Exhibit 10.39
MICROSOFT(R) INTERNET EXPLORER
LOGO LICENSE AGREEMENT
This Microsoft(R) Internet Explorer Logo License Agreement is made and entered
into this 2nd day of July, 1998 ("Effective Date") by and between MICROSOFT
CORPORATION, a Washington corporation located at ▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇, ▇▇
▇▇▇▇▇-▇▇▇▇ ("Microsoft"), and PRODIGY SERVICES CORPORATION, a Delaware
corporation located at ▇▇ ▇ ▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("Company").
1. DEFINITIONS
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(a) "Internet Explorer" or "IE" shall mean the Microsoft software that
upgrades Windows 95 or Windows 98 to the Internet Explorer, version 4.x
or higher level of functionality.
(b) "IE Agreement" shall mean the Microsoft Internet Explorer License and
Distribution Agreement currently in effect between the parties.
(c) "IEAK Agreement" shall mean, if applicable, the IEAK Customization Rights
Exhibit to the IE Agreement.
(d) "Referral Server Agreement", shall mean, if applicable, the Microsoft
Windows 98 and/or any other "Get Connected" Co-Marketing Agreement(s)
and/or other referral server agreement(s) executed by the parties.
(e) "Logo" shall mean the Microsoft(R) Internet Explorer logo(s) depicted in
the "Guidelines", or such additional or replacement Microsoft Internet
Explorer logos as MS may provide from time to time under this Agreement.
(f) "Guidelines" shall mean the web page entitled "Microsoft Internet
Explorer logos available for your use", which is currently located at
▇▇▇▇://▇▇▇▇.▇▇▇▇▇▇▇▇▇.▇▇▇/▇▇▇▇/▇▇▇#▇▇▇▇▇, or any successor thereto.
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(g) "Product" shall mean the COMPANY product(s) described on the registration
form and identified as "Internet Product" in the IE Agreement and/or the
Referral Server Agreement(s), and which are distributed or provided to
customers together with Microsoft Internet Explorer, in accordance with
the IE, IEAK, and/or Referral Server Agreement(s).
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(h) "Territory" subject to 2(b), shall be as defined in the IE and/or
Referral Server Agreement(s).
2. LICENSE GRANT
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(a) Subject to and expressly conditioned upon compliance with the terms and
conditions of this Agreement, MS hereby grants to COMPANY a worldwide (except as
provided in Section 2(b)), nonexclusive, nontransferable, royalty-free, personal
right to use the Logo solely in conjunction with Product in the manner described
in the Guidelines, and as may be prescribed by MS from time to time.
(b) The license right set forth in Section 2(a) shall not extend to the
Republic of China ("Taiwan"). South Korea ("Korea"), or the People's Republic
of China ("PRC"), unless and until COMPANY provides MS with written notice of
COMPANY's intent to distribute Product in these countries. COMPANY agrees not
to use the Logo in such countries and shall not be licensed pursuant to this
Agreement to do so until COMPANY has provided MS with such written notice.
(c) COMPANY may not use or reproduce the Logo in any manner whatsoever other
than as expressly described in the Guidelines.
(d) COMPANY agrees and acknowledges that MS retains all right, title and
interest in and to the Logo. Except as expressly granted in this Agreement,
COMPANY shall have no rights in the Logo. Under no circumstances will anything
in this Agreement be construed as granting, by implication, estoppel or
otherwise, a license to any MS technology or propriety right other than the
permitted use of the Logo pursuant to Section 2(a).
(e) COMPANY represents and warrants that it will use the Logo solely as
provided in this Agreement and will not use the Logo for promotional goods or
for Product which, in MS' reasonable judgment, will diminish or otherwise damage
MS' goodwill in the Logo, including but not limited to uses which could be
deemed to be obscene, pornographic, excessively violent or otherwise in poor
taste or unlawful, or which purpose or objective is to encourage unlawful
activities.
3. NO FURTHER CONVEYANCES
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The license grant in Section 2(a) is personal to COMPANY, and COMPANY shall
not assign, transfer or sublicense this Agreement (or any right granted herein)
in any manner without the prior written consent of MS.
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4. QUALITY, INSPECTION, AND APPROVAL
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(a) COMPANY agrees to maintain the quality of Product used in conjunction
with the Logo at a level that meets or exceeds industry standards and is
at least commensurate with the quality of Product previously distributed
by COMPANY.
(b) COMPANY shall supply MS with suitable specimens of Product and COMPANY's
use of the Logo in connection with Product at any time upon reasonable
notice from MS. COMPANY shall cooperate fully with MS to facilitate
periodic review of COMPANY's use of the Logo and of COMPANY's compliance
with the quality standards described in this Agreement.
(c) COMPANY shall fully correct and remedy any deficiencies in its use of the
Logo and/or the quality of Product used in conjunction with the Logo,
upon reasonable notice from MS.
(d) COMPANY represents and warrants that Product shall be distributed to
customers with Microsoft Internet Explorer in accordance with the IE,
IEAK, and/or Referral Server Agreement(s), and meets all requirements and
specifications in the IE, IEAK, and/or Referral Server Agreement(s).
(e) COMPANY warrants and represents that it will comply with all applicable
laws, rules, and regulations regarding promotion and sale of Product with
the Logo, and will not violate or infringe any right of any third party.
(f) COMPANY agrees to indemnify and defend MS from and against any and all
claims, damages, costs, and expenses (including reasonable attorneys'
fees) and pay the amount of any adverse final judgment (or settlement to
which both parties consent) arising out of or related to the Product in
any manner, including user claims regarding Product's incompatibility
with Internet Explorer; provided COMPANY is notified promptly in writing
of any claim, COMPANY has sole control over its defense or settlement,
and MS provides reasonable assistance in the defense of the same.
5. IDENTIFICATION AND USE
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(a) COMPANY shall ▇▇▇▇ every use of the Logo with the trademark designations
set forth in the Guidelines and shall comply with MS' trademark use
guidelines as amended from time to time.
(b) COMPANY acknowledges MS' ownership of the Logo and the "Microsoft"
trademark. COMPANY shall employ best efforts to use the Logo in a manner
that does not derogate from MS' rights in the Logo and will take no
action that will interfere with or diminish MS' rights in the Logo,
either during the term of this Agreement or afterwards. COMPANY agrees
not to adopt, use or register any
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corporate name, tradename, trademark, domain name, service ▇▇▇▇ or
certification ▇▇▇▇, or other designation similar to, or containing in
whole or in part, the Logo. COMPANY agrees that all use of the Logo by
COMPANY will inure to the benefit of MS. COMPANY may not use the Logo in
any way as an endorsement or sponsorship of Product by MS.
6. DEFENSE OF INFRINGEMENT CLAIM
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(a) MS agrees to indemnify and defend COMPANY from and against any and all
claims, damages, costs, and expenses (including reasonable attorneys'
fees), and pay the amount of any adverse final judgment (or settlement to
which both parties consent) resulting from, third party claim(s)
(hereinafter "Indemnified Claims") that the Logo infringes any trademark
rights of such third party in the Territory; provided MS is notified
promptly in writing of the Indemnified Claim and has sole control over
its defense or settlement, and COMPANY provides reasonable assistance in
the defense of the same.
(b) In the event MS receives information concerning an intellectual property
infringement claim (including an Indemnified Claim) related to the Logo,
MS may at its expense, without obligation to do so, either (i) procure
for COMPANY the right to continue to distribute the alleged infringing
Logo, or (ii) replace or modify the Logo to make it non-infringing, and
in which case, COMPANY shall thereupon cease distribution of the alleged
infringing Logo.
(c) MS shall have no liability for any intellectual property infringement
claim (including an Indemnified Claim) based on COMPANY's manufacture,
distribution, or use of the Logo after MS' notice that COMPANY should
cease use of such Logo due to such a claim. For all claims described in
this Section 6(c), COMPANY agrees to indemnify and defend MS from and
against all damages, costs and expenses, including reasonable attorneys'
fees.
(d) MS MAKES NO WARRANTIES EITHER EXPRESS, IMPLIED, STATUTORY OR OTHERWISE
WITH RESPECT TO THE LOGO, INCLUDING ANY WARRANTY OF NON-INFRINGEMENT,
IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE.
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7. CONSEQUENTIAL ET. AL. DAMAGES
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EXCEPT AS PART OF A THIRD PARTY DAMAGE CLAIM FOR WHICH ONE OF THE PARTIES IS
OBLIGATED TO INDEMNIFY THE OTHER, NEITHER PARTY SHALL BE LIABLE FOR ANY
CONSEQUENTIAL INCIDENTAL, INDIRECT, PUNITIVE OR SPECIAL DAMAGES (INCLUDING LOSS
OF BUSINESS PROFITS) ARISING FROM OR RELATED TO COMPANY'S MARKETING,
DISTRIBUTION OR ANY USE OF THE LOGO, REGARDLESS OF WHETHER SUCH LIABILITY IS
BASED ON BREACH OF CONTRACT, TORT, STRICT LIABILITY, BREACH OF WARRANTIES,
INFRINGEMENT OF INTELLECTUAL PROPERTY, FAILURE OF ESSENTIAL PURPOSE OR
OTHERWISE, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. IN NO EVENT
SHALL MS BE LIABLE FOR ANY DAMAGES FOR COMPANY'S USE OF THE LOGO IN VIOLATION OF
THE TERMS AND CONDITIONS OF THIS AGREEMENT
8. INFRINGEMENT
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COMPANY shall promptly notify MS of any suspected infringement of or
challenge to the Logo or any of its constituent elements.
9. TERM OF AGREEMENT
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(a) The term of this Agreement shall run from the Effective Date until the
earlier of (i) the date on which COMPANY ceases licensing and distributing any
Products to third parties pursuant to the terms of the IE, IEAK, and/or Referral
Server Agreement(s) or (ii) the date of expiration or termination of the IE,
IEAK, and/or Referral Server Agreement(s); provided however, that MS shall have
the right to terminate this Agreement with or without cause upon thirty (30)
days prior written notice.
(b) From and after termination or expiration of this Agreement, COMPANY shall
cease and desist from all use of the Logo. However, unless the Agreement is
terminated for breach, COMPANY may distribute then-existing units of Product and
advertising materials containing the Logo for a period of ninety (90) days from
the termination date provided use of the Logo in connection with such inventory
is in compliance with the terms and conditions of this Agreement.
10. NOTICES
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All notices and other communications under this Agreement shall be in writing
and shall be deemed given if delivered personally, mailed by registered or
certified mail, return receipt requested, or sent by telecopy with a receipt
confirmed by telephone, to the parties at the following addresses or to such
other addresses as a party may from time to time notify the other parties.
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MS: MICROSOFT CORPORATION
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
▇▇▇
Attention: Microsoft Internet Explorer
Logo Department
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
With Copy
To: MICROSOFT CORPORATION
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
▇▇▇
Attention: Law & Corporate Affairs, Trademarks
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
COMPANY: Information listed in the registration form.
11. ENTIRE AGREEMENT; AMENDMENT
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MS' providing this Agreement to COMPANY does not constitute an offer by MS.
Upon COMPANY's acceptance of the terms herein by submitting the registration
form below, this Agreement, including all Exhibits, contains the entire
agreement of the parties with respect to the subject matter hereof, and shall
supersede and merge all prior and contemporaneous communications. It shall not
be amended except by a written agreement subsequent to the Effective Date and
signed on behalf of the parties by their respective authorized representatives.
12. GOVERNING LAW; ATTORNEYS' FEES; EQUITABLE RELIEF
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(a) This Agreement shall be governed by and construed in accordance with the
laws of the State of Washington. COMPANY hereby consents to jurisdiction and
venue in the state and federal courts sitting in the State of Washington. The
parties agree to accept service of process by U.S. certified or registered mail,
return receipt requested, or by any other method authorized by applicable law.
(b) If either party employs attorneys to enforce any rights arising out of or
related to this Agreement, the prevailing party shall be entitled to recover its
reasonable attorneys' fees, costs, and other expenses.
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(c) COMPANY acknowledges that a breach by it of this Agreement may cause MS
irreparable damage that cannot be remedied in monetary damages in an action law,
and may also constitute infringement of the Logo. In the event of any breach
that could cause irreparable harm to MS, or cause some impairment or dilution of
its reputation or Logo, MS shall be entitled to an immediate injunction, in
addition to any other legal or equitable remedies.
13. HEADINGS
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Section headings are used in this Agreement for convenience of reference only
and shall not affect the meaning of any provision of this Agreement.
14. NO WAIVER
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No waiver of any breach of any provision of this Agreement shall constitute a
waiver of any prior, concurrent or subsequent breach of the same or any other
provision hereof, and no waiver shall be effective unless made in writing and
signed by an authorized representative of the waiving party.
15. SEVERABILITY
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If any provision of this Agreement (or any other agreements incorporated
herein) shall be held by a court of competent jurisdiction to be illegal,
invalid or unenforceable, the remaining provisions shall remain in full force
and effect.
16. RELATIONSHIP
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Neither this Agreement, nor any terms and conditions contained herein, shall
be construed as creating a partnership, joint venture or agency relationship or
as granting a franchise.
17. SURVIVAL
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The provisions of Sections 2(d), 5(b) and 7, as well as Section 4(f) with
respect to Product(s) distributed during the term of this Agreement and 6(a) for
claims based on use of the Logo permitted herein, shall survive expiration or
termination of this Agreement.
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IN WITNESS WHEREOF, the parties have entered into this Agreement as of the
Effective Date written above.
MICROSOFT CORPORATION COMPANY Prodigy Services Corp
/s/▇. ▇▇▇▇▇▇▇ /s/▇▇▇▇ ▇▇▇▇▇▇▇▇
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By (sign) By (sign)
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇
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Name: (Print) Name: (Print)
General Manager
Internet Customer Unit Acting CFO & General Counsel
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Title Title
8/18/98 7/2/98
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Date Date
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