Exhibit 10.14
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INTELLECTUAL PROPERTY AND TRADEMARK
LICENSE AGREEMENT
among
SUNOCO, INC.
SUNOCO, INC. (R&M)
SUNMARKS, INC.
SUNOCO LOGISTICS PARTNERS L.P.
SUNOCO LOGISTICS PARTNERS OPERATIONS L.P.
SUNOCO PARTNERS MARKETING & TERMINALS L.P.
SUNOCO PIPELINE L.P.
and
SUNOCO PARTNERS LLC
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INTELLECTUAL PROPERTY AND TRADEMARK
LICENSE AGREEMENT
THIS INTELLECTUAL PROPERTY AND TRADEMARK LICENSE AGREEMENT ("Agreement") is
entered into on, and effective as of, the Closing Date (as defined herein) among
Sunoco, Inc., a Pennsylvania corporation ("Sunoco"), on behalf of itself and the
other Sunoco Entities (as defined herein), Sunoco, Inc. (R&M), a Pennsylvania
corporation ("Sunoco R&M"), Sunmarks, Inc., a Delaware corporation ("Sunmarks"),
Sunoco Logistics Partners L.P., a Delaware limited partnership (the
"Partnership"), Sunoco Logistics Partners Operations L.P., a Delaware limited
partnership (the "Operating Partnership"), Sunoco Partners Marketing & Terminals
L.P., a Delaware limited partnership ("Sunoco Marketing"), Sunoco Pipeline L.P.,
a Texas limited partnership ("Sunoco Pipeline"), and Sunoco Partners LLC, a
Pennsylvania limited liability company ("Sunoco Partners LLC"). The above-named
entities are sometimes referred to in this Agreement each as a "Party" and
collectively as the "Parties."
R E C I T A L S:
1. The Parties desire by their execution of this Agreement to evidence
their understanding, as more fully set forth in Article II, with respect to
licenses regarding Existing Intellectual Property (as defined herein);
2. The Parties further desire to set forth their understanding, as more
fully set forth in Article II, regarding the ownership rights with respect to
the Intellectual Property Rights (as defined herein) invented, created,
authored, disclosed, or developed by Sunoco Partners LLC in connection with the
providing of Services to the Partnership Group;
3. Licensors own all right, title and interest in and to the Marks (as
defined herein), and the goodwill associated with the Marks.
4. Licensors and/or their Affiliates have used the Marks in connection with
numerous products and services, including gasoline, kerosene, lubricating oils,
greases, storage batteries, antifreeze, brake fluid, automotive service station
services, and heating oil.
5. Licensees desire to obtain, and Licensors agree to permit, a license to
use the Marks, all in accordance with the terms and conditions of this
Agreement.
ARTICLE I
Definitions
1.1 Definitions.
(a) As used in this Agreement, the following terms shall have the
respective meanings set forth below
"Affiliate" is defined in the Partnership Agreement.
"Applicable Period" means the period commencing on the Closing Date
and terminating on the date on which the Partnership ceases to be an
Affiliate of Sunoco.
"Approved Uses" is defined in Section 2.4.
"Assets" means all assets conveyed, contributed, or otherwise
transferred by the Sunoco Entities to the Partnership Group prior to or on
the Closing Date and any assets acquired by the Partnership Group pursuant
to the exercise of the purchase options granted under Article VI of the
Omnibus Agreement.
"Closing Date" means the date of the closing of the Partnership's
initial public offering of Common Units.
"Common Units" is defined in the Partnership Agreement.
"Confidential Information" means all confidential information in
tangible or intangible form, including but not limited to, process design,
equipment drawings, technical specifications, processes, trade secrets,
process measurements, technical reports, analyses, tests, plans, drawings,
models, ideas, schemes, correspondence, communications, lists, manuals,
computer programs, software, techniques, methods, processes, routines,
systems, procedures, practices, operations, modes of operation, apparatus,
equipment, business opportunities, know-how, customer and supplier lists,
and methods of combining information. Confidential Information shall not
include, and all obligations regarding Confidential Information shall not
apply to, information that:
(i) was already known by (as established by dated documentation)
Recipient at the time of the receipt of the Confidential Information by
Recipient from the Disclosing Party;
(ii) is or becomes available to the industry (e.g., available in the
technical literature, databases, or the like) or is in, or subsequently
enters, the public domain other than as a result of a disclosure by the
Recipient in breach of this Agreement;
(iii) is received by the Recipient from a third party unless the
Recipient is aware that such third party was subject to a confidentiality
obligation to the Disclosing Party with respect to such Confidential
Information;
(iv) is independently developed by a Person without access to the
Confidential Information provided by the Disclosing Party;
(v) was or is furnished by the Disclosing Party to a third party
without confidentiality restrictions; or
(vi) is approved for release by written authorization of the
Disclosing Party.
"Conflicts Committee" is defined in the Partnership Agreement.
"Control" means the possession, directly or indirectly, of the power
to direct or cause the direction of the management and policies of a
Person, whether through ownership of voting securities, by contract, or
otherwise.
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"Disclosing Party" is defined in Section 2.4.
"Drawings and Records" means all tangible, digital, or electronic
records related to the business and operations of Sunoco Pipeline and
Sunoco Marketing and their Affiliates, including but not limited to,
engineering drawings. operating manuals, technical data, process designs,
flow diagrams, maps, schematics, databases, operating records, laboratory
analysis, engineering studies, flow diagrams, environmental studies, health
and safety records.
"Existing Intellectual Property" means the Intellectual Property
Rights of Sunoco Pipeline and Sunoco Marketing as of the Closing Date as a
result of the transactions contemplated by the Partnership Agreement. The
"Existing Intellectual Property" shall not include any trademarks, service
marks, trade names, domain names, registrations and applications for
registrations for the foregoing.
"General Partner" is defined in the Partnership Agreement.
"Intellectual Property Rights" means the following foreign and
domestic intellectual property rights, both statutory and common law
rights, if applicable: (a) all trademarks, service marks, trade names,
domain names, registrations and applications for registrations for the
foregoing; (b) patents, pending patent applications, and patents
subsequently issuing from patent applications; (c) copyrights and
registrations and applications for registrations thereof; and (d)
Confidential Information.
"Licensees" means the Partnership Group and the General Partner.
"Licensor Approval" is defined in Section 3.2.
"Licensors" means Sunoco and Sunmarks.
"Limited Partner" is defined in the Partnership Agreement.
"Marks" means all right, title and interest in and to the trademarks
and trade names, or domain names, SUNOCO, and variations thereof, and
SUNOCO DIAMOND DESIGN, and variations thereof, as shown on Schedule I to
this Agreement.
"New Marketing Intellectual Property" means any Intellectual Property
Rights invented, created, authored, disclosed, or developed by Sunoco
Partners LLC in connection with the providing of Services to the
Partnership Group regarding the Assets of Sunoco Marketing. The "New
Marketing Intellectual Property" shall not include Intellectual Property
Rights invented, created, authored, disclosed, or developed by Sunoco
Partners LLC in its performance of services for the Sunoco Entities. In
addition, the "New Marketing Intellectual Property" shall not include any
trademarks, service marks, trade names, domain names, registrations and
applications for registrations for the foregoing. Finally, the parties
expressly recognize that certain Intellectual Property Rights may be both
New Marketing Intellectual Property and New Pipeline Intellectual Property
to the extent that such Intellectual Property Right is used by both Sunoco
Pipeline and Sunoco Marketing; however, Sunoco Pipeline shall own all
right, title, and
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interest in and to such Intellectual Property Rights with respect to its
field of activities and Sunoco Marketing shall own all right, title, and
interest in and to such Intellectual Property Rights with respect to its
field of activities, and both Sunoco Pipeline and Sunoco Marketing shall
jointly have own all right, title, and interest in and to the Intellectual
Property Rights outside of both fields of activities.
"New Pipeline Intellectual Property" means any Intellectual Property
Rights invented, created, authored, disclosed, or developed by Sunoco
Partners LLC in connection with the providing of Services to the
Partnership Group regarding the Assets of Sunoco Pipeline. The "New
Pipeline Intellectual Property" shall not include Intellectual Property
Rights invented, created, authored, disclosed, or developed by Sunoco
Partners LLC in its performance of services for the Sunoco Entities. In
addition, The "New Pipeline Intellectual Property" shall not include any
trademarks, service marks, trade names, domain names, registrations and
applications for registrations for the foregoing. Finally, the parties
expressly recognize that certain Intellectual Property Rights may be both
New Marketing Intellectual Property and New Pipeline Intellectual Property
to the extent that such Intellectual Property Right is used by both Sunoco
Pipeline and Sunoco Marketing; however, Sunoco Pipeline shall own all
right, title, and interest in and to such Intellectual Property Rights with
respect to its field of activities and Sunoco Marketing shall own all
right, title, and interest in and to such Intellectual Property Rights with
respect to its field of activities, and both Sunoco Pipeline and Sunoco
Marketing shall jointly have own all right, title, and interest in and to
the Intellectual Property Rights outside of both fields of activities.
"Omnibus Agreement" means that certain Omnibus Agreement, dated as of
the Closing Date, among Sunoco, the General Partner, the Partnership, the
Operating Partnership and certain other parties.
"Partnership Agreement" means the First Amended and Restated Agreement
of Limited Partnership of Sunoco Logistics Partners L.P., dated as of the
Closing Date, as such agreement is in effect on the Closing Date, to which
reference is hereby made for all purposes of this Agreement. No amendment
or modification to the Partnership Agreement subsequent to the Closing Date
shall be given effect for the purposes of this Agreement unless consented
to by each of the Parties to this Agreement.
"Partnership Group" means the Partnership, the Operating Partnership
and any Subsidiary of any such Person, treated as a single consolidated
entity.
"Partnership Group Member" means any member of the Partnership Group.
"Person" means an individual or a corporation, limited liability
company, partnership, joint venture, trust, unincorporated organization
association, government agency or political subdivision thereof or other
entity.
"Recipient" is defined in Section 2.4.
"Representative" is defined in Section 2.4.
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"Services" means all services historically provided and to be provided
in the future by Sunoco and its Affiliates for the benefit of the
Partnership Group under the Partnership Agreement, the Omnibus Agreement
and otherwise.
"Sunoco Entities" means Sunoco and any Person controlled, directly or
indirectly, by Sunoco other than the Partnership Group or the General
Partner; and "Sunoco Entity" means any of the Sunoco Entities.
"Subsidiary" means, with respect to any Person, (a) a corporation of
which more than 50% of the voting power of shares entitled (without regard
to the occurrence of any contingency) to vote in the election of directors
or other governing body of such corporation is owned, directly or
indirectly, at the date of determination, by such Person, by one or more
Subsidiaries of such Person or a combination thereof, (b) a partnership
(whether general or limited) in which such Person or a Subsidiary of such
Person is, at the date of determination, a general or limited partner of
such partnership, but only if more than 50% of the partnership interests of
such partnership (considering all of the partnership interests of the
partnership as a single class) is owned, directly or indirectly, at the
date of determination, by such Person, by one or more Subsidiaries of such
Person, or a combination thereof, or (c) any other Person (other than a
corporation or a partnership) in which such Person, one or more
Subsidiaries of such Person, or a combination thereof, directly or
indirectly, at the date of determination, has (i) at least a majority
ownership interest or (ii) the power to elect or direct the election of a
majority of the directors or other governing body of such Person.
"Territory" is defined in Section 3.1.
"Uses" is defined in Section 3.1.
ARTICLE II
Intellectual Property
2.1 Assignments and Grants of Licenses.
(a) Existing Intellectual Property License to Sunoco Partners LLC.
Subject to the terms and conditions herein, Sunoco Pipeline and Sunoco Marketing
hereby grant to Sunoco Partners LLC a license and right to use, display,
perform, copy, prepare derivative works, sell, offer for sale, and modify the
Existing Intellectual Property in furtherance of Sunoco Partners LLC's
performance of Services to the Partnership Group.
(b) Assignment of New Pipeline Intellectual Property and New Marketing
Intellectual Property. With respect to the New Pipeline Intellectual Property,
Sunoco Partners LLC hereby assigns, sell, transfers, and conveys to Sunoco
Pipeline, and Sunoco Pipeline hereby accepts such assignment, sale, transfer and
conveyance of, all Sunoco Partners LLC's right, title and interest in and to all
New Pipeline Intellectual Property. Sunoco Pipeline and Sunoco Partners LLC
hereby grant to Sunoco R&M, and Sunoco R&M hereby accepts such grant of, a
royalty-free, perpetual, irrevocable license and right to use, display, perform,
copy, prepare derivative works, sell, offer for sale, and modify the New
Pipeline Intellectual Property Rights solely for the internal businesses of the
Sunoco Entities. With respect to the New Marketing
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Intellectual Property, Sunoco Partners LLC hereby assigns, sell, transfers, and
conveys to Sunoco Marketing, and Sunoco Marketing hereby accepts such
assignment, sale, transfer and conveyance of, all Sunoco Partners LLC's right,
title and interest in and to all New Marketing Intellectual Property. Sunoco
Marketing and Sunoco Partners LLC hereby grant to Sunoco R&M, and Sunoco R&M
hereby accepts such grant of, a royalty-free, perpetual, irrevocable license and
right to use, display, perform, copy, prepare derivative works, sell, offer for
sale, and modify the New Marketing Intellectual Property solely for the internal
businesses of the Sunoco Entities.
(c) Third Party Intellectual Property Rights. With respect to any
licenses to Intellectual Property Rights of third parties granted after the
Closing Date, Sunoco Pipeline and Sunoco Marketing shall undertake to ensure any
such licenses include the license and right of Sunoco Partners LLC to use,
display, perform, copy, prepare derivative works, sell, offer for sale, and
modify such Intellectual Property Rights to the extent necessary for the
purposes of providing Services to the Partnership Group hereunder.
(d) Cross-Licenses of other Intellectual Property Rights Used in the
Services. With respect to any Intellectual Property Rights (other than any
trademarks, service marks, trade names, domain names, registrations and
applications for registrations for the foregoing) of Sunoco Partners LLC that
are not New Pipeline Intellectual Property or New Marketing Intellectual
Property, but are used by Sunoco Partners LLC in the providing of Services to
the Partnership Group or embodied in any Drawings and Records authored or
created by Sunoco Partners LLC in the providing of Services to the Partnership
Group, Sunoco Partners LLC hereby grants to Sunoco Pipeline and Sunoco Marketing
a royalty-free, perpetual, irrevocable license and right to use, display,
perform, copy, prepare derivative works, sell, offer for sale, and modify such
Intellectual Property Rights in connection with the businesses of Sunoco
Pipeline and Sunoco Marketing. Similarly, to the extent that the Existing
Intellectual Property Rights are used in any Intellectual Property Rights (other
than any trademarks, service marks, trade names, domain names, registrations and
applications for registrations for the foregoing) of Sunoco Partners LLC or
embodied in any tangible, digital, or electronic records authored or created by
Sunoco Partners LLC in the providing of services to third parties other than the
Partnership Group, Sunoco Pipeline and Sunoco Marketing hereby grant to Sunoco
Partners LLC a royalty-free, perpetual, irrevocable license and right to use,
display, perform, copy, prepare derivative works, sell, offer for sale, and
modify the Existing Intellectual Property, including the right to sublicense, in
connection with the providing of such services to third parties.
2.2 Execution of Documents. Both during the term of this Agreement and
thereafter, Sunoco Partners LLC shall assist Sunoco Pipeline and Sunoco
Marketing and each of their nominees at all times in the protection of all New
Pipeline Intellectual Property and New Marketing Intellectual Property, both in
the United States and all foreign countries, including but not limited to, the
execution of all lawful oaths and all assignment documents requested by Sunoco
Pipeline or Sunoco Marketing or each of their nominees in connection with: (a)
the preparation, prosecution, issuance, and enforcement of any applications for
United States or foreign letters patent, including divisions, continuations,
continuations-in-part, reissues, and/or extensions thereof, and (b) the
preparation, prosecution, issuance, and enforcement of any applications for
United States or foreign copyrights in the United States and foreign countries.
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2.3 Drawings and Records. Sunoco Pipeline and Sunoco Marketing retain
title to all tangible and electronic or digital copies of the Drawings and
Records, including all rights of copyright in and to such Drawings and Records.
Sunoco Pipeline and Sunoco Marketing grant a royalty-free license to Sunoco
Partners LLC to retain, use, copy, or modify the Drawings and Records in
furtherance of Sunoco Partners LLC's providing of Services to the Partnership
Group. Sunoco Pipeline and Sunoco Marketing acknowledge and agree that Sunoco
Partners LLC must have access to, and must be able to use, the Drawings and
Records of Sunoco Pipeline and Sunoco Marketing for the purposes of providing
Services to the Partnership Group. Sunoco Pipeline and Sunoco Marketing agree to
make available or deliver to Sunoco Partners LLC no later than two business days
after the Closing Date, at a location to be designated by Sunoco Partners LLC,
current and complete copies of all Drawings and Records. During the term of this
Agreement, Sunoco Pipeline and Sunoco Marketing agree to make available or
deliver, or to cause to be made available or delivered, to Sunoco Partners LLC
the Drawings and Records of Sunoco Pipeline and Sunoco Marketing. Sunoco
Pipeline and Sunoco Marketing agree that Sunoco Partners LLC may retain copies
of the Drawings and Records during the term of this Agreement and after
termination of this Agreement for documentation purposes only and to the extent
reasonably necessary for purposes of exploiting the right and license granted to
Sunoco R&M in Section 2.1; provided, however, that Sunoco Partners LLC and
Sunoco R&M shall not provide a copy of any Drawings and Records to any third
party other than a Sunoco Entity, as expressly allowed by this Agreement, or as
expressly allowed in writing by the Partnership Group. Upon termination of this
Article II, Sunoco Partners LLC shall deliver to Sunoco Pipeline and Sunoco
Marketing no later than two business days after the Closing Date, at a location
to be designated by Sunoco Pipeline and Sunoco Marketing, current and complete
copies of all Drawings and Records.
2.4 Confidentiality.
(a) The Parties agree that this Agreement shall govern the
confidentiality obligations regarding all disclosures of Confidential
Information pursuant to which one Party (the "Disclosing Party") has disclosed
Confidential Information to another Party (the "Recipient") under this
Agreement. The Disclosing Party reserves its ownership rights, and any third
party's ownership rights, in and to any Confidential Information disclosed under
this Agreement. The Recipient hereby acknowledges and agrees that, except as
expressly provided herein, the Recipient acquires no ownership interest in and
to the Confidential Information of the Disclosing Party.
(b) The Disclosing Party and the Recipient agree that with respect to
all disclosures of Confidential Information by a Disclosing Party to a
Recipient, the Recipient agrees that it and its officers, directors, partners,
employees, affiliates, agents, representatives, and outside auditors who have
had or will have access to the Confidential Information (collectively,
"Representatives"):
(i) will keep Confidential Information confidential and will not,
without the prior written consent of the Disclosing Party or as
allowed by this Agreement, disclose Confidential Information to third
parties; and
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(ii) will not use Confidential Information other than as licensed
or contemplated under this Agreement ("Approved Uses"). Moreover, Recipient
agrees to transmit the Confidential Information only to such of its
Representatives who need to know the Confidential Information for the sole
purpose of assisting Recipient in Approved Uses, who are informed of this
Agreement, and who have agreed in writing to obligations of confidentiality
with the Recipient.
(c) If any portion of Confidential Information is required to be
disclosed by subpoena, law, litigation, or similar legal process, or to a
governmental regulatory agency or commission or securities exchange, the
Recipient will promptly inform the Disclosing Party of immediately of the
existence, terms, and circumstances surrounding such request and before any such
disclosure is required so as to allow the Disclosing Party to protect the
Confidential Information. The Recipient will consult with the Disclosing Party
on the advisability of taking legally-available steps to resist or narrow such
request. The Disclosing Party shall thereafter seek to obtain a protective
order, and the Recipient shall cooperate with the Disclosing Party in its
efforts to obtain a protective order, to restrict access to, and any use or
disclosure of, the Confidential Information.
(d) Upon the termination of the obligations of this Agreement with
respect to an item of Confidential Information, the Recipient shall be free to
use and disclose such item of information freely and without any obligation to
the Disclosing Party.
(e) The terms of confidentiality under this Agreement shall not be
construed to limit either Party's right to independently develop its own
technology, technical solutions, engineering solutions, or know-how without the
use of the other Party's Confidential Information. Notwithstanding anything to
the contrary in this Agreement, neither Party will be restricted at any time by
the other Party from utilizing any knowledge, skills, or experience of a general
nature acquired as a result of the Agreement.
2.5 Reservation of Intellectual Property Rights Not Expressly Granted.
Nothing in this Agreement shall be construed as conferring by implication,
estoppel, or otherwise upon a licensee or assignee any license, assignment, or
other right under the Intellectual Property Rights of a party other than as
expressly as set forth expressly herein.
2.6 Warranties; Disclaimers. NOTWITHSTANDING ANYTHING TO THE CONTRARY,
SUNOCO PARTNERS LLC PROVIDES THE INTELLECTUAL PROPERTY RIGHTS ASSIGNED OR
LICENSED UNDER ARTICLE II HEREIN, AND SUNOCO MARKETING AND SUNOCO PIPELINE
PROVIDE THE INTELLECTUAL PROPERTY LICENSED UNDER ARTICLE II HEREIN, AS IS,
WITHOUT ANY WARRANTY OF ANY KIND. SUNOCO PARTNERS LLC AND SUNOCO MARKETING AND
SUNOCO PIPELINE DISCLAIM ANY AND ALL WARRANTIES, CONDITIONS OR REPRESENTATIONS
(EXPRESS OR IMPLIED, ORAL OR WRITTEN) WITH RESPECT TO THE SUBJECT MATTER HEREOF,
OR ANY PART THEREOF, INCLUDING ANY AND ALL IMPLIED WARRANTIES OF
NON-INFRINGEMENT, MERCHANTABILITY OR FITNESS OR SUITABILITY FOR ANY PURPOSE
(WHETHER THE PARTY KNOWS, HAS REASON TO KNOW, HAS BEEN ADVISED, OR IS OTHERWISE
IN FACT AWARE OF
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ANY SUCH PURPOSE) WHETHER ALLEGED TO ARISE BY LAW, BY REASON OF CUSTOM OR USAGE
IN THE TRADE OR BY COURSE OF DEALING.
2.7 Certain Approved Transfers of Intellectual Property Rights. A licensee
under this Article II may also transfer, or assign (as the case may be), with
prompt notification to the applicable licensor under this Article II, and
without such licensor's consent and without payment of additional fees or
charges, the license or sublicense granted hereunder with respect to
Intellectual Property Rights licensed or sublicensed hereunder to a purchaser of
a facility or business in which or for which the Intellectual Property Rights
licensed or sublicensed are used; provided, however, that the purchaser agrees
in writing to be bound by the terms and conditions of use, termination,
liability and non-disclosure contained herein. The right so assigned shall be
limited to use of the Intellectual Property Rights licensed or sublicensed at or
for the facility(ies) or business(es) so purchased, with permission to reassign
to subsequent purchasers of such facility(ies) or business(es) under the same
conditions.
2.8 Infringements of Intellectual Property. All infringement or
misappropriation of Intellectual Property Rights shall be the responsibility of
the owner of the particular Intellectual Property Right, and nothing in this
Agreement shall convey to another party the right to xxx on an Intellectual
Property Right licensed hereunder. All such rights to xxx are expressly reserved
and retained by the owner of such Intellectual Property Right. In the event that
a licensee hereunder becomes aware of any alleged material infringement or
misappropriation of an Intellectual Property Right licensed hereunder, such
licensee shall promptly give notice to the licensor of the alleged infringement
or misappropriation.
2.9 Termination of Article II.
(a) In the event that Sunoco Partners LLC is no longer the General
Partner, then the grants of Intellectual Property Rights under this Article II
shall terminate with respect to any Intellectual Property Rights invented,
created, authored, disclosed, or developed thereafter and any Intellectual
Property Rights invented, created, authored, disclosed, or developed after such
termination shall not be the subject of a grant under this Article II.
(b) Notwithstanding the termination of this Article II for any reason,
all assignments, licenses and sublicenses of Intellectual Property Rights
previously granted under this Article II by any Party hereto shall survive in
all respects and all Parties shall be free to continue to exploit any
assignments, licenses and sublicenses regarding such Intellectual Property
Rights granted in this Article II after such termination. In addition, after
termination, the provisions in Sections 2.2 - 2.8 shall continue to apply to
Intellectual Property Rights assigned, licensed or sublicensed under this
Article II prior to such termination.
ARTICLE III
Trademark License
3.1 Grant of License. Subject to the other provisions of this Agreement,
Licensors grant to the Licensees a non-exclusive, royalty-free,
non-transferable, non-sublicensable license to use the Marks in connection with
the Licensees' business and the services performed by the Partnership Group
within the United States by using and displaying the Marks on storage
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facilities, tanks, piping, pipelines, and related signage, and on business
cards, advertisements, letterhead, and invoices (collectively the "Uses") in the
Territory. The Parties acknowledge that certain of the licensees are currently
using Licensors' Marks pursuant to an unwritten license agreement, and such
prior license shall be subject to the terms and conditions of this Agreement.
For the purposes of this Agreement, "Territory" shall mean the United States.
3.2 Quality Control.
(a) In order to comply with Licensors' quality control standards,
Licensees shall: (i) use their commercially reasonable efforts to maintain the
quality of the use of the Marks; (ii) adhere to such other specific reasonable
quality control standards that Licensors may from time to time promulgate and
communicate to Licensees with respect to the use of the Marks; (iii) comply with
all federal, state and local laws and regulations governing the use of the
Marks; and (iv) not alter or modify the Marks in any way.
(b) Licensees must receive Licensor Approval for each new use of the
Marks prior to each use of the Marks by Licensees. All uses of the Marks prior
to the Closing Date in connection with the Assets shall be deemed to have
received Licensor Approval. As used herein, "Licensor Approval" shall mean
either (i) the receipt by Licensees of written approval from Licensors, or (ii)
failure on the part of Licensors to respond within thirty (30) days after
receipt by Licensors of a written request for approval by Licensees.
(c) In furtherance of the purpose and intent expressed in
subparagraphs 3(a) and (b) above:
(i) Licensees shall submit to Licensors for Licensor Approval
representative samples of each new use and an accurate, written
description for each new use that Licensees propose. Any new uses of
SUNOCO DIAMOND DESIGN must conform to such design use as reflected in
Registration No. 2,504,441 or Application Serial No. 76/195,811.
(ii) Licensees shall submit to Licensors for Licensor Approval
samples of all new display plans, signage, invoices, business cards,
stationary, labels, packaging (including cartons, containers and
wrapping or packing materials) and, if applicable, all new
advertising, promotional or display materials and sales documents
bearing or using the Marks, all of which shall comply with the
requirements set forth herein; and
(iii) Licensees agree that if subsequent to Licensor Approval
therefor any usage of the Marks on goods or services shall fail to
meet the high standards of quality associated with the goods and
services of Licensors, Licensees will, at their own expense, take all
necessary measures to improve such usage, as applicable, to meet such
standards.
(d) In order to confirm that Licensees' use of the Marks complies with
this Section 3.2, Licensors shall have the right, in their sole discretion, (i)
to require that Licensees submit to Licensors representative samples of any
materials bearing the Marks, and (ii) to inspect, without prior advance notice,
any of Licensees' facilities, products, records and/or
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operations in connection with the use of the Marks. Licensees agree to maintain
the same quality in the goods and services produced and offered, as reflected in
the sample(s) submitted.
(e) Any approval under this Article III shall not constitute a waiver
of Licensors' rights or Licensees' duties under any provision of this Agreement.
Licensor Approval shall not involve or constitute acceptance by Licensors of any
particular use or be deemed approval of the safety of the goods and services of
Licensees, or be construed to create, in any way, any guarantee or warranty on
the part of Licensors as to the fitness, quality, workmanship, or character of
the goods and services of Licensees or to authorize any liability for
indebtedness or claims of damage, whatsoever by any third party against
Licensors, or to impose any obligation on Licensors to purchase any of the goods
and services.
(f) For the purposes of obtaining Licensor Approval under this Article
III, Licensors and Licensees designate the following individuals as the person
to communicate regarding Licensor Approval:
if to Licensors:
Sunmarks, Inc.
Ten Penn Center
0000 Xxxxxx Xxxxxx
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000
Attn: Xxxxxx X. Xxxxx, Esq.
Telecopy:
with a copy to:
Xxxx Kurtizkes
Vice President and General Counsel
Sunoco, Inc.
Ten Penn Center
0000 Xxxxxx Xxxxxx
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000
Telecopy: (000) 000-0000
if to Licensees:
Sunoco Logistics Partners L.P.
c/o Sunoco Partners LLC, its general partner
Ten Penn Center
0000 Xxxxxx Xxxxxx
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000
Attn:
Telecopy:
with a copy to:
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Xxxxxxx X. Xxxxxx
General Counsel and Secretary
Sunoco Partners LLC
0000 Xxxxxx Xxxxxx
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000
Telecopy: (000) 000-0000
Licensors and Licensees may change the foregoing by delivery in writing of such
change in compliance with Section 4.3 of this Agreement. Communications
regarding Requests for Licensor Approval shall be communicated in the same
manner as delivery of notice under Section 4.3.
3.3 Ownership. Licensees acknowledge that Licensors own all right, title
and interest in the Marks and the goodwill associated with the Marks, and that
any use of the Marks by Licensees and any goodwill associated with such use
shall inure to the benefit of Licensors. Licensees agree that they shall never
attack or contest or assist others in attacking or contesting the Marks or
Licensors' rights in the Marks. Licensees agree not to register or attempt to
register the Marks or any similar trade name, trademark or service xxxx, or
cause the Marks or any similar trade name, trademark or service xxxx to be
registered in any country, state or other jurisdiction whether within or outside
the Territory. Licensors hereby reserve the exclusive worldwide right to use and
register the Marks for use on, and in connection with, any goods and services.
If Licensors require any specimens of use, or any photographic reproductions of
other identifying materials of use by Licensees, for any filing for a trademark
and service xxxx, Licensees shall promptly provide Licensors with same at
Licensees' expense.
3.4 Estoppel. Nothing in this Agreement shall be construed as conferring by
implication, estoppel, or otherwise upon the Partnership Group (a) any license
or other right under the trademark rights of Licensors other than the license
granted herein to the Marks as set forth expressly herein or (b) any license
rights other than those expressly granted herein.
3.5 Warranties; Disclaimers.
(a) Each Licensor represents and warrants that (i) it owns and has the
right to license the Marks licensed under this Agreement and (ii) the Marks do
not infringe upon the rights of any third parties.
(b) EXCEPT FOR THE WARRANTIES AND REPRESENTATIONS DESCRIBED IN SECTION
3.5(a), LICENSORS DISCLAIM ANY AND ALL WARRANTIES, CONDITIONS OR REPRESENTATIONS
(EXPRESS OR IMPLIED, ORAL OR WRITTEN) WITH RESPECT TO THE LICENSE IN THIS
ARTICLE III, OR ANY PART THEREOF, INCLUDING ANY AND ALL IMPLIED WARRANTIES OF
NON-INFRINGEMENT, MERCHANTABILITY OR FITNESS OR SUITABILITY FOR ANY PURPOSE
(WHETHER THE PARTY KNOWS, HAS REASON TO KNOW, HAS BEEN ADVISED, OR IS OTHERWISE
IN FACT AWARE OF ANY SUCH PURPOSE) WHETHER
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ALLEGED TO ARISE BY LAW, BY REASON OF CUSTOM OR USAGE IN THE TRADE OR BY COURSE
OF DEALING.
3.6 Indemnification. Licensees acknowledge that they will have no claim
against Licensors for any damage to property or injury to persons arising out of
or having any connection with Licensees' use of the Marks thereon, and Licensees
agree to indemnify, hold harmless and defend Licensors from and against all
suits, actions, claims, losses, damages and expenses (including attorneys'
fees), of whatsoever kind and character, including but not limited to injury to
Licensors' reputation, arising out of Licensees' use of the Marks thereon, or
arising out of any allegedly unauthorized use of any trademark, by Licensees in
connection with the manufacture, promotion, sale, performance or distribution of
their goods and services.
3.7 Infringement Proceedings.
(a) Licensees shall promptly notify Licensors of any known, threatened
or suspected infringement, imitation or unauthorized use of the Marks by any
third party brought to the attention of Licensees, their officers or employees.
Licensors, in their sole discretion, shall determine what action, if any, should
be taken in response to any infringement, imitation or unauthorized use of the
Marks by a third party. Licensees shall cooperate with Licensors in any action
taken by Licensors to enforce Licensors' rights in the Marks. Licensees shall
not take any action to prevent any infringement, imitation or unauthorized use
of the Marks without the prior written approval of Licensors, which Licensors
may withhold in their sole discretion.
(b) Licensors shall have the sole right, at their expense, to defend
and settle, for monetary and/or other damages, any claim made against Licensors
or Licensees by a third party alleging that the use of the Marks by Licensees
infringes upon any rights of others. Licensors expressly reserve the right to
terminate this Agreement, pursuant to Section 3.8 below, to settle any such
claim; provided, however, such right to settle shall not require any Licensee to
pay any amounts in settlement without such Licensee's approval in writing.
Licensees shall cooperate with and provide assistance to Licensors, at
Licensors' expense.
3.8 Termination of Trademark License.
(a) The license granted by this Article III shall terminate
automatically upon the expiration of the Applicable Period.
(b) The Licensees may terminate the trademark license without cause
during the Term upon ninety (90) days prior written notice to the Licensors.
(c) Licensors may terminate the license granted in Section 3.1 of this
Agreement if Licensees materially breach any of the provisions of this Article
III, provided that Licensee shall have thirty (30) days after receiving written
notice from Licensor within which to cure such breach. If Licensee has not cured
such breach at the end of said thirty (30) day period, then Licensor may
terminate the license granted in Section 3.1 of this Agreement by delivery of
written notice terminating the license granted therein effective immediately.
(d) In the event of a termination, Licensees, as promptly as
practicable (but in no event more than 180 days) following the termination of
the license granted in Article III, shall
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cease all use of the Marks in any form, including the Sunoco trade name, and
including without limitation any advertising and other promotional uses, and any
and all other names and marks confusingly similar thereto, and the license
granted to Licensees under Article III shall terminate and revert to Licensors.
Licensees shall use commercially reasonable efforts to remove the Marks promptly
from all property owned or controlled by Licensees, including without limitation
any stationery, signs, storage units, facilities, or promotional materials.
ARTICLE IV
Miscellaneous
4.1 Choice of Law; Submission to Jurisdiction. This Agreement shall be
subject to and governed by the laws of the Commonwealth of Pennsylvania,
excluding any conflicts-of-law rule or principle that might refer the
construction or interpretation of this Agreement to the laws of another state.
Each Party hereby submits to the jurisdiction of the state and federal courts in
the Commonwealth of Pennsylvania and to venue in Philadelphia, Pennsylvania.
4.2 Notice. All notices or requests or consents (other than those requests
for Licensor Approval under Section 3.2) provided for by, or permitted to be
given pursuant to, this Agreement must be in writing and must be given by
depositing same in the United States mail, addressed to the Person to be
notified, postpaid, and registered or certified with return receipt requested or
by delivering such notice in person or by telecopier or telegram to such Party.
Notice given by personal delivery or mail shall be effective upon actual
receipt. Notice given by telegram or telecopier shall be effective upon actual
receipt if received during the recipient's normal business hours or at the
beginning of the recipient's next business day after receipt if not received
during the recipient's normal business hours. All notices to be sent to a Party
pursuant to this Agreement shall be sent to or made at the address set forth
below such Party's signature to this Agreement or at such other address as such
Party may stipulate to the other Parties in the manner provided in this Section
4.2.
if to the Sunoco Entities:
Sunoco, Inc.
Ten Penn Center
0000 Xxxxxx Xxxxxx
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000
Attn: Xxxxxx X. Xxxxx, Esq.
Telecopy:
and
Sunmarks, Inc.
X.X. Xxx 000
Xxxxxxxx, Xxxxxxxx 00000
Attn: Xxxxxx X. Xxxxx, Esq.
Telecopy
with a copy to:
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Xxxx Kurtizkes
Vice President and General Counsel
Sunoco, Inc.
Ten Penn Center
0000 Xxxxxx Xxxxxx
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000
Telecopy: (000) 000-0000
if to the Partnership Group
Sunoco Logistics Partners L.P.
c/o Sunoco Partners LLC, its general partner
0000 Xxxxxx Xxxxxx
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000
with a copy to:
Xxxxxxx X. Xxxxxx
General Counsel and Secretary
Sunoco Partners LLC
0000 Xxxxxx Xxxxxx
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000
Telecopy: (000) 000-0000
4.3 Entire Agreement. This Agreement constitutes the entire agreement of
the Parties relating to the matters contained herein, superseding all prior
contracts or agreements, whether oral or written, relating to the matters
contained herein.
4.4 Amendment or Modification. This Agreement may be amended or modified
from time to time only by the written agreement of all the Parties hereto;
provided, however, that the Partnership may not, without the prior approval of
the Conflicts Committee, agree to any amendment or modification of this
Agreement that, in the reasonable discretion of the General Partner, will
adversely affect the holders of Common Units. Each such instrument shall be
reduced to writing and shall be designated on its face an "Amendment" or an
"Addendum" to this Agreement.
4.5 Effect of Waiver or Consent. No waiver or consent, express or implied,
by any Party to this Agreement or of any breach or default by any Person in the
performance by such Person of its obligations hereunder shall be deemed or
construed to be a consent or waiver to or of any other breach or default in the
performance by such Person of the same or any other obligations of such Person
hereunder. Failure on the part of a Party to complain of any act of any Person
or to declare any Person in default, irrespective of how long such failure
continues, shall not constitute a waiver by such Party of its rights hereunder
until the applicable statute of limitations period has run.
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4.6 Assignment. No Party shall have the right to assign its rights or
obligations under this Agreement without the consent of the other Parties
hereto.
4.7 Counterparts. This Agreement may be executed in any number of
counterparts with the same effect as if all signatory parties had signed the
same document. All counterparts shall be construed together and shall constitute
one and the same instrument.
4.8 Severability. If any provision of this Agreement shall be held invalid
or unenforceable by a court or regulatory body of competent jurisdiction, the
remainder of this Agreement shall remain in full force and effect.
4.9 Further Assurances. In connection with this Agreement and all
transactions contemplated by this Agreement, each signatory party hereto agrees
to execute and deliver such additional documents and instruments and to perform
such additional acts as may be necessary or appropriate to effectuate, carry out
and perform all of the terms, provisions and conditions of this Agreement and
all such transactions.
4.10 Rights of Limited Partners. The provisions of this Agreement are
enforceable solely by the Parties to this Agreement, and no Limited Partner of
the Partnership shall have the right, separate and apart from the Partnership,
to enforce any provision of this Agreement or to compel any Party to this
Agreement to comply with the terms of this Agreement.
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IN WITNESS WHEREOF, the Parties have executed this Agreement on, and
effective as of, the Closing Date.
SUNOCO, INC.
By:
--------------------------------------
Name:
---------------------------------
Title:
--------------------------------
SUNOCO, INC. (R&M)
By:
--------------------------------------
Name:
---------------------------------
Title:
--------------------------------
SUNMARKS, INC.
By:
--------------------------------------
Name:
---------------------------------
Title:
--------------------------------
SUNOCO LOGISTICS PARTNERS L.P.
By: Sunoco Partners LLC, its general partner
By:
--------------------------------------
Name:
---------------------------------
Title:
--------------------------------
SUNOCO LOGISTICS PARTNERS
OPERATIONS L.P.
By: Sunoco Logistics Partners GP LLC, its
general partner
By:
--------------------------------------
Name:
---------------------------------
Title:
--------------------------------
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SUNOCO PARTNERS MARKETING &
TERMINALS L.P.
By: Sunoco RM (In) LLC, its general partner
By:
--------------------------------------
Name:
---------------------------------
Title:
--------------------------------
SUNOCO PIPELINE L.P.
By: Sun Pipe Line GP LLC, its general partner
By:
--------------------------------------
Name:
---------------------------------
Title:
--------------------------------
SUNOCO PARTNERS LLC
By:
--------------------------------------
Name:
---------------------------------
Title:
--------------------------------
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SCHEDULE I
Trademarks
