TRADE NAME LICENSE AGREEMENT
AGREEMENT dated as of the 14th day of July, 1998, by and between Time
Warner Inc., a Delaware corporation, located at ▇▇ ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇,
▇▇ ▇▇▇▇▇ (hereinafter "Licensor") and Time Warner Telecom LLC, a Delaware
limited liability company, located at ▇▇▇▇ ▇. ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇ (hereinafter "Licensee").
WHEREAS, Licensor is the owner of the TIME WARNER trademark, service ▇▇▇▇
and trade name (hereinafter the "Name");
WHEREAS, Licensee was formed in June, 1998, and wishes to use the Name as
part of its corporate name; and
WHEREAS, Licensor is willing to allow Licensee to use the Name as part of
its corporate name.
NOW, THEREFORE, subject to and upon the terms and conditions set forth
herein, the parties hereto agree as follows:
1. Grant
(a) Licensor hereby grants to Licensee a non-exclusive, royalty-free
license to use the Name in Licensee's trade name TIME WARNER TELECOM and in the
trade names of Licensee's subsidiaries as indicated on Schedule 1 hereto, in
connection with the operation of the business (hereinafter "the Business") as
permitted under the provisions of its Amended and Restated Limited Liability
Company Agreement as in effect on the date hereof (the "LLC Agreement").
(b) During the term of this Agreement, Licensor shall not use, or license
any third party to use, the Name in combination with the word TELECOM.
(c) Except as specifically provided in Paragraph 1(b) above, this Agreement
shall not in any way limit or restrict Licensor's right, either by itself or
through third parties, to use, promote, license or otherwise exploit the Name.
2. Territory
The license granted herein shall be limited to the United States, its
territories and possessions (hereinafter the "Territory").
3. Term
(a) The term of this Agreement shall commence on the date set forth on page
one hereof and, unless earlier terminated as provided herein, shall continue for
a period of four (4) years (hereinafter the "Initial Term").
(b) Following the Initial Term, this Agreement shall renew automatically
from year to year unless either party shall advise the other of its intention
not to renew at least three (3) months prior to the expiration of the then
current term.
4. Quality Control
(a) Licensee acknowledges and is familiar with the high standards, quality,
style and image of Licensor and Licensee shall at all times conduct all aspects
of the Business in a manner which is consistent therewith.
(b) Licensor shall have the right to periodically review Licensee's use of
the Name in connection with the Business to insure that the operation, quality,
style and image thereof conforms to the standards set forth in Paragraph 4(a)
hereof.
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(c) In the event that the operation, quality, style and image of the
Business falls below the standards set forth in Paragraph 4(a) hereof, Licensor
shall so notify Licensee and Licensee shall restore the quality to said
standards as soon as possible.
(d) Licensee shall use the Name only in such logotype(s) and manner as has
been expressly approved in advance by Licensor.
(e) Licensee shall not use or display the Name in any manner which might be
deceptive or misleading or which might bring Licensor into disrepute.
(f) The proper use and protection of the Name and of the goodwill
associated therewith in accordance with the terms of this Agreement is a
material provision of this Agreement.
5. Rights in the Name
(a) Licensee hereby acknowledges that the Name is a valuable asset
belonging to Licensor and that all rights in and to the Name are and shall
remain the sole and exclusive property of Licensor subject only to the license
granted herein. Nothing in this Agreement shall confer any right of ownership in
the Name in Licensee. Licensee acknowledges, and shall not at any time contest,
the validity or ownership of the Name or the validity of the license granted
herein. Licensee acknowledges that all rights accruing from Licensee's use of
the Name shall inure to the benefit of Licensor.
(b) Licensee shall execute and deliver to Licensor upon Licensor's request,
all documents which are necessary or desirable to secure or preserve Licensor's
rights in the Name.
(c) Licensee agrees to use the Name in a manner which will protect
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Licensor's rights and the goodwill therein.
(d) Licensee agrees that its use of the Name shall at all times be as
Licensee for the account and benefit of Licensor. The use of the Name pursuant
to this Agreement shall not vest in Licensee any right or presumptive right to
continue such use after termination of this Agreement. 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 Name, 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 Name as specifically and expressly provided
herein. To the extent any rights in and to the Name or in the goodwill
associated therewith are deemed to accrue to Licensee, Licensee agrees to assign
and hereby assigns any and all such rights and goodwill, at such time as they
may be deemed to accrue, to Licensor.
6. Infringement of the Name
(a) Licensee shall promptly give notice to Licensor of any use of the Name,
or of a similar name or ▇▇▇▇, by any third party of which it becomes aware.
Licensor shall decide, in its sole discretion, if proceedings shall be commenced
against said third party. In the event that Licensor commences a proceeding or
any other form of action against said third party, Licensee shall cooperate
fully with Licensor to whatever extent Licensor deems necessary or appropriate
to prosecute such action or proceeding, provided that all expenses of such
action or proceeding shall be borne by Licensor and all recoveries (including
settlements) resulting from any such action shall belong solely to Licensor.
(b) Licensee shall not take any action to protect the Name without the
prior express written consent of Licensor's General Counsel, nor shall Licensee
settle any claim for
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infringement of the Name without the prior express written consent of Licensor's
General Counsel.
7. Termination
(a) This Agreement shall automatically and immediately terminate upon the
occurrence of any of the following events:
(i) Licensor or its majority owned and controlled affiliates,
collectively, own less than thirty percent (30%) of the limited
liability company interests (determined by participation
percentage) or, after the Reconstitution referred to in Paragraph
10(a) hereof, the Common Stock, of Licensee;
(ii) Licensor and its majority owned and controlled affiliates,
collectively, no longer have at least three (3) nominees serving
on the Management Committee or, after the Reconstitution, the
Board of Directors, of Licensee;
(iii) Licensee does not comply with the restrictions on the conduct of
its business set forth in the LLC Agreement, or, after the
Reconstitution, its Certificate of Incorporation, or as otherwise
approved by the holders of its limited liability company
interests or, after the Reconstitution, its Class B Common stock;
or
(iv) Any member of Licensee shall have transferred its Class B
Interests (as defined in the LLC Agreement) to a third party
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together with its rights to appoint Representatives to the
Management Committee under the LLC Agreement or, after the
Reconstitution, any holder of the Class B Common Stock of
Licensee shall have transferred its Class B Common Stock together
with its rights to designate nominees to the Board of Directors
of Licensee as contemplated in the Stockholder's Agreement
expected to be entered into among such holders of Class B Common
Stock.
(b) If Licensee defaults in the performance of any of its material
obligations (including, without limitation, Licensee's obligations under
Paragraph 4) under this Agreement, and (i) any such default is not cured by
Licensee within thirty (30) business days of Licensee's receipt of written
notice of such default from Licensor, or (ii) in the case of a default which
cannot reasonably be cured within said thirty (30) business day period, Licensee
has not initiated such action within said period as may be required to cure such
default within a reasonable time thereafter, then Licensor shall have the right
to terminate this Agreement upon written notice to Licensee. Termination shall
become effective immediately upon Licensee's receipt of written notice thereof.
(c) If Licensee commences an action or has an order for relief entered
against it under the federal bankruptcy laws as now or hereafter constituted or
any other federal or state bankruptcy, insolvency or other similar law, or if
within one hundred twenty (120) days after the commencement against Licensee of
such an action, such action shall have
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been consented to or shall not have been dismissed or all orders or
proceedings thereunder affecting the operation of Licensee shall not have been
stayed, or if Licensee shall fail generally to pay its debts as such debts
become due or shall make an assignment for the benefit of its creditors, or if
Licensee discontinues the Business or within one hundred twenty (120) days of
entry of a decree appointing a trustee or a receiver for Licensee or its
business, such appointment shall not have been vacated, this Agreement shall
terminate upon written notice by Licensor to Licensee. Termination shall become
effective immediately upon Licensee's receipt of written notice thereof.
(d) Upon the termination of this Agreement for any reason, Licensee shall
thereafter have a period of three (3) months from the termination date to phase
out all use of the Name. Thereafter, all materials bearing the Name in the
possession, custody or control of Licensee shall be promptly destroyed or
otherwise disposed of to the mutual satisfaction of the parties.
(e) Subject to Paragraph 7(d) above, upon and after the expiration or
termination of this Agreement, all rights in the Name shall revert to Licensor,
and Licensee shall assign any goodwill which may have accrued through its use of
the Name to Licensor. Licensee shall refrain from any further use of the Name or
of any similar ▇▇▇▇ or name. Licensee shall, at its own expense, execute all
papers and take all actions necessary to prevent further use by Licensee (and
any sub-Licensee permitted hereunder) of the Name, including but not limited to,
the voluntary cancellation of any business name, company name or corporate name
registrations or recordals. Licensee shall return to Licensor or destroy all
material used for the purpose of printing or reproducing the Name.
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8. Representations and Warranties
(a) Licensor represents and warrants as follows:
(i) Licensor owns the Name in the Territory for use in connection
with the Business; and
(ii) Licensor has the right to enter into and fully perform this
Agreement, and to do so will not violate or conflict with any
material term or provision of its charter or by-laws or of any
agreement, instrument, statute, rule, regulation, order or
decree to which it is a party or by which it is bound.
(b) Licensee represents and warrants as follows:
(i) Licensee's conduct of the Business will comply in all respects
with all applicable federal, state and local laws, ordinances
and rules;
(ii) Licensee will not use the Name in any manner which is not
specifically authorized by this Agreement; and
(iii) Licensee has the right to enter into and fully perform this
Agreement, and to do so will not violate or conflict with any
material term or provision of its charter or by-laws or of any
agreement, instrument, statute, rule, regulation, order or
decree to which it is a party or by which it is bound.
9. Indemnification
Licensor and Licensee shall indemnify and hold each other and each other's
directors, officers and employees harmless from and against any and all
liability, loss, damage
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or injury, including reasonable attorney's fees, arising out of a breach, or an
allegation which if true would constitute a breach, of any representation and
warranty set forth herein, provided that the party seeking to enforce such
indemnity shall provide to the indemnifying party prompt notice of any claim
giving rise to such indemnity and the opportunity to defend the same with
counsel of its own choosing.
10. Sub-Licenses and Assignment
(a) Licensee shall have the right to sub-license its subsidiary companies
that are at least 50% owned, directly or indirectly, including without
limitation, Time Warner Telecom Inc., a Delaware corporation, to use the Name
under the same terms and conditions as set forth herein so long as such
sub-licensee remains at least a 50% owned subsidiary of Licensee and, provided
that each such sub-licensee agrees in writing to be bound by the terms of this
Agreement. In the event Licensee is reconstituted (either by merger, exchange,
contribution of assets or otherwise) as a Delaware corporation (the
"Reconstitution"), such corporation shall succeed to the rights and obligations
of Licensee hereunder and all references to Licensee herein shall be deemed
references to such reconstituted corporation.
(b) Except for any sub-license granted pursuant to Paragraph 10(a) above,
neither this Agreement nor any rights hereunder shall be assigned, sub-licensed
or transferred by Licensee, in whole or in part, without the prior express
written consent of Licensor, and any purported assignment or transfer in
violation of this provision shall be void and of no effect.
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11. Notices
(a) All notices to be given under this Agreement shall be in writing and
shall be delivered to the party to whom the notice is given (i) by hand or
courier, (ii) by registered or certified mail, postage prepaid, or (iii) by fax
(with a copy as provided in (i) or (ii) above) at the address or fax number
given below or to such other address or fax number as may be advised by prior
notice in writing to the other party from time to time.
Licensor: Time Warner Inc.
▇▇ ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: General Counsel
Telephone No. (▇▇▇) ▇▇▇-▇▇▇▇
Fax. No. (▇▇▇) ▇▇▇-▇▇▇▇
Licensee: Time Warner Telecom LLC
▇▇▇▇ ▇. ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: Chief Executive Officer
Telephone No. (▇▇▇) ▇▇▇-▇▇▇▇
Fax. No. (▇▇▇) ▇▇▇-▇▇▇▇
(b) Notice given under this Agreement shall be deemed duly given (i) if
delivered by hand or courier, on the date of such delivery, (ii) if sent by
registered or certified mail, five (5) business days after dispatch, and (iii)
if sent by fax, when the copy is delivered pursuant to Paragraph 11(a) above.
12. Miscellaneous
(a) Nothing contained in this Agreement shall be construed to constitute
Licensor to be a partner or joint venturer with, or an agent for, Licensee and
vice versa. Licensee shall not have any authority to, nor shall Licensee,
obligate or bind the Licensor in any manner whatsoever and vice versa.
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(b) This Agreement shall be governed by and construed and enforced in
accordance with the substantive laws of the State of New York, without reference
to its laws governing conflicts of laws.
(c) This Agreement cannot be canceled, modified, amended or waived, in part
or in full, except by an instrument in writing signed by both parties.
(d) The headings of the paragraphs hereof are for convenience only and
shall not be deemed to limit or in any way affect the scope, meaning or intent
of this Agreement or any provision hereof.
(e) Should any paragraph or provision of this Agreement be held to be void,
invalid or inoperative as a result of any judicial or administrative proceeding
or decree, such decision shall not affect any other paragraph or provision
hereof, and the remainder of this Agreement shall be effective as though such
void, invalid or inoperative paragraph or provision had not been contained
herein.
(f) The failure of any party to enforce at any time any provision of this
Agreement, or to enforce any rights, or to make any elections hereunder, shall
not be deemed a waiver of such provisions, rights or elections. Any waiver of
any breach of this Agreement or of the terms or conditions hereof shall not be
deemed a waiver or any repetition of such breach or in any way affect any other
term or condition hereof.
(g) This Agreement contains the entire understanding between the parties
with respect to the transactions contemplated hereby, and supersedes all prior
writings or agreements, written or oral, with respect to the subject matter
hereof.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly
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executed and delivered by their respective officers, each of whom is duly
authorized as of the date set forth on page one hereof.
TIME WARNER INC.
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇
------------------------
Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇
Title: Vice President
TIME WARNER TELECOM LLC
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
------------------------
Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Title: President and Chief
Executive Officer
Agreed, pursuant to
Paragraph 10(a) hereof:
TIME WARNER TELECOM INC.
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
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