Exhibit 10.4
Final
LICENSE AGREEMENT
This License Agreement ("Agreement") is made and entered into
effective as of February 4, 2002 (the "Effective Date") between Broadwing, Inc.,
an Ohio corporation located at 000 X. Xxxxxx Xxxxxx, X.X. Xxx 0000, Xxxxxxxxxx,
XX 00000 ("Licensor"), and CBD Media, Inc. , a Delaware corporation located at
CBD Media LLC, 000 Xxxx Xxxxxx, Xxxxx 000, Xxxxxxxxxx, XX 00000 ("Licensee").
RECITALS
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A. Licensor and Licensee are parties to that certain Asset Purchase
Agreement, dated as of February 4, 2002, between Licensor, Cincinnati Xxxx
Directory Inc., and Licensee ("APA") relating to the purchase and sale of the
Business (as defined in the APA).
B. Cincinnati Xxxx Directory Inc. a wholly owned and controlled
subsidiary of Licensor, is the owner of the trademark and service xxxx
"Cincinnati Xxxx Directory" (the "Exclusive Xxxx"); and Licensor is the owner or
licensee of certain trademarks, trade names and service marks arising from or
relating to the Bell Documents (as defined below) and related transactions
(collectively, the "Non-Exclusive Marks"). The Exclusive Xxxx and the
Non-Exclusive Marks shall be referred to collectively herein as the "Marks".
C. Licensee desires to be granted a license to use the Marks, and
Licensor is willing to grant Licensee a license to use the Marks, on the terms
and conditions of this Agreement.
D. All capitalized terms not defined herein shall have the meaning
ascribed to them in the APA.
NOW, THEREFORE, the parties agree as follows:
1. Grant of License
1.1 Grant of Rights to Exclusive Xxxx. Licensor hereby grants to
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Licensee, during the Term (as defined below), the royalty free, exclusive (even
as to Licensor and its parent, subsidiaries and affiliates) right to use the
Exclusive Xxxx in the Territory (as set forth in Schedule A attached hereto and
incorporated herein) solely in the conduct of the Business and in no other
manner whatsoever. Licensor expressly reserves all rights not granted herein
1.2 Grant of Rights to Non-Exclusive Marks. Licensor hereby grants to
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Licensee, during the Term, the royalty free, non-exclusive right to use the
Non-Exclusive Marks in the Territory solely in the conduct of the Business and
in no other manner whatsoever. Except as set forth herein, Licensee's rights in
and to the Non-Exclusive Marks shall be equivalent to Licensor's rights in and
to the Non-Exclusive Marks under (i) (i) an Agreement Concerning Trademarks,
Trade Names and Service Marks among American Telephone and Telegraph Company and
American Information Technologies Corporation, Xxxx Atlantic Corporation, Xxxx
South Corporation, Cincinnati Xxxx, Inc., NYNEX Corporation, Pacific Telesis
Group, Southern New England Telephone Company, Southwestern Xxxx Corporation and
US West, Inc., effective as of December 31, 1983; as amended by Supplemental
Agreement, dated December 31, 1983 and Amendment No. 1 to Supplemental Agreement
dated January 1, 1986; (ii)Trademark, Trade Name, and Service Xxxx Graphics
Standards Agreement among American Information Technologies Corporation, Xxxx
Atlantic Corporation, Xxxx South Corporation, Cincinnati Xxxx, Inc.,
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NYNEX Corporation, Pacific Telesis Group, Southern New England Telephone
Company, Xxxxxxxxxxxx Xxxx Xxxxxxxxxxx xxx XX Xxxx, Xxx.,xxx Xxxx Communications
Research, Inc., effective as of December 31, 1988 (collectively, the "Bell
Documents").
1.3 Certain License Restrictions. Except as provided in the Bell
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Documents, Licensee has no rights in or to the Non-Exclusive Marks. Further, it
is understood and agreed that Licensee is not being granted any right to use
CINCINNATI XXXX apart from DIRECTORY, except such use as would be allowed absent
the express licenses granted in this Agreement .
1.4 Quality Standards. Licensee shall be bound by all restrictions
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relating to the Marks and contained in the Bell Documents to the same extent as
Licensor, and shall further comply with Licensor's reasonable written guidelines
delivered to Licensee for use of the Exclusive Xxxx and shall maintain the
quality of goods and services in connection with which the Exclusive Xxxx is
used to at least that standard of quality heretofore established by Licensor.
1.5 No Challenges. Neither Licensee nor Licensor, nor any of their
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respective affiliates will do anything or suffer anything to be done which may
adversely affect any rights of the other party in and to the Marks.
2. Certain Obligations of Licensor and Licensee.
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2.1 Each party will aggressively respond to third party infringing
activities regarding the Marks. If requested by Licensee in writing, Licensor
shall promptly take all actions reasonably necessary to enforce the Marks,
including without limitation, the instigation of suit or injunctive proceedings.
2.2 As to the Exclusive Xxxx only, if requested by Licensee, Licensor
shall, at Licensee's expense, file for additional registration categories with
the appropriate governmental entities; provided however, that all such
registrations shall be allowed under the Bell Documents.
2.3 Licensor shall have the sole responsibility and cost to maintain
the Marks during the term hereof, including without limitation, filing and
maintaining applications and registrations with the appropriate governmental
agencies; provided, however, that Licensee shall have used the Marks as
permitted herein and shall have otherwise fully performed its obligations under
this Agreement.
3. Representations and Warranties.
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3.1 Each party hereby represents and warrants to the other party
that:
(a) It is a company, duly organized, validly existing and qualified to
do business in all jurisdictions in which the nature of its business requires
such qualification.
(b) It has full right, power and authority to enter into this
Agreement and to perform its obligations hereunder, and this Agreement
constitutes the valid and binding obligation of such party.
(c) The execution or performance of this Agreement will not conflict
with any provision of any other agreement, understanding, judgment, or order to
which it is a party or by which it or any of its properties may be bound.
(d) Except as specifically set forth herein, neither party has made
and is not making any representation or warranty in this Agreement.
3.2 Licensor further represents and warrants to Licensee that it (or a
wholly owned and controlled subsidiary) is, and shall remain during the term of
this Agreement, the sole owner of the Exclusive
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Xxxx , and that Licensor shall cause its subsidiary to take any actions and
execute any documents necessary to effectuate the terms contained in this
Agreement.
3.3 Licensor further represents and warrants that it has not granted
any license to the Non-Exclusive Marks to any person or entity in the Territory
which competes with the Business.
4. Term; Termination.
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4.1 This Agreement will be effective on the Closing Date (as defined
in the Asset Purchase Agreement) and, unless terminated earlier as provided
herein, will remain in effect for an initial term of ten (10) years. Thereafter,
this Agreement will renew automatically on the same terms and conditions for an
additional ten (10) year term unless Licensee gives written notice of
termination to Licensor at least 60 days prior to end of the initial term. The
initial term and renewal term shall be referred to as the "Term".
4.2 Either party may terminate this Agreement if the other party is in
material breach of this Agreement and such breach remains uncured for 60 days
after written notice of such breach has been given to the breaching party.
4.3 Notwithstanding anything else contained in this Agreement, but
subject to the second sentence of this Section 4.3, the Grant of License set
forth in Section 1 above, shall terminate upon Licensee offering products or
services in the Territory which directly compete with Licensor's business under
the "Cincinnati Xxxx" brand as a local exchange carrier of telecommunications, a
long distance provider, or wireless provider. The parties agree and acknowledge
that the Grant of License set forth in Section 1 above shall not terminate under
this Section 4.3 unless and until Licensor provides Licensee with written notice
of the alleged competitive action, in sufficient detail to allow Licensee to
assess the claim, and an opportunity for a period not less than 60 days to
either (i) terminate the competitive action, (ii) modify the competitive action
so as to make such action not subject to this Section 4.3, or (iii) provide
Licensor with reasonable evidence to dispute Licensor's characterization of such
action as directly competitive with Licensor's business under the "Cincinnati
Xxxx" brand as a local exchange carrier of telecommunications, a long distance
provider, or wireless provider.
4.4 Notwithstanding anything in this Agreement to the contrary, this
Agreement shall automatically terminate, and the obligations of the parties
shall immediately cease, upon the termination of the APA in accordance with
Section 7.01 thereof.
5. Indemnification.
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5.1 Licensor shall defend, indemnify and hold Licensee, its parent,
affiliates, and subsidiaries, and their respective directors, officers,
stockholders, employees and agents, harmless against all claims, suits,
proceedings, costs, damages, losses and expenses (including reasonable
attorneys' fees) and judgments incurred, claimed or sustained by Licensee or
such persons arising out of: (i) any claim by a third partiy that Licensee's use
of the Marks in accordance with this Agreement constitutes trademark, service
xxxx, trade dress, copyright or patent infringement, dilution, unfair
competition, or misappropriation; and/or (ii) any third party claim as to the
lack of validity or enforceability of (A) the registrations of the Marks or (B)
Licensor's ownership or other rights in the Marks.
5.2 Subject to Licensor's indemnification obligation in the previous
sentence, Licensee shall defend, indemnify and hold Licensor, its parent,
affiliates, and subsidiaries, and their respective directors, officers,
stockholders, employees and agents, harmless against all claims, suits,
proceedings, costs, damages, losses and expenses (including reasonable
attorneys' fees) and judgments incurred, claimed or sustained by Licensor or
such persons arising out of any third party claim, whether for personal injury
or otherwise, arising out of Licensee's marketing, sale, or performance of
services under the Marks or any use of the Marks in violation of this Agreement.
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6. Assignment. Licensee shall have the right to assign this Agreement and
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the rights and obligations hereunder to a third party, provided, however, that
such third party assignee: (i) agrees, for a term concurrent with this
Agreement, to engage substantially and actively with Licensor in the conduct of
the Business, as required by the Bell Documents; (ii) agrees to be fully bound
by the terms of this Agreement in the same manner and to the same extent as
Licensee at the time of such assignment, and (iii) does not directly compete
with Licensor's business under the "Cincinnati Xxxx" brand as a local exchange
carrier of telecommunications, a long distance provider, or wireless provider.
7. Notices and Other Communications. All reports, approvals, requests,
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demands, notices and other communications required or permitted by this
Agreement will be in writing and signed by a duly authorized officer of or such
other individual designated in writing by a party. All communications will be
duly given if delivered personally, if mailed (by certified or registered mail,
return receipt requested) or if delivered by nationally-recognized courier or
mail service which requires the addressee to acknowledge, in writing, the
receipt thereof, to the party concerned at its address set forth in this
Agreement (or at any other address as a party may specify by notice in writing
to the other).
8. Miscellaneous
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8.1 Entire Agreement. This Agreement contains the entire
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understanding and agreement between the parties with respect to its subject
matter, supersedes all prior oral or written understandings and agreements
relating thereto and may not be modified, discharged or terminated, nor may any
of the provisions hereof be waived, orally.
8.2 Governing Law. This Agreement will be considered as having been
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entered in the State of Ohio, and will be construed, interpreted and enforced in
accordance with the laws of that state applicable to agreements wholly made and
to be performed there, excluding its conflict of laws principles.
8.3 No Franchise Created. The Licensor and Licensee both acknowledge
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and agree that this Agreement is an intellectual property rights license
agreement and does not constitute, and shall not be construed as, a franchise
agreement. Both parties further acknowledge and agree that state and federal
franchise laws do not and will not apply to this Agreement or to the
relationship between Licensee and Licensor and their respective rights and
obligations hereunder. The parties agree that, due to their respective business
backgrounds and prior licensing experience, they do not need the protection of
state or federal franchise laws.
8.4 Cost of Enforcement. Each party shall be liable to the other for
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all costs and fees (including without limitation, attorneys and accountant fees)
incurred by such party as a result of the other party's breach of any term or
condition contained herein and/or as a result of any dispute relating to or
arising from this Agreement in which such party prevails.
8.5 No Waiver. No waiver by either party, whether express or implied,
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of any provision of this Agreement, or of any breach or default thereof, will
constitute a continuing waiver of that provision or of any other provision.
8.6 Severability. If any provision or any portion of any provision of
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this Agreement is held to be void or unenforceable, the remaining provisions of
this Agreement and the remaining portion of any provision held void or
unenforceable in part will continue in full force and effect.
8.7 No Presumption Against a Party. This Agreement will be construed
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without regard to any presumption or other rule requiring construction against
the party causing this Agreement to be drafted.
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IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement
the day and year first above written.
LICENSOR:
Broadwing, Inc.
By: /s/ Xxxxxxx X. Xxxxxxxxxxx
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Xxxxxxx X. Xxxxxxxxxxx
Title: President and Chief Executive
Officer
LICENSEE:
CBD Media, Inc.
By: /s/ Xxxxx X. Xxxxxxxxx
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Xxxxx X. Xxxxxxxxx
Title: President
As to the statements made in the Recitals:
Cincinnati Xxxx Directory Inc.
By: /s/ Xxxxxxx X. Xxxxx
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Xxxxxxx X. Xxxxx
Title: President
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Schedule A
Territory
The Territory shall consist of :
1. The following counties in Ohio, Kentucky and Indiana:
Butler, Clark, Clermont, Greene, Hamilton, Miami, Xxxxxxxxxx and Warren counties
in the State of Ohio; Boone, Campbell, Grant, Xxxxxxxx, Xxxxxx and Xxxxxxxxx
counties in the Commonwealth of Kentucky; and Dearborn and Ohio counties in the
State of Indiana.
2. All websites or other Internet or wireless dissemination device utilized by
or on behalf of Licensee.
Notwithstanding the foregoing definition of Territory, Licensee shall be
entitled to employ all advertising for the products or services of the Business
using methodologies reasonably calculated to reach users in the Territory
(including without limitation, television, radio, newspapers, magazines, and
third party website linking or advertisement) even if the reach of the
methodology in question exceeds the bounds of the Territory.
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