{"id":42360,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/intellectual-property-license-and-preservation-agreement-martha.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"intellectual-property-license-and-preservation-agreement-martha","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/intellectual-property-license-and-preservation-agreement-martha.html","title":{"rendered":"Intellectual Property License and Preservation Agreement &#8211; Martha Stewart and Martha Stewart Living Omnimedia Inc."},"content":{"rendered":"<pre>                                    Form of\n            Intellectual Property License and Preservation Agreement\n\n\n\n                  INTELLECTUAL PROPERTY LICENSE AND PRESERVATION AGREEMENT,\ndated as of [ ], 1999 (the \"Agreement\"), by and between Martha Stewart\n(\"Licensor\") and Martha Stewart Living Omnimedia, Inc. (the \"Company\").\n\n                  WHEREAS, Licensor is the exclusive owner of all right, title\nand interest in and to (i) her image, signature, voice and likeness and goodwill\nappurtenant thereto, (ii) certain rights of publicity in and to her name, image,\nlikeness, voice, signature and other elements of her persona and identity, (iii)\nall rights in and to her name, other than those owned by the Company and (iv)\nall common law and statutory rights in the foregoing (collectively, the\n\"Property\");\n\n                  WHEREAS, Licensor and a predecessor of the Company have\npreviously entered into certain agreements relating to the license of certain\nintellectual property, including the Property (the \"Predecessor Agreements\");\nand\n\n                  WHEREAS, Licensor and the Company wish to terminate the\nPredecessor Agreements and enter into this Agreement, on the terms and\nconditions set forth herein;\n\n                  NOW, THEREFORE, in consideration of the mutual premises set\nforth herein, and for other good and valuable consideration, the receipt and\nsufficiency of which is hereby acknowledged, the parties agree as follows:\n\n          1. The Company's Acknowledgment of Licensor's Rights. The Company\nhereby acknowledges that (a) Licensor exclusively owns all right, title and\ninterest throughout the world (the \"Territory\") in and to the Property, which\nProperty has intrinsic value, and (b) Licensor otherwise reserves all rights to\nthe Property except those specifically granted to the\n\n\n\n\nCompany herein. Licensor represents and warrants to the Company that, as of the\ndate hereof and other than as set forth in the Predecessor Agreements, she has\nthe power and authority to license the Property on the terms and conditions of\nthis Agreement.\n\n         2. Use of the Property. (a) Subject to the terms and conditions of this\nAgreement, Licensor hereby licenses to the Company the exclusive right to use,\nand to authorize others to use, pursuant to the terms hereof, any of the\nProperty throughout the Territory on or in connection with any products and\nservices of the Company (such products and services (including the magazine\nMartha Stewart Living) are referred to herein as the \"Licensed Products\" and the\n\"Licensed Services\") during the term of this Agreement. During the term of any\nlicense pursuant to this Agreement, the Company shall use commercially\nreasonable efforts to preserve the historical goodwill of the Property, the\nLicensed Products and the Licensed Services. All use of the Property and\nLicensed Services shall inure solely to the benefit of Licensor. The use of the\nProperty by the Company or any sublicensee thereof shall be of a quality at\nleast substantially consistent with the Historical Standard (as defined below);\nprovided that any use of the Property by the Company while Licensor is in\nControl (as defined below) shall be conclusively presumed to meet the Historical\nStandard. The \"Historical Standard,\" as of any date, shall mean the quality,\nstyle and image of the Licensed Products or Licensed Services as the Property\nhas been used by the Company after February 3, 1997 and before the earlier of\n(1) such date or (2) the date that Licensor ceases to be either (x) Chairman of\nthe Board or Chief Executive Officer or (y) the owner, directly or indirectly,\nof in excess of 50% of the outstanding voting power of the Company (the\ncircumstances in either clause (x) or (y) being referred to as \"Control,\" and\nsuch period since February 3, 1997 being referred to as the \"Historical\nPeriod\"). At any time that \n\n                                      -2-\n\n\nLicensor is not in Control (other than due to a Termination Trigger, as defined\nin subparagraph (b) of this paragraph 2), (i) subject to Licensor's prior\nwritten approval, which shall not be unreasonably withheld or delayed, the\nCompany may continue to use the Property in connection with new businesses not\nplanned or developed while Licensor was in Control, and (ii) the Company may\ndevelop, use and register new derivatives of the Property not developed while\nLicensor was in Control, so long as such new Derived Marks (as defined in\nparagraph 5(a)) are substantially consistent with the image, look and goodwill\nof the Property at the time when Licensor ceased to be in Control or to which\nLicensor (or her legal representative, heirs or estate) have consented in\nwriting (such businesses and derivatives, \"New Uses\"). For clarity, New Uses\nshall not include reasonable extensions of the lines of business in which the\nCompany is engaged or planned to be engaged at any time that Licensor is in\nControl, which extensions shall be included in the license contained herein.\nAfter Licensor's death or disability, the Company may use the Property for\nadditional New Uses, provided that any such businesses and derivatives are\nsubstantially consistent with the image, look and goodwill of the Property at\nthe time at which Licensor ceased to be in Control, or to which Licensor (or her\nlegal representative, heirs or estate) have consented in writing. The Company\nshall keep Licensor (or her legal representative, heirs or estate) advised of\nany New Uses in a timely manner, so that such entity may confirm the Company's\ncompliance with the terms hereof. Subject to the terms and conditions of this\nAgreement, Licensor hereby grants to the Company the exclusive right to use and\nexploit in any and all media her name, image, likeness and voice as it appears\nin any and all television programs and\/or videos (including content developed\nfor the Company's on line businesses) produced by or for the Company (or its\npredecessor), whether such television programs and\/or videos were produced,\naired, marketed or sold prior to, on, or after, the date of this Agreement,\n\n                                      -3-\n\n\nprovided that the grant in this sentence shall be limited to the use of such\nprograms and\/or videos (i) substantially as a whole (it being acknowledged and\nunderstood that the Company shall have the right to edit such programs and\/or\nvideos for time and commercials and to add bumpers and introductions), (ii) as\npart of a collection or similar compilation (such as \"Best of\" programs or\nvideos) of Licensor appearances relating to the business colloquially known as\nof the date hereof as \"Martha Stewart Living Television\", (iii) in any other\nmanner used by the Company while Licensor was in Control or (iv) regarding\nexcerpts of such programs and\/or videos, as part of the advertising, promotion\nand\/or marketing of either of the foregoing.\n\n         (b) The use of the Property by the Company pursuant to this Agreement\nshall be on a royalty-free basis except as set forth in the next sentence of\nthis Section 2(b). In the event that Licensor's employment with the Company is\nterminated by the Company without Cause, or Licensor terminates her employment\nfor Good Reason (each as defined in any employment agreement between Licensor\nand the Company or its subsidiaries or, if there be no such agreement, the last\nsuch agreement) (such a termination, a \"Termination Trigger\"), Licensor (or her\nlegal representative, heirs or estate, as the case may be) shall receive a\nroyalty in perpetuity of 3% of revenues (whether products, advertising,\npublication sales, distribution fees or any other revenues) derived from\nLicensed Products or Licensed Services of any kind, or which in any way include\nany of the Property (including as a portion of any Derived Marks) (as defined in\nparagraph 5(a)). Payment of the royalty amounts shall be accompanied by\nreasonable written detail of the basis therefor. Such royalty amounts shall be\npayable each calendar quarter, shall be subject to a late payment fee of the\ngreater of 10% or 2% over the Company's then-applicable cost of borrowing (such\namount, the \"Interest Rate\") in the event not paid within 60\n\n                                      -4-\n\n\ndays of the end of the applicable quarter, Licensor (or her legal\nrepresentative, heirs or estate, as the case may be) shall have the right to\naudit the royalty payments no more than once per year, and any underpayments\nshall be immediately due and payable upon conclusion of the audit, plus interest\nat the Interest Rate from the 60th day following the end of the applicable\nquarter with respect to which the underpaid amount was due.\n\n         (c) Upon a Termination Trigger, the license provided herein shall\nbecome non-exclusive with respect to all then-active businesses of the Company\nand shall not include a license to use the Property in connection with New Uses.\nUpon a Termination Trigger, the Company shall automatically be deemed to have\ngranted Licensor an exclusive perpetual, worldwide, royalty free license to use\nthe Property as, or as part of, a trademark, service mark or trade name, for any\ngoods or services Licensor desires, to the extent, if any, that said mark or\nname is likely to cause confusion with or otherwise infringe or violate the\nCompany's rights in any mark or name the Company owns (the \"Termination Trigger\nLicense\"). The Termination Trigger License shall include, without limitation,\nthe right to use the Property in connection with any goods or services which\ncompete directly with goods or services of the Company. Notwithstanding the\nforegoing, Licensor shall not have the right to use any mark or name which is\nidentical to any mark or name owned by the Company. The quality of Licensor's\ngoods and services sold pursuant to the Termination Trigger License (the\n\"Licensor Goods\/Services\") shall be of at least the same kind of quality as\ngoods and services sold by the Company as of the date of the Termination\nTrigger, and the Company shall have the right to take reasonable steps to\nmonitor the quality of the Licensor Goods\/Services. Upon Licensor's reasonable\nrequest, the Company shall use its commercially reasonable best efforts to\nregister trademarks and\/or service \n\n                                      -5-\n\n\nmarks which are the subject of the Termination Trigger License and shall take\nreasonable steps to maintain any such registrations, in the Company's name and\nat the Company's sole expense. The Company shall, at its expense, take any\naction reasonably requested by Licensor to protect any trademark, service mark\nor trade name which is the subject of the Termination Trigger License.\n\n         (d) Notwithstanding any other provision of this Agreement, but subject\nto any employment or other agreement that Licensor may have from time to time\nwith the Company, the license provided herein shall not prohibit Licensor from:\n(i) writing books, articles, movies, plays, scripts or other literary products\nin areas other than businesses of the Company covered by this Agreement; (ii)\nmaking speeches or public appearances (including on radio, television, in films\nor over the Internet or similar media) for any purpose other than the promotion\nof a product that competes in any material respect with the Licensed Products\nand Licensed Services; (iii) using the Property to endorse products or engage in\nbusiness activities other than those covered by this Agreement, including the\nexclusivity provisions hereof; (iv) becoming a director, employee, partner,\nadvisor, member, consultant or shareholder of, investor in or otherwise be\nengaged with any other company, corporation, partnership or other entity; and\n(v) activities which are incidental and do not significantly infringe on the\nCompany's rights hereunder.\n\n         (e) Any sublicense by the Company of the Property shall contain\nprotections with respect to the Property consistent with the terms hereof and\nshall acknowledge that such sublicensee does not obtain any ownership rights in,\nor goodwill to, the Property.\n\n                                      -6-\n\n\n         3. Term. The term of this Agreement shall commence on the date of the\ninitial public offering of the Company's common stock and shall be perpetual,\nsubject to the provisions of this Agreement.\n\n         4. Quality, Style and Image of Products and Services Provided in\nConnection with Property. At any time Licensor is not in Control, upon\nreasonable request and to the extent necessary to protect Licensor's rights\nunder this Agreement, Licensor or her designee, successor or assignee shall have\nthe right to request and receive, at no cost to her, a sample of each Licensed\nProduct and Licensed Service, as well as a prototype of each type of all\npromotional, advertising and marketing material used in connection therewith,\nfor the purpose of evaluating the quality, style and image of the same. In the\nevent that in Licensor's reasonable and good faith judgment, any Licensed\nProduct or Licensed Service fails (other than in an immaterial manner) to\nsatisfy the Historical Standard, then promptly upon written notice by Licensor\nto the Company, the Company and Licensor shall cooperate in good faith to make\nnecessary appropriate changes (if any) in the quality, style or image of such\nLicensed Product or Licensed Service to comply with the standard provided for\nherein, provided that nothing in this sentence shall be deemed to affect the\nsubstantive rights and obligations of the parties hereunder.\n\n         5. The Properties. (a) Subject to the terms hereof, including Section\n2(a), the Company may combine any designation with the Property so as to form a\nnew trademark, service mark, trade name or company name (such names or Property,\nthe \"Derived Marks\"). The Derived Marks shall include any names or marks used by\nthe Company prior to the date hereof which include or are derived from any\nProperty. Subject to the terms of this Agreement, the Company shall be the owner\nof the Derived Marks (but not of the Property incorporated therein).\n\n                                      -7-\n\n\n         (b) The Company acknowledges that it is not, and will not become by\nvirtue of this Agreement, the owner of any right, title or interest in and to\nthe Property in any form or embodiment. The Company shall not at any time commit\nany act anywhere in the world which would reasonably be expected to have a\nmaterial adverse effect on Licensor's rights in and to the Property, or any\nregistrations therefor or any applications for registration thereof. The Company\nshall never challenge anywhere in the world Licensor's ownership of or the\nvalidity of the Property, any application for registration therefor or any\nrights therein or thereto, except as otherwise expressly provided herein.\n\n         (c) The Company, at its expense, shall file appropriate registrations\nin its own name or in the name of a Company subsidiary of any Derived Marks so\nas to preserve the goodwill thereof and Licensor's rights in the Property, shall\nprosecute and defend such registrations and all common law rights in the Derived\nMarks and Property consistent with good commercial practices, and shall use all\nreasonable commercial efforts to defend and otherwise protect the Derived Marks\nand the Property, provided that following a Termination Trigger, Licensor shall\nhave the right to reasonably direct and control such actions with respect to the\nProperty, in each case at the Company's expense. At the request of Licensor, her\nlegal representative, heirs or estate, and at the Company's expense, the Company\nshall prosecute, including by filing lawsuits or other actions, any potential\ninfringement, dilution, libel, slander or other diminution in the goodwill or\nother denigration of the Property by any third party, unless outside\nintellectual property counsel to the Company advises that there is no reasonable\nbasis for such action. The Company shall be entitled to the proceeds, or other\nlegal remedies, of any such action. The Company may also institute such actions\nwhere not requested by Licensor, her legal \n\n                                      -8-\n\n\nrepresentative, heirs or estate, in the event the Company determines that the\nprotection of the Property or the Derived Marks reasonably requires such action.\nIn the event that the Company learns of any infringement or other violation of\nrights in or to the Property, it shall promptly notify Licensor thereof.\n\n         (d) At Licensor's request, the Company shall execute all documents\nreasonably requested by Licensor to confirm Licensor's ownership of rights in\nand to the Property. The Company shall cooperate at Licensor's reasonable\nrequest in connection with the filing and prosecution of applications to\nregister the Property and in connection with the maintenance and renewal of such\nregistrations as may issue. Licensor and the Company shall cooperate in good\nfaith, taking into account their respective interests in and rights to the\nProperty, to determine whether or not such applications are filed and prosecuted\nand registrations are maintained. The Company shall pay all costs and expenses\nof any such filings or proceedings.\n\n         (e) If one party hereto reasonably requests of the other to take an\naction in connection with the foregoing, the other party shall cooperate in\nconnection with any such action, including, without limitation, by being a\nplaintiff or co-plaintiff and by causing its officers, directors, and employees\nto execute documents and to testify. If the Company desires to take action with\nrespect to a violation or infringement of the Property, it shall consult with\nLicensor and shall not take actions which Licensor reasonably requests not to be\ntaken. All costs and expenses of the actions described in this paragraph shall\nbe borne by the Company.\n\n         (f) The Company shall take actions to protect the Derived Marks and the\ngoodwill related thereto consistent with the provisions of this Section. \n\n                                      -9-\n\n\n         6. Indemnity. (a) The Company hereby saves and holds Licensor, her\nheirs, estate, successors and assigns (the \"Indemnified Parties\") harmless of\nand from, and indemnifies and agrees to defend them against any and all losses,\nliability, damages and expenses (including, without limitation, reasonable\nattorney's fees and expenses) which they may incur or be compelled to pay, or\nfor which they may become liable or be compelled to pay in any action, claim or\nproceeding against her, for or by reason of any acts, whether of omission or\ncommission, that may be committed or suffered by the Company or any of its\nofficers, directors, employees, agents or servants in connection with the\nCompany's performance of its obligations under this Agreement, the use\n(including sublicensing) of the Property and the Derived Marks or the breach by\nthe Company of any covenant contained herein. The indemnification rights\nprovided for herein shall also apply to any use by the Company of the Property\nor any Derived Marks prior to the date hereof.\n\n         (b) In the event that an Indemnified Party receives notice of a claim\nas to which indemnification is sought, such party shall reasonably promptly\nnotify the Company thereof, except that the failure to so notify shall not\nexempt the Company from its obligations hereunder, except to the extent that\nsuch failure has actually prejudiced the Company's legal position with respect\nto the claim. Upon receipt of notice, the Company shall advise the Indemnified\nParty that it has assumed the defense thereof. The Indemnified Party shall have\nthe right, at the expense of the Company, to retain legal counsel to participate\nin and monitor the defense of the claim, provided that the Company shall have\nthe right to direct and control such defense. The Company shall not, without\nLicensor's written consent, settle or compromise any claim or consent to entry\nof any judgment which does not include as an unconditional term \n\n                                      -10-\n\n\nthereof the giving by the claimant or the plaintiff to the Indemnified Party of\na release from all liability in respect of such claim, nor shall the Company\nsettle or compromise any claim relating to the Property or the Derived Marks\nwhich would limit the use by Licensor of the Property in any manner whatsoever\nwithout Licensor's consent.\n\n         (c) In connection with any action by the Company to enforce, protect or\ndefend the Property or the Derived Marks, Licensor may elect to retain counsel\nof her own choosing, in addition to Company counsel, in order to monitor and\nparticipate in such action. The Company agrees to consider in good faith the\nviews of such counsel and to keep Licensor and such counsel reasonably informed\nof the progress of any such action, subject to the preceding sentence. The\nreasonable fees and expenses of such counsel shall be paid for by the Company.\n\n   \n         (d) The Company shall maintain in effect at all times errors and\nomissions insurance, in customary amounts taking into account the size of the\nCompany, the value of the Property and the obligations of the Company hereunder,\nand shall name Licensor and the other Indemnified Parties hereunder as\nbeneficiaries thereof for purposes of this Agreement.\n    \n\n         7. Certain Remedies. (a) The parties agree that the remedies at law for\nany material breach or threatened material breach of this Agreement, including\nmonetary damages, are inadequate compensation for any loss and that the\nnonbreaching party shall be entitled to seek specific performance of this\nAgreement. The parties hereto waive any defense to such claim that a remedy at\nlaw would be adequate. In the event of any actual or threatened material default\nin, or material breach of, any of the terms hereof, the party aggrieved thereby\nshall have the right \n\n                                      -11-\n\n\nto seeks specific performance and injunctive or other equitable relief with\nrespect to its rights hereunder, in addition to any remedies available at law.\n\n                  In the event that a Termination Trigger has occurred and the\nCompany fails to pay the royalty amounts due for any two consecutive quarters,\nLicensor, after providing the Company with 10 business days' notice, during\nwhich the Company may cure such failures, shall have the right to terminate this\nAgreement, subject to a three-month sell-off period for the Company with respect\nto its then-current inventory. To the extent that the Company has entered into\nany agreement with a third party that is not terminable on such notice and which\ninvolves the Property or any Derived Marks, the Company shall seek to terminate\nsuch agreement as soon as reasonably practicable and shall pay to Licensor a 10%\nroyalty on any revenues derived by the Company under such agreement from and\nafter the date of termination under this paragraph. Termination of this\nAgreement for any reason shall not affect Licensor's right to royalties for any\nprior period, nor the indemnity and other obligations of the Company hereunder.\n\n         8. Miscellaneous. (a) This Agreement shall be governed by, and\nconstrued in accordance with, the laws of the State of Delaware, without\nreference to principles of conflict of laws. The captions of this Agreement are\nnot part of the provisions hereof and shall have no force or effect. This\nAgreement may not be amended or modified except by a written agreement executed\nby the parties hereto or their respective successors and legal representatives.\n\n         (b) This Agreement is assignable by the Company to any successor of the\nCompany which acquires all or substantially all of the assets or businesses of\nthe Company or to an acquiror, whether by sale, merger, recapitalization or\nother business combination, of all or substantially all of the assets or\nbusinesses of the Company without Licensor's consent, \n\n                                      -12-\n\n\nprovided that any such successor or assignee shall provide Licensor with a\nwritten agreement that it shall be bound by all the terms of this Agreement.\nThis Agreement shall be assignable by Licensor to any entity controlled by her,\nand inure to the benefit of and be binding upon the successors, legal\nrepresentative, heirs and assigns of Licensor. Except as specified in this\nSection 8(b), this Agreement is not assignable.\n\n         (c) All notices and other communications under this Agreement shall be\nin writing and shall be given by hand delivery to the other party or by\nregistered or certified mail, return receipt requested, postage prepaid,\naddressed as follows:\n\n                  If to the Licensor:\n\n                  Martha Stewart\n                  48 Turkey Hill Road South\n                  Westport, CT  06880\n\n                  If to the Company:\n\n                  Martha Stewart Living Omnimedia, Inc.\n                  20 West 43rd Street\n                  New York, New York  10036\n                  Attention:  General Counsel\n\nor to such other address as either party furnishes to the other in writing in\naccordance with this Section. Notices and communications shall be effective when\nactually received by the addressee.\n\n         (d) The invalidity or unenforceability of any provision of this\nAgreement shall not affect the validity or enforceability of any other provision\nof this Agreement. If any provision of this Agreement shall be held invalid or\nunenforceable in part, the remaining portion of such provision, together with\nall other provisions of this Agreement, shall remain valid and enforceable and\ncontinue in full force and effect to the fullest extent consistent with law.\n\n                                      -13-\n\n\n         (e) Licensor and the Company acknowledge that this Agreement supersedes\nany other agreement between them concerning the subject matter hereof, including\nthe Predecessor Agreements.\n\n         (f) This Agreement may be executed in several counterparts, each of\nwhich shall be deemed an original, and said counterparts shall constitute but\none and the same instrument.\n\n                  IN WITNESS WHEREOF, the parties hereto have duly caused this\nAgreement to be executed in its name on its behalf, all as of the day and year\nfirst above written.\n\n                                          -------------------------------------\n                                                  Martha Stewart\n\n\n\n                                          MARTHA STEWART LIVING OMNIMEDIA, INC.\n\n\n\n                                          By:\n                                             ----------------------------------\n                                             Name:\n                                             Title:\n\n                                      -14-\n\n\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[8137],"corporate_contracts_industries":[9464],"corporate_contracts_types":[9613,9616],"class_list":["post-42360","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-martha-stewart-living-omnimedia-inc","corporate_contracts_industries-media__books","corporate_contracts_types-operations","corporate_contracts_types-operations__ip"],"acf":[],"_links":{"self":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts\/42360","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts"}],"about":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/types\/corporate_contracts"}],"wp:attachment":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/media?parent=42360"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42360"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42360"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42360"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}