TRADEMARK LICENSE AGREEMENT
TRADEMARK
LICENSE
AGREEMENT
This
TRADEMARK LICENSE AGREEMENT (this “Agreement”),
dated
as of February 15, 2007 (the “Effective
Date”),
is
made by and between Inspire Pharmaceuticals, Inc., a Delaware corporation having
its principal office at 0000 Xxxxxxx Xxxx., Xxxxx 000, Xxxxxx, XX 00000
(“Inspire”),
and
InSite Vision Incorporated, a Delaware corporation having its principal office
at 000 Xxxxxxxx Xxx., Xxxxxxx, XX 00000 (“InSite”).
Inspire and InSite are each sometimes referred to individually as a
“Party”
and
together as the “Parties.”
RECITALS
WHEREAS,
InSite and Inspire are entering into a license agreement (the “License
Agreement”)
contemporaneously with this Agreement, under which InSite is granting to Inspire
the exclusive rights in the Territory to certain patents, know-how and
regulatory filings for the commercialization of Subject Products;
WHEREAS,
InSite owns and has the right to grant a license to the InSite Trademarks and
the Domain Names described on Schedule
1
attached
hereto; and
WHEREAS,
Inspire desires to obtain from InSite, and InSite desires to grant to Inspire,
rights and licenses to use the InSite Trademarks and the Domain Names in
connection with the marketing, commercialization and sale of Subject Products
in
the Territory under the License Agreement.
NOW,
THEREFORE, in consideration of the foregoing premises, the rights and benefits
that they will each receive in connection with the License Agreement, and the
mutual representations, covenants and agreements contained herein, Inspire
and
InSite, intending to be legally bound, hereby agree as follows:
ARTICLE
1
DEFINITIONS
1.1 Incorporated
Definitions.
Capitalized terms that are used in this Agreement but are not otherwise defined
in this Agreement will have the respective meaning ascribed to such terms in
the
License Agreement.
1.2 Additional
Definitions.
When
used in this Agreement, whether in the singular or plural, each of the following
capitalized terms shall have the meanings set forth in this Section
1
(a) “AzaSite
Trademark”
means
the trademark AzaSite™.
(b) “Domain
Names”
means
the internet domain names set forth in Schedule
1,
such
domain names being owned and registered by InSite.
(c) “Independent
Sublicensee”
has
the
meaning set forth in Section 4.4.
(d) “InSite
Trademarks”
means
the trademarks set forth in Schedule
1,
such
marks being owned and registered by InSite.
From and
after the effective date of the assignment of the AzaSite Trademark by InSite
to
Inspire pursuant to Section 2.3(b) of the License Agreement, the term “InSite
Trademarks” shall not include the AzaSite Trademark for any purpose under this
Agreement.
1
(e) “Term”
has
the
meaning set forth in Section 4.1.
ARTICLE
2
LICENSES
AND EXCLUSIVITY
2.1 Licenses.
(a) Subject
to the terms and conditions of this Agreement, InSite hereby grants to Inspire
a
royalty-free, exclusive (even as to InSite and its Affiliates) right and
license, with the right to grant sublicenses, to use the AzaSite Trademark
and
the Domain Names in connection with the marketing, commercialization and sale
of
Subject Products in the Field in the Territory under the License Agreement.
In
connection with such license, InSite agrees immediately to cease any and all
use
of the Domain Names
and to
execute and deliver such further and other documents and to perform such actions
as may be necessary to enable Inspire to access and use the Domain Names under
such license.
(b) Subject
to the terms and conditions of this Agreement, InSite hereby grants to Inspire
a
royalty-free, non-exclusive right and license, with the right to grant
sublicenses, to use the InSite Trademarks (other than the AzaSite Trademark)
in
connection with the marketing, commercialization and sale of Subject Products
in
the Field in the Territory under the License Agreement. Notwithstanding the
non-exclusive nature of the foregoing grant, InSite hereby expressly covenants
that it shall not, and shall cause its Affiliates and licensees not to, directly
or indirectly: (x) use the InSite Trademarks in connection with the marketing,
commercialization or sale of Subject Products in the Field in the Territory;
or
(y) grant to any Third Party any right or license under the InSite Trademarks
to
conduct any of the activities set forth in the foregoing clause (x).
2.2 Sublicenses.
Inspire
may sublicense the rights granted under Section 2.1 only to sublicensees who
will use the InSite Trademarks and the Domain Names in connection with the
marketing, commercialization and sale of Subject Products in the Field in the
Territory under the License Agreement. All sublicenses granted hereunder must
be
in writing and must contain provisions that are not inconsistent with the terms
and conditions of this Agreement.
All
sublicenses shall include quality control standards at least as protective
as
those referenced under Section 3.1.
2.3 Use
of
Affiliates and Third Party Contractors.
The
licenses granted under Section 2.1
include
the right of Inspire to engage its Affiliates and Third Party contractors in
exercising such rights and in carrying out its activities and obligations under
this Agreement, provided that (i) all such agreements with Third Party
contractors must be in writing and must contain provisions that are not
inconsistent with the terms and conditions of this Agreement and
(ii) Inspire remains responsible for the compliance with this Agreement by
such Affiliates or Third Party contractors.
2.4 No
Implied Grants.
Except
as expressly licensed hereunder, neither Party grants any rights to the other
Party under this Agreement, by implication or estoppel, under any of its
intellectual property rights.
2
2.5 Registration
of License.
Notwithstanding anything to the contrary in Section 5.1, Inspire, at its
expense, may register the licenses granted under this Agreement in any country
of the Territory. Upon request by Inspire, InSite agrees promptly to execute
any
“short form” licenses consistent with the terms and conditions of this Agreement
submitted to it by Inspire reasonably necessary to effect the foregoing
registration in such country.
2.6 Notice.
In
connection with the use of the InSite Trademarks, Licensee will xxxx the first
prominent use of the InSite Trademark with the appropriate trademark symbol
(“TM” or “®”, as set forth in Schedule
1
or as
otherwise reasonably instructed by InSite in writing) and will include the
following legend in connection with such use: “[InSite Trademark] is the
trademark of InSite Vision Incorporated and is being used by permission.”
ARTICLE
3
QUALITY
CONTROL AND RELATED MATTERS
3.1 Quality
Control and Standards.
Inspire
shall adhere to such reasonable quality control standards that InSite may from
time to time promulgate and communicate to Inspire in writing with respect
to
the InSite Trademarks, and shall comply materially with all federal, state
and
local laws and regulations governing the use of the InSite Trademarks in
connection with the provision of Inspire Licensed Products. In order to confirm
that Inspire’s use of the InSite Trademarks complies with this Section 3.1,
InSite shall have the right upon written notice to require that Inspire submit
to InSite a reasonable number of representative samples of any Inspire Licensed
Products or related materials bearing the InSite Trademarks.
3.2 Protection
of the InSite Trademarks.
Inspire
hereby acknowledges InSite’s rights in the InSite Trademarks and shall not at
any time do or authorize to be done any action that would prejudice the validity
or registration of the InSite Trademarks or the good will associated therewith,
including filing for, using or authorizing the use of any trademark
(i) likely to cause consumer confusion with respect to the InSite
Trademarks or (ii) containing “SITE” as a part. It is understood that
neither Inspire nor any of its Affiliates shall acquire or claim any independent
right, title or interest in or to the InSite Trademarks by virtue of Inspire’s
use of the InSite Trademarks as provided in this Agreement, it being the
intention of the Parties that all use of the InSite Trademarks by Inspire,
and
all goodwill associated therewith, shall at all times inure to the exclusive
benefit of InSite.
ARTICLE
4
TERM
AND TERMINATION
4.1 Term.
Except
as set forth in Section 5.13, unless earlier terminated by mutual agreement
of the Parties in writing or pursuant to the provisions of this Article 4,
this
Agreement will become effective as of the Effective Date and continue in full
force and effect until the expiration or termination of the License Agreement
in
its entirety (the “Term”).
4.2 Bankruptcy
or Insolvency.
Either
Party may, subject to the provisions set forth herein, terminate this Agreement
by giving the other Party written termination notice if, at any time, the other
Party shall: (a) file in any court pursuant to any statute a petition for
bankruptcy or insolvency, or for reorganization in bankruptcy, or for an
arrangement or for the appointment of a receiver, trustee or administrator
of
such Party or of its assets; (b) be served with an involuntary petition against
it, filed in any insolvency proceeding, and such petition shall not be dismissed
within sixty (60) days after the filing thereof; (c) propose or be a party
to
any dissolution; or (d) make an assignment for the benefit of its
creditors.
3
4.3 Termination
of License Agreement.
If
either
Party terminates the License Agreement in
its
entirety pursuant to Section 10.2 or 10.3 thereof,
then
either such terminating Party or the other Party may terminate this Agreement
in
its
entirety concurrently
with such termination by providing written notice thereof to the other
Party.
If
either Party terminates the License Agreement with
respect to a particular country pursuant to Section 10.2 or 10.3
thereof,
then
either such terminating Party or the other Party may terminate this Agreement,
solely with
respect to such country, concurrently
with such termination by providing written notice thereof to the other
Party.
4.4 Continuing
Rights of Sublicensees.
Upon
any termination of any license rights granted to Inspire under this Agreement,
each sublicense previously granted by Inspire or any of its Affiliates under
such license rights to any Person that is not an Affiliate of Inspire (each,
an
“Independent
Sublicensee”)
shall
remain in effect and shall become a direct license or sublicense, as the case
may be, of such rights by InSite to such Independent Sublicensee, subject to
(i)
the Independent Sublicensee agreeing in writing to assume Inspire’s terms,
conditions and obligations to InSite under this Agreement as they pertain to
the
sublicensed rights, and (ii) Inspire remaining liable for any liability to
the
Independent Sublicensee incurred by Inspire prior to such
termination.
4.5 Effect
of Expiration or Termination.
(a) Expiration
or termination of this Agreement in its entirety pursuant to this Article 4
shall not (i) relieve a Party hereto of any obligation accruing to such Party
prior to such termination, or (ii) result in the waiver of any right or remedy
by a Party hereto accruing to such Party prior to such termination. Upon
termination of this Agreement in its entirety, all licenses granted to Inspire
by InSite under this Agreement will terminate, and all rights therein will
revert to InSite. Inspire promptly shall cease, and cause its Affiliates and
sublicensees (subject to Section 4.4) promptly to cease, any use of any InSite
Trademarks and Domain Names in the Territory.
(b) Termination
of this Agreement with respect to a particular country pursuant to this Article
4 shall not (i) relieve a Party hereto of any obligation accruing to such Party
prior to such termination, (ii) result in the waiver of any right or remedy
by a
Party hereto accruing to such Party prior to such termination, or (iii) result
in the termination or modification of any rights or obligations of a Party
under
the Agreement not involved in such termination. Upon termination of this
Agreement with respect to a particular country, the licenses granted to Inspire
by InSite under this Agreement solely with respect to such country will
terminate, and all such rights will revert to InSite. Inspire promptly shall
cease, and cause its Affiliates and sublicensees (subject to Section 4.4)
promptly to cease, any use of any InSite Trademarks in such
country.
(c) Notwithstanding
anything to the contrary in this Agreement, the licenses granted to Inspire
by
InSite under this Agreement shall continue during any period in which Inspire
continues to have the right to sell Inspire Licensed Products under Sections
10.6(c) or 10.7(c) of the License Agreement solely in connection with Inspire’s
exercise of its rights as set forth in the License Agreement during such period.
4
ARTICLE
5
MISCELLANEOUS
5.1 Confidentiality.
All
secret, confidential or proprietary information or data, whether provided in
written, oral, graphic, video, computer or other form, provided by a Party
to
the other Party in connection with the activities contemplated by this Agreement
is and will be deemed under the License Agreement to be Confidential Information
of the Party providing such information or data, subject to the limitations
set
forth in Section 1.15 thereof, and will be held in accordance with and subject
to the terms of Article 8 thereof. The terms of this Agreement shall also be
deemed Confidential Information of each Party under the License Agreement,
except to the extent disclosed pursuant to Section 8.4 thereof.
5.2 Assignment.
This
Agreement may not be assigned or otherwise transferred (in whole or in part,
whether voluntarily, by operation of law or otherwise) by either Party without
the prior written consent of the other Party (which consent shall not be
unreasonably withheld); provided, however, that such consent shall not be
required for assignment or transfer of this Agreement in connection with an
assignment or transfer of the License Agreement as permitted under
Section 12.2 thereof. Notwithstanding the foregoing, any such assignment or
transfer to an Affiliate shall not relieve the assigning Party of its
responsibilities for performance of its obligations under this Agreement. The
rights and obligations of the Parties under this Agreement shall be binding
upon
and inure to the benefit of the successors and permitted assigns of the Parties.
Any attempted assignment not in accordance with this Agreement shall be
void.
5.3 Further
Actions.
Each
Party agrees to execute, acknowledge and deliver such further instruments,
and
to do all such other acts, as may be necessary or appropriate in order to carry
out the purposes and intent of this Agreement.
5.4 Notices.
All
notices under this Agreement by one Party to
the
other Party shall be given in
accordance with Section 12.4 of the License Agreement.
5.5 Amendment.
No
amendment, modification or supplement of any provision of this Agreement shall
be valid or effective unless made in writing and signed by a duly authorized
representative of each Party.
5.6 Waiver.
No
provision of this Agreement shall be waived by any act, omission or knowledge
of
a Party or its agents or employees except by an instrument in writing expressly
waiving such provision and signed by a duly authorized officer of the waiving
Party.
5.7 Counterparts;
Facsimile Signatures.
This
Agreement may be executed in counterparts and such counterparts taken together
shall constitute one and the same agreement. This Agreement may be executed
by
facsimile signatures, which signatures shall have the same force and effect
as
original signatures.
5
5.8 Descriptive
Headings.
The
descriptive headings of this Agreement are for convenience only, and shall
be of
no force or effect in construing or interpreting any of the provisions of this
Agreement.
5.9 Governing
Law; Dispute Resolution.
This
Agreement shall be governed and construed in accordance with the laws of the
State of New York, without giving effect to any choice of law provisions
thereof. Prior to bringing any legal action against the other Party, the Parties
shall comply with the dispute resolution procedures required under Section
12.9
of the License Agreement with respect to such dispute.
5.10 Severability.
If any
provision hereof should be held invalid, illegal or unenforceable in any respect
in any jurisdiction, the Parties hereto shall use reasonable efforts to
substitute, by mutual written consent, valid provisions for such invalid,
illegal or unenforceable provisions which valid provisions in their economic
effect are sufficiently similar to the invalid, illegal or unenforceable
provisions that it can be reasonably assumed that the Parties would have entered
into this Agreement with such valid provisions. In case such valid provisions
cannot be agreed upon, the invalid, illegal or unenforceable provisions of
this
Agreement shall not affect the validity of this Agreement as a whole, unless
the
invalid, illegal or unenforceable provisions are of such essential importance
to
this Agreement that it is to be reasonably assumed that the Parties would not
have entered into this Agreement without the invalid, illegal or unenforceable
provisions.
5.11 Entire
Agreement of the Parties.
This
Agreement hereby, together with the License Agreement and the Schedules and
Exhibits hereto and thereto, constitutes and contains the complete, final and
exclusive understanding and agreement of the Parties and cancels and supersedes
any and all prior negotiations, correspondence, understandings and agreements
whether oral or written, between the Parties respecting the subject matter
hereof.
5.12 Independent
Parties.
The
relationship between the Parties created by this Agreement is one of independent
contractors and is not a joint venture, partnership or any similar arrangement.
Neither Party shall have the power or authority to bind or obligate the other
except as expressly set forth in this Agreement.
5.13 Accrued
Rights; Surviving Obligations.
Unless
explicitly provided otherwise in this Agreement, termination, relinquishment
or
expiration of this Agreement for any reason shall be without prejudice to any
rights that shall have accrued to the benefit to any Party prior to such
termination, relinquishment or expiration, including damages arising from any
breach hereunder. Such termination, relinquishment or expiration shall not
relieve any Party from obligations which are expressly indicated to survive
termination or expiration of the Agreement, including, without limitation,
those
obligations set forth in Sections 4.4 and 4.5 and Article
1
(to the extent required to enforce other surviving rights and/or obligations)
and Article 5
hereof.
5.14 Injunctive
Relief.
Inspire
acknowledges and agrees that InSite would be irreparably damaged if any of
the
provisions of this Agreement are not performed by Inspire in accordance with
their specific terms, and that any breach of, threatened breach of, or failure
to perform or comply with, this Agreement by Inspire could not be adequately
compensated in all cases by monetary damages alone. Accordingly, in addition
to
any other right or remedy to which InSite may be entitled at law or in equity,
InSite shall be entitled to temporary, preliminary and permanent injunctive
relief to prevent breaches or threatened breaches of any of the provisions
of
this Agreement, without posting any bond or other undertaking.
6
5.15 Expenses.
Unless
otherwise provided herein, all costs and expenses incurred in connection with
this Agreement and the transactions contemplated hereby shall be paid by the
Party that shall have incurred the same and the other Party shall have no
liability relating thereto.
5.16 No
Third Party Beneficiaries.
No
person or entity other than the Parties hereto and their respective Affiliates,
successors and permitted assigns shall be deemed an intended beneficiary
hereunder or have any right to enforce any obligation of this
Agreement.
5.17 No
Strict Construction.
This
Agreement has been prepared jointly and shall not be strictly construed against
either Party.
[Signature
Page Immediately Follows]
7
IN
WITNESS WHEREOF, duly authorized representatives of the Parties have duly
executed this Agreement as of the Effective Date.
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INSITE
VISION INCORPORATED
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By:
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_______________________________
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Name:
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Title:
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INSPIRE
PHARMACEUTICALS, INC.
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By:
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_______________________________
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Name:
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Title:
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SIGNATURE
PAGE TO TRADEMARK LICENSE AGREEMENT
8
Schedule
1
InSite
Trademarks
Trademarks
U.S.:
DuraSite
DuraSite®
US
Trademark Number: 1769077
AzaSite
AzaSite™
US Trademark Application Number: 78/426,374
Canada:
DuraSite
DuraSite®
Canadian
Registration Number 432299
AzaSite
AzaSite™
Canadian Trademark Application Number 1325128
Domain
Name
xxx.XxxXxxx.xxx
9
