EXHIBIT Z
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Part I
COLLABORATION AGREEMENT
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This COLLABORATION AGREEMENT (this "AGREEMENT") is entered into as of
December ____, 1999 (the "EFFECTIVE DATE") by and among Xxxx Xxxxx' idealab!, a
California corporation ("idealab!"), Find/SVP, Inc., a New York corporation
("FIND/SVP"), and xxxx.xxx, Inc., a newly formed Delaware corporation wholly
owned by idealab! ("Xxxx.xxx").
WHEREAS, Find/SVP is the owner of the trademarks and service marks
"xxxx.xxx" and "find" (collectively, the "Marks") as set forth in Schedule A to
a Trademark License and Domain Name Assignment Agreement (the "Trademark and
Domain Name Agreement") in the form attached hereto as Exhibit A and the domain
name xxx.xxxx.xxx (the "Domain Name"); and
WHEREAS, Xxxx.xxx wishes to acquire (a) a perpetual license (the
"License") to use (i) the Marks worldwide, and (ii) the name xxxx.xxx as a
corporate name (the formation of Xxxx.xxx under such name having been
accomplished in contemplation of this Agreement), and (b) the Domain Name, for
use in connection with a business consisting of a new "portal" internet site
containing a search engine, general information and editorial content, directed
primarily to consumers; and
WHEREAS, Find/SVP is amenable to granting to Xxxx.xxx the License and
assigning to Xxxx.xxx the Domain Name in exchange for a license fee of $800,000,
a royalty, and an equity interest in the endeavor;
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties agree as follows:
1. GRANT OF LICENSE AND ASSIGNMENT OF DOMAIN NAME; RATIFICATION OF
CORPORATE NAME.
(a) Concurrently with entering into, and subject to the terms and
conditions of, this Agreement, Find/SVP is granting to Xxxx.xxx the License and
assigning to Xxxx.xxx the Domain Name by entering into the Trademark License and
Domain Name Agreement.
(b) Find/SVP hereby consents to and ratifies the use by Xxxx.xxx of
the xxxx.xxx name for the period of time that pre-dates the Trademark and Domain
Name Agreement.
2. CONSIDERATION FOR GRANT OF LICENSE AND ASSIGNMENT OF DOMAIN NAME.
As consideration for the grant of the License and the assignment of
the Domain Name, (a) concurrently with the execution and delivery of this
Agreement and the Trademark and Domain Name Agreement, (i) Xxxx.xxx shall pay to
Find/SVP, by wire transfer or bank check, the sum of $800,000 pursuant to the
Trademark and Domain Name Agreement, and (ii) idealab! shall issue and deliver
to Find/SVP 5,000 shares of idealab!'s Series D Preferred Stock, no par value,
(such shares of preferred stock or, upon conversion of such shares, the shares
of common stock into which such shares of preferred stock are convertible, the
"IDEALAB! SHARES"),
and (b) Find/SVP shall receive a royalty as set forth in the Trademark and
Domain Name Agreement.
3. EXCHANGE OPTION.
(a) Prior to a Xxxx.xxx Qualified IPO (as defined below), Find/SVP
shall be entitled to exchange the idealab! Shares for 500,000 shares of Xxxx.xxx
common stock, par value $.001 per share, (the "Xxxx.xxx Shares"); PROVIDED,
HOWEVER, that (i) Find/SVP must exercise its option to exchange (the "EXCHANGE
OPTION") the idealab! Shares for Xxxx.xxx Shares no later than 5 days prior to
the effective date of the Xxxx.xxx Qualified IPO by delivering to idealab! and
Xxxx.xxx written notice (the "EXCHANGE NOTICE") of Find/SVP's intention to
exercise its Exchange Option along with original certificates representing the
idealab! Shares, (ii) Find/SVP must surrender all 5,000 of the idealab! Shares
to idealab!, and (iii) Find/SVP's exercise of the Exchange Option shall be
irrevocable. Xxxx.xxx shall give Find/SVP 20 days' advance written notice of the
effective date of a Xxxx.xxx Qualified IPO and shall deliver to Find/SVP the
Xxxx.xxx Shares within 10 business days following the receipt of the Exchange
Notice and the return of all of the idealab! Shares. A "Xxxx.xxx Qualified IPO"
shall mean an initial public offering of common stock of Xxxx.xxx that results
in its shares of common stock being quoted on the NASDAQ Stock Market or listed
on a national securities exchange.
(b) In the event Find/SVP exercises the Exchange Option, at the
request of Xxxx.xxx, Find/SVP shall deliver to Xxxx.xxx such representations,
warranties and covenants regarding the Xxxx.xxx Shares as are consistent with
the covenants herein contained regarding the idealab! Shares.
(c) In connection with the Exchange Option, each of idealab! and
Xxxx.xxx covenants and agrees that (i), except for 9,500,000 shares of Xxxx.xxx
common stock, par value $.001 per share ("Xxxx.xxx Common Stock"), initially
issued to idealab! in connection with the formation of Xxxx.xxx, no further
equity in Xxxx.xxx is issued to idealab! prior to the consummation of one round
of financing on an arms length basis from third parties (which may include
idealab! Capital Partners) in an amount not less than $500,000 and (ii) with
respect to any of the next two rounds of financing for Xxxx.xxx following the
arm's length round of financing referred to immediately above in Section 3(c)(i)
hereof in which idealab! participates as an investor, (A) in the event Find/SVP
has exercised the Exchange Option, Xxxx.xxx will exercise its commercially
reasonable efforts to allow Find/SVP to participate in such round of financing,
on the same terms and conditions offered to the other similarly situated
investors participating in such round of financing, to the extent necessary for
Find/SVP to maintain its percentage ownership interest of Xxxx.xxx, and (B) in
the event Find/SVP has not exercised the Exchange Option, Xxxx.xxx shall
consider, in its sole discretion, allowing Find/SVP to participate as an
investor, on the same terms and conditions offered to other similarly situated
investors in such Subsequent Financing, to the extent necessary to maintain what
would then be Find/SVP's current percentage of ownership in Xxxx.xxx if the
Exchange Option was or were to be exercised.
4. Repurchase Option.
After the third anniversary of the date hereof, Find/SVP shall have
the option (the "REPURCHASE OPTION"), exercisable in Find/SVP's sole discretion,
to sell all, but no less than all,
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of the idealab! Shares or the Xxxx.xxx Shares, as the case may be, to idealab!,
Xxxx.xxx or, at the option of idealab! or Xxxx.xxx, any of their respective
designees, for a purchase price of $1,500,000; provided, however that if
Find/SVP fails to deliver written notice (the "REPURCHASE NOTICE") of its desire
to exercise the Repurchase Option to idealab! or Xxxx.xxx within 30 days
following the third anniversary of the date hereof, the Repurchase Option shall
terminate and be of no further force or effect. If Find/SVP exercises the
Repurchase Option, and idealab! or Xxxx.xxx, or any of their respective
designees, desires to purchase the idealab! Shares or the Xxxx.xxx Shares, as
the case may be, (i) the consummation of the sale of the idealab! Shares or the
Xxxx.xxx Shares, as the case may be, shall take place on the date and in the
manner mutually agreed upon by the parties, (ii) the purchaser of the idealab!
Shares or the Xxxx.xxx Shares, as the case may be, shall be entitled to receive
customary representations regarding ownership and the absence of encumbrances
with respect thereto and such representations regarding an exemption from
applicable securities law registration and qualification provisions as may be
appropriate under the circumstances, and (iii) the purchaser of the idealab!
Shares or the Xxxx.xxx Shares, as the case may be, may require that Find/SVP's
signature be guaranteed. If Find/SVP exercises the Repurchase Option in
compliance with this Section 4, and none of idealab!, Xxxx.xxx, or any of their
respective designees desires to purchase the idealab! Shares or the Xxxx.xxx
Shares, as the case may be, Find/SVP shall have the right to terminate the
Trademark and Domain Name Agreement immediately, in which case Xxxx.xxx shall
promptly reassign to Find/SVP the xxxx.xxx Domain Name (as defined in the
Trademark and Domain Name Agreement) and change its corporate name to a name
that does not include "xxxx.xxx" within 90 days after receiving such notice;
provided that Xxxx.xxx shall be permitted a reasonable period of time within
which to deplete any existing stocks and fulfill all outstanding marketing
commitments involving its name. Notwithstanding the foregoing, (i) the
Repurchase Option shall terminate with respect to the idealab! Shares after an
idealab! Qualified IPO (as defined below) once idealab! common stock, no par
value ("idealab! Common Stock"), trades at an average closing bid price of
$60.00 (as adjusted to give effect to stock splits, stock dividends and stock
reclassifications) or more per share for 20 consecutive trading days, and, with
respect to the Xxxx.xxx Shares, after a Xxxx.xxx Qualified IPO once the Xxxx.xxx
Common Stock trades at an average closing bid price of $6.00 (as adjusted to
give effect to stock splits, stock dividends and stock reclassifications) or
more per share for 20 consecutive trading days; and (ii) Find/SVP shall have the
right to cancel its Repurchase Option at any time prior to the third anniversary
hereof. An "idealab! Qualified IPO" shall mean an initial public offering of
common stock of idealab! that results in its shares of common stock being quoted
on the NASDAQ Stock Market or listed on a national securities exchange.
5. REPRESENTATIONS AND WARRANTIES OF IDEALAB! AND XXXX.XXX.
idealab! and Xxxx.xxx jointly and severally represent and warrant to
Find/SVP as follows:
(a) ORGANIZATION AND GOOD STANDING. Each of idealab! and Xxxx.xxx is
a corporation duly organized and validly existing under, and by virtue of, the
laws of their state of incorporation and each is in good standing under such
laws. Each of idealab! and Xxxx.xxx has the requisite corporate power and
authority to own and operate its properties and assets and to carry on its
business as presently conducted and as proposed to be conducted. Each of
idealab! and Xxxx.xxx is duly qualified to transact business and is in good
standing in each jurisdiction in
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which the failure so to qualify would have a material adverse effect on its
business, assets, financial condition, results of operations or properties (a
"MATERIAL ADVERSE EFFECT").
(b) CORPORATE POWER. Each of idealab! and Xxxx.xxx has all requisite
legal and corporate power and authority to execute and deliver this Agreement
and to carry out and perform its obligations under the terms of this Agreement,
including, in the case of idealab!, the sale and issuance of the idealab!
Shares, and, in the case of Xxxx.xxx, the issuance of the Xxxx.xxx Shares.
(c) CAPITALIZATION.
(i) The authorized capital stock of idealab! consists of
1,100,000 shares of idealab! Common Stock and 38,000,000 shares of preferred
stock, no par value, of which 3,450,000 shares are designated "SERIES A
PREFERRED STOCK," 6,002,000 shares are designated "SERIES B PREFERRED STOCK,"
6,000,000 shares are designated "SERIES C PREFERRED STOCK," and 13,000,000 are
designated "SERIES D PREFERRED STOCK." There are outstanding 53,833,021 shares
of idealab! Common Stock, 3,450,000 shares of Series A Preferred Stock,
5,717,135 shares of Series B Preferred Stock, 6,000,000 shares of Series C
Preferred Stock, 5,057,020 shares of Series D Preferred Stock and no other
shares of capital stock are outstanding. All of the outstanding shares of
capital stock are duly authorized, validly issued, fully paid and nonassessable,
and were issued in compliance with applicable federal and state securities laws.
Except for (x) conversion privileges of the Series A Preferred, Series B
Preferred, Series C Preferred, and Series D Preferred and (y) outstanding
options (or options reserved for future grant) to purchase shares of idealab!
Common Stock granted to employees or consultants pursuant to idealab!'s stock
plans or arrangements, there are no outstanding options, warrants, rights
(including conversion or preemptive rights) or agreements for the purchase or
acquisition from idealab! of any shares of its capital stock, except for such
options or agreements which would not have a material dilutive effect on
Find/SVP's ownership interest in idealab!.
(ii) The authorized capital stock of Xxxx.xxx consists of
5,000,000 shares of blank check preferred stock, par value $.001 per share, and
20,000,000 shares of Xxxx.xxx Common Stock. There are outstanding 9,500,000
shares of Xxxx.xxx Common Stock, all of which are owned by idealab! and no
shares of preferred stock. All of the outstanding shares of Xxxx.xxx Common
Stock are duly authorized, validly issued, fully paid and non-assessable, and
were issued in compliance with applicable federal and state securities laws.
There are no outstanding options, warrants, rights (including conversion or
preemptive rights) or agreements for the purchase or acquisition from Xxxx.xxx
of any shares of its capital stock.
(d) SALE OF SERIES D PREFERRED STOCK. idealab! has sold its Series D
Preferred Stock at the price of $100 per share. The rights, preferences and
privileges of the Series D Preferred Stock are set forth in idealab!'s Amended
and Restated Articles of Incorporation, a copy of which has been provided to
Find/SVP.
(e) AUTHORIZATION . All corporate action on the part of idealab! and
Xxxx.xxx and their respective officers, directors and shareholders necessary for
the authorization, execution, delivery and performance of this Agreement, the
authorization, sale, issuance and delivery of, in the case of idealab!, the
idealab! Shares and, in the case of Xxxx.xxx, the Xxxx.xxx Shares, and
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the performance of their respective obligations under this Agreement has been
taken. This Agreement, when executed and delivered by idealab! and Xxxx.xxx,
shall constitute their valid and binding obligation, enforceable in accordance
with its terms. The idealab! Shares, when issued in compliance with the
provisions of this Agreement, and the Xxxx.xxx Shares, if and when issued in
compliance with the terms of this Agreement, will be validly issued, fully paid
and nonassessable, will have the rights, preferences and privileges described in
their respective Articles/Certificate of Incorporation attached hereto as
Exhibit B ("ARTICLES"), and will be free of any liens or encumbrances; provided,
however, that the idealab! Shares and the Xxxx.xxx Shares may be subject to
restrictions on transfer under state and/or federal securities laws as set forth
herein.
(f) COMPLIANCE WITH OTHER INSTRUMENTS. Neither idealab! nor Xxxx.xxx
is in violation or default of any term of its Articles or Bylaws, or any term or
provision of any material mortgage, indebtedness, indenture, contract,
agreement, instrument, judgment, order or decree, and to its knowledge is not in
violation of any applicable statute, rule or regulation where such violation
would have a Material Adverse Effect. The execution, delivery and performance of
and compliance with this Agreement, and the issuance of the idealab! Shares and
the Xxxx.xxx Shares, have not resulted (in the case of the idealab! shares) and
will not result in any violation of, or conflict with, or constitute, with or
without the passage of time and the giving of notice, a default under,
idealab!'s or Xxxx.xxx's, as the case may be, Articles or Bylaws or any of their
respective agreements nor result in the creation of any mortgage, pledge, lien,
encumbrance or charge upon any of their respective properties or assets; and
there is no such violation or default which materially and adversely affects the
business of idealab! or Xxxx.xxx or any of their respective properties or
assets.
(g) BROKERS OR FINDERS; OTHER OFFERS. Neither idealab! nor Xxxx.xxx
has incurred, and neither will incur, directly or indirectly, as a result of any
action taken by it, any liability for brokerage or finders' fees or agents'
commissions or any similar charges in connection with this Agreement.
6. REPRESENTATIONS AND WARRANTIES OF FIND/SVP.
Find/SVP represents and warrants to idealab! and Xxxx.xxx as follows:
(a) ACCESS TO INFORMATION. Find/SVP hereby acknowledges that it has
had access to and is familiar with, information concerning idealab!'s business,
management and financial affairs, financial condition, and current prospects.
Find/SVP understands that idealab!'s business, management and financial affairs,
financial condition, and current prospects are constantly subject to change.
Find/SVP acknowledges that it has had an opportunity to ask questions of and
request additional information concerning idealab! from representatives of
idealab!. Find/SVP acknowledges that it received answers to such questions and
responses to such requests to its satisfaction. Find/SVP understands that such
discussions, as well as any written information issued by idealab!, were
intended to describe the aspects of idealab!'s business and prospects which it
believes to be material but were not necessarily a thorough or exhaustive
description.
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(b) INVESTMENT STATUS. Find/SVP is acquiring the idealab! Shares for
Find/SVP's own account for investment purposes only, not as a nominee or agent,
and not with a view to, or for resale in connection with, any distribution
thereof. Find/SVP shall not transfer, sell or otherwise dispose of the idealab!
Shares unless registered under applicable federal and state securities laws or
pursuant to an exemption therefrom. Find/SVP has knowledge and experience in
financial and business matters so as to be capable of evaluating the merits and
risks of an investment in idealab!. Find/SVP can bear the economic risk of an
investment in idealab!, including the risk of a complete loss of Find/SVP's
investment. Find/SVP understands that the idealab! Shares have not been, and
will not be, registered under the Securities Act of 1933, as amended (the "Act")
by reason of a specific exemption from the registration provisions and
prospectus delivery requirements of the Act, the availability of which depends
upon, among other things, the bona fide nature of the investment intent and the
accuracy of Find/SVP's representations and warranties as expressed herein.
Find/SVP understands that idealab! has no obligation and does not presently
intend to register or qualify any of its securities. Find/SVP is an "accredited
investor" as defined in Regulation D issued under the Act and is familiar with
the requirements under said Regulation D for being deemed an accredited
investor.
(c) RULE 144. Find/SVP acknowledges that the idealab! Shares must be
held indefinitely unless subsequently registered under the Act or unless an
exemption from such registration is available. Find/SVP is aware of the
provisions of Rule 144 promulgated under the Act and the resale provisions
thereof for shares purchased in a private placement.
(d) NO PUBLIC MARKET. Find/SVP understands that no public market now
exists for any of the securities issued by idealab! and that idealab! has made
no assurances that a public market will ever exist for idealab!'s securities.
(e) ORGANIZATION AND GOOD STANDING. Find/SVP is a corporation duly
organized and validly existing under, and by virtue of, the laws of the State of
New York and is in good standing under such laws.
(f) CORPORATE POWER. Find/SVP has all requisite legal and corporate
power and authority to execute and deliver this Agreement, to acquire the
idealab! Shares hereunder and to carry out and perform its obligations under the
terms of this Agreement.
(g) AUTHORIZATION . All corporate action on the part of Find/SVP, its
officers, directors and shareholders necessary for the authorization, execution,
delivery and performance of this Agreement by Find/SVP and the performance of
Find/SVP's obligations under this Agreement has been taken. This Agreement, when
executed and delivered by Find/SVP, shall constitute a valid and binding
obligation of Find/SVP, enforceable in accordance with its terms.
(h) COMPLIANCE WITH OTHER INSTRUMENTS. The execution, delivery and
performance of this Agreement have not resulted and will not result in any
violation of, or conflict with, or constitute, with or without the passage of
time and the giving of notice, a default under, Find/SVP's Certificate of
Incorporation or Bylaws or any of its agreements.
(i) BROKERS OR FINDERS; OTHER OFFERS. Find/SVP has not incurred, and
will not incur, directly or indirectly, as a result of any action taken by
Find/SVP, any liability for
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brokerage or finders' fees or agents' commissions or any similar charges in
connection with this Agreement.
7. COVENANTS OF FIND/SVP, IDEALAB! AND XXXX.XXX.
(a) Find/SVP covenants and agrees that:
(i) Find/SVP shall not release any public announcement relating
to this Agreement, without the idealab!'s approval, which shall not be
unreasonably withheld. In any event, it may make such public announcement as its
counsel or accountants reasonably believe is the minimum disclosure necessary to
satisfy Find/SVP's obligations under the applicable securities laws.
(ii) Each certificate representing the securities which are the
subject of this Agreement, shall be stamped or otherwise imprinted with legends
in substantially the following form (in addition to any legends required by
agreement or by applicable state securities laws):
THE SECURITIES REPRESENTED HEREBY HAVE NOT BEEN REGISTERED UNDER THE
SECURITIES ACT OF 1933, AS AMENDED. SUCH SECURITIES MAY NOT BE
TRANSFERRED UNLESS A REGISTRATION STATEMENT UNDER THE ACT IS IN EFFECT
AS TO SUCH TRANSFER OR SUCH TRANSFER IS MADE PURSUANT TO RULE 144 OR
REGISTRATION UNDER THE ACT OR IS OTHERWISE UNNECESSARY IN ORDER FOR
SUCH TRANSFER TO COMPLY WITH THE ACT.
Subject to Section 7(a)(iii) hereof, the following additional legend
shall be imprinted on each certificate:
THE SECURITIES REPRESENTED BY THIS CERTIFICATE ARE SUBJECT TO A LOCKUP
PERIOD OF UP TO 180 DAYS FOLLOWING THE EFFECTIVE DATE OF A
REGISTRATION STATEMENT OF THE COMPANY FILED UNDER THE SECURITIES ACT
OF 1933, AS AMENDED, AS SET FORTH IN AN AGREEMENT BETWEEN THE ISSUER
AND THE ORIGINAL HOLDER OF THESE SHARES, A COPY OF WHICH MAY BE
OBTAINED AT THE PRINCIPAL OFFICE OF THE ISSUER. SUCH LOCKUP PERIOD IS
BINDING ON TRANSFEREES OF THESE SHARES.
(iii) In connection with the initial offering of any securities
of idealab! or, if Find/SVP has exercised its Exchange Option, any securities of
Xxxx.xxx, under the Act for the account of idealab! or Xxxx.xxx, as applicable,
if so requested by any representative of the underwriters (the "MANAGING
UNDERWRITER"), Find/SVP shall not sell or otherwise transfer any securities of
idealab! or Xxxx.xxx, as applicable, during the period specified by the Board of
Directors of idealab! or Xxxx.xxx, as applicable, at the request of the Managing
Underwriter (the
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"MARKET STANDOFF PERIOD"), with such period not to exceed 180 days following the
effective date of a registration statement of idealab! or Xxxx.xxx, as
applicable, filed under the Act. idealab! or Xxxx.xxx, as applicable, may impose
stop-transfer instructions with respect to securities subject to the foregoing
restrictions until the end of such Market Standoff Period.
(iv) Find/SVP shall defend, indemnify, and hold harmless idealab!
and Xxxx.xxx and their subsidiaries, affiliates, directors, officers, employees,
affiliates, agents and contractors from and against any and all claims,
judgments, lawsuits, liabilities, damages, penalties, losses, costs and expenses
(including, but not limited to, court costs, reasonable attorneys' fees, and
expert witness fees ) (collectively, "DAMAGES") arising out of, or in connection
with, any third party claim which results, in whole or in part, or is claimed to
result, in whole or in part, from (A) any breach by Find/SVP of any of its
representations, warranties or obligations under this Agreement or under the
Trademark and Domain Name Agreement, (B) from any actual or alleged infringement
or misappropriation by the Marks of any trademark or other rights of any third
party or (C) from use of the "Find" xxxx by Find/SVP.
(b) Each of idealab! and Xxxx.xxx covenants and agrees to defend,
indemnify and hold harmless Find/SVP and its subsidiaries, affiliates,
directors, officers, employees, affiliates, agents and contractors from and
against any and all Damages arising out of or in connection with, any third
party claim which results in whole or in part, or is claimed to result, in whole
or in part, from (i) any breach by idealab! of its obligations under this
Agreement, (ii) any breach by Xxxx.xxx of its obligations under this Agreement
or under the Trademark and Domain Name Agreement, or (iii) from use of the Marks
by Xxxx.xxx; provided, however, that idealab!'s obligations to defend, indemnify
and hold harmless the Find/SVP Indemnitees with respect to Subsections (ii) and
(iii) above shall terminate and be of no further force or effect following
Xxxx.xxx's receipt of financing (whether in one round or any number of rounds)
in an aggregate amount of not less than $5,000,000.
(c) Each of the parties covenants and agrees to:
(i) Work together to identify and jointly pursue mutually
beneficial Internet ventures, provided that each party shall have absolute and
sole discretion whether to enter into any such ventures and the terms of any
such ventures.
(ii) Work together in good faith to identify ways for idealab! or
its affiliates to invest in Find/SVP, provided that Find/SVP, idealab! and such
affiliates shall have absolute and sole discretion whether to enter into any
such investments and the terms of any such investments.
(d) The parties covenant and agree that, so long as Xxxx.xxx, Inc.
continues to use the Marks or the Domain Name:
(i) Find/SVP shall not, directly or indirectly, whether as
owner, partner, or inventor, (A) attempt to register or acquire any internet
address containing "find," other than any top-level address beginning or ending
with xxxxxxx.xxx or xxxxxxx.xxx, or (B) use the domain name "xxxxxxx.xxx" or
"xxxxxxx.xxx" or the trademark "Find" to compete with
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Xxxx.xxx's currently proposed portal Internet site containing a search engine,
general information and editorial content directed primarily to consumers; and
(ii) Xxxx.xxx shall not, directly or indirectly, whether as
owner, partner, or inventor, use the Domain Name or the Marks to compete with
Find/SVP's current human delivered consulting and research services business.
8. MISCELLANEOUS.
(a) MODIFICATIONS AND AMENDMENTS. None of the terms of this Agreement
shall be deemed to be modified, and/or amended unless such a modification,
and/or amendment specifically references this Agreement and is in writing signed
by the party or parties to be bound.
(b) SEVERABILITY. If any clause or provision of this Agreement is
declared illegal, invalid or unenforceable under present or future laws
effective during the term hereof, it is the intention of the parties hereto to
reach agreement to terms that will lawfully carry out the intended purpose of
any such clause or provision, and to take such action as may be necessary to do
so. The parties further intend that the remainder of this Agreement shall not be
affected thereby, and shall remain in full force and effect.
(c) WAIVER. Any waiver of any party's rights or remedies under this
Agreement shall be effective only if made in writing signed by an authorized
officer of such party, and no failure or delay by any party in exercising any
right or remedy hereunder nor any custom or course of performance shall operate
as a waiver of any such right or remedy, nor shall any single or partial
exercise or waiver of any right preclude any other or further exercise thereof
or the exercise of any other right or remedy.
(d) GOVERNING LAW. This Agreement shall be governed by and construed
in accordance with the internal laws of the State of California without regard
to the conflict of law principles thereof, except with respect to matters of law
concerning the internal corporate affairs of any corporate entity which is a
party to or the subject of this Agreement, and as to those matters the law of
the jurisdiction under which the respective entity derives its powers shall
govern.
(e) ENTIRE AGREEMENT. This Agreement and the License Agreement are
intended as the complete, final and exclusive statement of the terms of the
agreement between the parties with regard to the subject matter hereof and
thereof, and supersedes all prior oral and written agreements, understandings,
commitments, negotiations and practices among the parties relating to such
subject matter.
(f) CONSTRUCTION. The language used in this Agreement was jointly
drafted and negotiated by both parties and shall be deemed to be the language
chosen by both parties hereto to express their mutual intent and no rule of
strict construction against any party shall apply to any term or condition of
this Agreement. The headings contained in this Agreement are for convenience of
reference only and shall not limit or otherwise affect the meaning or
interpretation hereof.
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(g) SUCCESSORS AND ASSIGNS. This Agreement shall be binding upon
and inure to the benefit of the parties hereto and their respective successors
and assigns.
(h) RELATIONSHIP OF THE PARTIES. This Agreement does not create
a partnership or joint venture between the parties hereto, and does not make any
party the employee, agent or legal representative of any other party for any
purpose whatsoever. No party is granted any right or authority to assume or
create any obligation or responsibility, express or implied, on behalf of or in
the name of any other party.
(i) JURISDICTION AND VENUE. Any dispute regarding this Agreement
and the performance of any party hereunder, shall be subject to the exclusive
jurisdiction of the United States District Court for the Central District of
California. Each party hereby irrevocably and unconditionally (i) consents to
the jurisdiction of that court for any such dispute; and (ii) waives any
objection which such party may have to the laying of venue of any such dispute
in that court. In the event the United States District Court for the Central
District of California declines jurisdiction over any dispute relating to the
enforcement and/or interpretation of this Agreement, any such litigation shall
be brought in state court in California, in the County of Los Angeles, and the
parties hereto expressly consent to the jurisdiction of that court and waive any
objection thereto.
(j) NOTICES. All notices required or permitted to be given
hereunder shall be given in writing and shall be sent by prepaid first class
registered air mail, express courier, personal delivery, or facsimile to the
following addresses:
Find/SVP: Xxxxxx X. Xxxxxx
Find/SVP, Inc.
000 Xxxxxx xx xxx Xxxxxxxx, Xxx Xxxx, XX 00000-0000
Fax: (000) 000-0000
With a copy to: Xxxxxx X. Xxxxxxx, Esq.
Xxxxxxx & Xxxxxx, LLP
000 Xxxxxxx Xxxxxxxxxx
Xxxxxxx, XX 00000
Xxxxxxx Xxxx, Esq.
Xxxxxxxxx XxXxxxxx, Esq.
Xxxxxx & Xxxxxxxx, L.L.P.
000 Xxxx Xxxxxx
Xxx Xxxx, XX 00000
idealab!: Xxxx Xxxxx
Xxxxxxx XxXxxxxxx, Esq.
000 Xxxx Xxxxx Xxxxxx,
Xxxxxxxx, XX 00000
Fax: (000) 000-0000
10
With a copy to: Xxxxx X. Xxxxxxx, Esq.
Xxxxxx & Xxxxxxx
000 Xxxx Xxxxx Xx., Xxxxx 0000
Xxx Xxxxxxx, Xxxxxxxxxx 00000
Fax: (000) 000-0000
In the case of notice by facsimile transmission, notice shall be
confirmed immediately by prepaid courier service (e.g. Federal Express) or U.S.
mail. All notices shall be effective upon receipt when delivered at the address
so specified; provided, however, that any notice sent by mail shall be deemed to
have been received ten (10) business days after dispatch; any notice sent by
courier shall be deemed to have been received one (1) business day after
dispatch; and any notice sent by facsimile transmission shall be deemed to have
been received when such facsimile is confirmed electronically. Any party may
change the address to which notices are to be sent by so notifying the other
parties in writing in the manner provided herein.
(k) COUNTERPARTS. This Agreement may be executed in any number of
counterparts and by the parties hereto in separate counterparts, each of which
when so executed shall be deemed to be an original and all of which taken
together shall constitute one and the same agreement. Each party shall become
bound by this Agreement immediately upon affixing its signature hereto.
(l) FURTHER ASSURANCES. Each of the parties agrees to execute and
deliver such other documents and to take all such other actions as the other
parties, their successors, assigns or other legal representatives may reasonably
request to effect the terms of this Agreement, to consummate the transactions
contemplated hereunder, including, without limitation, the execution and
delivery of any and all agreements, affidavits, testimonies, declarations,
oaths, samples, exhibits, specimens and other documentation as may be reasonably
required.
[Signature page follows]
11
Exhibit Z
---------
Part I
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the day and year first above written.
Xxxx Xxxxx' idealab!,
a California corporation
By:
-------------------------------------
Name:
Title:
Find/SVP, Inc.
a New York corporation
By:
-------------------------------------
Name:
Title:
Xxxx.xxx, Inc.
a Delaware corporation
By:
-------------------------------------
Name:
Title:
S-1
EXHIBIT Z
---------
Part II
TRADEMARK LICENSE AND DOMAIN NAME ASSIGNMENT AGREEMENT
This Trademark License and Domain Name Assignment Agreement (this
"LICENSE AGREEMENT") is entered into as of December __, 1999 (the "EFFECTIVE
DATE") by and between Find/SVP, Inc. ("FIND/SVP"), a New York corporation, with
its principal place of business at 000 Xxxxxx xx xxx Xxxxxxxx, Xxx Xxxx, XX
00000-0000, and Xxxx.xxx, Inc., a Delaware corporation ("XXXX.XXX"), with its
principal place of business at 000 Xxxx Xxxxx Xxxxxx, Xxxxxxxx, XX 00000.
WHEREAS, Find/SVP and Xxxx.xxx and Xxxx Xxxxx'x idealab! (a
California corporation located at 000 Xxxx Xxxxx Xxxxxx, Xxxxxxxx, XX
("IDEALAB!")) have entered into that certain Collaboration Agreement, dated as
of the date hereof (the "COLLABORATION AGREEMENT");
WHEREAS, pursuant to the Collaboration Agreement, by entering into
this License Agreement, Find/SVP is (a) granting to Xxxx.xxx the exclusive
perpetual license to use and sublicense the Licensed Xxxx (as defined herein)
within the Territory (as defined herein), including the right to use the
Licensed Xxxx, or any part thereof, as a corporate name, and (b) assigning to
Xxxx.xxx the xxxx.xxx Domain Name (as defined herein);
WHEREAS, Find/SVP is the sole and exclusive owner of the Licensed
Xxxx and the xxxx.xxx Domain Name;
WHEREAS, the Xxxx.xxx, Inc. company name was reserved and Xxxx.xxx
was incorporated in anticipation of the signing of this License Agreement and
the Collaboration Agreement ("SAID AGREEMENTS") and Find/SVP agrees to and
ratifies said company name reservation and incorporation under the company name
Xxxx.xxx, Inc. pursuant to the terms of said Agreements;
WHEREAS, pursuant to the Collaboration Agreement, Find/SVP desires
to grant such license and sell such xxxx.xxx Domain Name to Xxxx.xxx subject to
the terms and conditions of this License Agreement.
AGREEMENT
NOW, THEREFORE, for good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, the parties hereby agree as
follows:
1. DEFINITIONS
1.1. "XXXX.XXX DOMAIN NAME" shall mean the Internet domain name
"xxxx.xxx", regardless of how used. However, "xxxx.xxx Domain Name" shall not
include the Internet domain names "xxxxxxx.xxx" or "xxxxxxx.xxx".
1.2. "XXXX.XXX QUALIFIED IPO" shall have the meaning set forth for such
term in the Collaboration Agreement.
1.3. "XXXX.XXX SHARES" shall have the meaning set forth for such term
in the Collaboration Agreement.
1.4. "IDEALAB! QUALIFIED IPO" shall have the meaning set forth for such
term in the Collaboration Agreement.
1.5. "IDEALAB! SHARES" shall have the meaning set forth for such term
in the Collaboration Agreement.
1.6. "LICENSED XXXX" shall mean, collectively, the trademarks and
service marks "xxxx.xxx" and "find," owned by Find/SVP as set forth in the
Attached Schedule A in any design, font and/or style, and any and all
registrations and applications for registration therefor, and all reissues,
renewals or extensions thereof. Without limiting the generality of the
foregoing, "Licensed Xxxx" does not include the trademarks/service marks
"find/svp", "findout", "xxxxxxx.xxx" or "xxxxxxx.xxx" or the designs and logos
used with said marks by Find/SVP.
1.7. "TERRITORY" shall mean the United States and all foreign
countries. Territory is intended to mean worldwide, including all foreign and
domestic jurisdictions.
1.8. "TRANSFER" shall mean any transfer (whether voluntary, involuntary
or by operation of law), including without limitation, by way of issuance, sale,
participation, pledge, hypothecation, gift, bequeath, intestate transfer,
distribution, liquidation, merger or consolidation in each case, to any person
or entity.
2. LICENSE GRANT
2.1. LICENSED XXXX. Find/SVP hereby grants to Xxxx.xxx an exclusive
(including as to Find/SVP, subject to Section 2.2 hereof), perpetual (subject to
termination as provided herein) license to use and, with the prior consent of
Find/SVP (which consent shall not be unreasonably withheld or delayed),
sub-license, the Licensed Xxxx, for use in connection with a new portal Internet
site containing a search engine, general information and editorial content, of
interest primarily to consumers, within the Territory, including, without
limitation, the reproduction of the Licensed Xxxx on or in association with
goods and services related thereto and, subject to Section 2.3 hereof, the use
of the Licensed Xxxx, or any part thereof, as a corporate name or as part of a
corporate name for Xxxx.xxx. The use of the Licensed Xxxx by Xxxx.xxx shall
inure to the benefit of Find/SVP. Xxxx.xxx shall have the right to enforce the
Licensed Xxxx and exclude others from using the Licensed Xxxx in the Territory.
If Xxxx.xxx notifies Find/SVP in writing that it elects not to take any such
action, Find/SVP shall have the right to enforce the Licensed Xxxx and exclude
others from using the Licensed Xxxx in the Territory.
2.2. FIND/SVP'S RETAINED RIGHTS. For so long as this License Agreement
remains in effect, Find/SVP shall hereafter have no right whatsoever to use or
reproduce the Licensed Xxxx except that Find/SVP may continue to use "FIND" as
said xxxx is currently being used as illustrated on the attached Schedule B to
operate its existing business under the name "Find/SVP" and may retain its
ownership and use of the "xxxxxxx.xxx" and "xxxxxxx.xxx" Internet domain names
and its ownership of trademark registrations covering "FIND."
2
2.3. CORPORATE NAME. If, at the close of business on the last day of
the eighteenth month following the execution of this License Agreement (the
"NAME DETERMINATION DATE"), (i) in the event Find/SVP owns the Xxxx.xxx Shares,
the value of the common stock of Xxxx.xxx is not at least $10.00 per share (as
adjusted to give effect to stock splits, stock dividends and stock
reclassifications), or (ii) in the event Find/SVP owns the idealab! Shares,
idealab!'s common stock is not worth at least $100.00 per share (as adjusted to
give effect to stock splits, stock dividends and stock reclassifications), then
Find/SVP may direct Xxxx.xxx to change the corporate name of Xxxx.xxx to a name
that does not include the term "xxxx.xxx;" PROVIDED that Find/SVP must notify
Xxxx.xxx of such request within 30 days of the Name Determination Date or
thereafter waive any right to direct Xxxx.xxx to change said corporate name. If
Xxxx.xxx receives notification of the requested corporate name change from
Find/SVP within 30 days of the Name Determination Date, Xxxx.xxx shall effect a
corporate name change within 90 days after receiving such notice; provided that
Xxxx.xxx shall be permitted a reasonable period of time within which to deplete
any existing stocks and fulfill all outstanding marketing commitments involving
Xxxx.xxx's name. For purposes of this Section 2.3, the per share value of the
common stock of Xxxx.xxx on the Name Determination Date shall be equal to (x) if
Xxxx.xxx is a privately held corporation, the price determined in good faith by
the Board of Directors of Xxxx.xxx, or (y) if Xxxx.xxx is a publicly held
corporation, the average closing bid price at which its common stock trades on
the NASDAQ Stock Market or a national stock exchange measured over 20
consecutive trading days. Notwithstanding the foregoing, Xxxx.xxx shall continue
to have the right to use the Licensed Xxxx in commerce regardless of any name
change and nothing contained in this Section 2.3 shall in any way impair or
otherwise adversely affect the rights granted to Xxxx.xxx pursuant to Sections
2.1 and 3.1 hereof with respect to the Licensed Xxxx or the xxxx.xxx Domain
Name.
3. NAME ASSIGNMENT
3.1. NAME ASSIGNMENT. Find/SVP hereby assigns and conveys to Xxxx.xxx
all of Find/SVP's worldwide right, title and interest in and to the xxxx.xxx
Domain Name and the registration agreement for the xxxx.xxx Domain Name, and
Xxxx.xxx hereby accepts and receives all of Find/SVP's right, title and interest
in and to the xxxx.xxx Domain Name and such registration agreement.
3.2. ASSIGNMENT DOCUMENTATION. As soon as the parties execute this
Agreement, Find/SVP shall execute and have notarized the current version of
Network Solutions "Registrant Name Change Agreement" in the form attached hereto
as Schedule C, and shall execute and immediately transmit, said executed and
notarized Agreement to Xxxx.xxx via facsimile and via overnight courier.
Xxxx.xxx shall be responsible for submitting the completed agreement to Network
Solutions and shall provide Find/SVP with a copy of the completed Agreement and
any correspondence regarding same sent to or received from Network Solutions.
Find/SVP shall execute any further papers needed to accomplish the transfer.
3.3. INTERNET ADDRESS RESTRICTIONS. Subject to Section 2.2, Find/SVP
shall not, directly or indirectly, attempt to register or acquire any internet
address containing the term "find," other than top-level Internet addresses
beginning or ending with "findsvp" or "findout."
3
4. INITIAL COMPENSATION; ROYALTY PAYMENTS
4.1. INITIAL COMPENSATION. Upon execution of this License Agreement and
execution of the assignment documentation set forth in Section 3.2 hereof,
Xxxx.xxx shall deliver to Find/SVP $800,000 in cash (via wire transfer to an
account designated in writing by Find/SVP).
4.2. ROYALTY PAYMENTS. Xxxx.xxx shall pay to Find/SVP an ongoing
royalty equal to 1% of the total gross revenues of Xxxx.xxx payable within
forty-five (45) days following the end of each quarter during the term of this
License Agreement. The obligation to pay such royalty shall terminate upon the
earlier to occur of:
4.2.1. Find/SVP's receipt of royalties pursuant to this Section 4.2 totaling
$3,000,000;
4.2.2. In the event Find/SVP owns the Xxxx.xxx Shares, following a Xxxx.xxx
Qualified IPO, upon such time as the common stock of Xxxx.xxx trades at
an average closing bid price of $6.00 (as adjusted to give effect to
stock splits, stock dividends and stock reclassifications) or more per
share measured over 20 consecutive trading days; and
4.2.3. In the event Find/SVP owns the idealab! Shares, following an idealab!
Qualified IPO, upon such time as the common stock of idealab! trades at
an average closing bid price of $60.00 (as adjusted to give effect to
stock splits, stock dividends and stock reclassifications) or more per
share measured over 20 consecutive trading days.
During the term of this License Agreement, Xxxx.xxx shall retain
books and records sufficient to evidence its compliance with this Section 4.2.
Find/SVP shall, on dates to be mutually agreed upon by Find/SVP and Xxxx.xxx,
have the right to inspect such books and records during normal business hours,
but no more frequently than once each year.
5. OTHER AGREEMENTS
Xxxx.xxx will include a link (the "Link") to the Find/SVP website located
at xxx.xxxxxxx.xxx from the front page of the Xxxx.xxx website located at
xxx.xxxx.xxx for three years following the Effective Date. The Link shall have
dimensions of not less than 1.5 inches across and .75 inches in height. The Link
may include Find/SVP's name, logo, trademark and any business description which
distinguishes Find/SVP's business from Xxxx.xxx's business; PROVIDED, HOWEVER,
that the content, look and feel of the Link must be approved by Xxxx.xxx, which
consent may not be unreasonably withheld. Notwithstanding the foregoing, the
Link (including any images or text associated with the Link) may not (i) include
advertising for third parties, (ii) exceed a file size of 3KB or (iii) suggest
any affiliation between Find/SVP and Xxxx.xxx. In the event that the xxxx.xxx
website provides web content directed primarily at business customers, Xxxx.xxx
will consider extending the Link for an appropriate period. Find/SVP hereby
grants Xxxx.xxx a non-exclusive license to use, reproduce and display Find/SVP's
name, logo, trademark and any content contained in the Link solely in connection
with its obligations under this Section 5.
4
6. REPRESENTATIONS AND WARRANTIES
Find/SVP hereby represents and warrants that
(i) Find/SVP has full power and authority to enter into this License
Agreement, to grant the rights granted herein, and to perform its obligations
hereunder, and to do so will not violate or conflict with any term or provision
of any agreement, instrument, statute, rule, regulation, order or decree to
which Find/SVP is a party or by which it is bound;
(ii) Find/SVP is the sole owner of the Licensed Xxxx and the xxxx.xxx
Domain Name, free and clear of any liens or other encumbrances;
(iii) Find/SVP has no knowledge of any third party who has registered,
has applied to register, is using, is authorized to use or asserts a right to
use the Licensed Xxxx;
(iv) the xxxx.xxx Domain Name is registered with InterNIC;
(v) there have been no challenges or disputes regarding Find/SVP's
ownership or use of the Licensed Xxxx or the xxxx.xxx Domain Name, and, to
Find/SVP's knowledge, no such challenge or dispute is threatened;
(vi) Find/SVP is not aware of any facts or circumstances that, as of
the date hereof, could reasonably form the basis of a successful challenge to
its ownership or use of the Licensed Xxxx or Xxxx.xxx Domain Name;
(vii) no consent or other authorization is required to be obtained in
order to validly license and transfer the rights licensed and transferred
hereunder;
(viii) Find/SVP has neither Transferred nor caused to be Transferred any
right, title or interest in either the Licensed Xxxx or the xxxx.xxx Domain Name
to any person or entity;
(ix) to Find/SVP's knowledge, the content on the Find/SVP website does
not and will not infringe any copyright, trademarks, trade secrets or other
intellectual property rights of any third party and does not and will not
constitute a defamation or invasion of the rights of privacy or publicity of any
kind of any third party;
(x) to Find/SVP's knowledge, the Find/SVP website does not and will
not violate the laws, statutes or regulations of any jurisdiction; and
(xi) to Find/SVP's knowledge, Xxxx.xxx's use of the Find/SVP trademark,
name and logo pursuant to Section 5 does not and will not violate the rights of
any third party, including without limitation, copyright, trademark, trade
secret, privacy, publicity or other right.
Find/SVP acknowledges and understands that Xxxx.xxx is entering into this
License Agreement in reliance upon the representations and warranties of
Find/SVP herein.
5
7. PROMOTION OF GOODWILL; STANDARDS OF CONDUCT; QUALITY CONTROL
7.1. COMPLIANCE WITH LAW. The parties shall comply with all applicable
laws, regulations, standards and decrees of any governmental authorities in the
Territory in connection with their respective uses of FIND as provided herein.
7.2. AVOIDANCE OF ADVERSE ACTIONS. Neither party shall take any action
that would jeopardize or impair (i) Find/SVP's ownership of the Licensed Xxxx,
(ii) Xxxx.xxx's ownership of the xxxx.xxx Domain Name subject to the terms of
this Agreement and the Collaboration Agreement or (iii) the legality or
enforceability of the Licensed Xxxx or the xxxx.xxx Domain Name.
7.3. QUALITY CONTROL STANDARDS. Neither party shall take any action
and/or shall cease taking any action that may: (i) impair the quality of
products and services with which the Licensed Xxxx is used, or (ii) in any way
disparage the Licensed Xxxx, the "FIND," "Find/SVP or "FINDOUT" trademarks or
the other party's goods and services. Xxxx.xxx shall use the Licensed Xxxx only
in connection with goods and services that are of a nature and quality
equivalent or better than the nature and quality of the current goods and
services offered by other companies currently majority owned by idealab!.
Find/SVP shall use its "FIND", "FIND/SVP" and "FINDOUT" marks in connection with
goods and services that are of a nature and quality equivalent or better than
the nature and quality of its current goods and services. In the event that
Find/SVP determines that Xxxx.xxx's goods and services offered in connection
with the Licensed Xxxx are below these quality standards, then Find/SVP shall so
notify Xxxx.xxx in writing. Xxxx.xxx will then have 30 days after the date of
Find/SVP's notice to correct any such deficiency. In the event that the
deficiency is not corrected within said time frame, then the parties will have
60 days to mediate the dispute before an impartial mediator in such a manner
that the mediation is concluded within said 60 day period. If the matter is not
resolved through mediation and the deficiency continues, then this will
constitute a breach of the Agreement and Find/SVP shall have the right to bring
action seeking specific performance directing compliance with this provision
and/or injunctive relief preventing the actions in question and recovery of
damages in accordance with the terms of this agreement.
8. INTELLECTUAL PROPERTY PROTECTION OF THE LICENSED XXXX
8.1. MAINTENANCE OF THE REGISTRATION OF THE LICENSED XXXX. Find/SVP
shall diligently prosecute, maintain and timely renew all applications for
trademark registration, declarations of use, applications for renewal with
respect to the Licensed Xxxx at Find/SVP's sole cost and expense. Find/SVP shall
provide to Xxxx.xxx copies of any documents filed or received in connection with
any registration owned by Find/SVP for the Licensed Xxxx. In the event that
Xxxx.xxx wishes Find/SVP to apply for additional registration coverage for the
Licensed Xxxx in any countries, then Xxxx.xxx shall so request in writing that
Find/SVP do so and shall bear all fees and costs associated with said filings.
Any such filings shall be in Find/SVP's name.
8.2. In the event that Find/SVP determines to abandon the use of the
"FIND" xxxx as provided for in Section 2.2 herein, then Xxxx.xxx or its designee
shall have an irrevocable,
6
exclusive option, but not the obligation, to purchase all or any portion of the
rights to the "Find" xxxx at a price to be negotiated in good faith by the
parties. If the parties are unable to agree upon the terms of any such
acquisition of rights within 90 days following the date that Find/SVP makes the
determination to abandon the "Find" xxxx (the "ABANDONMENT DATE"), then Find/SVP
shall have the right to sell or otherwise transfer any and all rights to the
"Find" xxxx to any other party; provided, however, that if Find/SVP proposes to
sell or otherwise transfer any rights to the "Find" xxxx to any party, then
Find/SVP shall, no later than 45 calendar days prior to the consummation of such
sale or transfer, give written notice to Xxxx.xxx of such proposed sale or
transfer (the "NOTICE OF SALE"). Such Notice of Sale shall describe the
principal terms of the proposed sale or transfer, including the rights to be
transferred, the price, the consideration and identity of the proposed purchaser
or transferee and offer to sell or transfer the identical rights to Xxxx.xxx or
its designee on such identical terms. If Xxxx.xxx and its designees fail to
accept such offer by written notice within 30 calendar days after its receipt of
the Notice of Sale, then Find/SVP may proceed with the proposed sale in
accordance with the terms stated in the Notice of Sale. If Find/SVP does not
consummate the proposed sale or transfer in accordance with the terms set forth
in the Notice of Sale within 60 days following the delivery of the Notice of
Sale, then Find/SVP must reoffer to transfer or sell to Xxxx.xxx the subject
rights to the "Find" xxxx in accordance with this Section 8.2 prior to
consummating any such transfer or sale.
8.3. NOTIFICATION OF INFRINGEMENT. Each party shall notify the other
promptly after such party becomes aware of (i) any use or registration of any
word or phrase, symbol, logo or design, or any combination of any of the
foregoing, that such party believes or has reason to believe might constitute
infringement or dilution of the Licensed Xxxx; (ii) any claim of any rights in
the Licensed Xxxx, or in any confusingly similar Xxxx; and/or (iii) any action,
publication or statement that such party believes to be adverse or detrimental
to either party's rights in the Licensed Xxxx or which such party believes will
dilute or impair the value of the Licensed Xxxx.
8.4. LEGAL ACTION. Xxxx.xxx shall have the right, but not the
obligation, to cause any infringement or dilution of the Licensed Xxxx to cease,
including, without limitation, filing a suit with respect to such infringement
or dilution. If Xxxx.xxx elects to commence litigation with respect to such
infringing or diluting activity, then Xxxx.xxx shall promptly provide Find/SVP
with written notice thereof. Find/SVP shall (i) cooperate at its own expense
with Xxxx.xxx in any litigation proceedings instituted under this Section 8.4
against a third party (including, without limitation, making available at
reasonable times and under appropriate conditions all relevant personnel,
records, specimens and other similar materials in its possession or control) and
(ii) consent to being named as a party to any such litigation proceedings.
Xxxx.xxx shall have exclusive control over any litigation instituted under this
Section 8.4, except that Find/SVP may thereafter join such suit with counsel of
its own choosing. If Xxxx.xxx names Find/SVP as a co-plaintiff with Xxxx.xxx,
then Xxxx.xxx shall pay Find/SVP's expenses. If Find/SVP joins suit at its own
option or opts to use its own counsel after being named as a party by Xxxx.xxx,
then Find/SVP does so at its own expense. All legal actions undertaken pursuant
to this Section 8.4 shall be at the expense of Xxxx.xxx. All recoveries in any
legal actions undertaken pursuant to this Section 8.4 shall belong to Xxxx.xxx.
Notwithstanding the foregoing, if the defendant in any such litigation
proceeding alleges any counterclaims against Xxxx.xxx or any of the Xxxx.xxx
Indemnitees (as defined below) which are Find/SVP Indemnified Claims (as
7
defined below), the defense of such counterclaims shall be the responsibility of
Find/SVP pursuant to Section 9.2 and 9.3 hereof.
9. DEFENSE AND INDEMNIFICATION
9.1. Xxxx.xxx shall defend, indemnify, and hold harmless Find/SVP and
its subsidiaries, affiliates, directors, officers, employees, affiliates, agents
and contractors from and against any and all claims, judgments, lawsuits,
liabilities, damages, penalties, losses, costs and expenses (including, but not
limited to, court costs, reasonable attorneys' fees, and expert witness fees)
(collectively, "DAMAGES") arising out of, or in connection with, any third party
claim which results, in whole or in part, or is claimed to result, in whole or
in part, from Xxxx.xxx's use of the Licensed Xxxx by Xxxx.xxx or any breach by
Xxxx.xxx of any of its obligations under this License Agreement (collectively,
the "XXXX.XXX INDEMNIFIED CLAIMS").
9.2. Find/SVP shall defend, indemnify, and hold harmless Xxxx.xxx and
its subsidiaries, affiliates (including idealab!), directors, officers,
employees, affiliates, agents and contractors (collectively, the "XXXX.XXX
INDEMNITEES") from and against any and all Damages arising out of, or in
connection with, any third party claim which results, in whole or in part, or is
claimed to result, in whole or in part, from (a) Find/SVP's use of the "Find"
xxxx, (b) any actual or alleged infringement or misappropriation by the Licensed
Xxxx of any trademark or other rights of any third party and (c) any breach by
Find/SVP of any of its representations, warranties or obligations under this
License Agreement (collectively, the "FIND/SVP INDEMNIFIED CLAIMS").
9.3. In the event that either Find/SVP or Xxxx.xxx asserts the
existence of any right to indemnity under Sections 9.1 or 9.2, such party
("INDEMNITEE") shall give written notice thereof to the other ("INDEMNITOR") of
the nature and amount of the Damages asserted promptly, and, in the case of any
claim relating to a third party action, within ten (10) days prior to the date a
response or answer thereto is due, in writing, thereof. The failure, refusal or
neglect of the Indemnitee to notify the Indemnitor within the time period
specified above of any such claim or action shall not relieve the Indemnitor
from any liability which it may have to the Indemnitee in connection therewith,
unless the Indemnitor was prejudiced by such delay, and then only to the extent
of the harm suffered by such delay. After such notice, if the Indemnitor shall
acknowledge in writing to the Indemnitee that the Indemnitor shall be obligated
under the terms of its indemnity hereunder in connection with such Damages
claim, then the Indemnitor shall be entitled, if it so elects at its own cost,
risk and expense to: (i) take control of the defense and investigation of such
lawsuit or action; (ii) employ and engage attorneys of its own choice reasonably
acceptable to the Indemnitee, to handle and defend the same, unless the named
parties to such action or proceeding include both the Indemnitor and the
Indemnitee and the Indemnitee believes in good faith that (a) there may be one
or more legal defenses available to such Indemnitee that are different from or
additional to those available to the Indemnitor or (b) there is a potential
conflict of interests; and (iii) compromise or settle such claim, PROVIDED,
HOWEVER, without the prior written consent of the Indemnitee, the Indemnitor
shall not have the right to compromise or settle any claim which (a) requires as
a condition to such compromise or settlement an admission of liability or
wrongdoing by the Indemnitee or (b) requires any other compensation, remedy or
relief other than the payment of money damages by Indemnitor.
8
Notwithstanding the foregoing, if the compromise, settlement or resolution of
any such claim is reasonably expected to have, individually or in the aggregate,
a direct and significant adverse effect on the Indemnitee's business operations
or, in the case where Find/SVP is the Indemnitee, a direct and significant
adverse effect on any rights in the Licensed Xxxx, then, notwithstanding the
foregoing, the Indemnitee shall be entitled to control such compromise,
settlement or resolution, including without limitation to take control of the
defense and investigation of such lawsuit or action, to employ and engage
attorneys of its own choice to handle and defend the same, at the Indemnitor's
sole cost, risk and expense, and to compromise or settle such claim. In the
event that the Indemnitor does not so assume the defense, conduct or settlement
of any claim, demand or assessment within thirty (30) days after receiving
notice of any claim relating to a third party action as set forth above, the
Indemnitee shall be entitled to defend, conduct or settle such claim, demand or
assessment without the written consent of the Indemnitor and without relieving
the Indemnitor from any of the obligations to indemnify the Indemnitee under
this Section 9.
9.4. Xxxx.xxx shall maintain such insurance as will adequately protect
Find/SVP against such damage, liability, claims, losses, and expenses (including
attorneys fees) resulting from Xxxx.xxx's use of the Licensed Xxxx. Any
insurance obtained pursuant to this paragraph shall be with an insurance carrier
acceptable to Find/SVP, have a minimum coverage of at least $1 million combined
single limit, and name Find/SVP as additional insured; provided, however, on the
date that is nine months following the date of this Agreement, such insurance
coverage shall be increased to at least $5 million combined single limit.
9.5. Find/SVP shall maintain such insurance as will adequately protect
Xxxx.xxx against such damage, liability, claims, losses, and expenses (including
attorneys fees) resulting from Find/SVP's use of the "Find" trademark. Any
insurance obtained pursuant to this paragraph shall be with an insurance carrier
acceptable to Xxxx.xxx, have a minimum coverage of at least $1 million combined
single limit, and name Xxxx.xxx and idealab! as additional insureds; provided,
however, on the date that is nine months following the date of this Agreement,
such insurance coverage shall be increased to at least $5 million combined
single limit.
10. TERM AND TERMINATION OF AGREEMENT
10.1. TERM OF LICENSE. This License Agreement shall commence on the
Effective Date and remain in full force and effect perpetually; provided,
however that Find/SVP shall have the right to terminate this License Agreement
pursuant to Section 4 of the Collaboration Agreement or in the event that
Xxxx.xxx has availed itself of, or been subjected to by any third party, a
proceeding in bankruptcy in which Xxxx.xxx is the named debtor; an assignment by
Xxxx.xxx for the benefit of its creditors; the appointment of a receiver for
Xxxx.xxx; or any other proceeding involving insolvency or the protection of, or
from, creditors, and the same has not been discharged or terminated within
thirty (30) days. In the event of any such termination, Xxxx.xxx shall cease its
use of the Licensed Xxxx, including as any part of Xxxx.xxx's corporate name,
within 90 days after the effective date of such termination; provided that
Xxxx.xxx shall be permitted a reasonable period of time within which to deplete
any existing stocks and fulfill all outstanding marketing commitments involving
Xxxx.xxx's name and the Licensed Xxxx.
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10.2. NO FIND/SVP RIGHT TO TERMINATE AGREEMENT. Except as set forth in
Section 10.1, Find/SVP may not terminate this License Agreement or the rights or
licenses granted hereunder to Xxxx.xxx for any reason. Find/SVP's exclusive
remedy upon any breach by Xxxx.xxx of its obligations hereunder shall be to seek
recovery of monetary damages, as limited by Section 11 hereof, and to seek
injunctive relief or specific performance hereunder.
10.3. RIGHT TO TERMINATE. Xxxx.xxx shall have the right to terminate
this License Agreement at any time for any reason.
10.4. SECTION 365(N) LICENSE RIGHTS. The parties agree and acknowledge
that all rights and licenses granted under this License Agreement are, and shall
otherwise be deemed to be, for purposes of Section 365(n) of the U.S. Bankruptcy
Code, licenses of rights to "intellectual property" as defined under Section 101
of the U.S. Bankruptcy Code. The parties agree that both parties, as a holders
of such rights hereunder, shall retain and may exercise all rights and elections
under the U.S. Bankruptcy Code.
10.5. SURVIVAL OF CERTAIN PROVISIONS. The provisions of Sections 9,
10.4, 11 and 12 shall survive the termination of this License Agreement for any
reason.
11. LIMITATION OF LIABILITY
11.1. LIMITATION OF LIABILITY. EXCEPT FOR OBLIGATIONS ARISING OUT OF
SECTION 9 THAT ARE BASED ON Xxxx.xxx INDEMNIFIED CLAIMS OR FIND/SVP INDEMNIFIED
CLAIMS, NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY OR THEIR AFFILIATES,
SUCCESSORS OR SUBLICENSEES FOR ANY INDIRECT, SPECIAL, CONSEQUENTIAL, EXEMPLARY
OR INCIDENTAL DAMAGES (INCLUDING WITHOUT LIMITATION, LOST OR ANTICIPATED
REVENUES OR PROFITS RELATING TO THE SAME) ARISING FROM ANY CLAIM RELATING
DIRECTLY OR INDIRECTLY TO THIS LICENSE AGREEMENT, WHETHER A CLAIM FOR SUCH
DAMAGES IS BASED ON WARRANTY, CONTRACT, OR TORT (INCLUDING, WITHOUT LIMITATION,
NEGLIGENCE OR STRICT LIABILITY). EXCEPT FOR OBLIGATIONS ARISING OUT OF SECTION 9
THAT ARE BASED ON Xxxx.xxx INDEMNIFIED CLAIMS OR FIND/SVP INDEMNIFIED CLAIMS,
BOTH PARTIES ACKNOWLEDGE AND AGREE THAT PAYMENT BY THE DEFAULTING PARTY OR
RETENTION BY THE NON-DEFAULTING PARTY OF DIRECT DAMAGES, AS LIMITED BY THE
FOREGOING SENTENCE, INJUNCTIVE RELIEF and specific performance SHALL BE THE
NON-DEFAULTING PARTY'S SOLE AND EXCLUSIVE REMEDY IN EXHAUSTION OF ALL OTHER
REMEDIES UNDER THIS LICENSE AGREEMENT, AT LAW OR IN EQUITY. EACH PARTY HEREBY
WAIVES ANY CLAIM IT MAY HAVE THAT ANY REMEDY HEREUNDER FAILS OF ITS ESSENTIAL
PURPOSE.
12. GENERAL PROVISIONS
12.1. CHOICE OF LAW. This License Agreement shall be governed by and
construed in accordance with the internal laws of the State of California
without regard to the conflict of law
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principles thereof, except with respect to matters of law concerning the
internal corporate affairs of any corporate entity which is a party to or the
subject of this License Agreement, and as to those matters the law of the
jurisdiction under which the respective entity derives its powers shall govern.
12.2. RIGHTS TO ASSIGN LICENSE. Xxxx.xxx shall be permitted to assign
any and all rights granted herein to idealab! or any subsidiary of Xxxx.xxx.
12.3. JURISDICTION AND VENUE. Any dispute regarding this License
Agreement and Find/SVP's and/or Xxxx.xxx's performance hereunder, shall be
subject to the exclusive jurisdiction of the United States District Court for
the Central District of California. Each party hereby irrevocably and
unconditionally (i) consents to the jurisdiction of that court for any such
dispute; and (ii) waives any objection which such party may have to the laying
of venue of any such dispute in that court. In the event the United States
District Court for the Central District of California declines jurisdiction over
any dispute relating to the enforcement and/or interpretation of this Agreement,
any such litigation shall be brought in state court in California, in the County
of Los Angeles, and the parties hereto expressly consent to the jurisdiction of
that court and waive any objection thereto.
12.4. RELATIONSHIP OF THE PARTIES. This License Agreement does not
create a partnership or joint venture between the parties hereto, and does not
make either party the employee, agent or legal representative of the other for
any purpose whatsoever. Neither party is granted any right or authority to
assume or create any obligation or responsibility, express or implied, on behalf
of or in the name of the other party.
12.5. COSTS AND EXPENSES. Except as otherwise expressly stated herein,
each party will bear its own costs and expenses in connection with this License
Agreement.
12.6. ENTIRE AGREEMENT. This License Agreement and the Collaboration
Agreement are intended as the complete, final and exclusive statement of the
terms of the agreement between the parties with regard to the subject matter
hereof and thereof, and supersedes all prior oral and written agreements,
understandings, commitments, negotiations and practices between the parties
relating to such subject matter.
12.7. MODIFICATIONS AND AMENDMENTS. None of the terms of this License
Agreement shall be deemed to be modified, and/or amended by either party unless
such a modification, and/or amendment specifically references this License
Agreement and is in writing signed by the party to be bound.
12.8. NON-WAIVERS. Any waiver of either party's rights or remedies under
this License Agreement shall be effective only if made in writing signed by an
authorized officer of such party, and no failure or delay by either party in
exercising any right or remedy hereunder nor any custom or course of performance
shall operate as a waiver of any such right or remedy, nor shall any single or
partial exercise or waiver of any right preclude any other or further exercise
thereof or the exercise of any other right or remedy.
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12.9. SEVERABILITY. If any clause or provision of this License Agreement
is declared illegal, invalid or unenforceable under present or future laws
effective during the term hereof, it is the intention of the parties hereto to
reach agreement to terms that will lawfully carry out the intended purpose of
any such clause or provision, and to take such action as may be necessary to do
so. The parties further intend that the remainder of this License Agreement
shall not be affected thereby, and shall remain in full force and effect.
12.10. NOTICES. All notices required or permitted to be given hereunder
shall be given in writing and shall be sent by prepaid first class registered
air mail, express courier, personal delivery, or facsimile to the following
addresses:
Find/SVP: Xxxxxx X. Xxxxxx
President
Find/SVP
000 Xxxxxx xx xxx Xxxxxxxx, Xxx Xxxx, XX
00000-0000
Fax: (000) 000-0000
With a copy to: Xxxxxx X. Xxxxxxx, Esq.
Xxxxxxx & Xxxxxx, LLP
000 Xxxxxxx Xxxxxxxxxx
Xxxxxxx, XX 00000
Xxxxxxx Xxxx, Esq.
Xxxxxxxxx XxXxxxxx, Esq.
Xxxxxx & Xxxxxxxx, L.L.P.
000 Xxxx Xxxxxx
Xxx Xxxx, XX 00000
Xxxx.xxx : Xxxx Xxxxx
Xxxxxxx XxXxxxxxx, Esq.
000 Xxxx Xxxxx Xxxxxx,
Xxxxxxxx, XX 00000
Fax: (000) 000-0000
With a copy to: Xxxxx X. Xxxxxxx, Esq.
Xxxxxx & Xxxxxxx
000 Xxxx Xxxxx Xx., Xxxxx 0000
Xxx Xxxxxxx, Xxxxxxxxxx 00000
Fax: (000) 000-0000
In the case of notice by facsimile transmission, notice shall be
confirmed immediately by prepaid courier service (e.g. Federal Express) or U.S.
mail. All notices shall be effective upon receipt when delivered at the address
so specified; provided, however, that any notice sent by mail shall be deemed to
have been received ten (10) business days after dispatch;
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any notice sent by courier shall be deemed to have been received one (1)
business day after dispatch; and any notice sent by facsimile transmission shall
be deemed to have been received when such facsimile is confirmed electronically.
Any party may change the address to which notices are to be sent by so notifying
the other party in writing in the manner provided herein.
12.11. SUCCESSORS AND ASSIGNS. This License Agreement shall be binding
upon and inure to the benefit of the parties, their successors and assigns
(including, without limitation, any successor or assign of Xxxx.xxx).
12.12. FURTHER ASSURANCES AND COOPERATION. Each of the parties agrees to
execute and deliver such other documents and to take all such other actions as
any of the other parties, its successors, assigns or other legal representatives
may reasonably request to effect the terms of this License Agreement, to
consummate the transactions contemplated hereunder, including, without
limitation, the execution and delivery of any and all agreements, affidavits,
testimonies, declarations, oaths, samples, exhibits, specimens and other
documentation as may be reasonably required.
12.13. CONFIDENTIALITY. Find/SVP will not release any public announcement
relating to this License Agreement, or any of the other agreements, documents
and instruments to be entered into in connection herewith, without Xxxx.xxx's
approval, which shall not be unreasonably withheld. In any event, Find/SVP may
make such public announcement as its counsel or accountants reasonably believe
is the minimum disclosure necessary to satisfy Find/SVP's obligations under
applicable securities law.
12.14. CONSTRUCTION. The language used in this License Agreement was
jointly drafted and negotiated by both parties and shall be deemed to be the
language chosen by both parties hereto to express their mutual intent and no
rule of strict construction against either party shall apply to any term or
condition of this License Agreement. The headings contained in this License
Agreement are for convenience of reference only and shall not limit or otherwise
affect the meaning or interpretation hereof.
12.15. COUNTERPARTS. This License Agreement may be executed in any number
of counterparts and by the parties hereto in separate counterparts, each of
which when so executed shall be deemed to be an original and all of which taken
together shall constitute one and the same agreement. Each party shall become
bound by this License Agreement immediately upon affixing its signature hereto.
IN WITNESS WHEREOF, the parties hereto have caused this License
Agreement to be signed by duly authorized officers or representatives as of the
date first above written.
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Find/SVP Xxxx.xxx, Inc.
By: By:
------------------------------------ ------------------------------------
Print Name: Print Name:
---------------------------- ----------------------------
Title: Title:
--------------------------------- ---------------------------------
Date: Date:
---------------------------------- ----------------------------------
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SCHEDULE A
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Common law rights to the xxxx FIND based on usage in commerce by
Find/SVP dating back to at least as early as June 15, 1971.
Federally registered trademarks/service marks as reflected in the
following registrations:
1. FIND
U.S. Registration No. 1,776,731, issued 6/15/93
covering "business research, business consulting and business
information services"
International Class 35
2. FIND
U.S. Registration No. 1,204,459, issued 8/10/82
covering "Publications, namely, Directories, Studies, Reference
Books, Special Research Reports, Catalogs and Newsletters"
International Class 16
3. FIND
U.S. Registration No. 982,082, issued 4/09/74
covering "providing computerized information retrieval services
on a subscription basis"
International Class 35
4. xxxx.xxx
domain name registered through Network Solutions, Inc.
record created on 2/10/94
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SCHEDULE B
----------
Samples of use of FIND as part of FIND/SVP, e.g. 1-800-FIND-SVP,
xxxxxxx.xxx, etc. attached.
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SCHEDULE C
----------
NSI transfer agreement
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