1
EXHIBIT 10.5
LICENSE AGREEMENT
BETWEEN
AT&T CORP.
AND
LUCENT TECHNOLOGIES INC.
2
LICENSE AGREEMENT
Table of Contents
ARTICLE I. DEFINITIONS 2
1.1 Authorized Dealers 2
1.2 Closing Date 2
1.3 Compound Marks 2
1.4 Control Specifications 2
1.5 Corporate Identification Xxxx 2
1.6 CP 2
1.7 CP/GBCS Products 2
1.8 Existing Authorized Dealers 2
1.9 GBCS 3
1.10 License Agreement 3
1.11 Leased Products 3
1.12 Licensee 3
1.13 Licensed Marks 3
1.14 Licensor 3
1.15 Licensed Territory 3
1.16 Licensed Trade Dress 3
1.17 Maintenance Contracts 3
1.18 Xxxx 3
1.19 ME 3
1.20 NS 3
1.21 Lucent Products 4
1.22 New Authorized Dealers 4
1.23 New Lease Customers 4
1.24 New Maintenance Contract Customers 4
1.25 Phone Center Stores 4
1.26 Products 4
1.27 Telecommunications Service 4
1.28 Transition Brand 4
1.29 Transition Compound Xxxx 4
1.30 WorldWorx Marks 4
1.31 WorldWorx Products 4
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ARTICLE II. LICENSE GRANT 5
2.1 Lucent Products 5
2.2 CP/GBCS Products 5
(a) Initial Period 5
(b) Transition Period 6
(c) WorldWorx 6
2.3 Leased Products, Maintenance Contracts 6
(a) Leased Products 6
(b) Maintenance Contracts 6
(c) Disposition of Leased Products 7
(d) Extensions 7
2.4 Phone Center Stores 7
2.5 Marketing of Telecommunications Services 8
2.6 Compound Marks 8
2.7 Limitations on Grant 9
2.8 No Use in Licensee's Name 9
2.9 No Other Marks To Be Used 9
2.10 Modification of Licensed Marks and Licensed Trade Dress 9
ARTICLE III. AGREEMENT PERSONAL 9
3.1 Personal Nature of Agreement 9
3.2 Sublicensing/Assignment 10
3.3 Authorized Dealers 10
ARTICLE IV. LICENSES TO OTHERS AND OWNERSHIP 11
4.1 Exclusive Licensee 11
4.2 Retention of Rights 11
4.3 Licensee as Preferred Supplier 12
4.4 Joint Ventures of Licensee 12
ARTICLE V. LICENSED TERRITORY 13
ARTICLE VI. QUALITY CONTROL 13
6.1 General 13
6.2 Control Specifications 14
6.3 Customer Care Provisions 14
6.4 Changes to Marketing Specifications 15
6.5 Quality Control Reviews; Right of Inspection 15
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6.6 Sponsorship 15
6.7 Discontinuation 15
6.8 Refurbished Product 16
6.9 Costs 16
ARTICLE VII. REMEDIES FOR NONCOMPLIANCE WITH 16
CONTROL SPECIFICATIONS
7.1 Initial Cure Period 16
7.2 Second Cure Period 16
7.3 Final Cure Period 16
7.4 Arbitration 16
7.5 Potential Injury to Persons or Property 17
ARTICLE VIII. PROTECTION OF LICENSED SERVICE 17
MARKS AND LICENSED TRADE DRESS
8.1 Ownership and Rights 17
8.2 Similar Marks 17
8.3 Infringement 18
8.4 Compliance With Laws 18
ARTICLE IX. TERMINATION 18
9.1 Breach by Licensee 18
9.2 Termination Obligations 20
ARTICLE X. INDEMNITIES 20
ARTICLE XI. NOTICES 21
ARTICLE XII. COMPLIANCE WITH LAW 22
12.1 General 22
12.2 Governmental Licenses, Permits and Approvals 22
ARTICLE XIII. INCORPORATION OF PROVISIONS OF 22
THE SEPARATION AND DISTRIBUTION AGREEMENT
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LICENSE AGREEMENT
THIS LICENSE AGREEMENT, dated and effective as of February 1, 1996, is
by and between AT&T Corp. ("AT&T"), and Lucent Technologies Inc. ("Lucent").
Capitalized terms used herein and not otherwise defined shall have the
respective meanings assigned to them in Article I hereof or as provided in the
Separation and Distribution Agreement.
WHEREAS, the Board of Directors of AT&T has determined that it is in
the best interests of AT&T and its shareholders to separate AT&T's existing
businesses into three independent businesses;
WHEREAS, in order to effectuate the foregoing, AT&T, Lucent and XXX
Xxxxxxxxxxx have entered into a Separation and Distribution Agreement, which
provides, among other things, subject to the terms and conditions thereof, for
the separation of the Lucent Assets and the Lucent Liabilities, the IPO, the
Distribution and the execution and delivery of certain other agreements in order
to facilitate and provide for the foregoing;
WHEREAS, this License Agreement is to allow Lucent's business units to
create consumer awareness that they are the successors to AT&T's former business
units and to minimize customer confusion that might otherwise arise as a result
of the Separation and immediate loss of use of the AT&T name, marks, and trade
dress.
NOW, THEREFORE, the parties, intending to be legally bound, agree as
follows:
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ARTICLE I
DEFINITIONS
For the purpose of this License Agreement, the following terms shall have
the following meanings:
1.1 AUTHORIZED DEALERS means Existing Authorized Dealers and New Authorized
Dealers, as defined herein.
1.2 CLOSING DATE means the first time at which any shares of Lucent Common
Stock are sold pursuant to the IPO in accordance with the terms of the
Underwriting Agreement.
1.3 COMPOUND MARKS means any xxxx that consists of the xxxx AT&T immediately
followed by another xxxx, which is in use or applied for on the date of this
Agreement; the entire set of Compound Marks is set forth in Schedule A hereto.
1.4 CONTROL SPECIFICATIONS means standards of quality (including performance
parameters) applicable to the fabrication, performance, design, use, provision,
and support of a Product under the Licensed Marks or Licensed Trade Dress, as
set forth or referenced in Schedule B, and the standards applicable to the
marketing, advertising, and promotion of a Product under the Licensed Marks or
Trade Dress, as set forth or referenced in Schedules C and M.
1.5 CORPORATE IDENTIFICATION XXXX means the Licensee's house xxxx and
related trade dress used to identify and distinguish Licensee from other
persons, as identified in Schedule D hereto.
1.6 CP means the Consumer Products business unit of Licensee.
1.7 CP/GBCS PRODUCTS means any product described in Schedule E hereto which
is being manufactured or marketed by or for Licensee as of the date of this
License Agreement, and upgrades, modifications and improvements thereto which do
not fundamentally change their nature and functionality. CP/GBCS Products shall
also include maintenance (whether diagnostic, preventive, remedial, warranty or
non-warranty), support and similar services associated with CP/GBCS Products and
products functionally equivalent thereto.
1.8 EXISTING AUTHORIZED DEALERS means any distributor, dealer or other agent
of Licensee authorized as of the date of this License Agreement to market,
advertise, sell, lease, rent, service or otherwise offer a CP/GBCS Product.
Existing Authorized Dealers shall be listed on Schedule R hereto.
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1.9 GBCS means the Global Business Communications Systems business unit of
Licensee.
1.10 LICENSE AGREEMENT means this License Agreement, including all of the
Schedules, Exhibits and Appendices hereto.
1.11 LEASED PRODUCTS means any CP/GBCS Product described in Schedule F
hereto that is commercially available for lease or rental from Licensee as of
the Closing Date.
1.12 LICENSEE means Lucent, each Subsidiary of Lucent, and each other Person
that is an Affiliate of Lucent, in each case as of the Closing Date, but only
for so long as such Person is an Affiliate or Subsidiary of Lucent.
1.13 LICENSED MARKS means the marks AT&T and AT&T and globe design as
identified in Schedule G hereto (and as such marks may be modified or
supplemented as contemplated by Article II hereof), and the WorldWorx Marks
identified in Schedule H hereto (as applicable).
1.14 LICENSOR means AT&T and each other Person (other than Licensee) that is
an Affiliate of AT&T.
1.15 LICENSED TERRITORY has the meaning set forth in Article V hereof.
1.16 LICENSED TRADE DRESS means the general image or appearance of the
marketing of Products under the Licensed Marks including the colors, designs,
configurations, publication formats and the like as set forth in Schedule I
hereto, and such other trade dress as may be added thereto or substituted
therefor in accordance with this License Agreement.
1.17 MAINTENANCE CONTRACTS means agreements pursuant to which Licensee
provides repair and maintenance services (whether preventive, diagnostic,
remedial, warranty or non-warranty) in connection with CP/GBCS Products and
products functionally equivalent thereto.
1.18 XXXX means any 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, even if that source is
unknown.
1.19 ME means the Microelectronics business unit of Licensee.
1.20 NS means the Network Systems business unit of Licensee.
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1.21 LUCENT PRODUCTS means products (other than CP/GBCS Products)
manufactured or marketed by Licensee, and maintenance (whether preventive,
diagnostic, remedial, warranty or non-warranty), support and similar services
associated with Lucent Products and products functionally equivalent thereto.
1.22 NEW AUTHORIZED DEALERS means any distributor, dealer or other agent (i)
which as of the date of this License Agreement is not authorized to market,
advertise, sell, lease, rent, service or otherwise offer a CP/GBCS Product, but
which is so authorized thereafter, and (ii) which satisfies the Authorized
Dealer profile set forth in Schedule J hereto. New Authorized Dealers shall be
listed on Schedule R hereto.
1.23 NEW LEASE CUSTOMERS means customers who as of twelve (12) months after
the Closing Date are not parties to any agreement for the lease or rental of
Leased Products.
1.24 NEW MAINTENANCE CONTRACT CUSTOMERS means customers who as of twelve
(12) months after the Closing Date are not parties to any Maintenance Contract.
1.25 PHONE CENTER STORES means those retail outlets operated by CP under the
name "AT&T Phone Center Stores" as of the Closing Date.
1.26 PRODUCTS means Lucent Products and CP/GBCS Products.
1.27 TELECOMMUNICATIONS SERVICE means any service providing the transmission
of voice, data, image or other messages, by radio or by aid of wire, cable or
other like connection now known or later developed between the points of origin
and reception of such transmission or by means of any combination of the
foregoing, including telecommunications services commonly characterized as
local, toll (whether intraLATA or interLATA), long distance, and cellular
(whether mobile or fixed).
1.28 TRANSITION BRAND means the Licensed Marks and Licensed Trade Dress used
in combination with Licensee's Corporate Identification Xxxx as identified on
Schedule K hereto (and as such Transition Brand may be modified or supplemented
in accordance with this License Agreement).
1.29 TRANSITION COMPOUND XXXX means a xxxx that consists of the Transition
Brand immediately followed by a xxxx that was once a part of a Compound Xxxx;
the entire set of possible Transition Compound Marks is set forth in Schedule A
hereto.
1.30 WORLDWORX MARKS means the marks identified in Schedule H hereto.
1.31 WORLDWORX PRODUCTS means the products identified in Schedule H hereto.
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ARTICLE II
LICENSE GRANT
2.1 LUCENT PRODUCTS. (a) Subject to the terms and conditions of this License
Agreement, Licensor grants Licensee a royalty free, personal, non-transferable,
non-sublicensable, non-exclusive license to use the Licensed Marks and Licensed
Trade Dress in connection with the manufacture, marketing, promotion,
distribution and sale of Lucent Products commencing on the date of this License
Agreement and ending on the earlier of the Distribution Date or six (6) months
after the Closing Date. The license granted herein shall also include the right
to use up to the earlier of the Distribution Date or six (6) months after the
Closing Date the Licensed Marks and Licensed Trade Dress in the corporate name
of any of Licensee's Affiliates.
(b) Licensee may not affix the Licensed Marks and Licensed Trade Dress
to Lucent Products manufactured after the period described in Paragraph (a)
above; provided, however, that Lucent Products, packaging, instructions and
promotional material with the Licensed Marks and Licensed Trade Dress in
inventory on the last date of the period described in Paragraph (a) above may be
marketed, distributed, promoted and sold after that date until the inventory of
such Lucent Products is depleted, subject to other applicable terms and
conditions of this License Agreement.
2.2 CP/GBCS PRODUCTS.
(a) INITIAL PERIOD. (i) Subject to the terms and conditions of this
License Agreement, Licensor grants Licensee a royalty free, personal,
non-transferable, non-sublicensable, non-exclusive license to use the Licensed
Marks and Licensed Trade Dress in connection with the manufacture, marketing,
promotion, distribution and sale of CP/ GBCS Products commencing on the date of
this License Agreement and ending twelve (12) months after the Closing Date. The
license granted herein shall also include the right to use up to the earlier of
the Distribution Date or six (6) months after the Closing Date the Licensed
Marks and Licensed Trade Dress in the name of any Affiliate of Licensee that
manufactures, sells or offers CP/GBCS Products.
(ii) Licensee may not affix the Licensed Marks and Licensed Trade Dress
to CP/ GBCS Products manufactured more than nine (9) months after the Closing
Date; provided, however, CP/ GBCS Products, packaging, instructions and
promotional material with the Licensed Marks and Licensed Trade Dress in
inventory as of nine (9) months after the Closing Date may be marketed,
distributed, promoted and sold after that date and until the inventory of such
CP/GBCS Products is depleted, subject to other applicable terms and conditions
of this License Agreement.
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(b) TRANSITION PERIOD. (i) Subject to the terms and conditions of this
License Agreement, and to the guidelines governing use of the Transition Brand
attached as Schedule M hereto, Licensor grants Licensee a royalty free,
personal, non-transferable, non-sublicensable, non-exclusive license to use the
Transition Brand in connection with the manufacture, marketing, promotion,
distribution and sale of CP/GBCS Products commencing on the date of this License
Agreement and ending four (4) years after the Closing Date; provided, however,
that the license to use the Transition Brand in connection with wireless
handsets shall expire twelve (12) months after the Closing Date.
(ii) CP/GBCS Products, packaging, instructions and
promotional material with the Transition Brand in inventory as of four (4) years
after the Closing Date may be marketed, distributed, promoted and sold after
that date and until the inventory of such CB/GBCS Products is depleted, subject
to other applicable terms and conditions of this License Agreement.
(c) WORLDWORX. Subject to the terms and conditions of this License
Agreement, Licensor grants Licensee a royalty free, personal, non-transferable,
non-sublicensable, non-exclusive license to use and affix the Worldworx Marks in
connection with the manufacture, marketing, promotion, distribution and sale of
the Worldworx Products commencing on the date of this License Agreement and
ending forty-eight (48) months after the Closing Date. Worldworx Products,
packaging, instructions and promotional material bearing the Worldworx Marks in
inventory as of the last day of the license period set forth in this paragraph
(c) may be marketed, distributed, promoted and sold after that date until the
inventory of such Worldworx Products is depleted.
2.3 LEASED PRODUCTS, MAINTENANCE CONTRACTS. Notwithstanding the provisions
of Section 2.2 above, the following terms and conditions shall apply to Leased
Products and Maintenance Contracts:
(a) LEASED PRODUCTS. Subject to the terms and conditions of this
License Agreement, Licensor grants Licensee a royalty free, personal,
non-transferable, non-sublicensable, non-exclusive license to affix the Licensed
Marks and Licensed Trade Dress (alone or in the Transition Brand) on Leased
Products, and to use the Licensed Marks and Licensed Trade Dress (alone or in
the Transition Brand) in connection with the marketing, promotion, leasing,
rental, billing, and maintenance of Leased Products, commencing on the date of
this License Agreement and ending sixty-six (66) months after the Closing Date,
provided, however, that the license to use the Licensed Marks and Licensed Trade
Dress (alone or in the Transition Brand) in connection with any marketing
campaign or promotion targeted to New Lease Customers shall expire twelve (12)
months after the Closing Date.
(b) MAINTENANCE CONTRACTS. Subject to the terms and conditions of
this License Agreement, Licensor grants Licensee a royalty-free, personal,
non-transferable, non-
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sublicensable, non-exclusive license to use the Licensed Marks and Licensed
Trade Dress (alone or in the Transition Brand) in connection with the marketing
and promotion of and billing under Maintenance Contracts, commencing on the date
of this License Agreement and ending sixty-six (66) months after the Closing
Date, provided, however, that the license to use the Licensed Marks and Licensed
Trade Dress(alone or in the Transition Brand) in connection with any marketing
campaign or promotion directed to New Maintenance Contract Customers shall
expire twelve (12) months after the Closing Date.
(c) DISPOSITION OF LEASED PRODUCTS. Any Leased Product returned to
Licensee within the 66-month license period set forth in Paragraph (a) above
that is not re-leased or destroyed, and any Leased Product that is leased, sold,
or otherwise transferred by Licensee after the termination of the license period
set forth in Paragraph (a) above, shall have the Licensed Marks and Licensed
Trade Dress removed from the product, and from all product packaging,
instruction and warranty materials (or otherwise made nonvisible).
(d) EXTENSIONS. If Licensee is interested in licensing the
Licensed Marks and Licensed Trade Dress for Leased Products and Maintenance
Contracts beyond the 66-month license period set forth in Paragraphs (a) and (b)
above, Licensee shall notify Licensor no later than six (6) months prior to the
expiration of such period. Upon such notification, Licensor and Licensee agree
to negotiate in good faith whether to extend the license granted in this License
Agreement with respect to Leased Products and Maintenance Contracts and, if so,
the terms and conditions of such an extension, including a commercially
reasonable royalty for the use of the Licensed Marks and Licensed Trade Dress.
Notwithstanding the foregoing, neither Licensor nor Licensee shall have any
obligation to enter into such extension.
2.4 PHONE CENTER STORES. (a) In addition to the rights granted under Section
2.2 hereof, and subject to the terms and conditions of this License Agreement,
Licensor grants Licensee a royalty free, personal, non-transferable,
non-sublicensable, non-exclusive license to use the Licensed Marks and Licensed
Trade Dress (alone or in the Transition Brand) in advertising of and signage at
Phone Center Stores commencing on the date of this License Agreement and ending
eighteen (18) months after the Closing Date.
(b) The rights granted under Paragraph (a) above in connection with
advertising of and signage at Phone Center Stores shall be contingent upon
compliance by Licensee with the operating and customer service standards set
forth or referenced in Schedule N hereto.
(c) Except to the extent required by presubscription rules, other
governmental laws or regulations, or a non-terminable contract with a provider
of Telecommunications Services other than Licensor that is in effect as of the
date of this License Agreement, or as otherwise expressly set forth below,
Licensee shall not market or permit others to market Telecommunication Services
not provided by Licensor at any facility (including Phone Center
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Stores) where Licensee is using the Licensed Marks, Licensed Trade Dress or the
Transition Brand. Notwithstanding the provisions of this Paragraph or Section
2.5 hereof, Licensee may offer and sell, or permit others to offer and sell,
wireless Telecommunications Service provided by a party other than Licensor at
any Phone Center Store at which Licensor's wireless Telecommunications Service
was not available as of the date of this License Agreement, for up to six (6)
months after Licensor's wireless Telecommunications Service is made available by
Licensor on commercially reasonable terms to be offered through such Store. Any
wireless Telecommunications Service provided by a Person other than Licensor
that is offered or sold through a Phone Center Store must be clearly identified
as that of another Person.
(d) Within the period of the license granted under Paragraph (a) above,
should Licensee receive or solicit from a third party an offer to purchase or
otherwise acquire a Phone Center Store, Licensee shall notify and provide
Licensor a "Right of First Refusal" to acquire or assume the lease for such
store on the same terms offered by or quoted to the third party; provided,
however, that such Right of First Refusal shall only apply to the disposition of
Phone Center Stores on a property-by-property basis and not on a bulk or
multi-property basis.
2.5 MARKETING OF TELECOMMUNICATIONS SERVICES. Unless Licensee obtains the
express written consent of Licensor pursuant to a request delivered in
accordance with the Notice provisions of Article XI below, or unless otherwise
specifically permitted by another Section hereof, neither Licensee nor any
Authorized Dealer shall sell, provide, offer or otherwise market any
Telecommunications Service provided by any Person other than Licensor during any
period in which it is using the Licensed Marks, Licensed Trade Dress or the
Transition Brand. The violation of this Section by Licensee or an Authorized
Dealer shall be deemed a Significant Breach for the purposes of Article IX
hereof; provided, however, that nothing in this License Agreement is intended to
restrict the ability of Licensee or an Authorized Dealer, consistent with prior
practices in effect on or before the date of this License Agreement, from
serving as a bona fide agent for its customers in connection with the ordering,
scheduling and installation of Telecommunications Services provided by a Person
other than Licensor, nor shall the performance of such actions be deemed to be
the marketing or provision of Telecommunications Services.
2.6 COMPOUND MARKS. To the extent that Licensee is using a Compound Xxxx as
of the date of this License Agreement, it may continue to use the Licensed Marks
and Licensed Trade Dress in the Compound Xxxx during the Initial Periods
hereunder applicable to the Product with respect to which such Compound Xxxx is
used. During the Transition Period hereunder (if applicable), Licensee shall, if
it desires to continue to use a Compound Xxxx, use the Transition Brand in lieu
of the Licensed Marks and Licensed Trade Dress to create a Transition Compound
Xxxx. At the end of the Transition Period hereunder, Licensee shall cease all
use of the Licensed Marks and Licensed Trade Dress in the Transition Compound
Xxxx, subject to the inventory depletion rules relating to the Transition
Period.
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2.7 LIMITATIONS ON GRANT. The Licensed Marks and Licensed Trade Dress may
not be used by Licensee in connection with any product or service except as
expressly set forth in this License Agreement.
2.8 NO USE IN LICENSEE'S NAME. Except as set forth in Section 4.4(b),
Licensee shall cease using the Licensed Marks and Licensed Trade Dress in
Licensee's corporate, partnership, doing business as, or fictitious name on or
before the earlier of the Distribution Date or six (6) months after the Closing
Date, provided, however, that Licensee may use the Licensed Marks (a) in the
name of its Phone Center Stores for the period set forth in Section 2.4(a)
above, and (b) to do business under the name "AT&T Lease Services" and "AT&T
Consumer Lease Services" in connection with Leased Products for the period set
forth in Section 2.3(a) above.
2.9 NO OTHER MARKS TO BE USED. Licensee shall not use any other name, xxxx,
indication of origin or trade dress of Licensor in connection with the
manufacture, marketing, promotion, distribution, sale or lease of any product or
service without Licensor's express written consent.
2.10 MODIFICATION OF LICENSED MARKS AND LICENSED TRADE DRESS. If Licensor
modifies or replaces the Licensed Marks or Licensed Trade Dress as used in any
substantial portion of Licensor's business, and if Licensor requests Licensee to
adopt and use the modified or replaced Licensed Marks and Licensed Trade Dress,
Licensee shall within sixty (60) days adopt and use such modified or replaced
Licensed Marks or Licensed Trade Dress and such modified or replaced Licensed
Marks or Licensed Trade Dress shall be considered the Licensed Marks and
Licensed Trade Dress as defined in this License Agreement; provided, however,
that Licensee may exhaust its inventory bearing the original Licensed Marks and
Licensed Trade Dress.
ARTICLE III
AGREEMENT PERSONAL
3.1 PERSONAL NATURE OF AGREEMENT. In recognition of the goodwill contributed
to the Licensed Marks and Licensed Trade Dress by Licensee prior to the
Separation, and the unique nature of Licensee (including without limitation, the
quality of the products and services that it provides, its reputation, and its
goodwill among its customers), the parties agree that the rights, obligations
and benefits of this License Agreement shall be personal to Licensee, and
Licensor shall not be required to accept performance from, or render performance
to an entity other than Licensee. Pursuant to 11 U.S.C. Section 365 (c) (1) (A)
(as it may be amended from time to time, and including any successor to such
provision), in the event of the bankruptcy of Licensee, this License Agreement
may not be assigned or assumed by Licensee, or any successor, and Licensor shall
be excused from rendering performance to, or accepting performance from Licensee
or any successor.
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3.2 SUBLICENSING/ASSIGNMENT. Except as expressly provided herein with
respect to Authorized Dealers, Licensee may not sublicense or assign the rights
and obligations of this License Agreement without Licensor's express written
consent.
3.3 AUTHORIZED DEALERS. (a) Subject to the terms and conditions of this
License Agreement, including all applicable Control Specifications, Authorized
Dealers may use the Licensed Marks and Licensed Trade Dress in accordance with
the grant set forth in Section 2.2. Subject to the terms and conditions of this
License Agreement, including all applicable Control Specifications, Authorized
Dealers may use the Licensed Marks and Licensed Trade Dress (alone or in the
Transition Brand) in connection with the marketing, leasing, rental, billing and
maintenance of Leased Products in accordance with the grant set forth in Section
2.3(a). Licensee shall take all appropriate steps to restrain any Authorized
Dealer from violating the terms and conditions of this License Agreement,
including but not limited to termination of Licensee's agreement with any such
Authorized Dealer, or commencement of legal action against any such Authorized
Dealer.
(b) Notwithstanding the provisions of Paragraph (a) above, absent the
express written consent of Licensor in response to notice provided by Licensee
in accordance with the provisions of Article XI hereof, no Authorized Dealer may
use the Licensed Marks, Licensed Trade Dress, or Transition Brand if such
Authorized Dealer sells, offers, provides or otherwise markets
Telecommunications Services provided by any Person other than Licensor, except
that:
(i) An Existing Authorized Dealer listed on Schedule R of this License
Agreement may continue to use the Licensed Marks, Licensed Trade Dress or
Transition Brand in connection with the grants set forth in Sections 2.2, 2.3
and 3.3, notwithstanding the fact that such Existing Authorized Dealer sells,
offers, provides or otherwise markets Telecommunications Services provided by a
Person other than Licensor so long as such Existing Authorized Dealer does not
materially alter the nature of its arrangement (in place as of the Closing Date)
in selling or marketing such Telecommunications Services.
Licensee undertakes to provide Licensor within ten (10) business
days of the execution of this License Agreement a list of Existing Authorized
Dealers to appear on Schedule R. Licensor shall have twenty (20) business days
to approve or disapprove of the dealers that are to appear on Schedule R.
Schedule R may be further amended by mutual agreement of Licensor and Licensee
until the Closing Date.
(ii) If an Existing Authorized Dealer is not approved by Licensor:
((a)) where Licensee's contract with the Existing Authorized
Dealer is terminable and the Existing Authorized Dealer's
use of the Licensed Marks, Licensed Trade Dress and
Transition Brand is not
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a contractual commitment, then Licensee shall
terminate the Existing Authorized Dealer's rights to use the
Licensed Marks, Licensed Trade Dress and Transition Brand
within twelve (12) months from the Closing Date but shall
terminate such rights immediately if the Dealer materially
alters its relationship with a Person that provides or
markets Telecommunications Services other than Licensor; or
((b)) where Licensee's contract with an Existing Authorized Dealer
is not terminable or the Existing Authorized Dealer's use of
the Licensed Marks, Licensed Trade Dress or Transition Brand
is a contractual commitment, then the Existing Authorized
Dealer may continue to use the Licensed Marks, Licensed
Trade Dress and Transition Brand until the expiration of
such contractual right.
3.3 (c) Licensee may submit a written request, at any time (in accordance
with the notice provisions of Article XI below) for Licensor's consent to add an
Existing Authorized Dealer to Schedule R that was inadvertently omitted from
Schedule R or to add a New Authorized Dealer to Schedule R. Licensor shall have
twenty (20) days to approve or disapprove of the proposed Authorized Dealer or
New Authorized Dealer; provided, however, Licensor shall have ten (10) days to
approve or disapprove New Authorized Dealers who will be employed as service
agents of Licensee solely in connection with Leased Products. A New Authorized
Dealer shall satisfy the guidelines attached as Schedule J hereto, shall not
materially alter the nature of its arrangement, if any, in place as of the date
of approval in selling or marketing Telecommunications Services provided by a
Person other than Licensor, and is subject to the terms and conditions of this
License Agreement.
ARTICLE IV
LICENSES TO OTHERS AND OWNERSHIP
4.1 EXCLUSIVE LICENSEE. Licensor agrees that it will not license the
Licensed Marks and Licensed Trade Dress to third parties (other than Affiliates
of Licensor) for use in connection with products or services which compete with
CP/GBCS Products until twelve (12) months after the Closing Date.
4.2 RETENTION OF RIGHTS. Except as otherwise expressly provided in this
License Agreement, Licensor shall retain all rights in and to the Licensed Marks
and the Licensed Trade Dress, including without limitation:
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(a) All rights of ownership in and to the Licensed Marks and Licensed
Trade Dress;
(b) The right to use (including the right of Licensor's Affiliates to
use) the Licensed Marks and Licensed Trade Dress, 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
Products; and
(c) The right to license others to use the Licensed Marks and Trade
Dress, subject to Section 4.1 above.
4.3 LICENSEE AS PREFERRED SUPPLIER. Commencing on the date of this License
Agreement and ending on September 30, 1999, Licensor agrees not to solicit or
consider a bid from a third party to supply to Licensor for sale under the
Licensed Marks and Licensed Trade Dress any product or service that competes
with a CP/GBCS Product, without first soliciting and considering a reasonably
prompt bid from Licensee. This Section shall not be construed to require
Licensor to purchase any Product from Licensee (which purchases shall be at the
sole discretion of Licensor), or to disclose the identity of or terms of any bid
by any third party, and shall not confer any rights upon Licensee other than
those expressly set forth herein.
4.4 JOINT VENTURES OF LICENSEE. (a) The parties recognize that Licensee is a
party to certain joint ventures which have heretofore been authorized by written
agreement to use the Licensed Marks and Licensed Trade Dress. Licensee
nevertheless agrees that (i) any use of the Licensed Marks in the corporate name
of any joint venture should not continue beyond the earlier of the Distribution
Date or (6) months after the Closing Date, (ii) any use of the Licensed Marks
and Licensed Trade Dress by such joint ventures in the manufacturing, sale,
provision, distribution or marketing of any product or service should not
continue beyond twelve (12) months after the Closing Date, and (iii) any use of
the Transition Brand by such joint ventures in the manufacturing, sale,
provision, distribution or marketing of any product or service should not
continue beyond forty-eight (48) months from the Closing Date. Accordingly,
except as provided in paragraph (b) below, to the extent permitted by Licensee's
existing agreement with a joint venture or joint venture partner, Licensee shall
withdraw any authority granted to the joint venture to use the Licensed Marks,
Licensed Trade Dress and Transition Brand beyond the periods set forth above in
this Section. In those cases where Licensee's existing agreement with a joint
venture does not permit Licensee to withdraw such authority, Licensee shall use
commercially reasonable efforts to cause any joint venture to which it is a
party to cease using the Licensed Marks, Licensed Trade Dress and Transition
Brand beyond such periods.
(b) Notwithstanding the provisions of (a) (i) above, the parties agree
that the China joint ventures listed in Schedule O may continue to use the
Licensed Marks in their corporate names up to January 1, 1999.
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(c) Nothing in this Section 4.4 is intended to expand the scope of the
grant contained in Article II of this License Agreement. Accordingly, absent a
prior written agreement in effect as of the date of this License Agreement, use
of the Licensed Marks and Licensed Trade Dress by Affiliates of Licensee
(including such joint ventures that are Affiliates of Licensee) shall be
governed by the grants in Section 2.1 for Lucent Products, and by Sections 2.2
and 3.3 (if applicable) for CP/GBCS Products, subject to the other terms and
conditions of this License Agreement.
ARTICLE V
LICENSED TERRITORY
5.1 The Licensed Territory for the licenses granted in Article II of this
License Agreement shall include the world, but such licenses do not authorize
the marketing, offering or sale of CP/GBCS Products under the Licensed Marks,
Licensed Trade Dress or Transition Brand in any country in which no CP/GBCS
Products were being marketed, offered or sold as of the date of this License
Agreement, except:
(a) If a contract with an Existing Authorized Dealer grants such
Existing Authorized Dealer rights to commence marketing a CP/GBCS Product in a
new country, then that new country shall be included in the Licensed Territory
with respect to that particular CP/GBCS Product; and
(b) Licensee may use the Licensed Marks, Licensed Trade Dress and
Transition Brand subject to the terms and conditions of this License Agreement,
in countries where as of the date hereof it had developed bona-fide, good faith
plans to commence marketing a CP/GBCS Product, which countries are identified in
Schedule Q hereto. Schedule Q shall in all events be completed to the mutual
satisfaction of Licensor and Licensee no later than February 15, 1996.
ARTICLE VI
QUALITY CONTROL
6.1 GENERAL. Licensee acknowledges that the Products covered by this
License Agreement must continue to be of sufficiently high quality as to provide
maximum enhancement to and protection of the Licensed Marks and Licensed Trade
Dress and the good will they symbolize. Licensee further acknowledges that the
maintenance of high quality Products is of the essence of this License Agreement
and that it will utilize only marketing materials which do not disparage or
place in disrepute Licensor, its businesses or its business reputation, or
adversely affect or detract from Licensor's good will.
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6.2 CONTROL SPECIFICATIONS. (a) Licensee shall use the Licensed Marks,
Licensed Trade Dress and Transition Brand only in connection with the
manufacture, marketing, distribution, promotion, sale and lease of CP/GBCS
Products that meet the Control Specifications. The Control Specifications shall
consist of Technical Performance, Customer Service, and Customer Satisfaction
Specifications attached or referenced in Schedule B hereto or provided to and
accepted by Licensor pursuant to Paragraph (c) below, and the Marketing
Specifications referenced in Schedules C and M hereto. Control Specifications
shall be treated as proprietary information and shall be subject to the
confidentiality provisions of Article VIII of the Separation and Distribution
Agreement.
(b) Licensee has made good faith efforts to complete the content of
Schedule B pertaining to Control Specifications. To the extent that Schedule B
is incomplete, Licensee shall use good faith efforts to complete its content by
the Closing Date. Schedule B shall in all events be completed to the mutual
satisfaction of Licensor and Licensee no later than the Distribution Date.
(c) Should Licensee desire to offer, sell or otherwise market under the
Licensed Marks or Licensed Trade Dress (alone or in the Transition Brand) a new
or modified version of a CP/GBCS Product, Licensee shall provide at least sixty
(60) days prior written notice to Licensor. Such notice shall include proposed
control specifications (if existing Control Specifications are inapplicable or
superseded), and shall also be sufficient to apprise Licensor of the differences
between the proposed product and the closest existing CP/GBCS Product, including
additional or different features and functions. Licensor shall then have thirty
(30) days to notify Licensee of objections to any use of the Licensed Marks or
Licensed Trade Dress with the proposed product. Licensee shall not offer, sell
or otherwise market such proposed product under the Licensed Marks or Licensed
Trade Dress (alone or in the Transition Brand) if Licensor reasonably objects
within such thirty (30) day period.
(d) Licensee shall not offer any CP/GBCS Product under the Licensed
Marks and Licensed Trade Dress (alone or in the Transition Brand) unless it
meets each of the relevant Control Specifications. Licensee shall not provide to
any third party any product which does not meet the Control Specifications
without first obliterating the Licensed Marks.
6.3 CUSTOMER CARE PROVISIONS. The parties recognize that customer
complaints, inquiries, requests, orders, returns and similar communications
regarding the products or services of one of them may be directed by customers
or otherwise transmitted to the other. The parties agree jointly to develop by
the Closing Date and comply with written policies and procedures for handling
such communications, in order to ensure that customer communications are
addressed expeditiously regardless of the initial recipient, and in a manner
that makes the Separation transparent as to customers.
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6.4 CHANGES TO MARKETING SPECIFICATIONS. The Marketing Specifications
referenced in Schedules C and M hereto may be reasonably amended, modified or
supplemented from time to time by Licensor upon giving Licensee sixty (60) days'
prior written notice. Following any such amendment, modification or supplement
to the Marketing Specifications, Licensee and all Authorized Dealers shall
comply with such amendments, modifications or supplements.
6.5 QUALITY CONTROL REVIEWS; RIGHT OF INSPECTION. Licensor shall have the
right to designate from time to time, one or more Quality Control
Representatives, who shall have the right from time to time but at least once
per calendar quarter, upon fifteen (15) days' notice to Licensee, to conduct
during regular business hours an inspection, test, survey and review of
Licensee's facilities and the facilities of Licensee's Authorized Dealers, if
any, and otherwise to determine compliance with the applicable Control
Specifications. At Licensor's request, Licensee agrees to furnish or make
available for inspection to the Quality Control Representatives: (i) samples of
any CP/GBCS Product that is marketed or provided under the Licensed Marks,
Licensed Trade Dress or the Transition Brand for inspections, surveys, tests and
reviews to assure conformance with the applicable Control Specifications; (ii)
performance data in its control relating to the conformance of CP/GBCS Products
with the applicable Control Specifications; and (iii) samples of marketing
materials, product packaging, instruction and warranty materials that use the
Licensed Marks, Licensed Trade Dress or Transition Brand. Any such data provided
to Licensor shall be treated as proprietary information subject to the
confidentiality provisions of Article VIII of the Separation and Distribution
Agreement. Licensor may independently conduct continuous customer satisfaction
surveys to determine if Licensee and its Authorized Dealers are meeting the
Control Specifications. Licensee shall cooperate with Licensor fully in the
distribution of such surveys. Licensor shall, at the request of Licensee,
provide Licensee with copies of customer surveys used by Licensor to determine
if Licensee is meeting the Control Specifications. If Licensee learns that it or
any of its Authorized Dealers is not complying with any Control Specifications,
it shall notify Licensor and the provisions of Article VII (and of Section
3.3(a) in the case of Authorized Dealers) shall apply to such noncompliance.
6.6 SPONSORSHIP. Licensee shall not use the Licensed Marks or Licensed Trade
Dress (alone or in the Transition Brand) to sponsor, endorse, or claim
affiliation with any event, meeting, charitable endeavor or any other
undertaking without obtaining the express written permission of Licensor. Any
breach of this provision shall be deemed a Significant Breach by Licensee.
6.7 DISCONTINUATION. If Licensee discontinues the retail provision of a
CP/GBCS Product that has been sold under the Licensed Marks, Licensed Trade
Dress or Transition Brand, Licensee shall comply with an "End of Life" plan that
satisfies the requirements of Schedule P hereto. Licensee shall consult with
Licensor prior to finalizing any End of Life Plan required by this Section, and
submit an advance copy of such plan to Licensor.
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6.8 REFURBISHED PRODUCT. Licensee shall not sell, convey, assign its
interest in or otherwise transfer to any refurbisher or reconditioner any
Product bearing the Licensed Marks, Licensed Trade Dress or Transition Brand,
without first obliterating the Licensed Marks, Licensed Trade Dress or
Transition Brand and any other reference to Licensor from all products,
packaging, instruction and warranty materials provided to such refurbisher or
reconditioner.
6.9 COSTS. All reasonable costs associated with monitoring compliance with
and enforcing these quality control provisions, and with administering this
License Agreement, shall be borne by Licensee. Licensor shall provide to
Licensee a quarterly invoice itemizing with reasonable specificity the costs
incurred during the prior quarter, which shall be due and payable by Licensee
within thirty (30) days of receipt.
ARTICLE VII
REMEDIES FOR NONCOMPLIANCE WITH CONTROL SPECIFICATIONS
7.1 INITIAL CURE PERIOD. If Licensor becomes aware that Licensee or any
Authorized Dealer is not complying with any Control Specifications, Licensor
shall notify Licensee in writing, setting forth, in reasonable detail, a written
description of the noncompliance and any suggestions for curing such
noncompliance. Licensee shall then have twenty (20) days after receipt of such
notice (the "Initial Cure Period") to correct or submit to Licensor a written
plan to correct such noncompliance.
7.2 SECOND CURE PERIOD. If noncompliance with the Control Specifications
continues beyond the Initial Cure Period, Licensee and Licensor shall each
promptly appoint a representative to negotiate in good faith actions that may be
necessary to correct such noncompliance. The parties shall have twenty-five (25)
days following the expiration of the Initial Cure Period (the "Second Cure
Period") to agree on corrective actions.
7.3 FINAL CURE PERIOD. If the noncompliance with the Technical Performance,
Customer Service, Customer Satisfaction or Marketing Control Specifications
continues beyond the Second Cure Period, Licensee shall either: (i) cease
offering CP/GBCS Products under the Licensed Marks and the Licensed Trade Dress
until it can comply with the Control Specifications; or (ii) be deemed to be in
Significant Breach of this License Agreement.
7.4 ARBITRATION. In the event any dispute regarding compliance with Control
Specifications continues beyond the Initial and Second Cure Periods described
above, then either Licensor or Licensee may deliver to the other party an
Arbitration Demand Notice or pursue any other rights or remedies expressly
contemplated hereby, notwithstanding its failure to deliver an Escalation
Notice. Any such arbitration shall be conducted in accordance with Article IX of
the Separation and Distribution Agreement.
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7.5 POTENTIAL INJURY TO PERSONS OR PROPERTY. Notwithstanding the foregoing,
in the event that Licensor reasonably determines that any noncompliance creates
a material threat of personal injury or injury to property of any third party,
upon written notice thereof by Licensor to Licensee, Licensee shall either cease
offering CP/GBCS Products under the Licensed Marks, Licensed Trade Dress and the
Transition Brand until it can comply with the Control Specifications, or be
deemed to be in Significant Breach of this License Agreement.
ARTICLE VIII
PROTECTION OF LICENSED SERVICE MARKS AND LICENSED TRADE DRESS
8.1 OWNERSHIP AND RIGHTS. Licensee admits the validity of, and agrees not to
challenge the ownership or validity of, the Licensed Marks and the Licensed
Trade Dress. Licensee shall not disparage, dilute or adversely affect the
validity of the Licensed Marks or the Licensed Trade Dress. Licensee agrees that
any and all goodwill and other rights that may be acquired by the use of the
Licensed Marks and the Licensed Trade Dress by Licensee shall inure to the sole
benefit of Licensor. Licensee will not grant or attempt to grant a security
interest in the Licensed Marks or the Licensed Trade Dress, or this License
Agreement, 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 Licensor. Licensee agrees to execute all documents
reasonably requested by Licensor to effect further registration of, maintenance
and renewal of the Licensed Service Marks, and recordal of the license
relationship between Licensor and Licensee and recordal of Licensee as a
Registered User. For purposes of this License Agreement, Licensee shall be
considered a "related company" under the U.S. Trademark Act, 15 U.S.C. Section
1051 et seq.
8.2 SIMILAR MARKS. Licensee further agrees not to register in any
country any Xxxx resembling or confusingly similar to the Licensed Marks or the
Licensed Trade Dress, and not to use the Licensed Marks or the Licensed Trade
Dress or any part thereof as part of its corporate name (except as otherwise
expressly permitted hereunder), nor use any Xxxx confusingly similar, deceptive
or misleading with respect to the Licensed Marks or the Licensed Trade Dress.
Licensee further agrees not to use or register in any country any Xxxx similar
to the Licensed Marks or the Licensed Trade Dress, or which dilutes the Licensed
Marks or the Licensed Trade Dress. If any application for registration is, or
has been, filed in any country by Licensee which relates to any Xxxx which, in
the sole opinion of Licensor, is confusingly similar, deceptive or misleading
with respect to the Licensed Marks or the Licensed Trade Dress, or which dilutes
the Licensed Marks or the Licensed Trade Dress, Licensee shall, at Licensor's
sole discretion, immediately abandon any such application or registration or
assign it to Licensor. Licensee shall attempt to register or own only its
portion of the Transition Brand. If Licensee uses any Xxxx which, in the sole
opinion of Licensor, is confusingly similar, deceptive or misleading with
respect to the Licensed Marks or the Licensed Trade Dress, or which dilutes the
Licensed Marks or the Licensed Trade Dress, or if Licensee uses the Licensed
Marks or the Licensed Trade Dress
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in connection with any product, or in connection with any service not
specifically authorized hereunder, Licensee shall, immediately upon receiving a
written request from Licensor, permanently cease such use.
8.3 INFRINGEMENT. In the event that Licensee learns of any infringement or
threatened infringement of the Licensed Marks or the Licensed Trade Dress, or
any unfair competition, passing-off or dilution with respect to the Licensed
Marks or the Licensed Trade Dress, or any third party alleges or claims that
either the Licensed Marks or the Licensed Trade Dress are liable to cause
deception or confusion to the public, or is liable to dilute or infringe any
right of such third party, Licensee shall immediately notify Licensor or its
authorized representative giving particulars thereof, and Licensee shall provide
necessary information and assistance to Licensor or its authorized
representatives in the event that Licensor decides that proceedings should be
commenced or defended. Licensor shall have exclusive control of any litigation,
opposition, cancellation or related legal proceedings. The decision whether to
bring, defend, maintain or settle any such proceedings shall be at the exclusive
option and expense of Licensor, and all recoveries shall belong exclusively to
Licensor. Licensee will not initiate any such litigation, opposition,
cancellation or related legal proceedings in its own name, but, at Licensor's
request, agrees to be joined as a party in any action taken by Licensor to
enforce its rights in the Licensed Marks, the Licensed Trade Dress, or the
Transition Brand. Nothing in this License Agreement shall require or be deemed
to require Licensor to enforce the Licensed Marks or the Licensed Trade Dress
against others.
8.4 COMPLIANCE WITH LAWS. In the performance of this License Agreement,
Licensee shall comply with all applicable laws and regulations, including those
laws and regulations particularly pertaining to the proper use and designation
of Marks in the Licensed Territory. Should Licensee be or become aware of any
applicable laws or regulations which are inconsistent with the provisions of
this License Agreement, Licensee shall promptly notify Licensor of such
inconsistency. In such event, Licensor may, at its option, either waive the
performance of such inconsistent provisions, or negotiate with Licensee to make
changes in such provisions to comply with applicable laws and regulations.
ARTICLE IX
TERMINATION
9.1 BREACH BY LICENSEE. Licensor may terminate this License Agreement at any
time in the event of a Significant Breach by Licensee. A "Significant Breach by
Licensee" shall mean any event expressly specified in this License Agreement to
be a "Significant Breach," and any of the following (after exhaustion of any
cure periods set forth in Article VII hereof to the extent such cure periods are
applicable):
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(a) Licensee's or any Authorized Dealer's use of any Xxxx
(including the Licensed Marks, Licensed Trade Dress or Transition Brand)
contrary to the provisions of this License Agreement, provided, however, that
use of any Xxxx contrary to this License Agreement by a particular Authorized
Dealer shall be grounds for termination only as to that particular Authorized
Dealer; further provided that a pattern of violations of any provision of this
License Agreement, including Section 2.5, by a number of Licensee's Authorized
Dealers shall be grounds for termination as to either all Authorized Dealers, or
Licensee and all Authorized Dealers, at the option of Licensor;
(b) Licensee's or any Authorized Dealer's use of a Licensed Xxxx
or Licensed Trade Dress in connection with any marketing materials, or the
offering, marketing or provision of any CP/GBCS Product, which fail to meet the
standards set forth in the Control Specifications; provided, however, that (i)
the failure of a particular product to comply with the Control Specifications
shall be grounds for termination only as to that product; further provided that
continued use of the Licensed Marks or Licensed Trade Dress by Licensee in
connection with such product shall be grounds for termination of the License
Agreement as to all Products, and (ii) except as otherwise provided in Paragraph
(a) above, the failure of an Authorized Dealer to satisfy the standards set
forth in the Control Specifications shall be grounds for termination only as to
that particular Authorized Dealer;
(c) Licensee's refusing or neglecting a request by Licensor for
access to Licensee's facilities or marketing materials;
(d) Licensee's licensing, assigning, transferring, disposing of or
relinquishing (or purporting to license, assign, transfer, dispose of or
relinquish) any of the rights granted in this License Agreement to others;
(e) Licensee's failure to take all appropriate steps to restrain
any Authorized Dealer from violating the terms and conditions of this License
Agreement;
(f) The occurrence of a Change of Control of Licensee, or of an
Affiliate of Licensee; provided, however, that a Change of Control of an
Affiliate of Licensee shall be grounds for termination of this License Agreement
only as to that Affiliate and Persons controlled by that Affiliate;
(g) Licensee's receipt of any license, right or permission to
market, or the marketing by Licensee of, any product or service under any name,
xxxx, indication of origin or trade dress of any Person that competes with
Licensor in the provision of Telecommunications Services; provided, however,
that Licensee may contract manufacture products for any Person (including any
Person that competes with Licensor in the provision of Telecommunications
Services) which do not bear the Licensed Marks and Licensed Trade Dress, so long
as such Person makes no reference in any promotional, marketing information or
other material to
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Licensor or Licensee's relationship to Licensor. Such contract manufacturing
shall not constitute a significant or other breach of this License Agreement;
(h) The bankruptcy or insolvency of Licensee or an Affiliate of
Licensee; provided, however, that the bankruptcy or insolvency of an Affiliate
of Licensee shall be grounds for termination of this License Agreement only as
to that Affiliate;
(i) Licensee's failure to obtain Licensor's permission to sponsor
any undertaking as provided in Section 6.6 of this License Agreement;
(j) Licensee's failure to remove the Licensed Trade Marks and
Licensed Trade Dress as provided in Sections 2.3(c) or 6.8 of this License
Agreement;
(k) Licensee's failure to develop, provide to Licensor an advance
copy of or comply with an End of Life Plan, as required by Section 6.7 of this
License Agreement.
9.2 TERMINATION OBLIGATIONS. In the event Licensor terminates this License
Agreement pursuant to this Article:
(a) Licensee and all Authorized Dealers (or such of the foregoing
as to which this License Agreement is terminated) shall immediately cease all
use of the Licensed Marks and Licensed Trade Dress upon notice of termination,
except that Licensor, in its sole discretion, may require Licensee to continue
use of the Licensed Marks and Licensed Trade Dress for a period of up to two (2)
months as directed by Licensor; provided, however, that nothing herein shall be
construed to prohibit Licensee from making truthful statements of fact regarding
its past affiliation with Licensor, so long as such statements are not likely to
cause confusion, mistakes or deception.
(b) Licensee and all Authorized Dealers (or such of the foregoing
as to which this License Agreement is terminated) shall have no further rights
under this License Agreement.
ARTICLE X
INDEMNITIES
10.1 Except as provided in Section 10.2 below, Licensee shall defend,
indemnify and hold Licensor, its Affiliates and authorized representatives, and
each other AT&T Indemnitee, harmless against all claims, suits, proceedings,
costs, damages and judgments incurred, claimed or sustained by third parties,
whether for personal injury or otherwise, arising from or in connection with
Licensee's or any Authorized Dealer's marketing, sale, lease or use of Products
bearing the Licensed Marks or Licensed Trade Dress (alone or in the Transition
Brand) after the date of this License Agreement, and shall indemnify Licensor
and each AT&T Indemnitee for all
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damages, losses, costs and expenses (including reasonable attorneys' fees) due
to such use, sale, lease or marketing and also for any improper or unauthorized
use of the Licensed Marks or Licensed Trade Dress by Licensee or its Authorized
Dealers.
10.2 Licensee shall notify Licensor, in writing, in the event that any third
party claims, by suit, proceeding, action or otherwise, that Licensee's use of
the Licensed Marks and Licensed Trade Dress (alone or in the Transition Brand)
in connection with Products as provided in this License Agreement constitutes or
amounts to a trademark, service xxxx or trade dress infringement, unfair
competition or dilution, and, at Licensor's option, Licensee may be directed to
tender the defense of such claims to Licensor.
ARTICLE XI
NOTICES
All notices or other communications under this License Agreement shall
be in writing and shall be deemed to be duly given when (a) delivered in person,
or (b) sent by telecopy, telegram or telex, or (c) deposited in the United
States mail or private express mail, postage prepaid, addressed as follows:
(i) If to Licensee:
Xxxxxxx X. Xxxxxx, Esq.
Senior Vice President and General Counsel
Lucent Technologies Inc.
000 Xxxxx Xxxxxx
Xxxxxxxxxx, Xxx Xxxxxx 00000
Tel: 000-000-0000
Fax: 000-000-0000
with a copy to:
Xxxxxxxx X. Xxxx, Esq.
Trademark and Copyright Counsel
Lucent Technologies Inc.
000 Xxxxxxxxxx Xxxx
Xxxxxxx Xxxxx, Xxx Xxxxxx 00000
Tel: 000-000-0000
Fax: 000-000-0000
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(ii) If to Licensor:
AT&T Corp.
000 Xxxxx Xxxxx Xxxxxx
Xxxxxxx Xxxxx, Xxx Xxxxxx 00000
Attn: General Counsel
with a copy to:
Xxxxx X. Xxxxxxxx, Esq.
Trademark and Copyright Counsel
AT&T Corp.
000 Xxxxxxxxxx Xxxx
Xxxxxxx Xxxxx, Xxx Xxxxxx 00000
Tel: 000-000-0000
Fax: 000-000-0000
Either party may, by notice to the other party, change the address to which such
notices are to be given.
ARTICLE XII
COMPLIANCE WITH LAW
12.1 GENERAL. Nothing in this License Agreement shall be construed to
prevent Licensor or Licensee from complying fully with all applicable laws and
regulations, whether now or hereafter in effect.
12.2 GOVERNMENTAL LICENSES, PERMITS AND APPROVALS. Licensee, at its expense,
shall be responsible for obtaining and maintaining all licenses, permits and
approvals which are required by all Governmental Authorities with respect to
this License Agreement, and to comply with any requirements of such Governmental
Authorities for the registration or recording of this License Agreement.
Licensee shall furnish to Licensor written evidence from such Governmental
Authorities of any such licenses, permits, clearances, authorizations,
approvals, registration or recording.
ARTICLE XIII
INCORPORATION OF PROVISIONS OF THE SEPARATION AND DISTRIBUTION
AGREEMENT
13.1 The following provisions of the Separation and Distribution Agreement
are hereby incorporated herein by reference, and unless otherwise expressly
specified herein, such
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provisions shall apply as if they are fully set forth herein (references in
paragraphs (a) through (d) below to "Article" shall mean Articles of the
Separation and Distribution Agreement):
(a) Article V (relating to mutual releases and indemnification,
including procedures);
(b) Article VIII (relating to preservation and exchange of information,
and protection of proprietary information);
(c) Article IX (relating to arbitration and dispute resolution); and
(d) Article XII (miscellaneous provisions, except as otherwise
specified herein).
IN WITNESS WHEREOF, the parties have caused this License Agreement
to be executed by their duly authorized representatives.
AT&T CORP. LUCENT TECHNOLOGIES INC.
BY: /s/ BY: /s/
------------------------------- --------------------------------
NAME: NAME:
TITLE: TITLE:
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