This Questline Asset License (“License”) is made and entered into between Questline, Inc. (“Questline” or “Licensor”) and “Client” (or “Licensee”) (each a “Party” and together “Parties”).
The Parties have mutually executed a Statement of Work and/or a Master Service Agreement (“Contract”) for Questline to perform services or work for Client. Some of the work or services to be provided by Questline to Client pursuant to the Contract may require Client’s use of various proprietary assets of Questline, including certain Questline owned content assets and Questline Intellectual Property (as defined below) (collectively, “Questline Licensed Assets”). The Questline Licensed Assets are subject to revision or supplementation by Questline at any time, without notice.
Questline and Client mutually desire that Questline license to Client for the business purpose(s) set forth in the Parties’ Contract, the Questline Licensed Assets pursuant to the terms and conditions set forth in this License.
“Commercial Use” shall mean any reproduction or purposeful use for Licensee’s business purposes (e.g. promotion, customer communications, marketing) of those individual content assets of Questline’s Licensed Assets by Licensor during the Term (as defined in Section 6.1 below).
“Confidential Information” shall have the meaning set forth in Paragraph 7 herein.
“Effective Date” shall mean the date of full execution of the Contract by all Parties, or in the absence of a Contract between the Parties, the date of full execution of this Agreement by all Parties.
“Questline Intellectual Property” shall mean Questline owned content assets, including, for example, Questline’s Engage Platform Assets, Engage Content Assets, Catalogue of Content Assets, eLibrary, and all foreign, federal, state and common law trademarks, service marks, domain names, Internet path names and addresses of whatsoever nature, trade dress, copyrights, know-how, show-how, patents, Inventions (whether or not patentable), mask works, software, proprietary data, customer lists, strategic plans, financial data, trade secrets, all other intangible assets of whatsoever nature and all applications for registration and/or issuance with respect to all the foregoing and whether or not any of the foregoing is registerable or patentable, including, without limitation, with respect to all of the foregoing: (a) all goodwill associated with any and all of the foregoing; (b) all parents, continuations, continuations in part, divisionals, reissues and extensions; and (c) all moral rights associated with any and all of the foregoing.
I. Grant of License
On the Effective Date of this License, Licensor hereby grants to Licensee, subject to the terms, conditions, and restrictions contained herein a non-exclusive, revocable and worldwide right, license and privilege to (a) utilize the Questline Licensed Assets worldwide solely in connection with Licensee’s business activities, and (b) reproduce, duplicate, or distribute the Questline Licensed Assets, solely in connection with Licensee’s business activities. If Licensee desires to create derivative works from the Questline Licensed Assets, Licensee must receive written consent from Questline.
The License granted herein may only be used by Licensee for the purposes(s) identified herein or as set forth in the Parties’ Contract during the Term. Licensee shall not use any Questline Licensed Assets for any purpose, activity or service inconsistent with this Agreement without the express written authorization of Licensor.
II. Quality Control; Limitations on Use of Questline Licensed Assets
Section 2.1 Quality Control.
Licensee shall ensure that the goods or services it provides arising out of, reliant upon, or deriving from the Questline Licensed Assets shall be provided substantially in accordance with the quality standards of Licensee currently in place, or with such other quality standards as Licensor reasonably shall establish from time to time. Licensor shall not require Licensee to follow quality control standards or usage guidelines for the Questline Licensed Assets that are substantially different from those that Licensor imposes on other Licensees generally, or taking into account any relevant differences in their respective markets or products.
Section 2.2 Limitations on Use of Licensed Trademarks.
In the event of Licensee’s use of the Licensor’s trademarks (“Licensed Trademarks”) as included in the Questline Licensed Assets, Licensee shall faithfully reproduce the Licensed Trademarks’ design, coloration and appearance in accordance with Licensor’s use of the marks and/or as instructed by Licensor. Licensor may modify such designs, coloration and appearance of its marks from time to time in its sole discretion. Licensee shall not modify the Licensed Trademarks in their design, coloration or appearance unless requested to do so by Licensor. All displays of a Licensed Trademark by Licensee shall bear such trademark, service mark and other notices as Licensor shall require in its sole discretion, and Licensee shall adhere to any other reasonable and customary posting requirements developed by Licensor with respect to the Licensed Trademarks. Licensee shall not: use a Licensed Trademark as art of, or in conjunction with, any other names or marks, use any marks, terms, designs or designations confusingly similar or diluting to the Licensed Trademarks, or register or attempt to register or assist any unauthorized third party in registration of or attempt to register any such confusingly similar or diluting mark, term, design or designation, without Licensor’s prior written approval. Licensee shall not use a Licensed Trademark in any manner that will indicate that it is using such Licensed Trademark other than as a Licensee.
Section 2.3 Adoption and Notice of New Trademarks.
Licensor and Licensee must mutually agree, in advance, upon the Licensee’s adoption of a new tradename or trademark to be used to identify or in connection with the Questline Licensed Assets, such as in the case of the Licensee’s desire to provide or distribute the Questline Licensed Assets in a “white label” arrangement with Licensee’s clients or customers (“White Label Trademarking”). In the event of the Parties’ mutual agreement as to Licensee’s adoption of White Label Trademarking, Licensee shall refrain from the adoption or use of any brand name, legend, symbol, design mark, trade name, or trademark that will cause disparagement or reputational harm to Licensor or the Questline Licensed Assets, or that infringes upon the trademark or intellectual property rights of any third party.
Section 2.4 Intellectual Property Notices and Markings.
Licensee agrees that it shall take commercially reasonable measures to cause to appear on all materials on or in connection with which the Licensed Trademarks (including website pages) such legends, markings and notices as Licensor may reasonably request in order to give any appropriate notice of Licensor’s copyright and trademark rights in the Questline Licensed Assets. Licensee shall accurately produce and reproduce all Licensor intellectual property notices on all copies of products or materials Licensee produces or reproduces of the Questline Licensed Assets. In no event may Licensee remove any Licensor intellectual property notices from any products or materials without the written advance approval of Licensor. In the event of a White Label Trademarking arrangement, the Parties may mutually agree, upon Licensee’s request, upon a modified intellectual property notice that reflects Licensee’s status as a licensee of the Questline Licensed Assets. Section 2.5 Inspection of Samples. Licensor shall have the right, upon reasonable and prior notice to Licensee, to inspect all products and materials of Licensee and any sub-licensee that bear a Licensed Trademark or use the Questline Licensed Assets for the purpose of determining whether they have met or are meeting the quality standards required under this Agreement. Licensee shall promptly produce and deliver to Licensor such examples of its use of the Licensed Trademarks or Questline Licensed Assets as Licensor reasonably requests.
Section 2.6 Limitations on Use of Questline Licensed Assets.
Licensee shall use, reproduce, distribute, perform, display or sublicense the Questline Licensed Assets solely in connection with Licensee’s business activities, as defined in the Contract between the Parties, and further subject to the specific use limitations set forth in this Section 2.6, below (herein “Use Limitations”), for the limited Term of this License, defined herein in Section 6. Licensee shall not, without the express authorization of Licensor, use the Questline Licensed Assets in any manner inconsistent with or that will harm, dilute, diminish or cause loss or diminution of value of Licensor’s rights in such.
Section 2.7 Prohibited Modifications to Questline Licensed Assets.
Licensee shall not modify, alter, derive from, add to, distribute, or otherwise change the Questline Licensed Assets , or any information contained therein, in any manner that creates, or potentially creates, a misrepresentation, false claim, or false perception of any third party.
Licensee shall indemnify and hold Licensor harmless for any claims or liability related to any alleged misrepresentations, false claims, or false perceptions, pursuant to the provisions set forth in Section 5.2 herein.
Section 2.8 Exclusions from Questline Licensed Assets.
All third-party intellectual property incorporated into any of the Questline Licensed Assets, including, without limitation, any photographic images or video footage, any computer programs, any graphics or artwork, or any text copy, obtained by Licensor from a third party, are subject to the legal limitations on Licensor pursuant to Licensor’s contracts or licenses with the third-party owners thereof, or are excluded from this Questline Asset License. Such limitations may include a prohibition of use, prohibition of duplication or transmittal, or prohibition of creation of derivative works based upon such third-party intellectual property. Licensor will, where possible, make reasonable efforts to advise Licensee of any third-party intellectual property subject to such limitations.
III. Ownership Maintenance Policing and Protection
Section 3.1 Ownership.
Licensee acknowledges that Licensor is the sole and exclusive owner of the Questline Licensed Assets, including all derivative works created by Licensee from the Questline Licensed Assets. Licensee agrees that it has no right, title or interest in or to any Questline Licensed Assets, including any derivative works created therefrom, except as a Licensee pursuant to the terms of this License. Licensee agrees that all uses of any Questline Licensed Assets by Licensee and the goodwill associated with such uses shall inure solely to the benefit of Licensor. Upon termination of Licensee’s right to use any Questline Licensed Assets as provided in this License, all right and interest of Licensee in and to such Questline Licensed Assets, including any derivative works derived from or containing any Questline Licensed Assets, shall revert fully to Licensor. Licensee agrees, if requested by Licensor, to cooperate fully with Licensor by executing and recording appropriate documents evidencing Licensor’s ownership of the Questline Licensed Assets. Licensee agrees to take no action inconsistent with Licensor’s ownership of and interest in its Questline Licensed Assets or any of the terms of this License, or assist any third party in doing any of the same.
Section 3.2 Maintenance; Prosecution and Legal Action.
Licensor shall maintain sole control and discretion of and regarding the prosecution and maintenance of the Questline Licensed Assets, including all registrations and legal actions required to maintain and enforce the Questline Licensed Assets.
Section 3.3 Policing.
The Parties shall cooperate to diligently police the Questline Licensed Assets. Licensee shall promptly notify Licensor in writing of any unauthorized use, infringement, misappropriation, dilution or other violation of the Questline Licensed Assets of which it becomes aware. Licensee must retain all tracking code information provided by Licensor as it places licensed material into Commercial Use.
Section 3.4 Protection of Rights in Questline Licensed Assets.
3.4.1. Licensee will not undertake any action that shall in any manner reduce, diminish, or jeopardize the effect and enforceability of the Questline Licensed Assets.
3.4.2. Licensee shall provide Licensor with prompt written notice of any unauthorized uses by third parties of the Questline Licensed Assets. Licensor shall have the primary right, which it may exercise in its sole discretion, to bring and control any suits or legal proceedings against any unauthorized use, infringement, misappropriation, dilution or other violation of the Questline Licensed Assets. Licensor shall be entitled to retain the entirety of any monetary award arising from such suit or legal proceeding. Licensee shall cooperate with Licensor in any litigation, legal proceeding, or enforcement action that Licensor undertakes to enforce or protect the Questline Licensed Assets, including upon Licensor’s request the execution, filing or delivery of all documents or proof necessary for such purpose, including being named as a party to such suit, legal proceeding, or enforcement action. Licensee may participate and be represented in any such suit, proceeding or action brought by Licensor by Licensee’s legal counsel, at Licensee’s sole expense.
3.4.3. Licensee shall have no claim whatsoever against Licensor based upon or arising out of Licensor’s handling of or decisions regarding any suit, legal proceeding or enforcement action, or the settling, compromising or disposal thereof, regarding the Questline Licensed Assets. Licensee irrevocably releases and holds harmless Licensor from any such claims.
3.4.4. Each Party shall bear its own costs, fees and expenses incurred or associated with any suit, legal proceeding, or enforcement action brought pursuant to this Section 3 herein.
IV. Consideration for License
Licensee shall pay to Licensor, as consideration for the License, the license fees, subscription and subscription renewal fees, service fees, delivery fees, or additional relevant fees or costs as set forth in the Parties’ Contract.
The failure by Licensee to timely pay any required license fee, subscription or subscription renewal fee, service fee, delivery fee, or additional identified fee or cost in accordance with the terms of the Contract, shall be grounds for immediate termination by Licensor of this License, pursuant to Paragraph 6.2.2 of this License.
V. Limitation of Liability Indemnity
5.1 Licensor Disclaimer of Warranties.
Licensor provides the Questline Licensed Assets to Licensee “As Is.” Licensor disclaims any express of implied warranty, including any warranty of non-infringement, with respect to the Questline Licensed Assets. In no event shall Licensor be liable in any manner whatsoever relating to the use of the Questline Licensed Assets by Licensee or any assignee or sublicense of Licensee.
5.2 Licensee Indemnification of Licensor.
Licensee shall indemnify, defend and hold harmless Licensor, its affiliates, subsidiaries, related companies, licensees, properties, and each of the foregoing entities current and past employees, representatives, directors, officers, partners and agents (“Licensor Indemnitees”), from and against any and all costs, liabilities, expenses, including, without limitation, interest, penalties, attorney or third party fees, and all amounts paid in the investigation, defense and/or litigation of any claim, action or proceeding (collectively, “Expenses”) that arise from the use, transmittal, distribution or reproduction of any of the Questline Licensed Assets by Licensee, or the provision or promotion of goods or services by any Licensee or sub-licensee in connection with any Questline Licensed Assets, notwithstanding any approval that may have been given by Licensor with respect to the advertising or promotion of such goods or services; provided, however, that Licensee shall have no obligation to indemnify, defend and hold harmless Licensor from any Expenses resulting from any claim of any third party that any of the Questline Licensed Assets is infringing upon such third party’s intellectual property ownership rights, unless such claim of infringement arises from Licensee’s failure to comply with the terms of this License.
5.3 Limitations on Liability for Consequential or Special Damages.
Except to the extent prohibited by law, neither party or any affiliate, successor, or sub-licensee thereof shall be liable under this License to the other for any indirect, incidental, consequential, special, reliance or punitive damages or lost or imputed profits, lost data or cost of procurement of substitute goods or services, whether liability is asserted in contract, tort, indemnity or contribution. In no event shall Licensee be entitled to recover from Licensor any monetary award that exceeds the amount of monetary consideration paid to Licensor pursuant to this License.
VI. Term and Termination
Section 6.1 Term.
Except as otherwise provided in the Contract between the parties, this License shall have a term of one (1) year. Licensee maintains the rights to use assets purchased provided Licensee maintains its annual Engage Access subscription. If Licensee no longer is a Questline customer, Licensee has rights to use a piece of content for 12 months from the end of its subscription or 12 months from the date the Licensee first places the content into Commercial Use, whichever date occurs first, unless this License is terminated sooner pursuant to Section 6.2. For example, this means if Licensee downloads a piece of content from the July 2018 Newsletter, Licensee can tweet it out in ‘19 as long as Licensee is still subscribing to the Engage platform in 2019. If Licensee ended its subscription in December of 2018, Licensee has rights to use a piece of content for 12 months after Licensee first published it or until December of 2019, whichever date occurs first. For example, a piece published in February of 2018 would lapse in February of 2019.
Section 6.2 Termination.
This License may be terminated upon occurrence of any of the following:
6.2.1 By Licensor upon Licensee’s insolvency, liquidation, or assignment of its stock, assets or business for the benefit of creditors, or upon appointment of a trustee or receiver to administer or conduct Licensee’s business affairs, or upon Licensee’s declaration of bankruptcy, without prior notice or legal action by Licensor.
VII. MISCELLANEOUS PROVISIONS
Section 7.1 Confidential Information.
7.1.1. The Parties agree that any information disclosed by one Party to the other Party pursuant to this License, including without limitation either the Questline Licensed Assets, or any business plans, marketing information, financial information, vendor information, customer information, or technical data or specifications relating to the Questline Licensed Assets (collectively herein “Confidential Information”) shall be maintained in confidence and not disclosed to any third party for any reason whatsoever, excluding such counsel, agents, or consultants necessary for performance of this License, without the written authorization of the disclosing Party.
7.1.2. Notwithstanding the foregoing, in the event a Party becomes legally compelled to disclose any Confidential Information, such Party shall provide the other with prompt prior written notice of such requirement so that the other Party may seek a protective order or other appropriate remedy to minimize disclosure of the Confidential Information. In the event that such protective order or other remedy is not obtained, or the other Party approves the disclosure, the disclosing Party agrees to furnish only that portion of the Confidential Information that the disclosing Party in good faith believes is legally required and shall exercise reasonable efforts to obtain assurance that confidential treatment shall be accorded of such information.
7.1.3. Each Party shall cease use of all Confidential Information that any Party has obtained from the other upon the expiration or earlier termination of this License.
7.1.4. Either Party may disclose or make available any Confidential Information only to those of its employees, officers, consultants or agents who require access to such information to assist that Party in performance of this License. Each Party shall instruct its employees, officers, consultants and agents who have access to the Confidential Information to maintain it confidentially by using the same care and discretion that such Party uses with respect to its own confidential information, intellectual property or trade secrets.
7.1.5. Notwithstanding the foregoing, nothing in this Section 7.1 shall require the recipient Party of any information to hold such information in confidence or otherwise protect it from unauthorized use or disclosure in the event it (i) is known to the recipient at the time of receipt; (ii) is or becomes publicly available through no wrongful act of the recipient; (iii) is rightfully received by the recipient from a third party without restriction and without breach of any agreement; (iv) is independently developed by the recipient without breach of this License or (v) is furnished by the disclosing Party to a third party without restriction.
Section 7.2 Assignment; Sub-Licensing.
None of the rights, benefits, or obligations of this License shall be assigned or transferred by Licensee; provided, however, that Licensee may sublicense the Questline Licensed Assets only to Licensee’s related, affiliated or subsidiary entities, subject to the advance written approval by Licensor in its sole discretion. Upon entering into any such sub-license with a sub-licensee approved by Licensor, Licensee shall require such sub-licensee to enter into a written sublicense agreement in a form satisfactory to Licensor, pursuant to which such sub-licensee agrees to comply with and be bound by, the terms of this License and acknowledges the status of Licensor as an intended third-party beneficiary of such assignment or agreement. Any purported assignment or sublicense by Licensee not in compliance with the terms of this License shall be null and void. Subject to the foregoing, this License shall be binding upon and inure to the benefit of the Parties, their successors and assigns. Licensee shall not sublicense the Questline Licensed Assets to, or allow the use of any Questline Licensed Assets by, any third party who provides products or services competitive with those provided by Licensor. Licensor shall limit any sublicensing or use of the Questline Licensed Assets only to or by those third parties who are non-competitive with Licensor and to whom sublicensing is required to fulfill the production needs of Licensee. Any third party to whom Licensee must sublicense any of the Questline Licensed Assets shall be bound by the terms and conditions of this Questline Asset License, and if requested by Licensor, such sub-licensee shall execute an instrument or instruments pursuant to which such sub-licensee shall be bound by, and become a party to, this License.
Section 7.3 Notices.
All notices, requests and communications to any Party hereunder shall be in writing and shall be provided either (i) by personal delivery to the notice address indicated for the recipient Party herein or otherwise provided in writing by the recipient Party for such purposes, (ii) by reliable overnight courier service, with written delivery confirmation, to the notice address indicated for the recipient Party herein or otherwise provided in writing by the recipient Party, (iii) by facsimile transmission to the notice number indicated for the recipient Party herein or otherwise provided in writing by the recipient Party herein for such purposes, (iv) by electronic mail, with written receipt confirmation from the recipient Party, at the e-mail address indicated for the recipient Party herein or otherwise provided in writing by the recipient Party; or (v) by certified, registered or express U.S. Postal Mail or reliable overnight courier service, with written delivery confirmation, to the notice address indicated for the recipient Party herein or otherwise provided in writing by the recipient Party for such purposes.
Section 7.4 Relationship of Parties.
Nothing in this Agreement shall be construed to create any relationship among the Parties of agency, partnership, franchise, or joint ventures or render any party liable for any debt or obligation incurred by any other party hereto. No Party is authorized to enter into agreements for or on behalf of any other Party hereto, to collect any obligation due or owed to any such party, or to bind any other party in any manner unless otherwise agreed in writing by the Parties.
Section 7.5 Entirety of Agreement.
This Agreement and the Contract constitutes the entire agreement and understanding between the parties hereto related to the Questline Licensed Assets, except as provided herein, and supersedes any prior or contemporaneous agreement or understanding related to the subject matter addressed herein. There are no oral understandings, terms or conditions, and neither Party has relied upon any representations, express or implied, other than those set forth in this Agreement. All modifications to this Agreement must be made in a writing executed by both Parties.In the event of a conflict between this Asset License and the Contract, this Asset License supercedes, replaces and amends any contract term inconsistent with the Asset License.
Section 7.6 Fees and Expenses.
Each Party shall bear its own fees and expenses incurred in connection with the License transaction contemplated by this Agreement.
Section 7.7 No Third Party Beneficiaries.
This Agreement is for the sole and exclusive benefit of the parties hereto and nothing herein is intended to give or shall be construed to give to any person or entity other than the parties hereto any additional rights or remedies hereunder.
Section 7.8 Severability.
Whenever possible, each provision of this Agreement will be interpreted in such manner as to be effective and valid under applicable law, but if any provision of this Agreement is held to be legally unenforceable, the remaining provisions of the Agreement shall remain in full force and effect.
Section 7.9 Governing Law.
This Agreement shall be governed in accordance with the laws of the State of Ohio. Any action or proceeding of whatsoever kind or nature with respect to, or arising out of, this Agreement will, if brought by either Party, be instituted and tried only by the courts located in Franklin County, Ohio, and both Parties waive any right to cause such action or proceeding to be instituted or tried elsewhere. In the event of a dispute arises, the prevailing Party shall be entitled to receive its costs and reasonable attorneys' fees, through and including all appeals, from the non-prevailing Party.
All notices that are to be given hereunder by either party to the other may be affected in writing, transmitted by electronic mail, by personal delivery or by U.S. mail, registered or certified, postage prepared with return receipt requested. Mailed notices shall be addressed to the parties at the addresses below, but each party may change the address by written notice in accordance with this paragraph. Notices delivered personally will be deemed communicated as of the date of receipt; mailed notices will be deemed communicated as of three days after mailing, and electronic mail shall be deemed communicated as of the date of electronic receipt thereof.
If to Questline:
5500 Frantz Rd.
Dublin, Ohio 43017
Attention: Legal Department