LICENSE AGREEMENT
LICENSE dated as of __________________, 1997, between HEALTHWORLD, B.V, a
Netherlands corporation with an address at Xxxxxxxxxxx 000, 0000 XX, Xxxxxxxxx,
Xxxxxxxxxxx (the "Licensor") and THE HEALTHWORLD CORPORATION, a Delaware
corporation with an address at 000 Xxxxxx xx xxx Xxxxxxxx, Xxx Xxxx, Xxx Xxxx
00000 (the "Licensee").
W I T N E S S E T H :
WHEREAS, the Licensor is the owner of certain trademarks/service marks,
logos and other related proprietary information and materials which are used in
connection with advertising agency and related services; and
WHEREAS, the Licensee desires to license from the Licensor the right to use
such trademarks/service marks, logos and other related proprietary information
and materials; and
WHEREAS, the Licensor is willing to grant such license to the Licensee upon
the terms and conditions set forth herein;
NOW, THEREFORE, the parties in consideration of the mutual representations
and covenants contained herein hereby agree as follows:
ARTICLE 1. DEFINITIONS
1.1 "Calendar Quarter" shall mean the four three month periods of each year
as follows: January 1st to March 31st; April 1st to June 30th; July 1st to
September 30th; and October 1st to December 31st.
1.2 "Calendar Year" shall mean each annual period commencing on January 1st
and ending on December 31st.
1.3 "Licensed Property" shall mean the trademarks/service marks and logos
and trade names set forth in Schedule A annexed hereto, including, without
limitation, all Registered Marks, and all information and materials relating to
trademarks/service marks and logos, including, without limitation, all designs,
drawings, illustrations and other art.
1.4 "Permitted Sublicensee" shall mean any subsidiary or affiliate of the
Licensee.
1.5 "Registered Marks" shall mean the Licensor's trademarks/service marks,
which have been registered or for which registration has been applied for, a
list, including a description of each, which is set forth on Schedule B annexed
hereto.
1.6 "Term" shall mean the term of this License as set forth in Article 3
hereafter.
1.7 "Territory" shall mean worldwide.
ARTICLE 2. GRANT OF RIGHTS
2.1 Grant of License. The Licensor hereby grants to the Licensee the
exclusive right, during the Term, to use the Licensed Property for any lawful
purpose for which the Licensed Property may be used. The scope of the license
granted hereunder shall be applicable throughout the Territory.
2.2 Corporate Name. The Licensor also grants to the Licensee the exclusive
right to use the name HEALTHWORLD or any other trademark/service xxxx or trade
name licensed to the Licensee hereunder, as the Licensee's corporate or business
name.
2.3 Sublicense or Assignment. The Licensee shall have the right to grant a
sublicense or to assign any and all of its rights under this License to a
Permitted Sublicensee upon written notice to the Licensor. The Licensee shall
not be permitted to sublicense or assign its rights hereunder to any other
person, without the prior written consent of the Licensor.
2.4 Reserved Rights. Subject to the provisions hereof, the Licensee hereby
acknowledges and agrees that the Licensor shall retain the sole and exclusive
right of ownership of the Licensed Property. Notwithstanding such ownership, the
Licensor agrees that due to the exclusivity provided by this License and the
consideration payable hereunder, the Licensor, during the Term, shall not
license the Licensed Property to any third party for any reason whatsoever, nor
use the Licensed Property for any purpose, without the prior written consent of
the Licensee, which it may withhold, in its absolute discretion, for any reason.
2.5 Third Party Manufacturing. In the event that the Licensee uses the
Licensed Property in connection with its sale or distribution of any product,
the Licensee shall be entitled to engage third party manufacturers, of its
choice, to make and produce any such products.
ARTICLE 3. TERM
The term of this License shall commence on the date of this License and,
subject to the provisions of Article 9 hereafter, shall continue for a period of
fifty (50) years thereafter (hereinafter referred to as the "Term").
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ARTICLE 4. SAMPLES
The Licensee agrees to furnish the Licensor for its written approval, as to
quality and style, samples of all material used by the Licensee which contain
any of the Licensed Property, as well as all products which contain any of the
Licensed Property. The Licensee agrees to refrain from using any of such
materials and/or distributing any such products, until such approval shall have
been given by the Licensor. Any such approval shall not be unreasonably withheld
by the Licensor. The Licensor shall give the Licensee written notice of its
approval or rejection, within two (2) business days of its receipt of any of
such samples. The Licensee's failure to respond within such two (2) day period
shall be deemed its approval.
ARTICLE 5. ARTWORK AND REFERENCE MATERIALS
The Licensor will supply to the Licensee, without charge, all reference
materials or other materials, including artwork depicting the Licensed Property.
ARTICLE 6. ROYALTIES
Royalties. The Licensee shall pay to the Licensee the following royalties
in connection with its use of the Licensed Property: One Dollar ($1.00) per
year.
ARTICLE 7. TRADEMARK AND INTELLECTUAL PROPERTY
PROTECTION
7.1 Licensed Property. The Licensee periodically, upon the Licensor's
request, but not more than once during each Calendar Quarter, shall provide up
to five (5) samples of up to an aggregate of any three (i) materials used in
connection with the Licensee's services and (ii) products containing any of the
Licensed Property to the Licensor so that it can monitor the Licensee's
compliance with any trademark/service xxxx protections required hereunder.
7.2 Notices. All trademarks/service marks licensed hereunder, which are
used by the Licensee, shall bear trademark notices and any other legal notices
as the Licensor from time to time may direct for the protection of its rights in
such trademarks/service marks.
7.3 Ownership of Licensed Property. The Licensee acknowledges that the
Licensed Property is the sole property of the Licensor and that the Licensor has
the right to license the Licensed Property to the Licensee in the Territory and
the Licensee agrees that it will not at any time during the Term or
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thereafter dispute or contest or impair directly or indirectly the Licensor's
interest therein. It is agreed that all use of the Licensed Property by the
Licensee is on behalf of and accrues to the benefit of the Licensor.
7.4 Additional Registrations. In the event that the Licensee desires to use
any trademarks/service marks licensed hereunder in any country in the Territory
where the Licensor has not obtained a registration for such trademarks/service
marks and/or in connection with any services or goods for which the Licensor has
not obtained a registration, the Licensor agrees that, upon written notice from
the Licensee, it shall file all appropriate applications and other documents
necessary to obtain a registration for any such trademarks/service marks, as may
be required by the Licensee to protect its use of such trademarks/service marks
in the applicable Territory. The Licensor agrees to use its best efforts to
effect any such registration and the Licensee agrees to assist the Licensor, as
required, and to be named as a registered user, where required. The parties
agree to share all costs in connection with such registrations equally. The
Licensor shall be the owner of any such registrations.
7.5 Protection of Licensed Property.
(a) Action by the Licensor. The Licensee shall not commence any action
with respect to any infringement or apparent infringement relating to any
of the Licensed Property, unless the Licensor first elects not to institute
such action, at its own cost and expense. If the Licensor, elects to bring
any such infringement litigation involving or affecting the Licensed
Property, the Licensee may be joined as a party at the Licensor's expense.
If the Licensor includes the Licensee as a party in legal proceedings
pursuant to the provisions of this subsection 7.5(a) the Licensor shall
indemnify and hold the Licensee harmless from any claims, suits, judgments,
damages and reasonable expenses, costs or attorneys' fees arising out of or
related to any such legal proceedings.
(b) Action by the Licensee. In the event that the Licensor elects not
to bring any such action, the Licensee shall have the right to institute
such action hereunder, at its own cost and expense. If the Licensee elects
to commence any such action, the Licensor may be joined as a party at the
Licensee's expense. If the Licensee includes the Licensor as a party in
legal proceedings pursuant to the provisions of this subsection 7.5(b), the
Licensee shall indemnify and hold the Licensor harmless from any claims,
suits, judgments, damages and reasonable expenses, costs or attorneys' fees
arising out of or related to any such legal proceedings.
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ARTICLE 8. REPRESENTATIONS AND WARRANTIES: INDEMNIFICATIONS
8.1 Representations and Warranties of the Licensor. The Licensor represents
and warrants to the Licensee that (i) it has the requisite authority to enter
into this License, (ii) it has not granted rights to any third party which would
restrict or in any way limit the license granted to the Licensee hereunder,
(iii) the Registered Marks listed on Schedule B annexed hereto are currently in
full force and effect, and no third party has opposed the Licensor's use of any
of the Registered Marks or instituted or threatened any action for infringement
with respect to any of the Licensed Property, except as otherwise provided in
Schedule C annexed hereto and (iv) subject to the resolution of any actions set
forth on Schedule C, it owns full title and right to the Licensed Property and
the use of any of the Licensed Property by the Licensee, as authorized
hereunder, will not infringe upon the patents, trademarks, copyrights or other
intellectual property rights of any person, firm or corporation.
8.2 Indemnification by the Licensor. Subject to the provisions of Section
8.5 hereafter, the Licensor shall indemnify and hold harmless the Licensee, its
directors, officers, employees and agents from and against all claims, damages,
losses, liabilities, suits and expenses (including reasonable attorneys' fees)
arising out of or in connection with the Licensor's breach or alleged breach of
any of the representations, warranties or agreements made by it hereunder.
8.3 Representations and Warranties of the Licensee. The Licensee represents
and warrants that (i) it has the requisite authority to enter into this License
and (ii) it will not use the Licensed Property in any manner other than as
authorized pursuant to the terms and conditions of this License.
8.4 Indemnification by the Licensee. Subject to the provisions of Section
8.5 hereafter, the Licensee shall indemnify the Licensor, its directors,
officers, employees and agents and hold each of them harmless from and against
any and all claims, demands, losses, damages, liabilities, costs and expenses
(including reasonable attorneys' fees) arising out of or by reason of any breach
or alleged breach by the Licensee of any of the representations, warranties or
agreements made by it hereunder.
8.5 Obligation to Indemnify. Any claim or liability for which
indemnification is provided under this License shall be referred to as a
"Claim". An indemnified party will give the indemnifying party notice of any
Claim as soon as practicable and in any event within ten (10) days after such
indemnified party shall have had actual written notice thereof, unless a
response is required in any such action in less than ten (10) days, in
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which case such notice shall be provided not later than three (3) business days
prior to the date on which such response is due. The indemnifying party shall be
entitled at its expense to defend such Claim provided it gives such indemnified
party written notice of its election to do so within thirty (30) days after
receiving written notice from such indemnified party to defend it. Such
indemnified party shall have the right to employ its own counsel in any such
case, but the fees and expenses of such counsel shall be borne by such
indemnified party.
ARTICLE 9. TERMINATION
9.1 Licensor's Right to Terminate this License. The Licensor shall have the
right to terminate this License (without prejudice to any rights which it may
have either under the provisions of this License or otherwise), effective as of
the date of receipt by the Licensee of written notice (unless provided otherwise
herein) of such termination by the Licensor, upon the occurrence of any of the
following events:
(a) If the Licensee files a voluntary petition in bankruptcy, a
receiver or trustee of any of the Licensee's property is appointed and such
appointment is not vacated within sixty (60) days thereafter, or any order
shall be made or resolution passed for the winding up of the Licensee
(other than for the purpose of bona fide reconstruction or amalgamation),
which order is not released within sixty (60) days; or
(b) If the Licensee defaults in the performance of any of its material
obligations provided for in this License; provided, however, that the
Licensee shall be entitled to thirty (30) days prior written notice from
the Licensor of such default, and this License shall not be terminated if
the default is cured within such thirty (30) day period or if such default
is not capable of being cured within such thirty (30) day period, if the
Licensee has taken reasonable steps, within such period, to cure such
default.
9.2 Licensee's right to Terminate this License. The Licensee shall have the
right to terminate this License (without prejudice to any rights which it may
have either under the provisions of this License or otherwise), effective as of
the date of receipt by the Licensor of written notice (unless provided otherwise
herein) of such termination by the Licensee, upon the occurrence of any of the
following events:
(a) If the Licensor files a voluntary petition in bankruptcy, a
receiver or trustee of any of its property is appointed and such
appointment is not vacated within sixty (60) days thereafter, or any order
shall be made or
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resolution passed for the winding up the Licensor (other than for the
purpose of bona fide reconstruction or amalgamation), which order is not
released within sixty (60) days; or
(b) If the Licensor defaults in the performance of any of its material
obligations provided for in this License; provided, however, that the
Licensor shall be entitled to thirty (30) days prior written notice from
the Licensee of such default, and this License shall not be terminated if
the default is cured within such thirty (30) day period or if such default
is not capable of being cured within such thirty (30) day period, if the
Licensor has taken reasonable steps, within such period, to cure such
default.
ARTICLE 10. MISCELLANEOUS
10.1 Notices. All notices and statements shall be in writing and shall
together with any payments be delivered personally or by overnight courier
service or sent registered or certified mail, return receipt requested, postage
prepaid to the intended party at the address set forth at the beginning of this
License (unless notification of a change of address is given in writing), with a
copy by regular mail to Todtman, Young, Tunick, Nachamie, Xxxxxxx & Spizz, P.C.,
000 Xxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000, Attention: Xxxxxx Xxxxxxx, Esq.
Notice shall be deemed given upon delivery, if personally delivered, one day
after depositing with an overnight courier service and three days after mailing
by registered or certified mail.
10.2 Waiver, Modification. The terms of this License may not be waived or
modified except by an agreement in writing executed by the parties hereto. The
waiver by either party of any breach of this License must be in writing and
shall not be deemed to be a waiver of any prior or succeeding breach.
10.3 Relationship of the Parties. Nothing herein contained shall be
construed to place the parties in the relationship of partners or joint
venturers and neither of the parties shall have the power to obligate or bind
the other in any manner whatsoever.
10.4 No Assignment. This License may not be assigned by either party,
except as specifically provided for herein, or upon the prior written consent of
the other party.
10.5 Governing Law. This License shall be construed in accordance with the
laws of the State of New York applicable to agreements executed and to be wholly
performed therein.
10.6 Arbitration. Any dispute which arises between the parties which
pertains in any manner to this License, shall be
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resolved through binding arbitration in New York City, New York, by one
arbitrator, pursuant to the then existing rules of the American Arbitration
Association. Judgment upon any award by such arbitrator may be entered by any
state or federal court having proper jurisdiction. The parties hereto
irrevocably submit to the jurisdiction of said courts and waive any rights to
object to or challenge the appropriateness of said forums.
10.7 Captions. Captions of paragraphs appearing herein are inserted for
reference and convenience only and do not define or limit the scope or intent of
any provision hereof.
10.8 Entire Agreement. There are no representations, warranties or
covenants, with respect to the subject matter contained herein, other than those
set forth in this License which sets forth the entire understanding and
agreement among the parties hereto.
10.9 Survival. The provisions of Article 8 of this License shall survive
the expiration or earlier termination of this License.
10.10 Severability. In the event that any provision of this License should
be found by any court of competent jurisdiction to be invalid, illegal or
unenforceable in any respect, the validity, legality and enforceability of the
remaining provisions contained herein shall not in any way be affected or
impaired thereby.
IN WITNESS WHEREOF, the parties have executed this License as of the date
first above written.
HEALTHWORLD, B.V
By: /s/ X. Xxxxxx
------------------------------
Name: X. Xxxxxx
Title: Chairman
THE HEALTHWORLD CORPORATION
By: /s/ Xxxxxx Xxxxxxxx
------------------------------
Name: Xxxxxx Xxxxxxxx
Title: Chairman & CEO
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SCHEDULE A
Licensed Property
Trademarks/Service Marks: HEALTHWORLD COMMUNICATIONS; HEALTHWORLD, HEALTHWORLD
and logo; ______________________________________________________________.
Trade Names: HEALTHWORLD; _____________________________________________.
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SCHEDULE B
Registered and Pending Trademarks/Service Marks and Logos
Xxxx Country Reg. No. Goods/Services Expiration
---- ------- -------- -------------- ----------
HEALTHWORLD United States 1,825,405 Advertising March 8, 0000
XXXXXXXXXXXXXX Xxxxxx
Xxxxxxxx
XXXXXXXXXXX Xxxxxx Xxxxxx 1,825,404 Advertising March 8, 0000
Xxxxxx
Xxxxxxxx
XXXXXXXXXXX Xxxxxx Xxxxxx 1,825,412 Advertising May 30, 2005
and Logo Agency
Services
HEALTHWORLD United States Pending Medical Not
Application Information Applicable -
- Serial No. Services, namely, Publication
75/067,463 providing Date of the
physician and Xxxx is
patient November 12,
educational 1996
information
concerning health
and medical
related issues via
computer databases
supplied either
on-line or
through computer
disc or a CD-ROM
