SETTLEMENT AGREEMENT


 


This
Settlement Agreement (“Agreement”), effective as of the last date set forth below (“Effective Date”),
is made by and between Facebook, Inc., a Delaware corporation, having a place of
business at 1601 Willow Road, Menlo Park, California 94025 (“Facebook”), and
Vringo, Inc., a Delaware corporation, having a place of business at 44 West
28th Street, Suite 1414, New York, NY 10001 (“Vringo”), referred to collectively as the “Parties” or individually
as a “Party.”


 


Factual Background


 


A.           Facebook
is the owner of the name and mark FACEBOOK appearing alone and in conjunction with other words and designs (the “FACEBOOK
Marks”), as used on its website, www.facebook.com, and in connection with the goods and services set forth in its
numerous trademark registrations and applications for FACEBOOK worldwide, including but not limited to United States Registrations
Nos. 30413791, 3122052, 3734637, 3814888, 3801147, 3881770 and United States Serial Nos. 85/121,339, 85/147,879, 85/147,898, 85/147,910,
85/147,930, 85/147,937, 85/147,950 and 85/147,955.


 


B.           Vringo
has applied for the trademark FACETONES (U.S. Serial No. 85/267,738) in the United States for coverage in International Classes
09 and 38:


 


·           Computer
application software for mobile devices, namely, software for importing a user's digital images from social networking and other
sites, automatically creating a slideshow, and using the slide show as a video ringtone in Class 09;


 


·           Telecommunication
services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless
communication networks, and the Internet in Class 38; and


 


C.           Vringo
owns the domain name <facetones.com>.


 


D.           Vringo
uses the FACETONES mark and domain name <facetones.com> in connection with goods and services that cause photographs of the
faces corresponding to a mobile device user’s contacts to appear on the user’s mobile device, for purposes of alerting
the user to an incoming call or message from a particular contact and/or identifying the caller or messager (hereinafter the “FACETONES
Mark”).


 


E.           The
Parties wish to clarify the extent of use of Vringo’s FACETONES Mark, and the Parties desire to resolve the pending dispute
and avoid future disputes between the Parties regarding Vringo’s FACETONES Mark, and to avoid any likelihood of confusion
as to the source of the Parties’ goods and services and any perception of authorization by, or affiliation between the Parties.


 



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Now,
Therefore, in exchange for the valuable consideration, promises, mutual covenants and agreements contained herein,
the receipt and sufficiency of which are hereby acknowledged, and in order amicably to resolve this dispute and prevent any possibility
of confusion between the Parties’ respective marks and trade names, and intending to be legally bound hereby, the Parties
agree as follows:


 


1.          Vringo
acknowledges Facebook’s ownership rights in the trademark FACEBOOK and agrees not to object, oppose, cancel or otherwise
interfere with any existing or future applications or registrations owned by Facebook for its FACEBOOK Marks, except that
Vringo reserves all rights with respect to any existing or future applications or registrations owned by Facebook that include
the word “Facebook” together with the word “tone” or “tones”.


 


2.          Within
five (5) days of the Effective Date of this Agreement, Vringo shall amend its Class 09 description for its FACETONES U.S. trademark
application, Serial Number 85/267,738, to “Computer application software for mobile devices, namely, software for importing
a user's digital images including images of a user's face or a user's friends' faces from websites, automatically creating a slideshow,
and using the slide show as a video ringtone.”


 


3.          Within
sixty (60) days of the Effective Date of this Agreement, Vringo shall remove from all promotional, marketing, and advertising materials
for Vringo or its goods or services all use of the term “social ringtone” and/or references to FACEBOOK as the exclusive
online platform or website that integrates with FACETONES.


 


4.          Except
as set forth in paragraph B above, Vringo warrants and represents that it does not own and has not filed or caused to be filed
any applications for registration of the FACETONES mark or any mark incorporating the word FACE and TONES or any similar mark.


 


5.          Vringo
agrees that all future filing for the FACETONES mark or any mark incorporating the word FACE and TONES will be limited to:


 


		(i)	“Computer application software for mobile devices, namely, software for importing a user's
digital images including images of a user's face or a user's friends' faces from websites, automatically creating a slideshow,
and using the slide show as a video ringtone” in Class 09;



 


		(ii)	“Telecommunication services for mobile devices for importing a user’s digital images
including images of a user’s face or a user’s friends’ faces from websites, automatically creating a slideshow,
and using the slide show as a video ringtone” in class 38; or



 


		(iii)	such other recitation as is approved in writing by Facebook’s counsel listed in Paragraph
26 below, which approval shall not be unreasonably withheld, delayed or denied.



 


6.          Vringo
agrees to the following limitations on its use of the FACETONES Mark:


 


		(i)	Vringo’s use of the FACETONES Mark will be limited to video ringtone goods and services,
and any promotional merchandise and advertisements directly related thereto;



 



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		(ii)	The goods and services offered under the FACETONES will always be promoted and described so that
it is clear that “face” is being used descriptively to describe pictures of a user’s and a user’s friends’
faces and not to refer to Facebook;



 


		(iii)	The FACETONES mark shall not be displayed using the stylization and/or any likeliness of the Facebook
brand, including but not limited to lower-case, or in blue, or in a white and blue combination.



 


		(iv)	The FACETONES Mark shall not be used as a name for an online network. For the avoidance of doubt,
the FACETONES Mark may be integrated with other online networks, platforms and/or websites as described in Paragraph 7 below.



 


7.          Vringo
may describe the FACETONES goods and services as integrated with Facebook provided that such description is fair and accurate,
and complies with Facebook’s Terms of Use, and provided that, within sixty (60) days of the Effective Date of this Agreement,
all such descriptions do not suggest the goods and services are exclusively integrated with Facebook. For example, within sixty
(60) days of the Effective Date of this Agreement, any reference by Vringo to FACEBOOK in describing Vringo’s goods and services
must also identify other online platforms or websites with which FACETONES is integrated so that it is clear to the consumers that
FACETONES is not exclusively integrated with Facebook. Nothing in this Agreement modifies or supersedes the terms that govern Vringo’s
use of the Facebook service, including the Facebook Platform.


 


8.          So
long as there is no actual consumer confusion between Facebook and Vringo or the goods or services provided under the FACETONES
Mark, Facebook agrees not to challenge Vringo’s use or registration of the FACETONES Mark in connection with video ringtone
goods and services provided that Vringo complies with the restrictions set forth in this Agreement. Facebook specifically reserves
the right to oppose, or challenge in any way, any other marks which Vringo may adopt or seek to secure, including any other mark
incorporating the term FACE.


 


9.          Facebook
acknowledges that, as of the Effective Date of this Agreement, Facebook’s counsel has not learned of any instances of actual
confusion of consumers as to perceptions of connection, association or affiliation between Facebook and Vringo or the video ringtone
goods and services offered under the FACETONES mark. Facebook has not performed a search of its business records for any such instances
of confusion. In the event that either Party learns of any instances of actual confusion of consumers as to perceptions of connection,
association or affiliation between Facebook and Vringo or the video ringtone goods and services offered under the FACETONES mark,
it shall notify the other Party thereof promptly and in writing. With respect to the first, second, third, and fourth instance
of actual confusion or association, Vringo shall have ten (10) days to take corrective and mitigating efforts to Facebook’s
reasonable satisfaction.


 



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10.         In
the event that Vringo does not cure an instance of confusion or association to Facebook’s reasonable satisfaction, or in
the event of a fifth instance of actual confusion or association, this Agreement shall be no bar to any trademark enforcement efforts
deemed appropriate by Facebook at its sole discretion, including, but not limited to, cancellation proceedings before the TTAB,
and court action for infringement and/or dilution, including injunctive relief.


 


11.         The
provisions of this Agreement are confidential, and the Parties agree not to disseminate or disclose to any other person or entity
any of the terms and conditions of the Agreement. Notwithstanding the foregoing, (1) the Parties may publicly disclose (including,
without limitation, in an 8K or other disclosure document) that there was a dispute regarding the FACETONES Mark, that the dispute
has been resolved to the satisfaction of all the Parties, and that there is an agreement in place between the Parties regarding
Vringo’s use of the FACETONES Mark and (2) the Parties shall be permitted to disclose confidentially the terms and conditions
of this Agreement to their respective officers, directors, employees, attorneys, auditors and insurers, or as otherwise required
by law in the conduct of their respective businesses.


 


12.         Each
Party hereto shall be solely responsible for its own legal expenses and costs in connection with this Agreement, including the
negotiation, execution, and performance of this Agreement.


 


13.         Both
Parties have participated in the negotiation and preparation of this Agreement. Therefore this Agreement shall be construed in
a fair and objective manner, and not strictly for or against either Party.


 


14.         This
Agreement shall be construed under the laws of the State of California without respect to choice of law principles. The Parties
further agree that jurisdiction and venue shall be in the jurisdiction and venue of the non-moving party (i.e., Northern District
of California if Facebook is the non-moving party and New York if Vringo is the non-moving party). The Parties waive any objection
to such jurisdiction or venue.


 


15.         Nothing
in this Agreement will be construed so as to impair any legal or equitable right of any Party hereto to enforce any of the terms
of the Agreement by any means, including without limitation, an action for damages or a suit to obtain specific performance of
any or all of the terms of the Agreement. The Parties acknowledge that a breach hereof will cause such injury as U.S. federal law
and the laws of the State of California recognize as immediate and irreparable and that preliminary and permanent injunctive relief
would be appropriate in the event such a breach is established.


 


16.         The
Parties to this Agreement acknowledge that they have had the opportunity to seek legal counsel and are represented by counsel concerning
the matters resolved by the Agreement and the Agreement itself.


 


17.         The
Agreement is binding upon and shall inure to the benefit of each Party to this Agreement and their respective officers, directors,
investors, employees, agents, subsidiaries, parent corporations, affiliated companies, licensees, predecessors, successors, assigns,
and heirs.


 



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18.         This
Agreement is not assignable without Facebook’s written approval and consent which shall not be unreasonably withheld.


 


19.         Each
person signing this Agreement represents and warrants that he or she has full legal authority to sign this Agreement on behalf
of the Party for which he or she purports to act.


 


20.         The
provisions of this Agreement shall be effective worldwide.


 


21.         There
shall be no amendments, modifications or supplements to this Agreement unless any such amendments, modifications or supplements
are in writing and signed by both Parties to this Agreement. This provision cannot be waived or otherwise rendered unenforceable
except by a written document signed by both Parties to this Agreement.


 


22.         This
Agreement constitutes the entire agreement between the Parties with regard to the subject matter set forth herein and supersedes
all prior and contemporaneous agreements, understandings, and representations between the Parties, oral or written, concerning
the subject matter hereof. No representation, promise, condition, inducement or statement of intention, express or implied, that
is not set forth in this Agreement has been made by any Party concerning such subject matter. No Party has relied upon any representation,
promise, condition, inducement or statement of intention, express or implied, that is not set forth in this Agreement concerning
such subject matter, and no Party shall be bound by any purported representation, promise, condition, inducement or statement of
intention, express or implied, that is not set forth in this Agreement concerning such subject matter.


 


23.         The
invalidity of any paragraph herein, or any part hereof, shall not render the balance of the Agreement invalid. Any paragraph, or
part thereof, which is determined to be invalid shall be severed from the Agreement and the remainder of the Agreement shall continue
in full force and effect.


 


24.         The
failure of any Party at any time or times to demand strict performance by the other Parties of any of the terms or conditions of
the Agreement shall not be construed as a continuing waiver or relinquishment thereof and each may at any time demand strict and
complete performance by the other of such terms and conditions.


 


25.         This
Agreement may be executed in counterparts, each of which shall be deemed an original, but all of which together shall constitute
one and the same instrument. Any signature delivered by a party by facsimile or other form of electronic transmission shall be
deemed to be an original signature hereto.


 


26.         All
notices and other written communications relating to this Agreement shall be in writing and shall be deemed to be fully given and
received if sent by Federal Express or registered mail, postage prepaid, to the respective Parties' attorneys at the following
addresses:


 


//


 


//


 



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to Vringo, Inc.:


 


Andrew Perlman


Vringo, Inc.


44 West 28th Street


Suite 1414 New York


New York 10001


andrew.perlman@vringo.com


 


With a copy to:


 


Oliver Herzfeld


Joseph, Herzfeld, Hester & Kirschenbaum

233 Broadway Fl 5

New York, NY 10279-0599


Phone: 917-940-5399


E-mail: oherzfeld@gmail.com


 


to Facebook:


 


Anne H. Peck


Cooley LLP


Five Palo Alto Square


3000 El Camino Real


Palo Alto, CA 94306-2155


Phone: (650) 843-5096


E-mail: peckah@cooley.com


 


If sent by registered
mail, the notice shall also be sent by e-mail. Either Party hereto may change its address for the purposes of this Agreement by
giving the other Party written notice of its new address.


 


WHEREFORE, the Parties
hereto have caused this Agreement to be executed.


 


	Facebook, Inc.	Vringo, Inc.
	 	 
	By: /s/ Kathleen E. Johnston	By: /s/ Andrew Perlman
	 	 
	Name: Kathleen E. Johnston	Name: Andrew Perlman
	Title:  IP Counsel	Title: President
	Date: February 9, 2012	Date: February 9, 2012


 






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