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EXHIBIT 10.13
SERVICE XXXX AND TRADENAME LICENSE AGREEMENT
This Service Xxxx and Tradename License Agreement (the "Agreement") is
made and entered into as of the 1st day of July, 2000 ("Effective Date") by and
between The Inland Group, Inc. ("Licensor") and Inland Real Estate Corporation
("Licensee").
WHEREAS, Licensor is the owner of the logo shown in Attachment A and
the tradename "Inland" with respect to real estate activities (collectively the
"Marks"); and,
WHEREAS, Licensor is the owner of the registered service xxxx shown in
Attachment B ("Inland and Design") for real estate services; and,
WHEREAS, Licensor, through its affiliate, Inland Real Estate Advisory
Services, Inc., has licensed the Marks to Licensee for use as a service xxxx and
tradename, respectively, in connection with the business of acquiring, owning,
operating and disposing of neighborhood retail centers and community centers,
primarily in the Midwestern United States ("Existing License"); and,
WHEREAS, Licensor and Licensee are contemporaneously entering into a
transaction, part of which includes (a) Licensee acquiring Inland Real Estate
Advisory Services, Inc. and Inland Commercial Property Management, Inc. from
affiliates of Licensor, and (b) replacing the Existing License with this
Agreement; and,
WHEREAS, Licensee is desirous of using the Marks in operating its
current business and the acquired businesses, and Licensor is willing to license
such use of the Marks, along with limited use of Inland and Design, all subject
to the terms and conditions set forth in this Agreement;
NOW, THEREFORE, in consideration of the mutual promises and obligations
set forth below, the parties agree as follows:
1. Grant. Subject to the terms and conditions set forth in this
Agreement, Licensor hereby grants and Licensee hereby accepts a royalty-free,
non-transferable license to use (and to sublicense as permitted herein) the
Marks and the Inland and Design service xxxx as permitted herein in connection
with the business of acquiring, owning, operating, managing and disposing of
neighborhood retail centers and community centers (the "Business") in the
continental United States (the "Territory"). The license to use the logo shall
be exclusive. The license to use the tradename "Inland" shall be non-exclusive.
However, during the term of this Agreement, neither Licensor nor any of its
affiliates shall use the tradename "Inland" or any name which includes or
incorporates the name "Inland" primarily in a business that is substantially
similar to the Business, and Licensor shall not license any such names to any
party that is engaged primarily in a business that is substantially similar to
the Business and conducted within the Territory, but the foregoing restriction
is subject to the following exceptions:
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A. Inland Retail Real Estate Trust, Inc. ("IRRETI"), a real estate
investment trust sponsored by an affiliate of Licensor, shall have the right to
engage in a business substantially similar to the Business within the geographic
area currently permitted under its charter using its current name and logo.
B. On or at any time after July 1, 2002, Licensor and/or any of its
affiliates may use the tradename "Inland" or any name which includes or
incorporates the name "Inland", and Licensor and/or any of its affiliates may
license any such names to any party that is engaged primarily in a business that
is substantially similar to the Business, which business is being conducted in a
separate and distinct market within the Territory, provided that Licensee is not
doing business in such market at the time of such use or licensing by Licensor
or its affiliate. For purposes of this exception, the term "market" shall mean a
distinct geographical area within the Territory in which Licensee would not
directly compete for tenants with owners or managers of commercial real estate
located in any other geographical area within the Territory.
2. Term. The license granted hereby shall begin on the Effective Date and
shall continue thereafter indefinitely, subject to termination as provided in
Sections 11 and 12 hereof.
3. Sublicenses. Licensee shall have no right to grant sublicenses of the
Marks, except to an affiliated entity of Licensee engaged in the Business in the
Territory. An "affiliated entity" of Licensee shall be an entity in which
Licensee holds both a voting and equity interest in excess of 50%, and any
sublicense to such an entity ("Sublicensee") must contain provisions (a) no less
protective of Licensor's rights in and to the Marks than this Agreement, (b)
prohibiting any Sublicensee from further licensing or sublicensing the use of
the Marks, and (c) terminating the sublicense in the event that Licensee's
voting or equity interest in the Sublicensee ceases to be in excess of 50%.
Licensor shall be a necessary party to, as well as a third-party beneficiary of,
any such sublicense agreement.
4. Ownership. Subject to the licensed uses granted to Licensee and
Sublicensees (if any) hereunder, all right, title and interest in and to the
Marks and each of them are and at all times shall remain the sole and exclusive
property of Licensor. All rights not specifically granted to Licensee hereunder
shall remain with Licensor.
5. Quality Standard. Licensee shall operate and maintain its Business and
perform its services under the Marks in a manner consistent with its current
business standards and procedures, and all of its services shall be performed in
an ethical and workmanlike manner.
6. Business Practices. Licensee shall not engage in, or allow others under
its supervision or control, including but not limited to any Sublicensees, to
engage in, any deceptive, fraudulent or unethical practices of any kind, or
suffer or allow any premises used in the Business, or any commercial real estate
acquired or managed by the Business, to be used for any immoral or illegal
purpose. In order to assure Licensor the ability to protect the goodwill
associated with the Marks and the validity and integrity of the Marks, and in
order to prevent any deception to the public, Licensee
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agrees to operate the Business in a manner consistent with its current business
standards and practices. In order to assure compliance with these standards and
practices, Licensee shall make available to representatives of Licensor any
information requested by them relating to such use of the Marks, and permit such
representatives to inspect all uses in connection with the Business to which the
Marks are put, as Licensor reasonably considers necessary.
7. Marks Usage. Licensee shall display and use the Marks only in such form
as currently used by Licensee or as Licensor shall reasonably approve in
writing. With respect to the Inland and Design service xxxx, Licensee's use
shall be limited as follows: (a) the signage currently utilized at shopping
center locations on the Effective Date hereof may remain at each specific
location only, and any replacement, repainting or repair of such signage must
adopt the Marks, and shall not use the Inland and Design service xxxx, and (b)
Licensee may continue to use its existing supply of brochures and other
marketing materials bearing the Inland and Design service xxxx, but no reprints
or replenishments may bear the Inland and Design service xxxx.
8. Representations and Warranties of the Licensor. Licensor represents and
warrants that it has all necessary authority to enter into this Agreement and to
grant the rights and license provided herein, and that the execution, delivery
or performance of this Agreement will not violate or cause a default under any
agreement by which the Licensor is bound. Licensor has no knowledge that the
Marks or the use thereof infringes any trademark, service xxxx, tradename or
copyright of any third party. Licensor shall use reasonable commercial efforts
to obtain and keep in force a Federal Registration for the Marks.
9. Representations and Warranties of Licensee. Licensee represents and
warrants that it has all the necessary authority to enter into and perform its
obligations under this Agreement. Licensee represents and warrants that the
execution, delivery or performance of this Agreement will not violate or cause a
default under any agreement by which Licensee is bound.
10. Protection of the Marks. Licensee shall ensure that trademark, service
xxxx, trade name, and proprietary rights notices that are appropriate to
adequately protect the Marks and the Inland and Design service xxxx are
conspicuously placed on all items used by Licensee bearing the Marks or the
Inland and Design service xxxx. In the event that Licensee learns of or has
reason to believe that a third party is infringing or threatens to infringe the
Marks and the Inland and Design service xxxx or any of them, it shall promptly
notify the Licensor, and Licensor shall use reasonable efforts to enforce its
rights in the Marks and/or the Inland and Design service xxxx, as the case may
be, against such infringement. Licensee agrees to cooperate with Licensor and to
provide reasonable support to Licensor in such effort.
11. Change of Control. In the event that any entity or group acting in
concert (other than an entity or group affiliated with Licensor) acquires a 25%
or greater voting or equity interest in Licensee, directly or indirectly
("Change of Control"), the license granted hereunder shall be terminable by
Licensor upon 90 days written notice to Licensee, provided that Licensor agrees
not to terminate the license upon Licensee's compliance with the following:
(a) The controlling party(ies) of Licensee shall submit a written request
to Licensor for
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continuation of the License, it being understood and agreed that such
license continuation shall be conditional upon Licensee's continued
conduct of the Business and use of the Marks subsequent to the Change
of Control consistent with the requirements set forth in Section 5, 6
and 7 of this Agreement. If Licensee fails to so meet those
requirements, this License shall terminate in accordance with the
provisions of Section 12 below. In addition, after any Change of
Control, Licensee shall discontinue use of the Inland and Design
service xxxx.
(b) Any usage of the Marks following the Change of Control shall be
accompanied by a tag line notice (not less than 20% as prominent as
the Xxxx) stating that "Licensee is not an Affiliate of The Inland
Group , Inc." or other suitable notice prescribed by Licensor.
12. Termination
12.1 Licensor shall have the right to terminate this Agreement and revoke
the license granted herein upon the occurrence of any of the following:
(a) Licensee fails to perform or observe any material covenant, condition
or agreement to be performed or observed by Licensee hereunder or
breaches any representation or provision contained herein, and such
failure or breach shall continue unremedied for a period of thirty
(30) days after written notice from Licensor;
(b) the filing of any claim, lien, attachment of or execution upon a
substantial portion of the assets of Licensee which is not released,
expunged or dismissed prior to the earlier of sixty (60) days from
such filing and which would have a material adverse effect on the
Business;
(c) a general assignment by Licensee of its assets for the benefit of any
creditor;
(d) the admission in writing by Licensee of its inability to pay its debts
or perform its obligations when due;
(e) Licensee discontinues use of one of the Marks for a continuous period
of 12 months or longer, in which case the license granted by this
Agreement shall terminate as to that Xxxx; but the license granted by
this Agreement shall remain in effect for the other Xxxx, subject to
this Section 12.1, for so long as Licensee's use of such other Xxxx is
not discontinued for a continuous period of 12 months or longer;
(f) Following a Change of Control, as defined in Section 11, Licensee
fails to comply with the request, use and display provisions of
Section 11;
(g) Licensee breaches the Quality Standard, Business Practices and Marks
Usage
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requirements of Sections 5, 6, and 7 of this Agreement provided
Licensee shall have a 30-day period to cure such breach in a manner
reasonably acceptable to Licensor.
12.2 Obligations on Termination. Any termination of this Agreement shall
not impair any other accrued rights or remedies of either Licensor, Licensee or
any Sublicensee. Upon termination of this Agreement, Licensee shall immediately
cease and desist from using the Marks and the Inland and Design and any of them
and all right, title and interest that Licensee may have in the Marks and the
Inland and Design shall vest in Licensor immediately and automatically, without
the need of further action. The right to terminate this Agreement shall be
exercised by any party by giving the defaulting party prior written notice of
its intention to terminate.
13. Indemnification. Licensee shall defend, indemnify, and hold Licensor
harmless from any and all claims, demands, losses, damages or liabilities
incurred by Licensor as a result of any action, suit, proceeding, demand,
assessment or judgment arising out of or in connection with Licensee's use of
the Marks or the Inland and Design or any of them.
14. Miscellaneous.
14.1 Modification. No modifications or amendments to this Agreement shall
be binding upon the parties unless made in writing and duly executed by Licensor
and Licensee.
14.2 Headings. Section headings contained in this Agreement are included
for convenience only and form no party of this agreement between the parties.
14.3 Assignment. Licensee shall have no right to assign or transfer, in any
manner, any right or obligation hereunder, without the prior written consent of
Licensor. This Agreement shall be binding upon any assignee and, subject to the
restrictions on assignment herein, shall inure to the benefit of the successors
and assigns of each party hereto.
14.4 Waiver. Either party's failure to exercise any right under this
Agreement shall not constitute a waiver of any other terms or conditions of this
Agreement with respect to any other or subsequent breach, nor a waiver by such
party of its right at any time thereafter to require exact and strict compliance
with the terms of this Agreement.
14.5 Costs and Attorney's Fees. In the event of any dispute between the
parties hereto with respect to this Agreement, the prevailing party shall be
entitled to reasonable attorneys' fees and other costs and expenses incurred in
resolving such dispute in addition to such other relief as such party may be
entitled to in law or equity.
14.6 Notice. Any notice required or permitted to be made or given to either
party hereto pursuant to this Agreement shall be sufficiently made or given if
it has been served personally or has been sent by overnight delivery service
addressed to the other party at the address listed below, or to such other
address as shall have been designated by written notice given to the other
party:
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Licensor: The Inland Group, Inc.
0000 Xxxxxxxxxxx Xxxx
Xxx Xxxxx, Xxxxxxxx 00000
Attn: Xxxxxx X. Xxxx, Esq.
Licensee: Inland Real Estate Corporation
0000 Xxxxxxxxxxx Xxxx
Xxx Xxxxx, Xxxxxxxx 00000
Attn: Xxxxxx X. Xxxxxxxxx
The effective date of notice if served personally shall be the date of receipt.
The effective date of notice if served by overnight delivery service shall be
the date following the date of deposit of such notice with the overnight
delivery service.
14.7 Governing Law. This Agreement shall be governed and construed in
accordance with the laws of the State of Illinois.
14.8 Severability. If any provision of this Agreement is declared void,
illegal or unenforceable, the remainder of the Agreement shall continue in full
force and effect as if the offending provision were not contained herein.
14.9 Further Assurance. Each party to this Agreement agrees to execute and
deliver all documents and to perform all further acts and to take any and all
further steps that may be reasonably necessary to carry out the provisions of
this Agreement and the transactions contemplated hereby.
14.10 Counterparts. This Agreement may be executed in any number of
counterparts, each of which shall be deemed to be an original and all of which
together shall be deemed to be one and the same instrument.
IN WITNESS WHEREOF, the parties have caused this Agreement to be duly
executed as the date first written above.
THE INLAND GROUP, INC. INLAND REAL ESTATE
CORPORATION
By: /s/Xxxxxx Xxxxxxx By: /s/Xxxx X. Xxxxxxxxx
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Title: President Title: Senior Vice President
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