License Agreement - Lamaze International Inc., Lamaze Publishing Co. and iVillage Inc.
LICENSE AGREEMENT AMONG LAMAZE INTERNATIONAL, INC.
LAMAZE PUBLISHING COMPANY, AND IVILLAGE INC.
LICENSE AGREEMENT made this 8 day of September 2000, and effective beginning as
of July 1, 2000, among Lamaze International, Inc., an educational, non-profit
organization having its principal offices at 2025 M Street, Suite 800,
Washington, D.C. 20036-3309 (herein referred to as "LI"), Lamaze Publishing
Company, a corporation of the State of Delaware, having its principal place of
business at 9 Old Kings Highway South, Darien, Connecticut 06820 (herein
referred to as "LPC") (where LPC is the successor to Lamaze Publishing Company,
Inc., a Connecticut corporation) and iVillage Inc., a corporation of the State
of Delaware having its principal place of business at 512 Seventh Avenue, New
York, New York 10018 (herein referred to as "iVillage"),(LPC and iVillage being
hereafter referred to on occasion collectively as "LICENSEE.")
WHEREAS LI and LICENSEE desire to enter into a new license agreement that
supercedes and replaces the prior agreements between LI and LPC, those prior
agreements being identified on Schedule A hereto; and
WHEREAS LICENSEE desires to continue to utilize those names and marks containing
the word LAMAZE (as specified on Schedule B hereto), pursuant to this new
License Agreement, in connection with the products and services specified
herein, and as specified in any future agreements among the parties;
WHEREAS, LI desires to license the Licensed Marks hereunder, and goodwill
associated therewith, strictly in accordance with the terms and conditions
herein, recognizing that such terms and conditions are imposed to preserve the
quality and integrity of the Licensed Marks and the goodwill associated
therewith;
WHEREAS, it is LI's intent to further disseminate its educational message
through this Agreement, and in furtherance of such purpose, LI desires to
provide the educational consulting services required herein; and
WHEREAS LI owns all right, title and interest in and to the Licensed Marks on a
worldwide basis, such marks and names being well known and recognized by the
general public mind with LI, and it being on record accordingly in the United
States Patent & Trademark Office; and
WHEREAS the parties wish to develop a licensing arrangement respectful of the
history, tradition and mission of LI,
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NOW, THEREFORE, in consideration of the premises and mutual Agreements herein
contained, the parties agree with each other as follows:
1. DEFINITIONS.
a. "Territory" as used herein means the entire world.
b. "Net Sales" as used herein means actual advertisement revenue
and other revenues (and the value of barter consideration as determined by IRS
rules) received by LICENSEE for or from Licensed Products, less returns,
discounts,actual commissions (which shall not exceed 15% in any case), bad debts
arising from sale of Licensed Products, and sales taxes.
c. "Affiliate" as used herein means an entity that is controlled
by, or controls, either directly or indirectly, a party to this Agreement. For
purposes of this Agreement, a controlling interest is evidenced by control of
40% or more of the voting stock or interest in an entity, either directly or
indirectly.
d. "Authorized Affiliates of LICENSEE" as used herein means
Affiliates of LICENSEE except those Affiliates that have substantial business
interest in infant formula, tobacco, firearms, pharmaceuticals, alcohol or
pornography.
e. "Licensed Field" as used herein means consumer oriented
publications in Media which publications either bear advertising or are revenue
generating or otherwise commercial in nature.
f. "Licensed Marks" as used herein means those Lamaze Marks set
forth in Schedule B hereto, and all registrations or applications for
registrations associated therewith anywhere in the world. No other marks shall
be added to the Licensed Marks without the prior written consent of LI, which
consent shall not be unreasonably withheld in the case of additional Licensed
Markes to be used with a new Licensed Product approved by LI hereunder, in which
event such additional Licensed Mark shall be added to an amended Schedule B
which shall be signed by all parties hereto and attached to this Agreement.
g. "Joint Venture" as used herein means a joint venture entity in
which LICENSEE, owns or controls, either directly or indirectly, at least 25% of
the interest of such joint venture.
h. "Licensed Products" as used herein means products developed,
manufactured, sold or distributed by LICENSEE in the Licensed Field, which
products use any of the Licensed Marks. Use of the Licensed Marks in this regard
shall be use either as
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a mark or other source identifier (but not fair use of a Licensed Mark), or use
which reasonably conveys the commercial impression of affiliation with goods
and/or services of LI.
i. "Media" as used herein includes print, onserts, programs,
electronic, video, visual, audio, computer, internet, broadband, computer
software magnetic and optical media.
j. "Infant and Maternity Field" as used herein means those infant
and maternity products set forth in Schedule F hereto and in which LI grants
LICENSEE right of first refusal under Section 11 herein.
2. GRANT OF LICENSE.
a. LI grants to LICENSEE and Authorized Affiliates of LICENSEE,
for the term of this Agreement, the sole and exclusive license to use any of the
Licensed Marks in the Territory in connection with goods or services within the
Licensed Fields, provided that such use shall be fully in accordance with
Schedules D and E hereto and the rest of the terms of this Agreement. Use of
Licensed Marks hereunder by Authorized Affiliates of LICENSEE shall constitute
use by LICENSEE for all purposes under this Agreement. Neither LICENSEE nor any
Authorized Affiliate of LICENSEE shall have any right to use the Licensed Marks
in connection with the Newborn Channel or with any other product which is not a
Licensed Product.
b. LI shall not retain any rights to use or license any of the
Licensed Marks in connection with any goods or services within the Licensed
Field anywhere in the Territory, except as expressly set forth on Schedule C
hereto or Schedule G hereto, or as expressly provided in paragraph 3b below. Nor
shall LI itself use in the Licensed Field, or license others to use in the
Licensed Field, the LAMAZE mark or any mark containing LAMAZE, except as
expressly set forth in Schedule C or Schedule G hereto, or as allowed by
paragraph 3b below. In no event shall LI develop, produce, sell or otherwise
distribute a publication competitive with any of the Licensed Products, except
as allowed by paragraph 3b below.
c. LICENSEE shall also have the right to grant sublicenses to
third parties under the Licensed Marks in connection with Joint Ventures so long
as such Joint Venturers agree to be bound by each of the non-monetary terms of
this Agreement. LICENSEE shall have sole and exclusive discretion in setting any
royalty or other fees in any sublicenses, so long as LICENSEE renders payment
directly to LI in accordance with the royalty rates and other payment provisions
set forth in this Agreement, (said royalties to be based upon "Net Sales," but
substituting "sublicensee" for "LICENSEE" in the definition of the Net Sales for
such purpose). Except as otherwise provided in this paragraph 3c., LICENSEE may
not grant sublicenses to
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others under the Licensed Marks without the prior written consent of LI, which
consent shall not be unreasonably withheld. Breach by a sublicensee of its
agreement to be bound by the non-monetary terms of this Agreement shall
constitute breach by LICENSEE hereunder.
3. COSTS AND RESPONSIBILITIES FOR LICENSED PRODUCTS.
a. Except as expressly stated in paragraph 10, below, with regard
to Indemnification expenses and in paragraph 12, below with regard to Trademark
expenses, it is understood that all costs associated with the development of
services and products by LICENSEE pursuant to this License Agreement shall be
borne by LICENSEE. LI has no responsibilities for any such product costs.
b. Subject to the terms of this Agreement, LICENSEE shall have
sole discretion and control with respect to any and all aspects of Licensed
Products, including development, manufacture, production, sale or distribution.
In no event shall LICENSEE be required under this Agreement to develop,
manufacture, produce, sell or distribute any particular Licensed Product,
subject to LICENSEE's agreement to use commercially reasonable efforts to
promote and distribute at least one Licensed Product within the Licensed Field.
In the event that LI requests that LICENSEE develop and distribute a particular
category of media within the Licensed Field, and LICENSEE declines to do so, or
if LICENSEE abandons for one year or more an existing category of media within
the Licensed Field (or abandons for one year or more the Lamaze Parents Magazine
or any successor thereof), then LI may on an exclusive basis, either by itself
or by license to a third party, develop and distribute such category of media
(or Lamaze Parents Magazine, as the case may be), and any such license shall be
on terms no more favorable to a licensee than are the terms of this Agreement in
any respect. As used in this paragraph the term "category" shall include the
following categories: (i) hard copy magazines; (ii) books;
(iii)CDRoms/video/DVDs/film/disks/computer software; (iv)websites, broadband,
visual or audio broadcast, wireless and digital, and computer and wireless
technology developed after the effective date of this Agreement. In addition, in
the event that LICENSEE abandons for one year or more, use of any or all of the
Licensed Marks containing the words "LAMAZEBABY," "LAMAZE BABY," "LAMAZEFAMILY,"
or "LAMAZE FAMILY" in connection with Licensed Products, the grant of License
under Section 2(a) herein with respect to such abandoned Licensed Mark(s) shall
terminate upon written notice from LI. In the event of termination of the
license grant with respect to such abandoned Licensed Mark(s) pursuant to the
preceding sentence, LI shall not have the right, during the term of this
agreement, to use in the Licensed Field or license others to use in the Licensed
Field any such abandoned Licensed Mark(s). In the event LI chooses to use or
license such abandoned Licensed Mark(s)
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outside the Licensed Field, LICENSEE shall have the right to request that its
license in the Licensed Field for such abandoned Licensed Mark(s) be reinstated
in accordance with the license terms set forth in Section 2, above. In addition,
if LI requests that LICENSEE develop and distribute in Canada any hardcopy
magazine or video in existence on the effective date of this Agreement, and
LICENSEE declines to do so, then LI may on an exclusive basis, either by itself
or by license to a third party, develop and distribute such magazine or video in
Canada, and any such license shall be on therms no more favorable to a licensee
than the terms of this Agreement in any respect.
4. QUALITY CONTROLS AND TRADEMARK USAGE.
a. The development, manufacture, sale or distribution of Licensed
Products shall be in accordance with the Quality Control provisions as set forth
on Schedule D attached hereto. Such Quality Control provisions shall be imposed
in good faith.
b. Advertising and promotion of Licensed Products shall be in
accordance with the Advertising Guidelines attached as Schedule E hereto.
c. LICENSEE agrees to cause an appropriate statutory notice of
trademark registration to be affixed to, imprinted or otherwise associated with
each Licensed Product wherever a federally registered Licensed Mark is used by
LICENSEE. Such notice shall be in accordance with LI Trademark Usage Guidelines
referenced in Schedule D hereto.
LICENSEE agrees to make commercially reasonable efforts to deliver to
LI , prior to use in commerce, samples of Licensed Products upon which such
trademark registration notices is provided for archival purposes and for federal
trademark registration purposes.
d. Within ninety (90) days of each two year anniversary of this
Agreement, either party may provide written notice to the other party of the
desire to convene a performance/royalty review meeting, in order to review the
activities of LICENSEE in connection with the various provisions of this
Agreement including its financial terms, its terms relating to trademarks and
the various quality control and advertising guidelines provided by LI, as well
as other matters. Such review shall include consideration of whether it would be
appropriate to adjust, prospectively, payments to LI in light of the value of
the Licensed Marks and LI's educational consulting services; provided that no
change shall be made to such payments unless both LI and LICENSEE agree to such
change. The parties shall then consult and arrange such a review meeting at a
mutually convenient time and location.
5. PAYMENTS.
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a. LICENSEE agrees to pay LI Two Hundred Thousand Dollars
($200,000.00) as a minimum annual guaranteed royalty payment (herein called
Guarantee) as a non-refundable advance against royalties earned under paragraph
5b of this Agreement, said Guarantee to be adjusted annually to reflect
increases in the Consumer Price Index (Urban) in the previous twelve months. The
Guarantee shall be paid in quarterly annual installments, with the pro rata
payment for the half year period in 2000 for which this Agreement is in effect
to be paid on an quarterly basis on December 1, 2000 and March 1, 2001.
Thereafter, the Guarantee shall be paid on a quarterly basis concurrent with
submission of the periodic statements to LI by LICENSEE pursuant to paragraph 6a
below.
b. LICENSEE agrees to pay LI royalties equal to three percent
(3%) of Net Sales on all Licensed Products in the Licensed Field
c. The Guarantee payments made pursuant to paragraph 5a above,
shall be applied to any royalty payments made pursuant to paragraph 5b.
d. In addition to the royalties under paragraph 5b, LICENSEE
agrees to pay LI an annual editorial fee of $75,000 for the internet and
LAMAZE.com website. In addition, LICENSEE shall pay LI an editorial fee of
$5,000 for each new publication product approved by LI hereunder after the date
this Agreement is signed ( e.g., each new topic issue in a series of custom
publications such as Lamaze Family).
e. Payments pursuant to paragraph 5b and d above shall be
remitted to LI concurrently with each of the quarterly periodic statements
required in paragraph 6, below, deducting from royalty payments any Guarantee
already paid pursuant to paragraph 5a above. Payment shall be by check made out
to the order of Lamaze International, Inc., sent to the following address:
Executive Director, LAMAZE International, Inc., 1200 19th Street, N.W., Suite
300, Washington, D.C. 20036.
6. PERIODIC STATEMENTS.
a. On December 1, 2000, and continuing by every March 1, June 1,
September 1 and December 1 of each year thereafter, LICENSEE will furnish to LI
a statement, certified as to accuracy by an officer of LICENSEE, specifying the
base of Net Sales by product for the most recent calendar year quarter's period.
Such statements shall be furnished to LI whether or not any Licensed Products
have been sold during the quarterly period in question.
b. No more than once any single calendar year, and upon at least
thirty (30) days prior written notice to LICENSEE, LI may have an independent
certified public accountant acceptable
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to both LI and LICENSEE inspect the relevant financial records of LICENSEE to
verify the accuracy of the statements provided to LI pursuant to paragraph 6 a.,
above. In the event that the independent certified public accountant determines
that there has been an error in the payments made by LICENSEE to LI, LICENSEE
shall make any appropriate additional payment within thirty (30) days of receipt
of written notification of the error by LI. All costs relating to the actions of
the independent certified public accountant shall be borne by LI, unless the
actual royalty payment due is determined to be more than 10% above that which
was actually paid by LICENSEE to LI for the calendar quarter in question, in
which case, the reasonable costs of the independent certified public accountant
shall be paid by LICENSEE. The parties agree that the mutually acceptable
independent certified public accountant chosen by the parties to inspect the
relevant financial records will be reviewing confidential information of
LICENSEE and shall not disclose to LI any details concerning the particulars of
the financial records of LICENSEE, other than to advise LI as to whether the
royalty payments made by LICENSEE to LI are correct, and the extent of the error
in the payments made by LICENSEE, if any.
c. LICENSEE agrees to maintain appropriate books and records
relevant to the payments made pursuant to this Agreement for a period of two
years following the period for which the payment was due, including for the two
year period following the expiration or termination of this Agreement.
7. GOODWILL.
LICENSEE recognizes the value of the prestige, publicity and good will
associated with the Licensed Marks and the Lamaze International trade name, and
in such connection, acknowledges that such good will exclusively belongs to LI
and the Licensed Marks and the Lamaze International name have acquired a
secondary meaning in the mind of the purchasing public as to the source of
products and services.
8. SPECIFIC UNDERTAKINGS, REPRESENTATIONS AND WARRANTIES THE PARTIES.
a. LICENSEE represents and warrants that (i) each of the parties
comprising LICENSEE have the unencumbered right to enter into this Agreement,
(ii) all use of the Licensed Marks by LICENSEE shall inure to the benefit of LI,
(iii) LICENSEE will not attack the rights of LI in and to the Licensed Marks,
(iv) LICENSEE will not tarnish, abuse, disparage or bring into disrepute the
Lamaze International name, (v) LICENSEE will ensure that the development of
Licensed Products proceeds in an ethical manner and in accordance with the terms
and intent of this Agreement, and (vi) LICENSEE will use commercially reasonable
efforts to promote at least one Licensed Product
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within the Licensed Field, so long as a license remains in effect for the
Licensed Field.
b. LICENSEE further represents and warrants that it will not
favor the Newborn Channel services or products over the Licensed Products and
that it will not use any of the Licensed Marks in connection with Newborn
Channel or in any other way imply that the source of the Newborn Channel is LI.
c. LI represents and warrants that (i) it has the unencumbered
right to enter into this Agreement, (ii) it is the sole and exclusive owner of
all applications and registrations of the Licensed Marks listed in Schedule B-1,
and the goodwill associated therewith (except to the extent licenses have been
granted by LI to Learning Curve International and AMI, as identified on Schedule
G attached hereto), and (iii) such applications and registrations for the
Licensed Marks are active and valid to the best of LI's actual knowledge. LI
further agrees (iv) to cooperate, consistent with the terms of this Agreement,
in providing content for the website lamaze.com , as requested from time to time
by LICENSEE. At such time as any additional registration(s) may be made for any
of the Licensed Marks in any countries, if such registrations pertain to use in
the Licensed Field, the warranty of LI under this paragraph(c) will be amended
to cover such registrations.
9. TERM AND TERMINATION.
a. The term of this Agreement shall be for fifteen (15) years
from the effective date, subject to the other provisions of this paragraph 9,
and shall be renewable for one additional term of five (5) years thereafter at
the discretion of LICENSEE, provided all material terms of this Agreement shall
have been complied with. LICENSEE shall provide LI of its intent to renew prior
to the expiration of the then existing term of the Agreement. During the final
year of the renewal term (and any renewal term thereof), LI shall negotiate in
good faith with LICENSEE concerning an additional five-year renewal term, and
during such one-year good faith negotiation period, LICENSEE shall have a Right
of First Refusal to match any offer to LI for any license of the Licensed Marks
within the Licensed Field.
b. In the event of any material breach of this Agreement by a
party, the other party may, at its discretion, provide written notice to the
defaulting party of an intent to terminate this Agreement. The defaulting party
shall have a reasonable period of time, the reasonableness determined by the
nature of the Licensed Products involved, in which to cure such default from the
date of such written notice, provided however, that if such default is not cured
within sixty (60) days or one-hundred twenty (120) days if such default can not
reasonably be expected to be cured within sixty (60) days, and LICENSEE is
acting in good faith to try to cure such default from such written notice,
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this Agreement shall be considered terminated, provided further, however, that
where the defaulting party has within the previous twelve (12) months been in
default on two or more occasions and has on each such occasion availed itself of
such cure period, then the parties shall promptly convene a meeting within 10
days of notice of default to agree upon a plan to provide for the prompt cure of
such additional default on an expedited ( i.e., not greater than 60 days) basis.
c. LI may also terminate this Agreement on prior written notice
in the event that LICENSEE tarnishes, abuses or disparages any of the Licensed
Marks, and LICENSEE fails to cease all such tarnishment, abuse or disparagement
within sixty (60) days of receipt of written notice from LI.
d. LICENSEE may, at its sole discretion, terminate this Agreement
upon twelve (12) months prior written notice to LI.
e. If a party files a petition of bankruptcy or if a petition of
bankruptcy is filed against a party, or if a party becomes insolvent, or
otherwise makes an assignment for the benefit of creditors, the other party
shall have the right to provide written notice of an intent to terminate. The
party subject to a bankruptcy petition, or that is insolvent, or that has
otherwise made an assignment for the benefit of creditors, shall then have
ninety (90) days to remedy the situation. The parties acknowledge that the
Licensed Marks are "intellectual property" within the purview of Section 101(56)
of the United States Bankruptcy Code 11 U.S.C. 101-1330 and that this Agreement
is an agreement under Section 365(n) of such Code and that this Agreement shall
be governed by Section 365(n) of such Code in the event that LI files or has
filed against it, a voluntary or involuntary petition in bankruptcy or makes any
arrangement or otherwise becomes subject to any proceeding under the bankruptcy,
insolvency, reorganization or similar laws of the United States or any state.
f. In the event the license granted hereunder is terminated prior
to its expiration due to a material breach by LICENSEE, all payments theretofore
accrued shall become due and payable within thirty (30) days to LI.
g. This Agreement shall also terminate, upon written notice by LI
to LICENSEE, as to a particular Licensed Mark, if LICENSEE fails to use such
Licensed Mark as a trademark in the Licensed Field at a level sufficient to
avoid abandonment of such mark within the particular Licensed Field, provided
LICENSEE shall have sixty (60) days from the date of receipt of such notice to
remedy such non-use.
h. In the event of any termination or expiration of this
Agreement, LICENSEE and all Authorized Affiliates of LICENSEE shall immediately
cease all use of any of the Licensed Marks,
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subject to LICENSEE's rights for a reasonable period of times not to exceed six
(6) months to dispose of existing inventory of Licensed Products, so long as
such inventory does not itself constitute a material breach of this Agreement.
LICENSEE will continue to pay the royalty set forth in paragraph 5b above (but
not the Guarantee (paragraph 5a) or the editorial fees (paragraph 5c)) with
respect to any such inventory that is disposed after termination or expiration
of this Agreement.
10. MUTUAL INDEMNIFICATION.
Each party shall indemnify and hold the other, their respective parent and
affiliated entities and the officers, directors and employees of all of the
foregoing, harmless from and against any and all claims, damages, liabilities,
costs and expenses (including reasonable attorneys' fees and related costs)
arising out of the breach or alleged breach of any representation, warranty or
undertaking set forth in this Agreement made by the indemnifying party.
a. Should any party wish to assert a claim for indemnification,
such party shall do so by promptly notifying the other party in writing of such
claim. Each party shall use its best efforts to provide the indemnitor with
notice of the claim for which indemnification is being sought as soon as
possible in order to minimize the indemnitor's potential liability.
b. The indemnitor shall have the sole and exclusive right to
defend any action resulting from the claim for which indemnification is sought;
provided however, that the indemnified party may, at its election, defend any
such claim or suit on its own behalf and at its own expense; provided further,
however, that no settlement shall be finalized without the prior written consent
of all of the parties, which consent shall not be unreasonably withheld or
delayed.
11. LICENSES OUTSIDE LICENSED FIELD/RIGHT OF FIRST REFUSAL IN INFANT AND
MATERNITY FIELD.
a. In the event that, during the term of this Agreement, LI
desires to license any of the Licensed Marks outside the Licensed Field, LI
shall provide LICENSEE with at least forty-five (45) days prior written notice
of the same, and shall consult with LICENSEE concerning the identity of the
licensee and the plans of the licensee and LI. If LICENSEE so requests, both LI
and LICENSEE shall negotiate in good faith during such forty-five (45) day
period to determine whether LICENSEE can act as licensee under the project in
question.
b. In the event that during the term of this Agreement, LI offers
a license for any of the Licensed Marks to be used in the Infant and Maternity
Field to any entity other than
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LICENSEE, LICENSEE shall have the right of first refusal on such license offer,
on terms at least as favorable as those offered to such other entity, said right
to be exercised within sixty (60) days of delivery to LICENSEE of notice of such
offer.
12. TRADEMARK PROSECUTION COSTS AND INFRINGEMENTS.
a. LICENSEE agrees to pay reasonable costs associated with the
filing and prosecution of trademark applications and registrations in the United
States for the Licensed Marks, but only to the extent such marks relate to
Licensed Products in the Licensed Fields. The parties agree that trademark
counsel for LICENSEE shall be kept informed of significant developments relating
to trademark prosecution of the Licensed Marks, and LI agrees to cooperate with
LICENSEE in connection with the trademark prosecution for the Licensed Marks. LI
agrees to provide LICENSEE with semi-annual status reports regarding any
matters, including trademark filings, involving any of the Licensed Marks.
b. In the event that a third party challenges the validity or
enforceability of any of the rights of LI in any of the Licensed Marks, or in
the event a there is a material infringement or dilution by a third party of any
of the Licensed Marks in the Licensed Fields, LICENSEE may, at its sole
discretion, decline to pay any further trademark prosecution costs incurred
thereafter under Section 12(a) until such time as such third party challenge is
favorably resolved or such infringement or dilution is terminated.
c. With regard to any possible foreign trademark filings on the
Licensed Marks that relate to Licensed Products in the Licensed Fields, LI and
LICENSEE agree to consult with one another as to whether such foreign trademark
filings should be done, and the manner in which payment shall be made for the
costs of the foreign filings.
d. LICENSEE, at its sole cost and sole discretion, may take
appropriate action against third parties for infringement, dilution or other
violation of LICENSEE's rights as licensee in the Licensed Marks. LI agrees to
cooperate with LICENSEE in such actions, and to allow LICENSEE to institute suit
or other proceeding in the name of LI where necessary. LICENSEE agrees to
consult with LI prior to instituting any such action against a third party. The
parties further agree to inform one another of any possible infringement,
dilution or other violation of rights of the Licensed Marks in the Licensed
Fields. LICENSEE shall be entitled to all recoveries or other remuneration
resulting from any such suit or proceeding.
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13. DOMAIN NAMES.
The parties agree that LI shall be the named registrant for the internet domain,
lamaze.com, and any other domains containing LAMAZE as agreed to by the parties
from time to time, and LI hereby licenses back to LICENSEE the right to use such
domain name in accordance with the terms hereof.
14. NOTICES.
All notices under this Agreement shall be mailed by Federal Express or other
overnight air courier to the following addressees for the parties.
For Lamaze International, Inc.:
2025 MStreet N.W.
Suite 800 Washington, D.C. 20036-3309
For LICENSEE:
iVillage Inc.
512 Seventh Avenue
New York, NY 10018
Attention: Executive Vice President of Operations and Business Affairs
Lamaze Publishing Company
9 Old Kings Highway South
Darien, CT 06820
Attention: President
Copy to:
Bradford S. Breen, Esq.
Orrick, Herrington & Sutcliffe LLP
666 Fifth Avenue
New York, NY 10103
15. ASSIGNABILITY.
a. This Agreement and any portion thereof, may not be assigned by a party (by
asset sale or transfer, stock sale or purchase, merger or the like) without the
prior written consent of the other party. LICENSEE shall consent to an
assignment by LI to an affiliate of LI. LI shall consent to an assignment by
LICENSEE as long as: (i) the assignee confirms its obligations to comply with
this Agreement, (ii) the assignee has no substantial business interest in infant
formula, tobacco, firearms, pharmaceuticals, alcohol or pornography; and (iii)
the assignee affirms its current intent to continue current
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publications at current levels, or otherwise reasonably commits to promote and
market Licensed Products (including Lamaze Parents Magazine or a successor
thereto) under this Agreement.
16. MISCELLANEOUS PROVISIONS.
a. This Agreement and the attached Schedules A- G constitute the
complete understanding of the parties. The parties hereby agree that this
Agreement completely supercedes and replaces the prior agreements between LI and
Lamaze Publishing Company (Connecticut corporation) and their respective
predecessor companies, as those agreements are identified on Schedule A hereto.
The parties acknowledge and agree that the Sublicense Agreement for Children's
Books between Lamaze Publishing Company (Connecticut corporation) and Learning
Curve International, Inc., dated March 1999, remains in full force and effect.
b. Any fundraising activities of LI directed toward consumer
products companies in which LI seeks contributions in excess of $50,000 either
in monetary terms or in value, shall take into account the effect such
fundraising activities may have on LICENSEE and its advertising and sponsorship
activities in relation to Licensed Products. In this regard, LI agrees to advise
LICENSEE of such fundraising activities and to consult with LICENSEE regarding
same.
c. During the term of this Agreement, LI agrees to meet with
LICENSEE within sixty (60) days of each meeting of the Board of Directors of LI
to discuss developments arising out of such Board meeting.
d. This Agreement shall not be deemed effective, final or binding
upon the parties until signed by all of the parties. This Agreement may be
executed in one or more counterparts, each of which shall be deemed to be an
original but all of which together shall constitute but one and the same
document. This Agreement shall not be modified except in writing signed by all
of the parties.
e. This Agreement does not constitute and shall not be construed
as constituting a partnership or joint venture between or among LI, and
LICENSEE. No party shall have the right to obligate or bind the other in any
manner whatsoever.
f. This Agreement shall be construed in accordance with the laws
of the District Of Columbia..
g. The terms of this Agreement are severable. If any term or
provision is declared invalid, it shall not affect the remaining terms which
shall continue to be binding.
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h. If by reason of fire, earthquake, flood, explosion, accidents,
strikes, act of God, or war, LICENSEE shall be delayed or prevented from
performing this Agreement, such delay shall be excused during the continuance of
and to the extent of such cause, and the contract period for performance shall
be extended accordingly.
i. No rights are granted by any party to the other party pursuant
to this Agreement, except as set forth explicitly herein.
j. Waiver by any party of a breach of any provision of this
Agreement by another party shall not operate or be construed as a waiver of any
subsequent breach by such other party.
k. LICENSEE shall maintain in effect for the term of this
agreement and at least one year thereafter commercially reasonable general
liability insurance in an amount of at least $2,000,000 in the aggregate.
l. Counterparts - This Agreement may be executed in one or more
counterparts, any one of which need not contain the signatures of more than one
party, but all such counterparts taken together will constitute one and the same
instrument.
IN WITNESS WHEREOF, THE PARTIES hereto have signed this Agreement in duplicate
originals as of the day and year first above written.
LAMAZE INTERNATIONAL, INC.
BY:/s/ Teresa Shilling
-----------------------------------
TITLE: President, Lamaze International
-------------------------------
LAMAZE PUBLISHING COMPANY (Delaware corporation)
BY:/s/ Steven Elkes
-----------------------------------
TITLE: Senior Vice President
-------------------------------
IVILLAGE INC.
-14-
<PAGE>
BY:/s/ Steven Elkes
-----------------------------------
TITLE: Executive Vice President-
-------------------------------
Operations and Business Affairs
-15-
<PAGE>
SCHEDULES
Schedule A: List of Agreements between Lamaze Publishing Company
(Connecticut corporation) and Lamaze International that are
superceded by this Agreement
Schedule B: Licensed Marks
Schedule B-1: Warranted Registrations/Applications
Schedule C: Retained Rights by Lamaze International to publish certain
publications
Schedule D: Quality Control provisions
Schedule E: Advertising Guidelines
Schedule F: Infant and Maternity Field Products
Schedule G: Identification of other Lamaze International Licenses
<PAGE>
SCHEDULE A
(List of Agreements)
Agreement dated October 18, 1989 (the "Video Agreement") between Lamaze
International and LPC (as successor-in-interest to Lifetime Institute for Family
Education, Inc. ["Lifetime"], in turn as successor-in-interest to Medical
Communications Corporation ["MCC"])
Addendum to the Video Agreement dated December 9, 1992 between Lamaze
International and LPC (as successor-in-interest to Lifetime, in turn as
successor-in-interest to MCC)
Second Addendum to the Video Agreement dated April 22, 1993 between Lamaze
International and LPC (as successor-in-interest to Lifetime, in turn as
successor-in-interest to MCC)
Intellectual Property Agreement dated April 6, 1990 between Lamaze International
and LPC (as successor-in-interest to Lifetime)
Loan/Activity Agreement dated August 2, 1990 between Lamaze International and
LPC (as successor-in-interest to Lifetime)
LPM Agreement dated August 2, 1990 between LPC (as successor-in-interest to
Lifetime) and Lamaze International
Onsert Agreement dated December 9, 1992 between Lamaze International and LPC (as
successor-in-interest to Lifetime)
Statement of Terms concerning Child Development Newsletter dated August 20, 1993
between Lamaze International and LPC
Agreement of Modification and Clarification dated January 1, 1996 between Lamaze
International and LPC (directly, and as successor-in-interest to Lifetime)
<PAGE>
Schedule B
Licensed Marks
Lamaze Parents Magazine
LAMAZE PARENTS
Lamaze Para Padres
Lamaze Baby Magazine
LAMAZE BABY
LAMAZEBABY.COM
LAMAZEBABY.NET
LAMAZEBABY.ORG
Lamaze Family Magazine
LAMAZE FAMILY
LAMAZEFAMILY.COM
LAMAZEFAMILY.NET
LAMAZEFAMILY.ORG
Lamaze You and Your Baby Video
Lamaze Lo Mejor Su Bebe
Lamaze Book Club
Lamaze.com
Lamaze Publishing Company
The "LAMAZE" mark as part of any of the above marks in this Schedule B
<PAGE>
SCHEDULE B-1
Warranted Registrations/Applications
1) ASPO/LAMAZE
(USPTO Registration # 1,692,047)
2) LAMAZE
(Canada Application # 855,451)
5) LAMAZE
(USPTO Registration # 1,349,474 and
USPTO Registration # 2,118,265)
6) LAMAZE BABY
(USPTO Application # 75/635,071)
7) LAMAZE COMMUNICATIONS
(USPTO Registration # 2,179,809 and
USPTO Registration # 2,090,392)
8) LAMAZE FAMILY
(USPTO Application # 75/635,069)
9) LAMAZE INSTITUTE FOR FAMILY EDUCATION & DESIGN
(USPTO Registration # 1,730,169)
10) LAMAZE PARENTS
(USPTO Application # 75/635,072)
11) LAMAZE PARENTS MAGAZINE
(USPTO Registration #2,002,043)
12) LAMAZE.ORG
(USPTO Application # 75/438,018)
13) LAMAZEBABY MAGAZINE
(USPTO Registration # 1,883,545)
14) LAMAZEBABY.COM
(USPTO Application # 75/691,874)
15) LAMAZEBABY.NET
(USPTO Application # 75/691,934)
16) LAMAZEBABY.ORG
(USPTO Application # 75/691,935)
17) LAMAZEFAMILY.COM
(USPTO Application # 75/706,421)
18) LAMAZEFAMILY.NET
(USPTO Application # 75/702,973)
19) LAMAZEFAMILY.ORG
(USPTO Application # 75/706,418)
20) LCCE CERTIFIED BY LAMAZE
LAMAZE CERTIFIED
CHILDBIRTH EDUCATOR
(USPTO Application # 75/637,855)
<PAGE>
Schedule C
Lamaze International ("LI") Retained Publications Rights
I. All publications in any media intended for professionals and members
of LI.
II. Lamaze Bookstore and Media Center.
III. Position papers on topics related to pregnancy, childbirth,
breastfeeding, infant care, and early parentingIV. Professional
Teaching aids, including handouts in any media, for use in early
pregnancy, childbirth, breastfeeding, and early parenting classes.
V. Topical/issue specific Information updates for professionals and
childbearing women.
VI. Endorsements of position papers.
VII. Endorsements of books or videos that advance the mission/philosophy of
Lamaze International to the professional market. In the event LI wishes
to publish any consumer oriented or directed endorsements of books or
videos, LI shall provide prior written notice to Lamaze Publishing
Company (Delaware corporation) or iVillage Inc., and such endorsements
shall not imply that LI is the owner or source of such book or video,
or cause likelihood of confusion as to whether LI is the owner or
source of such book or video.
VIII. Topical or single issue Publications for consumers done in
collaboration with other professional organizations (e.g. the CIMS
brochure for mother friendly and how to choose a place of birth).
IX. Collaborative Statements (with other professional and consumer groups)
that advance the mission and philosophy of LI.
X. Publications marketing Lamaze International as a non-profit group and
service provider. Specifically, publications intended to market
childbirth education, the mission/philosophy of LI, all programs
sponsored by LI--targeted to both professionals and consumers.
All of the above publications, although they may carry ads/sponsorships, shall
not materially compete with the iVillage LAMAZE Licensed Products.
<PAGE>
Schedule D
Quality Control
I. Editorial Content Development and Review
A. All editorial content must be reviewed and approved by "LI"
and must be consistent with the philosophy, mission and goals
of the organization, and in no way tarnish its reputation.
B. Advertisements and editorial content will be independent, and
advertising will not exceed a ratio of 40% of the publication,
without Lamaze International approval.
C. LI will appoint an Editorial Advisory Board to serve in an
advisory role on the content for all Lamaze consumer
publications/media.
1. LICENSEE will convene a meeting of the Editorial
Advisory Board at least once a year to conduct an
overall review of the content material, and will
cover the expense of the meeting. LI agrees to make
its best effort to schedule such meetings adjacent to
other LI events. Conference calls are also
acceptable, assuming LI and LICENSEE agree.
2. The LICENSEE Editor will be in regular communication
with the appointed Editorial Advisory Board member
chairing the Editorial Board's Advisory Committee for
the particular publication to review and approve the
respective content.
3. Content material for review will be forwarded by the
Editor to the assigned reviewers at least 10 business
days prior to deadline.
4. Editorial content assignments will be determined
between the Editor and the appointed Editorial
Advisory Board member chairing the Editorial Advisory
Board Committee for the particular publication.
Content contributors will be compensated by LICENSEE
for their work.
II. Publication Advertising Review and Approval Process
A. All publication advertising must be reviewed and approved by
LI and must be consistent with the philosophy, mission and
goals of the organization, and in no way tarnish its
reputation.
B. Lamaze will appoint a Publication Advertising Review Committee
to serve as reviewers to ensure adherence to the established
Publication Advertising Guidelines.
1. LICENSEE will submit advertisements to the LI
reviewers at least 10 business days prior to
deadline.
2. Advertising review decisions will be made in
accordance with the Publication Advertising
Guidelines established by LI, which may be modified
from time to time upon at least twelve (12) months
prior written notice to LICENSEE, to maintain
consistency with LI philosophy, mission and goals.
The current Advertising Guidelines are attached
hereto at Schedule E.
C. To avoid an excessive commercial appearance of the LAMAZE.com
website, all advertising on such website must fit within
guidelines set forth at Schedule E hereto.
D. Any Onserts (i.e., coupons or samples) must be sent with
LI-approved educational materials, and can not be sent as
stand alone materials without such LI-approved education
materials.
<PAGE>
III. Licensed Products
A. As used herein, "Licensed Products" refers to all publication
within the Licensed Field, and to any other products in any
other licensed field in the event that LI should in the future
agree in writing to grant an additional licensed field(s) to
LICENSEE.
B. All Licensed Products within a Licensed Field, all related
packaging and promotional materials, and any other materials
physically distributed with a Licensed Product, must be
reviewed and approved by LI and must be consistent with the
philosophy, mission and goals of the organization, and in no
way tarnish its reputation.
C. All Licensed Products will be of high quality, meet safety
standards, have an educational value/message incorporated, and
will be consistent with the approved vision/direction for the
product/line.
D. LI will appoint an appropriate Review Committee (which may be
the Editorial Advisory Board for publications) to serve in an
advisory role on the development and review of licensed
products within Licensed Fields. LICENSEE will convene a
meeting of the Review Committee at least once a year to
conduct an overall review of the licensed products, and will
cover the expense of the meeting. LI agrees to make its best
effort to schedule such meetings adjacent to other LI events.
A conference call is acceptable if agreed to by both LI and
LICENSEE.
E. New Product Proposals
1. LICENSEE will submit proposed product to LI for
review and consideration with complete information
provided as outlined on the Licensee Proposal form,
and will provide additional information as requested
in order to allow evaluation of the proposal.
2. The proposal will be forwarded to the Review
Committee for review and preparation of a
recommendation to the LI board regarding approval or
denial of the product development proposal. New
products within existing categories will be reviewed
and approved/denied on an on-going basis. All new
categories will be reviewed and approved/denied at
the next board meeting.
F. Review and Approval Process of Approved Products
1. LICENSEE will submit products and related promotional
and packaging material to the LI Review Committee
reviewers at least 10 business days prior to
deadline.
2. Product Review decisions will be made in accordance
with the specified quality standards for the
particular product.
3. As part of the approval of any product, the Review
Committee shall provide LICENSEE with Advertising
Guidelines which must be complied with as a condition
of continued approval of the product. All
advertisements for an approved product are subject to
prior review and approval by the Product Review
Committee in accordance with such guidelines.
IV. Trademark Usage and Notations
A. All licensed products in Licensed Fields will use the
appropriate trademark registration/ownership notations,
outlined in the reasonable LI trademark usage guidelines,
which will be reviewed and may be modified by LI from time to
time.
B. All licensed products in Licensed Fields will use the
appropriate treatment of the Lamaze mark, as provided in the
trademark usage guidelines to ensure a consistent visual
identity of the Lamaze mark.
<PAGE>
C. Trademark registration/ownership notations, outlined in the
trademark usage guidelines will be reviewed periodically and
may be modified by LI from time to time.
D. No LAMAZE mark may be used in a manner which is offensive,
obscene, or inconsistent with the philosophy, mission, or
goals of LI or which is directed at the childbirth educator
market, or which is likely to cause confusion with LI's use of
the LAMAZE term outside of the Licensed Fields. It is agreed
that the Licensed Marks at Schedule B hereto, of and by
themselves, comply with this Section IV(D).
V. Reporting Requirements
A. LICENSEE will prepare a business overview and product
development timetable on a bi-annual basis for review by the
LI Board for licensed products in Licensed Fields.
B. LICENSEE will prepare quarterly financial reports/sales
reports and royalty payment estimates and forward the same to
LI as required by Section 6 of the Agreement to which this
Schedule D is attached.
C. LICENSEE will submit consumer publication/media and product
samples to LI upon final production.
<PAGE>
Schedule E
Lamaze International Ad Guidelines for Consumer Publications
The mission of Lamaze International is to promote normal, natural, healthy and
fulfilling childbirth experiences for women and their families through
education, advocacy and reform. The Lamaze International philosophies of birth,
breastfeeding and parenting are attached. No advertising can be included in
consumer publications that contradict or do not support that mission. No
advertising may do anything to negatively affect the reputation of Lamaze
International. Consistent with its philosophy on breastfeeding, Lamaze
International abides by the World Health Organization Code of Marketing
Breastmilk Substitutes. Lamaze International reserves the right to decline or
prohibit any advertising which, in its sole discretion, is inappropriate or
contrary to its policies. This reservation is all-inclusive as to persons,
things, printed matter, website content, onserts and couponing, product samples,
video and conduct.
Acceptance into our consumer publications including the website can not be
viewed as an endorsement of any product. Each publication/video/website must
contain a disclaimer that a product's appearance in this media does not
represent an endorsement by Lamaze International.
Pregnancy and early parenting is a vulnerable time for women and their families.
Therefore, no advertising materials may exploit this by containing sensational,
fear invoking copy and/or claims. All ad claims require appropriate legitimate
substantiation.
All changes in ad guidelines must be approved by the Lamaze International Board
of Directors. The Board of Directors reserves the right to review, revise and
amend these guidelines annually. Any changes will be forwarded to LPC by June 1
to take effect the following January 1.
The following categories of products will NOT be accepted for advertising in any
Lamaze media vehicle:
|X| Bottles, nipples, pacifiers
|X| Infant/Toddler Formula or foods which contain infant formula
|X| Prescription medications (including drug companies and retail outlets
advertisements that specifically promote their prescriptive services)
|X| OTC medications that treat illness (see acceptable OTC products below)
|X| Alcohol
|X| Tobacco
|X| Contraceptives, any form
|X| Douches
|X| Feminine Sprays
|X| Vaccines
|X| Professionally used medical equipment or materials
|X| Dietary supplements with the exception of vitamins & minerals
recommended by ACNM, ACOG, AAP, ADA, National Food and Nutrition Board
for pregnant and lactating women
|X| Herbal remedies
|X| Laxatives
<PAGE>
The following categories of OTC products will be accepted for advertising in any
Lamaze media vehicle:
The following categories of OTC products used to promote health (vitamins) or to
treat minor discomforts of pregnancy, postpartum and infancy will be accepted:
|X| External topical application products, such as creams, gels, rubs, and
unmedicated vaginal lubricants
|X| Vitamins and minerals recommended by ACNM, ACOG, AAP, ADA, or National
Food and Nutrition Board for pregnant, breastfeeding women and infants.
o Pregnant and breastfeeding women: currently the ONLY vitamins
and minerals recommended are multivitamin, calcium, iron, and
folic acid. Ads will ONLY be accepted for these
vitamins/minerals for pregnant and breastfeeding women.
o Infants: the only vitamins recommended for breastfeeding
infants under six months are Vitamin D for infants whose
mothers are Vitamin D deficient or those infants not exposed
to adequate sunlight or iron for those who have low iron
stores or anemia. All ads for Vitamin D must note this. Liquid
multivitamins for infants will only be accepted if the ad
clearly states that the vitamins are recommended for
breastfeeding babies over 6 months of age or that the AAP
states that vitamins are generally unnecessary for
breastfeeding infants under 6 months.
|X| Fever reducers for infants if the advertising copy/graphics do not
refer to illness and includes the statement that parents of babies
under 24 months should consult their health care provider before
administering.
|X| Homeopathic remedies
|X| Gas relievers for infants
|X| Antacids for pregnant women which do NOT state on the label that
pregnant or nursing women should consult their physician before taking
(i.e. products such as Tums, Mylanta, Maalox, Rolaids which do not
include such warnings on their labels)
|X| Stool softeners for adults
Cord Blood
Publications/media that carry Cord Blood Storage ads must also include a Lamaze
International approved statement regarding cord blood collection and storage in
the editorial.
New Product Categories
All new product categories will be submitted to Lamaze International for
preliminary review.
WEB Specific Guidelines
|X| Ad Guidelines apply to Lamaze.com web site upon initial publication.
|X| No OTC medication ads or medical procedure ads such as cord blood ads
on the home page top banner.
|X| Ads should not exceed 40% of the page which is visible on the screen at
any given moment..
|X| "Pop Up" windows, video ads, flash, shockwave or other moving media may
be used for advertising purposes, subject to review and approval by LI.
Samples
Product samples and materials can only be sent as part of the onsert program.
Approved: May 6, 2000
<PAGE>
Lamaze International:
Philosophy Statements
Philosophy of Birth
Integral to the work of Lamaze International is a fundamental philosophy of
birth:
o Birth is normal, natural, and healthy.
o The experience of birth profoundly affects women and their families.
o Women's inner wisdom guides them through birth.
o Women's confidence and ability to give birth is either enhanced or
diminished by the care provider and place of birth.
o Women have a right to give birth free from routine medical
interventions.
o Birth can safely take place in birth centers and homes.
o Childbirth education empowers women to make informed choices in health
care, to assume responsibility for their health and to trust their
inner wisdom.
Breastfeeding Philosophy
Lamaze International recognizes breastfeeding as the optimal method of infant
feeding and believes that childbirth education should protect, promote and
support breastfeeding. Therefore, in our effort to protect, promote and support
breastfeeding, and consistent with our Position Paper on Infant Feeding Lamaze
International abides by the World Health Organization International Code of
Marketing Breastmilk Substitutes.
Parenting Philosophy
o Good parenting is vital to the physical, emotional and spiritual health
of our children, ourselves and our society.
o Parenting is joyful, important, challenging and deeply satisfying work
that is worthy of everyone's best efforts.
o Parenting begins before birth. The intimate connection between children
and their parents must be respected and protected from the moment of
birth throughout life.
o Mothers and fathers play unique, irreplaceable roles in their
children's lives.
o Babies and children thrive in close, consistent interaction with their
parents.
o Parenting is a learned art; our most important teachers are our own
parents, our family, and our children.
o Parenting requires the support of family, friends and community.
o Knowledge and support enhance parents' confidence and ability to make
informed decisions that meet the needs of their children and
themselves.
<PAGE>
Schedule F
Infant and Maternity Field Products
-------------------------- ------------------------------ --------------------------------------------------------------------------
Maternity Nursing Baby/Infant
-------------------------- ------------------------------ --------------------------------------------------------------------------
Clothing + Clothing Layette Clothing - for up to 1 year Accessories
---------- -------- ------- --------- -----------
of age
Pants Bras Receiving Blanket Blankets Cotton Moses Basket
Overalls Shawls U-Shirt Tee Shirts Headbands
Tops Sleep Bra Onesie Bunting (Bags) Hats, Special/Common
Tee Shirts V-Neck Top Sleep Gown Thermal Blankets Sleepers
Dresses Tops Hooded Towel Diaper Covers Diaper Bags/Backpacks
Skirts Night Shirt Wash Cloths Creeper-Cotton Baby Sling
Blouses Sweat Shirt Cloth Diapers Wool Blankets
Vests Bra Liner Crib Sheets Sweaters
Stockings Shirts Water Proof Pad Christening Gowns*
Socks Sweaters Cap Jackets, Hoods/No Hds
Panties Blouses Bib Robes
Bras Day Bras Booties/Socks Gowns, Std./Preemie
Bathing Suits Panties "Stretchy"/Otrwr Tights
Blue Jeans Demit Top ? Leggings
Sweaters Socks
Jump Suits Jumpers
Overalls, Blue Jeans
Bottoms
Dresses
Christening Blankets*
Christening Suits*
Footie w/Hat
*other name than
Christening?
+Upon Expiration of AMI agreement
<PAGE>
Schedule G
Other LI Licenses
I. AMI
II. Learning Curve International
III. LI Members
IV. LI Certifees
V. LI Chapters
VI. LI Childbirth Educator Programs
VII. LI Approved Providers
VIII. Injoy Productions for Lamaze video
IX. LI Membership affinity programs, such as MBNA credit card offer