NEUROSKY TRADEMARK LICENSE AGREEMENT
TERMS AND CONDITIONS
These Terms and Conditions (“Terms”) are incorporated by reference and made a part of that certain Trademark License Agreement (the “Agreement”) between NeuroSky, Inc. (“NeuroSky”), a Delaware corporation, and the identified licensee (“Licensee”). Capitalized terms not defined herein are as defined in the Agreement and the Exhibits thereto.
1. License. Subject to the terms and conditions of this Agreement, NeuroSky hereby grants to Licensee the non-exclusive, non-transferable right to use the Trademark in connection with the marketing, distribution and sale of the Product in the Territory, but only so long as the Product is offered to others by Licensee in accordance with standards and specifications approved by NeuroSky, including the Permitted Uses set forth in Exhibit A and the Certification Program. Licensee undertakes to use the Trademark only in relation to the Product, and only in accordance with NeuroSky’s then-current guidelines for using the Trademark, as amended from time to time. Without limiting the foregoing, such use must reference the Trademark as being owned by NeuroSky. Licensee acknowledges and agrees that all uses of the Trademark shall inure to the benefit of and be on behalf of NeuroSky. Nothing in the Agreement grants Licensee ownership or any rights in or to use the Trademarks, except in accordance with this license. NeuroSky will have the exclusive right to own, use, hold, apply for registration for, and register the Trademark during the term of, and after the expiration or termination of, the Agreement.
2. Consideration. As consideration for the license granted herein, each calendar month during the term hereof, Licensee shall pay NeuroSky a Royalty as specified in the Agreement, within thirty (30) days after the end of the calendar month for which payment is due.
2.1 Records and Reports. Licensee shall maintain complete and accurate books and records and shall, retain originals or copies of all correspondence and all other correspondence of any kind relating to all obligations of Licensee under the Agreement
2.2 Audit. NeuroSky and its agents shall have the right at any time during the term of the Agreement, but no more than twice a year and for a period of two (2) years after the expiration or termination of the Agreement to examine such books, records and correspondence as it may deem appropriate upon reasonable advance notice given to Licensee. The costs relating to such examination (not including costs incurred by Licensee) shall be borne by NeuroSky.
2.3 Late Payment Charges. Any late payment by Licensee shall be subject to a late payment charge from the date due until paid in full at a rate equal at all times to one and one-half percent (1-1/2%) per month or, if lower, the highest rate permitted by law.
2.4 Taxes. In addition to any other payments due under the Agreement, Licensee agrees to pay, indemnify and hold NeuroSky harmless from any sales, use, excise, import or export, value-added or similar tax or duty, and any other tax not based on NeuroSky’s income, including any penalties and interest, due to any payment to be made by Licensee pursuant to the Agreement, and any costs associated with the collection or withholding of any of the foregoing items (the “Taxes”). If Licensee fails to pay any Taxes as of the original due date for such Taxes and NeuroSky receives any assessment or other notice (collectively the “Assessment”) from any governmental taxing authority providing that such Taxes are due from NeuroSky, NeuroSky shall give Licensee written notice of the Assessment and Licensee shall pay to NeuroSky or the taxing authority the amount set forth as due in the Assessment within thirty (30) business days of receipt of such written notice from NeuroSky.
3. Quality Control. NeuroSky shall have the right, at all reasonable times and in all reasonable matters, to inspect the quality of the Product including any related advertising or other materials in relation to which the Trademark is used, on the premises of Licensee, and elsewhere as reasonably necessary to carry out the purposes of inspection as part of appropriate quality control. Licensee shall provide to NeuroSky, on a quarterly basis, without charge, a reasonable number of samples of the Product and any related advertising or other materials for such inspection. Licensee may not ship or distribute any Product without receiving NeuroSky’s written approval, and thereafter shall not depart from such approval.
4. Marketing Material. Licensee shall submit to NeuroSky for approval, in the manner which NeuroSky shall reasonably direct, all brochures, labels, advertising, displays, and other material on which the Trademark appears, and Licensee specifically undertakes to amend to the specification of NeuroSky any such publications, websites, brochures, labels, advertising, displays, and other material that are not approved by NeuroSky. Any submission not approved in writing by NeuroSky shall be deemed disapproved, and Licensee shall make any changes required by NeuroSky.
5. Restrictions. Licensee recognizes NeuroSky’s title to the Trademark and shall not at any time do or suffer to be done any act or thing that will in any way impair the rights of NeuroSky in and to the Trademark. It is understood that Licensee shall not acquire and shall not claim any title to the Trademark adverse to NeuroSky by virtue of the license granted to Licensee, or through Licensee's use of the Trademark, it being the intention of the parties that all use of the Trademark shall at all times inure to the benefit of NeuroSky. Upon termination of this Agreement for any reason, Licensee agrees to discontinue use of the Trademark or any trademark confusingly similar to the Trademark and to destroy all existing literature that references the Trademark. Licensee will not: (i) alter the Trademark, (ii) use the Trademark as part of Licensee’s trade name, service mark, or trademark, (iii) seek to register the Trademark, or any substantially similar trademarks, in any jurisdiction, (iv) challenge NeuroSky’s ownership of the Trademark or the validity or enforceability thereof, or (v) take any action that likely would diminish the value of the Trademark. Licensee will immediately change or discontinue any use of the Trademark as requested by NeuroSky. Upon termination of the Agreement, Licensee shall cease all use of the Trademark. If Licensee acquires any rights in the Trademark by operation of law or otherwise, it will immediately, at no cost or expense to NeuroSky, assign such rights to NeuroSky along with all associated goodwill.
6. Non-Deceptive Practices. Licensee shall conduct business in a manner that will at all times favorably reflect on the Trademark and the reputation of NeuroSky and avoid any deceptive or unethical practices or advertising that is or might be detrimental to NeuroSky or its customers. Licensee will make no false or misleading representations with regard to NeuroSky or the Product and will not enter into any contract or engage in any practice detrimental to the interests of NeuroSky.
7. Confidential Information.
7.1 Licensee agrees to maintain in confidence what it knows or has reason to know is regarded as confidential by NeuroSky (“Confidential Information”). The Confidential Information will include, but will not be limited to, trade secrets, the structure, formulae, algorithms, software programs, software source documents, APIs, sequence and organization of the Products, sales and marketing plans, blueprints, techniques, processes, procedures and formulae, price lists, specifications, prints, product plans and marketing plans, customer lists, business forecasts, procurement requirements and purchasing and manufacturing information and the terms of the Agreement. In order for information to be deemed Confidential Information it must be marked by NeuroSky prior to its receipt by the Licensee in a manner to indicate that it is considered Confidential Information hereunder. Any information disclosed orally or visually must (i) be identified at the time of disclosure as confidential and (ii) within ten (10) days of such disclosure be described in writing and sent by NeuroSky to Licensee in sufficient detail to describe such disclosure, in order for it to be deemed Confidential Information. Licensee shall, during the term of the Agreement and for three (3) years after the termination of the Agreement, keep in confidence all such Confidential Information, and shall not use such Confidential Information without NeuroSky’s written consent, except in performance of its duties hereunder; provided, that with respect to any algorithms, source code or firmware disclosed hereunder, the obligations of confidentiality shall extend indefinitely, subject to the exclusions below. Licensee will not disclose the Confidential Information to any person except its employees or consultants to whom it is necessary to disclose the Confidential Information for such purposes. Licensee agrees that the Confidential Information will be disclosed or made available only to those of its employees or consultants who have agreed to receive it under terms at least as restrictive as those specified in the Agreement.
7.2 Licensee will take reasonable measures to maintain the confidentiality of the Confidential Information, but not less than the measures it uses to protect its confidential information of similar type. Licensee will immediately give notice to NeuroSky of any unauthorized use or disclosure of the Confidential Information. Licensee agrees to assist NeuroSky in remedying such unauthorized use or disclosure of the Confidential Information. This obligation will not apply to the extent that Licensee can demonstrate:
7.2.1 the disclosed information, at the time of disclosure, was part of the public domain;
7.2.2 the disclosed information became part of the public domain, by publication or otherwise, except by breach of the provisions of the Agreement;
7.2.3 the disclosed information can be established by written evidence to have been in the possession of Licensee at the time of disclosure; or
7.2.4 the disclosed information is received from a third party without similar restrictions and without breach of the Agreement.
7.3 Government Process. It shall not be a breach of this Section 7 to disclose Confidential Information to the extent that the disclosed information is required to be disclosed by a government agency to further the objectives of the Agreement, such as to obtain permission to distribute the Product, or by a proper court of competent jurisdiction; provided, however, that Licensee will use its best efforts to minimize the disclosure of such information and will consult with and assist NeuroSky in obtaining a protective order prior or confidential treatment to such disclosure.
8. NeuroSky Products. Licensee agrees that it shall not contract with any other provider of products incorporating NeuroSky’s technology, including without limitation as a reseller, distributor, sales representative, logistics provider or otherwise, without the prior written consent of NeuroSky, which may be granted or withheld in NeuroSky’s sole discretion.
9. Term and Termination.
9.1 Term. The term of the Agreement shall begin as of the Term Start Date and shall continue for the term specified in the Agreement, subject to the terms and conditions set forth hereunder.
9.2 Causes for Termination. The Agreement and all licenses under the Agreement will terminate:
9.2.1 Thirty (30) days following the date either party gives the other notice of a material breach by the other of any term or condition of the Agreement or of any agreement between NeuroSky and Licensee relating to the Products, unless the breach is cured within such thirty (30) day period; provided that any willful unauthorized use, modification, registration or sublicensing of the Trademark will be deemed a material breach of the Agreement that cannot be cured and shall be grounds for immediate termination;
9.2.2 upon notice by either party, immediate upon the liquidation, dissolution, reorganization, merger, sale of substantially all of the assets, or change in management, voting control or corporate form, of the other party; or
9.2.3 upon notice by either party, immediately, if
18.104.22.168 a receiver is appointed for the other party or its property;
22.214.171.124 the other party becomes insolvent or unable to pay its debts as they mature in the ordinary course of business or makes an assignment for the benefit of its creditors; or
126.96.36.199 any proceedings are commenced against the other party under any bankruptcy, insolvency or debtor’s relief law and such proceedings are not vacated or set aside within sixty (60) days from the date of commencement thereof.
9.2.4 upon notice by NeuroSky, immediately, if
188.8.131.52 There is a change in control of Licensee of fifty percent (50%), whether through merger, sale of stock or sale of substantially all of the assets of Distributor;
184.108.40.206 Licensee engages in fraud or criminal misconduct relevant to the operation of the business of Licensee;
220.127.116.11 Any officer or key employee of Licensee is convicted of a felony or misdemeanor involving fraud, moral turpitude or commercial dishonesty, whether or not the crime arose from the operation of Licensee’s business.
9.3 Effect of Termination. After termination:
9.3.1 all rights of Licensee to use the Trademark shall immediately cease;
9.3.2 all sums owed to NeuroSky by Licensee shall become immediately due and payable upon the effective date of termination; and
9.3.3 Licensee shall return or destroy all copies of the Confidential Information within thirty (30) days after the effective date of the termination. At the request of NeuroSky, the president or the equivalent officer of Licensee will certify in writing that Licensee has complied with its obligations hereunder.
Upon expiration of this Agreement, Licensee shall have a period of sixty (60) calendar days to sell-off any remaining units of Product on hand in its current inventory.
Neither NeuroSky nor Licensee shall be liable to the other, because of such expiration or termination, for compensation, reimbursement or damages (i) for the loss of prospective profits, anticipated sales or goodwill, (ii) on account of any expenditures, investments or commitments made by either, or (iii) for any other reason whatsoever based upon the result of such expiration or termination.
10. Warranties; Disclaimer.
10.1 Licensee hereby represents and warrants to NeuroSky that the Product is and shall be safe and suitable for its intended purpose, and the packaging, labeling, manufacture, distribution, marketing, and sale thereof comply with all applicable laws and regulations.
10.2 NeuroSky hereby represents and warrants to Licensee that:
10.2.1 it has the authority and right to execute this Agreement and to grant all rights granted by him herein;
10.2.2 it is the sole owner of the Trademark; and
10.2.3 neither the Trademark nor any portions thereof, nor their use a contemplated herein, will violate or infringe upon any common law or statutory right of any third party anywhere in the world, including, without limitation, contractual rights, copyrights, trademark rights, and rights of publicity.
10.3 NEUROSKY DISCLAIMS ALL WARRANTIES NOT SPECIFICALLY SET FORTH IN THE AGREEMENT, INCLUDING, WITHOUT LIMITATION, THE IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NON-INFRINGEMENT OF THIRD PARTY RIGHTS.
11.1 By NeuroSky. NeuroSky will defend any suit or proceeding brought against Licensee in the Territory based on a claim that the Trademark, as used by Licensee under the Agreement, infringes or misappropriates any rights of third parties. NeuroSky will pay all settlements and damages finally awarded therein against Licensee; provided that Licensee (a) shall have made all payments to NeuroSky due under the Agreement; (b) shall have otherwise complied with the terms, conditions and provisions of the Agreement; (c) shall have given prompt written notice to NeuroSky of any claim of infringement and furnished NeuroSky with all papers received in connection therewith; (d) shall have permitted NeuroSky to take complete charge of the defense of any such suit and to settle the same, in either case if deemed advisable by NeuroSky; and (e) shall have assisted NeuroSky in every reasonable manner in the conduct of such defense. In the event that NeuroSky elects to not take charge of the defense of any such suit, Licensee shall have the right to defend against any such suit at the cost and expense of NeuroSky. If the use of the Trademark is permanently enjoined or a final judgment awarding damages is entered against Licensee by reason of any such infringement or misappropriation, NeuroSky may immediately terminate this Agreement.
11.2 By Licensee. Licensee will defend, indemnify and hold harmless NeuroSky, its licensees, subsidiaries, affiliates, employees, assignees and agents from and against any claim, damages and expenses, including, without limitation, reasonable attorneys’ fees, arising from the Product.
12. LIMITATION OF LIABILITY. NEITHER PARTY SHALL BE RESPONSIBLE AND SPECIFICALLY DISCLAIMS LIABILITY FOR ANY SPECIAL, INCIDENTAL OR CONSEQUENTIAL AND INDIRECT DAMAGES, HOWEVER ARISING, EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. Except for NeuroSky’s liability under ITS INDEMNIFICATION OBLIGATIONS HEREIN, NeuroSky’S LIABILITY IN CONNECTION WITH THE AGREEMENT SHALL NOT EXCEED IN THE AGGREGATE (A) THE SUM OF LICENSEE’S PAYMENTS TO NEUROSKY UNDER THE AGREEMENT DURING THE TWELVE (12) MONTHS IMMEDIATELY PRECEDING THE EVENTS GIVING RISE TO SUCH LIABILITY OR (B) FIFTY THOUSAND DOLLARS (US$50,000), WHICHEVER IS LESS. IN NO EVENT WILL NEUROSKY’S LIABILITY UNDER THIS SECTION EXCEED THE LIMITS OF ITS INSURANCE, OR $100,000, WHICHEVER IS GREATER.
13.1 Foreign Laws. Licensee shall regularly and continuously inform NeuroSky of any and all requirements of laws, statutes, ordinances, rules and regulations of any and all governmental and/or quasi-governmental authorities in the Territory directly or indirectly affecting the sale, license, use or distribution of the Products or NeuroSky’s trade name, trademarks or other commercial or intellectual property interests, including, but not limited to, certification of the Products from the proper authorities. Licensee shall comply with all applicable local and national laws and regulations.
13.2 Foreign Corrupt Practices Act. Licensee warrants that in the exercise of its rights under the Agreement, it shall not act in any fashion or take any action which will render NeuroSky liable for a violation of the U.S. Foreign Corrupt Practices Act, which prohibits the offering, giving or promising to offer or give, directly or indirectly, money or anything of value to any official of a government, political party or instrumentality thereof in order to assist it or NeuroSky in obtaining or retaining business.
13.3 Currency Exchange. Unless NeuroSky provides written instructions otherwise, all payments by or to NeuroSky hereunder shall be in United States currency drawn on a United States bank. The amounts owed to NeuroSky shall be determined by the foreign currency of the country specified in Licensee address as set forth above/US.$ exchange ratio quoted by The Wall Street Journal as of the close of business on the payment due date. Payments based on sales in other currencies shall be converted to U.S. Dollars according to the official rate of exchange for that currency, as published in The Wall Street Journal (Western Edition), on the last day of the calendar quarter in which the payment accrued (or, if not published on that day, the last publication day for The Wall Street Journal during that month).
13.4 Choice of Law. The Agreement is governed by and construed in accordance with the laws of the United States and the State of California, as applied to agreements entered into and to be performed entirely within California and between California residents. The parties agree that the United Nations Convention on Contracts for the International Sale of Goods (1980) is specifically excluded from application to the Agreement.
13.5 Language. The official language of the Agreement exclusively shall be, and all communications and agreements between the parties exclusively shall be made in, the English language. The parties hereto waive any rights they may have under any other law to have the Agreement written in another language, and any translation of the Agreement will be solely for the convenience of the parties hereto.
13.6 Amendment. The Agreement may be amended or modified only by a writing that is signed by duly authorized representatives of both parties.
13.7 Waiver. No term or provision hereof will be considered waived by either party, and no breach excused by either party, unless such waiver or consent is in writing signed on behalf of the party against whom the waiver is asserted. No consent by either party to, or waiver of, a breach by either party, whether express or implied, will constitute a consent to, waiver of, or excuse of any other, different, or subsequent breach by either party.
13.8 Severability. If any part of the Agreement is found invalid or unenforceable, such part will be amended to achieve as nearly as possible the same economic effect as the original provision and the remainder of the Agreement will remain in full force.
13.9 Equitable Relief. Either party may have injunctive, preliminary or other equitable relief to remedy any actual or threatened dispute that is excepted from compulsory arbitration.
13.10 Entire Agreement. The Agreement, including all Exhibits hereto, constitutes the entire agreement between the parties relating to this subject matter and supersedes all prior or simultaneous representations, discussions, negotiations, and agreements, whether written or oral. This original of the Agreement has been written in English and no translation will have any effect on the interpretation thereof.
13.11 Venue. Except with respect to those claims which are subjected to arbitration herein, the parties hereby submit to the exclusive jurisdiction of, and waive any venue objection against, the state and federal courts located in the State of California and the County of Santa Clara, in any litigation arising out of the Agreement.
13.12 Notices. All notices, reports, requests, approvals and other communications required or permitted under the Agreement must be in writing. They will be deemed given when required if: (i) delivered personally, or (ii) sent by commercial overnight courier with written verification of receipt. Such notice shall be treated as having been received upon actual receipt. All communications must be sent to the receiving party’s addresses as set forth in the Agreement or to such other address that the receiving party may have provided for purpose of notice, in a manner provided in this Section:
13.13 Allocation of Risk. The sections on limitations of liability, disclaimer of warranties and warranties allocate the risks in the Agreement between the parties. This allocation is reflected in the pricing of the Products and is an essential element of the basis of the Agreement.
13.14 Relationship of the Parties. The parties to the Agreement are independent contractors. There is no relationship of agency, partnership, joint venture, employment, or franchise between the parties in any way. Neither party nor its employees has the authority to bind or commit the other party in any way or to incur any obligation on its behalf.
13.15 Assignment. NeuroSky may assign the Agreement to any person to whom it transfers all or substantially all of its proprietary rights in the Trademark. Otherwise, neither party may assign, voluntarily, by operation of law or otherwise, any rights or delegate any duties under the Agreement without the other party’s prior written consent, and any attempt to do so without that consent will be void. The Agreement will bind and inure to the benefit of the parties and their respective successors and permitted assigns.
13.16 Arbitration. Except with respect to claims for a breach of any intellectual property-related rights hereunder, any dispute between NeuroSky and Licensee under the Agreement involving its interpretation or the obligations of a party hereto, shall be determined by binding arbitration conducted in English. Arbitration shall be held in accordance with the Rules of the American Arbitration Association (“AAA”) in the City of San Jose, State of California of the United States. Arbitration may be conducted by one (1) attorney arbitrator by mutual agreement or by three (3) arbitrators if the parties are unable to agree on a single arbitrator within thirty (30) days of first demand for arbitration. All arbitrators are to be selected from a panel provided by the AAA. If a three-arbitrator panel is necessary, the chairman and one other arbitrator shall be attorneys-at-law, and the third arbitrator shall have a background or training in either computer law, computer science, computer engineering, or marketing of computer-industry products. The arbitrators shall have the authority to permit discovery, to the extent deemed appropriate by the arbitrators, upon request of a party. The arbitrators shall have no power or authority to add to or detract from the agreements of the parties. The costs of the arbitration shall be borne equally pending the arbitrator’s award. The arbitrator shall have the authority to grant any temporary, preliminary, or permanent injunctive or other equitable relief in a substantially similar form, that would otherwise be granted by a court. The arbitrators shall have no authority to award punitive or consequential damages. The resulting arbitration award may be enforced by all lawful remedies, including without limitation injunctive or other equitable relief in any court of competent jurisdiction. The trial courts of the County of Santa Clara, State of California, and the United States District Court for the Northern District of California are courts of competent jurisdiction. The parties agree to submit to the jurisdiction of those courts, as applicable, for all purposes concerning any arbitration.
13.17 Survival. The sections of the Agreement that, by their terms, are intended to survive termination of the Agreement will survive any termination of this Agreement.
Last updated August 14, 2012