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Exhibit 10.4
INTELLECTUAL PROPERTY AGREEMENT
This INTELLECTUAL PROPERTY AGREEMENT (the "Agreement") is dated as
of _______ __, 1998, between THE DUN & BRADSTREET CORPORATION, a Delaware
corporation (the "Corporation"), and THE NEW DUN & BRADSTREET CORPORATION, a
Delaware corporation ("New D&B") (each a "Party" and collectively, the
"Parties").
RECITALS
WHEREAS, the Corporation, acting through its direct and indirect
subsidiaries, currently owns various intellectual property rights used in
connection with a number of businesses, which businesses are described in the
Distribution Agreement dated as of _________ __, 1998, between the Corporation
and New D&B (the "Distribution Agreement"); and
WHEREAS, the Parties hereto have determined that this Agreement is
appropriate in order to effectuate the purposes of the Distribution Agreement as
described therein, and in order to promote a clear understanding of their
respective intellectual property rights subsequent to the execution of said
Distribution Agreement and the Distribution (as defined therein) contemplated
thereby;
NOW, THEREFORE, in consideration of the mutual agreements,
undertakings and covenants herein and therein, the sufficiency of which is
hereby acknowledged, the Parties hereby agree as follows:
ARTICLE I. DEFINITIONS
Section 1.01. Except as may be set forth herein, all defined terms
shall have the meaning set forth in Article I, Section 1.1 of the Distribution
Agreement.
Section 1.02. "Infringement" shall mean any infringement, imitation,
dilution, distortion, misappropriation or other unauthorized use or conduct in
violation or derogation of the rights in question.
Section 1.03. "Intellectual Property" shall mean all intellectual
property rights related to the Assets or Businesses of either the Corporation or
New D&B as defined in the Distribution Agreement, as they are now or may in
future exist or be conducted, including without limitation:
a. any and all rights, privileges and priorities arising under
the laws or treaties of the United States, any state,
territory or possession thereof, any other country or
political subdivision or territory thereof, or the European
Community, relating to intellectual property, including
patents, copyrights, trade names, trademarks, service marks,
mask works, trade secrets,
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inventions, databases, names and logos, trade dress,
technology, know-how, and other proprietary information and
licenses from third persons granting the right to use any of
the foregoing, including all registrations and applications
for any of the foregoing that have been issued by or filed
with the appropriate authorities, any common-law rights
arising from the use of the foregoing, any rights commonly
known as "industrial property rights" or the "moral rights" of
authors relating to the foregoing, all rights of renewal,
continuations, divisions, extensions and the like regarding
the foregoing and all claims, causes of action, or other
rights arising out of or relating to any actual or threatened
Infringement by any person relating to the foregoing;
b. all computer applications, programs and other software,
including without limitation operating software, network
software, firmware, middleware, and design software, all
design tools, systems documentation and instructions,
databases, and related items except to the extent that they
may be more specifically addressed in the Data Services
Agreement; and
c. all cost information, sales and pricing data, customer
prospect lists, supplier records, customer and supplier lists,
customer and vendor data, correspondence and lists, product
literature, artwork, design, development and manufacturing
files, vendor and customer drawings, formulations and
specifications, quality records and reports and other books,
records, studies, surveys, reports, plans and documents.
Section 1.04. "Intellectual Property Disputes" shall mean any and
all controversies, disputes or claims arising out of, in connection with, or in
relation to the interpretation, performance, nonperformance, validity or breach
of this Agreement or otherwise arising out of, or in any way related to this
Agreement or the Intellectual Property, including, without limitation, any and
all claims based on contract, tort, statute or constitution.
ARTICLE II. OWNERSHIP OF INTELLECTUAL PROPERTY.
General Principles of Allocation and Recognition
Section 2.01. Without limiting any obligation or liability of the
Corporation under the Distribution Agreement or any Ancillary Agreement, each of
the Parties hereto acknowledges, recognizes and agrees that, after the
Distribution, the Corporation (or another member of the RHD Group) shall own all
right, title and interest in all Intellectual Property that (i) originated
primarily with the conduct of the RHD Business or primarily in connection with
the RHD Assets; (ii) was obtained by, or exclusively or primarily for the
conduct of, the RHD Business or in connection with the RHD Assets; (iii) was
developed exclusively or primarily for the conduct of the RHD Business or in
connection with the RHD Assets; (iv) arose from funding by, or exclusively or
primarily for the benefit of the conduct of, the RHD Business or in connection
with the RHD Assets; or (v) as of the Distribution Date is used or held for use
exclusively or
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primarily for the conduct of the RHD Business or in connection with the RHD
Assets. If a conflict exists between any of the subsections (i) through (iv) of
this Section or Section 2.02 on the one hand and subsection (v) of this Section
on the other hand, then subsection (v) of this Section 2.01 shall prevail.
Section 2.02. Without limiting any obligation or liability of New
D&B under the Distribution Agreement or any Ancillary Agreement, and subject to
the provisions set forth in Article III below, each of the Parties hereto
acknowledges, recognizes and agrees that, after the Distribution, New D&B (or
another member of the New D&B Group) shall own all right, title and interest in
all Intellectual Property owned by the Corporation or any of its subsidiaries
immediately prior to the Distribution other than Intellectual Property described
in subsections (i) through (v) of Section 2.01.
Section 2.03. Certain Specified Items. Without limiting any
obligation or liability of any Party under the Distribution Agreement or any
Ancillary Agreement, each of the Parties hereto acknowledges, recognizes and
agrees that, after the Distribution, all right, title and interest in all
Intellectual Property relating to and associated with the items identified in
Schedule A, if any, shall be owned by or vested in the Party indicated therein.
This provision is intended to supplement the preceding Sections 2.01 and 2.02
with regard to these specified items, and should not be construed in any manner
that would tend to derogate from the validity or applicability of the general
principles of allocation and recognition set forth therein. Nevertheless, if a
conflict exists between this Section 2.03 and Sections 2.01 and 2.02, then this
Section 2.03 shall prevail.
Section 2.04. Rights Arising in Future. Each of the Parties hereto
acknowledges, recognizes and agrees that, after the Distribution Date, (i) any
and all Intellectual Property created by or on behalf of a Party, including
common-law rights related thereto, shall belong solely and exclusively to such
Party; and (ii) any and all subsequent ownership, possession and use by each
Party of the Intellectual Property that it will own subsequent to the
Distribution pursuant to the terms of this Agreement (excluding any possession
or use pursuant to license granted by another Party), including common-law
rights related thereto, shall inure solely to such Party's own benefit.
Section 2.05. No Warranties. Each of the Parties hereto understands
and agrees that, except as otherwise expressly provided, no Party hereto is, in
this Agreement or in any other agreement or document contemplated by this
Agreement or otherwise, making any representation or warranty whatsoever
regarding the Intellectual Property, including, without limitation, as to title,
value or legal sufficiency. It is also agreed and understood that any and all
Intellectual Property assets either transferred or retained by the Parties, as
the case may be, shall be "as is, where is".
Section 2.06. Recognition of Non-Party Rights. The recognition among
the Parties of ownership of Intellectual Property rights under Sections
2.01-2.04 of this Agreement is subject to all pre-existing rights, obligations
and restrictions of non-parties to this Agreement as of the Distribution Date.
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ARTICLE III. FURTHER ASSURANCES AND COOPERATION.
Section 3.01. Each Party hereto shall execute and deliver, or cause
to be executed and delivered, as and when reasonably requested by any other
Party hereto, all such documents and instruments and shall take, or cause to be
taken, all such further or other actions as such other Party may reasonably deem
necessary or desirable to effect the purposes of this Agreement and/or to
clarify, confirm and/or record the respective ownership rights of the Parties as
provided for in this Agreement.
Section 3.02. Each Party hereto shall reasonably cooperate with the
other Parties with respect to any government filings or any other actions
reasonably necessary to maintain, enforce and/or record the rights to the
Intellectual Property covered by this Agreement.
Section 3.03. Each Party hereto shall, upon the prior written
request of another Party, arrange for the provision of appropriate copies of
Records in its possession or control (or the originals thereof if the Party
making the request has a reasonable need for such originals) created prior to
the Distribution Date and relating to the Intellectual Property, as soon as
reasonably practicable following the receipt of such request, but only to the
extent such items are not already in the possession or control of the requesting
Party.
ARTICLE IV. INDEMNIFICATION.
Section 4.01. Article III of the Distribution Agreement shall govern
the rights of the Corporation and New D&B with respect to indemnification for
any and all Indemnifiable Losses incurred by any Party related to the
Intellectual Property.
ARTICLE V. DISPUTE RESOLUTION.
Section 5.01. Article VI of the Distribution Agreement shall govern
the rights of the Corporation and New D&B with respect to dispute resolution.
The term "Agreement Dispute" in that Article shall be read to include all
Intellectual Property Disputes.
ARTICLE VI. MISCELLANEOUS.
Section 6.01. Complete Agreement; Construction. This Agreement, the
Schedules hereto, the Distribution Agreement and the Data Services Agreement
shall constitute the entire agreement between the Parties with respect to the
subject matter hereof and shall supersede all previous negotiations, commitments
and writings with respect to such subject matter. In the event of any
inconsistency between this Agreement and any Schedule hereto, the Schedule shall
prevail. Other than Sections 2.7, 2.14 and 4.5 of the Distribution Agreement,
which shall prevail over any inconsistent or conflicting provisions in this
Agreement notwithstanding any other provisions in this Agreement to the
contrary, in the event and to the extent that there shall be an
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inconsistency between the provisions of this Agreement and the provisions of the
Distribution Agreement, this Agreement shall prevail.
Section 6.02. Other Agreements. This Agreement is not intended to
address, and should not be interpreted to address, the matters specifically and
expressly covered by the Distribution Agreement and/or other Ancillary
Agreements.
Section 6.03. Counterparts. This Agreement may be executed in one or
more counterparts, all of which shall be considered one and the same agreement,
and shall become effective when one or more such counterparts have been signed
by each of the Parties and delivered to the other Party.
Section 6.04. Survival of Agreements. Except as otherwise
contemplated by this Agreement, all covenants and agreements of the Parties
contained in this Agreement shall survive the Distribution Date.
Section 6.05. Notices. All notices and other communications
hereunder shall be in writing and hand delivered or mailed by registered or
certified mail (return receipt requested) or sent by any means of electronic
message transmission with delivery confirmed (by voice or otherwise) to the
Parties at the following addresses (or at such other addresses for a Party as
shall be specified by like notice) and will be deemed given on the date on which
such notice is received:
To The Dun & Bradstreet Corporation:
c/o The Xxxxxx X. Xxxxxxxxx Corporation
Xxx Xxxxxxxxxxxxxx Xxxx
Xxxxxxxx, XX 00000
Telecopy: (000) 000-0000
Attn: Chief Legal Counsel
To The New Dun & Bradstreet Corporation:
Xxx Xxxxxxx Xxxx Xxxx
Xxxxxx Xxxx, XX 00000
Telecopy: (000) 000-0000
Attn: Chief Legal Counsel
Section 6.06. Waivers. The failure of any Party to require strict
performance by any other Party of any provision in this Agreement will not waive
or diminish that Party's right to demand strict performance thereafter of that
or any other provision hereof.
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Section 6.07. Amendments. Subject to the terms of Section 6.10
hereof, this Agreement may not be modified or amended except by an agreement in
writing signed by each of the Parties hereto.
Section 6.08. Assignment. This Agreement shall not be assignable, in
whole or in part, directly or indirectly, by any Party hereto without the prior
written consent of the other Party hereto, and any attempt to assign any rights
or obligations arising under this Agreement without such consent shall be void.
Section 6.09. Successors and Assigns. The provisions to this
Agreement shall be binding upon, inure to the benefit of and be enforceable by
the Parties and their respective successors and permitted assigns.
Section 6.10. Termination. This Agreement may be terminated and may
be amended, modified or abandoned at any time prior to the Distribution by and
in the sole discretion of the Corporation without the approval of New D&B or the
shareholders of the Corporation. In the event of such termination, no Party
shall have any liability of any kind to any other Party or any other person.
After the Distribution, this Agreement may not be terminated except by an
agreement in writing signed by the Parties.
Section 6.11. Subsidiaries. Each of the Parties hereto shall cause
to be performed, and hereby guarantees the performance of, all actions,
agreements and obligations set forth herein to be performed by any Subsidiary of
such Party or by any entity that is contemplated to be a Subsidiary of such
Party on and after the Distribution Date.
Section 6.12. Third Party Beneficiaries. This Agreement is solely
for the benefit of the Parties hereto and their respective Subsidiaries and
Affiliates and should not be deemed to confer upon third Parties any remedy,
claim, liability, reimbursement, claim of action or other right in excess of
those existing without reference to this Agreement.
Section 6.13. Title and Headings. Titles and headings to sections
herein are inserted for the convenience of reference only and are not intended
to be a part of or to affect the meaning or interpretation of this Agreement.
Section 6.14. Governing Law. THIS AGREEMENT SHALL BE GOVERNED BY AND
CONSTRUED IN ACCORDANCE WITH THE LAWS OF THE STATE OF NEW YORK APPLICABLE TO
CONTRACTS MADE AND TO BE PERFORMED IN THE STATE OF NEW YORK.
Section 6.15. Consent to Jurisdiction. Without limiting the
provisions of Article V hereof, each of the Parties irrevocably submits to the
exclusive jurisdiction of (a) the Supreme Court of the State of New York, New
York County, and (b) the United States District Court for he Southern District
of New York, for the purposes of any suit, action or other proceeding arising
out of this Agreement or any transaction contemplated hereby. Each of the
Parties agrees to commence any action, suit or proceeding relating hereto either
in the United States District Court for the Southern District of New York or if
such suit, action or other proceeding may not be
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brought in such court for jurisdictional reasons, in the Supreme Court of the
State of New York, New York County. Each of the Parties further agrees that
service of any process, summons, notice or document by U.S. registered mail to
such Party's respective address set forth above shall be effective service of
process for any action, suit or proceeding in New York with respect to any
matters to which it has submitted to jurisdiction in this Section 6.15. Each of
the Parties irrevocably and unconditionally waives any objection to the laying
of venue of any action, suit or proceeding arising out of this Agreement or the
transactions contemplated hereby in (i) the Supreme Court of the State of New
York, New York County, or (ii) the United States District Court for the Southern
District of New York, and hereby further irrevocably and unconditionally waives
and agrees not to plead or claim in any such court that any such action, suit or
proceeding brought in any such court has been brought in an inconvenient forum.
Section 6.16. Severability. In the event any one or more of the
provisions contained in this Agreement should be held invalid, illegal or
unenforceable in any respect, the validity, legality and enforceability of the
remaining provisions contained herein and therein shall not in any way be
affected or impaired thereby. The Parties shall endeavor in good-faith
negotiations to replace the invalid, illegal or unenforceable provisions with
valid provisions, the economic effect of which comes as close as possible to
that of the invalid, illegal or unenforceable provisions.
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IN WITNESS WHEREOF, the Parties have caused this Agreement to be
duly executed as of the day and year first above written.
THE DUN & BRADSTREET CORPORATION
By:
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Name:
Title:
THE NEW DUN & BRADSTREET CORPORATION
By:
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Name:
Title:
