EXHIBIT 10.7
INTELLECTUAL PROPERTY LICENSE
AGREEMENT
(Alloy LLC to SBC)
This Intellectual Property License Agreement (the
"Agreement") is made and entered into as of the 2nd day of October, 2000
("Effective Date"), by and between Alloy LLC ("Licensor") and SBC
Communications Inc., on behalf of itself and its Subsidiaries that subsequently
undertake to be bound by the terms and conditions hereof (collectively referred
to herein as the "Licensee").
Recitals
A. Licensor owns or otherwise has marketing rights in
and to technology relating to the business defined below as Licensed Technology
by virtue of a transfer from Licensee or Affiliates of Licensee to Licensor in
accordance with the Amended and Restated Contribution and Formation Agreement
dated as of April 4, 2000 among Licensor, BellSouth Corporation and Licensee
(the "Contribution Agreement").
B. Licensee desires to continue operation of its
business uninterrupted and in substantially the same manner after the Closing
Date as its business is operated prior to the Closing Date.
C. Licensee desires to obtain certain rights to utilize
the Licensed Technology in its business in order to make, have made, import,
use, offer for sale and/or sell the Licensed Products or Licensed Services.
NOW, THEREFORE, in consideration of the foregoing premises
and of the terms and conditions of this Agreement, the parties hereto agree as
follows:
1. Definitions.
As used herein:
1.1 "Affiliates" shall mean, with respect to any Party, any
company or corporation directly or indirectly controlling, controlled by, or
under common control with such Party at any time during the period for which
the determination of affiliation is being made. For purposes of these
definitions, the term "control" (including the correlative meanings of the
terms "controlled by" and "under common control with"), as used with respect to
any Person, shall mean the possession, directly or indirectly, or the power to
direct or cause the direction of management policies of such Person, whether
through the ownership of voting securities, by contract or otherwise.
1.2 "Agreement" means this Agreement including all Exhibits (if
any) attached to this Agreement together with any written amendments of any of
the foregoing.
1.3 "Closing Date" shall mean the date of the Contribution
Closing.
1.4 "Intellectual Property" means ideas, copyrights, trade
secrets, software and technology, but specifically excludes patents, patent
applications, trademarks, service marks, trade names, and brands.
1.5 "Licensed Process" means any process or method which is
covered in whole or in part by an Intellectual Property right contained in the
Licensed Technology.
1.6 "Licensed Product(s)" means any product or part of a product
which:
(a) is covered in whole or in part by rights contained
in the Licensed Technology, or
(b) is manufactured using a Licensed Process.
1.7 "Licensed Services" means services provided by utilizing a
Licensed Process.
1.8 "Licensed Technology" means copyrights, technology and
know-how which ownership is transferred by Licensee or Affiliates of Licensee
in accordance with the Contribution and Formation Agreement.
1.9 "Other Intellectual Property" means Intellectual Property not
licensed pursuant to this Agreement.
1.10 "Party" shall mean Licensor or Licensee.
1.11 "Subsidiary" shall mean any company or corporation directly
or indirectly controlled by a Party.
1.12 "Territory" means the entire world.
2. Grant of Licenses.
2.1 License. In consideration of Licensee's obligations set forth
in this Agreement and other agreements being executed by SBC and BellSouth on
or about the Closing Date, Licensor hereby grants to Licensee a perpetual,
fully paid-up, royalty-free, nonexclusive right and license (with limited
rights to sublicense as specified in Section 2.2) in all fields in the
Territory during the term of this Agreement (1) to use the Licensed Technology,
(2) to make, have made, import, use, lease, offer to sell, and sell Licensed
Products, (3) to practice the Licensed Processes, (4) to sell Licensed Services
and (5) convey to customers of Licensed Products and Licensed Services rights
to use such products and services in the form provided by Licensee to such
customers.
2.2 Sublicenses. Licensee shall have the right to grant
sublicenses within the scope of the licenses granted in Section 2.1 to
Affiliates of Licensee or to any third party without accounting for such
sublicenses to Licensor.
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2.3 No Future Licenses. Nothing herein shall be construed to
require that Licensor license any Other Intellectual Property to Licensee.
2.4 No Implied Licenses. The license and rights granted in this
Agreement to Licensee from Licensor shall not be construed to confer any rights
upon Licensee by implication, estoppel or otherwise as to any technology not
specifically identified in this Agreement as Licensed Technology, nor shall it
be construed to confer any rights outside the Territory.
3. Infringement.
3.1 Enforcement of Rights to Licensed Technology. Licensee shall
promptly advise Licensor, in writing, upon becoming aware of any infringement
or threatened infringement of any of the Licensed Products in the Territory or
any claim that the Licensed Products infringe the Intellectual Property rights
of another party in the Territory. Licensor shall have the initial right to
determine the appropriate action, if any, to be taken with respect to any such
infringement. If Licensor or an Affiliate initiates an enforcement suit or
proceeding or intervenes to defend any claim of infringement of the right of
another, it shall have the right to exclusive control of any such suit or
proceeding (provided, however, that Licensee shall remain a party to such suit
to the extent so required). Licensee shall cooperate with Licensor with respect
to any such proceedings, including, without limitation, joining as a party to
any litigation, if required. If, on request by Licensee, Licensor refuses to
pursue infringers within a reasonable time, Licensee shall be entitled to take
reasonable appropriate actions to challenge such infringement at its own
expense. If Licensee institutes suit pursuant to this Section 3.1, Licensor
shall (i) provide reasonable assistance to Licensee and (ii) have the right to
participate and represent its interests through other counsel of its own
choosing and at its own cost. In addition, in no event shall Licensee have the
right, without the prior consent of Licensor, to acknowledge the validity of a
claim that the Licensed Products infringes the Intellectual Property rights of
another party, to obtain or seek a license from such party or to take any other
action which might impair the ability of Licensor to contest the claim of such
party if Licensor so elects. Licensee agrees at the request of Licensor to make
and have made reasonable modifications requested by Licensor in Licensee's use
of the elements of the Licensed Products in question or so long as such
modifications would not have a material adverse effect on Licensee if Licensor,
in its sole discretion, reasonably exercised, determines that such action is
necessary to resolve or settle the claim or suit or eliminate or reduce the
threat of a claim or suit by such party.
3.2 Cooperation. In any proceedings that Licensor may commence or
defend pursuant to its rights under this Agreement in order to enforce or
defend the validity or enforceability of the rights to Licensed Technology,
Licensee shall, at the request and expense of Licensor, cooperate in all
respects and, to the extent possible, have its employees testify when requested
and make available relevant records, papers, information, samples, specimens
and other information sought in discovery.
4. Confidentiality.
4.1 In the event of the termination of this Agreement, Licensor
and Licensee, each at its own expense, shall promptly deliver (without
retaining any copies thereof) to Licensee or
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Licensor, as the case may be, or confirm to the other in writing that it has
destroyed, all information furnished to it or its representatives by the other
or any of the other's Subsidiaries or any of their respective agents, employees
or representatives as a result hereof or in connection herewith, whether so
obtained before or after the execution hereof, and all analyses, compilations,
forecasts, studies or other documents prepared by it or its representatives
which contain or reflect any such information. Licensor and Licensee shall, and
shall cause their respective employees, officers, directors and Subsidiaries
and the employees, officers and directors of their Subsidiaries to, subject to
any exceptions set forth in the Confidentiality Agreement (as defined below),
cause any information so obtained to be kept confidential and will not use, or
permit the use of, such information in its business or in any other manner or
for any other purpose except as contemplated hereby.
4.2 In addition to the confidentiality arrangements contained
herein, all information provided or obtained in connection with the
transactions contemplated by this Agreement (including pursuant to Section 4.1
above) shall be held in accordance with and subject to the terms of the
Confidentiality Agreement, dated February 18, 2000, between SBC and BellSouth
(the "Confidentiality Agreement"). In the event of a conflict or inconsistency
between the terms of this Agreement and the Confidentiality Agreement, the
terms of this Agreement shall govern.
5. Representations.
5.1 Licensor. Licensor represents and warrants that it is the
owner or licensee of the Licensed Technology and that Licensor has the right to
grant to Licensee the licenses contemplated under this Agreement. Licensor
further represents and warrants that it has the right to enter into this
Agreement, that it has not granted any outstanding conflicting rights, and that
it has not made, nor will it make, any commitment to any third party
inconsistent with or in derogation of the rights granted hereunder.
6. Miscellaneous and General.
6.1 Entire Agreement. This Agreement constitutes the entire
agreement between Licensor and Licensee with respect to the Intellectual
Property licenses which are the subject matter hereof and supersedes all
promises or understandings made prior to or contemporaneously herewith with
respect to such subject matter.
6.2 Headings. The section and paragraph headings are for
convenience only and are not a part of this Agreement.
6.3 Severability. All rights and restrictions contained herein
may be exercised and shall be applicable and binding only to the extent that
they do not violate any applicable laws and are intended to be limited to the
extent necessary so that they will not render this Agreement illegal, invalid
or unenforceable. If any provision or portion of any provision of this
Agreement not essential to the commercial purpose of this Agreement shall be
held to be illegal, invalid or unenforceable by a court of competent
jurisdiction, the remainder of the Agreement shall be interpreted to the extent
possible to effect the overall intention of the parties at the Effective Date
of this Agreement.
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6.4 Modification. This Agreement may not be amended, modified, or
altered in any way, except in an amendment identified as such and signed by
both Licensor and Licensee.
6.5 Non-waiver. The waiver of any breach of any provision of this
Agreement shall not be deemed to be a waiver of any other breach of the same or
any other provision of this Agreement.
6.6 Non-Agency. Nothing contained in this Agreement or the
performance thereof is intended to or shall be construed to create any
relationship of agency, partnership or joint venture between Licensor and
Licensee.
6.7 Assignment.
(a) Sale of Business. This Agreement may be assigned to
an entity that acquires or merges with or acquires all or
substantially all of the assets of the relevant business of
either Licensee or Licensor, provided that the assignee is
obligated to fulfill any and all obligations of its
predecessor in interest hereunder.
(b) Other. Except as provided in Section 6.7(a) above,
this Agreement may not be assigned by either Licensor or
Licensee without the express written consent of the other.
Any purported assignment without such permission(s) shall be
void.
6.8 Term. The term of this Agreement shall commence upon the date
hereof and shall continue in perpetuity.
6.9 Interpretation. Each of the parties acknowledges that it has
been represented by counsel in connection with the negotiation, drafting, and
execution of this Agreement. The language used in this Agreement shall be
deemed to be language chosen by all parties to express their mutual intent and
in any judicial proceeding the terms hereof shall not be more strictly
construed against one Party than the other.
6.10 Governing Law. This Agreement and all amendments,
modifications, alterations, or supplements hereto, and the rights of the
parties hereunder, shall be construed under and governed by the laws of the
State of Delaware and the United States of America.
6.11 Notices. All notices, statements and reports required or
contemplated herein by one Party to the other shall be in writing and shall be
deemed to have been given upon delivery in person or upon the expiration of
five (5) days after deposit in a lawful mail depository in the country of
residence of the Party giving the notice, registered or certified airmail
postage prepaid, and addressed as follows:
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If to Licensor: Alloy LLC
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Attention: Chief Executive Officer
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With a copy to: SBC Communications Inc.
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Attention: Senior Executive Vice
President and General
Counsel
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And BellSouth Corporation
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Attention: General Counsel
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If to Licensee: SBC Communications Inc.
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Attention: Senior Executive Vice
President and General
Counsel
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Either Party hereto may change the address to which notices to such
Party are to be sent by giving notice to the other Party at the address and in
the manner provided above. Any notice herein required or permitted to be given
may be given, in addition to the manner set forth above, by telex, facsimile or
cable, provided that the Party giving such notice obtains acknowledgment by
telex, facsimile or cable that such notice has been received by the Party to be
notified. Notice made in this manner shall be deemed to have been given when
such acknowledgment has been transmitted.
6.12 Ancillary Agreement. This Agreement is one of the Ancillary
Agreements referred to in the Limited Liability Company Agreement.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives as of the day and year first
above written.
Licensor:
ALLOY LLC
By: ALLOY MANAGEMENT CORP., its Manager
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
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Name: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title: Chief Operating Officer
Licensee:
SBC COMMUNICATIONS INC.
By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇
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Name: ▇▇▇▇▇ ▇. ▇▇▇▇▇
Title: Senior Executive Vice President,
Corporate Development
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