EXHIBIT 10.8
WGC/WGTS LICENSE AGREEMENT
THIS LICENSE AGREEMENT (this "Agreement") is entered into as of
November ___, 2004 (the "Effective Date"), by and among WORLD GOLD COUNCIL, a
not-for-profit association established under Swiss law, WORLD GOLD TRUST
SERVICES, LLC, a Delaware limited liability company and wholly owned subsidiary
of World Gold Council (together, "Licensor"), and STATE STREET GLOBAL MARKETS,
LLC, a Delaware limited liability company ("Licensee").
WHEREAS, Licensor and The Bank of New York ("BONY") entered into a
License Agreement, dated as of September 11, 2003 (the "BONY License
Agreement"), whereby BONY granted Licensor a perpetual, world-wide,
non-exclusive, non-transferable (except as provided in Section 7.2 of the BONY
License Agreement) license (the "BONY License") under the BONY Patent Rights (as
defined herein) solely for the purposes of establishing, operating and marketing
Licensed Products (as defined herein). The BONY License includes the limited
right of Licensor 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;
WHEREAS, the streetTRACKS(R) Gold Trust (the "Trust") was established
pursuant to the Trust Agreement entered into by and between Licensor and BONY,
dated as of the date hereof (the "Trust Agreement"), pursuant to which the Trust
will issue streetTRACKS(R) Gold Shares (the "Shares") which represent units of
fractional undivided beneficial interest in and ownership of the Trust upon the
deposit of gold bullion by Authorized Participants (as defined in the Trust
Agreement) with HSBC Bank USA, as custodian of the Trust;
WHEREAS, Licensor and Licensee entered into a Marketing Agent
Agreement, dated as of the date hereof (the "Marketing Agent Agreement"),
whereby Licensor designated Licensee as the exclusive marketing agent of the
Trust;
WHEREAS, pursuant to the terms and conditions of the BONY License
Agreement, Licensor desires to grant a sublicense to Licensee under the BONY
Patent Rights, with the right to grant sublicenses, solely for use in connection
with Licensee's role as the exclusive marketing agent of the Trust under the
Marketing Agent Agreement;
WHEREAS, Licensor also has rights in other patents, patent applications
and other intellectual property rights (the "Licensor IP Rights") that may be
used in connection with Licensee's role as the exclusive marketing agent of the
Trust under the Marketing Agent Agreement;
WHEREAS, Licensor uses in commerce and owns in the United States all
trade name and/or trademark rights and associated goodwill in the designations
specified on Schedule 1 attached hereto (the "Licensor Marks"); and
WHEREAS, Licensor desires to grant a license to Licensee to the
Licensor IP Rights and the Licensor Marks, with the right to grant sublicenses,
solely for use in connection with Licensee's role as the exclusive marketing
agent of the Trust under the Marketing Agent Agreement;
NOW THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, Licensor and Licensee (each a
"Party" and collectively, the "Parties") agree as follows:
1. DEFINITIONS.
For the purposes of this Agreement, the following terms have the following
meanings:
(a) "Affiliate" means, with respect to any Person, any other Person that,
directly or indirectly through one or more intermediaries, Controls, or is
Controlled by, or is under common Control with, such Person.
(b) "Agreement" has the meaning set forth in the preamble.
(c) "BONY" has the meaning set forth in the recitals.
(d) "BONY License" has the meaning set forth in the recitals.
(e) "BONY Patent Rights" means any patents and patent applications (and all
related know-how and trade secrets) of BONY, anywhere in the world, that cover
securitized gold products and that exist as of the effective date of the BONY
License Agreement or are filed or issued thereafter, including but not limited
to U.S. Provisional Application Serial No. [redacted], filed on [redacted],
entitled "[redacted]."
(f) "BONY Sublicense" has the meaning set forth in Section 2(a).
(g) "Confidential Information" has the meaning set forth in Section 9(b).
(h) "Control" means, with respect to any Person, the possession, directly
or indirectly, of the power to direct or cause the direction of the management
or policies of a Person, whether through the ownership of voting securities, by
contract or otherwise.
(i) "Effective Date" has the meaning set forth in the preamble.
(j) "Indemnified Party" has the meaning set forth in Section 7(c).
(k) "Indemnifying Party" has the meaning set forth in Section 7(c).
(l) "Licensed Products" means any securitized gold financial product that
is sold, sponsored or issued by Licensor or any Affiliate of Licensor. For the
purposes of clarity, the Licensed Products do not include any products involving
the securitization of any commodity other than gold.
(m) "Licensee" has the meaning set forth in the Preamble.
(n) "Licenses" has the meaning set forth in Section 2(c).
(o) "Licensor" has the meaning set forth in the Preamble.
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(p) "Licensor IP Rights" has the meaning set forth in Section 2(d).
(q) "Licensor License" has the meaning set forth in Section 2(b).
(r) "Licensor Marks" has the meaning set forth in the recitals.
(s) "Losses" has the meaning set forth in Section 7(a).
(t) "Marketing Agent Agreement" has the meaning set forth in the recitals.
(u) "Party(ies)" has the meaning set forth in the recitals.
(v) "Patent Rights" has the meaning set forth in Section 5(a).
(w) "Person" shall be construed broadly and shall include an individual, a
partnership, a corporation, a limited liability company, an association, a joint
stock company, a trust, a joint venture, an unincorporated organization or
another entity, including a Governmental Entity (or any department, agency or
political subdivision thereof.
(x) "Proceeding" has the meaning set forth in Section 7(c).
(y) "Shares" has the meaning set forth in the recitals.
(z) "Sublicensee" has the meaning set forth in Section 2(a).
(aa) "Territory" means worldwide.
(bb) "Trademark License" has the meaning set forth in Section 2(c).
(cc) "Trust" has the meaning set forth in the recitals.
(dd) "Trust Agreement" has the meaning set forth in the recitals.
2. LICENSE.
(a) BONY Patent Rights Sublicense. Pursuant to Section 2 of the BONY
License Agreement and subject to the terms and conditions of this Agreement,
Licensor hereby grants to Licensee a worldwide, non-exclusive, and
non-transferable (except as provided in Section 10(a)) sublicense for the term
of this Agreement to use the BONY Patent Rights solely in connection with
Licensee's performance of its services as exclusive marketing agent for the
Trust pursuant to the Marketing Agent Agreement which includes establishing,
operating, and marketing the Licensed Product in the Territory (the "BONY
Sublicense"). Licensee shall, at Licensor's expense, fully cooperate with and
assist Licensor in the prosecution or maintenance of any patent or other
applications and ensuing registrations for the BONY Patent Rights and shall
execute or obtain execution of any documents Licensor shall reasonably request
in connection therewith, including but not limited to assignment of invention
rights.
(b) License to Licensor IP Rights. Subject to the terms and conditions of
this Agreement, Licensor hereby grants Licensee a worldwide, non-exclusive,
non-transferable
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(except as provided in Section 10(a)), royalty-free license for the term of this
Agreement to use the Licensor IP Rights (i) in connection with Licensee's
performance of its services as exclusive marketing agent for the Trust pursuant
to the Marketing Agent Agreement and/or (ii) for the purpose of establishing,
operating and marketing financial products involving the securitization of gold
(the "Licensor License"). Licensee shall, at Licensor's expense, fully cooperate
with and assist Licensor in the prosecution or maintenance of any patent or
other applications and ensuing registrations for the Licensor IP Rights and
shall execute or obtain execution of any documents Licensor shall reasonably
request in connection therewith, including but not limited to assignment of
invention rights.
(c) License to Licensor Marks. Subject to the terms and conditions of this
Agreement, Licensor hereby grants Licensee a worldwide, non-exclusive,
non-transferable (except as provided in Section 10(a)), royalty-free license to
use, display and refer to Licensor's name and the Licensor Marks set forth in
Schedule 1 hereto, under the quality control of Licensor, (i) in connection with
Licensee's performance of its services as exclusive marketing agent for the
Trust pursuant to the Marketing Agent Agreement and/or (ii) for the purpose of
establishing, operating and marketing financial products involving the
securitization of gold (the "Trademark License" and collectively with the BONY
Sublicense and the Licensor License, the "Licenses"). All use of the Licensor
Marks under the Trademark License and all goodwill associated therewith shall
inure to the exclusive benefit of Licensor. Licensee shall, at Licensor's
expense, fully cooperate with and assist Licensor in the prosecution or
maintenance of any trademark, service xxxx, domain name or copyright application
and ensuing registration concerning the Licensor Marks and shall execute any
documents Licensor shall reasonably request in connection therewith.
(d) Licensee's Limited Right to Sublicense. Each of the Licenses granted
herein shall include the limited right of Licensee to grant sublicenses to its
Affiliates, partners, joint venturers, trustees, distributors, custodians and
agents (each a "Sublicensee"), subject to the restrictions of this Agreement,
and solely in connection with such Sublicensee's performance of its services for
Licensee related to the activities of Licensee permitted hereunder. In addition,
Licensee shall include provisions in all such sublicenses that: (i) are
identical in substance to Sections 3, 4 and 5 herein (with the references in
such sublicenses to "Licensor" in Section 4(c) to continue to signify the
Licensor defined herein); (ii) require Licensee to terminate such sublicenses,
without penalty, if this Agreement is terminated for any reason; (iii) obligate
Licensee to give the Sublicensee notice if this Agreement is terminated for any
reason; and (iv) entitle Licensor herein to give such notice in the event that
the Licensee fails to do so.
(e) ALL RIGHTS NOT SPECIFICALLY AND EXPRESSLY GRANTED TO LICENSEE IN THIS
ARTICLE 2 ARE HEREBY RESERVED TO LICENSOR.
3. ENFORCEMENT.
Licensee shall promptly (a) notify Licensor of any potential or actual
infringement by a third party of the BONY Patent Rights, the Licensor IP Rights
or the Licensor Marks of which Licensee becomes aware, and (b) 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
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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 the BONY Patent Rights, Licensor
IP Rights or the Licensor Marks, Licensee agrees, at Licensor's expense, to do
all things reasonably requested by Licensor to assist Licensor in connection
with such dispute.
4. TERM AND TERMINATION.
(a) The term of this Agreement shall commence as of the Effective Date and
shall remain in full force and effect until the expiration or termination of the
Marketing Agent Agreement, unless earlier terminated pursuant to the terms of
this Agreement (the "Term").
(b) Either Party may terminate this Agreement by written notice to the
other Party 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 Licenses granted pursuant to Article 2) will immediately
terminate; provided, however, that the provisions of Articles 1, 5 , 6, 7, 8, 9
and 10, and any other provision that survives by its express terms, shall
survive any termination or expiration of this Agreement.
(c) On expiration or termination of this Agreement, Licensee shall
immediately cease and desist from all use of the BONY Patent Rights, Licensor IP
Rights and the Licensor Marks, and any similar marks, and inventions or works
based on or derivative thereof; and shall immediately deliver all products
bearing or made in connection with the BONY Patent Rights, Licensor IP Rights,
or the Licensor Marks, including without limitation all inventions or works
based on or derivative thereof, to Licensor at the address set forth in the
notice section below, or destroy them, at the option of Licensor.
5. ACKNOWLEDGMENT OF RIGHTS.
(a) Licensee will not directly or indirectly: (i) challenge or contest the
validity or enforceability of the BONY Patent Rights, the Licensor IP Rights or
the Licensor Marks; (ii) dispute the validity, enforceability, or BONY's or
Licensor's ownership of any patent within the BONY Patent Rights or Licensor IP
Rights, any inventions or works based thereon or derivative thereof, or any of
the claims therein ("Patent Rights"), or initiate or participate in any
proceeding of any kind opposing the grant of any patent, or challenging any
patent application in connection with the Patent Rights; (iii) dispute the
validity, enforceability, or Licensor's exclusive ownership of, any trademark,
trade name or domain name application or registration owned by Licensor with
respect to the Licensor Marks or initiate or participate in any proceeding of
any kind opposing the grant to Licensor of any trademark, trade name, or domain
name registration in the Licensor Marks or similar marks; (iv) fail to meet
Licensor's quality control with respect to the Licensor IP Rights or Licensor
Marks or make any other use thereof other than as expressly permitted herein;
(v) apply to register or otherwise obtain registration of the BONY Patent
Rights, Licensor IP Rights, or any inventions or works based thereon or
derivative thereof, the Licensor Marks, or any marks similar thereto, in the
patent and trademark or
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copyright office of any country or state, or with any business or domain name
registrar; or (vi) 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 or BONY against Licensee.
(b) Any violation of this Article 5 will constitute a material breach of
this Agreement.
6. REPRESENTATIONS AND WARRANTIES.
(a) 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, Bylaws or any other organizational document
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.
(b) Licensor represents and warrants that it owns and/or has the right to
license to Licensee the BONY Patent Rights, Licensor IP Rights and the Licensor
Marks in the United States and that to its actual knowledge, the BONY Patent
Rights, Licensor IP Rights and the Licensor Marks and Licensee's use of the
foregoing in accordance with this Agreement shall not infringe any copyright,
trademark, trade secret or other intellectual property right of any third party.
(c) 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 OR FITNESS FOR
A PARTICULAR PURPOSE. IN NO EVENT SHALL THE CUMULATIVE LIABILITY OF LICENSOR TO
LICENSEE AND ITS AFFILIATES UNDER OR RELATING TO THIS AGREEMENT AT ANY TIME
EXCEED THE AGGREGATE AMOUNT OF THE FEES RECEIVED BY LICENSOR PURSUANT TO THIS
AGREEMENT AND THE TRUST AGREEMENT PRIOR TO SUCH TIME EXCEPT THAT THIS LIMITATION
SHALL NOT BE APPLICABLE TO A CLAIM BY LICENSEE FOR INDEMNIFICATION PURSUANT TO
ARTICLE 7.
7. INDEMNITY.
(a) 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.
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(b) 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
(whether such claim arises under tort, breach of express or implied contract, or
otherwise) that (i) Licensee's establishing, operating or marketing Licensed
Products in accordance with the terms of this Agreement and the Marketing Agent
Agreement infringes or otherwise violates any intellectual property rights of
any Person, (ii) Licensee's use of the BONY Patent Rights, Licensor IP Rights or
the Licensor Marks infringes the copyright, trademark, trade secret or other
intellectual property right of any Person or (iii) Licensee allegedly has
unauthorized possession of, is making unauthorized use of, or is
obtaining/providing unauthorized access to, a Person's trade secrets,
confidential or proprietary information, or service, which acts are allegedly
committed in connection with Licensor establishing, operating or marketing a
Licensed Product in accordance with this Agreement and the Marketing Agent
Agreement.
(c) 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 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 the
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 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
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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 Indemnifying Party.
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.
8. LIMITATION OF LIABILITY.
EXCEPT FOR EACH PARTY'S OBLIGATION TO INDEMNIFY THE OTHER PARTY FOR LOSSES
PURSUANT TO ARTICLE 7, NEITHER PARTY SHALL BE LIABLE TO THE OTHER 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.
9. CONFIDENTIALITY
(a) Public Statements. Except as consented to by the other Party (such
consent not to be unreasonably withheld or delayed) or as otherwise specifically
set forth herein, neither Party will issue any public statement relating to or
in any way disclosing any aspect of the matter contemplated by this Agreement,
including the scope and the specific terms hereof. The obligations of the
Parties under this Section 9(a) are in addition to their respective obligations
pursuant to Section 9(b) but shall not limit the exceptions to public disclosure
specifically referred to in Section 9(b) paragraphs (i) through (v). This
Section 9(a) will in no way limit either Party's ability to (i) respond to
customary press inquiries or otherwise make public or private statements not
otherwise disclosing the Confidential Information (as defined below) or the
specific terms of this Agreement in the normal course of its business and/or in
connection with the obligations hereunder, or (ii) provide necessary information
to prospective Sublicensees and Authorized Participants and such Party's
personnel, agents, representatives and consultants.
(b) Confidentiality. Except as provided below, all information concerning
the BONY Patent Rights, the Licensor IP Rights, and all other business,
financial, marketing and product information disclosed to the other Party orally
or in writing is deemed confidential, restricted and proprietary to the
disclosing Party (the "Confidential Information"). Each Party agrees to use the
Confidential Information received from the other Party only for the purpose of
this Agreement. The Confidential Information disclosed or supplied is not to be
reproduced in any form except as required to accomplish the intent of, and in
accordance with the terms of, this Agreement. The receiving Party must provide
the same degree of care to avoid disclosure or unauthorized use of the
Confidential Information as it accords to protect its own similar proprietary
information, but in no event less than reasonable care under the circumstances.
All Confidential Information must be retained by the receiving Party in a secure
place with access limited to only such of its employees, subcontractors,
suppliers or agents who need to know such information for purposes of this
Agreement and to such third parties as the disclosing Party has consented to by
prior written approval. All Confidential Information, unless otherwise specified
in writing (x) remains
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the property of the disclosing Party, (y) must be used by the receiving Party
only for the purpose for which it was intended, and (z) including all copies
thereof, must be returned to the disclosing Party or destroyed after the
receiving Party's need for it has expired or upon request of the disclosing
Party, and, in any event, upon expiration or termination of this Agreement. At
the request of the disclosing Party, the receiving Party will furnish a
certificate of an officer of the receiving Party certifying that the
Confidential Information not returned to the disclosing Party has been
destroyed. The obligation of confidentiality set forth in this Section 9(b)
shall survive expiration or termination of this Agreement for a period of three
(3) years. For the purpose hereof, the Confidential Information shall not
include information, to the extent evidenced by reasonable documentation, that:
(i) is published or is otherwise in the public domain through no
fault of the receiving Party at the time of any claimed
unauthorized disclosure or use by the receiving Party;
(ii) prior to disclosure pursuant to this Agreement, is properly
within the legitimate possession of the receiving Party;
(iii) subsequent to disclosure pursuant to this Agreement, is lawfully
received from a third party having rights in the information
without restriction of the third party's right to disseminate the
information and without notice of any restriction against its
further disclosure;
(iv) is obligated to be produced under order of a court or other
similar requirement, rule or regulation of any governmental
authorities, so long as the Party required to disclose the
information provides the disclosing Party with prior notice of
such order or requirement and its cooperation to the extent
reasonable in preserving its confidentiality; or
(v) the disclosing Party agrees in writing is free of such
restrictions.
The Parties agree that, without limiting any other rights and remedies
specified herein, an injunction may be sought against the Party who has breached
or threatened to breach this Section 9(b). Each Party represents and warrants
that it has the right to disclose all Confidential Information which it has
disclosed to the other Party pursuant to this Agreement, and each Party agrees
to indemnify and hold harmless the other from all claims by a third party
related to the wrongful disclosure of such third party's proprietary
information. Otherwise, neither Party makes any representation or warranty,
express or implied, in respect of any Confidential Information.
10. MISCELLANEOUS PROVISIONS.
(a) 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; provided, however, that Licensee
may grant sublicenses as provided herein. 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,
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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 Section 10(a) will be void.
(b) GOVERNING LAW. This Agreement shall be interpreted, construed and
enforced in accordance with the laws of the State of New York without reference
to or inclusion of the principles of choice of law or conflicts of law of that
jurisdiction (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). It is the intent of the Parties that the substantive law of the State
of New York govern this Agreement and not the law of any other jurisdiction
incorporated through choice of law or conflicts of law principles. Each Party
agrees that any legal action, proceeding, controversy or claim between the
Parties arising out of or relating to this Agreement may be brought and
prosecuted only in the United States District Court for the Southern District of
New York or, if that Court lacks or declines to exercise subject matter
jurisdiction, in the Supreme Court of the State of New York in and for New York
County, and by execution of this Agreement each Party hereto submits to the
exclusive jurisdiction of such court and waives any objection it might have
based upon improper venue or inconvenient forum. Each Party hereto waives any
right it may have to a jury trial in connection with any legal action,
proceeding, controversy or claim between the Parties arising out of or relating
to the Agreement.
(c) 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.
(d) 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.
(e) 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.
(f) 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.
(g) 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).
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CONTACT INFORMATION FOR LICENSOR:
World Gold Council
00 Xxxx Xxxx
Xxxxxx, XX0X 0XX
Attn: Xxxxx Xxxxxx
Telephone: 000 00 000000 0000
Facsimile: 011 44 207826 4799
World Gold Trust Services, LLC:
000 Xxxxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
CONTACT INFORMATION FOR LICENSEE:
State Street Global Markets, LLC
Xxx Xxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Attn: XXX XXXXXXX
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
State Street Global Markets, LLC
Xxx Xxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Attn: XXX XXXXXX
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
(h) AMENDMENTS. This Agreement may not be amended unless the amendment is
in writing and signed by authorized representatives of both Parties.
(i) 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.
(j) 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.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK; SIGNATURE PAGE FOLLOWS]
Page 11
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed
by their duly authorized representatives.
WORLD GOLD COUNCIL
By:________________________________
Name:______________________________
Title:_____________________________
WORLD GOLD TRUST SERVICES, LLC
By:________________________________
Name:______________________________
Title:_____________________________
STATE STREET GLOBAL MARKETS, LLC
By:________________________________
Name:______________________________
Title:_____________________________
[SIGNATURE PAGE TO LICENSE AGREEMENT]
Page 12
SCHEDULE 1
LICENSOR MARKS
TRADEMARKS/SERVICE XXXXX
Xxxx Country U.S. Serial No. U.S. Registration No.
---- ------- -------------- ---------------------
GOLD United States 78086724 2369750
(with design)
XXX Xxxxxx Xxxxxx 00000000 Xxxxxxx
XXX Xxxxxx Xxxxxx 76493582 Pending
TRADE NAMES
1. World Gold Trust Services, LLC
2. World Gold Council
