License Agreement by T-Mobile US, Inc.

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Company: T-Mobile US, Inc.
SEC CIK: 1283699
SEC Type: EX-10.2
SIC Code: 4812
SIC Industry: RADIO TELEPHONE COMMUNICATIONS
Date Filed: 2013-05-02

Date Filed: 
05/02/2013
SKU: RDPKMD-D-459L-L
EX-10.2

Exhibit 10.2

License Agreement

between

Deutsche Telekom AG

Friedrich-Ebert-Allee 140, 53113 Bonn, Germany

– hereinafter referred to as “DT” –

and

T-Mobile US, Inc.

12920 SE 38th Street, Bellevue, WA 98006, USA

– hereinafter referred to as “the Licensee” –

– DT and the Licensee hereinafter collectively referred to

as “Parties” or individually as “Party” –

Preamble

 

(1) DT is a provider – also via subsidiary companies – in the whole area of telecommunication, information technology, multimedia, consulting and entertainment as well as the services connected with these areas and related areas in Germany and worldwide.

DT is owner of various designations. These include trademarks, domain names and company names.

DT has developed a group branding strategy with a joint corporate identity, a joint corporate design, a standardized market appearance and a standardized trademark image. Several of the designations licensed under this Agreement represent the corporate identity of the DT group of companies.

 

(2) The Licensee is a provider of wireless telecommunication, broadband and information services, including services and products connected to wireless telecommunication, broadband and information services and related areas in the Territory (as defined herein).

 

(3)

DT has a majority interest in the Licensee and it is intended that the Licensee shall offer wireless telecommunication, broadband and information, including services and products connected to wireless telecommunication, broadband and information and related areas by using DT’s trademarks, domain names and corporate identity


in the future. However, it is agreed by the Parties that DT’s trademarks and, in particular, the “T-Mobile Brand” will not be the only brand used by the Licensee and its subsidiaries.

Now, therefore in consideration of the above promises and the terms and conditions contained herein the Parties, intending to be legally bound hereby, agree as follows:

 

§1 Definitions

For the purposes of this Agreement, whenever used with capitalized initial letter, the following terms shall have the meaning assigned to them below or in any provision of this Agreement, wherein words defined in the singular form shall also apply to the plural correspondingly and vice-versa. In any event the term “including” shall mean “including, but not limited to”:

 

1.1 Agreement” shall mean this license agreement including all Annexes thereto and all future amendments and supplements on which the Parties may agree from time to time.

 

1.2 Affiliate” shall mean a legal entity which is under the applicable laws, directly or indirectly, controlling, controlled by or under joint control relative to another company, whereby “control” shall mean any of (A) direct or indirect ownership of more than 50% of the ownership interest in any other entity, (B) the right to exercise more than 50% of the voting rights in any other entity, or (C) the contractual right to designate more than half of the members of such entity’s board of directors or similar executive bodies.

 

1.3 BAC” shall have the meaning defined in § 5.11.

 

1.4 Benchmark Analysis” shall have the meaning defined in § 7.4.

 

1.5 Change of Control” shall have the meaning defined in § 14.3.

 

1.6 Confidential Information” shall have the meaning defined in § 10.1.

 

1.7 Date of the Agreement” shall have the meaning defined in § 14.1.

 

1.8 Designations” shall mean jointly the Trademarks and the Domains.

 

1.9 Domains” shall mean the Internet domain name registrations listed in Annex 2.

 

1.10 DT Sell-Down” shall have the meaning defined in § 14.3.

 

1.11 Licensed Products” shall mean all products (including their packaging) that are sold, leased, provided, used for or distributed (including through retailers, dealers, agents, data carriers and online) in connection with the Licensed Services, including (A) cellphones, smartphones, tablet PCs, personal digital assistants, portable media players and any other type of wireless devices and wireless telecommunication. broadband and information devices, (B) SIM cards for the aforementioned devices, (C) accessories for the aforementioned devices and (D) ancillary products for the aforementioned devices.

 

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1.12 Licensed Services” shall mean the marketing, selling and providing of wireless telecommunication, broadband and information services (including voice and data services) and all services ancillary thereto.

 

1.13 License Fee” shall have the meaning defined in § 7.1.

 

1.14 Negotiation Period” shall have the meaning defined in § 14.3.

 

1.15 New License Fee” shall have the meaning defined in § 7.4.

 

1.16 Revenue Report” shall have the meaning defined in § 7.2.

 

1.17 Subsidiaries” shall have the meaning defined in § 3.2.

 

1.18 Territory” shall mean the United States of America, Puerto Rico and the territories and protectorates of the United States to the extent the Trademarks in these territories and protectorates are subject to U.S. trademark law.

 

1.19 Trademarks” shall mean the trademark registrations listed in Annex 1.

 

1.20 Utilization Regulations” shall have the meaning defined in § 5.3.

 

1.21 VAT” shall have the meaning defined in § 9.1.

 

§2 License Grant

 

2.1 DT grants to the Licensee the limited, non-revocable (except as provided herein), and royalty-bearing license to use the Trademarks for the Licensed Services and the Licensed Products in the Territory, including:

 

  (A) the offering and provision of the Licensed Services under the Trademarks and the advertising for, and marketing of, the Licensed Services under the Trademarks;

 

  (B) the application of the Trademarks to the Licensed Products (putting on the market either through retailers, dealers, agents, data carriers or online as download) and the advertising for, marketing of, and using the Licensed Products under the Trademarks;

 

  (C) the use of the Trademarks as the name of Licensee’s stores and in the Licensee’s business papers; and

 

  (D) the use of the Trademarks as part of Internet domains names for websites on which the Licensed Products and Licensed Services are promoted within the Territory;

in each case, subject to the conditions provided hereinafter.

 

2.2 DT grants to the Licensee the limited, non-exclusive, non-revocable (except as provided herein), and royalty-bearing license to use the Domains as Internet addresses for websites on which the Licensed Products and Licensed Services are promoted within the Territory and in the Licensee’s business papers. The Licensee may indicate the Domains in its promotion of the Licensed Products and Licensed Services within the Territory as it is common in its business, to the extent that such use is lawful under the laws and regulations in the Territory.

 

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2.3 The licenses granted in § 2.1 shall be (A) exclusive (even as to DT) with respect to the Trademarks listed in Annex 1.1 and Domains, provided however, that DT and its Affiliates shall be permitted to grant licenses to use such Trademarks in the Territory in connection with (i) multinational sponsoring activities (e.g., sports teams apparel, but, for the avoidance of doubt, not on Licensed Products) and (ii) multinational co-operation partners provided these co-operation partners do not offer Licensed Services directly or indirectly under the Trademarks listed in Annex 1.1 in the Territory and (B) non-exclusive with respect to the Trademarks listed in Annex 1.2.

 

2.4 For the purposes of § 2.1 and § 2.2 any use of the Designations in connection with the Internet shall not be deemed use outside the Territory, provided:

 

  (A) said use does not actively target customers in countries outside the Territory (e.g., by content or choice of language, provided, however, that, for the avoidance of doubt, the Licensee may advertise in Spanish, or other languages, inside the Territory in order to target customers who speak Spanish, or such other language, inside the Territory for offerings of Licensed Products and Licensed Services delivered in the Territory); and

 

  (B) the Licensee implements technically reasonable precautions in order to ensure that customers located outside the Territory are not able to access the Licensed Products and Licensed Services (e.g., by checking the address of customers, if available, or prohibiting customers located outside the Territory from accessing the Licensed Services, provided, however, that, for the avoidance of doubt, customers located inside the Territory who are temporarily outside the Territory may use the Licensed Products and access the Licensed Services through roaming agreements with the Licensee or third party carriers).

 

2.5 In addition, DT permits the Licensee free of charge to use the trademark “T-Mobile” as a company name. DT shall not assert prohibition claims against this insofar as the trademark “T-Mobile” is used in accordance with the provisions of this Agreement.

 

2.6 Any use of the Designations by the Licensee or its sub-licensees shall inure to the benefit of DT and qualifies as use by DT for the purposes of acquiring and maintaining rights in these Designations. The Licensee is obliged to transfer to DT all rights acquired by using the Designations with effect as of the day such right came into existence. The Licensee hereby in advance transfers to DT all rights resulting from the use of the Designations, as far as legally possible. Any trademark rights resulting from such use shall become Designations as of the date they come into existence. Each Party shall notify the other about any rights arising out of the use of any Designations under this Agreement to the best of its knowledge.

 

2.7 The Parties may at any time agree on an amendment of the portfolio of licensed Designations. Such agreement has to be made in writing in order to be valid.

 

§3 Sublicenses

 

3.1 Except for the rights granted in the following § 3.2 and § 3.3 the Licensee is only entitled to assign the licenses granted herein, including individual Designations, to third parties or to grant sub-licenses and/or licenses after DT has given its prior written consent to such assignment or sub-license.

 

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3.2 The Licensee shall be entitled to enter into sub-license agreements with companies in which the Licensee holds more than 50% of the shares and the voting rights (“Subsidiaries”). Any sub-licensing by the Licensee to a Subsidiary shall only be effective if (A) the Licensee imposes on the respective Subsidiary its obligations vis-à-vis DT under this Agreement, and (B) the sub-license agreement provides that the sub-license terminates automatically if this Agreement is terminated, and (C) the respective agreement with the Subsidiary directly authorises DT as third-party beneficiary to enforce all claims of the Licensee against the Subsidiary (provided however that DT first attempts to enforce such claim against the Licensee as described below), and (D) the Licensee shall cause compliance by the sub-licensee with the contractual obligations by contractual provisions and contract management, and (E) the Licensee provides a copy of any such sub-licensing agreements to DT immediately after execution for information. Before DT asserts the rights granted to it vis-à-vis the sub-licensee against the sub-licensee, DT will notify the Licensee and attempt to assert such rights against the Licensee, taking into consideration the Licensee’s interests and any further proceedings, for a period of 30 days. If DT and the Licensee are unable to resolve DT’s claim after such period of time, then DT may assert such rights against the sub-licensee. DT shall provide copies to the Licensee of all correspondence between DT and a sub-licensee simultaneously with DT’s correspondence with a sub-licensee.

 

3.3 The Licensee shall be entitled to enter into sub-license agreements with affiliated and non-affiliated companies which offer Licensed Services and Licensed Products on the basis of the Principles for Sub-license Agreements with distribution partners set out in Annex 3.

 

§4 Quality requirements and quality control

 

4.1 The Licensee shall use the Designations only to mark Licensed Services and Licensed Products conforming to the usual market standards for wireless telecommunication, broadband and information providers in the Territory and the Utilization Regulations (as described in § 5.3). The Utilization Regulations result from the guidelines and documentation as provided by the responsible departments and committees of DT or by the committees formed of representatives of different companies of DT Group and employed by DT for this purpose. If no Utilization Regulations are provided by DT, the Licensee is obliged to use as its quality standard similar products or services by national providers of wireless telecommunication, broadband and information services and products. If the Licensee is uncertain as to whether a specific product or service meets the above-mentioned Utilization Regulations, the Licensee shall obtain DT’s binding opinion on the matter. For products that the Licensee obtains from DT, it is assumed that the above-mentioned Utilization Regulations are met.

 

4.2

For quality control purposes, the Licensee shall inform DT at reasonable intervals upon DT’s request regarding the Licensee’s current portfolio of Licensed Products and Licensed Services, which are bearing or offered under the Designations, and shall provide samples of Licensed Products free of charge in a quantity necessary for verification, as well as a representative sample of the contents of the Licensed

 

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  Services. If DT does not object to the quality of the Licensed Products or Licensed Services concerned within 14 days of receipt of the representative samples of the Licensed Products or Licensed Services, the quality requirements specified in § 4.1 shall be deemed fulfilled in respect of these samples. The obligation to send samples shall not apply to products that the Licensee obtains from DT, or that were previously checked by DT. For the purposes of quality control, DT is entitled to enter all premises of the Licensee upon prior written notice, during normal business hours and in a manner that does not disrupt Licensee’s business operations, to check compliance with the quality requirements specified in § 4.1. DT shall cause the DT representatives to adhere to, whenever on the Licensee’s premises, all applicable Licensee rules, regulations and policies.

 

§5 Use of the Designations

 

5.1 The Licensee shall use the Designations only as registered. For any use of the Designations, the Licensee has to make a statement, as far as is reasonable, that they are registered trademarks or corresponding other designations of DT, if this is necessary in order to:

 

  (A) meet the legal requirements in force for the respective Designation (if the law prescribes such an indication), or

 

  (B)

maintain legal protection of the trademark in accordance with the applicable law for the respective Designation, or to make this protection more efficient, wherein for such purposes the Licensee may use the Trademarks in connection with the symbol ® instead of such statement where this is sufficient under the law in the applicable Territory to maintain the legal protection of the respective Designations.

If the Licensee is using Designations as Internet domain names, it is sufficient to make the required statement on the associated website. DT can waive the Licensee’s obligation set forth in this § 5.1 in writing.

 

5.2 The Licensee shall not use the Designations in any manner that is inaccurate, distasteful, or that disparages DT or any Affiliate of DT. In particular, the Licensee shall not use the Designations in connection with any content which is pornographic, racist, glorifying violence or which contains political statements.

 

5.3

The Licensee shall comply with the guidelines on the use of the Designations published by DT and enclosed as Annex 4 (the “Utilization Regulations”). The version of the Utilization Regulations that is valid at the signing of the Agreement is set forth in Annex 4. Otherwise, the respective current Utilization Regulations are available electronically in the CI-Net of DT’s intranet and DT shall provide the Licensee access to such Utilization Regulations. DT is free to change the Utilization Regulations at any time and to any extent, including issuing new guidelines on the use, graphical representation and approval process for the Designations, upon notice to the Licensee. Changes to the Utilization Regulations shall become effective 90 days after transmission of a new version of the Utilization Regulations to the Licensee (provided DT indicates the changes made to the previous version of the Utilization Regulations by the new version of the Utilization Regulations) or, if the Parties agree on the new version of the Utilization Regulations, with immediate effect following agreement by the Parties. For materials that have already been produced (i.e., Licensed Products or advertising materials) the Licensee may continue to use such Licensed Products perpetually and such advertising materials

 

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  for a transitional use-up period of 180 days after the new version of the Utilization Regulations become effective, provided that such materials comply with the Utilization Regulations applicable to the Designations at the time the materials were produced.

 

5.4 Where applicable, the Licensee is—insofar as TV advertising campaigns (which shall include

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