SPRINT
TRADEMARK AND SERVICE XXXX
LICENSE AGREEMENT
BETWEEN
SPRINT COMMUNICATIONS COMPANY, L.P.
AND
HORIZON PERSONAL
COMMUNICATIONS, INC.
JUNE 8, 1998
SPRINT TRADEMARK AND
SERVICE XXXX LICENSE AGREEMENT
THIS AGREEMENT is made as of the 8th day of June, 1998, by and between
Sprint Communications Company, L.P., a Delaware limited partnership, as licensor
("Licensor"), and Horizon Personal Communications, Inc., an Ohio corporation, as
licensee ("Licensee"). The definitions for this agreement are set forth on the
attached "Schedule of Definitions."
RECITALS:
WHEREAS, Licensor is the owner of the U.S. trademarks and service marks
"Sprint", together with related "Diamond" logo, "Sprint PCS", "Sprint Personal
Communications Services" and the goodwill of the business symbolized thereby;
and
WHEREAS, Licensee desires to use the trademarks and service marks in
commerce;
NOW, THEREFORE, the parties, in consideration of the mutual agreements
herein contained and for other good and valuable consideration, the receipt and
adequacy of which are hereby acknowledged, do hereby agree as follows:
ARTICLE 1
GRANT OF TRADEMARK AND SERVICE XXXX RIGHTS; EXCLUSIVITY
Section 1.1. License.
(a) Grant of License. Subject to the terms and conditions hereof, Licensor
hereby grants to Licensee, and Licensee hereby accepts from Licensor,
for the term of this agreement, a non-transferable, royalty-free
license to use the Licensed Marks solely for and in connection with
the marketing, promotion, advertisement, distribution, lease or sale
of Sprint PCS Products and Services and Premium and Promotional Items
in the Service Area.
(b) Related Equipment. The rights granted hereunder to Licensee shall not
include the right to manufacture equipment under the Licensed Marks.
However, subject to the terms and conditions hereof, Licensor hereby
grants to Licensee, and Licensee hereby accepts from Licensor, for the
term of this agreement, a non-transferable, royalty-free license to
market, promote, advertise, distribute and resell and lease Related
Equipment in connection with the marketing, promotion, advertisement,
distribution, lease or sale by Licensee of Sprint PCS Products and
Services, and to furnish services relating to such Related Equipment
(including installation, repair and maintenance of Related Equipment),
under the Licensed Marks.
1
ARTICLE 2
QUALITY STANDARDS, MAINTENANCE
Section 2.1. Maintenance of Quality.
(a) Adherence to Quality Standards. In the course of marketing, promoting,
advertising, distributing, leasing and selling Sprint PCS Products and
Services and Premium and Promotional Items under the Licensed Marks,
Licensee shall maintain and adhere to standards of quality and
specifications that conform to or exceed those quality standards and
technical and operational specifications adopted and/or amended in the
manner provided below ("Quality Standards") and those imposed by Law.
Such Quality Standards are designed to ensure that the quality of the
Sprint PCS Products and Services and Premium and Promotional Items
marketed, promoted, advertised, distributed, leased and sold under the
Licensed Marks are consistent with the high reputation of the Licensed
Marks and are in conformity with applicable Laws.
(b) Establishment of Quality Standards. The parties acknowledge that the
initial Quality Standards for the Sprint PCS Products and Services and
Premium and Promotional Items are attached to the Management Agreement
as Exhibits 4.1, 4.2, 4.3, 7.2, and 8.1. The Quality Standards shall
(i) be consistent with the reputation for quality associated with the
Licensed Marks and (ii) be commensurate with a high level of quality
(taking into account Licensee's fundamental underlying technology and
standards), consistent with the level of quality being offered in the
market for products and services of the same kind as the Sprint PCS
Products and Services.
(c) Changes in Quality Standards. In the event that Licensor wishes to
change the Quality Standards, it will notify Licensee in writing of
such proposed amendments, and will afford Licensee a reasonable time
period in which to adopt such changes as may be required in order for
Licensee to conform to the amended Quality Standards.
Section 2.2. Rights of Inspection. In order to ensure that the Quality
Standards are maintained, Licensor and its authorized agents and representatives
shall have the right, but not the obligation, with prior notice to Licensee, to
enter upon the premises of any office or facility operated by or for Licensee
with respect to Sprint PCS Products and Services and Premium and Promotional
Items at all reasonable times, to inspect, monitor and test in a reasonable
manner facilities and equipment used to furnish Sprint PCS Products and Services
and Premium and Promotional Items and, with prior written notice to Licensee, to
inspect the books and records of Licensee in a manner that does not unreasonably
interfere with the business and affairs of Licensee, all as they relate to the
compliance with the Quality Standards maintained hereunder.
2
Section 2.3. Marking, Compliance with Trademark Laws. Licensee shall cause
the appropriate designation "(TM)" or "SM" or the registration symbol "(R)" to
be placed adjacent to the Licensed Marks in connection with the use thereof and
to indicate such additional information as Licensor shall reasonably specify
from time to time concerning the license rights under which Licensee uses the
Licensed Marks. Licensee shall place the following notice on all printed or
electronic materials on which the Licensed Marks appear: "SPRINT", the "DIAMOND"
logo and "Sprint PCS", "Sprint Personal Communications Services" are trademarks
and/or service marks of Sprint Communications Company, L.P., "used under
license" or such other notice as Licensor may specify from time to time.
Section 2.4. Other Use Restrictions. Licensee shall not use the Licensed
Marks in any manner that would reflect adversely on the image of quality
symbolized by the Licensed Marks.
ARTICLE 3
CONFIDENTIAL INFORMATION
Section 3.1. Maintenance of Confidentiality. Each of Licensor and Licensee
and their respective Controlled Related Parties (each a "Restricted Party")
shall cause their respective officers and directors (in their capacity as such)
to, and shall take all reasonable measures to cause their respective employees,
attorneys, accountants, consultants and other agents and advisors (collectively,
and together with their respective officers and directors, "Agents") to, keep
secret and maintain in confidence the terms of this agreement and all
confidential and proprietary information and data of the other party or its
Related Parties disclosed to it (in each case, a "Receiving Party") in
connection with the performance of its obligations under this agreement (the
"Confidential Information") and shall not, and shall cause their respective
officers and directors not to, and shall take all reasonable measures to cause
their respective other Agents not to, disclose Confidential Information to any
Person other than the parties, their Controlled Related Parties and their
respective Agents that need to know such Confidential Information. Each party
further agrees that it shall not use the Confidential Information for any
purpose other than determining and performing its obligations and exercising its
rights under this agreement. Each party shall take all reasonable measures
necessary to prevent any unauthorized disclosure of the Confidential Information
by any of their respective Controlled Related Parties or any of their respective
Agents. The measures taken by a Restricted Party to protect Confidential
Information shall be not deemed unreasonable if the measures taken are at least
as strong as the measures taken by the disclosing party to protect such
Confidential Information.
Section 3.2. Permitted Disclosures. Nothing herein shall prevent any
Restricted Party or its Agents from using, disclosing, or authorizing the
disclosure of Confidential Information it receives and which:
(i) has been published or is in the public domain, or which subsequently
comes into the public domain, through no fault of the receiving party;
3
(ii) prior to receipt hereunder was property within the legitimate
possession of the Receiving Party or, subsequent to receipt hereunder
is lawfully received from a third party having rights therein without
restriction of the third party's right to disseminate the Confidential
Information and without notice of any restriction against its further
disclosure;
(iii)is independently developed by the Receiving Party through Persons who
have not had, either directly or indirectly, access to or knowledge of
such Confidential Information;
(iv) is disclosed to a third party with the written approval of the party
originally disclosing such information, provided that such
Confidential Information shall cease to be confidential and
proprietary information covered by this agreement only to the extent
of the disclosure so consented to;
(v) subject to the Receiving Party's compliance with Section 3.4 below, is
required to be produced under order of a court of competent
jurisdiction or other similar requirements of a governmental agency,
provided that such Confidential Information to the extent covered by a
protective order or its equivalent shall otherwise continue to be
Confidential Information required to be held confidential for purpose
of this agreement; or
(vi) subject to the Receiving Party's compliance with Section 3.4 below, is
required to be disclosed by applicable Law or a stock exchange or
association on which such Receiving Party's securities (or those of
its Related Party) are listed.
Section 3.3. Financial Institutions. Notwithstanding this Article 3, any
party may provide Confidential Information to any financial institution in
connection with borrowings from such financial institution by such party or any
of its Controlled Related Parties, so long as prior to any such disclosure such
financial institution executes a confidentiality agreement that provides
protection substantially equivalent to the protection provided the parties in
this Article 3.
Section 3.4. Procedures. In the event that any Receiving Party (i) must
disclose Confidential Information in order to comply with applicable Law or the
requirements of a stock exchange or association on which such Receiving Party's
securities or those of its Related Parties are listed or (ii) becomes legally
compelled (by oral questions, interrogatories, requests for information or
documents, subpoenas, civil investigative demand or otherwise) to disclose any
Confidential Information, the Receiving Party shall provide the disclosing party
with prompt written notice so that in the case of clause (i), the disclosing
party can work with the Receiving Party to limit the disclosure to the greatest
extent possible consistent with legal obligations or in the case of clause (ii),
the disclosing party may seek a protective order or other appropriate remedy or
waive compliance with the provisions of this agreement. In the case of a clause
(ii), (A) if the disclosing party is unable to obtain a protective order or
other appropriate remedy, or if the disclosing party so directs, the Receiving
Party shall, and shall cause its employees to, exercise all commercially
reasonable efforts to obtain a protective order or other appropriate remedy at
4
the disclosing party's reasonable expense, and (B) failing the entry of a
protective order or other appropriate remedy or receipt of a waiver hereunder,
the Receiving Party shall furnish only that portion of the Confidential
Information which it is advised by opinion of its counsel is legally required to
be furnished and shall exercise all commercially reasonable efforts to obtain
reliable assurance that confidential treatment shall be accorded such
Confidential Information, it being understood that such reasonable efforts shall
be at the cost and expense of the disclosing party whose Confidential
Information has been sought.
Section 3.5. Survival. The obligations under this Article 3 shall survive,
as to any party, until two (2) years following the date of termination of this
agreement, and, as to any Controlled Related Party of a party, until two (2)
years following the earlier to occur of (A) the date that such Person is no
longer a Controlled Related Party of a party, or (B) the date of the termination
of this agreement; provided that such obligations shall continue indefinitely
with respect to any trade secret or similar information which is proprietary to
a party or its Controlled Related Parties and provides such party or its
Controlled Related Parties with an advantage over its competitors.
ARTICLE 4
REPRESENTATIONS, WARRANTIES AND COVENANTS OF LICENSEE
Section 4.1. Licensor's Ownership. Licensee acknowledges Licensor's
exclusive right, title and interest in and to the Licensed Marks and
acknowledges that nothing herein shall be construed to accord to Licensee any
rights in the Service Area in the Licensed Marks except as expressly provided
herein. Licensee acknowledges that its use in the Service Area of the Licensed
Marks shall not create in Licensee any right, title or interest in the Service
Area in the Licensed Marks and that all use in the Service Area of the Licensed
Marks and the goodwill symbolized by and connected with such use of the Licensed
Marks will inure solely to the benefit of the Licensor.
Section 4.2. No Challenge by Licensee. Licensee covenants that (i) Licensee
will not at any time challenge Licensor's rights, title or interest in the
Licensed Marks (other than to assert the specific rights granted to Licensee
under this agreement), (ii) Licensee will not do or cause to be done or omit to
do anything, the doing, causing or omitting of which would contest or in any way
impair or tend to impair the rights of Licensor in the Licensed Marks, and (iii)
Licensee will not represent to any third party that Licensee has any ownership
or rights in the Service Area with respect to the Licensed Marks other than the
specific rights conferred by this agreement.
ARTICLE 5 REPRESENTATIONS,
WARRANTIES AND COVENANTS OF LICENSOR
Section 5.1. Title to the Licensed Marks. Licensor represents and warrants
that:
5
(a) Licensor has good title to the Licensed Marks and has the right to
grant the licenses provided for hereunder in accordance with the terms
and conditions hereof, free of any liabilities, charges, liens,
pledges, mortgages, restrictions, adverse claims, security interests,
rights of others, and encumbrances of any kind (collectively,
"Encumbrances"), other than Encumbrances which will not restrict or
interfere in any material respect with the exercise by Licensee of the
rights granted to Licensee hereunder.
(b) There is no claim, action, proceeding or other litigation pending or,
to the knowledge of Licensor, threatened with respect to Licensor's
ownership of the Licensed Marks or which, if adversely determined,
would restrict or otherwise interfere in any material respect with the
exercise by Licensee of the rights purported to be granted to Licensee
hereunder.
Except as expressly provided above in this Section 5.1, Licensor makes no
representation or warranty of any kind or nature whether express or implied with
respect to the Licensed Marks (including freedom from third party infringement
of the Licensed Marks).
The representations and warranties provided for in this Section 5.1 shall
survive the execution and delivery of this agreement.
Section 5.2. Other Licensees. In the event Licensor grants to any third
party any licenses or rights with respect to the Licensed Marks, Licensor shall
not, in connection with the grant of any such license or rights, take any
actions, or suffer any omission that would adversely affect the existence or
validity of the Licensed Marks or conflict with the rights granted to Licensee
hereunder.
Section 5.3. Abandonment. Licensor covenants and agrees that, during the
term of this agreement, it will not abandon the Licensed Marks.
ARTICLE 6
REPRESENTATIONS AND WARRANTIES OF BOTH PARTIES
Section 6.1. Representations and Warranties. Each party hereby represents
and warrants to the other party as follows:
(a) Due Incorporation or Formation; Authorization of Agreement. Such party
is a corporation duly organized, a limited liability company duly
organized or a partnership duly formed, validly existing and, if
applicable, in good standing under the laws of the jurisdiction of its
incorporation or formation and has the corporate, company or
partnership power and authority to own its property and carry on its
business as owned and carried on at the date hereof and as
contemplated hereby. Such party is duly licensed or qualified to do
business and, if applicable, is in good standing in each of the
jurisdictions in which the failure to be so licensed or qualified
6
would have a material adverse effect on its financial condition or its
ability to perform its obligations hereunder. Such party has the
corporate, company or partnership power and authority to execute and
deliver this agreement and to perform its obligations hereunder and
the execution, delivery and performance of this agreement have been
duly authorized by all necessary corporate, company or partnership
action. Assuming the due execution and delivery by the other party
hereto, this agreement constitutes the legal, valid and binding
obligation of such party enforceable against such party in accordance
with its terms, subject as to enforceability to limits imposed by
bankruptcy, insolvency or similar laws affecting creditors' rights
generally and the availability of equitable remedies.
(b) No Conflict with Restrictions, No Default. Neither the execution,
delivery and performance of this agreement nor the consummation by
such party of the transactions contemplated hereby (i) will conflict
with, violate or result in a breach of any of the terms, conditions or
provisions of any law, regulation, order, writ, injunction, decree,
determination or award of any court, any governmental department,
board, agency or instrumentality, domestic or foreign, or any
arbitrator, applicable to such party or any of its Controlled Related
Parties, (ii) will conflict with, violate, result in a breach of or
constitute a default under any of the terms, conditions or provisions
of the articles of incorporation, articles of organization or
certificate of formation, bylaws, operating agreement or limited
liability company agreement, or partnership agreement of such party or
any of its Controlled Related Parties or of any material agreement or
instrument to which such party or any of its Controlled Related
Parties is a party or by which such party or any of its Controlled
Related Parties is or may be bound or to which any of its material
properties or assets is subject (other than any such conflict,
violation, breach or default that has been validly and unconditionally
waived), (iii) will conflict with, violate, result in a breach of,
constitute a default under (whether with notice or lapse of time or
both), accelerate or permit the acceleration of the performance
required by, give to others any material interests or rights or
require any consent, authorization or approval under any indenture,
mortgage, lease agreement or instrument to which such party or any of
its Controlled Related Parties is a party or by which such party or
any of its Controlled Related Parties is or may be bound, or (iv) will
result in the creation or imposition of any lien upon any of the
material properties or assets of such party or any of its Controlled
Related Parties, which in any such case could reasonably be expected
to materially impair such party's ability to perform its obligations
under this agreement or to have a material adverse effect on the
consolidated financial condition of each party or its Parent.
(c) Governmental Authorizations. Any registration, declaration or filing
with, or consent, approval, license, permit or other authorization or
7
order by, any governmental or regulatory authority, domestic or
foreign, that is required to be obtained by such party in connection
with the valid execution, delivery, acceptance and performance by such
party under this agreement or the consummation by such party of any
transaction contemplated hereby has been completed, made or obtained,
as the case may be.
(d) Litigation. There are no actions, suits, proceedings or investigations
pending or, to the knowledge of such party, threatened against or
affecting such party or any of its Controlled Related Parties or any
of their properties, assets or businesses in any court or before or by
any governmental department, board, agency or instrumentality,
domestic or foreign, or any arbitrator which could, if adversely
determined (or, in the case of an investigation could lead to any
action, suit or proceeding, which if adversely determined could),
reasonably be expected to materially impair such party's ability to
perform its obligations under this agreement or to have a material
adverse effect on the consolidated financial condition of such party
or its parent; and such party or any of its Controlled Related Parties
has not received any currently effective notice of any default, and
such party or any of its Controlled Related Parties is not in default,
under any applicable order, writ, injunction, decree, permit,
determination or award of any court, any governmental department,
board, agency or instrumentality, domestic or foreign, or any
arbitrator, which default could reasonably be expected to materially
impair such party's ability to perform its obligations under this
agreement or to have a material adverse effect on the consolidated
financial condition of such party or its Parent.
Section 6.2. Survival. The representations and warranties provided for
under this Article 6 will survive the execution and delivery of this agreement.
ARTICLE 7
PROSECUTION OF INFRINGEMENT CLAIMS
Section 7.1. Notice and Prosecution of Infringement. Licensee agrees to
notify Licensor promptly, in writing, of any alleged, actual or threatened
infringement of any of the Licensed Marks within the Service Area of which
Licensee becomes aware. Licensor has the sole right to determine whether or not
to take any action on such infringements. Licensor has the sole right to employ
counsel of its choosing and to direct any litigation and settlement of
infringement actions. Any recoveries, damages and costs recovered through such
proceedings shall belong exclusively to Licensor, and Licensor shall be solely
responsible for all costs and expenses (including attorney fees) of prosecuting
such actions. Licensee agrees to provide Licensor with all reasonably requested
assistance in connection with such proceedings.
8
ARTICLE 8
LICENSEE DEFENSE AND INDEMNIFICATION OF LICENSOR
Section 8.1. Indemnification.
(a) Each party hereby agrees to indemnify the other party against and
agrees to hold it harmless from any Loss incurred or suffered by such
other party arising out of or in connection with:
(i) the material breach of any representation or warranty made by
such party in this agreement; and
(ii) the material breach of any covenant or agreement by such party
contained in this agreement.
(b) In addition to the indemnification provided for in Section 8.1(a),
Licensee agrees to indemnify Licensor against and hold it harmless
from any Loss suffered or incurred by Licensor or its Controlled
Related Parties by reason of a third party claim arising out of or
relating to (i) the use of the Licensed Marks by Licensee; or (ii) the
marketing, promotion, advertisement, distribution, lease or sale by
Licensee (or any permitted sublicensee) or by any additional Licensee
(or any permitted sublicensee) of any Sprint PCS Products and
Services, Related Equipment or Premium and Promotional Items under the
Licensed Marks pursuant to this agreement, including unfair or
fraudulent advertising claims, warranty claims and product defect or
liability claims, pertaining to the Sprint PCS Products and Services,
Related Equipment or Premium and Promotional Items. Notwithstanding
the foregoing, Licensee will not be required under this paragraph (b)
to indemnify any Loss arising solely out of Licensee's use of the
Licensed Marks in compliance with the terms of the Trademark and
Service Xxxx Usage Guidelines; provided that Licensor shall have no
obligation to indemnify for third-party claims alleged to arise from
the specifics of uses of third-party trademarks or service marks, or
the specifics of claims made, in marketing materials prepared by or
for Licensee, which marketing materials have not been approved by
Licensor prior to the publication out of which such claims are alleged
to have arisen.
ARTICLE 9
OBLIGATIONS/SETOFF
Section 9.1. Obligations/Setoff. The obligations of the parties as set
forth in this agreement shall be unconditional and irrevocable, and shall not be
subject to any defense or be released, discharged or otherwise affected by any
matter, including impossibility, illegality, impracticality, frustration of
purpose, force majeure, act of government, the bankruptcy or insolvency of any
party hereto, and the obligations of each party shall not be subject to any
9
right of setoff or recoupment which such party may not or hereafter have against
the other party.
ARTICLE 10
LIMITATION ON USE OF LICENSED MARKS
Section 10.1. Restrictions on Use. Licensee is not permitted to make any
use of the Licensed Marks in connection with products or services other than the
Sprint PCS Products and Services, and as specifically authorized in Sections
1.1(b) above with respect to Related Equipment and Premium and Promotional
Items, nor to make any use of the Licensed Marks directed outside of the Service
Area.
Section 10.2 Adherence to Trademark and Service Xxxx Usage Guidelines.
Licensee agrees to comply with and adhere to Trademark and Service Xxxx Usage
Guidelines for the depiction or presentation of the Licensed Marks, as furnished
by Licensor. Prior to Licensee depicting or presenting any of the Licensed Marks
on any type of marketing, advertising or promotional materials, Licensee agrees
to submit samples of such materials to Licensor for approval. Licensor shall
have fourteen (14) days from the date Licensor receives such materials to
approve or object to any such materials submitted to Licensor for review. In the
event Licensor does not object to such materials within such fourteen (14) day
period, such materials shall be deemed approved by Licensor. Thereafter,
Licensee shall not be obligated to submit to Licensor materials prepared in
accordance with the samples previously approved by Licensor and the Trademark
and Service Xxxx Usage Guidelines; provided, however, Licensee shall, at the
reasonable request of Licensor, continue to furnish samples of such marketing,
advertising and promotional materials to Licensor from time to time during the
term hereof at the request of Licensor.
Section 10.3. Use of Similar Trademarks and Service Marks. Licensee agrees
not to use (a) any trademark or service xxxx which is confusingly similar to, or
a colorable imitation of, the Licensed Marks or any part thereof, or (b) any
work, symbol, character, or set of words, symbols, or characters, which in any
language would be identified as the equivalent of the Licensed Marks or that are
otherwise confusingly similar to, or a colorable imitation of, the Licensed
Marks, whether during the term of this agreement or at any time following
termination of this agreement. Licensee shall not knowingly engage in any
conduct which may place the Sprint PCS Products and Services, the Licensed Marks
or Licensor in a negative light or context.
Section 10.4. Services of Public Figures. Licensee agrees to obtain
Licensor's prior written approval (which approval will not be unreasonably
withheld) before engaging the services of any celebrity or publicly known
individual for endorsement of any Sprint PCS Products and Services or Premium
and Promotional Items.
10
ARTICLE 11
CONTROL OF BRAND IMAGE
Section 11.1 Exclusive Use of Licensed Marks. The Sprint PCS Products and
Services shall be marketed by Licensee solely under the Licensed
Marks.
Section 11.2. Consistency With Brand Image and Principles. Licensee shall
use the Licensed Marks in a manner that is consistent with the brand image and
principles established by Licensor, and mechanics to ensure consistency will be
included in the Marketing Communications Guidelines.
Section 11.3 Management of Brand Image. Licensor shall be responsible for
the overall management of the brand image for the Licensed Marks. All
advertising, marketing and promotional materials using the Licensed Marks
prepared by Licensee shall, in addition to the provisions set forth in Section
11.2 above, comply with the Marketing Communications Guidelines to be furnished
by Licensor to Licensee as such Marketing Communications Guidelines may be
amended and updated by Licensor from time to time. Such Marketing Communications
Guidelines shall establish reasonable principles to be followed in the
development of advertising, marketing and promotional campaigns in order to
ensure a consistent and coherent brand image. All advertising, marketing and
promotional campaigns conducted by Licensee shall be conducted in a manner
consistent with the Marketing Communications Guidelines.
Section 11.4. Advertising Agencies, Promotions. Licensee may select its own
advertising agencies for development of its advertising and promotional
campaigns; provided, however, that all media buys shall be coordinated by
Licensee with the buying agency of Licensor. Licensee and Licensor shall conduct
ongoing reviews of upcoming advertising, marketing and promotional campaigns of
each party and shall use good faith efforts to coordinate their respective
campaigns in a manner that will maximize the advertising, marketing and
promotional efforts of the parties and be consistent with the Marketing
Communications Guidelines. Licensee shall not initiate any products or
promotions under names which are confusingly similar to any names of national
product offerings or promotions by Licensor. Neither Licensor nor any of its
Controlled Related Parties shall initiate any products or promotions under names
which are confusingly similar to any names of national product offerings or
promotions by Licensee. In addition, Licensor will use its commercially
reasonable efforts to ensure that no third party licensee under the Licensed
Marks initiates any products or promotions in the Service Area under names which
are confusingly similar to any names of national product offerings or promotions
by Licensee.
Section 11.5 Ownership of Advertising Materials. All agreements entered
into by Licensee with advertising agencies shall provide that Licensor shall own
all advertising materials (including concepts, themes, characters and the like)
created or developed thereunder. Subject to the terms and conditions set forth
herein, Licensee shall receive a perpetual, non-exclusive, royalty-free license
to use such materials in connection with advertising and promotional materials
developed by Licensee; provided, however, that the rights granted under such
11
perpetual license shall be limited solely to the use of such materials and shall
not extend the term of the license with respect to the Licensed Marks provided
for hereunder.
ARTICLE 12
RELATIONSHIP OF PARTIES
Section 12.1. Relationship of Parties. It is the express intention of the
parties that Licensee is and shall be an independent contractor and no
partnership shall exist between Licensee and Licensor pursuant hereto. This
agreement shall not be construed to make Licensee the agent or legal
representative of Licensor for any purpose whatsoever (except as expressly
provided in Articles 7 and 8), and Licensee is not granted any right or
authority to assume or create any obligations for, on behalf of, or in the name
of Licensor (except as expressly provided in Articles 7 and 8). Licensee agrees,
and shall require its permitted sublicensees to agree, not to incur or contract
any debt or obligation on behalf of Licensor, or commit any act, make any
representation, or advertise in any manner that may adversely affect any right
of Licensor in or with respect to the Licensed Marks or be detrimental to
Licensor's image.
ARTICLE 13
TERM; TERMINATION; EFFECTS OF TERMINATION
Section 13.1. Term. This agreement commences on the date of execution and
continues until the Management Agreement terminates, unless earlier terminated
in accordance with the terms set forth in this Article 13. This agreement
automatically terminates upon termination of the Management Agreement.
Section 13.2. Events of Termination. If any of the following events shall
occur with respect to Licensee, each such occurrence shall be deemed an "Event
of Termination":
(a) Bankruptcy. The occurrence of a "Bankruptcy" with respect to Licensee.
(b) Breach of Agreements. Licensee fails to perform in accordance with any
of the material terms and conditions contained herein in any material
respect.
(c) Material Misrepresentation. Licensee breaches any material
representation or warranty of Licensee made in Section 4.2 or Article
6 in any material respect.
(d) Termination of Management Agreement. The termination of the Management
Agreement, for whatever reason.
Section 13.3. Licensor's Right to Terminate Upon Event of Termination.
Licensor may, at its option, without prejudice to any other remedies it may
have, terminate this agreement by giving written notice of such termination to
Licensee as follows: (a) immediately, upon the occurrence of any Event of
Termination pursuant to Section 13.2(a) with respect to Licensee; or (b) after
12
the expiration of thirty (30) days from Licensee's receipt of written notice
from Licensor of the occurrence of any Event of Termination pursuant to Sections
13.2(b) or 13.2(c), if such failure to perform or breach is then still uncured;
or (c) immediately upon the repeated or continuing occurrence of Events of
Termination pursuant to Section 13.2(b) (regardless of whether such continuing
failures to perform or breaches have been cured by Licensee in accordance with
the provisions of clause (b) or this Section 13.3); or (d) immediately upon the
occurrence of a termination pursuant to Section 13.2(d).
Section 13.4 Licensee's Right to Terminate. Licensee may, at its option,
without prejudice to any other remedies it may have, terminate this agreement by
giving written notice of such termination to Licensor as follows: (a)
immediately, in the event that Licensor abandons the Licensed Marks or otherwise
ceases to support the Licensed Marks in Licensor's business; or (b) immediately
in the event of the occurrence of a Bankruptcy with respect to Licensor; or (c)
immediately in the event of an occurrence of termination pursuant to Section
13.2(d).
Section 13.5. Effects of Termination. Upon the termination of this
agreement for any reason, all rights of Licensee in and to the Licensed Marks in
the Service Area shall cease within thirty (30) days following the date on which
this agreement terminates (except in the case of a termination resulting from an
Event of Termination described in Section 13.2(b), (c) or (d), in which case
such rights to use the Licensed Marks will terminate immediately upon the date
of termination); provided, however, that Licensee may thereafter sell, transfer
or otherwise dispose of any Related Equipment and Premium and Promotional Items
that are then in Licensee's inventory (or which Licensee has purchased or is
then legally obligated to purchase) for an additional reasonable period not to
exceed three (3) months. Licensee's right of disposal under this Section 13.5
shall not prohibit Licensor from granting to third parties during the disposal
period licenses and other rights with respect to the Licensed Marks. The
provisions of Articles 3, 4, 5, 6 and 8 will survive any termination of this
agreement.
ARTICLE 14
ASSIGNMENT; SUBLICENSING
Section 14.1. Licensee Right to Assign. Licensee, without the prior written
consent of Licensor (in its sole discretion), shall have no right to assign any
of its rights or obligations hereunder.
Section 14.2. Licensor Right to Assign the Licensed Marks. Nothing herein
shall be construed to limit the right of the Licensor to transfer or assign its
interests in the Licensed Marks, subject to the agreement of the assignee to be
bound by the terms and conditions of this agreement.
Section 14.3. Licenses to Additional Licensees; Sublicenses; Licenses to
Additional Licensees. Licensee shall not sublicense (or attempt to sublicense)
any of its rights hereunder without the prior written consent of Licensor, in
the sole discretion of Licensor.
13
ARTICLE 15
MISCELLANEOUS
Section 15.1. Notices. Any notice, payment, demand, or communication
required or permitted to be given by any provision of this agreement shall be in
writing and mailed (certified or registered mail, postage prepaid, return
receipt requested) or sent by hand or overnight courier, or by facsimile (with
acknowledgment received), charges prepaid and addressed as described on the
Notice Address Schedule attached to the Master Signature Page, or to such other
address or number as such party may from time to time specify by written notice
to the other party. All notices and other communications given to a party in
accordance with the provisions of this agreement shall be deemed to have been
given and received (i) four (4) Business Days after the same are sent by
certified or registered mail, postage prepaid, return receipt requested, (ii)
when delivered by hand or transmitted by facsimile (with acknowledgment received
and, in the case of a facsimile only, a copy of such notice is sent no later
than the next Business Day by a reliable overnight courier service, with
acknowledgment of receipt) or (iii) one (1) Business Day after the same are sent
by a reliable overnight courier service, with acknowledgment of receipt.
Section 15.2. Binding Effect. Except as otherwise provided in this
agreement, this agreement shall be binding upon and inure to the benefit of the
parties and their respective successors, transferees, and assigns.
Section 15.3. Construction. This agreement shall be construed simply
according to its fair meaning and not strictly for or against any party.
Section 15.4. Time. Time is of the essence with respect to this agreement.
Section 15.5. Table of Contents, Headings. The table of contents and
section and other headings contained in this agreement are for reference
purposes only and are not intended to describe, interpret, define or limit the
scope, extent or intent of this agreement.
Section 15.6. Severability. Every provision of this agreement is intended
to be severable. If any term or provision hereof is illegal, invalid or
unenforceable for any reason whatsoever, that term or provision will be enforced
to the maximum extent permissible so as to effect the intent of the parties, and
such illegality, invalidity or unenforceability shall not affect the validity or
legality of the remainder of this agreement. 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.
Section 15.7. Further Action. Each party, upon the reasonable request of
the other party, agrees to perform all further acts and execute, acknowledge,
and deliver any documents which may be reasonably necessary, appropriate, or
desirable to carry out the intent and purposes of this agreement.
14
Section 15.8. Governing Law. The internal laws of the State of Missouri
(without regard to principles of conflict of law) shall govern the validity of
this agreement, the construction of its terms, and the interpretation of the
rights and duties of the parties.
Section 15.9. Specific Performance. Each party agrees with the other party
that the other party would be irreparably damaged if any of the provisions of
this agreement are not performed in accordance with their specific terms and
that monetary damages would not provide an adequate remedy in such event.
Accordingly, in addition to any other remedy to which the nonbreaching party may
be entitled, at law or in equity, the nonbreaching party shall be entitled to
injunctive relief to prevent breaches of this agreement and specifically to
enforce the terms and provisions hereof.
Section 15.10. Entire Agreement. The provisions of this agreement set forth
the entire agreement and understanding between the parties as to the subject
matter hereof and supersede all prior agreements, oral or written, and other
communications between the parties relating to the subject matter hereof.
Section 15.11 Limitation on Rights of Others. Nothing in this agreement,
whether express or implied, shall be construed to give any party other than the
parties any legal or equitable right, remedy or claim under or in respect of
this agreement.
Section 15.12. Waivers, Remedies. The observance of any term of this
agreement may be waived (either generally or in a particular instance and either
retroactively or prospectively) by the party or parties entitled to enforce such
term, but any such waiver shall be effective only if in writing signed by the
party or parties against which such waiver is to be asserted. Except as
otherwise provided herein, no failure or delay of any party in exercising any
power or right under this agreement shall operate as a waiver thereof, nor shall
any single or partial exercise of any such right or power, or any abandonment or
discontinuance of steps to enforce such right or power, preclude any other
further exercise thereof or the exercise of any other right or power.
Section 15.13. Jurisdiction, Consent to Service of Process.
(a) Each party hereby irrevocably and unconditionally submits, for itself
and its property, to the nonexclusive jurisdiction of any Missouri
State Court sitting in the County of Xxxxxxx or any Federal court of
the United States of America sitting in the Western District of
Missouri, and any appellate court from any such court, in any suit
action or proceeding arising out of or relative to this agreement, or
for recognition or enforcement of any judgment, and each party hereby
irrevocably and unconditionally agrees that all claims in respect of
any such suit, action or proceeding may be heard and determined in
such Missouri State Court or, to the extent permitted by law, in such
Federal court.
(b) Each party hereby irrevocably and unconditionally waives, to the
fullest extent it may legally do so, any objection which it may now or
15
hereafter have to the laying of venue of any suit, action or
proceeding arising out of or relating to this agreement in Missouri
State court sitting in the County of Xxxxxxx or any Federal court
sitting in the Western District of Missouri. Each party hereby
irrevocably waives, to the fullest extent permitted by law, the
defense of an inconvenient forum to the maintenance of such suit,
action or proceeding in any such court and further waives the right to
object, with respect to such suit, action or proceeding, that such
court does not have jurisdiction over such party.
(c) Each party irrevocably consents to service of process in the manner
provided for the giving of notices pursuant to this agreement,
provided that such service shall be deemed to have been given only
when actually received by such party. Nothing in this agreement shall
affect the right of a party to serve process in another manner
permitted by law.
Section 15.14. Waiver of Jury Trial. Each party waives, to the fullest
extent permitted by applicable law, any right it may have to a trial by jury in
respect of any action, suit or proceeding arising out of or relating to this
agreement.
Section 15.15 Consents. Whenever this agreement requires or permits consent
by or on behalf of a party, such consent shall be given in writing in a manner
consistent with the requirements for a waiver of compliance as set forth in
Section 15.13, with appropriate notice in accordance with Section 15.1 of this
agreement.
Section 15.16. Master Signature Page. Each party agrees that it will
execute the Master Signature Page that evidences such party's agreement to
execute, become a party to and be bound by this agreement, which document is
incorporated herein by this reference.
[The remainder of this page is intentionally left blank.]
16
FIRST ADDENDUM TO
SPRINT TRADEMARK AND SERVICE XXXX
LICENSE AGREEMENT
This FIRST ADDENDUM to the SPRINT TRADEMARK AND SERVICE XXXX LICENSE
AGREEMENT is made as of the 8th day of June, 1998, by and between Sprint
Communications Company, L.P., a limited partnership organized under the laws of
the State of Delaware, as licensor ("LICENSOR"), and Horizon Personal
Communications, Inc., an Ohio corporation, as licensee ("LICENSEE").
This First Addendum contains certain additional and supplemental terms and
provisions of that certain Sprint Trademark and Service Xxxx License Agreement
entered into contemporaneously with and by the same parties as this First
Addendum. The terms and provisions of this First Addendum control, supersede and
amend any conflicting terms and provisions contained in the Sprint Trademark and
Service Xxxx License Agreement. Except for express modifications made in this
First Addendum, the Sprint Trademark and Service Xxxx License Agreement
continues in full force and effect.
Capitalized terms used and not otherwise defined in this First Addendum
have the meanings ascribed to them in that certain Schedule of Definitions
executed contemporaneously with and by the same parties as this First Addendum.
Section and Exhibit references are to Sections and Exhibits of the Sprint
Trademark and Service Xxxx License Agreement unless otherwise noted.
The Sprint Trademark and Service Xxxx License Agreement is modified as
follows:
1. Section 11.1 is hereby amended to read as follows:
Section 11.1. Exclusive Use of Licensed Marks. The Sprint PCS Products and
Services shall be marketed solely under the Licensed Marks, except that during
the Transition Period (as described in Addendum I to the Management Agreement),
Licensee may use its trademark, a depiction of which is attached as Exhibit A
hereto, in combination with the Licensed Marks on printed materials to market
the Sprint PCS Products and Services, such use to be in strict compliance with
Model 1 of the Sprint PCS Manager Guidelines, the current version of which is
attached hereto as Exhibit B, such guidelines to be amended from time to time by
Licensor in its reasonable sole discretion. During the Term of the Sprint
Trademark and Service Xxxx License Agreement after the Transition Period,
Licensee may use its trademark in combination with the Licensed Marks on printed
materials to market the Sprint PCS Products and Services, such use to be in
strict compliance with Model 2 of the Sprint PCS Manager Guidelines.
[The remainder of this page has intentionally been left blank.]
SPRINT COMMUNICATIONS COMPANY, L.P.
For and in consideration of the covenants contained in this First Addendum
to the Sprint Trademark and Service Xxxx License Agreement, and for good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, Sprint Communications Company, L.P. executes, becomes a party to,
and agrees to be bound by and to perform its obligations under this First
Addendum to the Sprint Trademark and Service Xxxx License Agreement as of the
8th day of June, 1998.
SPRINT COMMUNICATIONS COMPANY, L.P.
By:_______________________________________
Xxxxxxx X. Xxxxxxxx
Vice President, Wireless
HORIZON PERSONAL COMMUNICATIONS, INC.
For and in consideration of the covenants contained in this First Addendum
to the Sprint Trademark and Service Xxxx License Agreement, and for good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, Horizon Personal Communications, Inc. executes, becomes a party
to, and agrees to be bound by and to perform its obligations under this First
Addendum to the Sprint Trademark and Service Xxxx License Agreement as of the
8th day of June, 1998.
HORIZON PERSONAL COMMUNICATIONS, INC.
By:_______________________________________
Name:
Title:
2
MARKETING COMMUNICATIONS GUIDELINES
FOR USE OF THE SPRINT BRAND AND TRADEMARKS
FEBRUARY, 1998
I. Branding
A) Any use of the Sprint name in conjunction with the Diamond logo
("Sprint Brand") or any other Sprint trademark or service xxxx
("Trademark") is permitted only pursuant to a signed License Agreement
("License") with Sprint Communications Company L.P. ("Sprint"). The
Sprint Brand and Trademarks are collectively referred to as "Sprint
Marks."
B) In addition to compliance with the License, all uses of the Sprint
Marks must adhere to both these Marketing Communications Guidelines
and to the Sprint Trademark Usage Guidelines, a copy of which is
attached to the License, which include standards for use and
application relating to:
o Corporate Branding
o Product Branding
o Service Branding
o Co-Branding
o Retail Applications (point-of-sale)
o Packaging
C) All communications that use the Sprint Brand or Trademarks must be
presented to Sprint ten (10) days prior to use for review and
approval.
II. Usage Guidelines
A) Any public use of the Sprint Marks ("Use") must follow Sprint's
guidelines. Use of the Marks includes the following:
o Broadcast (TV and Radio)
o Print
o Direct Mail
o New Media (on-line, CD ROM, Internet, etc.)
o Collateral Materials
o Endorsements/Sponsorships
o Use of Celebrities and/or Public Figures
o Retail Packaging/Use with Third Parties
1
B) The following standards apply to all Uses of the Sprint Marks.
o All uses of the Sprint marks must be in a manner generally consistent
with the overall Sprint Brand Positioning Statement (attached as Ex.
1), as determined by Sprint. Sprint will review all
advertising/communication strategy and make judgments on its
consistency with the overall Sprint Brand positioning within ten (10)
days of receipt. If the strategy is judged to be inconsistent, it will
not be used or will be changed to be consistent with Sprint Brand
positioning. Pre-production advertising/communications will be
reviewed by Sprint for consistency with the Sprint Brand Positioning
and personality within ten (10) days of receipt. If the
advertising/communications are judged to be inconsistent, they will
not be used or will be changed to be consistent with Sprint Brand
positioning and personality.
o Sponsorship or endorsements using the Sprint Brand are not allowed
without the prior written consent of Sprint. The criteria that will be
used by Sprint in determining whether to allow the proposed
sponsorship or endorsement are attached as Exhibit 2. All new
sponsorships or endorsements must be consistent with Sprint Brand
positioning and should not compete in any way with any of Sprint's
existing sponsorships or endorsements. Sprint will review any new
sponsorships that are being recommended and will made judgments on
consistency with the overall Sprint sponsorship strategy within thirty
(30) days of receipt.
o Only the Sprint name and the Diamond Logo are being licensed. Sprint
advertising equities (i.e., Xxxxxxx Xxxxxx and Pin Drop) are not being
licensed.
o All Uses of the Sprint Marks must be consistent with the Sprint
Guidelines/Standards (attached as Exhibit 3). Use of the Sprint Marks
on packaging and with third parties must also meet the Sprint
Guidelines/Standards.
2
EXHIBIT 1
SPRINT POSITIONING STATEMENT
To the people who value communications highly, Sprint is the premier "two-way"
full service communications company whose technology and speed of response to
emerging customer needs allows it to deliver sophisticated, highly useful
products and services that make communications simpler and more productive.
Sprint does this by:
o Building all of its points of customer contact and the delivery of its
products in use around speed-responsiveness/simplicity.
o Knowing and respecting what our customers want, anticipating their needs,
providing value through listening, proactive contact, and response
(establishing a "two-way" relationship).
o Responding to needs as they develop with highly useful and sophisticated
products and services delivered in ways that are simple, productive, and
straightforward to access and use.
o Striving to provide the above at the best price-value relationship.
Desired Customer Reaction:
"I can trust Sprint to consistently and quickly respond to my needs with
valuable products and services that truly make communicating simpler and
productive."
Brand Personality Statement:
"Sprint is a savvy, smart individual. Innovative and nimble, Sprint is a good
listener, and comes across in a straightforward, likeable, no-nonsense way with
an air of irreverence."
3
EXHIBIT 2
SPONSORSHIP AND ENDORSEMENT
SELECTION GUIDELINES AND STANDARDS
I. SPONSORSHIPS
The following guidelines are used when determining whether or not Sprint will
invest in a particular sponsorship property.
o The sponsorship must be consistent with the overall positioning of the
Sprint Brand, and must be consistent with Sprint's sponsorship marketing
objectives of brand building, business building, and positive employee
impact.
o The sponsorship must reflect or enhance Sprint's position or image in the
marketplace. There must be a natural telecommunication link with the
property, preferably as the/a provider.
o The sponsorship should be a legitimate forum for Sprint's participation.
o The sponsorship should offer a dominant position among sponsors of the
property/event and/or should provide category exclusivity. This brand
visibility for Sprint should occur through on-site signage, the event name
and media visibility, as examples.
o The sponsorship should provide an opportunity for a consistent, long-term
relationship with the property.
o If the sponsorship is a barter deal, the media/merchandising value of the
sponsorship should reflect a 2.5x or greater return for Sprint vis-a-vis
the barter amount.
o The sponsorship must provide opportunities for measurement such that both
brand impact and business impact can be quantified.
II. ENDORSEMENTS
o Endorsements of the Sprint Brand should be used in a manner consistent with
Sprint's brand positioning and personality. New endorsements should in no
way compete with existing programs.
o Sprint will review any new endorsements that are being recommended and will
make judgments on consistency and conflict within ten (10) days of receipt.
4
Use of Celebrity and/or Public Figures
o The use of a celebrity/public figure must be consistent with Sprint's brand
positioning and enhance Sprint's brand personality.
o Use of new celebrities/public figures should not be in conflict with
current celebrity programs, and should not be considered if such use would
serve to confuse customers. Sprint currently has a primary celebrity
spokesperson, Xxxxxxx Xxxxxx. Any additional celebrities must complement
not serve as a substitute for - Xxxxxxx Xxxxxx as spokesperson.
o The celebrity should offer telecommunications category (worldwide) and
cable MSO exclusive rights to Sprint.
o Celebrities/public figures who have now, or in the past, a controversial
role (as determined by Sprint) should not be considered.
o Measurement data should be provided to confirm the celebrities broad-based
appeal.
5
EXHIBIT 3
SPRINT GUIDELINES/STANDARDS
Standards and Monitor Process
The Sprint Brand is critical to the short-term and long-term success of Sprint.
As such, it is extremely important that we protect the Brand by displaying it in
a manner that is appropriate for family viewing. As a marketer and advertiser
our objective is to communicate the value of the products and services we offer
to consumers. Unless negotiated as part of a sponsorship contract, we do not
consider Sprint a "sponsor" of any program in which we advertise. The program,
Internet site or product is simply a vehicle for communication to our targeted
consumers.
General Guidelines
1. Use the Marks only in a manner that will continue to build positive
consumer perceptions toward the Sprint Brand.
2. Although we can not dictate positioning on television or Internet
advertising during specific editorial, news related advertising should not
be positioned near "Special Reports" due to tragic events or disasters
(i.e. Oklahoma City bombings, X.X. Xxxxxxx trial, etc.)
3. Do not advertise on television or Internet sites that are overly
controversial, significantly biased, or presented in a manner that would be
considered offensive to the general public.
4. Use of the Sprint Marks with third parties or on retail packaging is
prohibited unless authorized by the License Agreement. If the Sprint Marks
are used with a third party's marks or on retail packaging pursuant to the
License, the Use of the Sprint Marks must not be offensive, must not make
any false or unethical claims and must not imply a relationship between
Sprint and a telecommunications company not affiliated with Sprint.
Content to Avoid on Television or Internet or in Third Party Use
1. Excessive vulgar language, violence, or sexual conduct that is explicit and
would not be considered appropriate for family viewing.
2. Discriminating or inflammatory representation or editorial content which is
specific to a particular individual, group, religious or political
affiliation, ethic background, or gender.
3. News programming that represents or expresses a bias relative to
controversial political or social issues.
6
4. Content, editorial, or investigative reporting that creates a negative
perception of the telecommunications industry.
General Definitions
The issue of determining appropriate content is very subjective and will vary
from individual to individual. The following definitions will provide direction
for key content issues.
Violence - Gratuitous, on-screen, violent acts that have significant
re-occurrence during an episode or movie are not appropriate for Sprint
advertising.
Nudity - Programming or Internet sites that contain strong sexual content and/or
nudity is not acceptable for Sprint programming. However, if the scene is
important to the plot and is not the primary theme of the episode or movie, it
is acceptable only with advertising positioning away from the scene in question.
Language - The excessive use of vulgar language is not appropriate.
News Programming - News specific programs or Internet sites arc acceptable when
the journalism is handled in a professional and unbiased manner. (i.e. early or
late local news, network xxxx, XXX Headline News, XXX.xxx, etc.)
News magazines are considered an appropriate advertising vehicle. However,
individual episodes in which Sprint advertises must be prescreened to determine
sensitivity to the particular topics being addressed. Any segment which contains
a highly controversial topic that may negatively impact consumer perceptions of
Sprint must be avoided.
Television Program Monitoring Process
All prime-time television programming that is scheduled to include Sprint
advertising is pre-screened to determine if the content is appropriate for
Sprint. The following is the procedure for content monitoring to ensure that the
guidelines are met and the Sprint Brand is protected:
o Provide the content screening company with Sprint's schedule of
prime-time programming including up to the minute changes.
o All Sprint programming is screened to determine if the content is
appropriate for Sprint (per our guidelines).
o Agency network buying group is notified immediately of any content
concerns.
o Agency contacts Sprint Brand Investment Group Media staff regarding the
content in question. Sprint will make final decision regarding the
acceptability of the programming.
7
