EXHIBIT
10.3


 


CONFIDENTIAL PORTIONS OMITTED


 


AGREEMENT


 


This
is an agreement (the “Agreement”) between Digimarc Corporation, a Delaware
Corporation, having a place of business at 9405 SW Gemini Drive, Beaverton,
Oregon 97008, and its subsidiaries (“Digimarc”), and The Nielsen Company (US), Inc.,
a New York Corporation, having a place of business at 770 Broadway, New York,
New York 10003, its Subsidiaries
and Affiliates (“Nielsen”).


 


Nielsen “Affiliates” are
The Nielsen Company, B.V., a Netherlands corporation, and any of the
Subsidiaries of The Nielsen Company, B.V. that are not also a Subsidiary of
Nielsen (US).  Nielsen “Subsidiaries”
include any corporation, partnership or other entity in which a party holds,
directly or indirectly, ownership of, or the right to vote on behalf of, more
than forty percent (40%) of its voting stock or other voting equity interests,
for so long as such ownership or right to vote exists.  An entity in which Nielsen owns more than
forty percent (40%) of its voting stock or other voting equity interests but
less than a majority of the voting stock or other voting equity interests, is
not considered a Subsidiary under this definition unless that entity agrees in
writing to be bound to all applicable provisions of this Agreement.


 


The
effective date of this Agreement is October 1, 2007 (“Effective Date”) and
the parties hereby further agree:


 


1.              IP Ownership and License Grants.


 


1.1.   Digimarc Patents.  “Digimarc Patents” means all patents and
patent applications owned by Digimarc that Digimarc has the right to license,
and any reissues, continuations, continuations-in-part, divisionals,
extensions, re-examinations, substitutions and renewals of any such patents and
patent applications and any and all foreign counterparts and equivalents of the
foregoing; excluding U.S.
Patent Nos. [**], and any reissues, continuations, continuations-in-part,
divisionals, extensions, re-examinations, substitutions, renewals and foreign
counterparts and equivalents of those patents.


 


1.2.   Current Nielsen Products and Services. 
Subject to the terms and conditions of this Agreement, as of January 1,
2008 (the “License Initiation Date”), Digimarc hereby grants to Nielsen a worldwide[**]
(except as set forth in Section 6.4) license under the Digimarc Patents to
make, have made, use, import, Sell and Offer to Sell Current Nielsen Products
and Services.  “Current Nielsen Products and Services”
means [**].


 


1.3.   CIMR Products and Services. 
Subject to the terms and conditions of this Agreement, as of the License
Initiation Date, Digimarc hereby grants to Nielsen a worldwide[**] (except as
set forth in Section 6.4) license under the Digimarc Patents to make, have
made, use, import, Sell and Offer to Sell the CIMR Products and Services.  “CIMR Products and Services” means products and 


 






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services that are made
or offered by and/or for Nielsen and that are provided to customers by Nielsen and described in Appendix D, and any
improvements and other modifications, that are developed and marketed as a
result of this Agreement, using [**].


 


1.4.   Technology and Patents Developed Pursuant to Services
Agreement.  All (a) technology and patents arising
from Services performed by Digimarc for Nielsen and paid for by Nielsen and (b) technology
and patents that are jointly developed by Nielsen and Digimarc arising from
Digimarc Services (collectively, the “[**] Technology”) shall be [**] owned by
[**].  For so long as both the Current
Nielsen Products and Services and CIMR Products and Services licenses are in
effect and subject to Digimarc’s pre-existing agreements (as of the Effective
Date, and as may be amended and/or extended from time to time in ways
consistent with the relevant terms as they exist as of the Effective Date),
Digimarc covenants that it shall [**] right, license or permission in or to any
[**] Technology [**] the fields of CIMR Products and Services and [**]in which
Nielsen conducts such activities as of the Effective Date (“[**]”).


 


1.5.         License Limitations and Exclusions.


 


1.5.1.      Pre-existing
License.  The
licenses for Current Nielsen Products and Services and CIMR Products and
Services do not cover products and services covered by the license from Digimarc
to [**], later [**] to Nielsen [**].


 


1.5.2.      Excluded
Applications.  Neither Current
Nielsen Products and Services nor CIMR Products and Services shall include:
[**].


 


1.5.3.      Sell and Offer
to Sell Defined.  The terms “Sell”
and “Offer to Sell” and other forms of such terms, with respect to software
products, mean the granting of licenses to use such software products in
accordance with this Agreement.


 


1.5.4.      No implied licenses.  Nothing contained in this Agreement will be construed as conferring by
implication, estoppel or otherwise, any license or other right under any patent
rights or other industrial or intellectual property rights of either party
except for the licenses expressly granted herein.  For the avoidance of doubt,
the licenses for Current Nielsen Products and Services and CIMR Products and
Services do not authorize Nielsen to grant any license concerning any Digimarc
Patents that is not
in connection with the use of CIMR Products and Services or Current Nielsen
Products and Services.


 


2.     Royalties
and Other Consideration for Licenses.


 


2.1.         Consideration Exchanged. 
The minimum royalty payments and ongoing royalties and fees for Digimarc
Services set forth in this Agreement provide 


 






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partial
consideration for several elements of value provided by Digimarc including: (i) licenses
for both Current Nielsen Products and Services and CIMR Products and Services; (ii) use of Digimarc’s technology and market
development work prior to the Effective Date; (iii) [**]; (iv) [**];
and (v) foregoing potential claims against alleged use of Digimarc Patents
by Nielsen in Current Nielsen Products and Services while that license is in
place.


 


2.2.         Current Nielsen Products and
Services.  The license
for Current Nielsen Products and Services shall remain in effect for so long as
Nielsen is in compliance with payments of CIMR Royalties and Digimarc Service
Fees, the Nielsen Commitment of Resources, and all other material terms of this
Agreement.  The license will become
permanent once Nielsen has paid [**]. 
The fully paid up license to Current Nielsen Products and Services will
[**], and will continue in effect prospectively and perpetually without further
fees or royalties to Digimarc, and will not be thereafter terminable. [**].


 


2.3.         CIMR Products and Services.  The license for CIMR Products and Services
shall be royalty bearing:


 


2.3.1.     Royalties.  Nielsen will pay to Digimarc royalties on
CIMR Net Revenues for each year (a “Royalty Year”), as follows:


 


	
  In Royalty Year One
  (Jan.1-Sept. 30, 2008)

  	
   

  	
  [**]%

  
	
  In Royalty Year Two
  (Oct. 1, 2008-Sept. 30, 2009)

  	
   

  	
  [**]%

  
	
  In Royalty Year Three

  	
   

  	
  [**]%

  
	
  In Royalty Year Four

  	
   

  	
  [**]%

  
	
  In Royalty Year Five; and
  each year thereafter

  	
   

  	
  [**]%.

  



 


2.3.2                      CIMR Net Revenues.  “CIMR Net Revenues” means all revenues
recognized by Nielsen that are received from, attributable to, or derived from,
the CIMR Products and Services, such as revenue from [**] fees, from [**], from
[**] fees, from [**] fees, from [**] fees and from [**], less: (i) any
[**].  All CIMR Net Revenues, including
Other Non-Interest Income, shall be calculated in good faith by Nielsen in
accordance with United States generally accepted accounting principles (“GAAP”).


 


2.3.3                      Minimum Royalties.  Regardless of
the level of CIMR Net Revenues, Nielsen shall pay to
Digimarc, on an equal quarterly basis, annual minimum royalties as follows:


 


	
  In Royalty Year One -

  	
   

  	
  $[**];

  
	
  In Royalty Year Two -

  	
   

  	
  $[**];

  
	
  In Royalty Year Three -
  

  	
   

  	
  $[**];

  
	
  In Royalty Year Four -

  	
   

  	
  $[**]; and

  
	
  In Royalty Year Five -

  	
   

  	
  $[**].

  



 






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2.3.4                    Royalty Payments. 
With the exception of the Royalty Year One payments, quarterly payments
of the annual minimum royalties shall be due on the first day of the quarter,
e.g., the first quarterly payment for Royalty Year Two shall be due on October 1,
2008.  The three quarterly payments (of
$[**]) for Royalty Year One shall be due on January 1, 2008, April 1,
2008, and July 1, 2008.


 


2.3.5                    Reports.  Within
sixty (60) days after the end of each quarter in each Royalty Year, Nielsen
will submit to Digimarc a statement in writing, in the form attached as Appendix
B (the “Quarterly License Reporting Statement”), including with respect to that
quarter:  (a) all CIMR Net Revenues;
(b) the royalties owed to Digimarc under this Agreement based on such CIMR
Net Revenues; and (c) such other information reasonably
necessary to enable Digimarc to verify Nielsen’s calculation of royalties
payable.


 


2.3.6                    Payment of Royalties in Excess of
Minimums.  Within sixty (60) days after the end of each
quarter of each Royalty Year, Nielsen shall pay to Digimarc the amount of the
royalties owed for that quarter if earned royalties for that Royalty Year to
date exceed the annual Minimum Royalties owed for that Royalty Year.  Royalty payments (including
annual Minimum Royalties) are nonrefundable and any unused portions of annual
Minimum Royalties do not carry forward into future Royalty Years.


 


2.3.7                    Credits.  If Nielsen has to reverse
previously recognized CIMR Net Revenues reported under a previous Quarterly
License Reporting Statement submitted to Digimarc in any Royalty Year in which
Nielsen paid royalties exceeding the minimum annual royalty, Nielsen can claim
a credit on a subsequent Quarterly License Reporting Statement in the same
quarter it reverses this revenue on its income statement to the extent that it
did actually pay royalties exceeding the minimum annual royalty for that
Royalty Year.  Such credit will not
exceed the amount of royalties to be paid in the then-current quarter, but the
unused credit may be carried over to succeeding quarters until exhausted.


 


2.3.8                    Books and
Records.  Nielsen will maintain documents with respect to the
CIMR Net Revenues in accordance with United States generally accepted accounting principles (GAAP) and
will make complete and accurate entries concerning all transactions relevant to
this Agreement.  All such documents will
be kept available by Nielsen for no less than three (3) years after the
end of each Royalty Year or until the resolution of any dispute between the
parties concerning the payment of royalties that arises within that three-year
period.


 






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2.3.9                    Audit.  For a period of three (3) years
following the end of any Royalty Year, or until the resolution of any dispute
concerning the accuracy of any Quarterly License Reporting Statement submitted
during that Royalty Year and arising within that three-year period, Digimarc
(and its designated agents) shall have the right to inspect and examine
relevant Nielsen documents relating to the calculation of royalties, provided,
however, that Nielsen may redact such documents to preserve the confidentiality
of Nielsen proprietary information that is not necessary to verify the
calculation of royalties.  Any such
inspection and examination will take place upon reasonable prior written notice
to Nielsen, during Nielsen’s regular business hours and no more than once a
year. The cost of such inspection and examination will be borne by Digimarc
unless there is an actual underpayment of more than five percent (5%) by
Nielsen in that Royalty Year, in which case Nielsen will pay the reasonable
out-of-pocket cost of the inspection and examination.


 


2.3.10              Overdue Amounts.  Digimarc will be entitled to
charge, and Nielsen will pay, interest on any overdue amounts or underpayments
under this Agreement at the rate of one percent (1%) per month (or part
thereof), or at such lower rate as may be the maximum rate allowed under
applicable law.


 


3.               Digimarc Services.


 


3.1.      Authorized Services. 
Digimarc will perform services for Nielsen relating to the CIMR Products
and Services (the “Digimarc Services”), including research, development,
engineering, quality assurance, market research and development, strategic
planning, strategy development, business development, preparing, obtaining and
maintaining patents, project management, reporting, and such other services or
activities as the parties may mutually agree. 
Digimarc will perform the Digimarc Services in good faith and with a
reasonable standard of quality, but in no event with a standard of quality less
than that Digimarc employs for services Digimarc performs for itself.  The Digimarc Services shall
not include any time or labor spent by Digimarc in its own strategic planning
or the management of its own organization, outside of the management of the
specific activities to be conducted as part of such Services.


 


3.2         Annual Plan. 
The particular services to be performed and expenditures to be made by
Digimarc shall be set forth in an annual plan and budget (the “Annual Plan”).  The parties shall mutually agree upon a
process for determining the Annual Plan, which shall state reasonable and
specific objectives to be met by Digimarc, and which shall take into account
Nielsen’s strategic goals and operational experience, Digimarc’s resources and
capabilities to assist Nielsen in achieving those goals, and the market
conditions then prevailing.  The parties
shall also mutually agree upon an informal process for change management and
for resolving disputes concerning determination of the Annual Plan.  In all events, 


 






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Digimarc shall
make resources available in each year covered by a timely submitted and
reasonable Annual Plan (a “Plan Year”) sufficient to perform the Services
identified in the Annual Plan.  The first
Plan Year will begin on October 1, 2007, prior to completion of the Annual
Plan, based upon a short statement of work to be agreed upon by the
parties.  The first Annual Plan will be
determined as soon as practicable thereafter, and no later than December 15,
2007.  Successive Annual Plans shall be
determined no later than ninety (90) days prior to the beginning of each
subsequent Plan Year.  If Digimarc reasonably
believes that any requested changes to the Annual Plan will result in
additional expenditures exceeding those approved by Nielsen in the Annual Plan,
it shall so inform Nielsen.  If Nielsen
and Digimarc agree to the requested changes and such additional expenditures,
they shall amend the Annual Plan to reflect such changes.  Unless Nielsen authorizes such additional
expenditures in writing, Nielsen shall not be obligated to pay for Services in
excess of the larger of (a) the amount set forth in the Annual Plan
(including as amended pursuant to the preceding sentence) or (b) the
Service Minimum Fee (as defined below).


 


3.3   Quarterly Reporting and Review.  Within thirty (30) days following the end of
each quarter during each Plan Year, Digimarc shall provide reports stating its
progress in achieving the objectives set forth in the Annual Plan, and
describing in detail the Services performed and expenditures made in that
quarter.  The parties shall mutually
agree upon a process for a joint quarterly review of Digimarc’s progress in
achieving the objectives set forth in the Annual Plan, and for considering any
changes that either Nielsen or Digimarc may propose to the Annual Plan.


 


3.4   Minimum Service Fees.  Subject to any termination of its obligation
to engage Digimarc to perform Services, Nielsen shall pay, in equal quarterly
payments as set forth below, the following minimum annual amounts for Services
in each Plan Year (the “Minimum Service Fees”):


 


	
  Annual Plan Period

  	
   

  	
  Plan Year 1

  	
   

  	
  Plan Year 2

  	
   

  	
  Plan Years 3-5

  (per
  year)

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Minimum Fees

  	
   

  	
  $

  	
  [**]

  	
   

  	
  $

  	
  [**]

  	
   

  	
  $

  	
  [**]

  	
   

  
											



 


Quarterly payments of
such fees, including Minimum Service Fees, will be due and payable to Digimarc
only for those quarters in which Digimarc performs Services in accordance with
a timely submitted and reasonable Annual Plan, at such levels as would be
sufficient to generate the Minimum Service Fees as set forth above; or if
Nielsen fails to timely submit a reasonable Annual Plan, in which Digimarc was
ready, willing and able to perform such level of Services.  Quarterly
Minimum Service Fee payments are due and payable to Digimarc on the first day
of each quarter in which the Services are to be provided.  There will be no Minimum Service Fee for the
first quarter (beginning October 1, 2007) of the first Plan Year.  The Plan Year 1 Minimum Service Fees, less
actual fees earned in that first quarter, will be spread evenly over the
remaining quarters of that Year.


 






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3.5   Labor
Rates.  Labor rates charged for
Services will be as shown in Appendix A. 
The labor rates will be increased by five percent per year, reflecting
an estimate of average rates of wage and benefits cost inflation, and may otherwise
be adjusted by mutual agreement of the parties.


 


3.6   Services Payment Schedule and Invoice.  Digimarc shall furnish an invoice to Nielsen
following each quarter of any Plan Year. 
The invoice shall be accompanied by an itemization of the Services actually
performed in that quarter, including an identification of individual
timekeepers, their respective hours and rates, and the nature of the work
performed by them with reference to the objectives of the Annual Plan.  The invoice shall also be accompanied by an
itemization of those out-of-pocket expenditures reasonably incurred by Digimarc
in performing the Services, reimbursement of which shall be included in the
Minimum Service Fees.  Within thirty (30)
days of receipt of such invoice, Nielsen shall pay for Services actually
performed by Digimarc in accordance with the then-current Annual Plan in that
quarter to the extent that the Services actually performed by Digimarc within
that Plan Year to date, as reflected in the cumulative quarterly invoices for
that Plan Year, exceed the Minimum Service Fees owed for that Plan Year
cumulatively to date.  If the amount of
Services actually performed and invoiced in that quarter, when added to the
amount of Services actually performed and invoiced in prior quarters of that
Plan Year, is less than the Minimum Service Fees owed for that Plan Year
cumulatively to date, Nielsen shall [**].


 


3.7   Audit
Rights.  For a period of three (3) years
following the end of any Plan Year, or until resolution of a dispute concerning
the accuracy of the invoices or quarterly reports for a particular Plan Year
arising within that three-year period, Nielsen (and its designated agents)
shall have the right to inspect and examine Digimarc’s books and records
relating to the Digimarc Services, including time records and activity logs,
for the purpose of determining whether Digimarc’s invoices and  quarterly reports for that Plan Year are
accurate; provided, however, that
Digimarc may redact such documents to preserve the confidentiality of Digimarc
proprietary information that is not necessary to verify the accuracy of the
invoices or quarterly reports.  Any such inspection and examination will take place
upon reasonable prior written notice to Digimarc, during regular business hours
and no more than once a year.  Digimarc
shall promptly refund to Nielsen any amount that the audit shows was overpaid
by Nielsen in that Plan Year per the Agreement and, if the overpayment is
greater than 5% of the total payment for that Plan Year, Digimarc shall also
pay the reasonable out-of-pocket costs of the inspection and examination.


 


3.8   Nielsen Commitment of Resources.   For so long as the CIMR Products and Services license
remains in effect, Nielsen shall use its reasonable best efforts to
develop and support the CIMR Products and Services, including the commitment of
a reasonable amount of marketing, financial and organizational resources.  In furtherance of those efforts, Nielsen
shall prepare an annual plan for the development and support of the CIMR
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advise
and contribute to the formation of such plan, and shall share such plan with
Digimarc.


 


3.9   Digimarc Opportunity [**].   For so long as [**], Nielsen shall provide
Digimarc with a reasonable opportunity to [**].


 


3.10 Limitations on
Digimarc Services [**].  For as long
as Nielsen is timely paying Digimarc for Digimarc Services, Digimarc shall not
[**].


 


3.11 Patent
Prosecution.  The parties shall
endeavor to identify potentially patentable inventions arising from the
Digimarc Services relating to the [**] Technology.  As such inventions are identified and the
filing of patent applications is agreed upon, [**] will have primary responsibility to
manage the process of applying for and maintaining patents relating to the [**]
Technology.  The parties shall agree upon
a process enabling [**] to have substantial prior review and participation in
the preparation of patent applications relating to [**] Technology.  [**] and [**] shall [**] the reasonable
expenses incurred by [**] in the prosecution and maintenance of such patents on
[**] basis, including expenses incurred after the termination of the
Services.  Notwithstanding the foregoing,
either party may decide, at any time, that it does not wish to pay its share of
the costs of applying for or maintaining patents relating to [**] Technology,
which decision can be made on a jurisdiction by jurisdiction basis.  In that event, the other party has the option
either to abandon the application or patent, or to proceed on its own to pay
the remaining costs of applying for or maintaining the patent.  If either elects not to pay its share of the
costs of applying for or maintaining such patent, notwithstanding that the
other party may elect to apply for and maintain such patent, the parties’
respective ownership and rights in that patent shall otherwise remain
unchanged.  For so long as the Services
portion of this Agreement shall be in effect, all reasonable costs reasonably
incurred by [**] that are to be paid by [**] pursuant to this provision shall be
invoiced by [**] and included in [**].


 


3.12        Patent
Enforcement.  Unless limited by the
covenant of Section 1.4, each party shall have the right to defend or
prosecute its rights in and to the [**] Technology, in its own name, on its own
behalf, and at its own expense.  Each
party shall be entitled to retain all revenue obtained by it from third parties
(without accounting to the other) as a result of any revenue generating
activities.


 


3.13        Nielsen
Data Rights Retention.  Nielsen
retains the sole right to use or grant to any third party the right to use, any
[**], as well as [**].  Digimarc will
have no right to use or grant any rights of usage of any [**].


 


3.14        Assertion
and Defense of Patents.  Except as
provided in this section, all defense and litigation of Digimarc Patents will
remain the sole responsibility of Digimarc. 
Digimarc has no duty to enforce any patents.  All defense and litigation of patents owned
or controlled by Nielsen independent of Digimarc (the “Nielsen Patents”), will
remain the sole responsibility of Nielsen. 
Nielsen has no duty to 


 






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Digimarc to enforce any
Nielsen Patents.  For so long as Nielsen
enjoys a covenant concerning certain [**] Technology, Nielsen has the right, as
between Digimarc and Nielsen, to bring suit against third parties for
infringement of those patents within those fields and may, if it deems it
necessary, join Digimarc as a party to such lawsuits.  In such event, Nielsen shall be solely
responsible for all costs of such litigations and shall be entitled to retain
the proceeds from any such case to the extent they relate to infringement
occurring within the [**] fields.  Any
proceeds relating to infringement occurring outside the [**] field shall be shared
with Digimarc on [**] basis, after the deduction of [**].


 


4.              Remedies
for Breach.


 


4.1.         Responsibility
for Performance.  Nielsen
(US) shall be solely responsible for its performance under this Agreement. A
breach by a Subsidiary or by an Affiliate shall be deemed to be a breach by
Nielsen (US).


 


4.2.         Remedies for Breach. 
If either party materially breaches this Agreement, the non-breaching
party may, in addition to other remedies at law and in equity, terminate this
Agreement.  Prior to terminating this
Agreement for breach, the non-breaching party must first give the
breaching party written notice specifying in detail the alleged breach.  The breaching party shall then have sixty
(60) days to cure such breach.


 


5.              Termination.


 


5.1       Nielsen Option
to Terminate After [**] Years.  Within thirty days after the [**] anniversary
of the Effective
Date, Nielsen may terminate this Agreement if,  in
its reasonable judgment, the market opportunity for CIMR Products and Services
has not been realized.  Notwithstanding
the foregoing, the parties agree that the market opportunity will be considered
to have been realized if the CIMR Products and Services generate CIMR Net
Revenues of at least $[**] in [**].


 


5.2       Nielsen Option to Terminate After [**] Years.   Nielsen may
terminate this Agreement at any time after the [**] anniversary of the Effective Date for
any reason or no reason.


 


5.3       Termination by Digimarc Due to Patent
Challenges by Nielsen.  If Nielsen files an action
challenging the validity or enforceability of any Digimarc Patents (except as a
defense or counterclaim to an action for infringement brought by Digimarc or
its assignee), Digimarc can: (i) before the Current Nielsen Products and
Services license becomes permanent under Section 2.2, terminate either or
both of the Current Nielsen Products and Services license and/or the CIMR
Products and Services license; and (ii) after that time, terminate the
CIMR Products and Services license.


 






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5.4       Termination of CIMR License Due to Failure to Meet
Working Requirements.   Following any Royalty Year after Royalty
Year [**] of this Agreement, Digimarc
may terminate the CIMR Products and Services license, with prospective effect
only, if Nielsen does not pay Digimarc: (a) at least $[**] in royalties
for a Royalty Year within sixty (60) days following the end of that Royalty
Year; or (b) if royalties for a Royalty Year are less than $[**], a lump
sum payment equal to the difference, to be made within sixty (60) days
following the end of that Royalty Year.


 


5.5       Notice of Termination.  
Any termination of this Agreement by either party for any reason other
than the material breach of the other party shall be made on no less than
ninety (90) days’ notice to the other party.


 


5.6       Effects of Termination. 
Termination of this Agreement by either party prior to the [**] anniversary of the Effective Date will
automatically terminate the licenses for CIMR Products and Services and
for Current Nielsen Products and Services, unless Nielsen agrees to pay, and
does pay, [**], in that latter case, only the license for CIMR Products and
Services will automatically terminate. Thereafter, if Nielsen elects to
terminate after [**] years pursuant to Section 5.2, the license for CIMR
Products and Services will automatically terminate.  In the event of termination of either or both
licenses for any reason, [**].  In other
words, [**].  Digimarc will not be barred from [**].  If either, or both, of the
Current Nielsen Products and Services or the CIMR Products and Services
licenses are terminated, the covenant in Section 1.4 with respect to [**]
Technology shall automatically terminate. After termination of the CIMR Products and Services
license, Nielsen shall have no right to use trade secrets or other information
and plans of Digimarc in the CIMR Products and Services.  [**].


 


6.              Other
Provisions.


 


6.1.         Press Release.  The
parties will issue a mutually agreeable press release, similar to the one in
Appendix C, relating to the subject matter of this Agreement no later than four
days after execution of this Agreement.  Except as expressly permitted herein, neither party will make public
announcements or issue press releases relating to this Agreement without the
prior written consent of the other party, which consent or refusal will not be
unreasonably withheld.


 


6.2.         Confidentiality. 
Each party agrees that it will treat this Agreement as confidential and
will handle confidential information of the other party in a manner consistent with
the policies and practices of that party for handling its own confidential
information.  Notwithstanding the
foregoing, either party may provide a copy of this Agreement to a third party
considering in good faith a bona fide transaction as contemplated in Section 6.4,
provided that such third party agrees in writing to be bound to a
confidentiality agreement customary to such transactions and prohibiting use of
its knowledge of this Agreement or its 


 






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provisions for any
competitive purpose.  Upon request by the
disclosing party with respect to specifically identified information, the
receiving party will return to the disclosing party or destroy all of the
confidential information in the receiving party’s possession or control
furnished to it by the disclosing party which the receiving party does not need
to retain in order to perform any obligations imposed, or exercise any rights
(including rights of ownership) acquired, by this Agreement, and shall certify
in writing its return or destruction of such confidential information.  If the receiving party is subject to judicial
or governmental proceedings or is subject to government regulations requiring disclosure
of confidential information of the disclosing party, then prior to disclosing
such information, the receiving party will provide the disclosing party with
reasonable prior notice for the disclosing party to seek a protective order for
confidential treatment of the confidential information and will only disclose
that information that is necessary and required.  If the entire Agreement is terminated, the
obligations set out in this Section will extend for a period of [**] years
from this termination date, except that the confidential information of the
disclosing party that is specifically identified by it as a trade secret will
be protected for a period of [**] years.


 


6.3.         Non-solicitation.  Neither party will, directly or through a third party,
during the period of the Digimarc Services and for a period of [**] after the
end of such Services, solicit or entice away those key employees of the other
party specifically identified to it by name in Appendix E hereto (as may be
amended from time to time at the sole discretion of either party), provided
that the foregoing will not prohibit either party from hiring or soliciting to
hire any person (a) responding to general advertising or general
solicitations (including solicitations by recruiting firms retained by a party
and not directed at the employees of the other party), or (b) who has been
terminated by another party, or (c) has not been employed by the other
party during the [**] preceding any such action.


 


6.4.         Assignment.  Neither party may assign any of
its rights or obligations under this Agreement to any person without the prior
written consent of the other, and any such purported assignment shall be null and void from
inception; provided, however, that (a) either party may assign all its
rights and delegate all its obligations hereunder to a single person without
such approval in connection with: (i) a merger, consolidation,
reorganization, statutory conversion, amalgamation or similar corporate
transaction, or (ii) a sale or other disposition of all or substantially
all of its assets in the businesses relating to this Agreement, and (b) Nielsen
may assign all its rights and delegate all its responsibilities to an Affiliate
in connection with a restructuring or reorganization of Nielsen.  In the event that Digimarc assigns this
Agreement to [**] (an “Assignee”) pursuant to this provision, the Digimarc
Patents subject to the licenses granted in this Agreement shall include [**].


 






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6.5.         Bankruptcy.  Any
intellectual property licenses and rights granted to either party hereunder or
pursuant hereto are, and will be deemed to be, for purposes of Section 365(n) of
the United States Bankruptcy Code (“Code”) licenses of “intellectual property”,
as defined under the Code. 
Notwithstanding any provision contained herein to the contrary, if a
party is under any proceeding under the Code and the trustee in bankruptcy of
that party, or that party as a debtor in possession, rightfully elects to
reject this Agreement, then the other party pursuant to the relevant portions
of Section 365(n) of the Code may retain any and all of such other
party’s licenses and rights hereunder to the maximum extent permitted by law.


 


6.6.         Tolling.  Nielsen agrees to toll any statute of
limitations and any time limitation on damages under [**] relative to
[**].  In return for this tolling
agreement, Digimarc will not [**].


 


6.7.         Limitations on Damages.  NEITHER DIGIMARC NOR NIELSEN WILL BE LIABLE
UNDER ANY CIRCUMSTANCES OR ANY LEGAL OR EQUITABLE THEORY, WHETHER IN CONTRACT,
TORT, STRICT LIABILITY OR OTHERWISE FOR ANY INDIRECT, INCIDENTAL,
CONSEQUENTIAL, EXEMPLARY, RELIANCE, PUNITIVE OR SPECIAL DAMAGES ARISING OUT OF
THIS AGREEMENT, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.


 


6.8.         Infringement Remedies. 
Nothing in this Agreement prevents either party from seeking any
available remedies under patent law for any patent infringement by the other
party in periods when the party does not have a license to that activity
including any remedies available under 35 U.S.C. 281, 283, 284 and 285.


 


6.9.         Governing Law,
Jurisdiction and Venue.  This
Agreement shall be governed by New York law. 
Effective as of the termination date of either license in this
Agreement, Digimarc may seek judgment and remedies for alleged infringement of
its patents in any forum where jurisdiction and venue are proper, including the
United States International Trade Commission or Government Customs Service
proceedings, for alleged infringement occurring before the License Initiation Date or after
any such license termination date.  All
other matters concerning the interpretation of, or performance under, this
Agreement will be resolved in the state or federal courts in New York applying
New York law and jurisdiction and venue will be proper in such New York courts.


 


6.10.         No
Waiver.  Each and all of the various
rights, powers and remedies of the parties will be considered to be cumulative
with and in addition to any other rights, powers and remedies which such
parties may have at law or in equity in the event of breach of any of the terms
of this Agreement.  The exercise or
partial exercises of any rights, powers or remedies will neither constitute the
exclusive election thereof nor the waiver of any other right, power or remedy
available to such party.  In no event
will any waiver of any rights hereunder constitute the 


 






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waiver of such rights in any future instance unless the waiver so
specifies in writing.


 


6.11.                   Notices. 
All notices of breach or early termination must be made in writing.  Any written notice under this Agreement will
be sent by email with a hard copy sent via certified mail, return receipt
requested, or by recognized courier service with tracking capabilities.  The notice will be deemed effective as of the
earlier of (i) the date of delivery, as evidenced by a delivery receipt or
the addressee’s registry, or (ii) five business days after sending notice
to the correct address in the authorized manner.  The addresses of the parties, as set forth
above, will be used for any such notice unless either party hereafter
designates a substitute address in writing in accordance with this provision.


 


The
contacts to address the notices to are:


 


For
Digimarc: Reed Stager, Executive Vice President; with a co-copy to: General
Counsel; and


 


For
Nielsen: James M. O’Hara, President, Media Product Leadership; with a co-copy
to: General Counsel.


 


6.12.                   Integration.  This
Agreement embodies the entire agreement of the parties hereto regarding the
subject matter herein, and supersedes and cancels any and all previous
negotiations, agreements or commitments with respect to them.


 


6.13.                   Severability. 
If any provision of this Agreement is held to be void or unenforceable,
the parties agree that such determination will not result in the nullity or
unenforceability of the remaining portions of this Agreement.  The parties further agree to replace such
void or unenforceable provisions of this Agreement with valid and enforceable
provisions that will achieve, to the extent legally permissible, the economic,
business and other purposes of the void or unenforceable provisions and that
reflect the intent of the parties when entering into this Agreement.


 


6.14.                   Amendments.  This Agreement may not be modified in any
manner except by an instrument in writing duly signed by each of the parties
hereto.


 


6.15.                   Construction. 
Each party and its counsel have participated fully in the review and
revision of this Agreement.  Any rule or
construction to the effect that ambiguities are to be resolved against the
drafting party will not apply in interpreting this Agreement.


 


6.16.                   No Agency. 
Nothing in this Agreement will be construed as creating any agency,
partnership or other form of joint enterprise between Digimarc and
Nielsen.  The relationship between Digimarc
and Nielsen will at all times be that 


 






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of independent contractors. 
Neither party will have authority to contract for or bind the other in
any manner whatsoever.


 


6.17.                   Other Documents. 
Each party hereto will execute any documents which may be necessary or
advisable to carry out or effectuate the foregoing.


 


6.18.                   Survival. 
Upon expiration or termination of this Agreement, rights to payment
under this Agreement and the provisions set out in Sections 2.3.5-2.3.10, 3.11-3.14,
4, 5.6 and 6.2-6.19 will remain in effect.


 


6.19.                   Counterparts. 
This Agreement may be executed in separate counterparts, and by
facsimile, each of which will be deemed an original, and when executed,
separately or together, will constitute a single original instrument, effective
in the same manner as if the parties had executed one and the same instrument.


 






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CONFIDENTIAL
PORTIONS OMITTED


 


	
  DIGIMARC CORPORATION

  	
  THE NIELSEN COMPANY (US), 

  
	
   

  	
  INC.

  
	
   

  	
   

  
	
  By:

  	
  /s/ Robert P. Chamness

  	
   

  	
  By:

  	
  /s/ James O’Hara

  
	
  (Signature)

  	
  (Signature)

  
	
   

  	
   

  
	
  Robert P. Chamness

  	
  Name: James O’Hara

  
	
   

  	
  (Please print)

  
	
   

  	
   

  
	
  CLO and Secretary

  	
  Title: President-Media
  Product Leadership

  
	
   

  	
   

  
	
  Date: November 27,
  2007

  	
  Date: November 27,
  2007