BRAND LICENSE AGREEMENT
Exhibit
10.2
THIS
BRAND LICENSE AGREEMENT
(this
“Agreement”) is entered into as of June __, 2006 (the “Effective Date”), by and
between CNL
INTELLECTUAL PROPERTIES, INC.,
a
Florida corporation (“Licensor”) and CNL
HOTELS & RESORTS, INC.,
a
Maryland corporation (“CHO”) (CHO and the CHO Affiliates (as defined in Section
11(a)(iii)) below are collectively referred to herein as
“Licensee”).
Preliminary
Statement
WHEREAS,
Licensor is a wholly-owned subsidiary of CNL Financial Group, Inc., a Florida
corporation (“CFG”); and
WHEREAS,
Licensor owns the xxxx “CNL,” as applied to various services, and the service
marks and registrations and applications therefor set forth on Appendix “A”
attached hereto (collectively, the “Marks”); the Policies & Standards (as
hereinafter defined) (collectively, the “Proprietary Materials”); and brand
content, including Licensor’s tag lines and descriptors, domain names, including
but not limited to the domain names set forth on Appendix “B” attached hereto,
trade names, corporate names, designs, typography, color palettes, internet
sites, stationery, signage, promotional items, tradeshow booths, sponsorships,
events, and copyrightable works including but not limited to press releases,
quarterly and annual reports, photographs, forms, advertising and marketing
materials, presentations, and awards (collectively, the “Brand Content”);
and
WHEREAS,
Licensor is an owner of the Core Values & Key Behaviors set forth on
Appendix “C” attached hereto (the “Core Values”) and, upon any exercise by
Licensee of the option set forth in Section 1, the Core Values shall, for
purposes of this Agreement, be included in the term “Proprietary Materials”;
and
WHEREAS,
CHO is
a real estate investment trust (REIT), and Licensee is engaged primarily in
the
ownership and leasing of interests in hotels and resort properties, including,
but not limited to, full service hotels and resorts, limited service hotels,
extended stay hotels, and their associated amenities such as golf courses,
spas,
ballrooms and water parks (collectively, including the management thereof,
referred to as “Licensee’s Business”); and
WHEREAS,
CHO
wishes to obtain an exclusive license for Licensee to incorporate Licensor’s
Xxxx “CNL” into and use the names “CNL Hotels & Resorts,” “CNL Hotel” and
“CNL Resort” (the “CHO Names”) and to obtain a license for Licensee to use the
Marks, Proprietary Materials and Brand Content (collectively, the “Licensed
Materials”) in connection with Licensee’s Business, which license shall be
exclusive as to any activities that are prohibited by the covenant not to
compete in Section 9.5 of the Merger Agreement (as defined in Section 1(d)
below) during the term of said covenant, and which license shall otherwise
be
non-exclusive, and Licensor is willing to grant to Licensee such license of
its
rights provided that CHO agrees to comply (and cause the CHO Affiliates (as
defined in Section 11(a)(iii) below) to comply) at all times during the Term
(as
defined in Section 5(a) below) with the terms and conditions of this Agreement;
and
WHEREAS,
Licensor now licenses, and will continue to license in the future, some or
all
of the Licensed Materials, excluding the CHO Names, to various entities that
are
affiliated in some way with CFG and/or its parent company; and
WHEREAS,
CHO is
therefore willing at all times during the Term to comply with, and to cause
the
CHO Affiliates to comply at all times during the Term with, the Policies &
Standards and the other terms and conditions of this Agreement.
NOW,
THEREFORE,
for
good and valuable consideration, the receipt and sufficiency of which are hereby
acknowledged by the parties, the parties agree as follows:
1. Grant.
Licensor grants to Licensee during the Term (as defined in Section 5(a) below),
for use only in connection with Licensee’s Business:
(a) an
exclusive, license to incorporate the xxxx “CNL” into and to use the “CHO Names”
in the Territory (as defined below); and
(b) a
non-exclusive license to use the Proprietary Materials in the Territory;
and
(c) a
non-exclusive license to use the Brand Content in the Territory.
(d) a
license
to use the Marks in connection with Licensee’s Business in the Territory, which
license shall be exclusive as to any activity prohibited by the covenant not
to
compete in Section 9.5(a) of that certain Amended and Restated Agreement and
Plan of Merger entered
into as of April 3, 2006 by and among CHO, CNL Hotels & Resorts Acquisition,
LLC; CNL Hospitality Corp. (“CHC”); the stockholders of CHC; CNL Financial
Group, Inc.; and CNL Hospitality Properties Acquisition Corp. (the “Merger
Agreement”) during the term of said covenant not to compete, and such license
shall otherwise be nonexclusive.
CHO
shall
have options, exercisable at any time during the term of this Agreement by
giving written notice to Licensor, to (i) obtain a non-exclusive license for
Licensee to use the Core Values in the Territory, and/or (ii) require Licensor
to register any CHO Name(s) and/or any Xxxx(s) in appropriate classifications
for Licensee’s Business at Licensee’s expense.
For
purposes of this Agreement, the term “Territory” shall mean the United States,
Canada, and any other country that (y) Licensee notifies Licensor in writing
that it intends to use any of the CHO Names and/or the Marks in such country,
and (z) the registration of such CHO Names and/or Marks is available in such
country. Upon such notification Licensor shall use commercially reasonable
efforts promptly to verify the availability of the CHO Names and/or the Marks
for use by Licensee, and register such CHO Names and/or the Marks, in such
country at Licensee’s expense.
The
license granted herein does not obligate Licensee to use any CHO Name or any
Xxxx, nor is it intended to prohibit Licensee from adopting or using any other
trade name, trademark or service xxxx, whether owned or licensed by CHO, so
long
as any use by Licensee of any CHO Name(s) and/or any Xxxx(s) complies with
the
terms of this Agreement.
2. Restrictions.
(a) The
licenses set forth in Section 1 above (the “Licenses”) may not be assigned,
pledged, encumbered or otherwise transferred by Licensee, voluntarily or
involuntarily, by operation of law or otherwise, without Licensor’s prior
written consent, which consent may be withheld in Licensor’s sole and absolute
discretion, and any attempt to assign any of the Licenses in violation of this
Agreement will immediately void the Licenses granted under this Agreement;
provided, however, that in the event of an assignment or transfer of any of
the
Licenses as a result of a transaction described in Section 5(c)(ii) below,
the
termination provisions of Section 5(c) shall govern and provided, further,
that
to the extent that there is any conflict between this Section and Section 5(c),
the terms of Section 5(c) shall govern.
(b) Licensor
does not grant to Licensee, and nothing in this Agreement shall be construed
as
granting to Licensee, the right to license, sublicense or authorize others
to
use the CHO Names and the Licensed Materials. Notwithstanding the foregoing,
Licensee may (i) authorize its agents and service providers to use the CHO
Names
and the Licensed Materials in the ordinary course of Licensee’s Business, solely
as necessary to assist Licensee in Licensee’s Business and provided that such
agent or service provider complies with all of the applicable terms and
conditions of this Agreement; and (ii) use the CHO Names and the Licensed
Materials on its properties even if such properties are leased to or managed
by
third parties; provided,
however,
that
any such third party comply with all of the applicable terms and conditions
of
this Agreement in connection with its use of the CHO Names.
(c) Subject
to Section 1(d), Licensor shall retain the sole and absolute right to grant
other non-exclusive licenses of some or all of the Licensed Materials to other
entities not affiliated with Licensee (provided that Licensor shall not use
nor
allow, directly or indirectly, another to use any of the CHO Names) so long
as
any such grant does not otherwise violate the terms hereof, and Licensor shall
retain ownership of the Licensed Materials.
3. Quality
Control.
(a) CHO
acknowledges that it is vital to the culture, reputation, systems and manner
of
conducting business of Licensor and Licensor’s Affiliates (as defined in Section
11(a)(ii) below) that the entities to which Licensor licenses some or all of
the
Licensed Materials comply with certain policies and standards and other
requirements established by Licensor, that the uniform administration of such
policies, standards and requirements among Licensee and other entities in a
like
or similar position to that of Licensee is necessary to uphold (i) the
reputation of Licensor and Licensor’s Affiliates; (ii) the value associated with
the Marks; (iii) the value of the Licensed Materials to Licensor; and (iv)
the
value of the Licensed Materials to Licensee and other entities in like or
similar position to that of Licensee, and that the failure to require such
compliance and uniform administration may damage the value of the Licensed
Materials to Licensor, Licensor’s Affiliates, Licensee and such entities in like
or similar position to that of Licensee. CHO acknowledges that Licensor has
provided to Licensee certain policies and standards in print or electronic
media, a copy of which is attached hereto as Appendix “D” attached hereto,
necessary for the value associated with the Licensed Materials and the goodwill
and reputation associated with the Marks, and CHO acknowledges by its execution
and delivery of this Agreement that Licensee has received and reviewed those
policies and standards as of the Effective Date. Furthermore, CHO acknowledges
that Licensor shall have the right from time to time, in its reasonable
discretion, to adopt new policies and standards or amend any existing policies
and standards; provided that such new and/or amended policies and standards
apply equally to other licensees of the Licensed Materials. Licensor shall
give
notice to Licensee by electronic transmission or other means of any such
subsequently adopted or amended policies and standards and, if requested by
Licensor, CHO shall promptly execute and deliver to Licensor, in the manner
requested by Licensor, a written acknowledgment of Licensee’s receipt and review
of any such subsequently adopted or amended policies and standards issued by
Licensor (the policies and standards described in this Section 3(a), together
with any subsequently adopted policies and standards, and any amendments to
such
policies and standards, are collectively called the “Policies & Standards”).
Licensor shall use all commercially reasonable efforts to require other
licensees of any of the Licensed Materials to comply with the Policies &
Standards and shall not impose on Licensee any requirements for adherence to
the
Policies & Standards that Licensor does not impose on other licensees of the
Licensed Materials.
(b) CHO
shall
comply at all times during the Term with, and shall cause the CHO Affiliates
to
comply at all times during the Term with, the Policies & Standards, provided
that CHO shall be obligated to use commercially reasonable efforts to comply
with any newly adopted Policies & Standards that incorporate significant
changes over a reasonable time period not to exceed ninety (90) days, so long
as
other licensees of any of the Licensed Materials are required to achieve
compliance during the same period. All services and products, if any, sold
by
Licensee shall comply with the Policies & Standards and the other terms and
conditions of this Agreement.
(c) CHO
shall
provide to each employee, manager, executive and contractor of Licensee a copy
of those portions of the Policies & Standards (the “Relevant Policies &
Standards”) that are specified in writing by Licensor as being applicable to
such employee, manager, executive or contractor or categories of employees,
managers, executives and contractors. CHO shall be responsible for
non-compliance with the Relevant Policies & Standards by any employee,
manager, executive or contractor of Licensee.
(d) Licensee
shall have the right to adopt additional policies and standards regarding the
Licensed Materials (“Licensee’s Policies”) that do not conflict with the
Policies & Standards, and Licensee shall provide Licensor with a copy of any
such Licensee’s Policies prior to their effective date. If, within five (5)
business days after Licensor’s first receipt of any of Licensee’s Policies,
Licensor notifies CHO in writing that such Licensee’s Policies conflict with any
of the Policies & Standards, as determined by Licensor in its reasonable
discretion, Licensee shall not implement such Licensee’s Policies or, if
applicable, shall discontinue use of such conflicting Licensee’s Policies as
promptly as practicable.
(e) Licensor
shall have the right, upon at least two (2) business days prior written notice
to Licensee and at Licensor’s sole expense, to have a qualified and independent
third party, selected by Licensor, audit Licensee to determine compliance or
non-compliance with the Policies & Standards and the other terms and
conditions of this Agreement and to inspect and make copies of the business
records of Licensee relevant to its present or past compliance with the Policies
& Standards or the other terms and conditions of this Agreement; provided
that such auditor shall not interfere with Licensee’s operations and shall keep
all Licensee information examined during any such audit confidential in
accordance with the provisions of Section 11(c).
(f) Licensee
shall not make or use any modification to any of the Brand Content without
the
prior express written approval of Licensor; provided, however, that Licensee
may
incorporate the Brand Content into newly created Internet sites, promotional
items, advertising and marketing materials and the like, subject to Licensor’s
right to review and approve such new materials pursuant to Section
2(h).
(g) If
Licensee desires to begin using, after the Effective Date, the designation
“CNL”
in the name of a corporation, company, partnership, joint venture, or other
entity or in the name of a product or service that (i) is materially different
from any prior such use or (ii) does not otherwise comply with the Agreement
(each, an “Intended Use”), Licensee shall, not less than thirty (30) days prior
to the Intended Use, submit to Licensor a detailed statement of the Intended
Use
and receive Licensor’s express written permission to use such designation, which
permission shall not be unreasonably withheld, conditioned or delayed.
(h) At
least
ten (10) business days prior to the distribution or dissemination of the Marks
or Brand Content in any printed media, electronic media or any other format
that
either (i) has not previously been approved by Licensor, or (ii) is materially
different from any use that has previously been approved by Licensor, or any
shorter time that may be necessary to enable Licensee to comply with applicable
law or to avert material adverse consequences, each as described by Licensee
to
Licensor in reasonable detail, Licensee shall provide to Licensor proofs of
materials showing the proposed use of the Marks and Brand Content for review
and
approval by Licensor (the “Proposal”). Such review and approval cannot be
unreasonably delayed, conditioned or withheld by Licensor, and any proposed
use
not rejected by Licensor within five (5) business days following submittal
of a
Proposal to Licensor by Licensee shall be deemed approved. Licensor shall be
the
final arbiter as to compliance herewith of any text or design proposed for
use
by Licensee. Within thirty (30) days after the first production of any materials
using any of the Marks or Brand Content that have been approved by Licensor
pursuant to this Section 2(h), Licensee will provide Licensor with ten (10)
final copies of all such materials. Licensee shall add Licensor to all mailing
lists (other than mailings to stockholders, confidential mailings and mailings
for which disclosure is restricted by applicable law) and survey lists
comprising mass mailings and surveys to customers, clients and vendors. Once
Licensor has approved a particular format for use of the Marks or Brand Content,
Licensee may continue to use that format in other media. Notwithstanding the
foregoing provisions of this Section 3(h), the use of any CHO Name(s) by
Licensee for Licensee’s Business in accordance with the Policies & Standards
in any printed media, electronic media or any other format that includes no
other Marks or Brand Content shall not require Licensor’s approval in accordance
with this Section 3(h).
(i) If
Licensee uses any of the Marks or Brand Content without having sought and
obtained actual or deemed prior approval from Licensor in accordance with
Section 2(h), and if Licensor, in its reasonable discretion, determines that
such use is a material misuse of the Marks or Brand Content, then Licensor
shall
give written notification of such misuse to Licensee. For any such material
misuse, Licensor may, in its reasonable discretion, take any one or more of
the
following options: (i) require Licensee, within thirty (30) days of receipt
of
notification, to correct the misuse and submit the corrected use to Licensor
for
review and approval; (ii) audit Licensee’s operations that relate to the misuse
of the Marks and Brand Content to insure compliance with the Policies &
Standards; (iii) demand that Licensee stop production of materials that include
the Marks or Brand Content not in compliance with the Policies & Standards
at Licensee’s sole expense; (iv) require that Licensee prohibit or halt
distribution of any materials that include the Marks or Brand Content not in
compliance with the Policies & Standards at Licensee’s sole expense; (v)
demand and enforce correction or revision of materials that include the Marks
or
Brand Content not in compliance with the Policies & Standards at Licensee’s
sole expense; or (vi) terminate this Agreement in accordance with the provisions
of Section 5(b)(ii) below.
4. Ownership.
(a) Licensor
is the legal and beneficial owner of all right, title and interest in the
Licensed Materials and, as of the date of this Agreement, is the owner of record
of all applications and registrations for the Marks listed on Appendix “A”
attached hereto at the United States Patent and Trademark Office
(“USPTO”).
(b) CHO
acknowledges and agrees that the CHO Names and the Marks and the goodwill
associated therewith, are the exclusive property of Licensor and can be used
only with Licensor’s prior written license or consent; provided, however, that
nothing herein is intended, or shall be construed, to restrict or limit
Licensee’s right to use the words “hotel,” “resort” or “hotels & resorts,”
either alone or as part of any trade name, trademark or service xxxx that does
not include the Xxxx “CNL” or any trademark or service xxxx that is confusingly
similar to the Xxxx “CNL.”
(c) CHO
further acknowledges and agrees that Licensee will not at any time do, or cause
to be done, any act or thing contesting or in any way impairing or intending
to
impair the validity of or Licensor’s exclusive right, title and interest in the
Marks.
(d) Except
for corporate name registrations of the CHO Names, Licensee will not register
or
apply to register, in any country, state or other jurisdiction, (i) any part
or
component of the Marks, either alone or in combination with any other words
or
designs; or (ii) the copyrights in any materials containing any of Licensed
Materials, unless ownership in the Licensed Materials is disclaimed by
Licensor.
(e) Licensee
will not in any manner represent that it owns the CHO Names or the Licensed
Materials in whole or in part; provided, however, that nothing herein is
intended to, or shall, be construed to restrict or limit Licensee’s right to use
the words “hotel,” “resort” or “hotels & resorts” either alone or as part of
any trade name, trademark or service xxxx that does not include the Xxxx “CNL”
or any trademark or service xxxx that is confusingly similar to the Xxxx “CNL,”
and CHO hereby acknowledges that the use of the Marks by Licensee shall not
create any right, title, or interest in or to the Marks in favor of Licensee,
but that all use by Licensee of the Marks shall inure to the sole benefit of
Licensor. If Licensee uses any part or component of the Marks (other than any
of
the words “hotel,” “resort” or “hotels & resorts”) outside of Licensee’s
Business in violation of this Agreement, Licensee shall execute and deliver
to
Licensor an assignment of all rights, if any, that Licensee might have in the
Marks with respect to such expanded services, together with the goodwill
associated with the Marks for such expanded services.
(f) CHO
further acknowledges Licensor’s assertion that the Proprietary Materials
incorporate confidential information and trade secrets developed by Licensor
or
one or more of Licensor’s Affiliates. Accordingly, CHO further acknowledges and
agrees that the Proprietary Materials are the sole and exclusive property of
Licensor and Licensor’s Affiliates, and upon the termination of this Agreement
Licensee shall have no interest in or right to use any of said Proprietary
Materials, except to the extent that the same have become part of the public
domain through no fault of Licensee.
5. Term
and Termination.
(a) The
term
of this Agreement shall commence on the Effective Date and continue until
terminated by either party as set forth in Sections 5(b), (c), (d), (e), or
(f)
below (the “Term”).
(b) Either
party may terminate this Agreement upon giving thirty (30) days prior written
notice to the other party in the event that the other party
(i) becomes
insolvent, makes a general assignment for the benefit of its creditors, executes
a voluntary petition under the United States Bankruptcy Code, or if an
involuntary petition under the United States Bankruptcy Code is executed
regarding the other party and is not stayed or dismissed within ninety (90)
days
thereafter; or
(ii) is
in
material breach of or in default under this Agreement and such breach or default
has continued for a period of (A) forty-five (45) days after the terminating
party gives written notice specifying such breach or default to the other party
in the event of a non-monetary breach or default, or (B) thirty (30) days after
the terminating party gives written notice specifying such breach or default
to
the other party in the event of a monetary breach or default.
(c) Notwithstanding
Section 5(b) above, Licensor may terminate this Agreement upon twelve (12)
months prior written notice to CHO in the event that:
(i) Xxxxx
X.
Xxxxxx, Xx. is involuntarily removed as a member of CHO’s Board of Directors by
an action of the stockholders of CHO or by CHO’s Board of
Directors.
(ii) Any
of
the following occur: (A) a merger, consolidation or reorganization of CHO with
one or more other corporations, partnerships, limited liability companies,
joint
ventures or other organizations or entities (individually, a “Person” and
collectively, “Persons”) in which the CHO is not the surviving corporation
(other than a merger, consolidation, or reorganization of CHO effected for
the
sole purpose of changing the jurisdiction of incorporation of CHO, which shall
not be grounds for terminating this Agreement); (B) a sale of all or
substantially all of the assets of CHO to one or more individuals or Persons
who
are not an affiliate of CHO; (C) a merger, consolidation or reorganization
in
which CHO is the surviving corporation that results in any individual or Person
(or group of related or affiliated individuals and/or Persons) that immediately
prior to such transaction was not a stockholder of CHO owing fifty percent
(50%)
or more of the voting power of CHO; (D) the dissolution or liquidation of CHO;
(E) the acquisition by any individual or Person (or group of related or
affiliated individuals and/or Persons) of direct or indirect beneficial
ownership of CHO’s common stock representing fifty percent (50%) or more of the
voting power of CHO; or (F) a majority of the CHO’s Board of Directors are
persons other than persons for whose election proxies have been solicited by
CHO’s Board of Directors.
(iii) That
certain Lease Agreement between CNL Plaza II, Ltd., a Florida limited
partnership, as landlord, and CHO, as the assignee of CNL Hospitality Corp.,
a
Florida corporation, as tenant, dated as of November 23, 2005, for the
“Premises” (as defined therein) (the “Tower II Lease”) is terminated by CHO;
provided, however, if the Tower II Lease is terminated by CHO by reason of
a
material breach thereof by the landlord and Licensor exercises its right under
this Section 5(c)(iii) to terminate this Agreement, then, as a condition
precedent to such termination, CFG shall pay to CHO upon the termination of
this
Agreement two million dollars ($2,000,000.00), in cash or other immediately
available funds, as a termination fee, which fee shall be in lieu of any other
damages related to the termination of this Agreement but in addition, and
without prejudice, to any other remedies that may be available to CHO under
the
Tower II Lease by reason of such breach.
(d) This
Agreement may be terminated by Licensor, as to the recipient of the termination
notice, upon thirty (30) days prior written notice (i) to CHO if CHO or any
of
the CHO Affiliates is convicted by a court of having committed fraud or other
criminal misconduct and such conviction is affirmed on appeal or the time for
appeal has expired, or (ii) to any CHO Affiliate if such CHO Affiliate is
convicted by a court of having committed fraud or other criminal misconduct
and
such conviction is affirmed on appeal or the time for appeal has
expired.
(e) This
Agreement shall automatically terminate upon written notice by Licensor to
CHO
if CHO ceases to use or abandons the name “CNL Hotels &
Resorts”.
(f) This
Agreement may be terminated by CHO, without cause, effective upon thirty (30)
days prior written notice to Licensor.
(g) Sections
4(d), 4(e), 4(f), 4(g), 6, 8, 9, 10, 11 and 12 of this Agreement shall survive
the expiration or any earlier termination of this Agreement.
(h) A
termination of this Agreement shall not excuse any prior failure to perform
or
breach of this Agreement by Licensee or Licensor, and Licensee and Licensor
shall each be entitled to all remedies under this Agreement and at law or equity
with respect to such failure or breach.
(i) Upon
termination of this Agreement in any manner provided herein, Licensee will
promptly and permanently (i) discontinue all use of the Licensed Materials
any
corporate identification using the designation “CNL” whether obtained under
Section 3(g) above or otherwise; and (ii) refrain from using any other xxxx,
name, design, or any other designation confusingly similar to any of the CHO
Names, the designation “CNL”, or any of the other Marks; provided, however, that
nothing herein is intended, or shall be construed, to restrict or limit
Licensee’s right to use the words “hotel,” “resort” or “hotels & resorts,”
either alone or as part of any trade name, trademark or service xxxx that does
not include the term “CNL” or any trademark or service xxxx that is confusingly
similar to the Xxxx “CNL.”
6. Indemnification.
(a) Except
to
the extent, if any, otherwise expressly provided in this Agreement, Licensor
assumes no liability to Licensee or to third parties with respect to Licensee’s
Business, or the products and services advertised and sold by Licensee, under
or
using the Marks or Brand Content.
(b) CHO
shall
indemnify and hold Licensor, Licensor’s Affiliates (as defined in Section
11(a)(ii) below), and their Representatives (as defined in Section 11(a)(v)
below) harmless from and against, and reimburse Licensor, Licensor’s Affiliates,
or Licensor’s Representatives (as the case may be) for any and all third-party
claims, losses, costs, liabilities, damages and expenses (including, but not
limited to, reasonable attorneys’ fees and the costs, whether prior to, during
or after trial, on appeal or in bankruptcy proceedings) which it or they may
pay, suffer or incur to the extent arising out of, resulting from, or connected
to: (i) any claims, actions, or lawsuits by third-parties against Licensor,
any
of Licensor’s Affiliates, or any of Licensor’s Representatives involving or
arising from Licensee’s Business or any of the products or services advertised
or sold by Licensee to the extent not directly attributable to (A) any fault
of
Licensor, or (B) Licensee’s compliance with any of the Policies & Standards
or (C) breach by Licensor of this Agreement; (ii) any material breach by
Licensee of its representations, warranties, and covenants in this Agreement
or
the failure by Licensee to comply in all material respects with any of the
terms
or conditions of this Agreement; (iii) any disclosure or use of Confidential
Information (as defined in Section 11(a)(i) below) by CHO, any CHO Affiliate
(as
defined in Section 11(a)(iii) below), or any of CHO’s Representatives (as
defined in Section 11(a)(v) below) that is not permitted under the terms of
Section 11 below; or (iv) the failure by Licensee to materially comply with
any
of the Policies & Standards.
(c) Licensor
agrees to indemnify and hold CHO, the CHO Affiliates, and their Representatives
(as defined in Section 11(a)(v) below) harmless from and against, and reimburse
CHO, the CHO Affiliates and their Representatives (as the case may be) for
any
and all third-party claims, damages, losses, costs, expenses and liabilities
(including, but not limited to, reasonable attorneys’ fees and costs, whether
prior to, during or after trial, on appeal or in bankruptcy proceedings) which
it or they may pay, suffer or incur, to the extent arising out of, resulting
from or connected to: (i) any material breach by Licensor of its
representations, warranties and covenants in this Agreement or the failure
by
Licensor to comply in all material respects with any of the terms or conditions
of this Agreement; or (ii) any disclosure or use of Confidential Information
(as
defined in Section 11(a)(iii) below) by Licensor, any Licensor’s Affiliate (as
defined in Section 11(a)(ii) below) or Licensor’s Representatives (as defined in
Section 11(a)(v) below) that is not permitted under the terms of Section 11
below.
7. Infringement.
(a) CHO
shall
promptly notify Licensor of any conflicting use or infringement of the Marks
or
the Brand Content by a third party of which Licensee may become aware and will
cooperate with Licensor, at Licensor’s sole expense, in every reasonable way to
prosecute all acts or conduct that Licensor may deem necessary or advisable
to
protect the validity and exclusivity of Licensor’s rights in the Marks. Licensee
will not take action independently of Licensor to prosecute any such acts or
conduct without obtaining the prior, express, written approval of
Licensor.
(b) In
the
event that an unauthorized third-party within the Territory uses any of the
Marks, and such use is brought to Licensor’s attention by Licensee, Licensor
will take reasonable steps to xxxxx such use in the United States at Licensor’s
sole cost and expense if Licensor, after investigation and evaluation of such
unauthorized use, concludes in its reasonable discretion that such use
constitutes an infringement of its or Licensee’s rights to the Marks and that
there is a reasonable probability of success in taking action to xxxxx such
infringement. In the event such unauthorized use is outside of the United
States, then Licensor shall have the first option to take reasonable steps
to
xxxxx such unauthorized use, and the cost and expense thereof shall be borne
solely by Licensor. If Licensor declines to xxxxx such unauthorized use, then
Licensee shall have the right to take reasonable steps to xxxxx such
unauthorized use at its sole cost and expense and may join Licensor in any
action to enforce such abatement provided that such joinder is at Licensee’s
sole cost and expense.
8. Dispute
Resolution.
(a) Except
as
provided in Section 3(i)(i) and (ii), in the event of a dispute between Licensor
and Licensee with respect to an issue relating to use of any of the Marks or
the
Brand Content, either party shall give notice to the other party of the dispute
and reasonable details of such dispute to the extent known by the party giving
notice of the dispute.
(b) Within
ten (10) days after notice of such dispute is given to the other party, a senior
executive officer of each party shall meet in an effort to resolve the
dispute.
(c) In
the
event that the representatives of the parties are unable to resolve the dispute
at such meeting, then within fifteen (15) days after such meeting, the chief
executive officers of each of the parties shall meet in person or speak with
each other by telephone in an effort to resolve the dispute.
(d) In
the
event that the dispute is not resolved under the procedure set forth above,
either party may commence legal proceedings. The procedures of this Section
8
must be followed as a condition precedent to the commencement of legal
proceedings with respect to such dispute; provided,
however,
that
equitable relief may be sought by either party pursuant to Section 9 at any
time
whether or not the dispute resolution procedures of this Section 8 have been
followed.
9. Equitable
Remedies.
Licensor and CHO acknowledge and agree that (a) a material breach or threatened
material breach by CHO, the CHO Affiliates or any of their Representatives
(as
defined in Section 11(a)(v) below) of any of the terms or conditions contained
in this Agreement, or (b) a material breach or threatened material breach by
Licensor of the terms and conditions contained in Section 2(c) or 11, will
cause
immediate and irreparable harm and damage to Licensor or CHO, as the case may
be, and that monetary damages will be inadequate to compensate Licensor or
CHO
for such breach. Accordingly Licensor and CHO agree that Licensor and CHO shall,
in addition to any other remedies available to them at law or in equity, be
entitled, without posting bond or other security, to an injunction from any
court of competent jurisdiction enjoining and restraining any breach or
threatened breach of the terms or conditions of this Agreement by CHO, any
of
the CHO Affiliates or any of their Representatives, or by Licensor, any of
the
Licensor Affiliates or any of their Representatives.
10. Insurance.
(a) During
the Term, and for a period of three (3) years thereafter, CHO shall maintain
in
full force and effect all commercially reasonably necessary liability insurance
coverage for itself and the CHO Affiliates. Upon the written request of
Licensor, CHO shall furnish Licensor with a certificate or certificates of
insurance evidencing such coverage. CHO shall notify Licensor in advance of
any
termination, cancellation, nonrenewal or material modification of any such
insurance coverage.
(b) During
the Term, and for a period of three (3) years thereafter, Licensor shall
maintain in full force and effect all commercially reasonably necessary
liability insurance coverage for itself. Upon the written request of CHO,
Licensor shall furnish CHO with a certificate or certificates of insurance
evidencing such coverage. Licensor shall notify CHO in advance of any
termination, cancellation, nonrenewal, or material modification of any such
insurance coverage.
11. Confidentiality.
(a) For
purposes of this Agreement: (i) “Confidential Information” means the Proprietary
Materials; all “trade secrets” as defined in Section 688.002(4), Florida
Statutes; any other confidential or proprietary information, financial or
otherwise, about the business, affairs, and assets of Licensor, Licensor’s
Affiliates, CHO or any CHO Affiliate that are marked by the owner as
“confidential” or “proprietary”; and any other information, documents, or
materials clearly identified by the owner as “confidential” or “proprietary”;
(ii) “Licensor’s Affiliate” means any entity, other than CHO or any of the CHO
Affiliates, that now or hereafter controls, is controlled by, or is under common
control with, Licensor; (iii) “CHO Affiliates” means any entity that is now or
hereafter controlled by CHO; (iv) the terms “control” and “controlled by” mean
the possession, directly or indirectly, of the power to direct or cause the
direction of the management and policies of a person or entity, whether though
the ownership of voting shares, by contract, or otherwise; and (v)
“Representative” means the employees, contractors, vendors, agents, directors,
officers, legal counsel, accountants and financial advisors of a
party.
(b) CHO,
the
CHO Affiliates, and their Representatives shall not disclose or use any
Confidential Information which is furnished, or to be furnished, to any of
them
by Licensor, any Licensor’s Affiliates or any of their Representatives at any
time or in any manner other than as permitted by this Agreement. Notwithstanding
the foregoing, CHO shall be entitled to disclose Confidential Information:
(i)
to the CHO Affiliates and its and their Representatives to the extent necessary
to permit CHO, the CHO Affiliates or their Representatives to conduct Licensee’s
Business and to comply with Licensee’s obligations under this Agreement; (ii) to
the extent such information becomes lawfully part of the public domain or is
obtained by CHO, any of the CHO Affiliates or any of their Representatives
from
a third-party other than in violation of this Agreement or any agreement with
Licensor, any of Licensor’s Affiliates, or any other party; or (iii) as
compelled or required by a valid subpoena or other legal mandate; provided,
however, in the event that CHO or any of the CHO Affiliates, or their
Representatives receives such a subpoena or other legal mandate, it shall
provide Licensor with prompt written notice of same as far in advance as
practicable of the date such party is required to make such disclosure so that
Licensor or any of Licensor’s Affiliates may seek an appropriate protective
order for the Confidential Information or waive compliance with the provisions
of this Section 11(b). However, if in the absence of a protective order or
the
receipt of a waiver hereunder CHO, any of the CHO Affiliates or any of their
Representatives is nonetheless, in the opinion of such party’s legal counsel, so
compelled to disclose the Confidential Information, such party may disclose
only
that portion of the Confidential Information that is, based on the written
advice of its legal counsel, legally required to be disclosed.
(c) Licensor,
Licensor’s Affiliates, and their Representatives shall not disclose or use any
Confidential Information which is furnished, or to be furnished, to any of
them
by CHO, any CHO Affiliates, or any of their Representatives at any time or
in
any manner other than as permitted by this Agreement. Notwithstanding the
foregoing, Licensor shall be entitled to disclose Confidential Information:
(i)
to Licensor’s Affiliates and its and their Representatives to the extent
necessary to permit Licensor, Licensor’s Affiliates or their Representatives to
exercise Licensor’s rights under this Agreement; (ii) to the extent such
information becomes lawfully part of the public domain or is obtained by
Licensor, any of Licensor’s Affiliates or any of their Representatives from a
third-party other than in violation of this Agreement or any agreement with
CHO,
any of the CHO Affiliates, or any other party; or (iii) as compelled or required
by a valid subpoena or other legal mandate; provided, however, in the event
that
Licensor or any of Licensor’s Affiliates or their Representatives receive such a
subpoena or other legal mandate, it shall provide CHO with prompt written notice
of same as far in advance as practicable of the dates such party is required
to
make such disclosure so that CHO or any of the CHO Affiliates may seek an
appropriate protective order for the Confidential Information or waive
compliance with the provisions of this Section 11(c). However, in the absence
of
a protective order or the receipt of a waiver hereunder, if Licensor, any of
Licensor’s Affiliates or any of their Representatives is nonetheless, in the
opinion of such party’s legal counsel, so compelled to disclose the Confidential
Information, such party may disclose only that portion of the Confidential
Information that is, based on the written advice of its legal counsel, legally
required to be disclosed.
(d) Upon
a
termination of this Agreement for whatever reason, (i) each party shall promptly
return to the other party (the “Disclosing Party”), in the manner directed by
the Disclosing Party, all of the Confidential Information that has been
furnished to such party (the “Receiving Party”), the Receiving Party’s
Representatives, any Licensor’s Affiliates (if Licensor is the Receiving Party),
or any CHO Affiliates (if CHO is the Receiving Party); (ii) the Receiving Party
shall promptly destroy copies of all documents or materials in the possession
or
control of the Receiving Party, their Representatives, the Licensor’s Affiliates
(in the case of Licensor), and the CHO Affiliates (in the case of CHO), that
contain Confidential Information or portions of Confidential Information, in
whatever form or medium such copies or portions are contained, whether tangible,
electronic, or otherwise, except to the extent that retention of such documents
or materials is necessary to maintain appropriate business records or to comply
with applicable government requirements or regulations; and (iii) the Receiving
Party shall timely furnish to the Disclosing Party a written certificate to
the
reasonable satisfaction of the Disclosing Party certifying that such destruction
has taken place.
12. Representations,
Warranties and Covenants.
(a) Licensor
represents, warrants and covenants the following:
(i) Licensor
is a corporation duly organized and in good standing under the laws of the
State
of Florida;
(ii) Licensor
has full corporate power and authority, and has taken all corporate actions
and
has obtained all necessary approvals or authorizations from any other third
party and government authority, to enter into this Agreement, to perform its
obligations under this Agreement, and to grant the rights granted under this
Agreement, which will not constitute or result in a violation, conflict or
breach of or default under (A) its organizational documents; (B) any enforceable
and effective laws, orders or judgments or (C) any agreement to which it is
a
party;
(iii) This
Agreement constitutes a legal, valid and binding agreement of Licensor,
enforceable against Licensor in accordance with its terms;
(iv) Licensor
has, and during the Term will have, the exclusive ownership of and control
over
the Marks set forth in Appendix “A”, and no claims of infringement have been
made against Licensor with respect to the Marks and the CHO Names by any third
party.
(v) All
applications or registrations for the Marks set forth in Appendix “A” are valid
and in good standing and Licensor has filed or paid, and during the Term will
continue to file or pay, all necessary documents, fees or payments due and
payable to any trademark registries relating to applications or registrations
for the Marks.
13. General
Provisions.
(a) This
Agreement and all questions of interpretation, construction and enforcement
hereof, and all controversies hereunder shall be governed by the laws of the
State of Florida without regard to conflicts of interests rules or principles
that could result in the application of the laws of any other
jurisdiction.
(b) No
waiver
of any provision or any default by any party shall be deemed, or shall
constitute, a waiver of any other provision, whether or not similar, nor shall
any waiver constitute a continuing waiver. No waiver by any party shall be
binding unless executed in writing by such party.
(c) All
notices, consents and other communications under this Agreement (other than
Licensor’s transmission of the Policies & Standards) must be given either by
facsimile with proof of receipt; hand delivery; United States certified mail,
return receipt requested, postage prepaid; or by an overnight commercial courier
service, addressed as follows:
If
to
Licensor:
CNL
Intellectual Properties, Inc.
Attention:
President
CNL
Center at City Commons
000
Xxxxx
Xxxxxx Xxxxxx - 00xx Xxxxx
Xxxxxxx,
Xxxxxxx 00000-0000
Facsimile:
(000) 000-0000
If
to CHO
or Licensee:
CNL
Hotels & Resorts, Inc.
Attention:
Chief Executive Officer
000
Xxxxx
Xxxxxx Xxxxxx
Xxxxx
000
Xxxxxxx,
Xxxxxxx 00000-0000
Facsimile:
(000) 000-0000
With
a
copy to:
CNL
Hotels & Resorts, Inc.
Attention:
General Counsel
000
Xxxxx
Xxxxxx Xxxxxx
Xxxxx
000
Xxxxxxx,
Xxxxxxx 00000-0000
Facsimile:
(000) 000-0000
Any
party
may change its address for purposes of this Section 13(c) by giving the other
parties written notice of the new address in the manner set forth above. Any
notice given as set forth in this Section 13(c) will be effective on the day
of
hand delivery; two (2) business days after mailing; the next business day if
sent by overnight commercial courier service; or the day of receipt by the
other
party if given by facsimile letter (or the next business day if the day of
receipt is not a business day).
(d) This
Agreement and Appendices “A”, “B”, “C” and “D” constitute the entire agreement
between the parties pertaining to this subject matter and supersedes all prior
and contemporaneous agreements, representations and understandings of the
parties with respect to such subject matter, whether oral or written. No
supplement, modification or amendment to this Agreement shall be binding unless
executed in writing by all of the parties.
(e) In
the
event any term or provision of this Agreement shall be held illegal,
unenforceable or inoperative as a matter of law, the remaining terms and
conditions of this Agreement shall remain in full force and effect if the
essential terms and conditions of this Agreement for each party remain valid,
binding and enforceable.
(f) Time
is
of the essence of this Agreement.
(g) This
Agreement may be executed in counterparts, each of which shall be deemed an
original and all of which shall constitute one and the same
instrument.
(h) In
the
event of any conflict between the terms of this Agreement and the Policies
&
Standards, this Agreement shall control.
(i) Except
as
otherwise provided herein, neither Licensor nor CHO shall assign any of its
rights or delegate any of its duties under this Agreement without the prior
written consent of the other, which consent may be granted or withheld in the
sole and absolute discretion of such other party. Notwithstanding the foregoing,
Licensor may assign this Agreement to a Licensor’s Affiliate without the prior
written consent of Licensee. This Agreement shall be binding on the parties
to
this Agreement and their successors and permitted assigns.
(j) The
captions used in this Agreement are intended solely for reference and shall
not
be used to interpret any of the terms or conditions of this
Agreement.
(k) In
connection with any litigation, including appellate proceedings or bankruptcy
proceedings, arising under this Agreement, the prevailing party in such
litigation shall be entitled to recover its reasonable attorneys fees and costs
from the non-prevailing party.
(l) The
parties have participated jointly in the negotiation and drafting of this
Agreement. In the event an ambiguity or question of intent or interpretation
arises, this Agreement shall be construed as if drafted jointly by the parties
and no presumption or burden of proof shall arise favoring or disfavoring any
party by virtue of the authorship of any of the provisions of this
Agreement.
[SIGNATURE
PAGE TO FOLLOW]
IN
WITNESS WHEREOF,
the
parties have duly executed and delivered this Brand License Agreement effective
as of the date first written above.
| “Licensor”
|
||
CNL
INTELLECTUAL PROPERTIES, INC.
|
||
| |
|
|
| By: | /s/ Xxxxx X. Xxxxxx, Xx. | |
|
Name: Xxxxx X. Xxxxxx, Xx. |
||
| Title: Chief Executive Officer | ||
| “CHO”
|
||
CNL
HOTELS & RESORTS, INC.
|
||
| |
|
|
| By: | /s/ Xxxxxxxx X. XxXxxxxx | |
|
Name: Xxxxxxxx X. XxXxxxxx |
||
| Title: Senior Vice President, General Counsel and Corporate Secretary | ||
APPENDIX
“A”
SERVICE
MARKS REGISTRATIONS AND APPLICATIONS
Registrations
|
Xxxx
|
Services
|
U.S.
Reg. No.
|
Issue
Date
|
|
CNL
|
Providing
financial services, namely, providing real estate leaseback financing
to
others, as well as investing funds for others
|
1,478,007
|
2/23/88
|
|
Squares
within Squares Design
|
Business
strategic planning and consulting services; planning and consulting
services in the development and growth of new businesses, particularly
technology and e-commerce businesses; real estate investment, brokerage,
consulting and management services; real estate investment trust
services;
mortgage and commercial financing services; investment and commercial
banking services; broker/dealer services in the field of investment
securities, franchise, mortgage, mergers and acquisitions, real estate
and
investment advisory services; financial advisory services; insurance
underwriting, brokerage and agency services in the field of commercial
liability, casualty and property; real estate development services;
educational services, namely classes, workshops and seminars in the
field
of business and project management, computer software and information
systems, word processing, research skills, human resources and personnel,
insurance, finance, mergers and acquisitions, organizational development,
public speaking and communication, real estate, and sales and
marketing.
|
2,985,632
|
8/16/05
|
|
CNL
& Squares within Squares Design
|
Business
strategic planning and consulting services; planning and consulting
services in the development and growth of new businesses, particularly
technology and e-commerce businesses; real estate investment, brokerage,
consulting and management services; real estate investment trust
services;
mortgage and commercial financing services; investment and commercial
banking services; broker/dealer services in the field of investment
securities, franchise, mortgage, mergers and acquisitions, real estate
and
investment advisory services; financial advisory services; insurance
underwriting, brokerage and agency services in the field of commercial
liability, casualty and property; real estate development services;
educational services, namely classes, workshops and seminars in the
field
of business and project management, computer software and information
systems, word processing, research skills, human resources and personnel,
insurance, finance, mergers and acquisitions, organizational development,
public speaking and communication, real estate, and sales and
marketing.
|
2,917,587
|
|
|
CNL
|
Business
strategic planning and consulting services; planning and consulting
services in the development and growth of new businesses, particularly
technology and e-commerce businesses; real estate investment, brokerage,
consulting and management services; real estate investment trust
services;
mortgage and commercial financing services; investment and commercial
banking services; broker/dealer services in the field of investment
securities, franchise, mortgage, mergers and acquisitions, real estate
and
investment advisory services; financial advisory services; insurance
underwriting, brokerage and agency services in the field of commercial
liability, casualty and property; real estate development services
educational services, namely classes, workshops and seminars in the
field
of business and project management, computer software and information
systems, word processing, research skills, human resources and personnel,
insurance, finance, mergers and acquisitions, organizational development,
public speaking and communication, real estate, and sales and
marketing.
|
3,006,086
|
Application
|
Xxxx
|
Services
|
U.S.
Serial No.
|
Filing
Date
|
|
Square
Network
|
Distribution
of information on a wide variety of subjects over a computer network,
in
International Class 42.
|
78/408,433
|
04/27/04
(F)
|
APPENDIX
“B”
DOMAIN
NAMES
xxxxxxxxxxxxxxxxxxx.xxx
xxxxxxxxxxxxxxxxxxx.xxx
xxxxxxxxxxxxxxxxxxx.xxx
xxxxxxxxxxxxxxxxxxx.xx
APPENDIX
“C”
CORE
VALUES
[To
be
Inserted]
APPENDIX
“D”
POLICIES
& STANDARDS
[To
be
Inserted]
