EXHIBIT 10.27
INTELLECTUAL PROPERTY AGREEMENT
AMONG
VERIZON INFORMATION SERVICES INC.,
VERIZON COMMUNICATIONS INC.,
AND
TSI TELECOMMUNICATION SERVICES INC.
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INTELLECTUAL PROPERTY AGREEMENT
This INTELLECTUAL PROPERTY AGREEMENT (the "Intellectual Property
Agreement"), effective as of February 14, 2002 (the "Effective Date"), is by and
among VERIZON INFORMATION SERVICES INC., a Delaware corporation ("Seller"),
VERIZON COMMUNICATIONS INC., a Delaware corporation ("Verizon") (Verizon and
Seller being collectively referred to as "Verizon Companies"), AND TSI
TELECOMMUNICATION SERVICES INC., a Delaware corporation ("Company"). Each of the
Verizon Companies and the Company are referred to herein individually as "Party"
and collectively as "Parties."
Whereas, the Company, Seller, TSI MERGER SUB, INC., a Delaware
corporation ("MERGER SUB") and TSI TELECOMMUNICATION HOLDINGS, INC., a Delaware
corporation ("BUYER"), have entered into that certain Amended and Restated
Agreement of Merger dated as of December 7, 2001, as amended and restated as of
January 14, 2002 (as amended through the date hereof, the "MERGER AGREEMENT")
pursuant to which Buyer will acquire the Company through a merger in which
Merger Sub merges with and into the Company, with the Company being the
surviving corporation;
Whereas, each of the Company and the Verizon Companies is the owner of
certain Business Non-Statutory Intellectual Property (as hereinafter defined)
and desires to convey a joint ownership interest in such Business Non-Statutory
Intellectual Property to each other pursuant to this Intellectual Property
Agreement;
Whereas, Company desires to license the Business Statutory Intellectual
Property that it owns to the Verizon Companies and their Affiliates pursuant to
this Intellectual Property Agreement; and
Whereas, Verizon Companies and their Subsidiaries are the owners of or
have the right to license the Licensed Intellectual Property (as hereinafter
defined) and desire to license the Licensed Intellectual Property to Company and
its Affiliates pursuant to this Intellectual Property Agreement.
Now, therefore, in consideration of the mutual covenants and promises
contained herein, and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the Parties agree as follows:
ARTICLE I - DEFINITIONS
1.1 DEFINITIONS.
Terms that use initial capital letters but are not defined herein shall
have the meaning ascribed to them in Section 1.1 of the Merger Agreement.
"AFFILIATE" means, with respect to a specified Person, a Person that
directly, or indirectly through one or more intermediaries, Controls, or is
Controlled by, or is under common Control
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with, the specified Person, and in the instance of Verizon Companies, includes
Telus Corporation and its Subsidiaries. For avoidance of doubt, Cellco
Partnership d/b/a Verizon Wireless shall be deemed to be an Affiliate of a
Verizon Company for purposes of this Intellectual Property Agreement.
"BUSINESS" means the business of the Company and its Affiliates (i) as it
is conducted as of the Closing Date, and/or (ii) as it is anticipated to be
conducted pursuant to the Strategic Plans.
"BUSINESS NON-STATUTORY INTELLECTUAL PROPERTY" means the Non-Statutory
Intellectual Property, excluding Proprietary Business Information, that is used
in or required for use in the Business as of the Closing Date and is: (i) owned
by the Company as of the Closing Date, or (ii) owned by Seller or its Affiliates
(other than the Company) as of the Closing Date.
"BUSINESS SOFTWARE" means that software (including source and object
codes and related documentation) used by the Company or its Affiliates in the
Business as of the Closing Date that is identified in Attachment A to this
Intellectual Property Agreement, which Attachment may be modified by Company at
any time prior to the end of six (6) months after the Closing Date; provided,
however, the foregoing shall not include any such software used in the provision
of WIN4 products and services by Company, Verizon Companies or any Affiliates of
the foregoing.
"BUSINESS STATUTORY INTELLECTUAL PROPERTY" means (i) the Statutory
Intellectual Property that is used in or required for use in the Business as of
the Closing Date and is owned by the Company as of the Closing Date, (ii) the
Jointly-Owned Intellectual Property that is deemed Business Statutory
Intellectual Property pursuant to Section 6.3 of this Intellectual Property
Agreement, and (iii) the Business Software.
"COMPETITIVE BUSINESS" means any and all businesses, including offering
products and services to any Person, of the Company and its Affiliates as they
are conducted as of the Closing Date.
"EXCLUDED MARKS" means all Trademarks and related registrations and
applications for registration owned by Seller or an Affiliate of Seller (other
than the Company), or licensed to Seller or an Affiliate of Seller (other than
the Company) by any Person, and any derivations of the foregoing.
"INTELLECTUAL PROPERTY" means all Statutory Intellectual Property and
Non-Statutory Intellectual Property.
"JOINTLY-OWNED INTELLECTUAL PROPERTY" has the meaning set forth in
Section 2.1(c) of this Intellectual Property Agreement.
"LICENSED INTELLECTUAL PROPERTY" means (i) Statutory Intellectual
Property owned by Seller or its Affiliates (other than the Company) that is used
in or required for use in the Business as it exists as of the Closing Date, and
(ii) Licensed Third Party Intellectual Property, if any, that
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is used in or required for use in the Business as it exists as of the Closing
Date. For the avoidance of doubt, Licensed Intellectual Property shall not
include:
(a) patents or patent applications claiming a filing date on or after
the Closing Date;
(b) copyrights in copyrightable subject matter having a creation date
on or after the Closing Date;
(c) applications for domain name registrations claiming a filing date
on or after the Closing Date;
(d) Excluded Marks;
(e) Intellectual Property developed or acquired by Verizon, Seller or
any of their Affiliates (other than the Company) after the
Closing Date;
(f) any other Intellectual Property owned by, or licensed by a third
Person to, Verizon, Seller or any of their Affiliates (other than
the Company) at any time after the Closing Date;
(g) Non-Statutory Intellectual Property; and
(h) Third Party Intellectual Property (other than that expressly
included in Licensed Third Party Intellectual Property, if any).
"LICENSED THIRD PARTY INTELLECTUAL PROPERTY" means that portion of Third
Party Intellectual Property licensed to Seller or its Affiliates (other than the
Company) with the right of Seller or its Affiliates to grant sublicenses to any
other Person who is not an Affiliate of Seller, including the Company after the
Closing, without the payment of compensation or other consideration to any
Person and that is listed in Attachment B to this Intellectual Property
Agreement.
"NON-STATUTORY INTELLECTUAL PROPERTY" means all unpatented inventions
(whether or not patentable), trade secrets, know-how and proprietary
information, including but not limited to (in whatever form or medium),
discoveries, ideas, compositions, formulas, software (including source and
object codes and related documentation), databases, drawings, designs, plans,
proposals, specifications, photographs, samples, models, processes, procedures,
data, information, manuals, reports, financial, marketing and business data, and
pricing and cost information, correspondence and notes, and any rights or
licenses in the foregoing.
"PORTIONS OF BUSINESS SOFTWARE" means that subset of Business Software
comprising individual or collections of routines or modules of Business Software
that do not fully or substantially comprise any one full item of Business
Software listed on Attachment A hereto and that are used by or in possession of
Verizon Companies or their Affiliates (other than Company) as of the date of the
Merger Agreement, other than Business Software solely used or possessed
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by Verizon Companies or their Affiliates for the purpose of providing services
to the Company (e.g., Verizon Data Services).
"PROPRIETARY BUSINESS INFORMATION" means any and all non-technical,
non-public information included in the Non-Statutory Intellectual Property that
is owned by the Company as of the Closing and is used in or required for use in
the Business as of the Closing Date, including financial, marketing and business
data, information and reports, pricing and cost information, correspondence and
notes.
"STATUTORY INTELLECTUAL PROPERTY" means any and all United States and
foreign patents and patent applications of any kind, United States and foreign
Trademarks, United States and foreign works of authorship, mask works,
copyrights, and copyright and mask work registrations and applications for
registration; provided, however, Statutory Intellectual Property shall not
include software source code, object code, or related documentation.
"STRATEGIC PLANS" means the Company's Long-Term Strategic Analysis
2001-2005.
"SUBSIDIARY" means, with respect to any Person, any Person in which such
Person has a direct or indirect equity or ownership interest in excess of 50%.
"THIRD PARTY INTELLECTUAL PROPERTY" means any and all Intellectual
Property owned by any Person, other than Seller (including Affiliates of Seller)
or the Company, without regard as to whether Seller has any rights therein or
the right to assign such rights to the Company.
"TRADEMARKS" means trademarks, trade names, applications for trademark
registration, service marks, applications for service xxxx registration, domain
names, registrations and applications for registrations pertaining thereto, and
all goodwill associated therewith.
"VERIZON COMPANY" means each or one of the Verizon Companies, as
appropriate.
ARTICLE 2 - GRANTS OF LICENSES AND JOINT OWNERSHIP; ASSIGNMENT
2.1 The Parties hereby grant to each other the following rights and licenses:
(a) LICENSE TO VERIZON COMPANIES. Subject to rights and licenses
previously granted to any Person (those rights and licenses that are
exclusive being listed in Attachment C to this Intellectual Property
Agreement), Company hereby grants to Verizon Companies and their
Affiliates, including their permitted assigns and successors in interest,
a perpetual, royalty-free, fully paid-up, irrevocable, nonexclusive,
nontransferable (except and to the extent expressly set forth herein) and
worldwide license to use and to exercise all rights relating to the
Business Statutory Intellectual Property (excluding Trademarks) in the
provision of goods and services, directly and indirectly, and in the
practice of any methods associated with the provision of such goods and
services, without in any way accounting to Company or Buyer, provided
that the foregoing shall not include a license to use or permit the use
of such Business Statutory
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Intellectual Property (except and to the extent otherwise expressly
provided in this Section 2.1(a)) to offer goods or services that compete
with the Competitive Business to any Person (including to any of the
Verizon Companies or their Affiliates). The foregoing license granted to
Verizon Companies and their Affiliates to Business Statutory Intellectual
Property includes the right to reproduce, copy, modify, improve, enhance
and disclose (subject to the confidentiality requirements of Section 5.1)
such Business Statutory Intellectual Property, but does not include the
right to grant sublicenses to any Person except to Affiliates of Verizon
Companies and their permitted successors and assigns (including
successors of their business or assets). With respect to Portions of
Business Software, the foregoing license granted to Verizon Companies and
their Affiliates includes the right to reproduce, copy, modify, improve,
enhance and disclose (subject to the confidentiality requirements of
Section 5.1) Portions of Business Software, and to grant sublicenses to
any Person, including to Affiliates of Verizon Companies, and their
permitted successors and assigns (including successors of their business
or assets); provided, however, after a period of four (4) years from the
Closing Date, any such sublicense for Portions of Business Software (but
not for any other Business Statutory Intellectual Property) shall
expressly include the right to use such Portions of Business Software
(subject to the restrictions, if any, imposed by the license granted to
other Business Statutory Intellectual Property pursuant to this Section
2.1(a)) to offer goods or services that compete with the Competitive
Business to any Person (including to any of the Verizon Companies or
their Affiliates).
(b) LICENSE TO COMPANY. Subject to rights and licenses previously
granted to any Person (those rights and licenses that are exclusive being
listed in Attachment D to this Intellectual Property Agreement), Verizon
Companies hereby grant to Company and its Affiliates, including its
permitted assigns and successors in interest, a perpetual, royalty-free,
fully paid-up, irrevocable, nonexclusive, nontransferable (except and to
the extent expressly set forth herein) and worldwide license to use the
Licensed Intellectual Property (including Licensed Third Party
Intellectual Property, if any, but excluding all other Third Party
Intellectual Property), in the provision of goods and services, directly
and indirectly, in the conduct of the Business and in the practice of any
methods associated with the conduct of the Business. The foregoing
license granted to Company and its Affiliates includes the right to
reproduce, copy, modify, improve, disclose (subject to the
confidentiality requirements of Section 5.1) and enhance the Licensed
Intellectual Property, but does not include the right to grant
sublicenses to any Person, except to Affiliates of Company and their
permitted successors and assigns (including successors of their business
or assets) The foregoing license to Company under Licensed Intellectual
Property shall not extend to any other Intellectual Property of Verizon
Companies or any of its Affiliates that may be necessitated by any
modifications, improvements, enhancements, additions or derivations of
the Business after the Closing Date and shall not include any Third Party
Intellectual Property other than Licensed Third Party Intellectual
Property, if any (which Licensed Third Party Intellectual Property shall
be subject to such additional restrictions and obligations as imposed by
its owner in the license to the Verizon Companies or its sublicense to
Company).
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(c) GRANT OF JOINT OWNERSHIP. Company hereby grants to Verizon
Companies and their Affiliates an undivided joint ownership interest in
all Business Non-Statutory Intellectual Property owned by Company, and
Verizon Companies hereby grant to Company an undivided joint ownership
interest in all Business Non-Statutory Intellectual Property owned by
Verizon Companies or their Affiliates (other than Company) (collectively,
"Jointly-Owned Intellectual Property"). For the avoidance of doubt,
Jointly-Owned Intellectual Property shall not include Business Software.
The foregoing grants to Jointly-Owned Intellectual Property include, but
are not limited to, the unrestricted rights to use, disclose (in
accordance with the requirements in Section 6.1), reproduce, copy,
modify, improve, create derivative works, enhance, transfer, assign,
otherwise convey and to exercise any and all rights relating to such
Jointly-Owned Intellectual Property without the obligation to account to
the other Party or its respective Affiliates therefor.
(d) ASSIGNMENT AND EXECUTION OF DOCUMENTS. Verizon Companies and
their Affiliates hereby convey and transfer to Company, and shall execute
such documents of assignment as may be required to convey and transfer to
Company, subject to the provisions of Section 2.1(a) hereof, the
ownership of (i) all interest that Verizon Companies and their Affiliates
may have in Proprietary Business Information and Business Software, and
(ii) Statutory Intellectual Property that is owned by Verizon Companies
or their Affiliates (other than Company) and is used exclusively by
Company in the Business as of the Closing Date, the latter being
identified and listed on Attachment E to this Intellectual Property
Agreement, as such Attachment may be modified by Company at any time
prior to the end of six (6) months after the Closing Date. Statutory
Intellectual Property and Business Software assigned under this Section
2.1(d) shall be solely owned by Company, and shall be licensed to the
Verizon Companies and their Affiliates as Business Statutory Intellectual
Property pursuant to Section 2.1(a) of this Intellectual Property
Agreement.
(e) BUSINESS SOFTWARE. Verizon Companies and their Affiliates shall:
(i) secure, or assist Company in securing, United States copyright
registrations in the Business Software in the name of the Company; (ii)
execute such documents of assignment as may be required to convey and
transfer to Company, subject to rights and licenses previously granted to
any Person (those rights and licenses that are exclusive being listed in
Attachment A to this Intellectual Property Agreement), all interest, if
any, subject to the rights and licenses granted pursuant to Section
2.1(a) hereof, that Verizon Companies and their Affiliates may have in
Business Software; and (iii) use commercially reasonable efforts to
locate (including in response to specific requests by the Company) and
return to the Company all copies of Business Software in the possession
of Seller and all of its Affiliates (other than the Company) except for
Portions of Business Software.
(f) PROPERTY OF COMPANY. As between Company and Verizon Companies
(and their Affiliates other than Company), the Company shall own all
Business Statutory Intellectual Property, Business Software and
Proprietary Business Information, and the Verizon Companies and their
Affiliates shall have no right to use the same except for
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such rights and licenses expressly granted pursuant to this Intellectual
Property Agreement.
(g) PROPERTY OF VERIZON COMPANIES. As between Verizon Companies (and
their Affiliates other than Company) and the Company, the Verizon
Companies (and their Affiliates other than Company) shall own all
Licensed Intellectual Property and Excluded Trademarks, and the Company
and its Affiliates shall have no right to use the same except for such
rights and licenses expressly granted pursuant to this Intellectual
Property Agreement.
(h) DELIVERY OF COPIES OF BUSINESS NON-STATUTORY INTELLECTUAL
PROPERTY. Concurrent with the Closing, and for a period of six (6) months
thereafter, after receipt of written request from Company, the Verizon
Companies shall use commercially reasonable efforts to locate and deliver
to Company all copies in their possession of Business Non-Statutory
Intellectual Property, in the form and content it exists within the
Verizon Companies or their Affiliates as of the Closing Date; it being
understood and agreed that there is no obligation to create, correct,
update or modify such Business Non-Statutory Intellectual Property.
ARTICLE 3 - TAXES
3.1 TAXES. Except and to the extent otherwise provided in Section 5.3 of the
Merger Agreement, each Party shall pay any tax (including any related interest
or penalty), however designated, except for any income tax imposed upon the
other Party, by the U.S. or any governmental entity within the U.S. as a result
of the exercise of any rights or licenses granted hereunder.
ARTICLE 4 - DISCLAIMER, LIMITED WARRANTY,
LIMITATION OF LIABILITY AND INDEMNIFICATION
4.1 NEGATION OF OBLIGATIONS AND WARRANTIES. Except and to the extent
otherwise expressly provided in Article 6 with respect to Jointly-Owned
Intellectual Property, nothing contained in this Intellectual Property Agreement
shall be construed as:
(i) requiring the securing or maintaining in force of any
Intellectual Property, including Licensed Intellectual Property or
Business Statutory Intellectual Property;
(ii) a warranty or representation as to the validity or scope of any
Intellectual Property, including Licensed Intellectual Property or
Business Statutory Intellectual Property;
(iii) a warranty or representation that any provisioning of goods and
services by the Company or the use of Licensed Intellectual Property,
Business Statutory Intellectual Property or Business Non-Statutory
Intellectual Property, in whole or in part, will be free
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from infringement of any Intellectual Property, other than the Licensed
Intellectual Property, but only to the extent to which licenses or rights
are granted pursuant to this Intellectual Property Agreement;
(iv) an agreement to bring or prosecute actions or suits against third
parties for infringement of any Intellectual Property, including Licensed
Intellectual Property or Business Statutory Intellectual Property;
(v) conferring any right to use, in advertising, publicity or
otherwise, any Trademarks, including Excluded Marks;
(vi) conferring by implication, estoppel or otherwise any license or
other right upon Buyer under any other Intellectual Property, including
Third Party Intellectual Property; or
(vii) an obligation upon Verizon Companies or their Affiliates to make
any determination as to the applicability of any Licensed Intellectual
Property to any product or service.
4.2 (a) WARRANTY. Verizon Companies warrant that they have ownership of
or the right to grant the licenses to the Licensed Intellectual Property
licensed hereunder by the Verizon Companies. The execution, delivery and
performance of this Intellectual Property Agreement by Company has been
duly and validly authorized by the Board of Directors of Company and
Buyer and by all other necessary corporate action on the part of the
Company and Buyer.
(b) DISCLAIMER. EXCEPT FOR THE EXPRESS WARRANTIES OF SECTION 4.2(a)
OF THIS INTELLECTUAL PROPERTY AGREEMENT AND THE EXPRESS WARRANTIES OF
ARTICLES 2 AND 3 OF THE MERGER AGREEMENT, NO PARTY MAKES ANY OTHER
WARRANTIES, EITHER EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, THE
IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR ANY PARTICULAR
PURPOSE, EVEN IF THE OTHER PARTY HAS BEEN MADE AWARE OF SUCH PURPOSE, AND
THE WARRANTY AGAINST INFRINGEMENT OF INTELLECTUAL PROPERTY.
(c) LIMITATION OF LIABILITY. EXCEPT AND TO THE EXTENT OTHERWISE
EXPRESSLY PROVIDED IN SECTION 4.2 (d) OF THIS INTELLECTUAL PROPERTY
AGREEMENT, THE PROVISIONS OF ARTICLE IX AND SECTION 10.12 OF THE MERGER
AGREEMENT SHALL APPLY TO THIS INTELLECTUAL PROPERTY AGREEMENT.
(d) NEGATION OF LIABILITY FOR USE OF THE OTHER PARTY'S LICENSED
INTELLECTUAL PROPERTY. EACH PARTY AGREES THAT THE LICENSOR PARTY SHALL
NOT BE LIABLE TO THE LICENSEE PARTY OR TO ANY OTHER PERSON FOR ANY AND
ALL DAMAGES ARISING FROM THE USE OF THE LICENSOR'S INTELLECTUAL PROPERTY
LICENSED HEREUNDER.
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THE FOREGOING NOTWITHSTANDING, THE WARRANTIES AND REPRESENTATIONS OF
SECTION 2.7 OF THE MERGER AGREEMENT SHALL CONTINUE IN ACCORDANCE WITH THE
PROVISIONS OF THE MERGER AGREEMENT.
ARTICLE 5 - CONFIDENTIALITY AND PROTECTION OF
INTELLECTUAL PROPERTY LICENSED HEREUNDER
5.1 CONFIDENTIALITY. Each Party agrees that, except as required by applicable
law (provided timely notice thereof has been given to the other Party to prevent
or limit disclosure or to seek appropriate protective orders) or as expressly
set forth herein, Licensed Intellectual Property, Business Statutory
Intellectual Property and Proprietary Business Information of the other Party
shall not be divulged or otherwise made available to any Person, other than to
the recipient Party and its Affiliates and Persons performing services for the
recipient Party or its Affiliates, provided such Persons have agreed in writing
not to further disclose or use such Licensed Intellectual Property, Business
Statutory Intellectual Property and Business Information. The foregoing
obligations shall not apply to that portion of Licensed Intellectual Property,
Business Statutory Intellectual Property and Proprietary Business Information
that (i) becomes generally available and known to the public, without
restriction on use or disclosure, (ii) is rightfully received from a third
Person without restrictions on use or disclosure, (iii) is independently
developed by or for the Party without reference to or use of the other Party's
Licensed Intellectual Property, Business Statutory Intellectual Property or
Proprietary Business Information, or (iv) is the subject of prior written
approval of the other Party.
5.2 NOTICES OF INFRINGEMENT. Each Party shall promptly notify the other Party
in writing if it receives any notice of, or becomes aware of, any actual
infringement, misappropriation or misuse by any Person of the Business Statutory
Intellectual Property (notice only to Company) or Licensed Intellectual Property
(notice only to Verizon Companies).
5.3 ASSISTANCE. At a licensor's request and expense, the licensee(s) shall
take all reasonable steps and shall provide such materials, cooperation and
assistance as may be reasonably required to assist such licensor in maintaining
and enforcing Intellectual Property owned by such licensor and licensed
hereunder.
5.4 LICENSOR'S RIGHT TO ENFORCE. Each licensor shall have the right (but not
the obligation) to take action at its own expense against actual or suspected
infringers of the Intellectual Property it owns in which it has granted rights
to the licensee(s). No licensee shall have the right to, or may take actions to
enforce the Intellectual Property licensed to it hereunder without licensor's
consent.
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ARTICLE 6 -- RIGHTS AND OBLIGATIONS WITH RESPECT TO
JOINTLY-OWNED INTELLECTUAL PROPERTY
6.1 CONFIDENTIALITY. Each Party and its Affiliates shall treat and maintain
the Jointly-Owned Intellectual Property in accordance with the same
confidentiality and non-disclosure policies as it treats the rest of its
Intellectual Property of a similar nature, but in no event will any Party use
less than reasonable care in protecting the confidentiality thereof.
6.2 STATUTORY PROTECTION. Either Party may seek statutory protection for any
of the Jointly-Owned Intellectual Property within a period of six (6) months
after the Closing Date, provided such Party notifies the other Party or Parties,
and Company shall have the first option, at its expense, to assume prosecution
responsibility for obtaining and maintaining statutory protection for such
Jointly-Owned Intellectual Property. If Company elects not to exercise such
option, then it shall notify the Verizon Companies of such election, and the
Verizon Companies may, at their expense, assume such responsibilities. The Party
that assumes such responsibility ("Prosecuting Party") shall keep the other
Parties fully informed concerning prosecution or maintenance of such
Jointly-Owned Intellectual Property by providing copies of all communications
with the appropriate registration authorities and by giving such Parties an
opportunity to comment on such communications. Each Party shall provide
reasonable cooperation to assist the Prosecuting Party's efforts, at the
Prosecuting Party's expense, to obtain and maintain statutory protection for the
Jointly-Owned Intellectual Property, including providing information and causing
the execution of any assignments and other instruments or documents as are
reasonably necessary or appropriate to carry out the intent of this Section.
6.3 OWNERSHIP OF STATUTORY INTELLECTUAL PROPERTY FOR JOINTLY-OWNED
INTELLECTUAL PROPERTY. If any Party seeks statutory protection for Jointly-Owned
Intellectual Property by filing a patent or copyright application within a
period of six (6) months after the Closing Date, then (i) such Jointly-Owned
Intellectual Property shall be deemed Business Statutory Intellectual Property
and shall be subject to all provisions governing Business Statutory Intellectual
Property herein (including sole ownership of such Business Statutory
Intellectual Property by the Company, subject to the license granted by the
Company to the Verizon Companies in Section 2.1(a)), and (ii) Company shall be
listed in all applications or registrations as the sole owner of such Business
Statutory Intellectual Property. Verizon Companies and their Affiliates shall
continue to have an undivided joint ownership interest in the Jointly-Owned
Intellectual Property (as set forth in Section 2.1(c) hereof), provided that the
use of such Jointly-Owned Intellectual Property shall be subject to the
restrictions, if any, imposed by the license for Business Statutory Intellectual
Property granted to Verizon Companies and their Affiliates pursuant to Section
2.1(a) hereof.
ARTICLE 7 - TERMINATION/CANCELLATION
7.1 NO WAIVER. No waiver of any breach of, or default under, this
Intellectual Property Agreement shall constitute a waiver of any other breach
of, or default under, this Intellectual Property Agreement, and no waiver shall
be effective unless made in writing and signed by an authorized representative
of the Party waiving the breach or default.
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7.2 BANKRUPTCY. The Parties agree that the rights and licenses under any
Intellectual Property shall not be deemed to be executory contracts, but shall
be deemed licenses of "intellectual property", for purposes of Section 365(n) of
the Bankruptcy Act and any rights or terms granted under this Intellectual
Property Agreement pursuant thereto shall not be terminable, in whole or in
part, pursuant to this Section 7.2. If any Party voluntarily files for
bankruptcy or makes an assignment for the benefit of its creditors, or an
involuntary assignment or bankruptcy petition is made or filed against such
Party, any other Party may immediately terminate this Intellectual Property
Agreement and the licenses granted herein. In the event of a licensor's
bankruptcy, treatment of the grant of rights and licenses as executory contracts
and a subsequent rejection or disclaimer of this Agreement by a bankruptcy
trustee or by licensor as a debtor-in-possession, whether under the law of the
United States or in the event of a similar action under applicable law, licensee
may elect to retain its license rights, subject to and in accordance with the
provisions of the United States Code, Title 11, Section 365(n) or other
applicable law.
7.3 ACTIONS FOR BREACH. In the event of any breach of this Intellectual
Property Agreement by either Party, the other Party shall have the right to seek
specific performance of the obligations of the breaching Party under this
Agreement. If a licensee commits a material breach of this Intellectual Property
Agreement, the applicable licensor may seek damages if licensee fails to cure
such breach within thirty (30) days after receiving notice of such breach from
such licensor; provided, however, that such licensor shall not, under any
circumstances, terminate this Intellectual Property Agreement or prevent any
licensee from using the Intellectual Property to which it has been granted
rights hereunder.
7.4 EFFECT OF TERMINATION. Any termination pursuant to Section 7.2 by one
Party of this Intellectual Property Agreement or the licenses granted hereunder
shall have no effect on the title, rights and licenses conveyed to the other
Party, and the Parties agree that the title, rights and licenses of the
non-bankrupt Party shall survive and continue after any termination of this
Intellectual Property Agreement.
ARTICLE 8 - GENERAL PROVISIONS
8.1 MERGER AGREEMENT PROVISIONS. Except and to the extent expressly provided
herein, the provisions of Article X (General) of the Merger Agreement shall
apply to this Intellectual Property Agreement and such provisions are expressly
incorporated herein.
8.2 ASSIGNABILITY. No Party shall assign this Agreement or its rights and
obligations hereunder to any Person without the prior written consent of the
other Parties which consent will not be unreasonably withheld, unreasonably
delayed, or unreasonably conditioned; provided, however, that any Party, or any
Affiliate to whom rights have been sublicensed hereunder, may assign, in whole
or in part, its rights and obligations pursuant to this Agreement to (a) one or
more of its Affiliates, or (b) any subsequent purchaser of such Party or such
Affiliate or any material portion of its assets to which the licenses granted
hereunder apply (whether such sale is structured as a sale of stock, a sale of
assets, a merger or otherwise). Company shall have the right to use Business
Statutory Intellectual Property, Jointly-Owned Intellectual Property and
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Licensed Intellectual Property for purposes of creating a security interest in
favor of any of the lenders who are providing financing in connection with
Buyer's acquisition of the Stock pursuant to the Merger Agreement; provided,
however, that such security interest in Business Statutory Intellectual Property
and Jointly-Owned Intellectual Property shall not affect the rights and licenses
granted to Verizon Companies or their Affiliates and that such security interest
in Licensed Intellectual Property shall not expand the rights and licenses
granted pursuant to Section 2.1(b) hereof nor permit the separate sublicense or
other conveyance of such rights and licenses in Licensed Intellectual Property
to anyone other than permitted successors and assigns.
8.3 EXPORT CONTROL COMPLIANCE. From and after the Closing Date, each Party
shall comply with all applicable requirements of the Export Control Act, as it
may be amended from time to time, relating to the Intellectual Property conveyed
or licensed hereunder.
8.4 SURVIVAL. The provisions of Articles 1, 7 and 8 and Sections 2.1(c)-(g),
3.1, 4.1, 4.2, 5.1, 5.3, 6.1, 6.3 and 8.4 shall survive the termination of this
Intellectual Property Agreement.
8.5 SUCCESSORS AND ASSIGNS. This Intellectual Property Agreement shall also
be binding upon and inure to the benefit of each Party's respective heirs,
administrators, executors, successors, legal representatives and permitted
assigns.
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IN WITNESS WHEREOF, each of the parties has caused this Intellectual
Property Agreement to be executed in duplicate originals by its duly authorized
representatives on the respective dates entered below.
VERIZON INFORMATION SERVICES INC.
By Xxxxx Xxxxxxxxxxxx
Title Group Vice President--Finance
Date February 14, 2002
VERIZON COMMUNICATIONS INC.
By /s/ Xxxxx X. Xxxxxx
Title Executive Vice President
Date February 14, 2002
TSI TELECOMMUNICATION SERVICES INC.
By /s/ Xxxxxx X. Xxxxxx, Xx.
Title Associate General Counsel/
Assistant Secretary
Date February 14, 2002
Page 14 of 19
