IPIX TRADEMARK/SERVICE XXXX LICENSE AGREEMENT
This IPIX Trademark/Service Xxxx License Agreement (hereinafter,
"Agreement") is entered into as of the effective date set forth below
(hereinafter, "Effective Date") by and between IPIX Corporation, a Delaware
corporation (hereinafter, "Licensor"), and AdMission, Inc., a Delaware
corporation (hereinafter, "Licensee").
WHEREAS, Licensor is the owner of and has the right to use and license
others the right to use the trade name, trademark and service xxxx IPIX,
including a U.S. Trademark Application Serial No.: 78/463,342 for "IPIX"
filed on August 6, 2004, Reg. No.: 2,462,085 for IPIX (Design) and Reg. No.:
2,261,417 for IPIX, the details of which are attached hereto as Exhibit 1
(hereinafter referred to collectively as the "Licensed Xxxx") in the United
States and other countries throughout the world;
WHEREAS, Licensee is the purchaser of certain of the tangible assets of
Licensor's AdMission business unit, exclusive of any use relating to the
security, surveillance, military and/or police fields (hereinafter,
"Security Sector") under the terms of an agreement entitled "Asset Purchase
Agreement" by and between IPIX Corporation as "Seller", and Licensee as the
"Buyer";
WHEREAS, Licensor is willing to license the Licensed Xxxx to Licensee;
and
WHEREAS, Licensee is interested in using the Licensed Xxxx on the terms
set forth herein;
NOW THEREFORE, in consideration of the mutual promises made herein and
for good and valuable consideration, Licensor and Licensee agree as follows:
ARTICLE I
LICENSE
1.1 Licensor hereby grants to Licensee on the terms and subject to the
conditions of this Agreement a non-exclusive, royalty-free license to use the
Licensed Xxxx for a term of eighteen (18) months from the Effective Date
(hereinafter, "Term"); provided, however, that Licensee shall be permitted to
use the Licensed Xxxx for an additional six (6) months to phase out the use of
the Licensed Xxxx for IPIX AdMission installations in existence prior to the
Effective Date of this Agreement.
1.2 Licensee agrees to use the Licensed Xxxx in accordance with the
IPIX Admission Usage Guidelines attached hereto as Exhibit 2 and made part
hereof.
1.3 Licensor grants to Licensee a license to use the Licensed Xxxx in
those countries or jurisdictions in which the Licensor has registered or does
register the Licensed Xxxx (the "Territory"). Nothing herein shall be deemed to
create any obligation on the part of the Licensor to register the Licensed Xxxx
in any country or jurisdiction.
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1.4 Licensor grants to Licensee a license to use the Licensed Xxxx
only in connection with "Company's Marketplace Definition." Licensee will not
conduct any business activities under the Licensed Xxxx other than those sectors
and activities covered by "Company's Marketplace Definition", and specifically
Licensee represents and warrants it will not use the Licensed Xxxx in the
Security Sector. For the purposes of this Agreement, "Company's Marketplace
Definition" shall have the meaning set forth in the Patent Purchase and License
Agreement by and between the Licensor and the Licensee dated as of January __,
2005.
ARTICLE II
GOODWILL
2.1 Licensee expressly recognizes and acknowledges that all use of the
Licensed Xxxx and all goodwill connected therewith shall inure to the benefit of
Licensor.
2.2 Licensee shall not use the Licensed Xxxx in any other countries
outside the Territory, in any other locations, in any other manner, in
connection with any other goods and services, or for any other purposes other
than those set forth above.
ARTICLE III
LICENSEE'S OWN MARKS
3.1 Licensee shall develop a new product name and xxxx to replace IPIX
and plan for implementation of that new name and xxxx xxxxx to the expiration of
this Agreement. Licensee shall notify Licensor of the new product name and xxxx
xxxxx to its introduction and supply Licensor with Licensee's plan for
implementation of the new name and xxxx within twelve (12) months of the
Effective Date of this Agreement. Licensee expressly agrees it will not adopt
the trademark IPIX or any confusingly similar name or xxxx as its new product
name and xxxx.
3.2 Licensor acknowledges it assigned all right, title and interest in
and to the xxxx ADMISSION and its common law rights, including goodwill
associated therewith, to Licensee, pursuant to the Asset Purchase Agreement.
3.3 Licensee shall have the right to use its own marks, advertising
expressions, and signs together with the Licensed Xxxx when promoting,
advertising or marketing products and/or services covered by this Agreement, or
separately when engaging in promotion, advertising and marketing activities for
goods and services unrelated to Company's Marketplace Position. The Licensed
Xxxx shall not be combined with marks or other intellectual property owned by
Licensee or any third party in such a way as to diminish the separate identity
of the Licensed Xxxx, except as otherwise provided in the IPIX AdMission Usage
Guidelines.
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ARTICLE IV
QUALITY CONTROL
4.1 In order to preserve the inherent value of the Licensed Xxxx,
Licensee agrees to use its best efforts to ensure the products and services
being promoted, marketed and sold by Licensee under the Licensed Xxxx pursuant
to this Agreement shall be of a quality reasonably comparable to similar
products and services promoted, marketed and sold by Licensor immediately prior
to the sale of assets to Licensee under the Asset Purchase Agreement.
4.2 It is expressly understood that the quality control standards
being adhered to include compliance with all federal, state, and local laws and
regulations in all material respects relating to Company's Marketplace
Definition described in Section 1.4 above. Furthermore, use of the Licensed
Xxxx on goods and services shall be in a manner that does not offend the sense
of propriety prevailing in the community in which such products and services are
marketed.
4.3 Upon request, Licensee agrees to assist Licensor to the extent
reasonably necessary to verify Licensee's compliance with the quality control
provisions of this Agreement so long as such verification does not unreasonably
interfere with Licensee's regular business. This assistance shall include, but
shall not be limited to, reasonable review of representative advertising and
other promotional uses of the Licensed Xxxx; visits to any and all locations
where the Licensed Xxxx is displayed; review of all customer complaint files;
and review of any complaints by federal, state or local authorities.
4.4 Licensor and Licensee acknowledge that they are equally aware of
the outstanding image, reputation and goodwill attached to the Licensed Xxxx and
each share a common interest in protecting and preserving such image, reputation
and goodwill. Licensee shall therefore exercise its best efforts to perpetuate
said image, reputation and goodwill. It is agreed that Licensee shall have the
right to use the Licensed Xxxx in television advertising, Internet web sites and
advertising, outside signs, inside signs, stationery, newspaper advertising,
business cards, forms, telephone directory listings, corporate names, flyers,
brochures, magazines, public and private advertising and promotional purposes,
displays and any other manner of use in the ordinary course of its business
which will not be inconsistent with the use of identification marks by other
similar businesses, and Licensee will not impair unreasonably the image,
reputation and goodwill of the Licensed Xxxx by any such use.
ARTICLE V
INDEMNITY
5.1 Licensee shall be responsible for and agree to indemnify and
defend Licensor, its affiliates, its parent companies, and all of their
officers, directors, agents, and employees, and to hold each of them harmless
from any claims, demands, causes of action or damages, including attorneys'
fees, arising out of or in connection with the Licensee's breach of this
Agreement or the use by Licensee or anyone under Licensee's direct or indirect
control of the Licensed Xxxx or arising out of the performance or advertising of
any service or activity conducted by Licensee or anyone under Licensee's direct
or indirect control under the Licensed Xxxx, notwithstanding any approval which
may have been given by Licensor. Licensee shall be kept fully informed of the
conduct of each such claim, demand or cause of action. This section shall not
apply to claims or actions by third parties based on trademark infringement,
or unfair competition claims related to trademark claims, based on
the Licensed Xxxx.
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ARTICLE VI
INFRINGEMENTS
6.1 Licensee shall promptly notify Licensor of any use of any word or
words, symbol or design, or combination of the foregoing, that might constitute
infringement of the Licensed Xxxx of which Licensee is or becomes aware, as well
as of any action which may be detrimental or harmful to Licensor's right to and
interest in the Licensed Xxxx.
6.2 Except as provided in Section 7.4 below, Licensor shall have the
exclusive right to bring or defend all actions or proceedings relating to the
Licensed Xxxx and Licensee shall cooperate with Licensor in the prosecution or
defense of such actions by or against third parties.
6.3 Licensee shall execute all papers necessary and desirable in
connection with any action or proceedings relating to the Licensed Xxxx and
shall testify or provide evidence whenever reasonably requested to do so.
6.4 Licensee shall promptly notify Licensor of any claim, demand or
suit brought against it by virtue of Licensee's use of the Licensed Xxxx and
shall give Licensor reasonable opportunity to defend against such claim, demand
or suit. In the event that Licensor does not notify Licensee within thirty (30)
days that it will participate in such defense, Licensee shall have the right to
defend such action at its own expense including without limitation, the right to
settle any such action, subject to the prior approval of Licensor of any
settlement which, in Licensor's opinion, affects the rights of Licensor in the
Licensed Xxxx, which approval shall not be unreasonably withheld.
ARTICLE VII
TERMINATION
7.1 This Agreement shall expire as provided in Section 2.1 unless
earlier terminated for any of the following reasons:
(a) a material breach of this Agreement by Licensee not substantially
remedied within thirty (30) days of receipt of written notice thereof given by
Licensor;
(b) insolvency of Licensee; or
(c) the filing of a bankruptcy petition by Licensee.
7.2 On or before expiration of this Agreement in accordance with
Section 2.1 above, Licensee shall have removed and/or destroyed all materials
used by it bearing the Licensed Xxxx, including but not limited to indoor and
outdoor signs, Internet web sites, stationery, forms, business cards,
advertisements, telephone book listings and company names.
7.3 Upon termination of this Agreement at any time for any reason
other than expiration of the Agreement as provided in Section 2.1 above,
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Licensee shall have sixty (60) days to remove and/or destroy any materials
bearing the Licensed Xxxx including but not limited to, all indoor and outdoor
signs, Internet web sites, stationery, forms, business cards, advertisements,
telephone book listings and company names.
7.4 Upon termination or expiration of this Agreement, Licensee will
promptly execute all necessary or appropriate documents to confirm Licensor's
exclusive ownership of the Licensed Xxxx.
7.5 Should Licensee fail to comply substantially with the provisions
of Sections 7.2, 7.3 and 7.4, Licensor shall notify Licensee of its failure to
comply and Licensor may exercise its rights for damages and equitable relief,
including the right to injunctive relief as set forth in Section 12.2 below.
ARTICLE VIII
INDEPENDENT CONTRACTOR
8.1 It is understood that Licensee is an independent contractor
engaged in the operation of its own business. This Agreement shall not make
Licensee a legal representative or agent of Licensor for any purpose
whatsoever, and Licensee shall not have the right nor authority to assume,
create or incur any liability or obligation of any kind, expressed or implied,
against, in the name of or on behalf of Licensor.
ARTICLE IX
ALIENATION
9.1 This Agreement shall not be assigned, sublicensed, franchised or
transferred, and no obligations hereunder may be delegated by Licensee without
the prior written consent of Licensor. Any attempted assignment, sublicense,
transfer, delegation, franchise or other shall be void and of no force or
effect.
ARTICLE X
MODIFICATION
10.1 No modifications, amendments, or supplements to this Agreement, whether
preceding, contemporaneous with or subsequent to the date hereof, shall be
effective for any purposes unless in writing and signed by each of the parties.
ARTICLE XI
NOTICE
11.1 Unless otherwise specifically agreed in writing, all notices required
or permitted hereunder shall be in writing, and given by personal delivery,
courier, facsimile, or certified or registered mail with postage prepaid
and return receipt requested. Notices given by Licensor to Licensee shall be
addressed to:
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AdMission, Inc.
0000 Xxxx Xxxxxx Xxxx
Xxx Xxxxx, XX 00000
Attention:
-------------------
Telephone:
-------------------
Facsimile:
-------------------
Notices given by Licensee to Licensor shall be addressed to:
IPIX Corporation
0000 Xxxxxx Xxxxxxxx Xxxxx, Xxxxx 0000
Xxxxxx, XX 00000
Attention: Xxxxx Xxxxx, President and Chief
Executive Officer
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
or at such other address or addresses as the Party addressed may from time to
time designate in writing pursuant to notice given in accordance with this
section.
Notices sent by facsimile transmission will be presumed delivered on
the day of transmission. Notices sent by personal delivery, courier or
certified or registered mail will be presumed delivered on the date signed
for.
ARTICLE XII
MISCELLANEOUS PROVISIONS
12.1 This Agreement will be interpreted and governed by the Xxxxxx Act (15
U.S.C. Sec. 1051 et seq.) and the internal laws of the state of California, and
Licensor and Licensee will submit to jurisdiction in Federal District Court for
the Central District of California for the purpose of resolving any dispute
under this Agreement.
12.2 Licensee recognizes that the Licensed Xxxx possesses a special, unique
and extraordinary character, which makes it difficult to assess the monetary
damages Licensor would sustain in the event of unauthorized use. Licensee
expressly recognizes and agrees that an irreparable injury would be caused to
Licensor by such unauthorized use, and agrees that preliminary or permanent
injunctive relief is appropriate in the event of a breach of this Agreement by
License.
12.3 Termination or expiration of this Agreement will not relieve the
parties of any liability for any act or omission which occurs before termination
or expiration for any reason; nor will termination or expiration for any reason
affect in any way the survival of any right or obligation of either party which
is expressly stated elsewhere in this Agreement to survive the termination or
expiration of this Agreement.
12.4 If any provision of this Agreement is held to be invalid, illegal or
unenforceable in any respect, this Agreement will be construed as if such
provision had never been included and will be otherwise fully enforceable.
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12.5 Except as otherwise agreed, this Agreement will be binding upon and
inure to the benefit of the parties, their respective successors and assigns.
12.6 All headings and captions in this Agreement are intended solely for the
convenience of the parties, and none shall be deemed to affect the meaning or
construction of any provision hereof.
12.7 This Agreement supercedes and replaces in its entirety any other
licensing agreements between Licensor and Licensee.
12.8 Time is of the essence of this Agreement.
[Signature Page To Follow]
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their respective duly authorized officers as of the Effective Date
set forth below.
LICENSOR:
IPIX CORPORATION,
a Delaware corporation
By:
-------------------------
Name:
Title:
LICENSEE:
ADMISSION, INC.,
a Delaware corporation
By:
-------------------------
Name:
Title:
Effective Date:
-------------------------
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EXHIBIT 1
Reg. or Reg. or
Xxxx Appln. Date Appln. No. Country
IPIX 78/463,342 United States
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EXHIBIT 2
IPIX AdMission Usage Guidelines
Objective:
The purpose of this document is to provide clear branding guidelines
and restrictions for the use of the IPIX AdMission logo. The desire of the
Licensee is to preserve the goodwill created in the IPIX AdMission logo
during the sensitive transition period immediately following the spin off of
the IPIX AdMission business unit into an independent entity. Limited continued
use of the IPIX AdMission logo will allow the Licensee to avoid potential
uncertainty in the market creating delays in customer implementations and
opportunities for increased competitive threat.
Restrictions:
Name: IPIX will only be used in association with "AdMission" (eg:
IPIX AdMission); IPIX will not be used in isolation either written or as a
wordmark
Logo: Graphically, IPIX will be used only in association with "AdMission"
Product naming:
The technology name is: AdMission;
IPIX will NOT be used as part of the product naming strategy for any new
product development;
Existing implementations will migrate to the new naming strategy as they
are renewed.
The reference to the specific application will have only a descriptive
approach in the context of the products, as follows:
AdMission Classifieds
AdMission Directories
The various components of the technology will NOT be branded. They will be used
consistently in a descriptive manner for example:
Ad Builder
Photo Uploader
Ad Manager
Ad Viewer
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For branding within a partner's page the following usage of the brand will be:
AdMission Enhanced
Publicity Guidelines:
To date all press releases have been issued under the corporate name
and boilerplate. Going forward Licensee will adopt a new press release format
focusing exclusively on its business: "AdMission, a provider of directional
advertising solutions, announced or signed. . . . .
About IPIX AdMission
IPIX AdMission is a provider of directional advertising solutions.
AdMission provides patented, "easy-to-use" technologies to newspaper and yellow
page publishers for the on-line creation and delivery ofvisually enhanced
ads. . .. . . . . . .. .. ..
Transitioning of Website to Licensee
Licensor shall provide a clickable link on the Licensor's website home
page connecting the user to Licensee's website. This link shall be comparable
in size, appearance and position with other top-level product and service links
on Licensor's website. Initial design and placement of this link and subsequent
changes to it are subject to review and approval by Licensor and Licensee, which
approval shall not be unreasonably withheld. This link shall remain active
during the Term of this Agreement and during any phase out periods as provided
for in Article 1.1 above.
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