Grant of Licenses and Rights. 2.1 Subject to previously granted rights and licenses, if any, as of the Effective Time, Spinco and its Subsidiaries hereby: (a) irrevocably assign, grant and convey to Licensor and its Affiliates (other than Licensee and its Subsidiaries) an undivided joint ownership interest in and to the right, title and interest of Licensee and its Subsidiaries to the Business Proprietary Software, Spinco Non-Statutory Intellectual Property and Proprietary Business Information; provided, however, the joint ownership interest in Business Proprietary Software is subject to the restrictions set forth in Section 2.3 hereof. The joint ownership interest of Spinco and its Subsidiaries on the one hand, and Licensor and its Affiliates on the other hand, includes, but is not limited to, the unrestricted right to use, reproduce, copy, modify, improve, create derivative works, enhance, transfer, assign, otherwise convey and to exercise any and all rights relating to such Business Proprietary Software, Spinco Non-Statutory Intellectual Property and Proprietary Business Information without the obligation to account to the other therefor, except and to the extent set forth in Article V; (b) grant to Licensor and its Affiliates a royalty-free, fully paid-up, irrevocable, nonexclusive license under Designated Spinco Statutory Intellectual Property (excluding any Trademarks and any copyrights in advertising copy included therein) to make, have made, use, have used, sell, have sold, products and services, without in any way accounting to Spinco or its Subsidiaries; and (c) irrevocably assigns, grants and conveys to Licensor and its Affiliates (other than Licensee and its Subsidiaries) all right, title and interest, if any, of Licensee and its Subsidiaries in and to Customer Listing Data. 2.2 Licensor, on behalf of itself and its U.S. Affiliates, hereby grants, as of the Effective Date, the following rights and licenses: (a) Subject to previously granted rights and licenses, if any, Licensor hereby grants to Spinco and its Subsidiaries a personal, royalty-free, fully paid-up, irrevocable (except and to the extent set forth in Article 6, below), nonexclusive and nontransferable (except as permitted pursuant to Section 7.1 below) license, subject to the provisions of Section 5.1 of this Intellectual Property Agreement, to use the Licensed Intellectual Property solely in the provision of goods and services in respect of the business of the Spinco and its Subsidiaries solely in the United States and solely in the Licensed Field of Use and in the practice of any methods associated with the provision of such goods and services in the Licensed Field of Use. The foregoing license granted to Spinco and its Subsidiaries includes, but is not limited to, the right to reproduce, copy, modify, improve and enhance such Licensed Intellectual Property, but does not include the right: (w) to use the Licensed Intellectual Property outside of the United States (except in support of the business of the Spinco and its Subsidiaries in the Licensed Field of Use, provided such support outside of the United States may not be provided by any Person that provides facilities-based voice or data telecommunications services in the United States), (x) to disclose the non-public Licensed Intellectual Property to any Person (other than to contractors of Spinco or its Subsidiaries in support of such business in the United States in the Licensed Field of Use or to contractors outside of the United States in support of the business in the United States in the Licensed Field of Use (except such disclosure to contractors outside of the United States may not be made to any Person that provides facilities-based voice or data telecommunications services in the United States)), (y) to grant sublicenses to any Person (other than to contractors of Spinco or its Subsidiaries in support of such business in the United States in the Licensed Field of Use (provided that such sublicense may not be granted to any Person outside of the United States that provides facilities-based voice or data telecommunications services in the United States)) or (z) to assign such license other than to permitted successors and assigns of Spinco or its Subsidiaries in the Business, but only in the United States and in the Licensed Field of Use. The foregoing license to Spinco and its Subsidiaries shall not extend to: (i) any modifications, improvements, enhancements, additions or derivations of the Business after the Effective Date that are outside of the Licensed Field of Use, or (ii) other geographic territories outside of the United States (except to the extent expressly permitted in support of the business of the Spinco and its Subsidiaries in the Licensed Field of Use). (b) Subject to previously granted rights and licenses, if any, Licensor hereby irrevocably assigns, grants and conveys to Spinco and its Subsidiaries an undivided joint ownership interest in and to the right, title and interest of Licensor and U.S. Affiliates to the Business Proprietary Software, Spinco Non-Statutory Intellectual Property and Proprietary Business Information; provided, however, the joint ownership interest in Business Proprietary Software is subject to the restrictions set forth in Section 2.4 hereof. The joint ownership interest of Spinco and its Subsidiaries on the one hand, and Licensor and its U.S. Affiliates on the other hand, includes, but is not limited to, the unrestricted right to use, reproduce, copy, modify, improve, create derivative works, enhance, transfer, assign, otherwise convey and to exercise any and all rights relating to such Proprietary Business Information without the obligation to account to the other therefor, except and to the extent set forth in Article 5. (c) Subject to previously granted rights and licenses, if any, Licensor hereby irrevocably assigns, grants and conveys to Spinco and its Subsidiaries all right, title and interest of Licensor and its U.S. Affiliates, if any, in and to the Designated Spinco Statutory Intellectual Property. (d) From time to time after the date of this Intellectual Property Agreement, as and when requested by a party hereto, the other party will execute and deliver, or cause to be executed and delivered, any documents hereto as may be reasonably necessary or appropriate to effectuate the intent of this Intellectual Property Agreement. 2.3 For a period of three (3) years from the date on which the Effective Time occurs, Licensor and its Affiliates (other than Spinco and its Subsidiaries) shall have no right to grant any licenses to any Person (other than an Affiliate of Licensor) who competes directly with the Business to use substantially all of any item of software listed on Schedule B and included in Business Proprietary Software. 2.4 For a period of three (3) years from the date on which the Effective Time occurs, Spinco and its Subsidiaries shall have no right to grant any licenses to any Person (other than a Subsidiary of Spinco) who competes directly with the business of Licensor or any of its Affiliates (other than Spinco and its Subsidiaries) to use substantially all of any item of software listed on Schedule B and included in Business Proprietary Software.
Appears in 2 contracts
Samples: Intellectual Property Agreement (Idearc Inc.), Intellectual Property Agreement (Idearc Inc.)
Grant of Licenses and Rights. 2.1 Subject to previously granted rights and licenses, if any, as of the Effective Time, Spinco Company hereby grants and conveys to Seller and its Subsidiaries herebyAffiliates:
(a) irrevocably assigna personal, grant royalty-free, fully paid-up, irrevocable, nonexclusive license under Company Intellectual Property (other than Proprietary Business Information and convey Trademarks included therein) to Licensor make, have made, sell, have sold, offer for sale, have offered for sale, import, have imported, license, have licensed, use, have used, reproduce, distribute, perform, display and prepare derivative works of such Company Intellectual Property in products and services provided by or on behalf of Seller and its Affiliates and to practice any method or process in the provision and use of such products and services; and
(other than Licensee and its Subsidiariesb) an undivided joint ownership interest in and to the right, title and interest of Licensee and its Subsidiaries Company to the Business Proprietary Software, Spinco Non-Statutory Intellectual Property and Proprietary Business Information; provided, however, the joint ownership interest in Business Proprietary Software is subject to the restrictions set forth in Section 2.3 hereof. The joint ownership interest of Spinco and its Subsidiaries Company on the one hand, and Licensor Seller and its Affiliates on the other hand, includes, but is not limited to, the unrestricted right to use, reproduce, copy, modify, improve, create derivative works, enhance, transfer, assign, otherwise convey and to exercise any and all rights relating to such Business Proprietary Software, Spinco Non-Statutory Intellectual Property and Proprietary Business Information without the obligation to account to the other therefor, except and to the extent set forth in Article V;
(b) grant to Licensor and its Affiliates a royalty-free, fully paid-up, irrevocable, nonexclusive license under Designated Spinco Statutory Intellectual Property (excluding any Trademarks and any copyrights in advertising copy included therein) to make, have made, use, have used, sell, have sold, products and services, without in any way accounting to Spinco or its Subsidiaries; and
(c) irrevocably assigns, grants and conveys to Licensor and its Affiliates (other than Licensee and its Subsidiaries) all right, title and interest, if any, of Licensee and its Subsidiaries in and to Customer Listing Data.
2.2 Licensor, on behalf of itself and its U.S. Affiliates, hereby grants, as of the Effective Date, the following rights and licenses:
(a) Subject to previously granted rights and licenses, if any, Licensor hereby grants to Spinco and its Subsidiaries a personal, royalty-free, fully paid-up, irrevocable (except and to the extent set forth in Article 6, below), nonexclusive and nontransferable (except as permitted pursuant to Section 7.1 below) license, subject to the provisions of Section 5.1 of this Intellectual Property Agreement, to use the Licensed Intellectual Property solely in the provision of goods and services in respect of the business of the Spinco and its Subsidiaries solely in the United States and solely in the Licensed Field of Use and in the practice of any methods associated with the provision of such goods and services in the Licensed Field of Use. The foregoing license granted to Spinco and its Subsidiaries includes, but is not limited to, the right to reproduce, copy, modify, improve and enhance such Licensed Intellectual Property, but does not include the right: (w) to use the Licensed Intellectual Property outside of the United States (except in support of the business of the Spinco and its Subsidiaries in the Licensed Field of Use, provided such support outside of the United States may not be provided by any Person that provides facilities-based voice or data telecommunications services in the United States), (x) to disclose the non-public Licensed Intellectual Property to any Person (other than to contractors of Spinco or its Subsidiaries in support of such business in the United States in the Licensed Field of Use or to contractors outside of the United States in support of the business in the United States in the Licensed Field of Use (except such disclosure to contractors outside of the United States may not be made to any Person that provides facilities-based voice or data telecommunications services in the United States)), (y) to grant sublicenses to any Person (other than to contractors of Spinco or its Subsidiaries in support of such business in the United States in the Licensed Field of Use (provided that such sublicense may not be granted to any Person outside of the United States that provides facilities-based voice or data telecommunications services in the United States)) or (z) to assign such license other than to permitted successors and assigns of Spinco or its Subsidiaries in the Business, but only in the United States and in the Licensed Field of Use. The foregoing license to Spinco and its Subsidiaries shall not extend to: (i) any modifications, improvements, enhancements, additions or derivations of the Business after the Effective Date that are outside of the Licensed Field of Use, or (ii) other geographic territories outside of the United States (except to the extent expressly permitted in support of the business of the Spinco and its Subsidiaries in the Licensed Field of Use).
(b) Subject to previously granted rights and licenses, if any, Licensor hereby irrevocably assigns, grants and conveys to Spinco and its Subsidiaries an undivided joint ownership interest in and to the right, title and interest of Licensor and U.S. Affiliates to the Business Proprietary Software, Spinco Non-Statutory Intellectual Property and Proprietary Business Information; provided, however, the joint ownership interest in Business Proprietary Software is subject to the restrictions set forth in Section 2.4 hereof. The joint ownership interest of Spinco and its Subsidiaries on the one hand, and Licensor and its U.S. Affiliates on the other hand, includes, but is not limited to, the unrestricted right to use, reproduce, copy, modify, improve, create derivative works, enhance, transfer, assign, otherwise convey and to exercise any and all rights relating to such Proprietary Business Information without the obligation to account to the other therefor, except and to the extent set forth in Article 5, or to seek the consent of the other with respect thereto.
2.2 Seller, on behalf of itself and its U.S. Affiliates, hereby grants, effective as of the Closing, but after the consummation of the assignment contemplated by the Contribution Agreement and Section 2.1 above, the following rights and licenses:
(ca) Subject to previously granted rights and licenses, if any, Licensor Seller hereby irrevocably assignsgrants to Company a personal, grants and conveys to Spinco and its Subsidiaries all rightroyalty-free, title and interest of Licensor and its U.S. Affiliatesfully paid-up, if any, in irrevocable (except and to the Designated Spinco Statutory extent set forth in Article 6 below), nonexclusive and nontransferable (except as permitted pursuant to Section 7.1 below) license, subject to the provisions of Section 5.1 of this Intellectual PropertyProperty Agreement, to use the Licensed Intellectual Property solely in the provision of goods and services in the Licensed Field of Use and in the practice of any methods associated with the provision of such goods and services in the Licensed Field of Use. The foregoing license granted to Company does not include the right: (x) to disclose the Licensed Intellectual Property to any Person (other than to contractors of Company in support of the Licensed Field of Use), (y) to grant sublicenses to any Person (other than to contractors of Company in support of the Licensed Field of Use, or (z) to assign such license other than to permitted successors and assigns of Company in the Acquired Business. The foregoing license to Company shall not extend to any modifications, improvements, enhancements, additions or derivations of the Acquired Business after the Closing Date that are outside of the Licensed Field of Use.
(d) 2.3 Except for the limited phase-out license granted to the Company pursuant to Section 4.2.4 of the Agreement, no rights or licenses, express or implied, are granted to the Company under any Verizon Marks.
2.4 From time to time after the date of this Intellectual Property Agreement, as and when requested by a party Party hereto, the other party Party will execute and deliver, or cause to be executed and delivered, any documents hereto as may be reasonably necessary or appropriate to effectuate the intent of this Intellectual Property Agreement.
2.3 For a period of three (3) years from the date on which the Effective Time occurs, Licensor and its Affiliates (other than Spinco and its Subsidiaries) shall have no right to grant any licenses to any Person (other than an Affiliate of Licensor) who competes directly with the Business to use substantially all of any item of software listed on Schedule B and included in Business Proprietary Software.
2.4 For a period of three (3) years from the date on which the Effective Time occurs, Spinco and its Subsidiaries shall have no right to grant any licenses to any Person (other than a Subsidiary of Spinco) who competes directly with the business of Licensor or any of its Affiliates (other than Spinco and its Subsidiaries) to use substantially all of any item of software listed on Schedule B and included in Business Proprietary Software.
Appears in 1 contract
Grant of Licenses and Rights. 2.1 Subject to previously granted rights and licenses, if any, as of the Effective Time, Spinco and its Subsidiaries hereby:
(a) irrevocably assign, grant and convey to Licensor and its Affiliates (other than Licensee and its Subsidiaries) an undivided joint ownership interest in and to the right, title and interest of Licensee and its Subsidiaries to the Business Proprietary Software, Spinco Non-Statutory Intellectual Property and Proprietary Business Information; provided, however, the joint ownership interest in Business Proprietary Software is subject to the restrictions set forth in Section 2.3 hereof. The joint ownership interest of Spinco and its Subsidiaries on the one hand, and Licensor and its Affiliates on the other hand, includes, but is not limited to, the unrestricted right to use, reproduce, copy, modify, improve, create derivative works, enhance, transfer, assign, otherwise convey and to exercise any and all rights relating to such Business Proprietary Software, Spinco Non-Statutory Intellectual Property and Proprietary Business Information without the obligation to account to the other therefor, except and to the extent set forth in Article V;
(b) grant to Licensor and its Affiliates a royalty-free, fully paid-up, irrevocable, nonexclusive license under Designated Spinco Statutory Intellectual Property (excluding any Trademarks and any copyrights in advertising copy included therein) to make, have made, use, have used, sell, have sold, products and services, without in any way accounting to Spinco or its Subsidiaries; and
(c) irrevocably assigns, grants and conveys to Licensor and its Affiliates (other than Licensee and its Subsidiaries) all right, title and interest, if any, of Licensee and its Subsidiaries in and to Customer Listing Data.
2.2 Licensor, on behalf of itself and its U.S. Affiliates, hereby grants, as of the Effective Date, the following rights and licenses:
(a) Subject to previously granted rights and licenses, if any, and subject to the terms and conditions of this Branding Agreement and effective upon the Effective Time, Licensor hereby grants to Spinco Licensee and to its Subsidiaries the following licenses:
(i) a personal, royalty-free, fully paid-up, irrevocable (A) exclusive and nontransferable (except and to the extent set forth expressly permitted pursuant to Section 16 below) right and license to use the Licensed Marks in Article 6connection with the conduct of the Business in the Territory (excluding digital media Directory Products and Internet Services) by IMC and its Subsidiaries during the License Term of this Branding Agreement, (B) nonexclusive and nontransferable (except as expressly permitted pursuant to Section 16 below)) right and license to use the Licensed Marks in connection with the publishing, printing and distribution of digital media Directory Products (excluding Internet services) in the Territory in which such digital media directory Product is authorized to be Published and for the license term specified below;
(ii) a personal, royalty-free, fully paid-up, (A) exclusive and nontransferable (except as expressly permitted pursuant to Section 16 below) right and license to use the Licensed Marks in connection with the solicitation of and sale to Persons solely located in or solely conducting business in the Territory of classified advertising and telephone listings for inclusion in tangible media Directory Products in the Territory during the License Term; and (B) nonexclusive and nontransferable (except as expressly permitted pursuant to Section 16 below) right and license to use the Licensed Marks in connection with the solicitation of and sale to Persons located in or conducting business in the Territory of classified advertising and telephone listings for inclusion in Directory Products during the License Term; and
(iii) a personal, royalty-free, fully paid-up, nonexclusive and nontransferable (except as expressly permitted pursuant to Section 7.1 16 below) right and license, subject during the License Term, to identify Licensee (including on business cards, correspondence, order forms, approved signage for Primary Directories, customer bills and sales collateral, provided they include, respectively, billing and sales collateral for Primary Directories bearing Licensed Mxxx) as “the official publisher of [Spinco] print directories,” in a form and content approved by Licensor pursuant to Section 4, in the Service Areas.
(b) Licensee shall have the right to grant sublicenses during the License Term of its licensed rights with respect to the provisions of Section 5.1 of this Intellectual Property AgreementLicensed Marks to its Subsidiaries, to use resellers, agents, distributors and dealers in connection with the Licensed Intellectual Property conduct solely in the provision Territory of goods the applicable portion of the Business of Licensee and services Licensee’s Subsidiaries during the License Term; provided that:
(i) Licensee shall not grant any other sublicense without the prior written approval of Licensor, which approval shall not be unreasonably withheld or delayed;
(ii) Such sublicenses shall be in respect writing, shall be subject to compliance with the terms of this Branding Agreement, shall provide for a term not to exceed the License Term, shall terminate when this Branding Agreement or the applicable license terminates, is cancelled or expires, whichever occurs first, and shall prohibit further sublicensing without Licensor’s prior written consent;
(iii) Such sublicenses shall provide that should the sublicensee or any of its Affiliates become bankrupt or file a petition in bankruptcy, or should the business of the Spinco and its Subsidiaries solely any such entity be placed in the United States hands of a receiver, assignee or trustee for the benefit of creditors, whether by voluntary act of the entity or otherwise, all licenses and solely in the Licensed Field of Use and in the practice of any methods associated with the provision of rights granted pursuant to such goods and services in the Licensed Field of Use. The foregoing license granted sublicense to Spinco and such entity (including its Subsidiaries includesAffiliates, but is if any) shall terminate automatically; and
(iv) Licensee shall not limited to, have the right to reproduce, copy, modify, improve and enhance such Licensed Intellectual Property, but does not include the right: grant any sublicenses to any provider of Telecommunication Services or Video Services.
(wc) to use Licensee may sublicense the Licensed Intellectual Property outside of the United States (except in support of the business of the Spinco and its Subsidiaries in the Licensed Field of Use, provided such support outside of the United States may not be provided by any Person that provides facilities-based voice or data telecommunications services in the United States), (x) to disclose the non-public Licensed Intellectual Property Marks to any Person (other than any provider of Telecommunication Services or Video Services) with which Licensee forms a joint venture, marketing alliance, co-branding alliance or strategic alliance, in each instance solely to contractors permit such joint venture, marketing alliance, co-branding alliance or strategic alliance to market, advertise, sell and provide products and services in the conduct solely in the Territory of Spinco the applicable portion of the Business by Licensee and Licensee’s Subsidiaries in connection with the Licensed Marks; provided that:
(i) Licensee shall not grant such sublicenses without the prior written approval of Licensor, which approval shall not be unreasonably withheld or delayed;
(ii) Such sublicenses shall be in writing, shall be subject to compliance with the terms of this Branding Agreement, shall provide for a term not to exceed the License Term, shall terminate when this Branding Agreement or the applicable license terminates, is cancelled or expires or when the joint venture or alliance terminates, is cancelled or expires, whichever occurs first, and shall prohibit further sublicensing without Licensor’s prior written consent; and
(iii) Such sublicenses shall provide that should the sublicensee, any Person in such joint venture or alliance, or any Affiliates of any of the foregoing become bankrupt or file a petition in bankruptcy, or should the business of any such entity be placed in the hands of a receiver, assignee or trustee for the benefit of creditors, whether by voluntary act of the entity or otherwise, all licenses and rights granted pursuant to such sublicense to such entity (including its Affiliates, if any) shall terminate automatically.
(d) Except and to the extent expressly permitted pursuant to Section 2(a), Licensee, its Subsidiaries and Licensee’s sublicensees shall not use the Licensed Marks in support connection with the marketing, advertising, sale or provision of such business any goods or services to Persons outside the Territory or otherwise in the United States in the Licensed Field conduct of Use or to contractors any Business outside of the United States in support Territory; provided, however, (i) Licensee, Licensee’s Subsidiaries and Licensee’s sublicensees may provide a de minimis number of the business in the United States in Directory Products using the Licensed Field of Use (except such disclosure Marks to contractors Persons located outside of the United States may Territory or the geographic area in which such Directory Product is permitted to be Published; and (ii) the inclusion of de minimis content from outside the Territory or the geographic area in which such Directory Product is permitted to be Published in Directory Products primarily including listings of Persons located in the Territory or geographic area in which such Directory Product is permitted to be Published and primarily directed at end users located in the Territory or geographic area in which such Directory Product is permitted to be Published shall not be made to any Person that provides facilities-based voice or data telecommunications services in the United States)), (y) to grant sublicenses to any Person (other than to contractors a use of Spinco or its Subsidiaries in support of such business in the United States in the Licensed Field of Use (provided that such sublicense may not be granted to any Person Marks outside of the United States that provides facilities-based voice Territory or data telecommunications services geographic area in which such Directory Product is permitted to be Published.
(e) Except and only to the United States)) extent expressly provided herein, and then only during the License Term, nothing contained herein shall restrict Licensor’s ability to use or (z) to assign such license other than to permitted successors and assigns sublicense the use of Spinco any Licensed Marks. Notwithstanding the foregoing, nothing contained herein shall prevent Licensor or its Subsidiaries in the Business, but only in the United States and in the Affiliates from using any Licensed Field of Use. The foregoing license to Spinco and its Subsidiaries shall not extend Marks to: (i) market, advertise, sell or provide internet-based services on and through websites on the Internet (as defined in the Non-Competition Agreement), including, but not limited to the website at “www.[ ].com,” or any modifications, improvements, enhancements, additions other communications networks; (ii) publish and provide directory products and services primarily comprised of listings of Persons located or derivations of the Business after the Effective Date that are doing business outside of the Licensed Field Territory for which an exclusive license has been granted; (iii) publish and provide directory products and services primarily comprised of Use, listings of Persons located or (ii) other geographic territories doing business outside of the United States (except Territory for which an exclusive license has been granted but including listings of Persons located or doing business in the Territory for which an exclusive license has been granted that are de minimis when compared to the extent expressly permitted in support entirety of the business listings included in such directory products and services and when compared to the totality of the Spinco and its Subsidiaries listings that are available in the Licensed Field Territory for which an exclusive license has been granted for inclusion in such directory products and services; (iv) publish and provide directory products and services primarily comprised of Use).
listings of wireless telephone numbers, including those of Persons located or doing business in the Territory for which an exclusive license has been granted; (bv) Subject to previously distribute or make available in the Territory for which an exclusive license has been granted rights and licenses, if any, Licensor hereby irrevocably assigns, grants and conveys to Spinco and its Subsidiaries an undivided joint ownership interest in and to the right, title and interest of Licensor and U.S. Affiliates to the Business Proprietary Software, Spinco Non-Statutory Intellectual Property and Proprietary Business Information; provided, however, the joint ownership interest in Business Proprietary Software is subject to the restrictions set forth in Section 2.4 hereof. The joint ownership interest of Spinco and its Subsidiaries on the one hand, and Licensor and its U.S. Affiliates on the other hand, includes, but is not limited to, the unrestricted right to use, reproduce, copy, modify, improve, create derivative works, enhance, transfer, assign, otherwise convey and to exercise any and all rights relating to such Proprietary Business Information without the obligation to account to the other therefor, except and to the extent set forth in Article 5.
(c) Subject to previously granted rights and licenses, if any, Licensor hereby irrevocably assigns, grants and conveys to Spinco and its Subsidiaries all right, title and interest of Licensor and its U.S. Affiliates, if any, in and to the Designated Spinco Statutory Intellectual Property.
(d) From time to time after the date of this Intellectual Property Agreement, as and when requested by a party hereto, the other party will execute and deliver, or cause to be executed and delivered, any documents hereto as may be reasonably necessary or appropriate to effectuate the intent of this Intellectual Property Agreement.
2.3 For a period of three (3) years from the date on which the Effective Time occurs, Licensor and its Affiliates (other than Spinco and its Subsidiaries) shall have no right to grant any licenses to any Person (other than an Affiliate of Licensor) who competes directly with the Business to use substantially all of any item of software listed on Schedule B and included in Business Proprietary Software.
2.4 For a period of three (3) years from the date on which the Effective Time occurs, Spinco and its Subsidiaries shall have no right to grant any licenses to any Person (other than a Subsidiary of Spinco) who competes directly with the business of Licensor or any of its Affiliates (other than Spinco and its Subsidiaries) to use substantially all of any item of software listed on Schedule B and included in Business Proprietary Softwarethe foregoing directory products or services.
Appears in 1 contract
Grant of Licenses and Rights. 2.1 Subject to previously granted rights and licenses, if any, as of the Effective Time, Spinco and its Subsidiaries hereby:
(a) irrevocably assign, grant and convey to Licensor and its Affiliates (other than Licensee and its Subsidiaries) an undivided joint ownership interest in and to the right, title and interest of Licensee and its Subsidiaries to the Business Proprietary Software, Spinco Non-Statutory Intellectual Property and Proprietary Business Information; provided, however, the joint ownership interest in Business Proprietary Software is subject to the restrictions set forth in Section 2.3 hereof. The joint ownership interest of Spinco and its Subsidiaries on the one hand, and Licensor and its Affiliates on the other hand, includes, but is not limited to, the unrestricted right to use, reproduce, copy, modify, improve, create derivative works, enhance, transfer, assign, otherwise convey and to exercise any and all rights relating to such Business Proprietary Software, Spinco Non-Statutory Intellectual Property and Proprietary Business Information without the obligation to account to the other therefor, except and to the extent set forth in Article V;
(b) grant to Licensor and its Affiliates a royalty-free, fully paid-up, irrevocable, nonexclusive license under Designated Spinco Statutory Intellectual Property (excluding any Trademarks and any copyrights in advertising copy included therein) to make, have made, use, have used, sell, have sold, products and services, without in any way accounting to Spinco or its Subsidiaries; and
(c) irrevocably assigns, grants and conveys to Licensor and its Affiliates (other than Licensee and its Subsidiaries) all right, title and interest, if any, of Licensee and its Subsidiaries in and to Customer Listing Data.
2.2 Licensor, on behalf of itself and its U.S. Affiliates, hereby grants, as of the Effective Date, the following rights and licenses:
(a) Subject to previously granted rights and licenses, if any, and subject to the terms and conditions of this Branding Agreement and effective upon the Effective Time, Licensor hereby grants to Spinco Licensee and to its Subsidiaries the following licenses:
(i) a personal, royalty-free, fully paid-up, irrevocable (A) exclusive and nontransferable (except and to the extent set forth expressly permitted pursuant to Section 16 below) right and license to use the Licensed Marks in Article 6connection with the conduct of the Business in the Territory (excluding digital media Directory Products and Internet Services) by IMC and its Subsidiaries during the License Term of this Branding Agreement, (B) nonexclusive and nontransferable (except as expressly permitted pursuant to Section 16 below)) right and license to use the Licensed Marks in connection with the publishing, printing and distribution of digital media Directory Products (excluding Internet services) in the Territory in which such digital media directory Product is authorized to be Published and for the license term specified below;
(ii) a personal, royalty-free, fully paid-up, (A) exclusive and nontransferable (except as expressly permitted pursuant to Section 16 below) right and license to use the Licensed Marks in connection with the solicitation of and sale to Persons solely located in or solely conducting business in the Territory of classified advertising and telephone listings for inclusion in tangible media Directory Products in the Territory during the License Term; and (B) nonexclusive and nontransferable (except as expressly permitted pursuant to Section 16 below) right and license to use the Licensed Marks in connection with the solicitation of and sale to Persons located in or conducting business in the Territory of classified advertising and telephone listings for inclusion in Directory Products during the License Term; and
(iii) a personal, royalty-free, fully paid-up, nonexclusive and nontransferable (except as expressly permitted pursuant to Section 7.1 16 below) right and license, subject during the License Term, to identify Licensee (including on business cards, correspondence, order forms, approved signage for Primary Directories, customer bills and sales collateral, provided they include, respectively, billing and sales collateral for Primary Directories bearing Licensed Xxxx) as "the official publisher of [Spinco] print directories," in a form and content approved by Licensor pursuant to Section 4, in the Service Areas.
(b) Licensee shall have the right to grant sublicenses during the License Term of its licensed rights with respect to the provisions of Section 5.1 of this Intellectual Property AgreementLicensed Marks to its Subsidiaries, to use resellers, agents, distributors and dealers in connection with the Licensed Intellectual Property conduct solely in the provision Territory of goods the applicable portion of the Business of Licensee and services Licensee's Subsidiaries during the License Term; provided that:
(i) Licensee shall not grant any other sublicense without the prior written approval of Licensor, which approval shall not be unreasonably withheld or delayed;
(ii) Such sublicenses shall be in respect writing, shall be subject to compliance with the terms of this Branding Agreement, shall provide for a term not to exceed the License Term, shall terminate when this Branding Agreement or the applicable license terminates, is cancelled or expires, whichever occurs first, and shall prohibit further sublicensing without Licensor's prior written consent;
(iii) Such sublicenses shall provide that should the sublicensee or any of its Affiliates become bankrupt or file a petition in bankruptcy, or should the business of the Spinco and its Subsidiaries solely any such entity be placed in the United States hands of a receiver, assignee or trustee for the benefit of creditors, whether by voluntary act of the entity or otherwise, all licenses and solely in the Licensed Field of Use and in the practice of any methods associated with the provision of rights granted pursuant to such goods and services in the Licensed Field of Use. The foregoing license granted sublicense to Spinco and such entity (including its Subsidiaries includesAffiliates, but is if any) shall terminate automatically; and
(iv) Licensee shall not limited to, have the right to reproduce, copy, modify, improve and enhance such Licensed Intellectual Property, but does not include the right: grant any sublicenses to any provider of Telecommunication Services or Video Services.
(wc) to use Licensee may sublicense the Licensed Intellectual Property outside of the United States (except in support of the business of the Spinco and its Subsidiaries in the Licensed Field of Use, provided such support outside of the United States may not be provided by any Person that provides facilities-based voice or data telecommunications services in the United States), (x) to disclose the non-public Licensed Intellectual Property Marks to any Person (other than any provider of Telecommunication Services or Video Services) with which Licensee forms a joint venture, marketing alliance, co-branding alliance or strategic alliance, in each instance solely to contractors permit such joint venture, marketing alliance, co-branding alliance or strategic alliance to market, advertise, sell and provide products and services in the conduct solely in the Territory of Spinco the applicable portion of the Business by Licensee and Licensee's Subsidiaries in connection with the Licensed Marks; provided that:
(i) Licensee shall not grant such sublicenses without the prior written approval of Licensor, which approval shall not be unreasonably withheld or delayed;
(ii) Such sublicenses shall be in writing, shall be subject to compliance with the terms of this Branding Agreement, shall provide for a term not to exceed the License Term, shall terminate when this Branding Agreement or the applicable license terminates, is cancelled or expires or when the joint venture or alliance terminates, is cancelled or expires, whichever occurs first, and shall prohibit further sublicensing without Licensor's prior written consent; and
(iii) Such sublicenses shall provide that should the sublicensee, any Person in such joint venture or alliance, or any Affiliates of any of the foregoing become bankrupt or file a petition in bankruptcy, or should the business of any such entity be placed in the hands of a receiver, assignee or trustee for the benefit of creditors, whether by voluntary act of the entity or otherwise, all licenses and rights granted pursuant to such sublicense to such entity (including its Affiliates, if any) shall terminate automatically.
(d) Except and to the extent expressly permitted pursuant to Section 2(a), Licensee, its Subsidiaries and Licensee's sublicensees shall not use the Licensed Marks in support connection with the marketing, advertising, sale or provision of such business any goods or services to Persons outside the Territory or otherwise in the United States in the Licensed Field conduct of Use or to contractors any Business outside of the United States in support Territory; provided, however, (i) Licensee, Licensee's Subsidiaries and Licensee's sublicensees may provide a de minimis number of the business in the United States in Directory Products using the Licensed Field of Use (except such disclosure Marks to contractors Persons located outside of the United States may Territory or the geographic area in which such Directory Product is permitted to be Published; and (ii) the inclusion of de minimis content from outside the Territory or the geographic area in which such Directory Product is permitted to be Published in Directory Products primarily including listings of Persons located in the Territory or geographic area in which such Directory Product is permitted to be Published and primarily directed at end users located in the Territory or geographic area in which such Directory Product is permitted to be Published shall not be made to any Person that provides facilities-based voice or data telecommunications services in the United States)), (y) to grant sublicenses to any Person (other than to contractors a use of Spinco or its Subsidiaries in support of such business in the United States in the Licensed Field of Use (provided that such sublicense may not be granted to any Person Marks outside of the United States that provides facilities-based voice Territory or data telecommunications services geographic area in which such Directory Product is permitted to be Published.
(e) Except and only to the United States)) extent expressly provided herein, and then only during the License Term, nothing contained herein shall restrict Licensor's ability to use or (z) to assign such license other than to permitted successors and assigns sublicense the use of Spinco any Licensed Marks. Notwithstanding the foregoing, nothing contained herein shall prevent Licensor or its Subsidiaries in the Business, but only in the United States and in the Affiliates from using any Licensed Field of Use. The foregoing license to Spinco and its Subsidiaries shall not extend Marks to: (i) market, advertise, sell or provide internet-based services on and through websites on the Internet (as defined in the Non-Competition Agreement), including, but not limited to the website at "www.[ ].com," or any modifications, improvements, enhancements, additions other communications networks; (ii) publish and provide directory products and services primarily comprised of listings of Persons located or derivations of the Business after the Effective Date that are doing business outside of the Licensed Field Territory for which an exclusive license has been granted; (iii) publish and provide directory products and services primarily comprised of Use, listings of Persons located or (ii) other geographic territories doing business outside of the United States (except Territory for which an exclusive license has been granted but including listings of Persons located or doing business in the Territory for which an exclusive license has been granted that are de minimis when compared to the extent expressly permitted in support entirety of the business listings included in such directory products and services and when compared to the totality of the Spinco and its Subsidiaries listings that are available in the Licensed Field Territory for which an exclusive license has been granted for inclusion in such directory products and services; (iv) publish and provide directory products and services primarily comprised of Use).
listings of wireless telephone numbers, including those of Persons located or doing business in the Territory for which an exclusive license has been granted; (bv) Subject to previously distribute or make available in the Territory for which an exclusive license has been granted rights and licenses, if any, Licensor hereby irrevocably assigns, grants and conveys to Spinco and its Subsidiaries an undivided joint ownership interest in and to the right, title and interest of Licensor and U.S. Affiliates to the Business Proprietary Software, Spinco Non-Statutory Intellectual Property and Proprietary Business Information; provided, however, the joint ownership interest in Business Proprietary Software is subject to the restrictions set forth in Section 2.4 hereof. The joint ownership interest of Spinco and its Subsidiaries on the one hand, and Licensor and its U.S. Affiliates on the other hand, includes, but is not limited to, the unrestricted right to use, reproduce, copy, modify, improve, create derivative works, enhance, transfer, assign, otherwise convey and to exercise any and all rights relating to such Proprietary Business Information without the obligation to account to the other therefor, except and to the extent set forth in Article 5.
(c) Subject to previously granted rights and licenses, if any, Licensor hereby irrevocably assigns, grants and conveys to Spinco and its Subsidiaries all right, title and interest of Licensor and its U.S. Affiliates, if any, in and to the Designated Spinco Statutory Intellectual Property.
(d) From time to time after the date of this Intellectual Property Agreement, as and when requested by a party hereto, the other party will execute and deliver, or cause to be executed and delivered, any documents hereto as may be reasonably necessary or appropriate to effectuate the intent of this Intellectual Property Agreement.
2.3 For a period of three (3) years from the date on which the Effective Time occurs, Licensor and its Affiliates (other than Spinco and its Subsidiaries) shall have no right to grant any licenses to any Person (other than an Affiliate of Licensor) who competes directly with the Business to use substantially all of any item of software listed on Schedule B and included in Business Proprietary Software.
2.4 For a period of three (3) years from the date on which the Effective Time occurs, Spinco and its Subsidiaries shall have no right to grant any licenses to any Person (other than a Subsidiary of Spinco) who competes directly with the business of Licensor or any of its Affiliates (other than Spinco and its Subsidiaries) to use substantially all of any item of software listed on Schedule B and included in Business Proprietary Softwarethe foregoing directory products or services.
Appears in 1 contract
Samples: Distribution Agreement (Fairpoint Communications Inc)
Grant of Licenses and Rights. 2.1 Subject to previously granted rights and licenses, if any, as of the Effective Time, Spinco and its Subsidiaries hereby:
(a) irrevocably assign, grant and convey to Licensor and its Affiliates (other than Licensee and its Subsidiaries) an undivided joint ownership interest in and to the right, title and interest of Licensee and its Subsidiaries to the Business Proprietary Software, Spinco Non-Statutory Intellectual Property and Proprietary Business Information; provided, however, the joint ownership interest in Business Proprietary Software is subject to the restrictions set forth in Section 2.3 hereof. The joint ownership interest of Spinco and its Subsidiaries on the one hand, and Licensor and its Affiliates on the other hand, includes, but is not limited to, the unrestricted right to use, reproduce, copy, modify, improve, create derivative works, enhance, transfer, assign, otherwise convey and to exercise any and all rights relating to such Business Proprietary Software, Spinco Non-Statutory Intellectual Property and Proprietary Business Information without the obligation to account to the other therefor, except and to the extent set forth in Article V;
(b) grant to Licensor and its Affiliates a royalty-free, fully paid-up, irrevocable, nonexclusive license under Designated Spinco Statutory Intellectual Property (excluding any Trademarks and any copyrights in advertising copy included therein) to make, have made, use, have used, sell, have sold, products and services, without in any way accounting to Spinco or its Subsidiaries; and
(c) irrevocably assigns, grants and conveys to Licensor and its Affiliates (other than Licensee and its Subsidiaries) all right, title and interest, if any, of Licensee and its Subsidiaries in and to Customer Listing Data.
2.2 Licensor, on behalf of itself and its U.S. Affiliates, hereby grants, as of the Effective Date, the following rights and licenses:
(a) Subject to previously granted rights and licenses, if any, and subject to the terms and conditions of this Branding Agreement (including the Section 2(b) License and Section 2(c) License), and effective upon the Distribution (as defined in the Distribution Agreement), Licensor hereby grants to Spinco Licensee and its to Licensee’s Subsidiaries a limited, personal, royalty-free, fully paid-up, irrevocable (except and to the extent set forth in Article 6, below), nonexclusive and nontransferable (except as permitted pursuant to Section 7.1 below) license, subject to the provisions of Section 5.1 of this Intellectual Property Agreement, right and license for Licensee and its Subsidiaries to use the Licensed Intellectual Property Schedule A Marks in connection with the conduct of the Business (which, solely in the provision for purposes of goods this Section 2(a), will include all products and services in respect sold by Licensee which, as of the business of Effective Time, use the Spinco and its Subsidiaries solely Licensed Schedule A Marks, wherever sold by the Licensee in the United States Time) during the period of time set forth in this Section 2(a):
(i) Licensee shall cease and solely in shall cause the Subsidiaries of the Licensee to cease, immediately, but not later than sixty (60) calendar days after the Closing Date, any and all use of the Licensed Field Schedule A Marks in any fashion or combination on stationery, contracts, purchase orders, agreements and other business forms and writings which could result after the Closing Date in a legal commitment of Use or which could reasonably result in causing any Person to believe it had obtained a legal commitment from any of Verizon Communications Inc. or any of its Affiliates. Licensee shall cease and shall cause the Affiliates of Licensee to cease, immediately after the Closing Date, any use of the Licensed Schedule A Marks in the practice any fashion or combination, as well as of any methods associated other designation indicating affiliation after the Closing Date with the provision any of such goods Verizon Communications Inc. or any of its Affiliates, other than as expressly permitted by Sections 2(b) and services in the Licensed Field of Use2(c) hereof. The foregoing license granted to Spinco and its Subsidiaries includesAs promptly as possible, but no later than within thirty (30) calendar days after the Closing Date, Licensee shall notify, in writing, all customers, suppliers and financial institutions having current business relationships with IMC or its Affiliates that IMC has become a separate entity and is not limited tono longer affiliated with Licensor or any of its Affiliates. Notwithstanding the foregoing, on the right Closing Date IMC shall file the forms and related documents required to reproduce, copy, modify, improve and enhance such Licensed Intellectual Property, but change the name of IMC to a name that does not include any Licensed Schedule A Marks;
(ii) After the right: Closing, except as otherwise expressly permitted hereunder, all Licensed Schedule A Marks on all other materials in the possession or under the control of Licensee shall be replaced, removed or covered-over by Licensee, at Licensee’s expense, as soon as possible, but in no event later than one hundred eighty (w180) to use calendar days after the Licensed Intellectual Property outside Closing Date for items existing as of the United States (except in support of the business of the Spinco Closing Date with Licensed Schedule A Marks affixed to them that are used by Licensee and its Subsidiaries in the Licensed Field their operation of Use, provided such support outside of the United States may not be provided by any Person that provides facilities-based voice or data telecommunications services in the United States), (x) to disclose the non-public Licensed Intellectual Property to any Person (other than to contractors of Spinco or its Subsidiaries in support of such business in the United States in the Licensed Field of Use or to contractors outside of the United States in support of the business in the United States in the Licensed Field of Use (except such disclosure to contractors outside of the United States may not be made to any Person that provides facilities-based voice or data telecommunications services in the United States)), (y) to grant sublicenses to any Person (other than to contractors of Spinco or its Subsidiaries in support of such business in the United States in the Licensed Field of Use (provided that such sublicense may not be granted to any Person outside of the United States that provides facilities-based voice or data telecommunications services in the United States)) or (z) to assign such license other than to permitted successors and assigns of Spinco or its Subsidiaries in the Business, but only in including, without limitation, use of Licensed Schedule A Marks on buildings, vehicles, equipment, kits, signs, billboards, manual covers and notebooks; provided, however, that the United States Licensee and in its Subsidiaries shall have a period of up to nine (9) months to remove Licensed Schedule A Marks from signs (including signs on buildings and vehicles) to the extent Licensee and its Subsidiaries undertake efforts immediately to remove such Licensed Field of UseSchedule A Marks from such signs. The foregoing license to Spinco In addition, Licensee and its Subsidiaries shall not extend tobe deemed to have violated this Branding Agreement or to have infringed the rights of Licensor or its Affiliates by reason of: (iA) any modifications, improvements, enhancements, additions or derivations of the Business after the Effective Date that are outside appearance of the Licensed Field Schedule A Marks in or on any archival business records or in or on any third party’s publications, marketing materials, brochures, equipment or products that IMC or its Subsidiaries distributed in the ordinary course of Usebusiness prior to the Closing Date, and that generally are in the public domain, or any other similar uses by any such third party over which the Licensee or its Subsidiaries have no control; provided that Licensee and its Subsidiaries take reasonable steps to notify such third party of such usage of which it becomes aware, or (iiB) other geographic territories outside the use, provided that such use shall exist for no more than one (1) year after the Closing Date, by the Licensee or its Subsidiaries of the United States (except Licensed Schedule A Marks in a non-trademark manner for purposes of conveying to customers or the extent expressly permitted general public that the name of their businesses have changed or the change in support of the business of the Spinco and its Subsidiaries in the Licensed Field of Use).ownership;
(biii) Subject to previously granted rights Section 2(a)(i) above, from and licensesafter the Closing, if anyLicensee shall not use or include, Licensor hereby irrevocably assigns, grants and conveys to Spinco and Licensee shall cause its Subsidiaries an undivided joint ownership interest in and not to the right, title and interest of Licensor and U.S. Affiliates to the Business Proprietary Software, Spinco Non-Statutory Intellectual Property and Proprietary Business Information; provided, howeveruse or include, the joint ownership interest Licensed Schedule A Marks as or in Business Proprietary Software is subject to the restrictions set forth their corporate, popular or trade names, or in Section 2.4 hereof. The joint ownership interest of Spinco and its Subsidiaries on the one hand, and Licensor and its U.S. Affiliates on the other hand, includes, but is not limited to, the unrestricted right to use, reproduce, copy, modify, improve, create derivative works, enhance, transfer, assign, otherwise convey and to exercise any and all rights relating to such Proprietary Business Information without the obligation to account to the other therefor, except and to the extent set forth in Article 5.
(c) Subject to previously granted rights and licenses, if any, Licensor hereby irrevocably assigns, grants and conveys to Spinco and its Subsidiaries all right, title and interest of Licensor and its U.S. Affiliates, if any, in and to the Designated Spinco Statutory Intellectual Property.
(d) From time to time advertising or publications placed or published after the date of this Intellectual Property Agreement, as and when requested by a party hereto, the other party will execute and deliver, or cause to be executed and delivered, any documents hereto as may be reasonably necessary or appropriate to effectuate the intent of this Intellectual Property Agreement.
2.3 For a period of three (3) years from the date on which the Effective Time occurs, Licensor and its Affiliates (other than Spinco and its Subsidiaries) shall have no right to grant any licenses to any Person (other than an Affiliate of Licensor) who competes directly with the Business to use substantially all of any item of software listed on Schedule B and included in Business Proprietary Software.
2.4 For a period of three (3) years from the date on which the Effective Time occurs, Spinco and its Subsidiaries shall have no right to grant any licenses to any Person (other than a Subsidiary of Spinco) who competes directly with the business of Licensor or any of its Affiliates (other than Spinco and its Subsidiaries) to use substantially all of any item of software listed on Schedule B and included in Business Proprietary Software.Closing
Appears in 1 contract
Samples: Branding Agreement (Idearc Inc.)
