exv10w18



 



EXHIBIT 10.18



 



INTELLECTUAL PROPERTY AGREEMENT AND LICENSE


     This INTELLECTUAL PROPERTY AGREEMENT AND LICENSE (this
“Agreement”), is made this 27 day of September, 2002, among GENERAL
ELECTRIC COMPANY, a New York corporation (“GE”), GXS CORPORATION, a
Delaware corporation (the “Company”), a wholly owned subsidiary of GXS
Holdings, Inc. f/k/a RMS ELECTRONIC COMMERCE SYSTEMS, INC., a Delaware
corporation (“GXS Holdings”), and GLOBAL ACQUISITION COMPANY, a Delaware
Corporation (the “Acquiror”). GE, the Company and the Acquiror are
sometimes referred to herein individually as a (“party”) and
collectively as the (“parties”).


PRELIMINARY STATEMENTS


     A.     Pursuant to the Recapitalization Agreement dated June 21, 2002 among
GE, GE Investments, Inc., a Nevada corporation (“GEII,” and together
with GE, the “GE Parties”), and the Acquiror (as amended from time to
time, the “Recapitalization Agreement”), the Acquiror has agreed, on the
terms and subject to the conditions set forth in the Recapitalization
Agreement, to purchase from the GE Parties on the Closing Date certain the
shares of GXS Holdings and the shares of certain Subsidiaries of GE.


     B.     The execution and delivery of this Agreement by the parties is a
condition precedent to the Closing under the Recapitalization Agreement.


     C.     GE and its Controlled Affiliates control certain intellectual property
and are willing to license or assign certain intellectual property rights to
the Company to enable the Acquiror to conduct the business of the Company and
its Subsidiaries as an ongoing enterprise in substantially the same manner in
which it has been conducted by the GE Parties through the Company prior to the
Closing Date.


     D.     The Company and its Subsidiaries control certain intellectual property
and are willing to license or assign certain intellectual property rights to GE
for use by GE and its Controlled Affiliates other than in connection with the
EDI Business.


     NOW, THEREFORE, the parties to this Agreement agree as follows:


ARTICLE I

DEFINITIONS


     SECTION 1.01. Certain Defined Terms. (a) Unless otherwise
defined herein, all capitalized terms used herein shall have the same meaning
as in the Recapitalization Agreement.


     (b)  The following capitalized terms used in this Agreement shall have the
meanings set forth below:


 






 


     "Bankruptcy Code” shall have the meaning set forth in Section 3.04.


     "Confidential Information” means all materials, trade secrets or
other technical information, including, without limitation, proprietary
information and materials (whether or not patentable) regarding a party’s
technology, products, business information or objectives, which is designated
as confidential in writing by the disclosing party, whether by letter or by the
use of an appropriate stamp or legend, prior to or at the time any such
material, trade secret or other information is disclosed by the disclosing
party to the other party.


     "Control” or “Controlled” means, with respect to any
intellectual property right, the right to assign such right or to grant a
license or sublicense, under such right, as provided for herein, without (i)
violating the terms of any agreement or other arrangement with any Third Party,
(ii) requiring consents, approvals or waivers from any Third Party, or (iii)
requiring the payment of additional payments or compensation to any Third
Party. To the extent that any Intellectual Property owned by a Third Party is
licensed hereunder, such Intellectual Property shall be subject to the terms
and conditions of the relevant agreement between the licensor and such Third
Party pursuant to which such Intellectual Property has been licensed.


     "Company Intellectual Property” means Intellectual Property owned
or Controlled by the Company and its Subsidiaries on the Closing Date, or which
is later assigned to the Acquiror pursuant to Section 5.12 of the
Recapitalization Agreement, that is used exclusively in the business of the
Company or its Subsidiaries, notwithstanding use by GE or its Subsidiaries as a
customer of the Company or its Subsidiaries.


     "Excluded Technology” means that Intellectual Property that GE will
make available to the Company and its Subsidiaries pursuant to the terms of
that certain Services Agreement entered into among the parties on the date
hereof.


     "Improvement” means any modification, derivative work or
improvement.


     "Intellectual Property” means: (i) patents, patent applications
and statutory invention registrations, including reissues, divisions,
continuations, continuations-in-part, extensions and reexaminations thereof,
all rights therein provided by international treaties or conventions, (ii)
copyrights, whether or not registered, and registrations and applications for
registration thereof, and all rights therein provided by international treaties
or conventions, and (iii) confidential and proprietary information, including
trade secrets and know-how. As used in this Agreement, the term “Intellectual
Property” expressly excludes Trademarks.


     "Trademarks” means trademarks, service marks, trade dress, logos
and other identifiers of source, including all goodwill associated therewith
and all common law rights, and registrations and applications for registration
thereof, all rights therein provided by international treaties or conventions,
and all reissues, extensions and renewals of any of the foregoing.


ARTICLE II

TRADEMARK ASSIGNMENT


     SECTION 2.01. Trademark Assignment. Appendix A sets forth a copy
of the Trademark Assignment, dated September 9, 2002 (the “GE to GXS
Holdings Trademark


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Assignment”), pursuant to which GE has transferred and assigned to GXS
Holdings all of its worldwide right, title and interest in and to the
Trademarks as set forth on Schedule I attached to the GE to GXS Holdings
Trademark Assignment (the “Assigned Trademarks”), and all rights,
privileges and goodwill associated therewith, including, but not limited to,
the right to recover and take all such proceedings as may be necessary for the
recovery of damages or otherwise in respect of past, present and future
infringement of any of such Assigned Trademarks. Appendix B sets forth a copy
of the Trademark Assignment, dated September 9, 2002 (the “GXS Holdings to
GXS Corporation Trademark Assignment”), pursuant to which Holdings then
transferred and assigned to the Company all of its worldwide right, title and
interest in and to the Assigned Trademarks, and all rights, privileges and
goodwill associated therewith, including, but not limited to, the right to
recover and take all such proceedings as may be necessary for the recovery of
damages or otherwise in respect of past, present and future infringement of any
of such Assigned Trademarks.


     SECTION 2.02. Costs and Assistance. The Company shall bear any
and all administrative and similar costs external to GE and/or its Controlled
Affiliates related to the assignment of the Assigned Trademarks to the Company
pursuant to the GE to GXS Holdings Trademark Assignment and the GXS Holdings to
GXS Corporation Trademark Assignment (collectively, the Trademark
Assignments”). GE shall, and shall cause its Controlled Affiliates to,
execute all documents and perform all acts as required for the assignment of
such Assigned Trademarks to the Company under the Trademark Assignments. GE
agrees that any and all rights that are acquired by the assignment of such
Assigned Trademarks shall inure to the sole benefit of the Company, the
Subsidiaries and their assigns. GE agrees to, and to cause its Controlled
Affiliates to, execute all papers reasonably requested by the Company and at
the Company’s expense to perfect such Assigned Trademarks under the Trademark
Assignments or any part thereof and, where applicable, to record the Company as
the owner of such Assigned Trademarks. GE and/or its Controlled Affiliates
agree not to use the Assigned Trademarks assigned under the Trademark
Agreements or any part thereof as part of its corporate name or to market any
existing or future product or service using such Assigned Trademarks.


ARTICLE III

LICENSE GRANTS


     SECTION 3.01. GE License Grant. GE hereby grants to the Company
and its Subsidiaries, and shall cause its Controlled Affiliates to grant to the
Company and its Subsidiaries, a non-exclusive, irrevocable, royalty-free, fully
paid-up, worldwide, perpetual right and license to and under all of the
Intellectual Property relating to the business of the Company and its
Subsidiaries and Controlled by GE or its Controlled Affiliates as of the
Closing Date or which the Company assigned to GE pursuant to Section 5.12(b) of
the Recapitalization Agreement and which GE is not otherwise obligated to
transfer or assign to the Acquiror or the Company pursuant to the
Recapitalization Agreement, to make, have made, use, sell, have sold, import
and otherwise commercialize products and services in conducting the business of
the Company and its Subsidiaries to the extent that such Intellectual Property
(a) is as of the date of the Recapitalization Agreement or as of the Closing
Date being used by the Company or any Subsidiary in conducting such business,
and (b) does not constitute Excluded Technology. The Company shall have the
right to extend sublicenses under the rights licensed under this Section 3.01
to one or more of its Affiliates for use by such Affiliates in conducting such
business.


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     SECTION 3.02. Company License Grant. The Company hereby grants to
GE and its Controlled Affiliates, and shall cause its Subsidiaries to grant to
GE and its Controlled Affiliates, a non-exclusive, irrevocable, royalty-free,
fully paid-up, worldwide, perpetual right and license to and under all
Intellectual Property other than Company Intellectual Property Controlled by
the Company or its Subsidiaries on the Closing Date to make, have made, use,
sell, have sold, import and otherwise commercialize products and services in
all fields other than the EDI Business to the extent that such Intellectual
Property was used by GE and its Controlled Affiliates in their respective
existing businesses as of the date of the Recapitalization Agreement or the
Closing Date.


     SECTION 3.03. No Rights to Improvements. Each party shall have
the right to make Improvements to the Intellectual Property licensed to it
under this Agreement. Improvements to Intellectual Property shall be owned by
the party making such Improvement, or on whose behalf such Improvement was
made. No rights are granted to a party under any Improvements to the
Intellectual Property licensed hereunder to the extent such Improvement was
made by, or on behalf of, the other party after the Closing Date.


     SECTION 3.04. Section 365(n) of the Bankruptcy Code. All rights
and licenses granted under or pursuant to any section of this Agreement are,
and shall otherwise be deemed to be, for purposes of Section 365(n) of the
United States Bankruptcy Code (the “Bankruptcy Code”), licenses of
rights to “intellectual property” as defined under Section 101(35A) of the
Bankruptcy Code. The parties shall retain and may fully exercise all of their
respective rights and elections under the Bankruptcy Code.


ARTICLE IV

CONFIDENTIAL INFORMATION


     SECTION 4.01. Treatment of Confidential Information. Each party
hereto shall maintain the Confidential Information of each of the other parties
in confidence, and shall not disclose, divulge or otherwise communicate such
Confidential Information to others, or use it for any purpose, except pursuant
to, and in order to carry out, the terms and objectives of this Agreement, and
hereby agrees to exercise every reasonable precaution to prevent and restrain
the unauthorized disclosure of such Confidential Information by any of its
directors, officers, employees, consultants, subcontractors, sublicensees or
agents.


     SECTION 4.02. Release from Restrictions. The provisions of
Section 4.01 shall not apply to any Confidential Information disclosed
hereunder that:


     (a)  was already known by receiving party prior to the date hereof from a
source other than the disclosing party or was, or is in the future, generated
or developed independently by the receiving party or any of its directors,
officers, employees, consultants, contractors, subcontractors, sublicenses and
agents; or


     (b)  either before or after the date of the disclosure to the receiving
party is lawfully disclosed to the receiving party by sources who are not under
a direct or indirect obligation of confidence to the disclosing party; or


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     (c)  either before or after the date of the disclosure to the receiving
party becomes published or generally known to the public through no fault or
omission on the part of the receiving party or its Affiliates; or


     (d)  is required to be disclosed by the receiving party to comply with
applicable laws, to defend or prosecute litigation or to comply with
governmental regulations, provided that the receiving party provides prior
written notice of such disclosure to the other party and takes reasonable and
lawful actions to avoid and/or minimize the degree of such disclosure.


ARTICLE V

COVENANTS


     SECTION 5.01. No Adverse Action. Each party hereby covenants that
it will, at any time after the Closing Date, use commercially reasonable
efforts not to terminate, breach, rescind or fail to renew (to the extent that
such renewal requires only the payment of fees or compensation, and the party
desiring to retain the rights licensed thereunder agrees upon prior written
notice to pay such fees or compensation) any agreement under which a party has
been sublicensed rights under Intellectual Property pursuant to this Agreement.


     SECTION 5.02. Further Assistance. Each party hereby covenants and
agrees that it shall, at the request of the other party, use commercially
reasonable efforts to obtain any Third Party consent, approval or waiver
necessary to enable such party to grant a license or sublicense to any
Intellectual Property that, but for the requirement to obtain such consent,
approval or waiver, would be the subject of a license granted pursuant to
Section 3.01 or 3.02 hereunder. Each party further covenants and agrees that
it shall, at the reasonable request of the other party, use commercially
reasonable efforts to (a) identify all Intellectual Property that would, but
for the requirement of such party to pay any additional payments or
compensation to any Third Party, be subject to a license granted pursuant to
Section 3.01 or 3.02 hereunder, and (b) assist the other party in obtaining
from such Third Party a license to such Intellectual Property.


ARTICLE VI

TERM AND TERMINATION


     SECTION 6.01. Term. The term of this Agreement is perpetual.


     SECTION 6.02. No Termination. No party may terminate this
Agreement or the rights and licenses granted hereunder for breach. In the
event of a breach of this Agreement, the sole and exclusive remedy to the
non-breaching parties shall be to recover monetary damages and/or to obtain
injunctive or equitable relief in a court of competent jurisdiction.


ARTICLE VII

GENERAL PROVISIONS


     SECTION 7.01. Assignment. This Agreement shall not be assignable,
in whole or in part, by any party hereto except as provided herein. Each party
hereby consents to the assignment, and/or license of any or all of its rights,
or delegation of any or all of its obligations, under this Agreement to a
successor in interest which acquires from such party substantially all of the
equity or assets of the business of such party to which this Agreement relates,
and which


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expressly accepts such assignment and assumes such obligations. This
Agreement shall also be binding upon and inure to the benefit of and be
enforceable by the successors, legal representatives and permitted assigns of
each party hereto.


     SECTION 7.02. Additional Provisions. Provisions of the
Recapitalization Agreement that apply to this Agreement include only Section
10.01(b) (Indemnification by GE Parties), Section 10.02(b) (Indemnification by
the Acquiror), Section 11.02 (Expenses), Section 11.03 (Notices), Section 11.04
(Public Announcements), Section 11.06 (Entire Agreement), Section 11.09
(Amendment), Section 11.11 (Dispute Resolution), Section 11.12 (Governing Law;
Submission to Jurisdiction; Waivers), Section 11.13 (Rules of Construction) and
Section 11.15 (Counterparts).


     SECTION 7.03. Disclaimer. EXCEPT AS EXPRESSLY PROVIDED IN THE
RECAPITALIZATION AGREEMENT, THE INTELLECTUAL PROPERTY PROVIDED BY EACH PARTY TO
THE OTHER PARTY PURSUANT TO THIS AGREEMENT ARE FURNISHED “AS IS”, WITH ALL
FAULTS AND WITHOUT WARRANTY OF ANY KIND, EXPRESS, IMPLIED, STATUTORY OR
OTHERWISE, INCLUDING, WITHOUT LIMITATION, ANY WARRANTY OF MERCHANTABILITY,
FITNESS FOR ANY PARTICULAR PURPOSE, TITLE, NON-INFRINGEMENT, ADEQUACY OR
COMPLIANCE WITH ANY LAW, DOMESTIC OR FOREIGN.


     SECTION 7.04. Specific Performance. Each party acknowledges that
certain of the obligations of the parties required by this Agreement are
unique. If any party should breach any of its covenants or agreements
hereunder, the parties each acknowledge that it would be extremely
impracticable to measure the resulting damages; accordingly, the nonbreaching
party or parties may sue in equity for specific performance, and each party
expressly waives the defense that a remedy in damages will be adequate.


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     IN WITNESS WHEREOF, the GE Parties and the Acquiror have caused this
Agreement to be executed on the date first written above by their respective
duly authorized officers.



	 	 	 
	 	GENERAL ELECTRIC COMPANY
	 
	 	By	
  /s/ Philip D. Ameen



Name: Philip D. Ameen

Title:   Vice President and Comptroller
	 
	 	GXS CORPORATION
	 
	 	By	
  /s/ Jean-Jacques Charhon



Name: Jean-Jacques Charhon

Title:   Senior Vice President & Chief

Financial Officer
	 
	 	GLOBAL ACQUISITION COMPANY
	 
	 	By	
  /s/ Brian J. Ruder



Name: Brian J. Ruder

Title:   President & Treasurer