EXHIBIT 10.20
LICENSING AGREEMENT
This Licensing Agreement is made and entered into this 6th day of November,
1997, by and between GeoCities, a California corporation having its principal
offices at 0000 Xxxx Xxxxxx, 0xx Xxxxx, Xxxxx Xxxxxx, XX 00000-0000
("GeoCities"), and GeoCities Japan Corporation, a Japanese corporation having
its principal offices at 00-0, Xxxxxxxxxx-Xxxxxxxxxxx, Xxxx-xx, Xxxxx 000, Xxxxx
(hereinafter "GJC").
Whereas, GeoCities has engaged in the business providing certain services
through its Internet homepage located in the USA (the "Services");
Whereas, GJC desires to be granted the licenses to modify, use, reproduce and/or
sublicense to use certain intellectual properties developed, created and owned
by GeoCities for the purpose of localizing and exploiting the Japanese version
of the Services in Japanese market;
Whereas, GeoCities is willing to grant such licenses to GJC pursuant to the
terms and conditions of this Agreement;
Now, therefore, the parties hereby agree as follows:
1. Definitions.
(1) The term "Licensed Programs" as used hereunder shall mean computer source
code and object code programs developed and owned by GeoCities necessary
for operating GeoCities' servers and homepage by or through which the
Services (including any upgrade versions thereof) are or will be provided.
(2) The term "Licensed Materials" as used hereunder shall mean the copyrighted
materials used by GeoCities for or in connection with the Services
(including any upgrade versions thereof), including, without limitation,
movies, pictures, languages, stories, music, sounds and any other audio
visual materials. The Licensed Programs and the Licensed Materials are
hereinafter collectively called as the "Licensed Properties."
(3) The term "Licensed Trademarks" as used hereunder shall mean the trademarks,
trade names and/or logo marks owned by GeoCities and specified in Exhibit
A, attached hereto.
(4) The term "Japanese Derivatives" as used hereunder shall mean any
translation, modification, revision, enhancement, extensions or improvement
using the Japanese language and derived from any of the Licensed Properties
that are created or developed by GJC under the licenses hereby granted to
GJC.
(5) The term "GJC Services" as used hereunder shall mean the Japanese version
of the Services (including any upgrade versions thereof) created or
developed by GJC under the licenses hereby granted to GJC.
(6) The term "GJC Users" as used hereunder shall mean Internet users to whom
GJC provides access to GJC's homepage, by or through which the GJC Services
are or will be provided.
2. Grant of License.
(1) Pursuant to the terms and conditions hereunder, GeoCities hereby grants GJC
the exclusive rights to use, copy, reproduce and modify the Licensed
Materials for the purposes of or in connection with developing,
maintenance, improving, providing, marketing, and/or exploiting the GJC
Services.
(2) Pursuant to the terms and conditions hereunder, GeoCities hereby grants GJC
the exclusive rights to use, copy, reproduce, modify, display, perform,
transmit and distribute the Licensed Materials for the purposes of or in
connection with developing, maintenance, improving, providing, marketing,
promoting and/or exploiting the GJC Services.
(3) Pursuant to the terms and conditions hereunder, GeoCities hereby grants GJC
the exclusive rights to use the Licensed Trademarks for the purposes of or
in connection with developing, maintenance, improving, providing,
marketing, promoting and/or exploiting the GJC Services.
(4) GJC shall be entitled to sublicense the rights to use any of the Licensed
Properties as granted by GeoCities hereunder to the GJC Users in connection
with using or utilizing the Services.
3. Royalty Payment.
(1) In consideration of the licenses granted herein, GJC shall pay to GeoCities
three percent (3%) of the total revenue obtained by GJC from the GJC
Services (the "Royalties") during the term of this Agreement.
(2) Within thirty (30) days of the end of each calendar quarter (which calendar
quarter shall commence on January 1, April 1, July 1 and October 1), GJC
shall submit to GeoCities a written statement specifying (i) the amount of
the total revenue obtained by GJC from the GJC Services during the
preceding calendar quarter and (ii) the Royalties accruing during the
preceding calendar quarter, and pay to GeoCities such reported Royalties.
(3) All sums to be paid to GeoCities under this Agreement shall be paid in US
Dollar calculated at the exchange rate in effect on the day of the payment
and remitted by wire transfer to the bank account designated by GeoCities.
(4) If GJC shall be required to deduct any withholding taxes imposed on any
payments owed GeoCities hereunder, GJC may deduct such taxes from the
amount owed GeoCities and will furnish GeoCities tax receipts certifying
the fact that those withholding taxes have been paid.
4. Records and Audit.
GJC shall, during the term hereof and a two (2) year period subsequent thereto,
keep true books and records containing an accurate and complete record of all
data necessary for the computation of the royalties accruing hereunder. GJC
further agrees to permit GeoCities, by using independent certified public
accountants, upon reasonable notice to GJC and during regular business hours, to
inspect such relevant books and records of GJC to such extent as may be
reasonably necessary to allow such accountants to determine the accuracy of any
part of such computation. If any inspection reveals that GJC has underpaid
GeoCities by five percent (5%) or more with respect to any calendar quarter, GJC
shall reimburse GeoCities for the cost of such
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inspection and audit promptly upon demand. GeoCities acknowledges and agrees
that any information obtained by GeoCities from such inspection shall be deemed
a part of the Confidential Information of GJC as defined in Section 11 hereof.
5. Copyright and Trademark Notices.
GJC will cause to be noticed conspicuously and legibly on its homepage located
on the Internet through which the GJC Services are or will be provided and any
advertising or promotional materials in connection therewith (i) copyright
notices with respect to the Licensed Properties, (ii) trademark notices with
respect to the Licensed Trademarks, and (iii) any further modification of such
notices, which notices, including any future modification, shall be affixed in
accordance with instructions of GeoCities.
6. Operation and Promotion.
(1) GeoCities shall provide reasonable assistance to GJC in developing the GJC
Services. If GeoCities creates any upgrade version of the Services which
materially modify the format or functionality of the Services, GeoCities
shall provide GJC with the opportunity to review and test each such upgrade
version prior to the public release of such version by GJC.
(2) GJC shall at all times have the sole discretion to set and determine all
terms and conditions of the distribution of the GJC Services.
(3) GJC agrees that it shall use its reasonable efforts, during the term of
this Agreement, to stimulate the demand for the GJC Services in Japan. GJC
shall consider in good faith any suggestions or comments of GeoCities in
the content and design of any and all promotional materials concerning the
GJC Services.
7. Representations and Warranties.
(1) GeoCities represents and warrants solely for the benefit of GJC as follows:
(a) GeoCities has the right, power and authority to enter into this Agreement
and to fully perform its obligations hereunder;
(b) The performance of its obligations under this Agreement shall not be a
breach of any separate agreement by which GeoCities is bound;
(c) Any part of the Licensed Properties or the Licensed Trademarks shall not
infringe on any patents or Japanese registered trademarks owned by any
third party;
(d) Any part of the Services shall not constitute a breach of any applicable
statutes, laws, ordinances and regulations in the USA; and
(e) GeoCities shall not, either directly or indirectly, grant any right or
license, whether exclusive or non-exclusive, to any person or entity, to
use, display, reproduce or permit others to use any of the Licensed
Properties or the Licensed Trademarks in electronic or online form in Japan
for the purposes of or in connection with developing, maintenance, improving
providing, marketing and/or exploiting any services sufficiently similar to
the GJC Services.
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(2) GJC represents and warrants solely for the benefit of GeoCities as follows:
(a) GJC has the right, power and authority to enter into this Agreement and to
fully perform its obligations hereunder.
(b) The performance of its obligations under this Agreement shall not be a
breach of any separate agreement by which GJC is bound; and
(c) GJC shall advertise, promote or distribute the GJC Services in accordance
with any and all applicable statutes, laws, ordinances and regulations in
Japan.
8. Indemnification.
Any party that makes a breach of any of the representations provided in Section
7 above (the "Breaching Party") agrees to indemnify and hold the other party
(the "Nonbreaching Party") harmless from and against any and all claims, losses,
liabilities, damages, expenses and costs (including any court costs and fees for
attorneys) arising from or incurred in connection with a breach made by the
Breaching Party of the representations set forth in Section 7 above.
9. Infringement.
If notified of any claim or action brought against GJC alleging that any part of
the Licensed Properties or the Licensed Trademarks infringes any patent,
copyright or any other intellectual property right, GeoCities shall defend that
action or claim at its expense and shall pay any and all costs and damages
awarded against or incurred by GJC in the action or claim, and, prior to
GeoCities' assuming the defense of such action or claim, any reasonable legal
fees and expenses incurred by GJC in obtaining advice in relation to the action
or claim; provided, that GJC will cooperate with GeoCities at no cost to GJC in
the defense of the action or claim, and that GeoCities shall have no liability
if the action or claim solely results from modification of the Licensed
Properties or the Licensed Trademarks by GJC with or without GeoCities' consent
to such modification.
10. Intellectual Property Rights.
(1) GJC acknowledges and agrees that any and all copyrights, patents,
trademarks or any other intellectual property rights in and to the Licensed
Properties and/or the Licensed Trademarks shall exclusively belong to
GeoCities. In the event GeoCities delivers to GJC upon GJC's request any
artworks or other materials relating to the Services, GJC agrees that any
and all copyrights, patents, trademarks or any other intellectual property
rights in and to such artworks and/or other materials shall be exclusively
owned by GeoCities. Except as expressly granted by GeoCities hereunder,
GJC shall not acquire or retain any title or interest in the Licensed
Properties or the Licensed Trademarks.
(2) Copyrights, patents, trademarks or any other intellectual property rights
in and to the Japanese Derivatives shall be co-owned by GeoCities and GJC.
GeoCities hereby grants GJC the exclusive rights to use, copy, reproduce
and distribute the Japanese Derivatives for the purposes of or in
connection with developing, maintenance, improving, providing, marketing,
promoting and/or exploiting the GJC Services. Except as expressly provided
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herein, the parties hereto shall not use any right in the Japanese
Derivatives without the prior written consent of the other party.
11. Confidentiality.
(1) Both parties agree to keep strictly confidential any information disclosed
in connection with this Agreement by the other party (the "Disclosing
Party") and designated as confidential (the "Confidential Information") and
not to disclose the Confidential Information to any third party without the
prior written approval of the Disclosing Party. The party receiving the
Confidential Information of the Disclosing Party (the "Receiving Party")
further agrees not to use or utilize the Disclosing Party's Confidential
Information for any purpose other than intended under this Agreement. Both
parties hereby agree and acknowledge that any breach of this Section 11
would constitute irreparable harm, and that the Disclosing Party shall be
entitled to specific performance or injunctive relief to enforce any of the
conditions of this Section 11 in addition to whatever remedies the
Disclosing Party may be otherwise entitled to at law or in equity.
(2) The obligations set forth in this Section 11 shall not apply to: (i) any
information that now or later becomes part of the public domain through no
fault of the Receiving Party; (ii) any information the Disclosing Party
discloses to a third party without imposing such obligations concerning
confidentiality as set forth herein; (iii) any information that is
independently developed by the Receiving Party without any reference to any
part of the Disclosing Party's Confidential Information; or (iv) any
disclosure of information required by applicable law or court's order,
provided that the Receiving Party shall give the Disclosing Party the prior
written notice of such requirement or order and cooperate with the
Disclosing Party in connection with such disclosure of the Confidential
Information.
12. Term and Termination.
(1) This Agreement shall become effective upon the date stated at the beginning
hereof and continue, unless terminated in accordance with the provisions of
this Section 12, for a period of twenty (20) years from such date. Both
parties agree to negotiate in good faith with respect to the renewal of the
term hereof at least six (6) months prior to the expiration of the initial
term of this Agreement.
(2) This Agreement shall terminate upon the termination of the Joint Venture
Agreement, between GeoCities and SOFTBANK Corporation, a Japanese
corporation, provided that such termination does not arise from SOFTBANK
Corporation's exercise of its right to terminate the Joint Venture
Agreement under Section 12(a) thereof following a default by GeoCities, as
more specifically described therein.
(3) Any party (the "Non-failing Party") shall have the right to terminate this
Agreement immediately by giving the written notice of such intention to the
other party (the "Failing Party") upon occurrence of any of the following
events:
a) The Failing Party shall make an assignment for the benefit of any of its
creditors, shall file any petition under the bankruptcy or insolvency laws
of any jurisdiction, shall have a receiver or trustee to be appointed for
its business or property, or shall be adjudicated to be bankrupt or
insolvent; or
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b) The Failing Party defaults in compliance with any of the conditions of this
Agreement and such default is not cured within thirty (30) days after
receipt of the written notice of such default.
13. Effect of Termination.
(1) At the expiration or termination of this Agreement, GJC shall cease use,
copy, reproduction and distribution of the Licensed Properties and shall
promptly return to GeoCities any and all materials in its possession and in
conjunction with the Licensed Properties or depicting any of the Licensed
Trademarks, and GJC shall change its corporate name to eliminate GeoCities
therefrom. Any rights and licenses hereby granted to GJC shall promptly
reverted to GeoCities upon the expiration or termination hereof.
(2) Upon the expiration or termination of this Agreement, the Receiving Party
shall at its cost promptly return to the Disclosing Party any and all
documents and materials concerning the Confidential Information under the
control of the Receiving Party, or if requested by the Disclosing Party,
shall destroy such documents or materials and certify in writing such
destruction.
14. Notices.
Any and all notices, requests, demands and other communications required or
otherwise contemplated to be made under this Agreement shall be in writing and
in English and shall be deemed to have been duly given (a) if delivered
personally, when received, (b) if transmitted by facsimile, upon receipt of a
confirmation of receipt, (c) if sent by registered airmail, return receipt
requested, postage prepaid, on the sixth business day following the date of
deposit with such courier service, or such earlier delivery date as may be
confirmed to the sender by such courier service. All such notices, requests,
demands and other communications shall be addressed as follows:
(i) If to GJC:
GeoCities Japan Corporation
00-0, Xxxxxxxxxx-Xxxxxxxxxxx
Xxxx-xx, Xxxxx 000, Xxxxx
Attention: Mr. Xxxxxxxxx Xxx
President and Chief Executive Officer
Telephone: (000) 0000-0000
Facsimile: (000) 0000-0000
(ii) If to GeoCities:
GeoCities
0000 Xxxx Xxxxxx Xxxxx Xxxxx
Xxxxx Xxxxxx, XX 00000-0000
XXX
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Attention: Xxxxx Xxxxxxx, President and Chief Executive Officer
Telephone: (000) 000-0000, Ext. 201
Facsimile: (000) 000-0000
With a copy to:
GeoCities
0000 Xxxx Xxxxxx, Xxxxx Xxxxx
Xxxxx Xxxxxx, XX 00000-0000
Attention: Xx Xxxxxx, General Counsel
Telephone: (000) 000-0000, Ex. 251
Facsimile: (000) 000-0000
Or in each case to such other address or facsimile number as the party may have
furnished to the other party in writing.
15. General Provisions.
(1) No waiver of either party, whether expressed or implied, of any provision
of this Agreement, or of any breach or default, shall constitute a
continuing waiver of such breach or default of such provision or any other
future breach under this Agreement.
(2) If performance of this Agreement is interfered with, for any length of
time, by Act of God, war, civil commotion, epidemics or other similar
occurrences beyond the reasonable control of the interfered party, neither
party shall be liable for non-performance of this Agreement for such length
of time.
(3) Neither party shall assign any of its rights or obligations under this
Agreement without the other party's prior written consent.
(4) This Agreement shall constitute the entire agreement between the parties
hereto relating to the subject matter hereof, and supercedes any and all
prior negotiation, representations, warranties, undertakings or agreements,
written or oral, between the parties.
(5) This Agreement may be amended, modified or changed only by a written
instrument duly executed by the authorized representatives of both parties.
(6) If any provision or any portion thereof shall be held to be void or
unenforceable in any jurisdiction, the remaining provisions of this
Agreement shall continue in full force and effect.
(7) This Agreement is executed and signed in English, and only such English
version shall be deemed and constitute the original copy of this Agreement.
(8) This Agreement shall be governed by and construed in accordance with the
laws of Japan.
(9) All disputes between the parties hereto arising directly or indirectly out
of this Agreement shall be settled by the parties amicably through good
faith discussions upon the written request of either party. In the event
that any such dispute cannot be resolved thereby within a period of thirty
(30) days after such notice has been given, such dispute shall be finally
settled by arbitration by three arbitrators. If GeoCities commences such
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arbitration, it shall be held in Japan, using the English language, and in
accordance with the rules then in effect of the Japan Commercial
Arbitration Association.
(10) Headings of the Sections used in this Agreement are inserted for
convenience of reference only and shall in no way affect the interpretation
hereof.
(11) Sections 7, 8, 9, 10, 11, 13 and 15 of this Agreement shall survive any
expiration or termination of this Agreement and remain in full force and
effect thereafter.
(12) This Agreement may be executed in counterparts, each of which shall be
deemed an original, but all of which shall constitute one and the same
agreement.
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In witness whereof, the parties have caused this Agreement to be duly executed
as of the day and year first written above.
GeoCities GeoCities Japan Corporation
By: /s/ Xxxxx Xxxxxxx By: /s/ Xxxxxxxxx Xxx
------------------------------- ---------------------------------
Name: Xxxxx Xxxxxxx Name: Xxxxxxxxx Xxx
----------------------------- ---------------------------------
Title: President & CEO Title: President
----------------------------- --------------------------------
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AMENDMENT AGREEMENT
This Amendment Agreement is made and entered into this 22nd day of January,
1998, by and between GeoCities, a California corporation having its principal
offices at 0000 Xxxx Xxxxxx, 0xx Xxxxx, Xxxxx Xxxxxx, XX 00000-0000
("GeoCities"), and GeoCities Japan Corporation, a Japanese corporation having
its principal offices at 00-0, Xxxxxxxxxx-Xxxxxxxxxxx, Xxxx-xx, Xxxxx 000, Xxxxx
(hereinafter "GJC") for the purpose of amending and modifying the Licensing
Agreement executed by GeoCities and GJC and dated November 6th, 1997 (the
"Original Agreement").
The parties hereto agree as follows:
1. Except as specifically defined herein, the capitalized terms used hereunder
shall have the same meanings as defined in the Original Agreement.
2. The parties agree that the services specified below shall be added to the
GJC Services as defined in item (5) of Section 1 of the Original Agreement:
Publishing books and magazines relating to the Japanese version of
GeoCities' Internet homepage that GJC operates for the Japanese market under
the license granted by GeoCities pursuant to the terms of the Original
Agreement (the "Additional GJC Services").
3. The royalties for the license granted by GeoCities to GJC hereunder
concerning the Additional GJC Services (the "Additional Royalties") shall be
three percent (3%) of the total revenue obtained by GJC from the Additional
GJC Services and paid to GeoCities by GJC in accordance with the payment
conditions of the Royalties set forth in the Original Agreement.
4. This Amendment Agreement shall be governed by and construed in accordance
with the laws of Japan.
5. This Amendment Agreement shall become effective upon the date first written
above and continue until the expiration or termination of the Original
Agreement.
6. Except as expressly amended herein, any and all terms and conditions of the
Original Agreement shall remain in full force and effect. Any and all
conditions which shall apply to the GJC Services and/or Royalties under the
Original Agreement shall apply to the Additional GJC Services and/or
Additional Royalties respectively unless otherwise agreed upon in writing
between the parties hereto.
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In witness whereof, the parties have caused this Amendment Agreement to be duly
executed by their duly authorized representatives as of the date first written
above.
GeoCities GeoCities Japan Corporation
By: /s/ Xxxxx Xxxxxxx By: /s/ Xxxxxxxxx Xxx
---------------------------------- -------------------------------
Name: Xxxxx Xxxxxxx Name: Xxxxxxxxx Xxx
---------------------------------- -------------------------------
Title: President & CEO Title: President
---------------------------------- -------------------------------
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SECOND AMENDMENT AGREEMENT
This Second Amendment Agreement is made and entered into as of February 2nd,
1998, by and between GeoCities, a California corporation having its principal
offices at 0000 Xxxx Xxxxxx, 0xx Xxxxx, Xxxxx Xxxxxx, XX 00000-0000
("GeoCities"), and GeoCities Japan Corporation, a Japanese corporation having
its principal offices at 00-0, Xxxxxxxxxx-Xxxxxxxxxxx, Xxxx-xx, Xxxxx 000, Xxxxx
(hereinafter "GJC") for the purpose of amending and modifying the Licensing
Agreement executed by GeoCities and GJC and dated November 6th, 1997, as amended
by the Amendment Agreement by GeoCities and GJC dated January 22nd, 1998 (the
"Original Agreement").
The parties hereto agree as follows:
1. Except as specifically defined herein, the capitalized terms used hereunder
shall have the same meanings as defined in the Original Agreement.
2. The parties agree that the following paragraph shall be added to the
Original Agreement as Subparagraph (3) of Section 11 thereof:
"Notwithstanding the provisions of Subparagraph (1) of Section 11 above, the
Receiving Party shall be permitted to disclose the Disclosing Party's
Confidential Information to third parties solely on a strict need-to-know
basis and solely in the case that such third parties have agreed prior to
such disclosure in writing (the "Written Agreement") comply with the same
confidential obligations imposed on the Receiving Party under Subparagraphs
(1) and (2) of Section 11 concerning such Confidential Information. The
Receiving Party shall submit the Written Agreement to the Disclosing Party
immediately. In the event of a breach made by any of such third parties of
such obligations, such breach shall be deemed a fault of the Receiving Party
under this Agreement and the Receiving Party shall be responsible for any
damage, loss or expenses arising from such third party's breach and incurred
by the Disclosing Party."
3. This Second Amendment Agreement shall be governed by and construed in
accordance with the laws of Japan.
4. This Second Amendment Agreement shall become effective upon the date first
written above and continue until the expiration or termination of the
Original Agreement.
5. Except as expressly amended herein, any and all terms and conditions of the
Original Agreement shall remain in full force and effect.
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In witness whereof, the parties have caused this Second Amendment Agreement to
be executed by their duly authorized representatives as of the date first
written above.
GeoCities GeoCities Japan Corporation
By: /s/ Xxxxx Xxxxxxx By: /s/ Xxxxxxxxx Xxx
----------------------------- ---------------------------------
Name: Xxxxx Xxxxxxx Name: Xxxxxxxxx Xxx
----------------------------- ---------------------------------
Title: CEO Title: President
----------------------------- ---------------------------------
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