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EXHIBIT 10.14
NETSCAPE
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement ("Agreement") is effective as of the 23rd day
of June 1997 ("Effective Date") and is entered into by and between Netscape
Communications Corporation ("Netscape"), a Delaware corporation located at 000
Xxxx Xxxxxxxxxxx Xxxx, Xxxxxxxx Xxxx Xxxxxxxxxx 00000, and CyberSource
Corporation ("Licensee"), a California corporation with its principal place of
business at 000 Xxxxx Xxxxxxxxxx Xxxxxxxxx, Xxxxx 000, Xxx Xxxx, Xxxxxxxxxx
00000.
RECITALS
A. Netscape owns and uses the name and/or trademark NETSCAPE and NETSCAPE
SOFTWARE DEPOT and the registered trademarks therefor as listed on
Exhibit A (collectively referred to as the "Marks") in connection with
its Internet-related software products, services and technology;
B. Licensee is in the business of secure, electronic distribution of
software and digital products over the Internet;
C. Licensee desires to use the trademark NETSCAPE solely in the titles set
forth in Exhibit B in connection with Internet online software virtual
storefront operations in the languages and geographic territories set
forth opposite such titles in Exhibit B; and
D. Netscape is willing to permit such use of the Marks under the terms and
conditions, set forth in this Agreement
NOW THEREFORE, the parties agree as follows:
1. Grant of License
1.1 Grant of License. Netscape hereby grants to Licensee a
non-exclusive, nontransferable license to use the Marks in the titles set forth
in Exhibit B solely in conjunction with Internet online software virtual
storefront operations in the languages and geographic territories set forth in
Exhibit B opposite such titles (the "Storefront Services") which shall in part,
promote Netscape's products and services and products that support Netscape
products, will be jointly developed by Netscape and Licensee, and which services
shall reside on Licensee's web site located at [_____________] deploying
Licensee's servers and be located one click away from Netscape's web site.
Licensee may only use the Marks as a collective whole and shall not separately
use any element or elements of the Marks.
1.2 Reservation of Rights. Netscape hereby reserves any and all
rights not expressly and explicitly granted in this Agreement, including
Netscape's right to authorize or license use of the Marks or any other
trademarks or names containing NETSCAPE, to any third party for use in
connection with any goods and services, including but not limited to, Internet
online software virtual storefront operations. Without limiting the rights
reserved in the preceding sentence, Netscape hereby reserves any and all rights
to use, authorize use or license use of the Marks or any other trademarks or
names containing NETSCAPE in any geographic territory listed in Exhibit B in a
language or language(s) different from the language listed next to such
geographic territory in Exhibit B. No right is provided to use any other
Netscape trademark, including without limitation, the Netscape Horizon Logo.
2. License Fee. For the rights granted to Licensee herein, Licensee shall
pay Netscape a one-time non-refundable license fee of Five Hundred Thousand
Dollars ($500,000), One Hundred Thousand
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Dollars ($100,000) of which shall be due and paid at the time of the execution
of this Agreement and Four Hundred Thousand Dollars ($400,000) of which shall be
due on June 30, 1997 and paid no later than September 30, 1997. The license fee
due hereunder is exclusive of any applicable taxes. Licensee shall be
responsible for all applicable national, state and local taxes, value added or
sales taxes, exchange, interest banking, collection and other charges and levies
and assessments pertaining to payments other than U.S. taxes based on Netscape's
net income. If Licensee is required by law to make any deduction or to withhold
from any sum payable to Netscape by Licensee hereunder, (i) Licensee shall
effect such deduction or withholding remit such amounts to the appropriate
taxing authorities and promptly furnish Netscape with tax receipts evidencing
the payments of such amounts, and (ii) the sum payable by Licensee upon which
the deduction or withholding is based shall be increased to the extent necessary
to ensure that, after such deduction or withholding Netscape receives and
retains, free from liability for such deduction or withholding a net amount
equal to the amount Netscape would have received and retained in the absence of
such required deduction or withholding.
3. Ownership of Marks. Licensee hereby acknowledges that Netscape is the
owner of the Marks, and any trademark applications and/or registrations thereto,
agrees that it will do nothing inconsistent with such ownership and agrees that
all use of the Marks by Licensee shall inure to the benefit of Netscape.
Licensee agrees that nothing in this Agreement shall give Licensee any right,
title or interest in the Marks other than the right to use the Marks in
accordance with this Agreement, Licensee agrees not to register or attempt to
register the Marks as a trademark, service xxxx, Internet domain name, trade
name, or any similar trademarks or name, with any domestic or foreign
governmental or quasigovernmental authority. Licensee may not register or use
the Marks or an abbreviation of the Marks as part of an Internet domain name.
The provisions of this paragraph shall survive the expiration or termination of
this Agreement.
4. Use of the Marks; Protection of the Marks.
4.1 Proper Use. Licensee agrees that all use of the Marks shall only
occur in connection with the Storefront Services and shall be in strict
compliance with the terms of this Agreement. Licensee may use the Marks as set
forth in Section 1.1 as well as in connection with the promotion of the
Storefront Services excluding the merchandising of non-Netscape products. Use of
the Marks for promotional purposes shall be submitted to Netscape for Netscape's
approval at least twenty (20) business days prior to the promotional use of the
Xxxx. The Marks shall always be used in the English language, and no
modifications to the Marks shall be used. Licensee shall use the Marks in
conformance with Netscape's trademark guidelines ("Trademark Guidelines"), set
forth in Exhibit C which Trademark Guidelines may be revised by Netscape from
time to time. Licensee agrees not to use any other trademark or service xxxx in
combination with the Marks other than as described in Section 1.1. Licensee has
no right to sublicense, transfer, translate or assign the use of the Marks or
use the Marks for any other purpose other than the purpose described herein.
Licensee may not use the Xxxx in connection with, or for the benefit of, any
third party's products or services. Licensee further agrees not to use the Marks
on or in connection with any products or services that are or could be deemed by
Netscape, in its reasonable judgment, to be obscene, pornographic, disparaging
of Netscape or its products or products, or otherwise in poor taste, or that are
themselves unlawful or whose purpose is to encourage unlawful activities by
others.
4.2 Quality Standards. Licensee agrees to maintain a consistent
level of quality of the Storefront Services performed in connection with the
Marks equal to that found in Licensee's existing Web site services. Licensee
further agrees to maintain a level of quality in connection with its use of the
Marks that is consistent with general industry standards.
4.3 Monitoring by Netscape. Licensee acknowledges that Netscape has
no further obligations under this Agreement other than the right to periodically
monitor Licensee's use of the Marks in conjunction with the Storefront Services.
Upon request by Netscape, Licensee shall provide Netscape with representative
samples of each such use prior to the time the Marks are published on the
Internet or in press materials or marketing or advertising materials. If
Netscape determines that Licensee is using the
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Marks improperly, and/or in connection with Storefront Services which do not
meet the standards set forth in Section 4.1 or Section 4.2, Netscape shall
notify Licensee, and Licensee shall remedy the improper use within two (2)
business days following receipt of such notice from Netscape. Use of the Marks
in connection with goods or services other than the Storefront Services or the
promotion of the Storefront Services, or in a manner inconsistent with the
Trademark Guidelines, shall constitute material breach of this Agreement. If
such material breach has not been cured within two (2) business days following
receipt of notice from Netscape, Netscape may immediately terminate the license
grant described in Section 1.1.
4.4 Legend; Disclaimer. Licensee shall include with any online
publication or publication in print containing the Marks a trademark legend
indicating that "Netscape is a trademark of Netscape Communications Corporation
registered in the U.S. and other jurisdictions" and that the Marks are used
under license, and a disclaimer that Licensee and not Netscape has produced the
Storefront Services and is responsible for the content thereof.
4.5 Storefront Services. If Netscape reasonably determines that the
Storefront Services contain or present any material that constitutes an
infringement of Netscape's trademark, patents, copyrights or trade secrets,
Licensee's right to use the Marks pursuant to the grant described in Section 1.1
shall, upon written notice from Netscape of such determination, be suspended
until Licensee has revised, removed or removed links to such material to
Netscape's reasonable satisfaction. If such revision or removal of, or removal
of links to, such material to Netscape's reasonable satisfaction has not
occurred within thirty (30) days of the notice from Netscape described in the
preceding sentence, Netscape may immediately terminate the license grant
described in Section 1.1. If Netscape reasonably determines that the Storefront
Services contains or presents any material that could reasonably constitute an
infringement of a third party's copyright, trademark, patents or trade secrets,
Netscape may immediately terminate this Agreement if Licensee has not revised to
Netscape's reasonable satisfaction that material or presentation within one (1)
business day of written notice from Netscape.
4.6 Licensee Web Sites. If Netscape, in its sole discretion, at any
time determines that Licensee's web sites or sites operated by Licensee on
behalf of other parties contain any material or present any material in a manner
that Netscape reasonably deems inaccurate or an improper tarnishment of
Netscape, the Netscape products or the Marks, or an infringement of Netscape's
or a third party's rights, including but not limited to rights under trademark,
patent, trade secret or copyright laws, or unlawful in any country or territory,
Netscape may immediately terminate this Agreement if Licensee has not revised to
Netscape's reasonable satisfaction that material or presentation within three
(3) business days of written notice from Netscape.
5. Confidential Information and Disclosure. Unless required by law, and
except to assert its rights hereunder or for disclosures to its own employees on
a "need to know" basis, Licensee agrees not to disclose the terms of this
Agreement or matters relating thereto without the prior written consent of
Netscape, which consent shall not be unreasonably withheld.
6. Indemnification by Licensee. Licensee agrees to indemnify Netscape and
to hold Netscape harmless from any and all liability, loss, damages, claims or
causes of action, including reasonable legal fees and expenses that may be
incurred by Netscape, arising out of performance of this Agreement, operation of
the Storefront Services, or Licensee's use of the marks and content on
Licensee's web sites linked to or presented in conjunction with the Marks,
except for liability, loss, damages, claims or causes of action arising out of
third party claims (i) that Licensee's use of the Marks infringe that third
party's valid and subsisting U.S. trademark registration in the Marks or (ii) in
respect of any act or omission of Netscape giving rise to liability. Netscape
shall provide Licensee with prompt written notice of any claim for which
indemnification is sought and cooperating fully with and allowing Licensee to
control the defense and settlement of such claim. Netscape may not settle any
such claim without Licensee's prior written consent, which consent shall not be
unreasonably withheld. Netscape shall have the right, at its own expense, to
participate in the defense of any such claim.
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7. Termination
7.1 Term and Termination. This Agreement and the term of the license
granted herein shall be perpetual unless terminated as provided in Section 4.3,
Section 4.5 or this Section 7.1. Netscape shall have the right to terminate this
Agreement upon the occurrence of one or more of the following: (a) any material
breach by Licensee of its obligations under this Agreement which remains uncured
for thirty (30) days or more following written notice of such breach from
Netscape, (b) use of the Marks by Licensee in a manner which is disparaging of
Netscape or its products and services and which remains uncured for two (2) days
following notice from Netscape, (c) Licensee and Netscape decide not to jointly
develop and launch the Storefront Services, or (d) the Storefront Services are
discontinued.
7.2 Effect of Termination. Upon termination of the Agreement,
Licensee agrees it shall immediately cease any and all use of the Marks.
8. General
8.1 Governing Law. This Agreement shall be subject to and governed
in all respects by the statutes and laws of the State of California without
regard to the conflicts of laws principles thereof. The Superior Court of Santa
Xxxxx County and/or the United States District Court for the Northern District
of California shall have exclusive jurisdiction and venue over all controversies
in connection herewith, and each party hereby consents to such exclusive and
personal jurisdiction and venue.
8.2 Entire Agreement. This Agreement, including Exhibit A, Exhibit B
and Exhibit C attached hereto, constitutes the entire Agreement and
understanding between the parties and integrates all prior discussions between
them related to its subject matter. No modification of any of the terms of this
Agreement shall be valid unless in writing and signed by an authorized
representative of each party.
8.3 Assignment. Licensee may not assign any of its rights or
delegate any of its duties under this Agreement, or otherwise transfer this
Agreement (by merger, operation of law or otherwise) without the prior written
consent of Netscape. Any attempted assignment, delegation or transfer in
derogation hereof shall be null and void.
8.4 Notices. All notices required or permitted hereunder shall be
given in writing addressed to the respective parties as set forth below and
shall either be (a) personally delivered or (b) transmitted by
nationally-recognized private express courier, and shall be deemed to have been
given on the date of receipt if delivered personally, or two (2) days after
deposit with such express courier. Either party may change its address for
purposes hereof by written notice to the other in accordance with the provisions
of this Subsection. The addresses for the parties are as follows:
Licensee: Netscape:
CyberSource Corporation Netscape Communications Corporation
000 Xxxxx Xxxxxxxxxx Xxxx., Xxxxx 000 000 Xxxx Xxxxxxxxxxx Xxxx, XX-000
Xxx Xxxx, Xxxxxxxxxx 00000-0000 Xxxxxxxx Xxxx, XX 00000
Fax: (000) 000-0000
Fax: [(000) 000-0000] Attn: General Counsel
Attn: [__________________________]
8.5 Force Majeure. Neither party will be responsible for any failure
to perform its obligations under this Agreement due to causes beyond its
reasonable control, including but not limited to acts of God, war, riot,
embargoes, acts of civil or military authorities, fire, floods or accidents.
8.6 Waiver. Any waiver, either expressed or implied, by either party
of any default by the other in the observance and performance of any of the
conditions, covenants of duties set forth herein shall not constitute or be
construed as a waiver of any subsequent or other default.
8.7 Headings. The headings to the Sections and Subsections of this
Agreement are included merely for convenience of reference and shall not affect
the meaning of the language included therein.
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8.8 Independent Contractors. The parties acknowledge and agree that
they are dealing with each other hereunder as independent contractors. Nothing
contained in the Agreement shall be interpreted as constituting either party the
joint venture or partner of the other party or as conferring upon either party
the power of authority to bind the other party in any transaction with third
parties.
8.9 Survival. The provisions of Section 1.2 (Reservation of Rights),
3 (Ownership of Marks), 4.4 (Legend; Disclaimer), 5 (Confidential Information
and Disclosure), 6 (Indemnification by Licensee), 7.2 (Effect of Termination)
and 8 (General) will survive any termination of this Agreement
8.10 Equitable Relief. Licensee recognizes and acknowledges that a
breach by Licensee of this Agreement will cause Netscape irreparable damage
which cannot be readily remedied in monetary damages in an action at law, and
may, in addition thereto, constitute an infringement of the Marks. In the event
of any default or breach by Licensee that could result in irreparable harm to
Netscape or cause some loss or dilution of Netscape's goodwill, reputation, or
rights in the Marks, Netscape shall be entitled to immediate injunctive relief
to prevent such irreparable harm, loss, or dilution in addition to any other
remedies available.
8.11 Severability. Except as otherwise set forth in this Agreement,
the provisions of this Agreement are severable, and if any one or more such
provisions shall be determined to be invalid, illegal or unenforceable, in whole
or in part, the validity, legality and enforceability of any of the remaining
provisions or portions thereof shall not in any way be affected thereby and
shall nevertheless be binding between the parties hereto. Any such invalid,
illegal or unenforceable provision or portion thereof shall be changed and
interpreted so as to best accomplish the objectives of such provision or portion
thereof within the limits of applicable law.
8.12 Attorney's Fees. In the event of any action, suit, or proceeding
brought by either party to enforce the terms of this Agreement, the prevailing
party shall be entitled to receive its costs, expert witness fees, and
reasonable attorneys fees and expenses, including costs and fees on appeal.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the Effective
Date.
"LICENSEE" "NETSCAPE"
CYBERSOURCE CORPORATION NETSCAPE COMMUNICATIONS
CORPORATION
By: /s/ XXXX XXXXXXX By: /s/ XXXX XXXXX
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Name: Xxxx Xxxxxxx Name: Xxxx Xxxxx
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Title: Exec VP Title: Senior VP Marketing
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Date: 23 June 1997 Date: June 23
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Exhibit A: Licensed Netscape Trademarks
Exhibit B: Titles; Target Language and Geographic Combinations
Exhibit C: Trademark Guidelines
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EXHIBIT A
MARKS
NETSCAPE U.S. Federal Trademark Registration No. 2,027,552
NETSCAPE SOFTWARE DEPOT
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EXHIBIT B
TITLE; TARGET LANGUAGE AND GEOGRAPHIC COMBINATIONS
Title Target Language Geographic Territory
----- --------------- --------------------
Netscape Software Depot by English United States and Canada
xxxxxxxx.xxx
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EXHIBIT C
TRADEMARK GUIDELINES
Netscape's Trademark Guidelines are published at the following URL:
xxxx://xxxx.xxxxxxxx.xxx/xxxx/xxxxxxxxxx.xxxx#xxxxxxxxxx
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