Exhibit 10.7
INTELLECTUAL PROPERTY CROSS LICENSE AGREEMENT
This INTELLECTUAL PROPERTY CROSS LICENSE AGREEMENT (this "Agreement"),
dated as of September 27, 2005 (the "Effective Date"), is entered into by and
between FIDELITY NATIONAL FINANCIAL, INC., a Delaware corporation, ("FNF") and
FIDELITY NATIONAL TITLE GROUP, INC., a Delaware corporation ("FNT"), each a
"Party" and together, the "Parties."
W I T N E S S E T H:
WHEREAS, FNF has the authority and power, or has caused members of the
FNF Group to authorize and empower FNF, to deliver the rights herein granted to
FNT, and FNT has the authority and power, or has caused members of the FNT Group
to authorize and empower FNT, to deliver the rights herein granted to FNF.
NOW, THEREFORE, in consideration of the premises, and of the cross
representations, warranties, covenants and agreements set forth herein, and for
other good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the Parties hereby agree as follows:
1. CERTAIN DEFINITIONS
(a) "Change of Control" of FNT means any event or circumstance causing FNF
to own or control, directly or indirectly, fifty percent (50%) or less
of the stock or other equity interest entitled to vote on the election
of the members to the board of directors or similar governing body of
FNT.
(b) "Competitors" for FNF shall mean those companies set forth on Schedule
1(a)(i) and for FNT shall mean those companies set forth on Schedule
1(a)(ii).
(c) "Confidential Information" has the meaning set forth in Section 8(a).
(d) "Copyright" means each of the FNF Copyrights and the FNT Copyrights.
(e) "Dispute" has the meaning set forth in Section 9(a).
(f) "Fidelity ▇▇▇▇" has the meaning set forth in Section 3(e).
(g) "FNF Copyrights" has the meaning set forth in Section 2(b).
(h) "FNF Group" means FNF, the FNF Subsidiaries and each Person that is an
Affiliate of FNF, other than FNT and any member of the FNT Group,
immediately after the Effective Date, and each other Person that
becomes an Affiliate of FNF after the Effective Date.
(i) "FNF Intellectual Property" has the meaning set forth in Section 2(f).
(j) "FNF Marks" has the meaning set forth in Section 2(c).
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(k) "FNF Patents" has the meaning set forth in Section 2(d).
(l) "FNF Trade Secrets" has the meaning set forth in Section 2(e).
(m) "FNF Subsidiary" means the Subsidiaries of FNF, excluding FNT and the
members of the FNT Group (collectively, the "FNF Subsidiaries").
(n) "FNT Copyrights" has the meaning set forth in Section 2(b).
(o) "FNT Group" means FNT, Subsidiaries of FNT, and each Person that FNT
directly or indirectly controls (within the meaning of the Securities
Act) immediately after the Effective Date, and each other Person that
becomes an Affiliate of FNT after the Effective Date.
(p) "FNT Intellectual Property" has the meaning set forth in Section 2(f).
(q) "FNT Marks" has the meaning set forth in Section 2(c).
(r) "FNT Patents" has the meaning set forth in Section 2(d).
(s) "FNT Subsidiary" means the Subsidiaries of FNT (collectively, the "FNT
Subsidiaries").
(t) "FNT Trade Secrets" has the meaning set forth in Section 2(e).
(u) "Granting Party" has the meaning set forth in Section 2(a).
(v) "Granting Party Group" means (i) the FNF Group in those instances where
FNF is the Licensor Party and (ii) the FNT Group in those instances
where FNT is the Licensor Party.
(w) "Intellectual Property" has the meaning set forth in Section 2(f).
(x) "Intercompany Agreements" means the following agreements each executed
on or about the Effective Date, unless otherwise indicated herein:
(i) this Intellectual Property Cross License Agreement between FNF
and FNT;
(ii) the Corporate Services Agreement between FNF and FNT;
(iii) the Reverse Corporate Services Agreement between FNF and FNT;
(iv) the Employee Matters Agreement between FNF and FNT;
(v) the Tax Matters Agreement between FNF and FNT; and
(vi) any other agreement that would fall within the definition of
"Ancillary Agreements" in the Separation Agreement of even
date herewith, between FNF and FNT, as amended and as may
hereafter be amended from time to time.
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(y) "Licensee Party" has the meaning set forth in Section 2(a).
(z) "Licensee Party Group" means (i) the FNF Group in those instances where
FNF is the Licensee Party and (ii) the FNT Group in those instances
where FNT is the Licensee Party.
(aa) "▇▇▇▇" means each of the FNF Marks and the FNT Marks.
(bb) "Master IT Services Agreement" means the agreement of even date
herewith by and between FNT and Fidelity Information Services, Inc., an
Arkansas corporation.
(cc) "Party" has the meaning set forth in the preamble.
(dd) "Patent" means each of the FNF Patents and the FNT Patents.
(ee) "Permitted Sublicensee" has the meaning set forth in Section 2(g)(i).
(ff) "Person" means an individual, a partnership, a corporation, a limited
liability company, an association, a joint stock company, a trust, a
joint venture, an unincorporated organization, a governmental entity or
any department, agency, or political subdivision thereof.
(gg) "Subsidiary" means, with respect to any specified Person, any
corporation or other legal entity of which such Person controls or
owns, directly or indirectly, more than fifty percent (50%) of the
stock or other equity interest entitled to vote on the election of the
members to the board of directors or similar governing body.
(hh) "Trade Secret" means each of the FNF Trade Secrets and the FNT Trade
Secrets.
(ii) "Unauthorized Access" has the meaning set forth in Section 8(b).
2. RECIPROCAL GRANTS
(a) Each Party hereto grants hereby certain rights in Intellectual Property
(defined and scheduled below) and Trade Secrets and, with respect to
such rights, shall be termed the "Granting Party"; with respect to such
rights, the grantee shall be termed the "Licensee Party." The following
basic grants shall control each identified type of Intellectual
Property and Trade Secrets, but each grant shall be subject to any
further conditions adjoining the specific item of Intellectual Property
as scheduled (for Copyrights on Schedule 2(b), for Marks on Schedule
2(c), and for Patents on Schedule 2(d)). Where a Party is granted a
right to sublicense pursuant to this Section 2, any sublicense granted
pursuant to such right shall comply with Section 2(g) below.
(b) Copyrights. (i) FNF hereby grants to FNT a non-exclusive, irrevocable,
non-terminable, worldwide, royalty-free license, to use, sell services
arising from, sublicense, operate, alter, modify, adapt, perform,
distribute, create derivative works from, display, copy and exploit any
other rights of ownership now existing or hereafter created with
respect to (A) the copyrighted materials (including but not limited to
software) owned by a member of
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the FNF Group and listed or described on Schedule 2(b) hereto or (B)
materials that (1) are unregistered, (2) are not software or data
processed by software in connection with the business of FNF Group, (3)
FNT Group was using prior to the Effective Date and (4) do not have
substantial commercial value (collectively, A and B are the "FNF
Copyrights"), subject to the terms and conditions hereof.
(ii) FNT hereby grants to FNF a non-exclusive, irrevocable,
non-terminable, worldwide, royalty-free license, to use, exploit, sell
services arising from, sublicense, operate, alter, modify, adapt,
perform, distribute, create derivative works from, display, copy and
exploit any other rights of ownership now existing or hereafter created
with respect to (A) the copyrighted materials (including but not
limited to software) owned by a member of the FNT Group and listed or
described on Schedule 2(b) hereto or (B) materials that (1) are
unregistered, (2) are not software or data processed by software in
connection with the business of FNT Group, (3) FNF Group was using
prior to the Effective Date and (4) do not have substantial commercial
value (collectively, A and B are the "FNT Copyrights"), subject to the
terms and conditions hereof.
(c) Marks. (i) FNF hereby grants to FNT for the term of this Agreement a
non-exclusive, worldwide, revocable, royalty-free license, to use,
sublicense, display and reproduce the trade and service marks owned by
a member of the FNF Group and listed on Schedule 2(c) hereto (the "FNF
Marks"), terminable as provided below, by FNF (and with respect to
sublicenses to the FNT Group, by FNT) for the goods and services as set
forth on Schedule 2(c). Notwithstanding the foregoing, one or more
upper level domain names substantially matching an FNF ▇▇▇▇ ▇▇▇ also be
scheduled and licensed hereunder, and shall be licensed, if at all,
exclusively.
(ii) FNT hereby grants to FNF for the term of this Agreement, a
non-exclusive, world-wide, revocable, royalty-free license, to use,
sublicense, display and reproduce the trade and service marks owned by
a member of the FNT Group and listed on Schedule 2(c) hereto (the "FNT
Marks"), terminable as provided below, by FNT (and with respect to
sublicenses to the FNF Group, by FNF) for the goods and services as set
forth on Schedule 2(c). Notwithstanding the foregoing, one or more
upper level domain names substantially matching an FNT ▇▇▇▇ ▇▇▇ also be
scheduled and licensed hereunder, and shall be licensed, if at all,
exclusively.
(iii) Each license and each sublicense of a ▇▇▇▇ shall be separately
terminable on the following conditions:
Each Licensee Party or sublicensee of a ▇▇▇▇ hereunder shall
observe the following quality control standards and
procedures:
A) Licensee Party shall assure that the nature and
quality of products and services that are marketed,
advertised, sold or serviced using Granting Party
Marks subject to this Agreement will meet or exceed
all applicable governmental and regulatory standards
and requirements and initially shall be of a high
quality consistent with the quality of the products
and services of the Licensee Party as provided by the
Licensee Party (or its sublicensees) prior to the
date hereof,
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and throughout the term hereof, recognizing that
Licensee Party's business shall change and that
regulatory standards and requirements may change from
time to time, its products and services shall
continue to be of a high quality commensurate with
industry standards and with then current regulatory
standards and requirements. Each party acknowledges
that the Licensee Party has maintained the products
and services offered under the Marks at a high
quality and enforced quality control standards
regarding the nature and quality of products and
services that are marketed, advertised, sold or
serviced using Granting Party's Marks prior to the
date hereof. Granting Party may from time to time
request, and Licensee Party agrees to reasonably
provide, samples of marketing materials,
advertisements, and other information regarding
Licensee Party's or sublicensee's products and
services which samples shall be used only for the
purpose of verifying Licensee Party's compliance with
quality control. The parties shall mutually agree
upon and comply with guidelines for reasonable usage
of the Marks.
B) All goodwill arising from License Party's use, or use
by a sublicense, of Granting Party Marks shall inure
solely to the benefit of the Granting Party and
neither during, nor after, termination of this
Agreement shall a Licensee Party or any sublicensee
assert any claim to such goodwill. Additionally, each
such Licensee Party and sublicensee agrees not to
take any action that would be detrimental to the
goodwill associated with such Marks.
If a Granting Party of a ▇▇▇▇ shall give written notice to a
Licensee Party of the Licensee Party's material failure (or
the material failure of any of its sublicensees) to maintain
or observe the requisite quality controls set forth above and
if, within sixty (60) days of Licensee Party's receipt of such
notice, (i) the failure has not been cured or (ii) a
reasonable plan of cure has not been presented by the Licensee
Party to the Granting Party and the Licensee Party (or
sublicensee) of the ▇▇▇▇ in breach has not begun to implement
such plan, then the Granting Party may suspend all rights for
use of said ▇▇▇▇ by the relevant Licensee Party or sublicensee
until such time as such failure is cured. If a plan of cure is
implemented and has not resulted in a cure within one (1) year
of notice of material failure, the license of such ▇▇▇▇ to
such user shall terminate. If a license to a Licensee Party
sublicensee is so terminated, such Licensee Party may not
issue a new sublicense for a ▇▇▇▇ to such sublicensee without
prior written consent of the Granting Party.
(d) Patents. (i) FNT hereby grants to FNF an irrevocable, non-terminable,
non-exclusive, worldwide, royalty-free license, to use, sublicense,
make, create improvements of, market, sell, offer for sale, and exploit
any other rights of ownership now existing or hereafter created with
respect to goods and services using or arising from processes or
inventions subject to patents owned by a member of the FNT Group and
listed on Schedule 2(d) hereto (the "FNT Patents") subject to the terms
and conditions hereof.
(ii) FNF hereby grants to FNT an irrevocable, non-terminable,
non-exclusive, worldwide, royalty-free license, to use, sublicense,
make, create improvements of, market, sell and
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exploit any other rights of ownership now existing or hereafter created
with respect to goods and services using or arising from processes
subject to patents owned by a member of the FNF Group and listed on
Schedule 2(d) hereto (the "FNF Patents") subject to the terms and
conditions hereof.
(e) Trade Secrets/Know-How. (i) FNT hereby grants to FNF an irrevocable,
non-terminable (except as set forth herein), non-exclusive, worldwide,
royalty-free license, to use, sublicense, make, create improvements of,
market, sell and exploit any other rights of ownership now existing or
hereafter created with respect to goods and services using or arising
from know-how or trade secrets owned by a member of the FNT Group and
used by a member of the FNF Group prior to the Effective Date (the "FNT
Trade Secrets"), subject to the terms and conditions hereof.
(ii) FNF hereby grants to FNT an irrevocable, non-terminable (except as
set forth herein), non-exclusive, worldwide, royalty-free license, to
use, sublicense, make, create improvements of, market, sell and exploit
any other rights of ownership now existing or hereafter created with
respect to goods and services using or arising from trade secrets or
know-how owned by a member of the FNF Group and used by a member of the
FNT Group prior to the Effective Date (the "FNF Trade Secrets"),
subject to the terms and conditions hereof.
(f) Intellectual Property. The Patents, Marks and Copyrights shall be
collectively termed the "Intellectual Property" and the Intellectual
Property owned by FNF or FNT shall be termed, respectively, the "FNF
Intellectual Property" and the "FNT Intellectual Property."
(g) Sublicense Limitations. Each grant hereunder is subject to the right of
sublicense (without further consent from the Granting Party) in
accordance with the following limitations:
(i) Sublicenses may be granted hereunder by a Licensee Party solely to
members of the Licensee Party Group, effective upon written notice to
the Granting Party, which notice discloses the specific Intellectual
Property or Trade Secret that has been sublicensed and the name and
address of the sublicensee. A Licensee Party, who prior to the
Effective Date, granted or whose members of the Licensee Party Group
granted sublicenses of Intellectual Property outside of the Licensee
Party Group to their respective end-user customers and/or resellers
(which resellers are not Competitors of the Granting Party) as part of
the normal conduct of their respective businesses or who can show that
it or members of the Licensee Party Group were planning within the
first year after the Effective Date to grant sublicenses of
Intellectual Property to their respective end-user customers and/or
resellers (which resellers are not Competitors of the Granting Party)
as part of the normal conduct of their respective businesses (all such
end-users and resellers are, collectively, the "Permitted
Sublicensees"), may grant or permit sublicenses within the Licensee
Party Group to grant further sublicenses of such Intellectual Property
as had previously been so granted or as had been planned to be so
granted within the first year after the Effective Date as part of such
normal conduct of business to Permitted Sublicensees upon written
notice to the Granting Party, which notice shall disclose the specific
Intellectual Property that has been sublicensed and the name and
address of the
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Permitted Sublicensee. A Licensee Party shall not grant sublicenses,
directly or indirectly, of the Intellectual Property of the Granting
Party to a Competitor of the Granting Party; provided that the Licensee
Party can grant a sublicense to a Competitor of a Granting Party for
Copyrights or Patents of the Granting Party solely for the benefit of
Licensee Party's internal business or the business of the members of
the Licensee Party Group. In no event shall a Licensee Party grant
sublicenses, directly or indirectly, of the Trade Secrets of the
Granting Party to a Competitor of the Granting Party or otherwise
provide access to the Trade Secrets of the Granting Party to a
Competitor of the Granting Party.
(ii) Except as otherwise set forth in Schedule 2(b), (c), or (d)
hereto, which may be amended in accordance with Section 2(h), or as
permitted by Section 2(g)(i), a Licensee Party may grant sublicenses to
any Person who is not in the Licensee Party Group only upon prior
written consent of the Granting Party. Except as otherwise set forth in
Schedule 2(b), (c) or (d) hereto, which may be amended in accordance
with Section 2(h), or as permitted by Section 2(g)(i), if a Licensee
Party proposes to sublicense any Intellectual Property licensed to it
hereunder to a Person outside its Group and who is a Permitted
Sublicensee, the Granting Party shall consider such proposal in good
faith and may approve same on such conditions as it deems appropriate
in its reasonable business judgment.
(iii) The Licensee Party agrees to impose, on each of its sublicensees,
obligations to comply with the terms of this Agreement, including
without limitation, obligations regarding confidentiality and the
return and/or destruction of Trade Secrets and related documents and
materials pursuant to Section 8 hereof and shall not permit any
sublicensee to grant further sublicenses without the prior written
approval of the Granting Party.
(iv) Any sublicense of a Copyright or Patent shall include provisions
to enable the sublicensee's compliance with Section 3(d) below.
(v) A Licensee Party (A) shall be and remain liable to the Granting
Party for each sublicensee of the Licensee Party and any breach of the
terms of the applicable sublicense and this Agreement and (B) shall use
its commercially reasonable best efforts to minimize any damage
(current and prospective) done to the Granting Party as a result of any
such breach.
(vi) Any other limitations set forth in Schedule 2(b), (c) and (d)
shall apply with respect to all sublicenses.
(h) Schedule Changes. At any time prior to six months after the Change of
Control of FNT, Schedules 2(b), (c) and (d) shall be amended from time
to time, by one party giving written notice to the other, to add,
modify or delete (i) any FNF Intellectual Property that is a Patent or
Copyright (other than data and software with substantial commercial
value) that any member of the FNT Group was using prior to becoming an
FNT Subsidiary and which is necessary to the business of such member
unless such addition would be prohibited by any enforceable obligation
of FNF prior to the date hereof, in which event
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the parties will take all commercially reasonable efforts to enable the
addition, in each case with such addition having retroactive effect to
the Effective Date, and (ii) any FNT Intellectual Property that is a
Patent or Copyright (other than data and software with substantial
commercial value) that any member of the FNF Group was using prior to
the Effective Date which is necessary to the business of such member,
unless such addition would be prohibited by any other enforceable
obligation of FNT prior to the date hereof, in which event the parties
will take all commercially reasonable efforts to enable the addition,
in each case with such addition having retroactive effect to the
Effective Date.
(i) If, within one year from the Effective Date, a Party identifies a
copyright, patent or ▇▇▇▇ owned by a member of the other Party's Group
prior to the Effective Date and not scheduled hereunder which would
otherwise qualify as Intellectual Property, but which such Party was
not using before the Effective Date, which it (or a member of its
Group) deems useful in its business, the Party which owns (or a member
of whose Group owns) such item of intellectual property agrees to
negotiate in good faith to arrive at reasonable commercial terms of a
license but, for the avoidance of doubt, is not bound to conclude a
license.
(j) In the event of a conflict or inconsistency between the terms of this
Agreement and any other Intercompany Agreement concerning or
implicating the licensing of Patents, Copyrights or Trade Secrets, the
terms of such Intercompany Agreement will govern. In the event of a
conflict or inconsistency between the terms of this Agreement and any
other Intercompany Agreement entered between a member of FNF Group and
FNT Group as of or within six months following the Effective Date
concerning the licensing of Marks, the terms of this Agreement will
govern.
3. COPIES; DERIVATIVE WORKS; IMPROVEMENTS
(a) In addition to any copies of Intellectual Property that a Licensee
Party or its sublicensee may make as otherwise permitted hereunder, a
Licensee Party or its sublicensee may make such number of copies of
Intellectual Property as reasonably deemed necessary by it for backup
or disaster recovery. No Licensee Party shall remove, obscure or
materially vary (or permit its sublicensee to remove, obscure or
materially vary) any notice of copyright, trademark, patent or other
intellectual property right from any Intellectual Property and/or
copies made by a Licensee Party or its sublicensee, and each Licensee
Party shall reproduce (or cause its sublicense to reproduce) on each
whole or partial copy of Intellectual Property (and on containers or
wrappers thereof) such notices as have been placed on such Intellectual
Property by the entity owning such Intellectual Property (or
otherwise). Copies of Intellectual Property shall be subject to the
terms and conditions of this Agreement.
(b) Except as expressly provided herein to the contrary, in no event shall
a Licensee Party or its sublicensee create, register or use, as a
trademark, any alteration or variation of any Granting Party ▇▇▇▇
without the prior written approval of the Granting Party, not to be
unreasonably withheld.
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(c) Title to a derivative work created pursuant to the Master IT Services
Agreement shall be determined solely pursuant to the Master IT Services
Agreement and shall not be deemed a derivative work under this
Agreement. Except pursuant to the foregoing, if a Licensee Party or its
sublicensee of any Granting Party Copyright creates a derivative work
of the work subject to such Granting Party Copyright, then the Licensee
Party or its sublicensee shall be the owner of the derivative work (but
not the owner of the underlying Granting Party Copyright).
(d) Except to the extent set forth in the Master IT Services Agreement (in
which case the Master IT Services Agreement shall be determinative), if
a Licensee Party (or its sublicensee hereunder) of a Patent invents an
improvement thereon, whether patented, patent pending or maintained as
a trade secret, then such Licensee Party or its sublicensee shall be
the owner of such improvement (but not the owner of the underlying
Patent). However, each Party shall provide and assure (by appropriate
terms in any sublicense) that patents which are improvements on any
Patent licensed hereunder, having a filing date in any jurisdiction on
or before the fifth anniversary of the Effective Date, shall not be
asserted against either Party hereto or members of its Group. Such
Licensee Party or its sublicensee, as the case may be, shall have no
duty to prosecute a patent or patents on any such improvements, nor
shall it have any claim for reimbursement from any Granting Party or
Granting Party licensor for costs it may have incurred in investigating
or pursuing patent protection for such improvement.
(e) If FNT wishes to use a trademark or service ▇▇▇▇ containing the words
"Fidelity" or "Fidelity National" (each, a "Fidelity ▇▇▇▇"), it may do
so pursuant to the grant in Section 2(c) of this Agreement; provided
that FNF has not filed an intent to use application on the FNT-proposed
▇▇▇▇. If FNT wishes to register a Fidelity ▇▇▇▇, it shall request FNF,
in writing, to prosecute and maintain such registration, in FNF's name,
and FNT shall reimburse FNF for all reasonable out of pocket expenses
incurred by FNF in connection therewith. FNF shall expeditiously
prosecute such Fidelity ▇▇▇▇ in FNF's name, provided that FNF has
neither filed an intent to use registration on the proposed ▇▇▇▇ nor
uses the proposed ▇▇▇▇ in commerce. To the extent that, in any
jurisdiction outside the United States, FNT, as a licensee, may
prosecute its own trademark or service ▇▇▇▇ application for any
Fidelity ▇▇▇▇, it may do so upon written notice to FNF.
(f) Subject to the limitations set forth in Section 3(b) above, to minimize
dilution of the Fidelity Marks, if FNT elects to use a Fidelity ▇▇▇▇
together with a logo similar to a house silhouetted against a
cityscape, then FNT shall use such ▇▇▇▇ in a manner as similar to that
in which FNF uses its comparable ▇▇▇▇ as possible including without
limitation, the color scheme, type face and relative sizes.
4. OWNERSHIP
(a) For clarification purposes, all FNF Intellectual Property and any FNF
Trade Secret shall at all times be exclusively owned, as between the
Parties, by FNF, and the entities within the FNT Group shall have no
rights, title or interest therein, other than the rights set forth in
this Agreement.
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(b) For clarification purposes, all FNT Intellectual Property and any FNT
Trade Secret shall at all times be exclusively owned, as between the
Parties, by FNT, and the entities within the FNF Group shall have no
rights, title or interest therein, other than the rights set forth in
this Agreement.
(c) For clarification purposes, a Party may sell or otherwise encumber or
cause to sell or be encumbered (i) the Intellectual Property that it or
a member of its Group (FNF Group or FNT Group, as applicable) owns or
(ii) any Trade Secret that it or a member of its Group (FNF Group or
FNT Group, as applicable) owns; subject, however, to the licenses
granted hereunder.
5. DELIVERY
(a) Upon the Effective Date, or as promptly as practicable thereafter, FNF
shall deliver or cause to be delivered to FNT copies of the FNF
Intellectual Property in such numbers and forms or formats as
reasonably requested by FNT.
(b) Upon the Effective Date, or as promptly as practicable thereafter, FNT
shall deliver to FNF the FNT copies of the FNT Intellectual Property in
such numbers and forms or formats as agreed by the Parties reasonably
requested by FNF.
6. ENFORCEMENT; INFRINGEMENT
(a) Each Party will notify the other Party promptly of any acts of
infringement or unfair competition with respect to Granting Party's
Intellectual Property or Trade Secrets of which a Party or any
sublicensee of that Party becomes aware or obtains actual knowledge
alleging in writing that the Granting Party's Intellectual Property or
Trade Secrets or its use infringes the rights of a third party or
constitutes unfair competition. In such event, the Parties will
cooperate and cause their applicable sublicensees to cooperate, at each
Party's own expense, with the other Party to defend or prosecute the
claim. All costs and expenses of defending or prosecuting any such
action or proceeding, together with any recovery therefrom, will be
borne by and accrue to the applicable Party or sublicensee that is
party to the action or proceeding. FNF shall not initiate any
litigation or proceeding with regard to infringement of or unfair
competition with respect to the Fidelity Marks without the consent of
FNT, which consent will not be unreasonably withheld.
(b) Each of FNF and FNT, as the case may be, will enforce any applicable
contract rights relating to breach of a sublicense issued pursuant
hereto relating to the Intellectual Property rights or Trade Secrets of
the other Party. In the event that either FNF or FNT commences a
proceeding or any other form of action for such purposes, FNF or FNT,
as applicable, will cause the entities within the FNT Group or the FNF
Group, respectively, to reasonably cooperate, at their own expense,
with such entity to prosecute such action or proceeding. All costs and
expenses of any such action or proceeding, together with any recovery
therefrom, will be borne by and accrue to the applicable entity within
the proceeding Party.
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7. LIMITATIONS
(a) EXCEPT AS MAY BE EXPRESSLY SET FORTH HEREIN, ANY LICENSE GRANTED
HEREUNDER IS "AS IS"; NEITHER PARTY (NOR ANY PERSON WITHIN THE FNF
GROUP OR THE FNT GROUP), NOR ANY OF THEIR RESPECTIVE OFFICERS,
DIRECTORS EMPLOYEES OR AGENTS MAKES ANY REPRESENTATION OR WARRANTY,
EXCEPT AS MAY BE EXPRESSLY SET FORTH HEREIN, WITH RESPECT TO
INTELLECTUAL PROPERTY, TRADE SECRETS OR THE LICENSES GRANTED OR MADE
HEREUNDER, INCLUDING ANY REPRESENTATION AS TO: (i) A PARTY'S RIGHT TO
GRANT LICENSES, (ii) THE SCOPE OF MARKS FOR ANY SPECIFIC GOODS OR
SERVICES OR RIGHTS IN INTELLECTUAL PROPERTY OR TRADE SECRETS IN ANY
SPECIFIC JURISDICTIONS, OR (iii) THE TITLE OF SUCH INTELLECTUAL
PROPERTY OR TRADE SECRET OR ABSENCE OF ANY THIRD PARTY INFRINGEMENT OF
SUCH INTELLECTUAL PROPERTY OR TRADE SECRET. NEITHER PARTY UNDERTAKES
ANY COMMITMENT TO MAINTAIN OR DEFEND ITS INTELLECTUAL PROPERTY OR TRADE
SECRET.
(b) IN NO EVENT WILL EITHER PARTY HEREUNDER BE LIABLE TO THE OTHER PARTY
HEREUNDER FOR DAMAGES IN THE FORM OF SPECIAL, INCIDENTAL, PUNITIVE,
INDIRECT, CONSEQUENTIAL OR EXEMPLARY DAMAGES, LOST PROFITS, LOST
SAVINGS, LOSS OF BUSINESS, DATA, GOODWILL OR OTHERWISE, WHETHER IN
CONTRACT, TORT OR OTHERWISE, ARISING OUT OF OR IN CONNECTION WITH THIS
AGREEMENT, EVEN IF SUCH PARTY SHALL HAVE BEEN ADVISED IN ADVANCE OF THE
POSSIBILITY OF SUCH DAMAGES.
8. CONFIDENTIALITY
(a) Confidential Information. Each Party shall use, and shall cause its
sublicensees to use, at least the same standard of care in the
protection of Confidential Information of the other Party as it uses to
protect its own confidential or proprietary information of a similar
nature (provided that such Confidential Information shall be protected
in at least a reasonable manner). For purposes of this Agreement,
"Confidential Information" includes (1) all confidential or proprietary
information and documentation of either Party, all reports, exhibits
and other documentation, any financial information and (2) any FNT
Trade Secrets and FNF Trade Secrets. Each Party shall use the
Confidential Information of the other Party only in connection with the
purposes of this Agreement, including resolution of any Disputes in
accordance with Section 9, and shall make such Confidential Information
available, and shall cause its sublicensees to make such Confidential
Information available, only to their respective employees,
subcontractors, or agents having a "need to know" with respect to such
purpose. Each Party shall advise, and shall cause its sublicensees to
advise, their respective employees, subcontractors, and agents of such
Party's obligations under this Agreement. Except as otherwise required
by the terms of this Agreement (including Section 10) or applicable law
or national stock exchange rule, in the event of the expiration of this
Agreement or termination of this Agreement for any reason all
Confidential Information of a Party disclosed to, and all
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copies thereof made by, the other Party or the other Party's
sublicensees shall be returned to the disclosing Party or, at the
disclosing Party's option, erased or destroyed. The Party receiving the
Confidential Information (or its sublicensee that received the
Confidential Information) shall provide to the disclosing Party
certificates evidencing such destruction. The obligations in this
Section 8(a) will not restrict disclosure by a Party or its sublicensee
pursuant to applicable law, or by order or request of any court or
government agency; provided that, prior to such disclosure the
receiving Party or its sublicensee shall (i) immediately give notice to
the disclosing Party and (ii) cooperate with the disclosing Party in
challenging the right to such access and (iii) only provide such
information as is required by law, such order or a final,
non-appealable ruling of a court of proper jurisdiction or with the
written consent of the disclosing Party. Confidential Information of a
Party will not be afforded the protection of this Agreement if such
Confidential Information was (A) developed by the other Party or its
sublicensees independently as shown by its written business records
regularly kept, (B) rightfully obtained by the other Party or its
sublicensees without restriction from a third party, (C) publicly
available other than through the fault or negligence of the other Party
or its sublicensees, or (D) released by the disclosing Party without
restriction to anyone.
(b) Unauthorized Acts. Each Party shall and shall cause its sublicensees
to: (1) notify the other Party promptly of any unauthorized possession,
use, or knowledge of any Confidential Information of the other Party by
any Person which shall become known to it, any attempt by any Person to
gain possession of Confidential Information of the other Party without
authorization or any attempt to use or acquire knowledge of any
Confidential Information without authorization (collectively,
"Unauthorized Access"), (2) promptly furnish to the other Party full
details of the Unauthorized Access and use reasonable efforts to assist
the other Party in investigating or preventing the reoccurrence of any
Unauthorized Access, (3) cooperate with the other Party in any
litigation and investigation against third parties deemed necessary by
such Party to protect its proprietary rights, and (4) promptly take
affirmative action to prevent a reoccurrence of any such Unauthorized
Access.
9. DISPUTE RESOLUTION
(a) Amicable Resolution. The Parties mutually desire that friendly
collaboration will continue between them. Accordingly, they will try to
resolve in an amicable manner all disagreements and misunderstandings
connected with their respective rights and obligations under this
Agreement, including any amendments hereto. In furtherance thereof, in
the event of any dispute or disagreement (a "Dispute") between the
Parties in connection with this Agreement (including, without
limitation, any use of a Granting Party's Intellectual Property or
Trade Secret by the Licensee Party Group or the compliance of the
Licensee Party Group with terms of Section 2(c)(iii)), then the
Dispute, upon written request of either Party, will be referred for
resolution to the General Counsels of the Parties, which General
Counsels will have ten (10) days to resolve such Dispute.
(b) Mediation. In the event any Dispute cannot be resolved in a friendly
manner as set forth in Section 9(a), the Parties intend that such
Dispute be resolved by mediation. If the
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General Counsels of the Parties are unable to resolve the Dispute as
contemplated by Section 9(a), either Party may demand mediation of the
Dispute by written notice to the other in which case the two Parties
will select a single mediator within ten (10) days after the demand.
Neither Party may unreasonably withhold consent to the selection of the
mediator. Each Party will bear its own costs of mediation but both
Parties will share the costs of the mediator equally.
(c) Arbitration. In the event that the Dispute is not resolved pursuant to
Section 9(a) or through mediation pursuant to Section 9(b), the latter
within thirty (30) days of the submission of the Dispute to mediation,
either Party involved in the Dispute may submit the dispute to binding
arbitration pursuant to this Section 9(c). All Disputes submitted to
arbitration pursuant to this Section 9(c) shall be resolved in
accordance with the Commercial Arbitration Rules of the American
Arbitration Association, unless the Parties involved mutually agree to
utilize an alternate set of rules, in which event all references herein
to the American Arbitration Association shall be deemed modified
accordingly. Expedited rules shall apply regardless of the amount at
issue. Arbitration proceedings hereunder may be initiated by either
Party making a written request to the American Arbitration Association,
together with any appropriate filing fee, at the office of the American
Arbitration Association in Orlando, Florida. All arbitration
proceedings shall be held in the city of Jacksonville, Florida in a
location to be specified by the arbitrators (or any place agreed to by
the Parties and the Arbitrator). The arbitration shall be by a single
qualified arbitrator experienced in the matters at issue, such
arbitrator to be mutually agreed upon by the Parties. If the Parties
fail to agree on an arbitrator thirty (30) days after notice of
commencement of arbitration, the American Arbitration Association
shall, upon the request of any Party to the dispute or difference,
appoint the arbitrator. Any order or determination of the arbitral
tribunal shall be final and binding upon the Parties to the arbitration
as to matters submitted and may be enforced by any Party to the Dispute
in any court having jurisdiction over the subject matter or over any of
the Parties. All costs and expenses incurred in connection with any
such arbitration proceeding (including reasonable attorneys' fees)
shall be borne by the Party incurring such costs. The use of any
alternative dispute resolution procedures hereunder will not be
construed under the doctrines of laches, waiver or estoppel to affect
adversely the rights of either Party.
(d) Non-Exclusive Remedy. FNF and FNT acknowledge and agree that money
damages would not be a sufficient remedy for any breach of this
Agreement by either Party or misuse of FNF Intellectual Property or FNF
Trade Secret or FNT Intellectual Property or FNT Trade Secret within
the FNF Group or the FNT Group, as the case may be, or the Confidential
Information of FNF or FNT, as the case may be. Accordingly, nothing in
this Section 9 will prevent either Party from immediately seeking
injunctive or interim relief in the event (A) of any actual or
threatened breach of any confidentiality provisions of this Agreement
or (B) that the Dispute relates to, or involves a claim of, actual or
threatened infringement of intellectual property. All actions for such
injunctive or interim relief shall be brought in a court of competent
jurisdiction in accordance with Section 11(f). Such remedy shall not be
deemed to be the exclusive remedy for breach of this Agreement.
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(e) Commencement of Dispute Resolution Procedure. Notwithstanding anything
to the contrary in this Agreement, the Parties, but none of their
respective Subsidiaries, are entitled to commence a dispute resolution
procedure under this Agreement, whether pursuant to this Section 9 or
otherwise, and each Party will cause its respective Subsidiaries not to
commence any dispute resolution procedure other than through such Party
as provided in this Section 9.
10. TERM AND TERMINATION
(a) Individual Terminations. This Agreement shall be construed as a
separate and independent agreement for each and every Copyright, ▇▇▇▇
or Patent provided for hereunder. Any termination of a license or
sublicense for any particular ▇▇▇▇ shall not terminate any licenses or
sublicenses hereunder with regard to other Marks. Termination of a
sublicense of a ▇▇▇▇ shall not terminate sublicenses to other
sublicensees or to other Marks.
(b) Automatic Renewals of Marks Licenses; Termination for Sale. Subject to
termination rights set forth in Section 2(c), the license of Marks
hereunder shall continue for successive twenty (20) year terms,
renewing automatically unless all of the Marks have been abandoned.
Notwithstanding the foregoing, all licenses of Marks hereunder from FNF
to FNT shall terminate automatically upon a Change of Control of FNT,
subject to the transition period described in Section 10(e).
(c) Termination as a result of Disaffiliation. If a member of a Licensee
Party Group ceases to be a member of the Licensee Party Group, then all
sublicenses from the Licensee Party to such member granted pursuant to
the Licensee Party's rights under Section 2 shall terminate, subject to
the transition period described in Section 10(e).
(d) Termination for Insolvency. (i) In the event that either Party or, if
applicable, the subsidiary of such Party to which a sublicense
hereunder has been granted:
A) shall admit in writing its inability to, or be
generally unable to, pay its debts as such debts
become due; or
B) shall (1) apply for or consent to the appointment of,
or the taking of possession by, a receiver,
custodian, trustee, examiner or liquidator of itself
or of all or a substantial part of its property or
assets, (2) make a general assignment for the benefit
of its creditors, (3) commence a voluntary case under
the Bankruptcy Code, (4) file a petition seeking to
take advantage of any other law relating to
bankruptcy, insolvency, reorganization, liquidation,
dissolution, arrangement or winding-up, or
composition or readjustment of debts, (5) fail to
controvert in a timely and appropriate manner, or
acquiesce in writing to, any petition filed against
it in an involuntary case under the Bankruptcy Code
or (6) take any corporate, partnership or other
action for the purpose of effecting any of the
foregoing;
then the other Party may, by giving notice thereof to such Party,
exercise any termination right, and such termination shall become
effective as of the date specified
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in such termination notice; provided that where the conditions of this
subsection 10(d)(i) are met only as to a subsidiary of such Party to
which a sublicense hereunder has been granted, then the other Party's
rights of termination are limited only to such subsidiary.
(ii) In the event that:
A) a proceeding or case shall be commenced, without the
application or consent of a Party or, if applicable,
the subsidiary of such Party to which a sublicense
hereunder has been granted, in any court of competent
jurisdiction, seeking (i) its reorganization,
liquidation, dissolution, arrangement or winding-up,
or the composition or readjustment of its debts under
the Bankruptcy Code, (ii) the appointment of a
receiver, custodian, trustee, examiner, liquidator or
the like of such Party, or, if applicable, of such
subsidiary, or of all or any substantial part of its
property or assets under the Bankruptcy Code or (iii)
similar relief in respect of such Party or, if
applicable, such subsidiary under any law relating to
bankruptcy, insolvency, reorganization, winding-up,
or composition or adjustment of debts, and such
proceeding or case shall continue undismissed, or an
order, judgment or decree approving or ordering any
of the foregoing shall be entered and continue
unstayed and in effect, for a period of sixty (60)
days or more days; or
B) an order for relief against such Party shall be
entered in an involuntary case under the Bankruptcy
Code, which shall continue in effect for a period
of sixty (60) days or more;
then the other Party may, by giving notice thereof to such Party,
exercise any termination right, and such termination shall become
effective as of the date specified in such termination notice; provided
that where the conditions of this subsection 10(d)(ii) are met only as
to a subsidiary of such Party to which a sublicense hereunder has been
granted, then the other Party's rights of termination are limited only
to such subsidiary.
(e) Events on Termination.
(i) Upon any termination or expiration of any licenses or sublicenses
for Marks granted under this Agreement: (A) where FNF is the Granting
Party, FNT shall, and shall cause its applicable sublicensees to,
promptly cease all use of the applicable Marks; provided that in the
event of such termination by reason of a Change in Control pursuant to
Section 10(b), FNF shall provide written notice to FNT of the
termination of all licenses and sublicenses of Marks hereunder, with
such termination to be effective at the end of a transition period of
one (1) year from the date of such notice, and upon such termination,
FNT shall have ceased and shall have caused its sublicensees to cease,
all use of the applicable Marks; and (B) where FNT is the Granting
Party, FNF shall, and shall cause its applicable sublicensees, to
promptly cease, all use of the applicable Marks.
(ii) The termination of licenses and sublicenses of Patents and
Copyrights pursuant to Section 10(c) shall be effective at the end of a
transition period of one (1) year from the
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date that the former member of a Licensee Party Group ceased to be a
member of the Licensee Party Group, and upon such termination, the
Licensee Party shall have caused the former member of the Licensee
Party Group to cease all use of the Patents and Copyrights.
(f) Abandonment. If FNF or a transferee intends to abandon all use of all
marks containing the word "Fidelity," then FNF or such transferee shall
provide written notice to FNT of its intention to abandon such marks
simultaneously with its providing of a similar written notice to
Fidelity National Information Services, Inc. ("FIS") pursuant to the
terms of that certain Intellectual Property Cross License Agreement
dated as of March 4, 2005 (the "FIS Cross License"), whereupon, subject
to the superseding rights of FIS under the FIS Cross License, FNT will
have a right to make an offer for the assignment of such marks and FNF
will negotiate in good faith, solely with FNT, for the subsequent
thirty (30) days, to conclude a mutually satisfactory transaction with
respect to such assignment. If, at any time after providing such notice
of its intention to abandon such marks, FNF or a transferee proposes to
assign such marks, or any significant subset thereof, to a Person not
affiliated with FNF or such transferee, FNT shall be extended a right
of first refusal to acquire any transferable rights that FNF may have
in such marks, which right shall be for a thirty (30) day period from
the date of receipt of written notice of such proposal to assign such
marks. If prior to expiration of the 30 day period, FNT has not
provided written notice to FNF of its agreement to exercise such right,
FNF or a transferee may offer or assign such Marks to any other Person.
(g) Termination of Trade Secret Licenses.
(i) If, upon a Change of Control of FNT, FNF reasonably believes that
any FNF Trade Secrets primarily related to the business of FNF may
become available to a Competitor of FNF, FNF may withdraw from the
license granted hereunder such FNF Trade Secrets upon a reasonable
transition period for FNT to develop or acquire replacement know-how or
trade secrets, provided that FNF compensates FNT in full for any loss
or expenses that FNT bears in connection with such withdrawal.
(ii) If, upon a Change of Control of FNT, FNT reasonably believes that
any FNT Trade Secrets primarily related to the business of FNT may
become available to a Competitor of FNT, FNT may withdraw from the
license granted hereunder such FNT Trade Secrets upon a reasonable
transition period for FNF to develop or acquire replacement know-how or
trade secrets, provided that FNT compensates FNF in full for any loss
or expenses that FNT bears in connection with such withdrawal.
(h) Survival. The terms of the last sentence of 2(g)(i) and all of Sections
4, 7, 8, 9, 10(e), 10(g), 10(h) and 11 shall survive termination of
this Agreement or any licenses or sublicenses granted hereunder.
11. MISCELLANEOUS PROVISIONS
(a) Relationship of the Parties. It is expressly understood and agreed that
FNF and FNT are not partners or joint venturers, and nothing contained
herein is intended to create an
16
agency relationship or a partnership or joint venture with respect to
rights granted herein. With respect to this Agreement, neither Party is
an agent of the other and neither Party has any authority to represent
or bind the other Party as to any matters, except as authorized herein
or in writing by such other Party from time to time.
(b) Employees. As between the Parties, each Party shall be responsible for
payment of compensation to its employees those of its subsidiaries, for
any injury to them in the course of their employment, and for
withholding or payment of all federal, state and local taxes or
contributions imposed or required under unemployment insurance, social
security and income tax laws with respect to such persons.
(c) Assignment. Neither Party may assign, transfer or convey any right,
obligation or duty, under this Agreement (other than those rights as
between the Parties explicitly set forth herein) without the prior
written consent of the other Party.
(d) Severability. In the event that any one or more of the provisions
contained herein shall for any reason be held to be unenforceable in
any respect under law, such unenforceability shall not affect any other
provision of this Agreement, and this Agreement shall be construed as
if such unenforceable provision or provisions had never been contained
herein.
(e) Third Party Beneficiaries. Subject to the final sentence of Section
11(j), the provisions of this Agreement are for the benefit of the
Parties and their affiliates and not for any other Person. However,
subject to the final sentence of Section 11(j), should any third party
institute proceedings, this Agreement shall not provide any such Person
with any remedy, claim, liability, reimbursement, cause of action, or
other right.
(f) Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of Florida, without giving effect
to such State's laws and principles regarding the conflict of laws.
Subject to Section 9, if any Dispute arises out of or in connection
with this Agreement, except as expressly contemplated by another
provision of this Agreement, the Parties irrevocably (a) consent and
submit to the exclusive jurisdiction of federal and state courts
located in Jacksonville, Florida, (b) waive any objection to that
choice of forum based on venue or to the effect that the forum is not
convenient and (c) WAIVE TO THE FULLEST EXTENT PERMITTED BY LAW ANY
RIGHT TO TRIAL OR ADJUDICATION BY JURY.
(g) Executed in Counterparts. This Agreement may be executed in
counterparts, each of which shall be an original, but such counterparts
shall together constitute but one and the same document. The Parties
may elect to rely upon facsimile signatures but shall promptly, at the
request of either Party at any time prior to the first anniversary
hereof, distribute to the other pages bearing holographic signatures in
all respects identical to those distributed by facsimile.
(h) Construction. The headings and numbering of articles, sections and
paragraphs in this Agreement are for convenience only and shall not be
construed to define or limit any of the terms or affect the scope,
meaning, or interpretation of this Agreement or the
17
particular Article or Section to which they relate. This Agreement and
the provisions contained herein shall not be construed or interpreted
for or against any Party because that Party drafted or caused its legal
representative to draft any of its provisions. The Exhibits and the
Schedules to this Agreement that are specifically referred to herein
are a part of this Agreement as if fully set forth herein. All
references herein to Articles, Sections, subsections, paragraphs,
subparagraphs, clauses, Exhibits and Schedules shall be deemed
references to such parts of this Agreement, unless the context shall
otherwise require. The inclusion of a matter or item in any Schedule to
this Agreement shall not, for any purpose of this Agreement, be deemed
to be the inclusion of such matter or item on any other Schedule to
this Agreement.
(i) Entire Agreement. Subject to Section 2(j), this Agreement, including
all attachments, constitutes the entire Agreement between the Parties
with respect to the subject matter hereof, and supersedes all prior
oral or written agreements, representations, statements, negotiations,
understandings, proposals and undertakings, with respect to the subject
matter hereof including any earlier license of item(s) of Intellectual
Property and Trade Secrets by and between a member of the FNF Group and
a member of the FNT Group.
(j) Amendments and Waivers. The Parties may amend this Agreement only by a
written agreement signed by each Party and that identifies itself as an
amendment to this Agreement. No waiver of any provisions of this
Agreement and no consent to any default under this Agreement shall be
effective unless the same shall be in writing and signed by or on
behalf of the Party against whom such waiver or consent is claimed. No
course of dealing or failure of any Party to strictly enforce any term,
right or condition of this Agreement shall be construed as a waiver of
such term, right or condition. Waiver by either Party of any default by
the other Party shall not be deemed a waiver of any other default.
(k) Remedies Cumulative. Unless otherwise provided for under this
Agreement, all rights of termination or cancellation, or other remedies
set forth in this Agreement, are cumulative and are not intended to be
exclusive of other remedies to which the injured Party may be entitled
by law or equity in case of any breach or threatened breach by the
other Party of any provision in this Agreement. Unless otherwise
provided for under this Agreement, use of one or more remedies shall
not bar use of any other remedy for the purpose of enforcing any
provision of this Agreement.
(l) Title 11. The licenses to Intellectual Property granted hereunder are,
for all purposes of Section 365(n) of Title 11 of the United States
Code ("Title 11 ") and to the fullest extent permitted by law, licenses
of rights to "intellectual property" as defined in Title 11. All
Parties agree that the licensee of any rights under this Agreement
shall retain and may fully exercise all of its applicable rights and
elections under Title 11.
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(m) UN Convention Disclaimed. The United Nations Convention on Contracts
for the International Sale of Goods is specifically excluded from
application to this Agreement.
IN WITNESS WHEREOF, the Parties have executed this Assignment as of the
date first above written.
FIDELITY NATIONAL FINANCIAL, INC.
By /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
-------------------------------------
▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Senior Vice President
FIDELITY NATIONAL TITLE GROUP, INC.
By /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
-------------------------------------
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Chief Executive Officer
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