EXHIBIT 99.6
INTELLECTUAL PROPERTY AGREEMENT
This INTELLECTUAL PROPERTY AGREEMENT ("Agreement") is made by and
between General Motors Corporation, a Delaware corporation, its subsidiaries and
affiliates ("GM"), and ▇▇▇▇▇▇ Electronics Corporation, a Delaware corporation,
and its wholly-owned subsidiaries ("HEC"). GM and HEC are referred to
individually as a "Party" and collectively as "Parties".
WHEREAS, GM and HEC desire to set forth by this Agreement the rights
and obligations of the Parties in respect of certain intellectual property, and
certain ongoing activities and support between the Parties.
WHEREAS, the Parties acknowledge that all title, rights and obligations
set forth in this Agreement are in exchange for good and valuable consideration,
the receipt and sufficiency of which are hereby acknowledged.
ARTICLE I
DEFINITIONS
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1.1 "Affiliate" means any company controlled by, under common control with
or controlling a Party to this Agreement as of the Effective Date.
1.2 "Automotive Business" means the business of designing, developing,
manufacturing, marketing, selling, or importing motorized land
vehicles.
1.3 "Effective Date" means the date of this Agreement last signed below.
1.4 "GM Business" means the activities of GM as of the Effective Date
including but not limited to the Automotive Business and the OnStar
Business, but excluding the ▇▇▇▇▇▇ Business with respect to activities
not carried on by GM as of the Effective Date.
1.5 "▇▇▇▇▇▇ Business" means the activities of HEC and its Subsidiaries and
Affiliates as of the Effective Date, including but not limited to the
provision of telecommunications and entertainment products and services
such as digital satellite television, satellite leasing, network
products and services, data transmission and reception, mobile
communications and commerce and distance learning; but not including
the OnStar Business or the Automotive Business with respect to
activities not carried on by HEC as of the Effective Date.
1.6 "OnStar Business" means the delivery of telematics services to owners,
passengers and operators of vehicles.
1.7 "Separation" means the legal separation of HEC from control by GM.
1.8 "Subsidiary" means any company wholly owned by a Party as of the
Effective Date.
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INTELLECTUAL PROPERTY AGREEMENT
(Continued)
ARTICLE II
LICENSE TERMS
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2.1 License. To the extent of its lawful right to do so, HEC, grants to GM,
a perpetual, world-wide, irrevocable, royalty-free, non-exclusive
license under all HEC patents, copyrights, trade secrets and other
forms of intellectual property rights (excluding trademark rights)
("HEC IP Rights") to make, have made, use, and sell products and
services, (including but not limited to the right to import, offer to
sell and to copy, edit, modify, make derivative works of, reformat, and
translate) in the GM Business. This license includes the right of GM
dealers and customers of GM dealers to use and sell products and
services of the GM Business.
To the extent of its lawful right to do so, GM, grants to HEC, a
perpetual, world-wide, irrevocable, royalty-free, non-exclusive license
under all GM patents, copyrights, trade secrets and other forms of
intellectual property rights (excluding trademark rights) ("GM IP
Rights") to make, have made, use, and sell products and services,
(including but not limited to the right to import, offer to sell and to
copy, edit, modify, make derivative works of, reformat, and translate)
in the ▇▇▇▇▇▇ Business. This license includes the right of ▇▇▇▇▇▇'
distributors and customers to use and sell products and services of the
▇▇▇▇▇▇ Business.
2.2 Sublicense. To the extent of its lawful right to do so, HEC grants to
GM, in the GM Business, a perpetual, irrevocable, world-wide,
royalty-free, non-exclusive sub-license under all intellectual property
rights (excluding trademark rights) under which HEC is licensed or
sublicensed to the fullest extent that HEC is allowed to sublicense
those rights to GM, including the right to grant further sublicenses to
GM dealers and customers of dealers as necessary for each to use or
sell products and services of the GM Business. In the event that a
sub-license right referred to under this paragraph must be to an
Affiliate of HEC, this paragraph is deemed to have taken effect prior
to the Separation.
To the extent of its lawful right to do so, GM grants to ▇▇▇▇▇▇, in the
▇▇▇▇▇▇ Business, a perpetual, irrevocable, world-wide, royalty-free,
non-exclusive sub-license under all intellectual property rights
(excluding trademark rights) under which GM is licensed or sublicensed
to the fullest extent that GM is allowed to sublicense those rights to
HEC, including the right to grant further sublicenses to ▇▇▇▇▇▇'
distributors and customers as necessary for each to use or sell
products and services of the ▇▇▇▇▇▇ Business. In the event that a
sub-license right referred to under this paragraph must be to an
Affiliate of GM, this paragraph is deemed to have taken effect prior to
the Separation.
2.3 Limitations of License and Sublicense Rights. The HEC IP Rights
licensed under section 2.1 and the intellectual property rights
sub-licensed under section 2.2 shall only encompass those rights that
HEC owns or has a right to license or sublicense as of the Effective
Date and shall include only the intellectual property rights practiced
by GM in the GM Business. Any sublicense granted by GM under the rights
set forth in section 2.2
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INTELLECTUAL PROPERTY AGREEMENT
(Continued)
is subject to the restrictions in Section 2.1 and Section 2.2 and other
provisions of this Agreement.
The GM IP Rights licensed under section 2.1 and the intellectual
property rights sub-licensed under section 2.2 shall only encompass
those rights that GM owns or has a right to license or sublicense as of
the Effective Date and shall include only the intellectual property
rights practiced by HEC in the ▇▇▇▇▇▇ Business. Any sublicense granted
by HEC under the rights set forth in section 2.2 is subject to the
restrictions in Section 2.1 and Section 2.2 and other provisions of
this Agreement.
2.4 Third Party Rights. The license and sublicense grants to GM set forth
in Sections 2.1 and 2.2 are subject to all preexisting rights and
obligations between HEC and any third party, and all preexisting
restrictions and conditions which may apply. The license and
sublicenses granted shall be at no cost to HEC and any royalty payments
required for GM to exercise any such rights shall be paid by GM.
The license and sublicense grants to HEC set forth in Sections 2.1 and
2.2 are subject to all preexisting rights and obligations between GM
and any third party, and all preexisting restrictions and conditions
which may apply. The license and sublicenses granted shall be at no
cost to GM and any royalty payments required for HEC to exercise any
such rights shall be paid by HEC.
2.5 No Obligation to Deliver. This Agreement does not impose an obligation
on either Party to deliver any documents or information to the other
Party. To the extent any documents or information is exchanged between
the Parties, such documents or information shall be subject to the
confidentiality agreement(s) in place between the Parties.
ARTICLE III
ONSTAR AIR INTERFACE PROTOCOL
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3.1 License Restrictions. HEC agrees (a) not to use the OnStar Air
Interface Protocol and (b) not to license to any third party or
Affiliate, or transfer or disclose to any third party or Affiliate, the
OnStar Air Interface Protocol in either case, for enabling HEC, the
third party or Affiliate to use the OnStar Air Interface Protocol in
any vehicle or any product or service specially adapted for use in a
vehicle.
3.2 Term of Restriction. The restriction in section 3.1 shall extend for a
period of five years from the Effective Date.
3.3 OnStar Air Interface Protocol. The term "OnStar Air Interface Protocol"
means the software (source code and object code), specifications and
algorithms and protocols contained therein, developed by HEC under
funding by GM for use by OnStar for delivery of voice and data between
the OnStar call centers and OnStar vehicles.
3.4 Binding Obligations. The obligations of this Article 3 shall be binding
on all successors and assignees of HEC during the term specified in
section 3.2.
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INTELLECTUAL PROPERTY AGREEMENT
(Continued)
ARTICLE IV
JOINT RESEARCH AND DEVELOPMENT
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4.1 Collaborative Efforts. The Parties anticipate working together in
ongoing collaborative efforts involving research, development and/or
engineering designed to aid the possible bringing of new products and
services to market ("Collaborative Programs"). Each Collaborative
Program shall constitute a joint-effort by the Parties under which each
Party shall bear its own costs unless otherwise agreed to in advance in
writing.
4.2 Terms for Collaborative Efforts. Unless otherwise agreed to in advance
in writing, all Collaborative Programs during the term set forth in
section 4.1 of Schedule 1 shall be governed by the Terms and Conditions
for Joint Collaborations set forth in Schedule 1. The Terms and
Conditions shall not apply to any agreement or arrangement other than a
joint development effort approved by a joint HEC/GM management
committee (the "Management Committee"). For example, the Terms and
Conditions shall not apply to any supply arrangement, regular contract
or purchase order for goods or services or like arrangement. Each
Party's member of the Management Committee will use reasonable efforts
to identify mutually beneficial Collaborative Programs.
4.3 No Requirement to Enter into Efforts. Nothing in this agreement shall
be construed to require the Parties to enter into any specific
Collaborative Program.
ARTICLE V
ONGOING BUSINESS RELATIONSHIP
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5.1 ▇▇▇▇▇▇ XM Bandwidth. For a period of four (4) years from the Effective
Date, before transferring its right to the ▇▇▇▇▇▇ XM Bandwidth to any
party not a Subsidiary or Affiliate of HEC or a purchaser or successor
of either HEC, its Subsidiaries or Affiliates, HEC, or if applicable,
its Subsidiary or Affiliate, will offer the ▇▇▇▇▇▇ XM Bandwidth to GM
or GM's designated Subsidiary or Affiliate on terms comparable to those
offered to the other party. If GM or GM's designated Subsidiary or
Affiliate decline the offer, but the terms under which HEC, or if
applicable, its Subsidiary or Affiliate, proposes transfer of the
▇▇▇▇▇▇ XM Bandwidth to the other party improve for the other ▇▇▇▇▇,
then HEC, or if applicable, its Subsidiary or Affiliate, must offer the
▇▇▇▇▇▇ XM Bandwidth to GM or GM's designated Subsidiary or Affiliate
under the improved terms. "▇▇▇▇▇▇ XM Bandwidth" means that portion of
the satellite broadcast spectrum licensed to XM Satellite Radio that
HEC, its Subsidiaries or Affiliates has right to use under agreement
with XM Satellite Radio.
5.2 OnStar XM Bandwidth. For a period of four (4) years from the Effective
Date, before transferring its right to the OnStar XM Bandwidth to any
party not a Subsidiary or Affiliate of GM or a purchaser or successor
of either GM, its Subsidiaries or Affiliates, GM, or if applicable, its
Subsidiary or Affiliate, will offer the OnStar XM Bandwidth to HEC or
HEC's designated Subsidiary or Affiliate on terms comparable to those
offered to the other party. If HEC or HEC's designated Subsidiary or
Affiliate decline the offer, but
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INTELLECTUAL PROPERTY AGREEMENT
(Continued)
the terms under which GM, or if applicable, its Subsidiary or
Affiliate, proposes transfer of the OnStar XM Bandwidth to the other
party improve for the other party, then GM, or if applicable, its
Subsidiary or Affiliate, must offer the OnStar XM Bandwidth to HEC or
HEC's designated Subsidiary or Affiliate under the improved terms.
"OnStar XM Bandwidth" means that portion of the satellite broadcast
spectrum licensed to XM Satellite Radio that GM, its Subsidiaries or
Affiliates has right to use under agreement with XM Satellite Radio.
5.3 Nothing in sections 5.1 and 5.2 shall be interpreted as contradicting
the express contract terms under which HEC and GM obtained the ▇▇▇▇▇▇
XM Bandwidth and the OnStar XM Bandwidth, respectively. To the extent
that these sections 5.1-5.3 are contrary to any law, rule or regulation
governing the satellite broadcast spectrum licensed to XM Satellite
Radio or otherwise applicable to this Agreement, these sections 5.1-5.3
shall be construed to operate solely within the limits allowed by such
law, rule or regulation.
5.4 ▇▇▇▇▇▇ Technology and Services. For the products, services and
technologies being acquired by GM from HEC as of the Effective Date,
for 2 years following the Effective Date, HEC, shall offer such
products, services and technologies for sale to GM and GM's designated
subsidiaries and Affiliates, for use in the GM Business, on a most
favored customer basis as compared with similarly situated customers
under comparable circumstances taking into account quantities, price,
scope of the transaction, and other relevant factors.
5.5 Binding Obligations. The obligations of section 5.4 shall be binding on
all successors and assignees of HEC, but only to the extent HEC
commercially offers the HEC products, services and technologies
specified in section 5.4 during the term specified in section 5.4.
ARTICLE VI
ONGOING SUPPORT
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6.1 Support for HEC Technology. With regard to technology originating at
HEC and practiced in the GM Business as of the Effective Date ("HEC
Technology"), for eighteen (18) months from the Effective Date, HEC
will make available to GM, those technical persons within HEC who
developed the HEC Technology, who are then employed by HEC and who can
perform such support without frustration of their normal duties, to
answer technical questions arising out of GM's use of the HEC
Technology or arising out of any claim against GM, its Subsidiaries or
Affiliates related to the HEC Technology. Any such support will be: at
GM's expense and subject to HEC's standard terms and conditions and
then-existing rates for the provisions of like support.
6.2 Solicitation of OnStar Employees. For eighteen months from the
Effective Date, HEC agrees that GM may solicit on reasonable and lawful
terms and circumstances for interview and possible hiring by OnStar up
to two (2) employees who were involved in
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INTELLECTUAL PROPERTY AGREEMENT
(Continued)
the HEC OnStar development effort for GM. It is understood that nothing
in this section requires HEC to require any employee to interview with
or take employment with OnStar and nothing in this section requires
OnStar to hire any employee of HEC absent mutual agreement between
OnStar and the employee.
6.3 Administrative Assistance. Each Party shall review its records on an
ongoing basis to identify any intellectual property, title for which is
held by one Party but which should have been or be transferred to the
other Party pursuant to a prior agreement between the Parties. In the
case of such inadvertently retained intellectual property, or wherever
otherwise required, each Party agrees to execute, or authorize the
other party to execute in the name of each party, such additional
documents as are necessary to continue, secure, defend, register,
obtain or to otherwise give full force and perfect title in such an
intellectual property.
ARTICLE VII
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EFFECTIVE DATE, TERM AND TERMINATION
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7.1 Effective Date. This Agreement shall take effect as of the Effective
Date.
7.2 Term. This Agreement shall, continue until the last to expire of the
patents, copyrights, trade secrets and other forms of intellectual
property rights licensed and/or sublicensed under this Agreement.
ARTICLE VIII
MISCELLANEOUS
8.1 Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of Delaware, without regard to
the principles of conflicts of laws applicable thereto.
8.2 Existing Obligations. Nothing in this Agreement shall be construed to
alter any obligation of either party under the Master Separation
Agreement dated December 16, 1997, by and among, General Motors
Corporation, HE Holdings, Inc., ▇▇▇▇▇▇ Electronics Corporation and
Delco Electronics Corporation.
8.3 Non-Assignment. This Agreement, the license rights and the obligations
hereunder may not be assigned by either Party without the prior written
consent of the other Party which shall not be unreasonably withheld
except: a) in connection with the sale of the GM Business or the ▇▇▇▇▇▇
Business, whether by merger, asset purchase, consolidation, or
otherwise, or, b) in connection with the sale of a Subsidiary or
Affiliate of either Party, in which case the rights and obligations of
this Agreement relevant to such Subsidiary or Affiliate may be
assigned. Any attempted assignment or transfer without such consent
shall be void. Any assignment permitted by this Section 8.3 shall be
subject to all relevant rights, obligations, and restrictions under
this Agreement.
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INTELLECTUAL PROPERTY AGREEMENT
(Continued)
8.4 Relationship of Parties. Nothing in this Agreement shall constitute or
be construed to create a partnership, joint venture, or any other
agency or employment relationship between the Parties. Nothing in this
Agreement shall constitute or be construed to grant the other Party
authorization to enter into any agreement on behalf of, assume any
obligation for, or otherwise bind the other party financially or
otherwise.
8.5 Entire Agreement and Non-Waiver. This Agreement is the entire agreement
and understanding between the Parties relating to the specific subject
matter hereof, and cancels and supersedes all prior written or oral
agreements, arrangements, and understandings between the Parties
relating to the specific subject matter hereof. Furthermore, to the
extent there is a conflict between a provision in this Agreement and
the Settlement Agreement and Intellectual Property Rights License dated
December 17, 1997, the provision in this Agreement shall prevail. This
Agreement shall be binding on all heirs, successors and assignees of
the Parties, their Subsidiaries and Affiliates. This Agreement may be
amended or modified only by an express writing signed and dated by both
Parties.
8.6 Severability and Headings. The provisions of this Agreement shall be
severable and if any Agreement provision shall be held or declared
illegal, invalid, or unenforceable, then the Parties shall negotiate a
reasonable alternative provision that accomplishes as much of the
effect of the original provision as possible and, in any event, it
shall not affect any other Agreement provision or the interpretation,
effect, or enforceability of this Agreement. The headings in this
Agreement are used for convenience only and shall not be construed as
part of the Agreement or Impact the meaning, interpretation, or effect
thereof.
8.7 Confidentiality. The Parties agree that they will keep confidential the
specific terms of this Agreement, and neither Party shall disclose such
information to any third party without written consent of the other
party except as required by federal or state securities law or court
order, or by bona fide prospective investors and then only on
confidential basis pursuant to a signed confidentiality agreement.
Each Party hereto indicates its understanding of and full agreement with all the
foregoing by its duly authorized representative's signature below.
GENERAL MOTORS CORPORATION ▇▇▇▇▇▇ ELECTRONICS CORPORATION
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇
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▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Date: 10-28-2001 Date: 10-28-2001
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