ATTEMPT THEREOF,
OF CONFIDENTIAL INFORMATION;
(C)
USE REASONABLE EFFORTS TO COOPERATE WITH
THE OTHER PARTY IN ANY LITIGATION AND INVESTIGATION AGAINST THIRD PARTIES DEEMED
NECESSARY BY THE OTHER PARTY TO PROTECT ITS PROPRIETARY RIGHTS; AND
(D)
PROMPTLY USE REASONABLE EFFORTS TO PREVENT A
RECURRENCE OF ANY SUCH UNAUTHORIZED POSSESSION, USE OR KNOWLEDGE OF CONFIDENTIAL
INFORMATION.
The Party whose Confidential Information is the subject of such activity shall
reimburse any Out-of-Pocket Expenses incurred by the other Party as a result of
compliance with this Section 11.3, unless the unauthorized possession, use or
knowledge, or attempt thereof is the result of the other Party's breach of its
obligations under Sections 11.1(b) or (c).
11.4
Employees and Contracts.
Each Party shall be responsible for
contractually obligating its Personnel (i.e., Hawaiian Telcom Personnel in the
case of Hawaiian Telcom and Accenture Personnel in the case of Accenture) to
comply with terms consistent with this Article 11 and will be responsible for
any failures to comply by such Personnel.
35
ARTICLE XII
PROPRIETARY RIGHTS
12.1
Ownership of Deliverables.
(A)
AS BETWEEN THE PARTIES, UPON PAYMENT FOR
THE APPLICABLE DELIVERABLE OR APPLICABLE SERVICES RENDERED (E.G., THE APPLICABLE
MONTHLY CHARGES IN THE CASE OF MODIFICATIONS TO HAWAIIAN TELCOM TECHNICAL
ELEMENTS MADE IN CONNECTION WITH THE AM SERVICES), HAWAIIAN TELCOM SHALL BE THE
SOLE AND EXCLUSIVE OWNER OF THE DELIVERABLES AND ALL INTELLECTUAL PROPERTY
RIGHTS THEREIN, AND ACCENTURE HEREBY ASSIGNS ANY RIGHT, TITLE AND INTEREST IT
MAY HAVE IN SUCH DELIVERABLES OR ANY INTELLECTUAL PROPERTY RIGHTS THEREIN TO
HAWAIIAN TELCOM.
WITHOUT LIMITING THE GENERALITY OF THE FOREGOING, TO THE
EXTENT APPLICABLE, EACH DELIVERABLE SHALL BE DEEMED A "WORK MADE FOR HIRE."
ACCENTURE AGREES TO EXECUTE ANY APPROPRIATE DOCUMENTS AND TAKE ANY OTHER
APPROPRIATE ACTIONS REASONABLY REQUESTED BY HAWAIIAN TELCOM TO EFFECTUATE THE
PURPOSES OF THIS SECTION 12.1.
NOTWITHSTANDING THE FOREGOING, ACCENTURE SHALL
NOT BE ESTOPPED FROM CONTESTING THE VALIDITY OF ANY PATENT OR PATENTS FILED BY
HAWAIIAN TELCOM RELATING TO ANY DELIVERABLES IN ANY LEGAL PROCEEDING.
IF, AND
TO THE EXTENT THAT, ACCENTURE IS PREVENTED UNDER APPLICABLE LAWS FROM ASSIGNING
ANY SUCH DELIVERABLES OR RIGHTS THEREIN TO HAWAIIAN TELCOM, ACCENTURE HEREBY
GRANTS TO HAWAIIAN TELCOM AN IRREVOCABLE, PERPETUAL, SUBLICENSABLE, WORLDWIDE,
FULLY PAID-UP, ROYALTY-FREE AND EXCLUSIVE (I.E., AS AGAINST ALL OTHERS INCLUDING
ACCENTURE) LICENSE TO USE, MODIFY AND OTHERWISE EXPLOIT IN ANY MANNER ANY SUCH
DELIVERABLES (EXCLUDING ANY ACCENTURE TECHNICAL ELEMENTS AND ACCENTURE
CONFIDENTIAL INFORMATION INCORPORATED THEREIN) OR RIGHTS UPON PAYMENT FOR SUCH
DELIVERABLE OR SERVICE.
PRIOR TO PAYMENT FOR THE APPLICABLE DELIVERABLE OR
APPLICABLE SERVICES RENDERED, ACCENTURE HEREBY GRANTS TO HAWAIIAN TELCOM AN
EXCLUSIVE, REVOCABLE, NON-TRANSFERABLE, LICENSE TO USE, COPY, MODIFY AND PREPARE
DERIVATIVE WORKS OF THE DELIVERABLE SOLELY FOR HAWAIIAN TELCOM'S INTERNAL
BUSINESS USE.
SUCH LICENSE WILL BE SUBLICENSABLE, PROVIDED ANY SUCH SUBLICENSES
WILL BE REVOCABLE IN THE EVENT HAWAIIAN TELCOM'S LICENSE IS REVOKED.
(B)
FOR PURPOSES OF SECTION 12.1(A),
DELIVERABLES SHALL NOT INCLUDE ANY ACCENTURE TECHNICAL ELEMENTS WHICH ARE
EMBEDDED IN A DELIVERABLE.
ALL DELIVERABLES SHALL BE DEVELOPED SUCH THAT THEY
CAN BE OPERATED WITHOUT