EXHIBIT 2.4
SERVICE XXXX LICENSE AGREEMENT
SERVICE XXXX LICENSE AGREEMENT dated as of _________________, by and
between AT&T CORP., a New York corporation ("Licensor"), and KIRI INC., a
Delaware corporation ("Licensee").
WHEREAS, Licensor has, for many years, used the service marks AT&T and
AT&T with a fanciful globe design, as identified in Schedule A attached hereto
(the "Licensed Master Service Marks"), all in connection with telecommunications
services; and
WHEREAS, Licensee wishes to use the Licensed Master Service Marks, and
the Licensed Trade Dress in the Licensed Territory as defined herein in
connection with the marketing and provision of certain services; and
WHEREAS, Licensee also wishes to use the service xxxx "It's all within
your reach" and certain foreign equivalents thereof that are owned by Licensor
and may wish to use certain other service marks which are or will be owned by
Licensor in connection with the Licensed Services ; and
WHEREAS, Licensor is willing to license and allow Licensee to use the
Licensed Marks under the terms and conditions set forth in this Agreement.
NOW, THEREFORE, the parties hereby agree as follows:
1. DEFINITIONS.
"AFFILIATE": Of a party shall mean an entity which is under common
control with, controls, or is controlled by, such party.
"BANKRUPTCY": With respect to a Person shall mean the filing by such
Person of a voluntary petition, or by a third party with respect to such Person,
requesting liquidation, dissolution, reorganization, suspension, rearrangement
or re-adjustment, in any form, of
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its debts under the laws of the United States (or corresponding provisions of
future laws), the laws of the Licensed Territory, or any other bankruptcy or
insolvency law, or such Person's consenting to or acquiescing in any such
petition, the making by such Person of any assignment for the benefit of its
creditors or the admission by such Person in writing of its inability to pay its
debts as they mature, an application for the appointment of a receiver for the
assets of such Person, or an involuntary petition seeking liquidation,
dissolution, reorganization, suspension, rearrangement or readjustment of its
debts or similar relief under any bankruptcy or insolvency law.
"CLAIM": As defined in Section 20.1 hereof.
"CLAIMANT": As defined in Section 20.2 hereof.
"COMMUNICATIONS DIRECTOR": The individual described in Section 8.5.
"CORPORATE BRAND": As defined in Section 5.3(d) hereof.
"CORPORATE BRAND EFFORTS": As defined in Section 5.3(d) hereof.
"EFFECTIVE DATE": As defined in Section 23.12 hereof.
"EXCLUSIVE SERVICES": As defined in Schedule F hereto.
"FINAL CURE PERIOD": As defined in Section 9 hereof.
"GRAPHIC STANDARDS MANUAL": As defined in Schedule D hereto.
"GROSS SERVICE REVENUE": Revenues received by Licensee and its
sublicensees for the Licensed Services, before any deductions or offsets.
"INCLUDING": The terms "including" and "such as" are illustrative and
not limitative.
"INITIAL CURE PERIOD": As defined in Section 9 hereof.
"LICENSED ANCILLARY SERVICE MARKS": Service marks that may be developed
for each of the Licensed Services by Licensor or by Licensee that become
Licensed Ancillary
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Service Marks pursuant to Section 2.2, and any additional marks that are added
to this Agreement pursuant to Section 4.3 and which shall be owned by Licensor
and licensed to Licensee pursuant to this Agreement (and as such service marks
may be modified or supplemented as contemplated by Section 4.2 or Section 4.3),
as set forth in Schedule C1, as it may be amended from time to time.
Registrations and applications covering the Licensed Ancillary Service Marks in
the Licensed Territory include those set forth in Schedule C2 of this Agreement.
The listing of goods or services in the specification of any of these
registrations or applications which are outside the scope of services licensed
under this Agreement shall not be construed as inclusion of such goods or
services in the license granted by this Agreement. It is understood that the
only services licensed under this Agreement are as expressly set forth in this
Agreement.
"LICENSED MARKS": Collectively, the Licensed Master Service Marks,
Licensed Ancillary Service Marks, and Licensed Trade Dress.
"LICENSED MASTER SERVICE MARKS": The service marks AT&T and AT&T with a
fanciful globe design as identified in Schedule A (and as such service marks may
be modified or supplemented as contemplated by Section 4.2 or Section 4.3).
Registrations and applications covering the Licensed Master Service Marks in the
Licensed Territory are set forth in Schedule B of this Agreement, as it may be
amended from time to time. The listing of goods or services in the specification
of any of these registrations or applications which are outside the scope of
services licensed under this Agreement shall not be construed as inclusion of
such goods or services in the license granted by this Agreement. It is
understood that the only services licensed under this Agreement are as expressly
set forth in this Agreement.
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"LICENSED SERVICES": The services described in Schedule F attached
hereto.
"LICENSED TERRITORY": Antigua and Barbuda, Argentina, Bahamas,
Barbados, Bolivia, Brazil, Chile, Colombia, Dominica, Dominican Republic,
Ecuador, Grenada, Guyana, Haiti, Jamaica, Panama, Paraguay, Peru, Saint Lucia,
Saint Xxxxxxx and the Grenadines, Suriname, St. Kitts and Nevis, Trinidad and
Tobago and Uruguay.
"LICENSED TRADE DRESS": The general image, appearance or dress of the
marketing of services performed under the Licensed Master Service Marks and the
Licensed Ancillary Service Marks consisting of colors, designs, configurations,
publication formats, lettering and the like as set forth in Schedule D attached
hereto, and such other trade dress and get-up as may be added thereto or
substituted therefor in accordance with this Agreement.
"LICENSEE": As defined in the first paragraph hereof.
"LICENSEE BRAND EFFORTS": Marketing communications activities developed
in support of specific Licensee products and services, such as advertising,
direct mail and promotions for specific Licensed Services or rates, or for any
activity not specified in this Agreement.
"LICENSOR": As defined in the first paragraph hereof.
"MANAGED NETWORK SERVICES" means the provision of (a) service to a
customer consisting solely of the provisioning and maintenance of the logical
and physical elements of the customer's wide area communications network, and,
to the extent relating to a customer's wide area communications network,
directly related planning, design, installation, maintenance and ongoing life
cycle support functions, and (b) equipment on the customer's premises at the
interface between a wide area communications network and the remainder of the
customer's networking environment insofar as the equipment so provided
facilitates (i) the maintenance of the customer's wide area communication
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services, (ii) the recording of performance data with respect to the customer's
wide area communications services, (iii) the provisioning of new wide area
communications services to the customer or changes in the parameters of the wide
area communications services provided to the customer, or (iv) the integration
of multiple wide area communications services, but excluding in the case of
clause (a) or (b) any such service or equipment that materially extends services
beyond the interface described above further into the customer's non-wide area
communications network.
"XXXX": Any name, xxxxx, xxxx, trademark, service xxxx, trade dress,
trade name, business name or other indicia of origin.
"MARKETING MATERIALS": Any and all materials, whether written, audio,
visual or in any other medium, used by Licensee to market, advertise or
otherwise offer or provide any Licensed Service under the Licensed Marks.
"MARKETING SPECIFICATIONS": Licensor's standards and guidelines
relating to the permitted use, depiction and graphic display of the Licensed
Marks that are contained in Schedule E hereto, and those standards and
guidelines relating to such use, depiction and graphic display that Licensor
shall provide to Licensee from time to time.
"MATERIAL": As defined in Section 21 hereof.
"MERGER AGREEMENT": The Agreement and Plan of Merger among AT&T Corp.,
Kiri Inc., Frantis, Inc. and FirstCom Corporation, dated as of November 1, 1999.
"MINIMUM GUARANTEE": As defined in Section 5.1(b) hereof.
"MONITORING SERVICES": As defined in Section 5.3(a) hereof.
"NEW YORK COURTS": As defined in Section 19 hereof.
"NONEXCLUSIVE SERVICES": As defined in Schedule F hereto.
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"PAYMENT PERIOD": Each period of six (6) full calendar months or
portion thereof during the term of this Agreement, commencing on the first day
of the first month after the Effective Date.
"PAYMENTS": As defined in Section 22.1 hereof.
"PERSON": Any individual, partnership, limited partnership, joint
venture, syndicate, sole proprietorship, company or corporation with or without
share capital, unincorporated association, trust, trustee, executor,
administrator or other legal personal representative, regulatory body or agency,
government or governmental agency, authority or entity however designed or
constituted.
"PROPRIETARY INFORMATION": Any information that is so designated by the
party disclosing it or deemed to be such under this Agreement.
"QUALITY CONTROL REPRESENTATIVES": Representatives of Licensor
appointed in accordance with Section 8 hereof.
"REGISTERED USER APPLICATION": An application by the parties to the
appropriate Regulatory Authority in the Licensed Territory where an owner of a
Xxxx (i) licenses a licensee to use the registered Xxxx, under conditions in
which the nature and quality of the products and/or services offered under the
Xxxx are required to be subject to quality control by the owner, in accordance
with local law and practice for acceptable trademark licensing to ensure the
validity and enforceability of the Xxxx licensed and (ii) allows the licensee to
be recorded by that administrative agency as a permitted user of the Licensed
Marks.
"REGULATORY APPROVAL": Any governmental or regulatory approval, consent
or authorization or waiver required to be obtained from or any filing required
to be made with
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or notice required to be given to any governmental or Regulatory Authority,
commission, tribunal, ministry, official or agency.
"REGULATORY AUTHORITY": Any applicable regulatory, administrative or
governmental entity, authority, commission, tribunal, official or agency,
including without limitation the Export Licensing Office of the U.S. Department
of Commerce.
"REQUEST": As defined in Section 20.2 hereof.
"RESPONDENT": As defined in Section 20.2 hereof.
"SECOND CURE PERIOD": As defined in Section 9.2 hereof.
"SERVICE SPECIFICATIONS": The standards of quality relating to
Marketing Specifications, technical performance, customer service, and customer
satisfaction, including technical network performance, marketing, design, and
use of Marketing Materials, advertising and promotion that will be set forth in
Schedule E to this Agreement (and as they may be amended, modified or
supplemented from time to time in accordance with this Agreement).
"SIGNIFICANT BREACH BY LICENSEE": As defined in Section 12 hereof.
"SUBSIDIARY": With respect to a party, any Person in which the party
directly owns more than 50% of the voting rights.
"SUCCESSOR": With respect to any party, any successor, monitor,
coordinator, transferee or assignee, including without limitation any receiver,
debtor in possession, trustee, conservator or similar Person with respect to
such party or such party's assets.
"TECHNICAL INFORMATION": Information provided by either party under
this Agreement, whether Proprietary Information or otherwise.
2. SCOPE OF LICENSE
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2.1 GRANT OF LICENSE.
(a) Subject to the terms and conditions of this Agreement, Licensor
hereby grants to Licensee a non-exclusive, non-transferable, non-sublicensable
(except as provided herein) license to use the Licensed Marks solely in
connection with the marketing, advertising, promotion and provision of the
Licensed Services in the Licensed Territory. Licensee may use the Licensed Marks
in marketing, advertising and promotion outside the Licensed Territory so long
as such marketing, advertising and promotion relates to the provision of
Licensed Services in the Licensed Territory. The foregoing notwithstanding, the
rights granted herein do not include the right to use the Licensed Marks in
connection with the marketing, advertising, promotion or provision of any
services through the global venture between Licensor and British
Telecommunications plc, which shall be covered by separate agreements with such
global venture.
Licensor and its other Affiliates retain all rights to use the Licensed
Marks in the Licensed Territory. The Licensed Marks may not be used by Licensee
in connection with any service except as expressly set forth in this Agreement.
Licensee shall not use the Licensed Marks, or any other Xxxx of Licensor, or any
confusingly similar Marks in connection with any service or product not within
the scope of this Agreement without Licensor's express written consent.
Licensee may sublicense the rights granted in this Section 2.1(a) to
its Subsidiaries in connection with their operations in the Licensed Territory,
provided that:
(i) such Subsidiaries meet and continue to meet the criteria
set forth in Schedule G of this Agreement;
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(ii) such Subsidiaries enter a written agreement with Licensee
in which such Subsidiaries agree to assume all of the same obligations
as Licensee (except for the obligation to make payments pursuant to
Section 5.1, as such payments will be made by Licensee) and which is
otherwise consistent with this Agreement; and
(iii) Licensee notifies Licensor within ten (10) days each
time a sublicense is granted and furnishes Licensor with a copy of the
relevant sublicense agreement.
(b) Subject to the terms and conditions of this Agreement and provided
that at least half of the Licensed Services offered by Licensee (namely, those
grossing the highest revenue) are in full compliance with the Service
Specifications furnished by Licensor, Licensee shall have a non-exclusive,
non-sublicensable right (except as otherwise provided herein) to use "AT&T" as
part of the corporate name and trade name set forth in Schedule H of this
Agreement for the remainder of the term of this Agreement. By way of example, if
Licensee offers six (6) Licensed Services, the three (3) Licensed Services
grossing the highest revenue for Licensee would have to be compliant with the
Service Specifications in order to use "AT&T" as part of the corporate name and
trade name. The foregoing notwithstanding, if all of the Licensed Services
contemplated by this Agreement will be provided through Subsidiaries of the
Licensee and not by the Licensee itself, then Licensee may, subject to the terms
and conditions of this Agreement, use "AT&T" as part of the corporate and trade
name set forth in Schedule H for the entire term of this Agreement. In the event
that Licensee wishes to have one or more of its Subsidiaries which has been
granted a sublicense to use the Licensed Marks pursuant to Section 2.1(a) use
"AT&T" as part of its corporate and trade name, Licensee may request Licensor's
written approval to sublicense such use, and Licensee shall not unreasonably
withhold such written approval,
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provided that such Subsidiaries demonstrate to Licensor's satisfaction that at
least half of the Licensed Services (namely, those grossing the highest
revenues) offered by such Subsidiaries are in full compliance with the
applicable Service Specifications and provided that such use is otherwise
subject to the terms and conditions and conditions of this Agreement.
2.2 USE OF LICENSED MASTER SERVICE MARKS AND DEVELOPMENT AND
USE OF LICENSED ANCILLARY SERVICE MARKS.
(a) Subject to the terms and conditions of this Agreement, the Licensed
Marks and Licensed Trade Dress shall be used exclusively in connection with all
Licensed Services.
(b) Licensee may use ancillary service marks owned by Licensor with
Licensor's express written consent for one or more service plan names or feature
names. Licensee may develop and use with Licensor's prior written approval
ancillary service marks with respect to one or more service plan names or
feature names, which approval will not be unreasonably withheld. Such ancillary
service marks developed by Licensee and approved by Licensor shall become
Licensed Ancillary Service Marks. Licensee shall assign to Licensor all rights
in and to any such ancillary service marks developed by Licensee that shall
become Licensed Ancillary Service Marks, including all rights in any application
to register or registration of the Licensed Ancillary Service Marks. Upon the
termination of this Agreement, including termination under any renewal and any
transition period provided under Section 12.3, Licensor shall assign to
Licensee, without further consideration, all of its rights, title and interest
in and to such Licensed Ancillary Service Marks developed by Licensee, including
the goodwill attached thereto, in the Licensed Territory. With the
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exception of ancillary service marks developed by Licensee and assigned to
Licensor as provided above, Licensor shall be and remain the owner of all
Licensed Ancillary Service Marks, and any foreign language equivalents thereof,
that are not developed by Licensee.
3. AGREEMENT PERSONAL. In recognition of the unique nature of the
relationship between Licensor and Licensee, the parties agree that the rights,
obligations and benefits of this Agreement shall be personal to Licensee and its
authorized sublicensees, and, Licensor shall not be required to accept
performance from or render performance to an entity other than Licensee and its
authorized sublicensees. In the event of the Bankruptcy of the Licensee or its
sublicensees, this Agreement and any sublicense granted pursuant to this
Agreement may not be assigned or assumed by the Licensee, its sublicensees, or
any Successor, and may be terminated by Licensor pursuant to Section 12.2(c)
hereof, and the Licensor shall be excused from rendering performance to or
accepting performance from Licensee, its sublicensees or any Successor.
4. OTHER MARKS
4.1 NO OTHER XXXX TO BE USED Licensee shall not use any other Xxxx or
create by use, adoption or practice any alternate Xxxx or ancillary Xxxx in
connection with the Exclusive Services, without Licensor's express written
consent. In the marketing of the Licensed Services, any use or display by
Licensee of its corporate, business, trade name, or trading style shall adhere
to the Marketing Specifications of the Service Specifications or shall be with
Licensor's express written consent. So long as Licensee is not providing a
Nonexclusive Service in a particular country in the Licensed Territory using the
Licensed Marks, Licensee may, after consultation with Licensor, use Marks that
are not Licensed Marks on such Nonexclusive Service in such country, provided
that Licensee agrees to
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conduct reasonable searches to determine the availability of such Marks prior to
commencing use. In the event that Licensee commences providing a Nonexclusive
Service using the Licensed Marks in a particular country in the Licensed
Territory, Licensee shall immediately cease providing such Nonexclusive Service
using other Marks in such country unless Licensor consents to the continued use
of such other Marks.
4.2 MODIFICATION OF LICENSED SERVICE MARKS. Modifications to or
replacements of the Licensed Ancillary Service Marks may be initiated by
Licensee, with the concurrence of Licensor as provided in Section 2.2(b), as to
any modification or replacement of the Licensed Ancillary Service Marks as they
are used by Licensee with respect to the Licensed Services.
If Licensor modifies or replaces any of the Licensed Master Service
Marks, Licensed Ancillary Service Marks, or the Licensed Trade Dress as used by
Licensor, Licensee shall agree with Licensor on a program to cease, over a
reasonable period of time, not to exceed one hundred-twenty (120) days, use of
the previous Licensed Xxxx(s) and to introduce and adopt the modified or
replacement Licensed Xxxx(s), at Licensee's cost, but without undue expense to
Licensee or disruption to Licensee's business or marketing programs, and
Licensor shall reimburse Licensee from the Brand Fund Fee one-half of such
reasonable costs incurred by Licensee. In either case, such modified or replaced
Licensed Master Service Xxxx(s), Licensed Ancillary Service Xxxx(s), or the
Licensed Trade Dress shall be considered the Licensed Xxxx(s) contemplated by
this Agreement.
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If Licensor modifies a Licensed Ancillary Service Xxxx for certain uses
outside the Licensed Territory but does not terminate all usage of the
unmodified version, Licensee may choose to adopt the modified version but is not
obliged to do so.
4.3 USE OF ADDITIONAL MARKS AT LICENSOR'S REQUEST. Licensor may, from
time to time, in consultation with Licensee, request Licensee to adopt and use
in addition to the Licensed Master Service Marks, Licensed Ancillary Service
Marks and Licensed Trade Dress, any Xxxx or Marks used or to be used by
Licensor, including any Marks owned by a third party that Licensor has the right
to use and sublicense, in connection with the marketing and provision of
Licensed Services. Such additional Xxxx or Marks shall be licensed hereunder on
the same terms as the Licensed Marks. All costs associated with adopting and
using such additional Xxxx or Marks shall be borne by Licensor, and shall be
paid out of the Brand Fund Fees.
5. ANNUAL PAYMENTS.
5.1 BRAND FUND FEE. In consideration of the license granted in this
Agreement and for other good and valuable consideration including Licensor brand
building activities in the Licensed Territory, during the term of this Agreement
with respect to each Payment Period, Licensee shall pay Licensor a Brand Fund
Fee, as provided in Section 5.3, which shall be the greater of:
(a)(i) in Years 1 and 2 of this Agreement, four percent (4%)
of Gross Service Revenues from the Licensed Services;
(ii) in Year 3 of this Agreement, three and one-quarter
percent (3.25%) of Gross Service Revenues from Licensed
Services;
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(iii) in Years 4 and 5, and for each year during the renewal
term, two and one-half percent (2.5%) of Gross Service
Revenues from Licensed Services; and
(b) two million five hundred thousand dollars ($2,500,000)
(the "Minimum Guarantee").
5.2 ACCOUNTING. With respect to each Payment Period as defined herein,
Licensee shall furnish to Licensor a statement, in form reasonably acceptable to
Licensor, certified by a responsible officer of Licensee, showing all Gross
Service Revenues during such Payment Period, and the Brand Fund Fee as provided
in Section 5.1. payable thereon. During the term of this Agreement, such
statement shall be furnished to Licensor not later than forty-five (45) days
after the end of each Payment Period.
5.3 PAYMENT. With respect to each Payment Period as defined herein,
Licensee shall, irrespective of its own business and accounting method, pay
Licensor or Licensor's designee the Brand Fund Fee as provided in Section 5.1,
forty-five (45) days after the end of each Payment Period. The Brand Fund Fee
will be paid in U.S. currency. Licensee agrees that all of the Brand Fund Fees
received for each Payment Period will be designated and spent by Licensor, with
active participation of Licensee's CEO, on the following activities in support
of Licensor's brand strategy and to ensure proper positioning of the Licensee:
(a) the monitoring of the brand, including the development and
implementation of the Service Specifications set forth in Schedule E
and the requirements set forth in Schedule D of this Agreement,
customer satisfaction surveys, market research, and the management of
corporate identity ("MONITORING
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SERVICES"). Except as provided in the last sentence of this Section
5.3(a), no more than three million dollars ($3,000,000) of the Brand
Fund Fees shall be used each year of this Agreement for Monitoring
Services. Monitoring Services shall be subject to the following
conditions: (i) payments for Monitoring Services shall only be made to
Persons that are not Affiliates of Licensee or Licensor, (ii)
Monitoring Services shall be obtained on a cost effective basis using a
reasonably competitive process to the extent practicable and (iii)
Monitoring Services shall be implemented through the Communications
Director and his/her team. Following consultation between Licensor and
Licensee's CEO, Brand Fund Fees in excess of $3,000,000 per year may be
designated and spent by Licensor for Monitoring Services, upon the
submission of reasonable supporting documentation and subject to
compliance with the conditions set forth above in the immediately
preceding sentence.
(b) the manpower, including salary and benefits, required to
implement the responsibilities of the Communications Director and
his/her team of five (5) country managers across all of Licensee's
communications, provided that such country managers shall be paid at
competitive rates giving effect to the business conditions in each
country and shall devote, in a manner consistent with the terms of this
Agreement, all of their efforts to support Licensee's business, except
that Licensor shall have the right, with the approval of Licensee's
CEO, which shall not be unreasonably withheld, to use such persons from
time to time to support other Licensor activities in the Latin American
region;
(c) any additional manpower, including salary and benefits,
based on the needs of Licensor and Licensee's business and with the
agreement of Licensee's
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CEO, required to implement the responsibilities of the Communications
Director and his/her team;
(d) following consultation with Licensee's CEO, the
implementation of activities in support of the Licensed Master Service
Marks ("the Corporate Brand") and the position of the RV, as follows:
corporate events, media placement, creativity/production; brand agency
costs, sponsorships/events, and media relations ("Corporate Brand
Efforts") and
(e) other items specified in this Agreement.
The foregoing obligation shall not apply to Brand Fund Fees received
for the last Payment Period of the renewal term (unless the parties enter a new
service xxxx license agreement with regard to the Licensed Marks), and shall
immediately cease if this Agreement terminates for any other reason.
5.4 AUDIT OF LICENSEE'S RECORDS. Licensee and any sublicensees shall
keep accurate books and records of all Gross Service Revenues, payments and
Brand Fund Fees, together with such other data as is necessary and material to
determine accurately the amounts payable hereunder. Licensor and Licensor's
designee shall be entitled to inspect, during normal business hours, the books
and records of Licensee and any sublicensees to ensure the proper reporting of
Gross Service Revenues, payments and Brand Fund Fees and Licensee and any
sublicensee's compliance with the terms and conditions of this Agreement. If
such inspection discloses no deficit or a cumulative deficit over the term of
this Agreement through the last Payment Period ending before the date of the
inspection of less than five percent (5%) from the statements provided under
Section 5.2, the cost of such inspection shall be borne by Licensor. If any such
cumulative deficit
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is five percent (5%) or greater, the cost of such inspection shall be borne by
Licensee or the appropriate sublicensee. Any payments due under this Section
shall be made in accordance with Section 22 hereof.
5.5 CURE OR TERMINATION. If Licensee is in default of any payment or
fee due hereunder, Licensee shall have thirty (30) days after receipt of written
notice of such default to it by Licensor to cure said default, failing which
this Agreement shall be subject to termination by Licensor exercisable thirty
(30) days after delivery of written notice to Licensee. If Licensee is in
default two (2) or more times in any two (2) year period, the Licensor shall
have the right to terminate this Agreement immediately by delivery of written
notice to Licensee by Licensor.
6. BRAND SUPPORT FUNCTIONS. Upon mutual agreement, Licensor and
Licensee may enter into a separate agreement, whereby Licensee may procure from
Licensor and Licensor would provide to Licensee certain marketing, promotion and
sales support functions in connection with the Licensed Services.
7. RETENTION OF RIGHTS. All existing goodwill in the Licensed Marks
inures to the sole benefit of the Licensor. Licensee's use of the Licensed Marks
and any and all goodwill that derives from such use, shall, except as provided
in Section 2.2(b), inure to the sole benefit of the Licensor. Except as
otherwise expressly provided in this Agreement, Licensor shall retain all rights
in and to the Licensed Marks, including all rights of ownership in and to the
Licensed Marks and the right to license others to use the Licensed Marks for any
product or service in the Licensed Territory and the rest of the Universe.
Licensee shall execute all documents required to effect any transfer of rights
to Licensor.
8. QUALITY CONTROL.
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8.1 GENERAL. Licensee acknowledges that the Licensed Services covered
by this Agreement must be of sufficiently high quality as to provide maximum
enhancement to and protection of the Licensed Marks and the goodwill they
symbolize. Licensee further acknowledges that the maintenance of high quality
services is of the essence of this 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 goodwill.
8.2 SERVICE SPECIFICATIONS. Licensee shall use the Licensed Marks only
in accordance with, and in connection with, the marketing and provision of
Licensed Services that meet the Service Specifications. The Service
Specifications shall consist of technical performance, customer service,
customer satisfaction and Marketing Specifications, shall be set forth in
writing by Licensor and become Schedule E to this Agreement, and shall be
defined further as the Licensed Services are developed for introduction and may
evolve to meet market and other needs. The Service Specifications are deemed to
be Proprietary Information under Section 21 hereof. Licensee shall not commence
or continue to offer any Licensed Service under the Licensed Marks unless it
meets each of the relevant Service Specifications. The initial definition of the
Service Specifications will be determined solely by Licensor, following
consultation with Licensee, and shall be provided to Licensee for the countries
of Brazil, Chile, Colombia and Peru within three (3) months of the Effective
Date of this Agreement, and for any other country or jurisdiction in the
Licensed Territory, within three (3) months of written notice to Licensor that
Licensee intends to begin offering the Licensed Services in such country or
jurisdiction. Licensee shall use its commercially reasonable best efforts to
become fully compliant with the relevant Service
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Specifications within six (6) months after the delivery of such Service
Specifications by Licensor to Licensee.
8.3 CHANGES TO SERVICE SPECIFICATIONS.
(a) Except with respect to Marketing Specifications, the
Service Specifications may be amended, modified or supplemented from time to
time by Licensor, following consultation with Licensee. Following any such
amendment, modification or supplement to the Service Specifications, Licensee
shall within a reasonable time determined in the reasonable judgment of Licensor
following consultation with Licensee adhere to such amendment, modification or
supplement.
(b) The Marketing Specifications may be amended, modified or
supplemented from time to time by Licensor in its sole discretion. Within sixty
(60) days of Licensor's request to amend, modify, or supplement the Marketing
Specifications, Licensee shall adhere to such amendment, modification or
supplement.
8.4 QUALITY SERVICE 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 at any time upon fifteen (15) days
prior notice to conduct during Licensee's regular business hours an inspection,
test, survey and review of Licensee's facilities and otherwise to determine
compliance with the applicable Service Specifications. Licensee agrees to
furnish to the Quality Control Representatives (i) samples or simulations of
Licensed Services and Marketing Materials that are marketed or provided under
the Licensed Marks as Licensor may request from time to time, for inspections,
surveys, tests and reviews to assure conformance of the Licensed Services and
the Marketing Materials with the applicable Service Specifications and (ii) all
performance data in its control relating
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to the conformance of such Licensed Services with the applicable Service
Specifications. Licensor may independently conduct continuous customer
satisfaction surveys to determine if Licensee is meeting the Service
Specifications. Any information obtained by either party or disclosed by one
party to the other party pursuant hereto shall be deemed to be Proprietary
Information of the party obtaining the information or disclosing the information
pursuant to Section 21 hereof. If Licensee has actual knowledge that it is not
complying with any Service Specification it shall notify Licensor and the
provisions of Section 9 shall apply to such noncompliance.
8.5 COMMUNICATIONS DIRECTOR. As set forth in Section 5.3(b) and (c), a
Communications Director and at least five (5) persons reporting to the
Communications Director shall be employed by Licensor at Licensor's sole cost
and expense from the Brand Fund Fee. The Communications Director shall have
several responsibilities relating to Licensee's use of the Licensed Marks, which
shall include: (i) brand management, (ii) marketing communications, (iii)
advertising and direct marketing, (iv) public relations, and (v) the monitoring
of compliance with Service Specifications. The Communications Director shall (i)
review and approve, subject to the concurrence of the Licensor's Vice President
of Communications for Latin America or other Licensor-designated representative,
all Licensee-produced Marketing Materials to ensure adherence to Licensor's
brand positioning, policies and values and shall receive directions regarding
brand position, brand strategy, brand values and implementation parameters from
Licensor's Vice-President of Communications for Latin America or other
Licensor-
Page 21
designated representative; (ii) ensure coordination and alignment of Licensee's
and Licensor's brand activities, including brand alignment of all of Licensee's
corporate communications, including advertising, sponsorship/events, and
identity; (iii) provide feedback to Licensee on reports required in the Service
Specifications and reporting Licensee's performance with regard to Service
Specifications to Licensor, (iv) planning and execution of public relations and
media relations programs as further described herein, (v) planning and execution
of marketing communications programs as further described herein, and (vi)
manage, along with Licensor's Vice President of Communications for Latin America
or other Licensor-designated representative, the advertising, direct marketing
and public relations brand agencies used by Licensee. All activities relating to
the Corporate Brand Efforts that are funded by the Brand Fund Fee shall be
planned and implemented in the Latin American region by the Licensor's Latin
America Communications Group with the participation of Licensee's CEO and the
Communications Director. The parties agree that all communications efforts,
whether Corporate Brand Efforts or Licensee Brand Efforts, shall be aligned to
Licensor's brand positioning and strategy, but their implementation shall ensure
relevancy to the markets to which they will be targeted. The Communications
Director shall also attend all Marketing Task Force or similar meetings of
Licensor and Licensee , and will attend relevant marketing and strategy meetings
of both Licensor and Licensee. The Communications Director will work closely
with Licensee's CEO and his/her senior management team and the Licensor's Vice
President of Communications for Latin America in coordinating the overall
alignment of Licensee's and Licensor's brand building activities in the Licensed
Territory. Specifically, Licensee's CEO and his/her senior management team shall
provide the Communications Director with the Licensee's business
Page 22
direction, strategies and plans for the Communications Director's use in the
planning and execution of marketing communications, public relations and media
relations programs which support Licensee's business goals. Communications
programs developed for Licensee Brand Efforts shall be approved by Licensee's
senior management team. Public relations and media relations programs developed
for Licensee Brand Efforts shall be approved by Licensee's CEO. Licensor and
Licensee shall jointly evaluate the performance of the Communications Director,
and Licensor's Vice President of Communications for Latin America or other
Licensor-designated representative shall provide performance reviews to the
Communications Director. After consultation with Licensee, Licensor will have
the sole right to replace the Communications Director as well as any person
reporting to the Communications Director who was designated by Licensor.
Licensee's CEO shall contact Licensor's Vice President for Latin America
regarding problems or concerns which may arise from time to time with regard to
the Communications Director and his/her team, and Licensor's Vice President for
Latin America shall consult with Licensee's CEO regarding the appropriate
corrective measures to be taken. Funding for Corporate Brand Efforts in Latin
America will be defined and managed by Licensor with the active participation of
Licensor's Communications Director and Licensee's CEO. Licensee shall use brand
agencies designated by Licensor provided that their cost, service and quality
are competitive with local first class international agencies operating in Latin
America. The Licensor's Vice President of Communications for Latin America or
other Licensor-designated representative shall oversee the performance of and
shall have responsibility for employing any corrective measures required with
regard to the brand agencies, but Licensee's CEO and his/her senior
Page 23
management team shall provide input to Licensor in connection with the
evaluation of the brand agencies. In the event that one or more of the brand
agencies designated by Licensor do not meet or continue to meet relevant cost,
service and quality criteria after corrective measures are implemented,
Licensor's Vice President of Communications for Latin America or other
Licensor-designated representative, with Licensee CEO's active participation,
shall select alternative agencies. Licensee's CEO and his/her senior management
team shall communicate directly with the Communications Director to enable the
effective performance of his/her responsibilities and management of issues
related to the Licensed Marks.
8.6 COSTS. Each party shall bear its own costs associated with, and all
risk of loss and damage resulting from, all inspections, surveys, tests and
reviews under this Section. Except as otherwise agreed herein, Licensee shall
bear the costs for marketing communications, public relations and local
advertising; while Licensor shall bear the cost of regional advertising in Latin
America from the Brand Fund Fee.
8.7 SPONSORSHIP. Licensee shall not use the Licensed Marks to sponsor,
endorse, or claim affiliation with any event, meeting, charitable endeavor or
any other undertaking without the express written permission of Licensor. Any
breach of this provision shall be deemed a Significant Breach by Licensee.
9. REMEDIES FOR NONCOMPLIANCE WITH SERVICE SPECIFICATIONS.
9.1 INITIAL CURE PERIOD. If Licensor becomes aware that Licensee is not
complying with any Service Specifications, or otherwise is in breach as defined
by Sections 12.2(d) or (e), Licensor shall notify Licensee in writing, setting
forth, in reasonable detail, a written description of the noncompliance and any
suggestions for curing such
Page 24
noncompliance. Licensee shall have sixty (60) days from receipt of the
description of noncompliance to correct such noncompliance, in the case of all
Service Specifications, except those Service Specifications relating to
Marketing Specifications (an "Initial Cure Period"). In the case of Licensee's
noncompliance with respect to Service Specifications relating to Marketing
Materials or Marketing Specifications, or where the Licensee otherwise is in
breach as defined by Sections 12.2(a) or (f), Licensee shall immediately cease
using any and all Marketing Materials which are in noncompliance with Service
Specifications relating to Marketing Materials or Marketing Specifications,
cease any other activity in noncompliance with these Service Specifications, and
withdraw all Marketing Material in noncompliance with the Marketing
Specifications. If there is any other noncompliance with respect to Service
Specifications or if the Licensee is otherwise in breach as defined in Sections
12.2(a) or (f), and such breach continues beyond a twenty (20) day period,
Licensee shall within a reasonable time but in any event within sixty (60) days
of the end of such twenty (20) day period either comply with the Service
Specifications or shall be deemed to be in breach of this Agreement.
9.2 SECOND CURE PERIOD. If the noncompliance with the technical
performance, customer service or customer satisfaction Service Specifications
other than Marketing Specifications is not cured within the Initial Cure Period,
either party may notify the other party thereof, setting forth, in detail, the
reasons for noncompliance. Within ninety (90) days of receipt of any such
notification, Licensor and Licensee shall create a mutually acceptable, detailed
plan to rectify such noncompliance and Licensee and Licensor shall agree upon a
reasonable and prompt timetable (the "Second Cure Period") to develop and
Page 25
implement this plan. Each party shall use all reasonable efforts to develop and
implement this plan.
9.3 FINAL CURE PERIOD. If the noncompliance with the technical
performance, customer service or customer satisfaction Service Specifications
continues beyond the Second Cure Period, or if the parties are unable to reach
agreement on a plan within the ninety (90) day time period set forth in Section
9.2 hereof and the Licensee is still in noncompliance, either party may notify
the other party thereof and Licensee shall either cease offering the Licensed
Service(s) which is or are not in compliance until it can comply with the
Service Specifications or be deemed to be in breach of this Agreement.
9.4 POTENTIAL INJURY TO PERSONS OR PROPERTY. Notwithstanding the
foregoing, in the event that Licensor reasonably determines that any
noncompliance with any Service Specification 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 the
applicable Licensed Service under the Licensed Marks until it can comply with
the Service Specifications or be deemed to be in breach of this Agreement.
9.5 COSTS. Except as otherwise expressly provided herein, all costs
relating to effecting cures, including Licensor's and any consulting firm's
and/or arbitrator's time and expenses and any additional monitoring required,
shall be borne by Licensee.
10. PROTECTION OF LICENSED MARKS.
10.1 OWNERSHIP AND RIGHTS. Except as otherwise expressly provided in
Section 2.2(b) Licensee acknowledges that Licensor is the sole owner of all
rights, title and interest in and to the Licensed Marks. Licensee admits the
validity of, and agrees not to challenge the ownership or validity of the
Licensed Marks. Licensee shall take no action with respect
Page 26
to obtaining intellectual property rights in the Licensed Marks without the
approval of Licensor. Licensor represents and warrants that the use of the
Licensed Master Service Marks by the Licensee for the Licensed Services does not
infringe the registered marks of any third party. Licensor shall use reasonable
efforts to ensure that each Licensed Ancillary Service Xxxx (other than those
Licensed Ancillary Service Marks developed by Licensee as provided in Section
2.2) is a Xxxx which is available for use and registration in the Licensed
Territory for the particular service at issue. Licensee shall not disparage or
adversely affect the validity of the Licensed Master Service Marks, the Licensed
Ancillary Service Marks, or the Licensed Trade Dress. Licensee will not grant or
attempt to grant a security interest in the Licensed Master Service Marks, the
Licensed Ancillary Service Marks, or the Licensed Trade Dress, or this
Agreement, or to record any such security interest in the Licensed Territory or
elsewhere against any trademark or service xxxx application or registration
belonging to Licensor. Licensee agrees to execute all documents including a
Registered User Application reasonably requested by Licensor to effect further
registration, maintenance and renewal of the Licensed Master Service Marks and
the Licensed Ancillary Service Marks and, where applicable, to record Licensee
as a registered user of the Licensed Master Service Marks and the Licensed
Ancillary Service Marks. For purposes of this Agreement, Licensee shall be
considered a "registered user" of the Licensed Master Service Marks and Licensed
Ancillary Service Marks under the laws of the countries in the Licensed
Territory, from time to time applicable.
10.2 SIMILAR MARKS. Licensee further agrees not to use, acquire or
register in any country any Xxxx resembling or confusingly similar or deceptive
or misleading with respect
Page 27
to the Licensed Marks and not to use or register the Licensed Marks or any part
thereof as part of its corporate or trade name except as authorized in this
Agreement. Licensee further agrees not to use or register in any country any
Xxxx which dilutes the Licensed Marks. If any application for registration is or
has been filed in any country or political entity by Licensee which relates to
any Xxxx which, in the sole opinion of Licensor acting in good faith, is
confusingly similar, deceptive or misleading with respect to the Licensed Master
Service Marks, the Licensed Ancillary Service Marks, or the Licensed Trade
Dress, or which dilutes the Licensed Master Service Marks, the Licensed
Ancillary Service Marks, or the Licensed Trade Dress, Licensee shall, within a
reasonable time, but in any event within 30 days of written request from
Licensor, at Licensor's sole discretion acting in good faith, immediately
abandon any such application or registration or assign it to Licensor. If
Licensee uses any Xxxx which, in the sole opinion of Licensor acting in good
faith, is confusingly similar, deceptive or misleading with respect to the
Licensed Master Service Marks, the Licensed Ancillary Service Marks, or the
Licensed Trade Dress, or which dilutes the Licensed Master Service Marks, the
Licensed Ancillary Service Marks, or the Licensed Trade Dress, or if Licensee
uses the Licensed Master Service Marks, the Licensed Ancillary Service Marks, or
the Licensed Trade Dress in connection with any product or in connection with
any service not specifically authorized hereunder, Licensee shall, within a
reasonable time, but in any event within thirty (30) days of receiving written
request from Licensor, permanently cease such use. Licensee shall reimburse
Licensor for all the costs and expenses of any litigation, opposition,
cancellation or related legal proceedings, including legal fees, instigated by
Licensor or its authorized representative, in connection with any such use,
registration or application.
Page 28
10.3 INFRINGEMENT. In the event that Licensee learns of any
infringement or threatened infringement of the Licensed Marks or any unfair
competition, passing-off or dilution with respect to the Licensed Master Service
Marks, the Licensed Ancillary Service Marks, or the Licensed Trade Dress, or any
third party alleges or claims that either the Licensed Master Service Marks, the
Licensed Ancillary Service Marks, or the Licensed Trade Dress are liable to
cause deception or confusion to the public, or are 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, or the settlement or compromise of
any claim. 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 and all reasonable expenses or
losses of Licensee in connection therewith shall be paid by Licensor to
Licensee. 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 Master Service Marks, the Licensed Ancillary
Service Marks, or the Licensed Trade Dress. Licensor shall reimburse Licensee
for all reasonable expenses of Licensee solely in its role as a party in the
action. Nothing in this Agreement shall require or be deemed to require Licensor
to enforce the Licensed Master Service Marks, the Licensed Ancillary Service
Marks, or the Licensed Trade Dress.
Page 29
In the event of any claim, action, proceeding or suit by a third party
against Licensee alleging an infringement by any of the Licensed Marks or
copyright, by reason of the use, in accordance with the Service Specifications,
of the Licensed Master Service Marks, the Licensed Ancillary Service Marks, or
the Licensed Trade Dress in association with the Licensed Service(s), Licensor,
at its expense, will defend Licensee subject to the following conditions:
Licensor will reimburse Licensee for any reasonable costs, expenses,
and legal fees incurred in connection with obtaining advice concerning its
liability with respect to the claim, action, proceeding or suit, but not legal
fees, costs and expenses involved in connection with the defense of the claim,
action, proceeding or suit, unless incurred at Licensor's written request or
authorization in which case Licensor will promptly reimburse Licensee in full
for such amounts. Licensor also will indemnify Licensee against any liability
(including any fines, penalties and punitive damages) assessed against Licensee
by final judgment or order from which no appeal lies or the time for appeal has
expired on account of such infringement or violation arising out of such use.
10.4 COMPLIANCE WITH LAWS. In the performance of this Agreement,
Licensee and Licensor 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 countries in the Licensed Territory. Should
either party be or become aware of any applicable laws or regulations which are
inconsistent with the provisions of this Agreement, such party shall promptly
notify the other of such inconsistency. In such event, Licensor may, at its
option, either waive the performance of such inconsistent provisions or
Page 30
negotiate with Licensee to make changes in such provisions to comply with
applicable laws and regulations.
11. NO TRANSFER OF LICENSED RIGHTS.
11.1 NO SUBLICENSING; ASSIGNMENT; RIGHTS TO MARKETING MATERIALS AND
TRADE DRESS. Licensee shall not, except as provided in Section 2.1, (i) assign,
license, transfer or part with any of its rights or obligations hereunder
(whether by amalgamation, merger, consolidation, sale or otherwise), or (ii)
grant or purport to grant any sublicense in respect of the Licensed Marks.
11.2 COPYRIGHT LICENSE. Licensee acknowledges that the Marketing
Materials and all proprietary rights therein are owned by or licensed to and
reserved to Licensor and they are valid. Licensor hereby grants Licensee a
royalty-free, non-exclusive, copyright license in the Licensed Territory to
reproduce, distribute, display, perform and create derivative works from all
Marketing Materials in connection with the provision of Licensed Services
pursuant to this Agreement. Licensee shall neither acquire nor assert copyright,
patent, industrial design, service xxxx or trademark ownership or any other
proprietary rights in and to the Marketing Materials or in any derivation,
adaptation or variation thereof. Any and all trademarks, service marks,
copyrights (subject to any moral rights of Licensee which may not be assigned by
operation of applicable law), or related rights accruing to Licensee in the
Marketing Materials by virtue of its sale, distribution, performance or
provision of the services in the Licensed Territory shall vest automatically at
the time of accrual solely and exclusively in Licensor. Licensee shall sign all
documents requested by Licensor to effectuate the transfer of these rights to
Licensor, failing which Licensor may, and Licensee hereby grants Licensor the
right to, execute documents on behalf of
Page 31
Licensee to secure or effectuate such rights. In the event this Agreement is
terminated, canceled or expires, Licensee shall immediately upon such
termination, cancellation or expiration cease all use in any manner of such
Marketing Materials and shall assign any and all right, title and interest in
and to any and all trademarks, service marks, copyrights, (subject to any moral
rights of Licensee which may not be assigned by operation of applicable law) and
other related proprietary rights in the Marketing Materials or in any
derivation, adaptation or variation thereof the Licensee owns to Licensor.
11.3 TRADE DRESS. Licensee shall assign to Licensor all rights, title,
interest and related goodwill in and to any Licensed Trade Dress it develops or
uses in connection with the provision of services under this Agreement. Such
assignment shall be made on a non-fee, royalty-free basis.
12. TERMS AND TERMINATION.
12.1 TERM.
(a) Unless earlier terminated in accordance with this Section
12, the initial term of this Agreement shall be five (5) years from the
Effective Date. This Agreement shall automatically be renewed at the end of the
initial term for an additional five (5) year term, provided that Licensee is not
in default pursuant to Section 5 or in breach pursuant to Section 12.2.
(b) Licensor in its sole discretion may terminate this
Agreement if Licensor and/or its other Affiliates cease to own, directly and
indirectly, a majority of the voting power of Licensee.
(c) All sublicenses granted hereunder shall terminate upon the
termination of this Agreement.
Page 32
(d) This Agreement shall terminate in the event of the
termination for failure of Licensee to perform under the Xxxxx Investment
Agreement or other agreements related thereto.
12.2 BREACH BY LICENSEE. Licensor may terminate this Agreement at any
time in the event of a Significant Breach by Licensee. A "Significant Breach by
Licensee" shall mean, after exhaustion of any applicable cure provisions set
forth in Sections 9 or 5 hereof, any of the following:
(a) Licensee's use of any Xxxx (including the Licensed Master Service
Marks, the Licensed Ancillary Service Marks, or Licensed Trade Dress) contrary
to this Agreement including any use which disparages or places in disrepute
Licensor, its businesses, or its business reputation, or adversely affects or
detracts from Licensor's goodwill;
(b) Licensee's refusing or neglecting a request by Licensor for access
to Licensee's facilities or Marketing Materials, which continues for thirty (30)
days following a written description of the noncompliance and any suggestions
for curing such noncompliance;
(c) Licensee's Bankruptcy or Licensee's licensing, assigning,
transferring or parting with (or purporting to license, assign, transfer or part
with) any of the rights granted in this Agreement to others without the prior
written approval of Licensor;
(d) Licensee's failure to maintain the Service Specifications and other
information furnished under this Agreement in confidence or failing to restrict
the transmission of information, products and commodities as required by this
Agreement;
Page 33
(e) Licensee's failure to abide by the Service Specifications in the
sale, distribution, performance or provision of the Licensed Services, other
than relating to Marketing Materials;
(f) Licensee's failure to abide by the Service Specifications relating
to Marketing Materials in the sale, distribution, performance or provision of
the Licensed Services;
(g) Licensee's failing to make any payment specified in this Agreement,
including without limitation payments required under Sections 4 or 5 or 8 or 9
hereof;
(h) Licensee's failure to abide by Section 8.7 of this Agreement
relating to sponsorship; or
(i) Licensee's failure to obtain the recordal, approval or permits
required under Section 17 hereof.
12.3 TERMINATION OBLIGATIONS. In the event this Agreement terminates,
expires or is canceled in accordance with Section 12.2 hereunder, Licensee shall
immediately, and permanently cease all use of the Licensed Marks, the use of
"AT&T" as part of its corporate and trade name, and use of any proprietary
materials of Licensor furnished hereunder and shall not use any confusingly
similar name, Xxxx or trade dress, and Licensee shall have no further rights
under this Agreement. In the event this Agreement terminates or expires in
accordance with any other provision of this Agreement, Licensee shall have six
(6) months to cease all use of the Licensed Marks and any proprietary materials
of Licensor furnished hereunder and to change its corporate name and to cause
its Subsidiaries that are using "AT&T" as part of their corporate names to
change their names, and shall thereafter not use any confusingly similar name,
Xxxx or trade dress and Licensee shall have no further rights under this
Agreement.
Page 34
12.4 NO WAIVER OF RIGHTS. In addition to any other provision of this
Section 12, each party will retain all rights to any other remedy it may have at
law or equity for any breach by the other of this Agreement.
13. INDEMNITY. Licensee shall defend, indemnify and hold Licensor, its
other Affiliates and authorized representatives harmless against all claims,
suits, proceedings, costs, damages and judgments incurred, claimed or sustained
by third parties whether for personal injury, or property damage, due to
Licensee's marketing, sale, or use of services bearing the Licensed Master
Service Marks, the Licensed Ancillary Service Marks, or the Licensed Trade Dress
and shall indemnify Licensor for all damages, losses, costs and expenses
(including reasonable attorneys' fees and expenses) due to such use or any
improper or unauthorized use of the Licensed Marks.
14. INSURANCE.
14.1 INSURANCE POLICY. Licensee shall maintain, at its own expense, in
full force and effect at all times during which services bearing the Licensed
Master Service Marks, the Licensed Ancillary Service Marks or the Licensed Trade
Dress are being sold, with a responsible insurance carrier acceptable to
Licensor, at least a Five (5) Million U.S. Dollar (U.S. $5,000,000.00)
comprehensive general liability insurance policy with respect to the services
offered under the Licensed Marks. This insurance shall name Licensor as an
insured party, shall be for the benefit of Licensor and Licensee and shall
provide for at least ten (10) days prior written notice to Licensor and Licensee
of the cancellation or any substantial modification of the policy. This
insurance may be obtained for Licensor by Licensee in conjunction with a policy
which covers services and/or products other than the Licensed Services covered
under this Agreement.
Page 35
14.2 EVIDENCE OF INSURANCE. Licensee shall, from time to time upon
reasonable request by Licensor, promptly furnish or cause to be furnished to
Licensor evidence in form and substance satisfactory to Licensor, of the
maintenance of the insurance required by Section 14.1 hereof, including without
limitation originals or copies of policies, certificates of insurance (with
applicable riders and endorsements) and proof of premium payments.
15. NOTICES, ETC. All notices, requests, demands or other
communications required by or otherwise with respect to this Agreement shall be
in writing and shall be deemed to have been duly given to any party when
delivered personally (by courier service or otherwise), when delivered by
telecopy and confirmed by return telecopy, or seven days after being mailed by
first-class mail, postage prepaid in each case to the applicable addresses set
forth below:
If to Licensee:
Kiri Inc.
0000 Xxxxx xx Xxxx Xxxx.
Xxxxx Xxxxxx, XX 00000
Attn: Chief Executive Officer
General Counsel
Fax No.: 000-000-0000
If to Licensor:
AT&T Corp.
000 X. Xxxxx Xxxxxx
Xxxxxxx Xxxxx, Xxx Xxxxxx 00000
Attn: General Counsel
Fax No.: 000-000-0000
and
AT&T Corp.
Xxxxx X. Xxxxxxxx, Esq.
Trademark and Copyright Counsel
000 Xxxxx Xxxxx Xxxxxx
Xxxxxxx Xxxxx, Xxx Xxxxxx 00000
Fax No.: 000-000-0000
Page 36
or to such other address as such party shall have designated by notice so given
to each other party.
16. COMPLIANCE WITH LAW. Nothing in this Agreement shall be construed
to prevent Licensor or Licensee from complying fully with all applicable laws
and regulations, whether now or hereafter in effect.
17. GOVERNMENTAL LICENSES, PERMITS AND APPROVALS. Licensee, at its
expense, shall be responsible for obtaining and maintaining all licenses,
permits and Regulatory Approvals which are required by all Regulatory
Authorities with respect to this Agreement, and to comply with any requirements
of such Regulatory Authorities for the registration, approval or recording of
this Agreement or any related Registered User Applications and for making
payments hereunder. Licensee shall furnish to Licensor written evidence from
such Regulatory Authorities of any such licenses, approvals, permits,
clearances, authorizations, Regulatory Approvals, registration or recording.
Licensor and Licensee agree that Licensor shall record this License Agreement
with the appropriate authorities in the Licensed Territory where such licenses
shall be recorded, pay the necessary fees and do all that may be required to
effect such recordation and to obtain recognition of Licensee as an authorized
or registered user of the Licensed Marks.
18. EXPORT
Licensee acknowledges that any products, software, and technical
information (including, but not limited to services and training) provided under
this Agreement are subject to U.S. export laws and regulations and any use or
transfer of such products,
Page 37
software, and technical information must be authorized under those regulations.
Licensee agrees that it will not use, distribute, transfer, or transmit the
products, software, or technical information (even if incorporated into other
products) except in compliance with U.S. export regulations. If requested by
Licensor, Licensee also agrees to sign those export-related documents which may
be required for Licensor to comply with U.S. export regulations. The obligations
of this section shall survive and continue after any termination of rights under
this Agreement.
19. APPLICABLE LAW; JURISDICTION. The construction, performance and
interpretation of this Agreement shall be governed by the laws of the State of
New York, U.S.A. without giving effect to its principles or rules of conflicts
of law to the extent that such principles or rules would require or permit the
application of the laws of another jurisdiction, provided that if the foregoing
laws should be modified during the term hereof in such a way as to adversely
affect the original intent of the parties, the parties will negotiate in good
faith to amend this Agreement to effectuate their original intent as closely as
possible. Subject to Section 20, Licensee and Licensor hereby irrevocably and
unconditionally consent to submit to the exclusive jurisdiction of the courts of
the State of New York and of the United States of America located in the State
of New York (the "New York Courts") for any litigation arising out of or
relating to this Agreement and the transactions contemplated hereby (and agrees
not to commence any litigation relating thereto in a court except in such
courts), waives any objection to the laying of venue of any such litigation in
the New York Courts and agrees not to plead or claim in any New York Court that
such litigation brought therein has been brought in an inconvenient forum.
Licensee and Licensor hereby waive any right to a trial by jury.
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20. DISPUTE RESOLUTION.
20.1 ARBITRATION Any dispute, controversy or claim arising out of,
relating to, or in connection with, this Agreement, or the breach, termination
or validity thereof, whether based on contract, tort, statute, fraud,
misrepresentation or any other legal or equitable theory (each a "Claim"), shall
be finally settled by binding arbitration. The arbitration shall be conducted in
accordance with the CPR Rules for Non-Administered Arbitration in effect at the
time of the arbitration, except as they may be modified herein or by mutual
agreement of the parties. The seat of the arbitration shall be New York City,
New York, and it shall be conducted in the English language. Notwithstanding
Section 19 hereof, the arbitration and this clause shall be governed by Title 9
(Arbitration) of the United States Code. Any request for interim measures
pursuant to Section 23.5 hereof or otherwise shall not be deemed incompatible
with, or a waiver of, this agreement to arbitrate.
20.2 NUMBER OF ARBITRATORS/SELECTION. The arbitration shall be
conducted by three arbitrators. The party initiating arbitration (the
"Claimant") shall appoint an arbitrator in its request for arbitration (the
"Request"). The other party (the "Respondent") shall appoint an arbitrator
within 30 days of receipt of the Request and shall notify the Claimant of such
appointment in writing. If within 30 days of receipt of the Request by the
Respondent, either party has not appointed an arbitrator, then that arbitrator
shall be appointed by CPR Institute for Dispute Resolution. The first two
arbitrators appointed in accord with this provision shall appoint a third
arbitrator within 30 days after the Respondent has notified Claimant of the
appointment of the Respondent's arbitrator or, in the event of a failure by a
party to appoint, within 30 days after the CPR Institute for Dispute Resolution
has notified the parties and any arbitrator already appointed of its
Page 39
appointment of an arbitrator on behalf of the party failing to appoint. When the
third arbitrator has accepted the appointment, the two arbitrators making the
appointment shall promptly notify the parties of the appointment. If the first
two arbitrators appointed fail to appoint a third arbitrator or so to notify the
parties within the time period prescribed above, then the CPR Institute for
Dispute Resolution shall appoint the third arbitrator and shall promptly notify
the parties of the appointment. The third arbitrator shall act as Chair of the
tribunal.
20.3 CERTAIN PROCEDURES. The arbitration panel shall strictly limit
discovery to the production of documents directly relevant to the facts alleged
by the Claimant and the Respondent, and if depositions are required, each party
shall be limited to five depositions. Each party shall bear its own expenses,
but those related to the compensation of the arbitrators shall be borne equally.
20.4 ARBITRAL AWARD. The arbitral award shall be in writing, state
only the damages and injunctive relief granted and be final and binding on the
parties. The parties hereto expressly waive and forgo any right to punitive,
exemplary or similar damages as a result of any Claim. The arbitrators shall
orally state the reasoning on which the arbitral award rests but shall not state
such reasoning in any writing. The arbitration panel shall endeavor to issue the
arbitral award within six months of the Request, but failure to do so shall not
effect the validity of the arbitral award. The parties agree that the existence
and contents of the entire arbitration, including the award, shall be deemed a
compromise of a dispute under Rule 408 of the Federal Rules of Evidence, shall
not be discoverable in any proceeding, shall not be admissible in any court
(except for the enforcement thereof)
Page 40
or arbitration and shall not bind or collaterally estop either party with
respect to any claim or defense made by any third party.
20.5 CONFIDENTIALITY OF PROCEEDINGS. All proceedings in connection
with any arbitration, including its existence, the content of the proceedings
and any decision, shall be kept confidential to the maximum extent possible
consistent with the law. The arbitrator shall issue an order preventing the
parties, CPR Institute for Dispute Resolution and any other participants to the
arbitration from disclosing to any third party any information obtained via the
arbitration, including discovery of documents, evidence, testimony and the award
except as may be required by law.
20.6 JUDGMENT. Judgment upon the decision may be entered by any court
having jurisdiction thereof or having jurisdiction over the relevant party or
its assets, PROVIDED that the party entering the award shall request that the
court prevent the award from becoming publicly available except as may be
required by law.
21. CONFIDENTIALITY OF INFORMATION AND USE RESTRICTION
The Service Specifications disclosed and/or furnished to Licensee by
Licensor under this Agreement and all copies of the Service Specifications made
by Licensee, including translations, compilations and partial copies (the
"Material") shall remain the property of the Licensor and shall be returned to
Licensor upon request. Licensee shall use the Material solely for the purposes
described in this Agreement. Licensee shall hold in confidence during and after
the termination, expiration or cancellation of this Agreement and shall not
disclose such Material to any third party without the prior written consent of
the Licensor.
The Proprietary Information disclosed and/or furnished by one party to
another
Page 41
under this Agreement and all copies thereof made by the receiving party,
including translations, compilations and partial copies shall remain the
property of the disclosing party and shall be returned to the disclosing party
upon request. The receiving party shall use the Proprietary Information solely
for the purposes described in this Agreement. The receiving party shall hold in
confidence during and after the termination, expiration or cancellation of this
Agreement and not disclose, provide, or otherwise make available, in whole or in
part such Proprietary Information to any third party without the prior written
consent of the disclosing party, except Proprietary Information which, as
established by reasonable proof by the receiving party:
(i) at the time of the alleged disclosure, is known to the public;
(ii) after the time of disclosure, becomes known to the public
other than by or through a violation of this Agreement by the
receiving party either directly or indirectly;
(iii) at the time of disclosure, is in the possession of the
receiving party and was not acquired directly or indirectly
from the disclosing party;
(iv) after the time of disclosure is lawfully received by the
receiving party from a third party who has lawfully received
it; or
(v) at the time of disclosure, is required to be disclosed by law
or by any government or regulatory agency having jurisdiction
for telecommunication services, the receiving party making
reasonable effort to have the agency retain the Proprietary
Information in confidence.
Both parties shall ensure that only its employees with a need to know
the Proprietary Information shall have access to it and then only if those
employees have
Page 42
entered an appropriate confidentiality and use restriction agreement obligating
them at least to the same extent as the Licensee is obligated under this
Agreement.
The receiving party of the Proprietary Information shall exercise a
standard of care under this Section that is not less than the standard of care
Licensor exercises under its own corporate policy for confidentiality and use
restrictions for its own Proprietary Information.
If and when Licensor receives Proprietary Information of Licensee
through inspection, test, survey and review of Licensee's facilities and
otherwise to determine compliance with the applicable Service Specifications,
Licensor's non-disclosure requirements hereunder shall be for a period not to
exceed three years from the termination or expiration of this Agreement.
22. PAYMENTS.
22.1 PAYMENTS. All payments or fees due under this Agreement
("Payments") shall be made on the date that they are due and shall be subject to
a late payment charge equal to the lesser of (i) U.S. dollar LIBOR rate (London
Inter Bank Offer Rate) quoted for sixty (60) day advances (quoted on TELERATE, a
service of Dow Xxxxx) plus 600 basis points starting on the date the Payment is
due plus 600 basis points accruing from the due date to date of receipt of the
balance owed by the Licensee and (ii) the maximum rate permitted by law. If
receipt occurs later than sixty (60) days from the due date, a weighted average
is computed based on successive sixty (60) day rates (e.g., if a year elapses
six rates taken sixty (60) days apart would be averaged.)
22.2 TAXES. All Payments due under this Agreement shall be made in full
without any deduction or withholding whatsoever for taxes or duties imposed by
the countries in
Page 43
the Licensed Territory or any subdivision or local jurisdiction
thereof, unless such withholding or deduction is required by law in which event
Licensee shall pay to Licensor such additional amount so that the net amount
received by Licensor after the deduction or withholding will equal the full
amount which would have been received by it had no such deduction or withholding
been made.
22.3 PAYMENT OF BRAND FUND FEES. The payment of the Brand Fund Fees and
any associated late charges under Section 22.1 shall be made via electronic
funds transfer to a bank account designated by Licensee solely for this purpose
with notice to Licensor as to its existence and signing authority, and the funds
in such account shall be accessible solely by the Licensor Vice President for
Latin America and/or other Licensor-designated representative.
23. MISCELLANEOUS.
23.1 NAME, CAPTIONS. The name assigned this Agreement and the section
captions used herein are for convenience of reference only and shall not affect
the interpretation or construction hereof.
23.2 ENTIRE AGREEMENT. The provisions of this Agreement (including the
Schedules hereto) contain the entire agreement between the parties relating to
use by Licensee of the Licensed Marks and supersede all prior agreements and
understandings relating to the subject matter hereof. No rights are granted to
use the Licensed Marks except as specifically set forth in this Agreement. In
the event of any conflict between the provisions of this Agreement and
provisions of other agreements involving Licensor and Licensee, the provisions
of this Agreement shall prevail. This Agreement is not a franchise, does not
create a partnership or joint venture and shall not be deemed to
Page 44
constitute an assignment of any rights of Licensor to Licensee. Licensee is an
independent contractor, not an agent or employee of Licensor, and Licensor is
not liable for any acts or omissions by Licensee. The continuing obligations of
Licensee in this Agreement, including those obligations set forth in Sections
10.2 and 18, shall survive and continue after the expiration, cancellation, or
termination of this Agreement. With respect to Section 21, the obligations shall
survive and continue for a period of three (3) years following such expiration,
cancellation or termination of this Agreement. Notwithstanding the foregoing,
the confidentiality provisions of the Purchase Agreement are not in any way
altered, amended, extended, contracted or superseded by this Section 23.2 of
this Agreement.
23.3 AMENDMENTS, WAIVERS, ETC. This Agreement may not be amended,
changed, supplemented, waived or otherwise modified except by an instrument in
writing signed by the parties.
23.4 SEVERABILITY. If any term of this Agreement or the application
thereof to any party or circumstance shall be held invalid or unenforceable to
any extent, the remainder of this Agreement and the application of such term to
the other parties or circumstances shall not be affected thereby and shall be
enforced to the greatest extent permitted by applicable law.
23.5 SPECIFIC PERFORMANCE. The parties acknowledge that money damages
are not an adequate remedy for violations of this Agreement and that any party
may, in its sole discretion, apply to a court of competent jurisdiction for
specific performance, interim or injunctive or such other relief as such court
may deem just and proper in order to enforce this Agreement or prevent any
violation hereof and, to the extent permitted by applicable
Page 45
law, each party waives any objection to the imposition of such relief.
23.6 REMEDIES CUMULATIVE. All rights, powers and remedies provided
under this Agreement or otherwise available in respect hereof at law or in
equity shall be cumulative and not alternative, and the exercise or beginning of
the exercise of any thereof by any party shall not preclude the simultaneous or
later exercise of any other such right, power or remedy by such party.
23.7 NO WAIVER. The failure of any party hereto to exercise any right,
power or remedy provided under this Agreement or otherwise available in respect
hereof at law or in equity, or to insist upon compliance by any other party
hereto with its obligations hereunder, and any custom or practice of the parties
at variance with the terms hereof, shall not constitute a waiver by such party
of its right to exercise any such or other right, power or remedy or to demand
such compliance.
23.8 NO THIRD PARTY BENEFICIARIES. This Agreement is not intended to be
for the benefit of and shall not be enforceable by any person or entity who or
which is not a party hereto.
23.9 COUNTERPARTS. This Agreement may be executed in any number of
counterparts, each of which shall be deemed to be an original, but all of which
together shall constitute one instrument. Each counterpart may consist of a
number of copies each signed by less than all, but together signed by all, the
parties hereto.
23.10 FURTHER ASSURANCES. Each of the parties shall, and shall cause
its Affiliates to, from time to time, execute and deliver such additional
instruments, documents, conveyances or assurances and take other such actions as
shall be necessary or otherwise reasonably requested by a party, to confirm and
assure the rights and
Page 46
obligations provided for in this Agreement and render effective the consummation
of the transactions contemplated hereby, or otherwise carry out the intent and
purposes of this Agreement.
23.11 CONSTRUCTION OF THIS AGREEMENT. In any construction of this
Agreement, this Agreement shall not be construed against any party based upon
the identity of the drafter of the Agreement or any provision of it.
23.12 EFFECTIVE DATE. This Agreement shall become effective upon the
date of the consummation of the Merger under the Merger Agreement (the
"Effective Date") and shall have no force or effect prior to such time.
Page 47
IN WITNESS WHEREOF, each of the parties has caused this Agreement to be
executed in duplicate originals by its duly authorized representatives as of the
date first stated above.
KIRI INC. AT&T CORP.
By: ________________________ By: _________________________
Name: ______________________ Name: _______________________
Title: _____________________ Title: ______________________
Date: ______________________ Date: _______________________
Page 48
SCHEDULE A
LICENSED MASTER SERVICE MARKS
[GRAPHIC OMITTED][GRAPHIC OMITTED]
-----------------------------------------------------------------
[GRAPHIC OMITTED]
[GRAPHIC OMITTED]
Page 49
SCHEDULE B
REGISTRATIONS FOR LICENSED MASTER SERVICE MARKS
REGISTRATION REGISTRATION
OR APPLICATION OR APPLICATION
COUNTRY XXXX NO. DATE
------- ---- -------------- --------------
Argentina AT&T 1099877 Feb. 28, 0000
Xxxxxxxxx AT&T & Globe Design 1518137 Xxx. 00, 0000
Xxxxxx AT&T 811983030 Xxx. 0, 0000
Xxxxxx AT&T & Globe Design 819860573 Xxx. 00, 0000
Xxxxx AT&T 389224 Xxx. 0, 0000
Xxxxx AT&T & Globe Design 420096 Jan. 18, 0000
Xxxxxxxx AT&T 112857 Xxx. 0, 0000
Xxxxxxxx AT&T & Globe Design 148388 Jan. 28, 0000
Xxxx AT&T 2468 Jan. 25, 0000
Xxxx AT&T & Globe Design 14617 Jun. 2, 1998
Page 50
SCHEDULE C1
LICENSED ANCILLARY SERVICE MARKS
RESTRICTIONS ON LICENSE
-----------------------
XXXX LICENSED TERRITORY LICENSED SERVICES
---- ------------------ -----------------
IT'S ALL WITHIN YOUR REACH All All
TODO A SEU ALCANCE All Portuguese- All
speaking countries
TODO A TU ALCANCE All Spanish- All
speaking countries
Page 51
SCHEDULE C2
REGISTRATIONS FOR LICENSED ANCILLARY SERVICE MARKS
REGISTRATION REGISTRATION
OR APPLICATION OR APPLICATION
COUNTRY XXXX NO. DATE
------- ---- -------------- --------------
Argentina IT'S ALL WITHIN
YOUR REACH 0000000 May 20, 0000
Xxxxxxxxx TODO A TU
ALCANCE 2151851 May 20, 1998
Bolivia IT'S ALL WITHIN
YOUR REACH 6065 May 5, 1998
Bolivia TODO A TU
ALCANCE 6064 May 5, 1998
Brazil IT'S ALL WITHIN
YOUR REACH 000000000 Xxx. 00, 0000
Xxxxxx TODO A SEU
ALCANCE 820880574 Jun. 29, 0000
Xxxxx IT'S ALL WITHIN
YOUR REACH 414215 May 8, 0000
Xxxxx TODO A TU
ALCANCE 414213 May 8, 0000
Xxxxxxxx IT'S ALL WITHIN
YOUR REACH 00000000 May 21, 0000
Xxxxxxxx TODO A TU
ALCANCE 98028799 May 21, 0000
Xxxx IT'S ALL WITHIN
YOUR REACH 15536 Sep. 10, 0000
Xxxx TODO A TU
ALCANCE 15442 Aug. 31, 1998
Page 52
SCHEDULE D
LICENSED TRADE DRESS
1. The overall configurations of the AT&T and globe design corporate
signature as set forth more fully in the AT&T document CORPORATE
IDENTITY PROGRAM: GRAPHIC STANDARDS MANUAL ("Graphic Standards
Manual").
2. The AT&T Garamond typeface, namely AT&T's proprietary typeface used for
all marketing communications materials, including print and television
advertising, promotional brochures, pamphlets and other Marketing
Materials and as set forth in the AT&T document GUIDELINES FOR PRINT
AND TV ADVERTISING.
3. The AT&T identification stripes, namely a rectangular band consisting
of three parallel lines: the top line being red (PANTONE(R) 485); the
middle, blue (PANTONE(R) Process Blue); the bottom, black (PANTONE(R)
Process Black), as set forth in the GRAPHIC STANDARDS MANUAL.
4. The acceptable color applications of the AT&T and globe design
corporate signature as set forth in the GRAPHIC STANDARDS MANUAL.
Page 53
SCHEDULE D (CONT.)
LICENSED TRADE DRESS
5. The acceptable graphic techniques relating to the AT&T and globe design
corporate signature as set forth in the GRAPHIC STANDARDS MANUAL.
6. The acceptable applications of the AT&T globe design corporate
signature and typography, as well as the visual style and design
techniques (layout) as applied to any product marking, as set forth in
the AT&T document PRODUCT MARKING REFERENCE MANUAL.
7. The acceptable applications of the AT&T globe design corporate
signature and typography, as well as the visual style and design
techniques, as applied to business stationery, and as set forth in the
AT&T document BUSINESS STATIONERY SPECIFICATIONS.
8. Nothing in this Schedule shall restrict or limit AT&T's claim of trade
dress rights in or protection of AT&T's Trade Dress.
Page 54
SCHEDULE E
SERVICE SPECIFICATIONS
Page 55
SCHEDULE F
LICENSED SERVICES
EXCLUSIVE SERVICES
o Local voice delivered through fixed-line connectivity
o Domestic long distance
o International long distance
o Point-to-point dedicated line
o Asynchronous Transfer Mode (ATM)
o Frame relay
o Internet access
o 1-800/toll free
o Packet X.25 (data)
o Virtual network services (data)
o Switched digital (data)
NONEXCLUSIVE SERVICES
o AT&T card services
o AT&T Direct(R) services
o E-commerce
o Web-hosting
o Fixed wireless for connectivity
o Voice over Internet Protocol
o Managed Network Services (as defined herein)
Page 56
SCHEDULE G
Criteria for Sublicensees
Neither sublicensees nor their affiliates (including any joint venture and
business alliance in which sublicensee is a participant) conduct business or
engage in business practices in any of the following areas:
o Illegal activities;
o Content or practices which demean, ridicule or attack individuals
or groups on the basis of age, color, national origin, race,
religion, sex, sexual orientation or handicap;
o Pornographic, obscene or sexually explicit/suggestive material or
content;
o Material deemed to be harmful to children;
o Tobacco or alcoholic beverages;
o Firearms, ammunition or fireworks;
o Gambling;
o Contraceptives;
o Violence;
o Vulgar or obscene language;
o Solicitation of funds;
o Extreme political or social activism.
Page 57
SCHEDULE H
LICENSEE CORPORATE AND TRADE NAME
AT&T Latin America, Inc.
