TRADEMARK SUBLICENSE AGREEMENT
THIS AGREEMENT, dated as of October 1, 1997, is between WMC Partners,
L.P., a limited partnership organized and existing under the laws of the
State of Delaware ("WMC") and Gila River Cellular General Partnership, an
Arizona general partnership ("Sublicensee")
WITNESSETH:
WHEREAS, WMC is a licensee of the marks AIRTOUCH and AIRTOUCH DESIGN
which are owned by AirTouch Communications, Inc. ("AirTouch");
WHEREAS, WMC has the right, pursuant to its Trademark License Agreement
from AirTouch, to grant a sublicense to Sublicensee for the marks, AIRTOUCH
and AIRTOUCH DESIGN;
WHEREAS, WMC, Xxxxxx Communications Corporation, an Oklahoma
corporation, and Xxxxxx Cellular of Arizona, Inc., an Oklahoma corporation,
have entered into an Affiliation Agreement dated as of February 28, 1997 (the
"Affiliation Agreement") pursuant to which Operator's System will offer
Services (each as defined in the Affiliation Agreement or herein) exclusively
under the Licensed Marks;
WHEREAS, WMC believes that Sublicensee provides high quality goods and
services and further believes that Sublicensee will continue providing high
quality goods and services under the licensed marks; and
WHEREAS, WMC wishes to license to Sublicensee, and Sublicensee wishes to
obtain from WMC, the right to use certain trademarks subject to the
restrictions stated below;
NOW, THEREFORE, in consideration of the premises and of the mutual
promises, the parties hereto agree as follows:
I. DEFINITIONS
A. "LICENSED MARKS" means the trade name, "AirTouch Cellular", the
AIRTOUCH xxxx, and the AIRTOUCH DESIGN xxxx, as described in
attached Exhibit 1.
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B. "PRODUCTS" means subscriber equipment offered for sale or lease
and any goods and other property ancillary thereto.
C. "SERVICES" means commercial mobile radio services provided by
Systems (as defined in the Affiliation Agreement), including,
without limitation, voice and data transport, and the services
ancillary thereto.
D. "TERRITORY" means the rural service area designated by the FCC as
Cellular Market No. Arizona 5 (Arizona RSA #5),
II. LICENSE GRANT
A. SCOPE. Effective as of the date hereof and subject to the terms
and conditions of this Agreement, WMC grants to Sublicensee a
royalty-free, nonexclusive, nontransferable, revocable sublicense
to use the Licensed Marks in connection with the Products and
Services and the sale and marketing of the Products and Services in
the Territory. WMC and AirTouch retain the right to concurrently
use or license others to use the Licensed Marks in the Territory in
connection with any goods and/or services. Sublicensee is expressly
prohibited from adopting a corporate or partnership name that
includes, or would be confusingly similar to, the Licensed Marks.
Sublicensee may, only if required by Arizona law, file a fictitious
business name statement using the words AirTouch Cellular, but
agrees to cancel and/or withdraw such filing when this Agreement
ends or is terminated.
B. QUALITY CONTROL. All uses of the Licensed Marks must appear
identical in substance to the Licensed Marks as they appear in
Exhibit 1 and the Manual as defined below. Sublicensee shall
employ the guidelines stated in the attached "Corporate Identity
Program" (the "Manual"), and any other reasonable standards that
AirTouch may adopt from time to time and of which Sublicensee has
been notified, when preparing any materials in which the Licensed
Marks are displayed. Prior to adopting any use of the Licensed
Marks, including without limitation, the use of the Licensed Marks
on documents, including packaging and labels of any kind,
Sublicensee shall deliver, at its own expense, one sample of each
manner in which the Licensed Marks are to be used to: Xxxx Xxxxxxx,
Senior Counsel, AirTouch Communications, Inc., Xxx Xxxxxxxxxx
Xxxxxx, 00xx Xxxxx, Xxx Xxxxxxxxx, XX 00000 ("AirTouch Quality
Control"). For purposes of this Agreement, a sample of a document
means the document itself, and a sample of a Product means either
the Product or a very clear photograph of the Product. AirTouch
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Quality Control shall have ten working days from the date it
receives the samples to approve or disapprove of the sample,
unless otherwise mutually agreed. The method of delivery shall be
by overnight mail and the samples shall be deemed received the next
working day after Sublicensee sends them. In the event that
AirTouch Quality Control disapproves any sample, then Sublicensee
shall not employ that sample and shall immediately destroy all
other like samples, copies, and any other media bearing the
disapproved manner of use of the Licensed Marks.
C. RIGHT TO INSPECT. In addition to the foregoing, representatives of
WMC and AirTouch shall have the right, at all reasonable times, to
inspect the manner in which Sublicensee uses the Licensed Marks and
the quality of the Products on which the Licensed Marks are
affixed. Such inspection may, at the election of WMC or AirTouch,
be by personal visit to Sublicensee or by written request for
information or samples. If the inspection is by request for
samples, then the entity conducting the inspection shall reimburse
Sublicensee for the cost of shipping said samples. Sublicensee
agrees to cooperate with such inspections. In the event that WMC or
AirTouch determines that one or more manners in which Sublicense
uses the Licensed Marks are inconsistent with the Manual or other
standards adopted by AirTouch and of which Sublicense has notice,
or that the quality of any of the Products on which the Licensed
Marks are affixed is not consistent with maintaining the goodwill
inherent in the Licensed Marks, then WMC or AirTouch shall so
notify Sublicensee, and Sublicensee shall immediately cease use of
any such disapproved usage of the Licensed Marks and shall destroy
all copies, samples and other media that bear the disapproved
usage. Within thirty days of notice from WMC or AirTouch that a
particular usage has been disapproved, Sublicensee shall certify in
writing to the person providing the notice that Sublicense has
destroyed all media that bear said usage.
D. RECOGNITION OF OWNERSHIP. Sublicensee recognizes AirTouch's title
to the Licensed Marks, and shall not at any time do or suffer to be
done any act or thing which will in any way impair the rights of
AirTouch in and to the Licensed Marks or the goodwill inherent in
said Licensed Marks. It is understood that Sublicensee shall not
acquire and shall not claim any title to the Licensed Marks adverse
to AirTouch by Virtue of the license granted herein, or through
Sublicensee's use of said Licensed Marks, it being the intention of
the parties that all use of the Licensed Marks by Sublicensee shall
at all times inure to the benefit of AirTouch.
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Sublicensee is estopped from challenging the validity of the
Licensed Marks or from setting up any claim adverse to AirTouch.
E. SALES OUTSIDE TERRITORY. Sublicensee agrees not to sell any
Products bearing the Licensed Marks with knowledge that such
products are to be resold outside the Territory. Such sales shall
constitute a breach of this Agreement if made with Sublicensee's
knowledge. If Sublicense learns of any such sales, it shall use
its best efforts to obtain possession of said Products and to
prevent such sales in the future, including refusing to sell
Products bearing the Licensed Marks to the persons or entities
responsible for the resale outside the Territory.
III. INFRINGEMENTS
A. INFRINGEMENT BY OTHERS. Sublicensee shall review regularly the
market for Products and Services in the Territory and shall inform
AirTouch or WMC promptly of any possible infringement of, or unfair
competition affecting, the Licensed Marks which comes to the
attention of Sublicensee. In the event affirmative action is taken
against any such possible infringement or act of unfair
competition, Sublicensee agrees to assist, in whatever reasonable
manner is requested, and at the expense of the requester. Recovery
of damages resulting from any such action shall be solely for the
account of AirTouch. Sublicensee shall have no right to initiate
any action to defend the Licensed Marks.
B. ACTIONS AGAINST SUBLICENSEE OR WMC. Should either party be involved
as a defendant in judicial action under the trademark laws or with
regard to an act of unfair competition in the Territory with regard
to the Licensed Marks, the parties agree to cooperate with each
other to the greatest possible extent in defending such an action.
IV. TERM AND TERMINATION
A. TERM. This Agreement will have an initial term of 20 years from the
date hereof. Thereafter, the term will automatically be extended
for additional five-year periods unless either party makes a valid
election not to renew this Agreement. An election not to renew will
be valid only if in writing and delivered to the other party at
least one year prior to the expiration of the then current term. In
the event of a termination under this Paragraph, Sublicensee shall
immediately cease implementation of any new or expanded uses of the
Licensed Marks and
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shall discontinue existing uses of the Licensed Marks in accordance
with the procedure stated in Paragraph IV E below.
B. OPTIONAL TERMINATION. If Sublicense fails to use one or more of
the Licensed Marks in the Territory within any given term that this
Agreement is in effect, then WMC may, in its sole discretion,
terminate this Agreement as to the unused Licensed Xxxx or Marks.
In the event of a termination under this Paragraph, Sublicensee
shall immediately cease implementation of any new or expanded uses
of the Licensed Marks and shall discontinue existing uses of the
Licensed Marks in accordance with the procedure stated in Paragraph
IV E below.
C. TERMINATION FOR UNAUTHORIZED USE. If Sublicensee uses the Licensed
Marks for purposes other than the sale of Products and Services or
promoting the sale of Products and Services within the Territory or
if Sublicensee fails to use the Licensed Marks in accordance with
Section II above or any other requirements of this Agreement, then
WMC shall notify Sublicense of such failure by written notice sent
by overnight courier or facsimile, including a detailed statement
of the improper use. If Sublicensee fails to correct such improper
use within ten days after the date of such notice, then WMC or
AirTouch may seek an injunction to compel Sublicense to
discontinue the specific unauthorized use of the Licensed Marks
and/or terminate this Agreement by written notice sent by overnight
courier or facsimile to Sublicensee. In the event of such
termination, Sublicensee shall immediately cease implementation of
any new or expanded uses of the Licensed Marks and shall
discontinue existing uses of the Licensed Marks in accordance with
the procedure stated in Paragraph IV E below.
D. TERMINATION OF AFFILIATION AGREEMENT. If the Affiliation Agreement
terminates pursuant to Paragraph 9 thereof, then WMC may, in its
sole discretion, provide written notice of termination of this
Trademark Sublicense Agreement sent by overnight courier or
facsimile. The provisions of Paragraph IV E below shall govern
Sublicensee's transition away from the Licensed Marks.
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E. PROCEDURE UPON TERMINATION; LICENSED MARKS REMOVAL PERIOD. Upon
termination of this Agreement pursuant to Paragraphs IV A through
D above, Sublicensee shall have three months in which to remove the
Licensed Marks from all advertisements, packaging, labels or other
documentation created by Sublicensee. Within six months after
termination of this Agreement pursuant to Paragraphs IV A through
D above, Sublicensee shall remove the Licensed Marks from all
Products and any other tangible items on which the Licensed Marks
have been affixed or used by Sublicensee. At the end of each such
period, WMC shall be allowed reasonable access to Sublicensee's
premises to observe and inspect to insure that Sublicensee is in
compliance with the above requirements and that the Licensed Marks
are no longer in use. Continued use of the Licensed Marks beyond
the above specified removal periods shall constitute infringement
of the Licensed Marks by Sublicensee and shall give rise to
AirTouch's remedy of specific performance in accordance with
Paragraph IV F. Sublicensee shall not adopt any trade name,
trademarks, or service marks that are confusingly similar to the
Licensed Marks in the event of termination of this Agreement.
Sublicensee may not, after termination of this Agreement, use the
Licensed Marks in any manner, including without limitation,
indicating that Sublicensee was formerly called "AirTouch" or
"AirTouch Cellular."
F. AIRTOUCH'S REMEDY OF SPECIFIC PERFORMANCE. Sublicensee
acknowledges that its failure to cease use of the Licensed Marks in
accordance with the provisions of this Agreement after termination
thereof will result in immediate and irreparable harm to AirTouch
for which there is no adequate remedy at law. AirTouch shall be
entitled to bring an action or proceeding for specific performance,
injunctive relief and/or other equitable relief to compel
Sublicensee to discontinue the infringement of the Licensed Marks,
to cease and desist all unauthorized use of the Licensed Marks, to
take all affirmative acts necessary to ensure discontinuance of use
of the Licensed Marks after termination of this Agreement, and to
obtain such relief as may be necessary and proper.
G. BREACH. If Sublicensee breaches any provision of this Agreement,
WMC may immediately give written notice of intention to terminate
within thirty days of the date of the writing, and, unless
Sublicensee notifies WMC in writing of a correction of such breach
within said period, this Agreement shall automatically terminate at
the expiration of the thirty day notice period. WMC may inspect
Sublicensee's premises
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during the period sixty to ninety days after this Agreement has
terminated to ensure that Sublicensee is no longer using the
Licensed Marks. WMC and AirTouch retain all of its rights and
remedies to prevent Sublicensee from continuing to use the
Licensed Marks after termination of this Agreement due to breach.
H. NO DAMAGES. Notwithstanding any other provision in this or any
other agreement between the parties, should this Trademark
Sublicense Agreement be terminated for any reason, neither party
shall be able to claim from the other party any actual,
consequential or incidental damages.
I. CONTINUING OBLIGATIONS. Termination of this Agreement for any
reason shall not affect those obligations which, from the context
hereof, are intended to survive termination of this Agreement.
J. NO WAIVER. Any waiver by either party of a breach of any term or
condition of this Agreement shall not be considered as a waiver of
any subsequent breach of the same or any other term or condition
thereof.
K. ATTORNEYS' FEES. The prevailing party in any action arising under
this Agreement shall be entitled to collect its reasonable
attorneys' fees from the non-prevailing party. In the event that
any such action is resolved by a settlement agreement, then neither
party shall be deemed the "prevailing party" and each party shall
be responsible for its own attorneys' fees. In the event of
bankruptcy of one of the parties hereto, the attorneys' fees of the
nondebtor party, incurred in dealing with a bankruptcy, shall be
considered actual pecuniary loss under 11 USC section 365(b)(1).
V. MISCELLANEOUS
A. PARAGRAPH HEADINGS. The paragraph headings are for convenience only
and shall not be deemed to affect in any way the language of the
provisions to which they refer.
B. GOVERNING LAW. This Agreement shall be governed by and construed in
accordance with the laws of the State of California without
reference to choice of law provisions. Selection of California law
as the governing law shall not be deemed to invoke any provision of
California law which would not otherwise be applicable to the
relationship contemplated hereunder. All actions arising under this
Agreement, including without
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limitation, actions regarding the interpretation or breach of the
Agreement, shall be brought in the federal or state courts of
California.
C. NOTICES. All notices or other communications hereunder to WMC,
except as otherwise specified above, shall be sent to:
WMC Partners, L.P.
Legal Department
0000 Xxx Xxxx
Xxxxxx Xxxxx, XX 00000
Attn: Vice President - Legal
and if to Sublicensee, shall be sent to:
Xxxxxx Communications Corporation
00000 X. Xxxxxxxx Xxxxxxxxx
Xxxxxxxx Xxxx, XX 00000
Attention: Xxxxxxx Xxxxxx, President
with a copy to:
Xxxxxxx & Xxxxxx
0000 Xxxxxxxx Xxxxx Xxxxx
Xxxxxxxxxx, XX 00000
Attention: Xxxxx X. Xxxxxxx, Esq.
Any such notice or communication shall be in writing and shall be
deemed to have been received on the day of delivery if sent via
facsimile with confirmation of valid transmission, or after seven
calendar days from mailing if sent via certified mail, postage
prepaid or on the next business day if sent by overnight courier.
Either party may designate a new address to which notices or other
communications may be sent by giving notice to the other party.
D. SEVERABILITY. If any provision of this Agreement shall be held
illegal or invalid by any court, this Agreement shall be construed
and enforced as if such illegal or invalid provision had not been
contained herein, and this Agreement shall be deemed an agreement
of the parties to the full extent permitted by law. If any
provision shall be declared invalid or unenforceable because of its
breadth, scope or duration, such provision shall be severed from
the rest of this Agreement, and the remaining portions of the
Agreement shall remain valid and enforceable.
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E. ASSIGNABILITY. Sublicensee may not assign or sublicense any of its
rights or delegate any of its duties under this Agreement. Any
attempted assignment, sublicense, or delegation by Sublicensee
shall be null and void.
F. COMPLETE AGREEMENT. This Agreement, together with the Affiliation
Agreement, embodies all of the terms and conditions of the
agreement between the parties with respect to the matters set forth
herein. There are no statements, terms, conditions,
representations, or warranties which have not been embodied herein.
G. MODIFICATIONS. This Agreement may not be modified or amended,
except in a writing signed on behalf of both parties by their duly
authorized representatives which refers specifically to this
Agreement.
H. FORCE MAJEURE. Neither party shall be in default under this
Agreement by reason of its delay in the performance of or failure
to perform any of its obligations herein if such delay or failure
is caused by strikes, acts of God or the public enemy, riots,
incendiaries, interference by civil or military authorities,
compliance with governmental laws, rules, and regulations, delays
in transit or delivery, or any fault beyond its control or without
its fault or negligence.
I. WAIVER. The failure of either party at any time to require
performance of any provision of this Agreement by the other party
shall not be deemed a waiver and shall not deprive that party of
its full right to require such performance in a particular instance
or at any other time. Any waiver must be in a writing executed by
a duly authorized representative of the waiving party.
J. DISPUTE RESOLUTION. Any dispute regarding this Agreement, including
without limitation, the interpretation, performance, or termination
of this Agreement, shall be handled pursuant to the dispute
resolution provisions stated in Paragraph 13(n) of the Affiliation
Agreement.
SIGNATURE ON FOLLOWING PAGE
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed and delivered by their duly authorized representatives as of the day
and year first set forth above.
WMC PARTNERS, L.P.
By
----------------------------
Print Name
--------------------
Title
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GILA RIVER CELLULAR GENERAL PARTNERSHIP
By /s/ ILLEGIBLE
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Print Name
--------------------
Title
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EXHIBIT 1 -- LICENSED MARKS
1. The AIRTOUCH xxxx referred to in Paragraph I A above shall be used only
in the following manner:
AIRTOUCH-TM- or AirTouch-TM-
Sublicensee must use fonts from the Times or Univers families when this xxxx
is used on Products or in advertising for Products.
2. The AIRTOUCH DESIGN xxxx referred to in Paragraph IA above shall conform
to the Manual referred to in Paragraph II B above. Sublicensee shall always
place the letters "TM" as a superscript directly behind the letter "H" in the
AIRTOUCH DESIGN or such other designation as WMC or AirTouch may direct.
Sublicensee may not vary the typeface, spacing, or general structure or
configuration of the AIRTOUCH DESIGN xxxx. Sublicensee may employ different
sizes of the AIRTOUCH DESIGN xxxx so long as those different sizes conform
the Manual. Use of color in connection with the AIRTOUCH DESIGN must also
conform to the Manual.
3. The "AirTouch Cellular" trade name referred to in Paragraph I A above
shall be used on in the following manner:
AIRTOUCH CELLULAR or AirTouch Cellular
Sublicensee must use fonts from the Times or Univers families when this trade
name is used on Products or in advertising for Products.
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