LICENSE AGREEMENT
THIS AGREEMENT, effective _____________________ ("Effective Date"), is
made by and between WisdomTree Investments, Inc., a Delaware corporation, having
its principal place of business at ▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇
▇▇▇▇▇ ("Licensor"), and WisdomTree Trust, a Delaware statutory trust, having its
principal place of business at ▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
("Licensee").
WHEREAS, Licensor is the owner of all right, title and interest in and to
certain quantitative securities benchmarks ("Licensed Benchmarks"), along with
associated service marks, together with any applications or registrations now or
hereinafter issued on said service marks whether federal, state or foreign
("Licensed Marks"), identified more completely in Exhibit A hereto; and
WHEREAS, Licensor is the owner of certain research and development
information, processes, know-how, trade secrets and technical data related to
financial benchmarks, indexes, funds and model portfolios ("Technical Data");
and
WHEREAS, Licensor wishes to grant a license to Licensee and Licensee
wishes to receive a license from Licensor, for the right to use the Licensed
Benchmarks, Technical Data and Licensed Marks owned by Licensor in accordance
with the terms and conditions set forth in this Agreement.
NOW, THEREFORE, in consideration of the above premises and the mutual
covenants contained herein, and other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, Licensor and Licensee
agree as follows:
Grant of License
1. Subject to the terms and conditions set forth below, Licensor hereby
grants to Licensee, and Licensee hereby accepts an exclusive,
nontransferable, non-sublicensable, non-assignable, royalty-free license
in the United States to use the Licensed Benchmarks and associated
Technical Data solely in connection with the construction and
establishment of a series of exchange-traded funds, each based on a
Licensed Benchmark ("Benchmark Funds"), and to use the Licensed Marks,
solely in connection with the Benchmark Funds.
Ownership
2. Licensee acknowledges and agrees (i) that Licensor is the exclusive owner
of the Licensed Benchmarks, the Technical Data, and the Licensed Marks and
all the rights therein and goodwill pertaining thereto, (ii) that all use
of the Licensed Marks by Licensee shall inure to the benefit of Licensor,
including its successors and assigns, (iii) that Licensee shall not take
any action which is inconsistent with Licensor's ownership of the Licensed
Benchmarks, Technical Data and Licensed Marks, and (iv) that, upon
termination of this Agreement, all rights in the Licensed Marks, including
the goodwill connected therewith, the Licensed Benchmarks and Technical
Data shall remain the property of Licensor. Licensor shall be solely
responsible for, and may exercise its
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discretion in, deciding whether to apply for and prosecute applications
for registration of the Licensed Marks in any jurisdiction and whether to
maintain any such registrations therefor.
Quality Control of Licensed Marks
3. Licensee agrees that the nature and quality of the Benchmark Funds and
related services provided by Licensee in connection with the Licensed
Marks shall conform to commercially reasonable standards. Licensee agrees
to cooperate with Licensor in facilitating Licensor's control of such
nature and quality, and to supply Licensor with specimens of use of the
Licensed Marks upon request. Licensee agrees that it will not make any
significant change to the Licensed Marks or business methods for rendering
the services offered under the Licensed Marks without obtaining the prior
consent of Licensor. Licensee shall not have the right to and shall not
use any trademarks, trade names or service marks confusingly similar to
the Licensed Marks or other Licensor marks.
Confidentiality
4. Licensee shall: (i) treat as confidential and preserve the confidence of
all Confidential Information as that term is defined below; (ii) make no
use of the Confidential Information except as expressly permitted under
this Agreement; and (iii) except as expressly authorized by Licensor,
limit access to the Confidential Information to Licensee's employees and
consultants who reasonably require access to such Confidential
Information, and otherwise maintain policies and procedures designed to
prevent any unauthorized disclosure of the Confidential Information. For
purposes of this Agreement, Confidential Information shall include all
business and financial information relating to Licensor, all proprietary
information relating to the Licensed Benchmarks and Technical Data, and
any Benchmark Funds or processes produced in connection therewith
(excluding, however, that portion of such proprietary information
incorporated into an issued patent assigned to or owned by Licensor), and
all inventions, discoveries, methods, plans, techniques, processes,
documents, drawings, data, trade secrets, know-how, patent applications
and information of Licensor that is related thereto and marked or
otherwise designated, verbally or in writing, as "Confidential."
Confidential Information shall not include anything that (i) is or
lawfully becomes in the public domain, other than as a result of a breach
of an obligation hereunder; (ii) is furnished to Licensee by a third party
having a lawful right to do so; or (iii) was known to Licensee at the time
of the disclosure. Unless prohibited by law, Licensee shall give prompt
notice to Licensor of any requests or demands for any Confidential
Information made under lawful process by any third parties, prior to
disclosure or furnishing of such Confidential Information. Licensee agrees
to cooperate with Licensor, at Licensor's expense, in seeking reasonable
protective arrangements to prevent, limit or restrict the disclosure of
Confidential Information pursuant to such lawful process. If Licensee has
complied with the foregoing provisions of this Section 4, Licensee may
disclose Confidential Information, upon the advice of counsel that such
disclosure is required by law, regulation or lawful process.
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Licensee's Obligations
5. Licensee agrees that it will never dispute, contest, or challenge,
directly or indirectly, the validity or enforceability of the Licensed
Marks or Licensor's ownership of the Licensed Benchmarks, Technical Data
or Licensed Marks, nor to counsel, procure, or assist anyone else to do
the same. Licensee further agrees that it will never attempt to dilute,
directly or indirectly, the value of the goodwill attached to the Licensed
Marks, nor to counsel, procure, or assist anyone else to do the same.
6. Licensee agrees to safeguard and maintain the reputation and prestige of
the Licensed Marks and will not do anything that would tarnish the image
of or adversely impact the value, reputation or goodwill associated with
the Licensed Marks. Operation of any Benchmark Fund in accordance with
standard business practices shall not result in a breach of this Section
6, regardless of the actual performance of such Benchmark Fund.
7. Licensee agrees that it will comply with all laws, rules, regulations, and
requirements of any governmental or administrative body or voluntary
industry standards that may be applicable to the advertising, publicity,
promotion, sale, or offering of the Benchmark Funds, to the offering of
related services and operations, and to other goods or services bearing
the Licensed Marks.
Enforcement
8. Licensor shall have the sole right, but no obligation, at its own
discretion, to pursue any cause of action regarding the Licensed
Benchmarks, Technical Data or Licensed Marks. Licensee agrees to join as a
party plaintiff in any such lawsuit by Licensor, if requested by Licensor.
9. Licensee shall promptly notify Licensor of any infringement, threatened
infringement or misappropriation of the Licensed Benchmarks, Technical
Data or Licensed Marks that may come to its attention.
10. Licensor represents and warrants to Licensee that (i) to Licensor's actual
knowledge, Licensor is the sole owner of the Licensed Marks free and clear
of any restrictions upon its ability to license the Licensed Marks
pursuant to this Agreement and (ii) to Licensor's actual knowledge, no
person, firm, or corporation has any rights in the Licensed Marks which
will interfere with Licensee's use thereof pursuant to this Agreement.
Term and Termination
11. This Agreement, unless terminated earlier as provided by Section 12 and
Section 13 herein, shall remain in full force and effect for a period of
ten (10) years, up to and including the entire last day of the period
("Initial Term"), and be automatically renewed at Licensor's sole
discretion for an additional term of two (2) years ("Renewal Term") at the
expiration of the Initial Term or any subsequent Renewal Term. Either
party may
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give to the other party, not more than one year or less than 90 days in
advance of the expiration of the Initial Term or any Renewal Term, written
notice of its intent not to renew this Agreement.
12. Notwithstanding Section 13 hereto, Licensor may revoke the license
provided herein irrespective of any event of default if Licensor's
subsidiary, WisdomTree Asset Management, Inc., ceases to exercise
investment discretion over Licensee or any Benchmark Fund in its capacity
as manager, investment advisor, trustee, or any other comparable capacity.
If and when said license shall ever be revoked pursuant to this Section
12, Licensee agrees to discontinue all use of the Licensed Benchmarks,
Technical Data and Licensed Marks immediately.
13. A non-defaulting party may terminate this Agreement in the event of the
occurrence of any of the following events of default:
(a) the failure of the other party to comply with any material provision
of this Agreement, if such noncompliance is not remedied within 30
days after written notice of such default is provided to the
defaulting party; provided, however, that such cure period shall be
extended if such default by its nature and not as a result of the
defaulting party cannot be cured within such 30 days so long as the
defaulting party commences action immediately after such notice to
cure such default and proceeds diligently thereafter to effect the
cure of such default as soon as possible; or
(b) the unauthorized sale, transfer or assignment of this Agreement by
Licensee to a third party. The sale of an interest in Licensee
exceeding fifty percent (50%) shall constitute an assignment of this
Agreement for purposes of this Agreement.
Mutual Warranties and Indemnifications
14. Licensor and Licensee each individually represent, warrant and covenant to
the other that (a) each is fully capable of and authorized to enter into
this Agreement; (b) the execution, delivery and performance of this
Agreement does not violate its certificate of incorporation, by-laws or
similar governing instruments or applicable law and does not, and with the
passage of time will not, materially conflict with or constitute a breach
under any other agreement, judgment or instrument to which it is a party
or by which it is bound; (c) this Agreement is the legal, valid and
binding obligation of such party, enforceable in accordance with its
terms; and (d) each will comply with all applicable laws, rules and
regulations when exercising any of its rights and performing any of its
obligations hereunder.
15. Licensee agrees that Licensor will have no liability and Licensee will
indemnify, defend, and hold harmless Licensor, its affiliated companies
and their officers, directors, employees, and agents against any and all
damages, liabilities, claims, causes of action, attorneys fees or costs
incurred by Licensor in defending against any third-party claims or
threats of claims arising from (i) the advertisement, promotion, or sale
of products or services bearing the Licensed Marks or based on the
Licensed Benchmarks; and (ii) the conduct of Licensee's business.
16. Licensor shall indemnify, defend and hold harmless Licensee and its
officers, directors, employees, and agents against any and all damages,
liabilities, claims, causes of action, attorneys fees or costs incurred by
Licensee in defending against any third-party claims or threats of claims
arising from Licensee's breach of Section 10 insofar as it relates to the
use of the Licensed Marks in accordance with the terms of this Agreement.
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General Provisions
17. Licensee acknowledges that Licensor's obligations under this Agreement are
not personal, and Licensor can unconditionally assign, in its own
discretion, this Agreement to another corporation or any other entity or
natural person. Licensee understands and acknowledges that the rights and
duties set forth in this Agreement are personal to Licensee. Accordingly,
this Agreement and Licensee's rights and interests hereunder shall not be
voluntarily or involuntarily, directly or indirectly, sold, pledged,
assigned, transferred, shared, sub-divided, or encumbered in any way in
whole or in part, in any matter whatsoever without the prior written
approval of the Licensor.
18. The relationship between the parties established by this Agreement is
solely that of licensor and licensee. Neither party is in any way the
legal representative, partner, employee or agent of the other, nor is
either party authorized or empowered to create or assume any obligation of
any kind, implied or expressed, on behalf of the other party, without the
express prior written consent of the other.
19. This Agreement constitutes the entire agreement between the parties with
respect to the subject matter contained herein and shall supersede all
prior agreements, proposals or understandings between the parties whether
written or oral.
20. This Agreement shall not be deemed or construed to be modified, amended,
rescinded, canceled or waived, in whole or in part, except by written
instrument signed by both parties hereto. This Agreement may be amended
from time to time to add new securities benchmarks and service marks that
will be licensed by mutual agreement of parties. If the parties agree to
licensing additional benchmarks and service marks, Licensor shall provide
to Licensee at the address in Section 24 a copy of the amended Exhibit A
signed by an authorized representative of Licensor. Licensee shall provide
Licensor with acknowledgement and acceptance of the amended Exhibit A
within five (5) business days. Nothing in this Section 20 shall be
construed to give Licensor the power or authority to force Licensee to
accept or agree to any amendment to Exhibit A or any license of additional
benchmarks and service marks.
21. Neither the waiver by Licensor of any breach of or default under any of
the provisions of this Agreement, nor the failure of Licensor to enforce
any of the provisions of this Agreement or to exercise any right
hereunder, shall be construed as a waiver of any subsequent breach or
default, or as a waiver of any such rights or provision hereunder.
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22. If any term or provision of this Agreement shall be held by a court of
competent jurisdiction to be invalid or unenforceable, the remainder of
this Agreement shall not be affected thereby and each term and provision
shall be valid and enforceable to the fullest extent permitted by law.
23. The headings in this Agreement are for convenience only and shall not be
construed as part of this Agreement or in any way limiting or amplifying
any of the provisions of this Agreement.
24. All notices given pursuant to this Agreement shall be given in writing and
shall be given by telegram, facsimile, certified mail or hand delivery to
the addresses set forth below or at such other address as a party may from
time to time specify in writing:
If to Licensor: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, Esq.
Deputy General Counsel
WisdomTree Investments, Inc.
▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Tel.: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
If to Licensee: ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
President
WisdomTree Trust
▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Tel.: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
and
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, ▇▇.
▇▇▇▇▇▇▇▇▇▇▇ & ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ LLP
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
Tel: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
25. The parties acknowledge that this Agreement has been negotiated and
prepared in an arms-length transaction and that both Licensor and Licensee
have negotiated all the terms contained herein. Accordingly, the parties
agree that neither party shall be deemed to have drafted this Agreement
and this Agreement shall not be interpreted against either party as the
draftsman.
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26. This Agreement shall be governed by the substantive laws of the State of
New York without regard to the application of conflicts of law principles.
The parties each hereby submit to the jurisdiction of the United States
District Court in the Southern District of New York and the state courts
in the State of New York located in New York City, New York, and waive any
claim that each such venue is an inconvenient forum.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date first set forth above.
WisdomTree Investments, Inc. WisdomTree Trust
By: By:
------------------------------------ ------------------------------
Name: Name:
---------------------------------- ----------------------------
Title: Title:
--------------------------------- ---------------------------
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EXHIBIT A
1. Licensed Benchmarks
WisdomTree(SM) Dividend Index
WisdomTree(SM) Dividend Top 100(SM) Index
WisdomTree(SM) High-Yielding Equity(SM) Index
WisdomTree(SM) LargeCap Dividend Index
WisdomTree(SM) MidCap Dividend Index
WisdomTree(SM) SmallCap Dividend Index
WisdomTree DIEFA(SM) Index
WisdomTree DIEFA(SM) High-Yielding Equity(SM) Index
WisdomTree(SM) Europe Dividend Index
WisdomTree Europe(SM) SmallCap Dividend Index
WisdomTree(SM) Europe Dividend Index
WisdomTree(SM) Japan Dividend Index
WisdomTree(SM) Japan High-Yielding Equity(SM) Index
WisdomTree Japan(SM) SmallCap Dividend Index
WisdomTree DIPR(SM) Index
WisdomTree DIPR(SM) High-Yielding Equity(SM) Index
WisdomTree(SM) International Dividend Top 100(SM) Index
2. Licensed Marks
WISDOMTREE
DIVIDEND TOP 100
HIGH-YIELDING EQUITY
WISDOMTREE DIEFA
WISDOMTREE DIPR