EXHIBIT 10.8
INTELLECTUAL PROPERTY LICENSE AGREEMENT
(BellSouth to Alloy LLC)
This Intellectual Property License Agreement (the "Agreement") is made
and entered into as of the 2nd day of October, 2000 ("Effective Date"), by and
between BellSouth Intellectual Property Marketing Corporation ("Licensor") and
Alloy LLC ("Licensee").
Recitals
A. As of April 4, 2000, SBC Communications Inc., BellSouth
Corporation and Licensee entered into an Amended and Restated Contribution and
Formation Agreement (the "Contribution Agreement") pursuant to which SBC
Communications Inc. and BellSouth Corporation agreed to combine substantially
all of their Domestic (as defined in the Contribution Agreement) mobile wireless
voice and data services business, to be conducted through Licensee and its
Subsidiaries.
B. Licensor owns or otherwise has marketing rights in and to
technology relating to the Business as Licensed Technology or Licensed Patent
Rights.
C. Licensee desires to continue operation of the Business
uninterrupted and in substantially the same manner after the Closing Date as the
Business is operated prior to the Closing Date.
D. Licensee desires to obtain certain rights to utilize the
Licensed Technology and Licensed Patent Rights in the Business in order to make,
have made, import, use, offer for sale and/or sell the Licensed Products or
Licensed Services.
NOW, THEREFORE, in consideration of the foregoing premises and of the
terms and conditions of this Agreement, the parties hereto agree as follows:
1. Definitions
As used herein:
1.1 "Affiliates" shall mean, with respect to any Party, any
company or corporation directly or indirectly controlling, controlled by, or
under common control with such Party at any time during the period for which the
determination of affiliation is being made. For purposes of these definitions,
the term "control" (including the correlative meanings of the terms "controlled
by" and "under common control with"), as used with respect to any Person, shall
mean the possession, directly or indirectly, or the power to direct or cause the
direction of management policies of such Person, whether through the ownership
of voting securities, by contract or otherwise.
1.2 "Agreement" means this Agreement including all Exhibits (if
any) attached to this Agreement together with any written amendments of any of
the foregoing.
1.3 "Business" shall mean (a) the acquisition, development,
ownership and operation of businesses engaged in the Domestic provision of
mobile wireless voice and data services utilizing radio frequencies licensed by
the FCC for the provision of Cellular Service, PCS Service, Wireless Data
Service, Satellite Services and Part 27 Service and (b) business activities
customarily ancillary to the provision of any of the forgoing.
1.4 "Cellular Service" shall mean mobile wireless telephone
service provided pursuant to licenses issued by the FCC pursuant to Subpart H of
Part 22 of the FCC's rules and all mobile voice and data services reasonably
ancillary thereto.
1.5 "Closing Date" shall have the meaning set forth in the
Contribution Agreement.
1.6 "License" shall have the meaning set forth in Section 2.1
hereof.
1.7 "Licensed Patent Rights" means, collectively:
(a) all United States patents and patent applications
issued or filed on or before the Closing Date or within six
(6) months thereafter that are owned (either solely or jointly
with others) or capable of being licensed by Licensor or
Affiliates of Licensor and which are used in the Business as
of the Closing Date;
(b) all divisional applications, continuation
applications, continuation-in-part applications, and all
patents, or reexamination or reissues of patents, which issue
from any of the patents or applications identified within
Section 1.1(a), provided such applications or patents have
claims required for the operation of the Business as of the
Closing Date.
1.8 "Licensed Process" means any process or method which is
covered in whole or in part by an issued, unexpired claim or a pending claim or
other right contained in the Licensed Technology or the Licensed Patent Rights.
1.9 "Intellectual Property" means ideas, patents, patent
applications, copyrights, trade secrets, software and technology, but
specifically excludes trademarks, service marks, trade names, and brands.
1.10 "Licensed Product(s)" means any product or part of a product
which:
(a) is covered in whole or in part by an issued,
unexpired claim or a pending claim or other right contained in
the Licensed Technology or Licensed Patent Rights, or
(b) is manufactured using a Licensed Process.
1.11 "Licensed Services" means services provided by utilizing a
Licensed Process.
1.12 "Licensed Technology" means copyrights, technology and
know-how which ownership is not transferred by Licensor or Affiliates of
Licensor in accordance with the Contribution and
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Formation Agreement and used in the operation of the Business as of the Closing
Date. Licensed Technology shall not include Licensed Patent Rights.
1.13 "Other Intellectual Property" means Intellectual Property not
licensed pursuant to this Agreement.
1.14 "Paging Service" shall mean the provision of Domestic one- and
two-way paging and radiotelephone service pursuant to licenses issued by the FCC
pursuant to Subpart E of Part 22 of the FCC Rules and Subpart S of Part 90 of
the FCC Rules and all one- and two-way paging and radiotelephone services
reasonably ancillary thereto.
1.15 "Part 27 Service" shall mean mobile wireless voice and data
telephone service provided pursuant to licenses issued by the FCC pursuant to
Part 27 of the FCC's rules and all mobile voice and data services reasonably
ancillary thereto.
1.16 "Party" shall mean Licensor or Licensee.
1.17 "PCS Service" shall mean mobile wireless telephone service
provided pursuant to licenses issued by the FCC pursuant to Part 24 of the FCC's
rules regardless of the frequency block designated by the FCC under 47 C.F.R.
ss.24.229 and all mobile voice and data services reasonably ancillary thereto.
1.18 "Subsidiary" shall mean any company or corporation directly or
indirectly controlled by a Party.
1.19 "Territory" means the fifty states comprising the United
States of America, the District of Columbia, the U.S. Virgin Islands and the
Commonwealth of Puerto Rico, but excluding all other territories and possessions
of the United States of America.
2. Grant of Licenses
2.1 License. In consideration of Licensee's obligations set forth
in this Agreement and other agreements being executed by SBC and BellSouth on or
about the Closing Date, Licensor hereby grants to Licensee a perpetual, fully
paid-up, royalty-free, nonexclusive right and license (the "License") (with
limited rights to sublicense as specified in Section 2.2) in all fields in the
Business in the Territory during the term of this Agreement unless sooner
terminated as provided in this Agreement (1) to use the Licensed Technology and
Licensed Patent Rights, (2) to make, have made, import, use, lease, offer to
sell, and sell Licensed Products, (3) to practice the Licensed Processes, (4) to
sell Licensed Services and (5) convey to customers of Licensed Products and
Licensed Services rights to use such products and services in the form provided
by Licensee to such customers.
2.2 Sublicenses. Licensee shall have the limited right to grant
sublicenses within the scope of the licenses granted in Section 2.1 in the
fields directly related to the Business under this Agreement only to any
Subsidiary of Licensee and only for so long as they remain a Subsidiary of
Licensee.
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2.3 No Future Licenses. Nothing herein shall be construed to
require that Licensor license any Other Intellectual Property to Licensee.
2.4 No Implied Licenses. The license and rights granted in this
Agreement to Licensee from Licensor shall not be construed to confer any rights
upon Licensee by implication, estoppel or otherwise as to any technology not
specifically identified in this Agreement as Licensed Technology, nor shall it
be construed to confer any rights outside the Territory.
2.5 No Admission. Nothing in this Agreement shall be construed as
an admission by either Party as to the validity or enforceability of the
Licensed Patent Rights.
2.6 Transition Patent Rights and Ownership. Notwithstanding
anything herein to the contrary, any patent application filed by Licensor or on
behalf of Licensee relating to technology transferred by Licensor or an
Affiliate of Licensor in accordance with the Contribution and Formation
Agreement within six (6) months of the Closing Date shall be owned by Licensor
and shall be included in Licensed Patent Rights. Licensee hereby agrees to
assign such rights to Licensor and further agrees to execute any documents
reasonably requested by Licensor to perfect title to such rights.
3. Patent Prosecution and Maintenance
Licensor shall not be liable to Licensee in any way in respect of
Licensor's handling of, or the results obtained from, filing, prosecution or
maintenance or any failure of Licensor to so file, prosecute or maintain
Licensed Patent Rights. If Licensor elects to allow any patent application or
patent in the Licensed Patent Rights to become abandoned or lapse, Licensor
shall provide reasonable notice to Licensee and Licensee shall have the right to
assume at its sole expense the filing, prosecution or maintenance of any such
patent application or patent, and to have whole ownership thereof subject to
granting to Licensor a non-exclusive royalty-free license under such patent
application or patent and subject to any other licenses granted at that time to
Licensor's Licensees. In such event, Licensee shall not be liable to Licensor in
any way in respect of Licensee's handling of, or the results obtained from, such
filing, prosecution or maintenance or any failure of Licensee to so file,
prosecute or maintain. In addition, in such event, Licensor shall provide such
assistance and shall execute such documents as are reasonably necessary to file,
continue prosecution or maintenance of such patent application or patent.
Licensee shall pay Licensor its reasonable out-of-pocket fees and expenses in
providing such assistance.
4. Patent Infringement
4.1 Enforcement of Licensed Patent Rights. Licensor reserves for
itself the right to enforce Licensed Patent Rights and may do so in its sole
discretion. Licensee shall notify Licensor of suspected infringers and/or
infringing products and services and agrees to cooperate with Licensor in the
investigation and analysis thereof. If Licensor chooses to not enforce Licensed
Patent Rights against any alleged infringers, Licensor shall not be liable to
Licensee.
4.2 Cooperation. In any proceedings that Licensor may commence or
defend pursuant to its rights under this Agreement in order to enforce or defend
the validity or enforceability of the
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Licensed Patent Rights, the Licensee shall, at the request and expense of
Licensor, cooperate in all respects and, to the extent possible, have its
employees testify when requested and make available relevant records, papers,
information, samples, specimens and other information sought in discovery.
5. Confidentiality
5.1 In the event of the termination of this Agreement, Licensor
and Licensee, each at its own expense, shall promptly deliver (without retaining
any copies thereof) to Licensee or Licensor, as the case may be, or confirm to
the other in writing that it has destroyed, all information furnished to it or
its representatives by the other or any of the other's Subsidiaries or any of
their respective agents, employees or representatives as a result hereof or in
connection herewith, whether so obtained before or after the execution hereof,
and all analyses, compilations, forecasts, studies or other documents prepared
by it or its representatives which contain or reflect any such information.
Licensor and Licensee shall, and shall cause their respective employees,
officers, directors and Subsidiaries and the employees, officers and directors
of their Subsidiaries to, subject to any exceptions set forth in the
Confidentiality Agreement (as defined below), cause any information so obtained
to be kept confidential and will not use, or permit the use of, such information
in its business or in any other manner or for any other purpose except as
contemplated hereby.
5.2 In addition to the confidentiality arrangements contained
herein, all information provided or obtained in connection with the transactions
contemplated by this Agreement (including pursuant to Section 5.1 above) shall
be held in accordance with and subject to the terms of the Confidentiality
Agreement, dated February 18, 2000, between SBC and BellSouth (the
"Confidentiality Agreement"). In the event of a conflict or inconsistency
between the terms of this Agreement and the Confidentiality Agreement, the terms
of this Agreement shall govern.
6. Representations
6.1 Licensor. Licensor represents and warrants that it is the
owner or licensee of the Licensed Patent Rights and that Licensor has the right
to grant to Licensee the licenses contemplated under this Agreement. Licensor
further represents and warrants that it has the right to enter into this
Agreement, that it has not granted any outstanding conflicting rights, and that
it has not made, nor will it make, any commitment to any third party
inconsistent with or in derogation of the rights granted hereunder.
7. Miscellaneous and General
7.1 Entire Agreement. This Agreement constitutes the entire
agreement between Licensor and Licensee with respect to the Intellectual
Property licenses which are the subject matter hereof and supersedes all
promises or understandings made prior to or contemporaneously herewith with
respect to such subject matter.
7.2 Headings. The section and paragraph headings are for
convenience only and are not a part of this Agreement.
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7.3 Severability. All rights and restrictions contained herein may
be exercised and shall be applicable and binding only to the extent that they do
not violate any applicable laws and are intended to be limited to the extent
necessary so that they will not render this Agreement illegal, invalid or
unenforceable. If any provision or portion of any provision of this Agreement
not essential to the commercial purpose of this Agreement shall be held to be
illegal, invalid or unenforceable by a court of competent jurisdiction, the
remainder of the Agreement shall be interpreted to the extent possible to effect
the overall intention of the parties at the Effective Date of this Agreement.
7.4 Modification. This Agreement may not be amended, modified, or
altered in any way, except in an amendment identified as such and signed by both
Licensor and Licensee.
7.5 Non-waiver. The waiver of any breach of any provision of this
Agreement shall not be deemed to be a waiver of any other breach of the same or
any other provision of this Agreement.
7.6 Non-Agency. Nothing contained in this Agreement or the
performance thereof is intended to or shall be construed to create any
relationship of agency, partnership or joint venture between Licensor and
Licensee.
7.7 Assignment.
(a) Sale of Business. This Agreement may be assigned to
an entity that acquires or merges with or acquires all or
substantially all of the assets of the relevant Business of
either Licensee or Licensor, provided that the assignee is
obligated to fulfill any and all obligations of its
predecessor in interest hereunder.
(b) Other. Except as provided in Section 7.7(a) above,
this Agreement may not be assigned by either Licensor or
Licensee without the express written consent of the other. Any
purported assignment without such permission(s) shall be void.
7.8 Patent Marking. Licensee agrees to ▇▇▇▇ the Licensed Products
sold in the United States and, to the extent practical, identify all Licensed
Services with all applicable United States patent numbers as may be directed by
Licensor from time to time.
7.9 Term. The term of this Agreement shall commence upon the date
hereof and shall continue until the date of expiration of the last patent to
expire in the Licensed Technology.
7.10 Interpretation. Each of the parties acknowledge that it has
been represented by counsel in connection with the negotiation, drafting, and
execution of this Agreement. The language used in this Agreement shall be deemed
to be language chosen by all parties to express their mutual intent and in any
judicial proceeding the terms hereof shall not be more strictly construed
against one Party than the other.
7.11 Governing Law. This Agreement and all amendments,
modifications, alterations, or supplements hereto, and the rights of the parties
hereunder, shall be construed under and governed by the laws of the State of
Delaware and the United States of America.
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7.12 Notices. All notices, statements and reports required or
contemplated herein by one Party to the other shall be in writing and shall be
deemed to have been given upon delivery in person or upon the expiration of five
(5) days after deposit in a lawful mail depository in the country of residence
of the Party giving the notice, registered or certified airmail postage prepaid,
and addressed as follows:
If to Licensee: Alloy LLC
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: Chief Executive Officer
Facsimile: ▇▇▇-▇▇▇-▇▇▇▇
With a copy to: SBC Communications Inc.
▇▇▇ ▇. ▇▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: Senior Executive Vice President and
General Counsel
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
and
BellSouth Corporation
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
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▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: General Counsel
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
If to Licensor: BellSouth Intellectual Property Marketing Corporation
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: Vice President and General Counsel
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
With a copy to: BellSouth Corporation
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▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: General Counsel
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
Either Party hereto may change the address to which notices to such
Party are to be sent by giving notice to the other Party at the address and in
the manner provided above. Any notice herein required or permitted to be given
may be given, in addition to the manner set forth above, by telex, facsimile or
cable, provided that the Party giving such notice obtains acknowledgment by
telex, facsimile or cable that such notice has been received by the Party to be
notified. Notice made in this manner shall be deemed to have been given when
such acknowledgment has been transmitted.
7.13 Ancillary Agreement. This Agreement is one of the Ancillary
Agreements referred to in the Limited Liability Company Agreement.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives as of the day and year first
above written.
Licensor:
BELLSOUTH INTELLECTUAL PROPERTY
MARKETING CORPORATION
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By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇
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Name: ▇▇▇▇▇ ▇. ▇▇▇▇▇
Title: President
Licensee:
ALLOY LLC
By: ALLOY MANAGEMENT CORP., its Manager
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
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Name: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title: Chief Operating Officer
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