EXHIBIT 10.21
[LOGO OF NETSCAPE APPEARS HERE]
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement ("Agreement") is effective as of the 1st day of
July, 1998 ("Effective Date") and is entered into by and between Netscape
Communications Corporation ("Netscape"), a Delaware corporation located at 000
Xxxx Xxxxxxxxxxx Xxxx, Xxxxxxxx Xxxx, Xxxxxxxxxx 00000, and InfoSpace, Inc.
("Licensee"), a Delaware corporation located at 0000 000xx Xxxxxx XX, Xxxxxxx,
XX 00000.
RECITALS
A. Netscape owns and uses the name(s) and/or trademark(s) and/or
registered trademark(s) set forth in Exhibit A (collectively referred
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to as the "Marks"), in connection with its Internet-related software
products, services and technology;
B. Licensee offers directory services on the Internet and performs other
Internet-related services;
C. Licensee desires to use the Marks solely in the titles set forth in
Exhibit A in connection with its Internet directory services in the
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languages and geographic territories set forth opposite such titles in
Exhibit A; and
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D. Netscape is willing to permit such use of the Marks under the terms and
conditions set forth in this Agreement.
NOW THEREFORE, THE PARTIES AGREE AS FOLLOWS:
1. GRANT OF LICENSE.
1.1 GRANT OF LICENSE. Netscape hereby grants to Licensee a
non-exclusive, nontransferable, license to use the Marks only in the titles set
forth in Exhibit A solely in conjunction with Internet directory services in the
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languages and geographic territories set forth in Exhibit A opposite such titles
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(the "Directory Services") which shall, in part, promote Netscape's products and
services, may be jointly developed by Netscape and Licensee, and which services
shall reside on Licensee's web site deploying Licensee's servers. Licensee may
only use the Marks as a collective whole and shall not separately use any
element or elements of the Marks.
1.2 RESERVATION OF RIGHTS. Netscape hereby reserves any and all rights
not expressly and explicitly granted in this Agreement, including Netscape's
right to authorize or license use of the Marks or any other trademarks or names
containing the Marks, to any third party for use in connection with any goods
and services. No right is provided to use the Netscape logo under this
Agreement. Without limiting the rights reserved in the first sentence, Netscape
hereby reserves any and all rights to use, authorize use or license use of the
Marks or any other trademarks or names containing the Marks in any geographic
territory and in any language.
2. LICENSE FEE. For the rights granted to Licensee herein, Licensee shall
pay Netscape, by cashier's check or wire transfer, a one-time non-refundable
license fee of U.S $1.5 Million Dollars at the time of the execution of this
Agreement. The license fee due hereunder is exclusive of any applicable taxes.
Licensee shall be responsible for all applicable national, state and local
taxes, value added or sales taxes, exchange, interest, banking, collection and
other charges and levies and assessments pertaining to payments other than U.S.
taxes
"[*]" = omitted, confidential material, which material has been separately filed
with the Securities and Exchange Commission pursuant to a request for
confidential treatment.
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based on Netscape's net income [*] . If Licensee is required by law to make any
deduction or to withhold from any sum payable to Netscape by Licensee hereunder,
(i) Licensee shall effect such deduction or withholding, remit such amounts to
the appropriate taxing authorities and promptly furnish Netscape with tax
receipts evidencing the payments of such amounts, and (ii) the sum payable by
Licensee upon which the deduction or withholding is based shall be increased to
the extent necessary to ensure that, after such deduction or withholding,
Netscape receives and retains, free from liability for such deduction or
withholding, a net amount equal to the amount Netscape would have received and
retained in the absence of such required deduction or withholding.
3. OWNERSHIP OF MARKS.
3.1 Netscape hereby warrants that Netscape is the owner of the Marks
described herein and that Netscape has the full authority to grant Licensee the
rights described herein.
3.2 Licensee hereby acknowledges that Netscape is the owner of the
Marks, and any trademark applications and/or registrations thereto, agrees that
it will do nothing inconsistent with such ownership and agrees that all use of
the Marks by Licensee shall inure to the benefit of Netscape. Licensee agrees
that nothing in this Agreement shall give Licensee any right, title or interest
in the Marks other than the right to use the Marks in accordance with this
Agreement. Licensee agrees not to register or attempt to register the Marks or
the Title as a trademark, service xxxx, Internet domain name, trade name, or any
similar trademarks or name, with any domestic or foreign governmental or
quasi-governmental authority which would be likely to cause confusion with the
Marks. Licensee may not register or use the Marks or the Title or an
abbreviation of the Marks or the Title as part of an Internet domain name. The
provisions of this paragraph shall survive the expiration or termination of this
Agreement.
4. USE OF THE MARKS; PROTECTION OF THE MARKS.
4.1 PROPER USE. Licensee agrees that all use of the Marks shall only
occur in connection with the Directory Services and shall be in strict
compliance with the terms of this Agreement. Licensee may use the Marks as set
forth in Section 1.1 as well as in connection with the promotion of the
Directory Services . Licensee shall use the Marks in conformance with Netscape's
trademark guidelines ("Trademark Guidelines"), set forth in Exhibit B, which
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Trademark Guidelines may be revised by Netscape from time to time. Licensee
agrees not to use any other trademark or service xxxx in combination with the
Marks other than as described in Section 1.1. Licensee has no right to
sublicense, transfer or assign the use of the Marks or use the Marks for any
other purpose other than the purpose described herein. Licensee may not use the
Xxxx in connection with, or for the benefit of, any third party's products or
services. Licensee further agrees not to use the Marks on or in connection with
any products or services that are or could be deemed by Netscape, in its
reasonable judgment, to be obscene, pornographic, disparaging of Netscape or its
products or services, or otherwise in poor taste, or that are themselves
unlawful or whose purpose is to encourage unlawful activities by others.
4.2 QUALITY STANDARDS. Licensee agrees to maintain a [*] level of
quality of the Directory Services performed in connection with the Marks [*] to
that found in Licensee's existing Web site services. Licensee further agrees to
maintain a level of quality in connection with its use of the Marks [*].
4.3 MONITORING BY NETSCAPE. Licensee acknowledges that Netscape has no
further obligations under this Agreement but that Netscape does have the right
to periodically monitor Licensee's use of the Marks in conjunction with the
Directory Services. Upon request by Netscape, Licensee shall provide Netscape
with representative samples of each such use prior to the time the Marks are
published on the Internet or in press materials or marketing or advertising
materials. If Netscape determines that Licensee is using the Marks improperly,
and/or in connection with Directory Services which do not meet the standards set
forth in Section 4.1 or Section 4.2, Netscape shall notify Licensee, and
Licensee shall remedy the improper use within 2 business days following receipt
of such notice from Netscape. Use of the Marks on goods or services other than
the Directory Services or the promotion of the Navigational Services, in a
manner inconsistent with the Trademark Guidelines,
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* Confidential Treatment Requested.
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or in connection with an infringement of Netscape's or a third party's rights,
including but not limited to rights under trademark, patent, trade secret or
copyright, laws shall constitute material breach of this Agreement. If such
material breach has not been cured within 2 business days following receipt of
notice from Netscape, this Agreement shall be terminated.
4.4 LEGEND; DISCLAIMER. Licensee shall include with any online
publication or publication in print of the Marks a trademark legend indicating
that the Marks are those of Netscape, used under license, and a disclaimer that
Licensee and not Netscape has produced the Directory Services and is responsible
for the content thereof.
4.5 DIRECTORY SERVICES. If Netscape reasonably determines that the
Directory Services contain or present any material that constitutes an
infringement of Netscape's trademark, patents, copyrights or trade secrets,
Licensee's right to use the Marks pursuant to the grant described in Section 1.1
shall, upon written notice from Netscape of such determination, be suspended
until Licensee has revised, removed or removed links to such material to
Netscape's reasonable satisfaction. If such revision or removal of, or removal
of links to, such material to Netscape's reasonable satisfaction has not
occurred within 30 days of the notice from Netscape described in the preceding
sentence, Netscape may immediately terminate the license grant described in
Section 1.1. If Netscape reasonably determines that the Directory Services
contains or presents any material that could reasonably constitute an
infringement of a third party's copyright, trademark, patents or trade secrets,
Licensee's rights to use the Marks pursuant to the grant described in Section
1.1 shall, upon written notice from Netscape of such determination, be suspended
until Licensee has revised or removed that material to Netscape's reasonable
satisfaction. If Licensee has not revised to Netscape's reasonable satisfaction
that material or presentation within 7 business days of the notice from Netscape
described in the preceding sentence, Netscape may immediately terminate this
Agreement.
5. CONFIDENTIAL INFORMATION AND DISCLOSURE. Unless required by law, and
except to assert its rights hereunder or for disclosures to its own employees,
attorney's, financial advisors on a "need to know" basis, both parties agrees
not to disclose the terms of this Agreement or matters relating thereto without
the prior written consent of the other party which consent shall not be
unreasonably withheld.
6. INDEMNIFICATION
6.1 INDEMNIFICATION BY LICENSEE. Licensee agrees to indemnify Netscape
and to hold Netscape harmless from any and all liability, loss, damages, claims
or causes of action, including reasonable legal fees and expenses that may be
incurred by Netscape, arising out of Licensee's use of the Marks and content on
Licensee's web sites linked to or presented in conjunction with the Marks,
except for liability, loss, damages, claims or causes of action arising out of
third party claims that Licensee's use of the Marks infringe that third party's
valid and subsisting U.S. trademark registration in the Marks. Netscape shall
provide Licensee with prompt written notice of any claim for which
indemnification is sought and cooperate fully with and allow Licensee to control
the defense and settlement of such claim. Netscape may not settle any such claim
without Licensee's prior written consent, which consent shall not be
unreasonably withheld. Netscape shall have the right, at its own expense, to
participate in the defense of any such claim.
6.2. Netscape shall defend or settle, at its option, any action brought
against Licensee only to the extent that it is based on a claim that the Marks
Licensee is licensed to use hereunder directly infringes any United States
trademark, provided that the Xxxxxx are used in accordance with the terms of
this Agreement. Netscape will pay resulting costs, damages and legal fees
finally awarded against Licensee in such action which are attributable to such
claim provided that Licensee (a) promptly (within twenty (20) days) notifies
Netscape in writing of any such claim and Netscape has sole control of the
defense and all related settlement negotiations, and (b) cooperates with
Netscape, at Netscape's expense, in defending or settling such claim.
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7. TERMINATION
7.1 TERM AND TERMINATION. This Agreement and the term of the license
granted herein shall be perpetual unless terminated as provided in Section 4.3,
Section 4.5 or this Section 7.1. Netscape shall have the right to terminate this
Agreement upon the occurrence of one or more of the following: (a) any material
breach by Licensee of its obligations under this Agreement which remains uncured
for 30 days or more following written notice of such breach from Netscape, (b)
use of the Marks by Licensee in a manner which is disparaging of Netscape or its
products and services and which remains uncured for 2 business days following
notice from Netscape, (c) Licensee decides not to develop and launch the
Directory Services, or (d) the Directory Services are discontinued.
7.2 EFFECT OF TERMINATION. Upon termination of the Agreement, Licensee
agrees it shall immediately cease any and all use of the Marks.
8. GENERAL
8.1 GOVERNING LAW. This Agreement shall be subject to and governed in
all respects by the statutes and laws of the State of California without regard
to the conflicts of laws principles thereof. The Superior Court of Santa Xxxxx
County and/or the United States District Court for the Northern District of
California shall have exclusive jurisdiction and venue over all controversies in
connection herewith, and each party hereby consents to such exclusive and
personal jurisdiction and venue.
8.2 ENTIRE AGREEMENT. This Agreement, including Exhibit A and Exhibit B
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attached hereto, constitutes the entire Agreement and understanding between the
parties and integrates all prior discussions between them related to its subject
matter. No modification of any of the terms of this Agreement shall be valid
unless in writing and signed by an authorized representative of each party.
8.3 ASSIGNMENT. Licensee may not assign any of its rights or delegate
any of its duties under this Agreement, or otherwise transfer this Agreement (by
merger, operation of law or otherwise) without the prior written consent of
Netscape. Any attempted assignment, delegation or transfer in derogation hereof
shall be null and void.
8.4 NOTICES. All notices required or permitted hereunder shall be given
in writing addressed to the respective parties as set forth below and shall
either be (a) personally delivered or (b) transmitted by nationally-recognized
private express courier, and shall be deemed to have been given on the date of
receipt if delivered personally, or 2 days after deposit with such express
courier. Either party may change its address for purposes hereof by written
notice to the other in accordance with the provisions of this Subsection. The
addresses for the parties are as follows:
LICENSEE: NETSCAPE:
Infospace, Inc. Netscape Communications Corporation
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8424 154/th/ Avenue NE 000 Xxxx Xxxxxxxxxxx Xxxx, XX-000
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Xxxxxxx, XX 00000 Xxxxxxxx Xxxx, XX 00000
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Fax: (000) 000-0000
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Attn: Xxxxxx Xxxx Attn: General Counsel
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8.5 FORCE MAJEURE. Neither party will be responsible for any failure to
perform its obligations under this Agreement due to causes beyond its reasonable
control, including but not limited to acts of God, war, riot, embargoes, acts of
civil or military authorities, fire, floods or accidents.
8.6 WAIVER. Any waiver, either expressed or implied, by either party of
any default by the other in the observance and performance of any of the
conditions, covenants of duties set forth herein shall not constitute or be
construed as a waiver of any subsequent or other default.
8.7 HEADINGS. The headings to the Sections and Subsections of this
Agreement are included merely for convenience of reference and shall not affect
the meaning of the language included therein.
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8.8 INDEPENDENT CONTRACTORS. The parties acknowledge and agree that
they are dealing with each other hereunder as independent contractors. Nothing
contained in the Agreement shall be interpreted as constituting either party the
joint venture or partner of the other party or as conferring upon either party
the power of authority to bind the other party in any transaction with third
parties.
8.9 SURVIVAL. The provisions of Section 1.2 (Reservation of Rights), 3
(Ownership of Marks), 4.4 (Legend; Disclaimer), 5 (Confidential Information and
Disclosure), 6 (Indemnification by Licensee), 7.2 (Effect of Termination) and 8
(General) will survive any termination of this Agreement.
8.10 EQUITABLE RELIEF. Licensee recognizes and acknowledges that a
breach by Licensee of this Agreement will cause Netscape irreparable damage
which cannot be readily remedied in monetary damages in an action at law, and
may, in addition thereto, constitute an infringement of the Marks. In the event
of any default or breach by Licensee that could result in irreparable harm to
Netscape or cause some loss or dilution of Netscape's goodwill, reputation, or
rights in the Marks, Netscape shall be entitled to immediate injunctive relief
to prevent such irreparable harm, loss, or dilution in addition to any other
remedies available.
8.11 SEVERABILITY. Except as otherwise set forth in this Agreement, the
provisions of this Agreement are severable, and if any one or more such
provisions shall be determined to be invalid, illegal or unenforceable, in whole
or in part, the validity, legality and enforceability of any of the remaining
provisions or portions thereof shall not in any way be affected thereby and
shall nevertheless be binding between the parties hereto. Any such invalid,
illegal or unenforceable provision or portion thereof shall be changed and
interpreted so as to best accomplish the objectives of such provision or portion
thereof within the limits of applicable law.
8.12 ATTORNEY'S FEES. In the event of any action, suit, or proceeding
brought by either party to enforce the terms of this Agreement, the prevailing
party shall be entitled to receive its costs, expert witness fees, and
reasonable attorneys fees and expenses, including costs and fees on appeal.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the Effective
Date.
INFOSPACE, INC. NETSCAPE COMMUNICATIONS CORPORATION
By: /s/ Xxxxxx Xxxx By: /s/ Xxxxxx Xxxxxx
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Name: Xxxxxx Xxxx Name: Xxxxxx X. Xxxxxx
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Title: President & CEO Title: Senior Vice President, Finance &
--------------- Corporate Controller
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Date: 07/02/98 Date: 07/01/98
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Exhibit A: Marks; Titles; Target Language and Geographic Combinations
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Exhibit B: Trademark Guidelines
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REVIEWED BY
NETSCAPE LEGAL
Initial [illegible]
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EXHIBIT A
MARKS; TITLES; TARGET LANGUAGE AND GEOGRAPHIC COMBINATIONS
Marks: Netscape
Title Target Language Geographic Territory
----- --------------- --------------------
NETSCAPE YELLOW PAGES BY U.S. ENGLISH U.S.A.
INFOSPACE
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EXHIBIT B
TRADEMARK USE GUIDELINES
(The Trademark Usage Guidelines attached hereto are as of June 30, 1998 and may
be revised from time to time) The current Netscape's Trademark Guidelines are
published at the following URL:
xxxx://xxxx.xxxxxxxx.xxx/xxxx/xxxxxxxxxx.xxxx#xxxxxxxxxx
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