EXHIBIT 10.12
LICENSE AGREEMENT
This Agreement made this 22nd day of December, 1999 by and between
Greenfield Consulting Group, Inc., a corporation organized and existing under
the laws of the State of Connecticut, whose principal place of business is
located at 000 Xxxxxxxxx Xxxxxx, Xxxxxxxx, Xxxxxxxxxxx 00000 ("Licensor"), and
Greenfield Online, Inc., a corporation organized and existing under the laws of
the State of Connecticut, whose principal place of business is located at 00
Xxxxx Xxxx, Xxxxxx, Xxxxxxxxxxx 00000 ("Licensee").
WHEREAS the Licensor is the owner of the service xxxx XXXXXXXXXX ONLINE
("Xxxx") and the federal service xxxx application Serial No. 75-694,707 for the
Xxxx, and
WHEREAS it is the desire and the intention of the parties that the
Licensee be permitted to use the Xxxx throughout the world ("Territory").
NOW THEREFORE, in consideration of the above and other valuable
consideration, the parties hereby agree as follows:
1. LICENSE. The Licensor grants to the Licensee a perpetual, royalty
free right and license to use the Xxxx in the Territory in connection with full
service marketing research services specializing in utilizing a global computer
information network to conduct business ("Services").
2. QUALITY OF SERVICES. The Licensee shall use the Xxxx only with the
Services rendered by or for the Licensee with the quality of the Services
satisfactory to the Licensor.
3. EXCLUSIVITY. Licensor agrees that, effective during the term of this
license, Licensor will itself neither use nor grant any other licenses for the
use of the Xxxx. Notwithstanding any provision of this Agreement to the
contrary, Licensor reserves any and all rights in and related to the Xxxx that
are not explicitly licensed in this Agreement including but not limited to the
right to use, in connection with any and all services, any and all marks (except
for GREENFIELD ONLINE), whether or not currently in use or later adopted and/or
used, that consist of or comprise "Greenfield" as a xxxx or xxxx element.
4. INSPECTION. The Licensee will permit duly authorized representatives
of the Licensor to inspect the premises of the Licensee, at all reasonable times
and upon reasonable prior written notice for the purpose of ascertaining or
determining compliance with paragraphs 1 and 2 hereof.
5. USE OF XXXX. At Licensor's request, Licensee shall provide Licensor
with samples of all literature, brochures, signs, advertising and promotional
materials prepared by or for Licensee, and licensee shall obtain the approval of
Licensor with respect to all such brochures, signs, advertising and promotional
materials bearing the Xxxx, which approval shall not be unreasonably withheld.
When using the Xxxx under this Agreement, Licensee undertakes to comply
substantially with all laws pertaining to service marks in force at any time in
the Territory.
6. REGISTRATION OF LICENSEE. If the law permits, the Licensor may make
application to register the Licensee as a Permitted User or Registered User of
the Xxxx and if necessary, of if requested by the Licensor or its duly
authorized representative, the Licensee undertakes to join in such application
under the conditions of this Agreement and to execute any such documents and to
take such action as may be necessary or requested by the Licensor to implement
such application or retain, enforce or defend the Xxxx.
7. EXTENT OF LICENSE. The License herein granted shall not be
assignable or transferable in any manner whatsoever without the prior written
consent of the Licensor except to an entity under common ownership and control
of Licensee but only if such entity agrees also to be bound by all of the terms
and conditions of this Agreement and the license granted in this Agreement.
8. INDEMNITY. The Licensor assumes no liability to the Licensee or to
any third parties with respect to the quality or performance characteristics of
the Services rendered by the Licensee under the Xxxx or to the use of the Xxxx
in the Territory, and the Licensee shall indemnify and hold harmless Licensor
against all losses, damages and expenses, including attorneys' fees, incurred as
a result of or related to claims of third persons against Licensor involving
Licensee's Services or use of the Xxxx.
9. TERMINATION.
a. Except as otherwise provided below in Section 9(b),
this Agreement shall be perpetual.
b. If the Licensee makes any assignment of assets or
business for the benefit of creditors, or if a
trustee or receiver is appointed to administer or
conduct its business or affairs, or if it is adjudged
in any legal proceeding to be either a voluntary or
involuntary bankrupt, then all the rights granted
herein shall forthwith cease and terminate without
prior notice or legal action by the Licensor.
10. OWNERSHIP AND PROTECTION OF THE XXXX.
a. The Licensee acknowledges the Licensor's exclusive
worldwide right, title, and interest in and to the
Xxxx, and any state, federal, foreign or
international trade or service xxxx registration
and/or application associated therewith and will not
at any time do or cause to be done any act or thing
contesting or in any way impairing or intending to
impair any part of such right, title, and interest.
In connection with the use of the Xxxx, the Licensee
shall not in any manner represent that it has any
ownership in the Xxxx or any state, federal, foreign
or international registrations and/or applications
thereof, and the licensee acknowledges that use of
the Xxxx shall not create in the Licensee's favor any
right, title,
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or interest in or to the Xxxx. Upon termination of
this Agreement as provided in Section 9(b) above, the
Licensee will cease and desist from all use of the
Xxxx and will deliver up to Licensor, or its duly
authorized representatives, all material and papers
upon which the Xxxx appears, and the Licensee shall
at no time thereafter adopt or use, without the
Licensor's prior written consent, any word or xxxx
which is likely to be similar to or to be confused
with the Xxxx.
b. Licensor agrees to take reasonable steps directed
towards terminating any activities deemed by Licensor
to infringe on the Xxxx. Licensee shall notify
Licensor in writing of any infringements or
imitations by others of the Xxxx on services similar
to those covered by this Agreement which may come to
Licensee's attention. Notwithstanding such
notification by Licensee, Licensor shall have the
sole right to determine whether or not any action
shall be taken on account of any such infringements
or imitations. Licensee agrees to assist Licensor to
the extent necessary to protect any of Licensor's
rights to the Xxxx, and Licensor, if it so desires,
may commence or prosecute any claims or suits in its
own name or in the name of Licensee or join Licensee
as a party thereto. Licensee hereby further agrees to
execute any and all instruments, declarations,
affidavits and other documents reasonably requested
by Licensor and to provide any and all testimony as
reasonably requested by Licensor in connection with
the foregoing, in the event that any claim or cause
of action is brought pursuant to this Paragraph 10(b)
as a result of any xxxx or trade name that includes
xxxx or trade name elements similar to "on" or "line"
or both or that is used for or otherwise pertains to
services closely related to the Services set forth in
Paragraph 1 of this Agreement, then Licensor and
Licensee shall each be entitled, after first
subtracting any and all of Licensor's attorneys fees
incurred and Licensor's other costs related thereto,
to one half of the recovery therefrom including, but
not limited to, any damages and/or attorneys fees
awarded and/or profits recovered. Licensee shall, at
its own expense, pay any and all attorneys fees and
other costs incurred by Licensee as a result of
Licensee's representation, if at all, by or retainer
of its own legal counsel, experts and/or other
persons or entities.
c. Notwithstanding the failure by Licensor to bring any
claim or cause of action with respect to any
infringements or imitations of the Xxxx, Licensee
shall not institute any suit or take any action on
account of any such infringements or imitations
without first obtaining the written consent, which
consent will not be unreasonably withheld, of the
Licensor so to do. In the event that Licensor does
not assert any claim or cause of action as provided
in Paragraph 10(b) above but instead grants
permission for Licensee to assert claims or causes of
action, Licensee shall pay any and all attorneys fees
and other costs in connection therewith or related
thereto. In the event of litigation pursuant to this
Paragraph 10(c), both
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Licensor and Licensee shall each be entitled, after
first subtracting any and all attorneys fees incurred
and other costs of litigation, to one half of the
recovery therefrom including, but not limited to, any
damages and/or attorneys fees awarded and/or profits
recovered.
d. Licensee agrees to assist Licensor in the procurement
of any protection including the registration of the
Xxxx in any states, in the United States and on any
and all foreign and international trademark
registers. Licensee hereby agrees to execute any and
all instruments, declarations, affidavits and other
documents reasonably requested by Licensor and to
provide any and all testimony as reasonably requested
by Licensor to accomplish, confirm or maintain the
foregoing. Notwithstanding the foregoing, Licensor
shall be under no obligation to procure any
registrations in any state, country, foreign or
international register. Licensee agrees to pay all
attorneys fees, filing fees and other costs
associated with procuring and maintaining any and all
foreign and international registrations. Licensee
acknowledges and agrees that neither Licensee nor any
other person or entity controlled by, related to,
successor to or in concert with Licensee shall file
any application or obtain any registration on the
Xxxx or on any other xxxx similar to the Xxxx.
11. VALIDITY. The invalidity or unenforceability of any provision or
provisions of this Agreement shall not affect the validity or enforceability of
any other provision of this Agreement, which shall remain in full force and
effect, nor shall the invalidity or unenforceability of a portion of any
provision of this Agreement affect the validity or enforceability of the balance
of such provision. If any provision of this Agreement, or portion thereof is so
broad, in scope or duration, as to be unenforceable, such provision or portion
thereof shall be interpreted to be only so broad as is enforceable.
12. BINDING EFFECT. This Agreement shall be binding upon and ensure to
the benefit of the successors and assigns of the parties hereto; provided,
however, in accordance with Paragraph 6 hereof, the rights of the Licensee
hereunder shall not be assignable or transferable without the prior written
consent of the Licensor.
13. ENTIRE AGREEMENT. This License Agreement represents the entire
understanding between the parties with respect to the subject matter hereof and
supersedes all such other understandings and agreements, whether written or
oral, between the parties.
14. NOTICES. Any notices required or permitted to be given under this
Agreement shall be deemed sufficiently given if mailed by registered mail,
postage prepaid, addressed to the party to be notified at its address shown at
the beginning of this Agreement, or at such other address as may be furnished in
writing to the notifying party.
15. GOVERNING LAW. This Agreement shall be governed and construed in
accordance with the laws of the State of Connecticut.
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IN WITNESS WHEREOF this Agreement has been executed as of the day and
year first above written.
LICENSOR
GREENFIELD CONSULTING GROUP, INC.
By_____________________________________________
Xxxxxx Xxxxxxxxxx, President
LICENSEE
GREENFIELD ONLINE, INC.
By_____________________________________________
Xxxx Xxxxxx, President
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SUPPLEMENT TO LICENSE AGREEMENT
This Supplement to License Agreement is dated January 27, 2000, by and between
Greenfield Consulting Group, LLC., (Licensor) and Greenfield Online, Inc.,
(Licensee).
WHEREAS: The parties entered into a License Agreement dated December 22, 1999,
wherein Licensor granted Licensee an exclusive license to use the Xxxx
XXXXXXXXXX ONLINE;
WHEREAS: Licensee desires to use the Domain Name XXXXXXXXXX.XXX in connection
with its full service marketing research business throughout the world
("Territory");
WHEREAS: Licensor is the owner of the service xxxx XXXXXXXXXX reg #2,286,932;
NOW THEREFORE, for good and valuable consideration, the receipt and sufficiency
of which is acknowledged, the parties agree that the License Agreement shall be
supplemented as follows:
1. License: Notwithstanding anything to the contrary contained in the
License Agreement, the Licensor grants to Licensee a royalty free right
and license to use the XXXXXXXXXX xxxx solely as a part of the
description of the Uniform Resource Locator XXXXXXXXXX.XXX (the "URL"
or "Domain Name") used by Licensee in conjunction with the Services
(including in any advertising or other materials listing the URL or
Domain Name). Such right and license shall continue for as long as
Licensee continues to offer the Services under the name Greenfield
Online, or such other name incorporating the XXXXXXXXXX xxxx as may be
agreed to between the parties.
2. Exclusivity: Licensor agrees that during the term of this license,
Licensor will not grant any other license for use of the stand-alone
XXXXXXXXXX xxxx in connection with a URL or Domain Name to any other
non-affiliated entity which provides services which are competitive
with the Services offered by Licensee, it being understood that nothing
in this paragraph restricts in any way the use, in any form, of the
XXXXXXXXXX xxxx by Licensor or any person or entity that controls, is
controlled by, or is under common control with Licensor.
3. Link: In order to minimize the risk of confusion, Licensee agrees that,
for as long as it uses the URL or Domain Name, and for as long as
Licensor continues to conduct business using the XXXXXXXXXX xxxx as all
or a portion of its tradename, Licensee shall maintain a link on the
Xxxxxxxxxx.xxx home page allowing visitors to link to a Web Site
designated by Licensor. The size, location, content and appearance of
said link will be mutually agreed upon by Licensor and Licensee from
time to time in good faith.
4. No Other Changes: Except as expressly provided in this Supplement, all
other terms of the License Agreement are Remain in full force and
effect. Unless otherwise defined, all capitalized terms in this
Supplement have the same meaning as in he License Agreement
LICENSOR
_________________________________________
Greenfield Consulting Group, LLC
By Xxxxxx Xxxxxxxxxx, President
LICENSEE
_________________________________________
Greenfield Online, Inc.
By Xxxx Xxxxxx, President
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AMENDMENT TO LICENSE AGREEMENT
AMENDMENT TO LICENSE AGREEMENT, dated January 31, 2002, by The
Greenfield Companies, Inc. ("Licensor") and Greenfield Online, Inc.
("Licensee").
WHEREAS, Licensor's predecessor in interest, Greenfield Consulting
Group, LLC, entered into a License Agreement, dated December 22, 1999, in which
it granted Licensee an exclusive license to use the Xxxx XXXXXXXXXX ONLINE,
which License Agreement was amended by a Supplement dated January 27, 2000 (the
"License Agreement"); and
WHEREAS, Licensee is selling the assets and goodwill of its custom
quantitative and qualitative marketing research business and has requested that
Licensor grant to the buyers of that business, Xxxxxx Xxxxxx Sofres Operations,
Inc. and Xxxxxx Xxxxxx Sofres Intersearch Corporation (the "Purchasers"), a
limited license to use the marks "Greenfield Online Custom" and "Greenfield
Online Custom Research" in connection with the purchased business; and
WHEREAS, Licensor is willing to accommodate Licensee's request pursuant
to terms set forth in a separate Term Sheet executed by the parties hereto in
January, 2002, and in a separate Trademark License Agreement from Licensor to
the Purchasers dated substantially even herewith;
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are acknowledged, Licensor and Licensee hereby amend the
License Agreement as follows:
1. The scope of Licensee's usage rights under Section 1 of the License
Agreement is hereby restricted and limited solely to use in connection with
providing online quantitative and qualitative research data collection and
wholesale marketing research services to marketing research and data collection
companies. For avoidance of doubt, and without limiting the foregoing
restriction, it is specifically agreed that custom and syndicated research
services by licensee are excluded from the amended License Agreement.
2. Per Section 3 of the License Agreement, Licensor continues to agree
not to use or authorize anyone else to use the Xxxx, except for the limited
license currently being granted to the Purchasers, which Licensee hereby
acknowledges and agrees does not constitute a violation of any rights of
Licensee.
3. The following is hereby added at the end of Section 9(b) of the
License Agreement: If the Licensee breaches any material provision of this
License Agreement, including but not limited to use of the Xxxx outside the
permitted scope of usage rights, the license granted hereunder shall
automatically terminate unless Licensee cures the breach within thirty (30) days
after receipt of written notice thereof from Licensor specifying the nature of
the breach with reasonable specificity.
4. Except as provided herein, the License Agreement remains unchanged
and in full force and effect. Unless otherwise defined herein, capitalized terms
have the same meaning as in the License Agreement.
ACCEPTED AND AGREED
THE GREENFIELD COMPANIES, INC. GREENFIELD ONLINE, INC.
By:______________________________ By:______________________________
Name:____________________________ Name:____________________________
Title:___________________________ Title:___________________________
Date:____________________________ Date:____________________________
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