EXHIBIT 10.5
LICENSE AGREEMENT
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THIS LICENSE AGREEMENT made and effective this 9th day of March, 1996
BETWEEN: PERLY INC., of
000 Xxxxxxxx Xxxxxx Xxxx,
Xxxxx 000,
Xxxxxxx, Xxxxxxx
X0X 0X0
("Perly")
AND: PERFECT MARKET INC., of
0000 Xxxx Xxxxxx, Xxxxx 000,
Xx Xxxxxxxxx, Xxxxxxxxxx,
X.X.X. 00000
("Perfect")
BACKGROUND
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A. Perly is the owner of U.S. trademark and service xxxx registration no.
1.706.303 registered August 11, 1992, and is the owner of non-U.S trademark
and service xxxx no. 617598 registered February 23, 1990 for CITISEARCH,
for computer programs in the field of geographic information and data bases
containing geographic information, and for consulting services in the field
of geographic information.
B. Perfect wishes to use the trademark CITYSEARCH as a trademark for providing
on the Internet listings of businesses, attractions and facilities and
their locations (including maps), as well as current events and community
information for the public and wishes to have a license from Perly for such
use.
1. Perly hereby grants to Perfect a license, subject to the terms of this
agreement, to use the xxxx CITYSEARCH for the services of providing on the
internet listings of businesses, attractions and facilities and their
locations (including maps), as well as current events and community
information for the public. The license will be worldwide except for
Canada, subject to notices and payments of fees as set forth below. Perly
agrees not to license any user other than Perfect for a service similar to
that of Perfect. Perfect agrees that Perly may utilize the xxxx itself
and/or may license a user that is associated or affiliated with Perly.
2. As partial consideration for the grant of this license. Perfect will pay
Perly a sum of $[*] (all sums mentioned herein are in U.S. dollars)
concurrently with signing of this agreement by both parties. In addition,
Perfect will within 10 days from receipt of invoices therefor from Perly,
pay to Perly the out-of-pocket expenses incurred by Perly in relation to
the subject matter of this agreement, including Perly's costs relating to
the preparation of this agreement, and Perly's costs in relation to any
work performed concerning any trademark applications or registrations which
Perly reasonably believes are necessary or desirable to improve or obtain
protection in any place for the xxxx CITYSEARCH relating to this license.
Perly agrees to notify Perfect if on any occasion its above-mentioned costs
exceed $4,000.
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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3. Perfect's license will be effective without further payment other than as
specified above, for Internet listings as specified above in the city of
Pasadena, California and for the U.S. metropolitan area as defined by the
U.S. Census Bureau which contains Pasadena. [*]
4. If Perfect wishes to make its license effective in any country outside the
U.S. (excluding Canada), Perfect will so notify Perly and will pay Perly
the sum of $1,000.00 for each country outside the U.S. Upon Perly's receipt
of such notice and payment, and subject to the terms of this agreement and
applicable law, Perfect's license for the country in question will become
effective.
5. Perfect will use the xxxx CITYSEARCH only for Internet listings of
businesses, attractions and facilities and their locations (including
maps), as well as current events and community information for the public,
which are located in areas in which its license has been made effective,
and then only in association with providing the Internet listings referred
to above. All such listings and their manner of provision will be of a high
quality and standard which will be subject to Perly's approval, such
approval not unreasonably to be withheld. Perfect will notify Perly of any
substantial change in the above mentioned Internet service or associated
material. Perfect may use the name CitySearch in its corporate name or
trade style.
6. Perfect shall in its use of the CITYSEARCH trademark publish such trademark
notice or notices, and in such matter, as Perly may from time to time
request. The standard for Perly's trademark notice request shall be that
such notifications are readable and reasonable.
7. Perfect will defend, indemnify and hold Perly harmless against all claims,
actions and suits brought against Perly and which result from, relate to or
arise from Perfect's activities under this license.
8. Perfect agrees that it will not use or advertise any word, design, xxxx or
name which is, or any part of which is, the same as, similar to or
confusingly similar with the xxxx CITYSEARCH except as specifically
permitted under this agreement.
9. Perfect acknowledges that the xxxx CITISEARCH and CITYSEARCH are and shall
at all times be solely the property of Perly, and that its use of the xxxx
CITYSEARCH enures to the benefit of Perly, and Perfect agrees that it will
not directly or indirectly do or cause to be done, whether by commission or
omission, any act which may in any way jeopardize or adversely affect the
validity or distinctiveness of such marks or the title of Perly thereto,
and Perfect agrees that it will without charge to Perly, upon request by
Perly or its representatives, do all things and execute all documents that
may at any time be necessary or desirable to ensure the validity and
distinctiveness of the xxxx CITISEARCH and CITYSEARCH and to ensure the
title of Perly thereto for all countries.
10. It is understood that Perly does not provide any warranties concerning the
trade marks licensed hereunder or Perfect's right to use such trade marks
in any place, other than Perly's own covenant not to complain of such use
by Perfect so long as Perfect complies in all respect with the terms of
this agreement. Perly warrants that Perly is the sole and exclusive owner
of the xxxx, free of all liens and encumbrances; there are no claims,
judgements or settlements to be paid by Perly or pending claims or
litigation relating to the xxxx.
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[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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11. Perfect agrees that Perly shall have the right of first refusal to supply
maps or mapping software for use in its service provided that the price and
quality of Perly's offerings shall be at least equal to Perfect's current
or proposed supplier. This right shall be subject to any previous agreement
or contract with Perfect and a third party. Perly shall have the onus to
advise Perfect when it has maps or map software where Perfect is operating.
12. The term of this license shall be five years from its date, subject to
earlier termination and to renewal as set forth below.
13. Perfect shall have the right to renew this agreement on the same terms and
conditions as those set forth here within for successive periods of one
year each by notice given to Perly at least 45 days before the expiry this
agreement or any renewal, and upon payment by Perfect to Perly of a
Payment of $[*] for each one year renewal, but no such renewal shall be
effective if Perfect is in breach of any term of this agreement, either at
time of notice or renewal.
14. If Perfect breaches this agreement, and if such breach is not remedied
within 45 days after notice of the breach is given by Perly to Perfect,
then Perly may terminate this agreement including any renewal thereof.
15. This agreement and any renewal thereof shall terminate if Perfect becomes
bankrupt or insolvent, or makes an assignment for the benefit of creditors,
or if all or any part of its business is placed in the hands of a receiver
or trustee, or if it seeks the benefit of any statute for the protection of
creditors or fails to meet its debts in general as they become due, or if
it ceases for a continuous period of six months to use the xxxx CITYSEARCH
for the Internet listings in question.
16. Perfect agrees that on termination or expiry of this agreement, it will
promptly cease use of the xxxx CITYSEARCH and will not thereafter use or
advertise the xxxx CITYSEARCH or any word, design, trademark or trade name
which is, or any part of which is, similar to or confusingly similar with
the xxxx CITISEARCH or CITYSEARCH, whether as a part of its corporate name
or otherwise.
17. It is agreed that clauses 7.9 and 16 will survive the termination or expiry
of this agreement and will remain in full force and effect at all times.
18. All notices given under this agreement will be considered properly given if
they are sent by facsimile, courier, or registered or certified mail to the
addresses of the parties as set forth above or to such other addresses as
the parties may in writing advise. Notices sent by facsimile or courier
will be considered given when received. Notices sent by registered or
certified mail will be considered given seven business days after being
mailed if there is no postal interruption in effect which would delay their
delivery.
19. This agreement is personal to Perfect and may not be assigned or
sublicensed by Perfect without Perly's prior written permission. Such
permission will not unreasonably be withheld if the assignment is to a
successor to substantially all of Perfect's business who is not a
competitor of Perly. [*] Perfect may sublicense a joint venture in which it
has a substantial interest, or a user who licenses an entire operating
package from Perfect. Such sublicensed to be valid under this agreement
must be exclusive to one sublicensee per one given country or region.
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[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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20. This agreement shall be governed by the laws of Ontario, Canada and all
disputes relating to the subject matter thereof shall be resolved by
appropriate tribunals in Ontario, Canada, whose decisions will be binding
on the parties.
21. This agreement will be binding upon and will enure to the benefit of the
parties and their respective permitted successors and assigns.
IN WITNESS OF WHICH the parties have duly executed this agreement under the
hands of their properly authorized officers.
PERLY INC.
By: [SIGNATURE ILLEGIBLE]
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Title: President
PERFECTMARKET INC.
By: /s/ Xxxxxxx Xxxx III
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Title: President & CEO
Amendment of License
Recitals:
1. Perly Inc. ("Perly") and PerfectMarket Inc. (predecessor to CitySearch
Inc., "CS", collectively the "Parties," executed that certain license
agreement dated March 9, 1996 (the "License"), whose subject matter is the
trademark "CITYSEARCH" described more fully therein (the "Xxxx").
2. Perly is the owner of registration number 365856 for the trademark
"CITYSEARCH" and recresents that this is a valid registration.
3. The Parties wish to amend the License to include Canada.
Therefore,
1. The License is hereby amended as follows:
a. Paragraph 1, line 4: "except for Canada" is deleted.
b. Paragraph 4, line 2: "(excluding Canada)" is deleted.
2. The Parties acknowledge that the purpose of this amendment is for Perly to
xxxxx XX a license to use the Xxxx in Canada pursuant to the terms and
conditions contained in the License.
3. In partial consideration for this amendment CS agrees to pay to Perly a sum
of U.S. $[*], receipt of which is hereby acknowledged.
4. The parties acknowledge that the U.S. $[*] payment will satisfy all
payment obligations with respect to Canada pursuant to paragraph 4 of the
License.
5. If the Parties further amend the License with respect to any terms and
conditions therein including, but not limited to assigning the Xxxx to CS, the
U.S. $[*] amount will be applied toward CS's payment obligations, if any,
under the further amendment.
6. The Parties will take all necessary actions with respect to the Canadian
Trademark Office to record or otherwise validate the License and this
amendment, including, without limitation, the filing, at CS's expense, of a
Canadian application for the Xxxx, provided that no such Canadian application
will be filed earlier than one month from the date hereof without CS's consent.
Perly, Inc. CitySearch Inc.
By: [SIGNATURE ILLEGIBLE] By: /s/ Xxxxxxx Xxxx III
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Its: President Its: Chief Executive Officer
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Date:Mar 14 1997 Date: 18 March 1997
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[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
