{"id":42930,"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-and3.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"trademark-license-agreement-netscape-communications-corp-and3","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/trademark-license-agreement-netscape-communications-corp-and3.html","title":{"rendered":"Trademark License Agreement &#8211; Netscape Communications Corp. and Yahoo! Inc."},"content":{"rendered":"<pre> \n                             TRADEMARK LICENSE AGREEMENT\n\nThis Trademark License Agreement (\"Agreement\") is effective as of the _______\nday of March, 1997 (\"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 Yahoo! Inc.\n(\"Yahoo\"), a California corporation located at 3400 Central Expressway, Ste.\n201, Santa Clara, California 95051.\n\n                                     RECITALS\n\nA.  Netscape owns and uses the name and\/or trademark NETSCAPE, and U.S. Federal\n    Trademark Reg. No. 2,027,552 therefor, in connection with its\n    Internet-related software products, services and technology;\n\nB.  Yahoo produces Web sites and performs other Internet-related services;\n\nC.  Yahoo desires to use the trademark NETSCAPE in \"Netscape Guide\" and\n    Netscape's \"N\" design horizon logo (\"Logo\") (the Logo, the phrase `Netscape\n    Guide' and NETSCAPE being collectively referred to herein as the \"Marks\" as\n    such Marks are more fully described in Exhibit A) as part of the title\n    \"Netscape Guide by Yahoo\" in connection with Internet navigation and\n    directory services;  and\n\nD.  Netscape is willing to permit such use of the Marks 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\n    1.1    GRANT OF LICENSE.  Netscape hereby grants to Yahoo a non-exclusive,\nnontransferable, worldwide license to use the Marks in the title \"Netscape Guide\nby Yahoo\" solely in conjunction with Internet navigation and directory services\n(the \"Navigational Services\") which shall, in part, promote Netscape's products\nand services, may be jointly developed by Netscape and Yahoo, and which services\nshall reside on Yahoo's Website deploying Yahoo's servers or such other mirror\nsite servers as Netscape shall approve.  Yahoo may only use the Marks as a\ncollective whole and shall not separately use any element or elements of the\nMarks.  Notwithstanding the foregoing, Netscape acknowledges that it shall not\nseek to prevent Yahoo from using the word \"Guide\" separate and apart from the\nMarks.\n\n    1.2    RESERVATION OF RIGHTS.  Netscape hereby reserves any and all rights\nnot expressly and explicitly granted in this Agreement, including Netscape's\nright to authorize or license use of the Marks 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, Internet navigation and directory\nservices.\n\n\n                    [X]   CONFIDENTIAL TREATMENT REQUESTED\n\n\n2.  LICENSE FEE.  For the rights granted to Yahoo herein, Yahoo shall pay\nNetscape a one-time non-refundable license fee of Five Million Dollars\n($5,000,000) at the time of the execution of this Agreement.  The license fee\ndue hereunder is exclusive of any applicable taxes.  Yahoo shall be responsible\nfor all applicable national, state and local taxes, value added or sales taxes,\nexchange, interest, banking, collection and other charges and levies and\nassessments pertaining to payments other than U.S. taxes based on Netscape's net\nincome.  If Yahoo is required by law to make any deduction or to withhold from\nany sum payable to Netscape by Yahoo hereunder, (i) Yahoo shall effect such\ndeduction or withholding, remit such amounts to the appropriate taxing\nauthorities and promptly furnish Netscape with tax receipts evidencing the\npayments of such amounts, and (ii)  the sum payable by Yahoo upon which the\ndeduction or withholding is based shall be increased to the extent necessary to\nensure that, after such deduction or withholding, Netscape receives and retains,\nfree from liability for such deduction or withholding, a net amount equal to the\namount Netscape would have received and retained in the absence of such required\ndeduction or withholding.\n\n3.  OWNERSHIP OF MARKS.\n\n    3.1    NETSCAPE OWNERSHIP.  Yahoo hereby acknowledges that Netscape is the\nowner of the Marks, and any trademark applications and\/or registrations thereto,\nagrees that it will do nothing inconsistent with such ownership and agrees that\nall use of the Marks by Yahoo shall inure to the benefit of Netscape.  Yahoo\nagrees that nothing in this Agreement shall give Yahoo any right, title or\ninterest in the Marks other than the right to use the Marks in accordance with\nthis Agreement.  Yahoo agrees not to register or attempt to register the Marks\nor the Logo as a trademark, service mark, Internet domain name, trade name, or\nany similar trademarks or name, with any domestic or foreign governmental or\nquasi-governmental authority which would be likely to cause confusion with the\nMarks.  The provisions of this paragraph shall survive the expiration or\ntermination of this Agreement.\n\n    3.2    OWNERSHIP BY YAHOO.  Netscape acknowledges that Yahoo is the owner\nof Yahoo's trademarks and\/or registrations thereto and agrees that it will do\nnothing inconsistent with such ownership.  Yahoo's trademarks include the name\nYahoo and any derivative Yahoo-based mark and the Yahoo logo.\n\n4.  USE OF THE MARKS; PROTECTION OF THE MARKS.\n\n    4.1    PROPER USE.  Yahoo agrees that all use of the Marks shall only occur\nin connection with the Navigational Services and shall be in strict compliance\nwith the terms of this Agreement.  Yahoo may use the Marks as set forth in\nSection 1.1 as well as in connection with the promotion of the Navigational\nServices.  Yahoo shall use the Marks in conformance with Netscape's trademark\nguidelines (\"Trademark Guidelines\"), set forth in Exhibit B, which Trademark\nGuidelines may be revised by Netscape from time to time.  Yahoo agrees not to\nuse any other trademark or service mark in combination with the Marks other than\nas described in Section 1.1.  Yahoo has no right to sublicense, transfer or\nassign the use of the Marks or use the Marks for any other purpose other than\nthe purpose described herein.  Yahoo may not use the Mark in connection with, or\nfor the benefit of, any third party's products or services.  Yahoo further\nagrees not to use the Marks on any products or services that are deemed by\nNetscape, in its reasonable judgment, to be directly, explicitly or maliciously\ndisparaging of Netscape or its products. or products that are themselves\nunlawful or whose purpose is to encourage unlawful activities by others.\n\n    4.2    QUALITY STANDARDS.  Yahoo agrees to maintain a consistent level of\nquality of the Navigational Services performed in connection with the Marks\nsubstantially equal to that found in Yahoo's existing Web site services.  Yahoo\nfurther agrees to maintain a level of quality in connection with its use of the\nMarks that is consistent with general industry standards.\n\n    4.3    MONITORING BY NETSCAPE.  Yahoo acknowledges that Netscape has no\nfurther obligations under this Agreement other than the right to periodically\nmonitor Yahoo's use of the Marks in conjunction with the Navigational Services.\nUpon request by Netscape, Yahoo shall provide Netscape with representative\nsamples of each such use prior to the time the Marks are first published on the\nInternet.  If\n\n\n                    [X]   CONFIDENTIAL TREATMENT REQUESTED\n\n\nNetscape determines that Yahoo is using the Marks improperly, and\/or in\nconnection with Navigational Services which do not meet the standards set forth\nin Section 4.1 or Section 4.2, Netscape shall notify Yahoo, and Yahoo shall\nremedy the improper use within two (2) business days following receipt of such\nnotice from Netscape.  Use of the Marks on goods or services other than the\nNavigational Services or the promotion of the Navigational Services, or in a\nmanner inconsistent with the Trademark Guidelines, shall constitute material\nbreach of this Agreement.  If such material breach has not been cured within two\n(2) business days following receipt of notice from Netscape, this Agreement\nshall be terminated.\n\n    4.4    LEGEND; DISCLAIMER.  Yahoo shall include with any online publication\nof the Marks a trademark legend indicating that the Marks are those of Netscape,\nused under license, and a disclaimer that Yahoo and not Netscape has produced\nthe Navigational Services and is responsible for the content thereof.\n\n    4.5    NAVIGATIONAL SERVICES.  If Netscape reasonably determines that the\nNavigational Services contains or presents any material that constitutes an\ninfringement of Netscape's trademark, patents, copyrights or trade secrets,\nNetscape may immediately terminate the license grant described in Section 1.1 if\nYahoo has not revised, removed or delinked to such material to Netscape's\nreasonable satisfaction within seven (7) business days of written notice from\nNetscape.  If Netscape reasonably determines that the Navigational Services\ncontains or presents any material that could reasonably constitute a clear and\nunambiguous infringement of a third party's copyright, trademark, patents or\ntrade secrets, Netscape and Yahoo shall confer and mutually agree on a proper\ncourse of action.\n\n5.  CONFIDENTIAL INFORMATION AND DISCLOSURE.  Unless required by law, and\nexcept to assert its rights hereunder or for disclosures to its own employees on\na \"need to know\" basis, Yahoo agrees not to disclose the terms of this Agreement\nor matters relating thereto without the prior written consent of Netscape, which\nconsent shall not be unreasonably withheld.\n\n6.  TERMINATION\n\n    6.1    TERM AND TERMINATION.  This Agreement and the term of the license\ngranted herein shall be perpetual unless terminated as provided in Section 4.3,\nSection 4.5 or this Section 7.1.  Netscape shall have the right to terminate\nthis Agreement upon the occurrence of one or more of the following: (a) any\nmaterial breach by Yahoo of its obligations under this Agreement which remains\nuncured for thirty (30) days or more following written notice of such breach\nfrom Netscape, or (b) use of the Marks by Yahoo in a manner which is directly,\nexplicitly or maliciously disparaging of Netscape or its products and services\nand which remains uncured for two (2) days following notice from Netscape.\n\n    6.2    EFFECT OF TERMINATION.  Upon termination of the Agreement, Yahoo\nagrees it shall immediately cease any and all use of the Marks.\n\n7.  GENERAL\n\n    7.1    GOVERNING LAW.  This Agreement shall be subject to and governed in\nall respects by the statutes and laws of the State of California without regard\nto the conflicts of laws principles thereof.  The Superior Court of Santa Clara\nCounty and\/or the United States District Court for the Northern District of\nCalifornia shall have exclusive jurisdiction and venue over all controversies in\nconnection herewith, and each party hereby consents to such exclusive and\npersonal jurisdiction and venue.\n\n    7.2    ENTIRE AGREEMENT.  This Agreement, including Exhibit A and Exhibit\nB, constitutes the entire Agreement and understanding between the parties and\nintegrates all prior discussions between them related to its subject matter.  No\nmodification of any of the terms of this Agreement shall be valid unless in\nwriting and signed by an authorized representative of each party.\n\n    7.3    ASSIGNMENT.  [XXXX].\n\n    7.4    NOTICES.  All notices required or permitted hereunder shall be given\nin writing addressed to the respective parties as set forth below and shall\neither be (a) personally delivered; (b) transmitted by\n\n\n                    [X]   CONFIDENTIAL TREATMENT REQUESTED\n\n\n\npostage prepaid certified mail, return receipt requested; or (c) transmitted by\nnationally-recognized private express courier, and shall be deemed to have been\ngiven on the date of receipt if delivered personally, or two (2) days after\ndeposit in mail or express courier.  Either party may change its address for\npurposes hereof by written notice to the other in accordance with the provisions\nof this Subsection.  The addresses for the parties are as follows:\n\n    YAHOO:                                  NETSCAPE:\n    Yahoo! Inc.                             Netscape Communications Corporation\n    3400 Central Expressway, Ste. 201       501 East Middlefield Road\n    Santa Clara, CA  95051                  Mountain View, CA 94043\n    Fax:  (408) 731-3510                    Fax: (415) 528-4123\n    Attn: General Counsel                   Attn: General Counsel\n\n    7.5    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 limited to acts of God, war, riot, embargoes, acts of\ncivil or military authorities, fire, floods or accidents.\n\n    7.6    WAIVER.  Any waiver, either expressed or implied, by either party of\nany default by the other in the observance and performance of any of the\nconditions, covenants of duties set forth herein shall not constitute or be\nconstrued as a waiver of any subsequent or other default.\n\n    7.7    HEADINGS.  The headings to the Sections and Subsections of this\nAgreement are included merely for convenience of reference and shall not affect\nthe meaning of the language included therein.\n\n    7.8    INDEPENDENT CONTRACTORS.  The parties acknowledge and agree that\nthey are dealing with each other hereunder as independent contractors.  Nothing\ncontained in the Agreement shall be interpreted as constituting either party the\njoint venture or partner of the other party or as conferring upon either party\nthe power of authority to bind the other party in any transaction with third\nparties.\n\n    7.9    SURVIVAL. The provisions of Section 1.2 (Reservation of Rights), 3\n(Ownership of Marks), 4.4 (Legend; Disclaimer), 5 (Confidential Information and\nDisclosure), 6.2 (Effect of Termination) and 7 (General) will survive any\ntermination of this Agreement.\n\n    7.10   EQUITABLE RELIEF.  Yahoo recognizes and acknowledges that a breach\nby Yahoo of this Agreement will cause Netscape irreparable damage which cannot\nbe readily remedied in monetary damages in an action at law, and may, in\naddition thereto, constitute an infringement of the Marks.  In the event of any\ndefault or breach by Yahoo that could result in irreparable harm to Netscape or\ncause some loss or dilution of Netscape's goodwill, reputation, or rights in the\nMarks, Netscape shall be entitled to immediate injunctive relief to prevent such\nirreparable harm, loss, or dilution in addition to any other remedies available.\n\n    7.11   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.  Any such invalid,\nillegal or unenforceable provision or portion thereof shall be changed and\ninterpreted so as to best accomplish the objectives of such provision or portion\nthereof within the limits of applicable law.\n\n    7.12   ATTORNEY'S FEES.  In the event of any action, suit, or proceeding\nbrought by either party to enforce the terms of this Agreement, the prevailing\nparty shall be entitled to receive its costs, expert witness fees, and\nreasonable attorneys fees and expenses, including costs and fees on appeal.\n\n\n                    [X]   CONFIDENTIAL TREATMENT REQUESTED\n\n\n\nIN WITNESS WHEREOF, the parties have executed this Agreement as of the Effective\nDate.\n\n\n\nYAHOO! INC.                            NETSCAPE COMMUNICATIONS\n                                       CORPORATION\n\n\nBy: \/s\/ JEFFREY MALLETT                By: \/s\/ JENNIFER BAILEY\n   -------------------------------        -------------------------------\nPrint Name: Jeffrey Mallett            Print Name: Jennifer Bailey\n           -----------------------                -----------------------\nTitle: Senior Vice President           Title: VP of Electronic Marketing\n      ----------------------------           ----------------------------\nDate: 3\/17\/97                          Date: 3\/17\/97\n     -----------------------------          -----------------------------\n\n\n                    [X]   CONFIDENTIAL TREATMENT REQUESTED\n\n\n\n                                      EXHIBIT A\n\n                                 MARK SPECIFICATIONS\n\nNETSCAPE\n\nNetscape Guide\n\n\"N\" Design Horizon Logo: (as described in the Corporate Signature Kit, included\nin Exhibit B.)\n\n\n                    [X]   CONFIDENTIAL TREATMENT REQUESTED\n\n\n                                      EXHIBIT B\n\n                                 TRADEMARK GUIDELINES\n\n\n\n\n\n\n\n\n\n\n\n\n                    [X]   CONFIDENTIAL TREATMENT REQUESTED\n\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[8328,9377],"corporate_contracts_industries":[9510,9513],"corporate_contracts_types":[9613,9616],"class_list":["post-42930","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-netscape-communications-corp","corporate_contracts_companies-yahoo-inc","corporate_contracts_industries-technology__programming","corporate_contracts_industries-technology__software","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\/42930","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=42930"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42930"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42930"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42930"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}