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Exhibit 2.7
MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
BETWEEN
MRV COMMUNICATIONS, INC.
AND
LUMINENT, INC.
Effective as of _____, 2000
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MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
PAGE
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MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT.............................................i
ARTICLE 1....................................................................................1
1.1 AUTHORIZED DEALERS..................................................................1
1.2 COLLATERAL MATERIALS................................................................1
1.3 CORPORATE IDENTITY MATERIALS........................................................2
1.4 DISTRIBUTION DATE...................................................................2
1.5 LICENSED MARKS......................................................................2
1.6 MAINTENANCE CONTRACTS...............................................................2
1.7 XXXX................................................................................2
1.8 MASTER SEPARATION AND DISTRIBUTION AGREEMENT........................................2
1.9 LUMINENT BUSINESS...................................................................2
1.10 LUMINENT BUSINESS MARKS............................................................2
1.11 LUMINENT BUSINESS MARKS SCHEDULE...................................................2
1.12 LUMINENT BUSINESS PRODUCTS.........................................................3
1.13 PERSON.............................................................................3
1.14 QUALITY STANDARDS..................................................................3
1.15 SELL...............................................................................3
1.16 SEPARATION DATE....................................................................3
1.17 SUBSIDIARY.........................................................................3
1.18 THIRD PARTY........................................................................3
1.19 TRADEMARK USAGE GUIDELINES.........................................................3
ARTICLE 2....................................................................................4
2.1 OWNERSHIP OF LUMINENT BUSINESS MARKS................................................4
2.2 PRIOR GRANTS........................................................................4
2.3 ASSIGNMENT DISCLAIMER...............................................................4
ARTICLE 3....................................................................................4
3.1 LICENSE GRANT.......................................................................4
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MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
(CONTINUED)
3.2 LICENSE RESTRICTIONS................................................................5
3.3 LICENSEE UNDERTAKINGS...............................................................5
3.4 NON-TRADEMARK USE...................................................................6
3.5 RESERVATION OF RIGHTS...............................................................6
3.6 THIRD PARTY LICENSES................................................................6
ARTICLE 4....................................................................................6
4.1 SUBLICENSES.........................................................................6
4.2 AUTHORIZED DEALERS' USE OF MARKS....................................................7
4.3 ENFORCEMENT OF AGREEMENTS...........................................................7
ARTICLE 5....................................................................................7
5.1 TRADEMARK USAGE GUIDELINES..........................................................7
5.2 TRADEMARK REVIEWS...................................................................7
ARTICLE 6....................................................................................8
TRADEMARK USAGE GUIDELINE ENFORCEMENT........................................................8
6.1 INITIAL CURE PERIOD.................................................................8
6.2 SECOND CURE PERIOD..................................................................8
6.3 FINAL CURE PERIOD...................................................................8
ARTICLE 7....................................................................................8
7.1 GENERAL.............................................................................8
7.2 QUALITY STANDARDS...................................................................8
7.3 QUALITY CONTROL REVIEWS.............................................................9
7.4 PRODUCT DISCONTINUATION.............................................................9
ARTICLE 8....................................................................................9
8.1 INITIAL CURE PERIOD.................................................................9
8.2 SECOND CURE PERIOD..................................................................9
8.3 FINAL CURE PERIOD...................................................................9
ARTICLE 9...................................................................................10
9.1 OWNERSHIP AND RIGHTS...............................................................10
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MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
(CONTINUED)
9.2 PROTECTION OF MARKS................................................................10
9.3 SIMILAR MARKS......................................................................10
9.4 INFRINGEMENT PROCEEDINGS...........................................................10
ARTICLE 10..................................................................................11
10.1 TERM..............................................................................11
10.2 VOLUNTARY TERMINATION.............................................................11
10.3 SURVIVAL..........................................................................11
10.4 OTHER TERMINATION.................................................................11
ARTICLE 11..................................................................................11
11.1 MEDIATION.........................................................................11
11.2 ARBITRATION.......................................................................12
11.3 COURT ACTION......................................................................12
11.4 CONTINUITY OF SERVICE AND PERFORMANCE.............................................12
ARTICLE 12..................................................................................13
ARTICLE 13..................................................................................13
13.1 DISCLAIMER........................................................................13
13.2 NO IMPLIED LICENSES...............................................................13
13.3 INFRINGEMENT SUITS................................................................13
13.4 NO OTHER OBLIGATIONS..............................................................14
13.5 ENTIRE AGREEMENT..................................................................14
13.6 GOVERNING LAW.....................................................................14
13.7 DESCRIPTIVE HEADINGS..............................................................14
13.8 NOTICES...........................................................................14
13.9 NONASSIGNABILITY..................................................................15
13.10 SEVERABILITY.....................................................................15
13.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE............................15
13.12 AMENDMENT........................................................................16
13.13 COUNTERPARTS.....................................................................16
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MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
(CONTINUED)
EXHIBIT A: LICENSED MARKS
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MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
This Master Trademark Ownership and License Agreement (the "Agreement")
is effective as of ________, 2000 (the "Effective Date"), between MRV
Communications, Inc., a Delaware corporation ("MRV"), having an office at 00000
Xxxxxxxx Xxxxxx, Xxxxxxxxxx, Xxxxxxxxxx 00000 and Luminent, Inc., a Delaware
corporation ("Luminent"), having an office at 00000 Xxxxxxxx Xxxxxx, Xxxxxxxxxx,
Xxxxxxxxxx 00000.
WHEREAS, the Board of Directors of MRV has determined that it is in the
best interest of MRV and its stockholders to separate MRV's existing businesses
into two independent businesses;
WHEREAS, as part of the foregoing, MRV and Luminent have entered into a
Master Separation and Distribution Agreement (as defined below) which provides,
among other things, for the separation of certain Luminent assets and Luminent
liabilities, the initial public offering of Luminent stock, the distribution of
such stock and the execution and delivery of certain other agreements in order
to facilitate and provide for the foregoing;
WHEREAS, the parties desire that MRV assign and transfer to Luminent the
Luminent Business Marks (as defined below); and
WHEREAS, the parties further desire that MRV license the Licensed Marks
(as defined below) to Luminent after the separation of the Luminent businesses.
NOW, THEREFORE, in consideration of the mutual promises of the parties,
and of good and valuable consideration, it is agreed by and between the parties
as follows:
ARTICLE 1
DEFINITIONS
For the purpose of this Agreement, the following capitalized terms are
defined in this Article 1 and shall have the meaning specified herein:
1.1 AUTHORIZED DEALERS.
"Authorized Dealers" means any distributor, dealer, OEM customer, VAR customer,
VAD customer, systems integrator or other agent that on or after the Separation
Date is authorized to market, advertise, sell, lease, rent, service or otherwise
offer Luminent Business Products. Luminent will provide MRV a list of the then
current Authorized Dealers within a reasonable period after MRV's request.
1.2 COLLATERAL MATERIALS.
"Collateral Materials" means all packaging, tags, labels, advertising,
promotions, display fixtures, instructions, warranties and other materials of
any and all types associated with the Luminent Business Products that are marked
with at least one of the Licensed Marks.
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1.3 CORPORATE IDENTITY MATERIALS.
"Corporate Identity Materials" means materials that are not products or
product-related and that Luminent may now or hereafter use to communicate its
identity, including, by way of example and without limitation, business cards,
letterhead, stationery, paper stock and other supplies, and signage on real
property and buildings.
1.4 DISTRIBUTION DATE.
"Distribution Date" has the meaning set forth in the Master Separation and
Distribution Agreement.
1.5 LICENSED MARKS.
"Licensed Marks" means the Marks set forth on Exhibit A hereto.
1.6 MAINTENANCE CONTRACTS.
"Maintenance Contracts" means agreements pursuant to which Luminent, its
Subsidiaries or its or their Authorized Dealers or their designees provide
repair and maintenance services (whether preventive, diagnostic, remedial,
warranty or non-warranty) in connection with Luminent Business Products,
including without limitation agreements entered into by MRV prior to the
Separation Date and assigned to Luminent pursuant to the Master Separation and
Distribution Agreement or the Ancillary Agreements (as such term is defined in
the Master Separation and Distribution Agreement).
1.7 XXXX.
"Xxxx" means any trademark, service xxxx, trade name, domain name, and the like,
or other word, name, symbol or device, or any combination thereof, used or
intended to be used by a Person to identify and distinguish the products or
services of that Person from the products or services of others and to indicate
the source of such goods or services, including without limitation all
registrations and applications therefore throughout the world and all common law
and other rights therein throughout the world.
1.8 MASTER SEPARATION AND DISTRIBUTION AGREEMENT.
"Master Separation and Distribution Agreement" means the Master Separation and
Distribution Agreement between the parties.
1.9 LUMINENT BUSINESS.
"Luminent Business" means the business and operations of Luminent.
1.10 LUMINENT BUSINESS MARKS.
"Luminent Business Marks" means the mutually agreed Marks listed in the Luminent
Business Marks Schedule.
1.11 LUMINENT BUSINESS MARKS SCHEDULE.
"Luminent Business Marks Schedule" means the mutually agreed Luminent Business
Marks Schedule as of the Separation Date, as it may be updated by the parties
upon mutual agreement to add additional Marks as of the Separation Date.
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1.12 LUMINENT BUSINESS PRODUCTS.
"Luminent Business Products" means any and all products of the Luminent Business
commercially released prior to the Separation Date.
1.13 PERSON.
"Person" means an individual, a partnership, a corporation, a limited liability
company, an association, a joint stock company, a trust, a joint venture, an
unincorporated organization, and a governmental entity or any department, agency
or political subdivision thereof.
1.14 QUALITY STANDARDS.
"Quality Standards" means standards of quality applicable to the Luminent
Business Products, as in use immediately prior to the Separation Date, unless
otherwise communicated in writing by MRV from time to time.
1.15 SELL.
To "Sell" a product means to sell, transfer, lease or otherwise dispose of a
product. "Sale" and "Sold" have the corollary meanings ascribed thereto.
1.16 SEPARATION DATE.
"Separation Date" means 12:01 a.m., Pacific Time, _________________, or such
other date as may be fixed by the Board of Directors of MRV.
1.17 SUBSIDIARY.
"Subsidiary" of any Person means a corporation or other organization whether
incorporated or unincorporated of which at least a majority of the securities or
interests having by the terms thereof ordinary voting power to elect at least a
majority of the board of directors or others performing similar functions with
respect to such corporation or other organization is directly or indirectly
owned or controlled by such Person or by any one or more of its Subsidiaries, or
by such Person and one or more of its Subsidiaries; provided, however, that no
Person that is not directly or indirectly wholly- owned by any other Person
shall be a Subsidiary of such other Person unless such other Person controls, or
has the right, power or ability to control, that Person. For purposes of this
Agreement, Luminent shall be deemed not to be a subsidiary of MRV.
1.18 THIRD PARTY.
"Third Party" means a Person other than MRV and its Subsidiaries and Luminent
and its Subsidiaries.
1.19 TRADEMARK USAGE GUIDELINES.
"Trademark Usage Guidelines" means the guidelines for proper usage of the
Licensed Marks, as in use immediately prior to the Separation Date, as such
guidelines may be revised and updated in writing by MRV from time to time.
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ARTICLE 2
OWNERSHIP
2.1 OWNERSHIP OF LUMINENT BUSINESS MARKS.
The parties agree that Luminent hereby retains ownership of all right, title and
interest in and to the Luminent Business Marks. Subject to Sections 2.2 and 2.3
below, to the extent that any Luminent Business Marks are registered in MRV's
name anywhere in the world, or to the extent that MRV otherwise has any
ownership rights in and to the Luminent Business Marks or any goodwill therein,
MRV hereby grants, conveys and assigns (and agrees to cause its appropriate
Subsidiaries to grant, convey and assign) to Luminent, by execution hereof (or,
where appropriate or required, by execution of separate instruments of
assignment), all its (and their) right, title and interest in and to the
Luminent Business Marks, including all goodwill of the Luminent Business
appurtenant thereto, to be held and enjoyed by Luminent, its successors and
assigns. MRV further grants, conveys and assigns (and agrees to cause its
appropriate Subsidiaries to grant, convey and assign) to Luminent all its (and
their) right, title and interest in and to any and all causes of action and
rights of recovery for past infringement of the Luminent Business Marks. MRV
will, without demanding any further consideration therefore, at the request and
expense of Luminent (except for the value of the time of MRV employees), do (and
to cause its Subsidiaries to do) all lawful and just acts that may be or become
necessary for evidencing, maintaining, recording and perfecting Luminent's
rights to such Luminent Business Marks consistent with MRV's general business
practice as of the Separation Date, including but not limited to execution and
acknowledgement of (and causing its Subsidiaries to execute and acknowledge)
assignments and other instruments in a form reasonably required by Luminent or
the relevant governmental or other authorities for each Xxxx in all
jurisdictions in which MRV owns rights thereto.
2.2 PRIOR GRANTS.
Luminent acknowledges and agrees that the foregoing assignment is subject to any
and all licenses or other rights that may have been granted by MRV or its
Subsidiaries with respect to the Luminent Business Marks prior to the Separation
Date. MRV shall respond to reasonable inquiries from Luminent regarding any such
prior grants.
2.3 ASSIGNMENT DISCLAIMER.
LUMINENT ACKNOWLEDGES AND AGREES THAT THE FOREGOING ASSIGNMENTS ARE MADE ON AN
"AS-IS," QUITCLAIM BASIS AND THAT NEITHER MRV NOR ANY SUBSIDIARY OF MRV HAS MADE
OR WILL MAKE ANY WARRANTY WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, INCLUDING,
WITHOUT LIMITATION, ANY IMPLIED WARRANTIES OF TITLE, ENFORCEABILITY OR
NON-INFRINGEMENT.
ARTICLE 3
LICENSES
3.1 LICENSE GRANT.
MRV grants (and agrees to cause its appropriate Subsidiaries to grant) to
Luminent a personal, irrevocable, nonexclusive, worldwide, fully-paid and
non-transferable (except as set forth in
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Section 13.9) license to use the Licensed Marks on the Luminent Business
Products and in connection with the Sale and offer for Sale of Luminent Business
Products (or, in the case of Luminent Business Products in the form of software,
in connection with licensing of Luminent Business Products) and to use the
Licensed Marks in the advertisement and promotion of such Luminent Business
Products.
3.2 LICENSE RESTRICTIONS.
(a) Luminent may not make any use whatsoever, in whole or in part, of
the Licensed Marks, or any other Xxxx owned by MRV, in connection with
Luminent's corporate, doing business as, or fictitious name, or on Corporate
Identity Materials without the prior written consent of MRV, except as expressly
set forth in this Section 3.2(a) or in Section 3.4 below. Notwithstanding the
foregoing, Luminent may use any business cards, letterhead, stationery, paper
stock and other supplies, and the like throughout their useful life in
connection with the conduct of the Luminent Business, to the extent that, as of
the Separation Date, they are in use, in inventory or on order.
(b) Luminent may not use any Licensed Xxxx in direct association with
another Xxxx such that the two Marks appear to be a single Xxxx or in any other
composite manner with any Marks of Luminent or any Third Party (other than the
Luminent Business Marks as permitted herein).
(c) In all respects, Luminent's usage of the Licensed Marks pursuant to
the license granted hereunder shall be in a manner consistent with the high
standards, reputation and prestige represented by the Licensed Marks, and any
usage by Luminent that is inconsistent with the foregoing shall be deemed to be
outside the scope of the license granted hereunder. As a condition to the
license granted hereunder, Luminent shall at all times present, position and
promote the Luminent Business Products marked with one or more of the Licensed
Marks in a manner consistent with the high standards and prestige represented by
the Licensed Marks.
3.3 LICENSEE UNDERTAKINGS.
As a condition to the licenses granted hereunder, Luminent undertakes to MRV
that:
(a) Luminent shall not use the Licensed Marks (or any other Xxxx of MRV)
in any manner which is deceptive or misleading, which ridicules or is derogatory
to the Licensed Marks, or which compromises or reflects unfavorably upon the
goodwill, good name, reputation or image of MRV or the Licensed Marks, or which
might jeopardize or limit MRV's proprietary interest therein.
(b) Luminent shall not use the Licensed Marks in connection with any
products or services other than the Luminent Business Products.
(c) Luminent shall not (i) misrepresent to any Person the scope of its
authority under this Agreement, (ii) incur or authorize any expenses or
liabilities chargeable to MRV, or (iii) take any actions that would impose upon
MRV any obligation or liability to a Third Party other than obligations under
this Agreement, or other obligations which MRV expressly approves in writing for
Luminent to incur on its behalf.
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(d) All press releases and corporate advertising and promotions that
embody the Licensed Marks and messages conveyed thereby shall be consistent with
the high standards and prestige represented by the Licensed Marks.
3.4 NON-TRADEMARK USE.
Each party may make appropriate and truthful references to the other party and
the other party's products and technology.
3.5 RESERVATION OF RIGHTS.
Except as otherwise expressly provided in this Agreement, MRV shall retain all
rights in and to the Licensed Marks, including without limitation:
(a) All rights of ownership in and to the Licensed Marks;
(b) The right to use (including the right of MRV's Subsidiaries to use)
the Licensed Marks, either alone or in combination with other Marks, in
connection with the marketing, offer or provision of any product or service,
including any product or service which competes with Luminent Business products;
and
(c) The right to license Third Parties to use the Licensed Marks.
3.6 THIRD PARTY LICENSES.
MRV agrees that it and its Subsidiaries will not license or transfer the
Licensed Marks to Third Parties (other than to and among Subsidiaries or Joint
Ventures (as defined below) of MRV) for use in connection with products or
services which compete with Luminent Business Products that are listed on a
mutually agreed Luminent corporate price list as of the Distribution Date until
two (2) years after the Separation Date. Such restriction shall be binding on
any successors and assigns of the Licensed Marks. As used in this Section 3.6,
"Joint Venture" means a corporation or other organization whether incorporated
or unincorporated of which at least fifty percent (50%) of the securities or
interests having by the terms thereof ordinary voting power to elect at least a
majority of the board of directors or others performing similar functions with
respect to such corporation or other organization is directly or indirectly
owned or controlled by MRV.
ARTICLE 4
PERMITTED SUBLICENSES
4.1 SUBLICENSES
(a) SUBLICENSES TO SUBSIDIARIES. Subject to the terms and conditions of
this Agreement, including all applicable Quality Standards and Trademark Usage
Guidelines and other restrictions in this Agreement, Luminent may grant
sublicenses to its Subsidiaries to use the Licensed Marks in accordance with the
license grant in Section 3.1 above; provided, that (i) Luminent enters into a
written sublicense agreement with each such Subsidiary sublicensee, and (ii)
such agreement does not include the right to grant further sublicenses other
than, in the case of a sublicensed Subsidiary of Luminent, to another Subsidiary
of Luminent. Luminent shall
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provide copies of such written sublicense agreements to MRV upon request. If
Luminent grants any sublicense rights pursuant to this Section 4.1(a) and any
such sublicensed Subsidiary ceases to be a Subsidiary, then the sublicense
granted to such Subsidiary pursuant to this Section 4.1(a) shall terminate 180
days from the date of such cessation.
4.2 AUTHORIZED DEALERS' USE OF MARKS.
Subject to the terms and conditions of this Agreement, including all applicable
Quality Standards and Trademark Usage Guidelines and other restrictions in this
Agreement, Luminent (and those Subsidiaries sublicensed to use the Licensed
Marks pursuant to Section 4.1) may allow Authorized Dealers to, and may allow
such Authorized Dealers to allow other Authorized Dealers to, use the Licensed
Marks in the advertisement and promotion of Luminent Business Products Sold by
such Authorized Dealers.
4.3 ENFORCEMENT OF AGREEMENTS.
Luminent shall take all appropriate measures at Luminent's expense promptly and
diligently to enforce the terms of any sublicense agreement or other agreement
with any Subsidiary or Authorized Dealer, or of any existing agreement with any
Authorized Dealer, and shall restrain any such Subsidiary or Authorized Dealer
from violating such terms, including without limitation (i) monitoring the
Subsidiaries' and Authorized Dealers' compliance with the relevant Trademark
Usage Guidelines and Quality Standards and causing any noncomplying Subsidiary
or Authorized Dealer promptly to remedy any failure, (ii) terminating such
agreement and/or (iii) commencing legal action, in each case, using a standard
of care consistent with MRV's practices as of the Separation Date. In the event
that MRV determines that Luminent has failed promptly and diligently to enforce
the terms of any such agreement using such standard of care, MRV reserves the
right to enforce such terms, and Luminent shall reimburse MRV for its fully
allocated direct costs and expenses incurred in enforcing such agreement, plus
all out-of- pocket costs and expenses, plus five percent (5%).
ARTICLE 5
TRADEMARK USAGE GUIDELINES
5.1 TRADEMARK USAGE GUIDELINES.
Luminent and its Subsidiaries and Authorized Dealers shall use the Licensed
Marks only in a manner that is consistent with the Trademark Usage Guidelines.
5.2 TRADEMARK REVIEWS.
At MRV's request, Luminent agrees to furnish or make available for inspection to
MRV samples of all Luminent Business Products and Collateral Materials of
Luminent, its Subsidiaries and Authorized Dealers that are marked with one or
more of the Licensed Marks (to the extent that Luminent has the right to obtain
such samples). If Luminent is notified or determines that it or any of its
Subsidiaries or Authorized Dealers is not complying with any Trademark Usage
Guidelines, it shall notify MRV and the provisions of Article 6 and Section 4.3
shall apply to such noncompliance.
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ARTICLE 6
TRADEMARK USAGE GUIDELINE ENFORCEMENT
6.1 INITIAL CURE PERIOD.
If MRV becomes aware that Luminent or any Subsidiary or Authorized Dealer is not
complying with any Trademark Usage Guidelines, MRV shall notify Luminent in
writing, setting forth in reasonable detail a written description of the
noncompliance and any requested action for curing such noncompliance. Luminent
shall then have sixty (60) days with regard to noncompliance by Authorized
Dealers and thirty (30) days with regard to noncompliance by Luminent or any
Subsidiary after receipt of such notice ("Guideline Initial Cure Period") to
correct such noncompliance or submit to MRV a written plan to correct such
noncompliance which written plan is reasonably acceptable to MRV.
6.2 SECOND CURE PERIOD.
If noncompliance with the Trademark Usage Guidelines continues beyond the
Guideline Initial Cure Period, Luminent and MRV shall each promptly appoint a
representative to negotiate in good faith actions that may be necessary to
correct such noncompliance. The parties shall have thirty (30) days following
the expiration of the Guideline Initial Cure Period to agree on corrective
actions, and Luminent shall have thirty (30) days from the date of an agreement
of corrective actions to implement such corrective actions and cure or cause the
cure of such noncompliance ("Second Guideline Cure Period").
6.3 FINAL CURE PERIOD.
If the noncompliance with the Trademark Usage Guidelines remains uncured after
the expiration of the Second Guideline Cure Period, then at MRV's election,
Luminent, or the noncomplying Subsidiary or Authorized Dealer, whichever is
applicable, promptly shall cease using the noncomplying Collateral Materials
until MRV determines that Luminent, or the noncomplying Subsidiary or Authorized
Dealer, whichever is applicable, has demonstrated its ability and commitment to
comply with the Trademark Usage Guidelines. Nothing in this Article 6 shall be
deemed to limit Luminent's obligations under Section 4.3 above or to preclude
MRV from exercising any rights or remedies under Section 4.3 above.
ARTICLE 7
QUALITY STANDARDS
7.1 GENERAL.
Luminent acknowledges that the Luminent Business Products permitted by this
Agreement to be marked with one or more of the Licensed Marks must continue to
be of sufficiently high quality as to provide protection of the Licensed Marks
and the goodwill they symbolize, and Luminent further acknowledges that the
maintenance of the high quality standards associated with such products is of
the essence of this Agreement.
7.2 QUALITY STANDARDS.
Luminent and its Authorized Dealers and Subsidiaries shall use the Licensed
Marks only on and in connection with Luminent Business Products that meet or
exceed in all respects the Quality Standards.
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7.3 QUALITY CONTROL REVIEWS.
At MRV's request, Luminent agrees to furnish or make available to MRV for
inspection sample Luminent Business Products marked with one or more of the
Licensed Marks. MRV may also independently conduct customer satisfaction surveys
to determine if Luminent and its Subsidiaries and Authorized Dealers are meeting
the Quality Standards. Luminent shall cooperate with MRV fully in the
distribution of such surveys. In the event of a challenge by MRV, MRV shall, at
the request of Luminent, provide Luminent with copies of customer surveys used
by MRV to determine if Luminent is meeting the Quality Standards. If Luminent is
notified or determines that it or any of its Subsidiaries or Authorized Dealers
is not complying with any Quality Standards, it shall notify MRV and the
provisions of Article 8 and Section 4.3 shall apply to such noncompliance.
7.4 PRODUCT DISCONTINUATION.
If, at any time during or after the term of this Agreement, Luminent
discontinues the sale of a Luminent Business Product that has been marked with
one or more of the Licensed Marks, Luminent shall substantially comply with the
discontinuation procedure used by MRV for such or similar products immediately
prior to Separation Date.
ARTICLE 8
QUALITY STANDARD ENFORCEMENT
8.1 INITIAL CURE PERIOD.
If MRV becomes aware that Luminent or any Subsidiary or Authorized Dealer
sublicensee is not complying with any Quality Standards, MRV shall notify
Luminent in writing, setting forth in reasonable detail a written description of
the noncompliance and any requested action for curing such noncompliance.
Luminent shall then have thirty (30) days after receipt of such notice ("Initial
Cure Period") to correct such noncompliance or submit to MRV a written plan to
correct such noncompliance which written plan is reasonably acceptable to MRV.
8.2 SECOND CURE PERIOD.
If noncompliance with the Quality Standards continues beyond the Initial Cure
Period, Luminent and MRV shall each promptly appoint a representative to
negotiate in good faith actions that may be necessary to correct such
noncompliance. The parties shall have thirty (30) days following the expiration
of the Initial Cure Period to agree on corrective actions, and Luminent shall
have thirty (30) days from the date of an agreement of corrective actions to
implement such corrective actions and cure or cause the cure of such
noncompliance ("Second Cure Period").
8.3 FINAL CURE PERIOD.
If the noncompliance with the Quality Standards remains uncured after the
expiration of the Second Cure Period, then at MRV's election, Luminent, or the
noncomplying Subsidiary or Authorized Dealer, whichever is applicable, promptly
shall cease offering the noncomplying Luminent Business Products under the
Licensed Marks until MRV determines that Luminent, or the noncomplying
Subsidiary or Authorized Dealer, whichever is applicable, has demonstrated its
ability and commitment to comply with the Quality Standards. Nothing in this
Article 8 shall
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be deemed to limit Luminent's obligations under Section 4.3 above or to preclude
MRV from exercising any rights or remedies under Section 4.3 above.
ARTICLE 9
PROTECTION OF LICENSED MARKS
9.1 OWNERSHIP AND RIGHTS.
To the extent not contrary to applicable law, Luminent agrees not to challenge
the ownership or validity of the Licensed Marks. Luminent shall not disparage,
dilute or adversely affect the validity of the Licensed Marks. Luminent's use of
the Licensed Marks shall inure exclusively to the benefit of MRV, and Luminent
shall not acquire or assert any rights therein. Luminent recognizes the value of
the goodwill associated with the Licensed Marks, and that the Licensed Marks may
have acquired secondary meaning in the minds of the public.
9.2 PROTECTION OF MARKS.
Luminent shall assist MRV, at MRV's request and expense, in the procurement and
maintenance of MRV's intellectual property rights in the Licensed Marks.
Luminent will not grant or attempt to grant a security interest in the Licensed
Marks, or to record any such security interest in the United States Patent and
Trademark Office or elsewhere, against any trademark application or registration
belonging to MRV. Luminent agrees to, and to cause its Subsidiaries to, execute
all documents reasonably requested by MRV to effect further registration of,
maintenance and renewal of the Licensed Marks, recordation of the license
relationship between MRV and Luminent, and recordation of Luminent as a
registered user. MRV makes no warranty or representation that trademark
registrations have been or will be applied for, secured or maintained in the
Licensed Marks throughout, or anywhere within, the world. Luminent shall cause
to appear on all Luminent Business Products, and all Collateral Materials, such
legends, markings and notices as may be required by applicable law or reasonably
requested by MRV.
9.3 SIMILAR MARKS.
Luminent agrees not to use or register in any country any Xxxx that infringes
MRV's rights in the Licensed Marks, or any element thereof. If any application
for registration is, or has been, filed in any country by Luminent which relates
to any Xxxx that infringes MRV's rights in the Licensed Marks, Luminent shall
immediately abandon any such application or registration or assign it to MRV. To
the extent not contrary to applicable law, Luminent shall not challenge MRV's
ownership of or the validity of the Licensed Marks or any application for
registration thereof throughout the world. Luminent shall not use or register in
any country any copyright, domain name, telephone number or any other
intellectual property right, whether recognized currently or in the future, or
other designation which would affect the ownership or rights of MRV in and to
the Licensed Marks, or otherwise to take any action which would adversely affect
any of such ownership rights, or assist anyone else in doing so. Luminent shall
cause its Subsidiaries and Authorized Dealers to comply with the provisions of
this Section 9.3.
9.4 INFRINGEMENT PROCEEDINGS.
In the event that the Luminent General Counsel learns of any infringement or
threatened infringement of the Licensed Marks, or any unfair competition,
passing-off or dilution with respect to the Licensed Marks, Luminent shall
notify MRV or its authorized representative
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giving particulars thereof, and Luminent shall provide necessary information and
assistance to MRV or its authorized representatives at MRV's expense in the
event that MRV decides that proceedings should be commenced. Notwithstanding the
foregoing, Luminent is not obligated to monitor or police use of the Licensed
Marks by Third Parties other than as specifically set forth in Section 4.3. MRV
shall have exclusive control of any litigation, opposition, cancellation or
related legal proceedings, relating to the use of the licensed trademarks by
third parties. The decision whether to bring, maintain or settle any such
proceedings shall be at the exclusive option and expense of MRV, and all
recoveries shall belong exclusively to MRV. Luminent shall not and shall have no
right to initiate any such litigation, opposition, cancellation or related legal
proceedings in its own name, but, at MRV's request, agrees to be joined as a
party in any action taken by MRV to enforce its rights in the Licensed Marks.
MRV shall incur no liability to Luminent or any other Person under any legal
theory by reason of MRV's failure or refusal to prosecute or by MRV's refusal to
permit Luminent to prosecute, any alleged infringement by Third Parties, nor by
reason of any settlement to which MRV may agree.
ARTICLE 10
TERMINATION
10.1 TERM.
This Agreement shall remain in effect for a period of two (2) years from the
Effective Date unless earlier terminated as provided below
10.2 VOLUNTARY TERMINATION.
By written notice to MRV, Luminent may voluntarily terminate all or a specified
portion of the licenses and rights granted to it hereunder by MRV. Such notice
shall specify the effective date of such termination and shall clearly specify
any affected Licensed Marks, Luminent Business Products or services.
10.3 SURVIVAL.
Any termination of licenses and rights of Luminent under Section 10.2 shall not
affect Luminent's licenses and rights with respect to any Luminent Business
Products made or sold prior to such termination.
10.4 OTHER TERMINATION.
MRV acknowledges and agrees that its rights to terminate the licenses granted to
Luminent hereunder are solely as set forth in Section 4.3 and Articles 6 and 8.
ARTICLE 11
DISPUTE RESOLUTION
11.1 MEDIATION.
If a dispute, controversy or claim ("Dispute") arises between the parties
relating to the interpretation or performance of this Agreement or the Ancillary
Agreements, or the grounds for the termination hereof, appropriate senior
executives (e. g. director or V.P. level) of each party who shall have the
authority to resolve the matter shall meet to attempt in good faith to negotiate
a resolution of the Dispute prior to pursuing other available remedies. The
initial meeting
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between the appropriate senior executives shall be referred to herein as the
"Dispute Resolution Commencement Date." Discussions and correspondence relating
to trying to resolve such Dispute shall be treated as confidential information
developed for the purpose of settlement and shall be exempt from discovery or
production and shall not be admissible. If the senior executives are unable to
resolve the Dispute within thirty (30) days from the Dispute Resolution
Commencement Date, and either party wishes to pursue its rights relating to such
Dispute, then the Dispute will be mediated by a mutually acceptable mediator
appointed pursuant to the mediation rules of JAMS/Endispute within thirty (30)
days after written notice by one party to the other demanding non-binding
mediation. Neither party may unreasonably withhold consent to the selection of a
mediator or the location of the mediation. Both parties will share the costs of
the mediation equally, except that each party shall bear its own costs and
expenses, including attorney's fees, witness fees, travel expenses, and
preparation costs. The parties may also agree to replace mediation with some
other form of non-binding or binding ADR.
11.2 ARBITRATION.
Any Dispute which the parties cannot resolve through mediation within ninety
(90) days of the Dispute Resolution Commencement Date, unless otherwise mutually
agreed, shall be submitted to final and binding arbitration under the then
current Commercial Arbitration Rules of the American Arbitration Association
("AAA"), by three (3) arbitrators in Los Angeles County, California. Such
arbitrators shall be selected by the mutual agreement of the parties or, failing
such agreement, shall be selected according to the aforesaid AAA rules. The
arbitrators will be instructed to prepare and deliver a written, reasoned
opinion stating their decision within thirty (30) days of the completion of the
arbitration. The prevailing party in such arbitration shall be entitled to
expenses, including costs and reasonable attorneys' and other professional fees,
incurred in connection with the arbitration (but excluding any costs and fees
associated with prior negotiation or mediation). The decision of the arbitrator
shall be final and non-appealable and may be enforced in any court of competent
jurisdiction. The use of any ADR procedures will not be construed under the
doctrine of laches, waiver or estoppel to adversely affect the rights of either
party.
11.3 COURT ACTION.
Any Dispute regarding the following is not required to be negotiated, mediated
or arbitrated prior to seeking relief from a court of competent jurisdiction:
breach of any obligation of confidentiality; infringement, misappropriation, or
misuse of any intellectual property right; any other claim where interim relief
from the court is sought to prevent serious and irreparable injury to one of the
parties or to others. However, the parties to the Dispute shall make a good
faith effort to negotiate and mediate such Dispute, according to the above
procedures, while such court action is pending.
11.4 CONTINUITY OF SERVICE AND PERFORMANCE.
Unless otherwise agreed in writing, the parties will continue to provide service
and honor all other commitments under this Agreement and each Ancillary
Agreement during the course of dispute resolution pursuant to the provisions of
this Article 11 with respect to all matters not subject to such dispute,
controversy or claim.
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ARTICLE 12
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE
OTHER PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT,
INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS OR ANY OTHER DAMAGES, HOWEVER
CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY
OUT OF THIS AGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES; PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS
SHALL NOT LIMIT EACH PARTY'S OBLIGATIONS EXPRESSLY ASSUMED IN EXHIBIT J OF THE
MASTER SEPARATION AND DISTRIBUTION AGREEMENT; PROVIDED FURTHER THAT THE
EXCLUSION OF PUNITIVE DAMAGES SHALL APPLY IN ANY EVENT.
ARTICLE 13
MISCELLANEOUS PROVISIONS
13.1 DISCLAIMER.
EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL LICENSED MARKS AND ANY OTHER
INFORMATION OR MATERIALS LICENSED OR PROVIDED HEREUNDER ARE LICENSED OR PROVIDED
ON AN "AS IS" BASIS AND THAT NEITHER PARTY NOR ANY OF ITS SUBSIDIARIES MAKE ANY
REPRESENTATIONS OR EXTENDS ANY WARRANTIES WHATSOEVER, EXPRESS, IMPLIED OR
STATUTORY, WITH RESPECT THERETO INCLUDING WITHOUT LIMITATION ANY IMPLIED
WARRANTIES OF TITLE, ENFORCEABILITY OR NON-INFRINGEMENT. Without limiting the
generality of the foregoing, neither MRV nor any of its Subsidiaries makes any
warranty or representation as to the validity of any Xxxx licensed by it to
Luminent or any warranty or representation that any use of any Xxxx with respect
to any product or service will be free from infringement of any rights of any
Third Party.
13.2 NO IMPLIED LICENSES.
Nothing contained in this Agreement shall be construed as conferring any rights
by implication, estoppel or otherwise, under any intellectual property right,
other than the rights expressly granted in this Agreement with respect to the
Licensed Marks. Neither party is required hereunder to furnish or disclose to
the other any information (including copies of registrations of the Marks),
except as specifically provided herein.
13.3 INFRINGEMENT SUITS.
Except as set forth in Section 4.3, (i) neither party shall have any obligation
hereunder to institute any action or suit against Third Parties for infringement
of any of the Licensed Marks or to defend any action or suit brought by a Third
Party which challenges or concerns the validity of any of the Licensed Marks and
(ii) Luminent shall not have any right to institute any action or suit against
Third Parties for infringement of any of the Licensed Marks.
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13.4 NO OTHER OBLIGATIONS.
NEITHER PARTY ASSUMES ANY RESPONSIBILITIES OR OBLIGATIONS WHATSOEVER, OTHER THAN
THE RESPONSIBILITIES AND OBLIGATIONS EXPRESSLY SET FORTH IN THIS AGREEMENT OR A
SEPARATE WRITTEN AGREEMENT BETWEEN THE PARTIES. Without limiting the generality
of the foregoing, neither party, nor any of its Subsidiaries, is obligated to
(i) file any application for registration of any Xxxx, or to secure any rights
in any Marks, (ii) to maintain any Xxxx registration, or (iii) provide any
assistance, except for the obligations expressly assumed in this Agreement.
13.5 ENTIRE AGREEMENT.
This Agreement, the Master Separation and Distribution Agreement and the other
Ancillary Agreements (as defined in the Master Separation and Distribution
Agreement) and the Exhibits and Schedules referenced or attached hereto and
thereto constitute the entire agreement between the parties with respect to the
subject matter hereof and thereof and shall supersede all prior written and oral
and all contemporaneous oral agreements and understandings with respect to the
subject matter hereof and thereof. To the extent there is a conflict between
this Agreement and the General Assignment and Assumption Agreement between the
parties, the terms of this Agreement shall govern.
13.6 GOVERNING LAW.
This Agreement shall be construed in accordance with and all Disputes hereunder
shall be governed by the laws of the State of California, excluding its conflict
of law rules and the United Nations Convention on Contracts for the
International Sale of Goods. The Superior Court of Los Angeles County and/or the
United States District Court for the Southern District of California shall have
jurisdiction and venue over all Disputes between the parties that are permitted
to be brought in a court of law pursuant to Article 11 above.
13.7 DESCRIPTIVE HEADINGS.
The headings contained in this Agreement, in any Exhibit or Schedule hereto and
in the table of contents to this Agreement are for reference purposes only and
shall not affect in any way the meaning or interpretation of this Agreement. Any
capitalized term used in any Exhibit or Schedule but not otherwise defined
therein, shall have the meaning assigned to such term in this Agreement. When a
reference is made in this Agreement to an Article or a Section, Exhibit or
Schedule, such reference shall be to an Article or Section of, or an Exhibit or
Schedule to, this Agreement unless otherwise indicated.
13.8 NOTICES.
Notices, offers, requests or other communications required or permitted to be
given by either party pursuant to the terms of this Agreement shall be given in
writing to the respective parties to the following addresses:
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if to MRV :
MRV Communications, Inc.
00000 Xxxxxxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxxxx 00000
Attention: Xxxx Xxxxx, Chief Executive Officer
Fax: (000) 000-0000
if to Luminent:
Luminent, Inc.
00000 Xxxxxxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxxxx 00000
Attention: Xxxxxxx X. Xxxxxx, Chief Executive Officer
Fax: (000) 000-0000
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non-performance, termination, or renewal shall be sent by hand
delivery, recognized overnight courier or, within the United States, may also be
sent via certified mail, return receipt requested. All other notices may also be
sent by fax, confirmed by first class mail. All notices shall be deemed to have
been given and received on the earlier of actual delivery or three (3) days from
the date of postmark.
13.9 NONASSIGNABILITY.
Neither party may, directly or indirectly, in whole or in part, whether by
operation of law or otherwise, assign or transfer this Agreement, without the
other party's prior written consent, and any attempted assignment, transfer or
delegation without such prior written consent shall be voidable at the sole
option of such other party. Notwithstanding the foregoing, each party (or its
permitted successive assignees or transferees hereunder) may assign or transfer
this Agreement as a whole without consent to a Person that succeeds to all or
substantially all of the business or assets of such party as long as such Person
agrees to accept all the terms and conditions set forth herein. Without limiting
the foregoing, this Agreement will be binding upon and inure to the benefit of
the parties and their permitted successors and assigns.
13.10 SEVERABILITY.
If any term or other provision of this Agreement is determined by a court,
administrative agency or arbitrator to be invalid, illegal or incapable of being
enforced by any rule of law or public policy, all other conditions and
provisions of this Agreement shall nevertheless remain in full force and effect
so long as the economic or legal substance of the transactions contemplated
hereby is not affected in any manner materially adverse to either party. Upon
such determination that any term or other provision is invalid, illegal or
incapable of being enforced, the parties hereto shall negotiate in good faith to
modify this Agreement so as to effect the original intent of the parties as
closely as possible in an acceptable manner to the end that the transactions
contemplated hereby are fulfilled to the fullest extent possible.
13.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No failure
or delay on the part of either party hereto in the exercise of any right
hereunder shall impair such right or be construed to be a waiver of, or
acquiescence in, any breach of any
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representation, warranty or agreement herein, nor shall any single or partial
exercise of any such right preclude other or further exercise thereof or of any
other right. All rights and remedies existing under this Agreement are
cumulative to, and not exclusive of, any rights or remedies otherwise available.
13.12 AMENDMENT.
No change or amendment will be made to this Agreement except by an instrument in
writing signed on behalf of each of the parties to such agreement.
13.13 COUNTERPARTS.
This Agreement, including the Ancillary Agreements and the Exhibits and
Schedules hereto and thereto and the other documents referred to herein or
therein, may be executed in counterparts, each of which shall be deemed to be an
original but all of which shall constitute one and the same agreement.
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WHEREFORE, the parties have signed this Trademark Ownership and License
Agreement effective as of the date first set forth above.
MRV COMMUNICATIONS, INC.,
A DELAWARE CORPORATION
By:
-----------------------------------
Xxxx Xxxxx, Chief Executive Officer
And
LUMINENT, INC.
By:
-----------------------------------
Xxxxxxx X. Xxxxxx, Chief
Executive Officer
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EXHIBIT A
TO MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
LICENSED MARKS
18
