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Sunoco Logistics Partners / Sunoco - Intellectual Property & Trademark License Agreement
Exhibit 10.8
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INTELLECTUAL PROPERTY AND TRADEMARK
LICENSE AGREEMENT
among
SUNOCO, INC.
SUNOCO, INC. (R&M)
SUNMARKS, INC.
SUNOCO LOGISTICS PARTNERS L.P.
SUNOCO LOGISTICS PARTNERS OPERATIONS L.P.
SUNOCO PARTNERS MARKETING & TERMINALS L.P.
SUNOCO PIPELINE L.P.
and
SUNOCO PARTNERS LLC
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INTELLECTUAL PROPERTY AND TRADEMARK
LICENSE AGREEMENT
THIS INTELLECTUAL PROPERTY AND TRADEMARK LICENSE AGREEMENT ("Agreement") is entered into on, and effective as of, the Closing Date (as defined herein) among Sunoco, Inc., a Pennsylvania corporation ("Sunoco"), on behalf of itself and the other Sunoco Entities (as defined herein), Sunoco, Inc. (R&M), a Pennsylvania corporation ("Sunoco R&M"), Sunmarks, Inc., a Delaware corporation ("Sunmarks"), Sunoco Logistics Partners L.P., a Delaware limited partnership (the "Partnership"), Sunoco Logistics Partners Operations L.P., a Delaware limited partnership (the "Operating Partnership"), Sunoco Partners Marketing & Terminals L.P., a Texas limited partnership ("Sunoco Marketing"), Sunoco Pipeline L.P., a Texas limited partnership ("Sunoco Pipeline"), and Sunoco Partners LLC, a Pennsylvania limited liability company ("Sunoco Partners LLC"). The above-named entities are sometimes referred to in this Agreement each as a "Party" and collectively as the "Parties."
R E C I T A L S:
1. The Parties desire by their execution of this Agreement to evidence their understanding, as more fully set forth in Article II, with respect to licenses regarding Existing Intellectual Property (as defined herein);
2. The Parties further desire to set forth their understanding, as more fully set forth in Article II, regarding the ownership rights with respect to the Intellectual Property Rights (as defined herein) invented, created, authored, disclosed, or developed by Sunoco Partners LLC and its Affiliates in connection with the providing of Services to the Partnership Group;
3. Licensors (as defined herein) own all right, title and interest in and to the Marks (as defined herein), and the goodwill associated with the Marks;
4. Licensors and/or their Affiliates (as defined herein) have used the Marks in connection with numerous products and services, including gasoline, kerosene, lubricating oils, greases, storage batteries, antifreeze, brake fluid, automotive service station services, and heating oil; and
5. Licensees (as defined herein) desire to obtain, and Licensors agree to permit, a license to use the Marks, all in accordance with the terms and conditions of this Agreement.
ARTICLE I
Definitions
1.1 Definitions.
(a) As used in this Agreement, the following terms shall have the respective meanings set forth below
"Affiliate" is defined in the Partnership Agreement.
"Applicable Period" means the period commencing on the Closing Date
and terminating on the date on which the Partnership ceases to be an
Affiliate of Sunoco.
"Approved Uses" is defined in Section 2.4.
"Assets" means all assets conveyed, contributed, or otherwise
transferred by the Sunoco Entities to the Partnership Group prior to or on
the Closing Date and any assets acquired by the Partnership Group pursuant
to the exercise of the purchase options granted under Article VI of the
Omnibus Agreement.
"Closing Date" means the date of the closing of the Partnership's
initial public offering of Common Units.
"Common Units" is defined in the Partnership Agreement.
"Confidential Information" means all confidential information in
tangible or intangible form, including but not limited to, process design,
equipment drawings, technical specifications, processes, trade secrets,
process measurements, technical reports, analyses, tests, plans, drawings,
models, ideas, schemes, correspondence, communications, lists, manuals,
computer programs, software, techniques, methods, processes, routines,
systems, procedures, practices, operations, modes of operation, apparatus,
equipment, business opportunities, know-how, customer and supplier lists,
and methods of combining information. Confidential Information shall not
include, and all obligations regarding Confidential Information shall not
apply to, information that:
(i) was already known by (as established by dated documentation)
Recipient at the time of the receipt of the Confidential Information by
Recipient from the Disclosing Party;
(ii) is or becomes available to the industry (e.g., available in the
technical literature, databases, or the like) or is in, or subsequently
enters, the public domain other than as a result of a disclosure by the
Recipient in breach of this Agreement;
(iii) is received by the Recipient from a third party unless the
Recipient is aware that such third party was subject to a confidentiality
obligation to the Disclosing Party with respect to such Confidential
Information;
(iv) is independently developed by a Person without access to the
Confidential Information provided by the Disclosing Party;
(v) was or is furnished by the Disclosing Party to a third party
without confidentiality restrictions; or
(vi) is approved for release by written authorization of the
Disclosing Party.
"Conflicts Committee" is defined in the Partnership Agreement.
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"Control" means the possession, directly or indirectly, of the power
to direct or cause the direction of the management and policies of a
Person, whether through ownership of voting securities, by contract, or
otherwise.
"Disclosing Party" is defined in Section 2.4.
"Drawings and Records" means all tangible, digital, or electronic
records related to the business and operations of Sunoco Pipeline and
Sunoco Marketing and their Affiliates, including but not limited to,
engineering drawings and files, right of way files, construction records,
operating manuals, technical data, process designs, flow diagrams, maps,
schematics, databases, operating records, laboratory analysis, engineering
studies, flow diagrams, and environmental, health and safety records.
"Existing Intellectual Property" means the Intellectual Property
Rights of Sunoco Pipeline and Sunoco Marketing as of the Closing Date as a
result of the transactions contemplated by the Partnership Agreement. The
"Existing Intellectual Property" shall not include any trademarks, service
marks, trade names, domain names, registrations and applications for
registrations for the foregoing.
"General Partner" is defined in the Partnership Agreement.
"Intellectual Property Rights" means the following foreign and
domestic intellectual property rights, both statutory and common law
rights, if applicable: (a) all trademarks, service marks, trade names,
domain names, registrations and applications for registrations for the
foregoing; (b) patents, pending patent applications, and patents
subsequently issuing from patent applications; (c) copyrights and
registrations and applications for registrations thereof; and (d)
Confidential Information.
"Licensees" means the Partnership Group and the General Partner and
its Affiliates.
"Licensor Approval" is defined in Section 3.2.
"Licensors" means Sunoco and Sunmarks.
"Limited Partner" is defined in the Partnership Agreement.
"Marks" means all right, title and interest in and to the trademarks
and trade names, or domain names, SUNOCO, and variations thereof, and
SUNOCO DIAMOND DESIGN, and variations thereof, as shown on Schedule I to
this Agreement.
"New Marketing Intellectual Property" means any Intellectual Property
Rights invented, created, authored, disclosed, or developed by Sunoco
Partners LLC and its Affiliates in connection with the providing of
Services to the Partnership Group regarding the assets of Sunoco Marketing.
The "New Marketing Intellectual Property" shall not include Intellectual
Property Rights invented, created, authored, disclosed, or developed by
Sunoco Partners LLC and its Affiliates in their performance of services for
the Sunoco Entities. In addition, the "New Marketing Intellectual Property"
shall not include any
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trademarks, service marks, trade names, domain names, registrations and
applications for registrations for the foregoing. Finally, the parties
expressly recognize that certain Intellectual Property Rights may be both
New Marketing Intellectual Property and New Pipeline Intellectual Property
to the extent that such Intellectual Property Rights are used by both
Sunoco Pipeline and Sunoco Marketing; with respect to such Intellectual
Property Rights, both Sunoco Pipeline and Sunoco Marketing shall jointly
own all right, title, and interest in and to such Intellectual Property
Rights.
"New Pipeline Intellectual Property" means any Intellectual Property
Rights invented, created, authored, disclosed, or developed by Sunoco
Partners LLC and its Affiliates in connection with the providing of
Services to the Partnership Group regarding the assets of Sunoco Pipeline.
The "New Pipeline Intellectual Property" shall not include Intellectual
Property Rights invented, created, authored, disclosed, or developed by
Sunoco Partners LLC and its Affiliates in their performance of services for
the Sunoco Entities. In addition, The "New Pipeline Intellectual Property"
shall not include any trademarks, service marks, trade names, domain names,
registrations and applications for registrations for the foregoing.
Finally, the parties expressly recognize that certain Intellectual Property
Rights may be both New Marketing Intellectual Property and New Pipeline
Intellectual Property to the extent that such Intellectual Property Rights
are used by both Sunoco Pipeline and Sunoco Marketing; with respect to such
Intellectual Property Rights, both Sunoco Pipeline and Sunoco Marketing
shall jointly own all right, title, and interest in and to such
Intellectual Property Rights.
"Omnibus Agreement" means that certain Omnibus Agreement, dated as of
the Closing Date, among Sunoco, the General Partner, the Partnership, the
Operating Partnership and certain other parties.
"Partnership Agreement" means the First Amended and Restated Agreement
of Limited Partnership of Sunoco Logistics Partners L.P., dated as of the
Closing Date, as such agreement is in effect on the Closing Date, to which
reference is hereby made for all purposes of this Agreement.
"Partnership Group" means the Partnership, the Operating Partnership
and any Subsidiary of any such Person, treated as a single consolidated
entity.
"Partnership Group Member" means any member of the Partnership Group.
"Person" means an individual or a corporation, limited liability
company, partnership, joint venture, trust, unincorporated organization
association, government agency or political subdivision thereof or other
entity.
"Recipient" is defined in Section 2.4.
"Representative" is defined in Section 2.4.
"Services" means all services provided by Sunoco Partners LLC and its
Affiliates for the benefit of the Partnership Group under the Partnership
Agreement, the Omnibus Agreement and otherwise.
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"Sunoco Entities" means Sunoco and any Person controlled, directly or
indirectly, by Sunoco other than the Partnership Group or the General
Partner; and "Sunoco Entity" means any of the Sunoco Entities.
"Subsidiary" means, with respect to any Person, (a) a corporation of
which more than 50% of the voting power of shares entitled (without regard
to the occurrence of any contingency) to vote in the election of directors
or other governing body of such corporation is owned, directly or
indirectly, at the date of determination, by such Person, by one or more
Subsidiaries of such Person or a combination thereof, (b) a partnership
(whether general or limited) in which such Person or a Subsidiary of such
Person is, at the date of determination, a general or limited partner of
such partnership, but only if more than 50% of the partnership interests of
such partnership (considering all of the partnership interests of the
partnership as a single class) is owned, directly or indirectly, at the
date of determination, by such Person, by one or more Subsidiaries of such
Person, or a combination thereof, or (c) any other Person (other than a
corporation or a partnership) in which such Person, one or more
Subsidiaries of such Person, or a combination thereof, directly or
indirectly, at the date of determination, has (i) at least a majority
ownership interest or (ii) the power to elect or direct the election of a
majority of the directors or other governing body of such Person.
"Territory" is defined in Section 3.1.
"Uses" is defined in Section 3.1.
ARTICLE II
Intellectual Property
2.1 Assignments and Grants of Licenses.
(a) Existing Intellectual Property License to Sunoco Partners LLC and its Affiliates. Subject to the terms and conditions herein, Sunoco Pipeline and Sunoco Marketing hereby grant to Sunoco Partners LLC and its Affiliates a license and right to use, display, perform, copy, prepare derivative works, sell, offer for sale, and modify the Existing Intellectual Property in furtherance of Sunoco Partners LLC's and its Affiliates' performance of Services to the Partnership Group.
(b) Assignment of New Pipeline Intellectual Property and New Marketing Intellectual Property. With respect to the New Pipeline Intellectual Property, Sunoco Partners LLC and its Affiliates hereby assign, sell, transfer, and convey to Sunoco Pipeline, and Sunoco Pipeline hereby accepts such assignment, sale, transfer and conveyance of, all of Sunoco Partners LLC's and its Affiliates' right, title and interest in and to all New Pipeline Intellectual Property. With respect to the New Marketing Intellectual Property, Sunoco Partners LLC and its Affiliates hereby assign, sell, transfer, and convey to Sunoco Marketing, and Sunoco Marketing hereby accepts such assignment, sale, transfer and conveyance of, all of Sunoco Partners LLC's and its Affiliates' right, title and interest in and to all New Marketing Intellectual Property.
(c) Third Party Intellectual Property Rights. With respect to any licenses to Intellectual Property Rights of third parties granted after the Closing Date, the Partnership Group
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shall undertake to ensure any such licenses include the license and right of Sunoco Partners LLC and its Affiliates to use, display, perform, copy, prepare derivative works, sell, offer for sale, and modify such Intellectual Property Rights to the extent necessary for the purposes of providing Services to the Partnership Group.
(d) Cross-Licenses of other Intellectual Property Rights Used in the Services. With respect to any Intellectual Property Rights (other than any trademarks, service marks, trade names, domain names, registrations and applications for registrations for the foregoing) of Sunoco Partners LLC and its Affiliates that are not Existing Intellectual Property, New Pipeline Intellectual Property or New Marketing Intellectual Property, but are used by Sunoco Partners LLC and its Affiliates in the providing of Services to the Partnership Group or embodied in any Drawings and Records authored or created by Sunoco Partners LLC and its Affiliates in the providing of Services to the Partnership Group, Sunoco Partners LLC and its Affiliates hereby grant to Sunoco Pipeline and Sunoco Marketing a royalty-free, perpetual, irrevocable license and right to use, display, perform, copy, prepare derivative works, sell, offer for sale, and modify such Intellectual Property Rights in connection with the businesses of Sunoco Pipeline and Sunoco Marketing. Similarly, Sunoco Pipeline and Sunoco Marketing grant to Sunoco Partners LLC and its Affiliates a royalty-free, perpetual, irrevocable license and right to use, display, perform, copy, prepare derivative works, sell, offer for sale, and modify the Existing Intellectual Property, New Marketing Intellectual Property, and New Pipeline Intellectual Property Rights, including the right to sublicense, in connection with the providing of services to third parties other than the Partnership Group, including the Sunoco Entities. This license includes the right to use such Intellectual Property Rights in any tangible, digital, or electronic records authored or created by Sunoco Partners LLC and its Affiliates in the providing of services to third parties other than the Partnership Group, including the Sunoco Entities.
2.2 Execution of Documents. Both during the term of this Agreement and thereafter, Sunoco Partners LLC and its Affiliates shall assist Sunoco Pipeline and Sunoco Marketing and each of their nominees at all times in the protection of all New Pipeline Intellectual Property and New Marketing Intellectual Property, both in the United States and all foreign countries, including but not limited to, the execution of all lawful oaths and all assignment documents requested by Sunoco Pipeline or Sunoco Marketing or each of their nominees in connection with: (a) the preparation, prosecution, issuance, and enforcement of any applications for United States or foreign letters patent, including divisions, continuations, continuations-in-part, reissues, and/or extensions thereof, and (b) the preparation, prosecution, issuance, and enforcement of any applications for United States or foreign copyrights in the United States and foreign countries.
2.3 Drawings and Records. Sunoco Pipeline and Sunoco Marketing retain title to all tangible and electronic or digital copies of the Drawings and Records, including all rights of copyright in and to such Drawings and Records. Sunoco Pipeline and Sunoco Marketing grant a royalty-free license to Sunoco Partners LLC and its Affiliates to retain, use, copy, or modify the Drawings and Records in furtherance of Sunoco Partners LLC's and its Affiliates' providing of Services to the Partnership Group. Sunoco Pipeline and Sunoco Marketing acknowledge and agree that Sunoco Partners LLC and its Affiliates must have access to, and must be able to use, the Drawings and Records of Sunoco Pipeline and Sunoco Marketing for the purposes of providing Services to the Partnership Group. Sunoco Pipeline and Sunoco Marketing agree to make available to Sunoco Partners LLC and its Affiliates after the Closing Date current and
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complete copies of all Drawings and Records. During the term of this Agreement, Sunoco Pipeline and Sunoco Marketing agree to make available or deliver, or to cause to be made available or delivered, to Sunoco Partners LLC and its Affiliates the Drawings and Records of Sunoco Pipeline and Sunoco Marketing. Sunoco Pipeline and Sunoco Marketing agree that Sunoco Partners LLC and its Affiliates may retain copies of the Drawings and Records during the term of this Agreement and after termination of this Agreement for documentation purposes only and to the extent reasonably necessary for purposes of exploiting any right or license reserved by a Sunoco Entity and the cross license granted in Section 2.1(d); provided, however, that Sunoco Partners LLC and its Affiliates shall not provide a copy of any Drawings and Records to any third party other than a Sunoco Entity, except as expressly allowed by this Agreement, or as expressly allowed in writing by the Partnership Group. Upon termination of this Article II, Sunoco Partners LLC and its Affiliates shall deliver to Sunoco Pipeline and Sunoco Marketing current and complete copies of all Drawings and Records.
2.4 Confidentiality.
(a) The Parties agree that this Agreement shall govern the confidentiality obligations regarding all disclosures of Confidential Information pursuant to which one Party (the "Disclosing Party") has disclosed Confidential Information to another Party (the "Recipient") under this Agreement. The Disclosing Party reserves its ownership rights, and any third party's ownership rights, in and to any Confidential Information disclosed under this Agreement. The Recipient hereby acknowledges and agrees that, except as expressly provided herein, the Recipient acquires no ownership interest in and to the Confidential Information of the Disclosing Party.
(b) The Disclosing Party and the Recipient agree that with respect to all disclosures of Confidential Information by a Disclosing Party to a Recipient, the Recipient agrees that it and its officers, directors, partners, employees, affiliates, agents, representatives, and outside auditors who have had or will have access to the Confidential Information (collectively, "Representatives"):
(i) will keep Confidential Information confidential and will not,
without the prior written consent of the Disclosing Party or as
allowed by this Agreement, disclose Confidential Information to third
parties; and
(ii) will not use Confidential Information other than as licensed
or contemplated under this Agreement ("Approved Uses"). Moreover,
Recipient agrees to transmit the Confidential Information only to such
of its Representatives who need to know the Confidential Information
for the sole purpose of assisting Recipient in Approved Uses, who are
informed of this Agreement, and who have agreed in writing to
obligations of confidentiality with the Recipient.
(c) If any portion of Confidential Information is required to be disclosed by subpoena, law, litigation, or similar legal process, or to a governmental regulatory agency or commission or securities exchange, the Recipient will promptly inform the Disclosing Party immediately of the existence, terms, and circumstances surrounding such request and before any such disclosure is required so as to allow the Disclosing Party to protect the Confidential
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Information. The Recipient will consult with the Disclosing Party on the advisability of taking legally-available steps to resist or narrow such request. The Disclosing Party shall thereafter seek to obtain a protective order, and the Recipient shall cooperate with the Disclosing Party in its efforts to obtain a protective order, to restrict access to, and any use or disclosure of, the Confidential Information.
(d) Upon the termination of the obligations of this Agreement with respect to an item of Confidential Information, the Recipient shall be free to use and disclose such item of information freely and without any obligation to the Disclosing Party.
(e) The terms of confidentiality under this Agreement shall not be construed to limit either Party's right to independently develop its own technology, technical solutions, engineering solutions, or know-how without the use of the other Party's Confidential Information. Notwithstanding anything to the contrary in this Agreement, neither Party will be restricted at any time by the other Party from utilizing any knowledge, skills, or experience of a general nature acquired as a result of this Agreement.
2.5 Reservation of Intellectual Property Rights Not Expressly Granted. Nothing in this Agreement shall be construed as conferring by implication, estoppel, or otherwise upon a licensee or assignee any license, assignment, or other right under the Intellectual Property Rights of a Party other than as expressly as set forth expressly herein.
2.6 Warranties; Disclaimers. NOTWITHSTANDING ANYTHING TO THE CONTRARY, SUNOCO PARTNERS LLC AND ITS AFFILIATES PROVIDE THE INTELLECTUAL PROPERTY RIGHTS ASSIGNED OR LICENSED UNDER ARTICLE II HEREIN, AND SUNOCO MARKETING AND SUNOCO PIPELINE PROVIDE THE INTELLECTUAL PROPERTY LICENSED UNDER ARTICLE II HEREIN, AS IS, WITHOUT ANY WARRANTY OF ANY KIND. SUNOCO PARTNERS LLC AND ITS AFFILIATES AND SUNOCO MARKETING AND SUNOCO PIPELINE DISCLAIM ANY AND ALL WARRANTIES, CONDITIONS OR REPRESENTATIONS (EXPRESS OR IMPLIED, ORAL OR WRITTEN) WITH RESPECT TO THE SUBJECT MATTER HEREOF, OR ANY PART THEREOF, INCLUDING ANY AND ALL IMPLIED WARRANTIES OF NON-INFRINGEMENT, MERCHANTABILITY OR FITNESS OR SUITABILITY FOR ANY PURPOSE (WHETHER THE PARTY KNOWS, HAS REASON TO KNOW, HAS BEEN ADVISED, OR IS OTHERWISE IN FACT AWARE OF ANY SUCH PURPOSE) WHETHER ALLEGED TO ARISE BY LAW, BY REASON OF CUSTOM OR USAGE IN THE TRADE OR BY COURSE OF DEALING.
2.7 Certain Approved Transfers of Intellectual Property Rights. A licensee or sublicensee under this Article II may also transfer, or assign (as the case may be), with prompt notification to the applicable licensor under this Article II, and without such licensor's consent and without payment of additional fees or charges, the license or sublicense granted hereunder with respect to Intellectual Property Rights licensed or s...
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