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EXHIBIT 10.5
SERVICE XXXX AND TRADE NAME USE AGREEMENT
This SERVICE XXXX AND TRADE NAME USE AGREEMENT (the "Agreement"), dated
as of this 31st day of December, 1998, is by and between Correctional Management
Services Corporation, a Tennessee corporation (the "Grantor"), and Prison
Management Services, LLC, a Delaware limited liability company (the "Grantee").
W I T N E S S E T H:
WHEREAS, Grantor has obtained the non-exclusive right to use the
service xxxx and trade name "Corrections Corporation of America", its
abbreviation "CCA", and the logo and/or designs incorporating the same and
included on Exhibit A attached hereto (collectively, the "Service Xxxx and Trade
Name") pursuant to the terms and conditions of that certain Service Xxxx and
Trade Name Use Agreement by and between Grantor and Corrections Corporation of
America, a Tennessee corporation ("CCA"), of even date herewith (the "Grantor
Service Xxxx and Trade Name Use Agreement");
WHEREAS, Section 6. of the Grantor Service Xxxx and Trade Name Use
Agreement permits the grant to use of the Service Xxxx and Trade Name to Grantee
hereunder;
WHEREAS, CCA is transferring all right, title and interest in and to
certain contracts and assets relating to the management and operation of
correction and detention facilities by CCA (the "Management Contracts") to the
Grantee; and
WHEREAS, in connection with the performance of administrative services
by the Grantor for the Grantee relating to such Management Contracts, Grantor
desires to grant, and Grantee desires to obtain, the non-exclusive,
non-transferable right to use the Service Xxxx and Trade Name pursuant to the
terms and condition of this Agreement.
NOW, THEREFORE, in consideration of the premises and the mutual
promises and undertakings contained herein, and for other good and valuable
consideration, the receipt and sufficiency of which is hereby acknowledged, the
parties hereto hereby agree as follows:
1. Grant of Use of Service Xxxx and Trade Name. Grantor grants to
Grantee the non-exclusive, non-transferrable right to use the Service Xxxx and
Trade Name with respect to, and only with respect to, the correction and
detention facilities operated by Grantee pursuant to the Management Contracts.
2. Term. This Agreement shall commence on the date above written and
terminate on the earlier of (i) the termination or expiration of the Grantor
Service Xxxx and Trade Name Use Agreement, (ii) the date on which Grantee ceases
to manage and operate any correction or detention facility, and (iii) a date
which is ten (10) years from the date of this Agreement (the "Term"). With
respect to (iii) hereof, this Agreement may be renewed thereafter upon the
agreement of the parties under such terms and conditions as they may agree;
provided, however, that no renewal of this Agreement shall be valid unless in
writing and signed by both parties.
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3. Termination. This Agreement may be terminated by Grantor for any
reason upon ten (10) days' written notice from Grantor to Grantee.
4. Reservation of Rights. Except for the limited rights herein
expressly granted to Grantee, all rights in and to the use of the Service Xxxx
and Trade Name are reserved to CCA and Grantor throughout the United States for
the sale and exclusive use or other disposition by CCA and Grantor at any time,
and from time to time, without any obligation to Grantee.
5. Maintenance of Quality Standards. Grantee agrees that the nature and
quality of all services rendered by Grantee hereunder, all goods sold by Grantee
hereunder, and all related advertising, promotional, and other related uses of
the Service Xxxx and Trade Name by Grantee shall conform to standards reasonably
set by CCA and Grantor. Grantee agrees to cooperate with Grantor in facilitating
CCA's and Grantor's control of such nature and quality, and to supply CCA and
Grantor with specimens of all uses of the Service Xxxx and Trade Name upon
request. Grantee represents, warrants, covenants, and agrees that it will
conduct its business in a manner designed to protect and enhance the reputation
and integrity of the Service Xxxx and Trade Name, and the goodwill associated
therewith, and Grantor reserves all rights of approval which are necessary to
achieve this result.
6. Transfer Prohibited. The right to use of the Service Xxxx and Trade
Name granted hereunder shall not be assigned, sublicensed, or otherwise
transferred without the prior written consent of Grantor. In the event of a
prohibited transfer, Grantor shall have the right to terminate this Agreement
forthwith by written notice to Grantee.
7. Rights Upon Termination. Upon the termination (by expiration or
otherwise) of this Agreement, for any reason, all rights granted to Grantee
hereunder shall automatically revert to Grantor for its use or disposition. Upon
termination, Grantee shall promptly cease use of the Service Xxxx and Trade
Name, and shall promptly deliver to Grantor all materials previously supplied by
Grantor to Grantee and all copies thereof, in whole or in part, relating to or
containing the Service Xxxx and Trade Name. At Grantor's option, Grantor may, in
lieu of return, require that Grantee destroy said materials and copies and
provide to Grantor satisfactory evidence of destruction. Grantor shall not be
liable to Grantee for damages of any kind on account of the termination or
expiration of this Agreement. Without limiting the foregoing, upon termination
or expiration of this Agreement for any reason, Grantor shall have no liability
for reimbursement or for damages for loss of goodwill, or on account of any
expenditures, investments, leases, or other commitments made by Grantee. Grantee
acknowledges and agrees that Grantee has no expectation and has received no
assurances that its business relationship with Grantor will continue beyond the
stated term of this Agreement or its earlier termination, that any investment by
Grantee will be recovered or recouped, or that Grantee shall obtain any
anticipated amount of profits by virtue of this Agreement.
8. No Franchise or Joint Venture. The parties expressly acknowledge
that this Agreement shall not be deemed to create an agency, partnership,
franchise, employment, or joint
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venture relationship between Grantor and Grantee. Nothing in this Agreement
shall be construed as a grant of authority to Grantee to waive any right, incur
any obligation or liability, enter into any agreement, grant any release or
otherwise purport to act in the name of Grantor.
9. Indemnification.
9.1 Grantee shall indemnify and hold harmless Grantor, its
affiliates, directors, officers, employees, representatives, agents, successors
and assigns from and against any and all losses, damages, costs and expenses,
including attorney's fees, resulting from or arising out of Grantee's breach of
the promises, covenants, representations and warranties made by it herein or
from the Grantee's unpermitted use of the Service Xxxx and Trade Name.
9.2 Grantor shall indemnify and hold harmless Grantee, its
affiliates, directors, officers, employees, representatives, agents, successors
and assigns from and against any and all losses, damages, costs and expenses,
including attorney's fees, resulting from or arising out of Grantor's breach of
the promises, covenants, representations and warranties made by it herein or
from the Grantee's permitted use of the Service Xxxx and Trade Name.
10. Representations and Warranties.
10.1 Grantee hereby represents and warrants that: (a) it is a
limited liability company duly organized and validly existing under the laws of
the State of Delaware; (b) the execution and delivery by the Grantee of this
Agreement, the performance by Grantee of all the terms and conditions thereof to
be performed by it and the consummation of the transactions contemplated hereby
have been duly authorized by all necessary action, and no other act or approval
of any person or entity is required to authorize such execution, delivery, and
performance; (c) the Agreement constitutes a valid and binding obligation of
Grantee, enforceable in accordance with its terms; (d) this Agreement and the
execution and delivery thereof by Grantee, does not, and the fulfillment and
compliance with the terms and conditions hereof and the consummation of the
transactions contemplated hereby will not, (i) conflict with any of, or require
the consent of any person or entity under, the terms, conditions or provisions
of the organizational documents of Grantee, (ii) violate any provision of, or
require any consent, authorization or approval under, any law or administrative
regulation or any judicial, administrative or arbitration order, award,
judgment, writ, injunction or decree applicable to Grantee, or (iii) conflict
with, result in a breach of, or constitute a default under, any material
agreement or obligation to which Grantee is a party.
10.2 Grantor hereby represents and warrants that (a) it is a
corporation duly organized and validly existing under the laws of the State of
Tennessee; (b) the execution and delivery by the Grantor of this Agreement, the
performance by Grantor of all the terms and conditions thereof to be performed
by it and the consummation of the transactions contemplated hereby have been
duly authorized by all necessary action, and no other act or approval of any
person or entity is required to authorize such execution, delivery, and
performance; (c) the Agreement constitutes a valid and binding obligation of
Grantor, enforceable in accordance with its terms; (d) this Agreement and the
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execution and delivery thereof by Grantor, does not, and the fulfillment and
compliance with the terms and conditions hereof and the consummation of the
transactions contemplated hereby will not, (i) conflict with any of, or require
the consent of any person or entity under, the terms, conditions or provisions
of the organizational documents of Grantor, (ii) violate any provision of, or
require any consent, authorization or approval under, any law or administrative
regulation or any judicial, administrative or arbitration order, award,
judgment, writ, injunction or decree applicable to Grantor, or (iii) conflict
with, result in a breach of, or constitute a default under, any material
agreement or obligation to which Grantor is a party; (e) Grantor has the
non-exclusive right to the use of the Service Xxxx and Trade Name and has the
right to grant the right to use the Service Xxxx and Trade Name to Grantee under
the terms of this Agreement; and (f) has not been subject to any third party
claims for infringement due to the use of the Service Xxxx and Trade Name.
11. Ownership; Form of Use. Grantee acknowledges that (i) Grantor has
obtained a non-exclusive right to the use of the Service Xxxx and Trade Name
from CCA and agrees that it will do nothing inconsistent with such rights and
(ii) CCA is the exclusive owner of the right to use the Service Xxxx and Trade
Name in the United States, subject to the rights conferred to Grantor under the
Grantor Service Xxxx and Trade Name Use Agreement. Grantee agrees that nothing
in this Agreement shall give Grantee any right, title, or interest in the
Service Xxxx and Trade Name other than the right to use it in accordance with
this Agreement, and Grantee agrees that it will not attack (i) the rights of
Grantor to use the Service Xxxx and Trade Name, (ii) the title of CCA to the
Service Xxxx and Trade Name or (iii) the validity of this Agreement. Grantee
agrees to use the Service Xxxx and Trade Name only in the form and manner as
prescribed from time to time by Grantor and CCA and agrees to use such
designations as may be requested by Grantor or CCA to indicate Grantor's rights
to use of the Service Xxxx and Trade Name and CCA's ownership of the Service
Xxxx and Trade Name. Grantee agrees that it shall not adopt or use for any
purpose any variation of the Service Xxxx and Trade Name likely to be confused
with the Service Xxxx and Trade Name.
12. Protection of CCA's and Grantor's Proprietary Rights. Grantee
agrees to assist CCA and Grantor in the registration, renewal, and enforcement
of CCA's rights in and to the Service Xxxx and Trade Name, including, but not
limited to, the prosecution of any pending or future applications for trade
and/or service xxxx registration with the United States Patent and Trademark
Office or other domestic or international government authority.
13. Confidentiality. Grantee agrees to keep strictly confidential all
information relating to Grantor that may be obtained by Grantee as the result of
the relationship between Grantor and Grantee under this Agreement other than
information which is publicly available or made known to Grantee by a third
party authorized to disclose such information.
14. Disclaimer of Warranties. EXCEPT AS MAY BE EXPRESSLY PROVIDED IN
THIS AGREEMENT, GRANTOR MAKES NO REPRESENTATION OR WARRANTY, EXPRESS OR IMPLIED,
IN RESPECT OF THE SERVICE XXXX AND TRADE NAME.
15. Negation of Consequential Damages. IN NO EVENT SHALL GRANTOR BE
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LIABLE FOR ANY CONSEQUENTIAL OR INCIDENTAL DAMAGES WHATSOEVER HEREUNDER,
REGARDLESS OF WHETHER GRANTOR HAS BEEN INFORMED OF THE POSSIBILITY OF SUCH
DAMAGES.
16. Governmental Licenses, Permits and Approvals. Grantee, at its
expense, shall be responsible for obtaining and maintaining all licenses,
permits, approvals, authorizations, and clearances which are required by
governmental authorities with respect to this Agreement and for compliance with
any requirements of governmental authorities for the registration or recordation
of this Agreement and for making any payments required in connection therewith.
Grantee shall furnish to Grantor, promptly upon Grantor's request, written
evidence from such governmental authorities of the due issuance and continuing
validity of any such licenses, permits, clearances, authorizations, approvals,
registration or recordation.
17. Notices.
17.1 Notices and other communications required or permitted to
be given under this Agreement shall be in writing and delivered by hand or
overnight delivery, or placed in certified or registered mail, return receipt
requested, at the addresses specified below or such other address as either
party may, by notice to the other, designate:
If to Grantor: Correctional Management Services Corporation
00 Xxxxxx Xxxxx Xxxxxxxxx
Xxxxxxxxx, Xxxxxxxxx 00000
Attn: Xxxxxxx X. Xxxxxxxxxx, Chief
Financial Officer
with a copy to: Xxxxxxxxx X. Xxxxx, Esq.
Xxxxxx & Xxxxxxxxxxx, P.A.
000 Xxxxxx Xxxxxx, Xxxxx 0000
Xxxxxxxxx, Xxxxxxxxx 00000
If to Grantee: Prison Management Services, LLC
00 Xxxxxx Xxxxx Xxxxxxxxx
Xxxxxxxxx, Xxxxxxxxx 00000
Attn: Xxxxxxx X. Xxxxxxxxxx, Chief
Financial Officer
with a copy to: Xxxxxxxxx X. Xxxxx, Esq.
Xxxxxx & Xxxxxxxxxxx, P.A.
000 Xxxxxx Xxxxxx, Xxxxx 0000
Xxxxxxxxx, Xxxxxxxxx 00000
17.2 Notices and other communications shall be deemed given when
delivered by hand or overnight delivery to the proper address or the date of
the return receipt, as provided above.
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18. Governing Laws. This Agreement shall be construed in accordance
with the laws of Tennessee, excluding the choice of law provisions thereof. The
parties hereby submit to the jurisdiction of the courts of Tennessee in respect
to all disputes arising out of or in connection with this Agreement.
19. Enforcement. It is expressly understood, acknowledged and agreed by
Grantee that: (a) the restrictions contained in this Agreement represent a
reasonable and necessary protection of the legitimate interests of Grantor and
CCA and their affiliates, and that Grantee's failure to observe and comply with
the covenants and agreements in this Agreement will cause irreparable harm to
Grantor and CCA and their affiliates; (b) it is and will continue to be
difficult to ascertain the nature, scope and extent of the harm; and (c) a
remedy at law for such failure by Grantee will be inadequate. Accordingly, it is
the intention of the parties that, in addition to any other rights and remedies
which Grantor and CCA and their affiliates may have in the event of any breach
or threatened breach of the Agreement, Grantor and CCA and their affiliates
shall be entitled, and are expressly and irrevocably authorized by Grantee, to
demand and obtain specific performance, including, without limitation, temporary
and permanent injunctive relief and all other appropriate equitable relief
against Grantee in order to enforce against Grantee the covenants and agreements
contained in this Agreement. Such right to obtain injunctive relief may be
exercised concurrently with, prior to, after, or in lieu of, any other rights
resulting from any such breach or threatened breach. Grantee shall account for
and pay over to Grantor all compensation, profits, and other benefits, after
taxes, enuring to Grantee's benefit, which are derived or received by Grantee or
any person or business entity controlled by Grantee resulting from any action or
transaction constituting breach of the Agreement.
20. Successors. This Agreement shall be binding upon each of the
parties and shall also be binding upon their respective successors and assigns,
including a transferee of all or substantially all of its assets.
21. Waiver; Modification. No waiver or modification of any of the terms
of this Agreement shall be valid unless in writing. No waiver by either party of
a breach hereof or a default hereunder shall be deemed a waiver by such party of
a subsequent breach or default of like or similar nature.
22. Severability. If any provision in this Agreement contravenes or is
otherwise invalid under the law of any jurisdiction, then such provision shall
be deemed eliminated from this Agreement and the Agreement shall, as so
modified, remain valid and binding on the parties hereto and in full force and
effect.
23. Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall constitute an original.
24. Entire Agreement. This Agreement contains the entire understanding
of the parties. There are no representations, warranties, promises, covenants or
undertakings other than those contained herein.
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IN WITNESS WHEREOF, the parties hereto have caused these presents to be
signed by their duly authorized officers on the date set forth above.
GRANTOR:
CORRECTIONAL MANAGEMENT SERVICES
CORPORATION, a Tennessee corporation
By: /s/ Doctor X. Xxxxxx
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Its: Chief Executive Officer
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GRANTEE:
PRISON MANAGEMENT SERVICES, LLC,
a Delaware limited liability company
By: /s/ Xxxxxxx X. Xxxxxxxxxx
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Its: Chief Manager
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EXHIBIT A
[CCA LOGOS]
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