EXHIBIT 10.13 TRADEMARK
LICENSE AGREEMENT, DATED NOVEMBER 2, 2000, BETWEEN GETTY™
CORP. AND GETTY PETROLEUM MARKETING INC.
TRADEMARK LICENSE AGREEMENT
THIS
TRADEMARK LICENSE AGREEMENT (together with all Schedules attached
hereto and made a part hereof, this “License
Agreement”), effective as of the Restatement Effective Date
(as defined in the Master Lease (as hereinafter defined)), is
entered into by and between: Getty TM Corp. (hereinafter called
“TM”), a corporation organized and existing under the
laws of the State of Maryland, located at 125 Jericho Turnpike,
Jericho, New York 11753; and Getty Petroleum Marketing Inc.
(together with any successors and permitted assignees, hereinafter
called “MARKETING”), a corporation organized and
existing under the laws of the State of Maryland, located at 125
Jericho Turnpike, Jericho, New York 11753.
WHEREAS,
TM is the owner of certain trademarks, service marks and trade
names for use in, among other businesses, the motor fuels marketing
business, as conducted in certain areas of the United States
(defined below as the Licensed Territory);
WHEREAS,
the corporate parent of TM, Getty Properties Corp. (f/k/a Getty
Realty Corp.) (hereinafter called “REALTY”), a
corporation organized and existing under the laws of the State of
Delaware, has leased and subleased various motor fuels outlet
properties to MARKETING under certain net lease agreements, all of
which net lease agreements have been incorporated, consolidated,
amended and restated as of the date hereof pursuant to that certain
Consolidated, Amended and Restated Master Lease between REALTY, as
landlord, and MARKETING, as tenant (as so incorporated,
consolidated, amended and restated, the “Master
Lease”);
WHEREAS,
TM seeks to license those trademarks, service marks and trade names
to MARKETING for use in its marketing business in the Licensed
Territory as defined below;
WHEREAS,
MARKETING seeks to license those trademarks, service marks and
trade names from TM for use in its marketing business in the
Licensed Territory as defined below;
NOW,
THEREFORE, in consideration of the foregoing and of the mutual
promises hereinafter set forth, the parties agree as
follows:
A.
“Affiliate” means any stockholder of MARKETING that
beneficially owns at least a majority of the then issued and
outstanding capital stock of MARKETING or any wholly-owned or
majority-owned subsidiary of MARKETING that are involved in the
Marketing Business (as defined hereinafter).
B.
“Branded Gasoline” means gasoline that is sold through
a Branded Outlet and is identified using any of the Licensed
Marks.
C.
“Branded Outlet” means a retail service station with
signage bearing any of the Licensed Marks and located in the
Licensed Territory that is, or is hereafter, owned or operated by
MARKETING or persons that sublicense the Licensed Marks from
MARKETING pursuant to Paragraph 2E hereof.
D.
“Licensed Marks” means the trademarks, service marks or
trade names listed on Schedule A attached hereto and as
subsequently included pursuant to Paragraph 6D hereof.
E.
“Licensed Territory” means all of the states,
territories and possessions of the United States with the exception
of Maine, New Hampshire, Vermont, Massachusetts, Rhode Island,
Connecticut, New York, New Jersey, Pennsylvania, Delaware,
Maryland, Virginia and the District of Columbia.
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F.
“Marketing Business” means: (i) the purchase, storage,
distribution, marketing, and sale of gasoline, diesel fuel and
other related products at wholesale and through terminals and a
retail service station network; and (ii) the operation of
convenience stores.
G.
“Material Monetary Default” means the failure to pay to
TM royalty fees when due and payable pursuant to Paragraph 2C
herein and unpaid for a period exceeding ten (10) days after
receipt of written notice unless such payments are then being
contested by MARKETING in good faith.
H.
“Material Non-Monetary Default” means a material breach
or breaches of MARKETING’s obligations under this License
Agreement that reasonably would be expected to result in a
significant and lasting diminution of the value of the Licensed
Marks in the Marketing Business.
I.
“Royalty-Paying License Territory” shall mean all of
the Licensed Territory with the exception of West
Virginia.
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2.
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GRANT OF LICENSE; ROYALTY
FEES
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A.
Subject to the terms and conditions set out herein, TM grants to
MARKETING a non-exclusive, royalty-bearing license to use the
Licensed Marks in the Licensed Territory in connection with its
Marketing Business. The license to use the Licensed Marks in West
Virginia shall be royalty free. TM shall not grant any rights to
use any of the Licensed Marks in the Licensed Territory to any
entity to be used in connection with (i) the purchase, storage,
distribution, marketing, or sale of gasoline, diesel fuel and other
related products or (ii) the operation of convenience stores
without MARKETING’s prior written consent, which consent may
be withheld if MARKETING reasonably believes that the entity to
whom TM wishes to grant such license would materially tarnish the
image or cause a material adverse impact on the value of the
Licensed Marks. Any license that TM hereinafter grants
to
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any person other than MARKETING
to use any of the Licensed Marks in the Marketing Business in the
Licensed Territory shall prohibit the opening and operation of
retail gasoline outlets bearing any of the Licensed Marks within a
one-quarter-mile radius of any Branded Outlet.
B.
The royalty rate for the use of the Licensed Marks in the
Royalty-Paying Licensed Territory shall be as follows:
if
in a particular calendar year the amount of Branded Gasoline sold
in the Licensed Territory is between 0 and 199,999,999 gallons of
Branded Gasoline, inclusive, the royalty rate shall be $.0035 per
gallon of Branded Gasoline sold (i.e. $35.00 for every ten thousand
gallons of Branded Gasoline sold) for that calendar
year;
if
in a particular calendar year the amount of Branded Gasoline sold
in the Licensed Territory is between 200,000,000 and 399,999,999
gallons of Branded Gasoline, inclusive, the royalty rate shall be
$.0032 per gallon of Branded Gasoline sold (i.e. $32.00 for every
ten thousand gallons of Branded Gasoline sold) for that calendar
year;
if
in a particular calendar year the amount of Branded Gasoline sold
in the Licensed Territory is between 400,000,000 and 599,999,999
gallons of Branded Gasoline, inclusive, the royalty rate shall be
$.0029 per gallon of Branded Gasoline sold (i.e. $29.00 for every
ten thousand gallons of Branded Gasoline sold) for that calendar
year;
if
in a particular calendar year the amount of Branded Gasoline sold
in the Licensed Territory is between 600,000,000 and 799,999,999
gallons of Branded Gasoline, inclusive, the royalty rate shall be
$.0026 per gallon of Branded Gasoline sold (i.e. $26.00 for every
ten thousand gallons of Branded Gasoline sold) for that calendar
year;
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if
in a particular calendar year the amount of Branded Gasoline sold
in the Licensed Territory is between 800,000,000 and 999,999,999
gallons of Branded Gasoline, inclusive, the royalty rate shall be
$.0023 per gallon of Branded Gasoline sold (i.e. $23.00 for every
ten thousand gallons of Branded Gasoline sold) for that calendar
year; and
if
in a particular calendar year the amount of Branded Gasoline sold
in the Licensed Territory is 1,000,000,000 gallons of Branded
Gasoline or more, the royalty rate shall be $.0020 per gallon of
Branded Gasoline sold (i.e. $20.00 for every ten thousand gallons
of Branded Gasoline sold) for that calendar year.
C.
Within thirty days of the end of each month, MARKETING shall make a
monthly royalty payment to TM, equal to the number of gallons of
Branded Gasoline sold that month in the Licensed Territory,
multiplied by the applicable royalty rate as set forth in Paragraph
2B. In the event that, during any such month, the amount of Branded
Gasoline sold by MARKETING in the Licensed Territory reaches a
gallonage at which the royalty rate decreases pursuant to Paragraph
2B (a “Gallonage Threshold Event”), then MARKETING
shall be entitled to receive a credit against such month’s
royalty payment equal to the product of (a) the amount of Branded
Gasoline sold, in gallons, in the preceding months of such calendar
year, times (b) the difference between the royalty rate used to
compute the royalty fee for the preceding months of such calendar
year and the royalty rate to be used to compute such fee for the
calendar month in which the Gallonage Threshold Event occurs. If
the amount of such credit is greater than the royalty payment due
in the month in which the Gallonage Threshold Event occurs, then
such credit shall be applied to the royalty payment for each
subsequent month (whether or not such subsequent month occurs in
same calendar year) until exhausted. Each time a Gallonage
Threshold Event occurs in a given calendar year, the procedure set
forth above shall
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govern with respect to adjustment
of the royalty fees due for such calendar year. In the event that
this License Agreement expires before any such credit has been
exhausted, then, provided that such expiration did not result from
any of the events described in Paragraph 13 hereof, TM shall pay
MARKETING a refund within thirty days of the expiration of this
License Agreement.
D.
MARKETING and any Affiliate may use and continue to use the name
“Getty” in the name under which it incorporates,
organizes or conducts its business and its subsidiaries’,
provided that there is no likelihood of confusion between
MARKETING’s and its subsidiaries’ incorporated name and
Getty Properties Corp. or Getty Realty Corp., and that the use of
the name “Getty” in MARKETING’s or its
subsidiaries’ incorporated name does not exceed
REALTY’s rights to the name “Getty”. The parties
agree that the use by MARKETING and its subsidiary of the
incorporated names Getty Petroleum Marketing Inc. and Getty
Terminals Corp. does not create any likelihood of confusion.
MARKETING or any Affiliate may use the name “Getty” in
combination with the name “Lukoil”, or any variation
thereof, and any other name under which OAO LUKOIL operates, or
subsequently operates, all or part of its operations, in the names
under which such entities incorporate, organize or conduct their
respective businesses, provided that such use of the name
“Getty” does not exceed REALTY’s rights to the
name “Getty” and does not create a likelihood of
confusion with Getty Properties Corp. or Getty Realty Corp. The act
of combining the name “Lukoil”, or any stylistic
variation thereof, or any other name with the name
“Getty” or using such combined name in commerce shall
give no rights to TM to use the names combined with
“Getty”. Upon the request of MARKETING, TM shall
execute and deliver to MARKETING any consents that may be required
from time to time by the secretary of state or similar office of a
state, commonwealth or other jurisdiction in order for MARKETING or
any Affiliate to use the name “Getty” in the
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name under which it incorporates,
organizes or conducts its business. MARKETING accepts the license
subject to the terms and conditions of this License
Agreement.
E.
Subject to the consent of TM, which consent shall not be
unreasonably withheld or delayed, MARKETING may sublicense the
Licensed Marks to retailers or wholesalers of petroleum and other
related products and operators of convenience stores, including but
not limited to service station retailers, jobbers and distributors,
but only subject to the terms and conditions of this License
Agreement, all of which shall be equally binding on the
sublicensees. In determining the reasonableness of a refusal to
consent to a sublicense, the parties shall be guided by the
following considerations: (i) the parties shall not knowingly take
any action which would materially tarnish the image or cause a
material adverse impact on the value of the Licensed Marks and (ii)
the parties shall not permit the indiscriminate proliferation of
sublicensees which would reasonably be expected to cause the
Licensed Marks to lose significance as a source of origin. In
connection with any sublicense granted hereunder, the sublicensee
shall be required to agree in writing to be bound by and comply all
terms and conditions of this License Agreement, except the
obligation to pay royalty fees hereunder which shall remain the
obligation of MARKETING.
TM
hereby consents to the sublicensing of the Licensed Marks pursuant
to this Paragraph 2E and authorizes MARKETING to make amendments
and revisions in those sublicenses that are not of a material
nature.
F.
Nothing in this License Agreement shall be construed as restricting
MARKETING’S ability to (i) purchase, store, distribute,
market, or sell gasoline, diesel fuel and other related products at
wholesale and through terminals and a retail service station
network and
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(ii) to operate convenience
stores in the Licensed Territory, in each case using any trademark,
trade name or service mark other than the Licensed
Marks.
MARKETING
acknowledges TM’s ownership of the Licensed Marks in the
Licensed Territory. MARKETING agrees that it will do nothing
inconsistent with such ownership and that all use of the Licensed
Marks by MARKETING shall inure to the benefit of, and be on behalf
of, TM. MARKETING agrees that nothing in this License Agreement
shall give MARKETING any right, title or interest in the Licensed
Marks other than the right to use the Licensed Marks in accordance
with this License Agreement. MARKETING agrees that it will not
attack the title of TM to the Licensed Marks or attack the validity
of this License Agreement.
MARKETING
agrees that the nature and quality of all services rendered by
MARKETING in connection with the Licensed Marks, all goods sold by
MARKETING under the Licensed Marks, and all related advertising,
promotional and other related uses of the Licensed Marks by
MARKETING shall conform to reasonable standards set by and be under
the control of TM. MARKETING agrees that the quality of all such
services, goods, and advertising and promotional materials
associated with the Licensed Marks shall be of the same quality as
previously associated with the Licensed Marks. MARKETING further
agrees that the quality of all such services, goods, and
advertising, promotional and other related uses of the Licensed
Marks shall conform with the standards, specifications, and
instructions as established by TM or such subsequent standards,
specifications, or instructions reasonably comparable thereto
promulgated by MARKETING subject to the approval of TM, such
approval not to be unreasonably withheld or delayed. MARKETING
shall be deemed to have complied with the
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quality standards in existence
from time to time under this License Agreement so long as MARKETING
maintains the physical condition of, and the services provided
through, Branded Outlets not materially worse than the physical
condition and level of service generally characteristic on the date
hereof of retail service stations of MARKETING and its sublicensees
that use the Licensed Marks. Except as may be required by law or as
reasonably necessary to protect the Licensed Marks, TM shall not
set quality standards higher than those generall
