Exhibit 10.3
INTELLECTUAL PROPERTY LICENSE
AGREEMENT
THIS INTELLECTUAL PROPERTY
LICENSE AGREEMENT (this “ Agreement ”) is
entered into, as of February 22, 2008 (the “
Effective Date ”), by and between Boise Cascade,
L.L.C., a Delaware limited liability company (on behalf of itself
and its Subsidiaries) (“ Licensor ”), and Boise
Paper Holdings, L.L.C., a Delaware limited liability company (on
behalf of itself and its Subsidiaries) (“ Licensee
”). Licensor and Licensee may be referred to herein
individually as a “ Party ,” and collectively as
the “ Parties ,” to this Agreement.
WHEREAS , Licensor and Licensee are parties
to that certain Purchase and Sale Agreement, dated as of
September 7, 2007 (as amended, modified and/or supplemented
from time to time the “ Purchase Agreement ”),
by and among, Licensor, Licensee and the other entities party
thereto, pursuant to which Licensor agreed to sell the Target Units
to Licensee’s parent company, Aldabra 2 Acquisition Corp. (to
be renamed “Boise Inc.”), a Delaware
corporation.
WHEREAS,
Licensee desires to obtain
from Licensor, and Licensor desires to grant to Licensee, a license
under the terms and conditions set forth herein to use certain
intellectual property of Licensor; and
WHEREAS , it is a condition to the
consummation of the transactions contemplated by the Purchase
Agreement that Licensor and Licensee execute and deliver this
Agreement.
NOW, THEREFORE,
in consideration of the
mutual promises and covenants herein contained and for other good
and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, the Parties hereto agree as
follows.
1.
DEFINITIONS.
The
following terms, when used in this Agreement with initial capital
letters, shall have the respective meanings set forth in this
Article 1 .. Capitalized terms used, but not
otherwise defined, herein shall have the respective meanings
ascribed to such terms in the Purchase Agreement.
1.1
“ Boise Name
Mark ” means the Mark set forth on
Exhibit A-1 .
1.2
“ Boise Marks
” means, collectively, (i) the Boise Name Mark, and
(ii) the Orange Dot Mark.
1.3
“ Effective
Date ” has the meaning set forth in the Preamble to this
Agreement.
1.4
“ Field of
Use ” means the white paper, packaging and newsprint, and
transportation businesses of the Paper Group and their respective
Subsidiaries, in each case as conducted by Licensor as of the
Closing Date, but, in no event, shall “Field of Use” be
interpreted to include any Retained Businesses.
1
1.5
“ Indemnified
Party ” means the Party seeking indemnification from the
other Party pursuant to Article 7 .
1.6
“ Indemnifying
Party ” means the Party who is obligated to indemnify the
other Party pursuant to Article 7 .
1.7
“ Laws
” means all statutes, laws, codes, ordinances, regulations,
rules, orders, judgments, writs, injunctions, acts or decrees of
any Governmental Entity.
1.8
“ Licensee
Indemnified Parties ” means Licensee and its Affiliates,
and its and their respective equity holders, directors, officers,
employees, agents, successors and permitted assigns.
1.9
“ Licensor
Indemnified Parties ” Licensor and its Affiliates, and
its and their respective equity holders, directors, officers,
employees, agents, successors and permitted assigns.
1.10
“ Marks
” means all domestic and foreign trademarks, service marks,
trade dress, trade names, logos, corporate names, icons, slogans,
and any other indicia of source or sponsorship of goods and
services, all designs and logotypes related to the above, in any
and all forms, and all registrations and applications for
registration thereof, together with all of the goodwill related to
the foregoing.
1.11
“ Orange Dot
Mark ” means the Mark set forth on
Exhibit A-2 .
1.12
“ Promotional
Materials ” means any artwork, advertising material,
display material, brochure, poster, internal and external signage,
or other material used to advertise or promote products or
services, in any media now existing or hereafter in
existence.
1.13
“ Retained Boise
Marks ” means the Marks set forth in
Exhibit B .
1.14
“ Retained
Businesses ” means Seller’s Other
Businesses.
1.15
“ Run-off
Marks ” means the Marks as set forth in
Exhibit C .
1.16
“ Run-Off
Period ” means: (i) with respect to signage, a
period of two (2) years following the Closing Date;
(ii) with respect to vehicles, a period of five (5) years
following the Closing Date; (iii) with respect to office
supplies ( e.g. , stationery and business cards), a period
of ninety (90) days following the Closing Date; (iv) with
respect to Internet domain names, e-mail domain names and websites,
a period of six (6) months following the Closing Date;
(v) for Licensee only, with respect to any paper products,
packaging for paper products, and Promotional Materials, for a
period of three (3) years following the Closing Date; and
(vi) for Licensor only, with respect to any wood products,
packaging for wood products, and Promotional Materials, for a
period of three (3) years following the Closing
Date.
2
1.17
“ Sublicense
Agreement ” means the document pursuant to which any
Person has been granted a sublicense by Licensee pursuant to
Section 2.2 .
1.18
“ Sublicensee
” means any Person to whom Licensee has granted a sublicense
pursuant to Section 2.2 .
1.19
“ Term
” shall have the meaning set forth in Section 9.1
.
1.20
“ Termination
Date ” means the date upon which the Term ends in
accordance with Article 9 .
2.
GRANT OF LICENSES.
2.1
Grant of Trademark
Licenses . Subject to the terms and conditions of
this Agreement, Licensor hereby grants to Licensee a royalty-free,
fully-paid, worldwide, non-transferable (except in accordance with
Section 10.9 ), and exclusive right and license
(subject to Licensor’s retained rights set forth in
Section 2.3 ), with the right to sublicense (solely in
accordance with Section 2.2 ,) to use the Boise
Marks for any purpose other than in connection with the Retained
Businesses during the Term, provided , that Licensee shall
obtain Licensor’s prior written consent to any use of the
Boise Marks outside the Field of Use, such consent not to be
unreasonably withheld or delayed; provided further , that in
no event shall Licensee use the Boise Marks in any manner
whatsoever in connection with the Retained Businesses.
2.2
Sublicense
Rights .
(a)
Licensee shall be entitled
to sublicense the rights granted in Section 2.1 to the
Boise Marks during the Term (i) within the Field of Use to any
Person in connection with the operation of Licensee’s
business without consent, or (ii) outside the Field of Use
with the prior written consent of Licensor, such consent not to be
unreasonably withheld or delayed; provided , that Licensee:
(x) does not grant any rights in or to the Boise Marks beyond
the rights granted to Licensee herein; (y) executes a
Sublicense Agreement whereby its Sublicensee shall agree to comply
with, and be bound by, all of the relevant provisions of this
Agreement applicable to Licensee; and (z) prohibits its
Sublicensee from granting any further sublicenses to the
sublicensed Boise Marks. Licensee shall be fully responsible
for all acts and omissions of any of its Sublicensees in connection
with the Boise Marks, and all such acts and omissions of any of its
Sublicensees shall be deemed acts and omissions of Licensee
hereunder. Licensee shall deliver to Licensor a copy of each
Sublicense Agreement entered into by Licensee within ten
(10) days of its execution, along with contact details of the
relevant Sublicensee.
(b)
Licensor shall be entitled
to license rights retained under Section 2.3 to the
Boise Name Mark (i) in connection with the Retained Businesses
to any Person in connection with the operation of Licensor’s
business without
3
consent, or (ii) outside the Retained
Businesses with the prior written consent of Licensee, such consent
not to be unreasonably withheld or delayed; provided , that
Licensor: (x) does not grant any rights in or to the Boise
Name Mark beyond the rights reserved to Licensor herein;
(y) executes a license agreement whereby its licensee shall
agree to comply with, and be bound by, all of the relevant
provisions of this Agreement applicable to Licensor; and
(z) prohibits its licensee from granting any further
sublicenses to the Boise Name Mark. Licensor shall be fully
responsible for all acts and omissions of any of its licensees in
connection with the Boise Name Mark, and all such acts and
omissions of any of its licensees shall be deemed acts and
omissions of Licensor hereunder. Licensor shall deliver to
Licensee a copy of each license agreement entered into by Licensor
within ten (10) days of its execution, along with contact
details of the relevant licensee.
2.3
Licensor Reservation of
Rights.
(a)
All rights in and to the
Boise Marks, other than those specifically granted in this
Agreement, are reserved by Licensor for its own use and
benefit. For the avoidance of doubt, the rights granted
herein to Licensee to the Boise Marks in the Field of Use are
exclusive, and Licensor may not use, or license rights to, the
Boise Marks in the Field of Use or otherwise during the Term, in
each case except as expressly permitted herein.
Notwithstanding the foregoing, Licensor may use, or license rights
to, the Boise Name Mark outside the Field of Use, provided ,
that Licensor shall obtain Licensee’s prior written consent
to any use of the Boise Name Mark other than in connection with the
Retained Businesses, such consent to not be unreasonably withheld
or delayed.
(b)
Notwithstanding anything
in Section 2.1 or Section 2.3(a) to the
contrary, Licensor retains the exclusive right to use, and to
license the use of, the Retained Boise Marks, including any
Internet domain names incorporating the Retained Boise Marks;
provided , that (i) Licensor’s use of the
Retained Boise Marks in “Category A” of
Exhibit B shall be limited to the operation of the
Retained Businesses, and to the extent and manner in which such
Retained Boise Marks were used by Licensor or its licensees as of
the Closing Date in connection with the Retained Businesses; and
(ii) Licensor’s right to use the Retained Boise Marks in
“Category B” of Exhibit B shall not be
restricted to the Retained Businesses; provided further that in no
event including under (i) and (ii) above may Licensor,
its Affiliates or Subsidiaries use or license the use of such
Retained Boise Marks in connection with the marketing, distribution
and sale of products and services in the Field of Use.
2.4
Internet Domain Names
and Uses . Licensee shall have the right to
register any Internet domain name incorporating any of the Boise
Marks, but not any domain names incorporating the Retained Boise
Marks, without obtaining Licensor’s
4
prior written consent. Upon termination
of this Agreement, Licensee shall cease use of any Internet domain
name that incorporates any of the Boise Marks and, except for any
such domain name that incorporates any Marks owned by Licensee or
any other Person, assign to Licensor all right, title and interest
in and to such Internet domain names, and take any other reasonable
actions and execute any and all documents and instruments
reasonably requested by Licensor to accomplish the purposes of this
Section 2.4 .
3.
RUN-OFF RIGHTS.
3.1
Run-Off
Rights .
Notwithstanding anything in this Agreement to the
contrary:
(i)
Licensee shall be entitled
to continue using (y) any signage, vehicles, office supplies,
Internet domain names, e-mail domain names, and websites that bear
any Run-Off Marks, to the extent in existence prior to the Closing
Date, for the applicable Run-off Period, and (z) paper
products, packaging for paper products, and Promotional Materials
that bear any Run-Off Marks for the applicable Run-off
Period. Following the expiration of each applicable Run-Off
Period, Licensee shall cease all use of the Run-Off Marks and
remove the Run-Off Marks from its signage, vehicles, office
supplies, Internet domain names, e-mail domain names, websites,
paper products, packaging for paper products, and Promotional
Materials (as applicable); and
(ii)
Licensor shall be entitled
to continue using (y) any signage, vehicles, office supplies,
Internet domain names, e-mail domain names, and websites that bear
any Orange Dot Mark, to the extent in existence prior to the
Closing date, for the applicable Run-off Period, and (z) wood
products, packaging for wood products, and Promotional Materials
that bear any Orange Dot Mark for the applicable Run-off
Period. Following the expiration of each applicable Run-Off
Period, Licensor shall cease all use of the Orange Dot Mark and
shall remove the Orange Dot Mark from its signage, vehicles, office
supplies, Internet domain names, e-mail domain names, websites,
wood products, packaging for wood products, and Promotional
Materials (as applicable). Licensee acknowledges and agrees
that nothing in this Section 3.1 respecting the Orange
Dot Mark shall prohibit, restrict or impair in any way the ability
of Licensor to use the Boise Name Mark or the Retained Boise Marks
as provided in Section 2.3(b) .
3.2
Standards of Use for
Run-Off Marks . Any use of the Run-Off Marks by
Licensee pursuant to Section 3.1 shall:
(i) be in conformity with the practices of Licensor as of the
Effective Date; (ii) be in a manner that does not in any way
harm or disparage the reputation or goodwill of the Run-Off Marks;
and (iii) be contingent on the Licensee maintaining the
quality of products and services used in connection with the
Run-Off Marks at a standard at least as high as that of
the
5
products and services offered or sold by
Licensor in connection with the Run-Off Marks as of the Effective
Date.
3.3
Standards of Use for
Orange Dot Mark . Any use of the Orange Dot Mark by
Licensor pursuant to Section 3.1 shall:
(i) be in conformity with the practices of Licensor as of the
Effective Date; (ii) be in a manner that does not in any way
harm or disparage the reputation or goodwill of the Orange Dot
Mark; and (iii) be contingent on the Licensor maintaining the
quality of products and services used in connection with the Orange
Dot Mark at a standard at least as high as that of the products and
services offered or sold by Licensor in connection with the Orange
Dot Mark as of the Effective Date.
4.
QUALITY CONTROL.
4.1
General
. All products and
services offered and sold by Licensee and Licensor in connection
with, or bearing, any of the Boise Marks (including any Promotional
Materials) shall be of sufficiently high quality so as to protect
the Boise Marks and the goodwill symbolized thereby. Each of
Licensee and Licensor covenants and agrees that all such products
and services, including any products and services offered and sold
by Licensor or Licensee in connection with any new use of the Boise
Name Mark, shall be of a standard of quality at least as high as
that of the products and services historically offered and sold by
Licensor as of the Closing Date. Either Party shall provide
the other Party with prompt written notice if, in the reasonable
determination of the notifying Party, the quality of any products
and services offered and sold by the other Party may tarnish,
disparage, degrade or injure the reputation of the Boise Marks, and
the Parties shall work together to remedy any such quality
deficiency.
4.2
Audit Rights
. Upon thirty (30)
days prior written notice to the other Party, and at auditing
Party’s expense, but not more than once per year, each Party
shall permit the auditing Party or its representative to access the
facilities where products bearing or incorporating the Boise Marks
are produced and/or stored, in order to audit the quality control
standards and procedures for compliance with this Agreement;
provided any such audit shall be conducted during normal
business hours, and in a manner that complies with all policies of
the audited Party and will not materially disrupt the operation of
the audited Party’s business. The auditing Party shall
notify the audited Party of any quality deficiency identified in
the course of such audit, and the audited Party shall promptly
remedy any such deficiency.
5.
PROTECTION OF BOISE MARKS.
5.1
Ownership and Rights to
the Boise Marks . Licensee acknowledges that all right,
title and interest in and to the Boise Marks or Run-Off Marks
belong exclusively to Licensor. All use of the Boise Marks
and Run-Off Marks by Licensee shall inure solely to the benefit of
Licensor, and Licensee shall obtain no ownership interest in the
Boise Marks or Run-Off Marks as a result of the exercise of
any
6
rights under this Agreement, regardless of how
long this Agreement remains in effect.
5.2
Use of the
Boise
Marks
.
(a)
Except as expressly
permitted hereunder, or with Licensor’s written consent,
Licensee shall not, at any time during or after the Term, adopt,
use, register, or attempt to register any Mark that: (i) is
identical or confusingly similar to the Boise Marks,
(ii) incorporates any of the Boise Marks, or (iii) is
intended to mislead or to cause deception or confusion with the
Boise Marks .
(b)
Licensee shall
not, by any act or
omission, tarnish, disparage, degrade or injure the reputation of
the Boise Marks or Licensor, and the goodwill associated
therewith.
(c)
Licensee shall promptly
notify Licensor of any non-routine inquiry, investigation,
inspection or any other action by any Governmental Entity or other
Person with respect to production, promotion, sale or distribution
of any product or service of Licensee bearing the Boise Marks or
provided in connection with the Boise Marks.
(d)
Licensee shall not grant
or attempt to grant a security interest in any of the Boise Marks,
or to record any such security interest in the United States Patent
and Trademark Office or similar office in another
jurisdiction.
5.3
No Other Rights or
License .
Except for the licenses expressly granted to the Boise Marks and
the Run-Off Marks, nothing in this Agreement shall be construed as
a grant to Licensee of any right or license, express or implied, in
or to any Intellectual Property Rights owned, licensed or
controlled by Licensor.
5.4
Maintenance and
Prosecution .
(a)
At its own expense,
Licensee shall have the right to file, prosecute and maintain all
new and existing applications for, and registrations of
(i) the Boise Name Mark in the Field of Use that contain a
description of products and services that are in the Field of Use,
or (ii) the Orange Dot Mark outside the Retained Businesses;
provided , that Licensee shall give notice to Licensor of
any new applications for registration of any of the
foregoing.
(b)
At its own expense,
Licensor shall have the right to file, prosecute and maintain all
new and existing applications for, and registrations of any Boise
Name Mark in the Retained Businesses that contain a description of
products and services that are in the Retained Businesses;
provided , that Licensor shall give notice to Licensee
of any new applications for registration of any of the
foregoing.
7
(c)
At its own expense, either
Party may file and prosecute new applications for registration of
the Boise Name Mark that are (i) outside the Field of Use;
(ii) outside the Retained Businesses; and (iii) unlikely
to cause confusion with any registrations used by the other Party
in the Field of Use or the Retained Businesses, but only
after obtaining the other Party’s prior written approval,
which approval shall not be unreasonably withheld or delayed.
The Party seeking to file an application for registration pursuant
to this Section 5.4(c) shall give written notice of
such proposed new application to the other Party who shall approve
or deny such proposed new application within thirty (30) days after
receipt thereof; provided , that a Party’s failure to
respond to such a proposed new application within such thirty (30)
day period shall be deemed an approval.
(d)
In the event either Party
elects not to maintain any existing registration for any Boise
Mark, or not to prosecute an application for registration of any
Boise Mark, such Party shall promptly notify the other Party in
writing of such decision, but in no event less than sixty (60) days
prior to the date on which the registration or application shall
become abandoned, and the other Party shall have the right (but not
the obligation) to continue to prosecute the trademark application,
or to maintain the registration of the Boise Mark, in each case in
its own name and at its own expense. If the other Party
elects to so prosecute or maintain the application or Boise Mark,
it shall provide the abandoning Party with written notice of such
election, and the abandoning Party shall assign all of its right,
title, and interest in such application or registration, and the
goodwill associated therewith, to the prosecuting/maintaining
Party, and shall provide such other cooperation as the
prosecuting/maintaining Party may reasonably request, at the
prosecuting/maintaining Party’s cost and expense, to assign,
record, prosecute, maintain, demonstrate use, renew and enforce the
prosecuting/maintaining Party’s rights in and to such
application, registration or goodwill.
5.5
Assistance
. At its sole cost
and expense, to the extent reasonably necessary either Party may
request the other Party’s assistance in protecting any of the
requesting Party’s rights in and to the Boise Marks,
including the execution, filing and prosecution of any trademark
applications or renewal documents that the requesting Party files
for the Boise Marks, and in demonstrating use (if any) of the Boise
Marks in each jurisdiction in which they are registered and
providing evidence of such use. Upon a Party’s
request, the other Party shall provide to the requesting Party from
time to time such samples, containers, labels and similar material
as may be reasonably requested to enable the requesting party to
protect its rights in a Boise Mark as contemplated by this
Agreement.
5.6
Recordation
. Each Party shall
cooperate with the other Party, at the requesting Party’s
sole cost and expense, in registering this Agreement in
appropriate
8
recordal depositories if required by laws in a
country in which the requesting Party uses the Boise
Marks.
5.7
Compliance with Legal
Requirements . In exercising the rights granted or
retained, as applicable, hereunder, each of Licensee and Licensor
shall comply in all material respects with all applicable Laws,
including those Laws particularly pertaining to the proper use and
designation of the Boise Marks.
6.
ENFORCEMENT.
6.1
Notice of Third Party
Infringement . In the event that either Party learns
of any infringement or other violation of, or threatened
infringement or other violation of, the Boise Marks, including any
unfair competition, passing-off or dilution with respect to the
Boise Marks, such Party shall promptly notify the other Party or
its authorized representative in writing, giving particulars
thereof as reasonably requested by the other Party.
6.2
Enforcement
.
(a)
Licensee shall have the
initial right to take action at its own expense against actual or
suspected infringers of the Boise Marks in the Field of Use;
provided , that Licensor may participate in any such action
undertaken by Licensee at Licensor’s own expense.
Licensor shall have the initial right to take action at its own
expense against actual or suspected infringers of the Boise Marks
in connection with the Retained Businesses; provided , that
Licensee may participate in any such action undertaken by Licensor
at Licensee’s own expense.
(b)
Either Party may take
initial action at its own expense against actual or suspected
infringers of the Boise Marks outside both the Field of Use and
the Retained Businesses; provided , that the non-initiating
Party may participate in any such action undertaken by the
initiating Party at the non-initiating Party’s own
expense.
(c)
In the event that a Party
initiates an action or proceeding pursuant to Section 6.2(a)
or Section 6.2(b) , upon the initiating Party’s
request, the non-initiating Party agrees to be joined by the
initiating Party as a third-party plaintiff to any such action or
proceeding and provide the initiating Party reasonable cooperation
in connection therewith. Notwithstanding the outcome of any third-party
litigation or the terms of any third-party settlement, the Parties
agree that any and all damages recovered in any action or
proceeding based on the Boise Marks shall be apportioned between
the initiating Party and the non-initiating Party based on the
relative percentage of damages incurred by each Party as compared
to the other Party; provided , that first the initiating
Party shall be reimbursed for all reasonable direct or third-party
expenses incurred by the initiating Party in connection with such
action or proceeding, including reasonable
9
legal fees and disbursements, and costs of
investigation, litigation, settlement, judgment, and
appeal.
(d)
I f Licensee fails to take action within
thirty (30) days after receiving written notice from Licensor of
any actual or suspected infringement of the Boise Marks in the
Field of Use as provided in Section 6.1 , then Licensor
shall have the right (but not the obligation), at any time
thereafter to take such action in its own name and at its own
expense. Upon the Licensor’s request, Licensee agrees
to be joined by Licensor as a third-party plaintiff to any such
action or proceeding and provide Licensor reasonable cooperation in
connection therewith. Notwithstanding the outcome of any
third-party litigation or the terms of any third-party settlement,
the Parties agree that any and all damages recovered in any action
or proceeding permitted to be commenced by Licensor based on the
Boise Marks as permitted herein shall be apportioned between
Licensor and Licensee based
|
