Intellectual Property Agreement - MediaOne TWE Holdings Inc. and Warner Communications Inc.
EXECUTION COPY
INTELLECTUAL PROPERTY AGREEMENT
BETWEEN
MEDIAONE TWE HOLDINGS, INC.
AND
WARNER COMMUNICATIONS INC.
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TABLE OF CONTENTS
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1. DEFINITIONS.........................................................1
1.1 "Affiliate"................................................1
1.2 "Ancillary Agreements".....................................2
1.3 "Authorization"............................................2
1.4 "Closing"..................................................2
1.5 "Company"..................................................2
1.6 "Content"..................................................2
1.7 "Copyright and Technology Assignment"......................2
1.8 "Copyrights"...............................................2
1.9 "Existing TWIC Broadband Group Patents"....................2
1.10 "Governmental Authority"...................................3
1.11 "Group" ...................................................3
1.12 "Holdco"...................................................3
1.13 "HSR Act" .................................................3
1.14 "Initial TWIC Contribution" ...............................3
1.15 "IPR Futures"..............................................3
1.16 "Licensee" ................................................3
1.17 "Licensor".................................................3
1.18 "Parties"..................................................3
1.19 "Patents"..................................................3
1.20 "Patent Assignment"........................................3
1.21 "Person"...................................................3
1.22 "Proprietary Information" .................................3
1.23 "Restructuring Agreement"..................................3
1.24 "Software".................................................4
1.25 "Subsidiary"...............................................4
1.26 "Third Party" ............................................4
1.27 "Trademark"................................................4
1.28 "Trademark and Service Mark Assignment"....................4
1.29 "Transaction Expenses".....................................4
1.30 "TWIC".....................................................4
1.31 "TWIC Broadband Business"..................................4
1.32 "TWIC Broadband Group".....................................4
1.33 "TWIC Broadband Group Content".............................4
1.34 "TWIC Broadband Group Proprietary Information".............4
1.35 "TWIC Broadband Group Software"............................4
1.36 "TWIC Broadband Group Trademarks"..........................5
1.37 "TWIC Broadband IP Licenses"...............................5
1.38 "TWIC Broadband Member"....................................5
1.39 "TWIC Contribution Agreement"..............................5
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2. SOFTWARE............................................................5
3. PROPRIETARY INFORMATION.............................................6
4. CONTENT.............................................................6
5. PATENTS.............................................................6
6. TRADEMARKS..........................................................6
7. IPR FUTURES AND ISSUES OF OWNERSHIP.................................7
7.1 Ownership Unaffected by this Agreement.....................7
7.2 No Rights or Licenses Granted..............................7
7.3 Issues as to Ownership.....................................7
8. ASSIGNMENT AND SUBLICENSES..........................................7
8.1 Assignment Agreements......................................7
8.2 Assignment of TWIC Broadband IP Licenses...................7
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8.3 Failure of Assignment......................................8
8.4 Order of Precedence........................................8
9. ASSIGNMENT..........................................................8
9.1 ...........................................................9
9.2 ...........................................................9
10. INFRINGEMENT........................................................9
11. NO WARRANTIES OR REPRESENTATIONS....................................9
12. GOVERNING LAW; IP CLAIMS...........................................10
12.1 Choice of Law.............................................10
12.2 Intellectual Property Rights..............................10
12.3 Equitable Remedies........................................10
12.4 Bankruptcy................................................10
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13. NOTICE.............................................................10
14. FURTHER DUE DILIGENCE..............................................12
15. FEES AND EXPENSES..................................................12
16. MISCELLANEOUS......................................................12
16.1 No Other Rights...........................................12
16.2 No Enforcement Against Third-Party........................13
16.3 Further Assurances........................................13
16.4 Rules of Construction.....................................13
16.5 Amendments................................................13
16.6 No Waiver.................................................13
16.7 Third Party Beneficiaries.................................14
16.8 Force Majeure.............................................14
16.9 Counterparts..............................................14
16.10 Severability..............................................14
16.11 Entire Agreement..........................................14
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SCHEDULE A TWIC Broadband Group Patents
EXHIBIT I Copyright and Technology Assignment
EXHIBIT II Patent Assignment
EXHIBIT III Trademark and Service Mark Assignment
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INTELLECTUAL PROPERTY AGREEMENT
This Intellectual Property Agreement (the "Agreement"), dated
as of August 20, 2002 is by and among MediaOne TWE Holdings Inc., a Delaware
corporation (the "Company"), and Warner Communications Inc., a Delaware
corporation ("Holdco") (together, the "Parties"). Capitalized terms used herein
and not otherwise defined shall have the respective meanings assigned to them in
Article 1.
WHEREAS, pursuant to the Restructuring Agreement (the
"Restructuring Agreement"), dated as of the date hereof, by and among the
Company, Holdco and the other parties named therein, the parties thereto agreed
to, among other things, cause Holdco to assign to the Company all of its
intellectual property rights relating to the TWIC Broadband Business;
WHEREAS, pursuant to the Restructuring Agreement, prior to
Closing, TWIC shall transfer, directly or indirectly, to Holdco all of its
right, title and interest in and to any and all intellectual property related to
the TWIC Broadband Business;
WHEREAS, as of the Closing, Holdco desires to assign and
transfer to the Company all of its right, title and interest in and to any and
all intellectual property related to the TWIC Broadband Business as provided in
the Patent Assignment, the Copyright and Technology Assignment and the Trademark
and Service Mark Assignment;
WHEREAS, as of the Closing, Holdco further desires to assign
and transfer to the Company all TWIC Broadband IP Licenses; and
WHEREAS, the Parties desire to enter into this Agreement.
NOW, THEREFORE, in consideration of the mutual promises and
covenants herein contained and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the Parties agree as
follows:
1. DEFINITIONS
For the purposes of this Agreement, certain terms have been
defined below and elsewhere in this Agreement to encompass meanings that may
differ from, or be in addition to, the normal connotation of the defined word.
1.1 "Affiliate" of any Person shall mean a Person that controls, is
controlled by, or is under common control with such Person. As used herein,
"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.
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1.2 "Ancillary Agreements" shall mean the Copyright and Technology
Assignment, the Patent Assignment and the Trademark and Service Mark Assignment.
1.3 "Authorization" shall mean any waiver, amendment, consent,
approval, license, franchise, permit (including construction permits)
certificate, exemption, variance or authorization of, expiration or termination
of any waiting period requirement (including pursuant to the HSR Act) or other
action by, or notice, filing registration, qualification, declaration or
designation with any Person (including any Governmental Authority).
1.4 "Closing" shall have the meaning set forth in the Restructuring
Agreement.
1.5 "Company" shall have the meaning set forth in the Preamble.
1.6 "Content" shall mean all works of authorship and products commonly
understood as content in the entertainment, media, music and publishing
industries, including products such as programming content, motion pictures,
television programs and other audiovisual works or series, advertising and
promotional materials, photographs, illustrations, images and other pictorial,
graphic and sculptural works, dramatic works, choreographic works, sound
recordings, musical compositions, books, articles and other publications,
characters, animation, cartoons, video games, scripts, storyboards, titles,
screenplays, synopses, plots, dialogue, stories, themes, treatments and other
text, in any media, whether digital or otherwise, and any ideas, concepts or
information contained therein, all copies, phonorecords and other physical
materials embodying any of the foregoing, any materials used in preparation,
development, promotion or advertising thereof and merchandise related thereto,
in each case, whether or not protectable by Copyright, and all Copyrights,
licenses and interests in Copyrights in and to any of the above. The list of
items included in the above definition of Content is intended by way of example
only and is not to be construed in any manner as an exhaustive or complete list
of items covered by the definition of Content. Content does not include
Software, Proprietary Information or Trademarks, and does not include any
Software that is used to create Content.
1.7 "Copyright and Technology Assignment" shall mean that certain
Copyright and Technology Assignment contemporaneously executed by the Company
and Holdco in the form attached hereto as Exhibit I.
1.8 "Copyrights" shall mean all copyrights and related rights and
interests in copyrights and related rights, moral rights, licenses and all other
rights, privileges and priorities relating to any works of authorship or any
subject matter protected by related rights, including all works of authorship
under Section 102 of Title 17 of the United States Code, under the copyright and
related rights laws of every country and jurisdiction throughout the world, now
or hereafter known, whether registered or unregistered, for their entire term of
protection, including all extensions, licenses, renewals or reversions thereof.
1.9 "Existing TWIC Broadband Group Patents" shall have the meaning set
forth in Section 5.
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1.10 "Governmental Authority" shall have the meaning set forth in the
Restructuring Agreement.
1.11 "Group" shall have the meaning set forth in the TWIC Contribution
Agreement.
1.12 "Holdco" shall have the meaning set forth in the Preamble.
1.13 "HSR Act" shall have the meaning set forth in the Restructuring
Agreement.
1.14 "Initial TWIC Contribution" shall have the meaning set forth in
the TWIC Contribution Agreement.
1.15 "IPR Futures" shall have the meaning set forth in Section 7.1.1.
1.16 "Licensee" shall mean a Party receiving a license of any
intellectual property hereunder.
1.17 "Licensor" shall mean a Party licensing any intellectual property
hereunder.
1.18 "Parties" shall have the meaning assigned to it in the Preamble.
1.19 "Patents" shall mean patents and patent applications, all foreign
counterparts, continuations, divisions, reissues, reexaminations and renewals of
such patents and patent applications, all prosecution files and databases for
such patents and patent applications and all inventions created or first reduced
to practice as of the Closing on which a patent later issues.
1.20 "Patent Assignment" shall mean that certain Patent Assignment
contemporaneously executed by the Company and Holdco, in the form attached
hereto as Exhibit II.
1.21 "Person" shall have the meaning set forth in the Restructuring
Agreement.
1.22 "Proprietary Information" shall mean (i) business and technical
information, including ideas, data, knowledge, trade secrets, know-how and
algorithms, existing as of the Closing, which is proprietary and/or that derives
economic value, actual or potential, from not being generally known to, and not
being readily ascertainable by proper means by, other persons who can obtain
economic value from its disclosure or use and is the subject of efforts that are
reasonable under the circumstances to maintain its secrecy and (ii) all physical
manifestations of the business and technical information described in the
preceding clause (i), including documents, specifications, designs, plans,
records, drawings and databases. Proprietary Information does not include any
Content or Software.
1.23 "Restructuring Agreement" shall have the meaning set forth in the
Recitals.
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1.24 "Software" shall mean computer programs, including all source code
or object code, and (i) all intellectual property rights, including Patent
rights and Copyrights embodied therein, (ii) all physical manifestations
thereof, including storage media and (iii) all documentation related thereto.
Software does not include any Content, even though Software and Content may be
combined or contained in the same media.
1.25 "Subsidiary" shall have the meaning set forth in the TWIC
Contribution Agreement.
1.26 "Third Party" shall mean any Person other than a Party.
1.27 "Trademark" shall mean any word, name, corporate name, trade name,
domain name (including, without limitation, IP addresses and ASNs), logo,
design, mark, trademark, service mark, symbol, device, trade dress, any common
law marks, trademark or service mark application or registration, or any other
indicia of origin or any combination thereof and all goodwill associated
therewith.
1.28 "Trademark and Service Mark Assignment" shall mean that certain
Trademark and Service Mark Assignment contemporaneously executed by the Company
and Holdco in the form attached hereto as Exhibit III.
1.29 "Transaction Expenses" shall mean with respect to any Party, all
out-of-pocket expenses (including, without limitation, all fees and expenses of
counsel, accountants, investment bankers, experts, consultants or agents to such
Party or any of its Affiliates and including governmental transfer taxes,
recording fees and other similar fees and impositions) incurred by such Party or
its Affiliates (or on such Party's or Affiliate's behalf) in connection with or
related to the Authorization, preparation, negotiation, execution or performance
of this Agreement.
1.30 "TWIC" shall mean TWI Cable Inc., a Delaware corporation.
1.31 "TWIC Broadband Business" shall have the meaning set forth in the
TWIC Contribution Agreement and as the TWIC Broadband Business may reasonably be
expanded within the industry in which it operates as of the Closing.
1.32 "TWIC Broadband Group" shall have the meaning set forth in the
TWIC Contribution Agreement.
1.33 "TWIC Broadband Group Content" shall have the meaning set forth in
Section 4.
1.34 "TWIC Broadband Group Proprietary Information" shall have the
meaning set forth in Section 3.
1.35 "TWIC Broadband Group Software" shall have the meaning set forth
in Section 2.
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1.36 "TWIC Broadband Group Trademarks" shall have the meaning set forth
in Section 6.
1.37 "TWIC Broadband IP Licenses" shall mean all
1.37.1 licenses, permissions and covenants granted by any
Person to TWIC or any Subsidiary of TWIC to, in any way, exploit or use
intellectual property owned, controlled or otherwise licensable by such Person,
and the corresponding agreements by which such licenses, permissions or
covenants are granted, which are licenses, permissions or covenants (i) to use
or exploit Software, Patents or Proprietary Information and that primarily
relate to, arise out of or result from the TWIC Broadband Business or (ii) that
(A) were assigned, transferred, conveyed to or otherwise owned by the TWIC
Broadband Group to use or exploit Content or Trademarks and (B) primarily relate
to, arise out of or result from the TWIC Broadband Business (such licenses,
permissions and covenants, and their corresponding agreements, being
collectively referred to as "Inbound TWIC Broadband IP Licenses"); and
1.37.2 licenses, permissions and covenants granted by TWIC or
any Subsidiary of TWIC to any Person to, in any way, exploit or use intellectual
property owned, controlled or otherwise licensable by the TWIC Broadband Group,
and the corresponding agreements by which such licenses, permissions or
covenants are granted, which are licenses, permissions or covenants (i) to use
or exploit Software, Patents or Proprietary Information and that primarily
relate to, arise out of or result from the TWIC Broadband Business or (ii) that
(A) were assigned, transferred, conveyed to or otherwise owned by the TWIC
Broadband Group to use or exploit Content or Trademarks and (B) primarily relate
to, arise out of or result from the TWIC Broadband Business (such licenses,
permissions and covenants, and their corresponding agreements, being
collectively referred to as "Outbound TWIC Broadband IP Licenses").
The licenses of intellectual property rights granted by TWIC
to Holdco pursuant to the TWIC Initial Contribution shall be deemed "TWIC
Broadband IP Licenses." Notwithstanding the foregoing, this Agreement shall not
be deemed a TWIC Broadband IP License. With respect to any TWIC Broadband IP
License that qualifies as both an Inbound TWIC Broadband IP License and an
Outbound TWIC Broadband IP License, unless TWIC in its discretion decides
otherwise, that portion of such TWIC Broadband IP License that qualifies as an
Inbound TWIC Broadband IP License shall be treated as such and that portion of
such TWIC Broadband IP License that qualifies as an Outbound TWIC Broadband IP
License shall be treated as such.
1.38 "TWIC Broadband Member" shall have the meaning set forth in the
definition of TWIC Broadband Group in the TWIC Contribution Agreement.
1.39 "TWIC Contribution Agreement" shall mean the Contribution
Agreement, dated as of the date hereof, by and between the Company and Holdco.
2. SOFTWARE. Any Software existing prior to the Closing that was created or
developed by or for or assigned, transferred, conveyed to, or otherwise owned by
TWIC
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that primarily relates to, arises out of or results from the TWIC Broadband
Business, shall be owned by the TWIC Broadband Group. Software owned by the TWIC
Broadband Group pursuant to this Section 2 is referred to as "TWIC Broadband
Group Software." For the avoidance of doubt, and notwithstanding anything to the
contrary herein, in any Ancillary Agreement or in the TWIC Contribution
Agreement, all Software other than the TWIC Broadband Group Software shall be
exclusively owned by TWIC.
3. PROPRIETARY INFORMATION. Any Proprietary Information existing prior to the
Closing that was created or developed by or for or assigned, transferred,
conveyed to, or otherwise owned by TWIC that primarily relates to, arises out of
or results from the TWIC Broadband Business, shall be owned by the TWIC
Broadband Group. Proprietary Information owned by the TWIC Broadband Group
pursuant to this Section 3 is referred to as "TWIC Broadband Group Proprietary
Information." For the avoidance of doubt, and notwithstanding anything to the
contrary herein, in any Ancillary Agreement or in the TWIC Contribution
Agreement, all Proprietary Information other than the TWIC Broadband Group
Proprietary Information shall be exclusively owned by TWIC.
4. CONTENT. Any Content existing prior to the Closing that was created or
developed by or for or assigned, transferred, conveyed to, or otherwise owned by
the TWIC Broadband Group and primarily relates to, arises out of or results from
the TWIC Broadband Business, shall be owned by the TWIC Broadband Group. Content
owned by the TWIC Broadband Group pursuant to this Section 4 is referred to as
"TWIC Broadband Group Content." For the avoidance of doubt, and notwithstanding
anything to the contrary herein, in any Ancillary Agreement or in the TWIC
Contribution Agreement, all Content other than the TWIC Broadband Group Content
shall be exclusively owned by TWIC.
5. PATENTS. Any Patents existing prior to the Closing that were invented or
developed by or for or assigned, transferred, conveyed to, or otherwise owned by
the TWIC Broadband Group, including but not limited to, those Patents set forth
on Schedule A hereto, shall be owned by the TWIC Broadband Group. Patents owned
by the TWIC Broadband Group pursuant to this Section 5 are referred to as
"Existing TWIC Broadband Group Patents." For the avoidance of doubt, and
notwithstanding anything to the contrary herein, in any Ancillary Agreement or
in the TWIC Contribution Agreement, all Patents other than the TWIC Broadband
Group Patents shall be exclusively owned by TWIC.
6. TRADEMARKS. Any Trademarks existing prior to the Closing that were created or
developed by or for or assigned, transferred, conveyed to, or otherwise owned by
the TWIC Broadband Group and primarily relate to, arise out of or result from
the TWIC Broadband Business, shall be owned by the TWIC Broadband Group, except
that Trademarks set forth on Schedule 1 shall not be owned by the TWIC Broadband
Group. Trademarks owned by the TWIC Broadband Group pursuant to this Section 6
are referred to as "TWIC Broadband Group Trademarks." For the avoidance of
doubt, and notwithstanding anything to the contrary herein, in any Ancillary
Agreement or in the TWIC Contribution Agreement, all Trademarks other than the
TWIC Broadband Group Trademarks shall be exclusively owned by TWIC.
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7. IPR FUTURES AND ISSUES OF OWNERSHIP
7.1 Ownership Unaffected by this Agreement.
7.1.1 All Software, Proprietary Information, Patents, Content
and Trademarks
(a) created, developed or made, or,
(b) other than by operation of this Agreement,
otherwise acquired or controlled,
by a member of a Group after the Closing ("IPR Futures")
shall be owned in accordance with applicable law or agreement and such ownership
is not covered or in any way provided by this Agreement (other than Section 7.3
and 8 below), the TWIC Contribution Agreement or any Ancillary Agreement, except
that Patents issuing on applications contained in the definition of Existing
TWIC Broadband Group Patents and all counterparts, continuations, divisions,
reissues, reexaminations and renewals of Existing TWIC Broadband Group Patents
shall be owned by the Company.
7.2 No Rights or Licenses Granted. Other than
7.2.1 with respect to Patents included in the definitions of
Existing TWIC Broadband Group Patents; and
7.2.2 as provided in the Patent Assignment, the Trademark and
Service Mark Assignment, or the Copyright and Technology Assignment,
no rights or licenses under any IPR Futures are granted pursuant to this
Agreement, the TWIC Contribution Agreement or any Ancillary Agreement.
7.3 Issues as to Ownership. In the event that an issue should arise
under this Agreement as to the ownership of particular Software, Proprietary
Information, Copyrights, Content, Patents, Trademarks or IPR Futures, the
Parties shall discuss and negotiate reasonably in good faith to resolve any such
issue.
8. ASSIGNMENT AND SUBLICENSES
8.1 Assignment Agreements. By the Patent Assignment, the Copyright and
Technology Assignment and the Trademark and Service Mark Assignment, on the
Closing, Holdco, on behalf of itself and each of its Subsidiaries, shall assign
to the Company any and all rights, title and interest in, to and under any
Existing TWIC Broadband Group Patents, TWIC Broadband Group Content, TWIC
Broadband Group Trademarks, TWIC Broadband Group Software and TWIC Broadband
Group Proprietary Information.
8.2 Assignment of TWIC Broadband IP Licenses. Holdco, on behalf of
itself and each of its Subsidiaries, does hereby assign, convey, transfer and
deliver to the
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Company effectively immediately following the Closing, all of Holdco's and
each of its Subsidiaries' entire right, title and interest, to, in and under all
TWIC Broadband IP Licenses, in accordance with the terms of such licenses and
only to the extent Holdco has the right to do so (subject to its obligations in
Section 16.3.1), together with any and all rights and licenses granted to the
Company pursuant to this Agreement. Immediately after the assignment to the
Company set forth in this Section 8.2, Holdco and the other TWIC Non-Broadband
Members shall no longer retain any rights or licenses granted to the Company
pursuant to this Agreement.
8.3 Failure of Assignment. In the event that a particular TWIC
Broadband IP License cannot be assigned by Holdco to the Company after
assistance has been fully rendered in accordance with the obligations set forth
in Section 16.3.1, then, with respect to such a TWIC Broadband IP License that
is
8.3.1 an Outbound TWIC Non-Broadband IP License, Holdco hereby
irrevocably appoints the Company as Holdco's exclusive agent for administering
such Outbound TWIC Broadband IP License and hereby irrevocably assigns to the
Company any and all right, title and interest in and to all royalties and other
payments to be paid to Holdco pursuant to such Outbound TWIC Broadband IP
License. Holdco shall, on behalf of itself and each of its Subsidiaries, at any
time without charge to the Company, sign all papers, take all rightful oaths,
and do all acts which the Company believes to be necessary, desirable or
convenient to effect such appointment and assignment, including sending such
letters as the Company may request directing licensees under such Outbound TWIC
Non-Broadband IP Licenses to make payments to the Company.
8.3.2 an Inbound TWIC Broadband IP License, Holdco shall, to
the fullest extent permitted by such Inbound TWIC Broadband IP License, exercise
its rights for the maximum benefit and protection of the Company, and Holdco, to
the fullest extent permitted without jeopardizing Holdco's license rights under
such Inbound TWIC Broadband IP License, hereby irrevocably appoints the Company
as an agent for Holdco under such Inbound TWIC Broadband IP License with full
authority to act on behalf of Holdco to ensure that the TWIC Broadband Group
enjoys the maximum benefit and protection of such Inbound TWIC Broadband IP
License. Holdco shall, on behalf of itself and each of its Subsidiaries, at any
time without charge to the Company, sign all papers, take all rightful oaths,
and do all acts which the Company believes to be necessary, desirable or
convenient to effect such appointment, including sending such letters as the
Company may request advising licensors of such appointment.
8.4 Order of Precedence. In the event of any inconsistency between the
terms and conditions of this Agreement and those of the Patent Assignment, the
Copyright and Technology Assignment, or the Trademark and the Service Mark
Assignment, the order of priority shall be first the Patent Assignment, the
Copyright and Technology Assignment, or the Trademark and Service Mark
Assignment, as applicable, and second this Agreement.
9. ASSIGNMENT
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9.1 Neither Party shall assign its rights or obligations under this
Agreement without the prior written consent of the other Party, unless such
assignment is to a Person who is or becomes an Affiliate of such Party. This
Agreement shall be binding upon and inure to the benefit of and be enforceable
by the successors, legal representatives and permitted assigns of each of the
Parties.
9.2 Subject to the terms and conditions of this Agreement and the
Ancillary Agreements, as applicable, the Company shall have the right to assign,
transfer, convey, license or use in any manner, any intellectual property,
including Software, Proprietary Information, Patents, Content and Trademarks,
owned by the Company, whether as a result of allocations, assignments or
transfers set forth in or contemplated by this Agreement, the Ancillary
Agreements or otherwise.
10. INFRINGEMENT
The Company and Holdco agree to reasonably cooperate with each
other in the protection and enforcement of the intellectual property licensed to
the other Party pursuant to this Agreement. Licensor may, in its sole
discretion, commence or prosecute and effect the disposition of any claims or
suits relative to the infringement, misappropriation and/or unlawful use of the
licensed intellectual property in its own name and may, with Licensee's
permission, such permission not to be unreasonably withheld or delayed, join
Licensee as a party in the prosecution of such claims or suits. Licensee agrees
to reasonably cooperate with Licensor in connection with any such claims or
suits and undertakes to furnish reasonable assistance to Licensor in the conduct
of all proceedings in regard thereto. Both Parties shall promptly notify the
other party in writing of any infringement, misappropriation or illegal uses by
others of the licensed intellectual property.
11. NO WARRANTIES OR REPRESENTATIONS
ALL SOFTWARE, PROPRIETARY INFORMATION, PATENTS AND CONTENT
COVERED UNDER THIS AGREEMENT ARE FURNISHED "AS IS," WITHOUT ANY SUPPORT,
ASSISTANCE, MAINTENANCE OR WARRANTIES OF ANY KIND, WHATSOEVER.
EACH GROUP ASSUMES TOTAL RESPONSIBILITY AND RISK FOR ITS USE
OF ANY SOFTWARE, PATENTS, PROPRIETARY INFORMATION OR CONTENT COVERED BY THIS
AGREEMENT. NEITHER GROUP MAKES, AND EACH GROUP EXPRESSLY DISCLAIMS, ANY EXPRESS
OR IMPLIED WARRANTIES OF ANY KIND WHATSOEVER, INCLUDING, BUT NOT LIMITED TO,
IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE,
WARRANTIES OF TITLE OR NON-INFRINGEMENT, OR ANY WARRANTY THAT SUCH SOFTWARE,
PATENTS, PROPRIETARY INFORMATION OR CONTENT IS "ERROR FREE."
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12. GOVERNING LAW; IP CLAIMS
12.1 Choice of Law. This Agreement shall be governed by, and construed
and enforced in accordance with, the laws of the State of New York without
regard to its principles of conflicts of law. Except as otherwise provided
herein, the Company and Holdco 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.
12.2 Intellectual Property Rights. Notwithstanding any provision in
this Agreement, the TWIC Contribution Agreement or any Ancillary Agreement, in
no event shall any claims, disputes or controversies between the Parties which
potentially concern the validity, enforceability, infringement or
misappropriation of any intellectual property rights, including any rights
protectable under intellectual property law anywhere throughout the world such
as Patent, Copyright, trade secret and Trademark law, be subject to resolution
by arbitration.
12.3 Equitable Remedies. The Parties recognize that money damages alone
may not be an adequate remedy for any breach or threatened breach of any
obligation hereunder involving intellectual property rights or either Party
exceeding the scope of its license and rights hereunder. The Parties therefore
agree that in addition to any other remedies available hereunder, by law or
otherwise, the non-breaching Party shall be entitled to seek injunctive relief
against any such continued action by the other Parties.
12.4 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.
13. NOTICE
Unless otherwise provided in this Agreement, all notices,
consents, approvals, waivers and the like made hereunder shall be in written
English addressed as provided below, shall reference this Agreement and shall be
sent by any of the following methods: (a) certified mail, postage-prepaid,
return-receipt requested, (b) a delivery service which requires proof of
delivery signed by the recipient or (c) properly-transmitted facsimile followed
by written confirmation in accordance with methods (a), (b) or first-class U.S.
mail. The date of notice shall be deemed to be the date it was received (in the
case of method (c) above, the date of notice shall be deemed to be the date that
the facsimile copy is received). A Party may change its address for notice by
written notice delivered in accordance with this Section 13.
10
<PAGE>
If to Holdco to: Warner Communications Inc.
c/o AOL Time Warner Inc.
75 Rockefeller Plaza
New York, New York 10019
Attn: General Counsel
Fax: 212-258-3172
If to the Company to: Prior to the Closing:
MediaOne TWE Holdings, Inc.
c/o AT&T Corp.
295 North Maple Avenue 295 North
Basking Ridge, New Jersey 07920
Attn: Secretary
Fax: 908-953-8360
After the Closing:
Time Warner Cable Inc.
290 Harbor Drive
Stamford, Connecticut 06902
In each case with a copy to:
Paul, Weiss, Rifkind, Wharton &
Garrison
1285 Avenue of the Americas
New York, New York 10019
Attn: Robert B. Schumer, Esq.
Fax: 212-757-3990
Prior to the consummation of the
AT&T Comcast Merger:
AT&T Corp.
295 North Maple Avenue
Basking Ridge, New Jersey 07920
Attn: Secretary
Fax: 908-953-8360
11
<PAGE>
With a copy to:
Wachtell, Lipton, Rosen & Katz
51 West 52nd Street
New York, New York 10019
Attn: Trevor S. Norwitz
Fax: 212-403-2000
Following the consummation of the
AT&T Comcast Merger:
Comcast Corporation
1500 Market Street
Philadelphia, Pennsylvania 19102
Attn: General Counsel
Fax: 215-981-7794
With a copy to:
Davis Polk & Wardwell
450 Lexington Avenue
New York, New York 10017
Attn: Dennis S. Hersch
William L. Taylor
Fax: 212-450-4800
14. FURTHER DUE DILIGENCE
The Company and Holdco acknowledge that following the
execution of this Agreement and prior to the Closing, the Company and Holdco
will be conducting further due diligence into the Patents, Content and other
intellectual property owned by the Parties. The Company and Holdco agree to work
in good faith to ensure that the intellectual property covered by this Agreement
has been properly allocated and assigned to the Company according to principles
set forth in this Agreement.
15. FEES AND EXPENSES
All Transaction Expenses incurred by either of the Parties or
its Affiliates shall be paid as set forth in the Restructuring Agreement.
16. MISCELLANEOUS
16.1 No Other Rights. EXCEPT AS EXPRESSLY PROVIDED IN THIS AGREEMENT OR
THE ANCILLARY AGREEMENTS, NO OTHER RIGHTS OR LICENSES ARE GRANTED.
12
<PAGE>
16.2 No Enforcement Against Third-Party. Notwithstanding any provision
of this Agreement or the Ancillary Agreements, in no event shall any member of
any Group be required to enforce or otherwise assert against any Person any
intellectual property rights.
16.3 Further Assurances. Each Party covenants to execute upon request
any further documents reasonably necessary to effect the express terms and
conditions of this Agreement, including such documents as are reasonably
necessary to vest title in intellectual property rights as provided in this
Agreement. All expenses incurred in connection with such actions shall be paid
in accordance with Section 15.
16.3.1 Assistance with Assignment. Holdco shall, at any time
without charge to the Company, sign all papers, take all rightful oaths, and do
all acts which the Company believes are necessary, desirable or convenient to
assign, convey, transfer and deliver to the Company any licenses to be assigned
pursuant to Section 8.2, and to record such assignments with the appropriate
Governmental Authorities, including without limitation, using reasonable efforts
to seek consent of any party to any such license for the assignment of the same
to the Company. It is understood and agreed that Holdco shall not be required to
undertake extraordinary or unreasonable measures to obtain any necessary
consent, including making any expenditures or accepting any material changes in
the terms of any license agreement for which consent is sought.
16.4 Rules of Construction. As used in this Agreement, (i) 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; (ii) 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;
(iii) 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;
(iv) 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; (v) the words "Party" and "Parties"
refer, respectively, to each or both parties to this Agreement (vi) reference to
a work of authorship or information as being created or developed by a Party
means that the work of authorship or information is created or developed by
employees of that Party or by such other individuals, such as contractors, who
have a duty to assign ownership in such work of authorship or information to
such Party. This Agreement shall be fairly interpreted in accordance with its
terms and without any strict construction in favor of or against either Party.
16.5 Amendments. This Agreement may not be amended, changed,
supplemented, waived or otherwise modified except by an instrument in writing
signed by the Parties.
16.6 No Waiver. The failure of either Party to exercise any right,
power or remedy provided under this Agreement or otherwise available in respect
hereof at law or in
13
<PAGE>
equity, or to insist upon compliance by the other Party 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.
16.7 Third Party Beneficiaries. The provisions of this Agreement and
each Ancillary Agreement are solely for the benefit of the Parties and are not
intended to confer upon any Person except the Parties any rights or remedies
hereunder and there are no third party beneficiaries of this Agreement or any
Ancillary Agreement and neither this Agreement nor any Ancillary Agreement shall
provide any third person with any remedy, claim, liability, reimbursement, claim
of action or other right in excess of those existing without reference to this
Agreement or any Ancillary Agreement. No Party hereto shall have any right,
remedy or claim with respect to any provision of this Agreement or any Ancillary
Agreement to the extent such provision relates solely to the other Party hereto.
No Party shall be required to deliver any notice under this Agreement or under
any Ancillary Agreement to any other Party with respect to any matter in which
such other Party has no right, remedy or claim.
16.8 Force Majeure. No Party shall be deemed in default of this
Agreement or any Ancillary Agreement during the period of extension referred to
in the next sentence to the extent that any delay or failure in the performance
of its obligations under this Agreement or any Ancillary Agreement results from
any cause beyond its reasonable control and without its fault or negligence,
such as acts of God, criminal or terrorist acts, acts of civil or military
authority, embargoes, epidemics, war, riots, insurrections, fires, explosions,
earthquakes, floods, unusually severe weather conditions, labor problems or
unavailability of parts, or, in the case of computer systems, any failure in
electrical or air conditioning equipment. In the event of any such excused
delay, the time for performance shall be extended for a period equal to the time
lost by reason of the delay, but in no event shall such period of extension
exceed 45 days.
16.9 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.
16.10 Severability. The provisions of this Agreement are severable, and
in the event that any one or more provisions, or any portion thereof, are deemed
illegal or unenforceable, the remaining provisions or portions thereof, as the
case may be, shall remain in full force and effect unless the deletion of such
provision or portion thereof shall cause this Agreement to become materially
adverse to either Party, in which event the Parties shall use commercially
reasonable efforts to arrive at an accommodation that best preserves for the
Parties the benefits and obligations of the offending provision or portion
thereof.
16.11 Entire Agreement. This Agreement together with the Ancillary
Agreements set forth the entire agreement and understanding between the Parties
as to the subject matter hereof and thereof and merge all prior discussions
between them. Neither of the
14
<PAGE>
Parties shall be bound by any warranties, understandings or representations with
respect to such subject matter other than as expressly provided herein, in prior
written agreements, or in a writing executed with or subsequent to the execution
of this Agreement by an authorized representative of the Party to be bound
thereby.
15
<PAGE>
IN WITNESS WHEREOF, each of the Parties has caused this
Agreement to be duly executed on its behalf by one of its duly authorized
officers as of the date first written above.
MEDIAONE TWE HOLDINGS, INC.
By: /s/ Charles H. Noski
---------------------------
Name: Charles H. Noski
Title: Authorized Signatory
WARNER COMMUNICATIONS INC.
By: /s/ Spencer B. Hays
---------------------------
Name: Spencer B. Hays
Title: Senior Vice President
16
<PAGE>
Schedule 1
rr.com
roadrunner.com
Any domain name incorporating "rr" or "roadrunner"
1
<PAGE>
EXHIBIT I
COPYRIGHT AND TECHNOLOGY ASSIGNMENT
This Copyright and Technology Assignment, dated as of [ ], is
by and between MediaOne Holdings, Inc., a Delaware corporation (hereinafter "the
Company"), and Warner Communications Inc., a Delaware corporation (hereinafter
"Holdco"). Capitalized terms used herein and not otherwise defined shall have
the respective meanings assigned to them in the Intellectual Property Agreement,
dated as of the date hereof (the "TWIC Intellectual Property Agreement"), by and
between Holdco and the Company.
WHEREAS, as of the Closing, Holdco owns and controls certain
intellectual property related to the TWIC Broadband Business;
WHEREAS, pursuant to the Contribution Agreement, dated as of
the date hereof, by and between the Company and Holdco (the "TWIC Contribution
Agreement"), the parties thereto determined, among other things, to allocate
assets relating to the TWIC Broadband Business to the Company;
WHEREAS, pursuant to the TWIC Intellectual Property Agreement,
the parties have allocated to the Company the intellectual property assets
related to the TWIC Broadband Business; and;
WHEREAS, in furtherance of the foregoing, it is appropriate
and desirable to transfer the intellectual property related to the TWIC
Broadband Business to the Company.
NOW, THEREFORE, for good and valuable consideration, the
receipt of which is hereby acknowledged, the parties agree as follows:
ARTICLE I
TRANSFER FROM HOLDCO TO THE COMPANY
1.1 Assignment. Effective immediately following the Closing, Holdco, on
behalf of itself and each of its Subsidiaries, does hereby assign, convey,
transfer and deliver (to the extent not already assigned pursuant to Section 8.2
of the TWIC Intellectual Property Agreement) to the Company, its successors,
assigns and legal representatives or nominees, Holdco's and each of its
Subsidiaries' entire rights, title and interest, for all countries,
jurisdictions and political entities of the world, along with the right to sue
for past infringement, and collect damages therefor, in and to all (i) TWIC
Broadband Group Content (the "Broadband Transferred Content"), (ii) TWIC
Broadband Group Proprietary Information and (iii) TWIC Broadband Group Software
(together with the Proprietary Information set forth in clause (ii) above, the
"Broadband Transferred Technology").
1.2 Further Assurances. Holdco, on behalf of itself and each of its
Subsidiaries, agrees that following the Closing, upon request it will, at any
time without
I-1
<PAGE>
charge to the Company, sign all papers, take all rightful oaths, and do all acts
which may be necessary, desirable or convenient (as determined in the Company's
sole discretion) for vesting title to the Broadband Transferred Content and
Broadband Transferred Technology in the Company, its successors, assigns and
legal representatives or nominees, including but not limited to any acts which
may be necessary, desirable or convenient for claiming said rights and for
securing and maintaining the Broadband Transferred Content or the Broadband
Transferred Technology transferred to the Company pursuant to this Agreement, as
applicable, in any and all countries and for vesting title thereto in the
Company, its successors, assigns, legal representatives and nominees. Holdco, on
behalf of itself and each of its Subsidiaries, hereby appoints the Company and
any agent thereof , with full power of substitution, as its true and lawful
attorney-of-fact with full irrevocable power and authority in place and stead of
Holdco and in the name of Holdco or in its own name, for the purposes of
carrying out the terms of this Agreement, to take any and all appropriate action
and to execute any and all documents and instruments which may be necessary or
desirable to accomplish the purposes of this Agreement. Furthermore, Holdco
agrees that upon request it will, at any time without charge to the Company,
cooperate fully with the Company in the protection and enforcement of the
Broadband Transferred Content and Broadband Transferred Technology transferred
to the Company pursuant to this Agreement, including but not limited to,
cooperating fully with the Company in connection with any claims or suits
brought by or against the Company relating to the Broadband Transferred Content
and Broadband Transferred Technology transferred to the Company pursuant to this
Agreement.
1.3 No Retention of Records. Holdco agrees that once it fulfills its
obligations under paragraph 1.1, it will not maintain any copies or records of
the Broadband Transferred Content or Broadband Transferred Technology.
ARTICLE II
MISCELLANEOUS
2.1 All Transaction Expenses incurred by either of the Parties in
connection with or related to this Agreement shall be paid as set forth in
Section 15 of the TWIC Intellectual Property Agreement.
I-2
<PAGE>
IN WITNESS WHEREOF, each of the Parties has caused this
Agreement to be duly executed on its behalf by one of its duly authorized
officers as of the date first written above.
MEDIAONE TWE HOLDINGS, INC.
By:
---------------------------
Name:
Title:
WARNER COMMUNICATIONS INC.
By:
---------------------------
Name:
Title:
I-3
<PAGE>
State of New York )
) ss:
County of )
On the ______ day of ____________, 2002, before me came ___________, to
me known, who, being by me duly sworn, did depose and say that he/she is XXXXX
of Warner Communications Inc., the corporation described in and which executed
the foregoing instrument; that he/she knows the seal of said company; that the
seal affixed to said instrument is such corporate seal; that it was so affixed
by authority of the members of said corporation and that he/she signed his/her
name thereto by like authority.
------------------
Notary Public
I-4
<PAGE>
EXHIBIT II
PATENT ASSIGNMENT
This Patent Assignment, dated as of [ ], is by and between
MediaOne TWE Holdings, Inc., a Delaware limited partnership (hereinafter the
"Company") and Warner Communications Inc., a Delaware corporation (hereinafter
"Holdco").
WHEREAS, as of the Closing, Holdco owns and controls certain
intellectual property related to the TWIC Broadband Business;
WHEREAS, pursuant to the Contribution Agreement, dated as of
the date hereof, by and between the Company and Holdco (the "TWIC Contribution
Agreement"), the parties thereto determined, among other things, to allocate
assets relating to the TWIC Broadband Business to the Company;
WHEREAS, pursuant to the TWIC Intellectual Property Agreement,
dated as of the date hereof, by and between TWIC and Holdco (the "TWIC
Intellectual Property Agreement"), the parties have allocated to the Company the
intellectual property assets related to the TWIC Broadband Business; and
WHEREAS, in furtherance of the foregoing, it is appropriate
and desirable to transfer the Patents related to the TWIC Broadband Business to
the Company.
NOW, THEREFORE, for good and valuable consideration, the
receipt of which is hereby acknowledged, the parties agree as follows:
ARTICLE I
DEFINITIONS
1.1 Capitalized terms used herein and not otherwise defined shall have
the respective meanings assigned to them in the TWIC Intellectual Property
Agreement.
1.2 "Existing TWIC Broadband Group Patents" has the meaning assigned to
it in the TWIC Intellectual Property Agreement.
ARTICLE II
TRANSFER FROM HOLDCO TO THE COMPANY
2.1 Assignment. Effectively immediately following the Closing, Holdco,
on behalf of itself and each of its Subsidiaries, does hereby assign, convey,
transfer and deliver (to the extent not already assigned pursuant to Section 8.2
of the TWIC Intellectual Property Agreement) to the Company, its successors,
assigns and legal representatives or nominees, Holdco's and each of its
Subsidiaries' entire right, title and interest, for all countries, jurisdictions
and political entities of the world, in, to and under all Existing TWIC
Broadband Group Patents that it owns immediately following the Closing, along
with the right to sue for past infringement and collect damages therefor.
II-1
<PAGE>
2.2 Further Assurances. Holdco, on behalf of itself and each of its
Subsidiaries, agrees that upon request it will, at any time without charge to
the Company, sign all papers, take all rightful oaths, and do all acts which may
be necessary, desirable or convenient (as determined in the Company's
discretion) for vesting title to the Existing TWIC Broadband Group Patents
transferred pursuant to this Agreement in the Company, its successors, assigns
and legal representatives or nominees, including, but not limited to, any acts
which may be necessary, desirable or convenient for claiming said rights and for
securing and maintaining the Existing TWIC Broadband Group Patents in any and
all countries and for vesting title thereto in the Company, its successors,
assigns and legal representatives or nominees (including, but not limited to,
the transfer of patent prosecution files and databases and execution of patent
assignments and powers of attorney for domestic and foreign patents and patent
applications). Holdco, on behalf of itself and each of its Subsidiaries, hereby
appoints the Company and any agent thereof , with full power of substitution, as
its true and lawful attorney-of-fact with full irrevocable power and authority
in place and stead of Holdco and in the name of Holdco or in its own name, for
the purposes of carrying out the terms of this Agreement, to take any and all
appropriate actions and to execute any and all documents and instruments which
may be necessary or desirable to accomplish the purposes of this Agreement.
Furthermore, Holdco agrees that upon request it will, at any time without charge
to the Company, cooperate fully with the Company in the protection and
enforcement of the Existing TWIC Broadband Group Patents transferred pursuant to
this Agreement, including, but not limited to, cooperating fully with the
Company in connection with any claims or suits brought by or against the Company
relating to the Existing TWIC Broadband Group Patents transferred pursuant to
this Agreement.
ARTICLE III
MISCELLANEOUS
3.1 All Transaction Expenses incurred by either of the Parties in
connection with or related to this Agreement shall be paid as set forth in
Section 15 of the TWIC Intellectual Property Agreement.
II-2
<PAGE>
IN WITNESS WHEREOF, each of the parties has caused this
Agreement to be duly executed on its behalf by one of its duly authorized
officers as of the date first written above.
MEDIAONE TWE HOLDINGS, INC.
By:
----------------------------
Name:
Title:
WARNER COMMUNICATIONS INC.
By:
----------------------------
Name:
Title:
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<PAGE>
State of New York )
) ss:
County of )
On the _______ day of ______________, 2002 before me came
__________________________, to me known, who, being by me duly sworn, did depose
and say that he/she is XXXXXX of Warner Communications Inc., the corporation
described in and which executed the foregoing instrument; that he/she knows the
seal of said corporation; that the seal affixed to said instrument is such
corporate seal; that it was so affixed by authority of the members of said
corporation and that he/she signed his/her name thereto by like authority.
------------------
Notary Public
II-4
<PAGE>
EXHIBIT III
TRADEMARK AND SERVICE MARK ASSIGNMENT
This Trademark and Service Mark Assignment, dated as of [ ],
is by and between MediaOne TWE Holdings, Inc., a Delaware corporation
(hereinafter "TWIC"), and Warner Communications Inc., a Delaware corporation
(hereinafter "Holdco").
WHEREAS, as of the Closing, Holdco owns and controls certain
intellectual property related to the TWIC Broadband Business;
WHEREAS, pursuant to the Contribution Agreement, dated as of
the date hereof, by and between the Company and Holdco (the "TWIC Contribution
Agreement"), the parties thereto determined, among other things, to allocate
assets relating to the TWIC Broadband Business to the Company;
WHEREAS, pursuant to the TWIC Intellectual Property Agreement,
dated as of the date hereof, by and between the Company and Holdco (the "TWIC
Intellectual Property Agreement"), the parties have allocated to the Company the
intellectual property assets related to the TWIC Broadband Business;
WHEREAS, pursuant to this Trademark and Service Mark
Assignment, Holdco transfers to the Company all of the TWIC Broadband Group
Trademarks and related goodwill; and
NOW, THEREFORE, for good and valuable consideration, the
receipt of which is hereby acknowledged, the parties agree as follows:
ARTICLE I
DEFINITIONS
1.1 Capitalized terms used herein and not otherwise defined shall have
the respective meanings assigned to them in the TWIC Intellectual Property
Agreement.
1.2 "TWIC Broadband Group Trademarks" has the meaning assigned to it in
the TWIC Intellectual Property Agreement.
ARTICLE II
ASSIGNMENT FROM HOLDCO TO THE COMPANY
2.1 Assignment. Effective immediately following the Closing, Holdco, on
behalf of itself and each of its Subsidiaries, does hereby assign, convey,
transfer and deliver to the Company, its successors, assigns and legal
representatives or nominees, Holdco's and each of its Subsidiaries' right, title
and interest in and to the TWIC Broadband Group Trademarks in the United States
and throughout the world, any common law rights relating to the TWIC Broadband
Group Trademarks, the goodwill of the business associated with and represented
by the TWIC Broadband Group Trademarks, and rights to proceeds of the foregoing,
including, without limitation, any
III-1
<PAGE>
claim by Holdco against third parties for past, present or future infringement
of the TWIC Broadband Group Trademarks.
2.2 Intent-to-Use Applications. Effective immediately following the
Closing, Holdco, on behalf of itself and each of its Subsidiaries, hereby
irrevocably transfers and assigns to the Company all of its right, title and
interest in and to that portion of Holdco's business in connection with which it
has a bona fide intent to use those TWIC Broadband Group Trademarks that are the
subject of applications filed on an intent-to-use basis and/or for which an
Amendment to Allege Use, a Statement of Use or a specimen of use has not yet
been filed and accepted by the relevant Trademark Office or other governing
authority.
2.3 No Registration of Similar Marks. Holdco will neither use nor
attempt to register any TWIC Broadband Group Trademarks or any Trademark
confusingly similar thereto for so long as said TWIC Broadband Group Trademark
has not been abandoned by the Company or any of its Affiliates. Holdco shall not
oppose, attempt to cancel or in any way challenge the Company's use of, or the
use by any of the Company's licensees of, or any applications or registrations
in the name of the Company for the TWIC Broadband Group Trademarks.
2.4 Further Assurances. Holdco, on behalf of itself and each of its
Subsidiaries, agrees that upon request it will, at any time without charge to
the Company, sign all papers, take all rightful oaths, and do all acts which may
be necessary, desirable or convenient (as determined in the Company's
discretion) to effect, transfer and record all of the TWIC Broadband Group
Trademarks to the Company, its successors, assigns and legal representatives
including, but not limited to, any acts which may be necessary, desirable or
convenient for claiming said rights and for securing and maintaining the TWIC
Broadband Group Trademarks in any and all countries and for vesting title
thereto in the Company (including, but not limited to, the transfer of all
prosecution files and databases for the TWIC Broadband Group Trademarks).
Holdco, on behalf of itself and each of its Subsidiaries, hereby appoints the
Company and any agent thereof, with full power of substitution, as its true and
lawful attorney-of-fact with full irrevocable power and authority in place and
stead of Holdco and in the name of Holdco or in its own name, for the purposes
of carrying out the terms of this Agreement, to take any and all appropriate
actions and to execute any and all documents and instruments which may be
necessary or desirable to accomplish the purposes of this Agreement.
Furthermore, Holdco agrees that upon request it will, at any time without charge
to the Company but at the Company's expense, cooperate fully with the Company in
the protection and enforcement of the TWIC Broadband Group Trademarks,
including, but not limited to, cooperating fully with the Company in connection
with any claims or suits brought by or against the Company relating to the TWIC
Broadband Group Trademarks. If any domain name registrar refuses to permit
Holdco to transfer the domain name registrations, then Holdco shall grant the
Company a perpetual, exclusive, royalty-free license to use such domain names
and shall, at the Company's expense, continue to renew such domain name
registrations until further notice from the Company.
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<PAGE>
ARTICLE III
MISCELLANEOUS
3.1 All Transaction Expenses incurred by either of the Parties in
connection with or related to this Agreement shall be paid as set forth in
Section 15 of the TWIC Intellectual Property Agreement.
III-3
<PAGE>
IN WITNESS WHEREOF, each of the parties has caused this
Agreement to be duly executed on its behalf by one of its duly authorized
officers as of thedate hereof.
MEDIAONE TWE HOLDINGS, INC.
By:
----------------------------
Name:
Title:
WARNER COMMUNICATIONS INC.
By:
----------------------------
Name: Spencer B. Hays
Title: Senior Vice President
III-4
<PAGE>
ACKNOWLEDGMENT
STATE OF NEW YORK )
ss.:
COUNTY OF NEW YORK )
I CERTIFY that on ______________, 2002, _____________
personally came before me and this person acknowledged under oath, to my
satisfaction that:
a) this person signed, sealed and delivered the attached
Trademark and Service Mark Assignment as ______________ of Warner Communications
Inc., and
b) the proper corporate seal was affixed; and
c) this Trademark and Service Mark Assignment was signed and
made by Warner Communications Inc. as its voluntary act and deed by virtue of
the proper authority.
---------------------------
Name:
Notary Public:
My Commission Expires:
[Notarial Seal]
Prepared by:
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