EXHIBIT 10.4
INTELLECTUAL PROPERTY AGREEMENT
between
Pitney Xxxxx Inc.
and
Pitney Xxxxx Office Systems, Inc.
Dated as of ____________, 2001
TABLE OF CONTENTS
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PAGE
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ARTICLE 1
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DEFINITIONS
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ARTICLE 2
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ASSIGNMENT
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SECTION 2.01. Grant of Assignment..............................................................6
SECTION 2.02. Prior Grants and Assumption of Liability.........................................7
SECTION 2.03. Assignment Disclaimer............................................................7
ARTICLE 3
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LICENSES AND TRANSFERS
----------------------
SECTION 3.01. License Grant....................................................................7
SECTION 3.02. License Restrictions.............................................................8
SECTION 3.03. Licensee Undertakings............................................................9
SECTION 3.04. Non-Trademark Use................................................................9
SECTION 3.05. Reservation of Rights............................................................9
SECTION 3.06. Title to Patents................................................................10
ARTICLE 4
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PERMITTED SUBLICENSES
---------------------
SECTION 4.01. Sublicenses to Subsidiaries and to Authorized Manufacturers.....................10
SECTION 4.02. Authorized Dealers' Use of Marks................................................11
SECTION 4.03. Enforcement of Agreements.......................................................12
ARTICLE 5
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TRADEMARK USAGE GUIDELINES
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SECTION 5.01. Trademark Usage Guidelines......................................................12
SECTION 5.02. Trademark Reviews...............................................................12
ARTICLE 6
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TRADEMARK USAGE GUIDELINE ENFORCEMENT
-------------------------------------
SECTION 6.01. Initial Guideline Cure Period...................................................13
SECTION 6.02. Second Guideline Cure Period....................................................13
SECTION 6.03. Final Guideline Cure Period.....................................................13
ARTICLE 7
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QUALITY STANDARDS
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PAGE
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SECTION 7.01. General.........................................................................14
SECTION 7.02. Quality Standards...............................................................14
SECTION 7.03. Quality Control Reviews.........................................................14
SECTION 7.04. Product Discontinuation.........................................................15
ARTICLE 8
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QUALITY STANDARD ENFORCEMENT
----------------------------
SECTION 8.01. Initial Quality Standard Cure Period.............................................15
SECTION 8.02. Second Quality Standard Cure Period.............................................15
SECTION 8.03. Final Quality Standard Cure Period..............................................16
ARTICLE 9
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PROTECTION OF LICENSED MARKS, LICENSED COPYRIGHTS, LICENSED PATENTS
-------------------------------------------------------------------
AND LICENSED TECHNOLOGY
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SECTION 9.01. Ownership and Rights............................................................16
SECTION 9.02. Protection of Licensed Marks, Licensed Copyrights, Licensed
Patents and the Licensed Technology...................................................17
SECTION 9.03. Similar Marks, Copyrights and Patents...........................................17
SECTION 9.04. Infringement Proceedings........................................................18
ARTICLE 10
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CONFIDENTIALITY
---------------
SECTION 10.01. General........................................................................18
ARTICLE 11
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INDEMNIFICATION
---------------
SECTION 11.01. Office Systems Indemnification of Pitney Xxxxx.................................19
SECTION 11.02. Insurance; Third Party Obligations; Tax Benefits...............................19
SECTION 11.03. Notice and Payment of Claims...................................................19
SECTION 11.04. Notice and Defense of Third-Party Claims.......................................20
SECTION 11.05. Contribution...................................................................21
SECTION 11.06. Non-Exclusivity of Remedies....................................................21
ARTICLE 12
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TERM AND TERMINATION
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SECTION 12.01. Term...........................................................................22
SECTION 12.02. Voluntary Termination..........................................................22
SECTION 12.03. Survival.......................................................................22
SECTION 12.04. Other Termination..............................................................22
ii
PAGE
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ARTICLE 13
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LIMITATION OF LIABILITY
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ARTICLE 14
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MISCELLANEOUS PROVISIONS
------------------------
SECTION 14.01. Disclaimer.....................................................................23
SECTION 14.02. Other Agreements...............................................................23
SECTION 14.03. No Implied Licenses............................................................23
SECTION 14.04. Further Assurances and Consents................................................24
SECTION 14.05. Infringement Suits.............................................................24
SECTION 14.06. No Other Obligations...........................................................24
SECTION 14.07. Force Majeure..................................................................24
SECTION 14.08. Entire Agreement...............................................................25
SECTION 14.09. Governing Law..................................................................25
SECTION 14.10. Waiver of Jury Trial...........................................................25
SECTION 14.11. Notices........................................................................26
SECTION 14.12. Nonassignability...............................................................27
SECTION 14.13. Severability...................................................................27
SECTION 14.14. Failure or Indulgence Not Waiver; Remedies Cumulative..........................27
SECTION 14.15. Amendment......................................................................27
SECTION 14.16. Counterparts...................................................................28
iii
Schedule A-1 - Assigned Marks
Schedule A-2 - Licensed Marks
Schedule B - Licensed Patents
Schedule C - Exceptions to License Restrictions
Schedule D - Quality Standards and Trademark Usage Guidelines
iv
This Intellectual Property Agreement (the "Agreement") is between
Pitney Xxxxx Inc., a Delaware corporation ("Pitney Xxxxx"), and Pitney Xxxxx
Office Systems, Inc., a Delaware corporation ("Office Systems").
WHEREAS, the Board of Directors of Pitney Xxxxx has determined that it
is in the best interests of Pitney Xxxxx and its stockholders to spin-off the
Office Systems Business (as defined below);
WHEREAS, as part of the foregoing, Pitney Xxxxx and Office Systems have
entered into a Distribution Agreement (as defined below) which provides, among
other things, for the transfer of certain Office Systems assets and Office
Systems liabilities, the distribution to the holders of the issued and
outstanding shares of common stock, par value $1.00 per share, of Pitney Xxxxx
of 100% of the issued and outstanding shares of common stock, par value $.01 per
share, of Office Systems (the "Distribution") and the execution and delivery of
certain other agreements that will govern certain other matters following the
Distribution;
WHEREAS, the parties desire to enter into an agreement that provides
for Pitney Xxxxx to assign to Office Systems the Assigned Marks and the Assigned
Copyrights (each as defined below) and to license to Office Systems the Licensed
Marks, the Licensed Copyrights, the Licensed Patents and the Licensed Technology
(each as defined below) from and after the Distribution Date (as defined below);
and
NOW, THEREFORE, in consideration of the mutual covenants contained in
this Agreement; the parties hereby agree as follows:
ARTICLE 1
DEFINITIONS
For the purpose of this Agreement, the following capitalized terms are
defined in this Article 1 and shall have the meaning specified herein:
"Action" means any demand, claim, suit, action, arbitration, inquiry,
investigation or other proceeding by or before or any regulatory or governmental
agency or authority or any arbitration or mediation tribunal.
"Affiliate" has the meaning set forth in the Distribution Agreement.
"Agreement" has the meaning set forth in the preamble hereto, as such
agreement may be amended and supplemented from time to time in accordance with
its terms.
"Ancillary Agreement" means each of the Distribution Agreement, the Tax
Separation Agreement, the Transition Services Agreement, the Canada Reseller
Agreement, the Management Services Reseller Agreement, the Vendor Financing
Agreement, the Assignment and Novation Agreements, the Sublease Agreements, and
the Sublease and License Agreements.
"Assigned Copyrights" means the Copyrights as owned by Pitney Xxxxx and
used solely within the Office Systems business to be transferred to Office
Systems on a quitclaim basis pursuant to the terms of this Agreement.
"Assigned Marks" means the Marks set forth on Schedule A-1 hereto.
"Assignment and Novation Agreements" has the meaning set forth in the
Distribution Agreement.
"Authorized Dealer" means any distributor, dealer, OEM customer,
systems integrator or other agent that on or after the Distribution Date is
authorized to market, advertise, sell, lease, rent, service or otherwise offer
Office Systems Business Products. Office Systems will periodically provide
Pitney Xxxxx with a list of the then current Authorized Dealers within a
reasonable period after Pitney Xxxxx' request.
"Authorized Manufacturer" means any original equipment manufacturer,
producer, dealer or other agent that on or after the Distribution Date is
authorized to build, create, design, compile or otherwise build for Sale Office
Systems Business Products. Office Systems will periodically provide Pitney Xxxxx
with a list of the then current Authorized Manufacturers within a reasonable
period after Pitney Xxxxx' request.
"Canada Reseller Agreement" has the meaning set forth in the
Distribution Agreement.
"Change of Control" means (i) the direct or indirect acquisition (by
merger, consolidation, business combination or otherwise) by any Person or group
of Persons of beneficial ownership (as defined in Rule 13d-1 and Rule 13d-5
under the Securities Exchange Act of 1934) of 40% or more of the Total Voting
Power of Office Systems, (ii) any merger, consolidation or other business
combination of Office Systems or a Subsidiary of Office Systems with any Person
after giving effect to which (x) the shareholders of Office Systems immediately
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prior to such transaction do not own at least 60% of the Total Voting Power of
the ultimate parent entity of the parties to such transaction or (y) individuals
who were directors of Office Systems immediately prior to such transaction (or
their designees) do not constitute a majority of the board of directors of such
ultimate parent entity and (iii) the direct or indirect acquisition by any
Person or group of Persons of all or substantially all of the assets of Office
Systems.
"Collateral Materials" means all packaging, tags, labels, advertising,
promotions, display fixtures, instructions, warranties and other materials of
any and all types associated with the Office Systems Business Products that are
marked with at least one of the Licensed Marks.
"Confidential Information" means any non-public, confidential or
proprietary information relating to a disclosing party, whether or not technical
in nature, including any information that is designated by the disclosing party
as Confidential Information at the time of its disclosure, either by a written
or visual confidentiality designation, or orally, provided that (i) written
confirmation of such confidential status is provided to the receiving party
within ten (10) days thereafter or (ii) such information would, under the
circumstances, appear to a reasonable person to be confidential or proprietary.
Notwithstanding the foregoing, "Confidential Information" does not include
information, technical data or know-how which: (i) is in the public domain at
the time of disclosure or becomes available thereafter to the public without
restriction, and in either case not as a result of the act or omission of the
receiving party; (ii) is rightfully obtained by the receiving party from a third
party without restriction as to disclosure; (iii) is lawfully in the possession
of the receiving party at the time of disclosure by the disclosing party and not
otherwise subject to restriction on disclosure; (iv) is approved for disclosure
by prior written authorization of the disclosing party; or (v) is developed
independently and separately by either party without use of the disclosing
party's Confidential Information.
"Copyright" means (i) any copyright in any original works of authorship
fixed in any tangible medium of expression as set forth in 17 U.S.C. Section 101
et seq., whether registered or unregistered, including any applications for
registration thereof and (ii) any corresponding foreign copyrights under the
laws of any jurisdiction, in each case, whether registered or unregistered, and
any applications for registration thereof.
"Credit Agreement" has the meaning set forth in the Distribution
Agreement.
"Distribution" has the meaning set forth in the preamble.
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"Distribution Agreement" means the Distribution Agreement between
Pitney Xxxxx and Office Systems dated the date hereof.
"Distribution Date" has the meaning set forth in the Distribution
Agreement.
"Finally Determined" means, with respect to any Action or other matter,
that the outcome or resolution of such Action or matter has been judicially
determined by judgment or order not subject to further appeal or discretionary
review.
"Group" means, as the context requires, the Office Systems Group or the
Pitney Xxxxx Group.
"Licensed Copyrights" means the Copyrights owned by Pitney Xxxxx at the
time of the Distribution and used by both Pitney Xxxxx and Office Systems and
licensed to Office Systems pursuant to the terms of this Agreement.
"Licensed Marks" means the Marks set forth on Schedule A-2 hereto.
"Licensed Patents" means the Patents set forth on Schedule B hereto.
"Licensed Technology" means Pitney Xxxxx' Technology and related
technical know-how as used in Office Systems Business prior to the Distribution
Date and licensed to Office Systems pursuant to the terms of this Agreement.
"Losses" means, with respect to any Person, any and all damage, loss,
liability and expense incurred or suffered by such Person (including, without
limitation, reasonable expenses of investigation and reasonable attorneys' fees
and expenses in connection with any and all Actions or threatened Actions).
"Management Services Reseller Agreement" has the meaning set forth in
the Distribution Agreement.
"Xxxx" means any trademark, service xxxx, trade name, domain name, and
the like, or other word, name, symbol or device, or any combination thereof,
used or intended to be used by a Person to identify and distinguish the products
or services of that Person from the products or services of others and to
indicate the source of such goods or services, including without limitation all
registrations and applications therefor throughout the world and all common law
and other rights therein throughout the world.
"Office Systems" has the meaning set forth in the preamble.
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"Office Systems Business" means the business of Office Systems.
"Office Systems Business Products" means any and all products and
related services of the Office Systems Business commercially released or
practiced prior to the Distribution Date and similar products and services
commercially released or practiced after the Distribution Date.
"Office Systems Group" has the meaning set forth in the Distribution
Agreement.
"Patent" means any patent, utility model, design patent, design
registration, certificate of invention or other governmental grant for the
protection of inventions or industrial designs and all reissues, renewals,
re-examinations and extensions of any of the foregoing, any applications of the
foregoing and any continuations-in-part, foreign equivalents (if any) and any
issued patents arising out of the foregoing during the term of this Agreement.
"Permitted Geographic Areas" means the United States of America, its
possessions and territories and the United Kingdom.
"Person" means an individual, a partnership, a corporation, a limited
liability company, an association, a joint stock company, a trust, a joint
venture, an unincorporated organization, and a governmental entity or any
department, agency or political subdivision thereof.
"Pitney Xxxxx" has the meaning set forth in the preamble.
"Pitney Xxxxx Business" means the business of Pitney Xxxxx.
"Pitney Xxxxx Group" has the meaning set forth in the Distribution
Agreement.
"Quality Standards" means standards of quality applicable to the Office
Systems Business Products, as in use immediately prior to the Distribution Date
and attached hereto as Schedule D.
To "Sell" a product means to sell, rent, transfer, lease, license or
otherwise dispose of a product. "Sale" and "Sold" have the corollary meanings
ascribed thereto.
"Sublease Agreements" has the meaning set forth in the Distribution
Agreement.
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"Sublease and License Agreements" has the meaning set forth in the
Distribution Agreement.
"Subsidiary" of any Person means a corporation or other organization
whether incorporated or unincorporated of which at least a majority of the
securities or interests having by the terms thereof ordinary voting power to
elect at least a majority of the board of directors or others performing similar
functions with respect to such corporation or other organization is directly or
indirectly owned or controlled by such Person or by any one or more of its
Subsidiaries, or by such Person and one or more of its Subsidiaries; provided,
however, that no Person that is not directly or indirectly wholly- owned by any
other Person shall be a Subsidiary of such other Person unless such other Person
controls, or has the right, power or ability to control, that Person. For
purposes of this Agreement, Office Systems shall be deemed not to be a
subsidiary of Pitney Xxxxx.
"Tax Separation Agreement" has the meaning set forth in the
Distribution Agreement.
"Technology" means technological models, algorithms, manufacturing
processes, design processes, behavioral models, logic diagrams, schematics, test
vectors, computer and electronic data processing and other apparatus programs
and software (object code and source code), databases and documentation thereof,
trade secrets, technical information, specifications, websites, ideas,
knowledge, data or the like. The term Technology includes Copyrights, trade
secrets and any other intellectual property right, but expressly does not
include (i) any Xxxx thereof or (ii) any Patents therefor.
"Third Party" means a Person other than Pitney Xxxxx and its
Subsidiaries and Office Systems and its Subsidiaries.
"Trademark Usage Guidelines" means the guidelines for proper usage of
the Licensed Marks, as in use immediately prior to the Distribution Date and
attached hereto as Schedule D, as such guidelines may be revised and updated in
writing by Pitney Xxxxx from time to time.
"Transition Services Agreement" has the meaning set forth in the
Distribution Agreement.
"Vendor Financing Agreement" has the meaning set forth in the
Distribution Agreement.
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ARTICLE 2
ASSIGNMENT
SECTION 2.01. Grant of Assignment. Subject to Sections 2.02 and 2.03
below, Pitney Xxxxx hereby grants, conveys and assigns (and agrees to cause its
appropriate Subsidiaries to grant, convey and assign) to Office Systems all
right, title and interest in and to the Assigned Marks and the goodwill
associated therewith, and the Assigned Copyrights to be owned and enjoyed by
Office Systems, its successors and assigns.
SECTION 2.02. Prior Grants and Assumption of Liability. Office Systems
acknowledges and agrees that the foregoing assignment is subject to any and all
licenses or other rights that may have been granted by or to Pitney Xxxxx or any
of its Subsidiaries with respect to the Assigned Marks and Assigned Copyrights
prior to the Distribution Date. Pitney Xxxxx shall respond to reasonable
inquiries from Office Systems regarding any such prior grants. In order to
assist Office Systems in its administration of the Assigned Marks, but without
making any representation or warranty as to its completeness, and without
assuming any liability for any failure to disclose any such prior grants, Pitney
Xxxxx has listed on Schedule A-1 certain information relating to prior grants.
SECTION 2.03. Assignment Disclaimer. The parties acknowledge and agree
that the foregoing assignments are made on an "as is," quitclaim basis and that
neither Pitney Xxxxx nor any of its Subsidiaries has made or will make any
warranty whatsoever, express, implied or statutory, including without limitation
any implied warranties of merchantability, fitness for a particular purpose,
title enforceability or non-infringement.
ARTICLE 3
LICENSES AND TRANSFERS
SECTION 3.01. License Grant. (a) Pitney Xxxxx grants (and agrees to
cause its appropriate Subsidiaries to grant) to the extent that it has a right
to do so and then only if such grant will not cause any member of the Pitney
Xxxxx Group to incur any financial expense, obligations or liabilities, to
Office Systems a personal, nonexclusive, fully-paid and non-transferable (except
as set forth in Section 14.12) a license to use (i) the Licensed Marks on the
Office Systems Business Products for the term set forth in Section 12.01, unless
earlier terminated, (ii) the Licensed Copyrights, the Licensed Patents and the
Licensed Technology in connection with the Sale and offer for Sale of Office
Systems Business Products in the Permitted Geographic Areas (or, in the case of
Office Systems Business Products in the form of software, in connection with
licensing of Office Systems
7
Business Products) and (iii) the Licensed Marks in the Permitted Geographic
Areas in the advertisement and promotion of such Office Systems Business
Products. The use of such licenses shall be subject to the confidentiality
provisions outlined in Article 10 in all respects. Any copyrighted material used
by Office Systems shall be revised to remove (x) all Marks owned by Pitney Xxxxx
that are not licensed to Office Systems by Pitney Xxxxx hereunder; (y) all
Licensed Marks when use of such copyrighted materials will be outside the
Permitted Geographic Areas, and (z) all Licensed Marks in the event the license
granted to Office Systems hereunder expires or terminates for any reason.
(b) All license grants made pursuant to this Agreement are subject to
any pre-existing obligation of Pitney Xxxxx. The license grants made pursuant to
this Agreement shall cover only Marks, Copyrights, Patents and Technology owned
or otherwise held by Pitney Xxxxx immediately prior to the Distribution Date and
used in connection with the Office Systems Business for the Sale and offer for
Sale of Office Systems Business Products immediately prior to the Distribution
Date and shall not cover any future Marks, Copyrights, Patents and Technology
owned or otherwise held by Pitney Xxxxx.
SECTION 3.02. License Restrictions.
(a) Office Systems may not use any Licensed Xxxx (either alone or in
connection with other Marks), outside of the Permitted Geographic Areas. Office
Systems may, from time to time, request Pitney Xxxxx' permission, which
permission shall not be unreasonably withheld, to use the Licensed Marks in
additional geographic areas. Office Systems shall provide to Pitney Xxxxx a
written request indicating (i) the specific geographic region contemplated and
(ii) the specific products or services contemplated to be used in connection
with any such Licensed Xxxx. Pitney Xxxxx shall provide a written response to
Office Systems not later than ninety (90) days after receipt of such request,
indicating whether such request has been granted.
(b) Office Systems may not use any Licensed Xxxx in direct association
with another Xxxx such that the two Marks appear to be a single Xxxx or in any
other composite manner with any Marks of Office Systems or any Third Party
(other than the Licensed Marks as permitted herein and in association with the
Marks in combined format set forth on Schedule A-2 hereto).
(c) Office Systems may not use any Licensed Xxxx (either alone or in
connection with other Marks), Licensed Patent or Licensed Technology in
8
connection with the marketing, Sale, offer for Sale or provision of any product
or service in violation of the Distribution Agreement.
(d) Office Systems may only use the Licensed Marks, Licensed Patents,
Licensed Copyrights or Licensed Technology in connection with the Sale and offer
for Sale of Office Systems Business Products.
(e) In all respects, Office Systems' usage of the Licensed Marks
pursuant to the license granted hereunder shall be in a manner consistent with
the high standards, reputation and prestige represented by the Licensed Marks,
and any usage by Office Systems that is inconsistent with the foregoing shall be
deemed to be outside the scope of the license granted hereunder. As a condition
to the license granted hereunder, Office Systems shall at all times present,
position and promote the Office Systems Business Products marked with one or
more of the Licensed Marks in a manner consistent with the high standards and
prestige represented by the Licensed Marks.
SECTION 3.03. Licensee Undertakings. As a condition to the license
granted hereunder, Office Systems undertakes to Pitney Xxxxx that:
(a) Office Systems shall not use the Licensed Marks in any manner
which is deceptive or misleading, which ridicules or is derogatory to the
Licensed Marks, or which compromises or reflects unfavorably upon the goodwill,
good name, reputation or image of Pitney Xxxxx or the Licensed Marks, or which
might jeopardize or limit Pitney Xxxxx' proprietary interest therein.
(b) Office Systems shall not use the Licensed Marks, the Licensed
Copyrights, the Licensed Patents or the Licensed Technology in connection with
any products or services other than the Office Systems Business Products.
(c) Office Systems shall not (i) misrepresent to any Person the scope
of its authority under this Agreement, (ii) incur or authorize any expenses or
liabilities chargeable to Pitney Xxxxx, or (iii) take any actions that would
impose upon Pitney Xxxxx any obligation or liability to a Third Party other than
obligations under this Agreement, or other obligations which Pitney Xxxxx
expressly approves in writing for Office Systems to incur on its behalf.
(d) All press releases and corporate advertising and promotions that
embody the Licensed Marks and messages conveyed thereby shall be consistent with
the high standards and prestige represented by the Licensed Marks.
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(e) Office Systems shall comply in all material respects with all
laws, regulations and governmental orders with respect to the manufacture, Sale,
marketing and distribution of the Office Systems Business Products.
SECTION 3.04. Non-Trademark Use. Each party may make appropriate and
truthful references to the other party and the other party's products and
Technology.
SECTION 3.05. Reservation of Rights. Except as otherwise expressly
provided in this Agreement, the Pitney Xxxxx Group shall retain all right and
title in and to the Licensed Marks, the Licensed Copyrights, the Licensed
Patents and the Licensed Technology, including without limitation:
(a) All rights of ownership in and to the Licensed Marks, the Licensed
Copyrights, the Licensed Patents and the Licensed Technology;
(b) The right to use (including the right of the Pitney Xxxxx Group's
Affiliates to use) the Licensed Marks, either alone or in combination with other
Marks, in connection with the marketing, offer or provision of any product or
service, including any product or service which competes with Office Systems
Business Products, subject to the restrictions set forth in the Distribution
Agreement;
(c) The right to license Third Parties to use the Licensed Marks, the
Licensed Copyrights, the Licensed Patents and the Licensed Technology or to
assign the Licensed Marks, the Licensed Copyrights, Licensed Patents or the
Licensed Technology; provided that Pitney Xxxxx shall not license the Licensed
Marks to any Third Party engaging in the commercial copier or facsimile business
in the Permitted Geographic Areas for so long as such license to Office Systems
has not expired or terminated but in no event to exceed a period greater than
two years following the Distribution Date; and
(d) Notwithstanding any other provision of this Agreement, nothing in
this Agreement shall be construed as obligating Pitney Xxxxx to obtain or
maintain in force or protect any Licensed Xxxx, Licensed Copyright, Licensed
Patent or Licensed Technology. Furthermore, Pitney Xxxxx shall have sole
authority and responsibility to prosecute, amend, abandon and otherwise conduct
all affairs concerning the Licensed Marks, the Licensed Copyrights, the Licensed
Patents and the Licensed Technology in its sole and absolute discretion.
SECTION 3.06. Title to Patents. In the event that Pitney Xxxxx shall,
for any reason, determine that it no longer wishes to maintain any issued patent
of the Licensed Patents in the Permitted Geographic Areas, Pitney Xxxxx shall
notify
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Office Systems of its intent and shall provide Office Systems the option to
obtain title to such underlying issued patent, subject to an unrestricted,
worldwide, irrevocable, royalty-free license (including the right to sublicense)
which shall be retained by Pitney Xxxxx. In the event that Office Systems wishes
to obtain title to the underlying Patent, Pitney Xxxxx shall assign such Patent
to Office Systems at no cost to Office Systems; provided that Office Systems
shall pay all fees and expenses associated with such assignment.
ARTICLE 4
PERMITTED SUBLICENSES
SECTION 4.01. Sublicenses to Subsidiaries and to Authorized
Manufacturers. (a) Subject to the terms and conditions of this Agreement,
including all applicable Quality Standards and Trademark Usage Guidelines and
other restrictions (including the limitation on the term of the Licensed Marks
as set forth in Section 12.01) in this Agreement, Office Systems may grant
sublicenses to its Subsidiaries to use the Licensed Marks, the Licensed
Copyrights, the Licensed Patents or the Licensed Technology in connection with
the Sale or offer for Sale of Office Systems Business Products in the Permitted
Geographic Areas in accordance with the terms and conditions of this Agreement;
provided, that (i) Office Systems enters into a written sublicense agreement
with each such Subsidiary sublicensee, and (ii) such agreement does not include
the right to grant further sublicenses other than, in the case of a sublicensed
Subsidiary of Office Systems, to another Subsidiary of Office Systems. Office
Systems shall provide copies of such written sublicense agreements to Pitney
Xxxxx upon request. If Office Systems grants any sublicense rights pursuant to
this Section 4.01(a) and any such sublicensed Subsidiary ceases to be a
Subsidiary, then the sublicense granted to such Subsidiary pursuant to this
Section 4.01(a) shall terminate one hundred eighty (180) days from the date of
such cessation.
(b) Subject to the terms and conditions of this Agreement, Office
Systems may grant sublicenses to any Authorized Manufacturer to use the Licensed
Patents or the Licensed Technology in accordance with the terms and conditions
of this Agreement; provided, that (i) Office Systems enters into a written
sublicense agreement with each such Authorized Manufacturer sublicensee, (ii)
such agreement does not include the right to grant any further sublicenses and
(iii) the purpose of such agreement shall be solely to facilitate the
manufacture and supply of products to be built for Sale by Office Systems and to
be marketed under the Licensed Marks in the Permitted Geographic Areas. Office
Systems shall provide copies of such written sublicense agreements to Pitney
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Xxxxx upon request. If Office Systems grants any sublicense rights pursuant to
this Section 4.01(b) and any such sublicensed Authorized Manufacturer ceases to
be an Authorized Manufacturer, then the sublicense granted to such Authorized
Manufacturer pursuant to this Section 4.01(b) shall terminate no later than one
hundred eighty (180) days from the date of such cessation.
(c) All sublicenses granted herein with respect to each Licensed Xxxx,
Licensed Copyright, Licensed Patent or the Licensed Technology shall expire upon
the expiration or invalidity of such Licensed Xxxx, Licensed Copyright, Licensed
Patent or the Licensed Technology.
(d) All sublicenses granted pursuant to this Agreement to a particular
Subsidiary of Office Systems shall terminate one hundred eighty (180) days from
the date that the Subsidiary ceases to be a Subsidiary of Office Systems.
(e) All sublicenses granted pursuant to this Agreement other than
those granted to Subsidiaries of Office Systems hereunder shall terminate upon
the expiration or termination of this Agreement or upon the expiration or other
termination of the underlying license or rights granted herein.
SECTION 4.02. Authorized Dealers' Use of Marks. Subject to the terms
and conditions of this Agreement, including all applicable Quality Standards and
Trademark Usage Guidelines and other restrictions in this Agreement, Office
Systems (and those Subsidiaries sublicensed to use the Licensed Marks pursuant
to Section 4.01) may allow Authorized Dealers to, and may allow such Authorized
Dealers to allow other Authorized Dealers to, use the Licensed Marks in the
advertisement and promotion of Office Systems Business Products Sold by such
Authorized Dealers.
SECTION 4.03. Enforcement of Agreements. Office Systems shall take all
appropriate measures at Office Systems' expense promptly and diligently to
enforce the terms of any sublicense agreement or other agreement with any
Subsidiary, Authorized Manufacturer or Authorized Dealer, or of any existing
agreement with any Authorized Manufacturer or Authorized Dealer, and shall
restrain any such Subsidiary, Authorized Manufacturer or Authorized Dealer from
violating such terms, including without limitation (i) monitoring the
Subsidiaries', Authorized Manufacturers' and Authorized Dealers' compliance with
the relevant Trademark Usage Guidelines and Quality Standards and causing any
noncomplying Subsidiary or Authorized Dealer promptly to remedy any failure,
(ii) terminating such agreement and/or (iii) commencing legal action, in each
case, using a standard of care consistent with Pitney Xxxxx' practices as of the
Distribution Date. In the event that Pitney Xxxxx determines that Office Systems
has failed promptly and diligently to enforce the terms of any such agreement
12
using such standard of care, Pitney Xxxxx reserves the right to enforce such
terms, and Office Systems shall reimburse Pitney Xxxxx for its fully allocated
direct costs and expenses incurred in enforcing such agreement, plus all
out-of-pocket costs and expenses.
ARTICLE 5
TRADEMARK USAGE GUIDELINES
SECTION 5.01. Trademark Usage Guidelines. The Office Systems Group,
Authorized Dealers and Authorized Manufacturers shall use the Licensed Marks
only in a manner that is consistent with the Trademark Usage Guidelines.
SECTION 5.02. Trademark Reviews. At Pitney Xxxxx' request, Office
Systems agrees to furnish or make available for inspection to Pitney Xxxxx
samples of all Office Systems Business Products and Collateral Materials of
Office Systems, its Subsidiaries, Authorized Dealers, and Authorized
Manufacturers that are marked with one or more of the Licensed Marks (to the
extent that Office Systems has the right to obtain such samples). If Office
Systems is notified or determines that it or any of its Subsidiaries, Authorized
Dealers or Authorized Manufacturers is not complying with any Trademark Usage
Guidelines, it shall notify Pitney Xxxxx and the provisions of Article 6 and
Section 4.03 shall apply to such noncompliance.
ARTICLE 6
TRADEMARK USAGE GUIDELINE ENFORCEMENT
SECTION 6.01. Initial Guideline Cure Period. If Pitney Xxxxx becomes
aware that Office Systems or any Subsidiary, Authorized Dealer or Authorized
Manufacturer is not complying with any Trademark Usage Guidelines, Pitney Xxxxx
shall notify Office Systems in writing, setting forth in reasonable detail a
written description of the noncompliance and any requested action for curing
such noncompliance. Office Systems shall then have sixty (60) days with regard
to noncompliance by Authorized Dealers or Authorized Manufacturers and thirty
(30) days with regard to noncompliance by Office Systems or any Subsidiary after
receipt of such notice ("Initial Guideline Cure Period") to correct such
noncompliance or submit to Pitney Xxxxx a written plan to correct such
noncompliance which written plan is reasonably acceptable to Pitney Xxxxx.
13
SECTION 6.02. Second Guideline Cure Period. If noncompliance with the
Trademark Usage Guidelines continues beyond the Initial Guideline Cure Period,
Office Systems and Pitney Xxxxx shall each promptly appoint a representative to
negotiate in good faith actions that may be necessary to correct such
noncompliance. The parties shall have thirty (30) days following the expiration
of the Initial Guideline Cure Period to agree on corrective actions, and Office
Systems shall have thirty (30) days from the date of an agreement of corrective
actions, but not more than sixty (60) days following expiration of the Initial
Guideline Cure Period, to implement such corrective actions and cure or cause
the cure of such noncompliance ("Second Guideline Cure Period"). In the event
that the parties fail to agree on corrective actions within thirty (30) days
following the expiration of the Initial Guideline Cure Period, the appointed
representatives of Pitney Xxxxx and Office Systems shall submit to the Operating
Committee (as defined in the Transition Services Agreement) a description of the
noncompliance. The Operating Committee shall attempt to determine and implement
corrective actions. The Operating Committee, in accordance with the procedures
set forth in the Transition Services Agreement, shall attempt to determine and
implement the necessary corrective actions (as determined by it).
SECTION 6.03. Final Guideline Cure Period. If the noncompliance with
the Trademark Usage Guideline remains uncured, including for failure to agree on
corrective actions after the expiration of the Second Guideline Cure Period,
then at Pitney Xxxxx' election, Office Systems, or the noncomplying Subsidiary
or Authorized Dealer or Authorized Manufacturer, whichever is applicable,
promptly shall cease using the noncomplying Collateral Materials until Pitney
Xxxxx determines that Office Systems, or the noncomplying Subsidiary, Authorized
Dealer or Authorized Manufacturer, whichever is applicable, has demonstrated its
ability and commitment to comply with the Trademark Usage Guidelines. If, within
thirty (30) days following the expiration of the Second Guideline Cure Period,
the noncompliance with the Trademark Usage Guidelines remains uncured for any
reason, Pitney Xxxxx may elect to terminate license of the Licensed Xxxx giving
rise to such noncompliance. Nothing in this Article 6 shall be deemed to limit
Office Systems' obligations under Section 4.03 above or to preclude Pitney Xxxxx
from exercising any rights or remedies under Section 4.03 above.
14
ARTICLE 7
QUALITY STANDARDS
SECTION 7.01. General. Office Systems acknowledges that as a condition
to the rights and the license granted by this Agreement, the Office Systems
Business Products permitted by this Agreement to be marked with one or more of
the Licensed Marks must be offered for Sale and marketed in a manner
substantially similar to that established prior to the Distribution Date and the
Office Systems Business must be operated in a manner at least consistent with
the level of quality and service established prior to the Distribution Date as
to provide protection of the Licensed Marks and the goodwill they symbolize, and
Office Systems further acknowledges that the maintenance of the high quality
standards associated with such products is of the essence of this Agreement.
SECTION 7.02. Quality Standards. The Office Systems Group and its
Authorized Dealers shall use the Licensed Marks only on and in connection with
Office Systems Business Products that meet or exceed in all respects the Quality
Standards.
SECTION 7.03. Quality Control Reviews. At Pitney Xxxxx' request, Office
Systems agrees to furnish or make available to Pitney Xxxxx for inspection
sample Office Systems Business Products marked with one or more of the Licensed
Marks. Pitney Xxxxx may also independently conduct customer satisfaction surveys
to determine if the Office Systems Group and its Authorized Dealers and
Authorized Manufacturers are meeting the Quality Standards. Such surveys shall
be conducted no more than three (3) times during the term of this Agreement and
no more than one (1) time in any six (6)-month period; provided that if Office
Systems is not meeting the Quality Standards with respect to the Office Systems
Business Products, or if any survey conducted pursuant to this Agreement
discloses any Quality Standards problem for any reason, then Pitney Xxxxx shall
have the option to conduct any additional surveys or take investigative and/or
corrective action as in its judgment shall be necessary or appropriate to
resolve the problem, consistent with the terms of this Agreement, including but
not limited to Article 8. Any such surveys shall be provided to Office Systems
by Pitney Xxxxx for Office Systems' review and comment at least thirty (30) days
prior to Pitney Xxxxx' distribution of the surveys to any customer. Office
Systems shall not have any approval or other rights in connection with any
survey. Office Systems shall cooperate with Pitney Xxxxx fully in the
distribution of such surveys. Pitney Xxxxx shall, at the request of Office
Systems, provide Office Systems with copies of customer surveys used by Pitney
Xxxxx to determine if Office Systems is meeting the Quality Standards. If Office
Systems is notified or determines that it or any of its Subsidiaries Authorized
Dealers or Authorized Manufacturers is not complying with any
15
Quality Standards, it shall notify Pitney Xxxxx and the provisions of Article 8
and Section 4.03 shall apply to such noncompliance.
----
SECTION 7.04. Product Discontinuation. If, at any time during or after
the term of this Agreement, Office Systems discontinues the Sale of an Office
Systems Business Product that has been marked with one or more of the Licensed
Marks, Office Systems shall immediately notify Pitney Xxxxx in writing of the
discontinuation, and, if Office Systems uses any such Licensed Xxxx solely in
connection with such discontinued Office Systems Business Product, then Office
Systems shall immediately cease using such Licensed Xxxx and shall immediately
notify Pitney Xxxxx in writing of such cessation.
ARTICLE 8
QUALITY STANDARD ENFORCEMENT
SECTION 8.01. Initial Quality Standard Cure Period. If Pitney Xxxxx
becomes aware that Office Systems or any Subsidiary or Authorized Dealer
sublicensee is not complying with any Quality Standards, Pitney Xxxxx shall
notify Office Systems in writing, setting forth in reasonable detail a written
description of the noncompliance and any requested action for curing such
noncompliance. Office Systems shall then have thirty (30) days after receipt of
such notice ("Initial Quality Standard Cure Period") to correct such
noncompliance or submit to Pitney Xxxxx a written plan to correct such
noncompliance which written plan is reasonably acceptable to Pitney Xxxxx.
SECTION 8.02. Second Quality Standard Cure Period. If noncompliance
with the Quality Standards continues beyond the Initial Quality Standard Cure
Period, Office Systems and Pitney Xxxxx shall each promptly appoint a
representative to negotiate in good faith actions that may be necessary to
correct such noncompliance. The parties shall have thirty (30) days following
the expiration of the Initial Quality Standard Cure Period to agree on
corrective actions, and Office Systems shall have thirty (30) days from the date
of an agreement of corrective actions, but not more than sixty (60) days
following expiration of the Initial Quality Standard Cure Period, to implement
such corrective actions and cure or cause the cure of such noncompliance
("Second Quality Standard Cure Period"). In the event that the parties fail to
agree on corrective actions within thirty (30) days following the expiration of
the Initial Quality Standard Cure Period, the appointed representatives of
Pitney Xxxxx and Office Systems shall submit to the Operating Committee (as
defined in the Transition Services Agreement) a description of the
noncompliance. The Operating Committee, in accordance with the procedures set
forth in the
16
Transition Services Agreement, shall attempt to determine and implement the
necessary corrective actions (as determined by it).
SECTION 8.03. Final Quality Standard Cure Period. If the noncompliance
with the Quality Standards remains uncured, including for failure to agree on
corrective actions, after the expiration of the Second Quality Standard Cure
Period, then at Pitney Xxxxx' election, Office Systems, or the noncomplying
Subsidiary or Authorized Dealer, whichever is applicable, promptly shall cease
offering the noncomplying Office Systems Business Products under the Licensed
Marks until Pitney Xxxxx determines that Office Systems, or the noncomplying
Subsidiary or Authorized Dealer, whichever is applicable, has demonstrated its
ability and commitment to comply with the Quality Standards. If, within thirty
(30) days following the expiration of the Second Quality Standard Cure Period,
the noncompliance with the Quality Standards remains uncured for any reason,
Pitney Xxxxx may elect to terminate license of the Licensed Xxxx giving rise to
such noncompliance ("Final Quality Standard Cure Period"). Nothing in this
Article 8 shall be deemed to limit Office Systems' obligations under Section
4.03 above or to preclude Pitney Xxxxx from exercising any rights or remedies
under Section 4.03 above.
ARTICLE 9
PROTECTION OF LICENSED MARKS, LICENSED COPYRIGHTS, LICENSED PATENTS
AND LICENSED TECHNOLOGY
SECTION 9.01. Ownership and Rights. To the extent not contrary to
applicable law, Office Systems agrees not to challenge the ownership or validity
of the Licensed Marks, the Licensed Copyrights, the Licensed Patents or the
Licensed Technology or contest the fact that Office Systems' rights are only
those of a licensee of the Licensed Marks, Licensed Copyrights, Licensed Patents
and Licensed Technology. Office Systems shall not disparage, dilute or, to the
extent not contrary to applicable law, adversely affect the validity of the
Licensed Marks, the Licensed Copyrights, the Licensed Patents or the Licensed
Technology. Office Systems' use of the Licensed Marks and the goodwill
associated therewith shall inure exclusively to the benefit of Pitney Xxxxx, and
Office Systems shall not acquire or assert any rights in the Licensed Marks, the
Licensed Copyrights, the Licensed Patents or the Licensed Technology. Office
Systems recognizes the value of the goodwill associated with the Licensed Marks,
and that the Licensed Marks may have acquired secondary meaning in the minds of
the public.
SECTION 9.02. Protection of Licensed Marks, Licensed Copyrights,
Licensed Patents and the Licensed Technology. Office Systems shall assist Pitney
Xxxxx, at Pitney
17
Xxxxx' request and expense, in the procurement and maintenance of Pitney Xxxxx'
intellectual property rights in the Licensed Marks, the Licensed Copyrights,
Licensed Patents and the Licensed Technology. Office Systems will not grant or
attempt to grant a security interest in the Licensed Marks, the Licensed
Copyrights, the Licensed Patents or the Licensed Technology, or to record any
such security interest in the United States Patent and Trademark Office or
elsewhere, against any trademark application or registration belonging to Pitney
Xxxxx. Office Systems agrees to, and to cause its Subsidiaries to, execute all
documents reasonably requested by Pitney Xxxxx to effect further registration
of, maintenance and renewal of the Licensed Marks, the Licensed Copyrights, the
Licensed Patents and the Licensed Technology, recordation of the license
relationship between Pitney Xxxxx and Office Systems, and recordation of Office
Systems as a registered user. Pitney Xxxxx makes no warranty or representation
that trademark or patent registrations have been or will be applied for, secured
or maintained in the Licensed Marks, the Licensed Copyrights, the Licensed
Patents or the Licensed Technology throughout, or anywhere within, the world.
Office Systems shall cause to appear on all Office Systems Business Products,
and all Collateral Materials, such legends, markings and notices as may be
required by applicable law or reasonably requested by Pitney Xxxxx.
SECTION 9.03. Similar Marks, Copyrights and Patents. Office Systems
agrees not to use, register or attempt to register in any country any Xxxx,
Copyright or Patent that infringes upon or violates Pitney Xxxxx' rights in the
Licensed Marks, the Licensed Copyrights, the Licensed Patents or the Licensed
Technology, or any element thereof. If any application for registration is, or
has been, filed in any country by Office Systems which relates to any Xxxx,
Copyright or Patent that infringes upon or violates Pitney Xxxxx' rights in the
Licensed Marks, the Licensed Copyrights, the Licensed Patents or the Licensed
Technology, Office Systems shall immediately abandon any such application or
registration or assign it to Pitney Xxxxx. To the extent not contrary to
applicable law, Office Systems shall not challenge Pitney Xxxxx' ownership of or
the validity of the Licensed Marks, the Licensed Copyrights, the Licensed
Patents and the Licensed Technology or any application for registration thereof
throughout the world. Office Systems shall not use, register or attempt to
register in any country any copyright, domain name or any other intellectual
property right, whether recognized currently or in the future, or other
designation which would affect the ownership or rights of Pitney Xxxxx in and to
the Licensed Marks, the Licensed Copyrights, the Licensed Patents and the
Licensed Technology, or otherwise to take any action which would adversely
affect any of such ownership rights, or assist anyone else in doing so. Office
Systems shall cause its Subsidiaries, Authorized Dealers and Authorized
Manufacturers to comply with the provisions of this Section 9.03.
18
SECTION 9.04. Infringement Proceedings. In the event that the Office
Systems General Counsel learns of any infringement or violation or threatened
infringement or violation of the Licensed Marks, the Licensed Copyrights, the
Licensed Patents or the Licensed Technology, or any unfair competition, passing-
off or dilution with respect to the Licensed Marks, the Licensed Copyrights, the
Licensed Patents or the Licensed Technology, Office Systems shall notify Pitney
Xxxxx or its authorized representative giving particulars thereof, and Office
Systems shall provide necessary information and assistance to Pitney Xxxxx or
its authorized representatives at Pitney Xxxxx' expense in the event that Pitney
Xxxxx decides that proceedings should be commenced. Notwithstanding the
foregoing, Office Systems is not obligated to monitor or police use of the
Licensed Marks, the Licensed Copyrights, the Licensed Patents and the Licensed
Technology by Third Parties other than as specifically set forth in Section
4.03. Pitney Xxxxx shall have exclusive control of any litigation, opposition,
cancellation or related legal proceedings, relating to the use of the Licensed
Marks by Third Parties. The decision whether to bring, maintain or settle any
such proceedings shall be at the exclusive option and expense of Pitney Xxxxx,
and all recoveries shall belong exclusively to Pitney Xxxxx. Office Systems
shall not and shall have no right to initiate any such litigation, opposition,
cancellation or related legal proceedings in its own name, but, at Pitney Xxxxx'
request, agrees to be joined as a party in any action taken by Pitney Xxxxx to
enforce its rights in the Licensed Marks, the Licensed Copyrights, the Licensed
Patents or the Licensed Technology. Pitney Xxxxx shall incur no liability to
Office Systems or any other Person under any legal theory by reason of Pitney
Xxxxx' failure or refusal to prosecute or by Pitney Xxxxx' refusal to permit
Office Systems to prosecute, any alleged infringement or violation by Third
Parties, nor by reason of any settlement to which Pitney Xxxxx may agree. In the
event that Pitney Xxxxx requests that Office Systems be joined as a party in any
action taken by Pitney Xxxxx to enforce its rights in the Licensed Marks, the
Licensed Copyrights, the Licensed Patents or the Licensed Technology, Pitney
Xxxxx shall provide outside counsel and pay Office Systems' expenses related to
any such action; provided that Office Systems shall be responsible for the fees
of any separate outside legal counsel or other attorneys' fees or other
expenses.
ARTICLE 10
CONFIDENTIALITY
SECTION 10.01. General. For the term of this Agreement and for five
years after the termination or expiration of this Agreement, each party shall
retain the other party's Confidential Information in the strictest confidence
(on a need to know basis) and shall not disclose such Confidential Information
to any Person
19
without the other party's express written consent, other than on a need-to-know
basis to an employee, agent or professional advisor of the receiving party or an
Affiliate thereof. Notwithstanding anything to the contrary in this Agreement,
the obligation to maintain the confidentiality of Confidential Information shall
not apply to the extent that the receiving party is required to disclose such
Confidential Information pursuant to Law or legally enforceable order of a court
or judicial body; provided that the receiving party provides notice to the
disclosing party to enable the disclosing party to seek a protective order or an
injunction.
ARTICLE 11
INDEMNIFICATION
SECTION 11.01. Office Systems Indemnification of Pitney Xxxxx. Office
Systems shall indemnify, defend and hold harmless Pitney Xxxxx and the
respective directors, officers and Affiliates of Pitney Xxxxx and its
Subsidiaries (the "Pitney Xxxxx Indemnitees") from and against any and all
Losses incurred or suffered by any of the Pitney Xxxxx Indemnities arising out
of the use of any Licensed Xxxx, Licensed Copyright, Licensed Patent or Licensed
Technology by Office Systems or any of its Subsidiaries, Authorized Dealers or
its customers or Authorized Manufacturers or its customers.
SECTION 11.02. Insurance; Third Party Obligations; Tax Benefits. Any
indemnification pursuant to Section 11.01 shall be paid net of the amount of any
insurance or other amounts that would be payable by any Third Party to the
Indemnified Party (as defined below) in the absence of this Agreement
(irrespective of time of receipt of such insurance or other amounts) and net of
any tax benefit to the Indemnified Party attributable to the relevant payment or
Liability. Such indemnification shall be increased to reflect any tax liability
of the Indemnified Party so that the Indemnified Party receives 100% of the
after-tax amount of any payment or liability. It is expressly agreed that no
insurer or any other Third Party shall be (i) entitled to a benefit it would not
be entitled to receive in the absence of the foregoing indemnification
provisions, (ii) relieved of the responsibility to pay any claims to which it is
obligated or (iii) entitled to any subrogation rights with respect to any
obligation hereunder.
SECTION 11.03. Notice and Payment of Claims. If any Pitney Xxxxx
Indemnitee (the "Indemnified Party") determines that it is or may be entitled to
indemnification by any party (the "Indemnifying Party") under Article 11 (other
than in connection with any Action subject to Section 11.04), the Indemnified
Party shall deliver to the Indemnifying Party a written notice specifying, to
the
20
extent reasonably practicable, the basis for its claim for indemnification and
the amount for which the Indemnified Party reasonably believes it is entitled to
be indemnified. If the Indemnifying Party has not responded within thirty (30)
days after receipt of such notice, the Indemnified Party shall deliver a second
notice to the within ten (10) days of the expiration of the original thirty
(30)-day period. Within thirty (30) days after receipt of any second notice, the
Indemnifying Party shall pay the Indemnified Party such amount in cash or other
immediately available funds unless the Indemnifying Party objects to the claim
for indemnification or the amount thereof. If the Indemnifying Party does not
give the Indemnified Party written notice objecting to such indemnity claim and
setting forth the grounds therefor within such thirty (30)-day period, the
Indemnified Party shall give the Indemnifying Party an additional notice of its
claim for indemnification and if the Indemnifying Party does not give the
Indemnified Party written notice objecting to such claim within ten (10) days
after receipt of such notice the Indemnifying Party shall be deemed to have
acknowledged its liability for such claim and the Indemnified Party may exercise
any and all of its rights under applicable law to collect such amount. In the
event of such a timely objection by the Indemnifying Party, the amount, if any,
that is Finally Determined to be required to be paid by the Indemnifying Party
in respect of such indemnity claim shall be paid by the Indemnifying Party to
the Indemnified Party in cash within fifteen (15) days after such indemnity
claim has been so Finally Determined.
SECTION 11.04. Notice and Defense of Third-Party Claims. Promptly
following the earlier of (i) receipt of notice of the commencement by a third
party of any Action against or otherwise involving any Indemnified Party or (ii)
receipt of information from a third party alleging the existence of a claim
against an Indemnified Party, in either case, with respect to which
indemnification may be sought pursuant to this Agreement (a "Third-Party
Claim"), the Indemnified Party shall give the Indemnifying Party written notice
thereof. The failure of the Indemnified Party to give notice as provided in this
Article 11 shall not relieve the Indemnifying Party of its obligations under
this Agreement, except to the extent that the Indemnifying Party is prejudiced
by such failure to give notice. Within thirty (30) days after receipt of such
notice, the Indemnifying Party may (i) by giving written notice thereof to the
Indemnified Party, acknowledge liability for such indemnification claim and at
its option elect to assume the defense of such Third-Party Claim at its sole
cost and expense or (ii) object to the claim for indemnification set forth in
the notice delivered by the Indemnified Party pursuant to the first sentence of
this Section 11.04; provided that if the Indemnifying Party does not within such
thirty (30)-day period give the Indemnified Party written notice objecting to
such indemnification claim and setting forth the grounds therefor, the
Indemnified Party shall give the Indemnifying Party an additional notice of its
claim for indemnification and if the Indemnifying Party does not give the
Indemnified Party written notice objecting to such claim within ten (10) days
21
after receipt of such notice the Indemnifying Party shall be deemed to have
acknowledged its liability for such indemnification claim. If the Indemnifying
Party has elected to assume the defense of a Third-Party Claim, (x) the defense
shall be conducted by counsel retained by the Indemnifying Party and reasonably
satisfactory to the Indemnified Party, provided that the Indemnified Party shall
have the right to participate in such proceedings and to be represented by
counsel of its own choosing at the Indemnified Party's sole cost and expense;
and (y) the Indemnifying Party may settle or compromise the Third Party Claim
without the prior written consent of the Indemnified Party so long as such
settlement includes an unconditional release of the Indemnified Party from all
claims that are the subject of such Third Party Claim, provided that the
Indemnifying Party may not agree to any such settlement pursuant to which any
remedy or relief, other than monetary damages for which the Indemnifying Party
shall be responsible hereunder, shall be applied to or against the Indemnified
Party, without the prior written consent of the Indemnified Party, which consent
shall not be unreasonably withheld. If the Indemnifying Party does not assume
the defense of a Third-Party Claim for which it has acknowledged liability for
indemnification hereunder, the Indemnified Party may require the Indemnifying
Party to reimburse it on a current basis for its reasonable expenses of
investigation, reasonable attorneys' fees and reasonable out-of-pocket expenses
incurred in defending against such Third-Party Claim and the Indemnifying Party
shall be bound by the result obtained with respect thereto by the Indemnified
Party; provided that the Indemnifying Party shall not be liable for any
settlement effected without its consent, which consent shall not be unreasonably
withheld. The Indemnifying Party shall pay to the Indemnified Party in cash the
amount, if any, for which the Indemnified Party is entitled to be indemnified
hereunder within fifteen (15) days after such Third Party Claim has been Finally
Determined, in the case of an indemnity claim as to which the Indemnifying Party
has acknowledged liability or, in the case of any indemnity claim as to which
the Indemnifying Party has not acknowledged liability, within fifteen (15) days
after such Indemnifying Party's objection to liability hereunder has been
Finally Determined.
SECTION 11.05. Contribution. If for any reason the indemnification
provided for in Section 11.01 is unavailable to any Indemnified Party, or
insufficient to hold it harmless, then the Indemnifying Party shall contribute
to the amount paid or payable by such Indemnified Party as a result of such
Losses in such proportion as is appropriate to reflect all relevant equitable
considerations.
SECTION 11.06. Non-Exclusivity of Remedies. The remedies provided for
in this Article 11 are not exclusive and shall not limit any rights or remedies
which may otherwise be available to any Indemnified Party at law or in equity.
22
ARTICLE 12
TERM AND TERMINATION
SECTION 12.01. Term. Office Systems' right to use the Licensed Marks
shall remain in effect for a period of two (2) years from the Distribution Date
unless earlier terminated as provided below. Office Systems' rights in the
Licensed Patents and Licensed Copyrights shall remain in effect for the term of
the associated Patent or Copyright. Office Systems' rights in the Licensed
Technology shall remain in effect indefinitely, subject to the terms and
conditions of this Agreement.
SECTION 12.02. Voluntary Termination. By written notice to Pitney
Xxxxx, Office Systems may voluntarily terminate all or a specified portion of
the licenses and rights granted to it hereunder by Pitney Xxxxx. Such notice
shall specify the effective date of such termination and shall clearly specify
any affected Licensed Marks, Licensed Patents or Licensed Technology or Office
Systems Business Products.
SECTION 12.03. Survival. Any termination of licenses and rights of
Office Systems under Section 12.02 shall not affect Office Systems' licenses and
-----
rights with respect to any Office Systems Business Products made or sold prior
to such termination.
SECTION 12.04. Other Termination. (a) Pitney Xxxxx shall have the
option to terminate Office Systems' use of the Licensed Marks in the event that
Office Systems materially defaults on its obligations under any of the Ancillary
Agreements and, following written notice from Pitney Xxxxx, does not cure such
default within sixty (60) days of receipt of such notice.
(b) Pitney Xxxxx shall have the option to terminate Office Systems' use
of the Licensed Marks in the event that Office Systems becomes bankrupt or
insolvent, or experiences a Change of Control.
(c) Office Systems' right to use the Licensed Marks shall automatically
terminate in the event that either party terminates, in accordance with the
provisions of Section 8.12 of the Distribution Agreement, the provision of the
non-compete covenant set forth in Section 7.02 therein. Pitney Xxxxx shall have
----
the option to terminate Office Systems' right to use the Licensed Marks if the
Distribution Agreement is terminated for any reason.
23
ARTICLE 13
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE
OTHER PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT,
INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS OR ANY OTHER DAMAGES, HOWEVER
CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY
OUT OF THIS AGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES.
ARTICLE 14
MISCELLANEOUS PROVISIONS
SECTION 14.01. Disclaimer. Each party acknowledges and agrees that all
Licensed Marks, Licensed Copyrights, Licensed Patents and the Licensed
Technology and any other information or materials licensed or provided hereunder
are licensed or provided on an "as is" basis and that neither party nor any of
its Subsidiaries makes any representations or extends any warranties whatsoever,
express, implied or statutory, with respect thereto including without limitation
any implied warranties of title, enforceability or non-infringement. Without
limiting the generality of the foregoing, neither Pitney Xxxxx nor any of its
Subsidiaries makes any warranty or representation as to the validity of any
Xxxx, Patent or Copyright licensed by it to Office Systems or any warranty or
representation that any use of any Xxxx, Patent or Copyright with respect to any
product or service will be free from infringement or violation of any rights of
any Third Party.
SECTION 14.02. Other Agreements. In the event there is any
inconsistency between the provisions of this Agreement, on the one hand, and the
provisions of the Distribution Agreement, on the other hand, the provisions of
the Distribution Agreement shall govern.
SECTION 14.03. No Implied Licenses. Nothing contained in this Agreement
shall be construed as conferring any rights by implication, estoppel or
otherwise, under any intellectual property right, other than the rights
expressly granted in this Agreement with respect to the Licensed Marks, the
Licensed Copyrights, the Licensed Patents and the Licensed Technology. Neither
party is required hereunder to furnish or disclose to the other any information
(including
24
copies of registrations of the Licensed Marks and Licensed Patents), except as
specifically provided herein.
SECTION 14.04. Further Assurances and Consents. In addition to the
actions specifically provided for elsewhere in this Agreement, each of the
parties hereto shall use its reasonable best efforts to take, or cause to be
taken, all actions, and to do, or cause to be done, all things, reasonably
necessary, proper or advisable under applicable laws, regulations and agreements
or otherwise to consummate and make effective the transactions contemplated by
this Agreement, including but not limited to using its reasonable best efforts
to obtain any consents and approvals and to make any filings and applications
necessary or desirable in order to consummate the transactions contemplated by
this Agreement; provided that no party hereto shall be obligated to pay any
consideration therefor (except for filing fees and other similar charges) to any
Third Party from whom such consents or approvals are requested or to take any
action or omit to take any action if the taking of or omission to take such
action would be unreasonably burdensome to the party, its Group or its Group's
business.
SECTION 14.05. Infringement Suits. Except as set forth in Section 4.03,
(i) neither party shall have any obligation hereunder to institute any action or
suit against Third Parties for infringement or violation of any of the Licensed
Marks, the Licensed Copyrights, the Licensed Patents or the Licensed Technology
or to defend any action or suit brought by a Third Party which challenges or
concerns the validity of any of the Licensed Marks, the Licensed Copyrights, the
Licensed Patents or the Licensed Technology and (ii) Office Systems shall not
have any right to institute any action or suit against Third Parties for
infringement or violation of any of the Licensed Marks, the Licensed Copyrights,
the Licensed Patents or the Licensed Technology.
SECTION 14.06. No Other Obligations. Neither party assumes any
responsibilities or obligations whatsoever, other than the responsibilities and
obligations expressly set forth in this Agreement or a separate written
agreement. Without limiting the generality of the foregoing, neither party, nor
any of its Subsidiaries, is obligated to (i) file any application for
registration of any Xxxx, any Patent or any Copyright, or to secure any rights
in any Marks, any Patents or any Copyrights, (ii) to maintain any Xxxx or any
Patent registration, or (iii) provide any assistance, except for the obligations
expressly assumed in this Agreement.
SECTION 14.07. Force Majeure. (a) For purposes of this Section, "force
majeure" means an event beyond the control of either party, which by its nature
could not have been foreseen by such party, or, if it could have been foreseen,
was unavoidable, and includes without limitation, acts of God, storms, floods,
riots,
25
fires, sabotage, civil commotion or civil unrest, interference by civil
or military authorities, acts of war (declared or undeclared) and failure of
energy sources.
(b) Without limiting the generality of Article 13 herein, neither party
shall be under any liability for failure to fulfill any obligation under this
Agreement, so long as and to the extent to which the fulfillment of such
obligation is prevented, frustrated, hindered, or delayed as a consequence of
circumstances of force majeure; provided that such party shall have exercised
all due diligence to minimize to the greatest extent possible the effect of
force majeure on its obligations hereunder.
(c) Promptly on becoming aware of force majeure causing a delay in
performance or preventing performance of any obligations imposed by this
Agreement (and termination of such delay), the party affected shall give written
notice to the other party giving details of the same, including particulars of
the actual and, if applicable, estimated continuing effects of such force
majeure on the obligations of the party whose performance is prevented or
delayed. If such notice shall have been duly given, the actual delay resulting
from such force majeure shall be deemed not to be a breach of this Agreement,
and the period for performance of the obligation to which it relates shall be
extended accordingly; provided that if force majeure results in the performance
of a party being delayed by more than one hundred eighty (180) days, the other
party shall have the right to terminate this Agreement with respect to any
provision affected by such delay forthwith by written notice.
SECTION 14.08. Entire Agreement. This Agreement, the Distribution
Agreement and the other Ancillary Agreements and the Exhibits and Schedules
referenced or attached hereto and thereto constitute the entire agreement
between the parties with respect to the subject matter hereof and thereof and
shall supersede all prior written and oral and all contemporaneous oral
agreements and understandings with respect to the subject matter hereof and
thereof. To the extent there is a conflict between this Agreement and the
Distribution Agreement between the parties, the terms of this Agreement shall
govern.
SECTION 14.09. Governing Law. This Agreement shall be governed in
accordance with the laws of the State of New York without regard to New York
choice of law provisions. Each of Pitney Xxxxx and Office Systems hereby submits
to the non-exclusive jurisdiction of the United States District Court for the
Southern District of New York and of any New York State court sitting in New
York City for purposes of all legal proceedings arising out of or relating to
this Agreement.
26
SECTION 14.10. Waiver of Jury Trial. Pitney Xxxxx and Office Systems
hereby irrevocably waive any and all right to trial by jury in any legal
proceeding arising out of or relating to this Agreement and to the fullest
extent permitted by law waive any rights that they may have to claim or to
receive consequential or special damages in connection with any legal proceeding
arising out of or relating to this Agreement.
SECTION 14.11. Notices. Notices, offers, requests or other
communications required or permitted to be given by either party pursuant to the
terms of this Agreement shall be given in writing to the respective parties to
the following addresses:
if to Pitney Xxxxx:
Pitney Xxxxx Inc.
0 Xxxxxxxx Xxxxx
Xxxxxxxx, XX 00000-0000
Telecopy: (000) 000-0000
Attention: Xxxx Xxxx
Title: Vice President and General Counsel
with a copy to:
Pitney Xxxxx Inc.
00 Xxxxxxxxx Xxxxx
Mail Stop Code 00-00
Xxxxxxx, XX 00000-0000
Telecopy: (000) 000-0000
Attention: Xxxxxxx X. Xxxxxx
Title: Deputy General Counsel, Intellectual
Property and Technology Law
with a copy to:
Xxxxx Xxxx & Xxxxxxxx
000 Xxxxxxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Telecopy: (000) 000-0000
Attention: Xxxxx X. Xxxxxx
if to Office Systems:
Pitney Xxxxx Office Systems, Inc.
000 Xxxxxxx Xxxxx
Xxxxxxxx, XX 00000
Telecopy: (000) 000-0000
Attention: Chief Financial Officer
27
with a copy to:
Pitney Xxxxx Office Systems, Inc.
000 Xxxxxxx Xxxxx
Xxxxxxxx, XX 00000
Telecopy: (000) 000-0000
Attention: General Counsel
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non- performance, termination, or renewal shall be sent by hand
delivery, recognized overnight courier or, within the United States, may also be
sent via certified mail, return receipt requested. All other notices may also be
sent by fax, confirmed by first class mail. All notices shall be deemed to have
been given and received on the earlier of actual delivery or three (3) days from
the date of postmark.
SECTION 14.12. Nonassignability. Neither party may, directly or
indirectly, in whole or in part, whether by operation of law or otherwise,
assign or transfer this Agreement, without the other party's prior written
consent, and any attempted assignment, transfer or delegation without such prior
written consent shall be voidable at the sole option of such other party.
Notwithstanding the foregoing, each party (or its permitted successive assignees
or transferees hereunder) may assign or transfer this Agreement as a whole
without consent to a Person that succeeds to all or substantially all of the
business or assets of such party as long as such Person agrees to accept all the
terms and conditions set forth herein. Without limiting the foregoing, this
Agreement will be binding upon and inure to the benefit of the parties and their
permitted successors and assigns.
SECTION 14.13. Severability. If any term or other provision of this
Agreement is determined by a court, administrative agency or arbitrator to be
invalid, illegal or incapable of being enforced by any rule of law or public
policy, all other conditions and provisions of this Agreement shall nevertheless
remain in full force and effect so long as the economic or legal substance of
the transactions contemplated hereby is not affected in any manner materially
adverse to either party. Upon such determination that any term or other
provision is invalid, illegal or incapable of being enforced, the parties hereto
shall negotiate in good faith to modify this Agreement so as to effect the
original intent of the parties as closely as possible in an acceptable manner to
the end that the transactions contemplated hereby are fulfilled to the fullest
extent possible.
SECTION 14.14. Failure or Indulgence Not Waiver; Remedies Cumulative.
No failure or delay on the part of either party hereto in the exercise of any
right hereunder shall impair such right or be construed to be a waiver of, or
acquiescence in, any breach of any representation, warranty or agreement herein,
28
nor shall any single or partial exercise of any such right preclude other or
further exercise thereof or of any other right. All rights and remedies existing
under this Agreement are cumulative to, and not exclusive of, any rights or
remedies otherwise available.
SECTION 14.15. Amendment. No change or amendment will be made to
this Agreement except by an instrument in writing signed on behalf of each of
the parties to such agreement.
SECTION 14.16. Counterparts. This Agreement, including the Ancillary
Agreements and the Exhibits and Schedules hereto and thereto and the other
documents referred to herein or therein, may be executed in counterparts, each
of which shall be deemed to be an original, but all of which shall constitute
one and the same agreement.
29
WHEREFORE, the parties have signed this Intellectual Property Agreement
effective as of the date first set forth above.
PITNEY XXXXX INC.
-----------------------------------
By:
Name:
Title:
PITNEY XXXXX OFFICE SYSTEMS,
INC.
-----------------------------------
By:
Name:
Title:
30
Schedule A-1
ASSIGNED MARKS
--------------
Schedule A-1
ASSIGNED MARKS
--------------
REGISTERED MARKS
----------------
--------------------------------------------------------------------------------
XXXX REG. NO. REG. DATE
--------------------------------------------------------------------------------
COPYKEY 1,295,839 September 18, 1994
--------------------------------------------------------------------------------
FAXKEY 1,353,807 August 13, 1985
--------------------------------------------------------------------------------
PRINTPOWDER 1,248,021 August 16, 1983
--------------------------------------------------------------------------------
SMART TOUCH 2,063,827 May 20, 1997
--------------------------------------------------------------------------------
TOTAL PACKAGE 1,528,571 March 7, 1989
--------------------------------------------------------------------------------
UNREGISTERED MARKS
------------------
CONNEX
CONNEX LITE
DIGI-SERVE
DIGITAL LIGHT ARRAY
DIGITAL SMART IMAGE DESIGN
DL SERIES
DL520 PUBLISHER
DOCUFINISH
DOCUMASTER
ESCAN
FASTTRACK
FAX CONNEX
FAX DIRECTOR IP
FYI-FOR YOUR IMAGE
PRO DOCUMENT SERIES/PRODOC 110
RIP-MASTER
SCANCONNEX
SMART COLOR COLOR SMART
SMART IMAGE PUBLISHER
SMART IMAGE SERVER
SMART IMAGER
SMART IMAGER RIP
SMART RIP
SMART RUN
SMART SIZE
SMART TRACK
SMARTFINISH
TEAM PRINT
UNIVERSAL ACCESS
VALUE ADDED MAINTENANCE
VIRTUAL DOCUMENT FACTORY
WEB CONNEX
Schedule A-1 (continued)
------------------------
CERTAIN INFORMATION RELATING TO PRIOR GRANTS
--------------------------------------------
(per Section 2.02)
None.
Schedule A-2
------------
LICENSED MARKS
--------------
Pitney Xxxxx
(Pitney Xxxxx name)
[GRAPHIC]
(Pitney Xxxxx Symbol)
[LOGO OF PITNEY XXXXX]
(Pitney Xxxxx Signature)
Schedule B
----------
LICENSED PATENTS
----------------
-----------------------------------------------------------------------------------------------------------------------------------
APPLICATIONS
-----------------------------------------------------------------------------------------------------------------------------------
CASE APPLN PATENT ISSUE
COUNTRY NUMBER TITLE STATUS NUMBER FILING DATE NUMBER DATE
-----------------------------------------------------------------------------------------------------------------------------------
US C-593 METHOD FOR FOLING AND SEALING SHEETS Granted 423,156 Oct. 18, 1989 RE 34338 8/10/93
-----------------------------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------------------------
US C-610 MULTIPURPOSE COMPUTER ACCESSORY FOR
FACILITATING FACSIMILE COMMUNICATION Granted 459,057 Dec. 29, 1989 5,091,790 2/25/92
-----------------------------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------------------------
US C-724 DEVICE FOR FOLDING AND SEALING SHEETS Granted 677,013 Mar. 28, 1991 RE 34288 6/22/93
-----------------------------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------------------------
US E-473 APPARATUS AND METHOD FOR SELECTIVE
ARCHIVING OF FACSIMILE MESSAGES Granted 576,665 Dec. 21, 1995 5,701,183 12/23/97
-----------------------------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------------------------
US E-940 METHOD AND APPARATUS FOR PREVENTING
THE UNAUTHORIZED USE OF A RETAINING
CARTRIDGE Amended 456,625 Dec. 8, 1999
-----------------------------------------------------------------------------------------------------------------------------------
WO E-940 METHOD AND APPARATUS FOR PREVENTING
THE UNAUTHORIZED USE OF A RETAINING
CARTRIDGE Pending 33,354 Dec. 8, 2000
-----------------------------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------------------------
US E-942 METHOD AND SYSTEM FOR MAXIMIZING
USE OF A COMMUNICATION LINE Pending 469,031 Dec. 21, 1999
-----------------------------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------------------------
CA B-533 TEMPERATURE SELF REGULATING FUSER Granted 351,063 May 1, 1980 1,185,312 04/9/85
-----------------------------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------------------------
APPLICATIONS
-----------------------------------------------------------------------------------------------------------------------------------
CASE APPLN PATENT ISSUE
COUNTRY NUMBER TITLE STATUS NUMBER FILING DATE NUMBER DATE
-----------------------------------------------------------------------------------------------------------------------------------
FR B-538 DOCUMENT COPIER Registered 77,962 Oct. 23, 1979 182,733 9/22/80
-----------------------------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------------------------
CA B-626 CHARGE ROLLER SYSTEM FOR AN
ELECTROPHOTOGRAPHIC COPIER Granted 383,870 Aug. 14, 1981 1,194,535 10/1/85
-----------------------------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------------------------
CA B-764 GROUNDING DEVICE FOR MOVING
PHOTOCONDUCTOR WEB Granted 415,292 Nov. 10, 1982 1,194,919 10/8/85
-----------------------------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------------------------
US B-789 CORRECTION OF IMAGING IMPERFECTIONS Granted 408,963 Aug. 17, 1982 4,491,963 1/1/85
-----------------------------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------------------------
US E-771 UNIVERSAL ACCESS PHOTOCOPIER Granted 188,273 Nov. 9, 1998 6,243,682 6/5/01
-----------------------------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------------------------
US F-201 MAILING SYSTEMS Pending 09/851074 May 8, 2001
-----------------------------------------------------------------------------------------------------------------------------------
Schedule C
----------
EXCEPTIONS TO LICENSE RESTRICTIONS
----------------------------------
None.
Schedule D
----------
QUALITY STANDARDS AND TRADEMARK USAGE GUIDELINES
------------------------------------------------
Pitney Xxxxx document "Pitney Xxxxx Identity System" as amended and
updated from time to time is hereby incorporated by reference into this
Agreement Schedule D.
