Exhibit 10.2
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LICENSE AGREEMENT
THIS LICENSE AGREEMENT (this "Agreement") is entered into effective as of
the 29th day of January, 2004 (the "Effective Date"), by and between The Bank of
New York, a New York banking corporation ("Licensor") and Barclays Global
Investors, N.A., a national banking association ("Licensee").
WHEREAS, Licenser and Licensee have entered into a Fee Letter Agreement on
even date herewith (the "Fee Letter Agreement") regarding the establishment and
maintenance of a certain Gold-Based Securities Product (defined below) to be
known as the iShares COMEX Gold Trust.
WHEREAS, in connection with such iShares COMEX Gold Trust, Licensee wishes
to obtain a license under certain of Licensors patent rights, and Licenser
wishes to grant such license subject to the terms and conditions of this
Agreement.
NOW THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the Licensor and Licensee (each a
"Party" and collectively, the "Parties") agree as follows:
1. CERTAIN DEFINITIONS.
For the purposes of this Agreement, the following terms have the following
meanings:
"Affiliate" means any entity that directly or indirectly controls, is
controlled by or is under common control with a Party. In this context, the
term "control" means ownership of more than fifty percent (50%) of the
voting securities of such entity (or, in the case of a noncorporate entity,
equivalent interests). The term "controlled" has a corollary meaning.
"Gold-Based Securities Product" means any investment product that is based
solely on the securitization of gold. For the purposes of clarity,
Gold-Based Securities Products do not include any products involving the
securitization, in whole or in part, of any commodity other than gold.
"Licensed Product" means any Gold-Based Securities Product that is sold,
sponsored or issued by Licensee in the Territory that is covered by or
encompasses a claim contained in Licensor Patent Rights, including, but not
limited to, the iShares COMEX Gold Trust and any cross-listings of the
shares thereof for trading on any non-U.S. securities exchanges within the
Territory.
"Licensee Improvements" means any improvement, enhancement, modification,
derivative work or upgrade to any of Licensor Patent Rights made,
conceived, reduced to practice, affixed or otherwise developed by or on
behalf of Licensee during the term of this Agreement and solely as
exercised under the License.
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"Licensor Patent Rights" means: (i) U.S. Patent Application No. 10/680,589,
filed on October 6, 2003, entitled "Systems and Methods for Securitizing a
Commodity" (the "Patent Application"), (ii) all foreign and international
counterparts filed by or on behalf of Licensor (iii) all continuations,
continuations-in-part, divisionals, substitutes and equivalents thereof
relating to any of the foregoing patent applications (iv) all letters
patent that are or may be granted from any of the foregoing patent
applications, and (v) all know-how related to any of the foregoing patents
and patent applications.
"Territory" means worldwide.
"Trust Agreement" means a definitive agreement entered into among Licensee,
Licensor and certain other parties that, among other things, establishes a
Licensed Product and sets forth the respective roles and responsibilities
of Licensee and Licensor with respect to such Licensed Product.
"Trustee" means any entity designated to act in the capacity of any or all
of the following, as the context requires: trustee, custodian, issuing
agent, registrar, agent, administrator or the like for and on behalf of (i)
the sponsor, issuer or other entity offering shares in Gold-Based
Securities Product and/or (ii) any participant of such Gold-Based
Securities Product.
2. LICENSE.
Subject to the terms and conditions of this Agreement, Licensor hereby
grants to Licensee a non-exclusive, personal and non-transferable (except
as provided in Article 12.1) license under Licensor Patent Rights for the
term of this Agreement solely for the purpose of establishing, operating
and marketing the Licensed Product in the Territory (the "License").
The License includes the limited right of Licensee to grant sublicenses to
its Affiliates, partners, joint venturers, trustees, custodians and agents
(each a "Sublicensee"), but solely in connection with such Sublicensee's
establishment, operation and marketing of the Licensed Product and provided
that Licensee shall have previously entered into an enforceable, written
agreement with each such Sublicensee on terms no less protective of
Licensor's rights in the Licensor Patent Rights that the terms in this
Agreement and shall provide Licensor with copies of such agreements on
request.
ALL RIGHTS NOT SPECIFICALLY AND EXPRESSLY GRANTED TO LICENSEE IN THIS
ARTICLE 2 ARE HEREBY RESERVED TO THE LICENSOR.
3. COVENANT TO LICENSOR.
Licensee covenants that it will not directly or indirectly initiate or
participate in any action of any kind against Licensor, its successors and
Affiliates, for their use of any Licensee Improvements in connection with
establishing, operating or marketing investment products in the Territory
based, in whole or in part, on the securitization of any commodity,
including gold. This covenant is perpetual, personal, royalty-free and
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non-exclusive. This covenant shall survive termination or expiration of
this Agreement for any reason except termination for Licensor's breach of
this Agreement.
4. PAYMENT.
The grant of the License hereunder is in consideration for the engagement
of Licensor to act as Trustee for each Licensed Product under terms
substantially as set forth in the Fee Letter Agreement, or such other terms
as the Parties may mutually agree in writing hereafter. No additional
payment of royalties to Licensor shall be required as long as Licensor is
so engaged.
In the event that Licensor ceases to act as Trustee for a Licensed Product
for any reason, then, to continue to enjoy the benefit of the License with
respect to such Licensed Product, Licensee shall thereafter pay Licensor a
running royalty that will accrue daily at the annualized rate of not
greater than 0.0500% (five (5) basis points) of the total gross adjusted
assets of such Licensed Product (the "Royalty Fee"), which rate shall be
determined by Licensor in its discretion. Such Royalty Fee shall be due and
payable within ten (10) days following the end of each calendar month for
which such Royalty Fee has accrued.
All payments to Licensor hereunder shall be made in United States dollars
either by corporate check to Licensor at the address specified in Article
12 (or such other address as Licensor may hereafter designate in writing)
or by wire transfer to a bank account designated by Licensor in writing.
Payments to Licensor hereunder shall be deemed made as of the day on which
they are received by Licensor at such address or bank account. Late
payments shall accrue interest from the date due at rate that is the lesser
of 1.5% per month or the maximum rate permitted by law.
Except with respect to any taxes assessed directly upon Licensor's income,
all amounts payable by Licensee under this Agreement are exclusive of any
taxes that are or may be assessed or imposed by any governmental authority
in any jurisdiction in connection with establishing, operating and
marketing such Licensed Product, including without limitation, any sales,
use, excise, value-added, personal property, export, import or withholding
taxes, which taxes shall all be assumed and paid by Licensee.
5. REPORTS, RECORDS AND AUDITS.
During the term of this Agreement, for so long as Licensee has a royalty
obligation to Licensor under the terms hereof, Licensee shall deliver to
Licensor within ten (10) days of the end of each calendar month a report
setting forth in reasonable detail the Royalty Fee due to Licensor for such
calendar month and Licensee's calculation of the same.
During the term of this Agreement, for so long as Licensee has a royalty
obligation to Licensor under the terms hereof and for three (3) years
thereafter, Licensee shall keep complete and accurate books and records in
sufficient detail to enable Licensor to verify the amounts due to it
hereunder.
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During the term of this Agreement, for so long as Licensee has a royalty
obligation to Licensor under the terms hereof and for three (3) years
thereafter, Licensor shall have the right, through a qualified independent
auditor, to review and audit the books and records of Licensee for the
purpose of verifying the accuracy of royalty payments made by Licensee
under this Agreement. Such reviews and audits shall be conducted with
reasonable prior written notice to Licensee, at Licensee's place of
business and during Licensee's normal business hours, and shall not be
conducted more than once per calendar year. Each review and audit hereunder
shall be at Licensor's sole cost and expense; provided, however, that
Licensee shall promptly reimburse Licensor for all costs and expenses
actually incurred in connection with a review and audit if the auditor
determines that Licensee has underpaid by five percent (5%) or more during
the relevant period under examination. Licensee will promptly pay Licensor
the amount of any underpayment revealed by a review and audit, plus
interest at the rate that is the lesser of 1.5% per month or the highest
rate allowed by law from the dates that any unpaid amounts were due.
6. ENFORCEMENT.
Licensee shall promptly (i) notify Licensor of any potential or actual
infringement by a third party of Licensor Patent Rights of which Licensee
becomes aware, and (ii) provide to Licensor all evidence of such
infringement in Licensee's possession, custody or control. Licensor shall
have the sole right, but not the obligation, to initiate any legal action
at its own expense against such infringement and to recover damages and
enforce any injunction granted as a result of any judgment in Licensor's
favor. Licensor shall have sole control over any such action including,
without limitation, the sole right to settle and compromise such action. In
the event of a dispute between Licensor and any third party regarding the
infringement, validity or enforceability of Licensor Patent Rights,
Licensee agrees, at Licensor's expense, to do all things reasonably
requested by Licensor to assist Licensor in connection with such dispute.
7. TERM AND TERMINATION.
This Agreement shall commence on the Effective Date and, unless earlier
terminated according to the terms of this Agreement, shall expire upon the
expiration or lapse of the last-to-expire or lapse of the Licensor Patent
Rights (or, if earlier, upon the entry of a final order by a court of
competent jurisdiction, which order is not appealable or regarding which
appeal is not taken, effectively holding that there is no valid claim
included in the Licensor Patent Rights).
During the term of this Agreement, Licensor shall diligently prosecute
and/or maintain Licensor Patent Rights. If no letters patent are granted on
the applications specified in Licensor Patent Rights or if all such
applications are finally rejected without appeal being taken or are
abandoned, withdrawn or otherwise lapse, then the License granted pursuant
to this Agreement shall terminate immediately. Licensor shall notify
Licensee promptly in writing if the foregoing events shall occur.
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The License granted pursuant to this Agreement will terminate immediately,
without any requirement for Licensor to provide notice, with respect to any
Licensed Product that is terminated.
In addition, either Party may terminate this Agreement by written notice at
any time if the other Party materially breaches this Agreement and fails to
cure such breach with thirty (30) days following written notice thereof
from the non-breaching Party. Upon any termination or expiration of this
Agreement, all rights and obligations under this Agreement (including
Licensee's rights under the License) will immediately terminate; provided,
however, that the provisions of Articles 1, 8 (the second paragraph only),
10 (solely with respect Licensee's Losses based on or arising from
Licensee's exercise of its rights in accordance with this Agreement while
the License was in effect), 11 and 12, and any other provision that
survives by its express terms, shall survive any termination or expiration
of this Agreement.
8. ACKNOWLEDGMENT OF RIGHTS.
During the term of this Agreement, Licensee will not directly or
indirectly: (i) initiate or participate in any proceeding of any kind
opposing the grant of any patent, or challenging any patent application,
within the Licensor Patent Rights, (ii) dispute the validity or
enforceability of any patent within the Licensor Patent Rights or any of
the claims thereof, or (iii) assist any other Person to do any of the
foregoing (except if required by court order or subpoena); provided,
however, the foregoing shall in no way limit Licensee's ability to defend
against or to mitigate any claim brought by Licensor against Licensee.
During the term of this Agreement and thereafter, Licensee shall not
directly or indirectly interfere improperly with Licensor's ability to
negotiate with any potential licensee under, or any potential purchaser of,
the Licensor Patent Rights, or assist any other Person to do the foregoing
(except if required by court order or subpoena). This paragraph shall
survive termination or expiration of this Agreement for any reason.
Any violation of this Article 8 will constitute a material breach of this
Agreement.
9. REPRESENTATIONS AND WARRANTIES.
Each Party hereby represents and warrants that (i) it has the power and
authority to enter into this Agreement and perform its obligations
hereunder; (ii) the execution and delivery of this Agreement have been duly
authorized and all necessary actions have been taken to make this Agreement
a legal, valid and binding obligation of such Party enforceable in
accordance with its terms; and (iii) the execution and delivery of this
Agreement and the performance by such Party of its obligations hereunder
will not contravene or result in any breach of the Certificate of
Incorporation or Bylaws of such Party or of any agreement, contract,
indenture, license, instrument or understanding or, to the best of its
knowledge, result in any violation of law, rule, regulation, statute, order
or decree to which such Party is bound or by which they or any of their
property is subject.
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EXCEPT AS EXPRESSLY SET FORTH IN THE FOREGOING, LICENSOR DOES NOT MAKE AND
HEREBY EXPRESSLY DISCLAIMS ALL OTHER WARRANTIES, EXPRESS OR IMPLIED,
STATUTORY OR OTHERWISE, REGARDING THE SUBJECT MATTER OF THIS AGREEMENT
INCLUDING, BUT NOT LIMITED TO, ANY WARRANTIES OF MERCHANTABILITY, TITLE,
FITNESS FOR A PARTICULAR PURPOSE, OR NON-INFRINGEMENT.
10. INDEMNITY.
Each Party shall defend, indemnify and hold harmless the other Party and
such other Party's Affiliates, employees, officers, directors, and agents
from and against any liabilities, losses, damages, costs or expenses
(including, without limitation, reasonable attorneys' fees)(collectively,
"Losses") resulting from or arising in connection with the breach by the
indemnifying Party of any of its representations, warranties, covenants or
obligations contained in this Agreement.
Licensor shall indemnify, defend and hold harmless Licensee and its
permitted sublicensees and assigns, Affiliates, employees, officers,
directors, and agents from and against any Losses resulting or arising from
any claim by the World Gold Council and/or World Gold Trust Services, LLC
that Licensee establishing, operating or marketing Licensed Products in
accordance with the terms of this Agreement infringes or otherwise violates
any intellectual property rights of the World Gold Council and/or World
Gold Trust Services, LLC.
Licensor shall indemnify, defend and hold harmless Licensee and its
permitted sublicensees and assigns, Affiliates, employees, officers,
directors, and agents from and against any Losses resulting from or arising
from any claim by Gemini Diversified Holdings LLC and/or Xx. Xxx Xxxxxx
that Licensee establishing, operating or marketing Licensed Products in
accordance with the terms of this Agreement infringes or otherwise violates
any intellectual property rights of Gemini Diversified Holdings LLC and/or
Xx. Xxx Xxxxxx. NOTWITHSTANDING THE FOREGOING, LICENSEE AGREES THAT
LICENSOR'S ENTIRE LIABILITY TO THE INDEMNIFIED PARTIES IN RESPECT TO ANY
SUCH CLAIM, IF ANY, SHALL IN NO EVENT EXCEED THE AMOUNT OF SEVENTY-FIVE
THOUSAND U.S. DOLLARS ($75,000) IN THE AGGREGATE, WHETHER SUCH LIABILITY
ARISES IN CONTRACT, TORT OR OTHERWISE AND EVEN IF LICENSOR HAS BEEN ADVISED
OF THE POSSIBILITY OF LOSSES EXCEEDING SAID AMOUNT, AND THAT THE
INDEMNIFIED PARTIES SHALL BE SOLELY RESPONSIBLE FOR ALL LOSSES IN EXCESS OF
SAID AMOUNT.
Each Party shall indemnify, defend and hold harmless the other Party and
such other Party's Affiliates, employees, officers, directors, and agents
from and against any Losses resulting or arising from any third-party claim
that is based on, arises from or is related to the indemnifying Party
allegedly having unauthorized possession of, making unauthorized use of, or
obtaining/providing unauthorized access to, such third party's trade
secrets, confidential or proprietary information, or service (whether such
claim arises under tort, breach of express or implied contract, or
otherwise), which acts are
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allegedly committed in connection with indemnifying Party establishing,
operating or marketing a Licensed Product in accordance with this
Agreement; provided, however, that the indemnity set forth in this
paragraph shall not apply with respect to, and shall specifically exclude,
(i) Losses resulting or arising from any third-party claim of patent,
trademark or copyright infringement, and all claims based thereon, (ii)
Losses arising as a result of the Indemnifying Party's obligations or
duties in connection with a Trust Agreement (including, but not limited to,
the Depository Trust Agreement for the iShares COMEX Gold Trust), the
Parties acknowledging that such Losses, if any, are to be addressed
pursuant to the terms of the Trust Agreement, and (iii) Losses covered by
the second and third paragraphs of this Section 10, which paragraphs shall
be Licensee's exclusive remedy for such Losses.
If any action, suit, proceeding (including, but not limited to, any
governmental investigation), claim or dispute (collectively, a
"Proceeding") is brought or asserted against a Party for which
indemnification is sought under this Agreement, the Party seeking
indemnification (the "Indemnified Party") shall promptly (and in no event
more than seven (7) days after receipt of notice of such Proceeding) notify
the Party obligated to provide such indemnification (the "Indemnifying
Party") of such Proceeding. The failure of the Indemnified Party to so
notify the Indemnifying Party shall not impair the Indemnified Party's
ability to obtain indemnification from the Indemnifying Party (but only for
costs, expenses and liabilities incurred after such notice) unless such
failure adversely affects the Indemnifying Party's ability to adequately
oppose or defend such Proceeding. Upon receipt of such notice from the
Indemnified Party, the Indemnifying Party shall be entitled to participate
in such Proceeding at its own expense. Provided no conflict of interest
exists as specified in clause (ii) below and there are no other defenses
available to Indemnified Party as specified in clause (iv) below, the
Indemnifying Party, to the extent that it shall so desire, shall be
entitled to assume the defense of the Proceeding with counsel reasonably
satisfactory to the Indemnified Party, in which case all attorney's fees
and expenses shall be borne by the Indemnifying Party (except as specified
below) and the Indemnifying Party shall in good faith defend the
Indemnified Party. After receiving written notice from the Indemnifying
Party of its election to assume the defense of the Proceeding, the
Indemnified Party shall have the right to employ separate counsel in any
such Proceeding and to participate in the defense thereof, provided that
the fees and expenses of such counsel shall be borne entirely by the
Indemnified Party unless (i) the Indemnifying Party expressly agrees in
writing to pay such fees and expenses, (ii) there is such a conflict of
interest between the Indemnifying Party and the Indemnified Party as would
preclude, in compliance with the ethical rules in effect in the
jurisdiction in which the Proceeding was brought, one lawyer from
representing both parties simultaneously, (iii) the Indemnifying Party
fails, within the earlier of (x) twenty (20) days following receipt of
notice of the Proceeding from the Indemnified Party or (y) seven (7) days
prior to the date the first response or appearance is required to be made
in such Proceeding, to assume the defense of such Proceeding with counsel
reasonably satisfactory to the Indemnified Party or (iv) there are legal
defenses available to the Indemnified Party that are different from or are
in addition to those available to the Indemnifying Party. In each of cases
(i) through (iv), the fees and expenses of counsel shall be borne by the
Indemnifying Party. No compromise or
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settlement of such Proceeding may be effected by either Party without the
other Party's consent unless (m) there is no finding or admission of any
violation of law and no effect on any other claims that may be made against
such other Party and (n) the sole relief provided is monetary damages that
are paid in full by the Party seeking the settlement. Neither Party shall
have any liability with respect to any compromise or settlement effected
without its consent, which shall not be unreasonably withheld. The
Indemnifying Party shall have no obligation to indemnify and hold harmless
the Indemnified Party from any loss, expense or liability incurred by the
Indemnified Party as a result of a default judgment entered against the
Indemnified Party unless such judgment was entered after the Indemnifying
Party agreed, in writing, to assume the defense of such Proceeding.
11. LIMITATION OF LIABILITY.
IN NO EVENT SHALL LICENSOR BE LIABLE FOR ANY SPECIAL, INCIDENTAL,
CONSEQUENTIAL, PUNITIVE, EXEMPLARY OR OTHER INDIRECT DAMAGES, HOWSOEVER
CAUSED, WHETHER ARISING IN CONTRACT, TORT OR OTHERWISE, EVEN IF IT HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
12. MISCELLANEOUS PROVISIONS.
12.1. Assignment. Licensee may not assign or otherwise transfer (whether by
operation of law or otherwise) any right or obligation under this
Agreement without the prior written consent of Licensor. Such consent
shall be deemed given with respect to an assignment or transfer
(whether by operation of law or otherwise) of the entire Agreement,
including all rights and obligations hereunder, to a successor in
interest or assignee of substantially all of the assets of Licensee,
provided that Licensee has given prompt written notice thereof to
Licensor. This Agreement is binding on and inures to the benefit of
the Parties and their permitted successors and assigns. Any attempted
assignment or other transfer of rights under this Agreement in
violation of this Article 12.1 will be void.
12.2. Governing Law. This Agreement will be governed by and construed under
the laws of the State of New York, without reference to any choice of
law rules (except that questions affecting the construction and effect
of any patent will be determined by the law of the country in which
the patent was granted).
12.3. Exclusive Jurisdiction and Venue. Any action brought by either Party
that arises out of or relates to this Agreement will be filed only in
the state or federal courts located in New York County, New York. Each
Party irrevocably submits to the jurisdiction of those courts. Each
Party waives any objections that it may have now or in the future to
the jurisdiction of those courts, and also waives any claim that it
may have now or in the future that litigation brought in those courts
has been brought in an inconvenient forum.
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12.4. Entire Agreement. This Agreement sets forth the entire agreement of
the Parties as to its subject matter and supercedes all prior
agreements, negotiations, representations, and promises between them
with respect to its subject matter.
12.5. Unenforceable Provisions. If any provision of this Agreement is held
unenforceable by a court of competent jurisdiction, the other
provisions will remain in full force and effect. If legally permitted,
the unenforceable provision will be replaced with an enforceable
provision that as nearly as possible gives effect to the Parties'
intent.
12.6. Relationship Of The Parties. Each Party is an independent contractor
of the other Party. Nothing in this Agreement creates a partnership,
joint venture or agency relationship between the Parties.
12.7. Notices. A notice under this Agreement is not sufficient unless it
is: (i) in writing; (ii) addressed using the contact information
listed below for the Party to which the notice is being given (or
using updated contact information which that Party has specified by
written notice in accordance with this Article); and (iii) sent by
hand delivery, facsimile transmission, registered or certified mail
(return receipt requested), or reputable express delivery service with
tracking capabilities (such as Federal Express).
Contact Information for Licensor: Contact Information for Licensee:
The Bank of New York Barclays Global Investors, N.A.
One Wall Street 00 Xxxxxxxx Xxxxxx
Xxx Xxxx, XX 00000 Xxx Xxxxxxxxx, XX 00000
Attn: Xxxxxxxxxxx Sturdy Attn: S. Xxxx Xxxxx, Esq.
12.8. Amendments. This Agreement may not be amended unless the amendment is
in writing and signed by authorized representatives of both Parties.
12.9. Waivers. A waiver of rights under this Agreement will not be
effective unless it is in writing and signed by an authorized
representative of the Party that is waiving the rights.
12.10. Counterparts. The Parties may execute this Agreement by signing
separate copies of the signature page. A facsimile copy of the
signature page will have the same effect as the original.
(signature page follows)
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IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by
their duly authorized representatives.
The Bank of New York
By:
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Name:
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Title:
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Date:
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Barclays Global Investors, N.A.
By:
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Name:
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Title:
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Date:
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By:
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Name:
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Title:
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Date:
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