{"id":42929,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/trademark-license-agreement-netscape-communications-corp-and.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"trademark-license-agreement-netscape-communications-corp-and","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/trademark-license-agreement-netscape-communications-corp-and.html","title":{"rendered":"Trademark License Agreement &#8211; Netscape Communications Corp. and Net2Phone Inc."},"content":{"rendered":"<pre>\n\n****CERTAIN PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED AND FILED SEPARATELY WITH\nTHE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL\nTREATMENT UNDER RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED\n\n\n                             Netscape Agreement #\n                                    005439\n\n                          TRADEMARK LICENSE AGREEMENT\n\n     This Trademark License Agreement (\"Agreement\") is effective as of the 31st\nday of January, 1999 (\"the Effective Date\") and is entered into by and between\nNetscape Communications Corporation (\"Netscape\"), a Delaware corporation located\nat 501 East Middlefield Road, Mountain View California 94043, and Net2Phone,\nInc., (\"Licensee\"), a New Jersey corporation located at 171 Main Street,\nHackensack, NJ 07601.\n\n                                    RECITALS\n\nA.  Netscape owns and uses the trademark NETSCAPE (the \"Mark\"), in connection\n    with its Internet-related software products, services and technology;\n\nB.  Licensee, among other things, produces certain client software products that\n    operate in conjunction with Netscape client software products or are\n    accessible from and promoted on Netscape's Internet web sites (\"Co-branded\n    Products\").\n\nC.  Licensee desires to use the Mark in connection with the promotion, marketing\n    and delivery of Licensee's Co-branded Products over the Internet, enterprise\n    networks or similar networks through web pages in the languages and\n    geographic territories set forth in Exhibit A; and\n                                        ---------     \n\nD.  Netscape is willing to permit such use of the Mark under the terms and\n    conditions set forth in this Agreement.\n\nNOW THEREFORE, the parties agree as follows:\n\n1.  Grant of License.\n\n1.1.  Grant of License.  Netscape hereby grants to Licensee a non-exclusive,\nnontransferable, license to use the Mark in connection with the Co-branded\nProducts solely to promote, market, sell and deliver Co-branded Products to end\nusers in the languages and geographic territories mutually agreed upon in\nwriting by the parties, including those set forth in Exhibit A.  Licensee may\n                                                     ------------            \nonly use the Mark as a collective whole and shall not separately use any element\nor elements of the Mark.\n\n1.2.  Reservation of Rights.  Netscape hereby reserves any and all rights not\nexpressly and explicitly granted in this Agreement, including Netscape's right\nto authorize or license use of the Mark or any other trademarks or names\ncontaining NETSCAPE, to any third party for use in connection with any goods and\nservices, including, but not limited to, Co-branded Products.  Without limiting\nthe rights reserved in the first sentence, Netscape hereby reserves any and all\nrights to use, authorize use or license use of the Mark or any other trademarks\nor names containing the Marks in any geographic territory and in any language,\nexcept as otherwise agreed \n\n\n                                 CONFIDENTIAL\n \nto in writing. Licensee shall have no obligation to use the Mark as contemplated\nunder this Agreement.\n\n2. License Fee. For the rights granted to Licensee herein, Licensee shall pay\nNetscape, by wire transfer, a one-time non-refundable license fee of **** at the\ntime of the execution of this Agreement. The license fee due hereunder is\nexclusive of any applicable taxes. Netscape shall be responsible for and shall\nreimburse Licensee for, and promptly pay, all applicable national, state and\nlocal taxes, value added or sales taxes, and other taxes pertaining to payments\nexcept taxes based on Licensee's income. If Netscape in good faith contests any\ntax that is so payable or reimbursable by Netscape, Licensee shall cooperate in\ngood faith in the contest at Netscape's expense. Licensee shall pass on to\nNetscape any tax refund and interest related thereto, received by Licensee with\nrespect to Licensee's previous payment or reimbursement of applicable taxes and\ninterest related thereto hereunder, if any\n\n3.  Ownership of Mark.  Licensee hereby acknowledges that Netscape is the owner\nof the Mark, and any trademark applications and\/or registrations thereto, agrees\nthat it will do nothing inconsistent with Netscape's intellectual property\nrights in the Mark and agrees that all use of the Mark by Licensee shall inure\nto the benefit of Netscape.  Licensee agrees that nothing in this Agreement\nshall give Licensee any right, title or interest in the Mark other than the\nright to use the Mark in accordance with this Agreement.  Licensee agrees not to\nregister or attempt to register the Marks as a trademark, service mark, Internet\ndomain name, trade name, with any domestic or foreign governmental or quasi-\ngovernmental authority and agrees it will not violate any of Netscape's\nintellectual property rights in the Mark.  Licensee may not register or use\neither the Mark, or an abbreviation of the Mark, as part of an Internet domain\nname.  The provisions of this paragraph shall survive the expiration or\ntermination of this Agreement.\n\n4.  Use of the Mark; Protection of the Mark.\n\n4.1.  Proper Use.  Licensee agrees that all use of the Mark under this Agreement\nshall only occur in connection with The Co-branded Products and shall be in\ncompliance with the terms of this Agreement.  Licensee may use the Mark as set\nforth in Section 1.1 as well as in connection with the promotion of The Co-\nbranded Products.  Licensee shall use the Mark in conformance with Netscape's\ntrademark guidelines (\"Trademark Guidelines\"), set forth in Exhibit B, which may\n                                                            ---------           \nreasonably be revised by Netscape from time to time.  Licensee agrees not to use\nany other trademark or service mark in combination with the Mark other than as\ndescribed in Section 1.1.  Except as provided in Section 8.3, Licensee has no\nright to sublicense, transfer or assign the use of the Mark or use the Mark for\nany other purpose other than the purpose described herein.  Licensee may not use\nthe Mark in connection with or for the benefit of, any third party's products or\nservices.  Licensee further agrees not to use the Mark on or in connection with\nany products or services that are or could reasonably be deemed to be obscene,\npornographic, disparaging of Netscape or its products or services, or that are\nthemselves unlawful or whose purpose is to encourage unlawful activities by\nothers (provided however that this clause shall not be applicable to the content\nsent through the use of the Co-branded Products except if such content is\noriginated by Licensee).  The parties acknowledge that nothing in the Agreement\nprevents the other from using the Mark in a non-denominative, non-trademark\nfashion that is otherwise allowed by law.\n\n[****] REPRESENTS MATERIAL, WHICH HAS BEEN REDACTED AND FILED SEPARATELY WITH \nTHE COMMISSION, PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT PURSUANT TO \nRULE 406 UNDER THE SECURITIES ACT OF 1933, AS AMENDED.\n\n\n                                 CONFIDENTIAL\n \n4.2.  Quality Standards.  If Licensee uses the Mark in connection with the Co-\nbranded Products, Licensee agrees to maintain a consistent level of quality of\nthe Co-branded Products made available thereunder, substantially equal to that\nfound in Licensee's existing products and Web site services.  Licensee further\nagrees to maintain a level of quality of the Co-branded  Products in connection\nwith its use of the Mark that is consistent with general industry standards.\n\n4.3.  Monitoring by Netscape.  Licensee acknowledges that Netscape has no\nfurther obligations under this Agreement but that Netscape does have the right\nto periodically monitor, no more than quarterly, Licensee's use of the Mark in\nconjunction with the Co-branded Products.  Upon reasonable request by Netscape,\nno more often than quarterly, Licensee shall provide Netscape with\nrepresentative samples of each such use prior to the time the Mark is published\non the Internet or in press materials or marketing or advertising materials.  If\nNetscape determines in good faith that Licensee is using the Mark improperly,\nand\/or in connection with Products, or products, which do not meet the standards\nset forth in Section 4.1 or Section 4.2, Netscape shall notify Licensee, and\nLicensee shall use reasonable efforts to remedy the improper use within ten (10)\nbusiness days following receipt of such notice from Netscape.  Use of the Mark\non goods or services other than in connection with the Co-branded Products, in a\nmanner inconsistent with the Trademark Guidelines, or in connection with an\ninfringement of Netscape's or a third party's rights, including but not limited\nto rights under trademark, patent, trade secret or copyright, laws may\nconstitute material breach of this Agreement which shall be treated in\naccordance with Section 7.1..\n\n4.4.  Legend; Disclaimer.  Licensee shall include with any online publication or\npublication in print of the Mark a trademark legend indicating that the Mark is\nthat of Netscape, used under license, and a disclaimer that Licensee and not\nNetscape has produced The Co-branded  Products.\n\n4.5.  Licensee's Co-branded Products.  If the Co-branded Products contain or\npresent any material that constitutes an infringement of Netscape's trademark,\npatents, copyrights or trade secrets (except with respect to any such material\nprovided or included by Netscape or at the request of Netscape), Licensee's\nright to use the Mark pursuant to the grant described in Section 1.1 shall, upon\nwritten notice from Netscape and following an opportunity to cure in at least\nten (10) business days from receipt of such notice, be suspended until Licensee\nhas revised, removed or removed links to such material to Netscape's reasonable\nsatisfaction.  If such revision or removal of, or removal of links to, such\nmaterial to Netscape's reasonable satisfaction has not occurred within thirty\n(30) days of the notice from Netscape described in the preceding sentence,\nNetscape may terminate this Agreement in accordance with Section 7.1.  If the\nCo-branded Products contain or present any material that constitute an\ninfringement of a third party's copyright, trademark, patents or trade secrets,\n(except for any such material provided or included by Netscape or at the request\nof Netscape), Netscape may terminate this Agreement in accordance with Section\n7.1.\n\n\n                                 CONFIDENTIAL\n \n5.  Confidential Information and Disclosure.  Unless required by law, and except\nto assert its rights hereunder or for disclosures to its own employees,\nconsultants, accountants, agents, representatives and attorneys on a \"need to\nknow\" basis, each party agrees not to disclose the terms of this Agreement or\nmatters relating thereto without the prior written consent of the other.\n\n6.  Indemnification\n\n6.1.  By Netscape.  Netscape agrees to indemnify Licensee and to hold Licensee\nharmless from any and all liability, loss, damages, claims or causes of action,\nincluding reasonable legal fees and expenses that may be incurred by Licensee,\narising out of claims by a third party that Licensee's use of the Marks in\naccordance with this Agreement infringes such third party's rights in the Marks.\nLicensee shall provide Netscape with prompt written notice of any claim for\nwhich indemnification is sought, and shall cooperate fully with and allow\nNetscape to control the defense and settlement of such claim.  Netscape may not\nsettle any such claim without Licensee's prior written consent, which consent\nshall not be unreasonably withheld.  Licensee shall have the right, at its own\nexpense, to participate in the defense of any such claim.\n\n7.  Termination\n\nTerm and Termination. This Agreement and the term of the license granted herein\nshall be perpetual unless terminated as provided in Section 4.3, Section 4.5 or\nthis Section 7.1. Netscape shall have the right to terminate this Agreement upon\nthe occurrence of one or more of the following: (a) any material breach by\nLicensee of its obligations under this Agreement, including without limitation,\nthose indicated in Section 4.3 and 4.5 of this Agreement, which remains uncured\nfor (i) thirty (30) days or more following written notice of such breach from\nNetscape, or (ii) in the event Licensee provides Netscape, within such thirty\n(30) day period, a written plan to remedy such breach, sixty (60) days of more\nfrom the date such plan is provided to Netscape (b) Licensee decides not to\ndevelop and launch a Co-branded Products that uses the Mark, or (c) The Co-\nbranded Products are discontinued for a continuous period of four (4) months and\nnot restarted within thirty (30) days of written notice from Netscape of such\nfact; provided, however, that Netscape shall not be entitled to terminate the\nAgreement under subsections (b) or (c)of the foregoing provision prior to the\ndate two (2) years following the Effective Date. Licensee may terminate this\nAgreement at any time for any reason, or for no reason, by written notice\nthereof. Notwithstanding the above, if in its reasonable discretion Netscape\ndetermines that as a result of a breach of this Agreement it will be materially\nand adversely affected in a substantial manner by failing to immediately suspend\nthe licenses granted herein, Netscape may suspend the licenses granted in\nSection 1 until such breach is cured.\n\n \n7.2.  Effect of Termination.  Upon termination of the Agreement, Licensee agrees\nit shall immediately cease any and all use of the Mark.\n\n\n                                 CONFIDENTIAL\n \n8.  General\n\n8.1.  Governing Law.  This Agreement shall be subject to and governed in all\nrespects by the statutes and laws of the State of Delaware without regard to the\nconflicts of laws or principles thereof.\n\n8.2.  Entire Agreement.  This Agreement, including Exhibit A and Exhibit B\n                                                   ---------     ---------\nattached hereto, constitute the entire Agreement and understanding between the\nparties and integrates all prior discussions between them related to its subject\nmatter.  No amendment or modification of any of the terms of this Agreement\nshall be valid unless in writing and signed by an authorized representative of\neach party.\n\n8.3.  Assignment.  Except as set forth below, neither party may assign any of\nits rights or (except in the normal course of its business) delegate any of its\nduties under this Agreement, or otherwise assign or transfer this Agreement\nwithout the prior written consent of the other party.  Either party may assign\nthis Agreement in connection with any merger, acquisition, reorganization, sale\nof substantially all the assets or stock of that party or any similar event\n(\"Change of Control Event\") without the prior written consent of the other\nparty.  In the event of a Change of Control Event in which Netscape is not to\nbe a surviving entity, Netscape will use commercially reasonable efforts to\nensure this Agreement is assigned to the successor entity.  Netscape shall have\nthe right to terminate this Agreement upon thirty (30) days prior written notice\nif Participant assigns or transfers this Agreement as permitted to a direct\ncompetitor of Netscape in the web client or web portal business without\nNetscape's consent.  Any attempted assignment, delegation or transfer in\nderogation of the foregoing shall be null and void.  This Agreement shall apply\nto and bind any permitted successors or assigns of the parties hereto and any\nreference to the applicable parties herein shall refer to the applicable\nsuccessors or assigns.\n\n8.4.  Notices.  All notices required or permitted hereunder shall be given in\nwriting addressed to the respective parties as set forth below and shall either\nbe (a) personally delivered or (b)transmitted by nationally-recognized private\nexpress courier, and shall be deemed to have been given on the date of receipt\nif delivered personally, or 2 days after deposit with such express courier.\nEither party may change its address for purposes hereof by written notice to the\nother in accordance with the provisions of this Subsection.  The addresses for\nthe parties are as follows:\n\n\n        Licensee:                        Netscape:\n        Net2Phone, Inc.                  Netscape Communications Corporation\n        171 Main Street                  501 East Middlefield Road, MV-002\n        Hackensack, NJ 07601             Mountain View, CA 94043\n        Fax: _____________               Fax: (650) 528-4123\n        Attn:  General Counsel           Attn: General Counsel\n\n8.5.  Force Majeure.  Neither party will be responsible for any failure to\nperform its obligations under this Agreement due to causes beyond its reasonable\ncontrol, including but not \n\n\n                                 CONFIDENTIAL\n \nlimited to acts of God, war, riot, embargoes, acts of civil or military\nauthorities, fire, floods or accidents.\n\n8.6.  Waiver.  Any waiver, either expressed or implied, by either party of any\ndefault by the other in the observance and performance of any of the conditions,\ncovenants of duties set forth herein shall not constitute or be construed as a\nwaiver of any subsequent or other default.\n\n8.7.  Headings.  The headings to the Sections and Subsections of this Agreement\nare included merely for convenience of reference and shall not affect the\nmeaning of the language included therein.\n\n8.8.  Independent Contractors.  The parties acknowledge and agree that they are\ndealing with each other hereunder as independent contractors.  Nothing contained\nin the Agreement shall be interpreted as constituting either party the joint\nventure or partner of the other party or as conferring upon either party the\npower of authority to bind the other party in any transaction with third\nparties.\n\n8.9.  Survival.  The provisions of Section 1.2 (Reservation of Rights), 3\n(Ownership of Mark), 4.4 (Legend; Disclaimer), 5 (Confidential Information and\nDisclosure), 6 (Indemnification by Netscape), 7.2 (Effect of Termination) and 8\n(General) will survive any termination of this Agreement.\n\n8.10.  Equitable Relief.  Licensee recognizes and acknowledges that a breach by\nLicensee of this Agreement may cause Netscape irreparable damage which cannot be\nreadily remedied in monetary damages in an action at law, and may, in addition\nthereto, constitute an infringement of the Mark.  In the event of any default or\nbreach by Licensee that could result in irreparable harm to Netscape or cause\nsome loss or dilution of Netscape's goodwill, reputation, or rights in the Mark,\nNetscape shall be entitled to seek immediate injunctive relief to prevent such\nirreparable harm, loss, or dilution in addition to any other remedies available.\n\n8.11.  Severability.  Except as otherwise set forth in this Agreement, the\nprovisions of this Agreement are severable, and if any one or more such\nprovisions shall be determined to be invalid, illegal or unenforceable, in whole\nor in part, the validity, legality and enforceability of any of the remaining\nprovisions or portions thereof shall not in any way be affected thereby and\nshall nevertheless be binding between the parties hereto.\n\n\n                                 CONFIDENTIAL\n \nIN WITNESS WHEREOF, the parties have executed this Agreement as of the Effective\nDate.\n\nNET2PHONE, INC.                          NETSCAPE COMMUNICATIONS CORPORATION\nBy:  \/s\/  Jonathan Reich                 By:  \/s\/  Noreen G. Bergin\nName:  JONATHAN REICH                    Name: Noreen G. Bergin\nTitle: SENIOR VICE PRESIDENT MARKET      Title:  Senior Vice President Finance\n       &amp; BUS. DEV.                               &amp; Corporate Controller\n\nDate: JANUARY 31, 1999                   Date:   01-31-99\n\nExhibit A: Marks; Target Language and Geographic Combinations\n---------                                                    \nExhibit B: Trademark Guidelines\n---------                      \n\n                              APPROVED REVENUE ACCTG.\n\n                              REVIEWED BY NETSCAPE LEGAL\n\n                                  Initial \/s\/ AM  1\/31\/99\/\n\n\n\n\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[8319,8328],"corporate_contracts_industries":[9513,9519],"corporate_contracts_types":[9613,9616],"class_list":["post-42929","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-net2phone-inc","corporate_contracts_companies-netscape-communications-corp","corporate_contracts_industries-technology__software","corporate_contracts_industries-telecommunications__telephone","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\/42929","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=42929"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42929"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42929"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42929"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}