IntellectualProperty Agreement

INTELLECTUAL PROPERTY LICENSE AGREEMENT

LAST UPDATED MAY 26, 2022

 

THIS INTELLECTUAL PROPERTY LICENSE AGREEMENT (the “License Agreement”) is made by and among 300 Monks, LLC, a New York limited liability company that does business as Musicolor Method (“Licensor”), and you, a purchaser of the Course (“Licensee”). Licensor and the Licensee may be referred to individually as a “Party” and collectively as the “Parties”. 

 

WHEREAS, Licensee is a participant in the Course, as defined below; 

 

WHEREAS, Licensor is the owner of the certain trademarks set forth in Schedule A (the “Licensed Marks”), including of all rights under common law, any corresponding registrations and applications therefor and the goodwill appurtenant thereto; and

 

WHEREAS, Licensee desires to obtain certain licenses related to the Licensed Marks and Course Materials, as defined below.

 

NOW THEREFORE, in consideration of the mutual covenants contained herein and other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the Parties agree as follows:

  1. Definitions. For the purposes of this License Agreement, in addition to the capitalized terms defined elsewhere in this License Agreement and whether used in the singular or plural form, the following capitalized terms will have the meanings ascribed to them below:
    1. Business” shall mean the use of the Musicolor Works in Licensee’s  provision of music classes to children up to age of 16 (either in private lessons to individuals or in groups up to 12 people) or private lessons to individuals of all ages. 
    2. Course” means the online course Musicolor Masterclass, which can be accessed on the course platform Kajabi, or any other online platform at the discretion of the Licensor.
    3. Course Agreement” shall mean the Course Terms of Purchase, which governs Licensee’s purchase and use of the Course.
    4. Course Materials” means the materials that can be accessed and/or downloaded in the Course that embody the Musicolor Method and/or Musicolor Works.
    5. Musicolor Method” means a music education curriculum, which (i) was developed by Andrew Ingkavet and is owned by Licensor, (ii) explores music, and (iii) teaches Third Parties to play the piano, guitar, ukulele, and other instruments.
    6. Musicolor Works” are reproductions, whether it be in physical or digital form, of works based off of the Musicolor Method that are intended to be sold, sold, or provided to Third Parties.
    7. Territory” means the universe.
    8. Third Party” means any person or entity other than Licensor or Licensee.
  2. License. 
    1. Trademark License. Licensor hereby grants to Licensee a nonexclusive, revocable, worldwide, nontransferable license to use the Licensed Marks in connection with the Business.
    2. Copyright License. Licensor hereby grants to Licensee a nonexclusive, revocable, worldwide, nontransferable license to use, copy, distribute, display, perform, and transmit the Course Materials in connection with the Business (the “Licensed IP”)
    3. Prohibited Activities. Licensee shall not use the Licensed Marks or Course Materials in connection with any business, products, materials or other services of any description other than the Business without the express written consent of Licensor.
    4. Reservation of Rights. Licensee acknowledges and agrees that, except as expressly provided herein, no right title, or interest is granted by Licensor to Licensee, implied or otherwise, in to or under the Licensed Marks and Course Materials in this Intellectual Property License Agreement.
  3. Sublicensing. Licensee may not sublicense the rights granted herein for use in the same manner as provided in this License Agreement and subject to the terms and conditions of this License Agreement.
  4. Payment. As consideration for the license granted herein, starting on the Effective Date, the Licensee shall pay the Initial Fee and Annual Fee, as defined in the Course Agreement. 
  5. Quality Control.
    1. Licensee use the Licensed Marks  in a manner consistent with the highest standards, quality, style and image. Licensee shall use the Licensed Marks only pursuant to the license granted hereby and only in a manner which will ensure no loss by Licensor of any rights in any of the Licensed Marks. Licensor shall have the right to exercise reasonable quality control over the services provided by Licensor, any advertising/promotional materials, signage, stationery, business cards, or other articles bearing the Licensed Marks and Licensee’s use of the Licensed Marks to that degree necessary, in the reasonable opinion of Licensor, to maintain the validity and enforceability of the Licensed Marks and to protect the goodwill associated therewith. Licensee’s right to use the Licensed Marks is limited to such uses as are expressly authorized hereunder, and any unauthorized use thereof shall constitute an infringement of Licensor’s rights. Licensee acknowledges and agrees that Licensor’s approval of or consent to any specific use of any Licensed Mark does not constitute approval of or consent to any other use.
    2. Licensor’s representatives shall have the right to inspect all facilities utilized by Licensee in connection with Licensee’s use of the Licensed Marks and in connection with the Business at any time during normal business hours, on reasonable prior notice.
    3. If Licensor finds that use of the Licensed Marks by Licensee, in Licensor’s reasonable opinion, materially threatens the goodwill of the Licensed Marks, Licensee, shall, upon notice from Licensor, immediately, and no later than ten (10) days after receipt of notice from Licensor, take all measures reasonably necessary to correct the deviations or misrepresentation in, or misuse of, the respective items. If Licensee does not correct the deviations or misrepresentation in, or misuse of, the respective items within this ten (10) day period, Licensor may immediately terminate this License Agreement without further notice or cause.
  6. Use of Licensed Mark. Licensee shall use the Licensed Marks in accordance with sound trademark and trade name usage principles and shall not use the Licensed Marks in any manner which would tarnish, dilute, disparage, or reflect adversely on Licensor, the Licensed Mark, or the goodwill associated therewith.
  7. Property of Licensor.
    1. Licensee acknowledges that the Licensed Marks and all rights therein (with the exception of those rights expressly granted to Licensee hereunder), and the goodwill pertaining thereto belong exclusively to Licensor. Licensee’s use of the Licensed Marks and Course Materials shall inure to the benefit of Licensor for all purposes, including without limitation any rights with respect to trademark or copyright registrations.
    2. Licensee agrees not to (i) register, or attempt to register, the Licensed Marks or any confusingly similar trademark, service mark, trade name or domain name in its own name or any other name, or (ii) use the Licensed Marks and Course Materials other than in connection with the Business in the Territory.
    3. During the term of this License Agreement and thereafter, Licensee will not, and will not assist any person to: (i) challenge the validity or Licensor’s ownership of, or right to license, the Licensed Marks and Couse Materials or any registration or application for registration therefor; (ii) contest the fact that Licensee’s rights under this License Agreement are solely those of a Licensee and terminate upon termination of this License Agreement; and (iii) represent in any manner that it has any title or right to the ownership, registration or use of the Licensed Marks in any manner except as set forth in this License Agreement.
  8. Enforcement and Defense of Licensed Marks. Each Party shall promptly notify the other Party of any infringement or other violation of or challenge to, the Licensed Marks or Course Materials by a Third Party of which it becomes aware. Licensor shall have the sole initial right, but not the obligation, to initiate a lawsuit or take other action in Licensor’s sole discretion and at its sole expense, against uses by Third Parties that may constitute infringement or other violation of the Licensed Marks or Course Materials, including by directing and controlling any such course of action, and any settlement thereof; providedhowever, that Licensor shall not enter into any settlement that adversely affects the rights granted to Licensee (or sublicensees) under this License Agreement without Licensee’s prior written approval which shall not be unreasonably withheld or delayed. Notwithstanding the foregoing, if Licensor in its sole discretion does not initiate a lawsuit or take other such action, Licensee at its sole expense shall have the right to enforce and protect the Licensed Marks and Course Materials, at all times subject to Licensor’s prior written approval. Licensee shall cooperate with Licensor with respect to any such course of action as directed by Licensor, and shall not enter into any settlement without Licensor’s prior written approval.
  9. Term and Termination.
    1. Term. This License Agreement will commence on the date Licensee purchases the Course under the terms of Course Agreement and will remain in force for a period of one (1) year (the “Initial Term”).  Upon the expiration of the Initial Term, this License Agreement automatically will renew for additional successive one (1) year terms (each, a “Renewal Term” and, together with the Initial Term, the “Term”), unless and until earlier terminated as provided under this License Agreement. If the Term is renewed for any Renewal Term(s) pursuant to this Section 9, the terms and conditions of this License Agreement during each such Renewal Term will be the same as the terms in effect immediately before such renewal
    2. Termination.
      1. Termination by Licensee. If Licensee terminates their participation in Course under the Course Agreement, this License Agreement will also terminate.
      2. Termination for Material Breach. Notwithstanding any other term or condition of this License Agreement, Licensor may terminate this License Agreement if the Licensee materially breaches this License Agreement and fails to cure such breach within fifteen (15) days after receipt of written notice from the Licensor, specifying in detail the nature of the breach.
    3. Effect of Termination. Upon and after the termination of this License Agreement:
      1. all rights granted to Licensee hereunder shall revert to Licensor; and
      2. within five (5) days of termination, Licensee shall stop and cease all use of the Licensed Marks or of any mark, trade name, trade dress or domain name confusingly similar to any mark, trade name, trade dress or domain name of Licensor, and Licensee shall remove all uses of the Licensed Marks from its trade name and any advertising/promotional materials, signage, stationery, business cards, or other articles bearing the Licensed Marks and destroy all remaining applicable materials bearing the Licensed Marks.
    4. Survival. Notwithstanding anything to the contrary, all the Parties’ respective representations, warranties and indemnity obligations hereunder and all other provisions hereof intended to survive termination or expiration of this License Agreement shall so survive.
  10. Representations and Warranties. Licensor represents and warrants that (i) Licensor is the owner of the entire right, title and interest in and to the Licensed IP, (ii) Licensor has the sole right and authority to enter into this License Agreement and grant the rights hereunder, (iii) Licensor is not obligated under any consulting agreement, employment agreement, or other agreement or obligation that conflicts with, or would prevent the Licensor from fully performing Licensor’s obligations or granting the rights hereunder, and (iv) there are no third-party claims of intellectual property infringement, defamation, misappropriation, or other contract or tort claims by any Third Parties.
  11. Indemnification.
    1. Indemnification by Licensee. Licensee agrees to indemnify and hold Licensor and its affiliates and the officers, directors, shareholders, employees and agents of any of the foregoing harmless against any liability, losses, damages, penalties, claims, actions, suits, judgments or settlements of any nature or kind (including reasonable costs of investigation, reasonable attorneys’, accountants’ and expert witnesses’ fees, and reasonable expenses payable to Third Parties), incurred by any such person by reason of Licensee’s use of the Licensed Marks and/or Course Materials.
    2. Notice of Claim.
      1. Licensor shall notify Licensee as soon as practicable after Licensor receives notice of or otherwise has actual knowledge of such claim, and shall provide to Licensee as soon thereafter as practicable all information and documentation necessary to support and verify the claim being asserted.
      2. Promptly after receipt by Licensor of notice of the commencement by any person of any action, suit or proceeding which might result in Licensee becoming obligated to indemnify or make any other payment to Licensor under this Section 11 (Indemnification), Licensor shall, if a claim in respect thereof is to be made against Licensee pursuant to this Section 11.2, notify Licensee promptly in writing of the commencement thereof. The failure of Licensor to so notify Licensee shall not relieve Licensee from any liability which it may have on account of this indemnification or otherwise, except to the extent that Licensee is materially prejudiced thereby. Licensee shall have the right, within thirty (30) days after being so notified, to assume the defense (at its expense) of such action, suit or proceeding with counsel reasonably satisfactory to Licensor. In any such action, suit or proceeding the defense of which Licensee shall have so assumed, Licensor shall have the right to participate therein and retain its own counsel at its own expense; providedhowever, that Licensor’s counsel shall be retained at Licensee’s expense if (a) Licensor and Licensee so agree or (b) the named parties to any such action, suit or proceeding (including the impleaded parties) include both Licensor and Licensee and representation of both Licensor and Licensee by the same counsel would be inappropriate due to actual or potential differing interests between them. Licensee shall promptly defend any claim subject to indemnification hereunder, but Licensee shall not settle any claim, admit any liability or consent to any adverse judgment without the prior approval of Licensor, which approval shall not be unreasonably withheld.
      3. Licensor shall cooperate, and shall use its reasonable best efforts to cause its employees and the employees of any of its respective affiliates to cooperate with Licensee in the defense of any action, suit or proceeding assumed by Licensee. Notwithstanding any and all of the foregoing, to the extent that any claim arises out of or is related to the Licensed Marks or any use of the Licensed Marks, Licensor shall have the sole right to select counsel for the defense of such claim and to control the defense, settlement or compromise of such claim.
  12. Miscellaneous.
    1. Notices. Any notices to be given to the Company will be sufficiently given if transmitted via email to the Company at [email protected], or to any other addresses the Company may notify to you from time to time in writing. This notice will be deemed to have been given at the time of delivery, if transmitted via email and no error or “bounce back” has been received within twenty-four (24) hours of submission. 
    2. Severability. Each provision of this License Agreement will be interpreted in such a manner as to be effective and valid under applicable law. In the event that any of the provisions of this License Agreement shall be held by a court or other tribunal of competent jurisdiction to be invalid or unenforceable, such invalid or unenforceable provision will be deemed severed from this License Agreement and this License Agreement will be construed and enforced as if this License Agreement did not contain the particular provisions(s) held to be invalid or unenforceable.
    3. Waiver. The waiver of a breach of this License Agreement or the failure of a Party to exercise any right under this License Agreement will in no event constitute a waiver as to any other breach, whether similar or dissimilar in nature, or prevent the exercise of any right under this License Agreement.
    4. Successors and Assigns. This License Agreement shall be binding upon and shall inure to the benefit of the Parties hereto and their respective successors and assigns.
    5. Governing Law. This License Agreement and any claim, controversy, dispute, or cause of action (whether in contract, tort, or otherwise) based upon, arising out of, or relating to this License Agreement and the transactions contemplated hereby shall be governed by, and construed in accordance with, the laws of the State of New York without giving effect to any choice or conflict of law provision or rule. Licensor hereby submits to the personal jurisdiction of the courts in the State of New York and waives any claim of forum non conveniens.
    6. Entire Agreement; Amendments; Assignments. This License Agreement is the Parties’ final, exclusive and complete understanding and agreement, and supersedes all prior and contemporaneous understandings and agreements relating to the subject matter of this License Agreement. Licensee may not assign this License Agreement.
    7. Headings and Recitals. Section headings are for the convenience of the Parties and should not be construed as part of this License Agreement. The Recitals are incorporated herein and restated at length.

Schedule A

 

LICENSED MARKS

 

Mark

Country

Class

Application Number and Date

Registration Number and Date

MUSICOLOR

United States

     

MUSICOLOR MASTERCLASS

United States

     

MUSICOLOR METHOD

United States

41

 

5070428

10/25/16

MUSICOLOR METHOD

United States

41

90123901

8/19/20