EXECUTION COPY
EXHIBIT 99.A4.1
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SUBLICENSE AGREEMENT
(DIAMONDS to Sponsor)
This Sublicense Agreement is entered into as of this 1st day of
November, 2005 (this "Sublicense Agreement"), by and among PDR SERVICES LLC
(formerly PDR Services Corporation), a Delaware limited liability company
("Sublicensee"), in its capacity as sponsor of the DIAMONDS Trust, Series 1, a
unit investment trust registered under the Investment Company Act of 1940 and
organized under the laws of the State of New York (the "DIAMONDS Trust"), STATE
STREET GLOBAL MARKETS, LLC, a Delaware limited liability company ("Licensee")
and DOW XXXXX & COMPANY, INC. ("Dow Xxxxx").
W I T N E S S E T H:
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WHEREAS, pursuant to that certain License Agreement dated as of June 5,
1997, as amended (the "Original License Agreement"), and as further amended and
restated by Licensee and Dow Xxxxx on the date hereof (the "Restated License
Agreement"), Dow Xxxxx has granted Licensee a license to use Dow Xxxxx
Industrial Average and the related Dow Xxxxx Marks (as defined in the Restated
License Agreement) effective as of the closing date of the Principal Agreement,
as defined below, in connection with the exercise of its rights and the
performance of its duties as sponsor of the DIAMONDS Trust;
WHEREAS, in connection with the sponsorship of the DIAMONDS Trust,
Sublicensee wishes to use and refer to the Dow Xxxxx Industrial Average and the
related Dow Xxxxx Marks;
WHEREAS, Licensee, Sublicensee and the American Stock Exchange LLC, a
Delaware limited liability company ("AMEX"), have entered into (a) a Principal
Agreement, dated as of August 31, 2005 regarding, among other things, the
assignment of the Original License Agreement to Licensee and (b) a Marketing
Agreement, dated as
of the date hereof (the "Marketing Agreement") regarding, among other things,
the appointment of Licensee as the exclusive marketing agent of the DIAMONDS
Trust; and
WHEREAS, all capitalized and undefined terms used herein have the
meanings assigned to them in the Restated License Agreement.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, pursuant to Section 1(i) of the
Restated License Agreement, the parties hereto agree as follows: 1. Subject to
the terms and conditions of the Restated License Agreement, Licensee hereby
grants to Sublicensee a royalty free, non-exclusive and non-transferable
sublicense (which shall not be further sublicensable by Sublicensee) to use the
Dow Xxxxx Industrial Average and the Dow Xxxxx Marks for the term of the
Restated License Agreement solely in connection with the exercise of its rights
and the performance of its duties as sponsor of the DIAMONDS Trust; provided,
however, that the foregoing sublicense is subject to the continuing conditions
that (a) the obligations of AMEX and Sublicensee to Dow Xxxxx pursuant to
Section 9(a) of the Restated License Agreement with respect to any Losses (as
defined in the Restated License Agreement) that may arise out of or relate to
events that took place prior to the date thereof shall remain in effect in
accordance with the terms thereof, and (b) Amex, Sublicensee, and their
respective successors and assigns shall continue to be prohibited from issuing,
listing or trading options on any Products (as defined in the Restated License
Agreement) based on the Dow Xxxxx Industrial Average without Dow Xxxxx' prior
written consent until the earlier of (i) December 31, 2017 or (ii) the
termination of the Restated License Agreement. Dow Xxxxx shall be a third party
beneficiary of the obligations of Sublicensee under clauses (a) and (b) above.
2. This Sublicense Agreement shall terminate upon (a) a material breach
by Sublicensee of this Sublicense Agreement which remains uncured after
Sublicensee has received notice from Licensee or Dow Xxxxx in accordance with
the notice and cure periods provided in Section 6 below, (b) a material breach
by Sublicensee or AMEX of the Marketing Agreement which remains uncured after
fifteen days from the date on
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which Sublicensee or AMEX, as the case may be, receives written notice of breach
from Licensee, (c) Sublicensee no longer being sponsor of the DIAMONDS Trust or
(d) termination or expiration of the Restated License Agreement.
3. Sublicensee acknowledges that it has received and read a copy of the
Restated License Agreement. Sublicensee, on behalf of the DIAMONDS Trust, agrees
to be bound by all of the provisions therein imposing any obligations on the
Licensee but does not assume the obligations contained therein, except
Sublicensee does hereby assume (a) those obligations contained in Subsection
3(a) (payment to Dow Xxxxx of License Fees) and (b) the indemnification
obligations in Subsection 9(a), insofar as such obligations arise out of or
relate to the Product to be issued by the DIAMONDS Trust and described in
Appendix A hereto, provided, however, that for (a) and (b), Sublicensee shall
not be required to make any payments whatsoever under this Sublicense Agreement
or the Restated License Agreement that are not reimbursable by the DIAMONDS
Trust pursuant to the respective exemptive order from the U.S. Securities and
Exchange Commission granting relief, among other things, from Section
26(a)(2)(c) of the Investment Company Act of 1940, as amended. Notwithstanding
the foregoing, nothing in Section 3 of the Sublicense Agreement shall relieve
Licensee of any of its obligations to Dow Xxxxx under Sections 3 or 9(a) of the
Restated License Agreement. Therefore, for example, if Sublicensee fails to pay
the License Fees to Dow Xxxxx in accordance with Schedule C of the Restated
License Agreement, Licensee shall pay such fees to Dow Xxxxx immediately upon
Dow Xxxxx' request.
4. Sublicensee, on behalf of the DIAMONDS Trust, agrees that its
obligations under the Restated License Agreement pursuant to Section 3 hereof
are as a principal and shall be unaffected by any defense or claim that Licensee
may have against Dow Xxxxx. Licensee acknowledges and agrees that its
obligations under the Restated License Agreement to Dow Xxxxx remain as
principal and shall be unaffected by any defense or claim that Dow Xxxxx or
Licensee may have against Sublicensee under this Sublicense Agreement.
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5. This Sublicense Agreement shall be construed in accordance with the
laws of New York State without giving effect to the principles of conflicts of
laws. It is the intent of the parties that the substantive law of the State of
New York govern this Agreement and not the law of any other jurisdiction
incorporated through choice of law or conflicts of law principles. Each party
agrees that any legal action, proceeding, controversy or claim between the
parties arising out of or relating to this Agreement may be brought and
prosecuted only in the United State District Court for the Southern District of
New York or in the Supreme Court of the State of New York in and for the First
Judicial Department, and by execution of this Agreement each party hereto
submits to the exclusive jurisdiction of such court and waives any objection it
might have based on improper venue or inconvenient forum. Each party hereto
waives any right it may have to a jury trial in connection with any legal
action, proceeding, controversy or claim between the parties arising out of or
relating to the Agreement.
6. In the event of a material breach of this Sublicense Agreement by
Sublicensee, before the Sublicense Agreement may be terminated in accordance
with Section 2(a) hereof, Sublicensee shall first have received both an Initial
Notice and a Final Notice and the notice period commencing upon receipt of the
Final Notice shall have expired. For purposes of this Sublicense Agreement, an
"Initial Notice" shall mean a written notice sent to Sublicensee in accordance
with the provisions of Section 7 hereof which shall specify the nature of the
alleged breach and will notify the Sublicensee that it has 15 days from receipt
of the Initial Notice to cure such breach; and a "Final Notice" shall mean a
written notice sent to Sublicensee in accordance with the provisions of Section
7 hereof notifying Sublicensee that the breach specified in the Initial Notice
has not been cured, and will notify Sublicensee that it has 15 days from receipt
of the Final Notice to cure such breach.
7. All notices and other communications under this Sublicense shall be
(i) in writing, (ii) delivered by hand (with receipt confirmed in writing), by
registered or certified mail (return receipt requested), or by facsimile
transmission (with receipt confirmed in writing), to the address or facsimile
number, with respect to the
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Sublicensee, as set forth below, with respect to the Licensee and Dow Xxxxx, as
set forth in the Restated License Agreement, or to such other address or
facsimile number as the parties shall specify by a written notice to the others,
and (iii) deemed given upon receipt.
If to PDR Services LLC, to:
Corporate Secretary
American Stock Exchange LLC
00 Xxxxxxx Xxxxx
Xxx Xxxx, Xxx Xxxx 00000
Fax: (000) 000-0000
with copies to:
Xxxx Xxxxxxx, Chairman and Chief Executive Officer
American Stock Exchange LLC
00 Xxxxxxx Xxxxx
Xxx Xxxx, Xxx Xxxx 00000
Fax: (000) 000-0000
Xxxxxx X. Xxxxxxxx
Xxxxxxxx, Wittenstein & Xxxxxxx
000 Xxxx 00xx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Fax: (000) 000-0000
[SIGNATURE PAGE FOLLOWS]
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IN WITNESS WHEREOF, the parties hereto have executed this Sublicense
Agreement as of the date first set forth above.
PDR SERVICES LLC
By: /s/ Xxxxxxxx X. Xxxxx
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Name: Xxxxxxxx X. Xxxxx
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Its: Senior Vice President
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STATE STREET GLOBAL MARKETS, LLC
By: /s/ Xxxxxxx Xxxxx
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Name: Xxxxxxx Xxxxx
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Its: Vice President
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DOW XXXXX & COMPANY, INC.
By: /s/ Xxxxxxx X. Xxxxxxxxxx
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Name: Xxxxxxx X. Xxxxxxxxxx
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Its: President, Dow Xxxxx Indexes/Ventures
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[Signature page to DIAMONDS Sublicense Agreement]
APPENDIX A TO SUBLICENSE AGREEMENT
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PRODUCTS DESCRIPTION
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DIAMONDS TRUST, SERIES 1 that is an Exchange-Traded Fund (organized as a UIT)
registered under the Investment Company Act of 1940 which seeks to replicate the
performance of the Dow Xxxxx Industrial Average.
