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EXHIBIT 10.47
CROSS-LICENSE AGREEMENT
This Cross-License Agreement ("Agreement") is made effective as of the ______
day of ______________, 1999 (the "Effective Date") between XXXXXXXX INFORMATION
SERVICES CORPORATION ("WISC"), THE XXXXXXXX COMPANIES, INC. ("TWC"), XXXXXXXX
COMMUNICATIONS GROUP, INC. ("WCG"), and WCG's affiliates in which it owns at
least a controlling interest ("WCG Affiliates") (as used herein, the term "WCG
Group" refers, according to context, either individually to WCG or collectively
to WCG and the WCG Affiliates). WISC, TWC and the WCG Group are each a "Party"
and together are the "Parties" to this Agreement.
WHEREAS, the WCG Group has developed and owns a body of intellectual property
including, without limitation, trademarks, software and technical writings some
of which may be protected by, or sought to be protected by, copyright, patents,
and trademark registrations (the "WCG IP"); and
WHEREAS, WISC has developed and owns a body of intellectual property including,
without limitation, trademarks, software and technical writings some of which
may be protected by copyright, patents and trademark registrations (the "WISC
IP"); and
WHEREAS, TWC has developed and owns a body of intellectual property including,
without limitation, trademarks, software and technical writings some of which
may be protected by copyright, patents and trademark registrations (the "TWC
IP"); and
WHEREAS, WISC and TWC desire to obtain, and the WCG Group desires to grant to
WISC and TWC, certain rights to the WCG IP; and
WHEREAS, the WCG Group desires to obtain, and WISC and TWC desire to grant to
the WCG Group, certain rights to the WISC IP and the TWC IP;
NOW, THEREFORE, in consideration of the covenants and representations set forth
herein and other good and valuable consideration, the receipt and sufficiency of
which is hereby acknowledged, WISC, TWC and the WCG Group agree to the
following:
ARTICLE 1
DEFINITIONS
1.01 "TWC Affiliates" shall mean all direct and indirect subsidiaries,
divisions, companies, and affiliates in which TWC or one of its direct
or indirect subsidiaries owns at least a controlling interest, but
shall not include WCG or the WCG Group.
1.02 "Internal Use" shall mean internal use by each Party's employees for
the benefit of the Party, its affiliates and other TWC Affiliates,
specifically excluding use for the benefit of or for providing services
to or disclosure thereof to any third parties including without
limitation any customer of the Party, or customer of any other TWC
Affiliate, if such customer is not a TWC Affiliate.
1.03 "Software" shall mean source code, object code, all instructions
relevant to assembling or compiling the source code, and all other
documentation and instructions relevant to the use thereof, developed
by each
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Party as of the Effective Date, plus any enhancements, upgrades,
modifications and new versions of such developed software, including
but not limited to the software listed on the respective Exhibits
attached hereto, as amended from time to time, and any software related
to the Inventions, defined herein, as they exist as of the Effective
Date.
1.04 "Inventions" shall mean each Party's inventions, including but not
limited to the inventions listed on the Exhibits attached hereto, as
amended from time to time, and any inventions or discoveries arising
from or inextricably related to each Party's Software, whether or not
such inventions or discoveries (i) have been disclosed or are otherwise
known to the Party/Licensee, (ii) have been described in patent
applications, (iii) are disclosed in issued patents, or (iv) are
protected by trade secret, and specifically including any inventions or
discoveries disclosed in patents or patent applications assigned to the
Party/Licensee, if any, all of the foregoing as they exist as of the
Effective Date.
1.05 "Marks" shall mean all trademarks, tradenames, logos and/or service
marks, if any, including those trademarks, tradenames, service marks
and logos associated with each Party's Software, Inventions, or with
the subject matter of other licenses granted hereunder.
1.06 "Person" shall mean any natural person, firm, partnership, association,
corporation, company, trust, business trust, Governmental Authority or
other entity.
ARTICLE 2
LICENSE FROM TWC AND WISC TO THE WCG GROUP
2.01 WISC and TWC hereby grant to each member of the WCG Group, and each
member of the WCG Group hereby accepts, a non-exclusive, world-wide,
non-transferable, royalty-free, perpetual license on an "AS IS, WHERE
IS" basis to use (subject to the rights of third parties) the
particular WISC and TWC Software, Marks, and Inventions which exist as
of the Effective Date including without limitation the WISC and TWC
Software, Marks, and Inventions listed on the attached Exhibit I,
solely for the WCG Group's Internal Use.
2.02 Notwithstanding anything to the contrary contained herein, WISC and TWC
do not grant to the WCG Group hereunder, nor shall the WCG Group claim
any right pursuant hereunder, to any intellectual property belonging to
WISC and TWC, other than the WISC and TWC Software, Marks and
Inventions which exist as of the Effective Date of this Agreement.
Further, nothing in this Agreement shall be deemed to transfer title to
any of the Software, Inventions or Marks to any other Party.
ARTICLE 3
LICENSE FROM THE WCG GROUP TO WISC AND TWC
3.01 The WCG Group hereby grants both to WISC and to TWC, and WISC and TWC
each hereby accept, a non-exclusive, world-wide, non-transferable,
royalty-free, perpetual license on an "AS IS, WHERE IS" basis to use
(subject to the rights of third parties) the particular WCG Software,
Marks, and Inventions which exist as of the Effective Date including
without limitation the WCG Software, Marks, and Inventions listed on
the attached Exhibit II, solely for WISC's and TWC's Internal Use.
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3.02 Notwithstanding anything to the contrary contained herein, the WCG
Group does not grant to WISC and TWC hereunder, nor shall WISC and TWC
claim any right pursuant hereunder, to any intellectual property
belonging to the WCG Group, other than the WCG Software, Marks and
Inventions which exist as of the Effective Date of this Agreement.
Further, nothing in this Agreement shall be deemed to transfer title to
any of the Software, Inventions or Marks to any other party.
ARTICLE 4
QUALITY CONTROL REGARDING USE OF MARKS
Each Party shall abide by commercially reasonable guidelines regarding use of
the other Party's Marks, provided, however, that each Party acknowledges and
agrees that the quality standards maintained by the other Party as of the
Effective Date are and will be acceptable. Further, neither Party will take any
action that, it knew or reasonably should be known, would jeopardize the other
Party's rights to its Marks.
ARTICLE 5
CONFIDENTIALITY
Each Party shall maintain all Software and Inventions licensed hereunder (the
"Licensed Subject Matter") in strict confidence by limiting disclosure of the
Licensed Subject Matter to those of its employees, contractors or agents having
a need to access the Licensed Subject Matter for the purpose of exercising
rights granted hereunder. Each Party shall exercise at least the same degree of
care as it utilizes to protect its own proprietary information of a similar
nature to prevent unauthorized disclosures of the Licensed Subject Matter, but
in no event less than a reasonable degree of care.
ARTICLE 6
ASSIGNABILITY
6.01 This Agreement and any of the licenses granted herein to WISC and TWC
hereunder are assignable by WISC and TWC, in whole or in part, to TWC
Affiliates, provided that the assignee agrees in writing to abide by
the relevant terms and conditions of this Agreement. Otherwise no
license granted herein to WISC or TWC is assignable without the prior
written consent of the entity within the WCG Group holding title or
licensing rights or its successors in interest, which consent shall not
be unreasonably withheld; provided, however, that consent shall not be
withheld for any assignment made as the result of (i) a corporate
merger, (ii) a sale of all or substantially all of the corporate assets
of such entity, (iii) a sale of a controlling interest in such
entities' corporate stock, (iv) a corporate restructuring, or (v) as a
result of a corporate name change.
6.02 This Agreement and any of the licenses granted herein to the WCG Group
are fully assignable by the WCG Group, in whole or in part, to TWC
Affiliates, provided that the assignee agrees in writing to abide by
the relevant terms and conditions of this Agreement. Otherwise, no
license granted herein to the WCG Group is assignable without the prior
written consent of WISC or TWC, as applicable, or its successor in
interest, which consent shall not be unreasonably withheld, provided,
however, that consent shall not be withheld for any assignment made as
the result of (i) a corporate merger, (ii) a sale of all or
substantially
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all of the corporate assets of such entity, (iii) a sale of a
controlling interest in such entities' corporate stock, (iv) a
corporate restructuring, or (v) as a result of a corporate name change.
6.03 Any attempt to assign, or purported assignment of, this Agreement or
any of the licenses granted hereunder in violation of the provisions of
this Article 6 shall be null and void and of no effect.
ARTICLE 7
WARRANTIES; DISCLAIMERS
7.01 Each Party represents and warrants that it owns and has the right to
license the software, marks, and inventions licensed under this
Agreement.
7.02 EXCEPT FOR THE WARRANTIES, REPRESENTATIONS, COVENANTS, OBLIGATIONS, AND
AGREEMENTS DESCRIBED IN SECTION 7.01, EACH PARTY DISCLAIMS ANY AND ALL
WARRANTIES, CONDITIONS, OR REPRESENTATIONS (EXPRESS OR IMPLIED, ORAL OR
WRITTEN) WITH RESPECT TO THE SUBJECT MATTER HEREOF, OR ANY PART
THEREOF, INCLUDING ANY AND ALL IMPLIED WARRANTIES OF NON-INFRINGEMENT,
MERCHANTABILITY, OR FITNESS OR SUITABILITY FOR ANY PURPOSE (WHETHER THE
PARTY KNOWS, HAS REASON TO KNOW, HAS BEEN ADVISED, OR IS OTHERWISE IN
FACT AWARE OF ANY SUCH PURPOSE) WHETHER ALLEGED TO ARISE BY LAW, BY
REASON OF CUSTOM OR USAGE IN THE TRADE, OR BY COURSE OF DEALING.
ARTICLE 8
LIMITATIONS OF LIABILITY / ALLOCATION OF RISK
NOTWITHSTANDING ANY OTHER PROVISION OF THIS AGREEMENT, NEITHER PARTY SHALL BE
LIABLE TO THE OTHER PARTY (NOR TO ANY PERSON CLAIMING RIGHTS DERIVED FROM THE
OTHER PARTY'S RIGHTS, INCLUDING ANY SUBLICENSEE) FOR INCIDENTAL, CONSEQUENTIAL,
SPECIAL, PUNITIVE, OR EXEMPLARY DAMAGES OF ANY KIND, INCLUDING, BUT NOT LIMITED
TO, LOSS OF DATA, LOST PROFITS, LOSS OF BUSINESS, OR OTHER ECONOMIC DAMAGE, AND
FURTHER INCLUDING INJURY TO PROPERTY, AS A RESULT OF BREACH OF ANY TERM OF THIS
AGREEMENT, REGARDLESS OF WHETHER THE PARTY LIABLE OR ALLEGEDLY LIABLE WAS
ADVISED, HAD OTHER REASON TO KNOW, OR IN FACT KNEW OF THE POSSIBILITY THEREOF.
ARTICLE 9
BREACH
Breach of any provision hereof shall not automatically terminate any license
granted hereunder nor give the non-breaching Party the right to terminate any
license granted hereunder; however, the non-breaching Party shall be entitled to
seek any remedy available to it under law or equity due to such breach. Further,
the Party in breach shall immediately take actions to remedy the breach. The
Parties hereby agree that damages resulting from breach of any material
provision hereof may be difficult if not impossible to ascertain, and therefore
agree that the non-breaching Party shall be entitled to injunctive relief to
prevent or stop any threatened or actual breach of any material provision
hereof, including without limitation provisions dealing with confidentiality and
license rights.
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ARTICLE 10
GENERAL INDEMNITY
10.01 Each member of the WCG Group shall jointly and severally, and to the
fullest extent permitted by applicable law, defend, indemnify and hold
harmless WISC, TWC, and the TWC Affiliates and their respective
successors and assigns authorized hereunder and any of their respective
officers, directors, employees, agents and representatives
(collectively the "WISC and TWC Indemnitees") from and against any and
all claims, demands, damages, losses, liabilities, costs and expenses
(including but not limited to reasonable attorneys' fees and expenses)
("Costs") incurred or suffered by any WISC and TWC Indemnitees to the
extent that such Costs arise out of claims, actions or proceeding
brought as a result of the negligent or willful misconduct of any
member of the WCG Group regarding this Agreement.
10.02 WISC, TWC and the TWC Affiliates shall jointly and severally, and to
the fullest extent permitted by applicable law, defend, indemnify and
hold harmless any member of the WCG Group and their respective
successors and assigns authorized hereunder and any of their respective
officers, directors, employees, agents and representatives
(collectively the "WCG Group Indemnitees") from and against any and all
claims, demands, damages, losses, liabilities, costs and expenses
(including but not limited to reasonable attorneys' fees and expenses)
("Costs") incurred or suffered by any WCG Group Indemnitee to the
extent that such Costs arise out of claims, actions or proceeding
brought as a result of the negligent or willful misconduct of any
member of WISC, TWC or the TWC Affiliates regarding this Agreement.
ARTICLE 11
DISPUTE RESOLUTION
11.01 Negotiations. Except as otherwise provided herein, WISC, TWC and each
member of the WCG Group shall attempt in good faith to resolve any
dispute arising out of or relating to this Agreement (a "Dispute") by
negotiations between senior executives of the ultimate parent
corporation of such Parties. Such negotiations may be commenced by any
such Party by written notice to the other Party (the "Negotiation
Request"). In the event that such Dispute has not been resolved by such
negotiations within thirty (30) days of the delivery of the Negotiation
Request, and one Party hereto requests non-binding mediation by written
notice to the other Party given prior to the end of such 30-day period,
such member of WISC and/or TWC and such member of the WCG Group shall
attempt in good faith to resolve such Dispute by non-binding mediation
before a mediator mutually agreeable to such member of WISC and/or TWC
and such member of the WCG Group. Neither Party shall be required to
continue with such negotiations or with such non-binding mediation for
more than ninety (90) days after the delivery of the Negotiation
Request. All such negotiations and mediation proceedings shall be
confidential, and shall be treated as compromise and settlement
negotiations for all evidentiary purposes, including but not limited to
for purposes of the Federal Rules of Evidence and any state rules of
evidence.
11.02 Other Remedies. Except as otherwise provided herein, the Parties hereto
shall not initiate litigation with respect to the Dispute unless the
Dispute has not been resolved within ninety (90) days of the delivery
of the Negotiation Request, and shall not initiate litigation with
respect to such Dispute except upon five (5) days' prior written notice
to the other Party; provided that (i) if one such Party has delivered a
Negotiation Request or has so requested non-binding mediation and the
other such Party has not responded to any such request within ten (10)
days of its receipt or is failing to participate in good faith in the
procedures specified In Section 11.01, the requesting Party may
initiate litigation prior to the expiration of such
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ninety-day (90-day) period and without giving the five (5) day notice,
and (ii) either such Party may at any time with or without notice file
a complaint or seek an injunction or provisional judicial relief, if in
such Party's sole judgment such action is necessary to avoid
irreparable damage or to preserve the status quo (including but not
limited to statute of limitations reasons or to preserve any defense
based upon the passage of time). Despite such action, such member of
WISC and/or TWC and such member of the WCG Group will continue to
participate in the procedures specified in this Article 11 for so long
and to the extent so specified.
ARTICLE 12
NOTICES
All notices, consents, requests, demands, and other communications required or
permitted under this Agreement shall be in writing and shall be deemed to have
been duly given (a) on the date received when delivered in person, (b) on the
first day after being sent if sent by a generally recognized overnight delivery
company, or (c) on the third day after being mailed by registered or certified
mail, return receipt requested, with postage prepaid to the addresses set forth
below the signature blocks of this Agreement (or to such additional or other
persons, at such other address or addresses as may be designated by notice of
the appropriate Party).
ARTICLE 13
TERMINATION
13.01 In the event that, at any time, TWC or a TWC Affiliate no longer
controls the WCG Group this Agreement shall terminate 90 days from the
date control was lost. For the purposes of this provision the term
"control" means ownership of 50% or more of the issued and outstanding
shares of the WCG Group stock.
13.02 In the event of termination of this Agreement, for whatever reason,
either Party's right to utilize and/or possess Marks, Software,
Inventions, or any other intellectual property of another Party
licensed under this Agreement shall cease. Within fifteen (15) days
after any termination of this Agreement, each Party shall (i) return to
the appropriate Party or destroy the original and all copies, in any
form, of all Software and Inventions, or parts thereof, for which it
has received a license hereunder; and (ii) provide a certified
affidavit executed by an officer of the Party to the effect that this
has been done.
ARTICLE 14
GENERAL PROVISIONS
14.01 No modification or amendment to this Agreement or any Exhibit to this
Agreement, nor any waiver of any provision contained in this Agreement,
shall be valid or binding unless reduced to writing and executed by an
authorized representative of the Party against whom enforcement of the
same is sought.
14.02 The Article headings used herein are for reference purposes only and
shall not in any way control the meaning or interpretation of this
Agreement.
14.03 This Agreement shall be construed in accordance with the laws of the
State of Oklahoma without giving effect to its internal conflicts of
law principles.
14.04 If any term of this Agreement is determined to be invalid or
unenforceable, such term shall be deemed to
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be deleted from this Agreement and, if reasonable to do so, the Parties
shall negotiate in good faith a replacement therefore, and the
remainder of this Agreement shall remain in full force and effect.
14.05 This Agreement, constitute(s) the entire understanding and agreement
among the Parties hereto regarding the subject matter hereof and
supersedes any prior or contemporaneous agreement or understanding
between the Parties regarding same.
14.06 Each person signing this Agreement on behalf of one of the Parties has
full authority to do so.
14.07 Each Party shall be deemed independent contractors with respect to each
other, and nothing herein shall create any association, partnership,
joint venture or agency relationship between any of them.
14.08 This Agreement may be executed in one or more counterparts, each of
which shall be deemed an original and all of which taken together shall
constitute one and the same instrument.
XXXXXXXX INFORMATION SERVICES CORPORATION
By:
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Name:
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Title:
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Notice Address:
Xxxxxxxx Informational Services Corporation
Xxx Xxxxxxxx Xxxxxx
X.X. Xxx 0000
Xxxxx, Xxxxxxxx 00000
Attn: Senior Vice President
XXXXXXXX COMMUNICATION GROUP, INC.
By:
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Name:
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Title:
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Notice Address:
Vice President, Applications-Network
Xxxxxxxx Communications Group, Inc.
Xxx Xxxxxxxx Xxxxxx
Xxxxx, XX 00000
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THE XXXXXXXX COMPANIES, INC.
By:
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Name:
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Title:
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Notice Address:
