Intellectual Property Agreement - The Dun & Bradstreet Corp. and The New Dun & Bradstreet Corp.
INTELLECTUAL PROPERTY AGREEMENT
This INTELLECTUAL PROPERTY AGREEMENT (the "Agreement") is
dated as of June 30, 1998, between THE DUN & BRADSTREET CORPORATION, a Delaware
corporation (the "Corporation"), and THE NEW DUN & BRADSTREET CORPORATION, a
Delaware corporation ("New D&B") (each a "Party" and collectively, the
"Parties").
RECITALS
WHEREAS, the Corporation, acting through its direct and
indirect subsidiaries, currently owns various intellectual property rights used
in connection with a number of businesses, which businesses are described in the
Distribution Agreement dated as of June 30, 1998, between the Corporation and
New D&B (the "Distribution Agreement"); and
WHEREAS, the Parties hereto have determined that this
Agreement is appropriate in order to effectuate the purposes of the Distribution
Agreement as described therein, and in order to promote a clear understanding of
their respective intellectual property rights subsequent to the execution of
said Distribution Agreement and the Distribution (as defined therein)
contemplated thereby;
NOW, THEREFORE, in consideration of the mutual agreements,
undertakings and covenants herein and therein, the sufficiency of which is
hereby acknowledged, the Parties hereby agree as follows:
ARTICLE I. DEFINITIONS
Section 1.01. Except as may be set forth herein, all defined
terms shall have the meaning set forth in Article I, Section 1.1 of the
Distribution Agreement.
Section 1.02. "Infringement" shall mean any infringement,
imitation, dilution, distortion, misappropriation or other unauthorized use or
conduct in violation or derogation of the rights in question.
Section 1.03. "Intellectual Property" shall mean all
intellectual property rights related to the Assets or Businesses of either the
Corporation or New D&B as defined in the Distribution Agreement, as they are now
or may in future exist or be conducted, including without limitation:
a. any and all rights, privileges and priorities arising
under the laws or treaties of the United States, any
state, territory or possession thereof, any other
country or political subdivision or territory
thereof, or the European Community, relating to
intellectual property, including patents, copyrights,
trade names, trademarks, service marks, mask works,
trade secrets,
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inventions, databases, names and logos, trade dress,
technology, know-how, and other proprietary
information and licenses from third persons granting
the right to use any of the foregoing, including all
registrations and applications for any of the
foregoing that have been issued by or filed with the
appropriate authorities, any common-law rights
arising from the use of the foregoing, any rights
commonly known as "industrial property rights" or the
"moral rights" of authors relating to the foregoing,
all rights of renewal, continuations, divisions,
extensions and the like regarding the foregoing and
all claims, causes of action, or other rights arising
out of or relating to any actual or threatened
Infringement by any person relating to the foregoing;
b. all computer applications, programs and other
software, including without limitation operating
software, network software, firmware, middleware, and
design software, all design tools, systems
documentation and instructions, databases, and
related items except to the extent that they may be
more specifically addressed in the Data Services
Agreement; and
c. all cost information, sales and pricing data,
customer prospect lists, supplier records, customer
and supplier lists, customer and vendor data,
correspondence and lists, product literature,
artwork, design, development and manufacturing files,
vendor and customer drawings, formulations and
specifications, quality records and reports and other
books, records, studies, surveys, reports, plans and
documents.
Section 1.04. "Intellectual Property Disputes" shall mean any
and all controversies, disputes or claims arising out of, in connection with, or
in relation to the interpretation, performance, nonperformance, validity or
breach of this Agreement or otherwise arising out of, or in any way related to
this Agreement or the Intellectual Property, including, without limitation, any
and all claims based on contract, tort, statute or constitution.
ARTICLE II. OWNERSHIP OF INTELLECTUAL PROPERTY.
General Principles of Allocation and Recognition
Section 2.01. Without limiting any obligation or liability of
the Corporation under the Distribution Agreement or any Ancillary Agreement,
each of the Parties hereto acknowledges, recognizes and agrees that, after the
Distribution, the Corporation (or another member of the RHD Group) shall own all
right, title and interest in all Intellectual Property that (i) originated
primarily with the conduct of the RHD Business or primarily in connection with
the RHD Assets; (ii) was obtained by, or exclusively or primarily for the
conduct of, the RHD Business or in connection with the RHD Assets; (iii) was
developed exclusively or primarily for the conduct of the RHD Business or in
connection with the RHD Assets; (iv) arose from funding by, or exclusively or
primarily for the benefit of the conduct of, the RHD Business or in connection
with the RHD Assets; or (v) as of the Distribution Date is used or held for use
exclusively or primarily for the conduct of the RHD Business or in connection
with the RHD Assets. If a conflict exists between any of the subsections (i)
through (iv) of this Section or Section 2.02 on the one hand and subsection (v)
of this Section on the other hand, then subsection (v) of this Section 2.01
shall prevail.
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Section 2.02. Without limiting any obligation or liability of
New D&B under the Distribution Agreement or any Ancillary Agreement, and subject
to the provisions set forth in Article III below, each of the Parties hereto
acknowledges, recognizes and agrees that, after the Distribution, New D&B (or
another member of the New D&B Group) shall own all right, title and interest in
all Intellectual Property owned by the Corporation or any of its subsidiaries
immediately prior to the Distribution other than Intellectual Property described
in subsections (i) through (v) of Section 2.01.
Section 2.03. Reserved.
Section 2.04. Rights Arising in Future. Each of the Parties
hereto acknowledges, recognizes and agrees that, after the Distribution Date,
(i) any and all Intellectual Property created by or on behalf of a Party,
including common-law rights related thereto, shall belong solely and exclusively
to such Party; and (ii) any and all subsequent ownership, possession and use by
each Party of the Intellectual Property that it will own subsequent to the
Distribution pursuant to the terms of this Agreement (excluding any possession
or use pursuant to license granted by another Party), including common-law
rights related thereto, shall inure solely to such Party's own benefit.
Section 2.05. No Warranties. Each of the Parties hereto
understands and agrees that, except as otherwise expressly provided, no Party
hereto is, in this Agreement or in any other agreement or document contemplated
by this Agreement or otherwise, making any representation or warranty whatsoever
regarding the Intellectual Property, including, without limitation, as to title,
value or legal sufficiency. It is also agreed and understood that any and all
Intellectual Property assets either transferred or retained by the Parties, as
the case may be, shall be "as is, where is".
Section 2.06. Recognition of Non-Party Rights. The
recognition among the Parties of ownership of Intellectual Property rights under
Sections 2.01-2.04 of this Agreement is subject to all pre-existing rights,
obligations and restrictions of non-parties to this Agreement as of the
Distribution Date.
ARTICLE III. FURTHER ASSURANCES AND COOPERATION.
Section 3.01. Each Party hereto shall execute and deliver,
or cause to be executed and delivered, as and when reasonably requested by any
other Party hereto, all such documents and instruments and shall take, or cause
to be taken, all such further or other actions as such other Party may
reasonably deem necessary or desirable to effect the purposes of this Agreement
and/or to clarify, confirm and/or record the respective ownership rights of the
Parties as provided for in this Agreement.
Section 3.02. Each Party hereto shall reasonably cooperate
with the other Parties with respect to any government filings or any other
actions reasonably necessary to maintain, enforce and/or record the rights to
the Intellectual Property covered by this Agreement.
Section 3.03. Each Party hereto shall, upon the prior
written request of another Party, arrange for the provision of appropriate
copies of Records in its possession or control (or the originals thereof if the
Party making the request has a reasonable need for such originals) created
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prior to the Distribution Date and relating to the Intellectual Property, as
soon as reasonably practicable following the receipt of such request, but only
to the extent such items are not already in the possession or control of the
requesting Party.
ARTICLE IV. INDEMNIFICATION.
Section 4.01. Article III of the Distribution Agreement shall
govern the rights of the Corporation and New D&B with respect to indemnification
for any and all Indemnifiable Losses incurred by any Party related to the
Intellectual Property.
ARTICLE V. DISPUTE RESOLUTION.
Section 5.01. Article VI of the Distribution Agreement shall
govern the rights of the Corporation and New D&B with respect to dispute
resolution. The term "Agreement Dispute" in that Article shall be read to
include all Intellectual Property Disputes.
ARTICLE VI. MISCELLANEOUS.
Section 6.01. Complete Agreement; Construction. This
Agreement, the Schedules hereto, the Distribution Agreement and the Data
Services Agreement shall constitute the entire agreement between the Parties
with respect to the subject matter hereof and shall supersede all previous
negotiations, commitments and writings with respect to such subject matter. In
the event of any inconsistency between this Agreement and any Schedule hereto,
the Schedule shall prevail. Other than Sections 2.7, 2.14 and 4.5 of the
Distribution Agreement, which shall prevail over any inconsistent or conflicting
provisions in this Agreement notwithstanding any other provisions in this
Agreement to the contrary, in the event and to the extent that there shall be an
inconsistency between the provisions of this Agreement and the provisions of the
Distribution Agreement, this Agreement shall prevail.
Section 6.02. Other Agreements. This Agreement is not
intended to address, and should not be interpreted to address, the matters
specifically and expressly covered by the Distribution Agreement and/or other
Ancillary Agreements.
Section 6.03. Counterparts. This Agreement may be executed in
one or more counterparts, all of which shall be considered one and the same
agreement, and shall become effective when one or more such counterparts have
been signed by each of the Parties and delivered to the other Party.
Section 6.04. Survival of Agreements. Except as otherwise
contemplated by this Agreement, all covenants and agreements of the Parties
contained in this Agreement shall survive the Distribution Date.
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Section 6.05. Notices. All notices and other communications
hereunder shall be in writing and hand delivered or mailed by registered or
certified mail (return receipt requested) or sent by any means of electronic
message transmission with delivery confirmed (by voice or otherwise) to the
Parties at the following addresses (or at such other addresses for a Party as
shall be specified by like notice) and will be deemed given on the date on which
such notice is received:
To the Corporation:
R.H. Donnelley Corporation
One Manhattanville Road
Purchase, NY 10577
Telecopy: (914) 933-6899
Attn: Chief Legal Counsel
To New D&B:
The Dun & Bradstreet Corporation
One Diamond Hill Road
Murray Hill, NJ 07974
Telecopy: (908) 665-5827
Attn: Chief Legal Counsel
Section 6.06. Waivers. The failure of any Party to require
strict performance by any other Party of any provision in this Agreement will
not waive or diminish that Party's right to demand strict performance thereafter
of that or any other provision hereof.
Section 6.07. Amendments. Subject to the terms of Section
6.10 hereof, this Agreement may not be modified or amended except by an
agreement in writing signed by each of the Parties hereto.
Section 6.08. Assignment. This Agreement shall not be
assignable, in whole or in part, directly or indirectly, by any Party hereto
without the prior written consent of the other Party hereto, and any attempt to
assign any rights or obligations arising under this Agreement without such
consent shall be void.
Section 6.09. Successors and Assigns. The provisions to this
Agreement shall be binding upon, inure to the benefit of and be enforceable by
the Parties and their respective successors and permitted assigns.
Section 6.10. Termination. This Agreement may be terminated
and may be amended, modified or abandoned at any time prior to the Distribution
by and in the sole discretion of the Corporation without the approval of New D&B
or the shareholders of the Corporation. In the event of such termination, no
Party shall have any liability of any kind to any other Party or any other
person. After the Distribution, this Agreement may not be terminated except by
an agreement
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in writing signed by the Parties.
Section 6.11. Subsidiaries. Each of the Parties hereto shall
cause to be performed, and hereby guarantees the performance of, all actions,
agreements and obligations set forth herein to be performed by any Subsidiary of
such Party or by any entity that is contemplated to be a Subsidiary of such
Party on and after the Distribution Date.
Section 6.12. Third Party Beneficiaries. This Agreement is
solely for the benefit of the Parties hereto and their respective Subsidiaries
and Affiliates and should not be deemed to confer upon third Parties any remedy,
claim, liability, reimbursement, claim of action or other right in excess of
those existing without reference to this Agreement.
Section 6.13. Title and Headings. Titles and headings to
sections herein are inserted for the convenience of reference only and are not
intended to be a part of or to affect the meaning or interpretation of this
Agreement.
Section 6.14. GOVERNING LAW. THIS AGREEMENT SHALL BE GOVERNED
BY AND CONSTRUED IN ACCORDANCE WITH THE LAWS OF THE STATE OF NEW YORK APPLICABLE
TO CONTRACTS MADE AND TO BE PERFORMED IN THE STATE OF NEW YORK.
Section 6.15. Consent to Jurisdiction. Without limiting the
provisions of Article V hereof, each of the Parties irrevocably submits to the
exclusive jurisdiction of (a) the Supreme Court of the State of New York, New
York County, and (b) the United States District Court for he Southern District
of New York, for the purposes of any suit, action or other proceeding arising
out of this Agreement or any transaction contemplated hereby. Each of the
Parties agrees to commence any action, suit or proceeding relating hereto either
in the United States District Court for the Southern District of New York or if
such suit, action or other proceeding may not be brought in such court for
jurisdictional reasons, in the Supreme Court of the State of New York, New York
County. Each of the Parties further agrees that service of any process, summons,
notice or document by U.S. registered mail to such Party's respective address
set forth above shall be effective service of process for any action, suit or
proceeding in New York with respect to any matters to which it has submitted to
jurisdiction in this Section 6.15. Each of the Parties irrevocably and
unconditionally waives any objection to the laying of venue of any action, suit
or proceeding arising out of this Agreement or the transactions contemplated
hereby in (i) the Supreme Court of the State of New York, New York County, or
(ii) the United States District Court for the Southern District of New York, and
hereby further irrevocably and unconditionally waives and agrees not to plead or
claim in any such court that any such action, suit or proceeding brought in any
such court has been brought in an inconvenient forum.
Section 6.16. Severability. In the event any one or more of
the provisions contained in this Agreement should be held invalid, illegal or
unenforceable in any respect, the validity, legality and enforceability of the
remaining provisions contained herein and therein shall not in any way be
affected or impaired thereby. The Parties shall endeavor in good-faith
negotiations to replace the invalid, illegal or unenforceable provisions with
valid provisions, the economic effect of which comes as close as possible to
that of the invalid, illegal or unenforceable provisions.
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IN WITNESS WHEREOF, the Parties have caused this Agreement to
be duly executed as of the day and year first above written.
THE DUN & BRADSTREET CORPORATION
By: /s/ Frank R. Noonan
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Name: Frank R. Noonan
Title: Senior Vice President
THE NEW DUN & BRADSTREET CORPORATION
By: /s/ Volney Taylor
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Name: Volney Taylor
Title: Chairman and Chief
Executive Officer