TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement (this
"Agreement"), dated and effective as of December 31, 2009 (the "Effective
Date"), is between WS Technologies LLC, an Oregon limited liability company
("Licensor") and Aequitas Holdings, LLC, an Oregon limited liability company
("Licensee"). Each of Licensor and Licensee are referred to herein as
a "Party" and are collectively, the "Parties."
1.
Definitions. As
used in this Agreement:
1.1. "Affiliate" means as to either
Party, any corporation or other entity that directly or indirectly through one
or more intermediaries, controls, is controlled by, or is under common control
with that Party. The term "control" means the power to direct or cause the
direction of the management and policies of a person, whether through the
ownership of voting securities, by contract, or otherwise. The term
"Affiliate" includes entities that become Affiliates after the date of this
Agreement.
1.2. "Licensed Xxxx" means
Licensor's registered service xxxx CarePayment®.
1.3. "Territory" means the United
States of America.
2.
License Grant.
2.1. License. Subject to
Section 2.2, Licensor hereby grants to Licensee a perpetual, nontransferable,
nonexclusive, royalty-free, limited license to use the Licensed Xxxx in the
Territory on or in connection with promoting and conducting Licensee's business
in the ordinary course, as it is conducted as of the Effective Date, including
as part of Licensee's corporate name.
2.2. No Right to
Assign. The grant set out in Section 2.1 and the consideration
for the grant does not confer on Licensee any right to grant licenses or
sublicenses to use the Licensed Xxxx to any party other than Licensee's
Affiliates or Licensee's business partners ("Business Partners") involved in the
marketing and sale of Licensee's products or joint products of Licensee and
those Business Partners. Licensee's rights and obligations under the
license granted in Section 2.1 will not be assigned, delegated, sublicensed, or
otherwise transferred in any way in whole or in part, except to Licensee's
Affiliates and Business Partners; provided, however, if Licensee transfers or
sublicenses the license to any of its Affiliates, the Affiliate must agree to be
bound by this Agreement, and Licensee will remain liable for all actions of the
transferee or sublicensee under this Agreement.
2.3. No Limit on
Licensor. Nothing contained herein will in any way limit the
right of Licensor to use, or further license the right to use, the Licensed Xxxx
on or for products or services which are offered by or for Licensor and which
are promoted, distributed, marketed, advertised or sold in the Territory or
elsewhere in the world.
3.
Usage; Ownership.
3.1. Display. In using
the Licensed Xxxx, Licensee will display the Licensed Xxxx in the manner
approved by Licensor in its reasonable discretion, including size, style of
print and color. Licensee will use
trademark notice symbols with the Licensed Xxxx as directed by
Licensor.
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Technologies LLC and Aequitas Holdings, LLC
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3.2. Ownership. Licensee
hereby acknowledges that, as between Licensee and Licensor, the Licensed Xxxx
and the goodwill attaching thereto are the exclusive property of Licensor, and
that no rights, title or interest therein, except the license set forth in
Section 2.1, are transferred to Licensee by this Agreement and that all prior
and future uses by Licensee of the Licensed Xxxx will inure to the sole benefit
of Licensor.
3.3. Quality. All
services offered and provided by Licensee in connection with the Licensed Xxxx
will be of professional quality in accordance with the prevailing standards in
Licensee's industry, and will be at least consistent with Licensee's quality
standards in existence as of the Effective Date. Upon Licensor's
reasonable request, Licensee will provide Licensor with examples of marketing
and business materials featuring the Licensed Xxxx, and Licensee will comply
with Licensor's reasonable requests to revise the same. Licensor will
be the sole judge of whether or not Licensee has met or is meeting the standards
of quality and trademark usage requirements established under this
Agreement.
3.4. Restrictions. Licensee
will not: (a) use the Licensed Xxxx on or in relation to any
goods or services other than as described herein, without the prior consent of
Licensor (such consent not to be unreasonably withheld or delayed);
(b) make any representation or do any act which may be taken to indicate
that it has any right, title or interest in or to the ownership of the Licensed
Xxxx, other than under the terms of this Agreement; or (c) do, cause, or
authorize to be done anything which would materially impair, damage or be
detrimental to the reputation or goodwill associated with Licensor or the
Licensed Xxxx, or which would adversely affect the value or validity of the
Licensed Xxxx, or which would jeopardize or invalidate any registration or
application for registration of the Licensed Xxxx; or (d) register or cause
to be registered the Licensed Xxxx, or any other marks which are owned by
Licensor, in any country, state, or any other jurisdiction throughout the
world.
4.
Protection of the Licensed Xxxx.
4.1. Notice. Licensee
will give Licensor prompt written notice of any and all infringements, possible
infringements, adverse uses, acts of unfair competition or uses by other
entities of marks which are confusingly similar to the Licensed Xxxx of which
Licensee has or acquires knowledge, together with all evidence in Licensee's
possession, custody or control or which is available to it of such
infringements, possible infringements, adverse uses, acts of unfair competition
or instances of uses by other entities of marks which are confusingly similar to
the Licensed Xxxx.
4.2. Right to Take
Action. Licensor, at its own expense and in its absolute
discretion, may commence, prosecute and/or settle any trademark, unfair
competition or related action or proceeding or assert any claim of infringement,
unfair competition or any other action relating to the Licensed Xxxx and will
retain any award or settlement obtained as a result thereof except to the extent
that the award or settlement is based on damages suffered by Licensee. Except
upon the prior written request and authorization of Licensor, Licensee will not
take any action to prevent infringements, imitations or illegal uses of the
Licensed Xxxx. In the event that Licensor determines that some action
or assistance relating to the Licensed Xxxx is appropriate, Licensee will render
to Licensor all assistance, fully and without reservation, as is reasonably
requested in connection with any matter relating to protection or enforcement of
the Licensed Xxxx.
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Technologies LLC and Aequitas Holdings, LLC
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5.
Audit
Rights. Not more than once each year, Licensor will have the
right to have an independent auditor perform an audit to verify that Licensee is
using the Licensed Xxxx in compliance with this Agreement. That audit
will be performed during normal business hours upon not less than 30 days' prior
notice to Licensee. That audit will be conducted at Licensor's sole
cost and expense and will be subject to reasonable security and access
restrictions. Licensee will be permitted to have Licensee personnel
present during the audit.
6.
Limitation of Damages; Limitation of Liability.
6.1. Limitations. NEITHER
PARTY WILL BE LIABLE TO THE OTHER PARTY FOR ANY PUNITIVE OR EXEMPLARY DAMAGES OF
ANY KIND, HOWEVER CAUSED, ARISING OUT OF OR RELATED TO THIS AGREEMENT OR THE
LICENSED XXXX, EVEN IF IT HAS BEEN ADVISED OF THE POSSIBILITY OF THOSE
DAMAGES. THESE LIMITATIONS WILL APPLY REGARDLESS OF THE LEGAL THEORY
OF LIABILITY, WHETHER UNDER CONTRACT, TORT (INCLUDING NEGLIGENCE AND STRICT
LIABILITY), OR ANY OTHER THEORY WHATSOEVER.
6.2. Exceptions. The
limitations in Section 6.1 will not apply to any claim (a) arising out of
bodily injury (including death); (b) for fraud, gross negligence or willful
misconduct; or (c) described in the Indemnification Section of this
Agreement.
7.
Indemnification.
7.1. Definitions. "Loss"
or "Losses" means (a) all reasonable attorney fees paid or payable by an
Indemnitee (as defined in Section 7.2 below) in defense of any claim subject to
indemnification under this Section 7, whether prior to, at trial or any other
proceeding and in any appeal or other post judgment proceeding; and (b) all sums
paid or payable to any other person, including all direct losses and damages
(including property damage and all incidental, consequential, punitive and
exemplary damages), injuries (including personal injury, sickness and death),
interest, costs, fines, taxes, premiums, assessments, penalties, expenses,
attorney fees (whether incurred prior to, at trial or any other proceeding and
in any appeal or other post judgment proceedings) and other liabilities of any
kind or nature.
7.2. Indemnification
Obligations. Licensee will indemnify, defend, and hold
harmless Licensor, its Affiliates, and their respective officers, directors,
shareholders, employees and agents (jointly and severally, the "Indemnitees")
from and against all Losses asserted directly or indirectly by any other person
for any actual or alleged: (a) infringement of any trademark,
patent, copyright, right of privacy, publicity, name or likeness, or any other
intellectual property right of that other person, or misappropriation or
unauthorized use or disclosure of any trade secret of another person, by
Licensor or Licensor's products or services; (b) negligent act or omission by
Licensor; (c) breach of any representation, warranty or covenant in this
Agreement or elsewhere by Licensor; (d) intentional misconduct by Licensor;
and (e) violation of any applicable law by Licensor; in each case, whether
arising from or in connection with a demand, action, regulatory action, lawsuit,
proceeding (including proceedings under the US Bankruptcy Code), judgment,
settlement, appeal or other post judgment proceeding and whether asserted in
contract, tort, strict liability or otherwise.
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Technologies LLC and Aequitas Holdings, LLC
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8.
Term and Termination.
8.1. Term. The term of
this Agreement will commence upon the Effective Date and unless terminated in
accordance with this Section 8, will be perpetual in nature.
8.2. Termination.
(a) By
Licensee. Licensee may terminate this Agreement for any reason
with 90 days prior written notice to Licensor.
(b) By Either
Party. Either Party may terminate this Agreement, effective
immediately: (A) upon the other Party's failure to remedy any
default under this Agreement within 30 days after receipt of written notice from
the non-defaulting Party specifying the default or, if the remedy requires more
than 30 days, the failure of the defaulting party to promptly initiate steps to
remedy such default and thereafter to diligently continue and complete all
reasonable and necessary steps sufficient to remedy such default; or (B) if
the other Party (i) becomes insolvent; (ii) files a voluntary petition
in bankruptcy; (iii) makes an assignment for the benefit of creditors or
otherwise enter into any scheme or composition with its creditors; (iv) is
adjudicated a bankrupt; (v) suffers a receiver to be appointed for the
operation of its business; or (vi) makes a liquidation of substantially all
of its assets.
8.3. Effect
of Termination.
(a) Cessation of
Use. In the event of termination by Licensee pursuant to
Section 8.2(b), Licensee's rights to use the Licensed Xxxx under Section 2.1
will cease 90 days after the effective date of such termination. In
the event of termination by Licensee pursuant to Section 8.2(a), or by Licensor
pursuant to Section 8.2(b), Licensee's rights to use the Licensed Xxxx under
Section 2.1 will cease immediately on the effective date of such
termination.
(b) Survival. Sections
1, 3.2, 6, 7, 8.3, 9, and each other provision of this Agreement that by its
nature extends beyond the expiration or earlier termination of this Agreement,
will survive and continue in full force and effect after this Agreement expires
or is earlier terminated.
9.
General.
9.1. Entire
Agreement. This Agreement constitutes the entire agreement
between the Parties and supersedes all prior or contemporaneous agreements or
representations, written or oral, concerning the subject matter of this
Agreement. The Parties may amend this Agreement only by a written
instrument stating an intention to modify and signed by both
Parties.
9.2. Waiver. Failure by
either Party at any time to require performance or to claim a breach of any term
or condition of this Agreement will not be construed as a waiver of that term or
condition affecting the right to require performance or to claim a
breach.
9.3. Assignment. Without
limiting the effect of Section 2.2, Licensee may assign, sell or otherwise
transfer its license and this Agreement to an Affiliate, provided that such
Affiliate agrees, in writing, to be bound by the terms and conditions of this
Agreement.
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Technologies LLC and Aequitas Holdings, LLC
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9.4. Severability. If
any provision in this Agreement may be held to be invalid or unenforceable, the
meaning of that provision will be construed so as to render it enforceable to
the extent feasible. If no feasible interpretation would save that
provision, it will be severed from this Agreement and the remainder will remain
in full force and effect. However, in the event that provision is
considered an essential element of this Agreement, the Parties will promptly
negotiate alternative, reasonably equivalent and enforceable terms.
9.5. Governing Law;
Venue. This Agreement will be interpreted under, and any
disputes arising out of this Agreement will be governed by, the laws of the
State of Oregon, without reference to its conflicts of law
principles. The United Nations Convention on Contracts for the
International Sale of Goods will not apply to the interpretation or enforcement
of this Agreement. The Parties irrevocably consent to the
jurisdiction of the state and federal courts located in the State of Oregon,
USA, in connection with all actions arising out of or in connection with this
Agreement, and waives any objections that venue is an inconvenient
forum.
9.6. Interpretation. Section
headings are inserted for convenience only and will not be used in any way to
construe the terms of this Agreement. The words "includes" and
"including" are not limited in any way and mean "includes or including without
limitation." The word "person" includes individuals, corporations,
partnerships, limited liability companies, co-operatives, associations and other
natural and legal persons. The word "will" is a synonym for the word
"shall."
9.7. Notices. Each
notice, consent, request, or other communication required or permitted under
this Agreement will be in writing, will be delivered personally or sent by
certified mail (postage prepaid, return receipt requested) or by a recognized US
overnight courier, and will be addressed as follows:
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If
to Licensor:
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WS
Technologies LLC
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Attn: President
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0000
XX Xxxxxxx Xxxx, Xxxxx 000
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Xxxx
Xxxxxx, XX 00000
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If
to Licensee:
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Aequitas
Holdings, LLC
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Attn: Legal
Department
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0000
XX Xxxxxxx Xxxx, Xxxxx 000
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Xxxx
Xxxxxx, XX 00000
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Each
notice, consent, request, or other communication will be deemed to have been
received by the party to whom it was addressed (a) when delivered if
delivered personally; (b) on the second business day after the date of
mailing if mailed; or (c) on the date officially recorded as delivered
according to the record of delivery if delivered by overnight
courier. Each party may change its address for purposes of this
Agreement by giving written notice to the other party in the manner set forth
above.
9.8. Counterparts and
Delivery. This Agreement may be executed in
counterparts. Each counterpart will be considered an original, and
all of them, taken together, will constitute a single Agreement. This
Agreement may be delivered by facsimile or electronically, and any such delivery
will have the same effect as physical delivery of a signed
original. At the request of any party, the other party will confirm
facsimile or electronic transmission signatures by signing an original
document.
[Signatures
on following page]
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LICENSOR:
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LICENSEE:
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WS
Technologies LLC
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Aequitas
Holdings, LLC
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By
microHelix, Inc., its Manager
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By
Aequitas Management, LLC, its Manager
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By:
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/s/ Xxxxx X. Xxxxxx
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By:
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/s/ Xxxxxx X. Jesenik
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Xxxxx
X. Xxxxxx, Secretary
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Xxxxxx
X. Jesenik,
President
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Signature
Page to Trademark License Agreement
