EXHIBIT 10.13
LICENSE AGREEMENT
This License Agreement (the "Agreement") is made and entered to be
effective as of the 11th day of March 1999 (the "Effective Date") by and between
HENRY M. ZACHS, an individual who is a citizen of the United States of America
having a business address of 40 Woodland Street, Hartford, Connecticut 06105
("ZACHS"), and ZIPLINK, LLC, a limited liability company organized and existing
under the laws of the State of Delaware, having a primary place of business
address of 900 Chelmsford Street, Lowell, Massachusetts 01851 ("ZIPLINK").
RECITALS
A. ZACHS is the owner of the marks "ZIP", "ZIP DATA", "ZIP
FONE", "ZIPTALK", "ZIP MAIL", "ZIP NEWS", "ZIP WEB", and "JOBLINKS.NET"
(collectively the "ZIP Marks").
B. ZACHS has adopted, acquired, and has consistently and
continuously employed the ZIP Marks as trademarks and service marks for his
various products and communication services.
C. ZACHS has continuously used the ZIP Marks in connection with his
goods and services from his earliest effective date of first use to the present
thereby developing a well known, highly regarded and distinctive family of marks
having substantial goodwill associated therewith.
D. ZACHS has sought and obtained U.S. Trademark or Service Mark
Registrations or has pending U.S. Trademark or Service Mark Applications for all
of the ZIP Marks.
E. ZIPLINK desires to obtain, and ZACHS desires to grant, certain
conditional rights to use the ZIP Marks in connection with certain services
offered and provided by it.
AGREEMENTS
1. INCORPORATION OF RECITALS. The Recitals set forth hereinabove are
hereby referred to, incorporated herein, and made a part of this Agreement by
reference. The parties hereto agree that this Agreement has been entered into
for and in consideration of the provisions contained in said Recitals as well as
those contained in the balance of this Agreement.
2. GRANT OF LICENSE AND PAYMENT.
a. ZACHS hereby grants to ZIPLINK a non-exclusive license for
the ZIP Marks solely in accordance with the use descriptions for each of the ZIP
Marks, as
set forth on Exhibit A attached hereto (the "License"). The License and this
Agreement replace and novate in their entirety any prior contracts or agreements
between the parties with respect to or relating to the ZIP Marks or any of them.
b. ZIPLINK accepts the License on the following terms and
conditions hereinafter set forth in this Agreement, and agrees to pay ZACHS the
amount of One Dollar ($ 1.00) therefor concurrent with its execution hereof. o
c. ZIPLINK hereby acknowledges and agrees that this Agreement
is made without any representation or warranty by ZACHS as to the absence of
litigation or adverse claims with respect to the ZIP Marks or any of them.
(1). In the event of any monies realized from the
resolution of claims against others by reason of any alleged improper or
unauthorized use of the ZIP Marks or any of them, then such monies will be paid
to and solely inure to the benefit of ZACHS. Effective as of September 8, 1998,
ZACHS will be solely responsible for any attorneys' fees and costs paid or
incurred in the defense of the ZIP Marks or any of them.
(2). In the event of any monies realized from the
resolution of claims against others by reason of any alleged improper or
unauthorized use of the mark "ZIPLINK", such monies will be paid to and solely
inure to the benefit of ZIPLINK. Effective as of September l, 1997, ZIPLINK will
be solely responsible for any attorneys' fees and costs paid or incurred in the
defense of the mark "ZIPLINK".
d. ZACHS agrees and covenants that he will not grant any other
licenses for the ZIP Marks or any of them without the prior written consent of
ZIPLINK.
e. Following a final and non-appealable judgment, settlement,
or other resolution of any and all pending litigation involving any of the ZIP
Marks in which ZACHS and/or ZIPLINK are parties, ZIPLINK will have the right to
purchase from ZACHS the ZIP Marks for a consideration of One Dollar ($1.00);
provided, however, that such right of ZIPLINK will not extend to the ZIP Mark
"ZIP"(Registration No. 2,027, 356 issued on December 31, 1996). Following the
merger of the License with the purchase by ZIPLINK of the ZIP Marks other than
the ZIP Mark "ZIP", then the ZIP Mark "ZIP" will continue to be licensed by
ZACHS to ZIPLINK pursuant to all of the terms and conditions of this Agreement,
including, but not limited to Paragraphs 3(a) and 3(b) herein, and the License
for the ZIP Mark "ZIP" will become as of the closing of such purchase exclusive
as to ZIPLINK only for the use description related thereto, as set forth on
Exhibit A attached hereto.
3. OWNERSHIP OF THE ZIP MARKS.
a. ZIPLINK acknowledges (i) the validity of each of the U.S.
Trademark and Service Mark Registrations and Applications set forth in Exhibit B
attached hereto; and (ii) that ZACHS is the exclusive owner of all right, title,
and interest
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in such Registrations and Applications, the services and products associated
therewith, and all good will flowing therefrom.
b. ZIPLINK agrees that (i) nothing in this Agreement will
confer upon it any right, title, or interest in the ZIP Marks other than the
right to use the ZIP Marks in accordance with this Agreement, (ii) its use of
the ZIP Marks in accordance with this Agreement does and will inure to the
benefit of ZACHS, (iii) it will not, directly or indirectly, attack or assist or
act in concert with others to attack the title of ZACHS to the ZIP Marks or any
of them, their validity, any of such Registrations or Applications, and/or this
Agreement.
4. QUALITV STANDARDS AND MAINTENANCE; INDEMNIFICATION.
a. ZACHS will have the right to (i) inspect, examine, and
approve all products and services offered by or the direction of ZIPLINK in
connection with which any of the ZIP Marks are used; and (ii) examine and
approve the manner in which ZIPLINK uses the any or all of the ZIP Marks in
order to insure proper usage thereof.
b. If ZACHS objects to the manner of ZIPLINK'S usage of any of
the ZIP Marks, then, within ninety (90) days after its receipt of written
notification of such an objection by ZACHS, ZIPLINK will submit to ZACHS for his
approval a written recommendation for a different manner of usage. If ZACHS does
not provide written his approval to ZIPLINK fourteen (14) days of his receipt of
such written recommendation or if ZACHS declines his approval of such written
recommendation within such fourteen (14) day period of time and ZIPLINK
resubmits within ten (10) days thereafter a second written recommendation to
ZACHS and no written approval is thereafter forthcoming from ZACHS within a
fourteen (14) day period of time following his receipt of the second written
recommendation of ZIPLINK, then ZIPLINK will refrain from the manner of usage
objected to by ZACHS.
c. To the extent he has deemed necessary, ZACHS has inspected,
examined, and evaluated the products and services presently being provided by
ZIPLINK under other marks, and approves of the nature and quality of such
products and services and the manner in which those other marks associated
therewith have been and are being used. The quality of those products and
services and manner of use of such other marks will be considered as the
standard of quality for all future products and services to be offered by or at
the direction of ZIPLINK under the ZIP Marks (the "Standard of Quality").
ZIPLINK agrees it will (i) comply with all applicable laws and regulation and
obtain appropriate government approvals pertaining to the offering, sale,
distribution, and advertising of products and services used in connection with
any of the ZIP Marks; and (ii) maintain the Standard of Quality on all such
products and services. If any changes are made by ZIPLINK in the Standard of
Quality, it will immediately inform ZACHS in writing of any and all such
changes.
d. ZACHS will be the sole judge of whether or not ZIPLINK has
met
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or is meeting the Standard of Quality. ZIPLINK agrees to allow ZACH's authorized
agents to enter ZIPLINK'S premises at any time during regular business hours
whenever necessary in order for ZACHS to inspect the quality of the products and
services being provided by or at the direction of ZIPLINK under any of the ZIP
Marks.
e. ZIPLINK will indemnify, defend, and hold ZACHS harmless
from any claim, liability, loss, or damage to any third party or property,
including, but not limited to, consequential damages or losses, warranty claims,
product liability claims, and/or damages arising out of an action for strict
liability in tort as well as the attorneys' fees and costs of ZACHS associated
with or incurred as part of any such claim, liability, loss or damage arising
from (i) defects in any products or services provided by or at the direction of
ZIPLINK under any of the ZIP Marks; or (2) the exercise by ZIPLINK of its rights
under the License.
5. TERM AND ASSIGNMENT.
a. The License and this Agreement will commence on the
Effective Date, and will continue in force and effect unless terminated in
accordance with the provisions of paragraph 6 herein.
b. ZIPLINK may not assign or transfer the License or this
Agreement without the prior written consent of ZACHS, and any such assignment or
transfer without such written consent will be null and void; provided, however,
ZIPLINK may without the prior written consent of ZACHS freely assign and
transfer the License and this Agreement to ZipLink, Inc., a Delaware Corporation
that is affiliated with or the successor to ZIPLINK (the "Corporation"), in
which case ZIPLINK and the corporation will become jointly and severally liable
for the obligations of ZIPLINK hereunder.
c. The License and this Agreement will be freely assignable by
ZACHS without the prior consent of ZIPLINK.
6. TERMINATION OF THE LICENSE.
a. ZIPLINK will be deemed to be in default of the License and
this Agreement if (i) it applies for or consents to the appointment of a
receiver, trustee, liquidator, or custodian of itself or of all or a substantial
part of its property; (ii) it commences a voluntary case or other proceeding
seeking liquidation, reorganization, or other relief with respect to itself or
its debts under any bankruptcy, insolvency, or other similar law now or
hereinafter in effect, consents to any such relief or to the appointment of or
the taking possession of its property by any official in an involuntary case or
other proceeding commenced against it, or such a proceeding or case is brought
involuntarily against ZIPLINK, and, in any event, such case or proceeding is not
dismissed or discharged within thirty (30) days of commencement; (iii) it ceases
to be an operating business entity; and/or (iv) it fails to perform or comply
with any of the terms and conditions of the License and/or this Agreement. With
respect to the latter circumstance,
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ZIPLINK will not be deemed to be in default of the License and/or this Agreement
if it has first received written notice from ZACHS specifying in detail the
nature of the default, and ZIPLINK fully cures such default within ten (10) days
of the date of its receipt of written that notice. In the event of a default by
ZIPLINK that is not so cured, then the License and this Agreement will terminate
upon the expiration of such cure period.
b. Upon the effective date of the termination of the License
and this Agreement, ZIPLINK agrees to (i) forthwith discontinue all use of the
ZIP Marks, and thereafter will no longer use or have the right to use any of the
ZIP Marks, any variation thereof, or any word or figure similar thereto; and
(ii) to continue to fully abide by the provisions of Paragraphs 3(a) and 3(b)
herein that will survive any such termination.
7. GENERAL PROVISIONS.
A. The term "Agreement", will include (i) each of the Exhibits
hereto; and (ii) any future written amendments, modifications, or supplements
made to this Agreement that are in a writing executed by all of the parties.
B. The term "Paragraph" or "Paragraphs" refers to the
paragraph or paragraphs of this Agreement. The titles and subtitles used herein
are not a part of this Agreement, are included solely for convenient reference
to the Paragraphs hereof, and have no bearing upon the various terms and
conditions hereof.
C. This Agreement will inure to the benefit of and be binding
upon the parties hereto and their respective heirs, successors, assigns, and
legal representatives.
D. If any provision of this Agreement, or the application
thereof, is for any reason and to any extent deemed invalid or unenforceable,
then the remainder of the Agreement and application of such provision to other
persons or circumstances will be interpreted so as to reasonably effect the
intent of the parties hereto. The parties will replace any such invalid or
unenforceable provision of this Agreement with a valid and enforceable provision
that will achieve, to the maximum extent possible, the economic, business, and
other purposes of the invalid or unenforceable provision.
E. The failure of either party at any time to require
performance by the other party of any provision hereof will not affect in any
way the full right to require such performance at any time thereafter. The
waiver by either party of a breach of any provision herein will not be taken or
held by the other party to be a waiver of the provision itself unless such a
waiver is in writing.
F. Nothing herein will be construed to place the parties in
the relationship of partners or joint venturers, and neither party will have the
power to obligate or bind the other in any manner whatsoever.
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G. This Agreement will be deemed to be made and entered into
in the State of Connecticut.
H. The validity, interpretation, and performance of this
Agreement will be controlled by and construed under the laws of the State of
Connecticut; provided, however, that this Agreement will be given a fair and
reasonable construction in accordance with its terms and without any
construction in favor of or against either party.
I Any notice, request, demand, or other communication required
or permitted hereunder will be in writing, communication charges prepaid, and
will be sent to the party to be notified by overnight courier service with
package tracking capability. All communications will be deemed given when
received. The addresses of the parties for the purposes of such communication
are:
ZACHS:
Mr. Henry M. Zachs
40 Woodland Street
Hartford, Connecticut 06105
ZIPLINK:
ZIPLINK, LLC
900 Chelmsford Street
Lowell, Massachusetts 01851
A party may change its address for the purposes of communication under this
Agreement only by giving written notice to the other parties in the manner
specified in this Paragraph 7(i) in which case this Agreement will be deemed to
have been so modified.
J. This Agreement may be executed in counterparts, and each
counterpart will have the same force and effect as an original and will
constitute an effective, binding agreement on the part of each of the
undersigned.
K. THE PARTIES AGREE THAT THIS AGREEMENT IS THE COMPLETE AND
EXCLUSIVE STATEMENT OF THE RELATIONSHIP BETWEEN THEM WITH RESPECT TO THE ZIP
MARKS, AND SUPERSEDES ALL PRIOR OR CONTEMPORANEOUS PROPOSALS AND/OR CONTRACTS
BETWEEN THEM, ORAL OR WRITTEN, UNDERSTANDINGS, REPRESENTATIONS, CONDITIONS,
WARRANTIES, COVENANTS, AND ALL OF THE COMMUNICATIONS BETWEEN THE PARTIES
RELATING TO THE SUBJECT MATTER OF THIS AGREEMENT. THIS AGREEMENT MAY NOT BE
EXPLAINED OR SUPPLEMENTED BY ANY PRIOR COURSE OF DEALlNGS OR PERFORMANCE BETWEEN
THE PARTIES OR BY TRADE CUSTOM OR USAGE.
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Executed to be effective as of the Effective Date.
HENRY M. ZACHS ZIPLINK, LLC
s/Henry M. Zachs By: s/Christopher W. Jenkins_
Henry M. Zachs [Print Name and Title]
Dated: 3/11/99 Dated: 3/11/99
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EXHIBIT A
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ZIP -- Services for and related to the providing of on-line electronic
communications services over a global computer network through an Internet
service provider.
ZIP DATA -- Services for and related to the providing of on-line electronic
communications, telephone, wireless (e.g., cellular, PCS, and two-way), voice
and auditory messaging, and/or data transmission services over a global computer
network through an Internet service provider.
ZIP FONE -- Services for and related to the providing of on-line electronic
communications, telephone, wireless (e.g., cellular, PCS, and two-way), voice
and auditory messaging, and/or data transmission services over a global computer
network through an Internet service provider.
ZIPTALK -- Services for and related to the providing of on-line electronic
communications, telephone, wireless (e.g., cellular, PCS, and two-way), voice
and auditory messaging, and/or data transmission services over a global computer
network through an Internet service provider.
ZIP MAIL -- Services for and related to the providing of on-line electronic
communications, telephone, wireless (e.g., cellular, PCS, and two-way), voice
and auditory messaging, E-mail, and/or data transmission services over a global
computer network through an Internet service provider.
ZIP NEWS -- Services for and related to the providing of on-line electronic
communications, telephone, wireless (e.g., cellular, PCS, and two-way), voice
and auditory messaging, local and national news and events, E-mail, and/or data
transmission services over a global computer network through an Internet service
provider.
ZIP WEB -- Services for and related to the providing of on-line electronic
communications, telephone, wireless (e.g., cellular, PCS, and two-way), voice
and auditory messaging, local and national news and events, electronic mail,
and/or data transmission services electronically over a global computer network
through an Internet service provider, and the design and hosting of sites on
such a global computer network.
JOBLINKS.NET -- [DESCRIPTION TO BE PROVIDED]
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EXHIBIT B
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ZIP Reg. No. 2,027,356 Issued 12/31/96
ZIP DATA Reg. No. 2,175,284 Issued 07/21/98
ZIP FONE Reg. No. 2,178,838 Issued 08/04/98
ZIPTALK Reg. No. 2,180,955 Issued 08/11/98
ZIP WEB Serial No. 75/015,912 Filed 11/07/95
ZIP NEWS Serial No. 75/012,181 Filed 10/30/95
ZIP MAIL Serial No. 75/001,081 Filed 10/03/95
JOBLINKS.NET Serial No. 75/474,777 Filed 04/27/98
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