EXHIBIT 10.16
AT&T WIRELESS SERVICES
NETWORK MEMBERSHIP LICENSE AGREEMENT
between
AT&T CORP.
and
HOLDING COMPANY
Dated as of ___________________________
1. Definitions............................................................ 1
2. GRANT OF LICENSE, ETC.................................................. 5
2.1 Grant of License.................................................. 5
2.2 No Other Services or Products..................................... 5
2.3 Exclusivity....................................................... 6
2.4 Use of Licensed Marks on Mobile Phones............................ 6
3. AGREEMENT PERSONAL..................................................... 6
3.1 Personal to Licensee.............................................. 6
3.2 Licensee Acknowledgment........................................... 7
4. USE OF LICENSED MARKS AND OTHER MARKS.................................. 7
4.1 Approved Licensee Marks........................................... 7
4.2 Marks To Be Used.................................................. 7
4.3 Modification of Licensed Marks.................................... 8
4.4 Use of Additional Marks at Licensor's Request..................... 8
5. RETENTION OF RIGHTS.................................................... 8
6. SYSTEM REQUIREMENTS.................................................... 8
7. QUALITY CONTROL........................................................ 8
7.1 General........................................................... 8
7.2 Quality Standards................................................. 9
7.3 Quality Service Reviews; Right of Inspection...................... 9
7.4 Authorized Dealers................................................ 9
7.5 Sponsorship....................................................... 10
7.6 Universal Wireless Consortium..................................... 10
8. REMEDIES FOR NONCOMPLIANCE WITH QUALITY STANDARDS...................... 10
8.1 Cure Period................................................ 10
8.2 Potential Injury to Persons or Property.................... 11
9. PROTECTION OF LICENSED MARKS........................................... 11
9.1 Ownership and Rights....................................... 11
9.2 Similar Marks.............................................. 11
9.3 Infringement............................................... 12
9.4 Compliance With Laws....................................... 12
10. NO SUBLICENSING........................................................ 12
11. TERM AND TERMINATION................................................... 13
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11.1 Term.......................................................... 13
11.2 Breach by Licensee............................................ 14
11.3 Termination Obligations....................................... 15
11.4 No Waiver of Rights........................................... 15
11.5 Survival...................................................... 15
12. INDEMNITY.............................................................. 15
13. CONSENT OF LICENSOR.................................................... 16
14. NOTICES AND DEMANDS.................................................... 16
15. COMPLIANCE WITH LAW.................................................... 17
16. GOVERNMENTAL LICENSES, PERMITS, AND APPROVALS.......................... 17
17. APPLICABLE LAW; JURISDICTION........................................... 17
18. CONFIDENTIALITY OF INFORMATION AND USE RESTRICTION..................... 18
19. MISCELLANEOUS.......................................................... 18
19.1 NAME, CAPTIONS................................................ 18
19.2 ENTIRE AGREEMENT.............................................. 18
19.3 AMENDMENTS, WAIVERS........................................... 19
19.4 SPECIFIC PERFORMANCE.......................................... 19
19.5 REMEDIES CUMULATIVE........................................... 19
19.6 NO WAIVER..................................................... 19
19.7 NO THIRD PARTY BENEFICIARIES.................................. 19
19.8 COUNTERPARTS.................................................. 19
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Schedules
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Schedule A Licensed Logo
Schedule B Licensed Trade Dress
Schedule B I United States Service ▇▇▇▇ Registrations or Applications
Schedule C Initial Licensed Territory
Schedule D Quality Control Standards
Schedule E Guidelines for Use of the Licensed Logo and Licensed Phrase
Schedule F Permitted Events
AT&T WIRELESS SERVICES
NETWORK MEMBERSHIP LICENSE AGREEMENT
NETWORK MEMBERSHIP LICENSE AGREEMENT (the "Agreement") dated as of
_______________, by and between AT&T Corp., a New York corporation, with offices
located at ▇▇ ▇▇▇▇▇▇ ▇▇ ▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇, for itself and
its affiliated companies, including AT&T Wireless Services, Inc. (collectively
"Licensor"), and HOLDING COMPANY, a Delaware corporation, with offices located
at ▇▇▇▇ ▇. ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Holding Company"). Certain
capitalized terms used herein are defined in Section 1.
WHEREAS, Licensor has, for many years, used and Licensor desires that
Holding Company and its Affiliates (collectively, the "Licensee") use, the AT&T
Service Marks, and Licensor desires that Licensee use the Licensed Marks, in
connection with Telecommunications Services;
WHEREAS, Licensee, an Affiliate of Licensor and the other stockholders
of Holding Company are parties to that certain Stockholders Agreement, dated as
of _________________, 2000 (as the same may be amended, modified or supplemented
in accordance with the terms thereof, the "Stockholders Agreement;" capitalized
terms defined therein and not otherwise defined herein being used herein as
therein defined) and the execution and delivery of the Stockholders Agreement
and the other agreements contemplated therein is a condition to Holding Company
entering into this Agreement;
WHEREAS, Licensee wishes to use the Licensed Marks in a limited manner
in the Licensed Territory in connection with the Licensed Activities; and
WHEREAS, Licensor is willing to license and allow Licensee to use the
Licensed Marks under the terms and conditions set forth in this Agreement.
NOW, THEREFORE, in consideration of the mutual promises and covenants
herein contained and for other good and valuable consideration the receipt and
sufficiency of which is hereby acknowledged, the parties hereby agree as
follows:
1. DEFINITIONS. As used herein, the following terms shall have the meanings set
forth below:
"Affiliate": A Person that directly, or indirectly through one or more
intermediaries, controls, is controlled by, or is under common control with the
Person specified.
"Approval": The granting by all appropriate Regulatory Authorities of
all necessary licenses, permits, approvals, authorizations and clearances for
this Agreement and the registration or recording of this Agreement as required
by all Regulatory Authorities.
"Approved Licensee Marks": As defined in Section 4.1.
"AT&T Service Marks": The service marks and trademarks AT&T, and AT&T with
a fanciful globe design.
"Authorized Dealers": Any distributor or other agent of Licensee authorized
to market, advertise or otherwise offer, on behalf of Licensee, any Licensed
Services under the Licensed Marks in the Licensed Territory.
"Bankruptcy": With respect to a Person, means (i) the filing by such Person
of a voluntary petition seeking liquidation, dissolution, reorganization,
rearrangement or readjustment, in any form, of its debts under Title 11 of the
United States Code (or corresponding provisions of future laws) or any other
bankruptcy or insolvency law, or such Person's filing an answer consenting to,
or acquiescing in any such petition; (ii) the making by such Person of any
assignment for the benefit of its creditors, or the admission by such Person in
writing of its inability to pay its debts as they mature; (iii) the expiration
of 60 days after the filing of an involuntary petition under Title 11 of the
United States Code (or corresponding provisions of future laws), an application
for the appointment of a receiver for the assets of such Person, or an
involuntary petition seeking liquidation, dissolution, reorganization,
rearrangement or readjustment of its debts or similar relief under any
bankruptcy or insolvency law, provided that the same shall not have been
vacated, set aside or stayed within such 60 day period; or (iv) the entry of an
order for relief against such Person under Title 11 of the United States
Bankruptcy Code.
"Change of Control": Any transaction or event, whether voluntary or
involuntary, that results in, or as a consequence of which, any of the following
events shall occur, except as a result of a sale, transfer or other disposition
by Licensor or any of its Affiliates: (i) any Person, excluding any Person that
is an owner of shares of capital stock of Licensee on the date hereof or that
acquires shares of Voting Preference Common Stock of Licensee pursuant to the
terms of the Management Agreement or the Lenders (as defined in Section 3.1(b))
or any Person to whom the Lenders, with the consent of Licensor, assign this
Agreement, shall acquire, directly or indirectly, Beneficial Ownership (as
defined in Rule 13d-3 of the Securities Exchange Act of 1934, as amended) of (x)
more than 50% of the voting stock of Holding Company, or (y) more than 33-1/3%
of the voting stock of Holding Company, unless the Persons owning capital stock
of Holding Company on the date hereof (together with any Person that acquires
Voting Preference Common Stock of Holding Company pursuant to the terms of the
Merger Agreement) collectively own a percentage of such voting stock that is
higher than such Person; (ii) any Disallowed Transferee shall acquire, directly
or indirectly, Beneficial Ownership of more than 15% of the voting stock of
Holding Company; provided that, for purposes of this Agreement, purchases of
Holding Company's capital stock made by third parties in the open market shall
not be deemed to be acquisitions of Holding Company's capital stock by
Disallowed Transferees; or (iii) a proxy contest for the election of directors
of Holding Company's results in the persons constituting the Board of Directors
of Holding Company immediately prior to the initiation of such proxy contest
ceasing to constitute a majority of the Board of Directors upon the conclusion
of such proxy contest.
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"Company Communications Services": Mobile wireless telecommunications
services (including the transmission of voice, data, image or other messages or
content) provided solely within the Licensed Territory, initiated or terminated
using TDMA and frequencies licensed by the FCC, to or from subscriber equipment
that is capable of usage during routine movement throughout the area covered by
a cell site and routine handing-off between cell sites, and is either intended
for such usage or is temporarily fixed to a specific location on a short-term
basis (e.g., a bank of wireless telephones temporarily installed during a
special event of limited duration). Without limiting the foregoing, Company
Communications Services shall include wireless office services if such services
comply with this definition. Company Communications Services shall also include
the transmissions between Licensee's cell sites and Licensee's switch or
switches in the Licensed Territory, handing-off transmissions at Licensee's
switch or switches for termination by other carriers, and receiving
transmissions to Licensee's customers handed-off at Licensee's switch or
switches.
"Company Systems": The systems operated by Licensee to provide Company
Communications Services in the Licensed Territory.
"Control": For purposes of the definitions of "Affiliate" and "Change of
Control", the term "control" (including the terms "controlling," "controlled
by", and "under common control with") of a Person means the possession, direct
or indirect, of the power to (i) vote 50% or more of the voting securities of
such Person or (ii) direct or cause the direction of the management and policies
of such Person, whether by contract or otherwise.
"Disallowed Transferee": Any Prohibited Transferee, or any Regional ▇▇▇▇
Operating Companies, Microsoft, GTE, SNET or any of their respective Affiliates,
successors or assigns.
"Exchange Agreement" The Asset Exchange Agreement by and between
Washington, LLC, Washington Entities, Virginia, Inc. and Virginia Entities dated
as of February ___, 2000.
"FCC": The Federal Communications Commission and any successor governmental
authority.
"FTC Rule": Disclosure Requirements and Prohibitions Concerning Franchising
and Business Opportunity Ventures, 16 C.F.R.(S) 436 et. seq.
"Holding Company Licenses": means the PCS licenses for the geographic
territories set forth on Schedule C hereto.
"Licensed Activities": Each of the following activities: (a) the provision
to end-users and resellers, solely within the Licensed Territory, of Company
Communications Services on frequencies licensed to Licensee for Commercial
Mobile Radio Services pursuant to the AT&T PCS Licenses, the Holding Company
Licenses, the Purchased Licenses and the Permitted Cellular Licenses, and the
provision in connection with such Company Communications Services of Adopted
Service Features (as defined in the Stockholders Agreement), and (b)
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marketing and offering the services and features described in clause (a) within
the Licensed Territory, including advertising such services and features using
broadcast and other media, so long as such advertising extends beyond the
Licensed Territory only when and to the extent necessary to reach end-users and
potential end-users in the Licensed Territory.
"Licensed Logo": The logo containing the AT&T and globe design, as such
logo may be modified or replaced pursuant to Section 4.3, and the expression
"Member, AT&T Wireless Services Network," as set forth in Schedule A attached
hereto. Registrations and pending applications covering the Licensed Logo in the
United States are set forth in Schedule B1 attached hereto. The listing of goods
or services in the specification of any of these registrations or applications
which are outside the scope of services authorized under this Agreement shall
not be construed as inclusion of such goods or services in the license granted
by this Agreement; it being understood that the only services authorized under
this Agreement are as expressly set forth in this Agreement.
"Licensed Marks": Collectively, the Licensed Logo, the Licensed Phrase, the
Licensed Trade Dress, and any additional Marks that may be licensed hereunder
pursuant to Section 4.3 or 4.4.
"Licensed Phrase": The expression "Member, AT&T Wireless Services Network"
or the expression "[Licensee] is a member of the AT&T Wireless Services Network"
and the form of such expression as it may be modified or replaced pursuant to
Section 4.3 or 4.4.
"Licensed Services": The services described in clause (a) of the definition
of the term "Licensed Activities."
"Licensed Territory": The Territory (as defined in the Stockholders
Agreement). The Licensed Territory as of the date hereof is comprised of those
geographic areas set forth in Schedule C.
"Licensed Trade Dress": The general image or appearance of the marketing of
services performed under the Licensed Logo, including without limitation, the
colors, designs, sizing configurations, publication formats and the like as set
forth in Schedule B attached hereto and as such trade dress may be modified or
replaced pursuant to Section 4.3, and such other trade dress as may be added
thereto or substituted therefor in accordance with Section 4.3 or 4.4.
"Licensee": As defined in the preamble.
"Licensor": As defined in the preamble.
"▇▇▇▇": Any name, ▇▇▇▇▇, ▇▇▇▇, trademark, service ▇▇▇▇, sound ▇▇▇▇, trade
dress, trade name, business name, slogan, or other indicia of origin.
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"Marketing Materials": Any and all materials, whether written, oral, visual
or in any other medium, used by Licensee or its Authorized Dealers to market,
advertise or otherwise offer any Licensed Services under the Licensed Marks.
"Merger Agreement": Agreement and Plan of Reorganization and Contribution
by and among TeleCorp PCS, Inc. and Tritel PCS, Inc. and AT&T Wireless PCS, LLC,
dated as of ____________________.
"Minutes": As defined in Section 20.2(i).
"Person": Any individual, corporation, partnership, firm, joint venture,
limited liability company, limited liability partnership, association, joint-
stock company, trust, estate, incorporated or unincorporated organization,
governmental or regulatory body, or other entity.
"Purchased Licenses": The PCS licenses that Licensee will acquire the right
to purchase pursuant to the Merger Agreement and the Exchange Agreement.
"Quality Control Representatives": Representatives of Licensor appointed in
accordance with Section 7.
"Quality Standards": The TDMA Quality Standards and the Guidelines for Use
of the Licensed Logo and Licensed Phrase set forth in Schedules D and E to this
Agreement.
"Regulatory Authority": Any regulatory, administrative or governmental
entity, authority or agency, including without limitation, the FCC and the
Export Licensing Office of the U.S. Department of Commerce.
"Roaming Agreement": As defined in Section 20.2(iii).
"Significant Breach by Licensee": As defined in Section 11.2.
"Stockholders Agreement": As defined in the second recital.
"Successor": With respect to any party, any successor, transferee or
assignee, including without limitation, any receiver, debtor in possession,
trustee, conservator or similar Person with respect to such party or such
party's assets.
"TDMA Quality Standards": The quality standards applicable to TDMA PCS
Systems and Cellular Systems (as such terms are defined in the Stockholders
Agreement) owned and operated by Licensor's Affiliates in the Central and
Southwest Region, which, as currently in effect, are set forth on Schedule D, as
the same may be amended from time to time, provided any such amended standards
shall become effective one hundred twenty (120) days after notice thereof is
given to Licensee.
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"Telecommunications Service": Any service providing the transmission of
voice, data, image or other messages or content, by radio or by aid of wire,
cable or other means now known or later developed between the points of origin
and reception of such transmission, or by means of any combination of the
foregoing.
"TeleCorp Credit Agreement" shall mean that certain Credit Agreement dated
as of July 17, 1998 by and among TeleCorp PCS, Inc., the Lenders Party to, and
Chase Manhattan Bank, as Administrative Agent and Issuing Bank, TD Securities
(USA) Inc., as Syndication Agent, and Bankers Trust Company, as Document Agent,
dated as of July 17, 1998, as amended.
"Telephones": As defined in Section 20.2(i).
"Tritel Credit Agreement" shall mean that certain Amended and Restated
Loan Agreement dated as of March 31, 1999 by and among Tritel Holding Corp., as
Borrower, Tritel, Inc., as Parent, the Financial Institutions Signatory thereto,
as Lenders, and Toronto Dominion (Texas) Inc., as Administrative Agent for the
Lenders.
2. GRANT OF LICENSE, ETC.
2.1 Grant of License. Subject to the terms and conditions of this
----------------
Agreement, Licensor hereby grants to Licensee a royalty free, non-transferable,
non-sublicensable, non-exclusive limited right and license to use the Licensed
Marks in the Licensed Territory, solely in connection with Licensed Activities.
2.2 No Other Services or Products. The Licensed Marks may not be used
-----------------------------
by Licensee in connection with any service, except as expressly set forth in
this Agreement, or any product, except as expressly permitted by the terms of
Section 2.4. Specifically, but not by way of limitation, this Agreement does not
grant Licensee the right to use the Licensed Marks in connection with (a) the
manufacture or distribution of any products other than the distribution of
mobile phones to the extent expressly permitted by the terms of Section 2.4, or
(b) any Telecommunications Services, including, but not limited to long distance
services, other than Licensed Services. Accordingly, this Agreement does not
grant any license, authorization or permission to Licensee to appear on an equal
access ballot, or in any other fashion, as a long distance provider using the
Licensed Marks, or to use the Licensed Marks in connection with the reselling of
long distance or local service or any other service. Licensee shall identify to
Licensee's customers that Licensor is their long distance carrier and refer to
Licensor by its Marks and trade dress. This Agreement does not grant Licensee
the right to use any AT&T Service ▇▇▇▇ or any other ▇▇▇▇ of Licensor in any
manner, except as part of the Licensed Logo, Licensed Phrase and Licensed Trade
Dress as specifically set forth in this Agreement, or in the manner specifically
set forth in Sections 2.4, 4.1, 4.3 and 4.4.
2.3 Exclusivity. Licensor (on behalf of itself and its Affiliates)
-----------
shall not grant to any Person (other than a Subsidiary of Licensor) a right or
license to provide or resell, or act as agent
6
for any Person offering, Company Communications Services under the Licensed
Marks except to any Person that (i) resells, or acts as Licensee's agent for,
Company Communications Services provided by Licensee, including bundling any
such Company Communications Services with other Telecommunications Services
marketed, offered and provided or resold by such Person pursuant to an agreement
between such Person and Licensor or its Affiliates (in its capacity as reseller
or agent) or Licensee, or (ii) provides or resells wireless Telecommunications
Services to or from specific locations (such as buildings or office complexes),
even if the subscriber equipment used in connection with such service may be
capable of routine movement within a limited area (such as a building or office
complex), and even if such subscriber equipment may be capable of obtaining
other telecommunications services beyond such limited area (which other services
may include routine movement beyond such limited area) and handoff between the
service to such specific location and such other telecommunications services. To
the extent the "other telecommunications services" referred to in clause (ii) of
the immediately preceding sentence constitute Company Communications Services,
Licensor (on behalf of itself and its Affiliates) shall not grant to any Person
a right or license to provide or resell such "other telecommunications services"
under the Licensed Marks, except in accordance with the terms of clause (i) of
the immediately preceding sentence. Nothing herein shall be construed to affect
the obligations of AT&T Wireless PCS LLC and its Affiliates set forth in
[Section 8.6] of the Stockholders Agreement.
2.4 Use of Licensed Marks on Mobile Phones. In connection with its
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marketing, offering and provision of Licensed Services, Licensee may offer and
distribute to end-users mobile phones branded with the same Marks of Licensor,
and in the same manner, as the mobile phones distributed by or on behalf of
Licensor and its Affiliates, provided that such mobile phones (a) are purchased
from Licensor or its Affiliates, (b) are identical to mobile phones offered and
distributed by Licensor and its Affiliates and are purchased from the same
manufacturer (or its authorized dealers), or (c) are manufactured and
distributed by a manufacturer authorized by Licensor to manufacture mobile
phones branded with such Marks (or its authorized dealers).
3. AGREEMENT PERSONAL.
3.1 Personal to Licensee.
--------------------
(a) In recognition of the unique nature of the relationship between
Licensor and Holding Company, the fact that Licensor would not be
willing to enter into an agreement such as this Agreement with any
other party in any other circumstances, and the unique nature of
Licensee (including without limitation, the fact that Holding Company
is partially owned by Licensor's Affiliate, AT&T Wireless PCS LLC),
the parties agree that the rights, obligations and benefits of this
Agreement shall be personal to Licensee, and Licensor shall not be
required to accept performance from, or render performance to an
entity other than Licensee or even to Licensee itself in the event of
a Change of Control of Licensee. Pursuant to 11 U.S.C. (S)
365(c)(1)(A) (as it
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may be amended from time to time, and including any successor to such
provision), in the event of the Bankruptcy of Licensee, this
Agreement may not be assigned or assumed by Licensee (or any
Successor) and Licensor shall be excused from rendering performance
to, or accepting performance from, Licensee or any Successor.
(b) Notwithstanding the foregoing, the rights and obligations under
this Agreement may be assigned to the lenders (the "Lenders") named
in the TeleCorp Credit Agreement and the Tritel Credit Agreement,
and, after a default under the TeleCorp Credit Agreement or the
Tritel Credit Agreement and the expiration of any applicable grace
and cure periods thereunder, the Lenders named therein may enforce
Licensee's rights hereunder and such Lenders may assign this
Agreement to any Person with the consent of Licensor.
3.2 Licensee Acknowledgment. Licensee acknowledges and agrees that
-----------------------
it understands it may have, or, in the future, may elect to enter into,
agreements with Licensor's Affiliates and that neither the execution or
continuation nor the renewal of any of these agreements will have any effect on
this Agreement and Licensee may choose to contract, or not, with Licensor's
Affiliates as it deems appropriate.
4. USE OF LICENSED MARKS AND OTHER MARKS.
4.1 Approved Licensee Marks. Licensee shall have the right from
-----------------------
time to time during the term hereof to create and use its own Marks, together
with the Licensed Marks, in connection with the Licensed Activities; provided
that Licensee provides Licensor with prior written notice of its desire to use
any such Marks owned by Licensee and Licensor approves Licensee's proposed use
of such Marks (which approval shall not be unreasonably withheld, delayed or
conditioned). Licensor shall use commercially reasonable efforts to approve or
disapprove any Marks proposed to be used by Licensee within 30 days of its
receipt of a written request for such approval. If Licensee has not received a
response from Licensor by the end of such 30-day period, Licensee shall have the
right to send a second written request for such approval to Licensor that states
expressly that, if Licensee does not receive a response from Licensor within 30
days after Licensor's receipt of such second request, Licensor shall be deemed
to have approved Licensee's proposed ▇▇▇▇ or Marks. If Licensee does not receive
such response by the end of such second 30-day period, Licensor shall be deemed
to have approved such proposed ▇▇▇▇ or Marks. Marks approved by Licensor in
accordance with this Section 4.1 shall be sometimes referred to herein as
"Approved Licensee Marks."
4.2 Marks To Be Used. Licensee shall conduct all Licensed
----------------
Activities solely under the Approved Licensee Marks, together with the Licensed
Marks, all in accordance with guidelines set forth on Schedule E.
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4.3 Modification of Licensed Marks. In the event Licensor modifies or
------------------------------
replaces any of the Licensed Marks as they are used in any portion of Licensor's
business, and if Licensor requests Licensee to adopt and use any such modified
or replaced Licensed Marks, Licensee will adopt and use such modified or
replaced Licensed Marks and, in such event, such modified or replaced Licensed
Marks shall be considered the Licensed Marks contemplated by this Agreement;
provided that in such event, Licensee shall be granted a 180-day period during
which to phase-out its use of the superseded forms of the Licensed Marks, as
applicable, and during such 180-day period Licensee shall have the right to use
its existing inventory of Marketing Materials bearing the superseded forms of
the Licensed Marks, as applicable.
4.4 Use of Additional Marks at Licensor's Request. Licensor may, from
---------------------------------------------
time to time, request Licensee to adopt and use a ▇▇▇▇ or Marks of Licensor, in
addition to the then existing Licensed Marks in connection with the Licensed
Activities. Such additional ▇▇▇▇ or Marks shall be licensed hereunder on the
same terms as the then existing Licensed Marks and Licensee shall within a
reasonable time, but in any event within one hundred eighty (180) days, comply
with Licensor's request by adopting and using such additional ▇▇▇▇ or Marks;
provided that during such 180-day period Licensee shall have the right to use
its existing inventory of Marketing Materials that do not contain the additional
▇▇▇▇ or Marks.
5. RETENTION OF RIGHTS.
Except as otherwise expressly provided in Section 2, nothing in this
Agreement shall be deemed or construed to limit in any way Licensor's rights in
and to the AT&T Service Marks and the Licensed Marks, including without
limitation:
(a) all rights of ownership in and to the AT&T Service Marks and the
Licensed Marks, including the right to license or transfer the same;
and
(b) the unimpaired right to use the AT&T Service Marks and the
Licensed Marks in connection with marketing, offering or providing
any products or services (including, without limitation Licensed
Services) whether within or without the Licensed Territory.
6. SYSTEM REQUIREMENTS.
The terms of [Sections 8.1(a), 8.2, 8.3, and 8.5(a)] of the Stockholders
Agreement are hereby incorporated herein by reference with the same effect as if
set forth herein in their entirety and Licensee shall comply with its
obligations therein.
7. QUALITY CONTROL.
7.1 General. Licensee acknowledges that the services and activities
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covered by this Agreement must be of sufficiently high quality as to provide
maximum enhancement to and
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protection of the Licensed Marks and the good will they symbolize. Licensee
further acknowledges that the maintenance of high quality services is of the
essence of this Agreement, as is the use of the Licensed Marks in connection
therewith, and that it will utilize only Marketing Materials which enhance (and
do not disparage or place in disrepute) Licensor, its businesses or its business
reputation, and enhance (and do not adversely affect or detract from) Licensor's
good will and will use the Licensed Marks in ways (but only in ways) which will
so enhance Licensor's business reputation and good will.
7.2 Quality Standards. Licensee shall use commercially reasonable efforts
-----------------
to cause the Company Systems to comply with the TDMA Quality Standards. Without
limiting the foregoing, with respect to each material portion of a Company
System (such as a city) that Licensee places in commercial service, on or prior
to the first anniversary of the date such material portion is placed in
commercial service, Licensee shall cause each such material portion to achieve a
level of compliance with the TDMA Quality Standards equal to at least the
average level of compliance achieved by comparable PCS and Cellular Systems
owned and operated by AT&T PCS taking into account, among other things, the
relative stage of development thereof.
Licensee shall also comply with the Guidelines for Use of the Licensed Logo and
Licensed Phrase as set forth in Schedule E to this Agreement, and which shall be
considered part of the Quality Standards.
7.3 Quality Service Reviews; Right of Inspection. Licensor shall have the
right to designate from time to time, one or more Quality Control
Representatives, who shall have the right at any time, upon fifteen (15) days
notice to Licensee, to conduct during regular business hours an inspection,
test, survey and review of Licensee's facilities and the facilities of
Licensee's Authorized Dealers, if any, and otherwise to determine compliance
with the Quality Standards (each, an "Inspection"); provided that Licensor shall
use all commercially reasonable efforts to ensure that such Inspections shall
not unreasonably interfere with Licensee's conduct of its business; and provided
further that Licensor shall not be permitted to conduct more than two (2)
Inspections during each 12-month period of the term of this Agreement unless
Licensor reasonably believes that Licensee is not in compliance with the Quality
Standards, in which case Licensor shall be permitted to conduct Inspections from
time to time until Licensee has been determined to be in compliance. Licensee
agrees to collect, maintain and furnish to the Quality Control Representatives:
(i) all performance data relating to Licensee's Licensed Services reasonably
requested by the Quality Control Representatives and representative samples of
Marketing Materials that are marketed or provided under the Licensed Marks for
Inspections to assure conformance of the Licensed Services and the Marketing
Materials with the Quality Standards; and (ii) all performance data in its
control reasonably requested by the Quality Control Representatives relating to
the conformance of Licensed Services with the Quality Standards. Any such data
provided to Licensor shall be treated confidentially in accordance with Section
18. Licensor may independently conduct continuous customer satisfaction and
other surveys to determine if Licensee is meeting the Quality Standards.
Licensee shall cooperate with Licensor fully in the distribution and conduct of
such surveys so long as such cooperation shall not unreasonably interfere with
the conduct of Licensee's business. If Licensee learns that it is
10
not complying with the Quality Standards in any material respect, it shall
notify Licensor, and the provisions of Section 8 shall apply to such
noncompliance.
7.4 Authorized Dealers. Licensee shall provide to Licensor within
------------------
10 days after the expiration of each calendar quarter during the term of this
Agreement a list of all Authorized Dealers. Licensor shall have the right,
exercisable in its reasonable discretion, to give Licensee written notice
requiring Licensee to terminate any Authorized Dealer that Licensor reasonably
believes is not in compliance with the Quality Standards (after notice of such
non-compliance and a reasonable opportunity to cure has been granted to such
Authorized Dealer) effective no later than 30 days from the date such written
notice is given by Licensor to Licensee. All Authorized Dealers shall be bound
by Licensor's Quality Standards and by Licensee's obligations under this
Agreement. A breach by any such Authorized Dealer of this Agreement shall be
deemed a breach of this Agreement by Licensee; provided that Licensee's
termination of such breaching Authorized Dealer shall be deemed to cure any such
breach.
7.5 Sponsorship. Licensee shall not use the Licensed Marks to
-----------
sponsor, endorse, or claim affiliation with any event, meeting, charitable
endeavor or any other undertaking (each, an "Event") without the express written
permission of Licensor; provided however that, the categories of Events
described on Schedule F attached hereto shall be deemed pre-approved by Licensor
and Licensee shall not be required to seek permission from Licensor to sponsor,
endorse or claim affiliation with such Events using the Licensed Marks.
Notwithstanding the foregoing, Licensor reserves the right to deny permission to
any event and to amend Schedule F. In the event that Licensee desires to
sponsor, endorse or claim affiliation with an Event not described on Schedule F,
Licensee shall provide Licensor with at least twenty (20) business days prior
written notice of such Event in reasonable detail and Licensor shall be deemed
to have granted Licensee permission to sponsor, endorse or claim affiliation
with such Event if a denial of permission is not received by Licensee by the
date or time specified in such notice. Any breach of this provision reasonably
determined to have a material adverse effect on Licensor or the Licensed Marks
shall be deemed a Significant Breach by Licensee (in no event less than ten
business days after receipt of the notice).
7.6 Universal Wireless Consortium. Licensee shall, throughout the
-----------------------------
term of this Agreement, and any renewals or extensions thereof, be a member of
the Universal Wireless Consortium.
8. REMEDIES FOR NONCOMPLIANCE WITH QUALITY STANDARDS.
8.1 Cure Period. If Licensor becomes aware that Licensee or its
-----------
Authorized Dealers, if any, are not complying with any Quality Standards in any
material respect and notifies Licensee in writing thereof, setting forth, in
reasonable detail, a written description of the noncompliance and any
suggestions for curing such noncompliance, then Licensee shall cure such
11
noncompliance as soon as is practicable but in any event within thirty (30) days
thereafter or, in the case of noncompliance with the TDMA Quality Standards, if
such breach is not capable of being cured on commercially reasonable terms
within such thirty (30) day period, within one-hundred eighty (180) days of such
notice, provided that Licensee is using commercially reasonable efforts to cure
such material breach as soon as reasonably practicable. In the event that the
non-compliance with the Quality Standards is being caused by an Authorized
Dealer, Licensee's termination of such Authorized Dealer shall be deemed to cure
such non-compliance. If such non-compliance with the Quality Standards continues
beyond the applicable cure period described above, Licensee shall then: (i)
cease any Licensed Activities under the Licensed Marks in the Licensed Territory
until it can comply with the Quality Standards; and (ii) at Licensor's election,
be deemed to be in breach of this Agreement.
8.2 Potential Injury to Persons or Property. Notwithstanding the
---------------------------------------
foregoing, in the event that Licensor reasonably determines that any
noncompliance creates a material threat of personal injury or injury to property
of any third party, upon written notice thereof by Licensor to Licensee,
Licensee shall cure such non-compliance as soon as practicable but in any event
within thirty (30) days after receiving such notice. If the non-compliance
continues beyond such cure period, Licensee shall either cease any Licensed
Activities under the Licensed Marks in the Licensed Territory until it can
comply with the Quality Standards, or be deemed to be in breach of this
Agreement.
9. PROTECTION OF LICENSED MARKS.
9.1 Ownership and Rights. Licensee admits the validity of, and
--------------------
agrees not to challenge the ownership or validity of the Licensed Marks.
Licensee acknowledges that it will not obtain any ownership interest in the
Licensed Marks or any other right or entitlement to continued use of them,
regardless of how long this Agreement remains in effect and regardless of any
reason or lack of reason for the termination thereof by Licensor; provided that
by making this acknowledgment Licensee is not waiving, and does not intend to
waive, any contractual rights hereunder or its remedies upon a breach hereof by
Licensor. Licensee shall not disparage, dilute or adversely affect the validity
of the Licensed Marks. Licensee agrees that any and all good will and other
rights that may be acquired by the use of the Licensed Marks by Licensee shall
inure to the sole benefit of Licensor, except a security interest granted to the
Lenders in accordance with the terms of the Credit Agreement. Licensee will not
grant or attempt to grant a security interest in the Licensed Marks or this
Agreement, 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 Licensor. Licensee agrees to execute all documents
reasonably requested by Licensor to effect registration of, maintenance and
renewal of the Licensed Marks. For purposes of this Agreement, Licensee shall be
considered a "related company" under the U.S. Trademark Act, 15 U.S.C. (S) 1051
et seq.
12
9.2 Similar Marks. Licensee further agrees not to register in any
-------------
country any ▇▇▇▇ resembling or confusingly similar to the Licensed Marks or the
AT&T Service Marks, or which dilutes the Licensed Marks or the AT&T Service
Marks, and not to use the Licensed Marks or the AT&T Service Marks or any part
thereof as part of its corporate name, nor use (except in accordance with
Section 4.1) any ▇▇▇▇ confusingly similar, deceptive or misleading with respect
to the Licensed Marks or the AT&T Service Marks or which dilutes the Licensed
Marks or the AT&T Service Marks. Licensee further agrees not to use or register
in any country any ▇▇▇▇ similar to the Licensed Marks or the AT&T Service Marks,
or which dilutes the Licensed Marks or the AT&T Service Marks. If any
application for registration is, or has been filed in any country by Licensee
which relates to any ▇▇▇▇ which, in the sole opinion of Licensor, is confusingly
similar, deceptive or misleading with respect to the Licensed Marks or the AT&T
Service Marks, or which dilutes the Licensed Marks or the AT&T Service Marks,
Licensee shall, at Licensor's sole discretion, immediately abandon any such
application or registration or assign it (free and clear of any Liens, and for
consideration of $1.00) to Licensor. If Licensee uses any ▇▇▇▇ which, in the
sole opinion of Licensor, is confusingly similar, deceptive or misleading with
respect to the Licensed Marks or the AT&T Service Marks, or which dilutes the
Licensed Marks or the AT&T Service Marks, or if Licensee uses the Licensed Marks
or the AT&T Service Marks in connection with any product, or in connection with
any service not specifically authorized hereunder, Licensee shall, immediately
upon receiving written request from Licensor, permanently cease such use.
Notwithstanding anything to the contrary contained in this Section 9.2, Licensee
shall have the right to use and register the Approved Licensee Marks that are
used together with the Licensed Marks in accordance with the terms of this
Agreement and the Approved Licensee Marks shall not be deemed by Licensor to
resemble or to be confusingly similar to the Licensed Marks.
9.3 Infringement. In the event that either party 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, or any
third party alleges or claims that any of the Licensed Marks are liable to cause
deception or confusion to the public, or is liable to dilute or infringe any
right of such third party (each such event, an "Infringement"), such party shall
promptly notify the other party or its authorized representative giving
particulars thereof, and Licensee shall provide necessary information and
reasonable assistance to Licensor or its authorized representatives in the event
that Licensor decides that proceedings should be commenced or defended. For
purposes of this Agreement, Licensee shall be deemed to have "learned" of an
Infringement when either (i) the General Manager of one of Licensee's operating
subsidiaries or divisions or (ii) an executive officer of Licensee obtains
actual knowledge of the Infringement. Licensor shall have exclusive control of
any litigation, opposition, cancellation or related legal proceedings. The
decision whether to bring, defend, maintain or settle any such proceedings shall
be at the exclusive option and expense of Licensor, and all recoveries shall
belong exclusively to Licensor. Licensee will not initiate any such litigation,
opposition, cancellation or related legal proceedings in its own name but, at
Licensor's request, agrees to be joined as a party in any action taken by
Licensor to enforce its rights in the Licensed Marks or the AT&T Service Marks;
provided that Licensor shall reimburse Licensee for all reasonable out-of-pocket
costs and expenses incurred by Licensee, its Affiliates and authorized
representatives (and their respective
13
directors, officers, stockholders, employees and agents) in connection with
their participation in such action. Nothing in this Agreement shall require, or
be deemed to require Licensor to enforce the Licensed Marks or the AT&T Service
Marks against others.
9.4 Compliance With Laws. In the performance of this Agreement,
--------------------
Licensee shall comply in all material respects with all applicable laws and
regulations and administrative orders, including those laws and regulations
particularly pertaining to the proper use and designation of Marks in the
Licensed Territory. Should Licensee be or become aware of any applicable laws or
regulations which are inconsistent with the provisions of this Agreement,
Licensee shall promptly notify Licensor of such inconsistency. In such event,
Licensor may, at its option, either waive the performance of such inconsistent
provisions, or negotiate with Licensee to make changes in such provisions to
comply with applicable laws and regulations, it being understood that the
parties intend that any such changes shall preserve to the extent reasonably
practicable the parties' respective benefits under this Agreement.
10. NO SUBLICENSING.
Licensee shall not: (i) assign, license, transfer, dispose or
relinquish any of its rights or obligations hereunder (whether by merger,
consolidation, sale, operation of law or otherwise) other than as contemplated
by Section 3.1(b); or (ii) grant or purport to grant any sublicense in respect
of the Licensed Marks; provided that Licensee's Authorized Dealers and
Subsidiaries shall have the right to use the Licensed Marks in accordance with
the Quality Standards in connection with Licensed Activities. Any such purported
assignment, license, transfer, disposition, relinquishment or sublicense shall
be void and of no effect.
11. TERM AND TERMINATION.
11.1 Term.
----
(a) This Agreement shall commence on the date hereof and shall be
in effect for five (5) ears following such date, unless terminated
earlier pursuant to this Section 11. Neither party has a right or
obligation to renew this Agreement beyond the initial term;
provided, however, that if each party gives written notice (a
"Renewal Notice") to the other party of an election to renew not
less than ninety (90) days prior to the end of the initial term,
then, and only then, shall this Agreement renew for an additional
five (5) year term. During the ten (10) day period commencing one
hundred twenty (120) days prior to the end of the initial term,
either party may give written notice (a "Renewal Request") to the
other party requesting that such other party give a Renewal Notice.
No later than ninety (90) days prior to the end of the initial
term, the recipient of a Renewal Request shall give to the
requesting party either, in its sole discretion: (i) a Renewal
Notice or (ii) a written notice (a "Non-Renewal Notice") stating it
is not electing to renew the term of this Agreement. Any recipient
of a Renewal Request that fails to send either a Renewal Notice or
a Non-Renewal Notice in accordance with the immediately preceding
sentence shall be deemed to have given a Renewal Notice. In
14
the event either party fails to give a Renewal Notice or, in
response to a Renewal Request, gives a Non-Renewal Notice, such
party shall be presumed to have: (a) good cause of non-renewal
either due to an action or failure to act by the other party or due
to circumstances related to the party who did not provide the
notice, and (b) shown that such action or failure to act by the
other party may affect, or has affected, the interests of such
party in an adverse or substantial manner in the development of the
market, distribution of merchandise, or rendering of services. In
the event that AT&T Wireless PCS LLC shall convert any shares of
Series A Preferred Stock of Licensee into Common Stock of Licensee
(as such terms are defined in the Stockholders Agreement), the term
of this Agreement shall expire on the later of (x) two (2) years
from the Series A Conversion Date (as such term is defined in
Licensee's Restated Certificate of Incorporation), and (y) the then
existing expiration date of this Agreement.
(b) Notwithstanding anything to the contrary contained in this
Section 11.1, this Agreement may be terminated by Licensor upon
written notice to Licensee at any time following the later to occur
of (x) the termination by AT&T Wireless PCS LLC of its obligations
under Section 8.6 of the Stockholders Agreement pursuant to Section
8.8(c) of the Stockholders Agreement, and (y) the second
anniversary of the date Licensor (or an affiliate of Licensor)
gives written notice to Licensee that it has entered into a letter
of intent or binding agreement to engage in a Disqualifying
Transaction (as defined in the Stockholders Agreement); provided,
however, that in no event shall Licensor have the right to
terminate this Agreement as of a date prior to the fifth
anniversary of the date hereof, provided further however that, in
the event that this Agreement is terminated pursuant to this
Section 11.1(b) and Licensee does not exercise its right pursuant
to Section 6.1 of the Stockholders Agreement to convert all of the
shares of Company Stock (as defined in the Stockholders Agreement)
owned by AT&T Wireless PCS LLC into Series B Preferred Stock (as
defined in the Stockholders Agreement), the termination shall only
apply to the portion of the Territory that constitutes the "Overlap
Territory" (as defined in the Stockholders Agreement) and this
Agreement shall remain in full force and effect with respect to the
remainder of the Territory.
11.2 Breach by Licensee. Licensor may terminate this Agreement at
------------------
any time in the event of a Significant Breach by Licensee. A "Significant Breach
by Licensee" shall mean, after exhaustion of any applicable cure periods set
forth in this Agreement, any of the following:
(a) Licensee's use of any ▇▇▇▇ (including the Licensed Marks and
the AT&T Service Marks) contrary to the provisions of this
Agreement, or the use by an Authorized Dealer of any ▇▇▇▇
(including the Licensed Marks and the AT&T Service Marks) contrary
to the provisions of this Agreement, including a violation by
Licensee of Section 4.2, in each case which continues for more than
30 days after written notice thereof has been given to Licensee;
15
(b) Subject to the provisions of Section 8.1, Licensee's use of the
Licensed Marks in connection with any Marketing Materials, or the
offering, marketing or provision of any Licensed Services, or the
conduct of any Licensed Activities or any other aspect of its
business conducted by it, which fail to meet the Quality Standards
in any material respect;
(c) Licensee's refusing or neglecting a request by Licensor
pursuant to Section 7.3 for access to Licensee's facilities or
Marketing Materials, which refusal or neglect continues for more
than five business days after written notice thereof is given to
Licensee;
(d) Licensee's licensing, assigning, transferring, disposing of or
relinquishing (or purporting to license, assign, transfer, dispose
of or relinquish) any of the rights granted in this Agreement to
others, except as permitted by Section 10;
(e) Licensee's failure to maintain the Quality Standards and other
information furnished under this Agreement in confidence pursuant
to Section 18, or failing to restrict the transmission of
information, products and commodities as required by Section 18;
(f) The occurrence of a Change of Control of Licensee;
(g) Licensee's loss, for any reason whatsoever, of its rights to
hold, directly or indirectly, the FCC licenses for Company
Communications Services in the Licensed Territory or to provide the
Company Communications Services under such licenses, unless (i)
such loss results, directly or indirectly, from the actions or
inactions of Licensor or its Affiliates or (ii) such loss relates
to less than 5% of the POPS in the Licensed Territory;
(h) The Bankruptcy of Licensee;
(i) Licensee's failure in any material respect to obtain Licensor's
permission as provided in, or any other material breach of the
provisions of, Section 7.5; or
(j) Any Substantial Company Breach.
11.3 Termination Obligations. In the event this Agreement
-----------------------
terminates pursuant to this Section 11:
(a) Licensee shall immediately cease use of the Licensed Marks upon
notice of termination, except that Licensee shall have the right to
continue to use the Licensed Marks (including without limitation,
Licensee's then existing inventory of Marketing Materials bearing
the Licensed Marks) to the extent such use is otherwise in
16
accordance with the provisions of this Agreement, for a period of
up to ninety (90) days following such termination; and
(b) Licensee shall have no further rights under this Agreement,
except as provided in Section 11.5.
11.4 No Waiver of Rights. In addition to any other provision of this
-------------------
Section 11, each party will retain all rights to any other remedy it may have at
law or equity for any breach by the other of this Agreement.
11.5 Survival. Sections 11.3(a), 12.1, 17 and 18 shall survive any
--------
expiration or termination of this Agreement.
12. INDEMNITY.
12.1 Licensor shall defend, indemnify and hold Licensee and its
authorized representatives (including the Authorized Dealers), and their
respective directors, officers, stockholders, employees and agents, harmless
against all claims, suits, proceedings, costs, damages, losses and expenses
(including reasonable attorneys' fees) and judgments incurred, claimed or
sustained by Licensee or such persons arising out of: (i) claims by third
parties that Licensee's use of the Licensed Marks in accordance with this
Agreement constitutes trademark, service ▇▇▇▇ or trade dress infringement (or
infringement of any other intellectual property or other proprietary right owned
by a third party), dilution, unfair competition, misappropriation or
false/misleading advertising; (ii) any third party claims as to the lack of
validity or enforceability of (A) the registrations of the Licensed Marks or (B)
Licensor's ownership rights in the Licensed Marks; and (iii) any lack of
validity or enforceability of this Agreement caused by Licensor. Subject to
Licensor's indemnification obligations in the previous sentence, Licensee shall
defend, indemnify and hold Licensor, its Affiliates and authorized
representatives, and their respective directors, officers, stockholders,
employees and agents, harmless against all claims, suits, proceedings, costs,
damages and judgments incurred, claimed or sustained by third parties, whether
for personal injury or otherwise, arising out of Licensee's or any Authorized
Dealer's marketing, sale, or use of services under the Licensed Marks and shall
indemnify Licensor and the foregoing persons for all damages, losses, costs and
expenses (including reasonable attorneys' fees) arising out of such use, sale or
marketing and also for any improper or unauthorized use of the Licensed Marks or
any use of its own Marks. Licensee shall also defend, indemnify and hold
Licensor, its Affiliates and authorized representatives, and their respective
directors, officers, stockholders, employees and agents, harmless against all
claims, suits, proceedings, costs, damages, losses and expenses (including
reasonable attorneys' fees) and judgments incurred, claimed or sustained by
Licensor or such persons arising out of (i) any third party claims as to the
lack of validity or enforceability of (x) the registrations (if any) of the
Approved Licensee Marks or (y) Licensee's ownership rights in the Approved
Licensee Marks; and (ii) any lack of validity or enforceability of this
Agreement caused by Licensee.
17
12.2 Licensee shall maintain, at its own expense, in full force and
effect at all times during which Licensed Services bearing the Licensed Marks
are being sold, with a responsible insurance carrier acceptable to Licensor, at
least a Two Million Five Hundred Thousand Dollar ($2,500,000.00) products
liability insurance policy with respect to the Licensed Services offered under
the Licensed Marks. This insurance shall be primary to any of Licensor's
coverage, shall name Licensor as an insured party, shall be for the benefit of
Licensor and Licensee and shall provide for at least ten (10) days' prior
written notice to Licensor and Licensee of the cancellation or any substantial
modification of the policy. This insurance may be obtained for Licensor by
Licensee in conjunction with a policy which covers services and/or products
other than the services covered under this Agreement.
12.3 Licensee shall from time to time, upon reasonable request by
Licensor, promptly furnish or cause to be furnished to Licensor, evidence in
form and substance satisfactory to Licensor, of the maintenance of the insurance
required by Section 12.2, including without limitation, originals or copies of
policies, certificates of insurance (with applicable riders and endorsements)
and proof of premium payments.
13. CONSENT OF LICENSOR.
Except where another standard is expressly provided for herein,
whenever reference is made to Licensor's consent or approval in this Agreement,
such consent or approval may be granted or withheld in Licensor's sole
discretion and, if granted, may be done so conditionally or unconditionally;
provided, however, that such standard shall not be interpreted by Licensor as
justifying arbitrary rejection, but will connote a reasonable application of
judgment, taking into consideration Licensor's licensing practices and customs
in telecommunications licensing transactions.
14. NOTICES AND DEMANDS.
All notices, requests, demands or other communications required by, or
otherwise with respect to this Agreement shall be in writing and shall be deemed
to have been duly given to any party when delivered personally (by courier
service or otherwise), against receipt, when delivered by telecopy and confirmed
by return telecopy, or when actually received when mailed by registered
first-class mail, postage prepaid and return receipt requested in each case to
the applicable addresses set forth below:
If to Licensee: Holding Company
▇▇▇▇ ▇. ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: General Counsel
Fax No: (▇▇▇) ▇▇▇-▇▇▇▇
If to Licensor: AT&T Corp.
18
▇▇▇▇ ▇▇▇/▇▇/ ▇▇▇▇▇▇, ▇.▇.,
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: General Counsel
With a copies to: AT&T Corp.
▇▇▇▇ ▇▇▇/▇▇/ ▇▇▇▇▇▇, ▇.▇.,
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attn: General Attorney
AT&T Corp.
▇▇▇▇ ▇▇▇/▇▇/ ▇▇▇▇▇▇, ▇.▇.,
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: Corporate Secretary
AT&T Wireless Services Inc.
▇▇▇▇ ▇▇▇/▇▇/ ▇▇▇▇▇▇, ▇.▇.,
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Fax No.: (▇▇▇) ▇▇▇-▇▇▇▇
or to such other address as such party shall have designated by notice so given
to each other party.
15. COMPLIANCE WITH LAW.
Subject to the provisions of Section 9.4, nothing in this Agreement
shall be construed to prevent Licensor or Licensee from complying fully with all
applicable laws and regulations, whether now or hereafter in effect.
16. GOVERNMENTAL LICENSES, PERMITS, AND APPROVALS.
Licensee, at its expense, shall be responsible for obtaining and
maintaining all licenses, permits and approvals which are required by all
Regulatory Authorities with respect to this Agreement, and to comply with any
requirements of such Regulatory Authorities for the registration or recording of
this Agreement. Licensee shall furnish to Licensor written evidence from such
Regulatory Authorities of any such licenses, permits, clearances,
authorizations, approvals, registration or recording.
17. APPLICABLE LAW; JURISDICTION.
The construction, performance, and interpretation of this Agreement
shall be governed by the U.S. Trademark Act, 15 U.S.C. 1051 et seq., and the
internal, substantive laws of the State of
19
New York, without regard to its principles of conflicts of law; provided, that
(i) if the foregoing laws should be modified during the term hereof in such a
way as to adversely affect the original intent of the parties, the parties will
negotiate in good faith to amend this Agreement to effectuate their original
intent as closely as possible, or (ii) if Puerto Rican law is required to govern
a specific aspect of the parties' relationship related to Licensee's operations
in Puerto Rico, Puerto Rican law shall govern only such claims or actions
relating to Licensee's operations in Puerto Rico, and, then, only to the extent
that Puerto Rico law is required to apply. Except as otherwise provided herein,
Licensor and Licensee hereby irrevocably submit to the exclusive jurisdiction of
the United States District Court for the Southern District of New York, or
absent subject matter jurisdiction in that court, the state courts of the State
of New York located in New York County for all actions, suits or proceedings
arising in connection with this Agreement, and agree that any such action, suit
or proceeding shall be brought only in such courts (and waive any objection
based on forum non conveniens or any other objection to venue therein). Licensee
and Licensor hereby waive any right to a trial by jury.
18. CONFIDENTIALITY OF INFORMATION AND USE RESTRICTION.
The Quality Standards and other technical information furnished to
Licensee under this Agreement and other confidential and proprietary
information, know-how and trade secrets of Licensor that are disclosed or
otherwise provided to Licensee in connection with this Agreement, shall remain
the property of Licensor, and shall be returned to Licensor upon request and
upon termination of this Agreement. Unless such information was previously known
to Licensee free of any obligation to keep it confidential, or has been or is
subsequently made public (a) by any person other than Licensee and Licensor is
not attempting to limit further dissemination of such information, (b) by
Licensor, or (c) by Licensee, as required by law (including securities laws) or
to enforce its rights under this Agreement, it shall be held in confidence, and
shall be used only for the purposes of this Agreement. All confidential and
proprietary information, know-how and trade secrets of Licensee that are
disclosed or otherwise provided to Licensor hereunder (including without
limitation, during any Inspection) (collectively, "Licensee Information") shall
remain the property of Licensee and shall be returned to Licensee upon request
and upon termination of this Agreement. Unless such Licensee Information was
previously known to Licensor free of any obligation to keep it confidential, or
has been or is subsequently made public (a) by any person other than Licensor
and Licensee is not attempting to limit further dissemination of such
information, (b) by Licensee, or (c) by Licensor, as required by law (including
securities law) or to enforce its rights under this Agreement, it shall be held
in confidence and shall be used only for purposes of this Agreement.
19. MISCELLANEOUS.
19.1 Name, Captions. The name assigned this Agreement and the section
--------------
captions used herein are for convenience of reference only and shall not affect
the interpretation or construction hereof.
20
19.2 Entire Agreement. The provisions of this Agreement contain the
----------------
entire agreement between the parties relating to use by Licensee of the Licensed
Marks, and supersede all prior agreements and understandings relating to the
subject matter hereof. This Agreement shall be interpreted to achieve the
objectives and intent of the parties as set forth in the text and factual
recitals of the Agreement. It is specifically agreed that no evidence of
discussions during the negotiation of the Agreement, or drafts written or
exchanged, may be used in connection with the interpretation or construction of
this Agreement. No rights are granted to use the Licensed Marks or any other
marks or trade dress except as specifically set forth in this Agreement. In the
event of any conflict between the provisions of this Agreement and provisions in
any other agreement involving Licensee, the provisions of this Agreement shall
prevail. This Agreement is not a franchise under federal or state law, does not
create a partnership or joint venture, and shall not be deemed to constitute an
assignment of any rights of Licensor to Licensee. Licensee is an independent
contractor, not an agent or employee of Licensor, and Licensor is not liable for
any acts or omissions by Licensee.
19.3 Amendments, Waivers. This Agreement may not be amended, changed,
-------------------
supplemented, waived or otherwise modified except by an instrument in writing
signed by the party against whom enforcement is sought.
19.4 Specific Performance. The parties acknowledge that money
--------------------
damages are not an adequate remedy for violations of this Agreement and that any
party may, in its sole discretion, apply to the court set forth in paragraph 17
for specific performance, or injunctive, or such other relief as such court may
deem just and proper, in order to enforce this Agreement or prevent any
violation hereof, and to the extent permitted by applicable law, each party
waives any objection to the imposition of such relief.
19.5 Remedies Cumulative. All rights, powers and remedies provided
-------------------
under this Agreement, or otherwise available in respect hereof at law or in
equity shall be cumulative and not alternative, and the exercise or beginning of
the exercise of any thereof by any party shall not preclude the simultaneous or
later exercise of any other such right, power or remedy by such party.
19.6 No Waiver. The failure of any party hereto to exercise any
---------
right, power or remedy provided under this Agreement, or otherwise available in
respect hereof at law or in equity, or to insist upon compliance by any other
party hereto with its obligations hereunder, and any custom or practice of the
parties at variance with the terms hereof, shall not constitute a waiver by such
party of its right to exercise any such or other right, power or remedy or to
demand such compliance.
19.7 No Third Party Beneficiaries. Except with respect to the persons
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entitled to indemnification under Section 12.1, this Agreement is not intended
to be for the benefit of, and shall not be enforceable by any person or entity
who or which is not a party hereto.
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19.8 Counterparts. This Agreement may be executed in any number of
------------
counterparts, each of which shall be deemed to be an original, but all of which
together shall constitute one instrument. Each counterpart may consist of a
number of copies each signed by less than all, but together signed by all the
parties hereto.
20. RECOGNITION
Licensee recognizes the following:
20.1 The parties do not intend for the Puerto Rico Dealers'
Contract Law to apply to the relationship between Licensee and Licensor and, in
that regard, Licensee recognizes that (i) Licensor and Licensor's marks,
including, but not limited to the AT&T Service Marks and the Licensed Marks, are
well known throughout the United States and Puerto Rico; (ii) Licensor engages
in extensive advertising throughout the United States and Puerto Rico; and (iii)
Licensee has entered into this relationship with Licensor in order to enjoy the
market developed by Licensor's name and reputation, and the goodwill of the AT&T
Service Marks and the Licensed Marks.
20.2 The parties do not intend to create a franchise or business
opportunity relationship between Licensee and Licensor and, in that regard,
Licensee recognizes that:
(i) in providing telecommunications service under the terms of this
Agreement, Licensee may purchase on its own behalf for resale wireless
telephones ("Telephones") and minutes for mobile wireless
radiotelephonic service ("Minutes") from Licensor or Licensor's
Affiliates, and Licensee (a) is not required to maintain an inventory
of any item sold by Licensor, (b) is not required and will not engage
in collections activities on behalf of Licensor, and (c) is not
authorized and will not execute any contracts (including sales
contracts) on behalf of Licensor;
(ii) Licensor will not provide Licensee with a Uniform Franchise
Offering Circular which is required by the FTC Rule and several state
franchise investment laws to be provided with the offer and/or sales of
a franchise, as the parties acknowledge and agree that the FTC Rule and
state franchise investment laws do not, by their terms and the
definitions contained therein, apply;
(iii) the Telephones (if any) and Minutes purchased under the terms of
the Intercarrier Roamer Service Agreement between Licensor and
Licensee, dated as of July 17, 1998 ("Roaming Agreement"), are being
sold by Licensor to Licensee at bona fide wholesale prices;
(iv) Licensee is not required, by this Agreement or the Roaming
Agreement between Licensor and Licensee, or as a matter of practical
necessity, to purchase more than a reasonable quantity of Telephones
and Minutes for resale;
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(v) Licensor did not make any representation to Licensee that (a)
Licensee or its equity holders will earn, or are likely to earn, a
gross or net profit in excess of the initial required investment paid
by Licensee for the wireless service company, (b) Licensor or any of
its Affiliates has knowledge of the wireless market that Licensee will
operate in or that the market demand will enable Licensee to earn a
profit, (c) there is a guaranteed market for Licensee and/or wireless
service, or (d) Licensor or any of its Affiliates will provide Licensor
with locations or assist Licensee in finding locations for use or
operation of the wireless service company; and
(vi) Licensee was informed at least seven days prior to the execution
of this Agreement that Licensor's principal business address in New
York is 32 Avenue of the Americas, ▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ and
Licensor's agent for service of process in New York is c/o AT&T Corp.,
▇▇ ▇▇▇▇▇▇ ▇▇ ▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇.
20.3 Licensee has had ample time and opportunity to consult with
attorneys and advisors of its own choosing and has consulted with them about the
arrangement with Licensor and the above issues.
21. PUERTO RICO DEALERS' CONTRACT LAW DEFINITIONS.
If, contrary to the intent of the parties, the Puerto Rico Dealers'
Contract Law is interpreted by a court to apply to the relationship between
Licensor and Licensee, the parties acknowledge and agree that the following
shall constitute "just cause" under the Puerto Rico Dealers' Contract Law: (i)
if either of the parties fails to renew this Agreement as provided in Section
11.1; and (ii) termination of this Agreement for any of the reasons specified in
Section 11.2.
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IN WITNESS WHEREOF, each of the parties has caused this Agreement to be
executed in duplicate originals by its duty authorized representatives as of the
date first stated above.
AT&T CORP.
By: _________________________
Name:
Title:
HOLDING COMPANY.
By: _________________________
Name:
Title:
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