Exhibit 10.11
LICENSE AGREEMENT
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THIS AGREEMENT is made as of the 14th day of August, 1997 by and
between METROMEDIA COMPANY, a Delaware general partnership (hereinafter
referred to as the "Licensor") and METROMEDIA FIBER NETWORK, INC., a Delaware
corporation (hereinafter referred to as the "Licensee").
W I T N E S E T H:
- - - - - - - - -
WHEREAS, Licensor has extensively used "Metromedia" as its company
and trade name and as its principal trademark and Licensor is the owner of
numerous registrations for such trademark in the United states and in various
countries throughout the world;
WHEREAS, Licensee desires to use the trade name and trademark
"Metromedia" in a manner approved by Licensor during the term hereof in
connection with, among other things, it s telecommuncations business ( the
"Licensed Services");
WHEREAS, Licensor is willing to grant Licensee that right to use the
trade name and trademart "Metromedia" during the Term (as hereinafter
defined) in the United States and also worldwide; and
WHEREAS, Licensor is willing to grant the aforementioned right to
use the trade name and trademark "Metromedia" upon the terms and conditions
hereinafter set forth;
NOW, THEREFORE, for and in consideration of the premises and mutual
convenants of the parties contained herein, and of other good and valuable
consideration, it is agreed as follows:
1. Licensor hereby grants to Licensee, a non-exclusive,
non-transferable, non-assignable right and license, without the right to grant
sublicenses, to use the trade name and trademark and corporate name
"Metromedia" (the "Licensed Name") in the United states and worldwide in respect
of Licensed Services subject to the terms, obligations, conditions and
limitations of this Agreement. It shall be Licensee's obligation to
appropriately carry out fully and and all trade name filings and recordings that
may be required of Licensee anywhere by virtue of this Agreement.
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2. This Agreement and the rights and licenses granted under
Paragraph 1 shall be for a period of ten (10) years from the date of this
Agreement, except as provided below (the "Term").
3. Nothing in this Agreement or in any instructions given by
Licensor to Licensee is intended to authorize or permit use by Licensee of the
Licensed Name in combination with any other name, worked or symbol so as to
constitute a new combination name without Licensor's prior written approval of
any proposed combination name.
4. Licensee agrees that every use of the Licensed Name made by it on
or in connection with offering, sale, furnishing, performing, advertising and/or
promotion of, and/or any other activity relating to, Licensed Services shall
inure to the benefit of Licensor.
5. Licensee agrees that in using the Licensed name it will not
represent in any way that it has any right, title, or interest in or to said
Licensed Name or any registration thereof which may be granted, or in any word
or name similar thereto, whether registered or not, other than the permission
granted to it under this Agreement. Licensee will not register or attempt to
register said Licensed Name either alone or in combination with any other name
in any country in the world or aid or abet anyone else in doing so; and Licensee
agrees that any use, application or registration in breach of this covenant will
inure to the benefit of Licensor, and agrees to assign and does hereby assign
all legal and equitable rights, title and interest in and to any such name
and/or application and/or registrations to Licensor.
6. (a) Licensee shall meet all of the Licensor's standards for the
Licensed Services prescribed by law or prescribed by governmental agencies in
connection with the offering, sale, furnishing, performing, advertising and/or
promotion of, and/or any other activity relating to, such Licensed Services.
(b) In order to assure that Licensee maintains the standards of
quality set forth above, Licensee shall submit written reports, sans financial
data, as to the status of the conduct of Licensee's operations relating to the
provision of Licensed Services under the Licensed Name to Licensor on at least a
semi-annual basis to the extent any previously unreported event referenced in
this clause (b) has occurred during the preceding period. Such status reports
shall contain a listing of all complaints, if any, relating to the quality of
the Licensed Services bearing the Licensed Name received by Licensee during the
period to which each report pertains, and a listing of all interruptions in
service of Licensed Services, if any, that differ from those complaints and
interruptions in service customarily and routinely experienced with respect to
the Licensed Services, as well as contain information explaining Licensee's
handling and resolution of such complaints and of such interruptions in service.
Such reports shall further advise of any instances where the
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total number of complaints experienced or the total number of interruptions in
service, both customary and routine and those not so, exceeds the average
normally anticipated for any of the Licensed Services during the period to which
each report pertains, as well as contain information explaining Licensee's
handling and resolution of such situations.
(c) Licensor, through it representatives, shall also have the
right at reasonable intervals to inspect Licensee's premises or premises under
the Licensee's control or to which the Licensee has access where Licensed
Services in connection with which the Licensed Name is used to originate, or are
furnished, performed, maintained, monitored, administered or controlled, during
reasonable business hours and upon reasonable notice to Licensee.
7. Licensee shall observe Licensor's reasonable standards for the
application, printed, visual or otherwise, of the Licensed Name to or in
connection with Licensed Services, wherever labeling, advertising,
promotional or other materials are involved or whether printed, visual, audio
or other media are concerned. Licensee shall use the registered trademark
symbol "-Registered Trademark-" following the name Metromedia in or on all
printed and visual material relating to Licensed Services bearing the
Licensed Name.
8. (a) Licensee agrees to indemnify and hold harmless Licensor
against and in respect for any and all losses, claims, suits, actions,
proceedings (formal or informal), investigations, judgments, deficiencies,
damages, settlements, liabilities, and reasonable legal and other expenses
related thereto, arising out of the conduct by Licensee of Licensed Services.
(b) Licenser shall give Licensee prompt notice of any claim
asserted or threatened against Licenser on the basis of which Licensor
intends to seek indemnification from Licensee as herein provided (but the
obligations of Licensee under this Paragraph 8 shall not be conditioned upon
receipt of the same except to the extent Licensee is actually prejudiced by
such failure to give notice). Licensee shall promptly assume the defence of
Licensor with counsel reasonable satisfactory to Licensor, and the fees and
expenses of such counsel shall be at the sole cost and expense of Licensee,
all to the extent Liensor is entitled to indemnification hereunder.
Notwithstanding the foregoing, Licensor shall be entitled to employ counsel
separate from counsel for Licensee and from any other party in such action,
proceeding, or investigation, if the interest of Licensor may be prejudiced
without such separate counsel (including without limitation, if one or more
legal defenses may be inconsistent or in conflict with the legal defenses
available to other parties), and Licensee shall entirely and solely bear the
reasonable fees and expenses of such separate counsel (as and when incurred),
all to the extent Licensor is entitled to indemnification hereunder.
Licensor may not agree to a settlement of any such claim without the prior
written approval of Licensee, which approval shall not be
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unreasonably withheld. Licensee may not agree to a settlement of any such claim
without the prior written approval of Licensor, which approval shall not be
unreasonably withheld.
9. Licensor may terminate this Agreement upon one month's prior
written notice to License in the event that, and at any time after, (i)
Licensor or affiliates own less than 20% of the stock of Licensee; or (ii)
upon a Change of control (as hereinafer defined) of Licensee; or (iii) if any
of the stock or all or substantially all of the assets of any of the
subsidiaries of the Licensee are sold or transferred. In the even of (iii)
above, this License Agreement shall terminate with respect to such
subsidiary. A "Change of Control" is defined to include the following
transactions.
(a) A persons or "group" (within the meaning of Section 13(d)(3)
of the Securities and Exchange Act of 1934, as amended) not in existence on the
ate hereof becomes the beneficial owner of stock entitling such person or group
to exercise 50% or more of the combine voting power of all classes of stock of
Licensee.
(b) a change occurs in the composition of Licensee's Board of
Directors such that a majority of the members therefore are not "Continuing
Directors" (defined as Directors serving on the date hereof and any person
who succeeds any such Directors and who is recommended or elected by a
majority of Continuing Directors);
(c) upon the occurrence of a reorganization, merger or
consolidation where, following comsumation thereof, Licensor holds less than
20% stock of the combined voting power of all classes of Licensee's stock;
(d) Upon the occurrence of a sale or other diposition of all or
substantially all of the assets of Licensee;
(e) Upon the occurrence of any transaction the result of which
would be that Licensee's common stock would not be required to be registered
under the Securities Exchange Act of 1934. as amended, and the holders of
Licensee's common stock would not receive common stock of the survivor to the
transaction which is required to be registered under the Exchange Act.
10. This Agreement shall terminate without notice upon the
occurrence of any of the following events:
(a) Licensee or any of its subsidiaries commences use of the
Licensed Name other than in connection with Licensed Services; or
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(b) Insolvency or bankrupty of Licensee or its subsidiaries, or
appointment of a receiver, trustee, liquidator or sequestrator of the Licensee
or its subsidiaries for any reason; or
(c) Licensee or any of its subsidiaries shall fail to comply
with or observe any provision of this Agreement for a period of thirty (30)
days after written notice has been given to Licensee specifying such failure
and requesting that it be remedied, unless (i) Licensor shall agree in
writing to an extention of such time period prior to its expiration, or (ii)
the failure be such that it cannot be corrected within the applicable period
and appropriate action is instituted by Licensee within the applicable period
and is being diligently pursued to prompt correction; or
(d) Except as permitted under this Agreement, any attempt by
Licensee to assign to transfer this Agreement or any of Licensee's rights or
obligations hereunder without Licensor's prior written consent; or
11. Licensor further reserves the right to terminate this Agreement
in its entirety, including all rights and licenses under Paragraph 1,
immediately upon written notice to Licensee if, in Licensor's sole judgment,
Licensee's continued use of "Metromedia" as a trade name would jeopardize or
be detrimental to the valuable good will and reputation which Licensor enjoys
worldwide in its name "Metromedia".
12. In the event of any expiration or termination of xxxxx Agreement,
all rights excecised by licensee by reason therof shall automatically, without
the need for any further act or deed, vest in Licensor. Any expiration or
termination of this Agreement shall not, however, terminate any obligation of
Licensee except as expressly provided herein. Upon any such expiration or
termination, Licensee agrees to discontinue immediately all use of the Licensed
Name, and further agrees that thereafter it will not make any use whatsoever of
the Licensed Name in any manner or of any name or name which in Licensor's sole
judgement, which shall not be unrasonably exercised, is confusingly similar
thereto. Also, during the term of this Agreement, Licensee shall not use any
name or term which in Licensor's sole judgment, which shall not be unreasonably
exercised, is confusingly similar to the License Name.
13. Other than in connection with a claim prusuant to Section 8(a)
above , Licensee agrees not to raise or cause to be raised any questions
concerning or objections to the the validiy of the Licensed Name or to the sole
and exclusive ownership by, and right hereto, of the Licensor, on any grounds
whatsoever.
14. Licensee and Licensor each agree to promptly notify the other of
any adverse uses of which it becomes aware of the Licensed Name or of names,
names or terms identical with or confusingly similar to the Licensed Name.
Licensor may then take such action, in its sole discretion and control, as it
deems fit.
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Licensee, upon the request of Licensor, shall provide Licensor with all
reasonable assistance in connection with such action.
15. Nothing herein contained shall be construed as preventing
Licensor, its subsidiaries, affiliates, licensees and assigns, whether current
or future, from using the Licensed Name in any manner which Licensor desires not
inconsistent with Licensee's rights hereunder.
16. The provisions of this Agreement shall be construed and its
performance governed in accordance with the laws of the State of New York.
17. Any notice, request or other communication to be given under this
Agreement to any party shall be in writing and either delivered to it by hand,
certified mail ( return receipt requested), sent by fascimile (receipt
confirmed), in each case addressed as follows;
if to Licensor:
Metromedia Company
Xxx Xxxxxxxxxxx Xxxxx
Xxxx Xxxxxxxxxx, Xxx Xxxxxx 00000
Attention: General Counsel
Telecopy No.: (000) 000-0000
if to Licensee:
Metromedia Fiber Network, inc.
000 Xxxx 00xx Xxxxxx
Xxxxx 0000
Xxx Xxx XxxXxxx 00000
Attention: Xxxxxxx X. Garrofalo
Telecopy No.: (212)687 -9177
18. This Agreement may be transferred or assigned in whole or in part
by the Licensor without the consent of the Licenseee and will inure to the
benefit of Licensor's successors or assigns.
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IN WITNESS WHEREOF, parties hav executed this Agreement as set forth
below effective as of the date first hereinabove written.
LICENSOR:
Metromedia Company
By: /s/ Xxxxxx X. Xxxxxx
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Name: Xxxxxx X. Xxxxxx
Title: Senior Vice President
LICENSEE
Metromedia Fiber Networks, Inc
By: /s/ Xxxxxx X. Xxxxxxxxxxx
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Name: Xxxxxx X. Xxxxxxxxxxx
Title: President
