Exhibit 9(viii) under Form N-1A
Exhibit 10 under Item 601/Reg. S-K
LICENSE AGREEMENT
LICENSE AGREEMENT, dated as of November 14, 1996, among Bank of Boston
Corporation (`BOBC''), The First National Bank of Boston (``FNBB'', and
together with BOBC, the `Licensors''), and BayFunds, a Massachusetts
business trust (the `Licensee'').
Whereas, the Licensee is a mutual fund whose shares of beneficial
interest are or will be made available to the public for investment; and
Whereas, the Licensors have certain proprietary rights in the emblems
and the servicemark described on Exhibit A hereto (collectively, the `BOBC
Marks'); and
Whereas, under certain conditions and for a specified period of time
the Licensors wish to permit the 1784 Prime Money Market Fund portfolio of
the Licensee to xxx the BOBC Marks in connection with the Licensee's
business (the `Business'') of being a mutual fund;
Now, therefore, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties hereto hereby
agree as follows:
Section 1. License and Term
(a) The Licensors hereby grant to the 1784 Prime Money Market Fund
portfolio of the Licensee a non-exclusive, fully-paid, limited and
restricted license (`License''), upon the terms and subject to the
conditions of this Agreement, to use, reproduce and distribute the BOBC
Marks and the Licensors' trade dress associated with the BOBC Marks
throughout the United States of America and the rest of the world, provided
(i) the Licensee shall use its rights under the License solely in
connection with the conduct of the Business, and (ii) the Licensee shall
not modify or create derivatives of any of the BOBC Marks.
(b) The term of the License (the `Term'') shall commence upon the
execution and delivery of this Agreement and shall continue until the
termination of the License as provided in Section 5. The Licensors shall
have no obligation to extend the Term.
(c) The Licensee shall use its rights under the License only in
strict compliance with (i) all applicable statutes, laws, rules,
regulations, court orders and administrative determinations, and (ii) all
agreements and other instruments governing the Licensors' rights in the
BOBC Marks. Except as expressly provided in this Agreement, the Licensee
shall not take any action that would, or would be likely to, terminate,
modify, limit, restrict, encumber or otherwise adversely affect the rights
and interests of the Licensors in the BOBC Marks.
Section 2. Intellectual Property Rights.
(a) Subject tot he terms of the License, the Licensors shall retain
all right, title, and interest in and to the BOBC Marks and the good will
associated therewith, together will all derivative works, trademark, and
servicemark registrations, applications for trademark and servicemark
registrations, and trade dress relating thereto.
(b) The Licensee shall, at its own expense, execute and deliver all
instruments and documents, do all things, and take all actions as the
Licensors may reasonably request for the purpose of further confirming or
evidencing the rights of the Licensors in and to the BOBC Marks. The
Licensee shall not, without prior consent of the Licensors in each
instance, file any application for trademark, tradename, servicemark or
other legal protection with respect to the BOBC Marks, any derivative works
of any kind thereof, any trade dress associated therewith, or any names,
marks, logos or slogans used in connection therewith;
(c) The Licensee shall place on all labels, advertisements, wrappers,
promotional pieces and other materials including or incorporating the BOBC
Marks (the `Licensed Items'') such notices, trademarks, tradenames,
servicemarks, logos, or statements and the Licensors may require in order
to reflect the Licensors, proprietary rights in the BOBC Marks. The
Licensee shall not, and shall not suffer or permit any other person to,
alter, remove, obscure or obstruct any notices, trademarks, tradenames,
servicemarks, or logos of the Licensors on any Licensed Items.
(d) The Licensee acknowledges that the Licensors previously granted
to 1784 Funds, a Massachusetts business trust, a non-exclusive, fully-paid,
limited and restricted license to use the BOBC Marks in a License Agreement
dated as of June 1, 1993, and to Federated Municipal Trust, a Massachusetts
business trust, a non-exclusive, fully-paid, limited and restricted license
to use the BOBC Marks in a Licensee Agreement dated as of November 14,
1996.
Section 3. License Fee
The Licensors shall not be entitled to any fee or consideration for
the License.
Section 4. Events of Default
`Event of Default'' as used in this Agreement means failure of the
Licensee to perform or observe any covenant or agreement of the Licensee in
this Agreement (whatever the reason for such Event of Default and
regardless of whether it shall be voluntary or involuntary or effected by
operation of law or pursuant to any judgment, decree, or order of any court
or administrative agency).
Section 5. Termination
(a) (i) Upon the occurrence of an Event of Default, the Licensors
may, in their sole discretion and without prejudice to any other remedies
that may be available to them, terminate the License by delivering to the
Licensee a notice to that effect. Such notice shall be effective
immediately (or at such later time as it may specify) and shall have the
effect specified in paragraph (b) below.
(ii) The Licensors may, at any time and in their sole discretion,
terminate the License by delivering to the Licensee a notice to that
effect. Such notice shall be effective 90 days hence (or at such later
time as it may specify) and shall have the effect specified in paragraph
(b) below.
(b) Upon the expiration of the Term, the rights and obligations of
the parties under this Agreement shall expire, and, without limiting the
generality of the foregoing, no party shall have any liability to any other
party for compensation, reimbursement, or damages for the loss of
prospective profits or anticipated sales or on account of any expenditures
or investments made in anticipation of the continuation of the Term, except
as follows:
(i) no party shall be deemed to have waived or released any rights or
remedies in respect of any breach by any other party of any of the terms
and conditions of this Agreement that occurred prior to the end of the
Term;
(ii) the obligations of the parties under Section 2 shall survive the
end of the Term; and
(iii) the Licensee immediately shall cease using the BOBC Marks
and shall promptly deliver to the Licensors (A) evidence that the names of
each of the respective series and classes of the Licensee have been duly
and properly changed to names which do not include any BOBC Xxxx, and (B) a
certificate, signed by an authorized officer of the Licensee, to the effect
that the Licensee has fully complied with its obligations under this
Section 5(b)(iii).
Section 6. Equitable Relief.
The Licensee agrees that the remedies at law of the Licensors for any
breach of the provisions hereof would be inadequate, the acknowledges that
for breach of such provisions, the Licensors, in addition to such other
remedies as may be available at law or in equity or as provided in this
Agreement, should properly be entitled to injunctive relief and to enforce
their rights by an action for specific performance.
Section 7. Notices.
All notices, consents, approvals and other communications hereunder
shall be in writing and shall be deemed to have been given when delivered
by hand, courier service, or prepaid registered or certified mail (return
receipt requested), addressed: (a) if to the Licensee, to the address of
the Licensee set forth beneath its signature line hereto or to such other
addresses as the Licensee shall have given the Licensor notice, and (b) if
to either or both of the Licensors, to the addresses of Licensors set forth
beneath their signature lines hereto, or to such other addresses as the
Licensors shall have given the Licensee notice.
Section 8. Entire Agreement.
This Agreement contains the entire agreement among the parties hereto
with respect to the subject matter hereof.
Section 9. Amendments.
This Agreement may not be amended, nor shall any waiver, change,
modification, consent or discharge be effected, except by an instrument in
writing executed by or on behalf of the party against whom enforcement of
any waiver, change, modification, consent or discharge is sought.
Section 10. Severability.
The provisions of this Agreement are severable, and if any provision
of this Agreement shall be held or deemed to be invalid, inoperative or
unenforceable in whole or in part in any jurisdiction, for any reason, such
circumstances shall not have the effect of rendering the provision in
question invalid, inoperative or unenforceable in any other jurisdiction.
Any court of competent jurisdiction is hereby authorized to reform this
Agreement as necessary to render unenforceable any such invalid,
inoperative, or unenforceable provision.
Section 11. Governing Law.
This Agreement shall be governed by and construed and enforced in
accordance with the laws of the Commonwealth of Massachusetts.
Section 12. Assignment.
No party to this Agreement may assign or delegate to any other person
or entity any of its rights or obligations hereunder without the prior
written consent of each other party.
Section 13. Parties in Interest.
This Agreement shall be binding upon, and shall inure to the benefit
of, the parties hereto and their respective successors and permitted
assigns. Nothing herein shall be construed to confer any right, interest,
or benefit upon any third party.
Section 14. Counterparts.
This Agreement may be executed in two or more counterparts, each of
which shall be deemed an original, but all of which together shall
constitute one and the same instrument, and in pleading or proving any
provision of this Agreement, it shall not be necessary to produce more than
one of such counterparts.
Section 15. Headings.
The headings contained in this Agreement are for reference purposes
only and shall not in any way affect the meaning of interpretation of this
Agreement.
Section 16. Declaration of Trust.
A copy of the Declaration of Trust of the Licensee is on file with the
Secretary of State of the Commonwealth of Massachusetts, and notice is
hereby given that this Agreement is executed on behalf of the Licensee by a
duly authorized officer or officers of the Licensee acting in such capacity
and not individually, and the obligations of the Licensee set forth in this
Agreement are not binding on any of the Licensee's trustees, officers or
shareholders individually, but are binding only upon the assets and
property of the Licensee.
IN WITNESS WHEREOF, the parties hereto have executed this License
Agreement as an agreement under seal as of the date first set forth above.
BANK OF BOSTON CORPORATION
By: /s/ Xxxx X. Xxxxx
Name:
Title:
THE FIRST NATIONAL BANK OF BOSTON
By /s/ Xxxx X. Xxxxx
Name:
Title:
Licensors' Notice Address:
000 Xxxxxxx Xxxxxx
Xxxxxx, XX 00000
Attn: Xxxxx X. Xxxxxxxxxx
Managing Director, Asset Management
with copies to:
Xxxx X. Xxxxx
Senior Counsel
The First National Bank of Boston
000 Xxxxxxx Xxxxxx, 00-00-00
Xxxxxx, XX 00000
BAYFUNDS
By: /s/ Xxxx X. Xxxxxxx
Name: Xxxx X. Xxxxxxx
Title: President
Licensee's Notice Address:
Attention: Secretary
Federated Investors Tower
Xxxxxxxxxx, XX 00000-0000
EXHIBIT A
All rights of the Licensors with respect to the servicemark 1784
FUNDS, including without limitation rights under the registration for such
servicemark filed on January 25, 1993 with the United States Office of
Patents and Trademarks, serial no. 74-351,906, and Registered in the U.S.
Patent and Trademark Office on April 9, 1996, Registration No. 1,967,164.
All rights of the Licensors with respect to the `Eagle'' icons,
samples of which are set forth below:
