EXHIBIT 10.30
TRADE NAME AND SERVICE XXXX LICENSE AGREEMENT
Trade Name and Service Xxxx License Agreement (this "Agreement")
dated as of December 4, 1996, between Tele-Communications, Inc., a Delaware
corporation ("TCI"), and TCI Satellite Entertainment, Inc., a Delaware
corporation (the "Company").
RECITALS
A. TCI owns all the issued and outstanding capital stock of the
Company (the "Company Stock").
B. TCI intends to distribute (the "Distribution") the Company
Stock to the holders of its Tele-Communications, Inc. Series A TCI Group Common
Stock and Tele-Communications, Inc. Series B TCI Group Common Stock. As a result
of the Distribution, the Company will cease to be a subsidiary of TCI, and TCI
and the Company will be separate public companies.
C. This Agreement sets forth the terms and conditions on which,
for a period following the Distribution, the Company shall have the right to use
the names "TCI" and "Tempo" and certain other trademarks and service marks of
TCI in connection with the Digital Satellite Business.
NOW, THEREFORE, in consideration of the mutual covenants and
agreements contained herein and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties hereby
agree as follows:
SECTION 1. DEFINITIONS.
As used herein, the following terms have the corresponding
meanings:
(a) "Digital Satellite Business" means the business of
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distributing multichannel programing services directly to consumers in the
Territory via communications satellite broadcasting at Ku-band or higher
frequencies, including the rental and sale of customer premises equipment
relating thereto.
(b) "Effective Date" means the effective date of the
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Distribution.
(c) "Marks" means (i) the service marks and trademarks described
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on Exhibit A, in each case for use only in the Territory in connection with the
Digital Satellite Business, and (ii) any other service marks or trademarks added
by amendment to this Agreement.
(d) "Names" means the corporate and trade names "TCI" and
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"Tempo," when used in conjunction with the word "Satellite," and as otherwise
provided in Section 2 hereof, in the United States and every other jurisdiction
in the in the Territory.
(e) "Term" means the period of time commencing on the Effective
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Date and expiring on the third anniversary of the Effective Date, subject to
earlier termination (i) in accordance with Section 16 hereof, or (ii) upon
notice by the Company to TCI that the Company has completely ceased using the
Names and Marks.
(f) "Territory" means the United States and each other
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jurisdiction within the limits set forth in Exhibit B hereto.
SECTION 2. GRANT OF LICENSE.
Subject to the terms and conditions set forth herein, TCI hereby
grants to the Company for the Term a non-exclusive license (the "License"):
(a) to use the names "TCI" and "Tempo" in its corporate name
and/or in the names of its wholly-owned subsidiaries, and in any trade
or fictitious names in any or all jurisdictions in the Territory, in,
and only in, any of the following manners: (A) in the names "TCI
Satellite Entertainment, Inc." and "Tempo Satellite, Inc."; (B)
otherwise in conjunction with the word "Satellite", and without the
words "Cable" or "International"; (C) in the name "PRIMESTAR By TCI,"
with or without any corporate or other identifier such as "Inc.,"
"Corp.," "L.P." or "L.L.C.," and (D) in such other manner as to which
TCI shall have given its prior written consent, which consent may be
granted or withheld by TCI in its sole and absolute discretion; and
(b) to use the Marks, in the United States and any other
jurisdiction in the Territory, solely for the purpose of conducting
the Digital Sattelite Business, subject to any and all legal
requirements and TCI policy limitations on such use that may arise
from time to time in, or with respect to, any such jurisdiction,
including but not limited to the TCI Graphics Standards Guide, as
amended from time to time.
The License is non-assignable and may be revoked by TCI as provided herein. The
Company shall not have the right to grant sublicenses hereunder, except to its
wholly-owned subsidiaries.
SECTION 3. FULLY-PAID LICENSE.
The License is fully-paid, and no additional consideration or
royalty is required to be paid by the Company hereunder.
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SECTION 4. REPRESENTATIONS AND WARRANTIES OF TCI.
TCI hereby represents and warrants to the Company as follows: TCI
is a corporation duly organized, validly existing and in good standing under the
laws of the State of Delaware. It has all requisite corporate power and
authority to enter into and perform this Agreement and the transactions
contemplated hereby. All requisite corporate action on the part of TCI has been
taken to authorize the execution and delivery of this Agreement and the grant of
the License hereunder. This Agreement is a valid and binding obligation of TCI,
enforceable in accordance with its terms. The execution and delivery of this
Agreement by TCI and the consummation of the transactions contemplated hereby do
not violate the provisions of TCI's certificate of incorporation or by-laws or,
to the best knowledge of TCI, the provisions of any material indenture,
agreement, evidence of indebtedness or other instrument to which TCI is a party
or by which it or any of the Names or Marks are bound.
SECTION 5. NO OTHER REPRESENTATIONS OR WARRANTIES OF TCI.
The Company acknowledges that TCI has made no warranties or
representations, other than as set forth in Section 4 hereof, to induce the
Company to enter into this Agreement, including, without limitation, any
representation, warranty or statement with respect to the validity,
enforceability or coverage of the Names or Marks, or any of them, with or
without respect to the Digital Satellite Business, or the validity,
enforceability or coverage of any other trade name, trademark or service xxxx of
TCI, in the United States or any other jurisdiction. The Company further
acknowledges that it is aware that the Names or Marks may not have been
registered or otherwise qualified or preserved under the laws of the United
States or of any other jurisdiction.
SECTION 6. REPRESENTATIONS, WARRANTIES AND COVENANTS OF THE COMPANY.
The Company hereby represents, warrants and covenants to TCI as
follows:
(a) Organization; Corporation Authority. The Company is a
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corporation duly organized, validly existing and in good standing under the laws
of the State of Delaware. It has all requisite corporate power and authority to
own and operate its properties, to carry on the Digital Sattelite Business, and
to enter into and perform this Agreement and the transactions contemplated
hereby. All requisite corporate action on the part of the Company has been taken
to authorize the execution and delivery of this Agreement and the performance by
the Company of its obligations hereunder. This Agreement is a valid and binding
obligation of the Company, enforceable in accordance with its terms. The
execution and delivery of this Agreement by the Company and the consummation of
the transactions contemplated hereby do not violate the provisions of the
Company's certificate of incorporation or by-laws, or to the best knowledge of
the Company, the provisions of any material indenture, agreement, evidence of
indebtedness or other instrument to which the Company is a party or by which it
or its property is bound.
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(b) Covenant Not to Contest. The Company shall not raise or cause
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to be raised any questions concerning or objections to the validity of the Names
or Marks, or any other trade names, trademarks, service marks or other names or
marks of TCI, in the United States or any other jurisdiction in the world
(collectively, the "Other Marks"), or to any registrations thereof, or to the
proprietary rights of TCI thereto, on any grounds whatsoever.
(c) Use or Registration of Trademarks: The Company shall not:
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(i) use the Names or Marks, or any term, name, design,
image, script, device or xxxx colorably similar thereto (a "Similar
Xxxx"), except as specifically permitted herein;
(ii) seek to register the Names or Marks, or any Similar
Xxxx, in the United States or any other jurisdiction; or
(iii) use the Names or Marks in conjunction or combination
with any other trade name, trademark, service xxxx or other xxxx, or
any other term, name, design, image, script or device, except as
otherwise expressly provided herein.
(d) Trademark Use. In using the Names or Marks, the Company shall
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use its diligent best efforts to avoid:
(i) any impairment of TCI's rights, titles and interests
therein and thereto, and all goodwill associated therewith; and
(ii) any confusion, deception or mistake of the purchasing
public with respect to the source or origin or standards of quality of
any products or services bearing the Names or Marks;
and shall use the Names or Marks in the United States and each other
jurisdiction in the Territory only in a manner that is in compliance with the
laws and regulations of such jurisdiction.
SECTION 7. NO OTHER RIGHTS OF THE COMPANY IN THE NAMES OR MARKS.
The Company acknowledges that it does not have any right, title or
interest in the Names or Marks other than its rights under the License as set
forth herein. The Names or Marks and all Other Marks are the sole property of
TCI, and any and all uses by the Company of the Names or Marks, or any Other
Xxxx, any place in the world, shall inure to the benefit of TCI, whether or not
any such use is in compliance with this Agreement. In no event shall any such
use create or vest in favor of the Company any right, title or interest in the
Names or Marks, any Other Xxxx or any other property or goodwill of TCI, or be
deemed or construed to have created or vested any such right, title or interest.
To the extent that any jurisdiction shall find or hold as a matter of law or
otherwise that such use has created or vested in the Company any right, title or
interest in or to the Names or Marks
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or any Other Xxxx, the Company, upon the request of TCI, shall execute and
deliver to TCI appropriate assignments to vest such right, title and interest in
TCI.
SECTION 8. NON-EXCLUSIVE LICENSE.
The License is non-exclusive. Nothing in this Agreement shall be
construed to limit the right of TCI to use or to grant a license to use the
Names or Marks or any Other Marks for any products or services, in the United
States or any other jurisdiction within or without the Territory, even though
such products or services are shipped, sold or offered in the same channels of
trade as those of the Company.
SECTION 9. MARKING.
The Company shall place the following notice prominently on all
advertising, promotional and other materials, labels, packaging materials or the
like bearing or containing the Marks:
"'TCI' and the 'Illuminating the Globe' design are the
registered marks of, and are used under license granted by,
Tele-Communications, Inc."
Notwithstanding the foregoing, the Company has the right to use the Names and
Marks orally as well as in writing in various media.
SECTION 10. ASSISTANCE IN REGISTRATION.
At TCI's reasonable request, the Company shall, at the Company's
own expense, assist TCI in the procurement or maintenance of any registrations
for the Names or Marks in any jurisdiction in the Territory and in any other
jurisdiction as TCI shall reasonably request by providing any information
available from the Company and executing any documents necessary or advisable
therefor in the sole discretion of TCI. The Company shall record the License in
any jurisdiction in which such recordation is required by statute or is
advisable in the sole discretion of TCI. Upon the prior written consent of TCI,
which consent may be granted or withheld by TCI in its sole and absolute
discretion, the Company may seek to register or qualify any or all Names and
Marks under the laws of any jurisdiction in the Territory; provided, however,
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that the Company shall bear (and, as applicable, reimburse TCI for) all costs
and expenses incurred by the Company or TCI in connection with any such
registration or qualification, or the procurement and/or maintenance thereof.
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SECTION 11. INFRINGEMENT BY THIRD PARTIES.
(a) The Company shall promptly notify TCI of any adverse uses
confusingly similar to the Names or Marks in connection with the Digital
Satellite Business and shall take no other action of any kind with respect
thereto without the express prior written authorization of TCI.
(b) The ultimate determination of whether or not legal action
shall be taken in any case shall lie exclusively with and at the sole discretion
of TCI.
(c) In the event that TCI in its sole discretion decides to
institute legal action, TCI shall pay the costs of any such legal action. The
Company shall cooperate in any action instituted or defended by TCI under this
Section 11 or Section 12 by providing any documents in its possession and
control, by making available its personnel familiar with relevant facts, and
otherwise as TCI shall reasonably request. Except as otherwise expressly
provided in Section 12, the Company shall pay its own legal and other expenses,
except that the Company shall be reimbursed by TCI for any out-of-pocket travel,
lodging and subsistence expenses necessarily and reasonably incurred by the
Company's personnel in connection with any action instituted or defended by TCI
under this Agreement, if incurred at the written request of TCI.
SECTION 12. INDEMNIFICATION BY THE COMPANY.
The Company shall indemnify TCI and hold TCI harmless from any and
all claims, suits, losses and damages (including, without limitation, reasonable
fees and expenses of counsel and reasonable settlement costs) arising out of:
(a) any breach by the Company of any obligation of the
Company under this Agreement; or
(b) any claim that any trade name, trademark, service xxxx
or other xxxx used by the Company infringes any name, xxxx or right of
any other person, except to the extent that such claim is based solely
on the Company's use of the Names and Marks in the United States or
any other jurisdiction in connection with the Digital Satellite
Business in accordance with this Agreement.
SECTION 13. QUALITY STANDARDS.
The products or services bearing the Names or Marks shipped or
offered by the Company shall be of a high standard and of such style, appearance
and quality as to be adequate and suited to their exploitation to the best
advantage and to the protection and enhancement of the Names and Marks and the
goodwill pertaining thereto, and all products shall be manufactured, sold and
distributed and all services shall be offered and performed in accordance with
applicable laws, and such products and services shall not reflect adversely upon
the good name of TCI or any of its programs or the Names, Marks or any Other
Marks. To this end, all advertising, promotion and use
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of the Names and Marks by the Company shall be consistent with TCI guidelines
and standards as may be issued from time to time by TCI and provided to the
Company. In the conduct of the business and activities of the Company under the
Names or Marks, the Company shall adhere to the highest ethical standards
pertaining to the Company's business and operations, and shall do nothing that
could in any way be injurious or detrimental to the Names or Marks or in any way
damage the goodwill symbolized by the Names or Marks and shall make available to
TCI any requested information necessary for TCI to evaluate such goodwill and
reputation. TCI has provided to the Company a copy of the TCI guidelines issued
with respect to the advertising, promotion and use of the Names and Marks
(including notices and legends to be used in connection therewith) as currently
in effect on the date hereof, which guidelines the Company shall follow. TCI
shall have the right to exercise control as to the standards and quality of the
products and services produced, sold or offered for sale in connection with the
Names or Marks.
SECTION 14. INSPECTION.
The Company shall permit TCI's authorized representatives to have
access to its premises for the purpose of inspecting the Company's products and
services and shall furnish, at TCI's request, materials used in connection with
the Names or Marks for the purpose of insuring that the Company is complying
with TCI's quality standards and this Agreement.
SECTION 15. ADVERTISING AND PROMOTIONAL MATERIALS.
Upon request of TCI, the Company shall furnish to TCI free of cost,
for its approval, a reasonable number of samples of each type of advertising and
promotional materials or the like used for any products or services offered by
the Company bearing the Names or Marks
SECTION 16. TERM OF THIS AGREEMENT; TERMINATION.
(a) This Agreement and the License will terminate at the end of
the Term, unless sooner terminated pursuant to the provisions hereof.
(b) This Agreement and the License may be terminated by either
party (the "Terminating Party") on 60 days' prior written notice to the other
party (the "Defaulting Party"), if (i) the Defaulting Party shall be in material
default of a material obligation of such party under this Agreement, (ii) such
default shall be incapable of being cured, or shall have continued for not less
than 30 days after the Defaulting Party shall have received written notice
thereof from the Terminating Party, and (iii) the Terminating Party shall be in
material compliance with all material obligations of the Terminating Party under
this Agreement.
(c) This Agreement and the License shall terminate, immediately
and automatically, whether or not notice shall have been given to the Company,
upon the occurrence of any of the following events: (i) the bankruptcy or
insolvency of the Company; (ii) the appointment of a receiver of the Company or
any of its assets; (iii) the making by the Company of an assignment
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for the benefit of creditors; or (iv) the institution of proceedings for a
reorganization, bankruptcy, dissolution or winding-up of the Company, or any
similar proceeding under the laws of any jurisdiction to which the Company may
be subject.
(d) This Agreement and the License may be terminated by TCI,
immediately upon written notice to the Company if, in TCI's sole judgment, which
shall be reasonably exercised, the Company's continued use of the Names or Marks
would materially jeopardize or be detrimental to the valuable goodwill and
reputation which TCI enjoys worldwide in the Names or Marks.
SECTION 17. NON-USE OF NAMES AND MARKS UPON TERMINATION.
Upon the termination of this Agreement or the License for any
reason whatsoever, the Company shall immediately discontinue the use of, and
thereafter refraining from using, the Names, Marks, or any Similar Xxxx, as a
company name or trade name or part thereof, or otherwise in connection with the
business and activities of the Company or the sale or marketing of any products
or services, in the United States or any other jurisdiction; provided, however,
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that, during the six month period immediately following any such termination
(other than a termination of the Term upon the third anniversary of the
Effective Date as provided in Section 1(e) hereof), the Company may complete its
performance under any contract entered into by the Company in the ordinary
course of business prior to notice of any such termination, so long as the
Company complies with its obligations set forth herein as if this Agreement
continued in full force and effect. Upon termination of this Agreement or the
License, upon the written request of TCI, the Company shall destroy or deliver
to TCI, at the Company's expense, any and all advertising, promotional and other
materials, labels, packaging materials or the like bearing or containing the
Names or Marks, as TCI in its sole discretion shall determine.
XXXXXXX 00. XXXXXXXXXX XXXXXX XXXX XXXXXXXXXXX.
The Company acknowledges that any failure by the Company to comply
with its obligations under Section 17 upon the termination of this Agreement or
the License will result in immediate and irreparable injury to TCI, and that, in
addition to any provable damages and the right to recover the costs and expenses
of any related litigation, TCI shall be entitled to equitable relief by way of
temporary and permanent injunctions and such other further relief as any court
with jurisdiction may deem appropriate.
SECTION 19. ASSIGNMENT.
The Company shall not assign this Agreement or the License, or any
rights of the Company hereunder. TCI may assign or otherwise transfer this
Agreement and its rights hereunder to any direct or indirect affiliate of TCI,
or otherwise upon the sale or other transfer of TCI's entire business, or of
that part of TCI's business to which the License relates, or the sale of the
Marks, provided that any successor or assignee of TCI agrees to be bound by the
terms and provisions of this Agreement.
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SECTION 20. SURVIVAL OF REPRESENTATIONS, WARRANTIES AND AGREEMENTS.
The representations, warranties, covenants, acknowledgments and
agreements of the parties set forth in this Agreement shall survive the
execution and delivery of this Agreement and shall be effective during the term
of this Agreement and the License; and the obligations of the Company under
Sections 5, 6, 7, 8, 9, 13, 14, 18 and 19, and the obligations of TCI under
Sections 4 and 12, shall survive the termination of this Agreement or the
License for any reason whatsoever, including, without limitation, any breach of
this Agreement by either TCI or the Company.
SECTION 21. MISCELLANEOUS.
(a) Entire Agreement. This Agreement constitutes the entire
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agreement between the parties hereto with respect to the subject matter hereof
and supersedes all previous negotiations, commitments and writings with respect
to such subject matter.
(b) Governing Law. This Agreement shall be governed by and
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construed in accordance with (i) the laws of the State of Colorado applicable to
contracts executed in and to be performed in that state and (ii) as applicable,
the Federal laws of the United States of America.
(c) Notices. All notices, requests, demands and other
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communications under this Agreement shall be in writing and shall be deemed to
have been duly given: (i) on the date of service if served personally on the
party to whom notices is to be given; (ii) on the day of transmission if sent
via facsimile transmission to the facsimile number given below, and telephonic
confirmation of receipt is obtained promptly after completion of transmission;
(iii) on the day after sending by Federal Express or similar overnight courier
or the Express Mail service maintained by the United States Postal Service; or
(iv) on the fifth day after mailing, if mailed to the party to whom notice is to
be given, by first class mail, registered or certified, postage prepaid and
properly addressed, to the party as follows:
If to TCI:
Tele-Communications, Inc.
0000 XXX Xxxxxxx
Xxxxxxxxx, Xxxxxxxx 00000
Attention: General Counsel
Telecopy: (000) 000-0000
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If to the Company:
TCI Satellite Entertainment, Inc.
0000 Xxxxx Xxxxxxx, Xxxxx 000
Xxxxxxxxx, Xxxxxxxx 00000
Facsimile (000) 000-0000
Attention: Xxxx X. Xxxxxx, President
A party may change its address for the purpose of this Section by
giving the other party written notice of its new address in the manner set forth
above.
(d) Amendment. This Agreement may not be amended or modified in
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any respect except by a written agreement signed by the parties hereto.
(e) Successors and Assigns; No Third-Party Beneficiaries. This
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Agreement shall be binding upon and inure to the benefit of the parties hereto
and their respective successors and permitted assigns. Nothing contained in
this Agreement is intended to confer upon any other persons other than the
parties hereto or their respective successors and permitted assigns, any rights
or remedies, except as otherwise expressly set forth herein.
(f) Counterparts. This Agreement may be executed in counterparts,
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each of which shall be an original instrument and all of which together shall
constitute a single contract.
(g) No Waiver. No waiver by either party hereto of any term or
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condition of this Agreement, in any one or more instances, shall operate as a
waiver of such term or condition at any other time.
(h) Interpretation. The section headings contained in this
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Agreement are solely for the purpose of reference and do not constitute a part
of this Agreement.
(i) Severability. If any provision of this Agreement shall be
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invalid or unenforceable, such invalidity or unenforceability shall not render
the entire Agreement invalid. Rather, the Agreement shall be construed as if not
containing the particular invalid or unenforceable provisions, and the rights
and obligations of each party shall be construed and enforced accordingly.
(j) No Joint Venture. Nothing contained herein shall constitute
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either party an employee, agent or partner of, or joint venturer with, the other
party.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement
to be executed as of the day and year first above written.
TELE-COMMUNICATIONS, INC.
By: /s/ Xxxxxxx X. Xxxxx
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Name: Xxxxxxx X. Xxxxx
Title: Executive Vice President
TCI SATELLITE ENTERTAINMENT, INC.
By: /s/ Xxxx X. Xxxxxx
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Name: Xxxx X. Xxxxxx
Title: President
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EXHIBIT A
Marks
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U.S. Registration Date Registered
Description Number in U.S.
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1. "TCI" 1,244,804 7/ 5/83
2. "TCI" [1,840,915] [ 6/21/94]
3. DESIGN: "Illuminating The [1,731,665] [11/10/92]
Globe" (See Attachment #1)
4. "Tempo"
5. "PRIMESTAR By TCI"
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