TRADEMARK LICENSE AGREEMENT
Exhibit 10.1.6
This TRADEMARK LICENSE AGREEMENT (the “Agreement”) made and entered into April 17,
2009 (“Effective Date”) by and between Xxxxxx Industries, Inc., a corporation duly
organized and existing under the laws of the State of Delaware (“Xxxxxx”), and Xxxxxx
Investment Management LLC, a limited liability company duly organized and existing under the laws
of the State of Delaware, and a wholly-owned subsidiary of Xxxxxx (“Spinco,” and together
with Xxxxxx, the “Parties” and each a “Party”).
WHEREAS, Xxxxxx owns all the limited liability company units of Spinco;
WHEREAS, Xxxxxx intends to distribute all of its interest in Spinco to Walter’s stockholders
prior to the merger referred to below (the “Spin-Off”);
WHEREAS, pursuant to the Second Amended and Restated Agreement and Plan of Merger dated
February 6, 2009 (as may be further amended, supplemented, restated or otherwise modified, the
“Merger Agreement”) by and among Xxxxxx, Spinco, JWH Holding Company, LLC
(“JWHHC”), and Hanover Capital Mortgage Holdings, Inc. (“Hanover”), following the
Spin-Off, Spinco will merge into Hanover;
WHEREAS, Xxxxxx or its subsidiaries (collectively, the “Xxxxxx Parties”) own certain
trademarks, domain names, corporate and/or trade names that JWHHC and/or its subsidiaries have used
in connection with its mortgage finance, insurance, and reinsurance businesses;
WHEREAS, prior to the Spin-Off, JWHHC will transfer its mortgage finance, insurance and
reinsurance businesses to Xxxxxx, and Xxxxxx will transfer such businesses to Spinco; and
WHEREAS, Spinco and its subsidiaries (collectively, the “Spinco Parties”) wish to use
certain trademarks, domain names, corporate and/or trade names following the consummation of the
Spin-Off and merger into Hanover, and Xxxxxx is willing to permit such use;
NOW THEREFORE, in consideration of the premises and the mutual promises and covenants
contained herein and for other good and valuable consideration (including that recited in the
Merger Agreement), the receipt and sufficiency of which are hereby acknowledged, the Parties agree
as follows:
SECTION 1 - GRANT OF LICENSE
1.1. Licenses.
(a) Xxxxxx, on behalf of itself and the other Xxxxxx Parties, grants to the Spinco Parties a
perpetual, non-exclusive, paid-up, non-transferable (except as permitted in Section 7.4) license to
use the trademarks, corporate and/or trade names on Exhibit A solely in the United States, its
territories and possessions, and solely in connection with mortgage finance, lending, insurance and
reinsurance services and financial services relating to the foregoing (the “Licensed
Business”).
(b) Xxxxxx hereby causes its subsidiary Xxx Xxxxxx Homes, Inc. to grant to the Spinco Parties
the paid-up, non-transferable right to maintain the registrations for the domain names on Exhibit A
(the “Licensed Domains,” and together with the other items on Exhibit A, the “Licensed
Marks”) solely for operating websites directed to customers in the United States, its
territories and possessions, and solely in connection with the Licensed Business.
1.2. Sublicensing. Each Spinco Party may sublicense the Licensed Marks to agents,
distributors and other persons in connection with such Spinco Party’s operation of its own
business, but not for the separate or unrelated use of any other person. Spinco is liable
hereunder for any act or omission by any sublicensee that would breach this Agreement if made by
Spinco.
1.3. Reservations.
(a) Spinco acknowledges, on behalf of itself and the other Spinco Parties, that each of them
has no right under this Agreement to use any (i) trademarks, service marks, domain names, logos,
corporate or trade names, trade dress or other source indicators (“Trademarks”) of the
Xxxxxx Parties other than the Licensed Marks; (ii) Trademark containing the term “JWH”; (iii)
Trademark containing the term “Xxxxxx,” other than the Licensed Marks; (iv) Trademark containing
the term “Xxx Xxxxxx” and/or any version or variation of the “flying W” logo depicted on Exhibit B;
or (v) Trademark containing the term “Cardem.”
(b) All rights not expressly licensed to the Spinco Parties in Section 1.1 are reserved to the
Xxxxxx Parties, provided that Xxxxxx agrees that each of the Xxxxxx Parties will not use or grant
any person a license to use in the Licensed Business the name “Xxxxxx” immediately adjacent to the
word “Mortgage,” “Reinsurance,” “Investment,” “Finance,” “Bank,” or any other word that reasonably
conveys to consumers any services included in the Licensed Business.
1.4. Future Transfer. If at any time after the Effective Date Xxxxxx determines it no longer
wishes to own any of the Licensed Marks, it shall notify Spinco, and upon Spinco’s request, the
Parties shall execute a transfer of any such Licensed Marks to Spinco on mutually agreeable terms.
SECTION 2 - OWNERSHIP
Each Spinco Party agrees that, as between the Xxxxxx Parties and Spinco Parties, the Xxxxxx
Parties are the sole and exclusive owners of the Licensed Marks and all intellectual property
rights therein. Each Spinco Party shall, upon the reasonable request and expense of Xxxxxx, take
further actions and execute additional documents to establish and perfect the above rights. Each
Spinco Party agrees not to question or contest the validity of, or the Xxxxxx Parties’ rights in
the Licensed Marks and the associated goodwill. For clarity, the foregoing shall not limit Spinco
from bringing any claim that Xxxxxx has breached this Agreement.
SECTION 3 - USE
3.1. New Marks. Each Spinco Party may adopt and use as Trademarks any variations of the
Licensed Marks on Part I of Exhibit A, if such Trademarks use “Xxxxxx” immediately adjacent to the
word “Mortgage,” “Reinsurance,” “Investment,” “Finance,” or any other word that reasonably conveys
to consumers any services included in the Licensed Business. Each
Spinco Party may adopt and use reasonable variations of the Licensed Marks on Part II of
Exhibit A in its discretion, subject to Section 1.3. Spinco will give Xxxxxx prompt notice of any
such new Trademark, which will be included in the definition of “Licensed Marks” for all purposes
hereunder.
3.2 Domain Names/Internet. Each Spinco Party will not be deemed to have breached the
territorial restriction in Section 1.1(b) if persons outside the United States access any Internet
websites operated under the Licensed Domains, provided that such websites are controlled by such
Spinco Party and are directed at U.S. customers. Xxxxxx will cause the transfer of the
registrations for the Licensed Domains to a designated Spinco Party within 30 days of the Effective
Date, at Spinco’s expense for Walter’s out-of-pocket costs.
3.3 Quality Assurance. Each Spinco Party will use the Licensed Marks solely (i) in accordance
with good trademark practice; and (ii) in connection with products, services, content and materials
maintaining quality levels at least as high as those of Walter’s past practice and that reflect
favorably on Xxxxxx. Each Spinco Party will not take any action that could reasonably be expected
to harm the Licensed Marks or their associated goodwill. Each Spinco Party shall, at its sole
expense, comply at all times with all applicable laws, regulations, rules and reputable industry
practice pertaining to the Licensed Business and its use of the Licensed Marks.
3.4 Samples. To ensure the Spinco Parties’ compliance with Section 3.3, upon Walter’s
request, Spinco will provide Xxxxxx with representative samples of all materials bearing the
Licensed Marks in any media, no more than once a year (unless reasonably justified under the
circumstances). If, in the exercise of its commercially reasonable judgment, Xxxxxx finds that any
samples violate Section 3.3, Xxxxxx will inform Spinco in writing. Spinco will correct such
non-compliance within a reasonable time thereafter, not to exceed 30 days.
SECTION 4 - INFRINGEMENT
Spinco will notify Xxxxxx promptly after any Spinco Party becomes aware of any actual or
threatened infringement, imitation, dilution, misappropriation, or other unauthorized use or
conduct in derogation of the Licensed Marks. Xxxxxx will have the sole right to bring any claim,
action, suit or proceeding (“Action”) to remedy the foregoing, and the Spinco Parties will
cooperate with Xxxxxx in same at Walter’s expense.
SECTION 5 - WARRANTY AND INDEMNITY
5.1. By Each Party. Each Party represents and warrants to the other Party that (i) the
warranting Party has the requisite corporate or company power and authority to enter into this
Agreement; (ii) the warranting Party’s execution, delivery and performance of this Agreement has
been duly authorized by all requisite corporate or company action on its part; (iii) this Agreement
has been duly executed and delivered by the warranting Party and, assuming due authorization,
execution and delivery, constitutes a legal, valid and binding agreement, enforceable against the
warranting Party in accordance with its terms, subject to bankruptcy, insolvency, reorganization,
moratorium and similar laws of general application relating to or affecting creditors’ rights and
to general equity principles; and (iv) neither the execution and
delivery by the warranting Party of this Agreement or compliance and performance with any of
the provisions hereof results in a default (or an event that, with notice or lapse of time or both,
would become a default) or gives rise to any right of termination by any third Party, cancellation,
amendment or acceleration of any obligation or the loss of any benefit under, any contract binding
the warranting Party.
5.2. Disclaimer. Except as expressly set forth in section 5.1, the Xxxxxx
Parties make no representations or warranties, express or implied, with respect to this Agreement
or the Licensed Marks, and expressly disclaim same, including any with respect to title,
non-infringement, merchantability, value, reliability or fitness for use. Each Spinco Party’s use
of the Licensed Marks is on an “as is” basis and is at its own risk.
5.3. Indemnity. Each Party will defend at its expense, hold harmless and indemnify the other
Party and its affiliates and their respective directors, officers, shareholders, agents and
employees against any third-party Actions and all related losses, awards, judgments, settlements,
costs, fees, expenses, liabilities and damages (including reasonable attorneys’ fees and costs of
suit) to the extent arising out of or relating to the indemnifying Party’s breach of this Agreement
or any representations, warranties, covenants or agreements herein.
SECTION 6 - TERM
6.1. Term. The term of this Agreement commences as of the Effective Date and lasts in
perpetuity, unless termination occurs pursuant to Section 6.2 or 6.3.
6.2. Breach. If either Party materially breaches any provision hereof, the non-breaching
Party may terminate this Agreement if the breaching Party does not cure such breach within 30 days
following written notice thereof (or any mutually-agreed extension). Any such termination shall be
effective upon written notice by Xxxxxx to Spinco made after such 30-day period (or any
mutually-agreed extension).
6.3. Bankruptcy. To the fullest extent permitted by applicable law, if Spinco (i) is unable
to pay its debts when due, (ii) makes any assignment for the benefit of creditors, (iii) files any
petition under the bankruptcy or insolvency laws, (iv) has a receiver or trustee to be appointed
for its business or property, or (v) is adjudicated bankrupt or insolvent, Xxxxxx xxx at its
discretion terminate this Agreement, upon 30 days’ prior written notice.
6.4. Survival. Sections 2, 5, 6.4, 7.5 & 7.7 shall survive any termination of this Agreement.
SECTION 7 - MISCELLANEOUS
7.1. Notice. All notices hereunder will be in writing and will be deemed given upon (a)
confirmed receipt of a facsimile transmission, (b) confirmed delivery of a standard overnight
courier or when delivered by hand or (c) five business days after the date mailed by certified or
registered mail (return receipt requested), postage prepaid, to the Parties at the following
addresses (or at such other addresses for a Party as will be specified by like notice):
If to Xxxxxx:
|
If to Spinco: | |
Xxxxxx Industries, Inc.
|
Xxxxxx Investment Management, LLC | |
4211 W. Boy Scout Blvd., 10th Floor
|
0000 X. Xxx Xxxxx Xxxx., 0xx Xxxxx | |
Xxxxx, Xxxxxxx 00000-0000
|
Xxxxx, Xxxxxxx 00000-0000 | |
Attention: General Counsel
|
Attention: General Counsel | |
Facsimile: (000) 000-0000
|
Facsimile: (813) 871- 4430 | |
with a copy to:
|
with a copy to: | |
Xxxxxxx Xxxxxxx & Xxxxxxxx LLP
|
Xxxxxxx Xxxxxxx & Xxxxxxxx LLP | |
000 Xxxxxxxxx Xxxxxx
|
000 Xxxxxxxxx Xxxxxx | |
Xxx Xxxx, Xxx Xxxx 00000
|
Xxx Xxxx, Xxx Xxxx 00000 | |
Attention: Xxxxx X. Xxxxxx, Esq. and
|
Attention: Xxxxx X. Xxxxxx, Esq. and | |
Xxxx X. Xxxxxx, Esq.
|
Xxxx X. Xxxxxx, Esq. | |
Facsimile: (000) 000-0000
|
Facsimile: (000) 000-0000 |
7.2. Construction. The article and section headings in this Agreement are for
reference purposes only and will not affect the interpretation of this Agreement.
7.3. Severability. If any provision of this Agreement or the application of any such
provision to any person or entity or circumstance, shall be declared judicially to be invalid,
unenforceable or void, such decision shall not have the effect of invalidating or voiding the
remainder of this Agreement, it being the Parties’ intent and agreement that this Agreement shall
be deemed amended by modifying such provision to the extent necessary to render it valid, legal and
enforceable while preserving its intent or by substituting another provision that is legal and
enforceable and that achieves the same objective.
7.4. Assignment; Binding Effect. Neither this Agreement nor any of the rights, benefits or
obligations hereunder may be assigned or assumed by a Party (whether by operation of law or
otherwise) without the prior written consent of the other Party, which consent will not be
unreasonably withheld, except to an affiliate as a result of an internal reorganization for tax or
administrative purposes. For clarity, a merger, reorganization (including in bankruptcy), change
of control or sale of all or substantially all of the assets or business to which this Agreement
relates constitutes an “assignment” hereunder. In the event of a permitted assignment hereunder,
this Agreement will be binding upon, inure to the benefit of and be enforceable by the Parties and
their respective successors and permitted assigns. Any attempted assignment in violation of the
foregoing will be null and void at the outset.
7.5. Third Parties. No person or entity (other than as specified in this Agreement) will be
deemed a third party beneficiary under or by reason of this Agreement. Spinco is liable
\
hereunder for any act or omission by any Spinco Party that would breach this Agreement if made
by Spinco.
7.6. Entire Agreement. This Agreement constitutes the entire agreement of the Parties and
supersedes all prior and contemporaneous agreements and understandings, both written and oral,
between the Parties with respect to the subject matter hereof. Exhibits A and B are expressly made
a part of, and incorporated by reference into this Agreement.
7.7. Governing Law/Jurisdiction. This Agreement will be governed by, and construed in
accordance with, the laws of the State of New York applicable to contracts made and to be performed
therein. Each Party irrevocably submits to the jurisdiction of the state or federal courts in New
York, New York for the purposes of any Action arising out of this Agreement. Each party
unconditionally waives any right to a trial by jury in respect of any such action. The Parties
agree that irreparable damage would occur to Xxxxxx in the event that Spinco materially breaches
any provision of Sections 1-3 of this Agreement. Therefore, Xxxxxx xxx seek an injunction to
prevent or enjoin such breach in the above courts without posting bond or other security.
7.8. Counterparts. This Agreement may be executed in one or more counterparts, each of which
will be deemed to be an original, but all of which together will constitute one agreement.
Facsimile signatures will serve as originals for purposes of binding the Parties hereto.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed as of the date
written above.
| XXXXXX INDUSTRIES, INC. | ||||
| By: | /s/ Xxxxxx X. Xxxxxxx | |||
| Name: | Xxxxxx X. Xxxxxxx | |||
| Title: | Vice Chairman, Chief Financial
Officer and General Counsel |
|||
| XXXXXX INVESTMENT MANAGEMENT LLC |
||||
| By: | /s/ Xxxx X. X’Xxxxx | |||
| Name: | Xxxx X. X’Xxxxx | |||
| Title: | Chairman and Chief Executive Officer | |||
EXHIBIT A — LICENSED MARKS
Part I
Xxxxxx Investment Management Corp.
Xxxxxx Investment Management LLC
Xxxxxx Mortgage Company
WMC
Xxxxxx Investment Reinsurance Co. Ltd.
xxxxxxxxxxxxxxxx.xxx
xxxxxxxxxxxxxxxxxxxx.xxx
xxxxxx-xxxxxxxxxx.xxx
xxxxxx-xxxxxxxxxx.xxx
xxxxxx-xxxxxxxxxx.xxx
xxxxxx-xxxxxxxxxxx.xxx
xxxxxx-xxxxxxxxxxx.xxx
xxxxxx-xxxxxxxxxxx.xxx
xxxxxxxxx.xxx
xxxxxxxxx.xxx
xxxxxxxxx.xxx
xxxxxxxxxxxxxx.xxx
xxxxxxxxxxxxxx.xxx
xxxxxxxxxxxxxx.xxx
xxxxxxxxxxxxxxxxxxxxxxx.xxx
xxxxxx.xxx
A-1
Part II
Best Insurors
Best Insurors, Inc.
Mid-State Capital Corporation
Mid-State Homes, Inc.
Mid-State Capital, LLC
xxxxxxxxxxxx.xxx
xxxxxxxxxxxxxxx.xxx
A-2
EXHIBIT B
The “flying W” logo —
|
 |
A-3
