Exhibit 10.12
VERIZON PROPRIETARY SOFTWARE
LICENSE AGREEMENT
THIS VERIZON PROPRIETARY SOFTWARE LICENSE
AGREEMENT (“SLA”), is entered into by and among GTE
CORPORATION, a New York corporation (“Seller”), and
Hawaiian Telcom Communications, Inc., a Delaware corporation
formerly known as Paradise MergerSub, Inc. (“Hawaiian
Telcom”) (together the “Parties,” individually
each a “Party”).
Whereas, Seller and Hawaiian Telcom,
together with certain other companies, have entered into an
Agreement of Merger dated as of May 21, 2004 pursuant to which
Verizon HoldCo LLC (“Company”) will merge with and into
Hawaiian Telcom to form Surviving Corporation (as these entities
are defined in such Agreement of Merger), and, at Closing of said
Merger, Buyer shall own all stock of Surviving
Corporation;
Whereas, Seller or its U.S.
Affiliates (other than Surviving Corporation, Company or its
Subsidiaries) are the owners of certain Verizon Proprietary
Software (as hereinafter defined), and Seller has the right to
enter into this SLA on behalf of itself and to cause its U.S.
Affiliates to perform here under; and
Whereas, Seller is willing to grant
or cause its U.S. Affiliates to grant to Surviving Corporation and
its Subsidiaries, at Closing of said Merger, a nonexclusive limited
license to use the Verizon Proprietary Software.
Now, therefore, in consideration of the amounts
paid, the mutual covenants and promises contained herein, and for
other good and valuable consideration, the receipt and sufficiency
of which are hereby acknowledged, the Parties agree as
follows:
1. D EFINITIONS .
1.1 Reference to Prior
Agreements. Capitalized
terms used herein shall have the meaning(s) provided herein.
Capitalized terms used herein and not defined herein shall have the
meaning(s) provided in the Agreement or in the Intellectual
Property Agreement (both defined below), unless otherwise
specified.
1.2 “ Agreement ” means
the Agreement of Merger entered into by and between Seller and
Hawaiian Telcom, together with certain other companies, as amended
or supplemented, together with all Exhibits, Schedules and
Ancillary Documents attached thereto or expressly incorporated
therein by reference.
1.3 “ Backup Storage Provider
” means a Service Provider that provides secure
electronic and/or physical data back-up storage facilities within
the United States.
1.4 “ Confidential Information
” means: (i) the Software; (ii) the technology,
ideas, know-how, documentation, processes, algorithms and trade
secrets embodied in the Software; and (iii)
any other information provided by
Licensor in connection with or related to the Software, whether
disclosed orally or in written or magnetic media.
1.5 “ Effective Date
” means the Closing
Date, as defined in the Agreement.
1.6 “ Geographic
Scope ” means
the geographic territory comprised of the State of
Hawaii.
1.7 “ In-Geography
Service Provider ” means a Service Provider performing services in
the geographic territory comprised of the State of
Hawaii.
1.8 “ Intellectual
Property ” shall have the meaning specified in the
Intellectual Property Agreement. However, Intellectual Property for
purposes of this SLA shall not include any Trademarks (as that term
is defined in the Intellectual Property Agreement).
1.9 “ Intellectual
Property Agreement ” means the Intellectual Property Agreement
entered into by and between Seller and Hawaiian Telcom, together
with certain other companies, as amended or supplemented, including
all Exhibits and Schedules thereto.
1.10 “ Licensed Field of
Use ” shall
have the meaning specified in the Intellectual Property
Agreement.
1.11 “ Licensee
” means,
collectively, Surviving Corporation and its subsidiaries (as
“subsidiaries” is defined in the Agreement).
1.12 “ Licensor
” means Seller and
its U.S. Affiliates.
1.13 “ Object Code
” means the
computer programming code in a form not readily perceivable by
humans and suitable for machine execution with minimal intervening
steps.
1.14 “ Other Proprietary
Software ” means Licensor’s proprietary software
applications identified as IOFNet and ICGS applications.
1.15 “ Outside-Geography
Service Provider ” means a Service Provider performing services in
the United States outside of the geographic territory comprised of
the State of Hawaii who does not provide facilities-based voice or
data telecommunications services in the United States, excluding
the State of Hawaii.
1.16 “ Permitted
Modifications ” means (i) without limitation, any
adaptations, modifications, improvements, enhancements, revisions,
translations, partial copies or interface elements created by any
person, including any of the Parties, from the Software (whether
such modifications are in Object Code, Source Code or
documentation), in any form or medium whatsoever; and (ii) any
“derivative work” of the Software as defined in the
Copyright Law of the United States of America, 17 U.S.C. §101
et seq.
1.17 “ Service
Provider ” means any third party provider of outsourcing or
information technology-related services.
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1.18 “ SLA
” shall have the
meaning set forth in the introductory paragraph of this Verizon
Proprietary Software License Agreement.
1.19 “ SDLA
” shall mean the
Software Development License Agreement between Seller and Hawaiian
Telcom dated October 26, 2004 (including all amendments
thereto).
1.20 “ Software
” means
(i) the Verizon Proprietary Software in all forms (including
Object Code and Source Code), including any documentation thereto,
in the form and content as it exists within Licensor on the
Effective Date or, if it was licensed under the SDLA, in the form
and content as it was required to be provided to Licensee by
Licensor pursuant to the terms of the SDLA; and (ii) all
Permitted Modifications to the Verizon Proprietary Software
(including documentation), including any updates, patches, bug
fixes, new releases or other modifications to the Verizon
Proprietary Software and Permitted Modifications made by or for
Licensee pursuant to the SDLA or this SLA.
1.21 “ Source Code
” means computer
programming code in human readable form (including explanatory
annotations, if any) that is not suitable for machine execution
without intervening steps such as interpretation or
compilation.
1.22 “ Supplier
” shall have the
meaning set forth in the TSA.
1.23 “ Third Party
Intellectual Property ” shall have the meaning set forth in the
Intellectual Property Agreement.
1.24 “ TSA
” means the
Transition Services Agreement as defined in the
Agreement.
1.25 “ Unknown Third
Party Software ” shall mean the specific software files of Third
Party Intellectual Property identified on Schedule D, attached
hereto. The Parties may wish to extend the meaning of Unknown Third
Party Software to include additional software files and, in such
event, the Parties agree that a letter agreement signed by both
Parties and including an updated Schedule D to include such
additional software files shall be sufficient to extend the meaning
of Unknown Third Party Software for purposes of this SLA as of the
date of such letter agreement.
1.26 “ U.S.
Affiliate ” shall have the meaning specified in the
Intellectual Property Agreement.
1.27 “ Verizon
Deliverables ” shall mean the materials described in Schedule
B hereto which either have been provided to Licensee pursuant to
terms of the SDLA or which shall be provided to Licensee according
to the terms of this SLA. All such Verizon Deliverables, to the
extent they exist, shall be provided in the form and content they
exist on the date of delivery, and except as otherwise expressly
agreed by the Parties in Article 7 hereof, Licensor shall have no
obligation to create any materials, including those described in
Schedule B. Furthermore, to the extent that any such Verizon
Deliverables were provided to Licensee in pursuant to the SDLA,
Licensor shall have no further obligations to provide such
materials to Licensee hereunder.
1.28 “ Verizon
Proprietary Software ” means (i) the software listed in Schedule A
to this SLA, in the form and content it exists within Licensor on
the Effective Date, or if such software were licensed to Licensee
pursuant to the SDLA, in the form and content as it was required to
be
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provided to Licensee by Licensor
pursuant to the terms of the SDLA, but shall expressly exclude any
Third Party Intellectual Property (the Licensor agrees to use
commercially reasonable efforts to identify such Third Party
Intellectual Property prior to the Effective Date), if any,
included in or required for the use of such Software; (ii) certain
representative test data usable with the aforementioned software,
and selected and provided by Licensor; (iii) all Verizon
Deliverables that were provided to Licensee pursuant to the SDLA or
that are provided to Licensee hereunder; (iv) all information,
in any form, including oral and graphic information, provided by
Licensor pursuant to the SDLA or this SLA and relating to the
Software listed in Schedule A; and (v) any and all updates,
modifications, and additional versions of the foregoing, including
Updates, if any, made available to Licensee during the term of the
SDLA or this SLA, including any documentation thereto, if
available, in the form and content as it exists within Licensor on
the date the foregoing is or was made available to Licensee.
Notwithstanding the foregoing, Verizon Proprietary Software shall
include any Unknown Third Party Software.
2. L ICENSE .
2.1 Subject to Licensee’s compliance with the
terms and conditions of this SLA and the Agreement, Licensor hereby
grants to Licensee, commencing on the Effective Date, a restricted,
personal, non-transferable (except and to the extent expressly
provided in Section 12.6 hereof), non-exclusive, perpetual,
fully paid-up, royalty free, internal-use only license: (i) to
use the Software (including Permitted Modifications), solely to
support the business of Licensee in the Geographic Scope, solely
within the Licensed Field of Use, internally at Licensee’s
facilities; (ii) to make Permitted Modifications to the
Software (including compilation and linking of Software Source Code
into Object Code); (iii) to reproduce the Software for
internal purposes in the Licensed Field of Use, consistent with
Licensee’s standard procedures for reproducing copies of
proprietary software; (iv) to maintain back-up copies of the
Software at a Backup Storage Provider, solely in accordance with
Section 3.9; and (v) to sublicense the foregoing rights
to Licensee’s then-current In-Geography Service Providers or
Outside-Geography Service Providers to permit such Service
Providers to support the business of Licensee in the Geographic
Scope, solely within the Licensed Field of Use in accordance with
Section 3.8; provided, however, the license (if any) to
Unknown Third Party Software is only to the extent Licensor has any
rights to grant such license to Licensee, and the delivery and
license grant by Licensor of Unknown Third Party Software shall not
be deemed, expressly or by implication, that Licensor has any
rights in the Unknown Third Party Software, and Licensor makes no
representations or warranties as to what rights, if any, it has in
such Unknown Third Party Software. Notwithstanding the foregoing,
no right or license, express or implied, is hereby granted
(x) to use the Software or any portion thereof to provide data
processing services to any third party (except and to the extent
expressly permitted in Section 3.1 below), or (y) to use
any Third Party Intellectual Property (other than (i) third
party software libraries, runtimes and other similar software tool
components which Licensor has the right to sublicense to Licensee
without the payment of compensation to or obtaining the consent of
any third party; and (ii) any Unknown Third Party Software,
but only to the extent that Licensor has such rights, if
any).
2.2 Licensee shall not permit an In-Geography
Service Provider, an Outside-Geography Service Provider or a Backup
Storage Provider to use, access or maintain the Software outside
the United States without the prior written consent of Seller.
Seller hereby consents to the use, access and maintenance of the
Software by Licensee’s current Outside-Geography Service
Provider, BearingPoint, Inc. (“BearingPoint”), at the
BearingPoint Development Center in Chennai, India
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pursuant to a sublicense approved by
Seller in accordance with Section 3.8, provided that, in
connection with such use, Licensee requires BearingPoint to comply
with the; (i) Business Continuity Plan, Archive Plan Physical
and Logical Security Overview, (ii) Information Security
Policies and Guidelines, (iii) Network Security Policy and
(iv) Background Check Standards, all as attached hereto as
Schedule C (the “Security Procedures”). Seller will
work in good faith with Licensee to promptly assess and determine
the acceptability of any future In-Geography Service Provider,
Outside-Geography Service Provider (or new offshore location for an
existing Service Provider) or Backup Storage Provider proposed by
Licensee to use, access, or maintain the Software outside the
United States.
3. R ESTRICTIONS .
3.1 Except as expressly provided in Section 2
above, Licensee shall not (i) sublicense the Software or any
Permitted Modifications, (ii) market, distribute or otherwise
transfer copies of the Software, in whole or in part, to others,
(iii) provide data processing services to any third party;
provided, however, that notwithstanding the foregoing, Licensee
and/or its then current In-Geography Service Providers and
Outside-Geography Service Providers may use the Software to
provide, for a limited transitional period not to exceed nine
(9) months, data processing services solely in the Geographic
Scope and solely in the Licensed Field of Use to a permitted
successor in interest (as set forth in Section 12.6) to the
business of Licensee or (iv) rent, lease or loan the Software
or any portion thereof.
3.2 Licensee shall reproduce and include any and all
copyright notices and proprietary rights legends for the Software,
as such notices and legends appear in the original Software, on any
copy of the Software, or portion thereof.
3.3 The Software shall be handled, used and stored,
solely at Licensee’s facilities (and the facilities of the
then current In-Geography Service Providers, Outside-Geography
Service Providers and Backup Storage Provider, but only to the
extent expressly permitted pursuant to this Section,
Section 2.2 above and Sections 3.8 and 3.9 below). Although
the Software may be used either from machines or servers, there
shall be no external network access of the Software (i.e., by any
computers or terminals not located at the Licensee’s
facilities) except at (i) any of two (2) United States
facilities of a single In-Geography Service Provider or
Outside-Geography Service Provider identified by Licensee, and
(ii) a single foreign facility of such single In-Geography
Service Provider or Outside-Geography Service Provider approved in
accordance with Section 2.2. Seller further agrees to permit
external network access of the Software by Hewlett Packard, as
contarctor to BearingPoint, at any of two (2) United States
facilities of Hewlett Packard, provided Hewlett-Packard meets the
requirements of Section 3.4 of this SLA. Seller hereby agrees
to BearingPoint’s use of the Software in accordance with a
sublicense approved by Seller pursuant to Section 3.8 at
BearingPoint’s Tysons Corner, Virginia data center facilities
and BearingPoint’s Denver, Colorado data center facilities.
Further, subject to Hewlett Packard’s meeting the
requirements of Section 3.4, Seller hereby agrees to
BearingPoint’s and Hewlett Packard’s use of the
Software in accordance with a sublicense approved by Seller
pursuant to Section 3.8 at Hewlett Packard’s Littleton,
Massachusetts and Houston, Texas data center facilities. Finally,
Seller hereby agrees to the use of the Software by BearingPoint at
the BearingPoint Development Center in Chennai, India in accordance
with a sublicense approved by Seller pursuant to Section 3.8,
provided that BearingPoint, in maintaining and using the Software
in Chennai, India, is required by Licensee to comply with Security
Procedures.
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3.4 Access to the Software shall be limited to
officers, employees and independent contractors of Licensee, the
In-Geography Service Providers, Outside-Geography Service Providers
and Backup Storage Providers who have signed agreements in which
such employees and independent contractors agree to protect third
party confidential information on terms no less stringent than
those set forth herein and agree to the applicability of the
ownership provisions of Section 5 to any Permitted Modifications.
Licensee agrees that any breach by any em
