EXHIBIT 10.5
TRADEMARK LICENSE AGREEMENT
TRADEMARK LICENSE AGREEMENT, dated as of July 25, 1997 (this
"Agreement"), between and among NextLevel Systems, Inc., a Delaware corporation
("NextLevel Systems"), CommScope, Inc., a Delaware corporation ("CommScope"),
and General Semiconductor, Inc., a Delaware corporation ("GS").
RECITALS
WHEREAS, General Instrument Corporation, a Delaware corporation
("GI"), is being separated and divided into three separate and independent
public companies and, in order to effectuate the separation, (a) GI intends to
distribute (the "Next Level Systems Distribution"), as a dividend to the holders
of shares of common stock, par value $.01 per share, of GI, shares of common
stock, par value $.01 per share, of NextLevel Systems (the "NextLevel Systems
Common Stock") and (b) NextLevel Systems intends to distribute, following the
NextLevel Systems Distribution, as a dividend to the holders of NextLevel
Systems Common Stock, shares of common stock, par value $.01 per share of
CommScope (the "CommScope Distribution"; and, together with the NextLevel
Systems Distribution, the "Distributions");
WHEREAS, the Distributions will be effected pursuant to a
Distribution Agreement, dated as of June 12, 1997 (the "Distribution
Agreement"), among NextLevel Systems, CommScope and GI;
WHEREAS, the NextLevel Systems Distribution is becoming effective as
of the date hereof (the "NextLevel Systems Distribution Date");
WHEREAS, NextLevel Systems, as a result of the NextLevel Systems
Distribution, is the owner of all right, title and interest in and to the GI
Trademarks (as hereinafter defined);
WHEREAS, NextLevel Systems desires to license to both CommScope and
GS the use of the GI Trademarks for limited purposes for a transitional period
of time after the NextLevel Systems Distribution Date to avoid operating
inefficiencies and unnecessary expense, and CommScope and GS desire to take such
license for said purposes; and
WHEREAS, the parties hereto have determined that this Agreement is
appropriate in order to effectuate the purposes of the Distribution Agreement as
described therein.
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NOW, THEREFORE, in consideration of the mutual agreements,
undertakings and covenants herein and therein, the sufficiency of which is
hereby acknowledged, the parties hereby agree as follows:
ARTICLE I. DEFINITIONS
Section 1.01 General. As used in this Agreement, the following terms
shall have the following meanings (such meanings to be equally applicable to
both the singular and plural forms of the terms defined):
"Agreement" shall have the meaning specified in the first paragraph
hereof.
"Ancillary Agreements" shall have the meaning as set forth in the
Distribution Agreement.
"CommScope Distribution" shall have the meaning specified in the
recitals to this Agreement.
"Distributions" shall have the meaning specified in the recitals to
this Agreement.
"Distribution Agreement" shall have the meaning specified in the
recitals to this Agreement.
"GI Trademarks" shall mean GENERAL INSTRUMENT, the logo "GI", and
all other trademarks, service marks, and trade names containing "General
Instrument" or variations thereof, along with their respective applications and
registrations wherever used or registered and the goodwill associated therewith.
"NextLevel Systems Common Stock" shall have the meaning specified in
the recitals to this Agreement.
"NextLevel Systems Distribution" shall have the meaning specified in
the recitals to this Agreement.
"NextLevel Systems Distribution Date" shall have the meaning
specified in the recitals to this Agreement.
"Notice" shall have the meaning specified in Section 4.03 hereof.
"Subsidiary", with respect to any party, shall mean any corporation,
partnership, joint venture or other entity of which such party, directly or
indirectly, owns an interest sufficient to elect a majority of the board of
directors (or persons performing
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similar functions) (irrespective of whether at the time any other class or
classes of ownership interests of such corporation, partnership or other entity
shall or might have such voting power upon the occurrence of any contingency).
"Transition Period" shall have the meaning specified in Section
2.01(a) hereof.
ARTICLE II. GI TRADEMARKS LICENSE
Section 2.01 Subject to the terms and conditions of this Agreement,
NextLevel Systems hereby grants to each of CommScope and GS a limited,
non-assignable, worldwide, non-exclusive, royalty-free license, without right to
grant sublicenses (except to Subsidiaries of each of CommScope or GS, as the
case may be), to use the GI Trademarks and the goodwill appurtenant thereto, as
follows:
(a) For a period of up to 12 months (the "Transition Period")
following the NextLevel Systems Distribution Date, each of CommScope and GS and
their respective Subsidiaries shall be entitled to use and/or sell its existing
parts and products which have imprinted thereon the GI Trademarks to the extent
that such parts and products were existing inventory (or had been sold by GI)
prior to the NextLevel Systems Distribution Date. From and after the NextLevel
Systems Distribution Date, CommScope, GS and their respective Subsidiaries shall
not print or manufacture any new parts or products bearing the GI Trademarks.
Each of CommScope, GS and their respective Subsidiaries shall cease using and/or
selling any parts and products bearing the GI Trademarks as soon as practicable
but in no event later than the end of the Transition Period.
(b) For the Transition Period, each of CommScope and GS and their
respective Subsidiaries shall be entitled to use the GI Trademarks on existing
signs, stationery, displays or other identification or advertising material to
the extent that such signs, stationery, displays or other identification or
advertising material were existing prior to the NextLevel Systems Distribution
Date. From and after the NextLevel Systems Distribution Date, CommScope, GS and
their respective Subsidiaries shall not prepare, print or install any new signs,
stationery, displays or other identification or advertising material bearing the
GI Trademarks. Each of CommScope, GS and their respective Subsidiaries shall
remove any and all references to the GI Trademarks from any and all signs,
stationery, displays or other identification or advertising material as soon as
practicable but in no event later than the end of the Transition Period.
Section 2.02 Each of CommScope and GS, when using the GI Trademarks
under this Agreement, undertakes to comply substantially with all laws
pertaining to
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the GI Trademarks. This provision includes compliance with marking requirements.
Each of CommScope and GS represents and warrants that all goods and services to
be sold under the GI Trademarks and the marketing, sales, and distribution of
them shall meet or exceed all federal, state, and local laws, ordinances,
standards, regulations, and guidelines pertaining to such products or
activities, including, but not limited to, those pertaining to product safety,
quality, labeling and propriety. Each of CommScope and GS agrees that it will
not package, market, sell, or distribute any goods or services or cause or
permit any goods or services to be packaged, marketed, sold, or distributed in
violation of any such federal, state, or local law, ordinance, standard,
regulation, or guideline.
Section 2.03 The GI Trademarks license granted herein is for the
sole purpose of assisting each of CommScope and GS to effectuate the purposes of
the Distribution Agreement as described therein and is not assignable or
transferable in any manner whatsoever.
Section 2.04 Any and all goodwill arising from CommScope's or GS's
use of the GI Trademarks shall inure solely to the benefit of NextLevel Systems,
and neither CommScope nor GS shall assert any claims to the GI Trademarks or
such goodwill. Neither CommScope nor GS shall, at any time, do or suffer to be
done any act or thing which in any way adversely affects any rights in and to
the GI Trademarks or any goodwill associated therewith or which reduces the
value of the GI Trademarks or detracts from their reputation.
Section 2.05 (a) The GI Trademarks license granted herein to
CommScope may be terminated by NextLevel Systems at any time, at NextLevel
Systems' option, in the event of a material breach of any term of this Article
II by CommScope, upon written Notice to CommScope.
(b) The GI Trademarks license granted herein to GS may be terminated
by NextLevel Systems at any time, at NextLevel Systems' option, in the event of
a material breach of any term of this Article II by GS, upon written Notice to
GS.
Section 2.06 Upon termination under Section 2.05 of the GI
Trademarks license granted herein, or expiration of the time periods set forth
in Section 2.01, (a) CommScope and GS's rights, as applicable, with respect to
use of the GI Trademarks in any way shall be as if this Agreement had not been
entered into and (b) CommScope and GS, as applicable, shall cease using the GI
Trademarks immediately in all ways. In addition, CommScope and GS, as
applicable, will destroy all documents and materials bearing the GI Trademarks
and will certify to NextLevel Systems that it has done so. CommScope and GS will
not at any time adopt or use without NextLevel Systems' prior
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written consent, any word or mark which is likely to be similar to or confusing
with the GI Trademarks.
Section 2.07 Each of CommScope and GS hereby acknowledge NextLevel
Systems' exclusive right, title and interest in and to the GI Trademarks and
agree that it will not at any time do or cause to be done any act or thing
contesting or in any way impairing any part or all of such right, title and
interest. CommScope and GS agree that they shall not in any manner represent
that they have any ownership in the GI Trademarks or registrations thereof and
hereby acknowledge that use of the GI Trademarks will inure to the benefit of
NextLevel Systems.
ARTICLE III. UNDERTAKINGS
Section 3.01 To the extent that the grants of the GI Trademarks
licenses under Article II herein would violate or be prohibited by any agreement
with a third party, and such GI Trademarks are actually used by the grantee
party, then the granting party undertakes to use reasonable efforts to obtain
the necessary consent(s) from such third party so as to be permitted to make
such grants. However, each party hereto understands and agrees that no party
hereto is, in this Agreement or in any other agreement or document contemplated
by this Agreement or otherwise, representing or warranting in any way that the
obtaining of any consents or approvals, the execution and delivery of any
amendatory agreements and the making of any filings or applications, possibly
contemplated by this Agreement will satisfy the provisions of any and all
applicable agreements or the requirements of any or all applicable laws or
judgments.
ARTICLE IV. MISCELLANEOUS
Section 4.01 Entire Agreement. This Agreement, together with the
Distribution Agreement and the Ancillary Agreements (as defined in the
Distribution Agreement) constitute the entire agreement and understanding
between and among the parties with respect to the subject matter hereof and
shall supersede any prior agreements and understandings among the parties with
respect to such subject matter.
Section 4.02 Counterparts. This Agreement may be executed with
counterpart signature pages or in one or more counterparts, all of which shall
be one and the same Agreement, and shall become effective when one or more
counterparts have been signed by each of the parties and delivered to all the
parties.
Section 4.03 Notices. All notices, consents, requests, waivers or
other communications required or permitted under this Agreement (each a
"Notice") shall be in writing and shall be sufficiently given (a) if hand
delivered or sent by telecopy, (b) if sent
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by nationally recognized overnight courier, or (c) if sent by registered or
certified mail, postage prepaid, return receipt requested, and in each case
addressed as follows:
If to NextLevel Systems, to: NextLevel Systems, Inc.
8770 West Bryn Mawr Avenue
Chicago, Illinois 60631
Attn: General Counsel
If to CommScope, to: CommScope, Inc.
1375 Lenoir-Rhyne Boulevard
Hickory, North Carolina 28601
Attn: General Counsel
If to GS, to: General Semiconductor, Inc.
10 Melville Park Road
Melville, New York 11747-3113
Attn: General Counsel
or such other address as shall be furnished by any of the parties in a Notice.
Any Notice shall be deemed given upon receipt.
Section 4.04 Waivers. The failure of any party to require strict
performance by any other party of any provision in this Agreement will not waive
or diminish the first party's right to demand strict performance thereafter of
that or any other provision hereof.
Section 4.05 Amendments. This Agreement may be amended, supplemented
or waived only by a subsequent writing signed by each of the parties.
Section 4.06 Assignment. This Agreement may not be assigned by any
party without the consent of the other parties.
Section 4.07 Successors and Assigns. All terms and conditions of
this Agreement shall be binding upon and inure to the benefit of and be
enforceable by the successors and permitted assigns of the parties.
Section 4.08 Subsidiaries. Each of the parties hereto shall cause to
be performed, and hereby guarantees the performance of, all actions, agreements
and obligations set forth herein to be performed by any Subsidiary of such party
or by any
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entity that becomes a Subsidiary of such party on and after the NextLevel
Systems Distribution Date.
Section 4.09 Third Party Beneficiaries. Each party intends that this
Agreement shall not benefit or create any right or cause of action in or on
behalf of any person other than the parties hereto.
Section 4.10 Specific Performance. Each of the parties hereto
acknowledges that there is no adequate remedy at law for failure by such parties
to comply with the provisions of this Agreement and that such failure would
cause immediate harm that would not be adequately compensable in damages, and
therefore agree that their agreements contained herein may be specifically
enforced without the requirement of posting a bond or other security, in
addition to all other remedies available to the parties hereto under this
Agreement.
Section 4.11 Governing Law. THIS AGREEMENT SHALL BE GOVERNED BY, AND
CONSTRUED AND ENFORCED IN ACCORDANCE WITH, THE LAW OF THE STATE OF NEW YORK
WITHOUT REGARD TO THE PRINCIPLES OF CONFLICTS OF LAWS THEREUNDER.
Section 4.12 Interpretation. The parties intend that the
Distributions shall be tax-free pursuant to the Internal Revenue Code of 1986,
as amended, so that no gain or loss shall be recognized for Federal income tax
purposes as a result of the transaction, and all provisions of this Agreement
shall be so interpreted.
Section 4.13 Severability. If any provision of this Agreement or the
application thereof to any person or circumstance is determined by a court of
competent jurisdiction to be invalid, void or unenforceable, the remaining
provisions hereof, or the application of such provision to persons or
circumstances other than those as to which it has been held invalid or
unenforceable, shall remain in full force and effect and in no way be affected,
impaired or invalidated thereby, so long as the economic or legal substance of
the transaction contemplated hereby is not affected in any manner adverse to any
party.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
duly executed as of the day and year first above written.
GENERAL SEMICONDUCTOR, INC.
By: /s/ Ronald A. Ostertag
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Name: Ronald A. Ostertag
Title: Chairman, CEO & President
NEXTLEVEL SYSTEMS, INC.
By: /s/ Keith A. Zar
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Name: Keith A. Zar
Title: Vice President and General Counsel
COMMSCOPE, INC.
By: /s/ Frank B. Wyatt, II
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Name: Frank B. Wyatt, II
Title: Secretary