TRADEMARK AND TRADE NAME LICENSE AGREEMENT Between HARRIS CORPORATION and HARRIS STRATEX NETWORKS, INC.
EXHIBIT
10.5
Between
XXXXXX CORPORATION
and
XXXXXX STRATEX NETWORKS, INC.
Dated:
January 26, 2007
THIS TRADEMARK AND TRADE “NAME LICENSE AGREEMENT (this “Agreement”), dated as of
January 26, 2007 (the “Effective Date”), is made by and between XXXXXX CORPORATION, a
Delaware corporation (“Harris” or “Licensor”), and XXXXXX STRATEX NETWORKS, INC., a
Delaware corporation (“Licensee”).
RECITALS
WHEREAS, in connection with the combination of Xxxxxx’ Microwave Communications Division with
Stratex Networks, Inc., a Delaware corporation
(“Stratex”), Harris, the Company, Stratex,
and Stratex Merger Corp., a Delaware corporation and wholly owned
subsidiary of the Company, have entered
into an Amended and Restated Formation, Contribution and Merger
Agreement, dated as of December 18, 2006, as amended by that
certain letter agreement, dated January 26, 2007 (the
“Formation Agreement”), among the parties
thereto, pursuant to which Licensee was formed to acquire Stratex pursuant
to the Merger (as defined in the Formation Agreement) and to receive the Contributed Assets (as
defined in the Formation Agreement) from Xxxxxx in the Contribution Transaction (as defined in the
Formation Agreement), in each case on the terms and subject to the conditions set forth in the
Formation Agreement;
WHEREAS, Licensor owns (i) the trade name “XXXXXX” and (ii) the trademarks “XXXXXX” and
“XXXXXX” with a stylized “A” as illustrated on Exhibit A hereto, and has established a commercial
reputation for high quality and reliability for services and products sold thereunder, and has
trademark applications and registrations thereon and/or trademark rights in many countries
throughout the world;
WHEREAS, in connection with the transfer to Licensee of the Contributed Assets pursuant to the
Formation Agreement, Licensee desires to obtain license rights in the Licensed Trademark (as
defined below) and Licensed Trade Name (as defined below) of Licensor for use by the Licensee
solely in connection with its business and Licensor is willing to grant such a limited license
under all the terms, restrictions, and conditions set out herein; and
WHEREAS, Harris and Stratex would not have entered into the Formation Agreement without the
undertakings contained in this Agreement, and the execution and delivery of this Agreement is a
condition to closing under the Formation Agreement.
NOW, THEREFORE, in consideration of the foregoing and the mutual covenants and agreements
contained in this Agreement and for other good and valuable consideration, the receipt and
sufficiency of which are hereby mutually acknowledged, the parties, intending to be legally bound,
agree as follows:
1. Definitions. Unless otherwise defined in this Agreement, any term used but not
expressly defined in this Agreement shall have the meaning ascribed to such term in the Formation
Agreement.
“Affiliates” has the meaning assigned to such term by Rule 405 under the Securities
Act of 1933, as amended; provided, however, that neither Licensee nor any of its
Subsidiaries shall be deemed to be an Affiliate of Licensor or any of Licensor’s other
Subsidiaries.
“Existing Licensee Business Products” means the products of the MCD Business that are
in inventory or that have otherwise been manufactured or produced (or manufactured or produced in
part) but not sold to a third party as of the Closing Date.
“Existing Marketing and Promotional Material” means brochures, package inserts,
product manuals, data books, signage and other sales, promotional, advertising and marketing
material, in whatever medium, of the MCD Business that are for use in connection with Existing
Licensee Business Products and that are in inventory or otherwise physically exist as of the
Closing Date.
“Existing Packaging” means containers, boxes, or other packaging materials of the MCD
Business that are for use in connection with Existing Licensee Business Products and that are in
inventory or otherwise physically exist as of the Closing Date.
“Licensee Business Products” means Existing Licensee Business Products and New
Licensee Business Products.
“Licensed Trademark” means the trademark applications for, the registrations of and
all trademark rights in the “XXXXXX” xxxx identified as Item 1. on Exhibit A hereto.
“Licensed Trade Name” means the trade name “XXXXXX” without a stylized “A”.
“New Licensee Business Products” means the products and services of Licensee and its
Subsidiaries the manufacture or production of which commences after the Closing Date.
“New Marketing and Promotional Material” means brochures, package inserts, product
manuals, data books, signage and other sales, promotional, advertising and marketing material, in
whatever medium, that are for use in connection with Licensee Business Products and that are
manufactured or produced, or otherwise do not physically exist until, after the Closing Date.
“New Packaging” means containers, boxes, or other packaging materials that are for use
in connection with Licensee Business Products and that are manufactured or produced, or otherwise
do not physically exist until, after the Closing Date.
“Subsidiary” means any subsidiary of any entity that is directly or indirectly
wholly-owned by such entity.
“Stylized Xxxx” means the trademark applications for, the registrations of and all
trademark rights in the “XXXXXX” with a stylized “A” xxxx identified as Item 2. on Exhibit A
hereto.
2. Grant of Limited Trademark License. Subject to the terms and conditions of this
Agreement, Licensor hereby grants to Licensee and its Subsidiaries for use solely by Licensee and
its Subsidiaries, and Licensee accepts from Licensor, a worldwide, royalty free, fully paid-up,
non-transferable, non-exclusive license, subject to termination as provided in Section 13 of this
Agreement, to use the Licensed Trademark and the Stylized Xxxx subject to and in accordance with
the following limitations:
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(a) with respect to the Existing Licensee Business Products, Existing Marketing and
Promotional Material and Existing Packaging only, in connection with the packaging, marketing,
sale, licensing, distribution and support of Existing Licensee Business Products by the Licensee
and any of its Subsidiaries prior to the 12-month anniversary of the Effective Date in the same
manner the Licensed Trademark and the Stylized Xxxx were used in the MCD Business (as defined in
the Formation Agreement) by the Licensor and its Subsidiaries immediately prior to the Closing
Date, with time being of the essence; provided, however, that beginning three (3) months
after the Effective Date, any such Existing Marketing and Promotional Material and/or Existing
Packaging used by Licensee or any of its Subsidiaries shall be stamped, stickered or otherwise
imprinted to prominently display Licensee’s corporate name prior to any use thereof; and
provided, further, that Licensee and its Subsidiaries shall refrain from all use of
Existing Marketing and Promotional Material and/or Existing Packaging after the 12-month
anniversary of the Effective Date and shall destroy all Existing Marketing and Promotional Material
and/or Existing Packaging which remains in Licensee’s or its Subsidiaries’ possession or control on
or prior to the 12-month anniversary of the Effective Date; and
(b) with respect to the New Licensee Business Products, New Marketing and Promotional Material
and New Packaging only, in connection with the packaging, marketing, sale, licensing, distribution
and support of Licensee Business Products by the Licensee and any of its Subsidiaries but only if
the Licensed Trademark is used as part of the “HARRIS” portion of a combined “XXXXXX STRATEX”
trademark; provided, however, that when labeling or otherwise marking a New Licensee
Business Product, the Licensed Trademark shall be used only as a component of the “XXXXXX STRATEX”
trademark and not in combination with any other xxxx(s), word(s) or symbol(s). In addition, the
“XXXXXX STRATEX” trademark must be displayed without any variation within such trademark in type
font, type size, color and boldness, and without any intervening or additional word(s) or
symbol(s).
(c) Notwithstanding anything to the contrary in this Section 2, within three (3) months after
the Closing Date, Licensee and its Subsidiaries shall remove the Stylized Xxxx from all buildings,
signs and vehicles used in connection with its business.
3. Grant of Limited Trade Name License. Licensor hereby grants to Licensee for use
solely by Licensee and its Subsidiaries, and Licensee accepts from Licensor, a personal, royalty
free, fully paid-up, worldwide, non-transferable, non-exclusive license, subject to termination as
provided in Section 13 of this Agreement, to use the Licensed Trade Name subject to and in
accordance with the following limitations:
(a) the Licensed Trade Name may only be used as part of Licensee’s and its Subsidiaries’
corporate and trade names;
(b) the Licensee may only use the Licensed Trade Name as part of its corporate and/or trade
name if its corporate name is “Xxxxxx Stratex Networks, Inc.”;
(c) any corporate or trade name containing the Licensed Trade Name must be used in conjunction
with the “Stratex” trade name solely in the following manner: “Xxxxxx Stratex” (with a space
between the Licensed Trade Name and the “Stratex” trade name);
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(d) except as otherwise provided pursuant to Section 3(f), all those words comprising any
corporate or trade name must be displayed without any variation within the corporate or trade name
in type font, type size, color and boldness, and without any intervening or additional word(s) or
symbol(s); and
(e) to the extent Licensee incorporates the Licensed Trade Name into the corporate and/or
trade name of any of its Subsidiaries, the name of any such Subsidiary shall comprise only “Xxxxxx
Stratex Networks”, an applicable geographic or country-specific identifier and an applicable
corporate form (or other entity) identifier.
(f) notwithstanding anything to the contrary in this Section 3, Licensee and its Subsidiaries
shall not have the right to, and shall not, use the Licensed Trade Name as the Stylized Xxxx,
except as may be permitted by Section 2 of this Agreement.
4. Non-Use. Licensee acknowledges and agrees that none of Licensee or its
Subsidiaries has any right to use the Licensed Trademark, the Stylized Xxxx or the Licensed Trade
Name or any other related marks or names anywhere in the world except pursuant to this Agreement,
and that Licensee and its Subsidiaries shall refrain from use of the Licensed Trademark, the
Stylized Xxxx and the Licensed Trade Name except pursuant to this Agreement.
5. No Transfers; No Sublicensing. None of Licensee or its Subsidiaries shall have the
right to transfer, directly or indirectly, its rights under this Agreement or grant sublicenses to
the Licensed Trademark, the Stylized Xxxx or Licensed Trade Name; provided that
notwithstanding the foregoing Licensee and its Subsidiaries may authorize persons contracted by
Licensee to manufacture its products to affix the Licensed Trademark, the Licensed Trade Name to
New Licensee Business Products, New Marketing and Promotional Material and New Packaging in
accordance with this Agreement.
6. Trademark and Logo Selection. Licensee and its Subsidiaries agree to refrain from
the adoption or use of any other trademark or trade name or logo that is, or contains any element
that is, confusingly similar to the Licensed Trademark, the Stylized Xxxx or the Licensed Trade
Name. Licensee and its Subsidiaries further agree not to use any logo, trademark or trade name
including the name “Xxxxxx” except as expressly permitted by, and in accordance with, the terms of
this Agreement.
7. Ownership; Validity; Notification of Infringement.
(a) Licensee and its Subsidiaries acknowledge that the Licensed Trademark, the Stylized Xxxx
and the Licensed Trade Name are the exclusive and sole property of Licensor. All use of the
Licensed Trademark, the Stylized Xxxx and the Licensed Trade Name by Licensee and its Subsidiaries
pursuant to this Agreement shall inure solely to Licensor’s benefit. Licensee and its Subsidiaries
further agree that neither they nor any of their agents or Affiliates will, at any time, directly
or indirectly challenge, contest, call into question or raise any questions concerning (i)
Licensor’s ownership or the validity of the Licensed Trade Name, the Licensed Trademark, the
Stylized Xxxx or any registration or application for registration for the Licensed Trademark or the
Stylized Xxxx or (ii) the fact that Licensee’s and its Subsidiaries’ rights under this
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Agreement are solely those of a licensee, which rights terminate (except as otherwise set
forth in this Agreement) upon termination of this Agreement.
(b) Licensor agrees that if Licensor receives notice of any pending or written claims,
proceedings, hearings or demands alleging that the Licensed Trademark, the Stylized Xxxx or the
Licensed Trade Name infringes or otherwise violates a third party’s proprietary right, or
challenging the legality, validity, enforceability or ownership of any of the Licensed Trademark,
the Stylized Xxxx or the Licensed Trade Name, Licensor will notify Licensee in writing promptly
following receipt of notice of such claims in order to permit Licensee and its Subsidiaries, at
their option, to cease using the Licensed Trademark, the Stylized Xxxx and the Licensed Trade Name
in accordance with this Agreement and/or immediately terminate their license rights under this
Agreement.
(c) Notwithstanding paragraph 7(b), Licensee and its Subsidiaries agree that they will not use
and will cease use of the Licensed Trademark and the Stylized Xxxx immediately and the Licensed
Trade Name as soon as reasonably practicable (including changing their respective corporate names,
and taking all steps as may be required under applicable corporate law to effect such name
change(s)), upon notice from Licensor that, in the sole opinion of Licensor, such use of the
Licensed Trademark, the Stylized Xxxx or the Licensed Trade Name could result in an adverse claim
by a third party against either Licensor or Licensee or their respective Affiliates.
(d) Licensee and its Subsidiaries shall give Licensor prompt written notice of any known or
potential infringement known to Licensee or any of its Subsidiaries of the Licensed Trademark, the
Stylized Xxxx or the Licensed Trade Name, and Licensee and its Subsidiaries, at Licensor’s expense,
shall render Licensor full cooperation for the protection of the Licensed Trademark, the Stylized
Xxxx and/or the Licensed Trade Name. If Licensor decides to enforce its rights in the Licensed
Trademark, the Stylized Xxxx and/or the Licensed Trade Name against a potential infringement, all
recoveries made shall be for the account of Licensor.
(e) It is understood that Licensee may contest and defend any claims, proceedings, hearings or
demands made against Licensee or any of its Subsidiaries by a third party challenging its use of
the Licensed Trademark, the Stylized Xxxx or the Licensed Trade Name but only to the extent that
such claim, proceeding, hearing or demand seeks a monetary recovery from Licensee or any of its
Subsidiaries.
8. Compliance, Etc.
(a) Licensee and its Subsidiaries agree to comply with any reasonable trademark and trade name
usage guidelines provided by Licensor to Licensee, as may be established from time to time by
Licensor, with respect to the appearance and manner of use of the Licensed Trademark, the Stylized
Xxxx and Licensed Trade Name. Each time Licensee or its Subsidiaries intend to use any form of the
Licensed Trademark, the Stylized Xxxx or the Licensed Trade Name not permitted by such usage
guidelines, Licensee or its Subsidiaries, as the case may be, shall submit such form to Licensor
for its prior written approval, notwithstanding any previous use by Licensee or its Subsidiaries of
such form of the Licensed Trademark, the
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Stylized Xxxx or Licensed Trade Name. Unless Licensor objects or denies approval for such use
within thirty (30) Business Days of actual receipt of notice of such use by Licensee (which notice
shall reference this section), such use shall be deemed approved by Licensor; provided that
the Licensor can by written notice to Licensee (specifying reasonable grounds for such notice)
later object to any subsequent use of the Licensed Trademark, the Stylized Xxxx or the Licensed
Trade Name in such a manner and Licensee or its Subsidiaries, as the case may be, shall cease such
use of the Licensed Trademark, the Stylized Xxxx or the Licensed Trade Name as soon as reasonably
practicable following the receipt of such notice. Representative specimens showing the use of the
Licensed Trademark, the Stylized Xxxx and/or the Licensed Trade Name by Licensee and its
Subsidiaries shall be sent to Licensor from time to time upon its reasonable request.
(b) Licensee and its Subsidiaries acknowledge that the rights of Licensor in the Licensed
Trademark, the Stylized Xxxx and the Licensed Trade Name are paramount to any right hereby granted
to Licensee and its Subsidiaries, and Licensee and its Subsidiaries agree that they will comply in
all material respects with all trademark laws and regulations of all countries where the Licensee
Business Products are marketed or sold or the Licensed Trademark, the Stylized Xxxx or the Licensed
Trade Name is used by Licensee and its Subsidiaries. Should Licensee’s and its Subsidiaries’
compliance with the laws or regulations of any country result in the potential dilution or loss of
trade name or trademark rights of Licensor in the Licensed Trademark, the Stylized Xxxx or the
Licensed Trade Name, Licensee and its Subsidiaries shall take such actions as may be reasonably
required by Licensor from time to time to preserve the validity and the strength of the Licensed
Trademark, the Stylized Xxxx and/or the Licensed Trade Name.
(c) At the reasonable request of Licensor, Licensee and its Subsidiaries agree to promptly
provide to Licensor a list of countries in which Licensee and its Subsidiaries intend to market or
sell the Licensee Business Products during the term of this Agreement or otherwise conduct business
using the Licensed Trade Name. Licensee and its Subsidiaries, at Licensor’s expense, shall
cooperate in assisting Licensor with filing or registering this Agreement (or relevant portions
thereof) in countries requiring the same, provided that if such filing requirement results
solely from Licensee’s or its Subsidiaries or their respective Affiliates’ use of the Licensed
Trademark, the Stylized Xxxx or Licensed Trade Name, then Licensee shall be responsible for all
expenses associated with complying with such filing requirement.
9. Quality Control. To protect the value of the Licensed Trademark and the Stylized
Xxxx, Licensee and its Subsidiaries agree that, during the term of this Agreement and for so long
as Licensee or any of its Subsidiaries is using the Licensed Trademark, the Stylized Xxxx or the
Licensed Trade Name, the Licensee Business Products manufactured, marketed and/or sold by Licensee
and its Subsidiaries will be substantially equivalent, at a minimum, in quality to the Licensee
Business Products presently being manufactured and sold by the Licensor as of the Closing Date with
respect to materials, workmanship, and performance. Licensee and its Subsidiaries shall not use
the Licensed Trademark, the Stylized Xxxx or the Licensed Trade Name in any manner which might
reasonably be expected to tarnish, disparage or reflect adversely on Licensor or any of its
Affiliates or the Licensed Trademark, the Stylized Xxxx or the Licensed Trade Name. Licensee and
its Subsidiaries shall comply in all material respects with all applicable laws and regulations in
the manufacture, sale, distribution and marketing of
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the Licensee Business Products, Existing Packaging, New Packaging, Existing Marketing and
Promotional Material, and New Marketing and Promotional Material bearing the Licensed Trademark,
the Stylized Xxxx or the Licensed Trade Name, and Licensee and its Subsidiaries shall use all
legends, notices, and markings as required by applicable law. Licensor reserves the right to
inspect the quality of the Licensee Business Products manufactured, sold, leased, distributed or
marketed by Licensee and its Subsidiaries under the Licensed Trademark, the Stylized Xxxx or the
Licensed Trade Name in order to ensure that the quality is as aforesaid and for the purpose of
maintaining in full force and effect Licensor’s rights to and in the Licensed Trademark, the
Stylized Xxxx and the Licensed Trade Name under applicable laws. From time to time, and at
Licensor’s expense, Licensor may send representatives to the plants of Licensee and its
Subsidiaries (or their contract manufacturers) to consult with and advise Licensee and its
Subsidiaries with respect to Licensee’s and its Subsidiaries’ quality control of the Licensee
Business Products; provided that Licensor shall provide Licensee with five (5) Business
Days prior written notice of such visits, that such visits shall be conducted during Licensee’s
normal business hours and in a manner so as not to disrupt Licensee’s business operations, and
Licensor’s representatives agree to a reasonable confidentiality agreement provided by Licensee and
to comply with Licensee’s (or its contract manufacturer’s) then-current security practices and
procedures on each visit. In response to any reasonable request by Licensor, Licensee and its
Subsidiaries shall, from time to time, at Licensor’s option, send to Licensor one or more of the
following: (i) copies of Licensee’s and its Subsidiaries’ quality assurance tests, or equivalents,
conducted on the Licensee Business Products, (ii) representative samples of the Licensee Business
Products (free of cost and at the expense of Licensee) or (iii) a written certification that all
Licensee Business Products sold by Licensee or any of its Subsidiaries during the relevant period
have been at least equivalent in quality to the Licensee Business Products presently being
manufactured and sold by Licensor immediately prior to the Closing with regard to material,
workmanship and performance. Nothing in this agreement shall prohibit Licensor from acquiring
Licensee Business Products independently or otherwise independently verifying Licensee’s or its
Subsidiaries’ adherence to the quality standards set forth in this Section 9.
10. Coordination. At the request of Licensor, Licensee shall assign and identify an
employee to be responsible for coordinating the communications with Licensor concerning the
administrative matters involved in the performance under this Agreement.
11. Disclaimer of Warranty. LICENSOR MAKES NO REPRESENTATIONS OR WARRANTIES AS TO THE
QUALITY, SUITABILITY, AVAILABILITY OR ADEQUACY OF THE LICENSED MARKS OR THE LICENSED TRADE NAME,
AND LICENSOR MAKES NO EXPRESS, STATUTORY OR IMPLIED REPRESENTATIONS OR WARRANTIES, AT LAW OR IN
EQUITY, INCLUDING, WITHOUT LIMITATION, WARRANTIES OF MERCHANTABILITY, FITNESS FOR ANY PARTICULAR
PURPOSE, TITLE, NON-INFRINGEMENT, QUIET ENJOYMENT, NO ENCUMBRANCES AND WARRANTIES ARISING THROUGH
COURSE OF DEALING OR USAGE OF TRADE, AND LICENSOR HEREBY EXPRESSLY DISCLAIMS ANY AND ALL SUCH
REPRESENTATIONS AND WARRANTIES.
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12. Limitation of Liability; Indemnification; Limitation of Damages.
(a) Licensor assumes no responsibility or obligation to Licensee and its Subsidiaries pursuant
to this Agreement regarding the safety, reliability, performance, or marketability of any Licensee
Business Products manufactured, marketed and/or sold by Licensee and its Subsidiaries, whether or
not such goods are in compliance with Section 9.
(b) Licensee and its Subsidiaries agree that none of Licensor and its Affiliates and their
respective, officers, directors, employees, stockholders, agents, representatives, successors and
assigns (each, a “Licensor Indemnified Person” and collectively, the “Licensor
Indemnified Persons”) shall have any liability, whether direct or indirect, in contract or tort
or otherwise, to Licensee or any of its Affiliates for or in connection with the licenses granted
by Licensor pursuant to this Agreement or any other transactions contemplated by this Agreement, or
any Licensor Indemnified Person’s actions or inactions in connection with any such licenses or
transactions, except for damages which have directly resulted from such Licensor Indemnified
Person’s gross negligence or willful misconduct in connection with any such licenses, transactions,
actions or inactions.
(c) Licensee shall indemnify, defend and hold harmless each Licensor Indemnified Person from
and against all Losses, and shall reimburse each Licensor Indemnified Person for all reasonable
expenses (including reasonable attorneys’ fees) as they are incurred in investigating, preparing,
pursuing, or defending any claim, action, proceeding, or investigation, whether or not in
connection with pending or threatened litigation and whether or not any Licensor Indemnified Person
is a party (each, an “Action”), based upon, related to, arising out of, or in connection or
associated with (i) the licenses granted by Licensor pursuant to this Agreement or any other
transaction contemplated by this Agreement, or any Licensor Indemnified Person’s actions or
inactions in connection with any such licenses or transactions, provided, that no Licensee
Indemnified Person (as herein defined) will be responsible for any damages of any Licensor
Indemnified Person that have directly resulted from such Licensor Indemnified Person’s gross
negligence or willful misconduct in connection with any such licenses, transactions, actions, or
inactions; (ii) the manufacture, quality, safety, reliability, performance, or marketability of any
of the Licensee Business Products manufactured, produced, marketed or sold by Licensee or its
Subsidiaries; (iii) any injury to persons or property due to the use of Licensee Business Products
manufactured, produced, marketed or sold by Licensee or its Subsidiaries; (iv) the Licensee’s or
its Subsidiaries’ use of the Licensed Trademark, the Stylized Xxxx or the Licensed Trade Name;
provided, however, that Licensee shall have no obligation to indemnify any Licensor
Indemnified Person pursuant to any of the foregoing clauses (i)-(iv) with respect to any Action
that is identified as an Excluded Liability (as such term is defined in the Formation Agreement).
(d) Licensor shall indemnify, defend and hold harmless Licensee and its Affiliates and their
respective, officers, directors, employees, stockholders, agents, representatives, successors and
assigns (each, a “Licensee Indemnified Person” and collectively, the “Licensee
Indemnified Persons”) from and against all Losses, and shall reimburse each Licensee
Indemnified Person for all reasonable expenses (including reasonable attorneys’ fees) as they are
incurred in investigating, preparing, pursuing or defending any Action only to the extent such
Losses (i) arise directly out of the gross negligence or willful
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misconduct of any Licensor Indemnified Person in connection with the licenses granted by
Licensor pursuant to this Agreement or (ii) are identified as an Excluded Liability (as such term
is defined in the Formation Agreement).
(e) The indemnification procedures set forth in Section 12.2(b) and Section 12.4 of the
Formation Agreement shall apply to any claims for indemnification brought pursuant to this Article
3.
(f) EXCEPT PURSUANT TO THE INDEMNITY OBLIGATIONS UNDER THIS SECTION 12, NEITHER LICENSOR SHALL
BE LIABLE TO ANY LICENSEE INDEMNIFIED PERSON NOR LICENSEE SHALL BE LIABLE TO ANY LICENSOR
INDEMNIFIED PERSON, IN EITHER CASE, IN ANY MANNER FOR ANY SPECIAL, INDIRECT, INCIDENTAL OR
CONSEQUENTIAL DAMAGES ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT, EVEN IF INFORMED OF THE
POSSIBILITY THEREOF IN ADVANCE, EXCEPT THAT THE FOREGOING LIMITATION OF DAMAGES HAS NO APPLICATION
WHERE THE DAMAGES RESULT FROM LICENSEE’S OR ANY OF ITS AFFILIATES’ USE OF THE LICENSED TRADEMARK,
THE STYLIZED XXXX OR THE LICENSED TRADE NAME IN MATERIAL BREACH OR DEFAULT OF ANY TERM, PROVISION
OR LIMITATION SET FORTH IN THIS AGREEMENT, OR OTHERWISE OUTSIDE OF THE SCOPE OF THIS AGREEMENT.
13. Termination.
(a) Licensor shall have the right to terminate this Agreement and the licenses granted under
this Agreement: (i) if Licensee or any of its Subsidiaries shall materially default in performing
any of the terms and conditions of this Agreement and shall fail to remedy such material default
within thirty (30) days after receiving written notice thereof (the “Notice Date”) from
Licensor; provided, however, that if such default can be remedied but cannot be so remedied
within such thirty (30) day period notwithstanding the exercise of commercially reasonable efforts
by the Company to do so, within thirty (30) days after the Notice Date Licensee shall create a
program designed to remedy such default as soon as reasonably possible but no later than six (6)
months from the Notice Date and Licensee shall then use commercially reasonable efforts remedy such
default as soon as possible, and Licensor shall have the right to terminate this Agreement and the
licenses granted under this Agreement if such default is not remedied within six months after the
Notice Date; provided, further, that in the event of a material default of Section 9 by
Licensee or any of its Subsidiaries which affects some but not all of the Licensee Business
Products, such termination shall be applicable only as to the Licensee Business Products affected
by such default; (ii) upon written notice to Licensee in the event that Licensee or any of its
Subsidiaries shall be adjudged bankrupt, become insolvent, make an assignment for the benefit of
creditors, have a receiver or trustee appointed, file a petition for bankruptcy, or initiate
reorganization proceedings or take steps toward liquidation of a substantial part of its property
or assets; or (iii) upon six (6) months written notice to Licensee at any time Licensor no longer
is entitled to cast a majority of the Total Voting Power (as such term is defined in the Investor
Agreement).
(b) Licensee may terminate the licenses granted under this Agreement at any time for any
reason or no reason upon providing written notice to Licensor.
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(c) Upon termination of this Agreement, the licenses granted under this Agreement shall
terminate, and Licensee and its Subsidiaries shall discontinue and cease use of (i) the Licensed
Trademark and, the Stylized Xxxx immediately and (ii) the Licensed Trade Name as soon as reasonably
practicable but in any event no more than 90 days (including changing their respective corporate
names, and taking all steps as may be required under applicable corporate law to effect such name
change(s)); provided, however, in the case of a termination pursuant to Section 13(a),
Licensee and its Subsidiaries shall cease using the Licensed Trade Name immediately.
(d) Upon the termination of this Agreement, Licensee and its Subsidiaries expressly agree not
to use any marks or logos that may be confusingly similar to the Licensed Trademark, the Stylized
Xxxx or the Licensed Trade Name.
(e) This provisions of Sections 12 through 29, inclusive shall survive the termination of this
Agreement.
14. Governing Law and Venue; Waiver of Jury Trial.
(a) THIS AGREEMENT SHALL BE DEEMED TO BE MADE IN AND IN ALL RESPECTS SHALL BE INTERPRETED,
CONSTRUED AND GOVERNED BY AND IN ACCORDANCE WITH THE LAW OF THE STATE OF DELAWARE WITHOUT REGARD TO
THE CONFLICT OF LAW PRINCIPLES THEREOF. The parties hereby irrevocably submit to the jurisdiction
of the courts of the State of Delaware and the Federal courts of the United States of America
located in the State of Delaware solely in respect of the interpretation and enforcement of the
provisions of this Agreement and of the documents referred to in this Agreement, and in respect of
the transactions contemplated hereby, and hereby waive, and agree not to assert, as a defense in
any action, suit or proceeding for the interpretation or enforcement hereof or of any such
document, that it is not subject thereto or that such action, suit or proceeding may not be brought
or is not maintainable in said courts or that the venue thereof may not be appropriate or that this
Agreement or any such document may not be enforced in or by such courts, and the parties hereto
irrevocably agree that all claims with respect to such action or proceeding shall be heard and
determined in such a Delaware State or Federal court; provided, however, that
notwithstanding the foregoing each party agrees that any claim which primarily seeks injunctive
relief and related monetary claims that cannot be brought in any such Delaware State or Federal
court for jurisdiction reasons may be commenced, heard and determined in any other court having
proper jurisdiction over such claim. The parties hereby consent to and grant any such court
jurisdiction over the person of such parties and, to the extent permitted by law, over the subject
matter of such dispute and agree that mailing of process or other papers in connection with any
such action or proceeding in the manner provided in Section 22 or in such other manner as may be
permitted by law shall be valid and sufficient service thereof.
(b) EACH PARTY ACKNOWLEDGES AND AGREES THAT ANY CONTROVERSY WHICH MAY ARISE UNDER THIS
AGREEMENT IS LIKELY TO INVOLVE COMPLICATED AND DIFFICULT ISSUES, AND THEREFORE EACH SUCH PARTY
HEREBY IRREVOCABLY AND UNCONDITIONALLY WAIVES ANY RIGHT SUCH PARTY MAY HAVE TO A TRIAL BY JURY IN
RESPECT OF ANY LITIGATION
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DIRECTLY OR INDIRECTLY ARISING OUT OF OR RELATING TO THIS AGREEMENT, OR THE TRANSACTIONS
CONTEMPLATED BY THIS AGREEMENT. EACH PARTY CERTIFIES AND ACKNOWLEDGES THAT (I) NO REPRESENTATIVE,
AGENT OR ATTORNEY OF ANY OTHER PARTY HAS REPRESENTED, EXPRESSLY OR OTHERWISE, THAT SUCH OTHER PARTY
WOULD NOT, IN THE EVENT OF LITIGATION, SEEK TO ENFORCE THE FOREGOING WAIVER, (II) EACH PARTY
UNDERSTANDS AND HAS CONSIDERED THE IMPLICATIONS OF THIS WAIVER, (III) EACH PARTY MAKES THIS WAIVER
VOLUNTARILY, AND (IV) EACH PARTY HAS BEEN INDUCED TO ENTER INTO THIS AGREEMENT BY, AMONG OTHER
THINGS, THE MUTUAL WAIVERS AND CERTIFICATIONS IN THIS SECTION 14.
15. Injunction. The parties agree that each party shall have the right to a claim for
injunctive relief in the event of any repudiation or breach or attempted repudiation or breach, of
any term or condition hereunder, and acknowledge that for any such claim, a remedy at law may be
inadequate.
16. Headings. The headings in this Agreement are included for convenience of
reference only and shall not in any way limit or otherwise affect the meaning or interpretation of
this Agreement.
17. Severability. If any provision of this Agreement shall be held to be illegal,
invalid or unenforceable, that provision will be enforced to the maximum extent permissible so as
to effect the intent of the parties, and the validity, legality and enforceability of the remaining
provisions shall not in any way be affected or impaired thereby. If necessary to effect the intent
of the parties, the parties will negotiate in good faith to amend this Agreement to replace the
unenforceable language with enforceable language which as closely as possible reflects such intent.
18. Relationship of the Parties. Licensor has no authority (express, implied or
apparent) to represent Licensee as to any matters or to incur any obligations or liability on
behalf of Licensee, and Licensor shall not be, act as, purport to act as, or be deemed to be, the
agent, representative, employee or servant of Licensee. Licensee and its Subsidiaries have no
authority (express, implied or apparent) to represent Licensor as to any matters or to incur any
obligations or liability on behalf of Licensor, and Licensee and its Subsidiaries shall not be, act
as, purport to act as, or be deemed to be, the agent, representative, employee or servant of
Licensor. No partnership, joint venture, association, alliance, syndicate, or other entity, or
fiduciary, employee/employer, principal/agent or any relationship other than that of independent
contractors is created hereby, expressly or by implication.
19. Entire Agreement; Controlling Provisions. This Agreement and any Schedules and
Exhibits attached hereto constitute the entire agreement between the parties relating to the
subject matter hereof and thereof and any and all prior arrangements, representations, promises,
understandings and conditions in connection with said matters and any representations, promises or
conditions not expressly incorporated herein or therein or expressly made a part hereof or thereof
shall not be binding upon any party. If there is any conflict or inconsistency between the terms
and conditions set forth in the main body of this Agreement and any of the Exhibits to this
Agreement, the provisions of the Exhibits shall control with respect to the rights and obligations
-11-
of the parties regarding the Licensed Trademark, the Stylized Xxxx and the Licensed Trade
Name. If there is any conflict or inconsistency between the terms and conditions of this Agreement
and the Formation Agreement, the provisions of this Agreement shall control solely with respect to
the rights and obligations of the parties regarding the Licensed Trademark, the Stylized Xxxx and
the Licensed Trade Name.
20. Amendments; Waiver. Unless otherwise expressly provided herein, this Agreement
may be amended or any performance, term or condition waived in whole or in part only by a writing
signed by persons authorized to so bind each party (in the case of an amendment) or the waiving
party (in the case of a waiver). No failure or delay by any party to take any action with respect
to a breach by another party of this Agreement or a default by another party hereunder shall
constitute a waiver of the former party’s right to enforce any provision of this Agreement or to
take action with respect to such breach or default or any subsequent breach or default. Waiver by
any party of any breach or failure to comply with any provision of this Agreement by another party
shall not be construed as, or constitute, a continuing wavier of such provisions, or a waiver of
any other breach of or failure to comply with any other provisions of this Agreement.
21. Assignment. Licensee and its Subsidiaries may not assign this Agreement or any
rights, benefits, obligations or remedies hereunder (including without limitation through a
sublicense or by operation of Law through a merger or other similar transaction) without the prior
written consent of Licensor, which consent may be withheld in Licensor’s sole discretion. No such
permitted assignment shall relieve Licensee or any of its Subsidiaries of its obligations
hereunder, and any attempt so to assign or to delegate any of the foregoing without such consent
shall be void and of no effect. Licensor has the right to assign this Agreement to any subsequent
owner of the Licensed Trademark, the Stylized Xxxx or the Licensed Trade Name, provided
that such assignee agrees in writing to be bound to Licensee by all of the terms and conditions of
this Agreement. This Agreement shall be binding upon, inure to the benefit of and be enforceable
by and against the parties hereto and their respective successors and permitted assigns.
22. Notices. Any notice, request, instruction or other document to be given hereunder
by any party to the others shall be in writing and delivered personally or sent by registered or
certified mail or by overnight courier, postage prepaid, or by facsimile:
| if to Licensor: Xxxxxx Corporation 0000 Xxxx XXXX Xxxx. Xxxxxxxxx, XX 00000 Attn: Xxxxx X. Xxxxxx fax: (000) 000-0000 |
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| with a copy to (which shall not constitute notice): Xxxxxx Corporation 0000 Xxxx XXXX Xxxx. Xxxxxxxxx, XX 00000 Attn: Xxxxx Xxxxxxx fax: (000) 000-0000 if to Licensee: Xxxxxx Stratex Networks, Inc. Research Triangle Park 000 Xxxxx Xxxxx Xxxxxxxxxxx, XX 00000 Attn: General Counsel fax: (000) 000-0000 with a copy to (which shall not constitute notice): Xxxxxxx XxXxxxxxx LLP 0000 Xxxxxxxxxx Xxxxxx Xxxx Xxxx Xxxx, XX 00000 Attn: Xxxx Xxxxxx fax: (000) 000-0000 |
or to such other Persons or addresses as may be designated in writing by the party to receive such
notice as provided above. Any notice, request, instruction or other document given as provided
above shall be deemed given to the receiving party upon actual receipt, if delivered personally;
three (3) Business Days after deposit in the mail, if sent by registered or certified mail; upon
confirmation of successful transmission if sent by facsimile (provided that if given by facsimile
such notice, request, instruction or other document shall be followed up within one (1) Business
Day by dispatch pursuant to one of the other methods described herein); or on the next Business Day
after deposit with a nationally-recognized overnight courier, if sent by nationally-recognized
overnight courier.
23. 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, taken together, shall constitute one
and the same instrument.
24. Effectiveness. This Agreement shall become effective only when one or more
counterparts shall have been signed by each party and delivered to each other party.
25. No Third-Party Beneficiaries. Except with respect to the indemnification rights
under Section 12 of this Agreement, this Agreement is intended to be for the sole and
exclusive benefit of the parties hereto and their respective successors and permitted assigns.
Nothing contained in this Agreement is intended or shall be construed to give any other Person any
legal or equitable right, remedy, or claim under or in respect to this Agreement or any provision
herein contained.
26. Fees. In any action or proceeding related to or arising out of the enforcement
of, or defense against, any provision of this Agreement, the non-prevailing party in such action or
proceeding shall pay, and the prevailing party shall be entitled to, all reasonable out-of-pocket
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costs and expenses (including reasonable attorneys’ fees) of the prevailing party incurred in
connection with such action or proceeding.
27. Construction. The table of contents and headings herein are for convenience of
reference only, do not constitute part of this Agreement and shall not be deemed to limit or
otherwise affect any of the provisions hereof. The parties and their respective counsel have
participated jointly in negotiating and drafting this Agreement. In the event that an ambiguity or
a question of intent or interpretation arises, this Agreement shall be construed as if drafted
jointly by the parties, and no presumption or burden of proof shall arise favoring or disfavoring
any party by virtue of the authorship of any provision of this Agreement. The following provisions
shall be applied wherever appropriate herein: (a) “herein,” “hereby,” “hereunder,” “hereof” and
other equivalent words shall refer to this Agreement as an entirety and not solely to the
particular portion of this Agreement in which any such word is used; (b) all definitions set forth
herein shall be deemed applicable whether the words defined are used herein in the singular or the
plural; (c) wherever used herein and whenever the context requires, any pronoun or pronouns shall
be deemed to include both the singular and plural and to cover all genders; (d) all accounting
terms not specifically defined herein shall be construed in accordance with GAAP; (e) any
references herein to a particular Section, Article, Exhibit or Schedule means a Section or Article
of, or an Exhibit or Schedule to, this Agreement unless another agreement is specified; and (f) the
Exhibits and Schedules attached hereto are incorporated herein by reference and shall be considered
part of this Agreement.
28. Contract Provision. Licensee agrees that it shall, and shall cause each of its
Subsidiaries, to include a provision in each contract to which it becomes a party on or after the
Effective Date which provides in substance that the other party to such contract acknowledges and
agrees that Licensor and Licensee or its Subsidiary, as the case may be, are separate legal
entities and that such contract and the duties and obligations of Licensee or its Subsidiaries, as
the case may be, thereunder and the performance thereof are in no way no binding upon or guaranteed
by Licensor. Licensee or its Subsidiaries shall not be obligated to comply with this Section 28 at
such time as the corporate name of Licensee or such Subsidiary, as the case may be, does not
include the Licensed Trade Name.
29. Management of Enforcement by Licensee. Licensor agrees that a majority of the
Class A Directors (as defined in the Investor Agreement) shall have the sole and exclusive right to
exercise and enforce any rights under this Agreement which Licensee or any of its Subsidiaries are
entitled to enforce against Licensor after the Closing. In addition, any amendment to or waiver of
the terms of this Agreement by Licensee in accordance with Section 20 shall require the approval of
a majority of the Class A Directors.
[Signature Page Follows]
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be signed by their
respective duly authorized officers all as of this day and year first above mentioned.
| XXXXXX CORPORATION, as Licensor |
| By | /s/ R. Xxxx Xxxxxxxx |
|
|
|
| Name: R. Xxxx Xxxxxxxx | |
| Title: Vice President, Corporate Technology and Development | |
| XXXXXX STRATEX NETWORKS, INC., as Licensee |
| By | /s/ Xxx X. Xxxxxxxx |
|
|
|
| Name: Xxx X. Xxxxxxxx | |
| Title: Chief Executive Officer and President |
-15-
Exhibit
A
[omitted]
