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EXHIBIT 10.4
BRAND LICENSE AGREEMENT
BETWEEN
AT&T CORP.
AND
AT&T WIRELESS SERVICES, INC.
DATED AS OF
JUNE 4, 2001
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TABLE OF CONTENTS
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1. DEFINITIONS...............................................................................................1
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"ADDITIONAL MOBILE WIRELESS SERVICES"........................................................................1
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"AFFILIATE"..................................................................................................2
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"AIRCRAFT TO GROUND SERVICE".................................................................................2
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"ANCILLARY WIRELESS SERVICES"................................................................................2
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"APPROVAL"...................................................................................................3
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"AT&T LICENSEES".............................................................................................3
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"AUTHORIZED DEALERS".........................................................................................3
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"BANKRUPTCY".................................................................................................3
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"BROADBAND"..................................................................................................4
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"BROADBAND EXCLUSIVE TERRITORIES"............................................................................4
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"CHANGE OF CONTROL"..........................................................................................6
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"CO-MARKETING"...............................................................................................6
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"CORPORATE ACCOUNTS".........................................................................................6
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"DEDICATED WIRELESS DEVICES".................................................................................6
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"DEDICATED WIRELESS PORTALS".................................................................................7
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"DISTRIBUTION DATE"..........................................................................................7
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"DMA"........................................................................................................7
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"ENFORCEMENT ACTION".........................................................................................7
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"ENFORCEMENT BUDGET".........................................................................................7
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"FCC"........................................................................................................7
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"FIXED WIRELESS FOOTPRINT"...................................................................................7
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"GUIDELINES".................................................................................................7
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"HIGH SPEED INTERNET ACCESS SERVICES"........................................................................8
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"IN BUILDING WIRELESS SERVICE"...............................................................................8
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"INDEMNIFIED PARTY"..........................................................................................8
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"INDEMNIFYING PARTY".........................................................................................8
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"INSPECTION".................................................................................................8
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"LICENSED MARKS".............................................................................................8
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"LICENSED SERVICES"..........................................................................................9
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"LICENSED TERRITORY".........................................................................................9
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"LICENSEE"...................................................................................................9
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"LICENSEE BRAND MAINTENANCE FEE"............................................................................10
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"LICENSEE FEE-APPLICABLE GROSS REVENUE".....................................................................10
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"LICENSEE MARKS"............................................................................................10
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"LICENSEE'S GROSS REVENUE"..................................................................................10
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"LOCAL TELEPHONY SERVICES"..................................................................................10
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"▇▇▇▇"......................................................................................................10
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"MARKETING MATERIALS".......................................................................................11
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"MOBILE WIRELESS SERVICES"..................................................................................11
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"PERSON"....................................................................................................11
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"PORTALS"...................................................................................................11
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"PREVIOUSLY LICENSED TERRITORIES"...........................................................................11
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"PROMOTIONAL PRODUCTS"......................................................................................12
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"QUALITY CONTROL REPRESENTATIVES"...........................................................................13
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"QUALITY STANDARDS".........................................................................................13
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"REGULATORY AUTHORITY"......................................................................................13
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"RESELLERS".................................................................................................13
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"RESIDENTIAL"...............................................................................................13
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"RESIDENTIAL FIXED WIRELESS SERVICES".......................................................................13
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"SEPARATION AND DISTRIBUTION AGREEMENT".....................................................................14
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"SERVICE BUNDLES"...........................................................................................14
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"SIGNIFICANT BREACH BY LICENSEE"............................................................................14
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"SMALL BUSINESS CUSTOMER"...................................................................................14
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"SMALL BUSINESS FIXED WIRELESS SERVICES"....................................................................15
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"SUBLICENSEE"...............................................................................................15
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"SUCCESSOR".................................................................................................15
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"TELEMATICS SERVICE"........................................................................................16
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"TELEMETRY SERVICE".........................................................................................16
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"TERM"......................................................................................................16
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"TOTAL REVENUE".............................................................................................16
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"TRADE DRESS"...............................................................................................16
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"VALUE ADDED RESELLER"......................................................................................16
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"WIRELESS RELATED DEVICES"..................................................................................16
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"WIRELESS RELATED PORTALS"..................................................................................17
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2. GRANT OF LICENSE.........................................................................................17
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2.1 MOBILE WIRELESS SERVICES..........................................................................17
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2.2 RESIDENTIAL FIXED WIRELESS SERVICES...............................................................17
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2.3 SMALL BUSINESS FIXED WIRELESS SERVICES............................................................18
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2.4 PROMOTIONAL PRODUCTS..............................................................................21
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2.5 WIRELESS RELATED DEVICES AND DEDICATED WIRELESS DEVICES...........................................22
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2.6 ANCILLARY WIRELESS SERVICES.......................................................................22
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2.7 WIRELESS RELATED PORTALS AND DEDICATED WIRELESS PORTALS...........................................22
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2.8 CONTENT, EQUIPMENT AND SOFTWARE...................................................................23
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2.9 TELEMATICS SERVICE AND TELEMETRY SERVICE..........................................................23
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2.10 IN BUILDING WIRELESS SERVICE......................................................................23
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2.11 ADDITIONAL MOBILE WIRELESS SERVICES...............................................................24
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2.12 AIRCRAFT TO GROUND SERVICE........................................................................24
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2.13 REQUEST FOR LICENSE...............................................................................24
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2.14 DEDICATED WIRELESS PORTALS........................................................................25
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2.15 WIRELESS RELATED DEVICES (A) AND DEDICATED WIRELESS DEVICES (B)...................................25
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2.16 RESERVATION OF RIGHTS.............................................................................26
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3. PAYMENTS.................................................................................................27
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3.1 BRAND MAINTENANCE FEE.............................................................................27
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3.2 REFERRAL REVENUES.................................................................................30
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3.3 FEES DURING 2001..................................................................................30
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4. RESTRICTIONS ON USE OF LICENSED MARKS....................................................................31
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4.1 RESELLERS.........................................................................................31
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4.2 USE OF LICENSED MARKS WITH LICENSEE MARKS.........................................................31
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4.3 BUNDLING..........................................................................................32
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4.4 CO-MARKETING......................................................................................33
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4.5 GENERAL PURPOSE CREDIT CARDS......................................................................33
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4.6 DEALERS...........................................................................................33
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5. REQUESTS TO LICENSE THE BRAND............................................................................34
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5.1 REQUEST TO LICENSOR TO GRANT BRAND LICENSE........................................................34
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5.2 APPROVAL PROCESS..................................................................................34
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5.3 ROYALTIES.........................................................................................34
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5.4 NETWORK MEMBERSHIP LICENSE AGREEMENTS.............................................................34
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5.5 NO OTHER RIGHTS...................................................................................35
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6. TERM AND TERMINATION.....................................................................................35
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6.1 TERM..............................................................................................35
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6.2 TERMINATION.......................................................................................36
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6.3 NOTICE OF TERMINATION.............................................................................38
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6.4 EFFECT OF TERMINATION.............................................................................41
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6.5 OTHER RIGHTS UNAFFECTED...........................................................................41
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7. QUALITY CONTROL..........................................................................................41
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7.1 GENERAL...........................................................................................41
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7.2 QUALITY STANDARDS.................................................................................41
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7.3 QUALITY SERVICE REVIEWS; RIGHT OF INSPECTION......................................................43
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7.4 AUTHORIZED DEALERS................................................................................45
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8. REMEDIES FOR NON-COMPLIANCE WITH QUALITY STANDARDS.......................................................45
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8.1 NON-COMPLIANCE WITH QUALITY STANDARDS AND CURE....................................................45
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8.2 POTENTIAL INJURY TO PERSONS OR PROPERTY...........................................................47
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8.3 LICENSOR'S RIGHTS TO LICENSE OTHERS...............................................................47
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9. PROTECTION OF LICENSED MARKS.............................................................................47
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9.1 OWNERSHIP AND RIGHTS TO THE LICENSED MARKS........................................................47
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9.2 SIMILAR MARKS.....................................................................................50
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9.3 INFRINGEMENT......................................................................................51
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9.4 ENFORCEMENT OF OTHER AGREEMENTS...................................................................52
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9.5 COMPLIANCE WITH LEGAL REQUIREMENTS................................................................53
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10. USE OF LICENSED MARKS AND OTHER MARKS................................................................54
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10.1 LICENSEE MARKS....................................................................................54
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10.2 MODIFICATION OF LICENSED MARKS....................................................................55
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10.3 USE OF ADDITIONAL MARKS AT LICENSOR'S REQUEST.....................................................55
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10.4 INTERNET DOMAIN NAMES.............................................................................56
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10.5 RESTRICTION ON LICENSOR...........................................................................56
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10.6 LICENSOR COVENANT.................................................................................56
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11. LIABILITY AND INDEMNIFICATION........................................................................57
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11.1 INDEMNIFICATION...................................................................................57
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11.2 NOTIFICATION AND DEFENSE OF CLAIMS................................................................58
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11.3 INSURANCE.........................................................................................62
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12. AGREEMENT PERSONAL...................................................................................63
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12.1 PERSONAL TO LICENSEE..............................................................................63
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12.2 LICENSEE ACKNOWLEDGMENT...........................................................................63
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13. RETENTION OF RIGHTS..................................................................................63
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14. SPONSORSHIP..........................................................................................64
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15. CONSENT OF LICENSOR..................................................................................65
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16. NOTICES..............................................................................................65
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17. GOVERNMENTAL LICENSES, PERMITS AND APPROVALS.........................................................66
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18. APPLICABLE LAW.......................................................................................66
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19. CONFIDENTIALITY OF INFORMATION AND USE RESTRICTION...................................................69
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20. DIVESTITURE OF FIXED WIRELESS BUSINESS BY LICENSEE...................................................70
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21. MISCELLANEOUS........................................................................................71
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21.1 ENTIRE AGREEMENT..................................................................................71
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21.2 RELATIONSHIP OF THE PARTIES.......................................................................71
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21.3 AMENDMENTS, WAIVERS...............................................................................72
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21.4 ASSIGNMENT........................................................................................72
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21.5 SPECIFIC PERFORMANCE..............................................................................72
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21.6 REMEDIES CUMULATIVE...............................................................................72
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21.7 NO WAIVER.........................................................................................72
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21.8 RULES OF CONSTRUCTION.............................................................................73
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21.9 NO THIRD PARTY BENEFICIARIES......................................................................73
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21.10 COUNTERPARTS..................................................................................74
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BRAND LICENSE AGREEMENT
BRAND LICENSE AGREEMENT (the "Agreement") dated as of June 4, 2001, by
and between AT&T Corp., a New York corporation, with offices located at 32
Avenue of the Americas, New York, N.Y. 10013 ("Licensor"), and AT&T Wireless
Services, Inc., a Delaware corporation, with offices located at ▇▇▇▇▇ ▇▇ ▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ (together with its Affiliates, "Licensee"). Certain
capitalized terms used herein are defined in Section 1.
WHEREAS, Licensor has, for many years, by itself and through its wholly
owned subsidiary, AT&T Wireless Services Inc., used, and Licensor desires that
Licensee have the right to use, the Licensed Marks, in connection with the
Licensed Services; and
WHEREAS, Licensee wishes to use the Licensed Marks in a limited manner
in the Licensed Territory in connection with the Licensed Services; and
WHEREAS, Licensor is willing to license and allow Licensee to use the
Licensed Marks in the Licensed Territory 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 are hereby acknowledged, the parties hereby agree as
follows:
1. DEFINITIONS
"ADDITIONAL MOBILE WIRELESS SERVICES": Wireless telecommunications
services that permit subscriber mobility, which services utilize radio
frequencies licensed or authorized by the appropriate Regulatory Authority and
are:
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(i) currently offered by Licensee;
(ii) offered in the future by Licensee and made a part of this
Agreement by Licensor in accordance with Section 2.13; or
(iii) provided using Licensee's own mobile devices,
but, in each case, which are not Mobile Wireless Services, In Building Wireless
Service, Residential Fixed Wireless Services, Small Business Fixed Wireless
Services or Aircraft to Ground Service.
"AFFILIATE": As set forth in the Separation and Distribution Agreement.
"AIRCRAFT TO GROUND SERVICE": Bi-directional, aircraft-to-ground
telecommunications service, including voice and data or combinations thereof,
that is provided by Licensee over a communication path that extends through the
air from a transmitting-station to a passenger on an airborne aircraft, which
transmitting-station transmits and receives subscriber-addressed, bi-directional
communications to and from more than one addressed subscriber and wherein the
communication path is switched from one transmitting-station to another such
transmitting-station in response to movement of the aircraft.
"ANCILLARY WIRELESS SERVICES": The following products or services:
1. The marketing, provision and sale of customer care services in
support of Licensee's provision of Mobile Wireless Services,
Residential Fixed Wireless Services and Small Business Fixed
Wireless Services to its customers;
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2. The marketing, provision and sale of activation services in
support of Licensee's provision of Mobile Wireless Services to
its customers;
3. The marketing, provision, sale and distribution of prepaid
wireless calling cards that can only be used to obtain Mobile
Wireless Services, provided that, such cards clearly identify
that they can only be used to obtain Mobile Wireless Services;
and
4. The marketing, provision, sale and distribution of SIM
(Subscriber Identity Module) cards that can only be used to
obtain Mobile Wireless Services.
"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.
"AT&T LICENSEES": Those Persons and business units that are part of
Licensor as of the Distribution Date and any other Persons who are licensed
under, or otherwise permitted to use, the Licensed Marks by Licensor during the
term of this Agreement.
"AUTHORIZED DEALERS": Any distributor or other agent of Licensee
authorized by Licensee 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
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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.
"BROADBAND": AT&T Broadband, LLC. and MediaOne Group, Inc., and their
Affiliates.
"BROADBAND EXCLUSIVE TERRITORIES": All of the following territories:
1. Any territories in which Licensor or any of its Affiliates
owns and operates cable facilities as of the Distribution
Date, but only to the extent of the service franchise in such
territories, provided however that, with respect to the
service franchise in Dallas, Texas, the Broadband Exclusive
Territories shall not include that portion of such service
franchise that is, as of the date of the Separation and
Distribution Agreement, serviced by Licensee through its
Residential Fixed Wireless Services offer in Dallas, Texas;
2. The territories covered by the DMAs for the following cities,
provided however that, if any local service area for which
Broadband has a
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franchise is located in part within the referenced DMA and in
part outside of such DMA, then with respect to the Territory
outside of the referenced DMA the "Broadband Exclusive
Territory" shall be limited to the actual franchise area:
a. San Francisco;
b. Boston/Hartford;
c. Seattle;
d. Chicago;
e. Portland;
f. Atlanta;
g. Pittsburgh;
h. Sacramento/Fresno;
i. Denver/Front Range;
j. Salt Lake City;
k. Jacksonville;
l. South Florida;
m. Minneapolis/St. ▇▇▇▇; and
n. Spokane.
3. Any territories in which Licensor or any of its Affiliates
owns a substantial equity investment determined on a basis
consistent with the determination of substantial investment
for purposes of expansion of the Fixed Wireless
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Footprint in a cable facility as of the Distribution Date, but
only to the extent of the service franchise in such
territories. If Licensor or its Affiliates should sell such an
equity investment in a particular territory, such territory
shall thereafter be deemed excluded from the term "Broadband
Exclusive Territories" unless:
a. the territory is otherwise a "Broadband Exclusive
Territory" under clauses 1 or 2 of this definition;
or
b. In exchange for its sale of such equity investment,
Licensor or any of its Affiliates receives cable
subscribers in a portion of such territory. In such
event, the service franchise area of such portion
received by Licensor or its Affiliates shall remain a
territory included in the term "Broadband Exclusive
Territories".
"CHANGE OF CONTROL": As set forth in the Separation and Distribution
Agreement.
"CO-MARKETING": The marketing, promotion, advertising, offering, or
sale of one Person's goods or services with another Person's goods or services.
"CORPORATE ACCOUNTS": Persons routinely served by an account executive.
"DEDICATED WIRELESS DEVICES": Bi-directional cellular telecommunication
devices that use Mobile Wireless Services as their sole mode of communication
with other devices (other than a personal computer for purposes of synchronizing
a calendar or address book) and users.
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"DEDICATED WIRELESS PORTALS": Portals that are used solely for, and
accessed solely through, Mobile Wireless Services.
"DISTRIBUTION DATE": As defined in the Separation and Distribution
Agreement.
"DMA": Designated marketing area, as determined by ▇▇▇▇▇▇▇ Media
Research and published in its ▇▇▇▇▇▇▇ Station Index Directory and ▇▇▇▇▇▇▇
Station Index US Television Household Estimates.
"ENFORCEMENT ACTION": As defined in Section 3.1c of this Agreement.
"ENFORCEMENT BUDGET": As defined in Section 3.1c of this Agreement.
"FCC": The Federal Communications Commission and any successor
governmental authority.
"FIXED WIRELESS FOOTPRINT": The following territories: In Texas:
Dallas/Ft.Worth, Houston, ▇▇▇▇▇▇▇▇, ▇▇▇▇▇-College Station, and Victoria; In
California: San Diego, Los Angeles, Santa ▇▇▇▇▇▇▇, and San ▇▇▇▇ Obispo; and in
Anchorage, Oklahoma City, Las Vegas, Tulsa, and Kansas City. If Licensee should
make a substantial investment determined on a basis consistent with the
determination of substantial investment for purposes of the definition of the
Broadband Exclusive Territory to offer Small Business Fixed Wireless Services in
a new territory, Licensee shall give Licensor notice thereof and such new
territory shall be deemed included in the Fixed Wireless Footprint unless
otherwise prohibited by this Agreement.
"GUIDELINES": As defined in Section 7.2 of this Agreement.
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"HIGH SPEED INTERNET ACCESS SERVICES": The provision of Internet
service at a digital signal rate of 386 kilobits per second or above, with a
persistent return path.
"IN BUILDING WIRELESS SERVICE": The provision of a service to a
business customer operating its own private network to enable that business
customer to provide telecommunications within a building, campus or park that is
managed by that business customer (such management being of the building, campus
or park in general and not limited to merely the management of only
telecommunication services), using wireless technology, such as that currently
used by Licensee under the "AT&T Wireless Office Service" ▇▇▇▇.
"INDEMNIFIED PARTY": As defined in Section 11.2 of this Agreement.
"INDEMNIFYING PARTY": As defined in Section 11.2 of this Agreement.
"INSPECTION": As defined in Section 7.3 of this Agreement.
"LICENSED MARKS": shall mean the Licensed Master Marks, Licensed
Ancillary Marks and Licensee Specific Marks as set forth below:
1. Licensed Master Marks:
a. AT&T;
b. AT&T's fanciful representation of a globe design (the
"Globe Design");
c. AT&T and Globe Design composite ▇▇▇▇;
d. AT&T's audible logo ▇▇▇▇;
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e. AT&T Trade Dress; and
f. Domain names listed on Schedule 16.
2. Licensed Ancillary Marks:
The Marks listed in Schedule 11 of this Agreement.
3. Licensee Specific Marks:
The Marks listed in Schedule 12 of this Agreement.
"LICENSED SERVICES": The following services:
1. Mobile Wireless Services;
2. Residential Fixed Wireless Services;
3. Small Business Fixed Wireless Services;
4. Additional Mobile Wireless Services;
5. Aircraft to Ground Services;
6. Ancillary Wireless Services;
7. In Building Wireless Service.
"LICENSED TERRITORY": Territory in which Licensee is authorized under
this Agreement to use the Licensed Marks for Licensed Services.
"LICENSEE": As defined in the Preamble to this Agreement.
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"LICENSEE BRAND MAINTENANCE FEE": As defined in Section 3.1 of this
Agreement.
"LICENSEE FEE-APPLICABLE GROSS REVENUE": That portion of Licensee's
Gross Revenue that is derived from products and services in connection with
which Licensee uses any of the Licensed Marks.
"LICENSEE MARKS": The following Marks:
1. The Marks listed in Schedule 13 of this Agreement.
2. All Marks which are adopted and used by Licensee
after the Distribution Date.
"LICENSEE'S GROSS REVENUE": All revenues received by Licensee from the
sale, lease or rental of any and all telecommunications or internet related
products or services, whether or not such products or services use the Licensed
Marks, including revenues received from any co-branding activities and
advertising revenues received by Licensee in connection with Licensee's
provision of any and all telecommunications or internet related products or
services.
"LOCAL TELEPHONY SERVICES": The provision to Residential end users and
Small Business Customers of Telephone Exchange Service, as that term is defined
in the Telecommunications Act of 1934, as amended.
"▇▇▇▇": Any name, ▇▇▇▇▇, ▇▇▇▇, trademark, service ▇▇▇▇, sound ▇▇▇▇,
trade dress, trade name, business name, slogan, domain name 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 or
Sublicensees to market, advertise or otherwise offer any Licensed Services under
the Licensed Marks.
"MOBILE WIRELESS SERVICES": A non-private telecommunications service
that provides wide-area communication of information, including voice, data,
video or combinations thereof, over a bi-directional communication path that
extends through the air from a base-station to a mobile-subscriber communication
device, which base-station transmits and receives subscriber-addressed,
communications to and from more than one addressed subscriber and wherein the
communication path is switched from one such base-station to another such
base-station in response to movement of the addressed subscriber's mobile
communication device.
"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, business unit, or other entity.
"PORTALS": An Internet web site that serves as a gateway to the
Internet and that includes one or more of the following features: a search
engine; electronic mail; instant messaging; chat services; or web hosting.
"PREVIOUSLY LICENSED TERRITORIES": When used in connection with a
particular service or product that is expressly licensed pursuant to Article 2
of this Agreement, the term "Previously Licensed Territories" means the
following territories and in accordance with the licensed granted therein:
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a. Canada;
b. The Indian States of Maharashtra and Gujarat;
c. Republic of China (Taiwan); and
d. Mexico,
except that, if all licenses which Licensor has previously granted to any
Person(s) with respect to that particular service or product have terminated or
expired in any of the countries set forth in clauses (a) through (d) above, then
the term "Previously Licensed Territories", when used in connection with that
particular product or service, shall no longer include such country.
"PROMOTIONAL PRODUCTS": Any goods which are used to advertise or
promote any Licensed Services and which are provided free or at a nominal cost,
such as t-shirts, golf balls; pens and the like, but not
1. Communication devices, such as telephones, pagers,
email devices, etc.;
2. Telephone answering devices;
3. Personal digital assistants;
4. Telephone accessories (e.g. handset cords; outlet jacks;
cord detanglers; amplification headsets); or
5. Any other products that, in Licensor's opinion acting in
good faith, are not fairly characterized as being used solely for
advertisement or promotion.
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"QUALITY CONTROL REPRESENTATIVES": Representatives of Licensor
appointed in accordance with Article 7 .
"QUALITY STANDARDS": As defined in Section 7.2 of this Agreement.
"REGULATORY AUTHORITY": Any regulatory, administrative or governmental
entity, authority, agency, commission, tribunal or official, including without
limitation, the FCC and the Export Licensing Office of the U.S. Department of
Commerce.
"RESELLERS": Any Person other than Licensee that sells, distributes or
leases Licensed Services from Licensee.
"RESIDENTIAL": Related to a house, building or other dwelling used
primarily for the living quarters of an individual, family or groups of
individuals, including those multiple dwelling units for which all of the
end-user consumer residents of the multiple dwelling unit directly pay the
telecommunications carrier to obtain their telecommunication services.
"RESIDENTIAL FIXED WIRELESS SERVICES": A non-private
telecommunications service that provides communication of information (including
voice, data, video or combinations thereof) over a substantially-symmetric,
bi-directional communication path that extends through the air from a
base-station located on network premises to a communication device located on a
Residential subscriber premises, which base-station transmits and receives
Residential-subscriber addressed communications, including at least one
dedicated substantially-symmetric, bi-directional voice-channel, to and from
more than one addressed Residential-subscriber and wherein the communication
path is not switched from one base-station located on network premises to
another such
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base station in response to movement of the Residential-subscriber communication
device; provided, however, that such services shall be considered Residential
Fixed Wireless Services only if the end-user consumer resident directly pays
Licensee for the provision of such services. For purposes of clarification of
the term Residential Fixed Wireless Services, and without expanding that term,
the term bi-directional voice-channel includes a frequency-duplex, multi-tone,
time-division-multiple-access channel such as that utilized currently by
Licensee in its fixed wireless service.
"SEPARATION AND DISTRIBUTION AGREEMENT": That certain SEPARATION AND
DISTRIBUTION AGREEMENT, dated as of the date of this Agreement, by and between
Licensor and Licensee.
"SERVICE BUNDLES": A single contract offered or supplied to a Person
for multiple services or systems integration contracts.
"SIGNIFICANT BREACH BY LICENSEE": As defined in Section 6.2 of this
Agreement.
"SMALL BUSINESS CUSTOMER": A commercial telecommunications customer
having no more than ten (10) voice grade communications lines for its business
location, provided that, a commercial telecommunications customer shall not be
deemed a "Small Business Customer" if:
1. The commercial telecommunications customer has more than three
(3) business locations; or
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2. The commercial telecommunications customer has a central
purchasing department responsible for purchasing services for
multiple business locations.
"SMALL BUSINESS FIXED WIRELESS SERVICES": A telecommunications service
that provides communication of information (including voice, data, video or
combinations thereof) to and from a Small Business Customer over a
substantially-symmetric, bi-directional communication path that extends through
the air from a base-station located on network premises to a communication
device located on a Small Business Customer-subscriber premises, which
base-station transmits and receives Small Business Customer-subscriber addressed
communications, including at least one dedicated substantially-symmetric,
bi-directional voice-channel, to and from more than one addressed Small Business
Customer-subscriber and wherein the communication path is not switched from one
base-station located on network premises to another such base station in
response to movement of the Small Business Customer-subscriber communication
device. For purposes of clarification of the term Small Business Fixed Wireless
Services, and without expanding that term, the term bi-directional voice-channel
includes a frequency-duplex, multi-tone, time-division-multiple-access channel
such as that utilized currently by Licensee in its fixed wireless service.
"SUBLICENSEE": As defined in Section 5.1 of this Agreement.
"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.
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"TELEMATICS SERVICE": A service that permits a subscriber to control
the operation of a device by sending data using Licensed Services.
"TELEMETRY SERVICE": A service that permits a subscriber to obtain
information concerning the status of a device by receiving data using Licensed
Services.
"TERM": The Initial Term, the First Renewal Term and any other renewal
terms (as such phrases are defined in Section 6.1 of this Agreement).
"TOTAL REVENUE": All revenues received by Licensor and all of its
licensees from (i) the sale, lease or rental of any and all telecommunications
or Internet products or services, whether or not such products or services use
the Licensed Marks and (ii) any Co-Branding activities.
"TRADE DRESS": The general image or appearance of the marketing of
services performed under the Licensed Marks, including without limitation, the
colors, designs, sizing configurations, publication formats and the like as set
forth in Schedule 4 attached hereto and as such trade dress may be modified or
replaced pursuant to Section 10.2 of this Agreement, and such other trade dress
as may be added thereto or substituted therefor in accordance with Section 10.2.
"VALUE ADDED RESELLER": Any Person that combines Licensed Services with
additional software, services or features and then sells, distributes or leases
such combinations directly to end users.
"WIRELESS RELATED DEVICES": Devices other than Dedicated Wireless
Devices that are used for the provision of Licensed Services.
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"WIRELESS RELATED PORTALS": Portals other than Dedicated Wireless
Portals that are used in connection with, and accessed through, Licensed
Services.
2. GRANT OF LICENSE
Subject to the terms and conditions of this Agreement, Licensor makes
the following grants:
2.1 Mobile Wireless Services. Licensor hereby grants to Licensee a
non-transferable limited right and license to use the Licensed Marks from and
after the Distribution Date throughout the Term to provide Mobile Wireless
Services. This license shall be a worldwide, exclusive license; provided,
however, that it shall not cover the Previously Licensed Territories.
2.2 Residential Fixed Wireless Services. Licensor hereby grants to
Licensee a non-transferable, limited right and license to use the Licensed Marks
from and after the Distribution Date throughout the Term to provide Local
Telephony and High Speed Internet Access Services through Residential Fixed
Wireless Services. This license shall be a worldwide, non-exclusive license,
provided, however, that it shall not cover any of the Broadband Exclusive
Territories.
a. Within the then current Fixed Wireless Footprint, Licensor
agrees not to grant a "Sham Trademark License" to a third
party to use the Licensed Marks to provide Local Telephony and
High Speed Internet Access Services through a service that
directly competes with Residential Fixed Wireless Services.
For purposes of the preceding sentence the term "Sham
Trademark License" shall
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mean a trademark license that is entered into solely for
licensing purposes, as contrasted with other business
purposes, and shall exclude any trademark license entered into
with any
i. third party (1) in which Licensor, or any present or
future Affiliate of Licensor, owns an equity
interest; or (2) for a service in connection with
which Licensor, or any present of future Affiliate of
Licensor, provides a core component (such as, for
example, long distance) of such service; or (3) for a
service for which Licensor, or any present of future
Affiliate of Licensor, has a direct relationship with
the end-user customer for at least part of the
service; and
ii. present or future Affiliate of Licensor.
For avoidance of doubt, the parties intend that reference to a "present
or future Affiliate of Licensor" may, after the Distribution Date, include
Persons who are then no longer Affiliates of Licensor.
2.3 Small Business Fixed Wireless Services.
a. Reservation of Right to Future License. For a period of two
(2) years following the Distribution Date, Licensee reserves
the right to obtain the non-exclusive license set forth in
Sections 2.3 (b) through (e) if it enters into a mutually
agreed distribution agreement with Licensor's business markets
division ("ABS") under which ABS is allowed to resell, as part
of a bundle of services offered by ABS.
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Licensee's fixed wireless services to its customers that are
within any market footprint in which Licensee offers, and for
so long as Licensee continues to offer, fixed wireless
services. As part of the foregoing, the price offered by
Licensee to ABS shall in no case be higher than the retail
price which Licensee charges its own Small Business Fixed
Wireless Services customers (or, if, and so long as, it has no
such Customers, the price it intends to charge such
customers), other than for price adjustments to account for
any incremental costs Licensee reasonably incurs in providing
the services to ABS in excess of the costs it typically incurs
in providing Small Business Fixed Wireless Services to its own
customers, less avoided costs Licensee saves in marketing,
sales or other expenses. As Licensee's margins on fixed
wireless improve, the agreement will offer Licensor a
commercially reasonable wholesale discount. Licensor shall not
unreasonably decline to enter into such an agreement on
reasonable terms and conditions. If no agreement is reached
within the above two (2) year period, Licensee shall not have
any right to the non-exclusive license set forth in Sections
2.3 (b) through (e) and shall not use the Licensed Marks on
Small Business Fixed Wireless Services.
b. Provided Licensee enters into such an agreement as set forth
in Section 2.3 (a), Licensor shall, subject to Sections 2.3
(c) and 2.3 (d) below, grant to Licensee a non-transferable,
limited right and license to use the Licensed Marks from and
after the Distribution
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Date throughout the Term to provide Local Telephony and High
Speed Internet Access Services through Small Business Fixed
Wireless Services. This license shall be a non-exclusive
license. This License shall not cover (i) any territory
outside the Fixed Wireless Footprint or (ii) the Previously
Licensed Territories.
c. Licensee may not use the Licensed Marks to offer, solicit or
provide Local Telephony or High Speed Internet Access Services
through Small Business Fixed Wireless Services to any existing
Small Business Customer of ABS.
d. Any license granted with respect to Small Business Fixed
Wireless Services shall not be effective until such time as
Licensee meets Licensor's Quality Standards, as determined in
Licensor's sole discretion consistent with its current
practices, for Small Business Fixed Wireless Services.
Thereafter, any license granted shall only remain in effect
during the Term for so long as Licensee fully complies with
such Quality Standards and the agreement described in Section
2.3 (a).
e. Expansion Beyond 10 voice grade lines. If, after the first
year that Licensee shall offer Small Business Fixed Wireless
Service to a particular Small Business Customer, that Customer
shall expand its business to include more than ten (10) voice
grade communication lines, then that Small Business Customer
shall, notwithstanding the definition of "Small Business
Customer", remain a "Small Business
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Customer" so long as it does not have more than twelve (12)
voice grade communication lines.
2.4 Promotional Products. Licensor hereby grants to Licensee a
non-transferable limited right and license from and after the Distribution Date
through the Term to:
a. use Licensee Specific Marks on Promotional Products. This
license shall be a worldwide, exclusive license, provided,
however, that it shall be a non-exclusive license in the
following countries:
Antigua and Barbuda, Argentina, Bahamas, Barbados,
Bolivia, Brazil, Chile, Columbia, Dominica, Dominican
Republic, Ecuador, Grenada, Guyana, Haiti, Jamaica,
Panama, Paraguay, Peru, Saint Lucia, Saint ▇▇▇▇▇▇▇,
and the Grenadines, Suriname, St. Kitts and Nevis,
Trinidad and Tobago and Uruguay.
Notwithstanding the preceding sentence, if all licenses which
Licensor has previously granted to any other Person(s) with
respect to Promotional Products as set forth in this Section
2.4a terminate or expire in any of the countries listed above
for which Licensee is acquiring a non-exclusive license, then
Licensee shall automatically receive an exclusive license for
such Promotional Products of the nature set forth in the first
sentence of this Section 2.4a in such country; and
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b. use Licensed Master Marks and Licensed Ancillary Marks for
Promotional Products. This license shall be a worldwide,
non-exclusive license, provided, however, that it shall not cover
the Previously Licensed Territories.
2.5 Wireless Related Devices and Dedicated Wireless Devices.
a. Licensor hereby grants to Licensee a non-transferable, limited
right and license to use the Licensed Marks from and after the
Distribution Date throughout the Term for Wireless Related
Devices. This license shall be a worldwide, non-exclusive
license.
b. Licensor hereby grants to Licensee a non-transferable, limited
right and license to use the Licensed Marks from and after the
Distribution Date throughout the Term for Dedicated Wireless
Devices. This license shall be a worldwide, exclusive license.
2.6 Ancillary Wireless Services. Licensor hereby grants to Licensee a
non-transferable, limited right and license from and after the Distribution Date
throughout the Term to use the Licensed Marks for Ancillary Wireless Services.
This license shall be a worldwide, exclusive license, provided, however, that it
shall not cover the Previously Licensed Territories.
2.7 Wireless Related Portals and Dedicated Wireless Portals.
a. Licensor hereby grants to Licensee a non-transferable, limited
right and license from and after the Distribution Date throughout
the Term to use Licensed Marks on Wireless Related Portals. This
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license shall be a worldwide, non-exclusive license, provided,
however, that it shall not cover the Previously Licensed
Territories.
b. Licensor hereby grants to Licensee a non-transferable, limited
right and license from and after the Distribution Date throughout
the Term to use Licensed Marks on Dedicated Wireless Portals.
This license shall be a worldwide, exclusive license, provided,
however, that it shall not cover the Previously Licensed
Territories.
2.8 Content, Equipment and Software. Licensor hereby grants to Licensee a
non-transferable, limited right and license from and after the Distribution Date
throughout the Term to use the Licensed Marks on content, equipment and software
used in connection with the provision of Licensed Services. This license shall
be a worldwide non-exclusive license, provided, however, that it shall not cover
the Previously Licensed Territories.
2.9 Telematics Service and Telemetry Service. Licensor hereby grants to
Licensee a non-transferable, limited right and license from and after the
Distribution Date throughout the Term to use the Licensed Marks on Telematics
Service and Telemetry Service. This license shall be a worldwide, non-exclusive
license, provided, however, that it shall not cover the Previously Licensed
Territories, or the Broadband Exclusive Territories.
2.10 In Building Wireless Service. Licensor hereby grants to Licensee a
non-transferable, limited right and license from and after the Distribution Date
throughout the Term to use the Licensed Marks on In Building Wireless Service.
This license shall be
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a worldwide, non-exclusive license, provided, however, that it shall not cover
the Previously Licensed Territories.
2.11 Additional Mobile Wireless Services. Licensor hereby grants to
Licensee a non-transferable, limited right and license to use the Licensed Marks
from and after the Distribution Date throughout the Term for Additional Mobile
Wireless Services. This license shall be a worldwide, non-exclusive license,
provided, however, that it shall not cover the Previously Licensed Territories.
2.12 Aircraft to Ground Service. Licensor hereby grants to Licensee a
non-transferable limited right and license to use the Licensed Marks from and
after the Distribution Date throughout the Term to provide Aircraft to Ground
Service. This license shall be a worldwide, exclusive license, provided,
however, that it shall not cover the Previously Licensed Territories.
2.13 Request for License. If Licensee wishes to use the Licensed Marks on
any services other than Licensed Services or on any goods not expressly granted
by this Agreement, it may request a grant of such license from Licensor. Any
future service described by clause (ii) of the definition of "Additional Mobile
Wireless Services" shall, unless otherwise agreed, become Additional Mobile
Wireless Services when Licensor and Licensee agree to add that future service to
this Agreement. Licensor shall not unreasonably deny a request by Licensee to
add to this Agreement a future service that would be an Additional Mobile
Wireless Service, provided that, the future service meets Quality Standards for
that service as determined by Licensor, which standards are established by
Licensor consistent with Licensor's prior practices for setting quality
standards.
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If the future service that Licensee would like to add to this Agreement is
of virtually the same character and nature as Mobile Wireless Services, In
Building Wireless Service, Residential Fixed Wireless Services, or Small
Business Fixed Wireless Services, Licensor shall not unreasonably deny the
request and there shall be a presumption that the Quality Standards applicable
to the relevant service (i.e., Mobile Wireless Services, In Building Wireless
Service, Residential Fixed Wireless Services, or Small Business Fixed Wireless
Services) shall apply to that future service at least when the service is first
introduced.
2.14 Dedicated Wireless Portals. Licensor and Licensee agree that any
Portals identified in Schedule 21 shall be treated as if they are Dedicated
Wireless Portals, that Schedule 21 is not intended to represent a complete list
of current or future Dedicated Wireless Portals, and that the inclusion or
exclusion of any specific Portal in or from Schedule 21 shall not prejudice any
future determination of whether any Portal not listed in Schedule 21 is or is
not a Dedicated Wireless Portal. Licensee represents to Licensor that the Portal
listed in Schedule 21 is only used through Mobile Wireless Services. If Licensee
should desire to add a new Portal to that list, which new Portal does not
satisfy the definition of Dedicated Wireless Portals, it shall make its request
by written notice to Licensor. Unless granted by Licensor in writing within
sixty (60) days after its receipt of the request, the request shall be deemed
denied. However, if such new Portal is of virtually the same character and
nature as a Portal already included on the list and the Portal is used solely
through Mobile Wireless Services, then the request cannot be denied unless
Licensor provides to Licensee a detailed reason for denying the request and
Licensee is afforded the opportunity to appeal the denial to the Chief
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Executive Officer of Licensor whose determination shall be final and binding on
the parties.
2.15 Wireless Related Devices (a) and Dedicated Wireless Devices (b).
a. Wireless Related Devices. With respect to any end user
device that is not a Dedicated Wireless Devices as the term
is defined in Section 1 of this Agreement (without taking
into account Section 2.15b), but can be used by a
subscriber to obtain Mobile Wireless Services and any other
services, Licensor covenants that, if it brands such
devices with the Licensed Master Marks, it will do so in a
way that the brand does not appear on the device when the
device is used by the subscriber for Mobile Wireless
Services.
b. Dedicated Wireless Devices. Licensor and Licensee agree
that the specific devices identified by model number in
Schedule 18 shall be treated as if they are Dedicated
Wireless Devices, that Schedule 18 is not intended to
represent a complete list of current or future Dedicated
Wireless Devices, and that the inclusion or exclusion of
any specific device or type of device in or from Schedule
18 shall not prejudice any future determination of whether
any device not listed in Schedule 18 is or is not a
Dedicated Wireless Device.
2.16 Reservation of Rights. Except as expressly licensed in this Article
2, Licensee shall have no rights or license to the use any of the Licensed Marks
in connection with any products or services. To the extent Licensee has been
granted "exclusive" rights pursuant to the provisions of this Article 2 such
"exclusive" rights
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solely relate to the use of the Licensed Marks in connection with the provision
of the specified Licensed Service or product in the specified Licensed Territory
during the Term. Except to the extent Licensee has been granted "exclusive"
rights pursuant to the provisions of this Article 2, Licensor retains the sole
and exclusive right to use and license others to use any Marks for any purpose
whatsoever. Licensee covenants and agrees that it will not use any of the
Licensed Marks in connection with any products or services that are not
expressly licensed pursuant to the provisions of this Article 2 and any such
unlicensed use by Licensee of the Licensed ▇▇▇▇ shall be deemed a "Significant
Breach by Licensee" under Section 6.2 of this Agreement.
3. PAYMENTS
3.1 Brand Maintenance Fee.
a. For so long as Licensee uses the Licensed Marks, it shall pay
Licensor an annual brand maintenance fee for the administration,
protection and promotion of the Licensed Marks (the "Licensee
Brand Maintenance Fee"). The Licensee Brand Maintenance Fee will
be separately held and used only for the activities set forth in
this Section 3.1a. The Licensee Brand Maintenance Fee is set
forth in Schedule 17.
b. Licensee Brand Maintenance Fees shall be paid on a quarterly
basis. Such fees will be due within ten (10) days after the end
of each calendar quarter and will be based upon Licensee's
Fee-Applicable Gross Revenue for the immediately preceding year.
The actual Licensee Brand Maintenance Fee for each license year
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will be calculated within 120 days after the end of such year and
a payment equal to the difference between the actual Licensee
Brand Maintenance Fee and the amount paid during such year, will
be made by Licensee to Licensor or Licensor to Licensee, as the
case may be, within three business days after such calculation is
completed. Notwithstanding the foregoing, with respect to 2001,
Licensee shall pay to Licensor the Licensee Brand Maintenance Fee
as calculated in paragraph 1 of Schedule 17 using the 2001
projections of Licensee's Fee-Applicable Gross Revenue and
projections of Total Revenue, such amount to be paid on a pro
rata basis within ten days after the end of each calendar quarter
as an estimate of the Licensee Brand Maintenance Fee for such
year. The actual Licensee Brand Maintenance Fee for 2001 will be
calculated within 120 days after the end of such year, and a
payment equal to the difference between the actual Licensee Brand
Maintenance Fee (as calculated in accordance with paragraph 1 of
Schedule 17) and the amount paid during such year will be made by
Licensee to Licensor or Licensor to Licensee, as the case may be,
within three business days of such calculation.
c. With respect to actions or proceedings undertaken to enforce
rights in the Licensed Marks, including infringement actions,
opposition and cancellation proceedings, and Internet domain name
proceedings (each an "Enforcement Action"), Licensee shall be
responsible for fees and expenses, including attorneys fees
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(collectively, "Enforcement Costs"), incurred in connection
with Enforcement Actions as follows:
i. If Licensee is the only AT&T Licensee requesting that a
particular Enforcement Action be undertaken, then
Licensee shall be solely responsible for all Enforcement
Costs for that Enforcement Action without contribution
from any other AT&T Licensees or the Enforcement Budget;
ii. If another AT&T Licensee (other than Licensee) is the
only AT&T Licensee using the Licensed ▇▇▇▇ that forms
the subject matter of a particular Enforcement Action
or another AT&T Licensee (other than Licensee) is the
only AT&T Licensee requesting that a particular
Enforcement Action be undertaken, then that AT&T
Licensee shall be solely responsible for all
Enforcement Costs for that Enforcement Action without
contribution from Licensee, other AT&T Licensees or
the Enforcement Budget;
iii. For all Enforcement Actions other than those described
in clause (i) and (ii) above, their Enforcement Costs
would be funded through the Enforcement Budget and if
such Enforcement Costs exceed the Enforcement Budget in
the relevant year, then Licensee shall be responsible
for its pro rata share of such excess Enforcement Costs
based on its Licensee Fee-Applicable Gross Revenue and
the Licensee
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Fee-Applicable Gross Revenue of all other AT&T Licensees and
business units of AT&T.
All amounts payable by Licensee under this subsection shall be
paid to Licensor promptly after request is made therefor. If, in
an Enforcement Action, a counterclaim is asserted for which
Licensor indemnifies Licensee under Section 11.1a., Licensee
shall not be responsible for any fees and expenses, including
attorneys fees, incurred in connection with defending against
that counterclaim, but shall remain responsible, as provided
above, for the Enforcement Costs. The Licensee Brand Maintenance
Fee and brand maintenance fees collected from other AT&T
Licensees and business units of AT&T shall include an amount
budgeted each year for Enforcement Costs that is reasonable in
light of Licensor's historical costs and its future projections
(the "Enforcement Budget").
3.2 Referral Revenues. Except to the extent authorized by the Agency
Agreement between the parties, Licensor shall have no rights to retain any fees
paid to Licensor for Licensor's referrals to Licensee which result from
Licensor's advertising click-throughs to Licensee. Except as provided in the
Agency Agreement between the parties, such fees, if any, shall be either
remitted to Licensee or credited toward the Licensee Brand Maintenance Fee.
3.3 Fees During 2001. Notwithstanding the foregoing, the Licensee Brand
Maintenance Fee shall not begin to accrue until the Distribution Date. Prior to
the
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Distribution Date, Licensee shall be obligated to continue to honor its
allocated corporate commitment for brand maintenance. If the Distribution Date
occurs in the calendar year 2001, the fee due Licensor under his Agreement for
each calendar quarter during the remainder of the 2001 calendar year shall be
the Licensee Brand Maintenance Fee, unless that fee exceeds what License would
have paid for its allocated corporate commitment, in which case Licensee shall,
for that calendar quarter, receive a credit equal to the difference between the
Licensee Brand Maintenance Fee and its 2001 allocated corporate commitment.
4. RESTRICTIONS ON USE OF LICENSED MARKS
4.1 Resellers. Licensee may permit Resellers and Value Added Resellers to
use the Licensed Marks solely in connection with Licensed Services obtained from
Licensee; provided, however, that any such use shall be in accordance with the
Brand Association Guidelines set forth in Schedule 4 and such use shall only be
in same fields as Licensee. For avoidance of doubt, no Reseller or Value Added
Reseller may use any Licensed Marks in any manner that would violate this
Agreement if performed by Licensee.
4.2 Use of Licensed Marks with Licensee Marks. Licensee may only use
Licensee Marks together with Licensed Marks to the extent such use complies with
the terms of this Agreement, including without limitation, the Quality Standards
set forth in Article 7.
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4.3 Bundling.
a. Licensee may use Licensed Marks in connection with Service
Bundles on a non-exclusive basis if:
i. The Service Bundle is predominantly built around a
Licensed Service; and
ii. Licensor or the AT&T Licensee, if any, that has rights
to use the Licensed Marks on any element included in the
Service Bundle is first given the right to offer to
Licensee such element as part of the Service Bundle and,
if the parties cannot agree on terms, then Licensee may
arrange for any other Person to provide such element.
b. If a Person other than Licensor or an AT&T Licensee offers an
element as part of a Service Bundle, provided that Licensee
shall have complied with subsection a.ii above, then
i. if the Service Bundle is offered to Corporate
Accounts then Licensee must identify the source of
origin of such element to the Account Executive; and
ii. if the Service Bundle is offered to consumer
end-users or business end-users other than Corporate
Accounts, then, Licensee shall prominently indicate
in any mass advertising that such element is not
provided by Licensor or an AT&T Licensee, shall not
identify the source of origin of such
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element in mass advertising, but shall identify the source of
origin of such element at the point of sale.
c. If such element is not a service offered by Licensor or an AT&T
Licensee then Licensee can identify the source of origin of such
element to the party to whom the Service Bundle is being offered.
d. Licensee shall comply with Licensor's Co-Branding Guidelines, as
in effect from time to time and as currently set for in Schedule
4.
4.4 Co-Marketing.
a. Licensee may not use the Licensed Marks in Co-Marketing with
Persons that compete with Licensor or other licensees of Licensor
in their respective Fields of Use.
b. Licensee shall comply with Licensor's Co-Marketing Guidelines, as
in effect from time to time and as currently set forth in
Schedule 4.
4.5 General Purpose Credit Cards.
a. Licensee may not permit Licensed Marks to be used on or in
connection with any consumer general credit card, subject to
provisions of the Exclusivity Guidelines in the Joint Marketing
and Co-Branding Agreement between Licensor and Citicorp dated
April 2, 1998.
4.6 Dealers. Licensee may grant Authorized Dealers limited permission to
use the Licensed Marks in connection with the provision of Licensed Services
permitted
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to be provided by such Authorized Dealers hereunder, subject to Licensor's Usage
Guidelines set forth in Schedule 4 of this Agreement.
5. REQUESTS TO LICENSE THE BRAND.
5.1 Request to Licensor to Grant Brand License. Licensee may, from time to
time during the Term, request that Licensor grant a license to a third party, or
allow Licensee to grant a sublicense to a third party (a "Sublicensee") to use
the Licensed Marks for Licensed Services. Any such request shall be made in
writing to Licensor's Chief Intellectual Property Counsel, shall specify the
identity of the party, the terms that Licensee requests would apply to such
license or sublicense and the strategic reason for such license or sublicense.
5.2 Approval Process. Any request made under this Section 5 will be
subject to Licensor's approval, which shall not be unreasonably denied, and each
request shall be responded to within fifteen (15) days of the date of such
request. If the request is denied, Licensor shall set forth the reasons for
denial. Licensee may appeal any such denial to the Chief Executive Officer of
Licensor whose determination shall be final and binding on the parties.
5.3 Royalties. Licensor may charge a commercially reasonable royalty for
any such license or sublicense. However, Licensor shall consult with Licensee to
determine the most appropriate way to obtain value for the license or
sublicense, considering all circumstances of the proposed arrangement.
5.4 Network Membership License Agreements. Licensor shall, for the Term,
continue to abide by the terms and conditions of the current Network Membership
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License Agreements identified on Schedule 14 of this Agreement (the "Network
Membership License Agreements"). If, during the Term of this Agreement, Licensee
shall desire that Licensor extend to a third party, which third party has the
same type of affiliations with Licensee as do the Persons who are parties to the
Network Membership License Agreements, the same rights as provided by the
Network Membership License Agreements, then Licensee shall, by written notice,
request Licensor to grant such rights, which request shall not be denied.
5.5 No Other Rights. Except as otherwise provided in this Section 5,
Licensee shall have no right to sublicense the Licensed Marks.
6. TERM AND TERMINATION
6.1 Term.
a. Subject to the provisions for early termination of this
Agreement as set forth herein, the initial term of this Agreement
shall be five (5) years commencing on the Distribution Date (the
"Initial Term"). Thereafter, provided that none of Licensee, its
Authorized Dealers or Sublicensees, has failed to comply with any
Quality Standards in any material respect, and none of Licensee,
its Authorized Dealers or Sublicensees is otherwise in default
under any provision of this Agreement, this Agreement shall
automatically be renewed for an additional term of five (5) years
(the "First Renewal Term"), unless Licensee provides Licensor
with notice of non-renewal prior to ninety days before the end of
the Initial Term.
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b. At any time during the Term, Licensee may provide Licensor with
notice of termination and this Agreement shall terminate
effective twelve (12) months after Licensor's receipt of such
notice of termination, such twelve month period being Licensee's
transition period under Section 6.4a.
c. This Agreement may be renewed beyond the First Renewal Term upon
the mutual consent of the parties.
6.2 Termination. Licensor shall have the right, subject to Section 6.3
below, to terminate this Agreement without prejudice to any rights which it may
have, whether pursuant to this Agreement, or in law or equity or otherwise, upon
the occurrence 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 one or more of the following events:
a. Any of Licensee, an Authorized Dealer or Sublicensee uses any
▇▇▇▇ (including the Licensed Marks) contrary to the provisions of
this Agreement, which use continues for more than thirty (30)
days after notice thereof has been given to Licensee, except as
may otherwise be provided in Section 8.1; or
b. Licensee fails to give access to the facilities and/or
performance data and representative samples of Marketing
Materials to Licensor's Quality Control Representative for the
purposes permitted hereunder pursuant to the provisions of
Section 7.3 hereof; or
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c. Licensee fails to maintain the Quality Standards and other
confidential and proprietary information furnished under this
Agreement in confidence as required by Section 19, or fails to
restrict the transmission of information, products and
commodities as required by Section 19; or
d. Licensee fails to comply with any laws, regulations or industry
standards, or any governmental agency, Regulatory Authority or
other body, office or official vested with appropriate authority
finds that the services or products being offered under the
Licensed Marks are being provided in contravention of applicable
laws, regulations or standards; or
e. Licensee fails to pay the Licensee Brand Maintenance Fee
pursuant to Section 3.1 on the date due; or
f. Licensee fails to deliver to Licensor or to maintain in full
force and effect the insurance referred to in Section 11.3
hereof; or
g. Licensee shall be unable to pay its debts when due, or shall
file for Bankruptcy; or
h. A Change of Control shall have occurred with respect to Licensee.
In the event that a Change of Control occurs with respect to
Licensee, Licensee shall give Licensor prompt notice of such
Change of Control; or
i. Any material breach of this Agreement by Licensee which breach
continues for more than thirty (30) days after notice thereof has
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been given to Licensee, except as may otherwise be provided in
Section 8.1; or
j. Less than fifty percent (50%) of Licensee's Gross Revenues during
any year are derived from goods or services bearing the Licensed
Marks; or
k. One or more of the agreements between Licensee and Licensor that
are identified in Schedule 20 are terminated as a result of
Licensee's breach thereof; or, as part of any settlement of such
a breach Licensor and Licensee agree that this Agreement shall be
terminated.
6.3 Notice of Termination. In the event any "Significant Breach by
Licensee" occurs, Licensor may give notice of termination in writing to
Licensee, whereupon this Agreement shall immediately terminate, and all
payments then due from Licensee hereunder shall then be promptly paid and no
portion of any prior payments shall be repayable to Licensee. If a Change of
Control shall have occurred with respect to Licensor, Licensee may give notice
of termination in writing to Licensor, whereupon this Agreement shall
immediately terminate, and all payments then due from Licensee hereunder shall
then be promptly paid and no portion of any prior payments shall be repayable
to Licensee.
6.4 Effect of Termination. In the event this Agreement is terminated
pursuant to this Article other than as provided in Section 6.1b (Section 6.4a
below applies to Licensee's notice of voluntary termination under Section
6.1b), or the Agreement expires and is not renewed, Licensee shall immediately
cease use of the Licensed
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Marks upon the effective date of such termination or expiration,
except that Licensee shall have only a non-exclusive right to continue
to use the Licensed Marks for the Use Period (including without
limitation, Licensee's then existing inventory of Marketing Materials
bearing the Licensed Marks) to the extent such use is otherwise in
accordance with the provisions of this Agreement, as such provisions
and the Use Period may be modified by a brand transition plan mutually
agreed upon by Licensor and Licensee acting in good faith. During the
Use Period, Licensor may license the Licensed Marks to any third party
to offer products or services exclusively licensed to Licensee
hereunder, provided that, such license shall only become effective six
(6) months after expiration or termination of this Agreement or such
other period as may be provided by a mutually agreed brand transition
plan. The parties shall act in good faith to negotiate and enter into
the brand transition plan as soon as reasonably practical after
termination or expiration of this Agreement. In the circumstance where
the Agreement expires after its Term (i.e., is not terminated), the
Use Period under the first and second sentence of this Section 6.4 is
one year after the expiration. In the circumstance where the Agreement
is terminated, the Use Period under the first and second sentence of
this Section 6.4 is six months following termination.
a. In the event Licensee provides written notice of termination
under Section 6.1b of this Agreement, Licensee and Licensor, as
soon as reasonably practicable after Licensor's receipt of such
notice, shall negotiate a reasonable brand transition plan that
will concern Licensee's continued use of the Licensed Marks
during the 12 month period immediately following Licensor's
receipt of the notice of termination. During this 12 month
period following Licensor's
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receipt of the notice of termination, which is the "transition
period" for purposes of this Section 6.4a, Licensee may continue
to use the Licensed Marks for Licensed Services in accordance with
the provisions of this Agreement and, as may be modified by the
mutually agreed, brand transition plan, except that, after 6
months following Licensor's receipt of the notice of termination,
Licensee's exclusive rights under this Agreement shall terminate
and thereafter for the remaining term of the transition period
(i.e., the last 6 months of the 12 month period following
Licensor's receipt of the notice of termination) Licensee shall
have only a non-exclusive 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 accordance with the provisions
of this Agreement and, as may be modified by the mutually agreed
brand transition plan. During the entire transition period,
Licensor may license the Licensed Marks to any third party to
offer products or services exclusively licensed to Licensee
hereunder, provided that, such license shall only become effective
upon the expiration of such transition period. Upon expiration of
the transition period (i.e., 12 months after Licensor's receipt of
notice of termination under Section 6.1b), Licensee's rights under
this Agreement shall terminate (and Section 6.4 above shall not be
applicable to, in any way, extend Licensee's rights to
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use the Licensed Marks) and Licensee shall cease all use of the
Licensed Marks.
6.5 Other Rights Unaffected. It is understood and agreed that termination
of this Agreement by Licensor on any ground shall be without prejudice to any
other remedies at law or equity or otherwise which Licensor may have.
7. QUALITY CONTROL
7.1 General. Licensee acknowledges that the services and activities
covered by this Agreement must be of sufficiently high quality as to provide
maximum enhancement to and protection of the Licensed Marks and the goodwill
they symbolize. Licensee further acknowledges that the maintenance of high
quality services is of the essence in this Agreement, as is the use of the
Licensed Marks in connection therewith. In order to preserve the inherent value
of the Licensed Marks, Licensee agrees to use its best efforts to ensure that
the services and activities to be marketed, promoted, offered and provided by
Licensee under the Licensed Marks pursuant to this Agreement shall be of a
quality and nature comparable to the products, services and activities provided
by Licensor. Licensee further agrees 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 goodwill and will use the Licensed Marks in
ways which will so enhance Licensor's business reputation and goodwill.
7.2 Quality Standards. Licensee agrees to comply and maintain compliance
with the Quality Standards, specifications and rights of approval of Licensor
with respect to any and all usage of the Licensed Marks on or in relation to
the services and products
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licensed hereunder throughout the Term. To that end, Licensee shall use
commercially reasonable efforts to comply with the following standards,
specifications and rights of approval (the "Guidelines"):
a. Direct Measures of Quality (DMOQs), as set forth in Schedule 1.
b. Guidelines For Development of Privacy Policy, as set forth in
Schedule 2
c. Brand Association Guidelines, as set forth in Schedule 3.
d. AT&T Business Unit/Licensee Signature, AT&T Corporate Signature
and Co-Branding Marks and Standards, as set forth in Schedule 4.
e. Marketing, Advertising and Corporate Communications Identity
Systems, as set forth in Schedule 5.
f. Schedule 6, Retail Packaging Trade Dress and Store Environments,
as set forth in Schedule 6.
g. Web Site Identity Guidelines, as set forth in Schedule 7.
h. Customer Experience Guidelines, as set forth in Schedule 8.
i. AT&T Naming Policy For Products, Services, Offers, URLs and Sub
Domain Names, as set forth in Schedule 9.
It is further understood that in addition to the above Guidelines, the quality
control standards being adhered to in connection with this Agreement include
compliance with all federal, state, and local laws and regulations, and
together with the Guidelines, shall be considered the "Quality Standards."
Licensee acknowledges that the Quality
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Standards may be modified from time to time as may be necessary to continue to
protect and preserve the image, reputation and goodwill attached to the
Licensed Marks.
7.3 Quality Service Reviews; Right of Inspection.
a. In order to verify Licensee's compliance with the Quality
Standards, 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 and Sublicensees, 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 during the Term 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.
b. In connection with such Inspection, Licensee agrees to collect,
maintain and furnish to the Quality Control Representatives: (i)
all
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performance data relating to the services and products licensed
hereunder 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 services and
products licensed hereunder 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 services and products licensed
hereunder with the Quality Standards. All performance data
relating to technical performance Direct Measures of Quality
shall be compiled on a monthly basis and all performance data
relating to other Quality Standards shall be compiled and
delivered to Licensor on a quarterly basis. Any such data
provided to Licensor shall be treated confidentially in
accordance with Section 19.
c. 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,
and otherwise as may be reasonably necessary to verify
Licensee's compliance with the Quality Standards, so long as
such cooperation shall not unreasonably interfere with the
conduct of Licensee's business. If Licensee learns that it is
not complying with the Quality Standards
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in any material respect, it shall notify Licensor, and the
provisions of Article 8 shall apply to such non-compliance.
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 and Sublicensees. Licensor shall have the
right, exercisable in its reasonable discretion, to give Licensee notice
requiring Licensee to terminate any Authorized Dealer or Sublicensee 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 or Sublicensee) effective no later than
30 days from the date such notice is given by Licensor to Licensee. All
Authorized Dealers and Sublicensees shall be bound by the Quality Standards and
by Licensee's obligations under this Agreement. A breach by any such Authorized
Dealer or Sublicensee of this Agreement shall be deemed a breach of this
Agreement by Licensee; provided that Licensee's termination of such breaching
Authorized Dealer or Sublicensee shall be deemed to cure any such breach.
8. REMEDIES FOR NON-COMPLIANCE WITH QUALITY STANDARDS
8.1 Non-compliance with Quality Standards and Cure.
a. If Licensor becomes aware that Licensee or its Authorized Dealers,
or Sublicensees, are not complying with any Quality Standards in
any material respect, Licensor shall notify Licensee in writing of
such non-compliance, setting forth, in reasonable detail, a
description of the non-compliance and, to the extent such
information is available, any suggestions for curing such non-
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compliance. Licensee shall cure such non-compliance as soon as is
practicable but in any event within thirty (30) days thereafter
or, if such breach is not capable of being cured on commercially
reasonable terms within such thirty (30) day period and does not
create a material threat of personal injury or injury to property
of any third party, within one-hundred eighty (180) days after
receipt of notice, provided that Licensee has commenced
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 or Sublicensee, Licensee's termination of such
Authorized Dealer or Sublicensee shall be deemed to cure such
non-compliance.
b. If such non-compliance with the Quality Standards continues beyond
the applicable cure periods described above, Licensee shall: (i)
immediately cease any services and products licensed hereunder
using the Licensed Marks in the geographic areas in which it is in
non-compliance until it is in compliance with the Quality
Standards, subject to the provisions below; and (ii) at Licensor's
election, be deemed to be in breach of this Agreement.
c. The waiver by Licensor of a single event of non-compliance or a
succession of events shall not deprive Licensor of any rights
under this Agreement arising by reason of any subsequent event of
non-compliance.
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8.2 Potential Injury to Persons or Property. Notwithstanding the
provisions of Section 8.1, in the event that Licensor reasonably determines
that any non-compliance creates a material threat of personal injury or injury
to property of any third party, upon 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 services and
products licensed hereunder using the Licensed Marks in the DMA in which it is
not in compliance until it is in compliance with the Quality Standards, subject
to the provisions of Section 8.3 below, or be deemed to be in breach of this
Agreement.
8.3 Licensor's Rights to License Others. In addition to the rights granted
to Licensor pursuant to Article 6, "Term and Termination," in the event that
Licensee is required to cease offering or providing any services and products
licensed hereunder using Licensed Marks in a DMA by reason of its failure to
comply with the Quality Standards and to cure such failure within the
applicable cure periods, Licensor may immediately terminate Licensee's rights
under this Agreement with respect to such geographic areas, and may license
other Persons to use the Licensed Marks on services and products licensed
hereunder in that geographic area.
9. PROTECTION OF LICENSED MARKS
9.1 Ownership and Rights to the Licensed Marks.
a. Licensee acknowledges the great value of the goodwill associated
with the Licensed Marks, and acknowledges that the Licensed Marks
and all the rights therein, and goodwill attached thereto, belong
exclusively to Licensor.
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b. Licensee will not, at any time, disparage, dilute or adversely
affect the validity of the Licensed Marks or take any action, or
otherwise suffer to be done any act or thing which may at any
time, in any way materially adversely affect any rights of
Licensor in and to the Licensed Marks, or any registrations
thereof or which, directly or indirectly, may materially reduce
the value of the Licensed Marks or detract from their reputation.
c. Licensee agrees that any and all goodwill and other rights that
may be acquired by the use of the Licensed Marks by Licensee shall
inure to the sole benefit of Licensor. Nothing contained in this
Agreement shall be construed as an assignment or grant to Licensee
of any right, title or interest in or to the Licensed Marks, or
any of Licensor's other trademarks, it being understood that all
rights relating thereto are reserved by Licensor, except for the
license hereunder to Licensee of the right to use and utilize the
Licensed Marks only as specifically and expressly provided herein.
Licensee further 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.
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d. Licensee shall not, during the Term or thereafter, (i) attack
Licensor's title or right in and to the Licensed Marks in any
jurisdiction or attack the validity of this license or the
Licensed Marks or (ii) contest the fact that Licensee's rights
under this Agreement, subject to the provisions of Section 6.4
hereof, cease upon termination or expiration of this Agreement.
The provisions of this Section 9.1 shall survive the termination
of this Agreement.
e. Licensee will not grant or attempt to grant a security interest in
the Licensed Marks or this Agreement, or to record any security
interest in the United States Patent and Trademark Office or
elsewhere, against any trademark application or registration
belonging to Licensor.
f. Licensee shall cooperate fully and in good faith with Licensor for
the purpose of securing, preserving and protecting Licensor's
rights in and to the Trademark and the Other Marks. At the
request of Licensor, Licensee shall execute and deliver to
Licensor any and all documents and do all other reasonable acts
and things which Licensor deems necessary or appropriate to make
fully effective or to implement the provisions of this Agreement
relating to the ownership, registration, maintenance or 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.Section 1051 et seq.
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9.2 Similar Marks. Licensee agrees not to register in any country any ▇▇▇▇
resembling or confusingly similar to the Licensed Marks or any other Marks of
Licensor or any AT&T Licensee, or which dilutes the Licensed Marks or any other
Marks of Licensor or any AT&T Licensee, and not to use the Licensed Marks or
any other Marks of Licensor or any AT&T Licensee, or any part of any such
Marks, as part of its corporate name (unless otherwise agreed by Licensor), nor
use (except in accordance with Article 10) any ▇▇▇▇ confusingly similar,
deceptive or (except in accordance with Article 10) misleading with respect to
the Licensed Marks or any other Marks of Licensor or any AT&T Licensee, or
which dilutes the Licensed Marks or any other Marks of Licensor or any AT&T
Licensee. Licensee further agrees that it will not use the name or part of the
name of any AT&T Licensee including Broadband; provided however, Licensee may
use the name of any Licensee including the term "broadband" as a generic term,
so long as it is not used as part of any name or ▇▇▇▇. 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 any other Marks
of Licensor or any AT&T Licensee, or which dilutes the Licensed Marks or any
other Marks of Licensor or any AT&T Licensee, Licensee shall, at Licensor's
sole discretion, immediately abandon any such application or registration or
assign it (free and clear of any liens and encumbrances, 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 any other Marks of Licensor or any AT&T Licensee, or which
dilutes the Licensed Marks or any other Marks of Licensor or any AT&T Licensee,
or if Licensee uses the Licensed Marks or any other Marks of Licensor
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or any AT&T Licensee in connection with any product, or any service not
specifically authorized hereunder, Licensee shall, immediately upon receiving a
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 Licensee Marks that are used together with the
Licensed Marks in accordance with the terms of this Agreement, and the 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 (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. 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 other legal proceedings relating to an alleged Infringement.
Subject to the provisions of Section 9.4, the decision whether to bring,
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
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Licensed 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 directors,
officers, stockholder, employees and agents) in connection with their
participation in such action. Subject to the provisions of Section 9.4, nothing
in this Agreement shall require, or be deemed to require Licensor to enforce
the Licensed Marks against others.
9.4 Enforcement of Other Agreements.
a. In the event that an AT&T Licensee violates its license agreement
with Licensor in a manner which materially and adversely affects
the rights granted to Licensee hereunder, Licensor shall take
all commercially reasonable actions to enforce the terms of such
License Agreement.
b. To the extent not prohibited by the terms of any license
agreement with a third party, Licensor will provide Licensee
with appropriately redacted portions of such license agreements
that include restrictions or use provisions which, if violated,
may materially and adversely affect the rights granted to
Licensee hereunder. Licensee hereby authorizes Licensor to
provide redacted portions of this Agreement to third parties.
c. In the event Licensee learns of a breach by a licensee of
Licensor under an agreement of the type referred to in a.
above, Licensee will immediately inform Licensor of such breach.
Licensor shall take the actions referred to in 9.4a above or, in
the alternative, may
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authorize Licensee to bring an action in Licensor's name and on
its behalf.
9.5 Compliance with Legal Requirements.
a. 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.
b. Upon the reasonable request of Licensor in order to comply with
legal requirements, whenever the Licensed ▇▇▇▇ is used in any
advertisement or on any item of packaging or labeling, it must
be followed, in the case of a registered trademark by the
registration symbol, i.e., (R), and in the case of all other
trademarks by the symbol "TM", or other appropriate symbols of
similar import acceptable to Licensor. Licensee shall duly
display all other notices with respect to the Licensed Marks as
are or may be required by the trademark laws and regulations
applicable within the Licensed Territory.
c. 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
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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. USE OF LICENSED MARKS AND OTHER MARKS
10.1 Licensee Marks. Licensee shall have the right from time to time during
the Term to create and use its own Marks, which may be used together with the
Licensed Marks, in connection with products or services with respect to which
any of the Licensed Marks are used; provided that Licensee provides Licensor
with prior notice of its desire to use any such Marks created and owned by
Licensee and Licensor approves Licensee's proposed use of such Marks (which
approval shall not be unreasonably withheld, delayed or conditioned). Unless,
in the exercise of Licensor's sole discretion acting in good faith, Licensor
shall determine that a ▇▇▇▇ that Licensee proposes to use could disparage,
tarnish, dilute or potentially cause confusion with respect to any Marks of
Licensor or of any AT&T Licensee, or otherwise raises a substantial trademark
concern for Licensor, Licensor will approve Licensee's use of such proposed
▇▇▇▇. 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, Licensor shall be
deemed to have approved Licensee's proposed ▇▇▇▇ or Marks. Licensee shall not
file or prosecute a ▇▇▇▇ application or applications to register any Licensee
Marks which include as part of such ▇▇▇▇ the Licensed Marks.
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Notwithstanding the foregoing, if Licensee uses the Marks "AT&T" or "AT&T" in
conjunction with the globe design, the term "Wireless" must follow such ▇▇▇▇.
10.2 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.
10.3 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 services
and products licensed hereunder. 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.
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10.4 Internet Domain Names.
a. Licensee will not be required to use Licensor's domain names but
will be required to use "att" in domain names when services and
products licensed hereunder using the Licensed Marks are being
accessed, as set forth in Schedule 9.
b. Licensee shall adhere to Licensor's domain name guidelines as set
forth in Schedule 9, which are designed to assure that customers
have easy access to AT&T branded sites.
c. Licensee's web sites that use any of the Licensed Marks or that
concern products or services in connection with which the
Licensed Marks are used, shall each have a web link to the
▇▇▇.▇▇▇ home page.
10.5 Restriction on Licensor. Licensor agrees that, during the Term of
this Agreement, it shall not use the terms "AT&T Wireless" and "AT&T Mobility"
on Wireless Related Portals and Wireless Related Devices if those terms are
used as Marks by Licensee.
10.6 Licensor Covenant. For so long as Licensee owns at least a ten
percent (10%) equity interest in a licensee to a license agreement listed in
Schedule 19, Licensor covenants that it will not terminate that particular
license solely because of Licensor's loss of equity interest in that licensee.
This covenant shall not preclude Licensor from terminating any such license for
any reason other than loss of equity.
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11. LIABILITY AND INDEMNIFICATION
11.1 Indemnification.
a. Licensor shall defend, indemnify and hold Licensee and its
Authorized Dealers, and their respective directors, officers,
stockholders, employees and agents (the "Licensee Parties")
harmless against all claims, suits, proceedings, costs,
damages, losses, fees and expenses (including reasonable
attorney's fees) and judgments incurred, claimed or sustained by
the Licensee Parties arising out of: (i) claims by third parties
that the Licensee Parties' use of the Licensed Master Marks or
Licensed Ancillary Marks in accordance with this Agreement
constitutes trademark, service ▇▇▇▇ or trade dress infringement,
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 Master Marks or Licensed Ancillary Marks or (B)
Licensor's ownership rights in the Licensed Master Marks or
Licensed Ancillary Marks; and (iii) any lack of validity or
enforceability of this Agreement caused by Licensor as it
applies to the Licensed Master Marks or the Licensed Ancillary
Marks.
b. Subject to Licensor's indemnification obligations in Section a.
above, Licensee shall defend, indemnify and hold Licensor and its
Authorized Dealers, and their respective directors, officers,
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stockholders, employees and agents (the "Licensor Parties")
harmless against all claims, suits, proceedings, costs, damages,
losses, fees and expenses (including reasonable attorneys' fees)
and judgments incurred, claimed or sustained by the Licensor
Parties arising out of Licensee's, or any Authorized Dealer's or
Sublicensee's, marketing, sale or use of the Licensed Marks, and
shall indemnify the Licensor Parties from any improper or
unauthorized use of the Licensed Marks and for any use by
Licensee of the Licensee Marks. Licensee shall also defend,
indemnify and hold the Licensor Parties harmless against all
claims, suits, proceedings, costs, damages, losses, fees and
expenses (including reasonable attorney's fees) and judgments
incurred, claimed or sustained by the Licensor Parties arising
out of: (i) any third party claims as to the lack of validity or
enforceability of (x) the registrations (if any) of the Licensee
Marks or (y) Licensee's ownership rights in the Licensee Marks;
and (ii) any lack of validity or enforceability of this
Agreement caused by Licensee.
11.2 Notification and Defense of Claims.
a. Notification of Claims. In the event of the occurrence of an
event which a Licensee Party or a Licensor Party (the
"Indemnified Party"), as the case may be, asserts constitutes a
claim, the Indemnified Party shall provide prompt notice of such
event to Licensor, in the case of Licensee as the Indemnified
Party, or to Licensee, in the case of Licensor as the
Indemnified Party (the
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"Indemnifying Party"), and shall otherwise make available to
the Indemnifying Party all relevant information which is
material to the claim. Failure to give timely notice or to
furnish the Indemnifying Party with any relevant data and
documents in connection with any claim shall not constitute a
defense (in part or in whole) to any claim for indemnification
by the Indemnified Party, unless, and only to the extent that,
such failure results in any material prejudice to the
Indemnifying Party. The Indemnifying Party may elect, at its own
expense, to assume exclusive control of the defense of such
claim, if the Indemnifying Party gives written notice of its
intention to do so no later than thirty (30) days following
notice of such claim by the Indemnified Party or such shorter
time period as required so that the interests of the Indemnified
Party would not be materially prejudiced as a result of the
failure to have received such notice; provided that (i) the
Indemnifying Party shall obtain the consent of the Indemnified
Party (which consent shall not be unreasonably withheld or
delayed) before entering into any settlement, adjustment or
compromise of such claims, or ceasing to defend against such
claims, if as a result thereof, or pursuant thereto, there would
be imposed on the Indemnified Party any material liability or
obligation not covered by the indemnity obligations of the
Indemnifying Party under this Agreement (including, without
limitation, any injunctive relief or other remedy), except with
respect to a settlement adjustment or compromise which results
solely in a
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monetary liability and (ii) if the Indemnified Party shall have
reasonably concluded that separate counsel is required because a
conflict of interest would otherwise exist, the Indemnified
Party shall have the right to select separate counsel to
participate in the defense of such action on its behalf, at the
expense of the Indemnified Party.
b. In the event that Indemnifying Party elects to assume control of
the defense of any such claim, the Indemnified Party shall
cooperate with the Indemnifying Party in such proceeding and
shall execute all papers necessary and desirable and shall
testify or provide evidence whenever reasonably requested to do
so. The Indemnified Party may elect to join in the defense of
such claim and to employ counsel to assist it in connection with
the handling of such claim, at the sole expense of the
Indemnified Party, provided, however, that no such claim shall
be settled, adjusted or compromised, or the defense thereof
terminated by the Indemnified Party, without the prior consent
of the Indemnifying Party (which consent shall not be reasonably
withheld or delayed), and provided, further that no Indemnified
Party may settle, compromise or consent to the entry of any
judgment in any claim for which indemnification may be sought
hereunder unless such settlement, compromise or consent also
includes an express, unconditional release of the Indemnifying
Party and its directors, officers,
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stockholders, employees and agents from all liabilities and
obligations arising therefrom.
c. In the event that the Indemnifying Party does not notify the
Indemnified Party within 30 days that it will assume control of
the defense of any such claim for which the Indemnified Party
would be entitled to indemnification hereunder, then the
Indemnified Party shall have the right to defend such claim at
its own expense, and the Indemnifying Party shall cooperate as
requested in such defense, at the expense of the Indemnified
Party with respect to documented and reasonable out-of-pocket
expenses incurred by the Indemnifying Party in the defense of
the claim, provided, however, that no such claim shall be
settled, adjusted or compromised, or the defense thereof
terminated by the Indemnified Party, without the prior consent
of the Indemnifying Party (which consent shall not be reasonably
withheld or delayed), and provided, further that no Indemnified
Party may settle, compromise or consent to the entry of any
judgment in any claim for which indemnification may be sought
hereunder unless such settlement, compromise or consent also
includes an express, unconditional release of the Indemnifying
Party and its directors, officers, stockholders, employees and
agents from all liabilities and obligations arising therefrom.
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11.3 Insurance.
a. Licensee shall maintain, at its own expense, in full force and
effect at all times during which services and products licensed
hereunder 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 services
and products licensed hereunder offered using 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 notice to Licensor and Licensee of
the cancellation or any substantial modification of the policy.
This insurance may be obtained by Licensee in conjunction with a
policy which covers services and/or products other than the
services covered under this Agreement.
b. 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 this Section 11.3,
including without limitation, originals or copies of policies,
certificates of insurance (with applicable riders and
endorsements) and proof of premium payments.
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12. AGREEMENT PERSONAL
12.1 Personal to Licensee. In recognition of the unique nature of the
relationship between Licensor and Licensee, 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 part of Licensee was once owned by Licensor),
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.
Pursuant to 11 U.S.C. Section 365(c)(1)(A) (as it 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.
12.2 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 those agreements will have any effect on this Agreement
and Licensee may choose to contract, or not, with Licensor's Affiliates as it
deems appropriate.
13. RETENTION OF RIGHTS
13.1 Except as otherwise expressly provided in this Agreement, nothing in
this Agreement shall be deemed or construed to limit in any way Licensor's
rights in and to the Licensed Marks, including without limitation:
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a. all rights of ownership in and to the Licensed Marks, including
the right to license or transfer the same.
b. The unimpaired right to use the Licensed Marks in connection with
marketing, offering or providing any products or services (except
for the particular products and services exclusively licensed
under this Agreement, but only to the extent of such license)
whether within or without the Licensed Territory.
14. SPONSORSHIP
14.1 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 15 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 15 in Licensor's sole discretion. In the
event that Licensee desires to sponsor, endorse or claim affiliation with an
Event not described on Schedule 15, 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, which date or time shall be at least ten business days after receipt of
notice by Licensor. Any breach of this provision reasonably determined to have
a
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material adverse effect on Licensor or the Licensed Marks shall be
deemed a Significant Breach by Licensee.
15. CONSENT OF LICENSOR
15.1 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.
16. NOTICES
16.1 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 three (3) days after being 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:
AT&T Wireless Services, Inc.
▇▇▇▇▇ ▇▇ ▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, Esq.
Fax No.: (▇▇▇) ▇▇▇-▇▇▇▇
If to Licensor:
AT&T Corp.
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
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Basking Ridge, New Jersey 07920-1002
Attention: ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇, Vice President - Law
Chief Intellectual Property Counsel
Fax No.: (▇▇▇) ▇▇▇-▇▇▇▇
With copies to:
AT&T Corp.
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: Corporate Secretary
Fax No.: (▇▇▇) ▇▇▇-▇▇▇▇
or to such other address as such party shall have designated by notice
so given to each other party.
17. GOVERNMENTAL LICENSES, PERMITS AND APPROVALS
17.1 Licensee, at its expense, shall be responsible for obtaining and
maintaining all Approvals 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 Approvals.
18. APPLICABLE LAW
18.1 The construction, performance and interpretation of this Agreement
shall be governed by the U.S. Trademark Act, 15 U.S.C. Section 1051 et seq.,
and the internal, substantive laws of the State of New York, without regard to
its principles of conflicts of law. 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
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of the State of New York located in New York County for all actions, suits or
proceedings arising in connection with this Agreement.
18.2 In the event of a dispute between the parties concerning the
subject matter of this Agreement, the parties shall first attempt to informally
resolve that dispute by escalating the matter to senior executives appointed by
the parties. For purposes of such informal resolution, each party shall appoint
one senior executive official having authority to resolve the dispute on behalf
of that party. If the senior executives are unable to resolve the matter within
thirty (30) days after notice of a dispute is given or such longer period as the
senior executives may mutually agree upon, the matter shall be resolved as
provided in Section 18.3.
18.3 Except as provided below, any and all controversies or claims of
any nature arising out of or relating to this Agreement or the breach,
termination or validity thereof, whether based on contract, tort, statute,
fraud, misrepresentation or any other legal or equitable theory (the "Claim")
shall be resolved solely and exclusively by arbitration by the CPR Institute for
Dispute Resolution ("CPR") in accordance with the provisions of this Section and
the CPR Rules for Non-Administered Arbitration to the extent such rules do not
conflict with this Section and Agreement. The Respondent's notice of defense
shall be served upon the Claimant within ten (10) days after it receives the
notice of arbitration (the date of receipt of notice of arbitration being
"Commencement"). The arbitration shall be conducted by one (1) arbitrator
selected by the parties or, if the parties cannot mutually agree upon the
arbitrator within fifteen (15) days after Commencement, the parties shall notify
CPR and an arbitrator knowledgeable in the legal and technical aspects of the
Claim shall be appointed by
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CPR within twenty-five (25) days of Commencement. The arbitrator shall strictly
limit discovery to the production of documents directly relevant to the facts
alleged in the notices of arbitration and defense and, if depositions are
required, each party shall be limited to three (3) depositions of no longer than
three (3) hours each. If the arbitrator decides to hold an evidentiary hearing,
each party's presentation of its case, including its direct and rebuttal
testimony, shall be limited to three (3) days. The arbitrator shall issue an
order preventing the parties, CPR and any other participants to the arbitration
from disclosing to any third party any information obtained via the arbitration,
including discovery documents, evidence, testimony and the award except as may
be required by law or, with respect to the award, to the extent necessary to
obtain indemnification from a third party, provided that the disclosing party
first secures a written commitment from the third party (with a copy to the
other relevant party) to maintain the confidentiality of the information so
disclosed consistent with this Agreement and subject to the jurisdiction of the
court in the Action. All requests for injunctive relief shall be decided by the
arbitrator, provided, however, that requests for temporary injunctive relief may
be submitted to a court of competent jurisdiction if the arbitrator has not yet
been appointed. The arbitrator shall have the authority to modify any injunctive
relief granted by such a court. The arbitration award shall: (a) be in writing;
(b) state only the damages and injunctive relief granted, if any; (c) not exceed
the damages and relief requested by the prevailing party; (d) be made final
within six (6) months of Commencement; and (e) be entered by any party in any
court having competent jurisdiction, provided that, the party entering the award
shall request that the court prevent the award from becoming publicly available
except as may be required by law. The arbitrator shall not limit, expand or
otherwise modify the terms of this Agreement
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and shall not award punitive or other damages in excess of compensatory damages.
The arbitrator shall orally state the reasoning on which the award rests but
shall not state such reasoning in any writing. Each party shall bear its own
expenses, but those related to the compensation of the arbitrator shall be borne
equally. The parties agree that the existence and contents of the entire
arbitration, including the award, shall be deemed a compromise of a dispute
under Rule 408 of the Federal Rules of Evidence, shall not be discoverable in
any proceeding, shall not be admissible in any court (except to enforce the
same, including against a third party in an action for indemnification, as
provided herein) or arbitration and shall not bind or collaterally estop any
party with respect to any claim or defense made by any third party.
Notwithstanding the preceding, the parties shall not arbitrate any Claim
(including defenses thereto) concerning the validity, enforceability, scope or
infringement of any ▇▇▇▇ or any issue unrelated to this Agreement.
19. CONFIDENTIALITY OF INFORMATION AND USE RESTRICTION
19.1 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
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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.
20. DIVESTITURE OF FIXED WIRELESS BUSINESS BY LICENSEE
20.1 In the event that Licensee shall divest itself of that portion of
its business which provides Residential Fixed Wireless Services and Small
Business Fixed Wireless Services (that portion of Licensee's business being
referred to as the "Fixed Wireless Business"), then the Fixed Wireless Business
shall continue to enjoy after such divestiture the license it enjoys as part of
Licensee. Such license shall include all activities of the "Fixed Wireless
Business" that are covered by the licenses expressly granted in Article 2 of
this Agreement with respect to Residential Fixed Wireless Services and Small
Business Fixed Wireless Services, subject to all of the terms and conditions of
this Agreement, including those relating to Change of Control. For avoidance of
doubt, if after the divestiture of the Fixed Wireless Business there is a
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Change of Control of the fixed Wireless Business, then the license to the Fixed
Wireless Business shall be terminated. On behalf of the Fixed Wireless Business,
Licensee hereby agrees that Licensor shall have the full right to enforce any of
the terms and conditions of this Agreement against the Fixed Wireless Business
after such divestiture, to the same extent as if the Fixed Wireless Business had
been a party to this Agreement.
21. MISCELLANEOUS
21.1 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.
21.2 Relationship of the Parties. 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.
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21.3 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.
21.4 Assignment. Licensee may not assign, pledge, transfer or otherwise
hypothecate this Agreement or any of its rights or obligations hereunder, and
any purported assignment, pledge, transfer or other hypothecation, whether by
operation of law or otherwise, shall be void and of no force or effect.
21.5 Specific Performance. The parties acknowledge that money damages
are not an adequate remedy for violation of this Agreement and that any party
may, in its sole discretion, apply to the court set forth in Section 18 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.
21.6 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.
21.7 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,
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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.
21.8 Rules of Construction. As used in this Agreement, (1) neutral
pronouns and any derivations thereof shall be deemed to include the feminine and
masculine and all terms used in the singular shall be deemed to include the
plural and vice versa, as the context may require; (2) the words "hereof,"
"herein," "hereunder" and other words of similar import refer to this Agreement
as a whole, including all exhibits and schedules as the same may be amended or
supplemented from time to time, and not to any subdivision of this Agreement;
(3) the word "including" or any variation thereof means "including, without
limitation" and shall not be construed to limit any general statement that it
follows to the specific or similar items or matters immediately following it;
and (4) descriptive headings and titles used in this Agreement are inserted for
convenience of reference only and do not constitute a part of and shall not be
utilized in interpreting this Agreement. This Agreement shall be fairly
interpreted in accordance with its terms and without any strict construction in
favor of or against any party.
21.9 No Third Party Beneficiaries. This Agreement is not intended to be
for the benefit of and shall not be enforceable by any Person who is not a party
and nothing in this Agreement, express or implied, is intended to or shall (1)
confer on any Person other than the parties and their respective Successors any
rights (including third-party beneficiary rights), remedies, obligations or
liabilities under or by reason of this Agreement or (2) constitute the parties
as partners or as participants in a joint venture. This Agreement shall not
provide third parties with any remedy, claim, liability, reimbursement, cause of
action or other right in excess of those existing without
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reference to the terms of this Agreement and no third party shall have any
right, independent of any right that exists irrespective of this Agreement, to
bring any suit at law or equity for any matter governed by or subject to the
provisions of this Agreement.
21.10 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.
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IN WITNESS WHEREOF, each of the parties has caused this Agreement to be
executed in duplicate originals by its duly authorized representatives as of the
date first stated above.
AT&T CORP.
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
---------------------------------
Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Title: Executive Vice President
AT&T WIRELESS SERVICES, INC.
By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
--------------------------------
Name: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
Title: Executive Vice President
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