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** CERTAIN CONFIDENTIAL
MATERIAL CONTAINED IN THIS
DOCUMENT HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE
406 OF THE SECURITIES ACT OF
1933, AS AMENDED.
EXHIBIT 10.12
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement ("Agreement") is effective as of the 17th day
of April, 1998 ("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 XXX.XXX ("Licensee"),
a Delaware corporation located at 0000 Xxxxx Xxxxxxx Xxxxxxxxx, Xxxxx 000,
Xxxxxxxx Xxxxxxx, XX 00000.
RECITALS
A. Netscape owns and uses the name and/or trademark NETSCAPE and the
registered trademarks therefor as listed on Exhibit A attached hereto
(collectively referred to as the "Marks"), in connection with its
Internet-related software products, services and technology;
B. Licensee produces Web sites and performs other Internet-related
services;
C. Licensee desires to use the trademark NETSCAPE solely in the titles set
forth in Exhibit A in connection with Internet communication services
in the languages and geographic territories set forth opposite such
titles in Exhibit A; 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 A solely in conjunction with Internet communication services in the
languages and geographic territories set forth in Exhibit A opposite such titles
(the "Communication Services") which shall, in part, promote Netscape's products
and services, may be jointly developed by Netscape and Licensee, and which
services shall reside on Licensee's web site located at xxxx://xxx.xxx.xxx,
deploying Licensee's servers. 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
communication services. 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 and in any language.
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2. LICENSE FEE. For the rights granted to Licensee herein, Licensee shall
pay Netscape, by cashier's check or wire transfer to an account designated by
Netscape, a one-time non-refundable licensee fee of U.S. Five Million Dollars
($5,000,000) at the time of Licensee's execution of this Agreement.
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 or the Logo as a trademark, service xxxx, Internet domain
name, trade name, or any similar trademarks or name, with any domestic or
foreign governmental or quasi-governmental authority which would be likely to
cause confusion with the Marks. 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 Communication 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
Communication Services. Licensee shall use the Marks in conformance with
Netscape's trademark guidelines ("Trademark Guidelines"), set forth in Exhibit
B, 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 or assign the use of the Marks or use the Marks for any
other purpose other than the purpose described herein. Unless otherwise agreed
in writing, 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 Communication Services performed in connection with the
Marks substantially 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
Communication 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 Marks
improperly, and/or in connection with Communication 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 on goods
or services other than the Communication Services or the promotion of the
Communication Services, or in a manner inconsistent with the Trademark
Guidelines, shall constitute
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material breach of this Agreement. If such material breach has not been cured
within two (2) business days following receipt of notice from Netscape, this
Agreement shall be terminated subject to Section 7.1(a).
4.4 LEGEND; DISCLAIMER. Licensee shall include with any online
publication or publication in print of the Marks a trademark legend indicating
that the Marks are those of Netscape, used under license, and a disclaimer that
Licensee and not Netscape has produced the Communication Services and is
responsible for the content thereof.
4.5 COMMUNICATION SERVICES. If Netscape reasonably determines that
the Communication 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
Communication 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 subject to Section
7.1(a).
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 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 subject to Section 7.1(a).
5. CONFIDENTIAL INFORMATION AND DISCLOSURE. Unless required by law or in
connection with the due diligence of actual or potential investors, 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 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 decides not to
develop and launch the Communication Services, or (d) the Communication 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 and
Exhibit B 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:
XXX.XXX Netscape Communications Corporation
0000 Xxxxx Xxxxxxx Xxxxxxxxx, Xxxxx 000 000 Xxxx Xxxxxxxxxxx Xxxx, XX-000
Xxxxxxxx Xxxxxxx, XX 00000 Xxxxxxxx Xxxx, XX 00000
Fax: (000) 000-0000 Fax: (000) 000-0000
Attn: Xxxxxxxx Xxxx Attn: General Counsel
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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.
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.
8.13 LIMITATION OF LIABILITY. EXCEPT FOR A BREACH BY LICENSEE OF
ITS CONFIDENTIALITY OBLIGATIONS AS DESCRIBED IN SECTION 5, IN NO EVENT WILL
EITHER PARTY BE LIABLE TO THE OTHER FOR LOST PROFITS OR ANY FORM OF INDIRECT,
SPECIAL, INCIDENTAL, OR CONSEQUENTIAL DAMAGES OF ANY CHARACTER FROM ANY CAUSES
OF ACTION OF ANY KIND WITH RESPECT TO THIS AGREEMENT WHETHER BASED ON CONTRACT,
TORT, OR OTHERWISE, AND WHETHER OR NOT THE OTHER PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGE. THE LIABILITY OF EITHER PARTY FOR DAMAGES OR ALLEGED
DAMAGES HEREUNDER (EXCEPT FOR DAMAGES OR ALLEGED DAMAGES ARISING UNDER SECTION
5) WHETHER IN CONTRACT OR TORT OR ANY OTHER LEGAL THEORY IS LIMITED TO AND SHALL
NOT EXCEED, IN THE AGGREGATE, AN AMOUNT EQUAL TO [ ** ].
** INDICATES CONFIDENTIAL TREATMENT REQUESTED.
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the Effective
Date.
LICENSEE NETSCAPE COMMUNICATIONS
CORPORATION
By: /s/ XXXXXXXX X. XXXX By: /s/ XXXX XXXXX
--------------------------- -------------------------------
Name: Xxxxxxxx X. Xxxx Name: Xxxx Xxxxx
------------------------ -----------------------------
Title: COO Title: EVP of Website Division
----------------------- ----------------------------
Date: April 17, 1998 Date: April 17, 1998
------------------------ -----------------------------
Exhibit A: Titles; Target Language and Geographic Combinations
Exhibit B: Trademark Guidelines
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EXHIBIT A
TITLES; TARGET LANGUAGE AND GEOGRAPHIC COMBINATIONS
Title Target Language Geographic Territory
NETSCAPE U.S. English U.S., [ ** ]
NETCENTER U.S. English U.S., [ ** ]
** INDICATES CONFIDENTIAL TREATMENT REQUESTED.
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EXHIBIT B
TRADEMARK USE GUIDELINES
Netscape's Trademark Guidelines are published at the following URL:
xxxx://xxxx.xxxxxxxx.xxx/xxxx/xxxxxxxxxx.xxxx#xxxxxxxxxx
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AMENDMENT NO. 1 TO
TRADEMARK LICENSE AGREEMENT
NO: 004025
This Amendment No. 1 (the "Amendment") is entered into by and between Netscape
Communications Corporation, a Delaware corporation, with principal offices at
000 X. Xxxxxxxxxxx Xxxx, Xxxxxxxx Xxxx, Xxxxxxxxxx 00000 ("Netscape"), and
XXX.XXX, Inc., a Delaware corporation, with offices at 0000 Xxxxx Xxxxxxx
Xxxxxxxxx, Xxxxx 000, Xxxxxxxx Xxxxxxx, XX 00000 ("Licensee") and is effective
as of the date of execution by Netscape ("Effective Date").
WHEREAS, the parties have entered into a Trademark License Agreement effective
April 17, 1998 (the "Agreement"); and
WHEREAS, the parties wish to modify and supplement the provisions of such
Agreement;
NOW, THEREFORE, the parties, in consideration of the terms and conditions
herein, agree as follows:
1. Target Languages. The following Target Languages shall be added to
Exhibit A: [ **
]
2. Geographic Territory. The Geographic Territory described in Exhibit A
shall be amended to read "Worldwide".
3. License Fee. For the additional target language and geographic
territory rights granted herein, Licensee shall pay Netscape, by
cashier's check or wire transfer to an account designated by Netscape,
a one-time non-refundable license fee of U.S. One Million Five Hundred
Thousand Dollars (US$1,500,000) within 2 business days of the Effective
Date.
4. Capitalized terms defined in the Agreement shall have the same meaning
in this Amendment as in the Agreement.
5. Except as explicitly modified, all terms, conditions and provisions of
the Agreement shall continue in full force and effect.
6. In the event of any inconsistency or conflict between the Agreement and
this Amendment, the terms, conditions and provisions of this Amendment
shall govern and control.
7. This Amendment and the Agreement constitute the entire and exclusive
agreement between the parties with respect to this subject matter. All
previous discussions and agreements with respect to this subject matter
are superseded by the Agreement and this Amendment.
IN WITNESS WHEREOF, the parties hereto have caused this Amendment to be executed
by their duly authorized representatives, effective as of the Effective Date.
NETSCAPE COMMUNICATIONS CORPORATION XXX.XXX, Inc.
By: /s/ XXXXXX X. XXXXXX By: /s/ XXXXXX X. XXXXXXX
--------------------------------- --------------------------------
Signature Signature
Name: Xxxxxx X. Xxxxxx Name: Xxxxxx X. Xxxxxxx
------------------------------- ------------------------------
Print or Type Print or Type
Title: SVP Finance Title: VP Business Development
------------------------------ -----------------------------
Date: November 2, 1998 Date: October 31, 1998
------------------------------ ------------------------------
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** INDICATES CONFIDENTIAL TREATMENT REQUESTED.
