TRADEMARK AND COPYRIGHT
LICENSE AGREEMENT
THIS TRADEMARK AND
COPYRIGHT LICENSE AGREEMENT (this “ Agreement ”)
is made effective as of December 21, 2005 (the “
Effective Date ”) by and between Clear Channel
Identity, L.P., a Delaware limited partnership (“
Licensor ”), and CCE Spinco, Inc., a Delaware
corporation (“ Licensee ”).
WHEREAS, Licensee
is a wholly owned subsidiary of Licensor and, as such, has been
using certain of Licensor’s intellectually property pursuant
to a license in connection with the production and promotion of
live entertainment (the “ Business
”);
WHEREAS, Licensee
will cease to be a wholly owned subsidiary of Licensor pursuant to
a separate agreement between the parties entitled Master Separation
and Distribution Agreement;
WHEREAS, Licensor
is the owner of the trademark CLEAR CHANNEL and variations thereof,
other marks incorporating the term CLEAR CHANNEL and variations
thereof, the mark CC and variations thereof, and the C Logo shown
on Exhibit A and variations thereof, and other marks
used in connection with the Business that would indicate an
affiliation with Licensor when used, and trade dress and other
indicia of origin associated with such trademarks (collectively,
the “ Marks ”) and is the owner of trademark
registrations and applications for the Marks;
WHEREAS, Licensor
is the owner of the copyrights in packaging, labels, signage,
marketing, advertising and promotional materials that bear or
display the Marks (collectively, the “ Copyrights
”);
WHEREAS, Licensor
owns certain Internet domain name registrations that incorporate
the Marks, including, without limitation, those set forth on
Exhibit B (collectively, the “ Domains
”);
WHEREAS, although
certain of the Marks, certain of the Domains and certain of the
Copyrights are assets currently used in the Business, Licensee does
not own and is not acquiring from Licensor any rights in the Marks,
the Domains or the Copyrights;
WHEREAS, the
parties, by this Agreement, desire to establish Licensee’s
right to continue to use certain of the Marks and certain of the
Copyrights in the Licensed Territory (as defined below) for the
Business, during a transitional period, under the terms and
conditions set forth in this Agreement.
NOW, THEREFORE, in
consideration of the foregoing premises and the mutual covenants
and agreements contained herein, the parties hereto agree as
follows:
The following
terms shall have the following meanings as used herein:
(a) “
Affiliate ” means, with respect to a specified person
or entity, any other person or entity or member of a group of
persons or entities acting together that, directly or indirectly,
through one or more intermediaries, controls, or is controlled by
or is under common control with, the specified person or
entity.
(b) “
Distribution Date ” shall mean that certain day
defined as such under the Master Separation and Distribution
Agreement between the parties, dated December 20,
2005.
(c) “
Domain Names ” shall mean the domain name
registrations that incorporate the Marks, including, but not
limited to, those set forth in Exhibit B , as may be
amended from time to time, used in connection with the
Business.
(d) “
Licensed Copyrighted Works ” shall mean all packaging,
labels, signage, marketing, advertising and promotional materials
bearing or displaying the Licensed Marks including website
materials that are used by Licensee for the Business in the
Licensed Territory as of the Effective Date, in only the specific
form or medium in which they are embodied as of the Effective Date,
or in such other form as may be approved by Licensor as provided in
Section 2 , to the extent that Licensor or one of its
Affiliates owns each such work.
(e) “
Licensed Marks ” shall mean the Marks as and in the
form in which they are used by Licensee on or in connection with
the Business in the Licensed Territory as of the Effective
Date.
(f) “
Licensed Territory ” shall mean the world.
(g) “
Term ” shall mean the period beginning on the
Effective Date and ending on the first to occur of (i) the one
year anniversary of the Distribution Date and (ii) the
termination of this Agreement pursuant to Section 11.2
.
(h) “
Trademark Rights ” shall mean, collectively, all
foreign, federal, state, and common law rights in and to the
Licensed Marks.
2. GRANT OF
LICENSES; RESERVATION OF RIGHTS .
2.1
Trademark License . Upon the terms and conditions set forth
in this Agreement, Licensor grants to Licensee a revocable,
non-exclusive, non-transferable license to utilize the Licensed
Marks solely upon and in connection with the Business in the
Licensed Territory during the Term (the “ Trademark
License ”).
2.2
Royalty Fee. Licensee shall pay Licensor for the use of the
Licensed Marks pursuant to the amount set forth on
Exhibit C , attached hereto. The amount owed by
Licensee shall accrue throughout the Term and shall be paid
quarterly as follows: Within thirty (30) days
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after the end
of each of the Licensor’s and Licensee’s fiscal
quarters, Licensee shall pay to Licensor the total amount owed by
Licensee to Licensor for the use of the Licensed Marks under this
Agreement during such fiscal quarter.
2.3
Limitations on Trademark License . The Trademark License is
limited to the Business, provided that the products and services
provided in connection with the Business are at least of a quality
that is substantially the same as or is higher than the quality of
those currently provided or sold by Licensee as of the Effective
Date. NO LICENSE IS GRANTED HEREUNDER FOR ANY USE OTHER THAN THAT
SPECIFIED, AND NO LICENSE IS GRANTED HEREUNDER FOR ANY COMBINATION
OF THE LICENSED MARKS WITH OTHER PRODUCTS, SERVICES OR MARKS
WITHOUT PRIOR WRITTEN CONSENT OF LICENSOR WHICH SHALL NOT BE
UNREASONABLY WITHHELD OR DELAYED.
(a) Licensee
may use other marks, including marks owned by third parties, for
the Business, in addition to the Licensed Marks, provided Licensee
has obtained the necessary rights from the third party, if any. In
no event shall the other mark be used in such a manner that, in
Licensor’s reasonable business judgment, a composite mark is
created that includes any of the Licensed Marks and,
notwithstanding anything to the contrary in this Agreement,
Licensor may reject any proposed use that bears such a composite
mark.
(b) It
is hereby recognized that Licensee may wish to transition to a new
mark or an existing mark owned by Licensee during the course of
this Agreement and phase out the use of the Licensed Marks
gradually during the Term. In connection with such transition,
Licensee may wish to utilize such new or existing mark in
connection with the Business in addition to the Licensed Marks. In
the event Licensee desires to utilize both the Licensed Marks and a
new mark simultaneously during the transition, Licensee shall
provide at least thirty (30) calendar days prior written notice to
Licensor of such proposed transition, along with a rendering of the
proposed transitional usage. Licensor shall have a period of thirty
(30) calendar days following receipt of such notice and rendition
in which to give or withhold its approval of such transitional
usage and Licensor shall be deemed to not have approved such
transitional usage if Licensor does not deliver to Licensee its
written approval thereof within such thirty (30) calendar day
period. Licensor shall not unreasonably withhold or delay its
approval, but such approval shall not be deemed to be unreasonable
if (i) the proposed usage of the Licensed Marks with such
transitional mark creates, in Licensor’s reasonable business
judgment, a composite mark that includes any of the Licensed Marks,
(ii) if the new mark proposed to be used by Licensee in
addition to the Licensed Marks is confusingly similar to the
Licensed Marks, or (iii) if the proposed usage is derogatory
or coveys a negative connotation with respect to Licensor or the
Licensed Marks.
2.4
Copyright License . Upon the terms and conditions set forth
in this Agreement, including, without limitation, those set forth
in this Section 2.4 , Licensor, on behalf of itself and
its Affiliates, grants to Licensee a revocable, nonexclusive,
royalty-free, transferable to the extent provided in
Section 9.1, license to use, reproduce, distribute
copies of, make derivative works of, publish, distribute, display,
broadcast and/or transmit the Licensed Copyrighted Works in the
Licensed Territory, through only the media utilized by Licensor as
of the Effective Date,
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for the limited
purpose of enabling Licensee to exercise its rights under the
Trademark License (the “ Copyright License ”).
By way of example, without limitation, in the case of a print
advertisement appearing in a particular magazine as of the
Effective Date, the Copyright License shall permit Licensee to
utilize the advertisement in the same magazine. Notwithstanding the
foregoing, Licensee shall have the right during the Term to modify
or create derivative works of the Licensed Copyright Works and to
use new media for the publication, distribution, display, broadcast
and/or transmission of same, subject to the prior written approval
of Licensor, which approval shall not be unreasonably withheld or
delayed. In the event Licensee desires to modify, create derivative
works of or utilize new media for the publication, distribution,
display, broadcast and/or transmission of the Licensed Copyrighted
Works in connection with the exercise of its rights under the
Trademark License, Licensee shall provide Licensor at least sixty
(60) calendar days prior written notice, which notice shall include
reasonably sufficient details concerning Licensee’s plans,
including copies or drafts of the modified or derivative works, and
a list and description of the use thereof, including the media
through which such works will be published, distributed, displayed,
broadcast and/or transmitted. Licensor shall have until the end of
such sixty (60) calendar day period in which to give or
withhold its written approval for all or a portion of the matters
contained in Licensee’s notice; provided, that Licensor shall
be deemed not to have approved any matter contained in
Licensee’s notice if Licensor does not deliver to Licensee
its written approval thereof within such sixty (60) calendar
day period.
(a) Licensee
shall cooperate with Licensor in connection with Licensor’s
review of the matters contained in Licensee’s notice,
including by providing any additional information or materials that
may be requested by Licensor.
(b) Upon
Licensor’s written approval of any modified or derivative
works for use for the Licensed Products such modified or derivative
works shall be deemed to be “ Licensed Copyrighted
Works .” In addition, upon approval (or deemed approval)
by Licensor any resulting trade dress or trademarks shall be deemed
to be “ Licensed Marks .” If Licensor does not
approve in writing any modified or derivative works, or the media
through which such works or any other Licensed Copyrighted Works
are to be disseminated, then Licensee shall be prohibited from
employing same under the terms of this Agreement, including under
the Trademark License or the Copyright License. It is hereby
expressly understood, however, that the primary purpose of this
Agreement is to enable Licensee to transition to a new mark and
trade dress for use in the Business. Accordingly, the failure of
Licensor to approve modified or derivative works shall not be
deemed unreasonable if Licensor, in its sole discretion, considers
the proposed works to be a material alteration of the Licensed
Marks or Licensed Copyrighted Works as of the Effective
Date.
(c) Any
modified or derivative works not approved by Licensor hereunder and
from which the Licensed Marks are not removed or obliterated shall
be promptly destroyed by Licensor, Licensee and, if applicable, by
any Permitted Third Party Provider (as defined in
Section 2.10 ).
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2.5
Rights of and Obligations to Third Parties . Notwithstanding
any other provisions of this Agreement to the contrary, nothing in
this Agreement shall be deemed to be a grant by Licensor of a
license, sublicense, or other grant of a right to Licensee to use
any copyrights of a third party or any rights under any third-party
license that cannot be licensed, sublicensed or granted without the
consent, approval or agreement of another party, unless such
consent, approval or agreement is first obtained.
2.6
Reservation of Rights . Notwithstanding anything herein to
the contrary, Licensor may utilize (and may license another party
to utilize) the Licensed Marks in connection with any business in
the Licensed Territory. Further, this Agreement does not restrict
or limit Licensor’s rights to utilize or license the Licensed
Marks in any manner. Notwithstanding anything contained herein to
the contrary, Licensor shall have the unrestricted right to utilize
(and to license another party to utilize) its copyrights in the
Licensed Copyrighted Works.
2.7
Term . Subject to the survival provisions of
Section 11.4 , the term of this Agreement and the
Trademark License and Copyright License granted hereunder shall
begin on the Effective Date and shall expire at the end of the
Term. This Agreement will not be renewed or extended, absent the
execution of a separate document explicitly expressing such,
executed by both Licensor and Licensee.
2.8
Domain Names . Licensee acknowledges that Licensor owns the
Domain Names. For the Term, Licensor agrees to maintain the Domain
Names and redirect the certain domain names listed in
Exhibit B , as may be amended from time to time by
mutual agreement of the Parties, to a new website included in the
New Works (as defined in Section 3.5 ) that Licensee
may create pursuant to this Agreement at a url that Licensee will
register and maintain. Licensee shall be responsible for hosting
and maintaining the website, whether the website is part of the
Licensed Copyrighted Works or New Works. Licensor shall not be
required to maintain registrations of the Domain Names after
expiration or termination of this Agreement, though it may, at its
own discretion, do so.
2.9
Corporate Name . Notwithstanding the foregoing license
grants, within ninety (90) days of the Distribution Date, Licensee
shall and shall cause any of its subsidiaries or Affiliates, if
necessary, to change, at its own expense, its corporate name to
delete therefrom any Licensed Marks or any words or phrases
confusingly similar to the Licensed Marks that may be incorporated
therein.
2.10
Permitted Third Party Providers . The parties acknowledge
that Licensee may wish to engage a third party manufacturer/service
provider in connection with Licensee’s exercise of its rights
under the Trademark License and the Copyright License. Licensee
shall give written notice to Licensor of any proposed third party
manufacturer/provider arrangement not less than ninety (90)
calendar days prior to Licensee’s engaging any third party
manufacturer/provider (the “ Notice Period ”),
which notice shall contain the name of any proposed third party
provider and a summary of the terms of Licensee’s proposed
arrangement with same. During the Notice Period, Licensor shall
have sole discretion as to whether to initially approve any
proposed third party manufacturer/provider; provided, that such
approval shall not be unreasonably withheld or delayed. Licensor
shall advise Licensee whether it initially approves the proposed
third party manufacturer/provider as soon as practicable during the
Notice
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Period. For
purposes of this Agreement, any third party manufacturer/provider
that is approved by Licensor shall be a “ Permitted Third
Party Provider .”
3. DEVELOPMENT
OF NEW TRADEMARK RIGHTS AND NEW COPYRIGHTS .
3.1
Development of New Trademark Rights . Except as expressly
provided in this Agreement, Licensee shall not develop or acquire
new Trademark Rights associated with the Business or otherwise.
Except as expressly permitted under Section 2 or as may
be in use as of the Effective Date, Licensee is not itself
permitted to develop or use any derivative variations of any of the
Licensed Marks or to develop or use any variations, forms or
stylizations of the Licensed Marks. Trademark Rights that Licensee
shall not develop or acquire include, but are not be limited to,
any federal, state, or foreign trademark registrations or
applications, trademarks, trade dress, trade names, service marks,
symbols, slogans, emblems, logos, designs and other indicia of
origin or domain names incorporating the Licensed Marks. The
parties acknowledge and agree that any and all new Trademark Rights
shall be considered included within the definition of “
Trademark Rights ” for purposes of this entire
Agreement. Notwithstanding the foregoing, any new trademarks that
are not derivations of, variations upon, or confusingly similar to,
the Licensed Marks that are developed by Licensee shall be the sole
property of Licensee.
3.2
Objection to New Trademark Rights . In the event that
Licensee inadvertently or intentionally develops or acquires new
Trademark Rights, Licensee shall give prompt written notice to
Licensor of same. As soon as practicable after Licensor becomes
aware of any new Trademark Right inadvertently or intentionally
developed or acquired by Licensee, Licensor shall have the right to
object to the new Trademark Right which it deems, in its sole
discretion: (a) to be incompatible or inconsistent with any
other Trademark Rights, or with the image of the Licensed Marks;
(b) to be in violation of any law; or (c) to be otherwise
inappropriate or offensive. Upon Licensor’s objection to a
new Trademark Right, Licensee shall: (a) promptly modify the
new Trademark Right to obviate Licensor’s objections,
(b) promptly cease usage of the new Trademark Right, and/or
(c) withdraw or cancel (as appropriate) any pending trademark
application or issued trademark registration pertaining to the new
Trademark Right.
3.3
Requirement for Assignment of New Trademark Rights . The
parties agree that Licensor shall be deemed the owner of any rights
Licensee may have in a new Trademark Right (excluding any new
trademarks that are not derivations of, variations on, or
confusingly similar to, the Licensed Marks. Upon request, Licensee
shall promptly provide a confirmatory assignment of any new
Trademark Right to Licensor. Licensor has the right to refuse to
license the new Trademark Right to the Licensee for the remainder
of the Term. Licensor shall have the right to use, and to license
others to use, any new Trademark Right after the termination of
this Agreement. The decision whether to seek or maintain any
federal, foreign, or state registration for any new Trademark Right
or any of the Licensed Marks shall be made in the sole discretion
of Licensor. Licensee shall fully cooperate with Licensor,
including executing any documents and providing any materials that
Licensor shall request, to obtain or maintain any such
registration. To the extent the Licensed Marks or new Trademark
Rights are not the subject of federal or foreign registrations as
of the Effective Date, Licensee shall bear the cost of obtaining or
maintaining same if Licensor decides to seek
registration.
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3.4
Modifications to or Derivative Works of the Licensed Copyrighted
Works . Except as expressly permitted under this Agreement,
Licensee shall not itself develop or use any modified or derivative
works of the Licensed Copyrighted Works. Notwithstanding any
provision of law that may initially vest ownership of copyrights in
modifications or derivative works of the Licensed Copyrighted Works
in Licensee or a third party that Licensee may engage in connection
therewith, Licensor and Licensee hereby expressly agree that
Licensor shall be considered the author and owner of the copyrights
in the Licensed Copyrighted Works, including any derivative works
or modifications of the original Licensed Copyrighted Works,
whether or not any such modified or derivative works are approved
by Licensor for use in connection with the Licensed Marks and the
Business. To the extent permitted by law, the creation of any
modifications or derivative works of the Licensed Copyrighted Works
shall be deemed “works made for hire” for Licensor.
Licensee shall execute any documents, including assignments,
Licensor may determine it requires to vest ownership of the
Licensed Copyrighted Works, including any modifications or
derivative works of the original Licensed Copyrighted Works, in
Licensee. Licensee shall have sole discretion as to whether to seek
registration of the Licensed Copyrighted Works, but in no event
shall Licensee apply for copyright registration of any of such
works in its own name. Licensee shall execute written agreements,
in a form acceptable to Licensor, with any independent contractor
Licensee engages in connection with the creation of modifications
or derivative works of the Licensed Copyrighted Works to ensure
that such independent contractor is bound by this Section
3.4 and Section 3.7 to the same extent as Licensor.
Notwithstanding the foregoing, Licensee does not assign to
Licensor, and Licensee expressly retains the copyrights in all
original content added by Licensee (including any new trademarks of
Licensee that are not derivations of, variations upon, or
confusingly similar to, the Licensed Marks) that is incorporated in
such modifications or derivative works of the Licensed Copyrighted
Works, to the extent such content does not bear or display any
Licensed Marks.
3.5
Creation of New Works . Subject to the terms and conditions
of this Agreement, including those set forth in this
Section 3.5 , Licensee may create new works in the
nature of signage, marketing, advertising or promotional materials,
including websites that display the Licensed Marks (the “
New Works ”). At least sixty (60) calendar days
prior to the utilization of any of the New Works in connection with
Licensee’s exercise of its rights under the Trademark
License, Licensee shall provide a specimen of the New Work to
Licensor and specifics as to the proposed medium or media for the
publication, distribution, display, broadcast and/or transmission
of same. Upon Licensor’s written approval, which shall not be
unreasonably withheld or delayed, Licensee may utilize the approved
New Work in the approved media to the extent permitted under the
Trademark License. Should Licensee desire to utilize a new medium
for the publication, distribution, display, broadcast or
transmission of a New Work previously approved, Licensee shall give
Licensor at least thirty (30) calendar days prior written
notice as to the specifics of the pr
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