EXHIBIT 99.15
EXECUTION COPY
LICENSE AGREEMENT
This License Agreement (“Agreement”),
by and between The Inland Real Estate Group, Inc., an Illinois
corporation with its principal place of business at 2901
Butterfield Road, Oak Brook, Illinois 60523
(“Licensor”), and Inland Southwest Management Corp., a
Delaware corporation, with its principal place of business at 2901
Butterfield Road, Oak Brook, Illinois 60523
(“Licensee”), is effective, nunc pro tunc , as
of November 10, 2003 (the “Effective Date”), and
executed as of November 15, 2007.
WITNESSETH:
WHEREAS, Licensor, through its business
and that of its predecessor-in-interest, has adopted and used or
caused to be used in United States commerce in connection with
certain services in the field of real estate the trade name
“Inland” which is registered in the United States
Patent and Trademark Office (“USPTO”) as U.S.
Registration No. 2,786,134 (the “Trade Name”);
and
WHEREAS, Licensee desires to use the
Trade Name in connection with the business it is engaged in, as
more fully described below; and
WHEREAS, Licensor is willing to grant to
Licensee a non-exclusive, non-transferable, revocable,
royalty-free right to use the Trade Name subject to, and
Licensee is willing to use the Trade Name in accordance with all
of the terms and conditions set forth herein.
NOW, THEREFORE, in exchange for good and
valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, and in consideration of the mutual
covenants set forth herein, the parties agree as follows:
I.
GRANT OF LICENSE
A.
Licensor grants to Licensee a non-exclusive,
revocable, non-transferable, royalty-free right to use the Trade
Name solely in connection with management services for Inland
Western Retail Real Estate Trust, Inc. (the
“Services”). Use of the Trade Name by Licensee
shall comply with the terms and conditions of this
Agreement.
B.
Licensor hereby reserves any and all rights not
expressly and explicitly granted in this Agreement, including,
but not limited to, Licensor’s sole right to authorize or
license use of the Trade Name or any other trademarks, designs,
domain names, trade names, names or designations which are the
same, similar to or incorporate the Trade Name, to any third
party for any use whatsoever. Without limiting the rights
reserved in the first sentence of this paragraph, Licensor
hereby reserves any and all rights to use, authorize use or
license use of the
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Trade Name or any other trademarks, designs,
domain names, trade names, names or designations which are the
same, similar to or incorporate the Trade Name in any geographic
territory and in any language.
II.
OWNERSHIP OF THE TRADE NAME
A.
Licensee recognizes the great value of the
goodwill associated with the Trade Name and (i) acknowledges
that Licensor owns exclusive right, title and interest in and to
the Trade Name, and any and all goodwill pertaining thereto
(including, without limitation, any trademark applications
and/or registrations therefor); (ii) agrees that it will do
nothing inconsistent with such ownership including, but not
limited to, directly or indirectly challenging the validity of,
or otherwise impairing, any intellectual property rights of
Licensor in and to the Trade Name, or Licensor’s ownership
thereof, nor may it assist others in doing so, and (iii) agrees
that all use of the Trade Name by Licensee shall inure solely to
the benefit of Licensor. Licensee agrees that nothing in
this Agreement shall give Licensee any right, title or interest
in the Trade Name other than the right to use the Trade Name in
accordance with this Agreement. Licensee agrees not to
seek registration of the Trade Name, or any trademarks, designs,
domain names, trade names, names or designations similar thereto
or which are any abbreviation thereof, with any domestic or
foreign governmental or quasi-governmental authority or as part
of an Internet domain name. The provisions of this paragraph
shall survive the expiration or termination of this
Agreement.
B.
Licensor may file trademark applications to
protect the Trade Name, but Licensor is not required to do so,
nor is Licensor required to renew or maintain registrations for
the Trade Name. Licensee agrees to assist Licensor, at
Licensor’s request, in the procurement and maintenance of
any protection of Licensor’s rights in the Trade Name
including, without limitation, in the prosecution of trademark
applications for the Trade Name in Licensor’s name.
III.
USE OF THE TRADE NAME
A.
In connection with its permitted use of
the Trade Name, Licensee shall not in any manner represent that
it has any ownership interest in the Trade Name, and Licensee
specifically acknowledges that its permitted use of the Trade
Name shall not create in the Licensee any right, title or
interest in the Trade Name.
B.
Without detracting from the generality of the
foregoing, it is agreed and understood by Licensee that Licensee
does not have permission to: 1) sublicense the Trade Name,
or 2) transfer, sell or assign any right granted by this
Agreement, or 3) modify the Trade Name in any manner whatsoever.
Licensee further acknowledges and agrees that it does not
have the right to use the Trade Name in connection with products
and services other than as expressly permitted herein.
C.
Licensee acknowledges the importance to Licensor
of its reputation and goodwill and to the public of maintaining
high, uniform standards of quality in the services provided in
connection with the Trade Name. Licensee therefore agrees to
maintain a high
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standard of quality in connection with the
Services and its use of the Trade Name in connection therewith
commensurate with or better than the high standard maintained by
Licensor in connection with its business prior to the effective
date, and agrees to perform the Services so as not to impair
Licensor’s reputation or goodwill in connection with the
Trade Name. To ensure Licensor the ability to protect the
goodwill associated with the Trade Name and the validity and
integrity of the Trade Name, and to prevent any deception to the
public, Licensee shall operate its business in accordance with
the standards and requirements of quality, which from time to
time are prescribed by Licensor, and shall use the Trade Name in
a manner consistent with any format prescribed by Licensor for
any and all media, including without limitation all signage,
marketing materials, press releases and on the Internet.
If there are any modifications in the Standard Usage
Guidelines, they will be delivered to Licensee in writing.
Licensee agrees that such standards shall include but not be
limited to strict compliance with all applicable statutes, laws,
ordinances, rules, regulations and orders of public authorities
in effect from time to time and that such laws shall include but
not be limited to fair housing laws, antitrust laws, licensing
laws, environmental laws, securities laws and consumer laws.
Licensee further agrees that such standards shall include the
obligation to conduct its business in accordance with the
highest ethical standards applicable in its industry. In the
event of any failure by Licensee to operate its business in
accordance with the standards and requirements set forth herein
or as prescribed by Licensor from time to time, or in the event
that Licensee engages in any conduct or failure to act that in
the sole judgment of Licensor adversely impacts on the
name, reputation, goodwill or business of Licensor, such conduct
or failure to act shall constitute a material breach of this
Agreement. If such material breach has not been cured
within thirty (30) days following receipt of notice from
Licensor, this Agreement shall be terminated.
D.
To determine whether Licensee is complying with
this Agreement, Licensor shall have the right to periodically
monitor Licensee’s use of the Trade Name. Upon
request by Licensor, Licensee shall provide Licensor with
representative samples of each such use prior to the time the
Trade Name is published, including but not limited to the use on
all signage, marketing materials, press releases and on the
Internet. If Licensor determines that Licensee is
using the Trade Name improperly, and/or in a way that does not
meet the standards referred to in Article III. C. above, or
requirements set forth herein and/or to which Licensor may
require adherence to from time to time, Licensor shall notify
Licensee, and Licensee shall remedy the improper use within
thirty (30) days following receipt of such notice from Licensor.
In addition, if Licensor determines that Licensee is engaging in
conduct or activities that dilute or damage the value of the
goodwill associated with the Trade Name, in each case, Licensor
shall provide notice of the conduct or activities to Licensee,
and Licensee shall immediately cease the conduct or activities
and shall take all actions requested by Licensor to mitigate or
remedy any dilution or damage. Use of the Trade Name in
connection with an infringement of any of Licensor’s or a
third party’s rights, including but not limited to rights
under trademark, patent, trade secret or copyright laws, shall
constitute a material breach of this Agreement. If such material
breach has not been cured within thirty (30) days following
receipt of notice from Licensor, this Agreement shall be
terminated.
E.
Licensee shall ensure that trademark, service
mark, and any and all other proprietary rights notices that are
appropriate to protect the Trade Name is conspicuously
placed
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on all items bearing the Trade Name used by
Licensee in accordance with the Standard Usage Guidelines.
In the event that Licensee learns of or has reason to
believe that a third party is infringing or threatens to
infringe the Trade Name (the “Infringement”), it
shall immediately notify Licensor, and Licensor may take such
steps as it believes appropriate (in its sole discretion) to
terminate or otherwise address the Infringement. Licensee
agrees to cooperate with Licensor and to provide support
to Licensor in such efforts. If Licensee chooses to
appoint counsel on its own, it shall be at Licensee’s sole
expense. Licensee shall not take any action to prosecute or
settle any such Infringement without Licensor’s written
consent.
IV.
LEGEND; DISCLAIMER
Upon Licensor’s request, Licensee shall
include 1) a trademark legend satisfactory to Licensor in
accordance with the Standard Usage Guidelines indicating that
the Trade Name is owned by Licensor and are being used under
license and/or 2) a disclaimer that Licensee and not Licensor
has produced the materials and is responsible for the content
thereof whenever the Trade Name may be used, including but not
limited to on signage, marketing m
