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EXHIBIT 10.16
INTERCOMPANY LICENSE AGREEMENT
This Intercompany License Agreement ("Agreement") by and among
Dex
Media, Inc., a Delaware corporation ("Dex
Media"), Dex Media East LLC, a
Delaware limited liability company ("East")
(f/k/a SGN LLC) and Dex Media West
LLC, a Delaware limited liability company
("West") (f/k/a GPP LLC), is effective
as of September 9, 2003 (the "Effective
Date"). Each of the signatories hereto
is individually a "Party" and collectively
the "Parties".
RECITALS
WHEREAS, Qwest Communications International Inc., a Delaware
corporation ("Qwest"), Qwest Services
Corporation, a Colorado corporation
("QSC"), Qwest Dex, Inc., a Colorado
corporation ("Qwest Dex") and Dex Holdings
LLC, a Delaware limited liability company
("Buyer") have entered into that
certain Purchase Agreement (the "LLC
Purchase Agreement") dated as of August 19,
2002 pursuant to which Buyer and its
designee purchased, on November 8, 2002,
all of the outstanding limited liability
company interests of East (the "First
Closing");
WHEREAS, In connection with the LLC Purchase Agreement, Qwest,
QSC,
Qwest Dex, and Buyer entered into that
certain Purchase Agreement, dated of even
date therewith (the "LLC II Purchase
Agreement"), pursuant to which Qwest has
agreed, subject to the terms and conditions
set forth therein, to: (i)
contribute certain of its assets and
liabilities to West; and (ii) sell all of
the outstanding limited liability company
interests of West to Buyer following
such contribution (the "Second
Closing");
WHEREAS, pursuant to the LLC Purchase Agreement, the LLC II
Purchase
Agreement, and the Exhibits attached
thereto, East and West, and their
respective Affiliates, successors and
assigns were granted certain rights to
specified intellectual property assets;
and
WHEREAS, these specified intellectual property assets were assigned
to
Dex Media, as the parent entity of both
East and West, pursuant to an
Intellectual Property Contribution
Agreement entered into by Qwest, Qwest Dex,
Buyer and Dex Media, dated as of November
8, 2002 (the "IP Contribution
Agreement"); and
WHEREAS, Dex Media currently holds such intellectual property
rights
and wishes, on the terms and conditions
contained herein, to license certain of
such rights to East, and certain of such
rights to West.
NOW, THEREFORE, in consideration of the foregoing recitals and
the
covenants, conditions, representations,
warranties and other terms set forth in
this Agreement, the Parties agree as
follows:
1. DEFINITIONS
1.1
"Additional IP" shall have the meaning set forth in the IP
Contribution Agreement.
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1.2
"Affiliate" of a Party shall mean an entity that directly, or
indirectly through one or more
intermediaries, controls, or is controlled by, or
is under common control with, such Party.
The term "control" (including, with
correlative meanings, terms "controlled by"
and "under common control with")
means the possession of the power to direct
the management and policies of such
entity through ownership of fifty percent
(50%) or more of the voting power or
economic interests in the referenced
entity. An entity shall be deemed an
Affiliate only for so long as such control
exists.
1.3
"Agreement" shall have the meaning set forth in the
introductory paragraph hereof.
1.4 "Ancillary
Products" shall have the meaning set forth in the
IP Contribution Agreement.
1.5 "Buyer"
shall have the meaning set forth in the Recitals.
1.6
"Confidential Information" shall mean any and all (a)
Enterprise IP of Qwest; (b) Enterprise IP
of Dex; and (c) other technology,
information and materials related to
research, products, services, hardware or
software, inventions, processes, designs,
drawings, engineering or other
technology which is supplied or licensed by
the such Party or one of its
Affiliates (the "Disclosing Party") to
another Party (the "Receiving Party") and
which is designated in writing as
proprietary or confidential (or with a similar
designation) or, if disclosed orally, by
demonstration or in other intangible
form, is designated as confidential or
proprietary at the time of disclosure.
Furthermore, East shall treat any West
Region Customer Information licensed to
it pursuant to Section 2.2 below as
Confidential Information , and West shall
treat any East Region Customer Information
licensed to it pursuant to Section
3.2 below as Confidential Information.
Notwithstanding the foregoing,
Confidential Information shall not include
information or material which (i) is
or becomes available to the relevant public
other than as a result of a wrongful
act or omission by the Receiving Party,
(ii) was available to the Receiving
Party (from a source that the Receiving
Party does not know or have reason to
know owes a duty of confidentiality to one
or more of the Disclosing Parties or
their Affiliates with respect to such
information or material) prior to its
receipt from a Disclosing Party or its
Affiliate, (iii) becomes available to the
Receiving Party from a party that the
Receiving Party does not know or have a
reason to know is bound by a
confidentiality agreement with the Disclosing Party
or an Affiliate with respect to such
information or material, or (iv) was
independently developed by the Receiving
Party.
1.7 "Co-Used
East Region Copyrights and Information" shall mean
elements of the East Region Copyrights and
East Region Customer Information to
the extent used in the operation of the
business of West in the West Region as
of the Effective Date, but excludes
compilation copyrights to the extent
relating to the whole or substantial
portions of (a) the telephone directories
included in the East Region Copyrights, and
(b) the databases included in the
East Region Customer Information.
1.8 "Co-Used
West Region Copyrights and Information" shall mean
elements of the West Region Copyrights and
West Region Customer Information to
the extent
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used in the operation of the business of
East in the East Region as of the
Effective Date, but excludes compilation
copyrights to the extent relating to
the whole or substantial portions of (a)
the telephone directories included in
the West Region Copyrights, and (b) the
databases included in the West Region
Customer Information.
1.9 "Dex
Domain Names" shall have the meaning specified in the IP
Contribution Agreement. The Dex Domain
Names are set forth in Exhibit A.
1.10
"Dex Marks" shall have the meaning specified in the IP
Contribution Agreement; provided that Dex
Marks shall also include any
trademarks, service marks and tradenames
that constitute Additional IP, and that
were transferred to Dex Media at Second
Closing. The Dex Marks are set forth in
Exhibit B.
1.11
"Dex Media" shall have the meaning set forth in the
introductory paragraph hereof.
1.12
"Dex Patents" shall have the meaning specified in the IP
Contribution Agreement; provided that Dex
Patents shall also include any patents
and patent applications that constitute
Additional IP, and that were transferred
to Dex Media at Second Closing. The Dex
Patents are set forth in Exhibit C.
1.13
"Directory Products" shall have the meaning set forth in the
IP Contribution Agreement.
1.14
"Disclosing Party" shall have the meaning set forth in Section
1.7.
1.15
"Domain Name Lease Term" shall have the meaning set forth in
the IP Contribution Agreement.
1.16
"East" shall have the meaning set forth in the introductory
paragraph hereof.
1.17
"East Collateral Agent" shall mean the Collateral Agent as
defined in the East Guarantee and
Collateral Agreement.
1.18
"East Guarantee and Collateral Agreement" shall mean the
Guarantee and Collateral Agreement, dated
as of November 8, 2002, among Dex
Media East, Inc., East, each of the other
subsidiaries of Dex Media East, Inc.
identified therein and JPMorgan Chase Bank,
as Collateral Agent, as such
agreement may be amended, modified,
supplemented or amended and restated from
time to time.
1.19
"East Region" shall mean the territory comprised of the seven
(7) states of Colorado, Iowa, Minnesota,
Nebraska, New Mexico, North Dakota and
South Dakota and the metropolitan
statistical area of El Paso, Texas. "East
Region" also includes the specific Service
Areas within the West Region where
East has the Publishing Obligation.
1.20
"East Region Copyrights" shall mean Publisher Region
Copyrights, as such term is defined in the
IP Contribution Agreement.
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1.21
"East Region Customer Information" shall mean Publisher Region
Customer Information, as such term is
defined in the IP Contribution Agreement.
1.22
"East Secured Parties" shall mean the Secured Parties as
defined in the East Guarantee and
Collateral Agreement.
1.23
"Effective Date" shall have the meaning set forth in the
introductory paragraph hereof.
1.24
"Enterprise IP" shall have the meaning set forth in the IP
Contribution Agreement.
1.25
"Enterprise IP of Dex" shall mean the Enterprise IP assigned
to Dex Media pursuant to Sections 2.1.2 and
2.1.3 of the IP Contribution
Agreement.
1.26
"Enterprise IP of Qwest" shall mean the Enterprise IP licensed
to Dex Media pursuant to Sections 2.2.1 and
2.2.2 of the IP Contribution
Agreement.
1.27
"First Closing" shall have the meaning set forth in the
Recitals.
1.28
"Governmental Entity" shall mean any government, or any
agency, bureau, board, commission, court,
department, official, political
subdivision, tribunal or other
instrumentality of any government, whether
Federal, state, or local, domestic or
foreign.
1.29
"IP Contribution Agreement" shall have the meaning set forth
in the Recitals.
1.30
"Licensed Products" shall have the meaning set forth in the IP
Contribution Agreement.
1.31
"LLC Purchase Agreement" shall have the meaning set forth in
the Recitals.
1.32
"LLC
II Purchase Agreement" shall have the meaning set forth
in the Recitals.
1.33
"Party" and "Parties" shall have the meanings set forth in the
introductory paragraph hereof.
1.34
"Person" means an association, a corporation, an individual, a
partnership, a limited liability company, a
trust or any other entity or
organization, including a Governmental
Entity.
1.35
"Professional Services Agreement" shall mean the Professional
Services Agreement by and between East and
Qwest Dex, effective as of November
8, 2002.
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1.36
"Publisher Websites" shall have the meaning set forth in the
IP Contribution Agreement.
1.37
"Publishing Agreement" shall mean the Publishing Agreement for
Official Listings/Directories by and
between East, West, Buyer, and Qwest
Corporation, dated November 8, 2002.
1.38
"Publishing Obligation" shall have the meaning set forth in
the Publishing Agreement.
1.39
"QSC" shall have the meaning set forth in the Recitals.
1.40
"Qwest" shall have the meaning set forth in the Recitals.
1.41
"Qwest Dex" shall have the meaning set forth in the Recitals.
1.42
"Qwest Entities" shall have the meaning set forth in the IP
Contribution Agreement.
1.43
"Qwest Licensed Patents" shall mean Licensed Patents, as such
term is defined in the IP Contribution
Agreement. The Qwest Licensed Patents are
set forth on Exhibit D.
1.44
"Receiving Party" shall have the meaning set forth in Section
1.7.
1.45
"Second Closing" shall have the meaning set forth in the
Recitals.
1.46
"Service Area(s)" shall have the meaning set forth in the
Publishing Agreement.
1.47
"Shared Services and Employees Agreement" shall mean the
Shared Services and Employees Agreement by
and among Dex Media, East, and West,
dated September 9, 2003.
1.48
"Tax Structure" shall have the meaning set forth in Section
5.3.1.
1.49
"Tax Treatment" shall have the meaning set forth in Section
5.3.1.
1.50
"Transaction" shall have the meaning set forth in Section
5.3.2.
1.51
"Voice Portal Directory" shall have the meaning set forth in
the IP Contribution Agreement.
1.52
"West" shall have the meaning set forth in the introductory
paragraph hereof.
1.53
"West Collateral Agent" shall mean the Collateral Agent as
defined in the West Guarantee and
Collateral Agreement.
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1.54
"West Guarantee and Collateral Agreement" shall mean the
Guarantee and Collateral Agreement, dated
as of September 9, 2003, among Dex
Media West, Inc., West, each of the
subsidiaries of Dex Media West, Inc.
identified therein and JPMorgan Chase Bank,
as Collateral Agent, as such
agreement may be amended, modified,
supplemented or amended and restated from
time to time.
1.55
"West Region" shall mean the territory comprised of the seven
(7) states of Arizona, Idaho, Montana,
Oregon, Utah, Washington and Wyoming.
"West Region" also includes the specific
Service Areas within the East Region
where West has the Publishing
Obligation.
1.56
"West Region Copyrights" shall mean Qwest Territory
Copyrights, as such term is defined in the
IP Contribution Agreement.
1.57
"West Region Customer Information" shall mean Qwest Territory
Customer Information, as such term is
defined in the IP Contribution Agreement.
1.58
"West Secured Parties" shall mean the Secured Parties as
defined in the West Guarantee and
Collateral Agreement.
2. LICENSES TO EAST
2.1 East
Region Copyrights and East Region Customer Information.
Dex Media hereby grants to East an
exclusive (subject to the license granted to
the Qwest Entities pursuant to the IP
Contribution Agreement, and subject to the
license granted herein to West in the
Co-Used East Region Copyrights and
Information), perpetual, irrevocable,
non-transferable (except as provided in
Section 7.6), fully paid up, worldwide
(with the exception of the West Region)
right and license to use, reproduce,
distribute, transmit, prepare derivate
works of, and otherwise exploit the East
Region Copyrights and East Region
Customer Information, with the right to
sublicense such rights in the ordinary
course of business.
2.2 Co-Used
West Region Copyrights and Information. Dex Media
hereby grants to East a non-exclusive,
perpetual, irrevocable, non-transferable
(except as provided in Section 7.6), fully
paid up, worldwide (with the
exception of the West Region) right and
license to use, reproduce, distribute,
transmit, prepare derivate works of, and
otherwise exploit the Co-Used West
Region Copyrights and Information, with the
right to sublicense such rights in
the ordinary course of business.
Notwithstanding the foregoing, East may only
disclose Confidential Information included
in such Co-Used West Region
Copyrights and Information if such
disclosure is made in accordance with the
confidentiality obligations set forth in
this Agreement.
2.3 Dex Marks.
Dex Media hereby grants to East a non-exclusive,
perpetual, irrevocable, non-transferable
(except as provided in Section 7.6),
fully paid up, worldwide (with the
exception of the West Region) right and
license to use the Dex Marks in connection
with the marketing and provision of
goods and services, with the right to
sublicense such rights in the ordinary
course of business. Neither East nor any of
its sublicensees will obtain any
right, title or interest in the Dex Marks
by virtue of their
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use of the Dex Marks. Any goodwill that is
created through the use of the Dex
Marks by East or any of its sublicensees
will inure solely to the benefit of Dex
Media. All uses of the Dex Marks by East or
any of its sublicensees will be: (i)
in accordance with Dex Media's then-current
trademark usage policies, and (ii)
subject to inspection and monitoring by Dex
Media to ensure that such uses are
in accordance with such policies. At Dex
Media's request, East shall promptly
make, and shall require its sublicensees to
promptly make, any changes with
regard to usage of the Dex Marks as Dex
Media deems appropriate. Any such
changes shall be made by East and any of
its sublicensees at their sole expense.
2.4 Dex Domain
Names. Dex Media hereby grants to East an
exclusive, irrevocable, non-transferable
(except as provided in Section 7.6),
fully paid up right and license to use the
Dex Domain Names in connection with
the management and operation of web sites
on behalf of both East and West in
accordance with the Shared Services and
Employees Agreement, but only for so
long as East continues to manage and
operate such web sites on behalf of both
itself and West.
2.5 Dex
Patents. Dex Media hereby grants to East a non-exclusive,
irrevocable, perpetual, non-transferable
(except as provided in Section 7.6),
fully paid up, worldwide (with the
exception of the West Region) right and
license under the Dex Patents, to make,
have made, use, import, export,
distribute, offer for sale, sell, and
otherwise transfer products, and to
otherwise exploit the Dex Patents, with the
right to sublicense such rights in
the ordinary course of business.
2.6 Enterprise
IP of Dex. Dex Media hereby grants to East a
non-exclusive, irrevocable, perpetual,
non-transferable (except as provided in
Section 7.6), fully paid up, worldwide
(with the exception of the West Region)
right and license to use and exploit all
rights of Dex Media in and to the
Enterprise IP of Dex. The rights and
licenses set forth in this Section 2.6
include the right of East to disclose the
Confidential Information included in
such Enterprise IP of Dex, provided that
such disclosure is in accordance with
the confidentiality obligations set forth
in this Agreement.
2.7 Enterprise
IP of Qwest. Subject to the terms and conditions of
the IP Contribution Agreement, which East
acknowledges and agrees are
enforceable against it directly by the
Qwest Entities, Dex Media hereby grants
to East a nonexclusive, perpetual,
royalty-free, worldwide (with the exception
of the West Region) right and license to
use and exploit all rights licensed by
Dex Media from the Qwest Entities in and to
the Enterprise IP of Qwest solely in
connection with (a) the Publisher Websites,
and (b) the development,
preparation, reproduction, sale, marketing
and other distribution, and other use
and exploitation of Licensed Products. The
rights and licenses set forth in this
Section 2.7 include (i) the right of East
to disclose the Confidential
Information included in such Enterprise IP,
provided that such disclosure is
solely for use and exploitation in
connection with Licensed Products and in
accordance with the confidentiality
obligations set forth in this Agreement, and
(ii) a license under such Enterprise IP to
prepare derivative works of,
reproduce, distribute, transmit, and
otherwise use and exploit such Licensed
Products. Notwithstanding the geographical
limitation on this license, East may
use the Enterprise IP of Qwest in
connection with the
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management and operation of Publisher
Websites on behalf of both East and West
in accordance with the Shared Services and
Employees Agreement, but only for so
long as East continues to manage and
operate such Publisher Websites on behalf
of both itself and West.
2.8 Domain
Name License to qwestdex.com. Subject to the terms and
conditions of the IP Contribution Agreement
and the Professional Services
Agreement, which East acknowledges and
agrees are enforceable against it
directly by the Qwest Entities, Dex Media
hereby grants to East the right
licensed by Dex Media from the Qwest
Entities, solely for and during the Domain
Name Lease Term and only for so long as
East continues to manage and operate web
sites on behalf of both itself and West, to
use the "qwestdex.com" domain name
for the continued operation of the
qwestdex.com World Wide Web site, provided
that such World Wide Web site continues to
consist principally of providing
current and future Ancillary Products and
Directory Products.
2.9 Qwest
Licensed Patents. Subject to the terms and conditions of
the IP Contribution Agreement, which East
acknowledges and agrees are
enforceable against it directly by the
Qwest Entities, Dex Media hereby grants
to East, a nonexclusive, worldwide (with
the exception of the West Region) right
and license to use and exploit all rights
licensed by Dex Media from the Qwest
Entities in and to the Licensed Patents
solely in connection with the
development, preparation, reproduction,
sale, marketing, distribution, and other
use and exploitation of Voice Portal
Directories. The rights and licenses set
forth in this Section 2.9 include a license
under such Licensed Patents to make,
use, offer for sale, sell, import and
otherwise exploit such Voice Portal
Directories.
3. LICENSES TO WEST
3.1 West
Region Copyrights and West Region Customer Information.
Dex Media hereby grants to West an
exclusive (subject to the license granted to
the Qwest Entities pursuant to the IP
Contribution Agreement, and subject to the
license granted herein to East in the
Co-Used West Region Copyrights and
Information), perpetual, irrevocable,
non-transferable (except as provided in
Section 7.6), fully paid up, worldwide
(with the exception of the East Region)
right and license to use, reproduce,
distribute, transmit, prepare derivate
works of, and otherwise exploit the West
Region Copyrights and West Region
Customer Information, with the right to
sublicense such rights in the ordinary
course of business.
3.2 Co-Used
East Region Copyrights and Information. Dex Media
hereby grants to West a non-exclusive,
perpetual, irrevocable, non-transferable
(except as provided in Section 7.6), fully
paid up, worldwide (with the
exception of the East Region) right and
license to use, reproduce, distribute,
transmit, prepare derivate works of, and
otherwise exploit the Co-Used East
Region Copyrights and Information, with the
right to sublicense such rights in
the ordinary course of business.
Notwithstanding the foregoing, West may only
disclose Confidential Information included
in such Co-Used East Region
Copyrights and Information if such
disclosure is made in accordance with the
confidentiality obligations set forth in
this Agreement.
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3.3 Dex Marks.
Dex Media hereby grants to West a non-exclusive,
perpetual, irrevocable, non-transferable
(except as provided in Section 7.6),
fully paid up, worldwide (with the
exception of the East Region) right and
license to use the Dex Marks in connection
with the marketing and provision of
goods and services, with the right to
sublicense such rights in the ordinary
course of business. Neither West nor any of
its sublicensees will obtain any
right, title or interest in the Dex Marks
by virtue of their use of the Dex
Marks. Any goodwill that is created through
the use of the Dex Marks by West or
any of its sublicensees will inure solely
to the benefit of Dex Media. All uses
of the Dex Marks by West or any of its
sublicensees will be: (i) in accordance
with Dex Media's then-current trademark
usage policies, and (ii) subject to
inspection and monitoring by Dex Media to
ensure that such uses are in
accordance with such policies. At Dex
Media's request, West shall promptly make,
and shall require its sublicensees to
promptly make, any changes with regard to
usage of the Dex Marks as Dex Media deems
appropriate. Any such changes shall be
made by West and any of its sublicensees at
their sole expense.
3.4 Dex
Patents. Dex Media hereby grants to West a non-exclusive,
irrevocable, perpetual, non-transferable
(except as provided in Section 7.6),
fully paid up, worldwide (with the
exception of the East Region) right and
license under the Dex Patents, to make,
have made, use, import, export,
distribute, offer for sale, sell, and
otherwise transfer products, and to
otherwise exploit the Dex Patents, with the
right to sublicense such rights in
the ordinary course of business.
3.5 Enterprise
IP of Dex. Dex Media hereby grants to West a
non-exclusive, irrevocable, perpetual,
non-transferable (except as provided in
Section 7.6), fully paid up, worldwide
(with the exception of the East Region)
right and license to use and exploit all
rights of Dex Media in and to the
Enterprise IP of Dex. The rights and
licenses set forth in this Section 3.5
include the right of West to disclose the
Confidential Information included in
such Enterprise IP of Dex, provided that
such disclosure is in accordance with
the confidentiality obligations set forth
in this Agreement.
3.6 Enterprise
IP of Qwest. Subject to the terms and conditions of
the IP Contribution Agreement, which West
acknowledges and agrees are
enforceable against it directly by the
Qwest Entities, Dex Media hereby grant to
West a nonexclusive, perpetual,
royalty-free, worldwide (with the exception of
the East Region) right and license to use
and exploit all rights licensed by Dex
Media from the Qwest Entities in and to the
Enterprise IP of the Qwest solely in
connection with (a) the Publisher Websites,
and (b) the development,
preparation, reproduction, sale, marketing
and other distribution, and other use
and exploitation of Licensed Products. The
rights and licenses set forth in this
Section 3.6 include (i) the right of West
to disclose the Confidential
Information included in such Enterprise IP,
provided that such disclosure is
solely for use and exploitation in
connection with Licensed Products and in
accordance with the confidentiality
obligations set forth in this Agreement, and
(ii) a license under such Enterprise IP to
prepare derivative works of,
reproduce, distribute, transmit, and
otherwise use and exploit such Licensed
Products.
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3.7 Qwest
Licensed Patents. Subject to the terms and conditions of
the IP Contribution Agreement, which West
acknowledges and agrees are
enforceable against it directly by the
Qwest Entities, Dex Media hereby grants
to West, a nonexclusive, worldwide (with
the exception of the East Region) right
and license to use and exploit all rights
licensed by Dex Media from the Qwest
Entities in and to the Licensed Patents
solely in connection with the
development, preparation, reproduction,
sale, marketing, distribution, and other
use and exploitation of Voice Portal
Directories. The rights and licenses set
forth in this Section 3.7 include a license
under such Licensed Patents to make,
use, offer for sale, sell, import and
otherwise exploit such Voice Portal
Directories.
4. MAINTENANCE AND ENFORCEMENT
4.1
Maintenance. Dex Media will be responsible for preparing,
filing, prosecuting, and maintaining all
applications, registrations, and
issuances of the intellectual property
licensed to East and West hereunder. In
the event that Dex Media fails to do so,
either East or West
