EXECUTION COPY
ASSIGNMENT OF RIGHTS
This Assignment of Rights Agreement ("Agreement") is entered into this 26th day
of July, 2002 between Xxxxxxxx Information Services Corporation, a Delaware
corporation ("Assignor") and Xxxxxxxx Communications, LLC, a Delaware limited
liability company ("Assignee").
WHEREAS, as of July 26, 2002, Assignee filed with the Bankruptcy Court in a
chapter 11 case pending in the United States Bankruptcy Court for the Southern
District of New York (the "Bankruptcy Court") its first amended chapter 11 plan
of reorganization (the "Plan"); and
Whereas, Assignor may have certain intellectual property rights in the
trademarks "WilTel" and "WilTel Turns Up Worldwide" (the "Marks"); and
Whereas, Assignor desires to quitclaim to Assignee any and all right, title, and
interest it may have in and to the Marks and Assignee desires to obtain
Assignor's right, title and interest in and to the Marks.
NOW THEREFORE, in consideration of the mutual covenants, promises,
representations, warranties and agreements contained herein, and other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, Assignor and Assignee, intending to be legally bound thereby,
agree that upon the occurrence of the Effective Date (as such term is defined in
the Plan) the following shall occur:
1. Assignor shall (and hereby does) quitclaim, grant, sell, and convey to
Assignee, and Assignee accepts, any and all worldwide right, title, and
interest, that Assignor may have in and to the Marks, including the associated
goodwill, common law rights and the US registrations 1485541 and 2205305 and the
Canadian registration TMA53190.
2. Assignor represents and warrants that it has not taken any actions that would
have a material adverse effect on any rights assigned hereunder. Except for the
registration of the xxxxxx.xxx domain in the name of a WorldCom subsidiary,
Assignor is not aware of any restrictions on the use by Assignee of the Marks.
3. Assignor shall, from time to time subsequent to the Effective Date, at the
request and expense of Assignee, execute and deliver all such instruments or
documents, including without limitation, all such additional conveyances,
transfers, consents and other assurances and do all such other acts and things
as Assignee, acting reasonably, may from time to time request be executed or
done in order to better evidence, perfect or effectuate any provision of this
Agreement or of any agreement or other document executed pursuant to this
Agreement or any of the respective obligations intended to be created hereby or
thereby, including, but not limited to, using good faith efforts to memorialize
the termination of the license of the Marks to Xxxxxxxx Telecommunications
Group, Inc. and WilTel, Inc. (purchased by LDDS Communications, Inc.) granted in
the Trademark License Agreement dated August 21, 1994, and cooperating in any
disputes between WorldCom and Assignee regarding the Marks and issues related to
the Marks, including, but not limited to, those relating to xxxxxx.xxx.
4. Assignor agrees that a logo formed by removing the word "Xxxxxxxx" or
"Xxxxxxxx Communications" from the current Xxxxxxxx Communications ribbon logo
(attached) and replacing it with
(a) "WilTel" or "WilTel Communications" or
(b) any other name that is not itself confusingly similar to
"Xxxxxxxx"
by Assignee is not confusingly similar to the Xxxxxxxx double ring logo (USPTO
Reg. # 2,440,706).
5. EXCEPT AS SPECIFICALLY PROVIDED IN THIS AMENDMENT, ASSIGNOR DISCLAIMS ALL
WARRANTIES, INCLUDING ANY STATUTORY OR IMPLIED WARRANTIES OR ANY WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, MARKETABLE TITLE, OR
NONINFRINGEMENT.
EXECUTION COPY
6. This Agreement shall be governed by and construed in accordance with the laws
of the state of New York, without regard to the conflicts of laws principles
thereof.
7. This Agreement shall be binding upon, and inure to the benefit of, the
parties hereto, their respective successors and permitted assigns.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized representatives as evidenced by their signatures below.
Xxxxxxxx Information Services Corporation Xxxxxxxx Communications, LLC
By: /s/ Xxxx X. XxXxxxxx By: /s/ Xxxxxx X. Xxxxxx
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Name: Xxxx X. XxXxxxxx Name: Xxxxxx X. Xxxxxx
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Title: Vice President, CFO Title: President & CEO
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