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ANNEX D
LIMITED LICENSE AGREEMENT
This Limited License Agreement (the "Agreement") dated as of January
___, 1997, between Xxxx Xxxxxxx Mutual Life Insurance Company, a mutual life
insurance corporation organized and existing under the laws of the Commonwealth
of Massachusetts ("Licensor") and Unicare Life & Health Insurance Company, a
stock life insurance company organized and existing under the laws of the State
of Delaware ("Licensee") is the License Agreement contemplated by the Purchase
and Sale Agreement between Licensor and Licensee dated as of October 10, 1996
(the "Purchase Agreement").
W I T N E S S E T H
WHEREAS, Licensor is the owner of rights (including, without
limitation, common law rights and registered state and federal copyrights,
trademarks and service marks) in the Territory (as defined below) in and to the
names set forth on Schedule A and any abbreviation, derivation, colorable
imitation or variation thereof (the "Names"), and the goodwill associated
therewith including, but not limited to, the registrations and applications set
forth in Schedule A attached hereto and made a part hereof (collectively, the
"Name Rights");
WHEREAS, Licensor is transferring to Licensee (as defined below) the
GBO Included Business (as defined in the Purchase Agreement) consisting of
certain assets of Licensor as described in the Purchase Agreement;
WHEREAS, Licensor and Licensee are entering into a Coinsurance
Agreement (the "Coinsurance Agreement") on the date hereof under which the
Licensor will cede, and the Licensee will reinsure, on a 100% coinsurance basis,
certain Reserves and Liabilities under the Coinsured Policies which consist of
the Existing GBO Policies and the Transition GBO Policies (the terms "Reserves
and Liabilities," "Insurance Policies," "Coinsured Policies," "Existing GBO
Policies," and "Transition GBO Policies" having the meanings set forth in the
Purchase Agreement, or, if not defined in the Purchase Agreement, the
Coinsurance Agreement);
WHEREAS, Licensor and Licensee are entering into an Administration
Agreement (the "Administration Agreement") on the date hereof whereby Licensee
agrees to perform for Licensor services required for the administration of the
Coinsured Policies;
WHEREAS, pursuant to Section 8.5 of the Purchase Agreement, Licensor
has agreed to grant to Licensee the right and license to use the Names as
provided in this License Agreement in the performance of the services required
to be performed by Licensee under the Administration Agreement and the
Coinsurance Agreement and the
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consummation of the transactions contemplated by the Purchase Agreement
(including the Transaction Documents referenced therein);
WHEREAS, subject to the terms and conditions hereinafter set forth,
Licensee desires to obtain such license as contemplated in the Purchase
Agreement and Licensor is willing to grant to Licensee such license;
NOW, THEREFORE, in consideration of the premises and of the mutual
covenants herein contained, and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, and intending to be
legally bound, the parties agree as follows:
A G R E E M E N T
1. Certain Definitions
Capitalized terms not otherwise defined herein shall have the meanings
ascribed to such terms in the Purchase Agreement.
"Agreement" means this License Agreement as it may be amended from time
to time.
"Licensee" means Unicare Life & Health Insurance Company and any
successor (including, but not limited to, the surviving company of any merger or
reorganization involving the Licensee) or permitted assignee thereof.
"Licensor" means Licensor and any successor (including, but not limited
to, the surviving company of any merger or reorganization involving the
Licensor) or assignee thereof.
"Term" means the term of this Agreement as set forth in Section 5
hereof.
"Territory" means the United States, Guam and Puerto Rico.
2. Grant of License
Licensor hereby grants to Licensee, subject to the terms and conditions
of this Agreement, a personal, nonexclusive, royalty-free, limited license,
without the right to sublicense, under the Name Rights to use the Names in the
Territory during the Term solely for the purpose of performing its duties and
obligations under the Administration Agreement and the Coinsurance Agreement and
the consummation of the transactions contemplated by the Purchase Agreement and
the other Transaction Documents. So long as Licensee is in the same line of
business in the United States, for a period of five (5) years from the date of
this License Agreement, Licensor will not grant any rights under the Name Rights
to any third party to use the Names in the United States in the Subject Business
(as defined in the Purchase Agreement), except where such use of Name Rights, if
done directly by Licensor, would not violate the covenant not to
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compete contained in Section 5.11 of the Purchase Agreement. Licensee's rights
to use the Names shall be subject to the following limitations:
(a) Licensee shall use the Names during the Term in the performance of
its duties and obligations under the Administration Agreement and the
Coinsurance Agreement with respect to the GBO Included Business and the
consummation of the transactions contemplated in the Purchase Agreement and the
other Transaction Documents as follows:
(i) On Licensor's business forms presently used in the conduct of
the GBO Included Business, Licensee shall have the right to use the Names
as used in the forms in the performance of its duties and obligations under
the Administration Agreement.
(ii) In Licensor's marketing materials and advertisements used
with respect to products of the GBO Included Business (whether alone or in
conjunction with other products offered by Affiliates of Licensee),
Licensee shall have the right to use the Names during the Term; provided,
however, that such marketing material and advertisements either shall be
substantially similar in form and content and circumstances for proposed
use to that used by Licensor prior to the date of this License Agreement or
shall be approved by Licensor in writing prior to the use thereof, which
approval shall not be unreasonably withheld; and provided, further, that
all use of such marketing materials or advertisements by Licensee must be
made in compliance with all applicable law. Licensor shall designate a
member of its legal department to approve marketing materials, and all
materials not specifically disapproved in writing within five (5) Business
Days after submission for approval to Licensor by Licensee shall be deemed
approved.
(iii) To the extent required by law or regulatory authorities in
connection with performing the duties and obligations under the
Administration Agreement and the Coinsurance Agreement and the consummation
of the transactions contemplated by the Purchase Agreement and the other
Transaction Documents, Licensee will give Licensor prior written notice of
each use of the Names pursuant to this Section 2(a)(iii).
In addition, during the Term hereof through the last Transition
Termination Date (i) Licensee may use the phrase "formerly issued by Xxxx
Xxxxxxx Mutual Life Insurance Company" with respect to Insurance Policies issued
by Licensee as a continuation of the GBO Included Business after the Effective
Time and (ii) Licensee may use the phrase "formerly conducted by Xxxx Xxxxxxx
Mutual Life Insurance Company" with respect to the provision of administrative
services by Licensee as a continuation of the GBO Included Business after the
Effective Time.
(b) In using the Names as provided in Section 2(a) above, Licensee
shall not use the Names in any manner which jeopardizes the significance,
distinctiveness, or validity thereof or impairs the value of the goodwill
associated therewith. Licensee shall permit Licensor's authorized
representative(s) to review
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relevant materials related to the use of the Name from time to time during the
Term for the purpose of determining conformity with the quality standards
specified in Section 4 hereof.
(c) Where required by applicable law in the Territory, the Names shall
be identified as a trademark or service xxxx of Licensor by appropriate
statutory notice. Any such requirements as of the Closing Date shall be set
forth on Schedule A attached hereto. Licensee shall use such additional required
statutory trademark notice or other marking as may be reasonably requested in
writing by Licensor from time to time. Licensor shall be obligated to give
timely notice to Licensee of any change in required statutory notice after the
Closing Date, including the maturation of applications into registrations.
(d) Licensee agrees during and after the Term (i) not to use the Names
or any variation thereof outside the Territory, and (ii) not to seek
registration of the Names or any variation thereof in any jurisdiction.
(e) To the extent required by law or regulation, all advertising and
other materials utilized by Licensee bearing the Names shall clearly indicate
that use of the Names is under license from the Licensor.
(f) Licensee shall not have any title or interest, express or implied,
in the Names or the right to use the Names, except as provided herein and
subject to the terms and conditions stated in this Agreement. No license, either
express or implied, is granted by Licensor to Licensee hereunder with respect to
any trademark or service xxxx or otherwise except as specifically stated herein.
3. Indemnification
(a) Licensee shall indemnify, defend, and hold Licensor, its
Affiliates, and their respective directors, officers, employees and agents,
harmless from and against any Liability paid or incurred arising out of the
marketing, offering, issuance, sale or performance of any products or services
bearing the Names or offered under the Names by Licensee following the Closing
or otherwise arising in any manner out of the use of the name by Licensee
(including, without limitation, the reasonable costs or expenses of
investigating and defending any and all actions, suits, proceedings, demands,
assessments, judgments, settlements and compromises relating thereto and
reasonable attorneys' fees in connection therewith) ("Licensor Indemnifiable
Losses"); provided, however, that Licensee shall not have any obligation to
indemnify Licensor for Licensor Indemnifiable Losses (i) arising out of
Licensor's failure to have or maintain valid intellectual property rights in the
Names as specified in Schedule A hereof, to the extent such failure is not
attributable to actions by Licensee or failure by Licensee to take actions
required by the terms of this License Agreement, or (ii) arising in connection
with a use of the Names which gives rise to a valid claim by Licensee against
Licensor pursuant to the indemnification provisions set forth in subsection (b)
of this Section 3.
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(b) Licensor shall indemnify, defend and hold harmless Licensee, its
Affiliates, and their respective directors, officers, employees and agents,
harmless from and against any Liability (including, without limitation, the
reasonable costs or expenses of investigating and defending any and all actions,
suits, proceedings, demands, assessments, judgments, settlements and compromises
relating thereto and reasonable attor- neys' fees in connection therewith) (i)
arising out of Licensor's failure to have or maintain valid intellectual
property rights in the Names, to the extent such failure is not attributable to
actions by Licensee or failure by Licensee to take actions required by the terms
of this License Agreement, and (ii) arising out of any third party claim that
Licensee's use of the Names pursuant to this Agreement infringes such third
party's intellectual property rights.
(c) The indemnification contemplated in this Section 3 shall be from
the first dollar and independent of and in addition to the provisions set forth
in Article XIV of the Purchase Agreement, except that indemnification under this
Section 3 shall be made using the procedures, terms and conditions contained in
Sections 14.2 and 14.3 of the Purchase Agreement as if fully set forth herein,
with (i) references in Section 14.2(a) to "indemnification under Section 14.1 of
this Agreement" changed to refer to "indemnification under Section 3 of this
License Agreement", (ii) the phrase "except as provided in Section 14.1(g) and"
deleted in Section 14.2(c), (iii) references in Section 14.3 to "this Article
XIV" shall be changed to refer to "this Section 3", and (iv) the phrases "and,
in any event, within the time period referred to in Section 14.1(g)" and "So
long as Indemnitee provides the Indemnity Notice within the time period referred
to in Section 14.1(g)" deleted from the text of Section 14.3.
4. Quality Standards
(a) As a condition to the rights and licenses granted herein, Licensee
shall perform the services required pursuant to the Administration Agreement and
the Coinsurance Agreement in accordance with the standards set forth in the
Administration Agreement.
(b) Licensee shall be responsible for ensuring that the products and
services offered by Licensee under the Names will comply and be conducted in
accordance with applicable laws and regulations.
5. Term; Effect of Termination
(a) This Agreement and the licenses granted in Section 2 hereof shall
become effective as of the Closing Date. Unless earlier terminated in accordance
with the provisions of this Section 5, the license granted pursuant to Section
2(a)(ii) shall be terminated as of the last Transition Termination Date as set
forth in the Coinsurance Agreement. Unless earlier terminated in accordance with
the provisions of this Section 5, the license granted pursuant to Section
2(a)(i) and (iii) hereof shall continue in full force and effect until the
termination of the Administration Agreement.
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(b) This Agreement may be terminated by Licensor, at its option, upon
written notice to Licensee if there shall occur a material breach of a material
provision of this Agreement and such breach is not cured within thirty (30) days
after written notice from Licensor to Licensee.
(c) Upon the termination of this Agreement by Licensor, Licensee shall,
subject to applicable regulatory requirements, cease use of the Names and shall
destroy, give reasonably timely notice to all agents and employees to destroy
or, at the request of Licensor, return to Licensor, all written materials
bearing the Names, and Licensee shall immediately change any trade name or d/b/a
to a name which does not include the Names (except with respect to words therein
other than "Xxxx Xxxxxxx" or a derivative thereof which are not distinctive to
Seller), to the extent not already changed, and shall not thereafter use the
Names or indicate that Licensee is a trademark licensee of Licensor. In
addition, after such termination, Licensee shall refrain from using or
displaying any advertising or promotional material or performing any other act
which would cause anyone to infer or believe Licensee to be licensee of Licensor
with respect to the Name Rights.
(d) Termination of this Agreement shall not release either party from
any Liability incurred while this Agreement was in effect or which thereafter
may accrue in respect of any act or omission that occurred prior to termination,
nor shall termination affect in any way survival of this Section 4 or the
indemnification provisions of Section 3, and any other right or obligation
which, by its context, is intended to remain in effect after termination.
(e) Upon termination of this Agreement, Licensee shall promptly perform
all reasonable acts which may be necessary to render effective the termination
of its interest in the Names including, but not limited to, the cancellation of
any registration or recordation of this Agreement or any summary thereof, and
Licensee shall execute any assignment, conveyance, acknowledgment, or other
document required or requested by Licensor relinquishing or conveying to
Licensor any and all rights to or interest in the Names which Licensee has or
may have acquired.
(f) The rights and remedies set forth in this Section 4 are in addition
to all other rights and remedies available at law or equity.
6. Protection of Licensed Marks; Litigation.
(a) Licensor and Licensee agree to notify each other promptly if either
party receives notice of (i) any conflicting uses of, or any applications of or
registrations for, a trademark or service xxxx that may conflict with the Names,
(ii) any acts of infringement or unfair competition involving the Names, or
(iii) any allegations that the use of the Names by Licensor or Licensee
infringes the trademark or service xxxx or other rights (including rights
relating to unfair competition) of any other person.
(b) During the Term, Licensor will be obligated, and will have the sole
right, to take all reasonable steps to enforce the Name Rights, which shall
include the
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filing of opposition and cancellation proceedings before the United States
Patent and Trademark Office and state agencies responsible for registration of
trademarks and service marks but shall not include the obligation to initiate
unfair competition and trademark infringement litigation in the federal or state
courts. Licensor shall have the right to include Licensee as a party in such
litigation where necessary to maintain Licensor's standing, and Licensee agrees
to join in such litigation at Licensor's expense as a voluntary plaintiff or
claimant upon request of Licensor. Licensor shall have the sole right to control
and settle any opposition and cancellation proceedings and any infringement
proceedings that Licensor elects to initiate. Licensee shall cooperate with
Licensor in the prosecution of such litigation, opposition, or cancellation
proceedings, at Licensor's expense.
(c) Any recovery obtained as a result of infringement shall be applied
first to reimburse the parties for their respective expenses (including costs
and attorney fees) incurred in connection with such suit or other proceeding and
any remaining recovery will be retained by Licensor.
7. Miscellaneous
(a) Notices. All notices, requests, demands and other communications
made hereunder will be in writing and will be deemed duly given if delivered
personally, upon confirmation of transmission if sent by telex or facsimile,
upon the third Business Day after mailing if sent by registered or certified
mail, postage prepaid, or upon receipt if sent by reputable overnight carrier as
follows, or to such other address or Person as either party may designate by
notice to the other parties hereunder:
If to Licensor:
Xxxx Xxxxxxx Mutual Life Insurance Company
Attention: Xxxxxx X. Xxxxxxx
Chief Financial Officer
000 Xxxxxxxxx Xxxxxx
Xxxxxx, XX 00000
Telephone: (000) 000-0000
Fax: (000) 000-0000
With copies to:
Xxxx Xxxxxxx Mutual Life Insurance Company
Attention: Xxxxxxx X. Xxxxxxx, Esq.
Vice President and Counsel
000 Xxxxxxxxx Xxxxxx
Xxxxxx, XX 00000
Telephone: (000) 000-0000
Fax: (000) 000-0000
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If to Licensee:
Unicare Life & Health Insurance Company
Attention: D. Xxxx Xxxxxxxx
President, National Business
00000 Xxxxxx Xxxx, Xxxxx 000
Xxxxxxxxx Xxxxx, XX 00000-0000
Telephone: (000) 000-0000
Fax: (000) 000-0000
With copies to:
WellPoint Health Networks, Inc.
Attention: Xxxxx X. Xxxxxx, Esq.
Vice President, Assistant General Counsel
00000 Xxxxxx Xxxxxx
Xxxxxxxx Xxxxx, XX 00000
Telephone: (000) 000-0000
Fax: (000) 000-0000
(b) Amendments, Waivers, Consents. This Agreement cannot be changed or
terminated orally and no waiver of compliance with any provision or condition
hereof and no consent provided for herein will be effective unless evidenced by
an instrument in writing duly executed by the proper party. The failure of
Licensor or Licensee to insist on strict compliance with this License Agreement,
or to exercise any right or remedy under this License Agreement, shall not
constitute a waiver of any rights provided under this License Agreement, nor
estop the parties from thereafter demanding full and complete compliance nor
prevent the parties from exercising such right or remedy in the future.
(c) Consent to Jurisdiction. Each of Licensee and Licensor irrevocably
submits to the exclusive jurisdiction of (i) the Court of Chancery of the State
of Dela- ware and (ii) the United States District Court for the District of
Delaware, for the purposes of any suit, action or other proceeding arising out
of this Agreement. Each of Licensee and Licensor agree to commence any action
suit or proceeding relating hereto either in the United States District Court
for the District of Delaware or, if such suit, action or proceeding may not be
brought in such court for jurisdictional reasons, in the Xxxxxxxx Xxxxx xx xxx
Xxxxx xx Xxxxxxxx, Xxx Xxxxxx Xxxxxx. Licensee further agrees that service of
process, summons, notice or document by hand delivery or U.S. registered mail in
care of Xxxx Xxxxxxx Mutual Life Insurance Company, Attention of the General
Counsel, shall be effective service of process for any action, suit or
proceeding brought against Licensor in any such court. Licensor further agrees
that service of process, summons, notice of document by hand delivery or U.S.
registered mail in care of Unicare Life & Health Insurance Company, Attention of
the General Counsel, shall be effective service of process for any action, suit
or proceeding brought against Licensee in any such court. Each of Licensee and
Licensor irrevocably and unconditionally waives
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any objection to the laying of venue of any action, suit or proceeding arising
out of this Agreement or the transactions contemplated hereby in (A) the
Chancery Court of the State of Delaware, New Castle County or (B) the United
States District Court for the District of Delaware, and hereby further
irrevocably and unconditionally waives and agrees not to plead or claim in any
such court that any such action, suit or proceeding brought in any such court
has been brought in an inconvenient forum.
(d) Assignment. This Agreement will be binding upon and inure to the
benefit of the parties hereto and their respective permitted successors, legal
representatives and assigns; provided, however, that this Agreement may not be
assigned to any Person by Licensee without the prior written consent of the
Licensor. Any attempted assignment in contravention of this paragraph shall be
void.
(e) Entire Agreement. This Agreement and the other agreements referred
to herein contain the entire agreement among the parties hereto with respect to
the subject matter hereof and supersede all previous written or oral
negotiations, commitments and writings. The section headings of this Agreement
are for convenience of reference only and do not form a part hereof and do not
in any way modify, interpret, or construe the intentions of the parties. This
Agreement may be executed in two or more counterparts, and all such counterparts
will constitute one and the same instrument.
(f) Applicable Law. This Agreement will be governed by and construed
and enforced in accordance with the internal laws of the State of Delaware
applicable to agreements made and to be performed entirely within such State,
without regard to the conflicts of law principles of such state.
(g) Parties in Interest. Nothing in this Agreement is intended to
confer any rights or remedies under or by reason of this Agreement on any
Persons other than the parties hereto, their respective successors and permitted
assignees. Nothing in this Agreement is intended to relieve or discharge the
obligations or liability of any third Persons to the parties hereto. No
provision of this Agreement shall give any third Persons any right of
subrogation or action over or against the parties hereto.
(h) Execution by Licensee. By execution of this License Agreement,
Licensee agrees on behalf of itself and each of its Affiliates to be bound by
the terms of this Agreement.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed by their respective officers thereunto duly authorized, as of the
day and year first above written.
XXXX XXXXXXX MUTUAL LIFE INSURANCE
COMPANY
By: ___________________________________
Name:
Title:
UNICARE LIFE & HEALTH INSURANCE COMPANY
By: ___________________________________
Name:
Title:
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Schedule A
Name Rights Registrations and Applications
Copyrights:
None.
Tradenames:
Xxxx Xxxxxxx Mutual Life Insurance Company
Xxxx Xxxxxxx Financial Services
Service Marks:
PTO Registration Date Xxxx
Number Registered
GBO Only Service Marks:
Xxxxxxx Preferred R#1417955 Nov. 18, 1986
Xxxx Xxxxxxx Preferred Health Plan R#1399811 July 1, 1986
GBO Shared Service Marks:
Xxxx Xxxxxxx (block letters) R#1287236 July 24, 1984
Xxxx Xxxxxxx (signature logo) R#557033 April 1, 1952
Hanstar R#1389411 April 8, 1986
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