Exhibit 10.3
EXECUTION COPY
TRADEMARK AND TRADE NAME
SUBLICENSE AGREEMENT
This TRADEMARK AND TRADE NAME
SUBLICENSE AGREEMENT is dated as of October 10, 2008 (the
“Sublicense Agreement”), between 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”), and Allscripts
Healthcare Solutions, Inc., a Delaware corporation, having its
principal place of business at 222 Merchandise Mart Plaza, Suite
2024, Chicago, Illinois 60654 (“Sublicensee” or
“Allscripts”). Licensee and Sublicensee are referred to
herein collectively as “Parties” and each individually
as a “Party”. All capitalized terms used herein and not
otherwise defined have the respective meanings given to them in the
License Agreement (as defined below) or the Merger Agreement (as
defined below).
W I T N E S
S E T H :
WHEREAS, Misys plc, a public limited
company organized under the laws of England
(“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, Sublicensee 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, as a condition to effecting
the Merger, Licensor and Licensee entered into a Trademark and
Trade Name License Agreement of even date herewith (the
“License Agreement”), pursuant to which Licensor
granted Licensee use of the Licensed Marks, the Licensed Name and
the Licensed Domain Names;
WHEREAS, pursuant to
Section 1.6 of the License Agreement, Licensee may grant a
sublicense of its rights under the License Agreement to any
Affiliate of Licensee;
WHEREAS, Sublicensee is an Affiliate
of Licensee and wishes to use the Licensed Name, Licensed Marks and
Licensed Domain Names under the terms and conditions set forth
herein; and
WHEREAS, in accordance with the
License Agreement, Sublicensee has executed a Sublicensee
Acknowledgement and Licensor has reviewed and approved this
Sublicense Agreement prior to the Parties’ execution
hereof;
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,
Licensee hereby grants to Sublicensee, and Sublicensee hereby
accepts, a nonexclusive, nonassignable, nonsublicenseable,
royalty-free license to use the Licensed Marks in connection with
the marketing, promotion, advertisement, distribution and sale of
Sublicensee’s healthcare information technology products and
services in the Territory (the “Sublicensee Products and
Services”).
1.2. Grant of Trade Name
License . Subject to the terms and conditions contained herein,
Licensee hereby grants to Sublicensee, and Sublicensee hereby
accepts, a nonexclusive, nonassignable, nonsublicensable,
royalty-free license to use the Licensed Name in its corporate name
and trade name solely in the form of “Allscripts-Misys
Healthcare Solutions, Inc.” and solely in connection with the
operation of such Sublicensee’s healthcare information
technology products and services business in the Territory (the
“Sublicensee Business”).
1.3. Grant of License to Domain
Names . Subject to the terms and conditions contained herein,
Licensee hereby grants to Sublicensee a nonexclusive,
nonassignable, nonsublicensable, royalty-free license to use the
Licensed Domain Names in connection with the operation of the
Sublicensee 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 Sublicense 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, Sublicensee does not provide
Sublicensee Products or Services outside of the Territory. In the
event of any doubt as to where such person or entity is located,
Sublicensee shall obtain written confirmation from such person or
entity that it is located and operating in the Territory. Licensee
shall designate a person specified by Sublicensee as the
“technical 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
Sublicensee’s 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, Sublicensee shall not change
or
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modify the Licensed Property, or create any
design variation of the Licensed Property, without the prior
written consent of Licensee.
(b) Except for the word
“Allscripts”, Sublicensee 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
Licensee.
(c) Sublicensee 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 or
Licensed Domain Names . Upon written notice to Sublicensee,
Licensee 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 Licensee and if designated as such shall be subject to
the terms of this Sublicense Agreement, and Schedule A shall be
deemed amended automatically to include such New Marks. In the
event Licensee discontinues any Licensed Property or introduces a
New Mark, Sublicensee 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. Resellers and Distributors
of Sublicensee Products and Services . Sublicensee shall be
permitted to allow any reseller or distributor of the Sublicensee
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 Sublicensee. Each such agreement
shall contain restrictions on the use of the Licensed Marks and
Licensed Domain Names consistent with the restrictions contained
herein, other than those contained in Section 9.14(ii). A copy
of each such agreement shall be provided to Licensee for review and
approval prior to execution.
1.7. Prohibition on
Sublicensing . Neither Sublicensee nor any reseller or
distributor of Sublicensee shall be permitted to sublicense to any
other person or entity the rights granted to it with respect to the
Licensed Property.
2. Quality Standards and
Control .
2.1. Quality Control
.
(a) At all times, Sublicensee shall
use the Licensed Property only in accordance with such quality
standards and specifications as may be established by Licensor and
communicated to Sublicensee in writing from time to time (the
“Quality Standards”), including but not limited to the
Licensor Trademark Guidelines attached hereto as Exhibit A. Without
limiting the foregoing, the Sublicensee Products and Services shall
always be manufactured or performed in a manner that reflects
favorably
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on the Licensed Property and does not tarnish
the Licensed Property or the reputation of Licensee or Licensor.
With respect to the name and mark “Misys” and the
“M” logo, Licensor may establish additional Quality
Standards that shall be communicated to Sublicensee in writing from
time to time.
(b) Licensee shall ( A
) notify Licensor promptly in writing upon becoming aware that
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.
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
. Licensee 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 Sublicense Agreement. From time to time, upon
Licensee’s reasonable request in writing, Sublicensee shall,
at Sublicensee’s expense, ( a ) provide Licensee
with representative samples of the ways in which the Licensed Marks
are then being used (or photographs depicting the same), and (
b ) permit Licensee or Licensor to inspect
Sublicensee’s places of business where the Licensed Marks are
used, in each case for Licensee’s or Licensor’s
inspection and approval of such uses.
2.4. Deficiencies . If
Licensee reasonably believes that the Sublicensee Business or the
business of a reseller or distributor using the Licensed Marks or
Licensed Domain Names is not being conducted in compliance with the
Quality Standards or if an inspection of the Sublicensee Products
and Services reveals that they do not comply with the Quality
Standards, then Licensee shall promptly provide Sublicensee with
written notice of such defects or violations, and shall allow
Sublicensee thirty (30) days from the date of such notice in
which to cure such defects or violations. Should the defects or
violations not be remedied within such thirty (30) day period,
Licensee may, in its reasonable discretion, terminate this
Sublicense Agreement in accordance with Section 8.2 or bring
an action to require specific performance. If such an action is
brought and is successful, then Sublicensee shall have thirty
(30) days within which to comply with the order. If, at the
end of such thirty (30) days Sublicensee has not complied,
this Sublicense Agreement will terminate automatically.
3. Compliance with Law .
Sublicensee shall use the Licensed Property only in such manner as
will comply with the provisions of applicable laws and regulations
relating to the Licensed Property. Sublicensee shall affix to all
materials that bear a Licensed Mark, including, but not limited to,
all stationery, labels, packaging, advertising and promotional
materials, manuals, invoices and all other printed materials, (
a ) notices in compliance with applicable trademark
laws and ( b ) such legend as Licensee may reasonably
designate by written notice and is required or otherwise
reasonably
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necessary to allow adequate protection of the
Licensed Marks and the benefits thereof under applicable trademark
laws from time to time. In connection herewith, Sublicensee may use
the following legend:
“MISYS” is a registered
trademark owned by Misys plc and is used under
license.”
4. Ownership and Maintenance
.
4.1. Ownership .
(a) Sublicensee acknowledges and admits the validity of the
Licensed Property and agrees that it will not, directly or
indirectly, challenge the validity of the Licensed Property, or any
registrations thereof and/or applications therefor in any
jurisdiction, or the right, title and interest of Licensor therein
and thereto, nor will it claim any ownership or other interest in
the Licensed Property in any jurisdiction, other than the rights
expressly granted hereunder.
(b) Sublicensee acknowledges that (
i ) the Licensed Property and the goodwill associated
therewith are and will remain the exclusive property of Licensor, (
ii ) all uses of the Licensed Property shall inure
solely to the benefit of Licensor, and ( iii
) S
