Trademark License Agreement - Lucent Technologies Inc. and Agere Systems Inc.
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EXECUTION COPY
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TRADEMARK LICENSE AGREEMENT
BY AND BETWEEN
LUCENT TECHNOLOGIES INC.
AND
AGERE SYSTEMS INC.
Dated as of February 1, 2001
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TRADEMARK LICENSE AGREEMENT
TABLE OF CONTENTS
ARTICLE I. DEFINITIONS
ARTICLE II. LICENSE GRANT
2.1 AGERE PRODUCTS
2.2 COMPOUND MARKS
2.3 LIMITATIONS ON GRANT
2.4 NO USE IN LICENSEE'S NAME
2.5 NO OTHER MARKS TO BE USED
2.6 MODIFICATION OF LICENSED MARKS
2.7 LICENSE OF MASKS; INGREDIENT BRANDING; AND TECHNICAL
DOCUMENTATION
2.8 PUBLICITY
2.9 CO-BRANDING
2.10 DATES
ARTICLE III. AGREEMENT PERSONAL
3.1 PERSONAL NATURE OF AGREEMENT
3.2 SUBLICENSING/ASSIGNMENT
3.3 EXISTING AUTHORIZED DEALERS
3.4 BUSINESSPARTNERS
ARTICLE IV. LICENSES TO OTHERS AND OWNERSHIP
4.1 EXCLUSIVE LICENSE
4.2 RETENTION OF RIGHTS BY LICENSOR
4.3 RETENTION OF RIGHTS BY LICENSEE
4.4 JOINT VENTURES OF LICENSEE
ARTICLE V. LICENSED TERRITORY
5.1 WORLD-WIDE LICENSES
ARTICLE VI. QUALITY CONTROL
6.1 CONTROL SPECIFICATIONS
6.2 CUSTOMER CARE PROVISIONS
6.3 QUALITY CONTROL REVIEWS; RIGHT OF INSPECTION
6.4 COSTS
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ARTICLE VII. [INTENTIONALLY OMITTED]
ARTICLE VIII. PROTECTION OF LICENSED SERVICE MARKS
AND THE TRANSITION LOGOS
8.1 OWNERSHIP AND RIGHTS
8.2 SIMILAR MARKS
8.3 INFRINGEMENT
8.4 COMPLIANCE WITH LAWS
ARTICLE IX. TERMINATION
9.1 BREACH BY LICENSEE
9.2 TERMINATION OBLIGATIONS
ARTICLE X. INDEMNITIES
10.1 LICENSEE'S INDEMNIFICATION
10.2 NOTICE
ARTICLE XI. NOTICES
ARTICLE XII. COMPLIANCE WITH LAW
12.1 GENERAL
12.2 GOVERNMENTAL LICENSES, PERMITS AND APPROVALS
ARTICLE XIII. MEDIATION AND DISPUTE RESOLUTION
13.1 DISPUTES
13.2 ESCALATION; MEDIATION
13.3 COURT ACTIONS
ARTICLE XIV. MISCELLANEOUS
14.1 COUNTERPARTS; ENTIRE AGREEMENT; CORPORATE POWER
14.2 GOVERNING LAW
14.3 ASSIGNABILITY; SUCCESSORS
14.4 RELATIONSHIP OF THE PARTIES; THIRD PARTY BENEFICIARIES
14.5 SEVERABILITY
14.6 FORCE MAJEURE
14.7 HEADINGS
14.8 WAIVERS OF DEFAULT
14.9 INJUNCTIVE RELIEF
14.10 AMENDMENTS
14.11 INTERPRETATION
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SCHEDULE A - LICENSED MARKS
SCHEDULE B - PRODUCT MANUFACTURING SPECIFICATIONS
SCHEDULE C - TRADEMARK USE SPECIFICATIONS
SCHEDULE D - CORPORATE IDENTIFICATION MARKS
SCHEDULE E - COMPOUND MARKS
SCHEDULE F - TRANSITION LOGOS AND SPECIFICATIONS
SCHEDULE G - BUSINESSPARTNER GUIDELINES
SCHEDULE H - LUCENT BUSINESSPARTNER LOGO
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TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT (this "Agreement"), dated as of
February 1, 2001 (the "Effective Date"), is by and between Lucent Technologies
Inc., a Delaware corporation, with offices at 600 Mountain Avenue, Murray Hill,
New Jersey 07974 ("Lucent"), and Agere Systems Inc., a Delaware corporation,
with offices at 555 Union Blvd., Allentown, PA 18109 ("Agere").
RECITALS
WHEREAS, the Board of Directors of Lucent has determined that it is
in the best interests of Lucent and its stockholders to separate Lucent's
existing businesses into two independent businesses.
WHEREAS, in order to effectuate the foregoing, Lucent and Agere have
entered into a Separation and Distribution Agreement ("S&D Agreement"), which
provides, among other things, subject to the terms and conditions thereof for
the separation of the Agere Assets and the Agere Liabilities, the IPO and the
Distribution (each of the foregoing terms as defined in the S&D Agreement) and
the execution and delivery of certain other agreements in order to facilitate
and provide for the foregoing; and
WHEREAS, this Agreement is to allow Agere's business units to create
consumer awareness that they are the successors to Lucent's former business
units and to minimize customer confusion that might otherwise arise as a result
of the foregoing transactions and the immediate loss of use of the Lucent name,
marks, logos and trade dress.
WHEREAS, capitalized terms used herein and not otherwise defined
shall have the respective meanings assigned to them in Article I hereof or in
the S&D Agreement.
NOW, THEREFORE, in consideration of the premises and for other good
and valid consideration, the receipt and sufficiency of which are hereby
acknowledged, the Parties, intending to be legally bound, agree as follows:
ARTICLE I
DEFINITIONS
For the purpose of this Agreement, in addition to the words and phrases
that are defined throughout the body of this Agreement, the following words and
phrases shall have the following meanings:
AFFILIATE of any Person means a Person that now or hereafter controls, is
controlled by, or is under common control with such Person. As used herein,
"control" means the possession, directly or indirectly, or the power to direct
or cause the direction of the management and policies of such entity, whether
through ownership of voting securities or other interests, by
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contract or otherwise.
AGERE COMPANIES means Sybarus Technologies ULC, Agere, Inc., Cirent
Semiconductor, G.P., Enable Semiconductor Inc., FINET Technologies, G.P.,
Optimay Corporation, Ortel Corporation, and each of their respective
Subsidiaries in existence prior to the Effective Date. Agere may add
additional companies to the definition of "Agere Companies" subject to
Lucent's prior written consent which will not be unreasonably withheld.
AGERE MARKS means Licensee's Marks, and trade dress including without
limitation Corporate Identification Marks and Agere Product Marks.
AGERE PRODUCT MARKS means those trademarks, service marks and trade dress
to be assigned from Lucent to Agere on or before the Effective Date.
AGERE PRODUCTS means products of the type designed, created, manufactured
or marketed by Licensee or by an entity whose relevant product-related
intellectual property was acquired by Licensee (for example, VTC Inc.), and
repair, maintenance and support services related thereto, but not product types
newly designed or created by them after the Effective Date.
AUTHORIZED DEALERS means Existing Authorized Dealers and New
Authorized Dealers collectively.
CHANGE OF CONTROL shall mean, in reference to an entity, a transaction
after October 1, 2001 (other than the Distribution) which results in at least
fifty percent (50%) of the entity's stock or voting power being controlled by a
third party.
CLOSING DATE shall have the same meaning ascribed to such term in the S&D
Agreement.
COMPOUND MARKS means any mark containing the element LUCENT along with
another mark which is in use or applied for prior to or on the Effective Date;
the entire set of Compound Marks is set forth in Schedule E attached hereto (as
may be modified or supplemented in accordance with this Agreement or as agreed
to by the Parties).
CONTROL SPECIFICATIONS means standards of quality (including performance
parameters) applicable to the fabrication, performance, design, use, provision,
and support of an Agere Product under the Licensed Marks, as set forth or
referenced in Schedule B, (the "Product Manufacturing Specifications") and the
standards applicable to the specific manner in which the Licensed Marks may be
used on marketing, advertising, and promotion materials for Agere Products, as
set forth or referenced in Schedule C attached hereto (the "Trademark Use
Specifications").
CORPORATE IDENTIFICATION MARKS means the Licensee's house mark and related
trade dress used to identify and distinguish Licensee from other Persons, as
identified in Schedule D attached hereto.
DISTRIBUTION DATE shall have the same meaning ascribed to such term in the
S&D
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Agreement.
EXISTING AUTHORIZED DEALERS means Licensee's dealers, distributors,
agents, subcontractors, manufacturers, BusinessPartners (as defined herein) and
resellers that are authorized to use any Lucent Marks pursuant to agreements
existing as of the Effective Date.
GOVERNMENTAL AUTHORITY means any federal, state, local, foreign or
international court, government, department, commission, board, bureau, agency,
official or other regulatory, administrative or governmental authority.
INGREDIENT BRANDING means the indication of the brand of ingredient(s),
component(s) or material(s) used in or for which the finished product (or
service) is made or offered.
LICENSED MARKS means the marks LUCENT, LUCENT TECHNOLOGIES and the
INNOVATION RING LOGO as identified in Schedule A hereto (and as such marks may
be modified or supplemented as contemplated by Article II hereof or as agreed to
by the Parties).
LICENSEE means Agere, the Agere Companies, each Subsidiary of Agere, and
each other Person that is an Affiliate of Agere, but only for so long as such
Person is an Affiliate or Subsidiary of Agere
LICENSOR means Lucent.
MARK means any word, name, symbol or device, or any combination thereof,
used or intended to be used by a Person to identify and distinguish the products
or services of that Person from the products or services of others and to
indicate the source of such goods or services even if that source is unknown.
NEW AUTHORIZED DEALERS means dealers, distributors, agents,
subcontractors, manufacturers, BusinessPartners and resellers that are
authorized to use any Lucent Marks pursuant to agreements effective after the
Effective Date.
PERSON means an individual, a general or limited partnership, a
corporation, a trust, a joint venture, an unincorporated organization, a limited
liability entity, any other entity and any Governmental Authority.
SUBSIDIARY means a company, corporation or other legal entity (i) the
majority of whose shares or other securities entitled to vote for election of
directors (or other managing authority) is now or hereafter controlled by such
company either directly or indirectly; or (ii) which does not have outstanding
shares or securities but the majority of whose ownership interest representing
the right to manage such corporation or other legal entity is now or hereafter
owned and controlled by such company either directly or indirectly; but any such
corporation or other legal entity shall be deemed to be a Subsidiary of such
company only as long as such control or ownership and control exists.
SUPPLY AGREEMENT means the certain Microelectronics Product Purchase
Agreement
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between Licensor and Agere dated of even date.
TRANSITION COMPOUND MARK means a compound mark that consists of the
Transition Logo along with a mark that was once a part of a Compound Mark.
TRANSITION LOGOS means the Licensed Marks used in combination with
Licensee's Corporate Identification Marks as identified on Schedule F hereto
(and as such Transition Logos may be modified in accordance with this
Agreement).
ARTICLE II
LICENSE GRANT
2.1 AGERE PRODUCTS
(a) INITIAL PERIOD. (i) Subject to the terms and conditions of
this Agreement, Licensor grants Licensee a royalty free, personal,
non-transferable, non-sublicensable, non-exclusive license to use the Licensed
Marks as follows and in connection with the manufacture, repair, maintenance,
support, marketing, promotion, distribution and sale of Agere Products which
have been manufactured or masked out prior to, or are being manufactured or
masked out as of, the Effective Date, and continuing until April 1, 2002.
(ii) Licensee may not affix the Licensed Marks to Agere
Products, or to any packaging, instructions, or promotional or marketing
materials manufactured after April 1, 2002; provided, however, that Agere
Products, packaging, instructions, and promotional and marketing materials with
the Licensed Marks in inventory, including inventories of Licensee's customers,
on the last date of the period described in clause (a) above, may be marketed,
distributed, promoted and sold after that date and until the inventory of such
Agere Products, packaging or other materials is depleted.
(iii) When Licensee travels to a customer's premises or takes
possession of a previously installed product to make a repair or perform a
service, Licensee agrees to make reasonable efforts with regard to labels for
large equipment that are visible to either replace the product housing to remove
any reference to the Licensed Marks or affix labels with the Agere Marks to the
product in a manner that obscures the Licensed Marks.
(iv) Licensee may not affix the Licensed Marks to products
other than Agere Products.
(v) No right is granted to Licensee to use the Licensed Marks
alone on any new stationery, new business cards, new building signage, new
building flags, new employee badges, or new vehicle markings after the Effective
Date.
(vi) Licensee will cease to use the Licensed Marks alone on
stationery, business cards and building flags on or before December 31, 2001.
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(vii) Licensee will use its best efforts to cease use of the
Licensed Marks on employee badges on or before December 31, 2001, however, under
no circumstances may such use continue later than September 30, 2002, unless
required otherwise by applicable State or Federal laws or the laws of the
relevant foreign jurisdiction.
(viii) Licensee will make reasonable efforts to cease use of
the Licensed Marks on vehicle markings and on building signage on or before
December 31, 2001, however, under no circumstances may such use continue later
than July 1, 2002, unless required otherwise by applicable State or Federal laws
or the laws of the relevant foreign jurisdiction.
(ix) Beginning three (3) months from the Effective Date, but
in any event no later than nine (9) months from the Effective Date, Licensee
shall use its best efforts to refrain from using the Licensed Marks alone to
sponsor, endorse, or claim affiliation with any event, meeting, charitable
endeavor or any other undertaking without obtaining the express written
permission of Licensor.
(b) TRANSITION PERIOD. (i) Subject to the terms and conditions
of this Agreement, and to the guidelines governing use of the Transition Logos
attached as Schedule F hereto, Licensor grants Licensee a royalty free,
personal, non-transferable, non-sublicensable, exclusive license to use the
Licensed Marks in the Transition Logos as follows and in connection with the
manufacture, repair, maintenance, support, marketing, promotion, distribution
and sale of any Agere Products commencing on the Effective Date. For
clarification, the term "advertising" as used in this Agreement includes without
limitation audio advertising.
Transition Logo A - includes an Agere Corporate Identification
Mark plus the Lucent name and the descriptive phrase "The former
Microelectronics Group of Lucent Technologies" but will not include the
Innovation Ring Logo, as set forth in Schedule F. This may only be used as
follows:
- On products, packaging and labeling - until SeptembeR 30,
2002.
- On stationery, business cards and web sites - until July
1, 2002.
- On advertising and promotional materials until July 1,
2002 in the United States and until January 1, 2003 outside
the United States.
Transition Logos B and C - includes an Agere Corporate
Identification Mark plus the Lucent name and the Innovation Ring Logo with the
descriptive phrase "The former Microelectronics Group of Lucent Technologies" or
includes an Agere Corporate Identification Mark plus the phrase "Formerly the"
followed by the logo used by the Microelectronics Group of Lucent Technologies
Inc., or some variant thereof, as set forth in Schedule F. This may only be used
as follows:
- On products, packaging and labeling - until April 1,
2002.
- On stationery, business cards and web sites - until July
1, 2002.
- On advertising and promotional materials - until AprIL 1,
2002 in the United States and July 1, 2002 outside the
United States.
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(ii) Agere Products, packaging, instructions and promotional
material with the Transition Logos in inventory after the period described in
clause 2.1(b)(i), including inventories of Licensee's customers, may be
marketed, distributed, promoted and sold after that date and until the inventory
of such Agere Products and materials is depleted, subject to other applicable
terms and conditions of this Agreement.
2.2 COMPOUND MARKS. (i) To the extent that Licensee or Licensee's
customer is using a Compound Mark as of the Effective Date, it may continue to
use the Licensed Marks in the Compound Mark during the period of time described
in clause 2.1(a) ("Initial Period") hereunder applicable to the Agere Products
with respect to which such Compound Mark is used. During the period of time
described in clause 2.1(b) ("Transition Period"), Licensee shall, if it desires
to continue to use a Compound Mark, use a Transition Logo in lieu of the
Licensed Marks to create a Transition Compound Mark. At the end of the
Transition Period, Licensee shall, if it desires to continue to use a compound
mark, use the Agere Marks in lieu of the Transition Logo to create a new
compound mark, ownership of which shall belong exclusively to Agere and Lucent
will have no rights therein. At the end of the Initial Period or Transition
Period (as the case may be), Licensee shall cease all use of the Licensed Marks
or Transition Logo (as the case may be) in the Compound Marks, subject to the
inventory depletion allowances set forth herein.
(ii) Lucent shall maintain the registrations or pending applications for
the Compound Marks until Agere has filed for the new compound marks, but,
following written notification from Agere, shall allow the respective
registrations or pending applications to lapse or be abandoned after Agere has
filed for the new compound mark. Lucent shall grant to Agere any consents to
registration for the new compound marks, which may be needed. Lucent shall not
continue to use the Compound Marks and Transition Compound Marks that include
any Licensed Mark or Transition Logo after September 30, 2001.
2.3 LIMITATIONS ON GRANT. The Licensed Marks and the Transition Logos may
not be used by Licensee in connection with any product or service except as
expressly set forth in this Agreement.
2.4 NO USE IN LICENSEE'S NAME. Except as set forth herein, Licensee shall
cease using the Licensed Marks in Licensee's corporate, partnership, doing
business as, or fictitious name as of the later of the Distribution Date or six
(6) months after the Closing Date.
2.5 NO OTHER MARKS TO BE USED. Except for the Agere Product Marks and as
set forth expressly herein, Licensee shall not use any other name, mark,
indication of origin, trade dress or logo of Licensor in connection with the
manufacture, marketing, promotion, distribution, sale or lease of any product or
service without Licensor's express prior written consent. The Parties agree that
(i) the symbol "LU" is not a Lucent Mark and that Licensee may use parts or
components which are referred to by labels beginning with "LU" without any
consent or license from Licensor; (ii) notwithstanding any other provision
herein, Lucent shall not use the Agere Marks; and (iii) to the best of their
knowledge, no trade dress of Licensor is used by Licensee other than that which
is included in Agere Product Marks and accordingly, no license for trade dress
is required herein. In the event that such trade dress exists, Licensor agrees
to license to Licensee such trade dress in the same manner as Licensed Marks are
licensed herein.
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2.6 MODIFICATION OF LICENSED MARKS. If, as a result of governmental
regulation or court order, Licensor must modify or replace the Licensed Marks as
used in any substantial portion of Licensor's business, Licensee shall, within
sixty (60) days of notice, adopt and use such modified or replaced Licensed
Marks or this Agreement will terminate. If Licensor voluntarily modifies or
replaces the Licensed Marks, Licensee shall not be obligated to adopt such
modified or replaced Licensed Marks and Licensor will honor the terms of this
Agreement.
2.7 LICENSE OF MASKS; INGREDIENT BRANDING; AND TECHNICAL
DOCUMENTATION. Notwithstanding any other provision of this Agreement,
(a)Licensor grants Licensee a royalty free, personal, non-transferable,
non-sublicensable (except as provided herein), non-exclusive license
under its trademark rights to use masks and reticles existing as of the
Effective Date until such masks and reticles are no longer relevant to
Licensee's business;
(b)the Parties agree that Licensee may continue its Ingredient Branding
under the Licensed Marks (alone or in Compound Marks) and Transition
Logos (alone or in Compound Marks) only to the extent necessary to
satisfy existing customer agreements and to exhaust inventory
(including inventory of customers) existing, in the case of Licensed
Marks, as of the termination of the Initial Period and existing, in the
case of Transition Logos, as of the termination of the period described
in clause 2.1(b)(i); and
(c)Licensor grants Licensee a royalty-free, personal, non-transferable,
non-sublicensable (except as provided herein), non-exclusive license to
use the Licensed Marks and the Marks "Western Electric", "WE", and "We
Make The Things That Make Communications Work" solely on technical
documentation and literature (but not advertising, promotional or
marketing materials except as otherwise provided herein) existing as of
the Effective Date.
2.8 PUBLICITY. Except as expressly provided herein, commencing on the
later of October 1, 2001 or the termination of the Initial Period, and except as
otherwise required by governmental regulation or court order, the Parties agree
to consult and cooperate with each other prior to issuing any press releases,
articles, advertising, or publicity materials relating to (i) the terms (but not
the existence) of this Agreement; or (ii) Agere Products that are marked with
the trademarks, logos, trade name, service mark or other company identification
of the other Party which would be visible to the unaided human eye. The
aforementioned requirement of consultation and cooperation shall not be
applicable to such press releases, articles, advertising or publicity materials
relating to (i) Agere Products marked with a Transition Logo, Transition
Compound Mark or the Compound Mark "The Lucent Edge"; (ii) Ingredient Branding
as set forth in Section 2.7; (iii) factual references; and (iv) existing
contractual commitments of Licensee and Licensee's Affiliates.
2.9 CO-BRANDING. Without the prior approval of Licensor, Licensee
shall not
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(a)market or sell any finished product or service (not a part or
component of a product) which is branded with the Licensed Marks or
Transition Logos and any name, mark, indication of origin or trade
dress or the logo of any third party that competes with Licensor in the
provision of such product or service (such branding with such marks
referred to as "co-branding"), the co-branded Marks being visible to
the unaided human eye; or
(b)enter into an agreement with any such third party pursuant to which
such third party may so co-brand the finished product or service
furnished by Licensee.
Notwithstanding the foregoing, Licensee may so co-brand (i) pursuant to any
agreements existing as of the Effective Date; or (ii) with such a third party
that did not so compete with Licensor at the time of, or prior to, Licensee's
commitment to co-brand such product or service.
2.10 DATES. The Parties acknowledge and agree that the dates used herein
are based on the understanding that the Closing Date is scheduled to be on or
before March 31, 2001 and the Distribution Date is scheduled to be on or before
October 1, 2001. In the event that the scheduled Closing Date and Distribution
Date differ from this understanding, the dates used herein shall be adjusted
accordingly. The Parties further acknowledge that the laws of certain foreign
jurisdictions may be such that the Licensee may not be able to meet its
obligations under the aforementioned licenses as of the dates specified herein.
In these circumstances, such dates shall be adjusted accordingly so that
Licensee shall cease its use as soon as commercially possible in accordance with
the relevant laws.
ARTICLE III
AGREEMENT PERSONAL
3.1 PERSONAL NATURE OF AGREEMENT. In recognition of the goodwill
contributed to the Licensed Marks and the Transition Logos by Licensee prior to
the Separation (as defined in the S&D Agreement), and the unique nature of
Licensee (including without limitation the quality of the products and services
that it provides, its reputation, and its goodwill among its customers), 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 any
successor of Licensee, and Licensor shall be excused from rendering performance
to, or accepting performance from any such successor.
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3.2 SUBLICENSING/ASSIGNMENT. Except as expressly provided herein with
respect to Authorized Dealers, Licensee may not sublicense or assign the rights
and obligations of this Agreement without Licensor's express written consent.
Notwithstanding the foregoing, Licensee may sublicense the following licenses to
(1) any existing or future joint venture of Licensee, (2) a company in which
Licensee has or obtains an equity interest, or (3) any successor of a portion of
its business, subject to the terms and conditions of this Agreement:
(i) the licenses granted in Section 2.7(a); and
(ii) the licenses granted in Section 2.7(c) provided, however, that such
sublicensees shall not furnish any such sublicensed technical
documentation or literature to a consumer without first removing,
obscuring or replacing the sublicensed Marks thereon.
3.3 EXISTING AUTHORIZED DEALERS. (a) Subject to the terms and conditions
of this Agreement, including all Applicable Specifications, and to existing
agreements with Existing Authorized Dealers, Existing Authorized Dealers may use
the Licensed Marks, Compound Marks, Transition Compound Marks or the Transition
Logos in accordance with the grant set forth in Section 2. Other than as set
forth herein, Authorized Dealers may only use the relevant Lucent or Agere
BusinessPartner Logo in accordance with the terms of this Agreement. Licensee
shall take all appropriate steps to restrain any Authorized Dealer from
violating the terms and conditions of this Agreement, including but not limited
to termination of Licensee's agreement with any such Authorized Dealer, or
commencement of legal action against any such Authorized Dealer. Licensee shall
provide a list of all Existing Authorized Dealers to Licensor by October 1,
2001.
(b) Licensee may submit a written request, at any time (in accordance
with the notice provisions of Article XI below), for Licensor's consent to add
an Existing Authorized Dealer that was inadvertently omitted from the list
provided pursuant to Section 3.3(a) or to add a New Authorized Dealer to such
list. Licensor's consent shall be deemed to be given as to the Existing
Authorized Dealers. Licensor shall have thirty (30) days to approve or
disapprove of the New Authorized Dealer. If Licensor does not respond to
Licensee within such thirty (30) days, the New Authorized Dealer shall be deemed
approved by Licensor. A New Authorized Dealer shall be subject to the terms and
conditions of this Agreement and, if it is a BusinessPartner, shall satisfy the
guidelines attached as Schedule G hereto.
3.4 BUSINESSPARTNERS. Subject to the contractual obligations under the
existing agreements with BusinessPartners (as defined herein), neither Licensee
nor any of its BusinessPartners may continue to use the Lucent BusinessPartner
logo set forth in Schedule H after July 1, 2002. Thereafter, only the Agere
BusinessPartner logo may be used.
ARTICLE IV
LICENSES TO OTHERS AND OWNERSHIP
4.1 EXCLUSIVE LICENSE. Licensor agrees that it will not license
the Compound Marks, the Transition Compound Marks or the Transition Logos
to third parties.
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4.2 RETENTION OF RIGHTS BY LICENSOR. Except as otherwise expressly
provided in this Agreement, Licensor shall retain all rights in and to the
Licensed Marks, alone and as used in the Transition Logos, including without
limitation:
(a) All rights of ownership in and to the Licensed Marks;
(b) The right to use (including the right of Licensor's Affiliates
and Subsidiaries to use) the Licensed Marks, either alone or in
combination with other marks, in connection with the marketing,
offer or provision of any product or service, including any product
or service which competes with Agere Products; and
(c) The right to license others to use the Licensed Marks.
4.3 RETENTION OF RIGHTS BY LICENSEE. Except as otherwise expressly
provided in this Agreement, Licensee shall retain all rights in and to the Agere
Marks, alone and as used in the Transition Logos, including without limitation:
(a) All rights of ownership in and to the Agere Marks;
(b) The right to use (including the right of Licensee's Affiliates
and Subsidiaries to use) the Agere Marks, either alone or in
combination with other marks, in connection with the marketing,
offer or provision of any product or service, including any product
or service which competes with Lucent products; and
(c) The right to license others to use the Agere Marks.
4.4 JOINT VENTURES OF LICENSEE. The Parties recognize that Licensee is a
party to certain joint ventures or holds an equity investment in certain
companies which may have heretofore been authorized by written agreement to use
the Licensed Marks. Licensee nevertheless agrees that (i) any use of the
Licensed Marks in the corporate name of any joint venture/company should not
continue beyond the earlier of the Distribution Date or six (6) months after the
Closing Date; (ii) any use of the Licensed Marks by such joint
ventures/companies in the manufacturing, sale, provision, distribution or
marketing of any product or service should not continue beyond the Initial
Period; and (iii) any use of the Transition Logos by such joint
ventures/companies in the manufacturing, sale, provision, distribution or
marketing of any product or service should not continue beyond the Transition
Period. Accordingly, to the extent permitted by Licensee's existing agreement
with such a joint venture/company, or joint venture partner, Licensee shall
withdraw any authority granted to the joint venture/company to use the Licensed
Marks and Transition Logos beyond the periods set forth above in this Section.
In those cases where Licensee's existing agreement with a joint venture/company
does not permit Licensee to withdraw such authority, Licensee shall use
commercially reasonable efforts to cause any joint venture/company to which it
is a party/investor to cease using the Licensed Marks and Transition Logos
beyond such periods.
ARTICLE V
LICENSED TERRITORY
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5.1 WORLD-WIDE LICENSES. (a) To the knowledge of the marketing
communications organization of Agere, Agere represents that Agere Companies, by
themselves or through their Existing Authorized Dealers and other business
partners, collectively have in place either directly or indirectly, as of the
Effective Date, (i) the means of marketing, or (ii) bona-fide, good faith plans
to commence means of marketing, or (iii) have contracted to grant rights to
initiate such means or plans with respect to, Agere Products throughout the
world, subject to the laws of the United States and the various foreign
jurisdictions. Notwithstanding the foregoing, Agere does not have (and shall not
be required to have) such means or such plans for certain countries in the
African territory.
(b) In light of the foregoing, the licensed territory for the
licenses granted in Article II of this Agreement shall include the world. To the
extent that Agere does not have in place one of the above (i) through (iii) in a
particular country as of the Effective Date, the foregoing license shall exclude
such particular country and Agere may only use the Licensed Marks and the
Transition Logos (alone or in compound marks), subject to the terms and
conditions of this Agreement, in such particular country provided that the
failure to do so detrimentally affects Licensee's ability to market, offer or
sell Agere Products in such particular country and that Licensee uses its best
efforts to cease such use as soon as commercially possible.
ARTICLE VI
QUALITY CONTROL
6.1 CONTROL SPECIFICATIONS. (a) Licensee shall use the Licensed Marks and
the Transition Logos only in connection with the manufacture, repair,
maintenance, support, marketing, distribution, promotion, and sale of Agere
Products that meet any one of: (i) the Control Specifications, or (ii)
specifications pursuant to the Supply Agreement, or (iii) specifications
otherwise furnished by Lucent, (the specifications of one of (i), (ii) or (iii)
referred to herein as "Applicable Specifications"), unless an Agere Product that
is so marked and does not meet such specifications ("At-risk Product") is
provided to a customer where such customer has knowledge that such product does
not meet such specifications. Licensee shall use good faith efforts to provide
the At-risk Product to such customer with documentation stating that such
products are being provided with no warranty, implied or express. The Control
Specifications shall be treated as proprietary information and shall be subject
to the confidentiality provisions of Article VIII of the S&D Agreement (except
that Licensee may disclose such Control Specifications to its Authorized
Dealers). Such "At-risk Products" shall be deemed to have met the Applicable
Specifications.
(b) Subject to clause 6.1(a), Licensee shall not offer any Agere
Product under the Licensed Marks or the Transition Logos unless it fully meets
the relevant Applicable Specifications and shall not provide to any third party
any product which does not meet the Applicable Specifications without first
obliterating the Licensed Marks or the Transition Logos.
(c) Licensor declares that on the Effective Date the quality
standards and controls
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applied by Licensee, as evidenced by the sample Agere Products made available
for inspection and approved by Licensor, are deemed to be consistent with the
Applicable Specifications.
6.2 CUSTOMER CARE PROVISIONS. If Licensor receives a customer complaint
regarding an Agere Product which is branded under the Licensed Marks and
Transition Logos pursuant to this Agreement and which may or may not be under
the Agere warranty at the time of the complaint, it will promptly notify
Licensee. Licensee will use reasonable commercial efforts to resolve any such
complaints as it would resolve complaints received for products branded under
the Agere mark under warranty or for products branded under the Agere mark that
are not under warranty, as the case may be.
6.3 QUALITY CONTROL REVIEWS; RIGHT OF INSPECTION.
(a) Until July 1, 2002, for the periods of time described in clause 2.1
during which Licensee is marking newly manufactured, commercially available
Agere Products with Licensed Marks or Transition Logos that are visible to the
consumer, at Licensor's request and as reasonably necessary, Licensee agrees to
furnish or make available for inspection to representatives of Licensor having
the proper technical knowledge and qualifications ("Quality Control
Representatives"), subject to the provisions herein: (i) samples of any such
Agere Product being marked (other than chips manufactured for Licensee's
customers under confidentiality restrictions) for inspections, surveys, tests
and reviews to assure conformance with the Applicable Specifications; (ii)
performance data in its control relating to the conformance of such Agere
Products with the Applicable Specifications, and (iii) samples of marketing
materials, product packaging labels, instruction and warranty materials that
bear the Licensed Marks or the Transition Logos for such Agere Products.
(b) If the aforementioned inspection is not performed at a Licensee's
facility and is not adequate to determine compliance of specific Agere
Product(s) with the Applicable Specifications, Licensor shall have the right to
request in writing reasonable access by the Quality Control Representatives to
the appropriate manufacturing facility of Licensee. Such request will set forth
in reasonable detail the reasons why the aforementioned inspection was not
adequate to determine compliance and what specifically of the aforementioned (i)
through (iii) needs to be furnished at the facility. Upon ten (10) days after
receipt of such request, Licensee shall provide Quality Control Representatives
with access during regular business hours to inspect the furnished material for
such specific products at Licensee's manufacturing facilities, in accordance
with Licensor's request, solely to determine compliance.
(c) Any information, in whatever form, provided to or learned by Licensor
or by Quality Control Representatives shall be used only to determine compliance
with the Applicable Specifications and shall be treated as proprietary
information subject to the confidentiality provisions of Article VIII of the S&D
Agreement. Such Quality Control Representatives shall have entered into an
appropriate confidentiality agreement prior to their inspection.
(d) Licensee shall so furnish the foregoing and provide such access to the
full extent permitted under its contractual commitments. Licensor shall not
reverse engineer any of the samples so furnished unless the reverse engineering
is necessary to determine compliance with
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the Applicable Specifications and then, only to the extent permitted under
Licensee's contractual commitments. Licensor may independently, and at its own
expense, conduct reasonable customer satisfaction surveys in a bona fide attempt
to determine if Licensee and its Authorized Dealers are meeting the Applicable
Specifications. Licensee shall cooperate with Licensor fully in the distribution
of such surveys. Licensor shall, at the request of Licensee, provide Licensee
with copies of customer surveys used by Licensor to determine if Licensee is
meeting the Applicable Specifications. If Licensee learns that it or any of its
Authorized Dealers is not complying with the Applicable Specifications, it shall
notify Licensor and the provisions of Article IX (and of Section 3.3(a) in the
case of Existing Authorized Dealers) shall apply to such noncompliance.
(e) Notwithstanding the foregoing, until July 1, 2002, for the periods of
time described in clause 2.1 during which Licensee is marking newly
manufactured, commercially available Agere Products using Licensed Marks or
Transition Logos that are visible to the consumer, Licensor shall have the right
to so inspect with respect to a specific Agere Product in the event of an
epidemic failure of such product. An epidemic failure shall mean failures of
such product that (i) appear to be related to the same or similar root cause but
do not include failures due to a purchaser's supplied design, instruction or
documentation, (ii) affect a significant number of purchasers of such product,
(iii) require a change to rectify one of the following conditions, and (iv)
significantly detract from or disparage Licensor, its businesses or its business
reputation, its good will or the reputation and goodwill of the Licensed Marks.
An epidemic failure requires changes to rectify: (i) a hazardous electrical or
mechanical condition; (ii) a condition causing a significant loss of service to
end-users or interoperability as a result of the failure of the product to
perform in accordance with its specification; or (iii) a condition causing a
significant degradation in performance from the specifications. In such cases,
Licensee shall bear all costs associated with monitoring compliance with and
enforcing quality control.
6.4 COSTS. Except as provided in Section 6.3(e) above, all reasonable
costs associated with monitoring compliance with and enforcing these quality
control provisions shall be borne by Licensee except that (i) each Party shall
be responsible for all costs it incurs for travel and living arrangements and
(ii) Licensor and Licensee shall bear equally such costs incurred for reverse
engineering purposes. Licensor shall provide to Licensee a quarterly invoice
itemizing with reasonable specificity the costs incurred during the prior
quarter, which shall be due and payable by Licensee within thirty (30) days of
receipt.
ARTICLE VII
[INTENTIONALLY OMITTED]
ARTICLE VIII
PROTECTION OF LICENSED SERVICE MARKS AND THE TRANSITION LOGOS
8.1 OWNERSHIP AND RIGHTS. (a) Licensee admits the validity of, and agrees
not to challenge the ownership or validity of, the Licensed Marks alone and in
the Transition Logos. Licensee shall not disparage, dilute or adversely affect
the validity of the Licensed Marks or the Transition Logos. Licensee agrees that
any and all goodwill and other rights that Licensee may
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acquire by the use of the Licensed Marks alone and in the Transition Logos shall
inure to the sole benefit of Licensor. Licensee will not grant or attempt to
grant a security interest in the Licensed Marks or Transition Logos, or this
Agreement, or to record any such security interest in the United States Patent
and Trademark Office or elsewhere, against any trademark application or
registration belonging to Licensor. To the extent necessary, Licensee agrees to
execute all documents reasonably requested by Licensor to effect further
registration of, maintenance and renewal of the Licensed Marks and recordal of
the license relationship between Licensor and Licensee and recordal of Licensee
as a Registered User. 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.
(b) Licensor admits the validity of, and agrees not to challenge the
ownership or validity of, the Agere Marks alone and in the Transition Logos.
Licensor shall not disparage, dilute or adversely affect the validity of the
Agere Marks or the Transition Logos. Licensor agrees that any and all goodwill
and other rights that Licensor may acquire by the use of the Agere Marks alone
and in the Transition Logos shall inure to the sole benefit of Licensee.
Licensor will not grant or attempt to grant a security interest in the Agere
Marks or Transition Logos, or this Agreement, or to record any such security
interest in the United States Patent and Trademark Office or elsewhere, against
any trademark application or registration belonging to Licensee. To the extent
necessary, Licensor agrees to execute all documents reasonably requested by
Licensee to effect further registration of, maintenance and renewal of the Agere
Marks.
8.2 SIMILAR MARKS. (a) Licensee further agrees not to register in any
country any Mark resembling or confusingly similar to the Licensed Marks and not
to use the Licensed Marks or any part thereof as part of its corporate name
(except as otherwise expressly permitted hereunder), nor use any Mark
confusingly similar, deceptive or misleading with respect to the Licensed Marks
or which dilute the Licensed Marks. If any application for registration is, or
has been, filed in any country by Licensee which relates to any Mark which in
the sole opinion of Licensor is confusingly similar, deceptive or misleading
with respect to the Licensed Marks, or which dilutes the Licensed Marks,
Licensee shall, at Licensor's sole discretion, immediately abandon any such
application or registration or assign it to Licensor. If Licensee uses any Mark
which in the sole opinion of Licensor is confusingly similar, deceptive or
misleading with respect to the Licensed Marks, or which dilutes the Licensed
Marks, or if Licensee uses the Licensed Marks in connection with any product, or
in connection with any service not specifically authorized hereunder, Licensee
shall, immediately upon receiving a written request from Licensor, permanently
cease such use.
(b) The Parties agree that neither will apply to register the
Transition Logos, and that Licensee will have the sole and exclusive right to
use and register the Agere Marks.
8.3 INFRINGEMENT. In the event that Licensee learns of any infringement
or threatened infringement of the Licensed Marks (either alone or as contained
in Compound Marks) or the Transition Logos (either alone or as contained in
Transition Compound Marks), or any unfair competition, passing-off or dilution
with respect to the same, or any third party alleges or claims that said
Licensed Marks are liable to cause deception or confusion to the public, or is
liable to
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dilute or infringe any right of such third party, Licensee shall immediately
notify Licensor or its authorized representative giving particulars thereof and
Licensee shall provide necessary information and assistance to Licensor or its
authorized representatives in the event that Licensor decides that proceedings
should be commenced or defended. Licensee's reasonable expenses in providing
such assistance shall be borne by Licensor. Licensor shall have exclusive
control of any litigation, opposition, cancellation or related legal
proceedings. The decision whether to bring, defend, maintain or settle any such
proceedings shall be at the exclusive option and expense of Licensor, and all
recoveries shall belong exclusively to Licensor. Licensee will not initiate any
such litigation, opposition, cancellation or related legal proceedings in its
own name. Nothing in this Agreement shall require or be deemed to require
Licensor to enforce the Licensed Marks or the Transition Logos against others.
Nothing herein will limit Licensee's ability to initiate any litigation,
opposition, cancellation or related legal proceedings in its own name with
regard to those elements of the Compound Marks, Transition Compound Marks and
Transition Logos owned exclusively by Licensee.
8.4 COMPLIANCE WITH LAWS. In the performance of this Agreement, Licensee
shall comply with all applicable laws and regulations, including those laws and
regulations particularly pertaining to the proper use and designation of Marks.
Should Licensee be or become aware of any applicable laws or regulations which
are inconsistent with the provisions of this Agreement, Licensee shall promptly
notify Licensor of such inconsistency. In such event, Licensor may, at its
option, either waive the performance of such inconsistent provisions, or
negotiate with Licensee to make changes in such provisions to comply with
applicable laws and regulations.
ARTICLE IX
TERMINATION
9.1 BREACH BY LICENSEE. If Licensor becomes aware that Licensee or any
Authorized Dealer has breached this Agreement in any of the following ways (a)
through (h), Licensor shall notify Licensee in writing, setting forth in
reasonable detail, a written description of the breach and suggestions for
curing such breach. Licensee shall then have forty-five (45) days after receipt
of such notice ("Cure Period") to remedy or submit to Licensor a written plan,
acceptable to Licensor (acting reasonably), to remedy such breach. If the
identified breach continues beyond the Cure Period or is not corrected pursuant
to the submitted plan, Licensor may terminate rights granted under this
Agreement at any time, except as otherwise provided herein.
(a) Except as otherwise provided herein, Licensee's or any Authorized
Dealer's use of the Licensed Marks or the Transition Logos contrary to the
provisions of this Agreement to the material detriment of Lucent as determined
solely by Lucent (acting reasonably), provided, however, that (i) if such use
pertains to a particular product(s) or service(s), such use shall be grounds for
termination only as to that particular product(s) or service(s); (ii) such
continued use in connection with such product(s) or service(s) shall be grounds
for termination of the Agreement as to all Agere Products or services; and (iii)
such use by a particular Authorized Dealer shall be grounds for termination only
as to that particular Authorized Dealer; further provided that a pattern of
violations without cure of any provision of this Agreement by a significant
number of Licensee's Authorized Dealers shall be grounds for termination as to
those
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Authorized Dealers, or all Authorized Dealers, at the sole discretion of
Licensor.
(b) Licensee's or any Authorized Dealer's use of a Licensed Mark or the
Transition Logos for the offering, marketing or provision of, any Agere Product
that fails to meet the Applicable Specifications; provided, however, that (i)
the failure of a particular product to comply with the Applicable Specifications
shall be grounds for termination only as to that product and only until the
Applicable Specifications are complied with; further provided that continued use
of the Licensed Marks or the Transition Logos by Licensee in connection with
such product that fails to comply with the Applicable Specifications shall be
grounds for termination of the Agreement as to all Agere Products, and (ii)
except as otherwise provided in Paragraph (a) above, the failure of an
Authorized Dealer to satisfy the Applicable Specifications shall be grounds for
termination only as to that particular Authorized Dealer and product;
(c) Licensee's refusing or neglecting a request by Licensor for
access to Licensee's products or marketing materials pursuant to clause
6.3;
(d) Unless otherwise permitted herein, Licensee's licensing, assigning,
transferring, disposing of or relinquishing (or purporting to license, assign,
transfer, dispose of or relinquish) any of the rights granted in this Agreement
to others;
(e) The occurrence of a Change of Control of Agere or of an Affiliate of
Agere; provided, however, that a Change of Control of an Affiliate of Agere
shall be grounds for termination of this Agreement only as to that Affiliate and
Persons controlled by that Affiliate;
(f) Licensee's marketing or sale of any such co-branded completed product
or service, or entering into any such co-branding agreement, contrary to the
provisions of Section 2.9 provided, however, that such marketing, sale or
entering into such agreement shall be grounds for termination only as to the
particular product or service;
(g) The bankruptcy or insolvency of Licensee; provided, however, that the
bankruptcy or insolvency of an Affiliate or Subsidiary of Licensee shall be
grounds for termination of this Agreement only as to that Affiliate or
Subsidiary; or
(h) Licensee's failure to obtain Licensor's permission to sponsor any
undertaking as provided in Section 2.1(a) (ix) of this Agreement.
9.2 TERMINATION OBLIGATIONS. In the event this Agreement is
terminated pursuant to this Article:
(a) Licensee and all Authorized Dealers (or such of the foregoing as to
which this Agreement is terminated) shall immediately cease all use of the
Licensed Marks or the Transition Logos upon notice of termination; provided,
however, that nothing herein shall be construed to prohibit Licensee from making
truthful statements of fact regarding its past affiliation with Licensor, so
long as such statements are not likely to cause confusion, mistake or deception.
(b) Licensee and all Authorized Dealers (or such of the foregoing as to
which this
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Agreement is terminated) shall have no further rights under this Agreement,
except the license provided in Section 2.7, and no further obligations (except
as noted below in Section 9.2(c)).
(c) The confidentiality provisions with respect to a Party's proprietary
information shall survive any termination of this Agreement.
ARTICLE X
INDEMINITIES
10.1 LICENSEE'S INDEMNIFICATION. Except as provided in Section 10.2
below, Licensee shall defend and hold Licensor and its Affiliates ("Lucent
Indemnitees") harmless against all claims, suits, proceedings, costs, damages
and judgments incurred or claimed by third parties, whether for personal injury
or otherwise, arising from or in connection with Licensee's or any Authorized
Dealer's, manufacture, marketing, sale, or use of Agere Products that bear the
Licensed Marks or the Transition Logos after the Effective Date, and shall
indemnify each Lucent Indemnitee for all damages and costs finally awarded by a
court of competent jurisdiction and reasonable expenses (including reasonable
attorneys' fees) due to (1) such use, sale, lease or marketing and (2) for any
improper or unauthorized use of the Licensed Marks or the Transition Logos by
Licensee or its Authorized Dealers on products or services that are not Agere
Products. Licensee's obligation under this clause 10.1 shall be conditioned
upon: (i) Licensor giving Licensee written prompt notice of any such claim,
suit, or proceeding; (ii) Licensee having full and complete control of the
defense and/or settlement thereof, including appeals; (iii) each Lucent
Indemnitee cooperating fully with Licensee to facilitate the defense or
settlement of such claim; and (iv) such claim, suit or proceeding being brought
against the Lucent Indemnitees (and costs, losses and damages being incurred by
the Lucent Indemnitees) solely by reason of the branding of the Agere Product or
other product or service with the Licensed Marks or the Transition Logos and
not, for example, due to any other act or involvement, or alleged act or
involvement, by the Lucent Indemnitees.
10.2 NOTICE. Licensee shall notify Licensor, in writing, in the event
that any third party claims, by suit, proceeding, action or otherwise, that
Licensee's use of the Licensed Marks, alone or as used in the Transition Logos
in connection with Agere Products as provided in this Agreement constitutes or
amounts to a trademark or service mark infringement, unfair competition or
dilution, and, at Licensor's option, Licensee may be directed to surrender
control of the defense of such claims to Licensor, in which case any cash
payment portion of a settlement to be paid by Licensee must be mutually agreed
to by Licensee and Licensor. Further, to the extent that the provisions of this
Article X conflict with provisions of the Supply Agreement, those other
provisions shall govern in place of this Article X.
ARTICLE XI
NOTICES
All notices or other communications under this Agreement shall be in
writing and shall be deemed to be duly given when (a) delivered in person, or
(b) sent by telecopy, telegram or facsimile, or (c) deposited in the United
States mail or private express mail, postage prepaid,
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addressed as follows:
(i) If to Licensor:
Lucent Technologies Inc.
Attn: Senior Vice President and General Counsel
Room 6A-406
600 Mountain Avenue
Murray Hill, New Jersey 07974-0636
Tel: 908-582-8503
Fax: 908-582-6130
with a copy to:
Lucent Technologies Inc.
Attn: R. Holland Campbell
Corporate Counsel, Trademarks and Copyrights
184 Liberty Corner Road
Warren, New Jersey 07059
Tel: 908-580-5901
Fax: 908-580-7466
(ii) If to Licensee:
Agere Systems Inc.
Attn: General Counsel
555 Union Blvd.
Allentown, PA 18109
with a copy to:
Agere Systems Inc.
Attn: Gerard deBlasi
Vice President
Two Oak Way
Berkeley Heights, New Jersey 07922
Tel. No.:
Fax No.:
Either party may, by notice to the other party, change the address to which such
notices are to be given.
ARTICLE XII
COMPLIANCE WITH LAW
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12.1 GENERAL. Nothing in this Agreement shall be construed to prevent
Licensor or Licensee from complying fully with all applicable laws and
regulations, whether now or hereafter in effect.
12.2 GOVERNMENTAL LICENSES, PERMITS AND APPROVALS. Licensee, at its
expense, shall be responsible for obtaining and maintaining all licenses,
permits and approvals which are required by all Governmental Authorities with
respect to this Agreement, and to comply with any requirements of such
Governmental Authorities for the registration or recording of this Agreement.
Licensee shall furnish to Licensor written evidence from such Governmental
Authorities of any such licenses, permits, clearances, authorizations,
approvals, registration or recording.
ARTICLE XIII
MEDIATION AND DISPUTE RESOLUTION
13.1 DISPUTES. The provisions set forth in this Article shall apply to all
disputes, controversies or claims (whether arising in contract, tort or
otherwise) that may arise out of or relate to, or arise under or in connection
with this Agreement.
13.2 ESCALATION; MEDIATION.
(a) It is the intent of the Parties to use their respective
reasonable best efforts to resolve expeditiously and on a mutually acceptable
negotiated basis any dispute, controversy or claim between them with respect to
the matters covered hereby that may arise from time to time. In furtherance of
the foregoing, any party involved in a dispute, controversy or claim may deliver
a notice (an "Escalation Notice") demanding an in-person meeting involving
representatives of the Parties at a senior level of management of the Parties
(or if the Parties agree, of the appropriate strategic business unit or division
within such entity). A copy of any such Escalation Notice shall be given to the
General Counsel, or like officer or official, of each party involved in the
dispute, controversy or claim (which copy shall state that it is an Escalation
Notice pursuant to this Agreement). Any agenda, location or procedures for such
discussions or negotiations between the Parties may be established by the
Parties from time to time; provided, however, that the Parties shall use their
reasonable best efforts to meet within thirty (30) days of the Escalation
Notice.
(b) If the Parties are not able to resolve the dispute, controversy
or claim through the escalation process referred to above, then the matter shall
be referred to mediation. The Parties shall retain a mediator to aid in their
discussions and negotiations by informally providing advice to the Parties. Any
opinion expressed by the mediator shall be strictly advisory and shall not be
binding on the Parties, nor shall any opinion expressed by the mediator be
admissible in any other proceeding. The mediator may be chosen from a list of
mediators previously selected by the Parties or by other agreement of the
Parties. Costs of the mediation shall be borne equally by the Parties involved
in the matter, except that each Party shall be responsible for its own expenses.
Mediation shall be a prerequisite to the commencement of any action by either
Party.
13.3 COURT ACTIONS.
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(a) In the event that any party, after complying with the provisions
set forth in Section 13.2 above, desires to commence an action, such party may
submit the dispute, controversy or claim (or series of related disputes,
controversies or claims) giving rise thereto to a court of competent
jurisdiction.
(b) Unless otherwise agreed in writing, the Parties will continue to
provide service and honor all other commitments under this Agreement during the
course of dispute resolution pursuant to the provisions of this Article with
respect to all matters not subject to such dispute, controversy or claim.
ARTICLE XIV
MISCELLANEOUS
14.1 COUNTERPARTS; ENTIRE AGREEMENT; CORPORATE POWER.
(a) This Agreement may be executed in one or more counterparts, all
of which shall be considered one and the same agreement.
(b) This Agreement and any exhibits, schedules and appendices hereto
contain the entire agreement between the Parties with respect to the subject
matter hereof, supersede all previous agreements, negotiations, discussions,
writings, understandings, commitments and conversations with respect to such
subject matter and there are no agreements or understandings between the Parties
other than those set forth or referred to herein.
(c) Each Party represents as follows:
(i) each has the requisite corporate or other power and
authority and has taken all corporate or other action
necessary in order to execute, deliver and perform this
Agreement and to consummate the transactions contemplated
hereby; and
(ii) this Agreement has been duly executed and delivered by it
and constitutes a valid and binding agreement of it
enforceable in accordance with the terms thereof.
14.2 GOVERNING LAW. This Agreement shall be governed by and construed and
interpreted in accordance with the laws of the State of New York, United States
of America, (exclusive of its conflict of law provisions) applicable to
contracts to be performed solely within the State of New York, as to all
matters, including matters of validity, construction, effect, enforceability,
performance and remedies.
14.3 ASSIGNABILITY; SUCCESSORS. This Agreement shall be binding upon and
inure to the benefit of the Parties hereto and their respective successors and
assigns; provided, however, that neither Party may assign this Agreement, in
whole or in part, or its respective rights or obligations without the prior
written consent of the other Party.
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14.4 RELATIONSHIP OF THE PARTIES; THIRD PARTY BENEFICIARIES.
(a) Nothing in this Agreement shall be deemed or construed by the
Parties or any third party as creating the relationship of principal and agent,
partnership or joint venture between the Parties, it being understood and agreed
that no provision contained herein, and no act of the Parties, shall be deemed
to create any relationship between the Parties other than the relationship of
independent contractor.
(b) The provisions of this Agreement are solely for the benefit of
the Parties and are not intended to confer upon any Person except the Parties
any rights or remedies hereunder, and there are no third party beneficiaries of
this Agreement, and this Agreement shall not provide any third Person with any
remedy, claim, liability, reimbursement, claim of action or other right in
addition to those existing without reference to this Agreement.
14.5 SEVERABILITY. If any provision of this Agreement or the application
thereof to any Person or circumstance is determined by a court of competent
jurisdiction to be invalid, void or unenforceable, the remaining provisions
hereof, or the application of such provision to Persons or circumstances or in
jurisdictions other than those as to which it has been held invalid or
unenforceable, shall remain in full force and effect and shall in no way be
affected, impaired or invalidated thereby, so long as the economic or legal
substance of the transactions contemplated hereby or thereby, as the case may
be, is not affected in any manner adverse to any party. Upon such determination,
the Parties shall negotiate in good faith in an effort to agree upon such a
suitable and equitable provision to effect the original intent of the Parties.
14.6 FORCE MAJEURE. No Party shall be deemed in default of this Agreement
to the extent that any delay or failure in the performance of its obligations
under this Agreement results from any cause beyond its reasonable control and
without its fault or negligence, such as acts of God, acts of civil or military
authority, embargoes, epidemics, war, riots, insurrections, fires, explosions,
earthquakes, floods, unusually severe weather conditions, labor problems or
unavailability of parts or raw materials, or, in the case of computer systems,
any failure in electrical or air conditioning equipment. In the event of any
such excused delay, the time for performance shall be extended for a period
equal to the time lost by reason of the delay.
14.7 HEADINGS. The article, section and paragraph headings contained in
this Agreement are for reference purposes only and shall not affect in any way
the meaning or interpretation of this Agreement.
14.8 WAIVERS OF DEFAULT. Waiver by any party of any default by the other
party of any provision of this Agreement shall not be deemed a waiver by the
waiving party of any subsequent or other default, nor shall it prejudice the
rights of the other party.
14.9 INJUNCTIVE RELIEF. In the event of any actual or threatened default
in, or breach of, any of the terms, conditions and provisions of this Agreement,
the Party or Parties who are or are to be thereby aggrieved shall have the right
to injunctive or other equitable relief of its rights under this Agreement, in
addition to any and all other rights and remedies at law or in equity, and
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all such rights and remedies shall be cumulative. The Parties agree that the
remedies at law for any breach or threatened breach, including monetary damages,
are inadequate compensation for any loss and that any defense in any action for
injunctive relief that a remedy at law would be adequate is waived. Any
requirements for the securing or posting of any bond with such remedy are
waived.
14.10 AMENDMENTS. No provision of this Agreement shall be deemed waived,
amended, supplemented or modified by any party, unless such waiver, amendment,
supplement or modification is in writing and signed by the authorized
representative of the party against whom it is sought to enforce such waiver,
amendment, supplement or modification.
14.11 INTERPRETATION. Words in the singular shall be held to include the
plural and vice versa and words of one gender shall be held to include the other
genders as the context requires. The terms "hereof", "herein", and "herewith"
and words of similar import shall, unless otherwise stated, be construed to
refer to this Agreement as a whole (including all of the schedules, exhibits and
appendices hereto) and not to any particular provision of this Agreement.
Article, section, exhibit, schedule and appendix references are to the articles,
sections, exhibits, schedules and appendices to this Agreement unless otherwise
specified. The word "including" and words of similar import when used in this
Agreement shall mean "including, without limitation," unless the context
otherwise requires or unless otherwise specified. The word "or" shall not be
exclusive. Unless expressly stated to the contrary in this Agreement, all
references to "the date hereof," "the date of this Agreement," "hereby" and
"hereupon" and words of similar import shall all be references to the Effective
Date.
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<PAGE> 27
IN WITNESS WHEREOF, the Parties have caused this Trademark License
Agreement to be executed by their duly authorized representatives as of the
Effective Date.
LUCENT TECHNOLOGIES INC. AGERE SYSTEMS INC.
By: /s/ DANIEL P. MCCURDY By: /s/ GERARD A. DEBLASI
--------------------------- -----------------------
Name: Daniel P. McCurdy Name: Gerard A. deBlasi
------------------------- ---------------------
Title: President - Intellectual Property Business Title: VP - Law,
------------------------------------------- Intellectual
Property
---------------------
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