{"id":42931,"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-and4.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"trademark-license-agreement-netscape-communications-corp-and4","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/trademark-license-agreement-netscape-communications-corp-and4.html","title":{"rendered":"Trademark License Agreement &#8211; Netscape Communications Corp. and Concentric Network Corp."},"content":{"rendered":"<pre>\n                          TRADEMARK LICENSE AGREEMENT\n\nThis Trademark License Agreement ('AGREEMENT') is effective as of the 23rd day\nof June, 1997 ('EFFECTIVE DATE') and is entered into by and between Netscape\nCommunications Corporation ('NETSCAPE'), a Delaware corporation located at 501\nEast Middlefield Road, Mountain View California 94043, and Concentric Network\nCorporation ('CONCENTRIC'), a Florida corporation located at 10590 N. Tantau\nAvenue, Cupertino, California 95014.\n\n                                    RECITALS\n\nA.   Netscape owns and uses the names and\/or trademarks NETSCAPE and NETSCAPE\n     VIRTUAL OFFICE and any applications or registrations therefor as listed on\n                                                                               \n     Exhibit A attached hereto (collectively referred to as the 'MARKS'), in\n     ---------                                                              \n     connection with its Internet-related software products, services and\n     technology;\n\nB.   Concentric is in the business of offering certain Internet and Intranet-\n     related services;\n\nC.   Concentric desires to use the trademarks NETSCAPE and NETSCAPE VIRTUAL\n     OFFICE solely in the titles set forth in Exhibit B in connection with\n                                              ---------                   \n     Intranet Service in the languages and geographic territories set forth\n     opposite such titles in Exhibit B; and\n                             ---------     \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 Concentric a non-\nexclusive, non-transferable, license to use the Marks in the title set forth in\n                                                                               \nExhibit B solely in conjunction with [*] \n---------                                                                 \nopposite such title (the 'INTRANET SERVICE') which Intranet Service: (a) shall\npromote Netscape's products and services; (b) shall be jointly developed by\nNetscape and Concentric; and (c) shall reside [*] at a location to be mutually\nagreed upon by both parties deploying Concentric's servers and be located [*]\nfrom Netscape's web site. Concentric may only use the Marks as a part of the\ncomplete title specified in Exhibit B and shall not separately use any element\n                            ---------\nor elements of the Marks.\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, Intranet Service.  Without limiting the\nrights reserved in the preceding sentence, Netscape hereby reserves any and all\nrights to use, authorize use or license use of the Marks or any other trademarks\nor names containing NETSCAPE in any geographic territory listed in Exhibit B in\n                                                                   ---------   \na language or language(s), or in any other territory in any language, different\nfrom the language listed next to such geographic territory in Exhibit B.  No\n                                                              ---------     \nright is provided to use any other Netscape trademark, including without\nlimitation the Netscape Horizon Logo.\n\n\n[*] Certain information on this page has been omitted and filed separately \nwith the Securities and Exchange Commission. Confidential treatment has been \nrequested with respect to the omitted portions.\n\n\n \n2.   LICENSE FEE.  For the rights granted to Concentric herein, Concentric shall\npay Netscape license fee of Five million dollars ($5,000,000) payable as\nfollows:\n\n     (a) Two million dollars ($2,000,000) payable by June 30, 1997; and\n\n     (b) Three million dollars ($3,000,000) payable by July 30, 1997.\n\nThe license fee due hereunder is exclusive of any applicable taxes.  Concentric\nshall be responsible for all applicable national, state and local taxes, value\nadded or sales taxes, exchange, interest, banking, collection and other charges\nand levies and assessments pertaining to payments other than U.S. taxes based on\nNetscape's net income.  If Concentric is required by law to make any deduction\nor to withhold from any sum payable to Netscape by Concentric hereunder, (i)\nConcentric shall effect such deduction or withholding, remit such amounts to the\nappropriate taxing authorities and promptly furnish Netscape with tax receipts\nevidencing the payments of such amounts, and (ii) the sum payable by Concentric\nupon which the deduction or withholding is based shall be increased to the\nextent necessary to ensure that, after such deduction or withholding, Netscape\nreceives and retains, free from liability for such deduction or withholding, a\nnet amount equal to the amount Netscape would have received and retained in the\nabsence of such required deduction or withholding.\n\n3.   OWNERSHIP OF MARKS.  Concentric 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 Concentric shall solely inure to the benefit of\nNetscape.  Concentric agrees that nothing in this Agreement shall give\nConcentric any right, title or interest in the Marks other than the right to use\nthe Marks in accordance with this Agreement.  Concentric agrees not to register\nor attempt to register the Marks as a trademark, service mark, Internet domain\nname, trade name, or any similar trademarks or name, with any domestic or\nforeign governmental or quasi-governmental authority or otherwise.  Concentric\nmay not register or use the Marks or an abbreviation of the Marks as part of an\nInternet domain name.  The provisions of this paragraph shall survive the\nexpiration or termination of this Agreement.\n\n4.   USE OF THE MARKS; PROTECTION OF THE MARKS.\n\n     4.1  PROPER USE.  Concentric agrees that all use of the Marks shall only\noccur in connection with the Intranet Service and shall be in strict compliance\nwith the terms of this Agreement.  Concentric may use the Marks as set forth in\nSection 1.1 as well as in connection with the promotion of the Intranet Service,\nexcluding merchandising or any software products.  Use of the Marks for\npromotional purposes shall be submitted to Netscape for approval at least twenty\n(20) business days prior to the promotional use of the Mark.  The Marks shall\nalways be used in the English language; however the VIRTUAL OFFICE term portion\nof the Mark may be translated, upon approval by Netscape, to the non-English\ndesignated language(s) listed in Exhibit B, if any.  No other modifications to\n                                 ---------                                    \nthe Marks shall be made.  Concentric shall use the Marks in conformance with\nNetscape's trademark guidelines ('TRADEMARK GUIDELINES'), set forth in Exhibit\n                                                                       -------\nC, which Trademark Guidelines may be revised by Netscape from time to time.\n-\nConcentric agrees not to use any other trademark or service mark in combination\nwith the Marks other than as described in Section 1.1.  Concentric has no right\nto sublicense, transfer, translate (except as provided in this Section 4.1) or\nassign the use of the Marks or use the Marks for any other purpose other than\nthe purpose described herein.  Concentric may not use the Mark in connection\nwith, or for the benefit of, any third party's products or services.  Concentric\nfurther agrees not to use the Marks on or in connection with any products or\nservices that are or could be deemed by Netscape, in its reasonable judgment, to\nbe obscene, pornographic, disparaging of Netscape or its products or products,\nor otherwise in poor taste, or that are themselves unlawful or whose purpose is\nto encourage unlawful activities by others.\n\n                                       2\n\n \n     4.2  QUALITY STANDARDS.  Concentric agrees to maintain a consistent level\nof quality of the Intranet Service performed in connection with the Marks\nsubstantially equal to that found in Concentric's existing services.  Concentric\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.  Concentric acknowledges that Netscape has no\nfurther obligations under this Agreement other than the right to periodically\nmonitor Concentric's use of the Marks in conjunction with the Intranet Service.\nUpon request by Netscape, Concentric shall provide Netscape with representative\nsamples of each such use prior to the time the Marks are utilized on the\nInternet, on an Intranet or in press materials or marketing or advertising\nmaterials.  If Netscape determines that Concentric is using the Marks\nimproperly, and\/or in connection with Intranet Service which do not meet the\nstandards set forth in Section 4.1 or Section 4.2, Netscape shall notify\nConcentric, and Concentric shall remedy the improper use within two (2) business\ndays following receipt of such notice from Netscape.  Use of the Marks on goods\nor services other than the Intranet Service or the promotion of the Intranet\nService, or in a manner inconsistent with the Trademark Guidelines, shall\nconstitute material breach of this Agreement.  If such material breach has not\nbeen cured within two (2) business days following receipt of notice from\nNetscape, this Agreement shall be terminated.\n\n     4.4  LEGEND; DISCLAIMER.  Concentric shall include with any online\npublication or publication in print containing the Marks a trademark legend\nindicating that 'Netscape is a trademark of Netscape Communications Corporation\nregistered in the US and in other jurisdictions and that the Marks are used\nunder license',  and a disclaimer that Concentric and not Netscape has produced\nthe Intranet Service and is responsible for the content thereof.\n\n     4.5  NAVIGATION SERVICES.  If Netscape reasonably determines that the\n[*] contain or present any material that constitutes an infringement of\nNetscape's trademark, patents, copyrights or trade secrets, Concentric's right\nto use the Marks pursuant to the grant described in Section 1.1 shall, upon\nwritten notice from Netscape of such determination, be suspended until\nConcentric has revised, removed or removed links to such material to\nNetscape's reasonable satisfaction. If such revision or removal of, or removal\nof links to, such material to Netscape's reasonable satisfaction has not\noccurred within thirty (30) days of the notice from Netscape described in the\npreceding sentence, Netscape may immediately terminate the license grant\ndescribed in Section 1.1. If Netscape reasonably determines that the Internet\nServices contains or presents any material that could reasonably constitute an\ninfringement of a third party's copyright, trademark, patents or trade\nsecrets, Netscape may immediately terminate this Agreement if Concentric has\nnot revised to Netscape's reasonable satisfaction that material or\npresentation within one (1) business day of written notice from Netscape.\n\n     4.6  CONCENTRIC WEB SITES.  If Netscape, in its sole discretion, at any\ntime determines that [*], or any services provided by Concentric, contain any\nmaterial or present any material in a manner that Netscape reasonably deems\ninaccurate or an improper tarnishment of Netscape, the Netscape products or\nthe Marks, or an infringement of Netscape's or a third party's rights,\nincluding but not limited rights under trademark, patent, trade secret or\ncopyright laws, or unlawful in any country or territory, Netscape may\nimmediately terminate this Agreement if Concentric has not revised to\nNetscape's reasonable satisfaction that material or presentation within three\n(3) business days of written notice from Netscape; provided, however, that\nNetscape's rights and Concentric's obligations under this paragraph will not\napply to material or presentations that are not within Concentric's control.\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, each party agrees not to disclose the terms of this\nAgreement or matters relating thereto without the prior written consent of the\nother party, which consent shall not be unreasonably withheld.\n\n \n[*] Certain information on this page has been omitted and filed separately \nwith the Securities and Exchange Commission. Confidential treatment has been \nrequested with respect to the omitted portions.\n\n\n                                      3\n\n \n6.   INDEMNIFICATION.\n\n     6.1  INDEMNIFICATION BY CONCENTRIC.  Concentric agrees to indemnify\nNetscape and to hold Netscape harmless from any and all liability, loss,\ndamages, claims or causes of action, including reasonable legal fees and\nexpenses that may be incurred by Netscape, arising out of performance of this\nAgreement, the operation of the Intranet Service, or Concentric's use of the\nMarks and content on Concentric's web sites or services linked to or presented\nor offered in conjunction with the Marks, except for liability, loss, damages,\nclaims or causes of action arising out of third party claims (i) that\nConcentric's use of the Marks infringe that third party's valid and subsisting\nU.S. trademark registration in the Marks or (ii) in respect of any act or\nomission of Netscape giving rise to liability.  Netscape shall provide\nConcentric with prompt written notice of any claim for which indemnification is\nsought and cooperating fully with and allowing Concentric to control the defense\nand settlement of such claim.  Netscape may not settle any such claim without\nConcentric's prior written consent, which consent shall not be unreasonably\nwithheld.  Netscape shall have the right, at its own expense, to participate in\nthe defense of any such claim.\n\n     6.2  INDEMNIFICATION BY NETSCAPE.  Netscape agrees to indemnify Concentric\nand to hold Concentric harmless from any and all liability, loss, damages,\nclaims or causes of action, including reasonable legal fees and expenses that\nmay be incurred by Concentric, arising out of a third party claim that [*]\nConcentric shall provide Netscape with prompt written notice of any claim for\nwhich indemnification is sought and cooperating fully with and allowing\nNetscape to control the defense and settlement of such claim. Concentric may\nnot settle any such claim without Netscape's prior written consent, which\nconsent shall not be unreasonably withheld. Concentric shall have the right,\nat its own expense, to participate in the defense of any such claim.\n\n7.   TERMINATION\n\n     7.1   TERM AND TERMINATION.  [*] in Section 4.3, Section 4.5 or this\nSection 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\nConcentric of its obligations under this Agreement which remains uncured for\nthirty (30) days or more following written notice of such breach from\nNetscape, (b) use of the Marks by Concentric in a manner which is disparaging\nof Netscape or its products and services and which remains uncured for two (2)\ndays following notice from Netscape, (c) Concentric decides not to launch the\nIntranet Service, or (d) the Intranet Service are discontinued.\n\n     7.2   EFFECT OF TERMINATION.  Upon termination of the Agreement, \nConcentric agrees it shall immediately cease any and all use of the Marks.\n\n8.   GENERAL\n\n     8.1   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     8.2   ENTIRE AGREEMENT.  This Agreement, including Exhibit A, Exhibit B, \n                                                        ---------  ---------\nand Exhibit C attached hereto, constitutes the entire Agreement and\n    ---------\nunderstanding between the parties and integrates all prior discussions between\nthem related to its subject matter. No modification of any of the terms of this\nAgreement shall be valid unless in writing and signed by an authorized\nrepresentative of each party.\n\n[*] Certain information on this page has been omitted and filed separately \nwith the Securities and Exchange Commission. Confidential treatment has been \nrequested with respect to the omitted portions.\n\n\n                                       4\n\n \n     8.3   ASSIGNMENT.  Concentric may not assign any of its rights or delegate \nany of its duties under this Agreement, or otherwise transfer this Agreement (by\nmerger, operation of law or otherwise) without the prior written consent of\nNetscape. Any attempted assignment, delegation or transfer in derogation hereof\nshall be null and void.\n\n     8.4   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 or (b) transmitted by nationally-recognized\nprivate express courier, and shall be deemed to have been given on the date of\nreceipt if delivered personally, or two (2) days after deposit with such express\ncourier. Either party may change its address for purposes hereof by written\nnotice to the other in accordance with the provisions of this Subsection. The\naddresses for the parties are as follows:\n\n   CONCENTRIC:                            NETSCAPE:\n \n   Concentric Network Corporation         Netscape Communications Corporation\n   10590 N. Tantau Avenue                 501 East Middlefield Road, MV-002    \n   Cupertino, CA  95014                   Mountain View, CA 94043              \n   Fax: (408) 342-2876                    Fax: (415) 528-4123                  \n   Attn: Mike Anthofer                    Attn: General Counsel                 \n   Senior Vice President and\n   Chief Financial Officer\n\n     8.5  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, provided that (a) such\nparty promptly notifies the other party thereof and (b) such failure does not\ncontinue for more than three (3) days.\n\n     8.6  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     8.7  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     8.8  INDEPENDENT CONTRACTORS.  The parties acknowledge and agree that they\nare 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     8.9  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 (Indemnification), 7.2 (Effect of Termination) and 8 (General)\nwill survive any termination of this Agreement.\n\n     8.10 EQUITABLE RELIEF.  Concentric recognizes and acknowledges that a\nbreach by Concentric of this Agreement will cause Netscape irreparable damage\nwhich cannot be readily remedied in monetary damages in an action at law, and\nmay, in addition thereto, constitute an infringement of the Marks.  In the event\nof any default or breach by Concentric that could result in irreparable harm to\nNetscape or cause some loss or dilution of Netscape's goodwill, reputation, or\nrights in the Marks, Netscape shall be entitled to immediate injunctive relief\nto prevent such irreparable harm, loss, or dilution in addition to any other\nremedies available.\n\n     8.11 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 \n\n                                       5\n\n \nbe changed and interpreted so as to best accomplish the objectives of such\nprovision or portion thereof within the limits of applicable law.\n\n     8.12 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 \nIN WITNESS WHEREOF, the parties have executed this Agreement as of the\n\n\n \nCONCENTRIC NETWORK CORPORATION           NETSCAPE COMMUNICATIONS CORPORATION\n\n \nBy: \/s\/Henry R. Nothhaft                 By: \/s\/ Mike Homer\n   ---------------------------------         ---------------------------------- \nName:  Henry R. Nothhaft                 Name:   Mike Homer\n     -------------------------------           -------------------------------- \nTitle: Pres &amp; CEO                        Title: Senior Vice President Marketing\n      ------------------------------            ------------------------------- \nDate: 6\/23\/97                            Date:  6\/23\/97\n     -------------------------------            -------------------------------\n\n\nExhibit A:  Licensed Netscape Trademarks\n---------\n \nExhibit B:  Titles; Target Language and Geographic Combinations\n---------\n\nExhibit C:  Trademark Guidelines\n---------\n\n                                       6\n\n \n                                   EXHIBIT A\n                          LICENSED NETSCAPE TRADEMARKS\n\nNETSCAPE                 U.S. FEDERAL TRADEMARK REGISTRATION NO. 2,027,552\n\nNETSCAPE VIRTUAL OFFICE\n\n \n                                   EXHIBIT B\n              TITLES; TARGET LANGUAGE AND GEOGRAPHIC COMBINATIONS\n\n\n\n                 Title                   Target Language        Geographic Territory\n---------------------------------------  ---------------  --------------------------------\n                                                     \nNETSCAPE VIRTUAL OFFICE BY CONCENTRIC     [*]              [*]\n\n\n\n[*] Certain information on this page has been omitted and filed separately \nwith the Securities and Exchange Commission. Confidential treatment has been \nrequested with respect to the omitted portions.\n\n\n                                       2\n\n \n                                   EXHIBIT C\n\nTRADEMARK USE GUIDELINES\n\n\nNetscape's Trademark Guidelines are published at the following URL:\n\n     http:\/\/home.netscape.com\/misc\/trademarks.html#trademarks\n\n\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[7174,8328],"corporate_contracts_industries":[9513,9519],"corporate_contracts_types":[9613,9616],"class_list":["post-42931","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-concentric-network-corp","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\/42931","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=42931"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42931"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42931"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42931"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}