Seller Intellectual Property. (a) Except as specifically provided in this Section 8.7, Purchaser acknowledges and agrees that none of Purchaser or its Affiliates is purchasing, acquiring, receiving a license to or otherwise obtaining any right, title or interest in, to or under any Intellectual Property owned or licensed by the Seller Entities or any of their respective Affiliates, including the Seller Entity Names. (b) Except as provided in this Section 8.7, as of and following the Closing, Purchaser shall, and shall cause its Affiliates to, cease and discontinue promptly after the Closing any and all uses of any and all Intellectual Property owned or licensed by the Seller Entities or any of their respective Affiliates, including any Seller Entity Names. Except as provided in this Section 8.7, Purchaser agrees that, as of and following the Closing, none of Purchaser not any of its Affiliates shall have any right, title or interest in, or any authority or license to use or allow others to use in any manner whatsoever, any Intellectual Property owned or licensed by the Seller Entities or their respective Affiliates, and any such right, title, interest, authority, license or sublicense or other arrangement relating thereto (whether written or oral) existing prior to the Closing, shall automatically terminate simultaneously with and effective as of the Closing. Notwithstanding the foregoing and only to the extent that use of labeling, stationery, business forms, supplies, ATM cards, debit cards, gift cards, checks, deposit slips and envelopes (but excluding any advertising, marketing or other promotional materials) existing on the Business Premises, in the inventory of Purchaser or any of its Affiliates or in the possession of a Banking Center Customer, in each case, that bear a Seller Entity Name as of the Closing (the “Business Material”) cannot be commercially reasonably avoided after the Closing by Purchaser and its Affiliates, Purchaser and such Affiliates shall have, subject to the execution by Purchaser and such Affiliates of the License Agreement, a limited, non-transferable, non-sublicensable, royalty-free, non-exclusive right to use and deplete the Business Materials for a thirty- (30) day period following the Closing Date (such right, the “Seller Entity Name License” and such period, the “Transitional Period”); provided, however, that (i) none of Purchaser or any of its Affiliates shall take any action that could reasonably be expected to impair the value of or goodwill associated with the Seller Entity Names, (ii) Purchaser and its Affiliates shall use the Business Materials and make any use of the Seller Entity Names pursuant to this Section 8.7 in substantially the same forms, and for substantially the same purposes, as a Seller Entity is using such Seller Entity Names in connection with the operation and conduct of the Transferred Business immediately prior to the Closing, but not including any advertising, marketing or other promotional activities and (iii)Purchaser and its Affiliates shall use their reasonable best efforts to minimize their respective use of the Seller Entity Names and shall cease using the Seller Entity Names on such Business Materials as set forth in the License Agreement and in any event within the Transitional Period. For clarity, the foregoing activities during the Transitional Period will be for wind-down purposes only, and none of Purchaser or any of its Affiliates shall actively use the Seller Entity Names in any advertising, marketing or other promotional activities during the Transitional Period. (c) Purchaser, for itself and its Affiliates, acknowledges and agrees that, (i) as between the parties hereto, the Seller Entities and their respective Affiliates own or have the exclusive right to use any and all of the Seller Entity Names and, except as otherwise expressly provided in this Section 8.7, none of Purchaser or any of its Affiliates shall, as of the Closing, have any rights in or to the Seller Entity Names, (ii) none of Purchaser or any of its Affiliates shall contest the ownership or validity of any rights of the Seller Entities or any of their respective Affiliates in or to the Seller Entity Names, and (iii) none of Purchaser or any of its Affiliates shall adopt, use, register or attempt to register any of the Seller Entity Names or instruct others to do so. Purchaser, for itself and its Affiliates, agrees and shall ensure that any use of the Seller Entity Names as permitted in this Section 8.7 shall be only with respect to goods and services of a level of quality equal to or greater than the quality of goods and services with respect to which the Seller Entities and their respective Affiliates used such Seller Entity Names prior to the Closing. Purchaser, for itself and its Affiliates, agrees that, after the Closing, none of Purchaser or any of its Affiliates, will expressly, or willingly by implication, do business as or represent themselves as any Seller Entity or any Affiliate of the Seller Entities and the personnel of Purchaser or any of its Affiliates shall not, and shall have no authority to, as of the Closing, hold themselves out as officers, employees or agents of the Seller Entities or any of their respective Affiliates. (d) Purchaser, on behalf of itself and its Affiliates, agrees that Purchaser and its Affiliates shall indemnify and hold harmless the Seller Entities and their respective Affiliates from and against all Damages that arise out of, relate to or result from use of the Seller Entity Names by Purchaser during the Transitional Period. (e) The activities contemplated in this Section 8.7 shall be implemented in a comparable manner in connection with a Secondary Sale.
Appears in 1 contract
Samples: Purchase and Assumption Agreement (First Niagara Financial Group Inc)
Seller Intellectual Property. (a) Except as specifically provided in this Section 8.7Schedule 3.08(a) of the Disclosure Letter contains a true, Purchaser acknowledges correct and agrees that none complete list of Purchaser or its Affiliates is purchasing, acquiring, receiving a license to or otherwise obtaining any right, title or interest in, to or under any all Owned Intellectual Property owned for which registrations have been sought from or licensed issued by any Governmental Authority (“Registered Owned Intellectual Property”), specifying as to each, as applicable, (i) the Seller Entities record owner of such Owned Intellectual Property, (ii) the jurisdictions in which such Owned Intellectual Property has been registered (or any of their respective Affiliatesin which an application for registration has been filed), including and (iii) the Seller Entity Namesregistration or application numbers for such Owned Intellectual Property.
(b) Except The Seller directly or indirectly (i) owns exclusively and free and clear of all Liens (other than Permitted Liens and non-exclusive licenses granted in the ordinary course of business) all Owned Intellectual Property and (ii) has sufficient licenses and other rights to use all other Intellectual Property currently used in, and otherwise necessary for, the conduct of the Business. No Owned Intellectual Property owned or purported to be owned by the Seller is jointly owned by any third party. The Seller Intellectual Property is all of the Intellectual Property necessary to operate the Business as provided presently conducted.
(c) The conduct of the Business as currently conducted has not infringed, misappropriated or otherwise violated and does not infringe, misappropriate or otherwise violate the Intellectual Property of any Person. To the Knowledge of the Seller, no Person has infringed, misappropriated or otherwise violated or is infringing, misappropriating or otherwise violating the rights of the Seller with respect to the Seller Intellectual Property.
(d) The Seller has entered into binding, valid and enforceable written Contracts with each current and former employee and independent contractor who is or was involved in or has contributed to the invention, creation, or development of any Owned Intellectual Property during the course of employment or engagement with the Seller whereby such employee or independent contractor irrevocably assigns to the Seller all ownership interest such employee or independent contractor may have in or to such Owned Intellectual Property, or ownership of such material Intellectual Property has vested in the Seller as a matter of Law.
(e) Neither the execution, delivery, or performance of this Section 8.7Agreement, the other Transaction Documents nor the consummation of the transactions contemplated hereby or thereby, will result in the loss or impairment of or payment of any additional amounts with respect to, or require the consent of any other Person in respect of, the right of the Buyer or its Affiliates to own or use any Seller Intellectual Property in the conduct of the Business as of and currently conducted. Immediately following the Closing, Purchaser shall, and shall cause its Affiliates to, cease and discontinue promptly after the Closing any and all uses of any and all Seller Intellectual Property will be owned or licensed available for use by the Buyer on the same terms as they were owned or available for use by the Seller Entities or any of their respective Affiliates, including any Seller Entity Names. Except as provided in this Section 8.7, Purchaser agrees that, as of and following the Closing, none of Purchaser not any of its Affiliates shall have any right, title or interest in, or any authority or license to use or allow others to use in any manner whatsoever, any Intellectual Property owned or licensed by the Seller Entities or their respective Affiliates, and any such right, title, interest, authority, license or sublicense or other arrangement relating thereto (whether written or oral) existing prior to the Closing, shall automatically terminate simultaneously with and effective as of the Closing. Notwithstanding the foregoing and only to the extent that use of labeling, stationery, business forms, supplies, ATM cards, debit cards, gift cards, checks, deposit slips and envelopes (but excluding any advertising, marketing or other promotional materials) existing on the Business Premises, in the inventory of Purchaser or any of its Affiliates or in the possession of a Banking Center Customer, in each case, that bear a Seller Entity Name as of the Closing (the “Business Material”) cannot be commercially reasonably avoided after the Closing by Purchaser and its Affiliates, Purchaser and such Affiliates shall have, subject to the execution by Purchaser and such Affiliates of the License Agreement, a limited, non-transferable, non-sublicensable, royalty-free, non-exclusive right to use and deplete the Business Materials for a thirty- (30) day period following the Closing Date (such right, the “Seller Entity Name License” and such period, the “Transitional Period”); provided, however, that (i) none of Purchaser or any of its Affiliates shall take any action that could reasonably be expected to impair the value of or goodwill associated with the Seller Entity Names, (ii) Purchaser and its Affiliates shall use the Business Materials and make any use of the Seller Entity Names pursuant to this Section 8.7 in substantially the same forms, and for substantially the same purposes, as a Seller Entity is using such Seller Entity Names in connection with the operation and conduct of the Transferred Business immediately prior to the Closing, but not including any advertising, marketing or other promotional activities and .
(iii)Purchaser and its Affiliates shall use their reasonable best efforts to minimize their respective use f) All of the Seller Entity Names Intellectual Property is valid and shall cease using enforceable, and all Registered Owned Intellectual Property registrations are subsisting and in full force and effect, except where the failure to be so valid and enforceable or subsisting would not reasonably be expected to be, individually or in the aggregate, material to the Business. The Seller has taken commercially reasonable measures to maintain and enforce the Seller Entity Names on such Business Materials as set forth Intellectual Property and to preserve the confidentiality of all trade secrets and confidential information included in the License Agreement and in any event within the Transitional Period. For claritySeller Intellectual Property, the foregoing activities during the Transitional Period will be for windincluding by requiring all Persons having access thereto to execute binding, written non-down purposes only, and none of Purchaser or any of its Affiliates shall actively use the Seller Entity Names in any advertising, marketing or other promotional activities during the Transitional Perioddisclosure agreements.
(cg) PurchaserNo Owned Intellectual Property was created using funds, for itself facilities, or equipment provided or made available by any Governmental Authority or educational institution. No Governmental Authority has any claim of ownership in or to any Owned Intellectual Property.
(h) There are no, and its Affiliatesin the past five (5) years there have not been any, acknowledges Proceedings (including any opposition, cancellation, revocation, review, or other proceeding), whether settled, pending or threatened in writing, and agrees thatthe Seller has not received any written threat, notice or other communication (including in the form of offers to obtain a license): (i) as between alleging any infringement, misappropriation, or other violation of the parties hereto, Intellectual Property of any Person by the Seller Entities and their respective Affiliates own or have in the exclusive right to use any and all conduct of the Seller Entity Names and, except as otherwise expressly provided in this Section 8.7, none of Purchaser or any of its Affiliates shall, as of the Closing, have any rights in or to the Seller Entity Names, Business; (ii) none of Purchaser challenging the validity, enforceability, registrability, patentability, or any of its Affiliates shall contest the ownership or validity of any rights of the Seller Entities Owned Intellectual Property; or any of their respective Affiliates in or to the Seller Entity Names, and (iii) none of Purchaser by the Seller or any other Person alleging any infringement, misappropriation, or other violation by any Person of its Affiliates shall adopt, use, register any Seller Intellectual Property. The Seller is not subject to any outstanding Order that restricts or attempt impairs the use of any Seller Intellectual Property.
(i) The Seller does not use and has not used any Open Source Software or any modification or derivative thereof (i) in a manner that would grant to register any Person any rights to or immunities under any of the Owned Intellectual Property, or (ii) under any license requiring the Seller Entity Names to disclose or instruct others distribute the source code to do so. Purchaser, for itself and its Affiliates, agrees and shall ensure that any use of the Seller Entity Names as permitted software included in this Section 8.7 shall be only with respect the Owned Intellectual Property, to goods and services of a level of quality equal license or provide the source code to or greater than the quality of goods and services with respect to which the Seller Entities and their respective Affiliates used such Seller Entity Names prior to the Closing. Purchaser, for itself and its Affiliates, agrees that, after the Closing, none of Purchaser or any of its Affiliates, will expresslythe software included in the Owned Intellectual Property for the purpose of making derivative works, or willingly by implication, do business as or represent themselves as to make available for redistribution to any Seller Entity or Person the source code to any Affiliate of the Seller Entities and software included in the personnel of Purchaser Owned Intellectual Property at no or any of its Affiliates shall not, and shall have no authority to, as of the Closing, hold themselves out as officers, employees or agents of the Seller Entities or any of their respective Affiliatesminimal charge.
(dj) PurchaserAll Business IT Systems are in good working condition, on behalf of itself are free from any “back door,” virus, malware, Trojan horse or similar malicious code and its Affiliates, agrees that Purchaser material bugs and its Affiliates shall indemnify and hold harmless are sufficient for the Seller Entities and their respective Affiliates from and against all Damages that arise out of, relate to or result from use operation of the Business as currently conducted. In the past five (5) years, there has been no material malfunction, failure, continued substandard performance, denial-of-service, or other cyber incident, including any cyberattack, or other material impairment of the Business IT Systems. The Seller Entity Names by Purchaser during has taken commercially reasonable steps designed to safeguard the Transitional Periodconfidentiality, availability, security, and integrity of the Business IT Systems, including implementing and maintaining appropriate backup, disaster recovery, and software and hardware support arrangements.
(e) The activities contemplated in this Section 8.7 shall be implemented in a comparable manner in connection with a Secondary Sale.
Appears in 1 contract
Samples: Asset Purchase Agreement (Bridge Investment Group Holdings Inc.)
Seller Intellectual Property. (a) Except as Unless specifically provided in this Section 8.7, Purchaser acknowledges and agrees that none of Purchaser or its Affiliates is purchasing, acquiring, receiving a license to or otherwise obtaining any right, title or interest in, to or under any Intellectual Property owned or licensed by the Seller Entities or any of their respective Affiliates, including the Seller Entity Names.
(b) Except as provided in this Section 8.7, as of and following the Closing, Purchaser shall, and shall cause its Affiliates to, cease and discontinue promptly after the Closing any and all uses of any and all Intellectual Property owned or licensed by the Seller Entities or any of their respective Affiliates, including any Seller Entity Names. Except as provided in this Section 8.7, Purchaser agrees that, as of and following the Closing, none of Purchaser not any of its Affiliates shall have any right, title or interest in, or any authority or license to use or allow others to use in any manner whatsoever, any Intellectual Property owned or licensed by the Seller Entities or their respective Affiliates, and any such right, title, interest, authority, license or sublicense or other arrangement relating thereto (whether written or oral) existing prior to the Closing, shall automatically terminate simultaneously with and effective as of the Closing. Notwithstanding the foregoing and only to the extent that use of labeling, stationery, business forms, supplies, ATM cards, debit cards, gift cards, checks, deposit slips and envelopes (but excluding any advertising, marketing or other promotional materials) existing on the Business Premises, in the inventory of Purchaser or any of its Affiliates or in the possession of a Banking Center Customer, in each case, that bear a Seller Entity Name as of the Closing (the “Business Material”) cannot be commercially reasonably avoided after the Closing by Purchaser and its Affiliates, Purchaser and such Affiliates shall have, subject to the execution by Purchaser and such Affiliates of the License Agreement, a limited, non-transferable, non-sublicensable, royalty-free, non-exclusive right to use and deplete the Business Materials for a thirty- (30) day period following the Closing Date (such right, the “Seller Entity Name License” and such period, the “Transitional Period”); provided, however, that (i) none of Purchaser or any of its Affiliates shall take any action that could reasonably be expected to impair the value of or goodwill associated with the Seller Entity Names, (ii) Purchaser and its Affiliates shall use the Business Materials and make any use of the Seller Entity Names pursuant to this Section 8.7 in substantially the same forms, and for substantially the same purposes, as a Seller Entity is using such Seller Entity Names in connection with the operation and conduct of the Transferred Business immediately prior to the Closing, but not including any advertising, marketing or other promotional activities and (iii)Purchaser and its Affiliates shall use their reasonable best efforts to minimize their respective use of the Seller Entity Names and shall cease using the Seller Entity Names on such Business Materials as set forth in the License Agreement and in any event within the Transitional Period. For clarity, the foregoing activities during the Transitional Period will be for wind-down purposes only, and none of Purchaser or any of its Affiliates shall actively use the Seller Entity Names in any advertising, marketing or other promotional activities during the Transitional Period.
(c) Purchaser, for itself and its Affiliates, acknowledges and agrees that, (i) as between the parties hereto, the Seller Entities and their respective Affiliates own or have the exclusive right to use any and all of the Seller Entity Names and, except as otherwise expressly provided in this Section 8.7, none of Purchaser or any of its Affiliates shall, as of the Closing, have any rights in or to the Seller Entity Names, (ii) none of Purchaser or any of its Affiliates shall contest the ownership or validity of any rights of the Seller Entities or any of their respective Affiliates in or to the Seller Entity Names, and (iii) none of Purchaser or any of its Affiliates shall adopt, use, register or attempt to register any of the Seller Entity Names or instruct others to do so. Purchaser, for itself and its Affiliates, agrees and shall ensure that any use of the Seller Entity Names as permitted in this Section 8.7 shall be only with respect to goods and services of a level of quality equal to Agreement or greater than the quality of goods and services with respect to which the Seller Entities and their respective Affiliates used such Seller Entity Names prior to the Closing. otherwise authorized by Purchaser, for itself and its Affiliates, agrees that, after the Closing, none Seller agrees that, from and after the Closing Date, it shall not, and it shall cause its Subsidiaries and its and their respective Representatives not to, retain or use any copy of Purchaser any of the Purchased Patents, Codec Software or Codec Documents. Without limitation of Section 5.4 (Further Actions), if Seller or any of its Affiliates, will expressly, or willingly by implication, do business as or represent themselves as any Seller Entity Subsidiaries (or any Affiliate assignee or successor of the Seller Entities and the personnel of Purchaser or any of its Affiliates shall Subsidiaries) retains any right or interest in any Seller Intellectual Property Rights that cannot be, or for any reason is not, and shall have no authority to, as of assigned to Purchaser at the Closing, hold themselves out as officers, employees or agents of the Seller Entities or any of their respective Affiliates.
(d) Purchaserhereby grants, on behalf of itself and its AffiliatesSubsidiaries, successors and assigns (and agrees that Purchaser and its Affiliates shall indemnify and hold harmless the Seller Entities and their respective Affiliates from and against all Damages that arise out ofto so grant or cause to be so granted) to Purchaser, relate to or result from use effective as of the Seller Entity Names by Purchaser during the Transitional PeriodClosing, a perpetual, irrevocable, royalty free and fully paid-up, transferable, sublicensable (through multiple levels), exclusive, worldwide right and license to use, reproduce, distribute, display and perform (whether publicly or otherwise), prepare derivative works of and otherwise modify, make, sell, offer to sell, import and otherwise use and exploit, and exercise and practice all rights under, all or any portion of such Purchased Patents, Codec Software or Codec Documents.
(eb) The activities contemplated Seller, on behalf of itself and its Subsidiaries, effective as of the Closing, hereby grants to Purchaser a worldwide, nonexclusive, royalty-free, fully-paid, perpetual, fully transferable, irrevocable license with the right to sublicense any third party Intellectual Property Rights contained in, or used in connection with, the Codec Assets to make, use, sell, copy, offer for sale, import, export, create derivative works, improvements or modifications based upon or, distribute, display, perform, disclose and otherwise exploit any Purchaser or Purchaser Subsidiary product or service, in each case only to the extent Seller, or any Selling Subsidiary, has the right to grant such license(s) or sublicense(s) to Purchaser without payment of additional consideration to the owner or licensor of such Intellectual Property Rights. If additional consideration is required, Seller shall disclose such information to Purchaser and provide Purchaser (i) the option of obtaining such license or sublicense rights at Purchaser’s expense; and (ii) reasonable assistance associated with such matters.
(c) If Purchaser is unable to enforce the Patent Assets or the Codec Intellectual Property Rights against a third party as a result of any Applicable Law that prohibits enforcement of such rights by a transferee or licensee of such rights, Seller agrees to assign to Purchaser such rights as may be required by Purchaser to enforce the Patent Assets or the Codec Intellectual Property Rights, as applicable, in its own name. Seller shall, at Purchaser’s reasonable request and reasonable expense, fully cooperate in any litigation or other proceeding (including interference and opposition proceedings) relating to the Patents (including making witnesses available and providing evidence of invention dates and ownership).
(d) From and after the Closing, Seller shall cooperate with Purchaser as described in this Section 8.7 5.5(d) regarding all attorney-client privileges, attorney work product doctrine and any other professional privileges or rights held by Seller and not transferred to Purchaser that arose from the prosecution, defense or enforcement of the Purchased Patents before the Closing Date (“Protected Communications”). Seller shall not assert that the Protected Communications are not protected by the attorney-client privilege, attorney work product doctrine or other professional privileges unless and only to the extent that such privilege or immunity is withdrawn by Purchaser or is determined by a final judgment of a court of competent jurisdiction, unappealable or unappealed within the time allowed for appeal, to be implemented invalid. Seller shall cooperate with Purchaser, at Purchaser’s expense, to preserve and protect all privileges and immunities with respect to Protected Communications to the greatest extent available under Applicable Law. To the extent that Seller retains control of any privilege or immunity with respect to communications or work product relating to the prosecution, defense or enforcement of the Purchased Patents before the Closing Date, Seller shall not waive or withdraw such privilege or immunity or knowingly engage in any act or omission that would reasonably result in a comparable manner in connection with a Secondary Salewaiver or withdrawal without the prior written consent of Purchaser. Should any effort be made by subpoena or otherwise to gain access to Protected Communications, whether by judicial action or by other means, Seller shall promptly notify Purchaser.
Appears in 1 contract
Seller Intellectual Property. (a) Except as specifically provided in this Section 8.7, Purchaser acknowledges and agrees that none of Purchaser or its Affiliates is purchasing, acquiring, receiving a license to or otherwise obtaining any right, title or interest in, to or under any Intellectual Property owned or licensed by the Seller Entities or any of their respective Affiliates, including the Seller Entity Names.
(b) Except as provided in this Section 8.7, as of and following the Closing, Purchaser shall, and shall cause its Affiliates to, cease and discontinue promptly after the Closing any and all uses of any and all Intellectual Property owned or licensed by the Seller Entities or any of their respective Affiliates, including any Seller Entity Names. Except as provided in this Section 8.7, Purchaser agrees that, as of and following the Closing, none of Purchaser not any of its Affiliates shall have any right, title or interest in, or any authority or license to use or allow others to use in any manner whatsoever, any Intellectual Property owned or licensed by the Seller Entities or their respective Affiliates, and any such right, title, interest, authority, license or sublicense or other arrangement relating thereto (whether written or oral) existing prior to the Closing, shall automatically terminate simultaneously with and effective as of the Closing. Notwithstanding the foregoing and only to the extent that use of labeling, stationery, business forms, supplies, ATM cards, debit cards, gift cards, checks, deposit slips and envelopes (but excluding any advertising, marketing or other promotional materials) existing on the Business Premises, in the inventory of Purchaser or any of its Affiliates or in the possession of a Banking Center Customer, in each case, that bear a Seller Entity Name as of the Closing (the “Business Material”) cannot be commercially reasonably avoided after the Closing by Purchaser and its Affiliates, Purchaser and such Affiliates shall have, subject to the execution by Purchaser and such Affiliates of the License Agreement, a limited, non-transferable, non-sublicensable, royalty-free, non-exclusive right to use and deplete the Business Materials for a thirty- (30) day period following the Closing Date (such right, the “Seller Entity Name License” and such period, the “Transitional Period”); provided, however, that (i) none of Purchaser or any of its Affiliates shall take any action that could reasonably be expected to impair the value of or goodwill associated with the Seller Entity Names, (ii) Purchaser and its Affiliates shall use the Business Materials and make any use of the Seller Entity Names pursuant to this Section 8.7 in substantially the same forms, and for substantially the same purposes, as a Seller Entity is using such Seller Entity Names in connection with the operation and conduct of the Transferred Business immediately prior to the Closing, but not including any advertising, marketing or other promotional activities and (iii)Purchaser iii) Purchaser and its Affiliates shall use their reasonable best efforts to minimize their respective use of the Seller Entity Names and shall cease using the Seller Entity Names on such Business Materials as set forth in the License Agreement and in any event within the Transitional Period. For clarity, the foregoing activities during the Transitional Period will be for wind-down purposes only, and none of Purchaser or any of its Affiliates shall actively use the Seller Entity Names in any advertising, marketing or other promotional activities during the Transitional Period.
(c) Purchaser, for itself and its Affiliates, acknowledges and agrees that, (i) as between the parties hereto, the Seller Entities and their respective Affiliates own or have the exclusive right to use any and all of the Seller Entity Names and, except as otherwise expressly provided in this Section 8.7, none of Purchaser or any of its Affiliates shall, as of the Closing, have any rights in or to the Seller Entity Names, (ii) none of Purchaser or any of its Affiliates shall contest the ownership or validity of any rights of the Seller Entities or any of their respective Affiliates in or to the Seller Entity Names, and (iii) none of Purchaser or any of its Affiliates shall adopt, use, register or attempt to register any of the Seller Entity Names or instruct others to do so. Purchaser, for itself and its Affiliates, agrees and shall ensure that any use of the Seller Entity Names as permitted in this Section 8.7 shall be only with respect to goods and services of a level of quality equal to or greater than the quality of goods and services with respect to which the Seller Entities and their respective Affiliates used such Seller Entity Names prior to the Closing. Purchaser, for itself and its Affiliates, agrees that, after the Closing, none of Purchaser or any of its Affiliates, will expressly, or willingly by implication, do business as or represent themselves as any Seller Entity or any Affiliate of the Seller Entities and the personnel of Purchaser or any of its Affiliates shall not, and shall have no authority to, as of the Closing, hold themselves out as officers, employees or agents of the Seller Entities or any of their respective Affiliates.
(d) Purchaser, on behalf of itself and its Affiliates, agrees that Purchaser and its Affiliates shall indemnify and hold harmless the Seller Entities and their respective Affiliates from and against all Damages that arise out of, relate to or result from use of the Seller Entity Names by Purchaser during the Transitional Period.
(e) The activities contemplated in this Section 8.7 shall be implemented in a comparable manner in connection with a Secondary Sale.
Appears in 1 contract
Samples: Purchase and Assumption Agreement (First Niagara Financial Group Inc)
Seller Intellectual Property. (a) Except as Unless specifically provided permitted in this Section 8.7the Transaction Documents, Purchaser acknowledges Seller agrees that, from and agrees that none of Purchaser or its Affiliates is purchasingafter the Closing Date, acquiring, receiving a license to or otherwise obtaining any right, title or interest in, to or under any Intellectual Property owned or licensed by the Seller Entities or any of their respective Affiliates, including the Seller Entity Names.
(b) Except as provided in this Section 8.7, as of and following the Closing, Purchaser shallit shall not, and it shall cause its Affiliates Subsidiaries and its and their Representatives not to, cease and discontinue promptly after the Closing any and all uses of any and all Intellectual Property owned retain (other than as retained through automated retention or licensed by the Seller Entities backup processes) or any of their respective Affiliates, including any Seller Entity Names. Except as provided in this Section 8.7, Purchaser agrees that, as of and following the Closing, none of Purchaser not any of its Affiliates shall have any right, title or interest in, or any authority or license to use or allow others to use in any manner whatsoever, any Intellectual Property owned or licensed by the Seller Entities or their respective Affiliates, and any such right, title, interest, authority, license or sublicense or other arrangement relating thereto (whether written or oral) existing prior to the Closing, shall automatically terminate simultaneously with and effective as of the Closing. Notwithstanding the foregoing and only to the extent that use of labeling, stationery, business forms, supplies, ATM cards, debit cards, gift cards, checks, deposit slips and envelopes (but excluding any advertising, marketing or other promotional materials) existing on the Business Premises, in the inventory of Purchaser or any of its Affiliates or in the possession of a Banking Center Customer, in each case, that bear a Seller Entity Name as of the Closing (the “Business Material”) cannot be commercially reasonably avoided after the Closing by Purchaser and its Affiliates, Purchaser and such Affiliates shall have, subject to the execution by Purchaser and such Affiliates of the License Agreement, a limited, non-transferable, non-sublicensable, royalty-free, non-exclusive right to use and deplete the Business Materials for a thirty- (30) day period following the Closing Date (such right, the “Seller Entity Name License” and such period, the “Transitional Period”); provided, however, that (i) none of Purchaser or any of its Affiliates shall take any action that could reasonably be expected to impair the value of or goodwill associated with the Seller Entity Names, (ii) Purchaser and its Affiliates shall use the Business Materials and make any use of the Seller Entity Names pursuant to this Section 8.7 in substantially the same forms, and for substantially the same purposes, as a Seller Entity is using such Seller Entity Names in connection with the operation and conduct of the Transferred Business immediately prior to the Closing, but not including any advertising, marketing or other promotional activities and (iii)Purchaser and its Affiliates shall use their reasonable best efforts to minimize their respective use of the Seller Entity Names and shall cease using the Seller Entity Names on such Business Materials as set forth in the License Agreement and in any event within the Transitional Period. For clarity, the foregoing activities during the Transitional Period will be for wind-down purposes only, and none of Purchaser or any of its Affiliates shall actively use the Seller Entity Names in any advertising, marketing or other promotional activities during the Transitional Period.
(c) Purchaser, for itself and its Affiliates, acknowledges and agrees that, (i) as between the parties hereto, the Seller Entities and their respective Affiliates own or have the exclusive right to use any and all copy of the Seller Entity Names and, except as otherwise expressly provided in this Section 8.7, none of Purchaser or any of its Affiliates shall, as of the Closing, have any rights in or to the Seller Entity Names, (ii) none of Purchaser or any of its Affiliates shall contest the ownership or validity of any rights of the Seller Entities or any of their respective Affiliates in or to the Seller Entity Names, and (iii) none of Purchaser or any of its Affiliates shall adopt, use, register or attempt to register any of the Seller Entity Names or instruct others to do soAssigned Intellectual Property. PurchaserWithout limitation of Section 5.5 (Further Actions), for itself and its Affiliates, agrees and shall ensure that if any use of the Seller Entity Names as permitted in this Section 8.7 shall be only with respect to goods and services Parties (or any assignee or successor of a level of quality equal to or greater than the quality of goods and services with respect to which the Seller Entities and their respective Affiliates used such Parties) retains any right or interest in any Seller Entity Names prior Assigned Intellectual Property that cannot be, or for any reason is not, assigned to the Closing. Purchaser, for itself and its Affiliates, agrees that, after Purchaser at the Closing, none of Purchaser or any of its Affiliates, will expressly, or willingly by implication, do business as or represent themselves as any Seller Entity or any Affiliate each of the Seller Entities and the personnel of Purchaser or any of its Affiliates shall not, and shall have no authority to, as of the Closing, hold themselves out as officers, employees or agents of the Seller Entities or any of their respective Affiliates.
(d) PurchaserParties hereby grants, on behalf of itself and its Affiliatessuccessors and assigns (and agrees to so grant or cause to be so granted) to Purchaser, agrees that effective as of the Closing, a perpetual, irrevocable, royalty free and fully paid-up, transferable, sublicensable (through multiple levels), exclusive, worldwide right and license to use, reproduce, distribute, display and perform (whether publicly or otherwise), prepare derivative works of and otherwise modify, make, sell, offer to sell, import and otherwise use and exploit, and exercise and practice all rights under, all or any portion of such Seller Assigned Intellectual Property.
(b) If Purchaser and its Affiliates shall indemnify and hold harmless the Seller Entities and their respective Affiliates from and against all Damages that arise out of, relate is unable to or result from use enforce any of the Seller Entity Names Assigned Intellectual Property against a third party as a result of any Applicable Law that prohibits enforcement of such rights by a transferee of such rights, at Purchaser’s request and subject to the applicable Seller Party’s consent (such consent not to be unreasonably withheld) the Seller Party shall initiate or join proceedings against such third party. Purchaser during shall control such proceedings and shall be responsible for the Transitional Periodcosts and expenses of such proceedings (including the Seller Party’s reasonable out-of-pocket costs incurred in participating in such proceedings at Purchaser’s request).
(ec) The activities contemplated Without limitation of Section 5.5 (Further Actions), to the extent any disclosures, elections, and/or notices are required by applicable regulations and contract terms to protect ownership of inventions developed, conceived or first actually reduced to practice under Government Contracts related to the Assigned Patents or Assigned Technology (including where the creation of the invention was in this Section 8.7 progress at the time of the Closing but where the initial disclosures, elections, and/or notices were not yet required), Seller shall, and shall cause its Subsidiaries to timely execute and deliver such disclosures, elections and/or notices as may be implemented required to protect Purchaser’s interest in a comparable manner in connection with a Secondary Salethe Assigned Patents and Assigned Technology.
Appears in 1 contract
Samples: Asset Purchase Agreement (Cray Inc)
Seller Intellectual Property. (a) Except as specifically provided in this Section 8.7, Purchaser acknowledges and agrees that none of Purchaser or its Affiliates is purchasing, acquiring, receiving a license to or otherwise obtaining any right, title or interest in, to or under any Intellectual Property owned or licensed by the Seller Entities or any of their respective Affiliates, including the Seller Entity Names.
(b) Except as provided in this Section 8.77.12, as of and following the Closing, Purchaser shall, and shall cause its Affiliates to, cease and discontinue promptly after the Closing any and all uses of any and all Intellectual Property and IT Systems owned or licensed by the Seller Entities or any of their respective its Affiliates, including any Seller Entity Names. Except as provided in this Section 8.77.12, Purchaser acknowledges and agrees that, as of and following the Closing, none of Purchaser not nor any of its Affiliates is purchasing, acquiring or receiving a license to, and shall have any right, title or interest in, to or under, or any authority or license to use or allow others to use in any manner whatsoever, any Intellectual Property or IT Systems owned or licensed by Seller or its Affiliates, including the Seller Entities or their respective AffiliatesNames. Without limiting the generality of the foregoing, and Purchaser agrees not to use any such rightforms, title, interest, authority, license or sublicense stationary or other arrangement relating thereto (whether documents bearing Seller’s or any of its Affiliates’ name or logo after the Closing without the prior written consent of Seller, and, if such consent is given, Purchaser shall stamp or oral) existing prior otherwise mxxx all such forms or other documents to which such consent relates in such a way that identifies Purchaser as the Closing, shall automatically terminate simultaneously with and effective as of party using the Closingform or other document. Notwithstanding the foregoing and only to the extent that use of labeling, stationery, business forms, supplies, ATM cards, debit cards, gift cards, checks, deposit slips and envelopes (but excluding any advertising, marketing or other promotional materials) existing on the Business Premises, in the inventory of Purchaser or any of its Affiliates or in the possession of a Banking Center Customer, in each case, that bear a Seller Entity Name as of the Closing (the “Business Material”) cannot be commercially reasonably avoided after the Closing by Purchaser and its Affiliates, Purchaser and such Affiliates shall have, subject to have the execution by Purchaser and such Affiliates of the License Agreement, a limited, non-transferable, non-sublicensable, royalty-free, non-exclusive right to use and deplete the Business Materials for a thirty- thirty (30) day 30)-day period following the Closing Date (such right, the “Seller Entity Name License” and such period, the “Transitional Period”); provided, however, that (i) none of Purchaser or any of its Affiliates shall take any action that could reasonably be expected to impair the value of or goodwill associated with the Seller Entity Names, (ii) Purchaser and its relevant Affiliates shall use the Business Materials and make any use of the Seller Entity Names pursuant to this Section 8.7 7.12 in substantially the same forms, and for substantially the same purposes, as a Seller Entity is had been using such Seller Entity Names in connection with the operation and conduct of the Transferred Business Operations immediately prior to the Closing, but not including any advertising, marketing or other promotional activities and (iii)Purchaser iii) Purchaser and its Affiliates shall use their reasonable best efforts to minimize their respective use of the Seller Entity Names and shall cease using the Seller Entity Names on such Business Materials as set forth in the License Agreement and in any event within the Transitional Period. For claritythe avoidance of doubt, the foregoing activities during the Transitional Period will be for wind-down purposes only, and none of Purchaser or any of its Affiliates shall actively use the Seller Entity Names in any advertising, marketing or other promotional activities during the Transitional Period.
(cb) Purchaser, for itself and its Affiliates, acknowledges and agrees that, (i) as between the parties heretoParties, the Seller Entities and their respective its Affiliates own or have the exclusive right to use any and all of the Seller Entity Names and, except as otherwise expressly provided in this Section 8.77.12, none of Purchaser or any of its Affiliates shall, as of the Closing, have any rights in or to the Seller Entity Names, (ii) none of Purchaser or any of its Affiliates shall contest the ownership or validity of any rights of the Seller Entities or any of their respective its Affiliates in or to the Seller Entity Names, and (iii) none of Purchaser or any of its Affiliates shall adopt, use, register or attempt to register any of the Seller Entity Names or any Trademarks confusingly similar thereto or instruct others to do so. Purchaser, for itself and its Affiliates, agrees and shall ensure that any use of the Seller Entity Names as permitted in this Section 8.7 7.12 shall be only with respect to goods and services of a level of quality equal to or greater than the quality of goods and services with respect to which the Seller Entities and their respective its Affiliates used such Seller Entity Names prior to the Closing. Purchaser, for itself and its Affiliates, agrees that, after the Closing, none of Purchaser or any of its Affiliates, will expressly, or willingly by implication, do business as or represent themselves as any Seller Entity or any Affiliate of the Seller Entities and the personnel of Purchaser or any of its Affiliates shall not, and shall have no authority to, as of and following the Closing, hold themselves out as officers, employees or agents of the Seller Entities or any of their respective its Affiliates.
(dc) Purchaser, on behalf of itself and its Affiliates, agrees that Purchaser and its Affiliates shall indemnify and hold harmless the Seller Entities and their respective its Affiliates from and against all Damages Losses that arise out of, relate to or result from their use of the Seller Entity Names by Purchaser during the Transitional Period.
(e) . The activities contemplated Seller Name License shall automatically terminate without notice if Purchaser or any of its respective Affiliates materially breach any term or condition contained in this Section 8.7 shall be implemented in a comparable manner in connection with a Secondary Sale7.12 that is not cured within ten (10) Business Days’ notice to Purchaser.
Appears in 1 contract
Samples: Purchase and Assumption Agreement (Banc of California, Inc.)