TRADE-XXXX and COPYRIGHT LICENSE (NORTH AMERICA)
THIS AGREEMENT made the 8 day of August, 2000.
BETWEEN:
Merlinesque, a company incorporated pursuant the laws of the State of Nevada,
USA, having its head office at 00 Xxxxxx Xxxx, Xxxxxx Xxxxxxx Xxxxxxxx X0X 0X0
(herein the "Licensor")
OF THE FIRST PART
AND:
Merlin Software Technologies Inc. a company incorporated pursuant to the law of
the Province of British Columbia, having its head office at 0000 Xxxxxxx Xxxxxx,
Xxxxxxx, Xxxxxxx Xxxxxxxx, X0X 0X0
(herein the "Licensee")
OF THE SECOND PART
WITNESSES THAT WHEREAS:
A. By a trade-xxxx assignment agreement dated May 5, 2000, the Licensor
became the owner of the trade-marks (the "Marks") identified on Schedule "A"
attached, which Marks are the, subject of applications for registration in the
United States, as set forth on the said Schedule "A" ("the Applications");
B. The Licensor is the owner of all the copyrights in and to the
Penguin Roman Design, the Penguin Press Design and the Penguin Wizard Design
copies of which are identified collectively in Schedule "B" attached
(collectively "the Licenced Designs");
C. The Licensee wishes to acquire a license to use
(i) the Marks and any resulting trade-xxxx registrations in the United
States and Canada;
(ii) the copyrights to the Designs;
NOW THEREFORE, in consideration of the payment of $1.00 (one dollar) by the
Licensee to the Licensor and other good and valuable. consideration, the above
parties agree as follows:
1. GRANT OF LICENSE
1.1 The Licensor grants an exclusive license to the Licensee for an
annual fee not to exceed $1.00 payable by the Licensee to the Licensor. The
Licensor grants this licence from August 8, 2000 for an indefinite term (the
"Term"), but subject to termination as provided for herein, to:
a. use the Marks in Canada and the United States, in relation to the
Licensee's business of developing and publishing computer software programs and
hardware, in association with the wares and services outlined in Schedule "A" as
specified in the Applications (the "Wares and Services"), in accordance with
such standards, specifications and quality of all products or services sold or
delivered in association with the Marks (the "Standards") which the Licensor may
direct from time to time. The license granted will also include the rights of
the Licensor arising under the Applications. The Licensee acknowledges that the
Licensor has direct control over the character and quality of the Wares and
Services by virtue of the license granted hereunder; and
b. reproduce the Licenced Designs on the wares and services and to offer for
sale and sell such wares and services relating to the promotion, developing and
publishing of computer software programs and hardware.
1.2 If the Licensee wishes to use or reproduce the Marks and the
Licensed Designs in association with the sale of promotional wares such as
stuffed dolls, coffee cups, pads or mats, key rings, caps, hats, golf balls and
other similar wares (collectively "the Promotional Wares"), it may purchase the
Promotional Wares if available from the Licensor at fair market price to be
agreed upon between the Licensor and Licensee at the time of purchase and use
the Marks on the Promotions Wares pursuant to the terms of this agreement.
1.3 If the Licensor creates or produces any other penguin designs,
whether as a trademark or as a artistic work, the Licensor hereby grants the
Licencee a first right of refusal to use or reproduce any such future trade-xxxx
designs or artistic designs pursuant to the same terms and conditions of this
agreement.
1.4 The Licensee agrees that during the Term of this license it will:
(a) maintain the Standards as advised by the Licensor of them and will make
no changes to them without the express approval of the Licensor;
(b) comply with all governmental regulations with respect to its use of the
Marks in association with the Wares and Services;
(c) at the Licensor's request, provide the Licensor with samples of how the
Marks are used in association with the Wares and Services, and permit the
Licensor to inspect all aspects of the business of the Licensor, in order to
ensure that the Standards are being met;
(d) the Licensee agrees that the manner of use and display of the Marks
shall conform to the standards set by, and be under the control of the Licensor;
(e) the Licensee shall comply with all applicable laws relating to
advertising and promotions in connection with the Marks;
(f) the Licensee shall reasonably cooperate with Licensor at Licensor's
expense in the procurement and maintenance of any registration or recordal
relating to the Applications, including but not limited to the provision of
information, specimens of use and signatures as Licensor may reasonably require.
1.5 The Licensee will, upon request by the Licensor, provide public
notice in such manner as reasonably required by the Licensor or by applicable
laws and shall include all notices, markings and legends in order to give
appropriate notice from time to time that the Marks are owned by the Licensor
and that the use of the Marks by the Licensee is a licensed use.
1.6 The failure of the Licensee to maintain the Standards will, upon
reasonable opportunity and notice from the Licensor to cure, be grounds for
immediate termination by the Licensor of this license, without further notice to
the Licensee.
1.7 The Licensee acknowledges and agrees that:
(a) the Marks and all goodwill, c associated therewith, and all Applications
and registrations thereof, are owned solely by Licensor, and Licensee shall
never directly, or indirectly contest such ownership;
(b) all use of the Marks shall inure solely to the benefit of and be on
behalf of Licensor;
(c) the Marks and all Applications and registrations thereof are valid, and
Licensee shall never directly or indirectly contest their validity;
(d) the License granted herein is not intended to be and shall not be
construed as an assignment; and, further, that nothing herein confers on
Licensee any right, title or interest in the Licensed Marks other than the
limited right to use same in accordance with this Agreement;
(e) the Licensee shall not do or cause to be done, or omit to do or be done,
anything impairing or intending to impair any of the rights of Licensor in the
Marks;
(f) the Licensee's failure to cease use of the Licensed Marks upon
termination of this Agreement unless otherwise permitted herein shall constitute
infringement and dilution of the Licensed Marks and entitle Licensor, without
limitation, to equitable relief by way of temporary restraining order and/or
preliminary or permanent injunction;
(g) the Licensee's foregoing acknowledgments, covenants and admissions shall
survive the termination of this Agreement for any reason; and,
(h) The Licensee acknowledges that the Licensor owns all copyrights and
moral rights in and to the Licenced Designs and covenants and agrees not to
attack or call into questions the Licensors right and title to the ownership of
the copyright in and to the Licenced Designs.
2. ENFORCEMENT
2.1 The Licensee will notify the Licensor of any infringement of the
Marks or the Licenced Designs, and will assist the Licensor in every way to
enforce any rights under the Applications and any resulting registrations of the
Marks in any infringement action brought by the Licensor.
2.2 The Licensee will not call upon the Licensor to bring proceedings
against third party infringers of the Marks or the Licenced Designs and will not
initiate such proceedings itself without the prior written consent of the
Licensor, and hereby waives any such rights which the Licensee may have pursuant
to Section 50(3) of the Trade-Marks Art (Canada), or any successor legislation.
3. TERMINATION
3.1 In addition to the provisions set forth in Clause 1.6, the Licensor
may, at any time and without notice to the Licensee, terminate this license in
the event of any of the following:
(a) subject to Clause 1.6 above, any material default or breach by the
Licensee of any of its covenants, obligations and agreements;
(b) if the Licensor, in good faith, reasonably believes that the Licensee
is, or is about to become, insolvent;
(c) if the Licensee makes an arrangement with its creditors or seeks
protection from its creditors under any bankruptcy, insolvency or other similar
legislation;
(d) if a receiver or receiver manager is appointed over all or substantially
all of the assets of the Licensee; or
(e) if any regulatory authority governing a party requires such party to
discontinue using the Marks or cease doing business.
3.2 The right of termination provided for in Clause 3.1 will be in
addition to, and not in substitution of, any other right or remedy of the
Licensor in any of the events set out in Clause 3.1.
3.3 Notwithstanding anything contained in this Agreement, the Licensor
may terminate this Licence by giving to the Licensee sixty days prior written
notice.
4. GENERAL
4.1 This Agreement will be governed by and construed in accordance with
the laws of British Columbia.
4.2 The Licensee will not be entitled to assign or sublicence any of
its rights, covenants, obligations or agreements to any other party without the
prior written consent of the Licensor.
4.3 The parties will execute and deliver all such further documents, do
or cause to be done all such further acts and things, and give all such further
assurances as are necessary to give full effect to the provisions and intent of
this Agreement.
IN WITNESS WHEREOF the parties have signed this Agreement as of the date first
above written.
Merlinesque
Per: /s/ signed
-----------
Authorized Signatory
Merlin Software Technologies Inc.
Per: /s/ signed
-----------
Authorized Signatory
SCHEDULE A
1. Application
Country: United States
Application No.: 75/755,745
Application Date: September 10, 1999
Applicant: Merlin Software Technologies Inc.
Trade-xxxx: PENGUIN ROMAN Design
Wares: compute software for desktop, client and server
applications for computer systems and computer peripherals including Internet
applications; soft and hard, plastic and other materials, mechanical and
non-mechanical, computerized and non-computerized childrens toys and figurines
Services: marketing, manufacturing and selling of children's toys
and games, computer hardware and software products and services
2. Application
Country: United States
Application No.: 75/785,448
Application Date: September 22, 1999
Applicant: Merlin Software Technologies Inc.
Trade-xxxx: PENGUIN PRESS Design
Wares: compute software for desktop, client and server
applications for computer systems and computer peripherals including Internet
applications; soft and plastic, mechanical and non-mechanical, computerized
and non-computerized childrens toys and figurines
Services: marketing, manufacturing and selling of children's toys and games,
computer software and hardware services
SCHEDULE B
