EXHIBIT 4.7
LICENSE AGREEMENT COVER PAGE
THIS LICENSE AGREEMENT COVER PAGE (the "Cover Page," and
together with the attached License Terms, the "License Agreement") is entered
into as of November 22, 2006 (the "Effective Date"), by the following parties:
PARTIES
-------
Licensor: MacroMarkets LLC, a Delaware limited
liability company
Up-MACRO Holding Trust: Claymore MACROshares Oil Up Holding
Trust, a New York trust
Down-MACRO Holding Trust: Claymore MACROshares Oil Down
Holding Trust, a New York trust
Up-MACRO Tradeable Trust: Claymore MACROshares Oil Up
Tradeable Trust, a New York trust
Down-MACRO Tradeable Trust: Claymore MACROshares Oil Down
Tradeable Trust, a New York trust
Initially capitalized terms (including the following terms)
shall have the meaning ascribed to them in this Cover Page and in the License
Terms.
SHARES
------
Up-MACRO Holding Shares: Claymore MACROshares Oil Up Holding
Shares, which represent units of
undivided beneficial interest in the
Up-MACRO Holding Trust
Down-MACRO Holding Shares Claymore MACROshares Oil Down Holding
Shares, which represent units of
undivided beneficial interest in the
Down-MACRO Holding Trust
Up-MACRO Tradeable Shares: Claymore MACROshares Oil Up Tradeable
Shares, which represent units of
undivided beneficial interest in the
Up-MACRO Tradeable Trust
Down-MACRO Tradeable Shares: Claymore MACROshares Oil Down
Tradeable Shares, which represent
units of undivided beneficial
interest in the Down-MACRO Tradeable
Trust
TRUSTS
------
Trustee: Investors Bank & Trust Company, a
Massachusetts trust company
Up-MACRO Holding The Up-MACRO Holding Trust Agreement,
Trust Agreement: dated as of the date hereof, by and
among MACROs Securities Depositor,
LLC, the
Trustee, the Administrative
Agent and the Marketing Agents
Down-MACRO Holding The Down-MACRO Holding Trust
Trust Agreement: Agreement, dated as of the date
hereof, by and among MACROs
Securities Depositor, LLC, the
Trustee, the Administrative Agent and
the Marketing Agents
Up-MACRO Tradeable The Up-MACRO Tradeable Trust
Trust Agreement: Agreement, dated as of the date
hereof, by and among MACROs
Securities Depositor, LLC, the
Trustee, the Administrative Agent
and the Marketing Agents
Down-MACRO Tradeable The Down-MACRO Tradeable Trust
Trust Agreement: Agreement, dated as of the date
hereof, by and among MACROs
Securities Depositor, LLC, the
Trustee, the Administrative Agent
and the Marketing Agents
TERMS
-----
Administrative Agent: Claymore Securities, Inc.
Annual Fee Rate: 0.20% (two tenths of one percent)
Marketing Agent: Claymore Securities, Inc. and MACRO
Financial, LLC, as marketing agents
Product Name: "Claymore MACROshares"
Territory: Worldwide
CONTACT INFORMATION
-------------------
CONTACT INFORMATION FOR LICENSOR:
MacroMarkets LLC
00 Xxxxx Xxxx Xxxxx #0
Xxxxx, XX 00000
Attention: Xxxxxx Xxxxxxx, III
Telephone: (888) MACROS1
CONTACT INFORMATION FOR LICENSEES:
If to the Up-MACRO Holding Trust:
Claymore MACROshares Oil Up Holding Trust
c/o Investors Bank & Trust Company
000 Xxxxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Attention: Xxxxxxx XxXxxxx
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
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If to the Down-MACRO Holding Trust:
Claymore MACROshares Oil Down Holding Trust
c/o Investors Bank & Trust Company
000 Xxxxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Attention: Xxxxxxx XxXxxxx
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
If to the Up-MACRO Tradeable Trust:
Claymore MACROshares Oil Up Tradeable Trust
c/o Investors Bank & Trust Company
000 Xxxxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Attention: Xxxxxxx XxXxxxx
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
If to the Down-MACRO Tradeable Trust:
Claymore MACROshares Oil Down Tradeable Trust
c/o Investors Bank & Trust Company
000 Xxxxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Attention: Xxxxxxx XxXxxxx
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
Licensor and each Licensee (each a "Party," and collectively,
the "Parties") hereby acknowledge and agree that they have reviewed, and shall
be bound by, this Cover Page and the License Terms, which License Terms are
incorporated into this Cover Page by reference.
IN WITNESS WHEREOF, for good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the Parties have
caused the License Agreement to be executed by their duly authorized
representatives as of the Effective Date.
MACROMARKETS LLC,
as Licensor
By: /S/ Xxxxxx Xxxxxxx, III
------------------------
Name: Xxxxxx Xxxxxxx, III
Title: President
CLAYMORE MACROSHARES OIL UP HOLDING TRUST,
as Licensee
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By: INVESTORS BANK & TRUST COMPANY,
not in its individual capacity but solely as
trustee of the Claymore MACROshares Oil Up
Holding Trust
By: /S/ Xxxxxxx X. Xxxxxx
----------------------
Name: Xxxxxxx X. Xxxxxx
Title: President
CLAYMORE MACROSHARES OIL DOWN HOLDING TRUST,
as Licensee
By: INVESTORS BANK & TRUST COMPANY,
not in its individual capacity but solely as
trustee of the Claymore MACROshares Oil Down
Holding Trust
By: /S/ Xxxxxxx X. Xxxxxx
----------------------
Name: Xxxxxxx X. Xxxxxx
Title: President
CLAYMORE MACROSHARES OIL UP TRADEABLE TRUST,
as Licensee
By: INVESTORS BANK & TRUST COMPANY,
not in its individual capacity but solely as
trustee of the Claymore MACROshares Oil Up
Tradeable Trust
By: /S/ Xxxxxxx X. Xxxxxx
----------------------
Name: Xxxxxxx X. Xxxxxx
Title: President
CLAYMORE MACROSHARES OIL DOWN TRADEABLE
TRUST, as Licensee
By: INVESTORS BANK & TRUST COMPANY,
not in its individual capacity but solely as
trustee of the Claymore MACROshares Oil Down
Tradeable Trust
By: /S/ Xxxxxxx X. Xxxxxx
----------------------
Name: Xxxxxxx X. Xxxxxx
Title: President
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LICENSE TERMS
These LICENSE TERMS (the "License Terms ") are incorporated
into the Cover Page to which these License Terms are attached, and form part of
the License Agreement.
1. DEFINITIONS.
For the purposes of the License Agreement, initially capitalized terms
shall have the meaning ascribed to them in this Cover Page and in the License
Terms, including the following terms:
(a) "Administrative Agent" means the "Administrative Agent", not
in its individual capacity but solely as Administrative Agent
under the Up-MACRO Holding Trust Agreement, the Down-MACRO
Holding Trust Agreement, the Up-MACRO Tradeable Trust
Agreement, and the Down-MACRO Tradeable Trust Agreement.
(b) "Affiliate" means, with respect to any Person, any other
Person that, directly or indirectly through one or more
intermediaries, Controls, or is Controlled by, or is under
common Control with, such Person.
(c) "Annual Fee Rate" has the meaning set forth in the Cover
Page.
(d) "Calculation Period" means, with respect to any Distribution
Date, the period from but excluding the second Business Day
prior to the last Distribution Date (or, in the case of the
first Distribution Date, from and including November 22,
2006, which is the closing date for the transaction) to and
including the second Business Day prior to the current
Distribution Date. The Calculation Period that precedes a
particular Distribution Date is referred to herein as being
"related" to such Distribution Date.
(e) "Claymore Marks" means the name and xxxx "Claymore."
(f) "Confidential Information" has the meaning set forth in
Section 10 hereunder.
(g) "Control" means, with respect to any Person, the possession,
directly or indirectly, of the power to direct or cause the
direction of the management or policies of a Person, whether
through the ownership of voting securities, by contract or
otherwise.
(h) "Distribution Date" has the meaning set forth in the
applicable Holding Trust Agreement.
(i) "Distribution Payment Date" has the meaning set forth in the
applicable Holding Trust Agreement.
(j) "Down-MACRO Asset Amount" has the meaning set forth in the
Down-MACRO Holding Trust Agreement.
(k) "Down-MACRO Holding Shares" has the meaning set forth in the
Cover Page.
(l) "Down-MACRO Holding Trust" has the meaning set forth in the
Cover Page.
(m) "Down-MACRO Holding Trust Agreement" has the meaning set
forth in the Cover Page.
(n) "Down-MACRO Tradeable Shares" has the meaning set forth in
the Cover Page.
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(o) "Down-MACRO Tradeable Trust" has the meaning set forth in the
Cover Page.
(p) "Down-MACRO Tradeable Trust Agreement" has the meaning set
forth in the Cover Page.
(q) "Effective Date" has the meaning set forth in the preamble.
(r) "Holding Trust" means the Up-MACRO Holding Trust and the
Down-MACRO Holding Trust.
(s) "Improvements" has the meaning set forth in Section 3(d)
hereunder.
(t) "Indemnified Party" has the meaning set forth in Section 8(c)
hereunder.
(u) "Indemnifying Party" has the meaning set forth in Section
8(c) hereunder.
(v) "License Agreement" has the meaning set forth in the preamble
to the Cover Page.
(w) "Licensed Patents" means any patents and patent applications
of Licensor in the Territory that are related to the MACROs
Structure, including the patent applications as set forth on
Schedule I attached hereto.
(x) "Licensed Patents and Know-How" means the Licensed Patents
and any related know-how provided by Licensor to Licensees.
(y) "Licensee" has the meaning set forth in the preamble to the
Cover Page.
(z) "Licenses" has the meaning set forth in Section 2(a)
hereunder.
(aa) "Licensor" has the meaning set forth in the preamble to the
Cover Page.
(bb) "Licensing Fee" has the meaning set forth in Section 5(a)
hereunder.
(cc) "Losses" has the meaning set forth in Section 8(a) hereunder.
(dd) "MACROs Structure" means any synthetic structured products
which transform various economic goods and services, and
aggregate economic measures, into interests (the value of
which is linked to the performance of a reference index or
price) that can be acquired by investors in the form of
securities and are based on the Patented Products.
(ee) "MACRO Holding Shares" means the Up-MACRO Holding Shares
together with the Down-MACRO Holding Shares.
(ff) "MACRO Tradeable Shares" means the Up-MACRO Tradeable Shares
together with the Down-MACRO Tradeable Shares.
(gg) "Marketing Agent" means the Marketing Agent, not in its
individual capacity but solely as the marketing agent of the
Up-MACRO Holding Trust, the Down-MACRO Holding Trust, the
Up-MACRO Tradeable Trust, and the Down-MACRO Tradeable Trust.
(hh) "Marks" means the names "MACRO," "MacroMarkets," and
"MACROshares."
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(ii) "Party(ies)" has the meaning set forth in the Cover Page.
(jj) "Person" shall be construed broadly and shall include an
individual, a partnership, a corporation, a limited liability
company, an association, a joint stock company, a trust, a
joint venture, an unincorporated organization or another
entity, including a governmental entity (or any department,
agency or political subdivision thereof).
(kk) "Proceeding" has the meaning set forth in Section 8(c)
hereunder.
(ll) "Product Name" has the meaning set forth in the Cover Page.
(mm) "Territory" has the meaning set forth in the Cover Page.
(nn) "Tradeable Trusts" means the Up-MACRO Tradeable Trust and the
Down-MACRO Tradeable Trust.
(oo) "Trustee" means the Trustee, not in its individual capacity
but solely as trustee of the Up-MACRO Holding Trust, the
Down-MACRO Holding Trust, the Up-MACRO Tradeable Trust, and
the Down-MACRO Tradeable Trust.
(pp) "Trusts" means the Holding Trusts and the Tradeable Trusts.
(qq) "Up-MACRO Asset Amount" has the meaning as defined in the
Up-MACRO Holding Trust Agreement.
(rr) "Up-MACRO Holding Shares" has the meaning set forth in the
Cover Page.
(ss) "Up-MACRO Holding Trust" has the meaning set forth in the
Cover Page.
(tt) "Up-MACRO Holding Trust Agreement" has the meaning set forth
in the Cover Page.
(uu) "Up-MACRO Tradeable Shares" has the meaning set forth in the
Cover Page.
(vv) "Up-MACRO Tradeable Trust" has the meaning set forth in the
Cover Page.
(ww) "Up-MACRO Tradeable Trust Agreement" has the meaning set
forth in the Cover Page.
Additionally, the term "including" shall mean including, but not
limited to.
2. LICENSES.
(a) The Licenses. Subject to the terms and conditions of the
License Agreement, Licensor hereby grants to:
(i) each of the Holding Trusts (x) a limited,
non-exclusive, non-transferable, fee-based license,
throughout the Territory for the Term to use the
Licensed Patents and Know-How solely in connection
with each Licensee's activities as an issuer of the
Holding Shares that employ the MACROs Structure, (y)
a limited, non-exclusive, and non-transferable,
fee-based license throughout the Territory for the
Term to use the Marks solely as a part of the name
of each Holding Trust and the MACRO Holding Shares
issued by such Holding Trust, and (z) a limited,
non-exclusive, and non-transferable, fee-based
sub-license throughout the
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Territory for the Term to use the Xxxxxxxx Xxxx
solely as part of the Product Name in connection
with each Holding Trust's name and the names of the
MACRO Holding Shares issued by such Holding Trust;
and
(ii) each of the Tradeable Trusts (x) a limited,
non-exclusive, non-transferable, license throughout
the Territory for the Term to use the Licensed
Patents and Know-How solely in connection with each
Licensee's activities as an issuer of the respective
MACRO Tradeable Shares that employ the MACROs
Structure, (y) a limited, non-exclusive, and
non-transferable, royalty-free license throughout
the Territory for the Term to use the Marks solely
as a part of the name of each Tradeable Trust and
the MACRO Tradeable Shares issued by such Tradeable
Trust, and (z) a limited, non-exclusive, and
non-transferable, fee-based sub-license throughout
the Territory for the Term to use the Xxxxxxxx Xxxx
solely as part of the Product Name in connection
with each Tradeable Trust's name and the names of
the MACRO Tradeable Shares issued by such Tradeable
Trust (collectively with (i), the "Licenses").
(b) No Right to Sublicense. Each Licensee hereby expressly agrees not
to sublicense the Licenses to any Person without the express prior written
consent of Licensor.
(c) Invalidation of Licensed Patents. Each Licensee acknowledges that
the overall value of the licensed system is a function of, among other factors,
the total Asset Amounts of the Holding Trusts. Accordingly, for administrative
convenience, the royalties set forth in Section 5(a) hereunder are calculated
based on the total Asset Amounts of the Holding Trusts regardless of whether a
portion of such MACRO Holding Shares or MACRO Trading Shares are sold and/or
administered in countries in which there are no pending, or in force, Licensed
Patents. However, in the event that all of the patent claims in all of the
Licensed Patents in the United States and any other jurisdiction within the
Territory in which a substantial amount of revenue is derived and/or a
substantial portion of the administration occurs (collectively, with the United
States, the "Main Markets") have expired, or in the event that all of the
patent claims in all remaining unexpired Licensed Patents in the Main Markets
are finally determined (i.e., after exhaustion of all potential appeals) to be
unpatentable, invalid or unenforceable by a court or other government agency of
competent jurisdiction in all jurisdictions in which the Holding Shares and
Offering Shares are sold, offered for sale, issued, or administered, the
Licensing Fees payable under Section 5(a) hereunder shall automatically be
reduced by five (5%) percent. Notwithstanding the foregoing, no such royalty
reduction shall apply to the Licensing Fee if a Licensed Patent that is pending
or in force in the Main Markets.
(d) Marking; Usage Guidelines. Each Licensee shall xxxx patent rights
with respect to any patents licensed hereunder in a manner as reasonably
directed by Licensor and/or approved by Licensor in writing in advance, such
approval not to be unreasonably withheld. Each Licensee shall include
appropriate service xxxx and trademark notices, including the following written
notice in connection with its use of the Licensed Marks (or such other written
ownership notice as reasonably requested by Licensor from time to time):
"[insert Xxxx] are service marks of Macro Markets, LLC and are used under
license to [Licensee]." Each Licensee shall designate the MACRO Structure, the
MACRO Holding Shares and the MACRO Tradeable Shares only through the use of the
Product Name. Each Licensee shall adhere to Licensor's trademark usage
guidelines with respect to the Marks and the Claymore Marks as issued by
Licensor from time to time.
(e) Compliance with Law. Licensee shall comply with all applicable
laws and regulations in connection with the creation, development, and
marketing of the MACRO Structured Product, including all regulations of the
SEC, NASD and any other applicable federal or state regulatory authorities.
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(f) ALL RIGHTS NOT SPECIFICALLY AND EXPRESSLY GRANTED TO LICENSEES IN
THIS ARTICLE 2 ARE HEREBY RESERVED TO LICENSOR.
(g) Quality Control. Licensor shall have the right to review all uses
of the Marks and the Claymore Marks by each Licensee hereunder, and Licensees
shall furnish in advance to Licensor all materials, including, where
applicable, any prospectus, or other offering, marketing, and promotional
materials, to be used hereunder (collectively, the "Materials") in connection
with the Trusts in which any of the Marks and the Claymore Marks are used, for
Licensor's prior review and approval of the uses of the Marks and Claymore
Marks therein. In the event the Materials are issued in a language other than
English, Licensee shall provide Licensor with an English translation of the
relevant portion of such materials. Licensor shall promptly notify Licensee
following receipt thereof from Licensee. If Licensor does not approve of any
use, it shall advise Licensee of its reasons. In this regard, each Licensee
agrees that the quality of the services, in connection with which the Marks and
the Claymore Marks may or will be used by such Licensee as permitted herein,
will be commensurate with Licensor's reputation for reliability and high
quality in financial services, and Licensor shall have the right to require
each Licensee to adhere to that standard of quality. Each Licensee shall do
nothing hereunder which will impair the validity of the Marks or the Claymore
Marks, Licensor's or Claymore's rights in the Marks or the Claymore Marks,
respectively, or the good will symbolized by each of the Marks.
3. ACKNOWLEDGMENT OF RIGHTS.
(a) Property Rights. Each Licensee acknowledges that the Licensed
Patents and Know-How, the MACROs Structure and the Marks are and, under all
circumstances shall remain, the sole and exclusive property of Licensor. All
goodwill resulting from usage of the Licenses by Licensees pursuant to the
License Agreement shall accrue to the benefit of Licensor.
(b) Acknowledgement of Rights. Each Licensee agrees and acknowledges
that the marks are the valuable property of, and are owned by, Licensor. Each
Licensee will not directly or indirectly: (i) challenge or contest the validity
or enforceability of the Licenses; (ii) dispute the validity, enforceability or
Licensor's ownership of the Marks, or initiate or participate in any proceeding
of any kind opposing the grant of Marks, or challenging any trademark
application in connection with the Marks; (iii) apply to register or otherwise
obtain registration of (A) the Licenses, or (B) the Marks or any variation
thereon or derivative thereof with any trademark, business or domain name
registrar; or (iv) assist any other Person to do any of the foregoing (except
if and to the extent required by court order or subpoena). Any violation of
this Section 3(b) will constitute a material breach of the License Agreement.
(c) Maintaining the Licenses. Each Licensee shall, at Licensor's
expense, fully cooperate with and assist Licensor in the maintenance of any
patent, trademark, or other applications and shall execute or obtain execution
of any documents that Licensor shall reasonably request in connection
therewith, including but not limited to any assignment of invention rights.
(d) Improvements. Licensees acknowledge that Licensor shall own all
improvements, modifications and derivative works of the MACROs Structure and
the Licensed Patents and Know-How whether made by Licensor or any Licensee,
alone or in combination (collectively, "Improvements"). Each Licensee hereby
assigns all its rights in and to any Improvements to Licensor and shall execute
all documents, and perform such additional lawful acts, as reasonably requested
by Licensor, to fully effectuate such assignment and to enforce Licensor's
rights to such Improvements.
4. TERM.
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(a) Term. The term of the License Agreement shall commence as of the
Effective Date and for each Licensee shall remain in full force and effect
until the expiration or termination of the applicable Up-MACRO Holding Trust
Agreement, Down-MACRO Holding Trust Agreement, Up-MACRO Tradeable Trust
Agreement or Down-MACRO Tradeable Trust Agreement, unless earlier terminated
pursuant to the terms of the License Agreement (the "Term"). Notwithstanding
the foregoing sentence, the Term of the Licenses hereunder solely with respect
to the Licensed Patents in a particular jurisdiction shall not extend beyond
the expiration or cancellation of such Licensed Patents in the relevant
jurisdiction in the Territory.
(b) Termination. Licensor may terminate the License Agreement with
respect to all Licensees on thirty (30) days' prior written notice if any
Licensee shall fail or be unable to perform its material obligations under the
License Agreement and such failure shall not have been remedied within thirty
(30) days after written notice thereof. Licensee may terminate the License
Agreement on thirty (30) days' prior written notice only with the consent of
all Licensees if Licensor shall fail or be unable to perform its material
obligations under the License Agreement and such failure shall not have been
remedied within thirty (30) days after written notice thereof.
(c) Effect of Termination. On expiration or termination of the License
Agreement, all Licensees shall immediately cease from all use of the Licenses,
the Marks, the Licensed Patents and Know-How, and inventions or works based on
or derivative thereof; and shall immediately deliver all materials bearing or
made in connection with the Licenses including all inventions or works based on
or derivative thereof, to Licensor at the address set forth in the notice
section below, or destroy them, at the option of Licensor. Each Licensee
acknowledges that the licenses granted under the License Agreement are related
and that termination of the License Agreement by any Licensee shall (at
Licensor's option) terminate the License Agreement, and all Licenses hereunder,
with respect to all other Licensees.
5. FEES.
(a) Payment of License Fees. On each Distribution Payment Date, each
Holding Trust will pay to Licensor, as payment in full for the Licenses granted
hereunder, a fee equal to, for each day during each Calculation Period, the
Up-MACRO Asset Amount or the Down-MACRO Asset Amount as applicable, as of the
preceding day, multiplied by the Annual Fee Rate divided by 365 or 366
depending on the number of days in the current year (the "Licensing Fee"). The
Tradeable Trusts shall pay no royalty directly to Licensor, however the
Licenses granted hereunder to each of the Tradeable Trusts are subject to the
payment of Licensing Fees by both of the Holding Trusts.
(b) Auditing Rights. Licensor shall have the right, in each calendar
year, at its own expense and upon due notice to Holding Trusts and Tradable
Trusts, to have an accountant audit during normal business hours and at Holding
Trusts' and Tradable Trusts' designated place of business, the books and
records of each Holding Trust and Tradable Trust, which relate to the asset
amount of the Trusts, in order to verify the daily Asset Amount of the Trusts
based on which the Licensing Fees are paid. In the event that any discrepancies
are found Licensees shall each be jointly and severally responsible to pay to
Licensor promptly any amount due and unpaid. To the extent that the amount due
and unpaid has been found to exceed 5% of the amount that should have been paid
during the preceding year from the auditing day, Licensees shall each be
jointly and severally responsible to pay the amount due promptly together with
a penalty interest rate in the amount of prime rate plus 2% per month.
6. ENFORCEMENT.
(a) Each Licensee shall promptly (i) notify Licensor of any potential
or actual infringement by a third party of any of the Licensed Patents and
Know-How or Marks of which such Licensee becomes
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aware, and (ii) provide to Licensor all evidence of such infringement in that
Licensee's possession, custody or control. Licensor shall have the sole right,
but not the obligation, to initiate any legal action at its own expense against
such infringement and to recover damages and enforce any injunction granted as
a result of any judgment in Licensor's favor. Licensor shall have sole control
over any such action, including, without limitation, the sole right to settle
and compromise such action. In the event of a dispute between Licensor and any
third party regarding the infringement, validity or enforceability of the
Licensed Patents and Know-How or Marks, each Licensee agrees, at Licensor's
reasonable expense, to do all things reasonably requested by Licensor to assist
Licensor in connection with such dispute.
(b) Any Licensee's delay, of more than thirty (30) days, in performing
its obligations pursuant to Section 6(a) hereof will constitute a material
breach of the License Agreement.
7. REPRESENTATIONS AND WARRANTIES.
(a) Each Party hereby represents and warrants that (i) it has the power
and authority to enter into the License Agreement and perform its obligations
hereunder; (ii) the execution and delivery of the License Agreement have been
duly authorized and all necessary actions have been taken to make the License
Agreement a legal, valid and binding obligation of such Party enforceable in
accordance with its terms; and (iii) the execution and delivery of the License
Agreement and the performance by such Party of its obligations hereunder will
not contravene or result in any breach of the Certificate of Incorporation,
Bylaws or any other organizational document of such Party or of any agreement,
contract, indenture, license, instrument or understanding or, to the best of its
knowledge, result in any violation of law, rule, regulation, statute, order or
decree to which such Party is bound or by which they or any of their property is
subject.
(b) Licensor represents and warrants that, to its actual knowledge, it
owns and/or has the right to license to each Licensee the Licenses in the
United States and that the Licenses and Licensees' use of the Licensed Patents
and Know-How and the Marks in accordance with the License Agreement will not
infringe any copyright, trademark, trade secret or patent right owned by any
third party.
(c) LICENSOR DOES NOT GUARANTEE THE ACCURACY, APPLICATION OR ANY
RESULTS OF THE LICENSED PATENTS AND KNOW-HOW OR THE MACROS STRUCTURE. EXCEPT AS
EXPRESSLY SET FORTH IN THE FOREGOING, LICENSOR DOES NOT MAKE AND HEREBY
EXPRESSLY DISCLAIMS ALL OTHER WARRANTIES, EXPRESS OR IMPLIED, STATUTORY OR
OTHERWISE, REGARDING THE SUBJECT MATTER OF THE LICENSE AGREEMENT INCLUDING, BUT
NOT LIMITED TO, ANY WARRANTIES OF MERCHANTABILITY, NON-INFRINGEMENT, OR FITNESS
FOR A PARTICULAR PURPOSE. IN NO EVENT SHALL THE CUMULATIVE LIABILITY OF
LICENSOR TO LICENSEES AND ITS AFFILIATES AND ASSIGNEES UNDER OR RELATING TO THE
LICENSE AGREEMENT AT ANY TIME EXCEED THE AGGREGATE AMOUNT OF THE FEES RECEIVED
BY LICENSOR PURSUANT TO THE LICENSE AGREEMENT AND THE TRUST AGREEMENTS PRIOR TO
SUCH TIME EXCEPT THAT THIS LIMITATION SHALL NOT BE APPLICABLE TO A CLAIM BY
LICENSEE FOR INDEMNIFICATION PURSUANT TO ARTICLE 8 HERETO.
8. INDEMNIFICATION.
(a) Each Licensee shall defend, indemnify and hold harmless Licensor,
and Licensor shall defend, indemnify and hold harmless Licensees, and such
indemnified Party's Affiliates, employees, officers, directors and agents or
assignees from and against any liabilities, losses, damages, costs or expenses
(including, without limitation, reasonable attorneys' fees) (collectively,
"Losses") arising from any third-party claim or action resulting from or
arising in connection with the breach by the
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Indemnifying Party of any of the representations, warranties, or covenants of
such indemnifying Party contained in the License Agreement.
(b) Without limitation to the foregoing Section 8(a), each Licensee
shall indemnify, defend and hold harmless Licensor and its Affiliates,
employees, officers, directors, and agents or assignees from and against any
Losses resulting or arising from any claim (whether such claim arises under
tort, breach of express or implied contract, or otherwise) by any person
arising from the offering of the MACRO Holding Shares or MACRO Tradeable
Shares.
(c) If any action, suit, proceeding (including any governmental
investigation), claim or dispute (collectively, a "Proceeding") is brought or
asserted against a Party for which indemnification is sought under the License
Agreement, the Party seeking indemnification (the "Indemnified Party") shall
promptly (and in no event more than seven (7) days after receipt of notice of
such Proceeding) notify the Party obligated to provide such indemnification
(the "Indemnifying Party") of such Proceeding. The failure of the Indemnified
Party to so notify the Indemnifying Party shall not impair the Indemnified
Party's ability to obtain indemnification from the Indemnifying Party except to
the extent such failure adversely affects the Indemnifying Party's ability to
adequately oppose or defend such Proceeding. Upon receipt of such notice from
the Indemnified Party, the Indemnifying Party shall be entitled to participate
in such Proceeding at its own expense. Provided no conflict of interest exists
as specified in clause (ii) below and there are no other defenses available to
the Indemnified Party as specified in clause (iv) below, the Indemnifying
Party, to the extent that it shall so desire, shall be entitled to assume the
defense of the Proceeding with counsel reasonably satisfactory to the
Indemnified Party, in which case all reasonable attorney's fees and expenses
shall be borne by the Indemnifying Party (except as specified below) and the
Indemnifying Party shall in good faith defend the Indemnified Party. After
receiving written notice from the Indemnifying Party of its election to assume
the defense of the Proceeding, the Indemnified Party shall have the right to
employ separate counsel in any such Proceeding and to participate in the
defense thereof, provided that the fees and expenses of such counsel shall be
borne entirely by the Indemnified Party unless (i) the Indemnifying Party
expressly agrees in writing to pay such fees and expenses, (ii) there is such a
conflict of interest between the Indemnifying Party and the Indemnified Party
as would preclude, in compliance with the ethical rules in effect in the
jurisdiction in which the Proceeding was brought, one lawyer from representing
both Parties simultaneously, (iii) the Indemnifying Party fails, within the
earlier of (x) twenty (20) days following receipt of notice of the Proceeding
from the Indemnified Party or (y) seven (7) days prior to the date the first
response or appearance is required to be made in such Proceeding, to assume the
defense of such Proceeding with counsel reasonably satisfactory to the
Indemnified Party or (iv) there are legal defenses available to the Indemnified
Party that are different from or are in addition to those available to the
Indemnifying Party. In each of cases (i) through (iv), the fees and expenses of
counsel shall be borne by the Indemnifying Party. No compromise or settlement
of such Proceeding may be effected by either Party without the other Party's
written consent unless (m) there is no finding or admission of any violation of
law and no effect on any other claims that may be made against such other Party
and (n) the sole relief provided is monetary damages that are paid in full by
the Indemnifying Party. Neither Party shall have any liability with respect to
any compromise or settlement effected without its written consent, which shall
not be unreasonably withheld. The Indemnifying Party shall have no obligation
to indemnify and hold harmless the Indemnified Party from any loss, expense or
liability incurred by the Indemnified Party as a result of a default judgment
entered against the Indemnified Party unless such judgment was entered after
the Indemnifying Party agreed, in writing, to assume the defense of such
Proceeding.
(d) Joint and Several Liability. Licensees shall be jointly and
severally liable for their indemnification obligations hereunder.
9. LIMITATION OF LIABILITY.
T-8
EXCEPT FOR EACH PARTY'S OBLIGATION TO INDEMNIFY THE OTHER PARTY FOR
THIRD PARTY LOSSES PURSUANT TO ARTICLE 8 HERETO, NEITHER PARTY SHALL BE LIABLE
TO THE OTHER FOR ANY SPECIAL, INCIDENTAL, CONSEQUENTIAL, PUNITIVE, EXEMPLARY OR
OTHER INDIRECT DAMAGES, HOWSOEVER CAUSED, WHETHER ARISING IN CONTRACT, TORT OR
OTHERWISE, EVEN IF IT HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
10. CONFIDENTIALITY.
Except as provided below, all information concerning the Licenses, and
all other business, financial, marketing and product information disclosed to
the other Party orally or in writing is deemed confidential, restricted and
proprietary to the disclosing Party (the "Confidential Information"). Each
Party agrees to use the Confidential Information received from the other Party
only for the purpose of the License Agreement. The Confidential Information
disclosed or supplied is not to be reproduced in any form except as required to
accomplish the intent of, and in accordance with the terms of, the License
Agreement. The receiving Party must provide the same degree of care to avoid
disclosure or unauthorized use of the Confidential Information as it accords to
protect its own similar proprietary information, but in no event less than
reasonable care under the circumstances. All Confidential Information must be
retained by the receiving Party in a secure place with access limited to only
such of its employees, consultants, subcontractors, suppliers or agents who
need to know such information for purposes of the License Agreement and to such
third parties as the disclosing Party has consented to by prior written
approval and only when such persons have agreed in writing to be bound by the
terms of the License Agreement or who have entered into a non-disclosure
agreement with Licensee at least as restrictive as those contained in the
License Agreement. All Confidential Information, unless otherwise specified in
writing (x) remains the property of the disclosing Party, (y) must be used by
the receiving Party only for the purpose for which it was intended, and (z)
including all copies thereof, must be returned to the disclosing Party or
destroyed after the receiving Party's need for it has expired or upon request
of the disclosing Party, and, in any event, upon expiration or termination of
the License Agreement. At the request of the disclosing Party, the receiving
Party will furnish a certificate of an officer of the receiving Party
certifying that the Confidential Information not returned to the disclosing
Party has been destroyed. The obligation of confidentiality set forth in this
Section 10 shall survive expiration of the License Agreement for a period of
three (3) years. Licensee shall vigorously enforce its rights as against any
employee, consultant, subcontractor, supplier or agent or other third parties
to whom Confidential Information has been provided and who breaches, or
threatens or attempts to breach, its obligations of confidentiality and non-use
as set forth in this Article 10. For the purpose hereof, the Confidential
Information shall not include information, to the extent evidenced by
reasonable documentation, that:
(i) is published or is otherwise in the public domain
through no fault of the receiving Party at the time
of any claimed unauthorized disclosure or use by the
receiving Party;
(ii) prior to disclosure pursuant to the License
Agreement, is properly within the legitimate
possession of the receiving Party;
(iii) subsequent to disclosure pursuant to the License
Agreement, is lawfully received from a third party
having rights in the information without restriction
of the third party's right to disseminate the
information and without notice of any restriction
against its further disclosure; or
(iv) the disclosing Party agrees in writing that the
information disclosed is free of such restrictions.
T-9
Notwithstanding the above, a Party may produce information pursuant to
an order of a court or other similar requirement, rule or regulation of any
governmental authority, so long as the Party required to disclose the
information provides the disclosing Party with prior written notice of such
order or requirement and its cooperation to the extent reasonable in preserving
its confidentiality and limiting the scope of disclosure.
The Parties agree that, without limiting any other rights and remedies
specified herein, an injunction may be sought against the Party who has
breached or threatened to breach this Article 10.
11. ASSIGNMENT.
(a) Licensor may assign or otherwise transfer (whether by operation of
law or otherwise) any right or obligation hereunder without the prior written
consent of Licensees, provided, a due notice is given to each Licensees.
(b) Each Licensee may not assign or otherwise transfer (whether by
operation of law, change of control or otherwise) any right or obligation under
the License Agreement without the prior written consent of Licensor.
(c) The License Agreement is binding on and inures to the benefit of
the Parties and their permitted successors and assigns.
(d) Any attempted assignment or other transfer of rights under the
License Agreement in violation of Section 11(b) hereof will be void.
12. MISCELLANEOUS PROVISIONS.
(a) GOVERNING LAW. The License Agreement shall be interpreted,
construed and enforced in accordance with the laws of the State of New York
without reference to or inclusion of the principles of choice of law or
conflicts of law of that jurisdiction (except that questions affecting the
construction and effect of any patent or trademark will be determined by the
law of the country in which the patent was granted). Each Party agrees that any
legal action, proceeding, controversy or claim between the Parties arising out
of or relating to the License Agreement may be brought and prosecuted only in
the United States District Court for the Southern District of New York or, if
that Court lacks or declines to exercise subject matter jurisdiction, in the
Supreme Court of the State of New York in and for New York County, and by
execution of the License Agreement each Party hereto submits to the exclusive
jurisdiction of such court and waives any objection it might have based upon
improper venue or inconvenient forum. Each Party hereto waives any right it may
have to a jury trial in connection with any legal action, proceeding,
controversy or claim between the Parties arising out of or relating to the
License Agreement.
(b) EXCLUSIVE JURISDICTION AND VENUE. Any action brought by any Party
that arises out of or relates to the License Agreement will be filed only in
the state or federal courts located in New York County, New York. Each Party
irrevocably submits to the jurisdiction of those courts. Each Party waives any
objections that it may have now or in the future to the jurisdiction of those
courts, and also waives any claim that it may have now or in the future that
litigation brought in those courts has been brought in an inconvenient forum.
(c) ENTIRE AGREEMENT. The License Agreement (including the Cover
Sheet, these License Terms and the attached Schedule I) sets forth the entire
agreement of the Parties as to its subject
T-10
matter and supersedes all prior agreements, negotiations, representations, and
promises between them with respect to its subject matter.
(d) SEVERABILITY. If any provision of the License Agreement is held
unenforceable by a court of competent jurisdiction, the other provisions will
remain in full force and effect. If legally permitted, the unenforceable
provision will be replaced with an enforceable provision that as nearly as
possible gives effect to the Parties' intent.
(e) SURVIVAL. Notwithstanding anything to the contrary in the License
Agreement, Sections 3, 5, 6, 7(c), 8, 9, 10, 11 and 12 of these License Terms
shall survive termination of the License Agreement.
(f) RELATIONSHIP OF THE PARTIES. Nothing in the License Agreement
creates a partnership, joint venture or agency relationship between any of the
Parties.
(g) NOTICES. A notice under the License Agreement is not sufficient
unless it is: (i) in writing; (ii) addressed using the contact information
listed under the "Contact Information" section of the Cover Sheet for the Party
to which the notice is being given (or using updated contact information which
that Party has specified by written notice in accordance with this Section
12(g)); and (iii) sent by hand delivery, facsimile transmission, registered or
certified mail (return receipt requested), or reputable express delivery
service with tracking capabilities (such as Federal Express).
(h) FORCE MAJEURE. No Party shall be deemed in default of the License
Agreement to the extent that performance of its obligations or attempts to cure
any breach are delayed, restricted, or prevented by reason of any act of God,
fire, natural disaster, governmental regulations, terrorism, a state of
national emergency, war or other similar events that are not within the
reasonable control of the Parties ("Force Majeure Event"); provided that such
Party gives the other Parties written notice thereof promptly and, in any
event, within ten (10) days of discovery thereof and uses all commercially
reasonable efforts to cure the delay. In the event that any Force Majeure Event
prevents any Licensee from carrying out its obligations under the License
Agreement for a period of more than ninety (90) days, Licensor may terminate
the License Agreement upon an additional ten (10) days' written notice. In the
event that any Force Majeure Event prevents Licensor from carrying out its
obligations under the License Agreement for a period of more than ninety (90)
days, each Licensee may terminate the License Agreement only with the written
consent of all other Licensees hereunder upon an additional ten (10) days'
written notice.
(i) AMENDMENTS. The License Agreement may not be amended unless the
amendment is in writing and signed by authorized representatives of all
Parties.
(j) WAIVERS. A waiver of rights under the License Agreement will not
be effective unless it is in writing and signed by an authorized representative
of the Party that is waiving the rights.
(k) COUNTERPARTS. The Parties may execute the License Agreement by
signing separate copies of the signature line of the Cover Page. A facsimile
copy of the signature line of the Cover Page shall have the same effect as the
original.
T-11
SCHEDULE I
Patented Products
Granted Patents
---------------
--------------------------------------------- ------------------------------------ ---------------------------
Title Country Patent Number
Issue Date
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET DATA PROCESSOR United States of America 5987435
16-Nov-1999
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET DATA PROCESSOR Xxxxxxxxx 00000
30-Apr-2002
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET DATA PROCESSOR United States of America 6513020B1
28-Jan-2003
--------------------------------------------- ------------------------------------ ---------------------------
Pending Patents
---------------
--------------------------------------------- ------------------------------------ ---------------------------
Title Country Patent Number
Issue Date
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET DATA PROCESSOR Patent Cooperation Treaty PC/US98/22224
20-Oct-1998
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET DATA PROCESSOR European Patent Convention 98952389.9
20-Oct-1998
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET DATA PROCESSOR Brazil P198131702
20-Oct-1998
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET DATA PROCESSOR Canada 2308279
20-Oct-1998
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET DATA PROCESSOR Hong Kong 01104416.7
26-Jun-2001
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET DATA PROCESSOR Israel 135829
20-Oct-1998
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET SYSTEM AND METHOD India 1551CHENP2003
01-Mar-2002
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET DATA PROCESSOR Japan JP2000-519380
20-Oct-1998
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS United States of America 09/567,901
10-May-2000
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET SYSTEM AND METHOD United States of America 10/087,339
01-Mar-2002
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET SYSTEM AND METHOD Patent Cooperation Treaty PC/US02/06328
01-Mar-2002
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS United Arab Emirates 340/2002
09-May-2001
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS Australia 2001261834
09-May-2001
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS Brazil PI0110752-6
09-May-2001
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS Canada 2408539
09-May-2001
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS China (People's Republic) 01812637.5
09-May-2001
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS European Patent Convention 01935772.2
09-May-2001
--------------------------------------------- ------------------------------------ ---------------------------
Sch. I-1
--------------------------------------------- ------------------------------------ ---------------------------
Title Country Patent Number
Issue Date
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS Israel 152729
09-May-2001
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS India INPC200201871
09-May-2001
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS Japan 2001-583442
09-May-2001
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS Mexico Paa0000000000
09-May-2001
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS Norway 20025364
09-May-2001
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS New Zealand 522575
09-May-2001
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS Russian Federation 2002133433
09-May-2001
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS Singapore 200206835-1
09-May-2001
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET SYSTEM AND METHOD Russian Federation 2003129533
01-Mar-2002
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET SYSTEM AND METHOD European Patent Convention 02709752.6
01-Mar-2002
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET SYSTEM AND METHOD Australia 2002244221
01-Mar-2002
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET SYSTEM AND METHOD Canada 2443278
01-Mar-2002
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET SYSTEM AND METHOD New Zealand 528555
01-Mar-2002
--------------------------------------------- ------------------------------------ ---------------------------
TECHNIQUES FOR INVESTING IN PROXY ASSETS Hong Kong 04101764.8
09-May-2001
--------------------------------------------- ------------------------------------ ---------------------------
PROXY ASSET DATA PROCESSOR Israel 162738
20-Oct-1998
--------------------------------------------- ------------------------------------ ---------------------------
SELF HEDGING MULTI-LAYERED INVESTMENT United States of America 60/691,397
SYSTEM AND METHOD USING INTERNAL 17-Jun-2005
CONTRACTUAL RELATIONSHIPS
--------------------------------------------- ------------------------------------ ---------------------------
Sch. I-2
