EXHIBIT 10.18
TRADEMARK AND DOMAIN NAME LICENSE AGREEMENT
THIS TRADEMARK AND DOMAIN NAME LICENSE AGREEMENT (the "Agreement")
effective ss of April 3, 2000 ("Effective Date") by and between AirTouch
Communications, Inc., a Delaware corporation ("Licensor") and Cellco
Partnership, a Delaware general partnership (collectively with its Subsidiaries,
"Licensee").
WHEREAS, Licensor owns the trademarks, service marks and trade names
identified on attached Schedule A, together with any other trademarks, service
marks and trade names containing "AirTouch" (the "Licensed Marks"), and the
domain names identified on attached Schedule B (the "Licensed Domain Names"),
all of which are used on and in connection with the marketing, advertising, sale
and provision of wireless telecommunications goods and services;
WHEREAS Licensee desires to use the Licensed Marks and the Licensed Domain
Names on and in connection with Licensee's marketing, advertising, sale and
provision of wireless telecommunications goods and services (the "Goods and
Services") in the United States of America, its territories and possessions (the
"Territory"); and
WHEREAS Licensor is willing to grant permission to Licensee to use the
Licensed Marks and the Licensed Domain Names on and in connection with
Licensee's marketing, advertising, sale and provision of the Goods end Services
in the Territory, upon the following terms and conditions.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties, intending to be
legally bound hereby, agree as follows:
1. Grant of License.
A. Scope of License Rights. Subject to the terms and conditions of
this Agreement, Licensor hereby grants to Licensee a nonexclusive, non-
transferable (except as otherwise provided herein), royalty-free right and
license to use the Licensed Marks and the Licensed Domain Names on and in
connection with Licensee's marketing, advertising, sale and provision of
the Goods and Services in the Territory. As used in this Agreement, a
person, association, partnership, corporation or joint-stock company,
trust, or other business entity, however organized, is a "Subsidiary" of
the person or entity which directly or indirectly, through one or more
intermediaries, is controlled by such person. Control shall be defined as
(i) ownership of 20% or more of the voting power of all classes of voting
stock of an entity; (ii) ownership of 20% or more of the beneficial
interests in income and capital of an entity other than a corporation; or
(iii) management control over an entity.
1
B. Sublicenses. Licensee shall have the right to grant sublicenses of
its license rights with respect to the Licensed Marks to resellers, agents,
distributors, exclusive dealers and similar persons and entities solely in
connection with the marketing, advertising, sale and provision of the Goods
and Services of Licensee in the Territory. Licensee shall not grant any
other sublicense without the prior written approval of Licensor.
C. Use of Licensed Domain Names. The parties shall mutually and in
good faith agree upon the method(s) by which they shall jointly use the
Licensed Domain Names. Unless otherwise agreed on by the parties, said
method(s) shall include the use of "jump pages" and/or "links" directing
persons to the parties' respective web sites based on the goods, services
or information such persons are seeking. Licensee shall not be deemed to be
using the Licensed Domain Names in breach of the scope of its license
rights under this Agreement solely by reason of a person outside of the
Territory accessing a web site of Licensee, or any permitted sublicensee,
through use of a Licensed Domain Name.
2. Quality Standards. Licensee agrees that the nature and quality of all
Goods and Services provided by Licensee which are marketed, advertised, sold or
provided under or in association with the Licensed Marks or the Licensed Domain
Names shall conform to such reasonable guidelines and standards as are provided
in writing from time to time by Licensor, and, in any event, shall be of at
least the quality of the wireless telecommunications goods and services provided
by Licensor under the Licensed Marks and the Licensed Domain Names as of the
Effective Date. Licensee agrees to reasonably cooperate with Licensor in
facilitating Licensor's control of the nature and quality of the Goods and
Services, and to permit reasonable, periodic inspections of Licensee's
operations as requested in writing by Licensor.
3. Form of Use of Licensed Marks. Licensee agrees that the Licensed Marks
and the Licensed Domain Names shall be displayed only in such form and manner as
was used by Licensor immediately prior to the Effective Date or as shall be
specifically approved by Licensor, such approval not to be unreasonably withheld
or delayed, and according to reasonable specifications provided in writing from
time to time by Licensor. Licensee also agrees that, to the extent reasonably
practical, Licensee shall cause to appear on all advertisements, promotions and
other displays on or in connection with which the Licensed Marks or the Licensed
Domain Names are used, such legends, markings and notices as Licensor may
reasonably require in order to give appropriate notice of any trademark rights
therein. Licensee agrees to submit to Licensor, on a periodic basis as
reasonably requested by Licensor, representative samples of any advertisements,
promotions and other displays bearing the Licensed Marks or the Licensed Domain
Names.
4. Ownership and Goodwill. Licensee acknowledges that, as between Licensor
and Licensee, Licensor is the sole and exclusive owner of rights in the Licensed
Marks and the Licensed Domain Names, undertakes not to challenge the validity of
the Licensed Marks or the Licensed Domain Names, or Licensor's registration and
ownership of the Licensed Marks and the Licensed Domain Names, and agrees that
it will do nothing inconsistent with such
2
ownership, except as expressly authorized pursuant to Sections 5 and 6 below.
Licensee further acknowledges and agrees that all use of the Licensed Marks and
the Licensed Domain Names by Licensee and all goodwill developed therefrom shall
inure to the benefit of and be on behalf of Licensor. Licensee agrees that
nothing in this Agreement shall give Licensee any right, title or interest in or
to the Licensed Marks and the Licensed Domain names other than the right to use
the Licensed Marks and the Licensed Domain Names in the manner contemplated by
this Agreement, and only for so long as this Agreement is in force.
5. Infringement.
A. Notice of Infringements. In the event that either party becomes
aware of any unauthorized use of the Licensed Marks or the Licensed Domain
Names, or of any uses of confusingly or substantially similar trademarks,
service marks, trade names or domain names, on or in connection with the
marketing, advertising or provision of similar goods or services in the
Territory (each, an "Unauthorized Use"), such party shall promptly provide
the other with written notice thereof.
B. Action by Licensor. Licensor shall have the right, but not the
obligation, to challenge and attempt to eliminate each Unauthorized Use.
Licensee, at Licensor's expense, shall reasonably cooperate with Licensor
in investigating, prosecuting and settling any infringement action
instituted by Licensor against any person or entity engaging in an
Unauthorized Use. Licensee, at its own expense, shall have the right to
participate with counsel of its own choice in the investigation,
prosecution and/or settlement of any such infringement action instituted by
Licensor. Licensee shall have the right to approve the settlement of any
such infringement action, or any other agreement between Licensor and such
person or entity concerning the Unauthorized Use, to the extent such
settlement or other agreement is inconsistent with the license rights
granted to Licensee under this Agreement.
C. Action by Licensee. Licensee shall have the right, but not the
obligation, to institute, prosecute and settle an infringement action
against any person or entity who engages in an Unauthorized Use if, and
only if, (i) within ninety (90) days after Licensor becomes aware or is
notified of the Unauthorized Use, Licensor has not instituted an
infringement action against such person or entity or caused or taken
significant steps to cause such person or entity to cease and desist from
the Unauthorized Use; or (ii) at any time after Licensor has instituted an
infringement action against such person or entity, Licensor ceases to
diligently prosecute such infringement action other than by reason of
settlement of the action in accordance with the provisions of Section 5.B
above. Licensor, at its own expense, shall reasonably cooperate with
Licensee in investigating, prosecuting and settling any infringement action
instituted by Licensee in accordance with the foregoing sentence. In
addition, Licensor, at its own expense, shall have the right to participate
with counsel of its own choice in the investigation, prosecution and/or
settlement of any such infringement action instituted by Licensee. In the
event that Licensee is unable to institute, prosecute or settle the
infringement action solely in its own name, Licensor will join such action
voluntarily or will execute such instruments
3
and other documents as are necessary for Licensee to initiate, prosecute
and settle such action as permitted hereunder, all at Licensor's own
expense. Licensor shall have the right to approve the settlement of any
such infringement action, or any other agreement between Licensee and such
person or entity concerning the Unauthorized Use, such approval not to be
unreasonably withheld or delayed.
D. Sharing of Recoveries. Any recovery obtained by either Licensor or
Licensee in connection with or as a result of any infringement action
contemplated under this Section 5, whether by settlement or otherwise,
shall be shared in order as follows: (i) the party that primarily initiated
and prosecuted the action shall recoup all of its costs and expenses
incurred in connection with the action; (ii) the other party shall then, to
the extent possible, recover its costs and expenses incurred in connection
with the action; and (iii) unless otherwise agreed on by the parties in
writing, the amount of any recovery remaining shall then be divided between
the parties in accordance with the relative out-of-pocket costs and
expenses they incur in initiating, investigating, prosecuting and/or
settling the action.
6. Filing, Prosecution and Maintenance. Licensor shall be responsible for
and shall use commercially reasonable efforts to file, prosecute and maintain
all trademark and related registrations and registration applications for the
Licensed Marks and the Licensed Domain Names in the Territory. Should Licensor
desire to cease prosecuting or maintaining any Licensed ▇▇▇▇ or Licensed Domain
Name in the Territory, Licensor shall provide Licensee with reasonably prior
written notice thereof and the parties shall discuss the conditions, if any,
under which Licensor will continue prosecuting and maintaining said Licensed
▇▇▇▇ or Licensed Domain Name in the Territory. If the parties are unable to
agree on conditions under which Licensor will continue prosecuting and
maintaining any Licensed ▇▇▇▇ or Licensed Domain Name, Licensor agrees to assign
to Licensee all of Licensor's rights, title and interest into said Licensed ▇▇▇▇
or Licensed Domain Name in the Territory, whereupon Licensor shall be relieved
from its obligations under this Section 6 with respect to said Licensed ▇▇▇▇ or
Licensed Domain Name.
7. Assignment. Licensee hereby assigns to Licensor any and all goodwill
Licensee may have accrued through any use it may have made of the Licensed Marks
or the Licensed Domain Names to date.
8. Additional Licensed Marks and Domain Names. The parties may wish to
extend this Agreement to cover additional trademarks, service marks or domain
names owned by Licensor that it desires to license to Licensee and, in such
event, the parties agree that a letter agreement between them shall be
sufficient to extend this Agreement and all of the terms and conditions hereof
to such additional trademarks, service marks or domain names.
9. Term and Termination. This Agreement shall commence as of the Effective
Date and shall continue for two (2) years from the Effective Date unless
otherwise terminated in accordance with one of the following provisions:
4
(a) This Agreement may be terminated in its entirety by mutual written
agreement of the parties.
(b) Licensee may terminate this Agreement at any time upon delivering
30 days prior written notice to Licensor.
(c) Licensor may terminate this Agreement immediately upon delivering
notice in writing to Licensee if Licensee becomes insolvent (i.e. is unable
to pay its debts as they become due); files or is the subject of an
application or petition or order in bankruptcy; is liquidated; or is
dissolved.
(d) Either party shall have the right to terminate this Agreement on
thirty (30) days prior written notice if the other party breaches any of
its material obligations under this Agreement and fails to cure such breach
within thirty (30) days of receipt of such notice of breach from the non-
breaching party.
10. Effect of Termination. Upon termination of this Agreement, all rights
of Licensee and any sublicensee to use the Licensed Marks and the Licensed
Domain Names in the manner provided for in this Agreement shall revert
automatically to Licensor, and Licensee and all sublicensees shall immediately
discontinue all use of the Licensed Marks and the Licensed Domain Names and
shall, at Licensor's discretion, destroy or deliver to Licensor all materials
bearing the Licensed Marks or the Licensed Domain Names.
11. Specific Performance. Each party hereby acknowledges and agrees that
Licensor would be irreparably damaged in the event any of the provisions of this
Agreement are not fully performed by Licensee in accordance with their specific
terms or are otherwise breached by Licensee and that in such event money damages
would be an inadequate remedy for Licensee. Accordingly, Licensee hereby agrees
that Licensor shall be entitled to an injunction to prevent breaches of the
provisions of this Agreement and to enforce specifically the terms and
provisions hereof in any action instituted in any federal, state or foreign
court having jurisdiction, in addition to any other remedy to which such party
may be entitled at law or in equity. It is understood between the parties that,
in addition to the injunctive relief mentioned above, Licensor shall be entitled
to any other relief which may be deemed proper and customary, whether at law or
in equity, as of the time such relief is sought.
12. Governing Law. Except for trademark matters governed by the Federal
laws of the United States of America, this Agreement shall be governed by and
construed in accordance with the substantive laws of the State of Delaware,
without regard to the principles of conflict of law thereof.
13. Severability. If the application of any one or more of the provisions
of this Agreement shall be unlawful under applicable law and regulation, then
the parties will attempt in good faith to make such alternative arrangements as
may be legally permissible and which carry out as nearly as practicable the
terms of this Agreement. Should any portion of this Agreement be deemed to be
unenforceable by a court of competent jurisdiction, the remaining portion hereof
5
shall remain unaffected and be interpreted as if such unenforceable portions
were initially deleted.
14. Successors and Assigns. This Agreement shall be binding upon and inure
to the benefit of the parties hereto and their respective permitted successors
and assigns. Except as otherwise provided herein, this Agreement and the license
rights granted to Licensee hereunder shall not be assigned, sublicensed,
transferred, conveyed (by merger, acquisition or otherwise) or pledged by
Licensee without the prior written consent of Licensor, and any attempt by
Licensee to do so without such consent shall be void and of no force or effect.
Notwithstanding the foregoing sentence, Licensee may assign or transfer this
Agreement in its entirety to a direct or indirect wholly-owned Subsidiary of
Licensee. This Agreement shall be freely assignable and transferable by
Licensor.
15. Further Assurances. The parties hereto shall do and perform or cause to
be done and performed all such further acts and things, and shall execute and
deliver all such other agreements, certificates, instruments or documents, as
the other party may reasonably request in order to carry out the intent and
purposes of this Agreement. Licensee shall give full assistance and cooperation
to Licensor in connection with the recordal of this license as Licensor may
reasonably request.
16. Notice. All notices and other communications under this Agreement shall be
in writing and shall be deemed to have been duly given when delivered
personally, delivery charges prepaid, or three (3) business days after being
sent by registered or certified mail (return receipt requested), postage
prepaid, or one (1) business day after being sent by a nationally recognized
express courier service, postage or delivery charges prepaid, to the parties at
their respective addresses stated below. Notices may also be given by prepaid
telegram or facsimile and shall be effective on the date transmitted if
confirmed within twenty-four (24) hours thereafter by a signed original sent in
the manner provided in the preceding sentence. Any party may change its address
for notice and the address to which copies must be sent by giving notice of the
new address to the other parties in accordance with this Section 16, except that
any notice of such change of address shall not be effective unless and until
received.
If to Licensor to: AirTouch Communications, Inc.
Legal Department
▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
With a copy to: Pillsbury Madison & Sutro LLP
▇.▇. ▇▇▇ ▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇ ▇. Tune
6
If to Licensee to: Cellco Partnership
▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: General Counsel
17. Waiver. The failure of either party at any time to require performance
by the other party of any provision hereof shall in no way affect the full right
to require such performance at any time thereafter. Nor shall the waiver by
either party of a breach of any provision hereof be a waiver of any succeeding
breach of the same or any other such provisions or be a waiver of the provision
itself.
18. Alliance Agreement; Entire Agreement. This Agreement is subject to the
provision of the U.S. Wireless Alliance Agreement, dated as of September 21,
1999 (the "Alliance Agreement") between Vodafone AirTouch Plc and ▇▇▇▇ Atlantic
Corporation. Neither the making nor the acceptance of this Agreement, nor any
provision hereof, shall enlarge, restrict or otherwise modify the provisions of
the Alliance Agreement or the rights and obligations of the parties thereunder,
or constitute a waiver or release by any of the parties to the Alliance
Agreement of any liabilities, duties or obligations imposed upon any party
thereunder, including, without limitation, the representations and warranties,
indemnities and other provisions that, pursuant to the Alliance Agreement,
survive the Closing (as defined therein) thereof. This Agreement, together with
the Alliance Agreement and all other agreements entered into by Vodafone
AirTouch Plc and ▇▇▇▇ Atlantic Corporation in connection therewith, contain the
entire agreement of the parties hereto with respect to the subject matter hereof
and thereof and supersede all prior understandings and agreements of the parties
with respect thereto.
19. Headings. All captions and headings in this Agreement are for purposes
of convenience only and shall not affect the construction or interpretation of
any of its provisions.
20. No Agency. Nothing herein shall be construed as creating any agency,
partnership or other form of joint enterprise between Licensor and Licensee.
21. Survival. The provisions of Sections 4, 5.D, 10, 11, 12, 14, 16, 18, 21
and 22 shall survive the termination or expiration of this Agreement and
continue in full force and effect thereafter.
22. Dispute Resolution. Except as provided in Section 11, resolution of any
and all disputes arising under or in connection with this Agreement, whether
based on contract, tort, statute or otherwise, including, but not limited to,
disputes over arbitrability and disputes in connection with claims by third
parties, shall be exclusively governed by and settled in accordance with the
provisions of the Alliance Agreement.
7
IN WITNESS WHEREOF, the parties hereto have duly executed and delivered
this Agreement as of the Effective Date.
LICENSOR:
AirTouch Communications, Inc.
By: /s/ ▇▇▇▇ ▇▇▇▇▇
---------------------------
Name: ▇▇▇▇ ▇▇▇▇▇
Title: Chief Executive Officer
LICENSEE:
Cellco Partnership
By: NYNEX PCS Inc., its
managing general partner
By: /s/ S. ▇▇▇▇ ▇▇▇▇▇▇
---------------------------
Name: S. ▇▇▇▇ ▇▇▇▇▇▇
Title:
8
