Exhibit 10.5
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (this "Agreement") is entered into effective as
of the 11th day of September, 2003 (the "Effective Date"), by and between The
Bank of New York, a New York banking corporation ("Licensor"), World Gold
Council, a not-for-profit association established under Swiss law and World Gold
Trust Services, LLC, a Delaware limited liability company and wholly-owned
subsidiary of World Gold Council (collectively "Licensee").
WHEREAS, Licensor and Licensee (each a "Party," and collectively, the
"Parties") are entering into this Agreement, together with a certain Settlement
Agreement dated September 11, 2003 (the "Settlement Agreement"), in connection
with the settlement of certain claims between the Parties; and
WHEREAS, in connection with such settlement, Licensee wishes to obtain
a license under certain of Licensor's patent rights, and Licensor wishes to
grant such license subject to the terms and conditions of this Agreement.
NOW THEREFORE, for the sum of $1.00 and other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
Parties agree as follows:
1. CERTAIN DEFINITIONS.
For the purposes of this Agreement, the following terms have the
following meanings:
"Licensor Patent Rights" means any patents and patent applications (and
all related know-how and trade secrets) of Licensor, anywhere in the
world, that cover securitized gold products and that exist as of the
Effective Date or are filed or issued thereafter, including but not
limited to U.S. Provisional Patent Application Serial No. [redacted],
filed on [redacted], and entitled "[redacted]."
"Licensed Product" means any securitized gold financial product that is
sold, sponsored or issued by: (I) Licensee, or (II) any entity over
which Licensee has ownership or control, directly or indirectly, of
more than fifty percent (50%) of the voting securities of such entity
(or, in the case of a noncorporate entity, equivalent interests). For
the purposes of clarity, the Licensed Products do not include any
products involving the securitization of any commodity other than gold.
2. LICENSE.
Subject to the terms and conditions of this Agreement, Licensor grants
Licensee a perpetual, world-wide, non-exclusive, non-transferable
(except as provided in Section 7.2) license under the Licensor Patent
Rights solely for the purposes of establishing, operating and marketing
Licensed Products (the "License"). The License includes the limited
right of Licensee to grant sublicenses to its partners, joint
venturers, trustees, custodians and agents, but only in connection with
their establishment, operation and marketing of Licensed Products.
Except as expressly provided in this Section 2, no
license or other rights with respect to the Licensor Patent Rights or
other intellectual property rights of Licensor are granted to Licensee.
3. LICENSE BACK TO LICENSOR.
Subject to the terms and conditions of this Agreement, Licensee grants
Licensor a perpetual, world-wide, non-exclusive, non-transferable
license under Licensee's patents, patent applications and other
intellectual property rights, with the right to grant sublicenses,
solely for the purposes of establishing, operating and marketing
financial products involving the securitization of any commodity,
including but not limited to gold. Except as expressly provided in this
Section 3, no license or other rights with respect to the patents,
patent applications or other intellectual property rights of Licensee
are granted to Licensor.
4. COVENANT AND ACKNOWLEDGEMENT OF RIGHTS.
4.1. Promptly after the Effective Date, Licensee will formally abandon
any attempt to file any United States or foreign patent
applications based on U.S. Provisional Patent Application Serial
No. 60/429,489 filed on November 27, 2002, as well as any other
patent applications based thereon.
4.2. Licensee will not directly or indirectly: (I) oppose any of the
Licensor Patent Rights (including, but not limited to, by
directly or indirectly initiating or participating in any action
of any kind challenging any of the Licensor Patent Rights,
claiming any right or interest in any of the Licensor Patent
Rights (other than the License), or otherwise interfering with
Licensor's use and enjoyment of any of the Licensor Patent
Rights), (II) dispute the validity or enforceability of any
patent within the Licensor Patent Rights or any of the claims
thereof, (III) assist any other person to do any of the foregoing
(except if required by court order or subpoena), or (IV) initiate
or participate in any action of any kind against Licensor or any
third party who is partner, joint venturer, licensee, agent or
employee of Licensor based on their establishing, operating
and/or marketing products anywhere in the world involving the
securitization of any commodity, including gold. Any violation of
this Section 4.2 will constitute a material breach of this
Agreement.
5. TERM AND TERMINATION.
The term of this Agreement is perpetual, provided, however, that either
Party may terminate this Agreement on thirty (30) days prior, written
notice to the other Party in the event that such other Party materially
breaches this Agreement or the Settlement Agreement and fails to cure
such other breach within such thirty (30) day period. 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.
6. WARRANTIES.
Licensor and Licensee each represents and warrants to the other: (I)
that it has the requisite power and authority to enter into this
Agreement; (II) that it has duly executed and delivered this Agreement;
and (III) that this Agreement constitutes its valid and binding
obligation enforceable against it, in accordance with the terms of this
Agreement. EACH PARTY DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED,
OTHER THAN THOSE EXPRESSLY STATED IN THIS ARTICLE 6.
7. MISCELLANEOUS PROVISIONS.
7.1. TECHNOLOGY TRANSFER. Neither party shall have any obligation
under this Agreement to provide the other with any transfer of
technology, know-how or information, or any training or
consulting of any kind, with respect to the patents and other
intellectual property licensed by it hereunder.
7.2. ASSIGNMENT. Licensee may not assign or otherwise transfer any
right or obligation under this Agreement without the prior
written consent of Licensor, except that Licensee may assign or
otherwise transfer the entire Agreement and all rights and
obligations hereunder in connection with: (I) the merger or
consolidation of Licensee with or into a third-party trade
association primarily engaged in the business of stimulating
demand for a precious metal commodity, (II) the sale to such a
trade association of a controlling interest in Licensee's stock
or other equity interests, (III) the sale of all or substantially
all of Licensee's assets to such a trade association, and (IV) a
restructuring of Licensee pursuant to which World Gold Council
(and not any successor or assign of them) continue to own more
than 50% of the voting securities of (or, in the case of a
noncorporate entity, equivalent interests), and the economic
interest in, the assignee or transferee. 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 Section 7.2 will be void.
7.3. 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).
7.4. 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.
7.5. ENTIRE AGREEMENT. This Agreement together with the Settlement
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. To the extent that there is a
conflict between the terms of this Agreement and the terms the
Settlement Agreement, then the terms of this Agreement shall
govern.
7.6. 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.
7.7. 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.
7.8. 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
Section); 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 Contact Information
for Licensor: for Licensee:
The Bank of New York World Gold Council
One Wall Street 00 Xxxx Xxxx
Xxx Xxxx, XX 00000 Xxxxxx XX0X 0XX
Attn: Xxxxxxx Xxxxxx United Kingdom
Attn: Xxxxx X. Xxxxxx
7.9. AMENDMENTS. This Agreement may not be amended unless the
amendment is in writing and signed by authorized representatives
of both Parties.
7.10. 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.
7.11. 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)
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by
their duly authorized representatives.
THE BANK OF NEW YORK
By: /s/ Xxxxx X. Xxxxxx
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Name: Xxxxx X. Xxxxxx
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Title: Managing Director
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Date: September 12, 2003
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WORLD GOLD COUNCIL
By:/s/ Xxxxx X. Xxxxxx
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Name: Xxxxx X. Xxxxxx
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Title: CEO
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Date: September 11, 2003
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WORLD GOLD TRUST SERVICES, LLC
By: /s/ J. Xxxxxx Xxxxxx
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Name: J. Xxxxxx Xxxxxx
---------------------------------
Title: Managing Director
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Date: September 11, 2003
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