Trademark License Agreement - Platinum Technology Inc. and Platinum Software Corp.
TRADEMARK LICENSE AGREEMENT
This License Agreement (the "License Agreement") is entered into as of
January 14, 1999 (the "Effective Date") by and between PLATINUM technology,
inc., a Delaware corporation with its principal place of business at 1815 South
Meyers Road, Oakbrook Terrace, Illinois 60181 ("PTI"), on the one hand, and
Platinum Software Corporation, a Delaware corporation with its principal place
of business at 195 Technology Drive, Irvine, California, 92618 ("PSC"), on the
other hand.
BACKGROUND
PTI and PSC previously entered into that certain settlement agreement in
August, 1993 (the "1993 Settlement Agreement"), which specified the parties'
respective rights of ownership and use of the mark PLATINUM, and related marks
incorporating the word "Platinum," in connection with the sale of computer
software and related services. Subsequently, disputes arose regarding ownership
and use of the term "Platinum" and related marks. PTI and PSC, concurrently with
this License Agreement, are entering into a Settlement Agreement (the
"Settlement Agreement") and related agreements, in which PTI and PSC have
settled their disputes, PSC has assigned all of its right, title and interest to
the mark PLATINUM and related marks to PTI, and PSC has agreed to terminate its
use of the term "Platinum" in its trade name, corporate name, and as a mark,
except as expressly permitted under the terms and conditions of this License
Agreement. As part of the Settlement Agreement, and in partial exchange for the
consideration provided therein, PTI has agreed to license PSC to use the
trademark PLATINUM (and related marks), only under the terms and conditions set
forth herein.
The parties agree as follows:
1. DEFINITIONS
1.1. "Territory" shall mean the United States and all foreign countries.
Territory is intended to mean worldwide, including all foreign and domestic
jurisdictions.
1.2. "Mark(s)" shall mean any and all trademarks, service marks, designs
or emblems, now existing or hereafter created, and all registrations and
applications for registration therefor, and all reissues, renewals or extensions
thereof.
1.3. "PLATINUM Mark" shall mean the word "Platinum," in any design,
font, and/or style. The term "PLATINUM-Related Mark" shall mean a Mark that
consists of a combination of the PLATINUM Mark with any other words or phrases
(including, without limitation, a Brand Identifier (as defined below), used by
PSC as specified in Schedule B-3 hereto (to be updated by agreement of PSC and
PTI pursuant to Section 5.1 below).
1.4. "Brand Identifier" shall mean a word or phrase that functions as a
trademark and/or brand name for a good or service, which would qualify for
trademark protection and registration without the addition or inclusion of any
other word or words (irrespective of whether
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trademark registration exists or is sought for said word or phrase). A Brand
Identifier may never incorporate the PLATINUM Mark in whole or in part.
1.5. "Trade Name" shall mean a trade name, corporate name, and/or any
name that refers to an entire business, rather than a term used to identify
particular goods or services.
2. LICENSE GRANT
2.1. Licensed Mark. In partial consideration for the terms of the
Settlement Agreement and subject to the terms and conditions set forth in this
License Agreement, PTI grants to PSC a fully paid, royalty free, perpetual,
limited, and non-transferable (except as set forth in Section 9.10 below)
license to use the PLATINUM Mark and PLATINUM-Related Marks within the
Territory, as provided herein.
2.2. PSC's Right To Use PLATINUM Mark. PSC shall have the right to use
the PLATINUM Mark and PLATINUM-Related Marks in connection with the marketing
and sale of PSC's products and services, subject to the terms and conditions set
forth herein.
2.3. PTI's Retained Rights. In their sole discretion, PTI and/or its
subsidiaries, parents, holding entities, affiliates, partners, distributors,
licensees, resellers, joint venturers, and/or related entities (whether such
entities or relationships are now existing or hereafter created)
("PTI-Affiliated Parties" or, individually, "PTI-Affiliated Party") shall have
the absolute and unconditional right to use the PLATINUM Mark and any
PLATINUM-Related Mark without any restriction whatsoever, except that PTI agrees
to not use or license the following marks, which PSC presently uses to market
its products and services: "Platinum SQL," "Platinum ERA," "Platinum for DOS"
and "Platinum for Windows." Subject to the foregoing sentence, PTI and/or any
PTI-Affiliated Party shall have the absolute and unconditional right to license
the use of the PLATINUM Mark, including, but not limited to, licensing to any
party which (a) sells, markets, and/or offers PTI goods or services, and/or (b)
any party who is otherwise affiliated with PTI and/or any PTI-Affiliated Party.
2.4. Trade Name Limitation.
2.4.1. The PLATINUM Mark and any PLATINUM-Related Mark may only
be used by PSC as a trademark or service mark to brand a particular
product or service (subject to the terms and conditions set forth
herein), and not as all or part of a Trade Name. Thus, PSC, its
subsidiaries, parents, holding entities, majority owned affiliates, and
joint ventures in which PSC controls by majority ownership
("PSC-Affiliated Parties" or, individually, "PSC-Affiliated Party") are
not permitted to use the PLATINUM Mark, any part of the PLATINUM Mark,
any PLATINUM-Related Mark, or any word or Mark confusingly similar to
the PLATINUM Mark in their Trade Name (except as provided in Section
2.4.2).
2.4.2. Notwithstanding the above, PTI grants PSC a short-term
license to use the Trade Name "Platinum Software Corporation" for 365
days after the Effective Date of this License Agreement. Promptly
following the Effective Date (with the objective of
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completing the Trade Name changes within 180 days following the Effective
Date), PSC agrees to commence the process of changing its Trade Name, and the
Trade Name of any PSC-Affiliated Party, to remove the PLATINUM Mark therefrom
(except as provided in Section 2.6.2). After PSC and PSC-Affiliated Parties have
changed their Trade Name, they may add the following notations to their new
Trade Names: "(formerly Platinum Software Corporation) or (formerly Platinum
subsidiary name)" for the period remaining in the short-term license under this
paragraph, but under no circumstances longer than 365 days after the Effective
Date of this Agreement. After the 365th day following the Effective Date, PSC
and each and every PSC-Affiliated Party shall be absolutely precluded from using
any Trade Name that includes the PLATINUM Mark, or any confusingly similar
variation thereof. Additionally, PTI grants to PSC permission to use the
Internet domain name "platsoft.com" for 180 days following the Effective Date of
this License Agreement. Thereafter, the obligations of PTI and PSC with respect
to Internet domain names shall be as set forth in Section 7 of that certain
Settlement Agreement between PSC and PTI dated January 14, 1999.
2.5. Limitation on the Manner in Which the PLATINUM Mark Can Be Used.
2.5.1. PSC and any PSC-Affiliated Party shall be barred from ever using
all or part of the PLATINUM Mark alone and/or by itself (in any form), except as
may be provided herein and in the Reseller Agreement being entered into between
PSC and PTI. For any use of the PLATINUM Mark by PSC and/or a PSC-Affiliated
Party, the PLATINUM Mark must be immediately followed by a Brand Identifier
(which, as set forth above, may itself never incorporate the PLATINUM Mark, in
whole or in part).
2.5.2. Notwithstanding the above, for a period of 180 days following the
Effective Date, PSC, PSC-Affiliated Parties and PSC Resellers (as defined below)
may continue to use existing sales, marketing, promotional and packaging
materials (whether in hard copy form or contained on the party's web site) which
do not comply with the guidelines specified in this Section 2.5 for the purposes
of exhausting existing supplies of collateral materials.
2.5.3. PSC shall only be permitted to use the PLATINUM Mark either (a)
in connection with a specific product or service, or (b) in connection with a
brand or line of products or services. In the case of a specific product or
service, the PLATINUM Mark must immediately be followed by a Brand Identifier
and a product name (e.g., "Platinum ERA Sales Order"). In the case of a brand or
line of products, the PLATINUM Mark must be immediately followed by a Brand
Identifier (e.g., "Platinum ERA").
2.5.4. The first time that the PLATINUM Mark appears in any particular
document or material (e.g., press release, product documentation, Internet page,
marketing brochure), the word Platinum must be immediately preceded or followed
by PSC's then-current Trade Name (eg., "Newco's Platinum ERA" or "Platinum ERA
by Newco"), unless the document or material is clearly identified as being from
PSC by virtue of the conspicuous and prominent display of PSC's then-current
Trade Name in the
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document or material, such that an ordinary consumer would understand and would
not be confused that the source of the goods or services is PSC rather than PTI.
2.5.5. PSC and the PSC-Affiliated Parties may not display the PLATINUM
Mark in connection with any goods or service (or in any other manner), unless
PSC's new Trade Name and any applicable Brand Identifier (none of which shall
incorporate the PLATINUM Mark) also are prominently displayed in the same
material and/or packaging.
2.5.6. PSC and the PSC-Affiliated Parties are expressly prohibited from
using the PLATINUM Mark and any PLATINUM-Related Mark in any way that is likely
to cause confusion among PTI's and/or PSC's customers as to whether PSC's
products originate from or are sponsored, approved and/or authorized by PTI. In
order to avoid such confusion, PSC and the PSC Affiliated Parties shall:
2.5.6. 1. Include, on any and all marketing, promotional, sales,
and/or packaging materials on which the PLATINUM Mark and any
PLATINUM-Related Mark appears or is displayed, a reasonably prominent
statement of origin indicating that the products and/or services are
supplied by PSC, such as "the products in the enclosed package are
produced by Newco Software Corporation.";
2.5.6.2. In the event that PSC becomes aware of such confusion,
it will promptly notify PTI of such confusion, and take all steps
reasonably necessary or useful under the circumstances to eliminate such
confusion (including terminating such confusing use, if necessary),
after obtaining PTI's advance approval of PSC's proposed steps to
eliminate such confusion.
2.5.7. PTI and PSC expressly agree that PSC shall be permitted to use on
PSC's existing goods and services the following marks: "Platinum SQL," "Platinum
ERA," "Platinum for Dos" and "Platinum for Windows." Use of these marks in
connection with PSC's goods and services existing as of the Effective Date will
not constitute breach of this Agreement, notwithstanding the requirements of
Section 2.5.1 or 2.5.3.
2.5.8. PTI and PSC expressly agree that PSC's use of PTI's brand names
in connection with PSC's resale of PTI's products under the Reseller Agreement
shall not constitute a breach of this Section 2.5.
2.5.9. The provisions of this Section apply to use of the PLATINUM Mark
and any PLATINUM-Related Mark in any materials in connection with the sale,
marketing, promotion, and/or support of any good or service by PSC and/or a
PSC-Affiliated Party (including, without limitation, use on the Internet, a
press release, a marketing brochure, and/or a user manual).
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2.6. Sublicenses, Existing International PSC Distributors Using the
PLATINUM Mark in Their Trade Name.
2.6.1. PSC shall have no right to grant any sublicense to use or
re-license the PLATINUM Mark and/or any PLATINUM-Related Mark.
2.6.2. To the extent that any existing international distributor
of PSC products previously has been authorized by PSC to use the
PLATINUM Mark and/or any PLATINUM-Related Mark in its Trade Name, that
distributor shall be listed on Schedule B-1 hereto (the "Existing PSC
Distributors"). PSC shall revoke and terminate any such license or
authorization within 180 days of the Effective Date (unless such action
would be a violation or breach of the agreement with the PSC
Distributor). Notwithstanding the terms of any agreement between PSC and
any PSC Distributor, PSC shall use its best efforts to have each
Existing PSC Distributor remove the PLATINUM Mark and/or any
PLATINUM-Related Mark from its Trade Name. However, to the extent that
PSC is unsuccessful in having an Existing PSC Distributor remove the
PLATINUM Mark and/or any PLATINUM-Related Mark from its Trade Name, the
continued use of the PLATINUM Mark and/or any PLATINUM-Related Mark by
such an Existing PSC Distributor shall not constitute a breach of this
License Agreement, and PTI agrees not to take any action against such
Existing PSC Distributor for use of the PLATINUM Mark and/or any
PLATINUM-Related Mark in its Trade Name. With respect to any
distributorship agreement between PSC and an international distributor
entered into (or renewed) after the Effective Date, all such agreements
shall expressly prohibit the distributor from using the PLATINUM Mark
and/or PLATINUM-Related Mark (in any form) in its Trade Name.
2.6.3. PSC presently has authorized resellers, distributors
and/or partners (the "PSC Resellers") that have existing rights to
either refer to themselves as an authorized "Platinum Reseller" or
similar designation, and/or to identify the PSC products acquired for
resale from PSC under a reseller agreement between PSC and the PSC
Reseller as "Platinum" products or similar designations. No later than
240 days following the Effective Date of this License Agreement, PSC
shall obtain written amendments to any existing agreement with PSC
Resellers which have such provisions: (i) to confirm that PSC Resellers
are no longer authorized to refer to themselves as a "Platinum Reseller"
or similar designation; and (ii) to require that such PSC Resellers
comply with the requirements of Section 2.5 of this License Agreement as
if they were bound thereby. PSC shall use its best efforts to cause the
PSC Resellers to agree to the written amendments and to comply with the
requirements of Section 2.5. It shall not be considered a breach of this
License Agreement, however, if a PSC Reseller refuses to execute such an
amendment or to comply with the terms of Section 2.5, provided that PSC
has undertaken its best efforts to obtain compliance with this Agreement
as required herein. With respect to agreements entered into or renewed
by PSC after the Effective Date, all such reseller agreements regarding
products or services which use a Platinum Mark shall require the PSC
Reseller to comply with the provisions of Section 2.5 of this
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License Agreement and shall expressly prohibit the PSC Reseller to refer
to themselves as an authorized "Platinum Reseller" or similar
designation.
2.6.4. To the extent that any existing international distributor
of PSC products previously has been authorized by PSC to use "platsoft"
in its Internet domain name, that distributor shall be listed on
Schedule B-2 hereto. PSC shall revoke and terminate any such license or
authorization within 180 days of the Effective Date and shall use its
best efforts to have such distributor remove "platsoft" from its
Internet domain name. However, to the extent that PSC is unsuccessful in
having such distributor remove "platsoft" from its Internet domain
name, the continued use of "platsoft" in the Internet domain name by
such distributor shall not constitute a breach of this License
Agreement.
3. PRESERVATION OF THE PLATINUM MARK
3.1. Ownership.
3.1.1. PSC hereby agrees and acknowledges that the PLATINUM
Mark (and any PLATINUM-Related Marks) are valid and enforceable and are
the exclusive intellectual property of PTI, and agrees not to challenge
their validity or PTI's ownership thereof in any form or manner. PSC
expressly agrees to assist PTI in perfecting and/or recording PTI's
ownership of all right, title, and interest in and to the PLATINUM Mark
(and any PLATINUM-Related Marks), whether now or hereafter existing,
including, without limitation, by executing such forms of assignment or
other documentation as may be necessary. PTI will pay for all costs
associated with preparing and recording the assignments, including legal
fees and recording fees. PSC further acknowledges that any use of the
PLATINUM Mark and/or any PLATINUM-Related Marks by PSC not expressly
permitted under this License Agreement will cause irreparable harm and
significant injury to PTI to an extent that may be extremely difficult
to ascertain. Accordingly, PSC agrees that PTI will have, in addition to
any other rights or remedies available to it at law or in equity, the
right to seek injunctive relief, including without limitation, an
injunction against any unauthorized use of the PLATINUM Mark and/or any
PLATINUM-Related Mark by PSC or a PSC-Affiliated Party. PSC expressly
agrees that PTI shall not be obligated to post a bond or other security
in connection with any injunction issued in a proceeding by PTI to
enforce a term of this License Agreement, or any of PTI's rights
hereunder.
3.1.2. Except as otherwise expressly provided in Section 2, no
rights, express or implied, are granted to PSC hereunder, and PTI
reserves all rights in and to the PLATINUM Mark and any and all
PLATINUM-Related Marks, including without limitation the right to use or
to license others to use, the PLATINUM Mark and any PLATINUM-Related
Mark in connection with any products or services or otherwise, except as
provided herein. All goodwill associated with the PLATINUM Mark and any
and all PLATINUM-Related Marks -- including goodwill that results from
PSC's and/or any PSC-Affiliated Party's use (whether authorized or
unauthorized) of the PLATINUM Mark and/or any PLATINUM-Related Mark --
shall remain the exclusive property of
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PTI. Neither PSC nor any PSC-Affiliated Party shall acquire any
ownership rights in the PLATINUM Mark or any PLATINUM-Related Mark (or
the goodwill associated therewith), or any other right adverse to PTI's
interest by virtue of this License Agreement or by virtue of PSC's use
of the PLATINUM Mark.
3.2. Avoidance of Adverse Actions. Neither PSC nor any PSC-Affiliated
Party shall, at any time:
3.2.1. Use the PLATINUM Mark (and/or any PLATINUM-Related Mark)
in any way that may tend to impair its validity as a proprietary Mark
within the Territory;
3.2.2. Take any action that would jeopardize or impair PTI's
ownership of the PLATINUM Mark (and/or any PLATINUM-Related Mark) or its
legality or enforceability;
3.2.3. Directly or indirectly incorporate the PLATINUM Mark
(and/or any PLATINUM-Related Mark) as part of a Trade Name;
3.2.4. Either directly or indirectly, (i) attempt to register
the PLATINUM Mark; (ii) attempt to register (without PTI's prior
consent) a Mark which incorporates the PLATINUM Mark in whole or in
part; (iii) attempt to register any Mark that is confusingly similar to
the PLATINUM Mark or any contraction or abbreviation thereof; or (iv)
use, advertise, or promote any Mark, Trade Name and/or trade dress that
is confusingly similar to the PLATINUM Mark or any contraction or
abbreviation thereof, other than as expressly permitted under this
License Agreement.
4. PROMOTION OF GOODWILL; STANDARDS OF CONDUCT; QUALITY CONTROL
4.1. Compliance with Law. PSC shall comply with all applicable laws,
regulations, standards and decrees of any governmental authorities in the
Territory in connection with the use of the PLATINUM Mark and/or any
PLATINUM-Related Mark and the performance of PSC's rights and obligations under
this License Agreement.
4.2. Quality Control Standards.
4.2.1. PSC shall not take any action and/or shall cease taking
any action that may: (i) Impair the quality of products and services
with which the PLATINUM Mark and/or any PLATINUM-Related Mark is used,
or (ii) In any way disparage the PLATINUM Mark, any PLATINUM-Related
Mark, or PTI's goods and services.
4.2.2. PSC shall use the PLATINUM Mark and/or any
PLATINUM-Related Mark only in connection with goods and services that
are of a nature and quality equivalent or better than the nature and
quality of PSC's current goods and services.
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4.2.3. PSC shall adequately monitor all goods and services
provided in connection with the PLATINUM Mark and/or any
PLATINUM-Related Mark for the purposes of meeting the quality control
standards set forth in this License Agreement.
4.3. PTI's Right to Inspect.
4.3.1. In order to determine whether PSC and/or any
PSC-Affiliated Party is maintaining the quality control standards set
forth herein or otherwise complying with this License Agreement, upon
fifteen (15) business days' prior written notice by PTI, PSC shall: (i)
provide to PTI copies, photographs or representative samples of PSC
and/or any PSC-Affiliated Party's advertising copy, promotional
materials or other materials bearing the PLATINUM Mark and/or any
PLATINUM-Related Mark; (ii) allow PTI to monitor any service provided
under the PLATINUM Mark and/or any PLATINUM-Related Mark in a manner
that does not unreasonably interfere with the business of PSC and (iii)
afford PTI the ability to inspect samples of any products on which the
PLATINUM Mark and/or any PLATINUM-Related Mark appears in a manner that
does not unreasonably interfere with the business of PSC.
4.3.2. PSC shall promptly, but in no event later than forty-five
(45) days notice from PTI, make any changes reasonably requested by PTI
pursuant to the terms of this License Agreement or with respect to the
use of the PLATINUM Mark and/or any PLATINUM-Related Mark or the goods
and/or services related thereto, and will reasonably cooperate with PTI
regarding such requests.
4.4. Expenses. Unless otherwise expressly provided in this License
Agreement, any and all expenses, costs and charges incurred by PSC in the
performance of any of its obligations under this License Agreement shall be
borne and paid for by PSC, without any right of contribution, indemnity, or
reimbursement from PTI.
5. INTELLECTUAL PROPERTY PROTECTION OF THE PLATINUM MARK
5.1. Maintenance of the Registration of the PLATINUM Mark. PTI will have
the right and the obligation to seek, maintain and renew protection for its
existing proprietary and intellectual property rights in the PLATINUM Mark in
any jurisdiction worldwide. Schedule B-3 hereto sets forth all PLATINUM-Related
Marks which PSC currently uses in commerce, and lists all relevant jurisdictions
in which the PLATINUM Mark and each PLATINUM-Related Mark is used and/or
registered as of the Effective Date. PTI will have the obligation to maintain
and renew at PTI's expense (i) any registrations for the PLATINUM Mark in any
applicable jurisdictions, and (ii) existing registrations for any
PLATINUM-Related Marks (excluding "Sequel to Platinum" and "Access to
Platinum"), so long as such marks are used in commerce by PSC. PTI shall
prosecute to completion at PSC's cost and expense all in-process registrations
listed on Schedule B-4 hereto, and thereafter PTI shall maintain and renew
protection for such registrations at PTI's expense, so long as such Marks are
used in commerce by PSC.
5.2. Pending Oppositions To Trademark Registration Filed By PSC. PTI
shall have the right, but not the obligation, to prosecute any pending
oppositions filed by PSC to the
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attempted registration of the PLATINUM Mark (or any variations thereof) by any
third party. Any such oppositions (or analogous proceedings) are set forth
hereto in Schedule B-5. Upon request of PTI, PSC will execute any documents
necessary to substitute PTI as the successor to PSC's interest in any such
proceeding. However, in the event that such a substitution cannot be effected
without an adverse effect on PTI's rights in any such proceeding, PSC will
remain as the named party in any such proceeding (the prosecution, defense,
and/or settlement of which shall be controlled exclusively by PTI and will be
conducted entirely at PTI's expense) but PSC shall assign to PTI at the
conclusion of the proceeding any rights secured thereunder.
5.3. Registration of New PLATINUM-Related Marks. PSC may request that
PTI register with the U.S. Patent and Trademark Office a PLATINUM-Related Mark
not registered (or the subject of a pending application) as of the Effective
Date. PSC's request shall be in writing to PTI, and shall specify the Mark and
proposed goods and/or services to be offered in connection with the Mark; PSC's
use of any such Mark shall be in conformity with this License Agreement. PSC
must obtain PTI's prior written consent to the registration of such a Mark,
which consent shall not be unreasonably withheld. However, under no
circumstances is PSC permitted to register or attempt to register a Mark that is
confusingly similar to any Mark held by PTI (whether or not in use at the time
of PSC's attempted registration), and the parties expressly agree that PTI's
withholding of consent on this basis is reasonable. PSC shall bear all costs and
expenses of obtaining, maintaining, and renewing the registration for Marks
under this provision. In the event any such Marks are registered, Schedule B-3
shall be amended and updated to add those Marks. Any and all Marks registered
under this provision shall be registered for the benefit of PTI and in PTI's
name, and all goodwill from the use of such marks shall be the exclusive
property of PTI.
5.4. Notification of Infringement.
5.4.1. PSC shall notify PTI within twenty (20) days after PSC
becomes aware of (i) any use or registration of any word or phrase,
symbol, logo or design, or any combination of any of the foregoing, that
PSC believes or has reason to believe might constitute infringement of
the PLATINUM Mark and/or any PLATINUM-Related Mark; (ii) any claim of
any rights in the PLATINUM Mark and/or any PLATINUM-Related Mark, or in
any confusingly similar Mark; and/or (iii) any action, publication or
statement that PSC believes or has reason to believe might be adverse or
detrimental to PTI's rights in the PLATINUM Mark and/or any
PLATINUM-Related Mark or which PSC believes or has reason to believe
might dilute or impair the value of the PLATINUM Mark and/or any
PLATINUM-Related Mark.
5.4.2. In any litigation related to the PLATINUM Mark and/or any
PLATINUM-Related Mark, whether brought by or against PSC and/or any
PSC-Affiliated Party, PTI shall have the sole right to control the
prosecution, defense, and/or settlement of any and all claims.
5.5. Use of PLATINUM Mark in Foreign Jurisdictions. In the event PSC
uses the PLATINUM Mark and/or any PLATINUM-Related Mark in a foreign
jurisdiction in which
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neither PSC nor PTI has previously used and/or registered the PLATINUM Mark and
PSC desires to register the PLATINUM Mark and/or any PLATINUM-Related Mark in
such foreign jurisdiction, PSC shall: (i) notify PTI of PSC's use and desire for
registration and shall cooperate with PTI in registering the PLATINUM Mark
and/or any PLATINUM-Related Mark for PTI's benefit and in PTI's name, should PTI
determine to secure such registration; (ii) bear the expense of such a
registration by PTI; (iii) execute any documents necessary to complete the
application for registration; and (iv) in connection with the use of the
PLATINUM Mark and/or any PLATINUM-Related Mark in any foreign jurisdiction,
indicate to consumers PTI's ownership of the PLATINUM Mark. In addition, PTI
agrees to execute any documents necessary to complete the application for
registration as appropriate. PSC shall be responsible for filing registered user
agreements as required in connection with PSC's use of the PLATINUM Mark and
shall bear all costs and fees associated with such filing.
6. DEFENSE AND INDEMNIFICATION
6.1. PSC represents and warrants to PTI that: (i) PSC has not received
notice from any third party (excluding PTI) that PSC's use of the PLATINUM Mark
prior to the Effective Date infringes or misappropriates any trademark, Trade
Name and/or other Mark or other intellectual property right of any third party;
and (ii) to the knowledge of PSC, PSC's use of the PLATINUM Mark prior to the
Effective Date did not infringe upon or misappropriate any trademark, Trade Name
and/or other Mark or other intellectual property right of any third party
(excluding PTI) (except as otherwise provided in Schedule B-6 hereto). The
warranty provided in this Section 6.1 shall expire on the three (3) year
anniversary of the Effective Date.
6.2. PSC shall defend, indemnify, and hold harmless PTI and its
subsidiaries, affiliates, directors, officers, employees, affiliates, agents and
contractors from and against any and all claims, liabilities, damages,
penalties, losses, costs and expenses (including, but not limited to, court
costs, reasonable attorneys' fees, and expert witness fees) ("Claims") arising
out of, or in connection with, any third party claim which results, in whole or
in part, or is claimed to result, in whole or in part, from: (i) any breach by
PSC of the warranty made in Section 6.1; and (ii) any third party claim which
results, in whole or in part, or is claimed to result, in whole or in part, from
any of the following (collectively the "PSC Indemnified Claims"):
6.2.1. Any actual or alleged infringement of any copyright,
patent or claim of patent rights, or any trademark, Trade Name and/or
other Mark, or any other third party intellectual property right,
related to PSC's and/or any PSC-Affiliated Party's use of the PLATINUM
Mark and/or any PLATINUM-Related Mark, except as provided in Section 6.3
below;
6.2.2. Any actual or alleged failure of any of PSC's products or
services sold or marketed under the PLATINUM Mark and/or any
PLATINUM-Related Mark to comply with this License Agreement, any law,
statute, ordinance, administrative order, rule, or regulation in force
in the Territory;
6.2.3. Any breach of this License Agreement by PSC and/or any
PSC-Affiliated Party;
PAGE 10 OF 25
<PAGE> 11
6.2.4. Any actual or alleged failure of any of PSC's products or
services using the PLATINUM Mark and/or any PLATINUM-Related Mark to
function and perform properly, causing any type of injury to customers
or third parties; and
6.2.5. PSC's and/or any PSC-Affiliated Party's use of the
PLATINUM Mark and/or any PLATINUM-Related Mark, except as provided in
Section 6.3 below.
6.3 PSC's obligation to indemnify PTI for a Claim arising under Section
6.2.1 and/or 6.2.5 shall expire on the two (2) year anniversary of the
Effective Date. Thereafter, PTI shall be responsible for defending any third
party Claim of infringement relating to the PLATINUM Mark and/or any
PLATINUM-Related Mark, regardless of whether the Claim relates to the use of the
PLATINUM Mark on PSC's goods or services or PTI's goods or services.
6.4. Except with respect to such matters which are subject to
indemnification under Section 6.1 or Section 6.2, or which result from a breach
by PSC or any PSC-Affiliated Party of that certain Settlement Agreement between
PSC and PTI entered into on January 14, 1999 or that certain Reseller Agreement
between PSC and PTI entered into on January 14, 1999, PTI shall defend,
indemnify, and hold harmless PSC and its subsidiaries, affiliates, directors,
officers, employees, affiliates, agents and contractors from and against any and
all Claims arising out of, or in connection with, any third party claim which
results, in whole or in part, or is claimed to result, in whole or in part, from
any of the following (the "PTI Indemnified Claims"):
6.4.1. Any actual or alleged infringement of any copyright,
patent or claim of patent rights, or any trademark, Trade Name and/or
other Mark, or any other third party intellectual property right,
related to PTI's and/or any PTI-Affiliated Party's use of the PLATINUM
Mark with PTI goods and services;
6.4.2. Any breach of this License Agreement by PTI and/or any
PTI-Affiliated Party; and
6.4.3. Any actual or alleged failure of any of PTI's products or
services using the PLATINUM Mark to function and perform properly,
causing any type of injury to customers or third parties.
6.5. In the event that either PTI or PSC asserts the existence of any
right to indemnity under Sections 6.2 or 6.4 ("Indemnifiable Damages"), such
party ("Indemnitee") shall give written notice thereof to the other
("Indemnitor") of the nature and amount of the Claim asserted promptly, and, in
the case of any claim relating to a third party action, within ten (10) days
prior to the date a response or answer thereto is due, in writing, thereof. The
failure, refusal or neglect of the Indemnitee to notify the Indermnitor within
the time period specified above of any such claim or action shall not relieve
the Indemnitor from any liability which it may have to the Indemnitee in
connection therewith, unless the Indemnitor was prejudiced by such delay, and
then only to the extent of the harm suffered by such delay. After such notice,
if the Indemnitor shall acknowledge in writing to the Indemnitee that the
Indemnitor shall be obligated under the terms of its indemnity hereunder in
connection with such Claim, demand or assessment, then the Indemnitor shall be
entitled, if it so elects at its own cost, risk and expense to: (i) take control
of
PAGE 11 OF 25
<PAGE> 12
the defense and investigation of such lawsuit or action; (ii) employ and engage
attorneys of its own choice, subject to the consent of the indemnified party,
such consent not to be unreasonably withheld, to handle and defend the same
unless the named parties to such action or proceeding include both the
Indemnitor and the Indemnitee and the Indemnitee believes in good faith that (a)
there may be one or more legal defenses available to such Indemnitee that are
different from or additional to those available to the Indemnitor, (b) there is
a potential conflict of interests, or (c) in the case of PTI as the Indemnitee,
Section 5 of this License Agreement would otherwise allow PTI to control the
defense and/or conduct of such proceeding, in which event the Indemnitee shall
be entitled, at the Indemnitor's cost, risk and expense, to separate counsel of
its own choosing; and (iii) compromise or settle such claim, which compromise or
settlement shall be made only with the written consent of the Indemnitee, such
consent not to be unreasonably withheld; provided, however, if the compromise,
settlement or resolution of any such Claim is reasonably expected to have,
individually or in the aggregate, a direct and significant adverse effect on the
Indemnitee's business operations or, in the case where PTI is the Indemnitee, a
direct and significant adverse effect on any rights in the PLATINUM Mark and/or
any PLATINUM-Related Mark, then, notwithstanding the foregoing, the Indemnitee
shall be entitled to control such compromise, settlement or resolution,
including without limitation to take control of the defense and investigation of
such lawsuit or action, to employ and engage attorneys of its own choice to
handle and defend the same, at the Indemnitor's cost, risk and expense, and to
compromise or settle such Claim. In the event that the Indemnitor does not so
assume the defense, conduct or settlement of any Claim, demand or assessment
within thirty (30) days after receiving notice of any Claim relating to a third
party action as set forth above, the Indemnitee shall be entitled to defend,
conduct or settle such Claim, demand or assessment without the written consent
of the Indemnitor and without relieving the Indemnitor from any of the
obligations to indemnify the Indemnitee under Sections 6.2 or 6.4. In the event
of any conflict between the terms of this Section 6.5 and Section 5 as to
control of defense of a Claim, Section 5 shall control.
7. TERM AND TERMINATION OF AGREEMENT
7.1. Term of License. Unless sooner terminated in accordance with the
terms of this Article 7, this License Agreement shall commence on the Effective
Date and remain in full force and effect until the earlier of (a) PSC ceases use
of the PLATINUM Mark in commerce for eighteen continuous months, or (b) PSC
notifies PTI in writing of a decision to stop using the PLATINUM Mark.
7.2. PTI's Right To Terminate Agreement. Notwithstanding any other
provision of this License Agreement, PTI may terminate this License Agreement by
giving written notice of termination to PSC for any of the following reasons:
7.2.1. PSC and/or any PSC-Affiliated Party has failed to comply
with law or has breached any of the provisions of this License
Agreement, or the parties' Settlement Agreement to be executed
concurrently with this License Agreement, and PSC fails to cure such
breach and notify PTI of such cure and the manner of such cure within a
period of sixty (60) days following PTI's notice of breach;
PAGE 12 OF 25
<PAGE> 13
7.2.1.1. In the case of a breach involving or consisting of
the publication, dissemination or use of materials in violation of
Sections 2 or 4 of this Agreement, it shall be a sufficient cure if PSC,
after receiving notice of breach: (i) disseminates a statement of
clarification to all parties who received the violative materials (which
statement shall be approved in advance by PTI); and (ii) takes
reasonable steps to ensure that the offending material is not further
disseminated, published or used, including destruction of the offending
material if practicable, and notifies PTI of the steps that it has
taken. However, the cure procedures of this Paragraph herein shall not
be sufficient after PSC avails itself of the cure procedures of this
Paragraph herein three times during the first year following the
Effective Date, or a total five times during the term of this License
Agreement (including any availment during the first year).
7.2.2. PSC becomes insolvent or if PSC enters into a voluntary
suspension of payments or voluntary or involuntary bankruptcy, makes an
assignment for the benefit of its creditors, has a receiver or trustee appointed
for it or any of its property, adopts a resolution for winding-up or
dissolution, or becomes the subject of any proceedings relating to its
insolvency, suspension of payments, bankruptcy, reorganization, or dissolution
which are not dismissed within sixty (60) days after their commencement;
7.2.3. All or a material part of the assets of PSC are condemned,
expropriated, or otherwise taken over by a governmental authority or are
repossessed, foreclosed upon or otherwise seized by a creditor of PSC;
7.2.4. Except as expressly provided herein, PSC and/or any
PSC-Affiliated Party attempts to register (without the prior written consent of
PTI) the PLATINUM Mark and/or any Mark that incorporates the PLATINUM Mark (in
whole or in part), or asserts or claims ownership or control of the PLATINUM
Mark or any Mark that incorporates the PLATINUM Mark (in whole or in part);
7.2.5. PSC and/or any PSC-Affiliated Party challenges the validity of
the PLATINUM Mark and/or PTI's ownership thereof,
7.2.6. PSC assigns, encumbers, or licenses any of its rights or
delegates any of its obligations under this License Agreement, except as
expressly authorized by Section 9.10.1 herein; and/or
7.2.7. PSC attempts to assign or assigns (whether voluntarily or by
operation of law) this License Agreement, or any rights hereunder, to; merges
with; is acquired by; all or a material part of PSC's assets are acquired by;
and/or all or a material part of PSC's common stock is acquired by any of the
following parties and/or any of their parents, holding companies, affiliates,
divisions, and/or subsidiaries: Computer Associates International, Inc.,
International Business Machines Corporation, Tivoli Systems, Inc., Compuware
Corporation, BMC Software, Inc., Rational Software Corporation, Network
Associates, Inc., Cognos Incorporated, Business Objects S.A., VERITAS Software
Corporation, VIASOFT, Inc., Sterling Software, Inc., and/or Hyperion Solutions
PAGE 13 OF 25
<PAGE> 14
Corporation. PTI shall be entitled to terminate this License Agreement
in the event that PSC enters into a joint venture, partnership, or other
business relationship with any of the foregoing entities and, as part of
such arrangement, either (a) purports to assign any rights under this
License Agreement in connection therewith, or (b) the joint venture,
partnership, or other business relationship relates in any way to use of
the PLATINUM Mark.
7.3. Effect of Termination. Upon any expiration or termination of this
License Agreement for any reason whatsoever, the following provisions shall
apply:
7.3.1. Termination of License. The licenses granted hereunder
shall immediately and automatically terminate, and within a reasonable
period, but in no event more than one-hundred and eighty (180) days
from the date of termination or expiration, PSC and any PSC-Affiliated
Party shall:
7.3.1.1. Cease using the PLATINUM Mark and any and all
PLATINUM-Related Marks;
7.3.1.2. Take action to change the Marks on its products
and services to Marks which do not include the PLATINUM Mark
and/or any PLATINUM- Related Mark and are not similar to, and do
not cause confusion with, the PLATINUM Mark and/or any
PLATINUM-Related Mark;
7.3.1.3. Destroy all advertising, marketing and
promotional materials bearing the PLATINUM Mark and/or any
PLATINUM-Related Mark;
7.3.1.4. Obliterate each and every PLATINUM Mark from,
or destroy, any PSC products and services and any other items
bearing the PLATINUM Mark and/or any PLATINUM-Related Mark;
7.3.1.5. Furnish PTI with evidence reasonably
satisfactory to PTI demonstrating compliance with the foregoing
obligations.
7.3.2. No Compensation. PSC acknowledges and agrees that no
indemnities or compensation of any kind shall be due to PSC as a result
of the termination or expiration of the terms of this License Agreement.
7.4. Survival Of Certain Provisions. The provisions of Sections 3, 6, 8,
and 9 shall survive the termination of this License Agreement for any reason.
8. NO IMPLIED WARRANTIES; LIMITATION OF LIABILITY
8.1. DISCLAIMER OF WARRANTY. EXCEPT AS EXPRESSLY SET FORTH HEREIN (AND
EXCEPT AS MAY BE REQUIRED BY LAW), PTI EXPRESSLY DISCLAIMS ALL REPRESENTATIONS
AND WARRANTIES, EXPRESS OR IMPLIED, IN CONNECTION WITH THE LICENSED MARKS AND
THIS AGREEMENT, INCLUDING,
PAGE 14 OF 25
<PAGE> 15
WITHOUT LIMITATION, ANY IMPLIED WARRANTIES OF VALIDITY, NONINFRINGEMENT,
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. GIVEN THAT PSC ASSIGNED TO
PTI ALL OF THE RIGHTS LICENSED HEREUNDER, PSC EXPRESSLY WAIVES ANY CLAIMS
AGAINST PTI ON THE GROUNDS THAT THE RIGHTS LICENSED HEREUNDER ARE INVALID OR
DEFECTIVE IN ANY WAY.
8.2. LIMITATION OF LIABILITY. EXCEPT FOR BREACHES BY PSC OF SECTIONS
2,3.2,4.1 OR OBLIGATIONS ARISING OUT OF SECTION 6 THAT ARE BASED ON PSC
INDEMNIFIED CLAIMS OR PTI INDEMNIFIED CLAIMS, NEITHER PARTY SHALL BE LIABLE TO
THE OTHER PARTY OR THEIR AFFILIATES, SUCCESSORS OR SUBLICENSEES FOR ANY
INDIRECT, SPECIAL, CONSEQUENTIAL, EXEMPLARY OR INCIDENTAL DAMAGES (INCLUDING
WITHOUT LIMITATION, LOST OR ANTICIPATED REVENUES OR PROFITS RELATING TO THE
SAME) ARISING FROM ANY CLAIM RELATING DIRECTLY OR INDIRECTLY TO THIS AGREEMENT,
WHETHER A CLAIM FOR SUCH DAMAGES IS BASED ON WARRANTY, CONTRACT, OR TORT
(INCLUDING, WITHOUT LIMITATION, NEGLIGENCE OR STRICT LIABILITY). EXCEPT FOR
BREACHES BY PSC OF SECTIONS 2, 3.2, 4.1 OR OBLIGATIONS ARISING OUT OF SECTION 6
THAT ARE BASED ON PSC INDEMNIFIED CLAIMS OR PTI INDEMNIFIED CLAIMS, BOTH PARTIES
ACKNOWLEDGE AND AGREE THAT PAYMENT BY THE DEFAULTING PARTY OR RETENTION BY THE
NON-DEFAULTING PARTY OF DIRECT DAMAGES, AS LIMITED BY THE FOREGOING SENTENCE,
SHALL BE THE NON-DEFAULTING PARTY'S SOLE AND EXCLUSIVE REMEDY IN EXHAUSTION OF
ALL OTHER REMEDIES UNDER THIS AGREEMENT, AT LAW OR IN EQUITY AND THAT SUCH
REMEDY SHALL NOT BE DEEMED OR ALLEGED BY THE NON-DEFAULTING PARTY TO HAVE FAILED
OF ITS ESSENTIAL PURPOSE.
9. GENERAL PROVISIONS
9.1. Choice of Law. This Agreement shall be construed and governed in
accordance with the laws of the State of Illinois and the United States of
America.
9.2. Jurisdiction and Venue. Any dispute regarding this License
Agreement and PTI's, PSC's, and/or any PSC-Affiliated Party's performance
hereunder, shall be subject to the exclusive Jurisdiction of the United States
District Court for the Northern District of Illinois. Each party hereby
irrevocably and unconditionally (a) consents to the jurisdiction of that court
for any such dispute; and (b) waives any objection which such party may have to
the laying of venue of any such dispute in that court. In the event the United
States District Court for the Northern District of Illinois declines
jurisdiction over any dispute relating to the enforcement and/or interpretation
of this Settlement Agreement, any such litigation shall be brought in state
court in Illinois, in the County of DuPage, and the parties hereto expressly
consent to the jurisdiction of that court and waive any objection thereto.
PAGE 15 OF 25
<PAGE> 16
9.3. No Agency. PTI and PSC are acting as independent contractors under
this License Agreement, and neither PSC nor PTI are employees or agents of the
other. Nothing herein is intended to make either party a general or special
agent, legal representative, subsidiary, joint venturer, partner, fiduciary,
employee or servant of the other for any purpose. Neither PSC nor PTI is
authorized or empowered to act as an agent for the other or to enter into
agreements, transact business, or incur obligations for or on behalf of the
other, nor to accept legal service of process for or on behalf of the other, nor
to bind the other in any manner whatsoever. Neither PSC nor PTI shall do or omit
to do anything that might imply or indicate that they are an agent or
representative of the other, or a branch, division, or affiliate of the other,
or that they in any manner, either directly or indirectly, own, control, or
operate the other or are in any way responsible for the other's acts or
obligations. In the event that either party violates this provision, the
violating party shall indemnify and hold the other harmless from any and all
Claims (as defined above) which result from any of the violating party's acts or
omissions, and shall reimburse the non-violating party for any and all
attorneys' fees and expenses (including expert witness fees) that the
non-violating party incurs in its defense of any such Claims.
9.4. Costs And Expenses. Except as otherwise expressly stated herein,
each party will bear its own costs and expenses in connection with this License
Agreement.
9.5. Entire Agreement. This License Agreement, together with all
schedules hereto (which are incorporated herein by this reference) and the
related Settlement Agreement, Trademark Assignment Agreement, and Reseller
Agreement, are intended as the complete, final and exclusive statement of the
terms of the agreement between PSC and PTI with regard to the subject matter
hereof, and supersedes all prior oral and written agreements, understandings,
commitments, negotiations and practices between the parties relating to such
subject matter, including, without limitation, the 1993 Settlement Agreement.
9.6. Amendment and Waiver. None of the terms of this License Agreement
shall be deemed to be waived, modified, and/or amended by either party unless
such a waiver, modification, and/or amendment specifically references this
License Agreement and is in writing signed by the party to be bound.
9.7. Non-Waivers. Any waiver of either party's rights or remedies under
this License Agreement shall be effective only if made in writing signed by an
authorized officer of such party, and no failure or delay by either party in
exercising any right or remedy hereunder nor any custom or course of performance
shall operate as a waiver of any such right or remedy, nor shall any single or
partial exercise or waiver of any right preclude any other or further exercise
thereof or the exercise of any other right or remedy.
9.8. Severability. If any clause or provision of this License Agreement
is declared illegal, invalid or unenforceable under present or future laws
effective during the term hereof, it is the intention of the parties hereto to
reach agreement to terms that will lawfully carry out the intended purpose of
any such clause or provision, and to take such action as may be necessary to do
so. The parties further intend that the remainder of this License Agreement
shall not be affected thereby, and shall remain in full force and effect.
PAGE 16 OF 25
<PAGE> 17
9.9. Notices. All notices required or permitted to be given hereunder
shall be given in writing and shall be sent by prepaid first class registered
air mail, express courier, personal delivery, or facsimile to the following
addresses:
PTI: Larry S. Freedman, Esq.
Vice President and General Counsel
PLATINUM technology, inc.
1815 South Meyers Road,
Oakbrook Terrace, Illinois 60181
Fax: (630) 691-0704
With copies to: Matthew W. Walch, Esq.
Latham & Watkins
Sears Tower, Suite 5800
Chicago, Illinois 60606
Fax: (312) 993-9767
and
Mark A. Flagel, Esq.
Latham & Watkins
633 West Fifth St., Suite 4000
Los Angeles, California 90071
Fax: (213) 891-8763
PSC: Perry Tarnofsky, Esq.
Vice President and General Counsel
195 Technology Drive
Irvine, California 92618
Fax: (949) 450-4447
With a copy to: Julie McCoy Akins, Esq.
Stradling Yocca
Carlson & Rauth
660 Newport Center Drive, Suite 1600
Newport Beach, CA 92660
Fax: (949) 725-4100
In the case of notice by facsimile transmission, notice shall be
confirmed immediately by prepaid courier service (e.g. Federal Express) or U.S.
mail. All notices shall be effective upon receipt when delivered at the address
so specified; provided, however, that any notice sent by mail shall be deemed to
have been received ten (1O) business days after dispatch; any notice sent by
courier shall be deemed to have been received one (1) business day after
dispatch; and any notice sent by facsimile transmission shall be deemed to have
been received when such facsimile is confirmed electronically. Any party may
change the address to which notices are to be sent by so notifying the other
party in writing in the manner provided herein.
PAGE 17 OF 25
<PAGE> 18
9.10. Successors and Assigns.
9.10.1. PSC shall be permitted to assign its right sunder this
License Agreement only in connection with a transaction involving the
merger or consolidation of PSC into another entity or the acquisition of
PSC (or all or substantially all of its assets) by another entity,
provided that the transferee of the Agreement agrees in writing to be
bound by and subject to all of the terms and provisions of this
Agreement. Notwithstanding the foregoing, PSC expressly agrees that
under no circumstances shall this License Agreement, nor any right
hereunder, be assigned (whether voluntarily or by operation of law),
including, without limitation, by merger or acquisition, to any of the
parties identified in Section 7.2.7, and/or any of their parents,
holding companies, affiliates, divisions, and/or subsidiaries,
9.10.2. In the event of a permitted assignment pursuant to this
Section, each and every obligation of PSC shall be assigned along with
any rights of PSC under this License Agreement. Except as set forth in
Section 9. 1 0.1 above (where the consent of PTI is not required), PSC
shall have no right to assign its rights under this License Agreement to
any third party, including, without limitation, an assignment by
operation of law, unless otherwise consented to by PTI in writing. PTI
shall have absolute and sole discretion whether to provide such consent.
9.10.3. The obligations and duties of this License Agreement
shall be binding upon the parties, their successors and assigns
(including, without limitation, any successor to PSQ, and the rights of
this License Agreement shall inure to the benefit of permitted
successors and assigns. The parties expressly agree that PTI shall be
permitted to assign, transfer, and/or encumber this License Agreement,
including assignments, transfers, or encumbrances by operation of law,
to any party, for any purpose, and without exception or limitation,
provided that the transferee agrees in writing to be bound by and
subject to all of the terms and provisions of this Agreement.
9.11. Further Assurances And Cooperation. Each of the parties agrees to
execute and deliver such other documents and to take all such other actions as
any of the other parties, its successors, assigns or other legal representatives
may reasonably request to effect the terms of this License Agreement and the
execution and delivery of any and all affidavits, testimonies, declarations,
oaths, samples, exhibits, specimens and other documentation as may be reasonably
required.
9.12. Confidentiality. This License Agreement and all of its terms shall
be treated as confidential and may not be shown to or discussed with persons or
entities other than those in a privileged setting, or as may be required by law
or regulation or in response to governmental inquiries or legitimate legal
process. In the event that a disclosure regarding this License Agreement or any
of its terms is required (for example, to comply with SEC filing requirements),
the disclosing party shall (a) provide at least fifteen (15) days advance
notice to the non-disclosing party of the intent to disclose; and (b) send the
proposed disclosure to the
PAGE 18 OF 25
<PAGE> 19
non-disclosing party and shall permit non-disclosing party at least ten (1O)
days to review and comment on the proposed disclosure before it is made.
9.13. No Strict Construction. The language used in this License
Agreement shall be deemed to be the language chosen by both parties hereto to
express their mutual intent and no rule of strict construction against either
party shall apply to any term or condition of this License Agreement.
9.14. Counterparts. This License Agreement may be executed in
counterparts, any one of which need not contain the signatures of more than one
party, but all of which, taken together, shall constitute one and the same
agreement.
IN WITNESS WHEREOF, the parties hereto have caused this License
Agreement to be signed by duly authorized officers or representatives as of the
date first above written.
PLATINUM technology, inc. PLATINUM SOFTWARE CORPORATION
By: /s/ LARRY S. FREEDMAN By: /s/ WILLIAM R. PRESER
------------------------------- -------------------------------
Print Name: LARRY S. FREEDMAN Print Name: WILLIAM R. PRESER
----------------------- -----------------------
Title: SENIOR VICE PRESIDENT & Title: EXEC VP PRODUCT DEVELOPMENT
GENERAL COUNSEL & MARKETING
--------------------------- ---------------------------
Date: Date: 01/19/99
----------------------------- -----------------------------
PAGE 19 OF 25
<PAGE> 20
SCHEDULE B-1
EXISTING PSC DISTRIBUTORS
Platinum China, Ltd. (Internet domain name is platsoft.com.hk)
Platinum China Holdings, Ltd.
Platinum Systems (Shanghai) Co., Ltd.
Platinum Russia, Ltd.
ADA Platinum
PAGE 20 OF 25
<PAGE> 21
SCHEDULE B-2
EXISTING PSC DISTRIBUTORS PREVIOUSLY AUTHORIZED
TO USE "PLATSOFT" IN THEIR INTERNET DOMAIN NAME
Platinum China, Ltd., (Internet domain name: [[platsoft.com.hk]])
PAGE 21 OF 25
<PAGE> 22
SCHEDULE B-3
PLATINUM-RELATED MARKS AND RELEVANT JURISDICTIONS
PAGE 22 OF 25
<PAGE> 23
Page 1 of 4
SCHEDULE B-3(A)
PLATINUM SQL
PLATINUM ERA
PLATINUM FOR DOS
PLATINUM FOR WINDOWS
PLATINUM EXPLORER
ACCESS TO PLATINUM
SEQUEL TO PLATINUM
PLATINUM SQL NT
PLATINUM SQL ENTERPRISE
<PAGE> 24
Page 2 of 4
SCHEDULE B-3(B)
Jurisdictions in which PSC has registered the PLATINUM mark
United States Federal Trademark Applications and Registrations
January 14, 1999
-------------------------------------------------------------------------------------
MARK APP. NO. REG. NO. RENEWAL CLASS STATUS
APP. DATE REG. DATE
-------------------------------------------------------------------------------------
PLATINUM EXPLORER 75/535,065 09 Pending.
08/12/98
-------------------------------------------------------------------------------------
PLATINUM ERA 75/488,612 09 Pending.
05/20/98
-------------------------------------------------------------------------------------
PLATINUM 73/662,965 1499288 08/09/08 09 Registered.
05/26/87 08/09/88
-------------------------------------------------------------------------------------
SEQUEL TO PLATINUM 74/184,715 1773457 05/25/03 09 Registered.
07/15/91 05/25/93
-------------------------------------------------------------------------------------
State Trademark Registration
-------------------------------------------------------------------------------------------------
STATE MARK CLASS FILING REG. NO. REG. DATE RENEWAL STATUS
DATE
-------------------------------------------------------------------------------------------------
California PLATINUM 38 05/20/87 084970 10/02/87 10/02/07 Registered.
-------------------------------------------------------------------------------------------------
Foreign Trademark Applications and Registrations
-------------------------------------------------------------------------------------------------
COUNTRY MARK APP. NO. REG. NO. RENEWAL CLASS STATUS
APP. DATE REG. DATE
-------------------------------------------------------------------------------------------------
ARGENTINA PLATINUM 1707912 1656693 01/26/08 9 Registered
10/17/89 01/26/98
-------------------------------------------------------------------------------------------------
AUSTRALIA PLATINUM 504363 A504363 02/07/06 9 Registered
2/7/89 2/7/89
-------------------------------------------------------------------------------------------------
BAHAMAS PLATINUM 13643 13643 10/18/03 9 Registered
10/18/89 10/18/89
-------------------------------------------------------------------------------------------------
BARBADOS PLATINUM N/A 9 Pending
1/9/90
-------------------------------------------------------------------------------------------------
<PAGE> 25
Page 3 of 4
-------------------------------------------------------------------------------------------------
COUNTRY MARK APP. NO. REG. NO. RENEWAL CLASS STATUS
APP. DATE REG. DATE DATE
-------------------------------------------------------------------------------------------------
BRAZIL PLATINUM 816833613 9 Pending
8/14/92
-------------------------------------------------------------------------------------------------
BENELUX PLATINUM 724980 457806 02/07/99 9 Registered
2/7/89 2/7/89
-------------------------------------------------------------------------------------------------
CANADA PLATINUM 632590 447491 09/15/10 N/A Registered
5/24/89 9/15/95
-------------------------------------------------------------------------------------------------
CANADA ACCESS TO 696470 420033 11/26/08 9 Registered
PLATINUM 1/2/92 11/26/93
-------------------------------------------------------------------------------------------------
CANADA SEQUEL TO 696471 440754 03/24/10 9 Registered
PLATINUM 1/2/92 3/24/95
-------------------------------------------------------------------------------------------------
CHILE PLATINUM 175843 402526 2/24/03 9 Registered
ABM 2/24/93 2/24/93
-------------------------------------------------------------------------------------------------
CHINA PLATINUM 960066891 1066102 7/27/07 9 Registered
6/6/96 7/28/97
-------------------------------------------------------------------------------------------------
COLOMBIA PLATINUM 395875 155554 3/28/04 9 Registered
7/12/93 3/29/94
-------------------------------------------------------------------------------------------------
DENMARK PLATINUM 282/90 VR 04/08/04 9 Registered
1/12/90 021871994
4/8/94
-------------------------------------------------------------------------------------------------
EUROPEAN PLATINUM 464651 9 Pending
COMMUNITY 2/17/97
-------------------------------------------------------------------------------------------------
GERMANY PLATINUM A45853/9WZ 1170341 02/08/99 9, 42 Registered
2/8/89 1/3/91
-------------------------------------------------------------------------------------------------
HONG KONG PLATINUM 45491/1989 02175-1992 06/03/10 9 Registered
6/3/89 6/3/89
-------------------------------------------------------------------------------------------------
INDIA PLATINUM 518425 9 Pending
10/16/89
-------------------------------------------------------------------------------------------------
ITALY PLATINUM 47970-C/89 560733 02/14/09 9, 42 Registered
2/14/89 2/17/92
-------------------------------------------------------------------------------------------------
JAMAICA PLATINUM 9/1204 24132 10/25/10 9 Registered
10/28/89 9/27/93
-------------------------------------------------------------------------------------------------
JAPAN PLATINUM 14275/1989 4220633 12/11/08 11 Registered
2/9/89 12/11/98
-------------------------------------------------------------------------------------------------
KOREA PLATINUM 89-2845 199191 08/28/00 39 Registered
2/9/89 8/28/90
-------------------------------------------------------------------------------------------------
MALAYSIA PLATINUM 89/00793 9 Pending
2/11/89
-------------------------------------------------------------------------------------------------
NETH. ANTIL PLATINUM 2/21/90 16587 02/21/00 9 Pending
1/27/92
-------------------------------------------------------------------------------------------------
<PAGE> 26
Page 4 of 4
-------------------------------------------------------------------------------------------------
COUNTRY MARK APP. NO. REG. NO. RENEWAL CLASS STATUS
APP. DATE REG. DATE DATE
-------------------------------------------------------------------------------------------------
NEW ZEALAND PLATINUM 190700 190700 02/07/10 9 Registered
2/7/89 2/7/89
-------------------------------------------------------------------------------------------------
PERU PLATINUM 269414 85441 05/30/05 9 Registered
10/18/89 5/30/90
-------------------------------------------------------------------------------------------------
PHILIPPINES PLATINUM 70614 51041 7/24/11 9 Registered
1/22/90 7/24/91
-------------------------------------------------------------------------------------------------
PORTUGAL PLATINUM 317683 317683 3/5/07 9 Registered
6/11/96 3/5/97
-------------------------------------------------------------------------------------------------
PUERTO RICO PLATINUM 629879 029493 02/06/00 9 Registered
2/6/90 2/6/90
-------------------------------------------------------------------------------------------------
RUSSIA PLATINUM 96709421 9 Pending
7/19/96
-------------------------------------------------------------------------------------------------
SINGAPORE PLATINUM S4525/89 4525/89 07/18/96 9 Registered
7/18/89 7/18/89
-------------------------------------------------------------------------------------------------
SPAIN PLATINUM 1303355 1303355 02/20/99 9 Registered
2/20/89 5/20/91
-------------------------------------------------------------------------------------------------
TAIWAN PLATINUM (78)5518 473168 01/16/00 39 Registered
2/11/89 1/16/90
-------------------------------------------------------------------------------------------------
TRINIDAD PLATINUM 18521 18521 10/17/03 9 Registered
10/18/89 6/30/93
-------------------------------------------------------------------------------------------------
UNITED PLATINUM 1372516 1372516 02/08/06 9 Registered
KINGDOM 02/8/89 6/23/95
-------------------------------------------------------------------------------------------------
VENEZUELA PLATINUM 15431-89 154929-F 02/21/97 50 Registered
1/11/89
-------------------------------------------------------------------------------------------------
ZAIRE PLATINUM 2140/90 2140/90 02/22/00 9 Registered
2/22/90 2/22/90
<PAGE> 27
SCHEDULE B-4
IN-PROCESS APPLICATIONS FOR REGISTRATION OF PLATINUM-RELATED
MARKS AND RELEVANT JURISDICTIONS
PAGE 23 OF 25
<PAGE> 28
SCHEDULE B-4
Pending United States Trademark Applications
January 14, 1999
-------------------------------------------------------------------------------------
MARK APPLICATION NUMBER APPLICATION DATE STATUS
-------------------------------------------------------------------------------------
PLATINUM EXPLORER 75/535,065 08/12/98 Pending.
-------------------------------------------------------------------------------------
PLATINUM ERA 75/488,612 05/20/98 Pending.
-------------------------------------------------------------------------------------
Pending Foreign Trademark Applications
-------------------------------------------------------------------------------------
COUNTRY MARK APPLICATION APPLICATION CLASS STATUS
NUMBER DATE
-------------------------------------------------------------------------------------
BARBADOS PLATINUM N/A 01/09/90 9 Pending
-------------------------------------------------------------------------------------
BRAZIL PLATINUM 816833613 08/14/92 9 Pending
-------------------------------------------------------------------------------------
EUROPEAN PLATINUM 464651 02/17/97 9 Pending
COMMUNITY
-------------------------------------------------------------------------------------
INDIA PLATINUM 518425 10/16/89 9 Pending
-------------------------------------------------------------------------------------
MALAYSIA PLATINUM 89/00793 02/11/89 9 Pending
-------------------------------------------------------------------------------------
RUSSIA PLATINUM 96709421 07/19/96 9 Pending
-------------------------------------------------------------------------------------
<PAGE> 29
SCHEDULE B-5
PENDING OPPOSITIONS BY PSC TO THIRD-PARTY APPLICATIONS FOR REGISTRATION
OF THE PLATINUM MARK (OR VARIATIONS THEREOF)
PAGE 24 OF 25
<PAGE> 30
Page 1 of 3
SCHEDULE B-5
Pending Trademark Oppositions - Foreign
(Not including those filed against Platinum Technology, Inc.)
January 14, 1999
----------------------------------------------------------------------------------------------------
COUNTRY MARK CLASS APPLICATION OWNER STATUS
NO.
----------------------------------------------------------------------------------------------------
Argentina PLATINUM 42 2028069 Paradigm Systems Brasil Comercio E Pending
SOLUTIONS Representacoes LTDA.
----------------------------------------------------------------------------------------------------
Argentina PLATINUM 9 2028070 Paradigm Systems Brasil Comercio E Pending
SOLUTIONS Representacoes LTDA.
----------------------------------------------------------------------------------------------------
Argentina PLATINUM 41 2028071 Paradigm Systems Brasil Comercio E Pending
SOLUTIONS Representacoes LTDA.
----------------------------------------------------------------------------------------------------
Argentina PLATINUM 37 2028072 Paradigm Systems Brasil Comercio E Pending
SOLUTIONS Representacoes LTDA.
----------------------------------------------------------------------------------------------------
Argentina PLATINUM 35 2028073 Paradigm Systems Brasil Comercio E Pending
SOLUTIONS Representacoes LTDA.
----------------------------------------------------------------------------------------------------
Argentina PLATINUM 41 2029524 Paradigm Systems Brasil Comercio E Pending
SOLUTIONS & Representacoes LTDA.
LOGO
----------------------------------------------------------------------------------------------------
Argentina PLATINUM 37 2029525 Paradigm Systems Brasil Comercio E Pending
SOLUTIONS & Representacoes LTDA.
LOGO
----------------------------------------------------------------------------------------------------
Argentina PLATINUM 42 2029526 Paradigm Systems Brasil Comercio E Pending
SOLUTIONS & Representacoes LTDA.
LOGO
----------------------------------------------------------------------------------------------------
Argentina PLATINUM 9 2029527 Paradigm Systems Brasil Comercio E Pending
SOLUTIONS & Representacoes LTDA.
LOGO
----------------------------------------------------------------------------------------------------
Argentina PLATINUM 35 2029528 Paradigm Systems Brasil Comercio E Pending
SOLUTIONS & Representacoes LTDA.
LOGO
----------------------------------------------------------------------------------------------------
Argentina PLATINUM 9 2027204 Paradigm Systems Brasil Comercio E Pending
TECHNOLOGY Representacoes LTDA.
----------------------------------------------------------------------------------------------------
Argentina PLATINUM 35 2027205 Paradigm Systems Brasil Comercio E Pending
TECHNOLOGY Representacoes LTDA.
----------------------------------------------------------------------------------------------------
Argentina PLATINUM 37 2027206 Paradigm Systems Brasil Comercio E Pending
TECHNOLOGY Representacoes LTDA.
----------------------------------------------------------------------------------------------------
Argentina PLATINUM 42 2027207 Paradigm Systems Brasil Comercio E Pending
TECHNOLOGY Representacoes LTDA.
----------------------------------------------------------------------------------------------------
<PAGE> 31
Page 2 of 3
---------------------------------------------------------------------------------------------------------
COUNTRY MARK CLASS APPLICATION OWNER STATUS
NO.
---------------------------------------------------------------------------------------------------------
Argentina PLATINUM 37 2027775 Paradigm Systems Brasil Comercio E Pending
TECHNOLOGY & Representacoes LTDA.
LOGO
---------------------------------------------------------------------------------------------------------
Argentina PLATINUM 42 2027776 Paradigm Systems Brasil Comercio E Pending
TECHNOLOGY & Representacoes LTDA.
LOGO
---------------------------------------------------------------------------------------------------------
Argentina PLATINUM 42 2027777 Paradigm Systems Brasil Comercio E Pending
TECHNOLOGY & Representacoes LTDA.
LOGO
---------------------------------------------------------------------------------------------------------
Argentina PLATINUM 35 2027778 Paradigm Systems Brasil Comercio E Pending
TECHNOLOGY & Representacoes LTDA.
LOGO
---------------------------------------------------------------------------------------------------------
Argentina PLATINUM 9 2027779 Paradigm Systems Brasil Comercio E Pending
TECHNOLOGY & Representacoes LTDA.
LOGO
---------------------------------------------------------------------------------------------------------
Argentina PLATINUM BY 9 2.097.030 Bio Byte SRL Pending
BIO BYTE
---------------------------------------------------------------------------------------------------------
Brazil PLATINUM 9, 16 9282758 Paradigm Systems Brasil Comercio Pending
SOLUTIONS E Representa
---------------------------------------------------------------------------------------------------------
Brazil PLATINUM 9, 16 9282820 Paradigm Systems Brasil Comercio Pending
SOLUTIONS E Representa
---------------------------------------------------------------------------------------------------------
Brazil PLATINUM 9, 16 9282723 Paradigm Systems Brasil Comercio Pending
TECHNOLOGY E Representa
---------------------------------------------------------------------------------------------------------
Brazil PLATINUM 9, 16 9282871 Paradigm Systems Brasil Comercio Pending
TECHNOLOGY E Representa
---------------------------------------------------------------------------------------------------------
Brazil PLATINUM 9 819632040 Platinum Teleinformatica LTDA Pending
---------------------------------------------------------------------------------------------------------
Costa Rica PLATINUM 9 173795 Rivan D.C.R., Sociedad Anonima Pending
---------------------------------------------------------------------------------------------------------
Costa Rica PLATINUM 37 173793 Rivan D.C.R., Sociedad Anonima Pending
---------------------------------------------------------------------------------------------------------
Costa Rica PLATINUM 42 173794 Rivan D.C.R., Sociedad Anonima Pending
---------------------------------------------------------------------------------------------------------
Germany PLATINUM 9, 38, 42 39552578 Gesellschaft Fur Medizinishe Pending
Datenberarbeitung
---------------------------------------------------------------------------------------------------------
Korea PLATINUM 9, 42 96003626 Platinum Korea, Inc. Pending
---------------------------------------------------------------------------------------------------------
Paraguay PLATINUM 9 94003791 Impex Internacional Pending
---------------------------------------------------------------------------------------------------------
Venezuela PLATINUM 9 93012338 Comercializadora Sogul Pending
---------------------------------------------------------------------------------------------------------
<PAGE> 32
Page 3 of 3
Pending Oppositions -- United States
(Not including those filed against Platinum Technology, Inc.)
There are no pending oppositions in the United States. PSC has been monitoring
the following federal trademark applications for potential opposition:
-----------------------------------------------------------------------------------------------
MARK APPLICATION FILING DATE OWNER
NUMBER
===============================================================================================
PLATINUM SERIES 75/536,493 August 14, 1998 Warner Steel Vision, Inc.
-----------------------------------------------------------------------------------------------
WEB PLATINUM 75/410,261 December 23, 1997 Interaccess Co.
-----------------------------------------------------------------------------------------------
PLATINUM PLUS 75/379,958 October 27, 1997 Warner-Elektra-Atlantic Corporation
CERTIFIED
-----------------------------------------------------------------------------------------------
PLATINUM PLUS 75/379,957 October 27, 1997 Warner-Elektra-Atlantic Corporation
CERTIFIED and Design
-----------------------------------------------------------------------------------------------
PLATINUM CONNECT 75/328,597 July 22, 1997 First USA Bank
PLUS
-----------------------------------------------------------------------------------------------
PLATINUM PREMIUM 75/328,594 July 22, 1997 First USA Bank
-----------------------------------------------------------------------------------------------
PLATINUM FIRST 75/328,576 July 22, 1997 First USA Bank
-----------------------------------------------------------------------------------------------
PLATINUM BONUS 75/328,575 July 22, 1997 First USA Bank
-----------------------------------------------------------------------------------------------
PLATINUM CONNECT 75/323,185 July 11, 1997 First USA Bank
-----------------------------------------------------------------------------------------------
PLATINUM OPTION 75/323,184 July 11, 1997 First USA Bank
-----------------------------------------------------------------------------------------------
PLATINUM 16 74/466,347 December 3, 1993 Multiwave Innovation, Inc.
-----------------------------------------------------------------------------------------------
<PAGE> 33
SCHEDULE B-6
EXCEPTIONS TO REPRESENTATION AND WARRANTY OF SECTION 6.1
PAGE 25 OF 25
<PAGE> 34
SCHEDULE B-6
In 1989, PSC learned that a French Company named Platinum S.A. owned French
Registration No. 1,474,026 for the mark PLATINUM on computer software. Further
investigation revealed that Platinum S.A. was formed in March 1988 with the
corporate objective of "edition of vertical software packages, diffusion of
micro computer equipment, and services/advice in advanced techniques." Platinum
S.A.'s software appeared to be designed for the MacIntosh platform. PSC decided
not to file an application for, or use, the PLATINUM mark in France at that
time.
In 1994, PSC investigated Platinum S.A. once again to determine if it was
still using the PLATINUM mark. It learned that Platinum S.A. was operating an
"Apple Center" where it sold and maintained Apple Computers. To date, PSC has
not filed an application for, or used, the PLATINUM mark in France.