9.           Officeware’s Phase-Out.  Officeware and each of its officers, directors, employees, investors, shareholders, administrators, attorneys, divisions, parents, affiliates, subsidiaries, predecessor and successor corporations, and assigns hereby agree that they shall not make any new uses of the DROPBOX Mark, the Officeware Design, the Dropbox Design, or any confusingly similar marks thereto beyond those Officeware was making as of the Effective Date, and that they shall immediately and permanently stop all keyword advertising incorporating the DROPBOX Mark or any confusingly similar marks thereto, including without limitation in Google AdWords and similar programs.  Officeware and each of its officers, directors, employees, investors, shareholders, administrators, attorneys, divisions, parents, affiliates, subsidiaries, predecessor and successor corporations, and assigns, hereby further agree to permanently stop using the DROPBOX Mark, the Officeware Design, the Dropbox Design, and any confusingly similar marks thereto, in any manner whatsoever in any jurisdiction anywhere in the world, including, but not limited to, on Officeware’s website at <www.filesanywhere.com> and in any other marketing materials, advertising, stationery, business cards, telephone listings, Internet listings, domain names, website meta-tags, email addresses, social media, products, service, or any other goods, services, or commercial activities within twelve (12) months of the Effective Date.













- 4 -




13. Warranty of Authority. Each Party represents and warrants that the undersigned has the authority to act on its behalf and to bind it and all who may claim through it to the terms and conditions of this Agreement. Each of the Parties represents and warrants to the other that it has not heretofore assigned or transferred or purported to assign or transfer any of its claims or obligations herein, or any part or portion thereof, and agrees to indemnify and hold harmless the other from and against any claim, demand, damage, debt, liability, account, reckoning, obligation, cost, expense, lien, action, and cause of action (including the payment of attorney fees and costs actually incurred, whether or not litigation is commenced) based on, in connection with, or arising out of any such assignment or transfer or purported or claimed assignment or transfer.
 
 14.Notice. Any notice provided for in this Agreement shall be in writing and shall be delivered personally, by overnight mail, or by email and certified U.S. mail, with postage prepaid, to the following addresses:
   To Dropbox:



General Counsel

Dropbox, Inc.

185 Berry Street, 4th Floor

San Francisco, California 94107







With a copy to:



David H. Kramer

Wilson Sonsini Goodrich & Rosati

650 Page Mill Rd.,

Palo Alto, CA  94304

650-493-9300

dkramer@wsgr.com
To Officeware:



Tim Rice

CEO

Officeware Corporation

3301 Airport Freeway, Suite 200

Bedford, Texas  76021

972.893.3310

time@filesanywhere.com



With a copy to:



Robert J. Ward

Gardere Wynne Sewell

1601 Elm St., Suite 3000

Dallas, TX  75201

214-999-4266

rward@gardere.com
  
  - 5 -




21.Successors and Assigns. This Agreement is binding on each of the successors and assigns of the Parties. Each of the Parties warrants that the person executing this Agreement on its behalf is duly authorized to do so.















DROPBOX, INC.

OFFICEWARE CORPORATION D/B/A

FILESANYWHERE.COMBy:
/s/ Ramsey Homsany

By:
/s/ Timothy M. RiceName:
Ramsey Homsany

Name:
Timothy M. RiceTitle:
General Counsel

Title:
CEO/PresidentDate:
4/22/2013

Date:
4/18/2013




- 6 -




SCHEDULE A
























Schedule B
  TRADEMARK ASSIGNMENT
  WHEREAS, Officeware Corporation d/b/a Filesanywhere.com, a corporation of the State of Texas,  located and doing business at 3301 Airport Freeway, Suite 200, Bedford, Texas 76021 (“Assignor”), has adopted, is using, or intends to use the trademark DROPBOX, and is the owner of the following United States trademark application for registration in the U.S. Patent and Trademark office:
  Trademark
Application Serial No.DROPBOX
85012206
 
 WHEREAS, Dropbox, Inc., a corporation of the State of Delaware, located and doing business at 185 Berry St. 4th Fl., San Francisco, California 94107 (“Assignee”), desires to acquire any and all common law rights in the DROPBOX trademark and associated good will that Assignor may have owned, as well as the trademark application referenced above (collectively, the “Trademark Rights”);
  NOW, THEREFORE, for good and valuable consideration, the receipt of which is hereby acknowledged, Assignor, hereby assigns to Assignee all of the Trademark Rights, including all right, title and interest that Assignor may have owned in the DROPBOX trademark and application, together with the goodwill of the business symbolized by the DROPBOX trademark and application
  Executed on this 18th day of April, 2013
  
 Officeware Corporation d/b/a/ Filesanywhere.com/s/ Timothy M. RiceBy:
Timothy M. RiceTitle:
CEO/President
  
 
 SCHEDULE C
 
 SCHEDULE C










Schedule C-1














January 2004


Usage Screens














Schedule C-2




Schedule C-3
  
  Schedule C-4
  
   Schedule C-5
    Chronological
 Usage Screenshots
      Schedule C-6
 
  Schedule C-7
  
     Schedule C-8
  
   Schedule C-9
  
  Schedule C-10
  
  Schedule C-11
  
  Schedule C-12
  
  Schedule C-13
  
    Schedule C-14
  
    Schedule C-15
  
  Schedule C-16
  
  Schedule C-17
  
   Schedule C-18
    March 8, 2013 Usage
        Schedule C-19
  
     Schedule C-20
  SCHEDULE D








SCHEDULE D



















DECLARATION OF TIMOTHY M. RICE
 
 I, Timothy M. Rice hereby declare:
 
 1.
My name is Timothy M. Rice.  I am over the age of eighteen (18) years, have never been convicted of a felony or crime involving moral turpitude, and am otherwise competent to make this declaration.
 
 2.
I am the President and Chief Executive Officer of Officeware Corporation d/b/a FilesAnywhere.com (“Officeware”).  I founded the company back in 1995.  I have personal knowledge of the facts stated herein and/or they are based on my review of Officeware’s business records.
 
 3.
Officeware began using the DROPBOX word mark prior to January 11, 2004.  An example of Officeware’s use of the DROPBOX word mark is attached to my declaration as Exhibit A, which includes a 2003 copyright legend.
  4.
I investigated Officeware’s use of the DROPBOX mark.  I checked our business records including available computer files, email and phone records.  I determined that the DROPBOX mark was used in late December 2003 in connection with our Flower Mound customer for the DROPBOX service.  I identified a web page showing a copyright date of 2003, as mentioned above, as a result of this investigation.  I concluded that Officeware provided the DROPBOX service at least as early as January 1, 2004.  These dates were also confirmed from phone records and a call with our contact at Flower Mound in 2013.
  5.
After December 2003, the number of Officeware customers increased, and Officeware has never discontinued the use of the DROPBOX from this time to the present.
  6.
In August of 2004 Officeware’s use of the DROPBOX mark continued to expand.  This use can be, and was, confirmed by checking the records on archive.org.  This date was used in Officeware’s federal trademark application.
  7.
Exhibit B to my declaration provides an example of Officeware’s use of the DROPBOX marks in connection with the provision of remote file storage services to the City of Flower Mound and its customers.  Exhibits A and B are illustrative of Officeware’s continuous use of the marks through at least January of 2005.
  8.
Additionally, beginning at least as early as August of 2004, Officeware used the DROPBOX marks in connection with its provision of remote file storage and file sharing services available to Officeware customers.  Exhibit C is an illustration of Officeware’s use of the marks from at least as early as August of 2004 through the present.
   Schedule D-2
  9.
Exhibits A, B, and C are incorporated herein by reference.
 
 I declare under penalty of perjury that the above is true and correct, that all statements above that are made of my own knowledge are true, and that all statements made on information and belief are believed to be true.
 
 SIGNED this 28 day of March, 2013 at 11:36am
 
 /s/ Timothy M. RiceTimothy M. Rice


Schedule D-3







Schedule D-4









Schedule D-5









Schedule D-6


SCHEDULE E