EXHIBIT 10.6
INTELLECTUAL PROPERTY CROSS-LICENSE AND TRANSFER AGREEMENT
THIS INTELLECTUAL PROPERTY CROSS-LICENSE AND TRANSFER AGREEMENT (this
"AGREEMENT") is entered into as of ______________, 2001, between UtiliCorp
United Inc., a Delaware corporation ("UTILICORP"), and Aquila, Inc., a Delaware
corporation ("AQUILA").
WHEREAS, UtiliCorp and Aquila have entered into the Master Separation
Agreement, pursuant to which UtiliCorp and Aquila have agreed to take certain
actions to effect the Separation; and
WHEREAS, in furtherance of the transactions contemplated by the Master
Separation Agreement, UtiliCorp and Aquila have agreed to enter into this
Agreement relating to the ownership and use of certain technology and
intellectual property;
NOW, THEREFORE, in consideration of the foregoing and the covenants and
agreements set forth below, the parties hereto agree as follows:
ARTICLE I
DEFINITIONS
Capitalized terms used but not defined herein shall have the meanings
ascribed to them in the Master Separation Agreement. In this Agreement, the
following capitalized terms shall have the following meanings:
"AQUILA IP" means the Technology and Marks owned by a member of the Aquila Group
and used in the UtiliCorp Business, but only if set forth on Schedule 2.2, as
mutually amended by the parties from time to time.
"LICENSEE" means any member of the UtiliCorp Group when it licenses Aquila IP or
sublicenses Sublicensed Aquila Technology from a member of the Aquila Group
under this Agreement, and any member of the Aquila Group when it licenses
UtiliCorp IP or sublicenses Sublicensed UtiliCorp Technology from a member of
the UtiliCorp Group under this Agreement.
"LICENSOR" means any member of the UtiliCorp Group when it licenses UtiliCorp IP
or sublicenses Sublicensed UtiliCorp Technology to a member of the Aquila Group
under this Agreement, and any member of the Aquila Group when it licenses Aquila
IP or sublicenses Sublicensed Aquila Technology to a member of the UtiliCorp
Group under this Agreement.
"MARK" means any trademark, service mark, trade name, and the like or other
word, name, symbol or device, or any combination thereof, used or intended to be
used by a Person to identify and distinguish the products or services of that
Person from the products or services of others and to indicate the source of
such products or services, including, without limitation, all registrations and
applications therefor throughout the world and all common law and other rights
therein throughout the world.
"MASTER SEPARATION AGREEMENT" means the Master Separation Agreement, dated
____________, 2001, between UtiliCorp and Aquila.
"SUBLICENSED AQUILA TECHNOLOGY" means the Technology licensed to a member of the
Aquila Group by a Third Party and used in the UtiliCorp Business, but only if
set forth on Schedule 3.2, as mutually amended by the parties from time to time.
"SUBLICENSED UTILICORP TECHNOLOGY" means the Technology licensed to a member of
the UtiliCorp Group by a Third Party and used in the Aquila Business, but only
if set forth on Schedule 3.1, as mutually amended by the parties from time to
time.
"TECHNOLOGY" means patents, copyrights, trade secrets and any other intellectual
property rights (including any interest in or right to use software), but not
including any Marks.
"THIRD PARTY" means a Person other than a member of the UtiliCorp Group or a
member of the Aquila Group.
"UTILICORP IP" means the Technology and Marks owned by a member of the UtiliCorp
Group and used in the Aquila Business, but only if set forth on Schedule 2.1, as
mutually amended by the parties from time to time.
ARTICLE II
CROSS LICENSE
Section 2.1. LICENSE FROM THE UTILICORP GROUP TO THE AQUILA GROUP.
(a) Effective as of the Separation Date, UtiliCorp hereby grants (or
agrees to cause the appropriate member of the UtiliCorp Group to grant) to
Aquila (or such other member of the Aquila Group as Aquila may direct), and
Aquila (or such other member of the Aquila Group) hereby accepts, a
non-exclusive, world-wide, non-transferable, perpetual license to use, subject
to the rights of Third Parties, the UtiliCorp IP.
(b) Notwithstanding anything to the contrary contained herein, the
license granted in Section 2.1(a) does not apply to any Technology or Mark other
than the UtiliCorp IP listed on Schedule 2.1. Furthermore, and subject to
Article IV hereof, nothing in this Agreement shall be deemed to transfer title
to any of the UtiliCorp IP to any member of the Aquila Group or any other
Person.
Section 2.2. LICENSE FROM THE AQUILA GROUP TO THE UTILICORP GROUP.
(a) Effective as of the Separation Date, Aquila hereby grants (or
agrees to cause the appropriate member of the Aquila Group to grant) to
UtiliCorp (or such other member of the UtiliCorp Group as UtiliCorp may direct),
and UtiliCorp (or such other member of the UtiliCorp Group) hereby accepts, a
non-exclusive, world-wide, non-transferable, perpetual license to use, subject
to the rights of Third Parties, the Aquila IP.
(b) Notwithstanding anything to the contrary contained herein, the
license granted in Section 2.2(a) does not apply to any Technology or Mark other
than the Aquila IP listed on Schedule 2.2. Furthermore, and subject to Article
IV hereof, nothing in this Agreement shall be deemed to transfer title to any of
the Aquila IP to any member of the UtiliCorp Group or any other Person.
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Section 2.3. ROYALTIES. Until the Change of Control Date, the licenses
granted hereunder shall be royalty free. From and after the Change of Control
Date, Licensee shall pay Licensor royalties for the licenses granted hereunder,
such royalties to be based upon the market value of such licenses as of the
Change of Control Date, as reasonably determined by Licensor within 60 days
following the Change of Control Date.
Section 2.4. RESTRICTIONS ON USE OF MARKS. In all respects, Licensee's use
of the Marks pursuant to the license granted hereunder shall be in a manner
consistent with the high standards, reputation and prestige represented by the
Marks, and with the quality control standards reasonably imposed by Licensor in
connection with the use of any specific Mark, and any usage by Licensee that is
inconsistent with the foregoing shall be deemed to be outside the scope of the
license granted hereunder. As a condition to the license granted hereunder,
Licensee shall at all times present, position and promote its business when
using one or more of the Marks in a manner consistent with the high standards,
reputation, and prestige represented by the Marks.
Section 2.5. LICENSEE UNDERTAKINGS REGARDING MARKS. As a condition to the
licenses granted hereunder, Licensee undertakes to Licensor that:
(a) Licensee shall not use the Marks licensed to it hereunder in any
manner which is deceptive or misleading, or which compromises or reflects
unfavorably upon the goodwill, good name, reputation or image of Licensor or the
Marks, or which might jeopardize or limit Licensor's proprietary interest
therein;
(b) Licensee shall not, in respect of the Marks licensed to it
hereunder, or the use thereof, (i) misrepresent to any person the scope of its
authority under this Agreement, (ii) incur or authorize any expenses or
liabilities chargeable to Licensor, or (iii) take any actions that would impose
upon Licensor any obligation or liability to a Third Party other than
obligations under this Agreement or other obligations which Licensor expressly
approves in writing for Licensee to incur on its behalf; and
(c) All press releases and corporate advertising and promotions that
embody the Marks and the messages conveyed thereby shall be consistent with the
high standards, reputation and prestige represented by the Marks.
ARTICLE III
SUB-LICENSE OF THIRD PARTY TECHNOLOGY
Section 3.1. SUB-LICENSE FROM THE UTILICORP GROUP TO THE AQUILA GROUP.
UtiliCorp hereby agrees to use commercially reasonable efforts to sublicense or
cause to be sublicensed, and to obtain or to cause to be obtained any consent,
approval or amendment required to sublicense, the Sublicensed UtiliCorp
Technology listed on the attached Schedule 3.1 to Aquila (or such other member
of the Aquila Group as Aquila may direct) pursuant to the same or substantially
the same terms as UtiliCorp's corresponding licenses.
Section 3.3. SUB-LICENSE FROM THE AQUILA GROUP TO THE UTILICORP GROUP.
Aquila hereby agrees to use commercially reasonable efforts to sublicense or
cause to be sublicensed, and to obtain or cause to be obtained any consent,
approval or amendment required to sublicense, the Sublicensed Aquila Technology
listed on the attached Schedule 3.2 to UtiliCorp (or such other member of the
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UtiliCorp Group as UtiliCorp may direct) pursuant to the same or substantially
the same terms as Aquila's corresponding licenses.
Section 3.3. ALLOCATION OF COSTS AND FEES. All fees, costs, and expenses
incurred by the parties in connection with the sublicenses granted hereunder
shall be equitably allocated between the parties.
ARTICLE IV
TRANSFER OF CERTAIN TECHNOLOGY AND MARKS
For the avoidance of doubt, Technology and Marks owned by UtiliCorp (or
another member of the UtiliCorp Group) but used exclusively in connection with
the Aquila Business, and Technology and Marks owned by Aquila (or another member
of the Aquila Group) but used exclusively in connection with the UtiliCorp
Business, shall be Transferred in accordance with Section 1.3 of the Master
Separation Agreement.
ARTICLE V
DISCLAIMER
EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL TECHNOLOGY AND MARKS LICENSED
OR SUBLICENSED HEREUNDER ARE LICENSED OR SUBLICENSED ON AN "AS IS" BASIS, AND
THAT NEITHER PARTY NOR ANY MEMBER OF ITS GROUP MAKES ANY REPRESENTATIONS OR
EXTENDS ANY WARRANTIES WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT
THERETO, INCLUDING WITHOUT LIMITATION ANY IMPLIED WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, TITLE, ENFORCEABILITY OR NON-INFRINGEMENT.
Without limiting the generality of the foregoing, neither party nor any member
of its Group makes any warranty or representation that any manufacture, use,
importation, offer for sale or sale of any product or service will not infringe
or otherwise contravene any intellectual property right of any Third Party.
ARTICLE VI
CONFIDENTIALITY
The terms of Section 4.8 of the Master Separation Agreement shall apply to
any Confidential Information directly or indirectly disclosed under or in
connection with the performance of this Agreement.
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ARTICLE VII
LIMITATION OF LIABILITY
IN NO EVENT SHALL ANY MEMBER OF THE UTILICORP GROUP OR THE AQUILA GROUP OR
ANY OF THEIR RESPECTIVE DIRECTORS, OFFICERS, EMPLOYEES, AND AGENTS BE LIABLE TO
ANY OTHER MEMBER OF THE UTILICORP GROUP OR THE AQUILA GROUP FOR ANY SPECIAL,
CONSEQUENTIAL, INDIRECT, INCIDENTAL, OR PUNITIVE DAMAGES OR LOST PROFITS,
HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN
ANY WAY OUT OF THIS AGREEMENT, IRRESPECTIVE OF WHETHER SUCH PARTY HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES; PROVIDED, HOWEVER, THAT THE
FOREGOING LIMITATIONS SHALL NOT LIMIT EACH PARTY'S INDEMNIFICATION OBLIGATIONS,
IF ANY, FOR LIABILITIES TO THIRD PARTIES AS SET FORTH IN THIS AGREEMENT.
ARTICLE VIII
MISCELLANEOUS
Section 8.1. NO IMPLIED LICENSES. Nothing contained in this Agreement shall
be construed as conferring any rights by implication, estoppel or otherwise, to
any Technology or Marks, other than the rights expressly granted in this
Agreement. Neither party is required hereunder to furnish or disclose to the
other any technical or other information (including copies of the Technology),
except as specifically provided herein.
Section 8.2. INFRINGEMENT SUITS. Neither party shall have any obligation
hereunder to institute any action or suit against Third Parties for infringement
of any Technology or Marks licensed hereunder, or to defend any action or suit
brought by a Third Party which challenges or concerns the validity of any of
such rights or which claims that any Technology or Marks licensed hereunder
infringes any Technology or Marks of any Third Party or constitutes a
misappropriated trade secret of any Third Party. UtiliCorp shall not have any
right to institute any action or suit against Third Parties for infringement of
any Technology or Marks of Aquila (including the Aquila IP) and Aquila shall not
have any right to institute any action or suit against Third Parties for
infringement of any of the Technology or Marks of UtiliCorp (including the
UtiliCorp IP).
Section 8.3. ENTIRE AGREEMENT. This Agreement, the Master Separation
Agreement, the other Ancillary Agreements, and the Exhibits and Schedules
attached hereto and thereto, constitute the entire agreement between the parties
with respect to the subject matter hereof and thereof and shall supersede all
prior written and oral and all contemporaneous oral agreements and
understandings with respect to the subject matter hereof and thereof.
Section 8.4. GOVERNING LAW. This Agreement shall be governed and construed
and enforced in accordance with the laws of the State of Missouri as to all
matters, regardless of the laws that might otherwise govern under the principles
of conflicts of laws applicable thereto.
Section 8.5. INTERPRETATION. The headings contained in this Agreement and
the Schedules attached hereto are for reference purposes only and shall not
affect in any way the meaning or interpretation of this Agreement. When a
reference is made in this Agreement to an Article, Section
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or Schedule, such reference shall be to an Article, Section or Schedule in this
Agreement unless otherwise indicated.
Section 8.6. NOTICES. Any notice, demand, offer, request, or other
communication required or permitted to be given by either party pursuant to the
terms of this Agreement shall be in writing and shall be deemed effectively
given the earlier of (a) when received, (b) when delivered personally, (c) one
Business Day after being delivered by facsimile (with receipt of appropriate
confirmation), (d) one Business Day after being deposited with a nationally
recognized overnight courier service or (e) four Business Days after being
deposited in the U.S. mail, First Class with postage prepaid, and in each case
addressed to the attention of the other party's General Counsel at the address
of its principal executive office or such other address as a party may request
by notifying the other in writing.
Section 8.7. NONASSIGNABILITY; THIRD-PARTY BENEFICIARIES. Aquila may not,
directly or indirectly, in whole or in part, whether by operation of law or
otherwise, assign or transfer this Agreement, or any license or other rights
granted hereunder (including by sublicense), without UtiliCorp's prior written
consent, and any attempted assignment or transfer without such prior written
consent shall be voidable at the sole option of UtiliCorp. This Agreement,
including the Schedules and the other documents referred to herein, shall be
binding upon and inure to the benefit of each party hereto and their respective
legal representatives and permitted successors and assigns, and nothing in this
Agreement, express or implied, is intended to confer upon any other Person any
rights or remedies of any nature whatsoever under or by reason of this
Agreement.
Section 8.8. SEVERABILITY. If any term or other provision of this Agreement
is determined by a nonappealable decision by a court, administrative agency or
arbitrator to be invalid, illegal or incapable of being enforced by any rule of
law or public policy, all other conditions and provisions of this Agreement
shall nevertheless remain in full force and effect so long as the economic or
legal substance of the transactions contemplated hereby is not affected in any
manner materially adverse to either party. Upon such determination that any term
of other provision is invalid, illegal or incapable of being enforced, this
Agreement shall be deemed to be amended, and each party agrees to execute and
deliver such documents and instruments as are reasonably requested by the other
party to evidence such amendment, so as to effect the original intent of the
parties as closely as possible in an acceptable manner to the end that the
transactions contemplated hereby are fulfilled to the fullest extent possible.
Section 8.9. FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No
failure or delay on the part of either party hereto in the exercise of any right
hereunder shall impair such right or be construed to be a waiver of, or
acquiescence in, any breach of any representation, warranty or agreement herein,
nor shall any single or partial exercise of any such right preclude any other or
further exercise thereof or of any other right. All rights and remedies existing
under this Agreement are cumulative to, and not exclusive of, any rights or
remedies otherwise available.
Section 8.10. AMENDMENT. No change or amendment will be made to this
Agreement except by an instrument in writing signed on behalf of each of the
parties hereto.
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Section 8.11. RIGHT OF SET-OFF. UtiliCorp shall have the right at any time
and from time to time to set off and apply any and all deposits or amounts of
any member of the Aquila Group at any time held, and any and all indebtedness at
any time owing, by any member of the UtiliCorp Group to or for the credit of any
member of the Aquila Group against any and all obligations of Aquila now or
hereafter arising under this Agreement, whether or not UtiliCorp shall have made
any demand therefor.
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INTENTIONALLY LEFT BLANK
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IN WITNESS WHEREOF, the parties have signed this Intellectual Property
Cross-License and Transfer Agreement effective as of the date first set forth
above.
UTILICORP UNITED INC.
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Robert K. Green
President and Chief Operating Officer
AQUILA, INC.
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Keith G. Stamm
Chief Executive Officer
SIGNATURE PAGE TO
INTELLECTUAL PROPERTY CROSS-LICENSE AND TRANSFER AGREEMENT
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SCHEDULE 2.1
UTILICORP IP
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SCHEDULE 2.2
AQUILA IP
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SCHEDULE 3.1
SUBLICENSED UTILICORP TECHNOLOGY
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SCHEDULE 3.2
SUBLICENSED AQUILA TECHNOLOGY
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