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Honeywell International / American Building Control - Trademark & Copyright License Agreement
TRADEMARK AND COPYRIGHT LICENSE AGREEMENT
This Trademark and Copyright License Agreement (this "Agreement") is made as of this 20th day of December, 2002 ("Agreement Date"), between ULTRAK, INC., Inc., a Delaware corporation, a corporation organized under the laws of Delaware ("Licensor"), and PITTWAY CORPORATION, a corporation organized under the laws of Delaware ("Licensee") and a wholly-owned subsidiary of Honeywell International Inc., a Delaware corporation ("Honeywell").
WHEREAS, Licensee, together with certain other entities on the one hand, and Honeywell on the other, are parties to that certain Asset Purchase Agreement, dated as of August 8, 2002 (as amended to date, the "Asset Purchase Agreement"), pursuant to which Honeywell acquired certain assets of Licensor;
WHEREAS, Licensor has been using the ULTRAK trademark and other trademarks, trademark applications, registrations and renewals therefor identified in Schedule A (the "Trademarks") in connection with its business; and
WHEREAS, Licensor owns certain copyrights related to the Trademarks (the "Copyrights" and, together with the Trademarks, the "Licensed Property") in connection with its business; and
WHEREAS, Licensee desires to acquire the right to use the Licensed Property in connection with the certain businesses in certain geographic locations as described herein pursuant to the terms and conditions set forth below.
NOW, THEREFORE, in consideration of the foregoing promises, the covenants set forth below and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Licensor agrees to and hereby does license the Licensed Property to Licensee as follows:
1. Definitions.
Capitalized terms herein without definition have the meanings set forth in the Asset Purchase Agreement.
2. Grant.
a. Subject to the terms and conditions of this Agreement, Licensor hereby grants to Licensee, an exclusive (even as to Licensor), perpetual, irrevocable, fully paid-up, worldwide, royalty-free license to use the Trademarks in connection with the CCTV Business and on or in relation to the sale of goods and services in connection with the CCTV Business.
b. Subject to the terms and conditions of this Agreement, Licensor hereby grants to Licensee, an exclusive (even as to Licensor), perpetual, irrevocable, fully paid-up, royalty-free license to use the Trademarks in connection with the Business in the Non-U.S
Jurisdictions and on or in relation to the sale of goods and services in connection with the Business in the Non-U.S. Jurisdictions.
c. Subject to the terms and conditions of this Agreement, Licensor hereby grants Licensee an exclusive, perpetual, fully paid-up, royalty-free license to use, modify, reproduce, prepare derivative works of, distribute and exercise all other rights in and to the Copyrights worldwide in connection with the CCTV Business and in the Non-U.S. Jurisdictions in connection with the Business in any and all media (including without limitation electronic form, printed form or otherwise) whether now known or known in the future.
d. This Agreement expressly contemplates a license under the terms described herein of all applications, registrations, renewals and extensions of the Licensed Property.
3. Option to Assign
a. Exercise of Option. Licensor shall have the option to assign any item of Licensed Property to Licensee upon written notice of the exercise thereof to Licensee identifying the item of Licensed Property to be so assigned, such assignment for the payment of no additional consideration by Licensee, which option shall be exercisable by Licensor commencing on the Agreement Date and continuous thereafter.
b. Effect. Such assignment shall be effective upon receipt of notice by Licensee and, upon such receipt, all right, title, and interest in and to the item of Licensed Property identified in the notice, including all applications, registrations, and renewals therefor, together with all translations, adoptions, derivations, and combinations thereof, and any and all goodwill associated with such item of Licensed Property and the business or portion thereof pertaining to any such item of Licensed Property, shall be assigned, transferred, and conveyed to Licensee, its successors and assigns, together with all statutory and common law rights attaching thereto, including the right to sue for and recover damages in respect of any previous infringements thereof provided however that no assignment, transfer and conveyance of any liability relating to or in connection with the use by Licensor of, or acts taken by Licensor in connection with, the item of Licensed Property prior to the assignments shall be transferred to Licensee and Licensor shall indemnify, defend and hold harmless Licensee and Licensee Agents (as defined in Section 7(a)) from any claims, demands, suits, actions, losses, costs, damages, costs of defense and reasonable attorneys fees that Licensee or Liensee Agents may suffer or incur as the result of the foregoing. The parties shall execute any documents necessary to effectuate the terms of this Section 3(b). Upon an assignment of an item of Licensed Property pursuant to this Section 3, such assigned item of Licensed Property shall no longer constitute Licensed Property subject to this Agreement.
4. Representations and Warranties.
a. Licensor represents and warrants as follows, as of the date hereof:
(i) Licensor owns or has a valid right to license each item of the Licensed Property.
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(ii) Licensor has taken or caused to be taken reasonable and prudent steps to protect Licensor's rights in and to, and the value, validity and enforceability of, the Licensed Property.
(iii) To Licensor's knowledge after commercially reasonable due inquiry, (a) no third party has any right to use any of the Trademarks either in identical form or in such near resemblance thereto as to be likely, when applied to the goods or services of any such person, to cause confusion as to the source of such goods or services; (b) the use of any of the Trademarks in connection with the goods and services set forth in Licensor's registrations and as used in connection with goods and services in the CCTV Business throughout the world and in the Business in the Non-U.S. Jurisdictions does not constitute an infringement of, conflict with, or otherwise violate, the rights of any third party; and (c) the use of any of the Copyrights as permitted in Section 2(c) of this Agreement does not constitute an infringement of, conflict with, or otherwise violate, the rights of any third party.
(iv) Neither Licensor nor any of its officers, directors, shareholders, agents or Affiliates have any commitment or legal obligation, absolute or contingent, to any other person or firm other than the Licensee which limits or restricts the right of Licensor to license any of the Licensed Property in the manner specified in this Agreement, and
(v) Licensor is not a defendant to any action, suit, investigation, or proceeding relating to, or otherwise has been notified of, any claim that Licensor's use of the Licensed Property in connection with its business infringes the rights of any third person. To Licensor's knowledge, there is no infringement by any third person of any of the Licensed Property.
b. The representations and warranties furnished by Licensor in this Agreement (including in the schedules attached hereto) are accurate, correct and complete in all respects and do not contain any untrue statement of fact or, when considered in the context in which presented, omit to state a fact necessary to make the statements and information contained herein not misleading.
5. Quality Control/Trademark and Copyright Notice
a. Licensee agrees that at all times during the term of this Agreement and any extensions thereof, its services and goods shall be of such standard and quality as to be adequate and suited to the protection of the Trademarks and the goodwill associated therewith (the "Goodwill"). Any use of the Trademarks in substantially the same form as they are currently used by Licensor or its Affiliates (which, for avoidance of doubt, includes without limitation use of the Trademarks with Licensee's or its Affiliates' corporate names, trade names, logos and trademarks) or in connection with the goods manufactured to substantially the same standards and quality as are currently in force by Licensor or its Affiliates is hereby deemed approved without further submission being required. If Licensee intends to make any changes that would reasonably be expected to adversely affect the goodwill associated with the Trademarks, Licensee shall, before using the Trademarks or providing the goods and services, obtain the prior approval of Licensor by submitting representative samples of such modified trademarks or goods, or materials
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associated with such services, to Licensor. Any such proposed use submitted to Licensor shall be deemed approved upon the passage, without written objection, of ten (10) days after submission. Licensor shall have, at reasonable times and on reasonable notice, the right to inquire regarding the services provided by Licensee and the right to inspect Licensee's use of the Trademarks and the manufacture of the goods on which the Trademarks are used or proposed to be used in order to carry out appropriate quality control.
b. The goods or packaging on which the Trademarks or Copyrights are used shall, where reasonable, be marked to indicate that the Trademarks and Copyrights are trademarks or copyrights of Licensor, as the case may be, and are being used by Licensee pursuant to a license granted by Licensor.
6. Licensed Property Ownership
a. Licensee agrees that the Trademarks and the Goodwill are and remain Licensor's exclusive property, and understands that it acquires no right, title, or interest in the Trademarks or the Goodwill other than the rights described by the express terms of this Agreement. Licensee agrees that any and all rights that may be acquired by the use of the Trademarks by Licensee shall inure to the sole benefit of Licensor, provided that all rights relating to Licensee's marks shall inure solely to the benefit of Licensee. Licensee shall not at any time do or suffer to be done any act which would impair materially Licensor's proprietary rights in or to, or infringe, the Trademarks or the Goodwill.
b. Licensee agrees that the Copyrights are and remain Licensor's exclusive property, and understands that it acquires no right, title or interest in the Copyrights other than the rights described by the express terms of this Agreement. Licensee shall not at any time do or suffer to be done any act which would impair materially Licensor's proprietary rights in or to, or infringe, the Copyrights. It is understood that any derivative work or modification of the Copyrights that is created by Licensee is owned by Licensee unless otherwise agreed in writing.
c. Licensee agrees not to challenge the validity of the Licensed Property. Licensor shall not, at any time, do or suffer to be done any act or thing which may adversely affect or impair the value of or tarnish the Licensed Property.
d. Licensor, at its own expense, shall execute, file and record all documents to maintain, preserve and renew all applications of and registrations for the Licensed Property that are in existence at the time of the Agreement Date in any country or other jurisdiction in the world, and take any other action that may be required to maintain the value, validity and enforceability of the Licensed Property. At Licensee's expense and request, Licensor shall, within ten (10) business days of receipt, execute any documents reasonably requested by Licensee to file, maintain, preserve and renew all applications of and registrations for, the Licensed Property in the name of Licensor in any country or other jurisdiction in the world where the Licensed Property is not registered and no application therefor is pending, or where other action may be required to maintain protection of the Licensed Property, including the recordation of this Agreement. Licensor shall not intentionally take, or omit to take, any action which may reasonably be expected to jeopardize the use, value, validity, or enforceability of the Licensed Property
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anywhere in the world or where the Licensed Property is used by Licensee. Licensor further shall not allow any application for or registration of the Trademarks in any country to lapse, expire, be cancelled or otherwise become abandoned or lose effect without first receiving written confirmation from Licensee that such application or registration in question is no longer of interest.
7. Infringement
a. Both parties agree promptly to give notice in writing to the other party of any infringement or suspected or threatened infringement by a third party of the Licensed Property which it learns of at any time during the term of this Agreement.
b. Upon learning of any such potential infringement under Section 7(a), Licensor may, but shall not be obligated to, take whatever action it deems necessary or desirable to protect or enforce its and Licensee's rights to the Licensed Property, including the filing and prosecution of litigation, opposition or cancellation proceedings, the institution of federal or state proceedings and the right to settle, subject to Licensee's approval, which shall not unreasonably be withheld. In the event that Licensor takes such action, Licensee shall provide, at Licensor's expense, reasonable cooperation to Licensor in the execution of any documents or other similar assistance required for Licensor to take such steps, including joining Licensor as a party in any litigation where reasonably necessary for the conduct thereof. Licensor agrees to notify Licensee in writing of Licensor's decision and course of action as soon as reasonably possible following the receipt of any notice from the Licensee under Section 7(a) above.
c. In the event that Licensor elects not to exercise its rights under Section 7(b) or fails to take action under Section 7(b) within 30 days of learning or receiving notice of any infringement or suspected or threatened infringement, Licensee shall have the right, but not the obligation, at its sole expense and upon prior written notice to Licensor, to take such action as it deems necessary for the protection of its and Licensor's rights in and to the Licensed Property, including the institution of federal and state proceedings and the right to settle, subject to Licensor's approval, which shall not be unreasonably withheld. In the event Licensee takes any action permitted under this Section 7(c), Licensor shall provide, at Licensee's expense, reasonable cooperation to Licensee in the execution of any documents or other similar assistance required for Licensee to take such steps, including joining Licensee as a party in any litigation where reasonably necessary for the conduct thereof. If Licensee decides not to take any action with respect to such infringement to enforce its rights pursuant to this Section, it shall promptly notify Licensor of such decision.
d. Nothing in this Agreement shall be construed to prevent Licensor and Licensee from taking action jointly in any infringement suit or other action with respect to the Licensed Property.
e. The party that takes action against an unauthorized third party use (unless the action is taken jointly) shall receive and retain any and all funds recovered in such an action, including without limitation, the settlement thereof, after all parties are reimbursed for all out-of-pocket costs and expenses incurred by them in connection with such action. If the action is taken
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jointly, the parties will share the expenses equally and, after payment of expenses, the parties shall share equally any and all funds recovered in an action, including without limitation, the settlement thereof.
8. Indemnification
a. Without limiting its indemnification obligations under the Asset Purchase Agreement, Licensor shall indemnify, defend and hold harmless Licensee, Licensee's Affiliates and their officers, employees, servants or agents (collectively, the "Licensee Agents") from and against all claims, demands, suits, actions, losses, costs, damages, costs of defense and reasonable attorneys fees that Licensee or Licensee Agents may suffer or incur as the result of (i) any third party claim that the Licensed Property, when used as permitted by this Agreement, infringes any rights of such third party, (ii) any liability to any third party from loss, damage or injury to persons or property in any manner for the use of or sale of products bearing the Trademarks or associated Copyrights applied or used by Licensor, and (iii) any breach by Licensor of any term or condition of this Agreement.
b. Licensee shall indemnify, defend and hold harmless Licensor, Licensor's Affiliates and their officers, employees, servants or agents (collectively, the "Licensor Agents") from and against all claims, demands, suits, actions, losses, costs, damages, costs of defense and reasonable attorneys fees that Licensor or Licensor Agents may suffer or incur as the result of (i) any liability to any third party from loss, damage or injury to persons or property in any manner for the use of or sale of products bearing the Trademarks or associated Copyrights applied or used by Licensee, and (ii) any breach by Licensee of any term or condition of this Agreement; provided however that nothing in this Section 8(b) shall be construed as imposing an indemnification obligation on Licensee for any claims for which Licensor indemnifies Licensee, including without limitation Licensee's obligations under Section 8(a) or under the Asset Purchase Agreement.
c. Any party making a claim for indemnification hereunder (an "Indemnitee") shall notify the indemnifying party (an "Indemnitor") of the claim in writing promptly after receiving written notice of any action, lawsuit, proceeding, investigation or other claim against it (if by a third party) or discovering the liability, obligation or facts which may reasonably be expected to give rise to such claim for indemnification, describing the claim, the amount thereof (if known and quantifiable), and the basis thereof (a "Notice of Claim"), provided that the failure to so notify an Indemnitor shall not relieve the Indemnitor of its obligations hereunder except to the extent such failure shall have actually prejudiced the Indemnitor.
d. With respect to any third party action, lawsuit, proceeding, investigation or other claim which is the subject of a Notice of Claim (a "Third Party Claim") an Indemnitor shall be entitled to assume and control (with counsel of its choice) the defense of such Third Party Claim at the Indemnitor's expense and at its option by sending written notice of its election to do so within fifteen (15) days after receiving the Notice of Claim from the Indemnitee as aforesaid; provided, however, that:
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