Exhibit 10.8
EXCLUSIVE PATENT LICENSE AGREEMENT
This Patent Agreement ("Agreement") is entered into by and between Gary
Culliss ("CULLISS"), Direct Hit Technologies, Inc. ("DIRECT HIT"), a
corporation of the State of Delaware having a principal place of business at
386 Washington St., Playhouse Sq., Wellesley, MA 02181 and Draper Fisher
Associates Fund IV, LP ("DRAPER"), effective May 22, 1998.
1. BACKGROUND
1.1 CULLISS is the owner of all rights, title and interest in and
to the CULLISS Patents, as hereinafter defined, and to inventions which are
described or claimed in any of the CULLISS Patents.
1.2 DIRECT HIT desires to acquire exclusive rights under said
CULLISS Patents.
1.3 DRAPER is providing funding to DIRECT HIT in consideration for
an equity interest in DIRECT HIT.
2. DEFINITIONS
2.1 "CULLISS Patents" means the U.S. Patent Applications listed on
Exhibit A of this Agreement, any United States Letters Patent issuing thereon,
and any divisions, continuations-in-parts, continuations or reissues thereof,
for a method for organizing information, and any foreign patents
corresponding thereto.
2.2 "Licensed Product" means any product or part thereof which is
disclosed or covered by said CULLISS Patents.
3. LICENSE GRANT
3.1 CULLISS hereby grants and DIRECT HIT hereby accepts an
exclusive, irrevocable, transferable worldwide, perpetual, fully paid-up
license to make, have made, use, sell, offer for sale and import Licensed
Products and to practice any methods disclosed or claimed in the CULLISS
Patents. The license and rights granted herein may be sublicensed.
4. PAYMENTS
4.1 As consideration for the license and rights granted herein,
DIRECT HIT has transferred a predetermined number of shares of DIRECT HIT
common stock to CULLISS pursuant to the terms of the Stock Purchase Agreement
between DIRECT HIT AND CULLISS to be executed concurrently with this License
Agreement.
5. REPRESENTATIONS AND WARRANTY
5.1 CULLISS hereby represents and warrants that the CULLISS
Patents are not and have not been assigned or licensed to any third party and
that CULLISS has the rights necessary to grant the exclusive license that he
has granted to herein to DIRECT HIT.
5.2 Except as set forth in this Agreement, CULLISS MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED, INCLUDING WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE, OR THAT THE USE OF LICENSED PRODUCTS WILL NOT INFRINGE ANY PATENT,
COPYRIGHT, TRADEMARK OR OTHER RIGHT OR ANY OTHER EXPRESS OR IMPLIED
WARRANTIES.
6. TERM AND TERMINATION.
6.1 Unless terminated earlier pursuant to Sections 6.2 or 6.3, the
Term of this Agreement shall be the last to expire of the CULLISS Patents.
6.2 TERMINATION FOR INSOLVENCY. Subject to cure or remedy of an
event of breach listed below by DIRECT HIT, as described in Section 6.4
("Right to Cure"), CULLISS shall have the right to terminate this Agreement
and its further obligations hereunder if (i) DIRECT HIT files a petition in
bankruptcy or insolvency, or (ii) upon or after the filing of any voluntary
or involuntary petition or answer seeking reorganization, readjustment or
arrangement of DIRECT HIT's business under any law relating to bankruptcy or
insolvency, or (iii) upon or after the appointment of a receiver for all or
substantially all of its property, or (iv) upon or after the making by DIRECT
HIT of any assignment or attempted assignment for the benefit of creditors,
or (v) upon or after the institution of any proceedings for the liquidation or
winding up of DIRECT HIT's business or for the termination of its corporate
charter.
6.3 TERMINATION. Subject to cure listed below by DIRECT HIT, as
described in Section 6.4 ("Right to Cure"), CULLISS shall have the right to
terminate this Agreement and its further obligations hereunder if DIRECT HIT
ceases to do business for a period of sixty (60) days.
6.4 RIGHT TO CURE. Upon the occurrence of any event entitling
CULLISS to terminate this Agreement pursuant to Sections 6.2 and 6.3, CULLISS
may send notice of termination, specifying the nature of the breach, to
DIRECT HIT. DIRECT HIT shall be allowed sixty (60) days following the date of
such notice to cure the breach. Failure to cure the problem shall result in
termination without further notice by the CULLISS, unless such CULLISS
extends the cure period by written notice or withdraws the termination notice.
6.5 Surviving any termination of this Agreement is the following
provision:
(a) Any cause of action or claim of DIRECT HIT or CULLISS
accrued or to accrue because of any breach or default by the other party.
6.6 RIGHTS UPON TERMINATION. In the event of a termination as set
forth in Sections 6.2 and 6.3 above:
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(a) DIRECT HIT agrees to transfer the license as set forth
in Section 3 to DRAPER;
(b) DRAPER agrees to transfer the license to CULLISS; and
(c) CULLISS agrees to grant an undivided one-third interest
in the CULLISS Patents to DRAPER so that CULLISS and DRAPER shall become
joint owners of the CULLISS Patents.
7. U.S. PATENT OFFICE FILING
The parties agree that the attached Confirmatory License may be
recorded with the United States Patent and Trademark Office to provide
notice of the exclusive license to DIRECT HIT.
8. NOTICES.
All notices under this Agreement shall be deemed to have been fully
given when done in writing and deposited in the United States mail,
registered or certified, and addressed as follows:
To CULLISS: Gary Culliss
3432-A Holmes
Cambridge, MA 02138
To DIRECT HIT: Direct Hit Technologies, Inc.
386 Washington St., Playhouse Sq.
Wellesley, MA 02181
Attn:
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Either party may change its address for notification purposes upon
written notice to the other party.
9. SEVERABILITY. If any term of this Agreement is held invalid or
unenforceable for any reason, the remainder of the term shall be amended to
achieve as closely as possible the economic effect of the original term and
all other terms shall continue in full force and effect.
10. APPLICABLE LAW.
This Agreement shall be governed by the laws of the State of California
applicable to agreements negotiated, executed and performed within California.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement in
duplicate originals by their authorized officers or representatives.
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GARY CULLISS
/s/ Gary Culliss
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Signature
5/22/98
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Date
DIRECT HIT TECHNOLOGIES, INC.
/s/ Michael Cassidy
---------------------------------
Name
CEO
---------------------------------
Title
5/22/98
---------------------------------
Date
DRAPER FISHER ASSOCIATES
FUND IV, LP
/s/ Warren Packard
---------------------------------
Name
Director
---------------------------------
Title
5/22/98
---------------------------------
Date
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EXHIBIT A - CULLISS PATENTS
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U.S. Patent Application No. Filing Date Title
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08/840,922 April 25, 1997 Method for Organizing Information
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08/904,795 August 1, 1997 Method for Organizing Information
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08/960,140 October 29, 1997 Method for Organizing Information
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09/041,411 March 12, 1998 Method for Organizing Information
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