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Exhibit 10.15
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TRADE NAME AND SERVICE XXXX LICENSE AGREEMENT
TRADE NAME AND SERVICE XXXX LICENSE AGREEMENT ("License Agreement")
effective as of November 1, 1995 between ITT CORPORATION, a Delaware
corporation, ("ITT Corporation"), and ITT HARTFORD GROUP, INC., a Delaware
corporation ("ITT Hartford"), (collectively the "Parties").
RECITALS
WHEREAS, in order to carry out the Distribution (as hereinafter
defined) approved by the Board of Directors and by the shareholders of ITT
Corporation whereby the holders of the shares of common stock of ITT Corporation
will receive all of the outstanding shares of common stock of ITT Destinations
(as hereinafter defined) and all the outstanding shares of common stock of ITT
Hartford (as hereinafter defined), it is necessary for these companies to enter
into agreements for the continued right and license to use the "ITT" company
name, trade name, trademark and service xxxx;
WHEREAS, ITT Corporation is the owner of the company and trade name
"ITT" and of the trademark and the service xxxx "ITT", and of all rights
worldwide in such name and marks and the goodwill associated therewith;
WHEREAS, ITT Corporation will assign effective November 2, 1995 this
License Agreement to ITT Destinations along with the right, title, and interest
in the "ITT" name and marks, and the registrations, registration applications
and goodwill associated therewith;
WHEREAS, ITT Destinations will assign effective immediately prior to
the Effective Time (as hereinafter defined) this License Agreement to ITT
Sheraton (as hereinafter defined) along with all right, title and interest in
the "ITT" name and marks, and the registrations, registration applications and
goodwill associated therewith;
WHEREAS, ITT Hartford and its Subsidiaries (each as hereinafter
defined) have expended and will in the future expend time and money in
advertising and promoting the ITT name and marks in connection with
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conducting the ITT Hartford Business (as hereinafter defined) for the mutual
benefit of the parties hereto;
WHEREAS, ITT Hartford and its Subsidiaries currently have the right to
use and desire to continue to have the right to use after the Distribution Date
"ITT" as part of their company names and trade names and as a trademark and
service xxxx in connection with conducting the ITT Hartford Business; and
WHEREAS, ITT Corporation is willing to formally grant a license to ITT
Hartford, with the right to grant certain sublicenses to ITT Hartford
Subsidiaries, to continue to use the ITT name and marks in connection with
conducting the ITT Hartford Business and otherwise as set forth herein.
NOW, THEREFORE, in consideration of the mutual agreements, undertakings
and covenants herein, the Parties hereby agree as follows:
ARTICLE I. DEFINITIONS
Section 1.01 General. As used in this License Agreement, the following
terms shall have the following meanings (such meanings to be equally applicable
to both the singular and plural forms of the terms defined):
(a) "Distribution Agreement" shall mean the Distribution Agreement to
be entered into by ITT Corporation, ITT Destinations, and ITT Hartford relating
to the distribution of the shares of ITT Destinations and ITT Hartford to the
holders of ITT Corporation Common Stock.
(b) "Distribution" shall mean the distribution on the Distribution Date
to holders of record of shares of ITT Corporation Common Stock as of the
Distribution Record Date of (i) the ITT Destinations Common Shares owned by ITT
Corporation on the basis of one ITT Destinations Common Share for each
outstanding share of ITT Corporation Common Stock and (ii) the ITT Hartford
Common Shares owned by ITT Corporation on the basis of one ITT Hartford Common
Share for each outstanding share of ITT Corporation Common Stock.
(c) "Distribution Date" shall mean such date as may hereafter be
determined by ITT Corporation's Board of Directors as the date on which the
Distribution shall be effected.
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(d) "Distribution Record Date" shall mean such date as may hereafter be
determined by ITT Corporation's Board of Directors as the record date for the
Distribution.
(e) "Effective Time" shall mean 11:59 p.m., New York time, on the
Distribution Date.
(f) "ITT Corporation" shall mean ITT Corporation, a Delaware
corporation and its predecessor Maryland corporation up to the Effective Time
(to be merged thereafter into ITT Indiana, Inc., an Indiana corporation which
will be renamed "ITT Industries, Inc.").
(g) "ITT Destinations" shall mean ITT Destinations, Inc., a Nevada
corporation, to be renamed "ITT Corporation" immediately prior to the Effective
Time.
(h) "ITT Destinations Business" shall mean the principal businesses and
operations conducted by ITT Destinations and its Subsidiaries on the
Distribution Date, such businesses being the hospitality, entertainment,
information and educational services as specifically described in Exhibit A1
annexed hereto and, in addition, shall also mean the Closely Related Businesses
described in Exhibit A1, provided that ITT Destinations Business does not
include the ITT Industries Business or the ITT Hartford Business.
(i) "ITT Hartford" shall mean ITT Hartford Group, Inc., a Delaware
corporation.
(j) "ITT Hartford Business" shall mean the principal businesses and
operations conducted by ITT Hartford and its Subsidiaries on the Distribution
Date, such businesses being the insurance services in the fields of property,
casualty, life and reinsurance as specifically described in Exhibit A2 annexed
hereto and, in addition, shall also mean the Closely Related Businesses
described in Exhibit A2, provided that ITT Hartford Business does not include
the ITT Industries Business or the ITT Destinations Business.
(k) "ITT Hartford Expanded Business" shall mean any businesses not
included in the ITT Hartford Business, the ITT Industries Business, or the ITT
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Destinations Business except as specifically precluded by Sections 2.10 and
2.11.
(l) "ITT Industries" shall mean ITT Industries, Inc., an Indiana
corporation and the legal successor after the Distribution to ITT Corporation as
defined in Section 1.01(f).
(m) "ITT Industries Business" shall mean the principal businesses and
operations conducted by ITT Industries and its Subsidiaries on the Distribution
Date, such businesses being the design, manufacture, sale, and servicing of the
automotive products, defense products, electronic component products, fluid
handling products and management services for military and space satellite
launch facilities as specifically described in Exhibit A3 annexed hereto and, in
addition, shall also mean the Closely Related Businesses described in Exhibit
A3, provided that ITT Industries Business does not include the ITT Destinations
Business or the ITT Hartford Business.
(n) "ITT Logo" shall mean the worldwide rights to the stylized
trademark and service xxxx shown in Exhibit B annexed hereto together with all
registrations thereof and all applications thereof now or hereafter filed or
obtained, and the goodwill associated therewith.
(o) "ITT Marks" shall mean the worldwide rights to (i) the ITT Logo;
and (ii) all other trademarks and service marks consisting of the letters "ITT",
together with all registrations thereof and all applications thereof now or
hereafter filed or obtained, and the goodwill associated therewith.
(p) "ITT Name" shall mean the worldwide rights to that portion of any
company and trade name consisting of the letters "ITT" and the goodwill
associated therewith.
(q) "ITT Sheraton" shall mean ITT Sheraton Corporation, a Delaware
corporation.
(r) "Licensor" shall mean (i) effective as of November 1, 1995, ITT
Corporation, (ii) effective as of November 2, 1995, ITT Destinations, and (iii)
effective as of immediately prior to the Effective Time and thereafter, ITT
Sheraton.
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(s) "Permitted Manner of Use" shall mean use of the ITT Name and ITT
Marks in accordance with all legal requirements and also with Licensor's policy
and style standards as currently existing and as may be reasonably amended from
time to time by Licensor.
(t) "Phaseout Period" shall be a period of one and one-half (1-1/2)
years from the termination of this License Agreement during which period all use
of the ITT Name and ITT Marks by ITT Hartford and/or the ITT Hartford
Sublicensees (as hereinafter defined), as the case may be, shall be phased out
in accordance with the provisions of this License Agreement.
(u) "Proxy Statement" shall mean the Proxy Statement sent to the
holders of shares of ITT Common Stock in connection with the Distribution,
including any amendment or supplement thereto.
(v) "Subsidiary", with respect to any Party, shall mean any
corporation, partnership, joint venture or other entity of which a Party or
Licensor, directly or indirectly owns an interest sufficient to elect a majority
of the Board of Directors (or persons performing similar functions)
(irrespective of whether at the time any other class or classes of ownership
interests of such corporation, partnership or other entity shall or might have
such voting power upon the occurrence of any contingency). Irrespective of this
definition and for purposes of this License Agreement, Madison Square Garden,
L.P. and ITT-Dow Xxxxx Television, and their respective Subsidiaries will be
deemed Subsidiaries of ITT Destinations, and immediately prior to the Effective
Time and thereafter, ITT Destinations and its Subsidiaries will be deemed
Subsidiaries of ITT Sheraton.
(w) "ITT Hartford Sublicensee" shall mean:
(i) ITT Hartford and any Subsidiary of ITT Hartford in existence
as of, or acquired or formed after, the Distribution Date; or
(ii) any direct or indirect affiliate of ITT Hartford in which ITT
Hartford owns at least 40% of such affiliate if the remaining ownership is held
by a single third party or at least 25% of such affiliate if the remaining
ownership is held by more than one third party and in which ITT Hartford,
through its control, can exercise a veto over major decisions of such affiliate;
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provided that the business of any such Subsidiary or affiliate is solely within
the field of the ITT Hartford Business and/or the ITT Hartford Expanded Business
and that ITT Hartford (or by ITT Hartford Life International, Ltd. or ITT
Hartford International, Inc. as provided in Sections 2.01 and 2.02) grants a
formal sublicense to such Subsidiary or affiliate pursuant to Section 2.03
hereof.
(x) "Major Subsidiaries" shall mean the subsidiaries of ITT Hartford
set forth in Exhibit D annexed hereto.
(y) "Change in Control" shall mean any one of the following events:
(i) a report on Schedule 13D shall be filed with the Securities and
Exchange Commission pursuant to Section 13(d) of the Securities Exchange Act of
1934 (the "Act") disclosing that any person (within the meaning of Section 13(d)
of the Act) other than ITT Hartford or an ITT Hartford Subsidiary or any
employee benefit plan sponsored by ITT Hartford or an ITT Hartford Subsidiary is
the beneficial owner directly or indirectly of twenty percent (20%) or more of
the outstanding Common Stock of ITT Hartford;
(ii) any person (within the meaning of Section 13(d) of the Act)
other than ITT Hartford or an ITT Hartford Subsidiary or any employee benefit
plan sponsored by ITT Hartford or an ITT Hartford Subsidiary shall purchase
shares pursuant to a tender offer or exchange offer to acquire any Common Stock
of ITT Hartford (or securities convertible into such Common Stock), for cash,
securities or any other consideration, provided that after consummation of the
offer, the person in question is the beneficial owner (as such term is defined
in Rule 13d-3 under the Act) directly or indirectly of fifteen percent (15%) or
more of the outstanding Stock of ITT Hartford (calculated as provided in
paragraph (d) of Rule 13d-3 under the Act in the case of rights to acquire
Common Stock);
(iii) the stockholders of ITT Hartford shall approve (a) any
consolidation or merger of ITT Hartford in which ITT Hartford is not the
continuing or surviving corporation or pursuant to which shares of Common Stock
of ITT Hartford would be converted into cash, securities or other property,
other than a merger of ITT Hartford in which holders of Common Stock of ITT
Hartford immediately prior to the merger have the same proportionate ownership
of common stock of the surviving corporation immediately after the
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merger as immediately before, or (b) any sale, lease, exchange or other transfer
(in one transaction or a series of related transactions) of all or substantially
all the assets of ITT Hartford; or
(iv) there shall have been a change in a majority of the members of the
Board of Directors of ITT Hartford within a 12-month period unless the election
or nomination for election by ITT Hartford stockholders of each new director
during such 12-month period was approved by the vote of two-thirds of the
directors then still in office who were directors at the beginning of such
12-month period
ARTICLE II. LICENSES
Section 2.01 GRANT OF LICENSES TO USE THE ITT MARKS. Licensor hereby
grants to ITT Hartford, during the term of this License Agreement, a personal,
non-assignable (except as otherwise provided in this License Agreement),
non-transferable worldwide license to use, with the right to grant sublicenses
solely to ITT Hartford Sublicensees as provided for in Section 2.03 hereof to
use, the ITT Marks in accordance with the applicable Permitted Manner of Use (i)
on an exclusive basis for the ITT Hartford Business and (ii) on a non-exclusive
basis for the ITT Hartford Expanded Business. ITT Hartford shall have the right
to grant to ITT Hartford International, Inc. and ITT Hartford Life International
Ltd. the right to sublicense the ITT Marks, in accordance with the terms and
conditions of this Agreement, to non-U.S. Subsidiaries of ITT Hartford. ITT
Hartford agrees that it shall assume full responsibility, in accordance with the
terms and conditions of this Agreement, with respect to any such sublicenses
granted by ITT Hartford International, Inc. and ITT Hartford Life International
Ltd. in the event that ITT Hartford International, Inc. and/or ITT Hartford Life
International Ltd. as sublicensors or any of their Sublicensees fail to comply
with any obligations or responsibilities pursuant to this Agreement.
Section 2.02 GRANT OF LICENSES TO USE THE ITT NAME. Licensor hereby
grants to ITT Hartford, during the term of this License Agreement, a personal,
non-assignable (except as otherwise provided in this Agreement), non-
transferrable worldwide license to use, with the right to grant sublicenses
solely to ITT Hartford Sublicensees as provided for in Section 2.03 hereof to
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use, the ITT Name in their company names and in their trade or popular names in
accordance with the Permitted Manner of Use (i) on an exclusive basis for the
ITT Hartford Business, and (ii) on a non-exclusive basis for the ITT Hartford
Expanded Business. ITT Hartford shall have the right to grant to ITT Hartford
International, Inc. and ITT Hartford Life International Ltd. the right to
sublicense the ITT Name, in accordance with the terms and conditions of this
Agreement, to non-U.S. Subsidiaries of ITT Hartford. ITT Hartford agrees that it
shall assume full responsibility, in accordance with the terms and conditions of
this Agreement, with respect to any such sublicenses granted by ITT Hartford
International, Inc. and ITT Hartford Life International Ltd. in the event that
ITT Hartford International, Inc. and/or ITT Hartford Life International Ltd. as
sublicensors or any of their Sublicensees fail to comply with any obligations or
responsibilities pursuant to this Agreement. Licensor during the term of this
Agreement will not use, nor grant a license to any third party to use, those
company names in the exact form listed in Exhibit C annexed hereto, subject to
all other provisions of this License Agreement. The form of using the ITT Name
in the company and trade names as set forth in Exhibit C annexed hereto is
hereby approved for purposes of granting the aforementioned sublicenses. The
form of using the ITT Name in the company and trade names of an ITT Hartford
Sublicensee which is acquired or formed after the Distribution Date shall be
subject to Licensor's approval, which approval shall not be unreasonably
withheld. The principal basis for withholding such approval would be if the
proposed company and/or trade name used in conjunction with the ITT Name would
(i) be objectionable from a legal standpoint, or (ii) likely to create
confusion, for example, if the proposed name is descriptive of a field of
business of the ITT Destinations Business or the ITT Industries Business or too
close to a name used by a business of ITT Industries or ITT Destinations. Any
such approved name shall thereafter be deemed to be included in Exhibit C
annexed hereto. ITT Hartford and its Subsidiaries shall not have the right to
use "ITT Corporation" or any company or trade name substantially identical
thereto.
Section 2.03 SUBLICENSES. Each sublicense granted by ITT Hartford to an
ITT Hartford Sublicensee shall: (i) be in writing; (ii) specifically require the
ITT Hartford Sublicensee to agree to comply with and observe the terms and
conditions of this License Agreement; and (iii) require the Sublicensee to
acknowledge its obligations to Licensor by executing an agreement in the form
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annexed hereto as Exhibit E, which shall then be forwarded to Licensor or its
designee by ITT Hartford.
Section 2.04 PROHIBITED USES OF ITT NAME AND ITT MARKS. Neither ITT
Hartford, nor any of the ITT Hartford Sublicensees shall use the ITT Name or ITT
Marks for any product or service, or with or for any entity, in the ITT
Destinations Business or the ITT Industries Business.
Section 2.05 EXPANSION OF LICENSES. All requests for an expansion of
license rights granted under Sections 2.01, 2.02 and 2.05 shall be made by ITT
Hartford in writing to Licensor. Licensor may grant or deny such requests in its
sole discretion. For purposes of this Section 2.05, expansion of license rights
shall mean a right to use the ITT Name and/or the ITT Marks: (i) within the
scope of the ITT Hartford Business and/or ITT Hartford Expanded Business by an
ITT Hartford Sublicensee after it ceases to be a Subsidiary of ITT Hartford; or
(ii) outside or within the scope of the ITT Hartford Business or ITT Hartford
Expanded Business by ITT Hartford or the ITT Hartford Sublicensees if a Change
of Control of ITT Hartford occurs. For the purpose of this License Agreement,
any expansion of rights granted pursuant to this Section 2.05 shall thereafter
be deemed to be within the ITT Hartford Expanded Business and subject to any
reasonable limitations imposed by Licensor. Notwithstanding Section 2.05(i), ITT
Hartford may extend the rights previously granted to an ITT Hartford Sublicensee
under Sections 2.01 or 2.02 for a period of at least one and one-half (1 1/2)
years ("Extension Period") after such ITT Hartford Sublicensee ceases to be a
Subsidiary of ITT Hartford, provided that such former ITT Hartford Subsidiary
will not be an ITT Hartford Sublicensee for purposes of Article VIII of this
License Agreement, but shall agree to remain an ITT Hartford Sublicensee
pursuant to Section 2.03 hereof for all other purposes, including Section 3.01
hereof, and further provided that any Agreement Disputes (as defined in Section
8.01(a) hereof) may be resolved in any manner deemed appropriate in the sole
discretion of Licensor.
Section 2.06 REDUCTION OF LICENSES. In the event ITT Hartford and/or
ITT Hartford Sublicensees shall abandon their use of the ITT Name or one or more
of the ITT Marks for all or a portion of the ITT Hartford Business, then the
scope of the exclusive rights granted in Sections 2.01, 2.02 and 2.05 with
respect to such abandoned ITT Name or ITT Marks shall be reduced by an
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amount equal to the scope of the ITT Hartford Business so abandoned. For purpose
of this Section 2.06, abandonment shall mean the failure of ITT Hartford and its
sublicensed Major Subsidiaries to use the ITT Name or one or more of the ITT
Marks for a period of two (2) years, any such period to commence only after the
Distribution Date, except that should ITT Hartford or a new ITT Hartford
Sublicensee revive use in the activity previously abandoned, then the reduced
exclusive rights shall be expanded commensurate with the scope of the revived
use, subject to any intervening licenses or rights granted by or entered into or
then being negotiated by Licensor.
Section 2.07 QUALITY STANDARDS. In view of the status of the Parties
immediately prior to the Distribution Date as one company, each Party's intimate
knowledge with standards and procedures for assuring consistent quality,
Licensor's knowledge of the standards and procedures used in the ITT Hartford
Business, the integrity of ITT Hartford Business and its history of trouble-free
goods and services, Licensor adopts ITT Hartford Business quality standards and
ITT Hartford and the ITT Hartford Sublicensees agree to maintain such standards
and procedures to assure the consistent quality of its goods and services. ITT
Hartford and the ITT Hartford Sublicensees shall not materially lower such
quality standards without the prior written approval of Licensor.
Section 2.08 INSPECTIONS AND SAMPLES. Should Licensor have reason to
believe based on information available to it that the quality standards referred
to in Section 2.07 have not been maintained then, at the request of Licensor,
ITT Hartford and the ITT Hartford Sublicensees shall permit a knowledgeable
independent expert or consultant specifically retained by Licensor to have
reasonable access to their premises and personnel during normal working hours
and shall furnish or permit inspection of, at Licensor's request and without
charge to Licensor or to such expert or consultant, product samples, cartons,
containers, packaging, wrapping and service materials bearing or used in
connection with the ITT Name and/or the ITT Marks for the purpose of ensuring
that ITT Hartford and the ITT Hartford Sublicensees are complying with such
quality standards. Any information obtained during such inspection and provided
to Licensor shall be limited to that which is necessary to ensure compliance
with such quality standards.
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Section 2.09 ADVERTISING, PACKAGING AND LABELS. ITT Hartford and the
ITT Hartford Sublicensees shall furnish, at Licensor's request and without
charge, to Licensor or to its authorized designee(s) samples of promotional and
advertising material or the like to be used in connection with any products or
services offered by ITT Hartford and the ITT Hartford Sublicensees and bearing
or used in connection with the ITT Marks.
Section 2.10 THIRD PARTY RIGHTS. ITT Hartford and the ITT Hartford
Sublicensees acknowledge that the rights granted by Licensor under Sections
2.01, 2.02, and 2.05 are subject to all pre-existing third party rights,
obligations and restrictions as of the Distribution Date.
Section 2.11 INTERVENING THIRD PARTY RIGHTS. Notwithstanding
Section 2.01 (ii), Licensor shall be free to grant exclusive rights hereafter
to a third party to use the ITT Name and ITT Marks for use with a business
within the ITT Hartford Expanded Business, provided that ITT Hartford has not
given notice to Licensor prior thereto that it has commenced operations in the
identical business. In the event that ITT Hartford gives notice to Licensor
that it or an ITT Hartford Sublicensee is operating in a specific business
within the ITT Hartford Expanded Business, Licensor shall not thereafter grant
any rights to a third party to use the ITT Name or ITT Marks in the identical
specific business.
Section 2.12 RIGHTS TO ENTER BUSINESSES. Nothing in this License
Agreement shall preclude ITT Industries, ITT Destinations, ITT Hartford nor any
of their respective subsidiaries or affiliates from operating in any business
provided neither the ITT Name nor the ITT Marks are used in such business.
ARTICLE III. UNDERTAKINGS
Section 3.01 INDEMNIFICATION BY ITT HARTFORD. ITT Hartford and the ITT
Hartford Sublicensees hereby agree to indemnify and defend Licensor and its
Subsidiaries and their respective employees, officers, directors, and agents and
shall hold each of them harmless from any and all claims, demands, suits,
actions, damages, and judgments brought or obtained by a third party ("Claims"),
of whatever type or kind (excluding only such claims or legal action as may
arise under Sections 3.02 and 4.02 respectively) arising out of:
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(a) any use of the ITT Name or the ITT Marks by ITT Hartford or the ITT
Hartford Sublicensees, including, without limitation, product liability or
personal injury Claims; or
(b) any breach by ITT Hartford or the ITT Hartford Sublicensees of any
of the terms and conditions of this License Agreement;
provided Licensor shall cooperate with, and assist, ITT Hartford with respect to
any such Claim by (i) promptly notifying ITT Hartford of any such Claim, (ii)
agreeing to be defended by counsel of ITT Hartford's choice and to any
reasonable settlement proposed by ITT Hartford, (iii) promptly providing to ITT
Hartford any reasonably requested documents in its possession, custody, or
control, and (iv) making its personnel familiar with the facts available to ITT
Hartford, except that ITT Hartford shall reimburse Licensor for any
out-of-pocket travel, lodging, and subsistence expenses necessarily and
reasonably incurred by Licensor in effecting such cooperation.
Section 3.02 INDEMNIFICATION BY LICENSOR. Licensor and its Subsidiaries
hereby agree to indemnify and defend ITT Hartford and the ITT Hartford
Sublicensees and their respective employees, officers, directors, and agents and
shall hold each of them harmless from any and all claims, demands, suits,
actions, damages, and judgments brought or obtained by a third party ("Claims"),
of whatever type or kind (excluding only such claims or legal action as may
arise under Section 3.01 ) arising out of:
(a) any use of the ITT Name or the ITT Marks by Licensor or its
Subsidiaries (excluding ITT Hartford, ITT Industries and their Subsidiaries)
including, without limitation, product liability or personal injury Claims; or
(b) any breach by Licensor or its Subsidiaries of any of the terms and
conditions of this License Agreement;
provided ITT Hartford shall cooperate with, and assist, Licensor with respect to
any such Claim by (i) promptly notifying Licensor of any such Claim, (ii)
agreeing to be defended by counsel of Licensor's choice and to any reasonable
settlement proposed by Licensor, (iii) promptly providing to Licensor any
reasonably requested documents in its possession, custody, or control, and (iv)
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making its personnel familiar with the facts available to Licensor, except that
Licensor shall reimburse ITT Hartford for any out-of-pocket travel, lodging, and
subsistence expenses necessarily and reasonably incurred by ITT Hartford in
effecting such cooperation and assistance.
Section 3.03 DEFENSE OF INFRINGEMENT CLAIMS. Licensor further agrees to
defend ITT Hartford and/or any ITT Hartford Sublicensee to the extent that any
and all demands, suits, or actions ("Claims") solely arise out of an assertion
or claim that the use of the ITT Name or ITT Marks by ITT Hartford or the ITT
Hartford Sublicensees pursuant to the terms of this License Agreement infringes
the trade names or trademarks of a third party, provided, ITT Hartford shall
cooperate with, and assist, Licensor with respect to any such Claim by (i)
promptly notifying Licensor of any such Claim, (ii) agreeing to be defended by
counsel of Licensor's choice and to any reasonable settlement proposed by
Licensor, except that if a third party should institute a legal action against
ITT Hartford and/or an ITT Hartford Sublicensee involving their alleged
infringement of a third party xxxx based on their use of an ITT Xxxx in the ITT
Hartford Business then choice of counsel and the control of the legal action
shall be mutual between ITT Hartford and Licensor, (iii) promptly providing to
Licensor any reasonably requested documents in its possession, custody, or
control, and (iv) making its personnel familiar with the facts available to
Licensor. The costs associated with any such defense shall be borne equally by
Licensor and ITT Hartford.
Section 3.04 PHASE-OUT. Licensor agrees not to grant a license during
the Phaseout Period to any third party after any termination of this License
Agreement to use the ITT Name or the ITT Marks in the field of activity of the
ITT Hartford Business, except in the case of an abandonment as specified in the
last sentence of Section 2.06 herein.
Section 3.05 ABSENCE OF ITT HARTFORD INTEREST IN ITT MARKS. ITT
Hartford and the ITT Hartford Sublicensees agree that nothing herein shall give
ITT Hartford or the ITT Hartford Sublicensees any right, title or interest in
the ITT Name or the ITT Marks apart from the rights to use, and to sublicense
the use, granted or to be granted hereunder, and to retain any remuneration
resulting therefrom, all such right, title and interest, including but not
limited to rights of registration, maintenance and enforcement, being solely
with Licensor.
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The ITT Name and the ITT Marks are the sole property of Licensor, and any and
all uses by ITT Hartford of the ITT Name or of the ITT Marks shall inure to the
benefit of Licensor. In no event shall such use be deemed or construed to have
created or vested any right, title or interest whatever in and to ITT Hartford.
To the extent that any jurisdiction shall find for any reason as a matter of law
or otherwise that such use has vested in ITT Hartford or its Subsidiaries any
right, title or interest in or to the ITT Name or the ITT Marks, ITT Hartford
and its Subsidiaries, upon the request of Licensor, shall execute and deliver to
Licensor, without charge, appropriate assignments to vest such rights, title and
interest in Licensor.
Section 3.06 ITT NAME AND ITT MARKS NOT CONTESTED. ITT Hartford and its
Subsidiaries agree not to raise or cause to be raised any questions concerning
or objections to the validity of the ITT Name or the ITT Marks in any
jurisdiction, or to any registrations thereof or applications therefor, or to
the sole proprietary rights of Licensor thereto, on any grounds whatsoever.
Section 3.07 FILING, REGISTRATION OR USE OF NAMES, TRADEMARKS AND
SERVICE MARKS. ITT Hartford and its Subsidiaries agree not to:
(a) file, apply to register or register the ITT Name or the ITT Marks,
alone or in combination with any other word or device or symbol or any name,
xxxx, term, script or device colorably similar thereto, except if, as, when, and
to the extent as may be expressly consented to in writing in advance by Licensor
in specific instances;
(b) use the ITT Name or the ITT Marks in conjunction or in combination
with any other name, xxxx, term, script or device whatever, except as
specifically set forth in Article II, or if, as and to the extent approved in
writing in advance by Licensor; and
(c) use the ITT Name or the ITT Marks in any jurisdiction, or any name,
xxxx, term, script or device colorably similar thereto, except as specifically
permitted under this License Agreement.
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At the request of ITT Hartford, Licensor shall file registration
applications and maintain any such applications and registrations issued thereon
for the ITT Name and ITT Marks for activities within the ITT Hartford Business
or the ITT Hartford Expanded Business. Any expenses incurred by Licensor in
connection with registering or maintaining registrations of the ITT Name or the
ITT Marks for the ITT Hartford Business or for or on behalf of ITT Hartford
and/or the ITT Hartford Sublicensees for the ITT Hartford Expanded Business, and
expenses incurred in connection with proving or establishing use for the purpose
of trade name or trademark registration or maintenance of the ITT Name or ITT
Marks for the ITT Hartford Business or the ITT Hartford Expanded Business, shall
be reimbursed by ITT Hartford.
Section 3.08 INJUNCTIVE RELIEF UPON TERMINATION. ITT Hartford and its
Subsidiaries agree that should ITT Hartford and/or its Subsidiaries upon any
termination in whole or in part of this License Agreement, fail to cease use of
the ITT Name and the ITT Marks, as appropriate, in accordance with the
provisions of Article VI hereof, such failure will result in immediate and
irreparable injury to Licensor and, in addition to any provable damages and the
right to the costs and expenses of any litigation, Licensor shall be entitled to
equitable relief by way of temporary and permanent restraining orders and
injunctions and such other further relief as any court with jurisdiction may
deem just and proper without the necessity of posting a bond.
Section 3.09 OTHER LICENSOR LICENSES. Subject to Section 2.11 and to
the exact form of company names set forth in Exhibit C hereto, nothing in this
License Agreement shall be construed to limit the right of Licensor to use, or
to grant a license to any entity or person to use, the ITT Name or the ITT Marks
anywhere for any products or services, or in connection with any activities
outside the ITT Hartford Business even if such entity or person competes with
ITT Hartford or the ITT Hartford Sublicensees, or its products or services are
shipped, sold or offered in the same channels of trade as those of ITT Hartford
or the ITT Hartford Sublicensees.
Section 3.10 EXECUTION OF DOCUMENTS. At Licensor's request, ITT
Hartford and the ITT Hartford Sublicensees agree to assist Licensor in the
procurement or maintenance of any filings or registrations for the ITT Name or
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ITT Marks in any jurisdiction by providing any information available from ITT
Hartford and the ITT Hartford Sublicensees and executing any documents necessary
therefor. The rights granted or to be granted hereunder to ITT Hartford or the
ITT Hartford Sublicensees shall be recorded in any jurisdiction where such
recordation is required by statute or in the sole discretion of Licensor is
advisable, and ITT Hartford and the ITT Hartford Sublicensees shall extend to
Licensor its full cooperation in filing and completing any such recordation.
ARTICLE IV. INFRINGEMENT BY THIRD PARTIES
Section 4.01 INFRINGEMENT BY THIRD PARTIES. Upon discovery by ITT
Hartford or by an ITT Hartford Sublicensee, ITT Hartford shall notify Licensor
of any adverse uses confusingly similar or otherwise damaging to the ITT Name
and/or ITT Marks, but shall take no other action of any kind with respect
thereto except by the express prior written authorization of Licensor. The
determination of whether or not legal action shall be taken in any case shall
lie exclusively with and at the sole discretion of Licensor, except that if such
adverse use is in the same field of activity as the ITT Hartford Business, ITT
Hartford may, by such notice, require that Licensor institute and reasonably
pursue legal action.
Section 4.02 COSTS OF LEGAL ACTION. In the event that Licensor is
required to institute legal action pursuant to the notice under Section 4.01,
the costs of any such legal action shall be borne by ITT Hartford. In the event
that Licensor decides to institute legal action and such confusingly similar or
otherwise damaging use is within the field of activity of the ITT Hartford
Business or the ITT Hartford Expanded Business the cost of any such legal action
shall be shared equally by ITT Hartford and Licensor. In all such circumstances,
Licensor may bring suit in its own name and in the name of ITT Hartford or the
ITT Hartford Sublicensees, with choice of counsel and control of the legal
action by Licensor in close coordination and consultation with ITT Hartford. All
other legal actions for third party infringements instituted by Licensor shall
be at the expense and under the control of Licensor. ITT Hartford and ITT
Hartford Sublicensees shall cooperate with and assist Licensor in any such suit
by promptly providing any reasonably requested documents in their
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possession, custody or control, and by making their personnel familiar with the
facts available to Licensor and otherwise, without charge.
Section 4.03 RESOLUTION OF LEGAL ACTION. In the event that threatened
or actual legal action by Licensor results in a settlement or resolution that
provides damages or other monies to Licensor and/or ITT Hartford and the ITT
Hartford Sublicensees, such monies shall first be used to reimburse the Parties
for their respective costs of such legal action. Any remaining damages or other
monies after reimbursement of the aforesaid costs shall be retained by Licensor,
except that any remaining damages assessed as lost profits of ITT Hartford or
any ITT Hartford Sublicensee shall be paid to ITT Hartford and any remaining
damages assessed as royalties shall be shared equally by ITT Hartford and
Licensor.
ARTICLE V. TERMINATION
Section 5.01 CHANGE OF CONTROL. In the event that there is a Change of
Control of ITT Hartford without the prior written consent of Licensor pursuant
to Section 2.05 hereof, then this License Agreement may be terminated by
Licensor. In the event ITT Hartford gives notice to Licensor of a Change of
Control and Licensor does not object to such Change of Control within forty-five
(45) days of receipt of such notice, then it shall be deemed that Licensor shall
have granted an expansion of the license pursuant to Section 2.05(ii) hereof.
ARTICLE VI. TERM AND EFFECT OF TERMINATION
Section 6.01 LICENSE TERM. This License Agreement shall continue unless
sooner terminated pursuant to other provisions hereof, until ITT Hartford gives
written notice of an intent to terminate this License Agreement effective six
(6) months thereafter.
Section 6.02 EFFECT OF TERMINATION. Upon the termination of this
License Agreement, except in the case of termination for abandonment pursuant to
Section 2.06, ITT Hartford and the ITT Hartford Sublicensees during the Phaseout
Period shall phase out all use of the ITT Name and the ITT
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Marks. By the end of the Phaseout Period ITT Hartford and the ITT Hartford
Sublicensees shall fully discontinue all use of the ITT Marks and the ITT Name.
Following termination of this License Agreement, ITT Hartford and the
ITT Hartford Sublicensees shall:
(i) continue, without any time limitation, to indemnify and hold
harmless Licensor (including subsidiaries, affiliates, officers, directors,
agents or anyone connected with it in any way) pursuant to Section 3.01 hereof;
and
(ii) within thirty (30) days thereafter, account to Licensor and make
any such compensation payments as may be due or called for under Section 4.02
herein up to and including the effective date of termination of this License
Agreement.
Licensor and its Subsidiaries shall continue, for a period of two (2)
years, to indemnify and hold harmless ITT Hartford and ITT Hartford Sublicensees
(including subsidiaries, affiliates, employees, officers, directors, or agents)
pursuant to Section 3.02 hereof.
ARTICLE VII. REPRESENTATIONS AND WARRANTIES
Section 7.01 ABSENCE OF OTHER WARRANTIES AND REPRESENTATIONS. Other
than as specifically set forth herein, neither Party, nor any of their
Subsidiaries makes any representations or warranties including, without
limitation, any statement with respect to the validity, enforceability or
coverage of the ITT Name and ITT Marks, with or without respect to the ITT
Hartford Business or the ITT Hartford Expanded Business.
ARTICLE VIII. DISPUTE RESOLUTION
Section 8.01 DISPUTES. The general counsels of the relevant parties
shall negotiate in good faith for a reasonable period of time to settle any:
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(a) dispute or claim arising out of, in connection with, or in relation
to the interpretation, performance, non-performance or validity of this License
Agreement or otherwise arising out of, or in any way related to this License
Agreement, including, without limitation, any claim based on contract, tort,
statute or constitution (collectively, "Agreement Disputes"): or
(b) any breach of any provision of this License Agreement by ITT
Hartford or ITT Hartford Sublicensees, other than a Change of Control as set
forth in Section 5.01 or by Licensor, provided the breach has not been cured
within ninety (90) days after receipt of notice of such breach ("Uncured
Breach").
Section 8.02 ARBITRATION. If after such reasonable period such general
counsel are unable to settle such Agreement Dispute or Uncured Breach (and in
any event after 60 days have elapsed from the time the relevant parties began
such negotiations), such Agreement Dispute or Uncured Breach shall be
determined, at the request of any relevant party, by arbitration conducted in
New York City, before and in accordance with the then-existing Rules for
Commercial Arbitration of the American Arbitration Association (the "Rules"),
and any judgment or award rendered by the arbitrator shall be final, binding and
nonappealable (except upon grounds specified in 9 U.S C. Section 10(a) as in
effect on the date hereof), and judgment may be entered by any state or Federal
court having jurisdiction thereof in accordance with Section 9.14 hereof. Unless
the arbitrator otherwise determines, the pre-trial discovery of the then
existing Federal Rules of Civil Procedure and the then-existing Rules 46 and 47
of the Civil Rules for the United States District Court for the Southern
District of New York shall apply to any arbitration hereunder. Any controversy
concerning whether an Agreement Dispute or an Uncured Breach is an arbitrable
Agreement Dispute, whether arbitration has been waived, whether an assignee of
this License Agreement is bound to arbitrate, or as to the interpretation of
enforceability of this Article shall be determined by the arbitrator. The
arbitrator shall be a retired or former judge of any United States District
Court or Court of Appeals or such other qualified person as the relevant
parties may agree to designate, provided such individual has had substantial
professional experience with regard to settling sophisticated commercial
disputes. The Parties intend that the provisions to arbitrate set forth herein
be valid, enforceable and irrevocable. The designation of a situs or a
governing law for this License Agreement or the arbitration shall not be deemed
an election to preclude application of the Federal Arbitration Act, if it would
be applicable. In his award
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the arbitrator shall allocate, in his discretion, among the Parties to the
arbitration all costs of the arbitration, including, without limitation, the
fees and expenses of the arbitrator and reasonable attorneys' fees, costs and
expert witness expenses of the Parties. The undersigned agree to comply with any
award made in any such arbitration proceedings that has become final in
accordance with the Rules and agree to the entry of a judgment in any
jurisdiction upon any award rendered in such proceedings becoming final under
the Rules. The arbitrator shall be entitled, if appropriate, to award any remedy
in such proceedings, including, without limitation, monetary damages, specific
performance and all other forms of legal and equitable relief; provided,
however, the arbitrator shall not be entitled to award punitive damages.
Section 8.03 INJUNCTIONS. In the event the Arbitrator should find that
ITT Hartford or the ITT Hartford Sublicensees or Licensor have breached this
License Agreement, then the Arbitrator may order specific performance of the
provisions so breached. Should ITT Hartford or the ITT Hartford Sublicensees or
Licensor not so specifically perform, then the Parties recognize that the damage
caused thereby to either party would be irreparable and not adequately
compensable by monetary damages, and that either Party may immediately seek and
be entitled to an injunction by a Federal Court having jurisdiction thereof,
without the requirement of posting a bond or other security.
ARTICLE IX. MISCELLANEOUS
Section 9.01 COMPLETE AGREEMENT: CONSTRUCTION. This License Agreement,
including the Exhibits, together with the Distribution Agreement, and the other
Ancillary Agreements (as defined in the Distribution Agreement) shall constitute
the entire agreement between the Parties with respect to the subject matter
hereof and shall supersede all previous negotiations, commitments and writings
with respect to such subject matter. Notwithstanding any other provisions in
this License Agreement to the contrary, in the event and to the extent that
there shall be a conflict between the provisions of this License Agreement as it
relates to the ITT Name and ITT Marks, and the provisions of the Distribution
Agreement or the IP Agreement, this License Agreement shall control.
SECTION 9.02 COUNTERPARTS. This License Agreement may be executed in
one or more counterparts, all of which shall be considered one and the same
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agreement, and shall become effective when one or more such counterparts have
been signed by each of the Parties and delivered to the other party.
Section 9.03 SURVIVAL OF AGREEMENT. Except as otherwise contemplated by
this License Agreement, all covenants and agreements of the Parties contained in
this License Agreement shall survive the Distribution Date.
Section 9.04 NOTICES. All notices and other communications hereunder
shall be in writing and hand delivered or mailed by registered or certified mail
(return receipt requested) or sent by any means of electronic message
transmission with delivery confirmed (by voice or otherwise) to the Parties at
the following addresses (or at such other addresses for a party as shall be
specified by like notice) and will be deemed given on the date on which such
notice is received:
To Licensor:
ITT Corporation
0000 Xxxxxx xx xxx Xxxxxxxx
Xxx Xxxx, XX 00000
Attn: General Counsel
To ITT Hartford, Inc.:
Xxxxxxxx Xxxxx
Xxxxxxxx, XX 00000
Attn: Senior Vice President and
General Counsel
Section 9.05 WAIVERS. The failure of either Party to require strict
performance by the other Party of any provision in this License Agreement will
not waive or diminish that Party's right to demand strict performance thereafter
of that or any other provision hereof.
SECTION 9.06 AMENDMENTS. This License Agreement may not be modified or
amended except by an agreement in writing signed by the Parties.
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Section 9.07 ASSIGNMENT. This License Agreement shall not be
assignable, in whole or in part, directly or indirectly, by ITT Hartford without
the prior written consent of Licensor, and any attempt to assign any rights or
obligations arising under this License Agreement without such consent shall be
void. This License Agreement may be assigned by Licensor to ITT Destinations or
any other company which hereafter owns the ITT Marks and ITT Name.
Section 9.08 SUCCESSORS AND ASSIGNS. The provisions of this License
Agreement shall be binding upon, inure to the benefit of and be enforceable by
the Parties and their respective successors and permitted assigns.
Section 9.09 TERMINATION. This License Agreement may be terminated at
any time prior to the Distribution by and in the sole discretion of Licensor
without the approval of ITT Hartford or the shareholders of Licensor. In the
event of such termination, no party shall have any liability of any kind to any
other party.
Section 9.10 SUBSIDIARIES. ITT Hartford hereby guarantees the
performance of the ITT Hartford Sublicensees under the terms and conditions of
this License Agreement.
Section 9.11 THIRD PARTY BENEFICIARIES. This License Agreement is
solely for the benefit of the Parties hereto and the ITT Hartford Sublicensees
and should not be deemed to confer upon third parties any remedy, claim,
liability, reimbursement, claim of action or other right in excess of those
existing without reference to this License Agreement.
Section 9.12 TITLE AND HEADINGS. Titles and headings to sections herein
are inserted for the convenience of reference only and are not intended to be a
part of or to affect the meaning or interpretation of this Agreement.
Section 9.13 GOVERNING LAW. This License Agreement shall be governed by
and construed in accordance with the laws of the State of New York applicable to
contracts executed in and to be performed in that State.
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Section 9.14 CONSENT TO JURISDICTION. Without limiting the provisions
of Article VIII hereof each of the Parties irrevocably submits to the
jurisdiction of (a) the Supreme Court of the State of New York, New York County,
and (b) the United States District Court for the Southern District of New York,
for the purposes of any suit, action or other proceeding arising out of this
agreement or any transaction contemplated hereby. Each of the Parties agrees to
commence any action, suit or proceeding relating hereto either in the United
States District Court for the Southern District of New York or if such suit,
action or other proceeding may not be brought in such court for jurisdictional
reasons, in the Supreme Court of the State of New York, New York County. Each of
the Parties further agrees that service of any process, summons, notice or
document by U.S. registered mail to such Party's respective address set forth
above shall be effective service of process for any action, suit or proceeding
in New York with respect to any matters to which it has submitted to
jurisdiction in this Section 9.14. Each of the Parties irrevocably and
unconditionally waives any objection to the laying of venue of any action, suit
or proceeding arising out of this License Agreement or the transactions
contemplated hereby in (i) the Supreme Court of the State of New York, New York
County, or (ii) the United States District Court for the Southern District of
New York, and hereby further irrevocably and unconditionally waives and agrees
not to plead or claim in any such court that any such action, suit or proceeding
brought in any such court has been brought in any inconvenient forum.
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IN WITNESS WHEREOF, the Parties have caused this License Agreement to
be duly executed as of the day and year first above written.
ITT CORPORATION
By /s/ Xxxxxxx x. Xxxx
-------------------------------------------
Name: Xxxxxxx X. Xxxx
Title: Executive Vice President and
General Counsel
ITT HARTFORD GROUP, INC.
By /s/ Xxxxx X. Xxxxxxxxxx
-------------------------------------------
Name: Xxxxx X. Xxxxxxxxxx
Title: Vice President and Assistant Controller
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