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EXHIBIT 10.28
[GRAPHIC OMITTED]
Portions of this Exhibit have been omitted pursuant to a request for
confidential treatment. The omitted portions, marked by [****], have been
separately filed with the Commission.
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement ("Agreement") is effective as of
the 28th day of September 1997 ("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 N2K
Inc. ("Licensee"), a Pennsylvania corporation located at 00
Xxxxx Xxxxxx, 00xx Xxxxx, Xxx Xxxx, Xxx Xxxx 00000.
RECITALS
A. Netscape owns and uses the name and/or trademark NETSCAPE and the
registered trademarks therefor as listed on Exhibit A attached hereto
(collectively referred to as the "Marks"), in connection with its
Internet-related software products, services and technology;
B. Licensee produces Web sites and performs other Internet-related
services;
C. Licensee desires to use the trademark NETSCAPE solely in the titles set
forth in Exhibit A in connection with Internet music distribution and
content aggregation services in the languages and geographic territories
set forth opposite such titles in Exhibit A; and
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 [****],
nontransferable, license to use the Marks in the titles set forth in Exhibit A
[****] aggregation services in the languages and geographic territories set
forth in Exhibit A opposite such titles (the "Music Content Aggregation
Services") which shall, in part, promote Netscape's products and services, will
be jointly developed by Netscape and Licensee, and which services shall reside
on Licensee's web site located at "xxx.xxxxxxxxx.xxx" deploying Licensee's
servers and be located one click away from Netscape's web site. Licensee may
only use the Marks as a collective whole and shall not separately use any
element or elements of the Marks.
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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 NETSCAPE, to any third party for use in connection with any goods and
services, including, but not limited to, [****]. Without limiting the rights
reserved in the preceding 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 NETSCAPE in any geographic territory listed in Exhibit A in a
language or language(s) different from the language listed next to such
geographic territory in Exhibit A.
2. LICENSE FEE. For the rights granted to Licensee herein, Licensee shall
pay Netscape a one-time [****] license fee of Four Million Dollars ($4,000,000),
One Million Dollars ($1,000,000) of which license fee shall be due at the time
of the execution of this Agreement, Two Million Dollars ($2,000,000) which shall
be payable by the first to occur of December 1, 1997 or Licensee's initial
public stock offering, and One Million Dollars ($1,000,000) which shall be paid
within six (6) months of the Effective Date. 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 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, 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.
3. AUTHORITY; OWNERSHIP OF MARKS.
3.1. AUTHORITY. Netscape hereby warrants that Netscape is the owner
of the Marks described herein and that Netscape has the full authority to
grant to Licensee the rights described herein.
3.2. OWNERSHIP. 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 Logo 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 an abbreviation of the
Marks 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.
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4.1 PROPER USE. Licensee agrees that all use of the Marks shall only occur
in connection with the Music Content Aggregation 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 Music
Content Aggregation Services. Licensee shall use the Marks in conformance with
Netscape's trademark guidelines ("Trademark Guidelines"), set forth in Exhibit
B, which 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 products, 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 consistent level of
quality of the Music Content Aggregation Services performed in connection with
the Marks substantially equal 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 that is consistent with general industry standards.
4.3 MONITORING BY NETSCAPE. Licensee acknowledges that Netscape has no
further obligations under this Agreement other than the right to periodically
monitor Licensee's use of the Marks in conjunction with the Music Content
Aggregation 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 Music Content Aggregation 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 [****] business
days following receipt of such notice from Netscape. Use of the Marks on goods
or services other than the Music Content Aggregation Services or the promotion
of the Music Content Aggregation Services, or in a manner inconsistent with the
Trademark Guidelines, shall constitute material breach of this Agreement. If
such material breach has not been cured within three (3) 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 Music Content Aggregation Services and is
responsible for the content thereof.
4.5 MUSIC CONTENT AGGREGATION SERVICES. If Netscape reasonably determines
that the Music Content Aggregation Services contain or present any material that
constitutes an infringement of Netscape's trademark or copyrights, Licensee's
right to use the Marks pursuant to the grant described in Section 1.1 shall,
upon written notice
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from Netscape of such determination and a [****] period to cure, 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 [****] of the notice from Netscape described in the preceding
sentence, Netscape may immediately terminate the license grant described in
Section 1.1. If Netscape determines that the Music Content Aggregation Services
contain or present any material that could reasonably constitute an infringement
of a third party's rights, Netscape and N2K shall mutually agree on a proper
course of action.
4.6 LICENSEE WEB SITES. If Netscape, in its sole discretion, at any time
determines that material directly linked to the Music Content Aggregation
Services on Licensee's web sites or sites operated by Licensee on behalf of
other parties contain any material or present any material in a manner that
Netscape reasonably deems an improper tarnishment of Netscape, the Netscape
products or the Marks, or unlawful in any country or territory, Netscape may
immediately terminate this Agreement if Licensee has not revised to Netscape's
reasonable satisfaction that material or presentation within [****] of written
notice from Netscape. If Netscape determines that the Music Content Aggregation
Services contain or present any material that could reasonably constitute an
infringement of a third party's rights, [****].
5. CONFIDENTIAL INFORMATION AND DISCLOSURE. Unless required by law, and except
to assert its rights hereunder or for disclosures to its own employees on a
"need to know" basis, Licensee agrees not to disclose the terms of this
Agreement or matters relating thereto without the prior written consent of
Netscape, which consent shall not be unreasonably withheld.
6. INDEMNIFICATION
6.1. LICENSEE INDEMNIFICATION. 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 directly 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 (i) that Licensee's use of the Marks infringe that
third party's valid and subsisting U.S. trademark registration in the Marks or
(ii) in respect of any act or omission of Netscape giving rise to liability.
Netscape shall provide Licensee with prompt written notice of any claim for
which indemnification is sought and cooperating fully with and allowing 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 INDEMNIFICATION. 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
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trademark, provided the Marks 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
7. TERMINATION
7.1 TERM AND TERMINATION. This Agreement and the term of the license
granted herein [****] 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 thirty (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 two (2) days following
notice from Netscape, (c) Licensee decides not to [****] or (d) [****].
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 New York without regard to the
conflicts of laws principles thereof. For any dispute brought by N2K that arises
under or relates to this Agreement, 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. For any dispute brought by Netscape that arises under or
relates to this Agreement, the Supreme Court of New York County and/or the
United States District Court for the Southern District of New York 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
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. Subject to the terms below, [****] in connection with any
merger, consolidation, sale of all or substantially all of such party's assets
or any other transaction in which [****] of such party's voting securities are
transferred (such events being collectively referred to as a "Change in
Control"), provided that: (i) in the case of a Change of Control of N2K, the
entity managing the Music Content
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Aggregation Services subsequent to such Change in Control [****]. With respect
to all Change in Control transactions, [****] and Netscape may object to such
assignment pursuant to a Change in Control if [****] Netscape reasonably
believes that the Change in Control will have a material adverse effect upon the
Service, [****] If Netscape objects to the proposed assignment and,
notwithstanding Netscape's objections, N2K proceeds with the Change of Control
event, Netscape shall have the right to terminate this Agreement [****]. Any
attempted assignment, delegation or transfer in derogation hereof shall be null
and void, and Netscape shall be entitled to terminate this Agreement as its sole
remedy.
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 two (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:
N2K Inc. Netscape Communications
Corporation
00 Xxxxx Xxxxxx, 00xx Xxxxx 000 Xxxx Xxxxxxxxxxx Xxxx
Xxx Xxxx, Xxx Xxxx 00000 Xxxxxxxx Xxxx, XX 00000
Fax: (000) 000-0000 Fax: (000) 000-0000
Attn: X.X. Xxxxx, Xx. Vice President Attn: General Counsel
With a copy to:
Xxxxxx X. Xxxxxx, Esq.
000 Xxxx 00xx Xxxxxx, Xxxxx 0000
Xxx Xxxx, Xxx Xxxx 00000
Fax: (000) 000-0000
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 nature, 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.
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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.
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.
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the
Effective Date.
LICENSEE NETSCAPE COMMUNICATIONS CORPORATION
N2K INC.
By: /s/ Xxxxxxxx X. Xxxxxxx By: /s/ Xxxxxxx Xxxxxx
--------------------------- -----------------------------
Name: Xxxxxxxx X. Xxxxxxx Name: Xxxxxxx Xxxxxx
--------------------------- -----------------------------
Title: Vice Chairman Title: Executive Vice President of
--------------------------- Sales and Marketing
-----------------------------
Date: 9/27/97 Date: 9/27/97
--------------------------- -----------------------------
Exhibit A: Titles; Target Language and Geographic Combinations
Exhibit B: Trademark Guidelines
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EXHIBIT A
TITLES; TARGET LANGUAGE AND GEOGRAPHIC COMBINATIONS
Title Target Language Geographic Territory
----- --------------- --------------------
Netscape [****] [****] [****]
