EXHIBIT 10.9
TRADEMARK LICENSE
AGREEMENT
This Trademark License Agreement (“
Agreement ”) is entered into on the 7th day of April,
2009, to be effective as of 11:59 PM CDT on March 31, 2009 (“
Effective Date ”) by and between SemGroup, L.P., an
Oklahoma limited partnership (“ SemGroup ”) and
SemMaterials, L.P., an Oklahoma limited partnership (“
SemMaterials ”) (SemGroup and SemMaterials,
collectively, “ Licensor ”), on the one hand,
and SemGroup Energy Partners, L.P., a Delaware limited partnership
(“ Licensee ”), on the other
hand. Licensor and Licensee are hereinafter referred to
as the “ Parties ” or individually, as
applicable, as the “ Party ”.
RECITALS
WHEREAS,
SemGroup owns U.S. Trademark Registration Nos. 3,555,972, 3,291,763
and 3,291,764 and pending U.S. Trademark Application Serial Nos.
77/692,475 and 77/257,081 for the Licensed Marks (as defined
below);
WHEREAS,
Licensor and Licensee are parties to that certain Amended and
Restated Omnibus Agreement dated as of February 20, 2008 (the
“ Omnibus Agreement ”), pursuant to which, among
other things, Licensor granted to Licensee a non-exclusive license
to use the Licensed Marks in accordance with the terms and
conditions of the Omnibus Agreement;
WHEREAS,
Licensor, together with certain of its subsidiaries, are parties to
the chapter 11 cases commenced by such entities on July 22, 2008,
jointly administered under Case No. 08-11525 (BLS) and the chapter
11 case commenced by SemGroup Holdings, L.P. (a wholly-owned
subsidiary of Licensor) on October 22, 2008 under Case No. 08-12504
(BLS) (the “ Bankruptcy Cases ”);
WHEREAS, the
Bankruptcy Cases are under the jurisdiction of the United States
Bankruptcy Court for the District of Delaware (the “
Bankruptcy Court ”);
WHEREAS, on
March 12, 2009, the Bankruptcy Court approved the terms of a global
settlement by and among Licensor, Licensee and certain other
parties (the “ Settlement ”); and
WHEREAS,
pursuant to the Settlement, Licensor and Licensee have agreed (i)
that Licensor will reject the Omnibus Agreement in the Bankruptcy
Cases and (ii) to enter into this Agreement to set forth the terms
and conditions of Licensee’s continued use of the Licensed
Marks.
NOW, THEREFORE,
in consideration of the premises and of the mutual covenants,
representations, warranties and agreements herein contained, and
intending to be legally bound hereby, the Parties hereby agree as
follows:
1.1 “
Affiliate ” (and, with a correlative meaning “
affiliated ”) means, with respect to any Party, any
direct or indirect subsidiary of such Party, and any other entity
that directly, or through one or more intermediaries, controls or
is controlled by or is under common control with such first
Party. As used in this definition, “
control ” (including with correlative meanings,
“ controlled by ” and “ under common
control with ”) means possession, directly or indirectly,
of power to direct or cause the direction of management or policies
(whether through ownership of securities or partnership or other
ownership interests, by contract or otherwise). For
purposes of this Agreement, (i) Licensee, Licensee’s general
partner, and Licensee’s and Licensee’s general
partner’s respective subsidiaries shall not be deemed to be
Affiliates of Licensor and (ii) SemGroup, SemMaterials, and
SemGroup’s and SemMaterial’s respective subsidiaries
(other than Licensee, Licensee’s general partner, and
Licensee’s and Licensee’s general partner’s
respective subsidiaries) shall not be deemed to be Affiliates of
Licensee.
1.2 “
Licensed Marks ” means the Marks set forth on
Exhibit A attached hereto.
1.3 “
Marks ” means trademarks, service marks, trade names,
corporate names, d/b/a names, fictitious names, service names,
taglines, slogans, industrial designs, brand names, brand marks,
trade dress, Internet domain names, identifying symbols, logos,
emblems, signs or insignia, including all goodwill associated with
any of the foregoing.
1.4 “
Material ” means any item or material of Licensee or
any of Licensee’s Affiliates (excluding Products) that bears
or contains any of the Licensed Marks (including any marketing or
promotional materials, packaging, labeling, supplies, invoices,
letterhead, envelopes, business cards, web sites, web pages and any
similar items or materials).
1.5 “
Product ” means any product of Licensee or any of
Licensee’s Affiliates that bears or contains (or the
packaging, labeling or inserts for which bears or contains) any of
the Licensed Marks.
1.6 “
Service ” means any service developed, designed,
marketed, promoted, used, offered for sale, sold, provided and/or
otherwise exploited by Licensee or any of Licensee’s
Affiliates under any of the Licensed Marks.
1.7 “
Standards of Quality ” means at least the same
standards of quality that are observed immediately prior to the
Effective Date by Licensee and Licensee’s Affiliates with
respect to Products, Services and Materials bearing any of the
Licensed Marks or in connection with which any of the Licensed
Marks is used.
2.1 License
. Subject to the terms and conditions of this Agreement,
Licensor hereby grants to Licensee and Licensee’s Affiliates,
under Licensor’s rights in and to the Licensed Marks, a
limited, non-exclusive, worldwide, non-transferable,
non-sublicensable, royalty-free, fully paid-up license, during the
Term (as defined in Section 7.1 below), solely to (a) use
the Licensed Marks on or in connection with any Products, Services
and Materials to market, promote, use, offer for sale, sell,
distribute and/or otherwise exploit such Products or Services, and
(b) use “SemGroup” or “SemMaterials” as
part of any corporate name being used by Licensee or any of
Licensee’s Affiliates as of the Effective Date for Licensee
or such Affiliate.
The sole
purpose of the foregoing license is to allow Licensee and
Licensee’s Affiliates a reasonable period of time to
transition from and phase out use of the Licensed
Marks. Licensee and Licensee’s Affiliates shall
use commercially reasonable efforts to complete such transition and
phase out as reasonably practical and feasible by the end of the
Term, except with respect to any Assigned Mark (as defined in
Section 5.6 below) that is assigned by Licensor to Licensee
in accordance with Section 5.6 below.
2.2 Compliance by
Affiliates . Licensee shall cause each of its
Affiliates to comply with the terms and conditions of this
Agreement and such Affiliate’s obligations as set forth in
this Agreement, and shall be responsible for any breach of this
Agreement by any of its Affiliates. Licensor shall cause
each of its Affiliates to comply with such Affiliate’s
obligations as set forth in this Agreement, and shall be
responsible for any breach of such obligations by its
Affiliates.
3.1 Quality
Standards . In order to preserve the inherent value
of the Licensed Marks, Licensee and Licensee’s Affiliates
shall ensure that the quality of all Products and Services meets
the Standards of Quality. In order to assure adherence
to the Standards of Quality and for the purpose of protecting and
maintaining the goodwill associated with the Licensed Marks and the
reputation of Licensor, Licensor shall have the right to obtain
from Licensee and Licensee’s Affiliates reasonable
information as to the quality of the Products and Services and the
manner in which the Licensed Marks are used by Licensee or any of
Licensee’s Affiliates and the samples described in Section
3.2 below.
3.2 Samples
. For the purpose of protecting and maintaining the
goodwill associated with the Licensed Marks and verifying that the
Products and Services meet the Standards of Quality, Licensee and
Licensee’s Affiliates shall furnish to Licensor, from time to
time as reasonably requested in writing by Licensor, (a)
representative samples of Products and any packaging therefor and
Materials related thereto and (b) representative samples showing
other uses of any of the Licensed Marks by Licensee or any of
Licensee’s Affiliates.
3.3 Nonconforming
Products and Services . If, at any time, any
Products or Services fail, in the reasonable and good faith
judgment of Licensor, to conform to the Standards of Quality,
Licensor shall notify Licensee of such failure in
writing. Licensee and Licensee’s Affiliates shall
take all necessary steps to bring such Products or Services into
conformity with the Standards of Quality. If Licensee
and Licensee’s Affiliates fail to so bring such Products or
Services into conformity within sixty (60) days (or such longer
time period as may be mutually agreed upon by the Parties in
writing) after Licensee’s receipt of written notice of such
nonconformity, then Licensee and Licensee’s Affiliates shall
immediately cease all exploitation of such nonconforming Products
or Services under any of the Licensed Marks until such
nonconformity is cured.
IV.
USE OF LICENSED
TRADEMARKS
4.1 Trademark Usage
Guidelines . Licensee and Licensee’s
Affiliates shall use the Licensed Marks in compliance with the
SemGroup, L.P. Logo Identity Standards and Usage Guidelines (the
current version of which is attached hereto as Exhibit B ),
as may be modified by Licensor from time to time (the “
Standards and Guidelines ”). Without
limiting the generality of the foregoing, Licensee and
Licensee’s Affiliates shall use correctly the trademark
symbol ( TM
), the service mark symbol (
SM ) or the registration symbol (
® ), as applicable, with every use of the Licensed
Marks. Licensee and Licensee’s Affiliates shall
submit all Materials and Products (except press releases regarding
Licensee’s or any of Licensee’s Affiliates’
business and Licensee’s and Licensee’s
Affiliates’ general business documents, in each case, that
include only “SemGroup” or “SemMaterials”
as part of a corporate name of Licensee or any of Licensee’s
Affiliates in accordance with Section 2.1(b) and no other
use of any Licensed Marks) to Licensor for approval prior to using
such Materials or exploiting such Products, which approval shall
not be unreasonably withheld or delayed. All Materials
and Products being exploited by Licensee or its Affiliates as of
the Effective Date are hereby approved for purposes of this
Section 4.1 . Any appearance or manner of use of
any of the Licensed Marks not provided for by the Standards and
Guidelines may only be adopted by Licensee or any of
Licensee’s Affiliates upon Licensor’s prior written
consent, which consent shall not be unreasonably withheld or
delayed.
4.2 Changes to
Trademark Usage Guidelines . In the event Licensor
proposes to change the Standards and Guidelines, Licensor shall
notify Licensee of the proposed changes as soon as reasonably
practicable, but in no event less than fifteen (15) days in advance
of implementing such changes. Licensee and
Licensee’s Affiliates shall be allowed a commercially
reasonable period of time to implement any such changes.
4.3
Restrictions . Licensee and Licensee’s
Affiliates shall not (a) use any of the Licensed Marks in a manner
that causes, or has the likelihood of causing, confusion as to the
ownership of the Licensed Marks, (b) do or cause to be done any act
or thing that damages, disparages, disputes, attacks, challenges,
impairs, dilutes or otherwise harms any of the Licensed Marks or
the reputation or goodwill associated with Licensor or any of
Licensor’s Affiliates or any of the Licensed Marks, (c) use
or register in any jurisdiction any Marks confusingly similar to,
or consisting in whole or in part of, any of the Licensed Marks
without the prior written consent of Licensor or (d) register any
of the Licensed Marks in any jurisdiction without the prior written
consent of Licensor.
4.4 Infringement or
Dilution of Third Party Marks . Licensee and
Licensee’s Affiliates shall cease use of any of the Licensed
Marks within a commercially reasonable period of time after
receiving written notice from Licensor that, in the reasonable and
good faith opinion of Licensor’s counsel, the use of such
Licensed Mark may result in potential trademark infringement or
trademark dilution liability to any third party on the part of
Licensor or Licensee or any of their respective
Affiliates. Licensee and Licensee’s Affiliates
shall comply with all written guidelines that may be adopted from
time to time by Licensor for the purpose of addressing any such
potential trademark liability within a commercially reasonable
period of time following Licensee’s receipt of such written
guidelines from Licensor.
4.5 Third Party
Claims . If Licensee or any of Licensee’s
Affiliates is named as a defendant in any action based on its use
of any of the Licensed Marks, Licensee shall immediately notify
Licensor in writing. Licensor shall have the right, but
not the obligation, to intervene in any such action and to control
and direct the defense thereof (including the right to select
defense counsel); provided , that, with respect to any such
action and if Licensee and Licensee’s Affiliates have
complied with all of the terms and conditions of this Agreement,
(a) if Licensor chooses to control and direct the defense of such
action, Licensee may, at its sole cost and expense, retain legal
counsel of its choosing to monitor such action, (b) if Licensor
chooses not to control and direct the defense of such action,
Licensor shall reimburse Licensee for the reasonable, out-of-pocket
costs of Licensee’s defense of such action to the extent
based on any of the Licensed Marks and (c) Licensor shall indemnify
Licensee against all damages arising from such action to the extent
such damages are based on any of the Licensed Marks.
V.
OWNERSHIP OF LICENSED
TRADEMARKS
5.1 Ownership by
Licensor . Licensee and Licensee’s Affiliates
acknowledge and agree that, as between the Parties, ownership of
the Licensed Marks and the goodwill relating thereto shall remain
vested in Licensor during the Term and thereafter. Any
rights relating to the Licensed Marks not granted to Licensee and
Licensee’s Affiliates in this Agreement are reserved by and
for Licensor. Licensee and Licensee’s Affiliates
acknowledge and agree that any use of the Licensed Marks by
Licensee or any of Licensee’s Affiliates shall exclusively
inure to the benefit of Licensor. If Licensee or any of
Licensee’s Affiliates obtains any right or interest in any of
the Licensed Marks (other than as granted or provided under this
Agreement or in accordance with Section 5.6 below),
Li
|
