LICENSE AGREEMENT
THIS LICENSE AGREEMENT (“Agreement”), effective as of date of signature (the “Effective Date”), is entered into by and between The SottoPelle Group, LLC, an Arizona limited liability company (“SottoPelle” or “Licensor”) and the provider or medical practice (“Licensee”).
Recitals
- Licensor has certain trade and service mark rights, including federally registered rights in the mark SOTTOPELLE, as set forth in Exhibit “A”.
- Licensor has agreed to license the Marks (as defined below) owned by Licensor to Licensee in connection with the operation of Licensee’s business (the “Business”), on the terms set forth herein.
- Licensor owns a proprietary dosing software and related technology (“Dosaggio™”) related to the calculation of dosages necessary for the performance of the Business as made available by Licensor.
Now Therefore, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the parties agree as follows:
1. Grant of License & Term.
1.1 License. Licensor hereby grants to Licensee a non-exclusive, non-transferable and royalty bearing license during the Term to use the Marks solely in connection with operating its Business as it relates to SottoPelle therapy. Licensee shall not use, or permit the use of, the Marks with any goods or services, or in any other manner, except as specifically provided in this Agreement and otherwise determined by Licensor in its sole discretion.
1.2 Term and Termination. The term of this Agreement (“Term”) shall commence upon the Effective Date and shall be valid on a month to month basis, subject to the six (6) month minimum period and Cancellation Fee set forth in Exhibit “B”. Notwithstanding the foregoing, Licensor may terminate this Agreement immediately, at any time, without penalty, in the event Licensee (i) becomes subject to a receiver or trustee; (ii) becomes insolvent; (iii) becomes subject to an involuntary or voluntary petition under Federal Bankruptcy Laws or other insolvency laws; (iv) makes an assignment for the benefit of its creditors; (v) has any proceeding instituted by or for Licensee to dissolve its corporate structure or for wind-up, (vi) is determined by Licensor to have made a warranty or representation herein that is materially false or misleading, or (vii) fails to performs or fulfill any material obligation of this Agreement in the time and manner provided. SottoPelle® may terminate if practice practitioners lose medical or DEA licenses, are suspended by State or federal programs, fail to abide by Program Guidelines, cannot perform essential duties, etc. This Clause 4.1 is standard and reasonable.
1.3 License Fee. Licensee shall pay the training fees and other fees set forth in Exhibit “B”. Licensee shall further pay a license fee (the “Fee”) to Licensor in the amount set forth in Exhibit “B” and shall be payable no later than the first (1st) of each month. If Licensee fails to timely pay any fees under this Agreement, Licensor reserves all rights under this Agreement and Licensee will be deemed in default and a late payment fee of one and one-half percent (1 ½%) per month of the balance due will be charged each month payment is delayed.
1.4 Dosing Site. Licensor agrees to make available the Dosaggio™ dosing site to Licensee’s providers solely for use in connection with the Business, subject to the payment of monthly membership fees for such providers (as set forth in Exhibit “B”) and such providers executing the standard Licensor end user license agreement for the Dosaggio™ dosing site.
2. Protection of Marks.
2.1 Artwork. From time to time after the Effective Date as deemed reasonably necessary or desirable by Licensor, Licensor shall deliver or otherwise make available to Licensee certain pieces of artwork or other materials which shall describe or contain the Marks, including the colors, shapes and other requirements of Licensor with respect thereto. Such artwork and other materials shall be owned exclusively by Licensor at all times, and Licensee agrees to return such artwork and other materials, including all copies, to Licensor promptly following the expiration or termination of this Agreement.
2.2 General. Licensee acknowledges Licensor’s exclusive ownership of, and right, title and interest in and to, the Marks, both at common law and under applicable laws in the United States and all other jurisdictions, and shall not, either directly or indirectly, at any time, do anything to discredit, encumber or diminish any part of such ownership or right, title or interest or challenge the validity of the Marks or this Agreement.
2.3 Service Mark Legends and Usage. Licensee shall use the Marks only in accordance with this Agreement and in the form and manner and with appropriate legends as prescribed from time to time by Licensor and shall not use any other trademark or service mark in combination with any Mark without prior written approval of Licensor. In all Advertising, in addition to the “®” symbol (or “TM” symbol for any mark that is not federally registered) displayed adjacent to the Mark, as appropriate, Licensee shall also include such legends describing ownership of the Marks as Licensor may from time to time require. In addition, Licensor may from time to time provide reasonable usage guidelines with respect to the Marks and Licensee shall at all times fully comply with such guidelines.
2.4 Domain Names; Assignment of Marks. Licensee shall not obtain any domain name registrations that incorporate any of the Marks or any confusingly similar variation thereof without notifying Licensor and giving the Licensor the opportunity to first register such domain name in Licensor’s own name. Licensor shall then make the use of such domain name available to Licensee in connection with Licensee’s activities under this Agreement. If Licensee shall acquire by act or operation of law or other reason by deed or operation of law any rights in the Marks or in any domain name incorporating the Marks, Licensee shall notify Licensor and immediately assign such rights to Licensor, together with any goodwill that may have inured to the benefit of Licensee and any related rights. Licensee shall in no event apply for or obtain any registrations that incorporate any of the Marks or any confusingly similar variation thereof. Licensee shall not permit any other person to use any of the Marks without Licensor’s prior written consent.
3. DISCLAIMER; LIMITATION OF LIABILITY
EXCEPT AS OTHERWISE PROVIDED IN SECTION 2 ABOVE, THE MARKS AND ALL OTHER ITEMS PROVIDED BY OR ON BEHALF OF LICENSOR HEREUNDER ARE PROVIDED STRICTLY “AS IS,” AND LICENSOR MAKES NO WARRANTIES, EXPRESS, IMPLIED, ARISING FROM COURSE OF DEALING OR USAGE OF TRADE, OR STATUTORY, AS TO THE MARKS OR ANY MATTER WHATSOEVER.
LICENSOR SHALL NOT BE LIABLE TO LICENSEE, OR ANY CUSTOMER, OR ANY OTHER PARTY FOR ANY LOSS OF USE, INTERRUPTION OF BUSINESS OR ANY INDIRECT, SPECIAL, INCIDENTAL, PUNITIVE OR CONSEQUENTIAL DAMAGES OF ANY KIND (INCLUDING LOST PROFITS) REGARDLESS OF THE FORM OF ACTION WHETHER IN CONTRACT, TORT (INCLUDING NEGLIGENCE), STRICT PRODUCT LIABILITY OR OTHERWISE, EVEN IF LICENSOR HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
4. Effect of Termination or Expiration.
4.1 No Further Rights; Equitable Relief. After expiration or termination of this Agreement, Licensee shall have no further right to sell, exploit, provide, render or otherwise operate the Business using the Marks or any other property or materials of Licensor, and all Marks and other property or materials of Licensor shall be removed from any media used by Licensee (including without limitation, any future, current or old social media postings). Licensee agrees that the Marks are distinctive and possess special, unique and extraordinary characteristics. Licensee recognizes that irreparable injury would be caused to Licensor by any unauthorized use of the Marks and other property or materials of Licensor and agrees that preliminary and/or permanent injunctive and other equitable relief would be appropriate in the event of a breach of this Agreement by Licensee provided, however, that such remedy shall not be exclusive of other legal remedies otherwise available.
5. General Terms
5.1 Entire Agreement; Severability. This Agreement sets forth the entire agreement between the parties and supersedes all prior agreements and understandings between the parties, relating to the subject matter hereof. Should any provision of this Agreement be declared void or unenforceable, the validity of the remaining provisions shall not be affected thereby.
5.2 Governing Laws, Jurisdiction and Venue. This Agreement shall be deemed made in the State of Arizona, and its terms shall be interpreted in accordance with and governed by the laws thereof without regard to its rules concerning conflict of laws. Any suit, action or other proceeding brought by Licensee which arises out of or relates to the subject matter of this Agreement shall be limited to an action brought in U.S. District Court or Arizona state court in Maricopa County, AZ, provided that the foregoing shall not prevent Licensor from pursuing injunctive relief in any forum having jurisdiction, and in the event Licensor pursues injunctive relief in another jurisdiction, Licensor may pursue all other claims that arise out or of relate to the subject matter of this Agreement. Licensee hereby consents and agrees to personal jurisdiction and venue for an action by Licensor brought in U.S. District Court or Arizona state court in Maricopa County, AZ which arises out of or relates to the subject matter of this Agreement.
5.3 No Assignment. Licensee may not assign or otherwise transfer this Agreement or any of its interests or obligations herein to any party without Licensor’s prior written consent.
6. Indemnification
6.1 Licensee Indemnification. The Licensee agrees to indemnify and hold harmless Licensor and its directors, managers, members, shareholders, officers, agents, affiliates and employees for, from and against any and all claims for damage or injury to persons or property or for loss of life or limb resulting from the use of the Dosing Site, including utilization of the suggested dosing amounts, or for any negligence or intentional act or omission of Licensee or its officers, employees or agents.
6.2 Licensor Indemnification. Licensor agrees to indemnify and hold harmless Licensee and its directors, officers, and employees from any and all claims of a third party arising out of or in connection with any claim that the Licensee’s use of the Licensed Material violates the rights of such third party to such Licensed Material.
6.3 Indemnification Obligations. Each party must notify the other promptly of a claim under this Section. The party seeking protection must (i) give the other sole control over the defense and settlement of the claim, and (ii) give reasonable help in defending the claim. The party providing the protection will (1) reimburse the other for reasonable out-of-pocket expenses that it incurs in giving that help, and (2) pay the amount of any resulting adverse final judgment or settlement. The parties’ respective rights to defense and payment of judgments (or settlement the other consents to) under this Section are in lieu of any common law or statutory indemnification rights or analogous rights, and each party waives such common law or statutory rights.
IN WITNESS WHEREOF, the parties hereby execute this Agreement as of the first date set forth above.
LICENSOR:
The SottoPelle Group, LLC
by: CarolAnn Tutera, its Manager
