TRADEMARK AND COPYRIGHT LICENSE AGREEMENT
Exhibit 10.4
THIS TRADEMARK AND COPYRIGHT LICENSE AGREEMENT (this “Agreement”) is made effective as
of December 21, 2005 (the “Effective Date”) by and between Clear Channel Identity, L.P., a
Delaware limited partnership (“Licensor”), and CCE Spinco, Inc., a Delaware corporation
(“Licensee”).
The following terms shall have the following meanings as used herein:
(a) “Affiliate” means, with respect to a specified person or entity, any other person
or entity or member of a group of persons or entities acting together that, directly or indirectly,
through one or more intermediaries, controls, or is controlled by or is under common control with,
the specified person or entity.
(b) “Distribution Date” shall mean that certain day defined as such under the Master
Separation and Distribution Agreement between the parties, dated December 20, 2005.
(c) “Domain Names” shall mean the domain name registrations that incorporate the
Marks, including, but not limited to, those set forth in Exhibit B, as may be amended from
time to time, used in connection with the Business.
(d) “Licensed Copyrighted Works” shall mean all packaging, labels, signage, marketing,
advertising and promotional materials bearing or displaying the Licensed Marks including website
materials that are used by Licensee for the Business in the Licensed Territory as of the Effective
Date, in only the specific form or medium in which they are embodied as of the Effective Date, or
in such other form as may be approved by Licensor as provided in Section 2, to the extent
that Licensor or one of its Affiliates owns each such work.
(e) “Licensed Marks” shall mean the Marks as and in the form in which they are used by
Licensee on or in connection with the Business in the Licensed Territory as of the Effective Date.
(f) “Licensed Territory” shall mean the world.
(g) “Term” shall mean the period beginning on the Effective Date and ending on the
first to occur of (i) the one year anniversary of the Distribution Date and (ii) the termination of
this Agreement pursuant to Section 11.2.
(h) “Trademark Rights” shall mean, collectively, all foreign, federal, state, and
common law rights in and to the Licensed Marks.
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after the end of each of the Licensor’s and Licensee’s fiscal quarters, Licensee shall pay to
Licensor the total amount owed by Licensee to Licensor for the use of the Licensed Marks under this
Agreement during such fiscal quarter.
(a) Licensee may use other marks, including marks owned by third parties, for the
Business, in addition to the Licensed Marks, provided Licensee has obtained the necessary
rights from the third party, if any. In no event shall the other xxxx be used in such a
manner that, in Licensor’s reasonable business judgment, a composite xxxx is created that
includes any of the Licensed Marks and, notwithstanding anything to the contrary in this
Agreement, Licensor may reject any proposed use that bears such a composite xxxx.
(b) It is hereby recognized that Licensee may wish to transition to a new xxxx or an
existing xxxx owned by Licensee during the course of this Agreement and phase out the use of
the Licensed Marks gradually during the Term. In connection with such transition, Licensee
may wish to utilize such new or existing xxxx in connection with the Business in addition to
the Licensed Marks. In the event Licensee desires to utilize both the Licensed Marks and a
new xxxx simultaneously during the transition, Licensee shall provide at least thirty (30)
calendar days prior written notice to Licensor of such proposed transition, along with a
rendering of the proposed transitional usage. Licensor shall have a period of thirty (30)
calendar days following receipt of such notice and rendition in which to give or withhold
its approval of such transitional usage and Licensor shall be deemed to not have approved
such transitional usage if Licensor does not deliver to Licensee its written approval
thereof within such thirty (30) calendar day period. Licensor shall not unreasonably
withhold or delay its approval, but such approval shall not be deemed to be unreasonable if
(i) the proposed usage of the Licensed Marks with such transitional xxxx creates, in
Licensor’s reasonable business judgment, a composite xxxx that includes any of the Licensed
Marks, (ii) if the new xxxx proposed to be used by Licensee in addition to the Licensed
Marks is confusingly similar to the Licensed Marks, or (iii) if the proposed usage is
derogatory or coveys a negative connotation with respect to Licensor or the Licensed Marks.
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for the limited purpose of enabling Licensee to exercise its rights under the Trademark
License (the “Copyright License”). By way of example, without limitation, in the case of a
print advertisement appearing in a particular magazine as of the Effective Date, the Copyright
License shall permit Licensee to utilize the advertisement in the same magazine. Notwithstanding
the foregoing, Licensee shall have the right during the Term to modify or create derivative works
of the Licensed Copyright Works and to use new media for the publication, distribution, display,
broadcast and/or transmission of same, subject to the prior written approval of Licensor, which
approval shall not be unreasonably withheld or delayed. In the event Licensee desires to modify,
create derivative works of or utilize new media for the publication, distribution, display,
broadcast and/or transmission of the Licensed Copyrighted Works in connection with the exercise of
its rights under the Trademark License, Licensee shall provide Licensor at least sixty (60)
calendar days prior written notice, which notice shall include reasonably sufficient details
concerning Licensee’s plans, including copies or drafts of the modified or derivative works, and a
list and description of the use thereof, including the media through which such works will be
published, distributed, displayed, broadcast and/or transmitted. Licensor shall have until the end
of such sixty (60) calendar day period in which to give or withhold its written approval for all or
a portion of the matters contained in Licensee’s notice; provided, that Licensor shall be deemed
not to have approved any matter contained in Licensee’s notice if Licensor does not deliver to
Licensee its written approval thereof within such sixty (60) calendar day period.
(a) Licensee shall cooperate with Licensor in connection with Licensor’s review of the
matters contained in Licensee’s notice, including by providing any additional information or
materials that may be requested by Licensor.
(b) Upon Licensor’s written approval of any modified or derivative works for use for
the Licensed Products such modified or derivative works shall be deemed to be “Licensed
Copyrighted Works.” In addition, upon approval (or deemed approval) by Licensor any
resulting trade dress or trademarks shall be deemed to be “Licensed Marks.” If
Licensor does not approve in writing any modified or derivative works, or the media through
which such works or any other Licensed Copyrighted Works are to be disseminated, then
Licensee shall be prohibited from employing same under the terms of this Agreement,
including under the Trademark License or the Copyright License. It is hereby expressly
understood, however, that the primary purpose of this Agreement is to enable Licensee to
transition to a new xxxx and trade dress for use in the Business. Accordingly, the failure
of Licensor to approve modified or derivative works shall not be deemed unreasonable if
Licensor, in its sole discretion, considers the proposed works to be a material alteration
of the Licensed Marks or Licensed Copyrighted Works as of the Effective Date.
(c) Any modified or derivative works not approved by Licensor hereunder and from which
the Licensed Marks are not removed or obliterated shall be promptly destroyed by Licensor,
Licensee and, if applicable, by any Permitted Third Party Provider (as defined in
Section 2.10).
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Licensee
shall cease all use of the New Works; provided, however, to the extent that the Licensed Marks can
be removed from the New Works, Licensee may continue to use the New Works with the new xxxx that it
will use for the Business.
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aware between any requirement of Licensor, and applicable foreign, federal, state and local laws,
and governmental orders and regulations as may be in effect from time to time. Licensee shall be
responsible for modifying any Licensed Copyrighted Works (including the costs of any such
modifications) as may be required to comply with applicable foreign, federal, state and local laws,
and governmental orders and regulations or with the terms of this Agreement. Any such modification
shall be made in accordance with Section 2.4; provided that Licensor agrees to provide as
soon as reasonably practicable any approval that is necessary to authorize Licensee to modify any
Licensed Copyrighted Works as may be required to comply with applicable foreign, federal, state and
local laws, and governmental orders and regulations. Licensee shall have a
further continuing obligation to notify Licensor immediately of any inquiry, investigation,
inspection or any other action by any government body or unit thereof, with respect to the
production, packaging, promotion, sale or distribution of the products and services sold in
connection with the Business by Licensee (or any Permitted Third Party Provider) and the results
thereof, or by any of Licensee’s customers.
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5.1 In connection with any and all of its uses of the Licensed Marks, Licensee agrees to
identify the licensed use under this Agreement and the proprietary rights of Licensor. Examples of
such notices include “CLEAR CHANNEL is a registered xxxx of Clear Channel
Identity, L.P.” and “CLEAR CHANNEL is a registered xxxx used by CCE Spinco, Inc. under license
from Clear Channel Identity, L.P.”
5.2 In connection with its use of any of the Licensed Marks, Licensee agrees to use
commercially reasonable efforts to make proper use of the “®” symbol or other proper notice to
indicate a registered xxxx, and the “™” symbol to indicate an unregistered xxxx in which Licensor
may claim rights and/or which is the subject of a state registration. Upon receiving notice from
Licensor that Licensee’s use of a registration notice or “™” symbol is incorrect or otherwise
deemed unacceptable, Licensee shall promptly modify such uses to obviate Licensor’s objections.
Licensor shall use commercially reasonable efforts to include a legally sufficient copyright notice
on the Licensed Copyrighted Works, including any modification or derivative works of the original
Licensed Copyrighted Works. Licensee shall comply with all of Licensor’s requests concerning the
copyright notice for the Licensed Copyrighted Works.
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shall
during the Term or thereafter register or use any domain name that incorporates the Licensed Marks,
or any formative of the Licensed Xxxx, or any confusingly similar xxxx, whether in a top level
domain name or secondary domain name, or as part of any other uniform resource locator (URL)
address.
8.1 Each of Licensor and Licensee (the “Receiving Party”), on behalf of itself, and on
behalf of its Affiliates, agrees to maintain the confidentiality of all data and other proprietary
information concerning the other party (the “Disclosing Party”) and/or the Disclosing
Party’s Affiliates that may be made available or disclosed to it during the Term (collectively, the
“Confidential Information”); provided that Confidential Information will not include any
information that: (a) is or becomes generally available to the public other than as a result of a
breach of this Agreement by the Receiving Party or its Affiliates; (b) was available to the
Receiving Party on a non-confidential basis prior to its disclosure to the Receiving Party by the
Disclosing Party; (c) becomes available to the Receiving Party on a non-confidential basis from a
source other than the Disclosing Party who the Receiving Party reasonably believes is not bound by
a legal or contractual obligation not to disclose such Confidential Information; or (d) was
independently developed by the Receiving Party without use of or reference to the Confidential
Information. Without limiting the foregoing, Licensor and Licensee will utilize the same methods
and practices in the protection of the Confidential Information that each utilizes in protecting
its own confidential information. Each of Licensor and Licensee, in its capacity as a Receiving
Party, agrees that it will not disclose the Confidential Information of the Disclosing Party
without the prior written consent of the Disclosing Party, except for disclosures (a) that may be
required by applicable law, rule or regulation, (b) that may be required by the Receiving Party to
enforce the rights of the Receiving Party under this Agreement, and (c) to the Receiving Party’s
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Affiliates and other representatives and agents that the Receiving Party reasonably believes need
to know such Confidential Information to perform obligations hereunder. Each of Licensor and
Licensee, in its capacity as a Receiving Party, will be responsible for any breach of this
Section 8.1 by its Affiliates, representatives and agents. Before any disclosure is made
pursuant to applicable law, rule or regulation, the party with the disclosure requirement will, if
permitted by applicable law, rule or regulation, give advance written notice of such
disclosure to the non-disclosing party so that such non-disclosing party may seek a protective
order against such disclosure. In the absence or unavailability of any such protective order, the
party with the disclosure requirement hereby agrees to take all reasonable and lawful actions to
seek confidential treatment for such disclosure and, to the extent practicable, to minimize the
extent of such disclosure. The provisions of this Section 8.1 shall survive expiration or
termination of this Agreement for any reason and shall remain in full force and effect in
accordance with its terms, without modification, limitation or impairment of any kind for a period
of two (2) years following such expiration or termination.
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judgment or settlement) as a result of or relating to (a) Licensee’s use of the Licensed Marks or
the Licensed Copyrighted Works, (b) Licensee’s breach of any of the terms of this Agreement, and
(c) the activities or omissions of Licensee or any of its stockholders, directors, officers,
employees, agents and assignees; provided, however, that Licensor shall not be entitled to
indemnification
hereunder to the extent that the Damages being sought were caused by any breach of a
representation or warranty of Licensor hereunder or act or omission of Licensor. If in the
reasonable good faith judgment of Licensor, the Licensee fails to undertake and continue the
defense of any of the foregoing, Licensor shall have the right (but not obligation) to make and
continue such defense as it considers appropriate and to settle the underlying matter at the
expense of Licensee. Nothing herein shall prevent Licensor from defending, if it so desires in its
own discretion, any matter at its own expense through its own counsel, notwithstanding that the
defense thereof may have been undertaken by Licensee.
(a) the failure of Licensee or a Permitted Third Party Provider to fully and timely
perform any of its obligations under this Agreement (including any failure to maintain an
Acceptable Level of Quality), which failure continues for thirty (30) calendar days, in the
case of a failure to maintain an Acceptable Level of Quality, or for ninety (90) days, in
the case of other failure, after written notice to Licensee from Licensor describing such
failure with reasonable specificity;
(b) the failure of any of the warranties or representations of Licensee in this
Agreement to be true and correct, which failure is not fully remedied within thirty (30)
calendar days of written notice to Licensee from Licensor describing such failure with
reasonable specificity.
11.2 This Agreement and the Trademark License and Copyright License granted to Licensee under
this Agreement, together with any and all rights of Licensee or any of its assigns or sublicensees,
shall terminate upon the first to occur of the following:
(a) Expiration of the Term;
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(b) the date specified for termination in a written notice by Licensee to Licensor;
(c) the date specified for termination in a written notice by Licensor to Licensee
after the occurrence of the Default;
(d) (i) Licensee files a petition for bankruptcy or is otherwise adjudicated bankrupt,
(ii) a petition for bankruptcy is filed against Licensee and such petition is not dismissed
within ninety (90) calendar days, or (iii) Licensee becomes insolvent, discontinues its
business or voluntarily submits to, or is ordered by a bankruptcy court to undergo,
liquidation pursuant to Chapter 7 of the United States Bankruptcy Code (or any successor
thereto);
(e) any assignment for the benefit of creditors of Licensee; or
(f) any attachment, execution of judgment or process against any of Licensee’s rights
under the Trademark License, the Copyright License or otherwise under this Agreement, unless
satisfied or released within sixty (60) calendar days.
(a) In addition to requirements upon expiration or termination set forth elsewhere in
this Agreement, within ten (10) calendar days of termination or expiration of this Agreement
for any reason, Licensee shall return or destroy, all materials (including, without
limitation, product, packaging, labels, signage, marketing, advertising or promotional
materials) pertaining to use of the Licensed Marks and the Licensed Copyrighted Works that
are in Licensee’s possession (or in the possession of any third party over which Licensee
maintains control with respect to possession of such materials, including any Permitted
Third Party Provider).
(b) Upon termination or expiration of this Agreement for any reason, Licensee shall not
operate its business in any manner which could suggest to the public that such license is
still in force, or that any relationship exists between Licensor and Licensee. Without
limitation, it is understood that this Section 11.3(b) shall require Licensee to
“de-identify” its facilities, products, services and materials so as to remove any
references to any of the Licensed Marks, including from its signage and all advertising,
marketing, packaging and promotional materials, and to change the overall appearance of any
location to eliminate the use of any trademark or trade dress confusingly similar with those
owned by Licensor.
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effect in accordance with their respective terms, without modification, limitation or impairment of
any kind.
(a) THIS AGREEMENT WILL BE GOVERNED BY AND CONSTRUED AND INTERPRETED IN ACCORDANCE WITH
THE SUBSTANTIVE LAWS OF THE STATE OF TEXAS, WITHOUT GIVING EFFECT TO ANY CONFLICTS OF LAW
RULE OR PRINCIPLE THAT MIGHT RESULT IN THE APPLICATION OF THE LAWS OF ANOTHER JURISDICTION.
(b) EACH OF THE PARTIES HERETO HEREBY IRREVOCABLY AND UNCONDITIONALLY CONSENTS TO
SUBMIT TO THE EXCLUSIVE JURISDICTION OF THE COURTS OF THE STATE OF TEXAS AND OF THE UNITED
STATES OF AMERICA LOCATED IN THE STATE OF DELAWARE, FOR ANY LITIGATION, CLAIM OR DISPUTE
UNDER THIS AGREEMENT AND THE TRANSACTIONS CONTEMPLATED HEREBY (AND AGREES NOT TO COMMENCE
ANY LITIGATION, CLAIM OR DISPUTE RELATING HERETO EXCEPT IN SUCH COURTS); PROVIDED, THAT THIS
SECTION 12.2(b) SHALL NOT PRECLUDE ANY PARTY TO THIS AGREEMENT FROM COMMENCING
LITIGATION, CLAIM OR DISPUTE IN ANOTHER JURISDICTION TO SECURE ENFORCEMENT OF ANY JUDGMENT
OR AWARD OBTAINED IN ACCORDANCE WITH THE TERMS OF THIS AGREEMENT, INCLUDING AN AWARD OF
SPECIFIC PERFORMANCE. EACH OF THE PARTIES HERETO HEREBY IRREVOCABLY AND UNCONDITIONALLY
WAIVES ANY OBJECTION TO THE LAYING OF VENUE OF ANY LITIGATION, CLAIM OR DISPUTE ARISING OUT
OF THIS AGREEMENT OR THE TRANSACTIONS CONTEMPLATED HEREBY IN THE COURTS OF THE STATE OF
TEXAS OR THE UNITED STATES OF AMERICA LOCATED IN TEXAS, HEREBY FURTHER IRREVOCABLY AND
UNCONDITIONALLY WAIVES AND AGREES NOT TO PLEAD OR CLAIM IN ANY SUCH COURT THAT ANY SUCH
LITIGATION BROUGHT IN ANY SUCH COURT HAS BEEN BROUGHT IN AN INCONVENIENT FORUM.
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agency, employment, master and servant, or similar relationship between Licensor and Licensee, and
no representation to the contrary shall be binding upon either party.
All notices and other communications under this Agreement must be in writing and will be
deemed given (a) when delivered personally, (b) on the fifth business day after being mailed by
certified mail, return receipt requested, (c) the next business day after delivery to a recognized
overnight courier or (d) upon transmission and receipt by the facsimile operator of confirmation of
successful transmission, if sent by facsimile, to the parties at the following addresses or
facsimile numbers (or to such other address or facsimile number as such party may have specified by
notice given to the other party pursuant to this provision):
If to Licensor, to:
Clear Channel Identity, L.P.
c/o Clear Channel Communications, Inc.
000 X. Xxxxx Xxxx
Xxx Xxxxxxx, XX 00000
Attn: Chief Executive Officer
Facsimile: (000) 000-0000
c/o Clear Channel Communications, Inc.
000 X. Xxxxx Xxxx
Xxx Xxxxxxx, XX 00000
Attn: Chief Executive Officer
Facsimile: (000) 000-0000
If to Licensee, to:
CCE Spinco, Inc.
0000 Xxxxx Xxxxxx Xxxxx, 0xx Xxxxx
Xxxxxxx Xxxxx, XX 00000
Attn: Chief Executive Officer
Facsimile: (000) 000-0000
0000 Xxxxx Xxxxxx Xxxxx, 0xx Xxxxx
Xxxxxxx Xxxxx, XX 00000
Attn: Chief Executive Officer
Facsimile: (000) 000-0000
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will be deemed to be delivered by such party to any other party hereto until such delivering party
has received signature pages from all parties signatory to this Agreement.
15.9 Time is of the Essence. Time is of the essence of this Agreement.
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LICENSOR: CLEAR CHANNEL IDENTITY, L.P. By ___, its general partner |
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By: | /s/ Xxxxxxx Xxxx | |||
Name: Xxxxxxx Xxxx | ||||
Title: | ||||
LICENSEE: CCE SPINCO, INC. |
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By: | /s/ Xxxxxxx Xxxxxx | |||
Name: | Xxxxxxx Xxxxxx | |||
Title: | Chief Executive Officer |
The undersigned subsidiaries of CCE Spinco, Inc. have caused this Trademark and Copyright
License Agreement to be executed to be effective on the date first written above by their
respective duly authorized officers for the purpose of agreeing to be bound to this Trademark and
Copyright License Agreement and to be liable, jointly and severally, with CCE Spinco, Inc. to Clear
Channel Communications, Inc. for all covenants, agreements, liabilities and obligations provided
herein or arising hereunder.
CCE HOLDCO #1, INC. |
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By: | /s/ Xxxxxxx Xxxxxx | |||
Xxxxxxx Xxxxxx | ||||
Chief Executive Officer | ||||
CCE HOLDCO #2, INC. |
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By: | /s/ Xxxxxxx Xxxxxx | |||
Xxxxxxx Xxxxxx | ||||
Chief Executive Officer | ||||
SFX ENTERTAINMENT, INC. |
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By: | /s/ Xxxxxxx Xxxxxx | |||
Xxxxxxx Xxxxxx | ||||
Chief Executive Officer | ||||
EXHIBIT A
Exhibit A
EXHIBIT B
Certain Domain Name Registrations
1. xx.xxx
Exhibit B
EXHIBIT C
Royalty Rate
With respect to the period beginning on the Effective Date and ending on June 20, 2006, no
royalties shall accrue or be payable.
With respect to the period beginning on June 21, 2006 and ending on the last day of the Term,
royalties shall accrue at the rate of $100,000 per calendar month or, for any period of less than a
full calendar month, at the rate of $3,300 per day.
Exhibit C