EXHIBIT (9)(AG)
SERVICE XXXX LICENSE AGREEMENT
This Agreement is made and entered into this 22nd day of December, 1997, by
and between Firstar Corporation, having principal offices located at 000 Xxxx
Xxxxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxx ("Firstar") and Portico Funds, Inc., a
corporation having principal offices located at 000 Xxxx Xxxxxxxxx Xxxxxx,
Xxxxxxxxx, Xxxxxxxxx ("Portico").
WHEREAS, Firstar is the owner of certain service xxxx rights and goodwill
in the name "Firstar" for use with banking services, including United States
Patent and Trademark Office Certificate of Registration numbers 934,195 and
1,591,263, and
WHEREAS, Firstar intends to use the name "Firstar Funds" in connection with
mutual fund management and distribution services, and to acquire service xxxx
rights and goodwill therein, and
WHEREAS, Portico seeks to acquire the right to use the service xxxx and
trade name "Firstar Funds" pursuant to the terms and conditions of this
Agreement.
NOW, THEREFORE, in consideration of the mutual covenants set forth herein,
and other valuable and legally sufficient consideration, the receipt of which is
hereby acknowledged, the parties hereto agree as follows:
1. DEFINITIONS. The following terms shall have the meaning set forth in
this paragraph when used in this Agreement, unless expressly noted otherwise.
a. "Service Xxxx" shall mean the common law service xxxx rights, and
any rights currently owned or acquired in the future under state or
federal registrations, in the term "Firstar Funds" and expansions
thereof for use with Services.
b. "Licensed Territory" shall mean the United States, its
territories and possessions.
c. "Services" shall mean mutual fund management and distribution
services.
2. LICENSE. Firstar hereby grants to Portico, subject to the terms,
conditions, and limitations set forth herein, a non-exclusive, royalty free
license to use the Service Xxxx in connection with the Services during the term
of this Agreement in the Licensed Territory. Firstar shall retain sole and
exclusive ownership of the Service Xxxx and all goodwill and rights related
thereto in the Territory and throughout the world. Portico understands and
agrees that its use of the Service Xxxx shall inure to the benefit of Firstar,
and that nothing in this Agreement shall be interpreted as conferring any
proprietary rights upon Portico with respect to the Service Xxxx.
3. LIMITATIONS. Portico is authorized to use the Service Xxxx in
connection with the Services and for no other purposes whatsoever. Portico is
not authorized to transfer or sublicense the Service Xxxx or any rights therein.
4. QUALITY CONTROL. (a) Portico shall achieve and maintain a high
quality of the Services identified by the Service Xxxx so as to conform to the
standards of quality set by Firstar from time to time.
(a) Portico further agrees to cooperate with and assist Firstar in any
manner reasonably necessary for retaining or enforcing Firstar's rights in the
Service Xxxx and to assist Firstar in obtaining any service xxxx protection that
Firstar may hereafter seek to obtain. Portico shall notify Firstar in writing
immediately of any potential infringements or limitations of the Service Xxxx
which may come to Portico's attention. Firstar shall have the sole right to
determine whether or not any action shall be taken on account of any such
infringements or limitations. Portico agrees that, upon request by Firstar, it
shall provide Firstar with a copy of any advertisement or other promotional
material containing the Service Xxxx. Firstar shall have the right to require
Portico to discontinue the use of any materials, and to destroy the existing
supply of any materials, which do not conform to the standards established by
Firstar for use of the Service Xxxx.
5. OBLIGATIONS OF PORTICO. In addition to all other obligations of
Portico set forth in this Agreement, Portico agrees that it will, upon
termination or expiration of this Agreement, for any reason whatsoever,
immediately cease use of the Service Xxxx and any arguably confusingly similar
marks.
6. TERM. This Agreement shall be deemed to have commenced on the day and
year first written above, and shall remain in effect for an initial term of one
(1) year. The Agreement shall renew automatically for an unlimited number of
one (1) year renewal terms at the termination of the original term and the
subsequent renewal terms absent written notice from one of the parties to the
other party no less than thirty (30) days prior to the termination hereof of its
intention not to renew the Agreement.
7. TERMINATION. This Agreement may be terminated as follows:
a. By mutual agreement of the parties; or
b. By either party, upon thirty (30) days written notice to the
other, in the event the other party fails or refuses to perform
any of its material duties or obligations under this Agreement;
provided, however, that in the event a failure to perform can be
remedied within thirty (30) days after such notice is given, such
notice shall be null and void if the failure is remedied within
such period; or
c. By Firstar, without prior notice, if no affiliate of Firstar is
serving as investment adviser for any fund offered by Portico, or
if Portico does not comply with paragraph 4(a) hereof.
8. INDEMNIFICATION. Portico agrees to indemnify and hold harmless
Firstar, its directors, officers, employees, and agents from and against any and
all claims, demands, actions, causes of action, losses, and expense (including
reasonable attorney fees) resulting from any suit, demand, or claim by any third
party alleging facts or circumstances which involve any negligent act or
omission by Portico or any breach by Portico of any obligation imposed upon it
pursuant to this Agreement. Firstar agrees to indemnify and hold harmless
Portico, its directors, officers, employees, and agents from and against any
claims, demands, actions, causes of action, losses and expense (including
reasonable attorney fees) arising solely out of its use of the Service Xxxx as
authorized by this Agreement, provided that Portico provides prompt notice to
Firstar of any such claim or suit. Firstar shall have the option to undertake
the defense of any such suit, and Portico shall have no right to defend or
settle any such claim or suit without Firstar's prior written consent.
9. NOTICE. Any notice required or permitted to be given under this
Agreement shall be sufficient if: (a) in writing and sent by first class mail
with postage prepaid to the party to whom the same is directed at the address
shown above; or (b) sent by facsimile and confirmation or receipt thereof is
documented. Either party may change its address for purposes of the Agreement
by giving the other party notice in writing of the new address.
10. ENFORCEABILITY. If any term, covenant, condition, or provision hereof
is deemed illegal, the remainder of the Agreement shall not be affected thereby
and each term, covenant, condition, and provision shall be valid and enforceable
to the fullest extent permitted by law.
11. GOVERNING LAW. This Agreement shall be construed and enforced in
accordance with and governed by the laws and decisions of the State of
Wisconsin.
12. ENTIRE AGREEMENT. This Agreement constitutes the entire Agreement of
the parties hereto with respect to the subject matter hereof. All prior
agreements between the parties, whether written or oral, are merged herein and
shall be of no force or effect.
13. AMENDMENTS. This Agreement cannot be changed, modified, or discharged
orally, but only by an amendment in writing, signed by the party against whom
enforcement of the change, modification, or discharge is sought.
14. ASSIGNMENT. This Agreement shall be binding upon and shall inure to
the benefit of the parties and their respective successors and permitted
assigns. In no event shall Portico assign any of its rights, powers, duties, or
obligations under this Agreement without the prior written consent of Firstar.
Firstar may assign its right, title, and interest to the Service Xxxx, and shall
furnish written notice of any such assignment to Portico within fifteen (15)
days of the effective date of such assignment.
IN WITNESS WHEREOF, the parties hereto have, through their duly authorized
representatives, executed this Agreement as of the day and year first above
written.
FIRSTAR CORPORATION
By: /s/ Xxxxxx X. Xxxxxx
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Its: Executive Vice President
PORTICO FUNDS, INC.
By: /s/ Xxxx Xxxxx Xxxxxx
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Its: Vice President
