AMENDED AND RESTATED LICENSE AGREEMENT
Exhibit 10.6
AMENDED AND RESTATED
LICENSE AGREEMENT
LICENSE AGREEMENT
This Amended and Restated License Agreement (this “Agreement”) is made and entered into
as of ___, 2005, by and between Clear Channel Identity, L.P., a Texas limited partnership,
whose principal place of business is located at 000 X. Xxxxx Xxxx, Xxx Xxxxxxx, Xxxxx 00000
(“Owner”), and Outdoor Management Services, Inc., a Nevada corporation, whose principal place of
business is located at 000 X. Xxxxx Xxxx, Xxx Xxxxxxx, Xxxxx 00000 (“Licensee”).
W I T N E S S E T H:
WHEREAS, Owner and Licensee entered into that certain License Agreement as of January 1, 2003
(the “Original Agreement”);
WHEREAS, Owner and Licensee are each indirect, wholly-owned subsidiaries of Clear Channel
Communications, Inc. (“CCU”), and CCU is in the process of strategically realigning its businesses;
WHEREAS, in connection with such strategic realignment, the parties desire to, and do hereby,
amend and restate the Original Agreement with this Agreement;
WHEREAS, Owner is the exclusive owner of all right, title and interest in and to all
tradenames, trademarks, service marks, common law marks, applications therefor and other rights
(the “Marks”) used by Owner including, without limitation, the Marks described in Exhibit A
attached hereto and incorporated herein;
WHEREAS, the Marks have achieved widespread recognition among members of the general public;
and
WHEREAS, it is the desire and intention of the parties that Licensee be permitted to use,
throughout the Territory (as hereinafter defined), the Marks, together with such other trademarks,
service marks and trade names owned and identified from time to time by Owner and accepted for
license by Licensee;
NOW THEREFORE, in consideration of the promises and mutual obligations set forth herein and
other good and valuable consideration, Owner and Licensee hereby agree as follows:
1. License. Subject to the terms of this Agreement, Owner hereby grants to Licensee a
non-exclusive license to use the Marks as well as such other trademarks, service marks and trade
names owned and identified from time to time by Owner and accepted for license by Licensee (the
“License”). The parties agree that Exhibit A automatically shall be amended to include all
of the Marks that Owner adopts in the Territory (as defined herein) and identifies to Licensee and
that Licensee accepts for license under this Agreement. The parties further agree that Exhibit
A automatically shall
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be amended to include all Marks listed in any trademark or service xxxx application Owner may
file as well as such other Marks agreed to by Owner and Licensee. Licensee shall use and may
license others to use the Marks in connection with its outdoor advertising business operations in
the Territory but shall not use the Marks on other goods or services unless otherwise agreed to by
Owner.
2. Territory. The territory of the License shall encompass the area contained within
the geographic bounds of the United States (the “Territory”); provided, however,
that the License granted to Licensee hereunder entitles Licensee to use the Marks on the Internet
in connection with its normal business operations.
3. Royalty Fee. Licensee shall pay Owner for the use of the Marks pursuant the amount
as set forth on Exhibit B attached hereto. The amount owed by Licensee shall accrue
throughout the fiscal year and shall be paid quarterly as follows: Within thirty (30) days after
the end of Owner’s fiscal quarter, Licensee shall pay to Owner the total amount owed by Licensee to
Owner for the use of the licensed property under this Agreement during such fiscal quarter, with a
credit against such payment for any amounts owed by Owner to Licensee for such fiscal quarter.
4. Records. Licensee shall keep books of account containing accurate and complete
records of all data necessary for the determination of the amounts payable to Owner under this
Agreement. Such records shall be open for inspection, copying and audit by a designated
representative of Owner at any time during the regular business hours of Licensee, provided that
reasonable notice is given to Licensee.
5. Specification and Quality Assurance. Licensee agrees that all products and
services which Licensee offers under the Marks shall be of high quality, and shall be rendered in
accordance with such specifications and standards as may be communicated by Owner to Licensee from
time to time. All advertising, promotion and other use of the Marks will be in good taste and in
such manner as will maintain and enhance the value of the Marks and the reputation for high quality
associated with the Marks. Licensee agrees to change any use of the Marks or any proposed use of
the Marks of which Owner does not approve. Licensee shall comply with all applicable federal,
state and regulatory laws concerning products and services offered under the Marks.
6. Acknowledgments by Licensee.
(a) Licensee acknowledges that Owner has exclusive right in and to the Marks and will not at
any time do or cause to be done any act or thing contesting or in any way impairing or tending to
impair any part of such right. All use of the Marks by Licensee will inure to the benefit of
Owner.
(b) Licensee shall not in any manner represent that it has any ownership in the Marks or the
registration thereof.
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7. Term. Unless otherwise terminated in accordance with the terms hereof, this
Agreement shall commence as of the date hereof and shall continue for a period of one (1) year;
provided that this Agreement shall automatically renew for additional one (1) year periods unless
either party gives notice of its election to terminate this Agreement at least ninety (90) days
before the end of any one-year period.
8. Termination.
(a) In the event of a breach by Licensee of any provision of this Agreement, Owner may give
Licensee notice in writing of the breach. Licensee shall have a period of sixty (60) days from the
date such notice is received to cure the breach specified therein, and if the breach is not cured
within such period or Licensee notifies Owner of its intention not to cure such breach, then Owner
shall be entitled to terminate this Agreement and exercise any other rights or remedies it may have
hereunder or as otherwise provided by law; provided, however, that if such breach
is not curable, for whatever reason, during such sixty (60) day period, Owner shall delay taking
action so long as Licensee shall have begun to cure such breach within such period and thereafter
proceeds diligently to complete the cure of the breach and such breach is cured within a reasonable
period thereafter; provided, further, that if the breach is not curable, then Owner
shall be entitled to immediately terminate this Agreement and exercise any other rights or remedies
it may have hereunder or as otherwise provided by law upon giving notice in writing of the breach
to Licensee.
(b) In the event of a breach by Clear Channel Outdoor Holdings, Inc. (“CCO”) of any provision
of that certain Master Agreement, dated ___, 2005, between CCU and CCO, that certain
Corporate Services Agreement, dated ___, 2005, between Clear Channel Management Services,
L.P. and CCO, that certain Tax Matters Agreement, dated ___, 2005, between CCU and CCO, or
that certain Employee Matters Agreement, dated ___, 2005, between CCU and CCO (collectively,
the “Intercompany Agreements”), and the failure of CCO to cure (if permitted) such breach as
provided in the applicable Intercompany Agreement, Owner shall be entitled to immediately terminate
this Agreement and exercise any other rights or remedies it may have hereunder or as otherwise
provided by law upon giving notice in writing of the breach to Licensee.
(c) In the event of a Change of Control (as defined below), Owner, subject to the Transitional
Period (as defined in Section 9(a)), shall be entitled to immediately terminate this Agreement and
exercise any other rights or remedies it may have hereunder or otherwise provided by law upon
giving written notice to Licensee. For purposes of this Section 8(c), “Change of Control” means
the occurrence of any event or circumstances that result in CCU ceasing to beneficially own,
directly or indirectly, more than fifty percent (50%) of the total voting power of the common stock
of CCO.
(d) Notwithstanding anything in this Agreement to the contrary, this Agreement may be
terminated by mutual consent of Owner and Licensee.
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(e) Notwithstanding anything in this Agreement to the contrary, Owner’s rights of termination
under Sections 8(a) , 8(b) and 8(c) and the parties’ rights of termination under Section 8(d) may
be exercised with respect to less than all of the Marks by giving written notice to such effect,
and in the event that Owner or the parties exercise their respective rights of termination with
respect to less than all of the Marks, this Agreement shall continue in full force and effect with
respect to the rest of the Marks.
9. Effect of Termination.
(a) In the event of a termination pursuant to Section 7 or Section 8(c), Licensee (i) shall
refrain from further use of the Marks, or any xxxx or name reasonably deemed by Owner to be similar
thereto, in connection with the manufacture, sale, offering, distribution or promotion of goods or
services; (ii) shall not operate its business in any manner which would falsely suggest to the
public that the License is still in force or that any relationship exists between Owner and
Licensee; and (iii) shall return all confidential information and promotional materials to Owner or
destroy said materials and notify Owner in writing of their destruction. Licensee shall fully
comply with this provision before the one year anniversary of the effective date of termination
(such period between the date of termination and such one year anniversary is referred to herein as
the “Transitional Period”).
(b) During the Transitional Period, Licensee may wish to transition to use of a new xxxx owned
by Licensee and phase out the use of the Marks gradually. In connection with such transition,
Licensee may wish to utilize such new xxxx simultaneously with the Marks. In the event Licensee
desires to utilize both the Marks and a new xxxx simultaneously during the Transitional Period,
Licensee shall provide at least thirty (30) calendar days prior written notice to Owner of such
proposed use, along with a rendering of the proposed usage. Owner 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 Owner shall be deemed to not have approved such
transitional usage if Owner does not deliver to Licensee its written approval thereof within such
thirty (30) calendar day period. Owner 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 Marks with
the new xxxx creates, in Owner’s reasonable business judgment, a composite xxxx that includes any
of the Marks, (ii) if the new xxxx proposed to be used by Licensee in addition to the Marks is
confusingly similar to any Xxxx, or (iii) if the proposed usage is derogatory or coveys a negative
connotation with respect to Owner or any Xxxx.
(c) In the event of a termination pursuant to any other subsection of Section 8, there shall
be no Transitional Period, all rights granted to Licensee hereunder shall cease immediately except
as provided in the last sentence of this Section 9(c), and Licensee (i) shall refrain from further
use of the Marks, or any xxxx or name reasonably deemed by Owner to be similar thereto, in
connection with the manufacture, sale, offering, distribution or promotion of goods or services;
(ii) shall not operate its business in any manner which would falsely suggest to the public that
the License is still in force
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or that any relationship exists between Owner and Licensee; and (iii) shall return all
confidential information and promotional materials to Owner or destroy said materials and notify
Owner in writing of their destruction. Licensee shall have sixty (60) days from the effective date
of termination to fully comply with this provision.
10. Indemnification. Owner shall indemnify and hold Licensee harmless from all costs
including, without limitation, reasonable attorneys’ fees, incurred as a result of all claims
asserted by third persons arising out of any allegations of infringement of the rights of any third
party due to the authorized use of the Marks by Licensee pursuant to this Agreement. Licensee
shall indemnify and hold Owner harmless from all costs including, without limitation, reasonable
attorneys’ fees, incurred as a result of all claims asserted by third persons arising out of any
allegations of infringement of the rights of any third party due to any use of the Marks by
Licensee that is not authorized pursuant to this Agreement.
11. Assignability. Licensee shall have the right to sublicense, assign or transfer
the License to any person or other legal or business entity at the time controlling, controlled by
or under common control with the Licensee; provided that, as used in this Section 11, “control”
shall mean ownership or control, directly or indirectly, of at least 50% of the outstanding stock
or other voting rights entitled to elect directors or, if the legal or business entity is not a
corporation, the corresponding managing authority.
12. Covenant by Owner. Owner shall be responsible for the costs and responsibilities
relating to the maintenance, monitoring, and defense of the Marks. Owner shall take whatever steps
are reasonable or necessary to ensure that any registrations issued with respect to the Marks which
are current on the date hereof remain current including, without limitation, the timely filing with
the U.S. Patent and Trademark Office of any and all documents necessary to secure the renewal or
incontestability of the Marks. To the extent Licensee’s assistance is needed in relation to these
activities, Licensee shall reasonably cooperate with Owner at the expense of Licensee.
13. Notice. Any notices required or permitted to be given under this Agreement shall
be in writing and shall be deemed to have been duly given when received if personally delivered;
when transmitted if transmitted by telecopy, electronic or digital transmission method; the day
after it is sent, if sent for next day delivery by a recognized overnight delivery service (e.g.,
Federal Express); and upon receipt, if sent by certified or registered mail, return receipt
requested. In each case, the notice shall be addressed to the party to be notified at its address
shown in the preamble to this Agreement, or at such other address as may be furnished in writing to
the notifying party.
14. Relationship. Nothing contained herein shall be construed to the parties in the
relationship of franchisor/franchisee, partners or joint venturers, it being agreed and understood
that each party is an independent contractor and is not an agent or employee of the other party.
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15. Severability. If any term or other provision of this Agreement is determined by a
court of competent jurisdiction to be invalid, illegal, or incapable of being enforced under any
rule of applicable law, or public policy, all other conditions and provisions of this Agreement
shall nevertheless remain in full force and effect so long as the economic or legal substance of
the transactions contemplated herein are not affected in any manner materially adverse to any
party. Upon such determination that any term or other provision is invalid, illegal, or incapable
of being enforced, the parties hereto shall negotiate in good faith to modify this Agreement so as
to effect the original intent of the parties as closely as possible in a mutually acceptable manner
in order that the transactions contemplated herein are consummated as originally contemplated to
the fullest extent possible.
16. Entire Agreement. This Agreement constitutes the entire agreement between the
parties with respect to the matters contained herein and supersedes all prior negotiations,
understandings and agreements, whether written or oral, between the parties with respect to the
matters contained herein, including but not limited to the Original Agreement.
17. Amendments. This Agreement shall not be modified or amended except by an
instrument in writing signed by both parties.
18. No Implied Warranties. Neither party makes any warranty or representation to the
other except as specifically set forth herein.
19. Further Documents. Each party shall, upon request, make, execute and deliver such
documents as shall be reasonably necessary to take such action as may be reasonably requested to
fully implement and carry out the purposes of the License.
20. Captions. The captions contained herein are for convenience and reference only
and in no way define, describe, extend, or limit the scope or intent of this Agreement or the
intent of any provisions contained herein.
21. Parties in Interest. This Agreement shall be binding upon and inure solely to the
benefit of each party hereto and their permitted successors, assigns and transferees, and nothing
in this Agreement express or implied, is intended to confer upon any other person any rights or
remedies of any nature whatsoever under or by reason of this Agreement.
22. Counterparts. This Agreement may be executed in one or more counterparts each of
which shall be deemed an original and all of which shall be deemed one and the same Agreement.
23. Governing Law. This Agreement shall be construed, interpreted and enforced in
accordance with, and the respective rights and obligations of the parties hereto shall be governed
by, the laws of the State of Texas.
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IN WITNESS OF WHEREOF this Agreement has been duly executed, effective as of the day and year
first above written.
| OWNER: |
||
| CLEAR CHANNEL IDENTITY, L.P. |
||
| By: | ||
| Name: | ||
| Title: | ||
| LICENSEE: | ||
| OUTDOOR MANAGEMENT SERVICES, INC. | ||
| By: | ||
| Name: | ||
| Title: | ||
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