Common use of Indemnification; Proprietary Rights Clause in Contracts

Indemnification; Proprietary Rights. 13.1 E*TRADE shall indemnify and hold harmless VERSUS and its Customers from and against any damages, costs, and attorneys' fees, if any, finally awarded in any suit or the amount of the settlement thereof resulting from a claim by a third party that the Technology, Licensed Marks or E*TRADE Services infringe any United States or Canadian Proprietary Rights, and all costs and damages arising in connection therewith, provided that (i) E*TRADE is promptly notified of any and all threats, claims and proceedings related thereto, (ii) E*TRADE shall have sole control of the defense and/or settlement thereof, (iii) VERSUS furnishes to E*TRADE, upon request, information available to VERSUS for such defense, and (iv) VERSUS provides E*TRADE with reasonable assistance at E*TRADE's expense. THE FOREGOING IS IN LIEU OF ANY WARRANTIES OF NONINFRINGEMENT, WHICH ARE HEREBY DISCLAIMED (WITHOUT LIMITING THE LIABILITY OF E*TRADE HEREUNDER). The foregoing obligation of E*TRADE does not apply with respect to Technology, E*TRADE Services or Licensed Marks or portions or components thereof (A) not supplied by or on behalf of E*TRADE or its licensors, (B) made in whole or in part in accordance to VERSUS specifications to the extent that the alleged infringement is caused by VERSUS' specifications, (C) that are modified by or on behalf of VERSUS (other than by E*TRADE or its Affiliates) after delivery from E*TRADE to the extent that the alleged infringement relates to such modification, (D) combined by or on behalf of VERSUS (other than by E*TRADE or its Affiliates) with other products, processes or materials to the extent the alleged infringement relates to such combination, (E) where VERSUS continues allegedly infringing activity after being supplied with modifications (as provided below) that would have avoided the alleged infringement, to the extent that the alleged infringement is caused by such continuing activity or (F) to the extent the claim arises by reason of VERSUS' use of the Technology, E*TRADE Services or Licensed Marks not being in accordance with this Agreement. VERSUS will indemnify E*TRADE and its officers, directors, agents and employees from all damages, settlements, attorneys' fees and expenses related to a claim of infringement or misappropriation excluded from E*TRADE's indemnity obligation by the immediately preceding sentence. Notwithstanding the foregoing, neither party shall be obligated to indemnify or hold harmless the other party for any claim of any third party for infringement of United States or Canadian Proprietary Rights, or any costs or damages arising in connection therewith, that relate solely to the combination of any of the E*TRADE Services, Licensed Marks, or Technology with any of the VERSUS Retail Core System or related trademarks, services, software and technology of VERSUS. In the event the Technology, Licensed Marks, or E*TRADE Services are held or are reasonably believed by E*TRADE to infringe, as provided in the first sentence of this Section 13.1, E*TRADE shall, use commercially reasonable efforts, at its sole expense, (i) in the case of Technology and E*TRADE Services, replace the infringing portions of the Technology or E*TRADE Services or modify them to be non-infringing provided that any such replacements or modifications do not materially adversely affect VERSUS' right or ability to continue using the E*TRADE Services or Technology as contemplated by this Agreement, including without limitation, materially adversely affecting the functionality, usefulness or compatibility thereof, or, (ii) procure for VERSUS the right to continue using the E*TRADE Services, Technology and Licensed Marks in substantially the same manner as contemplated by this Agreement. If the foregoing alternatives are not available on commercially reasonable terms, E*TRADE may terminate this Agreement on thirty (30) days prior written notice, and in the event of such termination, E*TRADE shall refund to VERSUS all amounts paid by VERSUS to E*TRADE pursuant to Section 4.1, and shall be liable to pay to VERSUS all costs, expenses and damages incurred by VERSUS as a result of such termination as determined by arbitration, a court of competent jurisdiction or as agreed to by the parties, including without limitation the costs of developing or migrating to a replacement system and technology, but subject to an overall limit of * * * . [* INDICATES THAT MATERIAL HAS BEEN OMITTED AND CONFIDENTIAL TREATMENT HAS BEEN REQUESTED THEREFOR. ALL SUCH OMITTED MATERIAL HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2.] This Section 13.1 is intended to state the entire liability of E*TRADE with respect to infringement claims notwithstanding the representations in Sections 10.1(v), (vi) and (x). 13.2 If VERSUS becomes aware of any product or activity of any third party that involves infringement or violation of any E*TRADE Proprietary Right in the Territory, then VERSUS shall promptly notify E*TRADE in writing of such infringe ment or violation. E*TRADE shall do all such acts or things as are reasonably necessary to maintain the validity of the Licensed Marks including promptly taking action to enforce its rights in respect of the Licensed Marks in Canada and including taking such steps as may be reasonably necessary to enjoin and terminate any infringement or passing off in respect of the Licensed Marks which comes to its attention. Only if E*TRADE does not take the aforesaid action within ninety (90) days of having written notice from VERSUS of such infringement or passing off, VERSUS shall have the right, at its own expense, to undertake such proceedings and take such action as it reasonably shall deem appropriate. 13.3 E*TRADE and VERSUS agree to work cooperatively regarding issues concerning Proprietary Rights and similar matters and to exercise reasonable business judgment in carrying out the objects of this Agreement to avoid exposing either party to liability under patent, copyright, trademark or similar laws in the Territory. 13.4 Each party hereto (the "Indemnitor") agrees to defend, indemnify and hold the other parties hereto harmless from and against any and all costs and expenses (including reasonable attorneys' fees), liabilities, damages or other loss arising out of the Indemnitor's actions or omissions to act under this Agreement, any breach of the Indemnitor's covenants, representations or warranties hereunder.