Exhibit 10.5
FORM OF
LICENSE AGREEMENT
THIS LICENSE AGREEMENT ("Agreement"), dated as of _______________________,
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2001, by and between USX Corporation, a Delaware corporation, to be renamed
"Marathon Oil Corporation" ("USX"), and United States Steel LLC, a Delaware
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limited liability company and wholly owned subsidiary of USX, to be renamed
"United States Steel Corporation" ("SteelCo").
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W I T N E S S E T H:
WHEREAS, this Agreement is made pursuant to and as a condition of the
Agreement and Plan of Reorganization, dated as of July 31, 2001 ("Separation
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Agreement"), by and between USX and SteelCo, pursuant to which the respective
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businesses of the Marathon Group of USX and the U.S. Steel Group of USX are
being separated into two independent companies by merging USX Merger
Corporation, a Delaware corporation and a wholly owned subsidiary of USX
("Merger Sub"), with and into USX, subject to the terms and conditions thereof,
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and pursuant to Section 251 of the DGCL (the "Separation Merger"), with USX
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continuing as the surviving corporation, so that immediately following the
Separation Effective Time, SteelCo shall own and operate the business of the
U.S. Steel Group and shall be wholly owned by the holders of the then
outstanding shares of USX-U.S. Steel Group Common Stock and the business of the
Marathon Group shall be owned and operated by USX, which shall be a separate and
independent entity from SteelCo and shall be wholly owned by the holders of the
then outstanding shares of USX-Marathon Group Common Stock (the "Separation");
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and
WHEREAS, the parties are entering into this Agreement to provide for the
licensing by USX to SteelCo of (i) various registered trademarks and service
marks using or including USX or variants thereof (the "USX Name Rights"), and
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(ii) various trade secrets, know how and other intellectual property rights used
by USX in connection with the business of both the Marathon Group and the U.S.
Steel Group (the "Headquarters IP").
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NOW, THEREFORE, in furtherance of the foregoing and in consideration of the
mutual promises and undertakings contained herein and in any other document
executed in connection with this Agreement, the parties agree as follows:
ARTICLE I
DEFINITIONS
Section 1.1 General. Unless otherwise defined herein, capitalized
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terms used herein shall have their respective meanings as defined in the
Separation Agreement.
Section 1.2 Other Definitional Provisions.
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(a) The words "hereof", "herein", "hereunder" and words of
similar import, when used in this Agreement, shall refer to this Agreement as a
whole and not to any particular provision of this Agreement.
(b) The terms defined in the singular shall have a
comparable meaning when used in the plural, and vice versa.
(c) The terms "dollars" and "$" shall mean United States
dollars.
ARTICLE II
LICENSE AND QUALITY CONTROL
Section 2.1 Grant of License. USX grants to SteelCo a fully paid,
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worldwide, nonexclusive license to use (i) the USX Name Rights solely in the
conduct of SteelCo's business, and (ii) the Headquarters IP solely in the
conduct of SteelCo's internal business. SteelCo acknowledges that by virtue of
this Agreement, SteelCo is receiving only the right to use the USX Name Rights
and Headquarters IP in accordance with the terms hereof and is not acquiring any
rights of ownership thereof.
Section 2.2 Right to Sublicense. The grant of the license to
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SteelCo set forth in Section 2.1 shall include the right to sublicense the USX
Name Rights and Headquarters IP to any Subsidiary of SteelCo. Any other
sublicense by SteelCo shall require the written consent of USX.
Section 2.3 Quality Control. SteelCo agrees not to affix USX Name
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Rights to any products or to use USX Name Rights in connection with the
provision of any services unless such products and services are of a type and
quality consistent with the standards established from time to time by USX for
such goods and services. SteelCo agrees to cooperate in facilitating USX's
control over the quality of goods and services in connection with which SteelCo
uses USX Name Rights. SteelCo shall permit USX and its authorized
representatives to inspect and monitor at any reasonable time and place all
goods and services produced or provided by SteelCo in connection with which
SteelCo uses USX Name Rights. If USX reasonably concludes that any goods or
services in connection with which SteelCo uses USX Name Rights do not conform to
USX's quality standards, SteelCo shall promptly take steps either to insure
conformance with USX's quality standards or to prevent the use of USX Name
Rights in connection with such goods and services.
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ARTICLE III
INDEMNIFICATION
Section 3.l USX's Agreement to Indemnify. Subject to the terms and
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conditions set forth in this Agreement, USX shall indemnify, defend and hold
harmless SteelCo and its directors, officers, employees, Representatives,
advisors, agents and Affiliates (collectively, the "U.S. Steel Indemnified
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Parties") from, against and in respect of any and all Indemnifiable Losses of
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the U.S. Steel Indemnified Parties arising out of, relating to or resulting
from, directly or indirectly, USX's use of the USX Name Rights or Headquarters
IP.
Section 3.2 SteelCo's Agreement to Indemnify. Subject to the terms
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and conditions set forth in this Agreement, SteelCo shall indemnify, defend and
hold harmless USX and each of its directors, officers, employees,
Representatives, advisors, agents and Affiliates (collectively, the "USX
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Indemnified Parties") from, against and in respect of any and all Indemnifiable
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Losses of the USX Indemnified Parties arising out of, relating to or resulting
from, directly or indirectly, SteelCo's use or sublicense of the USX Name Rights
or Headquarters IP.
Section 3.3 Procedure for Indemnification. All claims for
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indemnification under this Article III shall be asserted and resolved as
follows:
(a) Third-Party Claims. In the event that any claim or
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demand for which an Indemnifying Party may be liable to an Indemnified Party
hereunder is asserted against or sought to be collected by a third party from an
Indemnified Party (an "Asserted Liability"), the Indemnified Party shall as soon
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as possible notify the Indemnifying Party in writing of such Asserted Liability,
specifying the nature of such Asserted Liability (the "Claim Notice"); provided
that no delay on the part of the Indemnified Party in giving any such Claim
Notice shall relieve the Indemnifying Party of any indemnification obligation
hereunder except to the extent that the Indemnifying Party is materially
prejudiced by such delay. The Indemnifying Party shall have 60 days (or less if
the nature of the Asserted Liability requires) from its receipt of the Claim
Notice to notify the Indemnified Party whether or not the Indemnifying Party
desires, at the Indemnifying Party's sole cost and expense and by counsel of its
own choosing, to defend against such Asserted Liability; provided, however, that
if, under applicable standards of professional conduct a conflict on any
significant issue between the Indemnifying Party and any Indemnified Party
exists in respect of such Asserted Liability, then the Indemnifying Party shall
reimburse the Indemnified Party for the reasonable fees and expenses of one
additional counsel.
If the Indemnifying Party undertakes to defend against such Asserted
Liability, the Indemnified Party shall cooperate fully with the Indemnifying
Party and its counsel in the investigation, defense and settlement thereof, but
the Indemnifying Party shall control the investigation, defense and settlement
thereof. If the Indemnified Party,
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desires to participate in any such defense, it may do so at its sole cost and
expense. If the Indemnifying Party elects not to defend against such Asserted
Liability, then the Indemnifying Party shall have the right to participate in
any such defense at its sole cost and expense, but the Indemnified Party shall
control the investigation, defense and settlement thereof at the sole cost and
expense of the Indemnifying Party. The Indemnifying Party shall not, without the
prior written consent of the Indemnified Party (which consent shall not be
unreasonably withheld), consent to any settlement unless such settlement (i)
includes a complete release of the Indemnified Party and (ii) does not require
the Indemnified Party to admit any liability or make or forego any payment or
forego or take any action. The Indemnifying Party shall not be liable for any
settlement of any Asserted Liability effected without its prior written consent
(which consent shall not be unreasonably withheld).
(b) Non-Third-Party Claims. In the event that an Indemnified
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Party should have a claim against the Indemnifying Party hereunder that does not
involve a claim or demand being asserted against or sought to be collected from
it by a third party, the Indemnified Party shall send a notice with respect to
such claim to the Indemnifying Party. The Indemnifying Party shall have 60 days
from the date such notice is delivered during which to notify the Indemnified
Party in writing of any good faith objections it has to the Indemnified Party's
notice or claims for indemnification, setting forth in reasonable detail each of
the Indemnifying Party's objections thereto. If the Indemnifying Party does not
deliver such written notice of objection within such 60-day period, the
Indemnifying Party shall be deemed to not have any objections to such claim. If
the Indemnifying Party does deliver such written notice of objection within such
60-day period, the Indemnifying Party and the Indemnified Party shall attempt in
good faith to resolve any such dispute within 60 days of the delivery by the
Indemnifying Party of such written notice of objection. If the Indemnifying
Party and the Indemnified Party are unable to resolve any such dispute within
such 60 day period, such dispute shall be resolved in accordance with the
procedures set forth in Section 5.1 hereof.
(c) Miscellaneous Indemnification Provisions.
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(i) The Indemnifying Party agrees to indemnify any
successors of the Indemnified Party to the same extent and in the same manner
and on the same terms and conditions as the Indemnified Party is indemnified by
the Indemnifying Party under this Article III.
(ii) The amount that an Indemnifying Party is required to
pay to any Indemnified Party pursuant to this Article III shall be reduced
(retroactively or prospectively) by any Insurance Proceeds or other amounts
actually recovered by or on behalf of such Indemnified Party in respect of the
related Indemnifiable Loss. If an Indemnified Party shall have received the
payment required by this Article III in respect of an Indemnifiable Loss and
shall subsequently actually receive Insurance Proceeds or other amounts in
respect of such Indemnifiable Loss, then such Indemnified Party shall pay to
such Indemnifying Party a sum equal to the amount of such Insurance Proceeds or
other amounts actually received, up to the aggregate amount of any payments
received
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from such Indemnifying Party pursuant to this Article III in respect of such
Indemnifiable Loss.
ARTICLE IV
TERM AND AMENDMENT
Section 4.1 Term. The term of this Agreement shall commence on the
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date set forth above and shall remain in force perpetually so long as SteelCo
performs as herein provided. USX shall have the right to terminate this
Agreement in the event of a material breach by SteelCo, which breach is not
cured within thirty days of written notice thereof.
Section 4.2 Amendment. This Agreement may be amended, modified or
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supplemented at any time and shall be evidenced by a written agreement signed by
all of the parties hereto.
ARTICLE V
GENERAL PROVISIONS
Section 5.1 Dispute Resolution. Any dispute between the parties
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shall be subject to the Dispute Resolution procedure set forth in Section 15.2
of the Separation Agreement.
Section 5.2 Expenses. Unless otherwise provided herein, all out-
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of-pocket costs and expenses with respect to the transactions contemplated in
this Agreement shall be borne by the party incurring such costs and expenses.
Section 5.3 Records. Each party shall have access to all records,
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documents and other information in the possession of the other party relating to
activities prior to the Separation and such records shall be subject to the
confidentiality provisions of Section 11.4 of the Separation Agreement. Upon
the request of the party seeking such access, the other party shall make any
such records, documents and other information available or make copies for the
requesting party without charge.
Section 5.4 Governing Law. This Agreement shall be governed by, and
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construed in accordance with, the laws of Delaware, without reference to choice
of law principles, including matters of construction, validity and performance.
Section 5.5 Notices. Notices, requests, permissions, waivers,
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referrals and all other communications hereunder shall be in writing and shall
be deemed to have been duly given if signed by the respective persons giving
them (in the case of any corporation or limited liability company, the signature
shall be by an officer thereof) and delivered by hand or by telecopy or on the
date of receipt indicated on the return receipt
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if mailed (registered or certified, return receipt requested, properly addressed
and postage prepaid):
If to SteelCo, to:
United States Steel LLC
000 Xxxxx Xxxxxx
Xxxxx 0000
Xxxxxxxxxx, XX 00000-0000
Attention: General Counsel
Facsimile: 000-000-0000
If to USX, to:
Marathon Oil Corporation
0000 Xxx Xxxxxx Xxxx
Xxxxxxx, XX 00000-0000
Attention: General Counsel
Facsimile: 713-296-4375
Such names and addresses may be changed by notice given in accordance with this
Section 5.5. Copies of all notices, requests, permissions, waivers, referrals
and all other communications hereunder given prior to the Separation Effective
Time shall be given to:
Skadden, Arps, Slate, Xxxxxxx & Xxxx LLP
0 Xxxxx Xxxxxx
Xxx Xxxx, XX 00000-0000
Attention: Xxxxx X. Xxxxx, Esquire
Facsimile: (000) 000-0000
Section 5.6 Third-Party Beneficiaries. Except as provided in Section
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2.2 hereof with respect to sublicenses to subsidiaries of SteelCo and in Article
III hereof with respect to indemnification of U. S. Steel Indemnified Parties
and USX Indemnified Parties hereunder, nothing in this Agreement shall confer
any rights upon any Person or entity other than the parties hereto and their
respective heirs, successors and permitted assigns.
Section 5.7 Entire Agreement. This Agreement contains the entire
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understanding of the parties hereto with respect to the subject matter contained
herein, and supersedes and cancels all prior agreements, negotiations,
correspondence, undertakings and communications of the parties, oral or written,
respecting such subject matter.
Section 5.8 Headings. The article, section and paragraph headings
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contained in this Agreement are for reference purposes only and shall not affect
in any way the meaning or interpretation of this Agreement. All references
herein to "Articles",
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"Sections" or "Appendices" shall be deemed to be references to Articles or
Sections hereof or Appendices hereto unless otherwise indicated.
Section 5.9 Counterparts. This Agreement may be executed in one or
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more counterparts and each counterpart shall be deemed to be an original, but
all of which shall constitute one and the same original.
Section 5.10 Parties in Interest; Assignment; Successors. Neither
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this Agreement nor any of the rights, interests or obligations hereunder shall
be assigned by any of the parties hereto without the prior written consent of
the other party. Subject to the preceding sentence, this Agreement shall inure
to the benefit of and be binding upon SteelCo and USX and their respective
successors and permitted assigns and sublicensees. Nothing in this Agreement,
express or implied, is intended to confer upon any other Person any rights or
remedies under or by reason of this Agreement.
Section 5.11 Severability; Enforcement. The invalidity of any
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portion hereof shall not affect the validity, force or effect of the remaining
portions hereof. If it is ever held that any restriction hereunder is too broad
to permit enforcement of such restriction to its fullest extent, each party
agrees that a court of competent jurisdiction may enforce such restriction to
the maximum extent permitted by law, and each party hereby consents and agrees
that such scope may be judicially modified accordingly in any proceeding brought
to enforce such restriction.
Section 5.12 Remedies. The parties agree that money damages or other
remedy at law would not be a sufficient or adequate remedy for any breach or
violation of, or a default under, this Agreement by them and that in addition to
all other remedies available to them, each of them shall be entitled to the
fullest extent permitted by law to an injunction restraining such breach,
violation or default or threatened breach, violation or default and to any other
equitable relief, including specific performance, without bond or other security
being required.
[SIGNATURE PAGE FOLLOWS]
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IN WITNESS WHEREOF, each of the parties has caused this Agreement to be
duly executed on its behalf by its officers thereunto duly authorized, all as of
the day and year first above written.
USX CORPORATION
By: _________________________
Name: _______________________
Title: ______________________
UNITED STATES STEEL LLC
By: _________________________
Name: _______________________
Title: ______________________
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