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EXHIBIT 2.7
MASTER TRADEMARK OWNERSHIP
AND LICENSE AGREEMENT
BETWEEN
MRV COMMUNICATIONS, INC.
AND
OPTICAL ACCESS, INC.
EFFECTIVE AS OF SEPTEMBER 29, 2000
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MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
PAGE
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ARTICLE 1 DEFINITIONS.......................................................................1
1.1 AUTHORIZED DEALERS................................................................1
1.2 COLLATERAL MATERIALS..............................................................1
1.3 CORPORATE IDENTITY MATERIALS......................................................1
1.4 LICENSED MARKS....................................................................1
1.5 MAINTENANCE CONTRACTS.............................................................2
1.6 ▇▇▇▇..............................................................................2
1.7 MASTER SEPARATION AGREEMENT.......................................................2
1.8 OPTICAL ACCESS BUSINESS...........................................................2
1.9 OPTICAL ACCESS BUSINESS MARKS.....................................................2
1.10 OPTICAL ACCESS BUSINESS MARKS SCHEDULE............................................2
1.11 OPTICAL ACCESS BUSINESS PRODUCTS..................................................2
1.12 PERSON............................................................................2
1.13 QUALITY STANDARDS.................................................................2
1.14 SELL..............................................................................3
1.15 SEPARATION DATE...................................................................3
1.16 SUBSIDIARY........................................................................3
1.17 THIRD PARTY.......................................................................3
1.18 TRADEMARK USAGE GUIDELINES........................................................3
ARTICLE 2 OWNERSHIP.........................................................................3
2.1 OWNERSHIP OF OPTICAL ACCESS BUSINESS MARKS........................................3
2.2 PRIOR GRANTS......................................................................4
2.3 ASSIGNMENT DISCLAIMER.............................................................4
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ARTICLE 3 LICENSES..........................................................................4
3.1 LICENSE GRANT.....................................................................4
3.2 LICENSE RESTRICTIONS..............................................................4
3.3 LICENSEE UNDERTAKINGS.............................................................5
3.4 NON-TRADEMARK USE.................................................................5
3.5 RESERVATION OF RIGHTS.............................................................5
3.6 THIRD PARTY LICENSES..............................................................6
ARTICLE 4 PERMITTED SUBLICENSES.............................................................6
4.1 SUBLICENSES.......................................................................6
4.2 AUTHORIZED DEALERS' USE OF MARKS..................................................6
4.3 ENFORCEMENT OF AGREEMENTS.........................................................6
ARTICLE 5 TRADEMARK USAGE GUIDELINES........................................................7
5.1 TRADEMARK USAGE GUIDELINES........................................................7
5.2 TRADEMARK REVIEWS.................................................................7
ARTICLE 6 TRADEMARK USAGE GUIDELINE ENFORCEMENT.............................................7
6.1 INITIAL CURE PERIOD...............................................................7
6.2 SECOND CURE PERIOD................................................................7
6.3 FINAL CURE PERIOD.................................................................8
ARTICLE 7 QUALITY STANDARDS.................................................................8
7.1 GENERAL...........................................................................8
7.2 QUALITY STANDARDS.................................................................8
7.3 QUALITY CONTROL REVIEWS...........................................................8
7.4 PRODUCT DISCONTINUATION...........................................................8
ARTICLE 8 QUALITY STANDARD ENFORCEMENT......................................................9
8.1 INITIAL CURE PERIOD...............................................................9
8.2 SECOND CURE PERIOD................................................................9
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8.3 FINAL CURE PERIOD.................................................................9
ARTICLE 9 PROTECTION OF LICENSED MARKS......................................................9
9.1 OWNERSHIP AND RIGHTS..............................................................9
9.2 PROTECTION OF MARKS...............................................................9
9.3 SIMILAR MARKS....................................................................10
9.4 INFRINGEMENT PROCEEDINGS.........................................................10
ARTICLE 10 TERMINATION......................................................................11
10.1 TERM.............................................................................11
10.2 VOLUNTARY TERMINATION............................................................11
10.3 SURVIVAL.........................................................................11
10.4 OTHER TERMINATION................................................................11
ARTICLE 11 DISPUTE RESOLUTION...............................................................11
11.1 MEDIATION........................................................................11
11.2 ARBITRATION......................................................................11
11.3 COURT ACTION.....................................................................12
11.4 CONTINUITY OF SERVICE AND PERFORMANCE............................................12
ARTICLE 12 LIMITATION OF LIABILITY..........................................................12
ARTICLE 13 MISCELLANEOUS PROVISIONS.........................................................13
13.1 DISCLAIMER.......................................................................13
13.2 NO IMPLIED LICENSES..............................................................13
13.3 INFRINGEMENT SUITS...............................................................13
13.4 NO OTHER OBLIGATIONS.............................................................13
13.5 ENTIRE AGREEMENT.................................................................13
13.6 GOVERNING LAW....................................................................14
13.7 DESCRIPTIVE HEADINGS.............................................................14
13.8 NOTICES..........................................................................14
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13.9 NONASSIGNABILITY.................................................................15
13.10 SEVERABILITY.....................................................................15
13.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE............................15
13.12 AMENDMENT........................................................................15
13.13 COUNTERPARTS.....................................................................15
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MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
This Master Trademark Ownership and License Agreement (the "Agreement") is
effective as of September 29, 2000 (the "Effective Date"), between MRV
Communications, Inc., a Delaware corporation ("MRV"), having an office at ▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ and Optical Access, Inc., a
Delaware corporation ("Optical Access"), having an office at ▇▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇.
WHEREAS, the Board of Directors of MRV has determined that it is in the best
interest of MRV and its stockholders to separate MRV's existing businesses into
two independent businesses;
WHEREAS, as part of the foregoing, MRV and Optical Access have entered into
a Master Separation Agreement (as defined below) which provides, among other
things, for the separation of certain Optical Access assets and Optical Access
liabilities, the initial public offering of Optical Access stock, and the
execution and delivery of certain other agreements in order to facilitate and
provide for the foregoing;
WHEREAS, the parties desire that MRV assign and transfer to Optical Access
the Optical Access Business Marks (as defined below); and
WHEREAS, the parties further desire that MRV license the Licensed Marks (as
defined below) to Optical Access after the separation of the Optical Access
businesses.
NOW, THEREFORE, in consideration of the mutual promises of the parties, and
of good and valuable consideration, it is agreed by and between the parties as
follows:
ARTICLE 1
DEFINITIONS
For the purpose of this Agreement, the following capitalized terms are
defined in this Article 1 and shall have the meaning specified herein:
1.1 AUTHORIZED DEALERS.
"Authorized Dealers" means any distributor, dealer or other agent that on or
after the Separation Date is authorized to market, advertise, sell, lease, rent,
service or otherwise offer Optical Access Business Products. Optical Access will
provide MRV a list of the then current Authorized Dealers within a reasonable
period after MRV's request.
1.2 COLLATERAL MATERIALS.
"Collateral Materials" means all packaging, tags, labels, advertising,
promotions, display fixtures, instructions, warranties and other materials of
any and all types associated with the Optical Access Business Products that are
marked with at least one of the Licensed Marks.
1.3 CORPORATE IDENTITY MATERIALS.
"Corporate Identity Materials" means materials that are not products or
product-related and that Optical Access may now or hereafter use to communicate
its identity, including, by way of example and without limitation, business
cards, letterhead, stationery, paper stock and other supplies, and signage on
real property and buildings.
1.4 LICENSED MARKS.
"Licensed Marks" means the Marks set forth in Schedule 1.4 attached hereto.
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1.5 MAINTENANCE CONTRACTS.
"Maintenance Contracts" means agreements pursuant to which Optical Access, its
Subsidiaries or its or their Authorized Dealers or their designees provide
repair and maintenance services (whether preventive, diagnostic, remedial,
warranty or non-warranty) in connection with Optical Access Business Products,
including without limitation agreements entered into by MRV prior to the
Separation Date and assigned to Optical Access pursuant to the Master Separation
Agreement or the Ancillary Agreements (as such term is defined in the Master
Separation Agreement).
1.6 ▇▇▇▇.
"▇▇▇▇" means any trademark, service ▇▇▇▇, trade name, domain name, and the like,
or other word, name, symbol or device, or any combination thereof, used or
intended to be used by a Person to identify and distinguish the products or
services of that Person from the products or services of others and to indicate
the source of such goods or services, including without limitation all
registrations and applications therefore throughout the world and all common law
and other rights therein throughout the world.
1.7 MASTER SEPARATION AGREEMENT.
"Master Separation Agreement" means the Master Separation Agreement between the
parties.
1.8 OPTICAL ACCESS BUSINESS.
"Optical Access Business" means the business and operations of Optical Access.
1.9 OPTICAL ACCESS BUSINESS MARKS.
"Optical Access Business Marks" means the mutually agreed Marks listed in the
Optical Access Business Marks Schedule attached hereto as Schedule 1.9.
1.10 OPTICAL ACCESS BUSINESS MARKS SCHEDULE.
"Optical Access Business Marks Schedule" means the mutually agreed Optical
Access Business Marks Schedule as of the Separation Date, as it may be updated
by the parties upon mutual agreement to add additional Marks as of the
Separation Date.
1.11 OPTICAL ACCESS BUSINESS PRODUCTS.
"Optical Access Business Products" means any and all products of the Optical
Access Business commercially released prior to the Separation Date.
1.12 PERSON.
"Person" means an individual, a partnership, a corporation, a limited liability
company, an association, a joint stock company, a trust, a joint venture, an
unincorporated organization, and a governmental entity or any department, agency
or political subdivision thereof.
1.13 QUALITY STANDARDS.
"Quality Standards" means standards of quality applicable to the Optical Access
Business Products, as in use immediately prior to the Separation Date, unless
otherwise communicated in writing by MRV from time to time.
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1.14 SELL.
To "Sell" a product means to sell, transfer, lease or otherwise dispose of a
product. "Sale" and "Sold" have the corollary meanings ascribed thereto.
1.15 SEPARATION DATE.
"Separation Date" means 12:01 a.m., Pacific Time, October 31, 2000 or such other
date as may be fixed by the Board of Directors of MRV.
1.16 SUBSIDIARY.
"Subsidiary" of any Person means a corporation or other organization whether
incorporated or unincorporated of which at least a majority of the securities or
interests having by the terms thereof ordinary voting power to elect at least a
majority of the board of directors or others performing similar functions with
respect to such corporation or other organization is directly or indirectly
owned or controlled by such Person or by any one or more of its Subsidiaries, or
by such Person and one or more of its Subsidiaries; provided, however, that no
Person that is not directly or indirectly wholly-owned by any other Person shall
be a Subsidiary of such other Person unless such other Person controls, or has
the right, power or ability to control, that Person. For purposes of this
Agreement, Optical Access shall be deemed not to be a subsidiary of MRV.
1.17 THIRD PARTY.
"Third Party" means a Person other than MRV and its Subsidiaries and Optical
Access and its Subsidiaries.
1.18 TRADEMARK USAGE GUIDELINES.
"Trademark Usage Guidelines" means the guidelines for proper usage of the
Licensed Marks, as in use immediately prior to the Separation Date, as such
guidelines may be revised and updated in writing by MRV from time to time.
ARTICLE 2
OWNERSHIP
2.1 OWNERSHIP OF OPTICAL ACCESS BUSINESS MARKS.
The parties agree that Optical Access hereby retains ownership of all right,
title and interest in and to the Optical Access Business Marks. Subject to
Sections 2.2 and 2.3 below, to the extent that any Optical Access Business Marks
are registered in MRV's name anywhere in the world, or to the extent that MRV
otherwise has any ownership rights in and to the Optical Access Business Marks
or any goodwill therein, MRV hereby grants, conveys and assigns (and agrees to
cause its appropriate Subsidiaries to grant, convey and assign) to Optical
Access, by execution hereof (or, where appropriate or required, by execution of
separate instruments of assignment), all its (and their) right, title and
interest in and to the Optical Access Business Marks, including all goodwill of
the Optical Access Business appurtenant thereto, to be held and enjoyed by
Optical Access, its successors and assigns. MRV further grants, conveys and
assigns (and agrees to cause its appropriate Subsidiaries to grant, convey and
assign) to Optical Access all its (and their) right, title and interest in and
to any and all causes of action and rights of recovery for past infringement of
the Optical Access Business Marks. MRV will, without demanding any further
consideration therefore, at the request and expense of Optical Access (except
for the value of the time of MRV employees), do (and to cause its Subsidiaries
to do) all lawful and just acts that
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may be or become necessary for evidencing, maintaining, recording and perfecting
Optical Access's rights to such Optical Access Business Marks consistent with
MRV's general business practice as of the Separation Date, including but not
limited to execution and acknowledgement of (and causing its Subsidiaries to
execute and acknowledge) assignments and other instruments in a form reasonably
required by Optical Access or the relevant governmental or other authorities for
each ▇▇▇▇ in all jurisdictions in which MRV owns rights thereto.
2.2 PRIOR GRANTS.
Optical Access acknowledges and agrees that the foregoing assignment is subject
to any and all licenses or other rights that may have been granted by MRV or its
Subsidiaries with respect to the Optical Access Business Marks prior to the
Separation Date. MRV shall respond to reasonable inquiries from Optical Access
regarding any such prior grants.
2.3 ASSIGNMENT DISCLAIMER.
OPTICAL ACCESS ACKNOWLEDGES AND AGREES THAT THE FOREGOING ASSIGNMENTS ARE MADE
ON AN "AS-IS," QUITCLAIM BASIS AND THAT NEITHER MRV NOR ANY SUBSIDIARY OF MRV
HAS MADE OR WILL MAKE ANY WARRANTY WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY,
INCLUDING, WITHOUT LIMITATION, ANY IMPLIED WARRANTIES OF TITLE, ENFORCEABILITY
OR NON-INFRINGEMENT.
ARTICLE 3
LICENSES
3.1 LICENSE GRANT.
MRV grants (and agrees to cause its appropriate Subsidiaries to grant) to
Optical Access a personal, irrevocable, nonexclusive, worldwide, fully-paid and
non-transferable (except as set forth in Section 13.9) license to use the
Licensed Marks on the Optical Access Business Products and in connection with
the Sale and offer for Sale of Optical Access Business Products (or, in the case
of Optical Access Business Products in the form of software, in connection with
licensing of Optical Access Business Products) and to use the Licensed Marks in
the advertisement and promotion of such Optical Access Business Products.
3.2 LICENSE RESTRICTIONS.
(a) Optical Access may not make any use whatsoever, in whole or
in part, of the Licensed Marks, or any other ▇▇▇▇ owned by MRV, in connection
with Optical Access's corporate, doing business as, or fictitious name, or on
Corporate Identity Materials without the prior written consent of MRV, except as
expressly set forth in this Section 3.2(a) or in Section 3.4 below.
Notwithstanding the foregoing, Optical Access may use any business cards,
letterhead, stationery, paper stock and other supplies, and the like throughout
their useful life in connection with the conduct of the Optical Access Business,
to the extent that, as of the Separation Date, they are in use, in inventory or
on order.
(b) Optical Access may not use any Licensed ▇▇▇▇ in direct
association with another ▇▇▇▇ such that the two Marks appear to be a single ▇▇▇▇
or in any other composite manner with any Marks of Optical Access or any Third
Party (other than the Optical Access Business Marks as permitted herein).
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(c) In all respects, Optical Access's usage of the Licensed Marks
pursuant to the license granted hereunder shall be in a manner consistent with
the high standards, reputation and prestige represented by the Licensed Marks,
and any usage by Optical Access that is inconsistent with the foregoing shall be
deemed to be outside the scope of the license granted hereunder. As a condition
to the license granted hereunder, Optical Access shall at all times present,
position and promote the Optical Access Business Products marked with one or
more of the Licensed Marks in a manner consistent with the high standards and
prestige represented by the Licensed Marks.
3.3 LICENSEE UNDERTAKINGS.
As a condition to the licenses granted hereunder, Optical Access undertakes to
MRV that:
(a) Optical Access shall not use the Licensed Marks (or any
other ▇▇▇▇ of MRV) in any manner which is deceptive or misleading, which
ridicules or is derogatory to the Licensed Marks, or which compromises or
reflects unfavorably upon the goodwill, good name, reputation or image of MRV or
the Licensed Marks, or which might jeopardize or limit MRV's proprietary
interest therein.
(b) Optical Access shall not use the Licensed Marks in
connection with any products or services other than the Optical Access Business
Products.
(c) Optical Access shall not
(i) misrepresent to any Person the scope of its authority
under this Agreement,
(ii) incur or authorize any expenses or liabilities
chargeable to MRV, or
(iii) take any actions that would impose upon MRV any
obligation or liability to a Third Party other than obligations under this
Agreement, or other obligations which MRV expressly approves in writing for
Optical Access to incur on its behalf.
(d) All press releases and corporate advertising and
promotions that embody the Licensed Marks and messages conveyed thereby shall be
consistent with the high standards and prestige represented by the Licensed
Marks.
3.4 NON-TRADEMARK USE.
Each party may make appropriate and truthful references to the other party and
the other party's products and technology.
3.5 RESERVATION OF RIGHTS.
Except as otherwise expressly provided in this Agreement, MRV shall retain all
rights in and to the Licensed Marks, including without limitation:
(a) All rights of ownership in and to the Licensed Marks;
(b) The right to use (including the right of MRV's
Subsidiaries to use) the Licensed Marks, either alone or in combination with
other Marks, in connection with the marketing, offer or provision of any product
or service, including any product or service which competes with Optical Access
Business products; and
(c) The right to license Third Parties to use the Licensed
Marks.
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3.6 THIRD PARTY LICENSES.
MRV agrees that it and its Subsidiaries will not license or transfer the
Licensed Marks to Third Parties (other than to and among Subsidiaries or Joint
Ventures (as defined below) of MRV) for use in connection with products or
services which compete with Optical Access Business Products that are listed on
a mutually agreed Optical Access corporate price list as of the Separation Date
until two (2) years after the Separation Date. Such restriction shall be binding
on any successors and assigns of the Licensed Marks. As used in this Section
3.6, "Joint Venture" means a corporation or other organization whether
incorporated or unincorporated of which at least fifty percent (50%) of the
securities or interests having by the terms thereof ordinary voting power to
elect at least a majority of the board of directors or others performing similar
functions with respect to such corporation or other organization is directly or
indirectly owned or controlled by MRV.
ARTICLE 4
PERMITTED SUBLICENSES
4.1 SUBLICENSES
(a) SUBLICENSES TO SUBSIDIARIES. Subject to the terms and
conditions of this Agreement, including all applicable Quality Standards and
Trademark Usage Guidelines and other restrictions in this Agreement, Optical
Access may grant sublicenses to its Subsidiaries to use the Licensed Marks in
accordance with the license grant in Section 3.1 above; provided, that
(i) Optical Access enters into a written sublicense
agreement with each such Subsidiary sublicensee, and
(ii) such agreement does not include the right to grant
further sublicenses other than, in the case of a sublicensed Subsidiary of
Optical Access, to another Subsidiary of Optical Access. Optical Access shall
provide copies of such written sublicense agreements to MRV upon request. If
Optical Access grants any sublicense rights pursuant to this Section 4.1(a) and
any such sublicensed Subsidiary ceases to be a Subsidiary, then the sublicense
granted to such Subsidiary pursuant to this Section 4.1(a) shall terminate 180
days from the date of such cessation.
4.2 AUTHORIZED DEALERS' USE OF MARKS.
Subject to the terms and conditions of this Agreement, including all applicable
Quality Standards and Trademark Usage Guidelines and other restrictions in this
Agreement, Optical Access (and those Subsidiaries sublicensed to use the
Licensed Marks pursuant to Section 4.1) may allow Authorized Dealers to, and may
allow such Authorized Dealers to allow other Authorized Dealers to, use the
Licensed Marks in the advertisement and promotion of Optical Access Business
Products Sold by such Authorized Dealers.
4.3 ENFORCEMENT OF AGREEMENTS.
(a) Optical Access shall take all appropriate measures at
Optical Access's expense promptly and diligently to enforce the terms of any
sublicense agreement or other agreement with any Subsidiary or Authorized
Dealer, or of any existing agreement with any Authorized Dealer, and shall
restrain any such Subsidiary or Authorized Dealer from violating such terms,
including without limitation
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(i) monitoring the Subsidiaries' and Authorized Dealers'
compliance with the relevant Trademark Usage Guidelines and Quality Standards
and causing any noncomplying Subsidiary or Authorized Dealer promptly to remedy
any failure,
(ii) terminating such agreement and/or
(iii) commencing legal action, in each case, using a
standard of care consistent with MRV's practices as of the Separation Date.
In the event that MRV determines that Optical Access has failed promptly
and diligently to enforce the terms of any such agreement using such standard of
care, MRV reserves the right to enforce such terms, and Optical Access shall
reimburse MRV for its fully allocated direct costs and expenses incurred in
enforcing such agreement, plus all out-of- pocket costs and expenses, plus five
percent (5%).
ARTICLE 5
TRADEMARK USAGE GUIDELINES
5.1 TRADEMARK USAGE GUIDELINES.
Optical Access and its Subsidiaries and Authorized Dealers shall use the
Licensed Marks only in a manner that is consistent with the Trademark Usage
Guidelines.
5.2 TRADEMARK REVIEWS.
At MRV's request, Optical Access agrees to furnish or make available for
inspection to MRV samples of all Optical Access Business Products and Collateral
Materials of Optical Access, its Subsidiaries and Authorized Dealers that are
marked with one or more of the Licensed Marks (to the extent that Optical Access
has the right to obtain such samples). If Optical Access is notified or
determines that it or any of its Subsidiaries or Authorized Dealers is not
complying with any Trademark Usage Guidelines, it shall notify MRV and the
provisions of Article 6 and Section 4.3 shall apply to such noncompliance.
ARTICLE 6
TRADEMARK USAGE GUIDELINE ENFORCEMENT
6.1 INITIAL CURE PERIOD.
If MRV becomes aware that Optical Access or any Subsidiary or Authorized Dealer
is not complying with any Trademark Usage Guidelines, MRV shall notify Optical
Access in writing, setting forth in reasonable detail a written description of
the noncompliance and any requested action for curing such noncompliance.
Optical Access shall then have sixty (60) days with regard to noncompliance by
Authorized Dealers and thirty (30) days with regard to noncompliance by Optical
Access or any Subsidiary after receipt of such notice ("Guideline Initial Cure
Period") to correct such noncompliance or submit to MRV a written plan to
correct such noncompliance which written plan is reasonably acceptable to MRV.
6.2 SECOND CURE PERIOD.
If noncompliance with the Trademark Usage Guidelines continues beyond the
Guideline Initial Cure Period, Optical Access and MRV shall each promptly
appoint a representative to negotiate in good faith actions that may be
necessary to correct such noncompliance. The parties shall have thirty (30) days
following the expiration of the Guideline Initial Cure Period to agree on
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corrective actions, and Optical Access shall have thirty (30) days from the date
of an agreement of corrective actions to implement such corrective actions and
cure or cause the cure of such noncompliance ("Second Guideline Cure Period").
6.3 FINAL CURE PERIOD.
If the noncompliance with the Trademark Usage Guidelines remains uncured after
the expiration of the Second Guideline Cure Period, then at MRV's election,
Optical Access, or the noncomplying Subsidiary or Authorized Dealer, whichever
is applicable, promptly shall cease using the noncomplying Collateral Materials
until MRV determines that Optical Access, or the noncomplying Subsidiary or
Authorized Dealer, whichever is applicable, has demonstrated its ability and
commitment to comply with the Trademark Usage Guidelines. Nothing in this
Article 6 shall be deemed to limit Optical Access's obligations under Section
4.3 above or to preclude MRV from exercising any rights or remedies under
Section 4.3 above.
ARTICLE 7
QUALITY STANDARDS
7.1 GENERAL.
Optical Access acknowledges that the Optical Access Business Products permitted
by this Agreement to be marked with one or more of the Licensed Marks must
continue to be of sufficiently high quality as to provide protection of the
Licensed Marks and the goodwill they symbolize, and Optical Access further
acknowledges that the maintenance of the high quality standards associated with
such products is of the essence of this Agreement.
7.2 QUALITY STANDARDS.
Optical Access and its Authorized Dealers and Subsidiaries shall use the
Licensed Marks only on and in connection with Optical Access Business Products
that meet or exceed in all respects the Quality Standards.
7.3 QUALITY CONTROL REVIEWS.
At MRV's request, Optical Access agrees to furnish or make available to MRV for
inspection sample Optical Access Business Products marked with one or more of
the Licensed Marks. MRV may also independently conduct customer satisfaction
surveys to determine if Optical Access and its Subsidiaries and Authorized
Dealers are meeting the Quality Standards. Optical Access shall cooperate with
MRV fully in the distribution of such surveys. In the event of a challenge by
MRV, MRV shall, at the request of Optical Access, provide Optical Access with
copies of customer surveys used by MRV to determine if Optical Access is meeting
the Quality Standards. If Optical Access is notified or determines that it or
any of its Subsidiaries or Authorized Dealers is not complying with any Quality
Standards, it shall notify MRV and the provisions of Article 8 and Section 4.3
shall apply to such noncompliance.
7.4 PRODUCT DISCONTINUATION.
If, at any time during or after the term of this Agreement, Optical Access
discontinues the sale of a Optical Access Business Product that has been marked
with one or more of the Licensed Marks, Optical Access shall substantially
comply with the discontinuation procedure used by MRV for such or similar
products immediately prior to Separation Date.
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ARTICLE 8
QUALITY STANDARD ENFORCEMENT
8.1 INITIAL CURE PERIOD.
If MRV becomes aware that Optical Access or any Subsidiary or Authorized Dealer
sublicensee is not complying with any Quality Standards, MRV shall notify
Optical Access in writing, setting forth in reasonable detail a written
description of the noncompliance and any requested action for curing such
noncompliance. Optical Access shall then have thirty (30) days after receipt of
such notice ("Initial Cure Period") to correct such noncompliance or submit to
MRV a written plan to correct such noncompliance which written plan is
reasonably acceptable to MRV.
8.2 SECOND CURE PERIOD.
If noncompliance with the Quality Standards continues beyond the Initial Cure
Period, Optical Access and MRV shall each promptly appoint a representative to
negotiate in good faith actions that may be necessary to correct such
noncompliance. The parties shall have thirty (30) days following the expiration
of the Initial Cure Period to agree on corrective actions, and Optical Access
shall have thirty (30) days from the date of an agreement of corrective actions
to implement such corrective actions and cure or cause the cure of such
noncompliance ("Second Cure Period").
8.3 FINAL CURE PERIOD.
If the noncompliance with the Quality Standards remains uncured after the
expiration of the Second Cure Period, then at MRV's election, Optical Access, or
the noncomplying Subsidiary or Authorized Dealer, whichever is applicable,
promptly shall cease offering the noncomplying Optical Access Business Products
under the Licensed Marks until MRV determines that Optical Access, or the
noncomplying Subsidiary or Authorized Dealer, whichever is applicable, has
demonstrated its ability and commitment to comply with the Quality Standards.
Nothing in this Article 8 shall be deemed to limit Optical Access's obligations
under Section 4.3 above or to preclude MRV from exercising any rights or
remedies under Section 4.3 above.
ARTICLE 9
PROTECTION OF LICENSED MARKS
9.1 OWNERSHIP AND RIGHTS.
To the extent not contrary to applicable law, Optical Access agrees not to
challenge the ownership or validity of the Licensed Marks. Optical Access shall
not disparage, dilute or adversely affect the validity of the Licensed Marks.
Optical Access's use of the Licensed Marks shall inure exclusively to the
benefit of MRV, and Optical Access shall not acquire or assert any rights
therein. Optical Access recognizes the value of the goodwill associated with the
Licensed Marks, and that the Licensed Marks may have acquired secondary meaning
in the minds of the public.
9.2 PROTECTION OF MARKS.
Optical Access shall assist MRV, at MRV's request and expense, in the
procurement and maintenance of MRV's intellectual property rights in the
Licensed Marks. Optical Access will not grant or attempt to grant a security
interest in the Licensed Marks, or to record any such security interest in the
United States Patent and Trademark Office or elsewhere, against any trademark
application or registration belonging to MRV. Optical Access agrees to, and to
cause
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its Subsidiaries to, execute all documents reasonably requested by MRV to effect
further registration of, maintenance and renewal of the Licensed Marks,
recordation of the license relationship between MRV and Optical Access, and
recordation of Optical Access as a registered user. MRV makes no warranty or
representation that trademark registrations have been or will be applied for,
secured or maintained in the Licensed Marks throughout, or anywhere within, the
world. Optical Access shall cause to appear on all Optical Access Business
Products, and all Collateral Materials, such legends, markings and notices as
may be required by applicable law or reasonably requested by MRV.
9.3 SIMILAR MARKS.
Optical Access agrees not to use or register in any country any ▇▇▇▇ that
infringes MRV's rights in the Licensed Marks, or any element thereof. If any
application for registration is, or has been, filed in any country by Optical
Access which relates to any ▇▇▇▇ that infringes MRV's rights in the Licensed
Marks, Optical Access shall immediately abandon any such application or
registration or assign it to MRV. To the extent not contrary to applicable law,
Optical Access shall not challenge MRV's ownership of or the validity of the
Licensed Marks or any application for registration thereof throughout the world.
Optical Access shall not use or register in any country any copyright, domain
name, telephone number or any other intellectual property right, whether
recognized currently or in the future, or other designation which would affect
the ownership or rights of MRV in and to the Licensed Marks, or otherwise to
take any action which would adversely affect any of such ownership rights, or
assist anyone else in doing so. Optical Access shall cause its Subsidiaries and
Authorized Dealers to comply with the provisions of this Section 9.3.
9.4 INFRINGEMENT PROCEEDINGS.
In the event that the Optical Access General Counsel learns of any infringement
or threatened infringement of the Licensed Marks, or any unfair competition,
passing-off or dilution with respect to the Licensed Marks, Optical Access shall
notify MRV or its authorized representative giving particulars thereof, and
Optical Access shall provide necessary information and assistance to MRV or its
authorized representatives at MRV's expense in the event that MRV decides that
proceedings should be commenced. Notwithstanding the foregoing, Optical Access
is not obligated to monitor or police use of the Licensed Marks by Third Parties
other than as specifically set forth in Section 4.3. MRV shall have exclusive
control of any litigation, opposition, cancellation or related legal
proceedings, relating to the use of the licensed trademarks by third parties.
The decision whether to bring, maintain or settle any such proceedings shall be
at the exclusive option and expense of MRV, and all recoveries shall belong
exclusively to MRV. Optical Access shall not and shall have no right to initiate
any such litigation, opposition, cancellation or related legal proceedings in
its own name, but, at MRV's request, agrees to be joined as a party in any
action taken by MRV to enforce its rights in the Licensed Marks. MRV shall incur
no liability to Optical Access or any other Person under any legal theory by
reason of MRV's failure or refusal to prosecute or by MRV's refusal to permit
Optical Access to prosecute, any alleged infringement by Third Parties, nor by
reason of any settlement to which MRV may agree.
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ARTICLE 10
TERMINATION
10.1 TERM.
This Agreement shall remain in effect for a period of two (2) years from the
Separation Date unless earlier terminated as provided below.
10.2 VOLUNTARY TERMINATION.
By written notice to MRV, Optical Access may voluntarily terminate all or a
specified portion of the licenses and rights granted to it hereunder by MRV.
Such notice shall specify the effective date of such termination and shall
clearly specify any affected Licensed Marks, Optical Access Business Products or
services.
10.3 SURVIVAL.
Any termination of licenses and rights of Optical Access under Section 10.2
shall not affect Optical Access's licenses and rights with respect to any
Optical Access Business Products made or sold prior to such termination.
10.4 OTHER TERMINATION.
MRV acknowledges and agrees that its rights to terminate the licenses granted to
Optical Access hereunder are solely as set forth in Section 4.3 and Articles 6
and 8.
ARTICLE 11
DISPUTE RESOLUTION
11.1 MEDIATION.
If a dispute, controversy or claim ("Dispute") arises between the parties
relating to the interpretation or performance of this Agreement or the Ancillary
Agreements, or the grounds for the termination hereof, appropriate senior
executives of each party who shall have the authority to resolve the matter
shall meet to attempt in good faith to negotiate a resolution of the Dispute
prior to pursuing other available remedies. The initial meeting between the
appropriate senior executives shall be referred to herein as the "Dispute
Resolution Commencement Date." Discussions and correspondence relating to trying
to resolve such Dispute shall be treated as confidential information developed
for the purpose of settlement and shall be exempt from discovery or production
and shall not be admissible. If the senior executives are unable to resolve the
Dispute within thirty (30) days from the Dispute Resolution Commencement Date,
and either party wishes to pursue its rights relating to such Dispute, then the
Dispute will be mediated by a mutually acceptable mediator appointed pursuant to
the mediation rules of JAMS/Endispute within thirty (30) days after written
notice by one party to the other demanding non-binding mediation. Neither party
may unreasonably withhold consent to the selection of a mediator or the location
of the mediation. Both parties will share the costs of the mediation equally,
except that each party shall bear its own costs and expenses, including
attorney's fees, witness fees, travel expenses, and preparation costs. The
parties may also agree to replace mediation with some other form of non-binding
or binding ADR.
11.2 ARBITRATION.
Any Dispute which the parties cannot resolve through mediation within ninety
(90) days of the Dispute Resolution Commencement Date, unless otherwise mutually
agreed, shall be submitted
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to final and binding arbitration under the then current Commercial Arbitration
Rules of the American Arbitration Association ("AAA"), by three (3) arbitrators
in Los Angeles County, California. Such arbitrators shall be selected by the
mutual agreement of the parties or, failing such agreement, shall be selected
according to the aforesaid AAA rules. The arbitrators will be instructed to
prepare and deliver a written, reasoned opinion stating their decision within
thirty (30) days of the completion of the arbitration. The prevailing party in
such arbitration shall be entitled to expenses, including costs and reasonable
attorneys' and other professional fees, incurred in connection with the
arbitration (but excluding any costs and fees associated with prior negotiation
or mediation). The decision of the arbitrator shall be final and non-appealable
and may be enforced in any court of competent jurisdiction. The use of any ADR
procedures will not be construed under the doctrine of laches, waiver or
estoppel to adversely affect the rights of either party.
11.3 COURT ACTION.
Any Dispute regarding the following is not required to be negotiated, mediated
or arbitrated prior to seeking relief from a court of competent jurisdiction:
breach of any obligation of confidentiality; infringement, misappropriation, or
misuse of any intellectual property right; any other claim where interim relief
from the court is sought to prevent serious and irreparable injury to one of the
parties or to others. However, the parties to the Dispute shall make a good
faith effort to negotiate and mediate such Dispute, according to the above
procedures, while such court action is pending.
11.4 CONTINUITY OF SERVICE AND PERFORMANCE.
Unless otherwise agreed in writing, the parties will continue to provide service
and honor all other commitments under this Agreement and each Ancillary
Agreement during the course of dispute resolution pursuant to the provisions of
this Article 11 with respect to all matters not subject to such dispute,
controversy or claim.
ARTICLE 12
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE
OTHER PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL, CONSEQUENTIAL,
INDIRECT, INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS OR ANY OTHER
DAMAGES, HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING
NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS AGREEMENT, WHETHER OR NOT
SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES;
PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT EACH
PARTY'S OBLIGATIONS EXPRESSLY ASSUMED IN EXHIBIT J OF THE MASTER
SEPARATION AGREEMENT; PROVIDED FURTHER THAT THE EXCLUSION OF PUNITIVE
DAMAGES SHALL APPLY IN ANY EVENT.
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ARTICLE 13
MISCELLANEOUS PROVISIONS
13.1 DISCLAIMER.
EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL LICENSED MARKS AND ANY OTHER
INFORMATION OR MATERIALS LICENSED OR PROVIDED HEREUNDER ARE LICENSED OR PROVIDED
ON AN "AS IS" BASIS AND THAT NEITHER PARTY NOR ANY OF ITS SUBSIDIARIES MAKE ANY
REPRESENTATIONS OR EXTENDS ANY WARRANTIES WHATSOEVER, EXPRESS, IMPLIED OR
STATUTORY, WITH RESPECT THERETO INCLUDING WITHOUT LIMITATION ANY IMPLIED
WARRANTIES OF TITLE, ENFORCEABILITY OR NON-INFRINGEMENT. Without limiting the
generality of the foregoing, neither MRV nor any of its Subsidiaries makes any
warranty or representation as to the validity of any ▇▇▇▇ licensed by it to
Optical Access or any warranty or representation that any use of any ▇▇▇▇ with
respect to any product or service will be free from infringement of any rights
of any Third Party.
13.2 NO IMPLIED LICENSES.
Nothing contained in this Agreement shall be construed as conferring any
rights by implication, estoppel or otherwise, under any intellectual property
right, other than the rights expressly granted in this Agreement with respect to
the Licensed Marks. Neither party is required hereunder to furnish or disclose
to the other any information (including copies of registrations of the Marks),
except as specifically provided herein.
13.3 INFRINGEMENT SUITS.
Except as set forth in Section 4.3, (i) neither party shall have any obligation
hereunder to institute any action or suit against Third Parties for infringement
of any of the Licensed Marks or to defend any action or suit brought by a Third
Party which challenges or concerns the validity of any of the Licensed Marks and
(ii) Optical Access shall not have any right to institute any action or suit
against Third Parties for infringement of any of the Licensed Marks.
13.4 NO OTHER OBLIGATIONS.
NEITHER PARTY ASSUMES ANY RESPONSIBILITIES OR OBLIGATIONS WHATSOEVER,
OTHER THAN THE RESPONSIBILITIES AND OBLIGATIONS EXPRESSLY SET FORTH IN THIS
AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN THE PARTIES. Without limiting
the generality of the foregoing, neither party, nor any of its Subsidiaries, is
obligated to
(i) file any application for registration of any ▇▇▇▇, or
to secure any rights in any Marks,
(ii) to maintain any ▇▇▇▇ registration, or
(iii) provide any assistance, except for the obligations
expressly assumed in this Agreement.
13.5 ENTIRE AGREEMENT.
This Agreement, the Master Separation Agreement and the other Ancillary
Agreements (as defined in the Master Separation Agreement) and the Exhibits and
Schedules referenced or attached hereto and thereto constitute the entire
agreement between the parties with respect to the subject matter hereof and
thereof and shall supersede all prior written and oral and all
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contemporaneous oral agreements and understandings with respect to the subject
matter hereof and thereof. To the extent there is a conflict between this
Agreement and the General Assignment and Assumption Agreement between the
parties, the terms of this Agreement shall govern.
13.6 GOVERNING LAW.
This Agreement shall be construed in accordance with and all Disputes
hereunder shall be governed by the laws of the State of California, excluding
its conflict of law rules and the United Nations Convention on Contracts for the
International Sale of Goods. The Superior Court of Los Angeles County and/or the
United States District Court for the Central District of California shall have
jurisdiction and venue over all Disputes between the parties that are permitted
to be brought in a court of law pursuant to Article 11 above.
13.7 DESCRIPTIVE HEADINGS.
The headings contained in this Agreement, in any Exhibit or Schedule
hereto and in the table of contents to this Agreement are for reference purposes
only and shall not affect in any way the meaning or interpretation of this
Agreement. Any capitalized term used in any Exhibit or Schedule but not
otherwise defined therein, shall have the meaning assigned to such term in this
Agreement. When a reference is made in this Agreement to an Article or a
Section, Exhibit or Schedule, such reference shall be to an Article or Section
of, or an Exhibit or Schedule to, this Agreement unless otherwise indicated.
13.8 NOTICES.
Notices, offers, requests or other communications required or permitted
to be given by either party pursuant to the terms of this Agreement shall be
given in writing to the respective parties to the following addresses:
if to MRV:
MRV Communications, Inc.
▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇ ▇▇▇▇▇, Chief Executive Officer
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
if to Optical Access:
Optical Access, Inc.
▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇ ▇▇▇▇▇▇, Chief Executive Officer
Fax: (818) ___-_____
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non-performance, termination, or renewal shall be sent by hand
delivery, recognized overnight courier or, within the United States, may also be
sent via certified mail, return receipt requested. All other notices may also be
sent by fax, confirmed by first class mail. All notices shall be deemed to have
been given and received on the earlier of actual delivery or three (3) days from
the date of postmark.
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13.9 NONASSIGNABILITY.
Neither party may, directly or indirectly, in whole or in part, whether
by operation of law or otherwise, assign or transfer this Agreement, without the
other party's prior written consent, and any attempted assignment, transfer or
delegation without such prior written consent shall be voidable at the sole
option of such other party. Notwithstanding the foregoing, each party (or its
permitted successive assignees or transferees hereunder) may assign or transfer
this Agreement as a whole without consent to a Person that succeeds to all or
substantially all of the business or assets of such party as long as such Person
agrees to accept all the terms and conditions set forth herein. Without limiting
the foregoing, this Agreement will be binding upon and inure to the benefit of
the parties and their permitted successors and assigns.
13.10 SEVERABILITY.
If any term or other provision of this Agreement is determined by a court,
administrative agency or arbitrator to be invalid, illegal or incapable of being
enforced by any rule of law or public policy, all other conditions and
provisions of this Agreement shall nevertheless remain in full force and effect
so long as the economic or legal substance of the transactions contemplated
hereby is not affected in any manner materially adverse to either party. Upon
such determination that any term or other provision is invalid, illegal or
incapable of being enforced, the parties hereto shall negotiate in good faith to
modify this Agreement so as to effect the original intent of the parties as
closely as possible in an acceptable manner to the end that the transactions
contemplated hereby are fulfilled to the fullest extent possible.
13.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE.
No failure or delay on the part of either party hereto in the exercise
of any right hereunder shall impair such right or be construed to be a waiver
of, or acquiescence in, any breach of any representation, warranty or agreement
herein, nor shall any single or partial exercise of any such right preclude
other or further exercise thereof or of any other right. All rights and remedies
existing under this Agreement are cumulative to, and not exclusive of, any
rights or remedies otherwise available.
13.12 AMENDMENT.
No change or amendment will be made to this Agreement except by an
instrument in writing signed on behalf of each of the parties to such agreement.
13.13 COUNTERPARTS.
This Agreement, including the Ancillary Agreements and the Exhibits and
Schedules hereto and thereto and the other documents referred to herein or
therein, may be executed in counterparts, each of which shall be deemed to be an
original but all of which shall constitute one and the same agreement.
[ REST OF PAGE INTENTIONALLY LEFT BLANK ]
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WHEREFORE, the parties have signed this Trademark Ownership and
License Agreement effective as of the date first set forth above.
MRV COMMUNICATIONS, INC.,
A DELAWARE CORPORATION
By:
------------------------------------
▇▇▇▇ ▇▇▇▇▇, Chief Executive Officer
And
OPTICAL ACCESS, INC.
A DELAWARE CORPORATION
By:
------------------------------------
▇▇▇ ▇▇▇▇▇▇, Chief Executive Officer
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SCHEDULE 1.4
SCHEDULE OF LICENSED MARKS
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SCHEDULE 1.9
OPTICAL ACCESS BUSINESS MARKS SCHEDULE