1
Exhibit 10.26
AGREEMENT made as of by and between CBS CORPORATION
(Formerly known as Westinghouse Electric Corporation), 00 Xxxx 00xx Xxxxxx, Xxx
Xxxx, Xxx Xxxx 00000 (herein referred to as "CBS") and INFINITY BROADCASTING
CORPORATION, 00 Xxxx 00xx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000 (herein referred to
as "Licensee")
WITNESSETH
WHEREAS, CBS is the owner of the trademarks set forth in Schedule A
(herein collectively referred to as the "Trademarks"); and
WHEREAS, Licensee had used the Trademarks and Licensee wishes to
continue to use the Trademarks;
NOW, THEREFORE, in consideration of the mutual covenants herein
contained the parties have mutually agreed as follows:
1. (a) CBS hereby grants to Licensee, and Licensee hereby accepts a
non-exclusive, non-assignable, royalty-free, fully paid right and license to use
the Trademarks in the United States, its territories and possessions including
Puerto Rico only in connection with Licensee's radio broadcasting services
(herein referred to as the "Services") (and specifically excluding any other
current or future business of Licensee including but not limited to Licensee's
outdoor advertising business) and to use the Trademarks in the advertising,
marketing and promotion of the Services (herein called the "Trademark Usages")
during the Term; provided, however, that no advertising, marketing or promotion
use of the Trademarks will utilize or be made on or in connection with any
product, merchandise or services other than the Services without CBS's prior
written approval in each instance.
(b) Licensee shall have the right to sublicense the Trademarks to a CBS
Sublicensee; provided, however, Licensee obtains CBS's prior written approval of
any such proposed sublicense in each instance; and provided further, that no
such sublicense shall relieve Licensee of any of its obligations under this
Agreement. Any CBS Sublicensee will execute a trademark license agreement
containing substantially all of the same terms and conditions of this Agreement.
A "CBS Sublicensee" shall mean a current and future, direct or indirect
affiliate of Licensee in which CBS Corporation beneficially owns, directly or
indirectly, at least 50% of the voting power of such affiliate.
2. The Term of this Agreement shall commence on December , 1998 and will
continue, unless sooner terminated, with respect to each of the Trademarks for
the term of respective trademark's registration and any renewals thereof.
- 1 -
2
3. Licensee will use the Trademarks only upon or in connection with the
Services in accordance with standards of quality specified or approved by CBS.
Prior to the commencement of the Trademark Usages, Licensee shall furnish to CBS
for its approval a sample of the Trademark Usages materials. In addition,
Licensee shall furnish to CBS samples of specific uses of the Trademarks in
connection with the Services. Licensee shall not authorize full-scale production
of the Trademark Usages until after CBS's approval has been obtained in writing
in each instance. Any change in the materials utilizing the Trademarks or the
Trademark Usages shall be subject to CBS's prior approval in each instance. If
CBS requests any change to any submitted Trademark Usages materials or use of
the Trademarks in connection with the Services, such item as changed shall be
resubmitted to CBS for approval. Approval by CBS shall not, however, relieve
Licensee of any of its warranties or obligations hereunder, and the uses of the
Trademarks in connection with the Services and each of Trademarks Usages
materials shall strictly conform with the samples and proofs approved by CBS.
Samples and materials to be approved shall be submitted to CBS c/o Associate
General Counsel, Contract, Rights and Development, CBS Broadcasting Inc. or such
other person that may be designated in writing by CBS.
4. Licensee admits the validity of the Trademarks and covenants that
Licensee will not directly or indirectly contest the validity of the Trademarks
or the right and title of CBS therein. Licensee recognizes the value of the
goodwill and secondary meaning associated with the Trademarks. Licensee shall
not register or attempt to register the Trademarks either alone or in
combination with any other xxxx, word, symbol, or the like anywhere in the world
or aid or abet anyone else in doing so. Licensee acknowledges that the
Trademarks (including all rights therein and goodwill associated therewith)
shall, as between Licensee and CBS, be and remain the exclusive and complete
property of CBS. CBS reserves the right to lease, authorize or permit the use of
the Trademarks by third parties as CBS may see fit. Licensee will not use or
authorize the use of the Trademarks in any manner, at any time or in any place
not specifically licensed herein. Licensee shall not adopt or use any name or
xxxx that CBS considers to be confusingly similar to the Trademarks.
5. Licensee warrants and represents that the Services will be of the
highest standard in style and quality; that the Trademark Usages will conform to
the specifications and quality of the samples furnished by Licensee to CBS
pursuant to paragraph 3 hereof; that the Services and Trademark Usages will be
in accordance with all applicable federal, state, local and foreign, if
applicable, laws and in a manner that will not reflect adversely upon CBS, its
licensees or assignees.
6. (a) Licensee shall, during the conduct of its business hereunder, do
everything necessary to protect and preserve CBS's Trademarks during the Term
hereof. In connection therewith, Licensee will comply with proper trademarks
usage in connection with the Services and the Trademark Usages and will comply
with proper trademark usage and trademark laws of the United States. CBS shall
from time to time advise Licensee what usage of the Trademarks shall be proper.
However, Licensee's obligations under this subparagraph shall be independent of
the instructions of CBS. At the request of CBS, Licensee shall execute all
documents
- 2 -
3
necessary to procure, protect and preserve the aforesaid trademark
rights, including but not limited to, applications for recordation of Licensee
as a Registered User of the Trademarks.
(b) Licensee shall print, stamp or otherwise affix the following
Trademark notice "(R)" or "Trademark of CBS Corporation" on the Trademark Usages
and in connection with the Services, all in accordance with instructions from
CBS, including without being limited to, instructions with respect to position,
design, and letter size.
(c) The Trademarks and the right to use the Trademarks which arises out
of the license hereby granted to use the Trademarks shall be and remain the sole
and complete property of CBS. The right and license granted herein shall not
constitute an assignment by CBS of said Trademarks and Licensee shall not at any
time acquire or claim any right, title or interest of any nature whatsoever in
the Trademarks by virtue of this Agreement or of Licensee's use thereof on or in
connection with the Services. In the event that during the Term of this
Agreement, Licensee shall create any additional Trademarks or other proprietary
right related to or arising out of the aforesaid Trademarks, as a result of the
exercise by Licensee of any right granted to it hereunder, such Trademarks or
other proprietary right shall immediately vest in CBS and Licensee shall be
authorized to use such new Trademarks or proprietary right as though same had
specifically been included in this Agreement.
(d) Subject to paragraph 10 hereof, upon the termination of this
Agreement for any reason, Licensee will immediately cease all further use of the
Trademarks and all trademark rights shall forthwith revert to CBS. If deemed
necessary, Licensee shall execute any requested written reassignment of such
rights.
(e) All uses of the Trademarks by Licensee and all goodwill associated
with such uses will inure to the benefit of CBS.
7. Licensee shall promptly notify CBS of any unauthorized use or
infringement by third parties of any rights granted to Licensee herein, and will
cooperate fully in any action at law or in equity undertaken by CBS with respect
to such unauthorized use or infringement (it being understood that all expenses
in connection with such action shall be borne by CBS). CBS reserves the right
not to bring an infringement action.
8. (a) Licensee warrants and represents that Licensee is free to enter
into and fully perform this Agreement, that all ideas, creations, materials and
intellectual property furnished by Licensee in connection with the Services and
the Trademark Usages will be Licensee's own and original creation (except for
matter in the public domain or material which Licensee is fully licensed to use)
and that the Services and the Trademark Usages will not infringe upon or violate
any rights of any third party of any nature whatsoever.
(b) Licensee will at all times indemnify and hold harmless CBS from and
against any and all claims, damages, liabilities, costs and expenses, including
reasonable counsel fees arising out of Licensee's use of the Trademarks in the
Trademark Usages and/or the Services or out of any breach by Licensee of any
warranty or agreement made by Licensee herein.
- 3 -
4
9. In the event that: (i) Licensee fails to comply with any of Licensee's
obligations hereunder, (ii) an involuntary petition in bankruptcy is filed
against Licensee and is not dismissed within thirty (30) days thereafter, a
receiver or trustee of any of Licensee's property is appointed and such
appointment is not vacated within thirty (30) days thereafter, or Licensee takes
advantage of any insolvency law, (iii) Licensee fails to conform to the
specifications of the samples furnished or reduces the quality of the Services
or the Trademark Usages approved by CBS without prior consent, (iv) Licensee
commits any act or omission which in CBS's opinion would be substantially likely
to materially impair, dilute or diminish the value, reputation or
distinctiveness of the Trademarks or in CBS's opinion would be substantially
likely to impair, dilute or diminish the value, image, integrity or reputation
of the CBS Corporation (or any business unit thereof), (v) the Intercompany
Agreement between CBS Corporation and Infinity Broadcasting Corporation dated as
of December ______, 1998 (herein called the "Intercompany Agreement")
terminates, or (vi) a Trigger Date (as defined in the Intercompany Agreement)
occurs, then, in any of such events, in addition to any other rights of any
nature that CBS may have at law or in equity, CBS shall have the right, at its
option, to terminate this Agreement.
10. Upon expiration or termination of this Agreement, all rights granted to
Licensee herein shall forthwith revert to CBS, with the following consequences:
(i) Licensee shall not thereafter make any use of the Trademarks in the
Trademark Usages and/or the Services whatsoever, except that in the event of the
termination of this Agreement, pursuant to any provision of paragraph 9 hereof,
Licensee may continue the Services use or the Trademark Usages on a
non-exclusive basis during a period of sixty (60) days thereafter in accordance
with all of the terms and conditions contained in this Agreement.
11. (a) CBS warrants and represents that it has the right to enter into
this Agreement and to grant all of the rights granted hereunder. CBS also
warrants that it is the owner of United States Trademark Registrations set forth
in Schedule A and has all rights under said Registration for the services
specified therein.
(b) CBS will indemnify and hold Licensee harmless from and against any
and all claims, damages, liabilities, costs and expenses, including legal
expenses and reasonable counsel fees, arising out of CBS's use of the
Trademarks. Licensee shall promptly notify CBS in the event of any claim, suit
or proceeding being asserted or commenced against Licensee and CBS shall assume
the defense of such claim, suit or proceeding. Licensee shall cooperate fully
with CBS in the defense thereof. CBS may join Licensee as a party and shall not
settle any such claim, suit or proceeding without Licensee's written consent,
which consent shall not be unreasonably withheld. Licensee will promptly notify
CBS of any claim to which the above indemnity applies and CBS shall defend the
same at its expense. CBS's obligations with respect thereto shall be limited to
paying the amount of any judgment, or settlement approved by CBS in connection
therewith.
(c) CBS reserves the right to prosecute, defend and conduct at its own
expense all proceedings that it may deem proper or necessary for the protection
of said Trademarks, and at the sole option of CBS it may conduct proceedings in
its own name or in the name of Licensee, or jointly in its name with Licensee,
and Licensee agrees that it will not claim or reserve any
- 4 -
5
rights against CBS as the result of such action, and furthermore agrees to
notify CBS promptly of any adverse, pending or threatened litigation in respect
of said Trademarks of which it becomes aware.
12. (a) Except as otherwise specifically provided herein, all notices
hereunder shall be in writing and shall be given by personal delivery,
registered or certified mail, at the respective addresses hereinabove set forth,
or such other address or addresses as may be designated by either party. Such
notices shall be deemed given when mailed except that notice of change of
address shall be effective only from the date of its receipt.
(c) Nothing herein contained shall be construed to constitute a
partnership or joint venture between the parties hereto, and neither Licensee
nor CBS shall become bound by any representation, act or omission of the other.
(d) A waiver by either party of any term or condition of this Agreement
in any instance shall not be deemed or construed to be a waiver of such term or
condition for the future, or of any subsequent breach thereof. All remedies,
rights, undertakings, obligations and agreements contained in this Agreement
shall be cumulative, and none of them shall be in limitation of any other
remedy, right, undertaking, obligation or agreement of either party.
(e) CBS may assign (by operation of law or otherwise) its rights
hereunder in whole or in part to any person, firm or corporation, and such
rights may be assigned by any assignee thereof; provided, however, that no such
assignment shall relieve CBS of any of its obligations hereunder. Licensee shall
not assign (by operation of law or otherwise), transfer, sublicense or otherwise
encumber this Agreement without the prior written approval of CBS. Any
assignment or other transfer, sublicense, or other encumbrance of this Agreement
by Licensee without the prior written approval of CBS shall be null and void and
of no effect ab initio.
(f) This Agreement has been entered into in the State of New York, and
the validity, interpretation and legal effect of this Agreement shall be
governed by the laws of the State of New York applicable to contracts entered
into and performed entirely within the State of New York, with respect to the
determination of any claim, dispute or disagreement, which may arise out of the
interpretation, performance or breach of this Agreement.
(g) This Agreement contains the entire understanding of the parties
hereto relating to the subject matter hereof and cannot be changed or terminated
orally.
IN WITNESS WHEREOF, this Agreement has been signed by the parties as of
the first above written.
INFINITY BROADCASTING CBS CORPORATION
CORPORATION
By_____________________________________ By__________________________________
- 5 -
