Exhibit 10.7
AGREEMENT
THIS AGREEMENT (hereinafter, the "Agreement") is effective as of October
1, 2002 by and between President and Fellows of Harvard College, a Massachusetts
Charitable Corporation, with a principal place of business at Xxxxxxxxxxxxx
Xxxx, Xxxxxxxxx, Xxxxxxxxxxxxx, 00000 (hereinafter "Harvard"), Vizacom Inc., a
Delaware corporation having its principal place of business at 0000 Xxxxxxxx
Xxxxxxxx Xxxxxxx, Xxxxxxx, Xxx Xxxx 00000 (hereinafter "Vizacom") and Software
Publishing Corporation ("SPC"), a Delaware corporation with its principal place
of business at the same aforementioned address as Vizacom;
WHEREAS, SPC is a wholly-owned subsidiary of Vizacom;
WHEREAS, SPC has adopted, owns and is using certain HARVARD-formative
trademarks on or in connection with certain computer software programs
(hereinafter, the "Marks"), including, but not limited to, those marks
identified in Schedule A annexed hereto as Exhibit A;
WHEREAS, SPC is the owner of trademark registrations for some of the
Marks, all of which are identified in Schedule B annexed hereto as Exhibit B
(hereinafter, the "Registrations");
WHEREAS, Harvard and SPC are parties to a Consent Agreement effective June
29, 1989, a true and correct copy of which is annexed hereto as Exhibit C
(hereinafter, the "1989 Consent Agreement");
WHEREAS, Harvard and SPC are desirous of terminating the 1989 Consent
Agreement in its entirety and the parties' rights and liabilities thereunder;
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WHEREAS, SPC and Serif (Europe) Limited, an English company, are parties
to a Software License Agreement, a true and correct copy of which is annexed
hereto as Exhibit D (hereinafter, the "2001 Software License Agreement");
WHEREAS, in an Agreement effective October 1, 2002, a true and correct
copy of which is annexed hereto as Exhibit E, Serif Holdings Limited, Serif
(Europe) Limited and Serif Inc. (hereinafter referred to collectively as
"Serif") assigned all of their right, title and interest in and to any and all
HARVARD-formative marks to SPC (hereinafter, the "Serif-SPC Assignment");
WHEREAS, Harvard is desirous of acquiring all of the right, title and
interest in and to the Marks and Registrations from SPC and Vizacom;
WHEREAS, SPC and Vizacom are desirous of assigning all of their right,
title and interest in and to the Marks and Registrations to Harvard;
NOW THEREFORE, in consideration of the promises and covenants contained
herein and for other good and valuable consideration, the sufficiency of which
is hereby acknowledged, Harvard, SPC and Vizacom agree as follows:
A. TERMINATION OF 1989 CONSENT AGREEMENT
1. Harvard and SPC hereby agree that the 1989 Consent Agreement, and the
parties' rights and obligations thereunder, are terminated.
B. ASSIGNMENT
2.
a. ASSIGNMENT OF RIGHTS: SPC and Vizacom hereby irrevocably sell, grant,
convey, assign, transfer and set over to Harvard all of their worldwide right,
title, and interest in and to the Marks and the Registrations, including, but
not limited to, the
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HARVARD-formative marks assigned to SPC in the Serif-SPC Assignment, and any
other marks, applications for trademark or service xxxx registration or
trademark or service xxxx registrations, or domain name registrations,
comprising, in whole or in part, the HARVARD xxxx, or any confusingly similar
xxxx, together with any and all goodwill of the business symbolized by the Marks
and Registrations, and the right to xxx and recover for past and future
infringement of the Marks (hereinafter, the "Assignment");
b. Except as provided in paragraph 9 herein, Vizacom and SPC agree never
to use, apply to register or register any xxxx comprising, in whole or in part,
the HARVARD xxxx or any confusingly similar xxxx.
3. RECORDAL OF ASSIGNMENT: Vizacom and SPC agree that they will undertake
to record this Assignment as to all Registrations and to take any other steps
reasonably necessary to transfer ownership of the Registrations to Harvard.
Vizacom and SPC agree that they shall bear all expenses in connection with the
assignment of the Registrations to Harvard.
4. COOPERATION: Vizacom and SPC agree to forward file-stamped copies of
documents submitted by SPC in the various Trademark Offices throughout the world
or other reasonable proof of filing to effectuate assignment of the
Registrations to Harvard within thirty (30) days of the effective date of this
Agreement. SPC and Vizacom agree to execute such additional documents as Harvard
reasonably deems necessary to enable Harvard to transfer ownership of the
Registrations to Harvard. SPC and Vizacom also agree to execute and/or provide
such additional documents as Harvard deems reasonably necessary to establish
Harvard's rights in the Marks and Registrations, including, but not limited to,
such documents to establish the dates of first use for the Marks by Harvard
through SPC and/or
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Vizacom. Harvard agrees to execute such additional documents as SPC and Vizacom
reasonably deem necessary to enable SPC to transfer ownership of the
Registrations in any country throughout the world to Harvard.
5. COMPENSATION: In full consideration of the transfer of rights to
Harvard herein, Harvard agrees to pay four hundred and twenty thousand United
States dollars (US $420,000.00) as follows:
a. Harvard agrees to pay one hundred and seventy thousand United
States dollars (US $170,000.00) to Vizacom within fourteen (14) days of the
effective date of this Agreement. Such payment shall be in the form of a
certified check and shall be delivered to Vizacom via Federal Express overnight
delivery.
b. Harvard agrees to pay two hundred and fifty thousand United
States dollars (US $250,000.00) to Vizacom within fourteen (14) days of
receiving file-stamped copies of documents submitted by SPC in the various
Trademark Offices throughout the world (or other reasonable proof of filing) to
effectuate assignment of the Registrations to Harvard. Such payment shall be in
the form of a certified check and shall be delivered to Vizacom via Federal
Express overnight delivery.
C. TERMINATION OF 2001 SOFTWARE LICENSE AGREEMENT
6. Contemporaneous with the execution of this Agreement, SPC shall
exercise its right to terminate the 2001 Software License Agreement in its
entirety.
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D. AUTHORIZATION TO USE
7. In a separate document to be executed concurrently herewith, Harvard is
licensing to Serif the right to use certain HARVARD-formative marks in
connection with certain presentation, charting and clipart collection software
(the "Harvard-Serif License," an executed copy of which is annexed hereto as
Exhibit F).
8. In a separate document to be executed concurrently herewith, Serif is
contracting with SPC, whereby SPC is granting Serif the right to manufacture the
software products referenced in paragraph 6 above (the "SPC-Serif Software
License Agreement," an executed copy of which is annexed hereto as Exhibit G).
9. Harvard hereby expressly authorizes SPC to use the following
HARVARD-formative marks only within the software products (i.e., embedded in
code which causes the xxxx(s) to appear on the user's computer screen)
identified in, and solely for the purpose of fulfilling its obligations under,
the SPC-Serif Software License Agreement:
HARVARD GRAPHICS
HARVARD CHARTXL
HARVARD F/X
HARVARD SPOTLIGHT
HARVARD MONTAGE
HARVARD MONTAGE LIGHT
HARVARD GRAPHICS ADVISOR
HARVARD WEBSHOW
HARVARD CLIPART BROWSER
10. The authorization expressly granted by Harvard to SPC in paragraph 9
above shall terminate upon the effective date of termination of the
Harvard-Serif License. Thereafter, SPC shall have no right to use any xxxx
comprising, in whole or in part, the HARVARD xxxx, or any confusingly similar
xxxx.
D. MISCELLANEOUS PROVISIONS
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11. CHOICE OF LAW: The Agreement shall be interpreted under the laws of
the Commonwealth of Massachusetts.
12. WAIVER: No provision of this Agreement may be waived unless in writing
and signed by the party benefited by the provision waived. The waiver by either
party of a provision of the Agreement shall not operate or be construed to
invalidate the balance of the provisions contained in the Agreement, which shall
continue to remain in full force and effect.
13. SEVERABILITY: The finding by a court that a provision of the Agreement
is invalid shall not operate or be construed to invalidate the balance of the
provisions contained in the Agreement, which provisions shall continue to remain
in full force and effect.
14. ENTIRE AGREEMENT: This Agreement contains the entire agreement between
the parties relating to the subject matter hereof, and no party has entered into
this Agreement based upon any promise, representation, warranty or covenant not
included herein. All prior proposals, discussions or writings are superseded
hereby. The terms of the Agreement shall be binding upon and shall insure to the
benefit of the parties and their successors, heirs and assigns.
15. CONSULTATION WITH COUNSEL: The parties hereto acknowledge that each
has read this Agreement; that each fully understands its rights, privileges and
duties hereunder; that each is relying solely on its own judgment and belief as
to the adequacy of the consideration provided to the other; and that each enters
into this Agreement freely and voluntarily. Each party further acknowledges that
each has had the opportunity to consult with an attorney of its choice to
explain the terms of this Agreement and the consequences of signing it.
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16. COUNTERPARTS: This Agreement may be executed in counterparts, each of
which when executed shall be an original and a facsimile copy of this Agreement
signed by one party, transmitted to each party, and countersigned by each party
shall constitute a binding Agreement. All counterparts therefore shall
constitute one and the same document.
17. AUTHORIZATION TO SIGN: Each person executing this Agreement warrants
that he or she is the duly authorized representative of the respective entity
designated below, and is fully empowered to execute this Agreement on its
behalf.
18. UNCONDITIONAL GUARANTEE: Vizacom hereby agrees to be bound to the
terms of this Agreement and unconditionally guarantees all of SPC's obligations
hereunder. Specifically, Vizacom expressly agrees to assume any and/or all of
SPC's obligations under this Agreement in the event SPC cannot or does not
perform its obligation(s).
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IN WITNESS WHEREOF, the parties have caused this instrument to be duly
executed as of the dates indicated below:
President and Fellows of Harvard College Vizacom, Inc.
By: /s/ Xxxxx Xxxxxxx By: /s/ Xxxx Xxxxxxxxxx
------------------------------------------ --------------------------
Name: Xxxxx Xxxxxxx Name: Xxxx Xxxxxxxxxx
---------------------------------------- ------------------------
Title: Director, Office for Technology and Title: CFO
Trademark Licensing Harvard University -----------------------
---------------------------------------
Dated: October 2, 2002 Dated: October 2, 2002
--------------------------------------- ----------------------
Software Publishing Corporation
By: /s/ Xxxx Xxxxxxxxxx
--------------------------------------
Name: Xxxx Xxxxxxxxxx
--------------------------------------
Title: CFO
--------------------------------------
Dated: October 2, 2002
--------------------------------------
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EXHIBIT A - Marks
HARVARD
HARVARD GRAPHICS
HARVARD GRAPHICS ADVANCED PRESENTATIONS
HARVARD GRAPHICS ADVANCED PRESENTATIONS 2
HARVARD GRAPHICS 2
HARVARD GRAPHICS 3
HARVARD GRAPHICS 98
HARVARD GRAPHICS PRO PRESENTATIONS
HARVARD GRAPHICS PRO PRESENTATIONS 1
HARVARD GRAPHICS PRO PRESENTATIONS 2
HARVARD GRAPHICS EASY PRESENTATIONS
HARVARD GRAPHICS EASY PRESENTATIONS 1
HARVARD GRAPHICS ADVISOR
HARVARD GRAPHICS PUBLISHER
HARVARD GRAPHICS PRINT & PUBLISH
HARVARD GRAPHICS DRAW
HARVARD GRAPHICS 3D MAGIC
HARVARD GRAPHICS PHOTO PLUS
HARVARD GRAPHICS HOME PAGE CREATOR
HARVARD INSTANT CHARTS
HARVARD INSTANT CHARTS 1
HARVARD CHARTXL
HARVARD CHARTXL 2
HARVARD CHARTXL 3
HARVARD CHARTXL 98
HARVARD GALLERY
HARVARD GALLERY 1
HARVARD PUBLISHER
HARVARD DRAW
HARVARD DESIGNER
HARVARD 3D
HARVARD PHOTO PLUS
HARVARD HOME PAGE
HARVARD F/X
HARVARD SPOTLIGHT
HARVARD MONTAGE
HARVARD MONTAGE LITE
HARVARD WEBSHOW
HARVARD CLIPART BROWSER
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EXHIBIT B - Registrations
--------------------------------------------------------------------------------
Country Xxxx Reg. No. Class(es)
------- ---- -------- ---------
--------------------------------------------------------------------------------
Argentina HARVARD GRAPHICS 1.476.138 9
--------------------------------------------------------------------------------
Argentina HARVARD GRAPHICS 1.467.418 16
--------------------------------------------------------------------------------
Australia HARVARD B457985 9
--------------------------------------------------------------------------------
Xxxxxxx XXXXXXX 000000 9, 16
--------------------------------------------------------------------------------
Brazil HARVARD 811811930 9
--------------------------------------------------------------------------------
Brazil HARVARD GRAPHICS 816013667 9
--------------------------------------------------------------------------------
Brazil HARVARD GRAPHICS 816013659 16
--------------------------------------------------------------------------------
Canada HARVARD 333618
--------------------------------------------------------------------------------
Canada HARVARD DRAW 419742
--------------------------------------------------------------------------------
Canada HARVARD GRAPHICS 403085
--------------------------------------------------------------------------------
Chile HARVARD GRAPHICS 366366 9, 16
--------------------------------------------------------------------------------
Finland HARVARD GRAPHICS 141531 9, 16
--------------------------------------------------------------------------------
France HARVARD 1.374.793 9, 16
--------------------------------------------------------------------------------
France HARVARD GRAPHICS 1.486.363 9, 16
--------------------------------------------------------------------------------
Germany HARVARD GRAPHICS DD653752 9, 16
--------------------------------------------------------------------------------
Xxxxx XXXXXXX 000000 B 9
--------------------------------------------------------------------------------
Ireland HARVARD GRAPHICS 152,922 9
--------------------------------------------------------------------------------
Ireland HARVARD GRAPHICS 152,921 16
--------------------------------------------------------------------------------
Xxxxx XXXXXXX 000000 9, 16
--------------------------------------------------------------------------------
Japan HARVARD GRAPHICS 2,688,917 9
--------------------------------------------------------------------------------
Japan HARVARD GRAPHICS 2,597,622 16
--------------------------------------------------------------------------------
Xxxxxx XXXXXXX 000000 9 (MX 26)
--------------------------------------------------------------------------------
New Zealand HARVARD GRAPHICS 210818 9
--------------------------------------------------------------------------------
New Zealand HARVARD GRAPHICS 210819 16
--------------------------------------------------------------------------------
Philippines HARVARD GRAPHICS 66677 9,16
--------------------------------------------------------------------------------
Philippines HARVARD GRAPHICS 9002 16
--------------------------------------------------------------------------------
Portugal HARVARD GRAPHICS 275,524 9
--------------------------------------------------------------------------------
Portugal HARVARD GRAPHICS 275,525 16
--------------------------------------------------------------------------------
Singapore HARVARD GRAPHICS 9, 16
--------------------------------------------------------------------------------
South Africa HARVARD GRAPHICS 914407 9, 16
--------------------------------------------------------------------------------
Xxxxx Xxxxx XXXXXXX 000000 9 (39)
--------------------------------------------------------------------------------
Spain HARVARD 1163488 9
--------------------------------------------------------------------------------
Sweden HARVARD GRAPHICS 310.983 9, 16
--------------------------------------------------------------------------------
Switzerland HARVARD GRAPHICS 410802 9, 16
--------------------------------------------------------------------------------
United Kingdom HARVARD 1455706 16
--------------------------------------------------------------------------------
Xxxxxx Xxxxxxx XXXXXXX 0000000 0
--------------------------------------------------------------------------------
Xxxxxx Xxxxxxx HARVARD GRAPHICS 1455858 9
--------------------------------------------------------------------------------
United Kingdom HARVARD GRAPHICS 1455859 16
--------------------------------------------------------------------------------
United States HARVARD and Design 1,581,122 9
--------------------------------------------------------------------------------
United States HARVARD GRAPHICS (stylized) 1,576,068 9
--------------------------------------------------------------------------------
Venezuela HARVARD GRAPHICS 90015180 9, 16
--------------------------------------------------------------------------------
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Exhibit C: CONSENT AGREEMENT
This Agreement is made as of this 29th day of June, 1989 by and between
President and Fellows of Harvard College, more commonly known as Harvard
University, of Cambridge, Massachusetts (the "University") and Software
Publishing Corporation, .a California Corporation having its principal place of
business at 0000. Xxxxxxxx Xxxxx, Xxxxxxxx Xxxx, Xxxxxxxxxx 00000-0000 ("SPC").
Recitals
A. The University is an established educational institution of worldwide
repute engaged in, inter alia, extensive computer related research, the
development and use of computer software and the provision of related
educational goods and services. Since its first involvement in such activities,
the University has used the name "HARVARD" in connection with the products and
services resulting from its, research and development. For example, the
University has distributed software under, the name "Harvard Business school
Case Software."
B. On March 3, 7.989, the University submitted an application to the
United States Patent and Trademark office ("PTO") for registration of the name
"Harvard University" as a service xxxx for "educational services, namely
providing instruction and training at the undergraduate, graduate, postgraduate
and professional levels" in international class 41, claiming the date o(pound)
first use of the xxxx in commerce at least as early as 1827.
C. SPC is an established corporation of worldwide repute engaged in the
development, manufacture, marketing and distribution of certain application
software for use on personal. Computers including certain project management
software known as "Harvard Project Manager" and graphics software known as
"Harvard Graphics" and various related products.
D. On February 24, 1987, SPC filed with the PTO an application for
registration in the United states of America of "HARVARD" and Design, as set
forth in Exhibit A hereto, as a trademark for "computer programs prerecorded on
magnetic disks and instruction manuals therefore sold together" in international
class 9, claiming the date of first use of the xxxx in commerce as September 19,
1983. The application, identified by Serial No. 646041, was published by the PTO
on October 4, 1988. On August 25, 1988, SPC filed with the PTO an application
for registration in the United States of America of "HARVARD GRAPHICS"
(Stylized), as set forth in Exhibit B hereto, as a trademark for "computer
programs prerecorded on magnetic disks and instruction manuals sold as a unit"
in international class 9, claiming the date of first use of the xxxx in commerce
as at least by July 1987. The application is identified, by Serial No. 749563.
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X. Xx November 1,1988, the University filed with the PTO a request for
automatic extension of time to file an opposition to SPC's application
identified as Serial No. 646041.
F. Since November 1988, the parties have been engaged: in discussions to
determine whether both parties may continue to use the "HARVARD" name without
such use resulting in confusion, deception or mistake in the marketplace with
respect to proprietorship in said name or with respect to the source of the
goods and services in relation to which such name is used.
G. The parties have agreed that such confusion, deception and mistake will
not result as long as the "HARVARD" name, when used in relation to software and
related goods and services, is used by the parties solely in the manner set
forth in this Agreement.
NOW THEREFORE, in consideration of the mutual premises and covenants
contained herein, the parties hereto agree as follows:
1. Definitions. As used in this Agreement, the following terms will have the
following meanings:
1.1. The term "Name" shall mean the word "HARVARD".
1.2. The term "SPC's Goods" shall mean the following application software
prerecorded on magnetic disks for use personal computers offered for sale by SPC
and instruction manuals therefore sold together as a unit:
(a) Harvard Project Manager 3.0, also known by other titles in the
marketplace such as Harvard Total Project Manager (the "Project Manager
Program");
(b) Harvard Graphics Version 2.1, also known by other titles in the
marketplace such as Harvard Presentation Graphics (the "Harvard Graphics
Program"), including
(i) Accessory Products fox the Harvard Graphics Program
including, without limitation, Harvard Graphics Business Symbols, Harvard
Graphics ScreenShow Utilities, Harvard Graphics U.S. MapMaker, Harvard Graphics
Designer Galleries and Harvard Graphics Quick Charts and
(ii) Harvard Graphics LAN Pack network of the Harvard Graphics
program (Harvard Graphics Version 2.1. Accessory Products and LAN
Pack.) (collectively, the "Graphics Programs"): and,
(c) (i) Upgrades or enhancements to and derivative versions of the
Project Manager or Graphics Programs, respectively,
(ii) Versions of the Project Manager or Graphics programs,
respectively, for computers utilizing operating systems other than
MS - DOS; and
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(d) Other application software for use on personal computers
designed for business or commercial applications offered for sale by SPC
using the Name; provided, however, that for purposes of this subparagraph
1.2(d) the term "business or commercial applications:" shall exclude,
without limitation, any such software which is designed or marketed for
applications in the following areas:
(i) Educational instruction or training at the undergraduate,
graduate, post-graduate or professional levels (other than training
materials on how to use SPC's Goods);
(ii) Publishing (except to the extent permitted under Section
2.2(f);
(iii) Scientific or academic research; or
(iv) Medical research or treatment.
The University agrees that accessory products for the Harvard
Graphics Program for the creation of type fonts, shall not constitute
publishing software within the meaning of Section 1.2 (d) (ii).
1.3. The term "Harvard school" shall mean either Harvard University or a
school, department, institution ox other organizational unit controlled by the
University.
1.4. The term "Conditions" shall mean the conditions to each party's
consent to the other's use of the Name set forth in Sections 2.1 and 2.2 hereof.
1.5 The term "Applications" shall mean the trademark applications referred
to in Recital D.
1.6. The term "Trademarks" shall mean the marks which are the subjects of
the Applications.
2. Consent to Use.
2.1. Consent By SPC. SPC hereby consents to the University's use of the
Name throughout the world in the manufacture, licensing, distribution and
marketing of software and related goods and services on the condition that the
Name; when used in connection with such activities, is used only in conjunction
with the name of a Harvard School.
2.2. Consent By The University. The University hereby consents to SPC's
use of the Name throughout the world in relation to SPC's Goods on the following
conditions:
(a) SPC agrees not to use the Name in a manner, or otherwise engage
in conduct, which holds itself out as associated or affiliated with the
University or any Harvard School and, in particular, agrees not to:
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(i) Use any theme evoking education or academia in its
advertising; and
(ii) Represent the Name in a color or typeface deceptively or
confusingly similar with that used for the Name by the University;
and
(b) Beginning at the time of its next printing of any manuals which
are part of SPC's Goods SPC agrees to include the following statement in
print no smaller than 6 point type on the outside back panel of the
package and on the page containing the copyright notice of each of its
manuals upon which the Name appears or, if the manual does not contain a
copyright notice, within one of the first three pages of such manual:
"The Harvard ______________________program is a product of software
Publishing Corporation and has no connection with Harvard
University".
(c) SPC acknowledges that the University traditionally has used the
Name in serif typefaces, such as Baskerville, Palatino, Century Old Style
and Xxxxx Medieval as shown for the sake o(pound) example only on Exhibit
C. SPC agrees, therefore, that it will not use any serif typeface for the
Name in connection with SPC's Goods, including, without limitation, the
serif typefaces shown on Exhibits A, B and C, without the express written
consent of the University, except that SPC shall be free to use serif
typefaces if the Name is depicted in all lower case letters.
(d) SPC acknowledges that the University has traditionally
used the color crimson (whether denominated as burgundy, garnet,
maroon or some other name) in association with its Name. SPC,
therefore, agrees as follows:
(i) Prohibited Colors. That it will not use any color listed
on Exhibit p in any packaging, advertising or promotional materials
for SPC's Goods;
(ii) Prohibited Colors Except Fox Incidental Use. That it will
not use any color listed on Exhibit E in any packaging, advertising
or promotional materials fox SPC's Goods except for incidental use
constituting not more than 15% of the surface area of any single
item of packaging, advertising, or promotional materials. For
purposes of the preceding sentence, each side of software packages
shall be considered separate items of packaging. In addition, SPC
agrees not to use any color listed on Exhibit E as a recurring
design element in the packaging; advertising or promotion of a line
or series of products consisting of SPC's Goods (including multiple
accessories for a single product); and
(iii) Prohibited Colors in relationship to the Name. That it
will under no circumstances use any color listed on Exhibits D, E,
or F in or surrounding or as background for the Name.
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The prohibitions of sections (i) and (ii) above shall not apply to the
extent any colors described therein appear in color photographs used by SPC in
any packaging or in any advertising or promotional materials where such colors
are not used as a dominant or recurring theme.
The colors listed in Exhibits D - F are based on the Pantone Color Formula
Guide, third printing (1986-87). SPC acknowledges that new colors are
periodically added to later editions of the Guide, and that colors can be
created which do not precisely match any color on Exhibits D - F. SPC agrees,
therefore, to act in good faith in determining the applicability of the
foregoing guidelines to any such new colors.
The parties acknowledge that this section 2.2 (d) is an attempt to
establish objective guidelines for color usage in order to avoid confusion, but
that the application, of these guidelines may in some cases prohibit uses which
the University would not consider objectionable. SPC is, therefore, encouraged
to provide samples of proposed new packaging, advertising or promotional
materials to the University for its review, and the University may consent in
writing to the use of any such materials which it considers unlikely to cause
confusion notwithstanding these guidelines.
(e) SPC shall not be prohibited froze continuing to use crimson packaging
and promotional materials for the Project Manager Program or the Graphics
Programs for MS-DOS operating systems or a serif typeface for the Name in
connection with the Project Manager Program or the Graphics Programs until
eighteen months from the date of this Agreement.
(f) SPC has advised the University that it sold a product under the xxxx
"Harvard Professional Publisher" beginning in November 1986, that SPC no longer
sells this product, but that this product may still be available from certain
wholesale or retail sources not affiliated with SPC. The University agrees that
the continued availability of existing inventories of this product from such
sources shall not constitute a breach of this Agreement, but SPC agrees that it
will not market or sell under the Name this product, any modifications thereof,
any product for similar applications, or any other product which includes the
word "publish" or "publisher" or "publishing" in the product's name.
3. Restraint Upon Use.
3.1. SPC. SPC hereby agrees and undertakes to comply with the Conditions
set forth in section 2.2 above.
3.2. University. The University hereby agrees and undertakes to comply
with the Conditions set forth in Section 2.1 above.
4. Acknowledgement of Rights.
4.1. Software. Each party acknowledges that the other party's use of the
Name in accordance with the restrictions set forth in the Conditions does not
infringe the rights of the other party in any way. Accordingly, each party
agrees, unless the other party fails to comply
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with any of the conditions, to refrain from initiating any action or
proceedings, legal or otherwise, which may hinder the other in its use of the
Name with respect to the goods and services which are the subject of this
Agreement.
4.2. Other Goods and Services.
(a) Nothing contained in this Agreement shall affect or impair the
University's rights to the Name, including its right to register the name,
in relation to any goods or services other than those expressly dealt with
herein. Furthermore, SPC hereby acknowledges the University's senior
rights in the Name with respect to educational services, namely providing
educational instruction and training at the undergraduate, graduate,
post-graduate and professional levels.
(b) SPC shall not use the Name or the Trademarks, on any goods other
than SPC's Goods, or license the right to use the Name or Trademarks but
SPC shall have the right to assign or license the right to use tie Name ox
Trademarks on SPC's Goods under the provisions of Section 7.5 of this
Agreement.
(c) SPC shall not adopt or register any trade or service xxxx which
incorporates the Name other than in connection with those products
specified in section 7.2 of this Agreement.
5. Disposition of Applications in the PTO.
5.1. Action by SPC. Within five (5) business days from the date off this
Agreement, SPC shall file with the PTO amendments amending the Applications by
delimiting the identification of the goods in Application Serial No. 646041 to:
"Computer programs prerecorded on magnetic disks, namely project
management programs, and instruction manuals therefore sold
together."
and in Application Serial No. 748563 to:
"Computer programs prerecorded on magnetic disks, namely graphics
programs, and instruction manuals sold as a unit."
5.2. Action by University. Within five (5) business days of its receipt of
written notice from SPC that the PTO has amended both of the Applications in the
manner set forth in section 5.1, the University shall acknowledge in writing to
SPC that it will not file a Notice of opposition to either Application nor any
requests for further extensions of time in which to file such Notices, nor seek
cancellation of the registrations of the Trademarks.
5.3 Actions by SPC and University. The parties agree to stipulate to
further extensions of time as necessary so as to accomplish the amendments to
the Applications set forth
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in Section 5.1 and to preserve the University's rights to file Notices of
Opposition should the PTO not agree to said amendments.
6. Continuing Obligations.
6.1. Assistance. Each party agrees to execute any documents or perform any
act for the purpose of facilitating the other party's registration of the Name
as a trademark in a manner contemplated by this Agreement. Any expenses incurred
by the party providing such assistance shall be borne and paid by the other
party.
6.2. Public Statement to Avoid Confusion. The parties shall develop a
joint statement to be issued to persons expressing any confusion as to the
source of goods or services of the respective parties in the event that either
party is approached by a person who is mistaken ox confused with respect to
proprietorship in the Name or with respect to the source of the goods or
services in relation to which the Name is used, that party shall promptly issue,
the prepared statement either orally ox in writing, as is appropriate, and
shall, promptly notify the other party of the incident, and both parties shall
cooperate to resolve any confusion.
7. Miscellaneous Provisions.
7.1. Applicable Law. This Agreement shall be interpreted in accordance
with the laws of the Commonwealth of Massachusetts.
7.2. Entire Agreement. This Agreement states the entire understanding of
the parties with respect to its subject matter, and may not be modified or
amended except by a written instrument signed by both parties.
7.3. Relationship of the Parties. Nothing in this Agreement shall
constitute either party as the partner, agent or legal, representative of any
other for any purpose whatsoever. Neither party shall act as, or represent it to
be, an, agent of any other party.
7.4. Notice. Any notice given under this Agreement shall be in writing and
sent by registered or certified mail to the University at:
Harvard University
Massachusetts Hall (First Floor)
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
Attention: Xxxxxx Xxxxxxx, Vice President
With a copy to:
Xxxx Xxxxxx Xxxxxxxx, Esq.
Xxxxxx & Dodge
Xxx Xxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
-17-
and to SPC at:
Software Publishing Corporation
000,0 Xxxxxxxx Xxxxx
Xxxxxxxx Xxxx, Xxxxxxxxxx 00000?0000
Attention: Xxxxx Xxxxxxxxx
Chief Financial Officer
With a copy to:
Xxxxxx X. Xxxxxxx, Esq.
Xxxxxxx, Xxxxxxx & Xxxxxx
0000 Xxxxx Xxxxxxxx
Xxx Xxxxxxxxx, Xxxxxxxxxx 00000
If either party changes its address, it shall send a written notice of
such change to the other party.
7.5. Assignment. This Agreement shall inure to the benefit of and be
binding upon the parties, their legal representatives and successors in
interest. This Agreement may not be assigned by either party without the written
permission of the other party except that SPC may Assign at any time its rights
and obligations under this Agreement to any successor of its entire business or
to any successor of its business in one or more of SPC's Goods to which this
Agreement relates so long as any such assignment requires the delivery to the
University of the assignee's written agreement to accept such assignment and be
bound thereby.
IN WITNESS WHEREOF, the parties have caused this Agreement to be duly executed
by their duly authorized representatives.
PRESIDENT.AND FELLOWS OF HARVARD COLLEGE
By: /s/ Xxxxx Xxxxxxx
--------------------------------
Xxxxx Xxxxxxx
Title: Director
--------------------------------
SOFTWARE PUBLISHING CORPORATION
By: /s/ Xxxx X. Xxxxxxx
--------------------------------
Xxxx X. Xxxxxxx
Title: President/C.E.O.
--------------------------------
-18-
Exhibit A
APPLICANT: Software Publishing Corporation
ADDRESS: 0000 Xxxxxxxx Xxxxx
Xxxxxxxx Xxxx, Xxxxxxxxxx 00000 - 7210
DATE OF FIRST USE: September 19, 1983
FIRST USE IN
INTERSTATE COMMERCE: September 19, 1983
GOODS OR SERVICES: COMPUTER PROGRAMS PRERECORDED ON
MAGNETIC DISKS AND INSTRUCTION
MANUALS THEREFORE SOLD TOGETHER
HARVARD
-19-
Exhibit B
APPLICANT: SOFTWARE PUBLISHING CORPORATION
ADDRESS: 0000 Xxxxxxxx Xxxxx
Xxxxxxxx Xxxx, Xxxxxxxxxx 00000
DATE CF FIRST USE: At least by July 1987
FIRST USE IN
INTERSTATE COMMERCE: At least by July 1987
GOODS: COMPUTER PROGRAMS PRERECORDED ON
MAGNETIC DISKS AND INSTRUCTION
MANUAIS SOLD AS A UNIT
HARVARD
Graphics
-00-
Xxxxxxx X
Xxxxxxx
Xxxxxxx
XXXXXXX
-21-
Exhibit D
Colors Hot to Be Used by SPC for
Packaging, Advertising or Promotional
Materials for SPC'S Goods
Pantone Red 032
Pantone Warm Red
Pantone Rubine Red
173 208
174 209
179 213
180 214
185 215
186 216
187 221
188 222
192 228
193 229
194 235
195 484
199 485
201 492
202 506
206
207
----------
*References are to Pantone Color Formula Guide, Third Edition
-22-
EXHIBIT E*
Colors Prohibited except for Incidental Use
Pantone 807
Pantone Process Magenta
160 483
167 490
181 491
220 499
227 504
234 505
241 512
248 518
255 519
259 520
477 525
478
----------
*References are to Pantone Color Formula Guide, Third Edition
-23-
EXHIBIT F*
Additional Colors Prohibited for the Name
Pantone 805
Pantone 806
Pantone Rhodamine Red
184 233
191 239
198 240
205 242
212 493
219 500
225 507
226 508
----------
*References are to Pantone Color Formula Guide, Third Edition
-24-
EXHIBIT D - 2001 Software License Agreement
SOFTWARE LICENSE AGREEMENT
This agreement ("Agreement") is entered into as of March 31, 2001
("Effective Date"), by and between Software Publishing Corporation, a Delaware
corporation ("Licensor") and Serif (Europe) Limited, an English company
("Licensee").
RECITALS
WHEREAS, Licensor owns, develops and distributes the Software Products (as
defined below) and Licensee owns, develops and distributes the HG Branded
Products (as defined in clause 2.2 below); and
WHEREAS, Licensee desires to acquire a license to use certain of
Licensor's trademarks with respect to certain of the Licensee's software
products and Licensor is willing to grant such rights to Licensee; and
WHEREAS, Licensee desires to acquire the rights to develop and distribute
the Software Products, and Licensor is willing to grant such rights to Licensee.
NOW, THEREFORE, in consideration of the mutual covenants and agreements
contained herein and for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, Licensor and Licensee hereby agree
as follows:
ARTICLE I
DEFINITIONS
1.1 "European Territory" means Europe.
1.2 "exploit" means to use, copy, package, market, distribute, display, sell
and/or sub- license, and the terms "exploiting" and "exploitation" shall
be interpreted accordingly.
1.3 "Intellectual Property Rights" means all patent, trademark, copyright,
trade secret and other intellectual property rights recognized by law.
1.4 "inventory" means components and packaging for the Software Products and
HG Branded Products used by the Licensee at the date of this Agreement for
sale of such products and stored at the Licensee's premises at the date of
this Agreement.
1.5 "Worldwide Territory" means anywhere in the world except the European
Territory.
1.6 "Royalty and Royalties" has the meaning set forth in Section 4 hereof.
1.7 "Software Products" means those software products listed on Schedule 1.5
hereto.
1.8 "Territory" means collectively the Worldwide Territory and the European
Territory.
1.9 "2001 Term" means the period from April 1, 2001 through March 31, 2002.
AGREEMENT
-25-
1.10 "2002 Term" means the period from April 1, 2002 through March 31, 2003.
ARTICLE II
GRANT OF LICENSES
2.1 Software Licenses. Licensor grants Licensee, during the term of this
Agreement or until terminated pursuant to Section 6.3.1, if earlier, (a)
for the 2001 Term, an exclusive license to exploit the Software Products
in the European Territory (the "European 2001 License"); (b) for the 2002
Term, a non-exclusive license to exploit the Software Products in the
European Territory (the "European 2002 License"); and (c) for the 2001
Term and the 2002 Term, a non-exclusive license to exploit the Software
Products in the Worldwide Territory (the "Worldwide License"; and together
with the European 2001 License and European 2002 License, the "Software
Licenses"). Each of the European 2002 License and the Worldwide License
shall be automatically renewable (on a non-exclusive basis) for successive
two year terms if there is and has been no failure on the part of Licensee
to comply with all of the terms and conditions of this Agreement and, in
each year of such respective license, with respect to the European 2002
License and the Worldwide License, not less than an aggregate of $25,000
in Royalties are paid to Licensor pursuant to such license.
2.2 Trademark License. Licensor grants Licensee, during the term of this
Agreement or until terminated pursuant to Section 6.3.3, if earlier, a
non-exclusive, non- transferable license (the "Trademark License") to use
the "Harvard Graphics" name and trademark (the "Trademark") in the
Territory for the purpose of exploiting the products listed on Schedule
2.2 ("HG Branded Products") and subsequent modification thereof under the
Trademark. Any use of the Trademark on products other than the HG Branded
products must be approved by Licensor in writing in advance of such use.
All such use of the Trademark must reference the Trademark as being owned
by Licensor. Licensor retains the sole and exclusive right to own, hold,
apply for registration of, and register, the Trademark, during the term of
and after the termination or expiration of this Agreement. Licensee will
neither take nor authorize any activity inconsistent with such right.
2.3 Non-Competition. (a) The Licensor shall not during the 2001 Term in any
country within the European Territory exploit, nor license any third party
to exploit, the Software Products; provided, that if the Trademark License
terminates prior to the expiration of the 2001 Term, this section 2.3
shall cease to have any force or effect; and
(b) So long as the Software Licenses continue in effect, Licensor
shall (i) not make any direct sale of Software Products in the Territory
except pursuant to a strategic relationship established after the date of
this Agreement with respect to the Software Products; and (ii) refer sales
inquiries and reseller opportunities (except with respect to Microgistix)
to Licensee and cooperate in the transfer of marketing and sales
opportunities to Licensee, whether new or existing.
2.4 Technology License. Licensor hereby grants Licensee a non-exclusive
AGREEMENT
-26-
perpetual royalty-free license to use, in connection with the distribution
of the products listed on Schedule 2.3, throughout the world any
copyrighted material owned by Licensor which is currently incorporated
into the existing software products listed on Schedule 2.3 (the
"Technology") and subsequent modification thereof. For purposes of this
Agreement, such license shall be referred to as the "Technology License".
2.5 Websites. Licensee shall have the exclusive right to operate the following
websites of Licensor, subject to Licensor's reasonable approval (such
approval not to be unreasonably withheld or delayed) of any content not
directed to marketing and selling Software Products and/or HG Branded
Products or which could create liability to Licensor or its affiliates:
xxx.xxxxxxxxxxxxxxx.xxx
2.6 Limitations. Licensee acknowledges that the Software Products and the
Trademark, and all Intellectual Property Rights related thereto, whether
affixed or applied to Serif products or otherwise, are the property of
Licensor and Licensee has no rights in the foregoing except to the extent
expressly granted by this Agreement.
2.7 Consents. Any license granted hereby that requires the consent or approval
of a third party is made subject to such consent or approval being
obtained if such consent or approval has not been obtained. Licensor shall
use its reasonable best efforts to obtain any such consent or approval
after the date hereof until such time as such consent or approval has been
obtained. Licensor shall cooperate with Licensee to provide that, subject
to Section 3.4, Licensee shall receive Licensor's interest in the benefits
provided by such third party, provided that Licensee shall undertake to
pay or satisfy the corresponding liabilities for the enjoyment of such
benefit; provided, that nothing hereunder shall be deemed to be an
assignment of any agreement giving rise to such benefits.
2.8 Compliance with Licensor Agreement. Licensee acknowledges that is has
reviewed the terms of that certain Consent Agreement (the "Harvard
University Agreement"), dated as of June 29, 1989, between Harvard
University and Licensor. During the term of the Trademark License,
Licensor shall comply with all of Licensor's restrictions and obligations
under the Harvard University Agreement with respect to Licensee's
exploitation of the Trademark.
ARTICLE III
SOFTWARE
3.1 Software. Licensor licenses the Software Products "as is" and "where is."
Licensor shall not be obligated to provide any technical assistance or
customer support.
3.2 Delivery. Licensee acknowledges that Licensor has no obligation to deliver
additional source code for the Software Products. Licensee further
acknowledges that it is in possession of existing inventory of the
Software Products. Such inventory may be sold by Licensee,
AGREEMENT
-27-
provided that Licensor shall retain title to such inventory until the sale
of any such inventory by Licensee, upon which event title to the proceeds
from the sale of such units of inventory as shall have been sold shall
vest in Licensor and remain Licensor's property until the cost of such
sold inventory to Licensor and all Royalties payable hereunder are
accounted for and paid by Licensee to Licensor. Attached hereto as
Schedule 3.2 is a list of such inventory and the cost thereof to Licensor.
To the extent that any of the inventory is determined by Licensor to be
unsaleable, Licensor and Licensee will either cooperate in good faith in
disposing of such unsaleable inventory or (i) at Licensor's request, such
unsaleable inventory shall be returned to Licensor at Licensor's cost or
(ii) at Licensee's request, the Licensor shall within 21 days of such
request either collect or dispose of any such inventory.
3.3 Modification. During the 2001 Term, Licensee shall have the non-exclusive
right to amend the source code and/or object code of the Harvard Graphics
products that are part of the Software Products; provided that any such
amendments do not interfere with the operability of any Harvard Graphics
products. Licensee shall not include any third party technology which
incur royalties to or require license agreements with third parties
without the consent of the Licensor. Licensor shall have a perpetual
royalty-free license to market, sell and use any such amendments and, upon
request of Licensor, Licensee shall deliver to Licensor the source and
object codes related to any and all such amendments. In any event, and
whether or not requested by Licensor, Licensee shall deliver such
amendments, if any, to Licensee no less often than quarterly. Licensee
shall at all times keep Licensor fully informed as to any and all such
amendments made and in the process of being made.
3.4 Expenses. (a) Licensee shall be responsible for and shall pay any and all
expenses and/or license fees currently due and owing or payable to third
party licensors with respect to the HG Branded Products (including
royalties payable to third parties for embedded technology) and shall, in
respect of any third party technology that it wishes to incorporate into
the HG Branded Products pay any and all expenses payable to any such third
parties in respect of such incorporation.
(b) Licensor shall be responsible for and shall pay any and all
expenses and/or license fees currently due and owing or payable to
existing third party licensors in respect of the Software Products
(including royalties payable to existing third parties for embedded
technology but not with respect to Serif products).
3.5 Technical Support. Licensee shall provide technical support to all users
of the Software Products at the expense of the Licensee.
3.6 Microgistix. Licensee shall treat Microgistix no less favorably than any
other reseller of the Software Products.
AGREEMENT
-28-
ARTICLE IV
ROYALTY & PAYMENT PROCEDURE
4.1 Royalties. (a) In consideration for the licenses granted herein, Licensee
shall pay Licensor in U.S. Dollars a royalty ("Royalty" or "Royalties"),
payable within 30 days after the end of each calendar quarter with respect
to such quarter commencing with the quarter ending June 30, 2001, as
follows: (i) with respect to Software Products, 12.5% of Net Receipts; and
(ii) with respect to any HG Branded Products by 3% of Net Receipts.
Notwithstanding the foregoing, Licensor shall be entitled to 100% of the
Net Receipts in connection with the OEM contract between Licensee and
Microgistix. For purposes hereof, Net Receipts shall mean the amounts
received by Licensee in connection with the sale, licensing or other
commercial exploitation of the Software Products, including any amendments
or improvements thereto, or HG Branded Products, as applicable, less (1)
any refunds, credits, discounts, allowances, rebates, returns and
adjustments consistent with normal business practices and (2) federal,
state, foreign or other taxes or tariffs imposed on the Software Products
or HG Branded Products, as applicable (not including any tax based on
Licensee's net income) and (3) any set-off, deduction or withholding which
the Licensee is required by law to set-off, deduct or withhold on behalf
of taxing authorities with respect to payments to Licensor.
(b) Together with each Royalty payment, Licensee shall deliver a report
setting forth the Software Products and HG Branded Products shipped, sold
and licensed, during the quarter to which the Royalty payment relates.
Such report shall set forth in detail all information reasonably necessary
to compute Net Receipts and Royalties due to Licensor relating to such
quarter. In the event a Royalty payment is not received on its due date,
such late payment shall accrue interest at a rate equal to the lesser of
(a) 12% per annum or (b) the maximum rate permitted by law.
4.2 Books and Records. Licensee agrees to maintain adequate books and records
relating to the production and distribution of the Software Products and
the HG Branded Products, and the receipt of payment with respect thereto,
which books shall be maintained in sufficient detail to enable Royalties
due hereunder to be calculated.
4.3 Audit. Licensee agrees that Licensor or an accountant or other
representative ("Auditor") acting on Licensor's behalf and at Licensor's
expense may audit the books and records of Licensee which relate to the
Software Products or the HG Branded Products and the quantity distributed
or supplied pursuant to this Agreement for the purposes of determining the
accuracy of Licensee's reports to Licensor. Licensor will provide to
Licensee a copy of the Auditor's written report within thirty days after
the audit is completed. Copies of all notes and work product shall remain
confidential pursuant to Section 7 of this Agreement. Audits shall not
occur more than twice per year and shall take place during normal business
hours, upon prior written notice, in such manner so as not to unreasonably
interfere with Licensee's business activities. If it is established by the
Auditor that there has been an underpayment to Licensor of 7.5% or more of
total Royalties due as at the date of the audit's completion, Licensee
shall pay Licensor all costs of such audit, together with all unpaid
Royalties.
AGREEMENT
-29-
ARTICLE V
REPRESENTATIONS, WARRANTIES AND INDEMNIFICATIONS
5.1 WARRANTY DISCLAIMER.
5.1.1 THE SOFTWARE PRODUCTS ARE PROVIDED AND LICENSED "AS IS" AND THERE
ARE NO WARRANTIES, REPRESENTATIONS, OR CONDITIONS, EXPRESSED OR
IMPLIED, WRITTEN OR ORAL, ARISING BY STATUTE, OPERATION OF LAW,
COURSE OF DEALINGS, USAGE OF TRADE OR OTHERWISE, REGARDING THEM, OR
ANY OTHER PRODUCT OR SERVICE PROVIDED HEREUNDER OR IN CONNECTION
HEREWITH BY LICENSOR. LICENSOR DISCLAIMS ANY IMPLIED WARRANTY OR
CONDITION OF MERCHANTABLE QUALITY, SATISFACTORY QUALITY,
MERCHANTABILITY, DURABILITY, OR FITNESS FOR A PARTICULAR PURPOSE. NO
REPRESENTATION OR OTHER AFFIRMATION OF FACT, INCLUDING BUT NOT
LIMITED TO STATEMENTS REGARDING PERFORMANCE OR CONDITION OF THE
SOFTWARE PRODUCTS, WHICH IS NOT CONTAINED IN THIS AGREEMENT, SHALL
BE DEEMED TO BE A WARRANTY, CONDITION OR REPRESENTATION BY LICENSOR.
5.1.2 LICENSEE NOT TO BIND. LICENSEE WILL GIVE AND MAKE NO WARRANTIES OR
REPRESENTATIONS ON BEHALF OF LICENSOR AS TO QUALITY, MERCHANTABLE
QUALITY, SATISFACTORY QUALITY, MERCHANTABILITY, FITNESS FOR A
PARTICULAR USE OR PURPOSE OR ANY OTHER FEATURES OF THE SOFTWARE
PRODUCTS AND LICENSEE SHALL NOT INCUR ANY LIABILITIES, OBLIGATIONS
OR COMMITMENTS ON BEHALF OF LICENSOR.
5.2 Compliance with Laws. Licensee shall comply with all laws, rules,
regulations and industry standards, including, without limitation, export
restrictions and prohibitions, existing with respect to its use, marketing
and distribution of the Software Products and HG Branded Products and the
performance by Licensee of its obligations hereunder in the jurisdictions
where Licensee carries on activities under this Agreement and where the
Software Products and HG Branded Products are distributed from time to
time. For each country in which Licensee intends to distribute the
Software Products or HG Branded Products, Licensee shall, at its own
expense, obtain and arrange for all government approvals, consents,
licenses, authorizations, declarations, filings, and registrations as may
be necessary or advisable for the distribution of the Software Products
and HG Branded Products according to the terms and conditions of this
Agreement, including but not limited to foreign exchange approvals, import
licenses, fair trade approvals, and customs clearance.
5.3 Intellectual Property Protection. Licensee will give Licensor prompt
written notice of any such third party claim and fully cooperate with
Licensor in the defense of such claim. In the event that Licensee becomes
aware that a third party is potentially infringing on Licensor's
Intellectual Property Rights licensed to Licensee hereunder, Licensee
shall promptly notify Licensor thereof in writing. Licensor shall, to the
extent it deems advisable, prosecute such infringement.
AGREEMENT
-30-
5.4 Indemnification. Licensor will indemnify Licensee against any and all
claims, demands, actions, costs (including all reasonable attorney's fees
and expenses), awards, damages and any other losses and/or liabilities
suffered by the Licensee and arising from or due to:
5.4.1 any third party claims that the Software Products or the Trademark
infringe the Intellectual Property Rights of such third party; and
5.4.2 any claims by any customers of the Software Products and/or
Technology under any of the Licensor's end-user licenses.
ARTICLE VI
TERMINATION
6.1 Immediate Termination. A party may immediately terminate this Agreement
and all the licenses granted hereunder if the other party is declared
bankrupt; makes a general assignment for the benefit of creditors; or
suffers or permits the appointment of a receiver, provided such action is
not dismissed within thirty days.
6.2 Material Breach. Either party may terminate this Agreement and all the
licenses granted hereunder upon ten days written notice for breach of the
terms of this Agreement unless such breach is cured within such ten days.
In addition, Licensor may terminate this Agreement for non-payment of
Royalties as provided hereunder unless Licensee cures such non-payment
within five days of notice of non-payment.
6.3 Licensor's Right to Terminate.
6.3.1 Licensor shall have the right to terminate the Software Licenses
granted hereunder and the rights granted pursuant to Sections 2.2,
2.3, 2.4 and 3.3, upon payment of a $75,000 termination fee to
Licensee, (i) during the 2001 Term and 2002 Term, if either Vizacom
Inc., the parent corporation of Licensor, or Licensor enters into a
strategic relationship with respect to the Harvard Graphics products
that are part of the Software Products, and (ii) at any time after
the 2002 Term for any reason, in each case such termination to be
effective sixty days after written notice thereof to Licensee.
6.3.2 In the event aggregate Royalties do not exceed $25,000 under this
Agreement during the 2001 Term, the 2002 Term or any succeeding
twelve month period, the Licensor may terminate this Agreement
without any liability or payment.
6.3.3 Licensor shall have the right to terminate the Trademark License
granted hereunder for any reason (i) during the 2001 Term or 2002
Term, upon payment of a $45,000 termination fee to Licensee, and
(ii) after the 2002 Term, without payment of a termination fee, such
termination to be effective sixty days after written notice thereof
to Licensee.
6.4 Effect of Termination.
AGREEMENT
-31-
6.4.1 In the event of any termination, Licensee shall pay to Licensor
immediately all Royalties due up through the termination date.
6.4.2 Replication of Software Products shall immediately cease upon
termination of the Software License. Notwithstanding the foregoing,
Licensee shall have the right to distribute any remaining inventory
of Software Products for a period of three months after termination
of the Software License, except that Licensee shall have the right
to distribute any remaining inventory and continue to perform for
the remainder of the term of existing OEM contracts, which shall
have a maximum full term of no more than two years, in effect at the
time of termination; provided that Licensee continues to pay
Royalties to Licensor.
6.4.3 Replication of HG Branded Products shall immediately cease upon
termination of the Trademark License. Notwithstanding the foregoing,
Licensee shall have the right to distribute any remaining inventory
of such products for a period of three months after such
termination, except that Licensee shall have the right to distribute
any remaining inventory and continue to perform for the remainder of
the term of existing OEM contracts, which shall have a maximum full
term of no more than two years, in effect at the time of
termination; provided that Licensee continues to pay Royalties to
Licensor.
ARTICLE VII
CONFIDENTIALITY
7.1 Definition. Confidential Information means (a) information received by
either party relating to this Agreement; (b) information disclosing any of
the business practices of either party, as applicable, including without
limitation, Licensor's or Licensee's pricing and marketing practices,
revenue information and relationships with licensors, authorized
resellers, or customers; (c) specifications or other technical information
about or concerning the Software Products or business models; (d)
information designated by either party as confidential in writing or, if
disclosed orally, identified as confidential at the time of disclosure;
and (e) the terms and conditions of this Agreement, but not the existence
of this Agreement. It does not include information, technical data, or
know-how which is (w) already published or available to the public other
than by a breach of this Agreement; (x) rightfully received from a third
party not in breach of any obligation of confidentiality; (y)
independently developed by personnel or agents of the receiving party
without access to the Confidential Information of the other party; or (z)
produced in compliance with applicable law or a court order, provided that
the receiving party first gives the disclosing party reasonable notice of
such law or order, provides reasonable cooperation to the disclosing party
in its efforts to lawfully limit disclosure, and gives the disclosing
party opportunity to defend and/or attempt to limit such production.
AGREEMENT
-32-
7.2 Confidentiality. During the term of this Agreement and thereafter, each
party shall safeguard and keep confidential the other party's Confidential
Information and will not, without prior written consent, disclose the
other party's Confidential Information, in whole or in part, except as
authorized in writing. Each party agrees to protect the Confidential
Information as it would its own information of a like nature against
unauthorized use, dissemination, or publication. No use of the
Confidential Information is permitted except as authorized by the
disclosing party and provided herein. Confidential Information may only be
disclosed to agents or employees of the receiving party who need to know
such information and in those instances only to the extent justified by
that need.
7.3 Return. Upon termination of this Agreement and request of the disclosing
party, the receiving party shall return all copies of the other party's
Confidential Information to the other party or certify in writing that all
copies of the Confidential Information have been destroyed. A party may
return Confidential Information, or any part thereof, to the other party
at any time. The obligations of this Section 7 will survive any return or
destruction of the Confidential Information.
ARTICLE VIII
ADMINISTRATIVE PROVISIONS
8.1 Entire Agreement. This Agreement represents the final, complete and
exclusive agreement between the parties concerning the matters
contemplated hereby. Any amendments or modifications to this Agreement
must be in writing and signed by both parties to this Agreement.
8.2 Counterparts. This Agreement may be executed in counterparts, and a
facsimile copy of this Agreement signed by Licensee, transmitted to
Licensor, and countersigned by Licensor shall constitute a binding
Agreement.
8.3 Severability; Waiver. This Agreement is severable and the invalidity of
any term or condition shall not affect the validity of any other term or
condition. Any delay or failure to enforce a provision of this Agreement
shall not be deemed to constitute a waiver of the same.
8.4 Governing Law; Arbitration. This Agreement shall be governed by the laws
of the United States and the State of New York (without regard to its
principles of conflicts of laws) and any legal action brought pursuant to
this Agreement shall be brought in the state or federal courts located in
the Southern District of New York. Each of the parties hereto irrevocably
consents to the exclusive jurisdiction of any state or federal court
within the State of New York, in connection with any matter based upon or
arising out of this Agreement or the matters contemplated herein, and
agrees that process may be served upon them anywhere in the world.
8.5 Force Xxxxxx. Notwithstanding any provisions in this Agreement to the
contrary, neither party shall be liable to the other, nor shall any breach
of this Agreement occur, by reason of any delay or loss reasonably
incurred by Acts of God, fire, natural disaster, governmental order,
material shortages, war, riot, work stoppage or strike.
AGREEMENT
-33-
8.6 Independent Contractors. The parties hereto shall for all purposes be
deemed to be independent contractors. Nothing in this Agreement shall be
construed as making either Licensor or Licensee the agent of, or in joint
venture with, the other party.
8.7 Assignment. Neither party may assign this Agreement without the express
written consent of the other party, except that no consent shall be
required in the event of a merger, consolidation or sale of all or
substantially all of the assets of either party. A change in control of
Licensee shall be deemed an assignment for purposes hereof. The provisions
of this Agreement shall inure to the benefit of and be binding upon the
parties hereto, their successors or assigns.
8.8 Notices. All notices shall be in writing and either mailed or sent by
facsimile or nationally recognized overnight courier to the parties at the
addresses noted below to the attention of the appropriate persons. Notices
may also be sent by confirmed delivery of electronic mail when the
electronic mail addresses are known. All Royalty reports and payments will
be sent to Licensor at the address set forth below. Either party may
change the address for notices by giving notice to the other party as
provided herein.
If sent to Licensor: If sent to Licensee:
Software Publishing Corporation Serif (Europe) Limited
c/o Vizacom Inc. Xxxx 00
00 Xxxx Xxxxxx Xxxxxxx Xxxxxxxxxx Xxxxxx
New York, NY 10038 Xxxxxxxxxx, XX00 0XX
Attn: Accounting Department Attn: Financial Director
Fax: 000-000-0000 Fax: 0000 000 0000
With a copy to: With a copy to:
Xxxx X. Xxxxxxx, Esq. Xxxxxx Xxxxx, Esq
Xxxxxxx & Xxxxxxxx, LLC Xxxxxxx Wareing
50 Xxxxxxx Xxxxxxxxx Blvd. Cumberland House
Xxxxxxx Xxxxx, XX 00000 00 Xxxx Xxx, Xxxxxxxxxx
Fax: 000-000-0000 XX0 0XX
Fax: 0000 000 0000
8.9 The provisions of Articles IV, V, VII and clauses 6.4, 8.4 and this shall
survive termination of this Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed as of the Effective Date.
SERIF (EUROPE) LIMITED SOFTWARE PUBLISHING CORPORATION
By: /s/ Xxxx Xxxxx By: /s/ Xxxxxxx XxXxxxxx
-------------------------- ---------------------------
Name: Xxxx Xxxxx Name: Xxxxxxx XxXxxxxx
Title: Director Title: President
Exhibit E: SETTLEMENT AGREEMENT
AGREEMENT
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This Agreement (hereinafter, the Agreement") is effective as of October 1,
2002 by and between Serif Holdings Limited, an English corporation with its
principal place of business at The Software Centre, Xxxx 00, Xxxxxxx Xxxxxxxxxx
Xxxxxx, Xxxxxxxxxx XX00 0XX, Serif (Europe) Limited, an English Company with its
principal place of business at The Software Centre, Xxxx 00, Xxxxxxx Xxxxxxxxxx
Xxxxxx, Xxxxxxxxxx XX00 0XX, Serif Inc., a Delaware corporation with its
principal place of business at 000 Xxxxxxxxxxxx Xxxxxxxxx, Xxxxxx, Xxx
Xxxxxxxxx, 00000 (Serif Holdings Limited, Serif (Europe) Limited and Serif Inc.
are hereinafter referred to collectively as "Serif"), Software Publishing
Corporation ("SPC"), a Delaware corporation with its principal place of business
at 0000 Xxxxxxxx Xxxxxxxx Xxxxxxx, Xxxxxxx, Xxx Xxxx, 00000, and Vizacom, Inc.
("Vizacom"), a Delaware corporation with its principal place of business at 0000
Xxxxxxxx Xxxxxxxx Xxxxxxx, Xxxxxxx, Xxx Xxxx, 00000.
WHEREAS, Serif may have ownership rights in and to certain
HARVARD-formative trademarks for use in connection with certain presentation,
charting and clipart collection software (hereinafter, the "Marks"), including,
but not limited to, the HARVARD-formative trademarks identified in Schedule A,
annexed hereto as Exhibit A;
WHEREAS, Serif is desirous of assigning its ownership rights, if any, in
and to the Marks to SPC;
WHEREAS, SPC is desirous of acquiring Serif's ownership rights, if any, in
and to the Marks;
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WHEREAS, SPC and Serif (Europe) Limited are parties to a Software License
Agreement, a true and correct copy of which is annexed hereto as Exhibit B
(hereinafter, the "2001 Software License Agreement");
WHEREAS, the parties desire to terminate the 2001 Software License
Agreement in its entirety and the parties' rights and obligations thereunder;
NOW THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties agree as follows:
A. COVENANTS, REPRESENTATIONS AND WARRANTIES
1. Serif covenants, represents and warrants that it does not own any
right, title or interest in or to any of the Marks, or any xxxx comprising, in
whole or in part, the HARVARD xxxx, or any confusingly similar xxxx, anywhere in
the world other than the right to own and operate the xxxxxxxxxxxxxxx.xxx
domain name including without limitation using the Marks in any subdomain of
such domain name.
2. Serif covenants, represents and warrants that it has not applied to
register, will not apply to register, and does not own any trademark or service
xxxx registrations for any of the Marks, or any xxxx comprising, in whole or in
part, the HARVARD xxxx, or any confusingly similar xxxx, anywhere in the world.
3. Serif covenants, represents and warrants that it has not granted any
third party any rights in or to any of the Marks, whether by license, assignment
or otherwise other than licenses granted by Serif in the ordinary course of its
business only as follows:
(a) licenses to end-users of software incorporating and/or displaying the
Marks; and
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(b) the right for companies and other organizations within Serif's
distribution network to use the Marks only in connection with the promotion
and/or distribution of software incorporating and/or displaying the Marks.
B. ASSIGNMENT
4. Serif hereby quit claims and irrevocably sells, grants, transfers,
assigns, conveys and sets over to SPC, its successors and assigns, all of
Serif's worldwide right, title and interest, if any, in and to:
(a) the Marks;
(b) any xxxx comprising, in whole or in part, the HARVARD xxxx, and any
confusingly similar xxxx other than the xxxxxxxxxxxxxxx.xxx domain name;
(c) the goodwill of the business symbolized by the Marks; and
(d) the right to xxx and recover for past and future infringement of the
Marks.
5. Serif agrees that if additional documents, instruments or information
are required from time to time to confirm SPC's ownership of the Marks, or its
successors or assigns, Serif will, at SPC's sole cost, undertake any reasonably
requested actions to provide whatever is reasonably required in order to secure
to SPC, its successors or assigns the benefits of all rights hereby transferred.
6. Serif agrees not to challenge use of the Marks by SPC, its successors
or assigns, or to oppose or object in any other manner to any application for
registration of the Marks by SPC, its successors or assigns, or to oppose or
object to any registration arising from any such application.
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C. 2001 SOFTWARE LICENSE AGREEMENT
7. In consideration for SPC procuring the written consent of XX Xxxxxx
Chase Bank to Serif reducing by US$30,000 (thirty thousand US dollars) its
payment due on December 31, 2002 to XX Xxxxxx Xxxxx Bank under the promissory
note dated March 31, 2001 issued by Serif Inc in favor of Vizacom and assigned
by Vizacom to XX Xxxxxx Chase Bank on May 30, 2002, SPC and Serif agree that,
subject to the terms of this Agreement, the 2001 Software License Agreement is
hereby terminated in its entirety, together with the parties' rights and
liabilities thereunder, effective as of the date of this Agreement. Other than
as expressly set out in this Agreement, the parties hereby agree that SPC shall
not incur any additional penalty, fine, fee or any other liability to Serif
whatsoever for termination of the 2001 Software License Agreement.
8. SPC agrees that it will not pursue or instigate any claims against
Serif whether under contract, tort, common law or statute which SPC may have at
the date of this Agreement or at any time in the future in respect of the 2001
Software License Agreement and/or its subject matter and/or the use of the Marks
to promote Software referred to in the 2001 Software License Agreement and SPC
confirms that it waives any and all such claims.
9. Serif agrees that it will forward any outstanding royalties due to SPC
under the 2001 Software License Agreement on or before November 15, 2002.
D. MISCELLANEOUS
10. This Agreement together with the agreements referred to in this
Agreement constitute the entire Agreement between the parties in respect of the
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subject matter of this Agreement and no party has entered into this Agreement
based upon any promise, representation, warranty or covenant not included
herein.
11. This Agreement constitutes a binding contract between the parties and
shall not be amended, rescinded or otherwise modified.
12. This Agreement shall be binding upon and shall inure to the benefit of
the parties, their successors, assigns, subsidiaries, licensees, affiliated
companies, and all those in active concert or participation with them.
13. The parties hereto acknowledge that each has read this Agreement; that
each fully understands its rights, privileges and duties hereunder; that each is
relying solely on its own judgment and belief as to the adequacy of the
consideration provided to the other; and that each enters into this Agreement
freely and voluntarily. Each party further acknowledges that each has had the
opportunity to consult with an attorney of its choice to explain the terms of
this Agreement and the consequences of signing it.
14. This Agreement will be governed by and construed in accordance with
the laws of the State of New York.
15. Counterparts: This Agreement may be executed in counterparts, each of
which when executed shall be an original and a facsimile copy of this Agreement
signed by one party, transmitted to each party, and countersigned by each party
shall constitute a binding Agreement. All counterparts therefore shall
constitute one and the same document.
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16. Each person executing this Agreement warrants that he or she is the
duly authorized representative of the respective party designated below, and is
fully empowered to execute this Agreement on its behalf.
17. Vizacom hereby agrees to be bound to the terms of this Agreement and
unconditionally guarantees all of SPC's obligations hereunder. Specifically,
Vizacom expressly agrees to assume any and/or all of SPC's obligations under
this Agreement in the event SPC cannot or does not perform its obligation(s).
IN WITNESS WHEREOF, the parties have caused this instrument to be duly
executed as of the dates indicated below:
Software Publishing Corporation Serif Holdings Limited
By: /s/ Xxxx Xxxxxxxxxx By: /s/ Xxxxx Xxxxxxxxx
Name: Xxxx Xxxxxxxxxx Name: Xxxxx Xxxxxxxxx
----------------------------- ---------------------------------
Title: CFO Title: Financial Director
---------------------------- --------------------------------
Dated: October 2, 2002 Dated: October 2, 2002
----------------------------- --------------------------------
Serif (Europe) Limited Serif Inc.
By: /s/ Xxxxx Xxxxxxxxx By: /s/ Xxxx Xxxxxxx
Name: Xxxxx Xxxxxxxxx Name: Xxxx Xxxxxxx
----------------------------- ---------------------------------
Title: Financial Director Title: VP Operations
---------------------------- --------------------------------
Dated: October 2, 2002 Dated: October 2, 2002
----------------------------- --------------------------------
Vizacom Inc
By: /s/ Xxxx Xxxxxxxxxx
-----------------------------
Name: Xxxx Xxxxxxxxxx
----------------------------
Title: CFO
-----------------------------
Dated: October 2, 2002
-----------------------------
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