exv10w3



 






Exhibit 10.3



IMN TRADEMARK LICENSE AGREEMENT




     This IMN Trademark License Agreement (this “Agreement”) is made as of July 31, 2007, by and
between IMN Data Storage Holdings C.V., a Dutch private limited partnership (“Licensee”), and TDK
Corporation, a Japanese corporation (“Licensor”).



RECITALS




     WHEREAS, the Licensor and Imation Corp. (“Imation”), are parties to an Acquisition Agreement,
dated April 19, 2007 (the “Acquisition Agreement”) and a Supply Agreement, dated July 31, 2007 (the
“Supply Agreement”);



     WHEREAS, Licensee wishes to license from Licensor the right to use the Licensed Trademarks in
the Territory (as defined below) on and in connection with Licensee’s marketing, promotion,
distribution and sale of the Licensed Products (as defined below) and Licensor has agreed to
license to Licensee the Licensed Trademarks for such purposes, subject to the terms and conditions
hereof;



     WHEREAS, Licensor and Licensee’s parent company, Imation, have entered into a similar
Trademark License Agreement as of the date hereof in which Imation will license from Licensor the
right to use the Licensed Trademarks in the United States on and in connection with its marketing,
promotion, distribution and sale of the Licensed Products (the “Imation Agreement”);



     NOW, THEREFORE, in consideration of the mutual promises and covenants set forth herein, the
parties hereto agree as follows:



ARTICLE I




DEFINITIONS




     1.1 Certain Definitions. Capitalized terms used in this Agreement have the meanings set forth
in Exhibit B.



     1.2 Interpretation. Unless otherwise indicated to the contrary in this Agreement by the
context or use thereof: (a) the words “herein,” “hereto,” “hereof” and words of similar import
refer to this Agreement as a whole and not to any particular Section, Article or paragraph hereof;
(b) references in this Agreement to Sections, Articles or paragraphs refer to sections, articles or
paragraphs of this Agreement; (c) headings of Sections are provided for convenience only and shall
not affect the construction or interpretation of this Agreement; (d) words importing the masculine
gender shall also include the feminine and neutral genders, and vice versa; (e) words importing the
singular shall also include the plural, and vice versa; (f) the words





 




			
	**	 	The appearance of a double asterisk denotes confidential information that has been omitted from
the exhibit and filed separately, accompanied by a confidential treatment request, with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934.





1









 





     1.3 “include”, “includes” and “including” shall be deemed to be followed in each case by the
phrase “without limitation”; (g) any reference to a statute refers to the statute, any amendments
or successor legislation, and all regulations promulgated under or implementing the statute, as in
effect from time to time; (h) any reference to an agreement, contract or other document as of a
given date means the agreement, contract or other document as amended, supplemented and modified
from time to time through such date; (i) “$” and “Dollars” mean the lawful currency of the United
States of America and any threshold set in Dollars herein shall be deemed to refer to the
equivalent amount in any other currency, as the context may require; and (j) “or” shall include the
meanings “either” or “both”.



ARTICLE II




LICENSE




     2.1 Trademark License Grant. Subject to compliance with the terms and conditions of this
Agreement, Licensor hereby grants to Licensee a non-transferable, non-sublicensable (except as set
forth in Section 2.5), exclusive and restricted license in the Territory, during the terms
set forth below, to use, reproduce and display the Licensed Trademarks solely for the marketing,
promotion, advertisement, distribution, lease or sale of Licensed Products. For the avoidance of
doubt, all references in this Agreement to Licensee’s use, reproduction or display of a Licensed
Trademark shall be deemed to be restricted to the Territory. For the further avoidance of doubt,
Licensor retains no right to use, reproduce or display the TDK word mark, the Diamond Design, the
TDK Diamond Logo consisting of the TDK word mark and the Diamond Design, all shown on Exhibit
A (individually, a “TDK Mark” and collectively, “TDK Marks”), the Licensed Trademarks, or any
Trademarks that are confusingly similar to the Licensed Trademarks or any element thereof for the
marketing, promotion, advertisement, distribution, lease or sale of any Licensed Product for so
long as the license granted hereunder for such Licensed Product is in effect. Notwithstanding the
foregoing, Licensee acknowledges that the Licensed Products do not include Medical Data Recording
Media or Specific Broadcast Media and that Licensor reserves all worldwide rights to use,
reproduce, and display any Trademark (including the TDK Marks) but not the Licensed Trademarks for
the marketing, promotion, advertisement, distribution, lease or sale of Medical Image Data
Recording Media and Specific Broadcast Media, and to grant rights to others to do the same. All
rights of Licensor in and to the Licensed Trademarks not expressly granted under this Article
II are reserved by Licensor. The term of license grants are as set forth below:



          (a) Core Products; Accessory Products: The term of the license for use of the
Licensed Trademarks in connection with Core Products and Accessory Products shall be for the term
of this Agreement.



          (b) Speaker Products and Headphone Products: The term of the license for use of the
Licensed Trademarks in connection with Speaker Products and Headphone Products shall be ten (10)
years from the Effective Date.



          (c) RRM Products: The term of the license for use of the Licensed Trademarks in
connection with any RRM Product approved pursuant to the provisions of Article IV of the
Imation Agreement shall be ten (10) years from the date of Licensor’s approval



2









 







of the inclusion of such RRM Product within the scope of this Agreement as set forth in
Article IV of the Imation Agreement.



     2.2 Use-Up Rights for TDK Marks. Licensee shall have the right, in the Territory, to (a) sell
or otherwise dispose of any Licensed Products that bear a TDK Mark transferred as of the Effective
Date in accordance with the terms of the Acquisition Agreement, and (b) use existing stocks of
packaging, Promotional Material, and other documents and materials that bear a TDK Mark,
transferred as of the Effective Date in accordance with the terms of the Acquisition Agreement, in
connection with such sales or other dispositions, in each case for up to one (1) year after the
Effective Date, provided that Licensee shall seek to migrate all sales and use of materials to the
Licensed Trademarks as promptly as reasonably practicable, consistent with business requirements,
over such period.



     2.3 Product Sites; Linking Agreement. Licensee may maintain websites exclusively for the
purpose of promoting Licensed Products in the Territory as set forth in this Agreement (each a
“Product Site”).



          (a) The home page and each page of a Product Site that contains other legal notices shall
contain the following statement: “The TDK LIFE ON RECORD Logo is used under a trademark license
from [Licensor.]” Each page of a Product Site shall either identify Licensee or display Licensee’s
standard copyright notice in Licensee’s name. During the term of the Agreement, Licensor grants to
Licensee a non-transferable, non-sublicensable (except as set forth in Section 2.5),
worldwide, exclusive and restricted license to (i) use the Additional Licensed Domain Names (as
defined in subsection (d) below) for corresponding Product Sites, and (ii) refer to the related
URLs on Licensed Products and on their packaging or Promotional Material.



          (b) Licensee shall maintain each Product Site (including maintaining the servers for such
sites) at its own expense. Subject to Licensor’s rights to take actions necessary to require
Licensee to comply with this Agreement or the Quality Guidelines, Licensor shall not impede, deny,
or otherwise restrict Licensee’s access to or ability to maintain each Product Site or
corresponding email addresses. The “About Imation,” “Contact Us” or equivalent section of each
Product Site shall be reasonably prominent and shall identify Licensee as the contact and shall
contain the following statement: “The products described on this site are made by or on behalf of
[Licensee] and use of the TDK LIFE ON RECORD Logo is pursuant to a trademark license from
[Licensor].” Licensee shall promptly notify Licensor in writing when it ceases to maintain a
Product Site and Licensor shall have the right to immediately terminate Licensee’s license to use
the corresponding domain name at that time.



          (c) Each Product Site shall be deemed to be “Promotional Material” for all purposes hereof,
and shall be subject to the terms and conditions applicable to Promotional Material under this
Agreement. Without limiting the generality of the foregoing, Licensee shall (i) not display or use
a Link in a manner that causes either the Licensor or a Product Site or any portion of its content
to be associated with any advertising or sponsorship not part of such Sites; (ii) not display or
use a Link in a manner that could cause confusion, mistake, or deception; (iii) display disclaimers
on the Product Site pursuant to the Quality Guidelines; and (iv) maintain



3









 







and enforce terms of use and other policies applicable to the Product Site that are
commercially reasonable.



          (d) Licensor has agreed that Licensee may use “tdk-media.XXX” domain names listed on
Exhibit H (“Additional Licensed Domain Names”) for Product Sites in accordance with the
terms of this Agreement. Licensee shall register the Additional Licensed Domain Names in
Licensor’s name and bear all expenses associated with such registrations. Licensor may, upon
Licensee’s request and at Licensee’s expense, provide Licensee with support reasonably requested in
registering and maintaining the Additional Licensed Domain Name. Notwithstanding the
foregoing, if an applicable law or regulation of any domain name registration entity or registry
(“Domain Name Regulation”) does not permit registration of a particular Additional Licensed Domain
Name in Licensor’s name in a particular country for any reason (e.g., the Domain Name Regulation
does not permit registration of more than one domain name in the name of Licensor), all rights
Licensor has granted to Licensee for such Additional Licensed Domain Name shall terminate, Licensee
shall not seek to register such Additional Licensed Domain Name, and Licensor shall have no other
obligation as to such Additional Licensed Domain Name. Further, if a Domain Name Regulation limits
in any way Licensor’s ability to register a domain name, such as a domain name having the same
parent domain name (e.g., “co.jp”) or incorporating the word “TDK,” in the name of Licensor because
Licensee has registered an Additional Licensed Domain Name in such country, all rights that
Licensor has granted to Licensee to such Additional Licensed Domain Name in such country shall
terminate and Licensee shall immediately terminate Licensee’s registration for such Additional
Licensed Domain Name in such country and take any other action that Licensor shall reasonably
requests in connection with Licensor’s efforts to register such domain name in such country. If
any of the Additional Licensed Domain Names are registered by a third party, Licensor shall bear no
obligation to take any action to protest or cancel such third party’s registration or obtain such
registrations. If an Additional Licensed Domain Name or similar domain names are registered by a
third party, and Licensee reasonably believes that such registration could adversely affect
Licensee’s business, Licensee may request in writing that Licensor seek to cancel such
registration. Licensor shall have the right in its sole discretion to determine whether to seek
such cancellation. If Licensor decides to proceed with the cancellation action, Licensor shall
bear the costs and expenses associated with such action. If Licensor decides not to proceed with
the cancellation action, and agrees (in its sole discretion) to permit Licensee to proceed with the
cancellation action, Licensee may proceed with the cancellation action. In such case, Licensee
shall bear all costs and expenses associated with such action. Licensor may, upon Licensee’s
request and at Licensee’s expense, provide Licensee with support reasonably requested by Licensee
in such cancellation action. If a Domain Name Regulation does not permit registration of a
particular Additional Licensed Domain Name or limits Licensor’s ability to register a domain name
in light of a previously registered Additional Licensed Domain Name, Licensee may propose an
alternative (which must begin with “tdk-media.”). Licensor shall have sole discretion to decide
whether to agree to allow Licensee to register the alternative.



          (e) At Licensor’s reasonable request, the Strategic Relationship Committee shall meet and
consider in good faith what action, if any, should be taken (including modifications to the Product
Site) in light of the frequency and history of any third party claims against Licensor or any of
its Affiliates where a basis, in whole or in part, for involving Licensor relates in any way to the
Product Site or any other Promotional Material.



4









 





     2.4 Patent License. Licensor hereby grants to Licensee a royalty-free, non-transferable,
nonsublicenseable (except as set forth in Section 2.5) non-exclusive license (not including
manufacturing or have made rights) in the Territory under any patents of Licensor or its Affiliates
that, as of the Effective Date, Licensor has the right to grant licenses without payments to third
parties, for the marketing, distribution, or sales of Current Magnetic Tape Products and Current
Optical Media Products which, in both cases, Licensor or Licensee has commercialized as of the
Effective Date, provided that if Licensee or any of its Affiliates asserts a patent against
Licensor or any of its Affiliates, the license shall terminate and further provided that Licensee
and its Affiliates shall not sue Licensor or any of its Affiliates for damages arising before
termination of the license. If the patent license terminates under this Agreement, it shall
automatically terminate under the Imation Agreement.



     2.5 Sublicenses to Qualified Entities. Licensee shall have the right to grant sublicenses of
its rights under Sections 2.1, 2.3, 2.4 and 2.12(b) only to
Qualified Entities. Licensee may grant Imation Europe BV (“BV”) the right to grant further
sublicenses to, and only to, Qualified Entities. Licensee shall not have any rights to grant any
other Qualified Entities the right to grant further sublicenses. Prior to, and as a condition to
the effectiveness of, any sublicense to a Qualified Entity pursuant to the preceding, the Qualified
Entity shall enter into an agreement that contains, at a minimum, the provisions in the form of
attached Exhibit G(I) or Exhibit G(II) as appropriate (a “Sublicense Agreement”),
whereby the Qualified Entity (a) acknowledges receipt of a copy of this Agreement, (b) agrees to
act in accordance with the terms and conditions of this Agreement, and (c) expressly confirms that
Licensor is an intended third party beneficiary thereof. Licensee will promptly notify Licensor of
the execution of each Sublicense Agreement (whether with Licensee or BV), and provide Licensor with
a copy of such executed Sublicense Agreement. When an entity ceases to be a Qualified Entity, the
sublicense rights to that entity shall immediately and automatically terminate without the further
act of any party. For purposes of clarification, if BV ceases to be a Qualified Entity, any
sublicense rights of BV (and any further sublicenses granted by BV) shall immediately and
automatically terminate without the further act of any party.



     2.6 Restrictions. As an express condition to, and in material consideration for, the
licenses granted to Licensee hereunder, Licensee expressly agrees to the following restrictions as
to its use of the Licensed Trademarks:



          (a) Licensee shall not do anything inconsistent with Licensor’s ownership of the Licensed
Trademarks. Without limiting the generality of the foregoing, Licensee shall not challenge the
validity of any Licensed Trademark, Licensor’s ownership thereof, or the enforceability of
Licensor’s rights therein.



          (b) Licensee shall not use, reproduce or display (or authorize the use, reproduction or
display of) the Licensed Trademarks in any manner whatsoever other than as expressly authorized by
this Agreement.



          (c) Except as expressly permitted by Section 2.2, during the term and after any
termination of this Agreement, Licensee shall not use any service mark, service name, trade name,
trademark, design or logo that is confusingly similar to any Licensed Trademark or any element
thereof, including any mark, word or design that incorporates the word “TDK” or the



5









 







TDK diamond logo, or any mark, word, logo or design confusingly similar thereto. Without
limiting the generality of the foregoing, during the term and after any termination of this
Agreement, Licensee shall not use the word “TDK” or the TDK diamond logo in any corporate name or
in any domain name, other than as permitted in Section 2.3. For the avoidance of doubt, to
the extent that an element of a Licensed Trademark (but in no event a TDK Mark) is expressly
disclaimed in a trademark registration (such as “mobile” in TDK MOBILE), Licensee shall not be
prohibited from using such element in its own Trademarks by the terms hereof.



          (d) Except for existing inventory of Licensed Products or existing stocks of packaging,
Promotional Material, and other documents and materials that bear a TDK Mark that Licensee is
permitted to use pursuant to Section 2.2 (which shall be used in the form transferred as of
the Effective Date, without alteration), Licensee shall not use any of the Licensed Trademarks
together, or use any Licensed Trademark in combination with any other trademark, service mark,
trade name, trading style, fictitious business name, name, character, symbol, design, likeness or
literary or artistic material in a manner that create a unitary or combination Trademark without
the prior written consent of Licensor. Notwithstanding the foregoing, Licensee may use (i) any
Licensed Trademarks together if Licensor has a general practice of using such Licensed Trademarks
together and (ii) any Trademarks assigned to Licensee by Licensor pursuant to the Acquisition
Agreement with the Licensed Trademarks, but not in a manner that might create a unitary or
combination Trademark.



          (e) For a period that runs for one (1) year prior to the expiration of the separate licenses
for the Speaker Products and Headphone Products and for each RRM Product approved pursuant to
Article IV of the Imation Agreement, and for a period that runs for one (1) year prior to
the termination of the Agreement for the Core Products and Accessory Products, Licensee may Display
one or more Licensee Trademarks on or in connection with the Licensed Products as part of a
transition plan (which, at a minimum, includes provisions regarding how the Trademarks will be used
together) mutually agreed by the parties, in advance of the applicable transition period, provided
that such Display shall not create a unitary or combination Trademark.



          (f) Licensee shall not register any Licensed Trademark, and Licensor shall retain the
exclusive right to apply for and obtain registrations for each Licensed Trademark throughout the
Territory (although Licensee may request registrations, and make registrations in Licensor’s name,
under certain circumstances, as set forth in Section 2.8). Licensee shall not register any
domain name containing the word [TDK].



          (g) Licensee shall not assert any adverse claim against Licensor based upon Licensor’s use of
any Licensed Trademark (other than a claim for breach of contract based on the exclusivity
provisions of this Agreement or the non-competition provisions of the Acquisition Agreement).



     2.7 Notice. In connection with the use of the Licensed Trademarks on packaging or Promotional
Material for the Licensed Products, Licensee shall include a trademark notice in a form reading:
“The [TDK LIFE ON RECORD Logo] is a trademark of [Licensor],” except that Licensee may use the
typed words “TDK Logo” instead of the actual logo where the notice would be too small to show the
actual logo clearly or where the notice is embedded within other



6









 







text. Further, with respect to any Licensed Product other than Core Products or Accessory
Products, Licensee shall indicate when using a Licensed Trademark on packaging or Promotional
Material for such product that “The [TDK LIFE ON RECORD Logo] is used under a trademark license
from [Licensor],” subject to the same exception as the previous sentence. Subject to Section
2.3, if a Licensed Trademark is used multiple times on or in packaging or Promotional Material,
the notice and statement regarding licensed use need only be used for the first prominent use of
the Licensed Trademark on or in such packaging or Promotional Material. Notwithstanding anything
to the contrary, the requirements of this Section 2.7 shall not apply to existing stocks of
packaging, Promotional Material, and other documents and materials that bear a TDK Mark that
Licensee is permitted to use pursuant to Section 2.2.



     2.8 Filing, Maintenance, and Renewal.



          (a) Licensee Cooperation: Licensee agrees to reasonably cooperate with Licensor’s
preparation and filing of any applications, renewals or other documentation necessary or useful to
protect Licensor’s intellectual property rights in the Licensed Trademarks in the Territory.



          (b) Licensor Filing and Maintenance: Licensor shall have the primary right to
determine whether to file or maintain registrations for any Licensed Trademarks. Licensor will
give Licensee reasonable notice of its intention to abandon or otherwise fail to maintain or
prosecute any registered Licensed Trademarks or application therefor in any country or class
applicable to a Licensed Product in the Territory and allow Licensee an opportunity to prosecute or
otherwise maintain such registrations for Licensed Trademarks for Licensed Products at Licensee’s
expense, but in Licensor’s name. Licensee may request that Licensor file or maintain registrations
for a Licensed Trademark for a country or class applicable to a Licensed Product in the Territory,
and Licensor shall either take such action at Licensee’s expense or, if Licensor does not wish to
do so, permit Licensee to do so, at Licensee’s expense, but in Licensor’s name. To the extent that
Licensor elects to file or maintain registrations for Licensed Trademarks that cover both Licensed
Products and Licensor Products, Licensor shall take such action at Licensor’s expense. If Licensor
elects not to file or maintain registrations for Licensed Trademarks that cover both Licensed
Products and Licensor Products, Licensee shall be under no obligation to file or maintain the
registrations for the Licensor Products.



          (c) Licensor Obligations If Licensee Pays: To the extent that Licensor is directing
the prosecution and maintenance of Licensed Trademarks but Licensee is paying the costs, Licensor
either directly or through its counsel shall furnish Licensee with copies of all filings made or
received in connection with such Licensed Trademarks, provided that Licensor shall consult with
Licensee about and send to Licensee for approval in advance of filing any responses to substantive
office actions and Licensee shall not unreasonably withhold or delay such approval. Licensor shall
also arrange for all invoices related to such prosecution and maintenance to be sent directly to
Licensee for payment and Licensee shall have the right in good faith to dispute such invoices and
to require Licensor to pay the disputed invoice if the dispute cannot be resolved to Licensee’s
reasonable satisfaction, but in any such case Licensor shall not be required to take further steps
as to the application or other matters at issue pending



7









 







the satisfactory resolution of such dispute unless necessary to prevent the application or
registration from lapsing.



          (d) Licensor Obligations If Licensee Handles and Pays: To the extent that Licensee is
filing or maintaining registrations for any Licensed Trademarks in Licensor’s name, Licensor agrees
to reasonably cooperate with Licensee’s preparation and filing of any applications, renewals or
other documentation necessary to protect Licensor’s intellectual property rights in the Licensed
Trademarks and Licensee may hire counsel of Licensee’s own choosing.



          (e) License Recordals: Should local counsel of either Party reasonably recommend that
Licensee be appointed as a licensee of Licensor for the Licensed Trademarks in the Territory and
(i) Licensor reasonably determines that such license should be recorded with the appropriate
trademark or customs office as reasonably necessary to protect Licensor’s rights in the Licensed
Trademarks, then Licensor at its expense shall prepare and file the necessary documents subject to
Licensee’s approval, which shall not be unreasonably withheld or delayed or (ii) if Licensee
reasonably determines that such license should be recorded with the appropriate trademark or
customs office as reasonably necessary to protect Licensee’s ability to enforce its rights in the
applicable Territory, Licensee at its expense shall prepare and file the necessary documents
subject to Licensor’s approval, which shall not be unreasonably withheld or delayed. Licensee
agrees to sign any documents reasonably necessary for Licensor to cause any recordals to be
terminated as to any Licensed Products upon the expiration or termination of the license applicable
to such product hereunder.



     2.9 Enforcement and Defense of Infringement Claims.



          (a) Notification: The parties shall reasonably cooperate in providing notice to each
other in writing (a “Notice of Alleged Infringement”) if a Party becomes aware of any use of a
Licensed Trademark, or element thereof, or of any Trademark on a Licensed Product, which may be
confusingly similar to any Licensed Trademark, or element thereof, by any Person in the Territory.



          (b) Action by Licensor to Enforce: Licensor shall have the primary right, but not the
obligation, to determine whether to institute and/or pursue any proceedings to enforce any rights
in the Licensed Trademarks, as well as the right to select counsel. Licensee shall cooperate with
Licensor in any such suit, including granting Licensor the right to bring suit in Licensee’s name
with respect to such infringement (and execute any documents necessary to effectuate the same) if
necessary under the applicable rules of civil procedure to effect standing, and Licensee shall be
reimbursed for reasonably incurred expenses. Licensor will be solely responsible for the costs of
such action and will retain all recoveries and awards necessary to reimburse Licensor for any costs
and expenses and, for any recoveries and awards in excess, shall share equally any recoveries and
awards with Licensee to the extent such recoveries and awards are related to Licensed Products.
Notwithstanding any other provision to the contrary, in no event shall Licensee be required to
satisfy or comply with any settlement or other agreement concerning its use of the Licensed
Trademarks to which Licensee has not consented (such consent not to be unreasonably withheld or
delayed).



8









 





          (c) Action by Licensee to Enforce: If applicable law in any jurisdiction in the
Territory requires that Licensee enforce rights in the Licensed Trademarks against alleged
infringers, or Licensor declines in writing to enforce its rights in the Licensed Trademarks with
respect to the alleged confusingly similar use set forth in the Notice of Alleged Infringement,
Licensee shall have a right, but not an obligation, to enforce such rights with respect to Licensed
Products subject to any direction that Licensor may provide. Licensor shall cooperate with
Licensee in any such suit, including granting Licensee the right to bring suit in Licensor’s name
or granting a limited license to a TDK Mark (solely as necessary for the specific enforcement
purpose) (and execute any documents necessary to effectuate the same) if necessary under the
applicable rules of civil procedure to effect standing, and Licensor shall be reimbursed for
reasonably incurred expenses. Licensee will be solely responsible for the costs of such action and
will retain all recoveries and awards necessary to reimburse Licensee for any costs and expenses
and, for any recoveries and awards in excess, shall share equally any recoveries and awards with
Licensor.



          (d) Defense of Third Party Claims: Licensor shall have the sole right to defend the
Licensed Trademarks against imitation, infringement or any claim of prior use. Licensee shall
cooperate fully with Licensor, at Licensor’s reasonable request and expense, in connection with the
defense of any such claim in the Territory.



          (e) Updates and Consultation: With respect to any enforcement actions taken pursuant
to this Section, the party handling such enforcement action shall provide periodic updates to and
request consultation from the parties not handling the action and each party not handling the
action may hire its own counsel at its expense.



     2.10 Reservation of Rights. Licensee acknowledges that, between the parties, Licensor is the
sole owner of all right, title and interest in and to the Licensed Trademarks, and that Licensee
has neither acquired, nor shall acquire, any right, title or interest in or to the Licensed
Trademarks except the limited exclusive rights to use such Licensed Trademarks expressly granted to
Licensee under this Agreement. Licensor shall retain all goodwill associated with the Licensed
Trademarks. Notwithstanding any other provision hereof, nothing in this Agreement shall prohibit
Licensor from marketing, distributing or selling any products on an OEM basis, provided such
products do not bear any Licensed Trademark or any confusingly similar variation thereof.



     2.11 Removing Licensed Trademarks from License. At any time during the term of this
Agreement, if Licensor reasonably determines that use of a Licensed Trademark hereunder in the
Territory could infringe any intellectual property rights of any third party (not derived from
Licensor), then Licensor shall notify Licensee. If such potential infringement could reasonably be
expected to limit Licensor’s ability to Display a Licensed Trademark on Licensor Products, then
Licensor shall use commercially reasonable efforts to resolve such potential infringement claim
with respect to both Licensor and Licensee. If such potential infringement could not reasonably be
expected to limit Licensor’s ability to Display a Licensed Trademark on Licensor Products (but
could reasonably be expected to limit Licensee’s ability to Display a Licensed Trademark on
Licensed Product(s)), then Licensor shall notify Licensee of such potential infringement claim and
Licensee shall have the ability, but not the obligation, to seek to resolve such claim at its own
expense provided that Licensee shall provide Licensor with



9









 







periodic updates and ability for consultation. If the potential infringement claim is not
resolved within a reasonable time period taking into account any settlement efforts, then upon
written notice to Licensee, Licensor shall have the right to remove any particular Licensed
Trademark from the scope of the license granted under this Agreement, upon written notice to
Licensee. For the avoidance of doubt, this Section shall not apply to infringements based on facts
that existed prior to the Effective Date.



     2.12 Requests by Licensee.



          (a) If Licensee wishes to create any variations of existing Licensed Trademarks or new
Trademarks that include any TDK Mark, then Licensee must seek Licensor’s written approval, which
may be refused in Licensor’s sole discretion, and any such Trademarks approved by Licensor shall be
deemed added to the list of Licensed Trademarks in Exhibit A and shall be subject to all
the terms and conditions of this Agreement.



          (b) If Licensee wishes to use the Licensed Trademarks in connection with a co-branding
program, Licensee shall first seek Licensor’s written approval, which may be granted or refused in
Licensor’s sole discretion. Except for Existing Programs (as defined in subsection (b)(i) below),
Licensee shall present such plan (in reasonable detail) in writing to the Licensor Relationship
Manager (as defined in Section 4.1).



               (i) As of the Effective Date, Licensor hereby approves the Licensee’s continued participation
in the co-branding of the products listed on Exhibit I (“Existing Programs”), solely in
Japan, in the same manner that Licensor had been co-branding such products immediately prior to the
Effective Date for up to two (2) years after the Effective Date, provided that Licensee shall begin
using the Licensed Trademarks in place of any TDK Mark used in such co-branding programs as soon as
practicable but in any event within three (3) months after the Effective Date; provided, further
that – notwithstanding the foregoing clause – Licensee shall have the right to use co-branded
product inventory and Promotional Material in existence on the Effective Date, as part of Existing
Programs, for up to one (1) year after the Effective Date to the extent, and on the terms,
permitted by Section 2.2.



               (ii) If Licensee wishes to request additional co-branding rights (including the extension of
any of the Existing Programs), Licensee shall first seek Licensor’s written approval, which may be
granted or refused in Licensor’s sole discretion. Licensee’s proposed plan (provided to the
Licensor Relationship Manager) shall specify (a) the proposed design image (specifying each brand
to be utilized, and the form of co-brand, including spacing and other fixed attributes); (b) the
applicable sales territory; (c) the retailer with which the product will be co-branded; and (d)
each category of product or products. Licensee’s proposal may include multiple representations of
the co-branding materials for approval. Licensee shall also provide any additional information
reasonably requested by Licensor. Licensor shall seek in good faith, but without obligation, to
approve or disapprove Licensee’s request within three weeks of its receipt of the completed plan.
Unless Licensor otherwise states in writing, the term of any new co-branding program (or any
extension of an Existing Program) shall be for a two (2) year period, starting from the date of
approval.



10









 





               (iii) If Licensee wishes to make any change to an approved co-branding program (including any
Existing Program), Licensee shall obtain Licensor’s prior written approval to such change, which
may be granted or refused in Licensor’s sole discretion. Licensee shall provide the same or
similar types of information in writing to the Licensor Relationship Manager as set forth in
subsections (ii)(a) to (d). Licensor shall seek in good faith, but without obligation, to approve
or disapprove Licensee’s request within three weeks of its receipt of the completed plan.



               (iv) Licensor shall have the right to terminate any co-branding program (including any
Existing Program) in the event Licensee materially fails to conform to any co-branding program
requirement or engages in co-branding that is inconsistent, in a material way, with the materials
provided for review in connection with the approval process (or in the case of any Existing
Program, the co-branded products in that program as of the Effective Date) if Licensee fails to
correct any nonconformance within thirty (30) days after receiving written notice from Licensor.



     2.13 Additional Commitments of Licensee. Licensee agrees to cause each Licensed Entity,
whether directly or indirectly sublicensed under Section 2.5, to comply with all of its
respective obligations under this Agreement, and any other agreement executed in connection
herewith (including the applicable Sublicense Agreement or Further Sublicense Agreement), and
agrees that it shall be directly liable for any act of any Licensed Entity in breach of any such
obligation, including, for the avoidance of doubt any act by a Licensed Entity that, in either
case, would be a breach of this Agreement if committed by Licensee. Licensor may pursue claims for
any such breach against Licensee, in accordance with the terms hereof, regardless of whether such
breach was committed by Licensee, or another party, and regardless of whether Licensor chooses to
include any other party in the dispute resolution process applicable to the claim. In the event of
any claim by Licensor, Licensee expressly waives any defense based on the absence of or failure to
join any other party in the dispute resolution process or any other aspect of the claim.



     2.14 Status as wholly-owned subsidiary of Imation. Licensee represents and warrants that it
is a direct or indirect wholly-owned subsidiary of Imation, and agrees that, at all times during
the term of this Agreement, Licensee shall continue to be a direct or indirect wholly-owned
subsidiary of Imation. If Licensee ceases to be a direct or indirect wholly-owned subsidiary of
Imation, this Agreement shall immediately and automatically terminate without the further act of
any party.



ARTICLE III




QUALITY CONTROL




     As an express condition to, and in material consideration for, the licenses granted to
Licensee hereunder, Licensee expressly agrees to the following restrictions as to its use of the
Licensed Trademarks:



     3.1 Trademark Guidelines. Licensee shall not use, reproduce or display any Licensed Trademark
in any manner whatsoever other than as expressly authorized in the quality



11









 







control guidelines for the Licensed Trademarks (“Quality Guidelines”), including guidelines
regarding how each Licensed Trademark is used, presented and displayed (“Display”).
Notwithstanding anything to the contrary, the requirements of this Section 3.1 shall not
apply to existing inventory of Licensed Products or to existing stocks of packaging, Promotional
Material, and other documents and materials that bear a TDK Mark, in each case that Licensee is
permitted to use pursuant to Section 2.2 (which shall be used in the form transferred as of
the Effective Date, without alteration). The Quality Guidelines shall consist of two elements:
guidelines related to Display (such guidelines shall be contained in a “Logo Manual”) and
guidelines regarding the nature and quality of products and services associated with the Licensed
Trademark (such guidelines shall be contained in a “Quality Manual”). The initial Quality
Guidelines are attached as Exhibit F. Licensee shall promptly cure any breach of the
Quality Guidelines upon notice from Licensor, provided that Licensee shall have a reasonable time
to comply with Updates (as defined below), including a reasonable amount of time to exhaust
existing inventories of Promotional Material, packaging, and Licensed Product, except that Licensee
shall not have rights to exhaust existing inventories if such inventories are in material
noncompliance with the previous Quality Guidelines or if the existing Licensed Products (or use or
distribution thereof) would violate any applicable law. Notwithstanding anything to the contrary
in this Section 3.1, if Licensee purchases products covered by the Supply Agreement from
third parties as permitted under the terms of the Supply Agreement, Licensee shall not be in breach
of provisions of the Quality Manual to the extent that such Quality Manual refers to standards or
specifications that are not performance or quality-related specifications (e.g., the use of
Licensor dye #25 in describing a color or other requirements for the product not tied to the
performance of the product), provided that Licensee shall comply with the Logo Manual. Licensor
may reasonably update such Quality Guidelines (“Updates”) from time to time to reflect, among other
things, changes in the use, presentation and display of the Licensed Trademarks, and the highest
applicable industry standards, subject to the following:



          (a) Updates Relating to Guidelines Other Than Display: With respect to Updates
relating to the nature and quality of products or services (e.g., performance requirements, defect
rates, etc.) (and not, for purposes of clarification, Display), Licensor shall provide Licensee
with a reasonable opportunity to review and comment on such Updates. If the parties are unable to
agree on such updates, Licensor shall be permitted to finalize the Updates subject to the
following:



               (i) with respect to Updates specifically applicable to Licensed Products, such Updates shall
be consistent with the applicable, approved plans and quality requirements for such product; and



               (ii) with respect to other Updates, such Updates shall be consistent with principles reflected
in the most recent, applicable set of Quality Guidelines, best practices in the industry, standards
that Licensor applies to itself, its affiliates, and other licensees similarly situated with
Licensee, to the extent any such entities are selling similar products under the Licensed
Trademarks, and other principles on which the parties may agree from time to time; and



          (b) Updates Related to Display Guidelines: With respect to Updates relating to
Display, any such Updates shall be consistent with the guidelines for the relevant use,



12









 







presentation and display that Licensor applies to itself, its affiliates, and other licensees
similarly situated with Licensee, under like circumstances, provided that Licensee shall not be
required to implement any Updates to the requirements relating to the shape, color or dimension of
a TDK Mark for the Licensed Products and their packaging and Promotional Material if Licensee
believes in good faith that such changes will be detrimental to its Licensed Product sales.



     3.2 Conduct of Business. Each of the parties shall use the Licensed Trademarks in a manner
that does not derogate Licensor’s rights in the Licensed Trademarks or the value of the Licensed
Trademarks, and shall take no action that would interfere with, diminish or tarnish those rights or
value.



     3.3 Cooperation. Licensee shall cooperate fully with Licensor in enabling Licensor to
ascertain that the Licensed Products other than those existing inventories of Licensed Products
that Licensee is permitted to use pursuant to Section 2.2 meet Licensor’s quality
standards. Such cooperation shall include, upon request, providing Licensor promptly with data
regarding communications from third parties regarding the quality of specific Licensed Products,
providing Licensor with names and addresses of vendors and suppliers producing Licensed Products or
components thereof to be sold under a Licensed Trademark, and providing Licensor with access to
product packaging and distribution facilities for such products for reasonable inspection by
Licensor.



     3.4 Cessation of Licensed Product Sales; Recall. Licensor shall have the right to request
that Licensee immediately cease selling a Licensed Product, or revise or cease use of any or all
Promotional Material, and Licensee shall promptly comply, upon written notice to Licensee if the
condition of such Licensed Product or Promotional Material could reasonably be expected to
materially and adversely affect Licensor’s business or reputation. For the avoidance of doubt, if
there is a reasonable basis for believing that a product poses a danger to person or property, such
product shall be considered a product that could be reasonably expected to materially and adversely
affect Licensor’s business or reputation. Further, Licensor shall have the right to request a
product recall if there is a reasonable basis for believing that the product or category of
products poses a danger to person or property, and Licensee shall promptly comply upon written
notice of such request. If Licensee wishes to resume sale of a product, Licensor shall have the
right to approve such resumption.



     3.5 Samples. Licensee shall submit to Licensor upon reasonable request, specimens of uses of
the Licensed Trademarks, including: (a) representative products that will bear any Licensed
Trademark or be marketed, promoted, advertised, distributed or sold using any Licensed Trademark;
and (b) samples of all Promotional Material. If, after review of such materials or samples,
Licensor is concerned about compliance with any aspect of this Agreement, Licensee shall provide
such additional materials and samples as Licensor may reasonably request. If Licensor discovers
any improper use of the Licensed Trademarks in any such submission, Licensee shall remedy the
improper use immediately upon written notice. Notwithstanding anything to the contrary, the
requirements of this Section 3.5 shall not apply to existing inventory of Licensed Product
or to existing stocks of packaging, Promotional Material, and other documents and materials that
bear a TDK Mark, in each case that Licensee is permitted to use pursuant to Section 2.2.



13









 





     3.6 Inspections. In addition to Section 3.3, Licensee shall cooperate with Licensor
to ensure that quality standards applicable to Licensed Products other than those existing
inventories of Licensed Products acquired pursuant to Section 2.2 are met by permitting
Licensor to inspect only those manufacturing and other facilities directly related to the
manufacture of Licensed Products, upon reasonable notice and no more than once a year, and only in
a manner that will not unreasonably interfere with Licensee’s business activities, provided that
Licensee shall arrange for and accompany Licensor on any inspections to third-party facilities.



     3.7 Standards Compliance. If Licensee publicly states that any Licensed Product is compliant
with any applicable industry standard, Licensee shall ensure that such Licensed Product is fully
compliant with all mandatory requirements of such standard, except for compliance with such
applicable industry standards for which Licensor is responsible under the Supply Agreement. For
the avoidance of doubt, any use of a logo or trademark associated with an industry standard (e.g.,
the logo “DVD” or “Blu-ray”) shall be deemed a public statement that the Licensed Product is
compliant with the applicable industry standard.



ARTICLE IV




GOVERNANCE




     4.1 Relationship Managers. The Relationship Managers appointed by Licensor and Imation under
the Imation Agreement shall perform the same roles under this Agreement as performed under the
Imation Agreement, provided that Licensor acknowledges that the Imation Relationship Manager shall
seek information and consultation from Licensee prior to taking action or making recommendation
under this Section 4.1.



     4.2 Strategic Relationship Committee. The Strategic Relationship Committee shall perform the
same roles under this Agreement that it performs under the Imation Agreement, including resolving
disputes on an informal basis as set forth in Section 4.3.



     4.3 Dispute Resolution. If a significant dispute under this Agreement, including as to a
Material Breach, arises that the Relationship Managers cannot resolve (a “Dispute”), and provided
that each of Licensee and Licensor have the unrestricted right and ability to participate in the
process described in this Section 4.3 (and to effect a cure or take other action to which
the parties might agree) without approval of any third party, including but not limited to a
trustee in bankruptcy or a receiver, then the Dispute shall be resolved as follows, in order,
before instituting legal proceedings.



          (a) Strategic Relationship Committee: Either Licensee or Licensor shall first refer
the Dispute to the Strategic Relationship Committee for resolution. A Dispute shall be deemed
referred upon either such party providing the other party with written notice that it wishes to
refer the Dispute to the Strategic Relationship Committee in accordance with Section 9.9.



          (b) Chief Executive Officers: If the Strategic Relationship Committee is unable to
resolve the Dispute thirty (30) days after the Dispute is referred to the Strategic Relationship
Committee, either Licensee or Licensor may refer the Dispute to the Chief



14









 







Executive Officers of Imation and Licensor for resolution. A Dispute shall be deemed referred
upon either such party providing the other party with written notice that it wishes to refer the
Dispute to the Chief Executive Officers in accordance with Section 9.9 within fifteen (15)
days after the expiration of such thirty (30)-day period. If no such notice is provided, the
dispute resolution process hereunder as to the Dispute in question will be deemed complete.



          (c) Nonbinding Mediation: If Licensee or Licensor elects to refer a Dispute to the
Chief Executive Officers pursuant to Section 4.3, and the Chief Executive Officers are
unable to resolve the Dispute within thirty (30) days after such election, either Licensee or
Licensor may elect to refer the Dispute to nonbinding mediation conducted in the English language
in New York, New York, using a neutral mediator having experience with the data storage industry
and trademark licenses, in accordance with the rules of the Center for Public Resources (with costs
shared equally). A Dispute shall be deemed to be so referred upon either such party providing the
other party with written notice that it wishes to refer the Dispute to mediation in accordance with
Section 9.9. If no such notice is provided, the dispute resolution process hereunder as to
the Dispute in question will be deemed complete. If such notice is provided, both parties shall
request that the mediation be completed as promptly as practical and shall cooperate in moving the
mediation process promptly forward, but the mediation shall, in any event, be deemed completed
sixty (60) days after the request to refer the Dispute to mediation.



          (d) Efforts to Cure: Each of Licensor and Licensee agrees to make (and in the case of
Licensee, to cause any Licensed Entity to make) commercially reasonable efforts, during the
pendency of the foregoing dispute resolution procedure, to cure the breach or otherwise address the
business concerns identified by the other party, to the extent possible on commercially reasonable
terms.



          (e) Timing Issues: Either of Licensee and Licensor may commence the foregoing process
as to a dispute at any time, and need not wait for the passage of any notice or cure period
specified in Section 4.3 or for the occurrence of all facts otherwise required to give rise
to any contractual right as to the matter in Dispute, including a right to terminate. In no event
shall a party be required to engage in the dispute resolution process set forth in this Section
4.3 , or be precluded from exercising its rights by reason thereof, for more than one hundred
twenty (120) days (in total) from the party’s first submission of a Dispute to the Strategic
Relationship Committee under Section 4.3, without its written consent to an extension. No
dispute or disagreement relating to the same essential facts and circumstances may be referred to
the dispute resolution process under this Section 4.3 more than once.



          (f) Judicial Remedies: Nothing in this Section 4.3 shall preclude either of
Licensee or Licensor from seeking interim judicial relief to prevent immediate, irreparable harm to
its interests. In the event that the procedures set forth in this Section 4.3 shall have
been completed without agreement being reached between the parties, either Licensee or Licensor
shall be free to pursue any available judicial remedies pursuant to Section 9.7.



15









 





ARTICLE V




EFFECTIVENESS; TERM, SUSPENSION AND TERMINATION




     5.1 Effectiveness; Term. This Agreement shall become effective immediately upon the closing
of the transactions contemplated in the Acquisition Agreement, which shall be the date set forth
above (the “Effective Date”), and shall continue in full force and effect unless and until
terminated as provided in this Article V, although, for the avoidance of doubt, the term of
the licenses granted hereunder for specific Licensed Products shall be as set forth in Section
2.1.



     5.2 Suspension.



          (a) When Suspension Applies: Licensor shall have the right to suspend the license
with respect to (i) a particular type of Licensed Product (e.g., DVD, CD, Blue-ray media)
throughout the Territory in the event of any Significant Breach by Licensee that affects the
particular type of Licensed Product in more than one country or (ii) a Licensed Product in a
discrete geographic territory (but in no event in a territory smaller than a country) in the event
of a Significant Breach by Licensee of this Agreement that affects such Licensed Product only in
such territory if Licensee fails to cure such Significant Breach within sixty (60) days after
written notice by Licensor to Licensee. During the term of any suspension, Licensee shall not be
authorized to and agrees that it shall not (and shall cause any Licensed Entity not to) use,
reproduce and display the Licensed Trademarks for the marketing, promotion, advertisement,
distribution, lease or sale of the affected Licensed Products in the particular territory
identified in Section 5.2(a).



          (b) Initial Suspension Period: The initial suspension period shall begin at the end
of the sixty (60)-day period and last for the shorter of (i) the date on which both parties agree
in writing that the Significant Breach identified in Section 5.2(a) has been cured or (ii)
one hundred twenty (120) days. If such initial suspension period ends because the parties agree
that such Significant Breach has been cured, then the license for the particular Licensed Product
in the particular territory identified in Section 5.2(a) shall be reinstated immediately
without the need for separate notice. If such initial suspension period expires and the parties
agree in writing that the Significant Breach identified in Section 5.2(a) has not been
cured or Licensee fails to commence the dispute resolution process as provided in Section
5.2(a), then the license for the particular Licensed Product in the particular territory
identified in Section 5.2(a) shall continue to be suspended or, at Licensor’s election, be
terminated immediately upon written notice.



          (c) Further Suspension Period: If, just prior to the end of the initial suspension
period, the parties remain in dispute as to whether such Significant Breach has been cured,
Licensee may commence a dispute resolution process pursuant to Section 4.3 and the
previously suspended license shall remain suspended pending the outcome of such dispute resolution
process. If, at the conclusion of such dispute resolution process, there is a written agreement by
the parties that the Significant Breach has been cured, then the license for the particular
Licensed Product in the particular territory identified in Section 5.2(a) shall be
reinstated immediately without the need for separate notice. If, at the conclusion of such dispute
resolution process, there is a written agreement by the parties that the Significant Breach has not
been cured or there is no agreement reached about whether the Significant Breach has been



16









 







cured, then the license for the particular Licensed Product in the particular territory
identified in Section 5.2(a) shall continue to be suspended or, at Licensor’s election, be
terminated immediately upon written notice as to the Licensed Products and territories in question,
subject to the any rights and remedies of Licensee pursuant to Section 4.3(f).  



     5.3 Termination for Convenience. At any time after the twenty-fifth (25th)
anniversary of the Effective Date, Licensor may terminate this Agreement in its sole discretion,
and for any reason, upon one (1) year’s written notice to Licensee.



     5.4 Termination for Cause. Licensor, or in the case of Sections 5.4(c) or 5.6
either Licensor or Licensee, shall additionally have the right to terminate this Agreement as set
forth below:



          (a) Withdrawal from Business: upon written notice to Licensee, in the event that
Licensee withdraws from or discontinues its conduct of the Business;



          (b) Divestiture: upon written notice to Licensee, upon any Divestiture of all or any
material portion of Licensee’s business relating to the marketing, distribution or sale of Licensed
Products, where “Divestiture” means any sale, assignment or other transfer to another Person all or
any material portion of any relevant assets relating to or primarily used in such business, but not
including a sale of all or substantially all of the assets of Licensee in connection with a
permitted Change of Control under the Imation Agreement;



          (c) Material Breach of Agreement: upon written notice to the other party, in the
event of a Material Breach by such other party, which is not cured within sixty (60) days after
written notice by the party to the other party, provided, however, that if, during such sixty
(60)-day period, the other party commences a dispute resolution process pursuant to Section
4.3 with respect to the party’s notice of breach (or the breach is otherwise subject to a
dispute resolution process thereunder), such termination shall not become effective until the later
of (i) one hundred twenty (120) days after the commencement of such dispute resolution process or
(ii) the end of any extension period beyond such one hundred twenty (120)-day period to which the
party has expressly agreed in a writing that refers to Section 4.3 and this Section
5.4(c). Notwithstanding the foregoing, the parties acknowledge that, from time to time, there
may be de minimus breaches of quality control requirements of this Agreement by Licensee but that,
for so long as Licensee is diligently curing such breaches, such breaches shall be disregarded in
determining whether Licensee is in Material Breach (although Licensor may commence the dispute
resolution processes of Section 4.3 if it views such breaches as significant in the
aggregate). Notwithstanding the foregoing, the parties further acknowledge that a Material Breach
will only give rise to Licensor’s right to terminate this Agreement if (a) the Material Breach
affects more than one Licensed Product in more than one country; or (b) Licensor previously has
exercised its right to suspend the license as to a particular Licensed Product due to a failure by
Licensee to cure a Material Breach within the initial sixty (60)-day cure period specified in
Section 5.2.



     5.5 Other Termination Rights. Either of Licensor or Licensee may terminate this Agreement
immediately upon written notice to the other party upon:



17









 





          (a) the filing by the other party of a petition in bankruptcy or insolvency;



          (b) any adjudication that the other party is bankrupt or insolvent;



          (c) the filing by the other party of any legal action or document seeking reorganization,
readjustment or arrangement of such party’s business under any law relating to bankruptcy or
insolvency;



          (d) the appointment of a receiver for all or substantially all of the property of the other
party;



          (e) the making by the other party of any assignment for the benefit of creditors; or



          (f) sixty (60) days after the institution of any proceedings for the liquidation or winding up
of the business of, or for the termination of the corporate charter of, the other party if such
proceedings are not dismissed such sixty (60)-day period.



     5.6 Termination for Termination of Imation Agreement. Either party may terminate this
Agreement immediately upon written notice to the other party upon the effective date of termination
of the Imation Agreement for any reason.



     5.7 Termination if Licensee no Longer Wholly-Owned by Imation. If Licensee ceases to be
wholly owned, directly or indirectly by Imation, this Agreement shall immediately and automatically
terminate without the further act of any party.



     5.8 Effect of Termination.



          (a) Termination of License: Upon termination of this Agreement for any reason,
subject to Section 5.8(b), all rights and licenses granted hereunder (including any
Sublicense Agreements executed pursuant hereto) shall immediately terminate (and Licensee and any
Licensed Entities shall cease all use of the Licensed Trademarks), provided that Licensee may use
the Licensed Trademarks (i) for historical reference, including to keep records and other
historical or archived documents (including customer contracts and/or marketing materials)
containing or referencing the Licensed Trademarks and to refer to the historical fact that Licensee
and the Licensed Entities previously used the Licensed Trademarks, but not, for the avoidance of
doubt, for marketing, promotion, advertisement, distribution, lease or sale of Licensed Products,
and (ii) in any manner permitted under applicable law.



          (b) Use Up Rights: Without limiting any rights of Licensee pursuant to Sections
2.2 and 5.8(a), upon any termination of this Agreement under Section 5.5 or
5.6 (only in the case of termination of the Imation Agreement under Sections 6.4(a)
and 6.5 thereof), Licensee shall have the right to continue to (i) sell and/or otherwise
dispose of any Licensed Products bearing a Licensed Trademark which are on hand or in process, and
(ii) use the Licensed Trademarks on Internet and Intranet websites and on existing stocks of
packaging, Promotional Material, and other documents and materials related to the Licensed Products
in connection with sales permitted pursuant to the preceding clause (i), provided that such rights
shall not exceed one hundred eighty (180) days following termination of this Agreement.



18









 





          (c) Survival: The following provisions shall survive the termination of this
Agreement: Sections 5.6 and 7.3, Article I, Article VI,
Article VIII, and Article IX and Exhibit B.



     5.9 Termination Remedies. Termination of this Agreement by a party shall be without prejudice
to any other right or remedy of such party under this Agreement or applicable law.



ARTICLE VI




INDEMNIFICATION




     6.1 Indemnification by Licensee. Licensee shall, at its own expense, indemnify, defend, and
hold harmless Licensor and its affiliates, and their respective officers, directors, employees and
representatives, from and against any claim, demand, cause of action, liability, expense (including
attorney’s fees and costs), or damages to the extent arising from a third party claim with respect
to:



          (a) Licensed Products (except to the extent that Licensor is obligated to indemnify Licensee
under the Supply Agreement), including any claim alleging product liability, injury to property or
person, or infringement of intellectual property rights (except to the extent that Licensor is
obligated to provide indemnification for such infringement claim under Section 6.2;



          (b) use of any Licensed Trademark by Licensee or any Licensed Entity (except to the extent
that Licensor is obligated to provide indemnification for such claim under Section 6.2; and



          (c) any breach by Licensee, or any Licensed Entity of this Agreement (or any applicable
Sublicense Agreement), including to the extent arising from any termination of this Agreement in
accordance with Article V.



     6.2 Indemnification by Licensor. Licensor shall, at its own expense, indemnify, defend, and
hold harmless Licensee and its affiliates, and their respective officers, directors, employees and
representatives, from and against any claim, demand, cause of action, liability, expense (including
attorney’s fees and costs), or damages to the extent arising from a third party claim with respect
to:



          (a) Licensee’s alleged infringement of (i) third party copyrights and trademark rights (which
include claims for unfair competition, dilution and other similar claims) arising from Licensee’s
use of the TDK Marks pursuant to Section 2.2 or (ii) third party copyrights and trademark
rights in the United States or Japan or third party rights in a registered Community Trade Mark
(which include claims for unfair competition, dilution and other similar claims relating to such
rights) arising from Licensee’s Display of the Licensed Trademark; except in either case, to the
extent that such infringement arises from Licensee’s non-compliance with Licensor’s requirements
for Display of the TDK Marks or Licensed Trademarks; and



19









 





          (b) any breach by Licensor of this Agreement, including to the extent arising from any
termination of this Agreement in accordance with Article V; provided, that Licensee’s sole
and exclusive remedy for any breach of Licensor’s representation and warranty set forth at
Section 7.1(c) hereof shall be indemnification by the Licensor pursuant to this Section
6.2.



     6.3 Miscellaneous. The party seeking to be indemnified pursuant to this Article VI
(as applicable, the “Indemnified Party”) shall be entitled to indemnification hereunder only if
it gives written notice to the party obligated to provide such indemnification hereunder (the
“Indemnifying Party”) of any claims, suits or proceedings by third parties which may give rise to a
claim for indemnification with reasonable promptness after receiving written notice of such claim
(or, in the case of a proceeding, is served in such proceeding); provided, however, that failure to
give such notice shall not relieve the Indemnifying Party of its obligation to provide
indemnification, except if and to the extent that the Indemnifying Party is actually and materially
prejudiced thereby. If the Indemnifying Party confirms in writing to the Indemnified Party that it
is prepared to assume its indemnification obligations hereunder, the Indemnifying Party shall have
sole control over the defense of the claim, at its own cost and expense; provided, however, that
the Indemnified Party shall have the right to be represented by its own counsel at its own cost in
such matters. Notwithstanding the foregoing, the Indemnifying Party shall not settle or dispose of
any such matter in any manner which would require the Indemnified Party to make any admission, or
to take any action (except for ceasing use or distribution of the items subject to the claim)
without the prior written consent of the Indemnified Party, which shall not be unreasonably
withheld or delayed. Each party shall reasonably cooperate with the other party and its counsel in
the course of the defense of any such suit, claim or demand, such cooperation to include using
reasonable efforts to provide or make available documents, information and witnesses and to
mitigate damages.



ARTICLE VII




REPRESENTATIONS; LIMITATION OF WARRANTY AND LIABILITY




     7.1 Warranties as of Effective Date. Licensor represents and warrants to Licensee as follows
as of the Effective Date:



          (a) Licensor has the right to grant the licenses contemplated by this Agreement, without the
need for any licenses, releases, consents, approvals or immunities not yet granted and no licenses
granted in this Agreement are inconsistent with or contrary to any licenses previously granted by
Licensor.



          (b) Licensor owns all right, title and interest in the TDK Marks and Licensed Trademarks free
and clear of any liens, security interests, obligations, or other encumbrances.



          (c) In the two (2) years prior to the Effective Date, no Person has asserted to Licensor in
writing that any TDK Mark or Licensed Trademark is invalid or not enforceable and there are no such
claims pending as of the Effective Date. The TDK Diamond Logo and Licensed Trademarks that are
registered Trademarks or that are the subject of pending Trademark applications are in full force
and effect, and all actions required to keep such registrations or applications pending or in
effect or to provide full available protection, including



20









 







payment of filing and maintenance fees and filing of renewals, statements of use or affidavits
of incontestability, have been taken and no such applications or registrations are the subject of
any opposition, cancellation, or other proceeding placing in question the validity or scope of such
rights.



          (d) In the two (2) years prior to the Effective Date, Licensor has received no written notice
by a third party that the Display of TDK Marks or Licensed Trademarks in connection with Licensed
Products infringes such third party’s intellectual property rights and no such claims are pending
as of the Effective Date.



          (e) Exhibits C and E contain complete and accurate listings of all Headphone
Products and Speaker Products currently marketed by Licensor.



          (f) Exhibit I contains a complete and accurate listing of all current co-branding
programs for the Licensed Products in Japan as of the Effective Date, provided that the sole and
exclusive remedy for breach of this Section 7.1(f) is that such a current co-branding
program shall be added to Exhibit I and be treated as an Existing Program as of the
Effective Date.



     7.2 Warranties as of Date of Update. Licensor represents and warrants to Licensee as follows
as of the date of any Updates to Display Guidelines that result in a material change to a Licensed
Trademark:



          (a) Licensor has the right to grant the licenses contemplated by this Agreement, without the
need for any licenses, releases, consents, approvals or immunities not yet granted and no licenses
granted in this Agreement are inconsistent with or contrary to any licenses previously granted by
Licensor.



          (b) Licensor owns all right, title and interest in such Licensed Trademark free and clear of
any liens, security interests, obligations, or other encumbrances.



          (c) There are no claims pending that such Licensed Trademark, as modified, is invalid or not
enforceable, which claims would not apply to the Licensed Trademark before the modification.



          (d) There are no written notices or claims pending by a third party that the Display of such
Licensed Trademark, as modified, in connection with Licensed Products infringes such third party’s
intellectual property rights, which claims would not apply to the Licensed Trademark before the
modification.



     7.3 Disclaimer of Warranties. EXCEPT AS SET FORTH IN THIS SECTION, LICENSOR HEREBY
SPECIFICALLY DISCLAIMS ANY WARRANTIES, EXPRESS OR IMPLIED, INCLUDING THE WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, VALIDITY, ENFORCEABILITY, NONINFRINGEMENT, AND
ANY WARRANTIES THAT MAY ARISE DUE TO COURSE OF PERFORMANCE, COURSE OF DEALING OR USAGE OF TRADE,
WHETHER RELATED TO THE LICENSED TRADEMARKS, ADDITIONAL LICENSED DOMAIN NAMES, OR OTHERWISE.



21









 





ARTICLE VIII




CONFIDENTIAL INFORMATION




     8.1 Definition. “Confidential Information” means (a) all Sublicense Agreements, and (b) all
information disclosed by one party to any other party (in writing, orally or in any other form)
that is designated, at or before the time of disclosure, as confidential. The party disclosing
Confidential Information shall be a “Discloser” and the party receiving Confidential Information
shall be a “Recipient.”



     8.2 Exclusions. Confidential Information does not include information or material that (a) is
now, or hereafter becomes, through no act or failure to act on the part of the Recipient, generally
known or available; (b) is or was known by the Recipient at or before the time such information or
material was received from the Discloser; (c) is furnished to the Recipient by a third party that
is not under an obligation of confidentiality to the Discloser with respect to such information or
material; or (d) is independently developed by the Recipient.



     8.3 Restrictions on Use. During the term of this Agreement and for a period of three (3)
years thereafter, the Recipient shall hold Confidential Information in confidence and shall not
disclose to third parties or use such information for any purpose whatsoever other than as
necessary in order to fulfill its obligations or exercise its rights under this Agreement. The
Recipient shall take all reasonable measures to protect the confidentiality of the other party’s
Confidential Information in a manner that is at least protective as the measures it uses to
maintain the confidentiality of its own Confidential Information of similar importance.
Notwithstanding the foregoing, the Recipient may disclose the other party’s Confidential
Information (a) to employees and consultants that have a need to know such information, provided
that each such employee and consultant is under a duty of nondisclosure that is consistent with the
confidentiality and nondisclosure provisions herein, and (b) to the extent the Recipient is legally
compelled to disclose such Confidential Information, provided that if permitted by applicable law
and regulations the Recipient shall give advance notice of such compelled disclosure to the other
party, and shall cooperate with the other party in connection with any efforts to prevent or limit
the scope of such disclosure and/or use of the Confidential Information.



ARTICLE IX




MISCELLANEOUS




     9.1 No Assignment or Transfer. No party shall, or shall have the right to, assign, sell,
transfer, delegate or otherwise dispose of, whether voluntarily or involuntarily, by operation of
law or otherwise, this Agreement or any of its rights or obligations under this Agreement without
the prior written consent of the other parties to this Agreement, each in its sole discretion;
provided, that, subject to Imation’s compliance with the terms in the Imation Agreement with
respect to a Change of Control, the foregoing shall not apply to an assignment by Licensee of its
rights and obligations hereunder in connection with a transfer of all or substantially all of
Licensee’s assets in connection with a permitted Change of Control under the



22









 




Imation Agreement. Except as expressly provided herein, any purported assignment, sale,
transfer, sublicense, delegation or other disposition by any party shall be null and void.




     9.2 Injunctive Relief. Licensee acknowledges that a breach by it of its obligations under
this Agreement, including its obligations set forth in Sections 2.6 and 2.7 and
Article III, may cause Licensor irreparable damage. Accordingly, Licensee agrees that in
the event of such breach or threatened breach, in addition to remedies at law, Licensor shall have
the right to seek injunctive or other equitable relief, without the necessity of posting any bond
or other security, to prevent Licensee’s violations of its obligations hereunder. Licensor
acknowledges that a breach of its obligations under this Agreement, including its obligations set
forth in Section 5.4 or Article VIII may cause Licensee irreparable damage.
Accordingly, Licensor agrees that in the event of such breach or threatened breach, in addition to
remedies at law, Licensee shall have the right to seek injunctive or other equitable relief,
without the necessity of posting any bond or other security, to prevent Licensor’s violations of
its obligations hereunder.



     9.3 Severability. If any provision of this Agreement, or the application thereof to any
Person, place or circumstance, are held by a court of competent jurisdiction to be invalid, void or
otherwise unenforceable, such provision shall be enforced to the maximum extent possible so as to
effect the intent of the parties, or, if incapable of such enforcement, shall be deemed to be
deleted from this Agreement, and the remainder of this Agreement and such provisions as applied to
other Persons, places and circumstances shall remain in full force and effect.



     9.4 Waivers. The waiver by a party of a breach of or a default under any provision of this
Agreement, shall not be effective unless such waiver is in writing, expressly states that is waiver
hereunder, and identifies the breach or default to be waived. No waiver hereunder shall, in any
event, be construed as a waiver of any subsequent breach of, or default under, the same or any
other provision of this Agreement, nor shall any delay or omission on the part of a party in
exercising or availing itself of any right or remedy, or any course of dealing hereunder, operate
as a waiver of any right or remedy.



     9.5 Amendments. This Agreement may be amended only by written document, expressly stating
that it is an amendment to this Agreement, identifying the provisions of this Agreement to be
amended, and duly executed on behalf of each of the parties hereto. No delay or omission on the
part of a party in exercising or availing itself of any right or remedy, or any course of dealing
hereunder, operate as an amendment with respect to any provision hereof.



     9.6 Governing Law. This Agreement is to be construed in accordance with and governed by the
internal laws of the State of New York without giving effect to any choice of law rule that would
cause the application of the laws of any jurisdiction other than the internal laws of the State of
New York to the rights and duties of the parties.



     9.7 Consent to Jurisdiction.



          (a) Licensee hereby irrevocably submits and agrees to cause all other Qualified Entities
sublicensed hereunder to irrevocably submit on or prior to the execution of the relevant Sublicense
Agreement), and Licensor hereby irrevocably submits to the exclusive



23









 







jurisdiction of the state and federal courts located in the State of New York, New York
County, for the purposes of any suit, action or other proceeding arising out of this
Agreement or any Sublicense Agreement (and each agrees that no such action, suit or proceeding
relating to this Agreement or the Sublicense Agreements shall be brought by it or any of its
affiliates except in such courts). Licensee irrevocably and unconditionally waives (and agrees not
to plead or claim), and agrees to cause any Qualified Entities sublicensed hereunder to irrevocably
and unconditionally waive (and not to plead or claim), and Licensor irrevocably and unconditionally
waives (and agrees not to plead or claim), any objection to the laying of venue of any action, suit
or proceeding arising out of this Agreement or the Sublicense Agreements in such courts or that any
such action, suit or proceeding brought in any such court has been brought in an inconvenient
forum.



          (b) Licensee further agrees, and agrees to cause the other Licensed Entities to agree, and
Licensor further agrees, that service of any process, summons, notice or document by U.S.
registered mail to such person’s respective address set forth above shall be effective service of
process for any action, suit or proceeding in the state and federal courts located in the State of
New York, New York County, with respect to any matters to which it has submitted to jurisdiction as
set forth above in the immediately preceding clause (a). In addition, Licensee irrevocably and
unconditionally waives, and agrees to cause the other Licensed Entities to irrevocably and
unconditionally waive, and Licensor irrevocably and unconditionally waives, application of the
procedures for service of process pursuant to the Hague Convention for Service Abroad of Judicial
and Extrajudicial Documents in Civil or Commercial Matters.



          (c) Each party hereby irrevocably waives any right it may have, and agrees not to request, a
jury trial for the adjudication of any dispute hereunder or in connection herewith or arising out
of this Agreement or the Sublicense Agreements.



     9.8 Independent Contractors. Each party is an independent contractor and neither party’s
personnel are employees or agents of the other party for federal, state or other taxes or any other
purposes whatsoever, and are not entitled to compensation or benefits of the other. Except for the
specific obligations set forth in this Agreement, nothing hereunder shall be deemed to constitute,
create, give effect to or otherwise recognize a joint venture, partnership or business entity of
any kind, nor shall anything in this Agreement be deemed to constitute either party the agent or
representative of the other.



     9.9 Notices. All notices, demands and other communications to be given or delivered under
this Agreement shall be in writing and shall be deemed to have been given (a) when delivered if
personally delivered by hand, (b) when received if sent by an internationally recognized overnight
courier service, (c) ten (10) days after being mailed, if sent by first class mail, return receipt
requested, or (d) when receipt is acknowledged by an affirmative act of the party receiving notice,
if sent by facsimile, telecopy or other electronic transmission device (provided that such an
acknowledgement does not include an acknowledgment generated automatically by a facsimile or
telecopy machine or other electronic transmission device and further provided that recipient shall
not withhold or delay acknowledgement if actual receipt has occurred). Notices, demands and
communications to Licensor and Licensee shall, unless another address is specified in writing, be
sent to the address indicated below:



24









 





	 	 	 
	To Licensor:
	 	To Licensee:

	TDK Corporation

	 	IMN Data Storage Holdings C.V.
	13-1 Nihonbashi 1-chome, Chuo-ku

	 	c/o IMN Data Storage LLC
	Tokyo 103-8272, Japan

	 	1 Imation Place
	Attn: General Manager,

	 	Oakdale, MN 55128, USA
	          Corporate Planning Department

	 	Attn: Secretary






     9.10 Entire Agreement. This Agreement (including the Exhibits attached hereto, which are
incorporated herein by reference) constitutes the entire agreement of the parties hereto with
respect to its subject matter. This Agreement supersedes all previous, contemporaneous and
inconsistent agreements, negotiations, representations and promises between the parties, written or
oral, regarding the subject matter hereunder. There are no oral or written collateral
representations, agreements or understandings except as provided herein.



     9.11 Counterparts. This Agreement may be executed in two or more counterparts, each of which
shall be deemed an original, but all of which together shall constitute one and the same
instrument.



     9.12 Right to Compete. Nothing in this Agreement is intended to restrict Licensee from the
development, marketing, sales, and distribution of Licensed Products or similar products or
services under Trademarks other than the Licensed Trademarks. Licensor expressly acknowledges and
agrees that the activities described in the prior sentence shall be deemed not to violate any
section of this Agreement including Section 3.2.



     9.13 Export/Import Compliance. Licensee shall ensure that the sale, distribution, export and
import of Licensed Products by Licensee, and by its Affiliates, comply in all cases with all
applicable export and/or import laws of the jurisdiction in which such sales, distribution, export
or import occur, including, the Wassenaar Arrangement on Export Controls for Conventional Arms and
Dual-Use Goods and Technologies and the Foreign Exchange and Foreign Trade Law of Japan.



[Remainder of page intentionally left blank.]





25









 








     IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed as of
the date first set forth above.



	 	 	 	 	 
	 	LICENSOR:


     TDK Corporation

 	 
	 	By:  	/s/  Shiro Nomi
 	 
	 	 	Name:  	Shiro Nomi 	 
	 	 	Title:  	Senior Vice President 	 
	 
	 	LICENSEE:

 	 
	 	  	IMN Data Storage Holdings C.V., represented by IMN Data Storage LLC, its General Partner
 	 
	 
	 	 	 
	 	By:  	/s/ John L. Sullivan
 	 
	 	 	Name:  	John L. Sullivan 	 
	 	 	Title:  	Secretary 	 
	 



Trademark License Agreement

Signature Page





 









 





EXHIBIT A




LICENSED TRADEMARKS




TDK LIFE ON RECORD LOGO









TDK MARKS




TDK




DIAMOND DESIGN:








TDK DIAMOND LOGO:









A-1









 





EXHIBIT B




DEFINITIONS




     “Accessory Products” means optical disc jewel cases, optical disc storage cases and storage
racks, optical disc label kits, cleaning kits for optical discs, magnetic cleaning cartridges and
similar products that are directly related and ancillary to the end user’s use of Core Products and
have no independent utility except when used for or in conjunction with a Core Product. For the
avoidance of doubt, Accessory Products do not include products which include a power source.



     “Additional Licensed Domain Names” has the meaning set fort in Section 2.3.



     “Affiliate” means, when used with reference to any Person, any other Person that directly, or
indirectly through one or more intermediaries, has Control of the first Person, or of which the
first Person has Control, or which is under common Control with the first Person.



     “Agreement” has the meaning set forth in the Preamble.



     “Acquisition Agreement” has the meaning set forth in the Recitals.



     “Business” means the sales, service and support functions for Licensed Products bearing a
Licensed Trademark.



     “Business Day” means any day, other than weekends, on which commercial banks in New York City
are open for business.



     “Change of Control” has the meaning set forth in the Imation Agreement.



     “Confidential Information” has the meaning set forth in Section 8.1.



     “Control” of any Person means either (i) direct or indirect ownership of at least fifty-one
percent (51%) of the voting share capital of, or other analogous ownership interest in, such Person
or (ii) the power to direct or cause the direction of the management and policies of such Person,
whether through the ownership of securities, by contract or otherwise.



     “Core Products” means Current and Successor Optical Media Products, Current and Successor
Magnetic Tape Products and Current and Successor Flash Memory Products.



     “Current Flash Memory Products” means RRM Products that Licensor or Imation has commercialized
as of the Effective Date and that are in the form of (a) a USB flash device which directly connects
to a computer through a USB interface or (b) a flash card (such as Compact Flash, SmartMedia, SD
Memory Card), in either case in which the media is NAND or NOR circuit type, non-volatile computer
memory where each memory cell is comprised of a MOSFET structure having a floating gate region.



     “Current Magnetic Tape Products” means RRM Products that Licensor or Imation has
commercialized as of the Effective Date in which the storage medium consists of magnetic tape that
is written to and read from using a magnetic head while the magnetic tape is being spooled.



B-1









 




For the avoidance of doubt, Current Magnetic Tape Products include, but are not limited to,
LTO tape, DLTtapeIV, SuperDLTtape, audio tape, DDS/DAT, 8 mm tape, DVC tape, VHS tape, VHS-C tape,
microcassette tape and endless cassette tape, and commercialized metal-evaporated (ME) tape
formats.




     “Current Optical Media Products” means RRM Products that Licensor or Imation has
commercialized as of the Effective Date in which the storage medium consists of physical discs that
are written to and read from using optical and/or magneto-optical means while the disc is being
spun. For the avoidance of doubt, Current Optical Media Products include, but are not limited to,
CDs, DVD, MO, MiniDisc, HD-DVD, and Blu-ray media.



     “Discloser” has the meaning set forth in Section 8.1.



     “Display” has the meaning set forth in Section 3.1.



     “Dispute” has the meaning set forth in Section 4.3.



     “Divestiture” has the meaning set forth in Section 5.4.



     “Domain Name Regulation” has the meaning set forth in Section 2.3.



     “Effective Date” has the meaning set forth in Section 5.1.



     “Existing Programs” has the meaning set forth in Section 2.12(b)(i).



     “Further Sublicense Agreement” has the meaning set forth in Exhibit G(II), Section
2.10.



     “Headphone Products” means headphone products that have been commercialized by Licensor as of
the Effective Date and are listed on Exhibit C and successor products that are based on the
same fundamental structure and technology as such headphone products, including products that are
on the migration path of such products.



     “Imation” has the meaning set forth in the Recitals.



     “Imation Agreement” has the meaning set forth in the Recitals.



     “Indemnified Party” has the meaning set forth in Section 6.3.



     “Indemnifying Party” has the meaning set forth in Section 6.3.



     “Licensed Entity” means a Qualified Entity which has executed a Sublicense Agreement pursuant
to Section 2.5 hereof.



     “Licensed Products” means Current and Successor Optical Media Products, Current and Successor
Magnetic Tape Products, Current and Successor Flash Memory Products, Accessory Products, Headphone
Products, Speaker Products, and other RRM Products approved pursuant to Article IV of the
Imation Agreement but does not include Medical Image Data Recording Media or Specific Broadcast
Media.



B-2









 





     “Licensee” has the meaning set forth in the Preamble.



     “Licensed Trademarks” means those Trademarks listed on Exhibit A.



     “Licensor” has the meaning set forth in the Preamble.



     “Licensor Products” means products that Licensor manufactures, distributes, or sells under a
Licensed Trademark that are not Licensed Products.



     “Logo Manual” has the meaning set forth in Section 3.1.



     “Material Breach” means a breach of this Agreement that is material in relation to the
totality of the transactions and relationships contemplated by the Acquisition Agreement, including
those provided for in this Agreement and in the other Ancillary Agreements, as the latter term is
defined in the Acquisition Agreement. Without limiting the generality of the foregoing, the
purported transfer or assignment of this Agreement in violation of Section 9.1 shall be
considered a Material Breach.



     “Medical Image Data Recording Media” means media that are specifically intended for recording
patient medical image data, are expressly and solely marketed for use in such medical applications
and are labeled as such.



     “Notice of Alleged Infringement” has the meaning set forth in Section 2.9.



     “Person” means an individual, corporation, partnership, limited partnership, limited liability
company, unincorporated association, trust, joint venture, union or other organization or entity,
including a governmental entity.



     “Product Site” has the meaning set forth in Section 2.3.



     “Promotional Material” means any advertising, marketing or promotional materials with respect
to any Licensed Product.



     “Qualified Entity” means Licensee and any entity in the Territory that is (a) wholly-owned by
Imation directly or indirectly, but only for so long as such entity is wholly-owned by Imation, or
(b) listed on Exhibit D, but only for so long as (i) Imation (or a wholly-owned subsidiary
of Imation) maintains the ownership interest that it has in such entity as of the Effective Date as
set forth on Exhibit D and (ii) any other shareholder in such entity continues to maintain
at least the ownership interest that it has in such entity as of the Effective Date as set forth on
Exhibit D or, if it transfers any shares, it transfers those shares to Imation or a
wholly-owned subsidiary of Imation. In the event that Licensee wishes to add a proposed Qualified
Entity to Exhibit D, Licensee shall notify Licensor in writing of the jurisdiction of the
entity, purpose of the addition, and direct and indirect ownership interest of such entity and
Licensor shall have the right to approve or disapprove such request, but shall not unreasonably
withhold or delay its approval of such request. For purposes of determining whether an entity is
wholly-owned for purposes of the foregoing, the parties will disregard a de minimis number of
shares held by a nominee if and to the extent such a nominee is required to hold such shares in
connection with the due formation of the entity, or to qualify as a director, in each case under
the



B-3









 







laws of its jurisdiction of incorporation, provided that the holder of such shares (i) holds
no more shares than is required by such statute, (ii) does not have the power or authority to
direct or cause the direction of the management and policies of such entity, whether through the
ownership of securities, by contract or otherwise, except director nominees may have such rights to
the extent they can exercise them solely in accordance with the directions of Imation, and (iii)
shall only be disregarded for so long as such legal requirement exists and for as long thereafter,
up to a maximum of three (3) months as may reasonably be necessary for Imation to acquire the
shares held by such nominee.



     “Quality Guidelines” has the meaning set forth in Section 3.1.



     “Quality Manual” has the meaning set forth in Section 3.1.



     “Recipient” has the meaning set forth in Section 8.1.



     “Relationship Manager” has the meaning set forth in the Imation Agreement.



     “Removable Recording Media (“RRM”) Products” means finished products for use by end users
consisting primarily of physical media designed for the storage of information, images, or other
data in digital or analog form which are (a) designed and intended to be readily insertable into
and removable from a storage device or system by such end user and (b) do not incorporate or
provide any other material functions (such as writing, reading, recording, retrieving, computing,
processing, transmitting, receiving, displaying, measuring, detecting, reproducing or other
functionality with respect to data). For the avoidance of doubt, “RRM Products” does not include
products that include components such as heads or power sources because such products provide
functions other than storage of data. Notwithstanding the foregoing limitation on incorporating or
providing any other material functions, (1) magnetic tape products in cartridge form (e.g., LTO
tape) that include an RFID tag/chip shall still constitute RRM Products and Current or Successor
Magnetic Tape Products if they otherwise meet the requirements for inclusion in the definitions of
both RRM Products and Current or Successor Magnetic Tape Products, and (2) USB flash devices and
flash cards that include an integrated circuit controller for controlling the transfer of data to
and from such USB flash devices or flash cards and a crystal oscillator to generate a clock signal
for use by such controllers shall still constitute Current or Successor Flash Memory Products if
they otherwise meet the requirements for inclusion in the definitions of both RRM Products and
Current or Successor Flash Memory Products.



     “Significant Breach” means any Licensee breach of this Agreement that has an adverse effect
causing or, if continued, likely to cause significant harm to Licensor’s ownership of the Licensed
Trademarks, the goodwill associated therewith or Licensor’s ability to enforce any of its rights
therein. A Significant Breach may or may not be a Material Breach.



     “Speaker Products” means speaker products (a) that have been commercialized by Licensor as of
the Effective Date and are listed on Exhibit E and (b) successor products that are (i)
designed and intended to be used with personal computers, laptops, handheld computers, portable
audio players and similar consumer products and (ii) have an integrated power supply



B-4









 







that does not exceed 50 watts, including in each case products that are on the migration path
of such products.



     “Specific Broadcast Media” means RRM Products that are sold to NHK broadcast network solely
for the production of audio and video content for use in NHK’s broadcast programming. For the
avoidance of doubt, Specific Broadcast Media does not cover any RRM Products that are sold to
customers other than NHK broadcast network.



     “Strategic Relationship Committee” has the meaning set forth in the Imation Agreement.



     “Sublicense Agreement” has the meaning set forth in Section 2.5.



     “Successor Flash Memory Products” means RRM Products that are in the form of (i) a USB flash
device which directly connects to a computer through a USB interface or (ii) a flash card (such as
Compact Flash, SmartMedia, SD Memory Card), in either case in which the media is NAND or NOR
circuit type, non-volatile computer memory where each memory cell is comprised of a MOSFET
structure having a floating gate region but only if such products (a) incorporate read/write speed
and recording capacity enhancements to Current Flash Memory Products, and (b) are based on the same
fundamental structure and technology as Current Flash Memory Products, including products that are
on the migration path of Current Flash Memory Products.



     “Successor Magnetic Tape Products” means RRM Products in which the storage medium consists of
magnetic tape that is written to and read from using a magnetic head while the magnetic tape is
being spooled, provided that such products are (a) product line extensions of or on the migration
path from, and (b) based on the same fundamental technology as Current Magnetic Tape Products. For
the avoidance of doubt, Successor Magnetic Tape Products include, but are not limited to,
Licensee’s Multi-Terabyte Tape Storage (MTS) program as well as magnetic tape formats launched by
IBM, Sun StorageTek, the LTO Consortium, or Quantum that are intended to be successor products to
their existing tape products.



     “Successor Optical Media Products” means RRM Products in which the storage medium consists of
physical discs that are written to and read from using optical and/or magneto-optical means while
the disc is being spun, provided that such products are (a) product line extensions of or on the
migration path from, and (b) based on the same fundamental technology as Current Optical Media
Products. For the avoidance of doubt, Successor Optical Media Products include, but are not
limited to, holographic media and Blu-Ray and HD-DVD recordable, rewritable, and RAM discs,
including single layer, dual layer, and dual sided discs, all speed changes for such discs, and
including small format versions of such discs.



     “Supply Agreement” has the meaning set forth in the Recitals.



     “TDK Marks” has the meaning set forth in Section 2.1.  



     “Territory” means worldwide other than the United States and its territories and possessions.



B-5









 





     “Trademark” means trademarks, trade names, service marks, service names, design marks, logos,
trade dress, or other indicators of identification of origin, whether registered or unregistered.



     “Updates” has the meaning set forth in Section 3.1.




B-6









 








EXHIBIT C




HEADPHONE PRODUCTS




	 	 	 	 	 
	Market	 	Product Name	 	Product Number
	Japan

	 	Headphone
	 	TEC-BP-100
	 

	 	 	 	TEC-CP-100
	 

	 	 	 	TEC-HP-100
	 

	 	 	 	TEC-MP-100
	 

	 	 	 	TEC-NP-100
	 
	Europe

	 	Headphone
	 	SHP-BP100
	 

	 	 	 	SHP-CP100
	 

	 	 	 	SHP-HP100
	 

	 	 	 	SHP-NP100
	 

	 	 	 	SHP-MP100
	 
	Americas

	 	Headphone
	 	BP100
	 

	 	 	 	CP100
	 

	 	 	 	HP100
	 

	 	 	 	MP100
	 

	 	 	 	NP100
	 

	 	 	 	IE100
	 

	 	 	 	NC100
	 
	Asia Pacific & Africa

	 	Ear Phone
	 	CP100
	(including Oceania)

	 	 	 	BP100
	 

	 	 	 	HP100
	 

	 	 	 	MP100
	 

	 	 	 	NP100
	 
	 

	 	Headphone
	 	EB-100
	 

	 	 	 	EB-200
	 

	 	 	 	EB-300BK
	 

	 	 	 	EB-300WH
	 

	 	 	 	EB-400BL
	 

	 	 	 	EB-400PK
	 

	 	 	 	EB-400GR
	 

	 	 	 	EB-500
	 

	 	 	 	ST-100
	 

	 	 	 	ST-200BK
	 

	 	 	 	ST-200WH
	 

	 	 	 	ST-PR300
	 

	 	 	 	ST-PR400
	 

	 	 	 	NC-100
	 

	 	 	 	NC-200
	 

	 	 	 	BT-100






C-1









 





EXHIBIT D




LIST OF QUALIFIED ENTITIES




(SPECIFYING, FOR EACH ENTITY, THE NUMBER OF SHARES OR OTHER

EQUITY INTERESTS OUTSTANDING AS OF THE EFFECTIVE DATE, AND THE

HOLDER OF ALL SUCH SHARES OR OTHER EQUITY INTERESTS)




**


 




			
	**	 	The appearance of a double asterisk denotes
confidential information that has been omitted from the exhibit and filed
separately, accompanied by a confidential treatment request, with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities
Exchange Act of 1934.





D-1









 





EXHIBIT E




SPEAKER PRODUCTS




	 	 	 	 	 
	Market	 	Product Name	 	Product No.
	Japan

	 	Speaker
	 	SP-XA10WL
	 

	 	 	 	SP-XA10WR
	 

	 	 	 	SP-XA10WS
	 

	 	 	 	SP-XA40WB
	 

	 	 	 	SP-XA40WL
	 

	 	 	 	SP-XA40WR
	 

	 	 	 	SP-XA40WS
	 

	 	 	 	SP-XA40WW
	 

	 	 	 	SP-XA60
	 

	 	 	 	SP-XA60W
	 

	 	 	 	SP-XA80
	 

	 	 	 	SP-XA160
	 
	Europe

	 	Speaker
	 	MMS-XA40WCLG
	 

	 	 	 	MMS-XA40WCS
	 

	 	 	 	MMS-XA40WCO
	 

	 	 	 	MMS-XA40WCLG-UK
	 

	 	 	 	MMS-XA40WCO-UK
	 

	 	 	 	MMS-XA40WCS-UK
	 
	Asia Pacific & Africa

	 	Speaker
	 	TR-XA10L-AU
	(including Oceania)

	 	 	 	TR-XA10R-AU
	 

	 	 	 	TR-XA10S-AU
	 

	 	 	 	TR-XA40L-AU
	 

	 	 	 	TR-XA40R-AU
	 

	 	 	 	TR-XA40S-AU
	 

	 	 	 	TR-XA60W-AU
	 

	 	 	 	TR-XA60-AU
	 

	 	 	 	TR-XA80W-AU
	 
	 

	 	iPOD DOCK
	 	ADS-01
	 

	 	 	 	ADS-02
	 
	Oceania

	 	CD Sound System
	 	NX-03CDMP3-SV






E-1









 





EXHIBIT F




INITIAL QUALITY GUIDELINES




Not included herein.




F-1









 





EXHIBIT G




FORM OF SUBLICENSE AGREEMENT




G-1









 





EXHIBIT G(II)




SUBLICENSE AGREEMENT




[For the sublicense between IMN CV and Imation Europe BV:]




     This Trademark Sublicense Agreement (this “Sublicense Agreement”) is made as of                     ,                      by and among
IMN Data Storage Holdings CV, a Dutch private limited partnership (besloten CV) (“Sublicensor”)]
and Imation Europe BV, a                      (“Sublicensee”).



RECITALS




     WHEREAS, TDK Corporation (“Licensor”) and Sublicensor are parties to a Trademark License
Agreement dated July 31, 2007 (the “Brand License Agreement”) that covers all countries outside the
United States and its territories;



     WHEREAS, Licensor and Imation Corp. are also parties to a Trademark License Agreement dated
July 31, 2007 (the “Imation License Agreement”) that covers the United States and its territories;



     WHEREAS, Sublicensor wishes to grant a sublicense of its rights to Sublicensee, subject to the
terms and conditions hereof;



     NOW, THEREFORE, in consideration of the mutual promises and covenants set forth herein, the
parties hereto agree as follows:1



ARTICLE I




DEFINITIONS; RELATIONSHIP TO OTHER AGREEMENTS




     1.1 Certain Definitions. Capitalized terms not otherwise defined in this Sublicense Agreement
shall have the meanings set forth in Exhibit [G(II)-]1.



ARTICLE II




LICENSE




     2.1 Trademark License Grant. Subject to compliance with the terms and conditions of this
Sublicense Agreement, Sublicensor hereby grants to Sublicensee a non-transferable,
non-sublicensable (except as permitted in Section 2.10), [in the Territory],
[nonexclusive/exclusive], and restricted license, during the terms set forth below, to use,
reproduce and display the Trademarks set forth on Exhibit [G(II)-]2 (“Licensed Trademarks”)
solely for the marketing, promotion, advertisement, distribution, lease or sale of Licensed
Products. Sublicensee acknowledges that the Licensed Products do not include Medical Image Data
Recording Media





 




			
	1	 	Exhibit G contains only the minimum
provisions that Sublicensor must include. Sublicensor is free to include
additional terms so long as they are consistent with these terms.




G(II)-1









 









or Specific Broadcast Media and that Licensor reserves all worldwide rights to use, reproduce,
and display any Trademark (including the TDK Marks) but not the Licensed Trademarks for the
marketing, promotion, advertisement, distribution, lease or sale of Medical Image Data Recording
Media and Specific Broadcast Media, and to grant rights to others to do the same. All rights of
Sublicensor or Licensor in and to the Licensed Trademarks not expressly granted under this
Article II are reserved by Sublicensor or Licensor. The term of license grants are as set
forth below:2




          (a) Core Products; Accessory Products: The term of the license for use of the
Licensed Trademarks in connection with Core Products and Accessory Products shall be ___




          (b) Speaker Products and Headphone Products: The term of the license for use of the
Licensed Trademarks in connection with Speaker Products and Headphone Products shall be
___.




          (c) RRM Products: The term of the license for use of the Licensed Trademarks in
connection with any other RRM Product shall be ___.




     2.2 Use-Up Rights for TDK Marks. Sublicensee shall have the right, in the Territory, to (a)
sell or otherwise dispose of any Licensed Products that bear a TDK Mark transferred as of the
Effective Date in accordance with the terms of the Acquisition Agreement, and (b) use existing
stocks of packaging, Promotional Material, and other documents and materials that bear a TDK Mark,
transferred as of the Effective Date in accordance with the terms of the Acquisition Agreement, in
connection with such sales or other dispositions, in each case for up to one (1) year after the
Effective Date, provided that Sublicensee shall seek to migrate all sales and use of materials to
the Licensed Trademarks as promptly as reasonably practicable, consistent with business
requirements, over such period.



     2.3 Restrictions. As an express condition to, and in material consideration for, the
licenses granted to Sublicensee hereunder, Sublicensee expressly agrees to the following
restrictions as to its use of the Licensed Trademarks:



          (a) Sublicensee shall not do anything inconsistent with Licensor’s ownership of the Licensed
Trademarks. Without limiting the generality of the foregoing, Sublicensee shall not challenge the
validity of any Licensed Trademark, Licensor’s ownership thereof, or the enforceability of
Licensor’s rights therein.




          (b) Sublicensee shall not use, reproduce or display (or authorize the use, reproduction or
display of) the Licensed Trademarks in any manner whatsoever other than as expressly authorized by
this Sublicense Agreement.




          (c) Except as expressly permitted by Section 2.2, during the term and after any
termination of this Sublicense Agreement, Sublicensee shall not use any service mark, service name,
trade name, trademark, design or logo that is confusingly similar to any Licensed Trademark or any
element thereof, including any mark, word or design that incorporates TDK






 




			
	2	 	Specified term must in all cases be no longer
than the Brand License Agreement.




G(II)-2









 









Marks, or any mark, word, logo or design confusingly similar thereto. Without limiting the
generality of the foregoing, during the term and after any termination of this Sublicense
Agreement, Sublicensee shall not use the word “TDK” or the TDK diamond logo in any corporate name
or in any domain name [other than as permitted by the sublicense granted in Section 2.12
below]. For the avoidance of doubt, to the extent that an element of a Licensed Trademark (but in
no event a TDK Mark) is expressly disclaimed in a trademark registration (such as “mobile” in TDK
MOBILE), Sublicensee shall not be prohibited from using such element in its own Trademarks by the
terms hereof.




          (d) Except for existing inventory of Licensed Products or existing stocks of packaging,
Promotional Material, and other documents and materials that bear a TDK Mark that Licensee is
permitted to use pursuant to Section 2.2 (which shall be used in the form transferred as of
the Effective Date, without alteration), Sublicensee shall not use any of the Licensed Trademarks
together, or use any Licensed Trademark in combination with any other trademark, service mark,
trade name, trading style, fictitious business name, name, character, symbol, design, likeness or
literary or artistic material in a manner that create a unitary or combination Trademark without
the prior written consent of Licensor. Notwithstanding the foregoing, Sublicensee may use (i) any
Licensed Trademarks together if Licensor has a general practice of using such Licensed Trademarks
together and (ii) any Trademarks listed on an exhibit to this Sublicense Agreement but not in a
manner that might create a unitary or combination Trademark.




          (e) For a period that runs for one (1) year prior to the expiration of the separate licenses
for the Speaker Products and Headphone Products and for each RRM Product licensed in this
Sublicense Agreement, and for a period that runs for one (1) year prior to the termination of the
Sublicense Agreement for the Core Products and Accessory Products, Sublicensee may Display one or
more Imation Trademarks on or in connection with the Licensed Products as part of a transition plan
that is provided by Sublicensor to Sublicensee.




          (f) Sublicensee shall not register any Licensed Trademark, and Licensor shall retain the
exclusive right to apply for and obtain registrations for each Licensed Trademark throughout the
world. Sublicensee shall not register any domain name containing the word TDK.




          (g) Sublicensee shall not assert any adverse claim against Licensor based upon Licensor’s use
of any Licensed Trademark.




     2.4 Patent License. Sublicensor hereby grants to Sublicensee a royalty-free,
non-transferable, nonsublicensable (except as permitted in Section 2.10), non-exclusive
license (not including manufacturing or have made rights) in the Territory under any patents of
Licensor or its Affiliates that, as of the Effective Date, Licensor has the right to grant licenses
without payments to third parties, for the marketing, distribution, or sales of Current Magnetic
Tape Products and Current Optical Media Products which, in both cases, Licensor or Imation Corp.
has commercialized as of the Effective Date, provided that if Sublicensee or any of its Affiliates
asserts a patent against Licensor or any of its Affiliates, the sublicense granted in this
Section 2.4 shall terminate and further provided that Sublicensee and its Affiliates shall
not sue Licensor or any of its Affiliates for damages arising before termination of the license.



G(II)-3









 





     2.5 Notice. In connection with the use of the Licensed Trademarks on packaging or Promotional
Material for the Licensed Products, Sublicensee shall include a trademark notice in a form reading:
“The [TDK LIFE ON RECORD Logo] is a trademark of TDK Corporation,” except that Sublicensee may use
the typed words “TDK Logo” instead of the actual logo where the notice would be too small to show
the actual logo clearly or where the notice is embedded within other text. Further, with respect
to any Licensed Product other than Core Products or Accessory Products, Sublicensee shall indicate
when using a Licensed Trademark on packaging or Promotional Material for such product that “The
[TDK LIFE ON RECORD Logo] is used under a trademark license from TDK Corporation,” subject to the
same exception as the previous sentence. [Subject to Section 2.12,] if a Licensed
Trademark is used multiple times on or in packaging or Promotional Material, the notice and
statement regarding licensed use need only be used for the first prominent use of the Licensed
Trademark on or in such packaging or Promotional Material. Notwithstanding anything to the
contrary, the requirements of this Section 2.5 shall not apply to existing stocks of
packaging, Promotional Material, and other documents and materials that bear a TDK Mark that
Licensee is permitted to use pursuant to Section 2.2.



     2.6 Filing, Maintenance, and Renewal. Sublicensee agrees to reasonably cooperate with
Licensor’s preparation and filing of any applications, renewals or other documentation necessary or
useful to protect Licensor’s intellectual property rights in the Licensed Trademarks.



     2.7 Enforcement and Defense of Infringement Claims.




          (a) Notification: Sublicensee shall reasonably cooperate in providing notice to
Sublicensor (a “Notice of Alleged Infringement”) if Sublicensee becomes aware of any use of a
Licensed Trademark, or element thereof, or of any Trademark on a Licensed Product, which may be
confusingly similar to any Licensed Trademark, or element thereof, by any Person.




          (b) Action to Enforce: Sublicensee shall have no right to institute and/or pursue any
proceedings to enforce any rights in the Licensed Trademarks, unless otherwise authorized by
Licensor.




          (c) Defense of Third Party Claims: Licensor shall have the sole right to defend the
Licensed Trademarks against imitation, infringement or any claim of prior use. Sublicensee shall
cooperate fully with Licensor, at Licensor’s reasonable request and expense, in connection with the
defense of any such claim.




     2.8 Reservation of Rights. Sublicensee acknowledges that Licensor is the sole owner of all
right, title and interest in and to the Licensed Trademarks, and that Sublicensee has not acquired,
and shall not acquire, any right, title or interest in or to the Licensed Trademarks except the
limited rights to use such Licensed Trademarks expressly granted to Sublicensee under this
Sublicense Agreement. Licensor shall retain all goodwill associated with the Licensed Trademarks.
Notwithstanding any other provision hereof, nothing in this Sublicense Agreement shall prohibit
Licensor from marketing, distributing or selling any products on an OEM basis, provided such
products do not bear any Licensed Trademark or any confusingly similar variation thereof.



G(II)-4









 





     2.9 Removing Licensed Trademarks from License. At any time during the term of this Sublicense
Agreement, Sublicensor may remove a Licensed Trademark from the scope of the license if Licensor
removes such Licensed Trademark from the scope of the Brand License Agreement.



     2.10 Sublicense Rights. Sublicensee shall have the right to grant further sublicenses of its
rights under Sections 2.1, 2.2, 2.4, 2.11, [and 2.12] only to Qualified Entities, without
the right for such entities to grant further sublicenses. Prior to, and as a condition to the
effectiveness of, any sublicense to a Qualified Entity pursuant to the preceding, the Qualified
Entity shall enter into an agreement that contains, at a minimum, the provisions in the form of
attached [Exhibit G(II)-]-8 (“Further Sublicense Agreement”) whereby the Qualified Entity
(a) acknowledges receipt of a copy of this Sublicense Agreement, (b) agrees to act in accordance
with the terms and conditions of this Sublicense Agreement, and (c) expressly confirms that
Licensor is an intended third party beneficiary thereof. Sublicensee will promptly notify Licensor
and Sublicensor of the execution of each Further Sublicense Agreement, and provide Licensor and
Licensee with a copy of such executed Further Sublicense Agreement. When an entity ceases to be a
Qualified Entity, the sublicense rights to that entity shall immediately and automatically
terminate without the further act of any party. For purposes of clarification, if Sublicensor
ceases to be a Qualified Entity, any sublicense rights of Sublicensee (and any Further Sublicense
Agreement granted by Sublicensee) shall immediately and automatically terminate without the further
act of any party.



     2.11 Co-Branding Requests by Sublicensee. If Sublicensee wishes to use the Licensed
Trademarks in connection with a co-branding program, Sublicensee shall first seek Sublicensor’s
written approval, which may be granted or refused in Sublicensor’s sole discretion. After its
approval, Sublicensor must obtain Licensor’s written approval, which may be granted or refused in
Licensor’s sole discretion. [Except for Existing Programs (as defined in subsection (a)
below),]3 Sublicensee shall present such plan (in reasonable detail) in writing to
Sublicensor and then if approved by Sublicensor to Licensor.



     (a) [As of the Effective Date, Licensor and Sublicensor hereby approve the Sublicensee’s
continued participation in the co-branding of the products listed on Exhibit [G(II)-]7
(“Existing Programs”), solely in Japan, in the same manner that Licensor had been co-branding such
products immediately prior to the Effective Date for up to two (2) years after the Effective Date,
provided that Sublicensee shall begin using the Licensed Trademarks in place of any TDK Mark used
in such co-branding programs as soon as practicable but in any event within three (3) months after
the Effective Date; provided, further that — notwithstanding the foregoing clause — Sublicensee
shall have the right to use co-branded product inventory and Promotional Material in existence on
the Effective Date, as part of Existing Programs, for up to one (1) year after the Effective Date
to the extent, and on the terms, permitted by Section 2.2.]



     (b) If Sublicensee wishes to request additional co-branding rights [(including the extension
of any of the Existing Programs)], Sublicensee shall first seek Sublicensor’s written approval,
which may be granted or refused in Sublicensor’s sole discretion. After its approval, Sublicensor
must obtain Licensor’s written approval, which may be granted or refused in





 




			
	3	 	Bracketed language references to Existing
Programs. Include bracketed language if Territory includes Japan.




G(II)-5









 









Licensor’s sole discretion. Sublicensee’s proposed plan provided to Sublicensor and then if
approved by Sublicensor to Licensor shall specify (a) the proposed design image (specifying each
brand to be utilized, and the form of co-brand, including spacing and other fixed attributes); (b)
the applicable sales territory; (c) the retailer with which the product will be co-branded; and (d)
each category of product or products. Sublicensee’s proposal may include multiple representations
of the co-branding materials for approval. Sublicensee shall also provide any additional
information reasonably requested by Sublicensor or Licensor. Licensor shall seek in good faith,
but without obligation, to approve or disapprove Sublicensor’s request within three weeks of its
receipt of the completed plan. Unless Sublicensor or Licensor otherwise states in writing, the
term of any new co-branding program [(or any extension of an Existing Program)] shall be for a two
(2) year period, starting from the date of approval.




     (c) If Sublicensee wishes to make any change to an approved co-branding program [(including
any Existing Program)], Sublicensee shall first seek Sublicensor’s written approval, which may be
granted or refused in Sublicensor’s sole discretion. After its approval, Sublicensor must obtain
Licensor’s written approval, which may be granted or refused in Licensor’s sole discretion.
Sublicensee shall provide the same or similar types of information in writing to Sublicensor and
then if approved by Sublicensor to Licensor as set forth in subsections (ii)(a) to (d). Licensor
shall seek in good faith, but without obligation, to approve or disapprove Sublicensor’s request
within three weeks of its receipt of the completed plan.



     (d) Sublicensor or Licensor shall have the right to terminate any co-branding program
[(including any Existing Program)] in the event Sublicensee materially fails to conform to any
co-branding program requirement or engages in co-branding that is inconsistent, in a material way,
with the materials provided for review in connection with the approval process [(or in the case of
any Existing Program, the co-branded products in that program as of the Effective Date)] if
Sublicensee fails to correct any nonconformance within [ ] days after receiving written notice from
Sublicensor or Licensor.



     2.12 [If sublicense to website rights granted]. Website Rights. Sublicensee may
maintain a website, designated by the URL, <http://www.[___]/>, exclusively for
the purpose of promoting Licensed Products as set forth in this Sublicense Agreement (each a
“Product Site”). During the term of the Sublicense Agreement, Sublicensor grants to Sublicensee a
non-transferable, non-sublicensable (except as permitted in Section 2.10),
[nonexclusive/exclusive] and restricted license in the Territory to (i) use the domain name,
___for the Product Site, and (ii) refer to the URL on Licensed Products and on their
packaging or Promotional Material.



          (a) The “About Sublicensee,” “Contact Us” or equivalent section of each Product Site shall be
reasonably prominent and shall identify Sublicensee as the contact and shall contain the following
statement: “The products described on this site are made by or on behalf of [Sublicensee] and use
of the [TDK LIFE ON RECORD Logo] is pursuant to a trademark license from [Licensor].”




          (b) The Product Site shall be deemed to be “Promotional Material” for all purposes hereof, and
shall be subject to the terms and conditions applicable to Promotional Material under this
Sublicense Agreement. Without limiting the generality of the foregoing,




G(II)-6









 







Sublicensee shall (i) not display or use a hypertext reference link (“Link”) in a manner that
causes either the Licensor or a Product Site or any portion of its content to be associated with
any advertising or sponsorship not part of such site; (ii) not display or use a Link in a manner
that could cause confusion, mistake, or deception; (iii) display disclaimers on the Product Site
pursuant to the Quality Guidelines; and (iv) maintain and enforce terms of use and other policies
applicable to the Product Site that are commercially reasonable.




          (c) Sublicensee shall have no rights to register the URL for the Product Site; all rights with
respect to registration and enforcement of such rights, as between Sublicensor and Sublicensee,
reside with Sublicensor.




ARTICLE III




QUALITY CONTROL




     As an express condition to, and in material consideration for, the licenses granted to
Sublicensee hereunder, Sublicensee expressly agrees to the following restrictions as to its use of
the Licensed Trademarks:



     3.1 Trademark Guidelines. Sublicensee shall not use, reproduce or display any Licensed
Trademark in any manner whatsoever other than as expressly authorized in the quality control
guidelines for the Licensed Trademarks (“Quality Guidelines”), including guidelines regarding how
each Licensed Trademark is used, presented and displayed (“Display”). Notwithstanding anything to
the contrary, the requirements of this Section 3.1 shall not apply to existing inventory of
Licensed Products or to existing stocks of packaging, Promotional Material, and other documents and
materials that bear a TDK Mark, in each case that Licensee is permitted to use pursuant to
Section 2.2 (which shall be used in the form transferred as of the Effective Date, without
alteration). The Quality Guidelines shall consist of two elements: guidelines related to Display
(such guidelines shall be contained in a “Logo Manual”) and guidelines regarding the nature and
quality of products and services associated with the Licensed Trademark (such guidelines shall be
contained in a “Quality Manual”). The initial Quality Guidelines are attached as Exhibit
[G(II)-]3. Sublicensee shall promptly cure any breach of the Quality Guidelines upon notice
from Sublicensor or from Licensor, provided that Sublicensee shall have a reasonable time to comply
with Updates (as defined below), including a reasonable amount of time to exhaust existing
inventories of Promotional Material, packaging, and Licensed Product, except that Sublicensee shall
not have rights to exhaust existing inventories if such inventories are in material noncompliance
with the previous Quality Guidelines or if the existing Licensed Products (or use or distribution
thereof) would violate any applicable law. Notwithstanding anything to the contrary in this
Section 3.1, if Sublicensee purchases products covered by the Supply Agreement from third
parties as permitted under the terms of the Supply Agreement, Sublicensee shall not be in breach of
provisions of the Quality Manual to the extent that such Quality Manual refers to standards or
specifications that are not performance or quality-related specifications (e.g., the use of
Licensor dye #25 in describing a color or other requirements for the product not tied to the
performance of the product), provided that Sublicensee shall comply with the Logo Manual.
Sublicensee acknowledges that the Quality Guidelines may be updated pursuant to the Brand License
Agreement (“Updates”) and Sublicensee shall comply with such Updates.



G(II)-7









 





     3.2 Conduct of Business. Sublicense shall use the Licensed Trademarks in a manner that does
not derogate Licensor’s rights in the Licensed Trademarks or the value of the Licensed Trademarks,
and shall take no action that would interfere with, diminish or tarnish those rights or value.



     3.3 Cooperation. Sublicense shall cooperate fully with Sublicensor and Licensor in enabling
Licensor to ascertain that the Licensed Products other than those existing inventories of Licensed
Products that Licensee is permitted to use pursuant to Section 2.2 meet Licensor’s quality
standards. Such cooperation shall include, upon request, providing Sublicensor or Licensor
promptly with data regarding communications from third parties regarding the quality of specific
Licensed Products, providing Sublicensor or Licensor with names and addresses of vendors and
suppliers producing Licensed Products or components thereof to be sold under a Licensed Trademark,
and providing Sublicensor or Licensor with access to product packaging and distribution facilities
for such products for reasonable inspection by Licensor.



     3.4 Cessation of Licensed Product Sales; Recall. Sublicensor or Licensor shall have the right
to request that Sublicensee immediately cease selling a Licensed Product, or revise or cease use of
any or all Promotional Material, and Sublicensee shall promptly comply, upon written notice to
Sublicensee if the condition of such Licensed Product or Promotional Material could reasonably be
expected to materially and adversely affect Licensor’s business or reputation. For the avoidance
of doubt, if there is a reasonable basis for believing that a product poses a danger to person or
property, such product shall be considered a product that could be reasonably expected to
materially and adversely affect Licensor’s business or reputation. Further, Sublicensor or
Licensor shall have the right to request a product recall if there is a reasonable basis for
believing that the product or category of products poses a danger to person or property, and
Sublicensee shall promptly comply upon written notice of such request. If Sublicensee wishes to
resume sale of a product, Licensor shall have the right to approve such resumption.



     3.5 Samples. Sublicensee shall submit to Sublicensor or Licensor upon reasonable request,
specimens of uses of the Licensed Trademarks, including: (a) representative products that will
bear any Licensed Trademark or be marketed, promoted, advertised, distributed or sold using any
Licensed Trademark; and (b) samples of all Promotional Material. If, after review of such
materials or samples, Sublicensor or Licensor is concerned about compliance with any aspect of this
Sublicense Agreement, Sublicensee shall provide such additional materials and samples as
Sublicensor or Licensor may reasonably request. If Sublicensor or Licensor discovers any improper
use of the Licensed Trademarks in any such submission, Sublicensee shall remedy the improper use
immediately upon written notice. Notwithstanding anything to the contrary, the requirements of
this Section 3.5 shall not apply to existing inventory of Licensed Product or to existing
stocks of packaging, Promotional Material, and other documents and materials that bear a TDK Mark,
in each case that Licensee is permitted to use pursuant to Section 2.2.



     3.6 Inspections. In addition to Section 3.3, Sublicensee shall cooperate with
Sublicensor or Licensor to ensure that quality standards applicable to Licensed Products other than
those existing inventories of Licensed Products acquired pursuant to Section 2.2 are met by
permitting Sublicensor or Licensor to inspect only those manufacturing and other facilities



G(II)-8









 







directly related to the manufacture of Licensed Products, upon reasonable notice and no more
than once a year, and only in a manner that will not unreasonably interfere with Sublicensee’s
business activities, provided that Sublicensor shall arrange for and accompany Licensor on any
inspections to third-party facilities.



     3.7 Standards Compliance. If Sublicensee publicly states that any Licensed Product is
compliant with any applicable industry standard, Sublicensee shall ensure that such Licensed
Product is fully compliant with all mandatory requirements of such standard, except for compliance
with such applicable industry standards for which Licensor is responsible under the Supply
Agreement. For the avoidance of doubt, any use of a logo or trademark associated with an industry
standard (e.g., the logo “DVD” or “Blu-ray”) shall be deemed a public statement that the Licensed
Product is compliant with the applicable industry standard.



ARTICLE IV




EFFECTIVENESS; TERM, SUSPENSION AND TERMINATION




     4.1 Effectiveness; Term. This Sublicense Agreement shall become effective on ___
(the “Effective Date”), and shall continue in full force and effect unless and until terminated as
provided in this Article IV, for the term of the licenses specified in Section 2.1.



     4.2 Suspension. The license granted in this Sublicense Agreement shall be suspended, as to
any Licensed Product or any territory, immediately and automatically upon suspension of
Sublicensor’s license to such Licensed Product or territory under the Brand License Agreement
without any notice or any other act by any party hereto or Licensor.



     4.3 Termination if Either Party Ceases to be Qualified Entity. This Sublicense Agreement
shall be terminated immediately and automatically effective immediately if either Sublicensor or
Sublicensee ceases to be a Qualified Entity without any notice or any other act by any party hereto
or Licensor.



     4.4 Termination for Cause. Sublicensor shall have the right to terminate this Sublicense
Agreement upon written notice in the event of Sublicensee’s material breach that remains uncured
for a period of [___] days after Sublicensor provides written notice thereof.



     4.5 Other Terminations. This Sublicense Agreement shall be terminated immediately and
automatically upon termination of the Brand License Agreement without any notice or any other act
by any party hereto or Licensor.



     4.6 Effect of Termination.



          (a) Termination of License: Upon termination of this Sublicense Agreement for any
reason, subject to Section 4.6(b), all rights and licenses granted hereunder shall
immediately terminate (and Sublicense shall cease all use of the Licensed Trademarks), provided
that Sublicensee may use the Licensed Trademarks (i) for historical reference, including to keep
records and other historical or archived documents (including customer contracts and/or marketing
materials) containing or referencing the Licensed Trademarks and to refer to the




G(II)-9









 







historical fact that Sublicensee previously used the Licensed Trademarks, but not, for the
avoidance of doubt, for marketing, promotion, advertisement, distribution, lease or sale of
Licensed Products, and (ii) in any manner permitted under applicable law.




          (b) Use Up Rights: Upon any termination of this Sublicense Agreement, to the extent
permitted by Sublicensor under the Brand License Agreement and as applicable, Sublicensee shall
have the right to continue to (i) sell and/or otherwise dispose of any Licensed Products bearing a
Licensed Trademark which are on hand or in process, and (ii) use the Licensed Trademarks on
existing stocks of packaging, Promotional Material, and other documents and materials related to
the Licensed Products in connection with sales permitted pursuant to the preceding clause (i),
provided that such rights shall not exceed one hundred eighty (180) days following termination of
this Sublicense Agreement.




          (c) Survival: The following provisions shall survive the termination of this
Sublicense Agreement: 4.6, 5.1, 5.3, 5.4, and 5.5.




ARTICLE V




MISCELLANEOUS




     5.1 Third Party Beneficiary. Sublicensee agrees that Licensor is an intended third party
beneficiary of this Sublicense Agreement and shall have the right to enforce any and all
obligations of Sublicensee under this Sublicense Agreement to the same extent as if Licensor were a
party to such agreement, provided that such right shall only apply to Licensor to the extent that
such obligations are contained in the version of the Sublicense Agreement attached to Exhibit
G of the Brand License Agreement or related to Sublicensor’s compliance with such version of
the Sublicense Agreement and such right shall not extend to any additional obligations imposed on
Sublicensee by Sublicensor either in this Sublicense Agreement or elsewhere.



     5.2 No Assignment or Transfer. Sublicensee shall not, and shall not have the right to,
assign, sell, transfer, delegate or otherwise dispose of, whether voluntarily or involuntarily, by
operation of law or otherwise, this Sublicense Agreement or any of its rights or obligations under
this Sublicense Agreement. Except as expressly provided herein, any purported assignment, sale,
transfer, sublicense, delegation or other disposition by any Sublicensee shall be null and void.



     5.3 Injunctive Relief. Sublicensee acknowledges that a breach of its obligations under this
Sublicense Agreement, including the obligations set forth in Sections 2.3, 2.5 and
Article III, may cause Licensor irreparable damage. Accordingly, Sublicensee agrees that
in the event of such breach or threatened breach, in addition to remedies at law, Licensor shall
have the right to seek injunctive or other equitable relief, without the necessity of posting any
bond or other security, to prevent Sublicensee’s violations of its obligations hereunder.



     5.4 Governing Law. This Sublicense Agreement is to be construed in accordance with and
governed by the internal laws of the State of New York without giving effect to any choice of law
rule that would cause the application of the laws of any jurisdiction other than the internal laws
of the State of New York to the rights and duties of the parties.



G(II)-10









 





     5.5 Consent to Jurisdiction.



          (a) Sublicensee hereby irrevocably submits to the exclusive jurisdiction of the state and
federal courts located in the State of New York, New York County, for the purposes of
any suit, action or other proceeding arising out of this Sublicense Agreement (agrees that no such
action, suit or proceeding relating to this Sublicense Agreements shall be brought by it or any of
its affiliates except in such courts). Sublicensee irrevocably and unconditionally waives (and
agrees not to plead or claim) any objection to the laying of venue of any action, suit or
proceeding arising out of this Sublicense Agreement in such courts or that any such action, suit or
proceeding brought in any such court has been brought in an inconvenient forum.




          (b) Sublicensee further agrees that service of any process, summons, notice or document by
U.S. registered mail to such person’s respective address set forth above shall be effective service
of process for any action, suit or proceeding in the state and federal courts located in the State
of New York, New York County, with respect to any matters to which it has submitted to jurisdiction
as set forth above in the immediately preceding clause (a). In addition, Sublicensee irrevocably
and unconditionally waives application of the procedures for service of process pursuant to the
Hague Convention for Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial
Matters.




          (c) Sublicensee hereby irrevocably waives any right it may have, and agrees not to request, a
jury trial for the adjudication of any dispute hereunder or in connection herewith or arising out
of this Sublicense Agreement.




     5.6 Export/Import Compliance. Sublicensee shall ensure that the sale, distribution, export
and import of Licensed Products by Sublicensee comply in all cases with all applicable export
and/or import laws of the jurisdiction in which such sales, distribution, export or import occur,
including, the Wassenaar Arrangement on Export Controls for Conventional Arms and Dual-Use Goods
and Technologies and the Foreign Exchange and Foreign Trade Law of Japan.



G(II)-11









 





     IN WITNESS WHEREOF, the parties hereto have caused this Sublicense Agreement to be executed as
of the date first set forth above.



	 	 	 	 	 	 	 
	 	 	SUBLICENSOR:	 	 
	 
	 	 	 	 	 	 
	 

	 	 	 	 	 	 
	 
	 	 	 	 	 	 
	 

	 	By:	 	 	 	 
	 

	 	 	 	 	 	 
	 

	 	 	 	Name:	 	 
	 

	 	 	 	Title:	 	 
	 
	 	 	 	 	 	 
	 	 	SUBLICENSEE:	 	 
	 
	 	 	 	 	 	 
	 

	 	 	 	 	 	 
	 
	 	 	 	 	 	 
	 

	 	By:	 	 	 	 
	 

	 	 	 	 	 	 
	 

	 	 	 	Name:	 	 
	 

	 	 	 	Title:	 	 







G(II)-12










 





EXHIBIT H




ADDITIONAL LICENSED DOMAIN NAMES




**


 




			
	**	 	The appearance of a double asterisk denotes
confidential information that has been omitted from the exhibit and filed
separately, accompanied by a confidential treatment request, with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities
Exchange Act of 1934.





H-1









 





EXHIBIT I




EXISTING PROGRAMS



**



 




			
	**	 	The appearance of a double asterisk denotes
confidential information that has been omitted from the exhibit and filed
separately, accompanied by a confidential treatment request, with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities
Exchange Act of 1934.






-1-