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EXHIBIT 10.8
CROSS-LICENSE AGREEMENT
THIS CROSS-LICENSE AGREEMENT ("Agreement") is made effective as of the 30th day
of September, 1999 (the "Effective Date") between XXXXXXXX INFORMATION SERVICES
CORPORATION ("WISC"), THE XXXXXXXX COMPANIES, INC. ("TWC"), XXXXXXXX
COMMUNICATIONS GROUP, INC. ("WCG"), and WCG's affiliates in which it owns at
least a controlling interest ("WCG Affiliates") (as used herein, the term "WCG
Group" refers, according to context, either individually to WCG or collectively
to WCG and the WCG Affiliates). WISC, TWC and the WCG Group are each a "Party"
and together are the "Parties" to this Agreement.
WHEREAS, the WCG Group has developed and owns a body of intellectual property
including, without limitation, trademarks, software and technical writings some
of which may be protected by, or sought to be protected by, copyright, patents,
and trademark registrations (the "WCG IP"); and
WHEREAS, WISC has developed and owns a body of intellectual property including,
without limitation, trademarks, software and technical writings some of which
may be protected by copyright, patents and trademark registrations (the "WISC
IP"); and
WHEREAS, TWC has developed and owns a body of intellectual property including,
without limitation, trademarks, software and technical writings some of which
may be protected by copyright, patents and trademark registrations (the "TWC
IP"); and
WHEREAS, WISC and TWC desire to obtain, and the WCG Group desires to grant to
WISC and TWC, certain rights to the WCG IP; and
WHEREAS, the WCG Group desires to obtain, and WISC and TWC desire to grant to
the WCG Group, certain rights to the WISC IP and the TWC IP;
NOW, THEREFORE, in consideration of the covenants and representations set forth
herein and other good and valuable consideration, the receipt and sufficiency of
which is hereby acknowledged, WISC, TWC and the WCG Group agree to the
following:
ARTICLE 1
DEFINITIONS
1.01 "TWC AFFILIATES" shall mean all direct and indirect subsidiaries,
divisions, companies, and affiliates in which TWC or one of its direct or
indirect subsidiaries owns at least a controlling interest, but shall not
include WCG or the WCG Group.
1.02 "INTERNAL USE" shall mean internal use by each Party's employees for
the benefit of the
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Party, its affiliates and other TWC Affiliates, specifically excluding use
for the benefit of or for providing services to or disclosure thereof to any
third parties including without limitation any customer of the Party, or
customer of any other TWC Affiliate, if such customer is not a TWC
Affiliate.
1.03 "SOFTWARE" shall mean source code, object code, all instructions
relevant to assembling or compiling the source code, and all other
documentation and instructions relevant to the use thereof, developed by
each Party as of the Effective Date, plus any enhancements, upgrades,
modifications and new versions of such developed software, including but not
limited to the software listed on the respective Exhibits attached hereto,
as amended from time to time, and any software related to the Inventions,
defined herein, as they exist as of the Effective Date.
1.04 "INVENTIONS" shall mean each Party's inventions, including but not
limited to the inventions listed on the Exhibits attached hereto, as amended
from time to time, and any inventions or discoveries arising from or
inextricably related to each Party's Software, whether or not such
inventions or discoveries (i) have been disclosed or are otherwise known to
the Party/Licensee, (ii) have been described in patent applications, (iii)
are disclosed in issued patents, or (iv) are protected by trade secret, and
specifically including any inventions or discoveries disclosed in patents or
patent applications assigned to the Party/Licensee, if any, all of the
foregoing as they exist as of the Effective Date.
1.05 "MARKS" shall mean all trademarks, tradenames, logos and/or service
marks, if any, including those trademarks, tradenames, service marks and
logos associated with each Party's Software, Inventions, or with the subject
matter of other licenses granted hereunder.
1.06 "PERSON" shall mean any natural person, firm, partnership,
association, corporation, company, trust, business trust, Governmental
Authority or other entity.
ARTICLE 2
LICENSE FROM TWC AND WISC TO THE WCG GROUP
2.01 WISC and TWC hereby grant to each member of the WCG Group, and each
member of the WCG Group hereby accepts, a non-exclusive, world-wide,
non-transferable, royalty-free, perpetual license on an "AS IS, WHERE IS"
basis to use (subject to the rights of third parties) the particular WISC
and TWC Software, Marks, and Inventions which exist as of the Effective Date
including without limitation the WISC and TWC Software, Marks, and
Inventions listed on the attached Exhibit I, solely for the WCG Group's
Internal Use.
2.02 Notwithstanding anything to the contrary contained herein, WISC and
TWC do not grant to the WCG Group hereunder, nor shall the WCG Group claim
any right pursuant hereunder, to any intellectual property belonging to WISC
and TWC, other than the WISC and TWC Software, Marks and Inventions which
exist as of the Effective Date of this Agreement. Further, nothing in this
Agreement shall be deemed to transfer title to any of the Software,
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Inventions or Marks to any other Party.
ARTICLE 3
LICENSE FROM THE WCG GROUP TO WISC AND TWC
3.01 The WCG Group hereby grants both to WISC and to TWC, and WISC and TWC
each hereby accept, a non-exclusive, world-wide, non-transferable,
royalty-free, perpetual license on an "AS IS, WHERE IS" basis to use
(subject to the rights of third parties) the particular WCG Software, Marks,
and Inventions which exist as of the Effective Date including without
limitation the WCG Software, Marks, and Inventions listed on the attached
Exhibit II, solely for WISC's and TWC's Internal Use.
3.02 Notwithstanding anything to the contrary contained herein, the WCG
Group does not grant to WISC and TWC hereunder, nor shall WISC and TWC claim
any right pursuant hereunder, to any intellectual property belonging to the
WCG Group, other than the WCG Software, Marks and Inventions which exist as
of the Effective Date of this Agreement. Further, nothing in this Agreement
shall be deemed to transfer title to any of the Software, Inventions or
Marks to any other party.
ARTICLE 4
QUALITY CONTROL REGARDING USE OF MARKS
Each Party shall abide by commercially reasonable guidelines regarding use of
the other Party's Marks, provided, however, that each Party acknowledges and
agrees that the quality standards maintained by the other Party as of the
Effective Date are and will be acceptable. Further, neither Party will take any
action that, it knew or reasonably should be known, would jeopardize the other
Party's rights to its Marks.
ARTICLE 5
CONFIDENTIALITY
Each Party shall maintain all Software and Inventions licensed hereunder (the
"Licensed Subject Matter") in strict confidence by limiting disclosure of the
Licensed Subject Matter to those of its employees, contractors or agents having
a need to access the Licensed Subject Matter for the purpose of exercising
rights granted hereunder. Each Party shall exercise at least the same degree of
care as it utilizes to protect its own proprietary information of a similar
nature to prevent unauthorized disclosures of the Licensed Subject Matter, but
in no event less than a reasonable degree of care.
ARTICLE 6
ASSIGNABILITY
6.01 This Agreement and any of the licenses granted herein to WISC and TWC
hereunder are assignable by WISC and TWC, in whole or in part, to TWC
Affiliates, provided that the assignee agrees in writing to abide by the
relevant terms and conditions of this Agreement.
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Otherwise no license granted herein to WISC or TWC is assignable without the
prior written consent of the entity within the WCG Group holding title or
licensing rights or its successors in interest, which consent shall not be
unreasonably withheld; provided, however, that consent shall not be withheld
for any assignment made as the result of (i) a corporate merger, (ii) a sale
of all or substantially all of the corporate assets of such entity, (iii) a
sale of a controlling interest in such entities' corporate stock, (iv) a
corporate restructuring, or (v) as a result of a corporate name change.
6.02 This Agreement and any of the licenses granted herein to the WCG Group
are fully assignable by the WCG Group, in whole or in part, to TWC
Affiliates, provided that the assignee agrees in writing to abide by the
relevant terms and conditions of this Agreement. Otherwise, no license
granted herein to the WCG Group is assignable without the prior written
consent of WISC or TWC, as applicable, or its successor in interest, which
consent shall not be unreasonably withheld, provided, however, that consent
shall not be withheld for any assignment made as the result of (i) a
corporate merger, (ii) a sale of all or substantially all of the corporate
assets of such entity, (iii) a sale of a controlling interest in such
entities' corporate stock, (iv) a corporate restructuring, or (v) as a
result of a corporate name change.
6.03 Any attempt to assign, or purported assignment of, this Agreement or
any of the licenses granted hereunder in violation of the provisions of this
Article 6 shall be null and void and of no effect.
ARTICLE 7
WARRANTIES; DISCLAIMERS
7.01 Each Party represents and warrants that it owns and has the right to
license the software, marks, and inventions licensed under this Agreement.
7.02 EXCEPT FOR THE WARRANTIES, REPRESENTATIONS, COVENANTS, OBLIGATIONS,
AND AGREEMENTS DESCRIBED IN SECTION 7.01, EACH PARTY DISCLAIMS ANY AND ALL
WARRANTIES, CONDITIONS, OR REPRESENTATIONS (EXPRESS OR IMPLIED, ORAL OR
WRITTEN) WITH RESPECT TO THE SUBJECT MATTER HEREOF, OR ANY PART THEREOF,
INCLUDING ANY AND ALL IMPLIED WARRANTIES OF NON-INFRINGEMENT,
MERCHANTABILITY, OR FITNESS OR SUITABILITY FOR ANY PURPOSE (WHETHER THE
PARTY KNOWS, HAS REASON TO KNOW, HAS BEEN ADVISED, OR IS OTHERWISE IN FACT
AWARE OF ANY SUCH PURPOSE) WHETHER ALLEGED TO ARISE BY LAW, BY REASON OF
CUSTOM OR USAGE IN THE TRADE, OR BY COURSE OF DEALING.
ARTICLE 8
LIMITATIONS OF LIABILITY / ALLOCATION OF RISK
NOTWITHSTANDING ANY OTHER PROVISION OF THIS AGREEMENT, NEITHER PARTY SHALL BE
LIABLE TO THE OTHER PARTY (NOR TO ANY PERSON CLAIMING RIGHTS DERIVED FROM THE
OTHER PARTY'S RIGHTS, INCLUDING ANY
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SUBLICENSEE) FOR INCIDENTAL, CONSEQUENTIAL, SPECIAL, PUNITIVE, OR EXEMPLARY
DAMAGES OF ANY KIND, INCLUDING, BUT NOT LIMITED TO, LOSS OF DATA, LOST PROFITS,
LOSS OF BUSINESS, OR OTHER ECONOMIC DAMAGE, AND FURTHER INCLUDING INJURY TO
PROPERTY, AS A RESULT OF BREACH OF ANY TERM OF THIS AGREEMENT, REGARDLESS OF
WHETHER THE PARTY LIABLE OR ALLEGEDLY LIABLE WAS ADVISED, HAD OTHER REASON TO
KNOW, OR IN FACT KNEW OF THE POSSIBILITY THEREOF.
ARTICLE 9
BREACH
Breach of any provision hereof shall not automatically terminate any license
granted hereunder nor give the non-breaching Party the right to terminate any
license granted hereunder; however, the non-breaching Party shall be entitled to
seek any remedy available to it under law or equity due to such breach. Further,
the Party in breach shall immediately take actions to remedy the breach. The
Parties hereby agree that damages resulting from breach of any material
provision hereof may be difficult if not impossible to ascertain, and therefore
agree that the non-breaching Party shall be entitled to injunctive relief to
prevent or stop any threatened or actual breach of any material provision
hereof, including without limitation provisions dealing with confidentiality and
license rights.
ARTICLE 10
GENERAL INDEMNITY
10.01 Each member of the WCG Group shall jointly and severally, and to the
fullest extent permitted by applicable law, defend, indemnify and hold
harmless WISC, TWC, and the TWC Affiliates and their respective successors
and assigns authorized hereunder and any of their respective officers,
directors, employees, agents and representatives (collectively the "WISC and
TWC Indemnitees") from and against any and all claims, demands, damages,
losses, liabilities, costs and expenses (including but not limited to
reasonable attorneys' fees and expenses) ("Costs") incurred or suffered by
any WISC and TWC Indemnitees to the extent that such Costs arise out of
claims, actions or proceeding brought as a result of the negligent or
willful misconduct of any member of the WCG Group regarding this Agreement.
10.02 WISC, TWC and the TWC Affiliates shall jointly and severally, and to
the fullest extent permitted by applicable law, defend, indemnify and hold
harmless any member of the WCG Group and their respective successors and
assigns authorized hereunder and any of their respective officers,
directors, employees, agents and representatives (collectively the "WCG
Group Indemnitees") from and against any and all claims, demands, damages,
losses, liabilities, costs and expenses (including but not limited to
reasonable attorneys' fees and expenses) ("Costs") incurred or suffered by
any WCG Group Indemnitee to the extent that such Costs arise out of claims,
actions or proceeding brought as a result of the negligent or willful
misconduct of any member of WISC, TWC or the TWC Affiliates regarding this
Agreement.
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ARTICLE 11
DISPUTE RESOLUTION
11.01 NEGOTIATIONS. Except as otherwise provided herein, WISC, TWC and each
member of the WCG Group shall attempt in good faith to resolve any dispute
arising out of or relating to this Agreement (a "Dispute") by negotiations
between senior executives of the ultimate parent corporation of such
Parties. Such negotiations may be commenced by any such Party by written
notice to the other Party (the "Negotiation Request"). In the event that
such Dispute has not been resolved by such negotiations within thirty (30)
days of the delivery of the Negotiation Request, and one Party hereto
requests non-binding mediation by written notice to the other Party given
prior to the end of such 30-day period, such member of WISC and/or TWC and
such member of the WCG Group shall attempt in good faith to resolve such
Dispute by non-binding mediation before a mediator mutually agreeable to
such member of WISC and/or TWC and such member of the WCG Group. Neither
Party shall be required to continue with such negotiations or with such
non-binding mediation for more than ninety (90) days after the delivery of
the Negotiation Request. All such negotiations and mediation proceedings
shall be confidential, and shall be treated as compromise and settlement
negotiations for all evidentiary purposes, including but not limited to for
purposes of the Federal Rules of Evidence and any state rules of evidence.
11.02 OTHER REMEDIES. Except as otherwise provided herein, the Parties
hereto shall not initiate litigation with respect to the Dispute unless the
Dispute has not been resolved within ninety (90) days of the delivery of the
Negotiation Request, and shall not initiate litigation with respect to such
Dispute except upon five (5) days' prior written notice to the other Party;
provided that (i) if one such Party has delivered a Negotiation Request or
has so requested non-binding mediation and the other such Party has not
responded to any such request within ten (10) days of its receipt or is
failing to participate in good faith in the procedures specified In Section
11.01, the requesting Party may initiate litigation prior to the expiration
of such ninety-day (90-day) period and without giving the five (5) day
notice, and (ii) either such Party may at any time with or without notice
file a complaint or seek an injunction or provisional judicial relief, if in
such Party's sole judgment such action is necessary to avoid irreparable
damage or to preserve the status quo (including but not limited to statute
of limitations reasons or to preserve any defense based upon the passage of
time). Despite such action, such member of WISC and/or TWC and such member
of the WCG Group will continue to participate in the procedures specified in
this Article 11 for so long and to the extent so specified.
ARTICLE 12
NOTICES
All notices, consents, requests, demands, and other communications required or
permitted under this Agreement shall be in writing and shall be deemed to have
been duly given (a) on the date received when delivered in person, (b) on the
first day after being sent if sent by a generally recognized overnight delivery
company, or (c) on the third day after being mailed by registered
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or certified mail, return receipt requested, with postage prepaid to the
addresses set forth below the signature blocks of this Agreement (or to such
additional or other persons, at such other address or addresses as may be
designated by notice of the appropriate Party).
ARTICLE 13
TERMINATION
13.01 In the event that, at any time, TWC or a TWC Affiliate no longer
controls the WCG Group this Agreement shall terminate 90 days from the date
control was lost. For the purposes of this provision the term "control"
means ownership of 50% or more of the issued and outstanding shares of the
WCG Group stock.
13.02 In the event of termination of this Agreement, for whatever reason,
either Party's right to utilize and/or possess Marks, Software, Inventions,
or any other intellectual property of another Party licensed under this
Agreement shall cease. Within fifteen (15) days after any termination of
this Agreement, each Party shall (i) return to the appropriate Party or
destroy the original and all copies, in any form, of all Software and
Inventions, or parts thereof, for which it has received a license hereunder;
and (ii) provide a certified affidavit executed by an officer of the Party
to the effect that this has been done.
ARTICLE 14
GENERAL PROVISIONS
14.01 No modification or amendment to this Agreement or any Exhibit to this
Agreement, nor any waiver of any provision contained in this Agreement,
shall be valid or binding unless reduced to writing and executed by an
authorized representative of the Party against whom enforcement of the same
is sought.
14.02 The Article headings used herein are for reference purposes only and
shall not in any way control the meaning or interpretation of this
Agreement.
14.03 This Agreement shall be construed in accordance with the laws of the
State of Oklahoma without giving effect to its internal conflicts of law
principles.
14.04 If any term of this Agreement is determined to be invalid or
unenforceable, such term shall be deemed to be deleted from this Agreement
and, if reasonable to do so, the Parties shall negotiate in good faith a
replacement therefore, and the remainder of this Agreement shall remain in
full force and effect.
14.05 This Agreement, constitute(s) the entire understanding and agreement
among the Parties hereto regarding the subject matter hereof and supersedes
any prior or contemporaneous agreement or understanding between the Parties
regarding same.
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14.06 Each person signing this Agreement on behalf of one of the Parties has
full authority to do so.
14.07 Each Party shall be deemed independent contractors with respect to
each other, and nothing herein shall create any association, partnership,
joint venture or agency relationship between any of them.
14.08 This Agreement may be executed in one or more counterparts, each of
which shall be deemed an original and all of which taken together shall
constitute one and the same instrument.
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The parties hereto have caused this Cross-License Agreement to be duly
executed as of the date first written above.
XXXXXXXX INFORMATION SERVICES CORPORATION
BY: /s/ XXXXX X. XXXXXXXX
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NAME: Xxxxx X. Xxxxxxxx
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TITLE: Senior Vice-President, Administration
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NOTICE ADDRESS:
XXXXXXXX INFORMATIONAL SERVICES CORPORATION
XXX XXXXXXXX XXXXXX
X.X. XXX 0000
XXXXX, XXXXXXXX 00000
ATTN: SENIOR VICE PRESIDENT
XXXXXXXX COMMUNICATION GROUP, INC.
BY: /s/ G.L. BEST
-----------------------------------------
NAME: G.L. Best
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TITLE: Vice President
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NOTICE ADDRESS:
VICE PRESIDENT,
APPLICATIONS-NETWORK XXXXXXXX COMMUNICATIONS GROUP, INC.
XXX XXXXXXXX XXXXXX
XXXXX, XX 00000
THE XXXXXXXX COMPANIES, INC.
BY: /s/ XXXX X. XXXXXXXX
-----------------------------------------
NAME: Xxxx X. XxXxxxxx
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TITLE: Sr. V.P - Finance & CFO
--------------------------------------
NOTICE ADDRESS:
Xxx Xxxxxxxx Xxxxxx
Xxxxx, XX 00000
Attention: Xxxx XxXxxxxx
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