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EXHIBIT 10.4
INTELLECTUAL PROPERTY LICENSE AGREEMENT
BY AND BETWEEN
XXXXXX CORPORATION
AND
XXXXXX WORLDWIDE, INC.
DATED AS OF NOVEMBER 5, 1999
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INTELLECTUAL PROPERTY LICENSE AGREEMENT
THIS INTELLECTUAL PROPERTY LICENSE AGREEMENT (this "Agreement") is
entered into as of November 5, 1999 (the "Effective Date") by and between
Xxxxxx Corporation, a corporation organized under the laws of the State of
Delaware ("Xxxxxx"), and Xxxxxx Worldwide, Inc., a corporation organized under
the laws of the State of Delaware ("Xxxxxx").
WHEREAS, on November 5, 1999 (the "Distribution Date"), Xxxxxx intends to make
a pro rata distribution ("Distribution") to its stockholders of approximately
90% of the shares of common stock, par value $0.01 per share, of Xxxxxx
outstanding as of the Distribution Date; and
WHEREAS, in connection with the Distribution, Xxxxxx and Xxxxxx wish to provide
(a) for the license by Xxxxxx to Xxxxxx of patents and related intellectual
property owned by Xxxxxx on the Distribution Date and (b) for the sublicense by
Xxxxxx to Xxxxxx of patents and related intellectual property which has been
licensed to Xxxxxx on or prior to the Distribution Date, upon the terms and
conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the promises and the mutual covenants
hereinafter, the parties hereto agree as follows:
ARTICLE 1 - DEFINITIONS:
For the purpose of this Agreement:
"Xxxxxx Field of Use" means the scope of Xxxxxx'x business as
described in the Registration Statement on Form 10 filed with the
Securities and Exchange Commission in connection with the
Distribution.
"Xxxxxx Products" means its products, systems, or services that are
designed, made, used, sold, exchanged or otherwise disposed of by or
on behalf of Xxxxxx in the Xxxxxx Field of Use.
"Patents" means the patents and applications for patents owned and
controlled by Xxxxxx anywhere as of the date of this Agreement, or
under which Xxxxxx has the right to grant licenses or sublicenses of
the scope herein granted. Notwithstanding the above, Patents do not
include Patents owned or controlled by any third party under which
Xxxxxx is obligated to pay royalties or other consideration to such
third party, to the extent such payment would be caused or increased
as a result of an extension of license protection to Xxxxxx, or if
such license or sublicense to Xxxxxx is restricted, prohibited or
would result in any other adverse impact upon Xxxxxx.
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ARTICLE 2 - LICENSES GRANTED AND COVENANT
2.1 Subject to the terms and conditions of this Agreement, Xxxxxx hereby
grants to Xxxxxx a NON-EXCLUSIVE, NON-TRANSFERABLE, WORLDWIDE LICENSE,
WITHOUT THE RIGHT TO SUBLICENSE (except as specifically permitted
hereunder), to the Patents and related technology which are owned and
controlled by Xxxxxx to make and Have Made, offer to sell, sell,
distribute and use Xxxxxx Products, including, without limitation,
practicing any method or process involved in the manufacture, testing,
assembly, packaging, shipping, transportation of Xxxxxx Products or
use thereof, under the Patents and related technology for the life of
those Patents, but only in the Xxxxxx Field of Use. Subject to the
terms and conditions of this Agreement, Xxxxxx may sublicense any
rights granted hereunder to any distributor, subcontractor or agent of
Xxxxxx as reasonably necessary for the use or resale by such parties
of Xxxxxx Products.
2.2 Subject to the terms and conditions of this Agreement, Xxxxxx hereby
covenants not to xxx Xxxxxx, its customers, manufacturers,
distributors, subcontractors, end users or agents for infringement of
any of the Patents and related technology based upon the manufacture,
use, sale, offer for sale or distribution of the Xxxxxx Products.
2.3 Subject to the terms and conditions of this Agreement, Xxxxxx hereby
grants to Xxxxxx a NON-EXCLUSIVE, NON-TRANSFERABLE, WORLDWIDE LICENSE,
WITHOUT THE RIGHT TO SUBLICENSE (except as specifically permitted
hereunder), the Patents which have been licensed to Xxxxxx from
third-parties prior to the date hereof to make and Have Made, offer to
sell, sell, distribute and use Xxxxxx Products including, without
limitation, practicing any method or process involved in the
manufacture, testing, assembly, packaging, shipping, transportation of
Xxxxxx Products or use thereof, under such Patents for the life of
those Patents, but only in the Xxxxxx Field of Use.
2.4 No rights or licenses are herein granted to Xxxxxx, expressly or by
implication, to use any Patents or practice under any Patents, other
than in accordance with this Article 2.
2.5 Notwithstanding anything herein to the contrary, no license or
sublicense is granted to Xxxxxx hereunder if any such license or
sublicense would require the consent of a third party or is not
otherwise able to be licensed by Xxxxxx under the terms of any license
agreement or other obligations or instruments binding upon Xxxxxx.
Similarly, no license or sublicense is granted to Xxxxxx hereunder if
any such license or sublicense would require Xxxxxx to pay royalties
or other consideration to a third party or would otherwise adversely
impact Xxxxxx.
2.6 A license to "Have Made" shall mean a license granted to a party to
subcontract only a portion of the manufacture or assembly of a Xxxxxx
Product to a manufacturer, for the sole account of and for use or
resale by Xxxxxx of Xxxxxx
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Products. Notwithstanding the above, the immunity granted herein to
the manufacturer under the "Have Made" license shall not extend to the
sale by such a manufacturer of a product to a third party regardless
of the origin of the product design or manufacture or assembly of a
complete product or a portion thereof.
2.7 The parties acknowledge that Xxxxxx is a beneficiary under that
certain Photocopy License ("License") between Xxxxxx and the Copyright
Clearance Center pursuant to which Xxxxxx is permitted to reproduce
and distribute certain copyrighted works. Xxxxxx agrees to use
commercially reasonable efforts to amend the Photocopy License to
permit Xxxxxx to continue to exercise the rights granted to Lanier
under the Photocopy License. If Xxxxxx fails to obtain such amendment,
Xxxxxx shall refund to Xxxxxx the unamortized portion of any license
fees prepaid by Xxxxxx under the Photocopy License as of the
Distribution Date.
ARTICLE 3 - PROPRIETARY INFORMATION
3.1 The Patents and related technology are owned by Xxxxxx. It is
recognized by the parties that such technology is, and shall remain,
the sole property of Xxxxxx, and that such represent property of
Xxxxxx developed at considerable time, effort, and expense. The
Patents and related technology owned or controlled by third-parties
and sublicenses hereunder are owned by Xxxxxx and other parties.
Xxxxxx shall not have any ownership rights in any such patents or
related technology.
ARTICLE 4 - DURATION AND TERMINATION
4.1 This Agreement shall come into effect upon the Effective Date and
shall continue until the sooner to occur of (a) the breach by Xxxxxx
of the provisions of this Agreement and failure to cure such breach
within 30 days following written notice of such breach by Xxxxxx, or
(b) the expiration of the last of the Patents to expire.
4.2 Upon any termination or expiration of this Agreement, Xxxxxx shall
cease using the Patents and shall promptly return all such documents
and all copies of the same to Xxxxxx.
ARTICLE 5 - PATENT AND INTELLECTUAL PROPERTY LIABILITY
The Patents and related technology are licensed or sublicensed to Xxxxxx "AS
IS" without representation or warranty, express or implied, including without
limitation any representation or warranty that practicing the Patents does not
result in the infringement of intellectual property rights of any third party.
Xxxxxx shall be solely responsible and liable for any claim, damage, cost,
expense or liability it incurs arising out of threatened or claimed
infringements of Patents or other rights resulting from its use of the Patents,
or its activity in the manufacture, assembly, use sale, testing, maintenance or
repair, or other disposition of products. XXXXXX ACKNOWLEDGES AND AGREES THAT
IT MAY
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NOT BRING ANY CLAIMS OR OTHERWISE RECOVER ANY AMOUNT FROM XXXXXX BY VIRTUE OF
EXERCISE OF THE RIGHTS GRANTED HEREUNDER.
Xxxxxx agrees and acknowledges that Xxxxxx shall not be liable directly or
indirectly or as an indemnitor of Xxxxxx (or Xxxxxx'x vendors) as a consequence
of any licenses or sublicenses granted hereunder.
ARTICLE 6 - GOVERNING LAW
This Agreement will be governed by and interpreted and construed in accordance
with the laws of New York.
ARTICLE 7 - ARBITRATION
Any dispute, disagreement, or question arising out of or relating to or
consequence of this Agreement, or to its construction or performance thereof,
shall be resolved in accordance with Article V of the Agreement and Plan of
Distribution, entered into by and between Xxxxxx and Xxxxxx.
ARTICLE 8 - MISCELLANEOUS
8.1 Xxxxxx shall not have the right to assign this Agreement to any third
party, by agreement, operation of law, or otherwise, without the prior
written consent of Xxxxxx, which may be unreasonably withheld by
Xxxxxx in its sole discretion.
8.2 This Agreement may be assigned by a party to any company or concern
acquiring substantially the entire business of such party relating to
Patents licensed hereunder, provided such assignee first agrees in
writing to be bound by all terms and conditions of this Agreement
including the obligations of such party hereunder.
8.3 Xxxxxx shall defend, indemnify and hold Xxxxxx and its customers
harmless from and against all claims, causes of action, lawsuits,
loss, expenses, obligations, damages, and liability, including costs
of defense and reasonable attorneys fees, whether in contract or tort
(including negligence and strict liability), as a result of property
damage, personal injuries or death of any persons arising out of, or
proximately caused by, in whole or in part, any action or inaction by
Xxxxxx or any defect (including any design defect) attributable to or
involving the manufacture, use, lease or sale of the Xxxxxx Products.
8.4 This Agreement does not constitute a party as an agent, legal
representative, partner or affiliate of the other for any purpose
whatsoever, and it is understood that neither party is in any way
authorized to make any contract, agreement, warranty, or
representation on behalf of the other, or create any obligation,
express or implied, on behalf of the other.
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8.5 This Agreement contains the entire agreement between the parties
hereto respecting the subject matter hereof and there are no
representations, understandings, or agreements, oral or written, which
are not expressly included herein.
8.6 In the event that any one or more provisions of this Agreement shall
be declared to be illegal or unenforceable under any law, rule, or
regulations of any government having jurisdiction over the parties
hereto, such illegibility or unenforceability shall not affect the
validity and enforceability of the other provisions hereof, and the
parties hereto shall agree upon a modification to this Agreement with
respect to such illegal or unenforceable provisions to eliminate such
invalidity or unenforceability.
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IN WITNESS WHEREOF, XXXXXX and XXXXXX have caused this Agreement to be
executed, in duplicate, by their respective duly authorized officers on the
dates first above written.
XXXXXX WORLDWIDE, INC.
By: /s/ Xxxxx X. XxxXxxxxx
Name: Xxxxx X. XxxXxxxxx
Title: Executive Vice President and Chief Financial Officer
Date: November 5, 0000
XXXXXX XXXXXXXXXXX
By: /s/ Xxxxx X. Xxxxxxxxx
Name: Xxxxx X. Xxxxxxxxx
Title: Vice President - Treasurer
Date: November 5, 1999
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