THIRD AMENDED AND RESTATED LICENSE AGREEMENT
THIRD AMENDED AND RESTATED LICENSE AGREEMENT
THIS THIRD AMENDED AND RESTATED LICENSE AGREEMENT (“Agreement”) is between Xxxxx
Systems Family Corporation, a Texas corporation (“PSFC”), H. Xxxx Xxxxx, an individual
domiciled in Texas, Xxxx Xxxxx, Xx., an individual domiciled in Texas (PSFC, H. Xxxx Xxxxx, and
Xxxx Xxxxx, Xx. collectively referred to as “Licensor”), and Xxxxx Systems Corporation
(“Licensee”).
RECITALS:
WHEREAS, concurrently herewith, Dell Inc., a Delaware corporation (“Parent”), DII –
Holdings Inc., a Delaware corporation and an indirect, wholly owned subsidiary of Parent
(“Merger Sub”), and Licensee are entering into an Agreement and Plan of Merger (as such
agreement may hereafter be amended from time to time, the “Merger Agreement”), pursuant to
which Merger Sub will be merged with and into Licensee (the “Merger”);
WHEREAS, in furtherance of the Merger, on the terms and subject to the conditions set forth in
the Merger Agreement, Merger Sub has agreed to commence an offer (the “Offer”) to purchase
for cash all of the issued and outstanding shares of the Licensee’s Class A Common Stock, par value
$0.01 (the “Common Stock”), including all of the shares of Common Stock beneficially owned
by Licensor, if any;
WHEREAS, Licensor and Licensee are parties to a Second Amended and Restated License Agreement
that purports to be effective as of May 18, 1988 (“Amended License”), pursuant to which
Licensee was granted certain rights to use the names “Xxxxx Systems” (the “Name”) and
“Xxxxx” (the “Surname”);
WHEREAS, the use of the Name is an important part of Licensee’s business and, as a result,
Parent’s and Merger Sub’s willingness to enter into the Merger Agreement is conditioned upon the
execution and delivery of this Agreement by Licensor and Licensee; and
WHEREAS, as a condition and material inducement to entering into the Merger Agreement, Parent
and Merger Sub have required that Licensor and Licensee agree, and Licensor and Licensee have
agreed, to replace the terms and conditions of the Amended License with this Agreement.
NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties agree as follows:
1. Grant of License to the Name. Subject to the terms and conditions of this Agreement,
Licensor hereby grants Licensee during the Term an exclusive, royalty-free, irrevocable license
without geographic restriction to use the Name in the business operations of Licensee, as part of
Licensee’s domain names, and in general in connection with Licensee’s current businesses, products,
services, and charitable activities, and its future businesses, products, services, and charitable
activities resulting from natural expansion and evolution and from integration with
Parent’s information technology services and business solutions
businesses, including the right to
sublicense these rights to Affiliates (hereinafter defined) for use in connection with Licensee’s
above described businesses, products, services, and charitable activities. Licensee shall take
steps reasonably designed to phase out use of the Name such that all trademark use of the Name by
Licensee shall have ceased by the expiration of the Term. For purposes of this Agreement, the term
“Affiliate” means (i) any legal entity that directly or indirectly owns or controls or is
owned or controlled by or is under common control with an entity, and (ii) partnerships, joint
ventures and similar business entities in which the entity has a direct or indirect equity
interest.
Notwithstanding the above license grant, Licensee shall have no right to use or license the
Name for use in connection with nature and/or science museums.
2. Ownership of the Name. Licensor represents and warrants that it owns or has sufficient
rights to the Name and Surname to xxxxx the rights hereunder, and Licensor has full authority to
enter into this Agreement without joinder of any other person.
3. Termination of Licenses to the Surname. All prior rights granted by Licensor to Licensee
in the Surname are hereby terminated effective two (2) years from the Acceptance Date. Licensee
shall have two (2) years from the Acceptance Date (as defined in the Merger Agreement) to cease all
trademark use of the Surname (including as part of a trade name). Licensee shall maintain the
domain names xxxxx.xxx and xxxxx.xxx (and any other xxxxx.gTLD’s currently controlled by Licensee),
and shall transfer all such domain names to Licensor promptly following the second anniversary of
the Acceptance Date. Licensor covenants, represents and warrants that it will neither make nor
permit use of such domain names for a period of one (1) year after they are transferred to Licensor
by Licensee.
4. Quality Standards. Licensee shall comply with reasonable guidelines relating to the use of
the Name that Licensor may provide to Licensee from time to time. Licensee agrees that it will not
use the Name in any manner, or in connection with any products or services, which results in a
diminution of the value of the Name or brings disrepute to the Name. The parties acknowledge that
no goods or services currently offered by Licensee or its Affiliates would result in a diminution
of value of the Name or bring disrepute to the Name. Except for the licensed rights to use the
Name, no rights of publicity are granted by this Agreement.
5. Infringement Proceedings. During the Term, Licensee shall have the sole right, at its
expense, to bring infringement or unfair competition proceedings with regard to any unauthorized
use of the Name in its entirety or of an obvious misspelling of the entire Name. Otherwise,
Licensee shall have no right to bring any proceedings against third parties using the Surname.
6. Term. The term of this Agreement (the “Term”) is effective immediately and shall
continue until the earlier of: (i) the date that is five (5) years from the Acceptance Date (as
defined in the Merger Agreement); or (ii) the date of any termination pursuant to Section 7.
Notwithstanding the foregoing, this Agreement shall terminate automatically and without further
action by the parties hereto in the event that the Merger Agreement is terminated in accordance
with its terms, and upon any such termination, the Amended License shall be automatically
reinstated and shall be effective.
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7. Termination for Cause. In the event that Licensee’s use of the Name is not in compliance
with the terms of this Agreement, Licensor shall notify Licensee in writing of non-compliance,
which notice shall describe in reasonable detail the nature of such noncompliance. Upon receiving
such notice, Licensee shall have sixty (60) days to cure such noncompliance. If Licensee has not
cured such noncompliance within such sixty (60) day period, Licensor may terminate the Agreement by
written notice.
8. Effect of Termination. Upon the expiration of the Term pursuant to Section 6,
Licensee shall have discontinued all trademark use of the Name (including as part of a trade name)
and any name or xxxx confusingly similar thereto, and shall take whatever other actions are
reasonably requested by Licensor in writing. Upon receipt of notice of termination of this
Agreement pursuant to Section 7, Licensee shall, within one year thereafter, discontinue
all trademark use of
the Name (including as part of a trade name) and any name or xxxx confusingly similar thereto, and
shall take whatever other actions are reasonably requested by Licensor in writing related to the
Name. Upon the termination of this Agreement in accordance with the provisions of
Section 7, or expiration of the Term, all rights granted to Licensee herein shall revert to
Licensor.
9. Licensor Use of the Name. Licensor represents, warrants and covenants that it will neither
make nor permit trademark use of the Name (including as part of a trade name) during the Term of
this Agreement and for five (5) years thereafter. In addition, Licensor further represents,
warrants and covenants that it will neither make nor permit trademark use of the Surname (including
as part of a trade name) during the Term of this Agreement in connection with any business, product
or service in the Field of Goods. “Field of Goods” means all information technology and/or
business process related goods and services, including without limitation all goods and services
previously, currently, or planned to be offered by Licensee or Parent, or their Affiliates, such as
(i) information technology services and business solutions, including technology infrastructure
services, cloud computing, applications services, business process services, and consulting
services, (ii) mobility products, desktop PCs, software and peripherals, servers and networking
products, storage products, consumer electronics goods, and (iii) other information technology or
outsourcing related goods and/or services. Licensor shall otherwise remain free to use the Surname
without restriction. During the Term, Licensor shall promptly provide any necessary consents or
approvals, upon request of Licensee, to permit Licensee to register corporate name(s) which
comprise or include the Name in Texas or other jurisdictions.
10. Trademarks and Service Marks. Licensee has and shall have throughout the Term the right to
maintain the registrations for “Xxxxx Systems”, “xxxxxxxxxxxx.xxx” and any similar marks that
contain the entire Name, in any and all stylizations and formats as a trademark or service xxxx in
any country or state in connection with uses of the Name permitted by this Agreement.
11. Indemnity.
(a) By Licensee. Except for any claims covered by Licensor’s indemnity in
Section 11(b) below, Licensee shall defend, indemnify and hold harmless Licensor and
Licensor’s successors, heirs and assigns from and against any and all third party claims
arising
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out of use of the Name by Licensee, its Affiliates, and their agents and employees
under this Agreement after the Effective Date.
(b) By PSFC. PSFC shall defend, indemnify and hold harmless Licensee and Licensee’s
Affiliates, successors, heirs and assigns from and against any and all third party claims
arising out of any allegation that use of the Name by Licensee, or its Affiliates, and their
agents and employees under this Agreement, infringes or otherwise violates the rights of any
third party.
12. Assignment. Neither party may assign this Agreement without the prior written consent of
the other party, provided, however, that a party shall have the right to assign this Agreement
without the consent of the other party to any successor to all or substantially all of the assets
or business of such party to which this Agreement relates.
13. Non-Disparagement. During the Term, Licensor shall not, directly or indirectly, knowingly
make or knowingly cause to be made to any person any disparaging, derogatory or other negative or
false statement about Licensee, Parent, Merger Sub, the Xxxxx Companies (as defined below), or any
of their respective Affiliates (including their products, services, policies, practices,
operations, employees, sales representatives, agents, officers, members, managers, partners or
directors). During the Term, each of Licensee, Parent, Merger Sub, and the Xxxxx Companies shall
not, directly or indirectly, and shall use commercially reasonable efforts to cause their
respective controlled Affiliates not to, knowingly make or knowingly cause to be made to any
person any disparaging, derogatory or other negative or false statements about Licensor. Nothing in
this Section 13 shall limit the rights of a party hereto in any legal proceedings by,
against or involving such party pertaining to such party’s rights, remedies or obligations under
this Agreement or the Merger Agreement or other agreements relating to the transactions
contemplated by the Merger Agreement. “Xxxxx Companies” means Licensee and each of its
Subsidiaries. “Subsidiaries” means, with respect to any party, any entity, whether
incorporated or unincorporated, of which at least a majority of the securities or ownership
interest having by their terms voting power to elect a majority of the board of directors or other
persons performing similar functions is directly or indirectly owned or controlled by such party or
by one or more of its respective Subsidiaries.
14. Further Assurances. From time to time, at either party’s request and without further
consideration, each party hereto shall execute and deliver such additional documents and take all
such further lawful action as may be necessary or desirable to consummate and make effective, in
the most expeditious manner practicable, the transactions contemplated by this Agreement.
15. Equitable Relief. Licensor acknowledges that the covenants of Licensor contained in
Section 9 hereof are special and unique, that a breach by Licensor of any term or provision
of any of such Section will cause irreparable injury to Licensee, and that remedies at law for the
breach of any terms or provisions of Section 9 hereof will be inadequate. Accordingly, in
addition to any other remedies it may have in the event of breach, Licensee shall be entitled to
enforce specific performance of the terms and provisions of Section 9 hereof, to obtain
temporary and permanent injunctive relief to prevent the continued breach of such terms and
provisions without the necessity of posting a bond or of proving actual damage, and to
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obtain
attorneys’ fees in respect of the foregoing if the Licensor prevails in such action or proceeding.
16. Governing Law. This Agreement will be governed by and construed in accordance with the laws
of the State of Texas without regard to principles of conflicts of law. THE PARTIES HERETO
IRREVOCABLY SUBMIT AND CONSENT TO THE EXCLUSIVE JURISDICTION OF THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS, AUSTIN DIVISION AND THE UNITED STATES DISTRICT COURT FOR THE
NORTHERN DISTRICT OF TEXAS, DALLAS DIVISION OR OTHER TEXAS DOMICILE OF LICENSOR (AND IN THE EVENT
THERE IS NO BASIS FOR FEDERAL JURISDICTION, THEN THE TEXAS STATE DISTRICT COURT IN XXXXXXXXXX
COUNTY TEXAS AND DALLAS COUNTY TEXAS OR OTHER TEXAS DOMICILE OF LICENSOR) AND HEREBY AGREE THAT
SUCH COURTS SHALL BE THE EXCLUSIVE PROPER FORUM FOR THE DETERMINATION OF ANY DISPUTE RELATING IN
ANY WAY TO THIS AGREEMENT. THIS AGREEMENT, AND ANY DISPUTE RELATING IN ANY WAY TO THIS AGREEMENT’S
INTERPRETATION, PERFORMANCE OR BREACH SHALL BE GOVERNED BY THE LAWS OF THE STATE OF TEXAS, WHETHER
THE DISPUTE OR CLAIM IS IN CONTRACT, TORT, OR OTHERWISE AND INCLUDING STATUTORY, CONSUMER
PROTECTION, COMMON LAW, AND EQUITABLE CLAIMS.
17. Severability. If any provision of this Agreement will be held invalid or unenforceable for
any reason, the validity and enforceability of all other provisions will not be affected thereby.
18. Notices. All notices, requests, claims, demands and other communications hereunder shall
be in writing and shall be delivered personally, by facsimile with confirmation of receipt, or by
next day courier service, providing proof of delivery. Any such notice shall be effective upon
receipt, if delivered personally or by facsimile, or one day after delivery to a courier service
for next-day delivery. All communications hereunder shall be delivered to the respective parties
at the following addresses:
If to Licensee:
X.X. Xxx 000000
Xxxxx, XX 00000-0000
Attention: X. X. Xxxx III
Facsimile: (972) 535 – 1999
Xxxxx, XX 00000-0000
Attention: X. X. Xxxx III
Facsimile: (972) 535 – 1999
If to Licensee:
0000 Xxxx Xxxxx Xxxxxxx
Attention: Xx. Xxxxxx X. Xxxxxxxx
Facsimile: (972) 577 – 6085
Attention: Xx. Xxxxxx X. Xxxxxxxx
Facsimile: (972) 577 – 6085
or to such other address as the party to whom notice is given may have previously furnished to the
others in writing in the manner set forth above.
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19. Entire Agreement. This Agreement, together with the Merger Agreement and the other
documents referred to herein, constitutes the entire agreement between the parties with respect to
the subject matter hereof and supersedes all other prior agreements and understandings, both
written and oral, between the parties with respect to the subject matter hereof. Without limiting
the foregoing, this Agreement expressly supersedes and replaces in its entirety the Amended
License.
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IN WITNESS WHEREOF, and intending to be legally bound hereby, the parties have executed this
Agreement on the dates set forth below, to be effective as of September 20, 2009.
| Xxxxx Systems Family Corporation | Xxxxx Systems Corporation | |||||||||
By:
|
/s/ H. Xxxx Xxxxx | By: | /s/ Xxxx X. Xxxxxx | |||||||
Name:
|
Name: | |||||||||
Title:
|
President | Title: | Vice President and Chief Financial Officer |
|||||||
| /s/ H. Xxxx Xxxxx | /s/ Xxxx Xxxxx, Xx. | |||||||||
| H. Xxxx Xxxxx | Xxxx Xxxxx, Xx. | |||||||||
Signature Page to
Third Amended and Restated License Agreement
Third Amended and Restated License Agreement
