1. Subject to all the terms and conditions herein set forth, Abbott Laboratories (“Abbott”) hereby grants to you (“Customer”) a limited, non-exclusive, royalty-free and non-transferable license to use the Abbott trademarks provided in the ID NOW Consumer Marketing ToolKit in the presentation set forth in the ID NOW Consumer Marketing ToolKit (the “Marks”), and permission to use the campaign materials provided for download in the ID NOW Consumer Marketing ToolKit on IDNOWMarketingToolkit.com (the “Materials”), each solely in connection with Customer’s promotion of its use of the ID NOW (the “Campaign”) in the United States and its territories during the Term (as set forth in paragraph 7 herein below) and strictly according to the “Campaign Guidelines” provided in the ID NOW Consumer Marketing ToolKit on IDNOWMarketingToolkit.com, which guidelines may be amended or updated by Abbott from time to time without the need to amend this agreement (the “Guidelines”). For purposes of clarity, Customer is not entitled to grant any sublicenses. Abbott may add materials to the ID NOW Consumer Marketing ToolKit from time to time and such materials shall be included as part of the Materials licensed without the need to amend this agreement. Abbott may remove materials from the ID NOW Consumer Marketing ToolKit from time to time. Customer agrees that upon written notice from Abbott it shall immediately stop using materials that Abbott has removed from the portal (regardless of any prior use by Customer of such materials). This license to use the Materials is limited, non-exclusive, royalty-free and non-transferable.
2. Customer agrees to comply with the Guidelines, including, but not limited to, the standards and guidelines therein for usage and presentation of the Marks and Materials and the approval process set forth therein for materials distributed by Customer using the Marks and/or Materials. Customer agrees that any use of the Marks and/or Materials shall be in full compliance with this agreement, the Guidelines and in accordance with any further restrictions set forth in the partner portal on IDNOWMarketingToolkit.com. Customer agrees not to modify the Materials in any manner other than as expressly allowed in the Guidelines. This agreement is expressly limited to the permitted uses of the Marks and Materials set forth in paragraph 1 above. Permission for other uses of the Marks or Materials requires Abbott’s prior, written permission specific to the additional uses.
3. Customer hereby acknowledges and agrees that Abbott is the sole and exclusive owner of all right, title and interest in and to the Marks and that any goodwill developed through the use of the Marks shall inure solely to the benefit of Abbott. Customer shall not contest, challenge, or make any claim adverse to Abbott’s ownership of or the validity of the Marks, any future application for registration or registration thereof, as applicable, or any rights of Abbott therein, or which, directly or indirectly, may impair any part of Abbott’s right, title, and interest therein. Title to and ownership of any and all derivative works including the Marks and Materials shall at all times remain the property of Abbott and/or its licensors (“Derivative Works”), and Customer irrevocably assigns to Abbott and/or its licensors any right, title and interest it may have in and to the Derivative Works. To the extent Customer cannot assign to Abbott and/or its licensors any right, title and interest in and to the same, Customer hereby grants to Abbott and/or its licensors an exclusive, perpetual, royalty-free, transferable, irrevocable, worldwide license (with rights to sublicense through multiple tiers of sublicenses) to utilize such non-assignable rights, title and interest. To the extent Customer cannot assign or license to Abbott and/or its licensors any such right title or interest, Customer irrevocably waives and agrees never to assert a claim against Abbott or its licensors for such non-assignable and non-licensable right, title and interest. To the fullest extent permitted by law, Customer (including its employees) hereby waives and releases all droit moral and other moral rights in any Derivative Works as Customer may possess by virtue of any country or state laws of attribution, authorship and integrity. Customer hereby covenants not to assert any claim based upon such moral rights against Abbott, its subsidiaries, affiliates, officers, or employees. Title to and ownership of trademarks or materials previously developed, owned or copyrighted by Customer and not originated or developed under this agreement (“Pre-existing Materials”) shall at all times remain the property of Customer.
4. Customer shall promptly advise Abbott of any instances of possible infringement or other violation of Abbott’s rights in the Marks and/or Materials that come to its attention during the term of this agreement. Customer agrees to fully cooperate with Abbott regarding any action Abbott may take with respect to such infringement or violation. Abbott shall have the exclusive right, exercisable in its sole and unlimited discretion, to institute in its own name and to control all actions against third parties relating to Abbott’s rights, at Abbott’s expense. Abbott shall be entitled to receive and retain all amounts awarded, if any, as damages, profits or otherwise in connection with such actions.
5. Customer agrees to indemnify and hold Abbott, its subsidiaries, affiliates, officers, employees and advertising agencies, harmless from and against all claims, liabilities, damages and expenses of any nature, including reasonable attorneys’ fees, which may result from or in any way be associated with: (a) any breach by Customer of this agreement, or (b) any act, error or omission of Customer in fulfillment of its obligations under this agreement or with respect to the use of the Marks, Materials, or any Derivative Works including, but not limited to, use of the Marks, Materials, and/or Derivative Works inconsistent with the terms and conditions of this agreement. The indemnification contained in this paragraph 5 shall survive the expiration or termination of this agreement for any reason whatsoever.
6. Abbott shall defend and/or settle third party claims brought against Customer, its officers, directors, and employees asserting that the Marks and/or Materials when used as permitted by this agreement, infringe any rights of such third party and shall pay any damages finally awarded in connection therewith, provided that, Customer promptly notifies Abbott in writing of such claims, gives Abbott sole control over the defense and/or settlement of such claims, and provides Abbott with full information and reasonable assistance in the defense of such claims. The indemnification contained in this paragraph 6 shall survive the expiration or termination of this agreement for any reason whatsoever.
THE FOREGOING STATES THE ENTIRE LIABILITY AND OBLIGATIONS OF ABBOTT AND THE EXCLUSIVE REMEDY OF CUSTOMERWITH RESPECT TO ANY ALLEGED INTELLECTUAL PROPERTY INFRINGEMENT.
7. This agreement shall commence on acceptance by Customer and continue until terminated according to the terms set forth herein (“Term”).
8. If Customer fails to completely abide by any term or condition of this agreement or otherwise commits a breach of this agreement, in addition to other remedies available to Abbott, Abbott shall be entitled to immediately terminate this agreement by notice to Customer.
9. Abbott may terminate this agreement or some or all of the licenses granted hereby at any time for any reason whatsoever upon written notice to Customer.
10. It is expressly understood that the limited right to use the Marks shall expire immediately upon termination or expiration of this agreement or upon the expiration or termination of the license to use the Marks granted herein. It is expressly understood that the limited right to use the Materials shall expire immediately upon termination or expiration of this agreement or upon the expiration or termination of the license to use the Materials granted herein. Immediately upon termination or expiration of this agreement and/or any of the licenses herein, Customer shall cease use of the Marks and/or Materials for which the licenses have expired or been terminated, delete any of Customer’s remaining downloads of or including the Marks and/or Materials, and return to Abbott any printed or other Campaign materials not yet distributed.
11. Customer acknowledges that any use of the Marks and/or Materials by Customer not expressly permitted under this agreement including, without limitation, Customer’s failure to cease the use of the Marks and/or Materials at the expiration or earlier termination of this agreement, will cause irreparable harm and significant injury to Abbott to an extent that may be extremely difficult to ascertain. Accordingly, Customer agrees that Abbott will have, in addition to any other rights or remedies available to it at law or in equity, the right to seek injunctive relief, including without limitation, an injunction against any unauthorized use of the Marks and/or Materials by Customer.
12. This agreement, and any disputes arising out of or in connection with this agreement, shall be governed by and construed in accordance with the laws of Illinois, excluding its rules governing conflicts of laws and constitutes the entire understanding between Abbott and Customer with respect to the subject matter hereof.
13. Any issue or dispute shall be discussed in good faith by the parties, and the parties shall attempt to resolve such issue or dispute between themselves; however, if any controversy or claim arising out of, or relating to, this Agreement or the breach thereof cannot be resolved by the parties, the Parties agree that any such dispute shall be resolved by the Alternative Dispute Resolution (ADR) provisions set forth herein.
To begin an ADR proceeding, a Party shall provide written notice to the other Party of the issues to be resolved by ADR. Within fourteen (14) days after its receipt of notice of ADR, the other Party may, by written notice, add additional issues to be resolved. Within twenty-one (21) days following receipt of the original ADR notice, the Parties shall select a mutually acceptable independent, impartial and conflicts-free neutral to preside over the proceeding. If the Parties are unable to agree on a mutually acceptable neutral within such period, each Party will select one independent, impartial and conflicts-free neutral and those two neutrals will select a third independent, impartial and conflicts-free neutral within ten (10) days thereafter. None of the neutrals selected may be current or former employees, officers or directors of either Party, its subsidiaries or affiliates. The Parties shall convene in a location mutually agreed upon to conduct a hearing before the neutral no later than fifty-six (56) days after selection of the neutral (unless otherwise agreed upon by the Parties).
The ADR Process shall include a pre-hearing exchange of exhibits and summary of witness testimony upon which each Party is relying, proposed rulings and remedies on each issue, and a brief in support of each Party’s proposed rulings and remedies not to exceed twenty (20) pages. The pre-hearing exchange must be completed no later than ten (10) days prior to the hearing date. Any disputes relating to the pre-hearing exchange shall be resolved by the neutral. No discovery shall be permitted by any means, including depositions, interrogatories, requests for admissions, or production of documents.
The hearing shall be conducted on two (2) consecutive days, with each Party entitled to five (5) hours of hearing time to present its case, including cross-examination. The neutral shall adopt in its entirety the proposed ruling and remedy of one of the Parties on each disputed issue but may adopt one Party’s proposed rulings and remedies on some issues and the other Party’s proposed rulings and remedies on other issues. The neutral shall rule within fourteen (14) days of the hearing, shall not issue any written opinion, and shall not refer any portion of the dispute to mediation without the Parties prior, written consent. The rulings of the neutral shall be binding, and non-appealable and may be entered as a final judgment in any court having jurisdiction.
The neutral(s) shall be paid a reasonable fee plus expenses. These fees and expenses, along with the reasonable legal fees and expenses of the prevailing party (including all expert witness fees and expenses), the fees and expenses of a court reporter, and any expenses for a hearing room, shall be paid as follows:
(a) If the neutral(s) rule(s) in favor of one party on all disputed issues in the ADR, the losing party shall pay 100% of such fees and expenses.
(b) If the neutral(s) rule(s) in favor of one party on some issues and the other party on other issues, the neutral(s) shall issue with the rulings a written determination as to how such fees and expenses shall be allocated between the parties. The neutral(s) shall allocate fees and expenses in a way that bears a reasonable relationship to the outcome of the ADR, with the party prevailing on more issues, or on issues of greater value or gravity, recovering a relatively larger share of its legal fees and expenses.
To the extent not contradicted by the Parties’ contractual agreement regarding ADR rules and procedures contained herein, the rules governing Fast Track Arbitration of the CPR institute for Dispute Resolution (“CPR”) 366 Madison Avenue, 14th floor, New York, NY 10017 shall apply.
