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Exhibit
10.1
LICENSE
AGREEMENT
This License Agreement
(“ Agreement ”) is entered into as of
February 28, 2007, by and between SureWest Communications, a
California corporation (“ Seller ”), and
GateHouse Media, Inc., a Delaware corporation (“
Purchaser ”) (Seller and Purchaser being hereinafter
referred to individually as a “ Party ” and
collectively as the “ Parties ”).
WHEREAS, Seller and Purchaser
have entered into the Share Purchase Agreement dated as of
January 28, 2007 (“ Share Purchase Agreement
”), pursuant to which Purchaser has agreed to purchase from
Seller, and Seller has agreed to sell to Purchaser, all of the
issued and outstanding capital stock of SureWest Directories, a
California corporation (“ Company ”);
WHEREAS, Seller and Purchaser
have entered into the Publishing Agreement, of even date herewith,
(the “ Publishing Agreement ”) pursuant to which
Purchaser is willing to fulfill certain publishing obligations of
Seller on the terms and conditions set forth in the Publishing
Agreement;
WHEREAS, the Seller or its
“Affiliates” (as defined in the Publishing Agreement)
own and/or use certain intellectual property identified on
Schedule A ;
WHEREAS, Seller is willing to
license such intellectual property to Purchaser for the benefit of
Company, such license to be effective at the time that Purchaser
becomes the owner of Company; and
WHEREAS, Purchaser is willing
to license such intellectual property on the terms and conditions
of this Agreement.
AGREEMENT
NOW, THEREFORE, in
consideration of the foregoing premises, the mutual covenants,
premises and agreements hereinafter set forth, the mutual benefits
to be gained by the performance of such covenants, promises and
agreements, and for other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged and
accepted, the parties hereto hereby agree as follows:
ARTICLE I
LICENSE
GRANT
1.1 Seller, on behalf of
itself and its Affiliates, and subject to previously granted rights
and licenses, if any, hereby grants to Purchaser a personal,
royalty-free, fully paid-up, nonexclusive and nontransferable
(except as permitted pursuant to Section 8.4 below) license in
the intellectual property identified on Part 1 of Schedule A
(the “ Nonexclusive Intellectual Property ”),
subject to the conditions and limitations herein.
1.2 Seller, on behalf of
itself and its Affiliates, and subject to previously granted rights
and licenses, if any, hereby grants to Purchaser a personal,
royalty-free, fully paid-up, exclusive and nontransferable (except
as permitted pursuant to Section 8.4 below) license in
the
intellectual property identified on Part
2 of Schedule A (the “ Exclusive Intellectual
Property ”), subject to the conditions and limitations
herein. The Nonexclusive Intellectual Property and the Exclusive
Intellectual Property shall be collectively referred to as the
“ Licensed Intellectual Property .”
1.3 The foregoing licenses
granted to Purchaser (and any permitted sublicense thereof) are
solely for the purposes of using the Intellectual Property in
connection with the business of publishing and providing Directory
Products, as such term is defined in that certain Non-Competition
and Non-Solicitation Agreement, of even date herewith, by and
between Purchaser and Seller, in the California counties set forth
on Schedule B (the “ Territory ”) and
soliciting and entering into agreements with advertisers to place
advertising in the foregoing Directory Products (such business as a
whole constituting the “ Directory Business ”).
Upon notice to Seller, Purchaser may to grant a sublicense of the
license granted hereunder to any person who is an Affiliate of
Purchaser and is engaged in the Directory Business, provided that
such person is not engaged in the business of providing or
marketing telecommunications, Internet, video programming or
wireless services.
1.4 Subject to
Section 1.5, below, the foregoing licenses granted to
Purchaser do not include the right: (a) to use the Licensed
Intellectual Property outside of the Territory; (b) to grant
sublicenses to any person who is not an Affiliate of Purchaser or
who is not engaged in the Directory Business; and (c) to
assign such license other than to permitted successors and assigns
of Company. Any attempt to sell, assign, sublicense or transfer any
license or other right to use Licensed Intellectual Property shall
be void.
1.5 For the avoidance of
doubt, Purchaser is not restricted from use of the licensed
Intellectual Property outside the Territory in furtherance of its
provision of Directory Business within the Territory, such as in
solicitation of national advertising accounts.
ARTICLE II
CONDITIONS OF
LICENSES
2.1 Notwithstanding any other
provision of this Agreement, Purchaser shall not use any Licensed
Intellectual Property in a manner that could result after the
Closing in a legal commitment of or which could reasonably result
in causing any person to believe such person had obtained a legal
commitment from Seller or any of its Affiliates.
2.2 Seller shall furnish
Purchaser with a list of all applicable customers, suppliers and
financial institutions having current business relationships with
Company before the Closing Date (the “ List ”).
As promptly as possible, but no later than thirty
(30) calendar days after the later of the Closing Date or the
date Purchaser receives the List, Purchaser shall notify, in
writing, all Persons on the List that Company has been purchased by
Purchaser and is no longer affiliated with Seller or any of its
Affiliates.
2.3 Purchaser agrees that it
shall cause the quality of all Directory Products or other products
and services provided by Purchaser, Company or any Affiliate of
Purchaser or Company that utilizes the Licensed Intellectual
Property in any way not to reflect in a materially
negative or harmful manner on Seller or
the Licensed Intellectual Property, and to the extent such products
and services are comparable, shall be of at least the quality of
the products and services provided by Company immediately prior to
the Closing.
2.4 Purchaser agrees to
reasonably cooperate, and to require Company, all Purchaser
Affiliates, and Purchaser’s vendors, representatives and
agents to cooperate with Seller in facilitating any Seller inquiry
into the use of the Licensed Intellectual Property, and to permit
(and require Company, its Affiliates and all others with whom it
does business to permit) reasonable, periodic review and/or
inspections of such uses as are being made of the Licensed
Intellectual Property. Purchaser agrees, and will require Company,
Purchaser’s Affiliates, vendors and others with whom it does
business to agree that all products and services provided by
Purchaser, Company or any Affiliate of Purchaser or Company, or any
other person using the Licensed Intellectual Property, and which
are marketed, advertised, sold or provided in connection with the
use of the Licensed Intellectual Property will be marketed,
advertised, sold and provided in accordance with all applicable
laws, rules, regulations and orders affecting or governing such
use.
2.5 Seller agrees that
Purchaser will have met the required standards of quality with
respect to the physical attributes (i.e., paper quality, weight and
thickness, materials used for covers, spine tabs and fold outs, but
expressly excluding any content or intellectual property in or on
the foregoing) and other customary measures of the quality of a
tangible Directory Product if Purchaser can demonstrate that such
physical attributes of its Directory Products are of at least of
the quality as those provided by Company prior to the Closing, or
alternatively, are of at least the same quality as the directory
products of all of the three largest publishers of tangible
Directory Products in the United States (excluding
Purchaser.)
ARTICLE III
FORM OF USE OF LICENSED
INTELLECTUAL PROPERTY
3.1 Purchaser agrees that the
style of use of any Licensed Intellectual Property shall be in the
form and style conforming to any existing Seller trademark usage
guidelines and Brand Identity Standards (“ Standards
”), a copy of which has been provided to Purchaser. Seller
may update the Standards from time to time, provided that such
updates apply to Seller and any of its other licensees, and not
solely to Purchaser and/or Company. Purchaser shall comply with any
updated Standards as soon as reasonably practicable but for each
Primary Directory, not later than the next publication date of such
Primary Directory, provided that sufficient notice has been given
to Purchaser. Unless such submission is waived in writing by
Seller, Purchaser shall submit to Seller for review and approval,
prior to proposed use, all materials in which the Licensed
Intellectual Property are used in accordance with the
following:
(a) At least thirty
(30) calendar days prior to proposed use, during the first six
(6) months after the Closing Date; and
(b) At least fifteen
(15) calendar days prior to proposed use, during the balance
of the Term of this Agreement.
No person shall publish,
distribute or use any such advertising, promotional materials or
products or services in which the Licensed Intellectual Property
are used without the prior written approval of the Advertising and
Brand Compliance representative of Seller listed in
Section 8.6, which person Seller may change from time to time
on written notice to Purchaser.
3.2 Purchaser also agrees
that Purchaser and Company shall cause to appear on all
advertisements, promotions and other displays on or in connection
with which the Licensed Intellectual Property are used, such
legends, markings and notices as Seller may require in order to
give appropriate notice of any trademark rights therein.
3.3 Notwithstanding any other
provision of this Agreement, Purchaser may not include on the front
or back cover (inside or outside), tabs, spine or other three sides
of, or packaging containing any print Directory Product or the
cover, home page or similar feature of any non-print Directory
Product which uses the Licensed Intellectual Property (i) any
advertising for telecommunications, Internet, video programming or
wireless services (other than that of Seller or its Affiliates) or
(ii) any name or brand that is identified with the provision
of any of such services, except as required by applicable
law.
3.4 Subject to Seller’s
prior written approval, Purchaser or Company may co-brand the front
covers and spines of the print Directory Products which it
publishes for Seller or an Affiliate of Seller with a trademark or
trade name of Seller (or upon designation by Seller, an Affiliate
of Seller), provided that: (i) with respect to Primary
Directories, the Licensed Intellectual Property and
Purchaser’s mark or trade name are clearly the dominant
brand, and at least one and one-half (1 1 / 2 ) times the size of any Seller mark or
name.
3.5 Notwithstanding anything
to the contrary contained herein, the consent or approval of Seller
as to any matter submitted hereunder shall not be unreasonably
withheld, conditioned or delayed. If Seller has not disapproved any
submission or proposed use, in writing, stating the basis
therefore, within ten (10) calendar days of its receipt of
such submission or proposed use, such submission or proposed use
shall be deemed approved for the proposed use. Once a specific form
of use with a product or a service has been approved, no further
approval for continuing or reusing such use will be necessary
unless there has been a material change in such product or
service.
ARTICLE IV
OWNERSHIP AND
GOODWILL
4.1 Purchaser and Company
acknowledge that Seller (or one or more of Seller’s
Affiliates) is the sole and exclusive owner of rights in the
Licensed Intellectual Property, and Purchaser and Company undertake
not to challenge the validity of the Licensed Intellectual
Property, or the registration or application for registration or
ownership of the Licensed Intellectual Property by such
Affiliate(s) of Seller, and agree that neither Purchaser nor
Company, nor any Affiliate of Purchaser or Company, will do,
directly or indirectly, anything inconsistent with such
ownership.
4.2 Purchaser and Company
further acknowledge and agree that all goodwill in the Licensed
Intellectual Property generated by its use pursuant to this
Agreement shall inure to the
benefit of and be on behalf of Seller.
Nothing in this Agreement shall give Purchaser or Company, or any
other person any right, title or interest in or to the Licensed
Intellectual Property other than the rights expressly granted
herein, for the use and periods specified.
4.3 Purchaser agrees, and
will cause Company and Purchaser’s Affiliates to agree that
each and all of them will not utilize the Licensed Intellectual
Property or any confusingly similar intellectual property, except
as expressly permitted hereunder, will not hereafter seek
registration of the Licensed Intellectual Property or any
confusingly similar intell
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