Unassociated Document


    


     

    LICENSE
AGREEMENT

     

    This
License Agreement (“Agreement”), effective as of July 28, 2009 (“the Effective
Date”), is entered into between NeoMedia Technologies, Inc., a
Delaware corporation having a principal place of business at Two Concourse
Parkway, Suite 500, Atlanta, Georgia 30328 (“NeoMedia”) and Mobile Tag, Inc., a
Delaware corporation having a principal place of business at 400 Perimeter
Center Terrace NE, Suite 900, Atlanta, Georgia  30346 (“Mobile Tag”;
together, “The Parties,” or individually, “Party”).

     

    WHEREAS,
Mobile Tag desires to obtain a license from NeoMedia under the relevant NeoMedia
patents for the Field of Use and in the Territory as those terms are set forth
herein; and

     

    WHEREAS,
NeoMedia is the owner of, or has acquired rights under, numerous United States
and foreign patents and patent applications, relating to, inter alia, methods and
systems for using automatic identification media to connect users to and
transmit data over the Internet;

     

    WHEREAS,
Mobile Tag is a company intending to provide a system enabling mobile phone
subscribers who scan a machine readable code to connect via indirect access to
information related to the scanned barcodes;

     

    WHEREAS,
Mobile Tag is desirous of obtaining a non-exclusive, limited license under the
NeoMedia patents in the United States; and

     

    WHEREAS,
NeoMedia is willing to grant such a license in consideration of payments and
royalties to be made by Mobile Tag.

     

    NOW,
THEREFORE, in accordance with the foregoing and in consideration of the terms
and conditions contained herein, NeoMedia and Mobile Tag agree as
follows:

     

    
      
        
        

      

      
        
        

        
          

        

      

      
        
        

      

    

    
      	
              1.

            	
              Definitions.

            


    

     

    
      	
               
      

            	
              1.1.

            	
              “Licensed
      Patents” means only the patents and applications owned by NeoMedia
      containing claims to any invention(s) useful in or relating to the Field
      of Use, strictly limited to the patents and applications listed on Exhibit
      A hereto, together with all divisionals, continuations,
      continuations-in-part, reissues, reexaminations, and foreign counterparts
      thereof, and any other present or future applications or patents now owned
      or hereafter acquired by NeoMedia in which the claims are directed to the
      Field of Use as set forth in Exhibit B hereto, to the extent they issue
      during the time Mobile Tag is paying royalties in accordance with the
      Paragraph 3 herein.

            


    

     

    
      	
               
      

            	
              1.2.

            	
              “Field
      of Use” shall be set forth in Exhibit B
hereto.

            


    

     

    
      	
               
      

            	
              1.3.

            	
              “Royalty-Based
      Revenue” means any gross revenue, derived in any way by Mobile Tag in
      connection with or relating to the Field of Use, including without
      limitation advertising revenues, transactional revenue generated by
      barcode reading, in-kind payments, non-monetary consideration (valued at
      market value), clearing-house revenue, service fees, and includes all
      action oriented revenue, for example but not limited to content download
      and click to subscribe.

            


    

     

    
      	
               
      

            	
              1.4.

            	
              “Territory”
      shall mean those countries identified in Exhibit C as amended from time to
      time by mutual agreement by the Parties, initially the United States of
      America and its territories.

            


    

     

    
      	
               
      

            	
              1.5.

            	
              "Mobile
      Tag Clients" shall mean those entities that operate within the Field of
      Use by way of illustration and not limitation, brands, agencies, carriers,
      subscribers of carriers, and advertising customers of carriers (e.g., brands, agencies,
      etc.).

            


    

     

    
      
        
        

      

      
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              2.

            	
              License
      Granted.

            


    

     

    
      	
               
      

            	
              2.1.

            	
              Subject
      to the terms and conditions of this Agreement, and for the consideration
      recited herein, NeoMedia grants to Mobile Tag a royalty-bearing,
      non-exclusive, non-transferable, license within the Field of Use to make, have made, use,
      sell, offer for sale, import into the United States inventions
      under the Licensed Patents within the Territory.  There is no
      right to sublicense granted herein, except that it is understood that
      parties contracting with Mobile Tag to operate within the Field of Use
      under the rights granted herein to Mobile Tag (“Mobile Tag Clients”) will
      fall within the license granted to Mobile Tag subject to termination of
      the license as set forth herein and provided that such Mobile Tag Clients
      are generating Royalty-Based Revenue subject to Paragraph 3.  If
      a Mobile Tag Client participates in a non-Mobile Tag ecosystem, such
      participation will not fall within the license granted to Mobile Tag. It
      is specifically understood that nothing herein grants any rights under the
      Licensed Patents through Mobile Tag or otherwise to any Primary Code
      Resolution Authority, including any related parent corporations,
      subsidiaries, sister corporations, partnerships, joint ventures,
      individuals, trusts, estates, or any similar organizational structures
      (“Related Entity”) of a Primary Code Resolution Authority, including, for
      example, the company names set forth in Exhibit E, which may be modified
      to add or delete company names from time to time at NeoMedia’s sole
      discretion.

            


    

     

    
      	
               
      

            	
              2.2.

            	
              The
      license granted in this section to Mobile Tag shall terminate: if Mobile
      Tag fails to make any payments due and owing pursuant to Paragraph 3,
      which the Parties agree is a material breach of this Agreement, unless
      cured within thirty (30) days of notice by NeoMedia of such failure; or
      upon Mobile Tag’s petition for relief under any bankruptcy legislation; or
      upon Mobile Tag’s cessation of doing business; or upon any other material
      breach of this Agreement by Mobile
Tag.

            


    

     

    
      
        
        

      

      
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              3.

            	
              Payments.

            


    

     

    Mobile
Tag’s payment obligations to NeoMedia shall be set forth in Exhibit
D

     

    
      	
               
      

            	
              4.

            	
              Term and
      Termination.

            


    

     

    The Term
of this Agreement shall be an initial three (3) years, with automatic extensions
of one year if Mobile Tag is compliant and up to date with all provisions of the
Agreement, as determined by NeoMedia in its sole discretion.  Mobile
Tag’s payment obligation under this Agreement will cease in the event that
claims of the Licensed Patents are found to be invalid or unenforceable with no
appeal remaining, such that Mobile Tag does not practice the remaining Licensed
Patents; or with the last to expire of the Licensed Patents; or in the events
described in the § 2.2 termination provisions of the Agreement; but not as
to then accrued payment obligations.  After one (1) year from the
Effective Date and before expiration of the Term, in the event Mobile Tag ceases
to operate within the Field of Use, Mobile Tag may terminate this Agreement by
providing NeoMedia with written notice and payment of an Early Termination Fee
of twenty-five percent (25%) of the total annual payment for the respective Year
as stated in Exhibit D.  Termination will be effective as of the date
of payment of the Early Termination Fee.

     

    
      	
              5.

            	
              Dispute
      Resolution.

            


    

     

    
      	
               
      

            	
              5.1.

            	
              The
      Parties agree to follow the procedure set forth below to resolve any
      dispute (other than patent infringement, patent validity, patent
      enforceability, or any other issue concerning a substantive patent right),
      by arbitration administered by a mutually agreed-upon arbitral entity, or
      in the event of no such agreement, by the American Arbitration Association
      (“AAA”) in accordance with its Commercial Rules and other applicable rules
      and procedures set forth by the AAA.  The place of arbitration
      shall be Atlanta, GA.

            


    

     

    
      
        
        

      

      
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              5.2.

            	
              The
      procedures described herein shall be followed if senior management of both
      Parties is unable to resolve the dispute within thirty (30) days after a
      dispute is identified to the other Party.  There shall be no
      arbitration until the thirty (30) day discussion period has
      elapsed.

            


    

     

    
      	
               
      

            	
              5.3.

            	
              The
      arbitrator(s) may award damages, an injunction, or both to the prevailing
      party.

            


    

     

    
      	
               
      

            	
              5.4.

            	
              The
      decision of the arbitrator(s) shall be final and binding on all Parties,
      and judgment on the award of the arbitration panel may be entered by any
      Court having jurisdiction.  There shall be no
      appeal.

            


    

     

    
      	
               
      

            	
              5.5.

            	
              Any
      costs or expenses, including reasonable attorneys’ fees, incurred by the
      successful party arising out of the arbitration will be assessed against
      the unsuccessful party, borne equally, or assessed in any manner within
      the discretion of the
arbitrator(s).

            


    

     

    
      	
               
      

            	
              5.6.

            	
              The
      arbitrator(s) may also award interest at a rate not to exceed the Prime
      Rate (which exists on the day of the award) from the date of the award
      until paid.  Unless decided differently by the arbitrator(s),
      each Party shall pay one-half (1/2) the fees, costs and expenses charged
      by the arbitrator(s).

            


    

     

    
      
        
        

      

      
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              6.

            	
              Confidentiality and No
      Challenge.

            


    

     

    
      	
               
      

            	
              6.1.

            	
              Except
      where such disclosures are required by law or the Parties have given
      consent in writing, the Parties agree to keep confidential and not
      disclose to any third party:  (a) the terms and conditions
      of this Agreement, (b) any of the negotiations and discussions that
      preceded its making; and non-public financial information except (i) as is
      necessary to effectuate any term or provision of this Agreement, including
      any subsequent litigation to enforce this Agreement; (ii) to either
      Party’s insurers, as necessary to pursue insurance claims; (iii) to a
      Party’s accountants or lawyers; (iv) as is reasonably necessary to comply
      with the Securities and Exchange Commission’s disclosure requirements; (v)
      to a third party in connection with a due diligence investigation between
      the third party and the Party seeking to make the disclosure, provided
      prior to seeing the information, the third party enters into a
      non-disclosure agreement (“NDA”) with confidentiality terms substantially
      the same as the terms used to protect the Party’s own financial
      information; (vi) to existing and potential future investors and/or
      shareholders of the Party, provided the third parties enter into a NDA as
      described in (v) above; and (vii) as required by law or court order upon
      notice to the other Party sufficiently in advance of such disclosure to
      permit the other Party to seek a protective
  order.

            


    

     

    
      	
               
      

            	
              6.2.

            	
              Nothing
      in this paragraph shall be construed to preclude or prohibit the Parties
      from being able to publicly acknowledge that they have entered into this
      license agreement, so long as the terms of this Agreement are not
      disclosed other than as specifically and expressly permitted
      herein.

            


    

     

    
      
        
        

      

      
        -6-

        
          

        

      

      
        
        

      

    

    
      	
               
      

            	
              6.3.

            	
              If
      any Party is obligated to produce this Agreement, for example, in response
      to a document request in litigation, that Party shall promptly notify the
      other Party of the request with sufficient particularity to allow the
      other Party at least ten (10) days, at its own expense, to object to the
      requested production if necessary.

            


    

     

    
      	
               
      

            	
              6.4.

            	
              During
      the term of this Agreement, neither Mobile Tag or any Related Entity of
      Mobile Tag shall provide any assistance or guidance regarding the alleged
      non-infringement, invalidity, or unenforceability of any of the
      intellectual property covered by this Agreement to any third party who is
      challenging or may challenge the scope, validity or enforceability of the
      same in any proceeding, including in court, arbitration, or before a
      patent office, except as required by law or judicial
      process.  In the event Mobile Tag is served with a subpoena
      relating to one or more of the Licensed Patents, NeoMedia will cooperate
      with Mobile Tag in responding to the subpoena.  Should Mobile
      Tag violate the foregoing, as in the event that Mobile Tag, or any Related
      Entity of Mobile Tag challenges the validity of any of the Licensed
      Patents, NeoMedia shall have the option of any one of the
      following:

            


    

     

    
      	
               
      

            	
              (a)   terminating
      this Agreement; or

            


    

     

    
      	
               
      

            	
              (b)   continuing
      the license, including but not limited to royalty payments thereunder,
      provided further that Mobile Tag (i) pays all legal fees, costs and
      expenses of NeoMedia in defending the validity of the Licensed Patents as
      such are invoiced or incurred and (ii) in the event that any claim is
      found invalid, paying NeoMedia a liquidated damage sum in the amount of
      the total royalties paid to date by Mobile Tag as of the time of such
      finding; or

            


    

     

    
      	
               
      

            	
              (c)   increasing
      the royalty rate to three times the stated rate during the period of
      challenge, and Mobile Tag pays all legal fees, costs and expenses of
      NeoMedia in defending the validity of the Licensed Patents as such as
      invoiced or incurred.

            


    

     

    
      
        
        

      

      
        -7-

        
          

        

      

      
        
        

      

    

    
      	
              7.

            	
              Marking/Proprietary
      Rights Notices.

            


    

    Upon
NeoMedia’s request, Mobile Tag agrees to makes reasonable efforts to mark any
relevant products with the proper NeoMedia patent numbers in accordance with the
Patent Laws.

     

    
      	
              8.

            	
              Governing
      Law.

            


    

    This
Agreement shall be governed by and construed under the laws of United States of
America and the State of Georgia, without reference to the State’s choice of law
provisions. The parties agree that any dispute (not otherwise resolved as
provided under section 5 of this Agreement) shall be brought in a Federal or
state court seated in Atlanta, Georgia, United States of America, and the
parties hereby consent to the exclusive jurisdiction and venue of such
court.

     

    
      	
              9.

            	
              Transferability.

            


    

    The
license set forth above is personal and non-transferable, except that Mobile Tag
may transfer its respective rights granted in this Agreement to a successor or
merged entity that acquires substantially all the applicable business of Mobile
Tag, subject to written consent by NeoMedia, which consent shall not be
unreasonably withheld.  In the event that Mobile Tag proposes to so
transfer its assets or to be acquired by another entity, Mobile Tag shall inform
NeoMedia in advance of the transfer, and NeoMedia shall have a reasonable time
not less than thirty (30) days to make a decision as to whether to provide or
withhold consent.  Any such successor or merged entity must agree, in
writing and prior to any transfer, to be bound by Mobile Tag’s obligations set
forth herein.  NeoMedia may freely assign this Agreement or its rights
hereunder.  In the event that NeoMedia is acquired, assigns this
Agreement or assigns one or more of the Licensed Patents, this Agreement will
remain in effect as to the successor to NeoMedia or the owner of the Licensed
Patents.

     

    
      
        
        

      

      
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              10.

            	
              Counterparts.

            


    

    This
Agreement may be executed in any number of separate counterparts, each of which
shall be deemed an original, but all of which, when taken together, shall
constitute one and the same instrument.  This Agreement will become
binding and effective upon the exchange of facsimile or other electronic copies
of the required signatures and such facsimile copies shall be binding and
effective until the signed originals are in the possession of each
Party.

     

    
      	
              11.

            	
              Further
      Assurances.

            


    

     

    
      	
               
      

            	
              11.1.

            	
              The
      Parties agree to execute and deliver any additional papers, documents or
      other assurances, and take all acts that are reasonably necessary to carry
      out the intent of this Agreement.

            


    

     

    
      	
               
      

            	
              11.2.

            	
              Nothing
      in this Agreement is or shall be construed
as:

            


    

     

    
      	
              11.2.1.

            	
              A
      warranty or representation by Mobile Tag as to the validity or scope of
      any Licensed Patent; or

            


    

     

    
      	
              11.2.2.

            	
              A
      warranty or representation that anything made, used, sold, or otherwise
      disposed of under any license granted in this Agreement is or will be free
      from infringement of patents, copyrights, or other rights of third
      parties; or

            


    

     

    
      	
              11.2.3.

            	
              An
      obligation to bring or prosecute any action or suit against any third
      party for infringement of any Licensed Patent;
  or

            


    

     

    
      	
              11.2.4.

            	
              An
      obligation to furnish any manufacturing or technical information or
      assistance to Mobile Tag; or

            


    

     

     

    
      
        
        

      

      
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              11.2.5.

            	
              An
      agreement to defend Mobile Tag against actions or suits of any nature
      brought by any third parties; or

            


    

     

    
      	
              11.2.6.

            	
              Conferring
      any right to use, in advertising, publicity or otherwise, either Party’s
      name, trade name or trademark, or any contraction, abbreviation or
      simulation thereof, without
      prior consent, which would not be unreasonably
      withheld.

            


    

     

    
      	
               
      

            	
              11.3.

            	
              Mobile
      Tag agrees to indemnify, defend and hold NeoMedia and its directors,
      officers, employees and agents harmless from and against any and all
      liabilities, claims, demands, expenses (including, without limitation,
      attorneys’ and professional fees and other costs of litigation), losses or
      causes of action (each, a “Liability”) arising out of or relating in any
      way to (i) the exercise of any right granted to Mobile Tag pursuant to
      this Agreement or (ii) any breach of this Agreement by Mobile Tag, except
      to the extent, in each case, that such Liability is caused by the
      negligence or willful misconduct by NeoMedia as determined by a court of
      competent jurisdiction.

            


    

     

    
      	
              12.

            	
              No Third-Party
      Beneficiaries.

            


    

     

    Unless
specifically provided otherwise, nothing in this Agreement shall confer any
rights upon any person or entity who is not a party to this Agreement, nor shall
anything in this Agreement be construed as creating an obligation by either
Party to any non-party to this Agreement.

     

    
      	
              13.

            	
              Notices.

            


    

     

    Any
notices that are provided pursuant to this Agreement shall be provided via both
electronic mail and in writing (via overnight courier) to the other Party as
follows:

    To Mobile
Tag:

     

    
      
        
        

      

      
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    Attn: 
Chief Executive Officer

    Mobile
Tag, Inc.

    400
Perimeter Center Terrace NE, Suite 900

    Atlanta,
Georgia 30346

     

    With a
copy to:

     

    Sanjeet
K. Dutta, Esq.

    Orrick,
Herrington & Sutcliffe LLP

    1000
Marsh Road

    Menlo
Park, CA 94025


     

    To
NeoMedia:

     

    Attn:  Chief
Executive Officer

    NeoMedia
Technologies, Inc.

    Two
Concourse Parkway, Suite 500

    Atlanta,
Georgia 30328

     

    With a
copy to:

     

    Michael
H. Baniak, Esq.

    McDonnell
Boehnen Hulbert & Berghoff LLP

    300 South
Wacker Drive, Suite 3100

    Chicago,
IL 60606


     

    
      	
              14.

            	
              Severability.

            


    

     

    If any
portions of this Agreement are held invalid or unenforceable, all remaining
portions shall nevertheless remain valid and enforceable, to the extent they can
be given effect without the invalid portions.

     

    
      	
              15.

            	
              Mutual
      Contribution.

            


    

     

    This
Agreement was drafted by counsel for each of the Parties and, thus, shall not be
construed against any Party because that Party initially drafted any particular
provision.

     

    
      	
              16.

            	
              Representation of
      Authority.

            


    

     

    Each
person signing this Agreement hereby represents and warrants that he or she has
the authority to bind the entity on behalf of which he or she has
signed.

     

    
      
        
        

      

      
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              17.

            	
              Integration.

            


    

     

    This
Agreement sets forth the entire agreement and understanding between the parties
as to the subject matter of this Agreement and merges all prior discussions
between them, and none of the parties shall be bound by any conditions,
definitions, warranties or representations with respect to the subject matter of
this Agreement, other than as expressly provided in this Agreement, or as duly
set forth on or subsequent to the date hereof in writing and signed by a proper
and duly authorized representative of the party to be bound
thereby.

     

    
      	
              18.

            	
              Survivability.

            


    

     

    All
confidentiality requirements and obligations of accrued payment shall survive
expiration or termination of this Agreement.

     

    
      	
              19.

            	
              Waiver.

            


    

     

    No waiver
of any rights shall be effective unless consented to in writing by the Party to
be charged and the waiver of any breach or default shall not constitute a waiver
of any other right hereunder or any subsequent breach or default.

     

    
      	
              20.

            	
              Independent
      Contractors.

            


    

     

    Both
Parties are independent contractors under this Agreement.  Nothing
contained in this Agreement is intended nor is to be construed so as to
constitute NeoMedia or Mobile Tag as partners or joint venturers with respect to
this Agreement.  Neither Party shall have any express or implied right
or authority to assume or create any obligations on behalf of or in the name of
the other Party to bind the other Party to any other contract, agreement, or
undertaking with any third party.

     

    WHEREFORE,
the parties hereby acknowledge their agreement and consent to the terms and
conditions set forth above through their respective signatures as contained
below:

     

     

    
      
        
        

      

      
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                NeoMedia
      Technologies, Inc.

                 

                [Signed]  __/s/
      Michael W. Zima_____

                Chief
      Financial Officer

                Dated:  July 28, 2009

              	 
      	
                Mobile
      Tag, Inc.

                 

                [Signed]  __/s/
      William J. Hoffman_____

                Chief
      Executive Officer

                Dated:  July 28, 2009

              


      

    

     

    


     

     

    


     

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