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EXHIBIT 99.14
TRADEMARK LICENSE AGREEMENT
This
Trademark License Agreement ("Agreement"), dated as of December 29,
2004 (the "Effective Date"), is entered 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 Retail Real Estate Trust, Inc., a
Maryland corporation, with its principal place of business at 2901
Butterfield Road, Oak Brook, Illinois 60523 ("Licensee").
WITNESSETH:
WHEREAS, Licensor, through its business and that of its
predecessor-in-interest, has adopted and used, caused to be used,
or licensed to be used in United States commerce in connection with
certain services in the field of real estate, the following: (1)
the design mark depicted in Exhibit A, which is registered in the
United States Patent and Trademark Office as U.S. Registration No.
2,638,092, together with all of the common law rights associated
therewith (the "Blue Ball Logo"); (2) the name "Inland Retail Real
Estate Trust, Inc." (the "IRRETI Name", and together with the Blue
Ball Logo, the "IRRETI Marks"); (3) the design mark depicted in
Exhibit B, which is registered in the United States Patent and
Trademark Office as U.S. Registration No. 1,408,898, together with
all of the common law rights associated therewith (the "Inland
Logo"); and (4) the trade name "Inland," which is registered in the
United States Patent and Trademark Office as U.S. Registration No.
2,786,134, together with all of the common law rights associated
therewith (the "Inland Name", and together with the Inland Logo,
the "Inland Marks") (the IRRETI Marks and the Inland Marks shall
sometimes be referred to collectively as the "Trademarks");
WHEREAS , Licensor is the owner of all right, title and
interest in and to the Trademarks, together with the goodwill
associated therewith; and
WHEREAS, Licensor is willing to grant to Licensee certain
rights to use the Trademarks subject to, and Licensee is willing to
use the Trademarks 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. Definitions
"Affiliate" shall mean, except as otherwise provided herein, with
respect to any Person, any Person directly or indirectly
controlling, controlled by or under common control with, such
Person. For the purposes of this definition, "control" (including,
with correlative meaning, the terms "controlling," "controlled by"
and "under common control with") means the possession, directly or
indirectly, of the power to direct or cause the direction of
management and policies of such Person through the ownership of
voting securities, by contract or otherwise. With respect to
Licensee, any entity representing a joint venture or similar
arrangement in which Licensee, or an entity controlled by Licensee,
is the general partner or managing member shall be deemed to be an
"Affiliate."
"Change of Control Event" shall mean the occurrence of one or more
of the following:
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a)
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Any sale, lease, exchange or other transfer (in
one transaction or a series of related transactions) of all or
substantially all of the assets of Licensee to any person or group
of related persons for purposes of Section 13(d) of the Securities
Exchange Act of 1934, as amended; provided, however , that
any sale, lease, exchange or transfer to (including, without
limitation, any merger or other business combination with or into)
any of the following shall not constitute a Change of Control: (i)
any Affiliate controlled by Licensee, (ii) Inland Real Estate
Corporation, (iii) Inland Western Retail Real Estate Trust, Inc.,
(iv) Inland American Real Estate Trust, Inc., (v) The Inland Group,
Inc., or (vi) any Affiliate controlled by any of the Persons listed
in clauses (i) through (v) above (all of the Persons described in
clauses (i) through (vi) above to be hereinafter sometimes referred
to as the "Inland Companies");
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b)
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The approval by the holders of the outstanding
shares of Licensee of any plan or proposal for the liquidation or
dissolution of Licensee;
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c)
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Any person or group of related persons for
purposes of Section 13(d) of the Securities Exchange Act of 1934,
as amended (other than any one or more of the Inland Companies)
shall become the owner, directly or indirectly, beneficially or of
record, of shares of Licensee representing more than twenty-five
percent (25%) of the aggregate ordinary voting power represented by
the issued and outstanding common shares of Licensee; or
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d)
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Following any change in the composition of the
board of directors of Licensee, a majority of the board of
directors of Licensee are not a combination of either
(i) members of the board of directors of Licensee as of the
date hereof, or (ii) members of the board of directors of
Licensee whose nomination for election or election to the board of
directors of Licensee has been recommended, approved or ratified by
at least eighty percent (80%) of the board of directors of Licensee
then in office who were either members of the board of directors of
Licensee as of the date hereof or whose election as a member of the
board of directors of Licensee was previously so approved pursuant
to this clause (ii).
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"Person" shall mean an individual, a corporation, a limited
liability company, a partnership, an association, a trust or other
entity or organization, including a government or political
subdivision or an agency or instrumentality thereof.
"Real Estate Business" shall mean (i) any business activities
conducted by Licensee so long as Licensee remains qualified as a
"real estate investment trust" under Section 856 the Internal
Revenue Code of 1986, as amended, and (ii) such business as is
consistent with and limited to the description of the business of
Licensee contained in the prospectus forming a part of the
Registration Statement on Form S-11 (No. 333-50822), as amended,
filed by Licensee with the Securities and Exchange Commission
pursuant to the Securities Act of 1933, as amended.
II.
GRANT
OF LICENSE
A.
Licensor grants to
Licensee a non-exclusive, royalty free right and license to use the
Inland Name, together with the goodwill associated therewith,
solely in connection with the Real Estate Business. Use of the
Inland Name by Licensee shall comply with the terms and conditions
of this Agreement.
B.
Licensor grants to
Licensee an exclusive, royalty-free right and license to use the
IRRETI Marks, together with the goodwill associated therewith,
solely in connection with the Real Estate Business. Use of the
IRRETI Marks by Licensee shall comply with the terms and conditions
of this Agreement. Licensor shall be permitted to use the IRRETI
Marks, consistent with Licensor's past practices and the use
standards applicable to Licensee, (i) if such use may benefit
Licensee in Licensor's general marketing programs, or (ii) in
connection with the provision of services by Affiliates of Licensor
to Licensee.
C.
Licensor grants to
Licensee a non-exclusive, royalty-free right and license to use the
Inland Logo, together with the goodwill associated therewith,
solely for the purpose of sublicensing such mark to Licensee's
wholly-owned property managers for use by said managers solely in
connection with the Real Estate Business and in compliance with the
terms and conditions of this Agreement.
D.
Licensee shall be
permitted to sub-license the Inland Name and the IRRETI Marks,
subject to the terms and conditions of this Agreement, solely for
use in connection with the Real Estate Business, (1) to any direct
or indirect wholly-owned Affiliate of Licensee, (2) to any
Affiliate of Licensee other than a direct or indirect wholly-owned
Affiliate of Licensee with the prior written consent of Licensor
(which shall not be unreasonably conditioned, withheld or delayed),
and (3) to any Person that is not an Affiliate of Licensee with the
prior written consent of Licensor (in its sole discretion)
(collectively, and together with Licensee's wholly-owned property
managers who are granted sublicenses pursuant to IIC. herein, the
"Sublicensees").
E.
Notwithstanding any
provisions to the contrary herein, Licensee agrees that all
sublicenses granted pursuant to the provisions set forth in IIC.
and IID. herein shall be for a term of one (1) year and, if
Licensee and Sublicensee choose to renew such sublicense, shall be
automatically renewable for additional one (1) year term(s),
provided that, at the time of such renewal, Sublicensee is an
Affiliate of Licensee. If Sublicensee is not an Affiliate of
Licensee at the time of such attempted renewal, Licensee shall
provide Licensor with thirty (30) days' written notice of
Licensee's intent to renew such sublicense. If Licensor does not
object (in its sole discretion) to Licensee's written intentions to
renew such sublicense within said thirty (30) day period, such
sublicense shall be deemed renewed. Licensee shall promptly provide
written notice to Licensor of the name of each new Sublicensee and
shall inform Licensor whether such Sublicensee is an Affiliate of
Licensee and, if so, whether it is a direct or indirect
wholly-owned Affiliate of Licensee. Upon Licensor's request from
time to time, Licensee shall deliver to Licensor a complete list of
all Sublicensees. Licensee covenants and agrees that use of the
Trademarks by each Sublicensee shall comply with the terms and
conditions of this Agreement and that Licensee shall enter into a
written agreement with each Sublicensee which shall incorporate
terms and obligations which are at least as restrictive as those
set forth herein. Licensee shall provide Licensor with copies of
each and every such agreement upon request. Licensee shall be
responsible for each Sublicensee's use of the Trademarks and, as
such, Licensee shall be deemed to be in breach of this Agreement to
the extent the actions of a Sublicensee would constitute a breach
of this Agreement (subject to any and all cure periods granted
herein). Under no circumstances may any Sublicensee license any of
the Trademarks to another Person.
F.
Licensor hereby reserves
any and all rights not expressly and explicitly granted in this
Agreement including, but not limited to, Licensor's right to
authorize or license use of any of the Inland Marks or any other
trademarks, designs, domain names, trade names, names or
designations which are the same, similar to (with the exception of
the IRRETI Marks) or incorporate any of the Inland Marks, 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
any of the Inland Marks or any other trademarks, designs, domain
names, trade names, names or designations which are the same,
similar to (with the exception of the IRRETI Marks) or incorporate
any of the Inland Marks in any geographic territory and in any
language. For the avoidance of doubt, it is acknowledged and agreed
that any trademarks or designs of a different color than the Blue
Ball Logo shall not be deemed to be the same or similar to the Blue
Ball Logo.
III.
OWNERSHIP OF
THE TRADEMARKS
A. The
Trademarks are owned solely and exclusively by Licensor, and
neither Licensee nor its Sublicensees has any further right, title
or interest therein, except for the limited rights specifically
granted herein.
B. Licensee
recognizes the significant value of the goodwill associated with
the Trademarks, and (i) accepts that Licensor owns exclusive right,
title and interest in and to the Trademarks and any and all
goodwill pertaining thereto (including, without limitation, any
trademark applications and/or registrations therefor); (ii) agrees
that it will not directly or indirectly challenge the ownership or
validity of, or otherwise impair, any intellectual property rights
of Licensor in and to the Trademarks, or Licensor's ownership
thereof, nor may it assist others in doing so, and (iii) agrees
that all use of the Trademarks 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
Trademarks other than the right to use the Trademarks in accordance
with this Agreement. Except as permitted in Subparagraph C below,
Licensee agrees not to seek registration of the Trademarks, or any
trademarks, designs, domain names, trade names, names or
designations that would be an infringement upon the Trademarks,
with any domestic or foreign governmental or quasi-governmental
authority.
C. Licensor
or its Affiliates may file trademark applications to protect the
IRRETI Marks, but Licensor is not required to do so, nor is
Licensor required to renew or maintain registrations for the IRRETI
Marks; provided , however , that if Licensor or its
Affiliates should elect not to maintain or renew registration of
any of the IRRETI Marks or shall fail to commit to do so within
five (5) business days following delivery of written notice by
Licensee thereof (which commitment Licensor or its Affiliates shall
promptly pursue), Licensee shall have the right to effect
registration of the IRRETI Marks in its own name and for its own
benefit. Licensor shall file trademark applications to protect the
Inland Marks and shall maintain such registrations, to the extent
permitted under trademark law. Licensee agrees to assist Licensor,
at Licensor's request and expense, in the procurement and
maintenance of any protection of Licensor's rights in the
Trademarks including, without limitation, in the prosecution of
trademark applications for the Trademarks in Licensor's name.
IV. USE
OF THE TRADEMARKS
A. In
connection with its permitted use of the Trademarks, Licensee shall
not represent that it has any interest in the Trademarks other than
a license pursuant to this Agreement, and Licensee specifically
acknowledges that its permitted use of the Trademarks shall not
create in the Licensee any right, title or interest in the
Trademarks other than pursuant to this Agreement.
B. Without
detracting from the generality of the foregoing, it is agreed and
understood by Licensee that Licensee does not have permission to,
without the express written consent of Licensor: (1) except as
otherwise provided herein, transfer, sell or assign any right
granted by this Agreement, or (2) modify any of the Trademarks in
any manner whatsoever, except as set forth in the Usage Guidelines
(defined below). Licensee further acknowledges and agrees that
neither it nor any Sublicensee has the right to use the Trademarks
in connection with products or services outside of the Real Estate
Business.
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
Trademarks. Licensee therefore agrees to maintain a standard of
quality in its conduct of the Real Estate Business and its use of
the Trademarks in connection therewith commensurate with, or better
than, the high standard maintained by Licensor prior to the
Effective Date, and agrees to conduct its Real Estate Business so
as not to impair Licensor's reputation or goodwill in connection
with the Trademarks. Licensee's use of the Trademarks shall comply
with all applicable statutes, laws, ordinances, rules and
regulations. To ensure that Licensor has the ability to protect the
goodwill associated with the Trademarks and the validity and
integrity of the Trademarks, and to prevent any deception to the
public, Licensee shall, and shall cause each Sublicensee to, use
the Trademarks in a manner consistent with Licensor's standard
usage guidelines (the "Usage Guidelines") prescribed by Licensor
from time to time and applied to all licensees of the Inland Marks,
provided that Licensor shall apply the Usage Guidelines uniformly
as to all licensees of the Inland Marks (including Licensee). Any
modifications in the Usage Guidelines shall be delivered to
Licensee in writing.
D. To
determine whether Licensee is complying with this Agreement,
Licensor shall have the right to periodically monitor Licensee's
and each Sublicensee's use of the Trademarks. Upon request by
Licensor, Licensee shall provide Licensor with representative
samples of each such use including, but not limited to, use on
signage, marketing materials, letterhead, business cards, flags,
checks, documents, promotional items, press releases and on the
Internet. If Licensor determines that Licensee or any Sublicensee
is using any of the Trademarks improperly and/or in a way that does
not meet any standards or requirements set forth herein, Licensor
shall notify Licensee, and Licensee shall remedy or shall cause the
Sublicensee user to remedy, the improper use within thirty (30)
business days following receipt of such notice from Licensor. In
addition, if Licensor reasonably determines that Licensee or any of
its Sublicensees are engaging in conduct or activities that dilute
or damage the value of the goodwill associated with the Trademarks,
in each case, Licensor shall provide written notice of such conduct
or a
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