EXHIBIT 10.11
LICENSE AGREEMENT
Dated April 5, 2000
This license agreement (this "Agreement") is between ZD Inc. (hereinafter
"Licensor"), a Delaware corporation having offices at 00 Xxxx 00xx Xxxxxx, Xxx
Xxxx, XX 00000 and Ziff Xxxxx Publishing Holdings Inc. (hereinafter "Licensee"),
a Delaware corporation having offices at 000 Xxxx Xxxxxx Xxxxxx, Xxxxxxx, XX
00000.
As between Licensor and Licensee, Licensor is the owner of the full right,
title and interest in and to the xxxx Inter@ctive Investor (hereinafter the
"Xxxx") and the Inter@ctive Investor logo illustrated on Exhibit A attached
hereto and made a part hereof (the "Inter@ctive Investor Logo").
Licensee (through the division formerly known as ZD Publishing and acquired
by Licensee) has used and wishes to continue to use the Xxxx as the title of a
section on the subject of investing online (hereinafter the "Section") in the
Inter@ctive Week publication or any successor publication (hereinafter the
"Publication").
Licensor wishes to license Licensee to use the Xxxx as the title of the
Section in the Publication on the terms and conditions hereof;
In consideration of the mutual covenants and promises herein provided, the
parties agree as follows:
1. Grant of License. Licensor hereby grants to Licensee, subject to the
terms and conditions of this Agreement, a perpetual, non-transferable (except in
accordance with Section 18 hereof) royalty-free license to use the Xxxx
throughout the world (except for the United Kingdom, which is specifically
excluded) (hereinafter the "Territory") during the term of this Agreement as the
title of the Section in the Publication, and on advertising and promotional
materials related to the Section, only in the design attached hereto as Exhibit
B, or in such other design as is approved by Licensor in writing, such approval
not to be unreasonably withheld. Notwithstanding the foregoing, Licensor shall
have the right, upon notice to Licensee, to withdraw from the Territory any
country in which a third party claims that Licensee's use of the Xxxx is an
infringement or violation of such third party's rights; provided, however, that
Licensor shall not withdraw any such country from the Territory in the event
Licensee notifies Licensor in writing of its intention to resolve such third
party infringement claim at Licensee's expense; provided, further, that (i)
Licensee shall not enter into any settlement of any such claim in any way that
limits the validity or rights of Licensor in the Xxxx without Licensor's prior
written consent, and (ii) Licensee agrees to indemnify, defend and hold harmless
Licensor from all liability, damages, loss, cost or expense (including but not
limited to reasonable attorneys' fees and expenses) arising from Licensee's
continued use of the Xxxx in such country of the Territory following Licensor's
notice to Licensee of its intention to withdraw such country from the Territory
as a result of such third party infringement claim. The Xxxx xxx only be used on
print
materials and may not be used or appear in any other medium, including, without
limitation, television, the World Wide Web, the Internet, or online; provided,
however, the Xxxx xxx appear (x) in other media if it is part of the cover or
another page of the Publication and that cover or page is displayed in such
other media and (y) in Alternative Electronic Versions (as defined in Section
3(i)(z) of the Amended and Restated License Agreement between ZDNet and ZD
Publishing dated this same date (the "ZDNet License Agreement")), provided that
the Xxxx shall appear in the electronic version in locations substantially
equivalent to the locations that the Xxxx appears in the Publication in print.
All rights not expressly granted herein are reserved to Licensor, including the
right to create derivative versions of the Xxxx and to use those derivative
marks in all media.
2. Value, Ownership and Use of the Xxxx; Quality Control.
(a) Licensee acknowledges that great value is placed on the Xxxx and
the goodwill associated therewith and agrees not to challenge or contest
Licensor's ownership of the Xxxx anywhere in the world, or the validity of
the license granted under this Agreement. Nothing in this Agreement or in
the performance thereof, or that might otherwise be implied by law, shall
operate to grant Licensee any right, title or interest in or to the Xxxx
other than specified in the license grant herein.
(b) Licensee agrees to maintain the quality of all aspects of the
Publication (including any Alternative Electronic Versions) (e.g.,
editorial content, production, advertising, etc.) at a level that is at
least commensurate with the quality of printed periodicals distributed by
Licensor immediately prior to the date of this Agreement. During the term
of this Agreement, all use of the Xxxx shall be in accordance with the
guidelines attached hereto as Exhibit C, as it may be reasonably amended by
Licensor from time to time upon notice to Licensee (the "Guidelines").
(c) Licensee shall provide to Licensor use dates, use specimens and
other similar information relating to Licensee's use of the Xxxx as
necessary to monitor the quality of the Publication (including any
Alternative Electronic Versions) and obtain and maintain registration for
the Xxxx, as and when reasonably requested by Licensor. Licensee shall
remedy any deficiencies in its use of the Xxxx and/or the quality of the
Publication (including any Alternative Electronic Versions) and related
advertising and promotional materials upon notice from Licensor.
(d) Licensee shall use the Xxxx only in a form and manner that is
consistent with proper trademark usage and the Guidelines and only with the
symbols, notices and legends stated in Exhibit C as it may be reasonably
amended from time to time by Licensor upon notice to Licensee.
(e) Licensee understands, accepts and agrees that its usage of the
Xxxx shall inure solely to the benefit of Licensor. Licensee hereby assigns
and shall assign in the future to Licensor all rights it may acquire by
operation of law or otherwise in the Xxxx, including, without limitation,
all applications or registrations therefore, along with the goodwill
associated therewith.
(f) Licensee shall not knowingly do anything that is inconsistent with
or impairs the validity of the Xxxx, or that infringes, derogates, dilutes
or is inconsistent with or impairs the Xxxx or Licensor's ownership of the
Xxxx or which is detrimental to the reputation of the Xxxx or Licensor and
shall cooperate with and reasonably assist Licensor, if such cooperation
and assistance is requested, at Licensor's expense, in protecting and
maintaining Licensor's rights in the Xxxx, including, without limitation,
in any efforts of Licensor to register the Xxxx and/or
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record this Agreement. In the event that Licensee unknowingly does anything
that is inconsistent with or impairs the validity of the Xxxx, or that
infringes, derogates, dilutes or is inconsistent with or impairs the Xxxx
or Licensor's ownership of the Xxxx or which is detrimental to the
reputation of the Marks or Licensor, upon notice from Licensor, Licensee
shall promptly cease such activity.
(g) Without limiting the generality of anything in this paragraph 2 or
Exhibit C, Licensee specifically agrees that it shall not use the Xxxx, or
any name, xxxx or logo confusingly similar to the Xxxx, in any corporate,
business or trade name or in or on any electronic or online media, product
or service, whether now known or hereafter devised, except for the title of
the Section in the Publication (including any Alternative Electronic
Versions), and shall not file any trademark applications or domain name
applications or registrations or other indicia of ownership anywhere in the
world for the Xxxx or any name, xxxx or logo confusingly similar to the
Xxxx or the Inter@ctive Investor Logo, or any name, xxxx or logo
incorporating the Xxxx or the Inter@ctive Investor Logo.
(h) Licensee shall not advertise, market or publicize the Section or
the Publication in a manner suggesting Licensor's sponsorship or
endorsement of the Section or the Publication, other than the use of the
Xxxx as contemplated herein.
(i) Any breach of this Section 2 shall be deemed a material breach of
this Agreement.
3. Sublicense. Licensee may sublicense the rights to use the Xxxx granted
herein in connection with its license of foreign or other editions of the
Publication. In the event of any such sublicense, the sublicensee shall be bound
by the terms and conditions of this Agreement and Licensee shall be liable for
any breach by the sublicensee of such terms and conditions.
4. Infringement of the Xxxx; Prosecution and Maintenance of Xxxx.
(a) Licensee shall notify Licensor in writing of any infringement or
imitations by others of the Xxxx which may come to Licensee's attention,
and Licensor shall have fifteen (15) business days to determine whether it
shall take action on account of any such infringements or imitations. Any
action which Licensor takes against a third party on account of any such
infringement or imitation shall be at Licensor's expense and any final
award granted or any settlement made shall be paid to Licensor, and
Licensee shall have no claim to such award or settlement. In the event that
Licensor does not take any action within such fifteen (15) business day
period, or if Licensor begins to take action against such infringement or
imitation but later abandons such action, Licensee may institute any suit
or take any action on account of any such suspected infringements or
imitations at its own expense and any final award shall be paid to
Licensee, provided, that (i) Licensee may not settle any litigation
involving the Xxxx in any way that limits the validity or rights of
Licensor in the Xxxx, without Licensor's prior written consent, and (ii)
Licensee agrees to indemnify and defend and hold harmless Licensor from all
liability, damages, loss, cost or expense (including but not limited to
reasonable attorneys' fees and expenses) arising from Licensee's
institution of such suit or action. Each party shall cooperate with the
other party, at such other party's expense, whenever a party takes any
action against a suspected infringing or imitating party.
(b) Licensor has no obligation to file, or maintain in full force and
effect any applications or registrations for the Xxxx. Notwithstanding the
foregoing, Licensor will file applications and maintain registrations for
the Xxxx in Licensor's name at Licensee's reasonable
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request, provided that Licensee shall reimburse Licensor for the cost of
filing and prosecuting such application and maintaining any resulting
registrations. Licensor and Licensee shall cooperate with and assist each
other in the provision of documents and information in connection with any
registration or application for the Xxxx as reasonably necessary to
effectuate the procurement and maintenance of any applications or
registrations filed by Licensor for the Xxxx, whether at Licensee's request
or otherwise.
5. Term.
(a) This Agreement shall commence on the date set forth above and
shall continue thereafter unless terminated upon mutual agreement of the
parties, or in accordance with Paragraph 5(b) of (c) below (the "Term").
(b) In the event that Licensee ceases to use the Xxxx as the title of
the Section in the Publication in four (4) issues within any twelve month
period, Licensor may request by notice that the Licensee within the next
120 days use the Xxxx as the title of the Section in the Publication and
supply Licensor with evidence of such use. If Licensee fails to so use the
Xxxx within such 120 days, Licensor shall have the right to terminate this
Agreement upon notice to Licensee.
(c) In the event of a breach of this Agreement by either party, the
other party may pursue all available equitable and legal remedies
(including without limitation injunctive relief and monetary damages) but
in no event shall the license granted herein terminate because of either
party's breach of its obligations under this Agreement, except as provided
in Paragraph 5(b) above; provided, however, that in the event Licensee
materially breaches this Agreement at any time after Licensor has been
granted injunctive relief or damages, or other equitable or legal remedy,
as a result of a prior breach by Licensee of this Agreement, Licensor shall
have the right to terminate this Agreement upon written notice to Licensee
(i) if Licensee has not cured or taken reasonable steps to cure such breach
within such sixty (60) day period from Licensor; (ii) if after having taken
reasonable steps to cure such breach within such sixty (60) day period,
Licensee does not at any time thereafter continue to take reasonable steps
to cure such breach; or (iii) if after having taken reasonable steps to
cure such breach within such sixty (60) day period and thereafter, Licensee
does not cure such breach within six (6) months after the original notice
from Licensor.
6. Warranty and Indemnification. Licensee agrees to indemnify Licensor and
to save it harmless against all actions, claims, costs, damages or expenses
which may be brought or made against or incurred by Licensor as a result of or
in any way connected with (i) Licensee's conduct of its business, (ii) the
publication, marketing, promotion and distribution of the Publication,
including, without limitation, third-party claims of libel, invasion of privacy
or infringement of copyright based on material published in the Publication, or
(iii) Licensee's use of the Xxxx. Licensee acknowledges that Licensor makes no
representations or warranties to Licensee with respect to the Xxxx and Licensee
accepts the license granted herein with such understanding. Licensor agrees to
indemnify Licensee and to save it harmless against all actions, claims, costs,
damages or expenses which may be brought or made against or incurred by Licensee
as a result of or in any way connected with the infringement of third party
trademark rights as a result of Licensor's use of its marks.
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7. Limitation of Liability. EXCEPT FOR ANY INDEMNIFICATION LIABILITY
ARISING UNDER SECTION 6 HEREIN, UNDER NO CIRCUMSTANCES SHALL EITHER PARTY BE
LIABLE TO THE OTHER PARTY FOR INDIRECT, INCIDENTIAL, CONSEQUENTIAL, SPECIAL OR
EXEMPLARY DAMAGES (EVEN IF THAT PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF
SUCH DAMAGES), ARISING FROM ANY PROVISION OF THIS AGREEMENT (INCLUDING SUCH
DAMAGES INCURRED BY THIRD PARTIES), SUCH AS, BUT NOT LIMITED TO, LOSS OF REVENUE
OR ANTICIPATED PROFITS OR LOST BUSINESS.
8. No Public Statements. Neither party may make any public statements or
disclosures concerning this Agreement or its terms to any medium except with the
prior approval of both parties or as required by law or the rules of any
applicable stock exchange or any governmental agency.
9. Notices. Notices shall be in writing, sent either by hand, by certified
mail, return receipt requested, postage prepaid, or by Airborne or other
recognized overnight delivery service, all delivery changes prepaid and
addressed to Licensor and Licensee as follows:
If to Licensor: ZD Inc.
00 Xxxx 00xx Xxxxxx
Xxx Xxxx, XX 00000
Attention: President
General Counsel
Fax No.: (000) 000 0000
If to Licensee: Ziff Xxxxx Publishing Holdings Inc.
x/x Xxxxxx Xxxxx & Xxxxxxxx XX, X.X.
000 Xxxx Xxxxxx Xxxxxx
Xxxxxxx, XX 00000
Attention: President
General Counsel
Fax No.: (000) 000 0000
or to such other persons or addresses as the person to whom notice is given may
have previously furnished to the other in writing in the manner set forth above
(provided that notice of any change of address shall be effective only upon
receipt thereof). A notice shall be deemed to have been delivered (i) upon
receipt of such notice by the receiving party in the event such notice is
delivered by hand, (ii) three (3) business days following the deposit of such
notice in the mail if such notice is being delivered by mail, and (iii) one
business day following the deposit of such notice with an overnight delivery
service.
10. Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of New York, without regard to its choice
of law provisions.
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11. Severability. In the event that one or more provisions of this
Agreement shall at any time be found to be invalid or otherwise rendered
unenforceable, such provision or provisions shall be severable from this
Agreement, so that the validity or enforceability of the remaining provisions of
this Agreement shall not be affected.
12. No Waiver. Failure of the parties at any time to insist upon strict
performance of any term, condition or covenant shall not be deemed a waiver of
its right at any time thereafter to insist on strict performance.
13. Entire Agreement. This Agreement expresses all the rights, duties and
obligations between the parties relating to its subject matter, and it may not
be modified or amended except in a writing signed by both parties.
14. No Agency. This Agreement shall not be construed as to constitute
either party the agent or representative of the other for any purpose
whatsoever, and each party agrees that it has no authority to assume or to incur
any obligation or responsibility, expressed or implied, for, or on behalf of, or
in the name of, the other, or to bind, or attempt to bind, the other in any
manner or thing whatsoever.
15. Successors and Assigns. This Agreement shall be deemed to inure to the
benefit of and to bind the parties hereto and their respective successors and
permitted assigns.
16. Further Instruments. Licensee agrees to execute such further documents
and take such further steps as may be reasonable requested by Licensor to
further the purposes of this Agreement.
17. Survival. Paragraphs 2, 6, 7, 8, 10, 11, 13, 15, and 16, and any other
provisions which by their terms or sense are intended to survive the termination
of this Agreement, shall survive the termination of this Agreement.
18. Assignability. Except as part of a merger or the sale of all or
substantially all of Licensor's business or the Publication, Licensee shall not
assign or transfer this agreement or its rights or obligations hereunder without
the prior written consent of the Licensor, which consent shall not be
unreasonably withheld.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
on the day and year first above written.
ZD INC.
By: /s/ J. XXXXXXX XXXXXX
---------------------------
Name: J. Xxxxxxx Xxxxxx
Title: Senior Vice President
Ziff Xxxxx Publishing Holdings Inc.
By: /s/ XXXXXX X. XXXXXXXXXX
---------------------------
Name: Xxxxxx X. Xxxxxxxxxx
Title: President
Exhibit A
INTER@CTIVE INVESTOR
[GRAPHIC]
Exhibit B
inter@ctive investor
[GRAPHIC]
EXHIBIT C
Trademark Guidelines
All terms used in this Exhibit C that are defined in the Agreement shall
have the meaning ascribed to them in the Agreement.
1. The Xxxx licensed under the Agreement shall mean the "Inter@ctive
Investor" xxxx. The Xxxx licensed under the Agreement shall be used strictly in
accordance with the specifications set forth in the Agreement and below.
2. The "Inter@ctive Investor" xxxx shall not be enclosed in any way by a
border or combined with or incorporated with or in any other words or marks, or
modified in any other way. The "Inter@ctive Investor" xxxx shall be of
sufficient size and on an appropriately contrasting background to make all words
plainly legible.
3. Licensee will use commercially diligent efforts to use the "Inter@ctive
Investor" xxxx only as a brand or an adjective followed by the common generic
term for the xxxx, e.g., the Inter@ctive Investor section and shall not use the
"Inter@ctive Investor" xxxx in the possessive.
4. Whenever reasonable in the context of a particular use of the Xxxx,
Licensee shall identify such trademark as being used under license from
Licensor.
5. The Xxxx must include the(R)or(TM)symbol, as designated by Licensor,
and, where reasonable, the following notice: "Inter@ctive Investor is either a
registered trademark or a trademark of ZDNet, Inc. in the United States and/or
other countries."
Licensor may reasonably amend these guidelines from time to time upon at
least 60 days written notice to Licensee, subject to Licensee's consent, which
shall not be unreasonably withheld.
