License Agreement - Cendant Corp. and NRT Inc.
LICENSE AGREEMENT
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This License Agreement is effective as of the 9th day of February, 1999, by
and between Cendant Corporation, a Delaware corporation (the "Licensor") and NRT
Incorporated, a Delaware corporation (the "Licensee").
WITNESSETH:
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The Licensor, or one of its subsidiaries, is the owner of certain trade and
service marks, all described in Schedule A attached hereto (the "Marks").
Licensee is engaged in the real estate brokerage business, pursuant to
franchise or membership agreements, each dated as of the date hereof, with ERA
Franchise Systems, Inc., Coldwell Banker Real Estate Corporation and Century 21
Real Estate Corporation (the "Franchise Agreements"), and related ancillary
businesses (collectively, the "Business"). Licensor and Licensee desire and
intend that the Licensee be permitted to use the Marks in the conduct of the
Business.
NOW, THEREFORE, in consideration of the mutual promises herein exchanged
and for other good and valuable consideration, the parties agree as follows:
1. License. The Licensor, for itself and its subsidiaries, hereby grants to
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the Licensee and its subsidiaries the exclusive right and license to use the
Marks in the conduct of the Business. Included in this grant is the right to
use the Marks to provide services, and to advertise and promote the Business,
its products and services, including the use of the Marks in conjunction with
signage, stationery, convenience items for customers, employee uniforms and
forms used in conjunction with the Business. Notwithstanding the exclusive
nature of this License Agreement, Licensee hereby acknowledges that certain
Marks have been, and may in the future be, licensed to persons and entities in
connection with Brokerage Acquisitions (as defined in Schedule A attached
hereto) and that this License Agreement is subject in all respects to such
licenses.
In conjunction with the use of the Marks, the Licensee shall take all
necessary measures to ensure that the services provided by Licensee and its
subsidiaries continue to conform to quality standards. In order to maintain
such standards, Licensee shall and shall cause its subsidiaries to:
Maintain a high moral and ethical standard of operation at each office
utilizing the Marks;
Maintain each office in a clean, attractive and orderly condition;
Provide efficient, courteous and high-quality service to the public at each
office;
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Operate each office during the periods required by Licensee;
Permit inspection of each office by Licensor's representative at
any time;
Advertise and promote each office subject to Licensor's approval
as to form and content of all advertising and promotional
material;
Comply with Licensor's reasonable requirements so as to maintain
the high quality of equipment and supplies at each office;
Display outdoor signs and other signs, promotional material and
identifying characteristics at each office as approved and
required by Licensor;
Send samples or descriptions to Licensor of all proposed new uses
of the Marks for Licensor's approval.
Licensor shall have the right to specify additional standards to ensure
compliance with these requirements and to ensure that the validity and
enforceability of the Marks, and the goodwill associated therewith, is
maintained and protected. Licensee shall use the Marks in accordance with sound
trademark and trade name usage principles and in accordance with all applicable
laws and regulations, including without limitation all laws and regulations
relating to the maintenance of the validity and enforceability of the Marks; and
Licensee shall not use the Marks in any manner which would tarnish, disparage,
or reflect adversely on Licensor, the Marks, or the goodwill associated
therewith.
2. Duration. This License Agreement shall remain in full force and effect
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until termination or expiration of all of the Franchise Agreements or any
replacements, renewals or amendments thereof.
3. Royalties. No additional royalty shall be payable by Licensee hereunder;
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it being understood that Licensee is already paying a royalty to Licensor's
subsidiaries under the Franchise Agreements with respect to its residential real
estate brokerage operations. Notwithstanding any prior agreement to the
contrary, the Marks shall not be deemed to be additional trademarks under any of
the Franchise Agreements; this License Agreement shall contain the entire
agreement between the parties regarding a license of the Marks to Licensee.
4. Maintenance of the Marks. In the event that Licensee learns of any
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infringement or unauthorized use of the Marks, it shall notify Licensor, such
notice not to be unreasonably delayed. Licensor shall have the sole right to
bring infringement actions or other similar proceedings against infringing third
parties in order to protect the Marks. Licensee, at its expense, shall take all
reasonable
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actions necessary to assist Licensor in the maintenance of the Marks including
joining in any action which Licensor deems necessary to bring in order to
maintain and/or prevent material infringement of the Marks. Licensee
acknowledges that the Marks and all rights therein, if any (with the exception
of those rights expressly granted to Licensee hereunder), and the goodwill
pertaining thereto belong exclusively to Licensor. Licensee's use of the Marks
shall inure to the benefit of Licensor for all purposes, including without
limitation trademark registration. Without limiting the generality of the
foregoing, Licensee shall not challenge the validity of Licensor's ownership of
the Marks or any registration or application for registration thereof or contest
the fact that Licensee's rights under this License Agreement are solely those of
a licensee, which rights terminate upon termination of this License Agreement.
4. Right to Sublicense; Assignment. The Licensee shall not have the right to
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sublicense the use of the Marks or otherwise assign its rights under this
License Agreement.
5. Title. Licensee agrees that nothing herein shall give to the Licensee any
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right, title or interest in the Marks (except the right to use the Marks in
accordance with the terms of this License Agreement), that the Marks are the
sole property of the Licensor or one of its subsidiaries, and that any and all
uses by the Licensee of the Marks shall inure to the benefit of the Licensor or
one of its subsidiaries.
6. Defaults and Termination. The following shall be deemed to be events of
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default ("Events of Default") under this License Agreement:
(a) With respect to any Mark, failure to maintain the quality standards
required under Section 1 of this License Agreement and failure to submit to
quality review, after notice and failure to cure within thirty (30) days of
receipt of notice from Licensor.
(b) With respect to any Mark, breach of any other provision of this License
Agreement by Licensee and failure to cure such breach within thirty (30)
days of receipt of notice from Licensor.
Upon occurrence of an Event of Default, Licensor at its sole discretion may
terminate this License Agreement with respect to such Mark upon written notice
to Licensee. In the event of such termination, Licensee shall deliver to
Licensor or at the option of Licensor, destroy, free of any charges to Licensor,
all items incorporating such Mark.
3. Notices. Any notices required or permitted to be given under this License
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Agreement shall be in writing and given to the parties by mail, return receipt
requested.
IN WITNESS WHEREOF, the undersigned have caused this License Agreement to
be signed as
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of the day and year first above written.
CENDANT CORPORATION
By: /s/ Samuel L. Katz
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Name: Samuel L. Katz
Title: Executive Vice President
NRT INCORPORATED
By: /s/ Steven L. Barnett
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Name: Steven L. Barnett
Title: Senior Vice President,
General Counsel and Secretary
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Schedule A
To License Agreement
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All tradenames and trademarks acquired by Licensor or one of its
subsidiaries in connection with Brokerage Acquisitions (as defined in the
Stockholders Agreement, dated as of August 11, 1997, between Licensee, HFS
Incorporated and others, and the Acquisition Cooperation Agreement, dated
as of the date hereof, between Licensor, Licensee and others), including
those hereafter acquired, other than those relating to mortgage operations.
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