Exhibit 8(B)
SERVICE XXXX LICENSE AGREEMENT
THIS AGREEMENT made as of the 22nd day of June 1999 by and between
XXXXXX X. XXXXXXX, XX., an individual and citizen of the United States (the
"Licensor"), and The Xxxxxxx Funds, Inc., a Maryland corporation (the
"Licensee") (the "Agreement").
WITNESSETH:
WHEREAS, Licensor owns certain valuable service marks described in
Appendix A hereto (hereinafter the "Marks"), said Marks having been used by
Licensor in connection with its investment banking and brokerage services,
mutual fund services and insurance services, and said Marks are well known and
recognized by the general public and associated in the public mind with
Licensor;
WHEREAS, Licensee desires to use the Marks in its business operations
as a multiple series mutual fund (the "Services"); and
WHEREAS, on the terms set forth herein, Licensor is willing to grant
unto Licensee a license to use the Marks.
NOW, THEREFORE, in consideration of the mutual promises contained
herein and other good and valuable consideration, the receipt and sufficiency of
which is hereby acknowledged, it is hereby agreed:
1. GRANT OF LICENSE.
1.1 Upon the terms and conditions herein set forth, Licensor grants to
Licensee, and Licensee hereby accepts, a revocable, non-exclusive,
non-transferable license to utilize the Marks in connection with the Services.
1.2 Licensee shall not be required to make any further payments for
the use of the Marks as contemplated herein.
1.3 Licensee shall use the Marks only in the United States and its
territories.
2. SERVICES.
2.1 For the preservation of Licensor's rights in the Marks, the parties
understand and agree that Licensor must maintain control over the nature and
quality of the Services, any advertising, promotional activities, and other
activities in connection with which Licensee uses the Marks. Licensor authorizes
the Licensee to use the Marks for the Services, but Licensor has the right,
prior to use by Licensee of the Marks (or any one of
them) in any manner on or in connection with the Services to examine and approve
the manner in which Licensee uses the Marks. Licensee shall ensure that the
Services meet or exceed the highest quality standards of the mutual fund
industry. Licensor reserves the right, at any time during the term of this
License, to review Licensee's use of the Marks to insure that Licensee's use is
in compliance with this Agreement. In addition, Licensee, if Licensor so
requests, shall submit to Licensor for its prior approval, all advertising,
promotional or display material proposed to bear the Marks.
2.2 Licensee agrees to cooperate fully with Licensor for the purpose of
securing and preserving Licensor's rights or registrations in and to the Marks.
All artwork and designs involving the Marks, or any reproduction thereof, shall
remain the property of Licensor (notwithstanding their invention or use by
Licensee), and Licensor shall be entitled to use the same and to license the use
of the same by others except where inconsistent with the terms of this
Agreement. During the term hereof, Licensee agrees to diligently and continually
use and advertise the Marks in connection with the Services subject to the
provisions of this Agreement.
3. EFFECT OF LICENSEE'S USE.
Any use of the Marks by Licensee in accordance with this Agreement
shall enure to the benefit of Licensor and this Agreement shall not operate to
transfer or convey any proprietary interest in the Marks to Licensee.
4. ACKNOWLEDGMENT OF VALIDITY AND GOODWILL OF THE MARKS.
Licensee acknowledges and admits the validity of the Marks and any
registrations thereof, Licensor's exclusive right, title and interest therein,
the goodwill pertaining thereto and the secondary meaning of the Marks in the
mind of the public. Licensee covenants that it will not, directly or indirectly,
attack or assist another in attacking the validity of the Marks or any
registrations therefor. This paragraph shall survive the termination for any
reason whatsoever of this Agreement.
5. TRADEMARK NOTICE.
Where feasible, practical and appropriate, Licensee shall xxxx all
advertising and promotional materials utilizing the Marks with proper trademark
notices as prescribed by Licensor.
6. INFRINGEMENT BY THIRD PARTIES.
6.1 Licensor has the first right, but not the obligation, to enforce
its rights in any of the Marks against any third parties and, if it so desires,
may commence or prosecute any claim or suit in its own name or in the name of
Licensee or join Licensee as a party. Licensor shall bear the expense of, and
receive any recovery from, any action resulting from any such infringement;
provided, however, that if Licensor and Licensee agree that Licensee
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shall bear part of the expense of such litigation, Licensee shall be entitled to
share in any monetary judgment recovered in the same proportion as the amount
that its contribution of expenses bears to the total expense of the litigation.
Licensee shall not institute any suit or take any action on account of the Marks
without first obtaining Licensor's written consent.
6.2 In the event that suit for infringement by the Marks is brought
against Licensee, Licensee shall immediately notify Licensor in writing of such
suit. Upon timely notice of such suit, Licensor shall provide a defense at
Licensor's sole cost and expense.
7. TERM AND TERMINATION.
7.1 Licensor shall have the right to terminate this Agreement for any
reason or for no reason at all upon thirty (30) days' written notice to
Licensee.
7.2 Licensor shall have the right to immediately terminate this
Agreement upon the occurrence of any of the following:
7.2.1 Any attempt by Licensee to assign or otherwise transfer
this Agreement or any rights granted under this Agreement without the prior
written consent of Licensor.
7.2.2 The sale by Licensee of substantially all of its assets,
whether by sale of shareholder interest or sale of assets, or a change in
control of Licensee.
7.2.3 The insolvency of Licensee.
7.2.4 The cessation of the use of the Marks in Licensee's
business.
7.2.5 The receivership or bankruptcy of Licensee, or if
Licensee should make an assignment for the benefit of creditors.
8. INDEMNIFICATION.
Licensee shall indemnify, defend and hold Licensor harmless
from and against all claims, losses, liabilities, judgments and expenses (as
provided below) resulting from or attributable to claims against Licensor by
virtue of Licensee's use of the Marks. If a claim is asserted against Licensor,
Licensor shall promptly advise Licensee in writing of such claim and Licensor
shall cooperate fully in the defense thereof and furnish to Licensee all
evidence and assistance in Licensor's control. To the extent that Licensee
controls the defense, agrees to have Licensor control the defense, or to the
extent Licensee enters into or agrees to a settlement agreement, Licensee shall
indemnify Licensor from and against any and all liability, damages, and
reasonable costs (including attorneys' fees but not including attorneys' fees
incurred by Licensor in monitoring or participating in any defense provided by
Licensee) incurred by Licensor as a result of any such claim or any resulting
judgment or settlement.
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9. ASSIGNMENT.
Licensee shall not assign or otherwise transfer this Agreement or the
license granted under this Agreement without the prior written consent of
Licensor, which consent may be withheld in Licensor's sole and absolute
discretion, for any reason or for no reason whatsoever.
10. USE OF MARKS AFTER TERMINATION.
Upon the termination of this Agreement, for any reason whatsoever,
Licensee shall immediately discontinue the use of the Marks and thereafter shall
no longer use or have the right to use the Marks, any variation thereof or any
word(s) and or logo(s) similar thereto. In addition to the foregoing, Licensee
shall take all necessary actions to remove the Marks from its corporate name and
from the name of any series, portfolio or class of its stock. Licensee hereby
agrees that at the termination of this Agreement, Licensee shall be deemed to
have assigned, transferred and conveyed to Licensor any rights, equities,
goodwill, titles or other rights in and to the Marks which have been obtained by
Licensee pursuant to this Agreement or otherwise. If requested by Licensor,
Licensee shall, without further consideration therefor, execute any instrument
to accomplish or confirm the foregoing.
11. LICENSOR'S REMEDIES.
Licensee acknowledges that its failure to comply with its obligations
and covenants as set forth in this Agreement (after notice, if applicable, in
accordance with Section 7), will result in immediate and irremediable damage to
Licensor. Licensee acknowledges and admits that there is no adequate remedy at
law for such default, and Licensee agrees that in the event of such default,
Licensor shall be entitled to equitable relief by way of temporary and permanent
injunctions and such other further relief as any court may deem just and proper.
Resort to any remedies referred to herein shall not be construed as a waiver of
any other rights and remedies to which Licensor is entitled under this Agreement
or otherwise at law or equity. In addition, Licensee agrees to publish, at its
sole expense, a statement (approved by Licensor) in such trade journals and
other periodicals that collectively have a circulation reasonably likely to be
seen by Licensee's customers acknowledging Licensee's breach of this Agreement.
12. NOTICES.
Any and all notices or communications hereunder shall be in writing and
duly given if mailed or transmitted via any standard form of transmittal
telecommunication to the Licensor and Licensee c/o Xxxxxx X. Xxxxxxx, Xx.,
000 X. Xxxxx Xxxxxx, 00xx Xxxxx, Xxxxxxxxx, XX 00000-0000.
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13. SEVERABILITY.
The provisions of this Agreement shall not be severable, and if any
provision of this Agreement shall be held or declared to be illegal, invalid, or
unenforceable, this Agreement shall be deemed to be terminated in accordance
with the terms regarding termination. Notwithstanding the foregoing, Licensor
may in its sole discretion determine that the illegality, invalidity or
unenforceability of any provision is not material, in which event such
illegality, invalidity or unenforceability shall not affect any other provision
hereof, and the remainder of this Agreement, disregarding such invalid portion,
shall continue in full force and effect as though such invalid provision had not
been contained herein.
14. ENTIRE AGREEMENT.
This Agreement contains the entire agreement between the parties hereto
with respect to the subject matter hereof and supersedes and cancels all
previous written or oral understandings, agreements, negotiations, commitments,
or any other writing or communications in respect of such subject matter. This
Agreement may not be released, discharged, abandoned, changed, or modified in
any manner except by an instrument in writing signed by each of the parties
hereto.
15. GOVERNING LAW; VENUE.
This Agreement shall be deemed to be made and entered into pursuant to
the laws of the State of Maryland and, in the event of any dispute, shall be
governed by and shall be construed and interpreted in accordance with the laws
of the State of Maryland and the United States of America. Each of the parties
hereto (a) consents to submit itself to the personal jurisdiction of any federal
court located in the State of Maryland or any Maryland state court in the event
any dispute arises out of this Agreement, (b) agrees that it will not attempt to
deny or defeat such personal jurisdiction by motion or other request for leave
from any such court, and (c) agrees that it will not bring any action relating
to this Agreement or any of the transactions contemplated by this Agreement in
any court other than a federal court sitting in the State of Maryland or a
Maryland state court.
16. WAIVER.
The waiver by either of the parties hereto of any breach of any
provision hereof by the other party shall not be construed to be either a waiver
of any succeeding breach of any such provision or a waiver of the provision
itself.
17. NATURE OF RELATIONSHIP.
Nothing herein shall be construed to place the parties in a
relationship of partners or joint venturers, and neither party shall have the
power to obligate or bind the other in any manner whatsoever.
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18. SURVIVAL.
The provisions of Sections 4, 8, 10, 11 and 15 hereof shall survive
termination or expiration of this Agreement.
IN WITNESS WHEREOF, the parties have executed this Agreement effective
as of the date specified above.
WITTNESS: LICENSOR:
XXXX X. XXXXX, XX. /S/ XXXXXX X. XXXXXXX, XX. (SEAL)
-------------------------- --------------------------
XXXXXX X. XXXXXXX, XX.
ATTEST: LICENSEE:
THE XXXXXXX FUNDS, INC.
XXXX X. XXXXX, XX. By: XXXXXX X. XXXXXXX, XX. (SEAL)
-------------------------- ----------------------
Secretary Xxxxxx X. Xxxxxxx, Xx.
President
[Corporate Seal]
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APPENDIX A
TRADEMARKS
1. Domestic Emerging Markets-Registered Trademark-
2. DEM-Registered Trademark-
3. Stylized C-Eagle Logo-Trademark-
4. DEM Index-Trademark-
5. DEM Profile-Trademark-
6. DEM Universe-Trademark-
7. DEM Company-Trademark-
8. DEM Multi-Manager-Trademark-
9. Xxxxxxx-Trademark-
