Brand License Agreement - Warner Communications Inc. and Time Warner Cable Inc.
FORM OF
BRAND LICENSE AGREEMENT
BETWEEN
WARNER COMMUNICATIONS INC.
AND
TIME WARNER CABLE INC.
DATED AS OF
______, 2002
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TABLE OF CONTENTS
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1. DEFINITIONS.....................................................................................1
2. GRANT OF LICENSE................................................................................6
2.1 High Speed Internet Services...........................................................7
2.2 Promotional Products...................................................................7
2.3 Ancillary Broadband Services...........................................................7
2.4 Portals................................................................................7
2.5 Content, Equipment and Software........................................................7
2.6 Transferability........................................................................8
2.7 Request for License....................................................................8
2.8 Reservation of Rights..................................................................8
3. RESTRICTIONS ON USE OF LICENSED MARK AND LICENSED COPYRIGHT.....................................8
3.1 Resellers..............................................................................8
3.2 Use of Licensed Marks or Licensed Copyright with Licensee Marks........................9
3.3 Bundling...............................................................................9
3.4 Co-Marketing...........................................................................9
3.5 General Purpose Credit Cards...........................................................9
3.6 Dealers................................................................................9
3.7 Sublicenses...........................................................................10
4. TERM AND TERMINATION...........................................................................10
4.1 Term..................................................................................10
4.2 Termination...........................................................................10
4.3 Notice of Termination.................................................................11
4.4 Effect of Termination.................................................................11
4.5 Other Rights Unaffected...............................................................12
4.6 Bankruptcy............................................................................12
5. QUALITY CONTROL................................................................................12
5.1 General...............................................................................12
5.2 Quality Standards.....................................................................12
5.3 Quality Service Reviews; Right of Inspection..........................................14
5.4 Authorized Dealers, Resellers, Value Added Resellers and Sublicensees.................14
6. REMEDIES FOR NON-COMPLIANCE WITH QUALITY STANDARDS.............................................15
6.1 Non-compliance with Quality Standards and Cure........................................15
6.2 Potential Injury to Persons or Property...............................................15
6.3 Licensor's Rights to License Others...................................................16
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7. PROTECTION OF LICENSED MARKS AND LICENSED COPYRIGHT............................................16
7.1 Ownership and Rights to the Licensed Marks and Licensed Copyright.....................16
7.2 Similar Marks.........................................................................18
7.3 Infringement..........................................................................19
7.4 Compliance with Legal Requirements....................................................19
8. USE OF LICENSED MARKS AND LICENSED COPYRIGHT AND OTHER MARKS AND COPYRIGHTS....................20
8.1 Licensee Marks........................................................................20
8.2 Modification of Licensed Marks or Licensed Copyright..................................20
8.3 Third Party Marks.....................................................................21
8.4 Internet Domain Names.................................................................21
9. LIABILITY AND INDEMNIFICATION..................................................................22
9.1 Indemnification.......................................................................22
9.2 Notification and Defense of Claims....................................................22
9.3 Insurance.............................................................................24
10. AGREEMENT PERSONAL.............................................................................25
10.1 Personal to Licensee..................................................................25
10.2 Licensee Acknowledgment...............................................................25
11. RETENTION OF RIGHTS............................................................................25
12. SPONSORSHIP....................................................................................26
13. CONSENT OF LICENSOR............................................................................26
14. NOTICES........................................................................................26
15. GOVERNMENTAL LICENSES, PERMITS AND APPROVALS...................................................27
16. APPLICABLE LAW.................................................................................27
17. CONFIDENTIALITY OF INFORMATION AND USE RESTRICTION.............................................27
18. MISCELLANEOUS..................................................................................28
18.1 Entire Agreement......................................................................28
18.2 Relationship of the Parties...........................................................28
18.3 Amendments, Waivers...................................................................28
18.4 Assignment............................................................................28
18.5 Specific Performance..................................................................28
18.6 Remedies Cumulative...................................................................29
18.7 No Waiver.............................................................................29
18.8 Rules of Construction.................................................................29
18.9 No Third Party Beneficiaries..........................................................29
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18.10 Counterparts..........................................................................29
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BRAND LICENSE AGREEMENT
BRAND LICENSE AGREEMENT (the "Agreement") dated as of
_________ __, 2002 and effective as of the Closing, by and between Warner
Communications Inc., a Delaware corporation, with offices located at 75
Rockefeller Plaza, New York, New York 10019 ("Licensor"), and Time Warner Cable
Inc. a Delaware corporation, with offices located at 290 Harbor Drive,
Stamford, Connecticut 06902 ("Licensee"). Certain capitalized terms used herein
are defined in Article 1.
WHEREAS, Licensor owns and desires that Licensee have the
right to use the Licensed Marks and the Licensed Copyright in connection with
the Licensed Services; and
WHEREAS, Licensee wishes to use the Licensed Marks and the
Licensed Copyright 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 and the Licensed Copyright in the Licensed Territory
under the terms and conditions set forth in this Agreement; and
WHEREAS, this Agreement is effective on the Closing.
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
"AFFILIATE": An Affiliate of a Person means a Person that
controls, is controlled by, or is under common control with such Person.
"ANCILLARY BROADBAND SERVICES": The following products or
services:
(a) The marketing, provision and sale of customer care
services in support of Licensee's provision of
Licensed Services;
(b) The marketing, provision and sale of activation and
authorization services (for avoidance of doubt,
authorization service is the provision of a signal
to a set top box, which signal authorizes the
subscriber to receive specified services using that
box; activation service is the provision of a signal
to a set top box, which signal activates the box to
receive any services) in support of Licensee's
provision of Licensed Services to its customers;
(c) The marketing, provision, sale and distribution of
Point Of Deployment modules (PODS) that are used to
identify a Consumer as an authorized subscriber of
Licensee's High Speed Internet
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Services entitled to certain pre-selected
proprietary features available from the High Speed
Internet Services;
(d) The offer and sale of advertising inventory to third
parties, which advertising may appear on High Speed
Internet Services owned or managed by Licensee, on
High Speed Internet Services owned or managed by
other operators, and/or on or in Licensee's web
sites or other promotional or informational vehicles
(e.g., monthly bills); and
(e) Any other ancillary services provided in connection
with the Licensed Services, including repair,
billing and provisioning 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.
"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 or Promotional Products under the
Licensed Marks or the Licensed Copyright in the Licensed Territory.
"BANKRUPTCY": With respect to a Person, means (i) the filing
by such Person of a voluntary petition seeking liquidation, dissolution,
reorganization, rearrangement or readjustment, in any form, of its debts under
Title 11 of the United States Code (or corresponding provisions of future laws)
or any other bankruptcy or insolvency law, or such Person's filing an answer
consenting to, or acquiescing in any such petition; (ii) the making by such
Person of any assignment for the benefit of its creditors, or the admission by
such Person in writing of its inability to pay its debts as they mature; (iii)
the expiration of 60 days after the filing of an involuntary petition under
Title 11 of the United States Code (or corresponding provisions of future
laws), an application for the appointment of a receiver for the assets of such
Person, or an involuntary petition seeking liquidation, dissolution,
reorganization, rearrangement or readjustment of its debts or similar relief
under any bankruptcy or insolvency law, provided that, the same shall not have
been vacated, set aside or stayed within such 60 day period; or (iv) the entry
of an order for relief against such Person under Title 11 of the United States
Bankruptcy Code.
"CHANGE OF CONTROL": with respect to Licensee, shall mean the
occurrence of the earlier of the following:
(a) The beneficial owner (for all purposes hereof,
within the meaning of Rule 13d-3 promulgated under the Securities Exchange Act
of 1934, as amended) as of the Closing of a majority of (i) the outstanding
shares of common stock of the Licensee (the "Outstanding Company Common Stock")
or (ii) the combined voting power of the
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outstanding voting securities of the Licensee entitled to vote generally in
the election of directors of the Licensee (the "Outstanding Company Voting
Securities"), ceases to beneficially own, together with its Affiliates, at
least 40% of the Outstanding Common Stock or the Outstanding Company Voting
Securities; or
(b) A change of Control of Licensee, as determined by
Licensor acting in good faith; provided that, this section (b) shall not apply
until the beneficial owner as of the Closing of a majority of the Outstanding
Company Common Stock or the Outstanding Company Voting Securities ceases to
beneficially own, together with its Affiliates, at least 60% of the Outstanding
Common Stock or the Outstanding Company Voting Securities.
"CLOSING": As defined in the Restructuring Agreement.
"CO-MARKETING": The marketing, promotion, advertising,
offering or sale of one Person's goods or services with another Person's goods
or services.
"CONSUMER": An end-user of any product or service who uses
that product or service.
"CONTROL": means the possession, directly or indirectly, of
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 contract or otherwise.
"COPYRIGHT": Any original works of authorship fixed in any
tangible medium of expression as set forth in 17 U.S.C. ss. 101 et. seq. and any
registrations and applications therefor.
"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.
"DEDICATED WIRELESS PORTALS": Portals that are used solely
for, and accessed solely through, Mobile Wireless Services.
"DMA": Designated marketing area, as determined by Nielson
Media Research and published in its Nielson Station Index Directory and Nielson
Station Index US Television Household Estimates.
"EQUIPMENT AND SOFTWARE": As defined in Section 2.5.
"FCC": The Federal Communications Commission and any
successor governmental authority.
"FIELD OF USE": The provision in the Licensed Territory of
High Speed Internet Services, Ancillary Broadband Services and Equipment and
Software.
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"HIGH SPEED INTERNET SERVICES": The service of providing
subscribers with use of "online services" at a digital signal rate of 128
kilobits per second or above. For purposes of this definition, "online
services" means the services available over the Internet. For avoidance of
doubt, the "online services" themselves are not High Speed Internet Services.
"INDEMNIFIED PARTY": As defined in Section 9.3 of this
Agreement.
"INDEMNIFYING PARTY": As defined in Section 9.3 of this
Agreement.
"LICENSED COPYRIGHT": shall mean certain Copyrights of the
Warner Bros. cartoon character known as ROAD RUNNER.
"LICENSED MARKS": shall mean the ROAD RUNNER and the ROAD
RUNNER word Mark, various depictions of the ROAD RUNNER mark and the Warner
Bros. cartoon character known as ROAD RUNNER, and Licensor's Trade Dress and
other indicia associated with the Warner Bros. character known as the ROAD
RUNNER, including but not limited to its characteristic "BEEP BEEP".
"LICENSED SERVICES": High Speed Internet Services and
Ancillary Broadband Services, each in the Licensed Territory.
"LICENSED TERRITORY": The Licensed Territory shall be the
United States, its territories and possessions thereof, and Canada.
"LICENSEE": As defined in the Preamble to this Agreement.
"LICENSEE MARKS": All Marks which are adopted, used and owned
by Licensee after the Closing in connection with the Licensed Services or
Promotional Products. For avoidance of doubt, Licensee Marks does not include
Marks that incorporate the Licensed Marks or the Licensed Copyright.
"LICENSOR": As defined in the Preamble to this Agreement.
"MARK": Any name, brand, mark, trademark, service mark, sound
mark, design, logo, trade dress, trade name, business name, slogan, domain name
or other indicia of origin.
"MARKETING MATERIALS": Any and all materials, whether
written, oral, visual or in any other medium, used by Licensee or its
Authorized Dealers, Resellers or Value Added Resellers or Sublicensees to
market, advertise or otherwise offer any Licensed Services under the Licensed
Marks or the Licensed Copyright, including but not limited to Promotional
Products.
"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
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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. Mobile Wireless
Services shall not include a private telecommunications connection within or
around a residence or business that provides local-area communication of
information at or around such residence or business.
"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.
"PORTAL": 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.
"PROMOTIONAL PRODUCTS": Any goods or services which are used
to advertise or promote any Licensed Services, such as t-shirts, golf balls,
pens and the like, but not any products or services that, in Licensor's opinion
acting in good faith, are not fairly characterized as being used for
advertisement or promotion.
"QUALITY CONTROL REPRESENTATIVES": Representatives of
Licensor appointed in accordance with Article 5.
"QUALITY STANDARDS": As defined in Section 5.2 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.
"RESELLER": Any Person other than Licensee that sells,
distributes or leases Licensed Services from Licensee.
"RESTRUCTURING AGREEMENT": The Restructuring Agreement, dated
as of the date hereof, by and among AOL Time Warner Inc., a Delaware
corporation, AT&T Corp., a New York corporation, and the other parties named
therein.
"ROAD RUNNER LICENSEES": Those Persons and business units
that are part of Licensor as of the Closing and any other Persons who are
licensed under, or otherwise permitted to use, the Licensed Marks or the
Licensed Copyright by Licensor prior to or during the term of this Agreement.
"SERVICE BUNDLES": A single contract offered or supplied to a
Person for multiple services or systems integration contracts. For avoidance of
doubt, Licensee's
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offering of any two or more Licensed Services in a package shall not itself
constitute a Service Bundle hereunder.
"SIGNIFICANT BREACH BY LICENSEE": As defined in Section 4.2
of this Agreement.
"STYLE GUIDELINES": The guidelines controlling certain
aspects of the use of the Licensed Marks and Licensed Copyright including, but
not limited to, the size, color and appearance of the Licensed Marks and
Licensed Copyright as set forth in the official Style Guide to be provided to
Licensee on the Closing and periodically thereafter.
"SUBLICENSEE": As defined in Section 3.7 of this Agreement.
"SUBMITTED MATERIALS": As defined in Section 5.2 of this
Agreement.
"SUBSIDIARY": With respect to any Person, any entity of which
securities or other ownership interests having ordinary voting power to elect a
majority of the board of directors or other body performing similar functions
are at any time directly or indirectly owned by such Person.
"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.
"TERM": As defined in Section 4.1 of this Agreement.
"TRADE DRESS": The general image or appearance of the
Licensed Mark and of the Licensed Services and Marketing Materials or
Promotional Products and any packaging and labeling therefor, including without
limitation, the combination of colors, designs, sizing configurations,
publication formats and the like as set forth in the Style Guidelines and as
such trade dress may be modified or replaced pursuant to Section 8.2 of this
Agreement, and such other trade dress as may be added thereto or substituted
therefor in accordance with Section 8.2.
"TW LICENSEES": As defined in that certain Brand License
Agreement, dated as of the date hereof, by and between Time Warner Inc., a
Delaware corporation, and Licensee.
"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.
2. GRANT OF LICENSE
Subject to the terms and conditions of this Agreement,
Licensor makes the following royalty-free license grants:
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2.1 High Speed Internet Services. Licensor hereby grants to
Licensee an exclusive, perpetual right and license to use the Licensed Marks
and the Licensed Copyright in accordance with the Quality Standards as set
forth in Article 5 to provide High Speed Internet Services in the Licensed
Territory.
For avoidance of doubt, outside the Licensed Territory,
Licensee has no right or license to use the Licensed Marks or the Licensed
Copyright in connection with High Speed Internet Services. Notwithstanding
anything to the contrary contained herein, Licensor has the right to use, and
license to any Person, the Licensed Marks and the Licensed Copyright throughout
the world, including within the Licensed Territory, in connection with content
distributed through High Speed Internet Services or any other distribution
networks. Without limiting the effect of the preceding sentences in any way,
Licensor agrees not to license to any Person, the Licensed Marks and the
Licensed Copyright for the provision of such services using DSL (digital
subscriber line), dial-up or DBS (direct broadcast satellite) technologies in
the Licensed Territory.
2.2 Promotional Products. Licensor hereby grants to Licensee a
non-exclusive, perpetual right and license to use the Licensed Marks and the
Licensed Copyright in accordance with the Quality Standards as set forth in
Article 5 on Promotional Products in the Licensed Territory.
2.3 Ancillary Broadband Services. Licensor hereby grants to
Licensee an exclusive, perpetual right and license to use the Licensed Marks
and the Licensed Copyright in accordance with the Quality Standards as set
forth in Article 5 for Ancillary Broadband Services provided in the Licensed
Territory.
2.4 Portals. Licensor hereby grants to Licensee a non-exclusive
perpetual right and license to use the Licensed Marks and Licensed Copyright in
accordance with the Quality Standards as set forth in Article 5 on Portals that
are used in connection with High Speed Internet Services provided to
subscribers of the Licensed Services in the Licensed Territory; provided that,
any use of the Licensed Marks or the Licensed Copyright in connection with
Portals must be accompanied by a source indicator that identifies the nature of
the Licensed Services (e.g., high speed online services) and said source
indicator shall be in close proximity to the Licensed Marks or the Licensed
Copyright and shall not appear smaller than, or less visible than the
surrounding text; provided that, Licensee shall have a transitional period of
three months following the Closing to ensure it is in compliance with this
Section 2.4.
2.5 Equipment and Software. Licensor hereby grants to Licensee an
exclusive, perpetual right and license to use the Licensed Marks and Licensed
Copyright in accordance with the Quality Standards as set forth in Article 5 on
equipment and software used in connection with the provision of Licensed
Services, other than the following:
(a) Communication devices, such as telephones, pagers,
email devices, etc.;
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(b) Telephone answering devices;
(c) Personal digital assistants; and
(d) Telephone accessories (e.g., handset cords; outlet
jacks; cord detanglers; amplification headsets),
but including cable set top boxes, cable modems and in-home networking
equipment for connecting set top boxes or cable modems with other devices for
service applications (the "Equipment and Software").
2.6 Transferability. Except as provided in Section 3.1 with
respect to Resellers and Value Added Resellers, in Section 3.6 with respect to
Authorized Dealers and in Section 3.7 with respect to Sublicenses, the licenses
granted herein shall be non-transferable.
2.7 Request for License. If Licensee wishes to use the Licensed
Marks on any goods or services other than Licensed Services and Promotional
Products or on any goods or services or in any territory not expressly granted
by this Agreement, it may request a grant of such license from Licensor.
2.8 Reservation of Rights. Except as expressly licensed in this
Article 2, Licensee shall have no rights or license to use any of the Licensed
Marks or Licensed Copyright 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 solely relate to the use of the
Licensed Marks and the Licensed Copyright in connection with the specified
provision of the Licensed Services in the Licensed Territory. 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 any
Marks and Copyrights, including the Licensed Marks and the Licensed Copyright
for any purpose whatsoever. Licensee covenants and agrees that it will not use
any of the Licensed Marks or the Licensed Copyright in connection with any
products or services or in any territory that are not expressly licensed
pursuant to the provisions of this Article 2 and any such unlicensed use by
Licensee of the Licensed Marks or the Licensed Copyright shall be deemed a
"Significant Breach by Licensee" under Section 4.2 of this Agreement unless
cured pursuant to Section 4.2(a) of this Agreement.
Without in any way limiting the foregoing, Licensee shall not
use the Licensed Marks or Licensed Copyright in connection with Dedicated
Wireless Devices or Dedicated Wireless Portals.
3. RESTRICTIONS ON USE OF LICENSED MARK AND LICENSED COPYRIGHT
3.1 Resellers. Licensee may permit Resellers and Value Added
Resellers to use the Licensed Marks and/or the Licensed Copyright on a
non-exclusive basis and solely in connection with Licensed Services obtained
from Licensee; provided, however,
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that any such use shall be in accordance with the terms of this Agreement,
including the Quality Standards set forth in Article 5 and such use shall only
be in the same Field of Use as Licensee. For avoidance of doubt, no Reseller or
Value Added Reseller may use any Licensed Marks and/or the Licensed Copyright
in any manner that would violate this Agreement if performed by Licensee and
any use of Licensed Marks and/or the Licensed Copyright by a Reseller or Value
Added Reseller in such manner shall be deemed use by Licensee in violation of
the relevant provision(s) of this Agreement.
3.2 Use of Licensed Marks or Licensed Copyright with Licensee
Marks. Any use by Licensee of Licensee Marks in conjunction with the Licensed
Marks or the Licensed Copyright must comply with all other terms of this
Agreement, including without limitation, the Quality Standards set forth in
Article 5.
3.3 Bundling. Licensee may use the Licensed Marks and the
Licensed Copyright in connection with Service Bundles in accordance with the
Quality Standards set forth in Article 5 on a non-exclusive basis if:
(a) The Service Bundle is predominantly built around a
Licensed Service or is provided in conjunction with
an Affiliate of Licensor; and
(b) Licensee is in compliance with its material
obligations under any supply agreement with
Licensor, a TW Licensee or a ROAD RUNNER Licensee
for all elements that are included in the Service
Bundle, if any such agreement is in place.
3.4 Co-Marketing.
(a) Licensee may not use the Licensed Marks or the
Licensed Copyright in Co-Marketing without
Licensor's prior written consent, not to be
unreasonably withheld.
(b) Any use of the Licensed Marks or Licensed Copyright
in connection with approved Co-Marketing shall
comply with the Quality Standards set forth in
Article 5 and Licensor's Co-Marketing Guidelines, as
in effect from time to time.
3.5 General Purpose Credit Cards. Licensee may not permit
Licensed Marks or the Licensed Copyright to be used on or in connection with
any consumer general credit card.
3.6 Dealers. Licensee may grant Authorized Dealers limited
permission to use the Licensed Marks and the Licensed Copyright on a
non-exclusive basis and solely in connection with the provision of Licensed
Services obtained from Licensee; provided, however, that any such use shall be
in accordance with the terms of this Agreement, including the Quality Standards
set forth in Article 5 and as set forth in the Style Guidelines, and such use
shall only be in the same Field of Use as Licensee. For avoidance of doubt, no
Authorized Dealer may use any Licensed Marks or the Licensed
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Copyright in any manner that would violate this Agreement if performed by
Licensee and any use of Licensed Marks and the Licensed Copyright by an
Authorized Dealer, in such manner shall be deemed use by Licensee in violation
of the relevant provision(s) of this Agreement.
3.7 Sublicenses. Notwithstanding anything to the contrary herein,
Licensee shall have the right to grant sublicenses to use the Licensed Marks
and the Licensed Copyright for Licensed Services or Promotional Products to its
Subsidiaries (a "Sublicensee"), provided, however, that any such use shall be
in accordance with the terms of this Agreement including the Quality Standards
set forth in Article 5 and that the sublicense granted to such Person shall
only be effective for so long as such Person remains a Subsidiary of Licensee.
Except as otherwise expressly provided in this Article 3, Licensee shall have
no right to sublicense the Licensed Marks or the Licensed Copyright.
4. TERM AND TERMINATION
4.1 Term. This Agreement shall remain in effect unless terminated
in accordance with the provisions hereof.
4.2 Termination. Notwithstanding the foregoing, Licensor shall
have the right, subject to Section 4.3 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, Reseller,
Value Added Reseller or any Sublicensee uses the
Licensed Marks or the Licensed Copyright in a manner
which fails to comply in all material respects with
the provisions of this Agreement, and fails to cure
such breach within sixty (60) days of receipt of
written notice of such breach; or
(b) Any use of the Licensed Marks or the Licensed
Copyright by any of the Licensee, an Authorized
Dealer, Reseller, Value Added Reseller or any
Sublicensee fails to comply in all material respects
with the Quality Standards set forth in Article 5
and continues for more than sixty (60) days after
written notice thereof has been given to the
Licensee in accordance with Section 6.1; or
(c) Licensee fails to provide 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 5.3 hereof and fails to cure
such breach within sixty (60) days of receipt of
written notice of such breach; or
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(d) Licensee, an Authorized Dealer, Reseller, Value
Added Reseller or any Sublicensee fails to comply
with any material 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
and/or Licensed Copyright are being provided in
contravention of material, applicable laws,
regulations or standards and fails to cure such
breach within sixty (60) days of receipt of written
notice of such breach or such date as is set by the
relevant Regulatory Authority, whichever is earlier;
or
(e) Licensee fails to deliver to Licensor or to maintain
in full force and effect the insurance referred to
in Section 9.4 hereof and fails to cure such breach
within sixty (60) days of receipt of written notice
of such breach; or
(f) Licensee shall be unable to pay its debts in the
ordinary course of business or when they become due,
or shall file for Bankruptcy; or
(g) Any other material breach of this Agreement by
Licensee, its Authorized Dealers, Resellers, Value
Added Resellers or any Sublicensee which breach
continues for more than sixty (60) days after
written notice thereof has been given to Licensee,
except as may otherwise be provided in Section 6.1;
or
(h) A Change of Control shall have occurred with respect
to Licensee; or
(i) Licensee's breach of Section 12.1, which breach
continues for more than sixty (60) days after
written notice thereof has been given to Licensee
and which breach Licensor reasonably determines has
a material adverse effect on Licensor or the
Licensed Marks or Licensed Copyright; or
(j) Licensee shall materially breach any other agreement
in effect between Licensee on the one hand and
Licensor on the other and Licensor reasonably
determines that such breach has a material adverse
effect on the relationship between Licensee and the
Licensor that is not reasonably capable of being
cured.
4.3 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.
4.4 Effect of Termination. In the event this Agreement is
terminated pursuant to this Article, Licensee shall immediately cease use, and
shall cause its Authorized Dealers, Resellers, Value Added Resellers and
Sublicensees to immediately cease use, of the Licensed Marks and the Licensed
Copyright upon the effective date of such
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termination. Immediately following the termination of this Agreement, Licensee
shall return to Licensor all Marketing Materials, Promotional Products and all
other materials and tangible property bearing the Licensed Marks or the
Licensed Copyright.
4.5 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.
4.6 Bankruptcy. This Agreement constitutes a license of
"intellectual property" within the meaning of Section 365(n) of the United
States Bankruptcy Code. If Section 365(n) of the United States Bankruptcy Code
(or any successor provision) is applicable, and the trustee or
debtor-in-possession has rejected this Agreement and if the Licensee has
elected pursuant to Section 365(n) to retain its rights hereunder, then upon
written request of Licensee, to the extent Licensee is otherwise entitled
hereunder, the trustee or debtor-in-possession shall provide to Licensee any
intellectual property (including embodiments thereof) held or controlled by the
trustee or debtor-in-possession.
5. QUALITY CONTROL
5.1 General. Licensee acknowledges that the provision of Licensed
Services and Promotional Products under the Licensed Marks and the Licensed
Copyright pursuant to the terms of this Agreement must be of sufficiently high
quality as to protect the Licensed Marks and the Licensed Copyright 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 and the Licensed Copyright in connection therewith. In order to
preserve the inherent value of the Licensed Marks and the Licensed Copyright,
Licensee agrees to use its best efforts to ensure that the services and
activities to be marketed, promoted, offered and provided by Licensee,
Authorized Dealers, Resellers, Value Added Resellers and Sublicensees under the
Licensed Marks and the Licensed Copyright pursuant to this Agreement shall be
of a quality and nature comparable to the products, services and activities
provided by Licensor, itself or through its Affiliates, as of the date of this
Agreement. Licensee further agrees that it will utilize only Marketing
Materials which do not disparage or place in disrepute Licensor, its businesses
or its business reputation, and do not adversely affect or detract from
Licensor's goodwill or the goodwill appurtenant to the Licensed Marks and the
Licensed Copyright and will use the Licensed Marks and the Licensed Copyright
in ways which will not adversely affect Licensor's business reputation and
goodwill.
5.2 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 and Licensed
Copyright on or in relation to the Licensed Services, Portals, Marketing
Materials and Promotional Products throughout the Term. To that end, any and
all usage of the Licensed Marks and Licensed Copyright by Licensee, Authorized
Dealers, Resellers, Value Added Resellers and Sublicensees
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shall comply with the following standards, specifications and rights of
approval (the "Quality Standards"):
(a) Licensee shall use the Licensed Marks and the
Licensed Copyright only in a style and manner
commensurate with the current standards and
reputation for quality associated with the Licensed
Marks and only in the style and manner that has been
expressly approved in advance by Licensor, as
provided herein. Such approval is within the sole
discretion of Licensor acting in good faith and is
designed to protect the Licensed Marks and the
Licensed Copyright and Licensor's rights therein.
(b) Licensee shall submit to Licensor for prior written
approval prototypes of all products and materials
including, but not limited to, Marketing Materials
and Promotional Products and any packaging and
labeling therefor bearing the Licensed Marks and/or
the Licensed Copyright (the "Submitted Materials").
Such approval is within the sole discretion of
Licensor acting in good faith. Licensor shall
provide its approval or disapproval within a
reasonable time after Licensor receives such
Submitted Materials. In the event that Licensor
disapproves any of the submissions, Licensee shall
make modifications consistent with those specified
by Licensor and shall resubmit the relevant
materials to Licensor for approval. Provided
Licensor has given approval of the style(s) and
general use(s) of any Submitted Materials, Licensee
may use such Submitted Materials in those styles and
for such purposes, without material change, subject
to periodic review by Licensor at Licensor's
request. Licensee shall not make any material change
to the Submitted Materials as approved by Licensor
without Licensor's prior written approval.
(c) The provisions of Section 7.4 of this Agreement;
(d) All quality, style and image standards for use of
the Licensed Marks and Licensed Copyrights delivered
by Licensor to Licensee, including the LOONEY TUNES
characters and ROAD RUNNER Style Guides and any
other Style Guidelines delivered by Licensor to
Licensee, however, it being understood and agreed
that any written instructions delivered from
Licensor to Licensee shall take priority over such
style guide in the event of any conflict;
(e) Licensor's Usage Guidelines, as in effect from time
to time and as currently set forth in the Style
Guidelines; and
(f) Licensor's Trade Dress guidelines as in effect from
time to time and as currently set forth in the Style
Guidelines.
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Licensee acknowledges that the Quality 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 and the Licensed
Copyright.
5.3 Quality Service Reviews.
(a) Licensee agrees to collect, maintain and furnish to
the Quality Control Representatives all performance
data relating to the Licensed Services reasonably
requested by the Quality Control Representatives and
representative samples of Marketing Materials that
are marketed or provided under the Licensed Marks or
the Licensed Copyright to assure conformance of the
Licensed Services and the Marketing Materials with
the Quality Standards. At Licensor's reasonable
request, Licensee shall send copies to Licensor of
performance data relating to technical performance
or conformance of the Licensed Services hereunder
with the Quality Standards as previously provided by
Licensee. Any such data provided to Licensor shall
be treated confidentially in accordance with Article
17.
(b) Licensor may independently, at its own cost, conduct
continuous customer satisfaction and other surveys
to determine if Licensee is meeting the Quality
Standards in connection with its use of the Licensed
Marks or the Licensed Copyright in the Licensed
Services. Licensee shall cooperate, at Licensor's
expense, 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 Licensor
learns that Licensee is not complying with the
Quality Standards in any material respect, it shall
notify Licensee and the provisions of Article 6
shall apply to such non-compliance.
(c) If Licensee learns that it is not complying with the
Quality Standards in any material respect, it shall
notify Licensor, and the provisions of Article 6
shall apply to such non-compliance.
5.4 Authorized Dealers, Resellers, Value Added Resellers and
Sublicensees. Licensee shall provide to Licensor within ten (10) days after the
expiration of each calendar year a list of all Sublicensees and a list of all
material Authorized Dealers, Resellers and Value Added Resellers. Licensor
shall have the right, exercisable in its reasonable discretion, to give
Licensee notice requiring Licensee to terminate any Authorized Dealer,
Reseller, Value Added Reseller 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, Reseller, Value Added Reseller or Sublicensee) effective no
later than
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thirty (30) days from the date such notice is given by Licensor to Licensee.
All Authorized Dealers, Resellers, Value Added Resellers and Sublicensees shall
be bound by the Quality Standards and by Licensee's obligations under this
Agreement. A breach by any such Authorized Dealer, Reseller, Value Added
Reseller 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, Reseller, Value Added Reseller or Sublicensee shall be
deemed to cure any such breach.
6. REMEDIES FOR NON-COMPLIANCE WITH QUALITY STANDARDS
6.1 Non-compliance with Quality Standards and Cure.
(a) If Licensor becomes aware that Licensee or its
Authorized Dealers, Resellers, Value Added Resellers
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-compliance. Licensee shall cure such
non-compliance as soon as is practicable but in any
event within sixty (60) days thereafter. In the
event that the non-compliance with the Quality
Standards is being caused by an Authorized Dealer,
Reseller, Value Added Reseller or Sublicensee,
Licensee's termination of such Authorized Dealer,
Reseller, Value Added Reseller 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) and shall cause
its Authorized Dealers, Resellers, Value Added
Resellers and Sublicensees to, immediately cease any
Licensed Services and Promotional Products using the
Licensed Marks and/or the Licensed Copyright in the
DMA in which it is in non-compliance until it is in
compliance with the Quality Standards, subject to
the provisions below; and (ii) 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.
6.2 Potential Injury to Persons or Property. Notwithstanding the
provisions of Section 6.1, 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 sixty (60) days after receiving such notice. If the
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<PAGE>
non-compliance continues beyond such cure period, Licensee shall (and shall
cause its Authorized Dealers, Resellers, Value Added Resellers and Sublicensees
to) either cease using the Licensed Marks in connection with any Licensed
Services and Promotional Products 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 6.3 below, or be deemed to be in breach of this Agreement.
6.3 Licensor's Rights to License Others. In addition to the
rights granted to Licensor pursuant to Article 4, "Term and Termination," in
the event that Licensee is required to cease offering or providing any Licensed
Services or Promotional Products using the Licensed Marks or the Licensed
Copyright 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 DMA, and may license other Persons to use the Licensed Marks and the
Licensed Copyright on Licensed Services and Promotional Products, even if the
license granted hereunder was an exclusive license in that DMA.
7. PROTECTION OF LICENSED MARKS AND LICENSED COPYRIGHT
7.1 Ownership and Rights to the Licensed Marks and Licensed
Copyright.
(a) Licensee acknowledges the great value of the
goodwill associated with the Licensed Marks and the
Licensed Copyright, and acknowledges that the
Licensed Marks and the Licensed Copyright and all
the rights therein, including in and to any
modifications, enhancements and derivative works
created with respect thereto, and goodwill attached
thereto, belong exclusively to Licensor. In
addition, Licensee acknowledges that all Marketing
Materials and Promotional Products and all other
materials and tangible items bearing the Licensed
Marks or the Licensed Copyright and created pursuant
to this Agreement by, or on behalf of, Licensee or
any Authorized Dealers, Resellers, Value Added
Resellers or Sublicensees, except for any separable
portion thereof which includes a trademark,
copyright or other intellectual property right owned
by Licensee or a third party, shall be deemed "Works
Made For Hire" as such term is defined in Section
101 of the United States Copyright Act of 1976, as
amended, provided, however, that if it is finally
determined by a court of competent jurisdiction that
any such material or tangible item does not
constitute a "Work Made For Hire" then all right,
title and interest in and to such material and
tangible item, including copyrights throughout the
world, except for any separable portion thereof
which includes a trademark, copyright or other
intellectual property right owned by Licensee or a
third party, shall be deemed assigned and
transferred to Licensor by this Agreement. With
respect to any third party or any employee of
Licensee who makes or has made any contribution to
the creation of any Marketing Materials and
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Promotional Goods and all other materials and
tangible items bearing the Licensed Marks or the
Licensed Copyright hereunder, Licensee agrees to
obtain from such third party or employee a full
confirmation and assignment of rights so that the
foregoing rights shall vest fully in Licensor, in
the form of an agreement to be provided to Licensee
by Licensor prior to commencing work, which
agreement ensures that all rights in any materials
incorporating a Licensed Mark or the Licensed
Copyright arise in and are assigned to Licensor,
except for any separable portion thereof which
includes a Mark, Copyright or other intellectual
property right owned by Licensee or a third party.
Licensee assumes all responsibility for such third
parties and employees and agrees that Licensee shall
bear any and all risks arising out of or relating to
the performance of services by such third parties
and employees and to the fulfillment of their
obligations set forth in this Section 7.1(a).
Subject to the terms and conditions of this
Agreement, Licensor grants Licensee an exclusive
right to use derivative works created by Licensee
incorporating the Licensed Copyright in connection
with the Licensed Services in the Licensed Territory
for the Term of this Agreement.
(b) Licensee will not, at any time, disparage, dilute or
adversely affect the validity of the Licensed Marks
and the Licensed Copyright 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 and the Licensed Copyright, or any
registrations thereof or which, directly or
indirectly, may materially reduce the value of the
Licensed Marks and the Licensed Copyright 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 and the Licensed Copyright 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 the Licensed Copyright, or any of
Licensor's other Marks or Copyrights, it being
understood that all rights relating thereto are
reserved by Licensor, except for the license
hereunder to Licensee of the right to use the
Licensed Marks or the Licensed Copyright only as
specifically and expressly provided herein. Licensee
further acknowledges that it will not obtain any
ownership interest in the Licensed Marks or the
Licensed Copyright 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
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<PAGE>
waive, any contractual rights hereunder or its
remedies upon a breach hereof by Licensor.
(d) Licensee shall not (i) attack Licensor's title or
right in and to the Licensed Marks or the Licensed
Copyright as they relate to the Licensed Services in
any jurisdiction or attack the validity of this
license or the Licensed Marks or the Licensed
Copyright or (ii) contest the fact that Licensee's
rights under this Agreement cease upon termination
of this Agreement. The provisions of this Section
7.1 shall survive the termination of this Agreement.
(e) Licensee will not grant or attempt to grant a
security interest in the Licensed Marks or the
Licensed Copyright or this Agreement, or to record
any security interest in the United States Patent
and Trademark Office, the United States Copyright
Office or elsewhere, against any Mark or Copyright
application or registration belonging to Licensor.
(f) Licensee shall, at Licensor's expense, cooperate
fully and in good faith with Licensor for the
purpose of securing, preserving and protecting
Licensor's rights in and to the Licensed Marks or
the Licensed Copyright. At the request of Licensor,
and at Licensor's expense, 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 and any
Sublicensees shall be considered a "related company"
under the U.S. Trademark Act, 15 U.S.C. Section 1051
et seq.
(g) The parties acknowledge and agree that the
protection of the Licensed Marks and the Licensed
Copyright and the goodwill attached thereto are
material provisions of this Agreement.
7.2 Similar Marks. Licensee agrees not to register in any country
any Mark or Copyright resembling or confusingly similar to the Licensed Marks
or the Licensed Copyright, or which dilutes the Licensed Marks or the Licensed
Copyright, and not to use the Licensed Marks, or any independently protectible
part of any such Marks or Copyright, as part of its corporate name (unless
otherwise agreed by Licensor), nor use (except in accordance with Article 8)
any Mark or Copyright confusingly similar, deceptive or (except in accordance
with Article 8) misleading with respect to the Licensed Marks or the Licensed
Copyright, or which dilutes the Licensed Marks or the Licensed Copyright. If
any application for registration is, or has been filed in any country by
Licensee which relates to any Mark or Copyright which, in the sole and
reasonable opinion of Licensor, is confusingly similar, deceptive or misleading
with respect to the Licensed Marks or the Licensed Copyright, or which dilutes
the Licensed
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Marks or the Licensed Copyright, Licensee shall, at Licensor's sole discretion,
immediately abandon any such application or registration or, at Licensor's
election, assign it (free and clear of any liens and encumbrances, and for
consideration of $1.00, the adequacy and sufficiency of which is hereby
acknowledged by Licensor) to Licensor. If Licensee uses any Mark or Copyright
which, in Licensor's reasonable opinion, is confusingly similar, deceptive or
misleading with respect to the Licensed Marks or the Licensed Copyright, or
which dilutes the Licensed Marks or the Licensed Copyright, or if Licensee uses
the Licensed Marks or the Licensed Copyright in connection with any product, or
any service or in any territory not specifically authorized hereunder, Licensee
shall, immediately upon receiving a written request from Licensor, permanently
cease such use.
7.3 Infringement. In the event that either party learns of any
infringement or threatened infringement of the Licensed Marks or the Licensed
Copyright, or any unfair competition, passing-off or dilution with respect to
the Licensed Marks or the Licensed Copyright (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, at Licensor's expense,
to Licensor or its authorized representatives in the event that Licensor
decides that proceedings should be commenced. Licensor shall have exclusive
control of any litigation, opposition, cancellation or other legal proceedings
relating to an alleged Infringement. 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
shall not take any action to enforce, protect or defend the Licensed Marks or
the Licensed Copyright without the prior written consent of Licensor's General
Counsel. Licensee will not initiate any such litigation, opposition,
cancellation or related legal proceedings in its own name but, at Licensor's
request, agrees to be joined as a party in any action taken by Licensor to
enforce its rights in the Licensed Marks or the Licensed Copyright; 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.
Nothing in this Agreement shall require, or be deemed to require Licensor to
enforce the Licensed Marks or the Licensed Copyright against others. Licensor
shall keep all monies derived from litigation or legal proceeding or from
settlement of Infringement.
7.4 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 and Copyrights in the Licensed Territory.
(b) Licensee shall duly display those legal notices as
shall be provided by Licensor acting in good faith,
such as the symbols (R), "TM" or
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<PAGE>
"SM". In no circumstances shall such notices be
altered or omitted without the express prior written
consent of Licensor.
(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 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.
8. USE OF LICENSED MARKS AND LICENSED COPYRIGHT AND OTHER MARKS AND
COPYRIGHTS
8.1 Licensee Marks. Licensee shall have the right from time to
time during the Term to create and use its own Marks and Copyrights, which may
be used together with the Licensed Marks and Licensed Copyright, in connection
with products or services with respect to which any of the Licensed Marks
and/or the Licensed Copyright are used; provided that, said use is in
conformance with the Quality Standards set forth in Article 5; and provided
further that, upon request, Licensor shall have the right to review and approve
Licensee's use of such Marks (which approval shall not be unreasonably
withheld). For the avoidance of doubt, Licensor's approval of such Mark shall
not be deemed to be a statement by Licensor as to availability or strength of
such Mark. Licensee shall have sole responsibility over the availability and
strength of the Mark. Unless, in the exercise of Licensor's sole discretion
acting in good faith, Licensor shall determine that a Mark or Copyright that
Licensee proposes to use could disparage, tarnish, dilute or potentially cause
confusion with respect to the Licensed Marks or the Licensed Copyright, or is
not in conformance with Licensor's Quality Standards set forth in Article 5 or
otherwise could have a detrimental effect on the Licensed Marks or the Licensed
Copyright, Licensor will approve Licensee's use of such proposed Mark or
Copyright. Licensor shall approve or disapprove any Marks or Copyrights
proposed to be used by Licensee within a reasonable time of its receipt of a
written request for such approval. Licensee shall not file or prosecute a
trademark or copyright application to register any Marks or Copyrights which
consist of or incorporate the Licensed Marks, Licensed Copyright or any
material element thereof or any Marks or Copyrights confusingly similar
thereto. Under no circumstances shall Licensee be permitted to join the
Licensed Marks with any Licensee Marks so as to form a new Mark.
8.2 Modification of Licensed Marks or Licensed Copyright. In the
event Licensor modifies or replaces any of the Licensed Marks or the Licensed
Copyright 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 or the Licensed Copyright, Licensee will adopt and use such
modified or replaced Licensed Marks and Licensed Copyright and, in such event,
such modified or replaced Licensed Marks or Licensed
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<PAGE>
Copyright shall be considered the Licensed Marks or the Licensed Copyright
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 or the Licensed Copyright, 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 or the Licensed Copyright, as applicable.
8.3 Third Party Marks. Licensee shall have the right from time to
time to use Marks owned by third parties ("Third Party Marks") in conjunction
with the Licensed Marks or the Licensed Copyright, in connection with products
or services with respect to which Licensed Marks or the Licensed Copyright are
used; provided that (i) Licensee obtains consent from the relevant third party
to use such Third Party Marks; and (ii) use of the Licensed Marks or the
Licensed Copyright in conjunction with such Third Party Marks shall be in
conformance with the Licensor's Quality Standards set forth in Article 5;
provided that, upon request, Licensor shall have the right to review and
approve Licensee's uses of the Third Party Marks. Under no circumstances shall
Licensee be permitted to join the Licensed Marks with any Third Party Marks so
as to form a new Mark.
8.4 Internet Domain Names.
(a) Licensee shall obtain Licensor's prior written
permission before using any of the Licensed Marks or
Licensed Copyright or any confusingly similar Mark
or Copyright as part of a domain name, provided
that, Licensee shall have the right to use the
domain names set forth on Schedule A without
Licensor's prior written consent. Any domain name
consisting of or incorporating the Licensed Marks or
any material element thereof shall be owned and
maintained exclusively by Licensor; provided that,
Licensee shall be solely responsible for any
registration and renewal fees for those domain names
used exclusively by, or on behalf of, Licensee.
(b) Licensee's web sites that use any of the Licensed
Marks and the Licensed Copyright or that concern
Licensed Services or Portals and Promotional
Products in connection with which the Licensed Marks
and the Licensed Copyright are used shall comply
with the Quality Standards set forth in Article 5.
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9. REPRESENTATIONS; LIABILITY AND INDEMNIFICATION
9.1 Representations and Warranties. Licensor represents and
warrants that Licensor has not licensed the use of the Licensed Marks and/or
the Licensed Copyright to any third party in connection with the Licensed
Services in the Licensed Territory.
9.2 Indemnification.
(a) Licensor shall defend, indemnify and hold Licensee
and its Sublicensees 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) any third party
claims as to the lack of validity or enforceability
of (A) the registrations of the Licensed Marks and
the Licensed Copyright or (B) Licensor's ownership
rights in the Licensed Marks and the Licensed
Copyright; and (ii) any lack of validity or
enforceability of this Agreement caused by Licensor.
(b) Subject to Licensor's indemnification obligations in
subsection (a) above, Licensee shall defend,
indemnify and hold Licensor and its directors,
officers, 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, Reseller's, Value Added
Reseller's or Sublicensee's use of the Licensed
Marks or the Licensed Copyright other than as
expressly provided in this Agreement, and shall
indemnify the Licensor Parties from any improper or
unauthorized use of the Licensed Marks and/or the
Licensed Copyright and for any use by Licensee, or
any Authorized Dealer, Reseller, Value Added
Reseller or Sublicensee of the Licensee Marks and
the Licensed Copyright. 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 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.
9.3 Notification and Defense of Claims.
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(a) Notification of Claims. In the event of the
occurrence of an event which Licensee or Licensor
(the "Indemnified Party"), as the case may be,
asserts constitutes a claim under Section 9.2, 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
"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 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
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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.
(c) In the event that the Indemnifying Party does not
notify the Indemnified Party within thirty (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.
9.4 Insurance.
(a) Licensee shall maintain, at its own expense, in full
force and effect at all times during which Licensed
Services bearing the Licensed Marks and/or the
Licensed Copyright are being sold, with a
responsible insurance carrier reasonably acceptable
to Licensor, at least a Two Million Five Hundred
Thousand Dollar ($2,500,000.00) products liability
insurance policy with respect to the Licensed
Services offered using the Licensed Marks and/or the
Licensed Copyright. 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
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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 9.4, including without limitation, originals
or copies of policies, certificates of insurance
(with applicable riders and endorsements) and proof
of premium payments.
10. AGREEMENT PERSONAL
10.1 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.
10.2 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.
11. RETENTION OF RIGHTS
11.1 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 or the Licensed Copyright,
including without limitation:
(a) All rights of ownership in and to the Licensed Marks
and the Licensed Copyright, including the right to
license or transfer the same.
(b) The unimpaired right to use the Licensed Marks and
the Licensed Copyright 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.
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12. SPONSORSHIP
12.1 Licensee shall not use the Licensed Marks or the Licensed
Copyright 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. The Parties acknowledge that an Event
shall not include day-to-day ordinary course meetings and events. Licensor
reserves the right to deny permission to any Event. In the event that Licensee
desires to sponsor, endorse or claim affiliation with an Event, Licensee shall
provide Licensor with at least twenty (20) business days prior written notice
of such Event in reasonable detail. Any breach of this provision reasonably
determined to have a material adverse effect on Licensor, the Licensed Marks or
the Licensed Copyright shall be deemed a Significant Breach by Licensee.
13. CONSENT OF LICENSOR
13.1 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.
14. NOTICES
14.1 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:
Time Warner Cable Inc.
290 Harbor Drive
Stamford, Connecticut 06902
If to Licensor:
Warner Communications Inc.
c/o AOL Time Warner Cable Inc.
75 Rockefeller Plaza
New York, New York 10019
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Attn: General Counsel
Fax: 212-258-3172
With copies to:
Warner Bros.
Office of the General Counsel
4000 Warner Boulevard
Burbank, CA 91522
Attn: John Schulman; Executive Vice
President and General Counsel
Fax: 818-954-4768
or to such other address as such party shall have designated
by notice so given to each other party.
15. GOVERNMENTAL LICENSES, PERMITS AND APPROVALS
15.1 Licensee, at its expense, shall be responsible for obtaining
and maintaining all Approvals with respect to this Agreement, and for complying
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.
16. APPLICABLE LAW
16.1 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
of the State of New York located in New York County for all actions, suits or
proceedings arising in connection with this Agreement.
17. CONFIDENTIALITY OF INFORMATION AND USE RESTRICTION
17.1 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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<PAGE>
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.
18. MISCELLANEOUS
18.1 Entire Agreement. The provisions of this Agreement contain
the entire agreement between the parties relating to use by Licensee of the
Licensed Marks and the Licensed Copyright, 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 the Licensed Copyright or any other Marks, Copyrights 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.
18.2 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.
18.3 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.
18.4 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.
18.5 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 Article 16
for specific performance, or injunctive, or such other relief as such court may
deem just and proper, in order to
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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.
18.6 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.
18.7 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, 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.
18.8 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.
18.9 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 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.
18.10 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.
WARNER COMMUNICATIONS INC.
By:
----------------------------------------
Name:
Title:
TIME WARNER CABLE INC.
By:
----------------------------------------
Name:
Title:
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Schedule A
rr.com
roadrunner.com
And any other domain name incorporating any of the Licensed Marks that
was used in the TWE Broadband Business as of the Closing.
31