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EXHIBIT 10.3
INTELLECTUAL PROPERTY LICENSE AGREEMENT
This Trademark License Agreement (the "Agreement") is made as of this
___ day of ___________, 1998, by and between Grand Casinos, Inc., a Minnesota
corporation ("Licensor"), and GCI Lakes, Inc., a Minnesota corporation
("Licensee").
W I T N E S S E T H:
WHEREAS, Licensor is the owner of various trademarks set forth on
Schedule A attached hereto and incorporated by reference herein (the "Licensed
Marks"), together with all copyrightable subject matter (the "Copyright
Material"), trade dress, and other intellectual property currently used in the
operation of the Facilities (as defined below) (such property, together with the
Licensed Marks, is referred to herein as the "Intellectual Property");
WHEREAS, Licensor's predecessors in interest are obligated in
connection with certain management agreements with the Corporate Commission of
the Mille Lacs Band of Chippewa Indians (the "Minnesota Tribe"), the Coushatta
Tribe of Louisiana (the "Coushatta Tribe") and the Tunica-Biloxi Tribe of
Louisiana (the "Tunica Tribe" and, together with the Coushatta Tribe, the
"Louisiana Tribes"), respectively (the "Tribes"), to ensure the respective
Tribes' licenses to use the Intellectual Property;
WHEREAS, Licensee, through its subsidiaries, on June 30, 1998 manages
various hotels, restaurants, retail and gaming facilities for the Tribes
(collectively, the "Facilities");
WHEREAS, Licensee desires the right to use the Intellectual Property in
connection with its management of the Facilities; and
WHEREAS, Licensor desires to grant to Licensee a non-exclusive license
to use the Intellectual Property on the terms and conditions set forth herein.
NOW, THEREFORE, in consideration of the foregoing and for other good
and valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, the parties agree as follows:
I. GRANT OF LICENSE.
Licensor hereby grants to Licensee, subject to the terms and conditions
contained herein, (i) a worldwide, royalty-free, and non-exclusive right and
license (the "Minnesota License") to (A) reproduce, distribute, perform, and
display the Copyright Material and (B) use the other Intellectual Property, in
each case, solely in connection with Licensee's management of the Facilities of
the Minnesota Tribe, and (ii) a worldwide, royalty-free, and non-exclusive right
and license (the "Louisiana License" and, together with the Minnesota License,
the "License") to (Y) reproduce, distribute, perform, and display the Copyright
Material and (Z) use the other
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Intellectual Property, in each case, solely in connection with Licensee's
management of the Facilities of the Louisiana Tribes; provided, however, that
Licensee may, in accordance with this Agreement, sublicense the Intellectual
Property to the Minnesota Tribe after the termination of its management
agreement with the Minnesota Tribe for use solely in connection with the
operation of the Facilities of the Minnesota Tribe. The term of the Minnesota
License shall be perpetual and the term of the Louisiana License shall expire
upon the termination (after any renewals and extensions thereof) of the Amended
and Restated Management and Construction Agreement, dated as of February 25,
1992, between the Coushatta Tribe and Grand Casinos of Louisiana--Coushatta, and
the Amended and Restated Management & Construction Agreement, dated as of
November 1, 1991, by and between the Tunica Tribe and Grand Casinos of
Louisiana--Tunica-Biloxi (collectively, the "Louisiana Management Agreements").
THE INTELLECTUAL PROPERTY MAY ONLY BE USED IN A MANNER CONSISTENT WITH THE USE
OF SUCH INTELLECTUAL PROPERTY DURING THE YEAR PRECEDING THIS AGREEMENT. LICENSEE
SHALL NOT USE ANY OF THE INTELLECTUAL PROPERTY ON PRODUCTS OR SERVICES BEYOND
THOSE PRODUCTS OR SERVICES IN USE BY LICENSOR WITH RESPECT TO THE FACILITIES AS
OF THE DATE OF THIS AGREEMENT WITHOUT LICENSOR'S PRIOR WRITTEN CONSENT, WHICH
CONSENT MAY BE WITHHELD AT LICENSOR'S SOLE DISCRETION.
II. QUALITY CONTROL; COVENANTS OF LICENSEE
Section 2.1. Standards. Licensor is familiar with the quality of
the goods and services to be provided by Licensee at the Facilities and finds,
at the present time, the quality of such goods and services to be acceptable.
All goods and services to be provided by the Licensee under a Licensed Mark
shall be provided substantially in accordance with the quality standards of
Licensor now in place, or with such other quality standards as Licensor
reasonably may establish from time to time.
Section 2.2. Limitations on Use of the Licensed Marks. In its use
of any Licensed Mark, Licensee shall faithfully reproduce such mark's design,
coloration and appearance, as such design, coloration and appearance may be
modified from time to time by Licensor. Licensee shall not modify the design,
coloration or appearance of a Licensed Mark unless requested to do so in writing
by the Licensor of such Licensed Mark. Licensor shall provide Licensee with not
less than thirty (30) days advance written notice of any changes to said
specifications. During such thirty (30) day period, Licensee may continue to
follow prior specifications; provided, however, that Licensee shall immediately
cease all use of the prior specifications if Licensor purchases all materials
prepared in accordance with the prior specifications from Licensee at Licensee's
cost for said materials. All displays of a Licensed Mark by Licensee shall bear
such copyright, trademark, service mark and other notices as Licensor shall
reasonably require, and Licensee shall adhere to any other reasonable and
customary posting requirements developed by Licensor with respect to such
Licensed Mark. Licensee shall not use a Licensed Mark as part of, or display
such Licensed Mark in conjunction with, any other names or marks except with
Licensor's prior written approval. Licensee shall not use a Licensed Mark or any
confusingly similar or diluting mark, term or design, except as expressly
authorized in this Agreement, and
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Licensee shall not attempt to register or aid any third party in using or
attempting to register any such mark, term or design. Licensee shall not use a
Licensed Mark in any manner that will indicate that it is using such Licensed
Mark other than as a licensee.
Section 2.3. Samples. Licensor shall have the right, at reasonable
times and with prior notice, to inspect any Facility and any goods or services
(including any advertising and promotional materials) provided by Licensee that
bear a Licensed Mark at any time for the purpose of determining whether they
have met or are meeting the quality standards required under this Agreement.
Licensee shall promptly produce and deliver (at its own expense) to Licensor
such examples of its use of the Licensed Marks as Licensor reasonably shall
request. All such sample materials shall be deemed to be confidential
information of Licensee that is subject to the conditions of Section 9.1 of this
Agreement.
III. OWNERSHIP, MAINTENANCE, POLICING AND PROTECTION
Section 3.1. Ownership; Enhancements. Licensee acknowledges that
Licensor is the sole and exclusive owner of the Intellectual Property, subject
to the License provided hereunder. Licensee agrees that it has no right, title
or interest in or to any Intellectual Property, except as expressly set forth in
Section 1. Licensee agrees that all uses of any Intellectual Property by
Licensee and third parties and the goodwill associated with such uses shall
inure solely to the benefit of Licensor. Upon termination of its rights to use
any Intellectual Property as provided in this Agreement, all right and interest
of Licensee in and to such Intellectual Property shall revert fully to Licensor.
Licensee agrees, if requested by Licensor, to cooperate fully with Licensor in
recording appropriate documents evidencing Licensor's ownership of any
Intellectual Property. Licensee agrees to take no action inconsistent with
Licensor's ownership of and interest in its Intellectual Property. Licensee
shall not attack the validity of Licensor's ownership of the Intellectual
Property or any of the terms of this Agreement, or assist any third party in
doing any of the same.
Section 3.2. Licensee Intellectual Property. Notwithstanding the
foregoing, Licensee may, from time to time, develop or otherwise acquire
interests in various trademarks, copyrights, trade dress and other intellectual
property in connection with its operation of the Facilities. The parties agree
that such intellectual property shall be the sole property of Licensee,
provided, however, that, to the extent that any new works created by Licensee
constitute a derivative work of authorship based upon the Intellectual Property,
then the same shall become the exclusive property of Licensor and will become a
part of the Intellectual Property subject to the License under this Agreement.
Section 3.3. Maintenance. Licensor shall use reasonable and good
faith efforts at its expense to protect the Intellectual Property such as by
renewing and maintaining, where appropriate, federal trademark registration,
copyright registration, and the protection of trade dress. Neither Licensee nor
Licensor will undertake any action which shall in any manner
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reduce, diminish, eliminate or jeopardize the effect and enforceability of the
Intellectual Property.
IV. PAYMENT OF LICENSE FEE
Licensee agrees to pay, and Licensor agrees to accept, a one-time
license fee in the amount of [_____] Thousand Dollars ($[_____]) as full
consideration for all rights granted to Licensee by this Agreement.
V. NON-COMPETITION
So long as the License remains in effect with respect to any Tribe,
Licensor agrees that it will not itself, and will not authorize any other
individual, corporation, partnership, unincorporated association, or other
entity, to use the Intellectual Property in connection with the operation of any
hotel, restaurant, retail, gaming or other facility of a similar type or nature
within a 20 mile radius of the Facility owned by such Tribe.
VI. LIMITATION OF LIABILITY; INDEMNITY
THE INTELLECTUAL PROPERTY IS PROVIDED TO LICENSEE "AS IS." LICENSOR
DISCLAIMS ANY EXPRESS OR IMPLIED WARRANTY, INCLUDING NON-INFRINGEMENT, WITH
RESPECT TO THE INTELLECTUAL PROPERTY. IN NO EVENT SHALL LICENSOR BE LIABLE FOR
ANY MATTER WHATSOEVER RELATING TO THE USE OF THE INTELLECTUAL PROPERTY BY
LICENSEE OR ANY ASSIGNEE OR SUBLICENSEE OF LICENSEE.
Licensee shall indemnify, defend and hold harmless Licensor, its past
and present affiliates, subsidiaries, other related companies, licensees and
properties, and each of the foregoing entities' respective past and present
employees, representatives, directors, officers, partners and agents (each, a
"Licensor Indemnitee"), from and against any and all costs, liabilities and
expenses, including, without limitation, interest, penalties, attorney and third
party fees, and all amounts paid in the investigation, defense and/or settlement
of any claim, action or proceeding (collectively, "Expenses"), that relate to
the provision or promotion of goods or services by any Licensee, or assignee or
sublicensee of Licensee, under any Intellectual Property, notwithstanding any
approval which may have been given by Licensor with respect to the provision or
promotion of such goods or services; provided, however, that Licensee shall have
no obligation to indemnify, defend and hold harmless any Licensor Indemnitee
from any Expenses resulting from any claim of any third party that the use of
such Intellectual Property is infringing upon such third party's proprietary
rights, unless such claim of infringement arises from Licensee's failure to
comply with the terms of this Agreement.
If any claim or action is asserted against Licensor that would entitle
Licensor to indemnification, the indemnification provisions in that certain
Distribution Agreement, dated as
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of ______________, 1998, between Licensor and Licensee (the "Distribution
Agreement") shall govern.
Licensee shall provide Licensor with prompt written notice of any
unauthorized uses by third parties of any Intellectual Property, or of
confusingly similar or diluting trademarks, service marks, trade names, terms or
designs, which come to the attention of Licensee. Licensor shall have the right,
in its sole discretion, to commence infringement or unfair competition actions
regarding any unauthorized use by third parties of the Intellectual Property or
any confusingly similar or diluting devices. Licensee shall cooperate with and
assist Licensor in its investigation and prosecution of any of the foregoing.
VII. TERM AND TERMINATION
Section 7.1. Term. Except as otherwise provided in Section 7.2,
this Agreement shall expire upon the later to occur of the expiration (or
earlier termination) of the Louisiana License and the Minnesota License.
Section 7.2. Termination. This Agreement may be terminated as
follows:
7.2.1. If Licensee makes an assignment of assets or business for
the benefit of creditors, or if a trustee or receiver is appointed to
administer or conduct Licensee's business or affairs, or if Licensee is
adjudged in any legal proceeding to be either a voluntary or
involuntary bankrupt without prior notice or legal action by Licensor.
7.2.2. Licensor may terminate this Agreement upon thirty (30) days'
advance written notice to Licensee in the event of Licensee's material
breach of any provision of this Agreement unless Licensee has cured
such breach during such thirty (30) day period.
7.2.3. Licensee may terminate this Agreement upon ninety (90) days'
advance written notice to Licensor.
Section 7.3. Effect of Termination. Upon termination of this
Agreement, Licensee shall, as soon as is reasonably possible thereafter, and in
any event within sixty (60) days following the date of termination, cease and
desist in Licensee's use of the Intellectual Property; provided, however, if
Licensee makes no reasonable and good faith attempt to cure the breach within 30
days of Licensee's receipt of the notice of the breach such sixty (60) day
period shall be deemed to have begun upon the date Licensee received notice of
the breach. Licensor's and Licensee's respective obligations under Article VI
and Sections 3.1, 3.2, 7.3, 9.1, 9.4, 9.5 and 9.6 shall survive termination of
this Agreement.
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VIII. COOPERATION WITH AND COMPLIANCE WITH GAMING AUTHORITIES
Section 8.1. The parties will cooperate in good faith with, and
will use their best reasonable efforts to comply with the requirements of, any
and all gaming authorities respecting their activities pursuant to this
Agreement.
Section 8.2. Notwithstanding anything to the contrary set forth
herein, all rights of any party hereunder, including any right to terminate the
rights of other parties hereunder, shall be applied as may be required by any
applicable gaming authorities.
IX. MISCELLANEOUS
Section 9.1. Confidential Information. Each party agrees that all
information disclosed by one party to another pursuant to this Agreement (the
"Confidential Information") shall be maintained in confidence and not be
released to any third party for any reason whatsoever, excluding such parties'
counsel, agents, auditors, or lenders. However, a party may release the
Confidential Information to a third party upon the prior approval of the other
party (such approval not to be unreasonably withheld, conditioned, or delayed),
upon court order, or as such party in good faith believes, based upon the advice
of counsel, is required by any rules, regulations, or laws. Notwithstanding the
previous sentence, in the event that a party becomes legally compelled (by
deposition, interrogatory, request for documents, subpoena, civil investigative
demand, or otherwise) to disclose any information, such party shall provide the
other with prompt prior written notice of such requirement so that the other
party may seek a protective order or other appropriate remedy to minimize
disclosure of the Confidential Information. In the event that such protective
order or other remedy is not obtained, or the other party approves the
disclosure, the disclosing party agrees to furnish only that portion of the
Confidential Information that the disclosing party in good faith believes, based
upon the advice of counsel, is legally required, and to exercise reasonable
efforts to obtain assurance that confidential treatment will be accorded to such
information. Each party shall cease use of all Confidential Information that any
party has obtained from the other upon the expiration or earlier termination of
this Agreement. Neither party shall disclose or otherwise make available any
Confidential Information to any person other than employees, consultants, or
auditors of such party with a need-to-know or except as required by court order
or as such party in good faith believes, based upon the advice of counsel, is
required by any rules, regulations, or laws. Each party shall instruct its
employees who have access to the Confidential Information to keep the same
confidential by using the same care and discretion that such party uses with
respect to its own confidential property and trade secrets.
Section 9.2. Assignment. None of the rights, benefits, or
obligations under this Agreement shall be assigned or assignable or transferred
or transferrable or sublicensed or sublicenseable by Licensee (in each case, by
operation of law or otherwise); provided, however, that Licensee may sublicense
the Intellectual Property to the Tribes for use exclusively in connection with
the Facilities. Upon any transfer, assignment or sublicense entered into in
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accordance with this Section 9.2, such assignee or sublicensee shall enter into
an assignment or sublicense agreement with Licensee, in a form reasonably
satisfactory to Licensor, pursuant to which such assignee or sublicensee agrees
to comply with, and be bound by, the terms of this Agreement and acknowledges
the status of Licensor as an intended third party beneficiary of such assignment
or sublicense agreement. If requested by Licensor, such assignee or sublicensee
shall also execute an instrument or instruments pursuant to which such assignee
or sublicensee shall be bound by, and become a party to, this Agreement. Any
purported assignment or sublicense by Licensee not in compliance with the terms
of this Agreement shall be null and void. Subject to the foregoing, this
Agreement shall be binding upon and inure to the benefit of the parties and
their successors and assigns.
Section 9.3. Relationship of Parties. Nothing in the Agreement
shall be construed to create any relationship among the parties of agency,
partnership, franchise, or joint venturers or render any party liable for any
debts or obligation incurred by any other party hereto. No party is authorized
to enter into agreements for or on behalf of any other party hereto, to collect
any obligation due or owed to any such party, or to bind any other party in any
manner whatsoever.
Section 9.4. Arbitration. Any dispute between Licensor and Licensee
under this Agreement shall be resolved by arbitration by an arbitrator selected
under the rules of the American Arbitration Association (located in Minneapolis,
Minnesota or Mississippi, as the parties mutually agree) and the arbitration
shall be conducted in that same location under the rules of said Association.
Licensor and Licensee shall each be entitled to present evidence and argument to
the arbitrator. The arbitrator shall have the right only to interpret and apply
the provisions of this Agreement and may not change any of its provisions. The
arbitrator shall permit reasonable pre-hearing discovery of facts, to the extent
necessary to establish a claim or a defense to a claim, subject to supervision
by the arbitrator. The determination of the arbitrator shall be conclusive and
binding upon the parties and judgment upon the same may be entered in any court
having jurisdiction thereof. The arbitrator shall give written notice to the
parties stating his determination, and shall furnish to each party a signed copy
of such determination.
Section 9.5. Attorneys' Fees. If any party commences an action
against the other with respect to this Agreement, the prevailing party in such
action shall be entitled to an award of reasonable costs and expenses of
mediation, arbitration, and/or litigation, including reasonable attorneys' fees,
to be paid by the non-prevailing party.
Section 9.6. Specific Performance. The parties hereto agree that
the remedy at law for any breach of this Agreement will be inadequate, and that
any party by whom this Agreement is enforceable shall be entitled to specific
performance in addition to any other appropriate relief or remedy. Such party
may, in its sole discretion, apply to a court of competent jurisdiction for
specific performance or injunctive or such other relief as such court may deem
just and proper in order to enforce this Agreement or prevent any violation
hereof, and, to the extent permitted by applicable laws, each party waives any
objection to the imposition of such relief.
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Section 9.7. Notices. Any notices required or permitted to be given under
this Agreement shall be deemed sufficiently given if mailed by registered mail,
postage prepaid, addressed to the party to be notified at its address shown
below; or at such other address as may be furnished in writing to the notifying
party:
Licensor: Grand Casinos, Inc.
3930 Howard Hughes Parkway, 4th Floor
Las Vegas, Nevada 89109
Attention: General Counsel
Facsimile: (702) 699-5179
Licensee: GCI Lakes, Inc.
130 Cheshire Lane
Minnetonka, MN 55305
Attention: Lyle Berman
Facsimile: (612) 449-7003
Section 9.8. Entirety of Agreement. This Agreement (including the
schedule hereto) and the Distribution Agreement contain the entire agreement and
understanding between the parties hereto, and supersedes any prior or
contemporaneous agreement or understanding related to the subject matter hereof
and thereof. There are no oral understandings, terms or conditions, and neither
party has relied upon any representations, expressed or implied, not contained
in this Agreement. This Agreement may not be changed orally, but only by
agreement in writing, executed by both parties.
Section 9.9. No Third Party Beneficiaries. Notwithstanding anything
to the contrary herein, this Agreement is for the sole and exclusive benefit of
the parties hereto and nothing herein is intended to give or shall be construed
to give to any person or entity other than the parties hereto any rights or
remedies hereunder.
Section 9.10. Severability. Whenever possible, each provision of
this Agreement will be interpreted in such manner as to be effective and valid
under applicable law, but if any provision of this Agreement is held to be
prohibited by or invalid under applicable law, such provision will be
ineffective only to the extent of such prohibition or invalidity, without
invalidating the remainder of such provision or the remaining provisions of this
Agreement.
Section 9.11. Counterparts. This Agreement may be executed in one
or more counterparts, any one of which need not contain the signatures of more
than one party, but all such counterparts taken together will constitute one and
the same instrument.
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Section 9.12. Governing Law. The internal law, without regard to
conflicts of laws principles, of the State of Minnesota will govern all
questions concerning the construction, validity and interpretation of this
Agreement and the performance of the obligations imposed by this Agreement.
[Signature Page to Follow]
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IN WITNESS WHEREOF, this Agreement has been executed as of the day and
year first above written.
LICENSOR:
By __________________________
Its Chief Executive Officer
LICENSEE:
By __________________________
Its Chief Executive Officer
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SCHEDULE A
GRAND CASINO/MISSISSIPPI ASSETS, INC. TRADEMARKS
MARK REG/SER. NO. GOODS/SERV. CLASS STATUS
- ---- ------------ ----------- ----- ------
CAR A DAY GIVEAWAY (Minn.) MN 20,934 Gaming and gambling promotion 35, 42 Registered 6/24/93
GRAND ADVANTAGE PLAYERS CLUB and 1,733,707 Providing casino entertainment 41 Registered 11/17/92
Design services
GRAND ADVANTAGE PLAYERS CLUB 1,954,157 Casino entertainment services 41 Registered 2/6/96
GRAND ADVANTAGE PLAYERS CLUB (Minn.) MN 19,005 Casino services. 41 Registered 3/10/92
GRAND CASINO KID QUEST 1,805,598 For childrens day care and 42 Registered 11/16/93
supervised activity center services
GRAND CASINOS, INC. 1,735,194 Casino planning and management 35 Registered 11/24/92
services
GRAND CASINOS, INC. (Minn.) MN 19,006 Casino planning and management 35, 42 Registered 3/10/92
services
GRAND CASINOS, INC. and Design 2,028,123 Providing casino services 42 Registered 1/7/97
LB'S GRILL 1,943,593 Restaurant 42 Registered 12/26/95
LITTLE WINNERS T-shirts, shirts, dresses, pants, 25 New application
shorts, robes and caps
MARKET PLACE BUFFET 1,922,653 Restaurant 42 Registered 9/26/95
RAPID CHANGE 1,894,870 Currency change making machines as 9 Registered 5/23/95
components of electronic gambling
machines
RAPID CHANGE (Minn.) MN 21,406 Machines applied to gaming 7 Registered 10/20/93
devices that accept paper currency
which is applied toward valid plays
on the gaming devices to which
the machines are attached
SHOW & TELL BLACKJACK 1,740,296 Providing casino entertainment 41 Registered 12/15/92
services
SIMPLY THE BEST! 1,934,446 Casino services 41 Registered 11/7/95
THERE'S MORE THAN ONE 1,857,026 Casinos 41 Registered 12/4/94
REASON TO CALL US GRAND
THERE'S MORE THAN ONE MN 21,463 Casino services 42 Registered 11/2/93
REASON TO CALL US GRAND
(Minn.)