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Exhibit 10.2
Portions of this Exhibit were omitted and filed separately with
the Securities and Exchange Commission pursuant to a request for
confidential treatment. Such portions are marked by a series of
asterisks.
Execution Copy
INTELLECTUAL PROPERTY LICENSE
AGREEMENT
PARTIES
This Intellectual Property License
Agreement (this "Agreement") is made and entered into as of
November 30, 2006 by and between General Motors Corporation, a
Delaware corporation, and those of its Vauxhall Motors Ltd., Opel
Eisenach GmbH, Saab Automobile AB, Saturn Corporation and OnStar
Corporation Subsidiaries who choose to join General Motors
Corporation as a party to this Agreement pursuant to execution of
an Opt-in Letter in the form of exhibits attached hereto and
incorporated herein by reference (referred to collectively as
"GM"), and GMAC LLC, a Delaware limited liability company
("Licensee").
RECITALS
A. GM, directly and through
its Subsidiaries, as defined in this Agreement, is a worldwide
manufacturer, distributor, marketer, and seller of motor vehicles
and related goods and services ("GM Products").
B. Licensee is a worldwide
diversified financial services company that directly, and through
its Subsidiaries, provides automotive and non-automotive finance
and lease, insurance, banking, mortgage lending, and other services
to a variety of affiliated and unaffiliated, consumer and
commercial customers.
C. GM and Licensee provide
significant services and resources to each other. The transactions,
relationships, interactions and dealings between GM and Licensee
("Dealings") contribute significantly to the success of GM and
Licensee, generally providing efficiencies and enhanced results for
each of them, including business opportunities and referrals, data
and resource sharing, economies of scale, leveraging staff
expertise, and administrative conveniences. These efficiencies flow
from, among other things, four aspects of their relationship:
(1) the formal ownership structure that existed historically,
resulting in tax, legal, and administrative efficiencies;
(2) propinquity, familiarity, and common corporate culture and
industry experience allowing informal and simplified interactions;
(3) sound business practices, including economies of scale and
leveraging of resources; and (4) their "shared" or "common"
customers (i.e., GM dealers and purchasers of GM motor vehicles).
Combined, these efficiencies result in highly valuable and
significant organizational, operational, business and financial
synergies. Although specific aspects of the Dealings entered into
at arm’s length as described in this Agreement may benefit
one party more than the other from time to time, these synergies
produce net positive effects for GM and Licensee jointly, and for
each company individually to a commensurate degree.
D. GM and Licensee have
undertaken to formally document certain of the Dealings related to
the material services provided by GM and its Subsidiaries to
Licensee and its Subsidiaries and vice versa in several services
agreements entered into concurrently herewith, including a
Marketing Services Agreement, Dealer Financing Service Agreement,
Consumer Financing Services Agreements, Remarketing Service
Agreement, the European Cooperation Agreement and the Information
Technology Agreement (each between GM and Licensee) and an
Insurance Services Agreement (between GM and Licensee’s GMAC
Insurance Holdings, Inc. subsidiary) and a Licensing and
Co-operation Agreement dated 28 February 2002 (among GM Holden
Ltd. Interleasing (Australia) Ltd and TVPR Pty Limited)
(collectively "Services Agreements").
E. GM and Licensee desire to
grant to the other licenses and rights with respect to its
trademarks and other intellectual property, subject to the terms
and conditions provided in this Agreement.
AGREEMENT
In consideration of the promises
and the mutual covenants and agreements and the representations and
warranties contained in this Agreement, and for other good and
valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, GM and Licensee agree as follows:
ARTICLE I
DEFINITIONS
The words in this Agreement have
the meanings usually and customarily ascribed to them in commercial
contracts, except that words that are capitalized have the
respective meanings ascribed to such words below or elsewhere in
this Agreement.
"Affiliate" has the meaning set
forth in Rule 12b-2 of the regulations promulgated under the
Securities Exchange Act of 1934, as amended.
"Change in Control" means
(i) Licensee beneficially owning (as defined in
Rules 13d-3 and 13d-5 under the Securities Exchange Act of
1934, as amended), directly or indirectly, less than 20% of the
total ordinary voting power of the capital stock of the Transferred
Entity; or (ii) occupation of a majority of the seats on the board
of directors of the Transferred Entity by individuals for whom
neither Licensee nor its Subsidiaries voted in favor at the
election of such directors or approved in writing before or at the
time of their appointment by the board of directors.
"Consumer Financing Services
Agreements" means the United States Consumer Financing Services
Agreement, the International Consumer Financing Services Agreement,
Nuvell Consumer Financing Services Agreement, and the Canada
Consumer Financing Services Agreement between GM and Licensee.
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"GM Trademarks" means trademarks
and service marks owned by GM and licensed to Licensee under this
Agreement as listed in Exhibit 1, attached hereto and
incorporated herein by reference.
"Losses" means any and all claims,
demands, causes of action, proceedings, losses, damages, expenses,
liabilities (including strict liability), fines, penalties,
deficiencies, judgments or costs, including reasonable
accountants’ and attorneys’ fees, court costs, amounts
paid in settlement, and costs and expenses of investigations.
"Nameplate Trademarks" means those
GM Trademarks specifically identified in Exhibit I as the
Nameplate Trademarks and in Opt-in Letters only upon execution by
certain Subsidiaries of GM.
"Governmental Authority" means any
international, supranational, national, federal, territorial,
state, provincial, or local court, government, department
commission, board, bureau, agency, official, or other regulatory,
administrative or governmental authority.
"Person" means any individual,
corporation, partnership, joint venture, limited liability company,
limited liability partnership, association, joint stock company,
trust, unincorporated organization, or other organization, whether
or not a legal entity, and any Governmental Authority.
"Subsidiary" means, with respect
to any Person, any other Person of which a majority of the voting
interests is owned, directly or indirectly, by such Person, except
that in the case of GM, Subsidiary excludes Licensee and its
Subsidiaries.
"Including", "includes" and
derivatives thereof means including or includes, as the case may
be, without limitation.
ARTICLE II
FRAMEWORK
Section 2.1 Compliance . GM and Licensee will
comply, in all material respects, with all applicable laws and
legal requirements in connection with their use of the trademarks
and other intellectual property of the other party as contemplated
by this Agreement.
Section 2.2 Cooperation . GM and Licensee will
reasonably cooperate with and assist each other in carrying out the
other’s obligations under this Agreement and will execute and
deliver all documents and instruments necessary and appropriate to
do so.
ARTICLE III
LICENSE OF INTELLECTUAL PROPERTY
Section 3.1 License to GM Trademarks .
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(a) License to Nameplate
Trademarks . GM grants Licensee a non-exclusive,
non-transferable, royalty-free and worldwide license to use and
display the Nameplate Trademarks for the sole purpose of
performing, marketing, advertising, and promoting: (i) the
services contemplated by the Services Agreements;
(ii) financial services provided in Mexico through
Licensee’s Mexican subsidiary, Masterlease S.A. de C.V., to
purchasers of GM products. Licensee is prohibited from using the
Nameplate Trademarks in connection with any trade name or business
name.
(b) License to GM
PROTECTION PLAN and GM MOTOR CLUB . GM grants Licensee an
exclusive, non-transferable and royalty-bearing license to use and
display the "GM PROTECTION PLAN", "GENERAL MOTORS PROTECTION PLAN"
and "GM MOTOR CLUB" names and logos solely in the
United States and solely in connection with the operation,
marketing, advertising, and promoting of Licensee’s GM
Protection Plan and GM Motor Club businesses. Subject to
Article VI of this Agreement, GM will exercise due care in its
protection of the GM PROTECTION PLAN, GENERAL MOTORS PROTECTION
PLAN and GM MOTOR CLUB names and logos to protect Licensee’s
use of such names and logos exclusive of infringing uses by third
parties.
(c) License to GMAC Name
and Logo . GM grants Licensee a non-transferable, exclusive
(including with respect to GM), royalty-free and worldwide license
to use and display the GMAC name and logo in connection with the
operation, marketing, advertising, and promoting (including use of
the GMAC name and logo to manufacture, have manufactured,
distribute and sell consumer merchandise such as apparel, cups, key
chains or other similar novelty items) of its current automotive
and non-automotive finance, lease, insurance, banking, mortgage,
and lending businesses ("Business"). Licensee may use the GMAC name
and logo for existing lines of business (including financing of
dealerships which sell, begin selling, or expand their sale of
products of third party motor vehicle manufacturers and for
customers of such dealerships) and those expressly set forth in
Exhibit 6, attached hereto and incorporated herein by
reference. Licensee may request a license to use the GMAC name and
logo in connection with any new financial services business or in
connection with providing services to third party motor vehicle
manufacturers. GM will determine, in its sole discretion, whether
to grant any such additional licenses and whether any such grant
will be royalty bearing. Licensee agrees to notify GM of its
intention to begin use of the GMAC name and logo in a new country
prior to use to allow GM adequate time to determine the
availability of the GMAC name and logo for use in such country and,
if necessary or upon Licensee’s request, file corresponding
trademark applications to protect Licensee’s intended use. GM
agrees that if it declines to file, prosecute, maintain, obtain or
renew an application or registration for the GMAC name and logo for
use in connection with the Business or, if requested by Licensee, a
new business, Licensee has the right, at its cost and upon notice
to GM, to file, prosecute, maintain, obtain, or renew such
trademark application or registration in GM’s name.
Notwithstanding anything to the contrary contained in this
Agreement, GM will not be prohibited from using or displaying the
GMAC name and logo in connection with GM’s marketing,
advertising and promotional activities to reference the services
being performed by the Licensee under the Service Agreements.
(d) License to Licensee
Trademarks . Licensee hereby grants GM a non-transferable,
non-exclusive, royalty-free and worldwide license to use and
display the trademarks of Licensee, such as SmartLease and
SmartBuy, in connection with GM’s marketing, advertising
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and promotional activities to reference the services being
performed by the Licensee under the Service Agreements. GM’s
use of the Licensee’s trademarks will be limited to only
those of Licensee’s trademarks that are being used by
Licensee in connection with the applicable Service Agreement and GM
will be prohibited from using the Licensee’s trademarks in
connection with any trade name or business name.
Section 3.2 License to "GENERAL MOTORS" and "GM" .
Subject to Sections 3.1(b) and 3.1(c) of this Agreement, GM
grants to Licensee a non-exclusive, non-transferable, royalty-free
and worldwide license to use the "GENERAL MOTORS" and "GM" names as
part of its trade names or business names, currently "General
Motors Acceptance Corporation" and similar names in other
jurisdictions (e.g., GM Acceptance Ltda. in Argentina). Any
proposed changes or additions to current trade names or business
names incorporating the GENERAL MOTORS or GM names must be approved
by GM prior to use, which approval will not be unreasonably
withheld or delayed. The license provided for in this
Section 3.2 terminates fifteen (15) months from the
effective date of this Agreement, except with respect to
Licensee’s use of "GENERAL MOTORS" as part of "GENERAL MOTORS
ACCEPTANCE CORPORATION" in the United States and Canada. Reasonable
extensions of this termination date will be granted by GM in the
event of delays imposed by local regulatory authorities. GM agrees
that it will not license use of the GENERAL MOTORS or GM name to
any party, other than Licensee, during the term of this Agreement
for use in connection with any trade name or business name that is
identical, or confusingly similar, to "General Motors Acceptance
Corporation", "GM Acceptance Corporation" or "GMAC".
Section 3.3 Manner of Use . The parties will use and
display the trademarks of the other party only in the form, color,
dimension, and manner approved by the party owner (including use in
connection with internet domain names), and in accordance with any
written trademark guidelines provided thereby. GM acknowledges that
Licensee may, in connection with a particular promotion or event,
have a need to make non-permanent, minor changes to the appearance
of the GMAC name or logo, such as changes to font type or coloring.
GM will not object to such changes and no prior approval of GM is
required. Upon a party’s written request, the other party
will furnish samples of proposed advertising, brochures, marketing
and promotional materials, and other documentation in connection
with its use of the requesting party’s trademarks. Except
with respect to the GMAC name and logo, the parties will, and will
ensure that their Subsidiaries make any changes to its use of the
other party’s trademarks, as reasonably requested by the
party owner, including, but not limited to, changing the use of one
or more of the trademarks within a commercially reasonable time.
Licensee further agrees and will ensure that it and its
Subsidiaries will not use any GM Trademarks, other than the GMAC
name and logo, in advertising or promotional activities with third
party motor vehicle manufacturers. If GM requests that Licensee
make changes to the appearance of the GMAC name or logo from its
appearance as exists as of the date of this Agreement, Licensee and
GM will work together to arrive at a good faith estimate of the
costs Licensee will reasonably incur in connection with its
implementation of the requested change. If, after arriving at a
mutually-agreeable good faith estimate, GM requires Licensee to
proceed with such changes, GM agrees to reimburse Licensee for the
costs it incurs in connection with making the required changes, not
to exceed the mutually-agreed upon good faith estimate. The parties
also agree, and will ensure that their respective sublicensees,
stop using any trademarks of the other party in any advertising or
promotional activity if the other party objects on the basis that
such advertising or promotional
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activity would be unethical, in poor taste, misleading,
deceptive, or in its sole discretion, would reflect unfavorably on
them.
Section 3.4 Notice of Ownership . Unless otherwise
agreed to by the parties on a case-by-case basis, the parties,
consistent with historical and current practice in connection with
their own trademarks, will use the following notice somewhere in
its advertising, brochures, nationally distributed marketing and
promotional materials, and other similar advertising and marketing
material (but not including business cards, letterhead, memo pads,
envelopes, and other stationary items; e-mail notices; press
releases, rate sheets, and local dealer communications; and other
similar non-advertising and non-marketing material) in a
conspicuous location in connection with its use of the other
party’s trademarks.
"["Trademarks"] are trademarks of
[the other party], used under license by [party]."
When displaying the GMAC
trademark, the following is allowed instead of the foregoing
notice:
"GMAC is a registered
trademark."
The parties acknowledge and agree
that the notice requirement of this Section 3.4 does not apply
to any materials printed prior to the date of this Agreement, even
if such printed materials are distributed after the date of this
Agreement; provided, however, that to the extent that reprintings
of such materials are made after the date of this Agreement, the
aforementioned notice will be included therein.
Section 3.5 Other Intellectual Property Rights .
(a) GM Grant . GM
grants Licensee a non-transferable, non-exclusive, royalty-free and
worldwide license under all GM patents (including the right to
make, have made, use, have used, offer for sale, and sell),
copyrights (including the right to reproduce, prepare derivative
works, distribute and publicly display or perform), trade secrets
and other forms of intellectual property, excluding trademark
rights, currently used by Licensee in the conduct of the Business
or as necessary for performing, marketing, advertising and
promoting the services contemplated under by the Service
Agreements. The license grant of this Section 3.5(a) is
limited to use by Licensee in the conduct of its Business and,
other than as expressly set forth in Section 3.7 hereunder,
Licensee is expressly prohibited from granting any sublicense to
Licensee’s parent or it’s parent’s
affiliates.
(b) Licensee Grant .
Licensee grants GM a non-transferable, non-exclusive, royalty-free,
and worldwide license under all Licensee patents (including the
right to make, have made, use, have used, offer for sale, and
sell), copyrights (including the right to reproduce, create
derivative works, distribute and publicly display or perform),
trade secrets and other forms of intellectual property, excluding
trademark rights, currently used by GM in the conduct of its
business or as necessary in connection with GM’s marketing,
advertising and promoting the services being performed by the
Licensee under the Service Agreements. The license grant of this
Section 3.5(b) is limited to use by GM in the conduct of its
business and, other than as
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expressly set forth in Section 3.7 hereunder, GM is
expressly prohibited from granting any sublicense to GM’s
affiliates.
Section 3.6 Consumer Merchandise . Unless otherwise
agreed and except with respect to the use of the GMAC name and logo
by Licensee, neither party is granted any right or license under
this Agreement to sell, or otherwise distribute for sale
(collectively, to merchandise), any merchandise, novelty items, or
other goods bearing the trademarks or other intellectual property
of the other party, without the express written consent of the
owner of the respective trademark or other intellectual property.
If either party requests to use the other party’s trademarks
or other intellectual property for merchandising, the parties will
discuss such request in good faith, including fees associated with
such use of the trademarks and other intellectual property, if any.
The parties will document any agreement resulting from such
discussions.
Section 3.7 Sublicense . Absent approval by the
trademark or other intellectual property owner, sublicensing of the
trademarks or other intellectual property of the owner is
prohibited except as follows:
(a) Subsidiaries . A
party may sublicense and allow its Subsidiaries to use the other
party’s trademarks and other intellectual property subject to
the terms of this Agreement;
(b) Capmark Financial
Group Inc . Licensee may sublicense the GMAC name and/or logo
to Capmark Financial Group Inc. but only to the extent of the
Trademark License Agreement between Licensee and Capmark Financial
Group dated March 23, 2006.
(c) Existing third party
arrangements. Licensee and its Subsidiaries may continue,
renew, amend, or replace any license or sublicense of the GMAC name
and/or logo to third parties under licensing sublicensing
arrangements existing as of the date hereof. In the event of any
inconsistency between this Agreement and any such arrangements, the
terms of this Agreement govern.
(d) Future third party
arrangements : Licensee acknowledges that it has sought to
identify on Exhibit 8 the categories of activities for which,
and categories of Persons to which, Licensee and its Subsidiaries
currently license and sublicense, and have historically licensed
and sublicensed, the GMAC name and logo ("Approved Categories").
Licensee may grant to third parties sublicenses of the GMAC name
and logo not in existence as of the date hereof provided that they
fall within the Approved Categories.
If there are one or more
categories of activities or entities for which Licensee or its
Subsidiaries have historically licensed or sublicensed the GMAC
name and/or logo to third parties as of the date hereof, but which
are not listed in Exhibit 8, Licensee will promptly upon
discovery send a revised Exhibit 8 to GM that includes such
missing category, and upon delivery of the revised Exhibit 8
to GM, such category will be deemed one of the "Approved
Categories" for which sublicensing is permitted hereunder.
If one of the exceptions above
does not apply, and Licensee seeks GM’s consent to sublicense
the GMAC name and/or logo, GM will respond to such request within a
reasonable amount of time. GM will advise Licensee as to the
individuals or business functions that would
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be involved in responding to the request and a reasonable
estimate of the amount of time that GM will take to respond to the
request. Any such sublicense will be subject to the terms
hereof.
If requested by the trademark or
other intellectual property owner for the purpose of fulfilling a
registration or re
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