Contract Licensing Patented Amusement Game or Device-Exclusive Rights.

Gonzales v. Kentucky Derby Co., 197 App. Div. 277, 189 N. Y. Supp. 783.

AGREEMENT made...

192, between...

a New York corporation, hereinafter called the Company, and.. hereinafter called.. WITNESSETH:

. (name),

In consideration of the undertaking, promises and agreements and subject to the conditions and covenants hereinafter set forth, the said parties hereto, for themselves, their successors and assigns, mutually agree as follows:

1. The said company, owner of the patent rights covering the game or device known as.

does hereby lease to the said.

years from the date hereof,.

hereinafter mentioned,

.for a term of (......)

said. . . . . . . . . . all the rights and privileges to use and operate the same during the said term as hereinafter set forth.

2. The said Company agrees to install said device or game, or cause the same to be installed with complete equipment, ready for operation, on or before... on premises to be furnished by the said.. on the thoroughfare known and agrees to provide a license for said. and pay the license fee therefor required by the municipal authorities.

as..

3. The said..

.agrees to pay to the said Company,

($......) dollars,

for the use of said game or device, and the rights and privileges hereinafter set forth, the sum of..... payable as follows:

(a)

(b)

(c)

4. The said Company agrees that it will not itself, operate or sell or lease to any other person, firm or corporation, any other... game or device, to be operated on the thorduring the season of...

oughfare known as... or as long thereafter as the said... ...wishes to have the

exclusive right to operate the same game or device on said thoroughfare, as hereinafter provided.

5. The said

agrees to furnish a suitable place for

the installation of said game or device, on the thoroughfare known as. with proper electric connections for said installation, and agrees to operate such game or device at no other place on... ..except on the said thoroughfare

known as.

. during the said season of....

But, in the event that the Municipal or other authorities should, for any reason, prevent the said. ..from operating said game or device on said thoroughfare during the said season of... or if it shall become impracticable, or unprofitable, for any reason to operate said game or device on said thoroughfare during said season then the said.. may, at his own expense remove such game or device from said thoroughfare, and operate same at any other place in any part of the United States where the said Company is not at that time operating a similar game or device, or has not at that time given to any other person, firm or corporation the exclusive right to operate any similar game or device.

6. At the close of the said season of...

the said

may remove the said game or device from the said

and operate the same in any other place in any part of the United States where the said Company is not at that time operating a similar game or device, or has not at that time given to any other person, firm or corporation the exclusive right to operate any similar game or device.

7. The said..... agrees to conduct the said game or device in a lawful and orderly manner and to comply with all Municipal ordinances and regulations in respect to the same, and agrees that any coupon or certificate given by the said

and

to any customer, as evidence of the winning of a race, shall be marked, so as to indicate that the same is given at the game or device operated by the said... not at any game or device operated by the said Company, or by any other person, firm or corporation, which may be operating a similar game or device, at any other place.

8. The said Company agrees to furnish the said....

during the term of this agreement, all spare and repair parts,

which may be required, and all improvements, which may be hereafter made in connection with the said game or device, at the cost price thereof, plus..

.%.

9. It is mutually agreed that the said..

may at

his option obtain from the said Company the exclusive right to operate said game or device on the said thoroughfare referred to as the.... for season of.... and for the seasons

subsequent thereto, upon giving notice in writing to the said Company of his election to exercise such option at theoffice of said Company at New York City on or before the 1st day of in each and every year, begining with the year... and upon paying or tendering to the said Company .at the time of giving said notice. But ..fails to exercise this option

....

the sum of $.. in the event that the said. in any one year, this option shall cease for all subsequent years, but the other provisions of this agreement shall continue to remain in full force and effect until the expiration thereof.

Patents License Agreement to Manufacture and Sell Commodity-General Form

Williston-Secs. 607n., 1446, 1642, 1649, 1652, 1661, 1934n. AGREEMENT made.... .between...

hereinafter described as the "Licensor," and.

hereinafter described as the "Licensee," WITNESSETH:

WHEREAS, the Licensor is the sole owner, saving and excepting existing licenses thereunder, of all the right, title and interest in, to and under Letters Patent of the United States, No.. granted. to the Licensor as assignee of. for Apparatus for...

and in, to and under the following additional Letters Patent of the United States, and applications for Letters Patent of the United States, namely:

...and

WHEREAS, the Licensee is desirous of obtaining a license, not exclusive, to manufacture, use and sell under said patents and applications for patents, and patents to be granted upon said applications.

NOW, THEREFORE, for and in consideration of the sum of

One Dollar ($1.00) from each of the said parties to the other paid, and of other considerations from each party to the other party moving, the receipt whereof is hereby acknowleeged, the parties hereto have agreed and do hereby agree as follows:

1. The Licensor hereby grants to the Licensee, and to its successors and assigns upon the terms and conditions and with the limitations hereinafter set forth, a non-exclusive license for the remainder of the term of the aforesaid Letters Patent No...... or any reissue, division, or extension thereof to make, use and sell, under all of the aforesaid Letters Patent, and under any reissues, divisions, or extension thereof, and under any patent or patents that may be granted upon the said applications or any of them.

2. The Licensee hereby agrees that during the continuance of this license it will not make, use or sell any..

machine or apparatus except as above limited.

3. The Licensee agrees to pay to the Licensor, or its successors or assigns, a license fee or royalty upon each and every apparatus or appurtenance made, sold, leased or put into use by it (except such as are used directly by the Licensee second part for demonstration purposes) within a period of. years from the date of this license, the sum of... .per cent of the net bona fide wholesale selling price thereof on sales made by the Licensee at wholesale, and ...per cent, of the actual bona fide net selling price thereof on sales made by the Licensee at retail direct to purchasers; the said royalty to be paid quarterly within thirty days after the end of each quarterly period, the first quarter to begin with the first day of. and to end on

the last day of...

6. The said.

.apparatus or appurtenances

are to include only the following equipment, namely:.

5. And the Licensee agrees to render statements duly verified by its proper officer, at each of the times stated for payment, showing all.. .apparatus or other articles above enumerated or included which the Licensee has made, sold, leased or put into use (except such as are used

directly by the Licensee for demonstration purposes) within the quarter which the statement covers, and to keep full, accurate and complete books of account respecting the said business, and to give the Licensor, or its duly authorized representatives, the privilege of inspecting or examining said books of the Licensee at all reasonable times for the purpose of verifying said quarterly statements and determining the correctness of the said quarterly payments.

6. The Licensee hereby covenants and agrees that during the life of this license it will diligently and continuously manufacture, sell and market. .apparatus under this license and will exert its best efforts to create a demand therefor, and to increase and extend its business and to supply the demand for its vacuum cleaning output.

7. In the event that the Licensee, or its successors to its whole.. .business discontinues the said business, this license shall cease and terminate at the option of the Licensor.

8. The Licensee hereby covenants and agrees that it will mark all... .apparatus made, sold, leased, or put

into use by it with the word "Patented" and the date... and with the dates of such other patents under which this license is granted as are lawfully applicable to the said apparatus or appurtenance.

9. IT IS AGREED that the license hereby granted to the Licensee is to continue during the remainder of the term of patent No... as above set forth, but in the event that said patent. ..shall be declared invalid by the final judgment of a court of last resort the license in respect to all of the other patents and applications above enumerated and the payments of royalties under said patent.. and under

said other patents and applications shall thereafter cease and determine. Payment of the royalty herein stipulated to be paid shall cease if within five years from the date hereof the said patent.. shall not have been finally adjudicated and held to be valid in a case in which the validity of said patent is contested, unless the validity of the said patent shall be general public acquiescence become so well established as to enable preliminary injunctions to be procured under said