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Exhibit 10.6
CONFORMED COPY
TRADEMARK LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "AGREEMENT") is made and executed
as of July 15, 1999, by and between MTV Networks, a division of Viacom
International Inc., a Delaware corporation with offices at 0000 Xxxxxxxx, Xxx
Xxxx, Xxx Xxxx 00000 (referred to herein as "LICENSOR"), and MTVN Online Partner
I LLC, a Delaware limited liability company with offices at 0000 Xxxxxxxx, Xxx
Xxxx, Xxx Xxxx 00000 (referred to herein as "LICENSEE").
RECITALS
WHEREAS, the parties desire that Licensor grant to Licensee a
license to use the Licensed Marks (as defined below) upon the terms and
conditions set forth herein;
WHEREAS, simultaneously herewith Licensor and Licensee are
entering into a Programming License Agreement pursuant to which, among other
things, Licensor is granting a license to Licensee to use certain programming
and associated intellectual property rights in the operation of the Business;
WHEREAS, the parties agree in principle that the Licensed
Services (as defined below) shall be the primary vehicle for showcasing the
Licensed Marks and Licensor does not intend to license the Licensed Marks to a
competitive music-themed online service in a manner which would be injurious to
the Licensed Services; and
WHEREAS, immediately after the execution of this Agreement
Licensee shall assign to the Partnership (as defined below) all of Licensee's
rights and obligations under this Agreement and under the Programming License
Agreement;
TERMS AND CONDITIONS
NOW, THEREFORE, in consideration of the foregoing recitals,
the mutual covenants and obligations contained herein and for other good and
valuable consideration, the receipt and sufficiency of which is hereby
acknowledged by each party hereto, Licensor and Licensee hereby agree as
follows:
SECTION 1. DEFINITIONS AND INTERPRETATION
(A) Definitions. For purposes of this Agreement, the following
definitions shall apply:
"ADDITIONAL LICENSED MARKS" shall mean the Marks set forth on
EXHIBIT A-3 hereto.
"AFFILIATE" shall have the meaning set forth in the
Organization Agreement.
"AGENTS" shall have the meaning set forth in Section 9(K)
hereof.
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"BUSINESS" shall have the meaning set forth in the Partnership
Agreement as of the date of this Agreement.
"BUSINESS DAY" shall have the meaning set forth in the
Partnership Agreement.
"CONFIDENTIAL INFORMATION" shall have the meaning set forth in
Section 9(K) hereof.
"CONTROL" shall have the meaning set forth in the Organization
Agreement.
"CONTROLLED AFFILIATE" shall have the meaning set forth in the
Organization Agreement.
"FORCE MAJEURE PERIOD" shall have the meaning set forth in
Section 9(Q).
"GOVERNMENTAL ENTITY" shall have the meaning set forth in the
Organization Agreement.
"INDEMNIFIED PARTY" shall have the meaning set forth in
Section 5(E).
"INDEMNIFYING PARTY" shall have the meaning set forth in
Section 5(E).
"LICENSED HOUSE MARKS" shall mean the Marks set forth on
EXHIBIT A-2 hereto.
"LICENSED MARKS" shall mean the Licensed QWERT Xxxx, the
Licensed House Marks, and the Additional Licensed Marks.
"LICENSED QWERT XXXX" shall mean the Xxxx QWERT as set forth
on EXHIBIT A-1 hereto.
"LICENSED SERVICES" shall mean the interactive services of
distributing text, audio and/or video music and music-related and music-themed
services online, and the advertising and promotion of said online distribution
services, all as operated by the Partnership exclusively in the operation of the
Business, but shall not include the manufacture or sale of goods.
"LICENSEE" shall have the meaning set forth in the first
paragraph hereof.
"LICENSOR" shall have the meaning set forth in the first
paragraph hereof.
"MANAGEMENT COMMITTEE" shall have the meaning as set forth in
the Partnership Agreement.
"MARKS" shall mean trademarks, service marks, trade dress and
the good will associated therewith.
"MTV PROGRAMMING" shall have the meaning set forth in the
Programming License Agreement.
"NEWCO STOCKHOLDERS AGREEMENT" shall have the meaning set
forth in the Parent Agreement.
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"ORGANIZATION AGREEMENT" shall mean the Organization Agreement
of even date herewith among Liberty Media Corporation ("Liberty"), TCI Music,
Inc. ("TCI Music"), Licensor, Licensee, Imagine Radio, Inc. ("Imagine"), MTVN
Online Inc., SonicNet, Inc. ("SonicNet"), The Box Worldwide, Inc. ("Box"), VJN
LPTV Corp., and the Partnership.
"PARENT AGREEMENT" shall have the meaning set forth in the
Organization Agreement.
"PARTNERSHIP" shall mean MTVN Online L.P.
"PARTNERSHIP AGREEMENT" shall mean the Agreement of Limited
Partnership of even date herewith among Licensee, Imagine, SonicNet, and Box.
"PERSON" shall have the meaning set forth in the Organization
Agreement.
"PROGRAMMING LICENSE AGREEMENT" shall mean the Programming
License Agreement of even date herewith between Licensor and Licensee.
"REORGANIZATION" shall have the meaning set forth in the
Parent Agreement and Guaranty of even date herewith among TCI Music, MTVN,
Liberty, Box, SonicNet and the Partnership.
"REPRESENTATIVE" shall have the meaning as set forth in the
Partnership Agreement.
"TERM" The Term of this Agreement shall commence on the date
hereof and, unless earlier terminated pursuant to Section 7 hereof, terminate on
the fiftieth anniversary of the date hereof;
"TERRITORY" shall mean the entire world subject to
modification from time to time in accordance with the provisions of Section 2(B)
hereof.
"TUNE STOCKHOLDER GROUP" shall have the meaning as set forth
in the Partnership Agreement.
"WEBSITE" shall mean a set of one or more web pages related by
links specified by its provider, including at least one web page stored at a
network address controlled by, or assigned by a host to, its provider, which is
provided over the internet.
(B) Scope of Terms. The use of the words defined herein shall
include the plural or singular forms of such terms, and the male, female, or
neutral gender thereof, as appropriate.
(C) Reference Terms. The use of the words "herein", "thereof",
"hereinafter", "hereinabove", and other words of similar import shall be deemed
to refer to this Agreement as a whole, and not to a specific section,
subsection, or paragraph thereof; the word "including" and words of similar
import when used in this Agreement shall mean "including without limitation"
unless otherwise specified.
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SECTION 2. GRANT; LICENSE FEE
(A) Grant. Licensor hereby grants to Licensee, on a quitclaim
basis, and Licensee accepts, for the Term and within the Territory, subject to
the terms and conditions herein:
(i) the exclusive license to use and, subject to
Licensor's approval which approval shall be exercised in good faith and
shall not be unreasonably withheld, to sublicense the use of, the
Licensed QWERT Xxxx in connection with the Business, including as a
name of a Website; and
(ii) the exclusive license to use the Additional
Licensed Marks in connection with the Licensed Services, including as
names of Website and including advertising the Licensed Services in any
media, and the exclusive license to use the Additional Licensed Marks
for goods sold or distributed in connection with the Business, each
exercise of such exclusive license to be subject to MTVN's prior
approval in its sole discretion, provided that nothing herein shall
restrict Licensor's ability to use, or to license or otherwise
authorize the use of, the Additional Licensed Marks in any manner with
respect to the excluded businesses listed on the attached Exhibit B;
and
(iii) the non-exclusive license to use the Licensed
House Marks in connection with the Licensed Services. Notwithstanding
the foregoing, Licensee is specifically prohibited from using the
Licensed House Marks in any media other than the Licensed Services,
provided that Licensee may use the Licensed House Marks in advertising
and promotion of the availability on the Licensed Services of
Licensor's programming services.
Notwithstanding the foregoing, Licensee is prohibited from developing or
manufacturing merchandise of any nature bearing the Licensed House Marks or
otherwise applying the Licensed House Marks to any goods or products. Nothing
herein shall restrict Licensor's ability to use the Licensed House Marks, or to
license to third parties the ability to use the Licensed House Marks, in any
manner and in any media whatsoever, including but not limited to use on the
internet, provided that, except in connection with the excluded businesses
listed on Exhibit B, (a) during the first three (3) years of the Term, Licensor
shall not use or license the use of the Licensed House Marks in connection with
any service which if operated by the Partnership would be a Licensed Service,
except for advertising, sponsorship and promotion consistent with past practice,
and (b) thereafter, during the remainder of the Term, Licensor shall not have
the right to use or to license the use of the Licensed House Marks as a domain
name of or to brand or co-brand a service which if operated by the Partnership
would be a Licensed Service. Licensee shall have no right to grant any
sublicense or further license of the Additional Licensed Marks or Licensed House
Marks to any party, provided, however, that Licensee shall have the right to
exercise the licenses granted hereunder through its wholly-owned subsidiaries.
(B) Limitations. Licensor may from time to time notify
Licensee of any country or jurisdiction in which the Licensed Marks, or any of
them, are not to be used in connection with the Business and/or the Licensed
Services because Licensor has reasonably determined that such use may infringe
upon the rights of any Person or is otherwise determined by Licensor in the
exercise of its reasonable judgment to be contrary to any law, in violation of a
court order or materially
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detrimental to the distinctiveness of, or likely to cause substantial dilution
to, the Licensed Marks. Upon receipt of such notice, Licensor will terminate its
use of the said Licensed Xxxx or Licensed Marks in connection with the Business
and/or the Licensed Services in such country or jurisdiction. Without limiting
the foregoing, pursuant to Licensor's agreements related to the Tricast/Asia
joint venture referenced in Exhibit B hereto, and for as long as such agreements
are binding on Licensor, Licensee shall have no right to own or operate any
Licensed Service which is targeted to 15 - 24 year old audiences in Asia (as
defined in accordance with the definition of the Asia "Territory" set forth in
paragraph 1 of Schedule 1 to the Parent Agreement) and branded with any of the
following trademarks or service marks: MTV, MTV: MUSIC TELEVISION, MTV: MUSIC
TELEVISION & Design, MTV ONLINE, MTV ONLINE & Design, or XXX.XXX.
(C) Reserved Rights. Licensor reserves all rights that are not
specifically granted to Licensee herein, in all media (now known or hereafter
developed), in, with respect to, or related to the Licensed Marks. Licensee
shall not use any Licensed Xxxx as a part of its corporate or trade name without
the express prior written approval of Licensor.
(D) Contribution to Capital. The license under this Agreement
shall be a royalty-free contribution to capital from Licensor to Licensee.
SECTION 3. USE OF THE LICENSED MARKS
(A) Manner of Use of Licensed Marks. Licensee shall use the
Licensed Marks only in the form and manner prescribed from time to time by
Licensor, and shall not use any other trademark, service xxxx, symbol, design,
trade name or like indicia in combination with any Licensed Xxxx without the
express prior written consent of Licensor. No Website operated by Licensee under
the Licensed Marks shall contain a link to any other Website or be operated as a
co-branded Website without the express prior written consent of Licensor. Before
authorizing any link to a Website operated by Licensee under the Licensed Marks
from any other Website, Licensee shall notify Licensor of the proposed link, and
Licensee shall not authorize such link if Licensor promptly notifies Licensee
that in Licensor's opinion, exercised in good faith, there is a reasonable basis
to believe that the proposed link would be detrimental to Licensor. Licensee
acknowledges that it is familiar with the high standards, quality, style and
image of programming produced by Licensor and its Controlled Affiliates and
agrees to use the Licensed Marks in a manner that is consistent with such high
standards, quality, style and image. Licensee shall use the Licensed Marks only
pursuant to the license granted hereby, only in a manner which will ensure no
loss by Licensor of any rights in any of the Licensed Marks, and only in
compliance with such rules, standards, instructions and other requirements as
Licensor may from time to time prescribe. Licensee's right to use the Licensed
Marks is limited to such uses as are expressly authorized hereunder, and any
unauthorized use thereof shall constitute an infringement of Licensor's rights
and a material breach of this Agreement. Licensee acknowledges and agrees that
Licensor's approval of or consent to any specific use of any Licensed Xxxx does
not constitute approval of or consent to any other use.
(B) Trademark Notices. Each use by Licensee of any Licensed
Xxxx shall be accompanied by a registration symbol or other trademark symbol as
directed by Licensor. The Website shall contain a statement indicating that
Licensor is the owner of the said Licensed Xxxx and that Licensee is using said
Licensed Xxxx solely as an independent licensee.
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(C) Approvals. Before each use of a Licensed Xxxx, Licensee
will submit to Licensor for Licensor's prompt approval one sample of the textual
or graphic element or other item showing the use of the Licensed Xxxx, and
Licensee shall not make any use without the express prior written consent of
Licensor. If Licensor disapproves of any sample, such item shall not be used by
Licensee in any manner. Without limiting any other provision of this Agreement,
day-to-day changes in the content presented with the Licensed Marks shall not be
considered "uses" for purposes of this Section 3(C). Licensor has the continuing
right to reexamine any item using any Licensed Xxxx or any other use by Licensee
of any Licensed Xxxx, and Licensor may require Licensee to cease using any such
item or otherwise discontinue or modify such use of any Licensed Xxxx if
reasonably necessary to conform Licensee's use of the Licensed Xxxx so as to be
consistent with the current commercial impression for the Licensed Xxxx then
being maintained by Licensor. In addition, Licensor shall have the right of
final approval with respect to the representation of the Licensed Marks as used
by Licensee, including but not limited to the manner in which the Licensed Marks
are used in association with, and to identify, the Licensed Services and the
Business.
(D) Discontinuance of Specific Uses. Licensee shall not do or
suffer to be done any act or thing which would adversely affect the Licensed
Marks or reduce their value or detract from their reputation. Licensor shall
have the right to request that Licensee immediately cease a particular use of
the Licensed Marks or a particular component or feature of the Licensed Services
if in Licensor's reasonable opinion such use, component or feature would
denigrate or otherwise adversely affect the Licensed Marks or Licensor's
intellectual property rights or the goodwill therein.
(E) Inspections. Licensor's representatives shall have the
right to inspect all facilities utilized by Licensee in connection with
Licensee's use of the Licensed Marks and in connection with the Licensed
Services at any time during normal business hours, on reasonable prior notice.
(F) Copyright and Trademark Ownership. Licensee acknowledges
that Licensor is the owner of all concepts, trademarks and copyrights in
copyrightable subject matter comprised in the Licensed Marks, and Licensee
undertakes to execute any instruments, acknowledgments, assignments or similar
documents Licensor deems reasonably necessary or advisable to confirm or
effectuate Licensor's ownership thereof.
(G) Compliance with Laws. Licensee shall comply with all
applicable laws and regulations and obtain all necessary or appropriate
government approvals and permits pertaining to the use of the Licensed Marks and
the offering and provision of the Licensed Services.
(H) Competing Marks. Licensee agrees that during the Term it
shall not promote or distribute any products or services, or enter into any
contractual relationship with a third party to do same, under any trademark,
service xxxx, symbol, design, trade name or like indicia which in Licensor's
reasonable opinion is confusingly similar to the Licensed Marks or competitive
with the businesses associated with the Licensed House Marks and/or Additional
Licensed Marks.
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SECTION 4. PROTECTION OF THE LICENSED MARKS
(A) Licensed Marks Exclusive Property of Licensor. Subject
only to the license rights granted to Licensee in this Agreement, Licensee
recognizes and acknowledges Licensor's exclusive ownership and title to the
Licensed Marks and the good will associated therewith. For all purposes of the
relationship between Licensor and Licensee created hereunder, Licensor shall be
deemed to be the sole and exclusive owner of all right, title and interest in
and to the Licensed Marks in all forms and embodiments thereof, subject only to
the specific rights granted to Licensee hereunder. Licensee agrees that its use
of the Licensed Marks, and all associated goodwill generated thereby, inures to
the sole benefit of Licensor in accordance with its rights in those Licensed
Marks. Licensee specifically acknowledges that the rights granted to it pursuant
to this Agreement shall not prevent or prohibit Licensor or any licensee of
Licensor from commercializing or otherwise utilizing (and retaining all profits
from) the Licensed Marks in any endeavor, except for the restrictions expressly
set forth herein.
(B) Licensee Has No Right of Ownership in Licensed Marks.
Nothing contained in this Agreement shall be construed to confer upon Licensee
or to vest in Licensee any right of ownership to the Licensed Marks, and
Licensee shall not, directly or indirectly, register or cause to be registered,
in any country or with any Governmental Entity any trademark, trade name,
service xxxx or other intellectual property right consisting of or substantially
similar to any of the Licensed Marks.
(C) Licensee Will Not Challenge Licensor's Ownership of Marks.
During the Term and thereafter, Licensee will not, and will not assist any
Person to: (i) challenge the validity or Licensor's ownership of, or right to
license, the Licensed Marks or any registration or application for registration
therefor; (ii) contest the fact that Licensee's rights under this Agreement are
solely those of a Licensee and terminate upon termination or expiration of this
Agreement; and (iii) represent in any manner that it has any title or right to
the ownership, registration or use of the Licensed Marks in any manner except as
set forth in this Agreement.
(D) Additional Registrations. With respect to any country or
jurisdiction in the Territory in which Licensor does not have registration(s) of
a Licensed Xxxx or Licensed Marks, Licensee may request that Licensor file
application(s) for same. Upon any such request by Licensee from time to time
during the Term, Licensor will, provided that Licensor agrees in its sole
opinion and exclusive discretion that filing such application(s) and obtaining
such registration(s) is necessary and advisable, take reasonable steps to file
such requested application(s) and obtain such registration(s). All costs and
expenses of filing such requested applications and in obtaining and thereafter
maintaining registrations (including, without limitation, the execution of all
necessary registered user or similar agreements) with applicable Governmental
Entities, except as such costs and expenses relate solely to registration or
maintenance of Licensed House Marks, shall be borne solely by Licensee.
(E) Infringements. Licensee shall use its reasonable best
efforts to monitor any infringement of the rights granted hereunder and to
monitor any other unauthorized uses or misuses ("infringements") in the
Territory of any of the Licensed Marks, and shall promptly notify Licensor of
any such infringements it discovers. Licensee agrees to use its reasonable best
efforts and cooperate with Licensor, upon Licensor's request, in terminating
infringements of the Licensed
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Marks and undertakes to furnish any documentary evidence or evidentiary
materials which Licensor may reasonably require for the purpose of terminating
such infringements. In addition, Licensee undertakes to use its reasonable best
efforts to assist and cooperate with Licensor in the prosecution of any
lawsuits, legal actions or other proceedings which, in the opinion of Licensor,
are necessary or advisable to protect the Licensed Marks, including, at
Licensor's request, participating in such proceedings as a party. All costs and
expenses of proceedings to terminate infringements, other than with respect to
infringements relating solely to Licensed House Marks, which in Licensor's
reasonable opinion have or could have an adverse effect on the Business or the
Licensed Services shall be borne by Licensee. The right to protect the Licensed
Marks, as well as the right to determine in all respects the manner of
protection, shall at all times rest exclusively with Licensor.
SECTION 5. REPRESENTATIONS, WARRANTIES AND INDEMNITIES
(A) Licensor's Representations and Warranties. Licensor
represents and warrants that:
(1) Licensor is the owner in the United States of (i)
the Licensed House Marks and the Additional Licensed Marks and (ii)
registrations and/or applications for registration of the Licensed House Marks
and certain of the Additional Licensed Marks filed in the United States Patent
and Trademark Office.
(2) To the best of Licensor's knowledge the Licensed
House Marks and the Additional Licensed Marks are not subject to any security
interests recorded in the United States Patent and Trademark Office.
(B) Licensee's Representations and Warranties. Licensee
represents and warrants that:
(1) Licensee is a limited liability company duly
formed, validly existing and in good standing as a limited liability
company under the laws of the State of Delaware and has the requisite
limited liability company power and authority to own, lease and operate
its assets and its businesses as currently being conducted.
(2) Licensee has the requisite limited liability
company power and authority to enter into and perform this Agreement;
the execution, delivery and performance by Licensee of this Agreement
have been duly authorized by all required limited liability company
action on its part and, if required, by its sole member, and this
Agreement has been duly executed and delivered by it.
(3) This Agreement is a legal, valid and binding
obligation of Licensee enforceable against Licensee in accordance with
its terms.
(4) Licensee shall not make any direct or indirect
use of the Licensed Marks other than as permitted in this Agreement.
(C) Indemnification by Licensee. Licensee hereby indemnifies
and holds Licensor and its Affiliates and the officers, directors, shareholders,
employees and agents of any of the foregoing harmless against any liability,
losses, damages, penalties, claims, actions, suits,
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judgments or settlements of any nature or kind (including reasonable costs of
investigation, reasonable attorneys', accountants' and expert witnesses' fees,
and reasonable expenses payable to third parties), incurred by any such Person
by reason of Licensee's use of the Licensed Marks in violation of this
Agreement, the untruth of or any breach of Licensee's representations and
warranties contained herein, or any failure by Licensee to perform any agreement
or covenant contained in this Agreement.
(D) Indemnification by Licensor. Licensor hereby indemnifies
Licensee and its Affiliates and the officers, directors, shareholders, employees
and agents of any of the foregoing and holds them harmless against any
liability, losses, damages, penalties, claims, actions, suits, judgments or
settlements of any nature or kind (including reasonable costs of investigation,
reasonable attorneys', accountants' and expert witnesses' fees, and reasonable
expenses payable to third parties) incurred by such Person by reason of the
untruth of or any breach of Licensor's representations and warranties contained
herein, or any failure by Licensor to perform any agreement or covenant
contained in this Agreement.
(E) Notice of Claim.
(i) For purposes of this Section 5(E), any Person
entitled to indemnification under Sections 5(C) or 5(D) shall be known as an
"Indemnified Party" and any Person or entity liable to indemnify an Indemnified
Party shall be known as an "Indemnifying Party". The Indemnified Party shall
notify the Indemnifying Party as soon as practicable after the Indemnified Party
receives notice of or otherwise has actual knowledge of such claim, and shall
provide to the Indemnifying Party as soon thereafter as practicable all
information and documentation necessary to support and verify the claim being
asserted, and the Indemnifying Party shall be given access to all books and
records in the possession or control of the Indemnified Party which the
Indemnifying Party reasonably determines to be related to such claim.
(ii) Promptly after receipt by an Indemnified Party
of notice of the commencement by any Person of any action, suit or proceeding
which might result in the Indemnifying Party becoming obligated to indemnify or
make any other payment to the Indemnified Party under this Section 5(E), the
Indemnified Party shall, if a claim in respect thereof is to be made against the
Indemnifying Party pursuant to this Section 5, notify the Indemnifying Party
promptly in writing of the commencement thereof. The failure of the Indemnified
Party to so notify the Indemnifying Party shall not relieve the Indemnifying
Party from any liability which it may have on account of this indemnification or
otherwise, except to the extent that the Indemnifying Party is materially
prejudiced thereby. The Indemnifying Party shall have the right, within thirty
days after being so notified, to assume the defense (at its expense) of such
action, suit or proceeding with counsel reasonably satisfactory to the
Indemnified Party. In any such action, suit or proceeding the defense of which
the Indemnifying Party shall have so assumed, the Indemnified Party shall have
the right to participate therein and retain its own counsel at its own expense;
provided, however, that such Indemnified Party's counsel shall be retained at
the Indemnifying Party's expense if (A) the Indemnified Party and the
Indemnifying Party so agree or (B) the named parties to any such action, suit or
proceeding (including the impleaded parties) include both the Indemnified Party
and the Indemnifying Party and representation of both the Indemnified Party and
the Indemnifying Party by the same counsel would be inappropriate due to actual
or potential differing interests between them. The Indemnifying Party shall
promptly defend any claim subject to indemnification hereunder, but
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no Indemnifying Party shall settle any claim without the prior approval of the
Indemnified Party, which approval shall not be unreasonably withheld. To the
extent that the settlement of such an action or proceeding, the defense of which
has been assumed by the Indemnifying Party, involves payment of money, the
Indemnifying Party shall have the right, in consultation with the Indemnified
Party, to settle those aspects dealing only with the payment of money.
Notwithstanding the foregoing, in connection with any such defense or settlement
(which defense has been assumed by the Indemnifying Party in accordance with
this clause (iii)), the Indemnifying Party shall not enter into a consent decree
or consent to judgment involving injunctive or other non-monetary relief or
consent to an injunction without the Indemnified Party's written consent, which
consent shall not be unreasonably withheld. The Indemnified Party shall
cooperate, and shall use its reasonable best efforts to cause its employees and
the employees of any of its respective Controlled Affiliates to cooperate with
the Indemnifying Party in the defense of any action, suit or proceeding assumed
by the Indemnifying Party. Notwithstanding any and all of the foregoing, to the
extent that any claim arises out of or is related to the Licensed Marks or any
use of the Licensed Marks, Licensor shall have the sole right to select counsel
for the defense of such claim and to control the defense, settlement or
compromise of such claim.
(iii) Each Indemnifying Party's obligation under this
Section 5(E) shall (A) not affect the other party's right to seek any remedy
upon a default by the Indemnifying Party under this Agreement and (B) survive
the termination for any reason of this Agreement.
SECTION 6. REQUIRED INSURANCE
(A) Liability Insurance. At all times during the term of this
Agreement, Licensee shall provide and maintain at Licensee's sole cost and
expense, general public liability insurance protecting Licensee and Licensor
against claims brought in connection with the Business in an amount not less
than Five Million Dollars ($5,000,000.00) per occurrence, combined single limit,
and designating Licensor as an additional insured.
(B) Certificate of Insurance. A certificate of the policy
required to be provided by Licensee pursuant to Section 6(A) shall be delivered
to Licensor within thirty (30) days after the execution of this Agreement. Said
insurance policy shall be timely renewed, and upon each renewal Licensee shall
deliver a renewal Certificate of Insurance to Licensor prior to the expiration
date of the existing term of the said policy. Should Licensee fail to supply
Licensor with such certificate or renewal certificate within the foregoing time
limits, provided that Licensor has given written notice to Licensee and Licensee
has failed to provide such certificate within ten (10) days after such notice,
Licensor may, in Licensee's name and on Licensee's behalf, provide any such
insurance as to which such certificates are not supplied and Licensor shall be
reimbursed forthwith by Licensee for all sums so expended.
SECTION 7. TERMINATION
(A) Termination by Consent. This Agreement may be terminated
by the mutual written consent of Licensor and Licensee.
(B) Automatic Termination. This Agreement shall terminate
automatically in the event of (i) the termination of the Programming License
Agreement pursuant to the provisions of
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Section 8(d) thereof by reason of a material breach of the Programming License
Agreement by Licensee, or (ii) any insolvency of Licensee, or upon the
appointment of any receiver, administrator, liquidator, or trustee to take
possession of the properties of Licensee or upon the winding-up, sale,
consolidation, merger or any sequestration by governmental authority of
Licensee.
(C) Partial Termination. In the event that (i) any of the
Licensed Marks are determined to be invalid or infringing in any given country
or jurisdiction within the Territory or (ii) Licensor reasonably determines that
the use or continued use of any of the Licensed Marks in any given country or
jurisdiction is contrary to any laws, in violation of a court order or
materially detrimental to Licensor, Licensor shall have the right to terminate
this Agreement as to any such Licensed Xxxx in such country or jurisdiction upon
notice to Licensee.
(D) Termination for Breach. Licensor shall have the right to
terminate this Agreement, upon thirty days notice to Licensee and the Tune
Stockholders Group, in the event: (a) of the breach of any material provision
hereof by Licensee, including but not limited to the provisions of Sections
2(A), 2(B), 2(C), 3, 4, 5, 9(I), and 9(K), which has remained uncured for thirty
(30) days following notice of such breach from Licensor, or (b) the Business is
abandoned, or otherwise ceases to operate on an ongoing basis or is operated by
Licensee other than under the Licensed Marks for a period of thirty (30) days;
provided, however, that if any such event shall occur and remain uncured after
such initial 30 day cure period, then, if at the time of such breach, Licensor
owned a majority of outstanding equity ownership of Licensee and at such time
the Tune Stockholder Group met the Tune Minimum Condition (as defined in the
Partnership Agreement) then, Licensor shall give further written notice thereof
to the Tune Stockholder Group and Licensee, and Tune shall in accordance with
the provisions of the Partnership Agreement have an additional period of thirty
(30) days to effect such cure and Licensor shall not be entitled to terminate
this Agreement until the conclusion of such additional 30 day cure period.
SECTION 8. EFFECT OF TERMINATION OR EXPIRATION
(A) Immediate Termination. Upon expiration or termination of
this Agreement for any reason, Licensee's right to use the Licensed Marks will
terminate immediately, and this Agreement shall cease except that all
obligations of the parties under this Agreement which accrue or are due with
respect to periods prior to, or as of, such termination or expiration, and all
obligations which expressly survive the expiration or termination of this
Agreement shall continue in full force and effect subsequent to and
notwithstanding the expiration or termination of this Agreement.
(B) Use of Licensed Marks. Upon expiration or termination of
this Agreement for any reason, Licensee shall (i) discontinue immediately all
use of the Licensed Marks, (ii) execute any documents requested by Licensor to
confirm the ownership by Licensor of its right, title and interest in and to any
of the Licensed Marks, (iii) cooperate with Licensor and any of its appointed
agents to inform the appropriate authorities of such termination, and (iv)
destroy all materials that contain, refer to or relate to the Licensed Marks,
whether provided to Licensee by Licensor or created or developed by Licensee or
by any third party. All rights in the Licensed Marks and the goodwill connected
therewith shall remain the property of Licensor upon expiration or termination.
Within forty-five (45) days of expiration or termination Licensee shall provide
Licensor with a
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Certificate of Destruction of all materials that contain, refer to or relate to
the Licensed Marks, whether provided to Licensee by Licensor or created or
developed by Licensee or by any third party.
SECTION 9. GENERAL PROVISIONS
(A) Headings. The headings of the Sections and other
subdivisions of this Agreement are for convenience of reference only and shall
not modify, define or limit any of the terms or provisions of this Agreement.
(B) Governing Law. This Agreement shall be governed by and
construed and enforced in accordance with the laws of the State of New York,
without giving effect to any of its conflicts of law provisions.
(C) Severability. If any provision of this Agreement shall be
held to be illegal, invalid or unenforceable, that provision will be enforced to
the maximum extent permissible so as to effect the intent of the parties and the
validity, legality and enforceability of the remaining provisions shall not in
any way be affected or impaired thereby. If necessary to effect the intent of
the parties, the parties will negotiate in good faith to amend this Agreement to
replace the unenforceable language with enforceable language which as closely as
possible reflects such intent.
(D) Amendments. This Agreement may be modified or amended only
by a written amendment signed by each party hereto.
(E) Counterparts. This Agreement may be executed in one or
more counterparts (and all signatures need not be on any one such counterpart),
with all such counterparts together constituting one and the same instrument.
(F) Entire Agreement. This Agreement contains the entire
agreement of the parties with respect to the subject matter hereof and
supersedes any and all prior agreement and understandings, whether written or
oral, with respect to the subject matter hereof, including the letter agreement
dated May 19, 1999 among Viacom International Inc., Liberty, and TCI Music.
(G) No Presumption. This Agreement shall be construed without
regard to any presumption or rule requiring construction or interpretation
against the party drafting or causing any instrument to be drafted.
(H) Consents and Approvals; Waivers; Remedies. All consents
and approvals which may be given under this Agreement shall, as a condition of
their effectiveness, be in writing. The granting by a party hereto of any
consent to or approval of any act requiring consent or approval under the terms
of this Agreement, or the failure on the part of a party to object to any such
action taken without the required consent or approval, shall not be deemed a
waiver by the party whose consent was required of its right to require such
consent or approval for any other act. The observance of any provision of this
Agreement may be waived (either generally or in a particular instance and either
retroactively or prospectively) by the party or parties entitled to enforce such
term, but any such waiver shall be effective only if in a writing signed by the
party or parties against which such waiver is to be asserted and only in the
specific instance and for the specific purpose for which given. Except as
otherwise provided herein, no failure or delay of any party in exercising any
power or right under this Agreement shall operate as a waiver thereof, nor shall
any single or partial
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exercise of any such right or power, or any abandonment or discontinuance of
steps to enforce such right or power, preclude any other or further exercise
thereof or the exercise of any other right or power.
(I) Assignment. This Agreement and all of the provisions
hereof shall be binding upon and inure to the benefit of the parties hereto and
their respective successors and permitted assigns, but neither this Agreement
nor any of the rights, interests or obligations hereunder shall be assigned by
any party hereto (whether by operation of law or otherwise) without the prior
written consent of the other party hereto except that immediately after the
execution of this Agreement as part of Licensee's initial contribution to the
Partnership, Licensee shall assign all of its rights and obligations hereunder
to the Partnership and the Partnership shall accept and assume the same in
accordance with the terms of the VLLC Contribution, Assignment and Assumption
Agreement dated as of the date hereof between Licensee and the Partnership,
whereupon the Partnership shall be substituted for Licensee in all respects as
fully as if it had been an original party hereto. Upon such assignment and
assumption, Licensee shall be released from all of its obligations hereunder. In
connection with the Reorganization, the Partnership shall assign all of its
rights and obligations hereunder to the corporate successor to all or
substantially all of the Partnership's assets pursuant to an assignment and
assumption agreement in form and substance reasonably satisfactory to Licensor
and such corporate successor shall accept and assume the same. Upon such
assignment and assumption, the Partnership shall be released from all of its
obligations hereunder.
(J) Survival of Covenants. The provisions contained in this
Agreement in Sections 3(F), 4, 5, 8 and 9 shall survive the termination of this
Agreement.
(K) Confidentiality. Licensee and each of its wholly-owned
subsidiaries shall, and shall use its reasonable best efforts to cause its and
their respective officers, directors, employees, attorneys, accountants, and
agents (collectively, "AGENTS") to, keep secret and retain in strictest
confidence any and all Confidential Information, and shall not disclose such
Confidential Information, and shall use its reasonable best efforts to cause its
Agents not to disclose such Confidential Information, to any Person other than
Licensee, its wholly-owned subsidiaries, or their respective Agents, except (i)
for such disclosures as may be required by law or legal process, disclosures to
Licensee's counsel, or disclosures pursuant to any listing agreement with, or
the rules or regulations of, any securities exchange on which securities of
Licensee or any such wholly-owned subsidiary are listed or traded (in which
event Licensee shall so notify Licensor as promptly as practicable (and, if
possible, prior to making such disclosure) and shall seek confidential treatment
of such information) (ii) as may be necessary to establish or enforce its rights
hereunder; and (iii) with the prior written consent of Licensor. For purposes of
this Section 9(K), "CONFIDENTIAL INFORMATION" shall mean (1) the terms of this
Agreement and (2) all business and technical information relating to Licensor's
businesses that is proprietary to Licensor or otherwise not available to the
general public; provided, however, that such Confidential Information shall not
include any information that (a) is or has become generally available to the
public other than as a result of a disclosure by Licensee, its wholly-owned
subsidiaries or its Agents, (b) has been independently developed by Licensee or
a Controlled Affiliate of Licensee or (c) is, or becomes available to Licensee
or a Controlled Affiliate of Licensee on a non-confidential basis from a third
party having no obligation of confidentiality to a party hereto and which has
not itself received such information directly or indirectly in breach of any
obligation of confidentiality.
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(L) Equitable Relief. Licensee acknowledges that the Licensed
Marks are of a unique and original character giving them peculiar value, the
loss of which cannot be compensated in damages in an action at law. Licensee
further agrees and acknowledges that, in addition to all other rights that
Licensor may have, Licensor shall be entitled as a matter of right without
further notice to Licensee, to obtain injunctive and/or other equitable relief,
as the law may allow, against any threatened, potential or actual breach by
Licensee of any of the provisions hereof.
(M) Third Party Beneficiary. For so long as the Tune
Stockholder Group meets the Tune Minimum Condition, TCI Music shall be a third
party beneficiary of Licensor's obligations to the Partnership hereunder insofar
as and only to the extent that it shall be entitled to enforce the Partnership's
rights hereunder in a separate cause of action for the benefit of the
Partnership. The Partnership shall indemnify and hold harmless TCI Music from
and against any costs and expenses (including reasonable attorneys' fees)
incurred by it in pursuing such a cause of action if such cause of action is
resolved in favor of the Partnership and/or TCI Music. Except as set forth in
the first sentence of this Section 10(M), this Agreement is for the sole benefit
of the parties hereto and their respective successors and permitted assigns and
nothing herein, express or implied, is intended to or shall confer upon any
Person other than such parties any legal or equitable right, benefit or remedy
of any nature whatsoever under or by reason of this Agreement.
(N) Further Assurances. Licensee shall assist and cooperate
with Licensor, at Licensor's request and expense, in registering, renewing,
recording or otherwise protecting the Licensed Marks, and shall execute and
deliver any documents, affidavits, user information and other materials
requested by Licensor to be executed and delivered by Licensee in connection
therewith including, without limitation, if Licensor considers it advisable, the
recording of Licensee as a licensee or registered user of any or all of the
Licensed Marks in any jurisdiction with any Governmental Entity or other
authority. Licensee shall execute and deliver any documents submitted to
Licensee by Licensor for this purpose. Likewise, if any such recording is to be
terminated or canceled, Licensee shall execute any documents, affidavits, and
related materials submitted to it by Licensor for this purpose. Without
limitation of the foregoing, both during the Term and after the expiration or
termination of this Agreement, Licensee shall, upon Licensor's request,
acknowledge in writing Licensor's prior exclusive right, title and interest in
and to the Licensed Marks.
(O) Notices. Except as expressly provided herein, notices and
other communications provided for herein shall be in writing and shall be
delivered by hand or overnight courier service, mailed (certified or registered
mail, postage prepaid, return receipt requested) or sent by facsimile copier of
the sending party, as follows:
If to Licensor:
MTV Networks
0000 Xxxxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Fax No.: 000-000-0000
Attention: General Counsel
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If to the Licensee:
MTVN Online Partner I L.L.C.
0000 Xxxxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Fax No.: 000-000-0000
Attention: Chief Executive Officer
or to such other address or attention of such other Person as any party shall
advise the other parties in writing. All notices and other communications given
to a party in accordance with the provisions of this Agreement shall be deemed
to have been given (i) three Business Days after the same are sent by certified
or registered mail, postage prepaid, return receipt requested, (ii) when
delivered by hand or transmitted by facsimile (confirmation received) unless
delivered on a day which is not a Business Day or after 5:00 p.m., local time,
at the place of receipt, in which case such notice shall be deemed to have been
given on the next succeeding Business Day or (iii) one Business Day after the
same are sent by a reliable overnight courier service, with acknowledgment of
receipt.
(P) Jurisdiction; Venue.
(i) Each party hereby irrevocably and unconditionally
submits, for itself and its property, to the jurisdiction of any New
York State court sitting in the County of New York or any federal court
of the United States of America sitting in the Southern District of New
York, and any appellate court from any such court, in any suit, action
or proceeding arising out of or relating to this Agreement, or for
recognition or enforcement of any judgment relating hereto.
(ii) Each party hereby irrevocably and
unconditionally waives, to the fullest extent it may legally and
effectively do so, any objection which it may now or hereafter have to
the laying of venue of any suit, action or proceeding arising out of or
relating to this Agreement in any New York State court sitting in the
County of New York or any federal court sitting in the Southern
District of New York, and any appellate court from any such court. Each
party hereby irrevocably waives, to the fullest extent permitted by
law, the defense of an inconvenient forum to the maintenance of such
suit, action or proceeding in any such court and further waives the
right to object, with respect to such suit, action or proceeding, that
such court does not have jurisdiction over such party. Each party
hereby irrevocably waives the right to a jury trial in any suit, action
or proceeding arising out of or related to this Agreement.
(Q) Force Majeure. In the event that during the Term, either
party is unable to perform its obligations under this Agreement by reason of
causes beyond its reasonable control including but not limited to civil or
industrial disturbances, acts of God, strikes, floods, natural disasters, riots,
insurrections, embargoes, blockages, restrictions or regulations or orders of
any Governmental Entity, then such non-performance shall not be deemed to be a
breach of this Agreement and shall be deemed excused but only for so long as the
causes of such non-performance shall remain in effect; provided, however, that
the party so affected shall use its reasonable best efforts to avoid or remove
such causes of nonperformance and shall continue performance hereunder with the
utmost dispatch whenever such causes are removed. In the event the force
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majeure event(s) result in the non-performance of this Agreement for a
continuous two-year period (the "Force Majeure Period"), this Agreement shall
then terminate with respect to the jurisdiction(s) in the Territory affected by
such force majeure event(s); provided, however, that such termination shall not
become effective until Licensor has provided Licensee with ten (10) days prior
written notice of such termination. Such notice may be provided to Licensee any
time after the Force Majeure Period.
(R) Binding on Viacom. The parties acknowledge that Licensor
is a division of Viacom and that, consequently, Viacom is obligated to perform
the obligations to be performed by Licensor hereunder. Insofar as this Agreement
refers to Licensor in the context of an operating business, it shall refer only
to the operating unit or units of Viacom that on a day-to-day basis operate the
business of MTV: Music Television or VH1 Music First.
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IN WITNESS WHEREOF, the parties have caused this Agreement to
be executed, effective as of the date first set forth above.
MTV NETWORKS, a division of Viacom
International Inc.
By: /s/ Xxxxx X. Xxxxxxx
----------------------------------------
Name: Xxxxx X.Xxxxxxx
Title: Sr. Vice President, General
Counsel and Assistant Secretary
MTVN ONLINE PARTNER I LLC
By: Xxxxx X. Xxxxxxx
----------------------------------------
Name: Xxxxx X. Xxxxxxx
Title: Sr. Vice President, General
Counsel and Assistant Secretary
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EXHIBIT A-1
LICENSED QWERT XXXX
QWERT
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EXHIBIT A-2
LICENSED HOUSE MARKS
MTV
VH1
MTV: MUSIC TELEVISION
VH1 MUSIC FIRST
VH1 MUSIC FIRST LOGO (EXCLUDING JURISDICTION OF GERMANY)
MTV MUSIC TELEVISION & DESIGN
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EXHIBIT A-3
ADDITIONAL LICENSED MARKS
MTV ONLINE
VH1 ONLINE
XXX.XXX
XX0.XXX
MTV ONLINE & DESIGN
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EXHIBIT B
EXCLUDED BUSINESSES
Services provided from time to time by:
1. Tricast/Asia, a joint venture of MTVN or an Affiliate
and Tricast (or its successor) to operate an "MTV"
branded interactive consumer service based on the MTV
Asia television services;
2. MTV Brasil, a joint venture between MTVN or an
Affiliate and Abril S.A. (or its successor) to
operate the MTV Brasil television service and an
internet site based on such service;
3. MTV Russia, a channel licensee to which MTVN has
granted the right to advertise and promote the MTV
Russia channel via any media, including the internet;
4. MTV Australia, a channel licensee, until such time as
it terminates its improper internet site use;
provided, that MTVN shall not materially expand the
scope of rights granted as of the date hereof in
connection with any of the foregoing.
