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EXHIBIT 10.44
EXECUTION COPY
TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT (this "Agreement") is made and entered
into effective as of April 2, 1999 (the "Effective Date") by and between APEXX
TECHNOLOGY, INC., an Idaho corporation ("Licensor"), and eSOFT, INC., a Delaware
corporation ("Licensee").
R E C I T A L S
A. Licensor is the sole and exclusive owner of the registered
trademark TEAM INTERNET(R) (Registration No. 2,213,806,
Registration date of December 29, 1998 (the "Xxxx"). A copy of
the registration for the Xxxx issued by the U.S. Patent and
Trademark Office is attached as Appendix A to this Agreement.
B. Licensor and Licensee have entered into that certain Merger
Agreement, dated as of January 25, 1998 (the "Merger
Agreement"), pursuant to which Licensor will be merged with
and into Licensee, with Licensee being the surviving
corporation in the merger (the "Merger").
C. The parties hereto wish to enter into this Agreement to
provide a means for Licensee to use the Xxxx in joint
marketing efforts pending consummation of the Merger.
A G R E E M E N T
NOW, THEREFORE, in consideration of the foregoing, and other good and
valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, the parties agree as follows:
1. GRANT. Licensor hereby grants to Licensee, and Licensee hereby
accepts a royalty-free, irrevocable (during the term of this Agreement)
world-wide, nontransferable license to use the Xxxx solely and exclusively in
connection with the joint marketing, distribution and sale with Licensor of
Licensor's TEAM Internet(R) product line in conjunction with the Licensee's IPAD
products, accessories and technical support services (the "Products and
Services"), as provided in this Agreement, subject to the following
restrictions:
(a) Licensee shall not use the Xxxx on or in connection with
any goods, services or businesses other than the Products and Services;
(b) Licensee shall not adopt any marks, names or symbols
confusingly similar with the Xxxx;
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(c) Licensee shall use the Xxxx to identify only the Products
and Services in compliance with all applicable statutes, regulations
and administrative rulings and shall not use the Xxxx in any way that
diminishes the goodwill associated with the Xxxx;
(d) Licensee shall keep Licensor supplied with samples of its
uses of the Xxxx, including without limitation, all brochures, Product
specifications and technical support materials, stationery, Web site
references, forms and advertisements in which the Xxxx appears; and
(f) Licensor will have the right to inspect the business
operations conducted under the Xxxx by Licensee at reasonable times
upon advance notice in order to assure Licensor that the provisions of
this Agreement are being observed.
2. OWNERSHIP OF THE XXXX. Licensor is the sole owner of the Xxxx. By
this Agreement, Licensee is obtaining a limited right to use the Xxxx solely in
connection with the joint marketing, distribution and sale of the Products and
Services. Execution of this Agreement shall estop Licensee from asserting any
claim contesting Licensor's ownership of the Xxxx, Licensor's right to enforce
its ownership rights in the Xxxx, or any other claim adverse to Licensor's
rights in the Xxxx. Licensee agrees not to take or cause any actions which would
or actually interfere with Licensor's ownership, use or registration of the
Xxxx. Notwithstanding any other provision of this Agreement, Licensor
acknowledges and agrees that all uses of the Xxxx by Licensee in conjunction
with the parties' joint marketing efforts, as contemplated by that certain
Agreement and Plan of Merger between Licensor and Licensee of even date
herewith, including, without limitation, Licensee's direct mail and Web site
activities, are in accordance with, and are authorized by, the terms and
conditions of this Agreement.
3. MARKINGS. Licensee will cause the Xxxx to be displayed only in such
form or manner as may be specifically approved by Licensor. Licensee also will
cause to appear on all materials on, or in connection with which the Xxxx is
used, such legends, markings and notices as Licensor may request in order to
give appropriate notice of any trademark, trade name or other rights. No other
markings, legends or notices may be used by Licensee except as approved by
Licensor.
4. TERM. This Agreement, and the license granted hereunder, shall
continue until terminated in accordance with Section 9 below.
5. SUBLICENSE AND ASSIGNMENT. Licensee shall not sublicense the Xxxx or
assign its rights or delegate its duties hereunder, by operation of law or
otherwise without the prior written consent of Licensor, which such consent
shall not be unreasonably withheld. Any sublicense, assignment or delegation in
violation of this paragraph shall be null and void and shall operate to
terminate this Agreement and the license granted hereunder.
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6. CONSIDERATION. The parties acknowledge that consideration for the
license granted pursuant to this Agreement is the undertakings of Licensee with
respect to Licensor under and pursuant to the Merger Agreement. Accordingly, no
royalty payments shall be due Licensor from Licensee hereunder.
7. LIABILITY AND INDEMNIFICATION. Licensor shall not be liable for any
claims, damages, penalties or losses of any kind arising out of or related in
any way to the Products and Services or to Licensee's illegal or unauthorized
use of the Xxxx. Licensee shall indemnify and hold Licensor harmless from all
costs, expenses, claims, damages, penalties and losses (including without
limitation reasonable attorneys' fees) arising out of, relating to or resulting
from (i) Licensee's use or promotion of the Xxxx, (ii) any claims or causes of
action brought by any third party or governmental authority regarding the
Products and Services, and (iii) any breach or alleged breach of this Agreement
by Licensee.
8. INFRINGEMENT. The parties shall promptly notify each other of any
actual, threatened or potential infringement of the Xxxx and of any registration
or application to register any xxxx that does or may infringe the Xxxx. In the
event of an infringement problem, Licensor shall have the initial right to take
appropriate steps to prevent infringement, recover damages, and/or oppose a
conflicting registration. Licensee may take such steps only after Licensor has
expressly declined to do so and only with Licensor's prior written consent. The
party taking such steps shall be solely responsible for all costs and expenses,
including without limitation attorneys' fees, incurred in connection with such
action. Money damages and awards recovered in litigation or settlement may, at
the option of the party prosecuting the infringement, be applied first to the
full cost of litigation. The remainder shall be allocated first to Licensee as
compensation for actual losses directly related to infringement of the Xxxx, if
any, and then to Licensor. The allocations set forth in this paragraph shall
apply regardless how the damages are characterized in the judgment, award or
settlement establishing the damages.
9. TERMINATION. This Agreement and the license granted hereby shall be
terminated only under the following circumstances:
(a) Mutual Agreement. This Agreement may be terminated by the
mutual written agreement of Licensor and Licensee.
(b) Automatic Termination. This Agreement shall automatically
terminate in the event the Merger Agreement is terminated in accordance with its
terms prior to the consummation of the Merger.
(c) By Licensor. Licensor may not terminate this Agreement
without cause. If Licensee fails to cure a default under or breach of this
Agreement within thirty (30) days of receipt of written notice of default,
Licensor may terminate the Agreement by delivery of a written notice of
termination.
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(d) By Licensee. This Agreement may be terminated by Licensee
upon thirty (30) days' prior written notice to Licensor. Upon such termination,
the license granted to Licensee herein shall terminate and Licensee shall cease
all use of the Xxxx.
Upon termination of this Agreement pursuant to this Section 9, the
license granted above shall terminate immediately upon receipt of Licensor's
notice of termination, and all Licensee's use of the Xxxx must stop immediately.
10. NO ASSOCIATION. Nothing in this Agreement is intended nor shall be
construed to create a partnership, joint venture, agency relationship or other
association between Licensor and Licensee.
11. MISCELLANEOUS.
(a) Notices. Any notice or demand required or permitted to be
given under the terms of this Agreement shall be deemed to have been duly given
or made if given by any of the following methods:
(i) Deposited in the United States mail, in a sealed
envelope, postage prepaid, by registered or certified mail, return receipt
requested, respectively addressed as follows:
IF TO LICENSEE:
eSoft, Inc.
0000-X Xxxxxxxx Xxxxx
Xxxxxxx, XX 00000
Attn: President
Tel: (000) 000-0000
Fax: (000) 000-0000
WITH COPIES TO:
Xxxxx, Xxxxxx & Xxxxxx LLP
370-17th Street, Suite 4700
Xxxxxx, XX 00000
Attn: Xxxxxx X. Xxxxxxxx, Esq.
Tel: (000) 000-0000
Fax: (000) 000-0000
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IF TO LICENSOR:
Apexx Technology, Inc.
000 Xxxxx 00xx Xxxxxx
Xxxxx, XX 00000
Attn: President
Tel: (000) 000-0000
Fax: (000) 000-0000
WITH COPIES TO:
Xxxxxx Xxxxxxx Xxxxx & Xxxxxx LLP
000 Xxxx Xxxxxx, Xxxxx 0000
Xxxxx, XX 00000
Attn: Xxxx X. Xxxx, Esq.
Tel: (000) 000-0000
Fax: (000) 000-0000
(ii) Sent to the above address via an established
national overnight delivery service
(such as Federal Express), charges prepaid, or
(iii) Sent via any electronic communications method
provided the sender obtains written confirmation of receipt of the communication
by the electronic communication equipment at the office of the address listed
above; provided also that, if this method is used, the party shall promptly
follow such notice with a second notice in one of the other available methods
set forth in this Section 11(a).
(iv) Notices shall be effective on the third Business
Day after posting if sent by mail, on the next business day after posting if
sent by express courier, and on the day of dispatch if manually delivered within
regular business hours or if transmitted within regular business hours by
electronic communication methods, or otherwise on the next business day.
(v) Either party may hereinafter designate additional
or replacement addresses to which notice may be sent, upon written notice sent
to the other party at the address above designated, or subsequently designated
in accordance herewith.
(b) No Waiver of Breach. If either of the parties fails to
insist on strict performance of any obligation, duty or condition herein, or
fails to exercise any option conferred herein in any one or more instance, such
failure shall not be construed to be a waiver or relinquishment of any
obligation, agreement, option or right herein, but the same shall be and remain
in full force and effect.
(c) Survival. Notwithstanding any termination or expiration of
this Agreement, the rights and obligations of the parties under Section 2 and
Section 7 shall survive and remain fully enforceable.
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(d) Severability. If any provision of this Agreement is later
held to be illegal in any final order or judgment, the parties intend that the
illegal portion of this Agreement be severed from the remainder of the Agreement
and that the remainder of the Agreement remain in effect to the fullest extent
possible.
(e) Governing Law. This Agreement shall be governed by the
internal laws of the State of Idaho applicable to contracts made in such state
and to be performed entirely within such state, without giving effect to
principles relating to conflicts of law.
(f) Final Agreement. This Agreement constitutes the complete
and final expression of the agreement between the parties hereto with reference
to the subject matter of this Agreement. This Agreement may be amended,
supplemented or revoked at any time in whole or in part only through a written
instrument setting forth such changes signed by the party against whom
enforcement of the changes is being sought.
(g) Counterparts. This Agreement may be executed in a number
of identical counterparts, each of which shall be deemed an original, and all of
which together shall constitute one instrument.
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IN WITNESS WHEREOF, the parties have executed this License Agreement as
of the date first above written.
LICENSOR: APEXX TECHNOLOGY, INC.
By: /s/ Xxx Xxxxxxxxxxxxx
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Xxx Xxxxxxxxxxxxx, President
LICENSEE: eSOFT, INC.
By: /s/ Xxxxxxx Xxxx
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Xxxxxxx Xxxx, President
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Appendix A
U.S. PATENT AND TRADEMARK OFFICE REGISTRATION
See attached.
