SPDR SUBLICENSE
AGREEMENT
This
Sublicense Agreement (this “ Agreement ”),
entered into as of May 20, 2008 (the “ Effective
Date ”), is made by and among STATE STREET CORPORATION, a
Massachusetts domestic corporation, and STATE STREET GLOBAL
MARKETS, LLC, a Delaware limited liability company and an affiliate
of State Street Corporation (together, “ State Street
”), on the one hand, and WORLD GOLD COUNCIL, a not-for-profit
association organized under Swiss law, and WORLD GOLD TRUST
SERVICES, LLC, a Delaware corporation and wholly-owned subsidiary
of World Gold Council (together, “ WGT ”), on
the other, as well as STANDARD & POORS, a division of The
McGraw-Hill Companies, Inc., a New York corporation, having an
office at 55 Water Street, New York, New York 10041 (“
S&P ”) with respect to specific matters set forth
herein.
WHEREAS,
the streetTRACKS ® Gold Trust, to be known as the SPDR
® Gold Trust (the “ Trust ”),
was established pursuant to the Trust Agreement entered into by and
between WGT and The Bank of New York (“ BONY ”)
dated as of November 14, 2004 (the “ Trust
Agreement ”), pursuant to which the Trust issues shares
(the “ Shares ”) which represent units of
fractional undivided beneficial interest in and ownership of the
Trust upon the deposit of gold bullion by Authorized Participants
(as defined in the Trust Agreement) with HSBC Bank USA, as
custodian of the Trust;
WHEREAS,
State Street and WGT entered into a Marketing Agent Agreement dated
as November 14, 2004 (the “ Marketing Agent
Agreement ”) whereby WGT designated State Street as the
exclusive marketing agent of the Trust;
WHEREAS,
State Street Global Advisors, a division of State Street Bank and
Trust Company, a Massachusetts trust company with offices at One
Lincoln Street, Boston, Massachusetts 02111 (on behalf of itself
and its affiliates) and S&P entered into that certain SPDR
Trademark License Agreement dated as of November 29, 2006, as
amended (the “ SPDR License Agreement
”);
WHEREAS,
pursuant to the SPDR License Agreement, State Street has the right
to use the “SPDR” mark (the “ SPDR Mark
”);
WHEREAS,
State Street desires to sublicense to WGT certain rights to use the
SPDR Mark solely for use in connection with the Trust, which rights
WGT will sublicense to State Street to perform services under the
Marketing Agent Agreement.
NOW,
THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the Parties (as
defined below) agree as follows:
For
the purposes of this Agreement, the following terms have the
following meanings:
(a)
“ Affiliate ” means, with respect to any Person,
any other Person that, directly or indirectly through one or more
intermediaries, Controls, or is Controlled by, or is under common
Control with, such Person.
(b)
“ Agreement ” has the meaning set forth in the
preamble.
(c)
“ BONY ” has the meaning set forth in the
recitals.
(d)
“ Confidential Information ” has the meaning set
forth in Section 10(b).
(e)
“ Control ” means, with respect to any Person,
the possession, directly or indirectly, of the power to direct or
cause the direction of the management or policies of a Person,
whether through the ownership of voting securities, by contract or
otherwise.
(f)
“ Effective Date ” has the meaning set forth in
the preamble.
(g)
“ Indemnified Party ” has the meaning set forth
in Section 8(b).
(h)
“ Indemnifying Party ” has the meaning set forth
in Section 8(b).
(i)
“ Informational Materials ” means all
prospectuses, registration statements and any other similar
informational materials (including, but not limited to, documents
required to be filed with governmental or regulatory agencies)
(collectively, “ Category 1 Informational Materials
”), and all advertisements, brochures, Web sites, sales,
marketing, and promotional and any other similar informational
materials (collectively, “ Category 2 Informational
Materials ”) relating to Shares that in any way use or
refer to the SPDR Mark. “ Informational Materials
” shall not include general references to the Shares in
materials that are not specifically related to the Shares and do
not market, sell or promote the Shares, including, without
limitation, materials prepared solely for internal use by WGT, its
Affiliates and sublicensees, press or analyst briefing materials
and annual reports.
(j)
“ License ” has the meaning set forth in
Section 2(a).
(k)
“ Losses ” has the meaning set forth in
Section 8(a).
(l)
“ Marketing Agent Agreement ” has the meaning
set forth in the recitals.
(m)
“ Naming Convention ” means use of both the SPDR
Mark and one of (i) the name or (ii) the abbreviation of
the name, of the Shares or the Trust, including without limitation
in the following forms “SPDR ® Gold Trust” and “SPDR
® Gold Shares”.
(n)
“ Party ” or “ Parties ”
means State Street, WGT and/or, where applicable,
S&P.
(o)
“ Person ” shall be construed broadly and shall
include an individual, a partnership, a corporation, a limited
liability company, an association, a joint stock company,
a
2
trust, a joint
venture, an unincorporated organization or another entity,
including a Governmental Entity (or any department, agency or
political subdivision thereof.
(p)
“ Proceeding ” has the meaning set forth in
Section 8(b).
(q)
“ Shares ” has the meaning set forth in the
recitals.
(r)
“ SPDR Mark ” has the meaning set forth in the
recitals.
(s)
“ State Street ” has the meaning set forth in
the Preamble.
(t)
“ Trust ” has the meaning set forth in the
recitals.
(u)
“ Trust Agreement ” has the meaning set forth in
the recitals.
(v)
“ WGT ” has the meaning set forth in the
Preamble.
(a) Subject
to the terms and conditions of this Agreement, State Street hereby
grants to WGT a worldwide (subject to Section 3(d)),
non-exclusive, nontransferable sublicense (the “
License ”) to use the SPDR Mark as follows
to:
(i) use
the SPDR Mark in connection with establishing, organizing,
structuring, sponsoring, and managing the Trust;
(ii) use
the SPDR Mark in connection with the issuance, sale,
exchange-trading, marketing and promotion of the Shares;
(iii) use
the SPDR Mark as part of the names of the Shares;
(iv) use
the SPDR Mark in connection with making such disclosure about WGT,
the Trust and the Shares as WGT deems necessary or desirable under
any applicable laws, rules, or regulations, or any provisions of
this Agreement; and
(v) use
the SPDR Mark in connection with the listing of the Shares on
exchanges.
(b) WGT
shall not use the SPDR Mark for any purpose other than as set forth
in Section 2(a), except as otherwise agreed to in writing by
the Parties after the Effective Date. Except for the license
specifically provided herein, this Agreement shall not transfer to
WGT any further right to, or interest in, the SPDR Mark. It is
further expressly understood that this Agreement does not convey
any rights to, or interest in, any other S&P mark or any
S&P index.
(c) All
use of the SPDR Mark under the Trademark License and all goodwill
associated therewith shall inure to the exclusive benefit of State
Street or its licensors. WGT shall, at State Street’s
expense, fully cooperate with and assist State Street in the
prosecution or
3
maintenance of
any trademark, service mark, domain name or copyright application
and ensuing registration concerning the SPDR Mark and shall execute
any documents State Street shall reasonably request in connection
therewith.
(d)
WGT’s Limited Right to Sublicense . The License
granted herein shall include the limited right of WGT to grant
sublicenses to its Affiliates, partners, joint venturers, trustees,
distributors, custodians and agents, including without limitation
State Street as marketing agent (each, a “ Sublicensee
”), subject to the restrictions of this Agreement, and solely
in connection with such Sublicensee’s performance of its
services for WGT related to the activities of WGT permitted
hereunder. In addition, each Sublicensee must be approved in
writing in advance by State Street and shall include provisions in
all such sublicenses that: (i) are identical in substance to
Sections 3, 4, 5, 6 and 7(c) herein (with the references in
such sublicenses to “State Street” &
“S&P” therein to continue to signify the State
Street & S&P as defined herein with respect to
Sections 3, 4 & 7(c)); (ii) require WGT to terminate
such sublicenses, without penalty, if this Agreement is terminated
for any reason; (iii) obligate WGT to give the Sublicensee
notice if this Agreement is terminated for any reason; and
(iv) entitle State Street herein to give such notice in the
event that the WGT fails to do so.
(e) ALL
RIGHTS NOT SPECIFICALLY AND EXPRESSLY GRANTED TO WGT IN THIS
SECTION 2 ARE HEREBY RESERVED TO STATE STREET.
3. QUALITY
CONTROL /ENFORCEMENT .
(a)
Protection of Reputation . WGT shall use its best efforts
not to use the SPDR Mark in a manner that could reasonably be
expected to damage the reputation or goodwill associated with the
SPDR Mark, or do or cause to be done any act or thing disparaging,
impairing or diluting the SPDR Mark.
(b)
Review . WGT shall submit to State Street’s for its
review and approval all Informational Materials. State
Street’s right of approval under this Agreement will be
restricted to any description of State Street and the use and
description of the SPDR Mark. Once Informational Materials have
been approved by State Street, subsequent Informational Materials
that are updating data need not be submitted for further review and
approval by State Street unless (i) the use of the SPDR Mark is
altered in any material respect, or (ii) the language or use
of the required disclaimers or proprietary notices is altered in
any respect (material or otherwise). It is understood and agreed
that any Informational Materials provided to WGT by State Street
shall be deemed approved by State Street.
(c)
WGT Support . WGT shall promptly, at its own expense, take
such actions and execute such additional documents and instruments
reasonably requested by State Street or S &P to assist S&P
with the registration, maintenance and filings of the SPDR Mark.
For the avoidance of doubt, no registered user or similar
agreements filed by WGT shall be deemed to transfer to WGT any
right, title or interest in the SPDR Mark.
(d)
Territorial Limitations . WGT shall not use the SPDR Mark in
(i) any jurisdiction where the SPDR Mark has not been
registered in the relevant classes or (ii) a
4
jurisdiction
where entry of WGT as a registered or authorized user is required,
prior to the execution of an appropriate registered user agreement
or similar agreement and the filing thereof with the appropriate
governmental agency (except where failure to do so prior to use
shall nor have a material adverse effect of the SPDR Mark);
provided, however, that notwithstanding the foregoing, upon written
approval from State Street, WGT may use the SPDR Mark in certain
jurisdictions after filing of an application for registration. The
jurisdictions in which WGT currently may use the SPDR Mark are
listed in Exhibit A. In the event WGT wishes to use the SPDR
Mark in jurisdictions not listed in Exhibit A, WGT shall
submit to State Street a written request for the addition of such
territory, and State Street will, at WGT’s expense, undertake
commercially reasonable efforts to permit such expansion, subject
to the terms and conditions of the SPDR License.
(e)
Maintenance and No Challenge .
(i) WGT
shall take such actions and execute such instruments as State
Street or S&P may from time to time reasonably request with
regard to the maintenance of the SPDR Mark and the registrations
thereof, including, but not limited to, the use by WGT of the
following proprietary notice when referring to the SPDR Mark in any
Informational Material relating to the Shares:
“SPDR” is a trademark of The McGraw
Hill Companies, Inc. and has been licensed for use by [WGT
entity].
or such similar
language as may be approved in advance by State Street.
(ii) WGT
shall not at any time during the Term, nor at any time thereafter,
for as long as S&P shall own rights in the SPDR Mark, do or
cause to be done any act or thing challenging the ownership,
validity or enforceability of the SPDR Mark.
(f)
WGT Share Names . WGT shall not have the right to file
applications for registration on behalf of itself or any third
party for any Shares names that include the SPDR Mark. WGT hereby
disclaims any right, title and interest to the SPDR Mark in Shares
names.
(i) WGT
shall not create composite trademarks consisting of the SPDR Mark
in combination with any other word, phrase, symbol or device
without State Street’s and S&P’s prior written
authorization. Nothing in this Section 3 shall prevent WGT
from creating and using Share or Trust names in accordance with the
Naming Convention and the terms and conditions of this Agreement.
WGT hereby disclaims any right, title and interest to the SPDR Mark
in any composite marks approved by State Street and S&P in
accordance with the foregoing.
(ii) WGT
agrees not to: (i) use or register in any jurisdiction any
mark that is confusingly similar to, or consisting in whole or in
part of, the SPDR Mark or (ii) register the SPDR Mark in any
jurisdiction, without in each case the express prior written
consent of S&P and State Street.
5
(iii) If
WGT creates, uses or registers any mark in contravention of this
Section 3(g), the Parties agree (without limitation of other
remedies) WGT hereby assigns all right, title, and interest in and
to such mark to S&P and all goodwill, right, title or interest
that might be acquired by the use of such mark by WGT shall inure
to the sole benefit of S&P.
(h)
Infringement of the Exclusive Rights Granted to WGT and
Enforcement . Upon written notice from S&P or State Street
to WGT that, in the good faith opinion of S&P or State Street
based upon the advice of its trademark counsel, use of the SPDR
Mark would result in material potential trademark liability to a
third party on the part of S&P, State Street, or WGT in a
particular jurisdiction, WGT shall, within a commercially
reasonable period of time, not to exceed ninety (90) days, cease
use of the SPDR Mark in such jurisdiction to the extent necessary
to avoid such trademark liability on the part of S&P, State
Street or WGT. If WGT has questions or concerns about such notice,
senior representatives of the Parties, within ten (10) days
after receipt of such notice, shall confer in good faith and
endeavor to agree on a course of action in such jurisdiction. In
the event that the Parties cannot agree on a course of action, the
Parties shall, within ten (10) days thereafter, select a
mediator from the INTA Panel of Neutrals and shall engage in
mediation in good faith for ten (10) days and endeavor to
agree on a course of action in such jurisdiction. In the event that
the Parties cannot, through mediation, agree on a course of action,
WGT shall, within a commercially reasonable period of time, not to
exceed ninety (90) days from the end of such (10) day
mediation period, cease use of the SPDR Mark in such jurisdiction
to the extent necessary to avoid such trademark liability on the
part of S&P, State Street or WGT.
(i)
Notification of Infringement . WGT shall promptly
(a) notify State Street of any potential or actual
infringement by a third party of the SPDR Mark of which WGT becomes
aware, and (b) provide to State Street all evidence of such
infringement in WGT’s possession, custody or control. State
Street shall have the sole right, but not the obligation, to
initiate any legal action at its own expense against such
infringement and to recover damages and enforce any injunction
granted as a result of any judgment in State Street’s favor.
State Street shall have sole control over any such action,
including, without limitation, the sole right to settle and
compromise such action. In the event of a dispute between State
Street and any third party regarding the infringement, validity or
enforceability of the SPDR Mark, WGT agrees, at State
Street’s expense, to do all things reasonably requested by
State Street to assist State Street in connection with such
dispute.
|
