EXHIBIT 10.7
INTELLECTUAL PROPERTY CROSS LICENSE AGREEMENT
This INTELLECTUAL PROPERTY CROSS LICENSE AGREEMENT (this "Agreement"),
dated as of _________, 2004 (the "Effective Date"), is entered into by and
between Fidelity National Financial, Inc., a Delaware corporation, ("FNF") and
Fidelity National Information Services, Inc., a Delaware corporation ("FNIS"),
each a "Party" and together, the "Parties."
W I T N E S S E T H:
WHEREAS, the Board of Directors of FNF has determined that it is in the
best interests of FNF and its stockholders to separate the Transferred Business
from FNF, pursuant to the terms and subject to the conditions set forth in the
Master Agreement by and between FNF and FNIS dated as of ____________, 2004 (the
"Master Agreement");
WHEREAS, in connection with the separation of the Transferred Business (as
such term is defined in the Master Agreement), FNF has contributed, has caused
members of the FNF Group (as such term is defined below) to contribute or
otherwise has transferred certain assets and liabilities associated with the
Transferred Business to FNIS and certain subsidiaries;
WHEREAS, FNIS has offered and sold for its own account a limited number of
shares of FNIS Common Stock pursuant to an initial public offering of such
shares (the "IPO");
WHEREAS, the Master Agreement anticipates certain Ancillary Agreements (as
such term is defined in the Master Agreement) in connection with the IPO,
including this Agreement; and
WHEREAS, FNF has the authority and power, or has caused members of the FNF
Group to authorize and empower FNF, to deliver the rights herein granted to
FNIS, and FNIS has the authority and power, or has caused members of the FNIS
Group to authorize and empower FNIS, to deliver the rights herein granted to
FNF.
NOW, THEREFORE, in consideration of the premises, and of the cross
representations, warranties, covenants and agreements set forth herein, and for
other good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the Parties hereby agree as follows:
1. CERTAIN DEFINITIONS
(a) "Competitors" for FNF shall mean those companies set forth on Schedule
1(a)(i) and for FNIS shall mean those companies set forth on Schedule
1(a)(ii).
(b) "Confidential Information" has the meaning set forth in Section 8(a).
(c) "Copyright" means each of the FNF Copyrights and the FNIS Copyrights.
(d) "Dispute" has the meaning set forth in Section 9(a).
(e) "Fidelity ▇▇▇▇" has the meaning set forth in Section 3(e).
(f) "FNF Copyrights" has the meaning set forth in Section 2(b).
(g) "FNF Group" has the meaning as such term is defined in the Master
Agreement.
(h) "FNF Intellectual Property" has the meaning set forth in Section 2(e).
(i) "FNF Marks" has the meaning set forth in Section 2(c).
(j) "FNF Patents" has the meaning set forth in Section 2(d).
(k) "FNF Subsidiary" means the Subsidiaries of FNF excluding the FNIS Group
(collectively, the "FNF Subsidiaries").
(l) "FNIS Copyrights" has the meaning set forth in Section 2(b).
(m) "FNIS Group" has the same meaning as the term "FIS Group" (as defined in
the Master Agreement).
(n) "FNIS Intellectual Property" has the meaning set forth in Section 2(e).
(o) "FNIS Marks" has the meaning set forth in Section 2(c).
(p) "FNIS Patents" has the meaning set forth in Section 2(d).
(q) "FNIS Subsidiary" means the Subsidiaries of FNIS (collectively, the "FNIS
Subsidiaries").
(r) "Granting Party" has the meaning set forth in Section 2(a).
(s) "Granting Party Group" means (i) the FNF Group in those instances where
FNF is the Licensor Party and (ii) the FNIS Group in those instances where
FNIS is the Licensor Party.
(t) "Intellectual Property" has the meaning set forth in Section 2(e).
(u) "Licensee Party" has the meaning set forth in Section 2(a).
(v) "Licensee Party Group" means (i) the FNF Group in those instances where
FNF is the Licensee Party and (ii) the FNIS Group in those instances where
FNIS is the Licensee Party.
(w) "▇▇▇▇" means each of the FNF Marks and the FNIS Marks.
(x) "Master Agreement" has the meaning set forth in the recitals.
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(y) "Master Services Agreement" means the agreement by and between FNF and
Fidelity Information Services, Inc. dated as of the Effective Date.
(z) "Party" has the meaning set forth in the preamble.
(aa) "Patent" means each of the FNF Patents and the FNIS Patents.
(bb) "Permitted Sublicensee" has the meaning set forth in Section 2(f)(i).
(cc) "Person" means (i) for all Sections of this Agreement, except Section
10(b), an individual, a partnership, a corporation, a limited liability
company, an association, a joint stock company, a trust, a joint venture,
an unincorporated organization, a governmental entity or any department,
agency, or political subdivision thereof and (ii) for Section 10(b), the
meaning set forth in Section 10(b).
(dd) "Subsidiary" means, with respect to any specified Person, any corporation
or other legal entity of which such Person controls or owns, directly or
indirectly, more than fifty percent (50%) of the stock or other equity
interest entitled to vote on the election of the members to the board of
directors or similar governing body.
(ee) "Transferred Business" shall have the meaning set forth in the Master
Agreement.
(ff) "Unauthorized Access" has the meaning set forth in Section 8(b).
2. RECIPROCAL GRANTS
(a) Each Party hereto grants hereby certain rights in Intellectual Property
(defined and scheduled below) and, with respect to such rights, shall be
termed the "Granting Party"; with respect to such rights, the grantee
shall be termed the "Licensee Party." The following basic grants shall
control each identified type of Intellectual Property, but each grant
shall be subject to any further conditions adjoining the specific item of
Intellectual Property as scheduled (for Copyrights on Schedule 2(b), for
Marks on Schedule 2(c), and for Patents on Schedule 2(d)). Where a Party
is granted a right to sublicense pursuant to this Section 2, any
sublicense granted pursuant to such right shall comply with Section 2(g)
below.
(b) Copyrights. (i) FNF hereby grants to FNIS a non-exclusive, irrevocable,
non-terminable, worldwide, royalty-free license, to use, sell services
arising from, sublicense, operate, alter, modify, adapt, perform,
distribute, create derivative works from, display, copy and exploit any
other rights of ownership now existing or hereafter created with respect
to the copyrighted materials (including but not limited to software) owned
by a member of the FNF Group and listed or described on Schedule 2(b)
hereto (the "FNF Copyrights"), subject to the terms and conditions hereof.
(ii) FNIS hereby grants to FNF a non-exclusive, irrevocable,
non-terminable, worldwide, royalty-free license, to use, exploit, sell
services arising from, sublicense, operate, alter, modify, adapt, perform,
distribute, create derivative works from, display, copy and exploit any
other rights of ownership now existing or hereafter created with respect
to the
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copyrighted materials (including but not limited to software) owned by a
member of the FNIS Group and listed or described on Schedule 2(b) hereto
(the "FNIS Copyrights"), subject to the terms and conditions hereof.
(c) Marks. (i) FNF hereby grants to FNIS for the term of this Agreement a
non-exclusive, worldwide, revocable, royalty-free license, to use,
sublicense, display and reproduce the trade and service marks owned by a
member of the FNF Group and listed on Schedule 2(c) hereto (the "FNF
Marks"), terminable as provided below, by FNF (and with respect to
sublicenses to the FNIS Group, by FNIS) for the goods and services as set
forth on Schedule 2(c). Notwithstanding the foregoing, one or more upper
level domain names substantially matching an FNF ▇▇▇▇ ▇▇▇ also be
scheduled and licensed hereunder, and shall be licensed, if at all,
exclusively.
(ii) FNIS hereby grants to FNF for the term of this Agreement, a
non-exclusive, worldwide, revocable, royalty-free license, to use,
sublicense, display and reproduce the trade and service marks owned by a
member of the FNIS Group and listed on Schedule 2(c) hereto (the "FNIS
Marks"), terminable as provided below, by FNIS (and with respect to
sublicenses to the FNF Group, by FNF) for the goods and services as set
forth on Schedule 2(c). Notwithstanding the foregoing, one or more upper
level domain names substantially matching an FNIS ▇▇▇▇ ▇▇▇ also be
scheduled and licensed hereunder, and shall be licensed, if at all,
exclusively.
(iii) Each license and each sublicense of a ▇▇▇▇ shall be separately
terminable on the following conditions:
Each Licensee Party or sublicensee of a ▇▇▇▇ hereunder shall observe
the following quality control standards and procedures:
A) Licensee Party shall assure that the nature and quality of
products and services that are marketed, advertised, sold or
serviced using Granting Party Marks subject to this Agreement
will meet or exceed all applicable governmental and regulatory
standards and requirements and initially shall be of a high
quality consistent with the quality of the products and
services of the Licensee Party as provided by the Licensee
Party (or its sublicensees) prior to the date hereof, and
throughout the term hereof, recognizing that Licensee Party's
business shall change, its products and services shall
continue to be of a high quality commensurate with industry
standards. Each party acknowledges that the Licensee Party has
maintained the products and services offered under the Marks
at a high quality and enforced quality control standards
regarding the nature and quality of products and services that
are marketed, advertised, sold or serviced using Granting
Party's Marks prior to the date hereof. Granting Party may
from time to time request, and Licensee Party agrees to
reasonably provide, samples of marketing materials,
advertisements, and other information regarding Licensee
Party's or sublicensee's products and services which samples
shall be used only for the purpose of verifying Licensee
Party's compliance with quality control. The parties shall
mutually agree upon and comply with guidelines for reasonable
usage of the Marks.
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B) All goodwill arising from its use of Granting Party Marks
shall inure solely to the benefit of the Granting Party and
neither during, nor after, termination of this Agreement shall
a Licensee Party or any sublicensee assert any claim to such
goodwill. Additionally, each such Licensee Party and
sublicensee agrees not to take any action that would be
detrimental to the goodwill associated with such Marks.
If a Granting Party of a ▇▇▇▇ shall give written notice to a
Licensee Party of its material failure (or the material failure of
any of its sublicensees) to maintain or observe the requisite
quality controls set forth above and if, within sixty (60) days of
Licensee Party's receipt of such notice, (i) the default has not
been cured or (ii) a reasonable plan of cure has not been presented
by the Licensee Party to the Granting Party and the Licensee Party
(or sublicensee) of the ▇▇▇▇ in breach has not begun to implement
such plan, then the Granting Party may suspend all rights for use of
said ▇▇▇▇ by the relevant Licensee Party or sublicensee until such
time as the breach is cured. If a plan of cure is implemented and
has not resulted in a cure within one (1) year of notice of breach,
the license of such ▇▇▇▇ to such user shall terminate. If a license
to a Licensee Party sublicensee is so terminated, such Licensee
Party may not issue a new sublicense for a ▇▇▇▇ to such sublicensee
without prior written consent of the Granting Party.
(d) Patents. (i) FNIS hereby grants to FNF an irrevocable, non-terminable,
non-exclusive, worldwide, royalty-free license, to use, sublicense, make,
create improvements of, market, sell and exploit any other rights of
ownership now existing or hereafter created with respect to goods and
services using or arising from processes subject to patents owned by a
member of the FNIS Group and listed on Schedule 2(d) hereto (the "FNIS
Patents") subject to the terms and conditions hereof.
(ii) FNF hereby grants to FNIS an irrevocable, non-terminable,
non-exclusive, worldwide, royalty-free license, to use, sublicense, make,
create improvements of, market, sell and exploit any other rights of
ownership now existing or hereafter created with respect to goods and
services using or arising from processes subject to patents owned by a
member of the FNF Group and listed on Schedule 2(d) hereto (the "FNF
Patents") subject to the terms and conditions hereof.
(e) Intellectual Property. The Patents, Marks and Copyrights shall be
collectively termed the "Intellectual Property" and the Intellectual
Property owned by FNF or FNIS shall be termed, respectively, the "FNF
Intellectual Property" and the "FNIS Intellectual Property."
(f) Sublicense Limitations. Each grant hereunder is subject to the right of
sublicense (without further consent from the Granting Party) in accordance
with the following limitations:
(i) Sublicenses may be granted hereunder by a Licensee Party solely to
members of the Licensee Party Group, effective upon written notice to the
Granting Party, which notice discloses the specific Intellectual Property
that has been sublicensed and the name
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and address of the sublicensee. A Licensee Party, who prior to the
Effective Date, granted or whose members of the Licensee Party Group
granted sublicenses of Intellectual Property outside of the Licensee Party
Group to their respective end-user customers and/or resellers (which
resellers are not Competitors of the Granting Party) as part of the normal
conduct of their respective businesses or who can show that it or members
of the Licensee Party Group were planning within the first year after the
Effective Date to grant sublicenses of Intellectual Property to their
respective end-user customers and/or resellers (which resellers are not
Competitors of the Granting Party) as part of the normal conduct of their
respective businesses (all such end-users and resellers are, collectively,
the "Permitted Sublicensees"), may grant or permit sublicenses within the
Granting Party Group to grant further sublicenses of such Intellectual
Property as had previously been so granted or as had been planned to be so
granted within the first year after the Effective Date as part of such
normal conduct of business to Permitted Sublicensees upon written notice
to the Granting Party, which notice shall disclose the specific
Intellectual Property that has been sublicensed and the name and address
of the Permitted Sublicensee. A Licensee Party shall not grant
sublicenses, directly or indirectly, of the Intellectual Property of the
Granting Party to a Competitor of the Granting Party; provided that the
Licensee Party can grant a sublicense to a Competitor of a Granting Party
for Copyrights or Patents of the Granting Party solely for the
benefit of Licensee Party's internal business or the business of the
members of the Licensee Party Group.
(ii) Except as otherwise set forth in Schedule 2(b), (c), or (d) hereto,
which may be amended in accordance with Section 2(g), or as permitted by
Section 2(f)(i), a Licensee Party may grant sublicenses to any Person who
is not in the Licensee Party Group only upon prior written consent of the
Granting Party. Except as otherwise set forth in Schedule 2(b), (c) or (d)
hereto, which may be amended in accordance with Section 2(g), or as
permitted by Section 2(f)(i), if a Licensee Party proposes to sublicense
any Intellectual Property licensed to it hereunder to a Person outside its
Group and who is a Permitted Sublicensee, the Granting Party shall
consider such proposal in good faith and may approve same on such
conditions as it deems appropriate in its reasonable business judgment.
(iii) The Licensee Party agrees to impose, on each of its sublicensees,
obligations to comply with the terms of this Agreement, including without
limitation, obligations regarding confidentiality and the return and/or
destruction of trade secrets and related documents and materials pursuant
to Section 8 hereof.
(iv) Any sublicense of a Copyright or Patent shall include provisions to
enable the sublicensee's compliance with Section 3(d) below.
(v) A Licensee Party (A) shall be and remain liable to the Granting Party
for each sublicensee of the Licensee Party and any breach of the terms of
the applicable sublicense and this Agreement and (B) shall use its
commercially reasonable best efforts to
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minimize any damage (current and prospective) done to the Granting Party
as a result of any such breach.
(vi) Any other limitations set forth in Schedule 2(b), (c) and (d) shall
apply.
(g) Schedule Changes. At any time prior to the first anniversary of the
Effective Date, Schedules 2(b), (c) and (d) shall be amended from time to
time, by one party giving written notice to the other, to add, modify or
delete (i) any FNF Intellectual Property that any member of the FNIS Group
was using prior to becoming an FNIS Subsidiary and which is necessary to
the business of such member unless such addition would be prohibited by
any enforceable obligation of FNF prior to the date hereof, in which event
the parties will take all commercially reasonable efforts to enable the
addition, and (ii) any FNIS Intellectual Property that any member of the
FNF Group was using prior to the Effective Date which is necessary to the
business of such member, unless such addition would be prohibited by any
other enforceable obligation of FNIS prior to the date hereof, in which
event the parties will take all commercially reasonable efforts to enable
the addition. A Party may sell or otherwise encumber Intellectual Property
subject, however, to the licenses granted hereunder.
(h) If, within one year from the Effective Date, a Party identifies a
copyright, patent or ▇▇▇▇ owned by a member of the other Party's Group
prior to the Effective Date and not scheduled hereunder which would
otherwise qualify as Intellectual Property, but which such Party was not
using before the Effective Date, which it (or a member of its Group) deems
useful in its business, the Party which owns (or a member of whose Group
owns) such item of intellectual property agrees to negotiate in good faith
to arrive at reasonable commercial terms of license but, for the avoidance
of doubt, is not bound to conclude a license.
3. COPIES; DERIVATIVE WORKS; IMPROVEMENTS
(a) In addition to any copies of Intellectual Property that a Licensee Party
or its sublicensee may make as otherwise permitted hereunder, a Licensee
Party or its sublicensee may make such number of copies of Intellectual
Property as reasonably deemed necessary by it for backup or disaster
recovery. No Party shall remove, obscure or materially vary (or permit its
sublicensee to remove, obscure or materially vary) any notice of
copyright, trademark, patent or other intellectual property right from any
Intellectual Property and/or copies made by a Licensee Party or its
sublicensee, and shall reproduce on each whole or partial copy of
Intellectual Property (and on containers or wrappers thereof) such notices
as have been placed on such Intellectual Property by the entity owning
such Intellectual Property (or otherwise). Copies of Intellectual Property
shall be subject to the terms and conditions of this Agreement.
(b) Except as expressly provided herein to the contrary, in no event shall a
Licensee Party or its sublicensee create, register or use, as a trademark,
any alteration or variation of any Granting Party ▇▇▇▇ without the prior
written approval of the Granting Party, not to be unreasonably withheld.
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(c) Title to a derivative work created pursuant to the Master Services
Agreement shall be determined solely pursuant to the Master Services
Agreement and shall not be deemed a derivative work under this Agreement.
Except pursuant to the foregoing, if a Licensee Party or its sublicensee
of any Granting Party Copyright creates a derivative work of such Granting
Party Copyright, then the Licensee Party or its sublicensee shall be the
owner of the derivative work (but not the owner of the underlying Granting
Party Copyright).
(d) Except to the extent set forth in the Master Services Agreement (in which
case the Master Services Agreement shall be determinative), if a Licensee
Party (or its sublicensee hereunder) of a Patent invents an improvement
thereon, whether patented, patent pending or maintained as a trade secret,
then such Licensee Party or its sublicensee shall be the owner of such
improvement (but not the owner of the underlying Patent). However, each
Party shall provide and assure (by appropriate terms in any sublicense)
that patents which are improvements on any Patent licensed hereunder,
having a filing date in any jurisdiction on or before the fifth
anniversary of the Effective Date, shall not be asserted against either
Party hereto or members of its Group. Such Licensee Party or its
sublicensee, as the case may be, shall have no duty to prosecute a patent
or patents on any such improvements, nor shall it have any claim for
reimbursement from any Granting Party or Granting Party licensor for costs
it may have incurred in investigating or pursuing patent protection for
such improvement.
(e) If FNIS wishes to use a trademark or service ▇▇▇▇ containing the words
"Fidelity" or "Fidelity National" (each, a "Fidelity ▇▇▇▇") (but a
Fidelity ▇▇▇▇ shall not include "Fidelity Information" or "Fidelity
International Resources Management"), it may do so pursuant to the grant
in Section 2(c) of this Agreement; provided that FNF has not filed an
intent to use application on the FNIS-proposed ▇▇▇▇. If FNIS wishes to
register a Fidelity ▇▇▇▇, it shall request FNF, in writing, to prosecute
and maintain such registration, in FNF's name, and FNIS shall reimburse
FNF for all out of pocket expenses incurred by FNF in connection
therewith. FNF shall expeditiously prosecute such Fidelity ▇▇▇▇, in FNF's
name provided that FNF has neither filed an intent to use registration on
the proposed ▇▇▇▇ nor uses the proposed ▇▇▇▇ in commerce. To the extent
that, in any jurisdiction outside the United States, FNIS, as a licensee,
may prosecute its own trademark or service ▇▇▇▇ application for any
Fidelity ▇▇▇▇, it may do so upon written notice to FNF. For avoidance of
doubt, as between the Parties, "Fidelity Information" and "Fidelity
International Resource Management" are Intellectual Property of the FNIS
Group.
(f) To minimize dilution of the Fidelity Marks, if FNIS elects to use a
Fidelity ▇▇▇▇ together with a logo similar to a house silhouetted against
a cityscape, then FNIS shall use such ▇▇▇▇ in a manner as similar to that
in which FNF uses its comparable ▇▇▇▇ as possible including without
limitation, the color scheme, type face and relative sizes.
4. OWNERSHIP
(a) For clarification purposes, all FNF Intellectual Property shall at all
times be exclusively owned, as between the Parties, by FNF, and the
entities within the FNIS Group shall have no rights, title or interest
therein, other than the rights set forth in this Agreement.
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(b) For clarification purposes, all FNIS Intellectual Property shall at all
times be exclusively owned, as between the Parties, by FNIS, and the
entities within the FNF Group shall have no rights, title or interest
therein, other than the rights set forth in this Agreement.
5. DELIVERY
(a) Upon the Effective Date, or as promptly as practicable thereafter, FNF
shall deliver or cause to be delivered to FNIS copies of the FNF
Intellectual Property in such numbers and forms or formats as reasonably
requested by FNIS.
(b) Upon the Effective Date, or as promptly as practicable thereafter, FNIS
shall deliver to FNF the FNIS copies of the FNIS Intellectual Property in
such numbers and forms or formats as agreed by the Parties reasonably
requested by FNF.
6. ENFORCEMENT; INFRINGEMENT
(a) Each Party will notify the other Party promptly of any acts of
infringement or unfair competition with respect to Granting Party's
Intellectual Property of which a Party or any sublicensee of that Party
becomes aware or obtains actual knowledge alleging in writing that the
Granting Party's Intellectual Property or its use infringes the rights of
a third party or constitutes unfair competition. In such event, the
Parties will cooperate and cause their applicable sublicensees to
cooperate, at each Party's own expense, with the other Party to defend or
prosecute the claim. All costs and expenses of defending or prosecuting
any such action or proceeding, together with any recovery therefrom, will
be borne by and accrue to the applicable Party or sublicensee that is
party to the action or proceeding. FNF shall not initiate any litigation
or proceeding with regard to infringement of or unfair competition with
respect to the Fidelity Marks without the consent of FNIS, which consent
will not be unreasonably withheld.
(b) Each of FNF and FNIS, as the case may be, will enforce any applicable
contract rights relating to breach of a sublicense issued pursuant hereto
relating to the Intellectual Property rights of the other Party. In the
event that either FNF or FNIS commences a proceeding or any other form of
action for such purposes, FNF or FNIS, as applicable, will cause the
entities within the FNIS Group or the FNF Group, respectively, to
reasonably cooperate, at their own expense, with such entity to prosecute
such action or proceeding. All costs and expenses of any such action or
proceeding, together with any recovery therefrom, will be borne by and
accrue to the applicable entity within the proceeding Party.
7. LIMITATIONS
(a) EXCEPT AS MAY BE EXPRESSLY SET FORTH HEREIN, ANY LICENSE GRANTED HEREUNDER
IS "AS IS"; NEITHER PARTY (NOR ANY PERSON WITHIN THE FNF GROUP OR THE FNIS
GROUP), NOR ANY OF THEIR RESPECTIVE OFFICERS, DIRECTORS EMPLOYEES OR
AGENTS MAKES ANY REPRESENTATION OR WARRANTY, EXCEPT AS MAY BE EXPRESSLY
SET FORTH HEREIN, WITH RESPECT TO INTELLECTUAL PROPERTY OR THE LICENSES
GRANTED OR MADE HEREUNDER, INCLUDING ANY REPRESENTATION
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AS TO: (i) A PARTY'S RIGHT TO GRANT LICENSES, (ii) THE SCOPE OF MARKS FOR
ANY SPECIFIC GOODS OR SERVICES OR RIGHTS IN INTELLECTUAL PROPERTY IN ANY
SPECIFIC JURISDICTIONS, OR (iii) THE TITLE OF SUCH INTELLECTUAL PROPERTY
OR ABSENCE OF ANY THIRD PARTY INFRINGEMENT OF SUCH INTELLECTUAL PROPERTY.
NEITHER PARTY UNDERTAKES ANY COMMITMENT TO MAINTAIN OR DEFEND ITS
INTELLECTUAL PROPERTY.
(b) IN NO EVENT WILL ANY PARTY HEREUNDER BE LIABLE TO THE OTHER PARTY
HEREUNDER FOR DAMAGES IN THE FORM OF SPECIAL, INCIDENTAL, PUNITIVE,
INDIRECT, CONSEQUENTIAL OR EXEMPLARY DAMAGES, LOST PROFITS, LOST SAVINGS,
LOSS OF BUSINESS, DATA, GOODWILL OR OTHERWISE, WHETHER IN CONTRACT, TORT
OR OTHERWISE, ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT, EVEN IF
SUCH PARTY SHALL HAVE BEEN ADVISED IN ADVANCE OF THE POSSIBILITY OF SUCH
DAMAGES.
8. CONFIDENTIALITY
(a) Confidential Information. Each Party shall use, and shall cause its
sublicensees to use, at least the same standard of care in the protection
of Confidential Information of the other Party as it uses to protect its
own confidential or proprietary information (provided that such
Confidential Information shall be protected in at least a reasonable
manner). For purposes of this Agreement, "Confidential Information"
includes (1) all confidential or proprietary information and documentation
of either Party, all reports, exhibits and other documentation, any
financial information. Each Party shall use the Confidential Information
of the other Party only in connection with the purposes of this Agreement,
including resolution of any Disputes in accordance with Section 9, and
shall make such Confidential Information available, and shall cause its
sublicensees to make such Confidential Information available, only to
their respective employees, subcontractors, or agents having a "need to
know" with respect to such purpose. Each Party shall advise, and shall
cause its sublicensees to advise, their respective employees,
subcontractors, and agents of such Party's obligations under this
Agreement. Except as otherwise required by the terms of this Agreement
(including Section 10) or applicable law or national stock exchange rule,
in the event of the expiration of this Agreement or termination of this
Agreement for any reason all Confidential Information of a Party disclosed
to, and all copies thereof made by, the other Party or the other Party's
sublicensees shall be returned to the disclosing Party or, at the
disclosing Party's option, erased or destroyed. The Party receiving the
Confidential Information (or its sublicensee that received the
Confidential Information) shall provide to the disclosing Party
certificates evidencing such destruction. The obligations in this Section
8(a) will not restrict disclosure by a Party or its sublicensee pursuant
to applicable law, or by order or request of any court or government
agency; provided that, prior to such disclosure the receiving Party or its
sublicensee shall (i) immediately give notice to the disclosing Party and
(ii) cooperate with the disclosing Party in challenging the right to such
access and (iii) only provide such information as is required by law, such
order or a final, non-appealable ruling of a court of proper jurisdiction.
Confidential Information of a Party will not be afforded the
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protection of this Agreement if such Confidential Information was (A)
developed by the other Party or its sublicensees independently as shown by
its written business records regularly kept, (B) rightfully obtained by
the other Party or its sublicensees without restriction from a third
party, (C) publicly available other than through the fault or negligence
of the other Party or its sublicensees, or (D) released by the disclosing
Party without restriction to anyone.
(b) Unauthorized Acts. Each Party shall and shall cause its sublicensees to:
(1) notify the other Party promptly of any unauthorized possession, use,
or knowledge of any Confidential Information of the other Party by any
person which shall become known to it, any attempt by any person to gain
possession of Confidential Information of the other Party without
authorization or any attempt to use or acquire knowledge of any
Confidential Information without authorization (collectively,
"Unauthorized Access"), (2) promptly furnish to the other Party full
details of the Unauthorized Access and use reasonable efforts to assist
the other Party in investigating or preventing the reoccurrence of any
Unauthorized Access, (3) cooperate with the other Party in any litigation
and investigation against third parties deemed necessary by such Party to
protect its proprietary rights, and (4) promptly prevent a reoccurrence of
any such Unauthorized Access.
9. DISPUTE RESOLUTION
(a) Amicable Resolution. The Parties mutually desire that friendly
collaboration will continue between them. Accordingly, they will try to
resolve in an amicable manner all disagreements and misunderstandings
connected with their respective rights and obligations under this
Agreement, including any amendments hereto. In furtherance thereof, in the
event of any dispute or disagreement (a "Dispute") between the Parties in
connection with this Agreement (including, without limitation, any use of
the a Granting Party's Intellectual Property by the Licensee Party Group
or the compliance of the Licensee Party Group with terms of Section
2(c)(iii)), then the Dispute, upon written request of either Party, will
be referred for resolution to the General Counsels of the Parties, which
General Counsels will have ten (10) days to resolve such Dispute.
(b) Mediation. In the event any Dispute cannot be resolved in a friendly
manner as set forth in Section 9(a), the Parties intend that such Dispute
be resolved by mediation. If the General Counsels of the Parties are
unable to resolve the Dispute as contemplated by Section 9(a), either
Party may demand mediation of the Dispute by written notice to the other
in which case the two Parties will select a single mediator within ten
(10) days after the demand. Neither Party may unreasonably withhold
consent to the selection of the mediator. Each Party will bear its own
costs of mediation but both Parties will share the costs of the mediator
equally.
(c) Arbitration. In the event that the Dispute is not resolved pursuant to
Section 9(a) or through mediation pursuant to Section 9(b), the latter
within thirty (30) days of the submission of the Dispute to mediation,
either Party involved in the Dispute may submit the dispute to binding
arbitration pursuant to this Section 9(c). All Disputes submitted to
arbitration pursuant to this Section 9(c) shall be resolved in accordance
with the
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Commercial Arbitration Rules of the American Arbitration Association,
unless the Parties involved mutually agree to utilize an alternate set of
rules, in which event all references herein to the American Arbitration
Association shall be deemed modified accordingly. Expedited rules shall
apply regardless of the amount at issue. Arbitration proceedings hereunder
may be initiated by either Party making a written request to the American
Arbitration Association, together with any appropriate filing fee, at the
office of the American Arbitration Association in Orlando, Florida. All
arbitration proceedings shall be held in the city of Jacksonville, Florida
in a location to be specified by the arbitrators (or any place agreed to
by the Parties and the Arbitrators). The arbitration shall be by a single
qualified arbitrator experienced in the matters at issue, such arbitrator
to be mutually agreed upon by the Parties. If the Parties fail to agree on
an arbitrator thirty (30) days after notice of commencement of
arbitration, the American Arbitration Association shall, upon the request
of any Party to the dispute or difference, appoint the arbitrator. Any
order or determination of the arbitral tribunal shall be final and binding
upon the Parties to the arbitration as to matters submitted and may be
enforced by any Party to the Dispute in any court having jurisdiction over
the subject matter or over any of the Parties. All costs and expenses
incurred in connection with any such arbitration proceeding (including
reasonable attorneys' fees) shall be borne by the Party incurring such
costs. The use of any alternative dispute resolution procedures hereunder
will not be construed under the doctrines of laches, waiver or estoppel to
affect adversely the rights of either Party.
(d) Non-Exclusive Remedy. FNF and FNIS acknowledge and agree that money
damages would not be a sufficient remedy for any breach of this Agreement
by either Party or misuse of FNF Intellectual Property or FNIS
Intellectual Property within the FNF Group or the FNIS Group, as the case
may be, or the Confidential Information of FNF or FNIS, as the case may
be. Accordingly, nothing in this Section 9 will prevent either Party from
immediately seeking injunctive or interim relief in the event (A) of any
actual or threatened breach of any confidentiality provisions of this
Agreement or (B) that the Dispute relates to, or involves a claim of,
actual or threatened infringement of intellectual property. All actions
for such injunctive or interim relief shall be brought in a court of
competent jurisdiction in accordance with Section 11(f). Such remedy shall
not be deemed to be the exclusive remedy for breach of this Agreement.
(e) Commencement of Dispute Resolution Procedure. Notwithstanding anything to
the contrary in this Agreement, the Parties, but none of their respective
Subsidiaries, are entitled to commence a dispute resolution procedure
under this Agreement, whether pursuant to this Section 9 or otherwise, and
each Party will cause its respective Subsidiaries not to commence any
dispute resolution procedure other than through such Party as provided in
this Section 9.
10. TERM AND TERMINATION
(a) Individual Terminations. This Agreement shall be construed as a separate
and independent agreement for each and every Copyright, ▇▇▇▇ or Patent
provided for hereunder. Any termination of a license or sublicense for any
particular ▇▇▇▇ shall not terminate any
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licenses or sublicenses hereunder with regard to other Marks. Termination
of a sublicense of a ▇▇▇▇ shall not terminate sublicenses to other
sublicensees or to other Marks.
(b) Automatic Renewals of Marks Licenses; Termination for Change of Control.
Subject to termination rights set forth in Section 2(c), the license of
Marks hereunder shall continue for successive twenty (20) year terms,
renewing automatically unless all of the Marks have been abandoned.
Notwithstanding the foregoing, all licenses of Marks hereunder from FNF to
FNIS shall terminate automatically upon a change in control of FNIS,
subject to the transition period described in Section 10(e). For purposes
of this Agreement, a change of control of FNIS shall be deemed to occur
upon: an acquisition by any Person (for this Section 10(b) only, within
the meaning of Section 3(a)(9) of the Securities and Exchange Act of 1934,
as amended (the "Exchange Act") and used in Sections 13(d) and 14(d)
thereof ("Person")) of Beneficial Ownership (within the meaning of Rule
13d-3 under the Exchange Act ("Beneficial Ownership")) of 50% or more of
either the then outstanding shares of FNIS common stock (the "Outstanding
FNIS Common Stock") or the combined voting power of the then outstanding
voting securities of FNIS entitled to vote generally in the election of
directors (the "Outstanding FNIS Voting Securities"); excluding, however,
the following: (A) any acquisition directly from FNIS, other than an
acquisition by virtue of the exercise of a conversion privilege unless the
security being so converted was itself acquired directly from FNIS or (B)
any acquisition by any employee benefit plan (or related trust) sponsored
or maintained by FNIS or a member of the FNIS Group.
(c) Termination as a result of Disaffiliation. If a member of a Licensee Party
Group ceases to be a member of the Licensee Party Group, then all
sublicenses from the Licensee Party to such member granted pursuant to the
Licensee Party's rights under Section 2 shall terminate, subject to the
transition period described in Section 10(e).
(d) Termination for Insolvency. (i) In the event that either Party or, if
applicable, the subsidiary of such Party to which a sublicense hereunder
has been granted:
A) shall admit in writing its inability to, or be generally unable to,
pay its debts as such debts become due; or
B) shall (1) apply for or consent to the appointment of, or the taking
of possession by, a receiver, custodian, trustee, examiner or
liquidator of itself or of all or a substantial part of its property
or assets, (2) make a general assignment for the benefit of its
creditors, (3) commence a voluntary case under the Bankruptcy Code,
(4) file a petition seeking to take advantage of any other law
relating to bankruptcy, insolvency, reorganization, liquidation,
dissolution, arrangement or winding-up, or composition or
readjustment of debts, (5) fail to controvert in a timely and
appropriate manner, or acquiesce in writing to, any petition filed
against it in an involuntary case under the Bankruptcy Code or (6)
take any corporate, partnership or other action for the purpose of
effecting any of the foregoing;
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then the other Party may, by giving notice thereof to such Party, exercise
any termination right, and such termination shall become effective as of
the date specified in such termination notice; provided that where the
conditions of this subsection 10(d)(i) are met only as to a subsidiary of
such Party to which a sublicense hereunder has been granted, then the
other Party's rights of termination are limited only to such subsidiary.
(ii) In the event that:
A) a proceeding or case shall be commenced, without the
application or consent of a Party or, if applicable, the
subsidiary of such Party to which a sublicense hereunder has
been granted, in any court of competent jurisdiction, seeking
(i) its reorganization, liquidation, dissolution, arrangement
or winding-up, or the composition or readjustment of its debts
under the Bankruptcy Code, (ii) the appointment of a receiver,
custodian, trustee, examiner, liquidator or the like of such
Party, or, if applicable, of such subsidiary, or of all or any
substantial part of its property or assets under the
Bankruptcy Code or (iii) similar relief in respect of such
Party or, if applicable, such subsidiary under any law
relating to bankruptcy, insolvency, reorganization,
winding-up, or composition or adjustment of debts, and such
proceeding or case shall continue undismissed, or an order,
judgment or decree approving or ordering any of the foregoing
shall be entered and continue unstayed and in effect, for a
period of sixty (60) days or more days; or
B) an order for relief against such Party shall be entered in an
involuntary case under the Bankruptcy Code, which shall
continue in effect for a period of sixty (60) days or more;
then the other Party may, by giving notice thereof to such Party, exercise
any termination right, and such termination shall become effective as of
the date specified in such termination notice; provided that where the
conditions of this subsection 10(d)(ii) are met only as to a subsidiary of
such Party to which a sublicense hereunder has been granted, then the
other Party's rights of termination are limited only to such subsidiary.
(e) Events on Termination.
(i) Upon any termination or expiration of any licenses or sublicenses for
Marks granted under this Agreement: (A) where FNF is the Granting Party,
FNIS shall, and shall cause its applicable sublicensees to, promptly cease
all use of the applicable Marks; provided that in the event of such
termination by reason of a change in control pursuant to Section 10(b),
FNF shall provide written notice to FNIS of the termination of all
licenses and sublicenses of Marks hereunder, with such termination to be
effective at the end of a transition period of one (1) year from the date
of such notice, and upon such termination, FNIS shall have ceased and
shall have caused its sublicensees to cease, all use of the applicable
Marks; and (B) where FNIS is the Granting Party, FNF shall, and shall
cause its applicable sublicensees, to promptly cease, all use of the
applicable Marks.
(ii) The termination of licenses and sublicenses of Patents and Copyrights
pursuant to Section 10(c) shall be effective at the end of a transition
period of one (1) year from the
Page 14
date that the former member of a Licensee Party Group ceased to be a
member of the Licensee Party Group, and upon such termination, the
Licensee Party shall have caused the former member of the Licensee Party
Group to cease all use of the Patents and Copyrights.
(f) Abandonment. If FNF or a transferee intends to abandon all use of all
marks containing the word "Fidelity," FNF or such transferee shall provide
written notice to FNIS of its intention to abandon such marks and FNIS
will have a right to make an offer for the assignment of such marks and
FNF will negotiate in good faith, solely with FNIS, for the subsequent
thirty (30) days, to conclude a mutually satisfactory transaction with
respect to such assignment. If, at any time after providing such notice of
its intention to abandon such marks, FNF or a transferee proposes to
assign such marks, or any significant subset thereof, to a Person not
affiliated with FNF or such transferee, FNIS shall be extended a right of
first refusal to acquire any transferable rights that FNF may have in such
marks, which right shall be for a thirty (30) day period from the date of
receipt of written notice of such proposal to assign such marks. If prior
to expiration of the 30 day period, FNIS has not provided written notice
to FNF of its agreement to exercise such right, FNF or a transferee may
offer or assign such Marks to any other Person.
(g) Survival. The terms of Sections 4, 7, 8, 9, 10(e), 10(g) and 11 shall
survive termination of this Agreement or any licenses or sublicenses
granted hereunder.
11. MISCELLANEOUS PROVISIONS
(a) Relationship of the Parties. It is expressly understood and agreed that
FNF and FNIS are not partners or joint venturers, and nothing contained
herein is intended to create an agency relationship or a partnership or
joint venture with respect to rights granted herein. With respect to this
Agreement, neither Party is an agent of the other and neither Party has
any authority to represent or bind the other Party as to any matters,
except as authorized herein or in writing by such other Party from time to
time.
(b) Employees. As between the Parties, each Party shall be responsible for
payment of compensation to its employees those of its subsidiaries, for
any injury to them in the course of their employment, and for withholding
or payment of all federal, state and local taxes or contributions imposed
or required under unemployment insurance, social security and income tax
laws with respect to such persons.
(c) Assignment. Neither Party may assign, transfer or convey any right,
obligation or duty, under this Agreement (other than those rights as
between the Parties explicitly set forth herein) without the prior written
consent of the other Party.
(d) Severability. In the event that any one or more of the provisions
contained herein shall for any reason be held to be unenforceable in any
respect under law, such unenforceability shall not affect any other
provision of this Agreement, and this Agreement shall be construed as if
such unenforceable provision or provisions had never been contained
herein.
Page 15
(e) Third Party Beneficiaries. The provisions of this Agreement are for the
benefit of the Parties and their affiliates and not for any other person.
However, should any third party institute proceedings, this Agreement
shall not provide any such person with any remedy, claim, liability,
reimbursement, cause of action, or other right.
(f) Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of Florida, without giving effect to
such State's laws and principles regarding the conflict of laws. Subject
to Section 9, if any Dispute arises out of or in connection with this
Agreement, except as expressly contemplated by another provision of this
Agreement, the Parties irrevocably (a) consent and submit to the exclusive
jurisdiction of federal and state courts located in Jacksonville, Florida,
(b) waive any objection to that choice of forum based on venue or to the
effect that the forum is not convenient and (c) WAIVE TO THE FULLEST
EXTENT PERMITTED BY LAW ANY RIGHT TO TRIAL OR ADJUDICATION BY JURY.
(g) Executed in Counterparts. This Agreement may be executed in counterparts,
each of which shall be an original, but such counterparts shall together
constitute but one and the same document. The Parties may elect to rely
upon facsimile signatures but shall promptly, at the request of either
Party at any time prior to the first anniversary hereof, distribute to the
other pages bearing holographic signatures in all respects identical to
those distributed by facsimile.
(h) Construction. The headings and numbering of articles, sections and
paragraphs in this Agreement are for convenience only and shall not be
construed to define or limit any of the terms or affect the scope,
meaning, or interpretation of this Agreement or the particular Article or
Section to which they relate. This Agreement and the provisions contained
herein shall not be construed or interpreted for or against any Party
because that Party drafted or caused its legal representative to draft any
of its provisions. The Exhibits and the Schedules to this Agreement that
are specifically referred to herein are a part of this Agreement as if
fully set forth herein. All references herein to Articles, Sections,
subsections, paragraphs, subparagraphs, clauses, Exhibits and Schedules
shall be deemed references to such parts of this Agreement, unless the
context shall otherwise require. The inclusion of a matter or item in any
Schedule to this Agreement shall not, for any purpose of this Agreement,
be deemed to be the inclusion of such matter or item on any other Schedule
to this Agreement.
(i) Entire Agreement. This Agreement, including all attachments, constitutes
the entire Agreement between the Parties with respect to the subject
matter hereof, and supersedes all prior oral or written agreements,
representations, statements, negotiations, understandings, proposals and
undertakings, with respect to the subject matter hereof including any
earlier license of item(s) of Intellectual Property by and between a
member of the FNF Group and a member of the FNIS Group.
(j) Amendments and Waivers. The Parties may amend this Agreement only by a
written agreement signed by each Party and that identifies itself as an
amendment to this Agreement. No waiver of any provisions of this Agreement
and no consent to any default under this Agreement shall be effective
unless the same shall be in writing and
Page 16
signed by or on behalf of the Party against whom such waiver or consent is
claimed. No course of dealing or failure of any Party to strictly enforce
any term, right or condition of this Agreement shall be construed as a
waiver of such term, right or condition. Waiver by either Party of any
default by the other Party shall not be deemed a waiver of any other
default.
(k) Remedies Cumulative. Unless otherwise provided for under this Agreement,
all rights of termination or cancellation, or other remedies set forth in
this Agreement, are cumulative and are not intended to be exclusive of
other remedies to which the injured Party may be entitled by law or equity
in case of any breach or threatened breach by the other Party of any
provision in this Agreement. Unless otherwise provided for under this
Agreement, use of one or more remedies shall not bar use of any other
remedy for the purpose of enforcing any provision of this Agreement.
(l) Title 11. The license granted hereunder is, for all purposes of Section
365(n) of Title 11 of the United States Code ("Title 11") and to the
fullest extent permitted by law, a license of rights to "intellectual
property" as defined in Title 11. All Parties agree that the licensee of
any rights under this Agreement shall retain and may fully exercise all of
its applicable rights and elections under Title 11.
(m) UN Convention Disclaimed. The United Nations Convention on Contracts for
the International Sale of Goods is specifically excluded from application
to this Agreement.
IN WITNESS WHEREOF, the Parties have executed this Assignment as of the
date first above written.
FIDELITY NATIONAL FINANCIAL, INC.
By:_____________________________________________
Name:
Title:
FIDELITY NATIONAL INFORMATION SERVICES, INC.
By:_____________________________________________
Name:
Title:
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