Exhibit 10.15
SERVICE MARK LICENSE AGREEMENT
THIS SERVICE MARK AGREEMENT is made on this 17th day of April,
1997 by and between BLUESTONE SOFTWARE, INC., a Delaware corporation (the
"Products Company"), and BLUESTONE CONSULTING, INC., a Delaware corporation (the
"Services Company").
WHEREAS, the Products Company, successor by merger to
Bluestone Consulting Inc., a New Jersey corporation ("Bluestone"), concurrently
with the execution and delivery of this Agreement is transferring its
professional consulting services group to the Services Company, a newly-formed
corporation and an Affiliate (as hereinafter defined) of the Products Company;
and
WHEREAS, it is the desire and intention of the parties that
the Services Company be permitted to use the Licensed Service Marks (as
hereunder defined), subject to the terms and conditions set forth in this
Agreement.
NOW, THEREFORE, for good and valuable consideration, the
receipt and adequacy of which is hereby acknowledged, and intending to be
legally bound hereby, the Products Company and the Services Company hereby agree
as follows:
1. DEFINITIONS. Capitalized terms used but not otherwise
defined herein shall have the meaning ascribed to those terms in the
Contribution and Distribution Agreement dated the date hereof between the
Services Company and the Products Company (the "Contribution Agreement"). As
used in this Agreement, the following terms shall have the following meanings:
"Affiliate" shall mean a person that directly or
indirectly through one or more intermediaries, controls, is controlled by or is
under common control with, the person specified; provided that the Products
Company and the Services Company (after giving effect to the Reorganization)
shall not be deemed to be Affiliates of each other for purposes of this
Agreement.
"Change of Control" shall mean (i) a sale, transfer
or other disposition of greater than fifty percent (50%) of the shares of the
capital stock then outstanding of the Services Company (except if such
transferee is then an Affiliate); (ii) a sale, transfer or other disposition of
greater than fifty percent (50%) of the shares, or all or substantially all of
the assets of the Services Company (except if such transferee is then an
Affiliate); (iii) the merger or consolidation of the Company with or into
another corporation (except an Affiliate), other than a merger or consolidation
of the Services Company in which the holders of the shares of the Services
Company's voting capital stock outstanding immediately before such merger or
consolidation hold greater than fifty percent (50%) of the surviving entity's
voting capital stock after such consolidation or merger.
"Default" has the meaning set forth in Section 8
hereof.
"Services" shall mean any services performed by the
Services Company, including, without limitation, professional consulting
services to those customers involved in GUI, object-oriented, database
technologies and client/server development.
2. LICENSE. The Products Company grants to the Services
Company a non-exclusive, perpetual, worldwide royalty-free license to use the
Licensed Service Marks in connection with the Services under the conditions
herein set forth (the "License"). The Services Company may sublicense such use
of the Licensed Service Marks to any Affiliate of the Services Company upon
obtaining the prior written consent of the Products Company, which consent shall
not be unreasonably withheld, provided that such sublicensee agrees, as part of
such sublicense agreement, to be bound by the terms and conditions of this
Agreement.
3. QUALITY OF SERVICES. The Products Company has previously
examined the nature and quality of the Services offered by the Services Company
in connection with the Licensed Service Marks. Based upon that examination, the
Products Company has determined that the Services currently offered and
performed by the Services Company's predecessor meet the Products Company's
standards of high quality. Any materially adverse changes to the nature and
quality of the Services offered under the Licensed Service Marks proposed by the
Services Company must be approved by the Products Company in writing as a
condition precedent to the Services Company implementing and offering such
changes to the Services under the Licensed Service Marks.
4. INSPECTION. Every six (6) months, the Services Company
shall provide the Products Company with representative samples of all
literature, packages, labels and advertising bearing the Licensed Service Marks
prepared by or for the Services Company and intended to be used by the Services
Company (the "Licensed Service Marks Materials"). The Products Company shall
have the right to approve or disapprove (which approval will not be unreasonably
withheld or denied, and which disapproval must be reasonable) the use of the
Licensed Service Marks Materials by the Services Company.
5. USE OF LICENSED SERVICE MARKS. Whenever the Services
Company uses the Licensed Service Marks in advertising or in any other manner
in connection with the Services, the Services Company shall indicate the
Products Company's ownership of the Licensed Service Marks with a
registration symbol [ ("(-Registered Trademark-)")]. When using the Licensed
Service Marks under this Agreement, the Services Company undertakes to comply
with all applicable laws in force at any time in the United States.
-2-
6. PRIOR RESTRICTIONS. The assignments, licenses and
sublicenses granted by the parties hereto pursuant to this Agreement are
expressly made subject to any and all prior rights of third parties.
7. OWNERSHIP OF LICENSED SERVICE MARKS. The Services Company
acknowledges that the Products Company owns the exclusive right, title and
interest in and to the Licensed Service Marks, and the Services Company will not
at any time knowingly do or cause to be done any act or thing in any way
impairing or tending to impair any part of such right, title and interest. In
connection with the use of the Licensed Service Marks, the Services Company
shall not in any manner represent that it has any ownership in the Licensed
Service Marks or registration thereof, and the Services Company acknowledges
that neither this Agreement nor the Services Company's use of the Licensed
Service Marks shall create in the Services Company's favor any right, title or
interest in or to the Licensed Service Marks, and all use of the Licensed
Service Marks by the Services Company shall inure to the benefit of the Products
Company. Upon termination of this Agreement, the Services Company and any
Affiliate that has sublicensed the use of the Licensed Service Marks shall
immediately cease all use of the Licensed Service Marks and shall not thereafter
adopt any other designation confusingly similar to the Licensed Service Marks.
8. DEFAULT. The occurrence of any of the following shall
constitute a default ("Default") hereunder:
a. If the Services Company becomes insolvent or makes
an assignment of assets or business for the benefit of creditors, or if a
petition in bankruptcy is filed by the Services Company, or if the Services
Company is adjudicated bankrupt, or if a bill in equity or other proceeding for
the appointment of a receiver or other custodian for the Services Company's
business or assets is filed and consented to by the Services Company, or if a
receiver or other custodian is appointed, or if proceedings for composition with
creditors under any state or federal law is instituted by or against the
Services Company or if the real or personal property of the Services Company is
attached or levied upon by any sheriff, marshall, or constable, and is not
reasonably cured; or
b. If the Services Company fails to comply with any
material provision of this Agreement.
9. TERMINATION.
a. In the event of any Default which, is not cured
within thirty (30) days after receipt of a written "Notice to Cure" thereof from
the Products Company, the Products Company may immediately terminate this
Agreement and the License, in addition to and not in limitation of all other
remedies at law or in equity. Notwithstanding the foregoing sentence, this
Agreement shall immediately terminate automatically in the event of a Default
pursuant to Section 8(a) hereof.
-3-
b. The Products Company may terminate upon thirty
(30) days written notice in the event of a Change of Control of the Services
Company, PROVIDED, HOWEVER, that the Services Company shall have the right, upon
written notice of the exercise of such right, to continue the License for a
period not to exceed one (1) year from the date of the Change of Control.
10. MODIFICATION.
a. Notwithstanding anything in this Agreement to the
contrary, the Products Company retains the right, which right shall be exercised
in the reasonable judgment of the Products Company, to change, alter, modify,
revise, replace or otherwise supplement (each, a "Change") the Licensed Service
Marks. In addition to other reasons which may make such a Change advisable, the
Products Company may do so to update its image, avoid, settle or compromise a
threatened infringement action, avoid the need to commence any such action, or
in response to comments received from the United States Patent and Trademark
Office.
b. In the event that the Products Company determines
to Change the Licensed Service Marks, the Services Company and any Affiliate
that has sublicensed the use of the Licensed Service Marks shall accept, use,
promote and display the Licensed Service Marks as changed (the "New Trademarks")
and shall cease using the Licensed Service Marks which has been changed (the
"Old Trademarks"), and shall take such other action, including corrective
advertising, at the Services Company's expense as may be reasonably required by
the Products Company PROVIDED, HOWEVER, that for a period of nine (9) months
after the date the Services Company receives notice of the Change, the Services
Company may continue to use the Old Trademarks while exhausting its existing
stock of supplies and materials containing the Old Trademarks. Upon notification
by the Products Company, or at such later date if designated by the Products
Company, the New Trademarks shall become the Licensed Service Marks.
c. The Services Company shall provide to the Products
Company two (2) months prior written notice if it intends to abandon any
Licensed Service Mark.
d. The Products Company shall provide to the Services
Company two (2) months prior written notice if the Products Company intends to
abandon any Licensed Service Mark.
11. OTHER MARKS. The Services Company may adopt or license
other trademarks or service marks to use with or without the Licensed Service
Marks in accordance with the terms of this Agreement.
12. CONFIDENTIALITY.
a. PROTECTION OF PROPRIETARY INFORMATION. The parties
hereto shall safeguard against unauthorized use and disclosure all of the
proprietary information, in their possession or which comes into their
possession that is owned by the parties hereto and is not
-4-
subject to confidentiality provisions in a separate agreement. The parties
hereto agree to use the same degree of care that each uses to protect its own
information of a similar nature, but in no event less than a reasonable degree
of care under the circumstances. The obligations not to use or disclose
proprietary information shall survive the termination of this Agreement.
b. EXCEPTIONS TO PROTECTION OF PROPRIETARY
INFORMATION. The parties acknowledge that any item of proprietary information
pursuant to Section 12 shall be excepted from such requirements to the extent
that:
(1) the item or its use is or becomes known
in the trade without the fault of the party claiming the exception;
(2) the item or its use is or becomes
available on an unrestricted basis to the party claiming the exception from an
unaffiliated source that is not under a confidentiality obligation; or
(3) disclosure of the item or its use by any
party is the result of a court or government action; provided that the party
disclosing such item pursuant to this subsection (b) shall provide reasonable
prior written notification to the other parties of such action, and provided
further that disclosure solely pursuant to this subsection (b) shall not release
disclosing party from its obligation otherwise to maintain the item in
confidence unless otherwise permitted by this Agreement.
13. INFRINGEMENT.
a. In the event that the Products Company or the
Services Company becomes aware of actu al or threatened infringement of the
Licensed Service Marks, such party shall promptly notify the other party in
writing. Within thirty (30) days of becoming so aware or receipt of such notice,
as the case may be, the Products Company shall have the right to initiate
actions to resolve the infringement at its sole cost and expense. The Services
Company shall have the right to participate in any such infringement action at
its own expense. If the Products Company does not initiate actions to resolve
the infringement within the above thirty (30) days, then the Services Company
shall have the right to initiate actions to resolve the infringement at the
Services Company's sole cost and expense.
b. In the event that the Products Company or the
Services Company becomes aware of any actual or threatened trademark
infringement action against the Products Company or the Services Company or any
permitted sublicensee involving the use of the Licensed Service Marks, such
party shall promptly notify the other party in writing. Within thirty (30) days
of becoming aware or receipt of such notice, as the case may be, the Products
Company shall have the right to defend and control the defense of such action
and take such other actions to resolve the matter on reasonable terms and
conditions as may be appropriate at the Products Company's expense. The Services
Company shall have the right to participate in any such action at its own
expense. If the Products Company elects not to defend and control a defense of
such
-5-
action, then the Services Company shall have the right to defend and control
defense of such action at the Services Company's expense.
c. Both parties shall provide full cooperation with
the other party at all times in connection with any infringement action pursuant
to this Section 13, including being named as a party to the action, if
necessary. If only one party is participating in such action, then the other
party's cooperation shall be at such other party's sole expense.
14. ASSIGNMENT. The provisions of this Agreement shall be
binding upon and inure to the benefit of the parties hereto and their respective
successors and assigns; provided that no party may assign, delegate or otherwise
transfer any of its rights or obligations under this Agreement without the
consent of the other party hereto, except that either party may assign its
rights to an Affiliate hereunder.
15. NOTICE. All notices, requests, demands and other
communication hereunder shall be in writing and shall be deemed to have been
duly given if personally delivered, if sent by facsimile transmission (with
confirmation postmarked on the same day), if sent by overnight courier service
or, if mailed, when mailed by United States first-class, certified or registered
mail, postage prepaid, to other party at the following addresses (or at such
addresses as shall be given in writing by any party to the other):
If to the Products Company, to:
Bluestone Software, Inc.
1000 Briggs Road
Mount Laurel, NJ 08054
Fax: (609) 727-3833
Attention: Mr. Mel Baiada, President
If to the Services Company, to:
Bluestone Consulting, Inc.
1000 Briggs Road
Mount Laurel, NJ 08054
Fax: (609) 727-3833
Attention: Mr. Thomas Ballezzi, Chief Operating Officer
16. WAIVER AND AMENDMENT. No waiver by any party to this
Agreement of any breach or Default shall be effective unless the same shall be
in writing and signed. No waiver by any party of any breach or Default shall be
construed to constitute a waiver of, or consent to, the present or future breach
or Default of any other term or provision hereof. No alteration, amendment or
modification of this Agreement shall be effective or binding to any extent
whatsoever except by an instrument in writing and signed by both of the parties
hereto.
-6-
17. ENTIRE AGREEMENT. This Agreement and the Contribution
Agreement constitutes the entire agreement between the parties as to the subject
matter hereto and supersedes all prior agreements or understandings between the
Products Company and the Services Company, whether written or oral.
18. HEADINGS. The headings, titles and subtitles herein are
inserted for convenience of reference only and shall not control or affect the
meaning or construction of any of the provisions hereof.
19. SEVERABILITY. If any provision of this Agreement shall be
deemed to be invalid or unenforceable by any court of competent jurisdiction,
the remaining provisions shall be valid and enforceable and this Agreement shall
be construed as if such invalid or unenforceable provision had never been
contained herein.
20. GOVERNING LAW; JURISDICTION. This Agreement shall be
governed by and construed in accordance with the laws of the State of Delaware.
In connection with any dispute arising between the parties under this Agreement
each party hereto consents to the exclusive jurisdiction and venue of any
federal or state court located in the State of New Jersey and each party waives
any claim, it may have at any time to FORUM NON CONVENIENS with respect to such
venue.
IN WITNESS WHEREOF, the parties hereto have executed this
Agreement as of the date first above written.
BLUESTONE SOFTWARE, INC.
By: /s/ Mel Baiada
------------------------
Name: Mel Baiada
Title: President
BLUESTONE CONSULTING, INC.
By: /s/ Mel Baiada
------------------------
Name: Mel Baiada
Title: President
-7-