EXHIBIT 10.3
INTELLECTUAL PROPERTY AGREEMENT
BETWEEN
EQUIFAX INC.
AND
CERTEGY INC.
JUNE 30, 2001
TABLE OF CONTENTS
ARTICLE I DEFINITIONS............................................................................... 3
Section 1.1. Definitions..................................................................... 3
ARTICLE II CONVEYANCE OF CERTAIN ASSETS; ASSUMPTION OF CERTAIN LIABILITIES.......................... 8
Section 2.1. Transferred Equifax Assets...................................................... 8
Section 2.2. Transferred Certegy Assets...................................................... 8
Section 2.3. Assumption of Liabilities....................................................... 9
Section 2.4. Completion of Transactions...................................................... 9
ARTICLE III THIRD PARTY AGREEMENTS.................................................................. 10
Section 3.1. Third Party Agreements.......................................................... 10
Section 3.2. Required Consents............................................................... 11
Section 3.3. Discharge of Liabilities........................................................ 12
ARTICLE IV LICENSED MATERIALS....................................................................... 12
Section 4.1. Grant of Licenses by Equifax.................................................... 12
Section 4.2. Ownership of Enhancements by Certegy............................................ 15
Section 4.3. License to Marks................................................................ 15
Section 4.4. Grant of License by Certegy..................................................... 16
Section 4.5. Ownership of Enhancements by Equifax............................................ 18
Section 4.6. Data............................................................................ 19
Section 4.7. Mutual Obligations.............................................................. 19
ARTICLE V THE CLOSING............................................................................... 21
Section 5.1. Equifax Deliverables............................................................ 21
Section 5.2. Certegy Deliverables............................................................ 21
ARTICLE VI REPRESENTATIONS AND WARRANTIES........................................................... 22
ARTICLE VII INDEMNIFICATION......................................................................... 22
Section 7.1. Certegy Indemnification of the Equifax Group.................................... 22
Section 7.2. Equifax Indemnification of the Certegy Group.................................... 23
Section 7.3. Insurance and Third Party Obligations........................................... 23
ARTICLE VIII INDEMNIFICATION PROCEDURES............................................................. 23
Section 8.1. Notice and Payment of Claims.................................................... 23
Section 8.2. Notice and Defense of Third Party Claims........................................ 23
ARTICLE IX CONFIDENTIALITY.......................................................................... 25
Section 9.1. Exclusions...................................................................... 25
Section 9.2. Confidentiality................................................................. 25
Section 9.3. Employee Confidentiality Agreements............................................. 26
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Section 9.4. Rights and Remedies............................................................. 27
Section 9.5. Competitive Activities.......................................................... 27
Section 9.6. No Implied Rights............................................................... 27
ARTICLE X CONTINUED ASSISTANCE...................................................................... 28
Section 10.1. Continued Assistance and Transition............................................. 28
Section 10.2. Records and Documents........................................................... 28
Section 10.3. Litigation Cooperation.......................................................... 29
ARTICLE XI MISCELLANEOUS............................................................................ 29
Section 11.1. Expenses........................................................................ 29
Section 11.2. Notices......................................................................... 29
Section 11.3. Amendment and Waiver............................................................ 30
Section 11.4. Entire Agreement................................................................ 30
Section 11.5. Parties in Interest............................................................. 31
Section 11.6. Further Assurances and Consents................................................. 31
Section 11.7. Severability.................................................................... 31
Section 11.8. Governing Law................................................................... 31
Section 11.9. Counterparts.................................................................... 31
Section 11.10. Disputes........................................................................ 32
Section 11.11. Force Majeure................................................................... 32
Section 11.12. Documentation................................................................... 32
Section 11.13. Headings........................................................................ 32
EXHIBIT A - CERTEGY GROUP
EXHIBIT B - TRANSFERRED EQUIFAX ASSETS
EXHIBIT C - EQUIFAX THIRD PARTY AGREEMENTS - TRANSFERS
EXHIBIT E - TRANSFERRED CERTEGY ASSETS
EXHIBIT F - CERTEGY THIRD PARTY AGREEMENTS - TRANSFERS
EXHIBIT G - CERTEGY THIRD PARTY AGREEMENTS - RIGHTS GRANTED
EXHIBIT H - SPECIFIED EQUIFAX LIABILITIES
EXHIBIT I - SPECIFIED CERTEGY LIABILITIES
EXHIBIT J - LICENSED EQUIFAX MATERIALS
EXHIBIT K - LICENSED CERTEGY MATERIALS
EXHIBIT L - UTILITY SOFTWARE PROGRAMS
EXHIBIT M - OTHER IP ASSETS
EXHIBIT N - PROJECTED MIPS
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EXHIBIT 99.5
INTELLECTUAL PROPERTY AGREEMENT
THIS INTELLECTUAL PROPERTY AGREEMENT ("Agreement"), dated as of June 30,
2001, is entered into by Equifax Inc., a Georgia corporation ("Equifax"), and
Certegy Inc., a Georgia corporation ("Certegy").
BACKGROUND
A. Certegy is a wholly owned subsidiary of Equifax formed among other
reasons for the purpose of taking title to the intellectual property assets and
assuming the associated liabilities related to the business operations of the
Certegy Group (as defined below).
B. The Board of Directors of Equifax has determined that it is in the best
interests of Equifax and its shareholders to transfer, assign and/or license to,
or acquire on behalf of, Certegy and Designated Certegy Members (defined below),
as part of the contribution to the capital of Certegy, certain intellectual
property assets used in the business operations of the Certegy Group as
described herein and currently utilized to operate the Certegy Business (as
defined below), and to receive in exchange therefor the consideration described
in the Distribution Agreement (as defined below).
C. The Board of Directors of Certegy has determined that it is in the best
interests of Certegy and its shareholders to transfer, assign and/or license to,
or acquire on behalf of, Equifax and Designated Equifax Members (defined below)
certain intellectual property assets.
D. The parties intend that the Distribution (as defined in the Distribution
Agreement) not be taxable to Equifax or its shareholders pursuant to Section 355
of the Code (as defined below).
E. Equifax and its Affiliates (defined below) own certain intellectual
property that is used in, or may be useful in, the conduct of the business
operations of the Equifax Group (defined below) and/or the Certegy Group.
Equifax and Certegy have determined that subject to the terms herein: (1)
ownership of certain of such intellectual property shall be transferred to the
entity specified in this Agreement on or before the Distribution Date (defined
below); (2) certain intellectual property owned by Equifax and/or its Affiliates
shall be licensed to the entity(ies) specified in this Agreement on or before
the Distribution Date; and (3) the respective rights and obligations of Equifax
and/or its Affiliates under certain Third Party Agreements (defined below) shall
be acquired, assumed or otherwise transferred to the entity(ies) specified in
this Agreement, subject to the consent of the applicable Third Party Provider
(defined below).
F. The parties have determined that it is necessary and desirable to
describe the principal transactions required to effect the allocation of their
respective intellectual property rights in conjunction with the Distribution and
to set forth other agreements that will govern certain other matters regarding
the parties' respective intellectual property rights following the Distribution.
NOW, THEREFORE, in consideration of the foregoing premises, the mutual
agreements and covenants contained in this Agreement, and other valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties agree as follows:
ARTICLE I
DEFINITIONS
Section 1.1. Definitions
As used herein, the following terms have the following meanings:
(a) "Action" means any claim, suit, arbitration, inquiry, proceeding or
investigation by or before any court, governmental or other regulatory or
administrative agency or commission or any other tribunal.
(b) "Affiliate" means, with respect to Equifax, any Person, which, whether
directly or indirectly, is Controlled by or is under common Control with Equifax
prior to the Distribution Date.
(c) "Certegy Business" means the businesses conducted by the members of the
Certegy Group as of the Distribution Date.
(d) "Certegy Continued Use Materials" means any and all IP Assets (other
than Transferred Assets) owned and/or held by a member of the Equifax Group that
satisfy each of the following criteria: (i) such IP Assets were used in the
Certegy Business during the twelve (12) calendar months prior to the
Distribution Date and for which a continuing business requirement exists on the
Distribution Date, and (ii) such IP Assets or the services, information or
deliverables produced with such IP Assets (A) are not made commercially
available by the Equifax Group to third parties on the Distribution Date, and
(B) are not made available to the Certegy Group after the Distribution Date
pursuant to the Intercompany Data Purchase Agreement or the Transition Support
Agreement.
(e) "Certegy Enhancements" means software and/or associated documentation
created by or for any member of the Certegy Group on or after the Closing Date,
that provides processing capabilities, functionality or efficiencies,
maintenance, bug fixes or updates not contained in the Transferred Equifax
Assets as of the Closing Date and which is intended for use with and requires a
portion of the Transferred Equifax Assets in order to function properly.
(f) "Certegy Group" means the entities set forth on Exhibit A and any of
their respective subsidiaries.
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(g) "Certegy Indemnitees" has the meaning given in Section 7.2.
(h) "Certegy Liabilities" means all unsatisfied Liabilities, whether
arising before, on or after the Distribution Date, based upon or arising out of
the ownership, use or possession by the Certegy Group of the Transferred Equifax
Assets, the Licensed Equifax Materials or the Equifax Marks.
(i) "Certegy Third Party Use Rights" means the rights granted to or secured
for Equifax or one or more Designated Equifax Members pursuant to Section
3.1(b)(ii).
(j) "Closing Date" means the Effective Time, as defined in the Distribution
Agreement.
(k) "Code" means the Internal Revenue Code of 1986, as amended.
(l) "Company Information" means collectively the Proprietary Information
and the Confidential Information of the disclosing party. Company Information
also includes information that has been disclosed to Equifax or any of its
Affiliates prior to the Distribution Date, or to any member of either Group
after the Distribution Date, by a third party subject to an obligation to treat
such information as confidential or secret.
(m) "Confidential Information" means any and all confidential business
information of the disclosing party that does not constitute Proprietary
Information and that is the subject of efforts by the disclosing party that are
reasonable under the circumstances to maintain its secrecy and confidentiality,
including without limitation, the existence and nature of the relationship
between the parties, employees of the disclosing party, and any and all
additional information disclosed by the disclosing party to the receiving party
as a result of the receiving party's access to and presence at the disclosing
party's facilities.
(n) "Control" means the ownership, directly or indirectly, of more than
fifty percent (50%) of the voting shares of an entity, or other possession,
directly or indirectly, of the power to direct or cause the direction of the
management and policies of an entity, or the power to veto major policy
decisions of any such entity, whether through the ownership of voting securities
by contract, or otherwise.
(o) "Derivative Work" means a work based on one or more pre-existing works,
including without limitation, a condensation, transformation, expansion or
adaptation, that would constitute a copyright infringement if prepared without
authorization of the owner of the copyright of such pre-existing work.
(p) "Designated Certegy Member" means a member of the Certegy Group, as
designated by Certegy in its sole discretion.
(q) "Designated Equifax Member" means a member of the Equifax Group, as
designated by Equifax in its sole discretion.
(r) "Disputes" has the meaning given in the Distribution Agreement.
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(s) "Distribution Agreement" means that certain Distribution Agreement
entered into on or prior to the Distribution Date between Equifax and Certegy,
as amended from time to time.
(t) "Distribution Date" means the day as of which the Distribution shall be
effective, as determined by the Board of Directors of Equifax, or such committee
of such Board of Directors as shall be designated by the Board of Directors of
Equifax.
(u) "Divested Business" means the sale or other transfer of a member of
either Group, or a portion of the business operations of any such member, to an
unrelated third party after the Distribution Date.
(v) "Equifax Business" means the businesses now or formerly conducted by
Equifax and its present and former Affiliates, other than the Certegy Business.
(w) "Equifax Continued Use Materials" means any and all IP Assets (other
than Transferred Assets) owned and/or held by a member of the Certegy Group that
satisfy each of the following criteria: (i) such IP Assets were used in the
Equifax Business during the twelve (12) calendar months prior to the
Distribution Date and for which a continuing business requirement exists on the
Distribution Date, and (ii) such IP Assets or the services, information or
deliverables produced with such IP Assets (A) are not made commercially
available by the Certegy Group to third parties on the Distribution Date, and
(B) are not made available to the Equifax Group after the Distribution Date
pursuant to the Intercompany Data Purchase Agreement or the Transition Support
Agreement.
(x) "Equifax Enhancements" means software and/or associated documentation
created by or for any member of the Equifax Group on or after the Closing Date,
that provides processing capabilities, functionality or efficiencies,
maintenance, bug fixes or updates not contained in the Transferred Certegy
Assets on the Closing Date and which is intended for use with and requires a
portion of the Transferred Certegy Assets in order to function properly.
(y) "Equifax Group" means Equifax and its Affiliates existing on the
Distribution Date and as modified from time to time thereafter, excluding all
members of the Certegy Group.
(z) "Equifax Indemnitees" has the meaning given in Section 7.1.
(aa) "Equifax Liabilities" means all unsatisfied Liabilities, whether
arising before, on or after the Distribution Date, based upon or arising out of
the ownership, use or possession by the Equifax Group of the Transferred Certegy
Assets or the Licensed Certegy Materials.
(bb) "Equifax Marks" mean the Marks owned by Equifax or its Affiliates.
(cc) "Equifax Third Party Use Rights" means the rights granted to or
secured for Certegy or one or more Designated Certegy Members pursuant to
Section 3.1(a)(ii).
(dd) "Group" means the Certegy Group and/or the Equifax Group.
(ee) "Indemnifiable Losses" has the meaning given in Section 7.1.
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(ff) "Indemnified Party" has the meaning given in Section 8.1.
(gg) "Indemnifying Party" has the meaning given in Section 8.1.
(hh) "Intercompany Data Purchase Agreement" means that certain Intercompany
Data Purchase Agreement entered into on or prior to the Distribution Date
between Equifax and Certegy, as amended from time to time.
(ii) "IP Assets" means all intellectual property rights in and to any
ideas, trade secrets, specifications, designs, masks, mask works, copyrights,
patents, Marks and other proprietary rights, of every kind and description,
wherever located, including without limitation, all electronic circuit designs,
works of authorship, databases, compositions of matter, computer software
(whether such computer software constitutes custom software, firmware or systems
created by, or for the exclusive use of either party, or otherwise), algorithms,
and works of authorship expressing such algorithms.
(jj) "Liabilities" means any and all claims, debts, liabilities and
obligations, absolute or contingent, matured or not matured, liquidated or
unliquidated, accrued or unaccrued, known or unknown, whenever arising, with
respect to a specified object, matter, contract, commitment or undertaking,
including without limitation, all claims, debts, liabilities and obligations
arising under any law, rule, regulation, action, order or consent decree of any
governmental entity or any award of any arbitrator of any kind, related thereto
or arising under any contract, commitment or undertaking relating to such
specified object, matter, contract, commitment or undertaking.
(kk) "Licensed Certegy Materials" means those IP Assets identified on
Exhibit K and the Equifax Continued Use Materials.
(ll) "Licensed Equifax Materials" means those IP Assets identified on
Exhibit J and the Certegy Continued Use Materials.
(mm) "Licensed Materials" means the Licensed Certegy Materials and/or
Licensed Equifax Materials.
(nn) "Marks" means trademarks, service marks, domain names, tradenames, and
other slogans, designs and distinctive advertising, whether or not registered or
filed with any governmental agency.
(oo) "Person" means an individual, partnership, joint venture, association,
corporation, limited liability company, trust or any other legal entity.
(pp) "Proprietary Information" means all non-public information whether
tangible or intangible related to the services or business of the disclosing
party that (i) derives economic value, actual or potential, from not being
generally known to or readily ascertainable by another Person who can obtain
economic value from its disclosure or use; and (ii) is the subject of efforts by
the disclosing party that are reasonable under the circumstances to maintain its
secrecy, including without limitation, (A) marking any information reduced to
tangible form clearly and conspicuously with a legend identifying its
confidential or proprietary nature; (B) identifying any
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oral communication as confidential immediately before, during, or after such
oral communication; or (C) otherwise treating such information as confidential
or secret. Assuming the criteria in clauses (i) and (ii) above are met,
Proprietary Information includes information, without regard to form, including,
but not limited to, technical and nontechnical data, databases, formulas,
patterns, designs, compilations, computer programs and software, devices,
inventions, methods, techniques, drawings, processes, financial data, financial
plans, product plans, lists of actual or potential customers and suppliers
(which are not commonly known by or available to the public), research,
development, and existing and future products.
(qq) "Related Agreements" means all of the written agreements, instruments,
understandings, assignments or other arrangements entered into in connection
with the transactions contemplated hereby (other than this Agreement), including
without limitation, the Distribution Agreement, Intercompany Data Purchase
Agreement and Transition Support Agreement.
(rr) "Representatives" means, individually and collectively, officers,
directors, employees, agents, and/or independent contractors of each member of
the Group.
(ss) "Required Consents" means any consents or approvals required to be
obtained (i) to allow the transfer of any assets to and the assumption of the
obligations attendant therewith by a party and release of the transferring party
from such obligations; (ii) to allow a party to assume financial, support,
operational, management and/or administrative responsibility for the Third Party
Rights utilized in the operation of the Equifax Business or Certegy Business,
respectively; (iii) for the licensing, acquiring, transfer and/or grant of the
rights to the Equifax Group or Certegy Group, respectively, to use the Third
Party Rights as contemplated by this Agreement; and/or (iv) for a party to have
access to and use of the space, equipment, software and/or third party services
provided under the Third Party Agreements entered into by the other party as
contemplated by this Agreement.
(tt) "Third Party Agreements" means agreements, contracts or arrangements
between Equifax and/or its Affiliates, on the one hand, and a Third Party
Provider, on the other.
(uu) "Third Party Claim" has the meaning given in Section 8.2.
(vv) "Third Party Provider" means a Person other than a member of either
Group that provides products, software, services, maintenance and/or support to
Equifax or one or more of its Affiliates.
(ww) "Third Party Rights" means rights granted to Equifax and/or its
Affiliates pursuant to a Third Party Agreement, including (i) all service,
support and maintenance rights related thereto or attendant therewith, and (ii)
all contractual rights, commitments, undertakings and obligations (including
service, data processing, support and maintenance rights and obligations)
attendant therewith or directly related thereto.
(xx) "Third Party Use Rights" means the respective Equifax Third Party Use
Rights and Certegy Third Party Use Rights.
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(yy) "Transferred Assets" means the Transferred Equifax Assets and
Transferred Certegy Assets.
(zz) "Transferred Equifax Assets" means the assets to be acquired on behalf
of, or transferred to, Certegy or one or more Designated Certegy Members as
described in Section 2.1.
(aaa) "Transferred Equifax Third Party Agreements" means the Third Party
Agreements, the rights and obligations of which are to be acquired on behalf of,
or transferred to, Certegy or one or more Designated Certegy Members pursuant to
Section 3.1(a)(i).
(bbb) "Transferred Certegy Assets" means the assets to be acquired on
behalf of, or transferred to, Equifax or the one or more Designated Equifax
Members as described in Section 2.2.
(ccc) "Transferred Certegy Third Party Agreements" means the Third Party
Agreements, the rights and obligations of which are to be acquired on behalf of,
or transferred to, Equifax or one or more Designated Equifax Members pursuant to
Section 3.1(b)(i).
(ddd) "Transferred Third Party Agreements" means the respective Transferred
Equifax Third Party Agreements and/or the Certegy Transferred Third Party
Agreements.
(eee) "Transition Support Agreement" means that certain Transition Support
Agreement entered into on or prior to the Distribution Date between Equifax and
Certegy, as amended from time to time.
(fff) "Utility Software Programs" means the software programs set forth on
Exhibit L.
ARTICLE II
CONVEYANCE OF CERTAIN ASSETS; ASSUMPTION OF CERTAIN LIABILITIES
Section 2.1. Transferred Equifax Assets.
Effective as of the Closing Date, and subject to Sections 2.3 and 2.4 and
Article III hereof, Equifax agrees, at its expense, to transfer, or cause to be
transferred, to Certegy or to a Designated Certegy Member all right, title and
interest held by Equifax and/or its Affiliates as of the Closing Date in and to
each of the assets identified on Exhibit B hereto, subject to the retained
rights described therein. Except as set forth on Exhibit B, no other assets
(other than Transferred Equifax Third Party Agreements) are being transferred by
Equifax (or a member of the Equifax Group) pursuant to this Agreement.
Section 2.2. Transferred Certegy Assets.
Effective as of the Closing Date, and subject to Sections 2.3 and 2.4 and
Article III hereof, Certegy agrees to transfer, or cause to be transferred, to
Equifax or to a Designated Equifax Member all right, title and interest held by
the members of the Certegy Group as of the Closing Date in and to each of the
assets identified on Exhibit E, subject to the retained rights
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described therein. Except as set forth on Exhibit E, no other assets (other than
Transferred Certegy Third Party Agreements) are being transferred by Certegy (or
a member of the Certegy Group) pursuant to this Agreement. The expenses payable
to third parties that are not members of either Group to effect such transfers
shall be the financial responsibility of Equifax.
Section 2.3. Assumption of Liabilities.
(a) As of the Closing Date, Equifax shall, or shall cause the respective
Designated Equifax Member to, assume all payment and performance obligations
attendant with the Transferred Certegy Assets and the Equifax Liabilities,
including, without limitation, the Liabilities identified on Exhibit H.
(b) As of the Closing Date, Certegy shall, or shall cause the respective
Designated Certegy Member to, assume all payment and performance obligations
attendant with the Transferred Equifax Assets and the Certegy Liabilities,
including, without limitation, the Liabilities identified on Exhibit I.
Section 2.4. Completion of Transactions.
(a) In the event that any conveyance of a Transferred Asset, Transferred
Third Party Agreement, or the provision of a Third Party Right or Third Party
Use Right, or assumption of any Liability, required by this Agreement is not
effected on or before the Closing Date, the obligation to transfer such
Transferred Asset or Transferred Third Party Agreement, provide such Third Party
Right or Third Party Use Right, and assume such Liability shall continue past
the Closing Date and shall be effected by the parties as soon thereafter as
practicable; provided, however, that neither party shall be obligated under this
paragraph to transfer any Transferred Third Party Agreement and/or provide Third
Party Use Rights that either (i) did not exist as of the Closing Date or (ii)
are no longer required by the party who is the intended transferee of the
respective Third Party Agreement or is entitled to receive the Third Party Use
Rights for the continued operation of such party's business.
(b) If any Transferred Asset or Transferred Third Party Agreement may not
be transferred or acquired by reason of a requirement to obtain a Required
Consent or any other approval of any third party and such Required Consent or
other approval has not been obtained by the Closing Date, then such Transferred
Asset or Transferred Third Party Agreement shall not be transferred or acquired
until such Required Consent or other approval has been obtained. Equifax and
Certegy shall, and as the case may be, shall cause the member of its respective
Group which is the holder of such Transferred Asset or Transferred Third Party
Agreement prior to transfer, to use all reasonable efforts to provide to the
applicable member of the other Group all the rights and benefits under such
Transferred Asset or Transferred Third Party Agreement and to cause such holder
to enforce such Transferred Asset or Transferred Third Party Agreement for the
benefit of such member of the other Group; provided, however, that the foregoing
obligation shall not, in any way, require Equifax, Certegy or any member of a
respective Group to breach any Transferred Third Party Agreement or incur or
suffer any liability with respect to any Transferred Third Party Agreement.
Moreover, if any transfer of a Transferred Asset or Transferred Third Party
Agreement or provision of a Third Party Right or Third Party Use Right, is not
completed by the Closing Date in accordance with this Agreement for any reason,
each of
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Equifax and Certegy shall, and shall cause the members of its Group to,
cooperate in achieving a reasonable alternative arrangement for the affected
members of the Groups to obtain the economic and operational equivalent of the
intended transfer of such Transferred Asset or Third Party Agreement and/or
provision of such Third Party Right or Third Party Use Right, and assumption of
the attendant Liabilities, with minimum interference to such members' business
operations until such transfer of such Transferred Asset or Third Party
Agreement, and/or provision of such Third Party Right or Third Party Use Right,
is completed. The costs payable to third parties that are not members of either
Group to achieve any such reasonable alternative arrangement shall be the
financial responsibility of Equifax.
(c) From time to time on and after the Closing Date, each party shall
promptly transfer, and cause the appropriate members of its Group promptly to
transfer, to the other party, or the designated member of the other party's
Group, any property and other benefits received by such party, or the members of
its Group, that are intended to be or are a Transferred Asset or Transferred
Third Party Agreement of the other party under this Agreement. Without limiting
the foregoing, funds received by a member of either Group that belong to a
member of the other Group (whether by payment of accounts receivable, credits,
rebates or other amounts, however described) shall be delivered to the other
Group by wire transfer not more than five (5) business days after receipt of
such payment.
ARTICLE III
THIRD PARTY AGREEMENTS
Section 3.1. Third Party Agreements.
(a) Effective as of the Closing Date, Equifax shall (i) transfer, or cause
to be transferred, to Certegy or a Designated Certegy Member, or acquire on
Certegy's behalf, the rights and obligations of Equifax and its Affiliates in
and to the Third Party Agreements identified on Exhibit C (including all Third
Party Rights related thereto) and (ii) grant rights to or secure rights
(including rights as an "authorized user") for Certegy or a Designated Certegy
Member under the Third Party Agreements identified on Exhibit D, in each case,
subject to the respective payment obligations or other terms set forth on
Exhibit C and Exhibit D.
(b) Effective as of the Closing Date, Certegy shall (i) transfer, or cause
to be transferred, to Equifax or a Designated Equifax Member, or acquire on
Equifax's behalf, the rights and obligations of the members of the Certegy Group
in and to the Third Party Agreements identified on Exhibit F (including all
Third Party Rights related thereto) and (ii) grants rights to or secure rights
(including rights as an "authorized user") for Equifax or a Designated Equifax
Member under the Third Party Agreements identified on Exhibit G, in each case,
subject to the respective payment obligations or other terms set forth on
Exhibit F and Exhibit G.
(c) Unless as expressly provided hereunder, neither party shall have any
obligation to transfer, have transferred or acquire any Third Party Rights or
Third Party Use Rights for or on behalf of the other party.
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(d) Without limiting each party's specific obligations pursuant hereto (or
in any separate agreement) with respect to Third Party Rights and Third Party
Use Rights, each of Certegy and Equifax agrees to, in connection with its use
of, exploitation of and performance pursuant to any Third Party Rights or Third
Party Use Rights, including, without limitation, such party's rights to use,
copy, exploit, distribute, display, copy and sublicense any software secured for
or granted to such party pursuant to such Third Party Rights or Third Party Use
Rights, comply with the terms, scope, restrictions and provisions (including,
without limitation, usage limitations) of any Third Party Rights or Third Party
Agreements that govern such Third Party Rights or Third Party Use Rights. A
failure to comply with this paragraph shall constitute a breach of this
Agreement.
Section 3.2. Required Consents.
(a) Equifax with respect to Transferred Equifax Third Party Agreements and
Equifax Third Party Use Rights, and Certegy with respect to Transferred Certegy
Third Party Agreements and Certegy Third Party Use Rights, shall, or shall cause
the appropriate member of its respective Group to, use its reasonable commercial
efforts to obtain the grant to the applicable member of the other Group, the
Required Consents from the Third Party Providers under such respective Third
Party Agreements as necessary to effect the provisions of this Agreement. Each
party will provide the other party with advice on its experience and agreements
with the Third Party Providers with regard to obtaining any Required Consent
under such Third Party Agreements. Equifax and Certegy will each have management
and administrative responsibilities for obtaining all Required Consents required
as of the Closing Date to which a member of its respective Group is a party.
Equifax shall have the right of prior approval of the terms upon which all
Required Consents are obtained.
(b) Except as otherwise provided in Section 3.1 and the exhibits referenced
therein, Equifax shall bear the costs payable to third parties that are not
members of either Group, if any, of obtaining all Required Consents, including
without limitation, all charges and fees related to obtaining the Required
Consents for the Transferred Third Party Agreements and Third Party Use Rights.
(c) Equifax and Certegy shall use reasonable commercial efforts to obtain
all Required Consents with regard to Transferred Third Party Agreements and
Third Party Use Rights within one hundred eighty (180) days after the Closing
Date, unless otherwise agreed by the parties in writing. Until all Required
Consents are obtained, Equifax and Certegy shall each periodically publish a
list setting forth the status of each Required Consent for which a member of its
respective Group is the contracting party immediately prior to the Closing Date.
Equifax and Certegy shall timely cooperate with each other in order to
facilitate the proper and timely publication of such periodic Required Consents
list. If any Required Consent is not obtained with respect to any of the Third
Party Agreements or Third Party Use Rights, the parties shall cooperate with
each other in achieving a reasonable alternative arrangement for the affected
Group to continue to process its work with minimum interference to its business
operations until such Required Consents are obtained, including without
limitation, implementing the provisions of Section 2.4(b). Except as otherwise
provided in Section 3.1 and the exhibits referenced therein, the cost payable to
third parties that are not members of either Group of achieving such
10
reasonable alternative arrangements with respect to Third Party Rights that are
a part of the Transferred Assets or Transferred Third Party Agreements shall be
borne by Equifax.
(d) The financial obligations of Equifax under Sections 3.2(b) and (c) for
Required Consents and alternative arrangements, shall terminate with respect to
all such Required Consents and alternative arrangements not identified by the
parties to each other in a writing within twelve (12) months after the Closing
Date, and for all Required Consents and alternative arrangements identified
thereafter, all such financial obligations shall be borne by the party needing
the Required Consent or alternative arrangement to operate under or take
assignment of the Third Party Agreement or to obtain such Third Party Right for
which such Required Consent or alternative arrangement is required.
(e) For all periods after the Closing Date, except as set forth in Sections
3.2(b) and 3.2(c) for Required Consents and alternative arrangements, Equifax
and Certegy shall each bear financial responsibility and pay the Third Party
Providers, under all Transferred Third Party Agreements transferred to its
respective Group pursuant to Sections 3.1(a)(i) and 3.1(b)(i) above.
Section 3.3. Discharge of Liabilities.
(a) Certegy agrees that on and after the Closing Date it will timely pay,
perform and discharge, or cause to be timely paid, performed and discharged, all
of the Certegy Liabilities.
(b) Equifax agrees that on and after the Closing Date it will timely pay,
perform and discharge, or cause to be timely paid, performed and discharged, all
of the Equifax Liabilities.
ARTICLE IV
LICENSED MATERIALS
Section 4.1. Grant of Licenses by Equifax.
(a) Equifax hereby grants, and will cause the other members of the Equifax
Group to grant, to Certegy a fully paid, non-exclusive, perpetual, worldwide,
non-transferable license to use, modify, copy, improve, create Derivative Works
and Certegy Enhancements from, and sublicense the Licensed Equifax Materials
(excluding the Utility Software Programs) solely for use in the Certegy Business
and as that business may evolve and change in the future, subject to the
following:
(i) Certegy shall not sublicense, or otherwise disclose or
distribute, or permit any Person to use, the Licensed Equifax
Materials (excluding the Utility Software Programs), except in
accordance with Section 4.1(b);
(ii) Certegy shall hold the Licensed Equifax Materials (excluding the
Utility Software Programs) in strict confidence; will not remove
or destroy any proprietary markings of the Equifax Group on or
contained in the Licensed Equifax Materials (excluding the
Utility
11
Software Programs); and will include the copyright and patent
notices of the licensor as specified from time to time by the
licensor for the Licensed Equifax Materials (excluding the
Utility Software Programs) on and in all copies of the Licensed
Equifax Materials (excluding the Utility Software Programs);
(iii) Certegy shall not export or re-export the Licensed Equifax
Materials (excluding the Utility Software Programs) without the
appropriate United States or foreign government licenses; and
(iv) all sublicenses from Certegy to members of the Certegy Group (A)
shall contain the rights and restrictions set forth in this
Section 4.1(a) with respect to the license granted to Certegy
and comply with Sections 4.1(b) through (d) hereof and (B) shall
be diligently enforced by Certegy.
(b) The sublicense rights granted to Certegy pursuant to Section 4.1(a)
include the right for Certegy to grant sublicenses to the Licensed Equifax
Materials (excluding the Utility Software Programs) to the members of the
Certegy Group, which sublicenses may include the right to further sublicense
such Licensed Equifax Materials (excluding the Utility Software Programs) to
such Group member's customers solely for each such customer's internal business
purposes to the extent related to the Certegy Business. All sublicensing by
Certegy and other members of the Certegy Group to any one of their customers
shall be pursuant to written agreements with such customer, executed before or
at the time of furnishing each copy of the Licensed Equifax Materials (excluding
the Utility Software Programs) to such customer, and which provide at a minimum
that such customer:
(i) receives only a personal, non-transferable and nonexclusive
right to use such copy of the Licensed Equifax Materials
(excluding the Utility Software Programs);
(ii) receives no title in the intellectual property contained in the
Licensed Equifax Materials (excluding the Utility Software
Programs);
(iii) will not copy the Licensed Equifax Materials (excluding the
Utility Software Programs), except as necessary to use such
Licensed Equifax Materials (excluding the Utility Software
Programs) in accordance with the license grant and to make one
archival copy;
(iv) will not export or re-export the Licensed Equifax Materials
(excluding the Utility Software Programs) without the
appropriate United States or foreign government licenses;
(v) will hold the Licensed Equifax Materials (excluding the Utility
Software Programs) in confidence; will not reverse compile or
disassemble the Licensed Equifax Materials (excluding the
Utility
12
Software Programs); will not remove or destroy any proprietary
markings of the licensor on or contained in the Licensed Equifax
Materials (excluding the Utility Software Programs), and will
include the copyright and patent notices of the licensor as
specified from time to time by the licensor for the Licensed
Equifax Materials (excluding the Utility Software Programs) on
and in all copies of the Licensed Equifax Materials (excluding
the Utility Software Programs); and
(vi) will not sublicense, assign or otherwise transfer the Licensed
Equifax Materials (excluding the Utility Software Programs) to
any other Person.
(c) In the event any member of the Certegy Group sublicenses any portion of
the Licensed Equifax Materials (excluding the Utility Software Programs) to any
third party pursuant to Section 4.1(a) and (b) above, Certegy agrees to ensure
that such member shall diligently enforce the terms and conditions of all
sublicenses granted pursuant to this Section 4.1.
(d) In the event that Certegy, or another member of the Certegy Group,
shall enter into a Divested Business transaction with respect to the Certegy
Group, and the scope of permitted use or other terms applicable to the Licensed
Equifax Materials (excluding the Utility Software Programs) under the license or
sublicenses granted in this Section 4.1 are required to be modified to effect
such transaction, Equifax will, or will cause the sublicensor under the
applicable sublicense to, agree to such modifications to the extent (i) required
for the transaction to be effected and (ii) not materially detrimental to the
interests of the Equifax Group. Such modifications shall not be effective until
the Divested Business or the acquiror thereof, as required by Equifax, has
entered into a license agreement with the appropriate member of the Equifax
Group incorporating the terms of Section 4.1 and Section 4.2 and such other
terms as Equifax reasonably deems appropriate for the protection of its
interests in the Licensed Equifax Materials.
(e) Without limiting the foregoing, Equifax hereby grants, and will cause
the other members of the Equifax Group to grant, to Certegy a fully paid, non-
exclusive, perpetual, worldwide, transferable license to use, modify, improve,
create Derivative Works from, and sublicense, the Utility Software Programs (in
both object and source code format) identified on Exhibit L as being owned by
Equifax or a member of the Equifax Group for any and all fields of use and to
any and all Persons.
(f) The Licensed Equifax Materials may be marketed under such name and in
such manner as Certegy chooses, consistent with the terms and conditions of this
Agreement.
(g) Except for the Certegy Group's rights described in Section 4.1(a), (b)
and (e) above, the Equifax Group's rights in and to the Licensed Equifax
Materials shall be and remain the exclusive property of Equifax or the members
of the Equifax Group, and their respective successors and assigns.
13
Section 4.2. Ownership of Enhancements by Certegy.
(a) Unless Exhibit J provides otherwise, Certegy, or the respective
Designated Certegy Member, shall own all the modifications and improvements to,
and the Certegy Enhancements and/or Derivative Works made from, the Licensed
Equifax Materials developed by any member of the Certegy Group, or by any party
other than a member of the Equifax Group at the expense of the Certegy Group.
Equifax hereby assigns, and shall cause each member of the Equifax Group to
assign, to Certegy, or the respective Designated Certegy Member, all right,
title and interest it may hold in and to such modifications, improvements,
Certegy Enhancements and Derivative Works. Certegy shall, or shall cause the
respective Designated Certegy Member to, have the right to make and file all
applications and other documents required to register the copyright(s) and file
for patents for such modifications, improvements, Certegy Enhancements and
Derivative Works in its discretion and at its sole cost and expense.
(b) Should Certegy elect to file any application for the registration,
perfection or protection of any modifications, improvements, Certegy
Enhancements or Derivative Works described in Section 4.2(a), under any
copyright, patent or other law of any country or jurisdiction, Equifax will, at
the request and expense of Certegy, do all things and sign all documents or
instruments reasonably necessary in the opinion of Certegy to assist in the
registration of such claims, file such applications, and obtain, defend and
enforce such copyright, patent, mask work and other rights.
(c) Subject to the license rights granted in Section 4.1, as between the
parties. the Licensed Equifax Materials shall be and shall remain the sole and
exclusive property of the Equifax Group and the members of the Equifax Group may
make any internal use and may commercially exploit any enhancements to the
Licensed Materials made or caused to be made by members of the Equifax Group, as
they shall deem appropriate without any obligation to any member of the Certegy
Group or other restriction. The Equifax Group may in particular distribute and
manufacture, or cause to be manufactured or distributed by any third party, any
such enhancements and/or the Licensed Equifax Materials.
Section 4.3. License to Marks.
(a) Equifax hereby grants, and will cause each member of the Equifax Group
to grant, to Certegy and each member of the Certegy Group a fully paid, non-
exclusive, worldwide, non-transferable right to continue to use the Equifax
Marks employed in the Certegy Business, but only to the extent such Equifax
Marks were displayed by the Certegy Group prior to the Distribution Date (i) on
the Transferred Equifax Assets, (ii) on premises jointly occupied with Equifax,
and (iii) on letterhead, product and services documentation, invoices, software
programs, packaging and similar materials used by the members of the Certegy
Group, and such Equifax Marks are used in accordance with the guidelines for
usage of the Equifax Marks published and amended by Equifax from time to time.
Certegy will terminate the use of such Equifax Marks as soon as commercially
practical but in any event within twelve (12) months after the Closing Date.
(b) Certegy hereby grants, and will cause each member of the Certegy Group
to grant, to Equifax and each member of the Equifax Group a fully paid, non-
exclusive, worldwide, non-
14
transferable right to continue to use the Marks that were owned immediately
prior to the Distribution Date by a member of the Certegy Group and employed in
the Equifax Business, but only to the extent such Marks were displayed by the
Equifax Group prior to the Distribution Date (i) on assets owned by Equifax or
any member of the Equifax Group (other than the Transferred Assets), (ii) on
premises jointly occupied with one or more members of the Certegy Group, and
(iii) on letterhead, product and services documentation, invoices, software
programs, packaging and similar materials used by the members of the Equifax
Group, and such Marks are used in accordance with the same guidelines for usage
as the Equifax Marks as described in subsection (a) above. Equifax will
terminate the use of such Marks as soon as commercially practical but in any
event within twelve (12) months after the Distribution Date.
Section 4.4. Grant of License by Certegy.
(a) Certegy hereby grants, and will cause the other members of the Certegy
Group to grant, to Equifax a fully paid, non-exclusive, perpetual, worldwide,
non-transferable license to use, modify, copy, improve, create Derivative Works
and Equifax Enhancements from, and sublicense the Licensed Certegy Materials
(excluding the Utility Software Programs) solely for use in the Equifax Business
and as that business may evolve and change in the future, subject to the
following:
(i) Equifax shall not sublicense, or otherwise disclose or
distribute, or permit any Person to use, the Licensed Certegy
Materials (excluding the Utility Software Programs), except in
accordance with Section 4.4(b);
(ii) Equifax shall hold the Licensed Certegy Materials (excluding the
Utility Software Programs) in strict confidence; will not remove
or destroy any proprietary markings of the Certegy Group on or
contained in the Licensed Certegy Materials (excluding the
Utility Software Programs); and will include the copyright and
patent notices of the licensor as specified from time to time by
the licensor for the Licensed Certegy Materials (excluding the
Utility Software Programs) on and in all copies of the Licensed
Certegy Materials (excluding the Utility Software Programs);
(iii) Equifax shall not export or re-export the Licensed Certegy
Materials (excluding the Utility Software Programs) without the
appropriate United States or foreign government license; and
(iv) all sublicenses from Equifax to members of the Equifax Group (A)
shall contain the rights and restrictions set forth in this
Section 4.4(a) with respect to the license granted to Equifax
and comply with Sections 4.4(b) through (d) hereof and (B) shall
be diligently enforced by Equifax.
(b) The sublicense rights granted to Equifax pursuant to Section 4.4(a)
include the right for Equifax to grant sublicenses to the Licensed Certegy
Materials (excluding the Utility
15
Software Programs) to the members of the Equifax Group, which sublicenses may
include the right to further sublicense such Licensed Certegy Materials
(excluding the Utility Software Programs) to such Group member's customers
solely for each such customer's internal business purposes to the extent related
to the Equifax Business. All sublicensing by Equifax and other members of the
Equifax Group to any one of their customers shall be pursuant to written
agreements with such customer, executed before or at the time of furnishing each
copy of the Licensed Certegy Materials (excluding the Utility Software Programs)
to such customer, and which provide at a minimum that such customer:
(i) receives only a personal, non-transferable and nonexclusive
right to use such copy of the Licensed Certegy Materials
(excluding the Utility Software Programs);
(ii) receives no title in the intellectual property contained in the
Licensed Certegy Materials (excluding the Utility Software
Programs);
(iii) will not copy the Licensed Certegy Materials (excluding the
Utility Software Programs), except as necessary to use such
Licensed Certegy Materials (excluding the Utility Software
Programs) in accordance with the license grant and to make one
archival copy;
(iv) will not export or re-export the Licensed Certegy Materials
(excluding the Utility Software Programs) without the
appropriate United States or foreign government licenses;
(v) will hold the Licensed Certegy Materials (excluding the Utility
Software Programs) in confidence; will not reverse compile or
disassemble the Licensed Certegy Materials (excluding the
Utility Software Programs); will not remove or destroy any
proprietary markings of the licensor on or contained in the
Licensed Certegy Materials (excluding the Utility Software
Programs); and will include the copyright and patent notices of
the licensor as specified from time to time by the licensor for
the Licensed Certegy Materials (excluding the Utility Software
Programs) on and in all copies of the Licensed Certegy Materials
(excluding the Utility Software Programs); and
(vi) will not sublicense, assign or otherwise transfer the Licensed
Certegy Materials (excluding the Utility Software Programs) to
any other Person.
(c) In the event any member of the Equifax Group sublicenses any portion of
the Licensed Certegy Materials (excluding the Utility Software Programs) to any
third party pursuant to Section 4.4(a) and (b) above, Equifax agrees to ensure
that such member shall diligently enforce the terms and conditions of all
sublicenses granted pursuant to this Section 4.4.
16
(d) In the event that Equifax, or another member of the Equifax Group,
shall enter into a Divested Business transaction with respect to the Equifax
Group, and the scope of permitted use or other terms applicable to the Licensed
Certegy Materials (excluding the Utility Software Programs) under the license or
sublicenses granted in this Section 4.4 are required to be modified to effect
such transaction, Certegy will, or will cause the sublicensor under the
applicable sublicense to, agree to such modifications to the extent (i) required
for the transaction to be effected and (ii) not materially detrimental to the
interests of the Certegy Group. Such modifications shall not be effective until
the Divested Business or the acquiror thereof, as required by Certegy, has
entered into a license agreement with the appropriate member of the Certegy
Group incorporating the terms of Section 4.4 and Section 4.5 and such other
terms as Certegy reasonably deems appropriate for the protection of its
interests in the Licensed Certegy Materials.
(e) Without limiting the foregoing, Certegy hereby grants, and will cause
the other members of the Certegy Group to grant, to Equifax a fully paid, non-
exclusive, perpetual, worldwide, transferable license to use, modify, improve,
create Derivative Works from, and sublicense, the Utility Software Programs (in
both object and source code format) identified on Exhibit L as being owned by
Certegy or a member of the Certegy Group for any and all fields of use and to
any and all Persons.
(f) The Licensed Certegy Materials may be marketed under such name and in
such manner as Equifax chooses, consistent with the terms and conditions of this
Agreement.
(g) Except for the Equifax Group's rights described in Section 4.4(a), (b)
and (e) above, the Certegy Group's rights in and to the Licensed Certegy
Materials shall be and remain the exclusive property of Certegy or the
respective Designated Certegy Member.
Section 4.5. Ownership of Enhancements by Equifax.
(a) Unless Exhibit K provides otherwise, Equifax, or the respective
Designated Equifax Member, shall own all the modifications and improvements to,
and the Equifax Enhancements and/or Derivative Works made from, the Licensed
Certegy Materials developed by any member of the Equifax Group, or by any party
other than a member of the Certegy Group at the expense of the Equifax Group.
Certegy hereby assigns, and shall cause each member of the Certegy Group to
assign, to Equifax, or the respective Designated Equifax Member, all right,
title and interest it may hold in and to such modifications, improvements,
Equifax Enhancements and Derivative Works. Equifax shall, or shall cause the
respective Designated Equifax Member to, have the right to make and file all
applications and other documents required to register the copyright(s) and file
for patents for such modifications, improvements, Equifax Enhancements and
Derivative Works in its discretion and at its sole cost and expense.
(b) Should Equifax elect to file any application for the registration,
perfection or protection of any modifications, improvements, Equifax
Enhancements or Derivative Works described in Section 4.5(a), under any
copyright, patent or other law of any country or jurisdiction, Certegy will, at
the request and expense of Equifax, do all things and sign all documents or
instruments reasonably necessary in the opinion of Equifax to assist in the
17
registration of such claims, file such applications, and obtain, defend and
enforce such copyright, patent, mask work and other rights.
(c) Subject to the license rights granted in Section 4.4, as between the
parties, the Licensed Certegy Materials shall be and shall remain the sole and
exclusive property of the Certegy Group and the members of the Certegy Group may
make any internal use and may commercially exploit any enhancements to the
Licensed Materials made or caused to be made by members of the Equifax Group, as
they shall deem appropriate without any obligation to any member of the Equifax
Group or other restriction. The Certegy Group may in particular distribute and
manufacture, or cause to be manufactured or distributed by any third party, any
such enhancements and/or Licensed Certegy Materials.
Section 4.6. Data.
In no event shall any member of either Group be deemed to have been granted
any rights under this Agreement in or to any data owned or maintained by any
other member of the other Group, except as specifically provided in Sections 2.1
or 2.2. The respective rights of the members of each Group in and to such data
shall be governed exclusively by Sections 2.1 or 2.2 and the Intercompany Data
Purchase Agreement.
Section 4.7. Mutual Obligations.
(a) The parties agree and acknowledge that, in addition to the rights
granted or to be granted to the parties herein, certain other rights to software
source code, object code and documentation, and trademarks and service marks
related thereto, are described on Exhibit M.
(b) The parties acknowledge and agree that as of the Closing Date, the UK
mainframe environment, consisting of mainframe computer hardware ("Mainframe
Hardware") and certain third party software ("OEM Software"), currently consists
of three (3) logical partitions ("LPARs"), two (2) of which are shared between
Equifax and Certegy. The parties acknowledge and agree that certain OEM Software
("MIPS-Based Software") being used on the Mainframe Hardware contains
limitations based upon the number of millions of instructions per second
("MIPS") performed; other OEM Software ("CPU-Based Software") being used on the
Mainframe Hardware contains limitations based upon CPU group ratings. The
parties also acknowledge and agree that they have previously determined the
number of MIPS available, for each party, in excess of the current combined MIPS
usage, in connection with the MIPS-Based Software ("Projected MIPS"), and in
connection with the CPU-Based Software ("Overhead MIPS"), both as set forth on
Exhibit N. With respect to the foregoing, the parties hereby agree as follows:
(i) Certegy agrees that it shall, no later than March 31, 2002,
establish, or cause to be established, one or more new and separate LPAR(s) and
that Certegy shall no longer share any LPAR with Equifax. Certegy shall be
responsible for paying any and all additional software license fees, service
fees, fees related to hardware, or other similar fees incurred to establish the
new LPAR(s) and to migrate from the existing to the new LPAR(s). Notwithstanding
anything contained herein to the contrary, if the deadline for LPAR separation
is not met by Certegy prior to March 31, 2002, any costs or fees, including all
fees, costs or expenses incurred as a result of
18
increased capacity or speed requirements or otherwise, incurred by either party
due to the non-separation shall be borne by Certegy.
(ii) If either party, prior to or at the time of the complete
separation of LPARs (described in subsection (i) above), exceeds its respective
Projected MIPS for any year, and, thereafter, any of the MIPS-Based Software is
required, under the terms of the respective software licenses, to be upgraded to
allow usage of the additional MIPS, the party first exceeding its respective
Projected MIPS ("Triggering Party") shall bear the full cost and expense of
upgrading the MIPS-Based Software licenses (whether or not such party ultimately
caused the MIPS limitations to be exceeded). Notwithstanding the foregoing, at
any time after an upgrade to a MIPS-Based Software license is purchased, if the
non-Triggering Party exceeds its Projected MIPS during a respective year, such
non-Triggering Party shall pay the Triggering Party an amount equal to the total
cost to the Triggering Party of purchasing the upgrade multiplied by a fraction,
the numerator of which is the number of MIPS used by the non-Triggering Party
that exceeds its original Projected MIPS, and the denominator of which is the
total number of MIPS permitted or allowable pursuant to the MIPS-Based Software
upgrade, but excluding the total number of MIPS permitted prior to the upgrade.
(iii) If either party, prior to or at the time of the complete
separation of LPARs (described in subsection (i) above), exceeds its respective
Overhead MIPS for any year, and, thereafter, the CPU-Based Software is required,
under the terms of the respective software licenses, to be upgraded to allow
usage of the additional MIPS, the party first exceeding its respective Overhead
MIPS ("CPU Triggering Party") shall bear the full cost and expense of upgrading
the CPU-Based Software licenses (whether or not such party ultimately caused the
MIPS limitations to be exceeded). Notwithstanding the foregoing, at any time
after an upgrade to a CPU-Based Software license is purchased, if the other
party ("non-CPU Triggering Party") exceeds its Overhead MIPS during a respective
year, such non-CPU Triggering Party shall pay the CPU Triggering Party an amount
equal to the total cost to the CPU Triggering Party of purchasing the upgrade
multiplied by a fraction, the numerator of which is the number of MIPS used by
the non-CPU Triggering Party that exceeds its original Overhead MIPS, and the
denominator of which is the total number of MIPS permitted or allowable pursuant
to the CPU-Based Software upgrade, but excluding the total number of MIPS
permitted prior to the upgrade.
(iv) The rules related to OEM Software upgrade requirements described
in subsections (ii) and (iii) above shall apply in the same manner, before or
after the completion of the LPAR separation, with respect to Mainframe Hardware
upgrade requirements.
(v) Notwithstanding the foregoing, Certegy shall cease the use of any
software or hardware that is shared between the parties no later than the date
which is two (2) years following the Closing Date.
(c) The parties acknowledge that the Licensed Materials are "intellectual
property" within the meaning of Section 101 of the Federal Bankruptcy Act and
shall be subject to Section 365(n) thereof, all as set forth in the Intellectual
Property Bankruptcy Protection Act, Public Law 100-506, 102 Stat. 2538.
19
(d) In full and complete payment of the licenses granted in this Agreement,
the parties have made the payment described in the Distribution Agreement as set
forth in the Distribution Agreement.
(e) Each party shall notify the other party of any involuntary attachment
or other judicial process affecting the Licensed Materials.
ARTICLE V
THE CLOSING
Section 5.1. Equifax Deliverables.
On or before the Distribution Date, and effective as of the Closing Date,
Equifax will, and/or will cause each member of the Equifax Group to, deliver to
Certegy each of the following:
(a) Duly executed assignment and assumption agreements necessary for the
assignment and transfer to, and the assumption by Certegy of, the Transferred
Equifax Assets and Transferred Equifax Third Party Agreements;
(b) Duly executed assignment and assumption agreements necessary for the
assignment and transfer to, and the assumption by Equifax of, the Equifax
Liabilities; and
(c) Such other agreements, leases, documents or instruments as the parties
may agree are necessary or desirable in order to achieve the purposes of this
Agreement.
Section 5.2. Certegy Deliverables.
On the Closing Date, Certegy will, and/or will cause each member of the
Certegy Group to, deliver to Equifax each of the following:
(a) Duly executed assignment and assumption agreements necessary for the
assignment and transfer to, and the assumption by Equifax of, the Transferred
Certegy Assets and the Transferred Certegy Third Party Agreements;
(b) Duly executed assignment and assumption agreements necessary for the
assignment and transfer to, and the assumption by Certegy of, the Certegy
Liabilities; and
(c) Such other agreements, documents or instruments as the parties may
agree are necessary or desirable in order to achieve the purposes of this
Agreement.
20
ARTICLE VI
REPRESENTATIONS AND WARRANTIES
Except as expressly set forth in this Agreement or any Related Agreement,
neither any member of the Equifax Group, nor any member of the Certegy Group,
has given or is giving any representation or warranty regarding the assets or
Liabilities retained, transferred, assumed or licensed as contemplated hereby or
thereby, including without limitation, (i) title to the assets, (ii) validity of
the Liabilities, (iii) any lien, claim or other encumbrance affecting the assets
or Liabilities, or (iv) the value of the assets and the amount of the
Liabilities. Except as may be expressly set forth in this Agreement or any
Related Agreement, all assets and Liabilities were, or are being, transferred,
assigned, licensed, assumed, or are being retained, on an "AS IS," "WHERE IS"
basis and the respective transferees, licensees and assignees will bear the
economic and legal risks that any such conveyance (x) shall prove to be
insufficient to vest in the transferee a title that is free and clear of any
lien, claim or other encumbrance, or (y) shall not constitute an infringement of
a third party's rights.
ARTICLE VII
INDEMNIFICATION
Section 7.1. Certegy Indemnification of the Equifax Group.
If the Distribution occurs, on and after the Distribution Date, Certegy
shall indemnify, defend and hold harmless each member of the Equifax Group, and
each of their respective directors, officers, employees and agents (collectively
the "Equifax Indemnitees") from and against any and all damage, loss, liability
and expense, (including without limitation, reasonable expenses of investigation
and reasonable attorneys' fees and expenses) in connection with any and all
Actions or threatened Actions (collectively, "Indemnifiable Losses") incurred or
suffered by any of the Equifax Indemnitees and arising out of, or due to, the
failure of Certegy, or any other member of the Certegy Group, to timely pay,
perform or otherwise discharge, any of the Certegy Liabilities or its
obligations under this Agreement.
21
Section 7.2. Equifax Indemnification of the Certegy Group.
If the Distribution occurs, on and after the Distribution Date, Equifax
shall indemnify, defend and hold harmless each member of the Certegy Group and
each of their respective directors, officers, employees and agents (collectively
the "Certegy Indemnitees") from and against any and all Indemnifiable Losses
incurred or suffered by any of the Certegy Indemnitees and arising out of, or
due to, the failure of Equifax, or any other member of the Equifax Group, to
timely pay, perform or otherwise discharge, any of the Equifax Liabilities or
its obligations under this Agreement or any Related Agreement.
Section 7.3. Insurance and Third Party Obligations.
No insurer or any other third party shall be, by virtue of the foregoing
indemnification provisions, (a) entitled to a benefit it would not be entitled
to receive in the absence of such provisions, (b) relieved of the responsibility
to pay any claims to which it is obligated, or (c) entitled to any subrogation
rights with respect to any obligation hereunder.
ARTICLE VIII
INDEMNIFICATION PROCEDURES
Section 8.1. Notice and Payment of Claims.
If any Equifax Indemnitee or Certegy Indemnitee (the "Indemnified Party")
determines that it is or may be entitled to indemnification by a party (the
"Indemnifying Party") under Article VII (other than in connection with any
Action or claim subject to Section 8.2), the Indemnified Party shall deliver to
the Indemnifying Party a written notice specifying, to the extent reasonably
practicable, the basis for its claim for indemnification and the amount for
which the Indemnified Party reasonably believes it is entitled to be
indemnified. After the Indemnifying Party shall have been notified of the amount
for which the Indemnified Party seeks indemnification, the Indemnifying Party
shall, within thirty (30) days after receipt of such notice, pay the Indemnified
Party such amount in cash or other immediately available funds (or reach
agreement with the Indemnified Party as to a mutually agreeable alternative
payment schedule) unless the Indemnifying Party objects to the claim for
indemnification or the amount thereof. If the Indemnifying Party does not give
the Indemnified Party written notice objecting to such claim and setting forth
the grounds therefor within the same thirty (30) day period, the Indemnifying
Party shall be deemed to have acknowledged its liability for such claim and the
Indemnified Party may exercise any and all of its rights under applicable law to
collect such amount. Any amount owed under this Section 8.1 that is past due
shall bear interest at a simple rate of interest per annum equal to the lesser
of 1% per month or the maximum amount permitted by law.
Section 8.2. Notice and Defense of Third Party Claims.
(a) Promptly following the earlier of (i) receipt of notice of the
commencement by a third party of any Action against or otherwise involving any
Indemnified Party, or (ii) receipt of information from a third party alleging
the existence of a claim against an Indemnified Party,
22
with respect to which indemnification may be sought pursuant to this Agreement
(a "Third Party Claim"), the Indemnified Party shall give the Indemnifying Party
written notice thereof. The failure of the Indemnified Party to give notice as
provided in this Section 8.2(a) shall not relieve the Indemnifying Party of its
obligations under this Agreement, except to the extent that the Indemnifying
Party is prejudiced by such failure to give notice. Within thirty (30) days
after receipt of such notice, the Indemnifying Party shall by giving written
notice thereof to the Indemnified Party, (i) acknowledge, as between the parties
hereto, liability for and, at its option, elect to assume the defense of such
Third Party Claim at its sole cost and expense, or (ii) object to the claim of
indemnification set forth in the notice delivered by the Indemnified Party
pursuant to the first sentence of this Section 8.2(a) setting forth the grounds
therefor; provided that if the Indemnifying Party does not within the same
thirty (30) day period give the Indemnified Party written notice acknowledging
liability or objecting to such claim and setting forth the grounds therefor, the
Indemnifying Party shall be deemed to have acknowledged, as between the parties
hereto, its liability for such Third Party Claim.
(b) Any contest of a Third Party Claim as to which the Indemnifying Party
has elected to assume the defense shall be conducted by attorneys employed by
the Indemnifying Party and reasonably satisfactory to the Indemnified Party;
provided that the Indemnified Party shall have the right to participate in such
proceedings and to be represented by attorneys of its own choosing at the
Indemnified Party's sole cost and expense. If the Indemnifying Party assumes the
defense of a Third Party Claim, the Indemnifying Party may settle or compromise
the claim without the prior written consent of the Indemnified Party; provided
that the Indemnifying Party may not agree to any such settlement pursuant to
which any such remedy or relief, other than monetary damages for which the
Indemnifying Party shall be responsible hereunder, shall be applied to or
against the Indemnified Party without the prior written consent of the
Indemnified Party, which consent shall not be unreasonably withheld.
(c) If the Indemnifying Party does not assume the defense of a Third Party
Claim for which it has acknowledged liability for indemnification under Article
VII, the Indemnified Party may require the Indemnifying Party to reimburse it on
a current basis for its reasonable expenses of investigation, reasonable
attorneys' fees and reasonable out-of-pocket expenses incurred in defending
against such Third Party Claim and the Indemnifying Party shall be bound by the
result obtained with respect thereto by the Indemnified Party; provided that the
Indemnifying Party shall not be liable for any settlement effected without its
consent, which consent shall not be unreasonably withheld. The Indemnifying
Party shall pay to the Indemnified Party in cash the amount for which the
Indemnified Party is entitled to be indemnified (if any) within fifteen (15)
days after the final resolution of such Third Party Claim (whether by
settlement, compromise, or by the final nonappealable judgment of a court of
competent jurisdiction or otherwise), or, in the case of any Third Party Claim
as to which the Indemnifying Party has not acknowledged liability, within
fifteen (15) days after the Indemnifying Party's objection has been resolved by
settlement, compromise, or the final nonappealable judgment of a court of
competent jurisdiction.
(d) Notwithstanding the foregoing, in no event shall either Equifax or
Certegy, or any Member of their respective Group, have any liability, whether
based on contract, tort (including, without limitation, negligence or strict
liability), warranty or any other legal or equitable
23
grounds, for any punitive, consequential, indirect, exemplary, special or
incidental loss or damage suffered by the other arising from or related to this
Agreement, including without limitation, loss of data, profits, interest or
revenue, or interruption of business, even if such party has been informed of or
might otherwise anticipated or foreseen the possibility of such losses or
damages; provided, however, that such limitations shall not apply to liabilities
which may arise as the result of willful misconduct of a party. Notwithstanding
the foregoing, any damages awarded or obtained (whether by settlement,
compromise or judgment) as a result of Third Party Claims shall be considered
direct damages for purposes of this Agreement.
ARTICLE IX
CONFIDENTIALITY
Section 9.1. Exclusions.
Notwithstanding anything to the contrary contained in this Agreement,
"Company Information" does not include any information that before being
divulged by the receiving party (a) has become generally known to the public
through no wrongful act of the receiving party; (b) has been rightfully received
by the receiving party from a third party without restriction on disclosure and
without, to the knowledge of the receiving party, a breach of an obligation of
confidentiality running directly or indirectly to the disclosing party; (c) has
been approved for release to the general public by a written authorization of
the disclosing party; (d) has been independently developed by the receiving
party without use, directly or indirectly, of Company Information received from
the disclosing party; or (e) has been furnished to a third party by the
disclosing party without restrictions on the third party's rights to disclose
the information.
Section 9.2. Confidentiality.
(a) Each party acknowledges, and shall cause each member of the Group to
acknowledge, that it is in possession of significant confidential or proprietary
information concerning the business, operations and assets of the members of the
other Group.
(b) Each party shall, and shall ensure that each member of its Group shall,
(i) receive and hold the Company Information of the other Group in trust and in
strictest confidence; (ii) protect such Company Information from disclosure and
in no event take any action causing, or fail to take the action necessary in
order to prevent, any such Company Information to lose its character as Company
Information; (iii) exercise at a minimum the same care it would exercise to
protect its own highly confidential information; and (iv) not use, reproduce,
distribute, disclose, or otherwise disseminate the Company Information of the
other Group, (A) except as authorized pursuant to this Agreement or any Related
Agreement, or (B) except pursuant to a requirement of a governmental agency or
of law without similar restrictions or other protections against public
disclosure; provided, however, with respect to disclosures pursuant to (B)
above, the receiving party must first give written notice of such required
disclosure to the disclosing party, take reasonable steps to allow the
disclosing party to seek to protect the confidentiality of the Company
Information required to be disclosed, make a reasonable effort to obtain a
protective order requiring that the Company Information so disclosed be used
only for the purposes for which disclosure is required, and shall disclose only
that part of the Company Information
24
which, in the written opinion of its legal counsel, it is required to disclose.
In no event shall the receiving party exercise less than a reasonable standard
of care to keep confidential the Company Information. Any and all reproductions
of such Company Information must prominently contain a confidential legend.
(c) The receiving party may make disclosures of the Company Information of
the disclosing party only to Representatives of the receiving party's Group (i)
who have a specific need to know such information; and (ii) who the receiving
party has obligated under a written agreement to hold such Company Information
in trust and in strictest confidence and otherwise to comply with the terms and
provisions of this Agreement or terms and conditions substantially similar to
and implementing the same restrictions and covenants as those set forth in this
Agreement. Certegy and Equifax agree, and shall ensure that each member of their
respective Group agrees, to diligently monitor each such Representative,
diligently enforce such agreements with its Representatives, and, upon request
by the other party, promptly to furnish to the other party a certified list of
the receiving party's Representatives having had access to such Company
Information.
(d) The covenants of confidentiality set forth in this Agreement (i) will
apply after the Closing Date to all Company Information disclosed to the
receiving party before, on and after the Closing Date and (ii) will continue and
must be maintained from the Closing Date through the termination of the
relationship under this Agreement between Equifax and Certegy (A) with respect
to Proprietary Information, the period during which the Proprietary Information
constituting a part of the Company Information retains its status as a "trade
secret" under applicable law; and (B) with respect to Confidential Information
constituting a part of the Company Information, for the shorter of a period
equal to three (3) years after the Closing Date, or until such Confidential
Information no longer qualifies as confidential under applicable law.
Section 9.3. Employee Confidentiality Agreements.
The members of each Group have entered into confidentiality and non-
disclosure agreements with their respective employees. To the extent that any
employee during or after employment violates any such agreement and such
violation is or may in the future be to the detriment of the other Group, at the
written request of the affected party, the other party shall, or shall cause the
appropriate members of its Group to, promptly bring and diligently pursue an
action against such employee if and to the extent reasonable under the
circumstances to preserve the value of the assets and Licensed Materials. The
Group member employing the employee violating his/her confidentiality and non-
disclosure agreement shall have the unilateral right to determine the forum for,
the manner of proceeding in, and legal counsel for such action and shall be
entitled to any damages or other relief against such employee awarded in such
action to the extent related to such Group's assets or business or to the
Licensed Materials. Such enforcement against and recovery by a Group member from
its breaching employee shall not constitute a release or sole remedy for the
members of the other Group injured by such breaching employee's actions, and
such members of the other Group may bring a claim against the Group members
employing the breaching employee for a breach of this Agreement. Each party
shall bear all out-of-pocket costs of pursuing such action and the other party
shall cooperate in connection therewith.
25
Section 9.4. Rights and Remedies.
(a) If either party, or any member of the Group, should breach or threaten
to breach any of the provisions of this Agreement, the non-breaching party, in
addition to any other remedies it may have at law or in equity, will be entitled
to a restraining order, injunction, or other similar remedy in order to
specifically enforce the provisions of this Agreement. Each party specifically
acknowledges, and shall cause each member of its respective Group to
acknowledge, that money damages alone would be an inadequate remedy for the
injuries and damage that would be suffered and incurred by the non-breaching
party as a result of a breach of any of the provisions of this Agreement. In the
event that either party, or a member of such party's Group, should seek an
injunction hereunder, the other party hereby waives, and shall cause each member
of its Group to waive, any requirement for the submission of proof of the
economic value of any Company Information or the posting of a bond or any other
security. In the event of a dispute between the parties, the non-prevailing
party shall pay all costs and expenses associated with resolving the dispute,
including, but not limited to, reasonable attorneys' fees.
(b) The receiving party shall notify the disclosing party immediately upon
discovery of any unauthorized use or disclosure of Company Information, or any
other breach of this Agreement by the receiving party or any Representative of
the receiving party's Group, and will cooperate with the disclosing party in
every reasonable way to help the disclosing party regain possession of its
Company Information and prevent its further unauthorized use or disclosure. The
receiving party shall be responsible for the acts of any Representative of its
Group that are in violation of this Agreement.
Section 9.5. Competitive Activities.
(a) Subject to the rights and obligations set forth in this Article IX,
each party understands and acknowledges that the other party's Group may now
market or have under development products that are competitive with products or
services now offered or that may be offered by it and/or members of its Group,
and the parties' communications hereunder will not serve to impair the right of
either party, or any member of its respective Group, to independently develop,
make, use, procure, or market products or services now or in the future that may
be competitive with those offered by the other party's Group, nor require either
party, and/or the members of its Group, to disclose any planning or other
information to the other party.
(b) Neither party will be restricted in using, in the development,
manufacturing and marketing of its products and services and its operations, any
data processing or network management or operation ideas, concepts, know-how and
techniques which are retained in the minds of employees who have had access to
the other party's Company Information subject to the restrictions set forth in
this Agreement.
Section 9.6. No Implied Rights.
Except as provided herein or in any Related Agreement, all Company
Information is and shall remain the property of the disclosing party and/or the
respective member of its Group. By disclosing Company Information to the
receiving
26
party's Group, the disclosing party and/or the members of its Group do(es) not
grant any express or implied rights or license to the receiving party's Group to
or under any patents, patent applications, inventions, copyrights, trademarks,
trade secret information, or other intellectual property rights heretofore or
hereafter possessed by the disclosing party and/or the members of its Group.
ARTICLE X
CONTINUED ASSISTANCE
Section 10.1. Continued Assistance and Transition.
(a) Following the Closing Date, Equifax shall, and shall cause each member
of the Equifax Group to, cooperate in an orderly transfer of the Transferred
Equifax Assets and the Transferred Equifax Third Party Agreements to Certegy or
the respective Designated Certegy Member. From time to time, at Certegy's
request and without further consideration, Equifax shall, and shall cause each
member of the Equifax Group, as applicable, to execute, acknowledge and deliver
such documents, instruments or assurances and take such other action as Certegy
may reasonably request to more effectively assign, convey and transfer any of
the Transferred Equifax Assets and the Transferred Equifax Third Party
Agreements. Equifax will assist Certegy in the vesting, collection or reduction
to possession of such Transferred Equifax Assets and Transferred Equifax Third
Party Agreements.
(b) Following the Closing Date, Certegy shall, and shall cause each member
of the Certegy Group to, cooperate in an orderly transfer of the Transferred
Certegy Assets and Transferred Certegy Third Party Agreements to Equifax or the
respective Designated Equifax Member. From time to time, at Equifax's request
and without further consideration, Certegy shall, and shall cause each member of
the Certegy Group, as applicable, to execute, acknowledge and deliver such
documents, instruments or assurances and take such other action as Equifax may
reasonably request to more effectively assign, convey and transfer any of the
Transferred Certegy Assets and Transferred Certegy Third Party Agreements.
Certegy will assist Equifax in the vesting, collection or reduction to
possession of such Transferred Certegy Assets and Transferred Certegy Third
Party Agreements.
Section 10.2. Records and Documents.
(a) As soon as practicable following the Closing Date, Equifax and Certegy
shall each arrange for the delivery to the other of existing corporate and other
documents (e.g. documents of title, source code, contracts, etc.) in its
possession relating to the Transferred Assets, Transferred Third Party
Agreements and assumed Liabilities.
(b) From and after the Closing Date, Equifax and Certegy shall each, and
shall cause each member of its Group to, afford the other and its accountants,
counsel and other designated Representatives reasonable access (including using
reasonable efforts to give access to person or firms possessing such
information) and duplicating rights during normal business hours to all records,
books, contracts, instruments, computer data and other data and information in
its possession relating to the assets, Liabilities, Licensed Materials, business
and affairs of the other (other than data and information subject to any
attorney/client or other privilege), insofar as such
27
access is reasonably required by the other, including without limitation, for
audit, accounting and litigation purposes.
(c) Notwithstanding the foregoing, either party may destroy or otherwise
dispose of any information at any time in accordance with the corporate record
retention policy maintained by such party with respect to its own records.
Section 10.3. Litigation Cooperation.
Upon written request, Equifax and Certegy shall, and shall cause each
member of its Group to, use reasonable efforts to cooperate in the evaluation
and defense of third party Actions arising out of the business of the other
party or of any member of the other party's Group prior to the Distribution Date
in which the requesting party or any member of its Group may from time to time
be involved, at the cost and expense of the requesting party. Such cooperation
shall include, without limitation, making its Representatives available as
witnesses or consultants to the extent that such persons may reasonably be
required in connection with such third party Actions.
ARTICLE XI
MISCELLANEOUS
Section 11.1. Expenses.
Except as specifically provided in this Agreement or any Related Agreement,
all costs and expenses incurred in connection with the preparation, execution,
delivery and implementation of this Agreement and with the consummation of the
transactions contemplated by this Agreement (including transfer taxes and the
fees and expenses of all counsel, accountants and financial and other advisors)
shall be paid by Equifax.
Section 11.2. Notices.
All notices and communications under this Agreement shall be deemed to have
been given (a) when received, if such notice or communication is delivered by
facsimile, hand delivery or overnight courier, or (b) three (3) business days
after mailing if such notice or communication is sent by United States
registered or certified mail, return receipt requested, first class postage
prepaid. All notices and communications, to be effective, must be properly
addressed to the party to whom the same is directed at its address as follows:
If to Equifax, to:
Equifax Inc.
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Chief Financial Officer
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
with a copy to:
28
Equifax Inc.
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇ ▇. ▇▇▇▇, General Counsel
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
If to Certegy, to:
Certegy Inc.
▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Corporate Vice President, General Counsel and Secretary
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
with a required copy to:
Certegy Inc.
▇.▇. ▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇
Corporate Vice President and Chief Financial Officer
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
Either party may, by written notice so delivered to the other party in
accordance with this Section 11.2, change the address to which delivery of any
notice shall thereafter be made.
Section 11.3. Amendment and Waiver.
This Agreement may not be altered or amended, nor may any rights hereunder
be waived, except by an instrument in writing executed by the party or parties
to be charged with such amendment or waiver. No waiver of any terms, provision
or condition of or failure to exercise or delay in exercising any rights or
remedies under this Agreement, in any one or more instances, shall be deemed to
be, or construed as, a further continuing waiver of any such term, provision,
condition, right or remedy or as a waiver of any other term, provision or
condition of this Agreement.
Section 11.4. Entire Agreement.
This Agreement, together with the Related Agreements, constitutes the
entire understanding of the parties hereto with respect to the subject matter
hereof, superseding all negotiations, prior discussions and prior agreements and
understandings relating to such subject matter. To the extent that the
provisions of this Agreement are inconsistent with the provisions of any other
Related Agreement, the provisions of this Agreement shall prevail with respect
to the subject matter hereof.
29
Section 11.5. Parties in Interest.
Neither of the parties hereto may assign its rights or delegate any of its
duties under this Agreement without the prior written consent of each other
party. This Agreement shall be binding upon, and shall inure to the benefit of,
the parties hereto and their respective successors and permitted assigns.
Nothing contained in this Agreement, express or implied, is intended to confer
any benefits, rights or remedies upon any person or entity other than members of
the Equifax Group and the Certegy Group and the Equifax Indemnitees and Certegy
Indemnitees under Articles VII and VIII hereof.
Section 11.6. Further Assurances and Consents.
In addition to the actions specifically provided for elsewhere in this
Agreement, each of the parties hereto will use its reasonable efforts to (a)
execute and deliver such further instruments and documents and take such other
actions as any other party may reasonably request in order to effectuate the
purposes of this Agreement and to carry out the terms hereof and (b) take, or
cause to be taken, all actions, and to do, or cause to be done, all things,
reasonably necessary, proper or advisable under applicable laws, regulations and
agreements or otherwise to consummate and make effective the transactions
contemplated by this Agreement, including without limitation, using its
reasonable efforts to obtain any consents and approvals and to make any filings
and applications necessary or desirable in order to consummate the transactions
contemplated by this Agreement; provided that no party hereto shall be obligated
to pay any consideration therefor (except for filing fees and other similar
charges) to any third party from whom such consents, approvals and amendments
are requested or to take any action or omit to take any action if the taking of
or the omission to take such action would be unreasonably burdensome to the
party or its Group or the business thereof.
Section 11.7. Severability.
The provisions of this Agreement are severable and should any provision
hereof be void, voidable or unenforceable under any applicable law, such
provision shall not affect or invalidate any other provision of this Agreement,
which shall continue to govern the relative rights and duties of the parties as
though such void, voidable or unenforceable provision were not a part hereof.
Section 11.8. Governing Law.
This Agreement shall be construed in accordance with, and governed by, the
laws of the State of Georgia, without regard to the conflicts of law rules of
such state.
Section 11.9. Counterparts.
This Agreement may be executed in one or more counterparts, each of which
shall be deemed an original instrument, but all of which together shall
constitute but one and the same agreement.
30
Section 11.10. Disputes.
Any Disputes arising under this Agreement, whether based on contract, tort,
statute or otherwise, including but not limited to, disputes in connection with
claims by third parties, shall be resolved in accordance with Section 15.10 of
the Distribution Agreement; provided that the parties shall retain the rights
and remedies specified in Section 9.4 hereof.
Section 11.11. Force Majeure.
Neither party will be liable for any loss or damage due to causes beyond
its control, including, but not limited to, fire, accident, labor difficulty,
war, power or transmission failures, riot, Acts of God or changes in laws and
regulations, provided that the affected party must (a) promptly notify the other
party in writing and furnish all relevant information concerning the event of
force majeure; (b) use reasonable efforts to avoid or remove the cause of its
nonperformance; and (c) proceed to perform its obligations with dispatch when
such cause is removed.
Section 11.12. Documentation.
Prior to the Distribution Date and from time to time thereafter, the
parties will prepare, maintain and update schedules of the Transferred Equifax
Assets, the Transferred Certegy Assets, the Licensed Equifax Materials, the
Licensed Certegy Materials, and the Third Party Agreements, the Third Party Use
Rights and the Third Party Rights transferred and/or provided by each Group to
the other Group, in such detail as shall be appropriate for the management and
administration of these items as described in this Agreement.
Section 11.13. Headings.
The Article and Section headings set forth in this Agreement are included
for administrative, organizational and convenience purposes, and are not
intended to affect the meaning of the provisions set forth in this Agreement or
to be used in the interpretation of this Agreement.
31
IN WITNESS WHEREOF, the parties hereto have executed and delivered this
Agreement as of the day and year first above written.
EQUIFAX INC.
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇
------------------------------------
Title: Corporate Vice President, General
Counsel and Secretary
Date: June 30, 2001
CERTEGY INC.
By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
------------------------------------
Title: Corporate Vice President, General
Counsel and Secretary
Date: June 30, 2001
32
EXHIBIT A
CERTEGY GROUP
State or
Country of
Name of Subsidiary Incorporation
------------------ --------------------
AGES Participacoes S.A. Brazil
Aircrown Ltd. England
Card Brazil Holdings, Inc. Georgia
Card Brazil Holdings Ltda. Brazil
Card Brazil LLC Georgia
Central Credit Services Ltd. Scotland
Equifax Asia Pacific Holdings, Inc. Georgia
Equifax Australia Plc England
Equifax Card Services, Inc. Florida
Equifax Card Solutions Australia Pty Ltd. Australia
Equifax Card Solutions Ltd. England
Equifax Card Solutions S.A. France
Equifax (Cayman Islands) Ltd. Cayman Islands
Equifax Check Services, Inc. Delaware
Equifax E-Banking Solutions, Inc. Georgia
Equifax Ltd. New Zealand
Equifax Payment Recovery Services, Inc. Georgia
Equifax Payment Services, Inc. Delaware
Equifax Pty Ltd. Australia
Equifax SNC France
Financial Insurance Marketing Group, Inc. District of Columbia
First Bankcard Systems, Inc. Georgia
Payment Brasil Holdings Ltda. Brazil
Payment Chile, SA. Chile
Payment Europe LLC Georgia
Payment South America Holdings, Inc. Georgia
Payment South America LLC Georgia
Payment U.K. Ltd. England
Procard S.A. Chile
Retail Credit Management Ltd. England
Telecredit Canada Inc. Canada
Transax France Plc England
33
Transax Ireland Ltd. Ireland
Transax Plc England
▇▇▇▇▇▇ -- Solucoes em Meios de Pagamento Ltda Brazil
VIV Plc England
Equifax Card Services, Inc. will own a 51% interest in Circle of Value,
Ltd.
Payment Brazil Holdings Ltda. will own a 51% interest in Partech Ltda.
(Brazil).
The names above are the names of the relevant entities as of June 20, 2001
and may have been changed subsequently.
34
EXHIBIT B
TRANSFERRED EQUIFAX ASSETS
DESCRIPTION OF
ASSET OWNER ASSIGNEE RETAINED RIGHTS
------------------------- ------------ ------------ ---------------
Trademark: "Pathways", Equifax Inc. Certegy Inc. None.
U.S. Reg. #: 1,920,133
Trademark: "Cardsource", Equifax Inc. Certegy Inc. None.
U.S. Reg. #: 2,142,162
Trademark: "Interguard", Equifax Inc. Certegy Inc. None.
U.S. Reg. #: 2,019,884
Trademark: "Paycheck Equifax Inc. Certegy Inc. None.
Accept", U.S. Application
Pending, Serial #:
76/135,366
Trademark: "Cardview", Equifax Inc. Certegy Inc. None.
U.S. Application
Pending, Serial #:
76/175,937
Without limiting Equifax's requirements under the Agreement, Equifax (or
the respective member of the Equifax Group) shall execute such acknowledgements,
grants and assignments of rights in and to the intellectual property described
above, as Certegy may reasonably request for the purpose of evidencing,
enforcing, registering or defending its worldwide ownership of such intellectual
property.
35
EXHIBIT C
EQUIFAX THIRD PARTY AGREEMENTS - TRANSFERS
Equifax will transfer, or cause to be transferred the following agreements
to Certegy, effective as of the Closing Date:
Maximum Fees/Costs
Name of Agreement Parties to Agreement/Other Matters to be Paid
--------------------------------------- ------------------------------------------------- ------------------
Compuware: Equifax Inc. and Compuware, Inc. $0
License Agreement between Equifax, Inc. Equifax will transfer or have transferred to
and Compuware, Inc. Certegy such rights under the agreement to permit
Certegy to use, for the duration of the license,
one copy of the following software products:
Abend Aid/XLS w/Primary Language Cobol
File Aid/MVS
Expeditor/CICS w/Assembler
Expeditor/TSO
Strobe MVS for Sysplex with Cobol
CICS Feature
Advanced Session Mgmt Feature
QACenter Enterprise Edition -- Includes
1 ConcurrentUser
Reconcile - 1 Concurrent User
QADirector - 1 Concurrent User
TrackRecord - 1 Concurrent User
Track Record - 3 Concurrent Users
APMPower for Windows - 20 Concurrent Users
In lieu of transferring such license, Equifax
may purchase new licenses on Certegy's behalf.
Oracle: Equifax Inc. and Oracle, Inc. $0
Software License and Services Agreement Equifax will transfer, or have transferred,
dated March 5, 1992, and attendant certain rights in and to the products identified
Ordering Documents on Appendix A to this Exhibit C:
TOTAL: $0
In addition to the foregoing, Equifax shall purchase on Certegy's behalf,
prior to the Closing Date, licenses to use certain software products, as
identified below. The list below sets forth the vendor, the name of the software
products to be obtained on Certegy's behalf by
36
Equifax and the maximum license fee or other costs that Equifax shall be
required to pay for each license (or group of licenses).
VENDOR SOFTWARE PRODUCT MAXIMUM FEES/COSTS TO BE PAID
------------------- -------------------------------------- -----------------------------------------
UK SOFTWARE
▇▇▇▇▇ Systems Group Beta 44 $91,491.84
BETA Systems Beta 92 Version 3 CAF $151,196 (collectively for all UK-related
BETA Systems Beta 92 Version 3 VAF BETA Systems licenses)
BETA Systems Beta 92 Version 3
BETA Systems Beta 93 Version 3
BETA Systems Beta 93 Version 3 CAF
BETA Systems Beta 93 Version 3 VAF
CNM CNM-XFER $33,605 (collectively for all UK-related
CNM EEMS CNM licenses)
Compute Bridgend Selcopy (Corporate) $120,120
Computer Associates APAS/Insight $2,573,393 (collectively for all
UK-related Computer Associates licenses)
Computer Associates Endevor/MVS
Computer Associates Endevor/MVS ACM
Computer Associates Endevor/MVS Extended Processor
Computer Associates Endevor/MVS External
Computer Associates Endevor/MVS Natural Security Interface
Computer Associates Endevor/MVS Parallel Development
Manager
Computer Associates Endevor/MVS Quick Edit
Computer Associates Intertest CICS W/XA-ESA
Computer Associates Intertest/Batch
Computer Associates JCL Check
Computer Associates Netspy (excluding Modeling)
Computer Associates One
Computer Associates Prevail/Spool (Pkg)
Computer Associates Spaceman
Computer Associates TPX (extended)
Compuware APM Power *2 $530,000 (collectively for all
UK-related Compuware licenses)
Compuware Assembler Option for Xpediter CICS
Compuware CICS Abend-Aid FX
Compuware File-AID/Data Solutions
Compuware File-AID/MVS
Compuware QA Hiperstation
Compuware Strobe ADABAS/NATURAL Feature
Compuware Strobe Advanced Session Mgt Feature
Compuware Strobe CICS Feature
37
Compuware Strobe COBOL Feature
Compuware Strobe MVS for Sysplex 1
Compuware Xpediter CICS Cobol
Compuware XPEDITOR/Exchange
Macro 4 DUMPMASTER (combined) (All Features $89,196
- includes Base and Cobol Feature)
SAS BASE $138,910 (collectively for all UK-related
SAS MXG (▇▇▇▇▇▇▇ Consultants) SAS licenses)
SyncSort SyncSort MVS $52,983
PWC - ALPHARETTA
Chicago-Soft Inc. MVS/Quick-Ref $26,000
Cincom Mantis $318,460 (collectively for all
Cincom Scenario PWC - Alpharetta-related Cincom
licenses)
Computer Associates ALLOCATE $2,500,000 (collectively for all PWC
Computer Associates DELIVER - Alpharetta-related Computer
Associates licenses)
Computer Associates DELIVER CICS OPTION
Computer Associates DELIVER ROSCOE INTERFACE
Computer Associates DELIVER VTAM INTERFACE
Computer Associates DISK
Computer Associates EASYTRIEVE PLUS
Computer Associates ELEVEN
Computer Associates ELEVEN/DISASTER RECOVERY PLNG
Computer Associates ELEVEN/NOTEPAD
Computer Associates ELEVEN/REPORTS PLUS
Computer Associates ENDEVOR/MVS
Computer Associates ENDEVOR/MVS AUTOMATED CONFIG MG
Computer Associates ENDEVOR/MVS EXTENDED PROCESSOR
Computer Associates ENDEVOR/MVS EXTERNAL SCRTY INT
Computer Associates ENDEVOR/MVS LIBRARIAN INTERFACE
Computer Associates ENDEVOR/MVS PARALLEL DEV MGR
Computer Associates ENDEVOR/MVS ROSCOE INTERFACE
Computer Associates LIBRARIAN (BASE+LIB/AM+TSO)
Computer Associates MULTI-IMAGE ALLOCATION
Computer Associates NEUMICS ACCOUNTING AND CHARGEBACK
Computer Associates NEUMICS ANLYZR FOR MEASUREWARE
Computer Associates NEUMICS BASE
Computer Associates NEUMICS CICS ANALYZER
Computer Associates NEUMICS DASD SPACE ANALYZER W/DSC
38
Computer Associates NEUMICS SYSTEM RELIABILITY
ANALYZER
Computer Associates ONE
Computer Associates ONE WORKSTATION - 5 Copies
Computer Associates ONE/COPYCAT
Computer Associates OPTIMIZER II
Computer Associates PANAUDIT PLUS
Computer Associates PANAUDIT PLUS EZTP-IMS
Computer Associates ROSCOE
Computer Associates SEVEN
Computer Associates SEVEN WORKSTATION - 5 Copies
Computer Associates SEVEN/NOTEPAD
Computer Associates SEVEN/REPORT BALANCING
Computer Associates SEVEN/REPORTS PLUS
Computer Associates SEVEN/SMART CONSOLE
Computer Associates SYSVIEW/e
Computer Associates TOP SECRET
Computer Associates TRANSCENTURY CALENDAR ROUTINES
Computer Associates VIEW
Computer Associates VIEW ERO OPTION
Computer Associates VIEW ROSCOE INTERFACE
Computer Associates VIEW VTAM INTERFACE
Compuware Abend-AID/XLS with Primary $430,125 (collectively for all PWC
Language-Cobol - Alpharetta-related Compuware
licenses)
Compuware Assembler Option for Xpediter/CICS
Compuware Assembler Option for Xpediter/TSO
Compuware CICS ABEND-AID/FX
Compuware CICS Feature
Compuware File-Aid/MVS
Compuware Strobe MVS for Sysplex with Cobol
Compuware Xpediter/CICS with Cobol
Compuware Xpediter/TSO with Cobol
Diversified Job/Scan $50,000
Innovation FATS/FATAR $12,750 (collectively for all PWC
Innovation FDR/Compaktor - Alpharetta-related Innovation
licenses)
▇▇▇▇ Accounts Payable $217,314 (collectively for all
PWC - Alpharetta-related ▇▇▇▇
licenses)
▇▇▇▇ General System
▇▇▇▇ Purchasing
Landmark Monitor for CICS/ESA $91,133
▇▇▇▇▇▇▇▇▇ KWIK-KEY $2,295
▇▇▇▇▇▇▇ MXG $ 1,500
SAS BASE SAS $361,685 (collectively for all
PWC - Alpharetta-related SAS
licenses)
SAS SAS/AF
39
SAS SAS/STAT
Sterling Commerce Connect: Direct for OS/390 (TCP/IP & $76,462
SNA Products)
Syncsort Inc. Proc SyncSort $69,385 (collectively for all PWC -
Syncsort Inc. SyncSort MVS Alpharetta-related Syncsort licenses)
Tone OMC-Print $66,930
PWC-MIDRANGE
Citrix-GEAC Citrix Mf Xpa 1.0-10u Conn Pk W/sub $35,475 (collectively for all PWC -
Adv Nt4/w2k Midrange-related Citrix - GEAC licenses)
Citrix - GEAC Citrix Mf Xpa 1.0-20u Conn Pk W/sub
Adv Nt4/w2k
Citrix-GEAC Citrix Mf Xpa 1.0-50u Conn Pk W/sub
Adv Ntr/w2k
Citrix - GEAC Citrix Mf Xpa 1.0-starter System 20u
W/sub Adv Nt4/w2K
Citrix - GEAC Microsoft Open Business Windows 2000
Bus - 5.0 Cal.
Citrix-GEAC Microsoft Open Business Windows 2000
Terminal Services Bus-5.0 Cal
Citrix - GEAC Microsoft Open Business Windows Server
2000 Bus - 5.0
Citrix-GEAC Microsoft Windows 2000 Server Media
Kit
Edify Corporation Edify 6.2 Departmental (24 Agents) $63,683 (collectively for all PWC - Midrange
Edify Corporation Edify Development License -related Edify Corporation licenses)
(Workforces Application Server:
Development Level)
Edify Corporation Telephony Services: Departmental
Edify Corporation Facsimile Services: Departmental
Edify Corporation Facsimile Services Software:
Single Concurrent User
Edify Corporation Multi-Database Access: Department
Edify Corporation Electronic Workforce for Windows
NT Development Kit v6.2
Edify Corporation Workforce Application Builder
(Agent Trainer)
Edify Corporation American Spanish Language
Edify Corporation Canadian French Language
Embarcadero (10) Embarcadero Rapid SQL $8,970
Technologies, Inc.
Hyperion (1) Base Solution - Hyperion $124,000 (collectively for all
Enterprise License (includes 2 PWC - Midrange-related Hyperion
Co-Located Named Administrator licenses)
Users)
Hyperion (10) Hyperion Enterprise Named Basic
User (transfer of Equifax licenses)
Kronos (1) Connect, primary payroll interface $151,090 (collectively for all
PWC - Midrange-related Kronos
licenses)
Kronos (1) Connect, secondary payroll
interface
40
Kronos (1) Workforce Accruals
Kronos (1) Workforce Managers, up to 50
Kronos (1) Workforce Web
Kronos (1) Workforce Central v4. (2,500
employees)
Kronos (2) WFC Administration and Support
Kronos (2) WFC Basic Configuration
Kronos (2) WFC Daily Operations
Kronos (2) WFC Database Maintenance
Kronos (210 Hrs) Implementation and
Installation and Training
Kronos (4) WFC Implementation Workshop
Kronos (6) Kronos Virtual Classroom Module
Sessions
Merant (2) PVCS Licenses $10,000
Resumix Resumix Human Asset Management(TM) $330,000 (Collectively for all PWC
System (Includes Recruiter's Desktop, Midrange-related Resumix Licenses)
Operator's Desktop and Database "A"
Server License (1)
Resumix Concurrent Users (10)
Resumix Non-Concurrent Users (5)
Resumix Interact Toolkit
Resumix Test License
Resumix Xerox OCR Software for Resume
Processing (1)
Resumix Crystal Reports Module (1)
Resumix Fulcrum Full-Text Search Engine (1)
Resumix ResFax In/Out (1)
Resumix Employment Folder (1)
Resumix AutoMatch Capability (1)
Resumix System Administration Module (1)
Resumix Resumix Internet Recruiter Including
55 Requistions
Resumix LumiNet for two (2) Users
Resumix Requisition Lookup (1)
▇▇▇▇▇▇ Enterprise Client Site License $55,000
Sybase (1 server) Adaptive Server Enterprise $157,021 (collectively for all PWC -
Sybase (85) Adaptive Server Enterprise Midrange-related Sybase licenses)
Sybase (1) Adaptive Server Ent UNIX/WP 32
User (1)
Sybase (1) Adaptive Server Ent UNIX/WP 32
User
Sybase (1) ▇▇ ▇▇▇▇▇▇ Connectivity
Sybase (1) LM Japanese Connectivity
41
Sybase (1) LM German Connectivity
Sybase (1) LM Spanish Server
Sybase (1) LM Chinese Server
TOTAL: $8,940,172.84
Under no circumstances shall Equifax be required to pay, with respect to
the transfer of, acquisition of, or procuring or securing of Third Party
Agreements or Third Party Use Rights, costs, fees or expenses exceed the sum of
the "totals" identified on this Exhibit C and Exhibit D, except that:
(a) Equifax shall be responsible for paying any sales, transfer or VAT
taxes directly associated with transferring and/or acquiring such licenses, and
the parties agree that such taxes are not included in the maximum fees/costs
identified above; and
(b) Equifax agrees to pay (i) any fees and costs, not to exceed $16,500, in
connection with obtaining any consents necessary with respect to the Pitney
▇▇▇▇▇ DocSense software products, LPC Finalist and Streamweaver, and (ii) any
fees and costs, not to exceed $120,000, in connection with obtaining any
consents necessary with respect to SAS Institute's software products, SAS Base,
SAS Connect, SAS Echo, SAS Stat and SAS Warehouse. Such amounts to be paid shall
be additional to the amounts required to be paid otherwise under this Exhibit C
or Exhibit D.
The scope of the licenses to be purchased by Equifax pursuant to the list
above shall be limited as follows:
(a) Certegy's rights to use the applicable software shall be substantially
similar to the rights held by Equifax with respect to the Certegy Business on
the Closing Date; provided that in no event shall such rights be greater, in
terms of duration, territory, usage or otherwise (including rights related to
the number of users, the number of concurrent users or the number of MIPS) than
Equifax possessed and used in the Certegy Business on the Closing Date.
(b) Equifax shall not be required to pay any maintenance fees with respect
to the software licenses unless such maintenance fee obligations are bundled as
part of the license fee for the first year of the license.
42
APPENDIX A TO EXHIBIT C
ORACLE PRODUCT ASSIGNED/TRANSFERRED TO CERTEGY INC.
PRODUCT LICENSE TYPE LICENSE LEVEL NUMBER OF USERS
----------------------------------- ------------------------- ------------- ---------------
Oracle Database Enterprise Edition Named User, Multi-Server Deployment 228
Oracle Database Enterprise Edition Concurrent-Network Full Use 32
Oracle Database Enterprise Edition Named User, Multi-Server Full Use 36
Oracle Database Enterprise Edition Universal Power Units Full Use 64,504
Designer/2000 Developer Full Use 4
Developer/2000 Concurrent Full Use 2
Developer Server Concurrent Full Use 15
Diagnostic Management Pack Universal Power Units Full Use 1,600
Discoverer - Administrative Edition Concurrent Full Use 1
Discoverer - User Edition Concurrent Full Use 43
Oracle Database Enterprise Edition Concurrent-Network Deployment 250
Partitioning Universal Power Units Full Use 11,571
Oracle Database Personal Edition Named User, Single-Server Full Use 1
Tuning Management Pack Universal Power Units Full Use 1,600
Web Application Server EE Processors Full Use 2
43
Support Services Agreement related to this Agreement.
8. PWC: Finance and Accounting Equifax will negotiate and enter into new Not applicable. $ 0
Business Process and Support agreements that will permit Certegy to have
Services Agreement certain use rights under this or related to
this Agreement.
9. EMC: Equifax will obtain expanded rights, Not applicable. $ 200,000
pursuant to a separate agreement between
Product Transfer License Equifax and EMC, to use the EMC Catalog
and Maintenance Agreement Solution to process data for and on behalf
of Certegy
Commencement Dates:
-#ME960283 -- 11/22/98
-#ME960265 -- 6/19/98
10. GEAC: Equifax will obtain rights under this Not applicable. $ 0
Agreement for third party processors to
Agreement dated _July 8, 1996 perform services for and on behalf of
between GEAC Enterprise Solutions, Certegy for both Mainframe and Midrange
Inc. (formerly known as Geac Software.
Computer Systems, Inc and Equifax
Inc. (related to Accounts
Payable/General Ledger System).
11. Storage Technology Corp Equifax will obtain on Certegy's behalf Not Applicable $ 0
rights as an "authroized user" under the
Master Agreement to use the following
software product:
SILO/ExL M MTHLY
11. Sterling Commerce: Equifax will obtain expanded rights, Not applicable. $ 0
pursuant to a separate agreement between
License Agreement between Equifax Equifax and Sterling Commerce, pursuant to
Information Technology, Inc. and which Certegy shall have the right to use
Sterling Commerce Inc. the following software products until such
time as the Stering Commerce products
acquired under Exhibit C arc installed and
operational:
Connect: Direct MVS
Connect: Direct SDF
12. Candle Corporation Equifax will obtain on Certegy's behalf Not applicable. $ 0
rights as an "authorized user" under the
Master Agreement to use the following
software products:
Omegamon II MVS
Omegamon II DB2
13. BMC Software, Inc. Equifax will obtain on Certegy's behalf Not applicable. $ 0
rights as an "authorized user" under the
Master Agreement to use the following
software product:
Resolve Pro SMS
14. Magic Solutions Equifax will acquire a license to the Not applicable. $ 45,643
following software products from Magic
Solutions, which license will permit
Certegy to use the software products in the
Certegy Business:
- (12) SM/McAfee HD to Magic HP Upgrd Perp
- Magic HD - Ent. Ed. Connect Sppt.
- McAfee To Magic Upgrade
- Professional Services and Training
TOTAL: $245,643.00
45
EXHIBIT E
TRANSFERRED CERTEGY ASSETS
DESCRIPTION OF
ASSET OWNER ASSIGNEE RETAINED RIGHTS
----------------------------------- ---------------- ------------ ----------------
U.S. PATENT #5,119,295 ENTITLED Equifax Payment Equifax Inc. None.
"CENTRALIZED LOTTERY SYSTEM FOR Services, Inc.
REMOTE MONITORING OR OPERATIONS AND fka Telecredit
STATUS DATA FROM LOTTERY TERMINALS Inc.
INCLUDING DETECTION OF MALFUNCTION
AND COUNTERFEIT UNITS", ISSUED JUNE
2,1992
U.S. PATENT #5,223,698 ENTITLED Equifax Payment Equifax Inc. None.
"CARD-ACTIVATED POINT-OF-SALE Services, Inc.
LOTTERY TERMINAL", ISSUED JUNE 29, fka Telecredit
1993 Inc.
U.S. PATENT #5,239,573 ENTITLED Equifax Payment Equifax Inc. None.
"TELEPHONE TERMINAL INCORPORATING Services, Inc.
SPEECH SYNTHESIZER FOR ENHANCED fka Telecredit
COMMUNICATION", ISSUED AUGUST 24, Inc.
1953
Without limiting Certegy's requirements under the Agreement, Certegy
(or the respective member of the Certegy Group) shall execute such
acknowledgements, grants and assignments of rights in and to the
intellectual property described above, as Equifax may reasonably request
for the purpose of evidencing, enforcing, registering or defending its
worldwide ownership of such intellectual property.
46
EXHIBIT F
CERTEGY THIRD PARTY AGREEMENTS - TRANSFERS
None.
47
EXHIBIT G
CERTEGY THIRD PARTY AGREEMENTS - RIGHTS GRANTED
None.
48
EXHIBIT H
SPECIFIED EQUIFAX LIABILITIES
None.
49
EXHIBIT I
SPECIFIED CERTEGY LIABILITIES
None.
50
EXHIBIT J
LICENSED EQUIFAX MATERIALS
None.
51
EXHIBIT K
LICENSED CERTEGY MATERIALS
DESCRIPTION OF INTELLECTUAL
PROPERTY OWNER OF IP SCOPE OF LICENSE NAME OF LICENSEE
------------------------------ ----------------- ------------------------------ ----------------
U.S. Patent Application Serial Equifax Check Royalty free, non-exclusive, Equifax Inc.
No. 09/845662, filed April 30, Services, Inc. worldwide, perpetual license
2001 and entitled "System and to make, practice, have made,
Method for Secure Network use and import systems and
Transactions" and related PCT processes covered by any
Patent Application, filed patent that issues from the
April 30, 2001 and entitled applications and to sell to
"System and Method for Secure Equifax customers and
Network Transactions." potential customers services
based on such systems and
processes; such license may
not be transferred or
sublicensed (other than to
Equifax Affiliates), except
pursuant to a state law merger
or the sale of substantially
all of the licensee's assets
and the licensee has no right
to authorize any third party
to make, have made or sell the
technology, whether or not for
purposes of allowing such
third parties to build and/or
run their own payment systems.
52
EXHIBIT L
UTILITY SOFTWARE PROGRAMS
None, subject to the following:
For purposes of this Exhibit L, "Unidentified Utility Software Program" means
any utility software program (i) that is owned by any member of the Certegy
Group or the Equifax Group, (ii) used in the business of the party that is not
the owner thereof during the twelve (12) calendar months prior to the Closing
Date, (iii) for which a continuing business requirement exists on the Closing
Date, and (iv) that is identified, in good faith, by both parties as being a
Utility Software Program within twelve (12) months following the Closing Date.
The parties agree that the use of an Unidentified Utility Software Program by
the party who is not the owner thereof in the normal course of its business
shall be permissible. This Exhibit L shall be amended, from time to time, to add
any Unidentified Utility Software Programs. At any time an Unidentified Utility
Software Program is added to this Exhibit, it shall be deemed to be a "Utility
Software Program" for purposes of this Agreement.
53
EXHIBIT M
OTHER IP ASSETS
Asset Ownership/Additional Rights
----------------------- ------------------------------------------------------
APPLY (SOFTWARE OWNERSHIP:
APPLICATION) SOURCE
CODE, OBJECT CODE AND A. As of the Closing Date, all right, title and
DOCUMENTATION interest in and to (i) the APPLY source code (other
than the source code owned by Equifax pursuant to
subsection B below) and object code, including the
customer level code written in the TCL or APPLY Basic
programming language, (ii) documentation related to
the foregoing, and (iii) all patents, patent rights
and copyrights related thereto, shall be and at all
times will remain the sole and exclusive property of
Certegy. Certegy shall have the right to make, use,
sell, copy, distribute, import, develop Derivative
Works or enhancements of, and publicly perform and
display, for any purpose, any of the foregoing assets
without any obligation (including any obligation to
account or pay royalties) or liability to Equifax.
B. As of the Closing Date, all right, title and
interest in and to (i) all APPLY customer level source
code written in the TCL programming language
associated with the Telco operation in St. Petersburg,
(ii) source code written in the APPLY Basic
programming language associated with Equifax's
Canadian processing site in Montreal, (iii) all credit
processing platform source code acquired by Equifax
Credit Information Services, Inc. from ▇▇▇▇▇▇▇▇▇▇▇ ▇.
▇▇▇▇▇▇ and Zoot Enterprises, Inc., known as the "Zoot
Code", that was used in the development of the APPLY
software product, (iv) documentation related to the
foregoing, and (v) all patents, patent rights and
copyrights related thereto, shall be and at all times
will remain the sole and exclusive property of
Equifax. Equifax shall have the right to make, use,
sell, copy, distribute, import, develop Derivative
Works or enhancements of, and publicly perform and
display, for any purpose, any of the foregoing assets
without any obligation (including any obligation to
account or pay royalties) or liability to Certegy.
LICENSE: As of the Closing Date, Equifax and Certegy
shall each have the perpetual, fully paid, worldwide
right and license to make, use, sell, copy,
distribute, import, develop Derivative Works or
enhancements of, and publicly perform and display, for
any purpose, the entire APPLY software product (to the
extent the licensee does not already own the same), in
both source and object code format, and the
documentation thereof without any obligation
(including any obligation to account or pay royalties)
or liability to the other owner. In connection with
Certegy's license to Equifax pursuant to the foregoing
sentence, Equifax agrees to pay Certegy a one-time
license fee of One Million One Hundred Thousand
Dollars ($1,100,000.00), which fee will be treated as
an intercompany payable from Equifax to Certegy and
shall be paid in accordance with Section 8.02 of the
Distribution Agreement. In connection with Equifax's
license to Certegy pursuant to the foregoing, Certegy
agrees to pay Equifax a one-time license fee of One
Hundred Thousand Dollars ($100,000.00), which fee will
be treated as an intercompany payable from Certegy to
Equifax and shall be paid in accordance with Section
8.02 of the Distribution Agreement
DERIVATIVE PRODUCTS: Any modifications, enhancements
or Derivative Works lawfully made by either party to
any of the foregoing assets shall be owned by the
entity that modified or enhanced such asset or created
such Derivative Work from such asset.
FEES/ALLOCATIONS: As set forth above.
ADDITIONAL PROVISIONS: Each owner of any of the
foregoing assets shall (i) have the right to enforce,
in any country, all rights embodied in such assets,
and the other party agrees (at its expense) to
cooperate in such enforcement action as reasonably
requested by the owner thereof, and (ii) have the
right to file appropriate patent, trademark, copyright
or other applications, in any country, with respect to
such assets.
54
The parties acknowledge and agree that, as between the
parties, all right, title and interest in and to the
trademark or service ▇▇▇▇ "APPLY," as it relates to
the APPLY software product, shall be and remain the
sole and exclusive property of Certegy; provided,
however, that Certegy shall grant to Equifax a
perpetual, fully paid, world-wide, exclusive license
to use the "APPLY" trademark or service ▇▇▇▇ solely
for use in combination with the ▇▇▇▇ "Equifax" and
solely in connection with the use of the APPLY
software PRODUCT.
PAYNET SECURE (SOFTWARE OWNERSHIP:
APPLICATION), SOURCE
CODE, OBJECT CODE AND As of the Closing Date, all right, title and interest
DOCUMENTATION in and to the source code, object code and
documentation with respect to (i) Paynet Secure Level
1 and (ii) the payment processing components of Paynet
Secure Level 3, including, without limitation, all
patents, patent rights and copyrights related thereto,
shall be and at all times will remain the sole and
exclusive property of Certegy. Certegy shall have the
right to make, use, sell, copy, distribute, import,
develop Derivative Works or enhancements of, and
publicly perform and display, for any purpose, any of
the foregoing assets without any obligation (including
any obligation to account or pay royalties) or
liability to Equifax.
As of the Closing Date, all right, title and interest
in and to the source code, object code and
documentation with respect to (i) Paynet Secure Level
4 and (ii) the authentication components of Paynet
Secure Level 3, including, without limitation, all
patents, patent rights and copyrights related thereto,
shall be and at all times will remain the sole and
exclusive property of Equifax. Equifax shall have the
right to make, use, sell, copy, distribute, import,
develop Derivative Works or enhancements of, and
publicly perform and display, for any purpose, any of
the foregoing assets without any obligation (including
any obligation to account or pay royalties) or
liability to Certegy.
Notwithstanding the foregoing, all right, title and
interest in and to eID Verifier, reports related
thereto, and all intellectual property rights related
thereto, shall be and remain the sole and exclusive
property of Equifax, provided that Equifax shall have
certain obligations to Certegy with respect to such
eID Verifier Reports as specifically set forth
pursuant to the Intercompany Data Purchase Agreement.
Equifax shall have the sole right to make, use, sell,
copy, distribute, import, develop Derivative Works or
enhancements of, and publicly perform and display, for
any purpose, any of the foregoing assets without any
obligation (including any obligation to account or pay
royalties) or liability to Certegy.
The parties agree and acknowledge that Paynet Secure
Level 2 does not exist.
LICENSE: Certegy hereby grants to Equifax a fully
paid, non-exclusive, perpetual, worldwide license to
use, modify, copy, improve and create Derivative Works
and enhancements from, in source code and object code
format, processes or procedures developed by Equifax
in support to the Paynet Secure software product that
have applicability independent of or from the Paynet
Secure software product.
DERIVATIVE PRODUCTS: Any modifications, enhancements
or Derivative Works lawfully made by either party to
any of the foregoing assets shall be owned by the
entity that modified or enhanced such asset or created
such Derivative Work from such asset.
FEES/ALLOCATIONS: None.
ADDITIONAL TERMS: Equifax agrees that it shall have no
ownership or proprietary rights in and to the
trademark "Paynet Secure" or similar ▇▇▇▇. Each owner
of any of the foregoing assets shall (i) have the
right to enforce, in any country, all rights embodied
in such assets, and the other party agrees (at its
expense) to cooperate in such enforcement action as
reasonably requested by the owner thereof, and (ii)
have the right to file appropriate patent, trademark,
copyright or other applications, in any country, with
respect to such assets. Please refer to the Transition
Support Agreement for information concerning equipment
that supports Paynet Secure.
55
RETAIL REACH (SOFTWARE OWNERSHIP: As of the Closing Date, all right, title
APPLICATION), SOURCE and interest in and to the Retail Reach source code,
CODE, OBJECT CODE AND object code and documentation, including, without
DOCUMENTATION limitation, all patents, patent rights and copyrights
related thereto, shall be and at all times will remain
jointly owned by Equifax and Certegy. Each respective
owner shall have the right to make, use, sell, copy,
distribute, import, develop Derivative Works or
enhancements of, and publicly perform and display, for
any purpose, any of the foregoing assets without any
obligation (including any obligation to account or pay
royalties) or liability to Equifax. Notwithstanding
the foregoing, ownership of check transaction data and
DL/MICR cross-referencing data shall be governed in
accordance with the terms of the Intercompany Data
Purchase Agreement and the Bridge Database (as defined
in the Transition Support Agreement) shall be owned
solely and exclusively by Equifax, subject to the
terms and conditions of the Transition Support
Agreement.
LICENSE: None.
DERIVATIVE PRODUCTS: Any modifications, enhancements
or Derivative Works lawfully made by either party to
any of the foregoing assets shall be owned by the
entity that modified or enhanced such asset or created
such Derivative Work from such asset.
FEES/ALLOCATIONS: None.
ADDITIONAL TERMS: Each owner of any of the foregoing
assets shall (i) have the right to enforce, in any
country, all rights embodied in such assets, and the
other party agrees (at its expense) to cooperate in
such enforcement action as reasonably requested by the
owner thereof, and (ii) have the right to file
appropriate patent, trademark, copyright or other
applications, in any country, with respect to such
assets. Any patent rights to any invention that (i)
has been incorporated into an asset and (ii) was
created or developed (in any form or manner) prior to
the Distribution Date, shall be jointly owned by the
respective parties. Certegy agrees that it shall have
no ownership, proprietary rights or rights of use in
and to the trademark "Retail Reach" or a similar ▇▇▇▇.
Please refer to the Intercompany Data Purchase
Agreement and the Transition Support Agreement for
additional details regarding Retail Reach.
All references to Certegy and Equifax under this Exhibit M may, where the
context provides and where applicable, be construed to refer to such entity's
respective Group member.
Each party agrees to execute, or cause to be executed, such
acknowledgements, grants and assignments of rights in and to the intellectual
property described above, as the other party may reasonably request for the
purpose of evidencing, enforcing, registering or defending the ownership of such
intellectual property as contemplated above.
56
EXHIBIT N
PROJECTED MIPS
2001 Former
------------ ------------
PROJECTED MIPS EQUIFAX: 433 EQUIFAX: 438
CERTEGY: 178 CERTEGY: 266
OVERHEAD MIPS EQUIFAX: 114 EQUIFAX: 68
CERTEGY: 114 CERTEGY: 68
57