EXHIBIT 10.11
INTELLECTUAL PROPERTY ASSIGNMENT
THIS INTELLECTUAL PROPERTY ASSIGNMENT (this "Assignment"), effective as of
April 3, 2000 (the "Effective Date"), is entered into by and between AirTouch
Communications, Inc., a Delaware corporation (collectively with its Affiliates,
"Assignor"), and Cellco Partnership, a Delaware general partnership ("Assignee"
and, together with Assignor, the "Parties" and each, individually, a "Party").
W I T N E S S E T H:
WHEREAS, Assignor owns, and has adopted for use in its business, the
service marks, trademarks and trade names set forth on the attached Schedule A,
together with all registrations and applications therefor (collectively, the
"Marks"), the registered and unregistered copyrights relating to or arising out
of materials used exclusively in Assignor's domestic Wireless Business (as
defined in the U.S. Wireless Alliance Agreement by and between Vodafone AirTouch
Plc and Xxxx Atlantic Corporation, dated as of September 21, 1999 (the "Alliance
Agreement"), but excluding any copyrights pertaining to the software assigned to
Assignee under that Software Assignment and License Agreement between the
parties dated as of the date hereof (the "Copyrights"), the domain names set
forth on Schedule B attached hereto, together with all registrations and
registration applications therefor ("Domain Names"), and the U.S. patents and
patent applications identified in Schedule C attached hereto, together with any
continuations, continuations-in-part and divisional applications thereof and all
patents issuing thereon (including reissues, renewals and reexaminations of the
foregoing) under the laws of United States of America ("Patents") (the Marks,
Copyrights, Domain Names and Patents collectively referred to herein as the
"Intellectual Property"); and
WHEREAS, Assignee is desirous of acquiring all worldwide right, title and
interest in, to and under the Intellectual Property, except as set forth herein.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the Parties, intending to be
legally bound hereby, agree as follows:
1. Assignment of Rights. Assignor hereby irrevocably conveys, transfers and
assigns to Assignee all worldwide right, title and interest in and to the
Intellectual Property, together with all rights of action accrued, accruing and
to accrue under and by virtue hereof, including all right to xxx or otherwise
recover for past infringement and to receive all damages, payments, costs and
fees associated therewith. The assignment of the Marks and Domain Names granted
herein includes an assignment of all goodwill associated therewith. The
foregoing notwithstanding, Assignee agrees to grant back to Assignor a royalty
free, perpetual, non-exclusive, worldwide license to the Patents, pursuant to
that Patent License Agreement between Assignor and Assignee dated as of the date
hereof ("Grant-back License").
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2. Further Assurances. Upon the request and at the expense of Assignee,
Assignor shall execute and deliver any and all instruments and documents and
take such other future actions as may be necessary or reasonably requested by
Assignee to document the aforesaid assignment and transfer or to enable Assignee
to secure, register, maintain, enforce and otherwise fully protect its rights in
and to the Intellectual Property.
3. Limitation on Assignee's Rights in Patents. In addition to the Grant-
back License, Assignee agrees that it will not license or otherwise transfer,
directly or indirectly, the Patents, or any rights in the Patents, to Xxxx
Atlantic Corporation or its Affiliates or Subsidiaries that are not also
Subsidiaries of Assignee, without Assignor's prior written permission, and shall
include this limitation in any license or other transfer of the Patents or any
rights in the Patents by Licensee. For purposes of this section "Affiliate"
shall mean a person, association, partnership, corporation or joint-stock
company, trust, or other business entity, however organized of the person or
entity which directly or indirectly, through one or more intermediaries,
controls, is controlled by, or is under common control with, such person. For
purposes of this section "Subsidiary" shall mean a person, association,
partnership, corporation or joint-stock company, trust, or other business
entity, however organized of the person or entity which directly or indirectly,
through one or more intermediaries, is controlled by such person. Control shall
be defined as (i) ownership of 20% or more of the voting power of all classes of
voting stock of an entity; (ii) ownership of 20% or more of the beneficial
interests in income and capital of an entity other than a corporation; or (iii)
management control over an entity.
4. Integration with Alliance Agreement. This Assignment is subject to the
provision of the Alliance Agreement, including, without limitation, Articles IV
and IX thereof. Neither the making nor the acceptance of this Assignment, nor
any provision hereof, shall enlarge, restrict or otherwise modify the provisions
of the Alliance Agreement or the rights and obligations of the parties
thereunder, or constitute a waiver or release by any of the parties to the
Alliance Agreement of any liabilities, duties or obligations imposed upon any
party thereunder, including, without limitation, the representations and
warranties, indemnities and other provisions that, pursuant to the Alliance
Agreement, survive the Closing (as defined therein) thereof.
5. Parties in Interest. This Assignment shall be binding upon and inure
to the benefit of the parties hereto and their respective successors and
assigns.
6. Entire Agreement. This Assignment, together with the Alliance Agreement
and all other agreements entered into by Vodafone AirTouch Plc and Xxxx Atlantic
Corporation in connection therewith, contain the entire agreement of the parties
hereto with respect to the subject matter hereof and thereof and supersede all
prior understandings and agreements of the parties with respect thereto.
7. Amendments. This Assignment may not be amended except by the written
agreement of the parties hereto.
8. Governing Law. Except for trademark, copyright and patent matters
governed by the Federal laws of the United States of America, the laws of the
State of Delaware shall govern
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the validity, interpretation, construction, performance and enforcement of this
Assignment, excluding the choice of laws provisions of the State of Delaware.
9. Notices. All notices and other communications under this Assignment
shall be in writing and shall be deemed to have been duly given when delivered
personally, delivery charges prepaid, or three (3) business days after being
sent by registered or certified mail (return receipt requested), postage
prepaid, or one (1) business day after being sent by a nationally recognized
express courier service, postage or delivery charges prepaid, to the parties at
their respective addresses stated below. Notices may also be given by prepaid
telegram or facsimile and shall be effective on the date transmitted if
confirmed within twenty-four (24) hours thereafter by a signed original sent in
the manner provided in the preceding sentence. Either party may change its
address(es) for notices by giving notice of the new address(es) to the other
party in accordance with the provision of this Section 9, except that any notice
of such change of address shall not be effective unless and until received.
If to Assignor to: AirTouch Communications, Inc.
Legal Department
0 Xxxxxxxxxx Xxxxxx, 00xx Xxxxx
Xxx Xxxxxxxxx, XX 00000
With a copy to: Pillsbury Madison & Sutro LLP
X.X. Xxx 0000
Xxx Xxxxxxxxx, XX 00000-0000
Attention: Xxxxxx X. Tune
If to Assignee to: Cellco Partnership
000 Xxxxxxxxxx Xxxxxx Xxxx
Xxxxxxxxxx, XX 00000
Attention: General Counsel
10. Headings. The headings of the Sections of this Assignment are for
convenience of reference only and are not to be considered in construing the
terms and provisions of this Assignment.
11. Waivers. The failure of any party to seek redress for violation of or
to insist upon the strict performance of any covenant or condition of this
Assignment shall not prevent a subsequent act, that would have originally
constituted a violation, from having the effect of an original violation.
12. Counterparts. This Assignment may be executed in counterparts, each of
which shall be deemed an original, but all of which taken together shall
constitute one and the same instrument. This Assignment shall become effective
when each party to this Assignment shall have received a counterpart hereof
signed by the other party to this Assignment.
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13. Severability; Enforcement. If the application of any one or more of the
provisions of this Assignment shall be unlawful under applicable law and
regulation, then the parties will attempt in good faith to make such alternative
arrangements as may be legally permissible and which carry out as nearly as
practicable the terms of this Assignment. Should any portion of this Assignment
be deemed to be unenforceable by a court of competent jurisdiction, the
remaining portion hereof shall remain unaffected and be interpreted as if such
unenforceable portions were initially deleted.
14. Dispute Resolution. Resolution of any and all disputes arising under or
in connection with this Assignment, whether based on contract, tort, statute or
otherwise, including, but not limited to, disputes over arbitrability and
disputes in connection with claims by third parties, shall be exclusively
governed by and settled in accordance with the provisions of the Alliance
Agreement.
IN WITNESS WHEREOF, the parties hereto have duly executed and delivered
this Agreement as of the Effective Date.
ASSIGNOR:
AirTouch Communications, Inc.
By: /s/ Xxxx Xxxxx
--------------------------------
Name: Xxxx Xxxxx
Title: Chief Executive Officer
ASSIGNEE:
Cellco Partnership
By: NYNEX PCS Inc., its
managing general partner
By: /s/ S. Xxxx Xxxxxx
--------------------------------
Name: S. Xxxx Xxxxxx
Title:
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