Exhibit 10.2
EXECUTION COPY
TRADEMARK AND TRADE NAME LICENSE
AGREEMENT
This TRADEMARK AND TRADE NAME
LICENSE AGREEMENT is dated as of October 10, 2008 (the
“Agreement”), between Misys plc, a public limited
company organized under the laws of England, having a principal
place of business at One Kingdom Street, London W2 6BL, United
Kingdom (“Licensor”), and Misys Healthcare Systems,
LLC, a North Carolina limited liability company, having its
principal place of business at 8529 Six Forks Road, Raleigh, North
Carolina 27615 (“Licensee”). Licensor and Licensee are
referred to herein collectively as “Parties” and each
individually as a “Party”.
W I T N E S
S E T H :
WHEREAS, Licensor is the owner of
the trade name “MISYS” (the “Licensed
Name”) and certain trademarks and service marks consisting of
or incorporating the designation “MISYS,” identified in
the schedule attached hereto as Schedule A, and has applied for and
registered such trademarks and service marks in the United States
(the “Territory”) (such trademarks and service marks
and such registrations and applications, together with any and all
common law rights pertaining thereto, are referred to collectively
as the “Licensed Marks”) for use in Licensor’s
business;
WHEREAS, Licensor is the owner of
the domain names listed on Schedule B hereto (the “Licensed
Domain Names” and together with the Licensed Name and the
Licensed Marks, the “Licensed Property”);
WHEREAS, at the Closing (as defined
in the Agreement and Plan of Merger, dated as of March 17,
2008, by and among Licensor, Licensee, Allscripts Healthcare
Solutions, Inc., a Delaware corporation, having its principal place
of business at 222 Merchandise Mart, Suite 2024, Chicago, IL 60654
(“Allscripts”) and Patriot Merger Company, LLC, a North
Carolina limited liability company (the “Merger
Agreement”)), Licensor will own, directly or indirectly,
54.5% of the equity interests in Allscripts on a fully-diluted
basis (as determined pursuant to the Merger Agreement);
WHEREAS, Licensor previously
licensed Licensee the right to use the Licensed Marks in connection
with Licensee’s healthcare information technology products
and services, pursuant to the Trademark License Agreement,
effective as of May 7, 2004 between Licensor and Licensee (the
“Existing License”), and Patriot Merger Company, LLC, a
wholly-owned subsidiary of Allscripts is merging as of the date
hereof with and into Licensee with Licensee as the surviving
company (the “Merger”);
WHEREAS, entering into this
Agreement is a condition to effecting the Merger;
WHEREAS, in connection with the
Merger, the Parties have decided to replace the Existing License
with this Agreement to more clearly set forth the rights and
obligations of each Party;
WHEREAS, Licensee desires to use,
and Licensor is willing to license Licensee to use, the Licensed
Marks in connection with Licensee’s healthcare information
technology products and services and such other products and
services as the Parties may agree (such products and services
together with any permitted sublicensee’s healthcare
information technology products and services, the “Products
and Services”), to use the Licensed Name in connection with
Licensee’s business of providing Licensee’s healthcare
information technology products and services (the “Licensed
Business”), and to use the Licensed Domain Names in
connection with the Licensed Business under the terms and
conditions set forth herein.
NOW, THEREFORE, for good and
valuable consideration, the receipt and adequacy of which are
hereby acknowledged, the Parties agree as follows:
1. Grant of License
.
1.1. Grant of Trademark
License . Subject to the terms and conditions contained herein,
Licensor hereby grants to Licensee, and Licensee hereby accepts, a
nonexclusive, nonassignable, royalty-free license to use the
Licensed Marks in connection with the marketing, promotion,
advertisement, distribution and sale of the Products and Services
of Licensee in the Territory.
1.2. Grant of Trade Name
License . Subject to the terms and conditions contained herein,
Licensor hereby grants to Licensee, and Licensee hereby accepts, a
nonexclusive, nonassignable, royalty-free license to use the
Licensed Name in its corporate name and trade name solely in the
form of “Allscripts Misys” with or without one or more
additional words (e.g., “Allscripts-Misys Healthcare
Solutions”) and a corporate-form identifier such as
“Inc.” or “LLC”, as applicable, in
connection with the operation of the Licensed Business in the
Territory.
1.3. Grant of License to Domain
Names . Subject to the terms and conditions contained herein,
Licensor hereby grants to Licensee a nonexclusive, nonassignable,
royalty-free license to use the Licensed Domain Names in connection
with the operation of the Licensed Business in the Territory. The
Parties agree that the ability of a third party to access the
websites operated under the Licensed Domain Names from outside of
the Territory shall not be deemed a breach of this Agreement,
provided such websites are not targeted to persons or entities
outside of the Territory and to the extent that a person or entity
is identified as being outside of the Territory, Licensee does not
provide Products or Services and does not permit any Sublicensee to
provide Products or Services outside of the Territory. In the event
of any doubt as to where such person or entity is located, Licensee
shall, and shall cause any Sublicensee to, obtain written
confirmation from such person or entity that it is located and
operating in the Territory. Licensor shall designate a person
specified by Licensee as the “technical
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contact” for each Licensed Domain Name to
the extent necessary to permit access to the associated
website.
1.4. Restrictions on Use
.
(a) Except for use of
Allscripts’ color scheme of red, black and grey, which may be
used for the Licensed Marks other than “Misys” used
alone, “Misys” in combination with the “M”
logo and the “M” logo, Licensee shall not change or
modify the Licensed Property, or create any design variation of the
Licensed Property, without the prior written consent of
Licensor.
(b) Except for the word
“Allscripts”, Licensee shall not join any name, mark or
logo with the Licensed Property so as to form a composite trade
name or mark, without obtaining the prior written consent of
Licensor.
(c) Licensee shall not use any other
name or mark that is confusingly similar to the Licensed Property,
provided , however , that use of the word
“Allscripts” with the secondary words in the Licensed
Marks (e.g., Tiger), with or without the word “Misys”,
will not be considered confusingly similar.
1.5. Changes in Licensed
Marks . Upon written notice to Licensee, Licensor may, from
time to time in its sole discretion, elect to ( a
) discontinue any Licensed Marks or Licensed Domain Names
and/or ( b ) replace any Licensed Marks or Licensed
Domain Names with or use new or different trademarks or service
marks or domain names (“New Marks”) with respect to the
Products and Services or the Licensed Business. Upon such election,
any such New Marks may be designated Licensed Property by Licensor
and if designated as such shall be subject to the terms of this
Agreement, and Schedule A shall be deemed amended automatically to
include such New Marks. In the event Licensor discontinues any
Licensed Property or introduces a New Mark, Licensee shall have a
reasonable period of time, not to exceed six (6) months, to
cease use of such discontinued Licensed Property or begin use of
such New Mark.
1.6. Sublicenses .
(a) Subject to the terms and
conditions contained herein, Licensee may grant a sublicense of its
rights hereunder to any Affiliate (defined as any entity that, at
the time of determination, directly or indirectly, through one or
more intermediaries, controls, is controlled by, or is under common
control with, Licensee, whether by contract, possession (directly
or indirectly) of power to direct or cause the direction of the
management or policies of such entity or the ownership (directly or
indirectly) of securities or other interests in such entity) (each
permitted sublicensee, a “Sublicensee”) as
follows:
(i) Licensee may grant a sublicense
to each Sublicensee to use the Licensed Marks in connection with
such Sublicensee’s healthcare information technology products
and services in the Territory;
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(ii) Licensee may grant to each
Sublicensee a sublicense to use the Licensed Name solely in the
form(s) set forth on Schedule C as Schedule C may be amended from
time to time by mutual agreement of Licensor and Licensee and
solely in connection with the operation of such Sublicensee’s
healthcare information technology products and services business in
the Territory (each, a “Sublicensee
Business”);
(iii) Licensee may grant to each
Sublicensee a sublicense to use the Licensed Domain Names in
connection with its Sublicensee Business in the
Territory.
(iv) The grant of any sublicense
hereunder shall be conditioned on such Sublicensee having first
executed a copy of the Sublicensee Acknowledgement set forth as
Exhibit A.
(b) Any such sublicense shall be
made on, and subject to, all applicable terms and conditions of
this Agreement with respect to the Licensed Property, including but
not limited to the following:
(i) Any such sublicense shall
contain a provision that the sublicense will, at Licensor’s
choice, either (A) be deemed automatically assigned by
Licensee to Licensor or (B) terminate automatically upon any
termination of this Agreement.
(ii) Licensee shall (A) notify
Licensor promptly in writing upon becoming aware that any
Sublicensee’s use of the Licensed Property deviates from the
Quality Standards in any material respect, and (B) promptly
undertake commercially reasonable efforts to cause such defective
or nonconforming use to be cured or, if not curable,
discontinued.
(iii) Licensor shall be a
third-party beneficiary of such sublicense.
(iv) Licensor shall have the right
to enforce the terms and conditions of, and terminate, such
sublicense, whether as a party thereto or as a third-party
beneficiary.
(c) In addition to the right to
grant sublicenses pursuant to this Section 1.6, Licensee and
each Sublicensee shall be permitted to allow any reseller or
distributor of the Products and Services to use the Licensed Marks
and Licensed Domain Names solely to the extent necessary to perform
its obligations under the relevant agreement with Licensee or such
Sublicensee. Each such agreement shall contain restrictions on the
use of the Licensed Marks and Licensed Domain Names consistent with
the restrictions contained herein, including but not limited to
those in Section 1.6(b) (other than (b)(i) and (b)(iv)). A
copy of each such agreement shall be provided to Licensor for
review and approval prior to execution.
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(d) Notwithstanding the grant of any
sublicense hereunder, Licensee shall remain liable for any breach
or default of the applicable terms and conditions of this Agreement
by any of its Sublicensees, resellers or distributors with respect
to the Licensed Property.
(e) No such Sublicensee, reseller or
distributor shall be permitted to sublicense to any other person or
entity the rights granted to it with respect to the Licensed
Property.
(f) A copy of each sublicense shall
be provided to Licensor for review and approval prior to
execution.
1.7. Covenant . So long as
this Agreement is effect, ( i ) Licensor will not use
the product marks included in the Licensed Marks (e.g., Misys
Tiger) on healthcare information technology products and services
within the scope of the Licensed Business in the Territory and (
ii ) other than with respect to activities of the
Licensor’s open source division, Licensor will not use the
“Misys” mark or the “M” logo on healthcare
information technology products and services within the scope of
the Licensed Business in the Territory. For the avoidance of doubt,
Licensor’s open source division may use the
“Misys” mark, the “M” logo and other marks
not included in the Licensed Marks on healthcare information
technology products and services within the scope of the Licensed
Business in the Territory.
2. Quality Standards and
Control .
2.1. Quality Control . At all
times, Licensee shall use and shall cause each Sublicensee to use
the Licensed Property only in accordance with such quality
standards and specifications as may be established by Licensor and
communicated to Licensee in writing from time to time (the
“Quality Standards”), including but not limited to the
Misys Trademark Guidelines attached hereto as Exhibit B. Without
limiting the foregoing, the Products and Services shall always be
manufactured or performed in a manner that reflects favorably on
the Licensed Property and does not tarnish them or the reputation
of Licensor. With respect to the name and mark “Misys”
and the “M” logo, Licensor may establish additional
Quality Standards that shall be communicated to Licensee in writing
from time to time.
2.2. Use of the Licensed
Marks . All use of the Licensed Marks made hereunder shall
faithfully reproduce the design and appearance of the Licensed
Marks as reflected on Schedule A.
2.3. Inspection and Approval
. Licensor or its designated representative shall have the right at
any time during normal business hours to inspect and approve, which
approval shall not be unreasonably withheld, any and all uses of
the Licensed Marks to confirm that such use is in conformance with
the terms of this Agreement. From time to time, upon
Licensor’s reasonable request in writing, Licensee shall, at
Licensee’s expense, ( a ) provide Licensor with
representative samples of the ways in which the Licensed Marks are
then being used (or photographs depicting the same), and
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( b ) permit Licensor to inspect
Licensee’s places of business where the Licensed Marks are
used, in each case for Licensor’s inspection and approval of
such uses.
2.4. Deficiencies . If
Licensor reasonably believes that the Licen
