Exhibit 10.4
License Agreement
This License Agreement (the "Agreement") is reached between The Xxxxxxx
Group Career Satisfaction Corporation, a Utah corporation ("Xxxxxxx"), and
xxxxxxxxxxx.xxx, inc., a Delaware Corporation ("MJS") in consideration of
receipt of MJS shares by Xxxxxxx, the sufficiency of which is acknowledged.
Recitals
Whereas, Xxxxxxx is the developer and exclusive owner of a series of eight
"Career Insight" training courses (as set forth in manuals, workbooks, handouts,
and related material) designed to increase personal job-searching skills
(collectively, the "System"); and Whereas, Xxxxxxx has formed MJS as a
subsidiary corporation to exploit the demand for career-related information and
services on the Internet, and desires to grant a perpetual, exclusive, and
royalty-free license authorizing MJS to use the System online;
It is Therefore Agreed
1. Grant of License. Xxxxxxx hereby grants to MJS a perpetual and exclusive
license to use the System, and any System modifications it may develop (the
"Derivative Works"), on the Internet. MJS may not use the System or Derivative
Works in any way other than over the Internet. It is understood that Xxxxxxx may
use the Internet to market in-person and other forms of delivery of the System
to customers, but may not offer the contents of the System on the Internet.
2. Derivative Works. All right, title and interest in and to the Derivative
Works (together with any and all corresponding intellectual property rights)
shall be solely owned by MJS, subject to Xxxxxxx'x intellectual property rights
in the original works. Xxxxxxx agrees to execute any additional documents
reasonably requested by MJS in order to evidence or perfect MJS's ownership of
the Derivative Works. MJS hereby grants to Xxxxxxx a perpetual license to use
the Derivative Works in any way other than over the Internet.
3. Modifications by Xxxxxxx. All modifications of the System made by
Xxxxxxx, including all improvements and additions to and new versions of the
System (the "Modifications"), shall be deemed licensed by Xxxxxxx to MJS,
subject to all terms and conditions of this Agreement. Xxxxxxx agrees to make
prompt disclosure to MJS of all Modifications and provide master copies thereof
to MJS upon request.
4. Royalties. MJS shall pay no royalty for use of the System or any
Modification; Xxxxxxx shall pay no royalty for use of Derivative Works.
5. Warranties. Xxxxxxx warrants, represents and covenants to MJS as
follows, upon which MJS substantially relies: (a) the System is the original
work and creation of Xxxxxxx; (b) Xxxxxxx has proper authority to license the
System to MJS; (c) this license does not infringe any copyright, patent,
trademark, trade secret or other proprietary or personal rights of any third
party; (d) Xxxxxxx has not entered into any oral or written agreement or
understanding which would prohibit the licensing of the System, in whole or in
part, to MJS hereunder; and (e) the above, warranties, representations and
covenants shall equally apply to Modifications.
6. Indemnification. Xxxxxxx shall, at its sole cost and expense, indemnify,
defend and hold MJS harmless from and against any claim, loss, damage, expense
or liability (including attorneys' fees and costs) arising out of a breach of
the foregoing warranties, including any claim or allegation that the System, or
other materials supplied by Xxxxxxx hereunder, infringe any third party patent,
copyright, trade secret or other proprietary or personal right. MJS agrees to
give Xxxxxxx prompt notice of any such claim and xxxxx Xxxxxxx sole control over
the defense of the claim. MJS may, at its option and expense, choose to be
represented by separate counsel with respect to any such claim. If any part of
the System is held to infringe, in addition to bearing the cost of defense and
indemnifying MJS against any damages ultimately assessed, Xxxxxxx shall use
commercially reasonable efforts, at its expense, to modify the System to be
non-infringing, without adversely affecting the quality or completeness of the
System, or to obtain for MJS a license to continue using the System.
7. Limitation of Liability. EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN THIS
AGREEMENT, NEITHER PARTY MAKES ANY REPRESENTATIONS OR WARRANTIES OF ANY KIND,
WHETHER EXPRESS OR IMPLIED, WITH RESPECT TO THE SYSTEM, INTELLECTUAL PROPERTY OR
ITS DERIVATIVE WORKS, INCLUDING WITHOUT LIMITATION THE IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. IN NO EVENT SHALL XXXXXXX
OR MJS BE LIABLE AND EACH PARTY COVENANTS NOT TO BRING ANY CLAIM FOR SPECIAL OR
CONSEQUENTIAL DAMAGES OR FOR ANY INDIRECT DAMAGES SUCH AS, BUT NOT LIMITED TO,
EXEMPLARY DAMAGES, WHETHER OR NOT SUCH DAMAGES WERE FORESEEN OR UNFORESEEN;
PROVIDED, HOWEVER, THAT THIS LIMITATION OF LIABILITY SHALL NOT LIMIT
INDEMNIFICATION OBLIGATIONS AS SET FORTH ABOVE.
8. Confidentiality. As used herein, "Confidential Information" includes any
trade secrets, proprietary materials, parties' methods of operation, marketing
plans, customer lists, future plans, the specific terms of this Agreement, any
written materials marked as confidential, and other materials or information,
written, oral, visual or electronic, which reasonably should be understood by
the recipient of such information ("Recipient") to be confidential. Confidential
Information does not include information that Recipient can prove (a) is now or
later becomes generally available to the public without fault or breach of
Recipient; (b) was rightfully in Recipient's possession prior to disclosure by
the other party ("Discloser"); (c) is independently developed by Recipient
without the use of any Confidential Information of Discloser; or (d) is
rightfully obtained by Recipient from a third party who has the right to
disclose it.
a. Each party, as Recipient, agrees that it will not disclose
Confidential Information to any person or use Confidential Information
for any purpose except as expressly permitted by this Agreement.
Recipient may disclose Confidential Information only to its employees
who have a need to know such information. Recipient shall inform such
employees that under this Agreement they are bound by obligations of
confidentiality and shall maintain with each such employee a written
agreement sufficient to require the employee to keep this type of
information confidential. Confidentiality obligations shall survive
for a period of five (5) years from the date of disclosure.
b. Each party agrees to carefully and continuously control use and
disclosure of the other party's Confidential Information, and to treat
it with at least the same level of protection as it affords its own
Confidential Information of similar nature, but not less than a
reasonable level of protection. Recipient shall not copy Confidential
Information except to the extent necessary for the purposes of this
Agreement. Recipient shall promptly notify Discloser if it becomes
aware of any unauthorized disclosure or use of Discloser's
Confidential Information, and shall take all reasonable steps
requested by Discloser to remedy the same.
c. Each party, as Recipient, acknowledges that Discloser's
Confidential Information is highly valuable to the Discloser, that any
breach of its obligations under this Agreement with respect to
Confidential Information will severely damage Discloser, the extent of
which damage would be difficult to ascertain and, therefore, that
Discloser is entitled to, among any other available remedies,
immediate injunctive and other equitable relief for any such breach.
9. Trademarks. Xxxxxxx grants to MJS a nonexclusive right and license to
use, reproduce and display all trademarks used by Xxxxxxx in relation to the
System (the "Trademarks") in connection with MJS's marketing and distribution of
the System. MJS shall have the right to use the Trademarks in its business, in
its advertising, and on its stationery. MJS may also develop and use its own
trademarks and service marks in connection with the System. Xxxxxxx makes no
claim of any kind to the MJS logo, trade name, trademark or related service
marks or trademarks now owned or hereafter owned by MJS.
10. Marketing Materials. Xxxxxxx shall furnish, without charge to MJS,
samples of advertising and promotional materials, including such items as
photographs and System descriptions and materials which Xxxxxxx and MJS agree
are necessary for promotion of the System. MJS will be responsible for
additional costs in creating brochures, catalogues, and other promotional items
for use in the promotion of the System.
11. Branding; Copyright and Trademark Use. MJS may, in its discretion,
private-label the System as a product of MJS, using MJS's own brand names,
trademarks and service marks. Product packaging and documentation for the System
shall also be designed and produced by MJS, at its sole discretion. However, MJS
shall include, subject to Xxxxxxx'x approval as to form, appropriate copyright
and trademark notices of Xxxxxxx in the documentation for the System.
12. Proprietary Rights in Trademarks. MJS will not at any time do or cause
to be done any act or thing contesting or in any way impairing or tending to
impair Xxxxxxx'x rights in and to the Trademarks. All use of the Trademarks by
MJS shall inure to the benefit of Xxxxxxx. MJS will at no time adopt or use,
without Xxxxxxx'x prior written consent, any name or xxxx, either alone or in
combination with any other words or symbols, which is similar to or likely to be
confused with the Trademarks, unless Xxxxxxx consents in writing.
13. Termination. a. Either party may terminate this Agreement if the other
party breaches any material term of this Agreement and fails to correct such
breach within 60 days following written notice from the non-breaching party
specifying the breach.
b. MJS may, at its sole option, terminate this Agreement at any time,
with or without cause, upon 120 days prior written notice.
c. Upon termination of this Agreement, MJS's right and license to
market, distribute and sell the System and its license to the
Trademarks shall terminate; provided, however, that MJS may continue
to distribute the System and offer courses thereunder as necessary to
fulfill orders received by MJS and binding commitments made by MJS
prior to the date of termination and to dispose of MJS's inventory.
Upon termination, each party shall return to the other or destroy all
Confidential Information supplied by the other party.
14. Other Provisions. This Agreement shall be construed in accordance with
the laws of the State of Utah. In the event suit is brought to enforce any
provision hereof, the successful party shall recover all costs of enforcement,
including attorney's fees, from the other party.
Dated this 22nd day of June, 1999
/s/ XX Xxxxxx
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Authorized Officer,
The Xxxxxxx Group Career Satisfaction Corporation
/s/ XX Xxxxxx
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Authorized Officer, xxxxxxxxxxx.xxx, inc.
