1
EXHIBIT 10.4
FORM OF
INTELLECTUAL PROPERTY AGREEMENT
This INTELLECTUAL PROPERTY AGREEMENT ("Agreement") is dated as of
______________, 1996, between and among THE DUN & BRADSTREET CORPORATION, a
Delaware corporation ("D&B"), COGNIZANT CORPORATION, a Delaware corporation
("Cognizant"), and ACNIELSEN CORPORATION, a Delaware corporation ("ACNielsen")
(each a "Party" and collectively, the "Parties").
RECITALS
WHEREAS, D&B, acting through its direct and indirect subsidiaries,
currently owns various intellectual property rights used in connection with a
number of businesses, which businesses are described in the Distribution
Agreement dated as of __________, 1996, among D&B, Cognizant and ACNielsen (the
"Distribution Agreement"); and
WHEREAS, the Parties hereto have determined that this Agreement is
appropriate in order to effectuate the purposes of the Distribution Agreement as
described therein, and in order to promote a clear understanding of their
respective intellectual property rights subsequent to the execution of said
Distribution Agreement and the Distribution (as defined therein) contemplated
thereby;
NOW, THEREFORE, in consideration of the mutual agreements, undertakings
and covenants herein and therein, the sufficiency of which is hereby
acknowledged, the Parties hereby agree as follows:
ARTICLE I. DEFINITIONS
1. Except as may be set forth herein, all defined terms shall have the
meaning set forth in Article I, Section 1.1 of the Distribution Agreement.
2. "Data Services Agreements" shall mean the Data Services Agreements
between and among D&B, Cognizant and ACNielsen.
3. "Infringement" shall mean any unauthorized use or conduct in
violation or derogation of the rights in question.
4. "Intellectual Property" shall mean all intellectual property rights
related to the assets or businesses in question, including without limitation:
2
2
a. any and all rights, privileges and priorities arising under the laws
or treaties of the United States, any state, territory or possession
thereof, any other country or political subdivision or territory
thereof, or the European Community, relating to patents, copyrights,
trade names, trademarks, service marks, mask works, trade secrets,
inventions, databases, names and logos, trade dress, and other
proprietary information and licenses from third persons granting the
right to use any of the foregoing, including all registrations and
applications for any of the foregoing that have been issued by or
filed with the appropriate authorities prior to the Distribution
Date, any common-law rights arising from the use of the foregoing
prior to the Distribution Date, any rights commonly known as
"industrial property rights" or the "moral rights" of authors
relating to the foregoing, and all claims, causes of action, or
other rights arising out of or relating to any actual or threatened
Infringement by any person not a Party to this Agreement accruing,
commencing or occurring prior to the Distribution Date;
b. all computer applications, programs and other software, including
without limitation operating software, network software, firmware,
middleware, design software, design tools, systems documentation and
instructions, except to the extent that they may be more
specifically addressed in the Data Services Agreements; and
c. all cost information, sales and pricing data, customer prospect
lists, supplier records, customer and supplier lists, customer and
vendor data, correspondence and lists, product literature, artwork,
design, development and manufacturing files, vendor and customer
drawings, formulations and specifications, quality records and
reports and other books, records, studies, surveys, reports, plans
and documents.
5. "Intellectual Property Disputes" shall mean any and all
controversies, disputes or claims arising out of, in connection with, or in
relation to the interpretation, performance, nonperformance, validity or breach
of this Agreement or otherwise arising out of, or in any way related to this
Agreement or the Intellectual Property, including, without limitation, any and
all claims based on contract, tort, statute or constitution.
3
3
6. "LLC" shall mean CZT/ACN Trademarks, L.L.C., a Delaware limited
liability company to be jointly owned by Cognizant and ACN pursuant to the LLC
Agreement.
7. "LLC Agreement" shall mean the agreement to be entered into by
Cognizant and ACN substantially in the form of Schedule I.
8. "Nielsen Intellectual Property" shall mean those patents,
trademarks, service marks, registrations and applications therefor identified in
the Schedules described in Article III of this Agreement.
ARTICLE II. OWNERSHIP OF INTELLECTUAL PROPERTY.
General Principles of Allocation and Recognition
Section 2.01. Without limiting any obligation or liability of D&B under
the Distribution Agreement or any Ancillary Agreement, and subject to the
provisions set forth in Article III below, each of the Parties hereto
acknowledges, recognizes and agrees that, after the Distribution, D&B (or
another member of the D&B Group) shall retain all right, title and interest in
all Intellectual Property that (i) originated primarily with the conduct of the
D&B Business or primarily in connection with the D&B Assets; (ii) was obtained
by, or exclusively or primarily for the conduct of, the D&B Business or in
connection with the D&B Assets; (iii) was developed exclusively or primarily for
the conduct of the D&B Business or in connection with the D&B Assets; (iv) arose
from funding by, or exclusively or primarily for the benefit of the conduct of,
the D&B Business or in connection with the D&B Assets; or (v) as of the
Distribution Date is used or held for use exclusively or primarily for the
conduct of the D&B Business or in connection with the D&B Assets. If a conflict
exists between any of the subsections (i) through (iv) of this Section on the
one hand and subsection (v) of this Section on the other hand, then subsection
(v) shall prevail.
Section 2.02. Without limiting any obligation or liability of Cognizant
under the Distribution Agreement or any Ancillary Agreement, and subject to the
provisions set forth in Article III below, each of the Parties hereto
acknowledges, recognizes and agrees that, after the Distribution, Cognizant (or
another member of the Cognizant Group) shall retain all right, title and
interest in all Intellectual Property that (i) originated primarily with the
conduct of the Cognizant Business or primarily in connection with the Cognizant
Assets; (ii) was obtained by, or exclusively or primarily for the conduct of,
the Cognizant Business or in connection with the Cognizant Assets; (iii) was
developed exclusively or primarily for the conduct of the Cognizant Business or
in connection with the Cognizant Assets; (iv) arose from funding by, or
exclusively or primarily
4
4
for the benefit of the conduct of, the Cognizant Business or in connection with
the Cognizant Assets; or (v) as of the Distribution Date is used or held for use
exclusively or primarily for the conduct of the Cognizant Business or in
connection with the Cognizant Assets. If a conflict exists between any of the
subsections (i) through (iv) of this Section on the one hand and subsection (v)
of this Section on the other hand, then subsection (v) shall prevail.
Section 2.03. Without limiting any obligation or liability of ACNielsen
under the Distribution Agreement or any Ancillary Agreement, and subject to the
provisions set forth in Article III below, each of the Parties hereto
acknowledges, recognizes and agrees that, after the Distribution, ACNielsen (or
another member of the ACNielsen Group) shall retain all right, title and
interest in all Intellectual Property that (i) originated primarily with the
conduct of the ACNielsen Business or primarily in connection with the ACNielsen
Assets; (ii) was obtained by, or exclusively or primarily for the conduct of,
the ACNielsen Business or in connection with the ACNielsen Assets; (iii) was
developed exclusively or primarily for the conduct of the ACNielsen Business or
in connection with the D&B Assets; (iv) arose from funding by, or exclusively or
primarily for the benefit of the conduct of, the ACNielsen Business or in
connection with the ACNielsen Assets; or (v) as of the Distribution Date is used
or held for use exclusively or primarily for the conduct of the ACNielsen
Business or in connection with the ACNielsen Assets. If a conflict exists
between any of the subsections (i) through (iv) of this Section on the one hand
and subsection (v) of this Section on the other hand, then subsection (v) shall
prevail.
Section 2.04. Certain Specified Items. Without limiting any obligation
or liability of any Party under the Distribution Agreement or any Ancillary
Agreement, and subject to the provisions set forth in Article III below, each of
the Parties hereto acknowledges, recognizes and agrees that, after the
Distribution, all right, title and interest in all Intellectual Property
relating to and associated with the items identified in Schedule A shall be
owned by or vested in the Party indicated therein. This provision is intended to
supplement the preceding Sections 2.01-2.03 with regard to these specified
items, and should not be construed in any manner that would tend to derogate
from the validity or applicability of the general principles of allocation and
recognition set forth therein. Nevertheless, in the event of conflict between
this provision and Sections 2.01-2.03, this Section 2.04 shall prevail.
Section 2.05. Rights Arising in Future. Subject to the provisions set
forth in Article III below, each of the Parties hereto acknowledges, recognizes
and agrees that, after the Distribution Date, (i) any and all Intellectual
Property created by or on behalf of a Party, including common-law rights related
thereto, shall belong solely and exclusively to such
5
5
Party; and (ii) any and all subsequent ownership, possession and use by each
Party of the Intellectual Property that it will own subsequent to the
Distribution pursuant to the terms of this Agreement (excluding any possession
or use pursuant to license granted by another Party), including common-law
rights related thereto, shall inure solely to such Party's own benefit.
Section 2.06. No Warranties. Each of the Parties hereto understands and
agrees that, except as otherwise expressly provided, no Party hereto is, in this
Agreement or in any other agreement or document contemplated by this Agreement
or otherwise, making any representation or warranty whatsoever regarding the
Intellectual Property, including, without limitation, as to title, value or
legal sufficiency. It is also agreed and understood that any and all
Intellectual Property assets either transferred or retained by the Parties, as
the case may be, shall be "as is, where is".
Section 2.07. Recognition of Non-Party Rights. The recognition among
the Parties of ownership of Intellectual Property rights under Sections
2.01-2.05 of this Agreement is subject to all pre-existing rights, obligations
and restrictions of non-parties to this Agreement as of the Distribution Date.
ARTICLE III. NIELSEN INTELLECTUAL PROPERTY.
PATENTS AND PATENT APPLICATIONS
Section 3.01. Notwithstanding the provisions of Article II of this
Agreement, each of the Parties hereto acknowledges, recognizes and agrees that,
after the Distribution, Cognizant shall have all right, title and interest in,
to and under those patents and patent applications previously owned by ACNielsen
identified in Schedule B, together with all Intellectual Property related
thereto and associated therewith, for the exclusive use and benefit of Cognizant
in connection with the Cognizant Business as it is now or may hereinafter be
conducted anywhere in the world.
Section 3.02. Notwithstanding the provisions of Article II of this
Agreement, each of the parties hereto acknowledges, recognizes and agrees that,
after the Distribution, ACNielsen shall retain all right, title and interest in,
to and under those patents and patent applications identified in Schedule C,
together with all Intellectual Property related thereto and associated
therewith, for the exclusive use and benefit of ACNielsen in connection with the
ACNielsen Business as it is now or may hereinafter be conducted anywhere in the
world.
Section 3.03. Notwithstanding the provisions of Article II of this
Agreement, each of the Parties hereto acknowledges, recognizes and agrees that
NCH Promotional Services, Inc., shall own all right, title and interest in, to
6
6
and under those patents identified in Schedule D, together with all Intellectual
Property related thereto and associated therewith, for the exclusive use and
benefit of NCH Promotional Services, Inc., in connection with its business as it
is now or may hereinafter be conducted anywhere in the world.
TRADEMARKS AND TRADEMARK APPLICATIONS
Section 3.04. Notwithstanding the provisions of Article II of this
Agreement, each of the Parties hereto acknowledges, recognizes and agrees that,
after the Distribution, Cognizant shall have all right, title and interest in,
to and under those trademarks, service marks, registrations and applications
therefor identified in Schedule E, together with all goodwill and Intellectual
Property related thereto and associated therewith, for the exclusive use of
Cognizant in connection with the Cognizant Business as it is now or may
hereinafter be conducted anywhere in the world.
Section 3.05. Notwithstanding the provisions of Article II of this
Agreement, each of the Parties hereto acknowledges, recognizes and agrees that,
after the Distribution, ACNielsen shall have all right, title and interest in,
to and under those trademarks, service marks, registrations and applications
therefor identified in Schedule F, together with all goodwill and Intellectual
Property related thereto and associated therewith, for the exclusive use of
ACNielsen in connection with the ACNielsen Business as it is now or may
hereinafter be conducted anywhere in the world.
Section 3.06. Notwithstanding the provisions of Article II of this
Agreement, each of the Parties hereto acknowledges, recognizes and agrees that
NCH Promotional Services, Inc., shall own all right, title and interest in, to
and under those trademarks, service marks, registrations and applications
therefor identified in Schedule G, together with all goodwill and Intellectual
Property related thereto and associated therewith, for the exclusive use and
benefit of NCH Promotional Services, Inc., in connection with its business as it
is now or may hereinafter be conducted anywhere in the world.
Section 3.07. Notwithstanding the provisions of Article II of this
Agreement, each of the parties hereto acknowledges, recognizes and agrees that,
after the Distribution, all right, title and interest in, to and under those
trademarks, service marks, registrations and applications therefor identified in
Schedule H, together with all goodwill and Intellectual Property related thereto
and associated therewith, shall be owned by the LLC, which shall have sole
responsibility for maintaining and preserving the quality of those trademarks,
service marks, registrations and applications therefor in a manner consistent
with the high standards and reputation for quality associated with the "NIELSEN"
name. The LLC will be organized and governed according to the LLC Agreement,
substantially in the form of
7
7
Schedule I and as it may be amended or modified by Cognizant and ACNielsen
pursuant to its terms, with the fundamental purpose at all times of assisting
both Cognizant and ACNielsen in achieving their legitimate business purposes to
the greatest extent possible while also preserving the integrity of the
trademarks, service marks, registrations and applications therefor owned by it
and minimizing the risk of confusion to any relevant group of consumers for any
product or service associated with any such trademark, service xxxx,
registration or application therefor. Schedule H also identifies those trademark
and service xxxx applications that cannot be immediately transferred or assigned
to the LLC under the relevant local law. Ownership of each such application
shall be retained by ACNielsen pursuant to an escrow agreement, in a form valid
and legally enforceable pursuant to the relevant local law, until such
application is granted; at which time the registration and all goodwill and
Intellectual Property related thereto and associated therewith, if any, shall be
transferred to the LLC, as shall be specified in both the LLC Agreement and the
pertinent escrow agreement.
Section 3.08. Reversion of Certain Property. Schedule H also identifies
certain trademarks and service marks that shall be distributed, together with
all goodwill and Intellectual Property related thereto and associated therewith,
by the LLC to either Cognizant or ACNielsen as indicated therein and to the
extent appropriate under the LLC Agreement, in the event that the relevant local
law pursuant to which rights in such trademarks or service marks are granted
should subsequently, in the opinion of counsel to the LLC with expertise in the
relevant local law, both (a) permit the ownership of such trademarks or service
marks by unrelated entities without substantial jeopardy to their validity or
enforceability, and (b) not present a substantial impediment to the future
registration (subject to the other provisions of this Article) by either
Cognizant or ACNielsen of a trademark or service xxxx incorporating, referring
to or derived from the "NIELSEN" name, if applications for concurrent
registration of such trademarks or service marks were to be made by unrelated
entities. In no event, however, shall any trademark or service xxxx consisting
of the "NIELSEN" name or the "split-N" symbol, standing alone, be so
distributed, for so long as both Cognizant and ACNielsen shall continue to use
any trademark or service xxxx anywhere in the world incorporating, referring to
or derived from the "NIELSEN" name.
Section 3.09. Clear Identification of Source. Cognizant and ACNielsen
agree that, subsequent to the Distribution Date, neither Cognizant nor ACNielsen
shall possess or acquire any right to use the "NIELSEN" name or "split-N" symbol
standing alone or by itself in any manner for any purpose, including use of the
name as an Internet domain name or the equivalent or as the name or logo for a
business, corporation, or other legal entity, except as may otherwise be agreed
by and between Cognizant and ACNielsen; provided, however, that both
8
8
Cognizant and ACNielsen may continue to use the "NIELSEN" name or "split-N"
symbol in any usage for which each, respectively, is currently using the name or
symbol, including usage of the name as part of electronic mail or messaging
addresses for its employees using existing systems, during a transitional period
of six months subsequent to the Distribution Date (a "Transitional Use").
Subsequent to the Distribution Date, except for a Transitional Use, any use that
Cognizant or ACNielsen may make of the "NIELSEN" name or "split-N" symbol for
any business purpose, including any use in trade, advertising, publicity,
packaging, or labeling, and including any use of any trademark or service xxxx
identified in Schedule H or in Schedules E and F that incorporates, refers to,
or is derived from the "NIELSEN" name or "split-N" symbol, shall only be made in
conjunction with other words, names, symbols or logos prominently displayed in
as near proximity thereto as is reasonably feasible and, at minimum, on the same
page, panel, sheet or screen therewith, clearly identifying the source of the
communication, good or service: (a) with regard to Cognizant, as "NIELSEN TV,"
"XXXXXXX MEDIA," "XXXXXXX MEDIA RESEARCH," or another entity using a name not
incorporating, referring to, or derived from the "NIELSEN" name; and (b) with
regard to ACNielsen, as "ACNIELSEN" or another entity using a name not
incorporating, referring to, or derived from the "NIELSEN" name. In addition, in
the event that ACNielsen enters into any television audience measurement
business in the United States or Canada subsequent to the Distribution Date, its
use of any name incorporating, referring to, or derived from the "NIELSEN" name
in connection with such business shall be subject to the provisions of Schedule
J.
Section 3.10. Limitations on Concurrent Use. The provisions in this
Article shall in no way restrict the rights of Cognizant or ACNielsen to sell
any product or service or enter into any business identical or similar to any
product or service sold, or business conducted by, the other before or after the
Distribution Date. Cognizant and ACNielsen agree, however, that in the event
that either Cognizant or ACNielsen sells any product or service, or enters into
any business, after the Distribution Date in any country that is identical or
substantially similar to those sold or conducted by the other in that country
prior to the Distribution Date, neither Cognizant nor ACNielsen shall use any
name incorporating, referring to or derived from the "NIELSEN" name or the
"split-N" symbol to describe or identify such product, service, or business;
provided that any product, service or business relating to the measurement of
Internet usage or to research and analysis of Internet usage, utilization,
advertising, or purchasing patterns, by businesses or consumers, shall not be
subject to such restriction and shall only be subject to the restrictions set
forth in Section 3.09, and provided further that any product or service that may
in future be sold by ACNielsen in connection with any television audience
measurement business in the United States or Canada shall be subject to both
this restriction and the provisions of Schedule J.
9
9
Section 3.11. Clear Fields. Cognizant and ACNielsen agree that,
subsequent to the Distribution Date, neither Cognizant nor ACNielsen shall use
(except pursuant to license), register or attempt to register any trademark or
service xxxx (whether registered or not) that has been used (except pursuant to
license), owned or applied for by the other in any country or geographic area as
of the Distribution Date, including but not limited to those trademarks and
service marks identified in Schedules A, F, G and H, in either that country or
geographic area or in any other country or geographic area.
Section 3.12. Notice and Publicity. Prior to or subsequent to the
Distribution, both Cognizant and ACNielsen agree to give or cause to be given,
in each distinct geographic area or line of business in which they intend to
operate or to sell any product or service, such notice and publicity of their
separation and distinct identities as the source of any such business, product
or service as may be reasonable under the circumstances or required by the
relevant local law, where the local law imposes such a duty so to notify and/or
publicize.
Section 3.13. Internet Hyperlinks. Cognizant and ACNielsen agree to
assign and transfer all rights in the existing "xxxxxxx.xxx" Internet domain
name to the LLC, and to cause the LLC to provide and maintain an Internet or Web
site using that domain name for the purpose of providing and maintaining
"hyperlinks" to the principal Internet or Web sites maintained by both Cognizant
and ACNielsen. In addition, both Cognizant and ACNielsen agree to provide and
maintain in any Internet or Web site maintained by Cognizant or ACNielsen,
respectively, for a period of two (2) years subsequent to the Distribution Date,
a hyperlink to the principal Internet or Web site maintained by the other. All
such hyperlinks shall be displayed together with appropriate text indicating the
nature and purpose of the hyperlink and describing in summary the separation and
distinct identities of each as sources of their respective goods and services.
Cognizant and ACNielsen further agree to cooperate reasonably in the
identification of appropriate addresses and/or domain names and in resolving
technical issues necessary to provide and maintain such hyperlinks.
Section 3.14. Assignments and Sublicenses; Remedies for Improper Use.
Cognizant and ACNielsen agree that any form of transfer of, or grant of rights
in or to, any trademark or service xxxx (whether registered or not)
incorporating, referring to or derived from the "NIELSEN" name or "split-N"
symbol by either Cognizant or ACNielsen (the "Granting Party") to a non- party
to this Agreement shall be made explicitly subject to all pertinent provisions
of Article III of this Agreement concerning the Granting Party's own use of any
such trademark or service xxxx, and notice shall be given by the Granting Party
to the Party other than the Granting Party (the "Interested Party") of any such
transfer or grant of rights. Any such grant of rights that is not an outright
transfer, assignment, sale or disposition
10
10
of all of the Granting Party's rights and interests in any such trademark or
service xxxx, including any sub-license, consent or permission to use, to a
non-party to this Agreement (a "Grantee") shall be pursuant to a written
instrument that shall both (a) explicitly bind the Grantee to all pertinent
provisions of this Agreement restricting the Granting Party's own use of any
such trademark or service xxxx, and (b) explicitly provide that the Granting
Party may revoke the grant of rights, in its sole discretion, upon not more than
thirty days' notice to the Grantee. It shall be the obligation of the Granting
Party to use its best efforts to police the use made of any such trademark or
service xxxx by a Grantee. If the Granting Party reasonably believes that a
Grantee is using any such trademark or service xxxx in a manner that is (c)
inconsistent with the terms of this Agreement or (d) injurious to the high
standards and reputation for quality associated with the "NIELSEN" name (an
"Improper Use"), the Granting Party shall promptly so notify both the Grantee
and the Interested Party. If the Grantee does not thereafter correct or
terminate the Improper Use within thirty days, the Granting Party shall revoke
the grant of rights to the Grantee, and shall give notice thereof to the
Interested Party. If the Interested Party reasonably believes that the use made
by a Grantee of rights granted by the Granting Party is an Improper Use, it may
so notify the Granting Party, which shall thereupon take appropriate measures to
investigate the use in question and shall notify the Interested Party within
fourteen (14) days as to whether it also reasonably believes that the Grantee is
engaging in an Improper Use. If the Granting Party, after receiving notice from
the Interested Party, also reasonably believes that the Grantee is engaging in
an Improper Use, it shall take all appropriate measures to correct or terminate
the Improper Use, including the giving of notice of revocation to the Grantee,
if necessary. If the Granting Party (x) gives notice to the Interested Party
that it does not reasonably believe that a Grantee is engaging in an Improper
Use, or (y) fails to take appropriate measures to correct or terminate an
Improper Use after giving notice to the Interested Party that it reasonably
believes a Grantee is engaging in an Improper Use, or (z) is unable to correct
or terminate an Improper Use by a Grantee within sixty (60) days of the first
notice of suspected Improper Use given by either the Granting Party or the
Interested Party, the Interested Party may both take such legal measures it
deems appropriate against the Grantee and invoke its rights against the Granting
Party in the event of an Intellectual Property Dispute as defined in this
Agreement.
Section 3.15. Duty to Avoid Confusion. The Parties hereto confirm their
belief that likelihood of confusion will not result from the Parties' use of
their respective trademarks and service marks as provided for in this Agreement,
due to the differences in the environments in which and the customers to whom
the goods and services of the Parties associated therewith are primarily offered
and sold. The Parties further believe that any potential future confusion will
be prevented under the terms
11
11
of this Agreement. Furthermore, in order to enable and permit each other to
continue using and to register their respective trademarks and service marks and
to ensure that there is no confusion in any relevant marketplace between them,
the Parties agree to use their best efforts to avoid actual or potential
confusion arising from their use, to advise any other affected Party of any
instance of actual or potential confusion that comes to a Party's attention
concerning use of their respective trademarks and service marks, to take all
such steps as may be appropriate and necessary to remedy any actual or potential
confusion caused by their actions, and to cooperate with each other in good
faith to avoid and prevent actual or potential confusion.
Section 3.16. Consent to Registration. Subject to the other provisions
of this Article, each Party agrees that any other Party may use a copy of this
Agreement to evidence the other Party's express consent to registration of the
Party's trademarks or service marks, if necessary to obtain or maintain a
registration of such xxxx in the United States Patent and Trademark Office or
any other pertinent governmental agency in any country or group of countries;
and further agrees to take any other necessary action that any other Party may
reasonably request to express or confirm such consent.
Section 3.17. Transfer at or Prior to Distribution. The Parties agree
to execute all such documents, and to take all such actions, prior to or at the
Distribution as they may deem to be necessary to achieve or confirm the
respective ownership of rights in the Nielsen Intellectual Property as
contemplated in this Article to be effective upon the Distribution Date.
Section 3.18. Construction. In the event of any inconsistency between
Article III and Article II of this Agreement with respect to the Nielsen
Intellectual Property, then Article III shall prevail.
ARTICLE IV. FURTHER ASSURANCES AND COOPERATION.
Section 4.01. Without limiting the obligations of any party under
Article III of this Agreement, each Party hereto shall execute and deliver, or
cause to be executed and delivered, as and when reasonably requested by any
other Party hereto, all such documents and instruments and shall take, or cause
to be taken, all such further or other actions as such other Party may
reasonably deem necessary or desirable to effect the purposes of this Agreement
and/or to clarify or confirm the respective ownership rights of the Parties as
provided for in this Agreement.
Section 4.02. Without limiting the obligations of any party under
Article III of this Agreement, each Party hereto shall reasonably cooperate with
the other Parties with respect to
12
12
any government filings or any other actions reasonably necessary to maintain and
enforce the rights to the Intellectual Property covered by this Agreement.
Section 4.03. Without limiting the obligations of any Party under
Article III of this Agreement, each Party hereto shall, upon the prior written
request of another Party, arrange for the provision of appropriate copies of
Records in its possession or control (or the originals thereof if the Party
making the request has a reasonable need for such originals) created prior to
the Distribution Date and relating to the Intellectual Property, as soon as
reasonably practicable following the receipt of such request, but only to the
extent such items are not already in the possession or control of the requesting
Party.
ARTICLE V. INDEMNIFICATION.
Section 5.01. Article III of the Distribution Agreement shall govern
the rights of D&B, Cognizant and ACNielsen with respect to indemnification for
any and all Indemnifiable Losses incurred by any Party related to the
Intellectual Property. The term "D&B Liabilities" in that Article shall be read
to include all Liabilities relating to the Intellectual Property to be owned by
D&B pursuant to this Agreement. The term "Cognizant Liabilities" in that Article
shall be read to include all Liabilities relating to the Intellectual Property
to be owned by Cognizant pursuant to this Agreement. The term "ACNielsen
Liabilities" in that Article shall be read to include all Liabilities relating
to the Intellectual Property to be owned by ACNielsen pursuant to this
Agreement. The term "Third Party Claim" in that Article shall be read to include
all claims or demands made by a non-party to this Agreement concerning the
Intellectual Property, including but not limited to claims for Infringement
accruing or arising before the Distribution Date.
ARTICLE VI. DISPUTE RESOLUTION.
Section 6.01. Article VI of the Distribution Agreement shall govern the
rights of D&B, Cognizant and ACNielsen with respect to dispute resolution. The
term "Agreement Dispute" in that Article shall be read to include all
Intellectual Property Disputes.
ARTICLE VII. MISCELLANEOUS.
Section 7.01. Complete Agreement; Construction. This Agreement, the
Schedules thereto, the Distribution Agreement, the LLC Agreement and the Data
Services Agreements shall constitute the entire agreement between the Parties
with respect to the subject matter hereof and shall supersede all previous
13
13
negotiations, commitments and writings with respect to such subject matter. In
the event of any inconsistency between this Agreement and any Schedule thereto,
the Schedule shall prevail. In the event of any inconsistency between this
Agreement and the LLC Agreement, this Agreement shall prevail. Other than
Sections 2.7, 2.14 and 4.5 and Article VI of the Distribution Agreement, which
shall prevail over any inconsistent or conflicting provisions in this Agreement
notwithstanding any other provisions in this Agreement to the contrary, in the
event and to the extent that there shall be an inconsistency between the
provisions of this Agreement and the provisions of the Distribution Agreement,
this Agreement shall prevail.
Section 7.02. Other Agreements. This Agreement is not intended to
address, and should not be interpreted to address, the matters specifically and
expressly covered by the Distribution Agreement and/or other Ancillary
Agreements.
Section 7.03. Counterparts. This Agreement may be executed in one or
more counterparts, all of which shall be considered one and the same agreement,
and shall become effective when one or more such counterparts have been signed
by each of the Parties and delivered to the other Parties.
Section 7.04. Survival of Agreements. Except as otherwise contemplated
by this Agreement, all covenants and agreements of the Parties contained in this
Agreement shall survive the Distribution Date.
Section 7.05. Expenses. Except as otherwise set forth in this
Agreement, the LLC Agreement, the Distribution Agreement or any Ancillary
Agreement, all costs and expenses incurred on or prior to the Distribution Date
(whether or not paid on or prior to the Distribution Date) in connection with
the preparation, execution, delivery and implementation of this Agreement and
the consummation of the transactions contemplated thereby shall be charged to
and paid by D&B. Except as otherwise set forth in this Agreement and the LLC
Agreement, each Party shall bear its own costs and expenses related to the
Intellectual Property, including the performance of any obligation arising under
Articles III and IV of this Agreement.
Section 7.06. Notices. All notices and other communications hereunder
shall be in writing and hand delivered or mailed by registered or certified mail
(return receipt requested) or sent by any means of electronic message
transmission with delivery confirmed (by voice or otherwise) to the Parties at
the following addresses (or at such other
14
14
addresses for a Party as shall be specified by like notice) and will be deemed
given on the date on which such notice is received:
To The Dun & Bradstreet Corporation:
Xxx Xxxxxxx Xxxx Xxxx
Xxxxxx Xxxx, XX 00000
Telecopy: (000) 000-0000
Attn: General Counsel
To Cognizant Corporation:
000 Xxxxx Xxxxx
Xxxxxxxx, Xxxxxxxxxxx 00000
Telecopy: (000) 000-0000
Attn: General Counsel
To ACNielsen Corporation:
000 Xxxxx Xxxxxx
Xxxxxxxx, Xxxxxxxxxxx 00000
Telecopy: (000) 000-0000
Attn: General Counsel
Section 7.07. Waivers. The failure of any Party to require strict
performance by any other Party of any provision in this Agreement will not waive
or diminish that Party's right to demand strict performance thereafter of that
or any other provision hereof.
Section 7.08. Amendments. Subject to the terms of Section 7.11 hereof,
this Agreement may not be modified or amended except by an agreement in writing
signed by each of the Parties hereto.
Section 7.09. Assignment. This Agreement shall not be assignable, in
whole or in part, directly or indirectly, by any Party hereto without the prior
written consent of the other Parties hereto, and any attempt to assign any
rights or obligations arising under this Agreement (except as set forth in
Section 3.14) without such consent shall be void.
Section 7.10. Successors and Assigns. The provisions to this Agreement
shall be binding upon, inure to the benefit of and be enforceable by the Parties
and their respective successors and permitted assigns.
15
15
Section 7.11. Termination. This Agreement may be terminated and may be
amended, modified or abandoned at any time prior to the Distribution by and in
the sole discretion of D&B without the approval of Cognizant or ACNielsen or the
shareholders of D&B. In the event of such termination, no Party shall have any
liability of any kind to any other Party or any other person. After the
Distribution, this Agreement may not be terminated except by an agreement in
writing signed by the Parties.
Section 7.12. Subsidiaries. Each of the Parties hereto shall cause to
be performed, and hereby guarantees the performance of, all actions, agreements
and obligations set forth herein to be performed by any Subsidiary of such Party
or by any entity that is contemplated to be a Subsidiary of such Party on and
after the Distribution Date.
Section 7.13. Third Party Beneficiaries. This Agreement is solely for
the benefit of the Parties hereto and their respective Subsidiaries and
Affiliates and should not be deemed to confer upon third Parties any remedy,
claim, liability, reimbursement, claim of action or other right in excess of
those existing without reference to this Agreement.
Section 7.14. Title and Headings. Titles and headings to sections
herein are inserted for the convenience of reference only and are not intended
to be a part of or to affect the meaning or interpretation of this Agreement.
Section 7.15. GOVERNING LAW. THIS AGREEMENT SHALL BE GOVERNED BY AND
CONSTRUED IN ACCORDANCE WITH THE LAWS OF THE STATE OF NEW YORK.
Section 7.16. Consent to Jurisdiction. Without limiting the provisions
of Article VI hereof, each of the Parties irrevocably submits to the exclusive
jurisdiction of (a) the Supreme Court of the State of New York, New York County,
and (b) the United States District Court for the Southern District of New York,
for the purposes of any suit, action or other proceeding arising out of this
Agreement or any transaction contemplated hereby. Each of the Parties agrees to
commence any action, suit or proceeding relating hereto either in the United
States District Court for the Southern District of New York or if such suit,
action or other proceeding may not be brought in such court for jurisdictional
reasons, in the Supreme Court of the State of New York, New York County. Each of
the Parties further agrees that service of any process, summons, notice or
document by U.S. registered mail to such Party's respective address set forth
above shall be effective service of process for any action, suit or proceeding
in New York with respect to any matters to which it has submitted to
jurisdiction in this Section 7.16. Each of the Parties irrevocably and
unconditionally waives any objection to the laying of venue of any action, suit
or proceeding arising out of this Agreement or the transactions contemplated
hereby in
16
16
(i) the Supreme Court of the State of New York, New York County, or (ii) the
United States District Court for the Southern District of New York, and hereby
further irrevocably and unconditionally waives and agrees not to plead or claim
in any such court that any such action, suit or proceeding brought in any such
court has been brought in an inconvenient forum.
Section 7.17. Severability. In the event any one or more of the
provisions contained in this Agreement should be held invalid, illegal or
unenforceable in any respect, the validity, legality and enforceability of the
remaining provisions contained herein and therein shall not in any way be
affected or impaired thereby. The Parties shall endeavor in good-faith
negotiations to replace the invalid, illegal or unenforceable provisions with
valid provisions, the economic effect of which comes as close as possible to
that of the invalid, illegal or unenforceable provisions.
17
17
IN WITNESS WHEREOF, the Parties have caused this Agreement to be duly
executed as of the day and year first above written.
THE DUN & BRADSTREET CORPORATION
By: _____________________________
Name:
Title:
COGNIZANT CORPORATION
By:_____________________________
Name:
Title:
ACNIELSEN CORPORATION
By:______________________________
Name:
Title:
