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EXHIBIT 10.35
AMENDED AND RESTATED
INTELLECTUAL PROPERTY ALLOCATION AND LICENSE AGREEMENT
This Intellectual Property Allocation and License Agreement (this "Agreement"),
dated as of this 6th day of August, 1992 ("Effective Date"), between EDIL
INTERNATIONAL LIGHTING B.V., a Netherlands corporation (hereinafter referred to
as "IL"), OSRAM ACQUISITION CORPORATION, a Delaware corporation (hereinafter
referred to as "NAL") and OSRAM G.m.b.H., a corporation of the Federal Republic
of Germany (hereinafter referred to as "Osram").
RECITALS
IL has entered into the Amended and Restated IL Stock Purchase Agreement and
related agreements including the Amended and Restated IL Intellectual Property
Agreement dated as of the date hereof (the "IL GTE Agreements") pursuant to
which IL shall acquire all of the stock or assets of those entities listed in
Schedule A to this Agreement, collectively, the "IL Companies", and
NAL has entered into the Amended and Restated NAL Stock Purchase Agreement and
Amended and Restated NAL Asset Purchase Agreement and related agreements
including the Amended and Restated NAL Intellectual Property Agreement dated as
of the date hereof (the "NAL GTE Agreements"), pursuant to which NAL shall
acquire all of the stock of those entities listed in Schedule C to this
Agreement, and the assets of those entities listed in Schedule D to this
Agreement (collectively, the "NAL Companies").
IL and NAL wish to allocate between them Intellectual Property (as defined
below) of the GTE EPG Lighting Business (as defined below) and to enter into
this Agreement for such purpose, and Osram wishes to grant certain license
rights to IL and to enter into this Agreement solely for such purpose.
Now, therefore, in consideration of these premises and other good and valuable
consideration, the parties hereto agree as follows:
ARTICLE I
For all purposes of this Agreement, as amended from time to time, and the
Schedules and Exhibits delivered pursuant to this Agreement, the following
capitalized terms used in this Agreement shall have the following meanings:
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1.1 "1983 Agreements" shall mean the Agreements of June 1 and July 1,
1983 between Osram and GTE Products Corporation.
1.2 "Accessories" shall have the meaning set forth in the 1983 Agreements.
1.3 "Affiliate" shall mean, with respect to a specific person, another
Person that directly or indirectly through one or more intermediaries, controls
or is controlled by, or is under common control with, the specified Person. The
term "Affiliate" includes both present Affiliates and Persons which become
Affiliates after the date hereof, except that a Person shall be regarded as an
Affiliate only for as long as it remains controlled as specified herein.
1.4 "Best efforts" shall mean all good faith efforts, but not including
any unreasonable act or money payment.
1.5 "▇▇▇▇▇▇ S.A." shall mean that company formerly situated in France,
previously a subsidiary of GTE France S.A.
1.6 "▇▇▇▇▇▇ Trademarks" shall mean those Trademarks throughout the world
previously owned by ▇▇▇▇▇▇ S.A. and its Affiliates and to the knowledge of the
parties as set forth on Schedule E.
1.7 "Closing" shall mean the Closing Date under the Amended and Restated
NAL Stock and Asset Purchase Agreements and the Initial Closing Date under the
Amended and Restated IL Stock Purchase Agreement.
1.8 "Copyrights" shall mean all common law or statutory copyright rights,
including any copyright registrations, pending applications for registrations,
rights to apply for registration or protection, and all rights of enforcement
thereof, including all rights to ▇▇▇ or recover for the infringement or
misappropriation thereof.
1.9 "Exclusive NAL World Products" shall mean NAL World Products of the
types under development or manufactured by any IL Company as of the Closing.
1.10 "Fixture Products" shall mean any device for mounting or supporting
lamps including chandeliers, mountings for fluorescent tubes and reflecting or
reflector materials separate from lamps used to diffuse or reflect light.
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1.11 "Globottle and Starter Patents" shall mean those Patents and
Invention Disclosures of the GTE EPG Lighting Business relating mainly to
globottles and starters and to the knowledge of the parties set forth on
Schedule EE (Patents) and Schedule DD (Invention Disclosures).
1.12 "GTE" shall mean GTE Corporation and its Subsidiaries and
Affiliates, the Stock or assets of which is not to be purchased by IL or NAL
pursuant to the NAL and IL GTE Agreements.
1.13 "GTE EPG" Lighting Business" shall mean the business to be purchased
by NAL and IL pursuant to the NAL and IL GTE Agreements.
1.14 "IL Fixture Trademarks" shall mean those Trademarks worldwide used
with respect to Fixture Products (other than those used exclusively by Sylvania
Canada Ltd. on or prior to the Closing) and to the knowledge of the parties
set forth on Schedule F.
1.15 "Intellectual Property Allocation" shall mean the allocation of the
Intellectual Property forming part of the GTE EPG Lighting Business between IL
and NAL to be carried out by the parties pursuant to this Agreement.
1.16 "Intellectual Property" shall mean and include all Patents,
Trademarks, Copyrights (whether registered or unregistered), Know-How,
Invention Disclosures, and all rights to enforce any and all proprietary rights
therein or statutory protections therefor, including the rights to ▇▇▇ or
recover for the infringement or misappropriation thereof.
1.17 "International NAL World Products Trademarks" shall mean those
Trademarks worldwide exclusively used as of the Closing with respect to NAL
World Products and to the knowledge of the parties as set forth on Schedule G.
1.18 "International Motor Vehicle Lamp and Lighting Products Trademarks"
shall mean those Trademarks worldwide exclusively used as of the Closing with
respect to Motor Vehicle Lamp and Lighting Products and to the knowledge of
the parties as set forth on Schedule H.
1.19 "Invention Disclosures" shall mean all invention disclosures or
patent disclosures existing and identified at the Closing for which patent
applications have not been filed as of the Closing.
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1.20 "Know-How" shall mean and include know-how, technology, trade
secrets, technical information, formulas, specifications, blue prints, software
and source code and documentation therefor, manuals, notebooks, reports,
drawings, mask work and all rights to enforce any proprietary rights therein,
including all rights to ▇▇▇ or recover for the infringement or misappropriation
thereof. "Know How" does not include "Invention Disclosures."
1.21 "Lamp Competitor" means any corporation, together with its
Subsidiaries (excluding Siemens A.G. and any Subsidiaries of Siemens Group)
which during the calendar year immediately preceding the relevant date of the
determination of its status as a Lamp Competitor manufactured Lamps and had
aggregate worldwide sales of Lamps, Lamp Parts, Accessories and Power Sources
exceeding:
(i) in the case of corporations and their Subsidiaries whose
ultimate holding company is incorporated in Japan, Taiwan,
Singapore, North Korea, South Korea or China, twenty million
United States dollars (US$20,000,000); and
(ii) in the case of any other corporations and their Subsidiaries,
fifty million United States dollars (US$50,000,000);
1.22 "Lamp Parts" shall have the meaning set forth in the 1983
Agreements.
1.23 "Lamp and Lighting Products" shall mean products of the type
manufactured and sold by the GTE EPG Lighting Business.
1.24 "Lamps" shall have the meaning set forth in the 1983
Agreements.
1.25 "Manufacturing Apparatus" shall have the meaning set forth in
the 1983 Agreements.
1.26 "Motor Vehicle Lamp and Lighting Products" shall mean lamp
and lighting products for motor vehicles (including automobiles, motor vehicles
for moving space or aviation equipment, trucks, construction or highway
vehicles, agricultural vehicles and seagoing vehicles which may also propel
themselves on land).
1.27 "NAL Glass Products" shall mean glass products for lamps of
the types under development or manufactured by the NAL Companies as of the
Closing but not products of a
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type exclusively under development or exclusively manufactured by the IL
Companies. Globottles and starters are not included in NAL Glass Products.
1.28 NAL Chemical and Metallurgical Products" shall mean chemical
and metallurgical products of the types under development or manufactured by
the NAL Companies as of the Closing but not products of a type exclusively
under development or exclusively manufactured by any IL Companies.
1.29 "NAL ECMD Products" shall mean electronic component materials
of the types under development or manufactured by the NAL Companies as of the
Closing but not products of a type exclusively under development or exclusively
manufactured by any IL Companies.
1.30 "NAL World Products" shall mean collectively NAL Chemical and
Metallurgical Products, NAL ECMD Products and NAL Glass Products.
1.31 "Patents" shall mean all patents and patent applications
(including registered designs) (whether published or unpublished) issued or
filed on or before the Closing (including any divisions, continuations, or
reissues thereof) whether or not patents are issued on such applications and
whether such applications are modified, withdrawn, or resubmitted, and all
rights of enforcement thereof, including all rights to ▇▇▇ or recover for the
infringement thereof.
1.32 "Person" (singular or plural) means an association, an
individual, a partnership, a trust or any other entity or organization,
including a governmental entity.
1.33 "Photoflash Trademarks" shall mean those Trademarks
throughout the world used as of the Closing with respect to photoflash products
and to the knowledge of the parties as set forth in Schedule I.
1.34 "Power Sources" shall have the meaning set forth in the 1983
Agreements.
1.35 "Relating mainly" shall in relation to a Patent or Invention
Disclosure be determined by the business and site where the inventor whose
invention is the basis of such Invention Disclosure or Patent was situated at
the relevant dates and if there is more than one inventor (i.e. there are joint
or co-inventors) at different sites or such inventor was present at the
relevant dates at several different sites or involved in different businesses,
then "relating mainly"
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shall be determined by the predominant subject matter of the patent claims for
said Patent or with respect to an Invention Disclosure the predominant subject
matter of the invention.
1.36 "Subsidiary" shall mean, with respect to any Person, any other
Person, any other Person in which such Person has a direct or indirect equity
or voting ownership interest in excess of 50%. The term "Subsidiary" includes
both present Subsidiaries and Persons who become Subsidiaries after the date
hereof, except that a Person shall be regarded as a Subsidiary only for as long
as it remains in such relationship.
1.37 "Sylvania Canada" means GTE Sylvania Canada Limited, a Canadian
corporation, a wholly owned Subsidiary of GTE International Inc. prior to the
Closing.
1.38 "Trademarks" shall mean all registered and unregistered
trademarks, trade names, icons and logos and registrations and applications
therefor, whether they are or are no longer in use or abandoned, all common
law trademarks, and all rights to ▇▇▇ or recover for the infringement thereof.
1.39 "XO International Patents" shall mean those Patents and Invention
Disclosures relating mainly to XO electronic ballast technology ownership of
which was sold, assigned and transferred by XO INDUSTRIES, INC. to GTE PRODUCTS
CORPORATION in December 1989, said "XO" International Patents" being to the
knowledge of the parties set forth on Schedule FF (Patents) and DD (Invention
Disclosures).
ARTICLE II
REPRESENTATIONS AND WARRANTIES OF GTE TO IL AND NAL
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2.1 In making and agreeing to the International Property Allocation, IL
and NAL are relying upon the representations and warranties of GTE and the
Sellers in the IL and NAL GTE Agreements and the information respectively
provided to each of them by GTE.
22. (a) In this Section, "Group I Intellectual Property" shall mean
Intellectual Property allocated to either NAL or IL or a Subsidiary thereof
pursuant to the Intellectual Property Allocation, which following the Closing
shall be owned and used exclusively by NAL or its Affiliates or IL and its
Affiliates, respectively. "Group II Intellectual Property" shall mean
Intellectual Property subject to the Intellectual Property Allocation which
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following the Closing shall be owned by NAL or its Affiliates or by IL and its
Affiliates, respectively, but also used pursuant to license by the other party
following the Closing. Schedules J & K set forth the allocation of Group I
and Group II Intellectual Property carried out by the parties to date.
(b) To the extent that pursuant to the Intellectual Property
Allocation to be carried out on or prior to the Closing by Sellers pursuant to
Section 3.3 hereof, NAL or its Affiliates or IL and its Affiliates shall be
assigned Group I Intellectual Property, each of NAL and IL hereby assign and
transfer to each other, effective as of the Closing, any rights of action or
indemnification either may have with respect to such Intellectual Property
against or with respect to GTE, including any rights of action or
indemnification with respect to breach of representations or warranties under
the NAL AND IL GTE Agreements ("GTE Rights").
(c) In the event IL and NAL or their Affiliates assign and
transfer to each other any Group I Intellectual Property pursuant to this
Agreement, they each respectively agree to assign and transfer to each other as
a part of the assignment and transfer of the respective Intellectual Property
items, any GTE rights.
(d) With respect to any Group II Intellectual Property, in
the event of any claim against GTE by NAL or IL or their successors and assigns
with respect to such Intellectual Property, the owner of the GTE Rights with
respect to such Intellectual Property agrees to cooperate promptly and fully
with the claimant in pursuing a claim against GTE, including, as may be agreed,
assigning in full upon request the right to proceed against GTE in relation to
such claim, joining as a claimant or agreeing that action may be taken in that
party's name. Where the parties are unable to agree on joint action, or agree
not to proceed jointly, either party may proceed with its claim independently of
the other party, and the right to pursue such a claim against GTE shall be
deemed assigned to such extent pursuant to this Agreement. In support of the
foregoing, the parties agree to execute any reasonably necessary or helpful
papers and provide any reasonably necessary helpful information, promptly upon
request.
(e) Any proceeds collected from GTE with respect to any
claim relating to Group II Intellectual Property shall be allocated between the
parties to this Agreement in accordance with the claims and damages of each.
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ARTICLE III
ALLOCATION PROCEDURES
3.1 Schedules 1.1 to 1.10 of the NAL Intellectual Property Agreement
are incorporated herein by reference as Schedule L.
3.2 Schedules 1.1 to 1.10 of the IL Intellectual Property Agreement
are incorporated herein by reference as Schedule M.
3.3 Between the signing and the Closing of the transactions
described in NAL and IL GTE Agreements, the parties agree to provide joint set
of written instructions to Sellers, consistent with Schedules to, and the terms
and conditions of, this Agreement and the NAL and IL GTE Agreements, together
with such appropriate documents of assignment or transfer as IL and NAL shall
have prepared and jointly agreed upon, to carry out and effectuate the
allocation of the Intellectual Property of the GTE EPG Lighting Business being
purchased by IL and NAL.
3.4 (a) In the event an error is made in any allocations,
assignments or transfers pursuant to this Agreement by either party such that
such assignment or transfer is inconsistent with or contrary to the terms and
conditions of this Agreement, and such error is discovered within one year
after such assignment or transfer has been made, each of the parties agrees,
upon receipt of notice from the other party of such error, to cooperate with
each other and amend or modify such assignment or transfer and execute and
deliver such further instruments as may be reasonably necessary to correct such
error, subject however to any rights, licenses or agreements which may have
been granted to or acquired by any third party therein.
(b) In the event an error has been made in any allocations,
assignments or transfers by reason of any misrepresentations, erroneous or
inaccurate information provided by GTE, and such error is discovered within one
year after the date such allocation, transfer or assignment is made, each of the
parties agrees, upon receipt of notice from the other party of such error to
cooperate with each other in amending this Agreement as may be appropriate to
provide for the allocation of the same and to execute and deliver such further
instruments as may be reasonably necessary to correct such error and address the
concerns of both parties
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and their Subsidiaries and Affiliates with respect to such matter, subject
however to any rights, licenses or agreements which may have been granted or
acquired by any third party therein.
3.5 (a) With respect to the Intellectual Property Allocation
carried out by Sellers under the NAL and IL GTE Agreements pursuant to Section
3.3 and with respect to assignments and transfers made hereunder by the parties,
the parties shall execute and deliver such further certificates, agreements and
other documents and take such other actions as the other party may from time to
time reasonably request to consummate or implement the transactions contemplated
hereby (including providing documents necessary to update chain of title of
registered patents) or to evidence such events or matters.
(b) In addition, in the event that NAL or IL as owner or
licensee thereof should request from the other a document, blue print or other
material embodying Intellectual Property of the EPG Lamp and Lighting Business
as it existed on or prior to the Closing, the other party shall provide such
material as soon as reasonably practicable following such request, subject to
payment of costs by NAL or IL, as the case may be, pursuant to the procedure set
forth in paragraph 5.4 of the Amended and Restated Research and Development and
Engineering Support Agreement dated as of August 6, 1992 between IL and Osram
("R&D Agreement").
ARTICLE IV
ALLOCATION OF "SYLVANIA" TRADEMARK
4.1 At the Closing, NAL or its Affiliate shall own all right, title
and interest with respect to the "SYLVANIA" Trademark in the U.S.A., Canada,
Mexico, and Puerto Rico with respect to all products or services. Schedule P is
to the parties' knowledge a list of the "SYLVANIA" Trademark registrations
allocated to NAL pursuant to this Section 4.1.
4.2 At the Closing, IL or its Affiliate shall own all right, title
and interest with respect to the "SYLVANIA" Trademark worldwide except for the
U.S.A., Canada, Mexico, and Puerto Rico with respect to all products or
services. Schedule Q is to the parties' knowledge a list of the "SYLVANIA"
Trademark registrations allocated to IL pursuant to this Section 4.2.
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4.3 To the extent there are any "SYLVANIA" Trademark rights, licenses or
agreements relating to the countries respectively specified in Sections 4.1 and
4.2, including with respect to any joint ventures, the parties agree that the
rights, benefits and obligations of such licenses or agreements shall to the
extent possible be exclusively held and performed by each of them severally,
with respect to the countries specified in Sections 4.1 and 4.2 respectively;
(i.e. NAL shall hold, control and perform those pertaining to the U.S.A.,
Canada, Mexico, and Puerto exclusively, and IL shall hold, control and perform
those pertaining to the rest of the world), and each agrees to use its best
efforts to perform such further acts and deliver such further documents as may
be necessary to accomplish the same. Schedule R sets forth items which the
parties have agreed to handle in a specific manner.
4.3 There shall be no renewal or extensions of licenses beyond the
initial three year term with respect to Argentina "SYLVANIA" Trademarks without
the consent of NAL, IL and its successors or assigns agree that NAL may enforce
said trademark license agreement if IL or its successors or assigns elect not
to bring legal proceedings to enforce the same.
ARTICLE V
ALLOCATION OF
ALL TRADEMARKS OTHER THAN THE "SYLVANIA" TRADEMARK
5.1 At the Closing, NAL or its Affiliate shall own all right, title and
interest in an to all U.S.A. and Canadian Trademarks other than the "SYLVANIA"
Trademark which are used in respect of Lamp and Lighting Products in the
U.S.A., Puerto Rico and Canada, except as follows (Schedule S is a list to the
parties' knowledge of all Trademarks allocated to NAL pursuant to the
foregoing):
(a) All right, title and interest in and to the IL Fixture Trademarks
worldwide shall belong to IL or its Affiliate;
(b) All right, title and interest in and to the PHOTOFLASH Trademarks and
▇▇▇▇▇▇ Trademarks worldwide shall belong to IL or its Affiliate;
(c) All right, title and interest in and to any Trademarks other than the
"SYLVANIA" Trademark owned by any joint venture included under the IL or NAL
GTE Agreements.
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respectively shall continue to belong to such joint venture ("Joint Venture
Trademarks") and such Joint Venture Trademarks are not included amongst the
respective Trademark allocations made in this Intellectual Property Allocation
Agreement. Schedule T is a list of those instances to the parties' knowledge
where joint ventures own Trademarks to be used by NAL or IL following the
Closing. IL shall use best efforts to obtain for NAL a license under any Joint
Venture Trademarks used by NAL as of the Closing.
5.2 At the Closing, IL or its Affiliate shall own all right, title and
interest in and to all non-U.S.A. and non-Canadian Trademarks other than the
"SYLVANIA" Trademark, which are used in the Lamp and Lighting Products business
outside the U.S.A. and Canada, except as follows (Schedule U is a list of those
Trademarks to the parties' knowledge allocated to IL pursuant to this Section
5.2):
(a) All right, title and interest in and to the International Motor
Vehicle Lamp and Lighting Products Trademarks and International NAL lamp and
Lighting Products Trademarks and International NAL World Products Trademarks,
shall belong to NAL or its Affiliate (Schedule V is a list of those Trademarks
to the parties' knowledge allocated to NAL pursuant to this Section 5.2(a)).
(b) All right, title and interest in and to any Trademark rights which
are limited to Puerto Rico and not derived from United States rights shall
belong to NAL or its Affiliate.
5.3 To the extent that there are any Trademark rights, licenses or
agreements relating to categories of Trademarks allocated to one or other party
under this Section, including with respect to any joint venture, the parties
agree that the rights, benefits and obligations of such licenses or agreements
shall to the extent possible be exclusively held and performed by each of them
severally, with respect to such categories, and each agrees to use its best
efforts to perform such further acts and deliver such further documents as a
may be necessary to accomplish the same. Schedule R sets forth items which the
parties have agreed to handle in a specific manner.
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ARTICLE VI
ALLOCATION OF
OTHER INTELLECTUAL PROPERTY
6.1. IL AND NAL agree that at the Closing:
(a) NAL or its Affiliate shall hold and own all right, title and
interest in and to all U.S.A. and Canadian Patents (including any U.S.A. and
Canadian patents which issue on Invention Disclosures) for Lamp and Lighting
Products, except as follows (Schedule W is a list to the knowledge of the
parties of those Patents what are U.S.A. and Canadian Patents allocated to NAL
pursuant to the foregoing):
(i) All right, title and interest in and to Patents and Invention
Disclosures (including any patents which issue on such invention Disclosures)
relating mainly to Fixture Products not manufactured by NAL in the U.S.A. or
Canada on or before the Closing Date shall belong worldwide to IL or its
Affiliate (Schedule X is a list of those Patents to the knowledge of the parties
allocated to IL pursuant to this paragraph):
(ii) All right, title and interest in and to Patents and Invention
Disclosures (including any patents which issue on such Invention Disclosures)
relating mainly to photoflash products shall belong worldwide to IL or its
Affiliate (Schedule Y is a list of those Patents to the knowledge of the
parties allocated to IL pursuant to this paragraph);
(iii) All right, title and interest in an to Patents and Invention
Disclosures (including any patents which issue on such Invention Disclosures)
issued on inventions made by or otherwise owned by ▇▇▇▇▇▇ S.A. worldwide for
Lamp and Lighting Products shall belong to IL or its Affiliate (Schedule Z is a
list of those patents to the knowledge of the parties allocated to IL pursuant
to this paragraph);
(iv) All right, title and interest in and to the Globottles and
Starter Patents (including any patents which issue on such Invention
Disclosures) worldwide shall belong to IL or its Affiliate (Schedule EE is a
list of those Patents to the knowledge of the parties allocated to IL pursuant
to this paragraph).
(b) IL or its Affiliate shall hold and own all right, title
and interest in and to all Patents worldwide (including any patents which issue
on Invention Disclosures) (excluding all U.S.A. and Canadian Patents) for Lamp
and
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Lighting Products, except as follows (Schedule AA is a list of those Patents
to the knowledge of the parties allocated to IL pursuant to this paragraph):
(i) All right, title and interest in and to all Patents and Invention
Disclosures (including any patents which issue on such Invention Disclosures)
worldwide relating mainly to Motor Vehicle Lamp and Lighting Products and NAL
World Produces shall belong to NAL (Schedule BB is a list to the knowledge of
the parties of those Patents allocated to NAL pursuant to this Section
6.1(b)(i)).
(ii) All right, title and interest in and to the XO International
Patents (including any patents which issue on such Invention Disclosures)
worldwide shall belong to NAL (Schedule FF is a list of those Patents to
the knowledge of the parties allocated to NAL pursuant to this paragraph).
6.2 (a) To the extent there are any Patent or technology licenses or
agreements with third parties or joint ventures forming part of the GTE EPG
Lighting Business, the parties to this Agreement agree that the rights, benefits
and obligations of such licenses or agreements shall to the extent possible be
allocated to the party to this Agreement whose Patents have been licensed
pursuant to said license or agreement or whose products are affected by such
license or agreement (e.g. NAL shall as licensor or licensee hold, control and
perform those licenses pertaining to the Patents allocated to NAL, and IL as
licensor or licensee shall hold, control and perform those licenses pertaining
to the Patents allocated to IL), and each agrees, at its cost and expense, to
perform such further acts and deliver such further documents as may be necessary
to accomplish the same.
(b) To the extent a Patent or technology license or agreement is to
be allocated to both NAL and IL because it pertains to both parties, the parties
to this Agreement agree (a) to cooperate in obtaining any necessary third party
consents required for allocating the same and (b) to cooperate with each other
to fulfill the obligations under such licenses or agreements during the term
thereof. (See Schedule R.)
(c) If any consents are necessary to allocate a Patent or technology
license or agreement as aforesaid with respect to either or both of NAL or IL,
each will use its best efforts to secure such consents, and in any event, each
will use its best efforts to afford the other and its applicable Affiliates the
rights and benefits of each such license or agreement consistent with this
Agreement.
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6.3 All right, title and interest in and to any Patents and
Invention Disclosures owned by any Joint Venture included under the IL or NAL
Stock Purchase Agreements or Asset Purchase Agreements respectively shall
continue to belong to such Joint Venture ("Joint Venture Patents and Invention
Disclosures") and such Joint Venture Patents and Invention Disclosures are not
included amongst the respective allocations made in this Intellectual Property
Allocation Agreement. Schedule CC is a list of those instances known to the
parties where Joint Ventures own Patents used by NAL or IL. IL shall use best
efforts to obtain for NAL a license under any Joint Venture Patents or
Invention Disclosures used by NAL as of the Closing.
6.4 Copyrights and Know-How existing in the GTE EPG Lighting
Business shall be allocated amongst NAL and IL in the same manner as Patents
are allocated hereunder.
6.5 The Invention Disclosures existing in the GTE EPG Lighting
Business are listed to the knowledge of the parties on Schedule DD. Invention
Disclosures shall be allocated as set forth in Section 6.1 and representatives
of the parties shall meet within six months after the Closing to allocate such
Invention Disclosures; with respect to Invention Disclosures to be allocated on
a geographical basis, NAL shall have the right to file patent applications for
Invention Disclosures by inventor employees of NAL, and IL shall have the
corresponding right for IL inventor employees; all patents secured in the USA
or Canada shall belong to IL; any assignments shall be made upon request of the
party entitled to ownership thereof in a particular country; in the event
either party elects not to apply for, prosecute, secure or maintain such
applications or any foreign corresponding patent applications (IL in the USA or
Canada, NAL outside the USA or Canada), it agrees to notify the other party
which at its own cost and expense, shall have the right to apply for,
prosecute, secure or maintain the same; any such action shall not affect the
ownership or licenses hereunder of such applications or patents issuing
thereon; the party assuming such actions shall be under no obligation to
continue any such actions after such assumption. With respect to all other
patents and patent applications which are not allocated on a geographical
basis, the other party shall not have the right to apply or commence to
prosecute the application unless the invention has been published, and in which
case, the other party shall have the same rights after publication (to apply
for, prosecute, secure or maintain) as apply to Invention Disclosures allocated
on a geographical basis and, in the
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event that IL or NAL shall intend to let any such right lapse, such party shall
notify the other party and permit such other party to continue the prosecution
or maintenance of such right. Any such action shall not affect the ownership
of licenses hereunder of such right. The party assuming such actions shall be
under no obligation to continue any such actions.
6.6 In the event that a third party makes claims of infringement
against NAL and IL relating to use of Intellectual Property allocated under
this Agreement where the claims are substantially similar, then the parties
shall use good faith efforts to offer the opportunity to the other party to
participate in any settlement discussions.
ARTICLE VII
TRADEMARK LICENSES
7.1 NAL agrees that effective as of the Closing, IL shall have a
non-exclusive license under the "SYLVANIA" trademark, to have Lamp and Lighting
Products manufactured in the U.S.A., Puerto Rico and Canada and marked with the
"SYLVANIA" trademark, all such lamps to be for distribution, sale and use
outside of the U.S.A., Puerto Rico and Canada.
7.2 NAL agrees that effective as of the Closing, IL shall have an
exclusive license under the "SYLVANIA" trademark in Mexico (a) to make,
distribute, sell, and use in Mexico all products and services forming part of
the GTE EPG Lighting Business; and (b) to make, distribute, sell, and use in
Mexico all products and services other than those forming part of the GTE EPG
Lighting Business. Such license shall be subject to that certain Trademark
License Termination Agreement between GTE International, Inc. and FOCOS S.A.
dated October 23, 1992, and to the rights of NAL pursuant to paragraphs 7.3,
7.4 and 7.5 hereof.
7.3 IL agrees that effective as of the Closing, NAL shall have a
non-exclusive license under the "SYLVANIA" trademark worldwide outside the
U.S.A., Puerto Rico and Canada, to have Lamp and Lighting Products manufactured
outside the U.S.A., Puerto Rico and Canada and marked with the "SYLVANIA"
trademark, all such lamps to be for distribution, sale and use in the U.S.A.,
Puerto Rico and Canada.
7.4 IL agrees that effective at the Closing Date, NAL shall have an
exclusive license under the "SYLVANIA" Trademark worldwide to use said
"SYLVANIA" Trademark in respect of Motor Vehicle Lamp and Lighting Products.
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7.5 IL agrees that effective at the Closing Date, NAL shall have an
exclusive license under the "SYLVANIA" trademark worldwide to use the
"SYLVANIA" trademark in respect of NAL World Products, provided, however, IL
reserves and NAL grants to IL a license and right to continue the non-exclusive
use of the "SYLVANIA" trademark worldwide outside the U.S.A. and Canada for
those types of products manufactured by GTE Precision Materials (Barentin) on
or before the Closing.
7.6 (a) NAL agrees that effective as of the Closing, IL shall have a
worldwide, non-exclusive license to use the International NAL World Products
Trademarks used by GTE Precision materials (Barentin) for the type of product
and in the same manner as used prior to the Closing, other than the "SYLVANIA"
Trademark in the United States and Canada.
(b) IL agrees that effective as of the Closing, NAL shall have a
non-exclusive license in Canada under the IL Fixture Trademarks for the type of
product and in the same manner as used prior to the Closing by the NAL
Companies in Canada.
7.7 All trademark licenses and rights granted under this Article VII
shall be royalty free, irrevocable, and subject to the following terms and
conditions:
(a) All products or services bearing the licensed trademark (except those
under 7.1 and 7.3) shall, at minimum, be of such quality standards as were
observed by IL or NAL respectively as of the Closing Date, except that the
quality standards applicable to those products and services under paragraph
7.2(b) shall be those of a world-class business providing such products or
services. The licensor of the trademark shall have the right once each calendar
year to examine reasonable quantities submitted by licensee to licensor as
samples of the products of licensee to licensor as samples of the products of
licensee bearing such licensed trademarks or otherwise review the standard of
services provided by the licensee; in the event licensee fails to meet such
quality standards, licensee shall have up to six months to correct the same and
to comply with such standards. The licensee shall indemnify the licensor against
any product liability claim arising out of use of the trademarks licensed
hereunder.
(b) In the event of any breach of said trademark license, said license
shall not be terminable for breach without the consent and agreement of
license, and licensee
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may not be required to cease use of such licensed trademark unless it consents
and agrees to cease such use, but the licensor may pursue such other rights and
remedies as licensor may have against licensee including for damages and
specific performance.
(c) The licenses granted hereunder may be sublicensed by a party to its
Subsidiaries. Except as provided herein, the licenses granted hereunder may not
be sublicensed in whole or in part by a party or its sublicensees, assignees, or
transferees. Any sublicense executed after the Effective Date contrary to the
terms and conditions hereof shall be null and void and of no force or effect,
except as may otherwise be provided in Schedule R.
(d) The licenses granted hereunder may be assigned and transferred by a
licensee together with and as a part of the sale or transfer of all of that
party's right, title, and interest in the whole or any part of that party's
business to the extent such part uses such licensed Trademarks. Any assignee or
transferee shall be bound by all of the terms and conditions hereof; as a part
of such transactions, such licensee may retain rights or licenses to use the
Trademarks in connection with those businesses not transferred or sold to its
assignee or transferee. To implement the foregoing provisions of this subsection
(d), the licensee shall request that the licensor grant, and the licensor shall
grant, to such transferee/assignee a license upon similar terms and conditions
to those set forth in this license to the extent such part transferred or
assigned uses such licensed Trademarks. Any assignment or transfer, whether in
whole or in part, contrary to the terms and conditions hereof shall be null and
void and of no force or effect.
(e) With respect to sublicenses of the "SYLVANIA" Trademark, the
sublicensee will undertake to use the color for the packaging of products sold
under such Trademark required by its licensor.
(f) Except as permitted hereunder, any sublicensee of NAL shall undertake
in its role as sublicensee of the "SYLVANIA" Trademark, to the fullest extent
permitted by law, not to sell any products bearing the "SYLVANIA" Trademark in
any country in which IL is the registered owner of the "SYLVANIA" Trademark (or
to Mexico except for NAL World Products and Motor Vehicle Lamp and Lighting
Products) or to sell any products bearing the "SYLVANIA" Trademark to parties in
relation to which NAL knows or has reasonable grounds for belief that such
products will be exported directly or indirectly to countries in which IL is the
registered owner
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of the "SYLVANIA" Trademark (or to Mexico except for NAL World Products and
Motor Vehicle Lamp and Lighting Products).
(g) Except as permitted hereunder, any sublicensee of IL shall
undertake in its role as sublicensee of the "SYLVANIA" Trademark, to the fullest
extent permitted by law, not to sell any products bearing the "SYLVANIA"
Trademark in any country in which NAL is the registered owner of the "SYLVANIA"
Trademark (other than Mexico) or to sell any products bearing the "SYLVANIA"
Trademark to parties in relation to which IL knows or has reasonable grounds for
belief that such products will be exported directly or indirectly to countries
(other than Mexico) in which NAL is the registered owner of the "SYLVANIA"
Trademark.
7.8 (a) Within three years after Closing at latest, IL will change
the color of the packaging for products sold under "SYLVANIA" Trademark to a
color or colors mutually agreed upon with NAL. IL and NAL will also mutually
agree to details of the appropriate amendments.
(b) Except as permitted hereunder, NAL undertakes, to the fullest
extent permitted by law, not to sell any products bearing the "SYLVANIA"
Trademark in any country in which IL is the registered owner of the "SYLVANIA"
Trademark to parties in relation to which NAL knows or has reasonable grounds
for belief that such products will be exported directly or indirectly to
countries in which IL is the registered owner of the "SYLVANIA" Trademark.
(c) Except as permitted hereunder, IL undertakes, to the fullest
extent permitted by law, not to sell any products bearing the "SYLVANIA"
Trademark in any country in which NAL is the registered owner of the "SYLVANIA"
Trademark (other than Mexico) or to sell any Products bearing the "SYLVANIA"
Trademark to parties in relation to which IL knows or has reasonable grounds for
belief that such products will be exported directly or indirectly to countries
(other than Mexico) in which NAL is the registered owner of the "SYLVANIA"
Trademark.
(d) To the fullest extent permitted by law, each of NAL and IL
undertakes to make any sale or transfer of its ownership of the "SYLVANIA"
Trademark contingent on the agreement of the transferee with NAL or IL, as
appropriate, to the terms of paragraphs 7.8(b) and (c), including the obligation
of the transferee to impose similar reciprocal obligations on any other party to
which in any further
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transaction the "SYLVANIA" Trademark should be transferred. Upon request, NAL
and IL agree to enter into a reasonable agreement with any such transferee
containing reciprocal obligations as set forth in paragraph 7.8(b) and (c), but
no other unusual or onerous terms.
7.9 (a) The owner of the "SYLVANIA" Trademark shall maintain the
Trademark at its sole expense in each country in which it is the registered
owner of the trademark, except that IL shall maintain the "SYLVANIA" Trademark
at its sole expense in Mexico.
(b) In the event that either party elects in its discretion to let
lapse a registration for the "SYLVANIA" Trademark for which it is responsible
hereunder, it shall provide reasonable notice to the other party who shall have
the option to take over such maintenance (but not the ownership itself).
(c) In the event that the "SYLVANIA" Trademark is infringed by a
third party in Mexico IL shall in its sole discretion take all necessary steps
at its expense to prevent or terminate such infringement, including by way of
legal action, failing which NAL may at its expense take any action it reasonably
believes to be necessary in order to protect its rights in the "SYLVANIA"
Trademark and the parties shall give each other all reasonable assistance in
relation to any such claim (including but not limited to the use of its name or
being joined as a party to proceedings).
(d) IL shall have the exclusive right to apply for registration of
the "SYLVANIA" Trademark in all countries outside the U.S.A., Canada, Mexico and
Puerto Rico and NAL shall have the exclusive right to apply for registration of
the "SYLVANIA" Trademark in the U.S.A., Canada, Mexico and Puerto Rico.
7.10 The licenses provided for in this Article shall on or before the
Closing be set forth in separate license agreements to be executed as of the
Closing, provided that such license agreements shall not contain any further or
different terms beyond terms corresponding to paragraphs 9.2 to 9.14 hereof.
ARTICLE VIII
PATENT LICENSES
8.1 (a) As used in this Article VIII, "Osram Patents" shall mean all
Patents (including registered designs) issued
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or filed by Osram as of the Closing Date, Copyrights of Osram existing as of
the Closing date, and Know-How (including blue prints) of Osram, relating to
Lamps, Lamp Parts, Accessories, Power Sources and Manufacturing Apparatus,
including all Intellectual Property licensed under the 1983 Agreements.
(b) As used in this Article VIII, "GTE Patents" shall mean all
Intellectual Property (excepting Trademarks) whose ownership is acquired by
either IL or NAL from GTE pursuant to the IL and NAL GTE Agreements or pursuant
to the Intellectual Property Allocation. The XO International Patents are
included in the "GTE Patents" and licensed to IL for use outside the USA and
Canada pursuant to paragraph 8.4(d). To the extent that patents issue on
Invention Disclosures included in the GTE Patents, such patents shall be
subject to the licenses provided for in Section 8.4.
8.2 Osram shall effective as of the Closing terminate the 1983
Agreements with effect from such date, with respect to IL and its Affiliates,
but at Osram's option, not with respect to Osram and its Affiliates. In
confirmation of the rights retained by Osram following the termination of the
1983 Agreements, IL hereby grants to Osram, effective as of the Closing, a
non-exclusive license under the terms and conditions of the 1983 Agreements to
the Intellectual Property (other than Trademarks) whose ownership is acquired
by IL from GTE pursuant to the IL GTE Agreements or pursuant to the
Intellectual Property Allocation hereunder.
8.3 Effective as of the Closing, Osram hereby grants to IL, an
irrevocable, non-exclusive, royalty free license under the Osram Patents, for
the remaining life of the Osram Patents, on the following terms and conditions:
(a) IL may make, have made, use, sell, or otherwise dispose of
Lamps, Lamp Parts, Accessories, and Power Sources (excluding any right to make,
have made, use, sell, or otherwise dispose of Lamps, Lamp Parts, Accessories
and Power Sources as Motor Vehicle Lamp and Lighting Products or as Exclusive
NAL World Products), outside of the U.S.A. and Canada, and may make, have made
and use within IL or its Subsidiaries Manufacturing Apparatus outside of the
U.S.A. and Canada. IL may also make, have made, use, sell or otherwise dispose
of Fixtures, starters, globottles and photoflash products anywhere in the world
including the USA and Canada and make, have made, and use within IL and its
Subsidiaries Manufacturing Apparatus for the purpose of IL manufacturing such
products in the USA and Canada. The license to Copyrights and Know-How
includes the right to copy, adapt, develop, create derivative works or modify.
Upon request, Osram will, pursuant to the procedures of
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Article 5 of the R&D Agreement, provide all Technical Information (as defined
therein and including all drawings and blue prints) produced in respect of
Manufacturing Apparatus developed by or for Osram Group (as defined therein).
Such reference to the R&D Agreement shall not limit any rights granted under
this Agreement.
(b) The license of Osram Patents granted hereunder may be
sublicensed by IL to its Subsidiaries, to the buyer/transferee as a part of the
purchase/transfer of IL's business to the extent it is using such licensed Osram
Patents; such buyer/transferee may sublicense its license hereunder to its
Subsidiaries; sublicensees of rights hereunder shall agree in writing to be
bound by the terms and conditions of this license and said sublicense; except
as provided herein, the license granted hereunder may not be sublicensed in
whole or in part by the licensee or its sublicensees, assignees, or
transferees. Any sublicense contrary to the terms and conditions hereof shall
be null and void and of no force or effect.
(c) The license of Osram Patents granted hereunder may be assigned and
transferred together with and as a part of the sale or transfer of all of IL's
right, title, and interest in the whole or any part of IL's business to the
extent such part uses such licensed Osram Patents. Any assignee or transferee
shall be bound by all of the terms and conditions hereof; as a part of such
transactions, IL may retain rights or licenses to use the Osram Patents in
connection with those businesses not transferred or sold to its assignee or
transferee. IL may as an alternative to the foregoing sentence of this section
(c), request that Osram grant, and Osram shall grant, to such transferee/
assignee of the business a license upon similar terms and conditions to those
set forth in this license to the extent such part transferred or assigned uses
such Osram Patents. Any assignment or transfer, whether in whole or in part,
contrary to the terms and conditions hereof shall be null and void and of no
force or effect.
(d) In the event of any breach of said license, said license shall
not be terminable for breach without the consent and agreement of licensee, and
licensee may not be required to cease infringing use of the Osram Patents
unless it consents and agrees to cease such use, but Osram may pursue such
other rights and remedies as Osram may have against licensee including for
damages and specific performance.
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(e) IL agrees to receive and maintain in confidence all Osram
confidential information and shall not disclose or make the same available to
any Persons other than its employees or permitted sub-licensees or transferees
except as provided in this license.
The obligations with respect to confidential information hereunder
shall not extend to information (a) which has been made generally available to
the public through no breach of the confidentiality obligations under this
Section (including that which is disclosed by any product made available to the
public by Osram or IL), (b) which has been received from a third party who is
under no confidentiality obligation to the disclosing party or licensor
hereunder, (c) which has been independently developed without access to or use
of any confidential information of the disclosing party or licensor, (d) that
information required by law to be disclosed to a governmental entity pursuant
to investigative or jurisdiction where such governmental agency or authority
compels or requires such disclosure (provided, however, proprietary notices of
disclosing party's proprietary rights therein shall be placed in or on such
information and disclosing party shall be advised in writing of such
proceedings and requirement of disclosure), and (e) information which is
disclosed to a third party, not being a Lamp Competitor, whose identity has
been notified to Osram and who has executed a confidentiality undertaking in a
form reasonably acceptable to Osram, to enable IL to have Manufacturing
Apparatus or spare parts made for IL.
8.4 IL and NAP, effective on the Closing, hereby grant to each other
irrevocable, royalty free, perpetual licenses (or with respect to any statutory
registration rights, licenses for the remaining life thereof) under the GTE
Patents which it may respectively acquire ownership of, as follows:
(a) IL grants to NAL an exclusive license under those GTE Patents
owned by IL outside the U.S.A. and Canada for products sold as Motor Vehicle
Lamp Products to the extent such GTE Patents may pertain to any of the same.
(b) IL grants to NAL an exclusive license under those GTE Patents
owned by IL outside the U.S.A. and Canada for Exclusive NAL World Products, to
the extent such GTE Patents may pertain to any of the same.
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(c) IL grants to NAL a sole license (meaning that the licensor may
not, except as specifically permitted herein in Schedule R, license parties
other than its Subsidiaries within the field licensed to the licensee) under
those GTE Patents owned by IL outside the U.S.A. and Canada for NAL World
Products other than Exclusive NAL World Products, to the extent such GTE Patents
may pertain to any of the same.
(d) NAL grants to IL an exclusive license under those GTE Patents
owned by NAL outside the U.S.A. and Canada, for those categories of products
sold by the businesses being purchased by IL, to the extent such GTE Patents
pertain to any of the same, except for products sold as Motor Vehicle Lamp
Products and Exclusive NAL World Products and except that the license to IL for
NAL World Products other than Exclusive NAL World Products shall be limited to
parallel the rights of IL under paragraph 8.4(c).
(e) NAL grants to IL an exclusive license under those GTE Patents
owned by NAL within the United States and Canada for Fixture Products of the
types sold by IL within the United States and Canada as of the Closing (other
than Fixture Products of the types also manufactured by NAL in the United
States and Canada prior to Closing as to which the license shall be sole) to
the extent such GTE Patents may pertain to any of the same.
(f) NAL grants to IL an exclusive license under those GTE Patents
owned by NAL within the United States and Canada for photoflash products and a
non-exclusive license for those types of globottles and starters manufactured
by IL at the Closing and sold into the U.S.A. and Canada to the extent such GTE
Patents may pertain to any of the same.
(g) IL grants to NAL an exclusive license under those GTE Patents
other than ▇▇▇▇▇▇ Patents owned by IL within the United States and Canada for
those categories of products sold by the businesses being purchased by NAL, to
the extent such GTE Patents may pertain to any of the same, except for
photoflash products and Fixtures of the types sold by IL within the United
States and Canada as of the Closing and not manufactured by NAL in the United
States and Canada, and except for globottles and starters, and except that the
license to NAL for other Fixtures shall be limited to parallel the rights of
NAL under paragraph 8.4(e).
(h) IL grants to NAL a non-exclusive license to make (but not to
have made), use or sell products within the United States and Canada under the
Globottle and Starter
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Patents other than photoflash products and Fixtures of the types sold by IL
within the United States and Canada as of the Closing and not manufactured by
NAL in the United States and Canada, to the extent such GTE Patents may pertain
to any of the same.
(i) The licenses granted hereunder may be sublicensed by the licensee
to its Subsidiaries, to the buyer/transferee as a part of the purchase/transfer
of the licensee's business to the extent using the licensed Patents: such
buyer/transferee may sublicense its license hereunder to its Subsidiaries;
sublicensees of rights hereunder shall agree in writing to be bound by the terms
and conditions of this license and said sublicense; except as provided herein,
the licenses granted hereunder may not be sublicensed in whole or in part by the
licensee or its sublicensees, assignees, or transferees. Any sublicense
contrary to the terms and conditions hereof shall be null and void and of no
force or effect.
(j) The licenses granted hereunder may be assigned and transferred
together with and as a part of the sale or transfer of all of the licensee's
right, title, and interest in the whole or any part of the licensee's business
to the extent such part uses such licensed Patents. Any assignee or transferee
shall be bound by all of the terms and conditions hereof; as a part of such
transactions, the licensee may retain rights or licenses to use the Patents in
connection with those businesses not transferred or sold to its assignee or
transferee. The licensee may as an alternative to the foregoing sentence of
this Section (j), request that the licensor grant, and the licensor shall grant,
to such transferee/assignee of the business a license upon similar terms and
conditions to those set forth in this license to the extent such part
transferred or assigned uses such licensed Patents. Any assignment or transfer,
whether in whole or in part, contrary to the terms and conditions hereof shall
be null and void and of no force or effect.
(k) In the event of any breach of said license, said license shall
not be terminable for breach without the consent and agreement of licensee, and
licensee may not be required to cease infringing use of the licensed patent
unless it consents and agrees to cease such use, but the licensor may pursue
such other rights and remedies as licensor may have against licensee including
for damages and specific performance.
(l) Licensee agrees to receive and maintain in confidence all
confidential information licensed under this
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section and in relation to which a written notice of confidentiality has been
received from the licensor and shall not disclose or make the same available to
any Persons except its employees or permitted sublicensees or transferees
except as provided in this Section.
The obligations with respect to confidential information
hereunder shall not extend to information (a) which has been made generally
available to the public through no breach of the confidentiality obligations in
this section (including that which is disclosed by any product made available to
the public by the licensor or licensee), (b) which have been received from a
third party who is under no confidentiality obligation to the disclosing party
or licensor hereunder, and (c) which has been independently developed without
access to or use of any confidential information of the disclosing party or
licensor, and (d) that information required by law to be disclosed to a
governmental entity pursuant to investigative or judicial proceedings over
which such entity has proper jurisdiction where such governmental agency or
authority compels or requires such disclosure (provided however, proprietary
notices of disclosing party's proprietary rights therein shall be placed in or
on such information and the disclosing party shall be advised in writing of
such proceedings and requirement of disclosure).
(m) In the event that a patent licensed under this Section 8.4 is
infringed by a third party in any country, the holder of exclusive rights in
such patent shall in its sole discretion and at its expense take all necessary
steps to prevent or terminate such infringement, including by way of legal
action, failing which the other party may take any action at its expense it
reasonably believes to be necessary in order to protect its rights in the
patent licensed hereunder and the parties shall give each other all reasonable
assistance in relation to any such claim (including but not limited to the use
of its name or being joined as a party to proceedings).
(n) Without limiting the foregoing:
(i) IL acknowledges that the Patents set forth on Schedule GG,
to be allocated to IL, are subject to certain contingent license rights of
Matsushita Electric Works, Ltd. under an Agreement dated November 29, 1989 (the
"MEW Agreement") and IL hereby grants to NAL, effective as of the Closing,
sufficient worldwide rights and licenses under such Patents and any applicable
Invention Disclosures on Schedule DD to enable NAL fully to fulfill the intents
and purposes
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and to perform under the MEW Agreement and the related July 25, 1991 Letter
Agreement, including Articles 4. (1), (2) and (3) thereof. Allocation of any
royalty received by NAL shall be negotiated in good faith.
(ii) IL acknowledges that the Patents set forth on Schedule HH,
to be allocated to IL, are subject to certain reversionary and license rights
to the United States Department of Energy ("DOE") pursuant to ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇.
▇▇-▇▇▇▇-▇▇▇▇▇▇▇▇▇ and related subcontracts and IL hereby agrees that at the
Closing it takes title subject to the rights of DOE and the obligations of NAL
to DOE, including as follows: NAL agrees to assign forthwith all rights in the
assigned Patents and any applicable Invention Disclosures and any patents
applied for or issuing thereon to DOE in the event of the DOE requiring a
reversion of rights to it. IL agrees that it shall require all licensees and
transferees of said Patents and Inventions Disclosures to be similarly bound.
(iii) In the event that IL shall exploit any rights under the XO
International Patents, then IL shall be liable to NAL for a proportional share
(based on sales by IL as compared to the sales by NAL under the XO International
Patents) of any payments due to XO Industries, Inc. under that certain
Technology Purchase and Product Development Option Agreement dated December 3,
1987 as subsequently amended on December 7, 1989 or to OSCCO Ventures pursuant
to that certain Royalty Agreement dated December 3, 1987 (collectively, the "XO
Agreements") commencing with the date of first sale by IL. IL shall make any
such payments to NAL accompanied by reports as specified in said XO Agreements
at least 15 days prior to such date as payments are due to XO or OSSCO to
enable NAL to make timely payment and comply with its obligations under the XO
Agreements.
(8.5) In the event that, pursuant to the 1983 Agreements, Osram may
have provided a patentable invention to any of the IL Companies, IL shall not
apply for a patent on such Osram patentable invention.
ARTICLE IX
MISCELLANEOUS GENERAL PROVISIONS
--------------------------------
9.1 This Agreement between IL and NAL sets forth the entire
understanding and agreement between IL and NAL with respect to Intellectual
Property Allocation matters.
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9.2 Except as otherwise expressly provided herein, each
party shall bear its own expenses (including all fees, costs and expenses of
its attorneys, consultants, investment bankers, accountants, advisers, or other
agents or representatives), incident to or incurred in connection with the
preparation, negotiation, execution and delivery of this Agreement and the
performance of its obligations hereunder and thereunder, including all sales,
value-added, transfer fees or taxes, all recording fees and charges, fees for
notary and any other costs and expenses related to the performance of its
obligations with respect to the license or transfer of any Intellectual
Property.
9.3 This Agreement, all amendments hereof and waivers and
consents hereunder and the legal relations between the parties shall, to the
extent the particular matter is subject to state law, be governed by and
interpreted and construed in accordance with the laws of the State of New York
applicable to contracts made and performed in such State and without regard to
conflicts of law doctrines (such choice of law being made pursuant to Section
5-1401 of the General Obligation Law of the State of New York). United States
Federal law shall govern any particular subject matter controlled thereby.
9.4 Any claim or controversy arising at any time out of or
in relation to this Agreement shall be settled in accordance with the rules of
arbitration of the International Chamber of Commerce by an arbitrator appointed
in accordance with the rules who shall be entitled to award preliminary and
final injunctive relief, specific performance and damages. Any arbitration
shall take place in Paris, France and shall be conducted in the English
language. Judgment upon the award rendered may be entered in any court having
jurisdiction thereof.
9.5 The descriptive headings of the Articles, Sections and
subsections of this Agreement are for convenience only and do not constitute a
part of this Agreement. The words "include", "includes" and "including" shall
be deemed to be followed by "without limitation" whether or not they are
followed by such word or words of like import. Except when language of another
document or agreement is specifically incorporated by reference, the language
of another document or agreement shall not be used to interpret the language of
this Agreement, which shall stand alone.
9.6 This Agreement and any amendment hereto or any other
agreement (or document) delivered pursuant hereto may be executed in one or
more counterparts and by different parties
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in separate counterparts, each of which shall be considered an original. All of
such counterparts shall constitute one and the same agreement (or other
document) and shall become effective (unless otherwise provided therein) when
one or more counterparts have been signed by each party and delivered to the
other party.
9.7 This Agreement shall be binding on the Subsidiaries of
the parties. Each party agrees to cause Affiliates to comply with any
obligations hereunder relating to such Affiliates. Any transfer of Intellectual
Property allocated hereunder shall be subject to the obligations of the parties
to each other hereunder.
9.8 Except where expressly provided otherwise as, for
example, by limiting a right of termination, all rights and remedies existing
under this Agreement are cumulative to, and not exclusive of, any rights or
remedies otherwise available under applicable Law. No failure on the part of
any party to exercise or delay in exercising any right hereunder shall be
deemed a waiver thereof, nor shall any single or partial exercise preclude any
further or other exercise of such or any other right.
9.9 If any provision of this Agreement is finally determined
to be invalid, illegal, or unenforceable by any court or other Governmental
entity in any jurisdiction or to any extent, (1) such provision shall only be
ineffective as to such jurisdiction and only to the extent of such invalidity,
illegality or unenforceability and (2) the remaining provisions of this
Agreement to the extent permitted by applicable Law shall remain in full force
and effect. In the event of any such determination, the parties agree to
negotiate in good faith to modify this Agreement to fulfill as closely as
possible the original intents and purposes hereof. To the extent permitted by
law, the parties hereby to the same extent waive any provision of law that
renders any provision hereof prohibited or unenforceable in any respect.
9.10 This Agreement may be amended only by agreement in
writing of all parties. No waiver of any provision nor consent to any except to
the terms of this Agreement or any agreement contemplated hereby shall be
effective unless in writing and signed by the party to be bound and then only
with respect to the specific purposes, extent and instance so provided.
9.11 Each Schedule attached or delivered pursuant to the
terms of this instrument (except for Schedules L to O) shall
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constitute a part of this Agreement; provided, however that in the event of any
conflict between such Schedule or Exhibit and this instrument, this instrument
shall control.
9.12 Any notice or other communication hereunder must be given in
writing and (a) delivered in person, (b) transmitted by telex, telefax, or
telecommunications mechanism, provided that any notice so given is also mailed
as provided in clause (c), (c) mailed by certified or registered air mail
(postage prepaid), return receipt requested, or (d) sent by Express Mail,
Federal Express or other express delivery service to the parties and at the
addresses specified herein or to such other address or to such other person as
either party shall have last designated by such notice to the other party.
Each such notice or other communication shall be effective (i) if given by
telecommunication, when transmitted to the applicable number so specified
herein and an appropriate answer back or other confirmation of receipt is
received (ii) if given by mail, seven days after such communication is deposited
in the mails with first class postage prepaid, addressed as aforesaid, or (iii)
if given by any other means, when actually received at such address. Any
notice or other communication hereunder shall be delivered as follows:
If to NAL or OSRAM addressed to:
▇/▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇
▇▇▇▇ Avenue of the Americas
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
Attention: Vice President and General Counsel
Telecopier No. (▇▇▇) ▇▇▇-▇▇▇▇
With a copy to:
OSRAM GmbH
▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇
▇-▇▇▇▇ ▇▇▇▇▇▇ ▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ of Germany
Attention: Geschaftsfuhrer
(with a copy to the General Counsel)
Telecopier No. 011-49-89-6213-2019
If to IL, addressed to:
EDIL International Lighting ▇.▇.
▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇
▇▇▇▇ ▇▇, ▇▇▇▇▇▇▇▇▇
▇.▇. ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇
Attention: ▇▇. ▇. ▇▇▇▇▇▇
Telex: 15469
Telecopier No. 31 20 676 9326
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With a copy to:
Citicorp Venture Capital Limited
▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇
Telecopier No. 071-438-1419
9.13 This Agreement may be assigned and transferred by IL together
with and as a part of the sale or transfer of all of IL's right, title, and
interest in the whole or any part of IL's business; any assignee or transferee
shall be bound by all of the terms and conditions hereof; as a part of such
transactions, IL may retain rights under this Agreement in connection with
those businesses not transferred or sold to its assignee or transferee. IL may
as an alternative to the foregoing provisions of this Section, request that
Osram and NAL enter into with such transferee/assignee of IL a new agreement
upon similar terms and conditions to those set forth in this Agreement, as may
be applicable, and Osram and NAL will enter into such a new agreement.
9.14 Each party shall do and execute or procure to be done and
executed all necessary acts, deeds, documents and things to give effect to this
Agreement.
9.15 If either party is prevented, hindered or delayed from or in
performing any of its obligations under this Agreement (other than an
obligation to make payment) by a Force Majeure Event then:
(a) that party's obligations under this Agreement shall be
suspended for so long as the Force Majeure Event continues and
to the extent that party is so prevented, hindered or delayed;
(b) as soon as reasonably possible after commencement of the Force
Majeure Event that party shall notify the other party in writing
of the occurrence of the Force Majeure Event the date of
commencement of the Force Majeure Event and the effects of the
Force Majeure Event on its ability to perform its obligations
under this Agreement.
(c) that party shall use its best efforts to mitigate the effects
of the Force Majeure Event upon the performance of its
obligations under this Agreement; and
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(d) as soon as reasonably possible after the cessation of the Force
Majeure Event that party shall notify the other party in writing
of the cessation of the Force Majeure Event and shall as soon as
practicable resume performance of its obligations under this
Agreement.
(e) For the purposes of this Paragraph 9.15, "Force Majeure Event"
means any event beyond the reasonable control of a party (and
which is unavoidable notwithstanding the reasonable care of that
party) including, without limitation, acts of God, war, riot,
civil commotion, malicious damage, compliance with any law or
governmental order, rule or regulation.
9.16 To the extent that full Schedules shall not be appended to this
Agreement as of the signing, the parties shall prepare and attach Schedules as
soon as possible thereafter, but in any event no later than ten (10) working
days thereafter.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized representatives as of the Effective Date.
Signed by /s/
-----------------------------
Name:
-----------------------------
for and on behalf of OSRAM GmbH
in the presence of: /s/
-------------------
Name:
-----------------------------
Signed by /s/
-----------------------------
Name:
-----------------------------
for and on behalf of EDIL INTERNATIONAL
LIGHTING B.V. in the presence of:
/s/
-----------------------------
Name:
-----------------------------
Signed by /s/
-----------------------------
Name:
-----------------------------
for and on behalf of
OSRAM ACQUISITION CORPORATION
in the presence of:
/s/
-----------------------------
Name:
-----------------------------
32
ALLOCATION INSTRUCTIONS
These instructions are given as of January 29, 1993 in connection
with the allocation of intellectual property contemplated by (i) the NAL
Intellectual Property Agreement dated as of August 6, 1992 (as amended, the
"NAL Intellectual Property Agreement") among GTE Corporation ("GTE"), GTE
Products of Connecticut Corporation, Siemens Corporation ("Siemens") and OSRAM
Acquisition Corporation and (ii) the Amended and Restated IL Intellectual
Property Agreement dated as of August 6, 1992 (the "IL Intellectual Property
Agreement") among GTE, GTE International Incorporated and EDIL International
Lighting B.V. ("EDIL"). Capitalized terms used herein without definition shall
have the meanings set forth in the NAL Intellectual Property Agreement and the
IL Intellectual Property Agreement.
Siemens and EDIL hereby instruct GTE and its Affiliates to execute
the assignments provided to GTE and its Affiliates immediately prior to the
Initial Closing. These instruction supersede any prior instructions to the
extent they are inconsistent with or contrary to these instructions. The
Intellectual Property Allocation shall be completed immediately after the
Initial Closing under the IL Stock Purchase Agreement, but prior to the Closing
under the NAL Stock Purchase Agreement.
Siemens and EDIL, each on behalf of itself and its Affiliates, hereby
agree and acknowledge that, upon execution of the assignments provided to GTE
and its Affiliates GTE and its Affiliates shall have complied in all respects
with the instructions provided herein and that the instructions provided herein
are the only instructions given by such entities to GTE and its Affiliates in
connection with the Intellectual Property Allocation.
SIEMENS CORPORATION
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
-------------------------------
Its: Attorney-in-fact
EDIL INTERNATIONAL LIGHTING B.V.
By: /s/
-------------------------------
Its: Authorized Signatory
33
CONFORMED COPY
DATED 23 December 1994
--------------------------------------------------------------------------------
(1) SYLVANIA LIGHTING INTERNATIONAL B.V.
(2) OSRAM SYLVANIA INC
- and -
(3) OSRAM GmbH
--------------------------------------------
VARIATION AGREEMENT
--------------------------------------------
--------------------------------------------------------------------------------
Dibb ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇
▇▇▇▇ ▇▇▇
Tel: ▇▇▇▇ ▇▇▇ ▇▇▇▇
Fax: ▇▇▇▇ ▇▇▇ ▇▇▇▇
34
THIS VARIATION AGREEMENT made and entered into on the 23 day of December 1994
by and between:
(1) SYLVANIA LIGHTING INTERNATIONAL B.V. (formerly EDIL International Lighting
B.V.) a private limited liability company (beslotenvennootschap met
beperkte aansprakelijkheid) incorporated under the laws of the Netherlands
and whose registered offices are at ▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇, ▇▇▇
▇▇▇▇▇▇▇▇▇▇▇ (the "Company");
(2) OSRAM SYLVANIA INC. (formerly Osram Acquisition Corporation) a corporation
organised and existing under the laws of the State of Delaware, with an
office at ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇; and
(3) OSRAM GmbH a company organised under the laws of Germany with a principal
place of business at ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇, ▇-▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇, ▇▇▇▇▇▇▇.
NOW IT IS HEREBY AGREED AS FOLLOWS:
1. The parties to this Variation Agreement hereby agree to amend Clause 7.1 of
Article VII of the Amended and Restated Intellectual Property Allocation
and Licence Agreement dated 6th August 1992 as indicated below by adding
the underlined wording in italics:
"7.1 NAL agrees that effective as of the closing, IL shall have a
non-exclusive licence under the "SYLVANIA" trade ▇▇▇▇, to have Lamp
and Lighting Products manufactured in the USA, Puerto Rico, Canada
and Mexico and marked with the "SYLVANIA" trade ▇▇▇▇, all such lamps
to be for distribution, and use outside of the USA, Puerto Rico,
Canada and Mexico".
2. This Agreement is governed by, and shall be interpreted and construed in
accordance with the laws of the State of New York applicable to contracts
made and performed in such State and without regard to conflicts of law
doctrines. United States Federal law shall govern any particular subject
matter controlled thereby.
3. Any claim or controversy arising at any time out of or in relation to this
Agreement shall be settled in accordance with the rules of arbitration of
the International Chamber of Commerce by an arbitrator appointed in
accordance with the rules who shall be entitled to award preliminary and
final injunctive relief, specific performance and damages. Any arbitration
shall take place in Paris, France and shall be conducted in the English
language. Judgement upon the award rendered may be entered in any court
having jurisdiction thereof.
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35
Executed as a deed under seal by )
SYLVANIA LIGHTING INTERNATIONAL B.V. )
acting by )
in the presence of: )
Signature of Witness: /s/ H. Branol
Name of Witness: H. Branol-Secretary
Address: SLI-20-rte cle Pre-Bois
CH-1215 Geneva 15
Occupation: Secretary
Executed as a deed under seal by )
OSRAM SYLVANIA INC. )
acting by )
in the presence of: )
Signature of Witness: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
Name of Witness: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
Address: _____________ Street
Danvers, MA 01923
Occupation: Secretary
Executed as a deed under seal by )
OSRAM GmbH )
acting by )
in the presence of: )
Signature of Witness: /s/
Name of Witness:
Address: Munich, Hellabrunner
Occupation: General Counsel
3