EXHIBIT 10.10
SOFTWARE ASSIGNMENT AND LICENSE AGREEMENT
THIS SOFTWARE ASSIGNMENT AND LICENSE AGREEMENT (the "Agreement"), dated as
of April 3, 2000, is entered into between AirTouch Communcations, Inc., a
Delaware corporation (collectively with its Affiliates "Assignor"), and Cellco
Partnership, a Delaware general partnership ("Assignee").
W I T N E S S E T H:
WHEREAS, Assignee desires to obtain title to certain software owned by
Assignor subject to the terms, conditions, rights, restrictions and obligations
of this Agreement; and
WHEREAS, Assignor desires to receive a grant back to certain license rights
to the software assigned to Assignee hereunder, subject to the terms,
conditions, rights, restrictions and obligations of this Agreement.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties, intending to be
legally bound hereby, agree as follows:
1. Definitions.
A. Affiliates. As used in this Agreement, a person, association,
partnership, corporation or joint-stock company, trust, or other business
entity, however organized, is an "Affiliate" of the person or entity which
directly or indirectly, through one or more intermediaries, controls, is
controlled by, or is under common control with, such person. Control shall be
defined as (i) ownership of 20% or more of the voting power of all classes of
voting stock of an entity; (ii) ownership of 20% or more of the beneficial
interests in income and capital of an entity other than a corporation; or (iii)
management control over an entity.
B. Licensed Software. As used in this Agreement, the "Licensed Software"
shall consist of all versions and releases of the items listed on attached
Schedule A, in both source code and object code formats, together with all
associated user and other documentation, tools and utilities, as such items
exist on the date hereof.
2. Grant.
A. Assignment. Assignor hereby irrevocably assigns and transfers to
Assignee all worldwide rights, title and interest in and to the Licensed
Software and any associated copyright registrations and registration
applications, and other associated intellectual property rights (but expressly
excluding any patent rights assigned to Assignee pursuant to that Intellectual
Property Assignment between Assignor and Assignee dated as of the date hereof),
together with all rights of action accrued, accruing and to accrue under and by
virtue hereof, including the rights to xxx
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or otherwise recover for past infringements and to receive all damages,
payments, costs and fees associated therewith.
B. Further Assurances. Upon the request and at the expense of Assignee,
Assignor shall execute and deliver any and all instruments and documents and
take such other actions as may be necessary or reasonably requested by Assignee
to document the aforesaid assignment and transfer or to enable Assignee to
secure, register, maintain, enforce and otherwise fully protect its rights in
and to the Licensed Software.
C. License. Assignee hereby grants to Assignor, subject to the obligation
of confidentiality under Section 6.A below, a perpetual, worldwide, irrevocable,
royalty-free, non-exclusive, transferable license to sell, use, copy,
distribute, market, perform, display, modify, create derivative works of,
incorporate into products and otherwise fully exploit the Licensed Software,
without any restriction or accounting to Assignee. Without limiting the
generality of the foregoing, this license includes the right to grant
sublicenses to allow others to sell, use, copy, distribute, market, perform,
display, modify, create derivative works or, incorporate into products and
otherwise fully exploit the Licensed Software, without any restriction or
accounting to Assignor.
3. Representations and Warranties.
A. Assignor hereby represents and warrants to Assignee as follows:
1. That it has the full and exclusive right and power to enter into
and perform according to the terms of this Agreement; and
2. That, as of the date hereof, there are no legal actions against
Assignor alleging, and that Assignor is not otherwise aware, that the
Licensed Software or use thereof for its intended purposes infringes or
misappropriate the copyright, trade secret or other intellectual property
rights of any other person.
B. Assignee hereby represents and warrants to Assignor as follows:
1. That unless expressly stated herein or agreed otherwise by the
parties, it specifically acknowledges that Assignor is not obligated to
provide support, education, maintenance, or the like to Assignee; and
2. That it has the full and exclusive right and power to enter into
and perform according to the terms of this Agreement.
C. Subject to the Alliance Agreement (hereinafter defined) and except as
otherwise stated in this Agreement, nothing in this Agreement shall be construed
as:
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1. A warranty or representation that anything provided, made, used,
sold or otherwise disposed of under the grant or license contained in this
Agreement is or will be free from infringement of patents of third parties;
or
2. Granting by implication, estoppel, or otherwise any licenses,
warranties (implied in fact or law) or rights other than those expressly
granted herein, or creating any obligation other than those expressly
created hereunder; or
3. A representation or agreement by either party to assume any
responsibility whatsoever with respect to use, sale or installation of any
products or services of the other party; or
4. A representation or agreement by either party to furnish the
other party with any training, maintenance, support or other assistance
respecting the Licensed Software.
D. SUBJECT TO THE ALLIANCE AGREEMENT (HEREINAFTER DEFINED) AND EXCEPT AS
OTHERWISE STATED IN THIS AGREEMENT, THE LICENSED SOFTWARE IS ASSIGNED TO
ASSIGNEE AND LICENSED TO ASSIGNOR "AS IS", WITHOUT WARRANTIES OF ANY KIND. EACH
OF ASSIGNOR AND ASSIGNEE HEREBY DISCLAIMS ALL IMPLIED WARRANTIES, INCLUDING,
WITHOUT LIMITATION, THE IMPLIED WARRANTIES OF NON-INFRINGEMENT, MERCHANTABILITY
AND FITNESS FOR A PARTICULAR PURPOSE.
4. Filing, Prosecution and Maintenance. Assignee shall have the right, but not
the obligation to file, prosecute and maintain copyright registrations and
registration applications and other intellectual property protection for the
Licensed Software. Upon the request and at the expense of Assignee, Assignor
shall execute and deliver any and all instruments and documents and take such
other actions as may be necessary or reasonably requested by Assignee in
connection therewith.
5. Infringements by Third Parties.
A. Notice of Infringements. In the event that either party becomes aware
of any potential or actual infringement of any copyright for the Licensed
Software, registered or unregistered, or of any potential or actual
misappropriation of a trade secret relating to the Licensed Software or its
source code (each, an "Infringement"), such party shall promptly provide the
other with written notice thereof.
B. Action by Assignee. Assignee shall have the right, but not the
obligation, to challenge and attempt to eliminate each Infringement. Assignor,
at Assignee's expense, shall reasonably cooperate with Assignee in
investigating, prosecuting and settling any infringement action instituted by
Assignee against any person or entity engaging in an Infringement. Assignor, at
its own expense, shall have the right to participate with counsel of its own
choice in the investigation, prosecution and/or settlement of any such
infringement action instituted by
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Assignee. Assignor shall have the right to approve the settlement of any such
infringement action, or any other agreement between Assignee and such person or
entity concerning the Infringement, to the extent such settlement or other
agreement is inconsistent with the license rights granted to Assignor under this
Agreement.
C. Action by Assignor. Assignor shall have the right, but not the
obligation, to institute, prosecute and settle an infringement action against
any person or entity who engages in an Infringement if, and only if, (i) within
ninety (90) days after Assignee becomes aware or is notified of the
Infringement, Assignee has not instituted an infringement action against such
person or entity or caused or taken significant steps to cause such person or
entity to cease and desist from the Infringement; or (ii) at any time after
Assignee has instituted an infringement action against such person or entity,
Assignee ceases to diligently prosecute such infringement action other than by
reason of settlement of the action in accordance with the provisions of Section
5.B above. Assignee, at its own expense, shall reasonably cooperate with
Assignor in investigating, prosecuting and settling any infringement action
instituted by Assignor in accordance with the foregoing sentence. In addition,
Assignee, at its own expense, shall have the right to participate with counsel
of its own choice in the investigation, prosecution and/or settlement of any
such infringement action instituted by Assignor. In the event that Assignor is
unable to institute, prosecute or settle the infringement action solely in its
own name, Assignee will join such action voluntarily or will execute such
instruments and other documents as are necessary for Assignor to initiate,
prosecute and settle such action as permitted hereunder, all at Assignee's own
expense. Assignee shall have the right to approve the settlement of any such
infringement action, or any other agreement between Assignor and such person or
entity concerning the Infringement, such approval not to be unreasonably
withheld or delayed.
D. Sharing of Recoveries. Any recovery obtained by either Assignee or
Assignor in connection with or as a result of any infringement action
contemplated under this Section 5, whether by settlement or otherwise, shall be
shared in order as follows: (i) the party that primarily initiated and
prosecuted the action shall recoup all of its costs and expenses incurred in
connection with the action; (ii) the other party shall then, to the extent
possible, recover its costs and expenses incurred in connection with the action;
and (iii) unless otherwise agreed on by the parties in writing, the amount of
any recovery remaining shall then be divided between the parties in accordance
with the relative out-of-pocket costs and expenses they incur in initiating,
investigating, prosecuting and/or settling the action.
6. Confidentiality.
A. Obligation of Confidentiality. Each party agrees to take reasonable
steps to prevent disclosure or dissemination of the Licensed Software to any
person or entity other than its and its Affiliates' employees, agents and
contractors who have a need for access to the Licensed Software in order to
assist such party and its Affiliates in performing their obligations or
exercising their rights hereunder. As used herein, "reasonable steps" means
steps that a party takes to protect its own, similarly confidential or
proprietary software, which steps shall in no event be less than a reasonable
standard of care. The obligation of confidentiality under this Section 6.A shall
not apply to portions of the Licensed Software that: (i) are known or generally
available to
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the public as of the date hereof; or (ii) following the date hereof, become
known or generally available to the public through no unlawful act or omission,
or breach of this Agreement, by the disclosing party, its Affiliates, or any of
their respective employees, agents or contractors. In the event either party is
required to disclose the Licensed Software, or any portion thereof, pursuant to
an applicable law, rule, regulation, government requirement or court order, the
disclosing party shall advise the other party of such required disclosure
promptly upon learning thereof in order to afford such other party a reasonable
opportunity to contest, limit and/or assist the disclosing party in crafting
such disclosure. Should either party desire to publish or otherwise make
publicly available any portion of the Licensed Software, the parties shall
mutually discuss and agree in good faith on the publication or other public
disclosure to be made, if any. No such publication or other public disclosure
shall be made without the mutual agreement of the parties, such agreement not to
be unreasonably withheld or delayed.
B. Equitable Relief. In the event of any breach or threatened breach by
either party, its Affiliates, or any of their respective employees, agents or
contractors, of any provision of Section 6.A, the other party shall be entitled
to seek injunctive or other equitable relief restraining the breach or
threatened breach, without the necessity of proving actual damages or posting
any bond or other security. Such relief shall be in addition to and not in lieu
of any other remedies that may be available to either party hereunder, at law or
in equity.
7. Amendment. This Agreement may be amended, modified or supplemented only by
a written agreement signed by the parties hereto.
8. Governing Law. Except for copyright matters governed by the Federal laws of
the United States of America, this Agreement shall be governed by and construed
in accordance with, the laws of the State of Delaware, without reference to
choice of law principles, including matters of construction, validity and
performance.
9. Notices. All notices and other communications under this Agreement shall be
in writing and shall be deemed to have been duly given when delivered
personally, delivery charges prepaid, or three (3) business days after being
sent by registered or certified mail (return receipt requested), postage
prepaid, or one (1) business day after being sent by a nationally recognized
express courier service, postage or delivery charges prepaid, to the parties at
their respective addresses stated below. Notices may also be given by prepaid
telegram or facsimile and shall be effective on the date transmitted if
confirmed within twenty-four (24) hours thereafter by a signed original sent in
the manner provided in the preceding sentence. Any party may change its address
for notice and the address to which copies must be sent by giving notice of the
new address to the other parties in accordance with this Section 9, except that
any notice of such change of address shall not be effective unless and until
received.
If to Assignor to: AirTouch Communications, Inc.
Legal Department
0 Xxxxxxxxxx Xxxxxx, 00xx Xxxxx
Xxx Xxxxxxxxx, XX 00000
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With a copy to: Pillsbury Madison & Sutro LLP
X.X. Xxx 0000
Xxx Xxxxxxxxx, XX 00000-0000
Attention: Xxxxxx X. Tune
If to Assignee to: Cellco Partnership
000 Xxxxxxxxxx Xxxxxx Xxxx
Xxxxxxxxxx, XX 00000
Attention: General Counsel
10. Headings; References. The section and paragraph headings contained in this
Agreement are for reference purposes only and shall not affect in any way the
meaning or interpretation of this Agreement.
11. Counterparts. This Agreement may be executed in one or more counterparts
and each counterpart shall be deemed to be an original, but all of which shall
constitute one and the same original.
12. Parties in Interest; Assignment; Successor. This Agreement shall be binding
upon and inure to the benefit of the parties hereto and their respective
successors and assigns. This Agreement shall be freely assignable and
transferable by each of Assignor and Assignee. Except as expressly stated
herein, nothing in this Agreement, express or implied, is intended to confer
upon any other person any rights or remedies under or by reason of this
Agreement.
13. Severability; Enforcement. The invalidity of any portion hereof shall not
affect the validity, force or effect of the remaining portions hereof. If it is
ever held that any restriction hereunder is too broad to permit enforcement of
such restriction to its fullest extent, each party agrees that a court of
competent jurisdiction may enforce such restriction to the maximum extent
permitted by law, and each party hereby consents and agrees that such scope may
be judicially modified accordingly in any proceeding brought to enforce such
restriction.
14. Waiver. The failure of either party at any time to require performance by
the other party of any provision hereof shall in no way affect the full right to
require such performance at any time thereafter. Nor shall the waiver by either
party of a breach of any provision hereof be a waiver of any succeeding breach
of the same or any other such provisions or be a waiver of the provision itself.
15. Alliance Agreement; Entire Agreement. This Agreement is subject to the
provision of the U.S. Wireless Alliance Agreement, dated as of September 21,
1999 (the "Alliance Agreement") between Vodafone AirTouch Plc and Xxxx Atlantic
Corporation. Neither the making nor the acceptance of this Agreement, nor any
provision hereof, shall enlarge, restrict or otherwise modify the provisions of
the Alliance Agreement or the rights and obligations of the parties thereunder,
or constitute a waiver or release by any of the parties to the Alliance
Agreement of any liabilities, duties or obligations imposed upon any party
thereunder, including, without limitation, the representations and warranties,
indemnities and other provisions that, pursuant to
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the Alliance Agreement, survive the Closing (as defined therein) thereof. This
Agreement, together with the Alliance Agreement and all other agreements entered
into by Vodafone AirTouch Plc and Xxxx Atlantic Corporation in connection
therewith, contain the entire agreement of the parties hereto with respect to
the subject matter hereof and thereof and supersede all prior understandings and
agreements of the parties with respect thereto.
16. No Agency. Nothing herein shall be construed as creating any agency,
partnership or other form of joint enterprise between Licensor and Licensee.
17. Dispute Resolution. Resolution of any and all disputes arising under or in
connection with this Agreement, whether based on contract, tort, statute or
otherwise, including, but not limited to, disputes over arbitrability and
disputes in connection with claims by third parties, shall be exclusively
governed by and settled in accordance with the provisions of the Alliance
Agreement.
IN WITNESS WHEREOF, the parties hereto have duly executed and delivered
this Agreement as of the Effective Date.
ASSIGNOR:
AirTouch Communications,Inc.
By: /s/ Xxxx Xxxxx
-------------------------------
Name: Xxxx Xxxxx
Title: Chief Executive Officer
ASSIGNEE:
Cellco Partnership
By: NYNEX PCS Inc., its
managing general partner
By: /s/ S. Xxxx Xxxxxx
-------------------------------
Name: S. Xxxx Xxxxxx
Title:
