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Exhibit 10.42
EXECUTION COPY
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement ("Agreement") is made and entered into
this 13th day of April, 1999 (the "Closing Date") by and between Samsung
Electronics Co., Ltd., corporation organized under the laws of the Republic of
Korea ("Samsung") and Xxxxxxxxx Korea Semiconductor Ltd., a corporation
organized under the laws of the Republic of Korea ("Fairchild"). Either Samsung
or Fairchild may be referred to herein as a "Party" or together as the
"Parties," as the case may require. Unless otherwise defined herein, capitalized
terms used herein shall have the meaning ascribed to such term in the business
transfer agreement, dated as of December 20, 1998 (the "Business Transfer
Agreement"), by and between Samsung and Xxxxxxxxx Semiconductor Corporation.
RECITALS
WHEREAS, Samsung and Xxxxxxxxx Semiconductor Corporation have entered
into the Business Transfer Agreement pursuant to which Fairchild will acquire
all of the Conveyed Assets and assume all of the Assumed Liabilities upon the
terms and conditions set forth in the Business Transfer Agreement; and
WHEREAS, pursuant to the Business Transfer Agreement, Samsung has
agreed to grant to Fairchild a temporary license for the use of Samsung
Trademarks; and
WHEREAS, the execution and delivery of this Agreement is required by
the Business Transfer Agreement and is a condition to the closing of the
transactions contemplated thereunder.
NOW, THEREFORE, in consideration of the promises and the mutual
covenants and undertakings contained herein, the Parties hereto, intending to be
legally bound hereby, do agree as follows:
I. DEFINITIONS
Capitalized terms herein shall have the meanings given them in the
Business Transfer Agreement unless otherwise defined herein set forth below.
1.1 "Business Product" means any MOSFET, power transistor
(including Small Signal TRS and Power TRS), diode, motor IC,
standard linear IC, SPS, IGBT or other power device
manufactured, marketed, under design or development or sold by
the Business on the Closing Date, or historically manufactured
by the Business, except for a range of multimedia products
described in the Foundry Sale Agreement and Third Party
Foundry Product.
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1.2 "Business Product Code" means any product or part
identification code adopted by Samsung for the Business
Product as of the Closing Date.
1.3 "Die" means a Business Product prior to its incorporation into
a Package.
1.4 "Device" means one or more Dies mounted in a Package.
1.5 "Masks" means the masks used by the Business at Bucheon
Facility in the manufacture of Dies which include Samsung
Trademarks. The Masks, when used to manufacture Dies will form
an image of Samsung Trademarks in various layers that form the
semiconductor circuits in Dies.
1.6 "Package" means a specific type of an enclosure for
encompassing a Die including electrical contacts thereto, used
by the Business as of the Closing Date which include Samsung
Trademarks and Business Product Code.
1.7 "Packaging" means containers, boxes, tubes, and the like used
to ship the Business Products.
1.8 "Printed Material" means brochures, manuals, data books and
other sales and marketing information used in the sale, or for
marketing of the Business Products.
1.9 "Samsung Trademark" means any Trademarks owned or controlled
by Samsung used with or embedded on Masks, Printed Materials,
or Packaging.
2. LICENSE
Subject to the terms and conditions of this Agreement:
2.1 MASKS & PACKAGES
As of the Closing Date and subject to the terms of this
Agreement, Samsung hereby grants to Fairchild a worldwide,
royalty-free, non-exclusive, non-transferable, personal
license (with no right to sublicense) under Samsung Trademarks
to use Samsung Trademarks as embedded in the presently
existing Masks and/or Packages to manufacture Dies and to sell
such Dies and/or Devices including Dies as long as the
continuing use of Samsung Trademarks embedded on such Masks
are still necessary to avoid retooling, requalification of
existing Business Products or customer disruption.
Notwithstanding the foregoing, Fairchild shall use its good
faith efforts to discontinue the use of Samsung Trademarks on
the Masks and the Packages and to replace with Xxxxxxxxx'x own
trademarks and identification thereon. In the event that
Fairchild revises or otherwise modifies a Mask in any way
which requires retooling, customer's
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requalification or change of the Business Product Code, any
license granted to use the Samsung Trademarks on the modified
Mask shall terminate, and Fairchild shall not include any of
Samsung Trademarks on such modified masks. In the event that
Fairchild makes any mask for new product other than Masks for
the Business Products, the license granted herein shall not be
applied to such new mask and Fairchild shall not include any
of Samsung Trademarks thereon. In the event that any Business
Product is obsolete, Fairchild shall no longer have licenses
granted herein this Agreement. In the event any specific type
of presently existing Package encompasses any Die other than
the specific types of Dies presently encompassed by such
Package, such package shall be construed as a new package and
Fairchild shall not have any right to use any of Samsung
Trademarks and Business Product Code on such package, provided
however Fairchild may use Samsung Trademarks and Business
Product Code on such Die as embedded on the Mask for such Die.
2.2 BUSINESS PRODUCT CODE
As of the Closing Date and subject to the terms of this
Agreement, Samsung hereby grants to Fairchild a worldwide,
royalty-free, non-exclusive, non-transferable, personal
license (with no right to sublicense) to use the Business
Product Codes in relation to the manufacture and sale of the
Dies as long as the continuing use of the Business Product
Codes are still necessary to avoid retooling, requalification
of existing Business Products or customer disruption.
Notwithstanding the foregoing, Fairchild shall use its good
faith efforts to discontinue the use of the Business Product
Codes and to replace with Xxxxxxxxx'x own product
identification code.
2.3 INVENTORY
It is understood that in the event the Samsung Trademarks are
included on completed finished Dies and/or Devices in
inventory at the Business as of the Closing Date, such
completed Devices and/or Dies may be resold by Fairchild with
such Trademarks thereon until the inventory is exhausted.
2.4 PACKAGING & PRINTED MATERIALS
As to Packaging and Printed Materials, Fairchild agrees to
remove or cover any of Samsung Trademarks (except for the
Business Product Code) on existing Packaging and Printed
Materials, if any, prior to the use, or disposition thereof,
and to replace with and apply Xxxxxxxxx'x own trademarks on
any and all Packaging and Printed Materials promptly after the
Closing Date, but not later than the end of April, 1999.
2.5 MANUFACTURER IDENTIFICATION
Fairchild shall assure and implement, through date coding or
some other methods mutually agreed by the Parties, on the Dies
and Devices to avoid confusion by any
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third parties in determining whether such Dies/Devices were
made by Fairchild or Samsung when such Dies are using Samsung
Trademarks.
2.6 NO OTHER LICENSE
Except for the license for the use of Samsung Trademarks and
Business Product Codes expressly granted in the Sections 2.1,
2.2 and 2.3 above, no license right whatsoever is granted to
Fairchild directly or indirectly pursuant to this Agreement.
3. OWNERSHIP & COMPLIANCE
(a) Fairchild acknowledges that the Samsung Trademarks and the
Business Product Codes are the exclusive and sole property of
Samsung and Samsung will retain full ownership of the Samsung
Trademarks and the Business Product Codes and all rights
appurtenant thereto, and that all use of the Samsung
Trademarks and the Business Product Codes by Fairchild shall
inure to the sole benefit of Samsung.
(b) Fairchild agrees not to adopt or use any other xxxx, logo or
identification that is confusingly similar to the Samsung
Trademarks.
(c) Fairchild agrees that it shall use its Best Efforts to avoid
endangering the validity of Samsung Trademarks including
complying with all laws or regulations of all countries where
its products are sold. Should the compliance with the laws or
regulations of the country result in the potential dilution or
loss of trade name or trademarks of Samsung in the Samsung
Trademarks, Fairchild shall promptly notify Samsung of the
same and Fairchild shall take such actions as may be
reasonably required by Samsung from time to time to preserve
the validity of Samsung Trademarks.
(d) Fairchild agrees that it shall fully comply with Samsung's
guidelines, provided to Fairchild from time to time, for the
use of Samsung Trademarks.
(e) Fairchild shall identify such Masks and Business Product Codes
which Fairchild is still using for the Business Products after
each one (1) year period from the Closing and provide Samsung
with the list of such Masks and Business Product Codes within
thirty (30) days from Samsung's notice to Fairchild after
expiration of each preceding one (1) year period.
4. QUALITY CONTROL
To protect the value of Samsung Trademarks, Fairchild agrees that the
manufacture of the Business Products shall be substantially at least equivalent
in quality to the Business Products presently being manufactured and sold by
Samsung with respect to materials, workmanship, and performance. Samsung
reserves the right to inspect the quality of the Business Products sold or
disposed of by Fairchild under Samsung Trademarks in order to ensure that the
quality is as
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aforesaid and for the purpose of maintaining in full force and effect Samsung's
rights to and in Samsung Trademarks under the applicable trademark laws. From
time to time during normal business hours and in such manner so as not to
disrupt Xxxxxxxxx'x business, Samsung may send representatives to the plants of
Fairchild to consult with and advise Fairchild with respect to Xxxxxxxxx'x
quality control of the Business Products.
5. REPRESENTATIONS & WARRANTIES; DISCLAIMERS; INDEMNITY
5.1 REPRESENTATIONS & WARRANTIES
(a) Samsung hereby represents and warrants that (i) it
has the right to make the license grants provided and
that such license grants do not violate or conflict
with any agreement to which Samsung or any of its
Affiliates is a party or by which any of them is
bound and (ii) this Agreement has been duly executed
and delivered by Samsung and, assuming the due
execution hereof by Fairchild, this Agreement
constitutes the legal, valid and binding obligation
of Samsung, enforceable in accordance with its terms.
(b) Fairchild hereby represents and warrants that (i) it
has the full power and authority to enter into this
Agreement and (ii) this Agreement has been duly
executed and delivered by Fairchild and, assuming the
due execution hereof by Samsung, this Agreement
constitutes the legal, valid and binding obligation
of Fairchild, enforceable in accordance with its
terms.
5.2 DISCLAIMERS
EXCEPT FOR THE WARRANTY SPECIFICALLY PROVIDED HEREIN THIS
SECTION 5 ABOVE, SAMSUNG MAKES NO OTHER WARRANTIES, EXPRESS OR
IMPLIED, OR STATUTORY, INCLUDING, BUT NOT LIMITED TO, ANY
IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR USE.
5.3 INDEMNIFICATION
(a) Fairchild agrees to indemnify, defend, and hold
harmless with respect to any claims, charges, or
litigation by third parties against Samsung based
upon the quality, safety, reliability, performance,
or marketability of any of the Business Products
manufactured and marketed by Fairchild or based upon
any injury to persons or property involved in the use
of such Business Products that involve Xxxxxxxxx'x
use of Samsung Trademarks as long as such is
attributable to Fairchild, or caused by Xxxxxxxxx'x
breach of any representation, warranty or other
obligation stated under this Agreement.
(b) Samsung agrees to indemnify, defend, and hold
harmless with respect to any claims, charges, or
litigation by third parties against Fairchild caused
by
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Samsung's breach of any representation, warranty or
other obligation stated under this Agreement.
6. TERMINATION
(a) The term of this Agreement is ten (10) years from the Closing
Date unless earlier terminated in accordance with this Section
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(b) Samsung shall have the right to terminate the license granted
in this Agreement if Fairchild defaults in performing any of
the terms and conditions of this Agreement and shall fail to
remedy such default within thirty (30) days after receiving
written notice thereof from Samsung. The licenses granted in
this Agreement shall automatically terminate, effective
immediately upon the event that Fairchild shall be adjudged
bankrupt; become insolvent; make an assignment for the benefit
of creditors; have a receiver or trustee appointed; file a
petition for bankruptcy; initiate reorganization proceedings
or take steps toward liquidation; or lose, dispose or have
expropriated substantially all of its assets.
(b) Upon expiration and/or termination of this Agreement, the
licenses granted shall terminate, Fairchild shall immediately
discontinue use of Samsung Trademarks and Business Product
Codes, and Fairchild shall not use any marks, logos, product
codes or other identification confusingly similar to Samsung
Trademarks and Business Product Codes.
7. GENERAL
7.1 EFFECTIVE DATE
Samsung's license grant to Fairchild under this Agreement are
conditioned upon the Closing, the occurrence of which is
subject to various conditions set forth in the Business
Transfer Agreement. This Agreement shall become operative if
and when the Closing occurs and shall be null and void if the
Closing does not occur for any reason.
7.2 RELATIONSHIP OF THE PARTIES
This Agreement does not create a fiduciary or agency
relationship between Samsung and Fairchild, each of which
shall be and at all times remain independent companies for all
purposes hereunder. Nothing in this Agreement is intended to
make either Party a general or special agent, joint venturer,
partner or employee of the other for any purpose.
7.3 COUNTERPARTS
This Agreement may be executed in two or more counterparts,
all of which shall be considered one and the same agreement,
and shall become effective when one
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or more counterparts have been signed by each of the Parties
and delivered to the other party.
7.4 GOVERNING LAW; CONSENT TO JURISDICTION
This Agreement shall be governed by and construed in
accordance with the laws of the Republic of Korea without
reference to the choice of law principles thereof. The Samsung
and Fairchild consent to and hereby submit to the
non-exclusive jurisdiction of the Seoul District Court located
in the Republic of Korea in connection with any action, suit
or proceeding arising out of or relating to this Agreement,
and each of the Parties hereto irrevocably waives, to the
fullest extent permitted by law, any objection which it may
now or hereafter have to the laying of the venue of any such
proceeding brought in such a court and any claim that any such
proceeding brought in such a court has been brought in an
inconvenient forum.
7.5 ENTIRE AGREEMENT
This Agreement (including agreements incorporated herein),
Business Transfer Agreement, the Confidentiality Agreement and
the Schedules and Exhibits hereto or thereto contain the
entire agreement between the Parties with respect to the
subject matter hereof and there are no agreements,
understandings, representations or warranties between the
Parties other than those set forth or referred to herein.
7.6 NO THIRD-PARTY BENEFICIARIES
Nothing in this Agreement, express or implied, is intended to
or shall confer on any Person other than the Parties hereto
and their respective successors or assigns any rights
(including third-party beneficiary rights), remedies,
obligations or liabilities under or by reason of this
Agreement. This Agreement shall not provide third parties with
any remedy, claim, liability, reimbursement, cause of action
or other right in excess of those existing without reference
to the terms of this Agreement.
7.7 INTERPRETATION; ABSENCE OF PRESUMPTION
(a) For the purposes hereof, (i) words in the singular
shall be held to include the plural and vice versa
and words of one gender shall be held to include the
other gender as the context requires, (ii) the terms
"hereof," "herein," and "herewith" and words of
similar import shall, unless otherwise stated, be
construed to refer to this Agreement as a whole
(including all of the Schedules hereto) and not to
any particular provision of this Agreement, and
Article, Section, paragraph and Schedule references
are to the Articles, Sections, paragraphs and
Schedules to this Agreement unless otherwise
specified, (iii) the word "including" and words of
similar import when used in this Agreement means
"including, without limitation," unless the context
otherwise requires or unless otherwise specified,
(iv) the word "or" shall not
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be exclusive, (v) provisions shall apply, when
appropriate, to successive events and transactions,
and (vi) all references to any period of days shall
be deemed to be to the relevant number of calendar
days.
(b) This Agreement shall be construed without regard to
any presumption or rule requiring construction or
interpretation against the Party drafting or causing
any instrument to be drafted.
7.8 FORCE MAJEURE
A Party shall not be liable for a failure or delay in the
performance of any of its obligations under this Agreement
where such failure or delay is the result of conditions beyond
the control of said Party, such as fire, flood, or other
natural disaster, act of God, war, embargo, riot, labor
dispute, or the intervention of any government authority,
providing that the Party failing in or delaying its
performance immediately notifies the other Party of its
inability to perform and states the reason for such inability.
7.9 FURTHER ASSURANCES
Each Party shall cooperate and take such action as may be
reasonably requested by another Party in order to carry out
the provisions and purposes of this Agreement and the
transactions contemplated hereby.
7.10 NOTICES
All notices hereunder shall be sufficiently given for all
purposes hereunder if in writing and delivered personally,
sent by documented overnight delivery service or, to the
extent receipt is confirmed, telecopy, telex or other
electronic transmission service to the appropriate address or
number as set forth below.
Notices to Samsung shall be addressed to:
Samsung Electronics Co., Ltd.
Samsung Main Xxxxxxxx
000, 0-Xx, Xxxxxxxx-Xx, Xxxxx-Xx
Xxxxx, Xxxxx
Attention: Director, Legal Department
Telecopy No.: 000-000-0000
With a copy to:
Xxx, Xxx & Xxx
Hankook Tire Xxxx. 000-00
Xxxxxx-Xxxx, Xxxxxxx-Xx
Xxxxx 000-000, Xxxxx
Attention: Kap-You Xxx
Telecopy No.: 000-0000-0000
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or at such other address and to the attention of such other
Person as Samsung may designate by written notice to
Fairchild.
Notices to Fairchild shall be addressed to:
Xxxxxxxxx Korea Semiconductor, Ltd.
00-0, Xxxxxx-Xxxx, Xxxxx-Xx.
Xxxxxxx, Xxxxxxx-Xx
Xxxxx
Attention: President
Telecopy No.: 0000-000-0000
Xxxxxxxxx Semiconductor Corporation
000 Xxxxxxx Xxxxxx, X.X. 00-00
Xxxxx Xxxxxxxx, Xxxxx 00000
Attention: Xxxxxx X. Xxxxx, Esq., Executive Vice President and
General Counsel
Telecopy No. 0-000-000-0000
with a copy to:
Xxx & Xxxxx
000 Xxxxx-Xxxx, Xxxxxxx-Xx
Xxxxx 000-000, Xxxxx
Attention: Y.J. Ro
Telecopy No.: 000-000-0000
or at such other address and to the attention of such other
Person as Fairchild may designate by written notice to
Samsung.
7.11 ASSIGNMENT
This Agreement shall be binding upon and inure to the benefit
of the Parties hereto and their respective successors and
assigns; provided, however, that no party hereto will assign
its rights or delegate its obligations under this Agreement
without the express prior written consent of each other Party
hereto, except that (i) Fairchild may assign its rights
hereunder as collateral security to any bona fide financial
institution engaged in acquisition financing in the ordinary
course providing financing to consummate the transactions
contemplated hereby or any bona fide financial institution
engaged in acquisition financing in the ordinary course
through which such financing is refunded, replaced or
refinanced and any of the foregoing financial institutions may
assign such rights in connection with a sale of Fairchild in
the form then being conducted by Fairchild substantially as an
entirety, and (ii) Samsung and Fairchild each may assign its
rights and obligations under this Agreement to any Entity that
succeeds to substantially all of its assets and liabilities.
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7.12 HEADINGS; DEFINITIONS
The section and article headings contained in this Agreement
are inserted for convenience of reference only and will not
affect the meaning or interpretation of this Agreement. All
references to Sections or Articles contained herein mean
Sections or Articles of this Agreement unless otherwise
stated.
7.13 AMENDMENT
This Agreement may not be amended, modified, superseded,
canceled, renewed or extended except by a written instrument
signed by the Party to be charged therewith.
7.14 WAIVER; EFFECT OF WAIVER
No provision of this Agreement may be waived except by a
written instrument signed by the party waiving compliance. No
waiver by any party hereto of any of the requirements hereof
or of any of such Party's rights hereunder shall release the
other Parties from full performance of their remaining
obligations stated herein. No failure to exercise or delay in
exercising on the part of any Party hereto any right, power or
privilege of such Party shall operate as a waiver thereof, nor
shall any single or partial exercise of any right, power or
privilege preclude any other or further exercise thereof or
the exercise of any other right, power or privilege by such
Party.
7.15 INJUNCTIVE RELIEF
Fairchild agrees that Samsung shall have the right to a claim
for injunctive relief, in addition to monetary remedies
available under law or contract, in the event of any
repudiation or breach or attempted repudiation or breach, of
any term or condition hereunder, and Fairchild shall not
object to any such claim, it being acknowledged that for any
such claim, a remedy at law would be inadequate.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed on their behalf as of the date first written above.
SAMSUNG ELECTRONICS CO., LTD.
By: /s/ Xxx Xxx
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Name:
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Title:
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XXXXXXXXX KOREA SEMICONDUCTOR, LTD.
By: /s/ Xxxxxx X. Xxxxxx
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Name: XXXXXX X. XXXXXX
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Title: EXEC. V.P.
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