EXHIBIT 10.10
BRAND AND TRADE NAME LICENSE AGREEMENT
AMONG
TIME WARNER INC.
AND
TIME WARNER CABLE INC.
DATED AS OF
MARCH 31, 2003
TABLE OF CONTENTS
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1. DEFINITIONS.............................................................................. 1
2. GRANT OF LICENSE......................................................................... 10
2.1 Multi-Channel Video Services and Interactive Television Services................ 10
2.2 Consumer Platform Services...................................................... 10
2.3 Promotional Products............................................................ 10
2.4 Ancillary Broadband Services.................................................... 10
2.5 Portals......................................................................... 11
2.6 Equipment and Software.......................................................... 11
2.7 Audio/Video Content Services.................................................... 11
2.8 Corporate Name.................................................................. 11
2.9 Non-exclusive License........................................................... 11
2.10 Transferability................................................................. 11
2.11 Request for License............................................................. 12
2.12 Reservation of Rights........................................................... 12
3. RESTRICTIONS ON USE OF LICENSED MARKS.................................................... 12
3.1 Resellers....................................................................... 12
3.2 Use of Licensed Marks with Licensee Marks....................................... 12
3.3 Bundling........................................................................ 13
3.4 Co-Marketing.................................................................... 13
3.5 General Purpose Credit Cards.................................................... 13
3.6 Dealers......................................................................... 13
3.7 Sublicenses..................................................................... 13
4. TERM AND TERMINATION..................................................................... 14
4.1 Term............................................................................ 14
4.2 Termination..................................................................... 14
4.3 Notice of Termination........................................................... 15
4.4 Effect of Termination........................................................... 15
4.5 Other Rights Unaffected......................................................... 15
4.6 Bankruptcy...................................................................... 16
5. QUALITY CONTROL.......................................................................... 16
5.1 General......................................................................... 16
5.2 Quality Standards............................................................... 16
5.3 Quality Service Reviews......................................................... 17
5.4 Authorized Dealers, Resellers, Value Added Resellers and Sublicensees........... 18
6. REMEDIES FOR NON-COMPLIANCE WITH QUALITY STANDARDS....................................... 18
6.1 Non-compliance with Quality Standards and Cure.................................. 18
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6.2 Potential Injury to Persons or Property......................................... 19
6.3 Licensor's Rights to License Others............................................. 19
7. PROTECTION OF LICENSED MARKS............................................................. 20
7.1 Ownership and Rights to the Licensed Marks...................................... 20
7.2 Similar Marks................................................................... 21
7.3 Infringement.................................................................... 21
7.4 Compliance with Legal Requirements.............................................. 22
8. USE OF LICENSED MARKS AND OTHER MARKS.................................................... 22
8.1 Licensee Marks.................................................................. 22
8.2 Modification of Licensed Marks.................................................. 23
8.3 Third Party Marks............................................................... 23
8.4 Internet Domain Names........................................................... 23
9. REPRESENTATIONS; LIABILITY AND INDEMNIFICATION........................................... 24
9.1 Representations and Warranties.................................................. 24
9.2 Indemnification................................................................. 24
9.3 Notification and Defense of Claims.............................................. 25
9.4 Insurance....................................................................... 26
10. AGREEMENT PERSONAL....................................................................... 27
10.1 Personal to Licensee............................................................ 27
10.2 Licensee Acknowledgment......................................................... 27
11. RETENTION OF RIGHTS...................................................................... 27
12. SPONSORSHIP.............................................................................. 28
13. CONSENT OF LICENSOR...................................................................... 28
14. NOTICES.................................................................................. 28
15. GOVERNMENTAL LICENSES, PERMITS AND APPROVALS............................................. 29
16. APPLICABLE LAW........................................................................... 29
17. CONFIDENTIALITY OF INFORMATION AND USE RESTRICTION....................................... 29
18. MISCELLANEOUS............................................................................ 30
18.1 Entire Agreement................................................................ 30
18.2 Relationship of the Parties..................................................... 30
18.3 Amendments, Waivers............................................................. 30
18.4 Assignment...................................................................... 30
18.5 Specific Performance............................................................ 30
18.6 Remedies Cumulative............................................................. 30
18.7 No Waiver....................................................................... 31
18.8 Rules of Construction........................................................... 31
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18.9 No Third Party Beneficiaries.................................................... 31
18.10 Counterparts.................................................................... 31
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BRAND AND TRADE NAME LICENSE AGREEMENT
BRAND AND TRADE NAME LICENSE AGREEMENT (the "Agreement") dated
as of March 31, 2003 and effective as of the Closing, by and among Time Warner
Inc., a Delaware corporation, with offices located at 00 Xxxxxxxxxxx Xxxxx, Xxx
Xxxx, Xxx Xxxx 00000 ("Licensor"), and Time Warner Cable Inc., a Delaware
corporation, with offices located at 000 Xxxxxx Xxxxx, Xxxxxxxx, Xxxxxxxxxxx
00000 ("Licensee"). Certain capitalized terms used herein are defined in Article
1.
WHEREAS, Licensor owns and desires that Licensee have the
right to use the Licensed Marks in connection with the Licensed Services; and
WHEREAS, Licensor previously granted a license to Time Warner
Entertainment Company, L.P., a Delaware limited partnership ("TWE"), for use of
the TIME WARNER ENTERTAINMENT xxxx and related marks in connection with certain
broadband businesses, which agreement is terminated pursuant to the agreement
set forth in Exhibit A hereto.
WHEREAS, Licensee wishes to use the Licensed Marks in a
limited manner in the Licensed Territory in connection with the Licensed
Services; and
WHEREAS, Licensor is willing to license and allow Licensee to
use the Licensed Marks in the Licensed Territory under the terms and conditions
set forth in this Agreement; and
WHEREAS, this Agreement is effective on the Closing.
NOW, THEREFORE, in consideration of the mutual promises and
covenants herein contained and for other good and valuable consideration the
receipt and sufficiency of which are hereby acknowledged, the parties hereby
agree as follows:
1. DEFINITIONS
"AFFILIATE": An Affiliate of a Person means a Person that
controls, is controlled by, or is under common control with such Person.
"ANCILLARY BROADBAND SERVICES": The following products or
services:
(a) The marketing, provision and sale of customer care
services in support of Licensee's provision of Licensed Services;
(b) The marketing, provision and sale of activation and
authorization services (for avoidance of doubt, authorization service is the
provision of a signal to a set top box, which signal authorizes the subscriber
to receive specified services using that box; activation service is the
provision of a signal to a set top box, which signal activates the box to
receive any services) in support of Licensee's provision of Licensed Services to
its customers;
(c) The marketing, provision, sale and distribution of
Point Of Deployment modules (PODS) that are used to identify a Consumer as an
authorized subscriber of Licensee's Cable System entitled to certain
pre-selected proprietary features available on the Cable System;
(d) The offer and sale of advertising inventory to third
parties, which advertising may appear on Cable Systems owned or managed by
Licensee, on Cable Systems owned or managed by other operators, and/or on or in
Licensee's web sites or other promotional or informational vehicles (e.g.,
monthly bills); and
(e) Any other ancillary services provided in connection
with the Licensed Services, including repair, billing and provisioning services.
"APPROVAL": The granting by all appropriate Regulatory
Authorities of all necessary licenses, permits, approvals, authorizations and
clearances for this Agreement and the registration or recording of this
Agreement as required by all Regulatory Authorities.
"AUDIO/VIDEO CONTENT SERVICES": The provision to third parties
of
(a) production, origination, post-production and editing
services;
(b) signal processing, compression, storage and
encryption services; and
(c) satellite reception and transmission services
to customers that: (i) in the case of (b) and (c), are for the
purpose of transmitting and delivering video programming and data to authorized
consumers and licensees of such programming and (ii) in each case, are of
substantially the same character and nature as those offered by the TWE
Broadband Business as of the Closing. For avoidance of doubt, Audio/Video
Content Services do not include the provision of Multi-Channel Video Services or
Interactive Television Services.
"AUTHORIZED DEALERS": Any distributor or other agent of
Licensee authorized by Licensee to market, advertise or otherwise offer, on
behalf of Licensee, any Licensed Services or Promotional Products under the
Licensed Marks in the Licensed Territory.
"BANKRUPTCY": With respect to a Person, means (i) the filing
by such Person of a voluntary petition seeking liquidation, dissolution,
reorganization, rearrangement or readjustment, in any form, of its debts under
Title 11 of the United States Code (or corresponding provisions of future laws)
or any other bankruptcy or insolvency law, or such Person's filing an answer
consenting to, or acquiescing in any such petition; (ii) the making by such
Person of any assignment for the benefit of its creditors, or the admission by
such Person in writing of its inability to pay its debts as they mature; (iii)
the expiration of 60 days after the filing of an involuntary petition under
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Title 11 of the United States Code (or corresponding provisions of future laws),
an application for the appointment of a receiver for the assets of such Person,
or an involuntary petition seeking liquidation, dissolution, reorganization,
rearrangement or readjustment of its debts or similar relief under any
bankruptcy or insolvency law; provided that, the same shall not have been
vacated, set aside or stayed within such 60 day period; or (iv) the entry of an
order for relief against such Person under Title 11 of the United States
Bankruptcy Code.
"CABLE SYSTEM": A communication system that allows for the
provision of Multi-Channel Video Services and Interactive Television Services to
subscribers, which communication system utilizes coaxial cable, fiber optic
cable, hybrid fiber-coaxial cable or other cable later developed for the
transmission link with the subscribers or a microwave distribution system,
multi-channel multi-point distribution system or satellite master antenna
television system. For all purposes other than Section 2.1 (which concerns
Multi-Channel Video Services and Interactive Television Services), a Hybrid
System shall be treated as if it were a "Cable System."
"CALLING CARD": A magnetic or non-magnetic card which bears an
access number and a unique security code to enable access to any use of a Cable
System and which debits the Consumer for the cost of such access and use.
"CALLING CARD SERVICES": The provision of local or long
distance voice telecommunications services to Consumers who use Calling Cards.
"CHANGE OF CONTROL": with respect to Licensee, shall mean the
occurrence of the earlier of the following:
(a) The beneficial owner (for all purposes hereof, within
the meaning of Rule 13d-3 promulgated under the Securities Exchange Act of 1934,
as amended) as of the Closing of a majority of (i) the outstanding shares of
common stock of the Licensee (the "Outstanding Company Common Stock") or (ii)
the combined voting power of the outstanding voting securities of the Licensee
entitled to vote generally in the election of directors of the Licensee (the
"Outstanding Company Voting Securities"), ceases to beneficially own, together
with its Affiliates, at least 40% of the Outstanding Common Stock or the
Outstanding Company Voting Securities; or
(b) A change of Control of Licensee, as determined by
Licensor acting in good faith; provided that, this section (b) shall not apply
until the beneficial owner as of the Closing of a majority of the Outstanding
Company Common Stock or the Outstanding Company Voting Securities ceases to
beneficially own, together with its Affiliates, at least 60% of the Outstanding
Common Stock or the Outstanding Company Voting Securities.
"CLOSING": As defined in the Restructuring Agreement.
"CO-MARKETING": The marketing, promotion, advertising,
offering or sale of one Person's goods or services with another Person's goods
or services.
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"CONSUMER": An end-user of any product or service who uses
that product or service.
"CONSUMER PLATFORM SERVICES": The following services, each
provided over a Cable System, or to the extent applicable, a Hybrid System:
(a) Telephone Services;
(b) High Speed Internet Services;
(c) Prepaid Consumer Calling Card Services;
(d) Calling Card Services;
(e) Home Security Services;
(f) Networking Services; and
(g) Voice-over IP Services.
"CONTROL": The possession, directly or indirectly, of the
power to direct or cause the direction of the management and policies of such
entity, whether through ownership of voting securities or other interests, by
contract or otherwise.
"DEDICATED WIRELESS DEVICES": Bi-directional cellular
telecommunication devices that use Mobile Wireless Services as their sole mode
of communication with other devices (other than a personal computer for purposes
of synchronizing a calendar or address book) and users, but not including a
device (such as the device currently referred to by Licensee as a "Magic Phone")
which in whole or in part relies on Mobile Wireless Services where service for
such device is billed to customers at least in part as traditional Telephone
Services or Voice-Over IP Services.
"DEDICATED WIRELESS PORTALS: Portals that are used solely for,
and accessed solely through, Mobile Wireless Services.
"DMA": Designated marketing area, as determined by Xxxxxxx
Media Research and published in its Xxxxxxx Station Index Directory and Xxxxxxx
Station Index US Television Household Estimates.
"EQUIPMENT AND SOFTWARE": As defined in Section 2.6.
"FCC": The Federal Communications Commission and any successor
governmental authority.
"FIELD OF USE": The provision in the Licensed Territory of
Multi-Channel Video Services, Interactive Television Services, Consumer Platform
Services, Ancillary Broadband Services, Audio/Video Content Services and
Equipment and Software.
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"HIGH SPEED INTERNET SERVICES": The service of providing
subscribers with use of "online services" at a digital signal rate of 128
kilobits per second or above. For purposes of this definition, "online services"
means the services available over the Internet. For avoidance of doubt, the
"online services" themselves are not High Speed Internet Services.
"HOME SECURITY SERVICES": The service of providing residential
subscribers with fire alarm and burglar alarm services.
"HYBRID SYSTEM": A hybrid transmission system that is for the
provision of Multi-Channel Video Services and Interactive Television Services,
or to other Licensed Services, (i) to the extent provided by the TWE Broadband
Business in connection with other Licensed Services as of the Closing or (ii) a
result of Licensee's expenditure of a significant amount of time and resources
prior to Closing and which Licensee plans to introduce within three months after
the Closing, to subscribers, which hybrid transmission system utilizes coaxial
cable, fiber optic cable, hybrid fiber coaxial cable or other cable later
developed for one transmission link (the "Principal Link") with the subscribers
and either:
(a) a satellite link for the other transmission link; or
(b) a return transmission link from a cable set-top box
that utilizes a twisted pair telephone connection, provided, however, that such
return transmission link is only used to communicate ancillary data in order to
support a Licensed Service that is primarily provided utilizing the Principal
Link. For avoidance of doubt, if such return transmission link (i.e., the
twisted pair telephone connection) of a hybrid transmission system is the link
that is primarily used to provide Telephone Services or any Internet related
services, the system is not a Hybrid System.
In each case, a Hybrid System only includes the system that is
either (i) of substantially the same character and nature as that offered by the
TWE Broadband Business as of the Closing; or (ii) a result of Licensee's
expenditure of a significant amount of time and resources and which Licensee
plans to introduce within three months after the Closing.
"INDEMNIFIED PARTY": As defined in Section 9.3 of this
Agreement.
"INDEMNIFYING PARTY": As defined in Section 9.3 of this
Agreement.
"INTERACTIVE TELEVISION SERVICES": The provision of
interactive services in connection with one or more video programming streams
that are for display primarily on a television, which services support either:
(a) subscriber-initiated choices or actions; or
(b) the selective delivery, provisioning, authorization
or enablement of programming, information (including information in HTML
format), products or services
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to a subscriber based upon current or prior subscriber-initiated choices,
actions, preferences or circumstances.
"LICENSED MARKS": shall mean the Licensed Master Marks,
Licensed Ancillary Marks and Licensee Specific Marks as set forth below:
1. Licensed Master Marks:
a. Licensor's representation of an eye and ear design as
shown in Schedule 1 to this Agreement in connection with the use of the TIME
WARNER CABLE Xxxx;
b. TIME WARNER CABLE;
c. TW;
d. TWC;
e. TW CABLE; and
f. Licensor's Trade Dress in connection with
the use of the TIME WARNER CABLE Xxxx.
2. Licensed Ancillary Marks:
The Marks listed in Schedule 2 of this Agreement, as
amended from time to time, and all common law Marks
incorporating the Licensed Master Marks.
3 Licensee Specific Marks:
The Marks listed in Schedule 3 of this Agreement.
"LICENSED SERVICES": The following services:
(a) Multi-Channel Video Services provided over a Cable
System and/or a Hybrid System in the Licensed Territory;
(b) Interactive Television Services provided over a Cable
System and/or a Hybrid System in the Licensed Territory;
(c) Consumer Platform Services provided over a Cable
System, or to the extent applicable, a Hybrid System, in the Licensed Territory;
(d) Ancillary Broadband Services provided in the Licensed
Territory; and
(e) Audio/Video Content Services provided in the Licensed
Territory.
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"LICENSED TERRITORY": The Licensed Territory shall be the
United States and all territories and possessions thereof.
"LICENSEE": As defined in the Preamble to this Agreement.
"LICENSEE MARKS": All Marks which are adopted, used and owned
by Licensee after the Closing in connection with the Licensed Services or
Promotional Products.
"LICENSOR": As defined in the Preamble to this Agreement.
"XXXX": Any name, xxxxx, xxxx, trademark, service xxxx, sound
xxxx, design, logo, trade dress, trade name, business name, slogan, domain name
or other indicia of origin.
"MARKETING MATERIALS": Any and all materials, whether written,
oral, visual or in any other medium, used by Licensee or its Authorized Dealers,
Resellers, Value Added Resellers or Sublicensees to market, advertise or
otherwise offer any Licensed Services under the Licensed Marks, including but
not limited to Promotional Products.
"MOBILE WIRELESS SERVICES": A non-private telecommunications
service that provides wide-area communication of information, including voice,
data, video or combinations thereof, over a bi-directional communication path
that extends through the air from a base-station to a mobile-subscriber
communication device, which base-station transmits and receives
subscriber-addressed communications to and from more than one addressed
subscriber and wherein the communication path is switched from one such
base-station to another such base-station in response to movement of the
addressed subscriber's mobile communication device. Mobile Wireless Services
shall not include a private telecommunications connection within or around a
residence or business that provides local-area communication of information at
or around such residence or business.
"MULTI-CHANNEL VIDEO SERVICES": The provision of multiple
audio or video programming that is selectable by a subscriber, where such
programming is provided by, or generally comparable to programming provided by,
a television broadcast station, cable television network or aggregator of audio
or video content for display or performance primarily on a television.
"NETWORKING SERVICES": The services of (i) providing
subscribers with connectivity between any two or more devices at a single
location capable of storing, receiving, displaying or otherwise utilizing
products or services offered by Licensee and (ii) planning, constructing and/or
maintaining on behalf of third parties local and wide area networks for the
transmission of data, in each case, that is either (x) of substantially the same
character and nature as that offered by the TWE Broadband Business as of the
Closing; or (y) a result of Licensee's expenditure of a significant amount of
time and resources and which Licensee plans to introduce within three months
after the Closing.
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"PERSON": Any individual, corporation, partnership, firm,
joint venture, limited liability company, limited liability partnership,
association, joint-stock company, trust, estate, incorporated or unincorporated
organization, governmental or regulatory body, business unit, or other entity.
"PORTAL": An Internet web site that serves as a gateway to the
Internet and that includes one or more of the following features: a search
engine; electronic mail; instant messaging; chat services; or web hosting.
"PREPAID CONSUMER CALLING CARDS": Calling Cards which bear an
access number and a unique security code to enable access to and use of a Cable
System and which the Consumer purchases in advance a specific amount of calling
time.
"PREPAID CONSUMER CALLING CARD SERVICES": The provision of
local or long distance voice telecommunications services to Consumers with
Prepaid Consumer Calling Cards.
"PROMOTIONAL PRODUCTS": Any goods or services which are used
to advertise or promote any Licensed Services, such as t-shirts, golf balls,
pens and the like, but not any products or services that, in Licensor's opinion
acting in good faith, are not fairly characterized as being used for
advertisement or promotion.
"QUALITY CONTROL REPRESENTATIVES": Representatives of Licensor
appointed in accordance with Article 5.
"QUALITY STANDARDS": As defined in Section 5.2 of this
Agreement.
"REGULATORY AUTHORITY": Any regulatory, administrative or
governmental entity, authority, agency, commission, tribunal or official,
including without limitation, the FCC and the Export Licensing Office of the
U.S. Department of Commerce.
"RESELLER": Any Person other than Licensee that sells,
distributes or leases Licensed Services from Licensee.
"RESTRUCTURING AGREEMENT": The Restructuring Agreement, dated
as of the date hereof, by and among AOL Time Warner Inc., a Delaware
corporation, AT&T Corp., a New York corporation, and the other parties named
therein.
"ROAD RUNNER LICENSEES": As defined in that certain Brand
License Agreement, dated as of the date hereof, by and between Warner Bros.
Entertainment Inc., a Delaware corporation, and Licensee.
"ROAD RUNNER MARKS AND COPYRIGHTS": The Licensed Marks and
Licensed Copyright as such terms are defined in that certain Brand License
Agreement, dated as of the date hereof, by and between Warner Bros.
Entertainment Inc., a Delaware corporation, and Licensee.
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"SERVICE BUNDLES": A single contract offered or supplied to a
Person for multiple services or systems integration contracts. For avoidance of
doubt, neither Licensee's offering of Multi-Channel Video Services, nor
Licensee's offering of any two or more Licensed Services in a package shall
itself constitute a Service Bundle hereunder.
"SIGNIFICANT BREACH BY LICENSEE": As defined in Section 4.2 of
this Agreement.
"STYLE GUIDELINES": The guidelines controlling certain aspects
of the Licensed Marks including, but not limited to, the size, color and
appearance of the Licensed Marks as set forth in the official Style Guide to be
provided to Licensee on the Closing and periodically thereafter.
"SUBLICENSEE": As defined in Section 3.7 of this Agreement.
"SUBMITTED MATERIALS": As defined in Section 5.2 of this
Agreement.
"SUBSIDIARY": With respect to any Person, any entity of which
securities or other ownership interests having ordinary voting power to elect a
majority of the board of directors or other body performing similar functions
are at any time directly or indirectly owned by such Person or, in the case of a
Cable System, the right to direct the management or operation of such Cable
System pursuant to a management agreement with a term of at least three years,
for so long as such management agreement remains in effect; provided that,
Licensee shall notify Licensor in writing immediately when it ceases management
of any such Cable System.
"SUCCESSOR": With respect to any party, any successor,
transferee or assignee, including without limitation, any receiver, debtor in
possession, trustee, conservator or similar Person with respect to such party or
such party's assets.
"TELEPHONE SERVICES": The provision to end users of Telephone
Exchange Service, as that term is defined in the Telecommunications Act of 1934,
as amended. Telephone Services shall include the ability to terminate a
telephone call.
"TRADE DRESS": The general image or appearance of the Licensed
Marks and of the Licensed Services and Marketing Materials or Promotional
Products and any packaging and labeling therefor, including without limitation,
the combination of colors, designs, sizing configurations, publication formats
and the like as set forth in the Style Guidelines and as such trade dress may be
modified or replaced pursuant to Section 8.2 of this Agreement, and such other
trade dress as may be added thereto or substituted therefor in accordance with
Section 8.2.
"TW LICENSEES": Those Persons and business units that are part
of Licensor as of the Closing and any other Persons who are licensed under, or
otherwise permitted to use, the Licensed Marks by Licensor.
"TWE": As defined in the Preamble.
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"TWE BROADBAND BUSINESS" has the meaning assigned to it in the
TWE Distribution Agreement.
"TWE DISTRIBUTION AGREEMENT": The Distribution Agreement,
dated as of the date hereof by and between Time Warner Entertainment Company,
L.P., a Delaware limited partnership, Warner Communications Inc., a Delaware
corporation, and AOL Time Warner Inc., a Delaware corporation.
"VALUE ADDED RESELLER": Any Person that combines Licensed
Services with additional software, services or features and then sells,
distributes or leases such combinations directly to end users.
"VOICE-OVER IP SERVICES": The provision to end users of the
ability to transmit voice communications over a data network using Internet
Protocol technology.
2. GRANT OF LICENSE
Subject to the terms and conditions of this Agreement,
Licensor makes the following royalty-free license grants:
2.1 Multi-Channel Video Services and Interactive Television
Services. Licensor hereby grants to Licensee an exclusive, perpetual right and
license to use the Licensed Marks in accordance with the Quality Standards set
forth in Article 5 to provide Multi-Channel Video Services and Interactive
Television Services over Cable Systems and Hybrid Systems in the Licensed
Territory.
For avoidance of doubt, outside the Licensed Territory,
Licensee has no right or license to use the Licensed Marks in connection with
Multi-Channel Video Services, Interactive Television Services or any other
products or services. Notwithstanding anything to the contrary herein, Licensor
agrees not to use itself, or license to any Person, the Licensed Marks for the
provision of such services using DSL (digital subscriber line) or DBS (direct
broadcast satellite) technology in the Licensed Territory. For the avoidance of
doubt, Licensor shall have the unrestricted right to use the TIME XXXXXX Xxxx
and any other of Licensor's Marks not included within the Licensed Marks in
connection with DSL or DBS technology.
2.2 Consumer Platform Services. Licensor hereby grants to Licensee
an exclusive, perpetual right and license to use the Licensed Marks in
accordance with the Quality Standards as set forth in Article 5 to provide
Consumer Platform Services over Cable Systems in the Licensed Territory.
2.3 Promotional Products. Licensor hereby grants to Licensee an
exclusive, perpetual right and license to use the Licensed Marks in accordance
with the Quality Standards as set forth in Article 5 on Promotional Products in
the Licensed Territory.
2.4 Ancillary Broadband Services. Licensor hereby grants to
Licensee an exclusive, perpetual right and license to use the Licensed Marks in
accordance with the
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Quality Standards as set forth in Article 5 for Ancillary Broadband Services
provided in the Licensed Territory.
2.5 Portals. Licensor hereby grants to Licensee an exclusive,
perpetual right and license to use the Licensed Marks in accordance with the
Quality Standards as set forth in Article 5 on Portals that are used in
connection with High Speed Internet Services provided in the Licensed Territory.
2.6 Equipment and Software. Licensor hereby grants to Licensee an
exclusive, perpetual right and license to use the Licensed Marks in accordance
with the Quality Standards as set forth in Article 5 on equipment and software
used in connection with the provision of Licensed Services in the Licensed
Territory, other than the following:
(a) Email devices;
(b) Telephone answering devices; and
(c) Personal digital assistants,
but including cable set top boxes, cable modems and in-home networking equipment
for connecting set top boxes or cable modems with other devices for service
applications (the "Equipment and Software").
2.7 Audio/Video Content Services. Licensor hereby grants to
Licensee an exclusive, perpetual right and license to use the Licensed Marks in
accordance with the Quality Standards as set forth in Article 5 to provide
Audio/Video Content Services in the Licensed Territory.
2.8 Corporate Name. Licensor hereby grants to Licensee an
exclusive, perpetual right and license to use the Licensed Marks as part of its
corporate name to conduct the Licensed Services in the Licensed Territory in
accordance with the Quality Standards set forth on Article 5 hereof.
2.9 Non-exclusive License. Licensor hereby grants to Licensee a
non-exclusive right and license to use the Xxxx TIME WARNER COMMUNICATIONS in
connection with the Licensed Services, in accordance with the Quality Standards
as set forth in Article 5, only to the extent such Xxxx is used in connection
with the Licensed Services as of the Closing. The license granted in this
Section 2.9 shall terminate on December 31, 2003.
2.10 Transferability. Except as provided in Section 3.1 with
respect to Resellers and Value Added Resellers, in Section 3.6 with respect to
Authorized Dealers and in Section 3.7 with respect to Sublicensees, the licenses
granted herein shall be non-transferable.
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2.11 Request for License. If Licensee wishes to use the Licensed
Marks on any goods or services other than Licensed Services and Promotional
Products or on any goods or services or in any territory not expressly granted
by this Agreement, it may request a grant of such license from Licensor.
2.12 Reservation of Rights. Except as expressly licensed in this
Article 2, Licensee shall have no rights or license to use any of the Licensed
Marks in connection with any products or services. To the extent Licensee has
been granted "exclusive" rights pursuant to the provisions of this Article 2,
such "exclusive" rights solely relate to the use of the Licensed Marks in
connection with the specified provision of the Licensed Services or Promotional
Products in the Licensed Territory. Except to the extent Licensee has been
granted "exclusive" rights pursuant to the provisions of this Article 2,
Licensor retains the sole and exclusive right to use and license others to use
any Marks, including the Licensed Marks, for any purpose whatsoever. Licensee
covenants and agrees that it will not use any of the Licensed Marks in
connection with any products or services or in any territory that are not
expressly licensed pursuant to the provisions of this Article 2 and any such
unlicensed use by Licensee of the Licensed Marks shall be deemed a "Significant
Breach by Licensee" under Section 4.2 of this Agreement unless cured pursuant to
Section 4.2(a) of this Agreement.
Without in any way limiting the foregoing, Licensee shall not
use the Licensed Marks in connection with Dedicated Wireless Devices or
Dedicated Wireless Portals, except to the extent use of such equipment is billed
to customers at least in part as traditional Telephone Services or Voice-Over IP
Services (e.g., as is contemplated by Licensee's proposed "Magic Phone"
offering).
3. RESTRICTIONS ON USE OF LICENSED MARKS
3.1 Resellers. Licensee may permit Resellers and Value Added
Resellers to use the Licensed Marks on a non-exclusive basis and solely in
connection with Licensed Services obtained from Licensee; provided, however,
that any such use shall be in accordance with the terms of this Agreement,
including the Quality Standards set forth in Article 5, and such use shall only
be in the same Field of Use as Licensee. For avoidance of doubt, no Reseller or
Value Added Reseller may use any Licensed Marks in any manner that would violate
this Agreement if performed by Licensee and any use of Licensed Marks by a
Reseller or Value Added Reseller in such manner shall be deemed use by Licensee
in violation of the relevant provision(s) of this Agreement.
3.2 Use of Licensed Marks with Licensee Marks. Any use by Licensee
of Licensee Marks in conjunction with Licensed Marks must comply with all other
terms of this Agreement, including without limitation, the Quality Standards set
forth in Article 5.
12
3.3 Bundling. Licensee may use Licensed Marks in connection with
Service Bundles in accordance with the Quality Standards set forth in Article 5
on a non-exclusive basis if:
a. The Service Bundle is predominantly built around a
Licensed Service or is provided in conjunction with
an Affiliate of Licensor; and
b. Licensee is in compliance with its material
obligations under any supply agreement with Licensor
or a TW Licensee or, in the case of High Speed
Internet Services, a ROAD RUNNER Licensee, for all
elements that are included in the Service Bundle, if
any such agreement is in place.
3.4 Co-Marketing.
a. Licensor shall have the right, upon its request, to
review and approve (which approval shall not be
unreasonably withheld) Licensee's use of the Licensed
Marks in Co-Marketing and to request representative
copies of materials created in connection with
Co-Marketing.
b. Any use of the Licensed Marks in connection with
Co-Marketing shall comply with the Quality Standards
set forth in Article 5 and Licensor's Co-Marketing
Guidelines, as in effect from time to time.
3.5 General Purpose Credit Cards. Licensee may not permit Licensed
Marks to be used on or in connection with any consumer general credit card.
3.6 Dealers. Licensee may grant Authorized Dealers limited
permission to use the Licensed Marks on a non-exclusive basis and solely in
connection with the provision of Licensed Services obtained from Licensee;
provided, however, that any such use shall be in accordance with the terms of
this Agreement including the Quality Standards set forth in Article 5 of this
Agreement and as set forth in the Style Guidelines and such use shall only be in
the same Field of Use as Licensee. For avoidance of doubt, no Authorized Dealer
may use any Licensed Marks in any manner that would violate this Agreement if
performed by Licensee and any use of Licensed Marks by an Authorized Dealer in
such manner shall be deemed use by Licensee in violation of the relevant
provision(s) of this Agreement.
3.7 Sublicenses. Notwithstanding anything to the contrary herein,
Licensee shall have the right to grant sublicenses to use the Licensed Marks for
Licensed Services or Promotional Products to its Subsidiaries (a "Sublicensee");
provided, however, that any such use shall be in accordance with the terms of
this Agreement including the Quality Standards set forth in Article 5 and that
the sublicense granted to such Person shall only be effective for so long as
such Person remains a Subsidiary of Licensee.
13
Except as otherwise expressly provided in this Article 3, Licensee shall have no
right to sublicense the Licensed Marks.
4. TERM AND TERMINATION
4.1 Term. This Agreement shall remain in effect unless terminated
in accordance with the provisions hereof.
4.2 Termination. Notwithstanding the foregoing, Licensor shall
have the right, subject to Section 4.3 below, to terminate this Agreement
without prejudice to any rights which it may have, whether pursuant to this
Agreement, or in law or equity or otherwise, upon the occurrence of a
Significant Breach by Licensee. A "Significant Breach by Licensee" shall mean,
after exhaustion of any applicable cure periods set forth in this Agreement, any
one or more of the following events:
a. Any of Licensee, an Authorized Dealer, Reseller,
Value Added Reseller or any Sublicensee uses the
Licensed Marks in a manner which fails to comply in
all material respects with the provisions of this
Agreement, and fails to cure such breach within sixty
(60) days of receipt of written notice of such
breach; or
b. Any use of the Licensed Marks by any of Licensee, an
Authorized Dealer, Reseller, Value Added Reseller or
any Sublicensee fails to comply in all material
respects with the Quality Standards set forth in
Article 5 and continues for more than sixty (60) days
after written notice thereof has been given to
Licensee in accordance with Section 6.1; or
c. Licensee fails to provide performance data and
representative samples of Marketing Materials to
Licensor's Quality Control Representative for the
purposes permitted hereunder pursuant to the
provisions of Section 5.3 hereof and fails to cure
such breach within sixty (60) days of receipt of
written notice of such breach; or
d. Licensee, an Authorized Dealer, Reseller, Value Added
Reseller or any Sublicensee fails to comply with any
material laws, regulations or industry standards, or
any governmental agency, Regulatory Authority or
other body, office or official vested with
appropriate authority finds that the services or
products being offered under the Licensed Marks are
being provided in contravention of material,
applicable laws, regulations or standards and fails
to cure such breach within sixty (60) days of receipt
of written notice of such breach or such date as is
set by the relevant Regulatory Authority, whichever
is earlier; or
14
e. Licensee fails to deliver to Licensor or to maintain
in full force and effect the insurance referred to in
Section 9.4 hereof and fails to cure such breach
within sixty (60) days of receipt of written notice
of such breach; or
f. Licensee shall be unable to pay its debts in the
ordinary course of business or when they become due,
or shall file for Bankruptcy; or
g. Any other material breach of this Agreement by
Licensee its Authorized Dealers, Resellers, Value
Added Resellers or any Sublicensee which breach
continues for more than sixty (60) days after written
notice thereof has been given to Licensee, except as
may otherwise be provided in Section 6.1; or
h. A Change of Control shall have occurred with respect
to Licensee; or
i. Licensee's breach of Section 12.1, which breach
continues for more than sixty (60) days after written
notice thereof has been given to Licensee and which
breach Licensor reasonably determines has a material
adverse effect on Licensor or the Licensed Marks; or
j. Licensee shall materially breach any other agreement
in effect between Licensee on the one hand and
Licensor on the other and Licensor reasonably
determines that such breach has a material adverse
effect on the relationship between Licensee and
Licensor that is not reasonably capable of being
cured.
4.3 Notice of Termination. In the event any "Significant Breach by
Licensee" occurs, Licensor may give notice of termination in writing to
Licensee, whereupon this Agreement shall immediately terminate.
4.4 Effect of Termination. In the event this Agreement is
terminated pursuant to this Article, Licensee shall, and shall cause its
Authorized Dealers, Resellers, Value Added Resellers and Sublicensees to (i)
immediately cease use of the Licensed Marks licensed pursuant to Sections 2.1 -
2.7 hereof upon the effective date of such termination or expiration and (ii)
cease all further use of the Licensed Marks licensed pursuant to Section 2.8
hereof as part of its corporate name within thirty (30) days of such
termination. Immediately following the termination of this Agreement, Licensee
shall return to Licensor, or certify in writing that it has destroyed, all
Marketing Materials, Promotional Products and all other materials and tangible
property bearing the Licensed Marks.
4.5 Other Rights Unaffected. It is understood and agreed that
termination of this Agreement by Licensor on any ground shall be without
prejudice to any other remedies at law or equity or otherwise which Licensor may
have.
15
4.6 Bankruptcy. This Agreement constitutes a license of
"intellectual property" within the meaning of Section 365(n) of the United
States Bankruptcy Code. If Section 365(n) of the United States Bankruptcy Code
(or any successor provision) is applicable, and the trustee or
debtor-in-possession has rejected this Agreement and if the Licensee has elected
pursuant to Section 365(n) to retain its rights hereunder, then upon written
request of Licensee, to the extent Licensee is otherwise entitled hereunder, the
trustee or debtor-in-possession shall provide to Licensee any intellectual
property (including embodiments thereof) held or controlled by the trustee or
debtor-in-possession.
5. QUALITY CONTROL
5.1 General. Licensee acknowledges that the provision of Licensed
Services and Promotional Products under the Licensed Marks pursuant to the terms
of this Agreement must be of sufficiently high quality as to protect the
Licensed Marks and the goodwill they symbolize. Licensee further acknowledges
that the maintenance of high quality services is of the essence in this
Agreement, as is the use of the Licensed Marks in connection therewith. In order
to preserve the inherent value of the Licensed Marks, Licensee agrees to use its
reasonable efforts to ensure that the services and activities to be marketed,
promoted, offered and provided by Licensee, Authorized Dealers, Resellers, Value
Added Resellers and Sublicensees under the Licensed Marks pursuant to this
Agreement shall be of a quality and nature comparable to the products, services
and activities provided by Licensor, itself or through its Affiliates, as of the
date of this Agreement. Licensee further agrees that it will utilize only
Marketing Materials which do not disparage or place in disrepute Licensor, its
businesses or its business reputation, and do not adversely affect or detract
from Licensor's goodwill or the goodwill appurtenant to the Licensed Marks and
will use the Licensed Marks in ways which will not adversely affect Licensor's
business reputation and goodwill.
5.2 Quality Standards. Licensee agrees to comply and maintain
compliance with the Quality Standards, specifications and rights of approval of
Licensor with respect to any and all usage of the Licensed Marks on or in
relation to the Licensed Services, Portals, Marketing Materials and Promotional
Products throughout the Term. To that end, any and all usage of the Licensed
Marks by Licensee, Authorized Dealers, Resellers, Value Added Resellers and
Sublicensees shall comply with the following standards, specifications and
rights of approval (the "Quality Standards"):
a. Licensee shall use the Licensed Marks only in a style
and manner commensurate with the current standards
and reputation for quality associated with the
Licensed Marks and only in the style and manner that
has been expressly approved in advance by Licensor as
provided herein. Such approval is designed to protect
the Licensed Xxxx and Licensor's rights therein and
will not be unreasonably withheld, it being
understood and agreed that it shall not be
unreasonable for Licensor to disapprove if Licensor
believes in good faith that such disapproval is
appropriate to preserve the Licensed Marks or the
goodwill associated therewith;
16
b. At Licensor's reasonable request, Licensee shall
submit to Licensor for prior written approval
prototypes of products and materials, including, but
not limited to, Marketing Materials and Promotional
Products and any packaging and labeling therefor
bearing the Licensed Marks (the "Submitted
Materials"), such approval not to be unreasonably
withheld, it being understood and agreed that it
shall not be unreasonable for Licensor to disapprove
any Submitted Material if Licensor believes in good
faith that such disapproval is appropriate to
preserve the Licensed Marks or the goodwill
associated therewith. Licensor shall provide its
approval or disapproval within a reasonable time
after Licensor receives such Submitted Materials. In
the event that Licensor disapproves any of the
submissions, Licensee shall make modifications
consistent with those specified by Licensor and shall
resubmit the relevant materials to Licensor for
approval. Provided Licensor has given approval of the
style(s) and general use(s) of any Submitted
Material, Licensee may use such Submitted Material in
those styles and for such purposes, without material
change, subject to periodic review by Licensor at
Licensor's request. Licensee shall not make any
material change to the Submitted Materials as
approved by Licensor without Licensor's prior written
approval;
c. The provisions of Section 7.4 of this Agreement; and
d. All quality, style and image standards for use of the
Licensed Marks delivered by Licensor to Licensee,
including the style guide located at
xxxx://xxx.xxxxxxx.xxx, and the Co-Marketing
Guidelines, Usage Guidelines and Trade Dress
Guidelines set forth therein, however, it being
understood and agreed that any written instructions
delivered from Licensor to Licensee shall take
priority over such style guide in the event of any
conflict.
Licensee acknowledges that the Quality Standards may be modified from time to
time as may be necessary to continue to protect and preserve the image,
reputation and goodwill attached to the Licensed Marks.
5.3 Quality Service Reviews.
a. Licensee agrees to collect, maintain and furnish to
the Quality Control Representatives all performance
data relating to the Licensed Services reasonably
requested by the Quality Control Representatives and
representative samples of Marketing Materials that
are marketed or provided under the Licensed Marks to
assure conformance of the Licensed Services and the
Marketing Materials with the Quality Standards. At
Licensor's reasonable request, Licensee shall send
copies to Licensor of performance data relating to
technical performance or conformance of the Licensed
Services
17
as previously provided by Licensee. Any such data
provided to Licensor shall be treated confidentially
in accordance with Article 17.
b. Licensor may independently, at its own cost, conduct
continuous customer satisfaction and other surveys to
determine if Licensee is meeting the Quality
Standards in connection with its use of the Licensed
Marks in the Licensed Services. Licensee shall
cooperate, at Licensor's expense, with Licensor fully
in the distribution and conduct of such surveys, and
otherwise as may be reasonably necessary to verify
Licensee's compliance with the Quality Standards, so
long as such cooperation shall not unreasonably
interfere with the conduct of Licensee's business. If
Licensor learns that Licensee is not complying with
the Quality Standards in any material respect, it
shall notify Licensee and the provisions of Article 6
shall apply to such non-compliance.
c. If Licensee learns that it is not complying with the
Quality Standards in any material respect, it shall
notify Licensor, and the provisions of Article 6
shall apply to such non-compliance.
5.4 Authorized Dealers, Resellers, Value Added Resellers and
Sublicensees. Licensee shall provide to Licensor within ten (10) days after the
expiration of each calendar year a list of all Sublicensees and a list of all
material Authorized Dealers, Resellers and Value Added Resellers. Licensor shall
have the right, exercisable in its reasonable discretion, to give Licensee
notice requiring Licensee to terminate any Authorized Dealer, Reseller, Value
Added Reseller or Sublicensee that Licensor reasonably believes is not in
compliance with the Quality Standards (after notice of such non-compliance and a
reasonable opportunity to cure has been granted to such Authorized Dealer,
Reseller, Value Added Reseller or Sublicensee) effective no later than thirty
(30) days from the date such notice is given by Licensor to Licensee. All
Authorized Dealers, Resellers, Value Added Resellers and Sublicensees shall be
bound by the Quality Standards and by Licensee's obligations under this
Agreement. A breach by any such Authorized Dealer, Reseller, Value Added
Reseller or Sublicensee of this Agreement shall be deemed a breach of this
Agreement by Licensee; provided that, Licensee's termination of such breaching
Authorized Dealer, Reseller, Value Added Reseller or Sublicensee shall be deemed
to cure any such breach.
6. REMEDIES FOR NON-COMPLIANCE WITH QUALITY STANDARDS
6.1 Non-compliance with Quality Standards and Cure.
a. If Licensor becomes aware that Licensee or its
Authorized Dealers, Resellers, Value Added Resellers
or Sublicensees, are not complying with any Quality
Standards in any material respect, Licensor shall
notify Licensee in writing of such non-compliance,
setting forth, in reasonable detail, a description of
the non-
18
compliance and, to the extent such information is
available, any suggestions for curing such
non-compliance. Licensee shall cure such
non-compliance as soon as is practicable but in any
event within sixty (60) days thereafter. In the event
that the non-compliance with the Quality Standards is
being caused by an Authorized Dealer, Reseller, Value
Added Reseller or Sublicensee, Licensee's termination
of such Authorized Dealer, Reseller, Value Added
Reseller or Sublicensee shall be deemed to cure such
non-compliance.
b. If such non-compliance with the Quality Standards
continues beyond the applicable cure periods
described above, Licensee shall: (i) and shall cause
its Authorized Dealers, Resellers, Value Added
Resellers and Sublicensees to, immediately cease any
Licensed Services and Promotional Products using the
Licensed Marks in the DMA in which it is in
non-compliance until it is in compliance with the
Quality Standards, subject to the provisions below;
and (ii) be deemed to be in breach of this Agreement.
c. The waiver by Licensor of a single event of
non-compliance or a succession of events shall not
deprive Licensor of any rights under this Agreement
arising by reason of any subsequent event of
non-compliance.
6.2 Potential Injury to Persons or Property. Notwithstanding the
provisions of Section 6.1, in the event that Licensor reasonably determines that
any non-compliance creates a material threat of personal injury or injury to
property of any third party, upon notice thereof by Licensor to Licensee,
Licensee shall cure such non-compliance as soon as practicable but in any event
within sixty (60) days after receiving such notice. If the non-compliance
continues beyond such cure period, Licensee shall (and shall cause its
Authorized Dealers, Resellers, Value Added Resellers and Sublicensees to) either
cease using the Licensed Marks in connection with any Licensed Services and
Promotional Products in the DMA in which it is not in compliance until it is in
compliance with the Quality Standards, subject to the provisions of Section 6.3
below, or be deemed to be in breach of this Agreement.
6.3 Licensor's Rights to License Others. In addition to the rights
granted to Licensor pursuant to Article 4, "Term and Termination," in the event
that Licensee is required to cease offering or providing any Licensed Services
or Promotional Products using Licensed Marks in a DMA by reason of its failure
to comply with the Quality Standards and to cure such failure within the
applicable cure periods, Licensor may immediately terminate Licensee's rights
under this Agreement with respect to such DMA and may license other Persons to
use the Licensed Marks in connection with the Licensed Services and Promotional
Products, even though the license granted was an exclusive license in that DMA.
19
7. PROTECTION OF LICENSED MARKS
7.1 Ownership and Rights to the Licensed Marks.
a. Licensee acknowledges the great value of the goodwill
associated with the Licensed Marks, and acknowledges
that the Licensed Marks and all the rights therein,
and goodwill attached thereto, belong exclusively to
Licensor.
b. Licensee will not, at any time, disparage, dilute or
adversely affect the validity of the Licensed Marks
or take any action, or otherwise suffer to be done
any act or thing which may at any time, in any way
materially adversely affect any rights of Licensor in
and to the Licensed Marks, or any registrations
thereof or which, directly or indirectly, may
materially reduce the value of the Licensed Marks or
detract from their reputation.
c. Licensee agrees that any and all goodwill and other
rights that may be acquired by the use of the
Licensed Marks by Licensee shall inure to the sole
benefit of Licensor. Nothing contained in this
Agreement shall be construed as an assignment or
grant to Licensee of any right, title or interest in
or to the Licensed Marks, or any of Licensor's other
Marks, it being understood that all rights relating
thereto are reserved by Licensor, except for the
license hereunder to Licensee of the right to use the
Licensed Marks only as specifically and expressly
provided herein. Licensee further acknowledges that
it will not obtain any ownership interest in the
Licensed Marks or any other right or entitlement to
continued use of them, regardless of how long this
Agreement remains in effect and regardless of any
reason or lack of reason for the termination thereof
by Licensor; provided that, by making this
acknowledgment Licensee is not waiving, and does not
intend to waive, any contractual rights hereunder or
its remedies upon a breach hereof by Licensor.
d. Licensee shall not (i) attack Licensor's title or
right in and to the Licensed Marks as they relate to
the Licensed Services in any jurisdiction or attack
the validity of this license or the Licensed Marks or
(ii) contest the fact that Licensee's rights under
this Agreement cease upon termination of this
Agreement. The provisions of this Section 7.1 shall
survive the termination of this Agreement.
e. Licensee will not grant or attempt to grant a
security interest in the Licensed Marks or this
Agreement, or to record any security interest in the
United States Patent and Trademark Office or
20
elsewhere, against any trademark application or
registration belonging to Licensor.
f. Licensee shall, at Licensor's expense, cooperate
fully and in good faith with Licensor for the purpose
of securing, preserving and protecting Licensor's
rights in and to the Licensed Marks. At the request
of Licensor, and at Licensor's expense, Licensee
shall execute and deliver to Licensor any and all
documents and do all other reasonable acts and things
which Licensor deems necessary or appropriate to make
fully effective or to implement the provisions of
this Agreement relating to the ownership,
registration, maintenance or renewal of the Licensed
Marks. For purposes of this Agreement, Licensee and
any Sublicensees shall be considered a "related
company" under the U.S. Trademark Act, 15 U.S.C.
Section 1051 et seq.
g. The parties acknowledge and agree that the protection
of the Licensed Marks and the goodwill attached
thereto are material provisions of this Agreement.
7.2 Similar Marks. Licensee agrees not to register in any country
any Xxxx which resembles or is confusingly similar to the Licensed Marks, or
which dilutes the Licensed Marks, and, except as provided for herein, not to use
the Licensed Marks, or any independently protectible part of any such Marks, as
part of its corporate name (unless otherwise agreed by Licensor), nor use
(except in accordance with Article 8) any Xxxx which could reasonably be deemed
to be confusingly similar, deceptive or (except in accordance with Article 8)
misleading with respect to the Licensed Marks, or which could reasonably be
deemed to dilute the Licensed Marks. If any application for registration is, or
has been filed in any country by Licensee which relates to any Xxxx which, in
Licensor's reasonable opinion, is confusingly similar, deceptive or misleading
with respect to the Licensed Marks, or which dilutes the Licensed Marks,
Licensee shall, at Licensor's sole discretion, immediately abandon any such
application or registration or, at Licensor's election, assign it (free and
clear of any liens and encumbrances, and for consideration of $1.00, the
adequacy and sufficiency of which is hereby acknowledged by Licensor) to
Licensor. If Licensee uses any Xxxx which, in Licensor's reasonable opinion, is
confusingly similar, deceptive or misleading with respect to the Licensed Marks,
or which dilutes the Licensed Marks, or if Licensee uses the Licensed Marks in
connection with any product, or any service or in any territory not specifically
authorized hereunder, Licensee shall, immediately upon receiving a written
request from Licensor, permanently cease such use.
7.3 Infringement. In the event that either party learns of any
infringement or threatened infringement of the Licensed Marks, or any unfair
competition, passing-off or dilution with respect to the Licensed Marks (each
such event, an "Infringement"), such party shall promptly notify the other party
or its authorized representative giving particulars thereof, and Licensee shall
provide necessary information and reasonable assistance, at Licensor's expense,
to Licensor or its authorized representatives in the
21
event that Licensor decides that proceedings should be commenced. Licensor shall
have exclusive control of any litigation, opposition, cancellation or other
legal proceedings relating to an alleged Infringement. The decision whether to
bring, maintain or settle any such proceedings shall be at the exclusive option
and expense of Licensor, and all recoveries shall belong exclusively to
Licensor. Licensee shall not take any action to enforce, protect or defend the
Licensed Marks without the prior written consent of Licensor's General Counsel.
Licensee will not initiate any such litigation, opposition, cancellation or
related legal proceedings in its own name but, at Licensor's request, agrees to
be joined as a party in any action taken by Licensor to enforce its rights in
the Licensed Marks; provided that, Licensor shall reimburse Licensee for all
reasonable out-of-pocket costs and expenses incurred by Licensee, its Affiliates
and authorized representatives (and their respective directors, officers,
stockholder, employees and agents) in connection with their participation in
such action. Nothing in this Agreement shall require, or be deemed to require
Licensor to enforce the Licensed Marks against others. Licensor shall keep all
monies derived from litigation or legal proceeding or from settlement of
Infringement.
7.4 Compliance with Legal Requirements.
a. In the performance of this Agreement, Licensee shall
comply in all material respects with all applicable
laws and regulations and administrative orders,
including those laws and regulations particularly
pertaining to the proper use and designation of Marks
in the Licensed Territory.
b. Licensee shall duly display those reasonable legal
notices as shall be provided by Licensor, such as the
symbols (R), "TM" or "SM". In no circumstances shall
such notices be altered or omitted without the
express prior written consent of Licensor.
c. Should Licensee be or become aware of any applicable
laws or regulations which are inconsistent with the
provisions of this Agreement, Licensee shall promptly
notify Licensor of such inconsistency. In such event,
Licensor may, at its option, either waive the
performance of such inconsistent provisions, or
negotiate with Licensee to make changes in such
provisions to comply with applicable laws and
regulations, it being understood that the parties
intend that any such changes shall preserve to the
extent reasonably practicable the parties' respective
benefits under this Agreement.
8. USE OF LICENSED MARKS AND OTHER MARKS
8.1 Licensee Marks. Licensee shall have the right from time to
time to create and use its own Marks, which may be used together with the
Licensed Marks, in connection with products or services with respect to which
any of the Licensed Marks are used; provided that, said use is in conformance
with the Quality Standards set forth in
22
Article 5; and provided further that, upon request, Licensor shall have the
right to review and approve Licensee's use of such Marks (which approval shall
not be unreasonably withheld). For the avoidance of doubt, Licensor's approval
of such Xxxx shall not be deemed to be a statement by Licensor as to the
availability or strength of such Xxxx. Licensee shall have sole responsibility
over the availability and strength of the Xxxx. Unless, in the exercise of
Licensor's sole discretion acting in good faith, Licensor shall determine that a
Xxxx that Licensee proposes to use would disparage, tarnish, dilute or
potentially cause confusion with respect to any Licensed Marks or is not in
conformance with Licensor's Quality Standards set forth in Article 5 or
otherwise would have a detrimental effect on the Licensed Marks, Licensor will
approve Licensee's use of such proposed Xxxx. Licensor shall approve or
disapprove any Marks proposed to be used by Licensee within a reasonable time of
its receipt of a written request for such approval. Licensee shall not file or
prosecute a trademark application to register any Xxxx which consists of or
incorporates the Licensed Marks or any material element thereof or any Marks
confusingly similar thereto. Under no circumstances shall Licensee be permitted
to join the Licensed Marks with any Licensee Marks so as to form a new Xxxx.
8.2 Modification of Licensed Marks. In the event Licensor modifies
or replaces any of the Licensed Marks as they are used in any portion of
Licensor's business, and if Licensor requests Licensee to adopt and use any such
modified or replaced Licensed Marks, Licensee will adopt and use such modified
or replaced Licensed Marks and, in such event, such modified or replaced
Licensed Marks shall be considered the Licensed Marks contemplated by this
Agreement; provided that, in such event, Licensee shall be granted a 180-day
period during which to phase-out its use of the superseded forms of the Licensed
Marks, as applicable, and during such 180-day period Licensee shall have the
right to use its existing inventory of Marketing Materials bearing the
superseded forms of the Licensed Marks, as applicable.
8.3 Third Party Marks. Licensee shall have the right from time to
time to use Marks owned by third parties ("Third Party Marks") in conjunction
with the Licensed Marks, in connection with products or services with respect to
which Licensed Marks are used; provided that, (i) Licensee obtains consent from
the relevant third party to use such Third Party Marks; and (ii) use of the
Licensed Marks in conjunction with such Third Party Marks shall be in
conformance with the Licensor's Quality Standards set forth in Article 5;
provided that, upon request, Licensor shall have the right to review and approve
Licensee's uses of such Third Party Marks. Under no circumstances shall Licensee
be permitted to join the Licensed Marks with any Third Party Marks so as to form
a new Xxxx. Notwithstanding the foregoing, Licensee shall be permitted to use
the Road Runner Marks and Copyrights in conjunction with the Licensed Marks in
conformance with the Quality Standards set forth in Article 5.
8.4 Internet Domain Names.
a. Licensee shall provide to Licensor within ten (10)
days after the expiration of each calendar year, a
list of all domain names using any of the Licensed
Marks or any confusingly similar xxxx. Any
23
domain name consisting of or incorporating the
Licensed Marks or any material element thereof shall
be owned and maintained exclusively by Licensor,
provided that, Licensee shall be solely responsible
for any registration and renewal fees for those
domain names used exclusively by, or on behalf of,
Licensee.
b. Licensee's web sites that use any of the Licensed
Marks or that concern Licensed Services or Portals
and Promotional Products in connection with which the
Licensed Marks are used shall comply with the Quality
Standards set forth in Article 5.
9. REPRESENTATIONS; LIABILITY AND INDEMNIFICATION
9.1 Representations and Warranties. Licensor represents and
warrants that Licensor has not licensed the use of the Licensed Marks to any
third party in connection with the Licensed Services in the Licensed Territory.
9.2 Indemnification.
a. Licensor shall defend, indemnify and hold Licensee
and its Sublicensees and their respective directors,
officers, stockholders, employees and agents (the
"Licensee Parties") harmless against all claims,
suits, proceedings, costs, damages, losses, fees and
expenses (including reasonable attorney's fees) and
judgments incurred, claimed or sustained by the
Licensee Parties arising out of: (i) any third party
claims as to the lack of validity or enforceability
of (A) the registrations of the Licensed Marks or (B)
Licensor's ownership rights in the Licensed Marks;
and (ii) any lack of validity or enforceability of
this Agreement caused by Licensor.
b. Subject to Licensor's indemnification obligations in
Section a. above, Licensee shall defend, indemnify
and hold Licensor and its directors, officers,
stockholders, employees and agents (the "Licensor
Parties") harmless against all claims, suits,
proceedings, costs, damages, losses, fees and
expenses (including reasonable attorneys' fees) and
judgments incurred, claimed or sustained by the
Licensor Parties arising out of Licensee's, or any
Authorized Dealer's, Reseller's, Value Added
Reseller's or Sublicensee's use of the Licensed Marks
other than as expressly provided in this Agreement,
and shall indemnify the Licensor Parties from any
improper or unauthorized use of the Licensed Marks
and for any use by Licensee, or any Authorized
Dealer, Reseller, Value Added Reseller or Sublicensee
of the Licensee Marks. Licensee shall also defend,
indemnify and hold the Licensor Parties harmless
against all claims, suits, proceedings, costs,
damages, losses, fees and expenses (including
reasonable attorney's fees) and judgments
24
incurred, claimed or sustained by the Licensor
Parties arising out of: (i) any third party claims as
to the lack of validity or enforceability of (x) the
Licensee Marks or (y) Licensee's ownership rights in
the Licensee Marks; and (ii) any lack of validity or
enforceability of this Agreement caused by Licensee.
9.3 Notification and Defense of Claims.
a. Notification of Claims. In the event of the
occurrence of an event which Licensee or Licensor
(the "Indemnified Party"), as the case may be,
asserts constitutes a claim under Section 9.2, the
Indemnified Party shall provide prompt notice of such
event to Licensor, in the case of Licensee as the
Indemnified Party, or to Licensee, in the case of
Licensor as the Indemnified Party (the "Indemnifying
Party"), and shall otherwise make available to the
Indemnifying Party all relevant information which is
material to the claim. Failure to give timely notice
or to furnish the Indemnifying Party with any
relevant data and documents in connection with any
claim shall not constitute a defense (in part or in
whole) to any claim for indemnification by the
Indemnified Party, unless, and only to the extent
that, such failure results in any material prejudice
to the Indemnifying Party. The Indemnifying Party may
elect, at its own expense, to assume exclusive
control of the defense of such claim, if the
Indemnifying Party gives written notice of its
intention to do so no later than thirty (30) days
following notice of such claim by the Indemnified
Party or such shorter time period as required so that
the interests of the Indemnified Party would not be
materially prejudiced as a result of the failure to
have received such notice; provided that, (i) the
Indemnifying Party shall obtain the consent of the
Indemnified Party (which consent shall not be
unreasonably withheld or delayed) before entering
into any settlement, adjustment or compromise of such
claims, or ceasing to defend against such claims, if
as a result thereof, or pursuant thereto, there would
be imposed on the Indemnified Party any material
liability or obligation not covered by the indemnity
obligations of the Indemnifying Party under this
Agreement (including, without limitation, any
injunctive relief or other remedy), except with
respect to a settlement adjustment or compromise
which results solely in a monetary liability and (ii)
if the Indemnified Party shall have reasonably
concluded that separate counsel is required because a
conflict of interest would otherwise exist, the
Indemnified Party shall have the right to select
separate counsel to participate in the defense of
such action on its behalf, at the expense of the
Indemnified Party.
25
b. In the event that Indemnifying Party elects to assume
control of the defense of any such claim, the
Indemnified Party shall cooperate with the
Indemnifying Party in such proceeding and shall
execute all papers necessary and desirable and shall
testify or provide evidence whenever reasonably
requested to do so. The Indemnified Party may elect
to join in the defense of such claim and to employ
counsel to assist it in connection with the handling
of such claim, at the sole expense of the Indemnified
Party, provided, however, that no such claim shall be
settled, adjusted or compromised, or the defense
thereof terminated by the Indemnified Party, without
the prior consent of the Indemnifying Party (which
consent shall not be reasonably withheld or delayed),
and provided, further that no Indemnified Party may
settle, compromise or consent to the entry of any
judgment in any claim for which indemnification may
be sought hereunder unless such settlement,
compromise or consent also includes an express,
unconditional release of the Indemnifying Party and
its directors, officers, stockholders, employees and
agents from all liabilities and obligations arising
therefrom.
c. In the event that the Indemnifying Party does not
notify the Indemnified Party within thirty (30) days
that it will assume control of the defense of any
such claim for which the Indemnified Party would be
entitled to indemnification hereunder, then the
Indemnified Party shall have the right to defend such
claim at its own expense, and the Indemnifying Party
shall cooperate as requested in such defense, at the
expense of the Indemnified Party with respect to
documented and reasonable out-of-pocket expenses
incurred by the Indemnifying Party in the defense of
the claim, provided, however, that no such claim
shall be settled, adjusted or compromised, or the
defense thereof terminated by the Indemnified Party,
without the prior consent of the Indemnifying Party
(which consent shall not be reasonably withheld or
delayed), and provided, further, that no Indemnified
Party may settle, compromise or consent to the entry
of any judgment in any claim for which
indemnification may be sought hereunder unless such
settlement, compromise or consent also includes an
express, unconditional release of the Indemnifying
Party and its directors, officers, stockholders,
employees and agents from all liabilities and
obligations arising therefrom.
9.4 Insurance.
a. Licensee shall maintain, at its own expense, in full
force and effect at all times during which Licensed
Services bearing the Licensed Marks are being sold,
with a responsible insurance carrier reasonably
acceptable to Licensor, at least a Two Million Five
26
Hundred Thousand Dollar ($2,500,000.00) products
liability insurance policy with respect to the
Licensed Services offered using the Licensed Marks.
This insurance shall be primary to any of Licensor's
coverage, shall name Licensor as an insured party,
shall be for the benefit of Licensor and Licensee and
shall provide for at least ten (10) days' prior
notice to Licensor and Licensee of the cancellation
or any substantial modification of the policy. This
insurance may be obtained by Licensee in conjunction
with a policy which covers services and/or products
other than the services covered under this Agreement.
b. Licensee shall from time to time, upon reasonable
request by Licensor, promptly furnish or cause to be
furnished to Licensor, evidence in form and substance
satisfactory to Licensor, of the maintenance of the
insurance required by this Section 9.4, including
without limitation, originals or copies of policies,
certificates of insurance (with applicable riders and
endorsements) and proof of premium payments.
10. AGREEMENT PERSONAL
10.1 Personal to Licensee. In recognition of the unique nature of
the relationship between Licensor and Licensee, the fact that Licensor would not
be willing to enter into an agreement such as this Agreement with any other
party in any other circumstances, and the unique nature of Licensee (including
without limitation, the fact that part of Licensee was once owned by Licensor),
the parties agree that the rights, obligations and benefits of this Agreement
shall be personal to Licensee, and Licensor shall not be required to accept
performance from, or render performance to, an entity other than Licensee.
Pursuant to 11 U.S.C. Section 365(c)(1)(A) (as it may be amended from time to
time, and including any successor to such provision), in the event of the
Bankruptcy of Licensee, this Agreement may not be assigned or assumed by
Licensee (or any Successor) and Licensor shall be excused from rendering
performance to, or accepting performance from, Licensee or any Successor.
10.2 Licensee Acknowledgment. Licensee acknowledges and agrees that
it understands it may have, or, in the future, may elect to enter into,
agreements with Licensor's Affiliates and that neither the execution or
continuation nor the renewal of any of those agreements will have any effect on
this Agreement and Licensee may choose to contract, or not, with Licensor's
Affiliates as it deems appropriate.
11. RETENTION OF RIGHTS
Except as otherwise expressly provided in this Agreement,
nothing in this Agreement shall be deemed or construed to limit in any way
Licensor's rights in and to the Licensed Marks, including without limitation:
27
a. All rights of ownership in and to the Licensed Marks,
including the right to license or transfer the same.
b. The unimpaired right to use the Licensed Marks in
connection with marketing, offering or providing any
products or services (except for the particular
products and services exclusively licensed under this
Agreement, but only to the extent of such license)
whether within or without the Licensed Territory.
12. SPONSORSHIP
Licensee shall not use the Licensed Marks to sponsor, endorse,
or claim affiliation with any event, meeting, charitable endeavor or any other
undertaking (each, an "Event"), or a series of related Events, without the
express written permission of Licensor. Licensor reserves the right to deny
permission to any Event. The Parties acknowledge that an Event shall not include
day-to-day ordinary course meetings and events. In the event that Licensee
desires to sponsor, endorse or claim affiliation with an Event, or a series of
related Events, Licensee shall provide Licensor with at least twenty (20)
business days prior written notice of such Event in reasonable detail. Any
breach of this provision reasonably determined to have a material adverse effect
on Licensor or the Licensed Marks shall be deemed a Significant Breach by
Licensee.
13. CONSENT OF LICENSOR
Except where another standard is expressly provided for
herein, whenever reference is made to Licensor's consent or approval in this
Agreement, such consent or approval may be granted or withheld in Licensor's
sole discretion and, if granted, may be done so conditionally or
unconditionally.
14. NOTICES
All notices, requests, demands or other communications
required by, or otherwise with respect to, this Agreement shall be in writing
and shall be deemed to have been duly given to any party when delivered
personally (by courier service or otherwise), against receipt, when delivered by
telecopy and confirmed by return telecopy, or three (3) days after being mailed
by registered first-class mail, postage prepaid and return receipt requested in
each case to the applicable addresses set forth below:
If to Licensee:
Time Warner Cable Inc.
000 Xxxxxx Xxxxx
Xxxxxxxx, Xxxxxxxxxxx 00000
28
If to Licensor:
AOL Time Warner Inc.
00 Xxxxxxxxxxx Xxxxx
Xxx Xxxx, XX 00000
Attn: General Counsel
Fax: 000-000-0000
or to such other address as such party shall have designated
by notice so given to each other party.
15. GOVERNMENTAL LICENSES, PERMITS AND APPROVALS
Licensee, at its expense, shall be responsible for obtaining
and maintaining all Approvals with respect to this Agreement, and for complying
with any requirements of such Regulatory Authorities for the registration or
recording of this Agreement. Licensee shall furnish to Licensor written evidence
from such Regulatory Authorities of any such Approvals.
16. APPLICABLE LAW
The construction, performance and interpretation of this
Agreement shall be governed by the U.S. Trademark Act, 15 U.S.C. Section 1051 et
seq., and the internal, substantive laws of the State of New York, without
regard to its principles of conflicts of law. Except as otherwise provided
herein, Licensor and Licensee hereby irrevocably submit to the exclusive
jurisdiction of the United States District Court for the Southern District of
New York, or absent subject matter jurisdiction in that court, the state courts
of the State of New York located in New York County for all actions, suits or
proceedings arising in connection with this Agreement.
17. CONFIDENTIALITY OF INFORMATION AND USE RESTRICTION
The Quality Standards and other technical information
furnished to Licensee under this Agreement and other confidential and
proprietary information, know-how and trade secrets of Licensor that are
disclosed or otherwise provided to Licensee in connection with this Agreement,
shall remain the property of Licensor, and shall be returned to Licensor upon
request and upon termination of this Agreement. Unless such information was
previously known to Licensee free of any obligation to keep it confidential, or
has been or is subsequently made public (a) by any person other than Licensee
and Licensor is not attempting to limit further dissemination of such
information, (b) by Licensor, or (c) by Licensee, as required by law (including
securities laws) or to enforce its rights under this Agreement, it shall be held
in confidence, and shall be used only for the purposes of this Agreement. All
confidential and proprietary information, know-how and trade secrets of Licensee
that are disclosed or otherwise provided to Licensor hereunder (including
without limitation, during any Inspection) (collectively, "Licensee
Information") shall remain the property of Licensee and shall be returned to
Licensee upon request and upon termination of this Agreement. Unless such
29
Licensee Information was previously known to Licensor free of any obligation to
keep it confidential, or has been or is subsequently made public (a) by any
person other than Licensor and Licensee is not attempting to limit further
dissemination of such information, (b) by Licensee, or (c) by Licensor, as
required by law (including securities law) or to enforce its rights under this
Agreement, it shall be held in confidence and shall be used only for purposes of
this Agreement.
18. MISCELLANEOUS
18.1 Entire Agreement. The provisions of this Agreement contain the
entire agreement between the parties relating to use by Licensee of the Licensed
Marks, and supersede all prior agreements and understandings relating to the
subject matter hereof. This Agreement shall be interpreted to achieve the
objectives and intent of the parties as set forth in the text and factual
recitals of the Agreement. It is specifically agreed that no evidence of
discussions during the negotiation of the Agreement, or drafts written or
exchanged, may be used in connection with the interpretation or construction of
this Agreement. No rights are granted to use the Licensed Marks or any other
Marks or Trade Dress except as specifically set forth in this Agreement. In the
event of any conflict between the provisions of this Agreement and provisions in
any other agreement involving Licensee, the provisions of this Agreement shall
prevail.
18.2 Relationship of the Parties. This Agreement is not a franchise
under federal or state law, does not create a partnership or joint venture, and
shall not be deemed to constitute an assignment of any rights of Licensor to
Licensee. Licensee is an independent contractor, not an agent or employee of
Licensor, and Licensor is not liable for any acts or omissions by Licensee.
18.3 Amendments, Waivers. This Agreement may not be amended,
changed, supplemented, waived or otherwise modified except by an instrument in
writing signed by the party against whom enforcement is sought.
18.4 Assignment. Licensee may not assign, pledge, transfer or
otherwise hypothecate this Agreement or any of its rights or obligations
hereunder, and any purported assignment, pledge, transfer or other
hypothecation, whether by operation of law or otherwise, shall be void and of no
force or effect.
18.5 Specific Performance. The parties acknowledge that money
damages are not an adequate remedy for violation of this Agreement and that any
party may, in its sole discretion, apply to the court set forth in Article 16
for specific performance, or injunctive, or such other relief as such court may
deem just and proper, in order to enforce this Agreement or prevent any
violation hereof, and to the extent permitted by applicable law, each party
waives any objection to the imposition of such relief.
18.6 Remedies Cumulative. All rights, powers and remedies provided
under this Agreement, or otherwise available in respect hereof at law or in
equity shall be cumulative and not alternative, and the exercise or beginning of
the exercise of any
30
thereof by any party shall not preclude the simultaneous or later exercise of
any other such right, power or remedy by such party.
18.7 No Waiver. The failure of any party hereto to exercise any
right, power or remedy provided under this Agreement, or otherwise available in
respect hereof at law or in equity, or to insist upon compliance by any other
party hereto with its obligations hereunder, and any custom or practice of the
parties at variance with the terms hereof, shall not constitute a waiver by such
party of its right to exercise any such or other right, power or remedy or to
demand such compliance.
18.8 Rules of Construction. As used in this Agreement, (1) neutral
pronouns and any derivations thereof shall be deemed to include the feminine and
masculine and all terms used in the singular shall be deemed to include the
plural and vice versa, as the context may require; (2) the words "hereof,"
"herein," "hereunder" and other words of similar import refer to this Agreement
as a whole, including all exhibits and schedules as the same may be amended or
supplemented from time to time, and not to any subdivision of this Agreement;
(3) the word "including" or any variation thereof means "including, without
limitation" and shall not be construed to limit any general statement that it
follows to the specific or similar items or matters immediately following it;
and (4) descriptive headings and titles used in this Agreement are inserted for
convenience of reference only and do not constitute a part of and shall not be
utilized in interpreting this Agreement. This Agreement shall be fairly
interpreted in accordance with its terms and without any strict construction in
favor of or against any party.
18.9 No Third Party Beneficiaries. This Agreement is not intended
to be for the benefit of and shall not be enforceable by any Person who is not a
party and nothing in this Agreement, express or implied, is intended to or shall
(1) confer on any Person other than the parties and their respective Successors
any rights (including third-party beneficiary rights), remedies, obligations or
liabilities under or by reason of this Agreement or (2) constitute the parties
as partners or as participants in a joint venture. This Agreement shall not
provide third parties with any remedy, claim, liability, reimbursement, cause of
action or other right in excess of those existing without reference to the terms
of this Agreement and no third party shall have any right, independent of any
right that exists irrespective of this Agreement, to bring any suit at law or
equity for any matter governed by or subject to the provisions of this
Agreement.
18.10 Counterparts. This Agreement may be executed in any number of
counterparts, each of which shall be deemed to be an original, but all of which
together shall constitute one instrument. Each counterpart may consist of a
number of copies each signed by less than all, but together signed by all the
parties hereto.
31
IN WITNESS WHEREOF, each of the parties has caused this
Agreement to be executed in duplicate originals by its duly authorized
representatives as of the date first stated above.
TIME WARNER INC.
By: /s/ Xxxxxxx X. Xxxx
---------------------------------------
Name: Xxxxxxx X. Xxxx
Title: Senior Vice President
TIME WARNER CABLE INC.
By: /s/ Xxxx X. Xxxxxxxxx
--------------------------------------
Name: Xxxx X. Xxxxxxxxx
Title: Executive Vice President,
General Counsel & Secretary
32
Schedule 1
[GRAPHIC]
33
Schedule 2
LICENSED ANCILLARY MARKS
-----------------------------------------------------------------------------------------------------------------------
COUNTRY APPLICATION FILING REGISTRATION
NAME TRADEMARK NAME STATUS CLASS OWNER NO. DATE NO. REG. DATE
-----------------------------------------------------------------------------------------------------------------------
UNITED TIME WARNER REGISTERED 38 TIME WARNER 75/565400 07-OCT- 2348224 09-MAY-
STATES OF CUSTOMER INC. 1998 2000
AMERICA CARE PLUS
-----------------------------------------------------------------------------------------------------------------------
UNITED TW CUSTOMER REGISTERED 38 TIME WARNER 75/565405 07-OCT- 2,348,225 09-MAY-
STATES OF CARE PLUS INC. 1998 2000
AMERICA LOGO
-----------------------------------------------------------------------------------------------------------------------
UNITED TIME WARNER REGISTERED 38 TIME WARNER 75/649136 01-MAR- 2,370,458 25-JUL-
STATES OF CABLE INC. 1999 2000
AMERICA PAYXPRESS
LOGO
-----------------------------------------------------------------------------------------------------------------------
Schedule 3
LICENSEE SPECIFIC MARKS
Domain Names
xxxxxxxxxxxxxxx.xxxx
xxxxxxx.xxxx
xxxxxx.xxxx
xxxxxxxxxxxxxxxx.xxxx
xxxx.xxxx
xxxxxxx.xxxx
xxxxxxxxx.xxxx
xxxxxx.xxxx
And any other domain name incorporating any of the Licensed Marks that was used
in the TWE Broadband Business as of the Closing.
Exhibit A
TERMINATION AGREEMENT
THIS TERMINATION AGREEMENT (this "Agreement") is made and
entered into as of the ___ day of _____, 2003, by and between TIME WARNER INC.,
a Delaware corporation ("Licensor") and TIME WARNER ENTERTAINMENT COMPANY, L.P.,
a Delaware limited partnership ("Licensee").
W I T N E S S E T H:
WHEREAS, Licensee has entered into a license agreement, dated
as of June 30, 1992, relating to the use of the TIME WARNER ENTERTAINMENT xxxx
in connection with filmed entertainment, cable and programming businesses (as
the same may have been further amended or assigned, the "License Agreement");
and
WHEREAS, Licensor and Licensee desire that the License
Agreement be cancelled and terminated.
NOW, THEREFORE, in consideration of good and valuable
consideration, the receipt and sufficiency of which is hereby acknowledged, the
parties hereto do hereby agree as follows:
1. TERMINATION. The parties hereto hereby cancel and
terminate the License Agreement as of the date hereof. As of the date hereof,
neither party shall have any further rights, obligations or liabilities under
the License Agreement.
4. ENTIRE AGREEMENT. This Agreement contains the entire
agreement of the parties hereto and no waiver, modification or amendment of this
Agreement shall be valid unless it is in writing and signed by the parties
hereto.
5. BINDING EFFECT; GOVERNING LAW. This Agreement shall
be binding upon and inure to the benefit of all the parties hereto and their
respective heirs, administrators, representatives, executors, successors and
assigns. This Agreement is made and entered into in the State of New York and
shall in all respects be interpreted, enforced and governed under the laws of
the said state.
6. MISCELLANEOUS. Whenever possible, each provision of
this Agreement shall be interpreted in such a manner as to be effective and
valid under applicable law, but if any provision hereof shall be prohibited by
or invalid under such law, such provision shall be ineffective to the extent of
such prohibition or invalidity, without invalidating the remainder of such
provision or the remaining provisions of this Agreement.
7. COUNTERPARTS. This Agreement may be signed in one or
more counterparts or duplicate signature pages with the same force and effect as
if all required signatures were contained in a single original instrument.
IN WITNESS WHEREOF, Licensor and Licensee have executed this
Agreement as of the day and year first set forth above.
LICENSOR:
TIME WARNER INC.
By: __________________________________
Name:
Title:
LICENSEE:
TIME WARNER ENTERTAINMENT
COMPANY, L.P.
By: __________________________________
Name:
Title:
