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.
INTELLECTUAL PROPERTY LICENSE
AGREEMENT
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”).
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.
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:
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.
2
“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.
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.
LICENSE OF INTELLECTUAL
PROPERTY
Section 3.1 License to GM Trademarks
.
3
(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
4
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
5
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
6
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
7
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
su
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