TRADEMARK LICENSE AGREEMENT
AGREEMENT, dated as of October 31, 1998 among XXX.Xxxxxx, Inc., a
Delaware corporation having an office located at 0000 Xxxxxxxx, Xxx Xxxx, Xxx
Xxxx 00000 ("Licensor") and xxxxxxxxxxxxxx.xxx llc, a Delaware limited liability
company having an office located at 00 Xxxxx Xxxxxx, 00xx Xxxxx, Xxx Xxxx, Xxx
Xxxx 00000 ("Licensee").
WHEREAS, Licensor is the registered owner of the trademarks set forth
on Schedule 1 attached hereto (collectively, the "Trademark") and uses the
Trademark in the operation of its business.
NOW, THEREFORE, in consideration of the mutual promises and
agreements herein contained and for other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, the parties hereto
hereby agree as follows:
1. Grant of License. Licensor hereby grants to Licensee a
non-exclusive, perpetual (except as set forth in Section 2 below), worldwide
right and license (the "License") to use the Trademark in the operation of the
Business (as such term is defined in the Amended and Restated Limited Liability
Company Agreement of Licensee (the "LLC Agreement"; capitalized terms used
herein without definition shall have the meanings assigned to them in the LLC
Agreement), and to sublicense the Trademark as the USO Managers, in their sole
discretion, see fit in connection with the operation of the Business, all on the
terms and conditions set forth herein. Nothing in the License is intended to
permit Licensee to use the Trademark for any other purpose.
2. Term; Effects of Termination. (a) The term of this Agreement (the
"Term") shall commence on the date hereof and shall continue until terminated as
provided herein. Licensor may terminate this Agreement, on prior written notice
to Licensee, in the event that: (i) Licensee is in default of the terms of this
Agreement and such default continues for more than thirty (30) days after
written notice thereof to Licensee and BN, provided that such default is not
principally as a result of the action or inaction of the USO Managers; or (iii)
Licensee files a petition in bankruptcy or is adjudicated a bankrupt or
insolvent, or makes an assignment for the benefit of creditors, or an
arrangement pursuant to any bankruptcy law, or if Licensee discontinues or
dissolves its business or if a receiver is appointed for Licensee
or for Licensee's business and such receiver is not discharged within 30 days.
(b) Upon termination of this Agreement: (i) the License shall
terminate; (ii) Licensee shall cease to use the Trademark; and (iii) Licensee
shall execute and deliver to Licensor any documents reasonably requested by
Licensor to confirm Licensor's ownership of the Trademark and the termination of
the License.
3. Restrictions on Use. (a) Licensee shall use the Trademark only in
a manner and form: (i) designed to maintain the high quality of the Trademark;
(ii) consistent with the use of the Trademark by Licensor and its other
licensees; (iii) that protects Licensor's ownership interest therein; and (iv)
that complies will all applicable federal, state, local and foreign laws, rules
and regulations, including, without limitation, all applicable trademark laws,
rules and regulations.
(b) Licensee expressly acknowledges that its use of the
Trademark hereunder inures to the benefit of Licensor and shall not confer on
Licensee any proprietary rights to the Trademark, which shall at all times
remain with Licensor and its assignees.
(c) Licensee shall not question, contest or challenge, either
during or after the Term, Licensor's ownership of the Trademark, and Licensee
shall claim no interest therein, except the right to use the Trademark on the
terms and conditions set forth herein. Licensee shall not attempt to register
the Trademark.
(d) Licensor shall, at its expense, take such action, including,
without limitation, commencing litigation or other legal proceedings, as
Licensee considers necessary to protect the Trademark from infringement by any
person or party. Nothing in this Agreement is intended to nor shall it limit or
impair Licensor's rights, during or after the Term, to protect the Trademark
from infringement by any person or party, including without limitation Licensee.
During and after the Term Licensor may, but shall not be obligated to, take such
action as it deems necessary or appropriate to prevent or stop such
infringement. Licensee shall promptly notify Licensor in writing of any
infringement or suspected infringement involving the Trademark.
(e) Nothing in this Agreement is intended to nor shall it limit
or impair Licensor's rights, during the Term, to use or otherwise license the
Trademark to the extent not licensed to Licensee hereunder. Licensee agrees that
sales by Licensor, or its other licensees, through Websites or otherwise, of
books and other merchandise promoted by Licensee in the Business that
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are immaterial, incidental and unsolicited shall not be a violation of the
exclusive license granted to Licensee hereunder.
(f) Nothing in this Agreement is intended to nor shall it limit
or impair Licensor's rights, after the Term, to use or license the Trademark in
any way whatsoever.
4. Representations and Warranties; Indemnity. (a) Licensor represents
and warrants to Licensee that: (i) it is the registered owner of the Trademark;
(ii) it has the right and power to grant the License to Licensee as provided
herein; and (iii) the grant of the License to Licensee as provided herein does
not require the consent of any third party.
(b) Licensor shall indemnify and hold Licensee harmless against
any and all claims, actions, suits or proceedings asserting that Licensee's use
of the Trademark pursuant to this Agreement infringes the statutory or common
law trademark rights of any third party. Licensor shall, at its sole cost and
expense, defend all such claims, actions, suits and proceedings on behalf of
Licensee, with counsel of Licensor's choice, provided that Licensee promptly
notifies Licensor of such claims, actions, suits or proceedings.
5. Injunctive Relief. Licensee acknowledges that money damages would
not adequately compensate Licensor in the event of a breach by Licensee of its
obligations hereunder, and that injunctive relief would be essential for
Licensor to adequately protect itself hereunder. Accordingly, Licensee agrees
that, in addition to any other remedies available to Licensor at law or in
equity, Licensor shall be entitled to injunctive relief in the event Licensee is
in breach of any covenant or agreement contained herein.
6. Miscellaneous. (a) This Agreement shall be governed by the
internal laws of the State of New York without giving effect to the conflict of
law principles thereof.
(b) This Agreement sets forth the entire agreement between the
parties hereto with respect to the subject matter hereof and is intended to
supersede all prior negotiations, understandings and agreements. No provision of
this Agreement may be waived or amended, except by a writing signed by Licensor
and Licensee.
(c) This Agreement may be executed in one or more counterparts,
each of which shall be deemed an original and together which shall constitute
one and the same instrument.
(d) The failure of any party to exercise any right or remedy
provided for herein shall not be deemed a waiver of any right or remedy
hereunder.
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(e) If any provision of this Agreement is determined by a court
of competent jurisdiction to be invalid or otherwise unenforceable, such
determination shall not affect the validity or enforceability of any remaining
provisions of this Agreement. If any provision of this Agreement is invalid
under any applicable statute or rule of law, it shall be enforced to the maximum
extent possible so as to effect the intent of the parties, and the remainder of
this Agreement shall continue in full force and effect.
(f) Any and all notices or other communications hereunder shall
be sufficiently given if in writing and sent by hand, telecopier, reputable
overnight courier or by certified mail, return receipt requested, postage
prepaid, addressed to the party to receive the same at its address as set forth
on page 1 hereof, or to such other address as the party to receive the same
shall have specified by written notice given in the manner provided for in this
Section 6(f). Such notices or other communications shall be deemed to have been
given on the date of such delivery. Any party may change its address for the
purpose of this Agreement by notice to the other parties given as aforesaid.
(g) This Agreement shall be binding upon and inure to the
benefit of each of the parties hereto and their respective successors and
assigns, provided that Licensee may not assign any of its rights hereunder
without the prior written consent of Licensor.
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(h) The section headings used herein are for the convenience of
the parties only, are not substantive and shall not be used to interpret or
construe any of the provisions contained herein.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
on the date first set forth above.
XXX.XXXXXX, INC.
By: /s/ Xxxxxx Xxxxxxxxx
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Name: Xxxxxx Xxxxxxxxx
Title: President
xxxxxxxxxxxxxx.xxx llc
By: xxxxxxxxxxxxxx.xxx inc.,
its managing member
By: /s/ Xxxxx X. Xxxxxxxxx
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Name: Xxxxx X. Xxxxxxxxx
Title: Executive Vice
President, Finance
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