LICENSE AGREEMENT
Exhibit (k)(4)
This License Agreement (“Agreement”) is entered into effective as of September 15, 2009 (“Effective Date”) between, on the one hand, Xxxxxx X. Xxx Partners, L.P. (“Licensor”), a Delaware limited partnership with its principal place of business at 000 Xxxxxxx Xxxxxx, Xxxxxx, XX 00000, and, on the other, THL Credit, Inc., a Delaware corporation with its principal place of business at 000 Xxxxxxx Xxxxxx, Xxxxxx, XX 00000, and THL Credit Advisors LLC, a Delaware limited liability company with its principal place of business located at 000 Xxxxxxx Xxxxxx, Xxxxxx, XX 00000 (THL Credit, Inc. and THL Credit Advisors LLC are each a “Licensee” and are collectively “Licensees”), as follows:
RECITALS
WHEREAS, Licensor is a famous private equity firm that has acquired through diligent effort over many years a premier reputation within the financial services and investment management community for excellence in the fields of investing, investment management, and the financial and operational management of companies in which Licensor has made or supervised investments;
WHEREAS, Licensees acknowledge the fame and reputation of Licensor, and the goodwill associated with the trade name and service xxxx THL which is owned by Licensor and used in commerce by Licensor in association with its business and with the services it provides to investors, companies, and others; and,
WHEREAS, subject to the terms set forth below, Licensees wish to receive a license, and Licensor wishes to grant Licensees a license, to use the THL xxxx in association with the commercial activities of Licensees, as more fully defined below;
NOW THEREFOR, in consideration of the mutual covenants and agreements set forth below, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the parties agree as follow:
1. LICENSE
Subject to and conditioned upon Licensees’ compliance with all the terms of this Agreement, the Licensor grants to the Licensees a nonexclusive, personal, revocable, worldwide nontransferable license, without the right to delegate or sub-license, to (i) use the trade name THL as a component of the trade name of Licensees in the manner depicted in Exhibit A, and (ii) to use the service xxxx THL as a component of the permitted variations of this service xxxx described in Exhibit A in association with the services of Licensees. All rights not expressly granted to the Licensees are reserved to the Licensor. The trade name and service xxxx THL, along with the permitted variations thereof licensed hereunder, are hereinafter referred to collectively as the “Marks” and each individually as a “Xxxx.”
2. OWNERSHIP AND USE OF THE MARKS
2.1 The Licensees stipulate and agree that, subject only to the license granted herein, all rights, title and interests in and to the Marks is and shall be owned exclusively by the Licensor. The Licensees shall not take any action inconsistent with the Licensor’s ownership of the Marks, and covenant that they, acting alone or together, shall not initiate any proceeding in any forum challenging the existence, validity, or enforceability of the Marks, or any future variation of the Marks adopted by the Licensor. All goodwill and proprietary rights derived from the use by the Licensees of the Marks shall inure to Licensor’s benefit. At the request, and expense, of the Licensor, the Licensees shall provide all cooperation requested by the Licensor in connection with any effort by Licensor to establish, perfect, or defend the Marks, or any Xxxx, or the Licensor’s rights therein, including, without limitation, providing exemplars and samples of the Licensees’ use of the Xxxx, executing commercially reasonable forms of consent, assignment or release, and providing good faith testimony by affidavit, declaration, deposition or any other means.
2.2 The Licensees, and each of them, stipulate and agree that the Marks (and each of them) embody and symbolize the goodwill of the Licensor, and are associated with the highest quality services in the fields of investment, investment management, financial services, and the financing and management of operating businesses. All activities of Licensees carried out under the Xxxx used as a trade name, and all products and services provided under the Marks in commerce by Licensees, shall be of a nature and quality consistent with the high quality and reputation of Licensor and of the Marks, as reasonably determined by Licensor. At the Licensor’s request, the Licensees shall provide all samples, and permit all inspections and audits reasonably determined by the Licensor to be necessary to assure and confirm the Licensee’s compliance with this quality standard. All uses of any Xxxx by the Licensees shall be made consistent with such reasonable use and style guidelines as are provided by Licensor from time to time. Without limitation, the Licensees shall not alter, modify, or otherwise mutilate any Xxxx, and shall not create or develop any variation or new version of the Marks. The Licensees shall designate each service xxxx use of a Xxxx with the appropriate proprietary designation, such as, as appropriate to each mark, SM, or ®. In connection with all uses of the Marks the Licensees shall also provide the following notice, with the prominence customarily given to such notices in the specific context of use:
“THL, THL Credit, and the THL Credit logo xxxx are the proprietary names and marks of Xxxxxx X. Xxx Partners, L.P., an independently operated entity, and used with permission.”
In all agreements, publications, and materials in which a Licensee uses the Marks as a trade name or as a component of its trade name, the Licensee shall expressly disclose, in writing, that the Licensee is an independently operated entity, and that, in dealing with the Licensee, third parties shall have no recourse of any kind against the Licensor.
2.3 Licensees acknowledge that their proper use of the Marks in compliance with this Agreement is of benefit to Licensor through the increased fame and reputation that will inure to Licensor through Licensees’ appropriate activities. Hence, Licensees covenant that, subject to the terms of this agreement and only for so long as this License Agreement remains in effect, they shall use the Marks as a component of their trade names, and in connection with all services of Licensees that are of an appropriate nature and quality.
2.4 The Licensees (and each of them) represent, warrant and covenant that: (i) they have the authority to enter into this Agreement and perform all obligations under and exercise all rights in compliance with, this Agreement; (ii) all uses of Marks by Licensees shall be made in compliance with law and regulation, without breach of any contractual obligation or duty imposed by law (such as tort duties); and (iii) in its use of the Marks, each Licensee shall not associate the Xxxx with any product, service, or activity that violates, infringes, or otherwise misappropriates any proprietary right or interest of any third party other than alleged rights in the Marks.
3. TERM AND TERMINATION
3.1 The term of this Agreement shall be for a period of one (1) year beginning on the Effective Date. Unless terminated pursuant to its terms, this Agreement shall automatically renew for successive one year terms.
3.2 Notwithstanding the above, the license grant set forth herein to either Licensee, or, at Licensor’s discretion, this entire Agreement, may be terminated by Licensor at its sole discretion for any reason or no reason at all, such termination to be effective sixty (60) days following the receipt of written notice thereof from Licensor by the effected Licensee or Licensees. Only after the expiration of the first one (1) year term, either Licensee may terminate this Agreement at its sole discretion for any reason or no reason at all, such termination to be effective sixty (60) days following the receipt of written notice thereof from a Licensee by Licensor, provided, however, that a termination by either Licensee shall have the effect of terminating the entire Agreement as to both Licensees. In addition, this Agreement may be terminated by any party upon a material breach by the other party upon thirty (30) days’ prior written notice to the other party, provided that termination may be avoided if such breach is cured to the satisfaction of the non-breaching party within the thirty (30) days. Finally, Licensor may terminate this agreement as to either Licensee upon Licensor’s determination that such Licensee is not in compliance with Section 2 above, and the Licensor determines, at its sole discretion, that such Licensee remains non-compliant fifteen (15) days after receiving written notice thereof from the Licensor.
3.3 Licensees shall cease and desist from all use of any Xxxx immediately upon the termination or expiration of this Agreement for any reason. Termination or expiration of this Agreement shall neither release nor discharge any party from any obligation, debt or liability which shall have previously accrued and which remains to be performed upon the date of termination nor prevent a party from pursuing any other remedies at law or in equity.
4. NOTICES
All notices required by this Agreement shall be deemed given when in writing and delivered personally or deposited in the United States mail, postage prepaid, return receipt requested, addressed to the other party at the address set forth below or on such other address as the party may designate in writing in accordance with this Section:
| If to Licensor:
|
| Xxxxxx X. Xxx Partners, L.P. 000 Xxxxxxx Xxxxxx Xxxxxx, XX 00000 ATTN: Xxxxx Xxxxxx |
| If to THL Credit, Inc.: | If to THL Credit Advisors LLC: | |
|
000 Xxxxxxx Xxxxxx, 00xx Xx. Xxxxxx, XX 00000 ATTN: Xxxxx X. Xxxx |
THL Credit Advisors LLC 000 Xxxxxxx Xxxxxx, 00xx Xx. Xxxxxx, XX 00000 ATTN: Xxxxx X. Xxxx |
Notices given by mail shall be deemed received two (2) business days after mailing.
5. GENERAL PROVISIONS
This Agreement has been executed and delivered in, and shall be construed and enforced in accordance with, the laws of The Commonwealth of Massachusetts. This Agreement shall be binding upon and shall inure to the benefit of the Licensor and its successors and assigns. Except as expressly permitted in advance in writing by Licensor, Licensees, acting alone or together, shall not assign or otherwise transfer any rights granted to them under this Agreement for any reason, nor permit any other party to enjoy such rights through sublicensing, delegation, subcontracting, agency relationship or other means. No provision of this Agreement is intended, nor shall any provision of this Agreement be deemed or interpreted, to create any benefit to or for any person not a party to this Agreement. This Agreement may be amended only by a written instrument signed by the authorized representatives of the parties. This Agreement represents the entire Agreement of the parties regarding Licensee’s right to exploit any Xxxx and supersedes any previous agreements between the parties relating to the same subject matter. No waiver of any provision of this Agreement shall be effective against either party unless it is in writing and signed by the party granting the waiver. The failure to exercise any right shall not operate as waiver of such right. No delay or failure to require performance of any provision of this Agreement shall constitute a waiver of that provision as to that or any other instance. The Licensees stipulate and agree that any breach by either of them of any provision of Section 2, or use of the Marks outside of the scope of the grant set forth in Section 1, will cause the Licensor irreparable harm for which monetary damages will not be an adequate remedy. Therefore, Licensees stipulate that, in addition to all such other remedies to which the Licensor may be entitled at law or in equity, the Licensor shall be entitled to receive temporary, preliminary, and permanent injunctive relief with regard to any such breach of Section 2 or use of the Marks outside the scope of Section 1 by a Licensee.
[Signature Page Follows]
IN WITNESS WHEREOF, the parties have executed this Agreement effective as of the Effective Date. By their signatures below, each of the parties represents that they have the authority to execute this Agreement and do hereby bind the party on whose behalf their execution is made.
| “Licensor” | “Licensee” | |||||||
| Xxxxxx X. Xxx Partners, L.P. | THL Credit, Inc. | |||||||
| By: | /s/ Xxxxxxx X. Xxxxxxx |
By: | /s/ Xxxxx X. Xxxx | |||||
| Print: | Xxxxxxx X. Xxxxxxx |
Print: | Xxxxx X. Xxxx | |||||
| Its: | Managing Director |
Its: | CEO & CIO | |||||
| Date: | 9-15-2009 |
Date: | 9-15-2009 | |||||
| “Licensee” | ||||||||
| THL Credit Advisors LLC | ||||||||
| By: | /s/ Xxxxx X. Xxxx | |||||||
| Print: | Xxxxx X. Xxxx | |||||||
| Its: | CEO & CIO | |||||||
| Date: | 9-15-2009 | |||||||
EXHIBIT A
In addition to conforming with such style and usage guidelines as are set forth in the Agreement or as Licensor may provide Licensees, or either of them, from time to time pursuant to Section 2.2 of the Agreement, all uses of the Xxxx shall conform to the following:
I. Trade Name Uses.
All uses of the Xxxx as a component of the trade names of Licensees shall conform to the following, and no other trade name uses are permitted:
1. With regard to THL Credit, Inc. accepted trade name uses include:
a. THL Credit, Inc. and THL Credit, where “THL” is always depicted in capital letters, without intervening punctuation, and as part of a single continuous phrase with the word “Credit,” which shall always appear immediately following “THL” in the same font size, font color, and font style with “THL.”
| 2. | With regard to THL Credit Advisors, LLC, accepted trade name uses include: |
a. THL Credit Advisors LLC, and THL Credit Advisors, where “THL” is always depicted in capital letters, without intervening punctuation, and as part of a single continuous phrase with the words “Credit Advisors,” which shall always appear immediately following “THL” in the same font size, font color, and font style with “THL.”
II. Service Xxxx Uses.
All uses of the Xxxx as a service xxxx shall conform to the following:
1. The permitted service marks are the word xxxx THL CREDIT, and the design variation of the THL CREDIT xxxx that will be provided by Licensor to Licensees.
2. In the service marks, the letters “THL” shall not be used as a service xxxx apart from the term “CREDIT.”
3. The service xxxx shall be designated with an SM designation in all prominent uses.
III. Amendment.
This Exhibit A is in addition to, and without limitation, of Licensor’s rights and privileges under the Agreement. This Exhibit A may be modified by Licensor by providing Licensees a revised Exhibit A reflecting Licensor’s amendment in writing, provided that Licensees shall be permitted to continue to use existing materials in the previously permitted form until such time as such existing materials would be re-ordered or replaced in the ordinary course of business.
